Docket No. 2015-1944-46 (IPR2013-00601)
DYK, BRYSON, REYNA (D)
April 20, 2018
Brief summary: PTAB rejection of Wi-Fi’s time-bar argument (§ 315(b)) that no DC “defendant was either a privy of Broadcom or a real party in interest”, and that the claims are invalid for anticipation, affirmed.
Summary: This opinion relates to three consolidated cases following remand from the en banc decision (Wi-Fi One, FC 2018 (January)) in which the FC panel’s decision that in IPRs time-bar determinations by the PTAB are not appealable was overturned. In all three cases, the PTAB found various claims of Wi-Fi’s US 6,772,215 to be invalid for anticipation (two other patents directed to similar subject matter are the subject of separate IPRs: IPR2013-00602 (US 6,566,568) and IPR2013-00636 (US 6,424,625)). The FC panel here explained that the en banc court only addressed the time-bar issue and did not address the remaining portions of the decisions, which were affirmed. On the remanded time bar issue, Wi-Fi argued that Broadcom was time-barred under § 315(b) (IPR must be filed within one year of being served with a DC complaint) because it was “in privity with” D-Link and others, against which Wi-Fi’s predecessor (“Ericsson”) filed an infringement suit against in 2010, or D-Link and the others were “the real parties in interest” in the IPR brought by Broadcom. The FC panel explained that “[t]o determine whether a petitioner is in privity with a time-barred [DC] litigant, the [PTAB] conducts a ‘flexible’ analysis that ‘seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels” (“a shorthand statement that collateral estoppel is to be applied”). And “[t]o decide whether a party other than the petitioner is the real party in interest, the [PTAB] seeks to determine whether some party other than the petitioner is the ‘party or parties at whose behest the petition has been filed’” (“a party that funds and directs and controls an IPR…even if that party is not a ‘privy’ of the petitioner”). The FC panel here found that the PTAB “made clear it understood that privity and real-party-in-interest status could be established not only by Broadcom’s exercise of control over the [DC] proceedings, but also by the D-Link defendants’ exercise of control over the [IPR] proceeding”, and that the PTAB “did not apply a legally erroneous standard in deciding” that no DC “defendant was either a privy of Broadcom or a real party in interest” (e.g., the PTAB “recognized that there are a number of circumstances in which privity might be found, including when the nonparty controlled the [DC] litigation” (Taylor, US 2008), and properly explained its decision (Judge Reyna dissented (“Privity may exist in other forms that do not involve control over the prior litigation, all of which are excluded under the standard adopted by the majority.”), addressed briefly in FN3 of the majority opinion). Wi-Fi also argued the PTAB “impropertly denied its requests for discovery of evidence such as the indeminification agreements between Broadcom and two the D-Link defendants” that “would have established” that the parties “were in privity or…were the real parties in interest”. The FC panel explained that that evidence was “additional discovery” and that the PTAB “rules provide that a party seeking additional discovery ‘must show that such additional discovery is in the interests of justice’” (37 CFR § 42.51). The PTAB decided “Wi-Fi had not met that standard”, a decision the FC panel reviewed for an abuse of discretion (Ultratec, FC 2017; Redline, FC 2015) and found none. Wi-Fi also argued the PTAB’s finding of invalidity for anticipation was incorrect, but the FC panel disagreed because, e.g., the PTAB correctly found no evidence that an amendment made during prosecution distinguished the claims from the prior art.