`571-272-7822
`
`
`Paper No. 29
`
`Entered: December 13, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`
`In an email message dated December 12, 2016, Patent Owner
`requested a conference call with the Board under 37 C.F.R. § 42.5, to
`request permission to file a paper identifying portions of Petitioner’s Reply
`(Paper 26) that Patent Owner believes raise new issues or belatedly present
`evidence.
`The panel has considered Patent Owner’s request, and a conference is
`not necessary. Patent Owner is authorized to file a paper calling the Board’s
`attention to those portions of Petitioner’s Reply that are believed by Patent
`Owner to raise new issues or belatedly present evidence. The paper should
`be in the form of a numbered list citing to the portions of Petitioner’s Reply
`that Patent Owner believes exceed the scope of the Patent Owner Response,
`but it shall not contain argument or statements “identifying the reason
`these portions are outside the scope of the Reply.” The paper is limited to
`two pages and should be filed by Due Date 4.
`We also authorize Petitioner to file a paper in response to Patent
`Owner’s submission. If filed by Petitioner, this paper should cite to the
`portions of the Patent Owner Response to which Petitioner contends the
`numbered portions of the Reply identified in Patent Owner’s submission are
`responsive, or identifying where such item identified by Patent Owner
`appears in the Petition, but it also shall not contain argument. This paper
`is also limited to two pages and should be filed by Due Date 5.
`In rendering our Final Written Decision, we will determine what
`weight, if any, is to be given to all of the presented evidence and arguments
`in accordance with the rules of the Board. In the event our Final Written
`Decision does not rely on a portion of Petitioner’s Reply identified in Patent
`Owner’s list, we then will make no comment as to whether that identified
`
`
`
`2
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`portion is proper. In the event that our Final Written Decision relies on a
`portion of Petitioner’s Reply identified in Patent Owner’s list, we then will
`set forth our analysis why that identified portion does not contain an
`improper argument.
`It is
`ORDERED that the parties are authorized to file the above-discussed
`papers consistent with the requirements and deadlines set forth in this Order.
`
`
`
`
`
`3
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`For PETITIONER:
`Orion Armon
`Jennifer Volk-Fortier
`Max Colice
`Brian Eutermoser
`COOLEY LLP
`oarmon@cooley.com
`jvolkfortier@cooley.com
`mcolice@cooley.com
`beutermoser@cooley.com
`
`Michael T. Rosato
`Andrew S. Brown
`Neil N. 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
`shadvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`
`4
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