United States Court of Appeals
`for the Federal Circuit
`______________________
`
`WI-FI ONE, LLC,
`Appellant
`
`v.
`
`BROADCOM CORPORATION,
`Appellee
`
`ANDREI IANCU, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2015-1944
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00601.
`
`______________________
`
`Decided: April 20, 2018
`______________________
`
`DONALD PUCKETT, Nelson Bumgardner PC, Fort
`Worth, TX, for appellant. Also represented by DOUGLAS
`AARON CAWLEY, McKool Smith, PC, Dallas, TX; PETER J.
`AYERS, Law Office of Peter J. Ayers, Austin, TX.
`
`
`

`

`
`
` 2
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`DOMINIC E. MASSA, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA, for appellee. Also represented by
`KEVIN GOLDMAN, KATIE SAXTON.
`
`NATHAN K. KELLEY, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, for
`intervenor.
` Also represented by KAKOLI CAPRIHAN,
`BENJAMIN T. HICKMAN, THOMAS W. KRAUSE, FRANCES
`LYNCH; JOYCE R. BRANDA, MARK R. FREEMAN, MELISSA N.
`PATTERSON, NICHOLAS RILEY, Appellate Staff, Civil Divi-
`sion, United States Department of Justice, Washington,
`DC.
`
`______________________
`
`Before DYK, BRYSON, and REYNA, Circuit Judges.
`Opinion for the court filed by Circuit Judge BRYSON.
`Dissenting opinion filed by Circuit Judge REYNA.
`
`BRYSON, Circuit Judge.
`These three consolidated cases return to the panel on
`remand from the en banc court. That court reviewed, and
`overturned, the panel’s decision that time-bar determina-
`tions by the Patent Trial and Appeal Board (“PTAB” or
`“Board”) in inter partes review proceedings are not ap-
`pealable. Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d
`1364 (Fed. Cir. 2018) (en banc).
`The three cases are related appeals from decisions of
`the PTAB. In each case, the Board held various claims of
`three patents owned by Wi-Fi One, LLC (“Wi-Fi”), to be
`invalid for anticipation.
`This panel initially wrote a precedential opinion in
`appeal No. 2015-1944, and decided Appeal Nos. 2015-1945
`and 2015-1946 by summary affirmance. See Wi-Fi One,
`LLC v. Broadcom Corp., 837 F.3d 1329 (Fed. Cir. 2016);
`Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1945, 668 F.
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`3
`
`App’x 893 (Fed. Cir. 2016); Wi-Fi One, LLC v. Broadcom
`Corp., No. 2015-1946, 668 F. App’x 893 (Fed. Cir. 2016).
`Although the en banc court vacated the panel’s judg-
`ments in all three cases, the en banc opinion addressed
`only the appealability of the PTAB’s time-bar determina-
`tion under 35 U.S.C. § 315(b). The court did not address
`the remaining portions of the panel’s decision in Appeal
`No. 2015-1944 or the aspects of the summary affirmances
`in Appeal Nos. 2015-1945 and 2015-1946 that related to
`the merits of Wi-Fi’s appeals.
`The panel now reaffirms the portions of its three prior
`decisions that were left unaffected by the en banc court’s
`decision. Accordingly, in Appeal No. 2015-1944, parts III
`and IV of the original panel opinion are reinstated and
`are reproduced in substance as parts III and IV of this
`opinion. In part II of this opinion, the panel addresses the
`merits of Wi-Fi’s time-bar claim that the en banc court
`held to be appealable. On that issue, we affirm the deci-
`sion of the PTAB. In separate orders, we reinstate the
`summary affirmances of the PTAB’s decisions in Appeal
`Nos. 2015-1945 and 2015-1946. Because the time-bar
`issue raised in those cases is identical to the time-bar
`issue raised in Appeal No. 2015-1944, we affirm the
`PTAB’s decision as to the time-bar issue in those cases as
`well.
`
`I
`A
`The patent at issue in this case, U.S. Patent No.
`6,772,215 (“the ’215 patent”), is directed to a method for
`improving the efficiency by which messages are sent from
`a receiver to a sender in a telecommunications system to
`advise the sender that errors have occurred in a particu-
`lar message.
`In the technology described in the patent, data is
`transmitted in discrete packets known as Protocol Data
`
`

