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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
`U.S. Patent No. 10,652,111
`____________________________
`
`PETITIONER’S OPPOSITION TO PATENT
`OWNER’S MOTION TO STAY REEXAMINATION
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`I.
`
`INTRODUCTION
`Petitioner Cisco Systems, Inc. (“Petitioner”) respectfully submits that the
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`Board should deny Orckit Corporation’s (“Patent Owner”) motion to stay Ex Parte
`
`Reexamination No. 90/015,261 (“the ’261 Reexamination”) involving U.S. Patent
`
`No. 10,652,111 (“the ’111 Patent”). The ’261 Reexamination should not be stayed
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`because it involves different patentability arguments and different prior art than that
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`raised in this IPR proceeding (“the ’554 IPR”). Indeed, when granting the ’261
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`Reexamination, the Office determined that the arguments and prior art in the two
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`proceedings “are not the same or substantially the same.” Moreover, the ’261
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`Reexamination includes 27 claims of the ’111 Patent that are not challenged in the
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`IPR; thus, resolution of the IPR will not resolve all issues in the reexamination.
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`Simply put, a stay of the ’261 Reexamination will not lead to greater
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`efficiencies or reduce the resources required to complete these two proceedings.
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`Patent Owner bases its stay request largely on speculation about potential claim
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`construction or possible conflicting decisions in the two proceedings. But these
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`arguments are just that – speculation. Taken to their extreme, Patent Owner’s
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`arguments would dictate that a reexamination proceeding is always stayed when
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`there is a co-pending IPR. That is inconsistent with Patent Office regulations.
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`Patent Owner’s motion should be denied.
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`
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`1
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`
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`II. LEGAL STANDARD
`35 U.S.C. § 315(d) states that “during the pendency of an inter partes review,
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`if another proceeding or matter involving the [same] patent is before the Office, the
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`Director may … stay, transfer, consolidate[e], or terminat[e]” the other proceeding
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`or matter. See 37 C.F.R. § 42.122(a). The party seeking a stay “carries the burden of
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`persuasion” and must show good cause for the stay. Arctic Cat, Inc. v. Polaris Indus.,
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`Inc., IPR2015-01781, -01783, Paper 78 at 2 (PTAB Sept. 25, 2018); see 37 C.F.R.
`
`§ 42.20(c). In determining whether good cause exists, the Board utilizes eight
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`guiding factors (discussed individually below) and makes a decision based on the
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`totality of the circumstances. See 84 Fed. Reg. 16,654, 16,656-57 (Apr. 22, 2019).
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`III. THE ’261 REEXAMINATION SHOULD NOT BE STAYED
`The totality of the circumstances demonstrates that a stay of the ’261
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`Reexamination is not warranted. At least Factors 1-5 and 8 weigh against a stay
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`because the ’261 Reexamination involves 27 additional claims, different
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`patentability arguments and different prior art as compared to the ’554 IPR. Factor
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`6 is neutral, and Factor 7 weighs, at most, slightly against a stay.
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`FACTOR 1
`A.
`Factor 1 relates to “[w]hether the claims challenged in the [IPR] are the same
`
`as or depend directly or indirectly from claims at issue in the [reexamination].” See
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`84 Fed. Reg. at 16,656-57. This factor disfavors a stay because 27 out of the 54 total
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`claims involved in the ’261 Reexamination proceeding (i.e., 50% of the claims)
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`2
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`
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`are not challenged in the ’554 IPR. The ’261 Reexamination was granted on
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`Claims 1-54 of the ’111 Patent, whereas the ’554 IPR challenges only Claims 1-9,
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`12-24 and 27-31 of that patent. See EX1014; Paper 1. Thus, Claims 10-11, 25-26
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`and 32-54 of the ’111 Patent are involved in the reexamination but not the IPR.
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` Claims 10-11 and 25-26 recite subject matter that is not claimed in any of
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`the challenged claims in the ’554 IPR, including sending the packets to an
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`application server for analysis, utilizing a specific OpenFlow protocol version, or
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`providing an instruction with a Type-Length-Value (TLV) structure. EX1001, Cols.
