IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CISCO SYSTEMS, INC. Petitioner v. CHANBOND LLC Patent Owner Patent No. 7,941,822 B2 PETITIONER S RESPONSE TO PO S IDENTIFICATION OF ARGUMENTS EXCEEDING THE PROPER SCOPE OF REPLY (RESPONSE TO PAPER 19)
Pursuant to authorization received via email on September 18, 2017, Petitioner Cisco Systems, Inc. responds to Patent Owner s Identification of Arguments Exceeding the Proper Scope of Reply (Paper 19). 1. Page 23, lines 6-11. Because Gorsuch teaches that the input to a protocol converter can be wired, 1 Petitioner s prima facie case does not depend on converting a wired output in Tiedemann to a wireless input of a protocol converter in Gorsuch; rather, Petitioner s Reply Brief simply rebuts PO s arguments regarding physical combinability of specific embodiments in the references by explaining that even these embodiments are combinable under the correct legal standard. 2 2. Page 23, line 12 to page 24, line 9. Petitioner s prima facie case does not depend on modifying Gorsuch s protocol converter to use a wired input because Gorsuch already teaches a wired input as an option; 3 Petitioner s Reply 1 See e.g., EX1011 at 4:9-12 and Fig. 1; EX1002 at 167 and 254-256; Reply Brief at page 23, line 6 to page 24, line 9; EX2002 at 74; Petition at page 35, line 5 to page 38, line 12. 2 See e.g., Reply Brief at page 15, line 5 to page 16, line 15 and page 21, line 8 to page 23, line 11 (rebuttal to PO Response at page 41, line 11 to page 43, line 7). 3 See e.g., Reply Brief at page 23, line 6 to page 24, line 9 (citing EX1011 at 4:9-1
Brief simply rebuts PO s combinability arguments by explaining that Gorsuch and Tiedemann would still be combinable even if it were assumed that Gorsuch requires a wireless input to a protocol converter (as PO contends). 4 3. Page 25, lines 7-10. Petitioner s prima facie case does not depend on modifying Tiedemann s base station to provide non-voice data because the high rate data disclosed by Tiedemann already encompasses non-voice data, 5 and because the challenged claims of the 822 Patent are directed to an intelligent device, not a base station; 6 Petitioner s statement that a POSITA would be able to 12 and Fig. 1; EX1002 at 167 and 254-256; and EX2002 at 74). 4 See e.g., Reply Brief at page 23, line 6 to page 24, line 9 (rebuttal to PO Response at page 41, line 11 to page 43, line 7). 5 See e.g., Reply Brief at page 26, line 2 to page 28, line 11 (citing EX1009 at 1:11-18 and 1:41-47; EX1043 at 66:22-67:2 and 67:16-20; EX1002, 87, 140-149 and 186; EX1017, pages 3 and 93; EX1011 at 4:54-58; EX1010, 1:26-33; EX1026, 10:60-11:2 and Fig. 2). 6 See e.g., EX1001, claims 1-2, 5-6, 19, 20, 23, and 29. 2
configure Tiedemann s base station to transmit non-voice data rebuts PO s statements that Tiedemann s base station only supports voice. 7 4. Page 27, lines 8-12. Petitioner s argument that data, rather than voice, drives the demand for high-speed resources in cellular systems (like Tiedemann s) rebuts PO s contention that Tiedemann is only capable of receiving simple voice-oriented data and is not suitable for computer networking Petitioner s argument is supported by the expert declaration that Petitioner filed with the Petition. 8 5. Page 27, lines 15-21. Tiedemann s incorporation by reference of Gorsuch I and, in turn, Gorsuch II confirms that the high rate data disclosed by Tiedemann encompasses non-voice data and thus rebuts PO s contention that Tiedemann is only capable of receiving simple voice-oriented data and is not suitable for computer networking; 9 Petitioner s prima facie case does not depend 7 See e.g., Reply Brief at page 25, lines 7-10 (rebuttal to PO Response at page 46, lines 1-12). 8 See e.g., Reply Brief at page 27, lines 8-12 (rebuttal to PO Response at page 22, lines 1-2) and EX1002 at 87. 9 See e.g., Reply Brief at page 27, lines 15-21 (rebuttal to PO Response at page 22, lines 1-2). 3
on modifying Tiedemann to provide data because the high rate data disclosed by Tiedemann already encompasses non-voice data. 10 10 See e.g., Reply Brief at page 26, line 2 to page 28, line 11 (citing EX1009 at 1:11-18 and 1:41-47; EX1043 at 66:22-67:2 and 67:16-20; EX1002, 87, 140-149 and 186; EX1017, pages 3 and 93; EX1011 at 4:54-58; EX1010, 1:26-33; EX1026, 10:60-11:2 and Fig. 2). 4
September 26, 2017 BAKER BOTTS L.L.P. ATTN: Wayne O. Stacy 101 California Street, Suite 3600 San Francisco, CA 94111 Tel: (415) 291-6206 Fax: (415) 291-6306 Respectfully submitted, BAKER BOTTS L.L.P. /Wayne O. Stacy/ Wayne Stacy Reg. No. 45,125 Lead Counsel Attorneys for Cisco Systems, Inc. 5
CERTIFICATE OF SERVICE The undersigned hereby certifies that a copy of the foregoing document was served on September 26, 2017 by filing this document through PTAB E2E as well as delivering a copy via electronic mail directed to the attorneys of record for Patent Owner at the following address: Robert A. Whitman (Reg. No. 36,966) - robert.whitman@mishcon.com Timothy J. Rousseau (Reg. No. 59,454) - tim.rousseau@mishcon.com Andrea Pacelli (Reg. No. 61,323) - andrea.pacelli@mishcon.com John F. Petrsoric (Pro Hac Vice) - john.petrsoric@mishcon.com chanbond@mishcon.com MISHCON DE REYA NEW YORK LLP 156 Fifth Avenue, Suite 904 New York, NY 10010 (T): 212-612-3270; (F): 212-612-3297 The parties have agreed to electronic service in this proceeding. By: /Wayne O. Stacy/ Wayne Stacy Reg. No. 45,125 Lead Counsel 6