Juniper Networks, Inc.v.Brixham Solutions Ltd.

Patent Trial and Appeal Board

Jul 27, 2015

11354569 (P.T.A.B. Jul. 27, 2015)

Trials@uspto.gov Paper 21
571-272-7822 Entered: July 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JUNIPER NETWORKS, INC.,
Petitioner,

v.

BRIXHAM SOLUTIONS, LTD.,
Patent Owner.

Case IPR2014-00425
Patent 7,940,652 B1

Before MICHAEL W. KIM, KALYAN K. DESHPANDE, and
PETER P. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
Juniper Networks, Inc. (“Petitioner”) filed a Corrected Petition
requesting an inter partes review of claims 1–5, 8–11, 13–15, and 17 of
U.S. Patent No. 7,940,652 B1 (Ex. 1001, “the ’652 patent”). Paper 6
(“Pet.”). Brixham Solutions (“Patent Owner”) filed a Preliminary Response.
Paper 10 (“Prelim. Resp.”). On August 1, 2014, we instituted an inter partes
review for all challenged claims on certain grounds of unpatentability
alleged in the Petition. Paper 16 (“Dec. to Inst.”).
After institution of trial, Patent Owner filed a Patent Owner Response
(Paper 22, “PO Resp.”), to which Petitioner filed a Reply (Paper 23, “Pet.
Reply”). Patent Owner filed a Motion for Observations on the Cross-
Examination of Tal Lavian, Ph.D. (Paper 24), to which Petitioner responded
(Paper 29), and a Motion to Exclude Evidence (Paper 26), which Petitioner
has opposed (Paper 30). A consolidated oral hearing for IPR2014-00425
and IPR2014-00431, both involving the same Petitioner and the same Patent
Owner, was held on March 31, 2015. The transcript of the consolidated
hearing has been entered into the record. Paper 37 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). In this Final
Written Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R.
§ 42.73, we determine Petitioner has shown by a preponderance of the
evidence that claims 1–5, 8–11, 13–15, and 17 of the ʼ652 patent are
unpatentable. Patent Owner’s Motion to Exclude is denied.
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A. Related Proceedings
The ’652 patent is involved in one pending case, Brixham Solutions
Ltd. v. Juniper Networks, Inc., No. 3:13-cv-00616 (N.D. Cal.). Pet. 1; Paper
8, 1.
B. The ’652 Patent
The ’652 patent is titled “Pseudowire Protection Using a Standby
Pseudowire.” The subject matter of the ’652 patent is protection of network
traffic using pseudowires and, in particular, configuration and use of a
standby pseudowire that is assigned a priority, which determines whether
network traffic on the standby pseudowire is preempted. Ex. 1001, Abstract;
7:5–41.
Figure 4 of the ’652 patent is reproduced below.

Figure 4 depicts a data structure diagram of pseudowire protection
configuration parameter 400. Id. at 6:4–7. Parameter 400 contains four
fields, including a priority field. The priority field has subfields for a
holding priority, which is a relative priority of a current active pseudowire,
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and for a setup priority, which indicates a relative priority of a pseudowire
during a setup process. Id. at 6:57–7:5.
Figure 5 of the ’652 patent is reproduced below.

Figure 5 is a flowchart depicting how priorities are used during a
switchover process. When a network failure is detected, traffic is switched
from an active primary pseudowire to a standby pseudowire only if the
active pseudowire’s setup priority is greater than the holding priority of the
standby pseudowire. Id. at 7:19–25.
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Figure 6 of the ’652 patent is reproduced below.

