Paper No. _____
`Filed: December 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_____________________________
`
`Case IPR2016-01441
`Patent No. 8,225,408 B2
`_____________________________
`
`
`
`BLUE COAT’S REPLY TO THE PRELIMINARY RESPONSE
`REGARDING 35 U.S.C. §§ 312, 315(e)(1) AND 325(d)
`
`
`Filed: December 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_____________________________
`
`Case IPR2016-01441
`Patent No. 8,225,408 B2
`_____________________________
`
`
`
`BLUE COAT’S REPLY TO THE PRELIMINARY RESPONSE
`REGARDING 35 U.S.C. §§ 312, 315(e)(1) AND 325(d)
`
`
`
`Case IPR2016-01441
`Patent 8,225,408 B2
`
`The Board authorized (Paper 7) Petitioner Blue Coat Systems LLC to file
`
`this reply to Patent Owner’s (“PO”) preliminary response contention that the
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`petition is procedurally barred under 35 U.S.C. §§ 312, 325(d), and 315(e)(1).
`
`PO’s contention is without merit. First, there is no bar to challenging only
`
`dependent claims. As for estoppel, Blue Coat is not now, nor could it ever be,
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`estopped by final written decisions that do not cover the challenged claims—
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`claims 2, 8, 11, 24-28, and 30-34—which were never previously challenged in any
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`IPR. For similar reasons, the petition is not redundant and does not warrant the
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`extraordinary application of §325(d) PO requests.
`
`Furthermore, PO’s complaints about “piecemeal and harassing challenges”
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`ring hollow considering that it is PO’s own “divide and conquer” litigation strategy
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`that has led to these petitions. Regarding the ’408 patent, PO filed complaints
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`alleging infringement of the ’408 patent against FireEye on July 8, 2013, against
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`Websense on September 23, 2013, against Proofpoint on December 16, 2013,
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`against Palo Alto Networks on November 3, 2014, and against Blue Coat on July
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`15, 2015. And PO has asserted different sets of claims against different defendants
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`at different times; for example, the challenged claims were asserted against Blue
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`Coat at the time the Petition in this proceeding was filed (Ex.2043 at 20 “one or
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`more claims”), though it is believed they are not being asserted against Palo Alto
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`Networks. Additionally, attempted gaming of estoppel under §315(b) is a valid
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`1
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`Case IPR2016-01441
`Patent 8,225,408 B2
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`concern, as PO has sued Blue Coat based on different sets of claims of the same
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`patents at different times. See, e.g., Ex.2043, Count V. That Blue Coat would
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`defend itself by advancing unpatentability challenges is neither surprising nor
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`harassing. Blue Coat has advanced its challenges in an efficient manner that
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`actually minimizes burden—for both PO and the Board.
`
`I.
`
`§ 315(e)(1): ONLY “WITH RESPECT TO THAT CLAIM”
`
`PO argues that Blue Coat “will be estopped” by final written decisions in
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`related cases involving different claims, namely the parent claims from which the
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`presently challenged claims depend. POPR 8-10. PO is wrong because the claims
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`challenged here were not challenged in those related cases, and § 315(e)(1)
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`estoppel applies and a claim-by-claim basis. § 315(e)(1) (“The petitioner…may not
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`request or maintain a proceeding…with respect to that claim”) (emphasis added).
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`Thus final written decisions that do not involve the claims challenged in the
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`present petition are of no consequence. See Westlake Servs., LLC v. Credit
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`Acceptance Corp., CBM2014-00176, Paper 28 at 4-5 (prec.) (estoppel applied on a
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`claim-by-claim basis); Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309,
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`1316 (Fed. Cir. 2016) (no estoppel on uninstituted claims).
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`To the extent one would argue Blue Coat “reasonably could have”
`
`challenged the dependent claims in the related proceedings, Blue Coat could not
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`have reasonably done so, as explained in § II below. And in any case, § 315(e)(1)
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`2
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`Case IPR2016-01441
`Patent 8,225,408 B2
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`refers to grounds that could have been raised with respect to the same previously
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`challenged claims, not different claims that could have been challenged.
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`§ 315(e)(1) (“with respect to that claim on any ground that the petitioner raised or
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`reasonably could have raised”) (emphasis added). PO’s argument regarding the
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`“new reference” to Knuth (POPR at 9) underscores how PO’s arguments are
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`misplaced—Knuth is “new” here because the claims against which it is being
`
`applied were not previously challenged.
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`Moreover, PO admits that Blue Coat is not presently estopped, so its request
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`is premature at best. POPR 8-9. The Board can later terminate a review if it ever
`
`becomes moot. Kofax, Inc., v. Uniloc USA, Inc., IPR2015-01207, Paper 22 at 8,
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`11-12 (terminating review). Even assuming arguendo that estoppel could
`
`theoretically apply, termination of the proceeding would be neither automatic nor
`
`required. The Board may, for example, terminate an estopped party, yet maintain
`
`the proceeding itself. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49
`
`at 5-6 (noting public interest in resolving patentability).
