Trials@uspto.gov
`571-272-7822
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` Paper No. 9
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` Entered: March 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`HEWLETT PACKARD ENTERPRISE COMPANY,
`Patent Owner.
`____________
`
`Case IPR2017-01933
`Patent 8,478,799 B2
`____________
`
`
`Before BRYAN F. MOORE, MICHAEL J. FITZPATRICK, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2017-01933
`Patent 8,478,799 B2
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`
`INTRODUCTION
`I.
`Cisco Systems, Inc. (“Petitioner” or “Cisco”) filed a Petition
`requesting an inter partes review of claims 1–22 and 26–36 of U.S. Patent
`No. 8,478,799 B2 (Ex. 1001, “the ’799 patent”). Paper 1 (“Pet.”). Hewlett
`Packard Enterprise Company (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). With our authorization (Paper 7),
`Petitioner filed a Reply (Paper 8). We have authority under 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” After
`considering the Petition, the Preliminary Response, and associated evidence,
`we conclude that Petitioner has not demonstrated a reasonable likelihood
`that it would prevail in showing unpatentability of at least one of the
`challenged claims. Thus, we do not authorize institution of an inter partes
`review of claims 1–22 and 26–36 of the ’799 patent.
`A. Related Proceedings
`Petitioner indicates that the ’799 patent is the subject of proceedings,
`
`including SimpliVity Corp. v. Springpath Inc., No. 4-15-cv-13345-TSH
`(D. Mass 2016) (“Springpath Litigation”). Pet. 2. The ’799 patent was also
`the subject of two prior inter partes review proceedings—IPR2016-01779
`and IPR2016-01780 (“Springpath IPRs”)—both filed by Springpath, Inc.
`(“Springpath”).
`
`B. The ʼ799 Patent (Ex. 1001)
`The ’799 Patent discloses computer file system data structures and
`
`methods and apparatus for naming and storing files. See Ex. 1101, 1:4–6.
`Figure 1 of the ’799 Patent is reproduced below:
`
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`IPR2017-01933
`Patent 8,478,799 B2
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`
`
`Figure 1 depicts various storage components in operating system kernel 101.
`See Ex. 1101, 10:25–26. POSIX® file system 104, Network File System
`(“NFS”) 102, and a new file system composed of namespace file system 107
`are stacked on top of lightweight object file system 108 connected to virtual
`file system (“VFS”) 103. See id. at 10:30–38, 63–65. The new file system
`works alongside other file systems in kernel 101, and many file systems
`typically work in parallel. See id. at 10:38–39, 46–47. VFS 103 is used to
`abstract out common features of the file systems and provide a consistent
`user interface 160 to user 100. See id. at 10:33–39. “File systems normally
`sit on top of a block storage abstraction, implemented by block drivers 105.
`The block storage may be on a Logical Unit Number LUN storage device
`109, or it may be on a remote LUN.” Id. at 10:40–44. Object file system or
`object store 108 creates an object container that may sit on top of a raw
`LUN, a partition on a disk, or a large file. See id. at 10:59–61. Object store
`108 may reference containers via network stack 106. See id. at 10:61–63.
`NFS 102 sits on top of network stack 106, and network stack 106 is
`connected to LUN 109 and Cloud 110. See id. at 10:63–67.
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`IPR2017-01933
`Patent 8,478,799 B2
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`
`
`Figure 2 of the ’799 Patent is reproduced below:
`
`
`Figure 2 depicts object store 108 of Figure 1 and various components. See
`Ex. 1101, 5:4–6, 11:1–2. Object store 108 contains binary, opaque objects
`P 201, Q 202, and R 203. An object can be of varying size, and resides at
`some offset in object container 206. See id. at 11: 3–9. Each object has a
`name or fingerprint (e.g., H(q), H(p), H(r)) which is a cryptographic digest
`or hash of the object’s entire content. See id. at 11:10–13. Index 204 keeps
`track of object names, object locations, and object references. See id. at
`11:14–15. There is an index entry for every object in the system, each entry
`containing a fingerprint of the object’s content, a reference count, physical
`locator (e.g., logical block number, reference to cloud object), and flags. See
`id. at 11:40–61. Object container 206 is a randomly addressable persistent
`storage abstraction, such as a raw LUN, a file, a partition on a disk, or a
`device across a Wide Area Network. See id. at 11:64–67.
