`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`ARISTA NETWORKS, INC.
`Petitioner
`
`v.
`
`CISCO SYSTEMS, INC.
`Patent Owner
`____________________
`
`Case IPR2015-01710
`Patent 7,224,668
`____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`Table of Contents
`
`Introduction. ..................................................................................................... 1
`
`The ’668 Patent presents a novel internetworking device that provides
`improved security and Quality of Service (QoS). ........................................... 2
`
`A. Denial of Service (DoS) attacks has been a significant problem for
`networks. ............................................................................................... 2
`
`B.
`
`C.
`
`Existing approaches to address DoS attacks had serious limitations. ... 3
`
`The novel solution provided by the ’668 patent.................................... 4
`
`III. The Board should exercise its discretion and deny institution
`under § 325(d) . ................................................................................................ 8
`
`A.
`
`B.
`
`C.
`
`The Board correctly rejected Petitioner’s first challenge to the ’668
`patent. ..................................................................................................10
`
`The present petition presents substantially the same arguments and
`prior art as the original petition. ..........................................................12
`
`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
`
`IV. Claim Construction. .......................................................................................16
`
`A.
`
`The Board should reject Petitioner’s means-plus-function analysis. ..17
`
`1.
`
`2.
`
`3.
`
`“means for configuring a plurality of physical network interface
`ports” (claim 37). ......................................................................18
`
`“means for processing packets originating at a plurality of
`physical ports” (claim 38). ........................................................19
`
`“means for passing packets through the control plane port,
`rather than directly from the physical ports to individual control
`plane processes” (claim 38). .....................................................20
`
`
`- i -
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`4.
`
`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
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Frazier’s switch element. .....................................................................21
`
`Habraken’s access lists. .......................................................................24
`
`Petitioner fails to show that the combination of Frazier and Habraken
`discloses all of the elements of the challenged independent claims. ..26
`
`1.
`
`2.
`
`3.
`
`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
`
`Petitioner fails to show that the combination of Frazier and
`Habraken discloses “control plane port services.” ...................30
`
`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
`
`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 4, 22, 40, and 58. ......................................................35
`
`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 5, 26, 46, and 62. ......................................................36
`
`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 9, 16, 24, 25, 45, 52, 61, 70 ......................................37
`
`Petitioner fails to show that the combination of Frazier and Habraken
`discloses claims 10, 28, 43, 64. ...........................................................38
`
`Petitioner fails to show that the combination of Frazier and Habraken
`obviates claims 18, 36, 54, and 72. .....................................................39
`
`- ii -
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`A.
`
`The invention of Moberg. ....................................................................41
`
`B. Moberg, as a 102(e) reference, cannot preclude patentability of the
`claims of the ’668 patent. ....................................................................42
`
`C.
`
`The combination of Frazier and Moberg does not disclose distributing
`control plane processes across multiple processors. ...........................43
`
`VII. Conclusion. ....................................................................................................45
`
`- iii -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`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
`
`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
`
`
`
`
`
`
`- iv -
`
`
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`Table of Authorities
`(Concluded)
`
`
`Regulations
`
`37 C.F.R. § 42.104 ................................................................................................... 18
`
`Other Authority
`
`H.R. Rep. No. 112-98 (2011) ..................................................................................... 9
`
`
`
`
`
`
`
`
`
`
`
`
`- v -
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`Exhibit List
`
`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
`
`- vi -
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`
`Introduction.
`The Board should reject Petitioner’s latest request for Inter Partes Review
`
`under 35 U.S.C. § 325(d). The Board has already considered and rejected substan-
`
`tially the same challenges to the claims of U.S. Patent No. 7,224,668 in its previous
`
`IPR petition. In fact, Petitioner essentially admits the prior denied first petition was
`
`actually better than the current petition: “to the extent the Board decides to institute
`
`only one of the [two petitions] . . . Arista requests [the first] . . . be instituted.” (Pe-
`
`tition, p. 60.) Petitioner has presented no compelling reason why it should be al-
`
`lowed to file serial requests relying on substantially similar arguments, and Patent
`
`Owner’s preliminary response to the denied first petition should not act as a how-to
`
`guide for Petitioner’s latest attempt.
