Case IPR2022-00228
`Patent 8,243,593
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SPLUNK, LLC
`Petitioner,
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`v.
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`SABLE NETWORKS, INC.
`Patent Owner.
`____________
`
`Case IPR2022-00228
`Patent 8,243,593
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
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`Patent 8,243,593
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPLUNK, LLC
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC.
`Patent Owner.
`____________
`
`Case IPR2022-00228
`Patent 8,243,593
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`Case IPR2022-00228
`Patent US 8,243,593
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`Page
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`I.
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`INTRODUCTION ......................................................................................... 1
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`II.
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`IF JOINED, SPLUNK SHOULD HAVE NO RIGHT TO
`PARTICIPATE WITHOUT OBTAINING AUTHORIZATION FROM
`THE BOARD. ................................................................................................ 2
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`III. SPLUNK SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE. ............................................................................. 6
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`IV. SPLUNK’S PROMISES OF COOPERATION BY THE FIRST
`PETITIONER ARE UNSUBSTANTIATED AND INSUFFICIENT. ..... 6
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`V. CONCLUSION .............................................................................................. 8
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`i
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`AGENCY DECISIONS
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`TABLE OF AUTHORITIES
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`Case IPR2022-00228
`Patent US 8,243,593
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`Page(s)
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`GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
`IPR2017-00919, Paper 12 (PTAB June 9, 2017) .............................................4, 5
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`Lupin Ltd. v. Senju Pharm. Co., Ltd.,
`IPR2015-01871, Paper 13 (PTAB Jan. 25, 2016) ................................................ 8
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`Samsung Elecs. Co. v. Arendi S.A.R.L.,
`IPR2014-01144, Paper 11 (PTAB Oct. 2, 2014) .................................................. 8
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`Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
`IPR2013-00386, Paper 16 (PTAB July 29, 2013) ................................................ 1
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`Synaptics Inc. v. Amkor Tech., Inc.,
`IPR2017-00085, Paper 12 (PTAB Apr. 18, 2017) ............................................... 1
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`REGULATIONS
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`37 C.F.R. § 42.122(b) ................................................................................................ 1
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`37 C.F.R. § 42.20(c) ................................................................................................... 1
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`37 C.F.R. § 42.6(d) .................................................................................................... 6
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`ii
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`I.
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`INTRODUCTION
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`Patent Owner Sable Networks, Inc. (“Patent Owner” or “Sable”) hereby
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`responds to Petitioner Splunk Inc.’s (“Petitioner” or “Splunk”) Motion For Joinder
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`(Paper 3) of this IPR with the instituted IPR2021-00909 filed by Cloudflare, Inc.
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`(“Cloudflare”).
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`“Joinder may be authorized when warranted, but the decision to grant
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`joinder is discretionary.” Sony Corp. of Am. v. Network-1 Sec. Sols., Inc.,
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`IPR2013-00386, Paper 16 at 3 (PTAB July 29, 2013). As the moving party,
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`Splunk has the burden to establish entitlement to the requested relief. 37 C.F.R.
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`§§ 42.20(c), 42.122(b).1
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`If the Board institutes review in this case, joinder only should be granted
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`with additional conditions limiting Splunk’s participation, such as those the Board
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`has routinely imposed in other cases, to reduce the inarguable burden the requested
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`joinder will create in these speedy proceedings.
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`Splunk concedes that measures limiting its joined participation are
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`appropriate, and pre-emptively agrees to several such limits. Paper 3 at 5-7. The
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`1 The Motion is moot if the Board denies review of Splunk’s Petition. See,
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`e.g., Synaptics Inc. v. Amkor Tech., Inc., IPR2017-00085, Paper 12 at 11 (PTAB
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`Apr. 18, 2017). Patent Owner therefore assumes, arguendo, institution of review.
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`1
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`Board should, however, grant joinder only with additional limits, as have been
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`ordered by the Board in other joinder cases. At the very least, Patent Owner
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`respectfully submits that the Board should grant joinder only on the further
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`conditions:
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`(1)
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`that Splunk be denied any right to participate in the joined proceeding,
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`including filing papers, engaging in discovery, or participating in
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`depositions and oral argument, jointly or otherwise, without first
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`obtaining authorization from the Board;
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`(2)
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`that Splunk withdraw its exhibits and not submit any separate exhibits
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`or other materials; and
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`(3)
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`if the Board rejects Patent Owner’s proposed condition (1) above, and
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`grants Splunk a right to jointly participate with Cloudflare, that
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`Cloudflare be shown to have accepted the role Splunk has proposed
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`that it will play.
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`II.
