Takeaway: In a motion for additional discovery into whether a third party is a real party-in-interest, evidence that the third party was allowed to intervene in a proceeding involving the petitioner in order to protect that third party’s interests may be persuasive.

In its Order, the Board granted in part and denied in part Patent Owner’s Motion for Additional Discovery. The Board had granted Patent Owner’s request to file a motion for additional discovery into whether Google, Inc. is a real party-in-interest in the two related proceedings.

The Board noted that a real-party-in-interest is one that “funds, directs, or controls an IPR petition or proceeding constitutes a real party-in-interest,” and that any requested discovery must be directed accordingly. Patent Owner also bears the burden of showing that the discovery is in the interest of justice, in which the Board considers “whether Patent Owner is already in possession of evidence tending to show beyond speculation that something useful will be discovered in determining whether Google is a real party-in-interest or privy, i.e., whether Google funds, directs, or controls the Petitions.”

In its Motion, Patent Owner stated that it became aware of a distribution agreement between one of Petitioner’s entities and Google containing an indemnification provision in which Google agreed, if properly notified, to assume “full control and authority over the defense of an infringement claim against Petitioner.” In response, Petitioner submitted a declaration of Mr. Sunghil Cho, responsible for Petitioner’s IPR filings.  Mr. Cho stated that Petitioner had not communicated with Google in the preparation of the instant petitions; that Petitioner and Google are represented by different counsel in an ITC investigation of the ’593 patent; and that any inference of Google’s involvement in an Eastern District of Texas litigation concerning the ’686 patent is speculation.”

Patent Owner also presented evidence that in another lawsuit, Petitioner denied, in response to an interrogatory, that it had sought indemnification from Google, but that “Google later revealed during a deposition that it had been indemnifying Petitioner.”

The Board noted that Patent Owner is “entitled to inquire about whether Google has any involvement in the present proceeding and whether any of Petitioner’s entities are acting on behalf of Google in any way. Patent Owner is also entitled to corroboration of the assertions in Mr. Cho’s declaration and to cross-examine Mr. Cho.”

Petitioner also argued that the distribution agreement with the indemnification was not in effect when the instant disputes between Petitioner and Patent Owner arose. The Board did not find this persuasive, however, noting that from the ITC proceeding, it appeared that Petitioner’s accused products were sold under the distribution agreement.

Petitioner further argued that the indemnification provision would nevertheless be inapplicable to cases brought by Petitioner, because it only concerns cases brought against Petitioner. The Board indicated that the distribution agreement was silent regarding the circumstances in which Google may indemnify Petitioner, and further noted that it was not basing its decision solely on the distribution agreement.

The Board was further persuaded by the proceedings in the ITC investigation. The ITC had determined that Google has a “[c]ompelling interest in the investigation because its software is accused” and that “Google’s interests are not adequately represented by the existing parties.”  The ITC also indicated that Google’s interest was not limited to the issue of infringement and that “Google may participate fully as to all issues litigated in this investigation.”  Thus, the Board found that Google has an interest in the instant proceedings and that Petitioner demonstrated “possession of evidence tending to show beyond mere speculation that something useful will be discovered in determining whether Google is a real party-in-interest or privy, i.e., whether Google funds, directs, or controls the Petition.”

Turning to the discovery requests, the Board considered whether they are “directed to whether Google is a real party-in-interest or seek litigation positions, whether Patent Owner can generate the requested information by other means, whether Patent Owner’s requests are clear, and whether Patent Owner’s requests are burdensome on Petitioner’s financial and human resources.”

Patent Owner proposed three interrogatories in each proceeding. The Board found the first interrogatory overly broad because it requested the identities of all individuals who were provided with a copy of drafts of the Petition.  The second interrogatory – requesting the identification of individuals not employed by Petitioner or Petitioner’s counsel who were involved in preparing the Petition – was deemed to be limited to the scope of Office Trial Practice Guide § I(D)(1) and therefore appropriate.  The third interrogatory requesting financial transactions related to indemnification provisions was found to be overly broad because it was not limited to the current proceedings.  The Board limited the third interrogatory accordingly.

Patent Owner also presented three document production requests. The first, requesting all distribution agreements between Petitioner and Google having recent effective dates, was denied as being unnecessary based in part on the Board determination that Google’s potential interest is not based entirely on the agreement.  The second (requesting documents related to notification to Google regarding indemnification) and third (documents related to Google’s response to indemnification notifications) requests were allowed but were further limited in scope to the instant proceedings.

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC v. Black Hills Media, LLC, IPR2014-00735; IPR2014-00717 
Paper 17: Order Granting-in-Part Motion for Additional Discovery 
Dated: October 2, 2014 
Patents: 6,618,593 B1; 6,108,686 
Before: Brian J. McNamara, David C. McKone, Peter P. Chen, and Frances L, Ippolito
Written by: McNamara