`Tel: 571.272.7822
`
`Paper 59
`Entered: January 29, 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 IPR2016-001511
`Patent 8,141,154 B2
`____________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Terminate as to Symantec Corp.
`37 C.F.R. § 42.74
`
`
`1 In Case IPR2016-01071, Symantec Corp. filed, and we granted, a request
`to join this proceeding as petitioner. Paper 11. Pursuant to this Order,
`Symantec Corp. is dismissed.
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`Joint Petitioner, Symantec Corp. (“Symantec”), and Patent Owner,
`Finjan, Inc. (“Finjan”), jointly move to terminate the instant inter partes
`review with respect to Symantec in light of the settlement that resolves their
`dispute regarding U.S. Patent No. 8,141,154 B2. Paper 57. Symantec and
`Finjan also filed a true copy of their written settlement agreement in
`connection with the termination as required by 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(b). Ex. 2044. Pursuant to 37 C.F.R. § 42.74(c), the parties
`further filed a joint request to treat the Settlement Agreement as business
`confidential information kept separate from the file of the involved patent.
`Paper 58.
`For the reasons set forth below, the Joint Motion to Terminate with
`respect to Symantec, and the Joint Request to File Settlement Agreement as
`Business Confidential Information are granted.
`Under the Leahy-Smith America Invents Act, settlement between the
`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
`provides the following (emphasis added):
`(a) IN GENERAL.—An inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon
`the joint request of the petitioner and the patent owner, unless
`the Office has decided the merits of the proceeding before the
`request for termination is filed. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel under section 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution of that inter partes review.
`Here, although the instant inter partes review was completed and we
`issued a Final Written Decision, the proceeding is on remand from the
`Federal Circuit, and that Final Written Decision has been vacated. Upon
`review of the procedural posture of this proceeding and the facts before us,
`
`2
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`we determine that it is appropriate to terminate this proceeding with respect
`Symantec. The proceeding, however, will not be terminated with respect to
`Palo Alto Networks, Inc. and Finjan.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate, with respect to
`Symantec, is granted;
`FURTHER ORDERED that this review is terminated with respect to
`Symantec only; but this review continues to proceed with Finjan and the
`remaining Petitioner;
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patent file, and to make it available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`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
`
`4
`
`
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
