`Motion for Joinder in an Inter Partes Review
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`Palo Alto Networks, Inc.
`Petitioner
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`v.
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`Finjan, Inc.
`Patent Owner
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`Patent No. 8,141,154
`Issue Date: Mar. 20, 2012
`Title: System and Method for Inspecting Dynamically Generated Executable Code
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`_______________
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`Inter Partes Review No. IPR2016-00151
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`____________________________________________________________
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`MOTION FOR JOINDER
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`UNDER 35 U.S.C. § 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B)
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`I.
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`II.
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`TABLE OF CONTENTS
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`STATEMENT OF RELIEF REQUESTED .................................................... 1
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`STATEMENT OF MATERIAL FACTS ........................................................ 1
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF ........................ 2
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`A.
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`B.
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`C.
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`D.
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`LEGAL STANDARD ........................................................................... 2
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`FACTOR (1): JOINDER IS APPROPRIATE IN
`ACCORDANCE WITH THE STATUTORY FRAMEWORK ........... 3
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`FACTOR (2): NEW GROUNDS OF UNPATENTABILITY ............. 4
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`FACTOR (3): JOINDER WOULD HAVE NO DISCERNIBLE
`IMPACT ON THE TRIAL SCHEDULE FOR THE
`SYMANTEC IPR .................................................................................. 5
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`E.
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`FACTOR (4) SIMPLIFIED BRIEFING AND DISCOVERY ............. 7
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`IV. CONCLUSION ................................................................................................ 8
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Dell Inc. v. Network-1 Sec. Solutions, Inc.,
`No. IPR2013-00385 ..........................................................................................................2, 3
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`Motorola Mobility, LLC v. Softview, LLC,
`No. IPR2013-00256 ..............................................................................................................8
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`Symantec Corp. v. Finjan Inc.,
`No.IPR2015-01547 ...........................................................................................................1, 8
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`STATUTES
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`35 U.S.C. §102 .........................................................................................................................4, 5
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`35 U.S.C. §103 .........................................................................................................................4, 5
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`35 U.S.C. § 315(b) ......................................................................................................................3
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`35 U.S.C. § 315(C) .............................................................................................................1, 2, 3
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.101(b) ................................................................................................................3
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`37 C.F.R. § 42.122(b) ................................................................................................................1
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`37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b) ....................................................................9
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioner Palo Alto Networks (“PAN” or “Petitioner”) respectfully
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`requests joinder of the above captioned inter partes review (“PAN IPR”) with the
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`pending inter partes review of the same patent filed by Symantec Corp. and styled
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`as Symantec Corp. v. Finjan Inc., No.IPR2015-01547, Paper 1 (P.T.A.B. July 3,
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`2015) (“Symantec IPR”). This motion for joinder is filed pursuant to the 35 U.S.C.
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`§ 315(C) and 37 C.F.R. § 42.122(b). Joinder is appropriate in this case as both
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`Petitions use the same art and substantially the same arguments to invalidate the
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`claims of U.S. Patent No. 8,141,154 (“the ’154 patent”). Allowing joinder will
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`promote efficient resolution of the validity of the subject patent, and it will not
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`prejudice the parties to the Symantec IPR.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On July 3, 2015, petitioner in the Symantec IPR requested inter partes
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`review of claims 1-12 of U.S. Patent No. 8,141,154, citing four grounds of
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`unpatentability. See IPR2015-01547, Paper No. 1.
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`The Patent Owner, Finjan Inc. submitted a preliminary response on
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`October 19, 2015. Id., Paper No. 8. The Board has not yet issued an institution
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`decision on Symantec’s petition.
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`The PAN petition that accompanies the instant Motion for Joinder
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`includes grounds that are substantially identical to three of the four grounds that
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`were presented in the Symantec petition.
