UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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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`
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`Case: IPR2015-00635
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ARRIS GROUP, INC.
`Petitioner
`
`v.
`
`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`Case: IPR2015-00635
`
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`ADDITIONAL DISCOVERY
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313–1450
`Submitted Electronically via the Patent Review Processing System
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`
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`I.
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`PRELIMINARY STATEMENT
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`Patent Owner seeks discovery for the sole purpose of relitigating an issue
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`that was subsumed by a judgment and final written decision against Patent Owner
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`in IPR2014-00746. This Board’s rules as well as the principles of administrative
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`res judicata preclude Patent Owner from raising the very same privity arguments it
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`already had the opportunity to litigate. Despite knowing Petitioner’s position on
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`this issue in opposing the requested discovery, Patent Owner never squarely
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`addresses it. Instead, Patent Owner elects to rely on a decision from an
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`interference relating to issue preclusion—not res judicata—and never explains
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`how its privity arguments are not foreclosed by Rule 42.73(a).
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`Taking additional discovery on a matter that cannot be raised in this
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`proceeding in light of the unequivocal language of 37 C.F.R. § 42.73(a) and the
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`common law doctrine of administrative res judicata cannot be in the “interests of
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`justice.” As such, Patent Owner’s motion for additional discovery should be
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`denied in its entirety.
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`II.
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`FACTUAL BACKGROUND
`After Petitioner requested Inter Partes Review of the ’883 Patent in an
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`earlier proceeding, Patent Owner raised the very same privity argument it wants to
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`1
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`raise here: that an earlier suit against non-party Comcast 1 bars Petitioner from
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`requesting Inter Partes Review under § 315(b). See Patent Owner Prelim. Resp.,
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`IPR2014-00746, Paper 19 at 6-12 (Aug. 27, 2014). Notwithstanding Patent
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`Owner’s privity argument, the Board instituted trial as to claim 14 based on
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`Petitioner’s earlier Petition. See IPR2014-00746, Paper 22 at 28 (Nov. 24, 2014).
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`Based on the very same documents Patent Owner requests in its Motion, the Board
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`ruled that “Patent Owner does not provide evidence sufficient to demonstrate that,
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`at the time of service of the 2011 complaint or the amended 2011 complaint,
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`Petitioner exercised control or could have exercised control over Comcast’s
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`participation in the 2011 district court proceeding.” IPR2014-00746, Paper 22 at 9
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`(Nov. 24, 2014). Thus, the Board continued, “based on the evidence presented at
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`this stage of the proceeding, 35 U.S.C. § 315(b) does not bar institution of inter
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`partes review.”2 Id. at 10.
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`1 C-Cation Techs., LLC v. Comcast Corp., 2:11-cv-0030 (E.D. Tex. 2011).
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`2 The documentation sought by Patent Owner will not establish that Petitioner had
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`control or the ability to control the Comcast litigation to give rise to a bar under §
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`315(b). Specifically, the requested discovery will not show (1) that Petitioner
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`was—or could have been—involved in the defense of the earlier litigation from the
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`time of service of the Complaints in the Comcast case so as to make Petitioner
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`2
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`What happened after the Board’s institution of trial in IPR2014-00746 is key
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`to understanding Petitioner’s position as to the present Motion. After Petitioner
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`had filed and served the Petition for IPR in this proceeding, Patent Owner
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`voluntarily disclaimed the only claim involved in the earlier IPR proceeding. See
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`IPR2014-00746, Paper 27 (Feb. 9, 2015). As the Board recognized in its
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`Judgment, Patent Owner’s disclaimer constituted a request for adverse judgment
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`under the Board’s rules. See IPR2014-00746, Paper 28 at 2 (Feb. 18, 2015); see
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`also 37 C.F.R. § 42.73(b)(2). As such the Board’s Order indicated “that Patent
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`Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) is granted . . . .”
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`IPR2014-00746, Paper 28 at 2 (Feb. 18, 2015). The Board also indicated that its
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`order “constitutes a final written decision as to patentability of claim 14 under 35
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`U.S.C. § 318(a).” Id.
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`effectively a party to that case; (2) that Petitioner had the opportunity to be heard in
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`the earlier litigation; (3) that Comcast provided prompt notice to Petitioner under
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`the agreements; and (4) that Petitioner exercised sole control or full authority
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`according to the agreements (particularly in light of the fact that several other
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`companies’ products were implicated by the allegations in that case).
