UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`CROWDSTRIKE, INC.,
`Petitioner
`
`v.
`
`TAASERA LICENSING LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2023-01464
`U.S. Patent No. 8,327,441
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 325(c) AND 37 C.F.R. § 42.222(b)
`TO RELATED INTER PARTES REVIEW IPR2023-00801
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`CROWDSTRIKE, INC.,
`Petitioner
`
`v.
`
`TAASERA LICENSING LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2023-01464
`U.S. Patent No. 8,327,441
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 325(c) AND 37 C.F.R. § 42.222(b)
`TO RELATED INTER PARTES REVIEW IPR2023-00801
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..................... 1
`I.
`STATEMENT OF MATERIAL FACTS .................................................... 1
`II.
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED ........................ 2
`A.
`LEGAL STANDARD ................................................................................. 2
`B.
`PETITIONER’S MOTION FOR JOINDER IS TIMELY ..................................... 2
`C.
`EACH FACTOR WEIGHS IN FAVOR OF JOINDER ....................................... 2
`1.
`Joinder is Appropriate ................................................................ 3
`2.
`Petitioner Proposes No New Grounds of Unpatentability .......... 4
`3.
`Joinder Will Not Unduly Burden or Negatively Impact the
`Trend Micro IPR Trial Schedule ................................................. 4
`Procedures to Simplify Briefing and Discovery .......................... 5
`4.
`IV. GENERAL PLASTICS IS INAPPLICABLE ............................................ 7
`V. CONCLUSION ............................................................................................ 10
`
`
`
`
`
`ii
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`CrowdStrike, Inc. (“Petitioner”) respectfully submits this Motion for Joinder,
`
`together with a Petition for Inter Partes Review of U.S. Patent No. 8,327,441 (“the
`
`CrowdStrike Petition”) filed contemporaneously herewith. Pursuant to 35 U.S.C. §
`
`315(c) and 37 C.F.R. § 42.122(b), Petitioner requests institution of an inter partes
`
`review and joinder with the inter partes review in Trend Micro, Inc. v. Taasera
`
`Licensing LLC, IPR2023-00801 (“the Trend Micro IPR”), after the Patent Trial and
`
`Appeal Board (the “Board”) institutes the Trend Micro IPR. Petitioner’s request for
`
`joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b), having been submitted
`
`prior to institution of the Trend Micro IPR. The CrowdStrike Petition is also
`
`narrowly tailored to the same claims, prior art, and grounds for unpatentability that
`
`are the subject of the Trend Micro IPR. In addition, Petitioner is willing to streamline
`
`discovery and briefing.
`
`Petitioner submits that joinder is appropriate because it will not unduly burden
`
`or prejudice the parties to the Trend Micro IPR while efficiently resolving the
`
`question of the ’441 Patent’s validity in a single proceeding.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`On April 6, 2023, Trend Micro, Inc. filed a petition for inter partes
`1.
`
`review (IPR2023-00801) requesting cancellation of claims 1-7 and 9 of the ʼ441
`
`Patent.
`
`
`
`1
`
`
`
`III. STATEMENT OF THE PRECISE RELIEF REQUESTED
`A.
`Legal Standard
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). A motion for joinder must be filed within one month of the Board
`
`instituting an original inter partes review. 37 C.F.R. § 42.122(b). In deciding whether
`
`to exercise its discretion and permit joinder, the Board considers factors, including:
`
`(1) the reasons why joinder is appropriate; (2) whether the new petition presents 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. Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013).
`
`B.
`Petitioner’s Motion for Joinder is Timely
`This Motion for Joinder is timely because it is filed before any institution
`
`decision of the Micro Trend IPR. 37 C.F.R. § 42.122(b). Further, although the one-
`
`year bar set forth in 37 C.F.R. § 42.101(b) does not apply to the CrowdStrike
`
`Petition, CrowdStrike’s one-year statutory deadline has not yet passed. 37 C.F.R. §
`
`42.122(b).
`
`C.
`Each Factor Weighs in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder
`
`here. Specifically, the CrowdStrike Petition does not present any new grounds of
`
`
`
`2
`
`
`
`unpatentability; rather it is substantively identical to the Micro Trend Petition.
`
`Further, joinder will have minimal, if any, impact on the trial schedule, as all issues
`
`are substantively identical and Petitioner will accept an “understudy” role. See
`
`IPR2015-01353, Decision Instituting IPR Review, Motion for Joinder, paper 11 at
`
`6; (granting IPR where petitioners requested an “understudy” role); see also
`
`IPR2015-01353, Motion for Joinder, paper 4 at 5-7. Lastly, the briefing and
`
`discovery will be simplified by resolving all issues in a single proceeding.
`
`Accordingly, joinder is appropriate. See IPR2015-01353, Decision Instituting
`
`IPR Review, Motion for Joinder, paper 11 at 5-6 (granting institution of IPR and
`
`motion for joinder where petitioners relied “on the same prior art, same arguments,
`
`and same evidence, including the same expert and a substantively identical
`
`declaration.”); see also IPR2015-01353, Motion for Joinder, paper 4 at 4-5.