`

`
`
` 4
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`Units (“PDUs”). The useful data or “payload” in those
`packets is carried in what are called user data PDUs (“D-
`PDUs”). Each D-PDU contains a sequence number that
`uniquely identifies that packet. The sequence number
`allows the receiving computer to determine when it either
`has received packets out of order or has failed to receive
`particular packets at all, so that the receiver can correctly
`combine the packets in the proper order or direct the
`sender to retransmit particular packets as necessary.
`The receiver uses a different type of packet, a status
`PDU (“S-PDU”), to notify the sender of the D-PDUs it
`failed to receive. The ’215 patent is concerned with organ-
`izing the information contained in S-PDUs efficiently so
`as to minimize the size of the S-PDUs, thus conserving
`bandwidth.
`The patent discloses a number of methods for encod-
`ing the sequence numbers of missing packets in S-PDUs.
`Some of those methods use lists that indicate which
`packets are missing by displaying the ranges of the se-
`quence numbers of the missing packets. Other methods
`are based on bitmaps that use binary numbers to report
`on the status of a fixed number of packets relative to a
`starting point.
`Depending on how many packets fail to be properly
`delivered and the particular sequence numbers of the
`errant packets, different methods can be more or less
`efficient for encoding particular numbers and ranges of
`errors. In order to leverage the benefits of the different
`encoding methods, the patent discloses an S-PDU that
`can combine multiple message types in an arbitrary
`order, with “no rule on the number of messages or the
`type of message that can be included in the S-PDU.” ’215
`patent, col. 7, ll. 55-57. Using that technology, S-PDUs
`can be constructed with a combination of the encoding
`types best suited for the particular errors being encoded,
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`5
`
`so that the S-PDU can be more compact than an S-PDU
`that uses a single encoding type.
`B
`In 2010, Wi-Fi’s predecessors, Ericsson, Inc., and Te-
`lefonaktiebolaget LM Ericsson (collectively, “Ericsson”)
`filed a patent infringement action against D-Link Sys-
`tems, Inc., and several other defendants in the United
`States District Court for the Eastern District of Texas.
`Ericsson alleged infringement of the ’215 patent and eight
`other patents. Following a jury trial, that case resulted in
`a judgment of infringement as to the ’215 patent and two
`other patents, U.S. Patent Nos. 6,424,625 (“the ’625
`patent”) and 6,566,568 (“the ’568 patent”). See generally
`Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed.
`Cir. 2014).1
`In 2013, shortly after judgment was entered in the
`district court action, Broadcom petitioned for inter partes
`review of the ’215 patent, the ’625 patent, and the ’568
`patent. Broadcom was the manufacturer of two chips that
`formed the basis for some of the infringement allegations
`in the district court case, but Broadcom was not a defend-
`ant in that litigation. The inter partes review proceeding
`at issue in this case (PTAB No. IPR2013-00601) concerned
`the ’215 patent. The ’568 patent was at issue in PTAB
`No. IPR2013-00602, which is the subject of Appeal No.
`2015-1945 in this court, and the ’625 patent was at issue
`in PTAB No. IPR2013-00636, which is the subject of
`Appeal No. 2015-1946 in this court.
`
`
`1 During the proceedings before the PTAB, Ericsson
`assigned its interest in the ’215 patent to Wi-Fi. For
`simplicity, Wi-Fi will be referred to as the patent owner
`throughout this opinion.
`
`

