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
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`Introduction .................................................................................................. 1
`
`The Board’s Decision violates the doctrine of judicial
`admissions and Fails to Comport with 35 U.S.C. § 325(d) and
`the Various Informative Decisions Decided Thereon .................................... 2
`
`A.
`
`B.
`
`C.
`
`The Board Should Have Used its Discretion Under § 325(d) to
`Deny the Petition in Light of Petitioner’s Judicial Admissions ........... 3
`
`The Board’s Informative Decisions Weigh Heavily in Favor of
`Terminating Inter Partes Review ........................................................ 7
`
`The Board’s Reasons for Declining to Exercise its Discretion to
`Deny the Petition Represent an Unreasonable Weighing of the
`Relevant Factors ............................................................................... 10
`
`1.
`
`2.
`
`The Board’s “Material Differences” Standard is
`the Incorrect Standard for Decisions Premised
`Upon 35 U.S.C. § 325(d) ........................................................ 10
`
`The Board’s Reasons for Denying the Symantec
`Petition are Irrelevant Under § 325(d) and The
`Timing of Filing Weighs in Favor of Denial of the
`Petition ................................................................................... 11
`
`III. The Board’s Institution Decision Invites Substantial Abuse of
`Process and Harassment of Patent Owners .................................................. 12
`
`IV. Conclusion .................................................................................................. 14
`
`
`
`i
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Christian Legal Soc. Chapter of Univ. of Cal., Hastings College of
`Law v. Martinez,
`130 S.Ct. 2971 (2010) ........................................................................................ 5
`
`Conopco, Inc. v. The Procter & Gamble Co.,
`Case IPR2014-00628, Paper 21 (P.T.A.B. Oct. 20, 2014) .................................. 6
`
`Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.,
`Case IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) ................................. 9
`
`Medtronic, Inc., v. Nuvasive, Inc.,
`Case IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014) ............................... 8, 9
`
`Medtronic, Inc., v. Robert Bosch Healthcare Sys., Inc.,
`Case IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014) ................................. 8
`
`Prism Pharma Co. v. Choongwae Pharma Corp.,
`Case IPR2014-00315, Paper 14 (P.T.A.B. July 8, 2014) .................................... 8
`
`Standard Fire Ins. Co. v. Knowles,
`133 S. Ct. 1345 (2013) ....................................................................................... 4
`
`Star Fruits S.N.C. v. U.S.,
`393 F. 3d 1277 (Fed. Cir. 2005) ........................................................... 1, 2, 5, 10
`
`Unified Patents, Inc., v. Personalweb Techs., LLC,
`Case IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014) .................................. 8
`
`Unilever, Inc., v. The Procter & Gamble Co.,
`Case IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) .................................... 8
`
`Statutes
`
`35 U.S.C. § 103(a) ................................................................................................ 14
`
`ii
`
`
`
`Patent Owner’s Preliminary Response
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`35 U.S.C. § 315(b) .......................................................................................... 5, 6, 7
`
`35 U.S.C. § 315(e) ................................................................................................ 13
`
`35 U.S.C. § 325(d) ......................................................................................... passim
`
`Other Authorities
`
`37 C.F.R. § 42.71(d) ............................................................................................... 1
`
`157 Cong. Rec. S1360-S1394 (March 8, 2011) ..................................................... 12
`
`iii
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`I.
`
`INTRODUCTION
`
`Patent Owner, Finjan, Inc. (“Finjan” or “Patent Owner”), respectfully
`
`requests rehearing of the Board’s Decision on Institution (IPR2016-00151, Paper
`
`No. 10) (the “Institution Decision”) under 37 C.F.R. § 42.71(d). In particular,
`
`Finjan requests reconsideration of the decision to institute trial on claims 1–8, 10,
`
`and 11 on obviousness grounds over Ross U.S. Patent Publication No.
