Paper No. ____
`Filed: June 10, 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.
`
`_____________________________
`
`Patent No. 8,677,494
`_____________________________
`
`
`
`MOTION FOR JOINDER
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`
`
`Filed: June 10, 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.
`
`_____________________________
`
`Patent No. 8,677,494
`_____________________________
`
`
`
`MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`I.
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`Statement of the Precise Relief Requested .................................................... 1
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`II.
`
`Background................................................................................................... 2
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`III. Argument ...................................................................................................... 2
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`A.
`
`Legal Standard .................................................................................... 2
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`B.
`
`C.
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`Blue Coat’s Motion for Joinder is Timely ........................................... 3
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`The Relevant Factors Weigh in Favor of Joinder ................................ 3
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`i.
`
`ii.
`
`iii.
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`Joinder is Appropriate ............................................................... 4
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`No New Grounds Are Presented ............................................... 5
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`Joinder Will Not Negatively Impact the PAN IPR Trial
`Schedule.................................................................................... 6
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`iv. Discovery and Briefing Can Be Simplified ............................... 6
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`IV. Conclusion .................................................................................................... 7
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`-i-
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`I.
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`Statement of the Precise Relief Requested
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`Blue Coat Systems, Inc. (“Blue Coat”) submits, concurrently with this
`
`motion, a petition for inter partes review (“Petition”) of claims 1, 2, 5, 6, 10, 11,
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`14, and 15 of U.S. Patent No. 8,677,494 (“the ’494 patent”), which is assigned to
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`Finjan, Inc. (“Patent Owner”). Blue Coat respectfully requests that this proceeding
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`be joined, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), with a
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`pending inter partes review initiated by Palo Alto Networks, Inc. (“PAN”),
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`IPR2016-00159 (“PAN IPR”), which was instituted on May 13, 2016.
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`Blue Coat’s request for joinder is timely, because it is submitted within one
`
`month of the date on which the PAN IPR was instituted. The Petition is also
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`narrowly tailored to the grounds of unpatentability that are the subject of the PAN
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`IPR, with grounds that are substantively identical to the instituted grounds of the
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`PAN IPR, including the same analysis of the prior art and expert testimony. In
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`addition, joinder is appropriate because it will efficiently resolve the patentability
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`of the challenged claims of the ’494 patent, without prejudicing the parties to the
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`PAN IPR. Indeed, absent termination of PAN as a party to the proceeding, Blue
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`Coat is willing to take a “backseat” role to PAN, in which it would not file any
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`separate papers without consultation with PAN and prior authorization from the
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`Board.
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`1
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`Blue Coat has conferred with counsel for PAN regarding the subject of this
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`motion. PAN 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-3295 (N.D. Cal. filed July
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`15, 2015).
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`On November 6, 2015, PAN filed a petition for inter partes review
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`challenging certain claims of the ’494 patent. The Board instituted the PAN IPR on
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`May 13, 2016 based on two grounds: (1) claims 1-2, 6, 10-11, and 15 are rendered
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`obvious by Dynamic Detection and Classification of Computer Viruses Using
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`General Behaviour Patterns, by Morton Swimmer, and (2) claims 3-5 and 12-14
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`are rendered obvious by Swimmer in view of Blocking Java Applets at the
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`Firewall, by David Martin.
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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 to an instituted inter partes review
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`one who properly files a petition for inter partes review. 35 U.S.C. § 315(c). A
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`motion for joinder must be filed within one month of institution of any inter partes
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`review for which joinder is requested. 37 C.F.R. § 42.122(b). In deciding whether
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`-2-
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`
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`to grant a motion for joinder, the Board considers several factors including: (1) the
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`reasons why joinder is appropriate; (2) whether the party to be joined has presented
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`any new grounds of unpatentability; (3) what impact, if any, joinder would have on
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`the trial schedule for the existing review; and (4) how briefing and discovery may
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`be simplified. See, e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC,
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`IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion,
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`IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014) (quoting Kyocera Corporation v.
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`Softview LLC, IPR2013-00004, Paper 15 at 4 (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
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). Here,
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`because the Board instituted the PAN IPR on May 13, 2016, less than one month
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`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 PAN IPR
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`and will not negatively impact the PAN IPR schedule, but a decision denying
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`joinder could prejudice Blue Coat. Thus, joinder is appropriate and warranted.
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`-3-
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`i.
