Monarch Networking Solutions LLC

Patent Trials and Appeals BoardAug 2, 2021

IPR2020-01708 (P.T.A.B. Aug. 2, 2021)

Trials@uspto.gov Paper 32 571-272-7822 Entered: August 2, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ UNIFIED PATENTS LLC, Petitioner, v. MONARCH NETWORKING SOLUTIONS LLC, Patent Owner. ____________ Case IPR2020-01708 Patent 7,756,507 B2 ____________ Before THU A. DANG, ROBERT J. WEINSCHENK, and NORMAN H. BEAMER, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION Denying Patent Owner’s Request for Rehearing C.F.R. § 42.71(d) IPR2020-01708 Patent 7,756,507 B2 2 I. INTRODUCTION Unified Patents LLC (“Petitioner”) filed a Petition requesting an inter partes review of claims 1–5 (the “challenged claims”) of U.S. Patent No. 7,756,507 (Ex. 1001, “the ’507 patent”). Paper 1 (“Pet.”). Monarch Networking Solutions LLC (“Patent Owner”) filed a Motion for Additional Discovery (Paper 8, “PO Mot. Add’l Disc.”), and Petitioner filed its Opposition (Paper 10, “Pet. Opp. Mot. Add’l Disc.”) in return. Patent Owner then filed a Preliminary Response. Paper 17 (“Prelim. Resp.”). Pursuant to our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 19, “Pet. Prelim. Reply”) and Patent Owner filed a Sur-reply (Paper 22, “PO Prelim. Sur-reply”), each directed to whether Cisco Systems, Inc. (“Cisco”) should be listed as a real party in interest (“RPI”). Upon consideration of the parties’ contentions and supporting evidence, we determined that Petitioner had established a reasonable likelihood that it would prevail with respect to at least one of the challenged claims, and granted institution of inter partes review. Paper 26 (“Dec.”). Subsequently, Patent Owner filed a Request for Rehearing of the Decision granting institution. Paper 30 (“Req. Reh’g”). For the reasons that follow, the Request for Rehearing is denied. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place IPR2020-01708 Patent 7,756,507 B2 3 where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). III. ANALYSIS a. Decision to Institute Although Patent Owner contended that Cisco should be listed as an RPI (PO Mot. Add’l Disc. 2–3; Prelim. Resp. 46–60; Sur-reply 1–7), we may decline to address at the institution stage whether Cisco is an RPI unless the time bar or estoppel provisions under 35 U.S.C. § 315 would be implicated in this proceeding. Dec. 8 (citing SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential) (“SharkNinja”)). We noted that Patent Owner did not set forth any allegations regarding time bar estoppel in this proceeding with respect to Petitioner’s alleged failure to name Cisco as an RPI, but merely made a “passing reference” to potential estoppel in the Cisco district court trial. Id. at 8–9 (citing Prelim. Resp. 4 (“Cisco will be estopped in the co- pending litigation from asserting invalidity grounds that it could have asserted here”)). IPR2020-01708 Patent 7,756,507 B2 4 Further, we also declined to exercise our discretion to deny institution under 35 U.S.C. § 314(a). Dec. 10–19. In particular, we considered the six Fintiv factors in a holistic analysis, and determined that integrity of the system would not be best served by denying review. Id. at 18–19 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). With Respect to Fintiv factor 5, since we declined to decide at this stage whether Cisco should have been named as an RPI in the Petition, and since Petitioner is not a party to the Cisco district court trial, we found the factor neutral. Id. at 16–17. Thus, considering the Fintiv factors in a holistic analysis, we determined that the circumstances favor institution. Id. at 18–19. b. Rehearing Request In its Rehearing Request, Patent Owner contends that “[t]he Decision was based on the misconception that there is no ‘implication of time bar or estoppel provisions under 35 U.S.C. § 315 in this proceeding.’” Req. Reh’g 1 (citing Dec. 9). In particular, Patent Owner argues, for the first time, that “Cisco is time-barred from filing its own petition challenging the ’507 Patent” because “[Patent Owner] filed suit against Cisco for infringement of the ’507 Patent on May 14, 2020,” therefore “Cisco was time-barred from filing its own challenge as of May 14, 2021.” Id. at 2. In addition, Patent Owner alleges that, “because the Board did not make a finding regarding Cisco’s RPI status, the Board was unable to properly apply the precedential Fintiv analysis as required,” specifically, “with regard to Factor 5, which requires determining if a petitioner is related to a defendant in an earlier court proceeding.” Req. Reh’g 1. IPR2020-01708 Patent 7,756,507 B2 5 Patent Owner then argues, also for the first time, that “Cisco filed a parallel ex parte reexamination request which would be barred under 35 U.S.C. § 315(e)(1) by a decision in this proceeding,” wherein, “[i]f the Board declines to make an RPI finding at this time, then [Patent Owner] will be required to relitigate the same issue in front