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`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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`CLOUDFLARE, INC. and
`SPLUNK INC.,
`Petitioners,
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`v.
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`SABLE NETWORKS, INC.
`Patent Owner.
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`___________
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`IPR2021-009091
`Patent 8,243,593 B2
`___________
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`PETITIONERS’ REQUEST FOR REHEARING
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`1 Splunk, Inc., which filed a petition in IPR2022-00228, has been joined as a
`petitioner in this proceeding.
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`LEGAL STANDARD ..................................................................................... 1
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`III. THE BOARD SHOULD FIND CLAIMS 17, 18, 37, AND 38
`OBVIOUS IN LIGHT OF YUNG AND COPELAND .................................. 2
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`IV. RELIEF REQUESTED ................................................................................... 8
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`i
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`I.
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`Introduction
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`Petitioners Cloudflare, Inc. and Splunk Inc. (“Petitioners”) respectfully
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`request that the Board grant this Request for Rehearing to reconsider the Final
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`Written Decision (Paper 42) (“FWD”), in which the Board declined to consider
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`whether dependent claims 17, 18, 37, and 38 are unpatentable as obvious based on
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`the combination of Yung and Copeland recited in the petition (i.e., Ground 2). The
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`Board’s decision rested on an apparent misapprehension of the fundamental
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`difference between this case and the Federal Circuit decisions cited in the FWD.
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`Thus, Petitioners request that the Board reconsider its decision and consider the
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`obviousness of claims 17, 18, 37, and 38 based on the combination of Yung and
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`Copeland presented in the petition. Patent Owner has never disputed Petitioners’
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`argument that these claims are obvious over the Yung-Copeland combination, and
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`therefore the Board should conclude that they are unpatentable as obvious.
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`II. Legal Standard
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`A party dissatisfied with a decision may file a request for rehearing without
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`prior authorization from the Board. The request must specifically identify all
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`matters the party believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed. See 37 C.F.R. § 42.71(d). This
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`request for rehearing is timely filed within 30 days after the final written decision
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`(Paper 42). 37 C.F.R. § 42.71(d)(2).
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`1
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`III. The Board Should Find Claims 17, 18, 37, and 38 Obvious in Light of
`Yung and Copeland
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`In the FWD, the Board refused to consider whether dependent claims 17, 18,
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`37, and 38 are obvious over Yung and Copeland (Ground 2). FWD at 35-38. The
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`Board concluded that it could not consider Petitioners’ argument on these claims
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`based on two Federal Circuit decisions: Koninklijke Philips N.V. v. Google LLC,
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`948 F3d 1330 (Fed. Cir. 2020) and Apple Inc. v. MPH Technologies Oy, 2022 WL
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`4103286 (Fed. Cir. Sept. 8, 2022) (non-precedential).2 Id. But the Board
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`misapprehended the fundamental difference between those cases and this one. In
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`both Federal Circuit decisions, the Board was asked to modify or create a new
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`ground of unpatentability rather than applying the grounds as expressly recited. In
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`contrast here, the Board is asked to correct a typographical error that was first
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`raised in the institution decision and immediately acknowledged as such by
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`Petitioners at the outset of the trial phase. The correction—reading the paragraphs
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`2 Petitioners addressed the Board’s ability to consider claims 17, 18, 37, and 38
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`based on Yung and Copeland in their reply brief (Paper 33 at 26-29).
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`Petitioners have not previously addressed the Apple decision because it issued
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`after briefing was complete and after oral argument—it was cited for the first
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`time in the FWD.
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`2
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`addressing claims 17, 18, 37 and 38 in the Ground 2 portion of the petition—
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`simply conforms the sequence of arguments to the only sensible reading of the
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`petition based on common sense and black-letter patent law.
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`As the Koninklijke Philips court recognized, the Board is not limited by the
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`“exact language of the petition”; it simply cannot “depart from the petition and
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`institute a different inter partes review of its own design.” 948 F.3d at 1336.3
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`That means that the Board cannot change a ground of unpatentability (e.g., to add
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`an additional reference) or create a ground of unpatentability not asserted in the
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`petition. In Koninklijke Philips, Google’s petition included two grounds:
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`(1) anticipation based on Synchronized Multimedia Integration Language 1.0
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`Specification (“SMIL 1.0”), and (2) obviousness based on “SMIL 1.0 in light of
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`the general knowledge of the [skilled artisan] regarding distributed multimedia
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`presentation systems as of the priority date.” Id. at 1333-34 (emphasis omitted).
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`Google relied on a prior art reference referred to as “Hua” to demonstrate the state
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`of the art. Id. at 1334. Though the petition asserted two grounds of
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`unpatentability, the Board instituted review on three grounds: the two identified in
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`Google’s petition and a third ground of obviousness based on SMIL 1.0 and Hua.
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`Id. at 1334. The Federal Circuit held that the Board erred in instituting a ground
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`3 All emphasis is added unless otherwise indicated.
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`3
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`based on SMIL 1.0 and Hua “because Google did not advance such a
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`combination of references in its petition.” Id. at 1337. Here, Petitioners do not
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`ask the Board to change the petition to create a new ground—they ask only that the
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`Board resolve an obvious and admitted typographical error that placed two
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`paragraphs in the wrong section of the petition.
