Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`____________________
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`CASE IPR2015-00635
`Patent 5,563,883
`____________________
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`PATENT OWNER’S MOTION FOR DISCOVERY FROM PETITIONER
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`U.S. Patent No. 5,563,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`____________________
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`CASE IPR2015-00635
`Patent 5,563,883
`____________________
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`PATENT OWNER’S MOTION FOR DISCOVERY FROM PETITIONER
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`TABLE OF CONTENTS
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`I. PRECISE RELIEF REQUESTED ...................................................................... 1
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`II. FACTUAL BACKGROUND ............................................................................... 1
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`A. Patent Owner Seeks the Same Additional Discovery that the Board Already
`Ordered Petitioner to Provide in an Earlier Proceeding Initiated by Petitioner
`Concerning the Same Patent .............................................................................. 1
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`B. Petitioner Indemnified Comcast in an Infringement Lawsuit Relating to the
`’883 Patent Filed More than One Year Prior to Petitioner’s Request for Inter
`Partes Review .................................................................................................... 2
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`C. Petitioner’s Ability to Control Litigation against Comcast ............................... 3
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`III. REASONS FOR THE RELIEF REQUESTED ................................................. 4
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`A. The Requested Discovery is Based on More than a Possibility and Mere
`Allegation ........................................................................................................... 5
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`B. The Requested Discovery Does Not Overlap with Petitioner’s Litigation
`Positions or their Underlying Basis ................................................................... 7
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`C. Patent Owner Has No Other Means of Obtaining the Requested Discovery .... 7
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`D. The Requested Discovery Includes Easily Understandable Instructions .......... 8
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`E. The Requested Discovery Is Not Overly Burdensome ...................................... 8
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`IV. CONCLUSION...................................................................................................... 8
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`U.S. Patent No. 5,563,883
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`TABLE OF AUTHORITIES
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`Arris Group, Inc. v. C-Cation Techs., LLC,
`IPR2014-00746, Paper 15 (PTAB Jul. 24, 2014) ................................................ 4, 5, 6
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`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
` IPR 2013-00453, Paper 40 (PTAB Apr. 23, 2014) ..................................................... 5
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`Ex Parte Robert F. Shaw,
` Appeal 1997-3258,
`2004 WL 5580635 (BPAI May 21, 2004) ................................................................... 6
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`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
` IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) ................................................ 5, 7, 8
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`In re Freeman,
`30 F.3d 1459 (Fed. Cir. 1994) ..................................................................................... 6
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`Statutes
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`35 U.S.C. § 315 ....................................................................................................... 5, 6, 8
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`35 U.S.C. § 316 ............................................................................................................... 5
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`Other Authorities
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`77 FR 48,756................................................................................................................... 5
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`Regulations
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`37 C.F.R. § 42.51 (b)(2) ................................................................................................. 1
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`37 C.F.R. § 42.52(a) ....................................................................................................... 1
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`37 C.F.R. § 42.73 ............................................................................................................ 7
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Exhibit #
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`C-Cation 2001
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`C-Cation 2002
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`C-Cation 2003
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`C-Cation 2004
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`C-Cation 2005
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`C-Cation 2006
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`C-Cation 2007
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`Exhibit List
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`Exhibit Description
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`C-Cation Technologies, LLC’s Proposed Discovery Request
`to Arris Group, Inc.
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`Complaint, C-Cation Techs., LLC v. Comcast Corp., No
`2:11-cv-00030 (filed Jan. 21, 2011), D.I. 1.
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`FORM 10-K for the fiscal year ended December 31, 2013
`of Arris Group, Inc.
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`Scheduling and Discovery Order, C-Cation Techs., LLC v.
`Comcast Corp., No 2:11-cv-00030 (filed Oct. 3, 2012), D.I.
`145.
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`Defendant Comcast Cable’s Supplemental Intial Disclosures
`Pursuant to Fed. R. Civ. P. 26(a)(1), C-Cation Techs., LLC
`v. Comcast Corp., No 2:11-cv-00030.
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`“Arris Acquires Motorola Home: Creates Premier Video
`Delivery and Broadband Technology Company” (April 17,
`2013), available at
`http://ir.arrisi.com/phoenix.zhtml?c=87823&p=irol-
`newsArticle&ID=1807670.
