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