`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2015-00852
`Patent No. 7,051,147
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`D.
`
`SUMMARY OF ARGUMENT ....................................................................... 1
`THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`PETITION IS A “SECOND” BITE AT THE APPLE .................................... 2
`A.
`Petitioner Previously Challenged Claims 1-13 in IPR2014-
`01209, but the Board Denied Institution ............................................... 3
`Petitioner Previously Challenged Claims 14-39 in IPR2014-
`01207, and Trial on those Challenges is Currently Proceeding ............ 4
`The Petition is Petitioner’s Third Attempt to Challenge the ’147
`Patent on the Same Grounds ................................................................. 5
`Petitioner Relied on Prior Board Decisions in an Attempt to
`Correct the Deficiencies in Its 1209 IPR ............................................... 6
`The Board Should Exercise its Discretion to Deny the Petition
`Under 35 U.S.C. § 325(d) ..................................................................... 7
`The Board Routinely Denies Similar Petitions as a “Second
`Bite at the Apple” ................................................................................ 16
`1. Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper
`8 (PTAB Sept. 11, 2014) (designated as “Informative”) .......... 17
`Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-
`00581, Paper 8 (PTAB Oct. 14, 2014) ...................................... 18
`Samsung Electronics Co., Ltd., v. Rembrandt Wireless
`Techs., LP, IPR2015-00118, Paper 14 (PTAB Jan. 28,
`2015) ......................................................................................... 21
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations
`LLC, IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014). .......... 22
`Samsung Electronics Co. v. Affinity Labs of Texas, LLC,
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ................... 24
`III. CONCLUSION .............................................................................................. 26
`
`
`B.
`
`C.
`
`E.
`
`F.
`
`2.
`
`3.
`
`4.
`
`5.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Administrative Cases
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`
`IPR2014-00581, Paper 8 (PTAB Oct. 14, 2014) .................................... 18, 19, 20
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`
`IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ............................................. 13
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`
`IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014) ................................................. 12
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`
`IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................... 8
`
`Medtronic, Inc. v. NuVasive, Inc.,
`
`IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) ............................................... 17
`
`Samsung Electronics Co. v. Affinity Labs of Texas, LLC,
`
`IPR2015-00820, Paper 12 (PTAB May 15, 2015) ........................................ 24, 25
`
`Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00118, Paper 14 (PTAB Jan. 28, 2015) ....................................... passim
`
`
`Unilever, Inc. v. Procter & Gamble Co.,
`
`IPR2014-00506, Paper 17 (PTAB Jul. 7, 2014) ................................................. 12
`
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
`IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) ....................................... passim
`
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`
`IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) ....................................... 12, 15
`
`Statutes
`
`35 U.S.C. § 314 ................................................................................................... 8, 13
`
`35 U.S.C. § 315 ....................................................................................................... 21
`
`
`ii
`
`
`
`35 U.S.C. § 325 ................................................................................................ passim
`
`Regulations
`
`37 C.F.R. § 42.1 .............................................................................................. 2, 9, 23
`
`37 C.F.R. § 42.6 ...................................................................................................... 13
`
`37 C.F.R. § 42.71(d) ............................................................................................. 1, 4
`
`37 C.F.R. § 42.104 .............................................................................................. 4, 13
`
`37 C.F.R. § 42.108 .................................................................................................... 8
`
`Other Authorities
`
`Rules of Practice for Trials Before The Patent Trial and Appeal Board and Judicial
`Review of Patent Trial and Appeal Board Decisions; Final Rule
`77 Fed. Reg. 48,612 (Aug. 14, 2012) ................................................................... 13
`
`H.R. Rep. No. 112-98, pt.1 (2011)..................................................................... 14, 20
`
`
`
`
`
`
`
`
`iii
`
`
`
`Patent Owner’s Exhibit List
`IPR2015-00852
`
`Description
`
`
`Exhibit No.
