Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 14
` Filed: July 16, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
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`CASE IPR2014-00746
`Patent 5,563,883
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION FOR
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`DISCOVERY FROM PETITIONER
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`U.S. Patent No. 5,563,883
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`Paper No. 14
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
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`CASE IPR2014-00746
`Patent 5,563,883
`____________________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION FOR
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`DISCOVERY FROM PETITIONER
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`I.
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`Introduction
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`Paper No. 14
` Filed: July 16, 2014
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`Petitioner does not contest that four of the five factors outlined in Garmin Int’l,
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`Inc. et al. v. Cuozzo Speed Technologies LLC, 2012-00001, Paper 26 (PTAB Mar. 5,
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`2013) for determining whether additional discovery is “necessary in the interest of
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`justice” weigh in favor of granting Patent Owner’s motion for targeted discovery. (See
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`Paper No. 11 (“Opposition”)). As to the remaining factor (more than a possibility and
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`mere allegation), Petitioner admits that the documents that Patent Owner seeks exist.
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`Petitioner nevertheless asserts that the discovery sought will not be “useful” because it
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`will not be determinative of the issue in question—whether the petition is time-barred
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`under 35 U.S.C. § 315(b). In doing so, Petitioner misapplies the standards for
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`obtaining additional discovery and for evaluating privity.
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`II. The Agreements that Patent Owner Seeks Are “Useful” Under the
`Guidelines Set Forth in the Trial Practice Guide
`In Garmin Int’l, 2012-00001, Paper 26, the Board described the first factor in
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`determining whether discovery is “necessary in the interest of justice” as follows:
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`More Than A Possibility And Mere Allegation – The mere possibility of
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`finding something useful, and mere allegation that something useful will
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`be found, are insufficient to demonstrate that the requested discovery is
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`necessary in the interest of justice. The party requesting discovery
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`should already be in possession of evidence tending to show beyond
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`speculation that in fact something useful will be uncovered.
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`1
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Id. at 6. The “essence” of this factor is “a threshold amount of evidence or reasoning”
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`Paper No. 14
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`tending to show that something “useful” will be uncovered. Id. at 7. “In the context
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`of Factor (1), ‘useful’ means favorable in substantive value to a contention of the party
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`moving for discovery.” Id. Nothing in Garmin requires that the discovery “prove” an
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`issue to be deemed “useful,” and Petitioner provides no legal support for reading such
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`a requirement into the first Garmin factor. (See Opposition at 1-2.)
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`The PTO’s Trial Practice Guide identifies a number of considerations for
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`determining whether a non-party in a prior litigation can be deemed a “privy.” See 77
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`Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). A “common
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`consideration is whether the non-party exercised or could have exercised control over
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`a party’s participation in a proceeding.”1 Id. As set forth in Patent Owner’s motion
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`for discovery, the publicly available Corporate Terms and Conditions of Sale from
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`Petitioner’s website require that Petitioner have “sole control of the defense and all
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`negotiations for its settlement or compromise” as a condition for indemnification. See
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`Paper No. 10 (“Motion”) at 5-6. If Petitioner’s agreements with Comcast contain this
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`1
`Contrary to Petitioner’s assertion (see Opposition, n. 4), nothing in the Trial
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`Practice Guide requires a party to have control over an entire litigation. That other
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`products were accused in the prior litigation does not negate the fact that Petitioner
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`had the contractual right, and at the very least the opportunity, to control Comcast’s
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`participation in the litigation as it related to Petitioner’s products.
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`2
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`U.S. Patent No. 5,563,883
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`provision,2 they fall squarely within the “common consideration” of whether
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`Paper No. 14
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`Petitioner “could have exercised control” over Comcast’s participation in the earlier
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`litigation, and would be favorable in substantive value to Patent Owner’s contention
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`regarding the Petition being time-barred under 35 U.S.C. §135(b).3
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` Petitioner’s argument that the discovery sought must “prove” an issue to be
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`considered “useful” has already been rejected by the Board. See Atlanta Gas Light
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`2
`Petitioner concedes that indemnification agreements with Comcast exist and
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`does not dispute that such agreements include the provision regarding “sole control”
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`in the publicly available agreement from Petitioners website. See Opposition, n. 1.
