Filed on behalf of: Wi-Fi One, LLC
`
`
`Paper No. 70
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`BROADCOM CORPORATION,
`
`Petitioner,
`
`V.
`
`WI-FI ONE, LLC,
`
`Patent Owner.
`
`___________________
`
`CASE NO.: IPR2013-00601
`PATENT NO. 6,772,215 B1
`___________________
`
`PATENT OWNER’S REQUEST FOR REHEARING OF
`FINAL WRITTEN DECISION (PAPER NO. 66)
`
`
`
`
`
`Paper No. 70
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`BROADCOM CORPORATION,
`
`Petitioner,
`
`V.
`
`WI-FI ONE, LLC,
`
`Patent Owner.
`
`___________________
`
`CASE NO.: IPR2013-00601
`PATENT NO. 6,772,215 B1
`___________________
`
`PATENT OWNER’S REQUEST FOR REHEARING OF
`FINAL WRITTEN DECISION (PAPER NO. 66)
`
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`
`
`
`Pursuant to 37 CFR § 42.71(d)(2), Patent Owner submits this Request for
`
`Rehearing of the Board’s Final Written Decision (Paper No. 66).
`
`I.
`
`INTRODUCTION
`
`In its Final Written Decision, the Board made certain fundamental errors with
`
`respect to its determination that this IPR Petition is not time-barred under 35 U.S.C. §
`
`315(b). This case is a prime example of concerns expressed less than two weeks ago
`
`by USPTO Director Michelle Lee, who noted that Patent Owners frequently are not
`
`given sufficient discovery on the “real party in interest” issue, meaning that panels
`
`often decide this issue on an inadequate evidentiary record.1 In light of Director Lee’s
`
`comments, the Board should take a close look at this request for rehearing.
`
`First, in this case the Board misapprehended the purpose and effect of the
`
`“real party in interest, or privy” language in § 315(b), as plainly set forth in the text of
`
`the statute, and as confirmed by the legislative history and the USPTO’s public
`
`
`1 See http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for, USPTO
`
`Director Michelle K. Lee, “PTAB’s Quick-Fixes for AIA Rules are to be
`
`Implemented Immediately,” (March 27, 2015) (last visited April 6, 2015) (“[W]e
`
`understand that the existence of ample discovery to establish the real-party-in-interest
`
`(RPI) of the petitioner has been a concern. And we want to be sure that the
`
`availability of appropriate RPI evidence does not pose a problem for patent owners.”)
`
`REQUEST FOR REHEARING
`
`1
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`comments. As a result, the Board applied the wrong legal standard for assessing the §
`
`315(b) issue, focusing too narrowly (and exclusively) on whether Petitioner has
`
`controlled the co-pending District Court Litigation, and ignoring other relevant facts,
`
`such as whether the District Court Defendants are controlling this IPR.2
`
`Second, the Board overlooked the substantial evidence Patent Owner has
`
`presented showing that Broadcom and the District Court Defendants share a
`
`common economic and legal interest, and have been in cahoots in opposing the ’215
`
`Patent for many years. This evidence shows both that (1) Broadcom’s District Court
`
`Defendant customers are real-parties in interest to this IPR proceeding, and also that
`
`(2) the District Court Defendant customers are in privity with Broadcom for purposes
`
`of this IPR and the District Court Litigation.
`
`The Board’s refusal to permit any discovery at all on this issue – even the
`
`introduction of Broadcom’s known indemnity agreements – is a clear abdication of
`
`the Board’s duty to consider a full and reasonable evidentiary record on matters
`
`related to its own jurisdiction, and inherently renders the Board’s decision suspect.
`
`Third, the Final Written Decision itself presents additional administrative law
`
`issues that Patent Owner raises in this request for rehearing. Because the Petition was
`
`
`2 The terms “District Court Litigation” and “District Court Defendants” refer to
`
`parallel infringement litigation and defendants as cited in the Board’s Decision
`
`denying additional discovery. Paper No. 23 at 2.
