Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CLOUDFLARE, INC. AND SONICWALL INC.,
`Petitioner,
`
`v.
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`SABLE NETWORKS, INC.,
`Patent Owner
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`____________
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`Case IPR2021-00909
`Patent 8,243,593
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`____________
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S PRELIMINARY
`RESPONSE REPLY
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`U.S. Pat. No. 8,243,593
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLOUDFLARE, INC. AND SONICWALL INC.,
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC.,
`Patent Owner
`
`____________
`
`Case IPR2021-00909
`Patent 8,243,593
`
`____________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S PRELIMINARY
`RESPONSE REPLY
`
`
`
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`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`EXHIBIT LIST
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`2001
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`2002
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`Josh McHugh, “The n-Dimensional SuperSwitch,” WIRED (May 1,
`2001, 12:00 am) (available at https://www.wired.com/2001/05/caspian/
`(last visited Aug. 16, 2021))
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`Email from Jun Zheng, U.S. District Court for Western District of
`Texas staff, to counsel for parties, with Subject “Sable Networks, Inc.,
`et al. v. Riverbed Technology, Inc., No. 6:21‐cv‐00175‐ADA and
`Sable Networks, Inc., et al. v. Cloudflare, Inc., No. 6:21‐cv‐00261‐
`ADA – Request for Telephone Conference” (Aug. 20, 2021, 9:04 am)
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`2003
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`Scheduling Order, Dkt. 21, Sable Networks, Inc., et al. v. Cloudflare,
`Inc., No. 6:21‐cv‐00261‐ADA (June 24, 2021)
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`i
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`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`I.
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`THE BOARD SHOULD DENY INSTITUTION UNDER § 314(a).
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`In Patent Owner’s Preliminary Response (Paper 8, “POPR”), Patent Owner
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`explains why the Board should exercise its discretion under 35 U.S.C. § 314(a) to
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`deny institution of the Petition here in view of a holistic review of all Fintiv
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`factors. Petitioner, on the other hand, dedicates its Reply to establishing a fact not
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`in dispute in an effort to improperly ask the Board to disregard all Fintiv factors
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`but Factor 2 (the proximity of the trial date to the statutory Final Written Decision
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`deadline).
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`Patent Owner has alleged infringement of four patents covering closely
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`related computer networking technologies by Petitioner. POPR at 66-67. There
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`are 20 claims of U.S. Patent No. 6,954,431 asserted in the co-pending district court
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`litigation that Petitioner has not challenged in inter partes review. Id. at 66-67.
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`Even if Petitioner succeeded on invalidating each and every challenged claim, it
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`would not prevent the parties and the court in the parallel proceeding from
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`expending resources necessary to litigate substantially similar validity issues—in
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`addition to infringement and damages issues—to a jury.
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`The Fintiv factors are non-exhaustive factors that the Board uses to take “a
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`holistic view of whether efficiency and integrity of the system are best served by
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`denying or instituting review.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
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`1
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`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`11, 6 (Mar. 20, 2020) (precedential). The heart of Patent Owner’s request that the
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`Board deny institution under § 314(a) is that it is inefficient to litigate the validity
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`of the claims at issue here in two parallel forums when patent claims covering
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`closely related technology and accused products will be litigated by the same
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`parties to a jury contemporaneous to the Final Written Decision deadline should
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`the Board institute inter partes review here. POPR at 64-70.
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`Petitioner offers no explanation (as there is none) as to how inter partes
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`review of the challenged claims here is an efficient use of Board or party resources
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`in light of the 20 unchallenged claims of the ’431 patent. Instead, Petitioner
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`spends two and a half pages explaining that “the district court has not set a trial
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`date before the final written decision in this proceeding.” Paper 9 at 1. This fact,
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`however, is not in dispute. See POPR at 67 (“the trial in the W.D. Texas litigation
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`is estimated to begin on January 12, 2023 . . . [t]he deadline for a final written
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`decision would not be until November 21, 2022.”). Regarding Fintiv Factor 2, the
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`POPR was candid – the statutory deadline for a Final Written Decision falls close
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`to but after the trial date of the parallel proceeding. In such a situation, Fintiv
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`Factor 2 is neutral. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper
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`12, 15 (Dec. 1, 2020) (designated precedential Dec. 17, 2020) (“Here, the trial is
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`scheduled to begin around the same time as our deadline to reach a final decision.
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`2
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`U.S. Pat. No. 8,243,593
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`Thus, we find that this factor does not weigh for or against denying institution in
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`this case.”).
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`Petitioner suggests that the January 12, 2023 trial date may move because
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`there are multiple cases with the same Markman hearing dates and because
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`Petitioner has filed a motion to transfer in the parallel litigation. Paper 9 at 1-3.
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`However, this is exactly the type of unsupported speculation the Board regularly
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`disregards. See Cisco Sys., Inc. v. Monarch Networking Sols. LLC, IPR2020-
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`01226, Paper 11, 10-11 (Mar. 4, 2021) (“declin[ing] to speculate” on whether a
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`pending transfer motion or “which [of six other] trials [scheduled on the same date]
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`will not occur on that date” when evaluating a district court’s trial date under
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`Fintiv Factor 2); Supercell Oy v. GREE, Inc., PGR2020-00034, Paper 13, 11 (Sept.
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`3, 2020) (“[T]he record lacks specific, non-speculative evidence to suggest . . .
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`delay of the trial date is likely in the parallel proceedings at issue here.”) (emphasis
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`added).
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`Petitioner fixates on comparing the timing of a final written decision against
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`the timing of trial in the parallel proceeding. A holistic analysis of the
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`circumstances relating to the Parties’ dispute shows that the Parties here are bound
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`for trial within two months of a final written decision. Instituting inter partes
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`review here would be an inefficient use of Board resources.
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`3
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`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`Date: September 16, 2021
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`4
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`Case IPR2021-00909
`U.S. Pat. No. 8,243,593
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
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`by electronic service, on the date signed below:
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S PRELIMINARY RESPONSE REPLY
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`The names and address of the parties being served are as follows:
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`James L. Day
`Daniel Callaway
`Winston Liaw
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` David C. Dotson
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`jday@fbm.com
`dcallaway@fbm.com
`wliaw@fbm.com
`calendar@fbm.com
`dcdotson@duanemorris.com
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`Respectfully submitted,
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`/ Colette Woo /
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`Date: September 16, 2021
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`5
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