Trials@uspto.gov Paper 11 571-272-7822 Entered: October 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GENERAL ELECTRIC COMPANY, Petitioner, v. TRANSDATA, INC., Patent Owner. Case Before LYNNE E. PETTIGREW, FRANCES L. IPPOLITO, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. ORDER Conduct of the Proceedings 37 C.F.R. 42.5
On October 16, 2014, a conference call was held, at the request of TransData, Inc. ( Patent Owner ), between counsel for General Electric Company ( Petitioner ), counsel for Patent Owner, and Judges Pettigrew, Ippolito, and Kaiser. During the call, counsel for Patent Owner explained that it seeks discovery of information related to certain alleged agreements between Petitioner and Oklahoma Gas & Electric Co. ( OGE ), a defendant in patent-infringement litigation ( the Oklahoma litigation ) 1 related to the present proceeding. Petitioner is not a party to the Oklahoma litigation. Patent Owner believes the requested discovery would lead to relevant evidence tending to prove that Petitioner is in privity with OGE and that an inter partes review may not be instituted under 35 U.S.C. 315(b). Additionally, Patent Owner argued that several pieces of evidence suggest that there is an agreement or agreements between Petitioner and OGE that create a privity relationship: 1) Patent Owner filed a lawsuit against OGE, but Petitioner was not a party to that suit. 1 The case in question has been consolidated in a multi-district litigation proceeding captioned In re: TransData Inc. Smart Meters Patent Litigation, Case No. 5:12-ml-2309 (W.D. Okla.). Pet. 1 2. The case specific to OGE is captioned TransData Inc. v. Oklahoma Gas & Electric Company, Case No. 5-11-cv-01032 (W.D. Okla.). Paper 4, 1. The Oklahoma litigation asserts patent infringement by products sold by Petitioner to OGE. Pet. 2. 2
2) Patent Owner has discovered standard terms and conditions that it asserts apply to sales of the accused products in the Oklahoma litigation by Petitioner to OGE. 3) These terms and conditions provide that Petitioner is obligated to indemnify its customers and that Petitioner has the sole authority to control the defense of any litigation brought against its customers. 4) During the Oklahoma litigation, OGE replaced its original outside counsel with attorneys from a firm that represents Petitioner. Given this evidence, Patent Owner argued that Petitioner should be compelled to produce (1) an indemnification agreement between Petitioner and OGE that was claimed to be entered into around December 30, 2011; (2) any other indemnification agreements between Petitioner and OGE regarding the Oklahoma litigation; (3) communications regarding these indemnification agreements; (4) retention agreements between Petitioner, OGE, and counsel for Petitioner and OGE in the Oklahoma litigation; (5) the amounts of legal bills paid by Petitioner for its defense of the Oklahoma litigation; and (6) indemnification agreements between Petitioner and other defendants in the Oklahoma litigation. Patent Owner argued that production of this information is warranted both as routine discovery of information that is inconsistent with a position advanced by Petitioner, 37 C.F.R. 42.51(b)(1)(iii), and as additional discovery that is in the interests of justice, 37 C.F.R. 42.51(b)(2)(i). During the conference call, Petitioner argued against Patent Owner s request in several respects. First, Petitioner argued that the standard terms 3
and conditions discovered by Patent Owner are dated 2013, after the commencement of the Oklahoma litigation, and that those terms and conditions relate only to products other than those accused in the Oklahoma litigation, making Patent Owner s request for discovery speculative and, therefore, not in the interests of justice. Second, Petitioner argued that privity, the issue to which Patent Owner argues the discovery it seeks is relevant, should be based on the relationship between Petitioner and OGE with respect to the present proceeding, rather than their relationship with respect to the Oklahoma litigation. In this regard, Petitioner noted that Patent Owner s argument is based entirely on inferences drawn about Petitioner s ability to control the Oklahoma litigation, rather than OGE s ability to control the present inter partes proceeding. Accordingly, argued Petitioner, the requested discovery would not lead to any information inconsistent with Petitioner s statement, Pet. 5, that Petitioner s customers are neither real-parties-in-interest nor in privity with [Petitioner] with respect to this inter partes review proceeding. After hearing from both parties, the Board grants Patent Owner s request for authorization to file a motion for routine discovery under 37 C.F.R. 42.51(b)(1) and/or additional discovery under 37 C.F.R. 42.51(b)(2). Patent Owner s motion must explain specifically what discovery is requested and why each category of such discovery is necessary in the interest of justice. 35 U.S.C. 316(a)(5); 37 C.F.R. 42.51(b)(2)(i). 4
Patent Owner s motion must also explain why Petitioner s statement that OGE is not in privity with GE with respect to this inter partes review proceeding, Pet. 5, is inconsistent with the facts as Patent Owner believes them to be. The parties are directed to Garmin International, Inc. v. Cuozzo Speed Technologies LLC, Case IPR2012-00001, slip op. at 6 7 (PTAB Mar. 5, 2013) (Paper 26), for guidance regarding motions for additional discovery. In consideration of the foregoing, it is ORDERED that Patent Owner is authorized to file a motion for routine discovery under 37 C.F.R. 42.51(b)(1) and/or additional discovery under 37 C.F.R. 42.51(b)(2), due four working days after the entry of this order, limited to seven pages; and FURTHER ORDERED that Petitioner is authorized to file an opposition due four working days after the filing of Patent Owner s motion, limited to seven pages. 5
For Petitioner: Deakin Lauer Joseph Jakubek Jeffrey Love KLARQUIST SPARKMAN LLP deakin.lauer@klarquist.com joseph.jakubek@klarquist.com Jeffrey.love@klarquist.com For Patent Owner: Robert Sterne Donald Banowit Graham Phero STERNE, KESSLER, GOLDSTEIN & FOX rsterne-ptab@skgf.comdbanowit-ptab@skgf.com gphero-ptab@skgf.com 6