`
`1.
`Joinder is Appropriate
`Joinder with the Micro Trend IPR is appropriate because the CrowdStrike
`
`Petition involves the same patent, challenges the same claims, relies on the same
`
`expert declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the Trend Micro Petition. Id. The CrowdStrike Petition is substantively
`
`identical to the Trend Micro Petition, containing only minor differences related to
`
`formalities of a different party filing the petition. There are no changes to the facts,
`
`citations, evidence, or arguments presented in the Trend Micro Petition. Because
`
`
`
`3
`
`
`
`these proceedings are substantively identical, good cause exists for joining this
`
`proceeding with the Trend Micro IPR so that the Board can efficiently resolve all
`
`grounds in both the CrowdStrike and Trend Micro Petitions in a single proceeding.
`
`Id.
`
`2.
`Petitioner Proposes No New Grounds of Unpatentability
`The CrowdStrike Petition presents the same grounds of unpatentability as the
`
`Trend Micro Petition.
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Trend Micro IPR Trial Schedule
`Because the CrowdStrike Petition is substantively identical to the Trend
`
`Micro Petition, with the same grounds rejecting the same claims as instituted by the
`
`Board, there are no new substantive issues for Patent Owner to address. Due to the
`
`same issues being presented in the Trend Micro Petition, Patent Owner will not be
`
`required to present any additional responses or arguments. See IPR2015-01353,
`
`Decision Instituting IPR, Motion for Joinder, paper 11 at 6 (granting IPR and motion
`
`for joinder where “joinder should not necessitate any additional briefing or discovery
`
`from Patent Owner beyond that already required in [the original IPR].”); see also
`
`IPR2015-01353, Motion for Joinder, paper 4 at 5-7. Further, the Patent Owner
`
`Preliminary Response already filed in the Trend Micro IPR addresses any and all
`
`issues in the CrowdStrike Petition, since the issues are substantively identical to the
`
`
`
`4
`
`
`
`issues of the Trend Micro Petition. See IPR2023-00801, Patent Owner’s Preliminary
`
`Response, Paper 6.
`
`The Patent Owner Response will also not be negatively impacted because the
`
`issues presented in the Trend Micro Petition are identical to the issues presented in
`
`the CrowdStrike Petition. Patent Owner will not be required to provide any
`
`additional analysis or arguments beyond what it will already provide in responding
`
`to the Trend Micro Petition. Also, because the CrowdStrike Petition relies on the
`
`same expert and an identical declaration, only a single deposition is needed for the
`
`proposed joined proceeding.
`
`Joinder of this proceeding with the Trend Micro IPR does not unduly burden
`
`or negatively impact the trial schedule in any meaningful way. Further, even if a
`
`small adjustment of the trial schedule was necessary, this is already provided for in
`
`the rules and is a routine undertaking by parties in IPR proceedings. See 37 C.F.R.
`
`§ 42.100(c). Thus, a slight adjustment in the trial schedule, should one be needed, is
`
`not enough of a reason to deny joining the present CrowdStrike Petition with the
`
`Trend Micro IPR.
`
`4.
`Procedures to Simplify Briefing and Discovery
`The Trend Micro Petition and CrowdStrike Petition present substantively
`
`identical grounds of rejection, including the same art combinations against the same
`
`
`
`5
`
`
`
`claims. Additionally, Petitioner explicitly agrees to take an “understudy” role, as
`
`described by the Board:
`
`“(a) all filings by [Petitioner] in the joined proceeding be consolidated
`with [the filings of the petitioner in the Trend Micro IPR], unless a
`filing solely concerns issues that do not involve [the petitioner in the
`Trend Micro IPR]; (b) [Petitioner] shall not be permitted to raise any
`new grounds not already instituted by the Board in the [Trend Micro]
`IPR, or introduce any argument or discovery not already introduced by
`[the petitioner in the Trend Micro IPR]; (c) [Petitioner] shall be bound
`by any agreement between [Patent Owner] and [the petitioner in the
`Trend Micro IPR] concerning discovery and/or depositions; and (d)
`[Petitioner] at deposition shall not receive any direct, cross-
`examination or redirect time beyond that permitted for [the petitioner
`in the Trend Micro IPR] alone under either 37 C.F.R. § 42.53 or any
`agreement between [Patent Owner] and [the petitioner in the Trend
`Micro IPR].”
`
`IPR2014-00550, paper 38 at 5 (Apr. 10, 2015) (emphasis in original). Petitioner
`
`CrowdStrike will assume the primary role only if Trend Micro ceases to participate
`
`in the Trend Micro IPR.