`
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`IPR2017-01933
`Patent 8,478,799 B2
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`
`
`Figure 4 of the ’799 Patent is reproduced below:
`
`
`Figure 4 depicts a set of objects grouped together in an hnode. See
`Ex. 1101, 7:13–15, 12:51–52. Hnode 401 is a sequence of content, like a
`file that can be read, written, appended to, created, deleted, and truncated.
`See id. at 12:55–57. The data sequence is broken into discrete objects (e.g.,
`S 401, T 411, U 412) where the names of each object are stored in mapping
`table 402, which records the fingerprints (e.g., H(S), H(T), H(U)) of each
`object. See id. at 12:63–66. Hnode 401 is an object itself. See id. at 13:8.
`
`Figure 5 of the ’799 Patent is reproduced below:
`
`
`Figure 5 depicts an hnode specialized into files, directories, and imaps. See
`Ex. 1101, 6:16–18. Directory 505 is a mapping of inode numbers to file
`names. See id. at 13:31–33. Imap or inode map 502 translates inode
`
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`IPR2017-01933
`Patent 8,478,799 B2
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`numbers from directory 501 into an object digest or fingerprint. See id. at
`13:37–38.
`
`A. Illustrative Claims
`Claims 1 and 19 are independent, claims 2, 7–13, 17, and 18 depend
`
`from claim 1, and claims 20, 27, and 33–35 depend from claim 19. Claims 1
`and 19 are illustrative:
`1. A computer file system for naming and storing of files on
`one or more computer storage devices, the system comprising:
`a namespace file system accessing an object store, the system
`including a memory and a hardware processor in
`communication with the memory, the processor for
`executing program instructions for accessing the object
`store using object fingerprints, the object store holding
`files, data and metadata as objects, each object having a
`globally unique object fingerprint derived from the content
`of the object and used to access the object store, wherein:
`each file object comprising a mapping of object fingerprints
`for the data objects or metadata objects of the file and the
`file object having its own object fingerprint derived from
`the fingerprints of the objects in the file, and wherein the
`object store further includes:
`an inode map object comprising a mapping of file system
`inode numbers and object fingerprints enabling the
`inode numbers to stay constant while the object
`fingerprints change as the file content changes; and
`directory objects, each directory object comprising a
`mapping of inode numbers and file names;
`wherein each of the inode map object and directory object
`has its own object fingerprint derived from the content
`of the respective object.
`
`
`19. A method comprising:
`a namespace file system accessing an object store, the object
`store holding files, data and metadata as objects, each object
`having an object fingerprint which is globally unique and
`
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`
`derived from its content and used to access the object store;
`and
`each file object comprising a mapping of object fingerprints for
`the data objects or metadata objects of the file, and the file
`object having its own object fingerprint derived from the
`fingerprints of the objects in the file; and
`maintaining in the object store an inode map object comprising a
`mapping of file system inode numbers and object fingerprints
`enabling the inode numbers to stay constant while the object
`fingerprints change as the file content changes; and
`maintaining in the object store directory objects, each directory
`object comprising a mapping of inode numbers and file
`names;
`wherein each of the inode map object and directly1 object has its
`own object fingerprint derived from the content of the
`respective object.
`
`
`
`B. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability of claims 1‒21 of the ’412 patent under 35 U.S.C.
`§ 103(a) as follows (see Pet. 4–60):2
`
`References
`
`Claims
`Challenged
`1–4, 7–9, 11–14, 17–22, 27, 28, and
`
`Dabek3 and Muthitacharoen,4
`
`1 The word “directly” appears to be a typographical error of “directory.”
`2 Petitioner supports its challenge with the Declaration of Dr. Prashant
`Shenoy. Ex. 1004.
`3 Athicha Muthitacharoen, et al., “Ivy: A Read/Write Peer-to-Peer File
`System,” Proceedings of the 5th Symposium on Operating Systems Design
`and Implementation (OSDI ’02), OPERATING SYSTEMS REVIEW, Vol. 36,
`Issue SI (Winter 2002) (Ex. 1007) (“Muthitacharoen”).
`4 Frank Dabek, “Wide-area cooperative storage with CFS,” Proceedings of
`the 18th ACM Symposium on Operating Systems Principles (SOSP’01),
`OPERATING SYSTEMS REVIEW, Vol. 35, No. 5 (Dec. 2001) (Ex. 1008)
`(“Dabek”).
