Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Date: June 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC. & PALO ALTO NETWORKS, INC.,
`Petitioner,
`v.
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)1
`
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, JOHN D.
`HAMANN, and KRISTI L. R. SAWERT, Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`1 We exercise our discretion to enter a single order to be entered in each
`case. For convenience, we refer to the exhibit numbers entered in IPR2020-
`00335. The parties are not permitted to use this caption. This is not an
`expanded panel. The panel for IPR2020-00335, -00336, -00337, and -00485
`includes Judges White, Boudreau, and Hamann. The panel for IPR2020-
`00338, -00339, and -00485 includes Judges Boudreau, Hamann, and Sawert.
`
`
`
`
`
`571-272-7822
`
`Paper No. 8
`Date: June 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JUNIPER NETWORKS, INC. & PALO ALTO NETWORKS, INC.,
`Petitioner,
`v.
`PACKET INTELLIGENCE LLC,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)1
`
`
`
`Before STACEY G. WHITE, CHARLES J. BOUDREAU, JOHN D.
`HAMANN, and KRISTI L. R. SAWERT, Administrative Patent Judges.
`SAWERT, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Request for Additional Briefing
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`1 We exercise our discretion to enter a single order to be entered in each
`case. For convenience, we refer to the exhibit numbers entered in IPR2020-
`00335. The parties are not permitted to use this caption. This is not an
`expanded panel. The panel for IPR2020-00335, -00336, -00337, and -00485
`includes Judges White, Boudreau, and Hamann. The panel for IPR2020-
`00338, -00339, and -00485 includes Judges Boudreau, Hamann, and Sawert.
`
`
`
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)
`
`
`On June 19, 2020, counsel for Petitioner Juniper Networks, Inc. and
`Palo Alto Networks, Inc. (“Petitioner”) contacted the Board via email to
`request a conference call seeking authorization to file a Preliminary Reply to
`Patent Owner’s Preliminary Response in the above-identified proceedings.
`See Ex. 3002. The panels have conferred and determined that a conference
`call is not necessary. For the reasons explained below, Petitioner is
`authorized to file a Preliminary Reply and Patent Owner is authorized to file
`a Preliminary Sur-Reply, subject to the following restrictions.
`A. Additional Briefing Directed to the Board’s Discretion Under
`35 U.S.C. § 314(a)
`Petitioner seeks authorization to file a Preliminary Reply addressing
`the Board’s order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (“Fintiv”), which was designated as precedential on
`May 5, 2020. Petitioner states that it could not address Fintiv earlier,
`because the order was “made precedential after each petition was filed.” Ex.
`3002. Petitioner states further that Patent Owner will not oppose Petitioner’s
`request “to specifically address the new precedent so long as Petitioners will
`not oppose Patent Owner being granted leave” to file a Preliminary Sur-
`reply. Id. Petitioner states that it “agreed to Patent Owner’s proposal.” Id.
`In Fintiv, the Board discussed potential applications of NHK Spring
`Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12,
`2018) (precedential) (“NHK”), as well as other cases addressing
`discretionary denial under 35 U.S.C. § 314(a). Fintiv identifies a non-
`exclusive list of factors parties may consider addressing when arguing
`
`2
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)
`
`whether a related, parallel district-court action provides any basis for
`discretionary denial under NHK. Fintiv at 5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6.
`The panels have determined that it would be helpful for the parties to
`provide additional briefing on the applicability of 35 U.S.C. § 314(a) and the
`Fintiv factors to these proceedings. Thus, we authorize Petitioner to file a
`Preliminary Reply and Patent Owner to file a Preliminary Sur-Reply in each
`of these proceedings. See 37 C.F.R. §§ 42.20(d), 42.108(c). Specifically,
`Petitioner is authorized to file a ten-page Preliminary Reply no later than
`5:00 PM Eastern Time, one week from the date of this Order. Patent Owner
`is authorized to file a ten-page Preliminary Sur-Reply, responding to
`Petitioner’s Preliminary Reply arguments. If Patent Owner elects to file a
`Preliminary Sur-Reply, it shall be filed no later than 5:00 PM Eastern Time,
`one week from the date of Petitioner’s Preliminary Reply. No additional
`
`3
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)
`
`briefing from either party is authorized at this time. Any portion of the
`briefing that is not responsive to this Order will not be considered.
`B. Exhibits From Related District-Court Litigations
`In its email, Petitioner also states that it “at least intend[s] to submit
`litigation scheduling and hearing transcript documents as exhibits to
`demonstrate factual inaccuracies of the [Patent Owner’s Preliminary
`Responses].” Ex. 3002. Petitioner states that “Patent Owner would not
`agree to the Petitioners supporting their [Preliminary] Reply with exhibits
`from the litigation.” Id.
`The panels have determined that it would be helpful for the parties to
`provide additional documentation from the related district-court litigations
`that support each parties’ respective arguments on the applicability of
`35 U.S.C. § 314(a) and the Fintiv factors to these proceedings. Thus,
`Petitioner may submit, for example, litigation scheduling and hearing
`transcript documents, as exhibits with its Preliminary Reply, so long as those
`exhibits are directly responsive to this Order. No other new evidence is
`permitted at this time.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for authorization to file a
`Preliminary Reply to Patent Owner’s Preliminary Response in each of these
`proceedings is granted;
`FURTHER ORDERED that each Preliminary Reply is limited to
`addressing the applicability of 35 U.S.C. § 314(a) and the Fintiv factors to
`each proceeding;
`
`4
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)
`
`
`FURTHER ORDERED that each Preliminary Reply may be no more
`than ten (10) pages in length;
`FURTHER ORDERED that Petitioner shall file any such Preliminary
`Reply by 5:00 PM Eastern Time, within one week from the date of this
`Order;
`FURTHER ORDERED that, if Petitioner files a Preliminary Reply,
`Patent Owner is authorized to file a Preliminary Sur-Reply of no more than
`ten (10) pages in length in each of these proceedings, addressing Petitioner's
`Preliminary Reply arguments;
`FURTHER ORDERED that Patent Owner shall file any such
`Preliminary Sur-Reply by 5:00 PM Eastern Time, within one week from the
`date of the Preliminary Reply;
`FURTHER ORDERED that in each of these proceedings, the parties
`are authorized to submit with their supplementary papers new evidence as
`set forth above for each proceeding and that no other new evidence is
`permitted;
`FURTHER ORDERED that in each of these proceedings, the parties
`may not submit new declaration evidence; and
`FURTHER ORDERED that no additional briefing is permitted.
`
`5
`
`
`
`IPR2020-00335 (Patent 6,651,099 B1) IPR2020-00336 (Patent 6,665,725 B1)
`IPR2020-00337 (Patent 6,771,646 B1) IPR2020-00338 (Patent 6,839,751 B1)
`IPR2020-00339 (Patent 6,954,789 B2) IPR2020-00485 (Patent 6,651,099 B1)
`IPR2020-00486 (Patent 6,954,789 B2)
`
`For PETITIONER:
`
`Joseph Edell
`Adam Allgood
`FISCH SIGLER LLP
`Joe.edell.ipr@fischllp.com
`Adam.allgood@fischllp.com
`
`Scott McKeown
`James Batchelder
`Mark Rowland
`ROPES & GRAY LLP
`Scott.mckeown@ropesgray.com
`James.batchelder@ropesgray.com
`Mark.rowland@ropesgray.com
`
`For PATENT OWNER:
`
`R. Allan Bullwinkel
`Michael Heim
`HEIM PAYNE & CHORUSH, PLLC
`abullwinkel@hpcllp.com
`mheim@hpcllp.com
`
`
`6
`
`
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