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`3
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`III. ARGUMENT
`A. Board’s Rules Prohibit Patent Owner From Relitigating Any
`Issue That Was or Could Have Been Raised, Including the Privity
`Issue
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`Based on the Board’s rules, Patent Owner knew or should have known that
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`its request for adverse judgment would keep it from presenting issues that were
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`raised or reasonably could have been raised in the earlier proceeding during
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`proceedings on Petitioner’s then-filed second petition for Inter Partes Review.
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`Section 42.73(a) is unequivocal on this point: “A judgment, except in the case of a
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`termination, disposes of all issues that were, or by motion reasonably could have
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`been, raised and decided.” Whether Petitioner was in privity at the time of service
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`of the complaints in the Comcast action is plainly an issue that “reasonably could
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`have been raised” in the earlier instituted trial. 37 C.F.R. § 42.73(a). Not only
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`could it have been raised, it was raised during preliminary proceedings. Thus, in
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`accordance with the clear mandate imposed by Board rule, the privity issue has
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`been disposed of by the Board’s Judgment.3 See 37 C.F.R. § 42.73(a).
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`3 Although not addressed by Patent Owner in its Motion, it is of no consequence
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`that the privity question is tied to 35 U.S.C. § 315(b) or that section 315(b) might
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`be jurisdictional in nature. The Supreme Court has long recognized that once a
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`party has had an opportunity to litigate a jurisdictional question, that party is barred
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`4
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`B.
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`The Board’s Rules Are Consistent With the Principles of
`Administrative Res Judicata, Which Also Bar Patent Owner’s
`Attempts to ReLitigate the Privity Issue
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`Even if the Board’s rules did not provide for preclusion, the common law
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`doctrine of res judicata, which applies to administrative determinations when an
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`agency acts in a judicial capacity, bars relitigation of this privity issue.
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`The doctrine of res judicata precludes relitigation not only of claims and
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`defenses upon which the earlier proceeding was actually decided, but also those
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`which could have been presented for determination; it matters not whether there
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`was a final determination based on the claim or defense if it could have been
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`litigated in the earlier proceeding. Watkins v. M & M Tank Lines, Inc., 694 F.2d
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`309, 311 (4th Cir. 1982). Claim preclusion applies to defenses too. “In its
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`simplest construct, res judicata precludes the relitigation of . . . any possible
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`defense to the cause of action which is ended by a judgment of the court.” Foster
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`v. Hallco Mfg. Co., Inc., 947 F.2d 469, 476 (Fed. Cir. 1991) (citing Restatement
`
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`from attacking the exercise of jurisdiction in a collateral proceeding. See, e.g.,
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`Chicot County Drainage Dist. v. Baxter State Bank, 308 U.S. 371, 377 (1940)
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`(“The court has the power to pass upon its own jurisdiction and its decree
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`sustaining jurisdiction against attack, while open to direct review, is res judicata in
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`an collateral action.”).
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`5
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`
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`
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`(Second) of Judgments, §§ 18, 19 (1982)); see also id. at 487 (“The general
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`concept of claim preclusion is that when a judgment is rendered in favor of a party
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`to litigation . . . defenses that were raised or could have been raised by the
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`defendant in that action are extinguished.” (emphasis in original)). “Claim
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`preclusion applies when ‘(1) the parties are identical or in privity; (2) the first suit
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`proceeded to a final judgment on the merits; and (3) the second claim is based on
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`the same set of transactional facts as the first.’” Phillips/May Corp. v. United
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`States, 524 F.3d 1264, 1268 (Fed. Cir. 2008) (quoting Ammex, Inc. v. United
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`States, 334 F.3d 1052, 1055 (Fed. Cir. 2003)). “This aspect of res judicata,
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`known in modern parlance as ‘claim preclusion’, applies whether the judgment of
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`the court is rendered after trial and imposed by the court or the judgment is entered
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`upon consent of the parties.” Foster, 947 F.2d at 476 (citing Lawlor v. National
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`Screen Serv. Corp., 349 U.S. 322, 327 (1955)). These principles have been
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`“properly applied
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`to
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`the final
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`judgment of an administrative agency.”
