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`Paper No. 64
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`BROADCOM CORPORATION,
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`Petitioner,
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`V.
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`WI-FI ONE, LLC,
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`Patent Owner.
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`___________________
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`CASE NO.: IPR2013-00602
`PATENT NO. 6,446,568 B1
`___________________
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`PATENT OWNER’S REQUEST FOR REHEARING OF
`FINAL WRITTEN DECISION (PAPER NO. 60)
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`IPR2013-00602
`Patent 6,446,568 B1
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`Pursuant to 37 CFR § 42.71(d)(2), Patent Owner submits this Request for
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`Rehearing of the Board’s Final Written Decision (Paper No. 60).
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`I.
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`INTRODUCTION
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`In its Final Written Decision, the Board made certain fundamental errors with
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`respect to its determination that this IPR Petition is not time-barred under 35 U.S.C. §
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`315(b). This case is a prime example of concerns expressed less than two weeks ago
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`by USPTO Director Michelle Lee, who noted that Patent Owners frequently are not
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`given sufficient discovery on the “real party in interest” issue, meaning that panels
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`often decide this issue on an inadequate evidentiary record.1 In light of Director Lee’s
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`comments, the Board should take a close look at this request for rehearing.
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`First, in this case the Board misapprehended the purpose and effect of the
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`“real party in interest, or privy” language in § 315(b), as plainly set forth in the text of
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`the statute, and as confirmed by the legislative history and the USPTO’s public
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`1 See http://www.uspto.gov/blog/director/entry/ptab_s_quick_fixes_for, USPTO
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`Director Michelle K. Lee, “PTAB’s Quick-Fixes for AIA Rules are to be
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`Implemented Immediately,” (March 27, 2015) (last visited April 6, 2015) (“[W]e
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`understand that the existence of ample discovery to establish the real-party-in-interest
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`(RPI) of the petitioner has been a concern. And we want to be sure that the
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`availability of appropriate RPI evidence does not pose a problem for patent owners.”)
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`REQUEST FOR REHEARING
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`1
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`comments. As a result, the Board applied the wrong legal standard for assessing the §
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`315(b) issue, focusing too narrowly (and exclusively) on whether Petitioner has
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`controlled the co-pending District Court Litigation, and ignoring other relevant facts,
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`such as whether the District Court Defendants are controlling this IPR.2
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`Second, the Board overlooked the substantial evidence Patent Owner has
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`presented showing that Broadcom and the District Court Defendants share a
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`common economic and legal interest, and have been in cahoots in opposing the ’568
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`Patent for many years. This evidence shows both that (1) Broadcom’s District Court
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`Defendant customers are real-parties in interest to this IPR proceeding, and also that
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`(2) the District Court Defendant customers are in privity with Broadcom for purposes
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`of this IPR and the District Court Litigation.
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`The Board’s refusal to permit any discovery at all on this issue – even the
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`introduction of Broadcom’s known indemnity agreements – is a clear abdication of
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`the Board’s duty to consider a full and reasonable evidentiary record on matters
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`related to its own jurisdiction, and inherently renders the Board’s decision suspect.
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`Third, the Final Written Decision itself presents additional administrative law
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`issues that Patent Owner raises in this request for rehearing. Because the Petition was
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`2 The terms “District Court Litigation” and “District Court Defendants” refer to
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`parallel infringement litigation and defendants as cited in the Board’s Decision
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`denying additional discovery. Paper No. 21 at 2.
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`and is time-barred under § 315(b), the Board’s Final Written Decision is an ultra vires
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`action that exceeds the Board’s delegated statutory authority. Moreover, the Board’s
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`Final Written Decision is contrary to several provisions of the Administrative
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`Procedures Act (“APA”), as discussed more fully below.
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`It is undisputed that the Board would have no authority, under § 315(b), to
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`consider this IPR Petition if it had been filed by the District Court Defendants
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`themselves. It would have been time-barred. Section 315(b) does not permit
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`Broadcom to assist its customers in circumventing the one-year time-bar. That is
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`precisely what the “real party in interest, or privy” language was intended to prevent.
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`II.
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`IDENTIFICATION OF BASIS FOR REHEARING REQUEST
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`As required by 37 C.F.R. § 42.71(d), Patent Owner hereby specifically identifies
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`the matters Patent Owner contends the Board misapprehended or overlooked:
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`(1) The Board misapprehended the purpose of the “real party in interest or
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`privy” language in 35 U.S.C. § 315(b), and misapprehended the correct legal
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`standard for determining whether a non-party is a “real party in interest or
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`privy of petitioner” under § 315(b). See, e.g. Patent Owner’s Request for
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`Rehearing, Paper No. 25 at 3-7.
