UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`CISCO SYSTEMS, INC.,
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`Petitioner
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`v.
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`FATPIPE NETWORKS PRIVATE LIMITED
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`Patent Owner
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`———————
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`Case IPR2017-01845
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`Patent 6,775,235
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`PETITIONER’S REPLY
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`TO PATENT OWNER’S PRELIMINARY RESPOSNE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`CISCO SYSTEMS, INC.,
`
`Petitioner
`
`v.
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`FATPIPE NETWORKS PRIVATE LIMITED
`
`Patent Owner
`
`———————
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`Case IPR2017-01845
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`Patent 6,775,235
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`PETITIONER’S REPLY
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`TO PATENT OWNER’S PRELIMINARY RESPOSNE
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`PETITIONER’S EXHIBIT LIST
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`November 22, 2017
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`EX1001 U.S. Patent No. 6,775,235 by Sanchaita Datta and Ragula Bhaskar
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`entitled “Tools and Techniques for Directing Packets Over
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`Disparate Networks”
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`EX1002
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`File History of U.S. Patent No. 6,775,235
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`EX1003 U.S. Patent No. 7,406,048 by Sanchaita Datta and Ragula Bhaskar
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`entitled “Tools and Techniques for Directing Packets Over
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`Disparate Networks”
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`EX1004
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`File History of U.S Patent No. 7,406,048
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`EX1005 Declaration of Dr. Narasimha Reddy
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`EX1006 U.S. Patent No. 6,243,754 to Guerin et al.
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`EX1007 U.S. Patent No. 6,748,439 to Monachello et al.
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`EX1008
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`“Inside Cisco IOS Software Architecture” by Bollapragada et al.
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`EX1009 Declaration of David Bader
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`EX1010 Dictionary Definition of “disparate”
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`EX1011
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`File History of U.S. Application No. 10/034,197
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`EX1012 U.S. Patent No. 6,122,743 to Shaffer et al.
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`EX1013
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`Frame Relay Technology and Practice by Jeff T. Buckwalter
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`ii
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`“Virtual Private Networks” by Fowler
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`EX1014
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`EX1015 U.S. Patent No. 7,296,087 to Peter J. Ashwood Smith
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`EX1016
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`The Case for Persistent-Connection HTTP by Jeffrey C. Mogul
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`EX1017
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`File History of U.S. Provisional Application No. 60/355,509
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`EX1018 Microsoft Computer Dictionary Definition of “load balancing”
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`EX1019 RFC1918
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`EX1020
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`Internetworking with TCP/IP by Douglas E. Comer
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`EX1021 Declaration of David O’Brien
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`EX1022 Declaration of Robert Hilton
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`EX1023 Cardinal IP Patent Search Report
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`
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`iii
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`Pursuant to the Order issued November 16, 2017 (Paper 10), Petitioner
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`submits this reply to Patent Owner’s Preliminary Response (“POPR”) filed
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`November 7, 2017 (Paper 9). Petitioner respectfully submits that the factors
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`enumerated in General Plastic Indus. Corp. v. Canon Kabushiki Kaisha do not
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`support discretionary denial under § 314(a). Case IPR2016-01357 (PTAB Sept. 6,
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`2017) (Paper 19) (precedential). Further, Patent Owner’s privity allegations rest on
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`a misapplication of relevant law. The Board should institute trial on all grounds.
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`Discretionary Denial Under § 325(d) or § 314(a) is Not Warranted
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`I.
`Cisco’s Petition addressed
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`the Board’s discretion and argued
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`that
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`discretionary denial was unwarranted, because all of the references, arguments, and
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`evidence were entirely new and had never been considered. Petition, pp. 13-14.
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`When analyzed under the framework of the factors enumerated and made
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`precedential in General Plastic, discretionary denial under § 314(a) remains
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`unwarranted. The General Plastic factors focus on situations in which one
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`petitioner files multiple inter partes review petitions against the same claims of the
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`same patent. See, e.g., General Plastic at 17 n. 14. That is not the case here: at the
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`filing of the petition, Cisco had not filed any previous petition challenging the ’235
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`Patent, and as shown below, Cisco and Viptela were not in privity when the
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`Petition was filed. However, at least one panel has found General Plastic to
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`provide a “useful framework” for analyzing situations “in which a different
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`1
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`petitioner filed a petition challenging a patent that had been challenged already by
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`previous petitions.” NetApp Inc. v. Realtime Data LLC, Case IPR2017-01354, slip
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`op. at 10 (PTAB Nov. 14, 2017) (Paper 16).
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`As to the first factor, Cisco has not previously filed a petition directed to the
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`same claims of the ’235 Patent, and Cisco’s independent petition seeks review of
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`claims not challenged by any previous petition. This factor therefore weighs in
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`favor of considering Cisco’s petition on the merits.
