from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2013-00601.
Puckett, Nelson Bumgardner PC, Fort Worth, TX, for appellant.
Also represented by Douglas Aaron Cawley, McKool Smith, PC,
Dallas, TX; Peter J. Ayers, Law Office of Peter J. Ayers,
Dominic E. Massa, Wilmer Cutler Pickering Hale and Dorr LLP,
Boston, MA, for appellee. Also represented by Kevin Goldman,
K. Kelley, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, for intervenor. Also
represented by Kakoli Caprihan, Benjamin T. Hickman, Thomas
W. Krause, Frances Lynch; Joyce R. Branda, Mark R. Freeman,
Melissa N. Patterson, Nicholas Riley, Appellate Staff, Civil
Division, United States Department of Justice, Washington,
Dyk, Bryson, and Reyna, Circuit Judges.
Bryson, Circuit Judge.
three consolidated cases return to the panel on remand from
the en banc court. That court reviewed, and overturned, the
panel's decision that time-bar determinations by the
Patent Trial and Appeal Board ("PTAB" or
"Board") in inter partes review proceedings are not
appealable. Wi-Fi One, LLC v. Broadcom Corp., 878
F.3d 1364 (Fed. Cir. 2018) (en banc).
three cases are related appeals from decisions of the PTAB.
In each case, the Board held various claims of three patents
owned by Wi-Fi One, LLC ("Wi-Fi"), to be invalid
panel initially wrote a precedential opinion in appeal No.
2015-1944, and decided Appeal Nos. 2015-1945 and 2015-1946 by
summary affirmance. See Wi-Fi One, LLC v. Broadcom
Corp., 837 F.3d 1329 (Fed. Cir. 2016); Wi-Fi One,
LLC v. Broadcom Corp., No. 2015-1945, 668 Fed.Appx. 893
(Fed. Cir. 2016); Wi-Fi One, LLC v. Broadcom Corp.,
No. 2015-1946, 668 Fed.Appx. 893 (Fed. Cir. 2016).
the en banc court vacated the panel's judgments in all
three cases, the en banc opinion addressed only the
appealability of the PTAB's time-bar determination under
35 U.S.C. § 315(b). The court did not address the
remaining portions of the panel's decision in Appeal No.
2015-1944 or the aspects of the summary affirmances in Appeal
Nos. 2015-1945 and 2015-1946 that related to the merits of
panel now reaffirms the portions of its three prior decisions
that were left unaffected by the en banc court's
decision. Accordingly, in Appeal No. 2015-1944, parts III and
IV of the original panel opinion are reinstated and are
reproduced in substance as parts III and IV of this opinion.
In part II of this opinion, the panel addresses the merits of
Wi-Fi's time-bar claim that the en banc court held to be
appealable. On that issue, we affirm the decision of the
PTAB. In separate orders, we reinstate the summary
affirmances of the PTAB's decisions in Appeal Nos.
2015-1945 and 2015-1946. Because the time-bar issue raised in
those cases is identical to the time-bar issue raised in
Appeal No. 2015-1944, we affirm the PTAB's decision as to
the time-bar issue in those cases as well.
patent at issue in this case, U.S. Patent No. 6, 772, 215
("the '215 patent"), is directed to a method
for improving the efficiency by which messages are sent from
a receiver to a sender in a telecommunications system to
advise the sender that errors have occurred in a particular
technology described in the patent, data is transmitted in
discrete packets known as Protocol Data Units
("PDUs"). The useful data or "payload" in
those packets is carried in what are called user data PDUs
("D-PDUs"). Each D-PDU contains a sequence number
that uniquely identifies that packet. The sequence number
allows the receiving computer to determine when it either has
received packets out of order or has failed to receive
particular packets at all, so that the receiver can correctly
combine the packets in the proper order or direct the sender
to retransmit particular packets as necessary.
receiver uses a different type of packet, a status PDU
("S-PDU"), to notify the sender of the D-PDUs it
failed to receive. The '215 patent is concerned with
organizing the information contained in S-PDUs efficiently so
as to minimize the size of the S-PDUs, thus conserving
patent discloses a number of methods for encoding the
sequence numbers of missing packets in S-PDUs. Some of those
methods use lists that indicate which packets are missing by
displaying the ranges of the sequence numbers of the missing
packets. Other methods are based on bitmaps that use binary
numbers to report on the status of a fixed number of packets
relative to a starting point.
on how many packets fail to be properly delivered and the
particular sequence numbers of the errant packets, different
methods can be more or less efficient for encoding particular
numbers and ranges of errors. In order to leverage the
benefits of the different encoding methods, the patent
discloses an S-PDU that can combine multiple message types in
an arbitrary order, with "no rule on the number of
messages or the type of message that can be included in the
S-PDU." '215 patent, col. 7, ll. 55-57. Using that
technology, S-PDUs can be constructed with a combination of
the encoding types best suited for the particular errors
being encoded, so that the S-PDU can be more compact than an
S-PDU that uses a single encoding type.
