`571-272-7822
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`Paper No. 8
` Entered: October 4, 2016
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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 IPR2016-01174
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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)
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`IPR2016-01174
`Patent 8,677,494 B2
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`I.
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`INTRODUCTION
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`Blue Coat Systems, Inc. (“Blue Coat” or “Petitioner”) filed a
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`Petition for inter partes review of claims 1–6 and 10–15 of U.S. Patent No.
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`8,677,494 B2 (Ex. 1001, “the ’494 patent”). Paper 2 (“Pet.”). Concurrently
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`with its Petition, Blue Coat filed a Motion for Joinder with Palo Alto
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`Networks, Inc. v. Finjan, Inc., Case IPR2016-00159 (“the PAN IPR”).
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`Paper 3 (“Mot.). Finjan, Inc. (“Patent Owner”) filed a Waiver of Its
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`Preliminary Response and Statement of Non-Opposition to Motion for
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`Joinder. Paper 7 (“Waiver”).
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`For the reasons explained below, we institute an inter partes review of
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`claims 1–6 and 10–15 of the ’494 patent and grant Blue Coat’s Motion for
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`Joinder.
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`
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`II. RELATED PROCEEDINGS
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`The Parties report that the ’494 patent has been asserted in Finjan,
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`Inc. v. Sophos, Inc., 3:14-cv-01197 (N.D. Cal.) (filed Mar. 14, 2014);
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`Finjan, Inc. v. Symantec Corp., 3:14-cv-02998 (N.D. Cal.) (filed June 30,
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`2014); Finjan, Inc. v. Palo Alto Networks, Inc., 3:14-cv-04908 (N.D. Cal.)
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`(filed Nov. 4, 2014), and Finjan, Inc. v. Blue Coat Systems, Inc.,
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`5:15-cv-03295 (N.D. Cal.) (filed July 15, 2015). Pet. 2; Paper 6, 1.
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`Although not reported by the Parties, we understand that the ’494 patent was
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`also asserted previously in Finjan, Inc. v. Websense, Inc., 5:14-cv-01353
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`(N.D. Cal.) (filed Mar. 24, 2014).
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`The ’494 patent has previously been challenged in Sophos, Inc. v.
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`Finjan, Inc., Case IPR2015-01022 (“Sophos IPR”); Symantec Corp. v.
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`Finjan, Inc., Case IPR2015-01892 (“Symantec 1892 IPR”); Symantec Corp.
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`IPR2016-01174
`Patent 8,677,494 B2
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`v. Finjan, Inc., Case IPR2015-01897 (“Symantec 1897 IPR”); and Blue Coat
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`Systems, Inc. v. Finjan, Inc., Case IPR2016-00890 (“Blue Coat 890 IPR”),
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`as well as in the PAN IPR. Pet. 1; Paper 6, 1–2. Blue Coat also has filed
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`one additional petition challenging certain claims of the ’494 patent. Blue
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`Coat Systems, Inc. v. Finjan, Inc., Case IPR2016-01443 (Paper 2).
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`In the PAN IPR, we instituted inter partes review of claims 1, 2, 6,
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`10, 11, and 15 of the ’494 patent under 35 U.S.C. § 103(a) as unpatentable
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`over Morton Swimmer et al., Dynamic Detection and Classification of
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`Computer Viruses Using General Behaviour Patterns, Virus Bull. Conf. 75
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`(Sept. 1995) (“Swimmer”); and claims 3–5 and 12–14 of the ’494 patent
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`under 35 U.S.C. § 103(a) as unpatentable over the combination of Swimmer
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`and David M. Martin, Jr. et al., Blocking Java Applets at the Firewall,
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`Proc. 1997 Symp. on Network & Distributed Sys. Sec. (©1997) (“Martin”).
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`See Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2016-00159, slip op.
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`at 34 (PTAB May 13, 2016) (Paper 8) (“PAN Dec.”). We denied institution
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`of inter partes review in the Finjan IPR and the Symantec 1897 IPR.
