Paper 23, IPR ; Paper 23, IPR Entered: February 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE

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1 Paper 25, IPR ; Paper 23, IPR ; Paper 23, IPR Entered: February 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. MICHAEL FARMWALD and RPX CORPORATION, Petitioner, v. PARKERVISION, INC., Patent Owner. Case IPR (Patent 6,266,518 B1) Case Case 1 Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and JON B. TORNQUIST, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION Granting Patent Owner s Motion for Additional Discovery 37 C.F.R (b)(2) 1 This Order addresses issues that are identical in the three cases. We, therefore, exercise our discretion to issue one Order to be filed in each of the three cases. The parties are not authorized to use this heading style in their papers.

2 I. INTRODUCTION Pursuant to our Order, dated January 26, 2015 (Paper 13; Order ), Patent Owner filed a Motion for Additional Discovery (Paper 16; Mot. ) and Petitioner filed an Opposition (Paper 18; Opp. ) in each of the three above-referenced proceedings. 2 As set forth in our Order, and as discussed during the initial conference call on January 21, 2015, Patent Owner seeks additional discovery from Petitioner entities RPX Corp. and Dr. Farmwald to determine whether Qualcomm should have been identified as a real partyin-interest in the three instant proceedings. Patent Owner provided Petitioner, and filed in each proceeding, a first set of proposed discovery requests (Ex. 2006, Requests ), which Petitioner redlined and filed (Ex. 1051). Petitioner also filed its redlined version with handwritten notes from Patent Owner s counsel. Ex In an effort to avoid confusion with respect to the parties positions, we held a conference call on February 6, 2015, and subsequently ordered, inter alia, that Patent Owner file a clean version of its proposed discovery requests, and that Petitioner file a redlined version of its proposed edits to Patent Owner s requests by Wednesday, February 11, Paper 20. Patent Owner then filed a new set of Proposed Discovery Requests (Ex. 2022; Revised Requests ) and Petitioner filed a redlined version of Patent Owner s Revised Requests (Ex. 1053). 2 The Orders and papers filed in each of the three cases are substantially identical, unless otherwise noted. Thus, citations are to the papers filed in IPR for convenience. 2

3 Patent Owner has shown factual support for its Revised Requests, which, with one change identified herein, are limited sufficiently in scope. Accordingly, we grant Patent Owner s Motion. II. DISCUSSION Additional discovery may be ordered if the party moving for the discovery shows that such additional discovery is in the interests of justice. 37 C.F.R (b)(2); see also 35 U.S.C. 316(a)(5) (requiring discovery in inter partes review proceedings to be limited to what is... necessary in the interest of justice ). We generally consider five factors ( the Garmin factors ) in determining whether additional discovery is in the interests of justice. See Garmin Int l, Inc. v. Cuozzo Speed Techs. LLC, IPR , slip op. at 6 7 (PTAB Mar. 5, 2013) (Paper 26) (informative) ( Garmin ). A. Whether Something Useful Will Be Found The first Garmin factor is whether there exists more than a mere possibility or mere allegation that something useful [to the proceeding] will be found. Garmin 6. Under this factor, a party should be in possession of evidence tending to show beyond speculation that something useful will be uncovered. Id. The discovery-seeking party must set forth a threshold amount of evidence tending to show that the discovery it seeks factually supports its contention. See Garmin 8 9. Among the facts alleged by Patent Owner to show that there exists more than a mere possibility or mere allegation that something useful to these proceedings will be found, we find that the following are most persuasive. First, is Patent Owner s evidence regarding RPX Corp. s 3

