Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
A couple of days ago someone said they were in Israel speaking to an IP tech executive about UOIP
Could this be the reason
Wouldn't it be funny all the weak sell up till March 11, and on the 12th a settlement is announced, I always like the day after. end of the world scenario.
Well put, stockfan100
Close of Expert Discovery February 5, 2019
For all of us Who Are Long: We are not concerned about the fluctuation of the stock price On a day-to-day basis. We are only focusing on Court dates And Court Postings. Everything else is just opinion Even where we think the price of the stock should be at a particular time. Settlement / Judgment. Is all we are concerned about.
I haven't said it already, Thanks everyone, Happy New Year's
The next date for us to look toward Is: 01/18/19
11/05/2018 23 MOTION of Appellee Cisco Systems, Inc. to extend the time to 01/18/2019 to file Response/Reply.
Happy new years I AM Ram! Nice to see you backHaven't heard from you in a while
Hope all is going well.
Supreme Court Asked to Decided if AIA Creates Standing for Any Party to Appeal PTAB Decisions
https://www.ipwatchdog.com/2018/12/26/supreme-court-asked-aia-creates-standing-ptab/id=104158/
JTEKT argues that its case merits review because the issue affects numerous IPR petitioners, especially operating companies attempting to perform due diligence before finalizing product development. JTEKT cites a study of IPR filings showing that 20 percent of IPRs are petitioned to challenge patent claims which haven’t been asserted in district court. This issue also affects third-party petitioners like RPX Corporation and the petition notes that the issues in this case are similar to those raised in RPX Corp. v. ChanBond LLC, another case regarding Article III standing for appeals of IPR decisions and JTEKT argues that its petition should be considered along with that case. Baker noted that the Supreme Court had invited the U.S. Solicitor General to submit a memo on RPX Corp. “Often, whatever the Solicitor General opines, the Supreme Court follows,” Baker said.
A Tony, any ideas of a location where we can all meet at when this is all done.
I would love to see the Face behind the comment
Well said AllinFun, I agree 100%
This investment is something you put it on the back burner Forget about it and let it simmer. Then go about your life and when it's ready, we will take it out and enjoy the benefits.
Remember a watched pot never bowls.
The real interesting fact about that story is that NBC is the parent company of Comcast which means deeper pockets
LOL! A.J.
Thank you AJ I just sent this to:
Mr. Rick Aspan publicrelations@commscope.com
What is Commscope position on the ongoing lawsuit between UnifiedOnline, Inc. And the cable company of which Ariss will be liable for?
Has Commscope looked into their responsibility for this debt in the forecast and have you read Ariss financials and do you understand the fact that the indemnification disclosed in the footnotes may represent a contingent liability and expense that might have to be "booked" on their financials once they lose the case that they have involved themselves in, despite not being named
Each one of us should contact CommScope and ask them for a comment on the lawsuit between UnifiedOnline, Inc. And the cable company of which Ariss will be liable for
To force there are hands
Rick Aspan, CommScope
+1 708-236-6568 or publicrelations@commscope.com
I count 17 cable companies on that list not 13
$5.01 a share
A settlement can happen at anytime and the two parties agree to the settlement the case is over but that settlement would have to cover a lot of stuff, there's a lot more then 13 cable companies out there. Royalties, foreign markets. Years of infringement. @$5 a share
First it's on the Gray sheet, Second who cares if other people want to buy the stock, Us's longer are not trying to Flip the stock we are here to the finish line (buyout, settlement, or a court order payment) these are our only option @$5. a share
Right now December 14, 2018 is the only day that matters
Trial scheduling conference, w/ parties to submit a joint status report w/ proposal(s) one week in advance: December 14, 2018
On this day will find out exactly where we stand! @$5.00 share
It's a good thing we are not suing ARRIS, thats why we went after 13 Cable companies!
There are 18 cable companies on that document
Case 1:15-cv-00842-RGA
Document 316
Filed 10/03/18
Page 1 of 2 PageID #: 11945
600 N. King Street ? Suite 400
P.O. Box 25130 ? Wilmington, DE 19899 Zip Code For Deliveries 19801
Writer’s Direct Access: (302) 429-4232 sbrauerman@bayardlaw.com
VIA CM/ECF & HAND DELIVERY (FILED UNDER SEAL)
The Honorable Richard G. Andrews
United States District Court for the District of Delaware J. Caleb Boggs Federal Building
844 North King Street
Wilmington, Delaware 19801
September 21, 2018
Re: ChanBond, LLC v. Atl. Broadband Group, LLC, et al., Cons. C.A. No. 15-842-RGA Dear Judge Andrews:
Pursuant to the Court’s September 17, 2018 Oral Order (D.I. 312), ChanBond LLC provides this response to Defendants’ September 19, 2018 letter.
ChanBond notes that while Defendants stated that following the August 9, 2018 discovery conference “counsel for ChanBond informed Defendants, for the first time, that certain documents were being withheld not based on any ChanBond privilege, but rather, based on the alleged privilege of third-party IP Navigation,” this issue was first raised by Defendants during a meet and confer after the conference. This should have been anticipated by Defendants in light of the fact that Defendants were aware that Deirdre Leane was a principal and/or executive of both IP Nav and ChanBond. Defendants should have expected Ms. Leane to have documents for both IP Nav and ChanBond.
I. IP Navigation Can Claim Work Product Privilege
In order to claim work product privilege for a document, it must be determined if that document was prepared in anticipation of litigation. The test employed by courts is whether “in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared or obtained because of the prospect of litigation.” United States v. Rockwell Int’l, 897 F.2d 1255, 1266 (3rd Cir. 1990) (internal quotations and citation omitted). Defendants argue that entries 481–483, 545, 794–795, 804–805, 824, 894–895, 899, 901, and 903 are not covered by the work product privilege because they were prepared solely for business reasons. However, “work product protection cannot be decided simply by looking at one motive that contributed to a document’s preparation. The circumstances surrounding the document’s preparation must also be considered.” In re Grand Jury Subpoena (Torf), 357 F.3d 900, 908 (9th Cir. 2004). While the documents may have had a business purpose, the nature of the documents indicates that the primary purpose was clearly for litigation purposes. See Phillips Elecs. N. Am.
Case 1:15-cv-00842-RGA Document 316 Filed 10/03/18 Page 2 of 2 PageID #: 11946
The Honorable Richard G. Andrews September 21, 2018 Page 2
Corp. v. Universal Elecs. Inc., 892 F.Supp. 108, 110 (3rd Cir. 1995); see also Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453, 2018 WL 798731, at *1 (D. Del. Feb. 9, 2018) (“A document will be granted protection from disclosure if the court finds that the “primary” purpose behind its creation was to aid in possible future litigation.”).
II. Entry 180 Is Protected Under Work Product Privilege
Defendants argue that entry 180 is not protected because IP Nav did not provide legal advice to ChanBond. However, who prepared the documents in anticipation of litigation and this is clear from the nature of the documents. See Phillips, supra.
III. Entries 2, 3, 51, 266, 290, and 822 Are Protected Under Work Product Privilege
Defendants’ argument that entries 2, 3, 51, 266, 290, and 822 are not protected fails for the same reasons stated in Section I, supra. These documents were prepared in anticipation of litigation.
IV. Entry 588 Is Protected Under Work Product Privilege
Entry 588 is a draft patent prosecution document. When patent prosecution activities take place concurrently with, or are in anticipation of, litigation, the work product privilege applies. See In re Gabapentin Patent Litig., 214 F.R.D. 178, 186 (D.N.J. 2003) (“[D]ocuments pertaining to the patent application process which were also prepared because of actual or anticipated litigation may be protected by the work product doctrine.”) (internal quotations and citation omitted). ChanBond acknowledges that the scope of the privilege is limited but asserts that here the document was prepared in anticipation of litigation. See Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 151–152 (D. Del. 1977) (“The scope of that privilege is still limited, however, by the requirement that the document be prepared ‘with an eye toward litigation.’”). The privilege is established by the fact that (Ex. 1 of Defendants’ September 19, 2018 Letter to the Court, Entry 594.) Additionally, Defendants’ argument that ChanBond cannot claim this as its privilege because it was prepared a few days before ChanBond acquired the patents at issue takes an unrealistic view of the world. It is reasonable to say that prior to the formality of signing the patent acquisition agreement that ChanBond would have begun to prepare documents in anticipation of litigation.
ChanBond respectfully requests that the Court deny Defendants’ request to produce the 29 documents.
cc: All counsel 37710-1
Case 1:15-cv-00842-RGA Document 315 Filed 10/03/18 Page 1 of 4 PageID #: 11933
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
)
) C.A. No. 15-842 (RGA)
) CONSOLIDA TED
) ) )
DEFENDANTS’ LETTER BRIEF RELATED TO IN CAMERA REVIEW OF CERTAIN CHANBOND DOCUMENTS
IN RE CHANBOND, LLC,
PATENT LITIGATION )
OF COUNSEL:
Michael L. Brody Jonathan E. Retsky WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601
(312) 558-5600
Krishnan Padmanabhan Anup K. Misra
WINSTON & STRAWN LLP 200 Park Avenue
New York, NY 10166-4193 (212) 294-6700
James C. Lin
WINSTON & STRAWN LLP 275 Middlefield Road Menlo Park, CA 94025 (650) 858-6500
Original Filing Date: September 19, 2018 Redacted Filing Date: October 3, 2018
MORRIS, NICHOLS, ARSHT & TUNNELL LLP Jack B. Blumenfeld (#1014)
Jennifer Ying (#5550)
1201 North Market Street
P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 jblumenfeld@mnat.com jying@mnat.com
Attorneys for Defendants
REDACTED -- PUBLIC FILING
Case 1:15-cv-00842-RGA Document 315 Filed 10/03/18 Page 2 of 4 PageID #: 11934
Dear Judge Andrews:
Pursuant to the Court’s September 17, 2018 Oral Order (D.I. 312), Defendants provide this letter concerning the 29 documents submitted for in camera review from plaintiff ChanBond’s Seventh Amended Privilege Log.1 As explained below, each of the 29 documents at issue falls into one or more categories, none of which are privileged.
By way of background, following the August 9, 2018 discovery conference, the parties engaged in several meet and confers, at which point counsel for ChanBond informed Defendants, for the first time, that certain documents were being withheld not based on any ChanBond privilege, but rather, based on the alleged privilege of third-party IP Navigation (“IP Nav”). See D.I. 305. Counsel for ChanBond then served the August 23 log (Ex. 1), which contained for the first time an identification of the purported privilege holder.
