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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.,
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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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`Case IPR2017-01845
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`U.S. Patent No. 6,775,235
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`____________
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`SUR-REPLY IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Sur-Reply
`IPR2017-01845
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`TABLE OF CONTENTS
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`Introduction ..................................................................................................... 1
`I.
`II. Discretionary Denial Under § 325(d) Is Warranted ....................................... 3
`III. Section 315(b) Bars the Petition Because Cisco and Viptela
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`Are in Privity .................................................................................................. 6
`IV. Conclusion ...................................................................................................... 7
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`Sur-Reply
`IPR2017-01845
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`TABLE OF AUTHORITIES
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`Cases
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`General Plastic Industrial Co., LTD., v. Canon Kabushiki Kaisha,
` IPR2016-01357-61, Paper 19 (PTAB Sept. 6, 2017) .........................................3, 4
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`NetApp Inc. v. Realtime Data LLC,
` IPR2017-01354, Paper 16 (PTAB Nov. 14, 2017) ............................................4, 5
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`NVIDIA Corp. v. Samsung Elecs. Co.,
` IPR2016-00134, Paper 9 (PTAB May 4, 2016) ..................................................... 4
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`Taylor v. Sturgell,
` 533 U.S. 880 (2008) ............................................................................................... 6
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`Statutes
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`35 U.S.C. § 315(b) .................................................................................................6, 7
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`35 U.S.C. § 325(d) .................................................................................................3, 7
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`ii
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`Sur-Reply
`IPR2017-01845
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`Pursuant to the Order dated November 16, 2017 (Paper 10), Patent Owner
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`(“FatPipe”) timely submits this Sur-Reply to Petitioner’s reply to Patent Owner’s
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`preliminary response for U.S. Patent No. 6,775,235 (“the ’235 Patent”), filed
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`November 22, 2017 (Paper 11, “the Reply”).
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`I.
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`Introduction
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`This proceeding marks the fourth petition filed against the ’235 patent and
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`the third petition filed by Petitioner (“Cisco”) or third-party Viptela, which was
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`acquired by Cisco this year and was served with a complaint for infringement of
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`the ’235 patent more than one year prior to the filing of the Petition.
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`FatPipe is a small disadvantaged business enterprise (DBE) founded by two
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`immigrants to the United States, the first-named inventor on the ’235 patent,
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`Sanchaita Datta, and her husband, Dr. Ragula Bhaskar. (Ex. 2013, ¶ 2). The
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`founders built the company using their life savings with only a small investment
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`from others. Id. The founders have spent their entire careers developing a
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`technology that has resulted in a new market. Id. This technology now known as
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`SDWAN overcomes the limitations of routers developed by companies like Cisco,
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`and other telecom companies that sought to dominate the telco market by limiting
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`customers in their choice of telcos. Id. This technology helps connect multiple low
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`cost lines to reduce costs, without telcos and routers having to use BGP (Border
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`Gateway Protocol) programming, saving the customer money. Id. In fact, newer
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`Sur-Reply
`IPR2017-01845
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`DSL and Ethernet internet connections eliminate the need for a router, which
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`means there are no routers to talk to each other. Id. FatPipe works with all Internet
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`or Wide Area technologies, whether there is a router at the end, or a modem (DSL,
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`cable, etc.), or no router at all, such as an Ethernet or fiber handoff, obviating the
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`need to program routers to talk to each other to decide paths. Id. This represents a
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`technological leap compared to Cisco’s technology. Id. For the first time, end users
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`have the ability to use multiple internet/WAN connections without the need for a
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`Cisco certified programmer, a revolution called SDWAN. Id. As a result of their
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`efforts, over the past 15 years they have built a company with 74-employees in the
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`U.S., and have acquired 11 patents. Id. Even though FatPipe embodies the
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`American dream, petitioner Cisco Systems, Inc., a $49 billion company with over
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`74,000 employees, attempts to unfairly destroy FatPipe’s legacy using its market
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`power and extensive bankroll ($60 billion) to unfairly harass FatPipe. (Ex. 2013, ¶
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`7).
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`Cisco has consistently tried to bully FatPipe in the marketplace by
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`undercutting the price of its products in order to compete with FatPipe and as an
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`attempt to dominate the market. (Ex. 2013, ¶ 7). Cisco’s Senior Corporate Counsel
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`of IP Litigation even expressed to Patent Owner that Cisco would like a free
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`license to FatPipe’s patents for the privilege of withdrawing the Viptela lawsuit.
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`Sur-Reply
`IPR2017-01845
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`However, if Cisco’s terms were not met, then Cisco would “go after” all of
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`FatPipe’s patents. (Ex. 2013, ¶ 8).
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`But the relationship between FatPipe and Cisco has not always been hostile.
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`Over the past three years, Petitioner and Patent Owner’s founders have discussed
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`opportunities that may exist to partner on FatPipe’s technology. Through these
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`discussions, petitioner Cisco has become aware of the ‘235 patent and its assertion
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`against Talari and Viptela and those companies’ inter partes review proceedings
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`against the ‘235 patent. For example, FatPipe and Cisco met in January 2014 (Ex.
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`2014; Ex. 2015), again in December 2015 (Ex. 2016; Ex. 2017; Ex. 2018; Ex.
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`2019), and again in November 2016 (Ex. 2013, ¶¶ 6-7; Ex. 2020).
