`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`ARISTA NETWORKS, INC.
`Petitioner
`
`v.
`
`CISCO SYSTEMS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2016-00309
`Patent 7,224,668 B1
`____________________
`
`
`
`PATENT OWNER’S
`MOTION TO STRIKE PETITIONER’S REPLY
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Board’s authorization on February 7, 2017 (Exhibit 1028),
`
`Patent Owner, Cisco Systems, Inc. (“Cisco”), files this Motion to Strike Petitioner,
`
`Arista Networks, Inc. (“Arista”)’s Reply to Patent Owner’s Response (Paper 34).
`
`Petitioner’s Reply contains new arguments, exceeding the scope permitted by 37
`
`C.F.R. § 42.23(b). Instead of simply rebutting the substantive arguments and
`
`evidence presented in the Patent Owner’s Response (Paper 19), Petitioner elected
`
`to raise non-responsive new arguments at a point in the trial when Patent Owner
`
`does not have the opportunity to meaningfully respond. Not only is this action a
`
`violation of the Board’s rules, it is also unfairly prejudicial to Patent Owner.
`
`Accordingly, Patent Owner asks the Board to strike the portions of Petitioner’s
`
`Reply identified below.
`
`II. ARGUMENT
`A “challenger [is] obliged to make an adequate case in its Petition and the
`
`Reply limited to a true rebuttal role.” Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359, 1367 (Fed. Cir. 2015). In accordance with this directive, the
`
`Petition must identify specific evidence relied upon to support the proposed
`
`challenge and its relevance. 37 C.F.R. § 42.104(b)(5). Further, to achieve the
`
`underlying goal of efficiency and fairness of IPR trials, regulations limit a Reply
`
`submission “to matter responsive to the Patent Owner’s Response.” Ariosa, 805
`
`
`
`- 1 -
`
`
`
`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`F.3d at 1368. A Petitioner’s Reply that “crosses the line from the responsive to the
`
`new” evades these procedural safeguards and risks expunction. Id.
`
`A.
`
`Petitioner’s new argument that claimed “port services” are
`executed by Amara’s “packet classifiers” is improper.
`
`In its Reply, Petitioner raised for the first time an argument that Amara’s
`
`“packet classifiers 214-216” execute the claimed “port services.” (Reply, p. 8-10.)
`
`This argument represents a significant shift in Petitioner’s obviousness theory
`
`made in the Petition, which argued Amara’s “policy engines 224-228” executed
`
`the claimed “port services.” (Petition, at 26-27.) Viewing Petitioner’s annotated
`
`Figure 3 from the Petition against the same annotated Figure from its Reply
`
`highlights Petitioner’s shifting arguments.
`
`Petition
`
`Reply
`
`
`
`
`
`
`
`(Compare Petition, p.16 with Reply, p. 9.)
`
`
`
`- 2 -
`
`
`
`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`Patent Owner first learned of Petitioner’s new theory during the deposition
`
`of Petitioner’s expert, Dr. Lin. At deposition, Dr. Lin repeatedly provided non-
`
`responsive answers in an attempt to interject the new “packet classifier” theory into
`
`the trial. (See e.g., Exhibit 2005, 94:20-95:8; 89:16-90:24; 22:15-21, 86:7-9; 93:2-
`
`94:1.) Indeed, Dr. Lin admitted that the new theory was missing entirely from his
`
`Declaration. (Ex 2005, 114:21-25 (“I agree that in my Declaration I did not talk to
`
`packet classification as being part of port services.”).)
`
`Although Patent Owner did not fully understand the contours of Petitioner’s
`
`new theory at the time it filed its Response, Patent Owner nonetheless attempted to
`
`address this new theory in its Response based on Dr. Lin’s brief testimony. (POR,
`
`p. 25.) Petitioner seized on Dr. Lin’s reference to the new theory at deposition and
`
`developed it into a three-page argument, citing new evidence not included in its
`
`Petition. However, the limited nature of Dr. Lin’s testimony did not provide the
`
`Patent Owner with all of the facts and law associated with Petitioner’s fully-
`
`developed “packet classifier” argument presented in its Reply.
`
`Petitioner’s backdoor attempt to introduce a new argument into trial through
`
`the deposition of its expert violates the notice provisions of the Administrative
`
`Procedure Act, requiring that a Patent Owner be timely informed of “the matters of
`
`facts and law asserted.” In re Nuvasive, 2015-1672, -1673, slip op, at p. 8 (Fed Cir.