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`IF JOINED, SPLUNK SHOULD HAVE NO RIGHT TO
`PARTICIPATE WITHOUT OBTAINING AUTHORIZATION FROM
`THE BOARD.
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`Splunk, the second petitioner, proposes that it be permitted to participate
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`jointly with Cloudflare, the first petitioner, if joinder is granted. Instead, as in past
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`joinder proceedings, the Board should grant Splunk’s joinder request only on terms
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`that Splunk has no right to participate without express Board authorization.
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`2
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`Splunk asserts, inter alia, that:
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`If the proceedings are joined, no expert witnesses beyond those
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`presented by Cloudflare and Sable will present testimony . . . .
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`[T]he Board may order petitioners to consolidate filings . . . . Splunk is
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`willing to limit separate filings, if any, to only points of disagreement
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`with Cloudflare (Splunk does not anticipate any), and will not file
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`separate arguments in support of points already made in Cloudflare’s
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`consolidated filings . . . .
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`Splunk will coordinate with Cloudflare to consolidate filings, manage
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`questioning at depositions, manage presentations at the hearing, ensure
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`that briefing and discovery occur within the time normally allotted, and
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`avoid redundancies . . . .
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`Paper 3 at 5-7. Thus, Splunk states that it agrees that if joined it “will not file
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`separate arguments in support of points already made in Cloudflare’s consolidated
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`filings” and will limit its arguments and briefs in joined proceedings “to only
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`points of disagreement with Cloudflare” and says it “will coordinate with
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`Cloudflare to consolidate filings, manage questioning at depositions, manage
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`presentations at the hearing, ensure that briefing and discovery occur within the
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`time normally allotted, and avoid redundancies.” Id.
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`First of all, to agree to cooperate except where Splunk “disagree[s] with
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`Cloudflare” is not a promise of meaningful cooperation or meaningfully limited
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`participation. Instead, it is a statement that Splunk is not promising to act in an
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`3
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`understudy role at all. Splunk has not even promised not to submit its own
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`separate evidence, and it reserves the right to submit testimony of its own “expert
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`witnesses.” Id. at 5-6. According to Splunk’s so-called cooperation, wherever
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`Splunk finds itself in “disagreement with Cloudflare,” Splunk expressly reserves
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`the right to make filings separate from Cloudflare, including separate fact and
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`opinion evidence. Id. at 6-7. Splunk expressly indicates it may ask separate
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`questions in deposition, make separate arguments at the hearing, and act separately
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`in briefing and discovery. Id. at 7.
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`Splunk’s promises amount to nothing more than a promise to add a second
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`petitioner who has not promised to serve as an understudy to the first petitioner and
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`reserves full rights to “disagree[]” about any and all “points” and participate
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`separately as to all such points. Id. at 6.
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`In light of such factors, joinder would create significant burdens if Splunk is
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`given the right to participate in the proceedings without Board permission. See id.
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`In similar factual circumstances, the Board’s past remedy for these concerns,
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`where it has not denied the joinder request altogether, has been to allow joinder
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`only on condition that the joining petitioner has no right to participate or submit
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`any materials or arguments without express permission from the Board.
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`For example, in GlobalFoundries U.S. Inc. v. Godo Kaisha IP Bridge I,
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`IPR2017-00919, the petitioner seeking joinder promised, unlike Splunk, that, if
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`4
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`joinder were granted, it would stay “in a circumscribed ‘understudy’ role without a
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`separate opportunity to actively participate,” and “w[ould] not file additional
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`written submissions, nor . . . pose questions at depositions or argue at oral hearing
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`without the prior permission of” the first petitioner. Id., Paper 12 at 8-9 (PTAB
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`June 9, 2017). Notably, GlobalFoundries’ joinder petitioner voluntarily promised
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`a far more limited rule than Splunk has here. Yet even that was not enough for the
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`Board to grant joinder.
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`Despite that joinder petitioner’s promises of limited participation, the Board
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`“agree[d] with Patent Owner, though, that given its ‘understudy’ role, Petitioner
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`should be permitted to file papers, engage in discovery, and participate in
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`depositions and oral argument only after obtaining authorization from the Board,
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`not [the first petitioner].” Id. at 9. The Board therefore granted the petitioner’s
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`motion for joinder only on the condition that the petitioner would have no right to
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`participate in the joined proceedings at all and would have to contact the Board to
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`request permission before taking any action. See id.
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`If joinder were to be granted here, the same condition should be imposed as
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`in GlobalFoundries, for there would be no more justification for Splunk to have
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`any right to participate than the petitioner in GlobalFoundries. As in
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`GlobalFoundries, the Board should not grant Splunk’s joinder request except, inter
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`alia, under the condition Splunk be limited to the role of a silent understudy, with
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`5
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`no right to file papers, engage in discovery, or participate in depositions and oral
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`argument without first obtaining authorization from the Board.
