Case 4:14-cv-05343-JSW Document 44 Filed 03/26/18 Page 1 of 18
`
`Michael W. De Vries (SBN 211001)
`michael.devries@kirkland.com
`KIRKLAND & ELLIS LLP
`333 South Hope Street
`Los Angeles, California 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Adam R. Alper (SBN 196834)
`adam.alper@kirkland.com
`Sarah E. Piepmeier (SBN 227094)
`sarah.piepmeier@kirkland.com
`Akshay Deoras (SBN 301962)
`akshay.deoras@kirkland.com
`Robert N. Kang (SBN 274389)
`robert.kang@kirkland.com
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`
`
`Attorneys for Plaintiff Cisco Systems, Inc.
`
`
`Douglas E. Lumish, Bar No. 183863
`Jeffrey G. Homrig, Bar No. 215890
`Patricia Young, Bar No. 291265
`Brett Sandford, Bar No. 302072
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, California 94025
`Telephone: (650) 328-4600
`Fax: (650) 463-2600
`doug.lumish@lw.com
`jeff.homrig@lw.com
`patrcia.young@lw.com
`brett.sandford@lw.com
`
`Brian W. Lewis, Bar No. 290727
`LATHAM & WATKINS LLP
`505 Montgomery Street
`San Francisco, California 94111
`Tel: (415) 646-7860
`Fax: (415) 395-8095
`brian.w.lewis@lw.com
`
`
`Attorneys for Defendant Arista Networks, Inc.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`OAKLAND DIVISION
`
`
`Case No. 4:14-cv-5343
`
`JOINT STATUS REPORT
`PURSUANT TO DKT. NO. 35
`
`Judge: Honorable Jeffrey S. White
`
`Action Filed: December 5, 2014
`
`Trial Date: None Set
`
`CISCO SYSTEMS, INC.,
`
`Plaintiff,
`
`v.
`
`ARISTA NETWORKS, INC.,
`
`Defendant.
`
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`Joint Status Report Pursuant to Dkt. No. 35
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`Case 4:14-cv-05343-JSW Document 44 Filed 03/26/18 Page 2 of 18
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`Pursuant to the Court’s March 6 Order (Dkt. No 35), Plaintiff Cisco Systems, Inc. (“Cisco”)
`and Defendant Arista Networks, Inc. (“Arista”, collectively “the parties”) submit this Joint Status
`Report.
`
`I.
`
`PROCEDURAL OVERVIEW AND CURRENT STATUS
`On December 5, 2014, Cisco filed this action, alleging that Arista infringes twelve Cisco
`patents: U.S. patent numbers 6,377,577 (“the ’577 patent”); 7,023,853 (“the ’853 patent”); 7,340,597
`(“the ’597 patent”); 7,162,537 (“the ’537 patent”); 8,051,211 (“the ’211 patent”); 8,356,296 (“the ’296
`patent”); 7,290,164 (“the ’164 patent”); 6,741,592 (“the ’592 patent”); 7,200,145 (“the ’145 patent”);
`7,460,492 (“the ’492 patent”); 7,061,875 (“the ’875 patent”); and 7,224,668 (“the ’668 patent”). On
`December 19, 2014, Cisco filed two Complaints with the United States International Trade
`Commission (“ITC” or “Commission”), under Section 337 of the Tariff Act of 1930, requesting that
`the ITC institute and conduct investigations into Cisco’s allegations that Arista infringes those twelve
`patents. On January 21, 2015, the Commission instituted ITC Investigation No. 337-TA-944 (“944
`Investigation”), which involved the ’597, ’537, ’296, ’164, ’592, and ’145 patents, and ITC
`Investigation No. 337-TA-945 (“945 Investigation”), which involved the ’577, ’853, ’211, ’492, ’875,
`and ’668 patents.
`On January 29, 2015, Arista moved to stay this action pending resolution of the ITC
`proceedings pursuant to 28 U.S.C. § 1659(a). Cisco did not oppose that request, and on February 10,
`2015, the Court stayed this action “until the determination of the United States International Trade
`Commission (‘ITC’) in Investigation Nos. 337-TA-3045 [sic] and 337-TA-3046 [sic], becomes final.”
`Order No. 34 at 1.