I. IP Navigation Cannot Claim Any Work Product Privilege
Entries 481 – 483 are being withheld based on IP Nav’s supposed work product privilege, even though tha
(see D.I. 291, Ex. 6). But, IP Nav’s principal, Ms. Deirdre Leane, See Ex. 2, Leane Tr. 169:16 – 170:17. And IP Nav’s only agreement related
Ex. 3, CHANBOND_010611-12 (emphasis added). Thus, IP
Nav’s pre-acquisition analysi
and there can be no claim of “work product” for these pre-acquisition documents. See Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453, 2018 WL 798731, at *1 (D. Del. Feb. 9, 2018) (ordering production of documents prepared primarily for business purposes, obtaining a loan to fund litigation); Diagnostics Sys. Corp. v. Symantec Corp., C.A. No. 06-1211, 2008 WL 9396387, at *6 (C.D. Cal. Aug. 12, 2008) (initial efforts to monetize patents before specific litigation plans cannot be afforded work product protection). Indeed, no agreement between
IP Nav and the inventors was ever finalized or executed. See D.I. 294, Ex. 2
Entries 545, 794 – 795, 804 – 805, 824, 894 – 895, 899, 901, and 903 are being withheld as IP Nav’s supposed work product and attorney-client privilege. As discussed above, work product cannot apply. Nor can there be any attorney-client privilege. As IP Nav’s own principal testified (Ex. 2, Leane Tr. 173:3 – 175:9),
See In re Bristol-Myers Squibb Sec. Litig., C.A. No. 00-1990, 2003 WL 25962198, at *5 (D.N.J. June 25, 2003) (“When a client’s ultimate goal is not legal advice, but rather, business advice, the attorney-client privilege is inapplicable.” (citing United States v. Rockwell, Int’l, 897 F.2d 1255, 1264 (3d Cir.1990));
1
testified that
to the asserted patents – a agreement – states that
These documents are the following entries on ChanBond’s Seventh Supplemental Privilege Log: 2, 3, 51, 162, 163, 164, 165, 166, 167, 180, 266, 290, 481, 482, 483, 545, 588, 794, 795, 804, 805, 822, 824, 825, 894, 895, 899, 901, and 903. Although document 594 was initially identified (see D.I. 302), Defendants are no longer challenging entry 594.
Case 1:15-cv-00842-RGA Document 315 Filed 10/03/18 Page 3 of 4 PageID #: 11935
Immersion Corp. v. HTC Corp., C.A. No. 12-259, 2014 WL 3948021, at *2 (D. Del. Aug. 7, 2014) (no attorney-client privilege for documents provided “primarily for business purposes” relating to “licensing/royalty rates, [which was] the primary purpose of the Plaintiff’s business”).
II. There is No Privilege Because IP Navigation Did Not Provide Legal Advice
Entry 180 is supposedly being withheld as ChanBond’s privileged material. But, that document was authored by, and reflects the advice of, . Counsel for ChanBond has repeatedly made clear that IP Nav did not provide legal advice to ChanBond, or anyone else. D.I. 279 (June 13, 2018) Tr. at 38:5 – 12 (“[THE COURT]: And tell me if I’m being unfair in characterizing it here – what you’re saying is, IP Nav, which is not in the business of providing legal services . . . . MR. RASKIN: Yes.”); see also id. at 34:5 – 15; Ex. 4, Carter Tr. at 41:9 – 12
It is unclear how a document authored by —which did not provide legal services—can be protected under ChanBond’s privilege.
III. Entries with No Privilege Holder Identification Should be Produced
For entries 2, 3, 51, 266, 290, and 822, ChanBond did not identify the party, i.e. ChanBond or IP Nav, purporting to assert privilege/work product. See Ex. 1. ChanBond bears the burden of demonstrating that each of the withheld documents is entitled to a claim of privilege or work product. In re Joy Global, Inc., No. 01-039-LPS, 2008 WL 2435552, at *4–5 (D. Del. June 16, 2008). To satisfy that burden, ChanBond must provide sufficient information to “assess the applicability” of privilege. Chao v. Koresko, No. 04-3614, 2005 WL 2521886, at *4 (3d Cir. Oct. 12, 2005) (quoting Fed. R. Civ. P. 26(b)(5)). Without the basic information of whose privilege is purportedly being asserted, there is no credible way to assess the privilege claim. Moreover, ChanBond’s log is now on its seventh revision, and any shortcoming now cannot be inadvertent. Indeed, based on the date and recipients, these documents appear to be related to IP Nav’s business practice of assessing the viability of patents for monetization. See Section I, supra. Thus, there is substantial doubt regarding any claim of privilege/work product by IP Nav. See Acceleration Bay, 2018 WL 798731, at *1. Alternatively, these documents were all exchanged between IP Nav personnel prior to the acquisition of the patents-in- suit, and therefore cannot be withheld based on any purported ChanBond privilege. Having failed to show a prima facie case of privilege, these documents should be produced.
IV. Work Product Protection Does Not Apply to Draft Patent Applications
Entry 588 is a draft patent prosecution document supposedly prepared “in anticipation of litigation” dated April 6, 2015. Counsel for ChanBond confirmed that the
. It is unclear how ChanBond can claim work product protection over prosecution files for an unissued patent. See Application of Minebea Co., Ltd., 143 F.R.D. 494, 499 (S.D.N.Y. 1992) (“Generally, work performed by an attorney to prepare and prosecute a patent application does not fall within the parameters of the work-product protection . . . since the prosecution of patent application is a non-adversarial, ex parte proceeding.” (citing Hercules v. Exxon Corp., 434 F. Supp. 136, 152 (D. Del. 1977))). In addition, it is unclear how ChanBond can claim this work product benefit for a document prepared on before Chanbond acquired any rights to the portfolio
containing the asserted patents and its continuations on .
Defendants request that ChanBond be ordered to produce the 29 challenged documents.
2
Case 1:15-cv-00842-RGA Document 315 Filed 10/03/18 Page 4 of 4 PageID #: 11936
cc: Clerk of Court (by hand)
All Counsel of Record (by e-mail)
Respectfully,
/s/ Jennifer Ying
Jennifer Ying (#5550)
Thursday, September 27, 2018
1 Appeal docketed. Received: 09/20/2018. [553104] Fee/IFP due 10/11/2018. Entry of Appearance due 10/11/2018. Certificate of Interest due 10/11/2018. Docketing Statement due 10/11/2018. Certified List due 11/06/2018. [MJL] [Entered: 09/27/2018 05:03 PM]
No. 17-1686
================================================================
In The
Supreme Court of the United States
-?- RPX CORPORATION,
v. CHANBOND LLC,
-?-
Petitioner,
Respondent.
On Petition For A Writ Of Certiorari To The United States Court Of Appeals For The Federal Circuit
-?- REPLY BRIEF FOR PETITIONER
-?-
STEVE CHIANG RPX CORPORATION One Market Plaza,
Suite 1100
San Francisco, CA 94105 (415) 852-3188
SARAH E. JELSEMA
ANDREW M. MASON
JOHN D. VANDENBERG KLARQUIST SPARKMAN, LLP One World Trade Center 121 S.W. Salmon Street,
Suite 1600 Portland, OR 97204 (503) 595-5300
September 4, 2018
DANIEL B. RAVICHER
Counsel of Record
RAVICHER LAW FIRM PLLC 2000 Ponce De Leon Blvd.,
Suite 600
Coral Gables, FL 33134 (786) 505-1205 dan@ravicher.com
================================================================ COCKLE LEGAL BRIEFS (800) 225-6964 WWW.COCKLELEGALBRIEFS.COM
i
TABLE OF CONTENTS
Page REPLY BRIEF FOR PETITIONER..................... 1
I. THE QUESTION PRESENTED RAISES
AN IMPORTANT AND RARE ISSUE RE- GARDING SEPARATION OF POWERS AND THE RIGHT OF CONGRESS TO ENABLE APPEALS FROM ADMINIS- TRATIVE AGENCIES ............................... 2
II. RPX HAS NOT WAIVED THE QUES- TION PRESENTED BECAUSE, AS SET FORTH IN THE PETITION, THE RIGHT
TO APPEAL UNDER § 319 IS PART AND PARCEL WITH THE RIGHTS TO COM- PEL THE PATENT OFFICE TO CANCEL CLAIMS UNDER § 318 AND THE RIGHT
TO NOT BE ESTOPPED WHEN FILING ANOTHER PETITION FOR IPR UNDER
§ 311........................................................... 3
III. CHANBOND’S CITED CASES DID NOT PRESENT OR RESOLVE THE QUES- TION PRESENTED HERE ....................... 6
CONCLUSION..................................................... 10
CASES
ii
TABLE OF AUTHORITIES
Federal Election Commission v. Akins, 524 U.S.
11 (1998)....................................................................7
Hunt v. Wash. State Apple Advert. Comm’n, 432
U.S. 333 (1977) ..........................................................6
Hydro Investors, Inc. v. FERC, 351 F.3d 1192
(D.C. Cir. 2003) ..........................................................7
Lujan v. Defs. of Wildlife, 504 U.S. 555 (1992) .............6 Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168
(Fed. Cir. 2017) ..........................................................6
Scanwell Labs., Inc. v. Shaffer, 137 U.S. App.
D.C. 371, 424 F.2d 859 (1970) ...................................8
Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016)..............6 Wilcox Electric v. FAA, 119 F.3d 724 (8th Cir.
1997) ..........................................................................8
CONSTITUTIONAL PROVISIONS
U.S. Const., art. III........................................ 1, 5, 7, 8, 9
STATUTES
35 U.S.C. § 311 .................................................. 3, 4, 5, 7 35 U.S.C. § 315 .................................................. 3, 4, 5, 7 35 U.S.C. § 315(e)(1)..................................................4, 7 35 U.S.C. § 318 .................................................. 3, 4, 5, 6 35 U.S.C. § 318(a)..........................................................7
Page
iii
TABLE OF AUTHORITIES
Page 35 U.S.C. § 318(b)..........................................................7 35 U.S.C. § 319 ..........................................................4, 5
1
REPLY BRIEF FOR PETITIONER
This case implicates the power of Congress to grant members of the public the conditional right to compel agency action (here, compelling the agency to correct a past mistake upon a sufficient showing of that mistake) which right would be illusory for most members of the public if the agency’s denial of that right is not a sufficient injury in fact to appeal to an Article III Court. That such rights be non-illusory, and enforced by Article III Courts, is important not only to the patent system but to Congress’ power to rein in ad- ministrative agencies generally.