`
`Nov. 9, 2016) (quoting from 5 U.S.C. § 554(b)(3)). This notice provision requires
`
`
`
`- 3 -
`
`
`
`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`that Petitioner’s arguments be presented and supported in its Petition: “The
`
`challenger [is] obliged to make an adequate case in its Petition and the Reply
`
`limited to a true rebuttal role.” Ariosa Diagnostics v. Verinata Health, Inc., 805
`
`F.3d 1359, 1367 (Fed. Cir. 2015). A calculated reference to a new theory at
`
`deposition should not be the key to unlock a new argument in Petitioner’s Reply.
`
`The Board should also disregard Petitioner’s attempts to justify its new
`
`argument by characterizing the argument as a response to a claim construction by
`
`Patent Owner. Patent Owner did not construe this element. Instead, Patent Owner
`
`discussed this claim element in accordance with its plain and ordinary meaning––a
`
`meaning that should be well known to Petitioner after filing three IPR proceedings
`
`and litigating these claims at the ITC. Specifically, on July 9, 2015—nearly five
`
`months prior to the filing of the Petition in the present proceeding—Patent Owner
`
`filed a POPR in IPR2015-00974, which argued that Amara did not perform “port
`
`services” on its external packets. See Paper 6, IPR2015-00974, at pp. 25-27 (July
`
`9, 2015). Form at least this prior proceeding, Petitioner understood the plain and
`
`ordinary meaning of this claim term and Patent Owner’s position, yet made a
`
`deliberate decision not to address it in the Petition in the present proceeding. The
`
`fact that Petitioner was aware of Patent Owner’s argument is supported by the fact
`
`that Petitioner’s expert deliberately introduced the argument at his deposition,
`
`before Patent Owner even filed its Response. Petitioner made a strategic decision
`
`
`
`- 4 -
`
`
`
`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`on what arguments to present in its Petition—and, it did not present this argument.
`
`Petitioner should be held to its choices.
`
`Accordingly, Patent Owner moves to strike the “packet classifiers” argument
`
`presented in the Reply because it exceeds the permitted scope.
`
`B.
`
`Petitioner’s new argument that CoreBuilder discloses
`“monitoring packet flows” is beyond the scope.
`
`In the Reply at p. 12, Petitioner also argues for the first time that
`
`CoreBuilder discloses “monitoring packet flows.” (Reply, p. 12.) This new
`
`argument is an impermissible shift in positions for the Petitioner. The Petition
`
`relies only on Amara for this element: “Amara also discloses that ‘the port services
`
`[are] for controlling and monitoring…packet flows.’ In particular, Amara’s
`
`policies may include…logging [selected] packet[s]…. A POSITA…would have
`
`understood that logging selected packets provides an ability to monitor packet
`
`flows.” (Petition, p. 27.) Accordingly, the Board should strike this argument.
`
`III. CONCLUSION
`As explained above, Petitioner’s Reply includes numerous improper
`
`
`
`arguments. The Board should strike each of these arguments because they are
`
`beyond the scope permitted in a Petitioner’s Reply.
`
`
`
`
`
`
`
`- 5 -
`
`
`
`IPR2016—00309
`
`U.S. Patent No. 7,224,668 B1
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`I
`
`2
`
`1/
`/
`
`7
`
`_.
`
`ii
`
`‘
`&/’ 1
`\Lori A. Gordon (Reg. No. 50,633)
`Daniel S. Block (Reg. No. 68,395)
`Attorneys for Patent Owner
`
`Date: February 24, 2017
`1 100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`lPR20l6-00309
`
`U.S. Patent No. 7,224,668 B1
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MOTION TO STRIKE PETlTIONER’S REPLY was served electronically via
`
`e—mail on February 24, 2017 in its entirety on the following:
`
`W. Karl Renner (Lead Counsel)
`Lauren A. Degnan (Back—Up Counsel)
`Steven R. Katz (Back—Up Counsel)
`Adam R. Shartzer (Back—Up Counsel)
`FISH & RICHARDSON P.C.
`
`IPR40963—0003lP4@li‘.com
`PTABl1il7oL1n_dQ_;t‘1‘.c()11i
`
`STERNE, KE. SLER, GOLDSTEIN & Fox P.L.L.C.
`
`
`
`Lori A. Gordon
`Registration No. 50,633
`Attorney for Patent Owner
`
`Date: February 24, 2017
`
`l 100 New York Avenue, N.W.
`
`Washington, D.C.20005—3934
`(202) 371-2600
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
