UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TREND MICRO, INC.
`
`Petitioner
`
`v.
`
`OPEN TEXT INC.
`
`Patent Owner
`
`_________________
`
`Inter Partes Review No. 2023-00699
`
`Patent No. 8,418,250
`
`_________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(C), 37 C.F.R. §§ 42.22, AND 42.122(B)
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TREND MICRO, INC.
`
`Petitioner
`
`v.
`
`OPEN TEXT INC.
`
`Patent Owner
`
`_________________
`
`Inter Partes Review No. 2023-00699
`
`Patent No. 8,418,250
`
`_________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(C), 37 C.F.R. §§ 42.22, AND 42.122(B)
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ..................... 1
`
`BACKGROUND AND RELATED PROCEEDINGS ................................ 2
`
`III. ARGUMENT ................................................................................................. 3
`
`A. Trend Micro’s Motion for Joinder Is Timely ............................................ 4
`
`B. The Kyocera Factors Weigh in Favor of Joinder ...................................... 4
`
`1. Joinder of Trend Micro is appropriate because it will promote an efficient
`determination of the validity of the ’250 Patent without prejudice to any
`party. ............................................................................................................... 4
`
`2. Trend Micro’s petition does not raise any new grounds of unpatentability
`and therefore does not add additional complexity to the grounds in
`Sophos’s petition. ........................................................................................... 5
`
`3. Joinder would not affect the schedule in the Sophos IPR. ........................ 6
`
`4. Joinder will not complicate briefing or discovery because Trend Micro
`agrees to consolidated filings and an understudy role. .............................. 7
`
`C. The General Plastics Factors Weigh in Favor of Joinder ........................ 8
`
`V.
`
`CONCLUSION ............................................................................................10
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385,
`Paper 17 at 6-10 (PTAB July 29, 2013) ................................................................. 6
`
`
`Hyundai Motor Co. v. Am Vehicular Scis. LLC,
`IPR2014-01543, Paper 11 at 2-4 (PTAB Oct. 24, 2014) ....................................... 6
`
`
`Kyocera Corp. v. SoftView LLC, IPR2013-00004,
`Paper 15 (PTAB Apr. 24, 2013)............................................................................... 3
`
`
`MEDIATEK Inc. et al. v. Bandspeed, Inc., IPR2015-00314,
`Paper No 20 at 3 (Sep. 17, 2015) ........................................................................... 2
`
`
`Motorola Mobility LLC v. SoftView LLC, IPR2013-00256,
`Paper 10 at 3-10 (PTAB June 20, 2013) .................................................................. 6
`
`
`Mylan Pharms. Inc. v. Dr. Falk Pharma GmbH,
`IPR2016-01386, Paper 9 (Nov. 30, 2016) ............................................................... 8
`
`
`Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268,
`Paper 17 at 5–6 (Apr. 10, 2015) .............................................................................. 7
`
`
`Oxysales Uab et al, IPR2022-00861, Paper 18, page 6 ............................................. 9
`
`Sony Corp. of Am. v. Network-1 Sec Solutions, Inc.,
`IPR2013-00495, Paper 13 at 4-9 (PTAB Sept. 16, 2013) ...................................... 6
`
`
`Sony Corp. v. Memory Integrity, LLC, IPR2015-01353,
`Paper 11 (Oct. 15, 2015) ......................................................................................6, 8
`
`
`
`Statutes
`35 U.S.C. § 315(b) ..................................................................................................... 1
`35 U.S.C. § 315(c) .................................................................................................1, 3
`35 U.S.C. § 317(a) ..................................................................................................... 2
`
`
`iii
`
`
`
`
`
`Rules
`Rules
`
`37 C.F.R. § 42.1(b) ..................................................................................................... 5
`37 CER. § 42.1(b).cccsccccsscssssessccssssesccssssesscsssssesscssssesecessssesecssssescessnsesscssssesseesssesseesen 5
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 CHER. § 42.22 vccccccccccsscssssscesscsessssesscscesssseseecessssscessesssssusessessssneeseessssseesssessenneseees 1
`37 C.F.R. § 42.53 ....................................................................................................... 7
`37 CER. § 42.53 vccssccscsscssssesscsesssesscsssssecsesssesssssssescsssssesscsssuseseesssessscssssesesssseeseesee 7
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 3, 4
`37 CAFR. § 42.122(b) cecccsccsssscessscsssssecssccsssesscseccessusessccersssseseecensssessecesssneessecenee 1, 3,4
`
`
`iv
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Trend Micro, Inc. (“Trend Micro” or “Petitioner”) requests its current Petition
`
`for inter partes review (IPR2024-00106) of U.S. Patent No. 8,418,250 (“the ’250
`
`Patent”) be granted and joined pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22
`
`and 42.122(b) with the petition for inter partes review (IPR2023-00699) filed by
`
`Sophos Ltd. and Sophos Inc. (“Sophos”) concerning the ’250 Patent (the “Sophos
`
`Petition”).1
`
`Trend Micro’s request for joinder is timely because it is made no later than
`
`one month after the October 11, 2023, institution date for the Sophos Petition. Trend
`
`Micro’s Petition relies on the references cited and follows the arguments raised in
`
`the Sophos Petition and is essentially a copy of the Sophos Petition. It includes
`
`identical grounds presented in the Sophos Petition and therefore would create no
`
`additional burden for the Board, Sophos, or Webroot, Inc. and Open Text, Inc
`
`(collectively “Open Text” or “Patent Owner”) if joined. Joinder would therefore lead
`
`to an efficient resolution of the validity of the ’250 Patent.
