Wi-Fi One, LLC v. Broadcom Corp.

• Decision Date: 16 September 2016
• Docket Number: 2015–1944
• Citation: 120 U.S.P.Q.2d 1126,837 F.3d 1329
• Parties: Wi-Fi One, LLC, Appellant v. Broadcom Corporation, Appellee
• Court: U.S. Court of Appeals — Federal Circuit

837 F.3d 1329

120 U.S.P.Q.2d 1126

Wi-Fi One, LLC, Appellant

v.Broadcom Corporation, Appellee

2015–1944

United States Court of Appeals, Federal Circuit.

Decided: September 16, 2016

Douglas Aaron Cawley , McKool Smith, PC, Dallas, TX, argued for appellant. Also represented by Donald Puckett , Nelson Bumgardner PC, Fort Worth, TX; Peter J. Ayers , Lee & Hayes, PLLC, Austin, TX.

Dominic E. Massa , Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for appellee. Also represented by Kevin A. Goldman, Zachary P. Piccolomini, Katie Saxton .

Before Dyk, Bryson, and Reyna, Circuit Judges.

Concurring opinion filed by Circuit Judge Reyna

.

Bryson

, Circuit Judge.

This is an appeal from a decision of the Patent Trial and Appeal Board in an inter partes review. The Board held various claims of a patent owned by Wi–Fi One, LLC (“Wi–Fi”), to be anticipated. We affirm.

I

A

The patent at issue in this case, U.S. Patent No. 6,772,215 (“the '215 patent”)

, is directed to a method for improving the efficiency by which messages are sent from a receiver to a sender in a telecommunications system to advise the sender that errors have occurred in a particular message.

In the technology described in the patent, data is transmitted in discrete packets known as Protocol Data Units (“PDUs”). The useful data or “payload” in those packets is carried in what are called user data PDUs (“D–PDUs”). Each D–PDU contains a sequence number that uniquely identifies that packet. The sequence number allows the receiving computer to determine when it either has received packets out of order or has failed to receive particular packets at all, so that the receiver can correctly combine the packets in the proper order or direct the sender to retransmit particular packets as necessary.

The receiver uses a different type of packet, a status PDU (“S–PDU”), to notify the sender of the D-PDUs it failed to receive. The '215 patent

is concerned with organizing the information contained in S–PDUs efficiently so as to minimize the size of the S–PDUs, thus conserving bandwidth.

The patent discloses a number of methods for encoding the sequence numbers of missing packets in S–PDUs. Some of those methods use lists that indicate which packets are missing by displaying the ranges of the sequence numbers of the missing packets. Other methods are based on bitmaps that use binary numbers to report on the status of a fixed number of packets relative to a starting point.

Depending on how many packets fail to be properly delivered and the particular sequence numbers of the errant packets, different methods can be more or less efficient for encoding particular numbers and ranges of errors. In order to leverage the benefits of the different encoding methods, the patent discloses an S–PDU that can combine multiple message types in an arbitrary order, with “no rule on the number of messages or the type of messages that can be included in the S–PDU.” '215 patent

, col. 7, ll. 55–57. Using that technology, S–PDUs can be constructed with a combination of the encoding types best suited for the particular errors being encoded, so that the S–PDU can be more compact than an S–PDU that uses a single encoding type.

B

In 2013, Broadcom petitioned for inter partes review of the '215 patent

, challenging numerous claims. Prior to the institution decision, Wi–Fi argued that Broadcom was barred from seeking review of the patent. Wi–Fi argued that Broadcom was in privity with certain entities that were involved in parallel district court litigation involving the '215 patent, and that because those entities would be time-barred from seeking inter partes review of the '215 patent, Broadcom was time-barred as well. See 35 U.S.C. § 315(b).

Wi-Fi filed a motion seeking discovery designed to support its argument, but after briefing the Board denied the motion. It found that Wi–Fi “has not provided evidence to show that there is more than a mere possibility that the sought-after discovery even exists” or “that the sought-after discovery has more than a mere possibility of producing useful evidence on the crucial privity factor”—control of the district court litigation by Broadcom in a way that would foreclose it from seeking inter partes review.