`

`
`
` 6
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`At the outset of the PTAB proceedings, Wi-Fi sought
`to bar Broadcom from obtaining inter partes review of the
`’215 patent. Wi-Fi contended that some or all of the
`defendants in the D-Link case were in privity with Broad-
`com or were real parties in interest in the inter partes
`review proceeding brought by Broadcom. Because the D-
`Link defendants would be time-barred from seeking inter
`partes review under 35 U.S.C. § 315(b), Wi-Fi argued that
`Broadcom’s petition should be time-barred as well. The
`Board rejected that argument, holding that the evidence
`did not show either that Broadcom was in privity with
`any of the D-Link defendants or that any D-Link defend-
`ant was a real party in interest in the inter partes review
`proceeding.
`The Board then instituted inter partes review of the
`’215 patent, finding that there was a reasonable likelihood
`that the challenged claims were anticipated by U.S.
`Patent No. 6,581,176 to Seo. The Board declined to
`institute review based on another reference that the
`Board considered redundant in light of Seo.
`Seo teaches improvements to what are known as neg-
`ative acknowledgement (“NAK”) frames. NAK frames are
`sent by the receiving unit to inform the transmitting unit
`that frames sent by the transmitting unit were misdeliv-
`ered. The Seo method uses a single packet to provide
`information about multiple misdelivered frames, so that
`“only one NAK control frame for all missed user data
`frames is transmitted to a transmitting station to require
`a retransmission of the missed user data when a timer for
`an NAK is actually expired.” Seo, col. 5, ll. 32-35.
`Seo describes the structure of the disclosed NAK
`frames. The frames include a field called “NAK_TYPE”
`that indicates how the NAK frame represents missing
`frames. If the NAK_TYPE is set to “00,” then the missing
`frames are encoded as a list, and the frame requests
`retransmission of all user data frames between the first
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`7
`
`missing frame and the last, represented by the “FIRST”
`and “LAST” values. If the NAK_TYPE is set to “01,” then
`the NAK frame transmits information about the missing
`transmitted frames using a bitmap. In that case, the
`NAK frame contains the field “NAK_MAP_SEQ” to identi-
`fy the starting point of the bitmap and the field
`“NAK_MAP” to transmit the bitmap.
`Before the Board, Wi-Fi argued that the NAK_TYPE
`field disclosed in Seo is not a “type identifier field” and
`that Seo therefore does not satisfy the type identifier field
`limitation of the ’215 patent. Wi-Fi further argued that,
`even if Seo discloses that feature, the NAK_TYPE field is
`not found within a “message field,” as required by the
`claims at issue. The Board rejected those arguments,
`found that Seo disclosed all the limitations of the chal-
`lenged claims of the ’215 patent, and therefore held those
`claims to be unpatentable. The Board also rejected
`Wi-Fi’s argument that claim 15 of the ’215 patent re-
`quired some sort of “length field,” which Seo did not
`disclose. Finally, the Board held that Wi-Fi had not
`shown that Broadcom was in privity with the D-Link
`defendants, and therefore Broadcom was not barred from
`filing a petition for inter partes review.
`II
`On appeal, Wi-Fi reprises the argument that Broad-
`com’s petition for inter partes review is time-barred. Wi-
`Fi points out that the D-Link defendants would have been
`barred from seeking inter partes review of any of the
`claims at issue in the district court litigation because they
`did not petition for inter partes review within one year of
`the date on which they were served with the complaint in
`the district court action. See 35 U.S.C. § 315(b). Under
`that statute, Wi-Fi argues that Broadcom’s petition for
`inter partes review should have been dismissed because
`one or more of the D-Link defendants was in privity with
`
`

`

`
`
` 8
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`Broadcom or was a real party in interest in the inter
`partes review proceeding.
`Section 315(b) provides, in pertinent part: “An inter
`partes review may not be instituted if the petition re-
`questing the proceeding is filed more than 1 year after the
`date on which the petitioner, real party in interest, or
`privy of the petitioner is served with a complaint alleging
`infringement of the patent.” The use of the familiar
`common law terms “privy” and “real party in interest”
`indicate that Congress intended to adopt common law
`principles to govern the scope of the section 315(b) one-
`year bar. See Beck v. Prupis, 529 U.S. 494, 500-01 (2000)
`(“[W]hen Congress uses language with a settled meaning
`at common law, Congress ‘presumably knows and adopts
`the cluster of ideas that were attached to each borrowed
`word in the body of learning from which it was taken
`. . . .” (quoting Morrissette v. United States, 342 U.S. 246,
`263 (1952))); see also 154 Cong. Rec. S9987 (daily ed. Sept.
`27, 2008) (statement of Sen. Kyl) (“The concept of privity,
`of course, is borrowed from the common law of judg-
`ments.”).
`To determine whether a petitioner is in privity with a
`time-barred district court litigant, the Board conducts a
`“flexible” analysis that “seeks to determine whether the
`relationship between the purported ‘privy’ and the rele-
`vant other party is sufficiently close such that both should
`be bound by the trial outcome and related estoppels.”
`Patent and Trademark Office (“PTO”), Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012); see also id. (“Privity is essentially a shorthand
`statement that collateral estoppel is to be applied in a
`given case . . . .” (quoting 154 Cong. Rec. S9987 (daily ed.
`Sept. 27, 2008) (statement of Sen. Kyl))). To decide
`whether a party other than the petitioner is the real party
`in interest, the Board seeks to determine whether some
`party other than the petitioner is the “party or parties at
`whose behest the petition has been filed.” Id. at 48,759.
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`9
`
`“[A] party that funds and directs and controls an IPR or
`[post-grant review] proceeding constitutes a ‘real party-in-
`interest,’ even if that party is not a ‘privy’ of the petition-
`er.” Id. at 48,760.
`The interpretation of the concepts of privity and real
`party in interest set forth in the PTO’s Office Trial Prac-
`tice Guide and applied by the Board is consistent with
`general legal principles. See Taylor v. Sturgell, 553 U.S.
`880, 893-95 & n.8 (2008) (Privity is “a way to express the
`conclusion that nonparty preclusion is appropriate on any
`ground”; “a nonparty is bound by a judgment if she ‘as-
`sume[d] control’ over the litigation in which that judg-
`ment was rendered.”); see also 18A Charles Alan Wright,
`Arthur R. Miller & Edward H. Cooper, Federal Practice
`and Procedure § 4451, at 356 (3d ed. 2017) (“[I]t should be
`enough that the nonparty has the actual measure of
`control or opportunity to control that might reasonably be
`expected between two formal coparties.”).2
`A
` On the merits of the section 315(b) issue, Wi-Fi first
`argues that the Board applied the wrong legal standard
`when it determined that no district court defendant was
`either a privy of Broadcom or a real party in interest in
`the inter partes review proceeding. Specifically, Wi-Fi
`argues that the Board improperly required Wi-Fi to
`satisfy “a hard and absolute requirement that Broadcom
`must have had the right to control the District Court
`Litigation in order to find that a District Court Defendant
`was a real party in interest or privy,” and that the Board
`
`
`2 Wi-Fi has not taken issue with the analysis of the
`requirements to establish privity or real party in interest
`status under section 315(b) as set forth in the PTO’s
`Office Trial Practice Guide.
`
`

