A Patent Trial and Appeal Board (PTAB) panel has determined a patent owner provided insufficient evidence to show a petition for inter partes review was barred under the time bar due to privity in 35 U.S.C. § 315(b). The panel framed its privity analysis by looking at whether the petitioner controlled or could have controlled the third party’s conduct in related four-year old district court litigation. The panel was not persuaded by evidence of a settlement based on the parties’ indemnification agreement related to the district court litigation, or by evidence of a series of communications between the parties’ lawyers discussing the litigation.

First, the panel assessed the petitioner’s and third party’s conduct related to the indemnification agreement. That agreement gave the petitioner the ability to control district court litigation against the third party, following prompt notice by the third party of an infringement suit filed against it. However, the panel found the evidence did “not demonstrate sufficiently that [the third [party] made claims under the Agreements that would have triggered [the petitioner’s] right to exercise control over the 2011 district court proceeding.” Instead, the panel found the parties had merely settled the indemnification claims.

Next, the panel turned to the communications between the petitioner and third party. The patent owner adduced evidence of more than forty emails and documents sent between the parties’ counsel concerning the district court litigation, and a privilege log in which the “third party’s in-house counsel was referred to as “co-counsel.” The patent owner argued this evidence showed the petitioner’s “constant involvement and control” of the litigation. Again, the panel was unpersuaded. Instead, the panel found the “communications between [the petitioner’s] in-house counsel and [a third party’s] counsel, even if characterized as ‘legal advice,’ [did] not establish that [the petitioner] controlled [the third party’s] participation in the 2011 district court proceedings.”

Arris Grp., Inc. v. C-Cation Techs., LLC, IPR2015-00635, Paper 19 (PTAB Dec. 31, 2015) [Pettigrew (opinion), Benoit, Quinn].