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`The Board has found the second factor to be directed to situations in which
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`the same petitioner files two separate petitions at different times (cf. NetApp, slip
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`op. at 11); thus, to the extent this factor applies, it weighs in favor of Cisco’s
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`Petition. But even if this second factor is relevant to two petitions with different
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`petitioners, it still weighs in favor of Cisco’s independent Petition. At the time any
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`of the previous petitions challenging the ’235 Patent was filed, Cisco’s counsel was
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`not aware of Guerin (U.S. Patent No. 6,243,754, Ex. 1006), the prior art reference
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`used in all grounds of the instant petition. Ex. 1021, ¶ 3. Guerin was discovered by
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`Cisco’s counsel on or about May 15, 2017. Id. Viptela did not have any input or
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`control over Cisco’s independently sought Petition, and Viptela did not provide
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`Cisco with Guerin or any other reference or input. Id. at ¶¶ 5-6. Cisco is not, and
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`cannot be understood to be asserting grounds for Viptela as a proxy.
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`As addressed below, Viptela was a separate entity, and not a privy. To the
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`2
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`extent Viptela’s knowledge is even pertinent, Viptela’s counsel was likewise not
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`aware of Guerin. Ex. 1022, ¶¶ 3-4. Further, Cisco believes Viptela could not
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`reasonably have been expected to be aware of Guerin, as it was not locatable
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`through a reasonable search. Viptela commissioned a search through Cardinal IP,
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`but that search did not locate Guerin. Ex. 1022, ¶3; see Ex. 1023. Cisco also
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`engaged a professional searcher, Crown Point Advisors, but that search also failed
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`to locate Guerin. Ex. 1021, ¶ 4. While Guerin’s teachings are analogous to the ’235
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`Patent, it is catalogued in a different class and subclass than the ’235 Patent, and
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`the fields of search do not overlap. Ex. 1006, (51), (52), (58); Ex. 1001, (51), (52),
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`(58). Moreover, unlike the situation in General Plastic, Cisco initiated its prior art
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`search efforts (beginning in April 2017) prior to a decision on institution in
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`Viptela’s petitions. Ex. 1021, ¶¶ 3-4.
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`The third factor is “directed to situations in which a petitioner delays filing a
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`subsequent petition so that it can tailor its arguments to address issues identified by
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`the patent owner and/or Board.” See NetApp, slip op. at 11. This factor also weighs
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`in favor of Cisco’s petition, or is neutral. The documents filed in the earlier cases
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`IPR2017-00684 and IPR2017-01125 contain no substantive arguments as to the
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`grounds or prior art. See Exs. 2005-2006. FatPipe’s Preliminary Responses in those
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`cases argued only for discretionary denial, and the Board in IPR2017-00684 denied
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`institution solely on the basis of §§ 314(a) and 325(d). The decision did not
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`3
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`provide a roadmap for Cisco to shift the prior art asserted or related arguments. See
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`Ex. 2009. Indeed, prior to Cisco’s independent filing, the Board had instituted trial
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`on the ’235 Patent on grounds based on the Karol reference, and has since found
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`many claims of the patent unpatentable over Karol. See Talari Networks, Inc. v.
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`Fatpipe Networks India Limited, Case IPR2016-00976 (PTAB Nov. 1, 2017)
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`(Paper 32). FatPipe barely mentions IPR2016-00976, but the arguments made in
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`that proceeding were also not used to shift Cisco’s; for example, a review of the
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`record will show that Cisco did not construe the same terms of the ’235 Patent
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`claims as FatPipe did in IPR2016-00976. Significantly, the Board did not take any
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`position on, or provide any roadmap for, the references in Cisco’s Petition.
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`The fourth factor also weighs in favor of Cisco’s Petition. Approximately
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`two months elapsed between Cisco’s discovery of Guerin and the Petition’s filing.
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`Counsel for Cisco represents that two months is within a typical timeframe to
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`prepare a petition for inter partes review. Ex. 1021, ¶ 7. This is not a situation in
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`which the petitioner knew of the prior art to be asserted for an extended period of
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`time, and strategically delayed filing its petition.
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`The fifth factor weighs in favor or is neutral; again, Cisco has not filed
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`multiple petitions directed to the same claims of the ’235 Patent. Members of this
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`panel have acknowledged that “[i]t is important that we not extinguish Petitioner’s
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`access to the proceedings before this body just because another party has sought
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`review of the same claims.” Ex. 2009 at 9. Here too, the Board should not deny
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`Cisco’s access to inter partes review merely because other parties previously filed
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`petitions. Cisco undertook an independent prior art search, and after finding a
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`reference that (alone or in combination) taught the limitations of the ’235 Patent
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`claims, promptly filed a petition requesting review.
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`The sixth and seventh factors are neutral. The Board has acknowledged a
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`concern with serial proceedings, specifically, that it would not be “an efficient use
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`of [the Board’s] resources to address duplicative grounds that raise no new art or
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`arguments,” but here, duplicative grounds will not be addressed: Cisco’s petition
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`presents entirely different art and arguments. See Ex. 2009 at 10. Institution of
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`Cisco’s petition will not affect the Board’s ability to comply with 35 U.S.C.
