IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`ORCKIT CORPORATION,
`
`Plaintiff,
`
`Civil Action No. 2:22-CV-00276-JRG
`
`v.
`
`JURY TRIAL DEMANDED
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`DEFENDANT’S FIRST AMENDED INVALIDITY CONTENTIONS
`
`Pursuant to Local Patent Rule 3-3 and the Court’s First Amended Docket Control Order
`
`(D.I. 45), Cisco Systems, Inc. (“Cisco”) hereby sets forth its First Amended Invalidity Contentions
`
`concerning U.S. Patent Nos. 6,680,904 (“the ’904 Patent”), 7,545,740 (“the ’740 Patent”),
`
`8,830,821 (“the ’821 Patent”), and 10,652,111 (“the ’111 Patent”) (collectively, the “Asserted
`
`Patents”). Plaintiff Orckit Corporation (“Orckit”) has asserted claims 1–26 of the ’904 Patent,
`
`claims 1–31 of the ’740 Patent, claims 1–20 of the ’821 Patent, and claims 1–9, 12–24, and 27–31
`
`of the ’111 Patent (collectively, the “Asserted Claims”). Cisco contends that each of the Asserted
`
`Claims is invalid under at least one or more of 35 U.S.C. §§ 101, 102, 103, and 112.
`
`I.
`
`SCOPE OF THESE FIRST AMENDED INVALIDITY CONTENTIONS
`
`These First Amended Invalidity Contentions: (i) identify each prior art reference Cisco is
`
`currently aware of that either anticipates or renders obvious one or more of the Asserted Claims;
`
`(ii) specify whether each such reference anticipates or renders obvious the applicable claims, and
`
`in the event a combination with one or more other such references renders obvious the applicable
`
`claims, identify each such combination and the motivation to combine such references; (iii) include
`
`charts, for illustrative prior art references, citing exemplary disclosures in those references that
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 1 of 58
`
`

`

`anticipate or render obvious each of the elements of the applicable claims; and (iv) identify grounds
`
`for invalidating asserted claims based on indefiniteness, enablement, lack of patentable subject
`
`matter, improper inventorship, or written description or based on lack of disclosed structure under
`
`35 U.S.C. § 1121. These contentions relate only to invalidity, and do not include any contention
`
`or position beyond the issue of invalidity (e.g., non-infringement or claim construction).
`
`Cisco’s discovery and investigation in this lawsuit is ongoing, and these contentions are
`
`based only on the information Cisco has obtained to date. For example, Cisco has not had the
`
`opportunity to conduct third party discovery relating to various third-party prior art and expressly
`
`reserves the right to amend these contentions subject to third party discovery. These third parties
`
`may include, without limitation, the authors, inventors, or assignees of the prior art publications
`
`identified in these contentions. Cisco also reserves the right to amend the contentions due to
`
`Orckit’s failure to produce prior art known to it, including prior art identified by its own
`
`investigations, other accused infringers or third parties as to the Asserted Patents or related patents.
`
`Cisco reserves its right to supplement and/or amend its First Amended Invalidity Contentions
`
`consistent with the Federal Rules of Civil Procedure, the Local Rules, and any orders from the
`
`Court.
`
`These First Amended Invalidity Contentions are based upon Cisco’s present understanding
`
`of the Asserted Claims, Orckit’s November 3, 2022 Disclosure of Asserted Claims and
`
`Infringement Contentions Pursuant to P.R. 3-1, and Orckit’s January 19, 2023 First Amended
`
`Disclosure of Asserted Claims and Infringement Contentions Pursuant to P.R. 3-1 (Orckit’s
`
`1 The ’904 Patent, ’740 Patent, and ’821 Patent were all filed and claim priority before September
`16, 2011, and thus pre-AIA sections of 35 U.S.C. apply to them. The ’111 Patent was filed after
`September 16, 2011, and Orckit claims a priority date after September 16, 2011, so AIA sections
`of 35 U.S.C. apply to the ’111 patent. Unless stated otherwise, Cisco’s First Amended Contentions
`refer to pre-AIA or AIA statutes consistent with that understanding.
`
`2
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 2 of 58
`
`

