Case 2:18-cv-00546-JRG Document 121 Filed 04/02/20 Page 1 of 11 PageID #: 7160
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:18-cv-00546
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`JURY TRIAL DEMANDED
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`CANON, INC.
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`Plaintiff,
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`v.
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`TCL ELECTRONICS HOLDINGS
`LTD., et al.,
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`Defendants.
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`PLAINTIFF CANON, INC.’S SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
`REGARDING
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`After the Markman hearing, and only in response to this Court’s pointed questioning,
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`Defendants finally admitted that Roku
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`Roku is
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`. Defendants also admitted that
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`. In short, Roku is
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`PTAB — a fact Defendants omitted from their Initial Disclosures.1 Yet, Defendants contend
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`Roku’s conflicting arguments before the PTAB are irrelevant to claim construction in this
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`litigation because Roku is a different entity than Defendants.2
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`That position is untenable. Roku is not an unrelated party;
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`. As this Court noted, this relationship “goes to the binding nature of
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`1 Defendants and Roku are both represented by the same counsel at Ropes & Gray.
`2 Dkt. No. 116 at 16:12-17:6. (“The main issue, though, that I need to correct from counsel's
`statement is the IPRs were filed -- filed by Roku. …. Now, Roku does supply the operating
`system to TCL, but the IPRs were signed by Roku, not by TCL.”).
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`CANON EXHIBIT 2015
`Roku, Inc. v. Canon Kabushiki Kaisha
`IPR2020-00343
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`Case 2:18-cv-00546-JRG Document 121 Filed 04/02/20 Page 2 of 11 PageID #: 7161
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`the impact of that IPR proceeding here.” Dkt. No. 116 (Markman Tr.) at 16:6-11. Privity is the
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`legal concept that captures instances when a person who is not a party to a litigation nevertheless
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`appears in that litigation through the persona of another, its privy. Accordingly, the common law
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`prohibits a litigant from taking a second bite at the apple by relitigating the same case—or the
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`same issues—through its privy, particularly when the privy
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`Specifically, by virtue of collateral and judicial estoppel, any decision in Roku’s IPRs would
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`bind not only Roku itself, but also Defendants—
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`. The Court therefore should not ignore Roku’s arguments before the PTAB
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`that manifestly contradict its privies’ positions here, and further demonstrate the correctness of
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`Canon’s proposed claim constructions.
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`BACKGROUND
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`Canon has repeatedly requested
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` and information since
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`November 11, 2019. Ex. 1 at 15, RFP No. 60 (Nov. 11, 2019 Letter from Ozawa to Radsch
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`providing RFPs); Ex. 2 at 29-30, RFP Nos. 18, 20 (Dec. 20, 2019 Roku Subpoena). On
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`December 27, 2019, Roku filed IPR petitions on each of the asserted patents, listing Defendants
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`as statutory privies for purposes of 35 U.S.C. §§ 315(b) and 315(e), but leaving unclear the exact
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`relationship between the parties and if they were also privies in this litigation.3 See, e.g., Dkt.
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`No. 91-14 (Ex. K, IPR2020-00357, Petition) at 9-10 (“Petitioner identifies the following
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`companies as privies….”). Thereafter, Defendants (through its counsel, Ropes & Gray) spurned
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`Canon’s
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` on the basis of privilege, Ex. 3 (Jan. 13, 2020, Roku
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`3 Defendants represented at the Markman hearing that Roku “identified privies because that’s
`what’s customary to do. And if you don’t, then there could be consequences at the
`PTAB.” Many IPR petitioners list potential privies out of caution. Dkt. No. 116 at 16:18-17:6.
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`Response to Subpoena), but, on January 15, 2020, produced
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`Through multiple meet-and-confers, Canon pressed Defendants and Roku as to whether
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`they were, in fact,
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`, but was told the information was
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`privileged. Then, on February 20, 2020, Defendants served amended initial disclosures that
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`failed to mention even the possibility
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`, despite this Court’s Discovery Order
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`requiring the parties to list any
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` and to list all persons having knowledge of
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`relevant facts with a description of their connection to the case. Dkt. No. 78, Sections 1(d)-(e).
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`This caused Canon additional uncertainty as to whether
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`. Unable to get a yes-or-no answer,
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`Canon thus served an additional interrogatory and requests for admission to help clarify if Roku
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`and Defendants were privies in this litigation. See Ex. 5 (Canon’s Second Set of Common
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`Interrogatories); Ex. 6 (Canon’s First Set of Requests for Admission). Only after repeated
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`pressing by this Court at the Markman hearing, did Defendants admit that Roku is
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`. Dkt. No. 116 at 15:4-16:11; Ex. 7 (Defendants’
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`March 19, 2020 Responses to Canon’s Second Set of Common Interrogatories).
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`4 TCL Multimedia Technology Holdings Ltd. is a named Defendant in this action.
`, TTE Corporation is a subsidiary of TCL Multimedia Technology
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`Holdings Ltd.
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`Specifically, Defendants admitted that
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`7 Dkt. No. 116 at 16:18 (“Now, Roku does supply the operating system to TCL . . . .”).
