Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`ARRIS GROUP, INC.
`Petitioner
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`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`____________________
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`CASE IPR2015-00635
`Patent 5,563,883
`____________________
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`PATENT OWNER C-CATION TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Table of Contents
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`
`INTRODUCTION .................................................................................................... 1
`I.
`II. STANDARD FOR GRANTING INTER PARTES REVIEW .................................. 4
`III. THE BOARD CAN EXERCISE ITS DISCRETION TO DENY THE PETITION
`UNDER 35 U.S.C. § 325(d) ..................................................................................... 6
`A. Procedural History ................................................................................................. 6
`B. Argument ............................................................................................................. 11
`IV. THE PETITION IS BARRED UNDER 35 U.S.C. § 315(b) ................................. 15
`A. Petitioner Had a Contractual Obligation to Control Comcast’s Participation in
`the First Action .................................................................................................... 15
`B. Petitioner Exercised Control Over Comcast’s Participation in the First Action 19
`C. The Petition Is Barred Under 35 U.S.C. § 315(b) ............................................... 21
`V. OVERVIEW OF U.S. PATENT NO. 5,563,883 ................................................... 21
`VI. CLAIM CONSTRUCTION ................................................................................... 25
`VII. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW CLAIMS 1, 3,
`OR 4 OF THE ’883 PATENT ARE UNPATENTABLE .................................. 31
`A. Petitioner’s Reliance on the MPT Specifications ............................................... 32
`B. The Channel Hunt Sequence and Normal Operation on Control Channel Does
`Not Disclose the Steps of Claim 1 ...................................................................... 34
`C. The Fall-Back Procedures Do Not Disclose the Steps of Claim 1 ..................... 39
`D. Claim 3 ................................................................................................................ 44
`E. Claim 4 ................................................................................................................ 44
`VIII.
`CONCLUSION ............................................................................................. 45
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`Cases
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Table of Authorities
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`Apple, Inc. v. Aylus Networks, Inc.,
`IPR2014-01566, Paper 10 (PTAB Apr. 23, 2015) .................................................... 13
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
` IPR2013-00453, Paper 31 (PTAB. Jan. 22, 2014) .................................................... 21
`August Tech. Corp. v. Camtek Ltd., 655 F.3d 1278 (Fed. Cir. 2011) ............................ 5
`Butamax Adv. Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) ................................................... 5, 12
`Conopco, Inc. v. The Procter & Gamble Co.,
`IPR2014-00507, Paper 17 (PTAB Jul. 7, 2014) ........................................................ 14
`Continental Automotive Sys., Inc. v. Wasica Finance GmbH,
`IPR2014-01454, Paper 14 (PTAB Feb. 13, 2015) .................................................... 14
`Ex parte Ronald A Katz Tech. Lic.L.P.,
` Appl. No. 2008-005127 (BPAI Mar. 15, 2010) ........................................................ 25
`Heckler v. Chaney,
`470 U.S. 821 (1985) .................................................................................................. 11
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) ........................................................ 25
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
` IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ................................................... 11
`Jiawei Tech. (HK) Ltd. v. Simon Nicholas Richmond,
` IPR2015-00580, Paper 22 (PTAB May 1, 2015) ..................................................... 13
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ...................................................... 6
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................. 25
`Samsung Electronics Co. v. Rembrandt Wireless Technologies, LP,
`IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015) ..................................................... 14
`SAS Inst., Inc. v. ComplementSoft, LLC,
` IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) ................................................ 5, 34
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`See ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) ................................................... 13
`Vizio, Inc. v. International Trade Com'n, 605 F.3d 1330 (Fed. Cir. 2010) .................... 5
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) ..................................................... 14
`Statutes
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`35 U.S.C. § 314(a) ........................................................................................... 1, 4, 5, 11
`35 U.S.C. § 315(b) ............................................................................................. 3, 15, 21
`35 U.S.C. § 316(e) .......................................................................................................... 5
`35 U.S.C. § 325(d) ........................................................................................... 2, 3, 5, 11
`Other Authorities
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`77 Fed. Reg. 157 ............................................................................................................ 4
`H.R. Rep. No. 112-98, pt. 1, at 48 (2011) .................................................................... 12
`Regulations
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`37 C.F.R. § 42.1(b) ....................................................................................................... 12
`37 C.F.R. § 42.108(c) ..................................................................................................... 4
`37 C.F.R. §§ 42.22 ........................................................................................................ 32
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`Case IPR2015-00635
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Exhibit List
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`Expert Report of Stuart Lipoff Regarding the Invalidity of
`U.S. Patent No. 5,563,883, C—Cation Tech., LLC v.
