Paper No. ___
`Filed: October 28, 2016
`
`Filed on behalf of: FireEye, Inc.
`By:
`James M. Heintz
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Tel.: 703-773-4000
`Fax: 703-773-5000
`Email: jim.heintz@dlapiper.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`
`
`Patent No. 8,225,408
`
`
`
`MOTION FOR JOINDER
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`WEST\273890040.3
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`
`
`Filed: October 28, 2016
`
`Filed on behalf of: FireEye, Inc.
`By:
`James M. Heintz
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Tel.: 703-773-4000
`Fax: 703-773-5000
`Email: jim.heintz@dlapiper.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`
`
`Patent No. 8,225,408
`
`
`
`MOTION FOR JOINDER
`
`
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 3
`II.
`III. ARGUMENT .................................................................................................. 4
`A.
`Legal Standard ...................................................................................... 4
`B.
`FireEye’s Motion for Joinder Is Timely ............................................... 5
`C.
`The Relevant Factors Weigh in Favor of Joinder ................................ 5
`i.
`Joinder is Appropriate ................................................................ 5
`ii.
`No New Grounds Are Presented ................................................ 7
`iii.
`Joinder Will Not Negatively Impact the Blue Coat IPR
`Trial Schedule ............................................................................ 8
`iv. Discovery and Briefing Can Be Simplified ............................... 9
`IV. CONCLUSION ............................................................................................. 10
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`I.
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`Introduction
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`FireEye, Inc. (“FireEye”) submits, concurrently with this motion, a petition
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`for inter partes review (the “Petition”) of claims 1-2, 8-9, 11, 23-28, and 29-34 of
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`U.S. Patent No. 8,225,408 (“the ’408 patent”), which is assigned to Finjan, Inc.
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`(“Patent Owner”). FireEye respectfully requests that this proceeding be joined
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`with a pending inter partes review initiated by Blue Coat Systems, Inc. (“Blue
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`Coat”), Blue Coat Systems, Inc. v. Finjan, Inc., IPR2016-01441 (“Blue Coat IPR”).
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`FireEye’s request for joinder is timely because the Board has not yet issued
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`an institution decision in the Blue Coat IPR. The Petition is also narrowly tailored
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`to the same disclosures and arguments of unpatentability that are subject of the
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`Blue Coat IPR, and in fact substantively identical to Blue Coat’s petition with
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`respect to the analysis of the prior art and expert testimony.
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`Although the Blue Coat IPR petition challenges only dependent claims 2, 8,
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`11, 24-28, and 30-33 in its four grounds (Sections VII.B.-E. of the Blue Coat IPR
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`petition), it also establishes in Section VII.A that independent claims 1, 9, 23,
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`and 29 (from which those challenged dependent claims depend) are obvious under
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`35 U.S.C. § 103 over Chandnani and Kolawa to support the challenge to the
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`dependent claims. It appears that Blue Coat did not include these independent
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`claims in the grounds in its petition because, as explained in Section V of that
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`petition, Blue Coat had filed earlier petitions for IPR that challenged these
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`independent claims.
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`The Petition reproduces Section VII.A of the Blue Coat petition, but also
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`asserts it as Ground 1. In other words, Grounds 2-5 in the Petition are identical to
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`grounds 1-4 in the Blue Coat IPR petition, and Ground 1 in the Petition is identical
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`to the analysis in Section VII.A of the Blue Coat IPR petition which Blue Coat
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`relies on to support grounds 1-4. Thus, the Petition does not present any new
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`disclosure or theory of invalidity.
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`Patent Owner will not be prejudiced if the Board institutes on Petitioner’s
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`Ground 1 challenging independent claims 1, 9, 23, and 29. A finding that any
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`dependent claim in Petitioner’s Grounds 2-5 (Blue Coat’s grounds 1-4) is
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`unpatentable necessarily requires a finding that the independent claim from which
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`it depends is also unpatentable based on the disclosures and arguments in
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`Petitioner’s Ground 1 (Blue Coat’s Section VII.A). Patent Owner has every
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`opportunity to address the independent claims in its arguments relating to the
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`patentability of the dependent claims. As a practical matter, the Board will address
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`the independent claims in the first instance in the earlier Blue Coat IPRs unless
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`those earlier IPRs are terminated, and in that case any possible prejudice the patent
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`owner may face as a result of a final written decision in an IPR granted on
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`FireEye’s Petition that formally declares unpatentable the independent claims
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`along with the dependent claims from which they depend is outweighed by the
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`public’s interest in the cancellation of unpatentable claims. In any event, even if
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`the Board denies instituting on Petitioner’s Ground 1, that is not a reason to deny
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`instituting Petitioner’s Grounds 2-5.
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`In addition, joinder is appropriate because it will efficiently resolve the
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`validity of the challenged claims of the ’408 patent in a single proceeding, without
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`prejudicing the parties to the Blue Coat IPR.
