`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`SYMANTEC CORP.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent 8,141,154
`
`__________________________________________________________
`
`JOINT MOTION TO TERMINATE AND JOINT NOTICE OF
`AGREEMENT PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`
`Joint Motion to Terminate and Notice of Agreement
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`RELIEF REQUESTED
`
`
`I.
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and as authorized by the
`
`Board in an email dated January 17, 2019, Petitioner Symantec Corp., and Patent
`
`Owner, Finjan, Inc., provide notice that they have reached an agreement and
`
`jointly request that Case No. IPR2016-00151, an inter partes review of U.S. Patent
`
`No. 8,141,154, be terminated with respect to Symantec.
`
` REASONS FOR THE RELIEF REQUESTED
`II.
`Symantec and Finjan have reached an agreement regarding their disputes
`
`involving the ‘154 patent. Accordingly, Symantec and Finjan jointly request that
`
`the present inter partes review be terminated as to Symantec, pursuant to 35 U.S.C.
`
`§ 317(a).
`
` RELATED LITIGATION AND PTAB PROCEEDINGS
`III.
`Symantec and Finjan have settled their disputes involving the ’154 patent in
`
`the related district court litigation.
`
`The ’154 patent is currently being asserted in the following pending
`
`litigations:
`
`Finjan, Inc. v. Juniper Networks, Inc., Case No. 3:17-cv-05659-WHA (N.D.
`
`Cal.);
`
`Finjan, Inc. v. Qualys Inc, No. 4:18-cv-07229 (N.D. Cal.);
`
`Finjan, Inc. v. Rapid7, Inc., et al., No. 1:18-cv-01519 (D. Del.);
`
`- 1 -
`
`
`
`Joint Motion to Terminate and Notice of Agreement
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Finjan, Inc. v. Check Point Software Technologies, Inc., et al., No. 18-cv-
`
`02621 (N.D. Cal.);
`
`Finjan, Inc. v. Bitdefender Inc., et al., No. 17-cv-04790 (N.D. Cal.);
`
`Finjan, Inc. v. SonicWall, Inc., No. 17-cv-04467 (N.D. Cal.);
`
`Finjan, Inc. v. Cisco Systems, Inc., No. 17-cv-00072 (N.D. Cal.); and
`
`Finjan, Inc. v. Palo Alto Networks, Inc., No. 14-cv-04908 (N.D. Cal.).
`
`The ‘154 Patent was previously the subject of six IPRs. Case Nos.
`
`IPR2015-01547 was denied institution. Case Nos. IPR2015-01979, IPR2016-
`
`00151, IPR2016-00919, IPR2016-00937, and IPR2016-01071. IPR2015-01979
`
`were consolidated on appeal at the Federal Circuit, Nos. 17-2314 and No. 17-2315.
`
`The Federal Circuit affirmed the Board’s Final Written Decision in IPR2015-
`
`01979 and vacated and remanded the Final Written Decision in the instant case,
`
`IPR2016-00151, “proceedings consistent with the Supreme Court's decision in
`
`SAS Institute.” Palo Alto Networks, Inc., v. Finjan, Inc., Nos. 2017-2314, 2017-
`
`2315 (Fed. Cir. Nov. 9, 2018).
`
`There are no other proceedings, either before the Board or elsewhere,
`
`involving the subject patent. Finjan is unable to comment whether any other
`
`litigation or proceeding involving the subject patent is contemplated in the
`
`foreseeable future.
`
`- 2 -
`
`
`
`Joint Motion to Terminate and Notice of Agreement
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
` SUBMISSION OF THE AGREEMENT
`Exhibit 2044 is true copy of the full agreement between the parties with
`
`IV.
`
`respect to the requested termination, as required by 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b), and should be treated as business confidential. A Joint Request
`
`to File Settlement Agreement as Business Confidential Information Pursuant to 35
`
`U.S.C. § 317(b) is being filed concurrently herewith. Symantec and Finjan certify
`
`that there are no collateral agreements or understandings made in connection with,
`
`or in contemplation of, the requested termination.
`
`V.
`
` CONCLUSION
`For the above reasons, Symantec and Finjan respectfully request that the
`
`Board terminate the present proceeding.
`
`
`
`Dated: January 28, 2019
`
`Case No. IPR2016-00151
`
`
`
`
`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: 212.715.8000
`
`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
`
`Attorneys for Patent Owner
`
`- 3 -
`
`
`
`Dated: January 28, 2019
`
`
`Case No. IPR2016-00151
`
`Joint Motion to Terminate and Notice of Agreement
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`
`
`/ Nathaniel A. Hamstra/
`
`Nathaniel A. Hamstra
`David Nelson
`Quinn Emanuel Urquhart &
`Sullivan LLP
`500 West Madison Street, Ste.2450
`Chicago, IL 60661
`
`
`
`Attorneys for Petitioner
`
`- 4 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Petitioner as detailed below.
`
`Date of service January 28, 2019
`
`Manner of service Electronic Mail (nathanhamstra@quinnemanuel.com,
`davenelson@quinnemanuel.com, jbockman@mofo.com;
`sbiswas@mofo.com; mkreeger@mofo.com)
`
`Documents served Joint Motion to Terminate
`
`Persons Served Nathaniel A. Hamstra
`David Nelson
`Matthew Kreeger
`Jonathan Bockman
`Shouvik Biswas
`
`
`
`
`
`
`
`
`
`/ James Hannah /
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`- 5 -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
