`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION
`Petitioner,
`
`v.
`
`CROSSROADS SYSTEMS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2015-00854
`Patent No. 7,934,041
`____________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`SUMMARY OF ARGUMENT .................................................................... 1
`THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`PETITION IS PETITIONER’S “SECOND BITE AT THE APPLE”............ 2
`A.
`Petitioner Previously Challenged the same claims in IPR2014-
`01177, but the Board Denied Institution.............................................. 3
`The Petition is Petitioner’s Second Attempt to Challenge
`Claims 1-53 Based on the Same Grounds Asserted Here .................... 5
`Petitioner Relied on Prior Board Decisions in an Attempt to
`Correct the Deficiencies in Its 1177 IPR ............................................. 7
`The Board Should Exercise its Discretion to Deny the Petition
`Under 35 U.S.C. § 325(d) ................................................................... 8
`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.
`
`D.
`
`E.
`
`2.
`
`3.
`
`4.
`
`5.
`
`i
`
`
`
`
`
`Administrative Cases
`
`TABLE OF AUTHORITIES
`
`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)............................................ 14
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`
`IPR2014-00783, Paper 9 (PTAB Nov. 7, 2014) ............................................... 13
`
`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) ................................................ 13
`
`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, 16
`
`Statutes
`
`35 U.S.C. § 314 ............................................................................................... 8, 14
`
`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, 14
`
`37 C.F.R. § 42.22 ................................................................................................... 4
`
`37 C.F.R. § 42.71(d) .......................................................................................... 1, 4
`
`37 C.F.R. § 42.104 ..................................................................................... 4, 13, 14
`
`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) .................................................................. 15, 20
`
`
`
`
`
`
`
`
`iii
`
`
`
`
`
`Patent Owner’s Exhibit List
`IPR2015-00854
`
`Description
`
`
`Exhibit No.
`
`2000-2017
`
`[Reserved]
`
`2018
`
`2022
`
`Exhibit 1005, Oracle Corp. v. Crossroads Systems, Inc.,
`IPR2014-01177, -01197, -01207 -01209
`
`2019-2021 Reserved]
`
`Original Exhibit 1004 to Oracle Corp. v. Crossroads Systems,
`Inc., IPR2014-01177, Paper 1 (PTAB July 18, 2014)
`
`[Reserved]
`
`Institution Decision, IPR2014-01197, Paper 13 (PTAB Jan. 29,
`2015).
`
`[Reserved]
`
`Denial Decision, IPR2014-01177, Paper 13 (PTAB Jan. 28, 2015).
`
`2023-2100
`
`2101
`
`2102-2140
`
`2141
`
`2142
`
`2143
`
`2144
`
`Corrected Petition for Inter Partes Review, IPR2014-01177,
`Paper 1 (filed Jul. 18, 2014)
`
`[Reserved]
`
`Institution Decision, IPR2014-01463, Paper 9 (PTAB Mar. 17,
`2015)
`
`2145-2146
`
`[Reserved]
`
`2147
`
`Petition for Inter Partes Review, IPR2014-01463, Paper 3 (PTAB
`Sept., 8, 2014)
`
`2148
`
`[Reserved]
`
`iv
`
`
`
`
`
`Exhibit No.
`
`2149
`
`Description
`
`Original Petition for Inter Partes Review, IPR2014-01177, Paper
`1 (PTAB Jul. 18, 2014)
`
`2150-2152
`
`[Reserved]
`
`2153
`
`Motion for Joinder, IPR2014-00825, 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,” “854
`
`Petition” or “Pet.”) filed in IPR2015-00854 (the “854 IPR”) by Oracle Corporation
`
`(“Petitioner”) seeking review of United States Patent No. 7,934,041 (the “’041
`
`Patent”) (Ex. 1001).
`
`I.
