UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`Symantec Corp.,
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`
`
`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
`
`
`
`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
`
`_________________________________
`
`IPR2016-01071
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`PETITIONER’S MOTION FOR JOINDER
`
`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`Symantec Corp.,
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`
`
`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
`
`
`
`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
`
`_________________________________
`
`IPR2016-01071
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`PETITIONER’S MOTION FOR JOINDER
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`IPR2016-01071
`Paper No. 3
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`PETITIONER’S MOTION FOR JOINDER
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`I.
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`INTRODUCTION
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`Petitioner Symantec Corp. (“Petitioner” or “Symantec”) moves to join its
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`concurrently filed petition for inter partes review involving U.S. Patent No.
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`8,141,154 (the ’154 patent) with the inter partes review requested by the Palo Alto
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`Networks, Inc. (“PAN”) against the same patent, Palo Alto Networks, Inc. v.
`
`Finjan, Inc., IPR2016-00151 (the “PAN IPR”). The Board instituted trial in that
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`proceeding on April 20, 2016. Symantec seeks to join as a party to the PAN IPR,
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`and thus, has presented patentability challenges that are identical to those
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`challenges that were instituted in PAN’s petition.
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`The Symantec petition is timely filed under 35 U.S.C. § 315(c), as it is filed
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`within one month of the date that the PAN IPR was instituted. See IPR2016-00151,
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`Paper 10 at 1. As the statute provides and the Board has explained, the one-year
`
`filing window specified in § 315(b) and § 42.101(b) “shall not apply to a request
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`for joinder under subsection (c).” 35 U.S.C. § 315(b); Dell Inc. v. Network-1
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`Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-5 (granting joinder beyond
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`the one-year window); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper
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`15 at 4-5 (same); 37 C.F.R. § 42.122(b) (the “time period set forth in §42.101(b)
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`shall not apply when the petition is accompanied by a request for joinder.”).
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`03869-00010/7948970.3
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`1
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`IPR2016-01071
`Paper No. 3
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`Joinder is appropriate because of the similarity between the Symantec
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`petition and the PAN IPR. The Symantec petition relies on the exact same
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`grounds as those instituted1 by the Board in the PAN IPR. Other factors relevant
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`to joinder favor granting this motion, including that: (i) the same schedule for
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`various proceedings can be adopted, (ii) Symantec is not advancing any new expert
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`testimony, and thus, discovery will not be impacted by joinder, and (iii) joinder
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`will not materially affect the range of issues needing to be addressed by the Board
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`and by the parties in the joined proceedings. See Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (Apr. 24, 2013). Moreover, Symantec is
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`involved in other proceedings involving the ’154 patent and has an interest in
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`ensuring the Board does not resolve an issue in this proceeding that would impact
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`those other proceedings. Because these factors support joining these proceedings,
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`Symantec requests the Board to grant this motion for joinder.
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`II. RELEVANT FACTS
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`Finjan has alleged infringement of the ’154 patent against Symantec and
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`other entities in numerous lawsuits.
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`On June 30, 2014, Finjan filed suit against Symantec, asserting infringement
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`of one or more claims of the ’154 patent in Finjan, Inc. v. Symantec Corp., 3:14-
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`cv-02998 (N.D. Cal.). The ’154 patent has also been asserted in Finjan, Inc. v.
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`1 Symantec omits from its petition the grounds on which the PTAB did not institute trial.
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`03869-00010/7948970.3
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`2
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`IPR2016-01071
`Paper No. 3
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`Palo Alto Networks, Inc., No. 3-14-cv-04908 (N.D. Cal.); Finjan, Inc. v. Websense,
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`Inc., No. 5-14-cv-01353 (N.D. Cal.); Finjan, Inc. v. Websense, Inc., No. 5-13-cv-
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`04398 (N.D. Cal.); Finjan, Inc. v. Sophos, Inc., No. 3-14-cv-01197 (N.D. Cal.);
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`and Finjan, Inc. v. Proofpoint, Inc., No. 3-13-cv-05808 (N.D. Cal.).
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`III. ARGUMENT
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`Joinder with the Symantec IPR is justified because each factor identified by
`
`the Board as supporting joinder is met. For example, the Board has explained that
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`a motion for joinder should: (1) explain the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (representative
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`order). Each of these factors is addressed below, and, when considered together,
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`strongly support granting this motion for joinder.
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`A.
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`Joinder Is Appropriate
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`Joinder between the instant petition and the PAN IPR is appropriate because
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`they involve the same patent, the same art, the same expert declaration, and the
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`same arguments and legal rationales. Symantec’s proposed grounds of invalidity
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`are identical to PAN’s.
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`03869-00010/7948970.3
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`3
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`IPR2016-01071
`Paper No. 3
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`Permitting joinder will not prejudice PAN or Finjan. Symantec raises no
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`issues that are not already before the Board, and consequently, joinder would not
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`affect the timing of the PAN IPR nor the content of any of Finjan’s responses.
