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Wi-Fi One, LLC v. Broadcom Corp.

Alignment of Interests, Indemnification Obligations Insufficient to Establish Time-Bar Privity for IPR Purposes

Wi-Fi One, LLC v. Broadcom Corp., __ F.3d __, 2018 WL 1882911 (Fed. Cir. Apr. 20, 2018) (Dyk, BRYSON, Reyna (dissenting)) (PTAB) (3 of 5 stars)

Fed Cir affirms Board determination of invalidity. This opinion relates to this case’s return to the merits panel on remand from the en banc court. See 878 F.3d 1364 (Fed. Cir. 2018) (en banc). The opinion resolves three related appeals.

Prior decisions reinstituted: Those portions of the panel’s three prior decisions in these appeals (837 F.3d 1329 (Fed. Cir. 2016), 668 F. App’x 893 (Fed. Cir. 2016) (R36 affirmance), 668 F. App’x 893 (Fed. Cir. 2016) (R36 affirmance)) unaffected by the en banc court’s order are reinstituted. Thus two of the appeals are summarily affirmed; the discussion concerning anticipation and claim construction in the third appeal is reinstated and reproduced in the opinion.

Time bar: The PTAB did not err in holding that Broadcom’s IPR petition was not time-barred. The opinion discusses how the Board committed no legal error concerning the standards to be applied in assessing privity under § 315(b) and real-party-in-interest status, and properly considered whether certain defendants (Broadcom customers) in co-pending district court litigation were actually controlling Broadcom’s IPR activity. The Board did not abuse its discretion in denying Wi-Fi’s request for additional discovery into the relationship between Broadcom and these defendants. And the Board’s determination that Wi-Fi had not shown that Broadcom was in privity with the defendants, nor that any defendants were real-parties-in-interest, was sufficiently explained and supported by substantial evidence. Though Wi-Fi’s evidence showed that Broadcom’s interests as to infringements issues were generally aligned with the defendants, and that in some cases Broadcom had indemnity agreements with them, it did not show either that Broadcom controlled the litigation, nor that the defendants were real parties in interest.

Anticipation: The opinion substantially reproduces the panel’s prior opinion finding the Board’s anticipation decision supported by substantial evidence.

Claim construction: The opinion substantially reproduces the panel’s prior opinion finding no error in the Board’s interpretation of a key claim term. Though Wi-Fi’s proposed construction had support in the claim text alone, it did not make sense in view of the specification.

Dissent: Judge Reyna would have vacated the Board’s decision as based on an erroneous privity standard. In his view, privity “may exist in other forms that do not involve control over the prior litigation, all of which are excluded under the standard adopted by the majority.” Dissent at 2. He would have held that a broader standard should apply, and would have remanded with instruction to permit limited discovery into the privity issue.

KEYWORDS: TIME BAR; PRIVITY; REAL-PARTY-IN-INTEREST; ANTICIPATION (YES); CLAIM CONSTRUCTION