UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Juniper Networks, Inc. & Palo Alto Networks, Inc.,
`Petitioners,
`
`v.
`
`Packet Intelligence LLC,
`Patent Owner.
`
`
`Case IPR2020-00337
`U.S. Patent No. 6,771,646
`
`PATENT OWNER’S PRELIMINARY SURREPLY
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,771,646
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Juniper Networks, Inc. & Palo Alto Networks, Inc.,
`Petitioners,
`
`v.
`
`Packet Intelligence LLC,
`Patent Owner.
`
`
`Case IPR2020-00337
`U.S. Patent No. 6,771,646
`
`PATENT OWNER’S PRELIMINARY SURREPLY
`TO PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,771,646
`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`EXHIBIT LIST
`
`Patent Owner’s Exhibits
`
`Exhibit
`2001
`2002
`
`2003
`
`2004
`2005
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`2006
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`2007
`
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
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`2016
`2017
`2018
`2019
`2020
`
`2021
`
`2022
`
`Description
`Almeroth Declaration
`Packet Intelligence LLC v. Sandvine Corp., No. 2:16-cv-00147,
`Dkt. No. 17 (E.D. Tex. June 1, 2017) (order consolidating cases)
`File History for U.S. Patent No. 6, 771,646 - Feb. 10, 2004,
`Response to Office Action (annotated version of Ex. 1020)
`Reserved
`Palo Alto Networks, Inc. v. Packet Intelligence LLC (No. 19-cv-
`02471-WHO) and Packet Intelligence LLC v. Juniper Networks,
`Inc. (No. 19-cv-04741-WHO), Transcript of Case Management
`Conference on January 7, 2020
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, No. 19-cv-
`02471-WHO, Dkt. No. 62 (May 15, 2020) (Order Granting Palo
`Alto Networks’ Proposed Modification to the Scheduling Order)
`Packet Intelligence LLC v. Juniper Networks, Inc., No. 3:19-cv-
`04741-WHO, Dkt. No. 48 (March 29, 2020) (Stipulated First
`Amended Scheduling Order)
`PAN Contentions A5 - (Riddle)
`PAN Contentions A13 - (Yu)
`JUN Contentions A6 - (Riddle and Ferdinand)
`JUN Contentions A7 - (Riddle and Ferdinand and Yu)
`JUN Contentions A8 - (Riddle and Ferdinand and Baker)
`JUN Contentions A9 - (Riddle and Ferdinand and Baker and Yu)
`JUN Contentions A10 - (Riddle and Ferdinand and RFC1945)
`JUN Contentions A11 - (Riddle and Ferdinand and Baker and
`RFC1945)
`JUN Contentions B6 - (Riddle and Baker)
`JUN Contentions B7 - (Riddle and Baker and Yu)
`JUN Contentions B8 - (Riddle and Baker and RFC1945)
`JUN Contentions C6 - (Riddle and Ferdinand and Wakeman)
`JUN Contentions C7 - (Riddle and Ferdinand and Wakeman and
`Yu)
`JUN Contentions C8 - (Riddle and Ferdinand and Wakeman and
`RFC1945)
`JUN Contentions D6 - (Riddle and Ferdinand)
`
`ii
`
`
`
`
`
`2023
`2024
`2025
`2026
`2027
`2028
`
`2029
`
`2030
`2031
`2032
`2033
`
`2034
`2035
`2036
`
`2037
`2038
`2039
`2040
`2041
`
`2042
`
`2043
`2044
`
`2045
`2046
`2047
`2048
`2049
`2050
`
`2051
`
`JUN Contentions D7 - (Riddle and Ferdinand and Yu)
`JUN Contentions D8 - (Riddle and Ferdinand and RFC1945)
`JUN Contentions E6 - (Riddle and Ferdinand) 789
`JUN Contentions E7 - (Riddle and Ferdinand and Yu)
`JUN Contentions E8 - (Riddle and Ferdinand and Wakeman)
`JUN Contentions E9 - (Riddle and Ferdinand and Wakeman and
`Yu)
`JUN Contentions E10 - (Riddle and Ferdinand and Wakeman and
`RFC1945)
`JUN Contentions E11 - (Riddle and Ferdinand and Baker)
`JUN Contentions E12 - (Riddle and Ferdinand and Baker and Yu)
`JUN Contentions E13 - (Riddle and Ferdinand and RFC1945)
`JUN Contentions E14 - (Riddle and Ferdinand and Baker and
`RFC1945)
`JUN Contentions E15 - (Riddle and Ferdinand and Hasani)
`JUN Contentions E16 - (Riddle and Ferdinand and Hasani and Yu)
`JUN Contentions E17 - (Riddle and Ferdinand and Hasani and
`RFC1945)
`U.S. Patent No. 7,748,002 (“Beser”)
`File History for USPN 7,748,002 - October 3, 2006 Office Action
`U.S. Patent No. 7,706,357 (“Dyckerhoff”)
`File History for USPN 7,706,357 - June 30, 2009 Office Action
`January 18, 2019 Letter to Palo Alto Networks re Notice of
`Infringement
`January 18, 2019 Letter to Juniper Networks Inc re Notice of
`Infringement
`Almeroth CV
`Complaint in Palo Alto Networks, Inc. v. Packet Intelligence LLC,
`No. 3:19-cv-02471-WHO (N.D. Cal.)
