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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`VIPTELA, INC.,
`
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LIMITED,
`
`Patent Owner.
`______________
`
`Case IPR2017-00680
`
`U.S. Patent No. 7,406,048
`
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Fatpipe Exhibit 2011, pg. 1
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`
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`
`
`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
`
`
`
`
`TABLE OF CONTENTS
`
`
`Introduction ....................................................................................... 1
`I.
`II. The Board should exercise its discretion
`under 35 U.S.C. § 325(d) to deny the Petition. ................................ 1
`A. The Petition presents the same prior art and
`substantially the same arguments as those
`presented to the Board in IPR2016-00977. ...................................... 2
`B. The Declarations of Dr. Leonard J. Forys and
`Dr. Kevin Negus are substantially the same. .................................. 7
`III. If instituted, this proceeding should be merged
`with IPR2016-00977. ....................................................................... 10
`IV. Conclusion ........................................................................................ 11
`
`
`
`
`
`
`
`
`i
`
`Fatpipe Exhibit 2011, pg. 2
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`
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`TABLE OF AUTHORITIES
`
`Statutes
`
`35 U.S.C. 102…………………………………………….……….….2
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`35 U.S.C. 103………………………………………………….…..2, 3
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`
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`35 U.S.C. 325(d)……………………………………………. 1, 10, 11
`
`
`
`Rules
`
`37 C.F.R. § 42.107………………………………………………….. 1
`
`37 C.F.R. § 42.1(b)…………………………………………………10
`
`
`
`ii
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`Fatpipe Exhibit 2011, pg. 3
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`TABLE OF EXHIBITS
`
`Exhibit Description
`PTAB Decision Instituting Inter Partes Review in IPR 2016-
`2001
`00977
`Petition for Inter Partes Review in IPR 2016-00977
`Declaration of Dr. Kevin Negus filed in IPR 2016-00977
`
`2002
`2003
`
`
`
`
`iii
`
`Fatpipe Exhibit 2011, pg. 4
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`
`
`I.
`
`
`Introduction
`Viptela, Inc. (“Petitioner”) filed a Petition for Inter Partes Review
`
`of U.S. Patent No. 7,406,048 (“the ’048 Patent”) on January 13, 2017
`
`(Paper 1, “the Petition”). The Board mailed a Notice of Filing Date
`
`Accorded to Petition on February 2, 2017 (Paper 3). Pursuant to 37
`
`C.F.R. § 42.107, Patent Owner FatPipe Networks Private Limited and
`
`exclusive licensee FatPipe, Inc. (for the purposes of consistency with
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`Board convention, referred to as “Patent Owner”) timely submits this
`
`Preliminary Response.
`
`
`
`Patent Owner respectfully requests that the Board exercise its
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`discretion under 35 U.S.C. § 325(d) to deny the Petition because the
`
`Petition presents the same prior art and substantially the same
`
`arguments as those already being considered by the Board in IPR 2016-
`
`00977.
`
`II. 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
`
`petition if it merely presents prior art and arguments already presented
`
`to the Office. Specifically, 35 U.S.C. § 325(d) sets forth that “In
`
`determining whether to institute or order a proceeding under this
`
`
`
`1
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`Fatpipe Exhibit 2011, pg. 5
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`
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`chapter, chapter 30 , or chapter 31, the Director may take into account
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
`
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`whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were
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`presented to the Office.”
`
`As explained below, the Petition relies on the same prior art and
`
`presents substantially the same arguments that were presented in the
`
`petition in IPR 2016-00977, which was instituted on November 2, 2016.
`
`(Ex. 2001.)
`
`A. The Petition presents the same prior art and
`substantially the same arguments as those presented
`to the Board in IPR2016-00977.
`The Petition relies on U.S. Patent No. 6,628,617 to Karol et al.
`
`
`
`(“Karol”; Ex. 1006) and Data and Computer Communications by
`
`William Stallings, Prentice-Hall, 5th Ed., 1997, ISBN-81-203-1240-6
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`(“Stallings”; Ex. 1011) in order to present its grounds of rejection.
