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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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`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
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`FATPIPE NETWORKS PRIVATE LIMITED,
`
`Patent Owner.
`______________
`
`Case IPR2017-01845
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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 IPR2017-01845
`U.S. Patent No. 6,775,235
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`TABLE OF CONTENTS
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`
`I.
`Introduction ....................................................................................... 1
`II. The Governing Standard For Privity Under the AIA ...................... 2
`A.
`Privity is broader than real party-in-interest and
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`
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`does not necessarily require control. ....................................... 2
`B.
`The parties need not be in privity at the time the
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`
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`statutorily-referenced complaint was served. ......................... 6
`III. Petitioner’s filing represents a “second bite at the apple”
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`for a shared interest with Viptela. ................................................. 10
`A. Cisco had signed a “definitive agreement” with
`
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`Viptela to acquire Viptela before the Petition Filing ........... 10
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`B. Explicit privity currently exists between Cisco and
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`Viptela. ................................................................................... 13
`
`C.
`Petitioner has no apparent independent interest in
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`the ‘235 patent aside from the relationship with
`
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`Viptela. ................................................................................... 14
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` D. The gap between Viptela’s time bar and Cisco’s actual
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`acquisition of Viptela represents a de facto extension of
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` Viptela’s time period to file a petition. ................................. 15
`E.
`The instant Petition represents an extension of
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`Viptela’s serial filings, and a clear attempt to correct
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`the deficiencies of Viptela’s filings, which Viptela would
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`not have been able to do on its own. ...................................... 16
`F.
`The Board should also deny serial Petitions such as
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`
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`the instant Petition under 35 U.S.C. §325(d). ...................... 20
`IV. Conclusion ........................................................................................ 21
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`TABLE OF AUTHORITIES
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`Cases
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`ABB Technology, Ltd. V. IPCO, LLP ......................................................... 8
` IPR2014-00147, 2014 WL 2213423 (PTAB May 23, 2014)
`Azure Gaming v. MGT Gaming,
`IPR2014-01288, Paper No. 13 (PTAB Feb. 20, 2015) ........................ 3, 4
`Chi Mei Innolux Corp. v. Semiconductor Energy
`Laboratory Co., LTD.
` IPR2013-00028, 2013 WL 5970145 (PTAB Mar. 21, 2013) ................... 8
`Hewlett-Packard Co. v. Tech. Properties LTD., LLC,
`IPR2013-00217, 2013 WL 8701599 (PTAB Oct. 10, 2013) .................... 9
`Synopsys, Inc. v. Mentor Graphics Corp.,
` IPR2012-00042, 2014 WL 722009 (PTAB Feb. 19, 2014) ...................... 6
`Taylor v. Sturgell
` 553 U.S. 880 (2008) ......................................................................... 3, 4, 5
`Toyota Motor Corp. v. Cellport Sys., Inc.,
`Case IPR2015-01423, Paper 7 (PTAB Oct. 28, 2015) .......................... 18
`Underwood Livestock, Inc. v. U.S.,
` 417 Fed. Appx. 934 (Fed. Cir. Mar. 31, 2011) ........................................ 5
`VMware, Inc. v. Good Technology, Inc.,
` IPR2014-01324, Paper No. 28 (PTAB Feb. 20, 2015) ....................... 7, 8
`Statutes
`35 U.S.C. § 315.................................................................................. passim
`35 U.S.C. § 325.................................................................................. passim
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`Rules
`37 C.F.R. § 42.107 ....................................................................................... 1
`37 C.F.R. § 42.6(e) ..................................................................................... 22
`Regulations
`77 Fed. Reg. at 48,759 ............................................................................ 2, 7
`77 Fed. Reg. at 48760 ................................................................................. 3
`Other Authorities
`157 CONG. REC. S1326 (daily ed. Mar. 7, 2011) ...................................... 6
`H. Rep. No. 112-98 ...................................................................................... 5
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`TABLE OF EXHIBITS
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`Exhibit Description
`Cisco Press Release Announcing Intent to Acquire Viptela
`2001
`Viptela Announcement of Acquisision by Cisco
`2002
`Paper 015 for IPR2017-00684
`2003
`Cisco Press Release Announcing Completion of Acquisition
`2004
`of Viptela
`Patent Owner Preliminary Response for IPR2017-00684
`Patent Owner Preliminary Response for IPR2017-01125
`Cisco Blog May 2, 2017
`Cisco Blog May 8, 2017
`Paper 008 for IPR2017-00684
`Paper 008 for IPR2017-00680
`Patent Owner Preliminary Response for IPR2017-00680
`Patent Owner Preliminary Response for IPR2017-01126
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`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
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`Pursuant to 37 C.F.R. § 42.107, Patent Owner FatPipe Networks
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`Private Limited and exclusive licensee FatPipe, Inc. (collectively,
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`“Patent Owner”) timely submit this preliminary response to Petitioner
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`Cisco Systems, Inc.’s petition for inter partes review of U.S. Patent No.
