Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-01443
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S SUR-REPLY REGARDING
`35 U.S.C. §§ 315(e)(1), 325(d), AND 312
`
`
`
`
`
`
`
`
`
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-01443
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S SUR-REPLY REGARDING
`35 U.S.C. §§ 315(e)(1), 325(d), AND 312
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`Pursuant to the Board’s November 10, 2016, authorization, Finjan, Inc.,
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`(“Patent Owner”) submits this sur-reply regarding petitioner estoppel under 35
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`U.S.C. §§ 315(e)(1), 325(d), and 312, in response to Petitioner’s Reply. Paper 7
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`(“Petitioner Reply”). As set forth below, the Board should exercise its discretion
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`to deny institution under 35 U.S.C. § 325(d) and/or terminate the proceedings
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`pursuant to 35 U.S.C. § 312. Petitioner is involved in two other IPR proceedings
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`involving U.S. Patent No. 8,677,494, each of which is based on the same primary
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`reference at issue in this petition. Petitioner cannot maintain a proceeding with
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`respect to any ground that Petitioner raised or reasonably could have raised
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`previously, as is the case here.
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`I.
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`THE PETITION SHOULD BE REJECTED AS INCOMPLETE
`UNDER 35 U.S.C. § 312
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`Petitioner did not comply with the requirements of 35 U.S.C. § 312 by
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`failing to identify (1) claims 1 and 10 as challenged claims or (2) the “grounds on
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`which the challenge to each claim is based.” See Paper 6 (“Prelim. Resp.”) at 15–
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`16. Indeed, Petitioner explicitly recognizes that “[p]arent claims must be
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`considered to the extent the challenged claims incorporate their limitations,” as is
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`the case here. Petitioner Reply at 5. Petitioner’s omission of the independent
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`claims in the current proceeding thus appears to be nothing more than an attempt to
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`evade the estoppel of 35 U.S.C. §§ 315 and 325 which, as discussed below, are
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`fatal to this Petition. The Board should not permit such gamesmanship and should
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`1
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`
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`dismiss the Petition based on Petitioner’s failure to meet its statutory obligation
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`under 35 U.S.C. § 312(a)(3).
`
`II. THE PETITION SHOULD BE REJECTED UNDER 35 U.S.C. § 325(D)
`The Board should also exercise its discretion to deny the Petition under
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`35 U.S.C. § 325(d) because the Petition reargues substantially the same prior art
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`and substantially the same arguments that Petitioner previously presented in Case
`
`Nos. IPR2016-00890 and IPR2016-01174.1 See Prelim. Resp. at 9–10; see also 35
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`U.S.C. § 325(d). Specifically, Petitioner’s challenge of dependent claims 7–9 and
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`16–18 requires the additional challenge of independent claims 1 and 10, which are
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`at issue in those cases. If Petitioner had intended all along to challenge dependent
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`claims 7–9 and 16–18 based on Ji, Luotonen, Apperson, and Lo—notably,
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`Petitioner does not argue that these references were not readily available at the
`
`time it filed its first two petitions—Petitioner should have done so in its earliest
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`petition, rather than file serial petitions concerning the ‘494 Patent.
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`Petitioner, however, fails to acknowledge that the Board has granted joinder
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`in cases where the grounds differed from the grounds at issue in the underlying
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`proceeding. See Prelim. Resp. at 13 (citing Oxford Nanopore Techs. LTD. v.
`
`University of Washington, Case IPR2015-00057, Paper 10 (PTAB Apr. 27, 2015)).
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`1 As discussed below, Petitioner is essentially challenging claims 1 and 10 of the
`
`’494 Patent.
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`2
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`
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`Instead, Petitioner attempts to justify its piecemeal petitions by stating that its
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`petitions were only three months apart. Petitioner Reply at 4. This is irrelevant to
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`§ 325 analysis and only bolsters Patent Owner’s argument because Patent Owner is
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`forced to respond to substantially the same arguments in a shorter timeline.
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`The cases that Petitioner cites are inapposite because those cases concerned
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`claims that were substantively different, as Petitioner acknowledges. Petitioner
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`Reply at 3–4; Koito Mfg. Co. v. Adaptive Headlamp Techs., Inc., IPR2016-00079,
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`Paper 11 at 38 (PTAB May 5, 2016) (concerning claims that were amended during
`
`inter partes reexamination). Am General is similarly inapplicable because the
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`basis of Patent Owner’s § 325(d) argument was that the prior art was presented
`
`during prosecution. Am Gen. LLC v. UUSI, LLC, IPR2016-01050, Paper 17 at 4
`
`(PTAB Nov. 14, 2016). Westlake Services turned on the “unique circumstances”
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`of a material intervening change in law. Westlake Servs., LLC v. Credit Accept.
