Paper No. ____
`Filed: January 20, 2016
`
`Filed on behalf of: Blue Coat Systems, Inc.
`By: Michael T. Rosato
`
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2925
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: asbrown@wsgr.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`_____________________________
`
`Patent No. 7,647,633
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`Filed: January 20, 2016
`
`Filed on behalf of: Blue Coat Systems, Inc.
`By: Michael T. Rosato
`
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2925
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`Email: asbrown@wsgr.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`_____________________________
`
`Patent No. 7,647,633
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction .................................................................................................. 1
`
`II.
`
`Background................................................................................................... 2
`
`III. Argument ...................................................................................................... 3
`
`A.
`
`Legal Standard .................................................................................... 3
`
`B.
`
`C.
`
`Blue Coat’s Motion for Joinder Is Timely ........................................... 3
`
`The Relevant Factors Weigh in Favor of Joinder ................................ 4
`
`i.
`
`ii.
`
`iii.
`
`Joinder is Appropriate ............................................................... 4
`
`No New Grounds Are Presented ............................................... 5
`
`Joinder Will Not Negatively Impact the Palo Alto
`Networks IPR Trial Schedule .................................................... 6
`
`iv. Discovery and Briefing Can Be Simplified ............................... 7
`
`IV. Conclusion .................................................................................................... 8
`
`
`
`
`
`-i-
`
`
`
`
`
`I.
`
`Introduction
`
`Blue Coat Systems, Inc. (“Blue Coat”) submits, concurrently with this
`
`motion, a petition for inter partes review (the “Petition”) of claims 1-4, 6-8, 13, 14,
`
`19, 28, and 34 of U.S. Patent No. 7,647,633 (“the ’633 patent”), which is assigned
`
`to Finjan, Inc. (“Patent Owner”). Blue Coat respectfully requests that this
`
`proceeding be joined with a pending inter partes review initiated by Palo Alto
`
`Networks, Inc. (“Palo Alto Networks”), Palo Alto Networks, Inc. v. Finjan, Inc.,
`
`IPR2015-01974 (“Palo Alto Networks IPR”).
`
`Blue Coat’s request for joinder is timely because the Board has not yet
`
`issued an institution decision in the Palo Alto Networks IPR. The Petition is also
`
`narrowly tailored to the grounds of unpatentability that are subject of the Palo Alto
`
`Networks IPR, and in fact is practically a copy of Palo Alto Networks’ petition
`
`with respect to the proposed grounds, including the same analysis of the prior art
`
`and expert testimony. In addition, joinder is appropriate because it will efficiently
`
`resolve the validity of the challenged claims of the ’633 patent in a single
`
`proceeding, without prejudicing the parties to the Palo Alto Networks IPR.
`
`Absent termination of Palo Alto Networks as a party to the proceeding, Blue
`
`Coat anticipates participating in the proceeding in a limited capacity. To the extent
`
`that Blue Coat does participate, Blue Coat will coordinate with Palo Alto Networks
`
`to consolidate any filings, manage questioning at depositions, manage
`
`1
`
`
`
`
`
`presentations at the hearing, ensure that briefing and discovery occur within the
`
`time normally allotted, and avoid redundancies.
`
`Blue Coat has conferred with counsel for Palo Alto Networks regarding the
`
`subject of this motion. Palo Alto Networks has indicated that it does not oppose
`
`joinder.
`
`II. Background
`
`Patent Owner has asserted the ’633 patent against a number of defendants,
`
`including Blue Coat. In 2013, Patent Owner filed a complaint asserting the ’633
`
`patent against Blue Coat. See Case No. 13-cv-3999 (N.D. Cal. filed Aug. 28,
`
`2013).
`
`On September 30, 2015, Palo Alto Networks filed a petition for inter partes
`
`review challenging claims 1-4, 6-8, 13, 14, 19, 28, and 34 of the ’633 patent, which
`
`was assigned Case No. IPR2015-01974. The Board has not yet issued an institution
`
`decision in IPR2015-01974. The Petition raises only the grounds of unpatentability
`
`that are the subject of the Palo Alto Networks IPR, and in fact is a copy of Palo
`
`Alto Networks’ petition with respect to the proposed grounds, including the same
`
`prior art analysis and expert testimony. See Pet.
`
`-2-
`
`
`
`
`
`III. Argument
`
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.§
`
`315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
`
`deciding whether to grant a motion for joinder, the Board considers several factors
`
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`B.
`
`Blue Coat’s Motion for Joinder Is Timely
`
`Joinder may be requested no later than one month after the institution date of
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`
`because the Board has not yet issued an institution decision in the Palo Alto
`
`Networks IPR, this motion for joinder is timely.
`
`-3-
`
`
`
`
`
`C. The Relevant Factors Weigh in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the Palo Alto
`
`Networks IPR and will not negatively impact the Palo Alto Networks IPR
`
`schedule, but a decision denying joinder could severely prejudice Blue Coat. Thus,
`
`joinder is appropriate and warranted.
`
`i.
`
`Joinder is Appropriate
`
`Joinder with the Palo Alto Networks IPR is appropriate because the Petition
`
`is limited to the same grounds raised in Palo Alto Networks’ petition. It also relies
`
`on the same prior art analysis and expert testimony submitted by Palo Alto
`
`Networks Indeed, the Petition is virtually identical with respect to the grounds
`
`raised in Palo Alto Networks’ petition, and does not include any grounds not raised
`
`in Palo Alto Networks’ petition.
