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`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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`____________________
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`Case IPR2016-00309
`Patent 7,224,668 B1
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`PATENT OWNER’S
`MOTION TO STRIKE PETITIONER’S REPLY
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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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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`I.
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`INTRODUCTION
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`Pursuant to the Board’s authorization on February 7, 2017 (Exhibit 1028),
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`Patent Owner, Cisco Systems, Inc. (“Cisco”), files this Motion to Strike Petitioner,
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`Arista Networks, Inc. (“Arista”)’s Reply to Patent Owner’s Response (Paper 34).
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`Petitioner’s Reply contains new arguments, exceeding the scope permitted by 37
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`C.F.R. § 42.23(b). Instead of simply rebutting the substantive arguments and
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`evidence presented in the Patent Owner’s Response (Paper 19), Petitioner elected
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`to raise non-responsive new arguments at a point in the trial when Patent Owner
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`does not have the opportunity to meaningfully respond. Not only is this action a
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`violation of the Board’s rules, it is also unfairly prejudicial to Patent Owner.
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`Accordingly, Patent Owner asks the Board to strike the portions of Petitioner’s
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`Reply identified below.
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`II. ARGUMENT
`A “challenger [is] obliged to make an adequate case in its Petition and the
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`Reply limited to a true rebuttal role.” Ariosa Diagnostics v. Verinata Health, Inc.,
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`805 F.3d 1359, 1367 (Fed. Cir. 2015). In accordance with this directive, the
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`Petition must identify specific evidence relied upon to support the proposed
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`challenge and its relevance. 37 C.F.R. § 42.104(b)(5). Further, to achieve the
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`underlying goal of efficiency and fairness of IPR trials, regulations limit a Reply
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`submission “to matter responsive to the Patent Owner’s Response.” Ariosa, 805
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`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
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`new” evades these procedural safeguards and risks expunction. Id.
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`A.
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`Petitioner’s new argument that claimed “port services” are
`executed by Amara’s “packet classifiers” is improper.
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`In its Reply, Petitioner raised for the first time an argument that Amara’s
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`“packet classifiers 214-216” execute the claimed “port services.” (Reply, p. 8-10.)
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`This argument represents a significant shift in Petitioner’s obviousness theory
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`made in the Petition, which argued Amara’s “policy engines 224-228” executed
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`the claimed “port services.” (Petition, at 26-27.) Viewing Petitioner’s annotated
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`Figure 3 from the Petition against the same annotated Figure from its Reply
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`highlights Petitioner’s shifting arguments.
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`Petition
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`Reply
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`(Compare Petition, p.16 with Reply, p. 9.)
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`Patent Owner first learned of Petitioner’s new theory during the deposition
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`of Petitioner’s expert, Dr. Lin. At deposition, Dr. Lin repeatedly provided non-
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`responsive answers in an attempt to interject the new “packet classifier” theory into
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`the trial. (See e.g., Exhibit 2005, 94:20-95:8; 89:16-90:24; 22:15-21, 86:7-9; 93:2-
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`94:1.) Indeed, Dr. Lin admitted that the new theory was missing entirely from his
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`Declaration. (Ex 2005, 114:21-25 (“I agree that in my Declaration I did not talk to
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`packet classification as being part of port services.”).)
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`Although Patent Owner did not fully understand the contours of Petitioner’s
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`new theory at the time it filed its Response, Patent Owner nonetheless attempted to
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`address this new theory in its Response based on Dr. Lin’s brief testimony. (POR,
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`p. 25.) Petitioner seized on Dr. Lin’s reference to the new theory at deposition and
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`developed it into a three-page argument, citing new evidence not included in its
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`Petition. However, the limited nature of Dr. Lin’s testimony did not provide the
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`Patent Owner with all of the facts and law associated with Petitioner’s fully-
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`developed “packet classifier” argument presented in its Reply.
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`Petitioner’s backdoor attempt to introduce a new argument into trial through
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`the deposition of its expert violates the notice provisions of the Administrative
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`Procedure Act, requiring that a Patent Owner be timely informed of “the matters of
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`facts and law asserted.” In re Nuvasive, 2015-1672, -1673, slip op, at p. 8 (Fed Cir.
