UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2017-00157
`U.S. Patent No. 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER UNDER 37 C.F.R. § 42.23(b)
`
`
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2017-00157
`U.S. Patent No. 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER UNDER 37 C.F.R. § 42.23(b)
`
`
`
`
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`IPR2017-00157 (U.S. Patent No. 8, 225,408)
`
`On October 28, 2016, FireEye, Inc., (“Petitioner” or “FireEye”) submitted a
`
`petition (“Petition”) to institute an inter partes review (“IPR”) challenging claims
`
`1-2, 8-9, 11, 23–28, and 29-34 of U.S. Patent No. 8,225,408 (“the ‘408 Patent”).
`
`The Petition was filed concurrently with a Motion for Joinder indicating that it
`
`seeks to join a “petition” filed by Blue Coat Systems, Inc. (“Blue Coat”), in Case
`
`No. IPR2016-01441. See Petition at 1; Motion for Joinder, FireEye, Inc., v.
`
`Finjan, Inc., Paper No. 3 (“Joinder Motion”). Finjan, Inc., (“Patent Owner” or
`
`“Finjan”) requests that Petitioner’s Joinder Motion be denied because 35 U.S.C.
`
`§ 315(c) only permits joinder of a party to an inter partes review “[i]f the Director
`
`institutes an inter partes review.” Because no institution decision has been entered
`
`in Case No. IPR2016-01441, Petitioner’s Motion for Joinder is improper and
`
`should be denied.
`
`FireEye argues that “Joinder may be requested no later than one month after
`
`the institution date of an inter partes review for which joinder is requested.”
`
`Joinder Motion at 5 (citing 37 C.F.R. § 42.122). Petitioner’s reliance on 37 C.F.R.
`
`§ 42.122 is misplaced because Petitioner disregards the fact that it seeks to join a
`
`case for which inter partes review proceedings have not been initiated (IPR2016-
`
`01441), which is contrary to the law. The law is clear that joinder cannot be
`
`appropriate where no “decision granting institution has been entered in the inter
`
`partes review for which joinder is requested.” See Linear Tech. Corp. v. In-Depth
`
`1
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`IPR2017-00157 (U.S. Patent No. 8, 225,408)
`
`Test LLC, Case No. IPR2015-01994, Paper No. 7 at 4 (P.T.A.B. Oct. 20, 2015) (“It
`
`is clear from both the statute and the rule that a request for joinder is appropriate
`
`only if a decision granting institution has been entered in the inter partes review
`
`for which joinder is requested.”).
`
`Indeed, 35 U.S.C. § 315(c) dictates that the Director may only join a party to
`
`an inter partes review proceeding after the proceeding has been instituted:
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to
`that inter partes review any person who properly files a
`petition under section 311 that the Director, after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response,
`determines warrants the institution of an inter partes
`review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added). The conditional phrase highlighted above
`
`leaves no doubt that a motion for joinder is only appropriate when the case to be
`
`joined is an instituted inter partes review proceeding. Similarly, the Patent Rules
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`provide that any request for joinder must be filed within one month of the
`
`institution date of the inter partes review to be joined:
`
`Joinder may be requested by a patent owner or petitioner.
`Any request for joinder must be filed, as a motion under
`§ 42.22, no later than one month after the institution date
`of any inter partes review for which joinder is
`
`2
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`IPR2017-00157 (U.S. Patent No. 8, 225,408)
`
`requested. The time period set forth in §42.101(b) shall
`not apply when the petition is accompanied by a request
`for joinder.
`
`37 C.F.R. § 42.122(b) (emphasis added). That is, a request for joinder is a request
`
`to join an inter partes review, which only exists after the Board’s institution
`
`decision. In re Cuozzo Speed Technologies, LLC, 793 F. 3d 1268, 1272 (Fed. Cir.
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`2015) (“IPRs proceed in two phases. In the first phase, the PTO determines
`
`whether to institute IPR. In the second phase, the Board conducts the IPR
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`proceeding and issues a final decision.”)(citations omitted).
`
`
`
`In addition, Ground 1 should not be instituted because (a) it is not a ground
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`in the original petition (IPR2016-01441), and (b) FireEye is statutorily barred from
`
`filing an inter partes petition under 35 U.S.C. § 315(b). Blue Coat failed to
`
`challenge the independent claims in IPR2016-01441, which is required under 35
`
`U.S.C. § 312(a)(3), as such the petition should fail. Indeed, the Board has already
`
`requested additional briefing on Blue Coat’s failure to include independent claims
`
`in another inter partes petition (IPR2016-01443). As such, FireEye cannot attempt
`
`to fix Blue Coat’s IPR2016-01441 petition by filing a joinder petition adding
`
`additional grounds, particularly, when both Blue Coat and FireEye are statutorily
`
`barred from filing new petitions under 35 U.S.C. § 315(b).
`
`For at least the foregoing reasons, Patent Owner respectfully requests that
`
`the Board deny Petitioner’s improper Joinder Motion.
`
`3
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`IPR2017-00157 (U.S. Patent No. 8, 225,408)
`
`Dated: November 15, 2016
`
`(Case No. IPR2017-00157)
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Michael Lee (Reg. No. 63,941)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey H. Price (Reg. No. 69,141)
`Shannon Hedvat (Reg. No. 68,147)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
`Attorneys for Patent Owner
`
`4
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion for Joinder
`IPR2017-00157 (U.S. Patent No. 8, 225,408)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Opposition to Petitioner’s Motion for
`
`Joinder was served on November 15, 2016, by filing this document through the
`
`PTAB E2E System as well as delivering via electronic mail upon the following
`
`counsel of record for Petitioner:
`
`
`
`James M. Heintz
`DLA Piper LLP
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`jim.heintz@dlapiper.com
`
`
`Jeffrey R. Cole
`DLA Piper LLP
`401 Congress Avenue, Suite 2500
`Austin, TX 78701
`jeff.cole@dlapiper.com
`
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`
`5
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