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`In the Apple decision, the Federal Circuit again addressed a case in which
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`the petitioner asked the Board to change the composition of grounds asserted in the
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`petition. There, Apple’s petition recited three grounds of unpatentability based on
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`different obviousness combinations. Claim 5 was challenged based on a three-
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`reference combination including a prior art reference called “Ahonen.” 2022 WL
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`4103286, at *3. Claims 6 and 7 depend from claim 5, but were challenged in a
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`separate ground that did not include Ahonen. Id. Claim 8 also depends from claim
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`5 and was challenged in another separate four-reference combination that did not
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`include Ahonen. Id. Apple argued that the Board should consider Ahonen to be
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`part of the grounds challenging claims 6-7 (Ground 1) and claim 8 (Ground 3)
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`though the petition did not include Ahonen in those grounds. Id. at 6. The Board
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`refused to read the grounds challenging claims 6-8 as though they included
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`4
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`Ahonen. Id. at *3.4 The Federal Circuit agreed with the Board’s decision because
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`Apple only included Ahonen in Ground 2, which challenged claim 5, but did not
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`include Ahonen in Ground 1 and Ground 3 challenging claims 6-8. Id. at *7.
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`Thus, the Federal Circuit affirmed the Board’s decision not to consider newly
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`crafted grounds of unpatentability (i.e., Ground 1 plus Ahonen and Ground 3 plus
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`Ahonen). Id.
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`This case is fundamentally different than the Koninklijke Philips and Apple
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`cases, in which the petitioners asked the Board to interpolate arguments not in the
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`petition based on its own interpretive discretion. See Koninklijke Philips, 948 F.3d
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`at 1336 (declining to use “the Board’s discretion” to define the scope of review);
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`Apple, 2022 WL 4103286, at *7-8 (summarizing Apple’s legal arguments for
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`invalidating dependent claims when their underlying independent claims are found
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`to be invalid). The parties in Koninklijke Philips and Apple never did what
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`Petitioners did in this case, i.e., request resolution of an obvious typographical
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`error in a manner that makes sense as a matter of logic and patent law based on the
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`contentions recited in the petition itself. Claim 17 (for example) depends from
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`4 See also, id. (“Because Apple did not include Ahonen in Ground 1 addressing
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`claims 6 and 7 or Ground 3 addressing claim 8, the Board held that Apple did
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`not carry its burden as to those claims.”).
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`5
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`claim 12 and therefore includes every limitation of claim 12. See 37 C.F.R.
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`§ 1.75(c).5 Logic dictates that because claim 17 includes every limitation of
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`claim 12, then the portion of the petition showing how the prior art discloses
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`claim 12 must also apply to claim 17. Indeed, the section addressing claim 17
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`begins with the claim language, which itself begins by reciting “[t]he method of
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`claim 12….” thereby explicitly referring to the petition’s argument addressing
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`claim 12. There is only one argument for unpatentability of claim 12 in the
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`petition and that argument explicitly asserts that claim 12 is obvious over the
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`combination of “Yung-Copeland” (Paper 1 at 54), which therefore necessarily also
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`applies to claim 17.
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`The typographical error in the petition did not omit a ground or a prior art
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`reference; instead, it positioned the argument for claim 17 in the petition on a page
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`preceding the argument for claim 12, when it should have followed and built on the
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`argument addressing claim 12. No other modification is required—the Board need
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`not craft a new or modified ground of obviousness “of its own design”; indeed, the
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`5 Claims 12 and 17 are used to illustrate the point, which applies equally to each
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`of claims 17, 18, 37, and 38.
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`6
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`Board need not add a single word that is not already recited in the petition.6 The
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`Board need only read the arguments recited in the petition in a logical and legally
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`sensible way that resolves a clear and admitted typographical error.
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`Both parties and the Board agree that the Board can apply logic and common
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`sense to resolve the facially apparent error in the sequence of arguments in the
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`petition. FWD at 35 n.22; see Koninklijke Philips, 948 F.3d at 1336 (“the Board is
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`not limited by the exact language of the petition”). The decisions in Koninklijke
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`Philips and Apple do not prevent the Board from doing so, and indeed Patent
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`Owner has cited no authority to suggest otherwise. In contrast, Petitioners cited a
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`number of decisions in which the Board read petitions in the most logical manner,
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`even though not exactly as they were written. Paper 33 at 28-29. The Board can
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`and should to the same here.
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`6 The Board denied Petitioners’ request to file a motion to correct the petition
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`because it would purportedly “add a contention to the Petition during a trial.”
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`FWD at 38 n.24. But the contentions already exist in the petition—the text
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`currently labeled as Sections VII.A.8 and VII.A.9 should have been labeled
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`Sections VII.B.8 and VII.B.9 immediately after the section on claims 12 and 32.
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`7
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`IV. Relief Requested
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`Petitioners respectfully request rehearing to correct the issues discussed
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`above. Particularly, Petitioners respectfully request that the Board find Petitioners
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`have shown that the combination of Yung and Copeland renders dependent claims
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`17, 18, 37, and 38 unpatentable as obvious.
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`Dated: November 17, 2022
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`Respectfully submitted,
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` /James L. Day/
`James L. Day
`Registration No. 72,681
`Attorney for Petitioner Cloudflare, Inc.
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`8
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`Case IPR2021-00909—Petitioners’ Request for Rehearing
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 17, 2022, I caused a complete and entire
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`copy of Petitioners’ Request for Rehearing to be served by electronic means to the
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`following addresses:
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`weatherwax@lowensteinweatherwax.com,
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`Sable_IPRs@lowensteinweatherwax.com.
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` /James L. Day/
`James L. Day
`Registration No. 72,681
`Farella Braun + Martel LLP
`235 Montgomery Street; 17th Floor
`San Francisco, CA 94104
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