Trials@uspto.gov
`571-272-7822
`
`Paper No. 8
`Entered: October 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLUE COAT SYSTEMS,INC.,
`Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-01174
`Patent 8,677,494 B2
`
`Before JAMES B. ARPIN, ZHENYU YANG,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. § 42.108; 37 CFR. § 42.122(b)
`
`
`571-272-7822
`
`Paper No. 8
`Entered: October 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLUE COAT SYSTEMS,INC.,
`Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-01174
`Patent 8,677,494 B2
`
`Before JAMES B. ARPIN, ZHENYU YANG,and
`CHARLESJ. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 CFR. § 42.108; 37 CFR. § 42.122(b)
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`I.
`
`INTRODUCTION
`
`Blue Coat Systems, Inc. (“Blue Coat” or “Petitioner”) filed a
`
`Petition for inter partes review of claims 1-6 and 10-15 of U.S. Patent No.
`
`8,677,494 B2 (Ex. 1001, “the ’494 patent”). Paper 2 (“Pet.”). Concurrently
`
`with its Petition, Blue Coat filed a Motion for Joinder with Palo Alto
`
`Networks, Inc. v. Finjan, Inc., Case IPR2016-00159 (“the PAN IPR”).
`
`Paper3 (“‘Mot.). Finjan, Inc. (“Patent Owner’’) filed a WaiverofIts
`
`Preliminary Response and Statement of Non-Opposition to Motion for
`
`Joinder. Paper 7 (“Waiver”).
`
`For the reasons explained below, we institute an inter partes review of
`
`claims 1-6 and 10-15 of the 494 patent and grant Blue Coat’s Motion for
`
`Joinder.
`
`II. RELATED PROCEEDINGS
`
`The Parties report that the ’494 patent has been asserted in Finjan,
`
`Inc. v. Sophos, Inc., 3:14-cv-01197 (N.D. Cal.) (filed Mar. 14, 2014);
`
`Finjan, Inc. v. Symantec Corp., 3:14-cv-02998 (N.D. Cal.) (filed June 30,
`
`2014); Finjan, Inc. v. Palo Alto Networks, Inc., 3:14-cv-04908 (N.D. Cal.)
`
`(filed Nov. 4, 2014), and Finjan, Inc. v. Blue Coat Systems, Inc.,
`
`5:15-cv-03295 (N.D. Cal.) (filed July 15, 2015). Pet. 2; Paper6, 1.
`
`Although not reported by the Parties, we understand that the °494 patent was
`
`also asserted previously in Finjan, Inc. v. Websense, Inc., 5:14-cv-01353
`
`(N.D. Cal.) (filed Mar. 24, 2014).
`
`The °494 patent has previously been challenged in Sophos, Inc. v.
`
`Finjan, Inc., Case IPR2015-01022 (“Sophos IPR”); Symantec Corp. v.
`
`Finjan, Inc., Case IPR2015-01892 (“Symantec 1892 IPR”); Symantec Corp.
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`v. Finjan, Inc., Case IPR2015-01897 (“Symantec 1897 IPR”); and Blue Coat
`
`Systems, Inc. v. Finjan, Inc., Case IPR2016-00890 (“Blue Coat 890 IPR”),
`
`as well as inthe PAN IPR. Pet. 1; Paper 6, 1-2. Blue Coat also hasfiled
`
`one additional petition challenging certain claims of the ’494 patent. Blue
`
`Coat Systems, Inc. v. Finjan, Inc., Case IPR2016-01443 (Paper2).
`In the PAN IPR, weinstituted inter partes review ofclaims1, 2,6,
`10, 11, and 15 of the ’494 patent under 35 U.S.C. § 103(a) as unpatentable
`
`over Morton Swimmeret al., Dynamic Detection and Classification of
`
`Computer Viruses Using General Behaviour Patterns, Virus Bull. Conf. 75
`
`(Sept. 1995) (“Swimmer”); and claims 3—5 and 12-14 of the °494 patent
`
`under 35 U.S.C. § 103(a) as unpatentable over the combination of Swimmer
`
`and David M.Martin,Jr. et al., Blocking Java Applets at the Firewall,
`
`Proc. 1997 Symp. on Network & Distributed Sys. Sec. (©1997) (“Martin”).
`
`See Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2016-00159,slip op.
