UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`RADWARE, INC.,
`Petitioner
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`v.
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`F5 NETWORKS, INC.,
`Patent Owner
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`____________
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`Case IPR2017-01249
`Patent 6,311,278
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`____________________________________
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`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`RADWARE, INC.,
`Petitioner
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`v.
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`F5 NETWORKS, INC.,
`Patent Owner
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`____________
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`Case IPR2017-01249
`Patent 6,311,278
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`____________________________________
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`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Radware, Ltd. (“LTD”) is not a real party-in-interest (“RPI”). Radware,
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`Inc. (“INC”) is solely responsible for directing, controlling, and bearing the costs
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`of these petitions.1 Patent Owner, F5, relies on the parent/subsidiary relationship
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`to argue LTD is an RPI. However, the Board has repeatedly rejected the argument
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`that a traditional parent/wholly-owned-subsidiary relationship alone renders a
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`parent an RPI (especially when the parent is a foreign entity and the subsidiary is
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`a U.S. entity).2 Rather, RPI-analysis looks at the “relationship between a party and
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`a proceeding;” not to “the relationship between parties.” Daifuku at 7.
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`LTD has no relationship to these proceedings. First, apart from its
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`ownership interest in INC, LTD has no independent interest in adjudicating the
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`validity of the ’278 Patent because it has not been accused of infringement; nor
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`can it, because it has no operations and no direct sales in the U.S. Ex. 1014 at ¶¶
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`2, 6, 7. INC is the only entity that operates in the U.S., the only entity that makes
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`sales in the U.S., and the only entity accused of infringement. Id. at ¶ 2. However,
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`in an effort to shore up its argument that LTD is an RPI, F5 has misrepresented
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`the record by arguing LTD filed a declaratory judgment action of invalidity—
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`allegedly estopping both INC and LTD from petitioning the PTAB. Not true. LTD
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`1 A. Peles Declaration (Ex. 1013) at ¶ 7; G. Meroz Declaration (Ex. 1014) at ¶8.
`2 See, e.g., Daifuku Co., Ltd. V. Murata Mach., Ltd., IPR2015-01538, Paper 11
`(Jan. 19, 2016) (“Daifuku”); Par Pharm., Inc., v. Horizon Therapeutics, Inc., Paper
`13 (Nov. 4, 2015) (“Par”); see also Samsung, et al. v. Gold Charm LTD., IPR2015-
`01416, Paper 12 (Dec. 28, 2015) (“Samsung”); D-Link, Inc. v. Chrimar Sys., Inc.,
`IPR2016-01425, Paper 15 (Jan. 17, 2017) (“D-Link”).
`1
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`joined the litigation as a necessary party so INC, its exclusive licensee, could
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`counter-assert a paten owned by LTD. Id. at ¶ 5. LTD did not seek declaratory
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`judgment of invalidity—nor could it—given it has no controversy with F5’s
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`patents. Id. at ¶ 6. Only INC asserted a counterclaim for invalidity. See id. at ¶ 7.
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`The District Court presiding over the underlying litigation ruled F5’s arguments
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`“frivolous”, and held that LTD neither filed nor joined a declaratory judgment
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`action of invalidity against F5; in addition, the Court nearly sanctioned F5’s
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`counsel for making arguments F5 “should clearly lose on in the PTAB.” 3
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`Second, INC and LTD have not blurred corporate lines as F5 contends. The
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`decision to file an IPR, and all decisions related to the preparation and filing of
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`the petitions, were made by INC alone. Ex. 1013 at ¶ 7. INC and LTD are
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`separate companies with separate budgets; they maintain separate business
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`records, and pay separate taxes. Id. at ¶ 2; see Daifuku at 9.
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`Third, LTD has not controlled these proceedings. Despite F5’s claims to the
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`contrary, the Board has found (1) statements in Annual Reports unavailing (see
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`Samsung at 4, D-Link at 8); (2) coordinated efforts in unrelated litigation
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`irrelevant (see Par at 10); (3) representation by same counsel immaterial (see
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`Samsung at 9, D-Link at 8); and (4) shared officers and general counsel not
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`determinative when, as here, corporate form has been observed (see Daifuku at 9,
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`3 F. Marino Declaration (Ex. 1015) at ¶ 4; Ex. 1017, 2:12-15, 8:12-15. Also, under
`35 U.S.C. § 315(a)(3), there would still be no estoppel by filing a counterclaim.