`
`2007/0113282 (Ex. 1003, “Ross”). Reconsideration of the Institution Decision is
`
`appropriate because the Board misapprehended the significance of its decision to
`
`institute trial on a ground of unpatentability based on substantially the same prior
`
`art and arguments that were previously presented to the Office. Supreme Court
`
`case law regarding judicial and evidentiary admissions, weight of the authority
`
`stemming from the language of 35 U.S.C. § 325(d), the legislative history behind
`
`§ 325(d), each and every Informative Decision released by the Board concerning
`
`§ 325(d), and the dire practical ramifications of the Board’s Institution Decision in
`
`this case all favor granting Patent Owner’s Request for Rehearing and termination
`
`of the instant inter partes review proceedings.
`
`The Board’s misapprehension in this case resulted in an Institution Decision
`
`that “represents an unreasonable judgment in weighing relevant factors” and
`
`which, therefore, meets the stringent “abuse of discretion” standard. See Star
`
`Fruits S.N.C. v. U.S., 393 F. 3d 1277, 1281 (Fed. Cir. 2005) (“An abuse of
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`1
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`discretion occurs where the decision is based on an erroneous interpretation of the
`
`law, on factual findings that are not supported by substantial evidence, or
`
`represents an unreasonable judgment in weighing relevant factors.”) (citation
`
`omitted). Accordingly, Patent Owner respectfully requests that the Board
`
`reconsider its decision to institute trial on claims 1–8, 10, and 11 of the ‘154
`
`Patent and deny the Petition in its entirety using the discretion provided under
`
`35 U.S.C. § 325(d).
`
`II. THE BOARD’S DECISION VIOLATES THE DOCTRINE OF JUDICIAL
`ADMISSIONS AND FAILS TO COMPORT WITH 35 U.S.C. § 325(D) AND THE
`VARIOUS INFORMATIVE DECISIONS DECIDED THEREON
`
`The Institution Decision should be modified because it “represents an
`
`unreasonable judgment in weighing relevant factors.” Star Fruits, 393 F.3d at
`
`1281. In particular, the Board’s decision is contrary to Supreme Court precedent
`
`concerning judicial admissions and fails to comport with 35 U.S.C. § 325(d) and
`
`every single Board decision designated as “Informative” by the PTAB that has
`
`been decided to date on the basis of 35 U.S.C. § 325(d). The legislative history
`
`behind § 325(d) and the Informative Opinions released to date that address
`
`§ 325(d) highlight the inequities stemming from harassment of Patent Owners
`
`based on serial challenges to a patent—especially serial challenges that rely on
`
`prior art or arguments that have been presented previously to the Office. If left
`
`standing, the Board’s Institution Decision in this case will embolden Petitioners to
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`2
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`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`harass Patent Owners in precisely the manner decried in the legislative history
`
`behind § 325(d) and the Board’s Informative Opinions on the subject.
`
`A. The Board Should Have Used its Discretion Under § 325(d) to
`Deny the Petition in Light of Petitioner’s Judicial Admissions
`
`35 U.S.C. § 325(d) gives the Board the discretion to reject a petition if “the
`
`same or substantially the same prior art or arguments previously were presented to
`
`the Office.” In its Patent Owner Preliminary Response, Finjan argued that the
`
`Petition should be rejected under § 325(d) for this very reason. Patent Owner’s
`
`Preliminary Response (Paper 8) at 10–12. In fact, Patent Owner noted that
`
`Petitioner’s Motion to Join Case IPR2015-01547, Petitioner represented that “both
`
`Petitions use the same art and substantially the same arguments to invalidate the
`
`claims of U.S. Patent No. 8,141,154 (“the ’154 patent”).” Motion for Joinder
`
`(Paper 3) at 2. In fact, Petitioner’s Motion for Joinder is replete with judicial
`
`admissions that its Petition was “the same or substantially the same” as the Petition
`
`filed in IPR2015-01547 (“the Symantec’s Petition”):
`
`The PAN petition that accompanies the instant Motion for Joinder
`includes grounds that are substantially identical to three of the four
`grounds that were presented in the Symantec petition. The art and
`arguments submitted in the PAN petition are substantially
`identical to the grounds 1-3 of the Symantec petition. Compare
`PAN Petition at 14-41 with Symantec IPR Petition, IPR2015-01547,
`Paper No. 1 at 7.
