UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`PLECTRUM LLC.
`Patent Owner
`
`
`Case: IPR2017-01430
`Patent 5,978,951
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I. Introduction ........................................................................................................ 1
`
`II. Relevant Legal Standards ................................................................................. 3
`
`III. The Petitioner Fails To Meet Its Burden Because It Provides, At Most,
`“Conclusory Statements” Regarding Multiple Claim Elements ......................... 5
`
`
`A. Ground I: The Petition Fails to Adequately Explain How Claims 1, 2, and
`21 Are Rendered Obvious By Cheriton .............................................................. 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1. “comparing said coded address to a value associated with a row within
`a cache” (claim 1), “using said received, encoded address information to
`identify one of said cache rows” (claim 2), and “a cache having plural
`rows, each of said rows having plural entries” … “using said header data
`as said cache address to identify a cache entry” (claim 21) ....................... 6
`
`2. “data unit forwarding engine, in communication with … said data unit
`header processor” (claim 21) ...................................................................... 9
`
`B. Ground II: The Petition Fails To Adequately Explain How Dependent
`Claims 3, 5, And 6 Are Rendered Obvious By Cheriton In View Of Kessler ..10
`
`1. The Petition Fails To Sufficiently Explain A Rationale For Combining
`Cheriton And Kessler ...............................................................................11
`
`C. Ground III: The Petition Fails To Adequately Explain How Dependent
`Claims 4 And 22-24 Are Rendered Obvious By Cheriton In View Of Kessler In
`View Of Jain .....................................................................................................12
`
`1. The Petition Fails To Adequately Explain A Rationale For Combining
`Cheriton And Jain ....................................................................................13
`
`D. Ground IV: The Petition Fails To Adequately Explain How Claims 8 And
`11-14 Are Rendered Obvious By Cheriton In View Of Jain ............................15
`
`1. Petition Deficiencies Regarding Independent Claim 8 ........................15
`
`a. “a cyclic redundancy code (CRC) generator in communication with
`said input register” (claim 8) ...............................................................15
`
`ii
`
`

`

`
`
`b. Input Packetizer/Output Packetizer Of Claim 8 ..............................16
`
`IV. Additional Grounds For Denying Institution ............................................... 17
`
`
`A. The Petition Fails To Name All Real Parties-In-Interest, Contrary To 35
`U.S.C. § 312(a)(2) And 37 C.F.R. § 42.8(b)(1) ...............................................17
`
`
`
`B. An Inter Partes Review Should Not Be Instituted Because Such
`Proceedings Are Unconstitutional ...................................................................24
`
`V. Conclusion ........................................................................................................ 24
`
`
`
`
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-
`00440 .....................................................................................................................18
`
`
`DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006 ........................ 4, 10, 12, 14
`
`General Foods Corp. v. Massachusetts Department of Public Health, 648 F.2d
`784, 788 (1st Cir. 1981) ........................................................................................22
`
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) ................ 3
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) .... passim
`
`Jiawei Tech. Ltd. v. Simon Nicholas Richmond, IPR2014-00935 ...........................18
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, S. Ct. No. 16-
`712 (certiorari granted June 12, 2017). .................................................................25
`
`
`RPX Corp. v. VirnetX, Inc., IPR2014-00171 .............................................. 22, 23, 25
`
`Unified Patents Inc. v. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A.,
`IPR2017-00565 ............................................................................................. passim
`
`
`Statutes
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 4
`
`35 U.S.C. § 314(a) ..................................................................................................... 4
`
`35 U.S.C. § 315(e)(2) ...............................................................................................25
`
`Rules
`
`37 C.F.R. § 42.104 ..................................................................................................... 4
`
`37 C.F.R. § 42.107(a) ................................................................................................. 1
`
`
`
`iv
`
`

`

`
`37 C.F.R. § 42.8(b)(1) ..............................................................................................18
`
`Other Authorities
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48759 .........................................16
`
`
`
`
`
`
`
`v
`
`

`

`EXHIBIT LIST
`
`
`
`Exhibit 2001
`
`United States Pat. No. 6,711,562
`
`Exhibit 2002
`
`Unified Patents Press Release Dated 9/23/2013
`
`Exhibit 2003
`
`Unified Patents, Frequently Asked Questions
`
`Exhibit 2004
`
`Unified Patents Press Release Dated 9/17/2013
`
`Exhibit 2005
`
`New Venture Enters Patent Fray, Wall Street Journal
`
`
`
`
`
`
`
`
`
`vi
`
`