`
`
`
`But should the Board reach the merits, it should deny the Petition because
`
`Petitioner does not show a reasonable likelihood of prevailing on its two obvious-
`
`ness grounds that the combinations of: (1) Frazier and Habraken; and (2) Frazier,
`
`Habraken, and Moberg render the claims obvious. Petitioner stretches and contorts
`
`these references, in an attempt to read them on the elements, but the references
`
`simply do not disclose all of the elements of the challenged claims. To help explain
`
`these deficiencies, Patent Owner first gives an overview of the ’668 patent in Sec-
`
`tion II. In section IV, Patent Owner provides relevant claim constructions. In Sec-
`
`tion V, after providing a brief overview of Frazier and Habraken, Patent Owner
`
`
`
`
`
`
`- 1 -
`
`
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`explains the numerous elements that both references do not disclose. Finally, in
`
`
`
`section VI, Patent Owner explains why Petitioner has not shown that Moberg is
`
`prior art and, even if it were, Petitioner has not shown that it discloses all of the el-
`
`ements of the challenged claims.
`
`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.
`
`By 2002, private and public data networks, including the Internet, were criti-
`
`cal to the worldwide communications infrastructure. As such, these networks and
`
`their backbone components—routers, switches, firewalls, and web servers—
`
`became a popular target for attackers. One common network attack, denial of ser-
`
`vice (DoS), sought to overwhelm a network to prevent the network from servicing
`
`normal network traffic. A coordinated, widespread DoS attack, over many inter-
`
`networking devices, can have a significant impact on the infrastructure, and “[i]n
`
`the extreme case, . . . result in multiple compromised Internet hosts that can disrupt
`
`the operation of the Internet itself.” (’668 patent1, 1:36-40.) As an example, a pow-
`
`erful attack in 2002 resulted in “seven of the thirteen servers” that managed global
`
`internet traffic failing, which disrupted Internet traffic around the globe. (Id., 1:25-
`
`29.)
`
`1 The ’668 patent is provided as Exhibit 1101.
`
`
`
`- 2 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`DoS attacks exploit the normal traffic processing operations of network rout-
`
`
`
`ing components. For instance, attackers may generate malicious traffic and direct it
`
`to the “control plane” of an internetworking device. (Id., 1:59-63.) The control
`
`plane of such a device “is responsible for higher layer functions of the device, such
`
`as establishing routing tables and entering quality service policies.” (Id., 1:57-59.)
`
`Attackers direct DoS attacks to the control plane of such a device because, if the
`
`control plane fails, the entire device may malfunction or fail. (Id., 1:59-2:3.)
`
`B. Existing approaches to address DoS attacks had serious limitations.
`Techniques developed prior to the ’668 patent to detect, prevent, and miti-
`
`gate DoS attacks had limitations that reduced their effectiveness. For example, one
`
`approach used “Reverse Pass Forwarding” or “Selective Packet Discard,” which
`
`“[s]electively . . . apply filters to packets arriving from specific known mischievous
`
`Internet Protocol (IP) addresses,” or can detect packets having forged addresses.
`
`(’668 patent, 2:24-31.) This approach suffered problems, including that it required
`
`a network administrator to know, in advance, a list of mischievous IP addresses
`
`and, also, that it required application of the filters to every packet received by the
`
`ports of a device.
`
`Another approach focused on identification based on packet type, using an
`
`“access list configured on an input interface to explicitly deny or limit specific
`
`problematic packet types.” (Id., 2:32-34.) This technique negatively impacted de-
`
`
`
`- 3 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`vice performance because the device had to apply additional classes and policies
`
`
`
`for every packet received over every interface, regardless of whether the packet
`
`was destined for the control plane or data plane. (Id., 2:59-65.) Moreover, control-
`
`plane destined packet types were not always easily identified, and policies could
`
`not be written to be efficiently control such packets. (Id., 3:10-14.)
