`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-02001
`Case IPR2016-001571
`U.S. Patent No. 8,255,408
`
`__________________________________________________________
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`
`1 IPR2016-00157 has been consolidated with IPR2015-02001. Cases IPR2016-
`
`00955 and IPR2016-00956 have been consolidated and joined with this
`
`consolidated proceeding.
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,255,408)
`
`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s March 29, 2016,
`
`Scheduling Order (Paper 8), Finjan, Inc., (“Patent Owner”) requests
`
`an opportunity to present oral argument regarding the patentability of all claims
`
`that the Board instituted for U.S. Patent No. 8,255,408 (“the ’408 Patent”). The
`
`oral argument is scheduled to be held on January 5, 2017. Paper 8 at 6. Without
`
`waiving consideration of any issue not identified below, Patent Owner requests one
`
`hour to address the following issues:
`
`1. Whether Petitioner has met its burden of proving that Instituted
`
`Claims 1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35 are unpatentable
`
`under 35 U.S.C. § 103(a) over Chandnani and Kolawa;
`
`2. Whether Petitioner has met its burden of proving that Instituted
`
`Claims 1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35 are unpatentable
`
`under 35 U.S.C. § 103(a) over Chandnani, Kolawa, and Walls;
`
`3. Whether Petitioner has met its burden of proving that Instituted
`
`Claims 6, 7, 20, and 21 are unpatentable under 35 U.S.C. § 103(a)
`
`over Chandnani, Kolawa, and Huang;
`
`4. Whether Petitioner has met its burden of proving that Instituted
`
`Claims 6, 7, 20, and 21 are unpatentable under 35 U.S.C. § 103(a)
`
`over Chandnani, Kolawa, Walls, and Huang;
`
`5.
`
`Secondary considerations of non-obviousness;
`
`1
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,255,408)
`
`6.
`
`7.
`
`8.
`
`9.
`
`Patent Owner’s and Petitioner’s Motion to Exclude Evidence, if any;
`
`Rebuttal of any arguments made by Petitioner;
`
`Any additional issues on which the Board seeks clarification; and
`
`Response to any issues Petitioner raises in its Request for Oral
`
`Argument.
`
`Patent Owner respectfully reserves the right to supplement and/or amend the
`
`foregoing statement of issues to the extent the Rules permit.
`
`At oral argument, Patent Owner requests the use of audio/visual equipment
`
`to display demonstrative exhibits, including the use of a projector and screen. In
`
`addition, Patent Owner’s experts, Drs. Nenad Medvidovic and Harry Bims, may
`
`attend the hearing to answer any questions the Board may have.
`
`2
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,255,408)
`
`Dated: November 22, 2016
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`
`(Case Nos. IPR2015-02001/
`
`IPR2016-00157)
`
`
`
`
`
`3
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2015-02001, IPR2016-00157 (U.S. Patent No. 8,255,408)
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(b), the undersigned certifies that
`
`on November 22, 2016, a complete and entire copy of Patent Owner’s Request for
`
`Oral Argument was served by filing this document through the PTAB E2E system
`
`as well as delivering via electronic mail upon the following counsel of record for
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`4
`
`Petitioner:
`
`Brian Eutermoser
`Orion Armon
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`beutermoser@cooley.com
`oarmon@cooley.com
`zpatdcdocketing@cooley.com
`zPaloAltoNetworksIPR@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
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