`Comcast Corp, No. 2:1 1-cv-3 0, dated August '16, 2013
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`C—Cati-on’s First Amended Complaint, C-Cation Tech.,
`LLC v. Comcast Corp., No. 2:11-cv-30, dated April 5, 201 1
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`Stipulation of Dismissal, C-Cation Tech., LLC v. Comcasz‘
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`
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`Corp., No. 2:11-cv-30, dated January 21, 2014
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`C-Cation’s Complaint, C-Cation Tech, LLC 12. Time
`Warner Cable, Inc, et al. , No. 2:14-c_V-59, dated February
`4, 2014
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`C-Cation 2009
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`C-Cation 2010
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`C-Cation 2011
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`C—Cation 2012
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`
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`C-Cam-013 |
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`C—Cation 2014
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`C-Cation Tech’s Infringement Contentions Against
`Comcast, C-Cation Tech, LLC v. Comcast Corp., No.
`2:11-cv-30, dated December 2, 2011
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`C-Cafi°n 2015 l
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`
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`Arris’s Schedule of Redacted Documents and Documents
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`Withheld from Production, dated March 6, 2015
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`Claim Construction Memorandum and Order, C—Cation
` Tech, LLC v. Time Warner Cable, Inc., et al., No. 2:14-cV-
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`59, dated April 20, 2015
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`
`iv
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`C-Cation 2016
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`C-Cation "2019
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`C—Cation 2020
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`U.S. Patent No. 5,563,883
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`Exhibit #
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`C-Cation 2021
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Exhibit Description
`Reporter’s Transcript of Claim Construction Hearing, C-
`Cation Tech, LLC v. Time Warner Cable, Inc., et al., No.
`2:14-cv-59, dated February 18, 2015
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`C-Cation 2022
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`Transcript of April 2, 2015 Telephone Hearing, IPR2015-
`00635
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`Case IPR2015-00635
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`I.
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`INTRODUCTION
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Patent Owner C-Cation Technologies, LLC submits the following
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`preliminary response to the Petition filed by Arris Group, Inc. (“Arris” or
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`“Petitioner”) as Paper No. 2 in this proceeding, which requests inter partes
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`review of claims 1, 3, and 4 of U.S. Patent No. 5,563,883 (“Petition”).1 This
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`response is timely pursuant to the Board’s Notice in Paper No. 3.
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`Patent Owner respectfully requests that the Board decline to institute inter
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`partes review because the Petition does not present “a reasonable likelihood that
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`the petitioner would prevail” with respect to any of the three challenged claims.
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`35 U.S.C. § 314(a).
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`As an initial matter, the present Petition is the second time Petitioner
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`seeks to have the ’883 patent reviewed and the third time inter partes review of
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`the ’883 patent has been requested for the very same claims by defendants to an
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`ongoing district court patent lawsuit.2
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`1
`U.S. Patent No. 5,563,883 (Petitioner’s Exhibit 1001) is referred to
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`throughout this response as “the ’883 patent.”
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`2
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`In addition, a fourth request for inter partes review of the same claims of the
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`same patent was filed by Unified Patents Inc. on April 13, 2015. See IPR2015-
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`01045, Paper 2.
