IPR2021-00909
`Joint Motion to Terminate
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`
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`
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`CLOUDFLARE, INC. and SONICWALL INC.,
`Petitioner,
`v.
`SABLE NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2021-00909
`Patent 8,243,593
`____________________________
`
`JOINT MOTION OF SONICWALL INC. AND SABLE NETWORKS, INC.
`TO TERMINATE AS TO SONICWALL INC.
`PURSUANT TO 35 U.S.C. § 317
`
`
`Joint Motion to Terminate
`
`
`c
`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 No. IPR2021-00909
`Patent 8,243,593
`____________________________
`
`JOINT MOTION OF SONICWALL INC. AND SABLE NETWORKS, INC.
`TO TERMINATE AS TO SONICWALL INC.
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`IPR2021-00909
`Joint Motion to Terminate
`
`
`2001
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`EXHIBIT LIST
`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))
`2002 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.
`
`Request for Telephone Conference” (Aug. 20, 2021, 9:04 am)
`2003 Scheduling Order, Dkt. 21, Sable Networks, Inc., et al. v. Cloudflare, Inc.,
`
`Riverbed Technology, Inc., No. 6:21‐cv‐00175‐ADA and Sable
`Networks, Inc., et al. v. Cloudflare, Inc., No. 6:21‐cv‐00261‐ADA –
`No. 6:21‐cv‐00261‐ADA (June 24, 2021)
`
`2100 Settlement agreement (contains business confidential information)
`[NEWLY ADDED]
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`i
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, one of the two
`
`IPR2021-00909
`Joint Motion to Terminate
`
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`petitioner constituents in this proceeding, SonicWall Inc. (“SonicWall”), together
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`with Patent Owner Sable Networks, Inc. (“Patent Owner”) (collectively “the
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`Settling Parties”), jointly request termination of inter partes review (“IPR”) of the
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`pending case as to SonicWall.
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`For the Board’s convenience, it is noted that this is one of three substantially
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`identical motions being filed simultaneously in three cases variously challenging
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`claims of U.S. Patent Nos. 8,243,593, 6,977,932, and 7,012,919 (collectively, the
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`“Patents-At-Issue”), including the present case, as laid out below:
`
`IPR
`IPR2021-00909
`IPR2021-00969
`IPR2021-01005
`
`
`Patent
`8,243,593
`6,977,932
`7,012,919
`
`The disputes between SonicWall and Patent Owner have been resolved, and
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`pursuant to a written agreement (the “Settlement Agreement”) that resolves those
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`disputes, the Settling Parties now move to terminate this IPR as to SonicWall. In
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`accordance with 37 C.F.R. § 42.20(b), the Settling Parties jointly sought
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`authorization to file this motion, and received such authorization from the Board
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`on September 29, 2021.
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`Termination is proper for at least the following reasons:
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`1
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`
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`• The Board has not yet “decided the merits of the proceeding before the
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`IPR2021-00909
`Joint Motion to Terminate
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added); 77
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`Fed. Reg. at 48,768 (“The Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding.”). In this case, no decision regarding
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`whether to grant or deny institution has yet been entered. This supports the
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`propriety of terminating this proceeding. Id. And 35 U.S.C. § 317(a)
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`provides that even “[a]n inter partes review instituted under this chapter shall
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`be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.”
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`• The Settling Parties are jointly requesting termination. 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012) (“There are strong public policy reasons to favor
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`settlement between the parties to a proceeding”).
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`• Other proceedings involving the Patents-At-Issue that have been recently
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`terminated pursuant to settlement include:
`
`o Sable Networks, Inc. et al. v. Dell Technologies Inc. et al., No. 6:20-cv-
`00569-ADA (W.D. Tex.) (Order of dismissal with prejudice, Jan. 25,
`2021 (Dkt. 47));
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`2
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`IPR2021-00909
`Joint Motion to Terminate
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`o Sable Networks, Inc. et al. v. Fortinet, Inc., No. 5:20-cv-00109-RWS
`(E.D. Tex.) (Order of dismissal with prejudice, Jan. 26, 2021 (Dkt. 64)),
`No. 5:20-cv-00196-RWS (E.D. Tex.) (Order granting agreed motion to
`dismiss with prejudice, Jan. 26, 2021 (Dkt. 14));
`o Sable Networks, Inc. et al. v. Juniper Networks, Inc., No. 6:20-cv-00524-
`ADA (W.D. Tex.) (stipulation of dismissal with prejudice, Jan. 20, 2021
`(Dkt. 64));
`o Sable Networks, Inc. et al. v. Nokia Corp. et al., No. 6:20-cv-00808-ADA
`(W.D. Tex.) (Order of dismissal with prejudice, Jan. 26, 2021 (Dkt. 33));
`o Sable Networks, Inc. et al. v. Hewlett Packard Enterprise Company et al.,
`No. 5:20-cv-00120-RWS (E.D. Tex.) (Order of dismissal with prejudice,
`Jan. 21, 2021 (Dkt. 39)); and
`o Sable Networks, Inc. et al. v. Palo Alto Networks, Inc., No. 5:20-cv-
`00111-RWS (E.D. Tex.) (Order of dismissal with prejudice, Jan. 26,
`2021 (Dkt. 29)).
