Case IPR2015-01045
`U.S. Patent No. 5,563,883
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`Paper No. 7
`Filed: July 22, 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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`UNIFIED PATENTS INC.
`Petitioner
`
`v.
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`C-CATION TECHNOLOGIES, LLC
`Patent Owner
`
`CASE IPR2015-01045
`Patent 5,563,883
`
`PATENT OWNER C-CATION TECHNOLOGIES, LLC’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.107
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`Case IPR2015-01045
`U.S. Patent No. 5,563,883
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`Table of Contents
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`Paper No. 7
`Filed: July 22, 2015
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`
`INTRODUCTION ........................................................................................... 1
`I.
`STANDARD FOR GRANTING INTER PARTES REVIEW ....................... 4
`II.
`III. PETITIONER IS NOT THE ONLY REAL PARTY-IN-INTEREST ............ 5
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY THE
`PETITION UNDER 35 U.S.C. § 325(d) ......................................................... 9
`A. Procedural History ........................................................................................... 9
`1. This Petition is merely an identical copy of Arris’s currently-undecided
`second petition for inter partes review ...................................................... 9
`2. This Petition presents the same prior art and arguments as previously
`denied petitions for inter partes review ................................................... 11
`B. Argument ....................................................................................................... 12
`V. OVERVIEW OF U.S. PATENT NO. 5,563,883 .......................................... 16
`VI. CLAIM CONSTRUCTION .......................................................................... 19
`VII. THE PETITION FAILS TO ADEQUATELY IDENTIFY HOW CLAIMS
`1, 3, OR 4 OF THE ’883 PATENT ARE UNPATENTABLE ..................... 25
`A. Petitioner’s Reliance on the MPT Specifications .......................................... 25
`B. The Channel Hunt Sequence and Normal Operation on Control Channel
`Does Not Disclose the Steps of Claim 1 ....................................................... 27
`1. The Channel Hunt Sequence and Normal Operation on Control Channel
`functionality referenced and relied on in the Petition ............................... 27
`2. The Channel Hunt Sequence and Normal Operation on Control Channel,
`as relied on by the Petition, fails to describe the steps of claim 1 ........... 29
`C. The Fall-Back Procedures Do Not Disclose the Steps of Claim 1 ................ 32
`1. The Fall-Back Procedures functionality referenced and relied on in the
`Petition ...................................................................................................... 32
`2. The Fall-Back Procedures, as relied on by the Petition, fail to describe
`the steps of claim 1 ................................................................................... 34
`D. Claim 3 ........................................................................................................... 36
`E. Claim 4 ........................................................................................................... 36
`VIII. CONCLUSION .............................................................................................. 37
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`Case IPR2015-01045
`U.S. Patent No. 5,563,883
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`
`
`Table of Authorities
`
`Paper No. 7
`Filed: July 22, 2015
`
`
`Cases
` 
`ActiveVideo Networks v. Verizon Communs. Inc.,
` 694 F.3d 1312 (Fed Cir. 2012) ............................................................................... 5
`Apple, Inc. v. Aylus Networks, Inc.,
` IPR2014-01566, Paper 10 (PTAB Apr. 23, 2015) ................................................ 16
`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) .................................................. 13
`Conopco, Inc. v. The Procter & Gamble Co.,
` IPR2014-00507, Paper 17 (PTAB Jul. 7, 2014) .................................................... 16
`Dell Inc. v. Electronics and Telecom. Res. Inst.,
` IPR2014-00152, Paper 12 (PTAB May 16, 2014) ................................................. 5
`Ex parte Ronald A Katz Tech. Lic.L.P.,
` Appl. No. 2008-005127 (BPAI Mar. 15, 2010) .................................................... 20
`Heckler v. Chaney,
` 470 U.S. 821 (1985) .............................................................................................. 13
`In re Guan et al. Inter Partes Reexamination Proceeding,
` Control No. 95/001,045, Decision Vacating Filing Date (BPAI Aug. 25, 2008) .. 7
`In re Rambus, Inc.,
