`Tel: 571-272-7822
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`
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`Paper 9
` Entered: June 24, 2016
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00480
`Patent 7,647,633 B2
`_______________
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`I.
`
`INTRODUCTION
`
`Blue Coat Systems, Inc. (“Petitioner” or “Blue Coat”) filed a Petition
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`(Paper 3, “Pet.”) requesting inter partes review of claims 14, 68, 13, 14,
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`19, 28, and 34 (“the challenged claims”) of U.S. Patent No. 7,647,633 B2
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`(Ex. 1001, “the ’633 patent”), and concurrently filed a Motion for Joinder
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`(Paper 4, “Mot.”). The Motion for Joinder seeks joinder of this proceeding
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`with Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2015-01974 (“the
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`PAN IPR”). Mot. 1. Patent Owner filed a Preliminary Response (Paper 8)
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`that includes an opposition to the Motion for Joinder. For the reasons
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`described below, we institute an inter partes review of claims 14 and 19, and
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`grant Petitioner’s Motion for Joinder.
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`II.
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`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those we
`
`considered in the PAN IPR, which was instituted on March 29, 2016. See
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`Pet. 45. The trial in the PAN IPR is directed to the grounds of
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`unpatentability challenging claims 14 and 19 as obvious over:
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`1) Shin1; and
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`2) Poison Java2 and Brown.3
`
`
`1 Insik Shin, et al., Java Bytecode Modification and Applet Security
`(Technical Report, Computer Science Dept., Stanford University, 1998),
`https://web.archive.org/web/19980418130342/http://www-cs-
`students.stanford.edu/~ishin/reserach.html (Ex. 1009).
`
`2 Eva Chen, Poison Java, IEEE SPECTRUM, August 1999 at 38 (Ex. 1004).
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`3 MARK W. BROWN, SPECIAL EDITION USING NETSCAPE 3, (Que Corp. 1996)
`(Ex. 1041).
`
`
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`2
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`PAN IPR, slip. op. at 16 (PTAB March 29, 2016) (Paper 7) (“’1974
`
`Decision”). All other grounds in the PAN IPR were denied institution.
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`Upon review of the Petition here, we note that it is an identical, almost
`
`word-for-word copy of the Petition in the PAN IPR. Mot. 1 (“The Petition
`
`. . . is practically a copy of Palo Alto Network’s petition with respect to the
`
`proposed grounds, including the same analysis of the prior art and expert
`
`testimony.”).
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`
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`Notwithstanding the fact that the petitions are practically identical,
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`Patent Owner argues that the Petition here should be denied on the merits for
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`two reasons. First, Patent Owner argues that Shin does not disclose
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`“downloadable-information” and “executable code.” Prelim. Resp. 4345.
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`Second, Patent Owner argues that neither Shin nor Poison Java discloses
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`“the executable code at the destination.” Id. at 4547; 5356. We are not
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`persuaded at this juncture by either argument.
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`
`
`Claim 14 recites the following:
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`14. A computer program product, comprising a
`computer usable medium having a computer readable
`program code therein, the computer readable program
`code adapted to be executed for computer security, the
`method comprising:
`providing a system, wherein the system comprises
`distinct software modules, and wherein the distinct
`software modules comprise an information re-
`communicator and a mobile code executor;
`receiving, at
`the
`information
`re-communicator,
`downloadable-information including executable
`code; and
`causing mobile protection code to be executed by the
`mobile code executor at a downloadable-
`information destination such that one or more
`operations of
`the executable code at
`the
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`
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`3
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`destination, if attempted, will be processed by the
`mobile protection code.
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`
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`
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`Patent Owner argues that claim 14 requires the disclosure of
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`“downloadable-information” as well as “executable code,” but that
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`Petitioner has only pointed to Shin’s Java applet without identifying
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`separately each of the “downloadable-information” and “executable code.”
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`Prelim. Resp. 44. In other words, Patent Owner argues that Petitioner has
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`failed to meet the burden of showing that these two claim limitations are met
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`by a specific (and distinct) disclosure in Shin. Id. This argument is not
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`persuasive because it ignores that Petitioner specifically identified distinct
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`Shin components as meeting the two claim limitations. For example, we
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`note that the Petition identifies messages received by the HTTP proxy server
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`as meeting the recited “downloadable information.” Pet. 39 (also stating that
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`the HTTP proxy server of Shin forwards messages between client and web
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`server). On the other hand, the Petition points to a Java applet as
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`“executable code.” Pet. 41 (stating that “Shin also discloses that the
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`safeguarding code processes operations attempted by the applet (‘executable
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`code’)”). Accordingly, the Petition here points to two different disclosures
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`in Shin—messages between client and web server, and a Java applet—as
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`teaching the two limitations of “downloadable information” and “executable
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`code.” Patent Owner’s argument that the Petition conflates the two
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`limitations is, therefore, unpersuasive.