`
`SUMMARY OF ARGUMENT
`
`The 854 Petition should also be denied because it is Petitioner’s “second bite
`
`at the apple.” The 854 Petition is the second of three petitions for inter partes
`
`review filed by Petitioner against the ’041 Patent, and the second of five filed over
`
`nine months by defendants in co-pending litigation. In IPR2014-01177 (the “1177
`
`IPR”), to which Petitioner was a party, the Board previously denied inter partes
`
`review of the same challenged claims 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 IPR2015-01066 (the “1066 IPR”) in an attempt to overcome the defects
`
`of the 1177 Petition.
`
`Oracle does not raise any new prior art or evidence or offer any arguments
`
`that could not have been submitted in the 1177 IPR. Oracle instead copies the
`
`existing petition from IPR2014-01463 (“the 1463 IPR”), relying on the Board’s
`
`prior institution decisions from the 1177 and IPR2014-01226 (the “1226 IPR”),
`
`1
`
`
`
`
`
`which is related to the 1463 IPR, as roadmaps to enable Oracle to overcome the
`
`Board’s earlier rejection. 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 854 Petition
`
`should be denied.
`
`II. THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`PETITION IS PETITIONER’S “SECOND BITE AT THE APPLE”
`
`The current Petition is Petitioner’s second attempt to challenge the ’041
`
`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 ’041 Patent in
`
`IPR2014-1177. 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 also made a third attempt to challenge the ’041 Patent on these
`
`grounds in the 1066 Petition.
`
`2
`
`
`
`
`
`A.
`
`Petitioner Previously Challenged the same claims in IPR2014-
`01177, but the Board Denied Institution
`
`In the 1177 IPR, Petitioner (along with NetApp and Huawei) requested inter
`
`partes review of claims 1-53 of the ’041 Patent based on the CRD-5500 User
`
`Manual2, the CRD-5500 Data Sheet3, and Smith4. See Ex. 2141 at 2, 4-5.
`
`However, in the 1177 IPR, the Board found that Petitioner failed to demonstrate a
`
`reasonable likelihood that it would prevail on this challenge:
`
`[W]e are not persuaded that the Petition demonstrates a reasonable
`likelihood that Petitions would prevail in their challenge of
`independent claims 1, 20, and 37 as obvious over the CRD-5500
`User Manual, the CRD-5500 Data Sheet, and Smith. For the same
`reasons, we are not persuaded that the Petition demonstrates a
`
`
` 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
`
`
`
`
`
`reasonable likelihood that Petitioners would prevail in their
`challenge of claims 2–19, 21–36, and 38–53, each of which
`depends from and necessarily includes the limitations of one of
`independent claims 1, 20, and 37.
`
`Ex. 2141 at 10.
`
`The Board rejected the prior challenge because Petitioner improperly failed
`
`to include “a full statement of the reasons for the relief requested, including a
`
`detailed explanation of the significance of the evidence,” pursuant to 37 C.F.R.
`
`§ 42.22(a)(2). Ex. 2141 at 8. Thus, the Petition failed to adequately explain how
`
`the references teach the limitations of the claims. Id. In citing only the Chase
`
`declaration in support of its arguments, Petitioner failed 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). The Board explained that “we decline to consider information
`
`presented in a supporting declaration but not sufficiently explained in the Petition,
`
`[and thus] the citations to the Chase Declaration do not cure the deficiency of the
`
`Petition.” Id. at 9.
`
`The Board’s decision in the 1177 IPR issued on January 28, 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.
`
`4
`
`
`
`
`
`B.
`
`The Petition is Petitioner’s Second Attempt to Challenge Claims
`1-53 Based on the Same Grounds Asserted Here
`
`As Petitioner has noted, the ’041 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. Petitioner seeks to join the on-going 1463 IPR,
`
`filed by Cisco and Quantum, and has purportedly filed a verbatim copy of the 1463
`
`Petition. Pet. at 1.
`
`The instituted grounds in the 1463 IPR include the same CRD-5500 User
`
`Manual (Ex. 1004) that Petitioner relied upon in the 1177 IPR. Ex. 2144 at 5. 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 1177 IPR. Ex.