`
`Trend Micro stipulates that if joinder is granted, Trend Micro counsel will
`
`cooperate with Sophos serving in an “understudy” role in the joined proceeding,
`
`
`1 While Trend Micro is time-barred under 35 U.S.C. § 315(b) to file a new petition,
`
`the current petition and this motion for joinder is not time-barred, because 35 U.S.C.
`
`§ 315(c) creates an exception from the time bar for purposes of joinder.
`
`1
`
`
`
`whether at hearings, at depositions, in filings, or otherwise, as outlined below. Trend
`
`Micro will continue in the understudy role unless Sophos is terminated from the
`
`proceedings.2 Thus, joinder will not impact the trial schedule. Joinder is appropriate
`
`because Trend Micro participation as an understudy will not unduly burden or
`
`prejudice the parties to the Sophos IPR while efficiently determining the validity of
`
`the instituted claims of the ’250 Patent in a single proceeding.
`
`Accordingly, and for the reasons discussed below, joinder should be granted.
`
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`
`Trend Micro filed a first petition for inter partes review of the ’250 Patent on
`
`March 2, 2023 (IPR2023-00655). The Board denied institution of IPR2023-00655
`
`on October 11, 2023.
`
`The ’250 patent is also at issue in the following district court litigations:
`
`
`2 In the event Patent Owner, Open Text, Inc., and/or Sophos move to terminate
`
`IPR2023-00699, Patent Owner should not be terminated before this motion is
`
`decided. See MEDIATEK Inc. et al. v. Bandspeed, Inc., IPR2015-00314, Paper No
`
`20 at 3 (Sep. 17, 2015) (granting Joint Motion to Terminate with respect to last
`
`remaining petitioner, but exercising discretion under “35 U.S.C. § 317(a) to decline,
`
`at this time, to terminate these proceedings with respect to Patent Owner” given
`
`pending copycat petition with motion for joinder).
`
`2
`
`
`
`Webroot, Inc. and Open Text, Inc. v. Trend Micro Inc., Case No. 6:22-cv-00239
`
`(W.D. Tex.), which was originally filed on March 4, 2022; Webroot, Inc. and Open
`
`Text, Inc. v. Sophos LTD., Case No. 6:22-cv-00240 (W.D. Tex.), which was
`
`originally filed on March 4, 2022; Webroot, Inc. and Open Text, Inc. v. CrowdStrike,
`
`Inc. and CrowdStrike Holdings, Inc., Case No. 6:22-cv-00241 (W.D. Tex.), which
`
`was originally filed on March 4, 20223; and Webroot, Inc. and Open Text, Inc. v. AO
`
`Kaspersky Lab, Case No. 6:22-cv-00243 (W.D. Tex.), which was originally filed on
`
`March 4, 2022.
`
`
`III. ARGUMENT
`
`The Board may join any person who properly files a petition for inter partes
`
`review to a separate, ongoing inter partes review. 35 U.S.C. § 315(c). A petition that
`
`seeks joinder must be timely filed “no later than one month after the institution date
`
`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing review;
`
`and (4) address specifically how briefing and discovery may be simplified. See
`
`Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 2-4 (PTAB Apr. 24,
`
`2013).
`
`3
`
`
`The CrowdStrike district court proceedings were recently dismissed.
`3
`
`
`
`Trend Micro’s motion is timely, and the Board should grant joinder because
`
`consideration of the foregoing Kyocera factors weighs in favor of joinder.
`
`A. Trend Micro’s Motion for Joinder Is Timely
`
`Joinder may be requested “no later than one month after the institution date of
`
`any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
`
`Sophos’s Petition was instituted on October 11, 2023. Sophos, IPR2023-00699,
`
`Paper 9 (Oct. 11, 2023). Trend Micro’s motion is timely as it is being filed within
`
`one month of the institution date, the time set by 37 C.F.R. § 42.122(b).
