UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`CISCO SYSTEMS, INC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,902,760
`
`Case No.: IPR2018-01511
`
`______________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO ITS PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`CISCO SYSTEMS, INC,
`Petitioner,
`
`v.
`
`CHRIMAR SYSTEMS, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 8,902,760
`
`Case No.: IPR2018-01511
`
`______________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO ITS PRELIMINARY RESPONSE TO
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`Case No.: IPR2018-01511
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0121IPR
`
`Table of Authorities
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`Cases
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`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co.,
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`905 F.3d 1311 (Fed. Cir. 2018) .............................................................. 1, 2, 3
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`Click-to-Call Techs., LP v. Ingenio, Inc.,
`
`899 F.3d 1321 (Fed. Cir. 2018) .......................................................... 1, 2, 3, 4
`
`Clio USA, Inc. v. The Proctor and Gamble Co.,
`
`IPR2013-00438 (P.T.A.B. Jan. 9, 2014) ......................................................... 4
`
`Noven Pharms., Inc. v. Novartis AG,
`
`IPR2014-00549, Paper 10 (PTAB Oct. 14, 2014) ........................................... 2
`
`Statutes
`
`35 U.S.C. §315 .................................................................................................. 1, 2, 3
`
`Other Authorities
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`157 Cong. Rec. S1023 at S1041 (March 1, 2011) ..................................................... 1
`
`Rules
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`Fed. R. Civ. P. 3 ......................................................................................................... 1
`
`
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`i
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`List of Exhibits
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`Atty. Dkt. No.: CHRMC0121IPR
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`Exhibit
`Description
`No.
`Petitioner’s Complaint challenging the validity of ‘012 patent claims
`2001
`2002 Order Temporarily Staying Case
`2003 Notice of Voluntary Dismissal
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`ii
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`Atty. Dkt. No.: CHRMC0121IPR
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`Ignoring the plain language of the statute and the Federal Circuit’s directives
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`in Click-to-Call and Bennett Regulator, Cisco asserts that Congress intended the
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`filing of a civil action not bar institution of an IPR under the same set of facts
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`where serving a complaint would do so. Cisco cites no authority for that
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`distinction. Under 35 U.S.C. §315(a), if a party files a civil action for a declaratory
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`judgment of patent invalidity, the Board may not institute an IPR, period. The very
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`same legislative history Cisco quotes (Reply p. 5) makes it clear that the mere
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`filing of the complaint bars IPR institution: “The present bill does coordinate inter
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`partes and post-grant review with litigation, barring use of these [inter partes and
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`post-grant review] proceedings if the challenger seeks a declaratory judgment
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`that a patent is invalid . . . .” 157 Cong. Rec. S1023 at S1041 (March 1, 2011).1
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`If, as Cisco asserts, this passage expresses Congress’ intent, then Congress
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`intended that the mere act of seeking a declaratory judgment of patent invalidity
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`bars institution of an IPR. Contrary to Cisco’s argument, no further acts are
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`necessary for the bar to exist.
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`Cisco’s effort to distinguish “civil action” from “complaint is similarly
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`unavailing. The two go hand-in-hand, as Fed. R. Civ. P. 3 make clear: “A civil
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`action is commenced by filing a complaint with the court.” The PTAB has also
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`1 Throughout, all emphasis is added unless otherwise noted.
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`1
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`confirmed that no distinction exists: “When the statute [§315(a)(1)] refers to filing
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`Atty. Dkt. No.: CHRMC0121IPR
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`a civil action, it refers to filing a complaint with a court to commence a civil
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`action.” Noven Pharms., Inc. v. Novartis AG, IPR2014-00549, Paper 10, at 6-7
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`(PTAB Oct. 14, 2014).
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`Cisco does not deny that its filing of the declaratory judgment complaint
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`triggered the bar of §315(a)(1)—i.e., it does not deny that the bar would be in
`
`effect had Cisco not (more than two years later) dismissed the complaint. Cisco
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`contends that subsequent events can eliminate the bar, a contention the Federal
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`Circuit expressly rejected in Bennett Regulator (a case Cisco ignores): “We
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`recently held that serving a complaint alleging infringement—an act unchanged
`
`by the complaint’s subsequent success or failure—unambiguously implicates
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`§315(b)’s time bar.” Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905
`
`F.3d 1311, 1314-15 (Fed. Cir. 2018), citing Click-to-Call Techs., LP v. Ingenio,
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`Inc., 899 F.3d 1321, 1329–32 (Fed. Cir. 2018). More pointedly, the Federal
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`Circuit held, “The statute endorses no exceptions for dismissed complaints . . . . .”
`
`Id. at 1315. Section 315(a)(1) states, without exceptions, “[a]n inter partes review
`
`may not be instituted if, before the date on which the petition for such a review is
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`filed, the petitioner or real party in interest filed a civil action challenging the
`
`validity of a claim of the patent.” Unquestionably, Bennett Regulator’s holding
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`applies equally to §315(a)(1) because filing a civil action “—an act unchanged by
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`2
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`the complaint’s subsequent success or failure—” unambiguously implicates
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`Atty. Dkt. No.: CHRMC0121IPR
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`§315(a)’s time bar. Bennett Regulator, 905 F.3d at 1314-15. In golf vernacular,
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`the statute does not allow Cisco to take a Mulligan.
