UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________________
`
`Case IPR2013-00602
`Patent 6,466,568
`Title: Multi-Rate Radiocommunication Systems and Terminals
`
`
`
`PATENT OWNER’S RESPONSE
`BY ERICSSON UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________________
`
`Case IPR2013-00602
`Patent 6,466,568
`Title: Multi-Rate Radiocommunication Systems and Terminals
`
`
`
`PATENT OWNER’S RESPONSE
`BY ERICSSON UNDER 37 C.F.R. § 42.120
`
`
`
`
`
`Case IPR2013-00602
`
`TABLE OF CONTENTS
`
`I.
`
`Statement of Precise Relief Requested ................................................. 2
`
`II.
`
`Statement of Facts ................................................................................. 2
`
`III. Broadcom Cannot Prevail ..................................................................... 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 ’568 Patent is Valid ...................................................................... 15
`
`A. Overview of the ’568 Patent ...................................................... 15
`
`B. Broadest Reasonable Interpretation ........................................... 19
`
`C. Claims 1-6 are Not Anticipated by Morley ................................ 27
`
`1. Overview of Morley ........................................................... 28
`
`2. Morley does not disclose a “service type identifier”.......... 31
`
`3. Morley does not disclose an “identifier identifying a type of
`
`information conveyed in the payload” ............................... 35
`
`4. Morley does not anticipate claims 2-6 of the ’568 Patent .. 37
`
`D. Adams Does Not Render Claims 1-6 of the ’568 Patent
`
`
`
`Obvious ..................................................................................... 37
`
`1. Overview of Adams ............................................................ 38
`
`2. Adams Does Not Disclose a “service type identifier” ....... 40
`
`ii
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`Case IPR2013-00602
`3. Adams Does Not Disclose an “identifier which identifies a
`
`type of payload information provided in said at least one
`
`first field” ............................................................................ 42
`
`4. Adams Does Not Teach or Suggest a “transmitter for
`
`transmitting information.” .................................................. 43
`
`5. Adams does not disclose a “base station” or a “mobile
`
`station” as required by claims 5-6 of the ’568 Patent ........ 44
`
`6. Adams does not render obvious claims 2-6 of the ’568
`
`Patent .................................................................................. 46
`
`V.
`
`Conclusion ........................................................................................... 46
`
`
`
`
`
`
`
`iii
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`Case IPR2013-00602
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`TABLE OF AUTHORITIES
`
`Cases
`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
`
`Garmin Int'l, Inc. v. Cuozzo Speed Technologies, IPR2012-00001, Paper No. 59
`
`(PTAB Nov. 13, 2013) ............................................................................. 21, 22, 24
`
`Illumina, Inc. v. The Trustee of Columbia University, IPR2012-00006, 2013 WL
`
`2023631 at *3 (PTAB, March 12, 2013) ..............................................................20
`
`In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045 (Aug.
`
`25, 2008) ........................................................................................................ 12, 13
`
`In re Abbott Diabetes Care Inc. 696 F.3d 1142, 1149 (Fed. Cir. 2012)........... 20, 21
`
`Microsoft Corporation v. Proxyconn, Inc., IPR2012-00026, Paper 17 (PTAB Dec.
`
`21, 2012) ...............................................................................................................24
`
`SAP Am., Inc. v. Versata Dev. Grp., Inc., No. CBM2012-00001 Paper No. 70
`
`(PTAB Jun. 11, 2013) ...........................................................................................24
`
`Speedtrack, Inc. v. Office Depot, Inc., No. C 07-3602 PJH, 2014, WL 1813292, at
`
`*5-6 (N.D. Cal. May 6, 2014) ........................................................................ 10, 11
`
`Taylor v. Sturgell, 553 U.S. 880 (2008) ............................................................ 10, 11
`
`iv
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`Case IPR2013-00602
`Statutes
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`35 U.S.C. § 102 ......................................................................................................1, 2
`
`35 U.S.C. § 103 ......................................................................................................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) ..............................................................................................20
`
`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
`
`
`
`v
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`Case IPR2013-00602
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`EXHIBIT NO.