After the Board denied Wi–Fi's petition for rehearing, Wi–Fi petitioned this court for a writ of mandamus. This court denied the petition. In re Telefonaktiebolaget LM Ericsson , 564 Fed.Appx. 585 (Fed. Cir. 2014)

.

The Board instituted inter partes review of the '215 patent

, finding that there was a reasonable likelihood that the challenged claims were anticipated by U.S. Patent No. 6,581,176 to Seo. The Board declined to institute review based on another reference because it found that reference would be redundant in light of Seo.

Seo teaches improvements to what are known as negative acknowledgement (“NAK”) frames. NAK frames are sent by the receiving unit to inform the transmitting unit that frames sent by the transmitting unit were misdelivered. The Seo method uses a single packet to provide information about multiple misdelivered frames, so that “only one NAK control frame for all missed user data frames is transmitted to a transmitting station to require a retransmission of the missed user data when a timer for an NAK is actually expired.” Seo, col. 5, ll. 32–35.

Seo describes the structure of the disclosed NAK frames. The frames include a field called “NAK_TYPE” that indicates how the NAK frame represents missing frames. If the NAK_TYPE is set to “00,” then the missing frames are encoded as a list, and the frame requests retransmission of all user data frames between the first missing frame and the last, represented by the “FIRST” and “LAST” values. If the NAK_TYPE is set to “01,” then the NAK frame transmits information about the missing transmitted frames using a bitmap. In that case, the NAK frame contains the field “NAK_MAP_SEQ” to identify the starting point of the bitmap and the field “NAK_MAP” to transmit the bitmap.

Before the Board, Wi–Fi argued that the NAK_TYPE field disclosed in Seo is not a “type identifier field” and that Seo therefore does not satisfy the type identifier field limitation of the '215 patent

. Wi–Fi further argued that, even if Seo discloses that feature, the NAK_TYPE field is not found within a “message field,” as required by the claims at issue. The Board rejected those arguments, found that Seo disclosed all the limitations of the challenged claims of the '215 patent, and therefore held those claims to be unpatentable. The Board also rejected Wi–Fi's argument that claim 15 of the '215 patent

required some sort of “length field,” which Seo did not disclose. Finally, the Board held that Wi–Fi had not shown that Broadcom was in privity with the district court defendants, and therefore Broadcom was not barred from filing a petition for inter partes review.

II

On appeal, Wi–Fi continues to press its argument that Broadcom was barred from petitioning for inter partes review because it was in privity with a time-barred district court litigant.

The Board may not institute inter partes review “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.” 35 U.S.C. § 315(b)

. To determine whether a petitioner is in privity with a time-barred district court litigant, the Board conducts a flexible analysis that “seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).

This court has previously addressed whether a patent owner can argue on appeal that the Board improperly allowed a privy of a time-barred district court litigant to pursue an inter partes review. The statute governing the Board's institution of inter partes review provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d)

. In Achates Reference Publishing, Inc. v. Apple Inc. , 803 F.3d 652, 658 (Fed. Cir. 2015), we held that section 314(d) “prohibits this court from reviewing the Board's determination to initiate IPR proceedings based on its assessment of the time-bar of § 315(b), even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board's final written decision.”

Wi–Fi does not dispute that Achates

renders its challenge to the Board's timeliness ruling nonappealable if Achates is still good law. What Wi–Fi argues is that the Supreme Court's recent decision in Cuozzo Speed Technologies, LLC v. Lee , ––– U.S. ––––, 136 S.Ct. 2131, 195 L.Ed.2d 423 (2016), implicitly overruled Achates.¹ In Cuozzo the patent owner challenged the Board's institution decision, arguing that the Board should not have instituted inter partes review, because the petition failed to “identif [y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). Based on the language of section 314(d), the Supreme Court held that the Board's decision on that issue was unreviewable. Cuozzo , 136 S.Ct. at 2139. In the course of its opinion, the Court clarified the scope of the preclusion of review:

[I]n light of § 314(d)

's own text and the presumption favoring review, we emphasize that our interpretation applies

where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review. This means that we need not, and do not, decide the precise effect of

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