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`Joinder is Appropriate
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`Joinder with the PAN IPR is appropriate because the Petition is limited to
`
`the grounds instituted in the PAN IPR. The Petition also relies on the same prior
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`art analysis and expert testimony submitted by PAN. Indeed, the Petition is
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`virtually identical to PAN’s petition with respect to the instituted grounds, and
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`does not include any grounds not instituted in the PAN IPR. Other than certain
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`formalities (e.g., mandatory notice information, identification of counsel, etc.), and
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`the removal of non-instituted grounds, the present petition is virtually identical in
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`content to PAN’s petition. Certainly, no substantive differences exist between the
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`Petition and PAN’s petition with respect to the instituted grounds.
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`Joinder is also appropriate because it will promote the efficient
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`determination of the 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 litigation. Absent joinder, if Patent
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`Owner and PAN settle, the PTAB or a district court may be forced to re-adjudicate
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`the same issues on which PAN has already shown it is reasonably likely to prevail,
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`which would be a waste of resources.
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`Moreover, granting joinder will not prejudice Patent Owner or PAN, while
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`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 PAN’s petition. In
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`-4-
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`
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`addition, the Board issued an institution decision in the PAN IPR on May 13, 2016.
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`Therefore, joinder should not significantly affect the timing of the PAN IPR. Also,
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`there should be little to no additional cost to Patent Owner or PAN given the
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`overlap in the petitions. On the other hand, Blue Coat would potentially be
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`prejudiced if joinder is denied. For example, absent joinder, Patent Owner may
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`attempt to use aspects of the PAN IPR against Blue Coat in district court, even
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`though Blue Coat was not able to participate in the PAN IPR to protect its
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`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 raises only the instituted grounds of the PAN IPR,
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`and in fact duplicates the PAN petition with respect to those grounds, including the
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`same prior art analysis and expert testimony. See Petition. The petitions do not
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`differ in any substantive way, other than the removal of grounds on which
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`institution was not granted. In such circumstances, the Board has routinely granted
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`joinder, because doing so does not introduce any additional arguments, briefing, or
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`need for discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony
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`Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-
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`9 (Sep. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper
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`-5-
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`
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`No. 17, at 6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256, Paper 10 at 4-10 (June 20, 2013).
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`iii.
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`Joinder Will Not Negatively Impact the PAN IPR Trial
`Schedule
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`Because the Petition copies the grounds instituted in the PAN IPR, including
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`the prior art analysis and expert testimony provided by PAN, joinder will not
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`prevent the Board from issuing a final written decision in a timely manner. The
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`timing and content of Blue Coat’s Petition and motion for joinder minimize any
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`impact to the PAN IPR trial schedule. Moreover, as discussed above, Blue Coat
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`anticipates participating in the proceeding in a limited capacity absent termination
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`of PAN as a party. For example, if the proceedings are joined and absent
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`termination of PAN as a party, it is anticipated that no expert witnesses beyond
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`those presented by PAN and Patent Owner will present testimony. Accordingly,
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`Blue Coat does not believe that any extension of the schedule will be required by
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`virtue of joinder of Blue Coat as a petitioner to the proceeding. Even if the Board
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`were to determine that joinder would require a modest extension of the schedule,
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`such an extension is permitted by law and is not a reason for denying joinder. 35
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`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 that the Petition is substantively identical to PAN’s petition with
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`respect to the instituted grounds, the Board may adopt procedures similar to those
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`-6-
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`used in past joinder cases to simplify briefing and discovery during trial. See e.g.,
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`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
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`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, the Board may
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`order petitioners to consolidate filings or limit separate filings, if any, to points of
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`disagreement (Blue Coat does not anticipate any), with the understanding that Blue
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`Coat will not be permitted any separate arguments in furtherance of those
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`advanced in PAN’s consolidated filings. See e.g., Hyundai, IPR2014-01543, Paper
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`No. 11 at 5. Further, no additional depositions will be needed and depositions will
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`be completed within ordinary time limits. Id. Moreover, to the extent that Blue
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`Coat does participate in the proceedings, Blue Coat will coordinate with PAN to
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`consolidate filings, manage questioning at depositions, manage presentations at the
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`hearing, ensure that briefing and discovery occur within the time normally allotted,
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`and avoid redundancies. In particular, Blue Coat is willing to take a “backseat” role
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`to PAN, in which it would not file any separate papers without consultation with
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`PAN and prior authorization from the Board. 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 PAN IPR.
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`-7-
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`Dated: June 10, 2016
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`
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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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`-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 10th day of June, 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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`
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`Dated: June 10, 2016
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`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-9-
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