Regents of the University of Minnesota

Patent Trials and Appeals Board

Sep 18, 2020

IPR2017-01213 (P.T.A.B. Sep. 18, 2020)

Trials@uspto.gov Paper 59
571-272-7822 Date: September 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
Petitioner,

v.

REGENTS OF THE UNIVERSITY OF MINNESOTA,
Patent Owner.
_______________

IPR2017-01213
Patent 8,588,317 B2
_______________

Before JENNIFER S. BISK, ROBERT J. WEINSCHENK and
CHARLES J. BOUDREAU, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request on Rehearing of
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
filed a Request for Rehearing (Paper 57, “Req. Reh’g”) of the Decision
Denying Institution of Inter Partes Review (Paper 52, “Decision” or “Dec.”)
of claims 1 and 19 (“the challenged claims”) of U.S. Patent No. 8,588,317
B2 (Ex. 1001, “the ’317 patent”).1 For the reasons set forth below, the
Request for Rehearing is denied.
II. ANALYSIS
When considering a request for rehearing of a decision whether to
institute an inter partes review, the Board reviews its decision for an abuse
of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears
the burden of showing that the decision should be modified, and “[t]he
request must specifically identify all matters the party believes the Board
misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
In the Decision, we explained that 35 U.S.C. § 315(b) provides that 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.” Dec. 4. We also explained that in
determining whether a petitioner is in privity with another party, we consider
the Supreme Court’s decision in Taylor v. Sturgell, 553 U.S. 880 (2008).
Dec. 4–5. Taylor provides six categories of exceptions to the rule against
nonparty preclusion, namely 1) when “[a] person . . . agrees to be bound by
the determination of issues in an action between others”; 2) “based on a

1 We cite to a non-public version of the Decision, but a public version is
available. See Paper 56.
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variety of pre-existing ‘substantive legal relationship[s]’ between the person
to be bound and a party to the judgment”; 3) when “a nonparty . . . was
‘adequately represented by someone with the same interests who [wa]s a
party’”; 4) when “a nonparty . . . ‘assume[d] control’ over the litigation in
which [the] judgment was rendered”; 5) when a nonparty acts as “a proxy”
to relitigate for a party; and 6) when “a special statutory scheme may
‘expressly foreclos[e] successive litigation by nonlitigants.’” Id.
In the Decision, we explained that the ’317 patent is involved in
several district court cases (collectively, the “District Court Litigation”) and
is asserted against several defendants (collectively, the “District Court
Defendants”). Id. at 3. We determined that the evidence of record indicates
1) that Petitioner has a preexisting substantive legal relationship with the
District Court Defendants regarding the base stations at issue in the District
Court Litigation; and 2) that Petitioner had the opportunity to control the
defense of the District Court Defendants with respect to the base stations.
Id. at 14. As a result, based on our consideration of the second and fourth
Taylor categories, we determined that Petitioner is in privity with the
District Court Defendants for the purpose of applying § 315(b). Id. We
concluded that the Petition is barred under § 315(b), because Petitioner filed
the Petition more than one year after the date on which the District Court
Defendants were served with a complaint alleging infringement of the ’317
patent. Id. at 14–15.
Petitioner argues in its Request for Rehearing that we misapprehended
the second and fourth Taylor categories. Req. Reh’g 1–2. In particular,
Petitioner contends that we “overextended the legal precedent for these
factors, disregarded critical underlying facts, and conducted an inflexible
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privity analysis, contrary to Wi-Fi One.” Id. at 2. For the reasons discussed
below, Petitioner does not demonstrate that we misapprehended or
overlooked any matters.
1. Second Taylor Category
Petitioner argues that “[w]ith respect to the Second Taylor Factor, the
Decision suggests a bright-line rule that the existence of an indemnity
provision creates privity in every instance.” Id. at 2. According to
Petitioner, “[n]o legal authority supports such a bright-line rule,” and “[i]n
fact, the Federal Circuit rejects this proposition.” Id. at 3–7. Petitioner’s
argument is not persuasive.
First, we did not determine that the existence of an indemnity
provision creates privity in every instance.2 See Dec. 7–14. Rather, we
determined that Petitioner is in privity with the District Court Defendants
based on our consideration of the second and fourth Taylor categories,
which includes evidence that Petitioner has a preexisting indemnity
relationship with the District Court Defendants and had the opportunity to
control the defense of the District Court Defendants with respect to the base
stations. Id. at 14. We expressly declined to decide whether Petitioner’s

