Filed: May 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARRIS INTERNATIONAL PLC
`Petitioner
`v.
`CHANBOND, LLC
`Patent Owner
`_____________________
`Case IPR2018-00575
`Patent 8,984,565
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,984,565
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`TABLE OF CONTENTS
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`I.
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`Introduction ...................................................................................................... 1
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`II.
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`Overview of U.S. Patent No. 8,984,565 .......................................................... 3
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`III.
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`Prior Proceedings ............................................................................................. 7
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`IV. Argument .......................................................................................................12
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`A.
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`B.
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`The Petition Is Time Barred Under 35 U.S.C. § 315(b) .....................12
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`The Board Should Deny Institution Under 35 U.S.C. § 314(a) ..........33
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`V.
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`Conclusion .....................................................................................................47
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`TABLE OF AUTHORITIES
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`Cases
`Abiomed, Inc. v. Maquet Cardiovascular, LLC,
`Case IPR2017-02150 (PTAB March 12, 2018) .................................................. 43
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`Page(s)
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`Alcatel-Lucent USA Inc. v. Oyster Optics, LLC,
`Case IPR2017-02146 (PTAB Feb. 28, 2018) ..................................................... 37
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`Alere Inc. v. Rembrandt Diagnostics, LP,
`Case IPR2017-01130 (PTAB Sept. 28, 2017) ................................................... 39
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`Apple Inc. v. Achates Reference Publishing, Inc.,
`Case IPR2013-00080 (PTAB June 2, 2014) ....................................................... 32
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`ARRIS Group, Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00746 (PTAB Nov. 24, 2014) .............................................. 32, 33
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`Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.,
`Case IPR2014-01288 (PTAB Feb. 20, 2015) ..................................................... 16
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`Bros, Inc. v. W. E. Grace Mfg. Co.,
`261 F.2d 428 (5th Cir. 1958) ........................................................................ 25, 26
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`Cal. Physicians’ Serv. v. Aoki Diabetes Research Inst.,
`163 Cal. App. 4th 1506 (2008) ........................................................................... 14
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`In re ChanBond, LLC Patent Litigation,
`No. 1:15-cv-00842-RGA (D. Del. Apr. 24, 2018) ...................................... 11, 45
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`Cisco Systems, Inc., v. ChanBond LLC,
`Case IPR2016-01890 (PTAB Mar. 29, 2017) .............................................. 34, 41
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`Cisco Systems, Inc., v. ChanBond LLC,
`Case IPR2016-01891 (PTAB Mar. 29, 2017) .................................................... 34
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`Cisco Systems, Inc. v. Hewlett Packard Enterprise Co.,
`Case IPR2017-01933 (PTAB Mar. 16, 2018) .................................................... 30
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`ESET, LLC v. Finjan, Inc.,
`Case IPR2017-01969 (PTAB Feb. 15, 2018) ......................................... 35, 36, 40
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`FedEx Corp. v. Intellectual Ventures II LLC,
`Case IPR2017-02028 (PTAB Feb. 21, 2018) .................................................... 43
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`FutureVision.com, LLC v. Cequel Commc’ns, LLC,
`No. CV 13-855-GMS-MPT, 2016 WL 373790 (D. Del. Feb. 1, 2016) ....... 10, 11
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`General Electric Co. v. TransData, Inc.,
`Case IPR2014-01380 (PTAB Apr. 15, 2015) ......................................... 29, 30, 31
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`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357 (PTAB Sept. 6, 2017) ...............................................passim
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`Gonzalez v. Banco Cent. Corp.,
`27 F.3d 751 (1st Cir. 1994) ..................................................................... 16, 17, 25
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`Halyard Health, Inc. v. Kirn Med. Design, LLC,
`Case IPR2017-01990 (PTAB Mar. 8, 2018) ...................................................... 43
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`Intel Corp. v. Alacritech, Inc.,
`Case IPR2017-01392 (PTAB Nov. 30, 2017) .................................................... 32
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`Intel Corp. v. U.S. Int’l Trade Comm’n,
`946 F.2d 821 (Fed. Cir. 1991) ............................................................................ 27
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`Mitsuba Corp. v. Intellectual Ventures II LLC,
`Case IPR2018-00071 (PTAB Apr. 23, 2018) ..................................................... 37
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`Montana v. United States,
`440 U.S. 147 (1979) ...................................................................................... 17, 25
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`NetApp Inc. v. Realtime Data LLC,
`Case IPR2017-01195 (PTAB Oct. 12, 2017) ............................................... 39, 45
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`NetApp Inc. v. Realtime Data LLC,
`Case IPR2017-01660 (PTAB Jan. 25, 2018) ...................................................... 35
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`One World Techs., Inc. v. The Chamberlain Group, Inc.,
