Paper No. 10
`Filed: September 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SANDVINE CORPORATION and SANDVINE INCORPORATED ULC,
`
`PETITIONERS,
`
`V.
`
`PACKET INTELLIGENCE, LLC,
`
`PATENT OWNER.
`
`___________________
`
`Case No. IPR2017-00769
`U.S. Patent No. 6,651,099
`___________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`EX 1049 Page 1
`
`
`Filed: September 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SANDVINE CORPORATION and SANDVINE INCORPORATED ULC,
`
`PETITIONERS,
`
`V.
`
`PACKET INTELLIGENCE, LLC,
`
`PATENT OWNER.
`
`___________________
`
`Case No. IPR2017-00769
`U.S. Patent No. 6,651,099
`___________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`EX 1049 Page 1
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`
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`TABLE OF CONTENTS
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`III.
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`THE BOARD DID NOT OVERLOOK OR MISAPPREHEND THE
`ARGUMENTS IN THE PETITION ............................................................... 1
`Hash Table Arguments Were Not Raised In The Petition ............................. 1
`The Board Did Not Ignore Key Evidence ...................................................... 3
`PETITIONERS’ NEW ARGUMENTS DO NOT ESTABLISH THAT
`ENGEL DISCLOSES “CONVERSATIONAL FLOWS” .............................. 7
`The Operation Of Engel ................................................................................. 7
`Application Level Dialogs And Hash Tables ................................................. 9
`1. Petitioners Conflate Protocol And Application ............................................ 9
`2. Hash Tables Are Not Conversational Flows ............................................... 10
`3. New Evidence Not Included In the Petition ............................................... 13
`Application-Specific Server Statistics .......................................................... 13
`IV. CONCLUSION ..............................................................................................15
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`i
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`EX 1049 Page 2
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`
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`Cases
`
`TABLE OF AUTHORITIES
`
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00247, paper 19 (PTAB May 29, 2015) ................................................. 5
`Apple, Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00357, Paper 9 (PTAB June 29, 2015) ................................................... 5
`C.R. Bard, Inc. v. Medical Components, Inc.,
`IPR2015-01660, Paper 11 (PTAB Sept. 22, 2016) ................................... 6, 13, 15
`Cisco Sys. Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Pap. 12 (Aug. 29, 2014) ............................................................. 6
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
`IPR2015-01872, Paper 15 (PTAB April 19, 2016) ............................................... 3
`Fidelity Nat’l Info. Servs., Inc. v. Data Treasury Corp.,
`Case IPR2014-00489, Paper 9 (PTAB Aug. 13, 2014) ................................ 13, 15
`Limelight Networks, Inc. v. Akamai Technologies, Inc.,
`IPR2017-00349, Paper 7 (PTAB May 30, 2017) ................................................... 6
`Sophos Ltd. et al. v. Fortinet, Inc.,
`IPR2015-00910, Paper 10 (PTAB Oct. 26, 2015) ................................................. 2
`Telit Wireless Solutions Inc. et al. v. M2M Solutions LLC,
`IPR2016-00055, Paper 13 (PTAB May 24, 2016) ................................................. 3
`Regulations
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 5
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`ii
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`EX 1049 Page 3
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`GLOSSARY OF TERMS
`
`Term
`
`Definition
`
`“Decision”
`
`“Patent Owner”
`
`“Petitioners”
`
`“Petition” or “Pet.”
`
`“Response”
`
`“Request”
`
`Decision Denying Institution of Inter
`Partes Review, 37 C.F.R. §42.108
`dated July 26, 2017. (Paper 8)
`
`Packet Intelligence, LLC
`
`Sandvine Corporation and Sandvine
`Incorporated ULC
`
`Petition for Inter Partes Review of
`Claims 1-10 of U.S. Patent No.
`6,651,099 dated January 25, 2017
`(Paper 2)
`
`Patent Owner’s Preliminary Response
`dated April 28, 2017 (Paper 6)
`
`Request for Rehearing dated August
`25, 2017 (Paper 9)
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`iii
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`EX 1049 Page 4
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`I.
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`INTRODUCTION
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`Petitioners’ Request for Rehearing should be denied. The Board’s Decision
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`denying institution of inter partes review did not “overlook” or “misapprehend”
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`arguments as Petitioner argues. To the contrary, the Decision correctly understood
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`the arguments presented in the Petition. The Petition and the Rehearing Request fails
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`to show that Engel discloses conversational flow as construed by the Board.
