`571-272-7822
`
`
`
`
`
`
`Paper 7
`Entered: December 13, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01441
`Patent 8,225,408 B2
`____________
`
`
`
`
`
`Before JAMES B. ARPIN, PATRICK M. BOUCHER, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`IPR2016-01441
`Patent 8,225,408 B2
`
`
`A conference call was held on December 12, 2016, among
`
`representatives of the parties and Judges Arpin, Boucher, and Yang. The
`
`call was requested by Petitioner to seek authorization to file a Reply to
`
`Patent Owner’s Preliminary Response addressing three issues raised by the
`
`Preliminary Response: (1) that the Petition is procedurally barred under
`
`35 U.S.C. §§ 312, 315(e)(1), and 325(d) by an earlier joinder petition;
`
`(2) that the Petition fails to identify all real parties in interest under
`
`35 U.S.C. § 312(b); and (3) that Patent Owner submitted testimonial
`
`evidence from another proceeding without submitting corresponding
`
`contrary cross-examination testimony. We deny the request with respect to
`
`the second and third issues, but authorize the filing of a Reply and Sur-reply
`
`addressing the estoppel aspects of the first issue. See 37 C.F.R. § 42.23
`
`(governing the content of replies).
`
`During the call, we also noted Patent Owner’s argument in its
`
`Preliminary Response that Petitioner has not paid full fees to support its
`
`challenge of dependent claims. Under 37 C.F.R. §§ 42.15(a)(3) and (a)(4),
`
`fees are due for “unchallenged claims from which a challenged claim
`
`depends.” Because the deficiency may have resulted from an error by the
`
`Office in confirming the required fees, we advised Petitioner to contact
`
`Trials@uspto.gov regarding the nature of the deficiency and Petitioner’s
`
`ability now to correct it. If such contact does not resolve the issue, the
`
`parties further are authorized to address the impact of the fee deficiency in
`
`2
`
`the Reply and Sur-reply.
`
`
`
`
`
`IPR2016-01441
`Patent 8,225,408 B2
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file, by
`
`December 16, 2016, a Reply to the Preliminary Response, limited to five
`
`pages, that responds to the Preliminary Response’s estoppel arguments and,
`
`if appropriate, to the fee-deficiency arguments; and
`
`FURTHER ORDERED that Patent Owner is authorized to file, by
`
`December 21, 2016, a Sur-reply, limited to five pages, that responds to
`
`Petitioner’s arguments in the Reply.
`
`3
`
`
`
`
`
`
`
`
`
`IPR2016-01441
`Patent 8,225,408 B2
`
`PETITIONER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Andrew Brown
`asbrown@wsgr.com
`
`Matthew Argenti
`margenti@wsgr.com
`
`PATENT OWNER:
`
`James Hannah
`jhannah@kramerlevin.com
`
`Jeffrey Price
`jprice@kramerlevin.com
`
`Michael Lee
`mhlee@kramerlevin.com
`
`Shannon Hedvat
`shedvat@kramerlevin.com
`
`Sang Hui Michael Kim
`Michael.kim@alston.com
`
`
`
`
`4
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