`
`B.
`
`The Kyocera Factors Weigh in Favor of Joinder
`
`Each of the four factors that the Board considers in motions for joinder favor
`
`granting of Trend Micro’s motion. As shown below, joinder will not add further
`
`complication to the proceedings or cause prejudice to the parties.
`
`1. Joinder of Trend Micro is appropriate because it will
`promote an efficient determination of the validity of the
`’250 Patent without prejudice to any party.
`
`If Trend Micro is joined as a party, the validity of the grounds raised in the
`
`Sophos Petition and Trend Micro’s Petition can be determined in a single
`
`proceeding. Trend Micro’s current Petition challenges the validity of the same
`
`claims of the ’250 Patent on identical grounds to those in the Sophos Petition. There
`
`are no material differences between the substance of Sophos’s and Trend Micro’s
`
`Petitions. Trend Micro also relies on the same supporting evidence in its Petition,
`
`including the same expert witness, as is relied on in the Sophos Petition. A
`
`4
`
`
`
`consolidated proceeding, including Sophos and Trend Micro, will therefore more
`
`efficiently “secure the just, speedy, and inexpensive resolution” of Trend Micro’s
`
`current Petition and Sophos’s Petition in a single proceeding, as compared with two
`
`separate proceedings. 37 C.F.R. § 42.1(b).
`
`Joining Trend Micro as a party to the Sophos IPR also would not cause any
`
`prejudice to either Sophos or Open Text. Open Text, as the patent owner, must
`
`respond to the invalidity grounds identified in Sophos’s Petition, which are identical
`
`to those set forth in Trend Micro’s current Petition. Additionally, Trend Micro’s
`
`current petition relies on a declaration from the same expert as relied on in the
`
`Sophos petition, so joining Trend Micro will not impact Open Text’s discovery.
`
`Thus, Open Text would bear no additional burden as result of joinder. For both
`
`Sophos and Open Text, Trend Micro’s current Petition has been filed sufficiently
`
`early so that joinder would affect neither the potential schedule of the inter partes
`
`review, nor the costs associated with a full trial, particularly in view of Trend Micro
`
`stipulating to participate as an understudy to Sophos. This factor favors joinder.
`
`2. Trend Micro’s petition does not raise any new grounds of
`unpatentability and therefore does not add additional
`complexity to the grounds in Sophos’s petition.
`
`Trend Micro’s Petition challenges the validity of the ’250 Patent on identical
`
`grounds to those in the Sophos Petition. See Sophos, IPR2023-00699, Paper 1 (Mar.
`
`8, 2023). Trend Micro’s supporting materials, including its supporting expert
`
`5
`
`
`
`declaration, are also the same as those presented by Sophos. Therefore, consolidation
`
`of this proceeding with Sophos’s via joinder of Trend Micro’s Petition will not raise
`
`any new issues of unpatentability and will not impose any additional burden on the
`
`Board or add additional complexity to the case. The Board has granted joinder in
`
`similar situations. See, e.g., Hyundai Motor Co. v. Am Vehicular Scis. LLC, IPR2014-
`
`01543, Paper 11 at 2-4 (PTAB Oct. 24, 2014); Sony Corp. of Am. v. Network-1 Sec
`
`Solutions, Inc., IPR2013-00495, Paper 13 at 4-9 (PTAB Sept. 16, 2013); Dell Inc. v.
`
`Network-1 Solutions, Inc., IPR2013-00385, Paper 17 at 6-10 (PTAB July 29, 2013);
`
`Motorola Mobility LLC v. SoftView LLC, IPR2013-00256, Paper 10 at 3-10 (PTAB
`
`June 20, 2013). This factor also favors joinder.
`
`3. Joinder would not affect the schedule in the Sophos IPR.
`
`
`
`Given that the Board instituted review of the Sophos Petition less than a month
`
`ago, joinder of the Trend Micro Petition would not affect the schedule in any
`
`forthcoming trial. Trend Micro’s participation would result in no changes to the
`
`schedule. See Sony Corp. v. Memory Integrity, LLC, IPR2015-01353, Paper 11 at 6
`
`(PTAB Oct. 15, 2015) (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]”). This factor further favors joinder.
`
`6
`
`
`
`4. Joinder will not complicate briefing or discovery because
`
`Trend Micro agrees to consolidated filings and an
`
`understudy role.
