opentv-cisco-ipr@perkinscoie.com
`858-720-5700
`
`Paper No. 6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OPENTV, INC.
`Petitioner
`
`v.
`
`CISCO SYSTEMS, INC., ET AL.
`
`Patent Owner
`____________
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`(PTAB Accorded Filing Date: June 4, 2013)
`____________
`
`Filing Date of This Paper: June 7, 2013
`
`
`
`Before Administrative Patent Judge Justin T. Arbes
`
`(Amy Kattula, Trial Paralegal)
`
`
`
`PETITIONER’S RESPONSE TO “NOTICE OF FILING DATE
`ACCORDED TO PETITION AND TIME FOR FILING PATENT
`OWNER PRELIMINARY RESPONSE” OF JUNE 6, 2013
`
`
`858-720-5700
`
`Paper No. 6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OPENTV, INC.
`Petitioner
`
`v.
`
`CISCO SYSTEMS, INC., ET AL.
`
`Patent Owner
`____________
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`(PTAB Accorded Filing Date: June 4, 2013)
`____________
`
`Filing Date of This Paper: June 7, 2013
`
`
`
`Before Administrative Patent Judge Justin T. Arbes
`
`(Amy Kattula, Trial Paralegal)
`
`
`
`PETITIONER’S RESPONSE TO “NOTICE OF FILING DATE
`ACCORDED TO PETITION AND TIME FOR FILING PATENT
`OWNER PRELIMINARY RESPONSE” OF JUNE 6, 2013
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`
`In response to PTAB’s “NOTICE OF FILING DATE ACCORDED
`
`TO PETITION AND TIME FOR FILING PATENT OWNER
`
`PRELIMINARY RESPONSE” of June 6, 2013 (Paper No. 5, “June 6
`
`Notice”), Petitioner OpenTV hereby files this timely response on June 7,
`
`2013, within the five businessday period as required by the PTAB in its June
`
`6 Notice.
`
`This response includes two documents:
`
`(1) this response explaining the background and Petitioner’s
`
`corrective measure (7 pages including the cover page and certificate of
`
`service), and
`
`(2) a corrected 60-page petition removing all references to Ex. 1007 in
`
`the original 60-page petition.
`
`1. Background
`
`Petitioner OpenTV filed a petition for inter partes review of Patent
`
`No. 6,744,892 B2 that includes a 60-page petition and eight (8) exhibits
`
`(labeled as Ex. 1001 to Ex. 1008) on June 4, 2013, which has been accorded
`
`by the PTAB the filing date of June 4, 2013 in the June 6 Notice.
`
`Ex. 1007 is a 12-page document for “Claim Charts for Independent
`
`Claims 1, 12, 20 and 26”which provides references to specific locations of
`
`relevant support in the cited prior art for Claims 1, 12, 20 and 26. Ex. 1007
`
`
`
`2
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`is provided solely for the convenience of the PTAB in checking the specific
`
`sections in the cited prior art in review of the petition. Due to the inclusion
`
`of Ex. 1007 in the original filing, PTAB issued the following notice in its
`
`June 6 Notice:
`
`
`
`2. Request for Excluding and Not Considering Ex. 1007
`
`Petitioner OpenTV included Ex. 1007 in the initial filing on June 4,
`
`2013 solely for the convenience of the PTAB in checking the specific
`
`sections in the cited prior art in review of the petition. The originally filed
`
`60-page petition includes references to Ex. 1007 but its content is fully self-
`
`explanatory, independent of references to Ex. 1007.
`
`Accordingly, in full compliance with the 60-page limit under 37
`
`C.F.R. §42.24, Petitioner OpenTV requests the PTAB to exclude Ex. 1007
`
`
`
`3
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`and not to consider Ex. 1007 in the inter partes review of Patent No.
`
`6,744,892 B2.
`
`3. Submission of Corrected Petition Removing References to Ex. 1007
`
`In this response, Petitioner OpenTV further submits a corrected
`
`petition to the PTAB for replacing and substituting the original 60-page
`
`petition. In this newly submitted corrected petition, all references to Ex.