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`“Corporate Terms and Conditions of Sale,” March 2012,
`available as of July 7, 2014 at
`http://moto.arrisi.com/_docs/EULA_Warranty.pdf.
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`C-Cation 2008
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`Transcript of June 26, 2014 Conference Call, IPR2014-00746.
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`U.S. Patent No. 5,563,883
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`I.
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`PRECISE RELIEF REQUESTED
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`Patent Owner C-Cation Technologies, LLC (“Patent Owner”) requests that the
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`Board authorize certain narrowly targeted discovery from Petitioner Arris Group, Inc.
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`(“Petitioner”) contained in Exhibit 2001, which consists of a single document request.
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`See 37 C.F.R. §§ 42.51 (b)(2), 42.52(a). This motion is filed in accordance with the
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`Board’s April 2, 2015 Order. (Paper No. 6.)
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`II. FACTUAL BACKGROUND
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`A.
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`Patent Owner Seeks the Same Additional Discovery that the Board
`Already Ordered Petitioner to Provide in an Earlier Proceeding
`Initiated by Petitioner Concerning the Same Patent
`This is the second request for inter partes review that Petitioner has filed
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`against claims 1, 3, and 4 of U.S. Patent No. 5,563,883 (“the ’883 patent”).1 On May
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`13, 2014, Petitioner filed IPR2014-00746, which requested review of claims 1, 3, 4,
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`and 14. During the time period allotted for Patent Owner to prepare a preliminary
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`response, Patent Owner sought limited additional discovery from Petitioner relating to
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`whether the petition was time barred due to the Petitioner’s privity with an earlier
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`litigant. The Board granted Patent Owner permission to file a motion for additional
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`1
`Overall, this is the third request for inter partes review that has been filed
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`against the ’883 patent by the defendants in a co-pending district court litigation filed
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`on February 4, 2014 and captioned C-Cation Techs. v. Time Warner Cable Inc. et al.,
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`14-cv-00059 (E.D. Tex.) (“Second Texas Action”).
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`discovery (IPR2014-00746, Paper 9), and then, after receiving briefing from the
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`parties, ordered Petitioner to produce the requested discovery. IPR2014-00746, Paper
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`15. The instant discovery sought by Patent Owner is identical to the discovery
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`ordered by the Board in that proceeding.
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` After Patent Owner filed its preliminary response, the Board denied
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`institution concerning claims 1, 3, and 4, and granted institution as to claim 14.
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`IPR2014-00746, Paper 22. In the instant proceeding, Petitioner again requests review
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`of claims 1, 3, and 4.
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`B.
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`Petitioner Indemnified Comcast in an Infringement Lawsuit Relating
`to the ’883 Patent Filed More than One Year Prior to Petitioner’s
`Request for Inter Partes Review
`On January 25, 2011, Patent Owner filed a complaint (Ex. 2002) for patent
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`infringement against cable service provider Comcast Corporation and others in the
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`United States District Court for the Eastern District of Texas (the “First Texas
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`Action”), alleging that each of the defendants’ cable systems infringed the ’883
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`patent. In the First Texas Action, Patent Owner accused Comcast’s systems that
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`include Petitioner’s products, specifically cable modem termination systems
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`(“CMTSs”) and cable modems, of infringing the ’883 patent.
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`In financial disclosures filed by Petitioner with the Securities and Exchange
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`Commission (“SEC”), Petitioner admitted that Comcast made indemnification claims
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`against Petitioner with respect to the First Texas Action. For example, Petitioner’s
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`2013 annual report, as filed with the SEC states:
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`C-Cation:
`The Company and Comcast reached a settlement related to
`Comcast’s litigation with C-Cation, whereby the Company agreed
`to pay Comcast to settle indemnification claims against the
`Company in the quarter ended December 31, 2013.
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`(Ex. 2003 at 125 (emphasis added).)
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`The foregoing admission is consistent with Comcast’s disclosures in the First
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`Texas Action. In that action the Court required all parties to disclose:
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`any indemnity or insuring agreements under which any person or
`entity may be liable to satisfy part or all of a judgment entered in
`this action or to indemnify or reimburse for payments made to
`satisfy the judgment; . . . .
