UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARISTA NETWORKS, INC.
`Petitioner
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`v.
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`CISCO SYSTEMS, INC.
`Patent Owner
`____________________
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`Case IPR2015-01710
`Patent 7,224,668
`____________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`II.
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`IPR2015-01710
`U.S. Patent No. 7,224,668
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`Table of Contents
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`Introduction. ..................................................................................................... 1
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`The ’668 Patent presents a novel internetworking device that provides
`improved security and Quality of Service (QoS). ........................................... 2
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`A. Denial of Service (DoS) attacks has been a significant problem for
`networks. ............................................................................................... 2
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`B.
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`C.
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`Existing approaches to address DoS attacks had serious limitations. ... 3
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`The novel solution provided by the ’668 patent.................................... 4
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`III. The Board should exercise its discretion and deny institution
`under § 325(d) . ................................................................................................ 8
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`A.
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`B.
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`C.
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`The Board correctly rejected Petitioner’s first challenge to the ’668
`patent. ..................................................................................................10
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`The present petition presents substantially the same arguments and
`prior art as the original petition. ..........................................................12
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`The Board should find the second petition improperly uses as a
`roadmap the Patent Owner’s preliminary response, which raised
`significant deficiencies in the original petition as to these claims. .....14
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`IV. Claim Construction. .......................................................................................16
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`A.
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`The Board should reject Petitioner’s means-plus-function analysis. ..17
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`1.
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`2.
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`3.
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`“means for configuring a plurality of physical network interface
`ports” (claim 37). ......................................................................18
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`“means for processing packets originating at a plurality of
`physical ports” (claim 38). ........................................................19
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`“means for passing packets through the control plane port,
`rather than directly from the physical ports to individual control
`plane processes” (claim 38). .....................................................20
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`“means for configuring the control plane port services as an
`entity separate from physical port services” (claim 54). ..........20
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`4.
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`V. Ground 1: Petitioner fails to show that Claims 1-6, 8, 9, 10, 12, 13, 15-22,
`24-27, 28, 30, 31, 33-40, 42, 43, 45-47, 48, 49, 51-58, 60-63, 64, 66, 67, 69-
`72 are obvious over Frazier in view of Habraken. ........................................21
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`Frazier’s switch element. .....................................................................21
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`Habraken’s access lists. .......................................................................24
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`Petitioner fails to show that the combination of Frazier and Habraken
`discloses all of the elements of the challenged independent claims. ..26
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`1.
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`2.
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`3.
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`Petitioner fails to show that the combination of Frazier and
`Habraken discloses “packets . . . destined to the collection of
`control plane processes” (elements 1.4/1.5, 19.4/19.5,
`37.4/37.5, and 55.4/55.5). .........................................................26
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`Petitioner fails to show that the combination of Frazier and
`Habraken discloses “control plane port services.” ...................30
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`Petitioner fails to provide a prima facie case of obviousness for
`the combination of Frazier and Habraken to “[execute] port
`services, [] on packets entering and exiting the physical network
`interface ports” (elements 1.2/19.2/37.2/55.2). ........................33
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`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 4, 22, 40, and 58. ......................................................35
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`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 5, 26, 46, and 62. ......................................................36
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`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 9, 16, 24, 25, 45, 52, 61, 70 ......................................37
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`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 10, 28, 43, 64. ...........................................................38
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`Petitioner fails to show that the combination of Frazier and Habraken
`obviates claims 18, 36, 54, and 72. .....................................................39
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`VI. Ground 2: Petitioner fails to show that claims 7, 23, 41, and 59 are obvious
`in view of Frazier and Moberg under 35 U.S.C. § 103. ................................41
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`
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`A.
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`The invention of Moberg. ....................................................................41
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`B. Moberg, as a 102(e) reference, cannot preclude patentability of the
`claims of the ’668 patent. ....................................................................42
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`C.