`

`“Infringement Disclosures”). Cisco does not concede that any (apparent) claim constructions are
`
`correct. Even though Cisco contends that all of the Asserted Claims are indefinite, Cisco has
`
`disclosed which prior art references render those claims invalid based upon Orckit’s contention
`
`that those claims are definite. Cisco’s assertion of prior art is not a concession as to the meaning,
`
`definiteness, written description support for, or enablement of any of the Asserted Claims, or that
`
`the Asserted Patents properly claim patent eligible subject matter. If Orckit amends its
`
`Infringement Disclosures, Cisco reserves the right to amend its First Amended Invalidity
`
`Contentions, and Cisco notes that Orckit’s Infringement Disclosures failed to provide sufficient
`
`notice of Orckit’s infringement theories as required by the Local Rules. Indeed, Cisco served
`
`Orckit correspondence explaining how Orckit’s Infringement Disclosures were deficient on
`
`November 16, 2022 and on December 2, 2022, and Cisco met and conferred with Orckit’s counsel
`
`to explain these deficiencies in more detail.
`
`Cisco takes no position on any matter of claim construction in its First Amended Invalidity
`
`Contentions. Any statement herein describing or tending to describe any claim element is provided
`
`solely for the purpose of understanding the relevant prior art. Cisco expressly reserves the right to
`
`propose any claim construction it considers appropriate and/or to contest any claim construction it
`
`considers inappropriate. Moreover, Cisco’s First Amended Invalidity Contentions are sometimes
`
`made in the alternative based upon Orckit’s allegations and should be viewed accordingly.
`
`Further, by including in this disclosure prior art that would be anticipatory or render a claim
`
`obvious based on a particular scope or construction of the claims, Cisco’s First Amended Invalidity
`
`Contentions herein are not, and should in no way be seen as, adoptions or admissions as to the
`
`accuracy of such scope or construction. The Court has not yet construed the Asserted Claims, and
`
`3
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 3 of 58
`
`

`

`Cisco reserves the right to amend these First Amended Invalidity Contentions in accordance with
`
`P.R. 3-3, including after the issuance of the Court’s claim construction order.
`
`Additionally, Cisco reserves the right to amend its First Amended Invalidity Contentions
`
`in light of additional discovery and developments in this case. For example, to date, Orckit has
`
`produced 368 documents and discovery is still in its infancy. Cisco expressly reserves the right to
`
`amend its First Amended Invalidity Contentions after the production of any additional documents,
`
`the production of additional source code, the production of additional financial data, and after
`
`depositions are conducted. Both parties have also served subpoenas on third-party companies and
`
`are currently engaged in third-party discovery with respect to Cisco’s disclosed prior art systems.
`
`Cisco expressly reserves the right to amend its First Amended Invalidity Contentions with respect
`
`to information received in response to the parties’ subpoenas.
`
`II.
`
`ORCKIT’S ALLEGED PRIORITY DATES
`
`Orckit contends that the ’904 Patent has a priority date of December 27, 1999, that the ’740
`
`Patent has a priority date of April 7, 2006, that the ’821 Patent has a priority date of June 22, 2011,
`
`and that the ’111 Patent has a priority date of April 22, 2014. See Orckit’s Infringement
`
`Disclosures at 3–4. Cisco contends that the Asserted Patents can only claim priority to their
`
`respective filing dates of the earliest filed non-provisional application. In other words, the earliest
`
`possible priority date for the ’904 Patent is its filing date of December 27, 1999, the earliest
`
`possible priority date for the ’740 Patent is its filing date of April 7, 2006, the earliest possible
`
`priority date for the ’821 Patent is its filing date of December 5, 2011, and the earliest possible
`
`priority date for the ’111 Patent is its filing date of April 21, 2015.
`
`4
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 4 of 58
`
`

`

`With respect to the ’821 and ’111 Patents, Orckit has not met its burden to demonstrate
`
`that these patents should be entitled to an earlier priority date than their filing dates.2 Pursuant to
`
`Local Patent Rule 3-2(b), Orckit is required to disclose “[a]ll documents evidencing the
`
`conception, reduction to practice, design, and development of each claimed invention, which were
`
`created on or before the date of application for the patent in suit … .” Orckit’s Infringement
`
`Disclosures concede that Orckit has not identified any evidence corroborating a conception date
`
`earlier than the filing dates of the ’821 or ’111 Patents:
`
`
`
`Orckit’s Infringement Disclosures at 4 (annotation added).
`
`Orckit appears to claim priority to the provisional applications of the ’821 and ’111, but
`
`neither application supports priority of those patents because the provisional applications of the
`
`’821 and ’111 patents do not disclose each limitation of any claim of the ’821 or ’111 patents.
`
`For example, the provisional application of the ’821 Patent does not set forth an adequate
`
`written description or enable the claim scope alleged by Orckit of at least the following claim
`
`limitations: “determining an overall cost for each entity pair of said plurality of entities”;
`
`
`2 Orckit’s Infringement Disclosures treat the priority dates of the Asserted Patents as a whole, and
`Orckit does not forward any claim-by-claim priority analysis.
`
`5
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 5 of 58
`
`