`
`The ITC’s 944 Investigation
`On June 23, 2016, the Commission issued its Final Determination in the 944 Investigation,
`finding a violation of Section 337 due to Arista’s infringement of the ’537, ’592, and ’145 patents, and
`no violation by Arista with respect to the ’597 and ’164 patents.1 Based on that determination, the
`Commission issued a Limited Exclusion Order (an “LEO”) and Cease-and-Desist Order (“CDO”)
`
`
`
`1 Cisco withdrew its infringement allegations for the ’296 patent on August 20, 2015.
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`prohibiting, inter alia, Arista from importing its products found to infringe the ’537, ’592, and ’145
`patents.
`All appeals of the Final Determination issued in connection with the 944 Investigation have
`now concluded. On August 22, 2016, Cisco appealed to the Federal Circuit to review the
`Commission’s determination of non-infringement of the ‘597 patent. On August 24, 2016, Arista
`appealed to the Federal Circuit to review the Commission’s construction of particular terms of the
`’537 patent, and whether the Commission exceeded its authority by issuing remedial orders applying
`to the importation of switch “components.” The Federal Circuit held oral argument on June 6, 2017.
`On September 27, 2017, the Federal Circuit issued a sealed opinion, affirming the Commission’s Final
`Determination. The Federal Circuit issued its mandate on November 20, 2017, and Arista did not file
`for a petition for writ of certiorari with the Supreme Court.
`The ITC’s 944E Enforcement Proceeding
`On August 26, 2016, Cisco petitioned the Commission to institute an Enforcement Proceeding
`with the ITC (“944E Enforcement Proceeding”) based on Cisco’s claim that Arista’s allegedly
`“redesigned” products found to infringe the ’537 patent are still infringing and in violation of the CDO
`issued in the 944 Investigation. The ’537 patent is the only patent involved in that proceeding. The
`ALJ issued his initial determination in the 944E Enforcement Proceeding on June 20, 2017, finding
`no violation of the CDO. Cisco petitioned the Commission to review that initial determination, and
`on August 4, 2017, the Commission remanded the 944E Enforcement Proceeding for further
`proceedings. The ALJ held a hearing on February 1, 2018, and the ALJ is scheduled to issue a final
`remand enforcement initial determination no later than June 4, 2018. 8/25/17 Order No. 55 (EDIS
`No. 621226) at 3.
`
`The ITC’s 945 Investigation
`On May 4, 2017, the Commission issued its Final Determination in the 945 Investigation,
`finding a violation of Section 337 due to Arista’s infringement of the ’577 and ’668 patents, and no
`violation by Arista with respect to the ’853, ’875, ’492, or ’211 patents. Based on that determination,
`the Commission issued an LEO and CDO prohibiting, inter alia, Arista from importing its products
`found to infringe the ’577 and ’668 patents.
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`On July 3, 2017, Cisco appealed to the Federal Circuit to review the Commission’s
`determinations as to the ’211, ’853, ’492, and ’875 patents, but ultimately briefed only the ’211 patent.
`On July 21, 2017, Arista appealed the Federal Circuit to review Commission’s determination of
`infringement and no invalidity of the ’577 and ’668 patents. The appeal of the 945 Investigation is
`currently ongoing. Only the ’577, ’668, and ’211 patents are currently at issue in that appeal, and
`neither Cisco nor Arista has contested any of the ITC’s determinations made with respect to the ’853,
`’492, or ’875 patents in its briefing to the Federal Circuit.
