`By: Michael T. Rosato (mrosato@wsgr.com)
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`Andrew S. Brown (asbrown@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
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`Paper No. ____
`Filed: April 14, 2016
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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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`BLUE COAT SYSTEMS, INC.,
`Petitioner,
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`v.
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`FINJAN, INC.,
`Patent Owner.
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`_____________________________
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`Patent No. 8,677,494
`_____________________________
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`MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`I.
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`Introduction .................................................................................................. 1
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`II.
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`Background................................................................................................... 2
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`III. Argument ...................................................................................................... 3
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`A.
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`Legal Standard .................................................................................... 3
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`B.
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`C.
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`Blue Coat’s Motion for Joinder Is Timely ........................................... 4
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`The Relevant Factors Weigh in Favor of Joinder ................................ 4
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`i.
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`ii.
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`iii.
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`Joinder is Appropriate ............................................................... 4
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`No New Grounds Are Presented ............................................... 6
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`Joinder Will Not Negatively Impact the Symantec IPR
`Trial Schedule ........................................................................... 6
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`iv. Discovery and Briefing Can Be Simplified ............................... 7
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`IV. Conclusion .................................................................................................... 8
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`-i-
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`I.
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`Introduction
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`Blue Coat Systems, Inc. (“Blue Coat”) submits, concurrently with this
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`motion, a petition for inter partes review (the “Petition”) of claims 1, 2, 5, 6, 10,
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`11, 14, and 15 of U.S. Patent No. 8,677,494 (“the ’494 patent”), which is assigned
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`to Finjan, Inc. (“Patent Owner”). Blue Coat respectfully requests institution of an
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`inter partes review and joinder with the inter partes review concerning the same
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`patent initiated by Symantec Corp. (“Symantec”), Symantec Corp. v. Finjan, Inc.,
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`IPR2015-01892 (“Symantec IPR”), which was instituted on March 18, 2016.
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`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
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`as it is submitted within one month of the date on which the Symantec IPR was
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`instituted.
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`The Petition is also narrowly tailored to the ground of unpatentability that is
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`the subject of the Symantec IPR, with a single ground of unpatentability that is
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`substantially identical to the instituted ground of the Symantec IPR, including the
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`same analysis of the prior art and expert testimony. In addition, joinder is
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`appropriate because it will efficiently resolve the patentability of the challenged
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`claims of the ’494 patent in a single proceeding, without prejudicing the parties to
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`the Symantec IPR.
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`Absent termination of Symantec as a party to the proceeding, Blue Coat
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`anticipates participating in the proceeding in a limited capacity. To the extent that
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`Blue Coat does participate, Blue Coat will coordinate with Symantec to
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`consolidate any filings, manage questioning at depositions, manage presentations
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`at the hearing, ensure that briefing and discovery occur within the time normally
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`allotted, and avoid redundancies.
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`Blue Coat has conferred with counsel for Symantec regarding the subject of
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`this motion. Symantec has indicated that it does not oppose joinder.
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`II. Background
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`Patent Owner has asserted the ’494 patent against a number of defendants,
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`including Blue Coat. On July 15, 2015, Patent Owner filed a complaint asserting
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`the ’494 patent against Blue Coat. See Case No. 5:15-cv-03295 (N.D. Cal. filed
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`July 15, 2015).
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`On September 10, 2015, Symantec filed a petition for inter partes review
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`asserting five grounds of unpatentability, challenging claims 1, 2, 5, 6, 10, 11, 14,
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`and 15 of the ’494 patent, which was assigned Case No. IPR2015-01892. The
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`Board granted institution in the Symantec IPR on March 18, 2016 for each
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`challenged claim based on a single ground: that the ’494 was obvious over
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`Dynamic Detection and Classification of Computer Viruses Using General
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`Behaviour Patterns, by Morton Swimmer. Oral argument in the Symantec IPR is
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`currently set for December 16, 2016. The Petition contains a single ground of
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`unpatentability that is substantially identical to the instituted ground of the
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`Symantec IPR, and in fact duplicates the arguments made in the Symantec petition
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`with respect to Swimmer, including the same prior art analysis and expert
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`testimony. See Petition.
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`III. Argument
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`A. Legal Standard
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`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35 U.S.C.§
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`315(c). A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
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`deciding whether to grant a motion for joinder, the Board considers several factors
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`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
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`joined has presented any new grounds of unpatentability; (3) what impact, if any,
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`joinder would have on the trial schedule for the existing review; and (4) how
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`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
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`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
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`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
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`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
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`(April 24, 2013)).
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`B.
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`Blue Coat’s Motion for Joinder Is Timely
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`Joinder may be requested no later than one month after the institution date of
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`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
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`because the Board instituted the Symantec IPR on March 18, 2016, less than one
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`month before the filing of this motion, this motion for joinder is timely.
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`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`As discussed below, granting joinder will not enlarge the scope of the Symantec
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`IPR and will not negatively impact the Symantec IPR schedule, but a decision
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`denying joinder could prejudice Blue Coat. Thus, joinder is appropriate and
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`warranted.
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`i.
