`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________________
`
`Case IPR2013-00601
`Patent 6,772,215
`Title: Method for Minimizing Feedback Responses in ARQ Protocols
`
`
`
`PATENT OWNER’S RESPONSE
`BY ERICSSON UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Statement of Precise Relief Requested ................................................. 2
`
`Statement of Facts ................................................................................. 2
`
`III. The Petition is Barred by 35 U.S.C. §315(b) ........................................ 8
`
`A. Broadcom is in Privity with the D-Link Defendants ................... 8
`
`B. The D-Link Defendants are Real Parties-in-Interest.................. 12
`
`IV. The ’215 Patent is Valid ...................................................................... 15
`
`A. Overview of the ’215 Patent ...................................................... 15
`
`B. Broadest Reasonable Interpretation ........................................... 22
`
`1.
`
`2.
`
`3.
`
`4.
`
`“responsive to the receiving step, constructing a message
`
`field for a second data unit, said message field including a
`
`type identifier field” ........................................................... 25
`
`“means for receiving” ......................................................... 31
`
`“for minimizing feedback responses in an ARQ protocol” 31
`
`“means for sending” ........................................................... 32
`
`C. The Challenged Independent Claims Are Not Anticipated by
`
`Seo .............................................................................................. 32
`
`1. The Seo NAK_TYPE field does not “identif[y] the message
`
`type of the feedback response from a number of different
`
`message types” ................................................................... 37
`
`
`
`2. The Seo NAK_TYPE field does not teach or disclose a
`
`“message field including a type identifier field” ................ 39
`
`3. Seo does not disclose a “length field” as required by
`
`independent claim 15 .......................................................... 40
`
`D. The Challenged Dependent Claims Are Not Anticipated by
`
`
`
`Seo .............................................................................................. 41
`
`V.
`
`Conclusion ........................................................................................... 42
`
`
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064 (Fed. Cir. 2010) ................29
`Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506
`
`(Cal. App. 2008) ...............................................................................................9, 10
`
`Ericcsson Inc. v. D-Link Corp., No. 6:10-CV-473 (LED/KGF) ............................... 2
`
`Illumina, Inc. v. The Trustee of Columbia University, IPR2012-00006, 2013 WL
`
`2023631 at *3 (PTAB, March 12, 2013) ..............................................................22
`
`In re Abbott Diabetes Care Inc. 696 F.3d 1142, 1149 (Fed. Cir. 2012)..................22
`
`In re Edward S. Lowry, 32 F.3d 1579 (Fed. Cir. 1994) .................................... 30, 31
`
`In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045 (Aug.
`
`25, 2008) ........................................................................................................ 12, 13
`
`In re Max A. Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983)...................................30
`
`In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) ....................................................27
`
`King Pharm. Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) .... 27, 28
`
`Speedtrack, Inc. v. Office Depot, Inc., No. C 07-3602 PJH, 2014, WL 1813292, at
`
`*5-6 (N.D. Cal. May 6, 2014) .............................................................................. 10
`
`Taylor v. Sturgell, 553 U.S. 880 (2008) ............................................................ 10, 11
`
`
`
`
`
`
`
`Statutes
`
`35 U.S.C. § 102 ......................................................................................................1, 2
`
`35 U.S.C. § 312(a)(2) ...........................................................................................8, 14
`
`35 U.S.C. § 315(b) ........................................................................................... passim
`
`35 U.S.C. § 316 .......................................................................................................... 2
`
`Regulations
`
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`37 C.F.R. § 42.100(b) ..............................................................................................22
`
`37 C.F.R. § 42.120 ..................................................................................................... 2
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,759 (Aug. 14, 2012)… .....9, 12
`
`Legislative History
`
`154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) .............. 9
`
`157 Cong. Rec. S1376 (daily ed. March 8, 2011) (statement of Sen. Kyl) .............. 9
`
` Secondary Sources
`
`2 Restatement of Judgments § 62, Comment a .......................................................10
`
`18A Wright & Miller § 4449 ...................................................................................11
`
`
`
`EXHIBIT NO.