`2
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`Par at 10). Although F5 argues that Mr. Meroz, LTD’s GC, signed the POA, in
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`truth, Mr. Meroz holds positions with both companies and, as can be seen in the
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`signature line, executed the POA in his capacity as an INC representative. Ex.
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`1014 at ¶ 10. F5 also points out Mr. Zisapel, yet identifies no evidence of actual
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`control by Mr. Zisapel over the IPRs. Moreover, INC’s identification of third-
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`party LTD witnesses in its litigation disclosures is no more indicative of control
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`than its identification of F5 witnesses. Ex. 1014 at ¶ 11; Ex. 2006 at 2-3; see
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`Daifuku at 12 (non-party testimony in earlier action does not show control).
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`Finally, all the cases F5 cites are factually distinguishable and involved
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`instances where the petitioner intentionally avoided naming a party as an RPI to
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`circumvent estoppel (see Paramount and Zoll); or where there was substantial
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`evidence of the parent’s direct involvement in the IPR (see Atlanta Gas); or where
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`petitioner failed to respond to the RPI challenge (see Amazon and Aceto). None of
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`these circumstances are present here. As explained above, LTD would not be
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`estopped from joining this IPR and INC would gain no benefit by arguing LTD is
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`not an RPI; F5 has presented no evidence of LTD’s control over the IPR; and,
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`unlike Amazon and Aceto, INC presented a point-by-point rebuttal. At bottom, F5
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`relies on the mere corporate relationship between INC and LTD, but fails to show
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`any evidence of LTD’s control over these petitions. Consistent with the Board’s
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`prior decisions, the Board should find LTD is not an RPI.
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`3
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`Dated: August 30, 2017
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`Respectfully submitted,
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`/s/ Fabio E. Marino
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`Fabio E. Marino (Reg. No. 43,339)
`McDermott Will & Emery LLP
`275 Middlefield Rd., Suite 100
`Menlo Park, CA 94025
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`4
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`Case No. IPR2017-001249
`U.S. Patent No. 6,311,278
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`CERTIFICATE OF COMPLIANCE WITH
`WORD COUNT UNDER C.F.R. §42.24(d)
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`This Reply complies with the type-volume limits of 37 C.F.R. 42.42(a)(1)(i)
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`because it contains no more than 14,000 words, excluding the parts of this Reply
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`that are exempted by 37 C.F.R. 42.42(a).
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`The word count was made by using the built-in word count function tool in
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`the Microsoft Word software Version 2010 used to prepare the document.
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`Dated: August 30, 2017
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`Respectfully submitted,
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`/s/ Fabio E. Marino
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`Fabio E. Marino (Reg. No. 43,339)
`McDermott Will & Emery LLP
`275 Middlefield Rd., Suite 100
`Menlo Park, CA 94025
`T: 650-815-7605
`F: 650-815-7401
`fmarino@mwe.com
`Lead Attorney for Patent Owner
`Radware, Ltd.
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that “REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE” and “CERTIFICATE OF SERVICE” for the
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`above-captioned matter were served by e-mail in their entirety on August 30, 2017,
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`upon the attorneys of record with the U.S. Patent and Trademark Office for U.S.
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`Patent No. 6,311,278 at the following e-mail address:
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`F5 Networks, Inc.
`c/o Perkins Coie LLP
`Christina J. McCullough (Reg. No. 58,720)
`cmccullough@perkinscoie.com
`Ramsey Al-Salam
`ralsalam@perkinscoie.com
`1201 Third Ave., Suite 4900
`Seattle, WA 98101-3099
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`/s/ Fabio E. Marino
`Fabio E. Marino
`McDermott Will & Emery LLP
`275 Middlefield Rd., Suite 100
`Menlo Park, CA 94025
`T: 650-815-7637
`F: 650-815-7401
`fmarino@mwe.com
`Lead Attorney for Patent Owner
`Radware, Ltd.
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`6
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