`

`I.
`
`Introduction
`
`Pursuant to 37 C.F.R. § 42.107(a), patent owner, Plectrum LLC (“Patent
`
`Owner”), submits this Preliminary Response to the Petition for Inter Partes
`
`Review of U.S. Patent No. 5,978,951 (“the ‘951 patent”) filed by Unified Patents
`
`Inc. (“Petitioner”). The Petition (IPR2017-01430) challenges claims 1-6, 8, 11-14,
`
`and 21-24 of the ‘951 patent, which include independent claims 1, 2, 8, and 21.
`
`Grounds I, II, III, and IV fail with respect to all challenged claims.
`
`The Petition fails to provide the “full statement of the reasons for the relief
`
`requested, including a detailed explanation of the significance of the evidence...”
`
`required by 37 C.F.R. § 42.22(a)(2). The petition’s “explanation” for several claim
`
`elements consists of a couple of conclusory statements without any further
`
`explanation or supporting evidence. One particularly glaring example is the
`
`petition’s treatment of Claim 8’s “a cyclic redundancy code (CRC) generator.”
`
`Petitioner’s entire analysis regarding the alleged obviousness of this element of
`
`claim 8 is a reference to the petition’s claim 22 analysis, but the claim 22 analysis
`
`starts by referring to the petition’s claim 8 analysis. Such circular citations are not
`
`the kind of “detailed explanation” required of a petition for inter partes review.
`
`And although the petition is based solely on obviousness grounds, Petitioner
`
`fails to explain, in more than a conclusory manner, why certain limitations would
`
`have been obvious to a person of ordinary skill in the art or why (and how) a
`
`
`
`1
`
`

`

`person of ordinary skill in the art would have combined the cited references. For
`
`example, the petition’s entire explanation of obviousness regarding Claim 21’s
`
`“data unit forwarding engine” and “data unit header processor” consists of
`
`Petitioner stating a few legal standards without explaining why those standards
`
`apply to these particular elements:
`
`To the extent Cheriton does not explicitly disclose the
`switch hardware having a data unit forwarding engine
`separate from the data unit header processor, it would have
`been obvious to a person of ordinary skill in the art to
`separate these two distinct functions into two distinct
`blocks. (Seshan ¶146 (EX1007)). Such a separation
`would have been no more than the rearrangement of
`known elements employed for their known functions.
`
`(Petition at 47-48) (emphasis added). Both the PTAB and the Federal Circuit
`
`routinely reject such conclusory statements made to support a case of obviousness.
`
`Finally, the Declaration of Dr. Srinivasan Seshan (“Seshan Declaration”),
`
`cited throughout the petition, contains nothing more than verbatim copies of each
`
`paragraph of the petition. For that reason alone, the Seshan Declaration is entirely
`
`unhelpful. In sum, the petition does not come close to meeting its burden to show a
`
`reasonable likelihood of prevailing with respect to even a single claim. Thus,
`
`Patent Owner respectfully requests that the Board deny institution of Grounds I, II,
`
`III, and IV of the Petition on the merits, and decline to institute inter partes review
`
`of the ʼ951 patent.
`
`
`
`2
`
`

`

`II. Relevant Legal Standards
`
`An inter partes review may be instituted only if “the information presented
`
`in the petition . . . and any response . . . shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. § 314(a).
`
`“[T]he petitioner has the burden from the onset to show with particularity
`
`why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc.,
`
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); Samsung
`
`Electronics Co. v. Image Processing Technologies LLC, IPR2017-01189, Paper
`
`No. 9 at 18-19 (2017) (“It is Petitioner’s burden to explain how the asserted prior
`
`art[] renders the claims unpatentable.”). For the petitioner to meet its burden of
`
`proof, the petition must contain sufficient evidence and argument, including “[a]
`
`full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence including material facts, the
`
`governing law, rules, and precedent.” See 37 C.F.R. § 42.22(a)(2). See also 37
`
`C.F.R. § 42.104 (requiring IPR petitions to meet the requirements of §§ 42.6, 42.8,
`
`42.22 and 42.23).
`
`While a petition may rely on declaration evidence to provide the required
`
`specific reasoning, a declaration that simply repeats the language of a deficient
`
`petition does not cure that petition. See, e.g., Unified Patents Inc. v. Societa
`
`
`
`3
`
`