2010, Wi-Fi's predecessors, Ericsson, Inc., and
Te-lefonaktiebolaget LM Ericsson (collectively,
"Ericsson") filed a patent infringement action
against D-Link Systems, Inc., and several other defendants in
the United States District Court for the Eastern District of
Texas. Ericsson alleged infringement of the '215 patent
and eight other patents. Following a jury trial, that case
resulted in a judgment of infringement as to the '215
patent and two other patents, U.S. Patent Nos. 6, 424, 625
("the '625 patent") and 6, 566, 568 ("the
'568 patent"). See generally Ericsson, Inc. v.
D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir.
2013, shortly after judgment was entered in the district
court action, Broadcom petitioned for inter partes review of
the '215 patent, the '625 patent, and the '568
patent. Broadcom was the manufacturer of two chips that
formed the basis for some of the infringement allegations in
the district court case, but Broadcom was not a defendant in
that litigation. The inter partes review proceeding at issue
in this case (PTAB No. IPR2013-00601) concerned the '215
patent. The '568 patent was at issue in PTAB No.
IPR2013-00602, which is the subject of Appeal No. 2015-1945
in this court, and the '625 patent was at issue in PTAB
No. IPR2013-00636, which is the subject of Appeal No.
2015-1946 in this court.
outset of the PTAB proceedings, Wi-Fi sought to bar Broadcom
from obtaining inter partes review of the '215 patent.
Wi-Fi contended that some or all of the defendants in the
D-Link case were in privity with Broadcom or were real
parties in interest in the inter partes review proceeding
brought by Broadcom. Because the D-Link defendants would be
time-barred from seeking inter partes review under 35 U.S.C.
§ 315(b), Wi-Fi argued that Broadcom's petition
should be time-barred as well. The Board rejected that
argument, holding that the evidence did not show either that
Broadcom was in privity with any of the D-Link defendants or
that any D-Link defendant was a real party in interest in the
inter partes review proceeding.
Board then instituted inter partes review of the '215
patent, finding that there was a reasonable likelihood that
the challenged claims were anticipated by U.S. Patent No. 6,
581, 176 to Seo. The Board declined to institute review based
on another reference that the Board considered redundant in
light of Seo.
teaches improvements to what are known as negative
acknowledgement ("NAK") frames. NAK frames are sent
by the receiving unit to inform the transmitting unit that
frames sent by the transmitting unit were misdeliv-ered. The
Seo method uses a single packet to provide information about
multiple misdelivered frames, so that "only one NAK
control frame for all missed user data frames is transmitted
to a transmitting station to require a retransmission of the
missed user data when a timer for an NAK is actually
expired." Seo, col. 5, ll. 32-35.
describes the structure of the disclosed NAK frames. The
frames include a field called "NAK_TYPE" that
indicates how the NAK frame represents missing frames. If the
NAK_TYPE is set to "00, " then the missing frames
are encoded as a list, and the frame requests retransmission
of all user data frames between the first missing frame and
the last, represented by the "FIRST" and
"LAST" values. If the NAK_TYPE is set to "01,
" then the NAK frame transmits information about the
missing transmitted frames using a bitmap. In that case, the
NAK frame contains the field "NAK_MAP_SEQ" to
identify the starting point of the bitmap and the field
"NAK_MAP" to transmit the bitmap.
the Board, Wi-Fi argued that the NAK_TYPE field disclosed in
Seo is not a "type identifier field" and that Seo
therefore does not satisfy the type identifier field
limitation of the '215 patent. Wi-Fi further argued that,
even if Seo discloses that feature, the NAK_TYPE field is not
found within a "message field, " as required by the
claims at issue. The Board rejected those arguments, found
that Seo disclosed all the limitations of the challenged
claims of the '215 patent, and therefore held those
claims to be unpatentable. The Board also rejected
Wi-Fi's argument that claim 15 of the '215 patent
required some sort of "length field, " which Seo
did not disclose. Finally, the Board held that Wi-Fi had not
shown that Broadcom was in privity with the D-Link
defendants, and therefore Broadcom was not barred from filing
a petition for inter partes review.
