Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper: 24
`Entered: Feb. 20, 2014
`
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON and ERICSSON, INC.
`Patent Owner
`____________
`
`Case IPR2013-00636
`Patent 6,424,625 B1
`____________
`
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`EASHTOM, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`Patent Owner, “Ericsson,” requests rehearing, Paper 23 (“Reh’g
`Req.”),of the Decision on Ericsson’s Motion for Additional Discovery,
`Paper 20 (“Dec. on Mot.”), which denies additional discovery by Ericsson of
`
`
`Tel: 571-272-7822
`
`
`
`Paper: 24
`Entered: Feb. 20, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON and ERICSSON, INC.
`Patent Owner
`____________
`
`Case IPR2013-00636
`Patent 6,424,625 B1
`____________
`
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`EASHTOM, Administrative Patent Judge.
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`Patent Owner, “Ericsson,” requests rehearing, Paper 23 (“Reh’g
`Req.”),of the Decision on Ericsson’s Motion for Additional Discovery,
`Paper 20 (“Dec. on Mot.”), which denies additional discovery by Ericsson of
`
`
`
`
`
`IPR2013-00636
`Patent 6,424,625 B1
`
`material possessed by Petitioner, “Broadcom.” Ericsson requests that the
`Board reverse its decision and allow for limited discovery. Reh’g Req. 8.
`The request is denied.
`
`Ericsson argues 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 [the] 35 U.S.C. § 315(b) bar may be
`invoked.”1 Reh’g Req. 2.
`Ericsson’s first argument is new. This new rehearing argument is
`improper. “The [rehearing] request must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion . . . .” 37 C.F.R. §
`42.71(d); see also 37 C.F.R. § 42.71(c) (“a panel will review the [rehearing]
`decision for an abuse of discretion.”)2
`The Board could not have misapprehended or overlooked an argument
`presented for the first time in Ericsson’s Rehearing Request. Ericsson fails
`to point the Board to where it made the argument or where the Board made
`the alleged holding regarding “a higher statutory priority.” The Board
`carefully balanced numerous factors and determined that Ericsson failed to
`meet the statutorily mandated “interests of justice” standard for additional
`discovery. See Dec. on Mot. 5 (citing 35 U.S.C. § 316(a)(5) (“such
`
`1 Ericsson Inc., et al. v. D-LINK Corp., et al., Civil Action No. 6:10-CV-473
`(LED/KGF) (“Texas Litigation”).
`2 An abuse of discretion may be determined if a decision is based on an
`erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment
`in weighing relevant factors. Arnold Partnership v. Dudas, 362 F3d 1338,
`1340 (Fed. Cir. 2004).
`
`
`
`2
`
`
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`
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`IPR2013-00636
`Patent 6,424,625 B1
`
`discovery shall be limited to . . . what is otherwise necessary in the interest
`of justice”)); id. at 4–16 (balancing factors, addressing precedent and
`legislative history).
`Ericsson’s second argument does not show that the Board erred in
`determining that the weight of authority requires some control over the
`Texas Litigation by Broadcom to show privity. See Dec. on Mot. 7 (citing
`and discussing “long-standing precedent”). Ericsson relies heavily on one of
`the cases cited in the Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,759, 48,760 (Aug. 14, 2012)(“TPG”)––Cal. Physicians’ Serv. v.
`Aoki Diabetes Research Inst. 163 Cal. App. 4th 1506, 1524 (Cal. App.
`2008). See Reh’g Req. 5–7. Ericsson ignores the weight of authority cited
`by the Board that shows control over prior litigation is a crucial factor
`normally required to bind a party to that prior litigation using collateral
`estoppel. See Dec. on Mot. 7-10; Reh’g Req. 5–7.
`Immediately before citing Aoki as an example, the TPG qualifies Aoki
`as follows: “But whether something less than complete funding and control
`suffices to justify similarly treating the party requires consideration of the
`pertinent facts. See e.g., Cal. Physicians’ Serv. v. Aoki Diabetes Research
`Inst. 163 Cal. App. 4th 1506, 1524 (Cal. App. 2008) . . . .” (Emphasis
`added). In other words, although the TPG cites Aoki, it retains an emphasis
`on control. In other places, for example, the TPG states that “[a] common
`consideration is whether the non-party exercised control over a party’s
`participation in a proceeding” and “the rules do not enumerate particular
`factors regarding a ‘control’ theory.” TPG at 48,759.