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`The combination of Frazier and Moberg does not disclose distributing
`control plane processes across multiple processors. ...........................43
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`VII. Conclusion. ....................................................................................................45
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`IPR2015-01710
`U.S. Patent No. 7,224,668
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`Table of Authorities
`
`
`Cases
`
`Butamax Adv. Biofuels v. Gevo,
`IPR2014-00581, Decision Denying Institution
`(Paper 21, Oct. 14, 2014) .............................................................................. 8, 12, 15
`
`Conopco dba Unilever v. Proctor and Gamble Co.,
`IPR2014-00628, Decision Denying Institution
`(Paper 21, Oct. 20, 2014) ............................................................................... 9, 13, 15
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .................................................................................. 33
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) .......................................................................................... 33, 34
`
`Nora Lighting v. Juno Mfg,
`IPR2015-00601, Decision Denying Institution (Paper 13, Aug. 12, 2015) ...... 12, 13
`
`PNC Bank, N.A. v. Secure Axcess, LLC,
`CBM2015-00039, Decision Denying Institution
`(Paper 9, July 10, 2015) ..................................................................................... 10, 15
`
`Vibrant Media, Inc. v. Gen. Elec. Co.,
`IPR 2013-00172, Institution Decision (Paper 9, July 28, 2014) .............................. 18
`
`ZTE v. Content Guard,
`IPR2013-00454 (Paper 12, Sept. 25, 2013) ....................................................... 10, 15
`
`Statutes
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`35 U.S.C. § 102 ............................................................................................ 41, 42, 43
`35 U.S.C. § 103 ............................................................................................ 41, 42, 43
`35 U.S.C. § 325(d) ................................................................................. 1, 8, 9, 12, 14
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`Table of Authorities
`(Concluded)
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`
`Regulations
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`37 C.F.R. § 42.104 ................................................................................................... 18
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`Other Authority
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`H.R. Rep. No. 112-98 (2011) ..................................................................................... 9
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`IPR2015-01710
`U.S. Patent No. 7,224,668
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`Exhibit List
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`Exhibit No. Description
`2001
`Assignment History of U.S. Patent No. 7,224,668
`2002
`Assignment History of U.S. Patent No. 6,460,146
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`I.
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`IPR2015-01710
`U.S. Patent No. 7,224,668
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`Introduction.
`The Board should reject Petitioner’s latest request for Inter Partes Review
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`under 35 U.S.C. § 325(d). The Board has already considered and rejected substan-
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`tially the same challenges to the claims of U.S. Patent No. 7,224,668 in its previous
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`IPR petition. In fact, Petitioner essentially admits the prior denied first petition was
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`actually better than the current petition: “to the extent the Board decides to institute
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`only one of the [two petitions] . . . Arista requests [the first] . . . be instituted.” (Pe-
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`tition, p. 60.) Petitioner has presented no compelling reason why it should be al-
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`lowed to file serial requests relying on substantially similar arguments, and Patent
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`Owner’s preliminary response to the denied first petition should not act as a how-to
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`guide for Petitioner’s latest attempt.
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`But should the Board reach the merits, it should deny the Petition because
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`Petitioner does not show a reasonable likelihood of prevailing on its two obvious-
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`ness grounds that the combinations of: (1) Frazier and Habraken; and (2) Frazier,
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`Habraken, and Moberg render the claims obvious. Petitioner stretches and contorts
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`these references, in an attempt to read them on the elements, but the references
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`simply do not disclose all of the elements of the challenged claims. To help explain
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`these deficiencies, Patent Owner first gives an overview of the ’668 patent in Sec-
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`tion II. In section IV, Patent Owner provides relevant claim constructions. In Sec-
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`tion V, after providing a brief overview of Frazier and Habraken, Patent Owner
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`explains the numerous elements that both references do not disclose. Finally, in
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`section VI, Patent Owner explains why Petitioner has not shown that Moberg is
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`prior art and, even if it were, Petitioner has not shown that it discloses all of the el-
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`ements of the challenged claims.
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`II. The ’668 Patent presents a novel internetworking device that provides
`improved security and Quality of Service (QoS).