`
`EXHIBIT LIST
`
`EXHIBIT DESCRIPTION
`
`Exhibit 1001
`
`Rathonyi, U.S. Patent No. 6,772,215 (“the ’215 Patent”)
`
`Exhibit 1002
`
`Seo, U.S. Patent No. 6,581,176 (“Seo”)
`
`Exhibit 1005
`
`Exhibit 2002
`
`Memorandum Opinion And Order Construing Claim Terms
`of United States Patent Nos. 6,772,215; 6,330,435;
`5,987,019, 6,466,568, and 5,790,516, Case 6:10-CV-473
`(LED/KFG), March 8, 2013
`Complaint
`
`Exhibit 2003
`
`Amended Complaint
`
`Exhibit 2004
`
`Docket as of 11/1/13
`
`Exhibit 2005
`
`Form 10-Q SEC Filing
`
`Exhibit 2007
`
`REDACTED – E-mail Stream from Shang to Tu
`
`Exhibit 2008
`
`E-mail from Nemunaitis to Morgan, 12/9/13
`
`Exhibit 2009
`
`REDACTED - EC Complaint against Ericsson
`
`Exhibit 2015
`
`Witness List Amended Disclosures
`
`Exhibit 2016
`
`Patent Owner’s Copy of Order, ECF Doc 670
`
`Motion of Broadcom, et al for Leave to File Amicus Brief in
`
`Exhibit 2017
`
`Ericsson v. D-Link
`
`Exhibit 2018
`
`Final Judgment Pursuant to FRCP 54(b)
`Black’s Law Dictionary, 9th Ed. (2009) (definition of
`
`Exhibit 2019
`
`“privity”)
`
`Exhibit 2020
`
`Declaration of Robert Akl, D.Sc.
`
`Amendment and Reply to Office Action for Application No.
`
`Exhibit 2021
`
`09/537,146 (January 7, 2004)
`
`Notice of Allowability for Application No. 09/537,146
`
`Exhibit 2022
`
`(February 24, 2004)
`
`
`
`Case IPR2013-00601
`
`
`
`
`STATEMENT OF MATERIAL FACTS IN DISPUTE
`
`Petitioner did not submit a statement of material facts in its petition for inter
`
`partes review. Accordingly, the Patent Owner cannot properly submit, as required
`
`by 37 CFR §42.23, a statement of material facts in dispute. Out of an abundance
`
`of caution, however, Patent Owner identifies the following disputed material facts:
`A. Whether U.S. Pat. No. 6,581,176 to Seo renders claims 1, 2, 4, 6, 8,
`
`15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54 of the ’215 Patent
`
`unpatentable under 35 U.S.C. § 102; and
`B. Whether this inter partes review is barred under 35 U.S.C. §315(b).
`
`
`
`
`
`
`
`1
`
`
`
`Case IPR2013-00601
`
`
`PATENT OWNER RESPONSE TO PETITION
`Statement of Precise Relief Requested
`
`I.
`
`Pursuant to 35 U.S.C. § 316 and 37 C.F.R. § 42.120, Patent Owner requests
`
`that the Board confirm the validity of claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34,
`
`45, 46, 49, 52, and 54 of the ’215 Patent. Specifically Patent Owner requests that
`
`the Board find:
`
`A.
`
`Claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54
`
`of the ’215 Patent are not anticipated under 35 U.S.C. § 102 by Seo; and
`
`B.
`
`That this inter partes review is barred under 35 U.S.C. § 315(b).
`
`II.
`
`Statement of Facts
`
`Over three years before Broadcom filed the present Petition, Ericsson served
`
`a complaint against D-Link Corporation and D-Link Systems, Inc. (“D-Link”),
`
`Netgear, Inc. (“Netgear”), Acer Inc. and Acer America Corporation (“Acer”), and
`
`Gateway Inc. (“Gateway”) for infringement of its patents. Ericsson Inc. v. D-Link
`
`Corp., No. 6:10-CV-473 (LED/KGF) (“D-Link Lawsuit”); (Ex. 2002). Ericsson
`
`later amended its complaint and added Dell, Inc. (“Dell”), Toshiba Corporation,
`
`Toshiba America, Inc., Toshiba America Information Systems, Inc. and Toshiba
`
`2
`
`
`
`Case IPR2013-00601
`America Consumer Products, LLC (“Toshiba”), and Belkin International, Inc.