`

`“selecting an entity pair from said plurality of transport entities based at least in part upon said
`
`overall cost; and”; “if an entity pair reselection event occurs, reselecting said entity pair from the
`
`group consisting of said entity pair and a replacement entity pair comprising at least one entity
`
`distinct from the entities of said entity pair”; “wherein said entity pair reselection event is selected
`
`from a group consisting of adding an entity to said plurality of transport entities, removing an
`
`entity from said plurality of transport entities, an operational status change for one of said plurality
`
`of transport entities, and a change in overall cost for one of said plurality of transport entities”;
`
`“digital logic configured to select said working entity and said protection entity from said plurality
`
`of transport entity descriptors, comprising: logic configured to determine a probability of
`
`concurrent failure of said working entity and said protection entity”; “logic configured to
`
`determine an entity cost of said plurality of transport entity descriptors”; and “wherein said
`
`reselection event is selected from a group consisting of adding an entity to said plurality of
`
`transport entities, removing an entity from said plurality of transport entities, an operational status
`
`change for one of said plurality of transport entities, and a change in overall cost for one of said
`
`plurality of transport entities.”
`
`For example, the provisional application of the ’111 Patent does not set forth an adequate
`
`written description or enable the claim scope alleged by Orckit of at least the following claim
`
`limitations: “controller,” “instruction,” “sending, by the controller to the network node over the
`
`packet network, an instruction and a packet-applicable criterion”; “responsive to the packet not
`
`satisfying the criterion, sending, by the network node over the packet network, the packet to the
`
`second entity”; “responsive to the packet satisfying the criterion, sending the packet, by the
`
`network node over the packet network, to an entity that is included in the instruction and is other
`
`than the second entity”; “receiving, from the controller, the instruction and the criterion”;
`
`6
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 6 of 58
`
`

`

`“checking if the packet satisfies the criterion; responsive to the packet not satisfying the criterion,
`
`sending over the packet network, the packet to the second entity”; and “responsive to the packet
`
`satisfying the criterion, sending the packet over the packet network, to an entity that is included in
`
`the instruction and is other than the second entity.”
`
`III.
`
`INVALIDITY BASED UPON PRIOR ART
`
`Cisco contends that each of the Asserted Claims is invalid under pre-AIA 35 U.S.C.
`
`§§ 102(a), 102(b), 102(e), 102(f), and 102(g) and/or § 103(a) and/or AIA 35 U.S.C. § 102(a)3
`
`and/or is invalid as obvious under 35 U.S.C. § 103. Cisco’s detailed contentions regarding the
`
`Asserted Claims in claim chart form are attached as Exhibits A-1 through A-9, B-1 through B-6,
`
`and C-1 through C-10, D-1 through D-11, and E-1 through E-4. Those charts disclose how each
`
`reference, or combination of references, anticipates and/or renders obvious each of the Asserted
`
`Claims.
`
`Cisco’s claim charts disclose multiple theories of invalidity in a single chart. For example,
`
`each chart directed to an anticipatory publication also discloses how that reference alone or in
`
`combination with one or more other references and/or the knowledge of one of ordinary skill in
`
`the art renders one of the Asserted Claims obvious. Exhibits A-1 through E-4 identify the
`
`exemplary disclosures within the prior art reference(s) that teach the relevant claim elements and
`
`limitations. While the claim charts have identified citations in the references for the claim limitations,
`
`each and every disclosure of the same limitation in the same reference is not necessarily identified.
`
`For example, whenever Exhibits A-1 through E-4 include a figure, diagram, table, or drawing, all
`
`of the text associated with that figure, diagram, table, or drawing is incorporated by reference (even
`
`
`3 Cisco also contends that the Asserted Claims of the ’740 Patent, ’821 Patent, and ’111 Patent are
`invalid pursuant to 35 U.S.C. § 101, but those contentions are separately outlined in Cisco’s
`Preliminary Subject Matter Eligibility Contentions, served on February 2, 2023.
`
`7
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 7 of 58
`
`