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`III. SPLUNK SHOULD BE PROHIBITED FROM OFFERING ITS OWN
`SEPARATE EVIDENCE.
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`Regardless of other restrictions the Board places on Splunk, if its joinder is
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`granted, Splunk should be required to withdraw all its exhibits and not file any
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`more henceforth.
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`Splunk assures the Board that if joined, it will refrain from certain
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`independent action, including that it will “not file separate arguments in support of
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`points already made in Cloudflare’s consolidated filings.” Paper 3 at 6. Notably,
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`Splunk does not agree to not file separate exhibits, and also, all of Splunk’s
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`exhibits are virtually identical to exhibits Cloudflare previously filed. The rules
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`generally deny parties the right to the filing of duplicative exhibits without express
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`Board authorization. See 37 C.F.R. § 42.6(d) (“A document already in the record
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`of the proceeding must not be filed again, not even as an exhibit or an appendix,
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`without express Board authorization.”).
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`IV. SPLUNK’S PROMISES OF COOPERATION BY THE FIRST
`PETITIONER ARE UNSUBSTANTIATED AND INSUFFICIENT.
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`Finally, Splunk’s request relies heavily on assurances as to how Cloudflare,
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`the petitioner in the instituted IPR2021-00909, will supposedly act in the
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`“consolidated” proceedings Splunk proposes. But Splunk offers no basis for those
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`assurances. Indeed, Splunk does not even aver that Cloudflare has agreed to abide
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`by them. Splunk merely states, in a vague and conclusory manner, that “Splunk
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`has conferred with counsel for Cloudflare regarding the subject of this motion,”
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`that “Cloudflare has indicated that it does not oppose joinder,” and that if joinder is
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`granted Splunk will endeavor to “coordinate with Cloudflare” in “depositions,”
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`“briefing,” “discovery,” and “the hearing.” Paper 3 at 1-2.
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`Splunk offers no evidence or averments substantiating that Cloudflare has
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`agreed to any of this. Splunk says that it agrees to its conditions, that it further
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`“will coordinate with Cloudflare,” but nowhere avers that Cloudflare agrees to
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`these conditions, or indeed agrees to any post-joinder cooperation at all. Id. All
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`Cloudflare has allegedly agreed to is to not oppose joinder itself. Thus, there is no
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`assurance that any burdens from the grant of joinder will be avoided at all.
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`To reiterate, the risks of disruption without any agreement between the
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`parties about reducing burdens are manifest. For example, if joinder is granted,
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`then in addition to making “consolidated” filings with Splunk, Cloudflare could
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`also make separate, additional arguments, and file additional evidence and papers,
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`that are not “consolidated” with Splunk.
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`Even if Splunk had averred that it had agreed with Cloudflare to reduce
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`burdens on Patent Owner and the Board, the Board has required promises of post-
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`joinder cooperation from a first petitioner to be substantiated if joinder is granted.
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`7
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`Compare, e.g., Samsung Elecs. Co. v. Arendi S.A.R.L., IPR2014-01144, Paper 11
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`at 6 (PTAB Oct. 2, 2014) (denying joinder where, inter alia, joinder motion was
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`silent as to whether first petitioner had agreed to cooperate as promised), with, e.g.,
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`Lupin Ltd. v. Senju Pharm. Co., Ltd., IPR2015-01871, Paper 13 at 4-5 (PTAB Jan.
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`25, 2016) (granting joinder after petitioners substantiated their agreement to
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`cooperate).
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`The absence of proof that Cloudflare has agreed to any reduction in burdens
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`weighs in favor of denying Splunk joinder, and even if joinder is granted, it
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`certainly weighs in favor of denying Splunk the right to participate without first
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`obtaining the permission of the Board. See supra § II.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully submits that, if
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`Splunk’s petition is instituted, joinder should be granted only with the conditions
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`proposed above.
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /_________
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`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
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`Date: December 27, 2021
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`8
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`Case IPR2022-00228
`Patent 8,243,593
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following document was served by
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`electronic service, on the date signed below:
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`PATENT OWNER’S RESPONSE
`TO PETITIONER’S MOTION FOR JOINDER
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`The names and address of the parties being served are as follows:
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`Alex S. Yap
`Mehran Arjomand
`Rose S. Lee
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`ayap@mofo.com
`marjomand@mofo.com
`roselee@mofo.com
`SPLUNK-SABLE-IPR@mofo.com
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`Respectfully submitted,
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`/ Colette Woo /
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`Date: December 27, 2021
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