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`Paper No. 16, Redacted Public Version
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`Indeed, Cisco Systems, Inc. (“Cisco”), Petitioner’s co-defendant in a
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`district court litigation, filed a petition for inter partes review on February 20,
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`2014 (IPR2014-00454) based on substantially the same prior art and arguments
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`that Petitioner presents here. In its own previous petition (IPR2014-00746 filed
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`on May 13, 2014), Petitioner ignored the prior art cited by Cisco, and instead
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`relied on different prior art. Petitioner filed the instant Petition in serial fashion
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`after the Board denied each of the prior petitions.
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`Patent Owner respectfully submits that the instant Petition should not be
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`instituted for several reasons. First, Petitioner’s serial filings represent both
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`improper harassment of Patent Owner and a frustration of Congress’s intent in
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`enacting the AIA. Indeed, Petitioner fails to point out any differences in the
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`prior art or arguments presented by Cisco in IPR2014-00454, or any reason why
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`it could not have raised the prior art or arguments it presents here when it first
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`requested inter partes review. As such, Patent Owner respectfully requests that
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`the Board exercise its discretion and deny institution pursuant to 35 U.S.C. §
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`325(d). Instituting review under the present circumstances would signal to
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`petitioners that they need not concern themselves with the quality of their
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`petitions, as they can repeatedly request review—and tie up the Patent Owner’s
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`resources responding to meritless petitions—even if their positions have already
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`been considered and rejected by the Board, as is the case here.
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`Paper No. 16, Redacted Public Version
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`Second, the Petition is barred under 35 U.S.C. § 315(b) because it was
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`filed more than four years after Pet.itioner’s pr.ivy—Comcast—was served with a
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`complaint in a previous district court action alleging infringement of the ’883
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`patent. The complaint in that action alleged that Comcast’s use of components
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`purchased from Petitioner infringed the ’883 patent.—
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` Moreover, Petitioner did in
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`fact exercise control over the district court litigation and repeatedly provided
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`“legal advice” to Comcast. Having in fact
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`exerting control over the prior litigation, Petitioner should be time barred from
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`filing the instant Petition or any other under 35 U.S.C. § 3 1 5(b).
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`Lastly, even if the Board declines to exercise its discretion to deny the
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`Petition under 35 U.S.C. § 325(d), and the Petition is considered timely under
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`35 U.S.C. § 315(b), the Board should decline to institute inter partes review
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`because the Petition fails to show that there is a reasonable likelihood that
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`Petitioner would prevail in its assertions that claims 1, 3, and 4 of the ’883
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`patent are unpatentable over the cited prior art. For example, the prior art cited
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`by" Petitioner does not disclose the use of a central controller to dynamically
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`allocate signalling data channels to meet the requirements of varying" traffic
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`demand and growth by reassigning remote terminals to signalling data channels,
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`as recited in claim 1. Specifically, the Petition (and the declaration of Stuart
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Lipoff submitted by Petitioner in support) relies on two distinct procedures from
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`a combination of references it refers to as the “MPT Specifications:” (1)
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`Channel Hunt Sequence and Normal Operation on Control Channel; and (2)
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`Fall-Back Procedures. However, as explained in detail below, even based on
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`the characterizations of the purported prior art by the Petition and Mr. Lipoff,
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`the claimed central controller that dynamically allocates signalling data
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`channels to meet the requirements of varying traffic demand and growth by
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`reassigning remote terminals to signalling data channels is simply not disclosed.
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`For at least these reasons, the Petition should not be instituted.
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`II.
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`STANDARD FOR GRANTING INTER PARTES REVIEW
`A petition for inter partes review may be granted when “the information
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`presented in the petition . . . shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). A petitioner bears
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`the burden of showing that this statutory threshold has been met. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (hereinafter
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`“Practice Guide”) (“The Board . . . may institute a trial where the petitioner
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`establishes that the standards for instituting the requested trial are met . . . .”)
