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
`>e\Vffbasf 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.
`
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`

`
`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`Introduction
`Patent Owner &p>e\Vffbaq’ filed a redacted motion for additional
`discovery in the instant proceedings (Paper 13( pFbg*q be pFbg\baq), and
`Petitioner &p;ebTWVb‘q’ filed a redacted opposition (Paper 16 pHcc*q be
`pHccbf\g\baq).2 In its Motion, Ericsson requests discovery regarding
`indemnity agreements, defense agreements, payments, and email, or other
`communications, between Broadcom and defendants &p=-E\a^ =XYXaWTagfq’
`in related litigation, Ericsson Inc., et al. v. D-LINK Corp., et al., Civil
`Action No. 6:10-CV-03/ &E>=+D@?’ &pLXkTf E\g\ZTg\baq’. See Mot.; Ex.
`
`.,,- &pITgXag HjaXesf JXdhXfgf Ybe IebWhVg\ba(q [XeX\aTYgXe pJXdhXfgq’*
`In the Texas Litigation, a jury found >e\Vffbasf challenged patents in
`the instant proceedings infringed by the D-Link Defendants due partly to
`g[X\e hfX bY ;ebTWVb‘sf O\-Fi compliant products. See Pet. 1o2. 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 pBroadcom is in privity with at least one
`D-Link Defendantq in the Texas Litigation. Mot. 4.
`?be g[X eXTfbaf fgTgXW UX_bj( >e\Vffbasf ‘bg\ba \f denied.
`35 U.S.C. § 315(b)
`Under /1 M*K*<* n /-1&U’ ( pQTRn 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
`
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`

`
`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.q
`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-E\a^ =XYXaWTagfs cebWhVgf TVVhfXW bY
`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
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`

`
`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
`E\g\ZTg\ba( \aV_hW\aZ( Uhg abg _\‘\gXW gb( g[X r124
`ITgXag( g[X r2.1 ITgXag( be g[X r.-1 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] gb( g[X r124 ITgXag( g[X
`r2.1 ITgXag( be g[X r.-1 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, ;ebTWVb‘sf hfX bY >e\Vfsbasf XkcXeg eXcbeg \a g[X Y\_\aZ bY g[X
`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
`
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`

`
`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 assergf g[Tg p;ebTWVb‘ \f abg \a ce\i\gl j\g[
`the Texas Defendants, and no amount of discovery in this proceeding or in
`
`g[X LXkTf E\g\ZTg\ba j\__ cebiX bg[Xej\fX*q Hcc* .*
`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 p‘hfg f[bj g[Tg such additional discovery is in the
`interests of justice*q /3 <*?*J* n 0.*1-&U’&.’&\’; accord 35 U.S.C.
`§ 316(a)(5) &pfhV[ W\fVbiXel f[T__ UX _\‘\gXW gb * * * j[Tg \f bg[Xej\fX
`
`aXVXffTel \a g[X \agXeXfg bY ]hfg\VXq’*
`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
`=XV\f\ba( ;ebTWVb‘sf fXT_XW bccbf\g\ba TaW Xk[\U\gf TeX abg TWWeXffXW
`Yheg[Xe( UXVThfX g[Xl Wb abg \‘cTVg >e\Vffbasf \a\g\T_ UheWXa bY f[bj\aZ g[Tg
`the requested discovery is necessary in the interests bY ]hfg\VX* >e\Vffbasf
`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
`
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`

`
`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`should be confined gb pcTeg\Vh_Te _\‘\gXW f\ghTg\baf( fhV[ Tf ‘\abe W\fVbiXel
`that PTO finds to be routinely useful, or to discovery that is justified by the
`fcXV\T_ V\eVh‘fgTaVXf bY g[X VTfX*q -10 <baZ* JXV* K5544-89 (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 pmere possibilityq
`or p‘XeX allegation that something useful [to the proceeding] will be YbhaW*q
`Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC,
`IPR2012-00001, Paper 20, 2o3, pHeWXeooAuthorizing Motion for Additional
`=\fVbiXelq &listing important factors to determine whether a discovery
`request meets the applicable standard’ &[XeX\aTYgXe g[X p@Te‘\a YTVgbefq);
`accord Apple v. Achates Reference Publishing, Inc., IPR2013-00080, Paper
`18, p=XV\f\baooAV[TgXf Fbg\ba Ybe 9WW\g\baT_ =\fVbiXelq &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-cTegl \f T peXT_ cTegl-in-\agXeXfgq be pce\ilq Ybe
`purposes of an inter partes eXi\Xj cebVXXW\aZ \f T p[\Z[_l YTVg-dependent
`dhXfg\baq g[Tg gT^Xf \agb TVVbhag [bj Vbhegf ZXaXeT__l [TiX hfXW g[X gXems
`
`gb pWXfVe\UX eX_Tg\baf[\cf TaW Vbaf\WXeTg\baf fhYY\V\Xag gb ]hfg\Yl Tcc_l\aZ
`VbaiXag\baT_ ce\aV\c_Xf bY XfgbccX_ TaW ceXV_hf\ba*q Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 04(315 &9hZ* -0( .,-.’ &pLe\T_
`
`6
`
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`

