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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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`Juniper Networks, Inc., Ruckus Wireless, Inc.,
`Brocade Communication Systems, Inc., and Netgear, Inc.,
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`Petitioners
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`v.
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`Chrimar Systems, Inc.,
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`Patent Owner
`___________
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`Case IPR2016-01399
`U.S. Patent No. 8,902,760
`___________
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`PETITIONER’S BRIEF PURSUANT TO
`ORDER FOR ADDITIONAL BRIEFING REGARDING
`AMENDMENTS MADE DURING EX PARTE REEXAMINATION
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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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`10380219
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`IPR2016-01399
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` U.S. Patent No. 8,902,760
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`Pursuant to the Panel’s Order (Paper 65), Petitioners submit this brief
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`regarding the claims that Patent Owner amended in the ex parte reexamination
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`during this IPR, i.e., Claim 73 and its dependents 106, 112, 134, 142, and 145.
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`I.
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`The Board Should Issue a Final Written Decision as to the Amended
`Claims and Not Terminate this Proceeding as to those Claims
`A longstanding goal of the inter partes review is to improve the PTO’s
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`procedures to strengthen patent quality. 153 Cong. Rec. E773-775. In line with
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`this goal, the Board may exercise the Director’s broad authority to determine the
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`manner in which an IPR may proceed when another proceeding that involves the
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`same patent is before the Office during the pendency of the IPR (such as the
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`previously co-pending ex parte reexamination in which the Patent Owner chose to
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`amend claims that were concurrently at issue in this IPR). 35 U.S.C. § 315(d).
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`As discussed in detail in Section II of this brief, the only amendment
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`relevant to this proceeding is that Patent Owner limited the “central network
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`equipment” of claim 73 to “a BaseT Ethernet hub.” See Ex. 2056, 2. Prior art
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`“central network equipment” in the form of “a BaseT Ethernet hub” has been the
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`subject of the parties’ arguments at every stage of this IPR from the Petition
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`through the Oral Hearing. Under these circumstances, the Board acting on behalf
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`of the Director should issue a final written decision in this IPR as to the amended
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`claims because the subject of the claim amendment was addressed in this IPR and
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`the prior art of record shows the claims are unpatentable under 35 U.S.C. § 103.
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`IPR2016-01399
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`II. The Patent Owner Has Been on Notice that the Amended Claims Are
`Unpatentable Based on the Prior Art of Record in this IPR
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` U.S. Patent No. 8,902,760
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`Prior to the amendment, claim 73 recited, in part, “a piece of central network
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`equipment” and “BaseT Ethernet.” Ex. 1001, cl. 73. To meet these limitations, the
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`Petitioner relied on, among other things, disclosures of BaseT Ethernet hubs from
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`both Hunter and the IEEE references in Grounds 1 and 2, respectively. Following
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`the amendment, claim 73 additionally recites “the piece of central network
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`equipment is a BaseT Ethernet hub.” Ex. 2056, 2. Because the disclosures of
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`BaseT Ethernet hubs that were relied on in the Petition also teach this amendment,
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`claim 73 remains unpatentable. The Patent Owner has been on notice of this
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`throughout the IPR and the reexamination. The Patent Owner had the opportunity
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`to and did address this argument and the prior art in its Response, and would not be
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`denied Due Process if the Board issues a final decision as to the amended claims.
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`A. Grounds 1 and 2 Teach the Amendment to Claim 73
`In Ground 1, the Petition at pages 26-27 cites to Hunter (Ex. 1003) for its
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`disclosures of BaseT Ethernet central equipment, including Hunter’s express
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`disclosure of a “10BaseT hub.” Paper 1 at 27 (quoting Ex. 1003 at 34:18). In
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`addition, the discussions on pages 8-9, 22-24, 25-26, and 42 of the Petition are
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`relevant. For example, pages 8-9 cite to Hunter’s disclosures of Ethernet hubs,
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`including 10Base-T and 100Base-T Ethernet. Pages 22-24 address the
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`combination of Bulan’s circuitry (Ex. 1004) with the Ethernet hubs taught by
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`IPR2016-01399
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`Hunter. Pages 25-26 cite Hunter’s repeated disclosures of Base-T Ethernet. And
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`page 42 explains that claim 73’s limitations are a subset of claim 1, which recites
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`“a piece of central BaseT Ethernet equipment.” Accordingly, the evidence relied
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`on for claim 1 also shows claim 73 is unpatentable.
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`In Ground 2, the Petition at page 55 cites disclosures of BaseT Ethernet hubs
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`from the IEEE references (Exs. 1006-1008). For example, the IEEE Base-T
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`Ethernet Standards teach a “10Base-T Repeater,” “100Base-T Repeater,” and
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`“Multi-Port Bridge.” Paper 1 at 55 (quoting Ex. 1006 at 243, 267; Ex. 1007 at 27;
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`Ex. 1008 at 303-304). At page 55, the Petition also cite evidence, including figures
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`29-1 and 29-2 from the IEEE standard, that show a network of “10Base-T
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`Repeaters,” “100Base-T Repeaters,” and a “Multi-Port Bridge” that physically
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`connect to multiple DTEs (data terminal equipment, such as PCs). Petition at 55
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`(citing Ex. 1008 at 303-304). These disclosures teach a “BaseT Ethernet hub”
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`under its broadest reasonable interpretation. In addition, pages 43-48 and 49-55 of
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`the Petition are relevant. For example, pages 43-48 discuss the control unit of the
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`Bloch reference (Ex. 1005) and pages 51-55 discuss combining Bloch’s control
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`unit with the BaseT Ethernet hubs taught by the IEEE references (Exs. 1006-1008).
