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 IPR2016-00309
`Patent 7,224,668
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`PETITIONER’S MOTION TO STRIKE
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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 IPR2016-00309
`Patent 7,224,668
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`PETITIONER’S MOTION TO STRIKE
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`Case IPR2016-00309
`Attorney Docket No: 40963-0006IP3
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`TABLE OF CONTENTS
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED .............................. 1
`II. STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED .......... 1
`A. The Board Should Strike Exhibits Improperly Incorporated by Reference
`into the Patent Owner Response .................................................................. 1
`Petitioner’s Motion To Strike Is Timely and Not Moot ................................ 3
`B.
`III. CONCLUSION ................................................................................................... 5
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`i
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`I.
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`Case IPR2016-00309
`Attorney Docket No: 40963-0006IP3
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.20 and the Board’s February 17, 2017, Order
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`(Paper 40), Petitioner hereby moves to strike Exhibits 2015-2023, 2027, and 2047
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`on the grounds that they improperly contain additional argument beyond what is
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`contained and developed in the Patent Owner Response (Paper 19, “POR”).
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`II.
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`STATEMENT OF THE REASONS FOR THE RELIEF REQUESTED
`A. The Board Should Strike Exhibits Improperly Incorporated by
`Reference into the Patent Owner Response
`Exhibits 2015-2023, 2027, and 2047 should be stricken because they are a
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`textbook example of material improperly incorporated by reference in violation of
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`37 C.F.R. §§ 42.24, 42.6(a)(3). These exhibits are claim charts purporting to
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`establish secondary indicia of nonobviousness (Ex. 2015) and the conception date
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`(Ex. 2047), and exhibits discussed exclusively therein (Exs. 2016-2023, 2027).1
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`The practice of referring to external claim charts containing argument not
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`fully developed in the briefs amounts to improper incorporation by reference. E.g.,
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`Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 7-10 (PTAB
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`Aug. 29, 2014) (“[C]iting to other claim charts in another document also amounts
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`to incorporation by reference.”). As the Board explained in Masterimage 3D, Inc.
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`1 Exhibits 2016-2023 are cited in passing in the POR, but they are not substantively
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`discussed. See POR at 56.
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`1
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`v. RealD Inc., IPR2015-00040, Paper 85 (PTAB Apr. 14, 2016), considering “more
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`Case IPR2016-00309
`Attorney Docket No: 40963-0006IP3
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`specific evidence” of secondary indicia of nonobviousness than that explained in
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`the patent owner response “would amount to incorporation of material from one
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`document by reference into another, which is inappropriate under 37 C.F.R. §
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`42.6(a)(3)” and “would be unjust to Petitioner.” Id. at 37-38. That is particularly
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`true here, where the improperly incorporated claim charts contain over 6,000
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`additional words, comprising nearly half the permissible length of the entire POR.
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`This is not a case where Cisco’s argument is fully presented and developed
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`in the POR and the exhibits merely provide additional evidence. Under well-
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`established law, proof of both conception and secondary considerations based on a
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`commercial embodiment requires an element-by-element comparison to the claims
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`at issue. See, e.g., Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (“[I]n
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`establishing conception a party must show possession of every feature recited in
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`the count, and that every limitation of the count must have been known to the
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`inventor at the time of the alleged conception.”); In re Huai-Hung Kao, 639 F.3d
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`1057, 1068 (Fed. Cir. 2011). Here, the POR contains no such analysis whatsoever,
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`instead expressly directing the reader to the voluminous claim charts of Ex. 2047
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`and Ex. 2015 for the “element-by-element” analysis. POR at 36, 56. The rule
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`against incorporating material by reference forbids precisely this approach.
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`Masterimage 3D, Paper 85 at 37-38. If the parties’ briefs could simply refer to
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`2
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`external claim charts presenting the entire element-by-element analysis—as Cisco
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`has done here—then the word limit would have little practical effect.
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`Accordingly, Cisco’s claim charts containing additional argument beyond
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`what is explained and developed in the POR (Exs. 2015, 2047) constitute improper
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`incorporation by reference and should be stricken. Further, because Exhibits 2016-
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`2023 and 2027 are substantively discussed in only those charts and not the POR,
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`those exhibits also should be stricken as lacking supporting argument in the POR.
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`B.
`Petitioner’s Motion To Strike Is Timely and Not Moot
`Petitioner’s motion is timely. Unlike objections to admissibility, which can
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`be waived by a party if not raised timely, only the Board can waive non-
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`compliance with its briefing rules, and there is no basis for such a waiver here. See
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`37 C.F.R. § 42.5(b). The rules of practice governing Inter Partes Review
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`proceedings do not set forth any specific deadline for a motion to strike, instead
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`leaving timing to the Board’s discretion. 37 C.F.R. §§ 42.25, 42.64.