`
`REQUEST FOR REHEARING
`
`2
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`and is time-barred under § 315(b), the Board’s Final Written Decision is an ultra vires
`
`action that exceeds the Board’s delegated statutory authority. Moreover, the Board’s
`
`Final Written Decision is contrary to several provisions of the Administrative
`
`Procedures Act (“APA”), as discussed more fully below.
`
`It is undisputed that the Board would have no authority, under § 315(b), to
`
`consider this IPR Petition if it had been filed by the District Court Defendants
`
`themselves. It would have been time-barred. Section 315(b) does not permit
`
`Broadcom to assist its customers in circumventing the one-year time-bar. That is
`
`precisely what the “real party in interest, or privy” language was intended to prevent.
`
`II.
`
`
`
`IDENTIFICATION OF BASIS FOR REHEARING REQUEST
`
`As required by 37 C.F.R. § 42.71(d), Patent Owner hereby specifically identifies
`
`the matters Patent Owner contends the Board misapprehended or overlooked:
`
`(1) The Board misapprehended the purpose of the “real party in interest or
`
`privy” language in 35 U.S.C. § 315(b), and misapprehended the correct legal
`
`standard for determining whether a non-party is a “real party in interest or
`
`privy of petitioner” under § 315(b). See, e.g. Patent Owner’s Request for
`
`Rehearing, Paper No. 27 at 3-7.
`
`(2) The Board misapprehended the entirety of the factual record and
`
`overlooked evidence supporting Patent Owner’s contention that certain
`
`District Court Defendants are real parties in interest and/or privies of
`
`petitioner in this IPR. See Patent Owner’s Response, Paper No. 40 at 3-15.
`
`REQUEST FOR REHEARING
`
`3
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`In addition, the Board’s Final Written Decision itself raises certain
`
`
`
`administrative law issues that Patent Owner could not have previously raised. See
`
`Section III(D), infra.
`
`III. ARGUMENT
`
`A. The Board misapprehended the purpose of the “real party in interest,
`or privy” language in § 315(b).
`
`1.
`
`The purpose of § 315(b), in general, is to prevent district court
`litigants from using IPR petitions as a delay tactic.
`
`
`
`By its plain language, and as confirmed by the legislative history, § 315(b) was
`
`intended to impose a time-bar on the filing of IPR Petitions so that district court
`
`litigants could not use IPR Practice for purposes of delaying the district court
`
`litigation. The statute states:
`
`An inter partes review may not be instituted if the petition requesting the
`proceding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent. . . .
`
`§ 315(b). The legislative purpose of this statute is to ensure IPR Petitions are not
`
`used as a litigation tactic for purposes of delay. See, e.g., 157 Cong. Rec. S1326
`
`(daily ed. March 7, 2011) (statement of Sen. Reid) (“The bill . . . imposes time limits
`
`on starting an inter partes or post-grant review when litigation is pending. . . . [T]hese
`
`reforms will help ensure that post-grant review operates fairly and is not used for
`
`purposes of harassment or delay.” (emphasis added)); H. Judiciary Comm. Rep., H.
`
`REQUEST FOR REHEARING
`
`4
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`Rep. No. 112-98, at 47-48 (discussing that certain amendments, including the time-bar
`
`of § 315(b), are intended to prevent harassment of Patent Owners and delay of
`
`infringement litigation); 154 Cong. Rec. S9989 (daily ed. Sept. 27, 2008) (statement by
`
`Sen. Kyl) (“The real reforms in this bill that would protect patent owners from
`
`abusive and duplicative proceedings are the various restrictions imposed in section
`
`327” – which included a three-month time bar that was later amended to become the
`
`one-year period as codified in § 315(b)). See also Zoll Lifecor Corp. v. Philips Elec. N. Am.
`
`Corp., IPR2013-00609, Paper No. 15 at 8-9 (discussing the legislative history of §
`
`315(b)).
