`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`JUNIPER NETWORKS, INC. & PALO ALTO NETWORKS, INC.
`
`Petitioner,
`
`v.
`
`PACKET INTELLIGENCE LLC
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00485
`
`U.S. Patent No. 6,651,099
`
`____________
`
`PETITIONER’S PRELIMINARY REPLY TO PATENT OWNER’S PRE-
`LIMINARY RESPONSE ADDRESSING THE ISSUE OF DISCRETION-
`ARY DENIAL UNDER § 314(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`FACTUAL BACKGROUND.......................................................................... 1
`
`THE FINTIV FACTORS DO NOT SUPPORT DISCRETIONARY
`DENIAL OF INSTITUTION UNDER § 314(a) ............................................. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Fintiv Factor 1: The Juniper and PAN Litigations Are Likely To Be
`Stayed If The Petitions Are Instituted ................................................... 4
`
`Fintiv Factor 2: The PAN and Juniper Litigation Trial Dates May Be
`Pushed Back Due to Unresolved COVID-19 Related Delays .............. 5
`
`Fintiv Factor 3: Considerable Work Remains in the Juniper and PAN
`Litigations, and Past Investment Must Be Balanced Against Resolving
`Issues for Future Litigants ..................................................................... 7
`
`Fintiv Factors 4 And 5: The IPR May Resolve Claims That Will Not
`Be Tried In the Juniper and PAN Litigations ....................................... 7
`
`E.
`
`Fintiv Factor 6: The Merits of The Petitions Favor Institution ............. 8
`
`III. CONCLUSION ..............................................................................................10
`
`
`
`
`
`i
`
`
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`
`
`
`UPDATED LIST OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 6,651,099 (“the ’099 Patent”)
`
`1002 U.S. Patent No. 6,665,725 (“the ’725 Patent”)
`
`1003 U.S. Patent No. 6,771,646 (“the ’646 Patent”)
`
`1004 U.S. Patent No. 6,839,751 (“the ’751 Patent”)
`
`1005 U.S. Patent No. 6,954,789 (“the ’789 Patent”)
`
`1006 Declaration of Dr. Jon B. Weissman
`
`1007
`
`Curriculum vitae of Dr. Weissman
`
`1008 U.S. Patent No. 6,412,000 (“Riddle”)
`
`1009
`
`PCT Publication WO 92/19054 (“Ferdinand”)
`
`1010
`
`RFC 1945 - Hypertext Transfer Protocol -- HTTP/1.0 (“RFC1945”)
`
`1011 U.S. Patent No. 6,625,150 (“Yu”)
`
`1012
`
`Provisional Patent Application No. 60/112,859 (“the ’859 Provi-
`sional”)
`
`1013
`
`PCT Publication WO 97/23076 (“Baker”)
`
`1014 U.S. Patent No. 5,740,175 (“Wakeman”)
`
`1015 U.S. Patent No. 5,805,808 (“Hasani”)
`
`1016
`
`Provisional Patent Application No. 60/141,903 (“the ’903 Provi-
`sional”)
`
`1017
`
`File History for U.S. Patent No. 6,651,099
`
`1018
`
`File History for U.S. Patent No. 6,665,725
`
`1019
`
`File History for U.S. Patent No. 6,771,646
`
`ii
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`File History for U.S. Patent No. 6,771,646 – February 10, 2004, Re-
`sponse to Office Action
`
`Exhibit
`
`1020
`
`1021
`
`File History for U.S. Patent No. 6,839,751
`
`1022
`
`File History for U.S. Patent No. 6,954,789
`
`1023
`
`1024
`
`1025
`
`1026
`
`Certified Translation of German Federal Patent Court Nos. 2Ni 26/16
`(EP) and 2(Ni 46/16) (July 12, 2018)
`
`Provisional Patent Application No. 60/066,864 (“the ’864 Provi-
`sional”)
`
`Redline showing a comparison of Riddle to Provisional Patent Appli-
`cation No. 60/066,864
`
`Claim Chart comparing claims 1, 8, and 11 of Riddle to the specifica-
`tion of Provisional Patent Application No. 60/066,864
`
`1027 U.S. Patent Application 08/977,642 (“Packer Application”)
`
`1028 U.S. Patent Application 09/198,051 (“the ’051 Application”)
`
`1029 U.S. Patent No. 5,802,106
`
`1030 U.S. Patent No. 6,038,216
`
`1031 U.S. Patent No. 6,046,980 (“Packer”)
`
`1032
`
`PointCast Inc. is Testing a New Screen-Saver Product, The Wall
`Street Journal (April 15, 1996)
`
`1033 Gillin, Paul. Editorial, Computer World (May 13, 1996)
`
`1034
`
`Sneider, Daniel. Redefining News in the Era of Internet By Blending
`Print and Television, Silicon Valley Start-up Shakes up Traditional
`View of News, The Christian Science Monitor (June 26, 1996)
`