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`§ 316(a)(11). Cisco has not moved for joinder, and Cisco anticipates no issues that
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`would affect the Board’s timeline for a final written determination.
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`Thus, as all of the factors either support institution, or are neutral, the Board
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`should not exercise its discretion under § 314(a) to deny institution.
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`II.
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`Section 315(b) Does Not Bar the Petition, as Cisco and Viptela
`Were Not in Privity when the Petition was Filed
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`As Cisco stated in the Petition, and as re-emphasized here Viptela was not a
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`real party-in-interest at the filing of the Petition, and Viptela and Cisco were not in
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`privity. Petition at 7-8.
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`Contrary to previous PTAB decisions, FatPipe attempts to sow confusion as
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`5
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`to the pertinent time for evaluating privity. The Board has repeatedly found that “it
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`is only privity relationships up until the time a petition is filed that matter.” ON
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`Semiconductor v. Power Integrations, Inc., Case IPR2016-00995, slip op. at 10
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`(PTAB Oct. 18, 2017) (Paper 26) (quoting Synopsys, Inc. v. Mentor Graphics
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`Corp., Case IPR2012-00042, slip op. at 12 (PTAB Feb. 19, 2014) (Paper 60)). The
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`closing of Cisco’s acquisition of Viptela, which made Viptela a part of Cisco,
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`occurred after the Petition’s filing, on August 1, 2017. Ex. 2004 at 1. Thus, when
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`the Petition was filed on July 24, 2017, Cisco and Viptela were not in privity.
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`In a similar case, where a petitioner closed an acquisition after the filing of
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`the petition, the Board determined that, at the filing date of the petition, the
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`petitioner and the acquired party were not in privity, and § 315(b) did not bar
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`institution. See Arris Group, Inc. v. TQ Delta, LLC, Case IPR2016-00430, slip op.
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`at 6-7 (PTAB July 1, 2016) (Paper 9). In Arris, the petitioner had announced a
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`“firm intention” to acquire the third party, had a common defense agreement with
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`the third party, and the Board considered the fact that the petitioner “was in the
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`process of acquiring” the third party, but the Board ultimately found that privity
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`did not exist at filing, because there was no control over the third party. Id. Here, at
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`the time of the Petition’s filing, though in the process of acquiring Viptela, Cisco
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`was not a privy to Viptela, and there is nothing that suggests that Cisco had control
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`over, or the legal right to assume control over, Viptela, such that Cisco and Viptela
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`6
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`can be considered to be privies before the acquisition closed. FatPipe’s attempt to
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`use the post-filing date closing to imply a privity relationship prior to the Petition’s
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`filing is unsupported by case law or facts.
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`None of the other Taylor factors support a finding of privity. As FatPipe
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`acknowledges, control is “an important factor to establish privity,” but as stated in
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`the Petition, Cisco did not have any control over Viptela’s proceeding. Petition at
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`7-8. FatPipe does not dispute this fact. FatPipe appears to focus on the Taylor
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`factor of a “pre-existing substantive legal relationship,” but no such legal relation-
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`ship existed at the time of the petition, and FatPipe provides no evidence to show
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`otherwise. FatPipe’s citation to Underwood Livestock is inapposite, as the pre-
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`existing legal relationship in that case was between preceding and succeeding
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`owners of property. Cisco and Viptela, prior to the Petition, were not in such a
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`relationship.
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`FatPipe does not allege that any of the other Taylor factors apply, and none
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`of those factors do apply here. Nonparty preclusion cannot be based on mere
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`“identity of interests and some kind of relationship between parties and
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`nonparties.” See Taylor v. Sturgell, 553 U.S. 880, 901 (2008). Accordingly, when
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`properly evaluated, there is no supporting precedent, and there are no facts, to
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`support a finding that Cisco and Viptela were in privity at the time of the Petition.
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`Therefore, § 315(b) does not bar institution of Cisco’s Petition.
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`7
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2017-01845 (U.S. Patent 6,775,235)
`Respectfully submitted,
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`/David L. McCombs/
`David L. McCombs
`Counsel for Petitioner
`Registration No. 32,271
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`
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`November 22, 2017
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`8
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Petition for Inter Partes Review
`
`IPR2017-01845
`U.S. Patent No. 6,775,235
`
`
`§§§§§
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`CERTIFICATE OF SERVICE
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`Cisco Systems, Inc.
`
`Petitioner
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service November 22, 2017
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`Manner of service Electronic Service by E-Mail
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`
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`
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`Documents served Petitioner’s Reply to Patent Owner’s Preliminary Response
`Exhibits 1021-1023
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`Persons served Robert C. Mattson (CPDocketMattson@oblon.com)
`Sameer Gokhale (CPDocketGokhale@oblon.com)
`Aldo Martinez (CPDocketMartinez@oblon.com)
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`/Raghav Bajaj/
`Raghav Bajaj
`Counsel for Petitioner
`Registration No. 66,630
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`
`
`9
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`
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