`
`2.
`
`The purpose of the “real party in interest, or privies” language is to
`ensure that litigation defendants do not subvert the statute by
`using their cohorts to file an IPR Petition when they themselves
`are time-barred.
`
`
`
`The plain text of the statute makes clear that the “real party in interest, or privy
`
`of the petitioner” language in § 315(b) is intended to prevent litigation defendants
`
`from subverting the statutory time-bar by having their agents or cohorts file an IPR
`
`petition that they themselves are barred from filing. The statutory time-bar applies not
`
`only to the petitioner, but also to (1) any real party in interest and also (2) any privy
`
`of the petitioner. See 35 U.SC. § 315(b). The Patent Trial Guide confirms that this is
`
`the purpose of the “real party in interest, or privy” language in § 315(b). See Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (One of the “core
`
`functions” of the real-parties-in-interest or privies language is to “protect patent
`
`REQUEST FOR REHEARING
`
`5
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`owners from harassment via successive petitions by the same or related parties . . .
`
`.”) Without this language in § 315(b), district court litigants could easily circumvent
`
`the time bar by simply having others file a time-barred petition on their behalf.
`
`B. The Board misapprehended the legal test that should be applied to
`determine whether a non-party is a “real party in interest, or privy” for
`purposes of § 315(b).
`
`1.
`
`The legislative history and the USPTO’s public comments indicate
`that “real party in interest, or privy” in § 315(b) is to be read
`broadly and flexibly.
`
`It goes without saying that the legal standard for determining whether a third
`
`party is a “real party in interest, or privy of petitioner” under § 315(b) should draw
`
`from and coincide with the legislative purpose behind the statute. The legal standard
`
`must be aimed at determining whether a given set of facts shows that an IPR
`
`petitioner is sufficiently related or connected to a time-barred third party, such that
`
`the petitioner should also be subject to the time-bar. To serve the statutory purpose,
`
`the legal standard must be sufficiently flexible to capture all the various ways that
`
`parties might collude or conspire to circumvent the § 315(b) time-bar. For example:
`
`(1) a time-barred third party employing the petitioner as its agent or shill, specifically
`
`for the purpose of circumventing the statute; (2) where parties are “in cahoots” to
`
`execute a coordinated divide-and-conquer strategy designed to subvert the § 315(b)
`
`time-bar in an effort to harass or delay a patent owner; or (3) a scenario where any
`
`one party controls both the litigation and IPR activity in a coordinated effort.
`
`REQUEST FOR REHEARING
`
`6
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`The legislative history and official public comments of the USPTO
`
`demonstrate that the applicable legal standard is flexible and multi-faceted so that
`
`individual cases can be judged on their unique circumstances. See 154 Cong. Rec.
`
`S9989 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (discussing the breadth of
`
`“privy” as explained by recent case law developments). This breadth and flexibility of
`
`“real party in interest, or privy” was also recognized by the USPTO in its official
`
`public comments in the Office Patent Trial Practice Guide. See Trial Practice Guide,
`
`77 Fed. Reg. at 48759-60. As articulated by the USPTO and by Senator Kyl in the
`
`legislative history, this legal standard is purposefully broad and flexible so that the
`
`Board can determine, on a case-by-case basis and in light of all relevant facts, whether
`
`particular parties are attempting to circumvent the § 315(b) time-bar.
`
`2.
`
`The Board erred as a matter of law in applying a legal standard
`imposing an inflexible standard requiring that Petitioner must
`have exercised control over the District Court Defendants in the
`District Court Litigation.
`
`
`
`In its decision on the § 315(b) issue, the Board did not apply a broad and
`
`flexible standard for “real party in interest or privy.” Instead, the Board applied a
`
`narrow and rigid standard that is erroneous as a matter of law.
