Trials@uspto.gov
`571-272-7822
`
`
`Paper 40
`Entered: February 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTA NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CISCO SYSTEMS, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2016-00308 (Patent 7,162,537 B1)
`Case IPR2016-00309 (Patent 7,224,668 B1)1
`___________
`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`PETER P. CHEN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`A conference call in the above proceeding was held on February 7,
`2017. Counsel for Petitioner and Patent Owner participated in each call with
`Judges Moore, Quinn2, Clements, and Chen. The purpose of the call was to
`discuss three issues brought to the Board’s attention by email: 1) Narrowing
`
`
`1 This order addresses issues in both identified cases. We exercise our
`discretion to issue one order to be filed in each case. The parties are not
`authorized to use this style heading in subsequent papers.
`2 Judge Quinn is paneled on cases related to the two cases at issue.
`
`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`Petitioner’s objections to evidence filed as Paper 22; 2) Petitioner’s
`proposed motion to strike Exhibits 2015–2023, 2027, and 2047 in IPR2016-
`00309; and 3) Patent Owner’s proposed motion to strike Petitioner's Reply
`in IPR2016-00308 and to strike Petitioner's Reply in IPR2016-00309. A
`transcript of the call was recorded and filed in IPR2016-00309 as Exhibit
`1028 (“Tr.”).
`
`Narrowing Petitioner’s Objections
`Petitioner indicated on the call that it has agreed with Patent Owner to
`narrow its objections reflected in IPR2016-00309, Paper 22. Additionally,
`Patent Owner indicated it does not object to Petitioner correcting the filing
`provided the record reflects the narrowed scope of objections. The parties
`requested the Board’s approval in correcting the filing, and guidance as to
`how the Board would like them to reflect the narrowed scope of objections
`in what they file. We authorized Petitioner, by oral order, to file corrected
`objections by February 10, 2017. Subsequent to the call, on February 9,
`2017, Petitioner filed the corrected objections. To avoid any confusion in
`the record, we now expunge Paper 22 filed in IPR2016-00309.
`Additionally, Patent Owner asked for ten business days from the filing
`of the corrected objections to respond and provide supplemental evidence.
`Petitioner initially objected to this request. We indicated that we were
`inclined to grant that request. With that understanding, Petitioner withdrew
`its objection. Thus, Patent Owner shall have ten business days, as provided
`by 37 CFR 42.64(b)(2), from the filing of the corrected objections to
`respond and provide supplemental evidence.
`
`2
`
`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`
`Petitioner’s Proposed Motion to Strike Exhibits 2015–2023,
`2027, and 2047 in IPR2016-00309
`Petitioner indicated on the call that it seeks leave to file a motion to
`strike the claim charts at Exhibits 2015 and 2047 and other exhibits that are
`allegedly cited meaningfully only in those charts (namely, Exs. 2016-2023,
`and 2027) on the grounds that they contain additional argument beyond what
`is contained in the Patent Owner Response and, as such, violate the word
`count prescribed for the Patent Owner Response by 37 C.F.R. § 42.24.
`Petitioner provided examples of the alleged violations of the page count.
`For example, Petitioner stated
`Exhibit 2015 is a claim chart that purports to map the claims of the
`’668 patent to certain Cisco and Arista products in the attempt to
`demonstrate copying. The response itself contains no such
`mapping, instead states only that, quote, Arista’s copying is well-
`documented and evidences a deliberate effort to duplicate the
`claim that's subject matter, close quote; and then cites Exhibit
`2015.
`Tr. 9:12–20. Petitioner cited to similar examples in Exhibit 2047.
`Patent Owner responded that Petitioner’s request is untimely, and also
`moot, because Petitioner addressed Exhibit 2015, but not Exhibit 2047, in its
`Reply to the Patent Owner Response. Additionally, Patent Owner argued
`that the argument regarding copying is in the Patent Owner Response and
`that the claim chart and declaration contained in the exhibits simply
`corroborates that argument.
`Upon consideration of the arguments presented, we authorize
`Petitioner to file, within seven calendar days of the date this order is entered,
`a five-page Motion to Strike Exhibits 2015–2023, 2027, and 2047 in
`IPR2016-00309, not limited to the arguments made during the February 7
`
`
`
`3
`
`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`call.. Patent Owner is authorized to file, within seven calendar days of the
`filing of the motion to strike, a five-page opposition, limited to the issues
`raised in the motion to strike. No reply is authorized at this time.
