Paper 15
`Date: July 24, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ARRIS GROUP, INC.
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2014-00746
`Patent 5,563,883
`____________
`
`
`
`
`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE,
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`Date: July 24, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ARRIS GROUP, INC.
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2014-00746
`Patent 5,563,883
`____________
`
`
`
`
`Before KRISTEN L. DROESCH, KALYAN K. DESHPANDE,
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`
`
`
`IPR2014-00746
`Patent 5,563,883
`
`
`
`
`
`INTRODUCTION
`
`
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`
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`Pursuant to authorization from the panel, Patent Owner filed a Motion for
`
`Discovery from Petitioner. Paper 10 (“Motion”). In its Motion, Patent Owner
`
`seeks production of the indemnification agreement between Petitioner and
`
`Comcast. Id. at 4. Petitioner opposes the Motion arguing that the agreement will
`
`not uncover something useful because Patent Owner failed to explain how the
`
`agreement can establish that Petitioner was in privity with Comcast. Paper 11
`
`(“Opp.”) at 1-2. Patent Owner seeks to prove that the petition is time-barred under
`
`35 U.S.C. § 315(b) by showing privity between Petitioner and Comcast during the
`
`relevant time period. See Paper 14 at 3 (“Reply”). Because Patent Owner has
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`shown factual support for its very limited discovery request, we hereby grant the
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`Motion.
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`WHETHER SOMETHING USEFUL WILL BE FOUND
`
`
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`The first and oft-disputed factor in determining whether additional discovery
`
`is necessary 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 Int’l, Inc. et al. v. Cuozzo Speed Techs LLC, Case IPR2012-
`
`00001, Paper 20, slip op. at 2-3 (PTAB Feb. 14, 2014), “Order—Authorizing
`
`Motion for Additional Discovery” (listing factors to determine whether a discovery
`
`request is necessary in the interests of justice) (“the Garmin factors”). Under this
`
`first factor, a party should already be in possession of evidence tending to show
`
`beyond speculation that in fact something useful will be uncovered. Id. The
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`discovery-seeking party only needs to set forth a threshold amount of evidence
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`tending to show that the discovery it seeks factually supports its contention. See
`
`2
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`IPR2014-00746
`Patent 5,563,883
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`
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`Garmin, IPR2012-00001, Paper 26, slip op. at 8-9, “Decision—On Motion for
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`Additional Discovery” (finding that, with respect to Cuozzo’s contention of
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`commercial success, Cuozzo failed to present a threshold amount of evidence
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`tending to show that the requested discovery of sales and pricing information
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`involved units with a nexus to the claimed features). Something “useful” is
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`something favorable in substantive value to a contention of the party moving for
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`discovery. Id. at 7-8. We have not required that a party seeking additional
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`discovery prove its contention as a prerequisite for obtaining the additional
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`discovery. Furthermore, we weigh other considerations in addition to the Garmin
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`factors, such as whether the requested additional discovery is very limited and
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`sought early in the proceeding.
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`
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`At issue is the dispute regarding whether production of an indemnification
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`agreement in this proceeding is in the interests of justice. Patent Owner has made
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`a very limited request concerning the agreement between Petitioner and Comcast, a
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`non-party to this proceeding. The existence of this agreement is not disputed.
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`Opp. n.1. The question for us to answer is whether Patent Owner has brought forth
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`a threshold amount of evidence tending to show that the indemnification agreement
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`supports the contention that Petitioner controlled or could have exercised control in
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`the prior litigation where Comcast was a defendant.1 Although Petitioner does not
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`dispute that the agreement exists or that indemnification was requested, Petitioner
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`
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`1 Patent Owner addressed all the remaining Garmin factors in its Motion. Motion
`6-8. We do not address those factors in this decision as Patent Owner has made a
`sufficient showing and Petitioner has not contested them.
`3
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`IPR2014-00746
`Patent 5,563,883
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`urges that we answer the question in the negative because the agreement alone
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`cannot give rise to privity. Motion 2-7.
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`We are not persuaded that in order for Patent Owner to show it is entitled to
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`the indemnification agreement, it must first prove, at this time, that Petitioner
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`exercised control over Comcast sufficient for it to be deemed in privity with
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`Comcast. Patent Owner has provided evidence showing: (1) the agreement
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`exists;2 (2) Comcast made indemnification claims against Petitioner;3 (3) Petitioner
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`had contractual rights with Comcast regarding exercising “sole control” of the
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`litigation;4 and (4) Petitioner resolved the indemnification claims with Comcast.5
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`This evidence constitutes threshold evidence sufficient to deem the very limited
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`request of the indemnification agreement to be necessary in the interests of justice.
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`Also of importance is the consideration that the request was made a mere one
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`month after the Petition received a notice of filing accorded. Based on the
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`foregoing, we determine that, based on the specific facts presented in this case,
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`Patent Owner’s request for the indemnification agreement is in the interests of
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`justice.
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`This decision does not address the ultimate issue of whether Petitioner and
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`Comcast were privies or that the evidence sought by Patent Owner will eventually
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`show privity. We have considered Petitioner’s argument that it is improper to infer
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`privity in a situation where Petitioner settled a contractual dispute with Comcast.
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`4
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`
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`2 Ex. 2011 at p. 15 l. 14 - 16, l. 3.
`3 Ex. 2006 at 125.
`4 Ex. 2010 at 6.
`5 Supra n.3.
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`IPR2014-00746
`Patent 5,563,883
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`Opp. 7-8. The parties are free to argue the various inferences from the facts
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`presented in the light most favorable to their position. At this juncture, we do not
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`weigh the facts to determine the likelihood that Petitioner and Comcast were
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`privies in the relevant time period. Doing otherwise puts Patent Owner in a
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`precarious situation of having the burden to prove its contention in order to seek
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`the evidence that supports that contention.
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`ORDER
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`Accordingly, it is hereby:
`
`ORDERED that Petitioner shall produce:
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`Agreement(s) between Arris and Comcast under which
`Comcast requested indemnification for the claims brought
`against Comcast in the Texas Litigation that reference (or are
`contingent on) Arris’s ability to control the litigation
`
`
`FURTHER ORDERED that the Petitioner is authorized to file a motion for
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`protective order pursuant to the guidance provided in our Order dated July 2, 2014,
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`Paper 9, in this proceeding.
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`5
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`6
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`IPR2014-00746
`Patent 5,563,883
`
`
`PETITIONER:
`
`Andrew R. Sommer
`Jonathan E. Retsky
`WINSTON & STRAWN LLP
`asommer@winston.com
`jretsky@winston.com
`
`
`
`PATENT OWNER:
`Lewis Popovski
`Jeffrey Gingsberg
`David Kaplan
`David Cooperberg
`KENYON & KENYON LLP
`jginsberg@kenyon.com
`lpopovski@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
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