UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JUNIPER NETWORKS INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC.,
`and NETGEAR, INC.,
`
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2016-013991
`U.S. Patent No. 8,902,760
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONERS’ SUPPLEMENTAL
`OPENING BRIEF AS AUTHORIZED BY PAPER 69
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`filed a petition in (now terminated) IPR2017-00719, who have been joined to the
`
`instant proceeding.
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`JUNIPER NETWORKS INC.,
`RUCKUS WIRELESS, INC.,
`BROCADE COMMUNICATION SYSTEMS, INC.,
`and NETGEAR, INC.,
`
`Petitioners,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2016-013991
`U.S. Patent No. 8,902,760
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONERS’ SUPPLEMENTAL
`OPENING BRIEF AS AUTHORIZED BY PAPER 69
`
`
`
`
`1 Ruckus Wireless, Inc., Brocade Communication Systems, Inc. and Netgear, Inc.
`
`filed a petition in (now terminated) IPR2017-00719, who have been joined to the
`
`instant proceeding.
`
`
`
`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`I.
`
`Introduction
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`On January 4, 2017, the Board instituted Inter Partes Review of claims 1, 31,
`
`37, 59, 69, 72, 73, 106, 112, 134, 142, and 145 of U.S. Patent No. 8,902,760 under
`
`35 U.S.C. § 314(a). (Paper 8, pp. 20-21.) At that time, claims 73, 106, 112, 134,
`
`142, and 145 (and other claims not relevant here) (“the Original Claims”) were being
`
`reexamined by
`
`the PTO
`
`in a separate anonymous-third-party requested
`
`reexamination proceeding Control No. 90/013,802 filed August 29, 2016.2
`
`In the reexamination, Chrimar (“Patent Owner”) effectively rewrote
`
`dependent claim 101—a claim not at issue in this IPR—as an independent claim by
`
`amending claim 73 to include the claim 101 language, “the piece of central network
`
`equipment is a BaseT Ethernet hub.” On September 18, 2017, the PTO issued a
`
`reexamination certificate for the ‘760 patent. The effect of that certificate was to (1)
`
`cancel Original Claim 73 and (2) renumber claim 101 as a new claim 73, from which
`
`claims 106, 112, 134, 142, and 145 depended (“the New Claims”).
`
`II. The Board has No Jurisdiction over the New Claims
`
`Because jurisdiction is a relevant issue at all stages of an IPR, Chrimar first
`
`addresses that issue before turning to Petitioners’ Opening Brief. The Board has no
`
`jurisdiction over the New Claims.
`
`
`2 Claim 73 is an independent claim; the remaining Original Claims depend from
`
`claim 73.
`
`1
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Per 35 U.S.C. § 314(a), the Board may authorize inter partes review only
`
`based on information in a petition, and per § 312(a) a petition must identify “in
`
`writing and with particularity, each claim challenged.” The Petition (Paper 1) did
`
`not assert that original claim 101 (New Claim 73) was unpatentable, the Board did
`
`not institute the IPR with respect to claim 101, and the parties presented no evidence
`
`nor arguments about the patentability of claim 101 in their briefs or at the oral
`
`hearing. The Board therefore lacks jurisdiction to consider the patentability of the
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`New Claims.
`
`Further, Petitioners cannot challenge original claim 101 (New Claim 73) now
`
`for at least two reasons. First, per § 315(b), Petitioners’ one-year time for filing a
`
`petition has expired. Second, Petitioners gave up the opportunity to request that the
`
`Board consider, via § 315(d), claims amended during the reexamination. Under
`
`§ 315(d), the Board may merge an IPR with another co-pending proceeding. But
`
`Petitioners “knew about the related reexaminations at least since February 6, 2017”
`
`(Order 62 at 3) and chose not to request consolidation under § 315(d).
`
`Considering claims without a petition under § 314(a) or consolidation under
`
`§ 315(d) prevents the Patent Owner from fully addressing the validity of Petitioners’
`
`arguments and violates Patent Owner’s due process and APA rights. The Federal
`
`Circuit determined in NuVasive that the agency “violated NuVasive’s rights under
`
`the Administrative Procedure Act” by not allowing NuVasive to respond to material
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`2
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
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`called out in the reply that was relied upon by the Board in making its determination.
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`In re NuVasive, Inc., 841 F.3d 966, 968 (2016). Here, the Patent Owner has been
`
`given little opportunity to argue the validity of New Claim 73, and no opportunity
`
`to submit supporting evidence, a clear violation of due process. The Board issuing,
`
`sua sponte, a final decision about the patentability of the New Claims has no
`
`statutory basis and would violate the Patent Owner’s due process and APA rights.
`
`Id. at 968, 971.
`
`III. Petitioners’ Arguments Regarding the New Claims Treats the
`Prior Art as a Mere Parts Catalog
`
`Petitioners’ obviousness arguments must address the New Claims “as a
`
`whole,” not as a catalog of separate parts. 35 U.S.C. § 103(a) (2004); Microsoft
`
`Corp. v. Biscotti, Inc., __ F.3d __, 2017 WL 6613262 at *8 (Fed. Cir. Dec. 28,
`
`2017).3 Petitioners’ Supplemental Opening Brief catalogs parts of the various prior
`
`
`3 “The Board found it particularly unpersuasive that Kenoyer did not link the
`
`separate embodiments. [IPR2014–01458] at *__, 2016 Pat. App. LEXIS 7573, at
`
`*30–31 (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730
`
`F.2d 1452, 1458, 1459 (Fed. Cir. 1984), for the proposition that requiring the prior
`
`art elements themselves to be ‘arranged as in the claim’ means that claims cannot be
`
`‘treated ... as mere catalogs of separate parts, in disregard of the part-to-part
`
`relationships set forth in the claims and that give the claims their meaning’).”