`Case IPR2017-01546 (PTAB Dec. 13, 2017) ............................................... 34, 43
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`RPX Corp. v. ChanBond LLC,
`Case IPR2016-00234 (PTAB May 25, 2017) ....................................................... 9
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`RPX Corp. v. ChanBond LLC,
`No. 2017-2346 (Fed. Cir. Jan. 17, 2018) .............................................................. 9
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`RPX Corp. v. Virnetx Inc.,
`Case IPR2014-00171 (PTAB June 5, 2014) ....................................................... 29
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`Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC,
`Case IPR2017-01305 (PTAB Oct. 17, 2017) ............................................... 35, 40
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`Sorenson v. Sec’y of Treasury of U.S.,
`475 U.S. 851 (1986) ............................................................................................ 15
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`Taylor v. Sturgell,
`553 U.S. 880 (2008) .......................................................................... 14, 26, 27, 28
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`Tidewater Patent Dev. Co. v. Kitchen,
`421 F.2d 680 (4th Cir. 1970) .............................................................................. 26
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`Ventex Co., Ltd. v. Columbia Sportswear North America, Inc.,
`Case IPR2017-00651 (PTAB July 26, 2017) ..................................................... 32
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`Vulcan, Inc. v. Fordees Corp.,
`658 F.2d 1106 (6th Cir. 1981) ............................................................................ 27
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`WesternGeco LLC v. ION Geophysical Corp.,
`No. 2016-2099, 2018 WL 2090314 (Fed. Cir. May 7, 2018) ....................... 14, 26
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`Wi-Fi One, LLC v. Broadcom Corp.,
`887 F.3d 1329 (Fed. Cir. 2018) .............................................................. 13, 26, 27
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`Statutes
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`35 U.S.C. 314(a) ...................................................................................................... 46
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`35 U.S.C. § 314 .......................................................................................................... 1
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`35 U.S.C. § 314(a) ............................................................................................passim
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`35 U.S.C. § 315(b) ............................................................................................passim
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`35 U.S.C. § 316(a)(11) ............................................................................................. 46
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`35 U.S.C. § 325(d) ................................................................................................... 40
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`Other Authorities
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`37 C.F.R. § 42.107(a) ................................................................................................. 1
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`37 C.F.R. § 42.108(a) ............................................................................................... 46
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`18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice
`& Procedure § 4451 (2d ed.) ................................................................... 16, 25, 33
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`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) ...................................................... 15
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) ................. 13, 16
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`2002
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`Cisco Systems, Inc. Form 10-K (Sept. 7, 2017)
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`ARRIS International plc Form 10-K (Feb. 29, 2016)
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`ARRIS International plc Form 10-K (March 1, 2017)
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`ARRIS International plc Form 10-K (March 1, 2018)
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`Stipulation and [Proposed] Order to Amend Scheduling Order, In
`re ChanBond, LLC Patent Litigation, No. 1:15-cv-00842-RGA
`(D. Del. Apr. 24, 2018) (so ordered Apr. 24, 2018)
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`Summons and Proof of Service on Delaware Defendants (Oct. 1,
`2015)
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`ARRIS Corporate Terms and Conditions of Sale, https://
`www.arris.com/globalassets/resources/company-overview/tc.pdf
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`Atlantic Broadband Answer to the Complaint (Nov. 23, 2015);
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`Mediacom Answer to the Complaint (Nov. 23, 2015)
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`Wave Answer to the Complaint (Nov. 23, 2015)
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`2014
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`2015
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`2016
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`WOW Answer to the Complaint (Nov. 23, 2015)
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`ARRIS’s Objections and Responses to ChanBond’s Subpoena for
`Documents (Jan. 16, 2017)
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`ARRIS Group, Inc.’s Objections and Responses to ChanBond’s
`Subpoena to Testify at a Deposition (Jan. 22, 2018)
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`Petitioner’s Responses to Patent Owner’s Requests for Additional
`Discovery (Apr. 13, 2018)
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`ARRIS Press Release, “ARRIS Acquires Motorola Home: Creates
`Premier Video Delivery and Broadband Technology Company”
`(Apr. 17, 2013)
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`New York Times, “Motorola Completes General Instrument
`Acquisition” (Jan. 6, 2000)
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.107(a), Patent Owner, ChanBond, LLC, submits
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`the following preliminary response to the Petition, setting forth reasons why no
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`inter partes review should be instituted under 35 U.S.C. § 314.