of the USPTO in that reexamination proceeding.” Req. Reh’g 1–2. c. Analysis An argument raised for the first time in a request for rehearing is ordinarily waived. See 37 C.F.R. § 42.71(d) (“The request must specifically identify . . . the place where each matter was previously addressed in a motion, an opposition, [or] a reply.”); Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1369 (Fed. Cir. 2014) (“An argument made for the first time in a motion for reconsideration comes too late and is ordinarily deemed waived.”); In re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986) (holding that any argument raised only in a request for reconsideration is waived). Here, for the first time in the Request, Patent Owner argues that “Cisco is time-barred from filing its own IP [] in this proceeding.” Req. Reh’g 1 (emphasis omitted). That is, according to Patent Owner, Patent Owner filed suit against Cisco for infringement of the ’507 patent on May 14, 2020, and thus, “Cisco was time-barred from filing its own challenge as of May 14, 2021.”1 Id. at 2. 1 The Petition in this proceeding was filed on October 1, 2020, prior to the alleged time bar date of May 14, 2021. IPR2020-01708 Patent 7,756,507 B2 6 However, as we noted in our Decision, in Patent Owner’s Motion for Additional Discovery, Patent Owner merely contended that “Cisco will be estopped in the co-pending litigation from asserting invalidity grounds that it could have asserted here,” but was silent as to any estoppel in this proceeding. See PO Mot. Add’l Disc. 4 (emphasis added). Similarly, in its Preliminary Response and Sur-reply, Patent Owner did not address estoppel in this proceeding, but just broadly contended that Petitioner filed this Petition “to shield Cisco from estoppel,” without contending how Cisco would be estopped. Prelim. Resp. 2; PO Prelim. Sur-Reply 10. Thus, Patent Owner’s newly raised argument for the first time in the Request concerning Cisco’s estoppel in this proceeding is waived. See 37 C.F.R. § 42.71(d). As such, Patent Owner does not demonstrate that the Decision misapprehended or overlooked any matters raised by Patent Owner. That is, we could not have misapprehended or overlooked the arguments that were not made previously in the Patent Owner’s Motion for Additional Discovery, Preliminary Response or Sur-reply. Therefore, Patent Owner’s arguments are waived. As we determined in the Decision, “[w]ithout an implication of time bar or estoppel provisions under 35 U.S.C. § 315 in this proceeding, we decline to decide whether Cisco should have been named an RPI in this Petition.” Dec. 9. Here, the Petition in this proceeding was filed on October 1, 2020, prior to the alleged time bar date of May 14, 2021. As set forth in our Decision, we are guided by our precedential decision, SharkNinja, where, “[d]ue to the lack of allegations regarding either a time bar or estoppel, the Board declined to decide the RPI issue at the institution stage IPR2020-01708 Patent 7,756,507 B2 7 because deferring that decision for after institution ‘better serves the interest of cost and efficiency.’” Id. at 8 (citing SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 19–20 (PTAB Oct. 6, 2020) (precedential)). Patent Owner contends that Fintiv Factor 5 “requires determining if a petitioner is related to a defendant in an earlier court proceeding,” and, thus, favors denial because Cisco is an RPI in this proceeding and a defendant in the district court proceeding. Req. Reh’g 1, 4. In this case, we determined that Factors 1 and 5 are neutral, Factors 2 and 4 slightly favor denial, Factor 3 slightly favors institution, and Factor 6 favors institution. See Dec. 12–18. Even assuming arguendo that Factor 5 favors denial, when considering the six Fintiv factors, and taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” (see Fintiv at 6), we find that the circumstances in this proceeding still favor institution. As such, in this proceeding, we maintain that it is unnecessary to decide the RPI issue at the institution stage. For similar reasons discussed above, Patent Owner’s first time argument that “Cisco filed a parallel ex parte reexamination request which would be barred under 35 U.S.C. § 315(e)(1) by a decision in this proceeding” (Req. Reh’g 1–2) is also waived. Again, we could not have misapprehended or overlooked the arguments that were not made previously. IPR2020-01708 Patent 7,756,507 B2 8 IV. CONCLUSION For the foregoing reasons, Patent Owner has not demonstrated that we abused our discretion. Consequently, Patent Owner’s Request for Rehearing is denied. PETITIONER: John M. Baird Patrick D. McPherson Paul Belnap DUANE MORRIS LLP jmbaird@duanemorris.com pdmcpherson@duanemorris.com phbelnap@duanemorris.com Ashraf Fawzy Michelle Callaghan UNIFIED PATENTS LLC afawry@unifiedpatents.com michelle@unifiedpatents.com PATENT OWNER: Michael F. Heim Robert A. Bullwinkel HEIM, PAYNE & CHORUSH, LLP mheim@hpcllp.com abullwinkel@hpcllp.com