Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper: 23
`Entered: Jan 24, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON (PUBL)
`Patent Owner
`____________
`
`Cases IPR2013-00601(Patent 6,772,215 B1)
`IPR2013-00602 (Patent 6,446,568 B1)
`IPR2013-00636 (6,424,625 B1)1
`____________
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`EASHTOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Ericsson’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`1 The Board exercises its discretion to issue one Order to be filed in each
`case. The parties are not authorized to use this heading style.
`
`
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`
`Introduction
`
`
`
` Patent Owner (“Ericsson”) filed a redacted motion for additional
`
`discovery in the instant proceedings (Paper 13, “Mot.” or “Motion”), and
`
`Petitioner (“Broadcom”) filed a redacted opposition (Paper 16 “Opp.” or
`
`“Opposition”).2 In its Motion, Ericsson requests discovery regarding
`
`indemnity agreements, defense agreements, payments, and email, or other
`
`communications, between Broadcom and defendants (“D-Link Defendants”)
`
`in related litigation, Ericsson Inc., et al. v. D-LINK Corp., et al., Civil
`
`Action No. 6:10-CV-473 (LED/KGF) (“Texas Litigation”). See Mot.; Ex.
`
`2001 (“Patent Owner’s Requests for Production,” hereinafter “Request”).
`
`In the Texas Litigation, a jury found Ericsson’s challenged patents in
`
`the instant proceedings infringed by the D-Link Defendants due partly to
`
`their use of Broadcom’s Wi-Fi compliant products. See Pet. 1–2. Broadcom
`
`was not a party to the Texas Litigation. Id. at 1. According to Broadcom,
`
`the jury did not address the issue of validity with respect to the patents
`
`challenged in IPR2013-00601 and IPR2013-00602. See IPR2013-00601,
`
`Paper 3, 2; IPR2013-00602, Paper 2, 1-2. Ericsson maintains that the
`
`requested discovery will show that “Broadcom is in privity with at least one
`
`D-Link Defendant” in the Texas Litigation. Mot. 4.
`
`For the reasons stated below, Ericsson’s motion is denied.
`
`35 U.S.C. § 315(b)
`
`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
`
`
`2 The parties also filed sealed redacted versions. See note 3. Unless
`otherwise noted, reference throughout is to redacted papers filed in
`IPR2013-00636. The same or similar papers are filed in the other two cases,
`IPR2013-00601 and IPR2013-00602.
`
`
`
`2
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`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.”
`
`Broadcom does not dispute that one or more of the D-Link Defendants were
`
`served with a complaint more than one year prior to the filing of the Petition.
`
`Therefore, if Ericsson can show privity existed between the D-Link
`
`Defendants and Broadcom in the Texas Litigation, an inter partes review
`
`may not be instituted under 35 U.S.C. § 315(b). See Paper 9 (Order
`
`Authorizing Motion for Additional Discovery).
`
`Request
`
`Pursuant to its discovery Motion, Ericsson seeks the following
`
`discovery items:
`
`1. All executed contracts or agreements between
`Broadcom and any of the D-Link Defendants relating to Wi-Fi
`compliant products, such as the BCM4313 and BCM4321, that
`are used in any of the D-Link Defendants’ products accused of
`infringement in the D-Link Litigation.
`
`2. All executed contracts or agreements between
`Broadcom and any of the D-Link Defendants that include any
`indemnity or duty to defend provisions.
`
`3. All joint defense agreements, or other agreements
`addressing cooperation on the defense of the D-Link Litigation,
`between Broadcom and any of the D-Link Defendants relating
`to the D-Link Litigation.
`
`4. All invoices provided to or received from any of the
`D-Link Defendants, or their counsel, seeking reimbursement for
`any fees or expenses incurred in the D-Link Litigation.
`
`5. Records of any payments made by Broadcom to any
`of the D-Link Defendants, or their counsel, or to Ericsson,
`pursuant to any actual or alleged contractual duty to defend or
`
`
`
`3
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`
`
`
`indemnify any [of] the D-Link Defendants for any fees or
`expenses incurred in the D-Link Litigation.