`
`2000-2017
`
`[Reserved]
`
`2018
`
`2019
`
`2020-2100
`
`2101
`
`Exhibit 1005 to Oracle Corp. v. Crossroads Systems, Inc.,
`IPR2014-01197, -01207 -01209, Paper 1 (PTAB July 23, 2014)
`
`Exhibit 1004 to Oracle Corp. v. Crossroads Systems, Inc.,
`IPR2014-01197, -01207 -01209, Paper 1 (PTAB July 23, 2014)
`
`[Reserved]
`
`Institution Decision, IPR2014-01197, Paper 13 (PTAB Jan. 29,
`2015).
`
`2102-2103
`
`[Reserved]
`
`2104
`
`Institution Decision, IPR2014-01226, Paper 9 (PTAB Jan. 30,
`2015)
`
`2105-2120
`
`[Reserved]
`
`2121
`
`2122
`
`2123
`
`2124
`
`2125-2126
`
`2127
`
`Institution Decision, IPR2014-01209, Paper 12 (PTAB Jan. 30,
`2015)
`
`Petition for Inter Partes Review, IPR2014-01209, Paper 1 (PTAB
`Jul. 23, 2014)
`
`[Reserved]
`
`Institution Decision, IPR2014-01544, Paper 9 (PTAB April 3,
`2015)
`
`[Reserved]
`
`Petition for Inter Partes Review, IPR2014-01554, Paper 3 (PTAB
`Sept. 25, 2014)
`
`iv
`
`
`
`Exhibit No.
`
`2128
`
`2129
`
`2130-2152
`
`2153
`
`
`
`Description
`
`
`[Reserved]
`
`Institution Decision IPR2014-01207
`
`[Reserved]
`
`Motion for Joinder, IPR2015-00825, Paper 4 (PTAB April 17,
`2015)
`
`
`
`
`v
`
`
`
`Patent Owner Crossroads Systems, Inc. (“Patent Owner”) submits this
`
`Preliminary Response to the Petition for Inter Partes Review (the “Petition,” “852
`
`Petition” or “Pet.”) filed in IPR2015-00852 (the “852 IPR”) by Oracle Corporation
`
`(“Petitioner”) seeking review of United States Patent No. 7,051,147 (the “’147
`
`Patent”) (Ex. 1001).
`
`I.
`
`SUMMARY OF ARGUMENT
`
`The 852 Petition should be denied because it is Petitioner’s “second bite at
`
`the apple.” The 852 Petition is the third of four petitions for inter partes review
`
`filed by Petitioner against the ’147 Patent, and the fifth of six filed over nine
`
`months by defendants in co-pending litigation. In IPR2014-01209 (the “1209
`
`IPR”), to which Petitioner was a party, the Board previously denied inter partes
`
`review of the challenged claims 1-13 on the same grounds raised here. Rather than
`
`challenging the Board’s decision using the proper mechanism—a request for
`
`rehearing under 37 C.F.R. § 42.71(d)—Petitioner filed this Petition and a further
`
`petition in IPR2015-01064 (the “1064 IPR”) in an attempt to overcome the defects
`
`of the 1209 Petition. Furthermore, in IPR2014-01207 (the “1207 IPR”), Petitioner
`
`previously challenged claims 14-39, again on the same grounds raised here. In that
`
`proceeding, the Board instituted trial on Petitioner’s challenges.
`
`Oracle does not raise any new prior art or evidence or offer any arguments
`
`that could not have been submitted in the 1209 or 1207 IPRs. Oracle instead
`
`1
`
`
`
`copies the existing petition from IPR2014-01544 (“the 1544 IPR”), relying on the
`
`Board’s prior institution decisions from the 1207 IPR, 1209 IPR and IPR2015-
`
`01226 (the “1226 IPR”), which is related to the 1544 IPR, as roadmaps to enable
`
`Oracle to overcome the Board’s earlier rejections in the 1209 IPR. The Board
`
`routinely exercises its discretion under 35 U.S.C. § 325(d) to reject attempts by
`
`petitioners to use the Board’s prior decision as a “how-to” guide to bolster
`
`unsuccessful challenges and to prevent harassment of patent owners, and it should
`
`do the same here. Therefore, the 852 Petition should be denied.