` 694 F.3d 42 (Fed. Cir. 2012) ................................................................................ 20
`Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd.,
` IPR2013-00324, Paper 19 (PTAB Nov. 21, 2013) ............................................... 13
`KSR Int’l Co. v. Teleflex, Inc.,
` 550 U.S. 398 (2007) ................................................................................................ 5
`Medtronic, Inc. v. Nuvasive, Inc.,
` IPR2014-00487, Paper 8 (PTAB Sept. 11, 2014) ...................................................... 13
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
` IPR2014-00436, Paper 17 (PTAB June 19, 2014) ............................................... 14
`Nautilus, Inc. v. Biosig Instruments, Inc.,
` 134 S. Ct. 2120 (2014) .......................................................................................... 24
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 20
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
` IPR2014-00315, Paper 14 (PTAB July 8, 2014) ....................................................... 13
`SAS Inst., Inc. v. ComplementSoft, LLC,
` IPR2013-00581, Paper 15 (PTAB Dec. 30, 2013) .......................................... 5, 28
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`Paper No. 7
`Filed: July 22, 2015
`
`Case IPR2015-01045
`
`U.S. Patent No. 5,563,883
`
`Unified Patents, Inc. v. Personalized Media Commc’ns, LLC,
` IPR2015-00521, Paper 13 (PTAB June 8, 2015) ....................................... 5, 6, 14, 15
`Unified Patents, Inc. v. Personalized Media Commcn’s, LLC,
` IPR2015-00520, Paper 15 (PTAB June 8, 2015) ...................................................... 15
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
` IPR2014-00702, Paper 13 (PTAB July 24, 2014) .............................................. 14, 15
`Unilever, Inc. v. Procter & Gamble Co.,
` IPR2014-00506, Paper 17 (PTAB July 7, 2014) .................................................. 5, 13
`Vizio, Inc. v. Int’l Trade Com'n,
` 605 F.3d 1330 (Fed. Cir. 2010) .............................................................................. 5
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
` IPR2013-00054, Paper 12 (PTAB Apr. 8, 2013) .................................................. 27
`Zetec, Inc. v. Westinghouse Electric Co., LLC,
` IPR2014-00384, Paper 10 (PTAB July 23, 2014) ......................................... 26, 34
`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC,
` IPR2014-01080, Paper 17 (PTAB Oct. 31, 2014) ................................................. 16
`Statutes
` 
`35 U.S.C. § 312(a)(2) ................................................................................................. 2
`35 U.S.C. § 314(a) .......................................................................................... 4, 5, 14
`35 U.S.C. § 316(b) ................................................................................................... 18
`35 U.S.C. § 316(e) ..................................................................................................... 4
`35 U.S.C. § 325(d) ........................................................................................... passim
` 
`Other Authorities
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ........4, 7
`
`Regulations
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`37 C.F.R. § 42.104(b)(4) ..................................................................................... 5, 26
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 26
`37 C.F.R. § 42.108(b) ................................................................................................ 5
`37 C.F.R. § 42.108(c) ................................................................................................. 4
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 26
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 9
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`Case IPR2015-01045
`U.S. Patent No. 5,563,883
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`Exhibits List
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`Paper No. 7
`Filed: July 22, 2015
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`Exhibit Description
`Exhibit #
`C-Cation 2001 Unified Patents, FAQ, Objective obtained from
`http://unifiedpatents.justdemo.org/faq/ (last visited July 21, 2015)
`C-Cation 2002 Unified Patents, FAQ, Funding obtained from
`http://unifiedpatents.justdemo.org/faq/ (last visited July 21, 2015)
`C-Cation 2003 Unified Patents, FAQ, Terminating IPRs obtained from
`http://unifiedpatents.justdemo.org/faq/ (last visited July 21, 2015)
`C-Cation 2004 Claim Construction Memorandum and Order, C-Cation Techs.,
`LLC v. Time Warner Cable, Inc., et al., No. 2:14-cv- 59, dated
`April 20, 2015
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`iv
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`

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`Case IPR2015-01045
`U.S. Patent No. 5,563,883
`I.