`1035
`
`PointCast Inc. 1998 SEC Filings
`
`1036 U.S. Patent No. 6,807,558
`
`1037
`
`RFC 765 – File Transfer Protocol (“RFC765”)
`
`iii
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Exhibit
`
`Description
`
`1038
`
`RFC 791 – Internet Protocol (“RFC791”)
`
`1039
`
`RFC 793 – Transmission Control Protocol (“RFC793”)
`
`1040
`
`RFC 1543 – Instructions to RFC Authors (“RFC1543”)
`
`1041
`
`RFC 2026 – The Internet Standards Process – Revision 3
`(“RFC2026”)
`
`1042
`
`RFC 2616 – Hypertext Transfer Protocol – HTTP/1.1 (“RFC2616”)
`
`1043
`
`International Standard ISO/IEC 7498 – Information Processing Sys-
`tems – Open Systems Interconnection – Basic Reference Model –
`Part 4: Management Framework (Nov. 15, 1989)
`
`1044
`
`Internet Archive Affidavit for RFC1945
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`Internet Archive Affidavit for RFC 1889 – RTP: A Transport Proto-
`col for Real-Time Applications (“RFC1889”)
`
`Internet Archive Affidavit for RFC 2326 – Real Time Streaming Pro-
`tocol (RTSP) (“RFC2326”)
`
`Chart comparing Yu to Provisional Patent Application No.
`60/112,859
`
`Claim Chart comparing Yu’s claim 1 to the Provisional Patent Appli-
`cation No. 60/112,859
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00769, Pa-
`per No. 10 (Opposition to Request for Rehearing) (September 15,
`2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00450, Pa-
`per No. 6 (Preliminary Response) (April 28, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00451, Pa-
`per No. 6 (Preliminary Response) (April 28, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00629, Pa-
`per No. 6 (Preliminary Response) (April 28, 2017)
`
`iv
`
`
`
`Exhibit
`
`1053
`
`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`
`1064
`
`1065
`
`1066
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00630, Pa-
`per No. 6 (Preliminary Response) (April 28, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00769, Pa-
`per No. 6 (Preliminary Response) (April 28, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00862, Pa-
`per No. 6 (Preliminary Response) (June 5, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00450, Pa-
`per No. 8 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00451, Pa-
`per No. 8 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00629, Pa-
`per No. 8 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00630, Pa-
`per No. 9 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00769, Pa-
`per No. 8 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00862, Pa-
`per No. 8 (Decision) (July 26, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00863, Pa-
`per No. 6 (Decision) (August 31, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00863, Pa-
`per No. 8 (Notice of Abandonment) (Dec. 1, 2017)
`
`Sandvine Corp. v. Packet Intelligence, LLC, No. IPR2017-00863, Pa-
`per No. 9 (Adverse Judgment) (Dec. 20, 2017)
`
`Nokia Corp. v. Packet Intelligence, LLC, No. IPR2019-01289,
`EX1006 (Declaration of Dr. Kevin Jeffay)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 55-21 (Packet Intelligence
`Technology Tutorial) (January 20, 2017)
`
`v
`
`
`
`Exhibit
`
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`
`1072
`
`1073
`
`1074
`
`1075
`
`1076
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 66 (Claim Construction
`Memorandum and Order) (March 14, 2017)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 244 (Transcript of Pro-
`ceedings held Oct. 10, 2017 AM Session) (October 17, 2017)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 250 (Transcript of Pro-
`ceedings held Oct. 12, 2017 PM Session) (October 17, 2017)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 314 (NetScout’s JMOL of
`No Infringement) (October 5, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 314-1 (Declaration of Mi-
`chael Lyons) (October 5, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 314-4 (Excerpts of Russell
`Dietz’s Demonstrative Slides) (October 5, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 323-1 (Declaration of Ste-
`ven Udick) (October 26, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 323-2 (Excerpts from Dr.
