U.S. Patent No. 8,141,154
`Motion for Joinder in an Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Patent No. 8,141,154
`Issue Date: Mar. 20, 2012
`Title: System and Method for Inspecting Dynamically Generated Executable Code
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`
`____________________________________________________________
`
`MOTION FOR JOINDER
`
`UNDER 35 U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B)
`
`
`
`
`
`va-461638
`
`
`Motion for Joinder in an Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`Patent No. 8,141,154
`Issue Date: Mar. 20, 2012
`Title: System and Method for Inspecting Dynamically Generated Executable Code
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`
`____________________________________________________________
`
`MOTION FOR JOINDER
`
`UNDER 35 U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B)
`
`
`
`
`
`va-461638
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`
`STATEMENT OF MATERIAL FACTS ........................................................ 1
`
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF ........................ 2
`
`A.
`
`B.
`
`C.
`
`D.
`
`LEGAL STANDARD ........................................................................... 2
`
`FACTOR (1): JOINDER IS APPROPRIATE IN
`ACCORDANCE WITH THE STATUTORY FRAMEWORK ........... 3
`
`FACTOR (2): NEW GROUNDS OF UNPATENTABILITY ............. 4
`
`FACTOR (3): JOINDER WOULD HAVE NO DISCERNIBLE
`IMPACT ON THE TRIAL SCHEDULE FOR THE
`SYMANTEC IPR .................................................................................. 5
`
`E.
`
`FACTOR (4) SIMPLIFIED BRIEFING AND DISCOVERY ............. 7
`
`IV. CONCLUSION ................................................................................................ 8
`
`
`va-461638
`
`i
`
`
`
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`No. IPR2013-00385 ..........................................................................................................2, 3
`
`Motorola Mobility, LLC v. Softview, LLC,
`No. IPR2013-00256 ..............................................................................................................8
`
`Symantec Corp. v. Finjan Inc.,
`No.IPR2015-01547 ...........................................................................................................1, 8
`
`STATUTES
`
`35 U.S.C. §102 .........................................................................................................................4, 5
`
`35 U.S.C. §103 .........................................................................................................................4, 5
`
`35 U.S.C. § 315(b) ......................................................................................................................3
`
`35 U.S.C. § 315(C) .............................................................................................................1, 2, 3
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.101(b) ................................................................................................................3
`
`37 C.F.R. § 42.122(b) ................................................................................................................1
`
`37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b) ....................................................................9
`
`
`
`
`
`
`va-461638
`
`1
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Petitioner Palo Alto Networks (“PAN” or “Petitioner”) respectfully
`
`requests joinder of the above captioned inter partes review (“PAN IPR”) with the
`
`pending inter partes review of the same patent filed by Symantec Corp. and styled
`
`as Symantec Corp. v. Finjan Inc., No.IPR2015-01547, Paper 1 (P.T.A.B. July 3,
`
`2015) (“Symantec IPR”). This motion for joinder is filed pursuant to the 35 U.S.C.
`
`§ 315(C) and 37 C.F.R. § 42.122(b). Joinder is appropriate in this case as both
`
`Petitions use the same art and substantially the same arguments to invalidate the
`
`claims of U.S. Patent No. 8,141,154 (“the ’154 patent”). Allowing joinder will
`
`promote efficient resolution of the validity of the subject patent, and it will not
`
`prejudice the parties to the Symantec IPR.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`On July 3, 2015, petitioner in the Symantec IPR requested inter partes
`
`review of claims 1-12 of U.S. Patent No. 8,141,154, citing four grounds of
`
`unpatentability. See IPR2015-01547, Paper No. 1.
`
`The Patent Owner, Finjan Inc. submitted a preliminary response on
`
`October 19, 2015. Id., Paper No. 8. The Board has not yet issued an institution
`
`decision on Symantec’s petition.
`
`
`
`
`
`va-461638
`
`2
`
`
`
`
`
`
`
`The PAN petition that accompanies the instant Motion for Joinder
`
`includes grounds that are substantially identical to three of the four grounds that
`
`were presented in the Symantec petition.
`
`The art and arguments submitted in the PAN petition are substantially
`
`identical to the grounds 1-3 of the Symantec petition. Compare PAN Petition at
`
`14-41 with Symantec IPR Petition, IPR2015-01547, Paper No. 1 at 7.
`
`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`
`A. LEGAL STANDARD
`
`35 U.S.C. § 315(c), which provides the statutory authority for joinder,
`
`reads as follows:
`
`(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 partes review under section 314.
