UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BROADCOM CORPORATION
`
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L.M. ERICSSON
`
`Patent Owner
`
`
`
`Case IPR2013-00636
`U.S. Patent No. 6,424,625
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b)
`
`
`
`
`
`
`ActiveUS 119713245v.1
`
`

`
`Ericsson’s (“Ericsson”) Motion for Additional Discovery from Broadcom
`
`Corporation (“Broadcom”) (the “Motion”) should be denied because Broadcom is
`
`not in privity with the Texas Defendants1 and because Ericsson has not
`
`demonstrated that its requested additional discovery is “necessary in the interest of
`
`justice.” 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2)(i).
`
`Discovery in inter partes review (“IPR”) is “less than what is normally
`
`available in district court patent litigation” because “Congress intended inter partes
`
`review to be a quick and cost effective alternative to litigation.” IPR2013-00080,
`
`Paper 18 at 3. The Board must therefore be “conservative in authorizing additional
`
`discovery.” Id. Additional discovery–like that requested in Ericsson’s Motion–
`
`should only be permitted where such discovery is “necessary in the interest of
`
`justice.” Id., at 4. And the requested discovery must be more than a speculation or
`
`“mere possibility.” Id. There must be “factual evidence or support” underlying a
`
`request for additional discovery that demonstrate that “something useful [to the
`
`proceeding] will be found.” Id. Ericsson, despite all its colorful rhetoric about
`
`Broadcom’s “covert efforts” (Mot. at 2), and “attacks” on Ericsson and its patents
`
`(id. at 2), has failed entirely to satisfy this standard.
`
`1 The “Texas Defendants” are the defendants in Ericsson Inc. v. D-Link Corp. et
`al., Civil Action No. 10-cv-473 (E.D. Tex.) (“Texas Litigation”), namely D-Link
`Corp., D-Link Systems, Inc., Netgear, Inc., Acer Inc., Acer America Corp.,
`Gateway Inc., Dell, Inc., Toshiba Corp., Toshiba America, Inc., Toshiba America
`Information Systems, Inc., Toshiba America Consumer Products, LLC, and Belkin
`International, Inc. Broadcom is not a defendant.
`1
`
`
`ActiveUS 119713245v.1
`
`

`
`Indeed, Ericsson’s Motion, which by Ericsson’s own admission is premised
`
`on “circumstantial evidence,” (Mot. at 8, n.6) is precisely the type of “fishing
`
`expedition” the Board cautioned against during the December 6, 2013 conference
`
`call allowing Ericsson’s Motion. In its Order Authorizing Motion for Additional
`
`Discovery, the Board required that Ericsson explain specifically why the discovery
`
`sought was “relevant to determining whether any of the [Texas Defendants] are
`
`real parties in interest or privies of Petitioner.” Id. at 3. Ericsson failed to make
`
`such a showing. And any effort to do so is futile, because Broadcom is not in
`
`privity with the Texas Defendants, and no amount of discovery in this proceeding
`
`or in the Texas Litigation will prove otherwise.
`
`Ericsson also unreasonably delayed in raising this issue with Broadcom and
`
`the Board. Ericsson has been aware of the facts upon which its Motion is based
`
`since Broadcom filed its Petitions in September. But Ericsson waited until
`
`November 15, 2013 to first approach Broadcom regarding this issue. Ex. 2010.
`
`Ericsson then delayed further in approaching the Board, waiting until December 6,
`
`2013 to seek permission to file this Motion. Ericsson’s behavior suggests that it is
`
`more interested in engaging in irrelevant discovery to delay the Board’s processes
`
`than the central issue for this IPR – the invalidity of Ericsson’s patents.
`
`I.
`
`Ericsson’s Requested Discovery Is Futile
`A. Broadcom Is Not in Privity with the Texas Defendants
`
`
`ActiveUS 119713245v.1
`
`2
`
`

