Trials@uspto.gov Paper 56
`571-272-7822 Entered: January 23, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00151
`Patent 8,141,154
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding—Remand Briefing Schedule
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822 Entered: January 23, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00151
`Patent 8,141,154
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding—Remand Briefing Schedule
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`On January 22, 2019, the panel held a conference call with counsel for
`Palo Alto Networks, Inc. (“Petitioner”) and Finjan, Inc. (“Patent Owner”) to
`discuss the procedure and schedule on remand. The parties agreed to a
`schedule that allows Petitioner to initiate the briefing by filing, within three
`weeks of the call, a Petitioner’s Institution Response Brief. Patent Owner
`would have the opportunity to respond to Petitioner’s Brief, within three
`weeks of Petitioner’s filing. In particular, Patent Owner indicated that it
`may wish to raise an argument under 35 U.S.C. § 315(e)(1). We also
`discussed further rounds of reply and sur-reply papers with deadlines in one-
`week intervals. Petitioner also expressed a potential request for a hearing;
`while Patent Owner expressed that a hearing was not necessary given the
`narrow issues on remand. Nevertheless, if the Board sets a date for a
`telephonic hearing, both parties stated they would present argument. Based
`on the discussion with the parties, and the issues presented on remand, we
`hereby set the following schedule (see DUE DATE APPENDIX) and
`instructions.
`
`ORDER
`DUE DATE 1: Petitioner is authorized to file an Institution
`1.
`Response Brief of no more than ten pages to address the Board’s
`discussion in the institution decision of the newly-added claims:
`claims 9 and 12 of the ’154 patent. Petitioner’s Institution Response
`Brief is for identifying matters that Petitioner believes the Board
`misapprehended or overlooked, or otherwise erred in its institution
`decision discussing the newly-added claims. Petitioner should not
`direct its arguments to issues that were decided in the Final Written
`2
`
`
`
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`Decision, as those issues were fully briefed before the Board and in
`the Federal Circuit. Petitioner is not permitted to introduce new
`evidence in its Institution Response Brief. Finally, we note that
`Petitioner retains the burden to prove unpatentability of the previously
`non-instituted claims by a preponderance of the evidence, and that
`burden is unchanged even if Patent Owner waives supplemental
`briefing on the newly-added claims. See 35 U.S.C. § 316(e).
`DUE DATE 2: Patent Owner is authorized, but is not required,
`2.
`to file a Response to Petitioner’s Institution Response Brief, of no
`more than ten pages. The Response should address only arguments
`that are presented in Petitioner’s Brief as to why the institution
`decision was in error or issues that address non-substantive reasons
`why the proceeding should be terminated. Patent Owner shall not
`introduce new evidence without authorization by the Board.
`DUE DATE 3: If Patent Owner determines that it desires to
`3.
`file supporting evidence with its Response or raise substantive
`arguments not responsive to Petitioner’s Brief, Patent Owner shall
`meet and confer with Petitioner and arrange a telephone conference
`with the Board by no later than this date.
`DUE DATE 4: Petitioner is authorized, but not required, to file
`4.
`a Reply, of no more than seven pages. “A reply may only respond to
`arguments raised in the corresponding opposition or patent owner
`response.” 37 C.F.R. § 42.23(b). Petitioner may not submit new
`evidence or argument in its Reply absent express authorization from
`the Board.
`
`
`
`
`3
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`DUE DATE 5: Patent Owner is authorized, but not required to
`5.
`file, a Sur-reply, of no more than seven pages. The sur-reply may
`only respond to arguments raised in the reply. Patent Owner may not
`submit new evidence with the sur-reply.
`DUE DATE 6: Either party may request oral argument, which
`6.
`would proceed as a telephonic hearing.
`DUE DATE 7: Oral argument (if requested).
`7.
`
`
`
`
`
`4
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`DUE DATE APPENDIX
`DUE DATE 1
`Petitioner’s Institution Response Brief
`DUE DATE 2
`Patent Owner’s Response
`DUE DATE 3
`Conference Call Request
`DUE DATE 4
`Petitioner’s Reply
`DUE DATE 5
`Patent Owner’s Sur-reply
`DUE DATE 6
`Request for oral argument
`DUE DATE 6
`Oral argument (if requested)
`
`
`February 13, 2019
`
`March 6, 2019
`
`February 18, 2019
`
`March 13, 2019
`
`March 20, 2019
`
`March 20, 2019
`
`March 26, 2019
`
`
`
`
`5
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`
`PETITIONER:
`Matthew I. Kreeger
`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Nathaniel Hamstra
`Nathanhamstra@quinnemanuel.com
`
`
`PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Kim
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`
`6
`
`
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