`571-272-7822
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` Paper 70
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` Entered: November 27, 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.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Denying Patent Owner’s Request for Response to Supplemental Brief
`37 C.F.R. § 42.5
`
`
`
`
`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 Order 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)
`
`
`On November 21, 2017, counsel for Patent Owner requested a
`conference call to seek authorization to file a five page response to the
`supplemental briefing regarding motions to amend filed by Petitioners in
`each of IPR2016-01257, -1258, -1260, -1261, and -01262. The
`supplemental briefing was authorized in our Order of October 19, 2017,
`following a conference call held to give the parties an opportunity to discuss
`the impact of the Federal Circuit’s en banc decision in Aqua Prods., Inc. v.
`Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Aqua Products”). See, e.g., Paper
`57, 1–2.
`In our Order of October 19, 2017, Petitioners were authorized to file a
`supplemental brief limited to the issue of unpatentability of the proposed
`substitute claims, addressing only original claim limitations not previously
`addressed by Petitioners. See, e.g., Paper 57, 6. Additionally, Petitioners’
`supplemental briefs were limited to the prior art in the record and could not
`exceed fifteen pages. Id.
`In these proceedings, Patent Owner submitted requests for rehearing
`taking the position that Petitioners’ supplemental briefing is unwarranted
`because there is no intervening change in the law. See, e.g., Paper 58, 4–7.
`We have responded to the contentions submitted by Patent Owner in full in
`our decisions denying Patent Owner’s requests. See, e.g., Paper 61. At this
`stage in the proceedings, all briefs have been filed and the oral argument was
`conducted on September 19, 2017. Patent Owner already was allowed
`twenty-five pages for each of its motions to amend, as well as a claim listing
`contained in an appendix that did not count toward the page limit of the
`motion. See, e.g., Paper 24, 2. Additionally, Patent Owner was allowed a
`2
`
`
`
`IPR2016-01257, IPR2016-01260, IPR2016-01261 (Patent 8,457,113),
`IPR2016-01258, and IPR2016-01262 (Patent 7,764,777)
`
`twelve-page reply to each of Petitioner’s oppositions to the motions to
`amend. Id.
`In view of the arguments presented by the parties during the
`September 19, 2017 hearing and the conference call held October 19, 2017,
`as well as the briefs already filed in these proceedings, we determine that no
`further briefing by Patent Owner is warranted in these proceedings.
`For the foregoing reasons, Patent Owner’s request for authorization to
`file responses to Petitioners’ supplemental briefing is denied.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`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
`
`4
`
`
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