`

`Italiana Per Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at
`
`13 (2017) (rejecting declaration evidence where declaration “merely repeats,
`
`verbatim, the language of the Petition.”) (citing 37 C.F.R. § 42.65(a) (“Expert
`
`testimony that does not disclose the underlying facts or data on which the opinion
`
`is based is entitled to little or no weight”)); see also Samsung Electronics Co. v.
`
`Image Processing Technologies LLC, IPR2017-01189, Paper No. 9 at 18-19 (2017)
`
`(“Dr. Hart’s testimony is also unavailing, adding nothing beyond the statements
`
`already in the Petition.”); DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006,
`
`Paper No. 6 at 10-11 (2016). Likewise, in a petition asserting obviousness grounds,
`
`“a petitioner cannot employ mere conclusory statements” to satisfy its burden of
`
`proving obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016). Rather, the petitioner must “articulate specific reasoning, based
`
`on evidence of record, to support the legal conclusion of obviousness.” Id; see also
`
`Samsung Electronics Co. v. Image Processing Technologies LLC, IPR2017-01189,
`
`Paper No. 9 at 18-19 (2017) (“Petitioner’s conclusory statement, without further
`
`explanation as to how the cited disclosures in [prior art reference] Pirim support
`
`that conclusion, is insufficient to meet its burden.”).
`
`Where the petition fails to meet this burden, the Board is not “free to adopt
`
`arguments on behalf of petitioners that could have been, but were not, raised by the
`
`petitioner.” See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir.
`
`
`
`4
`
`

`

`2016) (noting that while “[i]t is true that the entire IPR process is one designed as
`
`an ‘efficient system for challenging patents that should not have issued,’” “it is still
`
`a system that is predicated on a petition followed by a trial in which the petitioner
`
`bears the burden of proof.”).
`
`III. The Petitioner Fails To Meet Its Burden Because It Provides, At Most,
`
`“Conclusory Statements” Regarding Multiple Claim Elements
`
`The petition proposes four grounds of unpatentability, all based on
`
`obviousness: Ground I (Claims 1, 2, and 21 allegedly rendered obvious by
`
`Cheriton); Ground II (Claims 3, 5, and 6 allegedly rendered obvious by Cheriton in
`
`view of Kessler); Ground III (Claims 4 and 22-24 allegedly rendered obvious by
`
`Cheriton in view of Kessler in view of Jain); and Ground IV (Claims 8 and 11-14
`
`allegedly rendered obvious by Cheriton in view of Jain). (Petition at 21-51; 51-56;
`
`57-62; and 62-71, respectively.) As explained further below, the petition fails to
`
`meet its burden of showing, with particularity, the unpatentability of the claims
`
`contested in each of these four grounds.
`
`
`
`5
`
`

`

`A. Ground I: The Petition Fails to Adequately Explain How
`
`Claims 1, 2, and 21 Are Rendered Obvious By Cheriton
`
`1. “comparing said coded address to a value associated with a
`
`row within a cache” (claim 1), “using said received, encoded
`
`address information to identify one of said cache rows”
`
`(claim 2), and “a cache having plural rows, each of said
`
`rows having plural entries” … “using said header data as
`
`said cache address to identify a cache entry” (claim 21)
`
`Claim 1 recites “comparing said coded address to a value associated with a
`
`row within a cache,” claim 2 recites “a network element having a cache comprised
`
`of plural rows” and “using said received, encoded address information to identify
`
`one of said cache rows” and claim 21 recites “a cache having plural rows, each of
`
`said rows having plural entries” and “for using said header data as said cache
`
`address to identify a cache entry.” As explained further below, Petitioner has not
`
`met its burden regarding these elements.
`
`As a preliminary matter, Cheriton does not once use the words “row” or
`
`“rows” to describe the organization of its cache. Petitioner states, without
`
`explaining, that Cheriton discloses a cache with rows as recited in claims 1, 2, and
`
`21. (See, e.g., Petition at 45) (“Cheriton discloses a cache having plural rows[.]”)
`
`Petitioner appears to assume the presence of rows in Cheriton’s cache
`
`because (1) Cheriton’s cache is indexed across four SRAM memories and (2)
`
`Cheriton’s cache is organized as a 4-set associative cache. (Petition at 23, 30-31,
`
`
`
`6
`
`