`
`In deciding on motions for joinder, the Board has generally sought to
`
`be “mindful that patent trial regulations, including the rules for joinder, must be
`
`construed to secure the just, speedy, and inexpensive resolution of every
`
`
`
`va-461638
`
`3
`
`
`
`
`
`
`
`proceeding.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., No. IPR2013-00385,
`
`Paper No. 17 at 3 (P.T.A.B. July 29, 2013). The Board has also sought to “take into
`
`account the policy preference for joining a party that does not present new issues
`
`that might complicate or delay an existing proceeding.” Id.at 10. Keeping these
`
`policy goals of joinder in mind, the board has required that “[a] motion for joinder
`
`should: (1) set forth the reasons why joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; (3) explain what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4) address
`
`specifically how briefing and discovery may be simplified.” Id. at 4.
`
`As discussed below, each of the above factors as well as the policy
`
`goals of joinder, support the conclusion that the instant motion for joinder should
`
`be granted and that the Symantec and PAN IPRs should be joined in accordance
`
`with 35 U.S.C. § 315(c).
`
`B.
`
`FACTOR (1): JOINDER IS APPROPRIATE IN
`ACCORDANCE WITH THE STATUTORY
`FRAMEWORK
`
`Under the statutory framework for joinder, the Board has the authority
`
`to join the instant petition with the Symantec IPR. The present Motion for Joinder
`
`is timely filed under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b). The instant
`
`motion for joinder has not only been presented before the one-month post
`
`institution decision deadline as required by the statutory framework, but has been
`
`
`
`va-461638
`
`4
`
`
`
`
`
`
`
`presented prior to any institution decision and prior to any commencement of
`
`discovery in the Symantec IPR.
`
`The PAN IPR petition involves the same patent, the same claims, the
`
`same prior art, and the grounds in the PAN IPR petition are substantially the same
`
`grounds as grounds detailed in the Symantec IPR petition. Any differences
`
`between the PAN and Symantec petitions would not complicate or substantially
`
`delay the Symantec proceeding.
`
`C.
`
`FACTOR (2): NEW GROUNDS OF UNPATENTABILITY
`
`The Symantec petition presents four grounds of unpatentability, while
`
`the PAN petition present two grounds of unpatentability. The two grounds of
`
`unpatentability presented in the PAN petition are substantially identical to grounds
`
`presented in the Symantec IPR as shown below:
`
`Symantec Petition – IPR2015-01547
`
`PAN Petition – IPR2016-00151
`
`Claims 1-5 anticipated by Ross under 35
`U.S.C. §102
`Claims 2, 4-8, 10, and 11 rendered
`obvious by Ross under 35 U.S.C. §103
`
`Claims 9 and 12 rendered obvious by
`Ross in view of Calder under 35 U.S.C.
`§103
`
`
`
`Claims 1-8, and 10-11 rendered obvious
`by Ross under 35 U.S.C. §103
`Claims 9 and 12 rendered obvious by
`Ross in view of Calder under 35 U.S.C.
`§103
`
`
`The Symantec petition contains one additional ground of
`
`unpatentability, however that ground has not been adopted by the PAN petition,
`
`
`
`va-461638
`
`5
`
`
`
`
`
`
`
`nor does the PAN petition present any additional grounds beyond the same
`
`references adopted by the Symantec Petition.
`
`The PAN petition raises no new issues; it simply argues that claims 1-
`
`5 are obvious in light of Ross, while the Symantec petition argues those claims are
`
`anticipated by Ross. Accordingly, the PAN IPR includes only grounds that are
`
`substantially similar to the grounds presented in the Symantec IPR. Therefore, any
`
`response to the Symantec IPR would include arguments that address the grounds of
`
`unpatentability presented in the PAN IPR.
`
`D.
`
`FACTOR (3): JOINDER WOULD HAVE NO
`DISCERNIBLE IMPACT ON THE TRIAL SCHEDULE
`FOR THE SYMANTEC IPR
`
`The differences between the Symantec petition and the PAN petition
`
`identified above would not have a discernable impact on the trial schedule for the
`
`Symantec IPR. As an initial matter, as an institution decision has yet to be made in
`
`the Symantec IPR, a trial schedule for the Symantec IPR has not been yet
`
`established. Furthermore, given that the PAN IPR involves the same patent, the
`
`same claims, the same prior art, and substantially similar grounds, there appears to
`
`be no discernible impact on the trial schedule of the Symantec IPR.