`
`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`IeTVg\VX @h\WXq be pLI@q’* O[Xg[Xr parties are in privity, for instance,
`depends on whether the relationship between a party and its alleged privy is
`pfhYY\V\Xag_l V_bfX fhV[ g[Tg Ubg[ should be bound by the trial outcome and
`eX_TgXW XfgbccX_f*q Id. Depending on the circumstances, a number of factors
`may be relevant to the analysis, including whether the non-cTegl pXkXeV\fXW
`be Vbh_W [TiX XkXeV\fXW Vbageb_ biXe T cTeglsf cTeg\V\cTg\ba \a T cebVXXW\aZ,q
`and whether the non-party is responsible for funding and directing the
`proceeding. Id. at 48,759-60.
`>e\Vffbasf Xi\WXaVX WbXf abg Tmount gb ‘beX g[Ta T p‘XeX T__XZTg\ba
`g[Tg fb‘Xg[\aZ hfXYh_ j\__ UX YbhaWq 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
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`

`
`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)
`&pIf Emerson does control the Maryland suit, the outcome will be binding
`on, or inure to the benefit of, Emerson under principles of res judicata.q); see
`also United States v. Webber, 396 F.2d 381, 387 (3d Cir.1968) (finding that
`
`TccX__Tagf jXeX pce\i\Xfq UXVThfX bY g[X\e pVbageb_ biXe TaW \agXeXfg \a g[X
`earlier lig\ZTg\ba*q’
`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
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`

`
`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
`<\e* -530’( pthe crucial distinction . . . is the extent of participation, for
`ce\i\gl \a g[X _Tj bY ]hW\V\T_ Y\aT_\gl hfhT__l VbaabgXf eXceXfXagTg\ba*q 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 TRWfs 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 >e\Vffbasf TffXeg\ba g[Tg pQgR[X jX\Z[g bY Thg[be\gl
`strongly supports that an indemnity agreement . . . establish[es] privity,q
`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 T pcrucialq 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: pj[XeX Ta \aWX‘a\gbe is notified
`and can take part in o indeed may control o the litigation, he is precluded
`Yeb‘ VbagXfg\aZ g[X \aWX‘a\gXXsf _\TU\_\gl \a g[X fhbsequent indemnity
`TVg\ba*q Mot. 5. Ericsson does not explain how this dicta in Jennings
`
`9
`
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`

`
`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, t[X Vbheg YbhaW g[Tg pXiXa \Y <Xage\k jTf
`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
`manaXe j[\V[ jTf Vbaf\fgXag j\g[ iTe\bhf gXe‘f bY g[X TZeXX‘Xag*q 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.
`pBecause of the contractual relationship between Centrix and Kerr, Centrixss
`extensive participation in the litigation and Centrix's knowledge of the
`injunction, the Court concludes that privity exists between Kerr and
`Cenge\k*q Id. at 399#
`Nevertheless, Ericsson seeks to discover indemnity agreements and
`
`TffXegf g[Tg VXegT\a K>< Y\_\aZf f[bj g[Tg p\g \f abg haVb‘‘ba Ybe
`;ebTWVb‘q gb \aWX‘a\Yl \gf Vhfgb‘Xef* Mot. 1 (citing Ex. 2005, 46).
`>e\Vffba T_fb TffXegf g[Tg p;ebTdcom does not deny the existence of such
`\aWX‘a\gl TZeXX‘Xagf*q Fbg* 3* 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
`Ba g[X beWXe( g[X Vbheg WXa\XW >e\Vffbasf ‘bg\ba gb eX_XTfX W\scovery 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
`ZeTag\aZ >e\Vffbasf ‘otion would allow Ericsson to employ the district
`10
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`