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`(2) The Board misapprehended the entirety of the factual record and
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`overlooked evidence supporting Patent Owner’s contention that certain
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`District Court Defendants are real parties in interest and/or privies of
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`petitioner in this IPR. See Patent Owner’s Response, Paper No. 36 at 3-15.
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`In addition, the Board’s Final Written Decision itself raises certain
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`administrative law issues that Patent Owner could not have previously raised. See
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`Section III(D), infra.
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`III. ARGUMENT
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`A. The Board misapprehended the purpose of the “real party in interest,
`or privy” language in § 315(b).
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`1.
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`The purpose of § 315(b), in general, is to prevent district court
`litigants from using IPR petitions as a delay tactic.
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`By its plain language, and as confirmed by the legislative history, § 315(b) was
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`intended to impose a time-bar on the filing of IPR Petitions so that district court
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`litigants could not use IPR Practice for purposes of delaying the district court
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`litigation. The statute states:
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`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. . . .
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`§ 315(b). The legislative purpose of this statute is to ensure IPR Petitions are not
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`used as a litigation tactic for purposes of delay. See, e.g., 157 Cong. Rec. S1326
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`(daily ed. March 7, 2011) (statement of Sen. Reid) (“The bill . . . imposes time limits
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`on starting an inter partes or post-grant review when litigation is pending. . . . [T]hese
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`reforms will help ensure that post-grant review operates fairly and is not used for
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`purposes of harassment or delay.” (emphasis added)); H. Judiciary Comm. Rep., H.
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`Rep. No. 112-98, at 47-48 (discussing that certain amendments, including the time-bar
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`of § 315(b), are intended to prevent harassment of Patent Owners and delay of
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`infringement litigation); 154 Cong. Rec. S9989 (daily ed. Sept. 27, 2008) (statement by
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`Sen. Kyl) (“The real reforms in this bill that would protect patent owners from
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`abusive and duplicative proceedings are the various restrictions imposed in section
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`327” – which included a three-month time bar that was later amended to become the
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`one-year period as codified in § 315(b)). See also Zoll Lifecor Corp. v. Philips Elec. N. Am.
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`Corp., IPR2013-00609, Paper 15 at 8-9 (discussing the legislative history of § 315(b)).
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`2.
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`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.
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`The plain text of the statute makes clear that the “real party in interest, or privy
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`of the petitioner” language in § 315(b) is intended to prevent litigation defendants
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`from subverting the statutory time-bar by having their agents or cohorts file an IPR
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`petition that they themselves are barred from filing. The statutory time-bar applies not
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`only to the petitioner, but also to (1) any real party in interest and also (2) any privy
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`of the petitioner. See 35 U.SC. § 315(b). The Patent Trial Guide confirms that this is
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`the purpose of the “real party in interest, or privy” language in § 315(b). See Trial
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`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (One of the “core
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`functions” of the real-parties-in-interest or privies language is to “protect patent
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`owners from harassment via successive petitions by the same or related parties . . .
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`.”) Without this language in § 315(b), district court litigants could easily circumvent
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`the time bar by simply having others file a time-barred petition on their behalf.
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`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).
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`1.
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`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.
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`It goes without saying that the legal standard for determining whether a third
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`party is a “real party in interest, or privy of petitioner” under § 315(b) should draw
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`from and coincide with the legislative purpose behind the statute. The legal standard
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`must be aimed at determining whether a given set of facts shows that an IPR
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`petitioner is sufficiently related or connected to a time-barred third party, such that
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`the petitioner should also be subject to the time-bar. To serve the statutory purpose,
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`the legal standard must be sufficiently flexible to capture all the various ways that
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`parties might collude or conspire to circumvent the § 315(b) time-bar. For example:
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`(1) a time-barred third party employing the petitioner as its agent or shill, specifically
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`for the purpose of circumventing the statute; (2) where parties are “in cahoots” to
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`execute a coordinated divide-and-conquer strategy designed to subvert the § 315(b)
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`time-bar in an effort to harass or delay a patent owner; or (3) a scenario where any
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`one party controls both the litigation and IPR activity in a coordinated effort.