`

`
`
` 10
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`“made it abundantly clear that it viewed the District
`Court Defendants’ right to control this IPR to be of no
`importance whatsoever.” Under the Board’s legal test,
`according to Wi-Fi, “it is irrelevant if a District Court
`Defendant has an absolute right to control Broadcom’s
`conduct of the IPR (and even if it has been exercising
`actual control all along, such that Broadcom is a mere
`shill).”
` Wi-Fi mischaracterizes the Board’s decisions regard-
`ing section 315(b). Contrary to Wi-Fi’s contention, the
`Board recognized that there are a number of circumstanc-
`es in which privity might be found, including when the
`nonparty controlled the district court litigation. The
`Board’s decision to focus on that ground was in response
`to the specific arguments that Wi-Fi raised on the privity
`issue.
`In its motion for additional discovery, Wi-Fi began by
`noting that the Supreme Court in Taylor set forth six
`factors to consider in determining whether a nonparty to
`an action is bound by the judgment in the action. Wi-Fi
`argued that this case was governed by the factors provid-
`ing for nonparty preclusion based on a pre-existing “sub-
`stantive legal relationship” with a party to the action and
`the opportunity to control the litigation. In particular,
`Wi-Fi argued that the evidence would show that, by
`virtue of its indemnity relationship with at least two of
`the D-Link defendants, Broadcom “had the opportunity to
`control and maintains a substantive legal relationship
`with the D-Link Defendants sufficient to bind Broadcom
`to the District Court’s judgment.”
`In its decision on Wi-Fi’s motion, the Board first ob-
`served that privity depends on “whether the relationship
`between a party and its alleged privy is ‘sufficiently close
`such that both should be bound by the trial outcome and
`related estoppels.’”
` The Board further noted that
`“[d]epending on the circumstances, a number of factors
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`11
`
`may be relevant to the analysis, including whether the
`non-party ‘exercised or could have exercised control over a
`party’s participation in a proceeding,’ and whether the
`non-party is responsible for funding and directing the
`proceeding.”
`Turning to Wi-Fi’s argument, the Board stated that
`“[w]hen a patent holder sues a dealer, seller, or distribut-
`er of an accused product, as is the case at hand, indemnity
`payments and minor participation in a trial are not
`sufficient to establish privity between the non-party
`manufacturer of the accused device and the defendant
`parties.” The Board added that the fact that Broadcom
`filed an amicus curiae brief in the appeal from the district
`court judgment “shows interest in the outcome,” but “does
`not bind Broadcom to the trial below outcome or show
`that Broadcom exercised control over that outcome.” Nor
`did Broadcom’s litigation activity in another forum or its
`filing a petition for inter partes review “show control of
`the Texas Litigation or otherwise show that Broadcom
`would be bound by that outcome.”
`In its request for rehearing of the Board’s discovery
`order, Wi-Fi argued that it was error for the Board to
`require a showing that Broadcom controlled the Texas
`litigation; according to Wi-Fi, a “community of interest”
`was sufficient to establish privity. Responding to that
`argument, the Board noted that the PTO’s Office Patent
`Trial Practice Guide “emphasizes control, which implies
`that control is an important factor to establish privity.”
`Finally, in its request for rehearing of the Board’s Fi-
`nal Written Decision, Wi-Fi again argued that the Board
`had erred in “applying a legal standard imposing an
`inflexible standard requiring that Petitioner must have
`exercised control over the District Court Defendants in
`the District Court Litigation.” In addition, Wi-Fi argued
`that the Board had neglected to address the “real-party-
`in-interest” issue. Wi-Fi contended that under the
`
`

