Case IPR2016-01254
`Patent 8,457,113
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`Paper No. 42
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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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`CISCO SYSTEMS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01254
`Patent Number: 8,457,113
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Patent 8,457,113
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`Paper No. 42
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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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`CISCO SYSTEMS, INC.
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`Petitioner
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`v.
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`FOCAL IP, LLC,
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`Patent Owner
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`________________
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`Case IPR2016-01254
`Patent Number: 8,457,113
`________________
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Case IPR2016-01254
`Patent 8,457,113
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`Patent Owner Focal IP, LLC hereby requests oral argument pursuant to 37
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`Paper No. 42
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`C.F.R. §42.70. Oral argument is currently scheduled for September 19, 2017 against
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`Cisco Systems, Inc. (“Petitioner”). In Section I below, Patent Owner respectfully
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`presents a proposal to the Board for consolidating and scheduling the oral hearings
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`associated with the nine proceedings involving three separate petitioner groups. In
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`Section II below, Patent Owner respectfully requests oral argument on the issues
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`listed.
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`Patent Owner also requests a projector that is capable of connecting to a
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`laptop computer.
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`Further, Patent Owner respectfully notifies the Board that it intends to have
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`multiple attorneys argue separate issues (e.g., claim construction, responses to the
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`petitions, and motions to amend).
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`I.
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`PATENT OWNER’S PROPOSAL FOR CONSOLIDATING THE
`PROCEEDINGS
`Patent Owner proposes dividing the proceedings into separate consolidated
`hearings involving the three Petitioner Groups accordingly:
`• Consolidated Group 1 (BHN, WOW, Knology, Birch) – IPR2016-01259,
`01261, 01262, and 01263 (“BHN group”);
`• Consolidated Group 2 (Cisco) – IPR2016-01254 and 01257 (“Cisco group”);
`and
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`Case IPR2016-01254
`Patent 8,457,113
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`• Consolidated Group 3 (Ymax) – IPR2016-01256, 01258, and 01260 (“Ymax
`group”).
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`Below, please find Patent Owner’s Proposal to the Board for efficiently
`hearing oral arguments for all nine of the proceedings:
`A. September 19, 2017 (morning):
`Patent Owner proposes that the Board schedule a consolidated hearing with
`all three Petitioner groups regarding the common disclaimer issues and claim
`construction
`issues associated with
`the related
`terms/phrases regarding a
`controller/processing system, etc. coupled to/in communication with a switching
`facility/tandem switch.
`30 minutes for Patent Owner and 30 minutes for Petitioners as a group.
`B. September 19, 2017 (before lunch)
`Oral hearing for the BHN group where each side has 60 minutes.
`C. September 19, 2017 (afternoon)
`Oral hearing for the Cisco group where each side has 60 minutes. Patent
`Owner proposes holding this hearing on the same day as BHN group due to
`overlapping attorney representation and issues regarding prior art.
`D. September 20, 2017 (morning)
`Oral hearing for the Ymax group where each side has 60 minutes.
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`Patent 8,457,113
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`To hear all of the oral arguments in a single day for all nine proceedings that
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`Paper No. 42
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`involve dozens of prior art references, claim constructions issues, and five motions
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`to amend would be unfairly prejudicial to Patent Owner and violate its due process
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`rights. It is extremely unfair and prejudicial to Patent Owner for its attorneys to
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`argue from sunrise to sunset while each petitioner group has the advantage of
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`bringing in a fresh set of attorneys for each new consolidated hearing involving
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`separate evidentiary records and arguments. Further, all of the parties submitted a
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`joint agreement to the Board on August 10, 2017 where the parties agreed the Ymax
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`oral arguments should be scheduled on a separate day, which is practical given that
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`there are only so many hours in a day to argue nine IPR proceedings having
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`numerous grounds and claim construction issues, in addition to five motions to
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`amend involving approximately 15 new prior art references.
