Takeaway: An agreement requiring a party to perform clearance reviews on products will likely not support a motion for additional discovery into the issue of real parties-in-interest because IPRs are reviews of patents, not products.

In its Order, the Board denied Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner requested discovery that it believes may lead to evidence showing that Activision Publishing, Inc. is an unnamed real party-in-interest in the proceeding. Patent Owner filed a complaint alleging infringement by Activision over a year prior to the filing of the Petitions. Petitioner stated that Activision is a publisher that publishes videogames, including Destiny, which Petitioner created. Petitioner states that it only has a duty to indemnify Activision if a third party serves a complaint asserting that Destiny infringes a patent, and even then, Petitioner is solely responsible for the costs of the defense and has all control over the defense. Patent Owner wrote a letter to Activision’s counsel stating that it intended to add Destiny as a product-at-issue in the lawsuit, but neither Destiny nor any other product of Petitioner has ever been added to that lawsuit.

Patent Owner contended that the agreement between Petitioner and Activision obligates Petitioner to perform reviews for IP clearance that are subject to Activision’s control, and that Activision advances payments to Petitioner to develop Petitioner’s products. Patent Owner stated that after it sent the letter stating its intent to add Destiny as a product-at-issue, Petitioner’s obligation to conduct a legal review was triggered. Therefore, Patent Owner asserted that Activision has the ability to exercise control over the IPR proceedings. Therefore, Patent Owner requested discovery regarding account and payment information for legal reviews and/or the development of Destiny products, discovery concerning a legal review of any of Patent Owner’s patents, and discovery related to indemnification based on the patents.

Petitioner admitted that it is responsible for any defense of any intellectual property claims against Destiny, but Destiny was never added to the lawsuit. Petitioner also stated that the agreement does not allow any party other than Petitioner to control the IPR proceedings, and Petitioner is solely responsible for the costs. Petitioner argued that the subject of the IPRs is Patent Owner’s patents, not Destiny.

The Board found Petitioner’s position more persuasive. The Board noted that the agreement calls for legal review of products, which would not be implicated from the filing of an IPR against a patent. Further, the Board noted that Patent Owner has not filed a complaint asserting that Destiny infringes its patents. The Board also stated that Patent Owner’s theory for discovery makes several assumptions regarding the agreement without providing any evidence on the record to support the assumptions. Therefore, the Board found that Patent Owner has not shown more than a mere allegation that something useful will be found.

Bungie, Inc. v. Worlds Inc., IPR2015-01264; IPR2015-01268; IPR2015-01269; IPR2015-01319; IPR2015-01321; IPR2015-01325

Paper 11: Order on Patent Owner’s Motion for Routine or Additional Discovery

Dated: September 4, 2015

Patents 7,945,856 B2; 7,181,690 B1; 7,493,558 B2; 8,082,501 B2; 8,145,998 B2

Before: Karl D. Easthom, Kerry Begley, and Jason J. Chung

Written by: Easthom