`
`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 pFbg\ba bY 9‘\V\ O\-Fi Chip Companies Broadcom
`<becbeTg\ba * * * Ybe EXTiX gb ?\_X 9‘\Vhf ;e\XYq \a the Court of Appeals for
`the Federal Circuit,q Ex. 2017, as further evidence of collusion, litigation
`activity, or control by Broadcom.
`The totality of this evidence fails to T‘bhag gb ‘beX g[Ta T p‘XeX
`cbff\U\_\glq 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
`pmere allegation that something useful will UX YbhaWq gb establish privity.
`See Ex. 2001 (discovery items 1o6, 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 abg\aZ g[Tg g[X pTjTeW ‘Tl T_fb
`provoke indemnity issuesq). 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 TRWooagreeing 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
`
`Vbhegsf UebTWXe peX_XiTaVlq fgTaWTeW TaW V\eVh‘iXag g[X ILHsf aTeebjXe
`standard. Id.
`
`11
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`

`
`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, ce\be gb g[X Vbhegsf Xagel bY ]hWZ‘Xag* GbaXg[X_Xff( \g Woes
`not show control of the Texas Litigation or otherwise show that Broadcom
`would be bound by that outcome.
`Ericsson also requests discovery of pX‘T\_f TaW je\ggXa
`correspondence,q Ex. 2001 (discovery requests 6, 7), between Broadcom and
`the D-E\a^ WXYXaWTagf eX_Tg\aZ gb pQ\RagXeiXag\ba Ul ;ebTWVb‘ \a g[X =-
`Link Litigation,q id. (request 7), relating to a duty to defend or indemnify,
`id. (request 6) TaW T_fb pTZeXements addressing cooperation on the defense
`of the D-Link Litigation,q 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 g[Tg p>e\Vffba V[bfX( Ybe \gf bja fgeTgXZ\V eXTfbaf(
`not to sue [Broadcom] \a g[\f VTfX*q Opp. 1. The evidence also indicates
`that Ericsson partiT__l bccbfXW Tabg[Xe ‘TahYTVgheXesf ‘bg\ba gb \agXeiXaX*
`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. 5o6,
`a* 07 LI@ 04(32, &pCb\ag =XYXafX @ebhc(q Ul 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
`p;ebTWVb‘ Y\_\aZ _\g\ZTg\ba ba UX[T_Y bY \gf Vhfgb‘Xef chefhTag gb its
`\aWX‘a\gl bU_\ZTg\ba*q See Mot. 1; Ex. 2001 (discovery request 7A, IPR
`filings). >e\Vffbasf T__XZTg\ba T‘bhagf gb Vba]XVgheX UXVThfX >e\Vffba WbXf
`
`12
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`