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`Petitioners’ Request is nothing more than an attempt to use the Board’s Decision as
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`a roadmap to develop and present new arguments not articulated in the Petition. As
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`the Board has recognized in other cases, a request for rehearing is not an opportunity
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`for a party to re-argue its case. Nor is a rehearing request an opportunity to
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`supplement the record and to raise issues for the first time. Petitioners’ Request
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`violates all of these principles, fails to show an abuse of discretion by the Board, and
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`must be denied. Furthermore, even if the Board considers Petitioners’ new
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`arguments, they do not address the deficiencies identified in the Decision and Patent
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`Owner’s Preliminary Response.
`
`II. THE BOARD DID NOT OVERLOOK OR MISAPPREHEND THE
`ARGUMENTS IN THE PETITION
` Hash Table Arguments Were Not Raised In The Petition
`The primary focus of Patent Owner’s Response was that Engel does not
`
`disclose “conversational flow.” Petitioners’ Request argues that the Board allegedly
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`misapprehended or overlooked arguments regarding an “application hash table” in
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`1
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`EX 1049 Page 5
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`connection with (1) Application Level Dialogs and (2) Application-Specific Server
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`Statistics. Specifically, Petitioners claim “each Application Level Dialog and
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`Application-Specific Server Statistics records in Engel is part of an application-
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`specific hash table that only includes dialog or server records for a particular
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`identified application. These application-specific hash tables are used by
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`application-specific lookup routines based on an identification of the packet’s
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`application activity.” Request at 4.
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`In connection with its arguing about “conversational flow,” the Petition
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`discusses Application Level Dialogs on pages 19-22. However, the only reference
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`to “hash table” is on page 20 where the term is part of a function name. Pet. at 20.
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`Likewise, Application-Specific Server Statistics are discussed on pages 23-25 of the
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`Petition. Once again, there is only one reference to “hash table” in a function name
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`on page 25. In seven pages of briefing, there are only two passing references to “hash
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`table” without any significant argument or discussion.
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`The Board did not misapprehend or overlook anything because there was
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`nothing to overlook or misapprehend. A hash table argument could have been raised
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`and developed in the Petition, but was not. The Board consistently rejects attempts
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`to introduce new arguments in rehearing requests that were not raised or developed
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`in the petition. See Sophos Ltd. et al. v. Fortinet, Inc., IPR2015-00910, Paper 10 at
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`4-5 (PTAB Oct. 26, 2015) (“A request for rehearing is not an opportunity to present
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`2
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`EX 1049 Page 6
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`new arguments or evidence that could have been presented and developed in the
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`Petition…we could not have overlooked or misapprehended arguments or evidence
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`not presented and developed by [Petitioner] in the Petition.”); Telit Wireless
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`Solutions Inc. et al. v. M2M Solutions LLC, IPR2016-00055, Paper 13 at 3, 5 (PTAB
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`May 24, 2016) (“A request for rehearing is not an opportunity for a party to add new
`
`arguments, or bolster prior arguments that were found unpersuasive.”…“Petitioner
`
`attempts, belatedly, to provide explanation we found lacking in the original
`
`Petition.”); Ericsson Inc. et al. v. Intellectual Ventures II LLC, IPR2015-01872,
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`Paper 15 at 4 (PTAB April 19, 2016) (“This argument was not presented in the
`
`Petition. A request for rehearing is not an opportunity for a party to introduce new
`
`argument, bolster insufficient argument, or mend gaps in the evidence relied on in
`
`the Petition.”).
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`
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`The Board Did Not Ignore Key Evidence
`
`Petitioners fault the Board for not sufficiently crediting Dr. Lin’s declaration
`
`or considering the Source Code Appendix VI (“Appendix VI”). Petitioners are
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`wrong on both counts.
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`Starting with Dr. Lin’s declaration, the Decision acknowledges that the Board
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`read Dr. Lin’s explanation of how Engel’s disclosed system works and specifically
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`identified paragraphs 51-157, which encompass all of the citations to the Lin
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`Declaration (Ex. 1006) identified in the Request that Petitioners claim the Board
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`3
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`EX 1049 Page 7
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`overlooked. See Decision at 23, fn. 4. Dr. Lin’s declaration provides his explanation
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`of the operation of Appendix VI. Id. (citing Ex. 1006 at ¶51). The Board also
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`observed that Dr. Lin offers no opinions that the Engel’s system (including
`
`Appendix VI) discloses “conversational flows.” Id. Thus, there can be no doubt that
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`that the Board considered the Lin Declaration.
