By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00920
`U.S. Patent 6,771,970
`___________________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §§ 42.71(c)-(d) FOR
`RECONSIDERATION OF THE DECISION TO INSTITUTE
`
`
`
`
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`TABLE OF CONTENTS
`
`
`Introduction ..................................................................................................... 1
`I.
`Standard of Review for Rehearing ................................................................. 2
`II.
`III. Basis For Relief Requested ............................................................................. 3
`The Board’s Decision Misapprehended or Overlooked the Fact
`A.
`that the Issue of Privity Between Petitioner And Sprint, AT&T,
`and T-Mobile Need Not Be Assessed At The Time They Were
`Served With Complaints Alleging Infringement of the ’970
`Patent .................................................................................................... 3
`There is Substantial Evidence That Each of the Defendants Was
`a Privy of the Petitioner At the Time It Was Served With a
`Complaint Alleging Infringement of the ’970 Patent .......................... 7
`The Board’s Decision Misapprehended or Overlooked the
`Evidence Demonstrating that Petitioner Exercised Control Over
`Sprint, AT&T, and T-Mobile In the Respective District Court
`Proceedings Prior To June 9, 2014 .................................................... 10
`Petitioner and Sprint, AT&T, and T-Mobile Were All
`1.
`Represented By Counsel From Dentons Prior To June 9,
`2014 .......................................................................................... 10
`Petitioner Entered Into Indemnitor-Indemnitee
`Relationships With Sprint, AT&T, and T-Mobile And
`Accepted The Defense of The Respective District Court
`Proceedings Prior to June 9, 2014 ........................................... 12
`Petitioner and Each of Sprint, AT&T, and T-Mobile
`Have Been Operating Pursuant To A Joint
`Defense/Common Interest Agreement Since Prior to June
`9, 2014 ...................................................................................... 12
`The Board’s Decision Misapprehended or Overlooked the Fact
`that Preclusion Based on Privity Can Apply Even in the
`Absence of Control ............................................................................. 13
`IV. Conclusion .................................................................................................... 15
`
`B.
`
`C.
`
`D.
`
`2.
`
`3.
`
`i
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Asahi Glass Co., Ltd. v. Toledo Eng’g Co.,
`505 F. Supp. 2d 423 (N.D. Ohio 2007) .............................................................. 14
`
`Page(s)
`
`Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst.,
`163 Cal.App.4th 1506 (Cal. App. 2008) ....................................................... 13, 14
`
`Gose v. United States Postal Service,
`451 F.3d 831 (Fed. Cir. 2006) .............................................................................. 3
`
`STATUTES
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.71(c) ................................................................................................... 2
`
`37 C.F.R. § 42.101(b) ................................................................................................ 5
`
`77 Fed. Reg. 48756 .................................................................................................. 13
`
`
`
`ii
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`I.
`
`Introduction
`
`Patent Owner respectfully requests rehearing of the Board’s Decision of
`
`December 16, 2014 (Paper No. 11; “Decision”), to institute inter partes review of
`
`claims 1–17 and 19 of U.S. Pat. No. 6,771,970 (“the ’970 Patent”).
`
`First, the Decision misapprehended or overlooked the law of privity. The
`
`issue of privity between Petitioner, Location Labs, and each of Petitioner’s
`
`customers—Sprint, AT&T, and T-Mobile (collectively “Defendants”)—need not
`
`be assessed “at the time Sprint, AT&T, and T-Mobile were served respectively
`
`with complaints in 2012.” Decision at 8 (emphasis added). On its face, 35 U.S.C.
`
`§ 315(b) does not require that privity for the purposes of compliance with § 315(b)
`
`exist at the time a complaint asserting patent infringement is served on a privy of a
`
`petitioner. Instead, a plain reading of the statute makes clear that preclusion based
`
`on privity applies so long as privity exists by the time the petition is filed.
`
`Second, even if preclusion based on privity were to apply only if privity
`
`existed at the time of service of the complaint asserting patent infringement, the
`
`existence of an indemnitor-indemnitee relationship between the Petitioner and each
`
`of the Defendants prior to the filing of the complaint, coupled with subsequent
`
`actions of the Petitioner and the Defendants arising from the contractual
`
`relationship among them is itself evidence of privity at the time of service of the
`
`complaint.
