Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 58
`
`
`
` Entered: November 17, 2017
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEM, INC.,
`Petitioner1,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)2
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`1 YMax Corporation is Petitioner in IPR2016-01258 and IPR2016-01260.
`Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01261
`and IPR2016-01262.
`2 This Decision addresses the same issues in the cases listed above.
`Therefore, we issue one Decision to be filed in all of the cases.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
` Paper 58
`
`
`
` Entered: November 17, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEM, INC.,
`Petitioner1,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)2
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`1 YMax Corporation is Petitioner in IPR2016-01258 and IPR2016-01260.
`Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01261
`and IPR2016-01262.
`2 This Decision addresses the same issues in the cases listed above.
`Therefore, we issue one Decision to be filed in all of the cases.
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`
`Focal IP, LLC (“Patent Owner”) filed a Request for Rehearing of the
`Order authorizing Petitioners to file a 15-page supplemental brief (Paper
`573, “Order”), in each of the above-identified inter partes review (IPR)
`proceedings, in light of the decision issued by the U.S. Court of Appeals for
`the Federal Circuit in Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
`2017). Paper 58, “Req. Reh’g.” Patent Owner requests that we modify our
`Order to deny Petitioners the authorization for filing the supplemental brief.
`Id. at 11. Patent Owner indicates that the same rehearing request is filed in
`each of the proceedings. Id. at 1. For the reasons that follow, the Request
`for Rehearing is denied.
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply. Id.
`
`Here, Patent Owner contends that “there is no intervening change in
`law” regarding motion to amend practice in IPR proceedings that would
`warrant additional briefing by Petitioners, citing to the transcript (Ex. 2073)
`of the conference call that was held on October 12, 2017, for support. Req.
`Reh’g. 4−7. Patent Owner argues that there is no rationale that warrants
`additional briefing by Petitioners, and Petitioners should not be allowed to
`“retread and do-over its arguments.” Id. at 2−3, 11−12. Patent Owner
`maintains that we misapprehended or overlooked the issues that Petitioners
`
`3 Citations are to IPR2016-01257, as representative, unless otherwise noted.
`2
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`should have addressed in the original briefing based on MasterImage 3D,
`Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42)
`(precedential). Req. Reh’g. 7−9. Patent Owner further argues that we
`misapprehended or overlooked the facts and our prior rulings regarding the
`expungement of claim charts accompanying Petitioners’ original briefing,
`and Petitioners’ representations that they already presented arguments in
`anticipation of Aqua Products. Id. at 9−11.
`Patent Owner’s arguments are misplaced, as they ignore the actual
`holding in Aqua Products. Aqua Products, 872 F.3d at 1296 (instructing the
`Board to “assess[] the patentability of the proposed substitute claims without
`placing the burden of persuasion on the patent owner”) (emphasis added).
`We address below each of the Patent Owner’s arguments in turn.
`First, we are not persuaded by Patent Owner’s argument that “there is
`no intervening change in law.” Prior to the Federal Circuit’s en banc
`decision in Aqua Products, the Board indicated that “[t]he burden is not on
`the petitioner to show unpatentability, but on the patent owner to show
`patentable distinction over the prior art of record and also prior art known to
`the patent owner.” MasterImage, Case IPR2015-00040, slip op. at 2
`(clarifying Idle Free sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip
`op. at 4 (PTAB June 11, 2013)) (emphasis added). In Aqua Products,
`patentee appealed from the final written decision of the Board, which denied
`patentee’s motion to amend, challenging the Board’s amendment procedures
`that required patentee to demonstrate that amended claims would be
`patentable over prior art. A panel decision from the Federal Circuit affirmed
`the Board’s decision, but the Federal Circuit granted patentee’s request for
`3
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`rehearing en banc and, subsequently, in its en banc decision, vacated and
`remanded the Board’s decision. The Federal Circuit’s en banc decision
`clearly stated that “[t]he matter is remanded for the Board to issue a final
`decision under § 318(a) assessing the patentability of the proposed substitute
`claims without placing the burden of persuasion on the patent owner.”
`Aqua Products, 872 F.3d at 1296 (emphasis added). Accordingly, Patent
`Owner’s argument that “there is no intervening change of law” is misplaced.
`Second, we are not persuaded by Patent Owner’s argument that there
`is no rationale that warrants additional briefing by Petitioners and Petitioners
`should not be allowed to “retread and do-over its arguments.” Req. Reh’g.