`A. Denial of Service (DoS) attacks has been a significant problem for
`networks.
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`By 2002, private and public data networks, including the Internet, were criti-
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`cal to the worldwide communications infrastructure. As such, these networks and
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`their backbone components—routers, switches, firewalls, and web servers—
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`became a popular target for attackers. One common network attack, denial of ser-
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`vice (DoS), sought to overwhelm a network to prevent the network from servicing
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`normal network traffic. A coordinated, widespread DoS attack, over many inter-
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`networking devices, can have a significant impact on the infrastructure, and “[i]n
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`the extreme case, . . . result in multiple compromised Internet hosts that can disrupt
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`the operation of the Internet itself.” (’668 patent1, 1:36-40.) As an example, a pow-
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`erful attack in 2002 resulted in “seven of the thirteen servers” that managed global
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`internet traffic failing, which disrupted Internet traffic around the globe. (Id., 1:25-
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`29.)
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`1 The ’668 patent is provided as Exhibit 1101.
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`U.S. Patent No. 7,224,668
`DoS attacks exploit the normal traffic processing operations of network rout-
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`ing components. For instance, attackers may generate malicious traffic and direct it
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`to the “control plane” of an internetworking device. (Id., 1:59-63.) The control
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`plane of such a device “is responsible for higher layer functions of the device, such
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`as establishing routing tables and entering quality service policies.” (Id., 1:57-59.)
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`Attackers direct DoS attacks to the control plane of such a device because, if the
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`control plane fails, the entire device may malfunction or fail. (Id., 1:59-2:3.)
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`B. Existing approaches to address DoS attacks had serious limitations.
`Techniques developed prior to the ’668 patent to detect, prevent, and miti-
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`gate DoS attacks had limitations that reduced their effectiveness. For example, one
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`approach used “Reverse Pass Forwarding” or “Selective Packet Discard,” which
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`“[s]electively . . . apply filters to packets arriving from specific known mischievous
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`Internet Protocol (IP) addresses,” or can detect packets having forged addresses.
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`(’668 patent, 2:24-31.) This approach suffered problems, including that it required
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`a network administrator to know, in advance, a list of mischievous IP addresses
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`and, also, that it required application of the filters to every packet received by the
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`ports of a device.
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`Another approach focused on identification based on packet type, using an
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`“access list configured on an input interface to explicitly deny or limit specific
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`problematic packet types.” (Id., 2:32-34.) This technique negatively impacted de-
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`vice performance because the device had to apply additional classes and policies
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`for every packet received over every interface, regardless of whether the packet
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`was destined for the control plane or data plane. (Id., 2:59-65.) Moreover, control-
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`plane destined packet types were not always easily identified, and policies could
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`not be written to be efficiently control such packets. (Id., 3:10-14.)
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`C. The novel solution provided by the ’668 patent.
`Faced with the problem of managing DoS attacks and generally improving
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`quality of service (QoS), the inventors of the ’668 patent developed a novel inter-
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`working device. The ’668 patent explains that its networking device “typically
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`separates its functionality into control plane functions and data plane functions.”
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`(’668 patent, 1:52-54.) “The data plane is principally responsible for accepting
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`transit packets at input ports [of the device] and routing or switching them to out-
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`put ports [of the device].” (Id., 1:54-56.) The data plane includes a plurality of
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`physical ports that define physical connection points to the network, and also “port
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`services” that can be applied to packets entering into or exiting from the ports. (Id.,
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`3:38-41.) The control plane is generally “responsible for higher layer functions of
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`the device, such as establishing routing tables and entering quality service poli-
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`cies.” (Id., 1:57-59.) The ’668 patent protects the control plane from threats such as
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`DoS attacks by providing technology that includes a “single entity” for accessing
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`the control plane––referred to in the patent as a “control plane port entity”––
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`U.S. Patent No. 7,224,668
`together with a set of “control plane port services” that may be applied to packets
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`destined for the control plane in a way that is independent of the physical ports and
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`port services from which the packets are received. (Id., 3:48-54.)