`
`6. All emails and written correspondence between any of
`the D-Link Defendants, or their counsel, and Broadcom, or its
`counsel, relating to any claimed duty of Broadcom to defend or
`indemnify any of the D-Link Defendants in the D-Link
`Litigation from January 1, 2010 to the present.
`
`7. All emails and written correspondence between
`Broadcom, or its counsel, and any of the D-Link Defendants, or
`their counsel, from January 1, 2010 to the present relating to:
`A. The filing of IPR2013-00601, IPR2013-
`00602, and IPR2013-00636;
`B. Intervention by Broadcom in the D-Link
`Litigation;
`C. The claim construction or interpretation
`of any of the patents at issue in the D-Link
`Litigation, including, but not limited to, the ‘568
`Patent, the ‘625 Patent, or the ‘215 Patent; and
`D. The validity or alleged invalidity of any
`of the patents at issue in the D-Link Litigation,
`including, but not limit[ed] to, the ‘568 Patent, the
`‘625 Patent, or the ‘215 Patent.
`
`Ex. 2001.
`
`Analysis
`
`To show privity, Ericsson relies, inter alia, on known indemnity
`
`agreements, wherein Broadcom agreed to indemnify certain D-Link
`
`Defendants. Ericsson also relies on allegations about litigation activity by
`
`Broadcom, filing of an amicus appeal brief by Broadcom in the Texas
`
`Litigation, SEC filings, communications with Acer, Inc., a D-Link
`
`Defendant, Broadcom’s use of Ericsson’s expert report in the filing of the
`
`Petition, timing of the filing of the IPRs, and email correspondence about
`
`indemnity and other matters. See Mot. 1-7 (citing Ex. 1010; Exs. 2002-
`
`
`
`4
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`2017).3 For its part, Broadcom asserts that “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.” Opp. 2.
`
`Pursuant to the America Invents Act (AIA), certain discovery is
`
`available in inter partes review proceedings. See 35 U.S.C. § 316(a)(5); 37
`
`C.F.R. §§ 42.51-53. Discovery in an inter partes review proceeding,
`
`however, is less than what is normally available in district court patent
`
`litigation, as Congress intended inter partes review to be a quick and cost
`
`effective alternative to litigation. See H. Rep. No. 112-98 at 45-48 (2011).
`
`A party seeking discovery beyond what is expressly permitted by rule must
`
`do so by motion, and “must show that such additional discovery is in the
`
`interests of justice.” 37 C.F.R. § 42.51(b)(2)(i); accord 35 U.S.C.
`
`§ 316(a)(5) (“such discovery shall be limited to . . . what is otherwise
`
`necessary in the interest of justice”).
`
` The AIA legislative history makes clear that additional discovery
`
`
`3 As indicated above, note 2, in addition to the redacted papers, the parties
`filed un-redacted papers that remain under seal: Ericsson filed a protected
`motion, Paper 11, with protected exhibits that remain under seal. Similarly,
`Broadcom filed a protected opposition, Paper 16, and a protected exhibit,
`Ex. 1017, that remain under seal. (Broadcom should clarify if Exhibit 1018
`is to be placed under seal. It appears, based on the face of the document and
`related characterizations, that it contains confidential information. It is
`under seal at PTAB at this time.) After review of the un-redacted materials,
`the Board determines that they do not alter the outcome. In this Motion
`Decision, Broadcom’s sealed opposition and exhibits are not addressed
`further, because they do not impact Ericsson’s initial burden of showing that
`the requested discovery is necessary in the interests of justice. Ericsson’s
`sealed motion, Paper 11, additionally shows confidential litigation activity
`by Broadcom that fails to imply or show control by Broadcom over the
`Texas Litigation.
`
`
`
`5
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`should be confined to “particular limited situations, such as minor discovery
`
`
`
`that PTO finds to be routinely useful, or to discovery that is justified by the
`
`special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed.
`
`Sept. 27, 2008) (statement of Sen. Kyl). In light of this, and given the
`
`statutory deadlines required by Congress for inter partes review
`
`proceedings, the Board must be conservative in authorizing additional
`
`discovery. See id.
