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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`PALO ALTO NETWORKS, INC.,
`Petitioner,
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`
`v.
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`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2016-001511
`U.S. Patent No. 8,141,154
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`__________________________________________________________
`
`PATENT OWNER’S BRIEF CONCERNING
`PETITIONER ESTOPPEL UNDER 35 U.S.C. § 315(e)(1)
`
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`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Pursuant to the Board’s October 20, 2016 Order on the Conduct of the
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`Proceeding, Patent Owner Finjan, Inc. (“Patent Owner”) submits this brief
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`concerning the potential impact of petitioner estoppel under 35 U.S.C. § 315(e)(1)
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`on the captioned proceedings. IPR2016-00151, Paper 24.
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`I.
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`INTRODUCTION
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`These two cases are among six filed by Palo Alto Networks, Inc.
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`(“Petitioner” or “PAN”) and others against the claims of U.S. Patent. No.
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`8,141,154 (the “‘154 Patent”). The Board should terminate or stay the latter-filed
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`case as moot. Petitioner estoppel precludes PAN from continuing to maintain the
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`later-filed case after the Board issues the Final Written Determination in the first
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`case because Petitioner cannot maintain a proceeding with respect to any ground
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`that Petitioner raised or reasonably could have raised. Petitioner could have raised
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`the grounds of the latter Petition in its earlier Petition because it learned of the
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`same art through a related Petition that it joined. Allowing the second case to
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`continue to proceed will, therefore, needlessly waste the resource of the Board and
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`the parties, as the second case will be terminated prior to the issuance of a Final
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`Written Decision.
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`II.
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`SUMMARY OF THE FACTS
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`Entities accused of infringement have filed six petitions against the ‘154
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`Patent. Symantec Corp. (“Symantec”) filed IPR2015-01547, which the Board
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`1
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`denied, and IPR2016-01071 and IPR2016-00919, which the Board joined to these
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`proceedings. Proofpoint, Inc. and Armorize Technologies, Inc. filed IPR2016-
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`00937, which terminated on June 24, 2016. IPR2016-00937, Paper 10.
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`Petitioner filed IPR2015-01979 and IPR2016-00151, which both are directed
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`to claims 1-8, 10, and 11 of the ‘154 Patent, but are neither consolidated nor joined
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`with the other. Case IPR2015-01979, filed by Petitioner on September 25, 2015,
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`was instituted on March 21, 2016, and is scheduled for oral argument on December
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`15, 2016, with the Final Written Decision due by March 21, 2017. IPR2015-
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`01979, Paper 9. Case IPR2016-00151, filed by Petitioner on November 5, 2015,
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`was instituted on April 20, 2016, and is scheduled for oral argument on January 24,
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`2017, with the Final Written Decision due by April 20, 2017. IPR2016-00151,
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`Paper 11.
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`III. THE IPR2016-00151 CASE IS MOOT UNDER 35 U.S.C. § 315(E)(1)
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`Petitioner estoppel renders moot the IPR2016-00151 case. Petitioner will be
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`estopped from maintaining that proceeding upon the issuance of a Final Written
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`Decision in Case No. IPR2015-01979, which involves the same ‘154 Patent (and
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`the same claims).
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`The grounds raised in the IPR2016-00151 Petition “reasonably could have
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`been raised” in the IPR2015-01979 Petition, as confirmed by the fact that
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`Petitioner filed that petition a little over a month after filing its first petition. This
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`2
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`mandates dismissal of the second proceeding after the Board issues a Final Written
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`Decision in the first:
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`The petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision under section
`318(a), or the real party in interest or privy of the petitioner, may not
`request or maintain a proceeding before the Office with respect to
`that claim on any ground that the petitioner raised or reasonably could
`have raised during that inter partes review.
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`35 U.S.C. § 315(e)(1) (emphasis added). “Maintain” means to cause (something)
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`to exist or continue without changing.” Merriam-Webster’s Learner’s Dictionary.
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`Thus, the plain language of the statute is that the petition should not continue once
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`petitioner estoppel attaches.
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`Petitioner readily could have raised in the first IPR2015-01979 Petition the
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`additional references asserted in the latter IPR2016-00151 Petition. The Board has
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`held that § 315(e)(1) applies to any “prior art which a skilled researcher conducting
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`a diligent search reasonably could have been expected to discover.” See Praxair
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`Distribution, Inc. v. Ino Therapeutics LLC, Case IPR2016-00781, Decision
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`Denying Institution of Inter Partes Review, Paper 10 at 7 (PTAB Aug. 25, 2016)
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`(citing 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)).
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`Here, the Ross and Calder references cited in the latter Petition were cited by
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`Symantec in its July 3, 2015, Petition and, thus, were readily available to Petitioner
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`3
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`without conducting any prior art searching when it filed its first Petition. See
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`IPR2015-01547, Exhibits 1002, 1003. Indeed, on November 5, 2015, just days
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`after it filed the earlier IPR2015-01979 petition, Petitioner filed a Motion to Join
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`the Symantec petition, specifically referencing the Ross and Calder references.
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`Pursuant to 35 U.S.C. § 316(a)(11), the Board will be required to issue a
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`Final Written Decision in Case No. IPR2015-01979 by March 21, 2017. IPR2015-
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`01979, Paper 9. Accordingly, by no later than March 21, 2017, the estoppel
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`provision of 35 U.S.C. § 315(e)(1) will ripen and prevent Petitioner from
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`maintaining Case No. IPR2016-00151. See, e.g., Kofax, Inc. v. Uniloc USA, Inc.,
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`Case IPR2015-01207, Decision on Motion to Terminate Inter Partes Review,
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`Paper 22 at 8, 11–12 (PTAB June 2, 2016) (terminating an inter partes review due
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`to petitioner estoppel when a petitioner “had an opportunity to raise the grounds in
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`[an] earlier proceeding” that ended in a Final Written Decision).