`
`II. THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`PETITION IS A “SECOND” BITE AT THE APPLE
`
`The current Petition is Petitioner’s third attempt to challenge the ’147
`
`Patent’s claims based on the CRD-5500 User Manual and the HP Journal.1 The
`
`Petition should thus be denied under 35 U.S.C. § 325(d) because it presents
`
`substantially the same prior art as already used to challenge the ’147 Patent in the
`
`1209 and 1207 IPRs. Granting the current petition runs contrary to 37 C.F.R.
`
`§ 42.1(b) because it does not promote the “just, speedy, and inexpensive resolution
`
`of every proceeding.”
`
`
`1 Petitioner has also made a fourth attempt to challenge the ’147 Patent on these
`
`grounds, in the 1064 IPR.
`
`2
`
`
`
`A.
`
`Petitioner Previously Challenged Claims 1-13 in IPR2014-01209,
`but the Board Denied Institution
`
`In the 1209 IPR, Petitioner (along with NetApp and Huawei) requested inter
`
`partes review of claims 1-13 of the ’147 Patent based on the CRD-5500 User
`
`Manual2, the CRD-5500 Data Sheet3, and Smith4. See Ex. 2121 at 2, 4-5.
`
`However, in the 1209 IPR, the Board found that “the information presented in the
`
`Petition does not demonstrate a reasonable likelihood that claims 1-13 are
`
`unpatentable . . . over CRD-5500 User’s Manual, CRD-5500 Data Sheet, and
`
`Smith.” Id. at 8.
`
`The Board rejected Petitioner’s challenge in the 1209 IPR because Petitioner
`
`improperly relied solely on its expert’s declaration: “Citing the Chase Declaration
`
`to identify elements of the claims that are not otherwise supported in the Petition
`
`2 CMD Technology, Inc., CRD-5500 SCSI RAID Controller User’s Manual (1996)
`
`(here, Ex. 1004).
`
`3 CRD-5500 RAID Disk Array Controller, (Dec. 4, 1996), http://web.archive.org/
`
`web/19961226091552/http:/www.cmd.com/brochure/crd5500.htm (here,
`
`Ex. 1005).
`
`4 Judith A. Smith and Meryem Primmer, Tachyon: A Gigabit Fibre Channel
`
`Protocol Chip, Hewlett-Packard J., Article 12 (1996) (here, Ex. 1006 at 99-112).
`
`3
`
`
`
`and to present additional arguments based on references that are not already
`
`discussed in the Petition amounts to incorporation by reference. Id. at 7. Thus, the
`
`Petition failed to adequately explain how the references teach the limitations of the
`
`claims, failing to specify where each element of the claim was found in the
`
`asserted grounds, as required by 37 C.F.R. § 42.104(b)(4). Id. at 7-8. The Board
`
`explained that “[w]e decline to consider information not provided in the Petition,
`
`but instead incorporated only by reference to cited paragraphs in the Chase
`
`Declaration.” Id. at 8.
`
`The Board’s decision in the 1209 IPR issued on January 30, 2015. Id. at 1.
`
`Pursuant to 37 C.F.R. § 42.71(d)(2), Petitioner could have filed a request for
`
`rehearing within 30 days of that decision. It did not do so, choosing instead to file
`
`the current Petition on March 6, 2015.
`
`B.
`
`Petitioner Previously Challenged Claims 14-39 in IPR2014-01207,
`and Trial on those Challenges is Currently Proceeding
`
`In the 1207 IPR, Petitioner (along with NetApp and Huawei) requested inter
`
`partes review of claims 14-39 of the ’147 Patent based on the CRD-5500 User
`
`Manual, the CRD-5500 Data Sheet, and Smith. See Ex. 2129 at 2, 4-5. The Board
`
`found that the 1207 petition demonstrated a reasonable likelihood that the
`
`petitioners would prevail on the asserted grounds, and instituted trial on all
`
`challenged claims as to these references. Id. at 7, 12.