`

`if that text is not explicitly cited in the exhibit). Similarly, if an exhibit includes the text associated
`
`with a figure, diagram, table, or drawing, the described figure, diagram, or drawing is incorporated
`
`by reference (even if that figure, diagram, table, or drawing is not explicitly cited). Further,
`
`persons of ordinary skill in the art read a prior art reference as a whole, and in the context of other
`
`publications and literature. Thus, Cisco may also rely on uncited portions of the prior art
`
`references, any cited documents within any prior art reference, other publications, and the
`
`testimony of experts to establish that the limitations of the Asserted Claims are anticipated or
`
`rendered obvious and/or that a person of ordinary skill in the art would have been motivated to
`
`modify or combine certain of the cited references so as to render the claims obvious.
`
`A.
`
`Anticipation
`
`Cisco identifies below prior art references which anticipate one or more Asserted Claims,
`
`and/or render obvious one or more of the Asserted Claims, either alone or in combination with one
`
`or more other prior art references. The Asserted Claims are identified prior art references each
`
`qualify invalid as anticipated prior art under 35 U.S.C. § 102, including subsections pre-AIA
`
`102(a), 102(b), 102 (e), 102(f) and/or 102(g) and AIA 102(a).
`
`1.
`
`Patents And Patent Applications
`
`Abbreviated
`Name
`
`Czerwiec ’102
`
`Patent No. or
`Publication
`No.
`6,314,102
`
`Country
`of
`Origin
`U.S.
`
`Quoc ’214
`
`6,092,214
`
`U.S.
`
`Vink ’324
`
`MacKay ’727
`
`WO
`91/14324
`6,600,727
`
`PCT
`
`U.S.
`
`Dowling ’499
`
`6,636,499
`
`U.S.
`
`Filing
`Date
`
`07-10-
`1997
`11-06-
`1997
`03-18-
`1991
`05-27-
`1999
`12-02-
`1999
`
`8
`
`Issuance or
`Publication
`Date
`11-06-2001
`
`Claim
`Chart
`Number
`A-4
`
`Production
`Number
`
`CISCO00002781
`
`07-18-2000
`
`A-5
`
`CISCO00002688
`
`09-19-1991
`
`A-6
`
`CISCO00002367
`
`07-29-2003
`
`A-7
`
`CISCO00002784
`
`10-21-2003
`
`A-8
`
`CISCO00002657
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 8 of 58
`
`

`

`Abbreviated
`Name
`
`Nattkemper ’318
`
`Patent No. or
`Publication
`No.
`5,953,318
`
`Country
`of
`Origin
`U.S.
`
`Filing
`Date
`
`Issuance or
`Publication
`Date
`09-14-1999
`
`Claim
`Chart
`Number
`A-9
`
`Production
`Number
`
`CISCO00002626
`
`Doshi ’239
`
`Sivabalan ’928
`
`Zamfir ’948
`
`Hilla
`
`Devi
`
`Bruckman ’278
`
`Basso
`
`Ghosh
`
`Lebizay ’448
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`10-14-2004
`
`B-4
`
`CISCO00002792
`
`04-21-2005
`
`B-5
`
`CISCO00061650
`
`11-09-2006
`
`B-6
`
`CISCO00002732
`
`10-05-2006
`
`C-1
`
`CISCO00002754
`
`08-07-2003
`
`C-2
`
`CISCO00002642
`
`11-18-2004
`
`C-6
`
`CISCO00061641
`
`11-13-2003
`
`C-7
`
`CISCO00061703
`
`02-23-2006
`
`C-8
`
`CISCO00002140
`
`03-04-2004
`
`C-9
`
`CISCO00061662
`
`C-10
`
`CISCO00001673
`
`2004/020523
`9
`2005/008392
`8
`2006/025094
`8
`2006/022197
`4
`2003/014738
`7
`2004/022827
`8
`2003/021068
`8
`2006/003936
`6
`2004/004244
`8
`6,081,530
`
`Wiher ’530
`
`Kempf
`
`Swenson ’242
`
`2012/030061
`5
`2013/032224
`2
`Chandrasekaran 2014/014021
`1
`9,264,400
`
`Lin ’400
`
`Shieh ’088
`
`Chua ’877
`
`2013/029108
`8
`9,276,877
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`U.S.
`
`Chua ’151
`
`9,038,151
`
`U.S.
`
`Copeland
`
`Uchida
`
`
`
`2005/021053
`3
`2011/031090
`1
`
`U.S.
`
`U.S.
`
`12-04-
`1997
`09-26-
`2003
`10-20-
`2003
`05-09-
`2005
`04-02-
`2005
`04-24-
`2002
`05-13-
`2003
`05-13-
`2002
`08-20-
`2004
`08-30-
`2002
`11-24-
`1997
`06-28-
`2012
`05-31-
`2013
`11-16-
`2012
`12-02-
`2013
`04-10-
`2013
`03-15-
`2013
`03-15-
`2013
`05-26-
`2005
`07-26-
`2011
`
`9
`
`07-27-2000
`
`11-29-2012
`
`D-1
`
`CISCO00002141
`
`12-05-2013
`
`D-2
`
`CISCO00061649
`
`05-22-2014
`
`D-3
`
`CISCO00002142
`
`02-16-2016
`
`D-4
`
`CISCO00002629
`
`10-31-2013
`
`D-5
`
`CISCO00002636
`
`03-01-2016
`
`D-8
`
`CISCO00061713
`
`05-19-2015
`
`D-9
`
`CISCO00002762
`
`09-22-2005
`
`D-10
`
`CISCO00061642
`
`12-22-2011
`
`D-11
`
`CISCO00002123
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 9 of 58
`
`