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`3
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`Petitioner attempts to equate the issue of privity with claim preclusion when it
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`argues that the Second Texas Action could not have been brought if Petitioner were a
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`privy to a party in the first litigation. See Opposition, n. 2. However, this assertion
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`assumes that the tests for privity and claim preclusion are one and the same, which, in
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`addition to being legally incorrect, is directed to the wrong forum. While the Board
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`need not address that issue in deciding this motion, Patent Owner notes that the
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`discrete issue of privity is part of only one element (whether the later action involves
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`the same parties) of the test for determining whether the factors for claim preclusion
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`(and any of its applicable exceptions) are satisfied. Nilsen v. City of Moss Point, 701
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`F.2d 556, 559 (5th Cir. 1983) (en banc) (listing the four factors of a claim preclusion
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`analysis).
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`3
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, Paper 40 (PTAB Apr.
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`Paper No. 14
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`23, 2014). In Atlanta Gas Light, the patent owner sought discovery from petitioner
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`relating to an indemnification dispute between the petitioner and a third party. In
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`granting the requested discovery, the Board rejected petitioner’s argument that the
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`discovery would not “show that one party in fact controlled the other’s role in the
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`Lawsuit” and found that the requested discovery would provide information relevant
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`to the “highly fact-dependent question” of evaluating whether a party is a real party-
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`in-interest. See id. at 7. As in Atlanta Gas Light, the Board here should reject
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`Petitioner’s unduly narrow view on what constitutes “useful” discovery.
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`III. Petitioner’s Reliance on Broadcom Is Misplaced
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`Petitioner cites the Board’s decision in Broadcom Corp. v. Telefonaktiebolaget
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`LM Ericsson (PUBL), IPR2013-00601, Paper 23 (Jan. 24, 2014) as a reason to deny
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`the request for additional discovery, but fails to recognize the key factual distinctions
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`between Broadcom and the targeted discovery sought by Patent Owner in this
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`proceeding. In Broadcom, the patent owner (Ericsson) sought extensive discovery
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`including seven requests for production broadly written4 to encompass agreements,
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`invoices, payments, and communications between Broadcom and other litigation
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`4
`For example, Ericsson’s requests sought a large volume of discovery including
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`“all agreements,” “all invoices,” “records of any payments made by Broadcom,” and
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`“all emails and written correspondence.” See id. at 3-4.
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`4
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`U.S. Patent No. 5,563,883
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`defendants or their counsel. See id. at 3-4. In declining to grant Ericsson the
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`Paper No. 14
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`discovery it sought, the Board noted that Ericsson had “not provided evidence to show
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`that there is more than a mere possibility that the sought-after discovery even exists”
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`and specifically, that Ericsson did not show “that communication about any defense
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`agreements, duty to defend agreements, agreements to intervene, invalidity positions,
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`and claim interpretation, exist.” Id. at 16.
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`This is not the case here, as Patent Owner seeks to obtain discovery responsive
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`to only a single narrow request, and Petitioner concedes that agreements between
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`Petitioner and Comcast that include indemnification provisions exist. Moreover,
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`unlike the Patent Owner in this proceeding, Ericsson had sought to establish privity
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`based on the mere existence of indemnification obligations and payments but had not
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`made any threshold showing regarding the issue of “control” as it related to such
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`obligations. Id. at 7 (“To be bound, in normal situations, Broadcom must have had
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`control over the Texas Litigation.”). Here, the Patent Owner has provided the
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`necessary threshold evidence of control in the form of Arris’s own Corporate Terms
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`and Conditions of Sale, which specifically require such “control.” See Motion at 3-4.
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`IV. Conclusion
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`For the above reasons, and those given in the Motion, Patent Owner
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`respectfully requests that the Board allow the discovery proposed in Exhibit 2001.
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Paper No. 14
` Filed: July 16, 2014
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`Respectfully submitted,
`KENYON & KENYON LLP
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`__/Lewis V. Popovski/__________
`Lewis V. Popovski
`Registration No. 37,423
`Attorney for Patent Owner
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`Date: July 16, 2014
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`Case IPR2014-00746
`U.S. Patent No. 5,563,883
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`Certificate of Service
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`Paper No. 14
` Filed: July 16, 2014
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR DISCOVERY FROM PETITIONER was served via e-mail on
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`July 16, 2014, in its entirety on the following:
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`LEAD COUNSEL
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`Andrew R. Sommer
`asommer@winston.com
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
`T: (202) 282-5000; F: (202) 282-5100
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`BACKUP COUNSEL
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`Jonathan E. Retsky
`jretsky@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`T: (312) 558-3791; F: (312) 558-5700
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`KENYON & KENYON LLP
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`__/David J. Kaplan/__________
`David J. Kaplan
`Registration No. 57,117
`Attorney for Patent Owner
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`Date: July 16, 2014
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`7
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