Trials@uspto.gov
`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)
`
`
`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
`
`3, “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 ’154
`
`patent’’), and concurrently filed a Motion for Joinder (Paper 2, “Mot.”). The
`
`Motion for Joinder seeks to join this proceeding with Palo Alto Networks,
`
`Inc. v. Finjan, Inc., Case IPR2015-01979 (“the PAN IPR”). Mot. 1. Patent
`
`Ownerfiled a waiver of the Preliminary Response, and does not opposethe
`
`Motion for Joinder. Paper 8. 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 INTER PARTES REVIEW
`
`On March 21, 2016, we instituted a trial in IPR2015-01979 on the
`
`following alleged grounds of unpatentability based on obviousness:
`
`1) Claims 1-5 over Khazan!andSirer’; and
`
`2) Claims 6-8, 10, and 11 over Khazan,Sirer, and Ben-Natan.?
`
`PAN IPR,slip. op. at 15 (PTAB March 29, 2016) (Paper 8). Upon review of
`
`the 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 which weinstituted review in the PAN IPR. Pet. 1, 4—5.
`
`Petitioner further relies on the same declaration of Dr. Aviel Rubin, and
`
`! 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
`
`the petition in the PAN IPR,andin light of Patent Owner’s waiverofits
`
`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.
`
`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
`
`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 monthafter institution of the PAN
`
`
`
`IPR2016-00919
`Patent No. 8,141,154 B2
`
`IPR. Mot. 1. Patent Ownerdoes not oppose Petitioner’s motion for joinder.
`
`Paper 8. Wefind that the Motionis timely.
`
`Wealso find that Petitioner has met its burden of showingthat joinder
`
`is appropriate. The Petition here is substantially identical to the Petition in
`the PAN IPR. Mot. 3-4. Theevidencealsois identical, including the
`
`reliance on the same declaration of Dr. Aviel Rubin. Jd.
`
`Petitioner further has shownthat the trial schedule will not be affected
`
`by joinder. Mot. 4-5. 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 such that Petitioner shall require prior authorization from
`
`the Board before filing any further paper. This arrangement promotesthe
`
`just and efficient administration of the ongoingtrial and the interests of
`
`Petitioner and Patent Owner.
`
`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
`
`Khazan and Sirer; and
`
`(2) claims 6-8, 10, and 11 as unpatentable under 35 U.S.C.
`
`§ 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-
`
`01979 was instituted are unchanged and noother groundsare includedin the
`
`joined proceeding;
`
`FURTHER ORDEREDthat the Scheduling Order entered in
`
`IPR2015-01979 (Paper 9) and schedule changes agreed-to by the parties in
`
`IPR2015-01979 (pursuant to the Scheduling Order) shall govern the
`
`schedule of the joined proceeding;
`
`FURTHER ORDEREDthat, throughoutthe joined proceeding,all
`
`filings in IPR2015-01979 will be consolidated and nofiling by Petitioner
`
`Symantec alone will be allowed withoutprior authorization by the Board;
`
`FURTHER ORDEREDthat a copyof this Decision will be entered
`
`into the record of IPR2015-01979;
`
`FURTHER ORDEREDthat IPR2016-00919 is terminated under
`
`37 C.F.R. § 42.72 andall further filings in the joined proceedingare to be
`
`made in IPR2015-01979; and
`
`FURTHER ORDEREDthat the case caption in IPR2015-01979shall
`
`be changedto reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`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
`
`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.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