Figure 6 illustrates preemption during a switchover operation.
Pseudowires 600 and 602 are active, primary pseudowires carrying network
traffic, and pseudowire 604 is a standby pseudowire. Ex. 1001, 7:29–30. If
a link between two nodes on which pseudowires 600 and 602 operate
experiences failure, the nodes will initiate a switchover using pseudowire
604. Here, pseudowire 602 has a higher setup priority value than
pseudowire 600, and thus is given preference during the switchover. Id. at
7:33–38. Pseudowire 602’s setup priority is then compared to a (lower)
holding priority for standby pseudowire 604, resulting in data on pseudowire
602 preempting data on standby pseudowire 604. Id. at 7:38–41.
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C. Illustrative Claim
Claims 1–5, 8–11, 13–15, and 17 are the subject of the Petition, and
claims 1, 9, and 14 are independent claims. Independent claim 1 is
illustrative of the claimed subject matter and is reproduced as follows:
1. A method of providing protection to network traffic, comprising:

sending a Pseudowire protection configuration parameter
for configuring a standby Pseudowire between a source node
and a destination node, the Pseudowire protection configuration
parameter indicating a protection property associated with the
standby Pseudowire, the protection property including a priority
for the standby Pseudowire;

receiving a Pseudowire configuration acknowledgement
indicating whether the Pseudowire protection configuration
parameter has been accepted by the destination node;

accepting the Pseudowire protection configuration
parameter by the destination node;

using the standby Pseudowire that is configured based at
least in part on the Pseudowire protection configuration
parameter; and

determining whether to preempt existing traffic on the
standby Pseudowire, wherein the determination is based, at
least in part, on the priority for the standby Pseudowire.