`INTRODUCTION
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`Paper No. 7
`Filed: July 22, 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 Unified Patents Inc. (“Petitioner” or
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`“Unified”) as Paper No. 2 in this proceeding, which requests inter partes review
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`of claims 1, 3, and 4 of U.S. Patent No. 5,563,883 (“Petition”).1 This response is
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`timely pursuant to the Board’s Notice in Paper No. 4.
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`Patent Owner respectfully requests that the Board decline to institute inter
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`partes review because the Petition (i) does not present “a reasonable likelihood
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`that the petitioner would prevail” with respect to any of the three challenged
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`claims; (ii) does not identify all real parties-in-interest; and (iii) relies on the same
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`or substantially the same prior art or arguments previously presented to the Office.
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`This is the fourth time inter partes review of the ’883 patent has been
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`requested for the same claims and the third petition based on the same prior art.
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`Indeed, the instant Petition is essentially a verbatim copy of the second petition
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`filed by Arris Group, Inc. (“Arris”) (IPR2015-00635), the institution decision of
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`which is still pending before the Board. This Petition is also substantially
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`similar to the petition filed by Cisco Systems, Inc. (“Cisco”) (IPR2014-00454),
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`which presented the same prior art and for which institution was denied.
`                                                            
`1
`U.S. Patent No. 5,563,883 (Ex. 1001) is referred to throughout this response
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`as “the ’883 patent.”
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`1
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`Patent Owner respectfully submits that the instant Petition should not be
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`instituted for several reasons. First, the Petition does not identify all real parties-
`
`in-interest in violation of § 312(a)(2). Petitioner, the only asserted real party-in-
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`interest, is a membership-based entity that exists solely to challenge patents, such
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`as the ’883 patent, on behalf and for the benefit of its members. Petitioner’s
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`members fund these challenges through the subscription fees they pay to
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`Petitioner. The Board has previously explained that when a petitioner merely
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`serves as a front for the patent-challenging activities of its member companies, it
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`cannot claim to be the only real party-in-interest. Indeed, the instant petition,
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`which is a near verbatim copy of Arris’s petition in IPR2015-00635, was filed five
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`days after Patent Owner requested additional discovery to explore whether Arris
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`was in privity with defendants in a previous lawsuit and, therefore, barred from
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`seeking inter partes review under 35 U.S.C. § 315(b). Patent Owner submits that
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`Petitioner is nothing more than a front for the real parties-in-interest, so the instant
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`Petition should be denied for failing to disclose the real parties-in-interest in
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`violation of 35 U.S.C. § 312(a)(2).
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`Second, as Petitioner’s filing is merely a repetition of Arris’s second
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`petition, it should be denied under 35 U.S.C. § 325(d). Indeed, Petitioner simply
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`copies Arris’s petition in IPR2015-00635, making minor spelling and
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`grammatical changes. The arguments are nearly verbatim the same. As such, the
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`instant Petition suffers from the same deficiencies as Arris’s petition in IPR2015-
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`00635. Because the Petition does nothing more than further drain the Board’s
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`resources with no added benefit, Patent Owner respectfully requests that the
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`Board exercise its discretion and deny institution pursuant to 35 U.S.C. § 325(d).
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`Instituting review under the present circumstances would signal to petitioners
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`that they need not concern themselves with the quality of their petitions, as they
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`can tie up the Patent Owner’s and the Board’s resources, even if their positions
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`have already been put before the Board.
