`Tel: 571-272-7822
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`
`
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`Paper 10
` Entered: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SYMANTEC CORP.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00919
`Patent 8,141,154 B2
`_______________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER Administrative Patent Judges.
`
`QUINN, 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)
`
`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`I.
`
`INTRODUCTION
`Symantec Corp. (“Petitioner” or “Symantec”) filed a Petition (Paper
`3, “Pet.”) requesting an inter partes review of claims 1−8, 10, and 11 (“the
`challenged claims”) of U.S. Patent No. 8,141,154 B2 (Ex. 1001, “the ’154
`patent”), and concurrently filed a Motion for Joinder (Paper 2, “Mot.”). The
`Motion for Joinder seeks to join this proceeding with Palo Alto Networks,
`Inc. v. Finjan, Inc., Case IPR2015-01979 (“the PAN IPR”). Mot. 1. Patent
`Owner filed a waiver of the Preliminary Response, and does not oppose the
`Motion for Joinder. Paper 8. For the reasons described below, we institute
`an inter partes review of claims 1−8, 10, and 11 of the ’154 patent, and grant
`Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`On March 21, 2016, we instituted a trial in IPR2015-01979 on the
`following alleged grounds of unpatentability based on obviousness:
`1) Claims 1−5 over Khazan1 and Sirer2; and
`2) Claims 6−8, 10, and 11 over Khazan, Sirer, and Ben-Natan.3
`PAN IPR, slip. op. at 15 (PTAB March 29, 2016) (Paper 8). Upon review of
`the Petition here, we note that the Petition is substantially identical to the
`Petition in the PAN IPR. The Petition in this proceeding asserts the same
`grounds as those on which we instituted review in the PAN IPR. Pet. 1, 4−5.
`Petitioner further relies on the same declaration of Dr. Aviel Rubin, and
`
`
`1 Patent Application Pub. No. US 2005/0108562 A1 (“Khazan”).
`2 Sirer et al., Design and Implementation of a Distributed Virtual machine
`for Networked Computers (1999) (“Sirer”).
`3 U.S. Patent No. 7,437,362 B1 (“Ben-Natan”).
`
`
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`2
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`IPR2016-00919
`Patent No. 8,141,154 B2
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`same arguments and supporting evidence presented in the PAN IPR. Pet. 4;
`Mot. 3.
`
`In view of the identity of the challenge in the instant Petition and in
`the petition in the PAN IPR, and in light of Patent Owner’s waiver of its
`Preliminary Response, we institute inter partes review in this proceeding on
`the same grounds, and for the same reasons, regarding claims 1−8, 10, and
`11, on which we instituted inter partes review in the PAN IPR.
`III. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(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
`parties review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions.
`Petitioner asserts it has grounds for standing because, in accordance
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`with the Petition and not later than one month after institution of the PAN
`
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`3
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`IPR2016-00919
`Patent No. 8,141,154 B2
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`IPR. Mot. 1. Patent Owner does not oppose Petitioner’s motion for joinder.
`Paper 8. We find that the Motion is timely.
`
`We also find that Petitioner has met its burden of showing that joinder
`is appropriate. The Petition here is substantially identical to the Petition in
`the PAN IPR. Mot. 3−4. The evidence also is identical, including the
`reliance on the same declaration of Dr. Aviel Rubin. Id.
`
`Petitioner further has shown that the trial schedule will not be affected
`by joinder. Mot. 4−5. No changes in the schedule are anticipated or
`necessary, and the limited participation, if at all, of Petitioner will not impact
`the timeline of the ongoing trial. We limit Petitioner’s participation in the
`joined proceeding such that Petitioner shall require prior authorization from
`the Board before filing any further paper. This arrangement promotes the
`just and efficient administration of the ongoing trial and the interests of
`Petitioner and Patent Owner.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that IPR2016-00919 is hereby instituted as to claims 1−8,
`10, and 11 on the following grounds:
`(1) claims 1−5 as unpatentable under 35 U.S.C. § 103(a) over
`Khazan and Sirer; and
`
`(2) claims 6−8, 10, and 11 as unpatentable under 35 U.S.C.
`§ 103(a) over Khazan, Sirer, and Ben-Natan;
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`4
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`IPR2016-00919
`Patent No. 8,141,154 B2
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2015-01979 is granted;
`FURTHER ORDERED that the grounds on which trial in IPR2015-
`01979 was instituted are unchanged and no other grounds are included in the
`joined proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2015-01979 (Paper 9) and schedule changes agreed-to by the parties in
`IPR2015-01979 (pursuant to the Scheduling Order) shall govern the
`schedule of the joined proceeding;
`FURTHER ORDERED that, throughout the joined proceeding, all
`filings in IPR2015-01979 will be consolidated and no filing by Petitioner
`Symantec alone will be allowed without prior authorization by the Board;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2015-01979;
`FURTHER ORDERED that IPR2016-00919 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2015-01979; and
`FURTHER ORDERED that the case caption in IPR2015-01979 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
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`5
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`IPR2016-00919
`Patent No. 8,141,154 B2
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`
`
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`PETITIONER:
`
`Nathaniel A. Hamstra (Lead Counsel)
`nathanhamstra@quinnemanuel.com
`
`
`
`PETITIONER in PAN IPR:
`
`Orion Armon (Lead Counsel)
`Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Lee (Back Up Counsel)
`Shannon Hedvat (Back Up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`mkim@finjan.com
`
`
`
`
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`6
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`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 10
` Entered: September 8, 2016
`
`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-019791
`Patent 8,141,154 B2
`_______________
`
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`1 Case IPR2016-00919 has been joined with this proceeding.