`
`3
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Id. at 3 (emphasis added).
`
`The PAN IPR petition involves the same patent, the same claims, the
`same prior art, and the grounds in the PAN IPR petition are
`substantially the same grounds as grounds detailed in the Symantec
`IPR petition.
`
`Id. at 5.
`
`The two grounds of unpatentability presented in the PAN petition are
`substantially identical to grounds presented in the Symantec IPR as
`shown below….”).
`
`Id.
`
`The PAN petition raises no new issues; it simply argues that claims
`1-5 are obvious in light of Ross, while the Symantec petition argues
`those claims are anticipated by Ross.
`
`Id. at 6 (emphasis added).
`
`Furthermore, given that the PAN IPR involves the same patent, the
`same claims, the same prior art, and substantially similar
`grounds, there appears to be no discernible impact on the trial
`schedule of the Symantec IPR..
`
`Id. (emphasis added).
`
`These statements are judicial admissions because they are statements “made
`
`... by the party or his attorney conceding for the purposes of the trial the truth of
`
`some alleged fact.” Standard Fire Ins. Co. v. Knowles, 133 S. Ct. 1345, 1348
`
`(2013) (citations omitted). These statements are, therefore, controlling and “have
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`4
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`the effect of withdrawing a fact from issue and dispensing wholly with the need for
`
`proof of the fact. Thus, a judicial admission ... is conclusive in the case.” Christian
`
`Legal Soc. Chapter of Univ. of Cal., Hastings College of Law v. Martinez, 130
`
`S.Ct. 2971, 2983 (2010) (citation omitted). Accordingly, these concessions,
`
`specifically discussed in Patent Owner’s Preliminary Response (see Paper 8 at 2),
`
`are conclusive. The Board therefore abused its discretion by deciding to “not agree
`
`with Patent Owner” (see Institution Decision (Paper 10) at 5) on this point because
`
`Petitioner’s clear, unequivocal judicial admissions foreclose any other conclusion.
`
`The Institution Decision is therefore based on “erroneous interpretation of the
`
`law.” Star Fruits, 393 F.3d at 1281.
`
`The interests of justice also weigh in favor of the Board granting Patent
`
`Owner’s Request. In particular, Petitioner admitted there were no new issues raised
`
`in its while simultaneously using Patent Owner’s Preliminary Response filed in
`
`that IPR2015-01547 as a roadmap to buttress the clear deficiencies of the
`
`Symantec Petition. This type of behavior should not be countenanced for several
`
`reasons.
`
`First, Petitioner’s tactics, if permitted by the Board, open patent owners up
`
`to a parade of attacks to their patent rights without ever being given the
`
`opportunity for repose. This issue is especially problematic given the ability for
`
`petitioners to avoid the one year statutory bar under 35 U.S.C. § 315(b) with a
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`5
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`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Motion for Joinder because it allows for multiple petitions that are nothing more
`
`than variations on a theme, even by otherwise time-barred petitioners.
`
`Second, the Board’s decision effectively allows follow-on petitioners add or
`
`reframe evidence to an otherwise deficient Petition in response to a Patent Owner
`
`Preliminary Response and before institution of any proceedings. This concern is
`
`especially problematic in this case, where Petitioner did not even attempt to
`
`explain the differences between in the arguments presented in its Petition and those
`
`presented in the Symantec Petition and, in fact, did all it could to downplay such
`
`differences.
`
`Third, the Board has consistently found that follow-on petitions that use an
`
`Institution Decision as a roadmap should be denied under § 325(d), and
`
`Petitioner’s use of Patent Owner’s Preliminary Response is no different because it
`
`encourages parties to “continue to mount serial attacks against the [] patent claims,
`
`until a ground is advanced that results in the institution of review.” Conopco, Inc.
`
`v. The Procter & Gamble Co., Case IPR2014-00628, Paper 21 at 11 (P.T.A.B. Oct.
`
`20, 2014).