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`EXHIBIT LIST
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`EXHIBIT DESCRIPTION
`
`Exhibit 1001
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`Raith, U.S. Patent No. 6,466,568 (“the ’568 Patent”)
`
`Exhibit 1002
`
`Morley, U.S. Patent No. 5,488,610, entitled “Communication
`
`System” (“Morley”)
`
`Exhibit 1006
`
`Adams et al., U.S. Patent No. 5,541,662, entitled “Content
`
`Programmer Control of Video and Data Display Using
`
`Associated Data” (“Adams”)
`
`Exhibit 1016
`
`U.S. Patent No. 6,466,568 Prosecution History, Amendment of
`
`May 10, 2002
`
`Exhibit 2002
`
`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)
`
`Exhibit 2019
`
`Black’s Law Dictionary, 9th Ed. (definition of “privity”)
`
`vi
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`Case IPR2013-00602
`Declaration of Robert Akl, D.Sc. in support of Patent Owner’s
`
`Response
`
`Exhibit 2020
`
`
`
`
`vii
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`
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`Case IPR2013-00602
`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. 5,488,610 to Morley renders claims 1-6 of the
`
`’568 Patent unpatentable under 35 U.S.C. § 102;
`B. Whether U.S. Pat. No. 5,541,662 to Adams renders claims 1-6 of the
`
`’568 Patent unpatentable under 35 U.S.C. § 103; and
`C. Whether this inter partes review is barred under 35 U.S.C. §315(b).
`
`
`
`
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`1
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`Case IPR2013-00602
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`
`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 1-6 of the ’568 Patent. Specifically
`
`Patent Owner requests that the Board find:
`
`A.
`
`Claims 1-6 of the ’568 Patent are not anticipated under 35 U.S.C. §
`
`102 by Morley;
`
`B.
`
`Claims 1-6 of the ’568 Patent are non-obvious under 35 U.S.C. 103
`
`over Adams; and
`
`C.
`
`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 On September 14, 2010, Ericsson filed 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,
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`2
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`Case IPR2013-00602
`Inc., Toshiba America Information Systems, Inc. and Toshiba America Consumer
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`Products, LLC (“Toshiba”), and Belkin International, Inc. (“Belkin”) as
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`defendants.1 (Ex. 2003).
`
`
`
`The complaint alleged infringement of U.S. Patent Nos. 6,424,625,
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`6,519,215, and 6,466,568. (Ex. 2004). The D-Link Defendants challenged the
`
`validity of Ericsson’s patents and denied infringement. With respect to validity, the
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`D-Link Defendants served thousands of pages of invalidity contentions and expert
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`reports, involving many of the same assertions that are now the basis for
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`Broadcom’s IPR petition. With respect to infringement, the Defendants’ supplier,
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`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
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`abandoned their invalidity case regarding the ’215 Patent and the ’568 Patent, but
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`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
`
`
`
`1 The defendants listed in the Complaint and the Amended Complaint shall
`collectively be referred to as “D-Link Defendants.”
`3
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`Case IPR2013-00602
`appealed to the Federal Circuit (where the appeal is now pending), D-Link
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`Lawsuit, Nos. 2013-1625, -1631, -1632, -1633.
`
`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
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`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).
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`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
`
`party alleges or if a court finds that our products or activities have infringed upon,
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`misappropriated or misused another party’s proprietary rights.” (Id. at 53/65). To
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`protect these interests, Broadcom “engage[s] in litigation to . . . determine the
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`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,
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`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
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`5
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`references the D-Link Defendants used in their invalidity case.2 Broadcom made
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`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
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`BCM4313 and BCM4321” to the D-Link Defendants that were found to infringe.
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`Paper No. 2 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
`
`
`
`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
`(“the ‘568 Patent”) (IPR2013-00602), 6,424,625 (“the ‘625 Patent”) (IPR2013-
`00636, and 6,772, 215 (“the ‘215 Patent”) (IPR2013-00601).
`6
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`Case IPR2013-00602
`the effect of the relationship, but also Broadcom’s willingness to take action in
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`support of the D-Link Defendants.
