UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`CLOUDFLARE, INC. AND SONICWALL INC.
`Petitioners
`
`v.
`
`SABLE NETWORKS, INC.
`Patent Owner
`
`___________
`
`Case IPR2021-00909
`Patent No. 8,243,593
`___________
`
`PETITIONER CLOUDFLARE’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`CLOUDFLARE, INC. AND SONICWALL INC.
`Petitioners
`
`v.
`
`SABLE NETWORKS, INC.
`Patent Owner
`
`___________
`
`Case IPR2021-00909
`Patent No. 8,243,593
`___________
`
`PETITIONER CLOUDFLARE’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`Case IPR2021-00909 (Patent No. 8,243,593)
`
`Patent Owner’s argument for discretionary denial should be rejected because,
`
`among other reasons, the district court has not set a trial date before the final written
`
`decision in this proceeding. Rather, Patent Owner acknowledges that the deadline
`
`for a final written decision in this IPR (if instituted) would be November 21, 2022,
`
`while the district court trial is “estimated” to begin almost two months later on
`
`January 12, 2023. Paper 8 at 67. This strongly favors institution because the
`
`Board’s final decision may obviate the need for trial on the challenged patent and if
`
`any claims survive this IPR then Section 315 estoppel will apply. See IPR2020-
`
`00138, Paper 20 at 13-14 (PTAB June 26, 2020) (“Fintiv Factor 2 also favors
`
`institution, especially given that the trials in the district court cases will not likely
`
`take place until after we issue our Final Written Decisions in these proceedings.”).
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`Further, Patent Owner relies on an “estimated” trial date as no specific trial
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`date has been set. Patent Owner cites a portion of an email exchange with the court
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`clerk in which the clerk states that “the Markman hearing will be scheduled for
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`January 12, 2022.” EX2002 at 1. From there, Patent Owner estimates a trial date
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`based on the district court’s default schedule, which has already been extended in the
`
`related lawsuit.1 The judge’s “Order Governing Proceedings” (OGP) makes clear
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`1 Patent Owner provides (without explanation) only a portion of the exchange with
`
`the court clerk. The entire exchange, submitted by Petitioner, shows that the judge
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`1
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`
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`Case IPR2021-00909 (Patent No. 8,243,593)
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`that the estimated trial date is at most a placeholder, stating that trial will be “52
`
`weeks after Markman hearing (or as soon as practicable)” and that the “Court
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`expects to set these dates at the conclusion of the Markman Hearing.” EX2003 at
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`11. The OGP further contemplates that “the actual trial date” may “materially
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`differ[] from the Court’s default schedule….” Id. at 11 n.11.2 The Board has
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`recognized in prior decisions that the district court’s OGP creates at most a
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`placeholder for trial—it does not establish a trial date. See, e.g., IPR2021-00279,
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`Paper 12 at 29-30 (PTAB June 11, 2021) (“We determine there is no trial date
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`scheduled for the parallel proceeding.”); IPR2020-01449, Paper 13 at 15 (PTAB
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`Mar. 3, 2021) (“[T]here is no trial date scheduled for the parallel district court
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`proceeding. The Amended Scheduling Order does not set a trial date, and the email
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`from the District Court, which was sent prior to the Amended Scheduling Order,
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`indicates that the November 8, 2021 date is ‘estimated’ and may be changed.”).
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`agreed to extend the default deadlines for invalidity contentions by four weeks and
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`the Markman hearing by five weeks despite Patent Owner’s argument that the
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`extensions would push the estimated trial date past the final written decisions in
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`defendant’s IPRs. EX1061 at 1-2.
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`2 The parties have submitted a proposed scheduling order with identical language
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`regarding trial. EX1067.
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`2
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`
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`Case IPR2021-00909 (Patent No. 8,243,593)
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`There is no reason to believe the trial will be any earlier than the estimate given the
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`judge’s heavy docket of nearly 900 pending patent lawsuits. EX1068.
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`Further, the Markman hearing is scheduled for a week in which the district
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`court has scheduled at least four other cases for Markman hearings. EX1062,
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`EX1063, EX1064, EX1065. It will not be feasible for the court to conduct trials 52
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`weeks later in all of these cases starting the same week of January 2023, as the
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`Board has recognized in similar situations. See, e.g., PGR2020-00065, Paper 10 at
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`26 (PTAB Dec. 3, 2020). And even the Markman hearing date in this case is
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`uncertain because Petitioner recently filed a motion to transfer the action to a
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`different district court. EX1066; EX1069 at 1 (standing order stating Markman
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`hearing may be postponed until after a pending transfer motion is resolved).
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`In addition, the related litigation is in the earliest stages with no significant
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`investment in that proceeding. Petitioner’s invalidity contentions are not due until
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`September 15, 2021, and claim construction proceedings have not begun. The
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`Board has found that even when claim construction briefs have already been
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`submitted (not so here) “the related litigation is at a very early stage and the
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`investment by the court and the parties therein is relatively minimal…[t]hus, this
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`factor weighs strongly against exercising our discretion to deny institution.”
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`IPR2020-01302, Paper 9 at 14 (PTAB Jan. 28, 2021) (emphasis added).
`
`3
`
`
`
`Dated: September 9, 2021
`
`Respectfully submitted,
`
`Case IPR2021-00909 (Patent No. 8,243,593)
`
` /James L. Day /
`James L. Day
`Registration No. 72,681
`Attorney for Petitioner Cloudflare, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on September 9, 2021, I caused a complete and entire
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`copy of Petitioner Cloudflare’s Reply to Patent Owner’s Preliminary Response and
`
`all supporting exhibits to be served by electronic means to the following addresses:
`
`weatherwax@lowensteinweatherwax.com,
`Sable_IPRs@lowensteinweatherwax.com.
`
` /James L. Day /
`James L. Day
`Registration No. 72,681
`Farella Braun + Martel LLP
`235 Montgomery Street; 17th Floor
`San Francisco, CA 94104
`
`
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