UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02155
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S CORRECTED SUR-REPLY
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02155
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S CORRECTED SUR-REPLY
`
`
`
`
`
`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
`
`The Board should deny Petitioner’s Petition because Petitioner fails to offer
`any relevant facts in support of the General Plastics factors in its Reply (Paper No.
`
`8). Finjan, on the other hand, has offered substantial analysis that establishes that
`
`the Petition should be denied. However, rather than address Finjan’s application of
`
`the factors, Petitioner instead relies on irrelevant facts, such as previous litigations
`
`and infringement contentions. Thus, despite being given the opportunity to file a
`
`Reply, Petitioner still fails to explain why its Petition should be instituted,
`
`especially in light of the fact that Finjan already has been subject to seven IPRs
`
`related to the U.S. Patent No. 8,677,494 (the “’494 Patent”). Granting the Petition
`
`would be highly prejudicial to Finjan, as Petitioner now has the benefit of these
`prior IPRs in order to strategize its position.
`
`I.
`
`The Board Should Deny the Petition Under 35 U.S.C. § 314(a)
`
` The General Plastics Factors Weigh in Favor of Denying
`A.
`Institution
`Factor 2. Factor 2 weighs in favor of denying institution because Petitioner
`
`knew of or should have known of the prior art references at the time the earlier
`
`Petitions were filed. Patent Owner’s Preliminary Response, Paper 6 (“POPR”) at
`
`13–14. Petitioner instead lumps three distinct factors together and argues that they
`
`are not relevant because “[it] had no reason to challenge the ‘494 Patent until after
`
`it was accused of infringement.” Reply at 4. Despite the fact that the PTAB in
`General Plastics stated that “a petitioner is free to explain why a reasonably
`
`diligent search could not have uncovered the newly applied prior art,” Petitioner’s
`
`Reply makes no effort to rebut that it knew or should have known of the prior art
`
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
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`references at the time the earlier Petitions were filed. General Plastic Indus. Co. v.
`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 20 (P.T.A.B. Sept. 6,
`
`2017). Indeed, Petitioner has known about Finjan’s Patents since 2014—three
`
`years before Finjan served the complaint in January 2017. Corrected Ex. 2018 at
`
`¶¶ 47–52. Accordingly, under Petitioner's own rationale, it had reason to challenge
`
`the ‘494 Patent for nearly three years before it filed the Petition. Thus, there
`
`should be no dispute that Factor 2 weighs in favor of denying institution.
`Factor 3. Factor 3 weighs in favor of denial under § 314(a) because at the
`
`time Petitioner filed the instant Petition, Petitioner had already had the opportunity
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`to review five Preliminary Responses, five Institutions Decisions, two Patent
`
`Owner Responses, and two Final Written Decisions regarding the ‘494
`
`Patent. POPR at 14–16. Petitioner provides no valid explanation as to why it
`
`waited until September 22, 2017, to file the Petition. Rather, Petitioner merely
`
`states that it filed its Petition "upon receiving Finjan's infringement contentions, at
`
`which time, all previous IPRs had been concluded." Reply at 5. Petitioner fails to
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`cite any authority for its proposition or explain why infringement contentions
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`might account for its delay, especially since Petitioner had every opportunity to
`
`receive the same information earlier in the litigation through written discovery.
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`Further, Finjan identified the claims it was asserting in its Complaint, and any
`
`subsequent identification of claims is subject to change throughout the litigation
`
`upon a showing of good cause. Ex. 2019 at 7-8 (Patent Local Rule 3-6,
`
`Amendment to Contentions). Accordingly, Cisco did not need to wait until after
`
`Finjan served its infringement contentions to file its Petition. Even if infringement
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
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`contentions were relevant, which they are not, Petitioner fails to explain why it
`
`delayed its filing until three months after receiving Finjan's infringement
`
`contentions on June 22, 2017. Thus, this factor weighs in favor of denying
`
`institution.