`
`at 34 (PTAB May13, 2016) (Paper 8) (“PAN Dec.”). We denied institution
`
`of inter partes review in the Finjan IPR and the Symantec 1897 IPR.
`
`IPR2015-01022 (PTAB Sept. 24, 2015) (Paper 7); IPR2015-01897 (PTAB
`
`Feb. 26, 2016) (Paper 7). In the Symantec 1892 IPR,weinstituted inter
`
`partes review ofclaims 1, 2, 5, 6, 10, 11, 14, and 15 of the 494 patent under
`
`35 U.S.C. § 103(a) as unpatentable over Swimmer; welater instituted inter
`
`partes review of the same claims on the same groundin the Blue Coat
`
`890 IPR, and then joined Blue Coatas Petitioner in IPR2015-01892 and
`
`ordered termination of IPR2016-00890. See IPR2015-01892,slip op. at 34
`
`(PTAB Mar. 18, 2016) (Paper 9); IPR2016-00890,slip op. at 6 (PTAB
`
`Aug. 30, 2016) (Paper8).
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`lI.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as those on which weinstituted review in the PAN IPR.
`Compare Pet. 5, with PAN Dec. 34. Indeed, as Blue Coat notes, the Petition
`filed in this proceeding is “narrowlytailored to the grounds of
`
`unpatentability that are the subject of the PAN IPR, with groundsthat are
`substantively identical to the instituted grounds of the PAN IPR,including
`
`the same analysis of the prior art and expert testimony.” Mot. 1. Blue Coat
`
`furtherasserts that “[t]he petitions do not differ in any substantive way, other
`
`than the removal of grounds on whichinstitution was not granted.” Jd. at 5.
`
`For the same reasonsset forth in our institution decision in the PAN
`| IPR, we determine that the information presented in Blue Coat’s Petition
`showsa reasonable likelihood that Blue Coat would prevail in showing that
`
`claims 1, 2, 6, 10, 11, and 15 of the ’494 patent are unpatentable over
`
`Swimmer, and that claims 3—5 and 12-14 of the ’494 patent are unpatentable
`
`over the combination of Swimmer and Martin. See PAN Dec. 17-30.
`
`Accordingly, we institute an inter partes review on those same groundsin
`
`this case.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinder in this proceeding werefiled on
`
`June 10, 2016, and the Petition was accorded that samefiling date. See
`
`Paper 4. Thus, Blue Coat’s Motion for Joinder is timely because joinder was
`
`requested no later than one month after the institution date of the PAN IPR,
`ie., May 13, 2016. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); Mot. 3.
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`Thestatutory provision governing joinderin inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads:
`
`If the 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 undersection 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review undersection 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new groundsof unpatentability asserted in the petition;
`
`(3) explain what impact (if any) joinder would have onthetrial schedule for
`
`the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See Kyocera Corp. v. Softview LLC,
`
`Case IPR2013-00004,slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`The Petition in this case asserts the same groundsof unpatentability
`
`on which weinstituted review in the PAN IPR. See Mot. 1-6; Pet. 5, 19-35;
`
`PAN Dec. 34. Blue Coatalso relies on the samepriorart analysis and expert
`
`testimony submitted by Palo Alto Networks, Inc. (“PAN”’) in the PAN IPR.
`
`See Mot. 1, 4-6. Indeed, the Petition is nearly identical to the petition filed
`
`by PAN with respect to the grounds on which review wasinstituted in the
`
`PAN IPR. ComparePet. 22-35, with Palo Alto Networks, Inc. v. Finjan,
`
`Inc., Case IPR2016-00159, Paper 2 at 40-54. Thus,this inter partes review
`
`does not present any ground or matter not already at issue in the PAN IPR.
`
`Ifjoinder is granted, Blue Coat “anticipates participating in the
`
`proceeding in a limited capacity,” absent termination of PAN asa party.
`
`Mot. 1, 6. In particular, Blue Coat agreesthat, to the extent that it does
`
`participate in the joined proceeding,it “will coordinate with PAN to
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`consolidate filings, manage questioning at depositions, manage presentations
`
`at the hearing, ensure that briefing and discovery occur within the time
`
`normally allotted, and avoid redundancies.” Jd. at 7. Blue Coat alsostates
`
`that, “if the proceedings are joined and absent termination of PAN asa party,
`
`it is anticipated that no expert witnesses beyond those presented by PAN and
`
`Patent Ownerwill present testimony.” Jd. at 6.