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`As for Appendix VI, Petitioners complain that the Board did “not
`
`meaningfully discuss this key evidence” and that the Decision “emphasized only the
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`limited disclosures of the Engel patent itself.” Request at 11. There is no need to
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`separately address Appendix VI (or the Lin Declaration) for several reasons.
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`First, as noted above, the Board considered Dr. Lin’s declaration, which
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`provides an explaination of the operation of Appendix VI. See Decision at 23, fn. 4.
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`Thus, the Lin declaration serves as a proxy for the source code in Appendix VI.
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`Second, the Engel patent explains that Appendix VI implements an
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`embodiment disclosed in Engel. See Ex. 1007 at 43:25-26 (“Appendix VI contains
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`microfiche of the source code for an embodiment of the invention.”); 6:1-4
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`(“Appendix VI is a microfiche appendix presenting source code for the real time
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`parser, the statistics data structures and the statistics modules.”). Even the Petitioners
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`acknowledge, “the Engel patent itself is consistent with the source code.”1 Request
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`1 Petitioners’ protests regarding Dr. Almeroth not providing an overview of the
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`4
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`EX 1049 Page 8
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`at 9. Since Appendix VI is merely a source code rendering of the disclosures made
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`in the patent, there is no need for the Board to separately call out and cite to source
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`code in its Decision.
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`Third, while the Petition does reference Appendix VI, such references are
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`often string citations where Petitioners point to where a single idea is allegedly found
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`in (1) the Engel patent, (2) the Lin Declaration, and (3) Appendix VI. See, for
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`example, Pet. at 19-25. In those instances, there is no need for the Board to comment
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`on the each source of the concept. Other times the Petition includes source code
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`images but provides little, if any, explanation about the significance of the snippet,
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`what it meant to convey, or how it is relevant. In those instances, the Petitioners
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`failed to develop and articulate arguments in the Petition itself, which is a violation
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`of the Board’s rules. See 37 C.F.R. § 42.6(a)(3); 2Wire, Inc. v. TQ Delta LLC,
`
`IPR2015-00247, paper 19 at 13 (PTAB May 29, 2015) (“we do not consider
`
`information presented in the Declaration but not discussed sufficiently in the
`
`Petition.”); Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00357, Paper 9 at
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`10 (PTAB June 29, 2015) (“Board rules also prohibit incorporation by reference,
`
`
`Appendix VI are undercut by Engel’s admission that Appendix VI is an
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`implementation of an embodiment of the specification, as well as Petitioners’
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`acknowledgement that the patent is consistent with the source code.
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`5
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`EX 1049 Page 9
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`such as incorporating over 100 paragraphs of a declaration into a petition.”);
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`Limelight Networks, Inc. v. Akamai Technologies, Inc., IPR2017-00349, Paper 7 at
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`11 (PTAB May 30, 2017) (“We agree that the Petition improperly incorporates
`
`Exhibit [] because it includes arguments made only in a supporting document.”).
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`Appendix VI is approximately 630 pages of source code, and the Lin
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`Declaration is almost 110 pages (158 paragraphs). Petitioners bear the burden of
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`articulating their arguments in the Petition itself, as opposed to requiring the Board
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`to scour the record on behalf of Petitioners. See Cisco Sys. Inc. v. C-Cation Techs.,
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`LLC, IPR2014-00454, Pap. 12 at 9 (Aug. 29, 2014) (“Further, the Petition includes
`
`citations to the Declaration to support conclusory statements for which the Petition
`
`does not otherwise provide an argument or explanation….This practice of citing the
`
`Declaration to support conclusory statements that are not otherwise supported in the
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`Petition also amounts to incorporation by reference.”); 10 (“‘A brief must make all
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`arguments accessible to the judges, rather than ask them to play archeologist with
`
`the record’ Accordingly, we do not consider arguments not made in the Petition.”);
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`C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01660, Paper 11 at 8 (PTAB
`
`Sept. 22, 2016) (“Arguments and information that are not presented and developed
`
`in the Petition, and instead are incorporated by reference to Mr. Tallarida’s
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`declaration, are not entitled to consideration.”). Petitioners made deliberate decisions
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`about what arguments and evidence to present in the Petition and must live with the
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`EX 1049 Page 10
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`consequences of those decisions.