`
`An important factor in determining whether additional discovery is in
`
`the interests of justice is whether there exists more than a “mere possibility”
`
`or “mere allegation that something useful [to the proceeding] will be found.”
`
`Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC,
`
`IPR2012-00001, Paper 20, 2–3, “Order––Authorizing Motion for Additional
`
`Discovery” (listing important factors to determine whether a discovery
`
`request meets the applicable standard) (hereinafter the “Garmin factors”);
`
`accord Apple v. Achates Reference Publishing, Inc., IPR2013-00080, Paper
`
`18, “Decision––Achates Motion for Additional Discovery” (applying the
`
`Garmin factors to indemnity agreements). The party seeking discovery must
`
`come forward with some factual evidence or support for its request. See
`
`IPR2012-00001, Paper 26 (decision addressing the Garmin discovery
`
`factors).
`
`Whether a non-party is a “real party-in-interest” or “privy” for
`
`purposes of an inter partes review proceeding is a “highly fact-dependent
`
`question” that takes into account how courts generally have used the terms
`
`to “describe relationships and considerations sufficient to justify applying
`
`conventional principles of estoppel and preclusion.” Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial
`
`
`
`6
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`Practice Guide” or “TPG”). Whether parties are in privity, for instance,
`
`
`
`depends on whether the relationship between a party and its alleged privy is
`
`“sufficiently close such that both should be bound by the trial outcome and
`
`related estoppels.” Id. Depending on the circumstances, a number of factors
`
`may be relevant to the analysis, including whether the non-party “exercised
`
`or could have exercised control over a party’s participation in a proceeding,”
`
`and whether the non-party is responsible for funding and directing the
`
`proceeding. Id. at 48,759-60.
`
`Ericsson’s evidence does not amount to more than a “mere allegation
`
`that something useful will be found” to show privity, as is required by the
`
`first Garmin factor. To show privity requires a showing that Broadcom
`
`would be bound to the outcome of the Texas Litigation. To be bound, in
`
`normal situations, Broadcom must have had control over the Texas
`
`Litigation. According to long-standing precedent, Bros, Inc. v. W.E. Grace
`
`Mfg. Co., 261 F.2d 428, 429 (5th Cir. 1958), when a patent holder sues a
`
`dealer, seller, or distributer of an accused product, as is the case at hand,
`
`indemnity payments and minor participation in a trial are not sufficient to
`
`establish privity between the non-party manufacturer of the accused device
`
`and the defendant parties:
`
`While the mere payment of counsel fees or participation in a
`trial by one not a named party to it would not alone be
`sufficient, cf. I.T.S. Rubber Co. v. Essex Co., [] 272 U.S. 429
`[(1926)]. . . Restatement, Judgment § 84, comment e (1942),
`the extent and nature of that participation may completely alter
`the consequences. This is particularly so in patent infringement
`cases in which, from tactical or strategic considerations relating
`to venue, desirability of a particular forum and the like, such
`cases are so often filed and tried against a dealer, a seller, a
`distributor, or a user of the accused device manufactured by
`
`
`
`7
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`
`
`
`another. If the manufacturer stands aloof, he risks a judgment
`adverse to his interest resulting perhaps from inadequate or
`incompetent defense by one who has a secondary interest. Such
`judgment, to be sure, would normall[y] not be binding by
`estoppel or res judicata, but it would take its place in the
`jurisprudence where its practical effect as stare decisis might be
`as decisive. The alternative, of course, is to jump in and give
`the case full and active defense as though the manufacturer
`were the real named party. This assures that the issues will be
`presented and contested in a way deemed most effective by the
`nominally remote, but practically immediate, party at interest.
`
`261 F.2d at 429 (emphases added); cited with approval by Emerson Elec.
`
`Co. v. Black and Decker Mfg. Co., 606 F.2d 234, 242, n. 20 (8th Cir. 1979)
`
`(“If Emerson does control the Maryland suit, the outcome will be binding
`
`on, or inure to the benefit of, Emerson under principles of res judicata.”); see
`
`also United States v. Webber, 396 F.2d 381, 387 (3d Cir.1968) (finding that
`
`appellants were “privies” because of their “control over and interest in the
`
`earlier litigation.”)