None of ChanBond’s three arguments in opposi- tion has merit. ChanBond first argues the question is not properly presented because it is premised on an ar- gument RPX waived below. But ChanBond either mis- understands the Petition’s arguments or seeks to artificially sever the right to compel patent claim can- cellation from the right of appeal. Further, ChanBond admits that the statutory basis for RPX’s injury was not only raised but addressed by the Court of Appeals below. ChanBond next argues the issue is narrow and will have limited impact because it only applies to par- ties who challenge patents that are not competitors of the patent holder. But the issue here is larger than that, as it relates to whether any agency’s disregard of rights Congress creates for a private party can create injury in fact to support standing for the party that otherwise would lack standing. ChanBond finally ar- gues that the decision below was correct. But Chan- Bond relies on the same inapplicable arguments as the
2
Court of Appeals, all of which RPX addressed in its Pe- tition, and inapposite caselaw. None of ChanBond’s ar- guments justify denying the Petition.
I. THE QUESTION PRESENTED RAISES AN IMPORTANT AND RARE ISSUE REGARDING SEPARATION OF POWERS AND THE RIGHT OF CONGRESS TO ENABLE APPEALS FROM ADMINISTRATIVE AGENCIES
ChanBond’s attempts to minimize the importance of the Question Presented ignore both the broader im- plications beyond inter partes reviews and also Con- gress’ intent in allowing parties not necessarily charged with infringement of a patent to cause the Pa- tent Office to cancel invalid claims. See Brief in Oppo- sition at 13-18.
The Question Presented is important because it relates to Congress’ power to confer rights whose de- nial constitutes injury in fact for standing. While the context of this case is about patents, the impact of the Court’s resolution of this question will span much fur- ther and potentially impact every situation where Con- gress passes statutes granting particularized rights to private parties to compel agency action, which rights would be illusory if their denial by the agency does not constitute an injury in fact.
Further, here, Congress knew full well how to identify the class of parties to whom it wished to confer standing. As pointed out in the Petition, Congress chose to grant any party other than the patent holder
3
the right to file an inter partes review but at the same time chose to limit to only those who had been sued for or accused of infringing a patent the right to file a Cov- ered Business Method (“CBM”) review. Thus, even if the parties who RPX claims to compete with are small in number, it was nonetheless important enough in Congress’ opinion to include that class in the group of those who can appeal inter partes review final deci- sions.
II. RPX HAS NOT WAIVED THE QUESTION PRESENTED BECAUSE, AS SET FORTH IN THE PETITION, THE RIGHT TO APPEAL UNDER § 319 IS PART AND PARCEL WITH THE RIGHTS TO COMPEL THE PATENT OFFICE TO CANCEL CLAIMS UNDER § 318 AND THE RIGHT TO NOT BE ESTOPPED WHEN FILING ANOTHER PETITION FOR IPR UNDER § 311
ChanBond’s waiver theory (see Brief in Opposition at 9-13) is premised on a misunderstanding of the Petition’s arguments or on artificially severing the right of cancellation from the right of appeal, which the statutory framework precludes. In the Petition, RPX does not suggest the right to appeal under § 319 pro- vides the injury in fact for standing to do so. Rather, as discussed in the Petition, the statutory right to appeal satisfies all “zone of interest” and “prudential stand- ing” considerations. Pet. 20. The Question Presented here asks whether §§ 318, 311 and 315 create injuries in fact sufficient to confer standing to appeal under
4
§ 319. Respondent’s alternative Question Presented also recites those statutory sections. This issue, whether deprivation of rights granted by the applica- ble statutes creates injury in fact sufficient to support standing to appeal, was raised by RPX below and ad- dressed by the Court of Appeals in its decision. Com- pare App. 4-5 to Petition § I.A. Thus, Respondent’s waiver argument is meritless.
In arguing waiver, ChanBond mischaracterizes the issue as whether § 319 by and of itself creates in- jury in fact. That is not the issue raised in the Question Presented, nor was it the argument RPX raised below. That section, which provides for appeals of final deci- sions of the Patent Office in inter partes reviews, re- solves prudential standing. Pet. at 20-21. As explained in the Petition, and as argued and addressed below, it is §§ 318, 311 and 315 that create RPX’s injury in fact. The Petition rests on these statutory bases for injury in fact, which are the same ones RPX urged to, but were rejected by, the Federal Circuit.1
1 Respondent quizzically both argues the Question Presented was waived, at 2 (“RPX asserts an argument it did not press below and the Court of Appeals did not consider: [that] it can assert standing to appeal . . . based solely on statutory provisions”), and yet admits that the exact statutory sections relied on in the Peti- tion were addressed below, at 7-8 “RPX’s first theory [below] rested on its assertion that ‘the Board’s decision injure[d] its “statutory right to compel cancellation of claims,”’” and, “The court [of appeals] also rejected RPX’s argument because the es- toppel provision of 35 U.S.C. § 315(e)(1) does not constitute an in- jury in fact.”).
5
There is a relationship between the injury in fact statutes and the prudential standing statute, in that, for example, RPX’s particularized right under § 318 to compel the Patent Office to cancel every claim RPX proved unpatentable would be illusory but for the right to appeal the Patent Office’s decision to an Article III Court in § 319. The appeals court can correct the agency’s refusal to cancel the patent; RPX alone can- not. Thus, the right to appeal under § 319 is part and parcel with the right to compel the Patent Office to can- cel unpatentable claims under § 318 and denial of the former is per se denial of the latter.
The most generous of interpretations of Chan- Bond’s waiver argument is that because § 319 was not addressed by the Court of Appeals in its decision deny- ing RPX’s standing, that RPX cannot now use that statute to support any aspect of its standing. However, lack of prudential standing, which is what § 319 pro- vides, was not the basis for the Court of Appeals’ deci- sion. Rather, it was lack of injury in fact. RPX did not below, and does not now, argue § 319 provides injury in fact. Rather, RPX argues in the Petition exactly what it argued to the Court of Appeals, that the right of can- cellation under § 318 and the estoppel created by § 315 that denies RPX its right to file an inter partes review under § 311 (and compel patent cancellation at the end of that proceeding) are the statutes that create injury in fact.
ChanBond’s suggestion that RPX should have raised associational standing below is irrelevant to the Question Presented here. The issue raised in the
6
Petition is about RPX’s standing in its own right based on the statutes that affect its personal rights (right to have claims canceled, loss of right to file another chal- lenge to the patent). The issue here is not whether RPX has associational standing. In fact, even if facts were present to have allowed RPX to make associational standing arguments, RPX’s raising such arguments would have made this case a poor vehicle for certiorari, because, as ChanBond itself acknowledges, the Court endorsed associational standing in Hunt. It is precisely because the Question Presented raises important and novel issues in the context of a statutory scheme seen only by the Federal Circuit that makes the Petition a particularly good vehicle for certiorari.
III. CHANBOND’S CITED CASES DID NOT PRESENT OR RESOLVE THE QUESTION PRESENTED HERE
On the merits, Respondent largely recycles the same cases and points made by the Court of Appeals below, all of which were fully addressed in the Petition, such as Lujan, Spokeo, and Phigenix. See Brief in Op- position at 18-25; Order on Motion to Dismiss at 3-5. However, there are a few points worthy of a brief re- sponse.
First, Respondent asserts RPX has no concrete right that is particular to it as opposed to the general public. Brief in Opposition at 20, citing Lujan. This is demonstrably false in light of the statutory language. Under § 318, RPX was the only party whose petition
7
for review of the challenged claims of Respondent’s pa- tent was deemed reasonably likely to succeed and thus triggered institution of a PTAB “trial.” See Pet. at 11- 12; 35 U.S.C. § 318(a). It thus is the only party that has been denied its right to have those instituted claims of that patent cancelled under § 318(b). No other person or entity can appeal the Patent Office’s decision. Only RPX can. Under §§ 311 and 315, RPX is the only party that has lost its right to file a challenge to Respond- ent’s patent (pursuant to § 311), due to the estoppel that has attached as a result of the issuance of the final decision by the Patent Office (pursuant to § 315(e)(1)). Thus, the rights underlying RPX’s injury in fact are entirely personal to RPX.
Second, Respondent cites a couple of Courts of Ap- peals cases not addressed by RPX in the Petition, but none is applicable to the Question Presented here.
In Hydro Investors, Inc. v. FERC, 351 F.3d 1192 (D.C. Cir. 2003), the D.C. Circuit merely said what is obvious, that “Congress cannot abrogate the require- ments of Article III.” RPX agrees. But Congress has not “abrogated” the requirements of Article III here. Ra- ther, it has created a right whose denial constitutes an injury in fact sufficient for standing by statute. As a case in point, the Hydro Investors decision cites and re- lies on Akins, which RPX addresses in its Petition (see Pet. 14, 24), where “The voters in Akins were injured- in-fact, according to the Supreme Court, because they were unable to obtain the requested information.” Id. at 1197, citing FEC v. Akins, 524 U.S. at 21 (1998).
8
In Wilcox Electric v. FAA, 119 F.3d 724 (8th Cir. 1997), the appellant sought review of a final order from the Federal Aviation Administration, but there was no statute giving it the right to do so as there is in this case. The Eighth Circuit there also specifically stated that Congress providing a party a right to participate in an administrative proceeding does not give that party standing to appeal the decision of the agency to Article III Courts. RPX agrees. But for the right to com- pel cancellation or the estoppel penalty when the agency denies that right, RPX would have no right to appeal the Patent Office’s decision. The Eighth Circuit did not address the issue here, which is whether Con- gress can provide a party rights to compel agency ac- tion to be enforced by appealing to an Article III Court if they are dissatisfied with the agency response. That is what Congress did here and Wilcox Electric is silent on that issue. If anything, Wilcox supports the Petition here because the Eighth Circuit relied on the Scanwell framework and says, “Scanwell held that a disap- pointed bidder, that is, a bidder who competed for and failed to receive a government contract, has standing to challenge the allegedly illegal manner in which a federal agency has awarded a contract to another firm. This is so not because the disappointed bidder would necessarily have a right to have the contract awarded to it in case the award is deemed illegal, but because the bidder has a right to have ‘agencies follow the reg- ulations which control government contracting.’ Id. at 864.” (emphasis added).