2 Petitioner argues that our citations to Intel Corp. v. U.S. International
Trade Commission, 946 F.2d 821, 839 (Fed. Cir. 1991), and 18A Charles
Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and
Procedure § 4451 (3d ed. 2020) (“Wright & Miller”), do not indicate that an
indemnity relationship creates privity in every instance. Req. Reh’g 3–6.
Petitioner misinterprets our Decision. We relied on Intel and Wright &
Miller to show that “an indemnity relationship is the type of relationship that
can establish privity,” not that it does so in every instance. Dec. 8 (emphasis
added).
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preexisting indemnity relationship with the District Court Defendants by
itself would have been sufficient to find privity. Id. at 14 n.6.
Second, our analysis of the second Taylor category is consistent with
the Board’s precedential decision in Ventex Co. v. Columbia Sportswear
North America, Inc., IPR2017-00651, Paper 148 (PTAB Jan. 24, 2019)
(precedential). Specifically, Ventex states the following:
Here, at least factors 2 and 5 support our conclusion that Seirus
and Ventex are privies. As discussed above, the parties had a
preexisting substantive legal relationship in the form of two
contracts, a Supplier Agreement with an obligation to
indemnify and defend, and an Exclusive Manufacturing
Agreement. Further, these agreements directly related to the
product accused of infringing the patent at issue in this
proceeding because they governed the contracts between the
parties that resulted in Ventex’s sale of fabric to Seirus.
Finding Seirus and Ventex in privity with one another comports
with the goal of “tak[ing] into account the ‘practical situation’,
and [extending privity] to parties, to transactions, and other
activities relating to the property in question.”
Id. at 12–13 (internal citations and original emphasis omitted). In other
words, as we explained in the Decision, Ventex determines that agreements
with “an obligation to indemnify and defend” that “directly relate[] to the
product accused of infringing the patent at issue” constitute a preexisting
substantive legal relationship under the second Taylor category. Id.; Dec.
10. In this case, we similarly determined that Petitioner’s supply agreements
with the District Court Defendants include indemnity obligations that
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directly relate to the base stations at issue in the District Court Litigation.3
Dec. 7–8, 10. Thus, our finding that Petitioner has a preexisting substantive
legal relationship with the District Court Defendants is consistent with the
Board’s precedential decision in Ventex.
Third, our Decision does not contradict the Federal Circuit’s decision
in Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329 (Fed. Cir. 2018). In
Wi-Fi One, the Federal Circuit affirmed the Board’s decision that “Wi-Fi
had not shown that Broadcom was in privity with the D-Link defendants.”
Id. at 1340–41. Specifically, the Federal Circuit explained that “Wi-Fi’s
evidence showed that Broadcom’s interests as to the issue of infringement
were generally aligned with those of its customers, and that Broadcom had
indemnity agreements with at least two of the D-Link defendants,” but “the
evidence did not show that Broadcom had the right to control that litigation
or otherwise participated in that litigation to the extent that it should be
bound by the results.” Id. at 1341. In contrast, here, the evidence of record
shows that Petitioner has a preexisting indemnity relationship with the
District Court Defendants and had the opportunity to control the defense of
the District Court Defendants with respect to the base stations. Dec. 14.
2. Fourth Taylor Category
Petitioner argues that in analyzing the fourth Taylor category, we
“applie[d] too rigid a test that contradicts controlling authority.” Req. Reh’g

