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