`

`37-38, and 45.) Neither reason supports Petitioner’s assumption. As for the first
`
`reason, indexing in and of itself does not necessarily indicate the use of rows, as
`
`data could be stored sequentially in blocks instead of in a table with rows. And as
`
`for the second reason, the petition’s evidence, Exhibit 1019 (U.S. Patent No.
`
`5,226,147 to Fujishima) (“Fujishima”), does not show that all 4-set associative
`
`caches use rows. Instead, the cited portion of Fujishima merely refers to rows and
`
`columns in a memory cell array:
`
`The SRAM memory cell array 12 is provided with a cache row
`decoder 43, a cache I/O switching portion 44 and a cache column
`decoder portion 45. The cache row decoder 43 is responsive to a
`cache row address signal applied from a cache address buffer 46 for
`selecting one row in the SRAM memory cell array 12.
`
`Fujishima at 12:49-54. Such language does not show that all 4-set associative
`
`caches use rows. Indeed, cache memories may be organized by several methods
`
`other than rows and columns, including, for example, by tree structures. See, e.g.,
`
`Ex. 2001, U.S. Pat. No. 6,711,562 at 4:24-36; 7:24-41 (describing cache indexing
`
`with “B+-Trees” and with a “cache sensitive search tree,” respectively). To the
`
`extent Petitioner is arguing that rows are inherently disclosed in Cheriton,
`
`Petitioner’s conclusory statements do not come close to meeting the high burden to
`
`show inherency. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“To
`
`establish inherency, … evidence must make clear that the missing descriptive
`
`matter is necessarily present in the thing described in the reference, and that it
`
`
`
`7
`
`

`

`would be so recognized by persons of ordinary skill… The mere fact that a certain
`
`thing may result from a given set of circumstances is not sufficient.”) (emphasis
`
`added).
`
`Nor does Petitioner sufficiently explain how Cheriton’s virtual path cache
`
`index is compared to a value associated with a row in the cache (claim 1) or used
`
`to “identify” a row in the cache or any entry in a cache row (claims 2 and 21). For
`
`example, the Petition argues that Cheriton’s description of how its virtual path
`
`cache index is used to index and look up “four parallel sets of the virtual path
`
`cache SRAMs 601 through 604” discloses the claimed “comparing said coded
`
`address to a value associated with a row in the cache” and the similar elements of
`
`claims 2 and 21. (See Petition at 30-31, 39-40, and 49.) Having incorrectly
`
`assumed that Cheriton’s cache has rows, Petitioner likewise incorrectly assumes
`
`that any “indexing” or “looking up” in Cheriton is done relative to cache rows
`
`(even in alleging that these elements would have been obvious).
`
`The petition cites paragraphs of the Seshan Declaration in support of its
`
`arguments, but as noted above those paragraphs (¶¶ 62, 87-89, 105-106, 115-116,
`
`137, and 153) literally repeat the petition paragraphs (at pages 23, 30-31, 37-38,
`
`39-40, 45, and 49) that cite the declaration. They thus add nothing of substance and
`
`should not be given any weight. See, e.g., Unified Patents Inc. v. Societa Italiana
`
`Per Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at 13
`
`
`
`8
`
`

`

`(2017) (rejecting declaration evidence where declaration “merely repeats,
`
`verbatim, the language of the Petition.”)
`
`2. “data unit forwarding engine, in communication with … said
`
`data unit header processor” (claim 21)
`
`Claim 21 recites “a data unit forwarding engine, in communication with said
`
`cache management unit and said data unit header processor.”
`
`The petition identifies switch hardware 409 of Cheriton as disclosing the
`
`“data unit forwarding engine” of claim 21. (Petition at 47.) Three pages before, the
`
`petition already identified switch hardware 409 as disclosing the “data unit header
`
`processor” of claim 21. (Petition at 44.) In the face of these contradictory positions,
`
`Petitioner offers only unsupported, conclusory assertions that switch hardware 409
`
`can disclose both elements. For example, the petition states that “the portion of the
`
`switch hardware that processes data headers and the portion that forwards data
`
`units are in communication...”), citing the Seshan Declaration at ¶ 145. (Petition at
`
`47) (emphasis added). Paragraph 145 of the Seshan declaration, however, simply
`
`repeats the petition paragraph that cites it. (Compare Petition at 47 with Exhibit
`
`1007 ¶ 145). As in Unified Patents Inc. v. Societa Italiana Per Lo Sviluppo
`
`Dell’Elettronica S.P.A., this declaration should be entitled to little or no weight.
`
`IPR2017-00565, Paper No. 13 at 13 (2017).
`
`Perhaps recognizing the deficiency in its argument, Petitioner attempts to
`
`bolster its case with an assertion that it would have been obvious to have the two
`
`
`
`9
`
`