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`11:45-54, 12:46-50. In addition, Claims 32-54 do not depend directly or indirectly
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`from any challenged claims in the ’554 IPR. Id., Cols. 13:8-14:60. Thus, the ’261
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`Reexamination will involve different analysis than the ’554 IPR. As the PTAB
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`explained in Arctic Cat, “a stay of the reexamination proceedings would not promote
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`consistency with regard to the added claims, because the proceedings at hand [e.g.,
`
`the IPR] will not address those [additional] claims.” IPR2015-01781, Paper 78 at 4.
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`Indeed, a stay “would be a waste of resources because action with regard to the new
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`claims would not be completed” by a Final Written Decision in the IPR. Id.
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`Patent Owner argues that the additional claims at issue in the ’621
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`Reexamination are of no import because (1) some of the additional claims have
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`similar limitations to those involved in the ’554 IPR and (2) the ’554 IPR may “touch
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`on” claim constructions that will affect the disposition of the ’261 Reexamination.
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`3
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`
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`Paper 20 at 3-4. Patent Owner is wrong. First, as discussed above, some of the
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`additional claims in the ’261 Reexamination recite additional limitations that are not
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`at issue in claims of the ’554 IPR. Second, the claim construction argument is a red
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`herring because reexaminations and IPRs use different claim construction standards
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`(broadest reasonable construction vs. ordinary and customary meaning). Further,
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`Patent Owner’s claim construction argument is speculative because the Board
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`determined that no claim construction was necessary in its Institution Decision in
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`the ’554 IPR (Paper 8 at 12), and the Office provided no claim construction in
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`granting the ’261 Reexamination. EX1014. Moreover, while Patent Owner raised a
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`claim construction argument for a “controller” in its Patent Owner Response, Patent
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`Owner conceded that “it is not necessary for the Board to choose between the two
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`competing constructions of ‘controller’” because the patentability analysis does not
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`“turn on the Board resolving the parties’ dispute concerning the construction of
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`‘controller.’” Paper 22 at 16-17. Thus, it is not expected that the Board will issue
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`any constructions because the Board only construes terms if necessary to resolve a
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`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
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`1013, 1017 (Fed. Cir. 2017). Factor 1 weighs against a stay.
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`FACTOR 2
`B.
`Factor 2 relates to “[w]hether the same grounds of unpatentability or the same
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`prior art are at issue in both proceedings.” See 84 Fed. Reg. at 16,656-57. This factor
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`4
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`
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`weighs against a stay because none of the grounds of unpatentability or the
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`asserted prior art are the same in the ’261 Reexamination and the ’554 IPR.
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`The ’261 Reexamination identifies three substantial new questions of patentability
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`that are entirely different from the two grounds of unpatentability raised in the ’554
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`IPR. Paper 1; EX1014. Further, as shown in the table below, the prior art references
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`in the reexamination are entirely different than the prior art references in the IPR:
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`Prior Art in ’261 Reexamination
`US2013/0088967 (“Kusumoto”)
`US2005/0251859 (“Quittek”)
`US2010/0208590 (“Dolganow”)
`US2016/0219080 (“Huang”)
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`Prior Art in ’554 IPR
`U.S. Patent No. 9,264,400 (“Lin”)
`US2013/0291088 (“Shieh”)
`US2013/0322242 (“Swenson)
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`The different grounds of unpatentability and different prior art raised in
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`
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`the ’261 Reexamination versus the ’554 IPR necessarily dictate that the patentability
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`analysis will differ in the two proceedings. Indeed, the Office concluded that the
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`arguments and prior art in the two proceedings “are not the same or substantially the
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`same” in the order granting the ’261 Reexamination. EX1014 at 13. The Office
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`analyzed the primary prior art references identified in the ’554 IPR (Shieh and Lin)
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`and found them to be different than the primary prior art reference in the ’261
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`Reexamination (Kusumoto). Id. at 13-14.
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`Given the entirely different prior art and arguments in the two proceedings, a
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`stay of the ’261 Reexamination does not promote efficiency or Office economy. For
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`example, even if the challenged claims in the ’554 IPR are found unpatentable, the
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`5
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`
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`Office will still have to analyze Claims 10-11, 25-26 and 32-54 of the ’111 Patent in
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`the ’261 Reexamination because those claims are not at issue in the ’554 IPR.