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`Lastly, even if the Board determines that Petitioner has properly identified
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`the only real-party-in-interest and it declines to exercise its discretion to deny the
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`Petition under 35 U.S.C. § 325(d), the Board should decline to institute inter partes
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`review 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 patent
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`are unpatentable over the cited prior art. For example, the prior art cited by
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`Petitioner does not disclose the use of a central controller to dynamically allocate
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`signalling data channels to meet the requirements of varying traffic demand and
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`growth by reassigning remote terminals to signalling data channels as recited in
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`claim 1. Specifically, the Petition (and the declaration of Stuart Lipoff submitted
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`by Petitioner in support) relies on two distinct procedures from a combination of
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`references it refers to as the “MPT Specifications:” (1) Channel Hunt Sequence
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`and Normal Operation on Control Channel; and (2) Fall-Back Procedures.
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`However, as explained in detail below, even based on the characterizations of the
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`purported prior art by the Petition and Mr. Lipoff, the claimed central controller
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`that dynamically allocates signalling data channels to meet the requirements of
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`varying traffic demand and growth by reassigning remote terminals to signalling
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`data channels is simply not disclosed. For at least these reasons, the Petition
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`should not be instituted.
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`II.
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`STANDARD FOR GRANTING INTER PARTES REVIEW
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`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 Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (hereinafter “Practice
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`Guide”) (“The Board . . . may institute a trial where the petitioner establishes that
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`the standards for instituting the requested trial are met . . . .”) (emphasis added). A
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`petitioner bears the burden of proving unpatentability by a preponderance of the
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`evidence. 35 U.S.C. § 316(e). However, the Board has discretion to not institute
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`an inter partes review proceeding, especially where the petition is merely a copy of
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`a previously-filed petition or the same or substantially the same prior art or
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`4
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`arguments have already been presented to the Board. See 35 U.S.C. § 325(d);
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`Unified Patents, Inc. v. Personalized Media Commc’ns, LLC, IPR2015-00521, Paper 13
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`at 8 (PTAB June 8, 2015); Unilever, Inc. v. Procter & Gamble Co., IPR2014-00506,
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`Paper 17 at 6 (PTAB July 7, 2014) (Informative Decision). Indeed, in determining
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`whether to institute an inter partes review, the Board may “deny some or all
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`grounds for unpatentability for some or all of the challenged claims.” 37 C.F.R. §
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`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 37 C.F.R.
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`§ 42.104(b)(4). In particular, a petition must support a proposed obviousness
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`ground with “sufficient articulated reasoning with rational underpinning . . . .” SAS
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`Inst., Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper 15 at 12 (PTAB Dec.
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`30, 2013) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); accord
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`ActiveVideo Networks v. Verizon Commcn’s. Inc., 694 F.3d 1312, 1328 (Fed Cir.
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`2012).
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`III. PETITIONER IS NOT THE ONLY REAL PARTY-IN-INTEREST
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`Petitioner certifies that it is the only real party-in interest and that it has
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`complete control over this Petition. See Petition at 2. Unified, however, is merely
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`an entity whose sole purpose is to “protect” the technology sectors of its secret
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`members by challenging the validity of patents—here, an expired patent—asserted
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`against them. See, e.g., Ex. 2001 (Unified Patents, FAQ, Objective) (stating that
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`Unified Patent’s “objective is to deter invalid NPE assertions in technology areas
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`companies care the most about”); Ex. 1020 (Petitioner’s Voluntary Interrogatory
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`Responses) at 2 (describing Unified as a “first-of-its-kind company whose sole
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`purpose is to deter NPE litigation by protecting technology sectors”); Unified
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`Patents. v. Personalized Media Commc’ns, IPR2015-00521, Paper 13 at 8 (“As
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`noted in our concurrent decision denying Petitioner’s motion for joinder, Petitioner
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`is a company whose stated purpose is to deter NPE litigation by protecting
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`technology sectors . . .”) (internal citations omitted).
