ARRIS Group, Inc. v. C-Cation Technologies LLC.

Paper 10, May 1, 2015

IPR2015-00635 (Patent 5,563,883)

[A party is not barred from raising an issue in proceedings before the Board when the same issue had been raised in prior proceedings involving different substantive claims]

FACTS

C-Cation Technologies, LLC (Patent Owner) filed a Motion for Discovery seeking production of indemnification agreements between ARRIS Group, Inc. (Petitioner) and Comcast Corp. relating to a lawsuit filed by Patent Owner against Comcast. Patent Owner claimed that these agreements would show privity between Petitioner and Comcast. Showing of privity would mean that Comcast was a real party in interest in this IPR. Because Patent Owner served Comcast with a complaint alleging infringement of the patent at issue over a year prior to the filing date of this IPR, Petitioner would be time barred under 35 U.S.C. § 315(b) from filing this petition.

HOLDING

The Board granted Patent Owner’s Motion for Discovery. In opposition to this motion, Petitioner pointed out that the same agreements requested in this motion had previously been requested by Patent Owner in another IPR involving the same patent challenged by Petitioner where a final decision had been reached by the Board. Petitioner argued that additional discovery would not serve interests of justice because even if the agreements showed privity, Patent Owner would be estopped from re-litigating this issue pursuant to 37 C.F.R. § 42.73(a), which provides that the Board’s judgment (except in the case of a termination) disposes of all issues that were raised or reasonably could have been raised and decided. The Board rejected this argument explaining that 37 C.F.R. § 42.73(a) relates to the scope of a judgment, not its preclusive effect with regard to other proceedings. The Board further held that the common law doctrines of res judicata and claim preclusion also did not bar Patent Owner from raising the issue of privity in this IPR because the earlier IPR concerning the same patent involved different claims of the patent challenged on different grounds than the present IPR. Thus, the Board noted that the earlier IPR did not involve the same claims for the purposes of preclusion or res judicata. The Board concluded that Patent Owner met its burden of showing that the five Garmin factors for determining whether additional discovery is necessary in the interests of justice were satisfied.

TAKEAWAY

37 C.F.R. § 42.73(a) defines the scope of judgement in proceeding before the Board and not its preclusive effects on other proceedings. Doctrines of res judicata and claim preclusion will not bar raising of an issue previously raised in different proceedings if the proceedings do not involve the same claims. Proceedings involving different claims of the same patent challenged on different grounds do not involve the same claims for res judicata and claim preclusion purposes.

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