`
`
`
`The standard applied by the Board requires – as an absolute and necessary
`
`condition – that Broadcom controlled or could have exercised control over one or
`
`more of the District Court Defendants in relation to the District Court Litigation. See
`
`Decision on Ericsson’s Motion for Additional Discovery, Paper No. 23 at 7 (“To
`
`REQUEST FOR REHEARING
`
`7
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`show privity requires a showing that Broadcom would be bound by the outcome of
`
`the Texas litigation. To be bound, in normal situations, Broadcom must have had
`
`control over the Texas Litigation.”); id. at 11 (“The totality of the evidence fails to
`
`amount to more than a ‘mere possibility’ that Broadcom controlled, or could have
`
`controlled, the Texas litigation.”); id. at 12-13 (“[T]he IPR filings fail to show
`
`control over the Texas litigation. . . . The evidence does not amount to more than
`
`speculation that any of Broadcom’s activity constitutes evidence of collusion with the
`
`Texas Defendants in the Texas litigation in a manner that would bind Broadcom
`
`to the outcome thereof.”); id. at 15 (“The evidence and arguments fail to show that
`
`the sought-after discovery would have more than a mere possibility of producing
`
`useful privity information, i.e., that Broadcom controlled or could have controlled
`
`the Texas Litigation.”); see also Final Written Decision, Paper No. 66 at 9.
`
`
`
`The legal standard applied by the Board in this case is narrower and
`
`inconsistent with the legal standard applied by the Board in other cases. See, e.g., Zoll,
`
`IPR2013-00609, Paper No. 15 at 9-16 (considering “real party in interest” and “privy”
`
`separately; and also considering, inter alia, the non-party’s control over the IPR).
`
`
`
`The legal standard applied by the Board in this case does not reflect – and in
`
`fact undermines - the legislative purpose of § 315(b). Under the Board’s standard,
`
`even if there were irrefutable evidence that the District Court Defendants had
`
`expressly hired Broadcom to file this IPR petition, and that the District Court
`
`Defendants were paying for and controlling every aspect of Broadcom’s IPR activity,
`
`REQUEST FOR REHEARING
`
`8
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`the Board’s standard still would not be satisfied - because the evidence would not
`
`show that Broadcom was controlling the District Court Litigation or that Broadcom
`
`would be bound by the result of that litigation. That would be an absurd result, in
`
`direct contravention of the plain text of § 315(b) and its clear legislative purpose. This
`
`example conclusively demonstrates that the Board’s legal standards for “real party in
`
`interest, or privy” under § 315(b) is fundamentally wrong because it is too rigid and
`
`narrow. It is not grounded in the text or purpose of the statute, and it does not
`
`capture all the ways that parties might conspire to subvert the statutory time-bar.
`
`
`
`Under § 315(b), Broadcom’s control of the District Court Litigation might be
`
`sufficient to establish that the District Court Defendants are real parties in interest or
`
`privies, but it should not be a necessary condition. A showing that petitioner controls
`
`the litigation should be one path to that result, but not the only path. An exclusive
`
`focus on whether Broadcom would be bound by a judgment in the District Court
`
`litigation is misplaced, because no one is seeking to bind Broadcom to the results of
`
`the District Court litigation by virtue of this IPR, or otherwise.
`
`
`
`Instead, the issue under § 315(b) is whether the District Court Defendants have
`
`attempted to circumvent the one-year statutory time-bar, i.e. whether Broadcom and
`
`one or more of the District Court Defendants should be treated collectively for
`
`purposes of determining whether the petition is time-barred. Under the plain language
`
`of § 315(b), they should be treated as one if a District Court Defendant is a “real
`
`party in interest or privy” of Broadcom. The standard applied by the Board,
`
`REQUEST FOR REHEARING
`
`9
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`focusing exclusively on Broadcom’s connection to the District Court litigation, turns
`
`the real issue on its head.