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`Subsequent to Cisco entering in negotiations with Viptela to acquire it,
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`Cisco has attempted to exploit every tactical advantage it can to unfairly harass and
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`the Patent Owner through this fourth petition for inter partes review against the
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`‘235 patent.
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`II. Discretionary Denial Under § 325(d) Is Warranted
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`In its reply, Petitioner identifies the 7 factors in General Plastic Industrial
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`Co., LTD., v. Canon Kabushiki Kaisha to be considered when a petitioner files
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`serial petitions for inter partes review against the same patent. IPR2016-01357-61,
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`Paper 19 (PTAB Sept. 6, 2017). These factors may also be considered when a
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`3
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`IPR2017-01845
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`different petitioners file serial petitions challenging the same patent. NetApp Inc. v.
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`Realtime Data LLC, IPR2017-01354, Paper 16 at 10 (PTAB Nov. 14, 2017).
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`The Board has also expressed concern over “the limited resources of the
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`Board and fundamental fairness for both Petitioner and Patent Owner,” noting the
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`tactical advantage enjoyed by subsequent petitions:
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`Petitioner cannot expect automatic acceptance of multiple petitions for
`consideration, if they are against the same claims of the same patent
`and filed so long apart that Petitioner received the benefit of having
`studied Patent Owner’s Preliminary Response in the first petition or
`the Board’s decision on whether to institute review in the first
`petition, prior to filing the second petition…The Board’s decision on
`prior challenges, is real and cannot be ignored.” NVIDIA Corp. v.
`Samsung Elecs. Co., IPR2016-00134, Paper 9 (PTAB May 4, 2016).
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`Here, the General Plastic factors align with the application and reasoning in
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`NetApp, were the later-filed petition was denied, even though it was filed by a
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`different petitioner. NetApp at 1-5. While factors 1 and 2 will normally weigh in
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`favor of a different petitioner, the Board weighs and balances each factor; no single
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`factor is viewed as being dispositive. NetApp at 10-11, 13.
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`As in NetApp, Factor 3 weighs in favor of Patent Owner because, through
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`the delay in filing, Petitioner could tailor its arguments to address issues identified
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`by the Patent Owner and the Board in the prior proceedings. NetApp at 11.
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`4
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`Sur-Reply
`IPR2017-01845
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`Factor 4 also weighs in favor of denying institution because the new prior art
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`reference that forms the basis for the challenge, Guerin, is a U.S. patent, as in
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`NetApp. Thus, to the extent that Guerin is as relevant as Petitioner asserts, the
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`reference readily could have been found. In fact, Guerin is cross-classified in
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`class/subclass 709/238, which is one of the U.S. classifications searched by
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`Cardinal IP. (Ex. 1023, p. 27).
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`Factor 5 weighs in favor of denying institution because Petitioner failed to
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`provide adequate reasoning as to why its petitions were filed in the narrow window
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`between (a) Patent Owner’s preliminary responses to the second Viptela petition
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`(July 5) and the Board’s institution decision (July 14) and (b) the completion of
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`Petitioner’s acquisition of Viptela (announced August 1). Further, the declaration
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`testimony of one of Petitioner’s attorneys in this proceeding conspicuously omits
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`any mention of when Petitioner became aware of Guerin, whether other copies of
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`Guerin were provided to Petitioner’s counsel prior to May 2017, and whether the
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`copy added in May 2015 is the earliest copy received or stored by Haynes and
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`Boone.
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`Factor 6 weighs in favor of denying institution because the Board has
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`previously considered three other petitions for the ‘235 patent. Thus, the Board has
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`already expended considerable resources on adjudicating other proceedings for the
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`same patent.
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`5
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`IPR2017-01845
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`Lastly, factor 7 is irrelevant because Petitioner neglected to seek joinder of
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`the earlier petitions filed by Talari and Viptela.
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`In sum, the factors weigh in denying institution.
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`III. Section 315(b) Bars the Petition Because Cisco and Viptela Are in
`Privity
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`Petitioner does not dispute that it was contractually obligated to acquire
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`Viptela prior to the filing of the Petition. As a result of that agreement, privity was
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`established between Petitioner and Viptela. Because of the acquisition, if trial is
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`instituted, Petitioner will have control over two petitions for the same patent filed
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`within four months of each other. Additionally, the Taylor factors are satisfied: (1)
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`Viptela adequately represented the interest of Petitioner by filing petitions for inter
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`partes review; (2) Viptela’s interest in invalidating the patent to protect its business
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`aligns to protect Petitioner’s newly acquired interest, i.e., Viptela’s accused line of
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`products; and (3) Petitioner had notice of the suit against Viptela from its meetings
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`with Patent Owner. See Taylor v. Sturgell, 533 U.S. 880, 901 (2008).
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`6
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`Sur-Reply
`IPR2017-01845
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`IV. Conclusion
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`For the foregoing reasons the Patent Owner respectfully requests that the
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`Board deny the Petition under 35 U.S.C. §§ 315(b) and 325(d).
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`Dated: December 1, 2017
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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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`7
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of SUR-
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`REPLY IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
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`and EXHIBITS 2013-2020 on the counsel of record for Petitioner by filing this
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`document through the PTAB E2E System as well as delivering a copy via
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`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
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`/Robert C. Mattson/
`Robert C. Mattson
`Reg. No. 42,850
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`Dated: December 1, 2017
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