Trials@uspto.gov
`571-272-7822
`
`
` Paper 10
`Entered: May 1, 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 Patent Judge,
`BARBARA A. BENOIT, and LYNNE E. PETTIGREW, Administrative
`Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`I. INTRODUCTION
`Pursuant to authorization from the panel, C-Cation Technologies,
`LLC (“Patent Owner”) filed a Motion for Discovery from Petitioner.
`Paper 7 (“Mot.”). In its motion, Patent Owner seeks production of
`
`
`571-272-7822
`
`
` Paper 10
`Entered: May 1, 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 Patent Judge,
`BARBARA A. BENOIT, and LYNNE E. PETTIGREW, Administrative
`Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`I. INTRODUCTION
`Pursuant to authorization from the panel, C-Cation Technologies,
`LLC (“Patent Owner”) filed a Motion for Discovery from Petitioner.
`Paper 7 (“Mot.”). In its motion, Patent Owner seeks production of
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`indemnification agreements between ARRIS Group, Inc. (“Petitioner”) and
`Comcast Corporation relating to a 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.). Id. at 4 (citing Ex. 2001).
`According to Patent Owner, it “expects that the requested discovery,
`together with additional information recently obtained by Patent Owner, will
`make a compelling showing” of privity between Petitioner and Comcast,
`thus establishing that the Petition in this case, challenging claims 1, 3, and 4
`of U.S. Patent No. 5,563,883 (“the ’883 patent”), is time-barred under 35
`U.S.C. § 315(b). Id. at 4–5.
`As Patent Owner indicates, 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. Mot. 2. In
`IPR2014-00746, in a decision instituting inter partes review of claim 14 of
`the ’883 patent, 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 Techs., LLC, Case IPR2014-00746,
`slip op. at 8–10 (PTAB Nov. 24, 2014) (Paper 22). Ultimately, Patent
`Owner filed a statutory disclaimer of claim 14 under 35 U.S.C. § 253 and
`37 C.F.R. § 1.321(a), and the Board granted Patent Owner’s request for
`adverse judgment. ARRIS Group, Inc. v. C-Cation Techs., LLC, Case
`IPR2014-00746 (PTAB Feb. 18, 2015) (Paper 28).
`Petitioner opposes the Motion, arguing that the requested discovery is
`not in the “interests of justice” because it relates to an issue that cannot be
`litigated in this case. Paper 8 (“Opp.”), 8 (citing 37 C.F.R. § 42.51(b)(2)).
`2
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`In terms of the factors outlined in Garmin International, Inc. v. Cuozzo
`Speed Technologies LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013)
`(Paper 26), Petitioner contends that “something useful will not be found by
`the sought-after discovery because even if everything Patent Owner says
`about the discovery is true, Patent Owner cannot relitigate the privity issue
`in this proceeding.” Opp. 8. Specifically, Petitioner argues that both Board
`rules and principles of administrative res judicata preclude Patent Owner
`from raising the privity issue in this case. Id. at 4–8.
`For the reasons discussed below, we are not persuaded by Petitioner’s
`preclusion arguments, and we grant Patent Owner’s limited discovery
`request.
`
`II. DISCUSSION
`A. Petitioner’s Arguments
`First, Petitioner argues that Board rules prohibit Patent Owner from
`raising the privity issue. Opp. 4. Specifically, Petitioner relies on 37 C.F.R.
`§ 42.73(a), which provides that “[a] judgment, except in the case of a
`termination, disposes of all issues that were, or by motion reasonably could
`have been, raised and decided.” Petitioner argues that whether Petitioner
`was in privity with Comcast in the Comcast district court litigation is an
`issue that reasonably could have been raised in the earlier instituted
`proceeding, and actually was raised during preliminary proceedings. Opp. 4.
`We are not persuaded that 37 C.F.R. § 42.73(a) prohibits Patent
`Owner from arguing that the Petition in this case is time-barred under
`35 U.S.C. § 315(b) based on a privity relationship between Petitioner and
`Comcast. Instead, we agree with Patent Owner that § 42.73(a) relates to the
`scope of a judgment, not its preclusive effect with regard to other
`3
`
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`IPR2015-00635
`Patent 5,563,883
`
`proceedings. See Paper 9 (“Reply”), 2. In other words, the rule provides
`that a judgment disposes of all issues in a particular proceeding that were, or
`reasonably could have been, raised and decided. Petitioner cites no authority
`for its contention that the adverse judgment entered in IPR2014-00746 with
`respect to claim 14 has preclusive effect beyond that proceeding.
`Petitioner also argues that the common law doctrine of res judicata, or
`claim preclusion, bars Patent Owner from raising the privity issue in this
`case. Opp. 5–8. “Claim preclusion applies when ‘(1) the parties are
`identical or in privity; (2) the first suit proceeded to a final judgment on the
`merits; and (3) the second claim is based on the same set of transactional
`facts as the first.’” Phillips/May Corp. v. United States, 524 F.3d 1264,
`1268 (Fed. Cir. 2008) (quoting Ammex, Inc. v. United States, 334 F.3d 1052,
`1055 (Fed. Cir. 2003)). “The general concept of claim preclusion is that
`when a judgment is rendered in favor of a party to litigation, the plaintiff
`may not thereafter maintain another action on the same ‘claim,’ and defenses
`that were raised or could have been raised by the defendant in that action are
`extinguished.” Foster v. Hallco Mfg. Co., 947 F.2d 469, 478 (Fed. Cir.