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D. Prior Art Supporting the Instituted Challenges
The following four prior art references were asserted in the instituted
grounds:
Reference
Abbreviation
Title Ex. No.
Hofmeister US 2004/0156313 A1 Ex. 1004
RFC 3386 Request for Comments: 3386,
November 2002
Ex. 1005
Owens U.S. Patent No. 7,804,767 Ex. 1006
Halabi Sam Halabi, Metro Ethernet
(Cisco Press 2003)
Ex. 1008
E. The Instituted Challenges of Unpatentability
The following table summarizes the challenges to patentability on
which we instituted inter partes review.
Reference(s) Basis Claims Challenged
Hofmeister, RFC
3386, and Owens
§ 103 1–5, 8–11, 13–15, and 17
Halabi, RFC 3386,
and Owens
§ 103 1–5, 8–11, 13–15, and 17
II. ANALYSIS
A. Claim Construction
In an inter partes review, the Board interprets claim terms according
to their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
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Techs., LLC, 2015 WL 4097949, at *7, *8 (Fed. Cir. July 8, 2015)
(“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
PTO regulation.”). There is a “heavy presumption” that a claim term carries
its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002). However, a “claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer
and clearly set forth a definition of the disputed claim term in either the
specification or prosecution history.” Id.
In the Decision to Institute, we construed “standby Pseudowire” as
“an emulation of a native service over a network that is used in the event of
a network failure.” Dec. to Inst. 9. Subsequent to institution, neither party
challenges this construction, and upon further review, we see no need to
alter our previous construction. Accordingly, we maintain the construction
of “standby Pseudowire” from the Decision to Institute.
In the Decision to Institute, we also construed “determining whether
to preempt existing traffic on the standby Pseudowire” as “determining
during the event of a network failure whether to drop network traffic that is
carried by the standby pseudowire.” Dec. to Inst. 9. Patent Owner states
that the limitation of claim 1 including this term (“determining whether to
preempt existing traffic on the standby Pseudowire, wherein the
determination is based, at least in part, on the priority for the standby
Pseudowire”) should be construed as “determining in the event of a network
failure whether to drop network traffic that is carried by the standby
pseudowire, based on priority of the standby pseudowire.” PO Resp. 2. We
do not adopt Patent Owner’s suggestion, as it replaces the word “during”
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with “in,” and omits the recited phrase “at least in part.” We disagree with
Patent Owner’s replacement of “during” with “in,” as the specification
repeatedly uses “during” in describing the preemption process for a standby
pseudowire as depicted in figures 5 and 6. See, e.g., Ex. 1001, 7:5, 7:7, 7:27.
Patent Owner does not provide any distinction between the meaning of the
terms “during” and “in.” Thus, we construe this limitation in light of the
Specification, which describes that the determination is done “during” the
event.
We also disagree with Patent Owner’s omission of “at least in part”
because the omission improperly narrows the term, as the omitted phrase is
expressly recited in the claim itself. Accordingly, we see no reason to alter
our previous construction of “determining whether to preempt existing
traffic on the standby Pseudowire” as “determining during the event of a
network failure whether to drop network traffic that is carried by the standby
pseudowire.”
B. Level of Ordinary Skill in the Art
Petitioner proposes that the level of ordinary skill in the art is “a
Bachelor’s in computer science, electrical engineering, or the equivalent;
and at least 7 years of professional experience in network communications
and Internet protocols, or an advanced degree and 4 years’ experience.” Pet.
14 (citing Ex. 1003 ¶ 46). Patent Owner does not propose a level of
ordinary skill in the art. We determine that an express definition of the level
of ordinary skill is not required.
The level of ordinary skill in the art can be reflected in the cited prior
art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
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2001) (“[T]he absence of specific findings on the level of skill in the art does
not give rise to reversible error where the prior art itself reflects an
appropriate level and a need for testimony is not shown.”) (internal
quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Here, Patent Owner has not proposed a level of ordinary skill, and Petitioner
has not provided a sufficient explanation as to how its specific proposal
regarding the level of ordinary skill (for example, the importance of the
inclusion of “at least”) affects the analysis in this case. Therefore, we find
the level of ordinary skill in the art to be reflected in the cited references and
we determine that no express statement of the level of ordinary skill in the
art is required.
C. Claims 1–5, 8–11, 13–15, and 17 – Obviousness over Hofmeister,
RFC 3386, and Owens
Petitioner contends claims 1–5, 8–11, 13–15, and 17 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Hofmeister, RFC 3386, and
Owens. Pet. 21–29. We have reviewed the Petition, the Patent Owner
Response, and Petitioner’s Reply, as well as the relevant evidence discussed
in each of those papers, and are persuaded, by a preponderance of the
evidence, that claims 1–5, 8–11, 13–15, and 17 are obvious over Hofmeister,
RFC 3386, and Owens.
Hofmeister (Exhibit 1004)
Hofmeister discloses a technique for creating and managing
pseudowires. Ex. 1004, Abstract. Hofmeister states that the “general idea”
of preemption “is to rank the importance, or priority, of a flow relative to the
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others competing for admission into a network.” Id. ¶ 405. Hofmeister
further discloses that:
Priority considerations are utilized when a set of flows
attempting admission through a node or a link that cause
overbooking of resources. CAC resolves the overbooking or
oversubscription problem by rejecting one or more of the flows
competing for admission. Network nodes also use priorities to
preempt some previously admitted low-priority flows in order
to make room for a newer, higher-priority flow.
Id. A preemption algorithm of Hofmeister applies at ingress and egress
interfaces of a pseudowire, and creation of a higher priority pseudowire
results in deletion of a lower priority pseudowire. Id. ¶ 415.
RFC 3386 (Exhibit 1005)
RFC 3386 discloses network protection techniques used in various
network systems. Ex. 1005 § 1. RFC 3386 identifies pseudowires as a
network service provider system. Id. § 4. RFC 3386 discloses a working
entity and a protection or backup entity. The protection/backup entity’s
traffic is preempted by protected traffic normally carried on the working
entity, when the working entity fails. Id. §§ 2.2.2, 2.2.3.
Owens (Exhibit 1006)
Owens discloses network protection techniques in a multi-protocol
label switching (“MPLS”) network, where
a working path carries data from a starting point or node to a
destination point or node via a working path. . . . MPLS system
reliability is enhanced by way of a protection path, over which
data can be carried from the starting point to the destination
point upon a detected failure along the working path.