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`Further, Patent Owner proposes holding a separate consolidated hearing for
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`all nine proceedings regarding the common claim construction and disclaimer issues
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`associated with the related terms and phrases surrounding the limitation of a
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`controller/processing system, etc. being coupled to or in communication with a
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`switching facility/tandem switch, which would reduce the total time for each of the
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`three main consolidated hearings per Petitioner group by one hour based on the
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`competing proposals submitted by the Petitioner groups and Patent Owner.
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`Patent 8,457,113
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`District courts routinely and customarily hold a joint claim construction
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`Paper No. 42
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`hearing involving multiple parties. To achieve judicial economy and consistent
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`outcomes, it makes sense to hold a single claim construction hearing. Otherwise,
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`the Board will unnecessarily hear the same or similar arguments repeatedly in
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`addition to creating different evidentiary records which could lead to inconsistent
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`results.
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`If the Board determines that it will not hold a consolidated joint hearing on
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`the aforementioned claim construction/disclaimer issue, then Patent Owner
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`proposes that each side in each oral hearing receives 90 minutes, where claim
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`construction would be argued repeatedly in each of the three hearings. Petitioner
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`groups that are scheduled to argue after the initial hearing are able to improperly and
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`unfairly gain a strategic advantage of revising their oral arguments based on any
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`intelligence it may have gleaned from an earlier hearing. Having separate hearings
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`on the same common issue puts Patent Owner at a strategic disadvantage, which the
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`Board can easily prevent by holding a consolidated joint hearing on this common
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`issue or by closing off the hearings to the public.
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`Patent Owner believes that Petitioner bears the burden of showing that Patent
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`Owner’s proposed amended claims are unpatentable. However, if the Board
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`continues to place the burden on Patent Owner to show that its proposed amended
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`claims are patentable, Patent Owner respectfully requests rebuttal time regarding the
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`Patent 8,457,113
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`opposition arguments brought by Petitioner that are directed to the motions to
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`Paper No. 42
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`amend.
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`II.
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` ISSUES FOR ORAL ARGUMENT
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`Patent Owner requests oral argument for the following issues:
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`• In IPR2016-01254, whether Petitioner has met their burden of proof
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`that challenged claims 38 and 65 of U.S. Patent No. 8,457,113 are
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`unpatentable over
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`the prior art
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`in
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`the
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`instituted grounds of
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`unpatentability;
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`• In IPR2016-01257, whether Petitioner has met their burden of proof
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`that challenged claims 143, 144, 145, 146, 147, 149, 150, 163, 176, 177,
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`and 178 of U.S. Patent No. 8,457,113 are unpatentable over the prior
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`art in the instituted grounds of unpatentability;
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`• In IPR2016-01257, whether Patent Owner’s proposed substitute
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`amended claim 184 of U.S. Patent No. 8,457,113 is patentable;
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`• The proper constructions of the challenged claims and the amended
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`claims;
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`• The Motions to Exclude Evidence;
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`• The Listings of Improper Reply/New Argument and Evidence;
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`• Rebuttal of the Petitioners’ argument with respect to any issues;
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`Patent 8,457,113
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`• Any issues identified in Petitioners’ Request for Oral Argument; and
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`• Any additional issues on which the Board seeks clarification.
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`Dated: August 21, 2017
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`Respectfully Submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of August 2017, a copy of Patent Owner’s
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`Request for Oral Argument has been served in its entirety via email on the following:
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`Wayne Stacy
`BAKER BOTTS L.L.P.
`2001 Ross Avenue
`Dallas, TX 75201
`Phone: (214) 953-6678
`Facsimile: (214) 661-4678
`wayne.stacy@bakerbotts.com
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`Sarah J. Guske
`BAKER BOTTS L.L.P.
`101 California Street, #3070
`San Francisco, CA 94111
`Phone: (415) 291-6205
`Facsimile: (415) 291-6305
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`Case IPR2016-01254
`Patent 8,457,113
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`sarah.guske@bakerbotts.com
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`Dated: August 21, 2017
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`Paper No. 42
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`Respectfully submitted,
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`/s/ Brent N. Bumgardner
`Brent N. Bumgardner
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`Registration No. 48,476
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-3490
`Email: brent@nelbum.com
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