`
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`Patent 8,478,799 B2
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`
`References
`
`Dabek, Muthitacharoen, and
`Agrawal5
`Dabek, Muthitacharoen, and
`McKusick 6
`Dabek, Muthitacharoen, and
`Bunte 7
`Dabek, Muthitacharoen, and
`Bondurant 8
`
`Claims
`Challenged
`31–35
`
`5 and 6
`
`10, 15, and 26
`
`29 and 30
`
`16 and 36
`
`II. ANALYSIS
`A. 35 U.S.C. § 315(b) – Real Party-In-Interest
`As a threshold issue, we must determine whether Cisco’s Petition is
`barred by 35 U.S.C. § 315(b), which reads, in relevant part:
`(b) Patent Owner’s Action.— An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more
`than 1 year after the date on which the petitioner, real party in
`interest, or privy of the petitioner is served with a complaint
`alleging infringement of the patent.
`Patent Owner contends that Springpath is a real party in interest
`(“RPI”) to this proceeding.9 Because Springpath was served with a
`
`
`
`
`5 Agrawal, “Design Tradeoffs for SSD Performance,” USENIX’08: 2008
`USENIX Annual Technical Conference (June 25, 2008) (Ex. 1009)
`(“Agrawal”).
`6 McKusick, THE DESIGN AND IMPLEMENTATION OF THE FREEBSD
`OPERATING SYSTEM (2005) (Ex. 1011) (“McKusick”).
`7 U.S. Patent No. 8,140,786 B1; issued Mar. 20, 2012 (Ex. 1039) (“Bunte”).
`8 U.S. Patent No. 8,028,106 B1; issued Sept. 27, 2011 (Ex. 1010)
`(“Bondurant”).
`9 Patent Owner also argues that the Petition should be denied because “[t]he
`evidence demonstrates that Cisco and Springpath were in privity prior to the
`8
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`Patent 8,478,799 B2
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`complaint alleging infringement of the ’799 patent more than one year prior
`to the filing of the instant Petition, Patent Owner argues that Cisco’s Petition
`is barred. Prelim. Resp. 1.
`Pursuant to 35 U.S.C. § 312(a)(2), we may consider a petition for
`inter partes review “only if . . . the petition identifies all real parties in
`interest.” Upon consideration of the briefing and supporting evidence, we
`determine that Cisco’s Petition does not identify all RPIs. Accordingly, we
`will not consider the Petition, and do not institute an inter partes review of
`the challenged claims.
`
`1. Legal Background
`Our Trial Practice Guide describes the “core functions” of the RPI
`requirement as follows:
`[T]o assist members of the Board in identifying potential
`conflicts, and to assure proper application of the statutory
`estoppel provisions. The latter, in turn, seeks to protect patent
`owners from harassment via successive petitions by the same or
`related parties, to prevent parties from having a “second bite at
`the apple,” and to protect the integrity of both the USPTO and
`Federal Courts by assuring that all issues are promptly raised and
`vetted.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14,
`2012) (“Trial Practice Guide”). The RPI requirement is additionally relevant
`to the time bar set forth in 35 U.S.C. § 315(b), which states “An inter partes
`review may not be instituted if the petition requesting the proceeding is filed
`more than 1 year after the date on which the petitioner, real party in interest,
`
`
`
`
`filing of the petition.” Prelim. Resp. 9. The RPI argument is separate from
`the “privity” argument. Aruze Gaming, 2015 WL 780607, at *5–*6.
`Because we do not institute based on the real-party-in interest issue, we do
`not reach the issue of privity.
`
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`IPR2017-01933
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`or privy of the petitioner is served with a complaint alleging infringement of
`the patent.” 35 U.S.C. § 315(b).
`2. Factual Background
`Patent Owner served Springpath with a district court complaint
`asserting infringement of the ’799 Patent on September 15, 2015. Ex. 2005
`at 2. Also, Petitioner and Springpath asserted a “common interest privilege”
`as to communications between Petitioner and Springpath on January 4,
`2016, in response to a document request in the related case. Prelim. Resp.10
`(citing Ex. 2009, 3). Springpath filed petitions requesting the two
`Springpath IPRs on September 14, 2016, the day before Springpath’s
`statutory deadline under 35 U.S.C. § 315(b). A short time after the August
`11, 2017, filing of the Petition here, Cisco issued a press release announcing
`its intent to acquire Springpath. Prelim. Resp. 9. Cisco stated that “[t]he
`acquisition is the culmination of a long-standing strategic relationship
`between Cisco and Springpath.” Ex. 2002 at 1. As of September 22, 2017,
`Springpath is a wholly-owned subsidiary of Petitioner and a real-party in-
`interest in this review as of that date. Ex. 2007, 1; see Semiconductor
`Components Indus., LLC v. Power Integrations, LLC, Case IPR2016–00995
`(PTAB October 18, 2017) (Paper 26) (finding in similar circumstances that a
`completed merger creating a wholly owned subsidiary made the subsidiary a
`real party-in-interest as of the date of the merger). This Petition was filed on
`August 11, 2017. See id.
