Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 54
`Entered: October 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012571
`Patent 8,457,113 B2
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On October 12, 2017, a conference call was held with Judges Medley,
`Chang, and Parvis and counsel for the parties in attendance. The call was
`held to give the parties an opportunity to discuss the impact of the Federal
`
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`571.272.7822
`
`
`
`
`
`Paper 54
`Entered: October 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FOCAL IP, LLC,
`Patent Owner.
`
`
`Case: IPR2016-012571
`Patent 8,457,113 B2
`
`
`
`
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On October 12, 2017, a conference call was held with Judges Medley,
`Chang, and Parvis and counsel for the parties in attendance. The call was
`held to give the parties an opportunity to discuss the impact of the Federal
`
`
`1 This Order addresses the same issues in the inter partes reviews listed in
`the Appendix. Therefore, we issue one Order to be filed in all of the cases.
`The parties, however, are not authorized to use this style of filing in
`subsequent papers.
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`Circuit’s en banc decision in Aqua Prods., Inc. v. Matal, No. 2015-1177
`(Fed. Cir. Oct. 4, 2017) (“Aqua Products”) with respect to pending Motions
`to Amend. As background, Patent Owner filed Motions to Amend in each of
`the proceedings listed in the Appendix. See, e.g., IPR2016-01257, Paper 26.
`Each Petitioner filed an Opposition to each of Patent Owner’s Motions to
`Amend (see e.g., IPR2016-01257, Paper 30) and Patent Owner filed a Reply
`to each of Petitioners’ Oppositions to the Motion to Amend (see, e.g.,
`IPR2016-01257, Paper 39). A hearing was held on September 19, 2017.
`During the October 12, 2017 conference call, the parties were asked
`whether additional briefing is warranted as a result of the Federal Circuit’s
`decision in Aqua Products.2
`
`The Parties’ Positions
`Petitioners3 contend that additional briefing is required and provide
`differing proposals as follows: (1) Petitioners Bright House Networks Group
`and Cisco request filing 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; and (2) YMax similarly requests an opening
`and reply brief, but YMAX requests fewer pages (25 to 30 pages), but with
`claim charts and incorporation by reference of their previously filed papers,
`
`2 A court reporter was present on the call, and it was agreed that a transcript
`of the call would be filed in this proceeding.
`3 Petitioners are as follows: (1) Bright House Networks, LLC,
`WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
`Communications (“Bright House Networks Group”) are Petitioner in
`IPR2016-01261, and -01262; (2) YMax Corporation (“YMax”) is Petitioner
`in IPR2016-01258 and -01260; and (3) Cisco Systems, Inc. (“Cisco”) is
`Petitioner in IPR2016-01257.
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`and less preparation time (one month). Petitioners argue that their requests
`are supported by a change in the law. In particular, Petitioners point to our
`Order re: Guidance on Motions to Amend Claims (see e.g., IPR2016-01257,
`Paper 24), which Petitioners argue explains that at that time Patent Owner
`had the burden of proof to establish that it is entitled to the relief requested
`in the motion to amend under 37 C.F.R. § 42.20(c). Petitioners contend that
`the impact of Aqua Products is that Petitioners now have the burden of
`persuasion on unpatentability. Petitioners contend, therefore, an opening
`and a reply brief are appropriate and, Petitioners Bright House Networks
`Group and Cisco request authorization to submit submissions similar in
`content and length to the original petitions filed at the on-set of these
`proceedings requesting institution of review and presenting challenges to the
`patentability of claims and supporting evidence.
`In contrast to Petitioners, Patent Owner contends no additional
`briefing is warranted. Patent Owner argues that Petitioner should have
`anticipated the outcome and already had an opportunity to include all its
`contentions in its original briefing. Patent Owner also argues that Petitioner
`should not be allowed a “do-over” that involves adding new arguments
`and/or art. Patent Owner additionally argues that for efficiency and
`especially at this late stage, Petitioner should not be allowed to retread old
`ground. Patent Owner further argues if we authorize additional briefing for
`Petitioner, Patent Owner should be authorized to file an additional brief.
`
`Discussion
`In Aqua Products, the United States Court of Appeals for the Federal
`Circuit remanded the case “for the Board to issue a final decision under
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
` §
`
` 318(a) assessing the patentability of the proposed substitute claims without
`placing the burden of persuasion on the patent owner.” Aqua Products,
`2017 WL 4399000, at *1. Judge Reyna’s opinion in Aqua Products stated
`“a majority of the court interprets § 316(e) to be ambiguous as to the
`question who bears the burden of persuasion in a motion to amend claims.”
`Id. at *40.
`Part III of Judge Reyna’s opinion4 noted that the “issue of what patent
`owner must address in its motion to amend is distinct from the issue of the
`ultimate burden of persuasion on the evidence.” Id. (citing Veritas Techs.,
`LLC v. Veeam Software Corp., 835 F.3d 1406, 1414−15 (Fed. Cir. 2016));
`see also Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 100 n.4 (2011)
`(noting that the burden of persuasion specifies “which party loses if the
`evidence is balanced,” and that the burden of production specifics “which
`party must come forward with evidence at various stages in the litigation”).