`Factor 4. The timing of the Petition weighs strongly against institution
`
`
`
`because Petitioner waited nearly nine months from the date of Finjan’s complaint
`
`to file its Petition. POPR at 16–17. As Patent Owner filed its Complaint in
`
`January 2017, Petitioner had no reason for an extended delay, and Petitioner still
`
`offers no explanation for its delay in its Reply. Accordingly, this factor weighs in
`
`favor of denying institution.
`Factor 5. Factor 5 weighs in favor of denying institution because Petitioner
`
`provides no justification for its delayed filing and fails to explain why this Petition
`
`is necessary. Reply at 4; POPR at 17–18. Rather, Petitioner merely points out that
`
`it was accused of infringement in January 2017. Petitioner’s decision to wait to
`
`file its Petition after receiving the benefit of all of the briefings of the 7 prior IPRs
`
`along with the Federal Circuit briefings is highly prejudicial to Finjan, as granting
`
`the Petition would “impose inequities on [Finjan],” who is subject to “[t]he filing
`
`of sequential attacks against the same claims, with the opportunity [for Petitioner]
`to morph positions along the way.” General Plastics, Paper 19 at 11; see also
`
`POPR at 18. Indeed, as the Board recognized:
`
`[m]ultiple, staggered petitions challenging the same patent and
`same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
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`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review.
`
`General Plastics, Paper 19 at 17.
`
`Petitioner fails to explain what might account for its delayed filing until nine
`
`months after receiving Finjan's complaint. Thus, factor 5 weighs in favor of
`
`denying institution.
`Factors 6 and 7. Factors 6 and 7 weigh in favor of denying institution
`
`because here the Board has already expended resources on seven IPRs and two
`
`separate trials regarding the ‘494 Patent. POPR at 18–19. Petitioner does not
`
`dispute this. Instead, Petitioner argues that these factors weigh in favor of
`
`institution because all previous IPRs have concluded and because it is asserting
`
`different prior art. Reply at 5. However, that Petitioner is relying on new prior art
`
`for institution actually favors denying the Petition. Petitioner has had the
`
`advantage of reviewing all the prior IPRs, and accordingly, could tailor its Petition
`
`so that it could advance new arguments, which would result in the Board having to
`
`expend additional, significant resources to consider this IPR.
`
`Further, Petitioner misunderstands the law. As Finjan stated in the POPR,
`“Factors 6 and 7 addresses [sic] the finite resources of and incremental burden to
`the Board in conducting the requested inter partes review.” POPR at 18–19
`
`(emphasis added) (citation omitted). Here the incremental burden of conducting an
`
`eighth IPR is incredibly high in light of the fact that the Board has already
`
`“expended previously resources on a trial” and “resources issuing a decision on the
`
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
`
`merits of the earlier filed petition” for seven IPRs. POPR at 19. Accordingly,
`
`Factors 6 and 7 weigh in favor of denying institution.
`
`Factor 1. While this is Petitioner’s first petition on the ‘494 Patent, that
`does not negate the other General Plastics factors. See POPR at 20–21. As
`
`explained above, all the remaining factors weigh in favor of denying the Petition.
`The Equities Favor Finjan, Not Petitioner
`B.
`
`While Petitioner bases its initial argument on Finjan’s reliance on NetApp,
`
`Petitioner misses the point. Reply at 3–4. Petitioner complains that Finjan did not
`
`accuse of it infringement until after it asserted infringement against other parties,
`but Finjan relies on NetApp to (1) demonstrate that § 314(a) applies to follow-on
`
`petitioners that did not file the initial petition, and (2) for the proposition that when
`
`a petitioner delays filing so that it can tailor its arguments, that weighs against
`
`institution. POPR at 13–16. Here, Petitioner waited to file its Petition, despite the
`
`fact that it should have been aware that the ‘494 Patent is subject to multiple IPRs.