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`
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`Furthermore, Petitioner’s only source of revenue is subscription fees that its
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`members pay so that Unified can file these post-grant proceedings on behalf of
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`their members. See Ex. 2002 (Unified Patents, FAQ, Funding) (stating that
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`Unified uses the subscription fees it collects from members in each of its “Zones”
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`to perform its services in that Zone). As such, through their subscription fees,
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`member companies of each Zone pay to challenge patents of interest or concern to
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`them. In sum, Petitioner operates to use the fees provided by its members to file
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`IPRs in its own name on their behalf and for their benefit.
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`This is the exact situation that the Board found improper in In re Guan et al.
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`Inter Partes Reexamination Proceeding, Control No. 95/001,045, Decision
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`Vacating Filing Date (BPAI Aug. 25, 2008).2 There, the requester, Troll Busters
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`LLC, claimed to be the only real party-in-interest in a reexamination request,
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`despite advertising on its website that its business purpose was to “secure freedom
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`to operate for [its] customers” by filing petitions in its own name, so that patent
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`holders would “never know who or how many [were] behind the ‘hit.’” Id. at 1.
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`The Board explained, however, that since Troll Busters’ website clearly “held out
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`[that] a primary function of Troll Busters is filing requests in their own name to
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`maintain the anonymous nature of a party or parties,” it could not “act as a ‘shill’ .
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`. . to shield the identity of the real party or parties in interest.” Id. at 7.
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`Similarly, the Petitioner here acts as a “shill” for its anonymous members,
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`filing petitions on their behalf and for their benefit using money collected from the
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`subscription fees they pay. Like Troll Busters, Unified advertises that it protects
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`its paying member’s areas of technologies through offensive PTAB filings. See
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`Ex. 2001. Also, like Troll Busters, Unified initiated this proceeding solely in its
`                                                            
`2
`Although the Guan decision was issued in relation to a reexamination
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`proceeding rather than an inter partes review, the PTO has cited this decision in its
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`Office Patent Trial Practice Guide as similarly applying in the inter partes review
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`context. Practice Guide at 48,759-60.
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`7
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`own name and as the only alleged real party-in-interest, while still touting that all
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`of its services, including its inter partes review filing services, are paid for “us[ing]
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`the subscription fees collected for each Zone” from its members. Ex. 2002.
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`Indeed, Unified even admits that it can only terminate inter partes review petitions
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`it files in its own name if all the members of the Zone paying for the petition no
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`longer run the risk of having the patent asserted against them. See Ex. 2003
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`(Unified Patents, FAQ, Terminating IPRs) (stating that Unified can settle or
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`terminate an IPR “so long as all members of a relevant Zone no longer have
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`assertion risk”). This directly contradicts Petitioner’s assertion that it exerts
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`complete control over the Petition. See Petition at 2. Thus, like Troll Busters,
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`Unified is not the only real party-in-interest in this proceeding, so the Petition
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`should be denied on this ground.3
`                                                            
`3
`Petitioner attempts to circumvent its failure to correctly identify the real
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`parties-in-interest by creating and answering self-serving Voluntary Interrogatory
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`Responses. See Ex. 1020. These responses, however, do not sufficiently disclose
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`who Unified’s members are, how it collects money from its members, or how
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`much of that money is directed towards inter partes review activity. Importantly,
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`Petitioner’s responses make no mention of whether the Patent Owner has ever
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`asserted the ’883 patent against or offered to license it to any of Unified’s member
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`companies, particularly those whose subscription fees were used to fund the
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`8
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION UNDER 35 U.S.C. § 325(d)
`
`
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`
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`A.
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`Procedural History
`
`1. This Petition is merely an identical copy of Arris’s currently-
`undecided second petition for inter partes review
`
`The instant Petition is virtually identical to the petition for inter partes
`
`
`
`review filed by Arris on February 5, 2015.4 Compare Petition with Arris Grp., Inc.