`Patent Owner’s Proposed Motions to
`Strike Petitioner's Reply in IPR2016-00308 and to
` Strike Petitioner's Reply in IPR2016-00309
`Patent Owner indicated on the call that it seeks authorization to file a
`motion to strike Petitioner’s Reply in IPR2016-00308 and to strike
`Petitioner's Reply in IPR2016-00309. According to Patent Owner, both
`Replies contain new arguments, exceeding the scope permitted by 37 C.F.R.
`§ 42.23(b). Patent Owner provided some examples of the arguments
`allegedly exceeding the scope of the Patent Owner Response. For example,
`as to IPR2016-00308, Patent Owner states
`Arista is arguing that the combination of Sandick and AgentX
`and Math[eny] teach [] certain elements under their proposed
`claim instruction. But in the institution decision, the board
`declined to institute the AgentX, Sandick and Math[eny]
`grounds; nevertheless, in the Petitioner’s reply, the Petitioner is
`re-raising the Math[eny] ground. So we believe that that's a clear
`example of something that exceeds the scope permitted by the
`reply.
`Tr. 20:20–21:5. Patent Owner also asserted Petitioner’s Declarant, Dr.
`Mohapatra, admitted at his deposition that using the CLI as the router
`configuration subsystem is a new argument presented in the Reply. As to
`IPR2016-00309, Patent Owner argued that an exhibit purporting to support
`the public availability of the CoreBuilder reference is untimely because it
`should have been filed with the Petition rather than with the Reply.
`
`
`
`4
`
`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`Additionally, Patent Owner argues that the Reply relies on a different
`element of the Amara reference than the one relied on in the Petition.
`As to IPR2016-00308, Petitioner responded that the CLI argument in
`the Reply is in response to an issue raised in the Patent Owner Response.
`Additionally, Petitioner responded that “the combination of AgentX,
`Sandick and Math[eny], that was addressed [] on page 40 of the Patent
`Owner’s [P]reliminary [Response], and our [R]eply is just addressing the
`arguments that were raised there.” Tr. 26:10–14. We asked Petitioner why
`a non-instituted ground which was argued in the Patent Owner’s Preliminary
`Response is relevant to the trial as instituted. Petitioner responded,
`It’s our understanding that the F[ederal] Circuit has said that the
`[B]oard is not bound by any findings it’s made in an institution
`decision, and we understand that the [B]oard can change its mind
`with regard to claim construction, and claim construction is the
`issue that continue -- continuing. So we argue the claim
`construction issue as part of our reply, and we want to show the
`relevance of the claim construction [] to show that it's not an
`academic exercise and that it impacts the grounds that the board
`would institute on. And I think if the board were to change its
`mind and adopt our claim construction, the rules specifically
`allow for the board to extend a schedule by six months and
`account for the grounds -- the rejected grounds and reconsider
`them. So that’s why we included that information.
`Tr. 27:11–28:3. We are not persuaded by that argument. Arguments
`presented in a preliminary response but not made in patent owner’s response
`are waived and, therefore, should not be addressed in a petitioner’s reply.
`The Office has instructed that such improper reply argument will not be
`considered:
`A reply may only respond to arguments raised in the
`corresponding opposition. [37 C.F.R.] § 42.23. While replies
`can help crystalize issues for decision, a reply that raises a new
`
`
`
`5
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`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`
`issue or belatedly presents evidence will not be considered and
`may be returned. . . . Examples of indications that a new issue
`has been raised in a reply include new evidence necessary to
`make out a prima facie case for
`the patentability or
`unpatentability of an original or proposed substitute claim, and
`new evidence that could have been presented in a prior filing.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
`F.3d 1359, 1370 (Fed. Cir. 2016) (“Board did not err in refusing the reply
`brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an
`entirely new rationale.”)
`Petitioner also cites to the Federal Circuit in Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) for the proposition that the
`Board is not bound to the decisions it its institution decision, including
`apparently the grounds upon which the trial was instituted. Tr. 35:19–36:1
`(citing Trivascular). Thus, as quoted above, Petitioner asserts that a change
`in claim construction can expand the scope of a trial to include a ground
`upon which the trial was not instituted. In Trivascular, the Federal Circuit
`stated that
`the Board is not bound by any findings made in its Institution
`Decision. At that point, the Board is considering the matter
`preliminarily without the benefit of a full record. The Board is
`free to change its view of the merits after further development of
`the record, and should do so if convinced its initial inclinations
`were wrong. To conclude otherwise would collapse these two
`very different analyses into one, which we decline to do. If those
`determinations were somehow binding with respect to the
`Board's final decision, as TriVascular urges, the patentee's appeal
`rights as to that second determination would be close to illusory.