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`The art and arguments submitted in the PAN petition are substantially
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`identical to the grounds 1-3 of the Symantec petition. Compare PAN Petition at
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`14-41 with Symantec IPR Petition, IPR2015-01547, Paper No. 1 at 7.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
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`A. LEGAL STANDARD
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`35 U.S.C. § 315(c), which provides the statutory authority for joinder,
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`reads as follows:
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`(c) JOINDER.--If the Director institutes an inter partes review,
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`the Director, in his or her discretion, may join as a party to that
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`inter partes review any person who properly files a petition
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`under section 311 that the Director, after receiving a
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`preliminary response under section 313 or the expiration of the
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`time for filing such a response, determines warrants the
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`institution of an inter partes review under section 314.
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`In deciding on motions for joinder, the Board has generally sought to
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`be “mindful that patent trial regulations, including the rules for joinder, must be
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`construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., No. IPR2013-00385,
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`Paper No. 17 at 3 (P.T.A.B. July 29, 2013). The Board has also sought to “take into
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`account the policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id.at 10. Keeping these
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`policy goals of joinder in mind, the board has required that “[a] motion for joinder
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`should: (1) set forth the reasons why joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; (3) explain what impact (if any)
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`joinder would have on the trial schedule for the existing review; and (4) address
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`specifically how briefing and discovery may be simplified.” Id. at 4.
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`As discussed below, each of the above factors as well as the policy
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`goals of joinder, support the conclusion that the instant motion for joinder should
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`be granted and that the Symantec and PAN IPRs should be joined in accordance
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`with 35 U.S.C. § 315(c).
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`B.
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`FACTOR (1): JOINDER IS APPROPRIATE IN
`ACCORDANCE WITH THE STATUTORY
`FRAMEWORK
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`Under the statutory framework for joinder, the Board has the authority
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`to join the instant petition with the Symantec IPR. The present Motion for Joinder
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`is timely filed under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b). The instant
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`motion for joinder has not only been presented before the one-month post
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`institution decision deadline as required by the statutory framework, but has been
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`presented prior to any institution decision and prior to any commencement of
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`discovery in the Symantec IPR.
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`The PAN IPR petition involves the same patent, the same claims, the
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`same prior art, and the grounds in the PAN IPR petition are substantially the same
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`grounds as grounds detailed in the Symantec IPR petition. Any differences
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`between the PAN and Symantec petitions would not complicate or substantially
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`delay the Symantec proceeding.
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`C.
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`FACTOR (2): NEW GROUNDS OF UNPATENTABILITY
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`The Symantec petition presents four grounds of unpatentability, while
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`the PAN petition present two grounds of unpatentability. The two grounds of
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`unpatentability presented in the PAN petition are substantially identical to grounds
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`presented in the Symantec IPR as shown below:
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`Symantec Petition – IPR2015-01547
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`PAN Petition – IPR2016-00151
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`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
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`Claims 9 and 12 rendered obvious by
`Ross in view of Calder under 35 U.S.C.
`§103
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`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
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`The Symantec petition contains one additional ground of
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`unpatentability, however that ground has not been adopted by the PAN petition,
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`nor does the PAN petition present any additional grounds beyond the same
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`references adopted by the Symantec Petition.
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`The PAN petition raises no new issues; it simply argues that claims 1-
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`5 are obvious in light of Ross, while the Symantec petition argues those claims are
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`anticipated by Ross. Accordingly, the PAN IPR includes only grounds that are
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`substantially similar to the grounds presented in the Symantec IPR. Therefore, any
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`response to the Symantec IPR would include arguments that address the grounds of
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`unpatentability presented in the PAN IPR.
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`D.
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`FACTOR (3): JOINDER WOULD HAVE NO
`DISCERNIBLE IMPACT ON THE TRIAL SCHEDULE
`FOR THE SYMANTEC IPR
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`The differences between the Symantec petition and the PAN petition
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`identified above would not have a discernable impact on the trial schedule for the
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`Symantec IPR. As an initial matter, as an institution decision has yet to be made in
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`the Symantec IPR, a trial schedule for the Symantec IPR has not been yet
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`established. Furthermore, given that the PAN IPR involves the same patent, the
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`same claims, the same prior art, and substantially similar grounds, there appears to
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`be no discernible impact on the trial schedule of the Symantec IPR.