`

`2.
`
`Non-Patent Literature4
`
`Abbreviated
`Name
`
`Title
`
`IEEE 802.3
`
`
`
`IEEE 802.3 Part 3: Carrier sense
`multiple access with collision
`detection (CSMA/CD) access
`method and physical layer
`specifications
`
`3.
`
`System Art
`
`Date of
`Publication
`
`Claim
`Chart
`Number
`
`Production Number
`
`March 8,
`2002
`
`C-4
`
`CISCO00002820
`
`The following systems render the Asserted Patents invalid through prior public use, prior
`
`sale, derivation, and/or prior invention. The systems were publicly known, available, and used in
`
`the United States prior to the alleged inventions of the Asserted Patents. The systems disclosed
`
`below are described in various cited publications and other materials, which also independently
`
`form a basis for invalidity based upon their publication. Multiple versions or implementations of
`
`any of the disclosed systems may exist—Cisco expressly reserves the right to rely upon other
`
`versions and implementations of these systems. Cisco expects that discovery will yield more
`
`information relating to the disclosed systems and reserves the right to amend or supplement these
`
`First Amended Invalidity Contentions as discovery progresses in this matter. As an example,
`
`Cisco has served subpoenas seeking discovery on these systems, and Cisco anticipates that it will
`
`amend these First Amended Invalidity Contentions after receiving such discovery.
`
`System
`
`No.
`
`Exemplary Publications Describing The
`System
`
`Catalyst XL
`Switches
`
`A-1
`
`1997 Cisco Catalyst 2900 Series XL Data
`Sheet
`TrafficDirector v.5.2, SwitchProbe v4.2
`Product Requirements Document
`
`Production
`Number
`
`CISCO00061726
`
`CISCO00002397
`
`Date Of
`Publicat
`ion
`1997
`
`October
`31,
`1997
`
`
`4 This table only lists non-patent literature that is not also part of a charted system.
`
`10
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 10 of 58
`
`