`
`(“Belkin”) as defendants.1 (Ex. 2003).
`
`
`
`The complaint alleged infringement of U.S. Patent Nos. 6,424,625,
`
`6,519,215, and 6,466,568. (Ex. 2003). The D-Link Defendants challenged the
`
`validity of Ericsson’s patents and denied infringement. With respect to validity, the
`
`D-Link Defendants served thousands of pages of invalidity contentions and expert
`
`reports, involving many of the same assertions that are now the basis for
`
`Broadcom’s IPR petition. With respect to infringement, the Defendants’ supplier,
`
`Broadcom, produced technical documents relating to the design and operation of
`
`its chips and agreed to voluntarily appear and testify at trial on behalf of the D-
`
`Link Defendants. (Exs. 2004, 2015). On the eve of trial, the D-Link Defendants
`
`abandoned their invalidity case regarding the ’215 Patent and the ’568 Patent, but
`
`continued challenging validity with respect to the ’625 Patent. At the end of the
`
`trial, the jury found that the D-Link Defendants infringed three Ericsson patents
`
`based on their WLAN-compliant products. (Ex. 2018). The D-Link Defendants
`
`appealed to the Federal Circuit (where the appeal is now pending), D-Link
`
`Lawsuit, Nos. 2013-1625, -1631, -1632, -1633.
`
`
`
`1 The defendants listed in the Complaint and the Amended Complaint shall
`collectively be referred to as “D-Link Defendants.”
`3
`
`
`
`Case IPR2013-00601
`Broadcom has been working behind the scenes for years to help its
`
`customers defeat Ericsson’s infringement claims. As far back as July 2010,
`
`Broadcom assisted Acer, during negotiations with Ericsson, in analyzing the very
`
`patents that are now the subject of Broadcom’s petition. (Ex. 2007). Discussing an
`
`upcoming meeting on that topic, an Acer executive noted, “[The] [m]ain purpose is
`
`to discuss comments from Acer’s vendors, including Intel, Broadcom and
`
`Atheros.” Id. As part of its effort to bring to the attention of the Board information
`
`bearing on the relationship among Broadcom and the D-Link Defendants, Ericsson
`
`provided notice to Acer that it was seeking relief from the Protective Order in the
`
`D-Link Lawsuit. (Ex. 2008). In response, Acer asserted that the information
`
`Ericsson sought to give the Board was “privileged and [was] inadvertently
`
`produced.” Id. Acer obviously believes that its relationship with Broadcom is
`
`sufficiently close, and their interests are sufficiently aligned, to support a privilege
`
`covering relevant communications between the two.
`
`Broadcom’s SEC filings furnish additional evidence that it was a real party-
`
`in-interest in the D-Link Lawsuit, in privity with the D-Link Defendants, and that
`
`the D-Link Defendants are real parties in interest to its IPR petition. (Ex. 2005).
`
`Broadcom states in these filings that it is not uncommon for Broadcom “to
`
`indemnify some customers and strategic partners under our agreements if a third
`
`4
`
`
`
`Case IPR2013-00601
`party alleges or if a court finds that our products or activities have infringed upon,
`
`misappropriated or misused another party’s proprietary rights.” (Id. at 53/65). To
`
`protect these interests, Broadcom “engage[s] in litigation to . . . determine the
`
`validity and scope of the proprietary rights of others, including [its] customers.”
`
`(Id.) This IPR is just another instance of Broadcom filing litigation on behalf of its
`
`customers pursuant to its indemnity obligations.
