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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
`OPPOSITION TO PETITIONER’S MOTION TO STRIKE
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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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`Patent Owner, Cisco Systems, Inc. (“Cisco”), opposes Petitioner, Arista
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`Networks, Inc.’s (“Arista”) Motion to Strike Patent Owner’s claim charts on con-
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`ception and secondary indicia (Exs. 2047, 2015) and evidence cited therein (Exs.
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`2016-2023, 2027). Petitioner’s Motion, coming over five months after Cisco’s pa-
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`per was filed, is untimely and unfounded. Cisco cites to these exhibits as corrobo-
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`rating evidence for the arguments presented in its Patent Owner Response (POR).
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`The exhibits do not contain argument and therefore the rule against incorporation
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`by reference does not apply. The Board should therefore deny Petitioner’s Motion.
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`I. Cisco Properly Relies on the Copying and Conception Exhibits.
`The foundation of Petitioner’s argument is its belief that the rule addressing
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`incorporation by reference applies to evidence. But Petitioner is incorrect. Patent
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`Trial and Appeal Board Rule 37 C.F.R. 42.6(a)(3) states that “arguments must not
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`be incorporated by reference from one document into another document.” Howev-
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`er, there is no rule preventing a party from citing to evidence to support an argu-
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`ment made in its paper. Purdue Pharma L.P. v. Depomed, Inc., IPR2014-00377,
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`Paper 30 at 2 (P.T.A.B. Nov. 21, 2014). That is exactly the case here. Cisco cites to
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`claim charts provided by its expert to support the conception and copying argu-
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`ments made in the POR. Petitioner cites no authority that prohibits use of corrobo-
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`rating evidence provided by an expert. But see REG Synthetic Fuels, LLC v. Neste
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`Oil Oyj, 841 F.3d 954, 962 (Fed. Cir. 2016) (finding that a Patent Owner in an IPR
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`- 1 -
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`proceeding had “proven conception prior to the filing date of [of the prior art refer-
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`ence], based on [two] Exhibits” alone).
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`The test for whether incorporation by reference is improper is dependent on
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`“whether such incorporation would circumvent page limits.” Silicon Labs., Inc. v.
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`Cresta Tech. Corp., IPR2015-00615, Paper 64 at 17 (P.T.A.B. Aug. 11, 2016). Pe-
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`titioner’s argument that Cisco improperly cited to Dr. Almeroth’s claim charts is
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`based on an incorrect application of this test. More precisely, Petitioner’s argument
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`improperly counts the entire content of the cited exhibit—an exhibit that solely
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`contains evidence, not argument. This approach is not proper—only the actual ar-
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`gument found in the exhibit, and not evidence, should be counted. Thus, even if
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`the POR argument contained one sentence referencing a large portion of an exhibit,
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`the entire size of the exhibit is not included toward the word count of the paper. Id.
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`(rejecting the argument that one sentence incorporating three paragraphs is imper-
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`missible).
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`For this reason, and the additional reasons discussed in detail below, Arista’s
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`motion to strike should be denied.
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`A. Cisco’s Evidence Corroborating Conception Was Properly Presented.
`With respect to Cisco’s evidence corroborating conception (Ex. 2047), the
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`Board should deny Petitioner’s motion to strike for at least one fundamental rea-
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`son—Petitioner’s actions demonstrate that its request is moot. Petitioner primarily
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`uses its motion to strike as an opportunity to further attack the substance of Cisco’s
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`conception argument—an argument that should have been fully presented in its
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`Reply. Tellingly, while Petitioner’s Reply did raise an incorporation-by-reference
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`argument for at least one exhibit referenced in Cisco’s POR (Reply at 26-27), Peti-
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`tioner’s Reply failed to raise any such argument with respect to the conception
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`claim chart. This omission from the Petitioner’s Reply is not surprising because
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`Cisco properly established the existence of conception in its POR.
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`“Conception must include every feature or limitation of the claimed inven-
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`tion,” and it “must be proved by corroborating evidence which shows that the in-
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`ventor disclosed to others his completed thought expressed in such clear terms as
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`to enable those skilled in the art to make the invention.” REG Synthetic Fuels, LLC
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`v. Neste Oil Oyj, 841 F.3d 954, 962 (Fed. Cir. 2016). Cisco used the product speci-
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`fication (Ex. 2009) to provide corroborating evidence for its conception argument
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`made in the POR. (POR, p. 36 (“The internal Cisco specification… provides ex-
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`emplary evidence that the invention… was conceived at least as early as [the con-
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`ception date].”); see also REG Synthetic Fuels, LLC 841 F.3d at 962 (finding con-
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`ception based on exhibits cited by a Patent Owner). And Cisco merely used Dr.