`Petition in IPR2019-01289
`Petition in IPR2019-01290
`Petition in IPR2019-01291
`Petition in IPR2019-01292
`Petition in IPR2019-01293
`Stay Order in Uniloc 2017 LLC v. Apple, Inc., No. 19-cv-01904-
`WHO (N.D. Cal.)
`Joint Motion to Amend the Scheduling Order in Palo Alto
`Networks, Inc. v. Packet Intelligence LLC, No. 3:19-cv-02471-
`WHO (N.D. Cal.)
`
`iii
`
`
`
`
`
`
`
`2052
`
`2053
`2054
`2055
`2056
`2057
`2058
`2059
`
`Order Granting PAN’s Proposed Modification to the Scheduling
`Order in Palo Alto Networks, Inc. v. Packet Intelligence LLC, No.
`3:19-cv-02471-WHO (N.D. Cal.)
`Petition in IPR2017-00450
`Petition in IPR2017-00451
`Petition in IPR2017-00629
`Petition in IPR2017-00630
`Petition in IPR2017-00769
`Petition in IPR2017-00869
`Final Judgment in Packet Intelligence LLC v. NetScout Systems,
`Inc. et. al., No. 2:16-cv-00230-JRG (E.D. Tex.)
`
`
`iv
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`
`
`
`
`TABLE OF CONTENTS
`
`I. The Fintiv Factors Support Discretionary Denial ............................................... 1
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`A. Factor 1 – The Court Is Not Likely to Grant a Stay ......................................... 1
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`B. Factor 2 – Trial Is Set Near the Time for FWD ............................................... 3
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`C. Factor 3 – The Parties Have Invested Considerable Resources ....................... 5
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`D. Factor 4 – The Issues Are the Same ................................................................. 5
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`E. Factor 5 – The Parties are the Same ................................................................. 6
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`F. Factor 6 – The Merits and Prior Proceedings Favor Discretionary
`
`Denial ............................................................................................................ 6
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`II. Conclusion ........................................................................................................... 7
`
`
`
`
`v
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`Palo Alto Networks (“PAN”) initiated a formal dispute with Packet
`
`Intelligence by filing a declaratory judgment of non-infringement regarding the
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`Challenged Patents1 in the Northern District of California. Ex. 2044 (PAN
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`Complaint). This allowed PAN to select its desired forum for district court
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`proceedings. It now seeks to halt those proceedings in favor of IPRs it filed nine
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`months later. PAN had a choice at the outset—and it chose the district court. PAN’s
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`election to pursue relief in the district court should be honored. The parties have
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`been engaged in litigation for over a year. The Challenged Patents have been
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`subjected to validity challenges in two prior instances: IPRs and a jury trial. The
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`result in each forum was the same—the patents were upheld as valid. For these
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`reasons, the Board should exercise its discretion to deny institution under § 314(a).
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`I. The Fintiv Factors Support Discretionary Denial
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`As detailed in its Preliminary Response (Paper 7) and below, the Fintiv factors
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`weigh in favor of discretionary denial under § 314(a).
`
`A. Factor 1 – The Court Is Not Likely to Grant a Stay
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`Petitioners claim that Packet Intelligence “mischaracterizes the exchange
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`between the court and PAN at the January 7, 2020 CMC . . . .” Paper 9 at 4
`
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`1 “Challenged Patents” include U.S. Patent Nos. 6,651,099; 6,665,725; 6,771,646;
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`6,839,751; and 6,954,789.
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`1
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`
`
`
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`[hereinafter “Reply”]. Not true. Packet Intelligence block quoted the entire exchange
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`between the parties and the Court regarding the request to file a motion to stay. See
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`Paper 7 at 29-30 [hereinafter “Response”]. Petitioners, on the other hand, quoted
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`only a small portion of that exchange—namely their request to file a motion to
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`stay—and then characterized the Judge’s response as follows: “Judge Orrick advised
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`PAN to ‘save your money’ on a pre-institution stay motion and wait to file the
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`motion until after institution decisions.” Reply at 3 (emphasis added). But Judge
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`Orrick never invited or even suggested that the Petitioners should file a motion to
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`stay after an institution decision issued. If the district court wanted to stay the case
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`pending instituted IPRs, it likely would have said as much. Yet, the court did not.