`
`In another instance, while the D-Link litigation was pending, Broadcom
`
`filed a Complaint in the European Commission arguing that Ericsson’s assertion of
`
`its patents against Broadcom’s customers violated European Union competition
`
`laws. (Ex. 2009). In its complaint, Broadcom referred to the D-Link Lawsuit and,
`
`in language that reflects the identity of interest between itself and the D-Link
`
`Defendants stated that “Ericsson’s efforts to hold-up Broadcom’s customers are
`
`tantamount to holding up Broadcom itself . . . .” (Id. at ¶101).
`
`Less than three months after Ericsson obtained a judgment of infringement
`
`against the D-Link Defendants, Broadcom filed its petition for IPR of the same
`
`claims infringed by the D-Link Defendants’ use of its chips, relying on the same
`
`references the D-Link Defendants used in their invalidity case.2 Broadcom made
`
`
`
`2 Broadcom immediately petitioned for inter partes review (“IPR”) of the three
`patents the D-Link Defendants were found to infringe—U.S. Patent Nos. 6,466,568
`5
`
`
`
`Case IPR2013-00601
`the rote assertion that there were no other real parties in interest, but in the body of
`
`its petition admitted that it supplied “Wi-Fi compliant products, such as the
`
`BCM4313 and BCM4321” to the D-Link Defendants that were found to infringe.
`
`Paper No. 3 at 1. It requires no logical leap to see first, that Broadcom has a duty
`
`to indemnify (and a community of interest with) some or all D-Link Defendants
`
`because its own products caused the D-Link Defendants to infringe Ericsson’s
`
`patents, and second, that the coordination of Broadcom’s successive attack on
`
`Ericsson’s patents is no coincidence.
`
`There is further evidence that the D-Link Defendants are real parties in
`
`interest to Broadcom’s IPR proceeding. Broadcom filed a “Motion of Amici Wi-Fi
`
`Chip Companies” in this Court, in the pending appeal from the judgment in the D-
`
`Link Lawsuit. (Ex. 2017). In that motion, Broadcom specifically stated that the
`
`damages verdict “affect[s] amici even though they were not parties to the case”
`
`because “the award would affect demand for those chips and may also provoke
`
`indemnification issues.” (Id. at p. 4) (emphasis added). This demonstrates not
`
`only the effect of the relationship, but also Broadcom’s willingness to take action
`
`in support of the D-Link Defendants.
`
`
`
`(“the ‘568 Patent”) (IPR2013-00602), 6,424,625 (“the ‘625 Patent”) (IPR2013-
`00636, and 6,772, 215 (“the ‘215 Patent”) (IPR2013-00601).
`6
`
`
`
`Case IPR2013-00601
`Broadcom cannot deny the existence of indemnity agreements and other
`
`evidence bearing on its community of interests with the D-Link Defendants, but
`
`Ericsson was prevented from bringing these to the attention of the Board because
`
`they are subject to a Protective Order. (Ex. 2016). The contents and scope of these
`
`documents continues to remain secret, but their existence is not: in its public order
`
`denying Ericsson Inc.’s Emergency Motion for Relief from the Protective Order,
`
`the district court recited that “[d]uring the course of the litigation, Ericsson
`
`discovered (1) an indemnity agreement between Toshiba and non-party Broadcom
`
`Corporation (‘Broadcom’), (2) an indemnity agreement between Dell and
`
`Broadcom, and
`
`(3) an email between Dell and Broadcom discussing
`
`indemnification[.]” (Ex. 2016). There is no question an indemnity relationship
`
`exists between Broadcom and at least two of the D-Link Defendants and there was
`
`communication regarding the relationship during the pendency of the D-Link
`
`lawsuit.
`
`The Board denied Ericsson’s request for discovery that would have
`
`established the existence of the indemnity relationships, the substance of the
`
`conversation between Dell and Broadcom pertaining to Broadcom’s indemnity
`
`obligation, and likely produced additional evidence establishing Broadcom’s
`
`privity relationship with the defendants. Paper No. 20. Ericsson filed a Request
`
`7
`
`
`
`Case IPR2013-00601
`for Rehearing that the Board denied. Paper No. 24. The Board issued its Decision
`
`for Institution of Inter Partes Review on March 10, 2014, Paper No. 25, and
`
`Ericsson now submits its Patent Owner’s Response.