`Kevin Almeroth’s Direct Testimony Demonstrative Slides) (October
`26, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 324-1 (Declaration of Sa-
`daf R. Abdullah) (October 26, 2018)
`
`Packet Intelligence LLC, v. NetScout Systems, Inc. et al., E.D. Tex.
`Case No. 2:16-CV-230-JRG, Docket Item 324-2 (Dr. Kevin Alme-
`roth’s Rebuttal Testimony Demonstrative Slides) (October 26, 2018)
`
`vi
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`Packet Intelligence LLC, v. Ericsson Inc. et al., E.D. Tex. Case No.
`2:18-CV-00381-JRG, Docket Item 74 (Joint Claim Construction and
`Prehearing Statement) (June 7, 2019)
`
`Packet Intelligence LLC, v. Cisco Systems, Inc., E.D. Tex. Case No.
`2:14-CV-252-JRG, Docket Item 89 (Packet Intelligence LLC’s Open-
`ing Claims Construction Brief) (January 26, 2015)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Joint Claim Construction and Prehearing State-
`ment (December 17, 2019)
`
` Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(November 2019)
`
`Chart of third-parties’ previously-proposed terms subject to §112(6)
`and corresponding structure
`
`Exhibit
`
`1077
`
`1078
`
`1079
`
`1080
`
`1081
`
`1082
`
`Table Comparing Claims 1, 10, and 17 of the ’725 Patent
`
`1083 Declaration of Joseph Edell
`
`1084
`
`1085
`
`1086
`
`1087
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, August 20, 2019 Case Management Conference
`Transcript
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 35 (Pretrial Order) (September 3,
`2019)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Packet Intelligence LLC’s Disclosure Of As-
`serted Claims And Infringement Contentions To Palo Alto Networks,
`Inc. (September 24, 2019)
`
`Packet Intelligence LLC v. Juniper Networks, Inc., N.D. Cal. Case
`No. 3:19-cv-04741, Packet Intelligence LLC’s Disclosure Of As-
`serted Claims And Infringement Contentions To Juniper Networks,
`Inc. (January 23, 2020)
`
`vii
`
`
`
`Exhibit
`
`1088
`
`1089
`
`1090
`
`1091
`
`1092
`
`1093
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 49 (Joint Subsequent Case Manage-
`ment Statement) (December 31, 2019)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 50 (Civil Minutes) (January 7, 2020)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, January 8, 2020 Docket Entry
`
`Packet Intelligence LLC v. Juniper Networks, Inc., N.D. Cal. Case
`No. 3:19-cv-04741, Docket Item 38 (Civil Minutes) (January 7, 2020)
`
`Packet Intelligence LLC v. Juniper Networks, Inc., N.D. Cal. Case
`No. 3:19-cv-04741, Docket Item 48 (Stipulated First Amended
`Scheduling Order) (March 29, 2020)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 62 (Order Granting Palo Alto Net-
`works’ Proposed Modification to the Scheduling Order) (May 15,
`2020)
`
`1094
`
`Packet Intelligence Letter to Palo Alto Networks (January 18, 2019)
`
`1095
`
`1096
`
`1097
`
`1098
`
`1099
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 18 (Defendant and Counterclaimant
`Packet Intelligence LLC’s Answer and Counterclaims) (July 2, 2019)
`
`Palo Alto Networks, Inc. v. Packet Intelligence LLC, N.D. Cal. Case
`No. 3:19-cv-02471, Docket Item 27 (Joint Case Management State-
`ment) (August 13, 2019)
`
`Packet Intelligence LLC v. Juniper Networks, Inc., N.D. Cal. Case
`No. 3:19-cv-04741, Complaint (August 13, 2019)
`
`J&K IP Assets, LLC v. Armaspec, Inc., No. 17-cv-07308-WHO, Dkt.
`No. 45 (N.D. Cal. Apr. 24, 2019)
`
`J&K IP Assets, LLC v. Armaspec, Inc., No. 17-cv-07308-WHO, Dkt.
