Paper No. ____
`Filed: April 27, 2016
`
`Filed on behalf of: Blue Coat Systems, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
`
`Andrew S. Brown (asbrown@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`_____________________________
`
`IPR2016-00956
`Patent No. 8,225,408
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`Filed: April 27, 2016
`
`Filed on behalf of: Blue Coat Systems, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
`
`Andrew S. Brown (asbrown@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`_____________________________
`
`IPR2016-00956
`Patent No. 8,225,408
`_____________________________
`
`
`
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Statement of the Precise Relief Requested .................................................... 1
`
`II.
`
`Background................................................................................................... 2
`
`III. Argument ...................................................................................................... 3
`
`A.
`
`Legal Standard .................................................................................... 3
`
`B.
`
`C.
`
`Blue Coat’s Motion for Joinder Is Timely ........................................... 4
`
`The Relevant Factors Weigh in Favor of Joinder ................................ 4
`
`i.
`
`ii.
`
`iii.
`
`Joinder is Appropriate ............................................................... 4
`
`No New Grounds Are Presented ............................................... 6
`
`Joinder Will Not Negatively Impact the Consolidated
`PAN IPRs’ Trial Schedule ........................................................ 6
`
`iv. Discovery and Briefing Can Be Simplified ............................... 7
`
`IV. Conclusion .................................................................................................... 8
`
`
`
`
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`-i-
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`I.
`
`Statement of the Precise Relief Requested
`
`Blue Coat Systems, Inc. (“Blue Coat”) submits, concurrently with this
`
`motion, a petition for inter partes review (the “Petition”) of claims 1, 9, 22, 23, 29,
`
`and 35of U.S. Patent No. 8,225,408 (“the ’408 patent”), which is assigned to
`
`Finjan, Inc. (“Patent Owner”). Blue Coat respectfully requests joinder pursuant to
`
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed petition for
`
`inter partes review with the consolidated inter partes review concerning the same
`
`patent initiated by Palo Alto Networks, Inc. (“PAN”): Palo Alto Networks, Inc. v.
`
`Finjan, Inc., Nos. IPR2015-02001 and IPR2016-00157, instituted on March 29,
`
`2016 (“Consolidated PAN IPRs”).
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`as it is submitted within one month of the date on which the Consolidated PAN
`
`IPRs were instituted.
`
`The Petition is also narrowly tailored to the grounds of unpatentability that
`
`are the subject of IPR2016-00157, with grounds of unpatentability that are
`
`substantially identical to the corresponding instituted grounds of the Consolidated
`
`PAN IPRs, including the same analysis of the prior art and expert testimony. In
`
`addition, joinder is appropriate because it will efficiently resolve the patentability
`
`of the challenged claims of the ’408 patent in a single proceeding, without
`
`prejudicing the parties to the Consolidated PAN IPRs.
`
`1
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`
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`Absent termination of PAN as a party to the proceeding, Blue Coat
`
`anticipates participating in the proceeding in a limited capacity. Moreover, joinder
`
`will have no impact on the trial schedule of the Consolidated PAN IPRs because
`
`those proceedings are still in their early stages.
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`Blue Coat has conferred with counsel for PAN regarding the subject of this
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`motion. Counsel indicated that PAN does not oppose joinder.
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`II. Background
`
`Patent Owner has asserted the ’408 patent against a number of defendants,
`
`including Blue Coat. On July 15, 2015, Patent Owner filed a complaint asserting
`
`the ’408 patent against Blue Coat. See Case No. 5:15-cv-03295 (N.D. Cal. filed
`
`July 15, 2015).
`
`On September 30, 2015, PAN filed a petition for inter partes review
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`asserting two grounds of unpatentability, challenging claims 1, 9, 22, 23, 29, and
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`35 of the ’408 patent, which was assigned Case No. IPR2015-02001. PAN later
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`filed IPR2016-00157 on November 6, 2015, with four grounds challenging claims
`
`3-7, 12-16, and 18-21. The Board granted institution of both IPRs on March 29,
`
`2016 on each ground presented, and consolidated the two IPRs into a single
`
`proceeding. Oral argument in the Consolidated PAN IPRs is currently set for
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`January 5, 2017. The Petition contains grounds of unpatentability that are
`
`substantially identical to the instituted grounds of IPR2016-00157, and in fact
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`-2-
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`
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`
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`duplicates the arguments made in the PAN petition, including the same prior art
`
`analysis and expert testimony. See Petition. Filed concurrently with the Petition is
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`a second petition, IPR2016-00955, duplicating the grounds of IPR2015-02001 and
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`also requesting joinder to the Consolidated PAN IPRs. In conjunction, the two
`
`Blue Coat petitions duplicate the instituted grounds of the Consolidated PAN IPRs.
`
`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)).
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`-3-
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`
`
`
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`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 instituted the Consolidated PAN IPRs on March 29, 2016, less
`
`than one month before the filing of this motion, this motion for joinder is timely.
