Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 40
`Entered: July 7, 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: IPR2016-012541
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before 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 July 6, 2017, a conference call was held with Judges Chang and
`Parvis and counsel for the parties in attendance. Patent Owner requested the
`conference call to ask for authorization to file motions to strike certain
`
`
`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 No. 40
`Entered: July 7, 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: IPR2016-012541
`Patent 8,457,113 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before 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 July 6, 2017, a conference call was held with Judges Chang and
`Parvis and counsel for the parties in attendance. Patent Owner requested the
`conference call to ask for authorization to file motions to strike certain
`
`
`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.
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`portions of Declarations filed in support of Petitioners’ Oppositions to Patent
`Owner’s Motions to Amend, as well as certain of Petitioners’ Replies and
`accompanying Declarations. Patent Owner seeks, as an alternative to filing
`motions to strike certain of Petitioners’ Replies, authorization to file
`sur-replies. Petitioners opposed. During the call, Petitioner Cisco Systems
`Inc. requested re-filing its Replies in two proceedings, and Patent Owner
`opposed.
`We first turn to Patent Owner’s request to file motions to strike certain
`portions of Declarations filed in support of Petitioners’ Oppositions to Patent
`Owner’s Motions to Amend. Patent Owner, more specifically, contends that
`in IPR2016-01258, -01260, -01261, and -01262, Petitioners filed
`element-by-element analyses in the form of claim charts that exceed the
`scope of Petitioners’ Oppositions. The claim charts are submitted as part of
`Declarations in each of IPR2016-01258 and IPR2016-01260, i.e., IPR2016-
`01258, Ex. 1042 and IPR2016-01260, Ex. 1045. In IPR2016-01261 and
`IPR2016-01262, the claim charts are submitted as separate exhibits, i.e.,
`IPR2016-01261, Exs. 1067 and 1068 and IPR2016-01262, Exs. 1067 and
`1068. According to Patent Owner, the element-by-element analyses in the
`claim charts pertain to all limitations of the proposed substitute claims,
`whereas the Oppositions address only two limitations.
`Petitioners acknowledge that claim charts were filed in each of
`IPR2016-01258, -01260, -01261, and -01262, but contend that these charts
`need not be considered and simply preserve arguments in the event that the
`state of the law changes. In the alternative, Petitioners contend that the
`claim charts are duplicative of arguments made in the Oppositions.
`We are not persuaded by Petitioners that submission of additional
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`arguments in Declarations that exceed the scope of arguments presented in
`Oppositions is proper to preserve arguments. Further, to the extent that the
`claim charts are duplicative of arguments presented in the Oppositions, we
`need not have the same arguments presented twice. Accordingly, we treat
`Patent Owner’s request as a request to expunge these exhibits (i.e., IPR2016-
`01258, Ex. 1042; IPR2016-01260, Ex. 1045; IPR2016-01261, Exs. 1067 and
`1068; and IPR2016-01262, Exs. 1067 and 1068), without prejudice with
`respect to the Declarations. We authorize Petitioner, YMax Corporation, to
`refile the Declarations in each of IPR2016-01258 and IPR 2016-01260
`without claim charts on or before July 12, 2017.
`We next turn to Patent Owner’s request for authorization to file
`motions to strike certain of Petitioners’ Replies and accompanying
`Declarations, or, in the alternative, to file sur-replies. As we explained
`during the call, replies that present new issues or belatedly present evidence
`will not be considered. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,767 (Aug. 14, 2012). Patent Owner is not authorized to file
`a motion to strike or a sur-reply, but, instead, is authorized to file an
`itemized listing similar to that filed in another proceeding. See Cisco
`Systems, Inc. v. TQ Delta LLC, Case IPR2016-01009 (PTAB June 22, 2017)
`(Paper 19).
`More specifically, we authorize Patent Owner to file a paper in each
`of IPR2016-01254, -01257, -01259, -01261, -01262, and -01263, limited to
`two pages, that provides an itemized listing, by page and line number, of
`what statements and evidence in Petitioner’s Reply are deemed by Patent
`Owner to be beyond the proper scope of a reply. No argument is to be
`included in the contents of the submission. We also authorize Petitioner to
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`file a responsive paper, in each of IPR2016-01254, -01257, -01259, -01261,
`-01262, and -01263, limited to two pages, which provides an item-by-item
`response to the items listed in Patent Owner’s submission. Each item in
`Petitioner’s responsive paper would identify that part of Patent Owner’s
`Response, by page and line number, to which the corresponding item
`complained of by Patent Owner is provided as a response, if indeed that it
`the case. No argument is to be listed in the contents of the submission.