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Ex. 1006, Abstract. Owens further states that “it is imperative that MPLS be
able to provide protection and restoration of traffic. In fact, a protection
priority could be used as a differentiating mechanism for premium services
that require high reliability.” Id. at 1:33–36. For each working path, there is
a pre-established protection path where “lower priority traffic” can be
displaced by a failure on the working path. Id. at 5:19–29. In addition, low
priority traffic on the “protection” (standby) path is “discarded to free
resources for the working traffic.” Pet. 25–26 (citing Ex. 1006, 7:1–6).
Analysis
Petitioner contends claims 1–5, 8–11, 13–15, and 17 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Hofmeister, RFC 3386, and
Owens. In support of this asserted ground of unpatentability, Petitioner
identifies where the elements of each claim are taught by Hofmeister, RFC
3386, and Owens, and provides a rationale for combining the teachings. Pet.
21–29 (citing Ex. 1003 ¶¶ 245–46, 248–51, 254–71, 275–79, 280–83, 285–
88).
1

Patent Owner argues that “Hofmeister has nothing to do with
protecting traffic in the event of network failure at all.” PO Resp. 3. We
disagree, as Petitioner states correctly that Hofmeister describes an
advantage of its disclosed method as having quicker response time to

1
Petitioner has cited to the Declaration of Tal Lavian, Ph.D. (Ex. 1003) and
the Declaration of Tal Lavian, Ph.D. in Support of Juniper’s Reply (Ex.
1027). Ex. 1003 is 185 pages long, with 777 paragraphs, and Ex. 1027 is 35
pages long, with 109 paragraphs, and a 49 page appendix. Pursuant to 37
C.F.R. § 42.6(a)(3), we have not considered any of Petitioner’s arguments
made solely on the basis of incorporation by reference from Exs. 1003 and
1027.
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network failures. Pet. Reply 1–3; Ex. 1004 ¶¶ 134, 137. Patent Owner
further argues that RFC 3386’s disclosure of assigning preemptive priorities
to working entities “is antithetical to assigning priorities to standby
Pseudowires.” PO Resp. 5. We disagree, as Petitioner notes correctly that
RFC 3386 “explicitly teaches that priorities should be assigned to both
working and protection connections.” Pet. Reply 3; Ex. 1005, § 3.2.1.
Patent Owner further contends there would have been no motivation
to combine Hofmeister with RFC 3386 and Owens. PO Resp. 5–6. Patent
Owner’s support for its arguments is the Declaration of Dr. George N.
Rouskas, to which we accord little weight because his testimony is
conclusory and unsupported by evidentiary explanations. See 37 C.F.R.
§ 42.65(a). At the oral hearing, Patent Owner’s counsel stated that “we
heard [Petitioner’s] presentation about all this prior art out there that talks
about preempting network traffic, and it’s legion. . . . And yes, it’s true,
again, as with the other references, this is a concept that people would have
known reading all of these references, prioritizing, working traffic under
normal operating conditions.” Tr. 18:1–2, 28:11–14. Thus, Patent Owner
concedes the existence of references disclosing the recited limitations in the
challenged claims, but nevertheless argues that there is not any motivation to
combine such references.
In reply, Petitioner cites KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398
(2007), noting, “KSR set forth a number of ‘Exemplary Rationales’ that
support an obviousness finding . . . . Many of these rationales apply here
and support the obviousness of the claims.” Pet. Reply 6. Petitioner
describes in detail why it would have been obvious to combine Hofmeister
with RFC 3386 and Owens, under several rationales set forth in KSR:
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combining prior art elements according to known methods to yield
predictable results; using known techniques to improve similar methods in
the same way; applying known techniques to known methods ready for
improvement to yield predictable results; and using teachings, suggestions,
or motivations in the prior art to modify or combine references to arrive at
the claimed invention. Pet. Reply 6–10. As Petitioner contends,
it would have been a natural fit and a predictable step for a
[person having ordinary skill in the art] to use the
Setup/Holding priority described in Hofmeister to make
preemption decisions during network failure . . . to take
advantage of well-known protection mechanisms, such as those
in RFC 3386/Owens.

