Silver Peak Systems, Inc.v.Riverbed Technology, Inc.

Patent Trial and Appeal Board

Aug 7, 2014

12916112 (P.T.A.B. Aug. 7, 2014)

Trials@uspto.gov Paper 20
Tel: 571-272-7822 Entered: August 7, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SILVER PEAK SYSTEMS, INC.,
Petitioner,
v.
RIVERBED TECHNOLOGY, INC.,
Patent Owner.

Case IPR2014-00128
Patent 8,271,688 B2

Before JUSTIN T. ARBES, FRANCES L. IPPOLITO, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
IPPOLITO, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2014-00128
Patent 8,271,688 B2
2
I. INTRODUCTION
Petitioner Silver Peak Systems, Inc. filed a Petition to institute an
inter partes review of claims 1–11 of U.S. Patent No. 8,271,688 B2 (“the
’688 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 3 (“Pet.”). Patent
Owner Riverbed Technology, Inc. waived the Preliminary Response to the
Petition. Paper 10. On May 2, 2014, we granted the Petition as to claims 1,
2, 5–9, and 11 of the ’688 patent, and instituted trial on one asserted ground
of unpatentability. Paper 11 (“Dec. on Inst.”).
Subsequent to institution, Patent Owner filed a Motion to Amend,
requesting the cancellation of all the claims involved in this inter partes
review (i.e., claims 1, 2, 5–9, and 11 of the ’688 patent), such that after the
cancellation Patent Owner would have no remaining claim in the trial. Paper
19 (“Mot. to Amend”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This Decision is a
final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Patent Owner’s Motion to Amend, requesting cancellation of claims
1, 2, 5–9, and 11, is granted.
A. Related Proceedings
The ’688 patent is the subject of federal district court proceedings in
Riverbed Technology, Inc. v. Silver Peak Systems, Inc., No. CV-13-2980
(N.D. Cal.). Pet. 1. Commonly-owned and related U.S. Patent No.
8,321,580 also is involved in this district court case and is the subject of an
inter partes review designated IPR2014-00149. Id.
Additionally, commonly-owned and related U.S. Patents
Nos. 7,428,573 (“the ’573 patent”) and 7,849,134 (“the ’134 patent”) are
involved in inter partes reexaminations in which Petitioner is the third-party
IPR2014-00128
Patent 8,271,688 B2
3
requestor.1 Pet. 1. Both of these related patents also are the subject of
federal district court proceedings in Riverbed Technology, Inc. v. Silver Peak
Systems, Inc., C.A. No. 11-484 (D. Del.). Id.
B. The Asserted Ground of Unpatentability
We instituted trial on the asserted ground that claims 1, 2, 5–9, and 11
of the ’688 patent would have been obvious under 35 U.S.C. § 103(a) over
Singh,2 RFC 3135,3 and APA.4
II. MOTION TO AMEND
In its Motion to Amend, Patent Owner seeks to cancel all of the
claims at issue in the instant proceeding, namely claims 1, 2, 5–9, and 11 of
the ’688 patent. Mot. to Amend. In email correspondence to Board
administrative staff dated July 17, 2014 and July 18, 2014, counsel for
Petitioner indicated that Petitioner does not oppose Patent Owner’s Motion
to Amend.5 Patent Owner’s Motion to Amend, cancelling claims 1, 2, 5–9,
and 11, is granted.

1 Control Nos. 95/002,308 and 95/002,310, respectively. The ’688 patent is
a continuation of the ’134 patent, which in turn is a continuation of the ’573
patent. Ex. 1001, col. 1, ll. 8-15. The ’688 patent is not the subject of either
reexamination proceeding.
2 U.S. Patent No. 6,856,651 B2 (issued Feb. 15, 2005) (Ex. 1004).
3 J. Border et al., RFC 3135 – Performance Enhancing Proxies Intended to
Mitigate Link-Related Degradations, The Internet Society, Network
Working Group (June 2001) (Ex. 1005).
4 Admitted Prior Art – Petitioner relies on statements made in the
“Background of the Invention” section of the ’688 patent as “describing
work of others that is prior art to the ’688 patent.” Pet. 10.
5 In the same email correspondence, counsel for Patent Owner and Petitioner
indicated that neither party objects to the Board proceeding to judgment in
the instant proceeding.
IPR2014-00128
Patent 8,271,688 B2
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Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment
against itself at any time during a proceeding. Cancellation of one or more
claims, such that the patent owner has no remaining claim in the trial, is
construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2).
Here, Patent Owner requests cancellation of all claims of the ’688 patent on
which a trial was instituted, such that Patent Owner would have no
remaining claim in the trial. Thus, it is appropriate to enter judgment at this
time.
III. ORDER
For the reasons given, it is:
ORDERED that Patent Owner’s Motion to Amend requesting
cancellation of claims 1, 2, 5–9, and 11 of the ’688 patent is treated as a
request for adverse judgment and is granted;
FURTHER ORDERED that judgment is entered against Patent Owner
with respect to claims 1, 2, 5–9, and 11 of the ’688 patent; and
FURTHER ORDERED that because this is a final Decision, parties to
the proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00128
Patent 8,271,688 B2
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PETITIONER:
Brian M. Hoffman
Jennifer R. Bush
FENWICK & WEST LLP
bhoffman@fenwick.com
jbush@fenwick.com

PATENT OWNER:

David O’Dell
Kyle Howard
John Russell Emerson
HAYNES AND BOONE, LLP
david.odell.ipr@haynesboone.com
kyle.howard.ipr@haynesboone.com
russell.emerson.ipr@haynesboone.com