`
`4
`
`
`
`C. The Petition is Petitioner’s Third Attempt to Challenge the ’147
`Patent on the Same Grounds
`
`As Petitioner has noted, the ’147 Patent has been asserted against Petitioner,
`
`as well as additional defendants Huawei, Cisco, and Quantum. See Paper 11 (Pet.’s
`
`Updated Mandatory Notices) at 2. Petitioners seek to join the on-going 1544 IPR,
`
`filed by Cisco and Quantum, and have purportedly filed a verbatim copy of the
`
`1554 Petition. Pet. at 1.
`
`The instituted grounds in the 1544 IPR include the same CRD-5500 User
`
`Manual (Ex. 1004) that Petitioner relied upon in the 1207 and 1209 IPRs. Ex. 2124
`
`at 4. The instituted grounds also include the HP Journal, which the Board has
`
`noted includes (at pages 99-112) the Smith reference Petitioner relied upon in the
`
`1207 and 1209 IPRs. Ex. 2124 at 6-7; compare Ex. 1006 with Ex. 2018 (Ex. 1005
`
`of IPR2014-01207 and 1209). As noted by the Board, the 1544 Petition also cited
`
`the CRD-5500 Data Sheet that Petitioner relied upon in the 1207 and 1209 IPRs.
`
`Ex. 2124 at 17; compare Ex. 1005 with Ex. 2019 (Ex. 1004 of IPR2014-01207 and
`
`1209). Thus, the 1544 Petition – and, therefore, the instant Petition which copies
`
`it – asserts the same prior art as previously asserted by Petitioner in the 1207 and
`
`1209 IPRs.
`
`With respect to the limitations of Claim 1, for example, both the 1209
`
`Petition (Ex. 2122) and the instant Petition (as well as the 1544 Petition, Ex. 2127)
`
`cite almost exclusively to the CRD-5500 User Manual and Smith article. Compare
`
`5
`
`
`
`Pet. at 22-23 with Ex. 2122 at 25-26;5 Pet. at 23-24 with Ex. 2122 at 26; Pet. at 24-
`
`25 with 2122 at 26-27; Pet. at 25 with Ex. 2122 at 26-27; Pet. at 25-26 with Ex.
`
`2122 at 27-28; Pet. at 26-27 with Ex. 2122 at 28; Pet. at 27-28 with Ex. 2122 at 28;
`
`Pet. at 28-29 with Ex. 2122 at 28-29. The only citation in the instant Petition with
`
`respect to Claim 1 that is outside of the CRD-5500 User Manual and the Smith
`
`article is a single citation to the HP Journal that “SCSI commands are
`
`‘encapsulated and transported within Fibre Channel frames.’” Pet. at 29 (citing Ex.
`
`1006 at 94-95). However, this information is readily apparent from the Smith
`
`article. Ex. 2018 at 4, 10, 12; see also Ex. 2122 at 23. The same is true for the
`
`challenges to the remaining claims, which rely primarily on the CRD-5500 User
`
`Manual and the Smith portions of the HP Journal. See Ex. 2122 at 29-35; Pet. at
`
`29-43.
`
`D.
`
`Petitioner Relied on Prior Board Decisions in an Attempt to
`Correct the Deficiencies in Its 1209 IPR
`
`The instant proceeding has a history that closely resembles that of parallel
`
`proceedings involving related United States Patent No. 6,425,035 (the “’035
`
`Patent”), which shares a common specification with the ’147 Patent. In IPR2014-
`
`
`5 Reference is made to the exhibit page numbering rather than the petition’s
`
`original page numbering.
`
`6
`
`
`
`01197, Petitioner challenged the claims of the ’035 Patent over the CRD-5500
`
`User Manual, HP Journal (Smith Article) and CRD-5500 Data Sheet, making
`
`similar arguments as it unsuccessfully made in the 1209 Petition. Ex. 2101 at 5.
`
`Unsurprisingly, the Board denied the challenge to the ’035 Patent in the 1197 IPR.