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`Absent termination of Blue Coat as a party to the proceeding, FireEye
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`anticipates participating in the proceeding in a very limited capacity as an
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`understudy to Blue Coat. To the extent that FireEye does participate, FireEye will
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`coordinate with Blue Coat to consolidate any filings, to manage questioning at
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`depositions, to manage presentations at the hearing, to avoid redundancies, and to
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`ensure that briefing and discovery occur within the time and page limits normally
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`allotted for one party.
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`FireEye has conferred with counsel for Blue Coat regarding the subject of
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`this motion. Blue Coat has indicated that it does not oppose joinder.
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`II. Background
`Patent Owner has asserted the ’408 patent against a number of defendants,
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`including FireEye. In 2013, Patent Owner filed a complaint asserting the ’408
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`patent against FireEye. See Case No. 4:13-cv-03133 (N.D. Cal. filed Jul. 8, 2013).
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`On July 15, 2016, Blue Coat filed a petition for inter partes review
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`challenging claims dependent claims 2, 8, 11, 24-28, and 30-33 of the ’408 patent,
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`which was assigned Case No. IPR2016-01441. The Board has not yet issued an
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`institution decision in IPR2016-01441.
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`The Petition presents the same disclosures and arguments of unpatentability
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`that are the subject of the Blue Coat IPR, and in fact copies almost entirely Blue
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`Coat’s petition with respect to the proposed grounds, disclosures, and prior art
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`analysis, and relies on the identical expert testimony from the same expert. See
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`Pet.
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`III. Argument
`A. Legal Standard
`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35
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`U.S.C. § 315(c). A motion for joinder must be filed within one month of
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`institution of any inter partes review for which joinder is requested. 37 C.F.R.
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`§ 42.122(b). In deciding whether to grant a motion for joinder, the Board
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`considers several factors including: (1) the reasons why joinder is appropriate; (2)
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`whether the party to be joined has presented any new grounds of unpatentability;
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`(3) what impact, if any, joinder would have on the trial schedule for the existing
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`review; and (4) how briefing and discovery may be simplified. See, e.g., Hyundai
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`Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3
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`(Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4
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`(Aug. 13, 2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (April 24, 2013)).
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`FireEye’s Motion for Joinder Is Timely
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`B.
`Joinder may be requested no later than one month after the institution date of
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`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
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`because the Board has not yet issued an institution decision in the Blue Coat IPR,
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`this motion for joinder is timely.
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`C. The Relevant Factors Weigh in Favor of Joinder
`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 Blue Coat
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`IPR and will not negatively impact the Blue Coat IPR schedule, but a decision
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`denying joinder could severely prejudice FireEye. Thus, joinder is appropriate and
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`warranted.
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`Joinder is Appropriate
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`i.
`Joinder with the Blue Coat IPR is appropriate because the Petition is limited
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`to the same prior art and analysis raised in Blue Coat’s petition. It also relies on
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`the same expert testimony submitted by Blue Coat with its petition. Indeed, the
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`Petition is virtually identical with respect to the substance of Blue Coat’s petition,
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`and does not include any disclosures or arguments not raised in Blue Coat’s
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`petition.
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`Joinder is also appropriate because it will promote the efficient
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`determination of validity of the challenged claims of the ’408 patent. For example,
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`a final written decision on the validity of the ’408 patent has the potential to
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`minimize issues in the underlying litigations, and potentially resolve the litigations
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`altogether with respect to the ’408 patent. Absent joinder, if Patent Owner and
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`Blue Coat settle following institution, the PTAB and/or a district court may be
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`forced to re-adjudicate the same issues on which Blue Coat has already shown it is
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`reasonably likely to prevail, which would be a waste of judicial resources.
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`Moreover, granting joinder will not prejudice Patent Owner or Blue Coat,
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`while FireEye 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 Blue Coat’s petition. In
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`addition, the Board has not yet issued an institution decision in the Blue Coat IPR.
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`Therefore, joinder should not affect the timing of the Blue Coat IPR. Also, there
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`should be little to no additional cost to Patent Owner or Blue Coat given the
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`overlap in the petitions. On the other hand, FireEye would be potentially
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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 Blue Coat IPR against FireEye in district court, even
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`though FireEye was not able to participate in the Blue Coat IPR to protect its
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`interests.
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`No New Grounds Are Presented
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`ii.
`The Petition does not present any new prior art or argument for
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`unpatentability. As mentioned above and in the Petition, the Petition asserts as
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`Ground 1 the exact same analysis that Blue Coat provides in Section VII.A (but
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`does not assert as a separate ground) to lay the foundation for the Blue Coat IPR
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`grounds 1-4 establishing that dependent claims 2, 11, 24-28, and 30-34 are
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`obvious. Sections VII.B.-E. in the Petition (Grounds 2-5) are identical to Sections
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`VII.B.-E. in the Blue Coat IPR petition (grounds 1-4 in the Blue Coat IPR
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`petition); and, Section VII.A. in the Petition (Ground 1) is identical to Section
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`VII.A. in the Blue Coat IPR petition, which Blue Coat uses to establish
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`independent claims 1, 9, 23, and 29 are obvious by Chandnani and Kolawa and
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`relies on for its grounds 1-4.
