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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Juniper Networks, Inc., Ruckus Wireless, Inc., Brocade Communication
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`Systems, Inc. and Netgear, Inc.,
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`Petitioners
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`v.
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`Chrimar Systems, Inc.,
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`Patent Owner
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`Case No. IPR2016-01397
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`U.S. Patent No. 9,019,838 B2
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
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`10214114
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`TABLE OF CONTENTS
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`Page
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`Chrimar’s Motion Does Not Comply With the Board’s Order .................... 2
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`Chrimar Was Not Authorized to Move to Strike the Entire Reply .............. 7
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`A.
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`B.
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Corning Inc. v. DSM IP Assets B.V.,
`No. IPR2013-00052, Paper No. 88 (P.T.A.B. May 1, 2014) ............................... 4
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`Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.,
`No. IPR2014-00579, Paper 45 (P.T.A.B. Sept. 28, 2015) .................................... 4
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`Petroleum Geo-Services Inc. v. WesternGeco LLC,
`No. IPR2014-01475, Paper 18 (PTAB Mar. 17, 2015) ........................................ 5
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`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 7
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`Rules
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`37 C.F.R. § 42.23(b) .................................................................................. 1, 2, 3, 6, 7
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`Chrimar’s Motion to Strike should be denied because it misapplies the law
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`and fails to comply with the Board’s Order (Paper 42). The Board ordered
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`Chrimar to “[i]dentify . . . exactly which arguments in Petitioner’s Reply allegedly
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`exceed the proper scope set forth in 37 C.F.R. § 42.23(b), and explain specifically
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`why those arguments exceed the proper scope.” Id., 2. But instead of explaining
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`how Petitioners’ arguments allegedly exceed the proper scope of the Reply,
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`Chrimar argues that certain of Petitioners arguments are “new” and were not in the
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`Petition. This, however, is not the legal standard for determining whether an
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`argument is within the proper scope of a reply.
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`The purpose of a Reply is to respond to the patent owner’s arguments in its
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`response. 37 C.F.R. § 42.23(b). As Petitioners have repeatedly explained in their
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`Reply and Opposition to Chrimar’s Motion to Exclude, the disputed arguments
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`(i.e., those which Chrimar moves to strike) were included in the Reply to rebut
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`Chrimar’s Response—specifically to demonstrate that Chrimar’s arguments in the
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`Response are irrelevant and, if considered, that they are incorrect and unsupported.
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`Chrimar’s Motion now seeks to substantially modify the rule regarding the proper
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`scope of replies to hold that anything that directly rebuts arguments in a response is
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`nevertheless improper if it was not included in the Petition. That is simply not the
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`law, and such an approach would effectively nullify the utility and purpose of a
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`reply brief. Chrimar’s Motion should therefore be denied because it fundamentally
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`misapplies 37 C.F.R. § 42.23(b).
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`Additionally, the Motion should be denied because it is not commensurate
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`with what the Board allowed Chrimar to file. Chrimar was authorized “to file a
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`motion to strike certain portions of Petitioner’s Reply” and ordered to “identify
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`(by page and line numbers) exactly” the arguments Chrimar seeks to strike. Order,
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`2-3. Instead, Chrimar’s Motion identifies some arguments, but then moves to
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`strike the entire Reply. In view of the Order, Chrimar should be deemed to have
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`waived any right to relief with respect to arguments not specifically identified in its
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`Motion “by page and line numbers.” See id. The Motion also presents new
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`evidence and argument regarding patentability, which the Board expressly ordered
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`Chrimar not to include in the Motion. Id.
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`A. Chrimar’s Motion Does Not Comply With the Board’s Order
`The Board ordered Chrimar to identify exactly which arguments in the
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`Reply it is challenging and “explain specifically" why Chrimar believes they are
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`not responsive to the Patent Owner’s Response. Order, 1-2. Instead, Chrimar
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`chose to argue about the sufficiency of the Petition, to attempt to rebut the
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`arguments in the Reply, and to present new arguments and evidence that the Board
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`denied Chrimar permission to file. For example, the Motion discusses a draft
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`document from 1999, which is not in evidence (Motion, 3); Chrimar sought, but
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`was denied, permission to file this document with a sur-reply. See Conference
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`Transcript (Paper 49), 10; Order, 2-3. In other words, Chrimar did precisely what
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`the Board warned Chrimar not to do: it submitted “additional arguments regarding
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`the patentability of the challenged claims.” Order, 2-3. Chrimar’s motion,
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`therefore, should be denied because it violates the Order. Nevertheless, Petitioners
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`will address each of Chrimar’s arguments and show why each Reply argument and
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`piece of evidence Chrimar moves to strike is proper under 37 C.F.R. § 42.23(b).
