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

Patent Trials and Appeals Board

Aug 7, 2014

13459065 - (D) (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
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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
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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