`

`separate claimed units in Cheriton’s switch hardware. (Petition at 47-48.) Yet in
`
`doing so, the petition merely states a standard for obviousness without explaining
`
`why that standard applies in this situation:
`
`To the extent Cheriton does not explicitly disclose the
`switch hardware having a data unit forwarding engine
`separate from the data unit header processor, it would have
`been obvious to a person of ordinary skill in the art to
`separate these two distinct functions into two distinct
`blocks. (Seshan ¶146 (EX1007)). Such a separation
`would have been no more than the rearrangement of
`known elements employed for their known functions.
`
`(Petition at 47-48) (emphasis added). The only citation in support of this
`
`obviousness argument is to a paragraph in the Seshan Declaration, but that
`
`paragraph (¶ 146) is of course a verbatim copy of the quoted petition paragraph
`
`above. Both the PTAB and the Federal Circuit routinely reject such conclusory and
`
`unsupported statements made to support a case of obviousness, and Patent Owner
`
`requests that the PTAB do the same here. See In re Magnum Oil Tools Int’l, Ltd.,
`
`829 F.3d 1364, 1380 (Fed. Cir. 2016); see also DirecTV, LLC v. Qurio Holdings,
`
`Inc., IPR2015-02006, Paper No. 6 at 10-11 (2016).
`
`B. Ground II: The Petition Fails To Adequately Explain How
`
`Dependent Claims 3, 5, And 6 Are Rendered Obvious By
`
`Cheriton In View Of Kessler
`
`Petitioner does not contend that Kessler or the allegedly obvious
`
`combination of Cheriton and Kessler cures any of the deficiencies identified above
`
`
`
`10
`
`

`

`with respect to Ground I and independent claim 2, upon which claims 3, 5, and 6
`
`depend. For that reason alone, an inter partes review should not be instituted on
`
`Ground II. Moreover, as explained further below, an inter partes review should not
`
`be instituted on Ground II because the petition does not sufficiently explain a
`
`rationale for combining Cheriton and Kessler.
`
`1. The Petition Fails To Sufficiently Explain A Rationale For
`
`Combining Cheriton And Kessler
`
`The entirety of the petition’s obviousness analysis regarding a rationale for
`
`combining Cheriton and Kessler is as follows:
`
`It would have been obvious to implement the “MRU Approach” of
`Kessler as an alternative to the parallel comparison of Cheriton.
`Both Kessler and Cheriton involve a set-associative cache, and
`Kessler explicitly notes the serial MRU approach as an alternative
`to the parallel approach. (Seshan ¶163 (EX1007)). Such a
`combination would be nothing more than the routine substitution of
`one known element for another known element, with both elements
`performing their known and well-understood function. (Seshan
`¶163 (EX1007)). The substitution would require nothing more than
`ordinary engineering judgment; as Kessler notes, the MRU
`Approach is less expensive than the traditional approach, at the
`expense of some speed. (Kessler, 132 (EX1004)). It would be within
`the skill of a person of ordinary skill in the art to balance cost and
`speed considerations and select appropriately, including selecting
`the MRU Approach in cost-sensitive applications. (Seshan ¶163
`(EX1007)).
`
`(Petition at 52-53).
`
`In effect, the petition suggests that sequential retrieval would be rendered
`
`obvious over Cheriton and Kessler, but provides no explanation of (a) how
`
`
`
`11
`
`