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`Additionally, Packet Intelligence did not submit the initial case management
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`conference transcript because the discussion at that conference related to different
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`IPRs that were filed less than two months after PAN filed its complaint in the co-
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`pending district court litigation. See Ex. 2044 (PAN Complaint); Ex. 2045 (Petition
`
`for IPR2019-01289); Ex. 2046 (Petition for IPR2019-01290); Ex. 2047 (Petition for
`
`IPR2019-01291); Ex. 2048 (Petition for IPR2019-01292); Ex. 2049 (Petition for
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`IPR2019-01293). Thus, the Court was faced with a situation in which IPRs were
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`filed on the patents at issue shortly after the complaint had been filed. The instant
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`scenario is quite different. This IPR was filed on February 4, 2020—approximately
`
`nine months after PAN’s complaint was filed. And Judge Orrick explained at the
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`2
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`
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`initial case management conference that he would want to look at the circumstances
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`at the time of an institution decision to decide whether a stay was warranted. See Ex.
`
`1084 at 8:15-18 (“MR. SMITH: I understand that’s what courts typically do, but I
`
`would like to look at the circumstances at the time, Your Honor. THE COURT: Of
`
`course. Me, too.” (emphases added)). The circumstances surrounding the current
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`IPR versus the PAN litigation are vastly different than those surrounding the Nokia
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`IPRs versus the PAN litigation. Notably, the PAN litigation has proceeded through
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`an additional seven months, including discovery, contentions, subpoenas, and claim
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`construction briefing. See Response at 30-32 (detailing the investment by the parties
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`and court in the PAN litigation). Finally, Judge Orrick’s recent activity concerning
`
`stays pending IPRs indicates that he will grant such a stay when agreed to by the
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`parties. See Ex. 2050 (Stay Order in Uniloc 2017 LLC v. Apple, Inc., No. 19-cv-
`
`01904-WHO). Factor 1 favors discretionary denial.
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`B. Factor 2 – Trial Is Set Near the Time for FWD
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`Petitioners rely on two factors to support their arguments concerning factor
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`two: (1) uncertainty and difficulty surrounding the ongoing COVID-19 pandemic;
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`and (2) Packet Intelligence’s request for a two-month separation between the PAN
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`and Juniper trials. See Reply at 5-6. Regarding the pandemic, nobody disputes that
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`it has created uncertainty and difficulties for legal proceedings—this includes district
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`court litigations as well as IPRs. However, forums are dealing with these challenges
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`3
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`
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`by replacing in-person proceedings with virtual proceedings, including depositions,
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`hearings, and trials. And, as explained in Patent Owner’s Preliminary Response, the
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`Court and parties have already invested significantly in the co-pending litigations.
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`See Response at 30-32. Given that the pandemic affects all proceedings, the Board
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`should recognize the effort already expended in the district court litigations and
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`avoid parallel effort within the PTAB.
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`Next, Petitioners highlight the fact that Packet Intelligence requested a
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`separation between the PAN trial and the Juniper trial. See Reply at 6. At the time,
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`this was true. However, Packet Intelligence opposed PAN’s recent request to align
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`the entire PAN litigation schedule with the Juniper litigation schedule. See Ex. 2051
`
`(Joint Motion to Amend the Scheduling Order in Palo Alto Networks, Inc. v. Packet
`
`Intelligence LLC, No. 3:19-cv-02471-WHO). But, the Court granted PAN’s request.
`
`See Ex. 2052 (Order Granting PAN’s Proposed Modification to the Scheduling
`
`Order). Packet Intelligence seeks to resolve the district court litigations as efficiently
`
`and promptly as possible. Given PAN’s insistence on extending the PAN litigation
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`schedule, Packet Intelligence currently does not intend to request an additional
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`extension of the Juniper schedule. The trials in the district court litigations are
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`currently set to occur at approximately the same time a final written decision would
`
`issue. To the extent the district court litigations incur additional delays due to
`
`4
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`
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`
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`COVID-19, it is likely that PTAB proceedings will incur similar delays. Factor 2
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`weights in favor of discretionary denial.
`
`C. Factor 3 – The Parties Have Invested Considerable Resources
`
`Petitioners do not deny that considerable investment has already been made
`
`in the co-pending litigations. See Reply at 7. However, they argue that considerable
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`work remains in the litigations. The same would be true in the IPR context as well.
