Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 50
`Entered: December 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORP. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-018921
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`REVISED HEARING ORDER
`35 U.S.C. § 326(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 50
`Entered: December 2, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORP. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-018921
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`REVISED HEARING ORDER
`35 U.S.C. § 326(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`
`IPR2015-01892
`Patent 8,677,494 B2
`
`
`Petitioner and Patent Owner each have requested a hearing pursuant to
`
`37 C.F.R. § 42.70(a) in the above-captioned case. Paper 38; Paper 40. The
`
`requests for a hearing were granted in a Hearing Order entered on
`
`November 21, 2016, setting a hearing for December 16, 2016, in the
`
`USPTO’s West Coast Regional Office in San Jose, California. Paper 45, 2.
`
`Patent Owner subsequently requested that the hearing be moved to
`
`Alexandria, Virginia. In particular, Patent Owner explained that it is
`
`scheduled to participate in a hearing for Case IPR2015-01979 in Alexandria,
`
`Virginia, on December 15, 2016, the day before the scheduled hearing in the
`
`instant proceeding. Patent Owner represents that it has conferred with
`
`Petitioner and that Petitioner does not oppose its request to change the
`
`location of the hearing. Because this panel includes at least one member
`
`located in Alexandria, Virginia, and because hearing room staff and
`
`resources are available to support the hearing in Alexandria, Virginia, on the
`
`requested date, Patent Owner’s request to change the location of the hearing
`
`is granted.
`
`The hearing will commence at 1:00 PM Eastern Time on
`
`December 16, 2016, on the ninth floor of Madison Building East,
`
`600 Dulany Street, Alexandria, Virginia (Hearing Room D). The hearing
`
`will be open to the public for in-person attendance, to be accommodated on
`
`a first-come, first-served basis. The Board will provide a court reporter for
`
`the hearing, and the reporter’s transcript will constitute the official record of
`
`the hearing.
`
`Petitioner and Patent Owner each will have a total of thirty (30)
`
`minutes to present arguments. Petitioner bears the ultimate burden of proof
`
`that the claims under review are unpatentable. Consequently, Petitioner will
`
`2
`
`
`
`IPR2015-01892
`Patent 8,677,494 B2
`
`open the hearing by presenting its case regarding the challenged claims and
`
`the ground for which the Board instituted review in the proceeding. Patent
`
`Owner then will respond to Petitioner’s arguments. Because Patent Owner
`
`has filed a Motion to Exclude Evidence (Paper 41) and a Motion for
`
`Observations on Cross-Examination (Paper 42), Patent Owner may discuss
`
`those motions during its allotted time. Petitioner may reserve rebuttal time
`
`to respond to Patent Owner’s arguments regarding the challenged claims and
`
`to Patent Owner’s arguments, if any, regarding its motions. If Patent Owner
`
`does not present arguments during its allotted time regarding its motions,
`
`Petitioner may not present arguments during its rebuttal time regarding
`
`Patent Owner’s motions. Patent Owner may reserve rebuttal time only to
`
`respond to Petitioner’s arguments regarding Patent Owner’s motions. If
`
`Petitioner does not present arguments during its rebuttal time regarding
`
`Patent Owner’s motions, Patent Owner also may not present arguments
`
`during its rebuttal time regarding its motions, and any rebuttal time reserved
`
`by Patent Owner shall be surrendered. The fundamental rule governing our
`
`hearings is that the party bearing the burden of persuasion on an issue may
`
`speak last on that issue.
`
`Under 37 C.F.R. § 42.70(b), Petitioner and Patent Owner shall serve
`
`any demonstrative exhibits upon each other at least seven (7) business days
`
`prior to the hearing. The parties also shall provide the demonstrative
`
`exhibits to the Board at least seven (7) business days prior to the hearing
`
`by emailing them to Trials@uspto.gov. Despite the requirement of
`
`37 C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits
`
`in this case without our prior authorization. 37 C.F.R. § 42.5(b). The
`
`parties are directed to St. Jude Medical, Cardiology Division, Inc. v. Board
`
`3
`
`
`
`IPR2015-01892
`Patent 8,677,494 B2
`
`of Regents of the University of Michigan, Case IPR2013-00041, slip op. 2–5
`
`(PTAB Jan. 27, 2014) (Paper 65), and CBS Interactive Inc. v. Helferich
`
`Patent Licensing, LLC, Case IPR2013-00033, slip op. at 2–4 (PTAB
`
`Oct. 23, 2013) (Paper 118), for guidance regarding the appropriate content
`
`of demonstrative exhibits. To aid in the preparation of an accurate
`
`transcript, Petitioner and Patent Owner each shall provide paper copies of its
`
`demonstratives to the court reporter on the day of the hearing. We remind
`
`the parties that demonstratives are not evidence, and that neither the
`
`demonstratives nor such paper copies shall become part of the record of
`
`these proceedings.2
`
`We expect lead counsel for each party to be present in person at the
`
`oral hearing. However, any counsel of record may present the party’s
`
`arguments. If either party anticipates that its lead counsel will not attend the
`
`oral hearing, the parties shall request and make themselves available for a
`
`conference call with us to occur no later than two (2) business days prior to
`
`the oral hearing to discuss the reasons for that lead counsel’s absence. Any
`
`requests regarding special equipment or needs, such as for audio visual
`
`equipment, should be directed to Trials@uspto.gov. Requests for
`
`special equipment will not be honored unless presented in a separate
`
`communication directed to the identified email address not less than
`
`five (5) business days before the hearing.
`
`
`2 After conferring with each other in a good faith effort to resolve any and all
`objections to demonstratives, the parties may request a conference call with
`us to discuss any remaining objections to the other party’s demonstratives no
`less that two (2) business days prior to the hearing.
`
`4
`
`
`
`IPR2015-01892
`Patent 8,677,494 B2
`
`
`Judge Arpin (Denver) and Judge Boudreau (San Jose) will participate
`
`in the hearing remotely. If a demonstrative is not made available to the
`
`Board in the manner indicated above, that demonstrative may not be
`
`available to each of the judges during the hearing and may not be
`
`considered. Further, the parties should assume that images projected, using
`
`audio visual equipment in Alexandria, will not be visible to Judge Arpin in
`
`Denver or to Judge Boudreau in San Jose. Because of limitations on the
`
`audio transmission systems in our hearing rooms, the presenter may speak
`
`only when standing at the hearing room podium. The parties also are
`
`reminded that the presenter must identify clearly and specifically each
`
`demonstrative exhibit (e.g., by slide or screen number) referenced and each
`
`paper or exhibit from the record during the hearing by its number to ensure
`
`the ability of each judge to follow the presenter’s arguments and the clarity
`
`and accuracy of the court reporter’s transcript.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2015-01892
`Patent 8,677,494 B2
`
`For PETITIONER:
`
`
`Joseph J. Richetti
`Daniel A. Crowe
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`dacrowe@bryancave.com
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`6
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