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`IPR2015-01022 (PTAB Sept. 24, 2015) (Paper 7); IPR2015-01897 (PTAB
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`Feb. 26, 2016) (Paper 7). In the Symantec 1892 IPR, we instituted inter
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`partes review of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent under
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`35 U.S.C. § 103(a) as unpatentable over Swimmer; we later instituted inter
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`partes review of the same claims on the same ground in the Blue Coat
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`890 IPR, and then joined Blue Coat as Petitioner in IPR2015-01892 and
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`ordered termination of IPR2016-00890. See IPR2015-01892, slip op. at 34
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`(PTAB Mar. 18, 2016) (Paper 9); IPR2016-00890, slip op. at 6 (PTAB
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`Aug. 30, 2016) (Paper 8).
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`IPR2016-01174
`Patent 8,677,494 B2
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`III.
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`INSTITUTION OF INTER PARTES REVIEW
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`The Petition in this proceeding asserts the same grounds of
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`unpatentability as those on which we instituted review in the PAN IPR.
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`Compare Pet. 5, with PAN Dec. 34. Indeed, as Blue Coat notes, the Petition
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`filed in this proceeding is “narrowly tailored to the grounds of
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`unpatentability that are the subject of the PAN IPR, with grounds that are
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`substantively identical to the instituted grounds of the PAN IPR, including
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`the same analysis of the prior art and expert testimony.” Mot. 1. Blue Coat
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`further asserts that “[t]he petitions do not differ in any substantive way, other
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`than the removal of grounds on which institution was not granted.” Id. at 5.
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`For the same reasons set forth in our institution decision in the PAN
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`IPR, we determine that the information presented in Blue Coat’s Petition
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`shows a reasonable likelihood that Blue Coat would prevail in showing that
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`claims 1, 2, 6, 10, 11, and 15 of the ’494 patent are unpatentable over
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`Swimmer, and that claims 3–5 and 12–14 of the ’494 patent are unpatentable
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`over the combination of Swimmer and Martin. See PAN Dec. 17–30.
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`Accordingly, we institute an inter partes review on those same grounds in
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`this case.
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`IV. GRANT OF MOTION FOR JOINDER
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`The Petition and Motion for Joinder in this proceeding were filed on
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`June 10, 2016, and the Petition was accorded that same filing date. See
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`Paper 4. Thus, Blue Coat’s Motion for Joinder is timely because joinder was
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`requested no later than one month after the institution date of the PAN IPR,
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`i.e., May 13, 2016. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); Mot. 3.
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`IPR2016-01174
`Patent 8,677,494 B2
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`The statutory provision governing joinder in inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads:
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`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.
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`A motion for joinder should (1) set forth reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for
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`the existing review; and (4) address specifically how briefing and discovery
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`may be simplified. See Kyocera Corp. v. Softview LLC,
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`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`The Petition in this case asserts the same grounds of unpatentability
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`on which we instituted review in the PAN IPR. See Mot. 1–6; Pet. 5, 19–35;
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`PAN Dec. 34. Blue Coat also relies on the same prior art analysis and expert
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`testimony submitted by Palo Alto Networks, Inc. (“PAN”) in the PAN IPR.
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`See Mot. 1, 4–6. Indeed, the Petition is nearly identical to the petition filed
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`by PAN with respect to the grounds on which review was instituted in the
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`PAN IPR. Compare Pet. 22–35, with Palo Alto Networks, Inc. v. Finjan,
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`Inc., Case IPR2016-00159, Paper 2 at 40–54. Thus, this inter partes review
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`does not present any ground or matter not already at issue in the PAN IPR.
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`If joinder is granted, Blue Coat “anticipates participating in the
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`proceeding in a limited capacity,” absent termination of PAN as a party.
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`Mot. 1, 6. In particular, Blue Coat agrees that, to the extent that it does
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`participate in the joined proceeding, it “will coordinate with PAN to
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`IPR2016-01174
`Patent 8,677,494 B2
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`consolidate filings, manage questioning at depositions, manage presentations
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`at the hearing, ensure that briefing and discovery occur within the time
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`normally allotted, and avoid redundancies.” Id. at 7. Blue Coat also states
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`that, “if the proceedings are joined and absent termination of PAN as a party,
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`it is anticipated that no expert witnesses beyond those presented by PAN and
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`Patent Owner will present testimony.” Id. at 6.