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`6,775,235 (“the ‘235 Patent”), filed July 24, 2017 (Paper 1, “the
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`Petition”). The Board accorded a filing date to the petition on August 7,
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`2017 (Paper 6).
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`I.
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`Introduction
`This proceeding marks the fourth petition filed against the ‘235
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`patent and the third petition filed by Cisco or third-party Viptela, which
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`was acquired by Cisco this year and was served with a complaint for
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`infringement of the ‘235 patent more than one year prior to the filing of
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`the Petition. The Board should deny the Petition under 35 U.S.C. §
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`315(b) because Petitioner entered into a binding purchase agreement to
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`acquire Viptela prior to the filing of the Petition and after Viptela was
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`time-barred from filing any petitions under 35 U.S.C. § 315(b). The
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`statutes and rules governing inter partes review are designed to prevent
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`such serial filings, particularly in situation like this, where Petitioner
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`had the opportunity to use the denial of Viptela’s petition for inter
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`partes review on the same patent to gain a tactical advantage. As such,
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`the Petition should also be dismissed under 35 U.S.C. §325(d).
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`II. The Governing Standard For Privity Under the AIA
`A. Privity is broader than real party-in-interest and does not
`necessarily require control.
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`The core function of the real party-in-interest and privity
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`requirements is to ensure proper application of the statutory estoppel
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`provisions, which are, in turn, intended “to protect patent owners from
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`harassment via successive petitions by the same or related parties, to
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`prevent parties from having a ‘second bite at the apple,’ and to protect
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`the integrity of the USPTO and Federal Courts by assuring that all
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`issues are promptly raised and vetted.” Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,759 (Aug, 14, 2012). As compared to real-party-in
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`interest, privity “is more expansive, encompassing parties that do not
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`necessarily need to be identified as a real party in interest.” Id. The
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`privity inquiry is equitable and flexible in nature with the ultimate goal
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`being to determine “whether the relationship between the purported
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`‘privy’ and the relevant other party is sufficiently close such that both
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`should be bound by the trial outcome and related estoppels.” Id. Such
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`relationships are rooted in traditional common law preclusion
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`principles. Id. at 48760.
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`The Board reiterated these principles in Azure Gaming v. MGT
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`Gaming, IPR2014-01288 (Feb. 20, 2015, Paper No. 13 at 12-16) where
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`the Board explained that “the privity inquiry focuses on the relationship
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`between the parties,” rather than the non-party’s relationship to a
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`specific proceeding. Id. at 13. Consistent with this, the Trial Practice
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`Guide makes clear that the central focus of the privity query is whether
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`the parties’ relationship is sufficiently close that it would be fair to
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`impose estoppel effects between the parties. 77 Fed. Reg. at 48760.
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`The Supreme Court in Taylor v. Sturgell laid out six categories of
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`situations in which nonparty estoppel would apply, noting that the
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`categories are “meant only to provide a framework for our consideration
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`of [privity], not to establish a definitive taxonomy.” 553 U.S. 880, 893
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`(2008). One such category is “substantive legal relationships” sufficient
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`to justify preclusion. Id. Another category looks to whether a “nonparty
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`assumed control over litigation.” Id. Yet another category looks to
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`whether a “person agrees to be bound by the determination of issues in
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`an action between others….” Id.