`
`(Petition at 3-4.) Specifically, the Petition contends that claims 1, 3-4,
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`6-7, 9-10, 12-13, 15-16, 18-19, 21-22, and 24 of the ’048 Patent are
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`anticipated under 35 U.S.C. § 102 by Karol; that claims 1-5, 7-11, 13-17,
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`and 19-23 of the ’048 patent are obvious under 35 U.S.C. § 103 based on
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`Karol and Stallings; and that claims 1-24 of the ’048 Patent are obvious
`
`2
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`Fatpipe Exhibit 2011, pg. 6
`Cisco v. Fatpipe
`IPR2017-01845
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`under 35 U.S.C. § 103 based on Karol. (Petition at 4.) The petition in
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
`
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`IPR 2016-00977 also relied on Karol and Stallings to propose the
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`identical grounds for unpatentability. (Ex. 2002 at 3-4.) Thus, the
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`Petition does not add any new prior art over the prior art already being
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`considered by the Board in IPR 2016-00977.
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`
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`The Petition also presents nearly verbatim arguments as those
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`presented in IPR 2016-00977. For example, in attempting to describe
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`how Karol purportedly anticipates the preamble of claim 1, the Petition
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`states at page 10:
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`
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`
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`3
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`Fatpipe Exhibit 2011, pg. 7
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`The petition in IPR 2016-00977 uses nearly identical language (Ex.
`
`2002 at 10-11):
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`
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`4
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`Fatpipe Exhibit 2011, pg. 8
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`With respect to the preamble of claim 1, the Petition concludes at
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`page 11:
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`
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`
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`5
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`Fatpipe Exhibit 2011, pg. 9
`Cisco v. Fatpipe
`IPR2017-01845
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`12):
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`Similarly, the petition in IPR 2016-00977 states (Ex. 2002 at 11-
`
`
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`6
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`Fatpipe Exhibit 2011, pg. 10
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`This is just one of many examples of the how the Petition merely
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`
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`
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`parrots arguments that rely on the same prior art and that are nearly
`
`identical to those already being considered by the Board in IPR 2016-
`
`00977. No new prior art or material arguments are added.
`
`B. The Declarations of Dr. Leonard J. Forys and Dr.
`Kevin Negus are substantially the same.
`Petitioner filed a Declaration from Leonard J. Forys (“the Forys
`
`Declaration”; Ex. 1005) to support the arguments in the Petition.
`
`However, the statements in the Forys Declaration closely mirror those
`
`in the Declaration of Kevin Negus (“the Negus Declaration”; Ex. 2003)
`
`filed in IPR 2016-00977 in support of the petition in that proceeding.
`
`
`
`With regard to the purported anticipation of claim 1 by Karol, the
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`Forys Declaration states (Ex. 1005 at 69-70):
`
`7
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`Fatpipe Exhibit 2011, pg. 11
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`The Negus Declaration makes virtually the same statement with
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`the same emphases (Ex. 2003 at 73-74):
`
`8
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`Fatpipe Exhibit 2011, pg. 12
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`This is just one of many examples of how the Forys Declaration
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`filed in support of the Petition and the Negus Declaration filed in IPR
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`2016-00977 include nearly identical statements. Thus, the Petition,
`
`even when considered in light of the Forys Declaration, does not add
`
`any new arguments that are not already being considered by the Board
`
`in IPR 2016-00977.
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`
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`
`
`9
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`Fatpipe Exhibit 2011, pg. 13
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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`III. If instituted, this proceeding should be merged with
`IPR2016-00977.
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`
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`Under 35 U.S.C. § 325(d), the Board has discretion to merge
`
`proceedings. Given that this inter partes review relies on the same
`
`prior art and presents substantially the same arguments as IPR 2016-
`
`00977, Patent Owner respectfully requests that, if this inter partes
`
`review is instituted, the two proceedings be merged for the sake of
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`securing a just, speedy and inexpensive resolution to the dispute
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`regarding the ’048 patent. (37 C.F.R. § 42.1(b).)
`
`10
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`Fatpipe Exhibit 2011, pg. 14
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-00680
`U.S. Patent No. 7,406,048
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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. Alternatively, Patent Owner respectfully requests that
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`this inter partes review be merged with IPR 2016-00977 if this inter
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`partes review is instituted.
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`Dated: April 14, 2017
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`Customer Number
` 22850
`Tel. (703) 413-3000
`Fax. (703) 413-2220
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`Respectfully submitted,
`
`Oblon, McClelland, Maier &
` Neustadt, LLP
`
`
`
`
`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
`
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`11
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`Fatpipe Exhibit 2011, pg. 15
`Cisco v. Fatpipe
`IPR2017-01845
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`CERTIFICATE OF SERVICE
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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:
`
`Robert C. Hilton
`George B. Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
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`
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`
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`Dated: April 14, 2017
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`12
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`Fatpipe Exhibit 2011, pg. 16
`Cisco v. Fatpipe
`IPR2017-01845
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`
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