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`III. PETITIONERS’ NEW ARGUMENTS DO NOT ESTABLISH THAT
`ENGEL DISCLOSES “CONVERSATIONAL FLOWS”
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`The Board construed “conversational flow” consistent with the disclosure in
`
`the specification as “the sequence of packets that are exchanged in any direction as
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`a result of an activity (for instance, the running of an application on a server as
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`requested by a client), where some conversational flows involve more than one
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`connection, and some even involve more than one exchange of packets between a
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`client and server.” Decision at 9. The Request suggests that application hash tables
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`disclose conversational flows. However, Petitioners do not attempt to show how
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`their new theory satisfies the Board’s construction. Indeed, the term “conversational
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`flow” barely appears in the Request and when it does, it is usually in a quote from
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`the Decision, rather than any analysis.
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` The Operation Of Engel
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`As a reminder, Engel is fundamentally concerned with tracking statistical
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`information to assist searching for actual or potential network problems. Decision at
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`17. The Petition explains that Engel discloses dialogs, which are “[the exchange of]
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`messages and the associated meaning and state that is inherent in any particular
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`exchange at any layer.” Pet. at 20 (citing Ex. 1007 at 9:24-27) (emphasis added).
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`The Petition goes on to state “Engel specifically discloses creating and maintaining
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`dialogs describing the data link layer, network layer, transport layer, and application
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`EX 1049 Page 11
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`layer protocols utilized in a given message exchange, each dialog storing statistical
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`information regarding the nature of the communication at the associated protocol
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`layer.” Pet. at 20.
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`The Board examined Engel, especially its disclosure of “dialog” which
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`discloses that at each OSI level, there is an exchange of messages and the associated
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`meaning and state that is inherent in any particular exchange at any layer and each
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`message is viewed as belonging to multiple dialogs. Decision at 19-20 (citing Ex.
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`1007 at 9:9-43). The Board recognized that “Engel monitors communications
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`exchanged between the nodes at a particular layer, and tracks statistics for all
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`communications at that layer (to assist in diagnosing network problems and
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`improving network performance).” Decision at 20.
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`Engel essentially puts all of the information related to a given OSI layer into
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`a bucket for each layer. Therefore, all Layer 7 data is in one bucket, all Layer 4 data
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`is one bucket, etc. See Response at 50 (“Engel would bucket the information from
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`each stream per OSI layer…”); 40 (citing Ex. 1007 at 11:32-34 (“Which layers are
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`to have statistics stored for them is determined by a parse control record that is stored
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`in STATS.”)); see also Decision at 21 (image representing Engel’s dialogs v.
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`conversational flows). The Request does not dispute the fundamental operation of
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`Engel. The Request’s argument is based on an “application-specific hash table that
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`only includes dialog or server records for a particular identified application.”
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`EX 1049 Page 12
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`Request at 4. But, as explained below, the Request fails to establish – nor can it –
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`that Engel discloses a conversational flow, especially in light of Engel’s explanation
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`that dialogs are separate. Ex. 1007 at 9:58-60; Response at 33.
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` Application Level Dialogs And Hash Tables
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`The Decision notes that Petitioners’ argument is “conversational flows exist
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`in Engel simply because communications exist at the application layer and because
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`those communications result from some application activity.” Decision at 22. The
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`Board noted that Engel does not disclose, nor does the Board point to anything
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`indicating Engel links communications by application (as opposed to by layer and
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`client-server pair). Decision at 22 (emphasis added).
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`1.
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`Petitioners Conflate Protocol And Application
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`It is important to note that Petitioners appear to conflate the terms
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`“application” and “protocol” in the Request. A “protocol” is an established rule for
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`formatting data. See Response at 4. An “application” is a software program that runs
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`on a computer, for example, a web browser, word processor, Skype, etc. See also
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`Ex. 1006 at ¶37 (the “application layer is concerned with the application itself.
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`Examples of application layer protocols include HTTP (for web browsing), SMTP
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`(for emails), and FTP (for file transfers).”). There can be, and generally are, multiple
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`software programs that utilize a given protocol.
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`The Decision was based on Petitioners’ failure “[to] point to any disclosure in
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`EX 1049 Page 13
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`Engel indicating that its disclosed system relates information from one packet to
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`another as pertaining to a specific application activity.” Decision at 20. Based on
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`that criticism, the strategy for the Request was to use the word “application” as much
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`as possible. However, while that may provide some superficial appeal, it is important
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`to keep in mind that protocol, application (as used in the OSI model) and application
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`(a software program) are distinct concepts that are not interchangeable.