`3. Petitioner’s Silence as to Springpath Acquisition
`Petitioner did not indicate in its Petition its pending acquisition of
`Springpath. Additionally, Petitioner did not update its mandatory
`disclosures after the acquisition was completed or in response to Patent
`
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`Owner’s arguments regarding the RPI issue in its preliminary response.10 In
`its reply, which was requested by the Board sua sponte (Paper 7), Petitioner
`asserted that it would “comply” with a “request or order” to update its
`mandatory disclosures. Paper 8.11
`“[T]here is a rebuttable presumption that a petitioner’s identification
`of real parties-in-interest is accurate,” but if the Patent Owner provides
`sufficient rebuttal evidence, “the ultimate burden of proof remains with the
`petitioner to establish that it has complied with the statutory requirement of
`35 U.S.C. § 312(a)(2) to identify all real parties-in-interest.” Medtronic, Inc.
`v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00488, at 6-7 (PTAB
`March 16, 2015) (Paper 52). Additionally, other panels have recognized that
`“a petitioner is far more likely to be in possession of, or have access to,
`evidence relevant to the issue than is a patent owner.” Medtronic, Atlanta
`Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, at 6–8
`(PTAB Jan. 6, 2015) (Paper 88).
`If Cisco filed the Petition as a proxy for Springpath, Springpath can be
`considered an RPI before the filing of the Petition. To that end, the fact that
`Petitioner chose not to apprise the Board of this situation may be considered.
`Any indication of an attempt to circumvent estoppel rules, a petitioner’s bad
`faith, or prejudice to a patent owner caused by the delay may be considered
`
`
`10 Parties are obligated to file an updated mandatory notice “within 21 days
`of a change of the information,” i.e., a change in the status of a party as RPI,
`required in the notices. 37 C.F.R. § 42.8(a)(3).
`11 Paper 8, 6 (“Petitioner believes that its original identification of Cisco as
`the sole real party-in-interest remains correct today. If the Board believes
`that, as a result of the acquisition, Cisco should file updated mandatory
`notices including Springpath as a real party-in-interest, Cisco will comply
`with such a request or order.”).
`
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`in deciding whether to accept a defective petition. Reflectix, Inc. v.
`Promethean Insulation Tech. LLC, Case IPR2015-00039, at 9 (PTAB Apr.
`24, 2015) (Paper 18).
`As noted above, as of September 22, 2017, Springpath is a wholly-
`owned subsidiary of Petitioner and a real-party in-interest in this review as
`of that date. Ex. 2002, 1. The remaining issue before us is whether
`Springpath is considered to be an RPI as of the filing of the Petition. If so,
`updating the mandatory notice to name Springpath will not cure the fact that
`an RPI was barred from filing the Petition at the time it was filed.
`4. Real Parties-in-Interest Factors
`Whether a non-party is a “real party-in-interest” for purposes of an
`inter partes review proceeding is a “highly fact-dependent question” that
`takes into account how courts generally have used the term to “describe
`relationships and considerations sufficient to justify applying conventional
`principles of estoppel and preclusion.” Trial Practice Guide, 77 Fed. Reg. at
`48,759.
`Our Practice Guide explains that “real party in interest,” as used in the
`AIA trial context, differs from the traditional understanding of the term:
`[T]he spirit of that formulation as to [inter partes review] and
`[post-grant review] proceedings means that, at a general level,
`the “real party-in-interest” is the party that desires review of the
`patent.
`77 Fed. Reg. at 48,759.
