`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
`
`
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`IPR2015-00635
`Patent 5,563,883
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`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.
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`IPR2015-00635
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`§ 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.
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`IPR2015-00635
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`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
`
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