Case IPR2015-00635
`U.S. Patent No. 5,563,883
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` Paper 7
`Filed: April 8, 2015
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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 REPLY IN SUPPORT OF ITS
`MOTION FOR DISCOVERY FROM PETITIONER
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`U.S. Patent No. 5,563,883
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` Paper 7
`Filed: April 8, 2015
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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 REPLY IN SUPPORT OF ITS
`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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`Paper 9
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`Filed: April 17, 2015
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`I.
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`INTRODUCTION .................................................................................................. 1
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`II. PETITIONER’S OPPOSITION MISAPPLIES 37 C.F.R. § 42.73 ........................ 2
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`III. COMMON LAW CLAIM PRECLUSION IS NOT PROPERLY APPLIED
`HERE ...................................................................................................................... 3
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`IV. CONCLUSION ....................................................................................................... 5
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Cases
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`TABLE OF AUTHORITIES
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`Paper 9
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`Filed: April 17, 2015
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`Astoria Fed. Savings and Loan Assoc. v. Solimino,
`501 U.S. 104 (1991) ............................................................................................ 3, 4
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`Epic Metals Corp. v. H. H. Robertson Co.,
`870 F.2d 1574 (Fed. Cir. 1989) .............................................................................. 4
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`Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC,
` IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013) .................................................. 1
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`Pactiv Corp. v. Dow Chem. Co.,
`1:04-CV-81, 2005 U.S. Dist. LEXIS 42538 (Fed. Cir. 2005) ................................ 4
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`Parklane Hosiery Co. v. Shore,
` 439 U.S. 322 (1979) ............................................................................................... 5
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`Statutes
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`35 U.S.C. § 315 ....................................................................................................... 1, 3, 4
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`Regulations
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`37 C.F.R. § 42.73 ........................................................................................................ 2, 3
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`ii
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`I.
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`Introduction
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`Paper 9
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`Filed: April 17, 2015
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`Petitioner does not contest that four of the five factors outlined in Garmin Int’l,
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`Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5,
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`2013) for determining whether additional discovery is “necessary in the interest of
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`justice” weigh in favor of granting Patent Owner’s motion for targeted discovery.
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`(Paper 8 (“Opposition”)). As to the remaining factor (more than a possibility and
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`mere allegation that something useful will be found), Petitioner does not contest that
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`the requested discovery exists, but rather, asserts that it will not be “useful” because
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`Patent Owner is barred from using it.
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`According to the Petitioner, parties to a concluded inter partes review
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`proceeding are precluded from raising in a later inter partes review proceeding any
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`arguments that they could have raised in the earlier proceeding. Opposition at 4-8.
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`Specifically, Petitioner argues that because Patent Owner did not argue in IPR2014-
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`00746 that Petitioner was barred pursuant to 35 U.S.C. § 315(b) due to Petitioner’s
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`privity with a previous litigant, and instead elected to file a disclaimer to end that
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`proceeding, Patent Owner cannot raise the privity issue in this proceeding. Id.
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`This argument lacks merit. In addition to relying on a misapplication of the
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`relevant statutes, regulations, case law, and facts, the impropriety of Petitioner’s
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`position is clear: under Petitioner’s theory, its instant petition could not have been
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`brought because it is based on prior art that Petitioner could have presented in the
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`1
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`U.S. Patent No. 5,563,883
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`earlier proceeding, but chose not to. Indeed, if Petitioner’s prelusion assertions are
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`Paper 9
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`Filed: April 17, 2015
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`accepted, dismissal of Petitioner’s petition in this proceeding would necessarily result.
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`II.
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`Petitioner’s Opposition Misapplies 37 C.F.R. § 42.73
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`Petitioner argues that 37 C.F.R. § 42.73(a) precludes Patent Owner from raising
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`privity as a ground of non-institution. Opposition at 4. In doing so, Petitioner
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`misrepresents the regulation. 37 C.F.R. § 42.73(a) relates to the scope of a judgment
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`and not its preclusive effect. The preclusive effect that results from a judgment is
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`specifically addressed in 37 C.F.R. § 42.73(d), which makes clear that any resulting
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`estoppel only applies on a patent claim by patent claim basis, or to such claims “not
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`patentably distinct” therefrom.
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`That is not the case here. In IPR2014-00746, review was instituted only for
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`claim 14. While an adverse judgment issued as to claim 14, that judgment did not
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`reach claims 1, 3, and 4, and Patent Owner has never taken any action inconsistent
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`with the judgment against claim 14. Moreover, Petitioner does not, nor can it, argue
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`that claims 1, 3, and 4 are not patentably distinct from claim 14.
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`Thus, Petitioner’s argument with respect to 37 C.F.R. § 42.73 relies entirely on
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`conflating the preclusive language of C.F.R. § 42.73(d) with part (a). Petitioner cites
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`no authority for doing so. Moreover, applying the preclusive effect of a judgment as
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`broadly as Petitioner proposes would improperly subsume the more limited scope of
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`part (d), leaving part (d) without any meaning.