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`It should be noted that “control” is its own stand-alone category
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`under Taylor v. Sturgell. Thus, the other five categories delineated by
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`the Supreme Court in Taylor do not require control. Accordingly, while
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`establishing control is one way to justify preclusion, it is not the only
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`way. Attempting to impart a rigid requirement that privity requires a
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`finding of control would be inconsistent with the flexible and equitable
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`nature of the privity doctrine and the Supreme Court’s admonition that
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`the list of substantive legal relationships justifying preclusion was not
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`limiting. Taylor, 553 U.S. at 893. Indeed, in the recent Azure decision,
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`the Board explained that assumed control is not a prerequisite for a
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`finding of privity. Azure, Paper No. 13 at 14. Control very well might
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`establish privity, but control is not required given the equitable and
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`flexible nature of the privity inquiry. Id. at 15.
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`Instead, a variety of preexisting legal relationships have been
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`viewed as appropriately establishing preclusion both before and after
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`the Supreme Court’s decision in Taylor. Indeed, the Federal Circuit has
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`recognized that certain substantive legal relationships appropriately
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`result in a finding of privity in the absence of control. Underwood
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`Livestock, Inc. v. U.S., 417 Fed. Appx. 934, 939 (Fed. Cir. Mar. 31, 2011)
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`(unpublished) (recognizing that preclusion is appropriate based on
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`substantive legal relationships under Taylor v. Sturgell).
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`A principal goal of the AIA was to “limit unnecessary and
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`counterproductive litigation costs.” H. Rep. No. 112-98 at 40 (2011). The
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`AIA sought to address such counterproductive costs by eliminating
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`duplicative and vexatious proceedings. 35 U.S.C. § 315(b) states that
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`“[a]n inter partes review may not be instituted if the petition requesting
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`the proceeding is filed more than 1 year after the date on which the
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`petitioner, real party in interest, or privy of the petitioner is served with
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`a complaint alleging infringement of the patent.”
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`The statutory bar under Section 315(b) was designed to further
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`that goal to ensure that the AIA could not “be used as [a] tool[] for
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`harassment” of patent owners. H. Rep. No. 112-98 at 48. Indeed,
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`Congress expressly condemned “repeated litigation and administrative
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`attacks on the validity of a patent.” Id. The legislative history further
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`explains that the AIA “includes many protections that were long sought
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`by … patent owners … [by] impos[ing] time limits on starting an inter
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`partes or post grant review when litigation is pending …. All of these
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`reforms will help to ensure that post-grant review operates fairly and is
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`not used for purposes of harassment or delay.” 157 CONG. REC. S1326
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`(daily ed. Mar. 7, 2011) (statement of Sen. Sessions).
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`For the foregoing reasons, privity includes a variety of
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`relationships directed to the fairness of imposing estoppel effects
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`between the parties and it does not require direct control over a privy
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`on the date of filing the Petition.
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`B. The parties need not be in privity at the time the
`statutorily-referenced complaint was served.
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`Especially given the equitable and flexible nature of privity, it
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`would be nonsensical to apply a rigid requirement that the privity
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`analysis must be conducted at the snapshot in time when the earlier
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`complaint was served. See 35 U.S.C. § 315(b); see also Synopsys, Inc. v.
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`Mentor Graphics Corp., IPR2012-00042, 2014 WL 722009, at *7 (PTAB
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`Feb. 19, 2014) (“[W]e also take into consideration the nature of the
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`relationship between the parties at the time that the statutorily
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`referenced complaint was served.”). Doing so would plot a simple course
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`for petitioners to circumvent the statutory estoppel provisions: start
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`cooperating after the time bar has elapsed. That would be an anomalous
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`and unfair result, which is precisely what the privity rules are intended
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`to prevent. 77 Fed. Reg. at 48,759.
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`The Board has acknowledged that the privity inquiry is not
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`limited to the time period prior to the complaint. In VMware, Inc. v.
