IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Applicant: Darbee Universal Remote Control, Inc.

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Applicant: Darbee Universal Remote Control, Inc. Case No.: IPR v. Filing Date: October 8, 1993 Universal Electronics, Inc. Patent No.: 5,414,761 Trial Paralegal: Cathy Underwood Title: REMOTE CONTROL SYSTEM Attorney Doc.: MOTION FOR ADDITIONAL DISCOVERY PURSUANT TO 37 C.F.R (b)(2)(i) Mail Stop PATENT BOARD Patent Trial and Appeal Board United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA Certificate of Filing: I hereby certify that this correspondence is being electronically filed with the USPTO on this 5 th day of March By: /s/ Sambath Meas Sambath Meas

2 TABLE OF EXHIBITS D-Matrix, Ltd. v. Menicon Co., IPR , Paper No. 11 (P.T.A.B. Aug. 1, 2014) Synopsis v. Mentor Graphics Corp., IPR , Paper No. 16 (P.T.A.B. Feb. 22, 2013) Research in Motion Corp. v. Wi-Lan USA Inc., IPR , Paper No. 10 (P.T.A.B. June 20, 2013) OpenTV, Inc. v. Cisco Tech., Inc., IPR , Paper 9 (P.T.A.B. Nov. 29, 2013) Dominion Dealer Solutions, LLC v. AutoAlert, Inc., IPR , Paper No. 12 (P.T.A.B. Aug. 12, 2013) SAS Inst., Inc. v. ComplementSoft, LLC, IPR , Paper No. 15 (P.T.A.B. Dec. 30, 2013) Heart Failure Techs., LLC v. CardioKinetix, Inc., IPR , Paper No. 12 (P.T.A.B. July 31, 2013) INTENTIONALLY SKIPPED Trial Transcript from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR (C.D. Cal.), Dkt. No Universal Remote Control, Inc. s ( URC s ) Initial Disclosures from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR (C.D. Cal.) URC s Response to UEI s Interrogatory at No. 6 from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR (C.D. Cal.) Ohsung Website Printout, available at i

3 2021. URC s Amended Initial Disclosures from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR (C.D. Cal.) Defendant Ohsung Electronics, USA, Inc. s Answer to Second Amended Complaint, Dkt. No. 76, from Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV AG (JPRx) (C.D. Cal.) LinkedIn Profile of Jak You, available at /05/2013 M. Hurley to L. Kenneally Amended Notice of 30(b)(6) Deposition to URC from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR (C.D. Cal.) Joint Stipulation Staying Action Pending Petitions for Inter Partes Review of All Asserted Claims, Dkt. No. 87 from Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV AG (JPRx) (C.D. Cal.) Joint Statement of the Parties Pursuant to Order Staying Action (ECF No. 88) and Joint Request to Continue Status Conference, Dkt. No. 102 from Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV AG (JPRx) (C.D. Cal.) URC NY Secretary of State, Division of Corporations, Entity Information Website Printout ii

4 PATENT OWNER S MOTION FOR ADDITIONAL DISCOVERY PURSUANT TO 37 C.F.R (b)(2)(i) Universal Electronics Inc. ( UEI ) respectfully moves the Board for an order granting UEI permission to obtain additional discovery from Universal Remote Control, Inc. ( URC ) relating to URC s failure to identify all real parties-ininterest. URC did not identify Ohsung Electronics Co., Ltd., and/or Ohsung Electronics U.S.A., Inc. (collectively Ohsung ) as real parties-in-interest. UEI has identified evidence supporting its contention that Ohsung may be a real partyin-interest subject to the mandatory disclosure provision of 35 U.S.C. 312(a)(2). URC and Ohsung share office space, at least one key remote control executive, and legal counsel in a related federal district court litigation. Moreover, URC s CEO s trial testimony suggests that Ohsung has previously paid certain of URC s legal fees. In the interest of justice, it is necessary that the Board permit UEI to take limited discovery to explore the full extent to which Ohsung may be a real partyin-interest in this proceeding. UEI has filed this Motion for Additional Discovery under 37 C.F.R (b)(2)(i) in response to the Board s March 3, 2015, Order Authorizing Motion for Additional Discovery. (Paper 12.) UEI timely filed the instant motion in accordance with the Board s March 5, 2015, deadline. (Id. at 3.) UEI sought a meet and confer with URC s counsel, in accordance with the Board s recommendation. (Id.) URC s counsel offered to permit UEI s counsel to view 1