`
`1007 in the original 60-page petition filed on June 4, 2013 have been
`
`removed. Specifically, all references to Ex. 1007 in the original 60-page
`
`petition filed on June 4, 2013 have been removed at the following pages and
`
`line numbers: Page 32, lines 13-14; Page 34, lines 1-2 and 19-20; Page 42,
`
`lines 6-7 and 15-16; Page 43, lines 11-12; and Page 44, lines 6-7. No other
`
`changes have been made in the newly submitted corrected petition.
`
`The newly submitted corrected petition references the following seven
`
`(7) exhibits as listed in the revised Exhibit List:
`
`Ex. 1001: U.S. Patent No. 6,744,892 B2 to Akins, III et al. (“the 892
`
`Patent”) (50 pages);
`
`Ex. 1002: Wasilewski, A. J., “ISO/IEC JTC1/SC20/WG11,
`
`Requirements and Method for High-Level Multiplexing of
`
`MPEG and Other Digital Service Bitstreams with
`
`
`
`4
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`
`Universal Transport Layer", Nov. 1992 (“Wasilewski
`
`’92”) (29 pages);
`
`Ex. 1003: U.S. Patent No. 5,506,904 to Sheldrick et al. (“Sheldrick”)
`
`(24 pages);
`
`Ex. 1004: U.S. Patent No. 5,432,542 to Thibadeau et al.
`
`(“Thibadeau”) (17 pages);
`
`Ex. 1005: Portions of the prosecution file history of related U.S.
`
`Patent No. 6,252,964 B1 (69 pages);
`
`Ex. 1006: Declaration of Alan Young (92 pages); and
`
`Ex. 1008: U.S. Patent No. 5,870,474 to Wasilewski et al. (“the 474
`
`Patent”) (34 pages).
`
`Accordingly, in full compliance with the 60-page limit under 37
`
`C.F.R. §42.24, the Petitioner OpenTV requests the PTAB to use the
`
`corrected petition in the inter partes review of Patent No. 6,744,892 B2.
`
`4. Conclusion
`
`Petitioner OpenTV respectfully submits that the above response and
`
`the newly submitted corrected petition have fully corrected the defect as
`
`stated in the PTAB’s June 6 Notice. As such, this petition is now in full
`
`compliance with the 60-page limit under 37 C.F.R. §42.24.
`
`
`
`5
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`
`This response also serves as a motion to the PTAB under 37 C.F.R.
`
`§42.20 to grant the requests and reliefs made in this response.
`
`The PTAB or the Office is authorized to charge any applicable fees,
`
`or apply any credit in connection with this Petition, to the Deposit Account
`
`No. 50-5252
`
`
`
`Dated: June 7, 2013
`
`Respectfully submitted,
`
`/ Nicholas T. Bauz /
`Nicholas T. Bauz , Reg. No. 41,604
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`Back-Up Counsel
`Amy E. Simpson, Reg. No. 54,688
`Back-Up Counsel
`
`Attorneys for Petitioner OpenTV, Inc.
`
`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 200
`San Diego, CA 92130
`(858) 720-5700
`
`
`
`
`
`6
`
`
`
`Case IPR2013-00328
`Patent No. 6,744,892 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`
`
`PETITIONER’S RESPONSE TO “NOTICE OF FILING DATE
`
`ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER
`
`PRELIMINARY RESPONSE” OF JUNE 6, 2013 has been served in its
`
`entirety on this 7th day of June, 2013, by EXPRESS MAIL® on the Patent
`
`Owner at the official correspondence address for the attorney of record for
`
`the 892 Patent shown in USPTO PAIR and the attorneys of record for
`
`Plaintiff in the concurrent litigation matter:
`
`SCIENTIFIC-ATLANTA, INC.
`Intellectual Property Department
`5030 Sugarloaf Parkway
`Room 4.3.518
`Lawrenceville, Georgia 30044
`
`Edward R. Reines
`Sonal N. Mehta
`J. Jason Lang
`WEIL, GOTSHAL & MANGES LLP
`Silicon Valley Office
`201 Redwood Shores Parkway
`Redwood Shores, California 94065
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Nicholas T. Bauz/
`
`Nicholas T. Bauz , Reg. No. 41,604
`Bing Ai, Reg. No. 43,312
`Amy E. Simpson, Reg. No. 54,688
`
`Attorneys for Petitioner OpenTV, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