`
`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 Tal bY ;ebTWVb‘sf 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 ;ebTWVb‘sf eX_\TaVX( \a \gf BIJ Y\_\aZf( ba pT
`majority of the same references that the defendants relied upon for their
`invalidity claims in the D-E\a^ _Tjfh\gq f[bjf pVbbeW\aTg\ba Qghat] raises
`serious questions about wither Broadcom is in privity with the defendants.q
`Mot. 3. Ericsson also asserts that the IPR filings eX_l [XTi\_l ba >e\Vffbasf
`expert report from the Texas Litigation. Id. Again, these allegations of
`pfXe\bhf dhXfg\bafq 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.
`>e\Vffbasf assertion that D-Link Defendant 9VXe fbhZ[g pgb W\fVhff
`
`Vb‘‘Xagf Yeb‘ 9VXesf iXaWbef(q \aV_hW\aZ ;ebTWVb‘( T_fb YT\_f gb f[bj
`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.
`Ericsson also asserts g[Tg p9VXe TW‘\ggXWq g[Tg fb‘X Texas Litigation
`discovery that Acer produced jTf pprivilegedq and shows g[Tg pT privilege
`exists that protects communications between Acer and Broadcom.q Mot. 2
`(discussing Ex. 2008). The relevance of this assertion is not clear. The
`X‘T\_f f[bj g[Tg 9VXesf VbhafX_ eX_\Xf ba the pIrotective Order[, which]
`mandates that designated information may only be used for purposes of
`litigation between the partiXf(q TaW g[Tg pYTVg W\fVbiXel TaW ge\T_ \a g[X
`Ericsson v. D-Link casX VbaV_hWXW _baZ TZb*q Ex. 2008 (email dated Dec. 4,
`2013 11:44AM; accord email Dec. 5, 2013 1:46PM and other emails
`attached). 9VXesf VbhafX_ T_fb fgTgXW g[Tg pTf YTe Tf jX haWXefgTaW \g( g[X
`IPR is a proceeding initiated by Broadcom to which our clients are not
`
`cTeg\Xfq TaW pQjRX Wb abg UX_\XiX bhe V_\Xagf TeX haWXe Tal bU_\ZTg\ba gb
`eXfcbaW gb lbhe eXdhXfg*q Id. (email dated Nov. 12, 2013 4:55 PM). This
`
`X‘T\_ V[T\a f[bjf g[Tg 9VXesf VbhafX_ fbhZ[g gb TU\WX Ul g[X ge\T_ Vbhegsf
`protective order, and dbXf abg \‘c_l Tal Vbageb_ Ul ;ebTWVb‘ biXe 9VXesf
`actions in the Texas Litigation.
`>e\Vffbasf W\fVbiXel eXdhXfg Ybe correspondence between Broadcom
`and the D-Link Defendants regarding claim construction and invalidity
`positions pincluding, bhg abg _\‘\gXW gb( g[X r124 ITgXag( g[X r2.1 ITgXag( be
`g[X r.-1 Patent(q >k* .,,- (requests 7C, 7D), also amounts to a speculative
`request. Ericsson does not point the Board to evidence that documents about
`some of these positions exist or that communication about them occurred.
`Moreover, the request is overly broad because it is not limited to patents at
`issue here. Ericsson fails to explain how discovering information about
`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
`
`T[X eXdhXfg Ybe pTll executed contracts or agreements between
`Broadcom and any of the D-Link Defendants relating to Wi-Fi compliant
`products,q Ex. 2001 (request 1), seeks discovery that broadly embraces
`;ebTWVb‘sf commercial activity including, for example, contracts regarding
`the sale of such products. Ericsson fails to explain how such broad
`\aYbe‘Tg\ba peX_Tg\aZq gb fX__\aZ accused products shows that Broadcom was
`in privy with the D-Link Defendants. The breadth and cost of searching for
`all potential agreements, which may include sales or other agreements,
`
`jX\Z[f TZT\afg >e\Vffbasf eXdhXfg*
`The evidence and arguments fail to show that the sought-after
`discovery would have more than a mere possibility of producing useful
`privity information, i.e., that Broadcom controlled or could have controlled
`the Texas Litigation. This Garmin factor weighs heavily against Ericsson.
`The privity precedent outlined supra shows that determining whether privity
`exists, especially without some evidence of actual control of a trial, typically
`spirals into what amounts to a separate trial that involves a myriad of
`considerations. L[\f \‘cTVgf g[X IL9;sf ‘TaWTgX gb XkcXW\gX g[X
`proceedings and provide limited discovery in the interests of justice. In the
`TggTV[XW beWXe WXal\aZ >e\Vffbasf eXquest, the court in the Texas Litigation
`noted that p[a]ccording to Ericsson, the Indemnity documents show
`Broadcom is in privity with Dell and Toshiba, or at least show additional
`discovery is warranted on the issue.e Ex. 2016, 2 (emphasis added). The
`AIA discovery procedures do not contemplate allowing discovery on the
`basis that it may show that pTWW\g\baT_ discovery is warranted.q
`The Board agrees with Ericsson that the requests are simple to
`understand, and that this Garmin factor weighs in Ericssoasf YTibe* See Mot.
`
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`

`
`IPR2013-00601; IPR2013-00602; IPR2013-00636
`Patents 6,772,215 B1; 6,446,568 B1; 6,424,625 B1
`
`6o7, 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
`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
`evidence on the crucial privity factoroocontrol 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. 2011o2014), 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.
`In consideration of the foregoing, it is hereby
`ORDERED that >e\Vffbasf motion for additional discovery is denied.
`
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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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