`

`
`
` 12
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`Board’s standard, Broadcom’s petition would not be
`barred “even if there were irrefutable evidence that the
`District Court Defendants had expressly hired Broadcom
`to file this IPR petition, and that the District Court De-
`fendants were paying for and controlling every aspect of
`Broadcom’s IPR activity.”
`In its decision on Wi-Fi’s request for rehearing, the
`Board explained that it had previously focused primarily
`on Broadcom’s “exercise of control, or opportunity to
`exercise control over the prior District Court lawsuit”
`because that was the focus of Wi-Fi’s argument. The
`Board went on to say that its earlier decisions “did not
`characterize the legal standard, for all cases, as being
`limited strictly to a petitioner’s control, or opportunity to
`control, a non-party in previous litigation.” The Board
`explained that, in its previous decisions in the case, it had
`addressed Wi-Fi’s theory “that the indemnity agreements
`imply that the District Court Defendants are real parties
`in interest in these inter partes reviews.”
`The Board thus made clear that it understood that
`privity and real-party-in-interest status could be estab-
`lished not only by Broadcom’s exercise of control over the
`district court proceedings, but also by the D-Link defend-
`ants’ exercise of control over the inter partes review
`proceeding. In sum, a review of the Board’s decisions in
`this case, in the context of the arguments Wi-Fi made at
`each stage, show that the Board did not apply a legally
`erroneous standard in deciding the “real party in interest,
`or privy” issue.3
`
`
`3 The dissent faults the Board for not discussing all
`of the Taylor factors bearing on a finding of privity. But
`the Board properly focused on the factors that Wi-Fi
`raised in its argument. While it recognized that a variety
`
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`13
`
`B
`Wi-Fi next contends that the Board improperly denied
`its requests for discovery of evidence such as the indemni-
`ty agreements between Broadcom and two of the D-Link
`defendants. That evidence, according to Wi-Fi, would
`have established that Broadcom and those defendants
`were in privity or that those defendants were real parties
`in interest in the IPR proceeding.
`Discovery in inter partes review proceedings is more
`limited than in proceedings before district courts or even
`other proceedings before the PTO. By statute, the Direc-
`tor of the PTO is authorized to prescribe regulations
`“setting forth standards and procedures for discovery of
`relevant evidence, including that such discovery shall be
`limited to—(A) the deposition of witnesses submitting
`affidavits or declarations; and (B) what is otherwise
`necessary in the interest of justice.” 35 U.S.C. § 316(a)(5).
`The legislative history of the America Invents Act con-
`firms that “[g]iven the time deadlines imposed on these
`proceedings,” it was intended that the PTO would “be
`conservative in its grants of discovery.” 154 Cong. Rec.
`S9988-89 (daily ed. Sept. 27, 2008) (remarks of Sen. Kyl).
`By regulation, the Board has provided for limited
`mandatory discovery, as well as a category called “addi-
`tional discovery.” 37 C.F.R. § 42.51. The discovery sought
`by Wi-Fi did not qualify as mandatory discovery and
`therefore was allowable, if at all, only as “additional
`discovery.” The Board’s rules provide that a party seek-
`ing additional discovery “must show that such additional
`discovery is in the interests of justice.” Id. § 42.51(b)(2)(i).
`That standard is more restrictive than the “good cause”
`
`
`of factors can contribute to a finding of privity, it limited
`its discussion to the arguments made by Wi-Fi.
`
`

