Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 8
`Entered: May 22, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RADWARE INC.,
`Petitioner,
`
`v.
`
`F5 NETWORKS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00653
`Patent 7,472,413 B1
`
`Case IPR2017-00654
`Patent 7,472,413 B1
`____________
`
`
`Before KRISTEN L. DROESCH, TRENTON A. WARD, and DAVID C.
`McKONE, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`
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`

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`IPR2017-00653; Patent 7,472,413 B1
`IPR2017-00654; Patent 7,472,413 B1
`
`
`A conference call was held on May 18, 2017, and attended by respective
`counsel for the parties. The conference was scheduled to discuss Petitioner’s
`request for authorization to file a Reply to Patent Owner’s Preliminary Response to
`respond to Patent Owner’s argument that Petitioner failed to properly identify all
`real parties-in-interest, namely Petitioner’s parent company, Radware, Ltd.
`See IPR2017-00653, Patent Owner’s Preliminary Response, Paper 7, 2–10;
`IPR2017-00654, Patent Owner’s Preliminary Response, Paper 7, 3–10. During the
`conference, Petitioner alternatively requested conditional permission to amend its
`mandatory notice to include an additional real party-in-interest, Radware, Ltd.
`Petitioner stated during the conference that if the Board were to determine that the
`easiest disposition of this issue is to simply add Radware, Ltd. as a “potential” real
`party-in-interest, Petitioner requests the ability to add Radware, Ltd., conditioned
`upon the Board entering an Order or otherwise ensuring that such an update would
`not require a new filing date be given to the Petition.
`Patent Owner opposes Petitioner’s request to file a reply to Patent Owner’s
`Preliminary Response. Patent Owner argued during the conference, as it did in its
`Preliminary Response, that a correction to Petitioner’s named real parties-in-
`interest is required, and that such a correction would require a new filing date
`under 37 C.F.R. § 42.106(b) and would bar Petitioner under 35 U.S.C. § 315(b).
`See IPR2017-00653, Patent Owner’s Preliminary Response, Paper 7, 9; IPR2017-
`00654, Patent Owner’s Preliminary Response, Paper 7, 10.
`The Board reminded Petitioner during the conference that it is under a
`continuing obligation to properly “[i]identify each real party-in-interest.”
`37 C.F.R. § 42.8(b). Specifically, Petitioner must file an updated mandatory notice
`“within 21 days of a change of the information listed in paragraph (b) of this
`section stated in an earlier paper.” Id. at § 42.8(a)(3). The Board is not in a
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`IPR2017-00653; Patent 7,472,413 B1
`IPR2017-00654; Patent 7,472,413 B1
`
`position to determine on behalf of Petitioner, which parties should be named.
`Furthermore, the Board cannot advise Petitioner prior to an update as to whether
`the addition of a new real party-in-interest would require a new filing date for the
`Petition. Thus, Petitioner’s request for the conditional ability to add Radware, Ltd.
`as a “potential” real party-in-interest is denied. If an update to Petitioner’s
`mandatory notice is required, Petitioner is reminded that it has a duty to provide
`such an update in compliance with 37 C.F.R. § 42.8. Upon the filing of such an
`updated mandatory notice, the parties may request a conference call with the Board
`to discuss steps going forward.
`After considering the respective positions of the parties, we find that good
`cause exists to grant Petitioner’s request to file a limited Reply to the Preliminary
`Response. See 37 C.F.R. § 42.108(c). Specifically, to the extent the Preliminary
`Response contains alleged factual inaccuracies relating to the real party-in-interest
`issue, Petitioner could not have been expected to anticipate and address those
`alleged inaccuracies in the Petition. Petitioner, therefore, is authorized to file a 3-
`page reply on or before June 2, 2017. The scope of the reply is limited to
`addressing any alleged factual inaccuracies in the portion of the Preliminary
`Response that relates to the real party-in-interest issue.
`Accordingly, Petitioner’s request for authorization to conditionally update its
`mandatory notice is denied and Petitioner’s request for authorization to file a Reply
`to Patent Owner’s Preliminary Response is granted.
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`IPR2017-00653; Patent 7,472,413 B1
`IPR2017-00654; Patent 7,472,413 B1
`
`
`ORDER
`
`Accordingly, it is hereby
`ORDERED that Petitioner may file a Reply to Patent Owner’s Preliminary
`Response in each matter, IPR2017-00653, Paper 7; IPR2017-00654, Paper 7,
`limited to addressing only the real party-in-interest issue;
`FURTHER ORDERED that each Reply shall be limited to three pages and
`be filed on or before June 2, 2017; and
`FURTHER ORDERED Petitioner’s request for authorization to
`conditionally update its mandatory notice is denied.
`
`PETITIONER:
`
`Fabio E. Marino
`Barrington Dyer
`MCDERMOTT WILL & EMERY LLP
`fmarino@mwe.com
`bdyer@mwe.com
`
`
`
`PATENT OWNER:
`
`Christina J. McCullough
`Ramsey M. Al-Salam
`PERKINS COIE LLP
`cmccullough@perkinscoie.com
`ralsalam@perkinscoie.com
`
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