`
`C. The novel solution provided by the ’668 patent.
`Faced with the problem of managing DoS attacks and generally improving
`
`quality of service (QoS), the inventors of the ’668 patent developed a novel inter-
`
`working device. The ’668 patent explains that its networking device “typically
`
`separates its functionality into control plane functions and data plane functions.”
`
`(’668 patent, 1:52-54.) “The data plane is principally responsible for accepting
`
`transit packets at input ports [of the device] and routing or switching them to out-
`
`put ports [of the device].” (Id., 1:54-56.) The data plane includes a plurality of
`
`physical ports that define physical connection points to the network, and also “port
`
`services” that can be applied to packets entering into or exiting from the ports. (Id.,
`
`3:38-41.) The control plane is generally “responsible for higher layer functions of
`
`the device, such as establishing routing tables and entering quality service poli-
`
`cies.” (Id., 1:57-59.) The ’668 patent protects the control plane from threats such as
`
`DoS attacks by providing technology that includes a “single entity” for accessing
`
`the control plane––referred to in the patent as a “control plane port entity”––
`
`
`
`- 4 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`together with a set of “control plane port services” that may be applied to packets
`
`
`
`destined for the control plane in a way that is independent of the physical ports and
`
`port services from which the packets are received. (Id., 3:48-54.)
`
`The ’668 patent describes two exemplary techniques for providing control
`
`plane port services––“aggregate” control plane port services and “distributed” con-
`
`trol plane port services. Figure 1 (reproduced below) illustrates an exemplary in-
`
`terworking device that uses “aggregate” control plane port services. In this embod-
`
`iment, packets are delivered from the physical ports of the device to the central
`
`switch engine 130. The central switch engine then applies the normal input port
`
`services rules and QoS processing to the packet. (Id., 6:67-7:2.) The normal input
`
`port services are applied to all packets received by the device. For example, an
`
`administrator may have general rules, such as access control lists, that should be
`
`applied to each packet received by the device, regardless of whether the packets are
`
`destined for the control plane or data plane.
`
`After the normal port services are applied, for example, the central switch
`
`engine 130 determines whether the packet is destined for the control plane or the
`
`data plane (in which case it is determined to be a “transit packet”). (’668 patent,
`
`7:3-11.) If the central switch engine 130 determines that the packet is destined for
`
`the control plane, it is routed through the “control plane port entity,” and thereafter
`
`“aggregate control plane port services” are applied to the packet. (Id., 7:11-13.) In
`
`
`
`- 5 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`the “aggregate” control plane services embodiment, control plane services can be
`
`
`
`applied to control plane packets “received from any port on the device.” (Id., 6:45-
`
`50.)
`
`
`
`
`
`Figure 2 of the ’668 patent illustrates an exemplary internetworking device
`
`that uses “distributed” control plane port services. This embodiment may use both
`
`a central switch engine 130 and a distributed switch engine 131, and when a packet
`
`is received, port services are first applied to packets received by the physical ports
`
`by the “distributed switch engine.” (Id., 8:6-8.) Subsequently, if the “distributed
`
`switch engine” determines that the packet is a control plane packet, the “distributed
`
`switch engine” applies “distributed” control plane port services. (’668 patent, 8:13-
`
`16.) In this embodiment, the “distributed control plane port services” are applied
`
`
`
`- 6 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`only to control plane packets received at ports with which the distributed control
`
`
`
`plane port services are associated. (Id., 6:49-54.) Any packet not dropped by the
`
`“distributed control plane port services” is delivered to the central switch engine,
`
`where “aggregate control plane port services,” if they are configured, can also be
`
`applied by the central switch engine to control plane packets received from any
`
`port on the device. (Id., 8:16-19.) Eventually, if the packet is not dropped by the
`
`“aggregate control plane services” (assuming they are configured), then it is deliv-
`
`ered to the control plane. (Id., 8:20-24.)