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`The legislative history and official public comments of the USPTO
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`demonstrate that the applicable legal standard is flexible and multi-faceted so that
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`individual cases can be judged on their unique circumstances. See 154 Cong. Rec.
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`S9989 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (discussing the breadth of
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`“privy” as explained by recent case law developments). This breadth and flexibility of
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`“real party in interest, or privy” was also recognized by the USPTO in its official
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`public comments in the Office Patent Trial Practice Guide. See Trial Practice Guide,
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`77 Fed. Reg. at 48759-60. As articulated by the USPTO and by Senator Kyl in the
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`legislative history, this legal standard is purposefully broad and flexible so that the
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`Board can determine, on a case-by-case basis and in light of all relevant facts, whether
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`particular parties are attempting to circumvent the § 315(b) time-bar.
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`2.
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`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.
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`In its decision on the § 315(b) issue, the Board did not apply a broad and
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`flexible standard for “real party in interest or privy.” Instead, the Board applied a
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`narrow and rigid standard that is erroneous as a matter of law.
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`The standard applied by the Board requires – as an absolute and necessary
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`condition – that Broadcom controlled or could have exercised control over one or
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`more of the District Court Defendants in relation to the District Court Litigation. See
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`Decision on Ericsson’s Motion for Additional Discovery, Paper No. 21 at 7 (“To
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`show privity requires a showing that Broadcom would be bound by the outcome of
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`the Texas litigation. To be bound, in normal situations, Broadcom must have had
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`control over the Texas Litigation.”); id. at 11 (“The totality of the evidence fails to
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`amount to more than a ‘mere possibility’ that Broadcom controlled, or could have
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`controlled, the Texas litigation.”); id. at 12-13 (“[T]he IPR filings fail to show
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`control over the Texas litigation. . . . The evidence does not amount to more than
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`speculation that any of Broadcom’s activity constitutes evidence of collusion with the
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`Texas Defendants in the Texas litigation in a manner that would bind Broadcom
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`to the outcome thereof.”); id. at 15 (“The evidence and arguments fail to show that
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`the sought-after discovery would have more than a mere possibility of producing
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`useful privity information, i.e., that Broadcom controlled or could have controlled
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`the Texas Litigation.”); see also Final Written Decision, Paper No. 60 at 7-8.
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`The legal standard applied by the Board in this case is narrower and
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`inconsistent with the legal standard applied by the Board in other cases. See, e.g., Zoll,
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`IPR2013-00609, Paper No. 15 at 9-16 (considering “real party in interest” and “privy”
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`separately; and also considering, inter alia, the non-party’s control over the IPR).
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`The legal standard applied by the Board in this case does not reflect – and in
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`fact undermines - the legislative purpose of § 315(b). Under the Board’s standard,
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`even if there were irrefutable evidence that the District Court Defendants had
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`expressly hired Broadcom to file this IPR petition, and that the District Court
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`Defendants were paying for and controlling every aspect of Broadcom’s IPR activity,
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`the Board’s standard still would not be satisfied - because the evidence would not
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`show that Broadcom was controlling the District Court Litigation or that Broadcom
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`would be bound by the result of that litigation. That would be an absurd result, in
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`direct contravention of the plain text of § 315(b) and its clear legislative purpose. This
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`example conclusively demonstrates that the Board’s legal standards for “real party in
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`interest, or privy” under § 315(b) is fundamentally wrong because it is too rigid and
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`narrow. It is not grounded in the text or purpose of the statute, and it does not
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`capture all the ways that parties might conspire to subvert the statutory time-bar.
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`Under § 315(b), Broadcom’s control of the District Court Litigation might be
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`sufficient to establish that the District Court Defendants are real parties in interest or
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`privies, but it should not be a necessary condition. A showing that petitioner controls
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`the litigation should be one path to that result, but not the only path. An exclusive
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`focus on whether Broadcom would be bound by a judgment in the District Court
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`litigation is misplaced, because no one is seeking to bind Broadcom to the results of
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`the District Court litigation by virtue of this IPR, or otherwise.
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`Instead, the issue under § 315(b) is whether the District Court Defendants have
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`attempted to circumvent the one-year statutory time-bar, i.e. whether Broadcom and
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`one or more of the District Court Defendants should be treated collectively for
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`purposes of determining whether the petition is time-barred. Under the plain language
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`of § 315(b), they should be treated as one if a District Court Defendant is a “real
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`party in interest or privy” of Broadcom. The standard applied by the Board,
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`focusing exclusively on Broadcom’s connection to the District Court litigation, turns
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`the real issue on its head.