`
`Joinder is also appropriate because it will promote the efficient
`
`determination of validity of the challenged claims of the ’633 patent. For example,
`
`a final written decision on the validity of the ’633 patent has the potential to
`
`minimize issues in the underlying litigations, and potentially resolve the litigations
`
`altogether with respect to the ’633 patent. Absent joinder, if Patent Owner and Palo
`
`Alto Networks settle following institution, the PTAB and/or a district court may be
`
`forced to re-adjudicate the same issues on which Palo Alto Networks has already
`
`-4-
`
`
`
`
`
`shown it is reasonably likely to prevail, which would be a waste of judicial
`
`resources.
`
`Moreover, granting joinder will not prejudice Patent Owner or Palo Alto
`
`Networks, while Blue Coat could be prejudiced if joinder is denied. As mentioned
`
`above, the Petition does not raise any new ground that is not raised in Palo Alto
`
`Networks’ petition. In addition, the Board has not yet issued an institution decision
`
`in the Palo Alto Networks IPR. Therefore, joinder should not significantly affect
`
`the timing of the Palo Alto Networks IPR. Also, there should be little to no
`
`additional cost to Patent Owner or Palo Alto Networks given the overlap in the
`
`petitions. On the other hand, Blue Coat would be potentially prejudiced if joinder
`
`is denied. For example, absent joinder, Patent Owner may attempt to use aspects of
`
`the Palo Alto Networks IPR against Blue Coat in district court, even though Blue
`
`Coat was not able to participate in the Palo Alto Networks IPR to protect its
`
`interests.
`
`ii.
`
`No New Grounds Are Presented
`
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents only the grounds raised in Palo Alto
`
`Networks’ petition, and is based on the same prior art analysis and expert
`
`testimony submitted by Palo Alto Networks. The petitions do not differ in any
`
`substantive way. In such circumstances, the Board has routinely granted joinder,
`
`-5-
`
`
`
`
`
`because doing so does not introduce any additional arguments, briefing, or need for
`
`discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of
`
`Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep.
`
`16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at
`
`6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256,
`
`Paper 10 at 4-10 (June 20, 2013).
`
`iii.
`
`Joinder Will Not Negatively Impact the Palo Alto Networks
`IPR Trial Schedule
`
`Because the Petition, which is being filed prior to an institution decision in
`
`IPR2015-01974, copies the grounds raised in Palo Alto Networks’ petition,
`
`including the prior art analysis and expert testimony provided by Palo Alto
`
`Networks, joinder will not prevent the Board from determining whether trial
`
`should be instituted, or from issuing a final written decision, in a timely manner.
`
`The timing and content of Blue Coat’s petition and motion for joinder minimize
`
`any impact to the Palo Alto Networks IPR trial schedule. Moreover, as discussed
`
`above, Blue Coat anticipates participating in the proceeding in a limited capacity
`
`absent termination of Palo Alto Networks as a party. For example, if the
`
`proceedings are joined and absent termination of Palo Alto Networks as a party, it
`
`is anticipated that no expert witnesses beyond those presented by Palo Alto
`
`Networks and Patent Owner will present testimony. Accordingly, Blue Coat does
`
`not believe that any extension of the schedule will be required by virtue of joinder
`
`-6-
`
`
`
`
`
`of Blue Coat as a petitioner to this proceeding. Even if the Board were to
`
`determine that joinder would require a modest extension of the schedule, such an
`
`extension is permitted by law and is not a reason for denying joinder. 35 U.S.C. §
`
`316(a)(11); 37 C.F.R. § 42.100(c).
`
`Moreover, because the Board has not yet issued an institution decision in the
`
`Palo Alto Networks IPR, there is currently no trial schedule governing the Palo
`
`Alto Networks IPR. Accordingly, if the Board institutes a joined trial, the Board
`
`can set a single schedule governing the joined proceedings, which would
`
`substantially minimize any burden on the Board and the parties.
`
`iv. Discovery and Briefing Can Be Simplified
`
`Given the Petition is identical to Palo Alto Networks’ petition with respect
`
`to the grounds of unpatentability raised in Palo Alto Networks’ petition, the Board
`
`may adopt procedures similar to those used in related cases to simplify briefing and
`
`discovery during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell,
`
`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-
`
`10. Specifically, the Board may order petitioners to consolidate filings, and Blue
`
`Coat is willing to be limited to separate filings, if any, directed only to points of
`
`disagreement with Palo Alto Networks (Blue Coat does not anticipate any), with
`
`the understanding that it will not be permitted any separate arguments in
`
`furtherance of those advanced in Palo Alto Networks’ consolidated filings. See
`
`-7-
`
`
`
`
`
`e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5. Further, no additional
`
`depositions will be needed and depositions will be completed within ordinary time
`
`limits. Id. Moreover, to the extent that Blue Coat does participate in the
`
`proceedings, Blue Coat will coordinate with Palo Alto Networks to consolidate
`
`filings, manage questioning at depositions, manage presentations at the hearing,
`
`ensure that briefing and discovery occur within the time normally allotted, and
`
`avoid redundancies. These procedures should simplify briefing and discovery.
`
`IV. Conclusion
`
`For the foregoing reasons, Blue Coat respectfully requests that this motion
`
`be granted and that this proceeding be joined with the Palo Alto Networks IPR.
`
`
`
`Dated: January 20, 2016
`
`Respectfully submitted,
`
` / Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-8-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing Motion for Joinder by
`
`overnight courier (Federal Express or UPS), on this 20th day of January, 2016, on
`
`the Patent Owner at the correspondence address of the Patent Owner as follows:
`
`
`Dawn-Marie Bey, Marc Berger, Christopher Cotropia,
`Sang Kim, Julie Mar-Spinola
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond VA 23229
`
`Finjan, Inc.
`2000 University Avenue
`Suite 600
`East Palo Alto, CA 94303
`
`Respectfully submitted,
`
` / Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`Dated: January 20, 2016
`
`
`
`-9-
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