Arris Group, Inc. v. C-Cation Technologies, LLC, Case IPR2015-00635 (May 1, 2015) (Paper 10)
Res judicata does not apply to bar a patent owner from reasserting an issue/”defense” (e.g., § 315(b) one-year time bar) that the patent owner previously asserted unsuccessfully in the context of prior IPR proceedings involving the same petitioner and patent where the claims challenged in the IPR petition at issue were not part of the prior IPR proceedings and the petition at issue is based on different grounds (because the subsequent IPR would not satisfy the third prong of the res judicata test – “the second claim is based on the same set of transactional facts as the first.”)
The Board might grant discovery of relevant indemnification agreements in connection with a patent owner’s argument that a petition is barred under § 315(b) due to privity.
Summary (Informative) :
Petitioner Arris Group, Inc. (“Arris”) filed an IPR petition challenging claims 1, 3, and 4 of U.S. Patent No. 5,563,883 (“the ’883 Patent”). Patent Owner argued that the petition should be denied as time barred under § 315(b) because Patent Owner had filed a complaint alleging infringement of the ’883 Patent against third party Comcast more than a year before the petition was filed and Arris and Comcast were in privity. In attempt to gather support for its privity argument, Patent Owner requested discovery of certain indemnification agreements between Arris and Comcast.
In response, Arris argued that 37 C.F.R. § 42.73(a) and res judicata (claim preclusion) barred Patent Owner from raising the issue, because Patent Owner had already unsuccessfully sought to defeat a previous IPR petition filed by Arris against the ’883 Patent on the same grounds (§ 315(b) bar based on privity with Comcast). The Board determined in that case that the evidence as presented was insufficient to establish privity between Arris and Comcast.
The Board held that 37 C.F.R. § 42.73(a) did not bar Patent Owner from reasserting the issue in the context of this IPR, because § 42.73(a) relates to the effect of a judgment in the particular proceedings in which the judgment was rendered but does not apply to other proceedings.
The Board also held that res judicata (claim preclusion) did not bar Patent Owner from reasserting the issue, because the claims challenged in the petition at issue were not part of the prior IPR proceedings. Although the prior petition challenged claims 1, 3, and 4, as well as claim 14, the Board in that case instituted IPR proceedings only on claim 14 (which IPR proceedings ended after Patent Owner requested adverse judgment). The Board concluded that because the claims challenged in the petition at issue were not part of the prior IPR proceedings the third prong of the res judicata test – “the second claim is based on the same set of transactional facts as the first” – was not satisfied and, thus, res judicata did not apply.
Based on these conclusions, and its finding that the requested discovery was “necessary in the interest of justice,” the Board granted Patent Owner’s request for production of the indemnification agreements.