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`Almeroth’s claim chart (Ex. 2047) to provide further evidentiary support for the
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`establishment of conception presented in the POR. (POR at 35-37.)
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`- 3 -
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`Petitioner mischaracterizes the nature of the claim charts to fit its theory of
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`improper incorporation-by-reference. Exhibit 2047 is not an argument. It is cor-
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`roborating evidence to support Cisco’s conception laid out in over three pages in
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`the POR. (Id.) Dr. Almeroth’s claim chart (Ex. 2047) cites to excerpts from the
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`product specification that corroborate the conception information set forth in the
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`POR and in the Declaration of the inventor Wayne Ogozaly. This evidence sup-
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`ports Patent Owner’s argument that “the evidence establishes that by at least [date]
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`the invention of the ’668 patent was fully conceived in the minds of the inventors.”
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`(POR at 37.); see also REG Synthetic Fuels, LLC 841 F.3d at 962 Accordingly, the
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`Board should deny Petitioner’s Motion to Strike Cisco’s conception evidence.
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`The Board should also deny Petitioner’s Motion to Strike Dr. Almeroth’s
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`corroborating conception chart because it is untimely. When it comes to procedural
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`objections, the Board has warned that such objections should be “raised as soon as
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`possible... to preserve remedial measures which can still be taken by the Board
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`without prejudice to all parties.” Research in Motion Corp. v. Multimedia Ideas
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`LLC, IPR2013-00036, Paper 15 at 8 (P.T.A.B. Mar. 18, 2013). Petitioner did not
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`timely raise this objection––instead waiting over five months to surprise Cisco
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`with a backdoor procedural attack. The objection made after Petitioner’s Reply
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`deprived Cisco of any remedy at this late stage of the proceeding. Id. For example,
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`Cisco could have sought leave to file a replacement POR to reduce the total num-
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`- 4 -
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`ber of words in the POR.
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`IPR2016-00309
`U.S. Patent No. 7,224,668 B1
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`B. Cisco’s Copying Evidence Was Properly Presented.
`Petitioner similarly argues that Dr. Almeroth’s copying claim chart (Ex.
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`2015) contains argument necessary to establish secondary considerations. Alt-
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`hough, Petitioner did raise this argument in its Reply, like its conception argument,
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`it is still equally meritless.
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`Cisco argued in its POR that “Arista copied the patented [feature] embodied
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`in Cisco’s” invention and that “Arista’s copying is well-documented and evinces a
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`deliberate effort to duplicate the claimed subject matter.” (Id. at 61, citing Ex.
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`2015.) Dr. Almeroth corroborates the intentional copying of Cisco’s invention, re-
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`lying on the claim charts in Exhibit 2015 as evidence in forming his expert opin-
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`ion. (See Almeroth Decl., Ex. 2006, at 57.) Thus, Dr. Almeroth’s claim chart (Ex.
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`2015) and all Exhibits were properly presented as evidence, not argument. The
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`Board should deny Petitioner’s motion to strike Cisco’s copying evidence.
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`The Board should also decline to strike Exhibits 2016-23 and 2027 because,
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`contrary to Petitioner’s position, Patent Owner cites to these exhibits in the POR,
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`not just the Exhibit 2015 (see POR at 56).
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`II. CONCLUSION
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`Because of the foregoing reasons, the Board should deny Petitioner’s Motion
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`to Strike.
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`IPR2016-00309
`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.
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`/Lori A. Gordon/
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`Lori A. Gordon (Reg. No. 50,633)
`Daniel S. Block (Reg. No. 68,395)
`Attorneys for Patent Owner
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`Date: March 3, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION TO STRIKE was served elec-
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`tronically via e-mail on March 3, 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.
`IPR40963-0003IP4@fr.com
`PTABInbound@fr.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Lori A. Gordon/
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`Lori A. Gordon
`Registration No. 50,633
`Attorney for Patent Owner
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`Date: March 3, 2017
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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