`
`
`
`Bros, Inc. relies on a long line of precedent to support the normal rule
`
`that privity requires a finding of active control of the trial:
`
`Where that course is followed and the non-party actively
`and avowedly conducts the defense, manages and directs the
`progress of the trial at its expense and under its supervision, the
`outcome, which if favorable would have redounded to his
`benefit, if adverse becomes sauce for goose and gander alike,
`and binding under principles of res judicata. Minneapolis-
`Honeywell Regulator Co. v. Thermoco, Inc., 116 F.2d 845 (2d
`Cir. 1941); Nash Motors Co. v. Swan Carburetor Co., 105 F.2d
`305 (4th Cir. 1939); Warford Corp. v. Bryan Screw Machine
`Products Co., 44 F.2d 713 (6th Cir. 1930); N. O. Nelson
`Manufacturing Co. v. F. E. Myers & Bro. Co., 25 F.2d 659 (6th
`Cir. 1928); Beyer Co. v. Fleischmann Co., 15 F.2d 465 (6th Cir.
`1926); Restatement, Judgments 84, comment b, illustration 5
`(1942).
`
`
`
`8
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`261 F.2d at 429 (citations reformatted).
`
`
`
`Similarly, under TRW Inc. V. Ellipse Corp., 495 F.2d 314, 318 (7th
`
`Cir. 1974), “the crucial distinction . . . is the extent of participation, for
`
`privity in the law of judicial finality usually connotes representation.” In
`
`Dentsply Intern., Inc. v. Kerr Mfg. Co., 42 F.Supp.2d 385 (D.Del. 1999), the
`
`court characterized TRW as requiring control of the trial to show privity:
`
` In TRW, the Court of Appeals for the Seventh Circuit
`refused to apply the doctrine of res judicata to TRW, a
`nonparty, who agreed to indemnify a named party in a prior
`suit, but whose role in the prior suit was limited to observing
`the proceedings and filing amicus curiae briefs. In reaching this
`conclusion, the court noted that the crucial distinction between
`TRW and other cases, in which nonparty indemnitors were
`found to have interests sufficiently close for establishing privity
`for res judicata purposes, was TRW's limited extent of
`participation in the prior lawsuit. Indeed, the court explicitly
`distinguished TRW’s situation from the situation in which a
`nonparty indemnitor retained the indemnitee-defendant's
`counsel and controlled the litigation.
`
`Dentsply, 42 F.Supp.2d at 398 (emphasis added).
`
`Contrary to Ericsson’s assertion that “[t]he weight of authority
`
`strongly supports that an indemnity agreement . . . establish[es] privity,”
`
`Mot. 6, Bros. Inc, TRW, Dentsplay and other cases noted supra illustrate that
`
`more is required. Control of the litigation, or some sort of representation,
`
`constitutes a “crucial” factor. Dentsply, 42 F.Supp.2d at 398.
`
`Ericsson relies, inter alia, on Jennings v. U.S., 374 F.2d 983, 985 (4th
`
`Cir. 1967) for the following proposition: “where an indemnitor is notified
`
`and can take part in – indeed may control – the litigation, he is precluded
`
`from contesting the indemnitee’s liability in the subsequent indemnity
`
`action.” Mot. 5. Ericsson does not explain how this dicta in Jennings
`
`
`
`9
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`applies to the situation at hand or otherwise supports a departure from the
`
`
`
`long-standing rule that includes control or representation as a crucial factor
`
`that may bind a non-party to a trial outcome.
`
`For example, in Dentsplay, the court found that “even if Centrix was
`
`ultimately relieved of its legal duty to defend and indemnify Kerr, as a
`
`factual matter, Centrix did defend Kerr for approximately two years, in a
`
`manner which was consistent with various terms of the agreement.” 42
`
`FSupp. 2d at 396, n. 4. Certain indemnity agreements involved in Dentsply
`
`corroborated control of the litigation, and the court found extensive
`
`participation in the litigation by indemnitor Centrix. See id. at 397-399.