appeal, Wi-Fi reprises the argument that Broadcom's
petition for inter partes review is time-barred. Wi-Fi points
out that the D-Link defendants would have been barred from
seeking inter partes review of any of the claims at issue in
the district court litigation because they did not petition
for inter partes review within one year of the date on which
they were served with the complaint in the district court
action. See 35 U.S.C. § 315(b). Under that
statute, Wi-Fi argues that Broadcom's petition for inter
partes review should have been dismissed because one or more
of the D-Link defendants was in privity with Broadcom or was
a real party in interest in the inter partes review
315(b) provides, in pertinent part: "An inter partes
review may not be instituted if the petition requesting the
proceeding is filed more than 1 year after the date on which
the petitioner, real party in interest, or privy of the
petitioner is served with a complaint alleging infringement
of the patent." The use of the familiar common law terms
"privy" and "real party in interest"
indicate that Congress intended to adopt common law
principles to govern the scope of the section 315(b) one-year
bar. See Beck v. Prupis, 529 U.S. 494, 500-01 (2000)
("[W]hen Congress uses language with a settled meaning
at common law, Congress 'presumably knows and adopts the
cluster of ideas that were attached to each borrowed word in
the body of learning from which it was taken . . . ."
(quoting Morrissette v. United States, 342 U.S. 246,
263 (1952))); see also 154 Cong. Rec. S9987 (daily
ed. Sept. 27, 2008) (statement of Sen. Kyl) ("The
concept of privity, of course, is borrowed from the common
law of judgments.").
determine whether a petitioner is in privity with a
time-barred district court litigant, the Board 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." Patent and Trademark Office
("PTO"), Office Patent Trial Practice Guide, 77
Fed. Reg. 48, 756, 48, 759 (Aug. 14, 2012); see also
id. ("Privity is essentially a shorthand statement
that collateral estoppel is to be applied in a given case . .
. ." (quoting 154 Cong. Rec. S9987 (daily ed. Sept. 27,
2008) (statement of Sen. Kyl))). To decide whether a party
other than the petitioner is the real party in interest, the
Board seeks to determine whether some party other than the
petitioner is the "party or parties at whose behest the
petition has been filed." Id. at 48, 759.
"[A] party that funds and directs and controls an IPR or
[post-grant review] proceeding constitutes a 'real
party-in-interest, ' even if that party is not a
'privy' of the petitioner." Id. at 48,
interpretation of the concepts of privity and real party in
interest set forth in the PTO's Office Trial Practice
Guide and applied by the Board is consistent with general
legal principles. See Taylor v. Sturgell, 553 U.S.
880, 893-95 & n.8 (2008) (Privity is "a way to
express the conclusion that nonparty preclusion is
appropriate on any ground"; "a nonparty is bound by
a judgment if she 'as-sume[d] control' over the
litigation in which that judgment was rendered.");
see also 18A Charles Alan Wright, Arthur R. Miller
& Edward H. Cooper, Federal Practice and
Procedure § 4451, at 356 (3d ed. 2017) ("[I]t
should be enough that the nonparty has the actual measure of
control or opportunity to control that might reasonably be
expected between two formal coparties.").
merits of the section 315(b) issue, Wi-Fi first argues that
the Board applied the wrong legal standard when it determined
that no district court defendant was either a privy of
Broadcom or a real party in interest in the inter partes
review proceeding. Specifically, Wi-Fi argues that the Board
improperly required Wi-Fi to satisfy "a hard and
absolute requirement that Broadcom must have had the right to
control the District Court Litigation in order to find that a
District Court Defendant was a real party in interest or
privy, " and that the Board "made it abundantly
clear that it viewed the District Court Defendants' right
to control this IPR to be of no importance whatsoever."