`
`As a result, Petitioner has gained an advantage that is highly prejudicial to Finjan
`
`because it could thoroughly review the prior record relating to the ’494 Patent as a
`
`roadmap for its new positions. Finally, Petitioner’s complaint that it “should be
`
`afforded due process” is nothing more than a red herring. Reply at 4. Nothing
`
`prevents Petitioner from raising any invalidity challenges it may have in the district
`
`court litigation. POPR at 21. As such, the equities do not favor Petitioner.
`II. Conclusion
`Therefore, the Board should reject the Petition under 35 U.S.C. § 314(a).
`
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`
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
`
`
`
`Respectfully submitted,
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Attorneys for Patent Owner
`
`Dated: March 1, 2018
`
`(Case No. IPR2017-02155)
`
`- 6 -
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
`
`CISCO SYSTEMS, INC.,
`v.
`FINJAN, INC.,
`
`Case IPR2017-02155
`Patent 8,677,494
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit-2001 Finjan, Inc. v. Sophos, Inc., 14-cv-1197-WHO (N.D. Cal.), Dkt.
`No. 73 (“Claim Construction Order”)..
`
`Exhibit-2002 Dan et al. U.S. Patent No. 5,825,877
`
`Exhibit-2003 Apperson et al. U.S. Patent No. 5,978,484
`Exhibit-2004 Anand et al., A Flexible Security Model for Using Internet
`Content
`
`Exhibit-2005 Touboul U.S. Patent No. 6,092,194
`Exhibit-2006 Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-SK,
`Dkt. 8.
`Exhibit-2007 Final Written Decision, Symantec Corp. v. Finjan, Inc., IPR2015-
`01892, Paper 58.
`Exhibit-2008 Final Written Decision, Palo Alto Networks, Inc., v. Finjan, Inc.,
`IPR2016-00159, Paper 50.
`Exhibit-2009 Decision Denying Institution, Sophos, Inc., v. Finjan, Inc.,
`IPR2015-01022, Paper 9.
`Exhibit-2010 Decision Denying Institution, Symantec Corp. v. Finjan, Inc.,
`IPR2015-01897, Paper 7.
`Exhibit-2011 Decision Denying Institution, Blue Coat Systems LLC v. Finjan,
`Inc., IPR2016-01443, Paper 13.
`Exhibit-2012 Petition, Symantec Corp. v. Finjan, Inc., IPR2015-01894, Paper 1.
`Exhibit-2013 Decision Denying Institution, Symantec Corp. v. Finjan, Inc.,
`IPR2015-01894, Paper 7.
`
`- 1 -
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`
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (U.S. Patent No. 8,677,494)
`
`Exhibit-2014 Deposition Transcript of Dr. Azer Bestavros, Blue Coat Systems
`LLC et al. v. Finjan, Inc., IPR2016-01444, Ex. 2052.
`Exhibit-2015 Silberschatz et al., DATABASE SYSTEM CONCEPTS, 3rd ed.,
`Exhibit-2016 USPTO PAIR Summary, U.S. Patent Application 08/388,107.
`Exhibit-2017 Lo et al., Towards a Testbed for malicious Code Detection.
`Corrected
`Second Amended Complaint for Patent Infringement, filed on
`July 7, 2017 in Finjan, Inc. v. Cisco Systems, Inc., No. 17-cv-
`Exhibit-2018
`00072-BLF (N.D. Cal.)
`
`Exhibit-2019 United States District Court, Norther District of California Patent
`Local Rules, last revised January 17, 2017
`
`
`
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`Patent Owner’s Corrected Sur-Reply
`IPR2017-02155 (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
`
`correct copy of the foregoing Patent Owner’s Corrected Sur-Reply was served on
`
`March 1, 2018, 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:
`
`
`
`
`
`Patrick D. McPherson
`Patrick Muldoon
`DUANE MORRIS LLP
`505 9th Street NW, Suite 1000
`Washington, D.C. 20004
`pdmcpherson@duanemorris.com
`pcmuldoon@duanemorris.com
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`
`
`
`
`- 1 -
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`
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