IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`Filed on behalf of Petitioner
`By:
`Joseph J. Richetti
`Kevin E. Paganini
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PROOFPOINT, INC. AND
`ARMORIZE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`IPR2016-00966
`U.S. Patent No. 7,647,633
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2015-01974
`
`
`IPR of U.S. Patent No. 7,647,633
`
`Filed on behalf of Petitioner
`By:
`Joseph J. Richetti
`Kevin E. Paganini
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PROOFPOINT, INC. AND
`ARMORIZE TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`IPR2016-00966
`U.S. Patent No. 7,647,633
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2015-01974
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .............................1
`
`STATEMENT OF MATERIAL FACTS....................................................2
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED..................4
`
`A.
`
`B.
`
`C.
`
`Legal Standard.......................................................................................4
`
`Petitioner’s Motion for Joinder is Timely.............................................5
`
`Each Factor Weighs in Favor of Joinder...............................................5
`
`1.
`
`2.
`
`3.
`
`Joinder is Appropriate and Petitioner Presents No New
`Grounds.......................................................................................5
`
`Joinder Will Not Negatively Impact the PAN IPR Trial
`Schedule......................................................................................6
`
`Procedures to Simplify Briefing and Discovery.........................8
`
`D. Without Joinder, Petitioner is prejudiced..............................................9
`
`E.
`
`Joinder Will Not Prejudice the Parties to the PAN IPR......................10
`
`IV. CONCLUSION..............................................................................................10
`
`i
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Proofpoint, Inc. and Armorize Technologies, Inc. (“Petitioner”) respectfully
`
`submits this Motion for Joinder, together with a petition (the “Proofpoint Petition”)
`
`for Inter Partes Review of U.S. Patent No. 7,647,633 (the “‘633 patent”) filed con-
`
`temporaneously herewith. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
`
`42.122(b), Petitioner requests institution of an inter partes review and joinder with
`
`the inter partes review filed by Palo Alto Networks, Inc. (“PAN”) in Palo Alto
`
`Networks, Inc. v. Finjan, Inc., IPR2015-01974 (the “PAN IPR”), which was insti-
`
`tuted on March 29, 2016 and concerns the same ‘633 patent. Petitioner timely
`
`filed the Proofpoint Petition and this motion within one month of the institution of
`
`the PAN IPR. 37 C.F.R. § 42.122(b).
`
`Joinder will efficiently resolve the challenges to the ‘633 patent in the PAN
`
`IPR, and will neither impact the substantive issues or schedule in that proceeding,
`
`nor prejudice the parties in the PAN IPR. The Proofpoint Petition raises the same
`
`grounds of unpatentability for which the PAN IPR was instituted, challenges the
`
`same claims, and relies on the same prior art, arguments and evidence presented in
`
`PAN’s petition for inter partes review. Indeed, in an effort to avoid multiplication
`
`of issues before the Board, the Proofpoint Petition duplicates the challenges pre-
`
`sented on the instituted grounds in the PAN IPR and it relies on the same support-
`
`ing expert declaration. In addition, Petitioner explicitly agrees to consolidated dis-
`
`1
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`covery and briefing as described below, and is willing to accept a limited role with
`
`PAN’s counsel acting as the lead counsel as long as PAN remains in the proceed-
`
`ing. 1 Accordingly, Petitioner submits that joinder is appropriate because it will not
`
`prejudice the parties or impact the substantive issues and schedule in the PAN IPR,
`
`while efficiently resolving in a single proceeding the question of the ‘633 patent’s
`
`validity based on the instituted grounds of the PAN IPR.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. The ‘633 patent is entitled “Malicious mobile code runtime monitor-
`
`ing system and methods” and lists Yigal Mordechai Edery et al. as inventors. The
`
`‘633 patent issued on January 12, 2010. Finjan, Inc. (the “Patent Owner”) is be-
`
`lieved to have all rights, title, and interest in ‘633 patent.
`
`2. On December 16, 2013, Patent Owner filed a civil action asserting the
`
`‘633 patent, along with other patents, against Proofpoint, Inc. and Armorize Tech-
`
`1 Petitioner notes that on January 20, 2016, Blue Coat Systems, Inc. (“Blue Coat”)
`
`also filed a motion requesting joinder to the PAN IPR (IPR2016-00480). In the
`
`event that Blue Coat’s motion for joinder is granted, Petitioner agrees to the same
`
`procedures for simplified briefing and discovery discussed herein and, in the event
`
`that PAN settles with Patent Owner, Petitioner agrees to work with Blue Coat to
`
`determine which counsel will replace PAN’s counsel as the lead counsel in the
`
`proceedings.