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`Patent Owner respectfully submits that the Board’s misapprehension of the
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`correct legal standard may stem from the fact that a separate statutory provision, §
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`315(e), also uses the phrase “real party in interest or privy” in the context of defining
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`the scope of estoppel that results from a final written decision by the Board. Most of
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`the discussion of “real party in interest or privy” in the Trial Practice Guide also
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`relates to estoppel. See Trial Practice Guide, 77 Fed. Reg. at 78,759-60. In the context
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`of § 315(e) estoppel, it might make sense to focus on the “control” factor, like
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`common law estoppel cases do.
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`But § 315(b) is not an estoppel provision, and the “real party in interest, or
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`privy” language in § 315(b) serves a much different purpose. The standard applied by
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`the Board ignores the statutory language and purpose, and serves to undermine the
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`statute altogether by not capturing most of the ways parties could purposefully
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`circumvent the statutory time-bar.
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`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.
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`The evidentiary record before the Board strongly indicates that one or more of
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`the District Court Defendants are real parties in interest, and/or that they are in
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`privity with Petitioner for purposes of this IPR.
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`Significantly, Petitioner had an opportunity to present evidence that the District
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`Court Defendants are not coordinating or controlling aspects of this IPR – but they
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`presented no evidence on this point at all. Tellingly, Petitioner’s proof seems carefully
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`worded to focus exclusively on Broadcom’s ties to the District Court litigation and
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`avoid any mention of the District Court Defendants’ role in this IPR. See Petitioner’s
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`Opposition to Motion for Additional Discovery, Paper No. 17 at 4-5 (including cited
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`exhibits). Petitioner, who had every opportunity to illuminate the District Court
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`Defendants’ role (or lack thereof) in this IPR, purposefully chose to offer no evidence
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`as to whether the District Court Defendants are paying all or part of the costs of this
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`IPR; whether Petitioner filed this IPR for the benefit of, or at the behest of, the
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`District Court Defendants; or whether the District Court Defendants have
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`coordinated or controlled any aspects of this IPR proceeding. See Zoll, IPR2013-
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`00609, Paper No. 15 at 11-12 (placing weight on Petitioner’s failure to provide
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`evidence of the non-party’s lack of participation in or control over the IPR).
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`Patent Owner, on the other hand, has made a strong circumstantial showing
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`that Petitioner and at least some of their District Court Defendant customers are in
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`cahoots in defending against the ’568 Patent, both in the District Court Litigation and
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`in this IPR. See Patent Owner’s Response, Paper No. 36 at 3-15. It is not disputed in
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`the evidence that there are indemnity agreements between Broadcom and certain
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`District Court Defendants (as expressly stated in Judge Davis’s order denying relief
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`from the litigation protective order). See Ex. 1021. Nor is it disputed that Broadcom
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`and its District Court Defendant customers share a common economic and legal
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`interest in opposing the ’568 Patent. See Ex. 2008 (asserting a common interest
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`privilege); Ex. 2009 at ¶ 101. It is not disputed that Broadcom has been coordinating
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`with the District Court Defendants for many years in an effort to oppose the ’568
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`Patent. See Patent Owner’s Response, Paper No. 36 at 4-8. And it is not disputed that
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`Petitioner has taken concrete steps, such as the filing of this IPR and otherwise, to
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`oppose the ’568 Patent on behalf of its customers. See id.
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`The Board should presume that the indemnity agreement contains some
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`covenants related to the funding and control of efforts to oppose claims of patent
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`infringement. Any indemnity agreement will expressly allocate the obligation to pay
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`for defense of claims and also the rights to control the defense and settlement. Failing
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`to do so would be drafting malpractice. For this reason, the Board erred when it
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`decided the § 315(b) issue without reviewing the known indemnity agreements, which
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`are likely the most crucial documents. These agreements could have been provided to
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`the Board with no burden whatsoever to Broadcom.
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`Even without the agreements in evidence, the circumstantial evidence
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`overwhelmingly shows that Petitioner has been in cahoots with its District Court
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`Defendant customers since long before this IPR petition was filed. Petitioner’s
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`declaration is conclusory, carefully worded, and narrowly tailored to avoid addressing
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`issues central to the § 315(b) issue. As such it obscures the true nature of the
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`relationship between Broadcom and its District Court Defendant customers.
