Opinion
2014-127 2014-128 2014-129
05-05-2014
IN RE TELEFONAKTIEBOLAGET LM ERICSSON, Petitioner.
NOTE: This order is nonprecedential.
On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No. IPR2013-00636.
On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No. IPR2013-00601.
On Petition for Writ of Mandamus to the United States Patent and Trademark Office in No. IPR2013-00602.
ON PETITION
Before LOURIE, DYK, and REYNA, Circuit Judges. LOURIE, Circuit Judge.
ORDER
These petitions for writs of mandamus arise out of ongoing inter partes review proceedings before the Patent Trial and Appeal Board ("Board"). Broadcom Corp. brought the petitions challenging three of Telefonaktiebolaget L.M. Ericsson ("Ericsson")'s U.S. patents. Ericsson moved for additional discovery concerning whether Broadcom's petitions were barred under 35 U.S.C. § 315(b) because, Ericsson asserts, Broadcom is a privy of defendants to litigation filed more than one year before the inter partesreview petitions.
A "privy" generally refers to a sufficiently close relationship between the purported privy and the relevant other party such that both should be bound by the trial outcome and related estoppel provisions.
In denying Ericsson's request for additional discovery, the Board noted that under applicable statutes and regulations a movant must demonstrate that the discovery was in "the interest of justice." See 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2). The Board concluded that Erics- son had not met that standard because Ericsson's arguments and evidence did not show more than a "mere possibility" of uncovering useful information related to privity.
In seeking mandamus relief to compel such discovery, Ericsson faces a heavy burden. It must show: (1) that it has a clear legal right to relief; (2) that there are no adequate alternative legal channels through which it may obtain that relief; and (3) that the grant of mandamus is appropriate under the circumstances. See Cheney v. U.S. Dist. Court, 542 U.S. 367, 380-81 (2004); Kerr v. U.S. Dist. Court, 426 U.S. 394, 403 (1976). Ericsson has not shown that this standard has been met. We deny the petition without prejudice to Ericsson attempting to raise its arguments on appeal after final decision by the Board.
Accordingly,
IT IS ORDERED THAT:
The petitions for writs of mandamus are denied.
FOR THE COURT
__________
Daniel E. O'Toole
Clerk of Court
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