`TriVascular's argument also fails to appreciate that there is a
`significant difference between a petitioner's burden to establish a
`“reasonable likelihood of success” at institution, and actually
`
`6
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`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`
`proving invalidity by a preponderance of the evidence at trial.
`Compare 35 U.S.C. § 314(a) (standard for institution of inter
`partes review), with 35 U.S.C. § 316(e) (burden of proving
`invalidity during inter partes review).
`
`Id. We do not, however, read this quotation to suggest that the Board may
`change the grounds upon which trial was instituted after the parties have
`filed subsequent briefs on the merits—even if the claim construction
`changes. Rather, the Federal Circuit was simply stating that the Board is not
`bound by its decisions on the merits of the trial as instituted. The Board has
`discretion to institute on a subset of the grounds presented in a petition, as it
`did in this case. Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
`1316–17 (Fed. Cir. 2016). Consistent with that discretion, in our view, non-
`instituted grounds are not a proper basis for a final decision even if the claim
`construction changes. In any event, in IPR2016-00308, even if we construe
`a claim term in the final written decision differently than we construed it in
`our Decision to Institute, we will not revisit non-instituted grounds. Thus,
`we are not persuaded by this argument. In addition, we do not decide in this
`Order whether the claim construction put forth by Petitioner in its Reply is
`correct.
`As to IPR2016-00309, Petitioner responded that the exhibits regarding
`the CoreBuilder reference and the Amara argument are responsive to
`arguments in the Patent Owner Response.
`Upon consideration of the arguments presented, we authorize Patent
`Owner to file, within seven calendar days of the date this order is entered, a
`Motion to Strike Petitioner’s Replying each of IPR2016-00308 and
`IPR2016-00309, not to exceed five pages and not limited to the arguments
`made on the February 7 call (except, as noted above, the issue of non-
`
`7
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`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`instituted ground shall not be argued). Petitioner is authorized to file
`oppositions, not to exceed five pages, limited to the issues raised in the
`motion to strike, within seven calendar days of the filing of the motions to
`strike. No replies are authorized at this time.
`
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that Paper 22 shall be expunged from the record in
`IPR2016-00309;
`FURTHER ORDERED that Patent Owner shall have ten business
`days, as provided by 37 CFR 42.64(b)(2), from Petitioner’s filing of its
`corrected objections to respond and provide supplemental evidence;
`FURTHER ORDERED that Petitioner is authorized to file a five-page
`Motion to Strike Exhibits 2015–2023, 2027, and 2047 in IPR2016-00309,
`not limited to the arguments made on the February 7 call, within seven
`calendar days of the date this order is entered. Patent Owner is authorized to
`file a five-page opposition limited to the issues raised in the motion to strike
`within seven calendar days of the filing of the motion to strike. No reply is
`authorized at this time; and
`FURTHER ORDERED that Patent Owner is authorized to file a five-
`page Motion to Strike Petitioner's Reply in IPR2016-00308 and a five-page
`Motion to Strike Petitioner's Reply in IPR2016-00309, not limited to the
`arguments made on the February 7 call (except the issue of non-instituted
`ground shall not be argued), within seven calendar days of the date this order
`is entered. Petitioner is authorized to file five-page oppositions, limited to
`
`8
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`

`

`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`
`the issues raised in the motions to strike, within seven calendar days of the
`filing of the motions to strike. No replies are authorized at this time.
`
`
`
`
`
`PETITIONER:
`W. Karl Renner
`Lauren Degnan
`Alex Gelberg
`Michael McKeon
`Jason Wolff
`Linhong Zhang
`Adam Shartzer
`FISH & RICHARDSON P.C.
`IPR40963-0003IP4@fr.com
`IPR40963-0004IP4@fr.com
`IPR40963-0006IP3@fr.com
`PTABInbound@fr.com
`gelberg@fr.com
`mckeon@fr.com
`wolff@fr.com
`shartzer@fr.com
`IPR40963-0005IP1@fr.com
`
`PATENT OWNER:
`
`Jon E. Wright
`Robert Greene Sterne
`Lori A. Gordon
`Lestin L. Kenton, Jr.
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`lkenton-PTAB@skgf.com
`
`
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`IPR2016-00308 (Patent 7,162,537 B1)
`IPR2016—00308 (Patent 7,162,537 B1)
`IPR2016-00309 (Patent 7,224,668 B1)
`IPR2016—00309 (Patent 7,224,668 B1)
`
`
`
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`10
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`10
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