`
`Becausethe Petition copies the groundsinstituted in the PAN IPR,
`
`and because Blue Coatanticipates participating in the proceeding ina
`
`limited capacity absent termination of PAN asa party, Blue Coat submits
`
`that joinder will not impact the PAN IPRtrial schedule negatively, and
`
`“Blue Coat does not believe that any extension of the schedule will be
`
`required by virtue ofjoinder of Blue Coat as a petitioner to the proceeding.”
`
`Id.
`
`Having considered Blue Coat’s Motion for Joinder, as well as Patent
`
`Owner’s statement of non-opposition thereto (Waiver 1), we agree with Blue
`
`Coatthat joinder with the PAN IPR is appropriate under the particular facts
`
`and circumstancesofthis case. Accordingly, we grant Blue Coat’s Motion
`
`for Joinder.
`
`V. ORDER
`
`Accordingly,it is
`
`ORDEREDthat an inter partes review is instituted in IPR2016-01174
`
`as to:
`
`claims 1, 2, 6, 10, 11, and 15 of U.S. Patent No. 8,677,494 B2 under
`
`35 U.S.C. § 103(a) as unpatentable over Swimmer; and
`
`claims 3—5 and 12-14 of U.S. Patent No. 8,677,494 B2 under
`
`35 U.S.C. § 103(a) as unpatentable over Swimmer and Martin;
`
`6
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`FURTHER ORDEREDthat the Motion for Joinder with
`
`IPR2016-00159 is granted, and Blue Coat Systems,Inc. is joined as a
`
`petitioner in IPR2016-00159;
`
`FURTHER ORDEREDthat IPR2016-01174 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in
`
`IPR2016-00159;
`
`FURTHER ORDEREDthat, subsequentto joinder, the grounds for
`
`trial in IPR2016-00159 remain unchanged;
`
`FURTHER ORDEREDthat, subsequentto joinder, the Scheduling
`
`Orderin place for IPR2016-00159 (Paper 9), as modified by a joint
`
`stipulation of PAN and Patent Ownerin that case (Paper 14), remains
`
`unchanged, subject to any further stipulations agreed to by the Parties;
`
`FURTHER ORDEREDthat in IPR2016-00159, PAN and Blue Coat
`
`will file each paper, except for a motion that does not involve the other
`
`party, as a single, consolidated filing, subject to the word counts or page
`
`limits set forth in 37 C.F.R. § 42.24, and shall identify each suchfiling as a
`
`consolidated filing;
`
`FURTHER ORDEREDthat, for any consolidated filing, if Blue Coat
`
`wishesto file an additional paper to address points of disagreement with
`
`PAN,Blue Coat must request authorization from the Boardto file a motion
`
`for additional words or pages, and no additional paper maybefiled without
`
`authorization;
`
`FURTHER ORDEREDthat PAN and Blue Coatshall collectively
`
`designate attorneys to conduct the cross-examination of any witness
`
`produced by Patent Ownerandthe redirect of any witness produced by PAN
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`and Blue Coat, within the timeframesset forth in 37 C.F.R. § 42.53(c) or
`
`agreed to by the Parties;
`
`FURTHER ORDEREDthat PAN and Blue Coat collectively shall
`designate attorneys to present a consolidated argumentat the oral hearing,if
`requested and scheduled;
`
`FURTHER ORDEREDthatthe case caption in IPR2016-00159 shall
`
`be changedto reflect joinder of Blue Coatas a petitioner in accordance with
`
`the attached example; and
`
`FURTHER ORDEREDthat a copy of this Decision shall be entered
`
`into the record of IPR2016-00159.
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`For PETITIONER BLUE COAT SYSTEMS, INC.:
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsegr.com
`asbrown@wsgr.com
`
`FOR PETITIONER PALO ALTO NETWORKS, INC.:
`
`Orion Armon
`Jennifer Volk
`Max Colice
`Brian Eutermoser
`COOLEY LLP
`oarmon@cooley.com
`jvolkfortier@cooley.com
`mcolice@cooley.com
`beutermoser@cooley.com
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMERLEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PALO ALTO NETWORKS,INC. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-00159!
`Patent 8,677,494 B2
`
`1 Case IPR2016-01174 has been joined with the instant 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