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`The only reasonable conclusion in light of this evidentiary record is that the
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`Petition is time-barred under § 315(b) because Broadcom’s District Court Defendant
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`customers are a real party in interest in this IPR, and/or the District Court
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`Defendants are privies of Petitioner in this case. In light of this record, it is
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`unreasonable to conclude that Petitioner should not be bound by the statutory time-
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`bar, just like the District Court Defendants are. At a minimum, the Board should
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`reopen these proceedings for further fact-finding so the Board can make a
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`determination on a full evidentiary record, including having the benefit of the
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`indemnity agreements.
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`D. The Board’s Final Written Decision violates fundamental principles
`of administrative law.
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`1.
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`The Final Written Decision is an ultra vires action that exceeds the
`Board’s statutory authority as delegated by Congress.
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`Section 315(b) is a jurisdictional limit on the power delegated to the Board by
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`Congress. See 35 U.S.C. § 315(b); 37 C.F.R. § 42.3(b) (“Jurisdiction . . . A petition to
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`institute a trial must be filed with the Board consistent with any time period required
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`by statute.”). The Board’s Final Written Decision and other actions in this IPR are
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`ultra vires, undertaken without statutory authority.
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`The Board’s determination of the § 315(b) issue will be reviewed on appeal
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`with little (if any) deference. See City of Arlington, Texas v. FCC, 133 S. Ct. 1863, 1874
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`(2013) (appellate courts must “tak[e] seriously, and appl[y] rigorously, in all cases,
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`statutory limits on agencies’ authority. Where Congress has established a clear line, the
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`agency cannot go beyond it; and where Congress has established an ambiguous line,
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`the agency can go no further than the ambiguity will fairly allow.”).
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`The USPTO Director has taken the position that the Board’s determinations
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`under § 315(b) are never reviewable. See Brief for Intervenor – Director of the
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`USPTO at 14-16, Achates Reference Publ’g, Inc. v. Apple, Inc., Appeal No. 2014-1767 (Fed.
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`Cir. Feb. 24, 2015). This position is contrary to a wealth of United States Supreme
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`Court authority directly on point. See Bowen v. Michigan Academy of Family Physicians, 476
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`U.S. 667, 672 n.3 (1986) (collecting authority). It is also contrary to the APA. See 5
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`U.S.C. § 706(2)(C). Patent Owner fully intends to present this ultra vires argument to
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`the Federal Circuit on appeal.
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`2.
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`The Board’s Final Written Decision and other actions violate the
`Administrative Procedures Act.
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`The Board’s refusal to consider a reasonably full evidentiary record in
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`connection with the § 315(b) issue; its denial of all discovery on the issue; and its
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`refusal to consider the terms of the known indemnity agreement and other known
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`facts all violate the Board’s duties under the APA. See Olenhouse v. Commodity Credit
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`Corp., 42 F.3d 1560, 1581 (10th Cir. 1994); Intel Corp. v. U.S. Int’l Trade Commiss’n, 946
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`F.2d 821, 836-39 (Fed. Cir. 1991).
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`Moreover, the Board’s actions in this proceeding are contrary to the USPTO’s
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`own official public statements made during the rulemaking process. See 77 Fed. Reg.
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`48,680, 48,694-95 (Aug. 14, 2012) (“Additional discovery may be authorized where a
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`patent owner raises sufficient concerns regarding the petitioner’s certification.”); 77
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`Fed. Reg. at 48760 (discussing the legal standard). The Board’s actions are
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`inconsistent with these comments and, therefore violate the APA. See 5 U.S.C. §
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`552(a), § 706(2)(A),(C); Thomas Jefferson Univ. v. Shalala, 512 U.S. 504, 512 (1994).
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`The Board’s Final Written Decision is also contrary to the Board’s own
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`promulgated substantive rules – specifically, 37 C.F.R. § 42.3(b). The Board’s failure
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`to follow its own rules is contrary to the APA. See 5 U.S.C. § 552(a), § 706(2)(C), (D);
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`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,
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`683 F.2d 905, 908 (5th Cir. 1982).
`
`IV. CONCLUSION
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`
`
`For the foregoing reasons, the Board should grant this request for rehearing,
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`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
`
`IPR2013-00602
`
`
`
`Dated April 6, 2015
`
`
`
`IPR2013-00602
`Patent 6,446,568 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
`
`IPR2013-00602
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2013-00602
`Patent 6,446,568 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)