`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2018-00391
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`
`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s January 31, 2019
`
`Scheduling Order (Paper No. 8), Finjan, Inc. (“Patent Owner”) requests an
`
`opportunity to present oral argument regarding the patentability of claims 1–4, 8,
`
`and 11–14 (the “Instituted Claims”) of U.S. Patent No. 7,647,633 (“the ’633
`
`Patent”). The oral argument is scheduled to be held on March 6, 2019. Paper No.
`
`8 at 7. Without waiving consideration of any issue not identified below, Patent
`
`Owner requests one hour to address the following issues:
`
`1. Whether Petitioner has met its burden of proving that Claims 1–4, 8,
`
`11, 13, and 14 are unpatentable as obvious over the combination of
`
`Hanson and Hypponen;
`
`2. Whether Petitioner has met its burden of proving that Claim 12 is
`
`unpatentable as obvious over the combination of Hanson, Hypponen,
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`and Touboul;
`
`Secondary considerations of non-obviousness;
`
`Patent Owner’s and Petitioner’s Motion to Exclude Evidence, if any;
`
`Rebuttal of any arguments made by Petitioner;
`
`Any additional issues on which the Board seeks clarification; and
`
`Response to any issues Petitioner raises in its Request for Oral
`
`Argument.
`
`- 1 -
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`Patent Owner respectfully reserves the right to supplement and/or amend the
`
`foregoing statement of issues to the extent the Rules permit.
`
`At oral argument, Patent Owner requests the use of audio/visual equipment
`
`to display demonstrative exhibits, including the use of a projector and screen.
`
`
`
`Dated: January 30, 2019
`
`(Case No. IPR2018-00391)
`
`
`
`
`
`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: 650.752.1800
`
`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: 212.715.8000
`
`Attorneys for Patent Owner
`
`- 2 -
`
`
`
`Patent Owner’s Request for Oral Argument
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`
`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 Request for Oral Argument was
`
`served on January 30, 2019, by filing this document through the PTAB E2E system
`
`as well as delivering via electronic mail upon the following counsel of record for
`
`Petitioner:
`
`Patrick McPherson (PDMcPherson@duanemorris.com);
`Patrick Muldoon (PCMuldoon@duanemorris.com);
`Joseph A. Powers (JAPowers@duanemorris.com)
`
`/James Hannah/
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`
`
`- 3 -
`
`
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