`o Sable Networks, Inc. et al. v. Forcepoint LLC, No. 6:21-cv-00241-ADA
`(W.D. Tex.) (stipulation of dismissal with prejudice, Jul. 06, 2021 (Dkt.
`19)).
`o Sable Networks, Inc. et al. v. SonicWall Inc., No. 6:21-cv-00190-ADA
`(W.D. Tex.) (stipulation of dismissal with prejudice, Aug. 02, 2021 (Dkt.
`22)).
`o Sable Networks, Inc. et al. v. Check Point Software Techs., Ltd. et al.,
`No. 1:21-cv-00201-LPS (D. Del.) (stipulation of dismissal with
`prejudice, Apr. 23, 2021 (Dkt. 8)).
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`3
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`IPR2021-00909
`Joint Motion to Terminate
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`• The other pending proceedings involving the Patents-At-Issue, and the status
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`of those proceedings, are listed in the margin.1 It is noted that settling
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`petitioner SonicWall Inc. is not involved in those pending proceedings, and
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`this Joint Motion to Terminate is intended only to conclusively resolve the
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`disputes between SonicWall and Patent Owner. Aside from the proceedings
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`identified above, the Settling Parties are unaware of any other pending
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`proceedings relating to the Patents-At-Issue before the Board, or any other
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`matter before the USPTO that would be affected by the requested
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`termination of this proceeding.
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`• Pursuant to the Settlement Agreement, the Settling Parties have jointly
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`sought authorization from the Board to file this Motion to Terminate, and
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`have received such authorization.
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`The Settlement Agreement, Exhibit 2100, has been made in writing, and a
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`true and correct copy will be filed with this Office as business confidential
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`1 One or more of the Patents-At-Issue are also at issue in:
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`• Sable Networks, Inc. et al. v. Cloudflare, Inc., No. 6-21-cv-00261 (W.D. Tex.);
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`• Sable Networks, Inc. et al. v. Splunk Inc. et al., No. 5-21-cv-00040 (E.D. Tex.);
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`• Sable Networks, Inc. et al. v. Riverbed Tech., Inc., No. 6-21-cv-00175 (W.D.
`Tex.).
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c). The
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`IPR2021-00909
`Joint Motion to Terminate
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`Settling Parties certify that there are no other collateral agreements or
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`understandings made in connection with, or in contemplation of, the termination of
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`this inter partes review.
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`For the foregoing reasons, the Settling Parties jointly and respectfully
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`request that the Board terminate the instant proceeding as to SonicWall.
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`
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`Date: October 1, 2021
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`Date: October 1, 2021
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`Respectfully submitted,
`
`/David C. Dotson/
`David C. Dotson (Reg. No. 59,427)
`DUANE MORRIS LLP
`1075 Peachtree Street NE, Suite 1700
`Atlanta, GA 30309-3929
`Telephone: (404) 253-6982
`dcdotson@duanemorris.com
`
`Counsel For SonicWall Inc.
`
`
`
`/Kenneth J. Weatherwax/
`Kenneth J. Weatherwax (Reg. No. 54,528)
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`Telephone: (310) 307-4500
`weatherwax@lowensteinweatherwax.com
`
`Lead Counsel for Sable Networks, Inc.
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`5
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`IPR2021-00909
`Joint Motion to Terminate
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the following
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`document(s) was served on the date signed below:
`
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`The names and addresses of the parties being served are as follows:
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`Cloudflare, Inc.:
`James L. Day
`Daniel Callaway
`Winston Liaw
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`SonicWall Inc.:
`David C. Dotson
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`jday@fbm.com
`dcallaway@fbm.com
`wliaw@fbm.com
`calendar@fbm.com
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`dcdotson@duanemorris.com
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`Respectfully submitted,
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` /Vinson Lin/
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`Date: October 1, 2021
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