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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner
`
`v.
`
`ORCKIT CORPORATION,
`Patent Owner.
`
`Case IPR2023-00554
`
`Patent No. 10,652,111
`
`PATENT OWNER’S MOTION TO STAY REEXAMINATION
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`As authorized by the Board on December 21, 2023, Patent Owner Orckit
`
`Corporation (“Patent Owner”) respectfully moves under 35 U.S.C. § 315(d) and 37
`
`C.F.R. § 42.122(a) to stay Ex Parte Reexamination No. 90/015,261 of U.S. Patent
`
`10,652,111 filed by Petitioner Cisco Systems, Inc.’s (“Petitioner”). Patent Owner
`
`requests that the ’261 reexamination by stayed until a final written decision is
`
`entered in this proceeding.
`
`II.
`
`PROCEDURAL HISTORY
`
`
`
`On February 21, 2023, Petitioner filed this IPR challenging claims of the ’111
`
`Patent. The Board instituted this IPR on September 20, 2023. On July 20, 2023,
`
`Petitioner filed the ’261 Reexamination challenging many of the same claims of
`
`the ’111 Patent challenged in this IPR. No Office action has yet issued in the ’261
`
`Reexamination. To avoid duplicative efforts by the Parties and the Patent Office
`
`and potentially inconsistent results, Patent Owner now respectfully moves to stay
`
`the ’261 Reexamination pending resolution of this IPR.
`
`III. LEGAL STANDARD
`
`When another matter involving the same patent is pending before the United
`
`States Patent and Trademark Office, the Board may “stay, transfer, consolidat[e],
`
`or terminat[e] . . . any such matter or proceeding.” 35 U.S.C. § 315(d); see also 37
`
`C.F.R. §§ 42.122(a), 42.3(a).
`
`
`
`1
`
`
`
`To obtain a stay of a reexamination, the party seeking the stay must show
`
`good cause. See Fox Factory, Inc. v. SRAM, LLC, IPR2017-01440, Paper 32 at 3
`
`(PTAB June 4, 2018). The Board routinely finds good cause exists in
`
`circumstances such as those in this matter, where the IPR “is subject to statutory
`
`deadlines [and] is addressing the same or overlapping claims of [the] patent at
`
`issue in [the] parallel reexamination proceeding.” Notice Regarding Options for
`
`Amendments by Patent Owner Through Reissue or Reexamination During a
`
`Pending AIA Trial Proceeding (Notice Regarding Options for Amendments), 84
`
`Fed. Reg. 16,654, 16,656 (Apr. 22, 2019); see also id. (good cause found where
`
`claims between reexamination and IPR overlapped); Gnosis S.P.A., et al. v. Merck
`
`& CIE, IPR2013-00117, Paper 10 at 2-3 (PTAB Apr. 3, 2013) (same); CBS
`
`Interactive v. Helferich Patent Licensing, IPR2013-00033, Paper 15 at 2 (PTAB
`
`Nov. 6, 2012) (same).
`
`In determining whether good cause exists for staying a reexamination, the
`
`Board may consider the factors set out in the Notice Regarding Options for
`
`Amendments:
`
`(1) whether the claims challenged in the IPR are the same as or depend
`
`directly or indirectly from claims at issue in the reexamination;
`
`(2) whether the same grounds of unpatentability or the same prior art
`
`are at issue in both the IPR and the reexamination;
`
`
`
`2
`
`
`
`(3) whether simultaneous conduct of the reexamination and IPR will
`
`duplicate efforts within the Office;
`
`(4) whether the reexamination could result in the inconsistent results
`
`with the IPR;
`
`(5) whether amending the claim scope in one proceeding would affect
`
`claim scope in the other;
`
`(6) the respective timelines and stages of each proceeding;
`
`(7) the statutory deadlines of the reexamination and IPR; and
`
`(8) whether a decision in the IPR would likely simplify issues presented
`
`in the reexamination or render it moot.
`
`See 84 Fed. Reg. at 16,657 (collecting cases). As explained below, these
`
`factors collectively favor staying the ’261 reexamination.
`
`IV. THE ’261 REEXAMINATION SHOULD BE STAYED
`
`A.