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`
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`Patent Owner’s citation to Google LLC v. Ecofactor, Inc., IPR2021-00054,
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`Paper 12 at 4 (PTAB June 28, 2021) is inapposite because the IPR and reexamination
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`proceedings in Google both involved the same claims; thus, resolution of the claims
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`in one proceeding resolved all claims in the other proceeding. By contrast, the ’621
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`Reexamination involves 27 additional claims (out of 54 total claims) that are not
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`challenged in this proceeding. Factor 2 weighs against a stay.
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`FACTOR 3
`C.
`Factor 3 relates to “[w]hether the concurrent parallel Office proceeding will
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`duplicate efforts within the Office.” See 84 Fed. Reg. at 16,656-57. Here, the ’621
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`Reexamination involves 27 more claims than the ’554 IPR and patentability
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`arguments/prior art that the Office has already determined “are not the same or
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`substantially the same” as those in the ’554 IPR. EX1014 at 13. The differences in
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`the claims at issue, patentability arguments and prior art make it unlikely that there
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`will be duplication of efforts in the respective proceedings. As discussed above for
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`Factor 2, even if the ’554 IPR resolves the issues as to its challenged claims, there
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`will remain a separate patentability analysis to be performed for the additional claims
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`involved in the ’621 Reexamination. This distinguishes this motion from the Google
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`ruling relied upon by Patent Owner, where duplicate effort was avoided because
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`6
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`
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`there was complete overlap in the claims in both Office proceedings. IPR2021-
`
`00054, Paper 12 at 4. Factor 3 weighs against a stay.
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`FACTOR 4
`D.
`Factor 4 relates to “[w]hether the concurrent parallel Office proceeding could
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`result in inconsistent results between proceedings (e.g., whether substantially similar
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`issues are presented in the concurrent parallel Office proceeding).” See 84 Fed. Reg.
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`at 16,656-57. Here, the concurrent reexamination and IPR proceedings are unlikely
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`to lead to inconsistent results because, as the Office has already determined, the
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`arguments and prior art in the ’261 Reexamination “are not the same or substantially
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`the same” as those in the ’554 IPR. EX1014 at 13. Thus, there are unlikely to be
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`substantially similar issues presented in the parallel proceedings.
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`Patent Owner points to potential inconsistencies in claim construction as a
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`reason that this factor favors a stay. Paper 20 at 6. However, as explained above in
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`Factor 1, reexaminations and IPRs use different claim construction standards, and
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`the Office previously determined that no claim construction was necessary in
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`instituting the ’554 IPR (Paper 8 at 12) or granting the ’261 Reexamination. EX1014.
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`Moreover, the Patent Owner conceded that “it is not necessary for the Board to
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`choose between two competing constructions of ‘controller’ for purposes of issuing
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`a final written decision.” Paper 22 at 17. Any additional vague reference to “potential
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`or probable differences in record evidence” (Paper 20 at 6) is entirely speculative.
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`7
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`
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`For example, the prior art is different in the two proceedings, so there should be no
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`inconsistencies in interpretation of the scope of the art or in motivations to combine.
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`In fact, the Board’s (un)patentability findings in one proceeding would have no
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`bearing on the other because the claims may be found (un)patentable over one set of
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`prior art references but not over the other. In addition, Patent Owner provides no
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`explanation as to why there would be differences in the level of skill in the art or the
`
`analysis of objective indicia of nonobviousness in the two proceedings. Indeed, the
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`order granting the ’621 Reexamination discussed the ’554 IPR, demonstrating that
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`the Office is aware of both proceedings and can avoid inconsistent results between
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`them. EX1014 at 13. Factor 4 weighs against a stay.
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`FACTOR 5
`E.
`Factor 5 relates to “[w]hether amending the claim scope in one proceeding
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`would affect the claim scope in another proceeding.” See 84 Fed. Reg. at 16,656-57.
