`Tel: 571.272.7822 ©
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`Paper 59
`Entered: January 29, 2019
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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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`PALO ALTO NETWORKS, INC.,
`Petitioner,
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`FINJAN, INC.,
`Patent Owner.
`
`Case IPR2016-00151!
`Patent 8,141,154 B2
`
`Before THOMASL. GIANNETTI, MIRIAML. QUINN,and
`PATRICK M. BOUCHER,Administrative Patent Judges.
`
`QUINN,Administrative Patent Judge.
`\
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`ORDER
`Granting Joint Motion to Terminate as to Symantec Corp.
`37 CFR. § 42.74
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`'In Case IPR2016-01071, Symantec Corp.filed, and we granted, a request
`to join this proceedingaspetitioner. Paper 11. Pursuant to this Order,
`Symantec Corp. is dismissed.
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`
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`IPR2016-00151
`Patent 8,141,154 B2
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`Joint Petitioner, Symantec Corp. (“Symantec”), and Patent Owner,
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`Finjan, Inc. (“Finjan”), jointly move to terminate the instant inter partes
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`review with respect to Symantecin light of the settlement that resolves their
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`dispute regarding U.S. Patent No. 8,141,154 B2. Paper 57. Symantec and
`Finjan alsofiled a true copy of their written settlement agreementin
`connection with the termination as required by 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(b). Ex. 2044. Pursuant to 37 C.F.R. § 42.74(c), the parties
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`further filed a joint request to treat the Settlement Agreementas business
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`confidential information kept separate from thefile of the involved patent.
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`Paper 58.
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`For the reasons set forth below, the Joint Motion to Terminate with
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`respect to Symantec, and the Joint Requestto File Settlement Agreementas
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`Business Confidential Information are granted.
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`Under the Leahy-Smith America Invents Act, settlement between the
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`parties to a proceeding is encouraged. Notably, 35 U.S.C. § 317(a), in part,
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`provides the following (emphasis added):
`(a) INGENERAL.—Aninterpartes review instituted underthis
`chapter shall be terminated with respect to any petitioner upon
`the joint request of the petitioner and the patent owner, unless
`the Office has decided the merits of the proceeding before the
`request for termination is filed. If the inter partes review is
`terminated with respect to a petitioner under this section, no
`estoppel undersection 315(e) shall attach to the petitioner, or to
`the real party in interest or privy of the petitioner, on the basis of
`that petitioner’s institution ofthat inter partes review.
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`Here, although the instant inter partes review was completed and we
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`issued a Final Written Decision, the proceeding is on remand from the
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`Federal Circuit, and that Final Written Decision has been vacated. Upon
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`review of the procedural posture of this proceeding and the facts beforeus,
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`
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`IPR2016-00151
`Patent 8,141,154 B2
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`_we determinethatit is appropriate to terminate this proceeding with respect
`Symantec. The proceeding, however, will not be terminated with respect to
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`Palo Alto Networks, Inc. and Finjan.
`In consideration of the foregoing,it 1s hereby:
`ORDEREDthat the Joint Motion to Terminate, with respectto.
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`Symantec, is granted;
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`FURTHER ORDEREDthatthis review is terminated with respectto
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`Symanteconly;but this review continues to proceed with Finjan and the
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`remaining Petitioner;
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`FURTHER ORDEREDthatthe Joint Request to File Settlement
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`Agreement as Business Confidential Information and to keep such
`settlement agreement separate from the patentfile, and to makeit available
`only to Federal Governmentagencies on written request, or to any person on -
`a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted.
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`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`PETITIONER:
`Matthew I. Kreeger
`Jonathan Bockman
`Shouvik Biswas
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Nathaniel Hamstra
`Nathanhamstra@quinnemanuel.com
`
`PATENT OWNER:
`
`James Hannah
`Jeftrey H. Price
`Michael Kim
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`:
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`;
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