Paper No. _____
`
`Filed on behalf of: Telefonaktiebolaget L. M. Ericsson
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
` TELEFONAKTIEBOLAGET LM ERICSSON
`
`Patent Owner
`____________________
`
`Case IPR2013-00636
`Patent 6,424,625
`____________________
`
`
`
`PATENT OWNER’ REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`Filed on behalf of: Telefonaktiebolaget L. M. Ericsson
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
` TELEFONAKTIEBOLAGET LM ERICSSON
`
`Patent Owner
`____________________
`
`Case IPR2013-00636
`Patent 6,424,625
`____________________
`
`
`
`PATENT OWNER’ REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.71, Patent Owner Telefonaktiebolaget LM
`
`Ericsson (“Ericsson”) respectfully requests that the Board reconsider its denial of
`
`Ericsson’s Motion for Additional Discovery (“Decision”) because Ericsson
`
`submits that the Board overlooked certain critical legal authorities bearing on the
`
`Motion.
`
`A. Standard of Review
`
`II. Argument
`
`The Board will review requests for rehearing for an abuse of discretion. 37
`
`C.F.R. 42.71(d). The Board will grant requests for rehearing where a decision
`
`rests on an erroneous application of the law. Schrader-Bridgeport Int’l, Inc. et al.
`
`v. Cont’l Automotive Sys. US, Inc., IPR2013-00014 Paper No. 15 at 3; Star Fruits
`
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005). Ericsson respectfully
`
`submits that the Board erred (a) in its holding that limitation of discovery holds a
`
`higher statutory priority than limitation of duplicative proceedings; and (b) in its
`
`holding that “Broadcom must have had control over the Texas Litigation” before
`
`35 U.S.C. § 315(b) bar may be invoked, See Decision at 7.
`
`
`
`REQUEST FOR REHEARING
`
`
`2
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`B. The Board Overlooked that the Principal Purpose of the America Invents
`Act (AIA) is to Limit Multiple Proceedings, and that Limiting Discovery is a
`Subsidiary Purpose, and Erred by Elevating the Latter Over the Former.
`
`A major goal of the AIA was “to limit unnecessary and counterproductive
`
`litigation costs.” H. Rep. No. 112-98 at 40 (2011). The AIA limited litigation
`
`costs in two ways: (1) by enacting provisions intended to eliminate duplicative,
`
`wasteful and harassing proceedings; and (2) by limiting discovery costs.
`
`The first goal of AIA, limiting and constraining repetitive litigation, was
`
`plainly a primary goal. Congress expressly condemned “repeated litigation and
`
`administrative attacks on the validity of a patent.” H. Rep. No. 112-98 at 48.
`
`Toward that end, Congress enacted several measures so that AIA could not “be
`
`used as [a] tool[ ] for harassment” of patent owners. Id.
`
`First, Congress expressly provided that the Board could not take jurisdiction
`
`of any inter partes review unless all real parties in interest were identified. See 35
`
`U.S.C. § 312 (“A petition filed under section 311 may be considered only if . . . the
`
`petition identifies all real parties in interest”) (emphasis added). The obvious
`
`purpose of this provision was to curtail the ability of related parties to use others as
`
`a shill for them while preserving the ability to repeat litigation in other fora. “Real
`
`parties in interest” is not a defined term, but Congress did not refer to a “privy”, or
`
`to “control” anywhere in in Section 312.
`
`REQUEST FOR REHEARING
`
`
`3
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`Congress further provided in 35 U.S.C. § 315(a)(1) that “inter partes review
`
`may not be instituted if . . . the petitioner or any real party in interest filed a civil
`
`action challenging the validity of a claim of the patent.” In addition, it provided
`
`for an automatic stay of the civil action in the event that the petitioner or real party
`
`in interest files a civil action challenging the validity of a claim of the patent. Id. at
`
`315(a)(2). These clauses clearly preclude repetitive litigation.
`
`Congress then barred institution of inter partes review for any “petitioner,
`
`real party in interest, or privy of the petitioner” if any are served with a complaint
`
`alleging infringement of the patent by the patent owner if the defendants were
`
`served more than one year before filing. Id. at 315(b). This clause furthers the
`
`statutory imperitive to prevent multiple actions. Congress also provided that
`
`multiple proceedings before the Board involving the same action may be
`
`consolidated. Id. at 315(d). Finally, Congress directed that any final written
`
`decision from the PTO shall bind the petitioner, real party in interest, and the privy
`
`of the petitioner and estop them from any subsequent attacks before the Office, any
`
`district court, or the International Trade Commission. Id. at 315(e). Thus,
`
`Congress enumerated multiple provisions to curb excessive litigation and repetitive
`
`attacks on patent owners.
`
`The goal of limiting discovery was clearly a subsidiary method to control
`
`costs. Congress authorized discovery in one section, 35 U.S.C. § 316(5).
`
`REQUEST FOR REHEARING
`
`
`4
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`Nevertheless, Congress permitted discovery as “necessary in the interest of
`
`justice.” Id. Moreover, the PTO specifically stated that discovery can be utilized to
`
`resolve the primary goal of reducing repetitive litigation. See Changes to
`
`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
`
`Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48680,
`
`48689 (Aug. 14, 2012) (“additional discovery may be authorized where patent
`
`owner raises sufficient concerns regarding the petitioner’s certification of
`
`standing.”).