`1991) (citing Restatement (Second) of Judgments, §§ 18, 19 & comments
`(1982)) (emphasis omitted). The doctrine has been applied to the final
`judgment of an administrative agency acting in a judicial capacity that has
`resolved disputed issues of fact that the parties have had an adequate
`opportunity to litigate. Phillips/May, 524 F.3d at 1268 (citing United States
`v. Utah Constr. & Mining Co., 384 U.S. 394, 422 (1966)).
`Petitioner argues that claim preclusion applies to defenses, including
`Patent Owner’s “defense” of privity. Opp. 5 (citing Foster, 947 F.2d at
`476). Thus, Petitioner asserts that Patent Owner’s privity argument in this
`4
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`case is identical to the one raised in IPR2014-00746, and therefore satisfies
`the third element for claim preclusion—that the second claim is based on the
`same set of transactional facts as the first. Id. at 6. When applying claim
`preclusion to a defense, however, Foster makes clear that the defense is not
`the “claim” for purposes of determining whether the second action is the
`same as the first, but instead “‘claim’ is used in the sense of the facts giving
`rise to the suit.” Foster, 947 F.2d at 478. In Foster, for example, a
`challenge to validity in a patent infringement suit was not a “claim” but a
`defense to the patentee’s “claim” of infringement. Id. at 479. Thus, after a
`consent judgment in a first infringement suit, claim preclusion barred the
`alleged infringer from challenging the validity of the patent as a defense in a
`second infringement suit only if the two suits presented the same claim, or
`cause of action, a question that turned on whether the allegedly infringing
`devices in the two suit were essentially the same. Id. at 479–480.
`Applying those principles to this case, we determine that claim
`preclusion does not bar Patent Owner from raising the privity issue in this
`case. In IPR2014-00746, the Board instituted trial and entered judgment for
`only claim 14 of the ’883 patent. The Petition in this case challenges claims
`1, 3, and 4, which were not part of the instituted proceeding in IPR2014-
`00746, and, moreover, challenges them based on different grounds from
`those asserted by Petitioner in IPR2014-00746. See Paper 2 (“Pet.”), 2–3
`n.1. Thus, there is no question that the “claim,” or cause of action, in this
`case—Petitioner’s challenge to claims 1, 3, and 4—is not “based on the
`same set of transactional facts as the first” proceeding, IPR2014-00746.
`Accordingly, the doctrine of claim preclusion does not foreclose Patent
`
`5
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`Owner from raising privity between Petitioner and Comcast as an issue in
`this case.
`
`B. Garmin Factors
`As the Board did in IPR2014-00746, we find that Patent Owner has
`shown sufficient support for its limited discovery request. Of the five
`Garmin factors for determining whether additional discovery in “necessary
`in the interests of justice,” Petitioner argues only the first one weighs against
`granting the requested discovery. Specifically, Petitioner contends that
`“something useful” will not be found because Patent Owner is foreclosed
`from raising privity in this case. Opp. 8. As discussed above, we are
`unpersuaded by Petitioner’s preclusion argument.
`For reasons similar to those provided in IPR2014-00746, we are
`persuaded that Patent Owner has set forth a threshold amount of evidence
`sufficient to deem the very limited request—indemnification agreements
`referencing or contingent on Petitioner’s ability to control the Comcast
`litigation—necessary in the interests of justice. See ARRIS Group, Inc. v. C-
`Cation Techs., LLC, Case IPR2014-00746 (PTAB July 24, 2014) (Paper 15).
`Although the Board determined in the earlier institution decision that Patent
`Owner had not provided, at that stage of the proceeding, evidence sufficient
`to demonstrate that Petitioner exercised control or could have exercised
`control as provided for in the agreements, ARRIS Group, Inc. v. C-Cation
`Techs., LLC, Case IPR2014-00746, slip op. at 10 (PTAB Nov. 24, 2014)
`(Paper 22), Patent Owner asserts that it recently has obtained additional
`information that, together with the requested discovery, will be sufficient to
`make that showing. Mot. 4–5. Under these circumstances, we are
`
`6
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`persuaded that Patent Owner’s limited request for production of
`indemnification agreements is in the interests of justice.
`
`III. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that Petitioner shall produce:
`Agreement(s) between Arris and Comcast under which
`Comcast requested indemnification for the claims brought
`against Comcast in the Texas Litigation1 that reference (or are
`contingent on) Arris’s ability to control the litigation;
`and
` FURTHER ORDERED that Petitioner is authorized to file a motion
`for a protective order pursuant to the guidance provided in our Order dated
`April 2, 2015.
`
`
`
`1 C-Cation Techs., LLC v. Comcast Corp., Case No. 2:11-cv-00030 (E.D.
`Tex.).
`
`7
`
`
`
`IPR2015-00635
`Patent 5,563,883
`
`FOR PETITIONER:
`Andrew R. Sommer
`asommer@winston.com
`
`Jonathan E. Retsky
`jretsky@winston.com
`
`FOR PATENT OWNER:
`Lewis V. Popovski
`lpopovski@kenyon.com
`
`Jeffrey S. Ginsberg
`jginsberg@kenyon.com
`
`David J. Kaplan
`djkaplan@kenyon.com
`
`David J. Cooperberg
`dcooperberg@kenyon.com
`
`8
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