Under the Board's legal test, according to Wi-Fi,
"it is irrelevant if a District Court Defendant has an
absolute right to control Broadcom's conduct of the IPR
(and even if it has been exercising actual control all along,
such that Broadcom is a mere shill)."
mischaracterizes the Board's decisions regarding section
315(b). Contrary to Wi-Fi's contention, the Board
recognized that there are a number of circumstances in which
privity might be found, including when the nonparty
controlled the district court litigation. The Board's
decision to focus on that ground was in response to the
specific arguments that Wi-Fi raised on the privity issue.
motion for additional discovery, Wi-Fi began by noting that
the Supreme Court in Taylor set forth six factors to
consider in determining whether a nonparty to an action is
bound by the judgment in the action. Wi-Fi argued that this
case was governed by the factors providing for nonparty
preclusion based on a pre-existing "substantive legal
relationship" with a party to the action and the
opportunity to control the litigation. In particular, Wi-Fi
argued that the evidence would show that, by virtue of its
indemnity relationship with at least two of the D-Link
defendants, Broadcom "had the opportunity to control and
maintains a substantive legal relationship with the D-Link
Defendants sufficient to bind Broadcom to the District
decision on Wi-Fi's motion, the Board first observed that
privity depends on "whether the relationship between a
party and its alleged privy is 'sufficiently close such
that both should be bound by the trial outcome and related
estoppels.'" The Board further noted that
"[d]epending on the circumstances, a number of factors
may be relevant to the analysis, including whether the
non-party 'exercised or could have exercised control over
a party's participation in a proceeding, ' and
whether the non-party is responsible for funding and
directing the proceeding."
to Wi-Fi's argument, the Board stated that "[w]hen a
patent holder sues a dealer, seller, or distributer of an
accused product, as is the case at hand, indemnity payments
and minor participation in a trial are not sufficient to
establish privity between the non-party manufacturer of the
accused device and the defendant parties." The Board
added that the fact that Broadcom filed an amicus curiae
brief in the appeal from the district court judgment
"shows interest in the outcome, " but "does
not bind Broadcom to the trial below outcome or show that
Broadcom exercised control over that outcome." Nor did
Broadcom's litigation activity in another forum or its
filing a petition for inter partes review "show control
of the Texas Litigation or otherwise show that Broadcom would
be bound by that outcome."
request for rehearing of the Board's discovery order,
Wi-Fi argued that it was error for the Board to require a
showing that Broadcom controlled the Texas litigation;
according to Wi-Fi, a "community of interest" was
sufficient to establish privity. Responding to that argument,
the Board noted that the PTO's Office Patent Trial
Practice Guide "emphasizes control, which implies that
control is an important factor to establish privity."
in its request for rehearing of the Board's Final Written
Decision, Wi-Fi again argued that the Board had erred in
"applying a legal standard imposing an inflexible
standard requiring that Petitioner must have exercised
control over the District Court Defendants in the District
Court Litigation." In addition, Wi-Fi argued that the
Board had neglected to address the
"real-party-in-interest" issue. Wi-Fi contended
that under the Board's standard, Broadcom's petition
would not be barred "even if there were irrefutable
evidence that the District Court Defendants had expressly
hired Broadcom to file this IPR petition, and that the
District Court Defendants were paying for and controlling
every aspect of Broadcom's IPR activity."
decision on Wi-Fi's request for rehearing, the Board
explained that it had previously focused primarily on
Broadcom's "exercise of control, or opportunity to
exercise control over the prior District Court lawsuit"
because that was the focus of Wi-Fi's argument. The Board
went on to say that its earlier decisions "did not
characterize the legal standard, for all cases, as being
limited strictly to a petitioner's control, or
opportunity to control, a non-party in previous
litigation." The Board explained that, in its previous
decisions in the case, it had addressed Wi-Fi's theory
"that the indemnity agreements imply that the District
Court Defendants are real parties in interest in these
inter partes reviews."
Board thus made clear that it understood that privity and
real-party-in-interest status could be established not only
by Broadcom's exercise of control over the district court
proceedings, but also by the D-Link defendants' exercise
of control over the inter partes review proceeding. In sum, a
review of the Board's decisions in this case, in the
context of the arguments Wi-Fi made at each stage, show that
the Board did not apply a legally erroneous standard in
deciding the "real party in interest, or privy"
next contends that the Board improperly denied its requests
for discovery of evidence such as the indemnity agreements
between Broadcom and two of the D-Link defendants. That
evidence, according to Wi-Fi, would have established that
Broadcom and those defendants were in privity or that those
defendants were real parties in interest in the IPR
in inter partes review proceedings is more limited than in
proceedings before district courts or even other proceedings
before the PTO. By statute, the Director of the PTO is
authorized to prescribe regulations "setting forth
standards and procedures for discovery of relevant evidence,
including that such discovery shall be limited to-(A) the
deposition of witnesses submitting affidavits or
declarations; and (B) what is otherwise necessary in the
interest of justice." 35 U.S.C. § 316(a)(5). The
legislative history of the America Invents Act confirms that
"[g]iven the time deadlines imposed on these
proceedings, " it was ...