4 business model. See, e.g., Mot. 2 3 (RPX serve[s] as an extension of the client s in-house legal team... [and services] include[] the facilitation of challenges to patent validity. (last alteration in original)); Exs Second, is that Qualcomm was an RPX Corp. client as recently as six months prior to RPX Corp. s engagement of counsel in the instant proceedings, and Qualcomm was a client of RPX Corp. during the time Qualcomm was involved in district court litigation involving the three patents-at-issue in these proceedings. Mot. 4; Opp. 2. Third, is that Patent Owner and Qualcomm are engaged in litigation involving the patents-atissue in these proceedings and, as of the date the three petitions were filed in these proceedings, Qualcomm was time-barred under 35 U.S.C. 315(b) from filing petitions requesting an inter partes review. Mot. 1 3; Ex. 2012; see also Pet. 1 (referencing the district court litigation between ParkerVision, Inc. and Qualcomm, Inc.). Petitioner s Opposition raises several arguments in response to Patent Owner s Motion, but the arguments are principally directed to whether Patent Owner s Requests lack clarity and overreach. Opp We do not find these arguments persuasive to show that something useful may not be found. Accordingly, this factor weighs in favor of granting Patent Owner s Motion. B. Litigation Positions and Underlying Basis Patent Owner asserts that it seeks only factual information regarding Qualcomm s relationship with Petitioner and Qualcomm s potential involvement with respect to the subject proceedings, and not Petitioner s litigation positions. Mot. 4. Petitioner contends that it does not have any 4

5 litigation positions related to the instant proceedings and, thus, this factor is irrelevant. Opp. 5. Accordingly, this factor does not weigh either in favor or against granting Patent Owner s Motion. C. Ability to Generate Equivalent Information by Other Means Patent Owner asserts that it cannot generate equivalent information by means other than the requested discovery. Mot. 5. The strongest counterargument raised in Petitioner s Opposition, generally, is that Petitioner provided Patent Owner with declarations from Dr. Farmwald and Mr. Brodsky, an RPX Corp. representative, and offered to make each deponent available for deposition. Opp. 2, 5. Patent Owner, however, explained during the initial conference call that depositions of these declarants would not eliminate the need to obtain documents potentially relevant to the issue of whether Petitioner should have been identified Qualcomm as a real party-in-interest in the Petitions. See Ex. 2007, 10:22 18:7. We agree with Patent Owner that cross-examination via a deposition is not equivalent to seeking documents relevant to the issue of whether Petitioner should have identified Qualcomm as a real party-in-interest in the Petitions. There are many reasons as to why this is true. For example, as set forth in the Federal Rules of Civil Procedure, requests for the production of documents are a distinct component of discovery in the United States, often separate and apart from other forms of discovery, such as obtaining deposition testimony. Consequently, we do not agree that Petitioner s selection of the two declarants, service of two declarations, and offer to make the two declarants 5

6 available for depositions constitutes an ability of Patent Owner to generate equivalent information by other means under this Garmin factor. Accordingly, this factor weighs in favor of granting Patent Owner s Motion. D. Easily Understandable Instructions As first proposed, Petitioner contested the clarity of Patent Owner s Requests. Opp. 5; see Ex (indicating disagreement between the parties regarding the definitions of several terms used in Patent Owner s first proposed requests). Petitioner s redlines, however, do not reveal any potential disagreement or lack of clarity with respect to Patent Owner s Instructions for answering the proposed discovery requests. Ex Nor do Petitioner s redlines of Patent Owner s Revised Requests. Ex Patent Owner s Requests include only three Instructions that appear relatively standard and are easily understandable. Thus, this factor weighs in favor of granting Patent Owner s Motion. E. Requests Not Overly Burdensome to Answer Petitioner asserts that Patent Owner s Requests are overly burdensome for several reasons. Opp With respect to Request Nos. 2 and 4, Petitioner contends that neither RPX Corp. nor Dr. Farmwald is a party to the related Qualcomm litigations and, thus, any requests for documents concerning the Qualcomm Litigations 3 should be denied. Id. at 4; see also 3 Patent Owner initially defined the phrase Qualcomm Litigations to mean ParkerVision, Inc. v. Qualcomm Inc., No. 3:11-cv-719-J-37-TEM (M.D. Fla. July 20, 2011) and ParkerVision, Inc. v. Qualcomm Inc. et al., No. 6:14-cv- 687-PGB-KRS (M.D. Fla. May 2, 2014). Ex. 2006, 3. In Patent Owner s Revised Requests, the phrase Qualcomm Litigation was redefined to mean 6