`III. The Petition is Barred by 35 U.S.C. §315(b)
`
`The D-Link Defendants were formally served with a complaint more than
`
`one year before the filing date of the Petition; Petitioner is subject to the 35 U.S.C.
`
`§ 315(b)3 bar as a privy to the D-Link Defendants, and because the D-Link
`
`Defendants are real parties-in-interest to this action, despite Petitioner’s failure to
`
`designate them as such under 35 U.S.C. § 312(a)(2).
`A. Broadcom is in Privity with the D-Link Defendants
`
`
`
`Broadcom has an indemnity relationship with Dell and Toshiba, and has
`
`initiated multiple legal actions on behalf of the community of interest. These
`
`actions specifically relate to the ’215 Patent and Broadcom’s BCM4313 and
`
`BCM4321 chips, the property in question here. The result of these legal actions
`
`
`
`3 Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding 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.”
`
`
`
`8
`
`
`
`Case IPR2013-00601
`will directly impact both Broadcom and these D-Link Defendants, demonstrating
`
`that their relationship is sufficiently close that both should be bound by the trial
`
`outcome and related estoppels.
`
`The term “privity” describes a relationship between a litigant and a nonparty
`that is characterized by a “mutuality of interest,” Ex. 2019 (Black’s Law
`
`Dictionary, 9th Ed. (2009)), “sufficiently close such that both should be bound by
`
`the trial outcome and related estoppels,” Office Patent Trial Practice Guide, 77
`
`Fed. Reg. at 48759. Both Congress and the PTO expanded the meaning of privity
`
`for use in the AIA and acknowledged that the PTO will give effect to judgments by
`
`extending the term “beyond the classical description.” 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. at 48,759. The PTO further noted that “privity
`
`is an equitable rule that takes into account the ‘practical situation,’ and should
`
`extend to parties to transactions and other activities relating to the property in
`
`question.” Trial Practice Guide, 77 Fed. Reg. at 48759 (quoting 157 Cong. Rec.
`
`S1376 (dialed ed. Mar. 8, 2011) (statement of Sen. Kyl)). Thus, both Congress and
`
`the PTO specifically expanded the traditional notions of privity to cater the
`
`doctrine to the unique context of IPR proceedings.
`
`9
`
`
`
`Case IPR2013-00601
`The PTO acknowledged the aim of the AIA in the Trial Practice Guide and
`
`stated that there are multiple factors relevant to the “real party-in-interest” and
`
`“privity” analysis, and it specifically cited both Taylor v. Sturgell, 553 U.S. 880
`
`(2008) and Aoki, 163 Cal. App. 4th 1506. Taylor listed six distinct bases on which
`
`a party in a later case could be bound by the judgment in an earlier case to which
`
`he was not a party. 553 U.S. at 894–95. Two relevant factors listed in Taylor are
`
`whether the parties maintain a pre-existing “substantive legal relationship,” or
`
`whether the later party had the opportunity to control the original party’s
`
`participation in a proceeding. Id. Each of these factors is applicable here.
`
`When discussing “substantive legal relationships,” Taylor specifically stated
`
`that these relationships “are sometimes collectively referred to as ‘privity.’” Id. at
`
`894 n.8. The Court then cited to the Restatement:
`
`[A] person standing in one of a variety of pre-existing legal
`relationships with a party may be bound by a judgment affecting that
`party. These relationships are often referred to as involving “privity.”
`The circumstances under which such relationships result in preclusion
`are the subject of specific rules such as those governing . . .
`indemnitor and indemnitee[.]
`
` Restatement of Judgments § 62, Comment a (emphasis added); see also
`
` 2
`
`Speedtrack, Inc. v. Office Depot, Inc., No. C 07-3602 PJH, 2014 WL 1813292, at
`
`*5-6 (N.D. Cal. May 6, 2014) (an indemnification agreement between the
`
`defendants and their software supplier established that the parties were in privity
`
`10
`
`
`
`Case IPR2013-00601
`despite a lack of control over the suit, barring the infringement claims as res
`
`judicata). The Supreme Court specifically relied on the Restatement, and
`
`explained that the term “privity” has “come to be used more broadly, as a way to
`
`express the conclusion that nonparty preclusion is appropriate on any ground.”