`
`Factor 1
`
`The instant IPR and the ’261 reexamination challenge overlapping claims of
`
`the ’111 Patent. For example, the instant IPR challenges claims 1-9, 12-24, 27-29,
`
`and 31 of the ’111 Patent (in addition to claim 30). Likewise, the ’261
`
`reexamination also challenges claims 1-9, 12-24, 27-29, and 31 of the ’111 Patent
`
`(in addition to other dependent claims of claims 1 and 32). Thus, the instant IPR
`
`and the ’261 reexamination are certain to implicate multiple identical issues (such
`
`
`
`3
`
`
`
`as claim construction). Moreover, independent claim 1 at issue in both proceedings
`
`share much of the same claim language as the sole other independent claim (claim
`
`32) challenged in the reexamination, including “packet network,” “network node,”
`
`“transporting packets between first and second entities under control of a controller
`
`that is external to the network node,” an “instruction,” a “criterion,” “a packet
`
`addressed to the second entity,” “if the packet satisfies the criterion,” and
`
`“responsive to the packet satisfying the criterion, sending the packet…to an entity
`
`that is included in the instruction and is other than the second entity.” It is
`
`anticipated that the Final Written Decision in this proceeding will touch on the
`
`constructions of these terms which will affect the disposition of the reexamination.
`
`In similar circumstances, the Board has found that where, as here, “there is some
`
`overlap in the claim language in the claims challenged [in the IPR and the
`
`reexamination], Factor 1 weights slightly in favor of granting the Motion to Stay.”
`
`Samsung Elecs. Co., Ltd. et. al. v. POWER2B Inc., IPR2022-00334, Paper 26, at
`
`*5-6 (PTAB Feb. 21, 2023).
`
`B.
`
`Factor 2
`
`While the instant IPR and the ’261 reexamination rely on different prior art
`
`(Lin, Shieh, and Swenson in the IPR; and Kasumoto, Quittek, Dolganow, and
`
`Huang in the reexamination), the Board has stayed reexaminations pending an IPR
`
`even when, as here, there was no overlap in the subject prior art. See, e.g., Google
`
`
`
`4
`
`
`
`LLC v. Ecofactor, Inc., IPR2021-00054, Paper 12 at 4 (PTAB June 28, 2021).
`
`Rather, the Board found that a stay was warranted when considering the totality of
`
`the factors because the overlapping challenged claims presented a significant
`
`likelihood of duplication of efforts and inconsistent results. The same is true here.
`
`As a result of the overlapping claims and similar theories of invalidity presented by
`
`the same Petitioner, the Examiner and the Board will apply analogous teachings of
`
`the prior art to identical claim language. Accordingly, this factor does not weigh
`
`against staying the reexamination.
`
`C.
`
`Factor 3
`
`Staying the ’261 reexamination furthers Office economy, as simultaneous
`
`conduct of the reexamination and the IPR will duplicate efforts. The Board stays
`
`pending reexamination proceedings to prevent duplicative efforts that could result
`
`in inconsistent findings between agency decisions. See, e.g., Fox Factory, Inc.,
`
`IPR2017-01440, Paper 32 at 3. Indeed, the Board has stayed reexaminations to
`
`prevent duplicative efforts even where there was no overlap in the subject prior art.
`
`See, e.g., Google LLC v. Ecofactor, Inc., IPR2021-00054, Paper 12 at 4 (PTAB
`
`June 28, 2021). Conducting both the examination and the IPR would duplicate
`
`efforts, and thus this factor also supports staying the reexamination.
`
`
`
`
`
`
`
`5
`
`
`
`D.
`
`Factor 4
`
`The ’261 reexamination should be stayed because maintaining multiple
`
`proceedings could lead to different decisions in each proceeding. For example,
`
`claim construction issues decided in this IPR will impact the analysis of the prior
`
`art in the ’261 reexamination and vice versa. Importantly, a decision in this IPR
`
`could simplify issues in the concurrent reexamination, or render it moot. The risk
`
`of inconsistency is heightened by potential and probable differences in record
`
`evidence, where such differing testimonial evidence may relate to the scope of the
`
`asserted prior art, the level of skill in the art, claim interpretation, motivations to
`
`combine, and objective indicia of nonobviousness. See, e.g., Pfizer, Inc. v.
`
`Hoffman-La Roche Inc., IPR2018-01219, Paper 13 at 2-3 (PTAB Dec. 18, 2018).
`
`Thus, this factor favors a stay.
`
`E.
`
`Factor 5
`
`The ’261 reexamination should be stayed because amendments or new
`
`claims in the reexamination would have a significant and unpredictable effect on
`
`this IPR. See, e.g., Google LLC, IPR2021-00054, Paper 12 at 4 (granting stay
`
`although no amendment had been sought in either proceeding). For example, if
`
`claims were added or amended in reexamination and a reexamination certificate
`
`issued prior to completion of this IPR, it could set back the IPR timeline, requiring
`
`the Board to implement ad hoc procedures and extend the one-year deadline to
`
`
`
`6
`
`
`
`enter a final written decision. See 35 U.S.C. § 316. By contrast, staying the
`
`reexamination would allow this IPR to proceed to conclusion, potentially
`
`simplifying the issues.
`
`F.
