Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Entered: September8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORP.,
`- Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-01071
`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)
`
`
`Tel: 571-272-7822
`
`Paper 11
`Entered: September8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORP.,
`- Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-01071
`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)
`
`
`
`IPR2016-01071
`Patent No. 8,141,154 B2
`
`I.
`
`INTRODUCTION
`
`Symantec Corp. (“Petitioner” or “Symantec”) filed a Petition (Paper
`
`1, “Pet.”) requesting an inter partes review of claims 1-8, 10, and'11 (“the
`
`challenged claims”) of U.S. Patent No. 8,141,154 B2 (Ex. 1001, “the 7154
`
`patent”), and concurrently filed a Motion for Joinder (Paper3, ‘““Mot.’’). The
`
`Motion for Joinder seeks to join this proceeding with Palo Alto Networks,
`
`Inc. v. Finjan, Inc., Case IPR2016-00151 (“the PAN IPR”). Mot. 1. Patent
`
`Ownerfiled a waiver of the Preliminary Response, and does not oppose the
`
`Motion for Joinder. Paper 10. For the reasons described below, weinstitute
`
`an inter partes review of claims 1—8, 10, and 11 of the ’154 patent, and grant
`
`Petitioner’s Motion for Joinder.
`
`Il.
`
`INSTITUTION OF JNTER PARTES REVIEW
`
`On April 20, 2016, weinstituted a trial in IPR2016-00151 for claims
`
`1-8, 10, and 11 of the ’154 patent based on one ground of obviousness over
`
`Ross.! PAN IPR,slip. op. at 17~18 (PTAB April 20, 2016) (Paper 10).
`
`Uponreview ofthe Petition here, we note that the Petition is substantially
`
`identical to the Petition in the PAN IPR. The Petition in this proceeding
`
`asserts the same groundsas those on whichweinstituted review in the PAN
`
`IPR. Pet. 1-2; Mot. 2. Petitioner further relies on the same declaration of
`
`Dr. Aviel Rubin, and same arguments and supporting evidence presented in
`
`the PAN IPR. Pet. 14-37; Mot. 4.
`
`In view ofthe identity of the challenge in the instant Petition and in
`
`the petition in the PAN IPR,andin light of Patent Owner’s waiverofits
`
`' Patent Application Pub. No. US 2007/0113282 (“Ross”).
`
`
`
`IPR2016-01071
`Patent No. 8,141,154 B2
`
`Preliminary Response, weinstitute inter partes review in this proceeding on
`
`the same grounds,and for the same reasons, regarding claims 1—8, 10, and
`
`11, on which weinstituted inter partes review in the PAN IPR.
`
`If. GRANT OF MOTION FOR JOINDER
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—If the Directorinstitutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person whoproperly files a petition under
`section 311 that the Director, after receiving a preliminary
`response undersection 313 or the expiration of the time forfiling
`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
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`" grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have onthetrial schedule for the existing
`
`review. See Frequently Asked Question HS, https://www.uspto.gov/patents-
`
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`
`asked-questions.
`
`Petitioner asserts it has grounds for standing because, in accordance
`
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`
`with the Petition and notlater than one month after institution of the PAN
`
`IPR. Mot. 1. Patent Owner does not oppose Petitioner’s motion for joinder.
`
`Paper 8. Wefind that the Motionis timely.
`
`Wealso find that Petitioner has met its burden of showing that joinder
`
`is appropriate. The Petition here is substantially identical to the Petition in
`
`
`
`IPR2016-01071
`Patent No. 8,141,154 B2
`
`the PAN IPR. Mot. 3-4. The evidencealsois identical, including the
`
`reliance on the same declaration of Dr. Aviel Rubin. Jd.
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Mot. 5. No changesin the schedule are anticipated or necessary,
`
`and the limited participation,if at all, of Petitioner will not impact the
`
`timeline of the ongoingtrial. We limit Petitioner’s participation in the
`
`joined proceeding suchthat Petitioner shall require prior authorization from
`
`the Board before filing any further paper. This arrangement promotes the
`
`just and efficient administration of the ongoingtrial and the interests of
`
`Petitioner and Patent Owner.
`
`IV. ORDER
`
`In view of the foregoing,it is
`
`ORDEREDthat IPR2016-01071 is hereby instituted as to claims 1-8,
`
`10, and 11 as unpatentable under 35 U.S.C. § 103(a) over Ross;
`
`FURTHER ORDEREDthat Petitioner’s Motion for Joinder with
`
`IPR2016-00151 is granted;
`
`FURTHER ORDEREDthat the ground on whichtrial in IPR2016-
`
`00151 was instituted is unchanged and noother groundsare includedin the
`
`joined proceeding;
`
`FURTHER ORDEREDthat the Scheduling Order entered in
`
`IPR2016-00151 (Paper 11) and schedule changes agreed-to by the parties in
`
`IPR2016-00151 (pursuant to the Scheduling Order) shall govern the
`
`schedule of the joined proceeding;
`
`FURTHER ORDEREDthat, throughout the joined proceeding,all
`
`filings in IPR2016-00151 will be consolidated and nofiling by Petitioner
`
`Symantec alone will be allowed without prior authorization by the Board;
`
`4
`
`
`
`IPR2016-01071
`Patent No. 8,141,154 B2
`
`FURTHER ORDEREDthata copyof this Decision will be entered
`into the record of IPR2016-00151; of
`FURTHER ORDERED that IPR2016-01071 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`madein IPR2016-00151; and
`FURTHER ORDEREDthatthe case caption in IPR2016-001 51 shall
`be changedto reflect joinder with this proceeding in accordance‘with the
`attached example.
`
`
`
`IPR2016-01071
`Patent No. 8,141,154 B2
`
`PETITIONER:
`
`Nathaniel A. Hamstra (Lead Counsel)
`nathanhamstra@quinnemanuel.com
`
`PETITIONERin PAN IPR:
`
`Matthew I. Kreeger (Lead Counsel)
`Jonathan Bockman (Back-up Counsel)
`Shouvik Biswas (Back-up Counsel)
`mkreeger@mofo.com
`JBockman@mofo.com
`SBiswas@mofo.com
`FinjanPANMofoteam@mofo.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
`
`Paper11
`Entered: September8, 2016
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PALO ALTO NETWORKS,INC.,
`Petitioner,
`
`Vv.
`
`FINJAN, INC.,
`Patent Owner.
`
`Case IPR2016-00151!
`Patent 8,141,154 B2
`
`' Case IPR2016-01071 has been joined with this proceeding.
`
`
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