`
`To the extent that the PAN IPR presents claims 1-5 as being rendered
`
`obvious in view of Ross under 35 U.S.C. § 103, whereas the Symantec petition
`
`presents these claims as being anticipated by Ross under 35 U.S.C. § 102, this
`
`
`
`va-461638
`
`6
`
`
`
`
`
`
`
`difference will not delay the trial schedule of the Symantec IPR. This is especially
`
`true if the proposals for simplifying briefing and discovery put forth by PAN (see
`
`part 4, below) are adopted, as Symantec will be allowed additional pages in its
`
`responses to address those differences.
`
`To the extent that the PAN petition and the Symantec petition put
`
`forth declaration testimony from different experts, such a difference should not
`
`have a discernable impact to the trial schedule as discovery in the Symantec IPR
`
`has not yet commenced and furthermore in light of the proposal put forth by PAN
`
`that the patent owner be given an additional month for its Patent Owner Response
`
`in order to allow for the depositions of both experts.
`
`Given the minor differences between Symantec’s petition and PAN’s
`
`petition, the early stage at which this motion is being presented, and the proposals
`
`to simply briefing and discovery outlined below, the Board will have adequate time
`
`to review the PAN petition, any preliminary response, and the instant motion for
`
`joinder prior to any deadline for the patent owner response that would result from
`
`an institution decision in the Symantec IPR. Should more time be required, a short
`
`extension of the schedule will be possible without affecting the statutorily required
`
`12-month completion date of the Symantec IPR. As explained in detail below,
`
`PAN proposes specific procedures to simplify briefing and discover that should
`
`avoid any material impact on the trial schedule, or any prejudice to the parties
`
`
`
`va-461638
`
`7
`
`
`
`
`
`
`
`involved in the Symantec IPR.
`
`E.
`
`FACTOR (4) SIMPLIFIED BRIEFING AND DISCOVERY
`
`PAN proposes the following procedures with respect to briefing and
`
`discovery that can be implemented by the Board to minimize any impact that
`
`joinder of the PAN IPR to the Symantec IPR could have to the trial schedule:
`
`1. Consolidated Petitioner filings: PAN proposes that Symantec be
`
`primarily responsible for any Petitioner filings, and that PAN
`
`be given an opportunity to file an additional seven pages with
`
`corresponding additional responsive pages allowed to the Patent
`
`Owner.
`
`2. A one-month extension for the patent owner reply to allow for
`
`the deposition of each expert from the respective petitions.
`
`3. A consolidated patent owner expert deposition in which the
`
`joining party (PAN) would only ask questions if there is time
`
`remaining within the allotted time for the original party’s
`
`(Symantec) deposition of the patent owner’s expert.
`
`4. Oral argument: PAN agrees that Symantec will present its
`
`arguments first in oral argument, and time allotted to PAN’s
`
`argument would be presented second.
`
`These procedures have been adopted by the Board in prior trials in
`
`
`
`va-461638
`
`8
`
`
`
`
`
`
`
`which petitions have been joined. See IPR2013-00385, Paper 17 at 8; and
`
`Motorola Mobility, LLC v. Softview, LLC, No. IPR2013-00256, Paper 10 at 8-9
`
`(P.T.A.B. June 20, 2013.
`
`IV. CONCLUSION
`
`For the foregoing reasons, PAN respectfully requests that its Petition
`
`for Inter Partes Review of the U.S. Patent No. 8,141,154 be instituted, and that the
`
`proceeding be joined with Symantec Corp. v. Finjan Inc., No. IPR2015-01547
`
` Respectfully submitted,
`
`By: /Matthew Kreeger/
`Matthew I. Kreeger (Reg. No. 56,398)
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`9
`
`
`
`
`
`Dated: November 5, 2015
`
`
`
`
`
`
`
`va-461638
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on November 5, 2015 an entire copy of this Petition for Inter Partes
`
`Review and all supporting materials were served by SDS Global Logistics, which
`
`is a means at least as fast and reliable as U.S. Express Mail, to the correspondence
`
`addresses of record for the Patent Owner of U.S. Patent No. 8,141,154 as follows:
`
`Dawn-Marie Bey, Marc Berger, Christopher Cotropia,
`Sang Kim, and Julie Mar-Spinola
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond VA 23229
`
`Courtesy Copies to:
`
`Attorneys for Petitioner in IPR2015-01547
`Joseph J. Richetti
`
`
`
`Daniel A. Crowe
`BRYAN CAVE LLP
`
`
`
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`
`
`One Metropolitan Square
`New York, NY 10104
`
`
`
`211 N. Broadway, Suite 3600
`St. Louis, MO 63102
`
`Attorneys for Patent Owner in IPR2015-01547
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`
`/Kristine Obrenovic/
`Kristine Obrenovic
`MORRISON & FOERSTER LLP
`
`
`
`va-461638
`
`10
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