3 Petitioner argues that Ventex is distinguishable because Ventex involved an
exclusive manufacturing agreement, whereas Petitioner’s supply agreements
with the District Court Defendants are not exclusive. Req. Reh’g 5. We
disagree. We explained in the Decision that “Ventex does not specifically
rely on exclusivity as a factor when addressing the second Taylor category,”
and Petitioner acknowledges that is “technically correct.” Dec. 10; Req.
Reh’g 5.
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7. According to Petitioner, we “relie[d] on no binding precedent and
overlook[ed] facts submitted into evidence in the form of a declaration of
Ericsson’s in-house counsel.” Id. at 7–10. Petitioner’s argument is not
persuasive.
First, our analysis of the fourth Taylor category is consistent with
relevant authority. Although the fourth Taylor category refers to a nonparty
that “assume[d] control” over a litigation, the Taylor categories are just “a
framework” and not “a definitive taxonomy.” Dec. 4–5. In the Decision, we
explained that relevant authority indicates that “[a]ctual control of a
proceeding is not required” and “preclusion is fair as long as the nonparty
had a practical opportunity to control the proceeding.”4 Dec. 12. For
example, the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug.
14, 2012) (“Trial Practice Guide” or “TPG”), states that “[a] common
consideration is whether the non-party exercised or could have exercised
control over a party’s participation in a proceeding.” Id. at 48,759
(emphasis added). Further, according to the Trial Practice Guide, “[t]he
concept of control generally means that ‘it 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.’” Id.
(emphasis added). Consistent with the Trial Practice Guide, we determined

4 Petitioner argues that our citations to Gonzalez v. Banco Central Corp., 27
F.3d 751, 758 (1st Cir. 1994), and Wright & Miller § 4451, are not relevant
authority because they do not expressly analyze the fourth Taylor category.
Req. Reh’g 7–8. We disagree. Because the Taylor categories are just “a
framework” for privity analyses and not “a definitive taxonomy” (Dec. 4–5),
we see no reason why our analysis must be confined to only those authorities
that expressly analyze the Taylor categories.
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that the evidence of record indicates that Petitioner had the opportunity to
control the defense of the District Court Defendants with respect to the base
stations. Dec. 14.
Second, our Decision did not overlook the Declaration of Mr. Ryan
Wirtz. Mr. Wirtz states the following:
In view of Ericsson’s limited role and the differing interests of
the various parties, Ericsson, the mobile carrier defendants, and
the other intervenors are each represented in the district court
lawsuits by different counsel, and Ericsson has not controlled,
and does not control, the defense of any of the mobile carrier
defendants or other intervenors. . Ericsson is free to settle with
Patent Owner with respect to Ericsson’s products independent
of any mobile carrier defendant or other intervenor. Because
the allegations against the standards-based components of
mobile carrier defendants’ networks largely relate to
non-Ericsson equipment (e.g., base stations from multiple
third-party suppliers, including but not limited to other
intervenors Nokia and ALU, non-base station hardware and
software, and handsets supplied by various third-parties),
Ericsson could not control the defense of any of the mobile
carrier defendants unless it agreed to indemnify the mobile
carrier defendants for Patent Owner’s infringement allegations
against non-Ericsson equipment.
Ex. 1065 ¶ 7 (emphasis added). In other words, Mr. Wirtz asserts that
Petitioner could not control the defense of the District Court Defendants
with respect to the accused products that other parties supply to the District
Court Defendants. Id. But Mr. Wirtz does not dispute that Petitioner had
the opportunity to control the defense of the District Court Defendants with
respect to the base stations that it supplies to the District Court Defendants.
See id. As we explained in the Decision, even if Petitioner did not have the
ability to completely control the District Court Litigation, Petitioner’s ability
to control the District Court Litigation with respect to its own products is the
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amount of control Petitioner would reasonably expect if it were a formal
coparty. Dec. 13; see TPG at 48,759 (“The concept of control generally
means that ‘it 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.’”).
III. CONCLUSION
The Request for Rehearing does not demonstrate that the Decision
misapprehended or overlooked any matters.
IV. ORDER
It is hereby
ORDERED that the Request for Rehearing is denied.
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PETITIONER:

J. Andrew Lowes
John Russell Emerson
Greg Webb
Clint Wilkins
HAYNES AND BOONE, LLP
andrew.lowes.ipr@haynesboone.com
russ.emerson@haynesboone.com
greg.webb.ipr@haynesboone.com
clint.wilkins.ipr@haynesboone.com

PATENT OWNER:

W. Karl Renner
Lawrence K. Kolodney
Christopher Hoff
Andrew B. Patrick
Andrew Dommer
FISH & RICHARDSON P.C.
axf-ptab@fr.com
kolodney@fr.com
hoff@fr.com
patrick@fr.com
dommer@fr.com