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`2
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`U.S. Patent No. 5,563,883
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`Paper 9
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`Filed: April 17, 2015
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`Further, any implication by Petitioner that the privity issue was in fact decided
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`with respect to whether Petitioner is barred from requesting review of claims 1, 3, and
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`4 is incorrect. In IPR2014-00746, Petitioner’s privity was only addressed in Patent
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`Owner’s preliminary response; the Board’s institution decision made clear that Patent
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`Owner was not foreclosed from obtaining additional evidence and rearguing the issue.
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`See IPR2014-00746, Paper 22 at 10.
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`III. Common Law Claim Preclusion is Not Properly Applied Here
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`Petitioner also presents the alternative theory that, if 37 C.F.R. § 42.73 does not
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`expressly preclude Patent Owner from asserting the instant petition is barred under 35
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`U.S.C. § 315(b) then Patent Owner is forbidden from doing so under common law res
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`judicata. Opposition at 5-8. Petitioner further argues that the disclaimer Patent
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`Owner filed in IPR2014-00746 is a consent judgment to which claim preclusion
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`principles apply. Opposition at 7. As with the Board’s regulations, Petitioner’s
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`position with respect to common law preclusion is also flawed.
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`It is well-settled that common law preclusion, including administrative res
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`judicata, does not apply where Congress has indicated a “statutory purpose to the
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`contrary.” Astoria Fed. Savings and Loan Assoc. v. Solimino, 501 U.S. 104, 106
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`(1991). This is so even without a precise Congressional statement of intention to
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`displace the common law. See id. In creating the inter partes review procedure by
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`statute, Congress indicated the extent to which preclusion should apply in other
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`3
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`U.S. Patent No. 5,563,883
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`proceedings before the Patent Office (35 U.S.C. § 315(e)(1)) as well as in civil actions
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`Paper 9
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`Filed: April 17, 2015
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`and proceedings before the International Trade Commission (35 U.S.C. § 315(e)(2)).
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`Within this statutory scheme, Congress decreed that preclusion is to be analyzed and
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`applied on a patent claim by patent claim basis. See 35 U.S.C. § 315(e).
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`Petitioner’s request to apply preclusion across patent claims improperly ignores
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`the confined scope of preclusion specified by Congress. In particular, IPR2014-
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`000746 was instituted only as to claim 14, but Petitioner seeks to apply preclusion to a
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`proceeding that involves only claims 1, 3, and 4. This runs afoul of the Supreme
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`Court’s Astoria Fed. Savings and Loan Assoc. decision, even if it is determined that §
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`315 does not render common law preclusion inapplicable as a whole in inter partes
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`review proceedings. At a minimum, it is clear from § 315 that Congress only intended
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`preclusion to be applied in proceedings that involve the same patent claims.
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`While Petitioner is correct that Patent Owner’s disclaimer of claim 14 is
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`analogous to a consent judgment, its statement of the law concerning the applicability
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`of preclusion to consent judgments is incomplete. Neither res judicata nor issue
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`preclusion applies in instances where a party reserves rights in a consent decree.
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`Pactiv Corp. v. Dow Chem. Co., 1:04-CV-81, 2005 U.S. Dist. LEXIS 42538, at *5-6
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`(Fed. Cir. 2005); Epic Metals Corp. v. H. H. Robertson Co., 870 F.2d 1574, 1575-76
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`(Fed. Cir. 1989). The disclaimer filed in IPR2014-00746 as Paper 27 states:
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`The present statutory disclaimer does not constitute any acquiescence by
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`4
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper 9
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`Filed: April 17, 2015
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`Patent Owner with regard to the outstanding grounds at issue in this
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`proceeding. By making this disclaimer, Patent Owner does not disclaim
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`any portion of any other claim of the ’883 patent. For the avoidance of
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`doubt, Patent Owner reserves the right to and intends to maintain and
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`enforce claims 1, 3, and 4 for their full statutory terms.
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`Thus, even if common law res judicata does apply, it would not operate to preclude
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`Patent Owner from asserting a bar based on privity.
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`Further, the application of res judicata in the instant proceeding would defeat
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`the intended purpose of “promoting judicial economy” and “preventing needless
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`litigation.” Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979). Because patent
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`owners are exposed to multiple proceedings by the same petitioner(s), imposing res
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`judicata here would have a chilling effect on patent owners filing disclaimers for
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`issues that they may otherwise determine are not worth the resources to contest. This
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`would force patent owners, petitioners, and the Board to expend resources
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`unnecessarily, which is contrary to the stated purpose of common law preclusion.
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`IV. Conclusion
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`For the above reasons, and those provided in Paper 7, Patent Owner
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`respectfully requests that the Board allow the discovery proposed in Exhibit 2001.
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Date: April 17, 2015
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`Paper 9
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`Filed: April 17, 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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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Certificate of Service
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`Paper 9
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`Filed: April 17, 2015
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`REPLY IN SUPPORT OF ITS MOTION FOR DISCOVERY FROM
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`PETITIONER was served via e-mail on April 17, 2015, in its entirety on the
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`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
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`Date: April 17, 2015
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`7
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