Federal Circuit Summary

Before Dyk, Bryson, and Reyna. Appeal from PTAB, remanded from the Federal Circuit, en banc.

Summary: Time-bar does not apply to IPR petitioner through privity with a district court defendant because the evidence did not show (1) that the petitioner had the right to control the district court litigation nor (2) that the district court defendants were real parties in interest in the IPR proceeding.

Ericsson, Inc. sued various defendants in district court for patent infringement. Although not a defendant, Broadcom was the manufacturer of some of the chips that formed the basis for some of the infringement allegations. More than a year after Ericsson filed its complaint, Broadcom requested inter partes review of the patent at issue, then owned by Wi-Fi. Wi-Fi argued Broadcom’s petition was time-barred under 35 U.S.C. § 315(b) because Broadcom was in privity with the district court defendants. The Board found Wi-Fi failed to prove privity and found the patent at issue invalid.

Wi-Fi appealed, arguing the decision to institute was incorrect because Broadcom’s petition was time-barred. The Federal Circuit panel initially refused to review the Board’s institution decision, citing the Federal Circuit’s prior decision in Achates. However, the en banc Federal Circuit later remanded this appeal to the panel because it had determined that the Board’s time-bar decisions at the time of initiation could be appealed.

On remand, Wi-Fi argued that the Board’s privity test, whether the party in question had sufficient control over the prior proceeding, was erroneous because the Supreme Court had adopted a more flexible standard outside the patent context. Wi-Fi also argued the Board abused its discretion when it refused Wi-Fi additional discovery on Broadcom’s role in the district court litigation. The Federal Circuit affirmed the Board, concluding that, although Broadcom’s interests were generally aligned with the defendants, the evidence did not show that Broadcom had the right to control the previous litigation. Nor did the evidence suggest that the defendants were real parties in interest in Broadcom’s IPR. The court also determined the Board had not abused its discretion by denying Wi-Fi additional discovery because the Board reasonably found that the discovery Wi-Fi requested, including indemnity agreements, would likely not have established control.

Judge Reyna dissented, writing that the Board applied an erroneous standard for establishing privity because it limited its analysis to the “control” ground and ignored the other grounds for establishing privity set forth by the Supreme Court. Judge Reyna also wrote that indemnity agreements evidenced privity and that the panel should have reversed the Board’s ruling denying Wi-Fi additional discovery.

This case is: WI-FI ONE, LLC v. BROADCOM CORP.

Written by: Ben J. Everton and Forrest M. McClellen

Edited by: Paul Stewart