`
`1
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Third, the Board’s Decision misapprehended or overlooked the evidence
`
`demonstrating that Petitioner exercised control over the Defendants in the
`
`respective district court proceedings prior to June 9, 2014, the filing date of the
`
`Petition.
`
`Fourth, the Board’s Decision misapprehended or overlooked the fact that
`
`preclusion based on privity can apply even in the absence of control. In addressing
`
`the issue of time bar based on privity, the Board focused only on evidence of
`
`control. Decision at 8. The relevant inquiry, however, is whether the relationship
`
`between Petitioner and the Defendants is sufficiently close to establish privity that
`
`bars institution of inter partes review.
`
`Thus, because the Decision overlooks or misapprehends the law of privity
`
`and evidence that demonstrates that the Petition was filed by Petitioner more than
`
`one year (nearly 1.5 years) after Petitioner’s privies were served with a complaint
`
`alleging infringement of the ’970 Patent, Patent Owner requests reconsideration of
`
`the Board’s Decision that the Petition is not barred under 35 U.S.C. § 315(b).
`
`II.
`
`Standard of Review for Rehearing
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” The Federal Circuit has
`
`held that “[a]n abuse of discretion occurs when the decision is based on an
`
`erroneous interpretation of the law, on factual findings that are not supported by
`
`2
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`factors.” Gose v. United States Postal Service, 451 F.3d 831, 836 (Fed. Cir. 2006)
`
`(internal quotations omitted).
`
`III. Basis For Relief Requested
`A. The Board’s Decision Misapprehended or Overlooked the Fact
`that the Issue of Privity Between Petitioner And Sprint, AT&T,
`and T-Mobile Need Not Be Assessed At The Time They Were
`Served With Complaints Alleging Infringement of the ’970 Patent
`
`Contrary to the Board’s Decision, the existence of privity for the purposes of
`
`Section 315(b) need not be assessed at the time Sprint, AT&T, and T-Mobile were
`
`served with complaints alleging infringement of the ’970 Patent. The Decision
`
`stated:1
`
`Patent Owner does not provide evidence sufficient to demonstrate
`that Petitioner exercised control or could have exercised control
`over Sprint’s, AT&T’s, and T-Mobile’s participation in the
`respective district court proceedings. For example, Patent Owner
`does not provide evidence sufficient to demonstrate that, at the
`time that Sprint, AT&T, and T-Mobile were served respectively
`with complaints in 2012, Sprint, AT&T, T-Mobile, and Petitioner
`were represented by counsel from Dentons. See Ex’s. 2107, 2108,
`2109; 2111; 2116, 2117 (each document is dated in 2014).
`Similarly, Patent Owner does not provide evidence sufficient to
`
`1 Contrary to the Board’s Decision, Petitioner’s customers Sprint, AT&T, and T-
`
`Mobile were served with complaints in early 2013—not 2012. Paper 8 at 20–21.
`
`3
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`demonstrate that Petitioner, at the time of service of the
`complaints, exercised control or could have exercised control over
`the proceedings based on the indemnitee-indemnitor relationships.
`See Ex’s. 2110, 2117.”
`
`Decision at 8 (emphasis added).
`
`For purposes of 35 U.S.C. § 315(b), Patent Owner is not required to provide
`
`evidence relating to Petitioner’s relationship with Sprint, AT&T, and T-Mobile at
`
`the time they were served with complaints asserting patent infringement. In
`
`particular, 35 U.S.C. § 315(b) does not require that Patent Owner provide evidence
`
`of privity between Petitioner and the Defendants at the time they were served with
`
`complaints alleging infringement of the ’970 Patent. 35 U.S.C. § 315(b) states:
`
`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year 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.
`
`The plain statutory language makes clear that the time bar imposed by
`
`Section 315(b) is applicable to each of the petitioner, real-party-in-interest, or privy
`
`of the petitioner in the same manner. For example, a party can be a real-party-in-
`
`interest or privy at the time of filing of a petition due to control or funding of the
`
`inter partes review, even if that party was not a real-party-in-interest or privy at the
`
`time of the service of the complaint alleging patent infringement. Similarly, based
`
`4
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`on the plain language of the statute, the assessment of privity must not be restricted
`
`to the time of service of the complaint, but rather should take into account the
`
`relationship of the parties up until the time the petition is filed.
