SILVER PEAK SYSTEMS, INC.v.Riverbed Technology, Inc.

Patent Trial and Appeal BoardAug 7, 2014

13459065 (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 IPR2014-00149 Patent 8,321,580 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 IPR2014-00149 Patent 8,321,580 B2 2 I. INTRODUCTION Petitioner Silver Peak Systems, Inc. filed a Petition to institute an inter partes review of claims 1–24 of U.S. Patent No. 8,321,580 B2 (“the ’580 patent”) pursuant to 35 U.S.C. §§ 311-319. Paper 1 (“Pet.”). Patent Owner Riverbed Technology, Inc. filed a Preliminary Response to the Petition. Paper 6. On May 2, 2014, we granted the Petition as to claims 1– 14 of the ’580 patent, and instituted trial on two asserted grounds of unpatentability. Paper 7 (“Dec. on Inst.”). Subsequent to institution, Petitioner filed a Motion for Authorization to Compel Testimony from the Tolly Group Concerning the Authenticity and Publication Date of Exhibit SP-1009 (“Motion for Authorization to Compel Testimony”). Paper 17. Thereafter, Patent Owner filed a Motion to Amend, requesting the cancellation of all of the claims involved in this inter partes review, i.e., claims 1–14 of the ’580 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 1–14, is granted. Further, Petitioner’s pending Motion for Authorization to Compel Testimony is dismissed as moot. A. Related Proceedings The ’580 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. 8,271,688 also is involved in this case and is the subject of an inter partes review designated IPR2014-00128. Id. IPR2014-00149 Patent 8,321,580 B2 3 Additionally, commonly-owned and related U.S. Patent 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 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 Grounds of Unpatentability We instituted trial on the following asserted grounds of unpatentability. 1 Control Nos. 95/002,308 and 95/002,310, respectively. The ’580 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 ’580 patent is not the subject of either reexamination proceeding. 2 U.S. Patent Publication No. 2003/0004998 A1, published January 2, 2003 (Ex. 1011). 3 Admitted Prior Art – Petitioner relies on statements made in the “Background of the Invention” section of the ’580 patent as “describing work of others that is prior art to the ’580 patent.” Pet. 12. 4 U.S. Patent No. 6,856,651 B2 (issued Feb. 15, 2005) (Ex. 1004). 5 Peribit Networks, Inc. SR-50 Sequence Reducer Performance Evaluation, THE TOLLY GROUP (Nov. 19, 2001) (Ex. 1009). References Basis Claims Challenged Datta2 and APA3 § 103 1–5, 7–12, and 14 Datta, APA, Singh,4 and Tolly5 § 103 6 and 13 IPR2014-00149 Patent 8,321,580 B2 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 1–14. 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.6 Patent Owner’s Motion to Amend, cancelling claims 1–14, is granted. 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 ’580 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. MOTION FOR AUTHORIZATION TO COMPEL TESTIMONY Petitioner’s Motion for Authorization to Compel Testimony is dismissed as moot because judgment is being entered against Patent Owner on the challenged claims. 6 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. IPR2014-00149 Patent 8,321,580 B2 5 IV. ORDER For the reasons given, it is: ORDERED that Patent Owner’s Motion to Amend requesting cancellation of claims 1–14 of the ’580 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 1–14 of the ’580 patent; FURTHER ORDERED that Petitioner’s Motion for Authorization to Compel Testimony is dismissed as moot; 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. 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

SILVER PEAK SYSTEMS, INC. v. Riverbed Technology, Inc.