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`To the extent that the PAN IPR presents claims 1-5 as being rendered
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`obvious in view of Ross under 35 U.S.C. § 103, whereas the Symantec petition
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`presents these claims as being anticipated by Ross under 35 U.S.C. § 102, this
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`difference will not delay the trial schedule of the Symantec IPR. This is especially
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`true if the proposals for simplifying briefing and discovery put forth by PAN (see
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`part 4, below) are adopted, as Symantec will be allowed additional pages in its
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`responses to address those differences.
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`To the extent that the PAN petition and the Symantec petition put
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`forth declaration testimony from different experts, such a difference should not
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`have a discernable impact to the trial schedule as discovery in the Symantec IPR
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`has not yet commenced and furthermore in light of the proposal put forth by PAN
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`that the patent owner be given an additional month for its Patent Owner Response
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`in order to allow for the depositions of both experts.
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`Given the minor differences between Symantec’s petition and PAN’s
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`petition, the early stage at which this motion is being presented, and the proposals
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`to simply briefing and discovery outlined below, the Board will have adequate time
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`to review the PAN petition, any preliminary response, and the instant motion for
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`joinder prior to any deadline for the patent owner response that would result from
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`an institution decision in the Symantec IPR. Should more time be required, a short
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`extension of the schedule will be possible without affecting the statutorily required
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`12-month completion date of the Symantec IPR. As explained in detail below,
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`PAN proposes specific procedures to simplify briefing and discover that should
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`avoid any material impact on the trial schedule, or any prejudice to the parties
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`involved in the Symantec IPR.
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`E.
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`FACTOR (4) SIMPLIFIED BRIEFING AND DISCOVERY
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`PAN proposes the following procedures with respect to briefing and
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`discovery that can be implemented by the Board to minimize any impact that
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`joinder of the PAN IPR to the Symantec IPR could have to the trial schedule:
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`1. Consolidated Petitioner filings: PAN proposes that Symantec be
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`primarily responsible for any Petitioner filings, and that PAN
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`be given an opportunity to file an additional seven pages with
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`corresponding additional responsive pages allowed to the Patent
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`Owner.
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`2. A one-month extension for the patent owner reply to allow for
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`the deposition of each expert from the respective petitions.
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`3. A consolidated patent owner expert deposition in which the
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`joining party (PAN) would only ask questions if there is time
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`remaining within the allotted time for the original party’s
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`(Symantec) deposition of the patent owner’s expert.
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`4. Oral argument: PAN agrees that Symantec will present its
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`arguments first in oral argument, and time allotted to PAN’s
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`argument would be presented second.
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`These procedures have been adopted by the Board in prior trials in
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`which petitions have been joined. See IPR2013-00385, Paper 17 at 8; and
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`Motorola Mobility, LLC v. Softview, LLC, No. IPR2013-00256, Paper 10 at 8-9
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`(P.T.A.B. June 20, 2013.
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`IV. CONCLUSION
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`For the foregoing reasons, PAN respectfully requests that its Petition
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`for Inter Partes Review of the U.S. Patent No. 8,141,154 be instituted, and that the
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`proceeding be joined with Symantec Corp. v. Finjan Inc., No. IPR2015-01547
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` Respectfully submitted,
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`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
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`Dated: November 5, 2015
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on November 5, 2015 an entire copy of this Petition for Inter Partes
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`Review and all supporting materials were served by SDS Global Logistics, which
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`is a means at least as fast and reliable as U.S. Express Mail, to the correspondence
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`addresses of record for the Patent Owner of U.S. Patent No. 8,141,154 as follows:
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`Dawn-Marie Bey, Marc Berger, Christopher Cotropia,
`Sang Kim, and Julie Mar-Spinola
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond VA 23229
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`Courtesy Copies to:
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`Attorneys for Petitioner in IPR2015-01547
`Joseph J. Richetti
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`Daniel A. Crowe
`BRYAN CAVE LLP
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`BRYAN CAVE LLP
`1290 Avenue of the Americas
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`One Metropolitan Square
`New York, NY 10104
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`211 N. Broadway, Suite 3600
`St. Louis, MO 63102
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`Attorneys for Patent Owner in IPR2015-01547
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
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`/Kristine Obrenovic/
`Kristine Obrenovic
`MORRISON & FOERSTER LLP
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