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`Cisco was not deprived of the opportunity to file a “corrected” POR by
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`Petitioner’s not raising the issue earlier. Cisco’s suggestion that it could have filed
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`a corrected Response is not credible given that the claim charts contained over
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`6,000 words of additional substantive argument. Even if Cisco could somehow
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`have condensed those 6,000 words of element-by-element analysis into a revised
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`brief, its decision to emphasize other issues in its POR was a tactical one. Indeed,
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`3
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`the only permissible correction would have been to delete the claim charts, not add
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`Case IPR2016-00309
`Attorney Docket No: 40963-0006IP3
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`arguments from the charts to the Response. See, e.g., Google Inc. v. Makor Issues
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`& Rights Ltd., IPR2016-01535, Paper 11 at 2-3 (PTAB Dec. 12, 2016) (allowing a
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`corrected Petition to address word count violations, stating it “shall not add any
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`new arguments”); Chevron N. Am., Inc. v. Milwaukee Elec. Tool Corp., IPR2015-
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`00595, Paper No. 64 at 6-7 (PTAB Apr. 7, 2016) (forbidding “new material”).
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`Cisco simply was not entitled to file a non-compliant POR and lie in wait to
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`see whether Petitioner objected; rather, Cisco had an affirmative obligation to
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`comply with Board rules governing word counts and incorporation by reference in
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`the first instance. Indeed, the Board may address the issue of compliance with
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`these rules sua sponte. See, e.g., Masterimage 3D, Paper 85 at 37-38 (refusing to
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`consider expert declaration); see also Unified Patents, Inc. v. Olivistar, LLC,
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`IPR2015-01216, 2015 WL 9599221, at *6 n.7 (PTAB Nov. 20, 2015) (refusing to
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`consider claim chart submitted as a declaration exhibit); Fidelity Nat’l Info. Servs.,
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`Inc. v. Datatreasury Corp., IPR2014-00490, 2014 WL 4059221 at *5-6 (PTAB
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`Aug. 13, 2014) (refusing to consider information found in only expert declaration
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`and attached 213-page claim chart); cf. Purdue Pharma L.P. v. Depomed, Inc.,
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`IPR2014-00377, Paper No. 30 at 2-3 (PTAB Nov. 21, 2014) (deciding that the
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`final written decision would resolve whether improper incorporation by reference
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`occurred). Cisco was well aware of the Board’s incorporation by reference rule
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`4
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`but relegated its element-by-element analysis of conception and secondary
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`Case IPR2016-00309
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`considerations to external charts. Cisco did so at its own peril; it is not entitled to a
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`second bite at the apple. Holding Cisco to the Board’s rules would not be unfair.
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`Furthermore, no regulation requires Petitioner to raise the issue of Cisco’s
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`violation in its Reply or be subject to waiver. Petitioner should not have had to use
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`any of the limited words for its Reply addressing Cisco’s flagrant violation of the
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`Board’s rules. That Petitioner highlighted one such violation in its Reply does not
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`make the issue moot. This issue would be moot only if the Board had already
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`issued an order striking Exhibits 2015-2023, 2027, and 2047 in light of the Reply.
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`Finally, Cisco’s own conduct undercuts its assertion that Petitioner has
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`waived the issue by not moving to strike sooner. Cisco argued in its POR that
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`Petitioner had incorporated materials by reference into the Petition. See POR at
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`30. Cisco waited more than nine months to raise this issue, however,
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`demonstrating its belief that its failure to raise the issue immediately after the
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`supposedly non-conforming brief was filed did not constitute waiver.
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`III. CONCLUSION
`For the foregoing reasons, Petitioner’s motion to strike should be granted.
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`Date: February 24, 2017
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`Respectfully submitted,
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`/s/ Lauren A. Degnan
`Lauren A. Degnan, Reg. No. 40,584
`Attorney for Petitioner
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`Case IPR2016-00309
`Attorney Docket No: 40963-0006IP3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on February
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`24, 2017, a complete and entire copy of this Petitioner’s Motion to Strike was
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`provided via email, to the Patent Owner by serving the email correspondence
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`addresses of record as follows:
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`Lori A. Gordon
`Robert Greene Sterne
`Jon E. Wright
`Daniel S. Block
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
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`Email: lgordon-PTAB@skgf.com
`Email: rsterne-PTAB@skgf.com
`Email: jwright-PTAB@skgf.com
`Email: dblock-PTAB@skgf.com
`Email: ptab@skgf.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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