`
`37 C.F.R. § 42.101(b) and associated case law support the Patent Owner’s
`
`position that privity relationships up until the filing of the petition are relevant. See
`
`Synopsys, Inc. v. Mentor Graphics Corporation, IPR2012-00042, Paper 60 at 12
`
`(PTAB Feb. 19, 2014) (holding that “[37 C.F.R. § 42,101(b)] makes clear that it is
`
`only privity relationships up until the time a petition is filed that matter; any later-
`
`acquired privies are irrelevant.”). Moreover, 37 C.F.R. § 42.101(b) states that:
`
`A person who is not the owner of a patent may file with the Office
`a petition to institute an inter partes review of the patent unless:
`. . .
`(b) The petition requesting the proceeding is filed more than one
`year after the date on which the petitioner, the petitioner’s real
`party-in-interest, or a privy of the petitioner is served with a
`complaint alleging infringement of the patent.
`
`37 C.F.R. § 42.101(b) (emphasis added). As such, the existence of privity at the
`
`time of filing of the petition is critical in determining whether a petition is barred.
`
`In its Preliminary Response (Paper 8), Patent Owner presented evidence
`
`establishing privity between Petitioner and each of Sprint, AT&T, and T-Mobile
`
`prior to and at the time of filing of the instant Petition on June 9, 2014. See Paper
`
`8 at 19 (“Location Labs has admitted to the existence of an indemnitee-indemnitor
`
`5
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`relationship between Customers and Location Labs…” and the existence of a joint
`
`defense agreement with its Customers) and Ex. 2110 (Petitioner admitting that it
`
`has indemnification obligations to each of Sprint, AT&T, and T-Mobile under the
`
`respective customer license agreements); Ex. 2117 (Location Labs admitting that
`
`“Ultimately, we have to pay the fees for any settlement [of district court
`
`litigations].”); Ex. 2111 (Location Labs objecting to producing documents on the
`
`basis of “existence of joint defense privilege and common interest privilege”); see
`
`also Paper 8 at 17–18 (Petitioner admitted that Sprint, AT&T, and T-Mobile are its
`
`Customers; that Petitioner and Customers are represented by the same counsel; and
`
`that Petitioner “has control over the defense of the Customers in the district
`
`court cases.”) and Ex. 2116. Petitioner’s admission of (1) the existence of the
`
`indemnification agreements with each of Sprint, AT&T, and T-Mobile, (2) its
`
`contractual obligation to control and fund the defense and settlement of the
`
`infringement claims, and (3) the existence of joint defense and common interest
`
`privileges unequivocally establish the existence of privity between Petitioner and
`
`Sprint, AT&T, and T-Mobile at least at the time of filing of the Petition.
`
`The Decision’s reference to “Ex’s. 2107, 2108, 2109; 2111; 2116, 2117” as
`
`“(each document is dated in 2014)” misapprehends the fact that Exhibits 2107,
`
`2108, 2109, and 2111 are all dated prior to June 9, 2014, and collectively, as
`
`6
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`discussed above, the cited exhibits establish privity between the Petitioner and
`
`each of Sprint, AT&T, and T-Mobile.
`
`Additionally, as discussed in Patent Owner’s Preliminary Response, Sprint
`
`was served with a complaint on January 29, 2013 (Paper 8 at 20 (citing Ex. 2113 at
`
`4, Docket No. 6)); AT&T was served on January 31, 2013 (id. at 21 (citing Ex.
`
`2114 at 1)); and T-Mobile was served on March 12, 2013 (id. (citing Ex. 2115 at 5,
`
`Docket No. 9)). Following service, in order to exercise the customer
`
`indemnification rights under the indemnification agreements with Petitioner (see
`
`Paper 8 at 19 (citing Ex. 2110 at 10–11)), Sprint, AT&T, and T-Mobile each
`
`tendered a request for indemnification on Petitioner, and Petitioner accepted its
`
`obligation to indemnify and control the defense of the respective district court
`
`proceedings on each Defendant’s behalf. See id. at 19 (citing Ex. 2117 at 17).
`
`Thus, the record evidence submitted by Patent Owner provides substantial
`
`evidence demonstrating that prior to June 9, 2014, Sprint, AT&T, and T-Mobile
`
`were privies of the Petitioner at least because Petitioner exercised control over
`
`Sprint’s, AT&T’s, and T-Mobile’s defense in the district court proceedings.
`
`B.