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`Good Technology, Inc., IPR2014-01324, Paper No. 28 (Feb. 20, 2015) the
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`Board noted:
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`at least some of the factors analyzed in determining whether
`a party is a real party in interest or a privy of the petitioner
`involve actions or events that may occur after service of a
`complaint alleging infringement of the challenged patent.
`Petitioner cites to several non-precedential decisions of the
`Board in inter partes review proceedings, but does not
`identify any language in the statute or any other persuasive
`rationale to support the argument that privity under §
`315(b) is determined only at the time of service of the
`complaint alleging infringement of the challenged patent.
`(Emphasis added).
`VMware, Paper No. 28 at 3.
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`Ultimately, the panel in VMware correctly found that privity need
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`not be measured at the time of service of the complaint in parting with
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`the dicta in earlier decisions. Id. at 3-4. While certain earlier decisions
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`have looked at the relationship of the parties at the time the statutorily
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`referenced complaint was served, those decisions make clear that the
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`relationship of the parties at that time is only a consideration. In those
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`cases, the Board analyzed the relationship of the parties at the time the
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`statutorily referenced complaint was served because such an analysis
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`made sense given the specific facts of those cases. For example, in Chi
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`Mei Innolux Corp. v. Semiconductor Energy Laboratory Co., LTD., the
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`Patent Owner alleged that Petitioner was served with a complaint more
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`than one year prior to the filing of its petition. IPR2013-00028, 2013 WL
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`5970145, *4 (PTAB Mar. 21, 2013). There, the Petitioner did not even
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`exist at the time the complaint was served and was only formed after
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`the service of the complaint through the merger. Id.
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`In another decision in ABB Technology, Ltd. V. IPCO, LLP, the
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`Board rejected the Patent Owner’s argument that the petition was time
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`barred by virtue of the fact that the petitioner’s parent company had
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`acquired an entity that was sued years before the acquisition took place.
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`There, again, it makes sense to look at the nature of the alleged privies’
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`relationship at the time the district court complaint was served because
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`the only data point in support of the patent owner’s argument related to
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`the prior suit in which the petitioner had no involvement. IPR2014-
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`00147, 2014 WL 2213423, *5-6 (PTAB May 23, 2014).
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`Further, the foregoing decisions do not account for a situation
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`where both of the alleged privies had filed a petition. Instead in those
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`cases, the allegation was that a petition was time barred because the
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`petitioner was in privity with a party sued in district court more than
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`one year before the petition was filed. In that situation, it certainly
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`makes sense to look to control over the prior litigation. However, where
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`multiple data points exist that would support a finding of privity
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`between two entities related to the patent under review, it is
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`appropriate to analyze the relationship in its entirety because “privity
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`is a contextual concept.” Hewlett-Packard Co. v. Tech. Properties LTD.,
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`LLC, IPR2013-00217, 2013 WL 8701599, at *2 (PTAB Oct. 10, 2013).
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`Indeed, ignoring the relationship between two parties relative to two
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`separately filed review proceedings would make very little, if any,
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`sense.
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`The privity analysis must take into account the parties’
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`relationship as a whole. Failure to do so would create a situation where
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`a third party could have a vested interest in the review proceeding,
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`substantially influence the content of the petition and strategic
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`decisions throughout the review proceeding, but be afforded “a second
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`bite at the apple” before the PTAB, simply because it was not involved
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`in a prior litigation. Such a rule would circumvent the essential
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`estoppel provisions of § 315(b).
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`III. Petitioner’s filing represents a “second bite at the apple”
`for a shared interest with Viptela.
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`A. Cisco had signed a “definitive agreement” with Viptela to
`acquire Viptela before the Petition Filing
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`As admitted by the Petitioner, “On May 2, 2017, Cisco announced
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`its intent to acquire Viptela, Inc., the petitioner in IPR2017-01125 and
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`IPR2017-00684.” (Pet., p. 7; and Ex. 2001). While not mentioned in the
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`Petition, the actual press release makes it clear that “[t]he acquisition
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`is expected to close in the second half of calendar 2017, after having
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`completed all of the customary closing conditions and regulatory
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`review.” (Ex. 2001, p. 2).
