Trials@uspto.gov
`571-272-7822
`
`
`Paper 9
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTA NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CISCO SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01710
`Patent 7,224,668 B1
`____________
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`571-272-7822
`
`
`Paper 9
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTA NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CISCO SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01710
`Patent 7,224,668 B1
`____________
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`IPR2015-01710
`Patent 7,224,668 B1
`
`INTRODUCTION
`Petitioner, Arista Networks, Inc., filed a Request for Rehearing (Paper
`8, “Req. Reh’g”) of the Decision Denying Institution of Inter Partes Review
`(Paper 7, “Dec. on Inst.”) (“Decision”) of claims 1–10, 12, 13, 15–28, 30,
`31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of U.S. Patent No. 7,224,668
`B1 (Ex. 1101, “the ’668 patent”). In the Request for Rehearing, Petitioner
`argues that the Decision Denying Institution overlooked certain matters in
`denying the Petition (“the ’710 Petition”). For the reasons set forth below,
`the Request for Rehearing is denied.
`
`ANALYSIS
`When considering a request for rehearing, we review the Decision for
`an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing
`bears the burden of showing that the Decision should be modified, and “[t]he
`request must specifically identify all matters the party believes [we]
`misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`Petitioner argues that we abused our discretion under
`35 U.S.C. § 325(d) in denying institution in this case. Petitioner argues that
`it “presented significantly different arguments in the ’710 Petition than in the
`’974 Petition1.” Req. Reh’g. 8. Petitioner argues that the petitions use a
`different primary reference for obviousness and that the “overlap” of the
`petitions is minimal. Id. at 4–5. Nonetheless, Petitioner does not address the
`fact that the first petition was denied because we rejected the overlapping
`argument. Thus, the overlap, as small as it allegedly is, was crucial to the
`’974 Petition. Accordingly, we are not persuaded by this argument.
`
`
`1 IPR2015-00974.
`
`2
`
`
`
`IPR2015-01710
`Patent 7,224,668 B1
`
`Petitioner suggests that because of the limited overlap, “[t]he ’710
`Decision’s finding, therefore, effectively bars the use of secondary
`references cited in prior filed petitions in subsequent petitions despite the
`PTAB’s established track record allowing use of such references.” Id. at 6
`(citing several Board decisions). Petitioner fails to acknowledge that the
`Decision is not precedential to other Board decisions, nor are the Board
`decisions cited by Petitioner precedential to this case. Thus, we are not
`persuaded by this argument.
`Petitioner argues that because we criticized the ’974 Petition for
`ambiguity in the ground based on the combination of Amara and Habraken,
`Petitioner should be allowed to present a more specific combination in the
`’710 Petition. Req. Reh’g. 6–8. A petitioner is not entitled to unlimited
`challenges against a patent:
`In determining whether to institute or order a proceeding
`under . . . 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). Petitioner does not address the Decision’s discussion of
`the anticipation ground presented in the ’974 Petition. The Decision found
`that the anticipation ground presented the same arguments regarding
`Habraken as were presented regarding Habraken in the ’974 Petition. Dec.
`9–10.
`
`Petitioner faults the Decision for relying on “inapposite precedent,”
`i.e., Biodelivery Sciences International, Inc. v. RB Pharmaceuticals Limited,
`Case IPR2014-00998, Paper 12 (“Biodelivery Sciences”). Id. at 8. The
`Decision does not cite to Biodelivery Sciences as precedent, nor is
`
`3
`
`
`
`IPR2015-01710
`Patent 7,224,668 B1
`
`Biodelivery Sciences designated by the Board as precedential. Nevertheless,
`Petitioner asserts that, unlike the present case, the allegedly new references
`in Biodelivery Sciences were either discussed in the prior petition or related
`to references discussed in the prior petition. Id.