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`The ’668 patent describes two exemplary techniques for providing control
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`plane port services––“aggregate” control plane port services and “distributed” con-
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`trol plane port services. Figure 1 (reproduced below) illustrates an exemplary in-
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`terworking device that uses “aggregate” control plane port services. In this embod-
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`iment, packets are delivered from the physical ports of the device to the central
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`switch engine 130. The central switch engine then applies the normal input port
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`services rules and QoS processing to the packet. (Id., 6:67-7:2.) The normal input
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`port services are applied to all packets received by the device. For example, an
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`administrator may have general rules, such as access control lists, that should be
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`applied to each packet received by the device, regardless of whether the packets are
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`destined for the control plane or data plane.
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`After the normal port services are applied, for example, the central switch
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`engine 130 determines whether the packet is destined for the control plane or the
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`data plane (in which case it is determined to be a “transit packet”). (’668 patent,
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`7:3-11.) If the central switch engine 130 determines that the packet is destined for
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`the control plane, it is routed through the “control plane port entity,” and thereafter
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`“aggregate control plane port services” are applied to the packet. (Id., 7:11-13.) In
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`U.S. Patent No. 7,224,668
`the “aggregate” control plane services embodiment, control plane services can be
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`applied to control plane packets “received from any port on the device.” (Id., 6:45-
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`50.)
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`Figure 2 of the ’668 patent illustrates an exemplary internetworking device
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`that uses “distributed” control plane port services. This embodiment may use both
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`a central switch engine 130 and a distributed switch engine 131, and when a packet
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`is received, port services are first applied to packets received by the physical ports
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`by the “distributed switch engine.” (Id., 8:6-8.) Subsequently, if the “distributed
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`switch engine” determines that the packet is a control plane packet, the “distributed
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`switch engine” applies “distributed” control plane port services. (’668 patent, 8:13-
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`16.) In this embodiment, the “distributed control plane port services” are applied
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`U.S. Patent No. 7,224,668
`only to control plane packets received at ports with which the distributed control
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`plane port services are associated. (Id., 6:49-54.) Any packet not dropped by the
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`“distributed control plane port services” is delivered to the central switch engine,
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`where “aggregate control plane port services,” if they are configured, can also be
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`applied by the central switch engine to control plane packets received from any
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`port on the device. (Id., 8:16-19.) Eventually, if the packet is not dropped by the
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`“aggregate control plane services” (assuming they are configured), then it is deliv-
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`ered to the control plane. (Id., 8:20-24.)
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`In exemplary embodiments using “aggregate” or “distributed” control port
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`services, the internetworking device of the ’668 patent, which separately handles
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`control plane traffic, addresses DoS attacks and improves QoS. This novel ap-
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`proach of the ’668 patent avoids the limitations of the prior approaches described
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`in Section II.B above, in which, for example, control-plane-specific rules apply to
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`all traffic received on any port of the device regardless of whether the traffic is des-
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`tined for the control plane. And, because the ’668 patent explains that input port
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`services apply to all traffic, the ’668 patent provides the flexibility needed to allow
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`normal input port services to be applied to all traffic received on any port of the
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`device, while allowing control-plane-specific policies to be independently applied
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`solely to traffic intended for the control plane. Because normal input port services
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`are first applied to all packets received on any port of the device, and then control-
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`plane-specific policies are applied only to packets destined for the control plane,
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`“transit packet throughput performance is minimally affected because control plane
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`port services are applied if and only if a packet is first determined to have a control
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`plane destination.” (’668 patent, 9:6-9.)
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`III. The Board should exercise its discretion and deny institution under
`§ 325(d).
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`Serial challenges to the same patent by the same challenger––or as part of a
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`coordinated defense strategy, as is the case here, are disfavored because such chal-
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`lenges “risk[] harassment of patent owners and frustration of Congress’ intent in
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`enacting the Leahy-Smith America Invents Act.” Butamax Adv. Biofuels v. Gevo,
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`IPR2014-00581, Decision Denying Institution at p. 13 (Paper 8, Oct. 14, 2014).