`8 Proceeding to list the exceptions noted in FN 6.
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` Roku is also
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`ARGUMENT
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`Roku is
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`simultaneously controlling and funding the IPR proceedings of the patents in suit. Thus, in
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`effect, Roku (and Ropes & Gray, its common counsel with Defendants since at least November,
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`6, 2019) are advancing claim constructions before the PTAB
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`. Ex. 9 at 11-12 (November 6, 2019 Initial Disclosures listing “Roku, Inc.” and Roku
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`employees as “contact only through outside counsel of record for Defendants”). While Roku’s
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`role,
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` and the IPR proceedings, ordinarily would not be an issue if it
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`were maintaining consistent positions between both proceedings, that did not occur here.
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`As is detailed in Ex. 10, Roku repeatedly advanced positions in the IPRs that are at direct
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`odds with those advanced in this action. For example, regarding the ’413 Patent claim term
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`“attribute of a remote control device,” Roku argued before the PTAB that the term should be
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`construed as “remote control identification information or operation device information and, for
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`the purposes of this Petition, include ‘code sequences transmitted from a remote control device,”
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`but, on the other hand,
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` before this Court that the term does
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`not include transmitted code sequences. Dkt. No. 91-14 (Ex. K, IPR2020-00357, Petition) at 22.
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`Defendants (or more aptly Roku), should not be allowed have their cake and eat it too,
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`particularly after delaying disclosure of
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`This is not a situation where Defendants
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` are making permissible arguments in
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`the alternative. See e.g., Advanced Micro Devices, Inc. v. Aquila Innovations, Inc., IPR2019-
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`01525, Paper No. 12, 21-23 (P.T.A.B. Mar. 6, 2020) (discussing how petitioner pursues grounds
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`under its own construction/interpretation and alternatively under a different construction
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`proffered by an opposing party). Rather,
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` (without consequence before this Court) by taking contradictory positions
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`before the PTAB and this Court. This is unequitable. Music Choice v. Stingray Dig. Grp., No.
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`2:16-cv-00586-JRG-RSP, 2019 U.S. Dist. LEXIS 228326, at *15-16 (E.D. Tex. Nov. 19, 2019)
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`(“This contradicts the current construction proposed by Stingray, and allowing Stingray to argue
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`under one position during PTAB proceedings for issues of invalidity and then argue a
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`contradictory position in this Court for issues of infringement would be unfair to Music
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`Choice.”); see also inMusic Brands, Inc. v. Roland Corp., No. 17-00010-JJM, 2019 U.S. Dist.
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`LEXIS 129622, at *6-7 (D.R.I. June 12, 2019) (holding that a defendant did not meet its burden
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`of establishing indefiniteness of the term “minimize” where the defendant argued to the PTAB
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`that claims including the term were previously known); Rovi Guides, Inc. v. Comcast Corp., 410
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`F. Supp. 3d 628, 643 (S.D.N.Y. 2019) (“Furthermore, Rovi's current position seems to contradict
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`the views it expressed before the PTAB when opposing Comcast's petition for IPR.”);
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`Intellectual Ventures II LLC v. Kemper Corp., No. 6:16-cv-81-JRG-KNM, 2019 U.S. Dist.
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`LEXIS 15753, at *14-16 (E.D. Tex. Jan. 31, 2019) (“Defendants also correctly point out that
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`Plaintiff's plain and ordinary meaning construction contradicts the position Plaintiff took in front
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`of the PTAB.”).
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`Roku’s
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` in this action establishes a
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` under the common law that binds one to the positions taken by the other. See
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`Wallace v. JP Morgan Chase Bank, N.A., No. 13-13862, 2014 U.S. Dist. LEXIS 133987, at *10
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`(E.D. Mich. Sep. 24, 2014), aff'd as modified sub nom. Wallace v. JPMorgan Chase Bank, N.A.
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`(6th Cir. 2015) 628 F. App’x 940 (“A privy includes a person so identified in interest with
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`another that he represents the same legal right, such as a principal to an agent, a master to a
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`servant, or an indemnitor to an indemnitee.”). “Privity is a ‘legal conclusion that the relationship
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`between the one who is a party on the record and the non-party is sufficiently close to afford
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`application of the principle of preclusion.’” Vines v. University of Louisiana at Monroe, 398
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`F.3d 700, 706 (5th Cir. 2005). Privity, particularly with
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`, is a
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`prerequisite to showing that one party’s positions in one case binds another party in a different
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`case under collateral and judicial estoppel. Id. at 705. Defendants’ belated discovery responses
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`establish that
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` allowed to argue
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`claim constructions in this action that are inconsistent with those being proposed by Roku at the
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`PTAB.