Pet. Reply 10–11. We determine that Petitioner has provided adequately
articulated reasoning for combining Hofmeister, RFC 3386, and Owens,
supported by rational underpinnings, that are reasonable. See KSR, 550 U.S.
at 418. Thus, we conclude that Petitioner has proved by a preponderance of
the evidence that claims 1–5, 8–11, 13–15, and 17 are obvious in view of
Hofmeister, RFC 3386, and Owens.
D. Claims 1–5, 8–11, 13–15, and 17: Obviousness over Halabi,
RFC 3386, and Owens
Petitioner contends claims 1–5, 8–11, 13–15, and 17 are unpatentable
under 35 U.S.C. §103 (a) as obvious over Halabi, RFC 3386, and Owens.
Pet. 51–56. We have reviewed the Petition, the Patent Owner Response, and
Petitioner’s Reply, as well as the relevant evidence discussed in each of
those papers, and are persuaded, by a preponderance of the evidence, that
claims 1–5, 8–11, 13–15, and 17 are obvious over Halabi, RFC 3386, and
Owens.
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Halabi (Exhibit 1008)
Halabi describes traffic engineering techniques in hybrid networks,
which may use pseudowires. Deploying Ethernet in a metropolitan area
network requires reliability and scalability of IP and MPLS control planes.
Ex. 1008, xv. Halabi describes the emulation of Layer 2 Ethernet services
over MPLS networks, and the emulation of Layer 2 VPN over an IP
network. Id. at 73–118 (discussing hybrid L2 and L3 IP/MPLS Networks
that allow Ethernet to be emulated over MPLS networks using Label-
Switched Path (LSP) tunnels). An Ethernet pseudowire emulates a single
Ethernet link between two endpoints. Ex. 1008, 83–85. Figure 4-22 of
Halabi is reproduced below.

Figure 4-22 depicts a network with an active primary pseudowire that
is passing traffic, and an inactive secondary pseudowire. If the active
primary pseudowire fails, MTU-s device “immediately switches to the
secondary PW.” Ex. 1008, 102. Halabi also discloses that priority and
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preemption attributes are among the basic attributes of network traffic trunks
that are significant for traffic engineering. Id. at 127. Specifically, the
priority attribute “defines the relative importance of traffic trunks,” and the
preemption attribute “determines whether a traffic trunk can preempt another
traffic trunk from a given path. Preemption can be used to ensure that high-
priority traffic can always be routed in favor of lower-priority traffic that can
be preempted.” Id. at 128.
Analysis
Petitioner contends claims 1–5, 8–11, 13–15, and 17 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Halabi, RFC 3386, and Owens. In
support of this asserted ground of unpatentability, In support of this asserted
ground of unpatentability, Petitioner identifies where the elements of each
claim are taught by Hofmeister, RFC 3386, and Owens, and provides a
rationale for combining the teachings. Pet. 51–55. Patent Owner argues that
Halabi fails to “suggest a combination between it and references addressing
network failure.” PO Response 6–7. We disagree. The Petition states:
Halabi notes that, to deploy Ethernet in the Metro, “hybrid
Layer 2 (L2) and Layer 3 (L3) IP and MPLS networks have
emerged as a solution that marries Ethernet’s simplicity and
cost effectiveness with the scale of IP and MPLS networks.”
[Halabi at xv.] Halabi first discusses how to create hybrid
networks, which employ PWs (see Ch. 4), and then discusses
how various traffic engineering, fast reroute, and GMPLS
protocols can be used to increase the control, reliability and
protection of such hybrid networks (see Chs. 5-8). Ex. 1003
(Lavian) ¶ 455.

