`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`Cisco System, Inc.
`Petitioner,
`
`v.
`
`
` FINJAN, INC.,
`Patent Owner.
`____________
`
`U.S. Patent No. 8,677,494
`Issue Date: March 18, 2014
`Title: Malicious Mobile Code Runtime Monitoring System and Methods
`_____________________
`
`Inter Partes Review No.: IPR2017-02155
`_____________________
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DM2\8567802.1
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`I.
`BACKGROUND ............................................................................................. 1
`II.
`III. THERE IS NO FACTUAL OR LEGAL BASIS FOR THE BOARD
`TO EXERCISE ITS DISCRETION ................................................................ 3
`A.
`The Equities Favor the Petitioner .......................................................... 3
`B.
`General Plastics Factors ........................................................................ 4
`1.
`Factor 1- Cisco has not previously filed a Petition ..................... 4
`2.
`Factors 2, 4 and 5- Cisco had no reason to file the Petition
`earlier........................................................................................... 4
`Factor 3- Cisco did not delay filing its Petition so that it can
`tailor its arguments ...................................................................... 5
`Factors 6 and 7 –The finite resources of the Board are not
`burdened nor unnecessarily delayed. .......................................... 5
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`3.
`
`4.
`
`
`DM2\8567802.1
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Finjan, Inc. v. Cisco Systems, Inc., Case 5:17-cv-00072, D.I. 1
`(N.D.Cal. Jan. 12, 2017) ....................................................................................... 2
`Finjan, Inc. v. Sophos, Inc., Case 3:14-cv-01197, D.I. 1 (N.D.Cal.
`Mar. XX, 2014) ..................................................................................................... 1
`Finjan, Inc. v. Zscaler, Case 3:17-cv-06946, D.I. 1 (N.D.Cal. Dec.
`XX, 2017) ............................................................................................................. 2
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 (PTAB Sept. 6, 2017) ............................................................................ 1
`NetApp Inc. v. Reatime Data LLC, IPR2017-01354, Paper 16 (PTAB
`Nov. 14, 2017) ...................................................................................................... 3
`Statutes
`35 U.S.C. §314(a) ...................................................................................................... 1
`
`
`
`DM2\8567802.1
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`In Patent Owner’s Preliminary Response, the Patent Owner (Finjan) requests
`
`that the Board exercise its discretion under 35 U.S.C. §314(a) and deny institution
`
`based on the General Plastic decision. Gen. Plastic Indus. Co. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017). However, Patent
`
`Owner’s application of the General Plastic factors to this case is without legal
`
`support. Specifically, Petitioner (Cisco) had not been accused of infringement of
`
`the ‘494 Patent in litigation at the time any of the previous IPRs challenging the
`
`‘494 Patent were filed by other parties, and therefore General Plastic simply does
`
`not apply. Moreover, even if General Plastic did apply, the factors weigh in
`
`Petitioner’s favor, especially in view of the fact that any alleged delay in bringing
`
`this IPR petition was due to Patent Owner’s own litigation tactics.
`
`II. BACKGROUND
`The ‘494 Patent has been the subject of multiple lawsuits filed by Patent
`
`Owner against various defendants over the last several years. Instead of filing all
`
`lawsuits in close temporal proximity, Patent Owner filed the lawsuits in serial
`
`fashion. For example, Patent Owner filed its first lawsuit alleging infringement of
`
`the ‘494 Patent in March 2014 (Finjan, Inc. v. Sophos, Inc., Case 3:14-cv-01197,
`
`D.I. 1 (N.D.Cal. Mar. 14, 2014)), and recently filed its twelfth lawsuit alleging
`
`
`DM2\8567802.1
`
`1
`
`
`
`
`
`infringement of the ‘494 Patent in December 2017 (Finjan, Inc. v. Zscaler, Case
`
`3:17-cv-06946, D.I. 1 (N.D.Cal. Dec. 05, 2017)).
`
`As a direct result of its infringement lawsuits, seven previous IPR petitions
`
`were filed challenging the ‘494 Patent (two of which were joined with previously
`
`filed petitions) and three IPR trials were instituted. See chart POPR p. 15. The first
`
`of the seven petitions was filed in April 2015, and the seventh (and final) previous
`
`petition was filed on July 15, 2016.
`
`On January 12, 2017, Finjan served Cisco with a lawsuit asserting
`
`infringement of the ‘494 Patent. Finjan, Inc. v. Cisco Systems, Inc., Case 5:17-cv-
`
`00072, D.I. 8 (N.D.Cal. Jan. 6, 2017). On June 22, 2017, Finjan served its
`
`infringement contentions on Cisco. On September 22, 2017, Cisco filed the instant
`
`IPR.. The timeline below shows the temporal relationship between the lawsuits
`
`filed by Finjan and the IPR petitions filed by defendants, including the present IPR.