`No. 61 (N.D. Cal. September 12, 2019)
`
`viii
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`
`Description
`
`Packet Intelligence, LLC v. Sandvine Corp., E.D. Tex. Case No. 2:16-
`cv-00147, Docket Item 1 (Packet Intelligence LLC’s Complaint For
`Patent Infringement) (February 17, 2016)
`
`Packet Intelligence, LLC v. Sandvine Corp., E.D. Tex. Case No. 2:16-
`cv-00147, Docket Item 39 (Verdict Form) (November 9, 2017)
`
`Packet Intelligence, LLC v. Sandvine Corp., E.D. Tex. Case No. 2:16-
`cv-00147, Docket Item 66 (Final Judgment) (February 9, 2018)
`
`Exhibit
`
`1100
`
`1101
`
`1102
`
`ix
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`Contrary to Patentee’s mischaracterization, the judge presiding over the par-
`
`allel district court cases involving the challenged patent has expressed his inclina-
`
`tion to stay them if the Board institutes this IPR. And both cases remain in their
`
`early stages. Depositions and third-party discovery have yet to commence, expert
`
`discovery will not begin for over six months, and the court will likely not have is-
`
`sued any substantive orders relating to the patent prior to institution. The remaining
`
`Fintiv factors support institution rather than discretionary denial under § 314(a).
`
`Petitioner thus respectfully asks the Board to institute.
`
`I.
`
`FACTUAL BACKGROUND
`
`In the PAN case, Judge William H. Orrick held an initial case management
`
`conference (“CMC”) on August 20, 2019. Ex. 1084, 1. In their CMC statement,
`
`PAN and Patentee advised the court that Nokia, a defendant in a different jurisdic-
`
`tion, had recently filed IPR petitions against the five patents Patentee has asserted
`
`against Petitioner. Ex. 1096, 7. Less than a week before the CMC, Patentee filed its
`
`complaint against Juniper. Ex. 1097.
`
`Because of the recently filed Juniper case, Judge Orrick began the CMC be-
`
`tween Patentee and PAN by stating he may need to adjust the schedule proposed
`
`by Patentee and PAN “depending on what we do with Juniper.” Ex. 1084, 4, 6-7.
`
`He then addressed Nokia’s filed IPR petitions, asking “are we going to need to stay
`
`this case as a result of what’s going on with the PTAB, or are they independent or
`
`1
`
`
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`what’s the story?” Id., 7. During the dialogue that followed, Judge Orrick ex-
`
`plained his inclination to stay the case if IPRs are instituted:
`
`THE COURT: Okay. But if [the Nokia IPRs] are instituted, then it
`
`sounds like they will relate. This will cause a stay in the proceedings.
`
`PATENTEE COUNSEL: I understand that’s what courts typically do,
`
`but I would like to look at the circumstances at the time, Your Honor.
`
`THE COURT: Of course. Me too. Id., 7-8.
`
`Judge Orrick set a claim construction hearing for March 9, 2020 and trial for
`
`March 29, 2021. Ex. 1085, 1. He also scheduled a joint CMC for the PAN and Ju-
`
`niper cases for January 7, 2020. About a month after the August CMC, Patentee
`
`and Nokia settled their case and requested that the Board dismiss the pending IPRs,
`
`which the Board granted prior to institution. IPR2019-01290, Paper 9.
`
`On September 24—a month after the August CMC—Patentee disclosed for
`
`the first time the 33 claims it is asserting against PAN in the district court. Ex.
`
`1086, 2. Then on January 23, 2020, Patentee disclosed that it is asserting the same
`
`33 claims plus four additional claims against Juniper. Ex. 1087, 2. The Petition was
`
`filed shortly afterward, on February 4, 2020.
`
`Two weeks before Patentee served its disclosure on Juniper, Judge Orrick
`
`held the joint CMC in the PAN and Juniper cases. In its CMC statement, PAN
`
`stated that it expected to file IPR petitions against the five asserted patents. Ex.
`
`1088, 2. At the joint CMC, the court and the parties discussed resetting dates due
`
`2
`
`
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`to the Juniper case, including trial, and having another CMC after the claim con-
`
`struction hearing “just to talk about anything that’s going on.” Ex. 2005, 4, 10.