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`The legislative history of the AIA stressed that IPR and CBM proceedings “are not
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`to be used as tools for harassment . . . through repeated litigation and administra-
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`U.S. Patent No. 7,224,668
`tive attacks on the validity of a patent. Doing so would frustrate the purpose of the
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`section as providing quick and cost effective alternatives to litigation.” H.R. Rep.
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`No. 112-98, pt.1, at 48 (2011). To guard against these tactics, Congress gave the
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`Board discretion to “reject the petition or request because, the same or substantially
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`the same prior art or arguments previously were presented to the Office.” 35
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`U.S.C. § 325(d).
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`The Board should exercise its discretion under § 325(d) to deny institution
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`of the present proceeding. The Board considered and rejected numerous challenges
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`to the claims based on Petitioner’s first packet forwarding reference, Amara, alone
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`or in combinations with Habraken and Moberg. Here, Petitioner, merely repackag-
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`es the arguments already rejected by the Board, replacing Amara with a substan-
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`tially similar packet forwarding reference—Frazier. Petitioner’s contention that
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`this simple substitution created a different argument is incorrect. The combinations
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`of Frazier and Habraken; and Frazier, Habraken, and Moberg, are substantially the
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`same as the combinations of Amara and Habraken; and Amara, Habraken, and
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`Moberg presented in the original unsuccessful petition. “[S]ubstantial similarity of
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`argument, standing alone, is sufficient for a denial under § 325(d).” Conopco dba
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`Unilever v. Proctor and Gamble Co., IPR2014-00628, Decision Denying Institu-
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`tion at p. 10 (Paper 21, Oct. 20, 2014).
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`Further, Petitioner presents no compelling reason why it should be allowed
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`to file serial requests, particularly in this case, where Petitioner used Patent Own-
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`er’s preliminary response as a road-map to present the same argument again. See
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`PNC Bank, N.A. v. Secure Axcess, LLC, CBM2015-00039, Decision Denying Insti-
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`tution at p. 17 (Paper 9, July 10, 2015) (Patent Owner preliminary response
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`“should not act as an entry ticket [or] a how-to guide” for Petitioner, quoting ZTE
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`v. Content Guard, IPR2013-00454 (Paper 12, Sept. 25, 2013) (informative)). In-
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`deed, instead of presenting a compelling reason, Petitioner acknowledges that the
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`present petition is weaker than the original urging the Board “to the extent the
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`Board decides to institute only one of the Amara or Frazier/Habraken grounds be-
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`cause of redundancy, Arista requests that the Amara grounds be instituted.” (Peti-
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`tion, p. 60.)
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`A. The Board correctly rejected Petitioner’s first challenge to the ’668 pa-
`tent.
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`In October, the Board denied Petitioner’s first petition against the ’668 pa-
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`tent. In its decision, the Board found that Amara, which Petitioner used in all of its
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`proposed grounds of unpatentability, did not disclose “whether the interface ports
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`are an aspect of the device being controlled or configured by the internal applica-
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`tions.” (Inst. Dec., p. 9.) Specifically, Petitioner argued that Amara disclosed that
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`its “internal applications” were the claimed “control plane processes,” and that
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`these “internal applications” configured “a plurality of physical network interface
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`ports.” The Board, however, correctly found that Amara, at most, discloses that its
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`internal applications “control or configure device 100,” and Amara does not ex-
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`plicitly or inherently disclose that such “internal applications” configure “network
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`interface ports.” (Inst. Dec., p. 12.) Petitioner argued a similar line of reasoning for
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`the claim element “port services . . . as defined by control plane configurations,”
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`and for the same reasons described above—namely that Amara does not describe
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`any configuring by its internal applications—the Board found that the Petitioner
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`did not meet its burden of establishing that Amara anticipates the challenged
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`claims of the ’668 patent.
