Trials@uspto.gov
`571-272-7822
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` Paper No. 17
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`Entered: June 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENT INC.,
`Petitioner
`
`v.
`
`PLECTRUM LLC,
`Patent Owner
`____________
`
`IPR2017-01430
`Patent 5,978,951
`____________
`
`
`Before KEN B. BARRETT, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
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`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`

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`IPR2017-01430
`Patent 5,978,951
`
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`I. BACKGROUND
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`
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`Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter partes
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`review of claims 1–6, 8, 11–14, and 21–24 of U.S. Patent No. 5,978,951 (“the ’951
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`patent”). Paper 3. There were four (4) obviousness grounds on which institution
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`was requested. Id. at 4, 21–71. Plectrum LLC (“Patent Owner”) filed a
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`Preliminary Response to the Petition. Paper 7. On November 14, 2017, we issued
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`a Decision instituting inter partes review of claims 8 and 11 of the ’951 patent
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`under one (1) of the four (4) asserted grounds for unpatentability. Paper 8. A
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`Scheduling Order was entered, with an oral hearing date set on August 2, 2018.
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`Paper 9. Petitioner filed a Request for Rehearing (Paper 10) on the issue of the
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`denial of review institution for claims 1–6, 12–14, and 21–24, and that Request
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`was denied (Paper 11).
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`On April 24, 2018, the U.S. Supreme Court held that a final written decision
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`under 35 U.S.C. § 318(a) shall be with respect to the patentability of all of the
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`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1358
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`(2018). As noted above, although Petitioner challenged claims 1–6, 8, 11–14, and
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`21–24 of the ’951 patent, we did not institute review on claims 1–6, 12–14, and
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`21–24.
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`By May 3, 2018 Order, we modified our Decision on Institution to institute
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`on all of the challenged claims and on all of the grounds asserted in the Petition.
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`Paper 15. In that Order, we requested that the parties confer on any impact of the
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`modification of the Decision on Institution on briefing and scheduling, and, if any,
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`request a conference call with the Board. Id. at 1.
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`Pursuant to a further request, we held a conference call with the parties on
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`May 17, 2018, to discuss how the parties sought to proceed in the case in light of
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`SAS and the modified Decision on Institution. Petitioner requested additional
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`

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`IPR2017-01430
`Patent 5,978,951
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`briefing on the newly-instituted claims and grounds to provide a supplemental
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`reply, and proposed that Patent Owner be provided the opportunity to provide a
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`response to the additional briefing, with Petitioner then providing a surreply.
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`Petitioner did not seek to file additional expert declaration(s) nor additional
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`evidence. Patent Owner did not want to file any additional briefing, and opposed
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`any additional briefing by Petitioner. Neither party indicated that a schedule
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`extension was necessary.
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`We considered Petitioner’s request for supplemental briefing and allowed
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`the filing of a ten (10) page brief by Petitioner in a May 18, 2018 Order.1 Paper
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`16.
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`On May 24, 2018, the Board received an email from Petitioner requesting
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`that it be permitted to file a supplemental expert declaration and supporting
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`evidence, in addition to the supplement brief. See Ex. 3001. The Board directed
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`that the parties meet and confer on the issues that Petitioner was proposing to
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`include in any additional expert declaration and any evidence.
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`On June 1, 2018, we held a conference call to discuss Petitioner’s additional
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`request. Although Petitioner had indicated an intention to provide a court reporter
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`for the conference (see Ex 3001), Petitioner, in fact, did not arrange for a reporter,
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`so we will summarize the issues discussed.
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`
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`Petitioner indicated that a meet and confer had been conducted. Petitioner
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`asserted that it now seeks to file a supplemental expert declaration to provide
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`additional testimony of the view of one of ordinary skill in the art at least on the
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`issue of the prior art (e.g., Cheriton) teachings regarding the alleged use of rows in
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`1 Paper 16 erroneously bears the date of “May 16, 2018;” the Order was instead
`docketed and mailed on May 18, 2018.
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`3
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`IPR2017-01430
`Patent 5,978,951
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`caches, as well as how the prior art teaches the comparison of the alleged rows.
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`Petitioner also seeks leave to file at least additional evidence consisting of
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`dictionary definitions to support the expert’s interpretations of the prior art
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`references. Petitioner alleges that, as a matter of due process, it should be
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`permitted to file an additional declaration and evidence to the extent that such
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`evidence would have been permitted had all the claims been originally instituted
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`on. Petitioner also asserts that it should be permitted to respond to Patent Owner
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`Preliminary Response under 37 C.F.R. § 42.23(b), and referred to pages 6–8 of
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`Patent Owner Preliminary Response as examples of portions to which it wants to
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`provide responsive evidence. Petitioner argues that it had established a prima facie
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`case of obviousness for the claims not instituted upon, and also contends that
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`Patent Owner’s arguments presented in its Preliminary Response could not have
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`been reasonably anticipated.
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`Patent Owner objects to allowing filing of additional expert declarations and
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`evidence by the Petitioner, alleging that Petitioner cannot seek to impermissibly
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`supplement a deficient Petition that failed to make a prima facie showing of
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`unpatentability for some of the claims. Patent Owner re-confirmed that it does not
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`want, at this time, to file any additional briefing.