`
`As with the prior CMC, the court asked about the potential for IPRs. PAN
`
`indicated that it intended to file IPRs soon and discussed timing issues with the
`
`court. Id., 3-4. At the end, PAN asked whether the court would be open to a pre-
`
`institution stay motion based on the filing of the IPR petitions:
`
`PAN COUNSEL: Your Honor, for Palo Alto Networks, I will say that
`
`if Your Honor would be open to it, we would file a stay motion based
`
`on the filing of the IPRs not waiting until the petitions are ruled on. This
`
`would be -- it sort of would be within your discretion to grant it. It
`
`would be a two-for-one deal perhaps, if you would, and it would obviate
`
`a claim construction hearing and all the processes associated with that.
`
`Id., 10-11.
`
`At that time, claim construction was tentatively set for June. Id., 10. In response to
`
`PAN’s question, Judge Orrick advised PAN to “save your money” on a pre-institu-
`
`tion stay motion and wait to file the motion until after institution decisions. Id., 11.
`
`After the joint CMC, the Court confirmed a joint claim construction hearing
`
`for June 19, 2020, to be followed by a joint CMC. Ex. 1089. The court also reset
`
`the PAN trial to May 31, 2021 (revised to June 1) and set the Juniper trial for Sep-
`
`tember 13, 2021. Id.; Ex. 1090-1091. Due to the ongoing COVID-19 situation, the
`
`parties requested to amend the schedules of the Juniper and PAN cases, which the
`
`court granted. Ex. 1092; Ex. 1093. This resulted in the joint claim construction
`
`3
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`
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`hearing being rescheduled for August 14, 2020, “or as the Court determines.” The
`
`PAN trial was reset again to August 30, 2021, “or as determined by the Court.”
`
`II. THE FINTIV FACTORS DO NOT SUPPORT DISCRETIONARY DE-
`NIAL OF INSTITUTION UNDER § 314(a)
`
`A. Fintiv Factor 1: The Juniper and PAN Litigations Are Likely To
`Be Stayed If The Petitions Are Instituted
`
`Judge Orrick’s statements at the initial CMC in the PAN case regarding the
`
`then-pending Nokia IPRs show that he will likely stay the cases in the event that
`
`IPRs are instituted. Indeed, he stated that an institution of those IPRs would “cause
`
`a stay in the proceedings.” Ex. 1084, 7-8.
`
`In its Preliminary Response, Patentee mischaracterizes the exchange be-
`
`tween the court and PAN at the January 7, 2020 CMC and did not discuss or sub-
`
`mit the transcript from the prior CMC.1 The January 7 exchange was not a discus-
`
`sion regarding staying the case post-institution. PAN explicitly and specifically
`
`asked about “fil[ing] a stay motion based on the filing of the IPRs not waiting until
`
`the petitions are ruled on.” Ex. 2005, 10-11. Judge Orrick responded that he used
`
`to grant such pre-institution stays, but no longer does so. Id. This exchange pro-
`
`ceeded in this manner because Judge Orrick had already stated in the prior CMC
`
`that institution of relevant IPRs would result in a stay. Ex. 1084, 7-8.
`
`
`1 Patentee objected to submitting the prior CMC transcript to the Board. Ex. 3002.
`
`4
`
`
`
`IPR2020-00485
`U.S. Patent No. 6,651,099
`Judge Orrick’s recent decisions confirm that he will stay cases upon institu-
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`tion, while denying pre-institution motions to stay as premature. For example, in
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`J&K IP Assets, LLC v. Armaspec, Inc., decided last year, Judge Orrick denied Ar-
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`maspec’s pre-institution motion to stay as premature “without prejudice to renew[]
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`if the PTAB institutes an IPR.”2 After institution, he granted the stay.3 Further, in
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`Contour IP Holding, LLC v. GoPro, Judge Orrick issued a post-institution stay
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`pending IPRs, finding that case was still in its early stages even though there had
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`already been multiple fact depositions and expert discovery.4 In the PAN and Juni-
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`per cases, there have been no depositions or expert discovery.
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`Accordingly, Fintiv factor 1 weighs strongly against discretionary denial.
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`B.
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`Fintiv Factor 2: The PAN and Juniper Litigation Trial Dates May
`Be Pushed Back Due to Unresolved COVID-19 Related Delays
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`As Patentee indicated, both the PAN and Juniper trials are scheduled to oc-
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`cur around the time the Board would issue its final written decisions. The Juniper
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`trial is scheduled to begin on September 13, 2021—after the Board would issue its
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`final written decision in this IPR. The PAN trial is scheduled for August 30, 2021.
