Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: December 11, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`BROADCOM CORPORATION
`Petitioner
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`v.
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`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________
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`Cases IPR2013-00601(Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,446,568 B1)
`IPR2013-00636 (6,424,625 B1)1
`____________
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`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
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`EASHTOM, Administrative Patent Judge.
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`ORDER
`Authorizing Motion for Additional Discovery
` 37 C.F.R. § 42.1(b)(2)
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`1 The Board exercises its discretion to issue one Order to be filed in each case.
`The parties are not authorized to use this style heading.
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`

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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
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`On December 6, 2013, the following individuals participated in a conference
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`call:
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`(1) Dominic E. Massa and Michael A. Diener, counsel for Petitioner;
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`(2) Peter J. Ayers and J. Christopher Lynch, counsel for Patent Owner; and
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`(3) Karl D. Easthom, Kalyan K. Deshpande, and Matthew R. Clements,
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`Administrative Patent Judges.
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`The conference discussion involved Patent Owner’s request for, and
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`Petitioner’s opposition to, Patent Owner’s request to file a motion for additional
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`discovery. Specifically, Patent Owner requests discovery regarding certain alleged
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`agreements between Petitioner and defendants in related litigation, Ericsson Inc., et
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`al. v. D-LINK Corp., et al., Civil Action No. 6:10-CV-473 (LED/KGF) (“Texas
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`Litigation”), where the challenged patents in the instant proceedings were found
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`infringed. Petitioner was not a party to the Texas Litigation. See Pet. 1-2.2
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`According to Patent Owner, the requested information is relevant because
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`one or more of the co-defendants in the related Texas Litigation were served with a
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`complaint more than one year prior to the date the instant proceedings were filed,
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`and if those defendants are real parties in interest or privies of Petitioner, an inter
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`partes review may not be instituted under 35 U.S.C. § 315(b). Patent Owner
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`argued that it has a basis for seeking discovery because the alleged agreements
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`between Petitioner and defendants in the Texas Litigation are indicative of one or
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`more of the defendants being a real party in interest or privy.
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`Petitioner argued that Patent Owner’s request is outside the proper scope of
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`discovery and may raise privilege and confidentiality issues, even if Petitioner had
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`any agreements with the defendants, Petitioner’s customers, in the Texas
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`2
` Reference is to the Petition in IPR2013-00601, which makes similar assertions to
`the Petitions in the other two cases.
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`2
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`

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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
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`
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`Litigation. Petitioner also represented that it is the sole real party in interest for the
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`instant proceedings, and none of the defendants in the Texas Litigation has a
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`relevant privy relationship with Petitioner.
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`During the conference, the parties discussed the following cases that have
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`relevance to the dispute here: Garmin International, Inc. et al. v. Cuozzo Speed
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`Technologies LLC, IPR2012-00001 (“Decision on Motion for Additional
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`Discovery”) (Paper 26) (important factors in determining whether a discovery
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`request meets the applicable standard); Apple v. Achates Reference Publishing,
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`Inc., IPR2013-00080 (“Decision – Achates Motion for Additional Discovery”)
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`(Paper 17) (indemnity agreements).
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`After hearing from both parties, the panel informed them that briefing on the
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`matter is warranted: Patent Owner was authorized to file an eight page motion for
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`additional discovery, and Petitioner was authorized to file an eight page opposition.
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`Patent Owner’s motion must explain specifically what discovery is being requested
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`and why such discovery is “necessary in the interest of justice.” See 35 U.S.C.
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`§ 316(a)(5); 37 C.F.R. § 42.51(b)(2).
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`In particular, Patent Owner’s motion should address what evidence shows
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`that Petitioner and defendants in the Texas Litigation made discoverable
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`agreements that are relevant to determining whether any of those defendants are
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`real parties in interest or privies of Petitioner.
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`In consideration of the foregoing, it is hereby
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`ORDERED that Patent Owner’s authorized motion for additional discovery
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`under 37 C.F.R. § 42.51(b)(2) is due by December 11, 2013 and is limited to eight
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`pages; Petitioner’s authorized opposition is due by December 20, 2013 and is also
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`limited to eight pages; and no reply is authorized; and
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`3
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`

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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
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`FURTHER ORDERED that in its motion, Patent Owner identify the
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`discovery being requested and why the discovery is necessary in the interest of
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`justice, specifically addressing Petitioner’s alleged agreements, evidence of their
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`existence, and why the sought-after discovery will establish the required privy or
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`real party relationship.
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`Petitioner:
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`Dominic Massa
`Dominic.massa@wilmerhale.com
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`Michael Diener
`Michael.diener@wilmerhale.com
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`Patent Owner
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`Peter J. Ayers
`Peter@leehayes.com
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`J. Christopher Lynch
`chris@leehayes.com
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`4
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`