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`This proceeding is the latest in a seemingly endless string of challenges to
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`the validity of this patent family. Not even two months after Patent Owner
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`initiated infringement litigation in Delaware District Court in 2015, RPX
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`Corporation (“RPX”) filed a first, and ultimately unsuccessful, inter partes review
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`petition against one of the asserted patents. This was followed less than a year
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`later by a second salvo of eight inter partes review petitions filed by Cisco
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`Systems, Inc. (“Cisco”) against each of the three patents asserted in the Delaware
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`litigation. The Board, however, denied institution on seven of those eight
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`petitions. This latest round of five petitions, again challenging all three asserted
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`patents, was filed by Petitioner ARRIS International plc (“ARRIS”) just before
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`issuance of a final written decision on the one Cisco petition that was instituted by
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`the Board.
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`These are not separate challenges by actors with independent interests.
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`Cisco and ARRIS are suppliers of telecommunications equipment to the
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`defendants in the Delaware litigation (“the Delaware Defendants”). Both Cisco
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`and ARRIS are member companies of RPX. Cisco listed all of the Delaware
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`Defendants, as well as ARRIS, as real parties in interest in each of its IPR
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`petitions. And as Petitioner ARRIS admitted in its filings to the U.S. Securities
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`and Exchange Commission (“SEC”) and other public documents, it has a duty to
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`indemnify the Delaware Defendants in case of a loss, and under the same
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`indemnification agreements it also has a legal right to control the litigation.
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`Under these facts, the Board should deny institution of trial for two separate
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`reasons. First, Petitioner is in privity with the Delaware Defendants, who were
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`served with a complaint for infringement of the challenged patent in 2015.
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`Therefore, the petition is time-barred under 35 U.S.C. § 315(b). Second, the Board
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`should exercise its discretion to deny institution under 35 U.S.C. § 314(a) because
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`“multiple, staggered petition filings, such as those here, are an inefficient use of the
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`inter partes review process and the Board’s resources.” General Plastic Indus.
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`Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, slip op. at 21 (PTAB
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`Sept. 6, 2017) (paper 19) (precedential). Petitioner and its allies should not be
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`allowed to “strategically stage their prior art and arguments in multiple petitions,
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`using [the Board’s] decisions as a roadmap, until a ground is found that results in
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`the grant of review.” Id. at 17.
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`II. OVERVIEW OF U.S. PATENT NO. 8,984,5651
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`U.S. Patent No. 8,984,565 (“the ’565 Patent,” Ex. 1001) is “directed … to an
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`intelligent device system and method for distribution of digital signals onto, and
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`off of, a wideband signal distribution system.” Ex. 1001, ’565 Patent at 1:25–29.
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`One of the problems the ’565 Patent inventors intended to solve was the inability
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`to “download to individual users large quantities of digitized images (video, film,
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`… etc.), and to … allow those digital images to be displayed with the enhanced
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`quality such digital images can offer.” Id. at 1:59–63. The transfer of such
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`information typically “clog[ged] data networks” or “severely degraded” the
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`network’s performance. Id. at 1:36–37, 1:67–2:1. The inventors recognized that it
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`was “desirable to transport the digitized data on an analog carrier … in a format
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`that would allow for greater amounts of data to be carried at one time, such as by
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`modulated RF.” Id. at 2:13–16. The ’565 invention “offers the advantage that a
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`high amount of throughput can be achieved in the transmission of digital and/or
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`analog information on an RF … carrier.” Id. at 6:45–49.
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`The
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`inventors recognized
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`that digital
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`transmission systems “often
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`employ[ed] analog waveforms, such as RF carrier waveforms, as a physical-layer
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`transport mechanism ….” Id. at 5:8–10. Fig. 5 of the ’565 Patent (reproduced
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`1 Patent Owner provides an identical overview of the ’565 Patent in its preliminary
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`responses to IPR2018-00574 and IPR2018-00575, filed concurrently.
