Longhorn HD LLC.

Patent Trials and Appeals Board

Apr 1, 2022

IPR2021-01555 (P.T.A.B. Apr. 1, 2022)

Trials@uspto.gov Paper 7 571-272-7822 Entered: April 1, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NETSCOUT SYSTEMS, INC., Petitioner, v. LONGHORN HD LLC, Patent Owner. IPR2021-01555 Patent 6,954,790 B2 Before KARL D. EASTHOM, GARTH D. BAER, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314, 37 C.F.R. § 42.107(e) I. INTRODUCTION A. Background and Summary On October 6, 2021, NetScout Systems, Inc. (“Petitioner”) filed a Petition requesting inter partes review of claims 1-4 and 7 of U.S. Patent No. 6,954,790 B2 (Ex. 1001, the “’790 patent”). Paper 1 (“Pet.”). On January 25, 2022, Longhorn HD LLC (“Patent Owner”) filed a Preliminary Response (Paper 6 (“Prelim. Resp.”)) and a statutory disclaimer (Ex. 2001). IPR2021-01555 Patent 6,954,790 B2 2 Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we decline to institute an inter partes review of any claims challenged in the ʼ790 patent. B. Real Parties in Interest Petitioner identifies itself as the real party-in-interest. Pet. 65. Patent Owner names itself as the real party-in-interest. Paper 5, 1. C. Related Matters The parties identify, as matters involving or related to the ’790 patent, Longhorn HD LLC v. Juniper Networks, Inc., 2-21-cv-00099 (E.D. Tex.). Pet. 65; Paper 5, 1. Patent Owner also identifies Longhorn HD LLC. v. Fortinet Inc., No. 2:19-cv-00124 (E.D. Tex.); Longhorn HD LLC. v. Lanner Electronics Inc., No. 2:20-cv-00260 (E.D. Tex.); Longhorn HD LLC. v. Mitel Software Technologies Ltd., No. 2:20-cv-00350 (E.D. Tex.); Longhorn HD LLC. v. Palo Alto Networks, Inc., No. 2:20-cv-00259 (E.D. Tex.); Longhorn HD LLC. v. Sophos Limited, No. 2:20-cv-00261 (E.D. Tex.); and Longhorn HD LLC. v. Trend Micro Inc., No. 2:20-cv-00348 (E.D. Tex.) as related matters. Paper 5, 1. D. The ’790 Patent The ’790 Patent is directed to “[a] network-based mobile workgroup system.” Ex. 1001, code (57). More particularly, the ’790 patent “describes a network-based mobile workgroup system that provides secure communication to and within an overlaid workgroup network while applying mobility management for the workgroup members.” Id. at 1:6-11. The ’790 IPR2021-01555 Patent 6,954,790 B2 3 patent has 101 claims, of which claim 1 is the sole independent claim. Id. at 20:60-28:28. E. Prior Art and Asserted Grounds Petitioner asserts that claims 1-4 and 7 are unpatentable on the following ground: Claims) Challenged 35 U.S.C. §1 Reference(s)/Basis 1-4, 7 103 Akhtar2, Schneider3 (Pet. 5). Petitioner also relies on the Declaration of Dr. Wenke Lee (Ex. 1003) in support of its arguments. II. ANALYSIS Patent Owner disputes the grounds advanced against claims 1-4 and 7 in the Petition. Prelim. Resp. 1-4. However, Patent Owner has filed a statutory disclaimer of claims 1-4 and 7 in the ’790 patent. Id. at 1; Ex. 2001. Petitioner has not challenged the disclaimer in any manner. According to our rules, a “patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e) (2019). A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’790 patent’s effective filing date predates the AIA’s amendments to § 103, this decision refers to the pre-AIA version of § 103. 2 US 6,769,000 B1, issued July 27, 2004 (Ex. 1004, “Akhtar”). 3 US 6,408,336, issued June 18, 2002 (Ex. 1005, “Schneider”). IPR2021-01555 Patent 6,954,790 B2 4 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner “must:” (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in 37 C.F.R. § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is “recorded” on the date that the Office receives a disclaimer meeting the requirements of 37 C.F.R. § 1.321(a), and that no further action is required in the Office for a disclaimer to be “recorded”). Here, Patent Owner filed a statutory disclaimer of claims 1-4 and 7 of the ’790 patent. Ex. 2001. Based on our review of Exhibit 2001 and Office public records, we conclude that a disclaimer of claims 1-4 and 7 of the ’790 patent under 35 U.S.C. § 253(a) has been recorded in the Office as of January 17, 2022. Ex. 2001; see also Prelim. Resp. 1 (“[O]n January 17, 2022, Patent Owner filed a statutory disclaimer disclaiming the Challenged Claims pursuant to 37 C.F.R. §§ 1.321(a) and 42.107(c).”). Because all challenged claims 1-4 and 7 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), no inter partes review is instituted. 37 C.F.R. § 42.107(e); General Electric Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (declining to institute inter partes review when all challenged claims were disclaimed under 35 U.S.C. § 253(a)). IPR2021-01555 Patent 6,954,790 B2 5 III. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied and no inter partes review is instituted. For PETITIONER: Eric Buresh Mark Lang ERISE IP, P.A. Eric.buresh@eriseip.com Mark.lang@eriseip.com For PATENT OWNER: Vincent J. Rubino, III Peter Lambrianakos Enrique W. Iturralde FABRICANT LLP vrubino@fabricantllp.com plambrianakos@fabricantllp.com eiturralde@fabricantllp.com