`
`Accordingly, the Board should have used its discretion under 35 U.S.C. §
`
`315(b) to deny the Petition in the first instance. In view of the foregoing, especially
`
`given Petitioner’s admissions in the record, and as explained in detail in the
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`6
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`following sections, Patent Owner’s rehearing request should be granted because
`
`Board abused its discretion in instituting trial in this case.
`
`B.
`
`The Board’s Informative Decisions Weigh Heavily in Favor of
`Terminating Inter Partes Review
`
`As an initial matter, Patent Owner recognizes that Informative Opinions are
`
`not binding on the Board.1 However, these opinions do provide Board norms on
`
`recurring issues and guidance on Board rules and practices. Id. Parties represented
`
`before the PTAB, the PTAB itself, and the public all benefit from predictable,
`
`standardized application of the law, rules, and procedures to ongoing proceedings.
`
`The Board’s failure to follow stated norms and standard procedures leads directly
`
`to substantial inefficiencies and abject unfairness. Deviation from established
`
`norms and previously- provided guidance set down in the Board’s Informative
`
`Opinions should only occur in rare circumstances in which the interests of justice
`
`demand an particular outcome—this is not such a case.
`
`Each Informative Opinion that deals substantively with § 325(d) has denied
`
`institution for inter partes review petitions that rely upon “the same or
`
`substantially the same prior art or arguments” previously were presented to the
`
`
`1 Patent Trial and Appeal Board Standard Operating Procedure 2 (Revision 9) at 3,
`
`available at http://www.uspto.gov/sites/default/files/documents/sop2-revision-9-
`
`dated-9-22-2014.pdf.
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`7
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Office. See Medtronic, Inc., v. Nuvasive, Inc., Case IPR2014-00487, Paper 8 at 7
`
`(P.T.A.B. Sept. 11, 2014) (“Petitioner has not provided any persuasive reasoning
`
`as to why we should institute inter partes review over ‘the same or substantially the
`
`same prior art or arguments’ that were presented by the ’504 Petition. In addition,
`
`Petitioner is involved in the ’506 Proceeding, which involves all of the same
`
`claims challenged here.”); Unified Patents, Inc., v. Personalweb Techs., LLC, Case
`
`IPR2014-00702, Paper 13 at 8 (P.T.A.B. July 24, 2014) (“Taking into
`
`consideration the efficient administration of the Office under 35 U.S.C. § 316(b),
`
`as well as the reasons set forth in the decision denying Unified’s Motion to Joinder
`
`entered concurrently, we exercise our discretion under 35 U.S.C. § 325(d) and
`
`deny the Petition in this proceeding because the same or substantially the same
`
`prior art and arguments were presented previously in IPR2013-00082 and
`
`IPR2014-00057.”); Prism Pharma Co. v. Choongwae Pharma Corp., Case
`
`IPR2014-00315, Paper 14 at 13 (P.T.A.B. July 8, 2014) (rejecting a petition
`
`because “the same prior art and substantially the same arguments were presented to
`
`the Office previously”); Unilever, Inc., v. The Procter & Gamble Co., Case
`
`IPR2014-00506, Paper 17 at 8 (P.T.A.B. July 7, 2014) (“On this record, we
`
`determine that the instant Petition presents ‘the same or substantially the same
`
`prior art or arguments’ that were advanced in the 505 Petition. 35 U.S.C. §
`
`325(d).”); Medtronic, Inc., v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-
`
`8
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`00436, Paper 17 at 12 (P.T.A.B. June 19, 2014) (“We, therefore, exercise our
`
`discretion and determine that the arguments presented in the instant Petition
`
`involve the same, or substantially the same, prior art (e.g., Cohen and Wahlquist)
`
`and the same, or substantially the same, arguments previously presented in the 451
`
`case.”); Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd., Case IPR2013-
`
`00324, Paper 19 at 6–7 (P.T.A.B. Nov. 21, 2013) (“Furthermore, we note that IBS
`
`has not provided any justification for filing the instant petition…. We, therefore,
`
`conclude that the 128 Petition presented the same, or substantially the same, prior
`
`art and arguments to the Office as those in the instant petition. See 35 U.S.C. §
`
`325(d).”).