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`IEEE 802.9: As the Petition makes clear, Hunter discloses a system that
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`operates on 10Base-T Ethernet and 100Base-T Ethernet. See, e.g., Petition (Paper
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`1), 25-28 (citing, e.g., Hunter, 37:19-28 (10Base-T)). In its Response, Chrimar
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`argued that, when Hunter discloses a “10base-T bus [with] two twisted-pair
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`conductors,” this means that the conductors “would have been used for
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`isoEthernet connections, which carried ISDN (not Ethernet) traffic.” Response
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`(Paper 25), 41. It was only after Chrimar incorrectly equated two-pair isoEthernet
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`with “ISDN (not Ethernet)” traffic that the need arose for Petitioners to rebut these
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`arguments regarding isoEthernet. The Reply therefore properly argued that the
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`evidence (Exhibit 1032) demonstrates that isoEthernet used ISDN and Ethernet
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`(i.e., 10Base-T signals). Reply (Paper 32), 15-17, 23. The Reply and the Petition
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`both consistently rely on Hunter’s numerous disclosures of 10Base-T as teaching
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`Ethernet. Id.; Petition, 25-28. To the extent that portions of the Reply that rebut
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`Chrimar’s Response also confirm the veracity of the evidence and arguments
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`provided in the Petition, this is proper. See Corning Inc. v. DSM IP Assets B.V.,
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`No. IPR2013-00052, Paper No. 88, at 10-11 (P.T.A.B. May 1, 2014); Ford Motor
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`Co. v. Paice LLC & The Abell Foundation, Inc., No. IPR2014-00579, Paper 45 at
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`p. 29-30 (P.T.A.B. Sept. 28, 2015).
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`BSTs/CMCs: Chrimar’s Response incorrectly alleges that certain electrical
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`components known as Bob Smith Terminations (“BSTs”) and Common Mode
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`Chokes (“CMCs”) must be present in any invalidating prior art combination.
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`Response, 13-16. As discussed in the Reply, neither the challenged claims nor the
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`specification of the ‘838 patent even mention, let alone require, BSTs/CMCs.
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`Reply, 3-5. Petitioners only discussed BSTs/CMCs in the Reply to demonstrate
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`that those components are irrelevant to the claims at issue and that Chrimar’s
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`assertions about them are incorrect. Id. Chrimar needlessly injected BSTs/CMCs
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`into this IPR, and it was only after Chrimar first raised these irrelevant arguments
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`in its Response that Petitioners were required to address them in the Reply.
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`The State of the Art: Petitioners included the Fisher and De Nicolo patents
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`with the Reply to directly rebut Chrimar’s and its expert’s incorrect contention that
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`“Power over Ethernet (‘PoE’) did not exist in 1997.” Response, 8; Ex. 2038,
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`¶¶ 90, 155, 189, 232. These patents and the corresponding argument in the Reply
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`confirm that there is no truth to Chrimar’s assertions. Reply, 6-7, 13-14.
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`Chrimar’s complaint about not being able to swear behind De Nicolo is
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`inconsequential because, even if Chrimar had shown that De Nicolo is not prior art,
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`the Fisher patents (Exs. 1025, 1026) still confirm that power over Ethernet did
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`exist in 1997 and disprove Chrimar’s statements about the state of the art. Motion,
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`5-6. In any event, Chrimar had a full opportunity to try to establish an earlier
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`priority date in its Response, as demonstrated by the fact that both the Response
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`and Dr. Madisetti’s declaration rely on 1997 as the date of invention, rather than
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`the 1998 date on the ‘838 patent (Response, 7). Chrimar did not even attempt to
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`support its purported 1997 date of invention, so its complaints now are unfounded.
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`Skepticism: Chrimar misstates the law when it argues that Petitioners had
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`the burden to address expert skepticism in the Petition. Motion, 6. Although
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`Petitioner has the burden of proof regarding obviousness, Petitioner does not have
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`the burden of production with respect to secondary indicia of non-obviousness;
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`Patent Owner has the burden to produce this evidence and only afterwards does
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`Petitioner need to address that evidence. See Petroleum Geo-Services Inc. v.
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`WesternGeco LLC, No. IPR2014-01475, Paper 18 at p. 28 (PTAB Mar. 17, 2015).