9
In short, Respondent’s position on the power of Congress to control agency action in this matter is in stark contrast with the position of RPX. Respondent argues in effect that there is nothing Congress can do by statute to create a private right, which when de- prived by an agency, constitutes an injury in fact suffi- cient for Article III standing. According to Respondent, a party either has standing based on facts outside of any statute or they do not. That is the same position taken by the Court of Appeals below. RPX disagrees. This case is a good vehicle for resolving this important question.
-?-
10
CONCLUSION
The petition should be granted.
Respectfully submitted,
STEVE CHIANG RPX CORPORATION One Market Plaza,
Suite 1100
San Francisco, CA 94105 (415) 852-3188
SARAH E. JELSEMA
ANDREW M. MASON
JOHN D. VANDENBERG KLARQUIST SPARKMAN, LLP One World Trade Center 121 S.W. Salmon Street,
Suite 1600 Portland, OR 97204 (503) 595-5300
September 4, 2018
DANIEL B. RAVICHER
Counsel of Record
RAVICHER LAW FIRM PLLC 2000 Ponce De Leon Blvd.,
Suite 600
Coral Gables, FL 33134 (786) 505-1205 dan@ravicher.com
Do anyone on this board know when ICEWEB started negotiations with Chanbond LLC, to purchase it!
Late 2014 early 2015? The reason I'm asking Is because I just fund a letter I had sent to Mr. Howe, in 2014 about the year ahead. That I had forgotten about, and I just want to know if it was prophetic or not.
Answer to the Supreme Court from our lawyers
IN THE
Supreme Court of the United States
————
NO. 17-1686
RPX CORPORATION,
Petitioner,
v.
CHANBOND, LLC,
Respondent.
————
On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit
————
BRIEF IN OPPOSITION
————
INTRODUCTION
Two months after ChanBond, LLC (“ChanBond”) filed patent infringement actions against several telecom- munications companies, petitioner RPX Corporation (“RPX”) filed an administrative challenge at the Patent Trial and Appeal Board (“Board” or “PTAB”) seeking to invalidate one of ChanBond’s asserted patents. RPX de- scribes itself as a “patent risk management” company that helps client companies lower patent litigation costs. When RPX challenged ChanBond’s patent in admini- strative proceedings, however, it did not purport to do so on behalf of the defendants in the infringement action or any of its clients. Nor did it disclose them as “real par-
2
ties in interest.” Instead, it purported to pursue only its own interest in generally improving “patent quality.”
The PTAB rejected RPX’s challenge and confirmed the validity of ChanBond’s patent. RPX appealed to the Federal Circuit. To show Article III standing—that it suffered injury in fact—RPX abandoned its purported in- terest in “patent quality.” Instead, it asserted that it sus- tained “competitive injury” and “reputational injury” from the adverse PTAB decision. RPX also asserted that it had been denied its “rights” to invalidate patents at the PTAB and to file multiple petitions at the PTAB seeking that relief. RPX, however, did not assert standing based on its purported statutory right to appeal adverse PTAB decisions. Nor did RPX assert associational standing based on its members’ interests. The court of appeals re- jected RPX’s standing theories and dismissed the appeal.
RPX seeks this Court’s review. But RPX asserts an argument it did not press below and the court of appeals did not consider: RPX now argues that, even in the absence of specific facts that show a concrete and partic- ularized injury in fact, it can assert standing to appeal the PTAB’s decision based solely on statutory provisions, in- cluding a statutory right to appeal, 35 U.S.C. §319. The standing issue RPX raises, moreover, is of limited sig- nificance. It is unique to a handful of third-party patent challengers that, like RPX, do not allege facts supporting a credible basis for standing. And RPX’s lack of standing here is a problem of RPX’s making: It chose not to as- sert associational standing, despite having hundreds of member companies. Those features make this case a sin- gularly unsuitable vehicle for review. Finally, even apart from those vehicle issues, RPX’s statutory standing ar- gument is contrary to the law as set forth by this Court
3
and as consistently applied by the courts of appeals. The petition should be denied.
STATEMENT I. STATUTORY FRAMEWORK
The petition arises out of an inter partes review or “IPR”—an administrative proceeding established by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
A. Inter Partes Review Procedure
In an IPR, “the United States Patent and Trademark Office (PTO) is authorized to reconsider and to cancel an issued patent claim in limited circumstances.” Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1370 (2018). Congress established IPRs as “a quick, inexpensive, and reliable alternative to district court litigation to resolve questions of patent validity.” S. Rep. No. 110-259, at 20 (2008).
Anyone other than the patent’s owner may file a peti- tion for an IPR seeking review of the patent’s validity. 35 U.S.C. §311(a). Because any party may petition the Board, “[p]arties that initiate the proceeding need not have a concrete stake in the outcome.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143-2144 (2016). “[I]ndeed, they may lack constitutional standing.” Ibid. (citing §311(a) and Consumer Watchdog v. Wis. Alumni Research Found., 753 F.3d 1258, 1261-1262 (Fed. Cir. 2014)). The Board may institute an IPR if it finds “a rea- sonable likelihood that the petitioner would prevail.” 35 U.S.C. §314(a). If the Board institutes an IPR, the pro- ceeding culminates in “a final written decision with re- spect to the patentability of any patent claim challenged by the petitioner.” Id. § 318(a).
4
A “party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144.” 35 U.S.C. §319; see ibid. (“Any party to the inter partes review shall have the right to be a party to the ap- peal.”). Section 141, in turn, provides that “[a] party to an inter partes review * * * may appeal the Board’s deci- sion only to the United States Court of Appeals for the FederalCircuit.” Id.§141(c).
B. IPR Estoppel, Time Bar, and the “Real Party in Interest” Disclosure Requirement
In creating IPR proceedings, Congress imposed im- portant restrictions. First, it imposed a one-year time limit for filing IPR petitions. 35 U.S.C. §315; see also H.R. Rep. No. 112-98, at 46-48 (2011). “An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner * * * is served with a complaint al- leging infringement of the patent.” 35 U.S.C. §315(b) (emphasis added).
Second, Congress created a statutory estoppel to pre- clude wasteful relitigation. “The petitioner in an inter partes review of a claim in a patent * * * that results in a final written decision under section 318(a)” is thereafter estopped from asserting “any ground [of invalidity] that the petitioner raised or reasonably could have raised dur- ing that inter partes review.” 35 U.S.C. §315(e). Such estoppel applies to proceedings in federal court, before the USPTO, and before the International Trade Commis- sion. Ibid. Both the time-bar and estoppel provisions apply not only to a petitioner, but also to a “real party in interest, or privy of the petitioner.” Id. § 315(b), (e).
To effectuate those provisions, Congress provided that an IPR petition “may be considered only if,” among other
5
things, it “identifies all real parties in interest.” 35 U.S.C. §312(a)(2). Patent and Trademark Office regula- tions similarly require parties seeking IPRs to disclose “eachrealparty-in-interest.” 37C.F.R.§42.8(b)(1).
II. PETITIONER’S BUSINESS
Petitioner RPX is a for-profit company that offers “patent risk management” services to about 330 clients. RPX Corp., Annual Report (Form 10-K), at 1, 6 (Mar. 5, 2018), http://ir.rpxcorp.com/static-files/fef5d0cf-0f5e-497 0-bd0e-3654d767971d. The core of RPX’s patent risk- management services is to “acquire patents, licenses to patents, patent rights, and agreements for covenants not to sue [which] are being or may be asserted against [its] current and prospective clients.” Id. at 4. RPX’s clients pay an annual subscription fee and receive non-exclusive sub-licenses to the patent assets in RPX’s portfolio for the period of the client’s membership. Id. at 1, 4, 12.
RPX also promises to help members “‘quickly and cost-effectively extricate * * * from [non-practicing entity (‘NPE’)] lawsuits.’ ” Applications in Internet Time, LLC v. RPX Corp., No. 2017-1698, 2018 WL 3625165, at *2 (Fed. Cir. July 9, 2018) (brackets in original). RPX aims to “‘prevent[] patent litigation,’” but “‘can help after a litigationhasbegun.’” Ibid.
As part of its business, RPX files IPR petitions, puta- tively to “improve the efficiency of the patent market, lower unnecessary costs, and deter abusive patent asser- tion practices.” RPX Corp., Annual Report (Form 10- K), at 6. RPX, however, has attempted to prevent its clients from being subjected to IPR estoppel provisions based on its petitions (and conversely to avoid being subjected to the time-limit provisions applicable to clients that have been sued for infringement). To that end, RPX describes its IPR filings as “a separate line of business.”
6
Pet. 4. RPX states that its policy is to “‘file[] IPRs if, and only if, RPX decides that it is in RPX’s own interests todoso.’” RPXC.A.Br.2.
RPX adopts “‘best practices’” to “‘ensure that RPX is and will be deemed by the PTAB and district courts as the sole real party-in-interest in all validity challenges.’” Applications in Internet Time, 2018 WL 3625165, at *2 (quoting internal RPX document). These best practices “(1) expressly discourage the company from taking sug- gestions from third parties, including clients, regarding validity challenges; (2) provide that it will not discuss forthcoming validity challenges with third parties in ad- vance of filing; and (3) mandate that RPX will not discuss strategy or take feedback on pending validity challenges, and will ‘maintain complete control of all aspects of pend- ing validity challenges.’ ” Ibid. (quoting same document).
Notwithstanding those efforts, the Federal Circuit has cast doubt on RPX’s separation from its clients for real- party-in-interest purposes. See Applications in Internet Time, 2018 WL 3625165, at *11-17. Just last month, the Federal Circuit directed the Board to consider whether RPX failed to identify a real party in interest—as re- quired by statute—where RPX had challenged a patent asserted against one of its members, had stated that its “‘interests are 100% aligned with those of [its] clients,’” and had received “substantial payments” from that mem- ber. Id. at *17 (alteration in original).
III. PROCEDURAL BACKGROUND
A. ThePTABUpholdsChanBond’sPatents
On September 21, 2015, ChanBond filed patent in- fringement actions in the U.S. District Court for the District of Delaware against several telecommunications companies. In re ChanBond, LLC Patent Litig., No. 15- 842-RGA (consolidated). In its complaints, ChanBond
7
alleged infringement of three related patents, including U.S. Patent No. 7,941,822 (“the ’822 Patent”).