`
`2144 at 6 n.1; compare Ex. 1006 at 99-112 with Ex. 2018 (Ex. 1005 of the 1177
`
`IPR). As noted by the Board, the 1463 Petition also cited the CRD-5500 Data
`
`Sheet that Petitioner relied upon in the 1177 IPR, for teaching that the CRD-5500
`
`RAID controller was designed to support tomorrow’s high speed serial interfaces,
`
`such as Fibre Channel. Ex. 2144 at 17; compare Ex. 1005 with Ex. 2022 (Ex. 1004
`
`of IPR2014-01177). The, the 1463 Petition – and, therefore, the instant Petition
`
`which copies it – asserts the same prior art as previously asserted by Petitioner in
`
`the 1177 IPR.
`
`With respect to the limitations of Claim 1, both the 1177 Petition (Ex. 2142)
`
`and the instant Petition (as well as the 1463 Petition, Ex. 2147) cite almost
`
`5
`
`
`
`
`
`exclusively to the CRD-5500 User Manual and Smith article. Compare Pet. at 20-
`
`21 with Ex. 2142 at 26;5 Pet. at 21-22 with Ex. 2142 at 26; Pet. at 22-25 with 2142
`
`at 27; Pet. at 25-26 with Ex. 2142 at 27-28; Pet. at 26-27 with Ex. 2142 at 27-28.
`
`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 26 (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. 2142
`
`at 22. 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. 2144 at 9-14; Pet. at 28-58. The Petition does rely on an
`
`additional reference, the Fibre Channel Standard,6 to allegedly show a world wide
`
`name for Claims 15, 34, 51, and 52.Pet. at 10; compare Pet. at 57 with Ex. 2142 at
`
`33.
`
`
`
` 5
`
` Exhibit page numbering is used rather than the underlying 1177 Petition page
`
`numbering.
`
`6 Fibre Channel Physical and Signaling Interface (FC-PH) X3.230.
`
`6
`
`
`
`
`
`C.
`
`Petitioner Relied on Prior Board Decisions in an Attempt to
`Correct the Deficiencies in Its 1177 IPR
`
`The instant proceeding has a history that closely resembles that of parallel
`
`proceedings involving United States Patent No. 6,425,035 (the “’035 Patent”),
`
`which has a common specification with the ’041 Patent. In IPR2014-01197,
`
`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 1177 IPR. Ex. 2101 at 5.
`
`Unsurprisingly, the Board denied the challenge to the ’035 Patent in the 1197 IPR.
`
`Ex. 2101 at 5, 7-8. In the meantime, however, Cisco and Quantum filed the 1226
`
`and 1463 IPRs that respectively challenged the ’035 Patent and ’041 Patent over
`
`the CRD-5500 User Manual and HP Journal. Ex. 2104 at 5;7 Ex. 2147 at 12. The
`
`Board issued a decision to institute the 1226 IPR on January 30, 2015. Ex. 2104 at
`
`1.
`
`Petitioner was aware of the 1226 Decision when it initiated the instant
`
`proceeding. Ex. 2153 at 2 (Feb. 27, 2015). With this knowledge and recognizing
`
`
`
` 7
`
` As noted by the Board, the 1226 Petition also cited the CRD-5500 Data Sheet.
`
`Ex. 2104 at 13-14.
`
`7
`
`
`
`
`
`that 1463 IPR lodged a similar challenge to ’041 Patent as that successfully
`
`instituted in the 1226 IPR, Petitioner copied the 1463 Petition in an attempt to fix
`
`the defects in Petitioner’s prior unsuccessful challenge of the ’041 Patent (the 1177
`
`IPR).
`
`D. 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
`
`“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,
`
`8
`
`
`
`
`
`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.”