`
`Taylor, 553 U.S. at 894 n. 8 (citing 18A Wright & Miller § 4449, pp. 351-353, and
`
`n. 33). Thus, the Court not only relied on authority that prescribes an indemnity
`
`relationship as a pre-existing substantive legal relationship, but also confirmed the
`
`broader interpretation of the term “privity.”
`
`
`
`The substantive legal relationship between Broadcom and the D-Link
`
`Defendants, specifically Dell and Toshiba, relates to the property in question.
`
`Ericsson’s patents are the property in question both here and in the previous
`
`litigation—and, as Broadcom admits, both proceedings are closely related: “Patent
`
`Owner’s infringement allegations were based in part on Defendants’ use of
`
`Petitioner’s WiFi compliant products, such as the BCM4313 and BCM4321.”
`
`Paper No. 3 at 1. Ericsson proved the existence of Broadcom’s indemnity
`
`relationships that dictate its contractual relationship to the property, and also that
`
`Broadcom has an express policy of initiating litigation to control the property, and
`
`did take several actions relating to the property in question during the D-Link
`
`Lawsuit. (See Exs. 2005 at 53/65; 2009, 2015 at p. 3, 6, 2016, 2017). Thus, not
`
`11
`
`
`
`Case IPR2013-00601
`only does Broadcom maintain substantive legal relationships with the D-Link
`
`Defendants, but it has carried out multiple legal actions to control the property in
`
`question, and could have exercised control the D-Link Lawsuit. These substantive
`
`legal relationships and corresponding actions to control the ’215 Patent prove that
`
`Broadcom is in privity with the Dell and Toshiba, among others, and therefore
`
`barred under Section 315(b).
`B.
`
`The D-Link Defendants are Real Parties-in-Interest.
`
`
`
`The D-Link Defendants’ substantive legal relationships with Broadcom and
`
`the parties’ coordinated activity demonstrate that the D-Link Defendants are real
`
`parties in interest to this IPR. In IPR proceedings, “the ‘real party-in-interest’ is
`
`the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be
`
`the petitioner itself, and/or it may be the party or parties at whose behest the
`
`petition has been filed.” Trial Practice Guide, 77 Fed. Reg. at 48759. The same
`
`factors for determining privity apply to real parties in interest. Id. In addition, the
`
`PTO also relies on In re Guan Inter Partes Reexamination Proceeding, Control No.
`
`95/001,045, Decision Vacating Filing Date, at 8 (Aug. 25, 2008), which states that
`
`the petitioner must identify another entity as the real party in interest if it
`
`“[a]llow[s] another entity to direct or control the content (e.g., provide the prior
`
`patents/printed publication on which the reexam is to be based) of the request
`
`12
`
`
`
`Case IPR2013-00601
`whether such is termed ‘technical review’ or some other phrase.” (emphasis
`
`added). Broadcom’s substantive legal relationships with at least Dell and Toshiba,
`
`Broadcom’s use of the same prior art references as the D-Link Defendants, and the
`
`timing of Broadcom’s Petition for IPR confirm that both Broadcom and the D-Link
`
`Defendants are real parties in interest.
`
`On August 8, 2013, Ericsson obtained a judgment of infringement against
`
`the D-Link Defendants for three patents. (Ex. 2018). Less than three months later,
`
`Broadcom filed its Petition for IPR of the same claims infringed by the D-Link
`
`Defendants’ use of its chips, relying on the same reference the D-Link Defendants
`
`used in their invalidity case. For obvious reasons, Broadcom did not seek review
`
`of the claims the district court found to not be infringed. (See Ex. 2018).
