`571-272-7822
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`Paper 9
`Date: April 15, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`CISCO SYSTEMS, INC.
`Petitioner,
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner.
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`_______________
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`Case IPR2014-00454
`Patent 5,563,883
`_______________
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`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE, and
`MIRIAM L. QUINN, Administrative Patent Judges.
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`QUINN, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`Cases IPR2014-00454
`Patent 5,563,883
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`On April 10, 2014, the Board conducted a conference call at the request of
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`Patent Owner, C-Cation Technologies, which sought authorization to file a motion
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`for additional discovery. Judges Quinn, Deshpande, and Droesch, as well as
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`counsel for Petitioner, Cisco Systems, Inc., (“Cisco”) and counsel for Patent
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`Owner, were present. During the call, counsel for Patent Owner explained that it
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`seeks to prove that Cisco was in privity with a defendant in a previous lawsuit such
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`that additional discovery would be proper based on the following arguments:
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`1) Patent Owner filed a lawsuit in January 2011 against at least one of
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`Petitioner’s customers (“the 2011 litigation”), but Petitioner, Cisco, was
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`not a party to the 2011 litigation.
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`2) Cisco was subpoenaed and deposed in the 2011 litigation.
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`3) Terms and conditions obtained from Cisco’s website apparently specify
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`that it undertakes an indemnification obligation subject to certain
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`conditions and that such obligation includes an agreement to defend a
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`lawsuit.
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`4) The terms and conditions also specify that Cisco will exercise “full and
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`exclusive control and settlement” of the lawsuit.
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`5) Defendants in the 2011 litigation sought indemnification from Cisco and,
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`at some point after the filing of that lawsuit, the conditions for
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`indemnification must have been satisfied.
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`6) Cisco’s 10-Q, filed with SEC and dated 2013, reveals that Cisco
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`indemnified a defendant in the 2011 litigation.
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`7) Patent Owner believes that the indemnification obligation of defending
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`the lawsuit must be there.
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`8) Therefore, Patent Owner should be allowed to seek discovery of Cisco’s
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`indemnification in the 2011 litigation.
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`2
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`Cases IPR2014-00454
`Patent 5,563,883
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`Patent Owner served document requests and interrogatories seeking
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`evidence of indemnification. Petitioner objected to Patent Owner’s discovery
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`requests. During the call, Petitioner provided the following arguments supporting
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`its objections:
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`1) Patent Owner’s discovery requests broadly seek evidence of
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`indemnification, and are not narrowly tailored to whether Cisco
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`controlled the 2011 litigation.
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`2) Evidence that Cisco may have issued indemnification payments in the
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`2011 litigation is not evidence of control of that litigation, as required in
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`these proceedings.
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`3) The subpoena in the 2011 litigation issued in 2013, and knowledge by
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`Cisco of the ongoing lawsuit is not evidence of control.
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`4) The 2011 litigation was dismissed with prejudice after settlement, and,
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`therefore, the fact that Patent Owner sued Cisco in a subsequent lawsuit
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`contradicts Patent Owner’s contention that Cisco controlled the 2011
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`litigation.
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`5) The terms and conditions provided on Cisco’s website may not apply to
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`the defendants involved in the 2011 litigation.
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`6) Therefore, because Patent Owner’s evidence does not show more than a
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`possibility that useful information will be discovered, the first Garmin1
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`factor is not met and additional discovery is improper.
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`The Board inquired whether the parties would be amenable to resolving an
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`agreeable scope of discovery on the “control” issues presented during the call, such
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`that some agreement may be reached. The parties indicated that they could work
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`1 Referring to Garmin v. Cuozzo, IPR2012-00001, Paper 26.
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`Cases IPR2014-00454
`Patent 5,563,883
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`to narrow the scope of discovery because Petitioner had not been given a
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`meaningful opportunity to meet and confer.
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`Furthermore, the Board denied Patent Owner’s request for authorization to
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`file a motion for additional discovery under 37 C.F.R. 42.51(b)(2). The following
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`guidance was provided. First, the parties were urged to conduct a meaningful
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`meeting and confer on the scope of the discovery disputes discussed during the call
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`and all discovery disputes going forward. Second, the Board stated that the
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`evidence presented by Patent Owner during the call was insufficient to show more
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`than a possibility of finding something useful concerning evidence of privity
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`stemming from Cisco’s alleged control of the 2011 litigation. The parties were
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`directed to the decision in Broadcom Corp. v. Telefonaktiebolaget LM Ericsson,
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`IPR2013-00601, Paper 23, at 7-11, which discusses the issue of control for
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`purposes of proving privity in the context of indemnification agreements. The
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`parties are also directed to the decision in Synopsys, Inc. v. Mentor Graphics
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`Corp., IPR2012-00042, paper 60, at 12-14 (discussing giving consideration to the
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`nature of the relationship between the parties at the time that the statutorily-
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`referenced complaint was served). Third, the Board gave Patent Owner the
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`opportunity to renew its request if it acquires the pertinent evidence tending to
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`show that Cisco controlled the 2011 litigation during the relevant time period.
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`It is
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`ORDERED that Patent Owner’s request for authorization to file a motion for
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`additional discovery under 37 C.F.R. 42.51(b)(2) is denied; and
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`FURTHER ORDERED that the parties must meet and confer meaningfully
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`before approaching the Board with disagreements over discovery.
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`4
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`Cases IPR2014-00454
`Patent 5,563,883
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`PETITIONER:
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`Mitchell G. Stockwell
`MStockwell@kilpatricktownsend.com
`Michael S. Pavento
`MPavento@kilpatricktownsend.com
`Vaibhav P. Kadaba
`WKadaba@kilpatricktownsend.com
`Russell A. Korn
`RKorn@kilpatricktownsend.com
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`PATENT OWNER:
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`Lewis V. Popovski
`lpopovski@kenyon.com
`Jeffrey S. Ginsberg
`jginsberg@kenyon.com
`David J. Kaplan
`djkaplan@kenyon.com
`David J. Cooperberg
`dcooperberg@kenyon.com
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`5
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