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`below with annotations in color) depicts “an intelligent device system for use in
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`local sending of digital information and receiving of digital … information using
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`RF modulation[.]” Id. at 4:48–51.
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`Wideband
`Signal
`Distribution
`System
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`The exemplary system of Fig. 5 is capable of both sending RF signals to,
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`and receiving RF signals from, a wideband signal distribution system via
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`broadband uniform distribution (BUD) unit 38. Id. at 7:10–11, 10:23–27, 10:52–
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`60. The transmission and reception paths are annotated in blue and red,
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`respectively. When sending data to the wideband signal distribution system (blue
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`path in the annotated Fig. 5), the exemplary system of Fig. 5 receives digital
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`information from a number of addressable devices 202 and modulates it onto an
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`RF signal. “The system of FIG. 5 preferably includes a plurality of addressable
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`devices 202, such as Ethernet or NIC cards, or digital display devices ….” Id. at
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`10:28–30. “The signals incoming from each of the addressable devices 202 are
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`combined by a digital combiner 410, and passed through a traffic sensor 412, at
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`least one modulator 414, and an RF converter section 418.” Id. at 10:42–45. “The
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`output of the RF converter section 418 is preferably impedance matched to a BUD
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`[broadband uniform distribution unit] 38, and feeds the signal exiting the RF
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`converter section 418 to the BUD input port or ports.” Id. at 10:52–54.
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`The intelligent device system of Fig. 5 is capable of dynamically allocating
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`multiple, separate RF channels for transmission based on the information
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`throughput of the digital information. “[T]he signal entering the modulator bank
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`414 is preferably measured via a traffic sensor 412 to determine if the information
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`volume is greater than the normal capacity of, for example, a single modulator. If
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`the volume is greater, the DSP 420 will, in turn, direct the incoming data to as
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`many modulators as necessary to modulate all data from the combiner 410.” Id. at
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`9:46–52. “The digital signal processor (DSP) 420 … determines the number of
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`modulators, or the channel width or widths, needed to modulate the signal
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`incoming to the traffic sensor 412, as well as the number of RF channels, and
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`which RF channels, on which the output of the modulator or modulators is
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`modulated. Note that, for example, where QAM modulation is used, QAM
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`modulation is generally 40 megabits per second, per 6 MHz RF channel, thus
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`requiring the use of two 6 MHz RF channels in order to modulate … 80 megabits
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`per second coming from the digital combiner …. The RF channel frequency is
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`selected from at least two available frequency channels.” Id. at 9:65–10:10. “[A]n
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`RF system channel detector [239] is preferably in communication with the DSP
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`420 in order to update the DSP 420 as to the RF channels in use and available.” Id.
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`at 10:49–51.
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`When receiving data from the wideband signal distribution system (red path
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`in the annotated Fig. 5), the exemplary system of Fig. 5 recombines the
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`information carried by the separate RF channels into a digital stream for reception
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`by the addressable devices. “The signal entering the intelligent device is
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`preferably split by at least one RF splitter 214, and is then differentiated according
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`to the information frequency on the incoming carrier.” Id. at 8:46–49. “The IP
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`portion of the modulated RF signal fed through a second bandpass filter 218 …
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`and the IP portion is then demodulated by at least one demodulator 220. The
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`demodulator 220 strips the RF carrier signal from the digital baseband signal ….
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`Following demodulation, the digital signals may be combined by a digital
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`combiner 212, such as a multiplexer, in order to effectuate a parallel to serial
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`conversion. The output of the digital combiner 212 is a high speed serial digital
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`output, on the order of, for example, up to, or in excess of, several Gbit/sec. The
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`output of the digital combiner 212 is then preferably routed to a splitter, which
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`splitter feeds an outgoing signal to the input pin pairs … of at least one addressable
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`device 202.” Id. at 11:15–29.
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`III. PRIOR PROCEEDINGS2
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`This is the third wave of challenges against the patents in this family. Over
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`the last two and a half years, three petitioners, and numerous other real parties in
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`interest and privies, have filed 14 separate petitions for inter partes review of the
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`same three related patents. Of the nine petitions filed by RPX and Cisco, eight
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`were unsuccessful. As discussed in Sections IV.A and IV.B below, the Board
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`should deny institution on this latest salvo of five petitions because they are
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`inextricably linked to those prior proceedings.
