Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 71
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION,
`Petitioner,
`
`v.
`
`WI-FI ONE, LLC,
`Patent Owner.
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)1
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper 71
`Entered: June 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION,
`Petitioner,
`
`v.
`
`WI-FI ONE, LLC,
`Patent Owner.
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)1
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`
`I.
`SUMMARY
`Patent Owner, Wi-Fi One, LLC,2 requests rehearing of the Final
`
`Written Decisions (IPR2013-00601, Paper 66, “601 Dec.”; IPR2013-00602,
`
`Paper 60, “602 Dec.”; IPR2013-00636, Paper 60, “636 Dec.”). Paper 70
`
`(“Req.”).3 Patent Owner seeks rehearing on the grounds that:
`
`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); and
`
`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 proceeding.
`
`Req. 2. Patent Owner also argues that our Final Written Decisions raise
`
`administrative law issues. Id. at 4, 13–15.
`
`The Requests for Rehearing are denied.
`
`
`
`2 On July 11, 2014, Patent Owner filed an Updated Mandatory Notice in
`IPR2013-00601 indicating that the patent-at-issue had been assigned to
`Wi-Fi One, LLC, and that Wi-Fi One, LLC and PanOptis Patent
`Management, LLC are now the real parties-in-interest. Paper 43. The same
`paper was filed in IPR2013-00602 (Paper 40) and IPR2013-00636
`(Paper 38).
`3 Patent Owner filed a Request for Rehearing in each of IPR2013-00601
`(Paper 70), IPR2013-00602 (Paper 64), and IPR2013-00636 (Paper 64). All
`three requests put forward substantively the same arguments and, thus, we
`address them together with reference to the Request in IPR2013-00601.
`Citations are to IPR2013-00601, unless otherwise noted.
`
`2
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`
`II. DISCUSSION
`
`The applicable standard for a request for rehearing is set forth in
`
`37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify
`all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, opposition, or a
`reply.
`
`A. 35 U.S.C. § 315(b)
`
`Patent Owner argues that the Board misapprehended the purpose of
`
`the “real party in interest, or privy” language of § 315(b). Req. 4.
`
`Specifically, Patent Owner argues that “the legislative purpose of [35 U.S.C.
`
`§ 315(b)] is to ensure IPR Petitions are not used as a litigation tactic for
`
`purposes of delay” (id. at 4), and that “[t]he plain text of the statute makes
`
`clear that . . . § 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” (id. at 5). Patent
`
`Owner also argues that the legal standard for determining whether a third
`
`party is a “real party in interest, or privy of petition” under § 315(b) “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.” Req. 7.
`
`Patent Owner has not argued in its Patent Owner Response the
`
`legislative purpose of § 315(b). We could not have misapprehended or
`
`overlooked arguments not before us. Moreover, Patent Owner identifies
`
`3
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`nothing in our Decision that it contends mischaracterizes the legislative
`
`purpose of § 315(b). We are not persuaded, therefore, that we have
`
`overlooked or misapprehended the legislative purpose of § 315(b).
`
`Patent Owner also argues that we 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). Req. 6. Specifically, Patent
`
`Owner contends that “the Board applied a narrow and rigid standard that is
`
`erroneous as a matter of law” (id. at 7) because it “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” (id.) without “also considering, inter
`
`alia, the non-party’s control over the IPR” (id. at 8). According to Patent
`
`Owner, “the issue under § 315(b) is whether the District Court Defendants
`
`have attempted to circumvent the one-year statutory time-bar.” Req. 9.
`
`Although our Decision on Patent Owner’s Motion for Additional
`
`Discovery (Paper 23) focuses primarily on Broadcom’s (“Petitioner”)
`
`exercise of control, or opportunity to exercise control over the prior District
`
`Court lawsuit (Req. 8), that is because that was the focus of Patent Owner’s
`
`Motion for Additional Discovery. See, e.g., Paper 14, 6 (“Here, evidence
`
`will prove that Broadcom has had the opportunity to control and maintains a
`
`substantive legal relationship with the D-Link Defendants sufficient to bind
`
`Broadcom to the District Court’s judgment.”).