`
`Ericsson alleges that additional discovery is necessary to establish that
`
`Broadcom is in privity with one or more of the Texas Defendants and therefore
`
`barred under 35 U.S.C. § 315(b) from pursuing its IPR petitions. Motion at 3.
`
`Ericsson’s “evidence” of such purported privity consists of vague and speculative
`
`allegations regarding potential indemnity provisions in product purchase
`
`agreements between Broadcom and at least one Texas Defendant. Motion at 4.
`
`But the existence of indemnity provisions alone is not, as Ericsson asserts,
`
`sufficient to establish privity. See IPR2013-00175, Paper 20 (July 23, 2013)
`
`(“indemnification is not one of the “substantive legal relationships” cited in Taylor
`
`[] as binding a person not a party to a lawsuit to a judgment in that suit.”); see also
`
`IPR2013-00080, Paper 18 at 6 (“Indemnification is not one of the ‘substantive
`
`legal relationships’ cited in Taylor [] and is significantly different from those
`
`relationships, which involve successive property interest.”)2
`
`Whether privity exists focuses on “how courts generally have used the terms
`
`to ‘describe relationships and considerations sufficient to justify applying
`
`conventional principles of estoppel and preclusion.’” IPR2013-000080, Paper 18
`
`at 4. The Board must evaluate “whether a non-party may be recognized as a ‘real
`
`
`2 In Taylor v. Sturgell, 553 U.S. 880 (2008), the Supreme Court held that “non-
`party preclusion may be justified based on a variety of “substantive legal
`relationship[s]” between the person to be bound and a party to the judgment.
`Qualifying relationships include, but are not limited to, preceding and succeeding
`owners of property, bailee and bailor, and assignee and assignor.” Id. at 894.
`3
`
`
`ActiveUS 119713245v.1
`
`

`
`party-in-interest’ or ‘privy’” and must do so “in a manner consistent with the
`
`flexible and equitable considerations established under federal caselaw.” Fed. Reg.
`
`at 48759-60 (relevant factors for privity include whether the non-party funded or
`
`directed the proceedings or “exercised or could have exercised control over a
`
`party’s participation in a proceeding.”) Ultimately, the Board must determine
`
`whether the relationship between two parties is “sufficiently close that both should
`
`be bound by the trial outcome and related estoppels.” 77 Fed. Reg. 48756, 48759.
`
`Ericsson cannot offer evidence to the contrary. In addition to its assertions
`
`regarding Broadcom’s purported indemnity obligations, Ericsson identifies
`
`Exhibits 2005, 2007, 2009 and 2016 as “evidence” in support of its Motion. (Mot.
`
`
`ActiveUS 119713245v.1
`
`4
`
`

`
`at p. 7).3 But Ericsson’s allegations fail under even the most cursory review. For
`
`example, Exhibit 2005 is simply a general risk statement in Broadcom’s SEC
`
`filings discussing the attendant risks for Broadcom of patent litigation brought
`
`against its customers. Ex. 2005 at p. 46. Exhibit 2007 is an email chain between
`
`Acer, Broadcom, Atheros, and Intel that merely states that Acer is going to discuss
`
`technical comments from Broadcom, one of its chipset suppliers, regarding
`
`Ericsson’s infringement allegations. Ex. 2007 at p.1. Providing technical
`
`information to a customer does not establish “control” or “privity.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.4
`
`
`3 Although Ericsson refers to an “Exhibit 2016”, no such Exhibit exists.
`4 Ericsson argues that Exhibit 2008 shows a common interest privilege between
`Acer and Broadcom because certain documents produced in the Texas Litigation
`“were inadvertently produced during email discovery,” thus proving that “a
`privilege exists that protects communications between Acer and Broadcom.” Mot.
`5
`
`
`ActiveUS 119713245v.1
`
`

`
`II. Ericsson’s Additional Discovery Is Not “Necessary in the Interests of
`Justice”
`
`The Board may grant additional discovery in IPRs only where such
`
`discovery is necessary “in the interests of justice.” 37 C.F.R. § 42.51(b)(2). The
`
`requested discovery must be “more than a possibility and mere allegation.”
`
`IPR2012-00001, Paper No. 26 at 6. The Board has previously articulated five
`
`factors that are relevant to determining whether additional discovery is warranted
`
`in IPRs, only two of which are relevant to this Motion. Id., at 6.5 Ericsson’s
`
`discovery requests fail under each of these two factors.
`
`1.
`
`Ericsson’s Requested Discovery Will Not Yield “Useful
`Information”
`
`To prevail in its request for additional discovery, Ericsson must demonstrate
`
`that it is “already be in possession of a threshold amount of evidence or reasoning
`
`tending to show beyond speculation that something useful will be uncovered.” See
`
`Id., at 7. “Useful” in this context means information that is not merely “relevant”
`
`
`at p. 2. Ericsson’s assertion is without merit. Existence of (or participation in) a
`joint defense group is not sufficient to establish privity. C.F.R. 48760 (party not a
`“‘real party-in-interest’ or a ‘privy’” based on participation in a Joint Defense
`Group; Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1334 (Fed. Cir. 2001)).
`5 Although Ericsson fails to address the burden associated with responding to its
`discovery requests or whether the requests seek Broadcom’s litigation positions,
`these factors weigh against the discovery Ericsson seeks. IPR2012-00001, Paper
`26 at 6-7. Ericsson’s request for “communications between Broadcom (or its
`counsel) and any of the D-Link Defendants (or their counsel) regarding validity” of
`the patents at issue in the Texas litigation is overly broad, and further evidence that
`Ericsson’s discovery requests are nothing more than a fishing expedition.
`6
`
`
`ActiveUS 119713245v.1
`
`