`
`3
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
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`art references without showing how those separate parts form a whole system as
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`required by the claims or why an ordinary artisan would put the parts together as
`
`claimed. Microsoft 2017 WL 6613262 at *8. For instance, in their Ground 1 section,
`
`Petitioners claim to find various hubs, twisted-pair wiring, and power sources (Paper
`
`70 at 2-4), but fail to show those parts arranged as required by the New Claims.
`
`Likewise, in their Ground 2 section, Petitioners find various parts scattered
`
`throughout the IEEE references—and even combine Hunter (from Ground 1) with
`
`the IEEE references, a combination never before argued. (Paper 70 at 4-5.) But,
`
`again, Petitioners fail to show a motivation to put the separate parts arranged as
`
`required by the New Claims.
`
`In addition, Petitioners cite no evidence that Ground 1 or Ground 2 disclose a
`
`“piece of central network equipment [that] is a BaseT Ethernet hub,” as New Claim
`
`73 requires. In Ground 1, Petitioners cite (p. 3) the “10Base-T repeater”
`
`functionality in Hunter’s hub 120. But a “repeater” is not a “hub.” (Ex. 1008 at 29,
`
`32-33 (defining “hub” differently than “repeater”).)4 For example, hubs are
`
`“network”
`
`layer devices while repeaters are “physical”
`
`layer devices—
`
`
`4 Normally, Chrimar would support the facts in this Brief—countering Petitioners’
`
`new arguments—with additional evidence, but the Board prohibited Chrimar from
`
`including such evidence (Paper 69 at 2) which, again, violates due process.
`
`4
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`
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`Case No.: IPR2016-01399
`Patent No.: 8,902,760
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`fundamentally different devices. (See, e.g., Ex. 1008 at 222.) Moreover, the concept
`
`Atty. Dkt. No.: CHRMC0110IPR1
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`of a “hub within a hub” does not exist in Ethernet. Petitioners also say that Hunter’s
`
`hub 120 connects to hub 170. But that hub-to-hub connection is not a hub-to-TE
`
`connection. Regarding isoEthernet, Chrimar disputes that isoEthernet’s so-called
`
`“10Base-T mode” discloses a “BaseT Ethernet hub”—it is merely an isoEthernet
`
`interface. (See, e.g., Ex. 1010 at scan p. 159 (book p. 139)—adding IsoEthernet to
`
`10Base-T network requires IsoEthernet hub and IsoEthernet adaptor cards.)
`
`For Ground 2, Petitioners rely (p. 5) on “repeaters” and a “bridge” from the
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`IEEE references. Again, those are not hubs. Repeaters are addressed above. A
`
`“bridge” is also not a hub. (Ex. 1008 at 24, 29 (defining “bridge” differently than
`
`“hub”).) A “bridge” is a “data link” layer (“layer 2”) device (id. at 24, 36), not any
`
`kind of a hub—which is a network layer device—much less a BaseT Ethernet hub.
`
`For these reasons, the Board’s decision should not address the New Claims.
`
`Dated: January 17, 2018
`
`
`
`Respectfully submitted,
`
`
` /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Richard W. Hoffmann (Reg. No. 33,711)
`Reising Ethington PC
`755 West Big Beaver Rd., Suite 1850
`Troy, Michigan 48084
`248.786.0163
`
`5
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`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Attorneys for Patent Owner
`
`6
`
`
`
`Case No.: IPR2016-01399
`Patent No.: 8,902,760
`
`
`Atty. Dkt. No.: CHRMC0110IPR1
`
`Certificate of Service
`
`On January 17, 2018, a copy of this PATENT OWNER’S RESPONSE TO
`PETITIONERS’ SUPPLEMENTAL OPENING BRIEF AS AUTHORIZED
`BY PAPER 69 has been served on Petitioner’s counsel via electronic mail at the
`email addresses shown below:
`
`
`Lead Counsel & Back-up Counsel for Juniper
`Talin Gordnia, Reg. No. 76,214
`Michael Fleming, Reg. No. 67,933
`Jonathan Kagan, pro hac vice
`IRELL & MANELLA, LLP
`1800 Avenue of the Stars, Suite 900
`IRELL & MANELLA, LLP
`Los Angeles, CA 90067
`1800 Avenue of the Stars, Suite 900
`Juniper-ChrimarIPR@irell.com
`Los Angeles, CA 90067
`Juniper-ChrimarIPR@irell.com
`
`Nima Hefazi Reg. No. 63,658
`IRELL & MANELLA, LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Juniper-ChrimarIPR@irell.com
`
`Lead Counsel & Back up Counsel for Ruckus Wireless, Inc., Brocade
`Communication Systems, Inc., & Netgear, Inc.
`Joseph Powers (Reg. No. 47,006)
`Christopher Tyson (Reg. No. 63,850)
`Duane Morris LLP
`Duane Morris LLP
`30 South 17th Street
`505 9th St. NW, Ste 1000
`Philadelphia PA 19103-4196
`Washington DC 20004
`JAPowers@duanemorris.com
`CJTyson@duanemorris.com
`
`
`Matthew S. Yungwirth
`DUANE MORRIS LLP
`1075 Peachtree Street, NE, Suite 2000
`Atlanta, Georgia 30309
`msyungwirth@duanemorris.com
`
`
`
`Respectfully submitted,
`
`
` /Frank A. Angileri/
`Frank A. Angileri (Reg. No. 36,733)
`Brooks Kushman P.C.
`
`7
`
`
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