`The ITC’s 945 Modification Proceeding
`On October 27, 2017, the Commission instituted a modification proceeding (“945 Modification
`Proceeding”) to determine whether Arista’s allegedly “redesigned” products infringe the ’577 and
`’668 patents in violation of the Commission’s Orders. The ’577 and ’668 patents are the only patents
`involved in this proceeding. A hearing was held on January 26, 2018 and the ALJ’s recommended
`determination (“RD”) in connection with the 945 Modification Proceeding was scheduled to be issued
`by no later than April 27, 2018.2 Based on a recent Federal Circuit affirmance of a Patent Trial and
`Appeal Board (“PTAB”) decision finding all of the ’668 patent claims asserted in that proceeding (but
`not all claims of the ’668 patent) unpatentable, Arista moved the ALJ presiding over the 945
`Modification Proceeding to stay those proceedings insofar as they relate to the ’668 patent pending
`resolution of any further appeal by Cisco; Cisco did not oppose that request. Arista also moved the
`ALJ to suspend enforcement of any ’668 patent-related portions of a modified order resulting from
`the Modification Proceeding, and moved the ALJ, the Commission, and the Federal Circuit to stay
`enforcement of the LEO and CDO as it relates to the ’668 patent. On Friday, March 23, 2018 the ALJ
`denied Arista’s motion to stay, finding that the existing LEO and CDO would be rescinded with respect
`to the ’668 patent if the decision could be made at the ALJ’s level, but that it is instead the
`Commission’s decision to make. On March 23, 2018, Cisco filed a response taking no position on
`Arista’s stay motion to the Commission. Cisco is reviewing Arista’s motion before the Federal Circuit,
`and its deadline for responding to that motion has not yet passed. Also on Friday, March 23, 2018,
`
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`2 The Commission set the due date for the RD to March 27, 2018 (10/27/17 Commission Order, EDIS No. 626954),
`but this date could have been extended by one month for good cause.
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`the Initial Determination in the 945 Modification Proceeding issued, finding a violation as to the ’668
`patent and recommending that the LEO and CDO be modified to include the redesigned switches with
`respect to that patent, while indicating that the claims of that patent asserted in that proceeding are
`likely to be canceled due to the pending appeals described above. The Initial Determination found no
`violation as to the ’577 patent and recommends that the currently enforced LEO and CDO issued
`against Arista be rescinded or modified to remove references to the ’577 patent.
`Summary of ITC Proceedings
`The below table summarizes the status of each of the ITC proceedings, by patent, for each of
`the patents asserted in this action.
`
`Count
`I
`
`Patent No.
`6,377,577
`
`II
`III
`IV
`V
`VI
`VII
`VIII
`IX
`X
`XI
`XII
`
`7,023,853
`7,340,597
`7,162,537
`8,051,211
`8,356,296
`7,290,164
`6,741,592
`7,200,145
`7,460,492
`7,061,875
`7,224,668
`
`
`Current Status
`ITC proceeding pending before ALJ (945 Modification Proceeding)
`and Federal Circuit (945 Investigation appeal)
`No pending ITC proceeding (945 Investigation)
`No pending ITC proceeding (944 Investigation)
`ITC proceeding pending before ALJ (944E Enforcement Proceeding)
`ITC proceeding pending before Federal Circuit (945 Investigation)
`No pending ITC proceeding (944 Investigation)
`No pending ITC proceeding (944 Investigation)
`No pending ITC proceeding (944 Investigation)
`No pending ITC proceeding (944 Investigation)
`No pending ITC proceeding (945 Investigation)
`No pending ITC proceeding (945 Investigation)
`ITC proceeding pending before ALJ (945 Modification Proceeding)
`and Federal Circuit (945 Investigation appeal) per above, Arista has
`filed certain motions to stay with respect to the ’668 patent and Cisco
`has responded as described above
`Summary of Relevant Inter Partes Review Proceedings
`While the aforementioned Commission proceedings were underway, Arista filed petitions for
`inter partes review challenging certain claims of eight patents Cisco asserts in this case. The PTAB
`has issued final decisions – either denying institution or final written decisions (“FWD”) – in each
`proceeding. However, five Federal Circuit appeals from those final decisions (five appeals filed by
`Arista and three cross-appeals filed by Cisco) remain pending. The table below summarizes the status
`of each remaining IPR proceeding, by patent:
`
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`Case 4:14-cv-05343-JSW Document 44 Filed 03/26/18 Page 6 of 18
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`Patent No.
`’211
`
`’597
`
`’577
`
`’853
`
`’537
`
`Current Status
`IPR No.
`IPR2015-00975 The PTAB issued a FWD finding claims 1 and 12 of the ’211
`patent unpatentable, and claims 2, 6-9, 13, and 17-20 not
`unpatentable. Arista appealed, and Cisco cross-appealed, this
`FWD to the Federal Circuit. The appeals are currently pending.