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`II. DISCUSSION
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`
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`Here, we have already permitted Petitioner to file a supplemental brief to
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`address the claims and grounds on which the Board had previously denied
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`institution, even with Patent Owner declining additional briefing. See Paper 16.
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`There is no specific authorization under our rules for additional Petitioner briefing,
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`but we nonetheless allowed the briefing, in light of the circumstances and in an
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`abundance of fairness.
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`4
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`IPR2017-01430
`Patent 5,978,951
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`The issue of allowing additional expert testimony and evidence under these
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`circumstances is also one on which there is no specific authorization under our
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`rules. That said, we consider the issue of whether the additional filings would be
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`permissible to the extent that such evidence would have been permitted had all the
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`claims been originally instituted on.
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`In the Decision to Institute, we determined that the Petition, and the
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`evidence relied upon, failed to demonstrate that Cheriton, the main prior art
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`reference relied upon for the un-instituted claims, failed to explicitly disclose
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`“row” limitations of the claims at issue. Paper 8, 14–15. In the Petition, Petitioner
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`additionally alleged that “[t]o the extent Cheriton does not explicitly state that the
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`lookup or indexing was done by comparing the virtual path cache index to a value
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`associated with a row in the cache” that “it would have been obvious to a person of
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`ordinary skill in the art to compare the virtual path cache index in such a fashion.”
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`See id. at 15 (citing Paper 3, 30). We determined that the Petition failed to
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`demonstrate, and more particularly Petitioner’s expert failed to adequately explain,
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`why one of skill in the art would have viewed or implemented Cheriton in the
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`manner claimed. See id. at 15–16.
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`Our Office Patent Trial Practice Guide states that with regard a reply, it
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`“may only respond to arguments raised in the corresponding opposition,” and
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`further states that:
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`While replies can help crystalize issues for decision, a reply that raises
`a new issue or belatedly presents evidence will not be considered and
`may be returned . . . . Examples of indications that a new issue has
`been raised in a reply include new evidence necessary to make out a
`prima facie case for the patentability or unpatentability of an original
`or proposed substitute claim, and new evidence that could have been
`presented in a prior filing.
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`IPR2017-01430
`Patent 5,978,951
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–48,767 (Aug. 14,
`2012).
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`Here, even if we had instituted review of all the claims and grounds in the
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`Petition, we would nonetheless be disinclined to allow the filing of the additional
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`expert declaration and evidence that Petitioner is seeking to file, because the new
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`evidence is offered to bolster Petitioner’s prima facie case. We are also not
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`persuaded by Petitioner’s argument that it could have not anticipated that Patent
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`Owner would argue the issue that Cheriton’s teachings were deficient with regard
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`to the “row” limitations. The issue that was addressed in the Decision on
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`Institution for the claims at issue was not directed to the details of Patent Owner’s
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`arguments, but rather was to the adequacy of Petition in providing argument and
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`evidence supporting the teaching of the limitations. See Paper 8, 15–16; see also
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`Paper 11, 3–5. Further, the claims at issue contain several limitations involving
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`“rows,” and the necessity of demonstrating the teachings of the prior art as to these
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`limitations in the Petition for the obviousness challenge was apparent. We
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`therefore deny Petitioner’s request to file another expert declaration and additional
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`evidence at this late stage in the proceeding.2
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`Our previous May 18, 2018 Order permitted Petitioner to file supplemental
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`briefing to address the claims and grounds not previously instituted upon, and
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`2 We note that even if Petitioner’s request was couched as a request to file
`supplemental information under 37 C.F.R. § 42.123(b) (“Late submission of
`supplemental information”), that request would have failed because Petitioner did
`not establish during the call that the additional declaration and evidence could not
`have been included in the Petition and the consideration of the information would
`not be in the interests-of-justice (allowing the Petition to be supplemented in the
`manner proposed would prejudice Patent Owner and would circumvent the
`Board’s procedures that disallow new arguments and evidence, to establish a prima
`facie case, presented too late in the proceeding).
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`IPR2017-01430
`Patent 5,978,951
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`addressing related arguments and evidence in the Petition, as well as the Decision
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`to Institute. Paper 16, 3. To the extent Petitioner wishes to address arguments and
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`evidence presented in Patent Owner’s Preliminary Response (Paper 7) related to
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`the previously uninstituted claims and grounds, we modify that Order to also allow
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`the supplemental brief to address those.
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`Accordingly, it is hereby:
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`III. ORDER
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`ORDERED that Petitioner’s request to file an expert declaration and
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`additional evidence is denied; and
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`FURTHER ORDERED that the May 18, 2019 Order is modified to allow
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`Petitioner to address arguments presented in Patent Owner’s Preliminary Response
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`regarding the claims and grounds not previously instituted on.
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`7
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`IPR2017-01430
`Patent 5,978,951
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`PETITIONER:
`
`David L. Cavanaugh
`Daniel V. Williams
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.Cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`
`Roshan Mansinghani
`Jonathan Stroud
`Unified Patents Inc.
`Roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
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`
`
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`PATENT OWNER:
`
`Zachariah S. Harrington
`Larry D. Thompson, Jr.
`Matthew J. Antonelli
`ANTONELLI, HARRINGTON & THOMPSON LLP
`zac@ahtlawfirm.com
`larry@ahtlawfirm.com
`matt@ahtlawfirm.com
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`8
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