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`(emphasis added). A petitioner bears the burden of proving unpatentability by a
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`preponderance of the evidence. 35 U.S.C. § 316(e). However, the Board has
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`discretion to not institute an inter partes review proceeding, especially where a
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`petitioner previously requested inter partes review of the same patent, had
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`knowledge of the prior art at the time it filed its previous request, and where the
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`same or substantially the same prior art or arguments have already been presented
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`in a prior petition. See 35 U.S.C. § 325(d); Butamax Adv. Biofuels LLC v. Gevo,
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`Inc., IPR2014-00581, Paper 8 at 12-13 (PTAB Oct. 14, 2014). Indeed, in
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`determining whether to institute an inter partes review, the Board may “deny some
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`or all grounds for unpatentability for some or all of the challenged claims.” 37
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`C.F.R. § 42.108(b); see also 35 U.S.C. § 314(a).
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`Where a petition challenges a claim as obvious, it must show where each
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`claimed limitation is taught in the prior art. See, e.g., Vizio, Inc. v. Int’l Trade
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`Com'n, 605 F.3d 1330, 1343 (Fed. Cir. 2010); August Tech. Corp. v. Camtek Ltd.,
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`655 F.3d 1278, 1287 (Fed. Cir. 2011); Dell Inc. v. Electronics and Telecom. Res.
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`Inst., IPR2014-00152, Paper 12 at 19-21 (PTAB May 16, 2014); see also 42
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`C.F.R. § 42.104(b)(4). In particular, a petition must support a proposed
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`obviousness ground with “sufficient articulated reasoning with rational
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`underpinning . . . .” SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581,
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`Paper 15 at 12 (PTAB Dec. 30, 2013) (citing KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 418 (2007)); accord ActiveVideo Networks v. Verizon Communs. Inc.,
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`694 F.3d 1312, 1328 (Fed Cir. 2012).
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`III. THE BOARD CAN EXERCISE ITS DISCRETION TO DENY THE
`PETITION UNDER 35 U.S.C. § 325(d)
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`A.
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`Procedural History
`1.
`Petitioner and Mr. Lipoff advanced substantially the same prior
`art and arguments related to the alleged unpatentability of
`claims 1, 3, and 4 of the ’883 patent in August 2013 that it
`asserts here
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`On January 25, 2011, Patent Owner filed a complaint for patent infringement
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`against Comcast Corporation and others alleging that each of the defendants’ cable
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`systems infringed the ’883 patent (“the First Action”). See Ex. 2002.3 In the First
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`Action, Patent Owner accused Comcast’s use of systems sold by Petitioner as
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`infringing the same claims challenged here. See, e.g., Ex. 2014 at 2. As explained
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`below, Petitioner had a contractual obligation to, and did in fact participate in and
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`3
`The First Action was filed in the United States District Court for the Eastern
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`District of Texas and assigned docket number 2:11-cv-00030. On April 5, 2011,
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`Patent Owner filed a First Amended Complaint in the First Action adding Comcast
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`Cable Communications, LLC and Comcast of Houston, LLC as defendants. See
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`Ex. 2010. The Comcast entities are collectively referred to herein as “Comcast.”
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`control at least Comcast’s defense in the First Action.4 See infra, IV.A. During
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`the First Action, on August 16, 2013, Comcast served an expert report prepared by
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`Mr. Lipoff (“Lipoff Report”) that alleged, inter alia, that claims 1 and 4 of the ’883
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`patent were obvious in view of the “MPT Specification” and in particular, MPT
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`1327 and MPT 1343 (Ex. 2009 at 92-104, 109-115), and that claim 3 of the ’883
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`patent was obvious in view of the MPT Specification (MPT 1327 and MPT 1343)
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`combined with U.S. Patent No. 4,870,408 to Zudnek (“Zudnek”) and U.S. Patent
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`No. 4,920,533 to Dufresne et al. (“Dufresne”) (Ex. 2009 at 104-109).5
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`Pursuant to a settlement agreement, Patent Owner, Comcast, and the
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`remaining defendants subsequently stipulated to the dismissal of the First Action
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`on January 21, 2014. See Ex. 2011.
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`2.
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`Petitioner’s co-defendant raised the same prior art in a previous
`inter partes review proceeding
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`4
`Petitioner also sold the accused functionality to the other defendants in the
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`First Action.
