UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SPLUNK INC.
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC.
`Patent Owner.
`
`Case No. IPR2022-00228
`
`U.S. Patent No. 8,243,593
`
`MOTION FOR JOINDER TO RELATED INSTITUTED
`INTER PARTES REVIEW UNDER 37 C.F.R. §42.122(B)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SPLUNK INC.
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC.
`Patent Owner.
`
`Case No. IPR2022-00228
`
`U.S. Patent No. 8,243,593
`
`MOTION FOR JOINDER TO RELATED INSTITUTED
`INTER PARTES REVIEW UNDER 37 C.F.R. §42.122(B)
`
`
`
`IPR2022-00228
`
`I.
`
`INTRODUCTION
`
`Petitioner Splunk Inc. (“Splunk”) submits concurrently with this motion, a
`
`petition for inter partes review (the “Petition”) of claims 1-44 of U.S. Patent No.
`
`8,243,593 (“the ’593 patent”), which is assigned to Sable Networks, Inc. (“Sable”).
`
`Splunk requests that this proceeding be joined with a pending inter partes review
`
`initiated by Cloudflare, Inc. (“Cloudflare”), Cloudflare, Inc. v. Sable Networks,
`
`Inc., IPR2021-00909 (“Cloudflare IPR”).
`
`Splunk’s request for joinder is timely because the Board has just instituted
`
`the Cloudflare IPR on November 19, 2021. The Petition is also narrowly tailored
`
`to the grounds of unpatentability in the Cloudflare IPR, and in fact is practically a
`
`copy of Cloudflare’s petition with respect to the proposed grounds, including the
`
`same analysis of the prior art and expert testimony by the same expert. In addition,
`
`joinder is appropriate because it will efficiently resolve the patentability of the
`
`challenged claims of the ’593 patent in a single proceeding, without prejudicing the
`
`parties to the Cloudflare IPR.
`
`Absent termination of Cloudflare as a party to the proceeding, Splunk
`
`anticipates participating in the proceeding in a limited capacity. To the extent that
`
`Splunk does participate, Splunk will coordinate with Cloudflare to consolidate any
`
`filings, manage questioning at depositions, manage presentations at the hearing,
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`1
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`IPR2022-00228
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`ensure that briefing and discovery occur within the time normally allotted, and
`
`avoid redundancies.
`
`Splunk has conferred with counsel for Cloudflare regarding the subject of
`
`this motion. Cloudflare has indicated that it does not oppose joinder.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`Sable has asserted the ’593 patent against a number of defendants, including
`
`Splunk. On March 25, 2021, Sable filed a complaint asserting the ’593 patent
`
`against Splunk. See Case No. 5:21-cv-00040-RWS (E.D. Tex. filed March 25,
`
`2021). On June 24, 2021, Sable filed an amended complaint asserting the ’593
`
`patent against Splunk and Critical Start, Inc. Id.
`
`On May 7, 2021, Cloudflare filed a petition for inter partes review
`
`challenging claims 1-44 of the ’593 patent, which was assigned Case No.
`
`IPR2021-00909. The Board has just issued a Decision on Institution in IPR2021-
`
`00909 granting Cloudflare’s petition. (IPR2021-00909, Paper 16.)
`
`The present Petition raises only the grounds of unpatentability that are the
`
`subject of the Cloudflare IPR, and in fact is practically a copy of Cloudflare’s
`
`petition with respect to the proposed grounds, including the same prior art analysis
`
`and expert testimony. (See Petition, Paper 1.)
`
`2
`
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`IPR2022-00228
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A.
`
`Splunk’s Motion for Joinder Is Timely
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). Here,
`
`because the Board has just issued a Decision on Institution granting Cloudflare’s
`
`petition on November 19, 2021, this motion for joinder is timely.
`
`B.
`
`The Relevant Factors Weigh in Favor of Joinder
`
`In deciding whether to grant a motion for joinder, the Board considers
`
`several factors including: (1) the reasons why joinder is appropriate; (2) whether
`
`the party to be joined has presented any new grounds of unpatentability; (3) what
`
`impact, if any, joinder would have on the trial schedule for the existing review; and
`
`(4) how briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v.
`
`Am. Vehicular Scis. LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co., Ltd. v. Spansion LLC, IPR2014-00898, Paper No. 15 at 4 (Aug.
`
`13, 2014) (citing Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper No. 15 at
`
`4 (April 24, 2013)). Each of the four factors considered by the Board weighs in
`
`favor of joinder.
`
`3
`
`
`
`IPR2022-00228
`
`1.
`
`Joinder is Appropriate
`
`Joinder with the Cloudflare IPR is appropriate because the Petition is limited
`
`to the same grounds raised in Cloudflare’s petition. The Petition also relies on the
`
`same prior art analysis and expert testimony submitted by Cloudflare. Indeed, the
`
`Petition is virtually identical with respect to the grounds raised, and does not
`
`include any grounds not raised in Cloudflare’s petition.
`
`Joinder is also appropriate because it will promote the efficient
`
`determination of patentability of the challenged claims of the ’593 patent. For
`
`example, a Final Written Decision on the patentability of the challenged claims has
`
`the potential to minimize issues in the underlying litigations, and potentially
`
`resolve the litigations altogether with respect to the ’593 patent. Absent joinder, if
`
`Sable and Cloudflare settle, the PTAB may be called upon to re-adjudicate in this
`
`IPR proceeding the same grounds on which Cloudflare had already shown it would
`
`be reasonably likely to prevail. This would waste judicial resources.