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`2. Hash Tables Are Not Conversational Flows
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`Petitioners’ rehearing argument is that Application Level Dialogs (and
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`Application-Specific Server Statistics) records in Engel are part of “an “application-
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`specific hash table that only includes dialog or server records for a particular
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`identified application.” Request at 4. Petitioners contend that Engel discloses data
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`structures in the form of hash tables that are populated with data for only one
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`protocol type (for example, NFS or FTP). Petitioners consistently refer to these as
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`“application-specific hash tables.” However, that name is not accurate. Rather, the
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`tables are populated by protocol-specific information. The term “application”
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`appears to come from the common name for OSI Layer 7 (the “application” layer).
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`Indeed, the Request repeatedly states that Engel supports protocols such as FTP,
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`SMTP, and Telnet. See Request at 6; see also Ex. 1007 at 8:1-20 (identifying various
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`protocols).
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`Petitioners argue that such tables “include[] only dialog records for the
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`EX 1049 Page 14
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`specific” protocol. That would mean that Engel would keep FTP records in one table,
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`NSF protocol records in another table, Telnet records in another table, TCP records
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`in a further table, etc. Nevertheless, this still does not rise to the level of identifying
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`a conversational flow. For example, assume User A requests uses FTP Program 1 to
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`requests a File X from Server S. That will be one entry in the table. If User A
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`requests the same file ten times from the same server throughout the day, there will
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`be ten records in the table. Petitioners provide no explanation of how Engel would
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`distinguish between
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`the
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`ten separate
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`instances. The Request cites
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`to a
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`stats_lookup_dialog that can be used to find a dialog between two IP addresses.
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`Request at 7. However, using the prior example, the routine would return ten results
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`with no way to distinguish between them.
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`Further, consider if User A uses FTP Program 1 to get a file from Server S
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`and then uses FTP Program 2 to get a file from Server S. In this hypothetical there
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`are two distinct software programs both retrieving the same file, from the same
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`server, using the same protocol. There would be two entries in the Petitioners’ hash
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`table. The Request does not indicate how these distinct instances would be treated.
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`Furthermore, Engel’s dialogs are very different from conversational flows as
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`discussed in the patent and the Decision. See Decision at 16-25. Petitioners’ new
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`arguments do not address this fundamental problem. At best, Petitioners now argue
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`that not all OSI Layer 7 data is in a single bucket, but several smaller sub-buckets
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`EX 1049 Page 15
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`that are segregated by protocol. Importantly, Petitioners provide no explanation for
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`how specific instances are linked together/related. Simply grouping by protocol is
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`not sufficient. For example, returning to the Skype example referenced in the
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`Decision on page 17, a single Skype instance can spawn multiple connections
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`utilizing different protocols (one for audio and one for video). Petitioners’ hash
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`tables would apparently put the audio protocol information in an appropriate hash
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`table and the video information in a different table. There is no explanation of how
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`Engel would recognize these are being related to the same application.
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`Engel (and the STATS database in particular) are not designed to track
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`conversational flows. Engel is concerned with tracking statistics to “assist in
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`diagnosing network problems and improving network performance.” See Decision
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`at 20; see also Ex. 1007 at 14:43-44 (Engel explains that “STATS defines the
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`database and it contains subroutines for updating the statistics which it keeps.”);
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`4:50-51 (“FIGS. 7a-c show the STATS data structures which store performance
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`statistics relating to the data link layer.”); 12:13-14 (“STATS 36 is also responsible
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`for tracking events of interest in the form of various statistical reductions”; 14:28-
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`33 (one of the functions of STATS is “to define statistics records”). The Board
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`observed that “[m]onitoring statistics is not the same as monitoring a conversational
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`flow” so it is not surprising that Engel, which is geared towards collecting network
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`statistics, does not disclosure a mechanism for identifying conversational flows.
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`Decision at 17.
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`3.
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`New Evidence Not Included In the Petition
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`The Request includes new argument and evidence not contained in the
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`Petition in violation of the Board’s rules. See, e.g., Fidelity Nat’l Info. Servs., Inc. v.
`
`Data Treasury Corp., Case IPR2014-00489, Paper 9 at 9–11 (PTAB Aug. 13, 2014)
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`(declining to consider information presented in a supporting declaration, but not
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`discussed in the petition). Specifically, the Request pastes excerpts from Dr. Lin’s
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`declaration and Appendix VI that were not in the Petition. See Request at 7 (block
`
`quote), 10 (block quote); C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-
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`01660, Paper 11 at 8 (PTAB Sept. 22, 2016) (“Petitioner’s attempt in its Rehearing
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`Request to rely on paragraph 165 of Mr. Tallarida’s declaration to proffer a new
`
`argument not made in the Petition is impermissible for an additional reason—it
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`constitutes incorporation by reference, which our rules prohibit.”).
