Trials@uspto.gov Paper 6
`571-272-7822 Entered: April 2, 2015
`
`
`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 IPR2015-00635
`Patent 5,563,883
`____________
`
`
`Before MIRIAM L. QUINN, Vice Chief Administrative Judge, and
`LYNNE E. PETTIGREW, Administrative Patent Judge.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On April 2, 2015, a conference call was held, at the request of Patent
`Owner, C-Cation Technologies, LLC, between counsel for Petitioner,
`ARRIS Group, counsel for Patent Owner, and Judges Quinn and Pettigrew.
`During the call, counsel for Patent Owner explained that it seeks discovery
`of agreements between Petitioner and Comcast Corporation relating to a
`
`
`571-272-7822 Entered: April 2, 2015
`
`
`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 IPR2015-00635
`Patent 5,563,883
`____________
`
`
`Before MIRIAM L. QUINN, Vice Chief Administrative Judge, and
`LYNNE E. PETTIGREW, Administrative Patent Judge.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On April 2, 2015, a conference call was held, at the request of Patent
`Owner, C-Cation Technologies, LLC, between counsel for Petitioner,
`ARRIS Group, counsel for Patent Owner, and Judges Quinn and Pettigrew.
`During the call, counsel for Patent Owner explained that it seeks discovery
`of agreements between Petitioner and Comcast Corporation relating to a
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`lawsuit filed in January 2011 by Patent Owner against Comcast, titled C-
`Cation Technologies, LLC v. Comcast Corp., Case No. 2:11-cv-00030 (E.D.
`Tex.). Patent Owner seeks to prove that the Petition is time-barred under
`35 U.S.C. § 315(b) based on privity between Petitioner and Comcast. Patent
`Owner indicated it seeks the same discovery that was requested and ordered
`by the Board in ARRIS Group, Inc. v. C-Cation Technologies, LLC, Case
`IPR2014-00746 (PTAB July 24, 2014) (Paper 15), involving the same
`parties and the same patent as this case. In IPR2014-00746, in a decision
`instituting inter partes review, the Board determined that, based on the
`evidence presented at that stage of the proceeding, § 315(b) did not bar
`institution of inter partes review. ARRIS Group, Inc. v. C-Cation
`Technologies, LLC, Case IPR2014-00746, slip op. at 8–10 (PTAB Nov. 24,
`2014) (Paper 22). Ultimately, Patent Owner disclaimed the one claim for
`which review was instituted, and the Board granted Patent Owner’s request
`for adverse judgment. ARRIS Group, Inc. v. C-Cation Technologies, LLC,
`Case IPR2014-00746 (PTAB Feb. 18, 2015) (Paper 28).
`On the call, Petitioner stated that it opposes Patent Owner’s requested
`discovery on two grounds: (i) administrative res judicata, and (ii) estoppel
`under 42 C.F.R. § 42.73(a). Essentially, Petitioner contends that Patent
`Owner’s requested discovery is not appropriate because Patent Owner is
`estopped from litigating the privity issue in this proceeding.
`After hearing from both parties, we determine that Patent Owner’s
`motion for additional discovery under 37 C.F.R. § 42.51(b)(2) is warranted
`under the circumstances. In its motion, Patent Owner should explain
`explicitly what discovery is requested and why it believes such discovery is
`“necessary in the interest of justice.” 35 U.S.C. § 316(a)(5)(B); 37 C.F.R.
`2
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`§ 42.51(b)(2)(i). The parties are directed to Garmin International, Inc. v.
`Cuozzo Speed Technologies LLC, Case IPR2012-00001 (PTAB Mar. 5,
`2013) (Paper 26), for guidance regarding motions for additional discovery.
`To the extent Patent Owner’s motion or Petitioner’s opposition
`includes information believed to be confidential, the parties may file
`redacted and unredacted versions, along with a motion to seal. Prior
`authorization to file a motion to seal is not required. The motion to seal
`must explain the basis for every redaction made. A party opposition to the
`motion to seal should explain why it believes the material should not be
`sealed.
`The parties are encouraged to agree on the terms of a proposed
`protective order that, if entered, would provide appropriate protections to
`ensure confidentiality. To the extent the parties believe additional
`protections are necessary beyond those provided for in the Board’s default
`protective order, the parties may include such protections in the proposed
`protective order. If the proposed protective order differs from the Board’s
`default protective order in any way, the motion should identify specifically
`how the two protective orders differ and explain why such changes are
`warranted. A separate redlined version of the proposed protective order
`showing the differences between the default protective order and the
`proposed protective order also should be filed with the motion.
`
`3
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`ORDER
`
`
`
`Accordingly, it is:
` ORDERED that Patent Owner is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2), no later than April 8,
`2015, limited to eight (8) pages;
` FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s motion, no later than April 14, limited to eight
`(8) pages; and
` FURTHER ORDERED that Patent Owner is authorized to file a reply,
`if necessary, no later than April 17, limited to five (5) pages.
`
`FOR PETITIONER:
`Andrew R. Sommer
`Jonathan E. Retsky
`WINSTON & STRAWN LLP
`asommer@winston.com
`jretsky@winston.com
`
`FOR PATENT OWNER:
`Lewis V. Popovski
`Jeffrey S. Ginsberg
`David J. Kaplan
`David J. Cooperberg
`KENYON & KENYON LLP
`lpopovski@kenyon.com
`jginsberg@kenyon.com
`djkaplan@kenyon.com
`dcooperberg@kenyon.com
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