`
`Corp., CBM2014-00176, Paper 28 at 7 (PTAB May 14, 2015). Moreover, here,
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`the Petition concerns dependent claims in the same patent, implicitly challenging
`
`the independent claims for which the Board has already instituted review.
`
`Additionally, Petitioner’s argument that “the rules contemplate multiple co-
`
`pending reviews over subsets of claims as a consequence of the page limits” is a
`
`blatant mischaracterization of the USPTO’s response to comment 85 found at 77
`
`Fed. Reg. 48612, 48634 (2012). In particular, in response to a concern that “page
`
`3
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`
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`limits impact the rights of the parties and the ability of the parties to fully present
`
`arguments,” the USPTO indicated that its “modification to the proposed rules
`
`regarding page limits… permit a party to have a great deal of flexibility in
`
`presenting its case and responding to the opposing party.” Accordingly, far from
`
`encouraging this type of behavior, the USPTO explicitly indicated that such
`
`concerns were unfounded.
`
`Therefore, the Board should reject the Petition under 35 U.S.C. § 325(d).
`
`III. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1)
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`35 U.S.C. § 315(e)(1) will estop Petitioner from maintaining this IPR.
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`Petitioner’s grounds raised in the current Petition either were raised or “reasonably
`
`could have been raised” in either of Petitioner’s two previous petitions concerning
`
`the ’494 Patent, mandating dismissal of this proceeding. See Prelim. Resp. at 6–8;
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`Petitioner’s Reply at 2. In particular, the unnumbered ground, which proposes that
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`“Swimmer Discloses or Renders Obvious Each Element of Independent Claims 1
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`and 10” was explicitly raised in IPR2016-00890, and the numbered grounds 1–4—
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`involving Ji, Lo, Luotonen, and Apperson—reasonably could have been raised in
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`either of those proceedings. See Petition at 18–29.
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`Petitioner is now challenging the dependent claims of independent claims
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`for which the Board has already instituted review and for which a final written
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`decision will issue no later than March 18, 2017. Although Petitioner challenges a
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`4
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`
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`number of claims not at issue in the instituted proceedings, claims 7–9 and 16–18
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`depend from the claims already subject to review and rely wholly on Petitioner’s
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`unnumbered ground, which it will be estopped from maintaining. See, e.g.,
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`Petition at 30 (“[a]s discussed above, Swimmer teaches or suggests each element
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`of claims 1 and 10. See supra, Section VII.A.”). Petitioner’s tactic of bringing a
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`third Petition styled as only challenging dependent claims is a transparent attempt
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`to avoid the estoppel that would arise from once again directly challenging
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`independent claims 1 and 10. Accordingly, because Petitioner’s challenge to the
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`dependent claims encompasses independent claims 1 and 10, Petitioner will be
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`estopped from maintaining this proceeding.
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`Allowing this case to proceed would declaw the petitioner estoppel
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`provision of 35 U.S.C. § 315(e)(1) to the point of rendering it useless, and the
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`Board and parties will have needlessly expended substantial resources during the
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`interim. The petitioner estoppel provision of § 315(e)(1) is essential to preserving
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`the balance of interests that the IPR scheme strikes between the interests of the
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`patent owner and the petitioner by preventing a petitioner from having the
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`opportunity subjecting the patent owner to the harassment and burden of serial
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`challenges based on information which was reasonably available to the petitioner
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`at the time it filed an IPR. Consistent with this Congressional policy, the Board
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`should exercise its discretion to deny the Petition.
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`5
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
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`IV. CONCLUSION
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`For the reasons set forth above, the Board should deny institution of
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`IPR2016-01443.
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`Dated: November 30, 2016
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`(Case No. IPR2016-01443)
`
`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
`
`6
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`
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`Patent Owner’s Sur-Reply
`IPR2016-01443 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Sur-Reply Regarding 35 U.S.C. §§
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`315(e)(1), 325(d), and 312 was served on November 30, 2016, by filing this
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`document through the Patent Review Processing System as well as delivering via
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`electronic mail upon the following counsel of record for Petitioner:
`
`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
`
`
`
`
`
`
`
`
`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
`
`
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