`

`System
`
`No.
`
`Exemplary Publications Describing The
`System
`
`1998 Cisco Catalyst 2900 Series XL
`Overview
`
`1999 Cisco Quick Start Guide – Catalyst
`2900 Series XL Switches
`
`1999 Cisco Catalyst 2900 Series XL ATM
`Modules Installation and Configuration
`Guide
`
`1999 Cisco Catalyst 3500 Series XL Data
`Sheet
`
`Date Of
`Publicat
`ion
`January
`06,
`1998
`May
`11,
`1999
`April
`1999
`
`May
`24,
`1999
`
`1999
`
`1999 Cisco Quick Start Guide – Catalyst
`3500 Series XL Switches
`Cisco Introduces Next-Generation Stacking
`with New Catalyst 3500 Series XL
`
`Release Notes for Catalyst GigaStack
`Gigabit Interface Converter
`
`1999 Release Notes for Catalyst GigaStack
`Gigabit Interface Converter
`Release Notes for Catalyst GigaStack
`Gigabit Interface Converter
`TrafficDirector 5.7 Maintenance Update
`Product Requirements
`
`May
`24,
`1999
`June
`11,
`1999
`July 6,
`1999
`Oct. 25,
`1999
`April
`17,
`1999
`July 23,
`Product Requirements Document – Zuma
`1998
`Software
`Hapuna Project Requirements Document October
`8, 1999
`Nov.
`12,
`1999
`Jan.,
`1999
`
`Merlin Functional Specification
`
`Nortel Networks Workgroup Products –
`BayStack 450 Switches – Bay Networks
`Data Sheet
`Nortel Networks User Manual – Using the
`BayStack 450 10/100/1000 Series Switch
`
`U.S. Patent No. 6,981,034 (“Ding ’034”)
`
`11
`
`July,
`1999
`Dec.
`27,
`2005
`
`Baystack 450
`Switches
`
`A-2
`
`Production
`Number
`
`CISCO00061739
`
`CISCO00061735
`
`CISCO00061733
`
`CISCO00061725
`
`CISCO00061737
`
`CISCO00061740
`
`CISCO00061729
`
`CISCO00061738
`
`CISCO00061728
`
`CISCO00002278
`
`CISCO00002330
`
`CISCO00002329
`
`CISCO00002821
`
`CISCO00061727
`
`CISCO00061731
`
`CISCO00061730
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 11 of 58
`
`

`

`System
`
`No.
`
`Exemplary Publications Describing The
`System
`
`TRENDnet TE100-DM/DS Series
`Dual-Speed Hub User’s Guide
`
`TRENDnet TE100-DSM, TE100-DFXM,
`TE100-DTXM Hub Expansion Module
`User’s Guide
`TRENDnet Press Release, Introducing the
`TRENDnet LAN Cruiser 10/100Mbps
`Series: Dual Speed Stackable Hubs
`DLink DFE-2600 Series Ethernet/Fast
`Ethernet Dual-Speed Managed/Unmanaged
`Stackable Hubs User’s Guide
`Cisco IOS Multiprotocol Label Switching
`Configuration Guide Release 12.2SR
`Cisco Press Release titled “Cisco Systems’
`MPLS-TE ‘Fast Reroute’” Function
`Introduced To NTT Communications’
`Arcstart IP-VPN”
`RFC 2328
`
`TRENDnet
`Stackable
`Hubs
`
`A-3
`
`Cisco IOS
`System
`
`B-1
`
`Juniper OS
`System
`
`B-2
`
`Juno OS Multiprotocol Label Switching
`Configuration Guide Release 11.1
`SD detection and protection triggering in
`MPLS-TP draft-rkhd-mpls-tp-sd-03.txt
`
`IETF MPLS-
`TP System
`
`B-3
`
`RFC 4872
`
`MPLS-TP Linear Protection draft-ietf-
`mpls-tp-linear-protection-01.txt
`Cisco Catalyst 6500 Data Sheet
`
`Cisco
`EtherChanne
`l System
`
`C-3
`
`Catalyst 6500/6000 Module
`
`Layer 2 EtherChannel
`
`Configuring EtherChannel
`
`Load Balancing
`
`Production
`Number
`
`TRENDNET000
`0005;
`CISCO00002698
`TRENDNET000
`0114
`
`CISCO00002369
`
`CISCO00061723
`
`CISCO00002639
`
`CISCO00061736
`
`CISCO00061722
`
`CISCO00002729
`
`CISCO00002618
`
`CISCO00002621
`
`CISCO00002619
`
`CISCO00002371
`
`CISCO00002133
`
`CISCO00001865
`
`CISCO00002137
`
`CISCO00002385
`
`Date Of
`Publicat
`ion
`May,
`1998
`
`Feb.,
`1998
`
`Jan. 5,
`1998
`
`March,
`1998
`
`10-14-
`2009
`04-25-
`2003
`
`April
`1998
`02-11-
`2011
`May
`31,
`2011
`May
`2007
`March
`7, 2010
`July
`2005
`Sept. 1,
`2005
`Feb. 26,
`2006
`Dec.
`15,
`2005
`August
`10,
`2005
`
`12
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 12 of 58
`
`