About two months after ChanBond filed its infringe- ment actions, RPX filed a petition for IPR of the ’822 Patent. The petition alleged that “RPX is the sole real party-in-interest in this proceeding. RPX has not com- municated with any client about its intent to contest the validity of this patent, or the preparation or filing of this Petition. RPX has complete, unilateral control of all as- pects of this proceeding and is also solely responsible for all costs and expenses associated with this proceeding.” Petition for Inter Partes Review 2, RPX Corp. v. Chan- Bond LLC, No. IPR2016-00234 (filed P.T.A.B. Nov. 20, 2015).
After trial, the Board issued a final written decision in ChanBond’s favor, determining that RPX had not shown by a preponderance of the evidence that any of the claims at issue were unpatentable. Pet. App. 10.
B. The Federal Circuit Dismisses for Want of Injury in Fact
RPX sought judicial review, and the Federal Circuit dismissed the appeal for lack of standing in a brief, unani- mous, and non-precedential order. Pet. App. 1-8. The court considered—and rejected—each of the three standing theories proposed by RPX. Id. at 4-8.
RPX’s first theory rested on its assertion that “the Board’s decision injure[d] its ‘statutory right to compel cancellation of claims on unpatentable inventions’ and its ‘right to file multiple IPR petitions on the same patent claims.’ ” Pet. App. 4 (quoting RPX C.A. Br. 15, 16). The Federal Circuit rejected that theory. Id. at 5-6. The court of appeals explained that “‘[t]he statute did not guarantee a particular outcome favorable to the reques-
8
tor. RPX was permitted to request review and partici- pate once the PTO granted its request. That is all the statute requires.’ ” Id. at 5 (internal citation and brackets omitted).1 The court also rejected RPX’s argument because the estoppel provision of 35 U.S.C. §315(e)(1) does not constitute an injury in fact when the appellant identifies no concrete adverse impact, such as the potential for an infringement suit based on its activities. “It is undisputed that RPX is not engaged in any potentially infringing activity regarding the ’822 patent.” Pet. App. 5.
RPX’s second theory of standing was based on an alle- gation that the Board’s decision injured its standing rela- tive to competitors that operate similar businesses based on challenging patents through IPRs. Pet. App. 6. The court of appeals rejected that competitor-standing argu- ment because RPX “ha[d] not demonstrated that the Board’s determination increased or aids the competition in the market of the non-defendant IPR petitioners.” Id. at 6-7.
Finally, the court of appeals rejected RPX’s third theory—that it had standing because the PTAB’s de- cision “injur[ed]” its “reputation of successfully chal- lenging wrongfully issued patent claims.” Pet. App. 7. The evidence, the court stated, did “not demonstrate a concrete and particularized reputational injury.” Ibid.
RPX did not seek panel rehearing or rehearing en banc. This petition for a writ of certiorari followed.
1 As discussed below, the statutory-rights argument raised in this petition is different from that pressed by RPX and decided by the Federal Circuit in the proceedings below. See pp. 9-12, infra.
I believe the delays have try to coincide with the supreme court decision to hear the case, if the Supreme Court denies to hear the case I'm believing a settlement we'll be reach.
So I'm believing that we (UOIP stockholders) will have favor with the Supreme Court and that they will denied to hear the case Amen.
In the Supreme Court of the United States
RPX CORPORATION,
v.
CHANBOND LLC,
Petitioner,
Respondent.
On PetItIon for a WrIt Of Certiorari to the UnIted StateS Court Of appeais for the federal CIrcuit
No. 17-1686
In the
Supreme Court of the United States
RPX CORPORATION,
v.
CHANBOND LLC,
Petitioner,
Respondent.
Q: How long does it take the Court to act, once a petition has been filed? A: On the average, about six weeks. The filing was on July 20, 2018 so we should hear something the week of September 3-7, 2018
https://decisiondata.org/list-of-cable-providers/
913 DSL Providers in the USA [Full List]
https://decisiondata.org/list-of-dsl-providers/
IMO the only reason we will agree to a pushback is because negotiation is going on for settlement the question just is for how much that's where the fight is!
So keep pushing the price down I'll keep picking shares up thank you very much
The delay is the reason I believe that the price went down today!
Like I said before, I'm believing for target price of $5 a share that's what I lock my shares in @ so that's what I'm believing for!
August 16, 2013 the stock within a $12.84 a share with the reverse split brings that down to $6.00
I'm giving them a dollar discount that brings it down to $5 share
Case 1:15-cv-00842-RGA Document 292 Filed 08/07/18 Page 1 of 2 PageID #: 11651
IN RE CHANBOND, LLC PATENT LITIGATION
C.A. No. 15-842-RGA CONSOLIDA TED
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
STIPULATION AND [ ~ ORDER TO AMEND SCHEDULING ORDER
IT IS HEREBY STIPULATED AND AGREED, by and between the parties hereto and subject to approval by the Court, that the following deadlines are hereby extended as set forth in the attached Exhibit A.
BAYARD, P.A.
Isl Stephen B. Brauerman
Stephen B. Brauerman (#4952) Sara E. Bussiere (#5725)
600 N. King Street, Suite 400 P.O. Box 25130
Wilmington, Delaware 19801
(302) 655-5000 sbrauerman@bayardlaw.com sbussiere@bayardlaw.com Attorneysfor PlaintijfChanBond, LLC
Isl Jennifer Ying
Jack B. Blumenfeld (#1014) Jennifer Ying (#5550)
1201 N. Market Street
P.O. Box 1347
Wilmington, DE 19899-1347 (302) 658-9200
jblumenfeld@mnat.com jying@mnat.com Attorneysfor Defendants
August 7, 2018
MORRIS, NICHOLS, ARSHT & TUNNELL LLP
IT IS SO ORDERED this .fl_day of (\ub[f;t ,2018.
~ardG.
United States District Judge
Case 1:15-cv-00842-RGA Document 292 Filed 08/07/18
Page 2 of 2 PageID #: 11652
1
Event
Opening Expert Reports for the party that bears burden of proof
Rebuttal Expert Reports Reply Expert Reports
Close of Expert Discovery Opening SJ/ Daubert Briefs Answering SJ/Daubert Briefs Reply SJ/Daubert Briefs
Trial scheduling conference, with
parties to submit a joint status
report with their proposal(s) one
1
week in advance. SJ/Daubert Hearing
Pre-trial Conference First 5-day jury trial
Event
Opening Expert Reports for the party that bears burden of proof
Rebuttal Expert Reports Reply Expert Reports
Close of Expert Discovery Opening SJ/ Daubert Briefs Answering SJ/Daubert Briefs Reply SJ/Daubert Briefs
Trial scheduling conference, with
parties to submit a joint status
report with their proposal(s) one
1
week in advance. SJ/Daubert Hearing
Pre-trial Conference First 5-day jury trial
Exhibit A
Current Deadline
Aug. 8, 2018 - Sept 10, 18
Sept. 19, 2018 - Oct 19, 18
Oct. 8, 2018 - Nov 8, 18
Nov. 7, 2018 - Dec 4, 18
Dec. 1, 2018 - Dec 21, 18
Jan.4,2019 - Jan 25, 19
Jan.25,2019 - Feb 15, 19
Dec. 14, 2018 at 9:00am - Same
March 8, 2019 at 9:00am - Apr 15, 2019 11:00AM
Pre Trial Conf TBA
First 5-day jury trial TBA
Proposed New Deadline
Sept 10, 2018
Oct. 19, 2018 Nov. 8, 2018 Dec. 4, 2018 Dec. 21, 2018 Jan.25,2019 Feb. 15,2019 Same
·'NM... Apr~LS: 2Pl1 (J9 JJ ~
TBA TBA
sorry
Case 1:15-cv-00842-RGA Document 293 Filed 08/08/18 Page 1 of 2 PageID #: 11653
IN RE CHANBOND, LLC PATENT LITIGATION
C.A. No. 15-842-RGA CONSOLIDATED
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
STATUS REPORT REGARDING IPR PROCEEDINGS
For the Court’s information, on July 20, 2018, the Patent Trial and Appeal Board (“PTAB”) denied institution on five inter partes review (“IPR”) petitions filed by ARRIS International PLC (“ARRIS”) against asserted U.S. Patent Nos. 7,941,822, 8,341,679, and 8,984,565. Non-party ARRIS and non-party Cisco Systems, Inc. (“Cisco”) are the two relevant suppliers of telecommunications equipment to the defendants in this case.
Cisco had previously filed eight IPR petitions against the same patents. However, Cisco filed its petitions within the one-year statutory window for filing under 35 U.S.C. § 315(b), informing the PTAB that the defendants were real parties in interest with respect to those IPRs. ARRIS, however, filed its IPR requests in early 2018, well outside of the statutory one-year window, claiming to the PTAB that it was acting independently of the defendants. The PTAB, however, found that ARRIS was in privity with the defendants in this action and, because the defendants were served with the complaint more than one year prior to ARRIS’s filings, ARRIS’s IPR petitions were time barred under 35 U.S.C. § 315(b).
These denials to institute are the last outstanding IPRs of the fourteen total IPR requests that have been filed against ChanBond in this action. ChanBond has prevailed in thirteen of those fourteen IPR requests. No IPRs or IPR petitions are currently pending in this action.
A copy of the public (redacted) version of one, representative PTAB Decision Denying Institution of the ARRIS Inter Partes Review is attached hereto as Exhibit A.
Case 1:15-cv-00842-RGA
Document 293
Filed 08/08/18 Page 2 of 2 PageID #: 11654
Dated: August 8, 2018 OF COUNSEL:
Mark Raskin
Robert Whitman
John F. Petrsoric
MISHCON DE REYA NEW YORK LLP 156 Fifth Avenue, Suite 904
New York, NY 10010
(212) 612-3270
BAYARD, P.A.
/s/ Stephen B. Brauerman
Stephen B. Brauerman (sb4952) Sara E. Bussiere (sb5725)
600 N. King Street, Suite 400 Wilmington, DE 19801
(302) 655-5000 sbrauerman@bayardlaw.com sbussiere@bayardlaw.com
Attorneys for Plaintiff ChanBond, LLC
2
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 1 of 27 PageID #: 11655
EXHIBIT A
Case 1:15-cv-00842-RGA
Document 293-1 Filed 08/08/18 Page 2 of 27 PageID #: 11656
Trials@uspto.gov
571-272-7822
PUBLIC REDACTED VERSION
Paper 20 Entered: July 20, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE ____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________
ARRIS INTERNATIONAL PLC, Petitioner,
v.
