`
`Filed on behalf of: Telefonaktiebolaget L. M. Ericsson
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L.M. ERICSSON
`
`Patent Owner
`____________________
`
`Case IPR2013-00601
`U.S. Patent Nos. 6,772,215
`____________________
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`IPR2013-00601
`Patent 6,772,215
`
`
`Pursuant to 37 C.F.R. § 42.71, Patent Owner Telefonaktiebolaget LM Ericsson
`
`(“Ericsson”) respectfully requests that the Board reconsider its denial of Ericsson’s
`
`Motion for Additional Discovery (“Decision”) because Ericsson submits that the
`
`Board overlooked certain critical legal authorities bearing on the Motion.
`
`II. Argument
`
`A. Standard of Review
`
`The Board will review requests for rehearing for an abuse of discretion. 37
`
`C.F.R. 42.71(d). The Board will grant requests for rehearing where a decision rests
`
`on an erroneous application of the law. Schrader-Bridgeport Int’l, Inc. et al. v.
`
`Cont’l Automotive Sys. US, Inc., IPR2013-00014 Paper No. 15 at 3; Star Fruits
`
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). Ericsson respectfully submits
`
`that the Board erred (a) in its holding that limitation of discovery holds a higher
`
`statutory priority than limitation of duplicative proceedings; and (b) in its holding that
`
`“Broadcom must have had control over the Texas Litigation” before 35 U.S.C. §
`
`315(b) bar may be invoked, See Decision at 7.
`
`
`
`
`REQUEST FOR REHEARING
`
`
`2
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`B. The Board Overlooked that the Principal Purpose of the America Invents Act
`(AIA) is to Limit Multiple Proceedings, and that Limiting Discovery is a
`Subsidiary Purpose, and Erred by Elevating the Latter Over the Former.
`
`
`
`A major goal of the AIA was “to limit unnecessary and counterproductive
`
`litigation costs.” H. Rep. No. 112-98 at 40 (2011). The AIA limited litigation costs
`
`in two ways: (1) by enacting provisions intended to eliminate duplicative, wasteful
`
`and harassing proceedings; and (2) by limiting discovery costs.
`
`The first goal of AIA, limiting and constraining repetitive litigation, was
`
`plainly a primary goal. Congress expressly condemned “repeated litigation and
`
`administrative attacks on the validity of a patent.” H. Rep. No. 112-98 at 48. Toward
`
`that end, Congress enacted several measures so that AIA could not “be used as [a]
`
`tool[ ] for harassment” of patent owners. Id.
`
`First, Congress expressly provided that the Board could not take jurisdiction of
`
`any inter partes review unless all real parties in interest were identified. See 35
`
`U.S.C. § 312 (“A petition filed under section 311 may be considered only if . . . the
`
`petition identifies all real parties in interest”) (emphasis added). The obvious purpose
`
`of this provision was to curtail the ability of related parties to use others as a shill for
`
`them while preserving the ability to repeat litigation in other fora. “Real parties in
`
`interest” is not a defined term, but Congress did not refer to a “privy”, or to “control”
`
`anywhere in in Section 312.
`
`
`REQUEST FOR REHEARING
`
`
`3
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`Congress further provided in 35 U.S.C. § 315(a)(1) that “inter partes review
`
`may not be instituted if . . . the petitioner or any real party in interest filed a civil
`
`action challenging the validity of a claim of the patent.” In addition, it provided for
`
`an automatic stay of the civil action in the event that the petitioner or real party in
`
`interest files a civil action challenging the validity of a claim of the patent. Id. at
`
`315(a)(2). These clauses clearly preclude repetitive litigation.
`
`Congress then barred institution of inter partes review for any “petitioner, real
`
`party in interest, or privy of the petitioner” if any are served with a complaint alleging
`
`infringement of the patent by the patent owner if the defendants were served more
`
`than one year before filing. Id. at 315(b). This clause furthers the statutory imperitive
`
`to prevent multiple actions. Congress also provided that multiple proceedings before
`
`the Board involving the same action may be consolidated. Id. at 315(d). Finally,
`
`Congress directed that any final written decision from the PTO shall bind the
`
`petitioner, real party in interest, and the privy of the petitioner and estop them from
`
`any subsequent attacks before the Office, any district court, or the International Trade
`
`Commission. Id. at 315(e). Thus, Congress enumerated multiple provisions to curb
`
`excessive litigation and repetitive attacks on patent owners.
`
`The goal of limiting discovery was clearly a subsidiary method to control costs.
`
`Congress authorized discovery in one section, 35 U.S.C. § 316(5). Nevertheless,
`
`Congress permitted discovery as “necessary in the interest of justice.” Id. Moreover,
`
`REQUEST FOR REHEARING
`
`
`IPR2013-00601
`
`4
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`the PTO specifically stated that discovery can be utilized to resolve the primary goal
`
`of reducing repetitive litigation. See Changes to Implement Inter Partes Review
`
`Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered
`
`Business Method Patents, 77 Fed. Reg. 48680, 48689 (Aug. 14, 2012) (“additional
`
`discovery may be authorized where patent owner raises sufficient concerns regarding
`
`the petitioner’s certification of standing.”).
