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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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`VIPTELA, INC.,
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`Petitioner,
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`v.
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`FATPIPE NETWORKS PRIVATE LIMITED,
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`Patent Owner.
`______________
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`Case IPR2017-01125
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`U.S. Patent No. 6,775,235
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`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`TABLE OF CONTENTS
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`Introduction ....................................................................................... 1
`I.
`II. Background ........................................................................................ 1
`III. The Board should exercise its discretion under 35 U.S.C. § 325(d)
`to deny the Petition. .......................................................................... 2
`A. The Petition presents substantially the same prior art and
`substantially the same arguments as those presented to the Board
`in the 684 Petition. ............................................................................ 2
`B. Alternative factors previously expressed by the Board in favor of
`denying serial petitions are applicable to the instant Petition. ...... 3
`IV. Conclusion .......................................................................................... 7
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`TABLE OF AUTHORITIES
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`Statutes
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`35 U.S.C. 103………………………………………………….…..2, 3
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`35 U.S.C. 325(d)……………………………………………. …1, 2, 6
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`Rules
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`37 C.F.R. § 42.107………………………………………………….. 1
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`ii
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`TABLE OF EXHIBITS
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`Exhibit Description
`Petition for Inter Partes Review in IPR 2017-00684
`2001
`Decision Declining Institution of Inter Partes Review in
`2002
`IPR2014-00628
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`iii
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`I.
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`Introduction
` This is the third petition for inter partes review filed against the
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`subject patent, and the second petition filed by petitioner Viptela, Inc.
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`Such serial filings should be discouraged. Patent Owner requests that
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`the Board exercise its discretion under 35 U.S.C. § 325(d) to deny the
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`instant Petition because it presents substantially the same prior art
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`and substantially the same arguments as those already being
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`considered by the Board in Petitioner’s first challenge of the subject
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`patent, IPR 2017-00684 (“the 684 Petition”).
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`II. Background
`Viptela, Inc. filed its Petition for Inter Partes Review of U.S.
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`Patent No. 6,775,235 (“the ’235 Patent”) on March 21, 2017 (Paper 1,
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`“the Petition”). The Board mailed a notice of filing date on April 5, 2017
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`(Paper 3). Pursuant to 37 C.F.R. § 42.107, patent owner FatPipe
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`Networks Private Limited and exclusive licensee FatPipe, Inc. (for the
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`purposes of consistency with Board convention, referred to as “Patent
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`Owner”) timely submit this preliminary response.
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`1
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`III. The Board should exercise its discretion under 35 U.S.C. §
`325(d) to deny the Petition.
`Under 35 U.S.C. § 325(d) the Board has discretion to deny a
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`petition if it merely presents substantially the same prior art and
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`arguments already presented to the Office. Specifically, 35 U.S.C. §
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`325(d) sets forth that “In determining whether to institute or order a
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`proceeding under this chapter, chapter 30, or chapter 31, the Director
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`may take into account whether, and reject the petition or request
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`because, the same or substantially the same prior art or arguments
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`previously were presented to the Office.”
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`As explained below, the Petition relies on substantially the same
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`prior art and presents substantially the same arguments that were
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`presented in the 684 Petition. (Ex. 2001.)
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`A. The Petition presents substantially the same prior art
`and substantially the same arguments as those
`presented to the Board in the 684 Petition.
`The instant Petition relies on U.S. Patent No. 6,628,617 to Karol
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`et al. (“Karol,” Ex. 1006) as a primary reference in order to present its
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`challenge. (Petition at 4-5.) Specifically, the Petition contends that: (i)
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`claims 5-11, 14, and 22-24 of the ’235 Patent are obvious over the
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`2
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`combination of Karol and Zhang; (ii) claims 4 and 19 of the ’235 Patent
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`are obvious over the combination of Karol and Pearce; (iii) claims 9, 10,
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`and 14 of the ’235 Patent are obvious over the combination of Karol,
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`Zhang, and Pearce; and (iv) claims 6, 9-15, and 22-24 of the ’235 Patent
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`are obvious over the combination of Karol, Zhang, and McCullough.
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`(Petition at 4).
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`The 684 Petition also relied on Karol as a primary reference in
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`every ground for challenging claims 4-15, 19, and 22-24. (Ex. 2001 at 4.)
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`Consequently, the instant Petition presents substantially the same
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`prior art and arguments as the 684 Petition.
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`B. Alternative factors previously expressed by the Board
`in favor of denying serial petitions are applicable to
`the instant Petition.