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`(Ex. 2004 at 5.) In response, Comcast stated:
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`Certain of Comcast Cable’s vendors including, but not limited to,
`Arris Group, Inc., Cisco Systems, Inc., and Motorola, Inc., may be
`liable to satisfy part or all of a judgment entered in this action or to
`indemnify or reimburse for payments made to satisfy the judgment.
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`(Ex. 2005 at 15.)2
`C.
`Petitioner’s Ability to Control Litigation against Comcast
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`Additional public information confirms the existence of an indemnification
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`2
`Petitioner acquired Motorola Home, the manufacturer of Motorola CMTSs and
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`cable modems, on April 17, 2013. (Ex. 2006.)
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`agreement between Petitioner and Comcast that provided Petitioner with at least the
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`contractual ability to control the defense and settlement of the First Texas Action (as
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`far as it related to products supplied by Petitioner).
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`For example, Petitioner’s publicly available standard “Corporate Terms and
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`Conditions of Sale” state that Petitioner will “indemnify, defend and hold Customer
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`harmless” for allegations of patent infringement based on products Petitioner provided
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`to Customer under three conditions: “(i) Customer promptly notifies ARRIS of the
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`Claim, (ii) Customer gives ARRIS all applicable evidence . . . and (iii) Customer
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`gives ARRIS reasonable assistance in and sole control of the defense and all
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`negotiations for its settlement or compromise.” (Ex. 2007 at 6, section 22)
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`(emphasis added).
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`III. REASONS FOR THE RELIEF REQUESTED
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`Patent Owner moves to obtain very specific discovery from Petitioner. The
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`discovery requested consists of a single request for production, identical to the request
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`that the Board ordered Petitioner to produce in IPR2014-00746:
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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.
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`Compare Ex. 2001 with IPR2014-00746, Paper 15 at 5.)
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`Patent Owner expects that the requested discovery, together with additional
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`information recently obtained by Patent Owner, will make a compelling showing that
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`Petitioner “exercised or could have exercised control over” the claims of infringement
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`of the ʼ883 patent against Comcast’s use of Petitioner’s products in the First Texas
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`Action, and, consequently, Petitioner’s petition for inter partes review is time-barred
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`under 35 U.S.C. § 315(b).3 Patent Owner’s discovery request is therefore “necessary
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`in the interest of justice” (see 35 U.S.C. § 316 (a)(5)), and further, meets each of the
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`factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
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`Paper 26 (PTAB Mar. 5, 2013) as explained below.
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`A.
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`The Requested Discovery is Based on More than a Possibility and
`Mere Allegation
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`Petitioner has already publicly conceded the existence of an indemnification
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`agreement (Ex. 2008 at p. 16, ll. 2-3), the content of which is supported by evidence
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`already in Patent Owner’s possession. The document request therefore falls within the
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`bounds of permissible additional discovery, as it did in the previous proceeding filed
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`by Petitioner. IPR2014-00746, Paper 15; see also Atlanta Gas Light Co. v. Bennett
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`Regulator Guards, Inc., IPR2013-00453, Paper 40 at 5-6 (PTAB Apr. 23, 2014).
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`The Trial Practice Guide specifies that in determining if a non-party may be
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`recognized as a privy, whether “the non-party exercised or could have exercised
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`control over a party’s participation in a proceeding” is a factor that should be
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`considered. See 77 FR 48,756 (“Trial Practice Guide”) at 48,759.
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`Further, as the requested discovery only seeks indemnification agreements that
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`reference or are contingent on Petitioner’s ability to control the litigation, the single
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`request for production is calculated to provide useful information concerning whether
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`Petitioner’s petition in the instant proceeding should be time-barred under 35 U.S.C. §
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`315(b) because its privy was sued more than a year before Petitioner filed its petition.
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`IPR2014-00746, Paper 15; Atlanta Gas Light Co., IPR2013-00453, Paper 40 at 7;
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`Garmin, IPR2012-00001, Paper 26 at 7.