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`IV. THE BOARD SHOULD TERMINATE OR STAY THE SECOND
`PROCEEDING
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`The Board should terminate or stay the IPR2016-00151 case. Patent Owner
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`recognizes that the issue of petitioner estoppel is not yet ripe because no Final
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`Written Decision has issued yet in Case No. IPR2015-01979. However, because
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`estoppel will require dismissal of the IPR2016-00151 case once a Final Written
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`Decision issues in the earlier case, Patent Owner requests that the Board consider
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`4
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`the substantial waste of resources of the Board and the parties attendant to
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`continuing both proceedings and the policy goal of petitioner estoppel.
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`For example, the Board and the parties will conduct all of the following
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`activities in the IPR2016-00151 case, notwithstanding that it will never result in a
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`Final Written Decision:
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` the deposition of Finjan’s technical expert Nenad Medvidovic
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`(scheduled for November 22, 2016);
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` DUE DATE 4: Motion for observation regarding cross-
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`examination of reply witness, motion to exclude evidence,
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`request for oral argument (December 22, 2016);
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` DUE DATE 5: Response to observation, opposition to motion
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`to exclude (January 3, 2017);
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` DUE DATE 6: Reply to opposition to motion to exclude
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`(January 10, 2017);
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` Prepare for and present oral argument and associated filings
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`(January 24, 2017).
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`To avoid wasting the resources of the Board and the parties on a proceeding
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`that will ultimately be rendered moot, Patent Owner respectfully requests that the
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`Board exercise its discretion under 35 U.S.C. § 315(d) and 37 CFR 42.122(a) to
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`terminate or stay the IPR2016-00151 case. The “[B]oard is authorized to stay a
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`5
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`matter . . . if that matter involves the same patent. . . . Indeed, such a stay is
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`practical as it would conserve Office resources by reducing the possibility of
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`duplicative, or unnecessary, efforts.” Nissan N. Am., Inc. v. Joao Control &
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`Monitoring Sys., LLC, Case IPR2015-01508, Paper 24 at 3 (PTAB June 6, 2016)
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`(staying reexamination in view of pending inter partes review proceedings); see
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`also Google Inc. v. Summit 6 LLC, Case IPR2015-00806, Paper 26 at 4-5 (PTAB
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`Oct. 7, 2015) (“allowing the Reexamination to proceed concurrently would result
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`in duplicative efforts . . . within the Board, and would be an inefficient use of
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`Office and Board resources”).
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`Allowing the latter IPR2016-00151 case to proceed until the Board issues its
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`Final Written Decision would declaw the petitioner estoppel provision of 35
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`U.S.C. § 315(e)(1) to the point of rendering it useless, as the Board and parties will
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`have needlessly expended substantial resources during the interim. The legislative
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`history of the AIA confirms that the rules were designed to prevent precisely the
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`type of duplicative challenges raised by Petitioner here by pursuing multiple
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`instituted IPR proceedings on the same claims. See H.R. Rep. No. 112-98, pt. 1, at
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`48 (2011) (warning that the AIA’s procedures, including inter partes review,
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`should “not . . . be used as tools for harassment or a means to prevent market entry
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`through repeated litigation and administrative attacks on the validity of a patent.”).
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`6
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Indeed, for the estoppel provision of 35 U.S.C. § 315(e)(1) to have any
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`impact, it must apply to co-pending petitions, as is the case here, because of the
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`interaction with § 315(b). The vast majority of petitions for IPR are only filed
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`after a complaint has been filed in district court, triggering a one year deadline to
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`file a petition under § 315(b). If § 315(e)(1) only applied to follow-on petitions
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`filed after a Final Written Decision—which typically would not issue until about
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`eighteen months after filing a petition)—those follow on petitions would already
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`be long-barred under § 315(b) and, thus, § 315(e)(1) would not be implicated.
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`The petitioner estoppel of 35 U.S.C. § 315(e)(1) is essential to preserving the
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`balance of interests that the IPR scheme strikes between the interests of the patent
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`owner and the petitioner, by preventing a petitioner from subjecting the patent
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`owner to the harassment and burden of serial challenges based on information
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`which was known or reasonably available to the petitioner at the time it filed an
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`IPR. Consistent with this Congressional policy, the Board should exercise its
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`discretion to terminate or stay the IPR2016-00151 case to preserve the resources of
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`the Board and the parties.
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`V. CONCLUSION
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`For the foregoing reasons, the Board should terminate or stay the IPR2016-
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`00151 case in favor of the IPR2015-01979 case.
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`7
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Dated: November 15, 2016
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`Respectfully submitted,
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`
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`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`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
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`Case No. IPR2016-00151
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`8
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Brief Concerning Petitioner Estoppel
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`under 35 U.S.C. § 315(e)(1) was served on November 15, 2016, by filing this
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`document through the Patent Review Processing System as well as delivering via
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`electronic mail upon the following counsel of record for Petitioner:
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`9
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`Orion Armon
`Brian Eutermoser
`Peter Sauer
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
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`
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`Patent Owner’s Brief Concerning Petitioner Estoppel
`IPR2016-00151 (U.S. Patent No. 8,141,154)
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`Matthew I. Kreeger
`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Nathaniel A. Hamstra
`Dave Nelson
`Kenneth Suh
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`davenelson@quinnemanuel.com
`kennethsuh@quinnemanuel.com
`
`
`
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`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road, Menlo Park, CA 94025
`(650) 752-1700
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`10