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`But both trial dates are tentative due to the COVID-19 pandemic and Patentee’s
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`2 No. 17-cv-07308-WHO, Dkt. No. 45 (N.D. Cal. Apr. 24, 2019) (Ex. 1098).
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`3 No. 17-cv-07308-WHO, Dkt. No. 61 (N.D. Cal. Sept. 12, 2019) (Ex. 1099).
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`4 2018 WL 6574188, *2-*3 (N.D. Cal. Dec. 12, 2018).
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`5
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`stated preference for a three-month gap between the PAN and Juniper trials (dis-
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`cussed below). The court has twice pushed back the PAN trial date at the request
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`of the parties, including due to the COVID-19 pandemic, with the current date sub-
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`ject to the caveat “or as determined by the Court.” Exs. 1092-1093. And in view of
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`the pandemic, it remains uncertain when the requisite preceding hearings, deposi-
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`tions, and conferences will occur before both the Juniper and PAN trials.
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`At the January 7 CMC, Patentee expressed a preference to space out the two
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`trials by at least three months. Ex. 2005, 4, 8. When the court tentatively set the
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`PAN trial for May 31, 2021, Patentee requested moving back the Juniper trial from
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`the August 23 date it had proposed to provide a three-month separation between
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`trials. Ex. 2005, 4, 8. Now that the current schedules provide only two weeks be-
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`tween the PAN and Juniper trial dates, the Juniper trial likely will be pushed back
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`again to maintain Patentee’s requested three-month separation.
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`With the fluid trial dates, the Juniper trial scheduled to begin after the IPR
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`final written decisions, and the near-term availability of in-person proceedings in
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`continued doubt due to COVID-19, Fintiv factor 2 weighs slightly against denial.5
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`5 See, e.g., Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
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`LLC, IPR2019-01393, Paper 24, 8-10 (P.T.A.B. June 16, 2020) (finding uncer-
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`tainty of district court trial schedule due to ongoing pandemic favors not exercising
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`discretionary denial).
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`6
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`C. Fintiv Factor 3: Considerable Work Remains in the Juniper and
`PAN Litigations, and Past Investment Must Be Balanced Against
`Resolving Issues for Future Litigants
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`While the parties have exchanged initial contentions and claim construction
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`briefing has begun, discovery relating to prior art and invalidity is far from com-
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`plete. No fact witnesses or experts have been deposed. There has been no expert
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`discovery.6 Moreover, the court’s likely stay of the litigation upon institution will
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`put a hold on future investment in the parallel cases. And any past investment must
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`be balanced against the benefit to other companies of the Board’s resolution of im-
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`portant invalidity issues. See § II.D below.
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`As for claim construction, even if the August hearing proceeds as scheduled,
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`the Court will likely not have ruled before the Board decides institution.7 This fac-
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`tor weighs against discretionary denial, as well.
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`D. Fintiv Factors 4 And 5: The IPR May Resolve Claims That Will
`Not Be Tried In the Juniper and PAN Litigations
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`Petitioner challenges all asserted claims, and, as noted by Patentee, Peti-
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`6 Patentee’s contention that “the parties have been engaged in extensive discovery
`
`and code review” is incorrect. POPR, 30-31. While there has been a modicum of
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`invalidity-related document production, it has been principally limited to prior art
`
`and prosecution histories. And there has been no review of Juniper’s source code.
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`7 The Court assumed that it may rule about a month after the hearing. Ex. 2005, 5.
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`7
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`tioner’s grounds rely on references charted in Petitioner’s contentions in the litiga-
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`tions. However, expert reports or other evidence have not been presented in the liti-
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`gations, and Patentee has not responded to the invalidity contentions; it is therefore
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`premature to compare arguments, evidence, or issues.
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`Further, in the district court trials, Patentee will almost certainly not assert
`
`all 37 claims challenged in these IPRs. For example, in its case against Sandvine,
`
`Patentee initially asserted the five patents-at-issue in these IPRs but asserted only
`
`claim 10 of the ’725 Patent, claim 19 of the ’789 Patent, and claims 1 and 5 of the
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`’751 Patent at trial. Exs. 1100-1102. Thus, these IPRs will address the validity of
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`claims, and likely whole patents, that the district court trials will not address.