`
`That decision, however, did not characterize the legal standard, for all
`
`cases, as being limited strictly to a petitioner’s control, or opportunity to
`
`control, a non-party in previous litigation. To the contrary, it addressed
`
`4
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`control, or opportunity to control, by a non-party generally as one of a
`
`number of factors:
`
`Whether parties are in privity, for instance, depends on whether
`the relationship between a party and its alleged privy is
`“sufficiently close such that both should be bound by the trial
`outcome and related estoppels.” [Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012].
`Depending on the circumstances, a number of factors may be
`relevant to the analysis, including whether the non-party
`“exercised or could have exercised control over a party’s
`participation in a proceeding,” and whether the non-party is
`responsible for funding and directing the proceeding. Id. at
`48,759-60.
`
`Paper 23, 7.
`
`That decision also addresses Patent Owner’s theory that the indemnity
`
`agreements imply that the District Court Defendants are real parties in
`
`interest in these inter partes reviews (“IPRs”). See id. at 12–13. Patent
`
`Owner relied on substantively the same arguments and evidence in its Patent
`
`Owner Response as in its Motion for Additional Discovery, and our Final
`
`Written Decision, thus, applied essentially the same analysis. 601 Dec. 8–9.
`
`Accordingly, we are not persuaded that we misapprehended the proper legal
`
`standard for establishing privity or real party in interest.
`
`B. District Court Defendants
`
`Patent Owner argues that we misapprehended and overlooked
`
`evidence establishing that certain District Court defendants are real parties in
`
`interest and/or are in privity with Petitioner for purposes of this proceeding.
`
`Req. 10–13. Specifically, Patent Owner argues that it has made “a strong
`
`circumstantial showing that Petitioner and at least some of their District
`
`Court Defendant customers are in cahoots” because “there are indemnity
`
`5
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`agreements,” they “share a common economic and legal interest,” and
`
`“[Petitioner] has been coordinating with the District Court Defendants for
`
`many years.” Id. at 11–12. According to Patent Owner, “the Board erred
`
`when it decided the § 315(b) issue without reviewing the known indemnity
`
`agreements.” Id. at 12.
`
`Patent Owner’s arguments are not persuasive. The evidence cited by
`
`Patent Owner were Paper 3, and Exhibits 2005 and 2015–2018. PO
`
`Resp. 8–14. Exhibit 2018 is a final judgment of infringement in the co-
`
`pending district court litigation that sheds no light on whether Broadcom
`
`controlled, or could have controlled, the district court defendants, or vice-
`
`versa. All of the other evidence was considered in our Decision on Patent
`
`Owner’s Motion for Additional Discovery. For example, we considered,
`
`and rejected, Patent Owner’s argument that an indemnity relationship is
`
`sufficient to establish privity:
`
`Contrary to Ericsson’s assertion that “[t]he weight of authority
`strongly supports that an indemnity agreement . . . establish[es]
`privity,” Mot. 6, Bros. Inc, TRW, Dentspl[]y and other cases
`noted supra illustrate that more is required. Control of the
`litigation, or some sort of representation, constitutes a “crucial”
`factor. Dentsply, 42 F.Supp.2d at 398.
`
`Paper 23, 9. As we indicated in our Final Written Decision, Patent Owner’s
`
`Response relied on substantively the same arguments and evidence as its
`
`Motion for Additional Discovery, and we were not persuaded for the same
`
`reasons as explained in our decision on that motion. 601 Dec. 8–9.
`
`Accordingly, we are not persuaded that we misapprehended or overlooked
`
`the evidence relied upon by Patent Owner. To the extent Patent Owner is
`
`arguing that we should have granted its Motion for Additional Discovery
`
`6
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`directed to the indemnity agreements, the argument is untimely because our
`
`decision denying that discovery was issued well over a year before our Final
`
`Written Decision, Patent Owner requested rehearing (Paper 27) and we
`
`denied that request (Paper 28). See 37 C.F.R. § 42.71(d)(1).