`
`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 Consolidated
`
`PAN IPRs and will not negatively impact the schedule of the Consolidated PAN
`
`IPRs, but a decision denying joinder could prejudice Blue Coat. Thus, joinder is
`
`appropriate and warranted.
`
`i.
`
`Joinder is Appropriate
`
`Joinder with the Consolidated PAN IPRs is appropriate because the Petition
`
`is limited to the same grounds instituted in IPR2016-00157. It also relies on the
`
`same prior art analysis and expert testimony submitted by PAN. Indeed, the
`
`Petition substantially duplicates the arguments presented in IPR2016-00157, and
`
`does not include any grounds not raised in IPR2016-00157. Other than certain
`
`formalities (e.g., mandatory notice information, identification of counsel, etc.), the
`
`present petition is virtually identical in content to the IPR2016-00157 petition.
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`-4-
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`
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`
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`Certainly, no substantive differences exist between the present petition and the
`
`IPR2016-00157 petition regarding the instituted grounds.
`
`Joinder is also appropriate because it will promote the efficient
`
`determination of patentability of the challenged claims of the ’408 patent. For
`
`example, a final written decision on the patentability of the ’408 patent has the
`
`potential to minimize issues in the underlying litigations, and potentially resolve
`
`the litigations altogether with respect to the ’408 patent. Absent joinder, if Patent
`
`Owner and PAN settle following institution, the PTAB and/or a district court may
`
`be forced to re-adjudicate the same issues on which PAN has already shown it is
`
`reasonably likely to prevail, which would be a waste of judicial resources.
`
`Moreover, granting joinder will not prejudice Patent Owner or PAN, 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 IPR2016-00157. In
`
`addition, the Board issued an institution decision in the Consolidated PAN IPRs
`
`less than one month prior to the filing of this motion. Therefore, joinder should not
`
`significantly affect the timing of the Consolidated PAN IPRs. Also, there should be
`
`little to no additional cost to Patent Owner or PAN 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 Consolidated PAN IPRs against Blue Coat in district court, even though Blue
`
`-5-
`
`
`
`
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`Coat was not able to participate in the Consolidated PAN IPRs 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 IPR2016-00157,
`
`and is based on the same prior art analysis and expert testimony submitted by
`
`PAN. The petitions do not differ in any substantive way. In such circumstances,
`
`the Board has routinely granted joinder, 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 Consolidated PAN
`IPRs’ Trial Schedule
`
`Because the Petition copies the grounds instituted in IPR2016-00157,
`
`including the prior art analysis and expert testimony provided by PAN, joinder will
`
`have no substantial effect on the parties, nor will it prevent the Board from issuing
`
`a final written decision in a timely manner. The timing and content of Blue Coat’s
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`petition and motion for joinder minimize any impact to the Consolidated PAN IPR
`
`trial schedule. Moreover, as discussed above, Blue Coat anticipates participating
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`-6-
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`
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`in the proceeding in a limited capacity absent termination of PAN as a party. For
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`example, if the proceedings are joined and absent termination of PAN as a party, it
`
`is anticipated that no expert witnesses beyond those presented by PAN and Patent
`
`Owner will present testimony. Accordingly, Blue Coat does not believe that any
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`extension of the schedule will be required by virtue of joinder of Blue Coat as a
`
`petitioner to the 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).
`
`iv. Discovery and Briefing Can Be Simplified
`
`Given the Petition is substantially identical to IPR2016-00157, the Board
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`may adopt procedures similar to those used in past joinder cases to simplify
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`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,
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`Paper 10 at 8-10. Specifically, the Board may order petitioners to consolidate
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`filings or limit separate filings, if any, to points of disagreement with PAN (Blue
`
`Coat does not anticipate any), with the understanding that it will not be permitted
`
`any separate arguments in furtherance of those advanced in PAN’s consolidated
`
`filings. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5. Further, no
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`additional depositions will be needed and depositions will be completed within
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`-7-
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`ordinary time limits. Id. Moreover, to the extent that Blue Coat does participate in
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`the proceedings, Blue Coat will coordinate with PAN to consolidate filings,
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`manage questioning at depositions, manage presentations at the hearing, ensure
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`that briefing and discovery occur within the time normally allotted, and avoid
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`redundancies. Blue Coat is willing to take a “backseat” role to PAN, in which it
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`would not file any separate papers without consultation with PAN and prior
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`authorization from the Board. These procedures should simplify briefing and
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`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 Consolidated PAN IPRs.
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`
`
`Dated: April 27, 2016
`
`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
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`-8-
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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 27th day of April, 2016, on the
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`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`Dawn-Marie Bey
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`
`Finjan, Inc.
`2000 University Avenue
`Suite 600
`East Palo Alto, CA 94303
`
`
`Paul J. Andre
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`
`
`
`Dated: April 27, 2016
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`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
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`
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`-9-
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