`
`Id. at 5, 7-8. In the meantime, however, Cisco and Quantum filed the 1226 and
`
`1544 IPRs that respectively challenged the ’035 Patent and ’147 Patent over the
`
`CRD-5500 User Manual and HP Journal. Ex. 2104 at 5;6 Ex. 2127at 11. The
`
`Board issued a decision to institute the 1226 IPR on January 30, 2015. Ex. 2104.
`
`Petitioner was aware of the 1226 Decision when it initiated the instant
`
`proceeding. See Ex. 2153 at 2 (Feb. 27, 2015). With this knowledge, and
`
`recognizing that the petition in the 1544 IPR lodged a similar challenge to the ’147
`
`Patent as that successfully instituted in the 1226 IPR, Petitioner copied the 1544
`
`Petition in an attempt to fix the defects in Petitioner’s prior unsuccessful challenge
`
`of the ’147 Patent (the 1209 IPR).
`
`E.
`
`The Board Should Exercise its Discretion to Deny the Petition
`Under 35 U.S.C. § 325(d)
`In determining whether to institute an inter partes review, the Board may
`
`
`6 As noted by the Board, the 1226 Petition also cited the CRD-5500 Data Sheet.
`
`Ex. 2104 at 13-14.
`
`7
`
`
`
`“deny some or all grounds for unpatentability for some or all of the challenged
`
`claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C. § 314(a). Congress did not mandate
`
`that an inter partes review must be instituted under certain conditions; rather, by
`
`stating that review may not be instituted unless certain conditions are met,
`
`Congress made institution discretionary. Intelligent Bio-Systems, Inc. v. Illumina
`
`Cambridge Ltd., IPR2013-00324, Paper 19 at 4 (PTAB Nov. 21, 2013).
`
`In particular, the Director (and by extension the Board) has broad discretion
`
`to deny a petition that raises substantially the same prior art or arguments
`
`previously presented to the Office:
`
`Multiple Proceedings.— Notwithstanding sections 135 (a), 251,
`and 252, and chapter 30, during the pendency of any post-grant
`review under this chapter, if another proceeding or matter involving
`the patent is before the Office, the Director may determine the
`manner in which the post-grant review or other proceeding or
`matter may proceed, including providing for the stay, transfer,
`consolidation, or termination of any such matter or proceeding. In
`determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request
`because, the same or substantially the same prior art or
`arguments previously were presented to the Office.
`
`35 U.S.C. § 325(d) (emphasis added). The Board recognized that, under 35 U.S.C.
`
`§ 325(d), “a petitioner is not entitled to multiple challenges against a patent.”
`
`8
`
`
`
`Samsung Electronics, Co., Ltd. v. Rembrandt Wireless Techs., LP, IPR2015-00118,
`
`Paper 14 at 6 (PTAB Jan. 28, 2015) (citing 35 U.S.C. § 325(d)).
`
`In exercising its discretion under this section, the Board has been mindful of
`
`the direction of 37 C.F.R. § 42.1(b), which states that the regulations governing
`
`proceedings before the Board “shall be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” The Board has denied petitions
`
`seeking a second chance to assert the same art against the same claims because the
`
`Board was “not persuaded that a second chance would help ‘secure the just,
`
`speedy, and inexpensive resolution of every proceeding.’” Rembrandt, IPR2015-
`
`00118, Paper 14 at 6 (citing 37 C.F.R. § 42.1(b)); see also Zimmer Holdings, Inc.
`
`v. Bonutti Skeletal Innovations LLC, IPR2014-01080, Paper 17 at 5-6 (PTAB Oct.
`
`31, 2014).
`
`In Rembrandt, the petitioner filed a first petition to review multiple claims
`
`based on anticipation by a particular reference. Rembrandt, IPR2015-00118, Paper
`
`14 at 4. The Board denied institution on certain claims because the petition did not
`
`establish that the reference taught specific claim elements. Id. at 4-5. Petitioner
`
`filed a second petition requesting review of the same claims providing additional
`
`argument that i) the reference “explicitly teaches the limitations [the Board] found
`
`missing from Petitioner’s [first petition], . . . as explained in [the] institution
`
`decision in [the prior proceeding]” and ii) the missing limitations were rendered
`
`9
`
`
`
`obvious by the reference. Id. at 5. According to the Board, “[t]he sole difference
`
`between what Petitioner present[ed] in [the second] proceeding and what Petitioner
`
`presented in [the first proceeding] . . . is the presence of additional reasoning to
`
`support the assertion of unpatentability over the same prior art.” Id. at 6.