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` Application-Specific Server Statistics
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`As an initial matter, the Request incorporates the same arguments from the
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`Application Level Dialogs in Section III.A of the Request. See Request at 12, 13
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`(“and like the application-specific dialog records….”). Patent Owner, therefore, also
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`incorporates the arguments made above in response to Petitions new arguments
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`concerning application level dialogs.
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`The only argument that appears to differ in any meaningful respect from the
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`dialog records argument concerns the “dialogQ.” The Petition argued that Engel
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`discloses conversational flows via application-specific server statistics, specifically
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`“tracking statistics for a given application and a specific server and all of its clients.”
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`Pet. at 23. Petitioners argued that Engel discloses “storing statistics for each server
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`participating in communications for a particular application program (e.g. NFS,
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`Telnet, FTP, SMTP, Netware, etc.).” Pet. at 24. Their argument suffers from the
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`same problems addresses above. First, application as used by Petitioners actually
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`references to a protocol, not a software application. Second, storing statistics about
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`a protocol is not equivalent to a conversational flow. The Board’s construction
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`includes a “sequence of packets that are exchanged in any direction as a result of an
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`activity…” Decision at 10. Merely storing statistics does not meet this requirement,
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`and the Board correctly rejected this argument. Decision at 25 (“Keeping statistics
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`relating to separate dialogs does not extend to linking unique dialogs, let alone
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`linking them based on a specific application.”).
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`The Request offers no direct challenge to the Board’s conclusions (very little
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`ink is devoted to any substantive arguments). At most, the Request appears to argue
`
`that Engel can determine if there are statistics for a particular server, and perhaps
`
`even for a specific protocol. The Request states that a “dialogQ” links “all
`
`application-specific dialog records for the same application” [i.e., protocol] “in
`
`which the server has participated.” Request at 14. But, no explanation is provided
`
`
`
`14
`
`EX 1049 Page 18
`
`
`
`
`
`on how that information is distilled so specific connections between the server and
`
`a specific user are related based on a specific user’s application activity. At most,
`
`the Request seems to assert that statistics for a server for a particular protocol can be
`
`derived. That falls far short of a conversational flow.
`
`More importantly, nothing in the Petition addresses the severe shortcomings
`
`highlighted in the Decision.
`
`Finally, as noted in connection with prior arguments, the Request’s section on
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`Application-Specific Server Statistics again includes new argument and evidence
`
`not contained in the Petition in violation of the Board’s rules. See, e.g., Fidelity,
`
`IPR2014-00489, Paper 9 at 9–11. Specifically, the Request pastes excerpts from Dr.
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`Lin’s declaration and Appendix VI that were not in the Petition. See Request at 14
`
`(block quote); C.R. Bard, IPR2015-01660, Paper 11 at 8.
`
`IV. CONCLUSION
`
`Petitioners’ Request is improper because it fails to identify the issues the
`
`Board has misapprehended or overlooked in denying institution. Moreover, it fails
`
`to show that the Board’s decision not to institute was an abuse of discretion. For all
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`the foregoing reasons, Petitioners’ Request for rehearing should be denied.
`
`
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`
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`15
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`EX 1049 Page 19
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`
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`September 15, 2017
`
`
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`
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Paul J. Skiermont (pro hac vice
`application to be submitted)
`Sadaf R. Abdullah (pro hac vice
`application to be submitted)
`SKIERMONT DERBY LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`
`
`16
`
`EX 1049 Page 20
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Patent Owner a true and correct copy of the foregoing Patent Owner’s
`
`Preliminary Response Under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, by electronic
`
`means on September 15, 2017 at the following addresses of record:
`
`Eric A. Buresh (Reg. No. 50,394)
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`eric.buresh@eriseip.com
`Lead Counsel for Petitioners
`
`Mark C. Lang (Reg. No. 55,356)
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`mark.lang@eriseip.com
`Back-Up Counsel for Petitioners
`
`Kathleen D. Fitterling (Reg. No. 62,950)
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`kathleen.fitterling@eriseip.com
`Back-Up Counsel for Petitioners
`
`Abran J. Kean (Reg. No. 58,540)
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, Colorado 80111
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`abran.kean@eriseip.com
`Back-Up Counsel for Petitioners
`
`Dated: September 15, 2017
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`EX 1049 Page 21
`
`
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