CHANBOND, LLC, Patent Owner. ____________
Case IPR2018-00574 Patent 8,984,565 B2 ____________
Before JONI Y. CHANG, JEFFREY S. SMITH, and DAVID C. McKONE, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review 35 U.S.C. § 314
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 3 of 27 PageID #: 11657
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
I. INTRODUCTION
ARRIS International PLC (“Petitioner”) filed a Petition requesting an
inter partes review of claims 1 and 11 (“the challenged claims”) of
U.S. Patent No. 8,984,565 B2 (Ex. 1001, “the ’565 patent”). Paper 1 (“Pet.”). ChanBond, LLC (“Patent Owner”) filed unredacted and redacted versions1 of a Preliminary Response (Papers 9 and 10, “Prelim. Resp.”), along with a Motion to Seal (Paper 8) and the Stipulated Default Protective Order (attached to the Motion to Seal), which is a copy of the default Protective Order set forth in Appendix B of the Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48,756, 48,756-66 (Aug. 14, 2012). Pursuant to our authorization, Patent Owner filed a Motion for Additional Discovery (Papers 12 and 13, “Disc. Mot.”); Petitioner filed an Opposition (Papers 15 and 16, “Disc. Opp.”) to the Motion for Additional Discovery; and Patent Owner filed a Reply (Papers 18 and 19, “Disc. Reply”) to Petitioner’s Opposition.2
For the reasons stated below, we determine that a privy of Petitioner was served with a complaint alleging infringement of the ’565 patent more than one year before the Petition was filed. Consequently, we deny the Petition as it is time-barred under 35 U.S.C. § 315(b), and dismiss Patent
1 Citations hereinafter correspond to the unredacted version (Paper 9).
2 Both parties filed unredacted and redacted versions of their papers, along with corresponding Motions to Seal (Papers, 11, 14, and 17). Our citations correspond to the unredacted version of each paper.
2
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 4 of 27 PageID #: 11658
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Owner’s Motion for Additional Discovery as moot. We also grant the parties’ Motions to Seal (Papers 8, 11, 14, 17).
Related Matters
The parties indicate that the ’565 patent and two other related patents, U.S. Patent Nos. 8,341,679 B2 (“’679 patent”) and 7,941,822 B2 (“’822 patent”), are involved in the following proceedings in the United States District Court for the District of Delaware (the “Delaware actions”): ChanBond, LLC v. Atlantic Broadband Group, LLC, 1:15-cv-00842-RGA (D. Del.); ChanBond, LLC v. Bright House Networks, LLC, 1:15-cv-00843- RGA (D. Del.); ChanBond, LLC v. Cable One Inc., LLC, 1:15-cv-00844- RGA (D. Del.); ChanBond, LLC v. Cablevision Systems Corp., 1:15-cv- 00845-RGA (D. Del.); ChanBond, LLC v. Cequel Communications, LLC, 1:15-cv-00846-RGA (D. Del.); ChanBond, LLC v. Charter Communications, LLC, 1:15-cv-00847-RGA (D. Del.); ChanBond, LLC v. Comcast Corp., 1:15-cv-00848-RGA (D. Del.); ChanBond, LLC v. Cox Communications, Inc., 1:15-cv-00849-RGA (D. Del.); ChanBond, LLC v. Mediacom Communications Corp., 1:15-cv-00850-RGA (D. Del.); ChanBond, LLC v. RCN Telecom Services, LLC, 1:15-cv-00851-RGA
(D. Del.); ChanBond, LLC v. Time Warner Cable Inc., 1:15-cv-00852-RGA (D. Del.); ChanBond, LLC v. WaveDivision Holdings, LLC, 1:15-cv-00853-
3
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 5 of 27 PageID #: 11659
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
RGA (D. Del.); and ChanBond, LLC v. WideOpen West Finance, LLC, 1:15- cv-00854-RGA (D. Del.).3 Pet. 3-5; Paper 5, 1-2.
Petitioner also filed five additional petitions: IPR2018-00575 involving the ’565 patent; IPR2018-00572 and IPR2018-00573 involving the ’679 patent; and IPR2018-00570 involving the ’822 patent. Pet. 5.
II. DISCUSSION
The instant Petition was filed on February 2, 2018. Paper 3, 1. Patent
Owner served the defendants in the Delaware actions with a complaint, alleging infringement of the ’565 patent on October 1, 2015, more than one year prior to the filing of the instant Petition. Ex. 2006. Petitioner was not a named party in the Delaware actions. Id. Nonetheless, Patent Owner asserts that the instant Petition is time-barred under 35 U.S.C. § 315(b) because Petitioner is in privity with the Delaware defendants. Prelim. Resp. 12-33. Accordingly, the main issue here is whether at least one of the Delaware defendants is a privy of Petitioner.
A. Principles of Law
Section 315(b) of Title 35 of the United States Code provides:
(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting 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
3 In this Decision, we refer the defendants of these Delaware actions as “the
Delaware defendants.”
4
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 6 of 27 PageID #: 11660
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).
The legislative history indicates that § 315(b) was intended to set a “deadline for allowing an accused infringer to seek inter partes review after he has been sued for infringement.” 157 CONG. REC. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl). The deadline helps to ensure that inter partes review is not used as a tool for harassment by “repeated litigation and administrative attacks.” H.R. REP. NO. 112-98 at 48 (2011), as reprinted in 2011 U.S.C.C.A.N. 67, 78. Hence, “the rationale behind
§ 315(b)’s preclusion provision is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in prior litigation.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018).
The term “privity” is not defined in the statute, but it “is a well-established common-law term.” Id. at 1317. “[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.” Beck v. Prupis, 529 U.S. 494, 500-01 (2000); 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 judgments.”).
The concept of “privity” is more expansive and encompasses parties that do not necessarily need to be identified in the Petition as real parties-in-
5
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 7 of 27 PageID #: 11661
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
interest. Trial Practice Guide, 77 Fed. Reg. at 48,759. The term “privity” is used “more broadly, as a way to express the conclusion that nonparty preclusion is appropriate on any ground.” Taylor v. Sturgell, 553 U.S. 880, 894 n.8 (2008) (citing 18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4449, pp. 351-53, n.33
(2d ed. 2002) (hereinafter “Wright & Miller”)); WesternGeco, 889 F.3d at 1318-19. The legislative history endorsed the expression of “privy” as follows:
The word “privy” has acquired an expanded meaning. The courts, in the interest of justice and to prevent expensive litigation, are striving to give effect to judgments by extending “privies” beyond the classical description. The emphasis is not on the concept of identity of parties, but on the practical situation. Privity is essentially a shorthand statement that collateral estoppel is to be applied in a given case; there is no universally applicable definition of privity. The concept refers to a relationship between the party to be estopped and the unsuccessful party in the prior litigation which is sufficiently close so as to justify application of the doctrine of collateral estoppel.
154 CONG. REC. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (emphases added) (citing Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506 (Cal. App. 2008)); 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (incorporating prior 2008 statement).
The determination of whether a petitioner is in privity with a time-barred district court party is a “highly fact-dependent question.” Trial Practice Guide, 77 Fed. Reg. at 48,759. More importantly, “the standards
6
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 8 of 27 PageID #: 11662
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
for the privity inquiry must be grounded in due process.” WesternGeco, 889 F.3d. at 1319. “[T]he privity inquiry in this context naturally focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit. For example, it is important to determine whether the petitioner and the prior litigant’s relationship—as it relates to the lawsuit—is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” Id. (emphases added).
In Taylor, the United States Supreme Court identified a non-exhaustive list of six categories under which nonparty preclusion based on a privity relationship may be found: (1) an agreement between the parties to be bound; (2) pre-existing substantive legal relationships between the parties; (3) adequate representation by the named party; (4) the nonparty’s control of the prior litigation; (5) where the nonparty acts as a proxy for the named party to re-litigate the same issues; and (6) where special statutory schemes foreclose successive litigation by the nonparty (e.g., bankruptcy or probate). Taylor, 553 U.S. at 893-95, 893 n.6. The Supreme Court noted that this list of the six “established grounds for nonparty preclusion” is “meant only to provide a framework . . . , not to establish a definitive taxonomy.” Id. at 893 n.6. Each ground alone is sufficient to establish privity between a nonparty and a named party in the prior litigation. WesternGeco, 889 F.3d at 1319-20.
7
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 9 of 27 PageID #: 11663
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Here, in our analysis, we mainly address the fourth Taylor category of nonparty preclusion. For the reasons stated below, the evidence of record establishes sufficiently that Petitioner is in privity with a time-barred district court party because Petitioner had substantial control over the Delaware actions. As such, it is not necessary for us to determine whether privity exists based on other grounds.
Under the fourth Taylor category of nonparty preclusion, a nonparty to a prior action is bound by a judgment if that party “‘assume[d] control’ over the litigation in which that judgment was rendered.” Taylor, 553 U.S. at 895 (citing Montana v. United States, 440 U.S. 147, 154 (1979)). “Courts and commentators agree, however, that there is no ‘bright-line test’ for determining the necessary quantity or degree of participation to qualify
as . . . ‘privy’ based on the control concept.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Gonzalez v. Banco Cent. Corp., 27 F.3d 751, 759
(1st Cir. 1994)).
Neither absolute control, nor actual control, is a requirement for finding of privity. Rather, “it 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.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (quoting Wright & Miller § 4451); see also WesternGeco, 889 F.3d at 1320. “Such relationships between a party and a nonparty are most often found when . . . an indemnitor participates in defending an action brought against its indemnitee.” Wright & Miller § 4451; Benson & Ford,
8
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 10 of 27 PageID #: 11664
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Inc. v. Wanda Petroleum Co., 833 F.2d 1172, 1174 (5th Cir. 1987); cf. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1991) (finding that “an indemnification agreement, in other cases, has alone been enough to find privity”) (citing Urbain v. Knapp Bros. Mfg. Co., 217 F.2d 810 (6th Cir. 1954); Weyerhaeuser Timber Co. v. Bostitch, Inc., 178
F. Supp. 757, 760-61 (D.R.I. 1959)); SpeedTrack, Inc. v. Office Depot, Inc., 2014 WL 1813292, at *6-7 (N.D. Cal. May 6, 2014) (ruling that in view of the indemnification obligations the manufacturer owed to its customer, the manufacturer was in privity with the customer such that claim preclusion could apply), aff’d, 791 F.3d 1317, 1324-29 (Fed. Cir. 2015).