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`Additionally, Viptela’s announcement states “Today I am very
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`excited to announce that Viptela has signed a definitive agreement to be
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`acquired by Cisco.” (Ex. 2002, p.1). This announcement by the CEO of
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`Viptela is not very subtle in portraying the inevitability of the
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`acquisition, as it is entitled “Thank you Viptela Customers, Partners
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`and Employees.” (Id.) Both Petitioner and Viptela identified the agreed
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`upon purchase price of $610 Million. (Ex. 2001; Ex. 2002).
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`Therefore, while Petitioner attempts to cast some doubt on the
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`nature of the relationship between Petitioner and Viptela at the time of
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`the filing of the Petition (“As of the filing of the instant Petition, that
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`transaction has not closed.” Pet., p. 7), it is unquestionable that
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`Petitioner and Viptela had a formal, binding agreement for Petitioner to
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`acquire Viptela prior to the filing of the Petition.
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`Petitioner went even further than announcing the intent to
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`acquire Viptela and signing an agreement with Viptela. Petitioner
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`publicly touted the acquisition before the closing, and it even publicized
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`the exact team within Cisco where Viptela would be placed:
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`Acquiring Viptela will enable us to expand our portfolio,
`with increased functionality delivered through the cloud…
`With Viptela, Cisco can offer customers more choice in their
`enterprise branch offices and WAN deployments, with a
`compelling SD-WAN solution that is easy to deploy and
`simple to manage. Together, Cisco and Viptela will be able to
`deliver next generation SD-WAN solutions to best serve all
`size and scale of customer needs, while accelerating Cisco’s
`transition to a recurring software-based business model.
`Viptela will join the Enterprise Routing team within Cisco’s
`Networking and Security Group led by Senior Vice President
`and General Manager David Goeckeler.
`(Ex. 2007, p. 2-3).
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`Petitioner went even further by publicizing the anticipated
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`increase in revenue resulting from the acquisition before the closing
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`was complete:
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`From my perspective as Cisco’s Chief Digital Officer (CDO),
`Viptela is also a great fit because the company and its people
`bring us closer to achieving our vision of delivering recurring
`value to our customers and the ability to consume that value
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`on a subscription basis. Much of Viptela’s revenue is
`subscription based. This means the acquisition will increase
`the percentage of recurring revenue for Cisco. Further, the
`SD-WAN market opportunity is projected to reach $6 billion
`by 2020 at a compound annual growth rate (CAGR) of 76%. *
`As we increase our share of the SD-WAN market, our
`recurring revenue will also increase.
`(Ex. 2008, p. 2).
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`Petitioner cannot have it both ways: they cannot claim there was
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`no privity with Viptela in the Petition based on the pending formalities
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`of completing the acquisition with Viptela (which would finalize just 8
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`days after filing the Petition), while also touting the technical benefits
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`and projected revenues of the acquisition in public prior to completing
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`the acquisition which undoubtedly gave them a head start on marketing
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`and increasing shareholder confidence.
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`Accordingly, at the time of filing the Petition, Petitioner and
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`Viptela were already wholly related parties and Petitioner had a clear
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`vested interest in the outcome of the complaint served against Viptela
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`more than a year before the filing of the present Petition.
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`B. Explicit privity currently exists between Cisco and
`Viptela.
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`The acquisition of Viptela by Petitioner is now complete as of
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`August 1, 2017. (Ex. 2003 and Ex. 2004). Therefore, there is no
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`question that Viptela is at least currently a privy of Petitioner and that
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`Petitioner would not be able to file the Petition as of today since Viptela
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`is time-barred from filing any new petitions against the ‘235 patent.
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`Moreover, as a result of the acquisition, Petitioner now enjoys control
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`over the surviving inter partes review proceedings that Viptela initiated
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`against the ‘235 patent in IPR2017-00684 (“the -684 Petition”) filed by
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`Viptela regarding the ‘235 patent. Additionally, Petitioner enjoyed
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`control over the decision to request or avoid requesting reconsideration
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`regarding the non-institution of any challenged claims in both the -684
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`IPR and the IPR2017-01125 (“the -125 Petition”), also filed by Viptela
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`regarding the ‘235 patent.