`IPR2015-00978 The PTAB issued a FWD finding claims 1, 14, 39-42, 71-72, and
`84-85 of the ’597 patent unpatentable, and claims 29, 63-64, 73,
`and 86 not unpatentable. Arista appealed, and Cisco cross-
`appealed, this FWD to the Federal Circuit. The appeals are
`currently pending.
`IPR2016-00303 The PTAB issued a FWD finding claims 1, 7-10, 12-16, 18-22,
`25, and 28-31 of the ’577 patent unpatentable, and claim 2 not
`unpatentable. Arista appealed, and Cisco cross-appealed, this
`FWD to the Federal Circuit. The appeals are currently pending.
`IPR2016-00306 The PTAB issued a FWD finding claim 63 of the ’853 patent not
`unpatentable. Arista appealed this FWD to the Federal Circuit,
`and that appeal is currently pending.
`IPR2016-00308 The PTAB issued a FWD finding claims 1, 10, 19, and 21 of the
`’537 patent not unpatentable. Arista appealed this FWD to the
`Federal Circuit, and that appeal is currently pending.
`
`II.
`
`CISCO’S PROPOSAL
`Eight of the twelve Cisco patents asserted in this action are no longer the subject of any pending
`ITC proceeding or appeal: the ‘853, ‘597, ‘164, ‘592, ‘145, ‘492, ‘296, and ‘875 patents. Cisco
`proposes that the Court lift the stay of this action as it relates to seven of those patents—the ‘597, ‘164,
`‘592, ‘145, ‘492, ‘296, and ‘875 patents3—or alternatively sever those seven patents into a separate
`action that is allowed to proceed, while leaving this action stayed until the pending ITC proceedings
`related to those patents are completed4. Allowing Cisco to proceed on these claims is consistent with
`28 U.S.C. § 1659 and other governing authorities, and is fair, considering that Cisco has waited three
`years thus far for its day in federal court, while Arista has been intentionally infringing and copying
`Cisco’s technologies—facts which have now been repeatedly confirmed by the ITC. Arista’s
`
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`3 Although the ’853 patent is not subject to a pending ITC proceeding, it shares the same specification as the ’577 patent
`(still pending in ITC proceedings). As such, Cisco does not propose that the stay be lifted with respect to the ’853
`patent.
`
`4 The ’668 patent includes numerous additional claims not at issue in the ITC proceeding or subject to the PTAB ruling
`described above, which Arista is also clearly using. Given the current pendency of proceedings in the ITC related to
`the ’668 patent and the ALJ’s recent finding that even Arista’s alleged “redesign” continues to use Cisco’s patented
`technology, as described above, Cisco does not seek to un-stay these proceedings with respect to those claims of the
`‘668 patent at this time.
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`suggestion that the large bulk of Cisco’s case no longer subject to any pending ITC proceeding should
`continue to sit in limbo while proceedings on three unrelated patents conclude is unprecedented and
`would frustrate Cisco’s attempts to stop Arista from continuing to use its patented technologies—
`contrary to its suggestion, Arista does continue to use Cisco’s patented technologies without Cisco’s
`permission. Moving forward is particularly important considering Cisco’s claims for injunctive relief
`on the patents no longer subject to the ITC proceedings. Such requests are especially appropriate
`given Arista’s continued attempts to use Cisco’s patented technologies against it in the marketplace,
`and Cisco would be greatly prejudiced if such claims are not permitted to proceed to resolution.5
`A.
`The Law Does Not Support A Continued Stay Of This Action For Patents No
`Longer Involved In Any Pending ITC Proceedings
`Cisco filed this case more than three years ago. While there were legal grounds to stay Cisco’s
`action pending resolution of the two ITC investigations instituted shortly thereafter, those reasons no
`longer apply to the majority of patents in this action. Eight of those Cisco patents are not the subject
`of any pending ITC proceeding. Accordingly, the law does not support a continuing stay for those
`patents.
`When a patent is the subject of an ITC investigation and also a district court litigation, 28
`U.S.C. § 1659 provides for a stay of “proceedings in the civil action with respect to any claim that
`involves the same issues involved in the proceeding before the Commission” if a proper request for a
`stay is made. Id. (emphasis added). For eight of the twelve patent counts (or “claims”) in this action,
`that mandatory stay no longer applies because those patents are no longer subject to any pending ITC
`proceeding. See, e.g., id.; In re Princo Corp., 478 F.3d 1345, 1355, 81 U.S.P.Q.2d 1997, 2004 (Fed.
