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Cisco Systems, Inc. v. C-Cation Tech., LLC: Denying Institution of Inter Partes Review IPR2014-00454

Takeaway: If the Board determines that a party incorporated arguments by reference from other documents, the Board can refuse to consider all of the incorporated arguments. Further, as suggested in the Office Patent Trial Practice Guide, parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well organized, easy-to-follow arguments supported by readily identifiable evidence of record.

In its Decision, the Board denied institution of an inter partes review of claims 1-20 of the ’883 Patent, because the information presented in the petition did not demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. The ’883 Patent relates to a “method and apparatus to support two-way multi-media communication services on a multiple access communication system, which comprises a central controller, a shared transmission media, and a plurality of remote terminals dispersed throughout the network.”

Petitioner used footnotes listing certain paragraphs of the expert Declaration. For example, in one section of the Petition, Petitioner presented five asserted grounds that claim 1 is unpatentable, spanning seven pages. However, the footnotes in that section cited a total of seventeen pages. The Board found that this practice of using footnotes to cite large portions of another document, without sufficient explanation of those portions, amounts to incorporation of reference. Further, the Board found that the Petition included citations to the Declaration to support conclusory statements for which the Petition does not otherwise provide an argument or explanation, which was also found to be incorporation by reference.

After finding that much of the Petition included arguments from other documents incorporated by reference, the Board explained that it is improper to incorporate by reference arguments from one document into another document. 37 C.F.R. § 42.6(a)(3). Further, the Board determined that incorporation by reference of numerous arguments from the expert’s 250-page Declaration into the Petition served to circumvent the page limits imposed on petitions for inter partes review, while imposing on the Board’s time by asking them to sift through the 250 pages of declaration to locate specific arguments. Accordingly, the Board refused to consider any arguments that were not made explicitly in the Petition.

The Board then moved on to the four grounds based on anticipation. The Petition merely characterized the claimed subject matter, provided brief summaries of the applied reference, and general assertions that the applied references disclose the claimed subject matter, with claim charts providing quotations and citations from each of the applied references. The Board explained that a “petition for inter partesreview must identify how the construed claim is unpatentable under the statutory grounds on which the petitioner challenges the claims, and must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board also pointed to the Office Patent Trial Practice Guide’s suggestion that parties requesting inter partes review “avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. at 48,763 (Aug. 14, 2012). The Board determined that the Petition did not meet these requirements.

The Board then moved on to the sixteen grounds based no obviousness. The Board found the same deficiencies as for the anticipation grounds, and also found that the Petition did not address meaningfully the scope and content of the prior art, and any differences between the claimed subject matter and the prior art. Also, the Board found that the Petition did not provide sufficient articulated reasoning with rational underpinning explaining why one with ordinary skill in the art would modify the teachings of the applied reference to address those differences, and instead, only provided conclusory statements.

Cisco Systems, Inc. v. C-Cation Tech., LLC, IPR 2014-00454
Paper 12: Denying Institution of Inter Partes Review
Dated: August 29, 2014
Patent: 5,563,883
Before: Kristen L. Droesch, Kalyan K. Deshpande, Barbara A. Benoit, Lynne E. Pettigrew, and Miriam L. Quinn
Written by: Droesch
Related Proceedings: C-Cation Technologies, LLC v. Time Warner Cable Inc., No 2:14-cv-0030 (E.D. Tex. 2014); IPR 2014-00746 (filed by ARRIS Group)

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