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`v. C-Cation Techs., LLC, IPR2015-00635 Paper 2 (PTAB Feb. 5, 2015). It
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`challenges the same claims on the same grounds using the same prior art. Indeed,
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`other than minor spelling and grammatical changes, the only alterations in the
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`entire Petition are changes to the real party-in-interest and related matter notices5
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`Petition. This question is directly relevant to the real parties-in-interest issue, yet
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`Petitioner skirts over it without mention. As such, Petitioner’s voluntary discovery
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`does not demonstrate that it is the only real party-in-interest in this Petition, and it
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`should be given no weight by the Board.
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`4
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`Patent Owner timely filed a Preliminary Response in IPR2015-00635 on
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`May 19, 2015. The Board is due to render its decision on that petition by August
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`19, 2015.
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`5
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`Despite, or perhaps because of, the fact that the “Related Matters Under 37
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`C.F.R. § 42.8(b)(2)” section was one of the very few things Petitioner updated in
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`its Petition, it lists a non-existent petition as related to the ’883 patent but omits
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`Case IPR2015-01045
`U.S. Patent No. 5,563,883
`and the simplification of one sentence.6
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`Paper No. 7
`Filed: July 22, 2015
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`Even the exhibits submitted by Arris in IPR2015-00635 were copied by
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`Petitioner verbatim. Tellingly, the Declaration by Dr. Stuart Lipoff that
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`accompanies this Petition states that Dr. Lipoff has only been “retained by ARRIS
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`Group, Inc. (“ARRIS”) in connection with its request for inter partes review” of
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`the ’883 patent. Ex. 1002 (Dec. of Stuart Lipoff) at 1. Indeed, Petitioner’s only
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`changes in any of the exhibits are: (i) the removal of Arris’s identification stamp in
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`the bottom left corner of every page; (ii) the omission of the last 61 pages of part 2
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`of MPT 1327 (Ex. 1005 pt. 2); and (iii) the addition of its Voluntary Interrogatory
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`IPR2015-00635, entirely.
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`6
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`Arris’s petition argues that the MPT Specifications are so interrelated “that
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`they constitute a single reference. However, the Board need not decided whether
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`these three references are a single reference since” a person of ordinary skill would
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`have understood them to define an interrelated system. Arris Grp. v. C-Cation
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`Techs., IPR2015-00635, Paper 2 at 17. Petitioner’s only change is in the quoted
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`section of this argument. It merely alleges that the MPT Specifications are so
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`interrelated “that it is clear they are intended to be used together” and that a person
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`of ordinary skill would have understood them to define an interrelated system.
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`Petition at 16. This stylistic change adds nothing to the substance of Petitioner’s
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`argument.
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`10
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`Responses (Ex. 1020), discussed supra, Section III, as an attempt to preemptively
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`explain away its failure to identify the real parties-in-interest.
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`2.
`
`This Petition presents the same prior art and arguments as
`previously denied petitions for inter partes review
`
`This Petition also relies on the same references and arguments as previous
`
`
`
`inter partes review petitions that the Board declined to institute. The Court
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`rejected the argument that the MPT Specifications anticipated or rendered obvious
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`claims 1, 3, and 4 of the ’883 patent in Cisco’s IPR2014-00454, filed on February
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`19, 2014. Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 7
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`(PTAB Mar. 12, 2014). Specifically, the instant Petition alleges that claims 1 and 4
`
`are obvious in view of the MPT Specifications (Ground 1). This is the same
`
`ground as Ground 5 presented by Cisco in IPR2014-00454.7 Moreover, the
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`additional references for claim 3 relied on in the instant Petition in Ground 2—
`
`Zudnek and Dufresne—were already relied on by Arris in IPR2014-00746. Arris
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`Grp., Inc. v. C-Cation Techs., LLC, IPR2014-00746, Paper 1 (PTAB May 13,
`
`2014). As mentioned, the Board considered and denied Cisco’s petition in
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`                                                            
`7 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,
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`Petitioner offers no explanation as to what deficiencies in those portions are cured
`
`by MPT 1347.