`
`2
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`nologies, Inc. in Civil Action No. 3:13-cv-05808. A jury trial concerning the ‘633
`
`patent as well as other patents is currently scheduled for June 13, 2016.
`
`3. On November 4, 2014, Patent Owner filed a civil action asserting the
`
`‘633 patent, along with other patents, against PAN in Civil Action No. 3:14-cv-
`
`04908.
`
`4. On September 30, 2015, PAN filed a petition for inter partes review
`
`requesting cancellation of claims 1–4, 6–8, 13, 14, 19, 28, and 34 of the ‘633 pa-
`
`tent (the “PAN Petition”), which was subsequently assigned Case No. IPR2015-
`
`01974.
`
`5. On January 20, 2016, Blue Coat filed a petition and motion for joinder
`
`to join IPR2015-01974. Blue Coat’s petition has been assigned Case No.
`
`IPR2016-00480 (the “Blue Coat IPR”). Like Proofpoint, Blue Coat submits that
`
`its petition is “virtually identical with respect to the grounds raised in Palo Alto
`
`Networks’ petition.” Blue Coat Systems, Inc. v. Finjan, Inc., IPR2015-00480, pa-
`
`per 4 at 4 (PTAB January 20, 2016). No decision has been rendered in the Blue
`
`Coat IPR.
`
`6. On March 29, 2016, the Board instituted inter partes review in Case
`
`No. IPR2015-01974, finding that a reasonable likelihood existed that the PAN Pe-
`
`tition would prevail in showing the unpatentability of claims 14 and 19 of the ‘633
`
`patent.
`
`3
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`7. On April 12, 2016, PAN filed a Request for Rehearing asserting that
`
`the Board misapprehended or overlooked key evidence presented in the PAN Peti-
`
`tion concerning the Shin reference and requesting that the Board reverse its deci-
`
`sion to not institute trial as to claims 1-4, 6-8, and 13 of the ‘633 patent. No deci-
`
`sion has been rendered on PAN’s Request for Rehearing.
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). Any request for joinder must be filed no later than one month af-
`
`ter the institution date of any inter partes review for which joinder is requested.
`
`See 37 C.F.R. § 42.122(b).
`
`In deciding whether to exercise its discretion, the
`
`Board considers factors including: (1) the reasons why joinder is appropriate; (2)
`
`whether the new petition presents 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 Macronix Int’l Co. v. Span-
`
`sion, IPR2014-00898, paper 13, at 4 (PTAB Aug. 13, 2014) (citing Kyocera Cor-
`
`poration v. Softview LLC, IPR2013-00004, paper 15 at 4 (PTAB April 24, 2013));
`
`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, pa-
`
`per 10 at 4 (PTAB Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et
`
`4
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`al., IPR2015-00265, paper 17 at 4 (PTAB April 10, 2015); Ciena Corp., et al. v.
`
`Capella Photonics, Inc., IPR2015-01958, paper 11 (PTAB April 1, 2016).
`
`B. Petitioner’s Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`March 29, 2016 institution decision in the PAN IPR. See 37 C.F.R. § 42.122(b).
`
`The one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply when a petition
`
`is filed concurrently with a motion for joinder, as is currently the case here with the
`
`Proofpoint Petition. Id.
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors to be considered by the Board in ruling on this mo-
`
`tion weighs in favor of joinder. As explained in further detail below, joinder is
`
`proper because the Proofpoint Petition does not present any new grounds of un-
`
`patentability, is substantively identical to the PAN Petition, will have minimal im-
`
`pact, if any, on the trial schedule, briefing and discovery in the PAN IPR, and al-
`
`lows all issues to be resolved in a single proceeding before the Board. Petitioner
`
`further agrees to take on a limited role in the proceeding.