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`The present review involves different claims compared to claims previously
`
`challenged. PO’s request should be denied.
`
`II.
`
`§ 325(d): NO REDUNDANCY
`
`There can be no redundancy when the claims actually challenged are
`
`literally and substantively different compared to the previously challenged claims,
`
`
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`3
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`Case IPR2016-01441
`Patent 8,225,408 B2
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`as is the case here. See Koito Mfg. Co., Ltd. v. Adaptive Headlamp Techs., Inc.,
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`IPR2016-00079, Paper 11 at 38 (no redundancy for claims that were amended and
`
`differed substantively); AM Gen. LLC v. UUSI, LLC, IPR2016-01050, Paper 17
`
`at 4 (art applied against claims in parent patent not redundant against claims in
`
`child patent); Life Techs. Corp. v. Unisone, CBM2016-00025 (no redundancy for
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`subsequent challenge to different claim set). The Ford Motor Co. case cited by PO
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`(POPR at 13) is inapposite, because there, the previously challenged and
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`unchallenged claims were conceded as having the same scope. Ford Motor Co., v.
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`Paice LLC, IPR2015-00767, Paper 14 at 7. Here, the challenged claims do not
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`have the same scope as their parent claims. Cf. POPR 13.
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`PO argues that Blue Coat should have added the claims to joinder petitions.
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`But the Board encourages essentially identical joinder petitions. E.g., Enzymotec
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`Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 at 6, citing 157 Cong. Rec.
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`S1376 (daily ed. Mar. 8, 2011) (“identical petition will be joined”). PO’s
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`suggestions of “waste” are ironic given identical joinder petitions conserve Board
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`resources and minimize burden. And an exercise of discretion punishing a party for
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`complying with Board joinder preferences would be arbitrary and capricious. PO
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`does not explain how the cases it cites are relevant in a joinder context.
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`And, as noted above (page1-2), PO’s serial harassment argument ignores the
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`fact that PO’s chosen litigation tactics led to the present petitions. Blue Coat is
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`4
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`Case IPR2016-01441
`Patent 8,225,408 B2
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`entitled to defend itself, and has advanced its unpatentability challenges in efficient
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`and minimally burdensome manner under the circumstances created by the PO.
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`III. § 312(a)(3): “EACH CLAIM CHALLENGED”
`
`PO improperly conflates the different concepts of “challenged claims”
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`versus those “considered.” POPR 15-20. Parent claims must be considered to the
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`extent the challenged claims incorporate their limitations, but dependent claims are
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`separate claims and must be judged on their own merits. Samsung Elecs. Co., Ltd.
`
`v. Straight Path IP Group, Inc., IPR2014-01367, Paper 46 at 3-4 (vacating decision
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`on dependent claim). Blue Coat has correctly described the scope of its present
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`challenge. While incorporated limitations from the parent claims require
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`consideration, PO’s treating such consideration as a challenge to those claims is
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`contrary to the rules and well-established dependency law. E.g., § 42.15(a)(3)
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`(payment for unchallenged parent claims). And even if PO were correct, the only
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`remedy might be to deny institution for the putatively challenged parent claims, not
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`to deny institution for the entire IPR petition.
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`As to PO’s fee arguments (POPR at 20-22), as instructed, Blue Coat has
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`sought correction of the inadvertent Board error in calculating fees. Paper 7 at 2.
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`IV. CONCLUSION
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`For the reasons set forth above, the relief Patent Owner seeks is unfounded,
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`extraordinary, and extreme. Trial should be instituted.
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`5
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`Case IPR2016-01441
`Patent 8,225,408 B2
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`
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`Respectfully submitted,
`
`Date: December 16, 2016
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
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`6
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01441
`Patent 8,225,408 B2
`
`I certify that the foregoing Blue Coat’s Reply to the Preliminary Response
`
`Regarding 35 U.S.C. §§ 312, 315(e)(1) and 325(d) was served on this 16th day of
`
`December 2016 on the Patent Owner at the correspondence address of the Patent
`
`Owner as follows:
`
`James Hannah
`Michael Lee
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Email: jhannah@kramerlevin.com
`Email: mhlee@kramerlevin.com
`
`Jeffrey H. Price
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Email: jprice@kramerlevin.com
`Email: shedvat@kramerlevin.com
`Email: svdocketing@kramerlevin.com
`
`Michael Kim
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Email: mkim@finjan.com
`
`
`
`
`Date: December 16, 2016
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`
`
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`
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`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`7
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