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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2017-00157
`Patent 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Board Should Dismiss The Petition Because it is Unquestionably
`Time Barred Under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b) ............... 2
`
`Page
`
`III. Conclusion ....................................................................................................... 5
`
`
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`- i -
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`
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Linear Tech.
`Corp., Case No. IPR2015-01994 .......................................................................... 3
`
`Linear Tech. Corp. v. In-Depth Test LLC,
`Case No. IPR2015-01994, Paper No. 7 (P.T.A.B. Oct. 20, 2015) ....................... 2
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case No. IPR2016-00165 ................................................................................. 1, 3
`
`Symantec Corp. v. Finjan, Inc.,
`Case No. IPR2015-01547, Paper 9 (P.T.A.B. Jan. 14, 2016) ............................... 1
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`Case No. CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ......................... 2
`
`Statutes
`
`35 U.S.C. § 315(b) ............................................................................................. 1, 2, 3
`
`35 U.S.C. § 315(c) ..................................................................................................... 4
`
`Other Authorities
`
`37 C.F.R. 42.101(b) ................................................................................................... 3
`
`37 C.F.R. §42.101(b) ......................................................................................... 1, 2, 3
`
`37 C.F.R. § 42.122(b) ................................................................................................ 5
`
`
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`- ii -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
`
`
`
`Description
`
`EXHIBIT LIST
`
`
`Exhibit-2001 Proof of Service of Summons, Finjan, Inc., v. FireEye, Inc., Case
`No. 13-cv-03133 (N.D. Cal.)
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`- iii -
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`
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
`
`I.
`
`INTRODUCTION
`
`On October 28, 2016, FireEye, Inc., (“Petitioner” or “FireEye”) submitted a
`
`Petition to institute an inter partes review (“IPR”) challenging claims 1–2, 8–9, 11,
`
`23–28, and 29–34 of U.S. Patent No. 8,225,408 (Ex. 1001, “the ‘408 Patent”). The
`
`instant Petition is unquestionably time-barred under 35 U.S.C. § 315(b) and 37
`
`C.F.R. §42.101(b). In an effort to evade the statutory timing restriction, FireEye
`
`seeks to join a rejected inter partes review brought by Blue Coat Systems, LLC,
`
`(“Blue Coat”). See Motion for Joinder, FireEye, Inc., v. Finjan, Inc., Paper No. 3
`
`(“Joinder Motion”) (requesting to join Blue Coat Systems, LLC, v. Finjan, Inc.,
`
`Case No. IPR2016-01441 (“the ‘1441 Case”); see also Decision Denying
`
`Institution of Inter Partes Review, Blue Coat Systems, LLC, v. Finjan, Inc., Case
`
`No. IPR2016-01441, Paper No. 14 (P.T.A.B. Jan. 23, 2017) (denying institution of
`
`inter partes review of the ‘1441 Case).
`
`Finjan, Inc. (“Patent Owner” or “Finjan”) requests that the Board deny the
`
`Petition at least because 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b) prohibit
`
`Petitioner’s time-barred Petition because the Board already denied institution of
`
`inter partes review of the ‘1441 Case, which is the very case that Petitioner seeks
`
`to join. Because “a request for joinder is appropriate only if a decision granting
`
`institution has been entered in the inter partes review for which joinder is
`
`requested,” and the inter partes review that Petitioner’s motion is requested for has
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`- 1 -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`already been denied, joinder is not appropriate. See Linear Tech. Corp. v. In-
`
`Depth Test LLC, Case No. IPR2015-01994, Paper No. 7 at 4 (P.T.A.B. Oct. 20,
`
`2015)(“It is clear from both the statute and the rule that a request for joinder is
`
`appropriate only if a decision granting institution has been entered in the inter
`
`partes review for which joinder is requested.”).
`
`Although there are a variety of reasons why the ‘408 Patent is valid, this
`
`Preliminary Response focuses on only limited reasons why inter partes review
`
`should not be instituted. See Travelocity.com L.P. v. Cronos Techs., LLC, Case
`
`No. CBM2014-00082, Paper 12 at 10 (P.T.A.B. Oct. 16, 2014) (“[N]othing may be
`
`gleaned from the Patent Owner’s challenge or failure to challenge the grounds of
`
`unpatentability for any particular reason.”). Accordingly, while Patent Owner
`
`reserves its right to advance additional arguments in the event that trial is instituted
`
`on any ground, the deficiencies of the Petition noted herein are more than
`
`sufficient for the Board to find that Petitioner has not met its burden to demonstrate
`
`a reasonable likelihood that it would prevail in showing unpatentability of any of
`
`the challenged claims.
`
`II. THE BOARD SHOULD DISMISS THE PETITION BECAUSE IT IS
`UNQUESTIONABLY TIME BARRED UNDER 35 U.S.C. § 315(B) AND 37 C.F.R.