`
`By Petitioner accepting an “understudy” role, Patent Owner and Petitioner
`
`CrowdStrike can comply with the current trial schedule and avoid any duplicative
`
`efforts by the Board or the Patent Owner. These steps will minimize any potential
`
`complications or delay that potentially may result by joinder. See IPR2015-01353,
`
`
`
`6
`
`
`
`Decision Instituting IPR, paper 11 at 6-7 (granting IPR and motion for joinder
`
`because “joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`where petitioners agreed to an “understudy” role.); see also IPR2015-01353, Motion
`
`for Joinder, paper 4 at 6-7.
`
`IV. GENERAL PLASTICS IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
`
`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Here, both CrowdStrike and Trend Micro submitted separate, independent petitions.
`
`In the current motion, CrowdStrike merely seeks to join Trend Micro’s petition and
`
`does not present any new grounds. As such, CrowdStrike respectfully submits that
`
`General Plastic does not apply in this circumstance because CrowdStrike would be
`
`taking an understudy role and the Board’s finite resources would not be impacted.
`
`Moreover, a joinder petition in these circumstances is not the type of serial petition
`
`to which General Plastic applies, especially as CrowdStrike has not previously filed
`
`an IPR against the ’441 Patent. The PTAB has previously stated that a joinder
`
`petition “effectively neutralizes” a General Plastic analysis. See Apple Inc. v. Uniloc
`
`2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB Aug. 21, 2018) (instituting a
`
`joinder petition where joinder petitioner previously filed a non-instituted IPR, stating
`
`
`
`7
`
`
`
`joinder petitioner’s joinder motion agreeing to a passive understudy role “effectively
`
`neutraliz[es] the General Plastic factors”); see also Celltrion, Inc. v. Genentech,
`
`Inc., IPR2018-01019, Paper 11 at 10 (PTAB Oct. 30, 2018) (instituting a joinder
`
`petition where joinder petition previously filed a non-instituted IPR, stating the
`
`joinder motion “effectively obviates any concerns of serial harassment and
`
`unnecessary expenditure of resources”).
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i).
`
`Regarding factor 1, CrowdStrike has not previously filed a petition against the
`
`’441 Patent. This factor weighs in favor of institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Trend
`
`Micro’s petition and CrowdStrike’s petition share the same prior art because
`
`CrowdStrike’s Petition is a “copycat” of Trend Micro’s petition. Because
`
`CrowdStrike is merely seeking to join in an understudy role, the factor is neutral, at
`
`best, in determining whether to institute.
`
`
`
`8
`
`
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. Because this is a Motion for Joinder requesting an understudy role,
`
`CrowdStrike is submitting a substantively identical petition and has not added to, or
`
`changed, any of the substantive arguments from the Trend Micro petition. Moreover,
`
`because the present Petition is submitted as a joinder and CrowdStrike will serve an
`
`understudy role, the Petition is not an attempt to harass the Patent Owner or
`
`otherwise engage in serial, tactical filings. Thus, this factor weighs against denial of
`
`joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where CrowdStrike will
`
`be taking an understudy role, these factors are inapplicable.
`
`The sixth factor is the finite resources of the Board. Allowing CrowdStrike’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`
`
`9
`
`
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining CrowdStrike should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because CrowdStrike’s petition does not introduce any new
`
`grounds of unpatentability and will effectively merge into a single proceeding with
`
`Trend Micro’s IPR, no such tactical advantage is gained here.
`
`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
`
`V. CONCLUSION
`Based on the factors discussed above, Petitioner CrowdStrike respectfully
`
`requests that the Board grant the CrowdStrike Petition for Inter Partes Review of
`
`
`
`10
`
`
`
`U.S. Patent No. 8,327,441 and then grant joinder with the Trend Micro, Inc.
`
`IPR2023-00801 proceeding.
`
`Date: October 19, 2023
`
`Respectfully submitted,
`ERISE IP, P.A.
`
`
`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
`Hunter A. Horton, pro hac vice
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the Motion for Joinder
`has been served on the Patent Owner on October 13, 2023, via Federal Express or by
`means at least as fast and reliable as Federal Express on the below date, at the
`following address:
`
`Buchanan, Ingersoll & Rooney PC
`1737 King Street
`Suite 500
`Alexandria, VA 22314
`
`Further, a courtesy copy of this Petition for Inter Partes Review was sent via
`
`electronic mail to Petitioner’s and Patent Owner’s counsel in IPR2023-00801:
`
`
`
`Date: October 19, 2023
`
`Robert M. Hansen (rhansen@marburylaw.com)
`Scott B. Amankwatia (samankwatia@marburylaw.com)
`Matthew Anderson (manderson@marburylaw.com)
`pat-docketing@marburylaw.com
`Peter Lambrianakos (plambrianakos@fabricantllp.com)
`Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Alfred R. Fabricant (ffabricant@fabricantllp.com)
`Joseph M. Mercadante (jmercadante@fabricantllp.com)
`PTAB@fabricantllp.com
`
`Respectfully submitted,
`ERISE IP, P.A.
`
`
`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
`Hunter A. Horton, pro hac vice
`
`COUNSEL FOR PETITIONER
`
`
`
`
`
`12
`
`
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