`

`
`
` 14
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`standard that applies in post-grant review and covered
`business method proceedings. Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,761. Additional discovery, the
`Board has ruled, should be confined to “particular limited
`situations, such as minor discovery that PTO finds to be
`routinely useful, or to discovery that is justified by the
`special circumstances of the case.” Apple Inc. v. Achates
`Reference Publ’g Inc., No. IPR2013-00080, 2013 WL
`6514049, at *2 (PTAB Apr. 3, 2013) (quoting 154 Cong.
`Rec. S9988-89 (daily ed. Sept. 27, 2008) (remarks of Sen.
`Kyl)).
`
`After Broadcom petitioned for inter partes review, Wi-
`Fi moved for additional discovery under 37 C.F.R.
`§ 42.51(b). In its motion, Wi-Fi argued that the evidence
`would show that “Broadcom is in privity with at least one
`D-Link Defendant.” Wi-Fi cited evidence that at least two
`of the defendants had indemnity agreements with Broad-
`com, that Broadcom had communicated with some of the
`D-Link defendants during that litigation, and that, more
`generally, “Broadcom has been working behind the scenes
`to help defeat Ericsson’s infringement claims against its
`customers.” That level of coordination, Wi-Fi contended,
`“raises serious questions about whether Broadcom is in
`privity with the defendants and is likewise time barred
`from filing these petitions by § 315(b).”
`Wi-Fi requested a variety of documents, including any
`indemnity agreements, joint defense agreements, or other
`agreements relating to cooperation between Broadcom
`and any of the D-Link defendants. Wi-Fi also sought any
`correspondence between Broadcom and any of the D-Link
`defendants relating to (1) the filing of Broadcom’s peti-
`tions for inter partes review; (2) possible intervention by
`Broadcom in the D-Link litigation; (3) claim construction
`or interpretation of any of the patents at issue in that
`litigation; and (4) the validity or invalidity of any of the
`patents at issue in that litigation.
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`15
`
`Under the Board’s procedures, the burden is on the
`party seeking discovery to show that the requested dis-
`covery would be likely to produce favorable evidence. 37
`C.F.R. § 42.51(b)(2) (“The moving party must show that
`such additional discovery is in the interests of justice.”);
`Apple Inc., 2013 WL 6514049, at *2; Garmin Int’l, Inc. v.
`Cuozzo Speed Techs. LLC, No. IPR2012-00001, 2013 WL
`11311697, at *3 (PTAB Mar. 5, 2013) (“[T]he requester of
`information should already be in possession of a threshold
`amount of evidence or reasoning tending to show beyond
`speculation that something useful will be uncovered.
`‘Useful’ in that context does not mean merely ‘relevant’
`and/or ‘admissible.’ In [context], ‘useful’ means favorable
`in substantive value to a contention of the party moving
`for discovery.”).
`The Board decided that Wi-Fi had not met that
`standard, and therefore denied discovery. The Board’s
`administration of its rules for trial proceedings is re-
`viewed for an abuse of discretion. Ultratec, Inc. v. Cap-
`tionCall, LLC, 872 F.3d 1267, 1272 (Fed. Cir. 2017);
`Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d
`435, 442 (Fed. Cir. 2015).
`On appeal, Wi-Fi points to the evidence it presented
`regarding the relationship between Broadcom and the D-
`Link defendants, which included communications with
`one of the D-Link defendants regarding the district court
`litigation, an amicus brief filed by Broadcom in the appeal
`of that case, and Broadcom’s use of the report of one of the
`plaintiff’s experts from the district court litigation. In Wi-
`Fi’s view, that evidence indicates that Broadcom and the
`D-Link defendants were “closely coordinating their oppo-
`sition to the ’215 patent,” which should have been suffi-
`cient for the Board to order disclosure of the indemnity
`agreements and other requested discovery.
`The Board began its analysis of the discovery issue by
`asking whether there existed more than a “mere possibil-
`
`

