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excellent coverage ! Law360 article:

PTAB Denies Review Of Networking Patents As Time-Barred

https://www.law360.com/articles/1067901/ptab-denies-review-of-networking-patents-as-time-barred By Tiffany Hu

Law360 (July 27, 2018, 7:46 PM EDT) -- The Patent Trial and Appeal Board has denied several petitions for inter partes review launched by Arris International PLC for being time-barred, shooting down the cable box maker's attempts to invalidate data distribution patents held by ChanBond LLC.

In redacted versions of the July 20 decisions made public Friday, the PTAB declined to review three ChanBond patents relating to a system of distributing digital signals, finding that Arris was in privity with major cable companies that were sued over the same patents more than a year previously, and therefore its bids for review were time-barred under 35 U.S.C. Section 315(b).

Although Arris was not named as a party to the aforementioned lawsuits, which were filed in Delaware federal court in October 2015, the cable box maker had control over the defense in those actions, according to the board.

"We find that petitioner had substantial control over the Delaware actions," the PTAB wrote in each of the five decisions. "One or more of the defendants of the Delaware actions was in privity with petitioner, and those defendants were served with a complaint, alleging infringement of the [patent] more than one year prior to the filing of the instant petition. Therefore, we determine that the instant petition is time-barred."

The patents at issue cover a "system and method for distribution of digital signals onto, and off of, a wideband signal distribution system," according to filings.

Arris had challenged U.S. Patent Numbers 8,984,565 B2; 8,341,679 B2; and 7,941,822 B2 in February 2018, over a year after ChanBond had accused major cable companies including Charter Communications Inc., Time Warner Cable Inc., Comcast Corp. and others of infringement.

While there has been a fair amount of litigation over what it means for two companies to be in "privity" with each other at the PTAB, the board said it has taken the approach of focusing on the relationship between the current petitioner and the prior litigant at the time of the earlier lawsuit.

The PTAB found that Arris had supplied at least one of the allegedly infringing products to at least one of the companies, thus establishing a sufficient amount of control over the previous actions. The board noted that "actual and complete control of the entire litigation" was not required to find privity.

Furthermore, under an indemnification agreement, Arris was required to defend infringement claims brought against its customer relating to the products, the board found. And in order to be indemnified, the customer was to give Arris "sole control of the defense," according to the decision.

The board rejected Arris' attempt to analogize its situation to the one in the Federal Circuit's Wi-Fi One ruling earlier this year — where the court found no evidence to suggest the petitioner had funded the previous inter partes reviews — pointing out that the cable box maker was specifically obligated to defend the patent claims under the indemnity agreement.

"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," the PTAB wrote. "Petitioner had the same practical opportunity to control the course of the proceedings that would be available to the named party."

The patents-in-suit are U.S. Patent Numbers 8,984,565 B2; 8,341,679 B2; and 7,941,822 B2.

Counsel for both parties did not immediately respond to requests for comment Friday.

Arris is represented by Patrick D. McPherson and Diana Sangalli of Duane Morris LLP.

ChanBond is represented by Robert Whitman and Andrea Pacelli of Mishcon de Reya New York LLP.

The cases are Arris International PLC v. ChanBond LLC, case numbers IPR2018-00570, IPR2018-00572, IPR2018-00573, IPR2018-00574 and IPR2018-00575.

--Editing by Marygrace Murphy.

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