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`Section 315(a)(1) is more stringent—not less—than §315(b) because, under
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`§315(a)(1), the mere filing of a complaint—and nothing more—is enough to
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`activate the bar. Thus, Click-to-Call and Bennett Regulator apply even more so to
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`§315(a)(1). This makes sense because, unlike the time bar of §315(b), which the
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`patent owner triggers by serving a complaint to a potentially unsuspecting
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`defendant, the challenger triggers the bar of §315(a)(1) by filing a civil action,
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`presumably after evaluating the ramifications of the statute. In Cisco’s case, its
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`filing of complaints against Chrimar’s patents was no accident: it filed declaratory
`
`judgment complaints immediately after the PTO issued patents to Chrimar and left
`
`the complaints pending for more than two years.
`
`Cisco cites Judge Taranto’s concurring opinion in Click-to-Call to support
`
`its arguments. Cisco contends that §315(a)(1) is a preclusion statute and therefore
`
`the reasoning in Click-to-Call regarding §315(b) should not apply. (Reply at 6-7.)
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`But §315(a)(1) is no more a preclusion statute than §315(b). In both cases, if the
`
`bar applies, it does not preclude the challenger from raising invalidity clams in
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`district court. Cisco, fully aware of §315(a)(1), chose to litigate its validity claims
`
`in district court. Cisco suffers no prejudice if the Board applies the bar because
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`3
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`Cisco can still pursue its validity claims in the district court (Cisco’s chosen
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`Atty. Dkt. No.: CHRMC0121IPR
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`forum).
`
`Cisco relies on pre-Click-to-Call PTAB decisions such as Clio USA, Inc. v.
`
`The Proctor and Gamble Co., IPR2013-00438, Paper 9 (P.T.A.B. Jan. 9, 2014)—
`
`decisions that no longer apply. Cisco ignores the Federal Circuit’s criticism that
`
`the Board’s tolling decisions stood the law on its head:
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`[T]he appropriate question is whether the voluntary, without prejudice
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`dismissal of a civil action in which a complaint had been served
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`nullifies an administrative time bar that is triggered by service of that
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`complaint. It does not. Yet the Board, without explanation, extended
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`the background principle of Graves and Bonneville to conclude that
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`such a dismissal ‘nullifies the effect of the service of the complaint.’ It
`
`then relied on this erroneous conclusion to ‘un-ring’ § 315(b)'s time
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`bar. In effect, the Board relied on cases holding that the voluntary
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`dismissal of an action or appeal does not toll a statute of limitations to
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`conclude that the voluntary dismissal without prejudice of a civil
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`action does indefinitely toll § 315(b) and permitted an otherwise
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`untimely IPR to proceed, turning Bonneville and Graves on their head.
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`Click-to-Call, 899 F.3d at 1335 (emphasis in original).
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`The statute is clear. The Federal Circuit cases are clear. Dismissing a
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`complaint after filing and serving it (voluntarily or otherwise) does not “un-ring”
`
`the bar triggered by the filing/service of the complaint. The Board should deny
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`Cisco’s Petition.
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`4
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`
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`Dated: January 9, 2019
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`Atty. Dkt. No.: CHRMC0121IPR
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`Respectfully submitted,
`
`
` /Christopher C. Smith/
`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
`(248) 358-4400
`
`Attorneys for Patent Owner
`
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`5
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
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`
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`Atty. Dkt. No.: CHRMC0121IPR
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`Certificate of Service
`
`The undersigned hereby certifies that on January 9, 2019, a complete and
`entire copy of PATENT OWNER’S SUR-REPLY TO ITS PRELIMINARY
`RESPONSE TO PETITION FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.107, was served on all counsel listed below via electronic mail at:
`Cisco-ChriMar-IPR@kirkland.com.
`
`
`LEAD COUNSEL
`James E. Marina (Reg. No. 41,969)
`james.marina@kirkland.com
`
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`601 Lexington Ave.
`New York, NY 10022
`Telephone: (212) 446-4800
`Fax: (212) 446-4900
`
`
`
`
`
`BACK-UP COUNSEL
`Robert Kang (Reg. No. 59,609)
`robert.kang@kirkland.com
`
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`Fax: (415) 439-1500
`
`Eugene Goryunov (Reg. No. 61,579)
`eugene.goryunov@kirkland.com
`
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`
`
` /Christopher C. Smith/
`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.
`
`Attorneys for Patent Owner
`
`
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`6
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`Case No.: IPR2018-01511
`Patent No.: 8,902,760
`
`
`
`Atty. Dkt. No.: CHRMC0121IPR
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`Certificate of Compliance Pursuant to 37 C.F.R. § 42.24
`
`
`
`
`This paper complies with the type-volume limitation of 37 C.F.R. § 42.24.
`
`The paper contains 968 words, excluding the parts of the paper exempted by
`
`§42.24(a).
`
`This paper also complies with the typeface requirements of 37 C.F.R.
`
`§ 42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)&(iv).
`
`
`Dated: January 9, 2019
`
`
`
`
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`
`
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`Respectfully submitted,
`
`
` /Christopher C. Smith/
`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
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`
`7
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