`
`“Because of the contractual relationship between Centrix and Kerr, Centrix’s
`
`extensive participation in the litigation and Centrix's knowledge of the
`
`injunction, the Court concludes that privity exists between Kerr and
`
`Centrix.” Id. at 399.
`
`Nevertheless, Ericsson seeks to discover indemnity agreements and
`
`asserts that certain SEC filings show that “it is not uncommon for
`
`Broadcom” to indemnify its customers. Mot. 1 (citing Ex. 2005, 46).
`
`Ericsson also asserts that “Broadcom does not deny the existence of such
`
`indemnity agreements.” Mot. 7. Ericsson attaches an order from the Texas
`
`Litigation, Ex. 2016, in which the district court mentions two indemnity
`
`agreements and an e-mail communication about indemnity.4
`
`
`4 In the order, the court denied Ericsson’s motion to release discovery of
`those items, partially because it was under a protective order there, and
`granting the motion would undermine the negotiations which produced the
`protective order and discovery items. See Ex. 2016, 3. The court noted that
`granting Ericsson’s motion would allow Ericsson to employ the district
`
`
`
`10
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`
`Ericsson also attaches evidence of other litigation activity by
`
`
`
`Broadcom (which remains under a protective order in this proceeding), Ex.
`
`2009, and attaches a “Motion of Amici Wi-Fi Chip Companies Broadcom
`
`Corporation . . . for Leave to File Amicus Brief” in the Court of Appeals for
`
`the Federal Circuit,” Ex. 2017, as further evidence of collusion, litigation
`
`activity, or control by Broadcom.
`
`The totality of this evidence fails to amount to more than a “mere
`
`possibility” that Broadcom controlled, or could have controlled, the Texas
`
`Litigation. Paying for trial expenses pursuant to indemnity normally does
`
`not establish privity or control. Therefore, the sought-after indemnity
`
`agreements, and the requested discovery items seeking evidence of payment
`
`pursuant to indemnity or other agreements, fail to amount to more than a
`
`“mere allegation that something useful will be found” to establish privity.
`
`See Ex. 2001 (discovery items 1–6, also listed supra).
`
`Similarly, although filing an amicus brief shows interest in the
`
`outcome, it only shows some potential future control as a non-party over the
`
`appeal of an issue of damages. See Ex. 2017, 2 (motion by Broadcom to file
`
`amicus brief to address royalties and noting that the “award may also
`
`provoke indemnity issues”). Filing an amicus brief on appeal does not bind
`
`Broadcom to the trial below outcome or show that Broadcom exercised
`
`control over that outcome. See Dentsplay, 42 F.Supp.2d at 398 (quoted
`
`supra, discussing TRW––agreeing to indemnify a named party, but having a
`
`role limited to observing the proceedings and filing amicus curiae briefs, is
`
`insufficient to show privity). The other litigation activity by Broadcom in
`
`
`court’s broader “relevancy” standard and circumvent the PTO’s narrower
`standard. Id.
`
`
`
`11
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`another forum, Ex. 2009 (under seal), appears to have occurred during the
`
`
`
`Texas Litigation, prior to the court’s entry of judgment. Nonetheless, it does
`
`not show control of the Texas Litigation or otherwise show that Broadcom
`
`would be bound by that outcome.
`
`Ericsson also requests discovery of “emails and written
`
`correspondence,” Ex. 2001 (discovery requests 6, 7), between Broadcom and
`
`the D-Link defendants relating to “[i]ntervention by Broadcom in the D-
`
`Link Litigation,” id. (request 7), relating to a duty to defend or indemnify,
`
`id. (request 6) and also “agreements addressing cooperation on the defense
`
`of the D-Link Litigation,” id. (request 3). Other than indemnity agreements,
`
`Ericsson does not provide sufficient evidence, if any, that any such other
`
`agreements exist or were discussed.
`
`Ericsson also does not explain how a discovery request regarding
`
`intervention would show privity on the part of non-party Broadcom. For its
`
`part, Broadcom asserts that “Ericsson chose, for its own strategic reasons,
`
`not to sue [Broadcom] in this case.” Opp. 1. The evidence also indicates
`
`that Ericsson partially opposed another manufacturer’s motion to intervene.