`We now turn to Petitioner Cisco Systems Inc.’s request to re-file its
`Replies in IPR2016-01254 and IPR2016-01257. As authorized during the
`call July 6, 2017, Cisco Systems Inc. submitted redlined versions of the
`Replies via e-mail. Contrary to Patent Owner’s argument during the call, the
`changes are typographical, not substantive. We, therefore, authorize
`Petitioner Cisco Systems Inc. to file its revised Reply as a new paper in each
`of IPR2016-01254 and IPR2016-01257. Petitioner also is authorized to file
`the LaPier patent (i.e., corrected Exhibit 1047 in IPR2016-01254 and
`corrected exhibit 1147 in IPR2016-01257). Additionally, Petitioner should
`file its redlined versions of the Replies as exhibits in IPR2016-01254 and
`IPR2016-01257.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, in each of IPR2016-01258 and IPR2016-01260,
`Petitioner’s Declaration in support of its Opposition to Patent Owner’s
`Motion to Amend (i.e., IPR2016-01258, Ex. 1042 and IPR2016-01260,
`Ex. 1045) shall be expunged without prejudice to Petitioner refiling each
`Declaration without claim charts on or before July 12, 2017;
`FURTHER ORDERED that in IPR2016-01261, Petitioner’s Claim
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`Chart of Lewis Against Proposed Substitute Claim 183 and Claim Chart of
`LaPier Against Proposed Substitute Claim 183 (i.e., IPR2016-01261,
`Exs. 1067 and 1068) and in IPR2016-01262, Petitioner’s Claim Chart of
`Lewis Against Proposed Substitute Claim 49 and Claim Chart of LaPier
`Against Proposed Substitute Claim 49 (i.e., IPR2016-01262, Exs. 1067 and
`1068) shall be expunged;
`FURTHER ORDERED Patent Owner is authorized to file a
`submission in each of IPR2016-01254, IPR2016-01257, IPR2016-01259,
`IPR2016-01261, IPR2016-01262, and IPR2016-01263, limited to two pages,
`that provides an itemized listing, by page and line number, of what
`statements and evidence in Petitioner’s Reply are deemed by Patent Owner
`to be beyond the proper scope, and each submission is due July 14, 2017;
`FURTHER ORDERED that Petitioners are authorized to file
`responsive submissions, limited to two pages, in each of IPR2016-01254,
`IPR2016-01257, IPR2016-01259, IPR2016-01261, IPR2016-01262, and
`IPR2016-01263, each of which provides an item-by-item response to the
`items listed in Patent Owner’s submission, and such submissions are due
`July 21, 2017; and
`FURTHER ORDERED that Petitioner Cisco Systems Inc. is
`authorized to file its revised Replies in IPR2016-01254 and IPR2016-01257,
`as well as the LaPier patent (i.e., corrected Exhibit 1047 in IPR2016-01254
`and corrected exhibit 1147 in IPR2016-01257), and Petitioner further shall
`file its redlined versions of the Replies as exhibits in IPR2016-01254 and
`IPR2016-01257.
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`PETITIONERS:
`
`Wayne Stacy
`Sarah Guske
`BAKER BOTTS L.L.P.
`wayne.stacy@bakerbotts.com
`sarah.guske@bakerbotts.com
`
`Mark D. Passler
`Brice S. Dumais
`AKERMAN LLP
`ip@akerman.com
`brice.dumais@akerman.com
`
`Patrick McPherson
`Christopher Tyson
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`CJTyson@duanemorris.com
`PATENT OWNER:
`
`Brent Bumgardner
`John Murphy
`NELSON BUMGARDNER, P.C.
`bbumgardner@nbclaw.net
`murphy@nelbum.com
`
`Victor Siber
`Hanna Madbak
`SIBER LAW LLP
`vsiber@siberlaw.com
`hmadbak@siberlaw.com
`
`
`
`
`
`
`IPR2016-01254
`Patent 8,457,113 B2
`
`
`
`U.S. Patent No.
`7,764,777 B2
`
`8,155,298 B2
`
`8,457,113 B2
`
`
`
`
`
`
`
`APPENDIX2
`
`Inter Partes Review
`IPR2016-01258
`IPR2016-01262
`IPR2016-01256
`IPR2016-01259
`IPR2016-01263
`IPR2016-01254
`IPR2016-01257
`IPR2016-01260
`IPR2016-01261
`
`
`2 Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of
`Florida, Inc., and Birch Communications are Petitioner in IPR2016-01259,
`01261, -01262, and -01263.
`
`YMax Corporation is Petitioner in IPR2016-01256, -01258 and -01260.
`
`Cisco Systems, Inc. is Petitioner in IPR2016-01254 and -01257.
`
`
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