`
`There is Substantial Evidence That Each of the Defendants Was a
`Privy of the Petitioner At the Time It Was Served With a
`Complaint Alleging Infringement of the ’970 Patent
`
`The Board’s Decision overlooked facts demonstrating that Petitioner and
`
`each of Sprint, AT&T, and T-Mobile were in privity at the time of the service of
`
`7
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`the complaint alleging infringement of the ’970 Patent. It is undisputed that the
`
`Petitioner and each of the Defendants entered into an indemnitor-indemnitee
`
`relationship. Petitioner has not only admitted to the existence of indemnification
`
`provisions in each of its license agreements with Sprint, AT&T, and T-Mobile, but
`
`also to the indemnification of Sprint, AT&T, and T-Mobile in the district court
`
`proceedings. See Paper 8 at 19 (citing Ex. 2110 at 10–11). Petitioner conceded
`
`that the license agreements containing the relevant indemnification provisions were
`
`produced in the district court proceedings.2 Sprint produced its Master Services
`
`Agreement with Petitioner on July 15, 2014 bearing Bates No. SPT-
`
`CW_D00000446–00000567; AT&T produced its License and Services Agreement
`
`with Petitioner on July 14, 2014 bearing Bates No. ATT-CW-FM-00005261–
`
`00005336; and T-Mobile produced its License and Services Agreement with
`
`Petitioner on March 14, 2014 bearing Bates No. TM-CW00000074–00000113.
`
`Paper 8 at 19 (citing Ex. 2110 at 10–11).
`
`2 The Protective Order in the district court proceedings precludes Patent Owner
`
`from using confidential information produced in those proceedings for purposes of
`
`any other proceeding. Thus, Patent Owner is precluded from providing the Board
`
`the license agreements containing the indemnification provisions between
`
`Petitioner and Sprint, AT&T, and T-Mobile which were produced in the district
`
`court proceedings.
`
`8
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`In addition, Petitioner confirmed to Magistrate Judge Laurel Beeler of the
`
`Northern District of California during an August 28, 2014 hearing that Petitioner
`
`has agreed to indemnify Sprint, AT&T, and T-Mobile. In fact, Petitioner
`
`represented to the Court that Petitioner’s corporate representative, Mr. Abbati, was
`
`present at a previous settlement conference because of Petitioner’s obligation to
`
`indemnify Sprint, AT&T, and T-Mobile. See Paper 8 at 19 (citing Ex. 2117 at 17,
`
`lines 1–4 (“And Mr. Abbati from [Petitioner] was there because of
`
`indemnification. Ultimately, we have to pay the fees for any settlement.”)
`
`(emphasis added)).
`
`The titles of these agreements in which the indemnification provisions are
`
`incorporated (i.e., Master Services Agreement, License and Services Agreement)
`
`strongly suggest that these agreements were in place prior to the service of the
`
`complaints by the Patent Owner alleging infringement of the ’970 patent.
`
`There is also no dispute that Petitioner accepted its obligation to indemnify
`
`its customers Sprint, AT&T, and T-Mobile and to control the defense of each
`
`customer in the respective district court proceeding. Mr. Kirk Ruthenberg of
`
`Dentons, named counsel for Sprint and T-Mobile, confirmed before Judge Richard
`
`Andrews of the District Court of Delaware that Petitioner had accepted the defense
`
`of Sprint, AT&T, and T-Mobile during a September 16, 2014 discovery hearing:
`
`“No. 1, I am not aware of any communications after the acceptance of the defense
`
`9
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`by [Petitioner] regarding indemnification, between [Petitioner] and any of the
`
`defendants.” See Paper 8 at 18 (citing Ex. 2116 at 5, lines 16–19 (emphasis
`
`added)).
`
`Accordingly, Patent Owner’s Preliminary Response establishes that a
`
`relationship of privity existed between the Petitioner and Sprint, AT&T, and T-
`
`Mobile at the time of service of the complaint alleging patent infringement.
`
`C. The Board’s Decision Misapprehended or Overlooked the
`Evidence Demonstrating that Petitioner Exercised Control Over
`Sprint, AT&T, and T-Mobile In the Respective District Court
`Proceedings Prior To June 9, 2014
`
`Contrary to the Board’s Decision, Patent Owner has provided substantial
`
`evidence demonstrating that Petitioner exercised control over Sprint’s, AT&T’s,
`
`and T-Mobile’s defense in the respective district court proceedings prior to June 9,
`
`2014—the filing date of the instant Petition. See Paper 8 at 16–21.