`
`Ericsson respectfully submits that the Decision, which promoted the subsidiary
`
`goal – limitation of discovery costs – at the expense of the primary goal – elimination
`
`of repetitive and harassing proceedings – was erroneous as a matter of law, and as a
`
`matter of discretion because it was not “in the interests of justice.” Limited discovery
`
`is necessary to determine the facts bearing on whether Broadcom was a real party in
`
`interest or privy of the defendants in Ericsson Inc., et al. v. D-LINK Corp., et al.,
`
`Civil Action No. 6:10-CV-473 (LED/KGF).
`
`C. The Board Erred as a Matter of Law in its Holding that “Broadcom must have
`had control over the Texas Litigation.”
`
`
`
`Congress did not define “real party in interest” or “privy,” but the text and
`
`structure of the AIA militate in favor of a broad and liberal construction to achieve
`
`the AIA’s intended result of limiting repetitive litigation. Both Congress and the
`
`PTO stated that the term “privity” has acquired an “expanded meaning” and that it
`
`will give effect to judgments by extending the term “beyond its classical description.”
`
`
`REQUEST FOR REHEARING
`
`
`5
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`See 154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (citing
`
`Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506 (Cal.
`
`App. 2008)); see also Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`
`2012) (“Trial Practice Guide” or “TPG”).
`
`The PTO further acknowledged the broad aim of the AIA in the Trial Practice
`
`Guide, which clearly states that the determination of who is a real party in interest or
`
`privy must be made on the facts of each case. See TPG at 48,760. The PTO cited
`
`Cal. Physicians with approval in its discussion regarding the expansion of the scope
`
`of privity beyond the “control” test. Cal. Physicians held that “[t]he word ‘privy’ has
`
`acquired expanded meaning. The courts, in the interest of justice and to prevent
`
`expensive litigation, are striving to give effect to judgments by extending ‘privies’
`
`beyond the classical description. The emphasis is not on a concept of identity of
`
`parties, but on the practical situation . . . The concept refers ‘to a relationship between
`
`the party to be estopped and the unsuccessful party in the prior litigation which is
`
`‘sufficiently close’ so as to justify application of the doctrine of collateral estoppel.’”
`
`163 Cal. App. 4th at 1521 (citations omitted) (emphasis added).
`
`The court then declared that “[n]otions of privity have been expanded to the
`
`limits of due process.” Id. at 1522. The proper test for privity that satisfies due
`
`process is to determine if the parties have “an identity or community of interests with,
`
`and adequate representation by, the losing party in the first action as well as that the
`
`REQUEST FOR REHEARING
`
`
`IPR2013-00601
`
`6
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`circumstances must have been such that the party to be estopped should reasonably
`
`have expected to be bound by the prior adjudication.” Id. Further, when the
`
`appellant argued that it did not control the prior litigation, the court denied the
`
`contention and stated, “preclusion can apply even in the absence of such control.” Id.
`
`at 1524.
`
`The PTO adopted that exact language in the Trial Practice Guide, see TPG at
`
`48,760; the Board’s contrary holding, that “Broadcom must have had control over the
`
`Texas Litigation,” was, respectfully, in error.
`
`Where Ericsson’ burden is to show an identity or community of interest
`
`sufficient to make Broadcom expect to be bound by the Texas Litigation, it was error
`
`to require a showing of control. The combination of Broadcom’s indemnification
`
`agreements, ancillary legal actions, discussions with D-Link Defendants, amicus
`
`curiae brief, and its reliance on evidence from the Texas Litigation collectively
`
`indicate that Broadcom has an identity or community of interest that was served in
`
`the Texas Litigation. It was error to refuse to permit discovery sufficient to further
`
`show this community of interest.
`
`
`
`
`REQUEST FOR REHEARING
`
`
`7
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215
`
`
`
`
`III. Conclusion
`
`Ericsson respectfully requests that the Board reconsider its Decision. Allowing
`
`limited discovery on the relationship between petitioner and the D-Link Defendants
`
`promotes Congress’ principal purpose of the AIA – to prevent repeated litigation and
`
`multiple attacks on the validity of patents. It also conforms to the broad doctrine of
`
`privity because denying privies the right to inter partes review is in the interest of
`
`justice, as provided by both Congress and the PTO.
`
`
`
`Dated: February 7, 2014.
`
`
`
` /Peter J. Ayers/
`PETER AYERS
`Lee & Hayes, PLLC
`13809 Research Blvd., Suite 405
`Austin, TX 78750
`Telephone: 512.505.8162
`Fax: 509.944.4693
`Attorney for Patent Owner Telefonaktiebolaget
`LM Ericsson
`
`
`
`
`
`
`REQUEST FOR REHEARING
`
`
`8
`
`IPR2013-00601
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2013-00601
`Patent 6,772,215
`
`
`The undersigned certifies that on February 7, 2014 the foregoing was served
`
`via email on Lead and Back-up Counsel for Broadcom Corporation identified in
`
`Broadcom’s Mandatory Notices, whom consented to electronic service:
`
`Dominic E. Massa, Lead Counsel
`Michael A. Diener, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
`WH-External-Broadcom-IPR2013-601@wilmerhale.com
`dominic.massa@wilmerhale.com
`michael.diener@wilmerhale.com
`
`
`
`
`
`LEE & HAYES PLLC
`
`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`
`
`
`REQUEST FOR REHEARING
`
`
`9
`
`IPR2013-00601