`Tel: 571-272-7822
`
`
`
`
`
`Paper 21
`Entered: June 13, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner
`
`v.
`
`SEMANTEC CORPORATION,
`Patent Owner
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`
`____________
`
`
`
`Before RAMA G. ELLURU, DANIEL N. FISHMAN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01342
`Patent 8,661,498 B2
`
`
`On June 7, 2018, a conference call was conducted with counsel for the
`parties and Judges Elluru, Fishman, and White.
`Based on the record comprising the Petition (Paper 3), the Patent
`Owner Response (Paper 9), and each party’s supporting evidence, we issued
`a Decision on Institution granting review of claims 1, 2, 13, 28, and 39 and
`denying review of the remaining challenged claims. Paper 10. Following
`our Decision on Institution, Patent Owner filed a Response (Paper 14) with a
`statutory disclaimer (Ex. 2007) directed to all originally instituted claims.
`Petitioner then filed a Reply arguing that Patent Owner’s statutory
`disclaimer be construed as a request for adverse judgment by Patent Owner
`and requested the Board enter adverse judgment against Patent Owner
`finding the disclaimed claims (1, 2, 13, 28, and 39) unpatentable. Paper 15,
`2.
`
`After the above-identified filings, in view of SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348, 1352–53 (2018), we issued an order instituting all claims
`and all grounds (instituting the originally denied claims as “newly instituted
`claims”) and instructing the parties to confer regarding any scheduling
`changes and additional briefing they may require. Paper 17 (filed May 7,
`2018). Responsive to our instructions, the parties filed a Joint Motion to
`Amend Schedule proposing a revised schedule and, impliedly, requesting
`additional briefing. Paper 19 (“Motion”). Responsive to the Motion, we
`granted the requested schedule changes (with some adjustments), authorized
`Patent Owner to file a Supplemental Response addressing the newly
`instituted claims (claimed previously denied review for lack of a reasonable
`likelihood of prevailing), and authorized Petitioner to file a Supplemental
`Reply addressing issued raised by Patent Owner’s Supplemental Response.
`
`
`
`2
`
`
`
`IPR2017-01342
`Patent 8,661,498 B2
`
`Paper. 20 (“Order”). Our Order authorized fifteen (15) pages for each of the
`Supplemental Response and the Supplemental Reply. Order 4.
`During the June 7 conference call, Patent Owner requested the fifteen
`(15) page limit for its Supplemental Response be increased to fifty (50)
`pages. Petitioner suggested the page limit for both the Supplemental
`Response and the Supplemental Reply be increased to no more than thirty
`(30) pages. When asked what general issues Patent Owner intended to
`address in its Supplemental Response that would require fifty pages, Patent
`Owner’s counsel indicated it intended to address arguments raised in the
`Petition directed to the newly instituted claims, but indicated it had no
`intention of addressing Petitioner’s argument that Patent Owner’s statutory
`disclaimer of the originally instituted claims be deemed a request for adverse
`judgement.
`Having heard argument from both parties, we grant Patent Owner’s
`request and modify our prior Order to authorize Patent Owner to file a
`Supplemental Response of no more than fifty (50) pages and to authorize
`Petitioner to file a Supplemental Reply of no more than fifty (50) pages.
`Our earlier order remains unchanged regarding the revised schedule and
`unchanged in that Patent Owner’s Supplemental Response remains limited
`to addressing the newly instituted claims and Petitioner’s Supplemental
`Reply remains limited to addressing issues raised in Patent Owner’s
`Supplemental Response. Furthermore, no Motion to Amend has been
`requested or authorized.
`
`
`
`3
`
`
`
`IPR2017-01342
`Patent 8,661,498 B2
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized to file a Supplemental
`Response addressing the newly instituted claims, the Supplemental
`Response limited to fifty (50) pages filed no later than June 18, 2018
`(REVISED DUE DATE 1); and
`FURTHER ORDERED that Petitioner is authorized to file a
`Supplemental Reply addressing issued raised by Patent Owner’s
`Supplemental Response, the Supplemental Reply limited to fifty (50) pages
`filed no later than July 31, 2018 (REVISED DUE DATE 2).
`
`
`
`PETITIONER:
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@kvn.com
`
`
`PATENT OWNER:
`Chad C. Walters
`Kurt M. Pankratz
`James Williams
`Harrison G. Rich
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`james.williams@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