`
`Broadcom instead made the rote assertion that there were no other real
`
`parties in interest. However, Broadcom admitted that it supplied the property in
`
`question, namely the “Wi-Fi compliant products, such as the BCM4313 and
`
`BCM4321” to the D-Link Defendants. Paper No. 3 at 1. The only logical
`
`inference is that Broadcom’s duty to indemnify some or all the D-Link Defendants
`
`triggered the successive attack on Ericsson’s patents, and that the D-Link
`
`Defendants desire review of the ’215 Patent.
`
`13
`
`
`
`Case IPR2013-00601
`In addition, Broadcom made it clear that both itself and the D-Link
`
`Defendants desire review of the patent in its “Motion of Amici Wi-Fi Chip
`
`Companies.” Broadcom specifically stated that the damages verdict in the D-Link
`
`Lawsuit “affect[s] amici even though they were not parties to the case” because
`
`“the award would affect demand for those chips and may also provoke
`
`indemnification issues.” (Ex. 2017 at p. 4) (emphasis added). This demonstrates
`
`that Broadcom and the D-Link Defendants have common interests in the ’215
`
`Patent, and that Broadcom is willing to take action on behalf of the D-Link
`
`Defendants. Broadcom cannot hide behind its rote assertions when it is clear that
`
`the D-Link Defendants “desire[ ] review of the patent” and, therefore, are real
`
`parties in interest.
`
`The coordination between Broadcom and the D-Link Defendants and their
`
`indemnity agreements clearly demonstrate that the D-Link Defendants are real
`
`parties in interest. Broadcom failed to properly designate them as such under 35
`
`U.S.C. § 312(a)(2), and because the D-Link Defendants were served with a
`
`complaint alleging infringement of the ’215 Patent more than one year before
`
`Broadcom filed its Petition, Broadcom is barred from review under Section 315(b).
`
`14
`
`
`
`Case IPR2013-00601
`IV. The ’215 Patent is Valid
`A. Overview of the ’215 Patent
`
`The ’215 Patent describes different mechanisms for minimizing feedback
`
`responses when using an Automatic Repeat Request (ARQ) protocol to request
`
`retransmission of lost or erroneous Protocol Data Units (PDUs). (Ex. 1001, ’215
`
`Pat. at 1:27-37). A PDU is a unit of data conveyed between two peer entities in a
`
`telecommunication network. (Id. at 1:29-30.) A PDU comprises an information
`
`element that includes a header having control information and a payload. (Ex.
`
`2020, Akl Dec. ¶ 14.) An ARQ protocol is a set of rules that provides efficient
`
`retransmission mechanisms between a sender and a receiver peer
`
`in a
`
`communication system. ’215 Pat. at 1:42-48. These rules specify, for example,
`
`how and in what form the PDUs are to be constructed so that the receiving side can
`
`interpret the conveyed PDUs correctly and respond to them accordingly. (Id.; Akl
`
`Dec., ¶ 14.)
`
`Three main types of PDUs can be transferred between ARQ peer entities:
`
`user data, error recovery control data, and common control data. (’215 Pat. at
`
`1:49-51.) A user data PDU may include user data and a sequence number. (Id.)
`
`An error recovery control data PDU may include various control information
`
`needed for error recovery and control functions such as positive and negative
`
`15
`
`
`
`Case IPR2013-00601
`acknowledgments. (Id.) PDUs that include user data and at least a sequence
`
`number are referred to as Data-PDUs (D-PDUs), and PDUs that include control
`
`data used for error control/recovery are referred to as Status-PDUs (S-PDUs). (Id.)
`
`Prior art ARQ protocols included a format identifier or PDU type field in the
`
`header to distinguish a Data-PDU from a Status-PDU. (Id. at 2:52-55.) That field
`
`is labeled “PDU_format” in FIGS. 2 and 3 of the ’215 Patent (below):
`
`
`
`
`
`The value of the PDU format field identifies each information element as either a
`
`D-PDU or a S-PDU. (Id. at 2:52-55.)