`In the situation in which a prior litigant subject to the § 315(b) bar
`seeks to have another entity file an inter partes review petition in its stead, is
`the prototypical RPI preclusion scenario, and the Board has found § 315(b)
`bars institution in such situations. See RPX Corp. v. Virnetx Inc., Case
`
`
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`IPR2014-00171, at 10 (PTAB June 5, 2014) (Paper 49). In RPX, the Board
`noted that the petitioner was, “at most, a ‘nominal plaintiff’ with ‘no
`substantial interest’ in [the inter partes review] apart from those of its
`client,” who was determined to be an RPI. Id. at 9.
`In many cases, central to the Board’s determination is that a party
`other than the named petitioner was actually controlling, or capable of
`controlling, the proceeding before the Board. See generally, GEA Process
`Eng’g. Inc. v. Steuben Foods, Inc., Case IPR2014-00041 (PTAB Feb. 11,
`2015) (Paper 140); Zoll Lifecor Corp. v. Philips Elec. North America Corp.,
`Case IPR2013-00606 (PTAB Mar. 20, 2014) (Paper 13). Additional
`considerations may include whether a non-party “funds and directs and
`controls” an IPR petition or proceeding; the non-party’s relationship with the
`petitioner; the non-party’s relationship to the petition itself, including the
`nature and/or degree of involvement in the filing; and the nature of the entity
`filing the petition. Trial Practice Guide, 77 Fed. Reg. at 48,760.
`In other situations, the Board has found that the relationship between a
`nonparty parent corporation and the subsidiary petitioner blurred the lines of
`corporate separation such that the parent could control conduct of the inter
`partes review, thus making the parent an RPI. ZOLL Lifecor Corp. v.
`Philips Elec. N. Am. Corp., Case IPR2013-00606, at 8–11 (PTAB Mar. 20,
`2014) (Paper 13); see Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at
`10–14 (PTAB Feb. 12, 2015) (Paper 32). However, our Practice Guide
`indicates that a non-party may be a real party-in-interest even in the absence
`of control or an opportunity to control. See Trial Practice Guide, 77 Fed.
`Reg. at 48,760 (citing California Physicians’ Serv. v. Aoki Diabetes
`
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`Research Inst., 163 Cal. App. 4th 1506, 1523–25 (Cal. App. 2008), for the
`proposition that “preclusion can apply even in the absence of such control”).
`5. Patent Owner Provides Sufficient Evidence That Reasonably Brings Into
`Question The Accuracy of Petitioner’s Identification of All Real Parties-
`in-Interest
`Petitioner represents that “Petitioner is not barred or estopped from
`requesting inter partes review challenging the patent claims on the grounds
`identified in this petition.” Pet. 4. Patent Owner argues Petitioner filed this
`Petition as a proxy for Springpath. In RPX, the Board discussed several
`factors to determine whether the petitioner RPX was a proxy for a non-party.
`The factors include whether the petitioner is compensated by a non-party for
`filing the petition, whether the petitioner was authorized, explicitly or
`implicitly, by the non-party to file the petition or represent the non-party in
`the inter partes review, and whether petitioner is a “nominal plaintiff” with
`“no substantial interest” in the IPR challenge. RPX, Case IPR2014-00171,
`at 7–10. Petitioner asserts that, unlike the facts in RPX, based on the record
`before us, there is no persuasive evidence that blurring of the corporate lines
`occurred or that Springpath has provided any funding, direction, or control
`over Petitioner or Petitioner’s preparation of the Petition in this proceeding.
`Nevertheless, Patent Owner did present unrebutted evidence that
`Petitioner invested 34 million dollars into Springpath prior to the filing of
`the Petition and had attained “board-level representation” at Springpath—all
`of which establishes a longstanding relationship between Petitioner and
`Springpath. Ex. 2003. While this evidence does not show control or
`funding by Springpath of this IPR, it can be considered as evidence that
`Cisco is representing Springpath’s interest, rather than its own and, thus, it is
`pursuing its Petition as a proxy for Springpath. Additionally, this does not
`
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`end the inquiry. We may consider whether Petitioner is a “nominal
`plaintiff” with “no substantial interest” in the IPR challenge. RPX, Case
`IPR2014-00171, at 7–10.
`We determine that the evidence relied upon by Patent Owner is
`sufficient to demonstrate a proxy relationship such that Petitioner was a
`proxy for Springpath in filing the Petition. As Patent Owner asserts, “[i]t is
`Springpath that is accused of infringing the ’799 Patent in the district court
`litigation, not Cisco. Cisco is not, and has never been, a defendant in the
`Springpath district court litigation. None of Cisco’s products have been
`accused of patent infringement in that litigation.” Prelim. Resp. 4; see also,
`Trial Practice Guide, 77 Fed. Reg. at 48,759 (a “real party-in-interest” is
`“the party that desires review of the patent”).
