Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`
`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
`
`__________________________________________________________
`
`PATENT OWNER’S SUR-REPLY
`REGARDING 35 U.S.C. § 315(e)(1) AND FEE DEFICIENCY
`
`
`
`
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`
`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
`
`__________________________________________________________
`
`PATENT OWNER’S SUR-REPLY
`REGARDING 35 U.S.C. § 315(e)(1) AND FEE DEFICIENCY
`
`
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`Pursuant to the Board’s Order (Paper 7), Patent Owner Finjan, Inc., (“PO”)
`
`submits this sur-reply in response to Petitioner’s Reply (Paper 9, “Pet. Reply”)
`
`regarding estoppel under 35 U.S.C. § 315(e)(1) and fee deficiency.
`
`I.
`
`PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1)
`
`The Board should deny institution because the Petition is moot. 35 U.S.C.
`
`§ 315(e)(1) will estop Petitioner from maintaining this proceeding upon the
`
`issuance of a Final Written Decision in either of the two other IPR proceedings
`
`involving U.S. Patent No. 8,225,408, IPR20165-02001 and IPR2016-00157
`
`(together, the “Prior Petitions”). Paper 6 (“Prelim Resp.”) at 8-10. Petitioner’s
`
`tactic of bringing a third Petition styled as only challenging dependent claims is a
`
`transparent attempt to avoid the estoppel from once again directly challenging
`
`independent claims 1, 9, 22, 23, 29 and 35.
`
`Petitioner does not present any reason it could not have earlier asserted these
`
`grounds. See Pet. Reply at 2-3. Petitioner is raising substantially the same prior
`
`art and invalidity arguments as presented in the Prior Petitions. See Prelim. Resp.
`
`at 10-15. Petitioner admits as much: “[T]he Board has previously instituted inter
`
`partes review of the ‘408 patent, including of the independent claims from which
`
`[the challenged claims] depend . . . . This Petition presents essentially the same
`
`disclosure and arguments for those independent claims.” Petition at 1 (emphasis
`
`added).
`
`1
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`Petitioner incorrectly argues estoppel does not apply because it is
`
`challenging different claims from those at issue in the Prior Petitions. However,
`
`the challenged dependent claims all depend from the same independent claims
`
`challenged in the Prior Petitions, and the Petition directly challenges the validity of
`
`those independent claims. Indeed, while Petitioner contends it is not challenging
`
`the validity of the independent claims, the heart of its Petition is a twenty five page
`
`section arguing that the independent claims are obvious. Petition at 16-41 (Section
`
`VII.A.: “Chandnani and Kolawa Disclose or Render Obvious Each Element of
`
`Independent Claims 1, 9, 23, and 29”).
`
`A finding in one of the Prior Petitions that an independent claim is valid
`
`would necessarily entail a finding that all of its dependent claims are valid, and a
`
`finding in this case that a dependent claim is invalid would necessarily entail a
`
`finding that its parent independent claim is invalid. See K-Swiss Inc. v. Glide N
`
`Lock GmbH, 567 Fed. App’x 906, 911 (Fed. Cir. 2014). Indeed, the Board already
`
`found in connection with another petition challenging the same patent that review
`
`of dependent claims requires review of the claims from which they depend. Palo
`
`Alto Networks, Inc. v. Finjan, Inc., IPR2016-00157, Paper 3 at 2 (PTAB Nov. 17,
`
`2015) (petition defective because “The challenged claims depend from claims 1
`
`and 9, therefore review of claims 1 and 9 is required.”). Therefore, the claims at
`
`issue in this Petition substantially overlap with the claims at issue in the Prior
`
`2
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`Petitions and § 315(e)(1) applies.
`
`PO’s request to deny institution due to estoppel is not premature. Because
`
`estoppel will require dismissal of this case once a Final Written Decision issues in
`
`one of the Prior Petitions, PO requests that the Board consider the policy goal of
`
`petitioner estoppel (to have petitioners promptly file all of their challenges, rather
`
`than file serial challenges) and the substantial waste of resources of the Board and
`
`the parties attendant to continuing both proceedings and, therefore, exercise its
`
`discretion to not institute the Petition. Conopco Inc. dba Unilever v. Proctor &
`
`Gamble Co., Case No. IPR2014-00628, Paper 23 at 5 (PTAB Mar. 20, 2015)
`
`(Board did not err “in selecting the result that removes an incentive for petitioners
`
`to hold back prior art for successive attacks, and protects patent owners from
`
`multifarious attacks on the same patent claims”).