`
`Trend Micro agrees to take an “understudy” role in the joined proceeding,
`
`absent termination of Sophos as a party. Trend Micro agrees that in the joined
`
`proceeding, the following conditions shall apply so long as Sophos remains an active
`
`party, as previously approved by the Board in similar circumstances:
`
`• all filings by Trend Micro in the joined proceeding be consolidated with the
`
`filings of Sophos, unless a filing solely concerns issues that do not involve
`
`Sophos;
`
`• Trend Micro shall not be permitted to raise any new grounds not already
`
`instituted by the Board, or introduce any argument or discovery not already
`
`introduced by Sophos;
`
`• Trend Micro shall be bound by any agreement between Patent Owner and
`
`Sophos concerning discovery and/or depositions; and,
`
`• Trend Micro at deposition shall not receive any direct, cross examination, or
`
`redirect time beyond that permitted for Sophos in this proceeding alone under
`
`either 37 C.F.R. § 42.53 or any agreement between Patent Owner and Sophos.
`
`See Mylan Pharms. Inc. v. Novartis AG, IPR2015-00268, Paper 17 at 5–6
`
`(Apr. 10, 2015) (finding the proposed limitations “are consistent with the
`
`‘understudy’ role that Petitioner agrees to assume, as well as Petitioner’s
`
`7
`
`
`
`assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”).
`
`Trend Micro would assume a primary role only if Sophos ceased to participate
`
`in the proceeding. The Board has consistently found that the acceptance of an
`
`“understudy” role removes any undue complications or delay that might allegedly
`
`result from joinder. See, e.g., Sony Corp. v. Memory Integrity, LLC, IPR2015-01353,
`
`Paper 11 at 7 (PTAB Oct. 15, 2015); see also Mylan Pharmas. Inc. v. Dr. Falk
`
`Pharma GmbH, IPR2016-01386, Paper 9 at 6 (PTAB Nov. 30, 2016). This factor
`
`also favors joinder.
`
`C.
`
`The General Plastics Factors Weigh in Favor of Joinder
`
`While Trend Micro filed a petition directed to claims 1-30 of the ’250 Patent
`
`on March 2, 2023, and the Board denied that petition on October 11, 2023, that prior
`
`petition does not affect joinder here. Trend Micro’s current Petition is a substantial
`
`copy of the Sophos Petition filed for the purpose of joining the instituted IPR and
`
`involves different grounds and arguments than Trend Micro’s prior IPR2023-00655.
`
`Therefore, “road-mapping” concerns are not raised by Trend Micro’s current Petition
`
`and this motion for joinder.
`
`Instituting IPR based on Trend Micro’s current Petition and granting this
`
`motion for joinder will ensure the Board’s resources are being used to improve patent
`
`quality of the ’250 patent by enabling Trend Micro to step in to conclude the
`
`instituted IPR in the event that Sophos is no longer a participant in the proceedings.
`
`8
`
`
`
`“The Board’s mission is ‘to improve patent quality and restore confidence in
`
`the presumption of validity that comes with issued patents’ outweighs the impact on
`
`Board resources needed to evaluate the merits of a petition.” Oxysales Uab et al,
`
`IPR2022-00861, Paper 18, page 6 (quoting Cuozzo Speed Techs., 579 U.S. at 272).
`
`Thus, joinder would ensure the Board can complete its mission for the ’250 patent
`
`even if Sophos is no longer a party to the IPR.
`
`Finally, instituting IPR based on Trend Micro’s current Petition and granting
`
`this motion for joinder will not delay the IPR proceeding as Trend Micro stipulates
`
`to the understudy role as detailed above.
`
`9
`
`
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Trend Micro respectfully requests that the Board
`
`grant its concurrently filed Petition for inter partes review of the ’250 patent and join
`
`Trend Micro with Sophos as Petitioners in IPR2023-00699.
`
`Respectfully submitted,
`The Marbury Law Group, PLLC
`
`_____________________________
`Robert M. Hansen, Reg. No. 43,656
`Scott B. Amankwatia, Reg. No. 78,226
`Matthew J. Anderson, Reg. No. 78,257
`
`Attorneys for Petitioner
`
`Date: November 8, 2023
`
`The Marbury Law Group, PLLC
`11800 Sunrise Valley Drive
`15th Floor
`Reston, VA 20191
`Tel: (703) 391-2900
`
`10
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned MOTION FOR
`
`JOINDER was served in their entireties on November 8, 2023, on the following
`
`party via Federal Express to the Patent Owner by serving to the correspondence
`
`address of record for the ’250 patent:
`
`Merchant & Gould P.C.
`150 South Fifth Street
`Suite 2200
`Minneapolis, MN 55402
`
`The Marbury Law Group, PLLC
`
`__________________________
`Robert M. Hansen
`Attorney for Petitioner
`
`11
`
`
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