Judge Albright Orders Third-Party IPR Petitioner Unified Patents To Produce Member Lists And Communications With Members
November 17, 2022 at 03:09 am EST
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On November 9, 2022, in Textile Computer Systems, Inc. v. Broadway National Bank d/b/a Broadway Bank, et al., Judge Albright denied non-party Unified Patents' Motion to Quash subpoenas served by Plaintiff Textile Computer Systems, Inc. ("Textile") on Unified Patents, LLC ("Unified Patents").
In 2016, Textile sued three defendants in the Eastern District of Texas for alleged patent infringement of, among others, U.S. Patent No. 8,505,079 ("'079 patent"). Subsequently, Unified Patents filed IPR2017-00296 ("'296 IPR") against the '079 patent on November 21, 2016; this was ultimately unsuccessful.
Then, on October 12, 2021, Textile sued a number of defendants in the Western District of Texas for alleged infringement of, among others, the '079 patent. During this litigation, Textile sought third-party discovery from Unified Patents to identify real parties in interest to the '296 IPR, alleging that IPR estoppel applied not only to Unified Patents, but also to real parties in interest to the IPR and privies to be discovered through the subpoenas. Unified Patents then filed a Motion to Quash.
Judge Albright ordered Unified Patents to produce the following categories of documents for the dates spanning the original round of lawsuits and the '296 IPR:
Any communications and any agreements with any named defendant in these actions and with American Express, Discover, Visa, Mastercard, Jack Henry, Fiserv, Apple, Google, and Samsung, limited to the period from July 1, 2016 through July 20, 2018.
Documents sufficient to identify meetings, and documents used or exchanged during meetings, with defendants, American Express, Discover, Visa, Mastercard, Jack Henry, Fiserv, Apple, Google, and Samsung, limited to the period from July 1, 2016 through July 20, 2018.
A list of all Unified Patents members with membership agreements active between July1, 2016 and July 20, 2018.
A list of Unified Patents members in each of the content, cloud, transactions, retail, mobile, cybersecurity, open source, and networking zones with membership agreements active between July 1, 2016 and July 20, 2018.
External communications and external documents that mention or relate to Textile, Gopal Nandakumar, any related patent or patent application owned by Textile or for which Mr.Nandakumar is a named inventor, or the inter partes review of U.S. Patent No.8,505,079, limited to the period from July 1, 2016 through July 20, 2018.
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Mr Bradley D. Coburn
Winston & Strawn LLP
35 West Wacker Drive
Chicago
IL 60601
UNITED STATES
Tel: 3125585600
Fax: 3125585700
E-mail: awisinski@winston.com
URL: www.winston.com
American Express Company specializes in issuing and marketing payment cards primarily for travel (hotel, ticket, restaurant payments, etc.). Income breaks down by activity as follows:
- sale of means of payment to consumers (52.8%): traveler's checks, credit cards, prepaid cards. The group also offers banking services (private banking and business banking), travel brokerage and magazine publishing;
- sale of means of payment to small and big corporates (27.2%);
- management of partner networks (20%): services provided to card payment networks and card distribution networks.
AMERICAN EXPRESS COMPANY 