`

`System
`
`No.
`
`Exemplary Publications Describing The
`System
`
`Configuring LACP
`
`Cisco
`EtherSwitch
`System
`
`C-5
`
`Cisco IWAN
`System
`
`D-6
`
`Catalyst 3500 Series XL Hardware
`Installation Guide
`Catalyst 3500 End of Sale
`Catalyst 3560 Configuration Guide
`
`Cisco’s Fast EtherChannel
`
`Configuring EtherChannel and 802.1Q
`Trunking
`
`Cisco IOS Interface and Hardware
`Component Configuration Guide
`Cisco EtherSwitch System Catalog
`
`Cisco Product Quick Reference Guide
`
`IWAN –Intelligent WAN, Next Generation
`Branch Architecture
`Cisco Performance Routing (PfR) Solution
`Guides
`Cisco Intelligent WAN (IWAN): Right-
`Size Your Network without Compromise
`Cisco Next Generation Branch
`Architecture
`Cisco Intelligent WAN (IWAN)
`Cisco Intelligent WAN (IWAN) –
`Uncompromised Experience over Any
`Link
`Cisco Network Architecture Discovery,
`Planning, Design and Implementation
`Services for Intelligent WAN
`https://www.youtube.com/watch?v
`=GQuRzr__N-c (“DMVPN QoS for
`Intelligent WAN”)
`https://www.youtube.com/watch?v
`=XFsqTENxopo (“2014 March Webinar
`LiveAction IWAN Management”)
`
`13
`
`Date Of
`Publicat
`ion
`Dec.
`14,
`2005
`May
`2000
`2005
`July
`2005
`Mar.
`18,
`1997
`August
`30,
`2005
`2005-
`2006
`July
`1995
`July
`2005
`2013
`
`Production
`Number
`
`CISCO00000359
`
`CISCO00002693
`
`CISCO00002133
`CISCO00002117
`
`CISCO00002379
`
`CISCO00002384
`
`CISCO00002126
`
`CISCO00002743
`
`CISCO00002701
`
`CISCO00002609
`
`2012
`
`CISCO00002127
`
`2013
`
`CISCO00002122
`
`2013 CISCO00002609
`
`2013
`2013
`
`CISCO00002625
`CISCO00002611
`
`2009
`
`CISCO00002610
`
`CISCO00002634
`
`CISCO00002637
`
`March
`3, 2014
`
`March
`28,
`2014
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 13 of 58
`
`

`

`System
`
`No.
`
`Exemplary Publications Describing The
`System
`
`
`
`https://www.youtube.com/watch?v
`=8mWSXKIz2hk (“IWAN Management
`Technical Presentation and Demo”)
`Cisco Intelligent WAN
`
`Cisco IWAN and Akamai Intelligent
`Platform™: Maximize Your WAN
`Investment
`Cisco Application Services Platform
`Introducing VMware NSX
`
`VMware Product Guide
`
`VMware NSX Network Virtualization
`Design Guide
`VMware NSX: Helping Make the
`Software-Defined Data Center Real in
`2014
`NSX Design Guide
`Distributed virtual and physical routing in
`VMware NSX for vSphere
`
`Switching in VMware NSX
`
`Nicira NVP Control Plane
`
`VMware
`NSX System
`
`D-7
`
`Production
`Number
`
`CISCO00002624
`
`CISCO00002615
`
`CISCO00002632
`
`CISCO00002627
`CISCO00002368
`
`CISCO00002808
`
`CISCO00002749
`
`CISCO00002376
`
`CISCO00002731
`CISCO00002731
`
`CISCO00002138
`
`CISCO00002135
`
`Date Of
`Publicat
`ion
`Jan. 10,
`2014
`
`April.
`2014
`2013
`
`2013
`Aug.,
`2013
`Dec.
`2013
`2013
`
`Feb. 11,
`2014
`
`2013
`Nov.
`25,
`2013
`Nov.,
`2013
`August
`19,
`2013
`
`
`
`Cisco further reserves the right to rely on any prior art system referenced, embodied, or
`
`described in any of the prior art references identified herein, or which embodies any of the prior
`
`art references identified herein. For example, any physical embodiments of the prior art references
`
`and documents identified above, which physical embodiments were publicly available (e.g. made,
`
`used, offered for sale, or sold) before the claimed or actual priority dates of the Asserted Patents,
`
`constitute prior art. Cisco is not limited to the identified references, but also may rely on material
`
`that expressly identifies any physical embodiment of such reference as prior art.
`
`14
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 14 of 58
`
`