`Ericsson also quotes selectively from the Board’s decision, ignoring
`the phrase “in normal situations” that qualifies the language it quotes. See
`
`
`
`3
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`IPR2013-00636
`Patent 6,424,625 B1
`
`Reh’g Req. 7 (discussing the Board’s rationale that “Broadcom must have
`had control over the Texas Litigation”); Dec. on Mot. 7. The Board’s
`characterization of the law in the previous sentence, Dec. on Mot. 7 (“[t]o
`show privity requires a showing that Broadcom would be bound to the
`outcome of the Texas Litigation”) is consistent with the characterization by
`the court in Aoki, 163 Cal. App. 4th at 1524 (“[t]he question is whether,
`under the circumstances as a whole, the party to be estopped should
`reasonably have expected to be bound by the prior adjudication.”).
`Ericsson is essentially correct in that Aoki held that “‘preclusion can
`apply even in the absence of . . . control.’” Reh’g Req. 7 (quoting Aoki, 163
`Cal. App. 4th at 1524). Nevertheless, Aoki also noted that “control over the
`prior action is commonly present” in collateral estoppel applications. Id.
`Aoki is also highly fact specific, as are typical cases involving collateral
`estoppel. See Dec. on Mot. 7-10.
`Aoki begins its privity analysis by noting that “the doctrine [of
`collateral estoppel] applies ‘only if several threshold requirements are
`fulfilled. First, the issue sought to be precluded from relitigation must be
`identical to that decided in a former proceeding.’” Id. at 1520 (citation
`omitted). Departing from the normal privity rule that requires control, and
`delineating its finding of privity based on a community of interest theory,
`which included a finding of an identical issue to be precluded, see id. at
`1521 (discussing exact same single issue of denial of coverage for an
`experimental procedure), the court cited as an important factor,
`“prevent[ing] the possibility of a dramatically inconsistent judgment,” id. at
`1524.
`
`
`
`4
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`IPR2013-00636
`Patent 6,424,625 B1
`
`
`
`
`On its face, this important factor, preventing a “dramatically
`inconsistent judgment,” underlies or coalesces with the fundamental
`threshold requirement enunciated by Aoki––precluding only the identical
`issue previously litigated––which issue, of course, is necessary to produce a
`(later) inconsistent judgment. That concern is not present in this proceeding.
`In general, as compared to district courts, different burdens of proof,
`different presumptions, different claim construction standards for unexpired
`patents, and different prior art, typically apply to PTAB proceedings. See
`37 C.F.R. § 42.100(b); TPG at 48,766 (the broadest reasonable construction
`standard). Of course, Congress was aware of the differences between the
`two proceedings when it listed a “privy” as precluded from a time-barred
`inter partes proceeding under 35 U.S.C. 315(b). Therefore, although
`identical issues may not be required to establish privity through collateral
`estoppel at the PTAB, the TPG emphasizes control, which implies that
`control is an important factor to establish privity in the absence of identical
`issues and otherwise.
`In other words, while the TPG and 35 U.S.C. 315(b) may indicate a
`relaxation, to a certain extent, of collateral estoppel principles, and Aoki
`generally may present guiding principles regarding privity, Aoki also
`recognizes that “[n]otions of privity have been expanded to the limits of due
`process.” 163 Cal. App. 4th at 1522 (citation omitted) (emphasis added). In
`order to bind a non-party under collateral estoppel, this expansion cannot
`exceed the bounds of due process. Ultimately, Ericsson does not show that
`the Board overlooked a material consideration in determining that Ericsson
`failed to meet its burden of showing that additional discovery would have
`
`
`
`5
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`IPR2013-00636
`Patent 6,424,625 B1
`
`more than a mere possibility of showing that Broadcom should be bound by
`the Texas Litigation. See Dec. on Mot. 11-13.
`
`
`
`
`DECISION on REHEARING
`
`
`Ericsson’s sought-after relief is DENIED.
`
`
`
`
`PETITIONER:
`
`Dominic Massa
`Michael Diener
`michael.diener@wilmerhale.com
`Dominic.massa@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Peter J. Ayers
`J. Christopher Lynch
`Lee & Hayes PLLC
`Peter@leehayes.com
`chris@leehayes.com
`
`
`
`
`
`
`6
`
`
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