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`
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`Patent Owner next argues that the executable code at the destination,
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`according to the claim, must be the same executable code that was received
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`at the information re-communicator. Prelim. Resp. 4546. Shin, according
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`to Patent Owner, however, “ensures that an applet received by its HTTP
`
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`4
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`proxy server is modified into a different executable entity before it can reach
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`a client browser.” Id. at 46 (emphasis added). We are not persuaded, at this
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`juncture, by this argument. We addressed this argument in the ’1974
`
`Decision:
`
`The claim recites the “downloadable information” received at
`the
`re-communicator as “including executable code”
`(emphasis added). The claim language does not require that
`the only content of the downloadable-information be
`executable code, nor that it include only one executable code.
`See Ex. 1001, 2:49 (“one or more received Downloadables”).
`The claim further states that one or more operations “of the
`executable code at the destination” are processed, but does
`not require “the executable code” to encompass the entirety
`or an intact version of executable code received. It also
`appears that the claim may be read broadly, but reasonably,
`to state that “one or more operations of the executable code”
`are at the destination at the time of processing. Therefore, we
`find persuasive, on the current record, Petitioner’s assertion
`that the received “downloadable-information” includes an
`applet, and that the operations “of the executable code at the
`destination” are operations in the modified applet that satisfy
`the limitation.
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`
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`’1974 Dec. 14. We relied on the above analysis also to find unpersuasive
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`Patent Owner’s argument regarding the deficiencies in Poison Java, which
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`were the same as the argument proffered with regards to Shin. ’1974
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`Dec. 15. For the same reasons stated in the ’1974 Decision, and based on
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`the present record, we are persuaded that Petitioner has demonstrated a
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`reasonable likelihood of prevailing on its challenge of unpatentability that
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`claims 14 and 19 would have been obvious in view of Shin alone, or in view
`
`of the combination of Poison Java and Brown.
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`5
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`In view of the identity of the challenge in the instant Petition and in
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`the petition in the PAN IPR, considering the information presented in the
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`instant Patent Owner Preliminary Response, and determining that the motion
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`for joinder is granted (below), we institute inter partes review in this
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`proceeding on the same grounds, regarding claims 14 and 19, on which we
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`instituted inter partes review in the PAN IPR. We do not institute inter
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`partes review on any other grounds.
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`III. GRANT OF MOTION FOR JOINDER
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`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Frequently Asked Question H5,
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`http://www.uspto.gov/patentsapplication-process/appealing-
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`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
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`Petitioner asserts that it was served with a complaint alleging
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`infringement of the ’633 patent more than a year before the date of the
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`Petition. Pet. 4; Mot. 2. Nevertheless, Petitioner asserts it has grounds for
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`6
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`standing because, in accordance with 35 U.S.C. § 315(c), Petitioner filed a
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`motion for joinder concurrently with the Petition and not later than one
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`month after institution of the PAN IPR. Id.
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`Patent Owner opposes joinder on the basis that the filings of the
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`Petition and the motion for joinder were premature, in violation of § 315(c)
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`and 37 C.F.R. § 42.122(b). In particular, Patent Owner argues that a request
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`for joinder cannot be filed before the date of institution of the inter partes
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`review for which joinder is requested. Prelim. Resp. 1213. We are not
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`persuaded by this argument.
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`Rule 122(b) requires that the request for joinder must be filed no later
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`than one month after the institution date of any inter partes review for which
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`joinder is requested. The plain language of the rule does not forbid a request
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`for joinder that is filed before the inter partes review is instituted. Further,
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`we are not persuaded by Patent Owner’s reliance on another panel’s decision
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`in Linear Technology Corp. v. In-Depth Test LLC, Case IPR2015-01994
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`(PTAB Oct. 20, 2015) (Paper 7). That decision relied on facts materially
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`different than those before us here, i.e., at the time of decision of the request
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`for joinder, there was no institution of the inter partes review for which
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`joinder had been requested.
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`We find that the Petition and the Motion for Joinder here are not
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`untimely. Institution of inter partes review in the PAN IPR occurred on
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`March 29, 2016. The Petition in this proceeding has been accorded a filing
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`date of January 20, 2016 (Paper 5), and the Motion for Joinder was filed
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`concurrently with the Petition. The January 20th date is clearly no later than
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`one month after the institution date of March 29th. The Petition and the
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`Motion for Joinder, therefore, satisfy the requirement of the request being
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`7
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`filed no later than one month from our instituting a trial in IPR2015-01974.
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`37 C.F.R. § 42.122.
