`Tel: 571-272-7822
`
`Paper 10
`Entered: September 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORP.,
`Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-00919
`Patent 8,141,154 B2
`
`Before THOMASL. GIANNETTI, MIRIAM L. QUINN,and
`PATRICK M. BOUCHER Administrative Patent Judges.
`
`QUINN,Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. $ 42.108
`37 CFR. § 42.122(b)
`
`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`I.
`
`INTRODUCTION
`
`Symantec Corp.(“Petitioner” or “Symantec”) filed a Petition (Paper
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`3, “Pet.’’) requesting an inter partes review of claims 1-8, 10, and 11 (“the
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`challenged claims’) of U.S. Patent No. 8,141,154 B2 (Ex. 1001, “the ’154
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`patent’’), and concurrently filed a Motion for Joinder (Paper 2, “Mot.”). The
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`Motion for Joinder seeks to join this proceeding with Palo Alto Networks,
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`Inc. v. Finjan, Inc., Case IPR2015-01979 (“the PAN IPR”). Mot. 1. Patent
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`Ownerfiled a waiver of the Preliminary Response, and does not opposethe
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`Motion for Joinder. Paper 8. For the reasons described below, weinstitute
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`an inter partes review of claims 1—8, 10, and 11 of the ’154 patent, and grant
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`Petitioner’s Motion for Joinder.
`
`Il.
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`INSTITUTION OF INTER PARTES REVIEW
`
`On March 21, 2016, we instituted a trial in IPR2015-01979 on the
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`following alleged grounds of unpatentability based on obviousness:
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`1) Claims 1-5 over Khazan!andSirer’; and
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`2) Claims 6-8, 10, and 11 over Khazan,Sirer, and Ben-Natan.?
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`PAN IPR,slip. op. at 15 (PTAB March 29, 2016) (Paper 8). Upon review of
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`the Petition here, we note that the Petition is substantially identical to the
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`Petition in the PAN IPR. The Petition in this proceeding asserts the same
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`groundsas those on which weinstituted review in the PAN IPR. Pet. 1, 4—5.
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`Petitioner further relies on the same declaration of Dr. Aviel Rubin, and
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`! Patent Application Pub. No. US 2005/0108562 Al (“Khazan”).
`* Sirer et al., Design and Implementation ofa Distributed Virtual machine
`for Networked Computers (1999) (“Sirer’).
`3 U.S. Patent No. 7,437,362 B1 (“Ben-Natan”).
`
`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`same arguments and supporting evidence presented in the PAN IPR. Pet.4;
`
`Mot.3.
`
`In view ofthe identity of the challenge in the instant Petition and in
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`the petition in the PAN IPR,andin light of Patent Owner’s waiverofits
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`Preliminary Response, weinstitute inter partes review in this proceeding on
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`the same grounds, and for the same reasons, regarding claims 1—8, 10, and
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`11, on which weinstituted inter partes review in the PAN IPR.
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`Ill. GRANT OF MOTION FOR JOINDER
`
`Joinderin inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—Ifthe 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 whoproperlyfiles a petition under
`section 311 that
`the Director, after receiving a preliminary
`response undersection 313 or the expiration ofthe timefor filing
`such a response, determines warrants the institution of an inter
`parties review undersection 314.
`Asthe moving party, Petitioner bears the burden of provingthatit is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have onthetrial schedule for the existing
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`review. See Frequently Asked Question HS, https://www.uspto.gov/patents-
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`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
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`asked-questions.
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`Petitioner asserts it has grounds for standing because, in accordance
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`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
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`with the Petition and notlater than one monthafter institution of the PAN
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`
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`IPR2016-00919
`Patent No. 8,141,154 B2
`
`IPR. Mot. 1. Patent Ownerdoes not oppose Petitioner’s motion for joinder.
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`Paper 8. Wefind that the Motionis timely.
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`Wealso find that Petitioner has met its burden of showingthat joinder
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`is appropriate. The Petition here is substantially identical to the Petition in
`the PAN IPR. Mot. 3-4. Theevidencealsois identical, including the
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`reliance on the same declaration of Dr. Aviel Rubin. Jd.
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`Petitioner further has shownthat the trial schedule will not be affected
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`by joinder. Mot. 4-5. No changesin the schedule are anticipated or
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`necessary, and the limited participation,if at all, of Petitioner will not impact
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`the timeline of the ongoingtrial. We limit Petitioner’s participation in the
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`joined proceeding such that Petitioner shall require prior authorization from
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`the Board before filing any further paper. This arrangement promotesthe
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`just and efficient administration of the ongoingtrial and the interests of
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`Petitioner and Patent Owner.
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`IV. ORDER
`
`In view ofthe foregoing,it is
`ORDEREDthat IPR2016-00919 is hereby instituted as to claims 1-8,
`10, and 11 on the following grounds:
`
`(1) claims 1—5 as unpatentable under 35 U.S.C. § 103(a) over
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`Khazan and Sirer; and
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`(2) claims 6-8, 10, and 11 as unpatentable under 35 U.S.C.
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`§ 103(a) over Khazan,Sirer, and Ben-Natan;
`
`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`FURTHER ORDEREDthat Petitioner’s Motion for Joinder with
`
`IPR2015-01979 is granted;
`
`FURTHER ORDEREDthat the grounds on whichtrial in IPR2015-
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`01979 was instituted are unchanged and noother groundsare includedin the
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`joined proceeding;
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`FURTHER ORDEREDthat the Scheduling Order entered in
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`IPR2015-01979 (Paper 9) and schedule changes agreed-to by the parties in
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`IPR2015-01979 (pursuant to the Scheduling Order) shall govern the
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`schedule of the joined proceeding;
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`FURTHER ORDEREDthat, throughoutthe joined proceeding,all
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`filings in IPR2015-01979 will be consolidated and nofiling by Petitioner
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`Symantec alone will be allowed withoutprior authorization by the Board;
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`FURTHER ORDEREDthat a copyof this Decision will be entered
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`into the record of IPR2015-01979;
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`FURTHER ORDEREDthat IPR2016-00919 is terminated under
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`37 C.F.R. § 42.72 andall further filings in the joined proceedingare to be
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`made in IPR2015-01979; and
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`FURTHER ORDEREDthat the case caption in IPR2015-01979shall
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`be changedto reflect joinder with this proceeding in accordance with the
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`attached example.
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`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`PETITIONER:
`
`Nathaniel A. Hamstra (Lead Counsel)
`nathanhamstra@quinnemanuel.com
`
`PETITIONERin PAN IPR:
`
`Orion Armon (Lead Counsel)
`Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser(@cooley.com
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Lee (Back Up Counsel)
`Shannon Hedvat (Back Up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`mkim@finjan.com
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: September8, 2016
`
`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PALO ALTO NETWORKS,INC.,
`Petitioner,
`
`V.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2015-01979!
`Patent 8,141,154 B2
`
`' Case IPR2016-00919 has been joined with this proceeding.
`
`