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`Petitioner asserts that Patent Owner is estopped from litigating the privity issue
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`in this proceeding under either administrative res judicata or under 37 C.F.R. §
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`42.73(a), and that as a result, no useful discovery could be uncovered. Petitioner is
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`incorrect. Its assertions as to estoppel are fatally flawed at least because the Board did
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`not make a final decision that was essential to its final judgment in the earlier
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`proceeding. See Ex Parte Robert F. Shaw, Appeal 1997-3258, 2004 WL 5580635, at
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`*13 (BPAI May 21, 2004) (noting that the doctrine res judicata may preclude a party
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`from re-litigating an issue when: “(2) the issue was actually litigated in the fiirst [sic]
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`action; [and] (3) resolution of the issue was essential to a final judgment in the first
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`action.”) (citing In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994)). Here, the Board’s
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`institution decision was not final as to privity (see IPR2014-00746, Paper 22 at 10),
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`the issue was not litigated after the institution decision, and the Board did not need to,
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`and did not resolve the issue in issuing its judgment in the earlier action (see IPR2014-
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`00746, Paper 28). For the same reasons, raising the privity issue in this proceeding is
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`not inconsistent with the Board’s prior judgment, and therefore Patent Owner is not
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`precluded from doing so under 37 C.F.R. § 42.73.
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`B.
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`The Requested Discovery Does Not Overlap with Petitioner’s
`Litigation Positions or their Underlying Basis
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`Patent Owner does not seek to prematurely learn the litigation positions or
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`strategies of Petitioner in the co-pending district court litigation. To the best of Patent
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`Owner’s knowledge, the requested discovery does not relate to Petitioner’s litigation
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`positions, and is therefore proper under Factor 2 of Garmin. See Garmin, IPR2012-
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`00001, Paper 26 at 13.
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`C.
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`Patent Owner Has No Other Means of Obtaining the Requested
`Discovery
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`Patent Owner’s proposed discovery request narrowly targets indemnification
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`agreements that relate to whether Petitioner had the ability to control Comcast’s
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`defense in the First Texas Action. While Petitioner previously publicly conceded the
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`existence of an agreement (Ex. 2008 at p. 16, ll. 2-3), the terms are confidential and
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`are not publicly available.
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`In addition, the information sought is not available to Patent Owner in the
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`Second Texas Action. Petitioner’s counsel in that litigation has refused to consent to
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`the use in this proceeding of any confidential information produced in the litigation on
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`the ground that Patent Owner is precluded from raising the privity issue in this
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`proceeding.
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`D.
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`The Requested Discovery Includes Easily Understandable
`Instructions
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`Patent Owner’s instructions are easily understandable and are based on the
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`instructions already approved by the Board in Garmin. See Garmin, IPR2012-00001,
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`Paper No. 26 at 14.
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`E.
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`The Requested Discovery Is Not Overly Burdensome
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`As Patent Owner’s proposed discovery seeks the same discovery that Petitioner
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`provided to Patent Owner in a previous proceeding, any financial, human resource, or
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`time burden on Petitioner is negligible. Moreover, the request is narrowly tailored to
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`the privity issue and seeks only indemnification agreements that, according to the
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`Trial Practice Guide, are relevant to the determination of whether Petitioner’s petition
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`in the instant proceeding is time barred under 35 U.S.C. § 315 (b).
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`IV. CONCLUSION
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`Based on the above, Patent Owner respectfully requests that the Board allow
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`the proposed discovery contained in Exhibit 2001.
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`Date: April 8, 2015
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`Respectfully submitted,
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`___/Lewis V. Popovski/______
`Lewis V. Popovski
`Registration No. 37,423
`Attorney for Patent Owner
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`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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`Certificate of Service
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION FOR DISCOVERY FROM PETITIONER together with Exhibits 2001
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`to 2008 were served via e-mail on April 8, 2015, in their entirety on the following:
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`LEAD COUNSEL
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`Andrew R. Sommer
`asommer@winston.com
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
`T: (202) 282-5000; F: (202) 282-5100
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`BACKUP COUNSEL
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`Jonathan E. Retsky
`jretsky@winston.com
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`T: (312) 558-3791; F: (312) 558-5700
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`KENYON & KENYON LLP
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`
`
` /David J. Kaplan/
`David J. Kaplan
`Registration No. 57,117
`Attorney for Patent Owner
`
`Date: April 8, 2015
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`
`
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`9
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