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`Thus, the Petition presents only the same prior art and arguments raised in
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`Blue Coat’s petition, and is based on the same prior art analysis and expert
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`testimony submitted by Blue Coat. The petitions do not differ in any substantive
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`way. In such circumstances, the Board has routinely granted joinder, because
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`doing so does not introduce any additional arguments, briefing, or need for
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`discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of
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`Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9
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`(Sep. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper
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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 Blue Coat IPR Trial
`Schedule
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`Because the Petition, which is being filed prior to an institution decision in
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`IPR2016-01441, copies the grounds raised in Blue Coat’s petition, including the
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`prior art analysis and expert testimony provided by Blue Coat, joinder will not
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`prevent the Board from determining whether trial should be instituted, or from
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`issuing a final written decision, in a timely manner. The timing and content of
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`FireEye’s petition and motion for joinder minimize any impact to the Blue Coat
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`IPR trial schedule. Moreover, as discussed above, FireEye anticipates participating
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`in the proceeding in a limited capacity absent termination of Blue Coat as a party.
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`For example, if the proceedings are joined and absent termination of Blue Coat as a
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`party, it is anticipated that no expert witnesses beyond those presented by Blue
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`Coat and Patent Owner will present testimony. Accordingly, FireEye does not
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`believe that any extension of the schedule will be required by virtue of joinder of
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`FireEye as a petitioner to this proceeding. Even if the Board were to determine
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`that joinder would require a modest extension of the schedule, such an extension is
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`permitted by law and is not a reason for denying joinder. 35 U.S.C. § 316(a)(11);
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`37 C.F.R. § 42.100(c).
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`Moreover, because the Board has not yet issued an institution decision in the
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`Blue Coat IPR, there is currently no trial schedule governing the Blue Coat IPR.
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`Accordingly, if the Board institutes a joined trial, the Board can set a single
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`schedule governing the joined proceedings, which would substantially minimize
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`any burden on the Board and the parties.
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`iv. Discovery and Briefing Can Be Simplified
`Given the Petition is identical to Blue Coat’s petition with respect to the
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`grounds of unpatentability raised in Blue Coat’s petition, the Board may adopt
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`procedures similar to those used in related cases to simplify briefing and discovery
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`during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-
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`00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10.
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`Specifically, the Board may order petitioners to consolidate filings, and FireEye in
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`its understudy role and as long as Blue Coat remains a party is willing to be
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`required to seek Board approval to submit separate filings, if any, directed only to
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`points of disagreement with Blue Coat (FireEye does not anticipate any), with the
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`understanding that it will not be permitted any separate arguments in furtherance of
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`those advanced in Blue Coat’s consolidated filings. See e.g., Hyundai, IPR2014-
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`01543, Paper No. 11 at 5. Further, no additional expert depositions will be needed
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`and depositions will be completed within ordinary time limits. Id. Moreover, to
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`the extent that FireEye does participate in the proceedings, FireEye will coordinate
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`with Blue Coat to consolidate filings, to manage questioning at depositions, to
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`manage presentations at the hearing, to avoid redundancies, and to ensure that
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`briefing and discovery occur within the time and page limits normally allotted to a
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`single party. These procedures should simplify briefing and discovery.
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`IV. Conclusion
`For the foregoing reasons, FireEye respectfully requests that this motion be
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`granted and that this proceeding be joined with the Blue Coat IPR.
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`Respectfully Submitted,
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`
`
` /James M. Heintz/
`James M. Heintz
`Registration Number 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Phone: (703) 773-4148
`Fax: (703) 773-5200
`jim.heintz@dlapiper.com
`
`Jeffrey R. Cole
`Registration Number 56,052
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Phone: (512) 457-7035
`Fax: (512) 721-2263
`jeff.cole@dlapiper.com
`
`Attorneys for Petitioner
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`
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`Dated: October 28, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Joinder were served on October 28, 2016, via United Parcel Service, directed to the
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`attorneys of record for the patent at the following address:
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`Bey & Cotropia PLLC (Finjan Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, VA 23229
`
`
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
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`Dated: October 28, 2016
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`Respectfully Submitted,
`
`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Apple-Aylus-IPR@dlapiper.com
`Phone: (703) 773-4148
`Fax: (703) 773-5200
`
`Jeffrey R. Cole
`Reg. No. 56,052
`DLA Piper LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`Jeff.cole@dlapiper.com
`Phone: (512) 457-7035
`Fax: (512) 721-2263
`
`Attorneys for Petitioner
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`WEST\273890040.3
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`-11-
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