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`5 Mr. Lipoff’s report further alleged that claims 1 and 4 of the ’883 patent
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`were obvious in view of U.S. Patent No. 4,533,948 to McNamara (“McNamara”)
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`and a publication entitled “MetroNet: An Overview of a CATV Regional Data
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`Network” (“MetroNet”), and that claim 3 was obvious in view of McNamara,
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`MetroNet, Zudnek and Dufresne. See Ex. 2009 at 70-84.
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`On February 4, 2014, Patent Owner filed suit against Petitioner, Cisco, and
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`others alleging infringement of the ’883 patent (“the Second Action”). See Ex.
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`2012.6 Sixteen days later, Cisco filed a petition for inter partes review with the
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`Board. See IPR2014-00454, Paper 1.7 Among other grounds, Cisco’s petition
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`asserted that claims 1, 3, and 4 were both anticipated and rendered obvious by the
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`MPT Specification (again, MPT 1327 and MPT 1343). See IPR2014-00454, Paper
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`7 at 3 (Grounds 1 and 5). After Patent Owner filed a preliminary response, the
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`Board issued a decision denying institution. See IPR2014-00454, Paper 12.
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`3.
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`In a previous petition requesting inter partes review of claims
`1, 3, and 4 of the ’883 patent, Petitioner elected not to present
`any ground based on the MPT Specifications
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`On May 13, 2014, Petitioner filed a petition requesting inter partes review
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`of claims 1, 3, 4, and 14 of the ’883 patent. See IPR2014-00746, Paper 1.
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`Petitioner submitted, with its petition, a declaration from Mr. Lipoff, the same
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`person who prepared the Lipoff Report in the First Action. See IPR2014-00746,
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`Ex. 1002. With respect to claims 1, 3, and 4, though the MPT Specifications were
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`6
`The Second Action was filed in the United States District Court for the
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`Eastern District of Texas and assigned docket number 2:14-cv-00059.
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`7
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`Cisco filed a corrected petition in IPR2014-00454 as Paper No. 7 on March
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`12, 2014.
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`relied on both in the Lipoff Report and by Cisco in IPR2014-00454, Petitioner
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`elected to propose grounds based on two different references, namely McNamara
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`and MetroNet. See IPR2014-00746, Paper 1.
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`After Patent Owner filed its preliminary response, the Board issued a
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`decision agreeing with Patent Owner that there was not a reasonable likelihood that
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`Petitioner would prevail as to claims 1, 3, and 4, and declined to institute inter
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`partes review for those claims. See IPR2014-00746, Paper 22.
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`4.
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`The present Petition presents the same prior art and
`substantially the same arguments as the Lipoff Report and
`Cisco’s petition for inter partes review
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`The Petition in the instant proceeding was filed by Petitioner on February 5,
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`2015, and like petitioner’s previous petition, once again relies on a declaration
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`from Mr. Lipoff in support of the proposed grounds of unpatentability. See
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`IPR2015-00635, Paper 2 and Ex. 1002.
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`The purported prior art presented in the Petition has already been before the
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`Board in the petitions previously filed by Cisco and Petitioner. In particular, the
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`Petition alleges that claims 1 and 4 are obvious in view of the MPT Specifications
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`(Ground 1)—the same ground as Ground 5 presented by Cisco in IPR2014-00454.8
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`8 While the instant Petition cites to MPT 1347 in addition to MPT 1327 and
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`MPT 1343, both of which were included in Cisco’s petition in IPR2014-00454 and
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`Moreover, the additional references for claim 3 relied on in the instant Petition in
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`Ground 2, Zudnek and Dufresne, were already relied on by Petitioner in its own
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`petition in IPR2014-00746. As mentioned, the Board considered and denied
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`Cisco’s petition in IPR2014-00454 as well as Petitioner’s petition in IPR2014-
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`00746.