`
`1.
`
`Petitioner and Sprint, AT&T, and T-Mobile Were All
`Represented By Counsel From Dentons Prior To June 9,
`2014
`
`The Decision stated:
`
`For example, Patent Owner does not provide evidence sufficient to
`demonstrate that, at the time that Sprint, AT&T, and T-Mobile
`were served respectively with complaints in 2012, Sprint, AT&T,
`and T-Mobile, and Petitioner were represented by counsel from
`Dentons. See Ex’s. 2107, 2108, 2109; 2111, 2116, 2117 (each
`document dated in 2014).
`
`10
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Decision at 19 (emphasis added). The Decision misapprehended or overlooked the
`
`record evidence provided by Patent Owner that Petitioner’s counsel entered
`
`appearance on behalf of Sprint, AT&T, and T-Mobile several months before the
`
`instant Petitioner was filed. See Paper 8 at 18. On February 25, 2014, Sprint filed
`
`its Answer to the Second Amended Complaint in Case 1:12-cv-01701-RGA in the
`
`District of Delaware, represented by counsel from Dentons, including Mr. Mark
`
`Hogge—lead counsel for Petitioner in the instant Petition. See id. (citing Ex. 2107
`
`at 17). On the same day, AT&T also filed its Answer to the Second Amended
`
`Complaint in Case 1:12-cv-01701-RGA in the District of Delaware, also
`
`represented by counsel from Dentons. See id. (citing Ex. 2108 at 14). Likewise,
`
`on February 25, 2014, T-Mobile filed its Answer in Case 1:12-cv-01703-RGA in
`
`the District of Delaware, also represented by counsel from Dentons, including Mr.
`
`Mark Hogge. See id. (citing Ex. 2109 at 11).
`
`Moreover, it is clear from the evidence of record submitted by Patent Owner
`
`that counsel from Dentons, including Mr. Mark Hogge, has been representing
`
`Sprint and T-Mobile since the beginning of the respective district court
`
`proceedings. Indeed, counsel from Dentons entered appearance on behalf of Sprint
`
`and T-Mobile approximately two months after each was served with a complaint
`
`alleging infringement of the ’970 patent—on April 9, 2013 (see Ex. 2113 at 5,
`
`11
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Docket No. 18) for Sprint and on May 13, 2013 (see Ex. 2115 at 6, Docket No. 23)
`
`for T-Mobile; see also Paper 8 at 20–21.
`
`Thus, Patent Owner has demonstrated that counsel from Dentons has
`
`represented Petitioner and its customers Sprint, AT&T, and T-Mobile since shortly
`
`after the complaints were served and—long before Petitioner filed the Petition.
`
`2.
`
`Petitioner Entered Into Indemnitor-Indemnitee
`Relationships With Sprint, AT&T, and T-Mobile And
`Accepted The Defense of The Respective District Court
`Proceedings Prior to June 9, 2014
`
`As discussed above, Petitioner has not only admitted to the existence of
`
`indemnification provisions in each of its license agreements with Sprint, AT&T,
`
`and T-Mobile, but also to its obligation to indemnify each of Sprint, AT&T, and T-
`
`Mobile in the underlying litigations. See Paper 8 at 19 (citing Ex. 2110 at 10–11).
`
`Moreover, as discussed above, there is no dispute that Petitioner accepted its
`
`obligation to indemnify its customers Sprint, AT&T, and T-Mobile and to control
`
`the defense of each customer in the respective district court proceedings prior to
`
`the filing of the Petition on June 9, 2014.
`
`3.
`
`Petitioner and Each of Sprint, AT&T, and T-Mobile Have
`Been Operating Pursuant To A Joint Defense/Common
`Interest Agreement Since Prior to June 9, 2014
`
`The record evidence submitted by Patent Owner also demonstrates that
`
`Petitioner admitted that it and each of Sprint, AT&T, and T-Mobile have been
`
`operating pursuant to a joint defense and/or common interest agreement since prior
`
`12
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`to June 9, 2014. See Paper 8 at 19. Specifically, on February 21, 2014 in response
`
`to a discovery subpoena to Petitioner, Petitioner’s counsel from Dentons asserted
`
`the joint defense and common interest privileges in refusing to produce the
`
`requested joint defense or common interest agreements. Id. (citing Ex. 2111 at 12–
`
`15). Furthermore, in response to specific discovery requests for such agreements
`
`with Sprint, AT&T, and T-Mobile, Petitioner again asserted the joint defense and
`
`common interest privileges and did not deny the existence of such agreements. Id.
