Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC  

Addressing a patent owner’s unauthorized e-mail arguing for additional discovery and the petitioner’s likewise unauthorized responsive e-mail, an expanded panel of the Board explained the impropriety of such unauthorized communications, and also threatened sanctions against both parties as well as counsel for any future unauthorized communications.  Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC, Cases IPR2014-00717; IPR2014-00735 (PTAB, July 10, 2014) (McNamara, APJ.).

Prior to filing its preliminary response for two related inter partes review (IPR) proceedings, counsel for Black Hills Media sent an e-mail to the Patent Trial and Appeal Board (PTAB) requesting a teleconference to discuss additional discovery concerning whether the petitioner Samsung should have identified Google as a real party in interest for each IPR proceeding.  During an ensuing teleconference, counsel for Black Hills Media argued that a recently discovered mobile application distribution agreement constituted circumstantial evidence that Google was a real party in interest.  After hearing arguments from both parties, the Board informed the parties that it would consider the matter and notify them in due course of its decision whether the patent owner would be authorized to file the motion.

Deciding not to await the Board’s decision on the matter, counsel for Black Hills Media sent an e-mail addressed to “PTAB staff” with the subject line “Inquiry Following June 30 Conference re: IPR2014-00717 & 00735.”  Despite being styled as an “inquiry,” the e-mail contained a reiteration of the arguments raised during the teleconference and included an attachment with what was alleged to be the referenced mobile application distribution agreement.  One day after the e-mail was sent by the patent owner’s counsel, the Board issued an order, admonishing counsel for filing what was considered as an unauthorized, off-the-record brief in support of the patent owner’s request for addition discovery. The Board explained that such unauthorized correspondence presented a number of issues: the Board must respond to such correspondence, “distracting [the Board] from [its] mission to secure the just, speedy, and inexpensive resolution of ever proceeding”; the opposing party is prejudiced and has no formal mechanism to oppose on the record; and, such correspondence circumvents the Board’s rules prohibiting the filing of a motion without prior authorization. The petitioner’s counsel sent a responsive e-mail on the same day as the Board’s order and, for the same reasons, received a similar harshly worded order from the Board.

The Board concluded each order by stating that the e-mail in question would not be considered on its merits, was unauthorized and that any “further such filings by either party will likely result in sanctions” against counsel and the party.