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`In the instant Petition, the Petitioner acknowledges that the petition in
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`IPR2014-00454 “was based in part on the MPT Specifications relied on herein,”
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`but asserts that “the same, or substantially the same, prior art and arguments have
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`not been presented to the Office before.” See Petition at n. 1. However, Petitioner
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`offers no support for its conclusory assertion. Indeed, the Petition offers no insight
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`or explanation as to how any of the purported prior art references or arguments are
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`different than what has already been previously presented by both Petitioner and
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`Cisco. Notably, it also fails to offer any explanation as to why Petitioner did not
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`present, and could not have presented, the purported prior art and arguments in the
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`instant Petition previously. In short, the Petition does not set forth any reason why
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`it should be permitted to file multiple petitions on the same patent claims when
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`in the Lipoff Report (it collectively refers to all three documents as the “MPT
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`Specifications”), it offers no explanation as to what deficiencies in those portions
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`are cured by MPT 1347.
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`U.S. Patent No. 5,563,883
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`both Petitioner and its declarant Mr. Lipoff knew, before Petitioner’s petition in
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`IPR2014-00746, about the prior art and arguments they now present.
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`B. Argument
`The Board’s authority to institute inter partes review derives from 35 U.S.C.
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`§ 314(a), which provides that a review may not “be instituted unless . . . the
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`information presented in the petition . . . shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least one of the claims
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`challenged in the petition.” As the Board has recognized, in providing that the
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`Board “may not institute review unless certain conditions are met, “Congress did
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`not mandate that an inter partes review must be instituted under certain
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`conditions,” but rather made clear that institution is discretionary. Intelligent Bio-
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`Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00324, Paper 19 at 4 (PTAB
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`Nov. 21, 2013); see also Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when
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`deciding whether to take action in a particular matter, an agency must determine
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`whether its resources are best spent on one matter or another).
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`The Board’s discretion is guided by 35 U.S.C. § 325(d), which states, in
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`relevant part, that “[i]n determining whether to institute or order a proceeding . . .
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`the Director may take into account whether, and reject the petition or request
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`because, the same or substantially the same prior art or arguments previously were
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`presented to the Office.” 35 U.S.C. § 325(d); Butamax, IPR2014-00581, Paper 8 at
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`Case IPR2015-00635
`U.S. Patent No. 5,563,883
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`12-13. Indeed, allowing a petitioner to file serial challenges to a patent “risks
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`harassment of patent owners and frustration of Congress’s intent in enacting the
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`Leahy-Smith America Invents Act.” Id. (citing H.R. Rep. No. 112-98, pt. 1, at 48
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`(2011)); see also 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the
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`just, speedy, and inexpensive resolution of every proceeding.”).
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`The instant Petition presents an apt example as to why the Board was
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`granted discretion on whether to institute a proceeding. Petitioner has been aware
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`of the purported prior art it now relies on since at least 2013. Even after its co-
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`defendant filed a petition based on the same prior art that Petitioner raises here,
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`Petitioner elected to pursue institution of inter partes review based on an
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`alternative theory in IPR2014-00746. Nor did Petitioner attempt to join Cisco’s
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`petition in IPR2014-00454. Now that Petitioner’s alternative theory has been
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`found wanting, Petitioner has reversed course and attempts to raise the same prior
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`art that Cisco raised in IPR2014-00454, without any explanation or excuse as to
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`why it did not do so earlier. Petitioner’s actions are particularly extraordinary in
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`view of the fact that both it and its declarant, Mr. Lipoff, knew of all of the prior
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`art that Petitioner has raised in both of its petitions, and elected to assert alternative
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`prior art. Further still, Petitioner offers no reason as to how its Petition presents
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`any different prior art or arguments than Cisco’s petition did in IPR2014-00454.
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`The Petition should not be instituted for these reasons alone as doing so would
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`award gamesmanship and thwart the goal of the AIA of securing the “just, speedy,
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`and inexpensive resolution” of disputes as required pursuant to 37 C.F.R. §
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`42.1(b). See ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12
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`at 5-6 (PTAB Sept. 25, 2013) (“The Board is concerned about encouraging,
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`unnecessarily, the filing of petitions which are partially inadequate.”).