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`In the Fifth Circuit, “[i]ssue preclusion or collateral estoppel is appropriate when: (1) the
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`identical issue was previously adjudicated; (2) the issue was actually litigated; and (3) the
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`previous determination was necessary to the decision.” Pace v. Bogalusa City School Bd., 403
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`F.3d 272, 290 (5th Cir. 2005); see also Duffy & McGovern Accommodation Servs. v. QCI
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`Marine Offshore, Inc., 448 F.3d 825, 829 (5th Cir. 2006) (collateral estoppel applies to both
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`issues of law and issues of fact). Administrative decisions by an administrative agency can
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`ground collateral estoppel or issue preclusion. B & B Hardware, Inc. v. Hargis Indus., Inc., 575
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`U.S. 138, 135 S.Ct. 1293, 1302-10, 191 L.Ed.2d 222 (2015) (finding that Trademark Trial and
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`Appeal Board decisions can ground issue preclusion in district courts). Collateral estoppel also
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`applies to issues of claim construction. e.Digital Corp. v. Futurewei Techs., Inc., 772 F.3d 723,
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`726 (Fed. Cir. 2014) (finding collateral estoppel applied where a reexamined claim “present[ed]
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`the identical claim construction inquiry” decided in a prior litigation).
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`Similarly, judicial estoppel prevents parties from taking inconsistent positions when “‘(1)
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`the party against whom judicial estoppel is sought has asserted a legal position which is plainly
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`inconsistent with a prior position; (2) a court accepted the prior position; and (3) the party did not
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`act inadvertently.’” Conversant Intelectual Prop. Mgmt. Inc. v. Xilinx, Inc., No. 6:12-CV-847,
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`2015 WL 138157, at *3 (E.D. Tex. Jan. 9, 2015) (quoting Love v. Tyson Foods, Inc., 677 F.3d
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`258, 261 (5th Cir. 2012)). Like equitable estoppel, judicial estoppel also applies to privies. Cf.
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`Paltalk Holdings, Inc. v. Microsoft Corp., No. CIV.A. 2:06CV367-DF, 2008 WL 4830571, at *5
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`(E.D. Tex. July 29, 2008); see also Austin v. McNamara, No. 6:05-CV-247, 2007 WL 5787498,
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`at *3 (E.D. Tex. Mar. 30, 2007) (“[O]ther circuits have held that privity, though often present in
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`judicial estoppel cases, is not required.”); Feuerbacher v. Wells Fargo Bank, No. 4:15-CV-59,
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`2016 WL 3669744, at *3 (E.D. Tex. July 11, 2016) (“Defendants assert, and Plaintiffs do not
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`deny, that the position they are currently taking is inconsistent with the position Billie took
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`during the bankruptcy proceedings, that Billie’s position was accepted by the bankruptcy court,
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`and that Billie’s failure to disclose was not inadvertent. Plaintiffs also do not dispute that privity
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`exists between Plaintiffs, and thus, even though Alan was not a debtor in Billie’s bankruptcy
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`proceedings, the doctrine of judicial estoppel applies to them both because of their
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`relationship.”).
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`The disputed claim constructions in this action are identical to those before the PTAB as
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`the same patents, same claim terms, and same Phillips legal standard are at issue in both
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`tribunals. The claim constructions are necessary for final decisions both in this Court and at the
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`PTAB. Markman v. Westview Instruments, Inc., 52 F.3d 967, 997 n.7, (Fed. Cir. 1995) (en banc)
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`(Mayer, J., concurring), aff'd, 517 U.S. 370 (1996) (“A claim must be construed before
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`determining its validity just as it is first construed before deciding infringement.”).
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`Because Roku is
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`, the two parties have a sufficiently close relationship to be considered close privies, if
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`not more. See Wallace, 2014 U.S. Dist. LEXIS 133987, at *10 (“A privy includes a person so
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`identified in interest with another that he represents the same legal right, such as a principal to an
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`agent, a master to a servant, or an indemnitor to an indemnitee.”). Thus, collateral and judicial
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`estoppel will apply upon a final determination by this Court or the PTAB, and Roku’s positions
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`in either tribunal are germane to issues in the other.
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`Therefore, as Defendants
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`, Canon respectfully requests
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`that the Court consider Roku’s contradictory arguments before the PTAB when construing the
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`disputed claim terms in this action.
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`DATED: March 30, 2020
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`Respectfully submitted,
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`PAUL HASTINGS LLP
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`By: /s/ Yar R. Chaikovsky
`Yar R. Chaikovsky
`yarchaikovsky@paulhastings.com
`Hiroyuki Hagiwara
`hiroyukihagiwara@paulhastings.com
`Jeffrey A. Pade
`jeffpade@paulhastings.com
`David Okano
`davidokano@paulhastings.com
`Bruce S. Yen
`bruceyen@paulhastings.com
`Kyotaro Ozawa
`kyotaroozawa@paulhastings.com
`1117 S. California Avenue
`Palo Alto, California 94304-1106
`Telephone: (650) 320-1800
`Facsimile: (650) 320-1900
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`Harry L. Gillam, Jr.
`TX Bar No. 07921800
`GILLAM & SMITH LLP
`303 S. Washington Ave.
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`gil@gillamsmithlaw.com
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`Attorneys for Plaintiff
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who have consented to electronic
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`service are being notified of the filing of this document via the Court’s CM/ECF system per
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`Local Rule CV-5(a). I also hereby certify that all counsel of record are being served with a copy
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`of the foregoing document by electronic mail on this 30th day of March 2020.
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`/s/ Harry L. Gillam, Jr.
`Harry L. Gillam, Jr.
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