`
`The Board found that the petitioner was “requesting, essentially, a second
`
`chance to address [previously challenged] claims.” Id. (emphasis added). The
`
`Board denied the second petition, stating that “[i]n this proceeding . . . we are not
`
`apprised of a reason that merits a second chance. Petitioner simply presents an
`
`argument now that it could have made in [the previous IPR] had it merely chosen
`
`to do so.” Id.; see also Zimmer Holdings, Inc., IPR2014-01080, Paper 17 at 5-6
`
`(denying petition where “Petitioner simply presents an argument now that it could
`
`have made in [the prior proceeding], had it merely chosen to do so.”).
`
`The present case is analogous in that Petitioner is seeking a second chance to
`
`show where the elements of the claims can allegedly be found in the prior art. The
`
`current Petition is nothing more than a “second bite at the apple,”7 whereby
`
`
`7 Oracle has attempted four bites at the ’147 Patent apple: the 1207 IPR, the 1209
`
`IPR, the instant proceeding, and IPR2015-01064, which seeks to join a different
`
`petitioner’s (NetApp) second petition (IPR2015-00773) challenging the same
`
`
`
`
`10
`
`
`
`Petitioner seeks to correct the deficiencies in its prior petition. As in Rembrandt,
`
`the difference between the first petition and the second petition “is the presence of
`
`additional reasoning to support the assertion of unpatentability over the same prior
`
`art.” Rembrandt, IPR-2015-00118, Paper 14 at 6. Petitioner is thus requesting
`
`exactly the type of “second chance to address [previously challenged claims]” that
`
`the Board found lacking in Rembrandt. Id. (emphasis added).
`
`Petitioner offers absolutely no
`
`justification or explanation for
`
`the
`
`deficiencies in its prior petition, nor does it explain why the instant Petition is not
`
`redundant under § 325(d). As in Rembrandt, Petitioner has not provided “a reason
`
`that merits a second chance” but simply “presents an argument now it could have
`
`made in [the prior petition], had it merely chosen to do so.” 8 Thus, as in Samsung
`
`v. Rembrandt, the Board should likewise deny institution in this proceeding.
`
`
`patent. All in all, there have been six separate proceedings challenging the ‘147
`
`Patent on these grounds.
`
`8 To the extent the HP Journal is different than Smith, Oracle does not provide any
`
`reason that the HP Journal was not available to it or could not be cited by it when
`
`IRP2014-01209 was filed. Nor does Oracle provide any reason why any such
`
`differences justify “a second bite at the apple.”
`
`11
`
`
`
`The Board has previously explained that correcting deficiencies identified by
`
`an institution decision does not justify a second bite at the apple:
`
`The Board is concerned about encouraging, unnecessarily, the
`filing of petitions which are partially inadequate. A decision to
`institute review on some claims should not act as an entry ticket,
`and a how-to guide, . . . for filing a second petition to challenge
`those claims which it unsuccessfully challenged in the first petition.
`
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00454, Paper 12 at 5-6
`
`(PTAB Sept. 25, 2013) (designated as “Informative”) (emphasis added). Likewise,
`
`the Board has denied institution under § 325(d), stating that “[b]ased on the
`
`information presented, we are persuaded that the instant Petition uses our prior
`
`Decision on Institution
`
`to bolster challenges
`
`that were advanced,
`
`unsuccessfully, in the [prior] Petition.” Unilever, Inc. v. Procter & Gamble Co.,
`
`IPR2014-00506, Paper 17 at 8 (PTAB Jul. 7, 2014) (designated as “Informative”)
`
`(emphasis added). More recently, the Board denied institution stating:
`
`A decision to institute review on some claims in a first inter partes
`review, however, should not act as a how-to guide for the same
`Petitioner filing a second petition for inter partes review
`challenging claims that it unsuccessfully challenged in the first
`petition or claims that it reasonably could have challenged in the
`first petition.