`Cir. 2007) (holding Ҥ 1659 requires that the stay of district court proceedings continue until the
`Commission proceedings are no longer subject to judicial review.”) (emphasis added); see also
`Technology Properties Ltd. LLC, v. Barnes & Noble, Inc., 2015 WL 12977074, fn 21, (N.D.Cal. May
`31, 2015) (“Absent Plaintiffs’ assent to a stay of the entire case, the court was only required to stay
`
`
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`5 Arista’s suggestion that Cisco’s proposal is merely in reaction to the Court’s order requesting a status update is
`incorrect — as can be seen from the chart above, as a result of recent developments, the pending ITC proceedings
`are now focused on a small subset of patents and issues.
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`the cause of action on the ‘336 patent,” which was involved in an ITC proceeding, because the other
`patents-in-suit were not the subject of any pending ITC proceeding).
`Moving forward with the patents no longer subject to ITC proceedings is consistent with the
`Court’s inherent discretionary powers to lift stays. See, e.g., Cascades Computer Innovation LLC v.
`RPX Corp., No. 12-CV-1143 YGR, 2015 WL 1383818, at *1 (N.D. Cal. Mar. 23, 2015) (citing Akeena
`Solar Inc. v. Zep Solar Inc., No. C 09–05040 JSW, 2011 WL 2669453, at *2 (N.D.Cal. July 7, 2011)).
`Specifically, a court may lift a stay if the circumstances warranting its imposition have since “changed
`significantly.” Id. Here, the circumstances warranting imposition of the mandatory stay provided for
`by 28 U.S.C. § 1659 have without question “changed significantly” with respect to the Cisco patents
`for which Cisco seeks to lift the stay: there are no pending ITC proceedings involving any of those
`patents, and as such there is no reason or legal justification for continuing the stay of this action with
`respect to those patents.
`Courts routinely stay an action only with respect to the patents that are subject to 28 U.S.C. §
`1659, while allowing other asserted patents not at issue in an ITC investigation to proceed. For
`example, in Macronix International Co., Ltd. v. Spansion Inc., No. 5:14-CV-01890-BLF, 2014 WL
`12647759 (N.D. Cal. 2014), the plaintiff asserted seven patents, four of which were at issue in an ITC
`investigation and therefore subject to the mandatory stay provision of 28 U.S.C. § 1659. The Court
`granted defendants’ stay motion only with respect to the patents that were the subject of a parallel ITC
`proceeding (the “overlapping patents”), but did not stay the action with respect to patents not involved
`in an ITC proceeding6 concluding “that practicality and fairness best are served by permitting
`discovery to go forward as to the three non-overlapping patents.” Id. at *1-*2. See also American
`Honda Motor Co., Inc., v. The Coast Distribution System, Inc. No. C 06-04752JSW, 2007 WL 672521,
`at *2 (N.D.Cal. Feb. 26, 2007) (Denying motion to stay pending ITC proceeding because “the ITC’s
`interpretation of the ‘273 and ‘769 Patents will not necessarily inform this Court about the three
`additional patents.”).
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`6 The Court permitted discovery to proceed but stayed motion practice and compliance with local patent rule
`disclosure requirements.
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`Arista attempts to avoid these clear authorities—and the fact that 28 U.S.C. § 1659 is expressly
`limited to “any claim” involved in an ITC investigation—by suggesting the Court should override
`those decisions because it will allegedly be inefficient not to move forward with this twelve-patent
`case all at once. Infra, Section III.B. Arista argues that “[a]ll of these patents present significant
`overlap,” but never denies—-because it cannot—that the patents are directed to wholly different
`accused Arista features. Id. For example, the ’537 patent still at issue in the ITC’s 944E Enforcement
`Action is infringed by an Arista feature called “SysDB,” while the ’492 and ’875 are infringed by a
`separate Arista feature called “Loop Guard,” and the ’597 patent is infringed by another Arista feature
`called “ProcMgr.” Arista cannot seriously think that proceedings will be more efficient by requiring
`the parties to move forward on all twelve of these patents at once. Indeed, the patents were split into
`two separate investigations in the ITC (six patents in each), and there is no question that this
`proceeding could similarly benefit by being broken down into two (or more) separate actions—i.e., to
`make claim construction, summary judgment, and fact and expert discovery more manageable.