`
`
`DM2\8567802.1
`
`2
`
`
`
`
`
`
`
`III. THERE IS NO FACTUAL OR LEGAL BASIS FOR THE BOARD TO
`EXERCISE ITS DISCRETION
`A. The Equities Favor the Petitioner
`Patent Owner provides no legal support for the application of the General
`
`Plastic factors against a Petitioner that was not accused in litigation of
`
`infringement at the time that other parties filed IPRs challenging the asserted
`
`patent. The NetApp case cited by Patent Owner is apposite. NetApp Inc. v. Reatime
`
`Data LLC, IPR2017-01354, Paper 16 (PTAB Nov. 14, 2017). In NetApp, NetApp
`
`was accused of infringement before any IPRs were filed by any party. NetApp
`
`subsequently filed its IPR months after other accused parties filed three IPRs, but
`
`included the same combination of references from the previous three IPRs, and
`
`could not explain its delay in filing its IPR (during which delay the Patent Owner
`
`had filed its preliminary responses to two of the three previous IPRs). Id. at 6-8.
`
`In contrast, by the time Finjan filed a lawsuit against Cisco, all briefing had
`
`concluded, and all open IPRs concluded within three months of Cisco’s being
`
`served with the Complaint and three months prior to Finjan’s service of
`
`infringement contentions on Cisco (at which time Cisco was made aware of the
`
`subset of claims at issue). Moreover, Cisco’s petition is based wholly on new art,
`
`and new arguments unlike the NetApp petition.
`
`Petitioner should not be denied the opportunity to challenge a patent asserted
`
`against it solely because the Patent Owner elected a strategy to sue others first.
`
`
`DM2\8567802.1
`
`3
`
`
`
`
`
`Petitioner should be afforded due process and be treated as any other first-time
`
`petitioner who was not a named defendant at the time of filing of the previous
`
`IPRs, nor was involved with the filing therewith. Here, the availability of
`
`information to Petitioner from prior PTAB proceedings is due solely to Patent
`
`Owner’s litigation strategy of serially filing lawsuits against alleged infringers over
`
`the last 3 ½ years. To the extent that a party has been advantaged by delay, it is the
`
`Patent Owner, having the benefit of all of the previous IPR decisions before
`
`selecting which claims to assert in its infringement contentions against Cisco.
`
`B. General Plastics Factors
`Factor 1- Cisco has not previously filed a Petition
`1.
`This is the first and only Petition on the ’494 Patent filed by Cisco. Other
`
`petitions by other parties were filed prior to Cisco being named as a defendant in a
`
`patent infringement action of the ’494 Patent by the Patent Owner. Thus, Factor 1
`
`weighs in favor of considering Cisco’s IPR on the merits.
`
`2.
`
`Factors 2, 4 and 5- Cisco had no reason to file the Petition
`earlier.
`Factors 2, 4 and 5 are directed to “whether a petitioner should have or could
`
`have raised the new challenges earlier.” General Plastics, supra, at 18. These
`
`factors are not relevant here where Cisco had no reason to challenge the ‘494
`
`Patent until after it was accused of infringement by Finjan in January 2017, well
`
`after the previous petitions had already been filed.
`
`
`DM2\8567802.1
`
`4
`
`
`
`
`
`3.
`
`Factor 3- Cisco did not delay filing its Petition so that it can
`tailor its arguments
`Cisco did not delay filing its Petition in order to tailor its arguments in a
`
`subsequent petition. Cisco instead filed its Petition promptly upon receiving
`
`Finjan’s infringement contentions, at which time, all previous IPRs had been
`
`concluded. Factor 3 weighs in favor of considering the IPR on the merits.
`
`4.
`
`Factors 6 and 7– The finite resources of the Board are not
`burdened nor unnecessarily delayed.
`None of the prior art asserted nor arguments in the present Petition have
`
`been considered by the Board in the previous IPRs, nor by the Office during the
`
`examination or reexamination of the ‘494 patent. In addition, all previous IPRs
`
`have concluded. Thus, Factors 6 and 7 weigh in favor of considering Cisco’s IPR
`
`on the merits.
`
`IV. CONCLUSION
`To the extent that Board determines that the holding of General Plastic
`
`should apply to a petitioner who had no involvement in previously filed IPRs and
`
`was not yet accused of infringement, all of the relevant factors applied to the facts
`
`of this case counsel that the Board should consider Cisco’s Petition on the merits.
`
`Respectfully submitted,
`
`
`/Patrick D. McPherson
`BY:
`Patrick D. McPherson
`USPTO Reg. No. 46,255
`DUANE MORRIS LLP
`
`Dated: February 13, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`DM2\8567802.1
`
`5
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4) and 42.105, the undersigned
`
`certifies that on the 13th day of February 2018, a complete and entire copy of this
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response and all supporting
`
`exhibits were served via PTAB E2E and e-mail to:
`
`
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`
`
`
`
`/Patrick D. McPherson/
`
`Patrick D. McPherson, Reg. No. 46,255
`505 9th Street, N.W., Suite 1000
`Washington, D.C. 20004
`P: (202) 776-7800
`F: (202) 776-7801
`PDMcPherson@duanemorris.com
`
`ATTORNEY FOR PETITIONER
`
`
`
`DM2\8567802.1
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