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`Regardless, a related factor weighs against discretionary denial because Pa-
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`tentee has claimed that the patents-at-issue in the litigations are “ubiquitously used
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`by network router sellers and manufacturers,” and has sent notice letters to other
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`companies. Ex. 1094; Ex. 1095, ¶ 6. Patentee has a history of asserting its patents,
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`and its statements support a likelihood that it will continue to assert them against
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`others. Institution and a public trial record of the important invalidity grounds in
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`the Petition will reduce issues for the public.
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`E.
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`Fintiv Factor 6: The Merits of The Petitions Favor Institution
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`Patentee mischaracterizes the current petitions as substantially the same as
`
`those filed in Sandvine’s previous IPRs. But Sandvine’s petitions did not present
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`8
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`the same primary references or obviousness grounds. For example, Petitioner relies
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`on the Riddle, Yu, and RFC1945 references to show that identifying “conversa-
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`tional flows” was known in the art. None of those references is substantially the
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`same as the Engel reference on which Sandvine principally relied.
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`Moreover, Patentee’s assertion that Petitioner’s references do not disclose
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`conversational flows is incorrect. For example, Riddle teaches “[a] service aggre-
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`gate … provided for certain applications that use more than one connection in a
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`particular conversation between a client and a server” (Ex. 1008, 11:11-23); and
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`Yu describes “[a] flow classification specification … as detailed as defining a spe-
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`cific pair of hosts running a specific application” and that “a flow may include one
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`or more streams” (Ex. 1011, 3:34-36, 4:7-8). Such disclosures were not previously
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`before the Board. Further, the bulk of Patentee’s Preliminary Response emphasizes
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`limitations not found in its proposed construction of “conversational flow,” e.g., re-
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`quiring flows to be related “based on specific application activity by a particular
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`user or client.” POPR, 3. But even under Patentee’s restrictive view of its construc-
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`tion, each Petition shows that, for example, Riddle teaches relating flows based on
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`an FTP application using a client IP address, i.e., a specific activity by a particular
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`user or client. E.g., IPR2020-00335, Paper 3, 44, 48-49, 65-66, 69-71.
`
`Finally, Patentee’s discussion of the General Plastic factors is inapplicable
`
`here. Juniper and PAN are not serial petitioners, as neither Juniper nor PAN has
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`9
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`previously challenged the patents-at-issue. And Patentee’s arguments about when
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`Juniper or PAN may have known of various references or the Sandvine IPRs are
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`irrelevant. As discussed above, Juniper and PAN filed their petitions promptly after
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`Patentee identified the claims asserted against them.
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`III. CONCLUSION
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`The judge presiding over the parallel district court cases has indicated that
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`he intends to stay them if the Board institutes. Both cases remain in their early
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`stages. The remaining Fintiv factors support institution rather than discretionary
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`denial under § 314(a). Thus, Petitioner respectfully asks the Board to institute.
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`Dated: July 1, 2020
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`Respectfully submitted,
`
`/Scott McKeown/
`Scott A. McKeown
`Reg. No. 42,866
`
`10
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`IPR2020-00485
`U.S. Patent No. 6,651,099
`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONER’S
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`PRELIMINARY REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`ADDRESSING THE ISSUE OF DISCRETIONARY DENIAL UNDER § 314(a)
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`was served via electronic mail to the following attorneys of record for the Patent
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`Owner listed below:
`
`R. Allan Bullwinkel – Lead Counsel
`Reg. No. 77,630
`Heim Payne & Chorush, LLP
`1111 Bagby Street, Suite 2100
`Houston, TX 77002
`Telephone: 713-221-2000
`Facsimile: 713-221-2021
`abullwinkel@hpcllp.com
`
`Michael F. Heim – Back-Up Counsel
`Reg. No. 32,702
`Heim Payne & Chorush, LLP
`1111 Bagby Street, Suite 2100
`Houston, TX 77002
`Telephone: 713-221-2000
`Facsimile: 713-221-2021
`mheim@hpcllp.com
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`Dated: July 1, 2020
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`By: /Crena Pacheco/
`Name: Crena Pacheco
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