`
`Allowing this case to proceed until such time as the Board issues Final
`
`Written Decisions in the earlier-filed cases would declaw the petitioner estoppel
`
`provision of 35 U.S.C. § 315(e)(1) to the point of rendering it useless, and the
`
`Board and parties will have needlessly expended substantial resources during the
`
`interim. The legislative history of the AIA confirms that the rules were designed to
`
`prevent precisely the type of duplicative challenges raised by Petitioner here by
`
`pursuing multiple instituted IPR proceedings on the same claims. See H.R. Rep.
`
`No. 112-98, pt. 1, at 48 (2011) (warning that the AIA’s procedures, including IPR,
`
`3
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`should “not . . . be used as tools for harassment or a means to prevent market entry
`
`through repeated litigation and administrative attacks on the validity of a patent.”).
`
`Consistent with this Congressional policy and the fact that all arguments in
`
`the Petition could have been raised in the Prior Petitions, the Board should exercise
`
`its discretion to deny the Petition and not permit Petitioner to file serial petitions
`
`raising similar arguments against the same claims.
`
`II. THE PETITION SHOULD BE DENIED BECAUSE PETITIONER
`DID NOT PAY THE REQUISITE FEE
`
`Petitioner concedes it did not timely pay the requisite fee. Pet. Reply at 5;
`
`Prelim. Resp. at 20-22. Because Petitioner is not entitled to a filing date within
`
`one year of PO’s complaint against it, the Petition should be dismissed.
`
`While Petitioner mischaracterizes its failure as an “inadvertent Board error,”
`
`it offers no evidence that the E2E system was malfunctioning or incorrectly
`
`calculated the applicable fees or that it followed the procedure for E2E errors, and
`
`any such error would be attributable to Petitioner’s failure to identify the
`
`challenged claims under 35 U.S.C. § 312. See www.uspto.gov/patents-application-
`
`process/patent-trial-and-appeal-board/ptab-e2e-frequently-asked-questions at A2;
`
`see also Prelim. Resp. at 15-20; Terremark N. Am. LLC v. Joao Control &
`
`Monitoring Sys., LLC, IPR2015-01482, Paper 10 at 8 (PTAB Aug. 5, 2015)
`
`(rejecting motion to recognize earlier filing date based on alleged PRPS
`
`malfunction where petitioner failed to carry its burden to prove malfunction and
`
`4
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`establish why it was unable to timely pay the filing fee).
`
`Even if the paralegal who accorded the Petition a filing date had detected the
`
`underpayment and notified Petitioner at that time, it would have been too late for
`
`Petitioner to rectify the issue, as it chose to file on the last possible date. See Paper
`
`No. 5 (Notice mailed Aug. 20); see also Paper No. 2 (Petition filed July 15, 2016);
`
`Ex. 2043 (Complaint served July 15, 2015).
`
`No matter the reason for its underpayment, Petitioner had the statutory
`
`obligation to pay the full fees. The Petition is plainly not entitled to a filing date
`
`until Petitioner submits the requisite payment, and Petitioner offers no argument to
`
`the contrary. 37 C.F.R. § 42.103 (“No filing date will be accorded to the petition
`
`until full payment is received.”) (emphasis added); 37 C.F.R. § 42.106 (“A
`
`petition . . . will not be accorded a filing date until . . . the fee to institute required
`
`in § 42.105(a)” is satisfied) (emphasis added).
`
`Thus, the Petition should be denied for failure to pay the requisite fee before
`
`the one year deadline.
`
`III. CONCLUSION
`
`For the above reasons, the Board should deny institution of IPR2016-01441.
`
`
`
`
`
`5
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Michael Lee (Reg. No. 63,941)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey H. Price (Reg. No. 69,141)
`Shannon Hedvat (Reg. No. 68,417)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8000
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
`Attorneys for Patent Owner
`
`Dated: December 21, 2016
`
`(Case No. IPR2016-01441)
`
`6
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01441 (U.S. Patent No. 8,225,408 B2)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Sur-Reply Regarding 35 U.S.C. §
`
`315(e)(1) and Fee Deficiency was served on December 21, 2016, by filing this
`
`document through the Patent Review Processing System as well as delivering via
`
`electronic mail upon the following counsel of record for Petitioner:
`
`Matthew A. Argenti
`WILSON SONSINI GOODRICH &
`ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`margenti@wsgr.com
`
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`7
`
`Michael T. Rosato
`Andrew. S. Brown
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
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