`

`Kessler’s MRU would be incorporated into the system of Cheriton, (b) what
`
`effects such incorporation might have, (c) why one of skill in the art would seek to
`
`change Cheriton’s system, or (d) why it would have been “a routine substitution”
`
`requiring “nothing more than ordinary engineering judgment” to do so. Rather,
`
`Petitioner makes the above conclusory assertions, stating legal standards without
`
`providing explanation or evidence. See In re Magnum Oil Tools Int’l, Ltd., 829
`
`F.3d 1364, 1380 (Fed. Cir. 2016); see also DirecTV, LLC v. Qurio Holdings, Inc.,
`
`IPR2015-02006, Paper No. 6 at 10-11 (2016). The cited paragraph of the Seshan
`
`Declaration repeats this same language of the petition and thus should be given no
`
`weight. See, e.g., Unified Patents Inc. v. Societa Italiana Per Lo Sviluppo
`
`Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at 13 (2017) (rejecting
`
`declaration evidence where declaration “merely repeats, verbatim, the language of
`
`the Petition.”)
`
`C. Ground III: The Petition Fails To Adequately Explain How
`
`Dependent Claims 4 And 22-24 Are Rendered Obvious By
`
`Cheriton In View Of Kessler In View Of Jain
`
`
`
`Petitioner does not contend that Kessler, Jain, or the allegedly obvious
`
`combination of Cheriton, Kessler, and Jain cures any of the deficiencies identified
`
`above with respect to Ground I and independent claims 2 and 21, upon which
`
`claims 4 and 22-24 depend, respectively. Likewise, the petition does not provide
`
`
`
`12
`
`

`

`additional reasoning for combining Cheriton and Kessler to cure the deficiencies
`
`identified above with respect to Ground II and claim 3, upon which claim 4
`
`depends. For those reasons alone, an inter partes review should not be instituted on
`
`Ground III. Moreover, as explained further below, an inter partes review should
`
`not be instituted on Ground III because the petition does not sufficiently explain a
`
`rationale for combining Cheriton and Jain.
`
`1. The Petition Fails To Adequately Explain A Rationale For
`
`Combining Cheriton And Jain
`
`The petition contends that “it would have been obvious to use the CRC
`
`generator of Jain as the hash function logic of Cheriton.” (Petition at 58, 59.) As
`
`support for this contention, the petition notes (1) Cheriton’s statement that other
`
`hash functions can be used, and (2) Jain’s alleged description of CRC hashing as
`
`an alternative to XOR-based hashing. Id. Without further explanation or support,
`
`the petition concludes that “[s]uch a combination would be nothing more than the
`
`routine substitution of one known element for another known element, with both
`
`elements performing their known and well-understood function.” Id (citing Seshan
`
`¶ 177).
`
`While these statements may suggest that it would have been possible for one
`
`of ordinary skill in the art to use Jain’s CRC hashing in place of hash function
`
`logic, the petition does nothing to address a number of questions relevant to
`
`determining obviousness, including (a) how Jain’s CRC hashing would be
`
`
`
`13
`
`

`

`incorporated into the system of Cheriton, (b) what effects such incorporation might
`
`have, (c) why one of skill in the art would seek to change Cheriton’s hash function
`
`logic, or (d) why replacing the hash function logic with Jain’s CRC hashing would
`
`have been “a routine substitution of one known element for another known
`
`element, with both elements performing their known and well-understood
`
`function.” Simply stating various legal standards without providing explanation or
`
`evidence, as Petitioner does here, is not a sufficient explanation of obviousness.
`
`See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); see
`
`also DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02006, Paper No. 6 at 10-11
`
`(2016). Nor do the cited paragraphs of the Seshan declaration provide a sufficient
`
`explanation, as they only repeat the deficient petition language and should thus be
`
`given little weight (if any). See, e.g., Unified Patents Inc. v. Societa Italiana Per
`
`Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-00565, Paper No. 13 at 13 (2017)
`
`(rejecting declaration evidence where declaration “merely repeats, verbatim, the
`
`language of the Petition.”)
`
`
`
`14
`
`

`

`D. Ground IV: The Petition Fails To Adequately Explain How
`
`Claims 8 And 11-14 Are Rendered Obvious By Cheriton In
`
`View Of Jain
`
`1. Petition Deficiencies Regarding Independent Claim 8
`
`a. “a cyclic redundancy code (CRC) generator in
`
`communication with said input register” (claim 8)
`
`Claim 8 recites “a cyclic redundancy code (CRC) generator in
`
`communication with said input register for executing a CRC algorithm on each of
`
`said received source and destination addresses from said input register to form
`
`respective CRC encoded addresses.” Petitioner’s entire analysis regarding the
`
`alleged obviousness of this element of claim 8 refers to its claim 22 analysis:
`
`As described above in Section VII(C)(3)(a) with respect to claim
`22, it would have been obvious to use the CRC hashing and CRC
`generator of Jain in place of the XOR-based hashing and hash
`function logic of Cheriton.
`
`(Petition at 64.) Yet, the very first sentence of Section VII(C)(3)(a) is: “As
`
`described above with respect to claim 8, it would have been obvious to use the
`
`CRC hashing algorithm of Jain as the hashing function applied to the network
`
`address in Cheriton.” (Petition at 59.) Such circular citations are of absolutely no
`
`help, especially in light of the requirement for a “detailed explanation.”
`
`Unsurprisingly, the Seshan Declaration makes the exact same circular citation.
`
`(Seshan Decl. at ¶¶ 196, 180.)
`
`Moreover, the remainder of Section VII(C)(3)(a) of the Petition has not
`
`
`
`15
`
`