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`On September 21, 2015, Patent Owner filed patent infringement actions in
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`the U.S. District Court
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`for
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`the District of Delaware against several
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`telecommunications companies (“the Delaware Defendants”).3 In its complaints,
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`2 Patent Owner provides a substantially identical summary of prior proceedings in
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`its preliminary
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`responses
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`to
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`IPR2018-00574 and
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`IPR2018-00575,
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`filed
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`concurrently.
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`3 The Delaware Defendants are Atlantic Broadband Group, LLC (“Atlantic
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`Broadband”) (No. 1:15-cv-00842); Bright House Networks, LLC (“Bright House”)
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`(No. 1:15-cv-00843); Cable One Inc. (“Cable One”) (No. 1:15-cv-00844);
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`ChanBond alleged infringement of three related patents, namely, U.S. Patent Nos.
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`7,941,822 (“the ’822 Patent”), 8,341,679 (“the ’679 Patent”), and 8,984,565 (“the
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`’565 Patent”), by the Delaware Defendants’ cable systems and services. The ’565
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`Patent is at issue in this proceeding.
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`On November 20, 2015, about two months after ChanBond filed its
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`infringement complaints, RPX, a so-called “patent risk management” company,4
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`filed the first petition for inter partes review of the ’822 Patent. RPX Corp. v.
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`ChanBond LLC, Case IPR2016-00234 (“the RPX IPR”). RPX purported to be
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`Cablevision Systems Corporation and CSC Holdings, LLC (“Cablevision”) (No.
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`1:15-cv-00845); Cequel Communications, LLC and Cequel Communications
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`Holdings I, LLC d/b/a Suddenlink Communications (“Cequel/Suddenlink”) (No.
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`1:15-cv-00846); Charter Communications, Inc. (“Charter”) (No. 1:15-cv-00847);
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`Comcast Corporation and Comcast Cable Communications, LLC (“Comcast”)
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`(No. 1:15-cv-00848); Cox Communications, Inc. (“Cox”) (No. 1:15-cv-00849);
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`Mediacom Communications Corporation (“Mediacom”) (No. 1:15-cv-00850);
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`RCN Telecom Services, LLC (“RCN”) (No. 1:15-cv-00851); Time Warner Cable,
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`Inc. and Time Warner Cable Enterprises LLC (“TWC”) (No. 1:15-cv-00852);
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`WaveDivision Holdings, LLC (“Wave”) (No. 1:15-cv-00853); and WideOpen
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`West Finance, LLC (“WOW”) (No. 1:15-cv-00854).
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`4 See http://ir.rpxcorp.com/investor-relations.
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`acting independently of the Delaware Defendants as it only listed itself as real
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`party in interest, and stated: “RPX has complete, unilateral control of all aspects of
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`this proceeding and is also solely responsible for all costs and expenses associated
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`with this proceeding.” Petition at 2, RPX Corp. v. ChanBond LLC, Case IPR2016-
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`00234 (Nov. 20, 2015). After oral hearing, the Board issued a final written
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`decision in Patent Owner’s favor, determining that RPX had not shown by a
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`preponderance of the evidence that any of the claims at issue were unpatentable.
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`RPX Corp. v. ChanBond LLC, Case IPR2016-00234, slip op. at 2 (PTAB May 25,
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`2017) (paper 28). RPX attempted to appeal the Board’s decision, but the U.S.
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`Court of Appeals for the Federal Circuit dismissed the appeal for lack of standing.
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`RPX Corp. v. ChanBond LLC, No. 2017-2346 (Fed. Cir. Jan. 17, 2018).
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`Between September 6 and September 28, 2016, while the RPX IPR was
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`pending, Cisco filed eight more petitions for inter partes review of the ’822, ’679
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`and ’565 Patents. Cisco Systems, Inc., v. ChanBond LLC, Cases IPR2016-01744
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`and IPR2016-01746 (filed Sept. 6, 2016), IPR2016-01889, IPR2016-01890 and
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`IPR2016-01891 (filed Sept. 26, 2016), IPR2016-01898, IPR2016-01899 and
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`IPR2016-01900 (filed Sept. 28, 2016) (collectively, “the Cisco IPRs”). Cisco is a
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`maker of telecommunications equipment, including cable modem termination
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`systems (CMTSs) used by telecommunications companies such as the Delaware
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`Defendants. Ex. 2001, Cisco Form 10-K at 6 (Sept. 7, 2017). Unlike RPX, Cisco
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`listed all of the Delaware Defendants as real parties in interest in each of its IPR
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`petitions. See, e.g., Petition at 2, Cisco Systems, Inc., v. ChanBond LLC, Case
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`IPR2016-01744 (Sept. 6, 2016). In addition, Cisco, “out of an abundance of
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`caution based on certain decisions from the PTAB describing the test for real
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`parties-in-interest,” identified ARRIS Group, Inc., the predecessor-in-interest to
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`the Petitioner in this proceeding,5 as a real party in interest in each of its IPR
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`petitions. Id.