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`Phillips/May, 524 F.3d at 1268; see also United States v. Utah Construction Co.,
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`384 U.S. 394, 422 (1966). There is no reason that res judicata should not also
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`apply to final judgments of the PTAB such as the one in IPR2014-00746.
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`In this proceeding, the parties are the same, the first IPR resulted in a final
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`judgment invalidating claim 14, and Patent Owner’s privity argument is identical
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`to the one it raised in the earlier proceeding. Since Patent Owner had the
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`6
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`opportunity to litigate the privity issue completely in IPR2014-00746, but instead
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`elected to have adverse judgment entered against it, the principles of res judicata
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`apply and preclude Patent Owner from claiming that the earlier Comcast case bars
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`the present petition.
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`Analogous to a consent judgment to which “claim preclusion principles
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`apply,” Foster, 947 F.2d at 478; Wright & Miller, FEDERAL PRACTICE &
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`PROCEDURE, § 4443 (“[C]onsent judgments ordinarily support claim preclusion but
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`not issue preclusion.”), claim preclusion attaches to Patent Owner’s requested
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`adverse judgment and the Board’s subsequent entry of judgment and final written
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`decision of unpatentability of claim 14. Thus, Patent Owner is barred from
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`relitigating its privity defense under section 315(b) in this proceeding.
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`Patent Owner’s reliance upon Ex Parte Shaw is of no help to Patent Owner.
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`That case dealt primarily with the question of issue preclusion, see Ex Parte Shaw,
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`Appeal No. 1997-3258, 2004 WL 5580635, at *18 (B.P.A.I. May 21, 2004)
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`(explaining that applicant’s res judicata arguments were interpreted “to apply
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`equally to issue preclusion”), and Patent Owner relies on considerations of issue
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`preclusion in its briefing, see Mot. at 6 (arguing that the privity issue “was not
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`litigated after the institution decision” and “the Board did not need to” adjudicate
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`the privity issue). Despite the apparent confusion evident from Patent Owner’s
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`7
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`briefing, issue preclusion is not the same as the res judicata, or “claim preclusion”
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`considerations raised by Petitioner.
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`As established above, even if the plain language of § 42.73(a) did not
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`foreclose Patent Owner’s privity challenge, the doctrine of administrative res
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`judicata would.
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`C. Because Patent Owner is Precluded From Relitigating the Privity
`Issue, Patent Owner Has Failed to Carry Its Burden to Show that
`the Requested Discovery is In the Interests of Justice
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`Before additional discovery may be granted, Patent Owner must show that
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`the requested discovery is “in the interests of justice.” See 37 C.F.R. § 42.51(b)(2).
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`Without a doubt, discovery that relates only to an issue that cannot be litigated in
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`this proceeding is not in the “interests of justice.” In terms of the factors outlined
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`in Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001,
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`Paper 26 (PTAB Mar. 5, 2013) since Patent Owner’s privity defense is foreclosed
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`by the earlier judgment, something useful will not be found by the sought-after
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`discovery because even if everything Patent Owner says about the discovery is
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`true, Patent Owner cannot relitigate the privity issue in this proceeding.
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`II. CONCLUSION
`For the foregoing reasons, Patent Owner’s motion for additional
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`discovery should be denied.
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`8
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`Dated: April 14, 2015
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`Respectfully submitted,
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`/Andrew R. Sommer/
`Andrew R. Sommer
`Reg. No. 53,932
`Lead Counsel for Petitioner ARRIS
`Group, Inc.
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`9
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that on
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`April 14, 2015, I caused to be served a true and correct copy of the foregoing
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`“PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
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`ADDITIONAL DISCOVERY” by electronic mail on counsel for the Patent Owner
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`at:
`
`
`
`Lewis V. Popoviski
`lpopoviski@kenyon.com
`
`Jeffrey S. Ginsberg
`jginsberg@kenyon.com
`
`David J. Kaplan
`djkaplan@kenyon.com
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`David J. Cooperberg
`dcooperberg@kenyon.com
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`Dated: April 14, 2015
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`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, DC 20006
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`1
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`Respectfully submitted,
`
`/Andrew R. Sommer/
`Andrew R. Sommer
`(Reg. No. 53,932)
`Counsel for Petitioner ARRIS Group,
`Inc.
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