`
`or “admissible” but that which is “favorable in substantive value to a contention of
`
`the party moving for discovery.” See id., at 7.
`
`Ericsson cannot satisfy this heightened burden. Ericsson asserts its
`
`requested additional discovery–which Ericsson concedes is premised on
`
`“circumstantial evidence” (Mot. at 8, n.6)–will establish that Broadcom is in
`
`privity with the Texas Defendants. But Broadcom is not in privity with the Texas
`
`Defendants, and no amount of discovery by Ericsson will establish that it is.
`
`2.
`
`Ericsson Cannot Generate “Equivalent Information”
`Because No Such Information Exists
`
`Ericsson complains that the Board must grant its request for “additional
`
`discovery” because it cannot “generate equivalent information by other means.”
`
`Mot. at 7. This argument fails for, at least, three reasons. First, there is no
`
`“equivalent information” for Ericsson to generate because the information Ericsson
`
`seeks will not establish Broadcom is in privity with any of the Texas Defendants.
`
`Second, according to Ericsson’s own motion and its conduct in the Texas
`
`Litigation, Ericsson’s additional discovery is not necessary because Ericsson has
`
`sought the same information through other means. On December 6, 2013–two and
`
`a half months after Broadcom’s IPR filing–Ericsson filed an “emergency” motion
`
`in the Texas Litigation seeking production for use in this IPR certain categories of
`
`documents that it also seeks through this Motion. Ex. 1018. In its Texas motion,
`
`Ericsson requested that the Court order production of such documents in sufficient
`7
`
`
`ActiveUS 119713245v.1
`
`

`
`time for Ericsson to submit those document as part of the Patent Owner’s
`
`Statement. Id. at p. 1. Ericsson’s motion in the Texas Litigation is fully briefed
`
`and pending before the Texas Court. Ex. 1019.6
`
`Finally, Ericsson is incorrect that its additional discovery is warranted
`
`because Broadcom has “stonewalled Ericsson by hiding behind the [Texas]
`
`protective order” and by refusing to allow the Texas Defendants to produce
`
`Ericsson’s requested information. Id. at 8. Broadcom is not a party to the Texas
`
`Litigation, and it does not control the conduct of the Texas Defendants. Broadcom
`
`therefore cannot require the Texas Defendants to waive the terms of a Protective
`
`Order that Broadcom did not negotiate. Ex. 2011 at p.1-2.
`
`III. CONCLUSION
`For the reasons stated above, Broadcom respectfully requests that Ericsson’s
`
`Motion be denied.
`
`Dated: December 20, 2013.
`
`Respectfully submitted,
`
`/Dominic E. Massa/
`Dominic E. Massa, Reg. No. 44,905
`60 State St.
`Boston, MA 02109
`
`
`6 The Board should reject Ericsson’s request to “hold the present motion in
`abeyance until the district court rules on Ericsson’s motion.” Mot. at 8, n.6 As set
`forth above, even if Ericsson obtains the documents in its Texas motion, such
`documents will not establish Broadcom is in privity with the Texas Defendants.
`8
`
`
`ActiveUS 119713245v.1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on December 20, 2013, I caused a true and correct copy
`
`of the foregoing PETITIONER’S OPPOSITION TO PATENT OWNER’S
`
`MOTION FOR ADDITIONAL DISCOVERY UNDER 37 C.F.R. § 42.51(b) to be
`
`served via email on the attorneys identified in Ericsson’s Updated Mandatory
`
`Notice (Paper 8), whom consented to electronic service:
`
`Lead Counsel:
`Email Address:
`Back-up Counsel:
`Email Address:
`
`
`Peter J. Ayers
`peter@leehayes.com
`J. Christopher Lynch
`chris@leehayes.com
`
`/Dominic E. Massa/
`Dominic E. Massa
`Registration No. 44,905
`
`
`ActiveUS 119713245v.1
`
`9