`We cited Biodelivery Sciences only because, similar to Habraken
`(which was not formally included in the anticipation ground in the ’974
`Petition), the EMEA Study Report in Biodelivery Sciences was not formally
`included in the ground from the previous petition. Dec. 10. Despite that
`fact, the panel in Biodelivery Sciences used the EMEA Study Report as a
`basis for finding the arguments in the two petitions were the same. Id. In
`any event, Biodelivery Sciences was cited only as an example; it is not
`necessary to the finding in the Decision. Thus, we are not persuaded by this
`argument.
`Petitioner further asserts that “the ’710 Decision also relies on the
`Petitioner’s alleged failure to ‘contend specifically that the newly-cited
`references were not known or available to it at the time it filed the ’974
`IPR.’” Req. Reh’g. 9. This is improper, according to Petitioner, because
`“nothing in Section 325(d) or any other applicable rule or statute, requires
`Petitioner to show that the newly-cited Frazier reference was unknown or
`unavailable to it at the time of filing the ’710 Petition.” Id. at 9. Petitioner
`argues that by considering this information, the Board would effectively
`estop a petitioner from using newly-cited references because they “could
`have been raised” before without meeting the final decision requirement of
`35 U.S.C. § 315(e)(1). Id. at 9–10. We recognize the potential issues
`between the provisions of Sections 325(d) and 315(e). As an initial matter,
`Petitioner’s possible awareness of Frazier was not treated as dispositive; it
`
`4
`
`
`
`IPR2015-01710
`Patent 7,224,668 B1
`
`was merely an “additional fact” (Dec. on Inst. 11) that “further guided” (id.)
`our exercise of discretion. Nevertheless, because the exercise of our
`discretion rested upon other grounds, we need not decide whether
`availability of the reference to Petitioner is a proper consideration under
`Section 325(d). To avoid any confusion, we clarify that we do not consider
`whether Petitioner knew of the Frazier reference at the time it filed the ’974
`Petition as a basis for exercising our discretion to deny the ’710 Petition
`under Section 325(d).
`Finally, Petitioner argues that Patent Owner could not be harassed in a
`situation in which the first petition was denied. Req. Reh’g. 14. The Board
`however, has previously denied institution under Section 325(d) in a case
`where the previous petition was denied. Netapp Inc. v. Crossroads Systems,
`Inc., IPR2015-00776, slip op. at 5 (PTAB Sept. 8, 2015) (Paper 12).
`Additionally, harassment of Patent Owner is not the only basis for denying
`institution under 325(d). Our discretion under § 325(d) is guided by a
`balancing of the interests of the parties, the public, and the Board. See id.;
`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP, Case IPR2015-00114,
`slip op. at 6 (PTAB Jan. 28, 2015) (Paper 14) (“[I]t is more efficient for the
`parties and the Board to address a matter once rather than twice.”). Thus, in
`construing our authority to institute inter partes review under 37 C.F.R.
`§ 42.108, we are mindful of the guidance provided in § 42.1(b): “[37 C.F.R.
`§ 42] shall be construed to secure the just, speedy, and inexpensive
`resolution of every proceeding.” Id.; see also ZTE Corp. v. ContentGuard
`Holdings, Inc., Case IPR2013-00454, slip op. at 5-6 (PTAB Sept. 25, 2013)
`(Paper 12) (“The Board is concerned about encouraging, unnecessarily, the
`
`5
`
`
`
`IPR2015-01710
`Patent 7,224,668 B1
`
`filing of petitions which are partially inadequate.”). Thus, we are not
`persuaded by this argument.
`
`CONCLUSION
`The Request for Rehearing does not demonstrate that we
`misapprehended or overlooked any matters raised in the Petition when we
`exercised our discretion and declined to institute review.
`35 U.S.C. §§ 314(a), 325(d).
`
`ORDER
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Request for Rehearing is denied.
`
`
`
`PETITIONER:
`Walter K. Renner
`Kevin E. Greene
`David J. Goren
`FISH & RICHARDSON P.C.
`IPR40963-0006IP2@fr.com
`axf@fr.com
`
`PATENT OWNER:
`Lori A. Gordon
`Robert G. Sterne
`Daniel S. Block
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`dblock-PTAB@skgf.com
`
`
`6
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