`
`(citing Ex. 2111 at 26–27, Responses to Request Nos. 15–16). Indeed, as
`
`discussed above, four days later on February 25, 2014, counsel from Dentons also
`
`filed answers to the complaints on behalf of Sprint, AT&T, and T-Mobile asserting
`
`the affirmative defense of invalidity against the ’970 Patent. Paper 8 at 20 (citing
`
`Ex. 2107 at 14; Ex. 2108 at 12; and Ex. 2109 at 8).
`
`D. The Board’s Decision Misapprehended or Overlooked the Fact
`that Preclusion Based on Privity Can Apply Even in the Absence
`of Control
`
`The term “privity” describes a relationship between a litigant and a nonparty
`
`that is characterized by a mutuality of interest—one that is “sufficiently close such
`
`that both should be bound by the trial outcome and related estoppels.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759.
`
`Preclusion based on privity can apply even in the absence of control. See id.
`
`at 48760 (citing Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163
`
`13
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`Cal.App.4th 1506, 1523–25 (Cal. App. 2008)); see also Asahi Glass Co., Ltd. v.
`
`Toledo Eng’g Co., 505 F. Supp. 2d 423, 434–36 (N.D. Ohio 2007) (finding privity
`
`based on an indemnification agreement, retention of shared counsel, and a joint
`
`defense agreement). But the Board’s Decision misapprehended or overlooked this
`
`legal authority because in the Board focused only on evidence of control: “Patent
`
`Owner does not provide evidence sufficient to demonstrate that Petitioner
`
`exercised control or could have exercised control over Sprint’s, AT&T’s, and T-
`
`Mobile’s participation in the respective district court proceedings.” Decision at 8
`
`(emphasis added). The relevant inquiry, however, is whether the relationship
`
`between Petitioner and each of its customers Sprint, AT&T, and T-Mobile is
`
`sufficiently close to establish a privity relationship that bars institution of inter
`
`partes review at this stage, long after the district court litigation commenced.
`
`As discussed in detail above, the record evidence demonstrates a sufficiently
`
`close connection and mutuality of interest between Petitioner and each of its
`
`customers Sprint, AT&T, and T-Mobile prior to the filing of the instant Petition.
`
`Not only does the Petitioner have an indemnification obligation to each of Sprint,
`
`AT&T, and T-Mobile, but it also shares a closely-aligned and mutual interest with
`
`them in defending against the claims of infringement in the district court
`
`proceedings and challenging the validity of the ’970 Patent on behalf of each of its
`
`customer. See Paper 8 at 20.
`
`14
`
`

`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`The close connection and mutuality of interest is further underscored by (1)
`
`the retention of shared counsel from Dentons for Petitioner and for each of Sprint,
`
`AT&T, and T-Mobile to coordinate the defense of the respective district court
`
`proceedings; (2) Petitioner’s assertion of joint defense and/or common interest
`
`privileges; (3) Petitioner’s corporate representative’s appearance at a settlement
`
`conference for the purpose of paying the fees for any settlement; and (4)
`
`Petitioner’s representations in the district court proceedings that it has accepted the
`
`defense of the district court proceedings on behalf of the Defendants.
`
`Accordingly, Patent Owner has presented substantial evidence to
`
`demonstrate both the mutuality of interest and the closeness of the relationship
`
`between the indemnitor-Petitioner and each of the indemnitee-customers to
`
`establish privity.
`
`IV. Conclusion
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`deny the Petition as untimely under U.S.C. § 315(b).
`
`Dated: December 30, 2014
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`15
`
`

`
`CERTIFICATE OF SERVICE
`
`IPR2014-00920
`U.S. Patent 6,771,970
`
`I hereby certify that on this 30th day of December, 2014, a true and correct
`
`
`
`copy of the foregoing PATENT OWNER’S REQUEST FOR REHEARING
`
`PURSUANT TO 37 C.F.R. §§ 42.71(c)–(d) FOR RECONSIDERATION OF THE
`
`DECISION TO INSTITUTE was served on the following counsel for Petitioner
`
`Wavemarket, Inc. d/b/a Location Labs via email and Federal Express Mail:
`
`
`
`
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`
`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
`
`Dated: December 30, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16