Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 46
`Entered: February 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`
`
`
`Before ZHENYU YANG, CHARLES J. BOUDREAU, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`HEARING ORDER
`35 U.S.C. § 326(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`571-272-7822
`
`
`
`
`
`Paper 46
`Entered: February 2, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`
`
`
`Before ZHENYU YANG, CHARLES J. BOUDREAU, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`HEARING ORDER
`35 U.S.C. § 326(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`
`Petitioner and Patent Owner each have requested a hearing pursuant to
`37 C.F.R. § 42.70(a) in the above-captioned case. Paper 25; Paper 33. The
`requests for a hearing are hereby granted.
`The hearing will commence at 10:00 AM Pacific Time on
`February 16, 2017, on the 3rd floor of the USPTO’s West Coast Regional
`Office, 26 South 4th Street, San Jose, California. The hearing will be
`open to the public for in-person attendance, to be accommodated on a first-
`come, first-served basis. The Board will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing.
`Petitioner and Patent Owner each will have a total of thirty minutes to
`present arguments. Petitioner bears the ultimate burden of proof that the
`claims under review are unpatentable. Consequently, Petitioner will open
`the hearing by presenting its case regarding the challenged claims and the
`ground for which the Board instituted review in the proceeding. Patent
`Owner then will respond to Petitioner’s arguments. Because the parties have
`filed Motions to Exclude Evidence (Papers 31, 35) and Patent Owner has
`filed a Motion for Observations on Cross-Examination (Paper 34), the
`parties may discuss those respective motions during their allotted time.
`Petitioner shall address its Motion during its opening argument, if it so
`chooses, and may reserve rebuttal time to respond to Patent Owner’s
`arguments regarding the challenged claims and to Patent Owner’s
`arguments, if any, regarding its motions or Petitioner’s Motion. If Patent
`Owner does not present arguments during its allotted time regarding either
`of its motions or Petitioner’s Motion, Petitioner may not present arguments
`during its rebuttal time regarding such motions. Further, Patent Owner may
`
`2
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`reserve rebuttal time only to respond to Petitioner’s arguments regarding
`Patent Owner’s motions. If Petitioner does not present arguments during its
`rebuttal time regarding Patent Owner’s motions, Patent Owner also may not
`present arguments during its rebuttal time regarding its motions, and any
`rebuttal time reserved by Patent Owner shall be surrendered. The
`fundamental rule governing our hearings is that the party bearing the burden
`of persuasion on an issue may speak last on that issue.
`Under 37 C.F.R. § 42.70(b), Petitioner and Patent Owner shall serve
`any demonstrative exhibits upon each other at least seven business days
`prior to the hearing. The parties also shall provide the demonstrative
`exhibits to the Board at least seven business days prior to the hearing by
`emailing them to Trials@uspto.gov. Despite the requirement of 37
`C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits in
`this case without our prior authorization. 37 C.F.R. § 42.5(b). The
`parties are directed to St. Jude Medical, Cardiology Division, Inc. v. Board
`of Regents of the University of Michigan, Case IPR2013-00041, slip op. 2–5
`(PTAB Jan. 27, 2014) (Paper 65), and CBS Interactive Inc. v. Helferich
`Patent Licensing, LLC, Case IPR2013-00033, slip op. at 2–4 (PTAB Oct.
`23, 2013) (Paper 118), for guidance regarding the appropriate content of
`demonstrative exhibits. To aid in the preparation of an accurate transcript,
`Petitioner and Patent Owner each shall provide paper copies of its
`demonstratives to the court reporter on the day of the hearing. We remind
`the parties that demonstratives are not evidence, and that neither the
`
`3
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`demonstratives nor such paper copies shall become part of the record of
`these proceedings.2
`We expect lead counsel for each party to be present in person at the
`oral hearing. However, any counsel of record may present the party’s
`arguments. If either party anticipates that its lead counsel will not attend the
`oral hearing, the parties shall request and make themselves available for a
`conference call with us to occur no later than two business days prior to the
`oral hearing to discuss the reasons for that lead counsel’s absence. Any
`requests regarding special equipment or needs, such as for audio visual
`equipment, should be directed to Trials@uspto.gov. Requests for
`special equipment will not be honored unless presented in a separate
`communication directed to the identified email address not less than
`five business days before the hearing.
`Judges Yang and McShane will participate in the hearing remotely. If
`a demonstrative is not made available to the Board in the manner indicated
`above, that demonstrative may not be available to each of the judges during
`the hearing and may not be considered. Further, the parties should assume
`that images projected, using audio visual equipment in San Jose, will not be
`visible to Judges Yang and McShane. Because of limitations on the audio
`transmission systems in our hearing rooms, the presenter may speak only
`when standing at the hearing room podium. The parties also are reminded
`that the presenter must identify clearly and specifically each demonstrative
`
`
`2 After conferring with each other in a good faith effort to resolve any and all
`objections to demonstratives, the parties may request a conference call with
`us to discuss any remaining objections to the other party’s demonstratives no
`less that two business days prior to the hearing.
`
`4
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`exhibit (e.g., by slide or screen number) referenced and each paper or exhibit
`from the record during the hearing by its number to ensure the ability of
`each judge to follow the presenter’s arguments and the clarity and accuracy
`of the court reporter’s transcript.
`
`
`
`
`
`5
`
`
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`For PETITIONER:
`Orion Armon
`Brian Eutermoser
`Max Colice
`Jennifer Volk-Fortier
`COOLEY LLP
`oarmon@cooley.com
`beutermoser@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`
`Michael T. Rosato
`Andrew S. Brown
`Neil Desai
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`ndesai@wsgr.com
`
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`6
`
`
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