`
`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
`
`9
`
`
`
`
`
`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
`
`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
`
`10
`
`
`
`
`
`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,”8 whereby
`
`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
`
`
`
` 8
`
` Oracle has attempted three bites at the ’041 Patent apple: the 1177 IPR, the
`
`instant proceeding and IPR2015-01066, which seeks to join a different petitioner’s
`
`(NetApp) second petition (IPR2015-00776) challenging the same patent. This
`
`does not count the fact that Oracle filed not one, but two, petitions in the 1177 IPR.
`
`See Ex. 2149 and Ex. 2142. All in all, there have been five separate proceedings
`
`challenging the ‘041 Patent on these same grounds.
`
`11
`
`
`
`
`
`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.” 9 Thus, as in Samsung
`
`v. Rembrandt, the Board should likewise deny institution in this proceeding.
`
`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
`
`
` To the extent the HP Journal is different than Smith, Oracle does not provide any
`
` 9
`
`reason that the HP Journal was not available to it or could not be cited by it when
`
`IRP2014-01177 was filed. Nor does Oracle provide any reason why any such
`
`differences justify “a second bite at the apple.” Oracle also fails to explain why the
`
`June 1, 1994 Fibre Channel Standard, cited solely for dependent Claims 15, 34, 51
`
`and 52, was not available to it or could not be cited by it.
`
`12
`
`
`
`
`
`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).
`
`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 1177
`
`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
`
`13
`
`
`
`
`
`argument would be overlooked and eliminates abuses that arise from incorporation
`
`and combination.”); see also Cisco Systems, Inc. v. C-Cation Techs., LLC,
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`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 1177
`
`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 ’041
`
`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
`
`14
`
`
`
`
`
`Petitioner’s previously denied challenges and place them in the 1463 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 five
`
`separate proceedings brought by the same group of petitioners against the ’041
`
`Patent. The 1177 IPR was filed first, and shortly followed by the 1463 IPR. Then,
`
`after the Board denied institution in the 1177 IPR on the same grounds asserted
`
`here, NetApp (co-petitioner to the 1177 IPR) filed IPR2015-00776 (the “776 IPR”)
`
`seeking its own second bite at the apple. The instant Petition followed. Most
`
`recently, Petitioner filed its third petition against the ’041 Patent in IPR2015-
`
`01066, which seeks to join NetApp’s 776 IPR. These repetitive filings are exactly
`
`the type of repeated administrative attacks which frustrate the purpose of the inter
`
`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.
`
`Furthermore, instituting trial on a petition such as this does not secure the
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`15
`
`
`
`
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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
`
`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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`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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`E.
`
`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
`
`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
`previously excluded from trial, utilizing at least some of the
`
`(3)
`
`16
`
`
`
`
`
`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.
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`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
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`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
`
`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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`essentially the same arguments, as in the 1177 IPR. Petitioner fails to provide any
`
`17
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`
`
`
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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
`
`claims. Petitioner here attempts to correct the deficiencies in its prior petition by
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`copying a petition that Petitioner knew from other related proceedings stood a
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`better chance of being successfully instituted, thus using the Board’s prior
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`decisions as roadmaps or “how-to” guides to bolster its prior unsuccessful
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`challenges.
`
`2.
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc., IPR2014-
`00581, Paper 8 (PTAB Oct. 14, 2014)
`
`Petitioner Butamax filed a petition requesting review of claims 5 and 10 of
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`the challenged patent and a request for joinder with a pending proceeding.
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`Butamax, IPR2014-00581, Paper 8 at 2. The patent owner filed no preliminary
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`response or opposition to the motion for joinder. Id. The pending proceeding was a
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`prior challenge by Butamax on the same patent, and trial had been instituted on all
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`claims except claim 10. Id. at 4. Butamax’s new challenge asserted two new
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`references that had not been previously asserted. Id. at 4-5.
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`In the instituted proceeding, the Board had declined to institute review with
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`respect to claim 5, based on anticipation by the Flint reference. The Board
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`determined that Flint did not properly incorporate another application by reference.
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`Id. at 8-9. In exercising its discretion to deny Butamax’s second petition under
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`§ 325(d), the Board noted tha
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