`

`
`
` 16
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`ity” or “mere allegation that something useful [to the
`proceeding] will be found.” It then engaged in a detailed
`analysis of the issue of privity as applied in the context of
`section 315(b), from which it concluded that “[t]o show
`privity requires a showing that Broadcom would be bound
`to the outcome of the Texas Litigation,” and that “[t]o be
`bound, in normal situations, Broadcom must have had
`control over the Texas Litigation.” Under that standard,
`the Board concluded that “[p]aying for trial expenses
`pursuant to indemnity normally does not establish privity
`or control,” and that Wi-Fi’s “evidence and arguments fail
`to show that the sought-after discovery would have more
`than a mere possibility of producing useful privity infor-
`mation.”
`As noted, that legal standard is consistent with gen-
`eral legal principles, as explained in the PTO’s Office
`Patent Trial Practice Guide, 77 Fed. Reg. at 48759-60.
`Given that the Board explored the discovery issue in
`detail and applied the proper legal test for finding privity
`or real party in interest status under section 315(b), we
`decline to hold that the Board abused its discretion when
`it concluded that additional discovery was not warranted
`in this case.
`
`C
`Finally, Wi-Fi argues that the Board failed to provide
`an adequate explanation for its ruling on the section
`315(b) issue and that its decision on that issue was not
`supported by substantial evidence. We disagree with both
`propositions.
`In its Final Written Decision, the Board ruled that
`Wi-Fi had not shown that Broadcom was in privity with
`the D-Link defendants or that any of the D-Link defend-
`ants was a real party in interest in the inter partes review
`proceeding. In so ruling, the Board explained that Wi-Fi’s
`arguments were no different from the arguments Wi-Fi
`had made in its motion for additional discovery several
`
`

`

`WI-FI ONE, LLC v. BROADCOM CORP.
`
`17
`
`months earlier, and that “[t]he argument and evidence
`are unpersuasive for [the] same reasons explained in our
`Decision on Patent Owner’s Motion for Additional Discov-
`ery (Paper 23), which we adopt and incorporate by refer-
`ence.” As described above, that earlier decision dealt at
`length with the section 315(b) issue, as did the Board’s
`decision in response to Wi-Fi’s request for reconsideration
`of that order. In its subsequent decision in response to
`Wi-Fi’s request for rehearing of the Final Written Deci-
`sion, the Board further addressed the section 315(b) issue,
`again writing on that issue at some length. In light of its
`multiple and detailed discussions of the section 315(b)
`issue, the Board cannot fairly be accused of not providing
`an adequate explanation for its decision on that question.
`We further hold that the Board’s decision was sup-
`ported by substantial evidence. There was essentially no
`evidence before the Board that any of the D-Link defend-
`ants was a real party in interest in the inter partes review
`proceeding. While Wi-Fi has speculated that Broadcom
`may have been serving the interests of the D-Link de-
`fendants when it sought inter partes review, Broadcom
`clearly has an interest of its own in challenging the ’215
`patent, based on its manufacture of the assertedly infring-
`ing chips. Other than Wi-Fi’s conjecture, there is no
`evidentiary support for Wi-Fi’s theory that Broadcom was
`acting at the behest or on behalf of the D-Link defend-
`ants.
`On the issue of privity, the Board reasonably conclud-
`ed that the evidence failed to show that Broadcom had
`sufficient control over the district court litigation to
`justify treating Broadcom as a virtual party to that pro-
`ceeding. In applying the privity requirement of section
`315(b), the Board has stated that the inquiry typically
`requires proof that the party in question had sufficient
`control over the prior proceeding that it could be bound by
`the results of that proceeding. See Aruze Gaming Macau,
`Ltd. v. MGT Gaming, Inc., No. IPR2014-01288, 2015 WL
`
`

`

`
`
` 18
`
`WI-FI ONE, LLC v. BROADCOM CORP.
`
`780607, at *4-8 (PTAB Feb. 20, 2015) (discussing the six
`Taylor factors and emphasizing the “flexible and equita-
`ble considerations” involved); BAE Sys. Info. & Elec. Sys.
`Integration, Inc. v. Cheetah Omni, LLC, No. IPR2013-
`00175, 2013 WL 5653116, at *2 (PTAB July 23, 2013)
`(holding that parties are not privies based only on a
`customer-seller relationship); Apple Inc., 2013 WL
`6514049, at *2-4 (holding that an indemnification provi-
`sion is not indicative of privity or real-party-in-interest
`status).
`There was no such showing of control in this case.
`Wi-Fi’s evidence showed that Broadcom’s interests as to
`the issue of infringement were generally aligned with
`those of its customers, and that Broadcom had indemnity
`agreements with at least two of the D-Link defendants.
`But the evidence did not show that Broadcom had the
`right to control that litigation or otherwise partici