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`Patent Owner’s analysis of this factor is based on the speculative possibility that
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`“amendments or new claims in the reexamination would have significant and
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`unpredictable effect on this IPR.” Paper 20 at 6-7. But that is entirely within the
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`control of the Patent Owner. Moreover, Patent Owner had a chance to proffer claim
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`amendments in the IPR proceeding, but chose not to do so. As such, proffering claim
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`amendments in the ’621 Reexamination of Claims 1-54 that potentially affects the
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`claim scope in the IPR proceeding would entirely be attributable to Patent Owner’s
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`8
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`
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`attempt to concoct a tension that could have been avoided. And any amendments to
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`the Claims 10-11, 25-26 and 32-54 or new claims in the ’621 Reexamination will
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`not affect the IPR proceeding. The mere possibility of some future amendment or
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`new claims should not weigh in favor of a stay. Rather, Factor 5 weighs against a
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`stay; at most, Factor 5 is neutral.
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`FACTOR 6
`F.
`Factor 6 relates to “[t]he respective timeline and stage of each proceeding.”
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`See 84 Fed. Reg. at 16,656-57. Here, both proceedings are at an early stage. The
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`Office granted the ’621 Reexamination but has not yet issued an office action. In this
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`proceeding, the Patent Owner Response has been served only on January 15, 2024.
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`Factor 6 is at best neutral in these circumstances. IPR2021-00054, Paper 12 at 4-5.
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`FACTOR 7
`G.
`Factor 7 relates to “[t]he statutory deadlines of the respective proceedings.”
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`See 84 Fed. Reg. at 16,656-57. As Patent Owner notes, the ’544 IPR has been
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`instituted and is subject to the one-year statutory deadline for issuing a Final Written
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`Decision. See 35 U.S.C. § 316(a)(11). The ’621 Reexamination has no deadline, but
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`it should be “conducted with special dispatch within the Office.” See 35 U.S.C. §
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`305. However, this factor should weigh only slightly against a stay because the final
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`resolution of the ’554 IPR will not address the 27 additional claims involved in the
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`’621 Reexamination. See Arctic Cat, IPR2015-01781, Paper 78 at 4.
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`9
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`
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`FACTOR 8
`H.
`Factor 8 relates to “[w]hether a decision in [the IPR] would likely simplify
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`issues in the concurrent [reexamination] or render it moot.” See 84 Fed. Reg. at
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`16,656-57. Here, there is no evidence that a decision in the IPR will simplify the
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`issues in the reexamination because, as the Office determined, the arguments and
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`prior art in the ’261 Reexamination “are not the same or substantially the same” as
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`those in the ’554 IPR. EX1014 at 13. Even if the challenged claims are found
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`unpatentable in the IPR, the Office will have to analyze 27 additional claims in the
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`reexamination. And in the unlikely event the claims are not found unpatentable in
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`the IPR, the Office will still have to analyze the separate patentability questions in
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`the reexamination. Further, Patent Owner’s claim construction arguments (Paper 20
`
`at 8) fail because there are different standards in the different proceedings and the
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`Board likely will not engage in claim construction. Factor 8 weighs against a stay.
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`ADDITIONAL CONSIDERATIONS AGAINST A STAY
`I.
`Finally, Patent Owner is incorrect in its argument that a stay would not
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`prejudice Petitioner. Paper 20 at 8-9. Petitioner would be prejudiced by the delay
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`caused by a stay of the ’621 Reexamination because there are 27 claims involved in
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`the reexamination that would not be resolved by a decision in the ’554 IPR.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner’s motion to stay the ’261
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`Reexamination should be denied.
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`10
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`Date: January 19, 2024
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`Respectfully submitted,
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`
`
`
`
`/Jeffrey D. Blake/
`Jeffrey D. Blake
`Registration No. 58,884
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`11
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the preceding documents was served on the
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`Patent Owner as detailed below:
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`Date of service
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`
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`January 19, 2024
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`Manner of service
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`Email (by agreement between the Parties)
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`Documents served
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`Petitioner’s Opposition to Patent Owner’s Motion
`To Stay Reexamination
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`Persons served
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`James Carmichael
`Stephen McBride
`Minghui Yang
`CARMICHAEL IP, PLLC
`8607 Westwood Center Drive
`Suite 270
`Tysons, VA 22182
`Tel: (703) 646-9248
`Email: jim@carmichaelip.com
`
` stevemcbride@carmichaelip.com
` mitch@carmichaelip.com
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`/Jeffrey D. Blake/
`Jeffrey D. Blake
`Registration No. 58,884
`
`12
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