Pet. 40–41. In its Reply, Petitioner reiterates that:
“[PW networks] have emerged as a solution that marries
Ethernet’s simplicity and cost effectiveness” with the
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“reliability and scalability” that “exist only in IP and [MPLS]
control planes.” Halabi at xv. Thus, Halabi itself expressly
suggests using MPLS protection methods with PWs, thus
providing any necessary motivation to combine.
Pet. Reply 13; see Pet. 50–53. Patent Owner further argues that Halabi’s
disclosure of preemption and priorities applies only to LSPs and not MPLS
networks. PO Resp. 6–7. We disagree. Petitioner cites to Halabi’s
description of using pseudowires to take advantage of the traffic engineering
techniques available in MPLS networks (including those that pertain to
reliability/protection). Pet. Reply 14; Ex. 1008, xv. Petitioner also notes
that the ’652 patent acknowledges that MPLS protection techniques apply to
pseudowires. Pet. Reply 14; Pet. 50–51; Ex. 1001, 1:49–64.
Patent Owner also argues “there would have been no motivation to
combine” Halabi with RFC 3386 and Owens. PO Resp. 7. At oral hearing,
Patent Owner’s counsel stated, “just to reiterate, all the references in this
case talk about prioritization on the one hand and network failure and
automatic switchover on the other hand.” Tr. 37:5–7. We disagree.
Petitioner explains several rationales for combining such references, namely,
modifying Halabi in view of RFC 3386 and Owens:
In sum, applying RFC 3386/Owens to Halabi would involve:
(1) mere combination of prior art elements according to known
methods of network design to yield predictable results of a
reliable and efficient data network (Rationale A) ([Ex. 1027] ¶¶
92-94, App. A at 42), (2) use of known techniques of assigning
a Setup/Holding Priority to make preemption decisions during
network failure in MPLS to improve similar data networks—
PWs—in the same way (Rationale C) ([Ex. 1027] ¶¶ 95-98,
App. A at 44), (3) applying known protection/preemption
techniques to a known PW network ready for improvement to
yield the predictable result of greater reliability/efficiency
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(Rationale D) ([Ex. 1027] ¶¶ 99-103, App. A at 46), and (4)
teachings and motivations in the prior art regarding data
protection and Setup/Holding Priority that would have led a
PHOSITA to modify Halabi and combine it with prior art to
arrive at the ’652 patent. (Rationale G) ([Ex. 1027] ¶¶ 104-11,
App. A at 46).

Pet. Reply 14–15. See Pet. 50 (citing KSR). We determine that Petitioner
has provided adequate articulated reasoning for combining Halabi, RFC
3386, and Owens, supported by rational underpinnings, that are reasonable.
See KSR, 550 U.S. at 418. We conclude that Petitioner has proved by a
preponderance of the evidence that claims 1–5, 8–11, 13–15, and 17 are
obvious over Halabi, RFC 3386, and Owens.
E. Motion to Exclude
Patent Owner filed a Motion to Exclude Evidence (Paper 26, “Mot. to
Excl.”), to which Petitioner responded (“Opp. to Mot. to Excl.,” Paper 30)
and on which Patent Owner filed a Reply (Paper 31, “Reply on Mot. to
Excl.”). Patent Owner’s Motion seeks to exclude the two declarations
submitted by Petitioner’s expert, Dr. Lavian (Ex. 1003 and 1027), not on any
evidentiary basis under the Federal Rules of Evidence (“FRE”), but rather,
due to alleged “general evasiveness of the witness and interference” by
Petitioner’s counsel at the deposition of Dr. Lavian, which occurred on
January 22, 2015. Mot. to Excl. 1.
The moving party has the burden of proof to establish that it is entitled
to the requested relief. 37 C.F.R. § 42.20(c), 42.62(a). Petitioner’s
Opposition asserts that:
Here, BSL’s motion does not even purport to be based on any
Federal Rule of Evidence (or any other rule of admissibility, for
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that matter). This is not surprising, as the issues raised by BSL
are not evidentiary issues. Rather, they relate to purported
conduct at a deposition. BSL’s motion thus does not fall within
the Board’s authorization in the Scheduling Order for motions
to exclude evidence under 37 C.F.R. § 42.64. See Paper 17 at
3. Instead, BSL was required to seek separate authorization
from the Board to file a motion if it had an issue with the
conduct of the deposition. See 37 C.F.R. § 42.20(b) (“A
motion will not be entered without Board authorization.”); see
also Paper 19 (Order on Conduct of the Proceedings) at 2 (“The
parties were reminded that if they seek authorization to file a
motion not contemplated per the Scheduling Order, the party
requesting such authorization must arrange a conference call
with opposing counsel and the Board.”). Because BSL failed to
even attempt to comply with the applicable rules for its motion,
it should be dismissed.