`

`sufficiently explained a rationale for combining Cheriton and Jain, as discussed
`
`herein regarding Ground III. For those same reasons, the petition also fails
`
`regarding this element of claim 8.
`
`b. Input Packetizer/Output Packetizer Of Claim 8
`
`Claim 8 recites “an input packetizer in communication with said CRC
`
`generator and said input register for formatting said CRC encoded addresses and
`
`for receiving said received source and destination addresses from said input
`
`register” and “an output packetizer in communication with said cache lookup unit
`
`for receiving and formatting retrieved source and destination address information
`
`from said cache.” Petitioner fails to adequately explain how Cheriton and/or Jain
`
`discloses the claimed “input packetizer” and “output packetizer” of claim 8.
`
`The petition points to the “hash function logic” of Cheriton as disclosing the
`
`claimed “input packetizer” and points to “tri-state buffer and/or data bus interface
`
`circuitry” in Cheriton as disclosing the claimed “output packetizer,” (Petition at
`
`65-66, 68), but it provides no explanation as to how those portions of Cheriton are
`
`“packetizers.” For example, the petition does not identify how any of the hash
`
`function logic, the tri-state buffer, or the data bus interface circuitry of Cheriton
`
`“packetizes” anything, nor does the petition even identify something that is
`
`“packetized” at all. And because the cited paragraphs of the Seshan declaration (¶¶
`
`199-201 and 207-209) repeat the same conclusory language in the petition, they
`
`
`
`16
`
`

`

`add nothing of substance and should be given little to no weight. See, e.g., Unified
`
`Patents Inc. v. Societa Italiana Per Lo Sviluppo Dell’Elettronica S.P.A., IPR2017-
`
`00565, Paper No. 13 at 13 (2017) (rejecting declaration evidence where declaration
`
`“merely repeats, verbatim, the language of the Petition.”)
`
`IV. Additional Grounds For Denying Institution
`
`A. The Petition Fails To Name All Real Parties-In-Interest,
`
`Contrary To 35 U.S.C. § 312(a)(2) And 37 C.F.R. § 42.8(b)(1)
`
`35 U.S.C. § 312(a)(2) states that “[a] petition filed under section 311 may be
`
`considered only if … the petition identifies all real parties in interest.” 35 U.S.C. §
`
`312(a)(2). See also 37 C.F.R. § 42.8(b)(1) (requiring identification of each real
`
`party-in-interest in the petition). In this case, there is strong evidence suggesting
`
`that the Petition is defective because Petitioner is not the sole real party-in interest.
`
`As such, Petitioner bears the burden of showing with evidence that it is the sole
`
`real party-in-interest; and Petitioner has not met that burden.
`
`The “‘real party-in-interest’ is the party that desires review of the patent,”
`
`and may be the petitioner itself, and/or it may be the party or parties “at whose
`
`behest the petition has been filed.” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48759-60 (emphasis added). The identification of real parties-in-interest is a
`
`“highly fact-dependent question.” Id.
`
`The Board ordinarily accepts a petitioner’s certification regarding the
`
`identification of real parties-in-interest at the time the petition is filed–i.e. there is a
`
`
`
`17
`
`

`

`rebuttable presumption that the petitioner has correctly identified all real parties in-
`
`interest. See Jiawei Tech. Ltd. v. Simon Nicholas Richmond, IPR2014-00935,
`
`Paper No. 52 at 5 (2015). “However, when a patent owner provides sufficient
`
`rebuttal evidence that reasonably brings into question the accuracy of the
`
`petitioner’s identification, the ultimate burden of proof remains with the petitioner
`
`to establish that it has complied with the statutory requirement of 35 U.S.C.
`
`§312(a) to identify all real parties in interest.” Id. See also, Corning Optical
`
`Communications RF, LLC v. PPC Broadban