“Preclusion is fair so long as the relationship between the nonparty and a party was such that the nonparty had the same practical opportunity to control the course of the proceedings that would be available to a party.” Wright & Miller § 4451. “The appropriate measure of control does not require that the named party or parties totally abandon control to the nonparty.” Id. “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895; Wright & Miller § 4451).
With these principles in mind and for the reasons stated below, we find that Petitioner is in privity with at least one of the Delaware defendants as the evidence of record shows that Petitioner had substantial control over the Delaware actions.
9
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 11 of 27 PageID #: 11665
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
B. Analysis on Privity
As an initial matter, the Board has considered, in certain cases, the relationship between those alleged to be in privity at the time of service of the complaint with regard to the time bar under § 315(b). See, e.g., Nestle USA, Inc. v. Steuben Foods, Inc., Case IPR2015-00195, slip op. at 9-10 (Paper 51) (PTAB June 29, 2015). As noted above, the term “privity” is not defined in the statute, but it “is a well-established common-law term.” WesternGeco, 889 F.3d at 1317. Our reviewing court has explained that “the privity inquiry in this context naturally focuses on the relationship between the named IPR petitioner and the party in the prior lawsuit.” Id. at 1319 (emphases added). This approach of focusing the privity inquiry on the relationship during the prior lawsuit, rather than at the time of service of the complaint (i.e., at the start of the lawsuit) is consistent with Taylor. Aruze Gaming Macau, LTD. v. MGT Gaming Inc., Case IPR2014-01288, slip op. 12-14 (Paper 13) (PTAB Feb. 20, 2015). As the Supreme Court explained in Taylor, regarding the fourth category of nonparty preclusion, “a nonparty is bound by a judgement if she assumed control over the litigation in which that judgment was rendered.” Taylor, 553 U.S. at 895 (internal quotation marks and citation omitted) (emphasis added).
As such, our privity inquiry in the instant processing focuses on the relationship between Petitioner and the Delaware defendants during the prior lawsuit. More specifically, we focus on whether the relationship, as it relates to the Delaware actions, “is sufficiently close that it can be fairly said
10
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 12 of 27 PageID #: 11666
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” WesternGeco, 889 F.3d at 1319; Aruze Gaming, Case IPR2014-01288, slip op. at 15.
We now turn to Parties’ contentions and supporting evidence. In its Preliminary Response, Patent Owner argues that Petitioner “had a right to substantially control the Delaware litigation for years prior to the filing of the present petition.” Prelim. Resp. 17. As support, Patent Owner notes that Petitioner’s own public filings with the Securities and Exchange Commission (“SEC”) establish the existence of indemnification agreements with several Delaware defendants. Id. According to Patent Owner,
Petitioner had a legal right to control the litigation,
Upon consideration of the evidence before us, we agree with Patent Owner that Petitioner had substantial control over
the Delaware actions.
11
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 13 of 27 PageID #: 11667
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Petitioner counters that it is not a privy of the Delaware defendants. Dis. Opp. 4-6.4 In support of its contention, Petitioner argues that it “is not controlling the Delaware litigation,” and it “has no legal right to do so” because the complaints and infringement contentions in the Delaware actions “identify multiple accused products that are supplied to each of the Defendants by many different suppliers, of which ARRIS is only one.” Id. Petitioner also argues that Patent Owner “points to no indemnification provision and provides no argument that could support a conclusion that ARRIS has a legal right to control a lawsuit that involves other suppliers’ products.” Id. Petitioner avers that “ARRIS could not take responsibility for the other products accused of infringement, and it could not have assumed (and did not assume) control over litigation strategy or settlement.” Id. Petitioner further argues that “ARRIS’s
plainly shows that ARRIS does not control the litigation.” Id. at 5-7.
In Petitioner’s view, “ARRIS’s agreement to thus merely establishes a typical customer-supplier relationship that controlling authority has held insufficient to establish privity.” Id. (citing Wi-Fi One v. Broadcom
4 Petitioner did not present any privity argument in its Petition. Pet. 6-8. Nor did Petitioner seek leave to file a reply to Patent Owner’s Preliminary Response. Rather, Petitioner presents its privity arguments in the Opposition to Patent Owner’s Motion for Additional Discovery. Although improperly presented, we nevertheless exercise our discretion to consider Petitioner’s arguments, and address each of Petitioner’s privity arguments in turn. See 37 C.F.R. § 42.5.
12
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 14 of 27 PageID #: 11668
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Corp., 887 F.3d 1329 (Fed. Cir. 2018); Nestle, Case IPR2015-00195, slip op. at 6-17).
We are not persuaded by Petitioner’s arguments because they rest on an erroneous privity standard, requiring actual and complete control of the entire litigation. As discussed above, neither absolute control, nor actual control, is required for finding of privity. Rather, “it 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.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Wright & Miller § 4451).
The Board as well as the courts “have found privity where an entity’s control over the litigation was substantial, even though not complete.” General Electric Co. v. TransData, Inc., Case IPR2014-01380 (Paper 34, 9) (PTAB Apr. 15, 2015) (citing Jefferson Sch. of Soc. Sci. v. Subversive Activities Control Bd., 331 F.2d 76, 83 (D.C. Cir. 1963)). “If a nonparty either participated vicariously in the original litigation by exercising control over a named party or had the opportunity to exert such control, then the nonparty effectively enjoyed his day in court, and it is appropriate to impute to him the legal attributes of party status for purposes of claim preclusion.” Gonzalez, 27 F.3d at 758. “[P]reclusion is fair so long as the relationship between the nonparty and a party was such that the nonparty had the same practical opportunity to control the course of the proceedings that would be available to a party.” Id. (citing Wright & Miller § 4451).
13
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 15 of 27 PageID #: 11669
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Here, it is undisputed that Patent Owner served the Delaware defendants with a complaint, more than one year prior to the filing of the instant Petition, alleging infringement of the ’565 patent. Ex. 2006. Petitioner confirms that it is the supplier for at least one of the allegedly infringing products and has a “customer-supplier relationship” with one or more of the Delaware defendants. Dis. Opp. 5. Petitioner’s SEC Form 10-K dated February 29, 2016, indicates the following:
On September 21, 2015, [Patent Owner] ChanBond filed suit against several MSOs [Multiple Systems Operators] alleging infringement of three US Patents. Certain of our customers have requested that we provide indemnification . . . . In the event of an unfavorable outcome, ARRIS may be required to indemnify the MSOs and/or pay damages for utilizing certain technology.
Ex. 2002, 5, 31.
Further, it is undisputed that Petitioner has indemnification
agreements with one or more of the Delaware defendants. See generally Dis. Opp.; Ex. 2002, 31; Exs. 2007-09. Notably, Petitioner’s Corporate Terms and Conditions of Sale include the following:
22. INDEMNIFICATION. ARRIS will defend and hold Customer . . . harmless against damages finally awarded . . . and will, at ARRIS’ expense, defend any third party claim, suit, or proceeding (“Claim”) brought against Customer insofar as such Claim is based on an allegation that a Product as provided to Customer directly infringes a valid patent or copyright. ARRIS will pay Damages as the result of the Claim provided that (i) Customer promptly notifies ARRIS of the Claim, (ii) Customer gives ARRIS all applicable evidence in Customer’s possession, custody or control, and (iii) Customer gives ARRIS reasonable
14
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 16 of 27 PageID #: 11670
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
assistance in and sole control of the defense and all negotiations for its settlement or compromise.
Ex. 2007, 2 (emphases added). Significantly, under the indemnification agreement, Petitioner had an obligation to defend a patent infringement claim brought against the customer as to Petitioner’s product. Id. Petitioner also was obligated to indemnify the customer any damages as the result of the infringement claim. Id. Moreover, the agreement required the customer to give Petitioner “sole control of the defense” in order to receive any indemnity payment.
15
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 17 of 27 PageID #: 11671
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
In short, Petitioner had the opportunity to exercise “sole control” of those Delaware defendants’ defense. The evidence in the instant proceeding establishes that Petitioner had substantial control over the Delaware actions. Gonzalez, 27 F.3d at 758 (“Substantial control . . . connotes the availability of the significant degree of effective control in the . . . defense of the case— what one might term, in the vernacular, the power—whether exercised or not—to call the shots.”).
We also are not persuaded by Petitioner’s arguments that it does not have a right to control the Delaware actions that involve other suppliers’ products, and that Petitioner’s “ plainly shows that ARRIS does not control the litigation.” Disc. Opp. 5-7.
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 18 of 27 PageID #: 11672
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
In essence, Petitioner “has already had his day in court” as it had the opportunity to present proofs and arguments with respect to its own accused product in the Delaware actions. See Taylor, 553 U.S. at 895 (“Because such a person has had the opportunity to present proofs and argument, he has already had his day in court even though he was not a formal party to the litigation.”) (internal quotation marks and citations omitted). Petitioner had the same practical opportunity to control the course of the proceedings that would be available to the named party. As such, Petitioner had the actual measure of control or opportunity to control that might reasonably be expected between formal coparties.
17
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 19 of 27 PageID #: 11673
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Furthermore, Petitioner’s reliance on Wi-Fi One and Nestle is misplaced. Disc. Opp. 5-7 (citing Wi-Fi One, 887 F.3d 1329; Nestle, Case IPR2015-00195, slip op. at 6-17). The determination of whether a petitioner is in privity with a time-barred district court party is a “highly fact-dependent question.” Trial Practice Guide, 77 Fed. Reg. at 48,759. The particular facts in those cases are distinguishable from the instant proceeding.
In Wi-Fi One, the court found that “the evidence did not show that Broadcom had the right to control that litigation or otherwise participated in that litigation to the extent that it should be bound by the results.” Wi-Fi One, 887 F.3d at 1341. In Nestle, the Board explicitly found that there is no evidence to suggest that the IPR petitioner financed the district court litigation or prior inter partes reviews. Nestle, Case IPR2015-00195, slip op. at 12. In fact, the Board noted that the “Agreement expressly states that ‘[e]ach party will bear their own legal costs . . . in handling the [Patent Owner] Claim (e.g., defending, filing counterclaims or cross claims . . . , etc.).’” Id.
Here, in contrast, Petitioner has a right to substantially control the Delaware actions. Under the indemnification agreement, Petitioner had the obligations to defend the patent infringement claim brought against its customer as to its accused product. Ex. 2007.