5 the discovery gathered in a prior UEI v. URC litigation in lieu of responding to UEI s discovery requests. UEI declined that offer because UEI would not expect to find information responsive to its discovery requests in the materials produced in that prior litigation. Ohsung was not a named defendant in that prior litigation and different patents were at issue than are at issue in the current proceedings between UEI and URC. For those reasons, among others, the real party in interest question raised here was neither litigated nor resolved in that prior litigation. I. FACTUAL BACKGROUND The Petition identifies a single real party in interest, Universal Remote Control, Inc. (Petition at 1.) URC acknowledges that UEI sued URC and Ohsung in the currently pending federal court litigation involving the patent at issue in this Proceeding. (Id. (Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV AG (JPRx) (C.D. Cal.) ( UEI Litigation II )).) According to URC s CEO, Chang Park, URC and Ohsung have a very close relationship. (Exhibit 2017, Trial Transcript from Universal Electronics, Inc. v. Universal Remote Control, Inc., No. 8:12-cv AG-JPR ( UEI Litigation I ), Dkt. No , at 596:22-24.) This very close relationship goes beyond a simple supplier relationship. First, a key remote control executive identifies himself as both an Ohsung and URC employee, depending upon the 2

6 circumstances in which questions regarding his employment status arise. Second, Ohsung represents to the public that URC s office space is Ohsung s US office and refers to URC as a Foreign Affiliate. Third, URC and Ohsung share legal counsel. At the outset, there is no dispute that Ohsung supplies all of URC s remote control products. (Id. at 1791:17-22.) Mr. Jak You is the primary liaison between URC and Ohsung for all product development. (Id. at 708:6-13.) Mr. You appears to have been an employee of both URC and Ohsung. As of July 16, 2012, URC represented that Mr. Jak You was URC s director of engineering. (Exhibit 2018, UEI Litigation I, URC s Initial Disclosures at 9; see also Exhibit 2019, URC s Response to UEI s Interrogatory at No. 6 (identifying Jak You as an URC employee).) URC listed Mr. You s contact information as: Jak You; Universal Remote Control, Inc.; 500 Mamaroneck Ave.; Harrison, NY (Id. (emphasis added).) Ohsung s website refers to URC as its Foreign Affiliate and represents that URC s Harrison, New York office is Ohsung s US office. (Exhibit 2020, Ohsung Website Printout; Exhibit 2028, URC NY Secretary of State, Division of Corporations, Entity Information Website Printout.) Mr. You currently has an address with a universalremote.com extension. (Id.) In July 2013, however, URC amended its Initial Disclosures, noting that Mr. You is Ohsung Electronics USA s contact in the New York office. (Exhibit 3

7 2021, UEI I Litigation, URC s Amended Initial Disclosures at 9.) URC amended Mr. You s contact information to reflect that he now worked for Ohsung out of the very same office that URC had previously referred to as its own office in Harrison, New York: Jak H. You; Ohsung Electronics USA.; 500 Mamaroneck Ave.; Suite 502; Harrison, NY (Id.(emphasis added); Exhibit 2028.) In UEI Litigation II, Ohsung admitted that it has one employee who works at 500 Mamaroneck Avenue, Harrison, New York and that it has not made monetary rental payments for this one employee s use of the facilities at this address. (Exhibit 2022, UEI II, Defendant Ohsung Electronics, USA, Inc. s Answer to Second Amended Complaint, Dkt. No. 76 at 24.) Confusingly, Mr. You s LinkedIn profile identifies himself as VP at Universal Remote Control. (Exhibit 2023, Jak You LinkedIn profile.) Mr. You testified in UEI Litigation I as follows: Q. Question: In fact, you introduced yourself as the director of engineering for URC; is that correct, sir? A. Yes. Usually when I meet with customers from Korea I use URC business card. However, when I meet with U.S. customers -- when I meet with U.S. customers in the U.S. -- sorry. Strike that. When I meet with URC customers in the U.S., then I use Ohsung Electronics U.S.A. business card. (Exhibit 2017 at 1794:13-20.) Lest there be any doubt regarding the closeness of the relationship between Ohsung and URC vis-à-vis at least Mr. You, URC designated Mr. You as its 30(b)(6) witness in UEI Litigation I. (Exhibit 2024, 4

