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