`
`
`
`Patent Owner respectfully submits that the Board’s misapprehension of the
`
`correct legal standard may stem from the fact that a separate statutory provision, §
`
`315(e), also uses the phrase “real party in interest or privy” in the context of defining
`
`the scope of estoppel that results from a final written decision by the Board. Most of
`
`the discussion of “real party in interest or privy” in the Trial Practice Guide also
`
`relates to estoppel. See Trial Practice Guide, 77 Fed. Reg. at 78,759-60. In the context
`
`of § 315(e) estoppel, it might make sense to focus on the “control” factor, like
`
`common law estoppel cases do.
`
`
`
`But § 315(b) is not an estoppel provision, and the “real party in interest, or
`
`privy” language in § 315(b) serves a much different purpose. The standard applied by
`
`the Board ignores the statutory language and purpose, and serves to undermine the
`
`statute altogether by not capturing most of the ways parties could purposefully
`
`circumvent the statutory time-bar.
`
`C. The Board misapprehended the entirety of the evidentiary record on
`the § 315(b) issue, and overlooked evidence establishing that certain
`District Court Defendants are real parties in interest and/or privies of
`Broadcom.
`
`The evidentiary record before the Board strongly indicates that one or more of
`
`the District Court Defendants are real parties in interest, and/or that they are in
`
`privity with Petitioner for purposes of this IPR.
`
`REQUEST FOR REHEARING
`
`10
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`Significantly, Petitioner had an opportunity to present evidence that the District
`
`Court Defendants are not coordinating or controlling aspects of this IPR – but they
`
`presented no evidence on this point at all. Tellingly, Petitioner’s proof seems carefully
`
`worded to focus exclusively on Broadcom’s ties to the District Court litigation and
`
`avoid any mention of the District Court Defendants’ role in this IPR. See Petitioner’s
`
`Opposition to Motion for Additional Discovery, Paper No. 19 at 2-5 (including cited
`
`exhibits). Petitioner, who had every opportunity to illuminate the District Court
`
`Defendants’ role (or lack thereof) in this IPR, purposefully chose to offer no evidence
`
`as to whether the District Court Defendants are paying all or part of the costs of this
`
`IPR; whether Petitioner filed this IPR for the benefit of, or at the behest of, the
`
`District Court Defendants; or whether the District Court Defendants have
`
`coordinated or controlled any aspects of this IPR proceeding. See Zoll, IPR2013-
`
`00609, Paper No. 15 at 11-12 (placing weight on Petitioner’s failure to provide
`
`evidence of the non-party’s lack of participation in or control over the IPR).
`
`Patent Owner, on the other hand, has made a strong circumstantial showing
`
`that Petitioner and at least some of their District Court Defendant customers are in
`
`cahoots in defending against the ’215 Patent, both in the District Court Litigation and
`
`in this IPR. See Patent Owner’s Response, Paper No. 40, at 3-15. It is not disputed in
`
`the evidence that there are indemnity agreements between Broadcom and certain
`
`District Court Defendants (as expressly stated in Judge Davis’s order denying relief
`
`from the litigation protective order). See Ex. 1011. Nor is it disputed that Broadcom
`
`REQUEST FOR REHEARING
`
`11
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`and its District Court Defendant customers share a common economic and legal
`
`interest in opposing the ’215 Patent. See Ex. 2008 (asserting a common interest
`
`privilege); Ex. 2009 at ¶ 101. It is not disputed that Broadcom has been coordinating
`
`with the District Court Defendants for many years in an effort to oppose the ’215
`
`Patent. See Patent Owner’s Response, Paper No. 40 at 4-8. And it is not disputed that
`
`Petitioner has taken concrete steps, such as the filing of this IPR and otherwise, to
`
`oppose the ’215 Patent on behalf of its customers. See id.
`
`The Board should presume that the indemnity agreement contains some
`
`covenants related to the funding and control of efforts to oppose claims of patent
`
`infringement. Any indemnity agreement will expressly allocate the obligation to pay
`
`for defense of claims and also the rights to control the defense and settlement. Failing
`
`to do so would be drafting malpractice. For this reason, the Board erred when it
`
`decided the § 315(b) issue without reviewing the known indemnity agreements, which
`
`are likely the most crucial documents. These agreements could have been provided to
`
`the Board with no burden whatsoever to Broadcom.