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`Even setting aside Petitioner’s actions, substantially the same prior art and
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`arguments that Petitioner now presents were previously presented to the Board by
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`Cisco in IPR2014-00454. Indeed, in that proceeding, the Board considered the
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`same grounds (based on the MPT Specifications) advanced in the instant Petition
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`and declined to institute inter partes review.
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`In sum, as evidenced by Petitioner’s failure to offer a legitimate reason for
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`its failures, there is simply no excuse for Petitioner’s serial requests. In such
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`circumstances, it is appropriate for the Board to exercise its discretion and decline
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`to institute inter partes review. See, e.g., Jiawei Tech. (HK) Ltd. v. Simon Nicholas
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`Richmond, IPR2015-00580, Paper 22 at 4-7 (PTAB May 1, 2015) (denying
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`institution pursuant to 35 U.S.C. § 325(d) where petitioner had filed a previous
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`petition, presented no argument or evidence that cited references were not known
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`or available to it at time of previous filing, and where PTAB had considered
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`substantially the same prior art and arguments); Apple, Inc. v. Aylus Networks, Inc.,
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`IPR2014-01566, Paper 10 at 8 (PTAB Apr. 23, 2015) (denying petition under 35
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`U.S.C. § 325(d) where substantially the same prior art and arguments were
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`presented in another petition); Continental Automotive Sys., Inc. v. Wasica Finance
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`GmbH, IPR2014-01454, Paper 14 at 4-7 (PTAB Feb. 13, 2015) (denying petition
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`under 35 U.S.C. § 325(d) where petitioner was aware of prior art when it filed
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`previous petition and offered no explanation as to how its arguments were not
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`substantially the same as previously presented); Samsung Electronics Co. v.
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`Rembrandt Wireless Technologies, LP, IPR2015-00118, Paper 14 at 6-7 (PTAB
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`Jan. 28, 2015) (denying petitioner’s “second chance” petition under 35 U.S.C. §
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`325(d) where there was no reason that petitioner could not have presented its
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`additional arguments in its previous petition); Zimmer Holdings, Inc. v. Bonutti
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`Skeletal Innovations LLC, IPR2014-01080, Paper 17 at 5-6 (PTAB Oct. 31, 2014)
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`(denying institution of petition 35 U.S.C. § 325(d) based on previously presented
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`prior art even where petitioner offered further reasoning in support of institution,
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`and noting that the Board was “are not persuaded that a second chance . . . would
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`help secure the just, speedy, and inexpensive resolution of every proceeding”);
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`Conopco, Inc. v. The Procter & Gamble Co., IPR2014-00507, Paper 17 at 5-8
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`(PTAB Jul. 7, 2014) (denying institution pursuant to 35 U.S.C. § 325(d) where
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`petitioner had filed a previous petition, presented no argument or evidence that
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`cited references were not known or available to it at time of previous filing, and
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`where PTAB had considered substantially the same prior art and arguments).
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`Case lPR20l 5-00635
`U.S. Patent No. 5,563,883
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 2015
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`IV. THE PETITION IS BARRED UNDER 35 U.S.C. § 3150;)
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`35 U.S.C. § 315(b) provides that “an inter partes review may not be
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`instituted if the petition requesting the proceeding_is filed more than 1 year after
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`the date on which the petitioner, real party in interest, or privy of the petitioner is
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`served with a complaint alleging infringement of the patent.” The instant Petition
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`is barred as Petitioner is a privy of at least Comcast, who was served with a
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`complaint for infringement of the ’883 patent more than four years prior to the date
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`on which the instant Petition was filed.
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`A.
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`Petitioner Had a Contractual Obligation to Control Comcast’s
`Participation in the First Action
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`In the First Action, which was filed by Patent Owner on January 25, 201 1,
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`Patent Owner accused Comcast’s systems supplied by Petitioner (e.g._, cable
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`modem termination systems (“CMTSS”) and cable modems), of infringing the ’883
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`patent.
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`Case [PR2015-00635
`U.S. Patent No. 5,563,883
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`Paper No. 16, Redacted Public Version
`Filed: May 19, 20