`
`
`
`In exemplary embodiments using “aggregate” or “distributed” control port
`
`services, the internetworking device of the ’668 patent, which separately handles
`
`control plane traffic, addresses DoS attacks and improves QoS. This novel ap-
`
`proach of the ’668 patent avoids the limitations of the prior approaches described
`
`
`
`- 7 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`in Section II.B above, in which, for example, control-plane-specific rules apply to
`
`
`
`all traffic received on any port of the device regardless of whether the traffic is des-
`
`tined for the control plane. And, because the ’668 patent explains that input port
`
`services apply to all traffic, the ’668 patent provides the flexibility needed to allow
`
`normal input port services to be applied to all traffic received on any port of the
`
`device, while allowing control-plane-specific policies to be independently applied
`
`solely to traffic intended for the control plane. Because normal input port services
`
`are first applied to all packets received on any port of the device, and then control-
`
`plane-specific policies are applied only to packets destined for the control plane,
`
`“transit packet throughput performance is minimally affected because control plane
`
`port services are applied if and only if a packet is first determined to have a control
`
`plane destination.” (’668 patent, 9:6-9.)
`
`III. The Board should exercise its discretion and deny institution under
`§ 325(d).
`
`Serial challenges to the same patent by the same challenger––or as part of a
`
`coordinated defense strategy, as is the case here, are disfavored because such chal-
`
`lenges “risk[] harassment of patent owners and frustration of Congress’ intent in
`
`enacting the Leahy-Smith America Invents Act.” Butamax Adv. Biofuels v. Gevo,
`
`IPR2014-00581, Decision Denying Institution at p. 13 (Paper 8, Oct. 14, 2014).
`
`The legislative history of the AIA stressed that IPR and CBM proceedings “are not
`
`to be used as tools for harassment . . . through repeated litigation and administra-
`
`
`
`- 8 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`tive attacks on the validity of a patent. Doing so would frustrate the purpose of the
`
`
`
`section as providing quick and cost effective alternatives to litigation.” H.R. Rep.
`
`No. 112-98, pt.1, at 48 (2011). To guard against these tactics, Congress gave the
`
`Board discretion to “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).
`
`The Board should exercise its discretion under § 325(d) to deny institution
`
`of the present proceeding. The Board considered and rejected numerous challenges
`
`to the claims based on Petitioner’s first packet forwarding reference, Amara, alone
`
`or in combinations with Habraken and Moberg. Here, Petitioner, merely repackag-
`
`es the arguments already rejected by the Board, replacing Amara with a substan-
`
`tially similar packet forwarding reference—Frazier. Petitioner’s contention that
`
`this simple substitution created a different argument is incorrect. The combinations
`
`of Frazier and Habraken; and Frazier, Habraken, and Moberg, are substantially the
`
`same as the combinations of Amara and Habraken; and Amara, Habraken, and
`
`Moberg presented in the original unsuccessful petition. “[S]ubstantial similarity of
`
`argument, standing alone, is sufficient for a denial under § 325(d).” Conopco dba
`
`Unilever v. Proctor and Gamble Co., IPR2014-00628, Decision Denying Institu-
`
`tion at p. 10 (Paper 21, Oct. 20, 2014).
`
`
`
`- 9 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`Further, Petitioner presents no compelling reason why it should be allowed
`
`
`
`to file serial requests, particularly in this case, where Petitioner used Patent Own-
`
`er’s preliminary response as a road-map to present the same argument again. See
`
`PNC Bank, N.A. v. Secure Axcess, LLC, CBM2015-00039, Decision Denying Insti-
`
`tution at p. 17 (Paper 9, July 10, 2015) (Patent Owner preliminary response
`
`“should not act as an entry ticket [or] a how-to guide” for Petitioner, quoting ZTE
`
`v. Content Guard, IPR2013-00454 (Paper 12, Sept. 25, 2013) (informative)). In-
`
`deed, instead of presenting a compelling reason, Petitioner acknowledges that the
`
`present petition is weaker than the original urging the Board “to the extent the
`
`Board decides to institute only one of the Amara or Frazier/Habraken grounds be-
`
`cause of redundancy, Arista requests that the Amara grounds be instituted.” (Peti-
`
`tion, p. 60.)
