Case 6:10-cv-00473-LED-KFG Document 670 Filed 12/20/13 Page 1 of 4 PageID #: 26632
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`CASE NO. 6:10-CV-473
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`§§§§§
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`ORDER
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`ERICSSON INC., et al.,
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`Plaintiffs,
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`vs.
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`D-LINK CORPORATION, et al.,
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`Defendants.
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`Before the Court are Plaintiff Ericsson Inc.’s Emergency Motion for Relief from the
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`Protective Order (Docket No. 662) and Ericsson’s Emergency Motion for Expedited Briefing
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`(Docket No. 664). For the following motions, the motions are DENIED.
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`BACKGROUND
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`On August 8, 2013, the Court entered final judgment against Defendants Toshiba
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`Corporation and Toshiba America Information Systems, Inc., (collectively, “Toshiba”) and Dell,
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`Inc. (“Dell”) in favor of Plaintiffs Ericsson Inc. and Telefonakiebolaget LM Ericsson
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`(collectively, “Ericsson”). During the course of the litigation, Ericsson discovered (1) an
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`indemnity agreement between Toshiba and non-party Broadcom Corporation (“Broadcom”), (2)
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`an indemnity agreement between Dell and Broadcom, and (3) an email between Dell and
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`Broadcom discussing indemnification (collectively “Indemnity Documents”). Dell and Toshiba
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`disclosed the Indemnity Documents pursuant to the Court’s Protective Order, originally issued
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`on October 18, 2011. Docket No. 148.
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`1
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`Broadcom v. Ericsson
`IPR2013-00601
`Broadcom 1011
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`Case 6:10-cv-00473-LED-KFG Document 670 Filed 12/20/13 Page 2 of 4 PageID #: 26633
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`In the Motion for Relief from the Protective Order, Ericsson requests to disclose the
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`Indemnity Documents in an inter partes review proceeding (“IPR”) at the Patent Trial and
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`Appeal Board (“PTAB”), which was initiated by Broadcom on September 20, 2013. According
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`to Ericsson, the Indemnity Documents show Broadcom is in privity with Dell and Toshiba, or at
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`least show additional discovery is warranted on the issue. Docket No. 662 at 1. If Broadcom is
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`in privity with Dell or Toshiba, Broadcom would be ineligible to petition for an IPR pursuant to
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`the one-year bar of 35 U.S.C. § 315(b) (“An inter partes review may not be instituted if the
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`petition requesting the proceeding is filed more than 1 year after the date on which the petitioner,
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`real party in interest, or privy of the petitioner is served with a complaint alleging infringement
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`of the patent.”). In opposition, Dell and Toshiba argue the potential benefit to Ericsson for
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`modifying the Protective Order will be outweighed by the potential harm they will suffer.
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`Specifically, Dell and Toshiba argue indemnification agreements do not show privity under the
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`PTAB’s recent rulings, and that as non-parties to the IPR, they will no longer in control of their
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`confidential materials. Docket Nos. 668 at 5, 669 at 2–3.
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`In the Motion for Expedited Briefing, Ericsson requests the Court to order Toshiba and
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`Dell to file redacted, non-confidential versions of their briefs in response to the Motion for Relief
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`from the Protective Order. Docket No. 664 at 2. Ericsson intends to use these briefs to “update
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`the PTAB on the status” of Ericsson’s Motion for Relief from the Protective Order and to show
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`the PTAB the Defendants’ “stated basis for opposing the motion.” Id. Dell has agreed to this
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`request and Toshiba opposes. Docket Nos. 666, 667.
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`2
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`Case 6:10-cv-00473-LED-KFG Document 670 Filed 12/20/13 Page 3 of 4 PageID #: 26634
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`Motion for Relief from Protective Order
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`ANALYSIS
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`Compared to district courts, the PTAB has an intentionally narrower scope of discovery.
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`See 35 U.S.C. § 316(a)(5)(B) (limiting discovery to what is “necessary for the interest of
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`justice”).
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` Additionally, the PTAB has a corresponding narrower protection for the
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`confidentiality of discoverable materials. See “Office Patent Trial Practice Guide,” 77 Fed. Reg.
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`48761 (“Confidential information that is subject to a protective order ordinarily would become
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`public 45 days after denial of a petition to institute a trial or 45 days after final judgment in a
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`trial.”). Granting Ericsson’s request for relief from the Protective Order would allow Ericsson to
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`circumvent this balance between IPR discovery and confidentiality. In essence, Ericsson would
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`be able to use the Court’s broader Rule 26 “relevancy” standard for discovery, yet subject Dell
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`and Toshiba to the PTAB’s narrower protections of confidentiality. Id. Relatedly, Ericsson only
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`is aware of the Indemnity Documents as a matter of coincidence because of its former litigation
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`and the broad scope of discovery pursuant to Rule 26.
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`Moreover, granting Ericsson relief from the Protective Order in this case would
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`undermine the negotiations which produced the Protective Order. Ericsson, as the plaintiff in the
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`district court litigation and the patent owner in any potential IPR, was in the best position to
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`negotiate whether it may disclose documents discovered during litigation in an IPR.1
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`Accordingly, Ericsson’s Emergency Motion for Relief from the Protective Order is DENIED.
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`1 For example, the parties considered proceedings at the PTAB when they negotiated the protective order, and
`agreed that anyone who viewed confidential information “may not participate, directly or indirectly, in the drafting
`preparation, or amending of any patent claim [and] may not reveal the content of [confidential] materials to
`reexamination counsel or agents.” Docket No. 148 at 10–11. Ericsson has failed to show why this protection should
`not apply to the IPR.
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`3
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`Case 6:10-cv-00473-LED-KFG Document 670 Filed 12/20/13 Page 4 of 4 PageID #: 26635
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`Motion for Expedited Briefing
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`Ericsson requests an expedited briefing schedule and for Dell and Toshiba to provide
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`redacted, non-confidential briefs in response to Ericsson’s Motion for Relief from Protective
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`Order. The Court has ordered an expedited briefing schedule. Docket No. 665. Accordingly,
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`Ericsson’s requests concerning the briefing schedule are DENIED AS MOOT. Additionally,
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`Dell has agreed to provide a redacted response brief. Docket No. 667. Furthermore, the Court
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`has denied Ericsson’s underlying request for relief from the Protective Order. Consequently,
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`there is little, if any, benefit in ordering Toshiba to supply a redacted response brief.
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`Accordingly, Ericsson’s request to require Toshiba to file a redacted brief is DENIED.
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`So ORDERED and SIGNED this 20th day of December, 2013.
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`__________________________________
`LEONARD DAVIS
`UNITED STATES DISTRICT JUDGE
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`4
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