`
`In line with these Informative Opinions, the Petition relied upon precisely
`
`the same prior art previously presented to the Office—namely, Ross and Calder
`
`U.S. Publication No. 2002/0066022 (Ex. 1004, “Calder”). The Petition also relied
`
`on substantially the same arguments as the Symantec Petition. See § III.A, supra
`
`(cataloging the numerous party admissions that the Petition was based on the same
`
`prior art and arguments and that the Petition raised no new issues). Petitioner also
`
`did not “provide[] any persuasive reasoning as to [the Board] should institute inter
`
`partes review over ‘the same or substantially the same prior art or arguments’ that
`
`were presented by the [Symantec] Petition.” Medtronic, Inc., v. Nuvasive, Inc.,
`
`Case IPR2014-00487, Paper 8 at 7 (P.T.A.B. Sept. 11, 2014). Instead, Petitioner
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`9
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`specifically argued only that “Joinder is appropriate in this case as both Petitions
`
`use the same art and substantially the same arguments to invalidate the claims,” not
`
`that inter partes review should be instituted despite the language of § 325(d).
`
`Motion for Joinder (Paper 3) at 2 (emphasis added).
`
`C. The Board’s Reasons for Declining to Exercise its Discretion to
`Deny the Petition Represent an Unreasonable Weighing of the
`Relevant Factors
`
`As noted above, an abuse of discretion exists when a decision “represents an
`
`unreasonable judgment in weighing relevant factors.” Star Fruits, 393 F.3d at
`
`1281. Here, the Board’s stated reasons for instituting inter partes review of the
`
`‘154 Patent despite the § 325(d) and the Informative Opinions establishing the
`
`Board’s norms and guidance regarding the same, are unreasonable and meet the
`
`stringent “abuse of discretion” standard.
`
`1.
`
`The Board’s “Material Differences” Standard is the Incorrect
`Standard for Decisions Premised Upon 35 U.S.C. § 325(d)
`
`The Board’s statement that it found “material differences in the arguments
`
`presented in the 1547 IPR and the Petition here” is not the proper standard for
`
`determining whether to deny a petition under § 325(d). The statute does not
`
`require that the arguments presented a later petition be identical to those already
`
`presented to the office, but rather that “the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In
`
`fact, every one of the Informative Opinions discussed above involved petitions
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`10
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`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`having arguments that were not identical to arguments previously presented.
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`Accordingly, the fact that Petitioner framed some evidence from a prior art
`
`reference in a different light does not meant that Petitioner has not presented an
`
`argument substantially similar to one previously presented.
`
`The Board’s Institution Decision also ignores that the statute uses the
`
`disjunctive “or” to separate the terms “prior art” and “arguments” and therefore
`
`overlooked that the fact that the same prior art was previously presented to the
`
`Office is sufficient to deny a petition under § 325(d). As noted directly above,
`
`none of the Informative Decisions dealt with arguments that were identical to
`
`previously presented arguments, but several dealt with prior art that was identical.
`
`Thus, the Board’s norms and guidance as propagated through its Informative
`
`Opinions weigh in favor of denying the Petition simply because it relies on the
`
`same prior art previously presented.
`
`2.
`
`The Board’s Reasons for Denying the Symantec Petition are
`Irrelevant Under § 325(d) and The Timing of Filing Weighs in
`Favor of Denial of the Petition
`
`Contrary to the reasoning provided in the Institution Decision, the timing of
`
`Petitioner’s filing weighs in favor of denial of the Petition because Petitioner was
`
`privy to Patent Owner’s Preliminary Response to the Symantec Petition before the
`
`instant Petition was filed. As noted above, in § II.A, supra, a rule that permits
`
`serial filings of petitions presenting the same or substantially the same prior art or
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`11
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`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`arguments, especially after a follow-on petitioner has had the opportunity to
`
`evaluate a patent owner’s preliminary response, invites abuse of the IPR system.