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`C. Petitioner has no apparent independent interest in the ‘235
`patent aside from the relationship with Viptela.
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`Although Petitioner anticipated that privity presents a problem,
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`the Petition does not allege that Petitioner was even aware of FatPipe’s
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`patents but for Petitioner’s purchase of Viptela. As of the date of the
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`filing of the Petition, there was no complaint served by Patent Owner
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`against Petitioner, and there is no indication from Petitioner that it had
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`any interest in the ‘235 patent other than the complaint served against
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`Viptela.
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`D. The gap between Viptela’s time bar and Cisco’s actual
`acquisition of Viptela represents a de facto extension of
`Viptela’s time period to file a petition.
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`It is undisputed that Viptela is time-barred from filing any
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`additional petitions for inter partes review against the ‘235 patent as of
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`March 22, 2017, which is one year from the service of the complaint
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`against Viptela by Patent Owner. (Pet., p. 7). It should also be
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`undisputed that Petitioner is also currently time-barred from filing any
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`additional petitions for inter partes review against the ‘235 patent, in
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`view of its ownership of Viptela.
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`Therefore, any assertion that Petitioner be allowed to proceed
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`with the Petition filed on July 24, 2017, clings solely to a gap in time
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`from March 22, 2017 to August 1, 2017 in which (i) Viptela became
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`time-barred from filing any more petitions, and (ii) Viptela entered into
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`a “definitive” agreement to be acquired by Petitioner pending
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`Patent Owner’s Preliminary Response
`Case IPR2017-01845
`U.S. Patent No. 6,775,235
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`“customary closing conditions and regulatory review.”
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`It is clear that Viptela and Petitioner have the same shared
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`exposure to any damages stemming from the same complaint for
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`infringement served by Patent Owner on March 22, 2016 against
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`Viptela. Therefore, to allow Petitioner to proceed with the Petition
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`constitutes an unwarranted extended period of time for whichever
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`entity, whether it is Viptela alone or Viptela in combination with the
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`Petitioner as its new owner, to protect against the same patent-
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`infringement lawsuit regarding the same infringing activities of
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`Viptela.
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`Therefore, the present Petition is clear-cut case of attempting “a
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`second bite at the apple” before the PTAB that should be barred by 35
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`U.S.C. § 315(b).
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`E. The instant Petition represents an extension of Viptela’s
`serial filings, and a clear attempt to correct the
`deficiencies of Viptela’s filings, which Viptela would not
`have been able to do on its own.
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`The instant Petition represents a brazen attempt to correct the
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`deficiencies of Viptela’s previous Petitions. The present Petition was
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`filed after the Patent Owner filed a Patent Owner Preliminary
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`Patent Owner’s Preliminary Response
`Case IPR2017-01845
`U.S. Patent No. 6,775,235
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`Response (“POPR”) in both the -684 Petition” and the -125 Petition”,
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`which were both filed by Viptela regarding the ‘235 patent. Perhaps
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`even more striking is that the instant Petition was filed a mere 10 days
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`after the Board issued institution/non-institution decisions in the -684
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`proceeding.
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`Regarding the -684 Petition, Patent Owner filed a POPR on April
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`14, 2017, which requested that the Board exercise its discretion under
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`35 U.S.C. §325(d) to deny the Petition since it presents the same prior
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`art and substantially the same arguments as those presented to the
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`Board in IPR 2016-00976. (Ex. 2005). A similar argument was made in
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`the POPR filed by Patent Owner in IPR2017-01125 on July 5, 2017. (Ex.
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`2006). Therefore, Petitioner, which had already announced its
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`agreement to acquire Viptela, had the chance to assess a key weakness
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`of Viptela’s petitions after viewing Patent Owner’s arguments, and are
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`attempting to correct them outside of the time-barred window in which
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`Viptela was able to file any further petitions against the ‘235 patent.