`2−3, 11−12. Patent Owner conflates a limited supplemental brief with an
`opening brief similar in length and content to a petition, as requested by
`Petitioners. Id. In our Order, we explained that there was insufficient
`reason to grant Petitioners’ request for authorization to file “an opening brief
`similar in length and content to a petition, two or three months to prepare the
`opening brief, and a reply brief to any Patent Owner opposition.” Paper 57,
`4−6. However, we determined that, in light of Aqua Products, a limited
`supplemental brief was warranted. Id. Patent Owner’s argument also rests
`on the premise that “there is no intervening change in the law,” ignoring the
`holding in Aqua Products. Therefore, Patent Owner’s argument that
`Petitioners should not be allowed to “retread and do-over its arguments” is
`unavailing.
`Third, we also are not persuaded by Patent Owner’s argument that we
`misapprehended or overlooked the issues that Petitioners should have
`applied prior art against the proposed substitute claims in the original
`4
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`briefing based on MasterImage. Req. Reh’g. 7−9. As noted above, in
`MasterImage, the Board stated that “[t]he burden is not on the petitioner to
`show unpatentability, but on the patent owner to show patentable distinction
`over the prior art of record and also prior art known to the patent owner.”
`MasterImage, Case IPR2015-00040, slip op. at 2 (emphasis added). In fact,
`MasterImage further made clear that “Patent Owner has an opportunity to
`respond in its reply,” which was the last substantive paper on the issue of
`patentability over prior art, because “[t]he ultimate burden of persuasion
`remains with Patent Owner, the movant to demonstrate the patentability of
`the amended claims.” Id. at 3 (emphasis added). Patent Owner does not
`explain sufficiently why Petitioners should not have the opportunity to file
`the last substantive paper on the issue of patentability over prior art, in view
`of Aqua Products, which held that the burden of persuasion is not on the
`patent owner. Aqua Products, 872 F.3d at 1296. Patent Owner’s argument
`again rests on the premise that “there is no intervening change in the law,”
`ignoring the holding in Aqua Products.
`Finally, we are not persuaded by Patent Owner’s argument that we
`misapprehended or overlooked the facts and our prior rulings regarding the
`expungement of claim charts accompanying Petitioners’ original briefing,
`and Petitioners’ representations that they already presented arguments in
`anticipation of Aqua Products. We do not agree with Patent Owner’s
`characterization of the facts and our prior rulings.
`In fact, when Patent Owner requested our authorization for filing
`motions to strike certain portions of Declarations filed in support of
`Petitioners’ Oppositions to Patent Owner’s Motions to Amend, Patent
`5
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`Owner asserted that Petitioners’ element-by-element analyses in the form of
`the claim charts exceed the scope of their Oppositions in that the element-
`by-element analyses pertain to all limitations of the proposed substitute
`claims, whereas the Oppositions address only two limitations that were
`discussed in Patent Owner’s Motions to Amend. Paper 34, 2. Because we
`were persuaded by Patent Owner’s assertion, we granted Patent Owner’s
`request by expunging the Petitioners’ element-by-element analyses in the
`claim charts. Id. at 2−4.
`We made no finding of fact as to whether the Petitioners’ Oppositions
`contained the element-by-element analysis, but merely explained that we
`were not persuaded by Petitioners’ arguments that the claim charts were to
`preserve their arguments in the event that the state of the law changes. Id.
`More importantly, it would have been unreasonable to require Petitioners to
`speculate or anticipate the outcome of Aqua Products, at the time of filing
`their Oppositions before the Federal Circuit issued its en banc decision.
`Therefore, Patent Owner’s argument that we misapprehended or overlooked
`the facts and our prior rulings, and Petitioners’ representations that they
`already presented arguments in anticipation of Aqua Products, is unavailing.
`For the foregoing reasons, Patent Owner’s Request for Rehearing is
`denied.
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`For PETITIONERS:
`
`IPR2016-01257
`Wayne Stacy
`Sarah Guske
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`
`IPR2016-01258 and IPR2016-01260
`Joseph Richetti
`Alexander Walden
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`alexander.walden@bryancave.com
`
`David Brafman
`Mark Passler
`Brice Dumais
`AKERMAN LLP
`david.brafman@akerman.com
`ip@akerman.com
`brice.dumais@akerman.com
`
`IPR2016-01261 and IPR2016-01262
`Patrick McPherson
`Christopher Tyson
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`jtyson@duanemorris.com
`
`For PATENT OWNER:
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
`
`7
`
`
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