7 Ex (showing redlines through the phrase Qualcomm Litigations in Request Nos. 2 and 4). Petitioner s redlines further reflect disagreement as to whether the phrase Challenged Patents should be included in Request Nos See Ex. 1053, 4 6 (Request Nos. 2 4). Patent Owner s Revised Requests define the phrase Challenged Patents to mean the following patents which are the subject of the Related IPR Proceedings: U.S. Patent Nos. 6,266,518; 6,061,551; and 6,370,371. Ex. 2022, 3. Patent Owner s inclusion of the phrase Qualcomm Litigations in Request Nos. 2 and 4 is broad and would be overly burdensome for Petitioner to answer. It is not clear what, if anything, relevant to the issue of whether Petitioner identified all the real parties-in-interest in the Petitions would be captured by that phrase that also would not be included by the phrase Challenged Patents. Requesting documents constituting communications concerning the Qualcomm Litigation, for example, as expressed in Request No. 2, is overly burdensome. So too is the inclusion of the phrase Qualcomm Litigation in Request No. 4. We do not, however, share the same sentiment with respect to the phrase Challenged Patents. Documents constituting communications concerning the Challenged Patents, while potentially including documents involving the Qualcomm Litigation, also are potentially relevant to communications and agreements made prior to the filing of the petitions in the three instant proceedings. With respect to Request No. 3, Petitioner s redlines indicate disagreement with the entirety of the Revised Request (Ex. 1053, 5), and only ParkerVision, Inc. v. Qualcomm Inc., No. 3:11-cv-719-J-37-TEM (M.D. Fla. July 20, 2011). Ex. 2022, 3. 7

8 Petitioner s Opposition explains that all of the requested documents are clearly covered by the attorney-client privilege and work-product doctrine (Opp. 4). Patent Owner s Revised Request No. 3 appears to have attempted to carve out potentially privileged or protected documents. Compare Ex (Request No. 3) with Ex (Request No. 3). As currently proposed, we see no reason why Patent Owner s Revised Request No. 3 is overly burdensome for Petitioner to answer. Any responsive documents that are privileged or protected and, hence, not discoverable, would be identified, typically, on a privilege log in accordance with routine litigation practice. Request No. 3 also is tailored to potential information pertaining to whether Petitioner identified all the real parties-ininterest in the Petitions because Petitioner s reasons for seeking to render unpatentable certain subsets of claims of the Challenged Patents via the instant proceedings, when the Petitioner entities are not alleged to practice the claimed inventions (Mot. 1), are relevant to whether Qualcomm or another unnamed entity stands to gain from the Petitions filed in these proceedings. With respect to Revised Request No. 5, we disagree with Petitioner that it constitutes a full financial audit of RPX and Dr. Farmwald (Opp. 5) by seeking documents sufficient to show all funds or consideration provided to Farmwald or RPX with the purpose of funding the Related IPR Proceedings (Ex. 2022, 6). Petitioner did not explain, in its Opposition, why Patent Owner s Request No. 5 is as unduly burdensome as a full audit such that we can determine whether Petitioner s argument would apply to Patent Owner s Revised Request No. 5. Further, providing funding for filing a petition is a relevant factor in considering whether an entity should 8

9 have been identified as a real party-in-interest in a petition. 4 v. Virnetx, Inc., IPR , slip op. at 8 (PTAB July 14, 2014) (Paper 50). See RPX, Inc. III. SUMMARY On balance, considering the Garmin factors, Patent Owner has shown that it is in the interests of justice to permit Patent Owner to serve the discovery requests identified in Exhibit 2022, following removal of the phrase Qualcomm Litigation from Revised Request Nos. 2 and 4. IV. ORDER It is: ORDERED that Patent Owner s Motion for Additional Discovery is GRANTED as to Revised Document Request Nos. 1 5 (as shown in Ex. 2022), following the removal of the phrase Qualcomm Litigation from Request Nos. 2 and 4; and ORDERED that Patent Owner shall serve the Revised Requests, as further revised above, within three business days of the entry of this Order, if at all; and ORDERED that following Patent Owner s service of its Discovery Requests, Petitioner shall begin producing responsive documents forthwith, and that all production shall be completed within thirty calendar days of the entry of this Order. 4 We recognize that this aspect of Patent Owner s Request No. 5 goes beyond potentially identifying Qualcomm as a real party-in-interest, and more toward potentially showing that some other entity might be a real party-in-interest. 9

10 For PETITIONER: Todd Baker James Bailey For PATENT OWNER: Robert Greene Sterne Michael Q. Lee Jason E. Stach Rick D. Nydegger Byron Pickard 10