`
`1. Joinder is Appropriate and Petitioner Presents No New
`Grounds
`
`Joinder with the PAN IPR is appropriate because the Proofpoint Petition in-
`
`volves the same patent, challenges the same claims, and relies on the same prior
`
`5
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`art, arguments and expert declaration presented in the PAN IPR.2 Importantly, the
`
`Proofpoint Petition does not raise any new grounds of unpatentability. Further, the
`
`Proofpoint Petition relies on the same grounds from the PAN Petition on which the
`
`Board instituted review on March 29, 2016, and is substantively identical to the
`
`PAN Petition. Indeed, the substantive challenges presented in the Proofpoint Peti-
`
`tion are copied verbatim from the PAN Petition and rely on the same supporting
`
`expert declaration. The primary differences between the Proofpoint Petition and
`
`the PAN Petition relate to minor formalities associated with the parties involved
`
`with filing the petitions and references to related proceedings. The Proofpoint Pe-
`
`tition presents the same arguments, expert declaration, and prior art presented in
`
`the PAN Petition; it does not add to or alter any argument that has already been
`
`considered by the Board. Accordingly, because these proceedings are substantive-
`
`ly identical, joining this proceeding with the PAN IPR is appropriate and allows
`
`the Board to efficiently resolve the instituted grounds in a single proceeding.
`
`2. Joinder Will Not Negatively Impact the PAN IPR Trial
`Schedule
`
`35 U.S.C. § 316(a)(11) provides that “the final determination in an inter
`
`partes review be issued not later than one year after the date on which the Director
`
`2 The Proofpoint Petition is submitted with the same Exhibits as those submitted
`
`with the PAN IPR.
`
`6
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`notices the institution of a review.” See also 37 C.F.R. § 42.100(c). Joinder in this
`
`case will not impact this mandate and will not even require modification of the ex-
`
`isting scheduling order. See, IPR2015-01974, Paper 8. As explained above, the
`
`Proofpoint Petition is substantively identical with respect to the instituted grounds
`
`contained in the PAN Petition. Thus, the Preliminary Response already filed by
`
`Patent Owner in the PAN IPR addresses any and all issues in the Proofpoint Peti-
`
`tion. See IPR2015-01974, paper 6. Furthermore, there are no new issues for Pa-
`
`tent Owner to address and Patent Owner will not be required to file additional re-
`
`sponses or arguments. Consequently, the Patent Owner response will also not be
`
`impacted; joining Petitioners to this proceeding will not require any additional
`
`analysis by Patent Owner beyond what they will already undertake to respond to
`
`the PAN Petition. Also, since the Proofpoint Petition relies on the same expert
`
`declaration, only a single deposition is needed for the proposed joined proceeding
`
`in connection with both the PAN Petition and the Proofpoint Petition. For effi-
`
`ciency’s sake, if joined, Petitioner further agrees to consolidated discovery with
`
`PAN’s counsel acting as the lead counsel so long as PAN remains in the proceed-
`
`ing.3
`
`3 As referenced in fn. 1 , in the event that Blue Coat is joined and PAN settles with
`
`Patent Owner, Petitioner agrees to work with Blue Coat to determine which coun-
`
`sel will replace PAN’s counsel as the lead counsel in the proceedings.
`
`7
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`For at least the reasons set forth above, there is no reason to delay or alter
`
`the schedule already present in the PAN IPR, and Petitioner explicitly consents to
`
`this schedule. Accordingly, joinder of these proceedings will not negatively im-
`
`pact the PAN IPR trial schedule.
`
`3. Procedures to Simplify Briefing and Discovery
`
`As discussed above, Petitioner offers no new grounds for invalidity and Peti-
`
`tioner does not anticipate that its presence will introduce any additional arguments,
`
`briefing or need for discovery. As long as PAN remains an active participant in
`
`the IPR, Petitioner is willing to accept a limited role and agree to: (1) consolidate
`
`filings with PAN; (2) refrain from raising any new grounds not already considered
`
`by the Board in the PAN IPR; (3) be bound by any agreement between Patent
`
`Owner and PAN concerning discovery and/or depositions; (4) limit any direct,
`
`cross-examination or redirect time beyond that permitted for PAN alone under ei-
`
`ther 37 C.F.R. § 42.53 or any agreement between PAN and the Patent Owner, such
`
`that Petitioner’s participation in the PAN IPR does not result in any additional time
`
`being required for any deposition; and (5) limit any presentation at oral hearing to
`
`8
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`unused time previously allocated to PAN.4 By accepting this limited role, both the
`
`Board and parties will be able to comply with the existing schedule in the PAN
`
`IPR and avoid any duplication of efforts. The Board has consistently granted join-
`
`der motions allowing Petitioners to take a similar role as that proposed by Petition-
`
`er in this proceeding.5 Accordingly, Petitioner requests that the Board grant Peti-
`
`tioner’s motion for joinder, particularly in light of the foregoing procedural safe-
`
`guards and limited role that Petitioner is willing to accept in this proceeding.