`
`Even without the agreements in evidence, the circumstantial evidence
`
`overwhelmingly shows that Petitioner has been in cahoots with its District Court
`
`Defendant customers since long before this IPR petition was filed. Petitioner’s
`
`declaration is conclusory, carefully worded, and narrowly tailored to avoid addressing
`
`issues central to the § 315(b) issue. As such it obscures the true nature of the
`
`relationship between Broadcom and its District Court Defendant customers.
`
`REQUEST FOR REHEARING
`
`12
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`The only reasonable conclusion in light of this evidentiary record is that the
`
`Petition is time-barred under § 315(b) because Broadcom’s District Court Defendant
`
`customers are a real party in interest in this IPR, and/or the District Court
`
`Defendants are privies of Petitioner in this case. In light of this record, it is
`
`unreasonable to conclude that Petitioner should not be bound by the statutory time-
`
`bar, just like the District Court Defendants are. At a minimum, the Board should
`
`reopen these proceedings for further fact-finding so the Board can make a
`
`determination on a full evidentiary record, including having the benefit of the
`
`indemnity agreements.
`
`D. The Board’s Final Written Decision violates fundamental principles
`of administrative law.
`
`1.
`
`The Final Written Decision is an ultra vires action that exceeds the
`Board’s statutory authority as delegated by Congress.
`
`Section 315(b) is a jurisdictional limit on the power delegated to the Board by
`
`Congress. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.3(b) (“Jurisdiction . . . A petition to
`
`institute a trial must be filed with the Board consistent with any time period required
`
`by statute.”). The Board’s Final Written Decision and other actions in this IPR are
`
`ultra vires, undertaken without statutory authority.
`
`The Board’s determination of the § 315(b) issue will be reviewed on appeal
`
`with little (if any) deference. See City of Arlington, Texas v. FCC, 133 S. Ct. 1863, 1874
`
`(2013) (appellate courts must “tak[e] seriously, and appl[y] rigorously, in all cases,
`
`statutory limits on agencies’ authority. Where Congress has established a clear line, the
`
`REQUEST FOR REHEARING
`
`13
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`agency cannot go beyond it; and where Congress has established an ambiguous line,
`
`the agency can go no further than the ambiguity will fairly allow.”).
`
`The USPTO Director has taken the position that the Board’s determinations
`
`under § 315(b) are never reviewable. See Brief for Intervenor – Director of the
`
`USPTO at 14-16, Achates Reference Publ’g, Inc. v. Apple, Inc., Appeal No. 2014-1767 (Fed.
`
`Cir. Feb. 24, 2015). This position is contrary to a wealth of United States Supreme
`
`Court authority directly on point. See Bowen v. Michigan Academy of Family Physicians, 476
`
`U.S. 667, 672 n.3 (1986) (collecting authority). It is also contrary to the APA. See 5
`
`U.S.C. § 706(2)(C). Patent Owner fully intends to present this ultra vires argument to
`
`the Federal Circuit on appeal.
`
`2.
`
`The Board’s Final Written Decision and other actions violate the
`Administrative Procedures Act.
`
`The Board’s refusal to consider a reasonably full evidentiary record in
`
`connection with the § 315(b) issue; its denial of all discovery on the issue; and its
`
`refusal to consider the terms of the known indemnity agreement and other known
`
`facts all violate the Board’s duties under the APA. See Olenhouse v. Commodity Credit
`
`Corp., 42 F.3d 1560, 1581 (10th Cir. 1994); Intel Corp. v. U.S. Int’l Trade Commiss’n, 946
`
`F.2d 821, 836-39 (Fed. Cir. 1991).