`Moreover, the state of the appeal relating to the ’597 patent does not suggest that proceedings
`relating to that patent should be further stayed. As Arista acknowledges, the PTAB rejected Arista’s
`request to invalidate every claim of that patent, specifically finding claims 29, 63-64, 73, and 86 valid
`over the prior art. And although obscured by Arista’s description of those proceedings, the PTAB did
`not even institute an IPR proceeding on numerous claims of that patent. For example, the PTAB
`refused to institute on claim 15, despite Arista’s request that it do so (a decision that is not appealable).
`And the PTAB also did not institute on claims 2-13, 16-28, 30-38, 43-62, 65-70, 74-83, 87-110 of that
`patent. Arista’s deadline for filing further IPR proceedings on that patent has long since expired. 35
`U.S.C. § 315(b). Accordingly, regardless of the outcome of the IPR appeal, there is no question that
`Cisco can proceed on at least 95 claims of the ’597 patent in this proceeding, and that those claims
`will not be the subject of ongoing IPR proceedings in this case. And even for the handful of claims
`still involved in the IPR appeal, the hearing of that appeal occurred on February 9, 2018, and a decision
`is expected from the Federal Circuit shortly.
`Therefore, practicality and fairness also are best served by allowing Cisco to proceed on its
`claims for infringement of patents that are not currently the subject of any pending ITC proceeding.
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`B.
`
`Cisco Will Be Prejudiced By Continuing The Stay of Patents Not Subject to Any
`ITC Proceeding.
`The stay should also be lifted because continuing it will unfairly prejudice Cisco, while
`benefiting Arista, an adjudicated copyist and intentional infringer. See Akeena Solar Inc. v. Zep Solar
`Inc., 2011 WL 2669453, at *2 (assessing prejudice and efficiency factors in context of motion to lift
`stay pending re-examination).
`Specifically, the Commission determined that Arista infringed five Cisco patents, took
`deliberate steps to avoid learning of its infringing conduct7, and expressly found that Arista has a
`“corporate culture of copying.” 4/19/17 944 Investigation Commission Opinion (EDIS No. 609119)
`at 20. At the same time, this action has been pending for more than three years, and has been stayed
`for nearly all of that time, forestalling Cisco’s ability to obtain injunctive relief and monetary damages
`for Arista’s infringement not available through ITC proceedings. Continuing to stay this action with
`respect to the patents no longer involved in any ITC proceeding prejudices Cisco’s ability to litigate
`its rights in federal court, and to obtain remedies for Arista’s infringement. For example, the
`Commission issued its final decision that Arista intentionally infringed the PVLAN (‘592 and ‘145)
`patents nearly 18 months ago. Permitting Arista to further delay adjudication of Cisco’s claims of
`infringement of those patents would deprive Cisco of its day in federal court on those and the other
`patents that are the subject of this proposal.
`Arista argues that Cisco will not be harmed by continuing to keep the numerous patents not
`subject to any ITC proceeding “on ice,” insisting that “Cisco’s claims here are merely about trying to
`establish that it is entitled to money damages …, not to halt some ongoing injustice.” Infra., Section
`III.A. That is not accurate. Cisco certainly seeks monetary damages for Arista’s willful decisions to
`copy and use Cisco’s patented technologies. But Cisco also seeks important injunctive relief. Arista
`continues to use Cisco’s patented Loop Guard and ProcMgr technologies, for example, as well as
`numerous other patented Cisco technologies. Cisco intends to ask the Court to enjoin Arista’s ongoing
`
`
`
`7 6/1/17 945 Investigation Public Commission Opinion (EDIS No. 613184) at 110.
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`infringement. Arista’s argument that Cisco will not be harmed by a continuing stay therefore rests on
`a false premise and should be rejected.
`Moving forward on these patents now can be accomplished efficiently. The parties already
`exchanged discovery in the ITC proceedings. Indeed, technical discovery, including document
`production, was substantially completed in the ITC, and any supplemental discovery will be a focused
`and targeted matter in these proceedings. Arista suggests that more discovery might be needed, but
`does not deny the obvious efficiencies that will result from the fact that the parties have already
`exchanged substantial quantities of technical, financial, and email discovery in connection with the
`two now-concluded ITC investigations.