`
`In these proceedings, Patent Owner does not set forth a persuasive
`
`argument, supported by evidence, that the District Court Defendants funded,
`
`controlled, or could have controlled these proceedings, or that Petitioner’s
`
`indemnity agreements even mention IPRs, let alone would show funding,
`
`control, or ability to control IPRs, or would have obligated Broadcom to file
`
`specific, if any, IPRs. See Req. 12. Instead, Patent Owner generally asserts
`
`that “Broadcom’s duty to indemnify triggered the successive attack on [it]s
`
`patents,” without specifying, based on cited precedent supporting the theory,
`
`how even a generic trigger for some unspecified future action, even if it
`
`existed, elevates the District Court Defendants to real parties in interest in
`
`the IPRs. See PO Resp. 13.
`
`Patent Owner also argues that Petitioner failed to provide evidence of
`
`the non-party’s lack of participation in, or control over, this proceeding, and
`
`that the Declaration of David Djavaherian (Ex. 1007) submitted by
`
`Petitioner in its Opposition to Patent Owner’s Motion for Additional
`
`Discovery is carefully worded to obscure the true nature of the relationship
`
`between Petitioner and the District Court defendants. Req. 11, 12. Patent
`
`Owner did not make these arguments in the Patent Owner Response. We,
`
`therefore, could not have misapprehended or overlooked them.
`
`7
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`
`C. Administrative Law Issues
`
`Patent Owner argues that “the Board’s Final Written Decision and
`
`other actions in this IPR are ultra vires, undertaken without statutory
`
`authority.” Req. 13. Specifically, Patent Owner argues the following:
`
`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 [Comm’n], 946 F.2d 821, 836-39
`(Fed. Cir. 1991).
`
`Id. at 14. Patent Owner also argues that (1) our actions are inconsistent with
`
`public statements made during the rulemaking process and, therefore, violate
`
`the Administrative Procedure Act (“APA”); (2) our Decision is contrary to
`
`37 C.F.R. § 42.3(b) and our failure to follow our rules is contrary to the
`
`APA; and (3) our Decision does not establish that we have jurisdiction to
`
`hear this petition in light of 35 U.S.C. § 315(b), contrary to the APA. Id. at
`
`15.
`
`Patent Owner’s arguments are predicated on its contention that we
`
`lack jurisdiction under § 315(b) because the defendants in the co-pending
`
`district court litigation are real parties-in-interest who were served with a
`
`complaint alleging infringement more than one year before the filing of the
`
`Petitions in these proceedings. As discussed above, we are not persuaded
`
`that we erred in determining that those defendants are not real parties in
`
`interest. As a result, we are not persuaded that the Petitions were time-
`
`barred under § 315(b), and we are, therefore, not persuaded that our Final
`
`Written Decisions are ultra vires actions that exceed our statutory authority.
`
`8
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`
`III. Conclusion
`
`For the foregoing reasons, Patent Owner has not shown that our Final
`
`Written Decision in IPR2013-00601 should be modified. For the same
`
`reasons, Patent Owner also has failed to show that our Final Written
`
`Decisions in IPR2013-00602 and IPR2013-00636 should be modified.
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that Patent Owner’s Requests for Rehearing are denied.
`
`9
`
`
`
`IPR2013-00601 (Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,466,568 B1)
`IPR2013-00636 (Patent 6,424,625 B1)
`
`For PETITIONER:
`
`Dominic E. Massa
`Michael A. Diner
`Zachary Piccolomini
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Dominic.massa@wilmerhale.com
`michael.diener@wilmerhale.com
`Zachary.piccolomini@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Peter J. Ayers
`J. Christopher Lynch
`Sarah Spires
`LEE & HAYES PLLC
`peter@leehayes.com
`chris@leehayes.com
`Sarah.spires@skiermontpuckett.com
`
`10
`
`
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