`
`For at least this reason, the fact that the Board “denied the 1547 IPR Petition
`
`based on the failure to present and explain the information adequately, not on the
`
`failure of the prior art as a whole” is irrelevant. Decision on Partial Institution
`
`(Paper 10) at 6. Petitioner had the opportunity to use Patent Owner’s Preliminary
`
`Response to the Symantec Petition as a roadmap to reframe the Ross reference,
`
`again without apprising either the Board or Patent Owner of any distinctions.
`
`III. THE BOARD’S INSTITUTION DECISION INVITES SUBSTANTIAL ABUSE OF
`PROCESS AND HARASSMENT OF PATENT OWNERS
`
`As established in Patent Owner’s Preliminary Response, the legislative
`
`history behind § 325(d) indicates that Congress was concerned with the potential
`
`for abuse of process in IPR proceedings:
`
`This will prevent parties from mounting attacks on patents that
`raise issues that are substantially the same as issues that were
`already before the Office with respect to the patent. The Patent
`Office has indicated that it currently is forced to accept many requests
`for ex parte and inter partes reexamination that raise challenges that
`are cumulative to or substantially overlap with issues previously
`considered by the Office with respect to the patent.
`
`157 Cong. Rec. S1360-S1394 at S1376 (March 8, 2011) (remarks of Senator Jon
`
`Kyl) (emphasis added); see also Patent Owner’s Preliminary Response at 11. The
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`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`case at hand illustrates perfectly the need for the Board to exercise its discretion
`
`liberally when considering serial challenges to a patent.
`
`Symantec filed its first petition for inter partes review of the ‘154 Patent in
`
`Case IPR2015-01547 on July 3, 2015. Before the Board’s Institution Decision in
`
`that case, but after Patent Owner’s Preliminary Response was filed, Petitioner filed
`
`a second Petition utilizing the same prior art while framing the evidence in a
`
`slightly different manner. If the Board’s reasoning in the Institution Decision is
`
`adopted in future cases, there would be nothing to stop a multiplicity of challenges
`
`to a patent with very little downside for the serial challengers. As may be
`
`appreciated with respect to the case at bar, Patent Owner was forced to defend a
`
`second challenge while Symantec is not subject to estoppel under 35 U.S.C.
`
`§ 315(e), and Palo Alto Networks was spared the considerable expense of
`
`preparing a Petition for inter partes review from scratch. Indeed, nothing in the
`
`Board’s decision would preclude another party from filing yet another petition for
`
`inter partes review of the ‘154 Patent premised on the same prior art and
`
`substantially the same arguments so long as it could point to some “material
`
`difference.”
`
`§ 325(d) is a tool for the Board to prevent inefficiencies in the inter partes
`
`review system, harassment of patent owners, and abuse of process. The Board
`
`abused its discretion in this case by its failure to deny the Petition under § 325(d)
`
`13
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`because of an unreasonable weighing of the various factors.
`
`IV. CONCLUSION
`
`For at least the foregoing reasons, Finjan respectfully submits that the Board
`
`misapprehended the significance of the arguments related to § 325(d) presented in
`
`Patent Owner’s Preliminary Response, especially in light of Petitioner’s judicial
`
`admissions. Finjan requests, therefore, that the Board modify its Institution
`
`Decision and decline to subject claims 1–8, 10, and 11 of the ‘154 Patent to inter
`
`partes review under 35 U.S.C. § 103(a) in view of Ross.
`
`Dated: May 4, 2016
`
`(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
`
`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
`
`14
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Partial Request for Rehearing was
`
`served on May 4, 2016, by filing this document through the Patent Review
`
`Processing System as well as delivering via electronic mail upon the following
`
`counsel of record for Petitioner:
`
`Matthew I. Kreeger
`Reg. No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`
`Shouvik Biswas
`Reg. No. 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`FinjanPANMofoTeam@mofo.com
`
`
`
`Jonathan Bockman
`Reg. No. 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`JBockman@mofo.com
`
`
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`15
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