`In RPX, the panel determined that petitioner RPX had no interest in
`that inter partes review proceeding other than that of its underlying proxy
`client who had previously had its petition denied. See RPX at 4–11.
`Although Petitioner did not acquire Springpath until after it filed the
`Petition, Petitioner indicated about a week after the filing of the Petition, that
`it intended to acquire Springpath. Ex. 2002, 1. Based on its longstanding
`relationship with Springpath through litigation cooperation, funding, and
`board level representation (Exs. 2003, 2004, 2006, 2009) and its post-filing
`acquisition of Springpath (Ex. 2007), we find Petitioner’s interest in this
`proceeding is derived from that of Springpath, which it ultimately acquired,
`rather than any interest independent of Springpath. Thus, we find that
`Petitioner brought the Petition as a proxy for Springpath, who otherwise
`would be barred from challenging the ’799 patent.
`
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`Given the opportunity to respond to Patent Owner’s assertions
`Petitioner asserted only “Cisco filed the Petition for its own reasons.” Paper
`8. Cisco did not explain those reasons, support them with evidence, or
`explain anything about the merger, or outside the merger, that would give
`Cisco an independent reason to file the IPR. We find this statement
`insufficient to rebut Patent Owner’s assertion and evidence that Petitioner’s
`only interest was the interest of Springpath.
`Another panel has addressed a situation similar to this one.
`Amazon.com, Inc. v. Appistry, Inc., Case IPR2015–00480, at 4–6 (PTAB
`July 13, 2015) (Paper 18). In Amazon, the named RPIs, Amazon.com, Inc.
`(“Amazon”) and Amazon Web Services, Inc. (“AWS”) failed to name as
`RPIs two intervening wholly owned corporations. Amazon, Case IPR2015–
`00480, at 4–5. Patent Owner, Appistry, Inc., argued that these intervening
`corporations necessarily exercised control over AWS in the proceedings. Id.
`The panel invited Amazon and AWS to respond to this issue. Amazon and
`AWS provided no response, and the panel found that the only evidence of
`record justified denying the Petition for failure to name RPIs. Id.
`Although Petitioner did accept this panel’s offer to respond to Patent
`Owner’s Preliminary Response, Petitioner’s arguments regarding real-party-
`in-interest in its Reply focus entirely on whether Springpath controls or has
`the opportunity to control Cisco’s participation in these proceedings, without
`addressing its apparent nominal status as Petitioner. Paper 8 (citing Exs.
`1062–63, 2002, regarding the timing of the acquisition of Springpath). As
`noted above, a non-party may be a RPI even in the absence of control or an
`opportunity to control. Thus, similar to Amazon, the only evidence
`
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`regarding the relevant issue, here whether Cisco was more than a “nominal
`plaintiff,” is presented by Patent Owner.
`6. Conclusion
`Accordingly, based on the totality of the circumstances including: 1)
`Cisco’s a long-standing relationship with Springpath, 2) the fact that
`Springpath had the only interest in filing the Petition—a fact that was not
`sufficiently rebutted, and 3) Petitioner’s failure to apprise the Board before
`or after the filing of the Petition about its relationship with Springpath, we
`determine that the Petition did not identify all RPIs. Accordingly, we do not
`consider the Petition, and do not institute an inter partes review of the
`challenged claims.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that no inter partes review will be instituted
`pursuant to 35 U.S.C. § 314(a) with respect to any of the challenged claims
`of the ’799 patent on the grounds of unpatentability asserted in the Petition.
`
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`17
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`

`

`IPR2017-01933
`Patent 8,478,799 B2
`
`For PETITIONER:
`David L. McCombs
`Theodore M. Foster
`Philip W. Woo
`Pranay Pattani
`HAYNES AND BOONE, LLP
`2323 Victory Ave., Suite 700
`Dallas, TX 75219
`david.mccombs.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`philip.woo.ipr@haynesboone.com
`pranay.pattani.ipr@haynesboone.com
`
`
`
`For PATENT OWNER:
`
`Barry K. Shelton
`SHELTON COBURN LLP
`311 RR 620 S, Suite 205
`Austin, TX 78734
`bshelton@sheltoncoburn.com
`
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`18
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