8 09/05/2013 M. Hurley to L. Kenneally; Exhibit 2025, Amended Notice of 30(b)(6) deposition from UEI Litigation I.) The closeness of the relationship between URC and Ohsung extends beyond Mr. You. URC and Ohsung also share legal counsel. On July 7, 2014, URC and Ohsung signed a joint stipulation (along with UEI) in UEI Litigation II agreeing to stay the action pending the outcome of this proceeding (among the other IPRs relating to the other patents at issue in UEI Litigation II). (Exhibit 2026, UEI Litigation II, Joint Stipulation Staying Action Pending Petitions for Inter Partes Review of All Asserted Claims, Dkt. No. 87.) Peter H. Kang of Sidley Austin LLP signed on behalf of Ohsung. (Id. at 4.) Douglas A. Miro of Ostrolenk Faber LLP signed on behalf of URC. (Id. at 3.) Mr. Kang is also listed as counsel for URC. Messrs. Miro and Kang are counsel for URC in this Proceeding. (Petition at 3.) The parties in UEI Litigation II subsequently filed a joint statement relating to this and the other related IPR proceedings concerning the same patents at issue in UEI Litigation II. (Exhibit 2027, UEI Litigation II, Joint Statement of the Parties Pursuant to Order Staying Action (ECF No. 88) and Joint Request to Continue Status Conference, Dkt. No. 102.) Whereas Mr. Kang had only previously signed pleadings on behalf of Ohsung, he signed this joint statement on behalf of both URC and Ohsung. (Id. at 5.) 5

9 URC s relationship with Ohsung is perhaps best exemplified by the trial testimony of URC s CEO, Chang Park, regarding whether Ohsung pays the legal fees associated with URC s legal battles with UEI: Q. And, sir, isn t it correct that the Ohsung has paid your company s legal fees; is that correct? A. No, they haven t paid any legal fee in this case. (Exhibit 2017 at 597:4-6 (emphasis added).) Naturally, Mr. Park s answer begs the question: Has Ohsung paid URC s legal fees in any other case or proceeding? But UEI never had the opportunity to ask that question at the UEI Litigation I trial because the court would not permit UEI to impeach Mr. Park with documentary evidence purportedly relating to that issue. (Id. at 597:7-600:17.) UEI needs discovery regarding the financial relationship between URC and Ohsung vis-à-vis this, the other related IPR proceedings, and UEI Litigation II to determine whether Ohsung is a real party-in-interest. II. ARGUMENT Discovery is available for what is necessary in the interest of justice. 35 U.S.C. 316(a)(5); 37 C.F.R (b)(2). Garmin Int l, Inc. v. Cuozzo Speed Techs. LLC, IPR , Paper 26 (PTAB Mar. 5, 2013) ( Garmin ), sets forth the relevant factors to assess whether requested discovery meets that standard. According to Garmin, the following five factors guide the analysis: 6

10 1. More Than A Possibility And Mere Allegation -- The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient to demonstrate that the requested discovery is necessary in the interest of justice. The party requesting discovery should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered. 2. Litigation Positions And Underlying Basis -- Asking for the other party s litigation positions and the underlying basis for those positions is not necessary in the interest of justice. The Board has established rules for the presentation of arguments and evidence. There is a proper time and place for each party to make its presentation. A party may not attempt to alter the Board s trial procedures under the pretext of discovery. 3. Ability To Generate Equivalent Information By Other Means Information a party can reasonably figure out or assemble without a discovery request would not be in the interest of justice to have produced by the other party. In that connection, the Board would want to know the ability of the requesting party to generate the requested information without need of discovery. 4. Easily Understandable Instructions -- The questions should be easily understandable. For example, ten pages of complex instructions for answering questions is prima facie unclear. Such instructions are counterproductive and tend to undermine the responder s ability to answer efficiently, accurately, and confidently. 5. Requests Not Overly Burdensome To Answer -- The requests must not be overly burdensome to answer, given the expedited nature of Inter Partes Review. The burden includes financial burden, burden on human resources, and burden on meeting the time schedule of Inter Partes Review. Requests should be sensible and responsibly tailored according to a genuine need. Garmin, Paper 26 at 6. Each of UEI s discovery requests complies with the Garmin factors. None of the requested discovery relates to URC s litigation positions or underlying 7

11 bases. Likewise, none of the requested discovery, which seeks information regarding (presumably) non-public financial arrangements between Ohsung and URC as well as their personnel information, can be obtained by any other means. Moreover, each of the discovery requests is easily understandable, does not require consideration of any instructions for a response, and permits URC to efficiently respond. Thus, Garmin Factors 2, 3, and 4 favor granting UEI discovery. With respect to Garmin Factors 1 and 5 UEI states the following: UEI Production Request No. 1: Documents and things regarding any money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for the Petition or this Proceeding, and agreements regarding any such money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for the Petition or this Proceeding. UEI Production Request No. 2: Documents and things regarding any money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for Universal Electronics Inc., v. Universal Remote Control, Inc., Ohsung Electronics Co., Ltd., and Ohsung Electronics U.S.A., Inc., Case No. SACV AG (JPRx) (C.D. Cal.) (the Litigation ), and agreements regarding any such money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for the Litigation. UEI Interrogatory No. 1: Identify any money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for the Petition or this Proceeding, by the payment date and the amount paid. UEI Interrogatory No. 2: Identify any money or consideration paid or to be paid by Ohsung to URC or URC s legal counsel for the Litigation, by the payment date and the amount paid. Garmin Factor 1: UEI possesses evidence tending to show beyond speculation that evidence that Ohsung is a real party-in-interest will be uncovered 8