`
`CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9 at 9 (PTAB Nov. 7,
`
`2014) (emphasis added).
`
`12
`
`
`
`There is no reason that Petitioner could not have properly specified where
`
`each element of the claim is found in the relied-upon references when the 1209
`
`Petition was filed. The requirements of section 42.104(b), and the strictures against
`
`incorporation by reference found in section 42.6, were undoubtedly well known to
`
`Petitioner’s experienced and respected counsel. See Rules of Practice for Trials
`
`Before The Patent Trial and Appeal Board and Judicial Review of Patent Trial and
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`Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012)
`
`(“The prohibition against incorporation by reference minimizes the chance that an
`
`argument would be overlooked and eliminates abuses that arise from incorporation
`
`and combination.”); see also Cisco Systems, Inc. v. C-Cation Techs., LLC,
`
`IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (designated as
`
`“Informative”) (“In the Petition before us, incorporation by reference of numerous
`
`arguments from [the expert’s] Declaration into the Petition serves to circumvent
`
`the page limits . . ., while imposing on our time by asking us to sift through over
`
`250 pages of [the expert’s] Declaration . . . .”).
`
`Petitioner offers no rationale justifying its failure to comply with the
`
`regulations governing incorporation by reference (37 C.F.R. § 42.6(a)(3)), or those
`
`requiring that the petition specify where each element of the claim is found in the
`
`relied-upon references (37 C.F.R. § 42.104(b)(4)). Under 35 U.S.C. § 314(a), it
`
`was Petitioner’s burden to make its case. Petitioner failed to do that in the 1209
`
`13
`
`
`
`Petition. Thus, there is no reason sufficient to justify granting the Petition.
`
`Allowing Petitioner a second chance to challenge the claims on the same
`
`grounds as in its prior unsuccessful challenge, thereby correcting the deficiencies
`
`pointed out by Patent Owner, is fundamentally unfair, and does not secure the
`
`“just, speedy, and inexpensive resolution” of Petitioner’s challenges to the ’147
`
`Patent. Petitioner’s mere desire to correct its failure to comply with fundamental
`
`rules well known to its counsel (as evidenced by the successful institution in other
`
`matters) does not justify institution and joinder here, which would revive
`
`Petitioner’s previously denied challenges and place them in the 1544 IPR.
`
`This second petition is also harassing to Patent Owner, and frustrates
`
`Congress’ intent in enacting the America Invents Act. See H.R. Rep. No. 112-98,
`
`pt.1, at 48 (2011). That intent was to “provid[e] quick and cost effective
`
`alternatives to litigation.” Id. (“[These] changes . . . are not to be used as tools for
`
`harassment . . . through repeated litigation and administrative attacks on the
`
`validity of a patent. Doing so would frustrate the purpose of the section . . . .”).
`
`This is exactly the situation now faced by Patent Owner. This is one of six separate
`
`proceedings brought by the same group of petitioners against the ’147 Patent. The
`
`1207 and 1209 IPRs were filed first, and shortly followed by the 1544 IPR. Then,
`
`after the Board denied institution in the 1209 IPR on the same grounds asserted
`
`here, NetApp (co-petitioner to the 1209 IPR) filed IPR2015-00773 (the “773 IPR”)
`
`14
`
`
`
`seeking its own second bite at the apple. The instant Petition followed. Most
`
`recently, Petitioner filed its fourth petition against the ’147 Patent in IPR2015-
`
`01064, which seeks to join NetApp’s 773 IPR. These repetitive filings are exactly
`
`the type of repeated administrative attacks which frustrate the purpose of the inter
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`partes review process: a quick and cost effective alternative to litigation. The
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`Board should deny the instant Petition and stop these harassing attacks on Patent
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`Owner.