`
`Ericsson respectfully submits that the Decision, which promoted the
`
`subsidiary goal – limitation of discovery costs – at the expense of the primary goal
`
`– elimination of repetitive and harassing proceedings – was erroneous as a matter
`
`of law, and as a matter of discretion because it was not “in the interests of justice.”
`
`Limited discovery is necessary to determine the facts bearing on whether
`
`Broadcom was a real party in interest or privy of the defendants in Ericsson Inc., et
`
`al. v. D-LINK Corp., et al., Civil Action No. 6:10-CV-473 (LED/KGF).
`
`C. The Board Erred as a Matter of Law in its Holding that “Broadcom must
`have had control over the Texas Litigation.”
`
`
`
`Congress did not define “real party in interest” or “privy,” but the text and
`
`structure of the AIA militate in favor of a broad and liberal construction to achieve
`
`the AIA’s intended result of limiting repetitive litigation. Both Congress and the
`
`PTO stated that the term “privity” has acquired an “expanded meaning” and that it
`
`REQUEST FOR REHEARING
`
`
`5
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`will give effect to judgments by extending the term “beyond its classical
`
`description.” See 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.
`
`48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide” or “TPG”).
`
`The PTO further acknowledged the broad aim of the AIA in the Trial
`
`Practice Guide, which clearly states that the determination of who is a real party in
`
`interest or privy must be made on the facts of each case. See TPG at 48,760. The
`
`PTO cited Cal. Physicians with approval in its discussion regarding the expansion
`
`of the scope of privity beyond the “control” test. Cal. Physicians held that “[t]he
`
`word ‘privy’ has acquired expanded meaning. The courts, in the interest of justice
`
`and to prevent expensive litigation, are striving to give effect to judgments by
`
`extending ‘privies’ beyond the classical description. The emphasis is not on a
`
`concept of identity of parties, but on the practical situation . . . The concept refers
`
`‘to a relationship between the party to be estopped and the unsuccessful party in
`
`the prior litigation which is ‘sufficiently close’ so as to justify application of the
`
`doctrine of collateral estoppel.’” 163 Cal. App. 4th at 1521 (citations omitted)
`
`(emphasis added).
`
`The court then declared that “[n]otions of privity have been expanded to the
`
`limits of due process.” Id. at 1522. The proper test for privity that satisfies due
`
`REQUEST FOR REHEARING
`
`
`6
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`process is to determine if the parties have “an identity or community of interests
`
`with, and adequate representation by, the losing party in the first action as well as
`
`that the circumstances must have been such that the party to be estopped should
`
`reasonably have expected to be bound by the prior adjudication.” Id. Further,
`
`when the appellant argued that it did not control the prior litigation, the court
`
`denied the contention and stated, “preclusion can apply even in the absence of such
`
`control.” Id. at 1524.
`
`The PTO adopted that exact language in the Trial Practice Guide, see TPG at
`
`48,760; the Board’s contrary holding, that “Broadcom must have had control over
`
`the Texas Litigation,” was, respectfully, in error.
`
`Where Ericsson’ burden is to show an identity or community of interest
`
`sufficient to make Broadcom expect to be bound by the Texas Litigation, it was
`
`error to require a showing of control. The combination of Broadcom’s
`
`indemnification agreements, ancillary legal actions, discussions with D-Link
`
`Defendants, amicus curiae brief, and its reliance on evidence from the Texas
`
`Litigation collectively indicate that Broadcom has an identity or community of
`
`interest that was served in the Texas Litigation. It was error to refuse to permit
`
`discovery sufficient to further show this community of interest.
`
`
`
`REQUEST FOR REHEARING
`
`
`7
`
`IPR2013-00636
`
`
`
`
`
`
`
`Paper No. _____
`
`
`
`
`
`III. Conclusion
`
`Ericsson respectfully requests that the Board reconsider its Decision.
`
`Allowing limited discovery on the relationship between petitioner and the D-Link
`
`Defendants promotes Congress’ principal purpose of the AIA – to prevent repeated
`
`litigation and multiple attacks on the validity of patents. It also conforms to the
`
`broad doctrine of privity because denying privies the right to inter partes review is
`
`in the interest of justice, as provided by both Congress and the PTO.
`
`
`
`Dated: February 7, 2014.
`
`
`
` /Peter J. Ayers/
`PETER AYERS
`Lee & Hayes, PLLC
`13809 Research Blvd., Suite 405
`Austin, TX 78750
`Telephone: 512.505.8162
`Fax: 509.944.4693
`Attorney for Patent Owner Telefonaktiebolaget
`LM Ericsson
`
`
`
`
`
`REQUEST FOR REHEARING
`
`
`8
`
`IPR2013-00636
`
`
`
`
`
`
`
`
`
`Paper No. _____
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on February 7, 2014 the foregoing 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
`Michael A. Diener, Back-up Counsel
`Wilmer Cutler Pickering Hale and Dorr, LLP
`60 State Street
`Boston, MA 02109
`WH-External-Broadcom-IPR2013-601@wilmerhale.com
`dominic.massa@wilmerhale.com
`michael.diener@wilmerhale.com
`
`
`
`LEE & HAYES PLLC
`
`
`
` /Peter J. Ayers/
`Peter J. Ayers, Reg. No. 38,374
`
`
`
`
`
`REQUEST FOR REHEARING
`
`
`9
`
`IPR2013-00636
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