Opp. to Mot. to Excl. 6–7. While we agree with Petitioner that Patent
Owner’s motion is procedurally defective for the reasons argued by
Petitioner, for purposes of this decision we also review Patent Owner’s
substantive arguments, which we also determine to be lacking in merit.
Patent Owner argues that Ex. 1003 and Ex. 1027 should be excluded
due to the “general evasiveness” of Dr. Lavian and “interference of
counsel.” Mot. to Exclude 1. Petitioner contends that Dr. Lavian’s
responses were not evasive but were proper, and Petitioner’s objections to
the “content” and “form” also were proper under 37 C.F.R. § 42.53(f)(8).
Opp. 8–13. Patent Owner responds that it “seeks to exclude the entirety of
Dr. Lavian’s declaration . . . because of the behavior of the witness and his
counsel at the deposition.” PO Reply 1.
We agree with Petitioner that Dr. Lavian’s responses were not
“evasive.” For example, Patent Owner’s argument directs us to a specific
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portion of the deposition where Dr. Lavian was asked, “did you add that
element, 584b?” Mot. to Exclude 2 (quoting Ex. 2003, 34:18). We agree
with Petitioner that this “only concrete example of this supposed
‘evasiveness’ identified” by Patent Owner concerns not the ’652 patent
being challenged herein, but rather, the patent at issue in IPR2014-00431.
Opp. 11. Although Patent Owner states that “this type of evasiveness
pervaded the entirety of the deposition,” (Mot. to Excl. 3), based on our
review of Ex. 2003, we are persuaded that Dr. Lavian responded to Patent
Owner’s questions to the best of his ability and was not “evasive.”
We further agree with Petitioner that its deposition objections were
proper. See 37 C.F.R. § 42.53(f)(8)(“Any objection to the content, form, or
manner of taking the deposition, including the qualifications of the officer, is
waived unless made on the record during the deposition and preserved in a
timely filed motion to exclude.”). Based on our review of Ex. 2003,
Petitioner’s objections were directed to the content, form, or manner of
taking the deposition, and, therefore, were proper under 37 C.F.R.
§ 42.53(f)(8). We are also not persuaded that the alleged behavior of
opposing counsel, alone or “in combination with the other occurrences at the
deposition” (Mot. to Exclude 4), is a sufficient basis to exclude Ex. 1003 and
Ex. 1027. Accordingly, we deny Patent Owner’s Motion. As noted in our
Decision to Institute, however, we reiterate that we have not considered any
of Petitioner’s arguments made solely by virtue of incorporation by
reference from either of the Lavian declarations. See supra n.1; Dec. to
Inst., 11–12 n.1.
Case IPR2014-00425
Patent 7,940,652 B1

21

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence the
unpatentability of claims 1–5, 8–11, 13–15, and 17 as obvious over
Hofmeister, RFC 3386, and Owens, and as obvious over Halabi, RFC 3386,
and Owens.
IV. ORDER
Accordingly, it is
ORDERED that, based on a preponderance of the evidence, claims 1–
5, 8–11, 13–15, and 17 of the ’652 patent are unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied.
This is a Final Written Decision. Parties to the proceeding seeking
judicial review of this decision must comply with the notice and service
requirements of 37 C.F.R. § 90.2.

Case IPR2014-00425
Patent 7,940,652 B1

22

For PETITIONER:

Nima Hefazi
Rebecca L. Carson
Jonathan Kagan
IRELL & MANELLA LLP
nhefazi@irell.com
rcarson@irell.com
jkagan@irell.com

For PATENT OWNER:

Randy A. Noranbrock
Sean A. Passino
LOWE HAUPTMAN & HAM LLP
IPRGroup@ipfirm.com

George C. Summerfield
STADHEIM AND GREAR LTD.
summerfield@stadheimgrear.com