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`Furthermore, instituting trial on a petition such as this does not secure the
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`“just, speedy, and inexpensive resolution of every proceeding.” As stated in
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`Rembrandt, “permitting second chances without constraint ties up the Board’s
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`limited resources; we must be mindful not only of this proceeding, but of ‘every
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`proceeding’.” IPR2015-00118, Paper 14 at 6; see also ZTE Corp. v. ContentGuard
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`Holdings, Inc., IPR2013-00454, Paper 12 at 5-6 (PTAB Sept. 25, 2013) (“The
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`Board is concerned about encouraging, unnecessarily, the filing of petitions which
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`are partially inadequate.”). Allowing a “second bite at the apple” in a case such as
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`this encourages filing of iterative petitions, increasing costs, wasting judicial
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`resources and delaying resolution of proceedings.
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`In addition, instituting trial on a petition such as this poses the risk of
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`encouraging not only harassing iterative filings, but also unnecessary parallel
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`filings at the outset. In this case, Petitioner, unlike Cisco/Quantum that filed a
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`15
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`
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`single petition, chose to split its challenges to the ’147 Patent over two parallel
`
`petitions: the 1209 and 1207 Petitions. Petitioner is now filing a “do over” petition
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`reasserting an updated version of Petitioner’s unsuccessful 1209 IPR challenge
`
`combined with the successfully instituted grounds from the 1207 IPR. Had the
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`1207 and 1209 challenges been presented in a single initial petition and then
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`reasserted in a “do over” petition, the Board would likely reject the “do over”
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`petition for the reasons discussed above. A “do over” petition in the circumstances
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`here should not end in a different result. Otherwise, petitioners will be encouraged
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`to make an end-run around the Board’s policy of discouraging multiple harassing
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`petitions by, ironically, filing more petitions on the same patent.
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`Given the foregoing considerations, the Board should exercise its discretion
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`under § 325(d) and reject the Petition.
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`F.
`
`The Board Routinely Denies Similar Petitions as a “Second Bite at
`the Apple”
`
`Faced with similar circumstances to those found here, the Board has
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`routinely denied similar petitions under § 325(d) as a “second bite at the apple.”
`
`Each of these cases shares the following facts in common with the current
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`proceeding:
`
`Petitioner filed a first petition;
`(1)
`(2) The Board determined not to institute trial on all challenged
`claims;
`Petitioner filed a new petition requesting review of the claims
`
`(3)
`
`16
`
`
`
`previously excluded from trial, utilizing at least some of the
`same arguments and evidence relied upon in the first petition;
`and
`(4) The new petition corrected deficiencies in Petitioner’s earlier
`arguments or evidence, as identified by the Board.
`
`As shown below, the Board routinely rejects petitioners’ attempts to correct
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`deficiencies via the filing of “second bite” petitions, exercising its discretion to
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`deny institution under § 325(d).
`
`1. Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487, Paper 8
`(PTAB Sept. 11, 2014) (designated as “Informative”)
`In NuVasive, the Board was presented with a new petition which
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`“remed[ied] the deficiencies of the [previously denied] Petition, and also add[ed]
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`new argument and evidence.” NuVasive, IPR2014-00487, Paper 8 at 2 (quotation
`
`marks omitted). Petitioner Medtronic explained that it was responding to a “noted
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`deficiency.” However, the Board noted that “the instant Petition presents the same
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`prior art previously presented in the [previously denied] Petition, and the proposed
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`challenges to the claims are nearly identical to the proposed challenges in the
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`[previously denied] Petition.” Id. at 6. Finding that Medtronic had not “provided
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`any persuasive reasoning as to why [the Board] should institute inter partes review
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`over ‘the same or substantially the same prior art or arguments’” that had been
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`previously presented, the Board denied the Petition. Id. at 7.
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`In the present case, Petitioner relies on substantially the same grounds, and
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`17
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`
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`essentially the same arguments, as in the 1209 IPR. Petitioner fails to provide any
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`reasoning, much less persuasive reasoning, as to why the Board should institute
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`now despite Petitioner’s prior failure to properly set forth the evidence for its
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`claims. Petitioner here attempts to correct the deficiencies in its prior petition by
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`copying another (initially successful) petition that Petitioner knew from related
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`proceedings stood a
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