`
`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 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
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`conversation between Dell and Broadcom pertaining to Broadcom’s indemnity
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`7
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`Case IPR2013-00602
`obligation, and likely produced additional evidence establishing Broadcom’s
`
`privity relationship with the defendants. Paper No. 21. Ericsson filed a Request
`
`for Rehearing that the Board denied. Paper No. 26. The Board issued its Decision
`
`for Institution of Inter Partes Review on March 10, 2014, Paper No. 27, and
`
`Ericsson now submits its Patent Owner’s Response.
`III. Broadcom Cannot Prevail
`
`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
`
`
`
`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
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`complaint alleging infringement of the patent.”
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`8
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`Case IPR2013-00602
`actions specifically relate to the ’568 Patent and Broadcom’s BCM4313 and
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`BCM4321 chips, the property in question here. The result of these legal actions
`
`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
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`9
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`Case IPR2013-00602
`the PTO specifically expanded the traditional notions of privity to cater the
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`doctrine to the unique context of IPR proceedings.
`
`The PTO acknowledged the aim of the AIA in the Trial Practice Guide and
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`stated that there are multiple factors relevant to the “real party-in-interest” and
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`“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
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`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
`10
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`
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`Case IPR2013-00602
`*5-6 (N.D. Cal. May 6, 2014) (an indemnification agreement between the
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`defendants and their software supplier established that the parties were in privity
`
`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
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`Broadcom has an express policy of initiating litigation to control the property, and
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`11
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`Case IPR2013-00602
`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
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`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 ’568 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
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`12
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`“[a]llow[s] another entity to direct or control the content (e.g., provide the prior
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`patents/printed publication on which the reexam is to be based) of the request
`
`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
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`Defendants are real parties in interest.
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`On August 8, 2013, Ericsson obtained a judgment of infringement against
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`the D-Link Defendants for three patents. (Ex. 2018). Less than three months later,
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`Broadcom filed its Petition for IPR of the same claims infringed by the D-Link
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`Defendants’ use of its chips, relying on the same reference the D-Link Defendants
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`used in their invalidity case. For obvious reasons, Broadcom did not seek review
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`of the claims the district court found to not be infringed. (Ex. 2018).
`
`Broadcom instead made the rote assertion that there were no other real
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`parties in interest. However, Broadcom admitted that it supplied the property in
`
`question, namely the “Wi-Fi compliant products, such as the BCM4313 and
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`BCM4321” to the D-Link Defendants. Paper No. 3 at 1. The only logical inference
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`is that Broadcom’s duty to indemnify some or all the D-Link Defendants triggered
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`13
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`Case IPR2013-00602
`the successive attack on Ericsson’s patents, and that the D-Link Defendants desire
`
`review of the ’215 Patent.
`
`In addition, Broadcom made it clear that both itself and the D-Link
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`Defendants desire review of the patent in its “Motion of Amici Wi-Fi Chip
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`Companies.” Broadcom specifically stated that the damages verdict in the D-Link
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`Lawsuit “affect[s] amici even though they were not parties to the case” because
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`“the award would affect demand for those chips and may also provoke
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`indemnification issues.” (Ex. 2017 at p. 4) (emphasis added). This demonstrates
`
`that Broadcom and the D-Link Defendants have common interests in the ’568
`
`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
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`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
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`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
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`complaint alleging infringement of the ’568 Patent more than one year before
`
`Broadcom filed its Petition, Broadcom is barred from review under Section 315(b).
`
`14
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`
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`Case IPR2013-00602
`IV. The ’568 Patent is Valid
`A. Overview of the ’568 Patent
`
`The ’568 Patent discloses methods and apparatuses for efficiently
`
`transmitting different types of data. The patent emanated from Ericsson’s work on
`
`the North American Time Division Multiple Access (NA-TDMA) standards. The
`
`inventors realized
`
`that
`
`transmission characteristics of different
`
`types of
`
`information, such as voice, video, facsimile, packet data, video, and/or hybrid
`
`voice, data and video may differ. (Ex. 1001 (’568 Pat.) at 2:17-37.) In one
`
`embodiment, unused fields are used to communicate transmission characteristics to
`
`a receiver as during a service to more efficiently use the available bandwidth. (Id.
`
`at 2:17-55.)
`
`One exemplary cellular telephone system for use with the ’568 invention is
`
`shown in Fig. 1. This system includes a base station 110 and a mobile station 120.