`By contrast, there are no efficiency gains to be had by prolonging the stay with respect to these
`patents. The seven patents for which Cisco seeks to lift the stay—which are no longer involved in any
`pending ITC proceeding—are unrelated to the other five patents. They relate to different technologies
`and accused features in Arista’s devices, and there is no overlap between the proof needed for
`infringement or validity. And because these seven patents are no longer the subject of ITC
`proceedings, there are no simplification-of-issues benefits to continuing the stay with respect to those
`patents pending resolution of other proceedings involving unrelated patents. For these reasons, the
`stay should be lifted, and Cisco should be permitted to move forward with its claims on the ‘597, ‘164,
`‘592, ‘145, ‘492, ‘296, and ‘875 patents.
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`III. ARISTA’S RESPONSE
`Cisco seeks to reopen this case prematurely. Cisco’s own conduct establishes that there is no
`urgency to do so, and thus no undue prejudice. The parties’ experience in this litigation also
`establishes that there is a strong likelihood that reopening proceedings now will cause duplication,
`waste resources, and burden this Court and Arista unreasonably. Consequently, the Court should not
`lift the stay until ITC-related proceedings are complete for all of the patents that Cisco will ultimately
`pursue in this action. As an independent matter, the ’597 patent remains mired in PTAB proceedings—
`the PTAB determined that ten asserted claims are unpatentable while others are not unpatentable, both
`parties appealed, and that appeal is pending. So proceedings for the ’597 patent should remain stayed,
`regardless of what the Court decides to do with the other six patents.
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`A.
`There is No Urgency And No Undue Prejudice
`Despite Cisco’s rhetoric, there is no urgency to reopen proceedings here. Of the seven patents
`Cisco seeks to jumpstart, four—the ’597, ’164, ’492, and ’875 patents—are patents that the ITC found
`Arista’s products do not infringe. A fifth patent—the ’296 patent—Cisco dropped of its own volition
`during the ITC proceedings. And while the ITC did find that certain aspects of Arista’s legacy
`products infringe the ’592 and ’145 patents, Arista removed the features found to infringe from its
`products—a fact that even Cisco does not contest, for it elected not to seek ITC enforcement or
`modification proceedings on these patents, as it did for other patents at issue in the 944 Proceeding
`(the ’537 patent) and the 945 Proceeding (the ’668, and ’577 patents). So Cisco’s claims here are
`merely about trying to establish that it is entitled to money damages (it is not, because Arista’s legacy
`and current products do not infringe), not to halt some ongoing injustice as it suggests.
`Cisco’s own conduct underscores this lack of urgency. It knew about the allegedly infringing
`products for years before it started accusing Arista of infringement. And even after it finally brought
`suit, Cisco’s pace remained languid. For example, in the 944 Proceeding, Cisco’s and Arista’s Federal
`Circuit appeals on the ’597 and ’537 patents, respectively, concluded nearly six months ago, on
`September 28, 2017. And it was many months earlier that the parties elected not to appeal the ITC
`determinations in the 944 Proceeding as to the ’592, ’145, and ’164 patents. Likewise, while the
`parties’ Federal Circuit appeals in the 945 Proceeding remain pending, nearly a year has passed since
`the parties elected not to contest the ITC’s findings as to the ’853, ’492, and ’875 patents. But Cisco
`made no effort to reopen this case as ITC-related proceedings for these patents concluded. And, of
`course, even now Cisco exhibits no urgency apart from its rhetoric—it made this proposal only when
`prompted by the Court to file a status report, not of its own independent motivation.
`Cisco attempts to respond to Arista’s section by arguing that “[m]oving forward is particularly
`important considering Cisco’s claims for injunctive relief on the patents no longer subject to the ITC
`proceedings. Such requests are especially appropriate given Arista’s continued attempts to use Cisco’s
`patented technologies against it in the marketplace . . . .” Supra, Section II. This argument, too, is
`belied by Cisco’s own conduct. The reason that each of the seven Cisco patents are no longer at issue
`in the ITC is either (1) Cisco lost or abandoned its infringement claims many