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`Petitioner was aware of Amara’s flaws regarding its “internal applications”
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`and the claimed “configuring.” In the final two pages of the original petition, Peti-
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`tioner raised four additional grounds, stating that any of the previous grounds in
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`combination with Habraken would also render their respective claims obvious. As
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`Petitioner put it, the reason it included these grounds was if “one were to conclude
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`that” Amara did not describe: “(1) the internal applications configuring the inter-
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`face ports 202-06, (2) the internal applications configuring policies applied by the
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`policy engines 224-28, and (3) the addresses of the device being specified in the
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`configuration of the device 200.” (Petition, p. 58.) In other words, Petitioner rec-
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`ognized the risk the Board might conclude that Amara did not disclose the claimed
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`“configuring,” and thus attempted to mitigate that risk by combining Amara with
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`U.S. Patent No. 7,224,668
`Habraken for the claimed “configuring.” The Board, however, was not persuaded.
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`As the Board explained, “The Petition . . . blanket cites 46 pages of Habraken to
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`support its contention that Habraken teaches [the configuration] features.” (Inst.
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`Dec., p. 17.) Thus, the Board did not institute on the Habraken ground because Pe-
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`titioner’s two-page treatment of the Habraken ground did “not did not identify with
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`sufficient particularity the ground on which the challenge to the independent
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`claims is based.” (Inst. Dec., p. 15.)
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`B. The present petition presents substantially the same arguments and pri-
`or art as the original petition.
`
`To create the impression that the present petition contains a new argument,
`
`Petitioner swaps Amara with Frazier, leaving its secondary references (Habraken
`
`and Moberg) untouched. But the technical teachings of Frazier relied upon by Peti-
`
`tioner are not new. Like Amara, Frazier is a packet forwarding reference, which
`
`has the same flaws as Amara. The Board regularly applies § 325(d) to prevent the
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`exact tactic that Petitioner attempts here—simply replacing deficient prior art with
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`new art. For example, the Board in Butamax found that Butamax presented sub-
`
`stantially the same argument when it sought to replace the deficient Overkamp ref-
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`erence with either one of two new references. Butamax at 11-12. And in Nora
`
`Lighting, the Board concluded that the Budnick reference was substantially similar
`
`to the previously considered, and rejected, Gabrius ’339 art because the two refer-
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`- 12 -
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`

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`
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`IPR2015-01710
`U.S. Patent No. 7,224,668
`ences described similar technology. Nora Lighting v. Juno Mfg, IPR2015-00601,
`
`
`
`Decision Denying Institution at pp. 10-12 (Paper 13, Aug. 12, 2015).
`
`The Conopco Board addressed the same circumstances when rejecting Uni-
`
`lever’s attempted do-over of its anticipation arguments with new references that
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`merely presented substantially the same arguments previously denied, as Petitioner
`
`does here. Unilever originally argued that Bowser and Reid anticipated and ren-
`
`dered obvious the challenged claims, and when the Board denied its petition, Uni-
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`lever tried again, simply replacing the defective prior art with the Cothran and
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`Uchiyama references. Conopco at 5-6. Although Unilever cited different refer-
`
`ences, the Board concluded that Unilever presented “substantially the same” argu-
`
`ments that “the prior art identifies, with anticipatory specificity” the same claim
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`elements. Conopco at 8-10.
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`Petitioner’s self-serving statements that it was only after the filing of the first
`
`petition that Petitioner became aware of Frazier and appreciated its disclosure can-
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`not overcome the overwhelming evidence that the current petition is nothing more
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`than a do-over of Petitioner’s original argument. As explained above, the only sub-
`
`stantive difference between the present petition and the earlier-filed petition is that
`
`Petitioner now swaps Amara with Frazier in the Habraken combinations. But, Fra-
`
`zier is similar to Amara, at least in that it does not disclose “control plane process-
`
`es” that can configure “port services,” “control plane port services,” or “network
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`
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`- 13 -
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`

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`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`interface ports.” Petitioner admits these deficiencies of Frazier by proposing in the
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`
`
`present petition modifications to Frazier to allow for “software processes running
`
`on CPU 161 configure the ports coupled to network interface 205.” (Petition,
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`p. 30.) But, as the Board noted in its decision denying institution of the earlier-filed
`
`petition, using Habraken to modify a reference for “configuring interface ports” is
`
`precisely what Petitioner tried, and failed to do in its original petition. (IPR2015-
`
`00974, Decision Denying Institution at p. 16, (Paper 7, Oct. 7, 2015).) The Board
`
`need not allow Petitioner a second chance at essentially the same arguments. Ac-
`
`cordingly, the Board should deny the Petition under § 325(d).