`
`See Ex. 2006, 1. As Broadcom points out, participation in joint defense
`
`groups, even if such a group exists, also fails to show privity. See Opp. 5–6,
`
`n. 4; TPG 48,760 (“Joint Defense Group,” by itself, insufficient to show
`
`privity).
`
`Ericsson also asserts that filing a request for IPR (inter partes review)
`
`and the other noted litigation activity, Ex. 2009, constitutes evidence of
`
`“Broadcom filing litigation on behalf of its customers pursuant to its
`
`indemnity obligation.” See Mot. 1; Ex. 2001 (discovery request 7A, IPR
`
`filings). Ericsson’s allegation amounts to conjecture because Ericsson does
`
`
`
`12
`
`

`

`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`not show how IPR filings and other filings were pursuant to indemnity
`
`
`
`agreements, and even if they were, the IPR filings fail to show control over
`
`the Texas Litigation. The evidence does not amount to more than
`
`speculation that any of Broadcom’s activity constitutes evidence of collusion
`
`with the D-Link defendants in the Texas Litigation in a manner that would
`
`bind Broadcom to the outcome thereof.
`
`Ericsson also asserts that Broadcom’s reliance, in its IPR filings, on “a
`
`majority of the same references that the defendants relied upon for their
`
`invalidity claims in the D-Link lawsuit” shows “coordination [that] raises
`
`serious questions about wither Broadcom is in privity with the defendants.”
`
`Mot. 3. Ericsson also asserts that the IPR filings rely heavily on Ericsson’s
`
`expert report from the Texas Litigation. Id. Again, these allegations of
`
`“serious questions” amount to just that, questions or speculation about
`
`collusion or control. Filing IPRs does not constitute evidence that shows
`
`control over prior litigation. Broadcom, as a manufacturer of accused
`
`products, had an interest in the trial; however, using some of the same trial
`
`evidence, including known prior art, in the IPR proceedings, and using an
`
`expert report, does not constitute evidence beyond mere speculation that
`
`Broadcom controlled, or should be bound by the outcome of, the Texas
`
`Litigation.
`
`Ericsson’s assertion that D-Link Defendant Acer sought “to discuss
`
`comments from Acer’s vendors,” including Broadcom, also fails to show
`
`control. See Mot. 2 (citing Ex. 2007). Even if the record shows that Acer
`
`sought to discuss the accused products with Broadcom, the manufacturer of
`
`the products, this implies control by Acer, not Broadcom. See Ex. 2007. As
`
`Broadcom also points out, providing technical information to customers
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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`does not establish control over the trial. Opp. 5.
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`
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`Ericsson also asserts that “Acer admitted” that some Texas Litigation
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`discovery that Acer produced was “privileged” and shows that “a privilege
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`exists that protects communications between Acer and Broadcom.” Mot. 2
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`(discussing Ex. 2008). The relevance of this assertion is not clear. The
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`emails show that Acer’s counsel relies on the “Protective Order[, which]
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`mandates that designated information may only be used for purposes of
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`litigation between the parties,” and that “fact discovery and trial in the
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`Ericsson v. D-Link case concluded long ago.” Ex. 2008 (email dated Dec. 4,
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`2013 11:44AM; accord email Dec. 5, 2013 1:46PM and other emails
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`attached). Acer’s counsel also stated that “as far as we understand it, the
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`IPR is a proceeding initiated by Broadcom to which our clients are not
`
`parties” and “[w]e do not believe our clients are under any obligation to
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`respond to your request.” Id. (email dated Nov. 12, 2013 4:55 PM). This
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`email chain shows that Acer’s counsel sought to abide by the trial court’s
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`protective order, and does not imply any control by Broadcom over Acer’s
`
`actions in the Texas Litigation.
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`Ericsson’s discovery request for correspondence between Broadcom
`
`and the D-Link Defendants regarding claim construction and invalidity
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`positions “including, but not limited to, the ‘568 Patent, the ‘625 Patent, or
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`the ‘215 Patent,” Ex. 2001 (requests 7C, 7D), also amounts to a speculative
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`request. Ericsson does not point the Board to evidence that documents about
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`some of these positions exist or that communication about them occurred.