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`Chrimar introduced what it alleged was secondary indicia of non-
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`obviousness in its Response (Paper 25, 21-25), so Petitioners’ Reply properly
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`rebutted that contention with argument and evidence that filled out the incomplete
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`picture presented by Chrimar’s cherry-picked subset of documents. Reply, 9-10,
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`14-15. Moreover, as detailed in the Reply, there is no nexus between the purported
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`evidence of secondary indicia offered by Chrimar and the claims of the ‘838
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`Patent. As such, there was no reason for Petitioners to have included with their
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`Petition evidence that is irrelevant (and for which Petitioners do not have the
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`burden of production). See Reply, 9-10, 14-15. The Reply addressed this
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`argument only out of caution in case the Board somehow finds Chrimar’s evidence
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`pertinent.
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`Cabling: Chrimar admits that Petitioners’ argument and evidence regarding
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`cabling was provided to directly rebut Chrimar’s (incorrect) factual statement
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`about the number of conductors in CAT-3/CAT-5 cables. Motion, 7 (citations
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`omitted) (“When Chrimar explained [in its Response], ‘CAT-3 and CAT-5 are
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`cable standards that require cables with eight conductors twisted into four pairs’,
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`Petitioners, in Reply, added a new exhibit purporting to show that some CAT-
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`3/CAT-5 cables were sold with only two wire pairs.”). Rebutting incorrect factual
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`statements is the purpose of a reply, and it is impossible for a Petition to introduce
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`evidence necessary to rebut all possible incorrect statements. See § 42.23(b).
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`B. Chrimar Was Not Authorized to Move to Strike the Entire Reply
`Chrimar “requested authorization to file a motion to strike certain portions
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`of Petitioner’s Reply.” Order (Paper 42), 2. The Board therefore ordered Chrimar
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`to “identify (by page and line numbers) exactly which arguments in Petitioner’s
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`Reply allegedly exceed the proper scope set forth in 37 C.F.R. § 42.23(b) . . . .” Id.
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`But Chrimar’s Motion, which identifies only a few alleged new arguments in the
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`Reply, moves to strike Petitioners’ entire Reply. Motion (Paper 47), 1. This is
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`neither what Chrimar requested nor what the Board permitted Chrimar to file.
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`Moreover, Chrimar misrepresents the Trial Practice Guide and the cases it relies on
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`to argue that the entire Reply should be excluded. Motion, 1. Contrary to
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`Chrimar’s assertions, the Guide does not suggest that a Reply should be entirely
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`excluded when the Board expressly states that it will analyze specifically identified
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`arguments. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1079 (Fed. Cir.
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`2015) (“Nothing in the Guide requires wholesale exclusion in such circumstances.
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`More generally, the Guide cannot fairly be read to do more than put the public on
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`notice that the Board may, in its discretion, refuse to consider a Reply if any part is
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`improper.”). Also, none of Chrimar’s cases hold that Chrimar can sweep in the
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`entire Reply with a motion authorized to address only “certain portions” of it.
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`Date: August 15, 2017
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`Respectfully submitted,
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`/s/ Talin Gordnia
`Talin Gordnia (Reg. No. 76,214)
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`Talin Gordnia, Reg. No. 76,214
`tgordnia@irell.com
`Michael Fleming, Reg. No. 67,933
`mfleming@irell.com
`Jonathan Kagan, pro hac vice
`jkagan@irell.com
`IRELL & MANELLA, LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Telephone: (310) 277-1010
`Fax: (310) 203-7199
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`Nima Hefazi, Reg. No. 63,658
`nhefazi@irell.com
`IRELL & MANELLA, LLP
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
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`Attorneys for Petitioner
`Juniper Networks, Inc.
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`Petitioners’ Opposition to Chrimar’s Motion to Strike
`IPR2016-01397
`U.S. Patent No. 9,019,838
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6 that a complete copy of
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`the PETITIONERS’ OPPOSITION TO CHRIMAR’S MOTION TO STRIKE
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`are being served by electronic mail, as agreed to by the parties, the same day as the
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`filing of the above-identified documents in the United States Patent and Trademark
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`Office/Patent Trial and Appeal Board, upon:
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`
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`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`CHRMC0111IPR1@brookskushman.com
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`
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`Richard W. Hoffman (Reg. No. 33,711)
`REISING ETHINGTON PC
`755 West Big Beaver Rd., Ste. 1850
`Troy, MI 48084
`Hoffman@reising.com
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` /Susan M. Langworthy/
` Susan M. Langworthy
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`August 15, 2017
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`10214114
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