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`Further, Petitioners’ argument that the Board should consider the “interests” of
`
`hypothetical future litigants has no basis in the law.
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`PAN initiated the co-pending litigation. See Ex. 2044 (PAN complaint). PAN
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`had options—it could seek relief from the district court or it could seek relief from
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`the PTAB. It chose the district court. PAN should not now be rewarded for switching
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`horses. PAN elected to initiate litigation first—then, nine months later it decided to
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`seek relief from the PTAB in parallel. Juniper elected to join PAN, when it could
`
`have filed its own IPRs. To support its efforts at the PTAB, PAN pushed out the
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`schedule in the district court litigation. It should not be rewarded for such
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`gamesmanship. Factor 3 favors discretionary denial.
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`D. Factor 4 – The Issues Are the Same
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`There is no dispute that the issues are currently the same—the same claims
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`challenged in the IPR are at issue in the co-pending litigations. Petitioners ask the
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`Board to hypothesize about which claims will advance to trial in the co-pending
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`5
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`
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`litigations. See Reply at 8. That is not the focus of this factor. Regardless of which
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`claims advance to trial, the “issues” will essentially be the same. The primary prior
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`art being raised here and in the litigations relates to all challenged claims (i.e.,
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`Riddle, Yu, and RFC 1945). Factor four weighs in favor of discretionary denial.
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`E. Factor 5 – The Parties are the Same
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`There is no dispute that the parties are the same. This factor strongly favors
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`discretionary denial.
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`F. Factor 6 – The Merits and Prior Proceedings Favor Discretionary Denial
`
`Packet Intelligence detailed why the Petition should be denied on the merits
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`in its Preliminary Response, and will not repeat those reasons here. See Response at
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`37-48. The Board should consider the number of times the patents-at-issue have been
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`challenged in prior proceedings. The patents have been challenged in multiple IPR
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`proceedings in which the Board denied institution on the merits. See Ex. 2053
`
`(Petition in IPR2017-00450); Ex. 2054 (Petition in IPR2017-00451); Ex. 2055
`
`(Petition in IPR2017-00629); Ex. 2056 (Petition in IPR2017-00630); Ex. 2057
`
`(Petition in IPR2017-00769); Ex. 2058 (Petition in IPR2017-00869). Further, three
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`of the five patents have been declared valid by a jury. See Ex. 2059 (Final Judgment
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`in Packet Intelligence LLC v. NetScout Systems, Inc. et. al., No. 2:16-cv-00230-
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`JRG). The commonality of the art asserted against the five patents-at-issue shows
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`that the other two patents likely would have received similar validity determinations.
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`6
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`Given that these patents have survived validity challenges in two different forums
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`and the ongoing investment being made by the parties and district court in the co-
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`pending litigations, it is an inefficient use of the Board’s resources to once again
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`revisit the patents-at-issue. Factor six favors discretionary denial.
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`II. Conclusion
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`As detailed above, the Fintiv factors weigh in favor of discretionary denial.
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`Further, PAN selected the district court to resolve its dispute with Packet Intelligence
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`nine months before initiating the instant IPRs. Juniper elected to join PAN in this
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`endeavor. Given the effort expended in prior forums (IPRs and a jury trial) and in
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`the co-pending litigations, Packet Intelligence respectfully requests that the Board
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`exercise its discretion to deny institution under § 314(a).
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`
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`Dated: July 8, 2020
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`
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`Respectfully submitted,
`
`
`
`
`
`
`By: /R. Allan Bullwinkel/
`
`
`R. Allan Bullwinkel (Reg. No. 77,630)
`
`Attorney for Patent Owner
`
`Packet Intelligence LLC
`
`7
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNER’S PRELIMINARY SURREPLY TO PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,771,646 was served via email
`
`to lead and backup counsel of record for Petitioner as follows:
`
`Joseph F. Edell
`Fisch Sigler LLP
`joe.edell.IPR@fischllp.com
`
`Adam A. Allgood
`Fisch Sigler LLP
`adam.allgood@fischllp.com
`
`Scott A. McKeown
`Ropes & Gray LLP
`scott.mckeown@ropesgray.com
`
`James R. Batchelder
`Ropes & Gray LLP
`james.batchelder@ropesgray.com
`
`Mark D. Rowland
`Ropes & Gray LLP
`mark.rowland@ropesgray.com
`
`Andrew Radsch
`Ropes & Gray LLP
`andrew.radsch@ropesgray.com
`
`
`
`Dated: July 8, 2020
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`
`
`
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`
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`By: /R. Allan Bullwinkel/
`
`R. Allan Bullwinkel (Reg. No. 77,630)
`
`Attorney for Patent Owner
`
`Packet Intelligence LLC
`
`8
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`
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