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`Joinder is Appropriate
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`Joinder with the Symantec IPR is appropriate because the Petition is limited
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`to the same ground instituted in the Symantec IPR. It also relies on the same prior
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`art analysis and expert testimony submitted by Symantec. Indeed, the Petition
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`substantially duplicates the arguments presented in Symantec’s petition regarding
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`its instituted ground, and does not include any grounds not raised in Symantec’s
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`petition.
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`Joinder is also appropriate because it will promote the efficient
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`determination of patentability of the challenged claims of the ’494 patent. For
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`example, a final written decision on the patentability of the ’494 patent has the
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`potential to minimize issues in the underlying litigations, and potentially resolve
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`the litigations altogether with respect to the ’494 patent. Absent joinder, if Patent
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`Owner and Symantec settle following institution, the PTAB and/or a district court
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`may be forced to re-adjudicate the same issues on which Symantec has already
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`shown it is reasonably likely to prevail, which would be a waste of judicial
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`resources.
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`Moreover, granting joinder will not prejudice Patent Owner or Symantec,
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`while Blue Coat could be prejudiced if joinder is denied. As mentioned above, the
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`Petition does not raise any new ground that is not raised in Symantec’s petition. In
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`addition, the Board issued an institution decision in the Symantec IPR less than
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`one month prior to the filing of this motion. Therefore, joinder should not
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`significantly affect the timing of the Symantec IPR. Also, there should be little to
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`no additional cost to Patent Owner or Symantec given the overlap in the petitions.
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`On the other hand, Blue Coat would be potentially prejudiced if joinder is denied.
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`For example, absent joinder, Patent Owner may attempt to use aspects of the
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`Symantec IPR against Blue Coat in district court, even though Blue Coat was not
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`able to participate in the Symantec IPR to protect its interests.
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`ii.
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`No New Grounds Are Presented
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`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents only the ground raised in Symantec’s
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`petition, and is based on the same prior art analysis and expert testimony submitted
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`by Symantec. The petitions do not differ in any substantive way, other than the
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`removal of grounds on which institution was not granted. In such circumstances,
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`the Board has routinely granted joinder, because doing so does not introduce any
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`additional arguments, briefing, or need for discovery. See, e.g., Hyundai, IPR2014-
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`01543, Paper No. 11 at 2-4; Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
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`IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013); Dell Inc. v. Network-1
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`Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul. 29, 2013); Motorola
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`Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10 (June 20, 2013).
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`iii.
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`Joinder Will Not Negatively Impact the Symantec IPR Trial
`Schedule
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`Because the Petition copies the grounds instituted in the Symantec IPR,
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`including the prior art analysis and expert testimony provided by Symantec,
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`joinder will not prevent the Board from issuing a final written decision in a timely
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`manner. The timing and content of Blue Coat’s petition and motion for joinder
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`minimize any impact to the Symantec IPR trial schedule. Moreover, as discussed
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`above, Blue Coat anticipates participating in the proceeding in a limited capacity
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`absent termination of Symantec as a party. For example, if the proceedings are
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`joined and absent termination of Symantec as a party, it is anticipated that no
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`expert witnesses beyond those presented by Symantec and Patent Owner will
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`present testimony. Accordingly, Blue Coat does not believe that any extension of
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`the schedule will be required by virtue of joinder of Blue Coat as a petitioner to the
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`proceeding. Even if the Board were to determine that joinder would require a
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`modest extension of the schedule, such an extension is permitted by law and is not
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`a reason for denying joinder. 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
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`iv. Discovery and Briefing Can Be Simplified
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`Given the Petition is identical to Symantec’s petition with respect to the
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`ground of unpatentability raised in Symantec’s petition, the Board may adopt
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`procedures similar to those used in past joinder cases to simplify briefing and
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`discovery during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell,
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`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-
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`10. Specifically, the Board may order petitioners to consolidate filings, and Blue
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`Coat is willing to be limited to separate filings, if any, directed only to points of
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`disagreement with Symantec (Blue Coat does not anticipate any), with the
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`understanding that it will not be permitted any separate arguments in furtherance of
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`those advanced in Symantec’s consolidated filings. See e.g., Hyundai, IPR2014-
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`01543, Paper No. 11 at 5. Further, no additional depositions will be needed and
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`depositions will be completed within ordinary time limits. Id. Moreover, to the
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`extent that Blue Coat does participate in the proceedings, Blue Coat will coordinate
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`with Symantec to consolidate filings, manage questioning at depositions, manage
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`presentations at the hearing, ensure that briefing and discovery occur within the
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`time normally allotted, and avoid redundancies. These procedures should simplify
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`briefing and discovery.
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`IV. Conclusion
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`For the foregoing reasons, Blue Coat respectfully requests that this motion
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`be granted and that this proceeding be joined with the Symantec IPR.
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`Dated: April 14, 2016
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder by
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`overnight courier (Federal Express or UPS), on this 14th day of April, 2016, on the
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`Patent Owner at the correspondence address of the Patent Owner as follows:
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`Dawn-Marie Bey
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
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`Finjan, Inc.
`2000 University Avenue
`Suite 600
`East Palo Alto, CA 94303
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`Paul J. Andre
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
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`Dated: April 14, 2016
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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