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`Because the Petition copies the grounds instituted in the PAN IPR,
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`and because Blue Coat anticipates participating in the proceeding in a
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`limited capacity absent termination of PAN as a party, Blue Coat submits
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`that joinder will not impact the PAN IPR trial schedule negatively, and
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`“Blue Coat does not believe that any extension of the schedule will be
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`required by virtue of joinder of Blue Coat as a petitioner to the proceeding.”
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`Id.
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`Having considered Blue Coat’s Motion for Joinder, as well as Patent
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`Owner’s statement of non-opposition thereto (Waiver 1), we agree with Blue
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`Coat that joinder with the PAN IPR is appropriate under the particular facts
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`and circumstances of this case. Accordingly, we grant Blue Coat’s Motion
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`for Joinder.
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`V. ORDER
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`Accordingly, it is
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`ORDERED that an inter partes review is instituted in IPR2016-01174
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`as to:
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`claims 1, 2, 6, 10, 11, and 15 of U.S. Patent No. 8,677,494 B2 under
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`35 U.S.C. § 103(a) as unpatentable over Swimmer; and
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`claims 3–5 and 12–14 of U.S. Patent No. 8,677,494 B2 under
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`35 U.S.C. § 103(a) as unpatentable over Swimmer and Martin;
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`6
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`IPR2016-01174
`Patent 8,677,494 B2
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`FURTHER ORDERED that the Motion for Joinder with
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`IPR2016-00159 is granted, and Blue Coat Systems, Inc. is joined as a
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`petitioner in IPR2016-00159;
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`FURTHER ORDERED that IPR2016-01174 is terminated under
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`37 C.F.R. § 42.72, and all further filings shall be made only in
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`IPR2016-00159;
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`FURTHER ORDERED that, subsequent to joinder, the grounds for
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`trial in IPR2016-00159 remain unchanged;
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`FURTHER ORDERED that, subsequent to joinder, the Scheduling
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`Order in place for IPR2016-00159 (Paper 9), as modified by a joint
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`stipulation of PAN and Patent Owner in that case (Paper 14), remains
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`unchanged, subject to any further stipulations agreed to by the Parties;
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`FURTHER ORDERED that in IPR2016-00159, PAN and Blue Coat
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`will file each paper, except for a motion that does not involve the other
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`party, as a single, consolidated filing, subject to the word counts or page
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`limits set forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
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`consolidated filing;
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`FURTHER ORDERED that, for any consolidated filing, if Blue Coat
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`wishes to file an additional paper to address points of disagreement with
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`PAN, Blue Coat must request authorization from the Board to file a motion
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`for additional words or pages, and no additional paper may be filed without
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`authorization;
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`FURTHER ORDERED that PAN and Blue Coat shall collectively
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`designate attorneys to conduct the cross-examination of any witness
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`produced by Patent Owner and the redirect of any witness produced by PAN
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`7
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`IPR2016-01174
`Patent 8,677,494 B2
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`and Blue Coat, within the timeframes set forth in 37 C.F.R. § 42.53(c) or
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`agreed to by the Parties;
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`FURTHER ORDERED that PAN and Blue Coat collectively shall
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`designate attorneys to present a consolidated argument at the oral hearing, if
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`requested and scheduled;
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`FURTHER ORDERED that the case caption in IPR2016-00159 shall
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`be changed to reflect joinder of Blue Coat as a petitioner in accordance with
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`the attached example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2016-00159.
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`8
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`IPR2016-01174
`Patent 8,677,494 B2
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`For PETITIONER BLUE COAT SYSTEMS, INC.:
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`FOR PETITIONER PALO ALTO NETWORKS, INC.:
`
`Orion Armon
`Jennifer Volk
`Max Colice
`Brian Eutermoser
`COOLEY LLP
`oarmon@cooley.com
`jvolkfortier@cooley.com
`mcolice@cooley.com
`beutermoser@cooley.com
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
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`9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
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`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
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`1 Case IPR2016-01174 has been joined with the instant proceeding.