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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`VIPTELA, INC.,
`
`Petitioner,
`
`v.
`
`FATPIPE NETWORKS PRIVATE LIMITED,
`
`Patent Owner.
`______________
`
`Case IPR2017-01126
`
`U.S. Patent No. 7,406,048
`
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Fatpipe Exhibit 2012, pg. 1
`Cisco v. Fatpipe
`IPR2017-01845
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
`
`
`
`
`TABLE OF CONTENTS
`
`
`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 680 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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`i
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`Fatpipe Exhibit 2012, pg. 2
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
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`
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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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`
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`35 U.S.C. 325(d)……………………………………………. …1, 2, 6
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`
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`Rules
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`37 C.F.R. § 42.107………………………………………………….. 1
`
`
`
`ii
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`Fatpipe Exhibit 2012, pg. 3
`Cisco v. Fatpipe
`IPR2017-01845
`
`
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
`
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`TABLE OF EXHIBITS
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`Exhibit Description
`Petition for Inter Partes Review in IPR 2017-00680
`2001
`Decision Declining Institution of Inter Partes Review in
`2002
`IPR2014-00628
`
`
`
`
`
`iii
`
`Fatpipe Exhibit 2012, pg. 4
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`
`
`I.
`
`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.
`
`Such serial filings should be discouraged. Patent Owner requests that
`
`the Board exercise its discretion under 35 U.S.C. § 325(d) to deny the
`
`instant Petition because it presents substantially the same prior art
`
`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 2017-00680 (“the 680 Petition”).
`
`II. Background
`Viptela filed its Petition for Inter Partes Review of U.S. Patent No.
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`7,406,048 (“the ’048 Patent”) on March 21, 2017 (Paper 1, “the
`
`Petition”). The Board mailed a Notice of Filing Date Accorded to
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`Petition on April 12, 2017 (Paper 6). Pursuant to 37 C.F.R. § 42.107,
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`Patent Owner FatPipe Networks Private Limited and exclusive licensee
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`FatPipe, Inc. (collectively, “Patent Owner” or “FatPipe”) timely submit
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`this preliminary response.
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`
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`1
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`Fatpipe Exhibit 2012, pg. 5
`Cisco v. Fatpipe
`IPR2017-01845
`
`
`
`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
`
`
`
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`
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`III. The Board should exercise its discretion under 35 U.S.C. §
`325(d) to deny the Petition.
`Under § 325(d) the Board has discretion to deny a petition if it
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`merely presents substantially the same prior art and arguments
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`already presented to the Office: “In determining whether to institute or
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`order a proceeding under this chapter, chapter 30, or chapter 31, the
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`Director may take into account whether, and reject the petition or
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`request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.” 35 U.S.C. § 325(d).
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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 petition in the 680 Petition. (Ex. 2001.)
`
`A. The Petition presents substantially the same prior art
`and substantially the same arguments as those
`presented to the Board in the 680 Petition.
`The instant Petition relies on U.S. Patent No. 6,628,617 to Karol
`
`
`
`et al. (“Karol”; Ex. 1006) as the sole or primary reference in every
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`grounds for challenge. (Petition at 4-5.) Specifically, the Petition
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`contends that: (i) claims 1, 3, 4, 6, 7, 9, 10, 12, 13, 15, 16, 18, 19, 21, and
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`24 of the ‘048 Patent are obvious under 35 U.S.C. §103 based on Karol
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`2
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`Fatpipe Exhibit 2012, pg. 6
`Cisco v. Fatpipe
`IPR2017-01845
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`and Zhang (Ex. 1017); (ii) claims 1, 3, 5, 7, 9, 11, 13, 15, 17, 19, 21, and
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
`
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`23 of the ‘048 Patent are obvious under 35 U.S.C. §103 based on Karol,
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`Zhang, and McCullough (Ex. 1018); (iii) and claims 1, 3, 4, 13, 15, and
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`16 of the ‘048 Patent are obvious under 35 U.S.C. §103 based on Karol
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`and Pearce (Ex. 1019). (Petition at 4-5).
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`The 680 Petition also relied on Karol as a primary reference for
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`each ground of rejection in alleging that each of claims 1-24 are
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`unpatentable. (Ex. 2001 at 4.) Consequently, the instant Petition
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`presents substantially the same prior art and arguments as the 680
`
`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 680 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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`Fatpipe Exhibit 2012, pg. 7
`Cisco v. Fatpipe
`IPR2017-01845
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`in the two petitions. (Ex. 2002, Case IPR2014-00628, at 9-10). Of note,
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
`
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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”).
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`(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 680 Petition. Thus, similar to the facts of
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`4
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`Fatpipe Exhibit 2012, pg. 8
`Cisco v. Fatpipe
`IPR2017-01845
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`U.S. Patent No. 7,406,048
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`Unilever, the Petitioner should have presented its “best case” in the first
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`
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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 680 Petition is essentially a “copy-cat”
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`petition to IPR2016-00977, 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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`00977, 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 680 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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`Fatpipe Exhibit 2012, pg. 9
`Cisco v. Fatpipe
`IPR2017-01845
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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 IPR2017-01126
`U.S. Patent No. 7,406,048
`
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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 680 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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`Fatpipe Exhibit 2012, pg. 10
`Cisco v. Fatpipe
`IPR2017-01845
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`
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`Patent Owner’s Preliminary Response
`Case IPR2017-01126
`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.
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`Dated: July 12, 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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`7
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`Fatpipe Exhibit 2012, pg. 11
`Cisco v. Fatpipe
`IPR2017-01845
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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
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`present Patent Owner’s Preliminary Response complies with the type-
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`volume limitation of 37 C.F.R. § 42.24(a). The word count application of
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`the word processing program used to prepare this Preliminary Response
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`indicates that the Preliminary Response contains 1070 words, excluding
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`the parts of the brief exempted by 37 C.F.R. § 42.24(a)(1).
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`Respectfully submitted,
`Oblon, McClelland, Maier &
` Neustadt, LLP
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`
`
`
`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
`
`
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`Dated: July 12, 2017
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`
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`
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`Customer Number
` 22850
`Tel. (703) 413-3000
`Fax. (703) 413-2220
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`
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`
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`Fatpipe Exhibit 2012, pg. 12
`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
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`of PATENT OWNER’S PRELIMINARY RESPONSE on the counsel of
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`record for the Petitioner by filing this document through the PTAB E2E
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`System as well as delivering a copy via electronic mail to the following
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`address:
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`
`
`Robert C. Hilton
`George B. Davis
`MCGUIREWOODS LLP
`rhilton@mcguirewoods.com
`gdavis@mcguirewoods.com
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`Dated: July 12, 2017
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`/Robert C. Mattson/
`Robert C. Mattson (Reg. No. 42,850)
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`Fatpipe Exhibit 2012, pg. 13
`Cisco v. Fatpipe
`IPR2017-01845
`
`
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