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`
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`We also find that Petitioner has met its burden of showing that joinder
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`is appropriate. The Petition here is identical to the Petition in the PAN IPR.
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`Mot. 4. The evidence also is identical, including the reliance on the same
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`declaration of Dr. Aviel Rubin. Id. Although Patent Owner argues that
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`there is no indication that Petitioner has retained Dr. Rubin, we are
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`persuaded that the Petition is supported by declaration evidence that, at this
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`juncture, is proper. Prelim. Resp. 19. Patent Owner’s assertion that
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`Petitioner “will reasonably have to rely on new declarants and/or new
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`evidence” (Prelim. Resp. 19) should Palo Alto Networks settle, is
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`speculative, and, therefore, unpersuasive.
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`
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`Petitioner further has shown that the trial schedule will not be affected
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`by joinder. Mot. 67. No changes in the schedule are anticipated or
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`necessary, and the limited participation, if at all, of Petitioner will not impact
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`the timeline of the ongoing trial. Id. Patent Owner, nevertheless, argues that
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`joining Petitioner to the ongoing trial would complicate attempts to settle.
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`Prelim. Resp. 18. Patent Owner also argues that, because Petitioner has had
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`a full opportunity to litigate the validity of the ’633 patent in district court,
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`any participation by Petitioner here would be contrary to the statutory
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`estoppel and time-bar provisions. Prelim. Resp. 18. Patent Owner urges the
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`Board to deny joinder, given that Petitioner has obtained a jury verdict in
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`district court that it did not prove, by clear and convincing evidence, that the
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`challenged claims are invalid. Prelim. Resp. 1316. We are not persuaded
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`by Patent Owner’s arguments.
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`8
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`First, the assertion that joining Petitioner would complicate settlement
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`with Palo Alto Networks is unsupported by the facts before us, and is, at
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`best, Patent Owner’s speculative posture, which is unpersuasive. Second,
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`although we recognize that, in enacting the one-year estoppel provision
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`applicable to inter partes review, a concern was repeated harassment of
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`patent holders, that concern does not inform our understanding of whether
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`joinder is proper under the circumstances argued here. Specifically, we note
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`that § 315(b), the statutory provision barring a Petitioner who has been sued
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`more than one year before filing the Petition (“one-year bar”), exempts
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`requests for joinder. Patent Owner’s argument that joinder should be denied
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`because of the jury verdict against Petitioner does not persuade us to set
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`aside the one-year-bar exemption, especially given the different standards of
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`proof between invalidity in a district court trial and unpatentability in an
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`inter partes review. We have also considered the timing of Petitioner’s
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`joinder request, and do not find that granting it would unduly complicate
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`matters for Patent Owner or present a significant disruption to the trial
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`schedule.
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`
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`Joinder is discretionary based on the particular circumstances of each
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`proceeding. In the instant proceeding, we agree with Petitioner that joinder
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`is appropriate and will not unduly impact the ongoing trial. Presented with
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`the concerns expressed by Patent Owner regarding Petitioner’s participation,
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`we determine that, at this time, we limit Petitioner’s participation in the
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`joined proceeding such that Petitioner shall require prior authorization from
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`the Board before filing any further paper. This arrangement promotes the
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`just and efficient administration of the ongoing trial and the interests of
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`Petitioner and Patent Owner.
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`9
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`IV. ORDER
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`In view of the foregoing, it is
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`ORDERED that IPR2016-00480 is hereby instituted as to claims 14
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`and 19;
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2015-01974 is granted;
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`FURTHER ORDERED that the grounds on which trial in IPR2015-
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`01974 was instituted are unchanged and no other grounds are included in the
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`joined proceeding;
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2015-01974 (Paper 8) and schedule changes agreed-to by the parties in
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`IPR2015-01974 (pursuant to the Scheduling Order) shall govern the
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`schedule of the joined proceeding;
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`FURTHER ORDERED that, throughout the joined proceeding, all
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`filings in IPR2015-01974 will be consolidated and no filing by Petitioner
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`Blue Coat alone will be allowed without prior authorization by the Board;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2016-00480;
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`FURTHER ORDERED that IPR2016-00480 is terminated under
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`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
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`made in IPR2015-01974; and
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`FURTHER ORDERED that the case caption in IPR2015-01974 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`10
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`IPR2016-00480
`Patent No. 7,647,633 B2
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`PETITIONER:
`
`Michael T. Rosato (Lead Counsel)
`Andrew S. Brown (Back-up counsel)
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`
`
`PETITIONER in PAN IPR:
`
`Orion Armon (Lead Counsel)
`Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
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`11
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`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 17
`Entered: June 24, 2016
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-019741
`Patent 7,647,633 B2
`_______________
`
`1 Case IPR2016-00480 has been joined with this proceeding.