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`15
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`Case IPR2013-00602
`
`
`
`Information is transferred or communicated between the base station and mobile
`
`station via a service. (Ex. 2020 Akl Dec. ¶ 15.) The ’568 Patent “provide[s]
`
`techniques for transmitting information between remote stations and the system in
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`radiocommunication networks that provide sufficient flexibility for the anticipated
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`variety of information communication services.” (’568 Pat. at 2:56-63.) In some
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`embodiments, a fast out-of-band channel (FOC) is used to provide information
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`relating to the type and characteristics of a particular payload. “The FOC may
`
`provide information relating to the same connection as the payload or data field in
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`16
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`Case IPR2013-00602
`that time slot, e.g., a service type identifier which informs the mobile or base
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`station of the type of information (e.g., voice, video or data) being conveyed in the
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`payload.” (Id. at 3:11-16.) This information “is used by the receiving equipment
`
`to aid in processing the information conveyed in the payload, e.g., by knowing the
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`channel coding rate.” (Id. at 3:16-19.)
`
`Fig. 6 of the ’568 Patent illustrates one approach for implementing a service
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`type identifier in a FOC field. Here, the FOC field can be populated with
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`“information regarding the type of service which the associated payload is
`
`currently supporting, the channel coding and/or interleaving associated therewith.”
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`(Id. at 9:29-32.) In each case, the FOC field provides transmission characteristics
`
`for the communication of the information between the base and mobile stations.
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`(Akl Dec.¶ 17.) For example, information regarding the type of service necessarily
`
`reduces to transmission characteristics. (Akl Dec. ¶ 17.) Channel coding and
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`interleaving are also transmission characteristics. (Akl Dec. ¶ 17.) The ’568
`
`Patent
`
`therefore consistently uses
`
`the service
`
`type
`
`identifier
`
`to
`
`identify
`
`transmission characteristics. (Akl Dec. ¶ 17.)
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`17
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`Case IPR2013-00602
`
`
`
`Different types of information can be efficiently communicated by
`
`exploiting the communication characteristics of the service type. But if a receiver
`
`is unable to determine the service type(s) of the payload(s) of each data packet, the
`
`receiver would not know how to efficiently process the data streams. (Akl Dec. ¶
`
`18.) For example, efficient communication of various types of data may involve
`
`different channel coding, different interleaving, or error correction. (’568 Pat. at
`
`2:28-50; 9:27-32.) Moreover, different data types may have different tolerances
`
`for delay. (Id. at 2:50-55.) The service type identifier of the ’586 patent identifies
`
`the type of information communication, and in some cases, the type of data in the
`
`payload so that different types of information can be efficiently communicated.
`
`(Akl Dec. ¶ 18.)
`
`The ’568 Patent recognized that advancement and evolution of radio
`
`communication systems would also allow new types of information with different
`
`transmission characteristics to be exchanged. Rather than attempt to predict all
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`18
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`Case IPR2013-00602
`these future changes, the ’568 Patent proposes using a service type identifier to
`
`describe, among others, the transmission characteristics of a data payload. (’568
`
`Pat. at 2:56-2:63.) The transmission characteristics can thereafter be easily
`
`changed to accommodate a variety of different services. (Id.) For example, the
`
`time-sensitive nature of voice information requires a high degree of error coding so
`
`that the voice packets are received error-free in the correct order. On the other
`
`hand, fax transmission is more tolerant of error so a fax service typically would
`
`require a much lower error protection than voice information. (Id. at 2:44-50.) To
`
`alert a receiver to these differences in transmission characteristics, each packet
`
`could contain a service type identifier which informs the receiver to use, for
`
`example, voice error protection or fax error protection when processing that
`
`packet. (Id. at 2:56-63.)
`B.
`
`Broadest Reasonable Interpretation
`
`Independent claim 1 of the ’658 patent reads as follows:
`
`A communication station comprising:
`
`a processor for arranging information for transmission including providing at
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`least one first field in which payload information is disposed and providing at least
`
`one second field, separate from said first field, which includes a service type identifier
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`19
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`Case IPR2013-00602
`which identifies a type of payload information provided in said at least one first field;
`
`and
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`a transmitter for tran
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