`
`D. Without Joinder, Petitioner is prejudiced
`
`Petitioner will be prejudiced if it is not permitted to join in the PAN IPR.
`
`Patent Owner has asserted the ‘633 patent against Petitioner in a pending litigation
`
`4 In the event that Blue Coat’s motion for joinder is also granted, Petitioner agrees
`
`to the same procedures for simplified briefing and discovery or other reasonable
`
`conditions for the conduct of the combined, joined proceedings that are deemed
`
`appropriate by the Board.
`
`5 See, e.g., Ciena Corp., et al. v. Capella Photonics, Inc., IPR2015-01958, paper 11
`
`(PTAB April 1, 2016); Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-
`
`01376, paper 12 at 16-20 (PTAB Sept. 29, 2015); Ciena Corp., et al. v. Capella
`
`Photonics, Inc., IPR2015-00894, paper 12 (PTAB Sept. 22, 2015); Dell Inc. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00385, paper 17 (PTAB July 29,
`
`2013).
`
`9
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`and the one-year statutory bar for filing an IPR by Petitioner has been exhausted.
`
`Accordingly, Petitioner should be permitted to join the pending IPR to participate
`
`in proceedings affecting the claims of a patent asserted against it, and thereby al-
`
`lowed to continue the proceedings should PAN and Patent Owner settle under 37
`
`C.F.R. § 42.74 before a final written decision is issued.
`
`E.
`
`Joinder Will Not Prejudice the Parties to the PAN IPR
`
`Permitting joinder will not prejudice PAN or Patent Owner. It is Petitioner’s
`
`understanding that PAN does not intend to oppose this joinder motion. Also, Pa-
`
`tent Owner is not prejudiced as all of the issues raised by Petitioner are already
`
`known to Patent Owner. Further, Patent Owner is not expected to incur any addi-
`
`tional burden as a result of this joinder. This is particularly true in light of the lim-
`
`ited role that Petitioner proposes to undertake in the joined proceedings. Joinder
`
`will allow the Board to address the same patent validity questions in a single
`
`proceeding within a statutory deadline without adding costs or burdens on any of
`
`the parties.
`
`IV. CONCLUSION
`Based on the factors outlined above, Petitioner requests the Board grant the
`
`Proofpoint Petition for Inter Partes Review of U.S. Patent No. 7,647,633 and grant
`
`joinder with the Palo Alto Networks, Inc. v. Finjan, Inc., IPR2015-01974 proceed-
`
`ing.
`
`10
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`Date: April 29, 2016
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`IPR2016-00966@bryancave.com
`PTAB-NY@bryancave.com
`
`Attorneys for Petitioner – Proofpoint, Inc. and
`Armorize Technologies, Inc.
`
`11
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned “MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`TO INTER PARTES REVIEW OF IPR2015-01974” was served in its entirety on
`
`April 29, 2016, upon the following parties via FedEx:
`
`Attorney of Record for U.S. Patent No. 7,647,633:
`
`Dawn-Marie Bey
`Marc Berger
`Christopher Cotropia
`Sang Kim
`Julie Mar-Spinola
`BEY & COTROPIA PLLC
`213 Bayly Court
`Richmond, VA 23229
`
`Counsel for Patent Owner in IPR2015-01974:
`
`James Hannah
`Paul J. Andre
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`jhannah@kramerlevin.com
`
`Jeffrey H. Price
`Benu C. Wells
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`jprice@kramerlevin.com
`
`Michael Kim
`Finjan Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`mkim@finjan.com
`
`1
`
`
`
`IPR2016-00966
`IPR of U.S. Patent No. 7,647,633
`
`Counsel for Petitioners in IPR2015-01974:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`Christopher Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 20194
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`Orion Armon
`Christopher Max Colice
`Jennifer Volk-Fortier
`Brian Eutermoser
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`zPaloAltoNetworksIPR@cooley.com
`
`Date: April 29, 2016
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`Lead Attorney for Petitioner
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Direct Tel: (212) 541-1092
`Email: joe.richetti@bryancave.com
`IPR2016-00966@bryancave.com
`PTAB-NY@bryancave.com
`
`Attorney for Petitioner – Proofpoint, Inc.
`and Armorize Technologies, Inc.
`
`2
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