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`Moreover, PAN is amenable to coordinating with Symantec and, as such, neither
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`PAN nor Finjan will suffer any additional costs or burdens in preparing motions
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`and arguments.
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`The denial of joinder, however, will prejudice Symantec. Absent joinder,
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`Symantec would be unable to participate in the inter partes review proceeding
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`related to the ’154 patent. Symantec is involved in other proceedings involving the
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`’154 patent, specifically, Finjan, Inc. v. Symantec Corp., 3:14-cv-02998 (N.D.
`
`Cal.). Granting joinder would allow Symantec to ensure the Board does not
`
`resolve an issue in this proceeding that would impact that proceedings.
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`Accordingly, because of the instant petition is substantively identical to the
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`PAN IPR, and to avoid prejudice to Symantec, joinder is appropriate.
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`B. No New Grounds of Unpatentability in the Symantec Petitions
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`Symantec’s petition proposes institution of trial on the same grounds that
`
`were instituted by the Board in the PAN IPR, and Symantec relies on the same
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`exhibits and expert testimony included in the PAN IPR. Accordingly, Symantec
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`proposes no new grounds of unpatentability.
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`03869-00010/7948970.3
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`4
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`IPR2016-01071
`Paper No. 3
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`C. No Impact on the Trial Schedule of Costs of the Proceeding
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`Granting this motion for joinder will have no impact on the trial schedule
`
`because Symantec does not raise any issues that are not already before the Board.
`
`Finjan does not need to specifically address any issues raised by Symantec, and
`
`thus, joinder would have no impact on the cost of the proceeding. In addition,
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`Symantec is willing to adhere to the schedule already established for IPR2016-
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`00151. See, e.g. Motorola Mobility LLC v. Softview LLC, IPR2013-000256, Paper
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`10 at 2-3 (June 20, 2013) (identifying “impact of the joinder on the schedule and
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`costs of the proceeding” as a factor relevant to decide whether to join proceedings).
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`Therefore, granting this motion for joinder will have no impact on the trial
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`schedule.
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`D.
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`Proposals for Briefing in the Joined Proceedings
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`Joinder will simplify briefing in both the PAN IPR and the present
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`proceeding. In the interest of efficiency, Symantec is willing to coordinate with
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`PAN to provide consolidated filings within the page limits set forth in the rules
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`governing this proceeding so long as PAN is actively participating in the
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`proceeding, or to accept other reasonable conditions on the conduct of the joined
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`proceeding. In addition, Symantec has not filed a separate expert declaration, and
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`thus, Finjan will not need to depose any additional witnesses. Symantec is also
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`03869-00010/7948970.3
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`5
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`IPR2016-01071
`Paper No. 3
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`willing to coordinate with PAN to avoid duplicative cross-examination of Finjan
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`expert witnesses.
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`IV. CONCLUSION
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`Because the factors relevant to grant of a motion for joinder strongly support
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`joining the present proceeding to IPR2016-00151, Symantec requests this motion
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`for joinder be granted.
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`May 19, 2016
`
`By,
`
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`
`/Nathaniel A. Hamstra/
`
`
`Nathaniel A. Hamstra (Reg.No. 65,680)
`
`500 West Madison Street, Suite 2450
`Chicago, IL 60661
`Tel.: (312)705-7400
`Fax: (312)705-7401
`nathanhamstra@quinnemanuel.com
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`03869-00010/7948970.3
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`6
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`IPR2016-01071
`Paper No. 3
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “PETITIONER’S
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`MOTION FOR JOINDER” was served in its entirety on May 19, 2016, upon the
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`following parties via FedEx:
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`Attorney of Record for U.S. Patent No. 8,141,154:
`
`Dawn-Marie Bey
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, Virginia 23229
`dawnmarie@beycotropia.com
`bc@beycotropia.com
`
`Attorney of Record for Patent Owner in IPR2016-00151:
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`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: (650)752-1700
`Fax: (212)715-8000
`jhannah@kramerlevin.com
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: (212)715-7502
`Fax: (212)715-8302
`jprice@kramerlevin.com
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
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`03869-00010/7948970.3
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`IPR2016-01071
`Paper No. 3
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`mkim@finjan.com
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`Attorney of Record for Petitioner in IPR2016-00151:
`
`
`Matthew I. Kreeger
`Reg. No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`Jonathan Bockman
`Reg. No. 45,640
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`JBockman@mofo.com
`Tel: (703) 760-7769
`Fax: (703) 760-7777
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`Shouvik Biswas
`Reg. No. 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`SBiswas@mofo.com
`Tel: (703) 760-7774
`Fax: (703) 890-2632
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`03869-00010/7948970.3
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`2
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`May 19, 2016
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`IPR2016-01071
`Paper No. 3
`
`By,
`
`Quinn Emanuel Urquhart & Sullivan,
`LLP
`
`
`/Nathaniel A. Hamstra/
`
`
`Nathaniel A. Hamstra
`(Reg. No. 65,680)
`
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`03869-00010/7948970.3
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`3
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