18
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 20 of 27 PageID #: 11674
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Therefore, unlike Wi-Fi One and Nestle, the evidence in the instant proceeding establishes that
Petitioner had substantial control over the Delaware actions. Petitioner’s involvement was not merely indemnity payments and minor participation. Rather, Petitioner had the same practical opportunity to control the course of the proceedings that would be available to a named party.
In addition, we agree with Patent Owner that cases where the Board rejected a privity argument based on indemnification are distinguishable because in those cases, unlike here, the Board found no sufficient evidence to show that the petitioner exercised or could have exercised control over a named party’s participation in the prior litigation. Prelim. Resp. 32-33; see, e.g., Apple Inc. v. Achates Reference Publ’g, Inc., Case IPR2013-00080, slip op. at 12 (PTAB June 2, 2014) (Paper 90) (noting that the agreement “does not give the [indemnitor] the right to intervene or control [the indemnitee’s] defense to any charge of patent infringement”).
We also are mindful that, in a prior proceeding involving the same petitioner,5 the Board rejected patent owner’s privity argument because,
the Board found that “Patent Owner does not provide evidence
5 The petitioner (ARRIS Group, Inc.) in Case IPR2014-00746 was the predecessor in interest of Petitioner here (ARRIS International plc). Ex. 2002, 2 (ARRIS Form 10-K dated February 29, 2016).
19
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 21 of 27 PageID #: 11675
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
sufficient to demonstrate that [the named party] provided prompt notification to Petitioner, and that Petitioner exercised sole control or full authority according to the Agreements.” ARRIS Group, Inc. v. C-Cation Techs., Case IPR2014-00746, slip op. at 8-10 (Paper 22) (PTAB Nov. 24, 2014). The Board, in the prior proceeding, also noted that “absent is evidence of Petitioner’s conduct in the 2011 district court proceeding from which we could infer that Petitioner exercised control or could have exercised control as provided for in the Agreements.” Id.
Here, to the contrary, the evidence in the instant proceeding shows that Petitioner had substantial control over the Delaware actions.
Exs. 2007-23. As discussed above, Petitioner had the obligation to defend the patent infringement claim brought against its customer with respect to its accused product. Id.
Petitioner had the same practical opportunity to control the course of the proceedings that would be available to a named party. Therefore, the facts in the prior proceeding are distinguishable from
the instant proceeding.
In sum, based on the evidence in the entirety of this record, we find
that Petitioner had substantial control over the Delaware actions. One or more of the defendants of the Delaware actions was in privity with
20
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 22 of 27 PageID #: 11676
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Petitioner, and those defendants were served with a complaint, alleging infringement of the ’565 patent more than one year prior to the filing of the instant Petition. Therefore, we determine that the instant Petition is time-barred under § 315(b).
C. Motion for Additional Discovery
In its Motion for Additional Discovery, Patent Owner indicates that the parties had conferred and agreed to additional discovery between themselves. Disc. Mot. 1; 37 C.F.R. § 42.51(b)(2)(i) (“The parties may agree to additional discovery between themselves.”). In particular, Petitioner agreed to produce “relevant indemnification provisions from agreements with the Delaware defendants, any indemnification claims made by the defendants, and ARRIS’s responses to those claims.” Ex. 2035;
Ex. 2030, 3-4. Petitioner produced the following documents: several indemnification agreements; letters from several of the Delaware defendants to Petitioner, requesting indemnification
; and several response letters from Petitioner to one or more of the Delaware defendants. Exs. 2009-23.
In its Motion for Additional Discovery, Patent Owner alleges that Petitioner did not produce the indemnification agreement and the response letter for each of the customers that sent indemnification notices to Petitioner. Disc. Mot. 1-2. Patent Owner requests discovery of missing documents and interrogatories concerning Petitioner’s involvement in the
21
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 23 of 27 PageID #: 11677
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
Delaware litigation. Id.; Ex. 2033. Patent Owner avers that the requested additional discovery is necessary in the interests of justice, arguing that it is beyond speculation that Petitioner was in privity with the Delaware defendants. Disc. Mot. 2-3.
Under the circumstances of this case, we need not assess the merits of Patent Owner’s Motion for Additional Discovery. As discussed above, even without the additional requested documents and information, the evidence in the current record establishes sufficiently that Petitioner was in privity with one or more of the Delaware defendants, and we determine that the instant Petition is time-barred under § 315(b).
Accordingly, Patent Owner’s Motion for Additional Discovery is dismissed as moot.
D. Motions to Seal
Patent Owner filed unredacted and redacted versions of its Preliminary Response (Papers 9 and 10), along with its First Motion to Seal (Paper 8). Patent Owner also filed a Stipulated Default Protective Order agreed to by the parties, which is a copy of the Board’s Default Protective Order and attached to Patent Owner’s First Motion to Seal. Trial Practice Guide, 77 Fed. Reg. 48,760 (Aug. 14, 2012), App’x B. Patent Owner requests the Board to enter the Stipulated Default Protective Order. Because the parties agree to the terms of the Board’s Default Protective Order, we hereby enter the Stipulated Default Protective Order, which governs the
22
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 24 of 27 PageID #: 11678
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
treatment and filing of confidential information in the instant proceeding. In its First Motion to Seal, Patent Owner seeks to seal Exhibits
2008-23 and portions of its Preliminary Response that discuss the substance of these exhibits. Exhibits 2008-23 were produced by Petitioner pursuant to the Stipulated Default Protective Order, and designated “CONFIDENTIAL- PROTECTIVE ORDER MATERIAL” by Petitioner. Exhibits 2008-23 relate to indemnification agreements between Petitioner and its customers.
Patent Owner filed its Second Motion to Seal (Paper 11) along with unredacted and redacted versions of its Motion for Additional Discovery (Papers 12 and 13). Patent Owner seeks to seal Exhibits 2033 and 2038-42, as well as portions of its Motion for Additional Discovery, which discuss the substance of Exhibits 2008-23. Petitioner filed a Motion to Seal (Paper 14) along with unredacted and redacted versions of its Opposition (Papers 15 and 16) to the Motion for Additional Discovery. Petitioner seeks to seal portions of its Opposition that discuss the substance of Exhibits 2008-23. Patent Owner filed its Third Motion to Seal (Paper 17) along with unredacted and redacted versions of its Reply (Papers 18 and 19) to Petitioner’s Opposition to the Motion for Additional Discovery. Patent Owner seeks to seal portions of its Reply that discuss the substance of Exhibits 2008-23.
Neither party files an opposition to any of the Motions to Seal filed in this proceeding.
23
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 25 of 27 PageID #: 11679
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
The record for an inter partes review shall be made available to the public, except as otherwise ordered, and a document filed with a motion to seal shall be treated as sealed until the motion is decided. 35 U.S.C.
§ 316(a)(1); 37 C.F.R. § 42.14. There is a strong public policy that favors making information filed in inter partes review proceedings open to the public. Garmin Int’l v. Cuozzo Speed Techns., LLC, Case IPR2012-00001, slip op. at 1-2 (PTAB Mar. 14, 2013) (Paper 34). The moving party bears the burden of showing that the relief requested should be granted. 37 C.F.R. § 42.20(c). That includes showing that the information is truly confidential, and that such confidentiality outweighs the strong public interest in having an open record. See Garmin, Case IPR2012-00001, slip op. at 3. The standard for granting a motion to seal is good cause. 37 C.F.R. § 42.54.
Having considered the documents at issue, we are persuaded that good cause exists to keep the documents under seal as they related to confidential business information of Petitioner. In particular, Exhibits 2008-23, and all other documents that discuss the substance of these exhibits, relate to indemnification agreements between Petitioner and its customers. The details of these agreements are unimportant to the patentability of the challenged claims. The public’s interest in having access to the details of these agreements is minimal. Hence, we agree with the parties that the documents should be kept under seal.
We hereby grant the Motions to Seal with respect to the following documents: Exhibits 2008-23, 2033, and 2038-42; and unredacted versions
24
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 26 of 27 PageID #: 11680
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
of Patent Owner’s Preliminary Response (Paper 9), Patent Owner’s Motion for Additional Discovery (Paper 12), Petitioner’s Opposition (Paper 15), and Patent Owner’s Reply (Paper 18).
In addition, this Decision is filed under seal, designated as “For Board and Parties Only” as it discusses and cites to the documents under seal. The parties are ordered to file jointly a proposed redacted version of this Decision within 5 business days from the entry of this Decision.
III. CONCLUSION
For the foregoing reasons, the Petition is time-barred under § 315(b).
IV . ORDER In consideration of the foregoing, it is
ORDERED that the Petition is denied, and no trial is instituted
FURTHER ORDERED that Patent Owner’s Motion for Additional Discovery is dismissed as moot.
FURTHER ORDERED that Patent Owner’s Motions to Seal and Petitioner’s Motion to Seal are granted; the following papers shall be seal as “Board and Parties Only”: Exhibits 2008-23, 2033, and 2038-42; and unredacted versions of Patent Owner’s Preliminary Response (Paper 9), Patent Owner’s Motion for Additional Discovery (Paper 12), Petitioner’s Opposition (Paper 15), and Patent Owner’s Reply (Paper 18);
25
Case 1:15-cv-00842-RGA Document 293-1 Filed 08/08/18 Page 27 of 27 PageID #: 11681
IPR2018-00574 Patent 8,984,565 B2
PUBLIC REDACTED VERSION
FURTHER ORDERED that the Stipulated Default Protective Order attached to Patent Owner’s First Motion to Seal (Paper 8) be entered; and
FURTHER ORDERED that, within 5 business days from the entry of this Decision, Patent Owner and Petitioner jointly file a proposed redacted version of this Decision.
For PETITIONER:
Patrick D. McPherson Diana Sangalli
DUANE MORRIS LLP
pdmcpherson@duanemorris.com dmsangalli@duanemorris.com
For PATENT OWNER:
Robert Whitman Andrea Pacelli
MISHCON DE REYA NEW YORK LLP
robert.whitman@mishcon.com andrea.pacelli@mishcon.com chanbond-arris-ipr@mishcon.com
26
500 million in cash the rest in stock
Me and my wife are just laughing at the conversation, a bunch to average Joe's who took a chance in this company talking about what they would do with $1,000,000+ profit. After years of holding onto the stock it feels good to See the potential that's before us.