`

`Any citation to one or more of these prior art references/documents, should be construed
`
`to constitute not only a citation to the prior art reference/document itself (as a printed publication),
`
`but also a reference to the product or system itself. When a reference is a prior public use, offer
`
`for sale, or sale, the identified document(s) is being relied upon as exemplary evidence of the prior
`
`public use, sale, and/or offer for sale. For the prior art products or systems (e.g. prior public uses,
`
`offers for sale and/or sales), Cisco may rely on additional documents to demonstrate the products
`
`/ system, testimony relating to the products / systems, and other information.
`
`Further, Cisco contends that the identified prior art provides evidence of prior invention
`
`and making of the invention in the United States by another under 35 U.S.C. § 102(f) and/or
`
`102(g), as evidenced by the named inventor(s), author(s), organization(s), and publisher(s)
`
`involved with each such reference, with the circumstances described and reflected in each
`
`reference including publications and system implementation references. Upon information and
`
`belief, one or more of the Asserted Claims is invalid because the Asserted Patent fails to list the
`
`true inventor(s) who contributed to the conception of the alleged invention recited in the Asserted
`
`Claim(s), and/or the claimed invention was made in this country by another who had not
`
`abandoned, suppressed, or concealed the alleged invention. Cisco therefore reserves the right to
`
`contend that one or more of the Asserted Claims is invalid under pre-AIA 35 U.S.C. § 102(f)
`
`and/or (g) to the extent that the named inventor did not invent the subject matter in the Asserted
`
`Claim(s), and/or the alleged invention was made in this country by another inventor who had not
`
`abandoned, suppressed, or concealed it.
`
`Also, to the extent not expressly stated herein, these First Amended Invalidity Contentions
`
`incorporate by reference (1) any and all prior art identified in documents produced by Cisco in this
`
`case; (2) any prior art of which a named inventor of the Asserted Claims is aware and/or on which
`
`15
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 15 of 58
`
`

`

`he, and/or Orckit contends the alleged invention(s) of the Asserted Claims builds upon or
`
`improves; (3) any and all admissions by Orckit and/or a named inventor regarding the Asserted
`
`Patents including, but not limited to, admissions in the specification of the Asserted Patents the
`
`prosecution of the Asserted Patents and related patents and/or patent applications; and (4) all prior
`
`art and/or invalidity contentions that Orckit discloses, produces or is aware of in connection with
`
`any assertion, transfer of rights or contested proceeding concerning the Asserted Patents and
`
`related patents and/or patent applications.
`
`In addition, much of the prior art identified in the First Amended Invalidity Contentions
`
`reflects common knowledge and the state of the art at the time of the earliest filing date of the
`
`Asserted Patents. Cisco may rely on additional citations, references, expert testimony, fact
`
`testimony and other corroborating evidence, and other material to provide context and background
`
`illustrating the knowledge of a person of ordinary skill in the art at the time of the claimed
`
`inventions and/or to aid in understanding the cited portions of the references and/or cited features
`
`of the systems. Cisco may also rely on fact or expert testimony explaining relevant portions of
`
`references, as well as additional documents, hardware or software products or systems, and other
`
`discovery regarding these subject matters, to provide context or to aid in understanding the cited
`
`portions of the prior art references and interpreting the teachings of the prior art and to establish
`
`bases for combinations of certain cited references that render the Asserted Claims obvious.
`
`B.
`
`Obviousness Combinations
`
`The Asserted Claims would have been obvious under 35 U.S.C. § 103 in light of one or
`
`more of the references disclosed in Exhibits A-1 through E-4 of Cisco’s First Amended Invalidity
`
`Contentions. Exhibits A-1 through A-9, B-1 through B-6, and C-1 through C-10, D-1 through D-
`
`11 set forth obviousness combinations that invalidate the Asserted Claims. Exhibits E-1 through
`
`E-4 compile exemplary disclosures from prior art references and are referenced in Cisco’s other
`
`16
`
`Orckit Exhibit 2014
`Cisco Systems, Inc. v. Orckit Corp.
`IPR2023-00554, Page 16 of 58
`
`

`

`claim charts for purposes of demonstrating the combinations that would have rendered each
`
`Asserted Claim obvious. When used in such combinations, Exhibits A-1 through E-4 demonstrate
`
`how the references listed below render obvious each Asserted Claim. For example, Exhibits A-1
`
`through E-4 explain that each included reference alone or in combination with one or more other
`
`references renders every Asserted Claim obvious. The references disclosed in Exhibits A-1
`
`through E-4 all relate to stacked switching (with respect to the ’904 Patent), methods and systems
`
`for link aggregation in a data communication