Indemnitor Merely Sending Advice Does Not Result in Privity IPR2015-00635


Takeaway: One factor to determine if a non-party is in privity with a litigant is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.

In its Decision, the Board granted institution of inter partes review (“IPR”) of claims 1, 3, and 4 of the ’883 patent. The ’883 patent relates to facilitating two-way multi-media communication based on a shared transmission media such as a coaxial cable-TV network, and more specifically, to signaling channel management and protocol. Petitioner alleged that (1) claims 1 and 4 of the ’883 patent are obvious over MPT 1343, MPT 1347, and MPT 1327, and (2) claim 3 is obvious over MPT 1343, MPT 1347, MPT 1327, Zdunek, and Dufresne. No claim terms were expressly construed.

Patent Owner argued that the Board should not consider the request to preclude “serial challenges” to the ’883 patent. The instant proceeding is the third petition requesting IPR for the ’883 patent, two of which were filed by the Petitioner. Patent Owner asserted that IPR2014-00454 presented substantially the same prior art and arguments as the instant Petition and that Petitioner has not explained why it did not assert the prior art on which it now relies earlier. The Board declined to exercise its discretion to deny the Petition because the same combination of art had not been previously submitted. In IPR2014-00454, the Board found the petition deficient in several respects and did not reach the substance of MPT 1343 or MPT 1327 regarding their applicability to claims 1, 3, and 4 of the ’883 patent. The Board also disagreed with Patent Owner that it must deny the Petition because it is the second one filed by Petitioner. Petitioner could not have joined IPR2014-004545 because no IPR was instituted in that case.

Patent Owner argued that the Petition is time-barred because Petitioner is a privy of Comcast, who was served a complaint for infringement of the ’883 patent more than four years before the date of the Petition. The Board noted that one factor to determine if a non-party is in privity with a litigant is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding. Patent Owner alleged that privity between Petitioner and Comcast is evidenced by indemnification clauses in purchase agreements between Comcast and Petitioner. As evidence that Petitioner exercised control over Comcast’s district court proceeding, Patent Owner cited log entries in a privilege log that shows Petitioner’s in-house counsel had sent more than 20 emails reflecting “legal advice” to Comcast’s in-house counsel or outside litigation counsel. Patent Owner also noted that the privilege log refers to Comcast’s in-house counsel as “co-counsel.”

The Board addressed the same arguments and evidence in IPR2014-00746, which was also filed by Petitioner. The Board concluded in IPR2014-00746, as it does in the instant proceeding, that the evidence was insufficient to show that Comcast provided prompt notification to Petitioner under the purchase agreements or that Petitioner exercised sole control or full authority as provided for in the agreements. Thus, the Board concluded that Petitioner is not time-barred from institution of IPR.

Regarding the merits of the obviousness challenges, Petitioner alleged that the MPT specifications disclose all of the limitations of claim 1. Patent Owner asserted that the monitoring, determining, and reassigning steps cannot be performed in the manner recited in claim 1 without a central controller that is involved in the claimed monitoring, determining, and reassigning steps. Because the MPT specifications relied upon by Petitioner describe radio units, rather than a central controller, Patent Owner argued that the MPT specification do not render claim 1 obvious. The Board noted that with the exception of “reassigning” step (e), claim 1 does not explicitly require a central controller to perform the recited steps. Petitioner’s argument also hinges on the steps being performed in the order presented, but claim 1 does not impose such a narrow limitation. Thus, the Board concluded that Petitioner had established a reasonable likelihood of success in showing claims 1 and 4 are unpatentable. The Board reached a similar conclusion regarding Petitioner’s obviousness challenge of claim 3.

Lastly, Petitioner filed a Motion for Entry of the Default Protective Order which was granted. Patent Owner filed a Motion to Seal its Preliminary Response and Certain Associated Exhibits, and a redacted version of the Preliminary Response. A motion to seal is granted upon a showing of good cause. Patent Owner asserted that the Preliminary Response should be sealed because it refers to and discusses confidential documents produced by Petitioner, designated as protective order material pursuant to the entered Protective Order. The Board determined that Patent Owner had shown good cause and granted the Motion to Seal.

Paper 19: Decision on Institution of Inter Partes Review
Dated: July 31, 2015
Patent: 5,563,883
Before: Barbara A. Benoit, Lynne E. Pettigrew, and Miriam L. Quinn
Written by: Pettigrew
Related proceedings: C-Cation Technologies, LLC v. Time Warner Cable Inc., No. 2:14-cv-00059 (E.D. Tex.) (filed Feb. 4, 2014); C-Cation Technologies, LLC v. Cable One, Inc., No. 2:11-cv-00030 (E.D. Tex.) (filed Jan. 25, 2011; terminated Jan. 21, 2014); Cisco Systems, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12); ARRIS Group, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00746 (PTAB Nov. 24, 2014) (Paper 22); and Unified Patents Inc. v. C-Cation Techs., LLC, Case IPR2015-01045 (Paper 2).