`
`Moreover, the Board’s actions in this proceeding are contrary to the USPTO’s
`
`own official public statements made during the rulemaking process. See 77 Fed. Reg.
`
`48,680, 48,694-95 (Aug. 14, 2012) (“Additional discovery may be authorized where a
`
`REQUEST FOR REHEARING
`
`14
`
`IPR2013-00601
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`patent owner raises sufficient concerns regarding the petitioner’s certification.”); 77
`
`Fed. Reg. at 48760 (discussing the legal standard). The Board’s actions are
`
`inconsistent with these comments and, therefore violate the APA. See 5 U.S.C. §
`
`552(a), § 706(2)(A),(C); Thomas Jefferson Univ. v. Shalala, 512 U.S. 504, 512 (1994).
`
`The Board’s Final Written Decision is also contrary to the Board’s own
`
`promulgated substantive rules – specifically, 37 C.F.R. § 42.3(b). The Board’s failure
`
`to follow its own rules is contrary to the APA. See 5 U.S.C. § 552(a), § 706(2)(C), (D);
`
`Align Tech., Inc. v. ITC, 771 F.3d 1317, 1322 (Fed. Cir. 2014).
`
`Finally, the Board’s Final Written Decision does not set forth proper findings
`
`of fact or conclusions of law establishing that the Board has jurisdiction to hear this
`
`petition in light of 35 U.S.C. §315(b). This is contrary to the requirements of the APA,
`
`5 U.S.C. § 557(c). See Austin Road Co. v. Occupational Safety and Health Review Comm’n,
`
`683 F.2d 905, 908 (5th Cir. 1982).
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, the Board should grant this request for rehearing,
`
`vacate its Final Written Decision, and dismiss the Petition pursuant to 35 U.S.C.
`
`§315(b). In the alternative, the Board should vacate the Final Written Decision and
`
`reopen this proceeding so additional fact-finding can be done on the §315(b) issue.
`
`
`
`
`
`REQUEST FOR REHEARING
`
`15
`
`IPR2013-00601
`
`
`
`Dated April 6, 2015
`
`
`
`IPR2013-00601
`Patent 6,772,215 B1
`
`Respectfully submitted,
`
`/s/ Sarah E. Spires
`Sarah E. Spires (Reg. No. 61,501)
`
`Peter Ayers (Reg. No. 38,374)
`Lee & Hayes, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`Telephone: 512.605.0252
`Fax: 512.605.0252
`Lead Counsel for Patent Owner
`Wi-Fi One, LLC
`
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT PUCKETT LLP
`2200 Ross Ave. Ste. 4800W
`Dallas, TX 75201
`P: 214-978-6600/F: 214-978-6601
`First Back-Up Counsel for Patent Owner
`
`J. Christopher Lynch (Reg. No. 34,216)
`Lee & Hayes, PLLC
`601 W. Riverside Ave., Suite 1400
`Spokane, WA 99201
`Telephone: 509.324.9256
`Fax: 509.323.8979
`Attorney for Patent Owner
`Wi-Fi One, LLC
`
`John Shumaker (Reg. No. 52,223)
`Lee & Hayes, PLLC
`11501 Alterra Parkway, Suite 450
`Austin, TX 78758
`Telephone: 512.605.0260
`Fax: 509.323.8979
`Attorney for Patent Owner
`Wi-Fi One, LLC
`
`REQUEST FOR REHEARING
`
`16
`
`IPR2013-00601
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2013-00601
`Patent 6,772,215 B1
`
`
`
`The undersigned certifies that on April 6, 2015 the foregoing PATENT
`OWNER’S REQUEST FOR REHEARING OF FINAL WRITTEN DECISION
`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
`Zachary Piccolomini, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
`Dominic.massa@wilmerhale.com
`Zachary.piccolomini@wilmerhale.com
`
`
`Skiermont Puckett LLP
`
`/s/ Sarah E. Spires
`Sarah E. Spires (Reg. No. 61,501)
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