`
`C. The Board should find the second petition improperly uses as a
`roadmap the Patent Owner’s preliminary response, which raised signif-
`icant deficiencies in the original petition as to these claims.
`
`The Board should hold Petitioner to its strategic decisions. In the original pe-
`
`tition, Petitioner focused primarily on its Amara ground and decided to limit its
`
`discussion of the Amara/Habraken and Amara/Habraken/Moberg grounds. In its
`
`preliminary response, Patent Owner demonstrated the fatal flaws in the Amara
`
`ground and also demonstrated the deficiencies in Petitioner’s combination argu-
`
`ments.
`
`A month later after Patent Owner’s preliminary response, Petitioner filed the
`
`present petition attempting to address the deficiencies highlighted by Patent Own-
`
`er. Thus, Petitioner used Patent Owner’s preliminary response as a roadmap to
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`
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`- 14 -
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`

`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`craft the present petition. The Board should reject such behavior because a “peti-
`
`
`
`tioner is not entitled to unlimited challenges against a patent.” PNC Bank at 14.
`
`The Board has regularly held that using a previous decision as a “roadmap” frus-
`
`trates Congress’s intent to provide quick and cost-effective alternative to litigation.
`
`Butamax, at 13. Here, although Petitioner had not yet seen a Board decision, Peti-
`
`tioner had seen Patent Owner’s preliminary response, which demonstrated the fatal
`
`flaws in the original petition. Like a decision from the Board, a patent owner pre-
`
`liminary response “should not act as an entry ticket [or] a how-to guide” for Peti-
`
`tioner to fix flaws in its original petition. PNC Bank v. Secure Axcess, CBM2015-
`
`00039, Decision Denying Institution at p. 17 (Paper 9, Jul. 10, 2015 (quoting ZTE
`
`v. Content Guard, IPR2013-00454 (Paper 12, Sept. 25, 2013) (informative))). Al-
`
`lowing such tactics “would allow petitioners to unveil strategically their best prior
`
`art and arguments in serial petitions,” using patent owner’s preliminary responses
`
`as a roadmap, “until a ground is advanced that results in review—a practice that
`
`would tax Board resources, and force patent owners to defend multiple attacks.”
`
`Conopco, at p. 5.
`
`Petitioner further tries to excuse its failure to assert Frazier with the state-
`
`ment that “it was after the filing of the first petition that Petitioner became aware of
`
`Frazier and appreciated its disclosure, particularly with respect to the CPU port.”
`
`(Petition, p. 60.) Importantly, Petitioner’s carefully worded statement, however,
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`
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`- 15 -
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`

`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`does not say that Petitioner did not know about Frazier prior to the filing of this Pe-
`
`
`
`tition. Instead Petitioner states that it only “appreciated its disclosure” after the fil-
`
`ing of the Petition. In other words, regardless of whether Petitioner “appreciated its
`
`disclosure,” it seems Petitioner was in fact aware of Frazier prior to filing of its
`
`first Petition. But, Petitioner is the one that decided to file its Petition in April of
`
`2015. It could have waited until it “appreciated [the] disclosure” of all of the refer-
`
`ences it felt were relevant to the ’668 patent, but Petitioner did not wait. Petitioner
`
`made this strategic decision and should be held to its consequences.
`
`But, even if Petitioner was truly unaware of Frazier, Petitioner’s carefully
`
`worded statement misses the larger point: it ignores that Petitioner already present-
`
`ed substantially the same art or arguments i