`Part III of Judge Reyna’s opinion stated that “Part III of this opinion sets
`forth the judgement of this court on what the Board may and may not do
`with respect [to] the burden of production on remand in this case,” and
`“[t]here is no disagreement that the patent owner bears a burden of
`production in accordance 35 U.S.C. § 316(d).” Id. at *40−41; see also, e.g.,
`id. at *9 (explaining that “patent owner must satisfy the Board that the
`statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any
`reasonable procedural obligations imposed by the Director are satisfied”).
`Here, we appreciate Petitioners’ view that they now bear the burden of
`persuasion regarding the unpatentability of the Patent Owner’s proposed
`
`
`4 Part III of Judge Reyna was joined by Chief Judge Prost and Judges Dyk,
`Taranto, Chen, and Hughes.
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`substitute claims. That being said, Petitioners have not articulated a
`sufficient reason why a “do-over” with an opening brief similar in length
`and content to a petition (or 25 to 30 pages with claim charts and
`incorporation by reference of their previously filed papers) is warranted in
`each of these proceedings. Indeed, when Patent Owner had both the burden
`of persuasion and the burden of production to establish both written
`description support and patentability of the proposed substituted claims,
`Petitioners argued that the length of 25 pages was adequate for each Motion
`to Amend, opposing Patent Owner’s request for extending the 25-page limit.
`Paper 24, 3. In each proceeding, Patent Owner merely proposed one or two
`substitute claims. Paper 26. Moreover, Petitioners already filed a 25-page
`Opposition, submitting new evidence and asserting new prior art references
`against the proposed substitute claims. See, e.g., Paper 30; Exs. 1146, 1147,
`1157.
`Additionally, at this late stage of the proceeding, after Petitioners have
`had the opportunity to see Patent Owner’s responsive arguments, as well as
`hear Patent Owner’s arguments during the Oral Hearing, we are persuaded
`by Patent Owner that allowing a “do-over” that encompasses issues that
`should have been addressed as part of the original briefing is unfair to Patent
`Owner. Patent Owner also contends Petitioners should have anticipated the
`decision in Aqua Products. Indeed, in the instant proceedings, contentions
`were submitted in anticipation of a shift in the law. For instance, YMax
`filed claim charts in each of IPR2016-01258, -01260, -01261, and -01262 to
`preserve arguments in the event of a change in the law and argued that these
`claim charts were duplicative of arguments presented in the Oppositions.
`See, e.g., IPR2016-01257, Paper 34, 2.
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`
`In light of the foregoing and based on the record before us, including
`the parties’ presentations during the Oral Hearing, we are persuaded that
`only a supplemental brief is warranted.
`Accordingly, we authorize Petitioners to file a supplemental brief
`limited to fifteen (15) pages due October 31, 2017, in each of the instant
`proceedings. Petitioners should not incorporate by reference arguments
`made in other papers. As Petitioners should have already presented
`arguments and evidence pertaining to limitations added by Patent Owner to
`distinguish over prior art, Petitioners’ supplemental brief should be limited
`to the issue regarding the unpatentability of the proposed substitute claims,
`addressing original claim limitations not previously addressed by Petitioners
`based on the prior art in the record.
`With respect to claim charts filed by Petitioner YMax in each of
`IPR2016-01258, -01260, -01261, and -01262 to preserve arguments that
`were expunged (i.e., IPR2016- 01258, Ex. 1042; IPR2016-01260, Ex. 1045;
`IPR2016-01261, Exs. 1067 and 1068; and IPR2016-01262, Exs. 1067 and
`1068) (see, e.g., IPR2016-01257, Paper 34, 2), we authorize YMax to re-file
`these same claim charts instead of the supplemental briefs, if Petitioner
`YMax chooses. At this time, we do not authorize Patent Owner to file a
`responsive brief.
`
`
`
`
`
`
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioners are authorized to file a supplemental brief
`limited to fifteen (15) pages due October 31, 2017, in each of the
`proceedings listed in the Appendix; and
`FURTHER ORDERED that Petitioner YMax is authorized, instead of
`filing a supplemental brief, to re-file claim charts previously filed in each of
`IPR2016-01258, -01260, -01261, and -01262 that were expunged (see, e.g.,
`IPR2016-01257, Paper 34, 2).
`
`
`
`
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`For PETITIONERS:
`
`IPR2016-01257
`Wayne Stacy
`Sarah Guske
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`
`
`IPR2017-01258, -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
`
`
`IPR2017-01261, -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
`
`
`
`
`
`
`
`IPR2016-01257
`Patent 8,457,113 B2
`
`
`U.S. Patent No.
`7,764,777 B2
`
`8,457,113 B2
`
`
`
`
`
`
`
`APPENDIX5
`
`Inter Partes Review
`IPR2016-01258
`IPR2016-01262
`IPR2016-01257
`IPR2016-01260
`IPR2016-01261
`
`
`5 Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01261,
`and -01262.
`
`YMax Corporation is Petitioner in IPR2016-01258 and -01260.
`
`Cisco Systems, Inc. is Petitioner in IPR2016-01257.
`
`
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