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`Moreover, the request is overly broad because it is not limited to patents at
`
`issue here. Ericsson fails to explain how discovering information about
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`other patents bears on control over the Texas Litigation.
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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
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`
`
`
`The request for “all executed contracts or agreements between
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`Broadcom and any of the D-Link Defendants relating to Wi-Fi compliant
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`products,” Ex. 2001 (request 1), seeks discovery that broadly embraces
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`Broadcom’s commercial activity including, for example, contracts regarding
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`the sale of such products. Ericsson fails to explain how such broad
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`information “relating” to selling accused products shows that Broadcom was
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`in privy with the D-Link Defendants. The breadth and cost of searching for
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`all potential agreements, which may include sales or other agreements,
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`weighs against Ericsson’s request.
`
`The evidence and arguments fail to show that the sought-after
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`discovery would have more than a mere possibility of producing useful
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`privity information, i.e., that Broadcom controlled or could have controlled
`
`the Texas Litigation. This Garmin factor weighs heavily against Ericsson.
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`The privity precedent outlined supra shows that determining whether privity
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`exists, especially without some evidence of actual control of a trial, typically
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`spirals into what amounts to a separate trial that involves a myriad of
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`considerations. This impacts the PTAB’s mandate to expedite the
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`proceedings and provide limited discovery in the interests of justice. In the
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`attached order denying Ericsson’s request, the court in the Texas Litigation
`
`noted that “[a]ccording to Ericsson, the Indemnity documents show
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`Broadcom is in privity with Dell and Toshiba, or at least show additional
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`discovery is warranted on the issue.” Ex. 2016, 2 (emphasis added). The
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`AIA discovery procedures do not contemplate allowing discovery on the
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`basis that it may show that “additional discovery is warranted.”
`
`The Board agrees with Ericsson that the requests are simple to
`
`understand, and that this Garmin factor weighs in Ericsson’s favor. See Mot.
`
`
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`15
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`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`6–7, n. 5. Nevertheless, that and other Garmin factors, including the ability
`
`
`
`to generate equivalent information, and seeking litigation positions by other
`
`means, do not outweigh the Garmin factor related to discovering useful
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`information discussed above.
`
`Other than the indemnity agreements, certain email correspondence,
`
`certain litigation activity, and other tangential items, Ericsson has not
`
`provided evidence to show that there is more than a mere possibility that the
`
`sought-after discovery even exists. Ericsson has not shown that the sought-
`
`after discovery has more than a mere possibility of producing useful
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`evidence on the crucial privity factor––control of the Texas Litigation by
`
`Broadcom in a sufficient manner to bind Broadcom through principles of res
`
`judicata or estoppel. Notwithstanding that Ericsson argues that no other way
`
`exists to obtain the discovery because of the Protective Order, see Mot. 7-8
`
`(citing Exs. 2011–2014), the Board cannot determine on this record, with
`
`more than conjecture, whether Ericsson otherwise would be able to obtain
`
`much of the sought-after discovery, because Ericsson has not shown beyond
`
`mere speculation that it exists. For example, Ericsson has not shown that
`
`communication about any defense agreements, duty to defend agreements,
`
`agreements to intervene, invalidity positions, and claim interpretation, exist.
`
`After weighing the factors surrounding the issue of privity as
`
`advanced by Ericsson, including the redacted information and arguments
`
`presented by Ericsson and Broadcom that remain under seal, the Board finds
`
`that Ericsson has not met its burden of demonstrating that additional
`
`discovery is in the interests of justice.
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`In consideration of the foregoing, it is hereby
`
`ORDERED that Ericsson’s motion for additional discovery is denied.
`
`
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`16
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`
`
`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`
`
`
`
`
`Petitioner:
`
`Dominic Massa
`Michael Diener
`michael.diener@wilmerhale.com
`Dominic.massa@wilmerhale.com
`Michael.diener@wilmerhale.com
`
`Patent Owner:
`
`Peter J. Ayers
`J. Christopher Lynch
`Lee & Hayes PLLC
`Peter@leehayes.com
`chris@leehayes.com
`
`
`
`
`
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`17
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`