`
`The ’215 Patent describes, with respect to an ARQ protocol, techniques for
`
`reducing the number and/or size of feedback responses transmitted from the
`
`receiver to the sender in the peer system. Two types of feedback responses existed
`
`in the prior art: an ARQ peer entity can transmit a positive acknowledgement that
`
`it received one or more D-PDUs, or an ARQ peer entity can send a negative
`
`acknowledgement indicting the retransmission of a D-PDU that was not received
`
`correctly. (Id. at 2:38-44.)
`
`16
`
`
`
`Case IPR2013-00601
`Figures 2-3 of the ’215 patent illustrate two prior art approaches for
`
`requesting retransmission of lost or corrupted D-PDUs. One approach (FIG. 2)
`
`provides a list of first and last sequence numbers for the PDUs requested for
`
`retransmission. (Id. at 2:63-3:5.) The second approach (FIG. 3) uses a bitmap, in
`
`which each bit corresponds to a D-PDU, to identify the sequence numbers of the
`
`PDUs requested for retransmission. (Id. at 3:18-29.) In either case, upon receipt
`
`of the S-PDU, the sender peer retransmits the PDUs having the requested sequence
`
`numbers.
`
`Prior art ARQ protocols used inefficient, fixed length messages to request
`
`retransmission of lost or corrupted PDUs. (Id. at 3:46-50.) Due to the required
`
`fixed length of an S-PDU, prior art ARQ protocols for creating S-PDUs wasted
`
`bandwidth by unnecessarily transmitting a large amount of overhead information.
`
`(See id. at 3:48-50 and Table 2.) For example, a significant amount of unnecessary
`
`overhead is introduced when a large number of D-PDUs are transmitted between
`
`two ARQ peer entities as each D-PDU must be acknowledged or selectively
`
`requested for retransmission. (Id. at 3:50-54.)
`
`The ’215 Patent provides for encoding of multiple messages in a single S-
`
`PDU. To do so, the ’215 patent includes messages (BITMAP, LIST, ACK or NO
`
`MORE) in the payload to allow for more flexibility in creating S-PDUs. (Id. at
`
`17
`
`
`
`Case IPR2013-00601
`Table 2.) For example, the receiving peer entity in the prior art could request only
`
`one type of ARQ message (BITMAP or LIST) because the format identifier of the
`
`message was required to be in the header. (Id. at FIGs. 2-3; Akl Dec. ¶ 21.) The
`
`’215 Patent, on the other hand placed the ARQ message in the payload to create a
`
`flexible system allowing messages to vary in terms of length, location, and content.
`
`(’215 Pat. at FIGs. 4-8, 3:46-50; Akl Dec. ¶ 21.)
`
`The ’215 Patent was directed
`
`toward addressing
`
`the problem of
`
`“determin[ing] how to efficiently represent (encode) in a message the status of an
`
`arbitrary amount and distribution of n numbers from a set of m numbers,” where n
`
`is the number of sequence numbers identified in the message and n is the total
`
`number of sequence numbers (’215 Pat. at 4:31-34, Akl Dec. ¶ 22.) The claimed
`
`method “can be used to minimize the size of S-PDUs in an ARQ protocol” (id. at
`
`4:33-35), or “can be used to maximize the number of SNs in an S-PDU with
`
`limited size, if it is not possible to fit all potential SNs into a single S-PDU” (id. at
`
`4:35-40).
`
`As part of the message, the ’215 specification introduces a “type identifier
`
`field” in the payload that indicates the type of ARQ information being transmitted
`
`in the message. For example, the type identifier field could indicate that the
`
`message is a “BITMAP,” a “LIST,” or an “ACK” (acknowledgement) message.
`
`18
`
`
`
`Case IPR2013-00601
`(Id. at Table 2.) By including the type identifier field in the message in the
`
`payload, as opposed to the header, the ’215 Patent supported different “types” of
`
`feedback messages (e.g., “BITMAP’,” and “LIST’,” “ACK,” and “NO MORE”) in
`
`“arbitrary” combinations in a single S-PDU. (Id. at 7:61-65; see also FIGS. 9-13;
`
`Akl Dec ¶ 23.) This flex
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