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`Cisco’s challenge was marginally more successful than RPX’s, because the
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`Board denied institution on seven out of eight petitions filed by Cisco. Having
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`instituted trial on the sole surviving petition, the Board issued a final written
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`decision determining that certain claims of the ’822 Patent were unpatentable.
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`Cisco Systems, Inc., v. ChanBond LLC, Case IPR2016-01744 (PTAB Feb. 23,
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`2018) (paper 28). That decision is currently on appeal to the U.S. Court of
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`Appeals for the Federal Circuit. ChanBond, LLC v. Cisco Systems, Inc., No. 18-
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`1886 (filed Apr. 25, 2018).
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`This third wave of challenges involves five inter partes review petitions, this
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`time filed by Petitioner ARRIS and, once again, targeting the ’822, ’679 and ’565
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`Patents. ARRIS International plc v. ChanBond, LLC, Cases IPR2018-00570,
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`IPR2018-00572, IPR2018-00573, IPR2018-00574, and IPR2018-00575. ARRIS
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`5 See Ex. 2002, ARRIS Form 10-K at 2 (Feb. 29, 2016).
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`filed its five petitions on February 2, 2018, just three weeks prior to issuance of the
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`final written decision in the Cisco IPRs. Like Cisco, ARRIS is a maker of
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`telecommunications equipment used by the Delaware Defendants. As ARRIS
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`stated in its filings to the SEC, if ChanBond prevails in the district court litigation
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`“ARRIS may be required to indemnify the [Delaware Defendants] and/or pay
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`damages for utilizing certain technology.” Ex. 2002, ARRIS Form 10-K at 31
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`(Feb. 29, 2016).
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`As a result of these endless, staggered challenges by the Delaware
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`Defendants, their suppliers Cisco and ARRIS, and alleged third party RPX,6 there
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`has not been a single day since November 2015 when Patent Owner has not had to
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`litigate at least one, if not multiple PTAB proceedings in parallel with the
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`infringement litigation against the Delaware Defendants. Fact discovery in the
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`Delaware litigation will close on June 1, 2018, and the case is expected to go to
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`trial by early 2019. Ex. 2005, Stipulation and [Proposed] Order to Amend
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`Scheduling Order, In re ChanBond, LLC Patent Litigation, No. 1:15-cv-00842-
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`RGA (D. Del. Apr. 24, 2018) (so ordered Apr. 24, 2018).
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`6 It is public knowledge that both Petitioner ARRIS and prior Petitioner Cisco are
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`member companies of RPX. See FutureVision.com, LLC v. Cequel Commc’ns,
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`LLC, No. CV 13-855-GMS-MPT, 2016 WL 373790, at *2 (D. Del. Feb. 1, 2016).
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`IV. ARGUMENT7
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`As explained below, the Board may not institute an inter partes review
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`because Petitioner is time barred under 35 U.S.C. § 315(b). In the alternative, the
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`Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a).
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`A. The Petition Is Time Barred Under 35 U.S.C. § 315(b)
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`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
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`the petition requesting the proceeding is filed more than 1 year after the date on
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” Patent Owner served the Delaware
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`Defendants with a complaint alleging infringement of the ’565 Patent on
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`October 1, 2015, more than one year before the present petition was filed. See Ex.
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`2006, Summons and Proof of Service on Delaware Defendants (Oct. 1, 2015).
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`Because, as explained below, Petitioner was in privity with the Defendants in the
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`Delaware litigation, the petition is time barred under § 315(b).
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`1. Involvement in a Prior Litigation Creates Privity with the Defendants
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`The Section 315(b) one-year time bar is triggered by service of a complaint
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`on any “privy” of Petitioner. “The use of the familiar common law terms ‘privy’
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`7 Patent Owner provides substantially identical arguments in its preliminary
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`responses to IPR2018-00574 and IPR2018-00575, filed concurrently.