`
`Factor 6
`
`The ’261 reexamination should be stayed in light of the respective stages of
`
`the proceedings. The instant IPR was filed prior to the ’261 reexamination and has
`
`already proceeded significantly into the Patent Owner response period, including
`
`the completion of the deposition of Petitioner’s expert. Further, the -554 IPR is
`
`subject to the one-year deadline provided by 35 U.S.C. § 316. The ’261 Patent, by
`
`contrast, is in its early stages and no Office action has issued. As a result, the
`
`instant IPR has proceeded significantly further than the ’261 reexamination and
`
`this factor supports a stay.
`
`G.
`
`Factor 7
`
`The ’261 reexamination should be stayed in light of the statutory deadline
`
`for issuing a final written decision in this IPR, which is one year after institution.
`
`See 35 U.S.C. § 316; 37 C.F.R. § 42.100(c). As this IPR has already been
`
`instituted, a final written decision must issue no later than September 20, 2024. By
`
`contrast, there are no explicit statutory deadlines to issue a final Office Action, file
`
`appeal briefs, and render an appeal decision in the reexamination. The timing
`
`
`
`7
`
`
`
`considerations thus weigh in favor of staying the slower reexamination. See, e.g.,
`
`Google LLC, IPR2021-00054, Paper 12 at 5.
`
`H.
`
`Factor 8
`
`The ’261 reexamination should be stayed because a decision in the instant
`
`IPR would simplify the issues for reexamination, particularly with respect to
`
`disputes concerning the teachings of the ’111 patent and claim constructions
`
`involving the overlapping claims. See, e.g., Mueller Systems, LLC, IPR2020-
`
`00098, Paper 13 at 6 (“A final written decision in this proceeding would likely
`
`affect the reexamination proceeding, and, similarly, a reexamination certificate
`
`would likely affect this proceeding.”).
`
`I.
`
`Additional Considerations Favoring a Stay
`
`Finally, no party would be prejudiced if the motion to stay were granted
`
`because the requestor of the reexamination (Cisco) is also the Petitioner of the IPR.
`
`Petitioner is an active participant in the instant IPR and has multiple opportunities
`
`to advance its positions, whereas Petitioner has no involvement in the
`
`reexamination. Thus, a stay would not deprive Petitioner of any opportunities to
`
`challenge the ’111 Patent, and Petitioner would not be prejudiced by a stay. The
`
`Board stays pending reexamination proceedings when there is no prejudice to the
`
`non-moving party and should do so here. Google Inc. v. Summit 6 LLC, IPR2015-
`
`00806, Paper 26 at 5 (PTAB Oct. 7, 2015) (no prejudice found when Petitioner had
`
`
`
`8
`
`
`
`no role in reexamination and proceedings involve the same patent as well as
`
`overlapping claims and prior art).
`
`V. CONCLUSION
`
`Having two proceedings involving overlapping claims of the same patent
`
`and similar prior art issues, taking place at the same time, is inconsistent with the
`
`Board’s rules designed to “secure the just, speedy, and inexpensive resolution of
`
`every proceeding.” 37 C.F.R. § 42.1(b); see also 37 C.F.R. § 42.122(a). The instant
`
`IPR was filed prior to the ’261 reexamination and has already proceeded
`
`significantly into the Patent Owner response period, including the completion of
`
`the deposition of Petitioner’s expert. Further, the -554 IPR is subject to the one-
`
`year deadline provided by 35 U.S.C. § 316. The ’261 Patent, by contrast, is in its
`
`early stages and no Office action has issued. Because the two proceedings address
`
`overlapping claims, there also is a significant risk of duplication of efforts,
`
`inconsistent results, or complex procedural interactions stemming from amended
`
`claims in one proceeding. Patent Owner therefore respectfully requests a stay of
`
`the ’261 reexamination until a final written decision is entered in this proceeding.
`
`
`
`
`
`
`
`
`
`9
`
`
`
`Date: January 5, 2024
`
`
`
`Respectfully submitted,
`
`
`/Minghui Yang/
`Minghui Yang
`Reg. No. 71,989
`Counsel for Patent Owner
`CARMICHAEL IP, PLLC
`8607 Westwood Center Drive
`Suite 270
`Tysons, VA 22182
`Email: mitch@carmichaelip.com
`Telephone: (703) 646-9248
`
`
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following document was served by
`
`electronic service, by agreement between the parties, on the date below:
`
`PATENT OWNER’S MOTION TO STAY REEXAMINATION
`
`The names and email addresses of the parties being served are as follows:
`
`
`
`
`
`
`
`
`
`Jeffrey D. Blake
`
`
`
`jblake@merchantgould.com
`
`OrckitIPR@merchantgould.com
`
`
`Respectfully submitted,
`
`
`/Minghui Yang/
`
`Date: January 5, 2024
`
`
`
`
`
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