`571-272-7822
`
` Paper No. 26
` October 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-019741
`Patent 7,647,633 B2
`____________
`
`Before THOMAS L. GIANNETTI and PATRICK M. BOUCHER,
`Administrative Patent Judges.
`
`
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 Case IPR2016-00480 has been joined with this proceeding.
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`A conference call for this case took place on October 3, 2016. The
`
`parties were represented by their respective counsel: Mr. Eutermoser for
`Petitioner Palo Alto Networks and Mr. Hannah for Patent Owner Finjan.
`Mr. Rosato also was on the call, representing joined Petitioner Blue Coat.
`Administrative Patent Judges Giannetti and Boucher participated. The
`conference was requested by Palo Alto Networks by email communication
`dated September 29, 2016. A court reporter engaged by Palo Alto Networks
`was present on the call. Palo Alto Networks will file the transcript as an
`exhibit. The following matters were discussed:
`1. Deposition of Finjan’s President, Mr. Hartstein
`
`
`Palo Alto Networks seeks leave to take the deposition of Finjan’s
`president, Phil Hartstein. Finjan has submitted a declaration by Mr.
`Hartstein from the reexamination proceeding involving the ’633 patent. Ex.
`2011. The declaration relates to secondary indicia of non-obviousness such
`as commercial success. Palo Alto Networks seeks to cross examine Mr.
`Hartstein on his declaration under 37 C.F.R. § 42.51(b)(1)(ii).
`
`Finjan opposes on the ground that an incomplete copy of Mr.
`Hartstein’s declaration (without exhibits) was submitted by Palo Alto
`Networks. Ex.1088. Finjan therefore filed a copy of the declaration with
`the supporting exhibits. Ex. 2011. Finjan contends that Palo Alto Networks
`does not have the right to take Mr. Hartstein’s deposition in this proceeding
`because Palo Alto Networks originally filed Mr. Hartstein’s declaration.
`Finjan contends the only difference in the submissions is that Finjan
`supplied the supporting documents with the declaration.
`
`The Board observed, and Palo Alto Networks confirmed, that Palo
`Alto Networks submitted the Hartstein declaration for the narrow purpose of
`
`
`
`2
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`establishing the dates on which two licenses were obtained from Finjan. In
`that regard, the dates for those licenses set forth in the declaration do not
`appear to be in dispute. The Board also observed, and Finjan confirmed,
`that the additional documents submitted by Finjan do not relate to this issue.
`
`Accordingly, the Board advised the parties that if Finjan wishes to
`rely on Mr. Hartstein’s declaration, it must produce him for a deposition.
`2. Request to Strike
`
`
`Palo Alto Networks seeks leave to file a motion to strike certain
`arguments from Finjan’s Patent Owner Response (Paper 22). According to
`Palo Alto Networks, the response attributes to Palo Alto Networks
`arguments and statements of fact that should have been attributed to Blue
`Coat. Finjan responded that Palo Alto Networks should address these issues
`in their Reply. The Board agrees and therefore denies the request.
`3. Other Matters
`
`
`The Board reminded the parties that when requesting a conference,
`not to send emails to the Board that are argumentative. For the future, the
`parties are required to provide a short, preferably joint, non-argumentative
`statement of the issues to be discussed, and no more, with their conference
`requests, and to meet and confer before sending such requests.
`
`
`
`It is, therefore,
`ORDERED that if Finjan continues to rely on Mr. Hartstein’s
`
`declaration (Ex. 2011) it must make Mr. Hartstein available for a deposition,
`otherwise Finjan must withdraw Exhibit 2011;
`
`
`
`3
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`FURTHER ORDERED that Palo Alto Network’s request for
`
`authorization to file a motion to strike portions of Finjan’s Patent Owner
`Response is denied;
`
`FURTHER ORDERED that unless otherwise requested, the parties
`shall refrain from sending lengthy, argumentative communications to the
`Board and shall meet and confer before requesting a conference with the
`Board.
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`PETITIONER:
`
`Michael T. Rosato (Lead Counsel)
`Andrew S. Brown (Back-up counsel)
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`PETITIONER in PAN IPR:
`
`Orion Armon (Lead Counsel)
`Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`
`
`5
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