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`and ‘real party in interest’ indicate that Congress intended to adopt common law
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`principles to govern the scope of the section 315(b) one-year bar.” Wi-Fi One,
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`LLC v. Broadcom Corp., 887 F.3d 1329, 1335 (Fed. Cir. 2018). While a
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`determination of privity is a fact-dependent question, the applicable authorities
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`provide a few reliable guidelines, starting with the Office Trial Practice Guide and
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`authorities cited therein.
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`First, the Section 315(b) time bar may be triggered by Petitioner’s
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`involvement with the Delaware litigation, even if Petitioner was not a named
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`defendant. “Privity is essentially a shorthand statement that collateral estoppel is
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`to be applied in a given case …. The concept refers to a relationship between the
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`party to be estopped and the unsuccessful party in the prior litigation which is
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`sufficiently close so as to justify application of the doctrine of collateral estoppel.”
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)
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`(quoting 154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl)).
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`“[T]he privity inquiry … naturally focuses on the relationship between the named
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`IPR petitioner and the party in the prior lawsuit. For example, it is important to
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`determine whether the petitioner and the prior litigant’s relationship—as it relates
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`to the lawsuit—is sufficiently close that it can be fairly said that the petitioner had
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`a full and fair opportunity to litigate the validity of the patent in that lawsuit.”
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`WesternGeco LLC v. ION Geophysical Corp., No. 2016-2099, 2018 WL 2090314,
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`at *6 (Fed. Cir. May 7, 2018).
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`Second, Petitioner’s relationship with the Delaware Defendants supports a
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`finding of privity. Taylor v. Sturgell, 553 U.S. 880 (2008) provides a non-
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`exhaustive list of six categories of qualifying relationships. For example, “a
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`nonparty is bound by a judgment if she assumed control over the litigation in
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`which that judgment was rendered. Because such a person has had the opportunity
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`to present proofs and argument, he has already had his day in court even though he
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`was not a formal party to the litigation.” Taylor, 553 U.S. at 895 (internal citations
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`and quotation marks omitted). However, “[w]hile control over the prior action is
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`commonly present in applications of collateral estoppel, it is not essential:
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`preclusion can apply even in the absence of such control. … The question is
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`whether, under the circumstances as a whole, the party to be estopped should
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`reasonably have expected to be bound by the prior adjudication.” Cal. Physicians’
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`Serv. v. Aoki Diabetes Research Inst., 163 Cal. App. 4th 1506, 1523–24 (2008).
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`Thus, “nonparty preclusion may be justified based on a variety of pre-existing
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`substantive legal relationships between the person to be bound and a party to the
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`judgment”; also, “a nonparty may be bound by a judgment because she was
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`adequately represented by someone with the same interests who was a party to the
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`suit.” Taylor, 553 U.S. at 894 (internal citations and quotation marks omitted).
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`Moreover, the legislative history of the America Invents Act supports a
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`construction of “privy” as “a party that has a direct relationship to the petitioner
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`with respect to the allegedly infringing product or service,” including for example
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`“customers of the petitioner [that] had been sued for infringement.” 157 Cong.
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`Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer).8
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`Third, to the extent control over the prior litigation is a relevant factor in a
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`determination of privity, complete control is not a requirement. “Preclusion is fair
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`so long as the relationship between the nonparty and a party was such that the
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`nonparty had the same practical opportunity to control the course of the
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`proceedings that would be available to a party. … The appropriate measure of
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`control does not require that the named party or parties totally abandon control to
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`the nonparty. Instead, it should be enough that the nonparty has the actual measure
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`of control or opportunity to control that might reasonably be expected between two
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`formal coparties. Such relationships between a party and a nonparty are most often
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`found when … an indemnitor participates in defending an action brought against
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`8 While Sen. Schumer’s statement was in the context of Covered Business Method
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`review proceedings, it is a rule of statutory construction that “identical words used
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`in different parts of the same act are intended to have the same meaning.”
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`Sorenson v. Sec’y of Treasury of U.S., 475 U.S. 851, 860 (1986) (quoting
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`Helvering v. Stockholms Enskilda Bank, 293 U.S. 84, 87 (1934)).
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`its indemnitee ….” 18A Charles Alan Wright, Arthur R. Miller & Edward H.
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`Cooper, Federal Practice & Procedure § 4451 (2d ed.) (“Wright & Miller”).
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`Fourth, it is not necessary that P