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`11
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`

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`Case IPR2015-01045
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`U.S. Patent No. 5,563,883
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`IPR2014-00454 as well as Arris’s petition in IPR2014-00746.
`
`Paper No. 7
`Filed: July 22, 2015
`
`In the instant Petition, the Petitioner acknowledges that the petition in
`
`IPR2014-00454 “was based in part on the MPT Specifications relied on herein,” but
`
`asserts that “the same, or substantially the same, prior art and arguments have not
`
`been presented to the Office before.” See Petition at n. 1. However, Petitioner
`
`offers no support for its conclusory assertion. Indeed, the Petition offers no insight
`
`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 Arris and Cisco.
`
`B. Argument
`
`
`
`The Board’s authority to institute inter partes review derives from 35 U.S.C.
`
`§ 314(a), which provides that a review may not “be instituted unless . . . the
`
`information presented in the petition . . . shows that there is a reasonable likelihood
`
`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
`
`Board “may not institute review unless certain conditions are met,” “Congress did
`
`not mandate that an inter partes review must be instituted under certain
`
`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
`
`Nov. 21, 2013); see also Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when
`
`deciding whether to take action in a particular matter, an agency must determine
`
`12
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`Case IPR2015-01045
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`U.S. Patent No. 5,563,883
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`whether its resources are best spent on one matter or another).
`
`Paper No. 7
`Filed: July 22, 2015
`
`
`
`The Board’s discretion is guided by 35 U.S.C. § 325(d), which states, in
`
`relevant part, that “[i]n determining whether to institute or order a proceeding . . .
`
`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
`
`presented to the Office.” 35 U.S.C. § 325(d); Butamax Adv. Biofuels LLC v. Gevo,
`
`Inc., IPR2014-00581, Paper 8 at 12-13 (PTAB Oct. 14, 2014). The Board
`
`frequently uses § 325(d) as the basis to not institute petitions that make similar arguments
`
`or rely on the same prior art. See, e.g., Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487,
`
`Paper 8 at 6 (PTAB Sept. 11, 2014) (Informative Decision) (denying request to institute
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`petition under § 325(d) because it was nearly identical to a previously filed petition,
`
`where the petitioner argued that the new petition corrected a defect in the original); Prism
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`Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 at 13 (PTAB
`
`July 8, 2014) (Informative Decision) (denying institution of a petition because “[t]he
`
`same prior art and substantially the same arguments were presented to the Office
`
`previously” during prosecution of the application); Unilever, IPR2014-00506, Paper 17 at
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`6 (Informative Decision) (declining to institute a petition on claims that had
`
`already been denied review in an earlier petition because the Board “has broad
`
`discretion to deny a petition that raises substantially the same prior art or
`
`arguments previously presented to the Office”); Medtronic, Inc. v. Robert Bosch
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`13
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`Case IPR2015-01045
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`Paper No. 7
`U.S. Patent No. 5,563,883
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`Filed: July 22, 2015
`Healthcare Sys., Inc., IPR2014-00436, Paper 17 at 11-12 (PTAB June 19, 2014)
`
`(Informative Decision) (declining to institute a petition on a combination of the merits
`
`and § 325(d) because it presented the same prior art reference “as disclosing the same
`
`claim limitations with substantially the same support and arguments” as was
`
`presented in the earlier petition and “[n]othing in the Petition accounts for this
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`substantial overlap or persuades us that we should not exercise our discretion under
`
`section 325(d)”).
`
`Not only does the Board often use § 325(d) to eliminate duplicative patents, but
`
`Petitioner, as a habitual filer of copy-cat petitions, frequently has had its inter partes
`
`review petitions struck down on this basis. See, e.g., Unified Patents, Inc. v.
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`PersonalWeb Techs., LLC, IPR2014-0