`
`A. The Board correctly rejected Petitioner’s first challenge to the ’668 pa-
`tent.
`
`In October, the Board denied Petitioner’s first petition against the ’668 pa-
`
`tent. In its decision, the Board found that Amara, which Petitioner used in all of its
`
`proposed grounds of unpatentability, did not disclose “whether the interface ports
`
`are an aspect of the device being controlled or configured by the internal applica-
`
`tions.” (Inst. Dec., p. 9.) Specifically, Petitioner argued that Amara disclosed that
`
`its “internal applications” were the claimed “control plane processes,” and that
`
`these “internal applications” configured “a plurality of physical network interface
`
`
`
`- 10 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`ports.” The Board, however, correctly found that Amara, at most, discloses that its
`
`
`
`internal applications “control or configure device 100,” and Amara does not ex-
`
`plicitly or inherently disclose that such “internal applications” configure “network
`
`interface ports.” (Inst. Dec., p. 12.) Petitioner argued a similar line of reasoning for
`
`the claim element “port services . . . as defined by control plane configurations,”
`
`and for the same reasons described above—namely that Amara does not describe
`
`any configuring by its internal applications—the Board found that the Petitioner
`
`did not meet its burden of establishing that Amara anticipates the challenged
`
`claims of the ’668 patent.
`
`Petitioner was aware of Amara’s flaws regarding its “internal applications”
`
`and the claimed “configuring.” In the final two pages of the original petition, Peti-
`
`tioner raised four additional grounds, stating that any of the previous grounds in
`
`combination with Habraken would also render their respective claims obvious. As
`
`Petitioner put it, the reason it included these grounds was if “one were to conclude
`
`that” Amara did not describe: “(1) the internal applications configuring the inter-
`
`face ports 202-06, (2) the internal applications configuring policies applied by the
`
`policy engines 224-28, and (3) the addresses of the device being specified in the
`
`configuration of the device 200.” (Petition, p. 58.) In other words, Petitioner rec-
`
`ognized the risk the Board might conclude that Amara did not disclose the claimed
`
`“configuring,” and thus attempted to mitigate that risk by combining Amara with
`
`
`
`- 11 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`Habraken for the claimed “configuring.” The Board, however, was not persuaded.
`
`
`
`As the Board explained, “The Petition . . . blanket cites 46 pages of Habraken to
`
`support its contention that Habraken teaches [the configuration] features.” (Inst.
`
`Dec., p. 17.) Thus, the Board did not institute on the Habraken ground because Pe-
`
`titioner’s two-page treatment of the Habraken ground did “not did not identify with
`
`sufficient particularity the ground on which the challenge to the independent
`
`claims is based.” (Inst. Dec., p. 15.)
`
`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
`
`exact tactic that Petitioner attempts here—simply replacing deficient prior art with
`
`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-
`
`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-
`
`
`
`- 12 -
`
`
`
`
`
`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
`
`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-
`
`lever tried again, simply replacing the defective prior art with the Cothran and
`
`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
`
`elements. Conopco at 8-10.
`
`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-
`
`not overcome the overwhelming evidence that the current petition is nothing more
`
`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
`
`
`
`- 13 -
`
`
`
`
`
`IPR2015-01710
`U.S. Patent No. 7,224,668
`interface ports.” Petitioner admits these deficiencies of Frazier by proposing in the
`
`
`
`present petition modifications to Frazier to allow for “software processes running
`
`on CPU 161 configure the ports coupled to network interface 205.” (Petition,
`
`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
`
`
`
`- 14 -
`
`
`
`
`
`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,
`
`
`
`- 15 -
`
`
`
`
`
`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