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`Pages 49-51 discuss evidence from the IEEE references teaching Base-T Ethernet.
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`And page 66 explains that the evidence for claim 1 shows claim 73 is unpatentable.
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`These pages of the Petition also cite Mr. Crayford who testifies that both
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`IPR2016-01399
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`Grounds teach central BaseT Ethernet equipment and BaseT Ethernet hubs.
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` U.S. Patent No. 8,902,760
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`B.
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`Patent Owner Had the Opportunity to and Did Respond to the
`Evidence Showing the Amendment to Claim 73 Is Unpatentable
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`For Ground 1, Patent Owner does not dispute that Hunter teaches “a piece of
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`central network equipment.” In fact, Patent Owner writes “Hunter teaches a
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`multimedia hub (120 in Figure 1) that uses isoEthernet interfaces.” Paper 26 at 15.
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`On pages 37-41, 48, and 50-51 of the Response, Patent Owner repeatedly states
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`that the disclosures in Hunter teach a piece of central network equipment that is a
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`hub. For example, Patent Owner writes that the “left-hand ‘hub’” in Figure 2 of
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`Hunter can be in “hub 120 of Figure 1” of Hunter. Response at 39. Patent
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`Owner’s recreation of Hunter’s Figure 2 is also telling because it labels the central
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`network equipment of Hunter as a “Hub.” Paper 26 at 37. The only disputed
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`limitation relevant to the amendment is whether the hub is a BaseT hub. See, e.g.,
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`Response at 34-35, 40-41, 45-47. But as shown in the Petition and Reply, there is
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`no merit to this argument because Hunter expressly teaches 10BaseT Ethernet,
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`100BaseT Ethernet, and a “10Base-t hub.” See, e.g., Petition, 8-9, 25-29; Reply,
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`11-12. This limitation also was addressed at the Oral Hearing. See, e.g., Record of
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`Oral Hearing Held August 31, 2017 at 9:20-10:1; 30:17-31:11; 131:8-15.
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`For Ground 2, Patent Owner does not even dispute the evidence Petitioner
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`relied on for teaching a piece of central BaseT Ethernet equipment. Indeed, claim
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`1 recites “a piece of central BaseT Ethernet equipment” and Patent Owner does not
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`dispute that Ground 2 teaches this. As discussed above, the Ground 2 combination
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`also teaches that the central network equipment is a “BaseT Ethernet hub.”
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`C.
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`Patent Owner Would Not Be Denied Due Process If the Board
`Issues a Final Written Decision as to the Amended Claims
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`As detailed above, the evidence that renders the amendment unpatentable is
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`expressly addressed in the Petition for Grounds 1 and 2. Patent Owner was able to
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`and did respond to this evidence in its Response. Accordingly, the parties have
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`had a sufficient opportunity to address the patentability of the amended claims, and
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`a final decision on these claims is appropriate and fair under the circumstances.
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`However, if the Board would like additional briefing on this issue -- beyond
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`that provided in the Petition, Response, Reply, and at the Oral Hearing -- the Board
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`can extend the deadline for the final written decision by six months for good cause
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`and order additional briefing. 35 U.S.C. § 316(a)(11). Good cause is present in
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`this case because the record shows that the amendment to claim 73, “the piece of
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`central network equipment is a BaseT Ethernet hub,” is not patentable over
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`Hunter’s express disclosure of a “10BaseT hub” or over the IEEE Standards that
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`teach a “10Base-T Repeater,” “100Base-T Repeater,” and “Multi-Port Bridge.”
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`Moreover, the additional briefing would be consistent with the longstanding goal
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`of the inter partes review to strengthen patent quality.
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`Dated: November 7, 2017
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`
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`Respectfully submitted,
`By: Talin Gordnia
`Talin Gordnia (Reg. No. 76,214)
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`10380219
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`IPR2016-01399
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` U.S. Patent No. 8,902,760
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6 that a complete copy of
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`
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`the PETITIONER’S BRIEF PURSUANT TO ORDER FOR ADDITIONAL
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`BRIEFING REGARDING AMENDMENTS MADE DURING EX PARTE
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`REEXAMINATION is being served by electronic mail, as agreed to by the
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`parties, the same day as the filing of the above-identified document in the United
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`States Patent and Trademark Office/Patent Trial and Appeal Board, upon:
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`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`CHRMC0110IPR1@brookskushman.com
`
`Richard W. Hoffman (Reg. No. 33,711)
`REISING ETHINGTON PC
`755 West Big Beaver Rd., Ste. 1850
`Troy, MI 48084
`Hoffman@reising.com
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`
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`November 7, 2017 /Susan M. Langworthy/
`Susan M. Langworthy
`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
`Los Angeles, California 90067-4276
`Tel.: (310) 277-1010 | Fax: (310) 203-7199
`Attorneys for Petitioner Juniper Networks, Inc.
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`10380219
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