`
`Moreover, granting joinder will not prejudice Sable or Cloudflare. As
`
`mentioned above, the Petition does not raise any new ground that is not in
`
`Cloudflare’s petition. In addition, the Board has just issued a Decision on
`
`Institution in the Cloudflare IPR on November 19, 2021. Therefore, joinder should
`
`not significantly affect the timing of the Cloudflare IPR. There should also be little
`
`to no additional cost to Sable or Cloudflare given the overlap in the petitions.
`
`4
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`
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`IPR2022-00228
`
`2. No New Grounds Are Presented
`
`As mentioned above, the Petition presents only the grounds raised in
`
`Cloudflare’s petition, and is based on the same prior art analysis and expert
`
`testimony submitted by Cloudflare. The petitions do not differ in any substantive
`
`way. In such circumstances, the Board has routinely granted joinder, because
`
`doing so does not introduce any additional arguments, briefing, or need for
`
`discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of
`
`Am. v. Network-1 Sec. Sols., Inc., IPR2013-00495, Paper No. 13 at 5-6 (Sep. 16,
`
`2013); Dell Inc. v. Network-1 Sec. Sols., Inc., IPR2013-00385, Paper No. 17, at 6-
`
`10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper
`
`No. 10 at 4-5 (June 20, 2013).
`
`3. Joinder Will Not Negatively Impact the Cloudflare IPR Trial
`Schedule
`Because the Petition, which is being filed just days after the Decision on
`
`Institution in the Cloudflare IPR, copies the grounds raised in Cloudflare’s petition,
`
`including the prior art analysis and expert testimony provided by Cloudflare,
`
`joinder will not prevent the Board from issuing a final written decision, in a timely
`
`manner. The timing and content of the present petition minimizes any impact on
`
`the Cloudflare IPR trial schedule.
`
`Furthermore, Splunk anticipates participating in the proceeding in a limited
`
`capacity absent termination of Cloudflare as a party. If the proceedings are joined,
`
`5
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`
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`IPR2022-00228
`
`no expert witnesses beyond those presented by Cloudflare and Sable will present
`
`testimony. Splunk therefore does not believe that any extension of the schedule
`
`will be required in view of Splunk’s joinder to this proceeding. Even if the Board
`
`were to determine that joinder would require a modest extension of the schedule,
`
`such an extension is permitted by law and is not a reason for denying joinder. 35
`
`U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). Moreover, if the Board institutes a
`
`joined trial, the Board can set the same schedule governing the joined proceedings,
`
`which would substantially minimize any burden on the Board and the parties.
`
`4. Discovery and Briefing Can Be Simplified
`
`Given that the Petition is identical to Cloudflare’s IPR petition with respect
`
`to the grounds of unpatentability raised in Cloudflare’s IPR petition, the Board
`
`may adopt procedures similar to those used in related cases to simplify briefing and
`
`discovery during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell,
`
`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-
`
`10. Specifically, the Board may order petitioners to consolidate filings. Splunk is
`
`willing to limit separate filings, if any, to only points of disagreement with
`
`Cloudflare (Splunk does not anticipate any), and will not file separate arguments in
`
`support of points already made in Cloudflare’s consolidated filings. See e.g.,
`
`Hyundai, IPR2014-01543, Paper No. 11 at 5. Further, because both Splunk and
`
`Cloudflare are using the same expert who submitted virtually identical
`
`6
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`
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`IPR2022-00228
`
`declarations, no additional depositions will be needed and depositions will be
`
`completed within ordinary time limits. Motorola, IPR2013-00256, Paper 10 at 9-
`
`10. To the extent that Splunk does participate in the proceedings, Splunk will
`
`coordinate with Cloudflare to consolidate filings, manage questioning at
`
`depositions, manage presentations at the hearing, ensure that briefing and
`
`discovery occur within the time normally allotted, and avoid redundancies. These
`
`procedures should simplify briefing and discovery.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Splunk requests that this motion be granted and
`
`that this proceeding be joined with the Cloudflare IPR.
`
`Dated: November 24, 2021
`
`Respectfully submitted,
`
`By: / Alex S. Yap /
`Alex S. Yap
`Registration No.: 60,609
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard, Suite 6000
`Los Angeles, CA 90017
`Email: ayap@mofo.com
`Tel: 213-892-5688
`Fax: 213-892-5454
`
`7
`
`
`
`IPR2022-00228
`
`CERTIFICATE OF SERVICE
`I hereby certify that the attached MOTION FOR JOINDER TO RELATED
`
`INSTITUTED INTER PARTES REVIEW UNDER 37 C.F.R. §42.122(B) was
`
`served as of the below date via email to the following counsel of record for the
`
`Patent Owner:
`
`WEST & ASSOCIATES, A PC
`3050 CITRUS CIRCLE
`SUITE 207
`WALNUT CREEK, CA 94598
`
`Dated: November 24, 2021
`
`By: / Alex S. Yap /
`Alex S. Yap
`Registration No.: 60,609
`MORRISON & FOERSTER LLP
`707 Wilshire Boulevard, Suite 6000
`Los Angeles, CA 90017
`Email: ayap@mofo.com
`Tel: 213-892-5688
`Fax: 213-892-5454
`
`8
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`
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