12 in response to UEI Production Request Nos. 1 and 2 and UEI Interrogatory Nos. 1 and 2. The shared employees and resources pertaining to Ohsung and URC s remote control operations, e.g., Mr. You (URC s 30(b)(6) witness in UEI Litigation I), shared office space which both URC and Ohsung hold out as their own, shared legal counsel in UEI Litigation II, etc., confirms beyond mere speculation that there is a relationship between Ohsung and URC that goes beyond an ordinary co-defendant or supplier relationship. Indeed, Ohsung and URC have taken identical legal positions with respect to the stay entered in UEI Litigation II as a result of this and the other related IPR Proceedings. This evidence suggests that Ohsung may exert control over this Proceeding by paying for UEI Litigation II or this Proceeding, similar to how URC has done for Ohsung for other expenses. The fiscal relationship between URC and Ohsung in UEI Litigation II is germane to whether Ohsung is a real party-in-interest here because the statutory estoppel effect of this Proceeding will impact Ohsung s litigation strategy in UEI Litigation II. Accordingly, Garmin Factor 1 supports granting UEI discovery. Garmin Factor 5: These discovery requests are not overly burdensome to answer. These requests seek discovery only regarding the extent Ohsung is paying for this Proceeding and the extent Ohsung is paying for UEI Litigation II. UEI has not peppered its discovery requests with the overused including but not limited 9

13 to and other such modifiers that are the hallmark of a fishing expedition. Accordingly, Garmin Factor 5 supports granting UEI discovery. UEI Production Request No. 3: Documents and things regarding Mr. Jak You s, or any other person s, dual-status as an employee of URC and Ohsung. UEI Interrogatory No. 3: Identify any person who has been an employee of both URC and Ohsung, concurrently or separately, and for each identified person, please also provide the company name, title, job function, and time period for each position held for each such employee. Garmin Factor 1: UEI possesses evidence tending to show beyond speculation that evidence that Ohsung is a real party-in-interest will be uncovered in response to UEI Production Request No. 3 and UEI Interrogatory No. 3. The facts relating to Mr. You confirms beyond mere speculation that there is relationship between Ohsung and URC that goes beyond an ordinary supplier relationship. That URC and Ohsung share Mr. You as an employee suggests that (i) there may be other employees that have a dual-employment relationship and hence (ii) the companies ties go much deeper than a supplier relationship. Accordingly, Garmin Factor 1 supports granting UEI discovery. Garmin Factor 5: These discovery requests are not overly burdensome to answer. The requests seek discovery only regarding whether additional employees, other than Mr. You, have worked for both URC and Ohsung. As before, UEI has not riddled its requests with overly inclusive modifiers. Accordingly, Garmin Factor 5 supports granting UEI discovery. 10

14 Respectfully Submitted, GREENBERG TRAURIG, LLP /Eric J. Maiers/ Date: March 5, 2015 By: Eric J. Maiers, Reg. No. 59,614 James J. Lukas, Reg. No. 59,114 Matthew J. Levinstein, Pro Hac Vice Rob R. Harmer, Reg. No. 68, West Wacker Drive, Suite 3100 Chicago, Illinois (312)

15 CERTIFICATE OF SERVICE The undersigned hereby certifies that on the below date, I caused the foregoing to be served upon the following counsel of record via electronic mail (with counsel s agreement): Douglas A. Miro Ostrolenk Faber LLP 1180 Avenue of the Americas New York, NY Telephone: (212) Facsimile: (212) dmiro@ostrolenk.com Peter H. Kang, Reg. No. 40,350 Theodore W. Chandler, Reg. No. 50,319 Ferenc Pazmandi, Reg. No. 66,216 Sidley Austin LLP 1001 Page Mill Rd. Building One Palo Alto, CA Telephone: (650) Facsimile: (65) pkang@sidley.com tchandler@sidley.com fpazmandi@sidley.com Date: March 5, 2015 /s/ Sambath Meas Sambath Meas i