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`Petitioner had the benefit of Patent Owner’s preliminary
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`Patent Owner’s Preliminary Response
`Case IPR2017-01845
`U.S. Patent No. 6,775,235
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`responses in both the -684 Petition and the -125 Petition, affording
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`Petitioner the tactical advantage of seeing how Patent Owner would
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`challenge the institution of each of these petitions. See Toyota Motor
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`Corp. v. Cellport Sys., Inc., Case IPR2015-01423, Paper 7, at 9 (PTAB
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`Oct. 28, 2015) (“[T]he opportunity to read Patent Owner’s Preliminary
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`Response … prior to filing the Petition here, is unjust.”).
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`Petitioner was even able, prior to filing the Petition, to see that
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`the ‘684 Petition was denied institution on all but four claims (Ex.
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`2009), and a related Petition filed by Viptela for U.S. Patent 7,406,048
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`was denied institution on all challenged claims (Ex. 2010). Moreover,
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`the instant Petition seeks to challenge the same claims as Viptela’s
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`IPRs, which is more evidence that the instant Petition was filed as a
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`backstop after it saw Viptela’s first wave of IPR petitions get denied
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`institution but for a few claims.
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`The below timeline reveals the tactical nature of the filing of the
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`Petitioner as it relates to the IPRs filed by Viptela.
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`Pattent Ownerr’s Prelimiinary Resp
`onse
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`Case IPPR2017-011845
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`UU.S. Patent
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`No. 6,7755,235
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`Itt is plainlly evidennt that thee presentt Petition represennts a
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`strateggic filing mmade afteer learninng that mmost of thee challen
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`ges for thhe
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`claims of the ‘6884 IPR brrought byy Viptela wwere not instituteed and beffore
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`Petitiooner comppleting thhe acquisition of Viiptela. Iff the Julyy 24th
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`Petitioon is allowwed to prooceed to institutionn, then thhis wouldd only
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`incentiivize partties to dellay a formmal closinng of an aacquisitionn in orderr to
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`await BBoard deccisions annd correctt for defeccts well ppast the 11-year datte
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`time baar.
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`TThere is, ttherefore,, a legitimmate conccern that Patent OOwner willl
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`have too continually defennd againsst repetitiive challeenges to tthe same
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`patent claims brought byy entities which hoold a sharred pecunniary
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`19
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`interest stemming from the same complaint served more than a year
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`Patent Owner’s Preliminary Response
`Case IPR2017-01845
`U.S. Patent No. 6,775,235
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`before the filing of the present Petition.
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`F. The Board should also deny serial Petitions such as the
`instant Petition under 35 U.S.C. §325(d).
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`
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`Under 35 U.S.C. § 325(d), if another proceeding or matter
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`involving the patent is before the Board, the Board may determine the
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`manner in which the post-grant review or other proceeding or matter
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`may proceed, including providing for the stay, transfer, consolidation, or
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`termination of any such matter or proceeding.
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`Therefore, regardless of whether or not the rules of privity are
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`rigidly applied, and regardless of whether new prior art is being
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`submitted, the Board has discretion to terminate the present proceeding
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`based on all the facts shown above. Such discretion should be applied
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`here to avoid the clear inequitable outcome that results from allowing
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`Viptela/Cisco to game the acquisition process to gain extra time to
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`protect Viptela/Cisco’s shared infringement exposure and to further
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`harass and increase costs for Patent Owner.
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`Patent Owner’s Preliminary Response
`Case IPR2017-01845
`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 to deny the Petition under 35 U.S.C. § 315(b), or exercise
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`its discretion under 35 U.S.C. § 325(d) to deny the Petition.
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`Dated: November 7, 2017
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`Customer Number
` 22850
`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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`21
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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 and EXHIBITS
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`2001-2012 on the counsel of record for the Petitioner by filing this
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`document through the PTAB E2E System as well as delivering a copy
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`via electronic mail to the following address:
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`David L. McCombs
`Theodore M. Foster
`David O’Brien
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`david.obrien.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`
`
`
`
`
`
`/Robert C. Mattson/
`Robert C. Mattson
`Reg. No. 42,850
`
`
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`
`
`Dated: N
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