`§ 42.101(B)
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
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`- 2 -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent.” See also 37 C.F.R. § 42.101(b)
`
`(mirroring the language of section 315(b) in dictating “who may petition for inter
`
`partes review.”). Petitioner admits that “Patent Owner filed a complaint asserting
`
`the ’408 patent against FireEye.” Joinder Motion at 3; see also Ex. 2001, Proof of
`
`Service of Summons, Finjan, Inc., v. FireEye, Inc., Case No. 13-cv-03133 (N.D.
`
`Cal.) (indicating that Petitioner was served with a complaint for infringement of
`
`the ‘408 Patent on July 11, 2013, which is more than three years before the instant
`
`Petition was filed). Thus, Petitioner’s belated request for inter partes review of the
`
`‘408 Patent should be denied at least because the Petition is prohibited under the
`
`time-bar set forth by 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b).
`
`Because Petitioner seeks to join a proceeding that has already been denied
`
`by the Board, its Joinder Motion should be denied as the law dictates that joinder
`
`cannot be appropriate where there is no “decision granting institution has been
`
`entered in the inter partes review for which joinder is requested.” See Linear
`
`Tech. Corp., Case No. IPR2015-01994, Paper No. 7 at 4 (“It is clear from both the
`
`statute and the rule that a request for joinder is appropriate only if a decision
`
`granting institution has been entered in the inter partes review for which joinder is
`
`requested.”). Indeed, on January 23, 2017, the Board denied institution of inter
`
`partes review of the very case that Petitioner seeks to join, namely the ‘1441 Case.
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`- 3 -
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`
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
`
`See Decision Denying Institution, Blue Coat Systems, LLC, v. Finjan, Inc., Case
`
`No. IPR2016-01441, Paper No. 14 (P.T.A.B. Jan. 23, 2017). Thus, joinder should
`
`be denied as “the inter partes review for which joinder is requested” was denied.
`
`In fact, under 35 U.S.C. § 315(c) it is clear that the Director may only join a
`
`party to an inter partes review proceeding after the proceeding has been instituted:
`
`If the Director institutes an inter partes review, the Director,
`in his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added). The conditional phrase highlighted above
`
`leaves no doubt that a motion for joinder is only appropriate when the case to be
`
`joined is an instituted inter partes review proceeding. Similarly, the Patent Rules
`
`provide that any request for joinder must be filed within one month of the
`
`institution date of the inter partes review to be joined:
`
`Joinder may be requested by a patent owner or petitioner. Any
`request for joinder must be filed, as a motion under §42.22, no
`later than one month after the institution date of any inter
`partes review for which joinder is requested. The time
`period set forth in § 42.101(b) shall not apply when the petition
`is accompanied by a request for joinder.
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`- 4 -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`37 C.F.R. § 42.122(b). That is, a request for joinder is a request to join an inter
`
`partes review, which only exists after the Board’s institution decision.
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`Accordingly, Petitioner’s Joinder Motion should be denied as it seeks to join a
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`proceeding that has already been denied.
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`III. CONCLUSION
`
`Petitioner has not established a reasonable likelihood that it will prevail in
`
`establishing that claims 1–2, 8–9, 11, 23–28, and 29–34 of the ‘408 Patent are
`
`invalid. Finjan accordingly requests that the Board deny institution of inter partes
`
`review of the ‘408 Patent.
`
`
`
`Dated: February 3, 2017
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
` jhannah@kramerlevin.com
`Michael Lee (Reg. No. 63,941)
` mhlee@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700
`Fax: 212.715.8000
`
`Jeffrey Price (Reg. No. 69,141)
` jprice@kramerlevin.com
`Shannon Hedvat (Reg. No. 68,417)
` shedvat@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`Tel: 212.715.9000
`Fax: 212.715.8000
`
`Attorneys for Patent Owner
`
`Case No. IPR2017-00157
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`- 6 -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`CERTIFICATE OF COMPLIANCE WITH 37 C.F.R. § 42.24
`
`This paper complies with the type-volume limitation of 37 C.F.R. § 42.24.
`
`The paper includes 1,113 words, excluding the parts of the paper exempted by
`
`§ 42.24(a).
`
`This paper also complies with the typeface requirements of 37 C.F.R. §
`
`42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)&(iv).
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
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`- 7 -
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`Patent Owner’s Preliminary Response
`IPR2017-00157 (U.S. Patent No. 8,225,408)
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`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 Preliminary Response was served on
`
`February 3, 2017, by filing this document through the PTAB E2E as well as
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`delivering via electronic mail upon the following counsel of record for Petitioner:
`
`
`James M. Heintz
` jim.heintz@dlapiper.com
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`
`
`Jeffrey R. Cole
` jeff.cole@dlapiper.com
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`
`
`
`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`
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`- 8 -
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