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`Nov. 9, 2016) (quoting from 5 U.S.C. § 554(b)(3)). This notice provision requires
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
`that Petitioner’s arguments be presented and supported in its Petition: “The
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`challenger [is] obliged to make an adequate case in its Petition and the Reply
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`limited to a true rebuttal role.” Ariosa Diagnostics v. Verinata Health, Inc., 805
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`F.3d 1359, 1367 (Fed. Cir. 2015). A calculated reference to a new theory at
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`deposition should not be the key to unlock a new argument in Petitioner’s Reply.
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`The Board should also disregard Petitioner’s attempts to justify its new
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`argument by characterizing the argument as a response to a claim construction by
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`Patent Owner. Patent Owner did not construe this element. Instead, Patent Owner
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`discussed this claim element in accordance with its plain and ordinary meaning––a
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`meaning that should be well known to Petitioner after filing three IPR proceedings
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`and litigating these claims at the ITC. Specifically, on July 9, 2015—nearly five
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`months prior to the filing of the Petition in the present proceeding—Patent Owner
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`filed a POPR in IPR2015-00974, which argued that Amara did not perform “port
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`services” on its external packets. See Paper 6, IPR2015-00974, at pp. 25-27 (July
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`9, 2015). Form at least this prior proceeding, Petitioner understood the plain and
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`ordinary meaning of this claim term and Patent Owner’s position, yet made a
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`deliberate decision not to address it in the Petition in the present proceeding. The
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`fact that Petitioner was aware of Patent Owner’s argument is supported by the fact
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`that Petitioner’s expert deliberately introduced the argument at his deposition,
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`before Patent Owner even filed its Response. Petitioner made a strategic decision
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`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.
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`Petitioner should be held to its choices.
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`Accordingly, Patent Owner moves to strike the “packet classifiers” argument
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`presented in the Reply because it exceeds the permitted scope.
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`B.
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`Petitioner’s new argument that CoreBuilder discloses
`“monitoring packet flows” is beyond the scope.
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`In the Reply at p. 12, Petitioner also argues for the first time that
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`CoreBuilder discloses “monitoring packet flows.” (Reply, p. 12.) This new
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`argument is an impermissible shift in positions for the Petitioner. The Petition
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`relies only on Amara for this element: “Amara also discloses that ‘the port services
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`[are] for controlling and monitoring…packet flows.’ In particular, Amara’s
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`policies may include…logging [selected] packet[s]…. A POSITA…would have
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`understood that logging selected packets provides an ability to monitor packet
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`flows.” (Petition, p. 27.) Accordingly, the Board should strike this argument.
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`III. CONCLUSION
`As explained above, Petitioner’s Reply includes numerous improper
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`arguments. The Board should strike each of these arguments because they are
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`beyond the scope permitted in a Petitioner’s Reply.
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`IPR2016—00309
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`U.S. Patent No. 7,224,668 B1
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`I
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`1/
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`7
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`_.
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`ii
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`&/’ 1
`\Lori A. Gordon (Reg. No. 50,633)
`Daniel S. Block (Reg. No. 68,395)
`Attorneys for Patent Owner
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`Date: February 24, 2017
`1 100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`lPR20l6-00309
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`U.S. Patent No. 7,224,668 B1
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`MOTION TO STRIKE PETlTIONER’S REPLY was served electronically via
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`e—mail on February 24, 2017 in its entirety on the following:
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`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.
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`IPR40963—0003lP4@li‘.com
`PTABl1il7oL1n_dQ_;t‘1‘.c()11i
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`STERNE, KE. SLER, GOLDSTEIN & Fox P.L.L.C.
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`Lori A. Gordon
`Registration No. 50,633
`Attorney for Patent Owner
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`Date: February 24, 2017
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`l 100 New York Avenue, N.W.
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`Washington, D.C.20005—3934
`(202) 371-2600
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