`The present Petition is merely a serial challenge against the same
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`patent claims as the 684 Petition. The facts presented are similar to the
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`facts before the Board in Conopco, Inc. dba Unilever v. The Proctor &
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`Gamble Co, where the Board declined to institute review where the
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`petition raised “substantially the same” arguments as a previously filed
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`petition, even though the prior art relied upon was somewhat different
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`3
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`in the two petitions. (Ex. 2002, Case IPR2014-00628, at 9-10). Of note,
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`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`the Board in Unilever stated the following.
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`Additional factors support our decision declining to institute
`review. Unilever does not argue that the other references
`applied in the instant Petition—Cosmedia, Bar-Shalom, or
`Uchiyama—were unknown or unavailable at the time of
`filing the 510 Petition. That fact supports a reasonable
`inference that those references were known and available to
`Unilever when it requested review the first time. Prelim.
`Resp. 1, 7. On this record, the interests of fairness, economy,
`and efficiency support declining review—a result that
`discourages the filing of a first petition that holds back prior
`art for use in successive attacks, should the first petition be
`denied. See id. at 1 (the instant Petition “simply swap[s] in
`new references, all of which were available to Unilever” at
`the time of filing of the 510 Petition; Unilever should have
`“presented its ‘best case’ in the first petition”).
`(Ex. 2002 at 11).
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`The same additional factors apply here because Petitioner did not
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`argue that the new secondary references applied in the instant Petition
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`(Zhang, McCullough, and Pearce) were unknown or unavailable at the
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`time of the filing of the 684 Petition. Thus, similar to the facts of
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`Case IPR2017-01125
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`Unilever, the Petitioner should have presented its “best case” in the first
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`petition, and the Board should decline review in the present Petition in
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`the interests of fairness, economy, and efficiency in order to discourage
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`the filing of a first petition that holds back prior art for use in
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`successive attacks.
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`Not only has Petitioner engaged in such successive attacks that
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`rely on the same primary reference, but its serial filings were timed to
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`gain a tactical advantage. The 684 Petition is essentially a “copy-cat”
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`petition to IPR2016-00976, filed by a third party. By waiting over two
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`months after its first petition to file the instant Petition, Petitioner was
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`able to read Patent Owner’s February 8, 2017 response in IPR2016-
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`00976, affording Petitioner the tactical advantage of seeing how Patent
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`Owner would respond to the same grounds for challenge presented in
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`the copy-cat 684 Petition. See Toyota Motor Corp. v. Cellport Sys., Inc.,
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`Case IPR2015-01423, Paper 7, at 9 (“[T]he opportunity to read Patent
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`Owner’s Preliminary Response … prior to filing the Petition here, is
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`unjust.”).
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`5
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`Additionally, similar to the facts noted by the Board in Unilever
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`(Ex. 2002 at 11-12), multiple grounds of rejection are raised against the
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`same claims in both the 684 Petition and the present Petition. There is,
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`therefore, a legitimate concern that Patent Owner will have to
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`continually defend against repetitive challenges to the same patent
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`claims, given the multiplicity of grounds applied in each petition. The
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`Board’s resources are wasted if it has to address Petitioner’s second
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`attempt to raise duplicative grounds for challenge against the same,
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`previously-challenged patent claims.
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`6
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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` IV. Conclusion
`For the foregoing reasons, the Patent Owner respectfully requests
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`that the Board exercise its discretion under 35 U.S.C. § 325(d) to deny
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`the Petition.
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`Dated: July 5, 2017
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`Customer Number
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`Tel. (703) 413-3000
`Fax. (703) 413-2220
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`Respectfully submitted,
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`Oblon, McClelland, Maier &
`Neustadt, LLP
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`7
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`WORD COUNT CERTIFICATION OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies the present Patent
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`Owner’s Preliminary Response complies with the type-volume limitation of 37
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`C.F.R. § 42.24(a). The word count application of the word processing program
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`used to prepare this Preliminary Response indicates that the Preliminary Response
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`contains 1,057 words, excluding the parts of the brief exempted by 37 C.F.R. §
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`42.24(a)(1).
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`Dated: July 5, 2017
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`Customer Number
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`Tel. (703) 413-3000
`Fax. (703) 413-2220
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`Respectfully submitted,
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`Oblon, McClelland, Maier &
`Neustadt, LLP
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`CERTIFICATE OF SERVICE
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`Patent Owner’s Preliminary Response
`Case IPR2017-01125
`U.S. Patent No. 6,775,235
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`PATENT OWNER’S PRELIMINARY RESPONSE on the counsel of record for
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`the Petitioner by filing this document through the PTAB E2E System as well as
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`delivering a copy via electronic mail to the following address:
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`Robert C. Hilton
`George B. Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`Dated: July 5, 2017
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`9
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