`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00157
`Patent 8,225,408
`____________
`
`Mailed: November 17, 2015
`
`Before Alexander C. Levy, Trial Paralegal
`
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for “inter partes review,” filed in the above proceeding
`has been accorded the filing date of November 6, 2015.
`A review of the petition identified the following defects:
`
`
`
`Case IPR2016-00157
`Patent 8,225,408
`The challenged claims depend from claims 1 and 9, therefore review
`of claims 1 and 9 is required. Payment of an additional $400 fee for Post-
`Institution review is required. See 37 C.F.R. § 42.15. Exhibit 1002 is not
`labeled with the petitioner’s name and exhibit number on the lower right
`corner of the first page. See 37 C.F.R. § 42.63(d). Resubmission of the
`corrected exhibit is required. Petitioner may submit a written request to
`trials@uspto.gov to have this exhibit expunged specifically identifying the
`exhibit to be expunged (e.g., by the name given to the exhibit in the Patent
`Review Processing System (PRPS) and/or by the date the exhibit was filed).
`The Exhibits List in the Petition misspells the titles of exhibits 1011 and
`1064. See 35 U.S.C. § 312(a). Correction to the Exhibits List is required.
`Petitioners must correct the defects within FIVE BUSINESS DAYS
`from this notice. Failure to correct the defects may result in an order to show
`cause as to why the Board should institute the trial. No substantive changes
`(e.g., new grounds) may be made to the petition.
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition.
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`
`
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`2
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`
`
`Case IPR2016-00157
`Patent 8,225,408
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`Patent Review Processing System (PRPS), accessible from the Board Web
`site at http://www.uspto.gov/PTAB. To file documents, users must first
`obtain a user ID and password by registering with PRPS. Information
`regarding how to register with and use PRPS is available at the Board Web
`site.
`
`If there are any questions pertaining to this notice, please contact
`Alexander C. Levy at 571-272-0382 or the Patent Trial and Appeal Board at
`571-272-7822.
`
`PETITIONER:
`Matthew I. Kreeger
`Jonathan Bockman
`Matthew Chivvis
`
`FinjanPANMofoTeam@mofo.com
`
`
`
`
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`
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`Case IPR2016-00157
`Patent 8,225,408
`PATENT OWNER:
`Marc Berger, Dawn-Marie Bey, Christopher
`Cotropia, Sang Kim, and Julie Mar-Spinola
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond VA 23229
`
`Paul J. Andre
`Counsel for Finjan, Inc.
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`
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