Trials@uspto.gov
`§71-272-7822
`
`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)
`
`
`§71-272-7822
`
`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”).
`
`Paper 3 (“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, weinstitute an inter partes review of
`
`claims 1-6 and 10-15 of the ’494 patent and grant Blue Coat’s Motion for
`
`Joinder.
`
`Il.
`
`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; Paper 6, 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 °494patent 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.
`
`
`
`TIPR2016-01174
`Patent 8,677,494 B2
`y. Finjan, Inc., Case 1PR2015-01897 (“Symantec 1897 IPR”); and Blue Coat
`Systems, Inc. v. Finjan, Inc., Case IPR2016-00890 (“Blue Coat 890 IPR”),
`as well as in the PAN IPR. Pet. 1; Paper 6, 1-2. Blue Coat also has filed
`one additional petitionchallenging certain claims of the *494 patent. Blue
`Coat Systems, Inc. v. Finjan, Inc., Case IPR2016-01443 (Paper 2).
`In the PAN IPR,weinstituted interpartes review of claims1, 2, 6,
`10, 11, and 15 of.the 2494 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 ofthe *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 1PR2016-00159, slip op.
`at 34 (PTAB May 13, 2016) (Paper 8) (“PAN Dec.”). Wedeniedinstitution
`ofinterpartes 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 ofthe ’494 patent under
`35 U.S.C. § 103(a) as unpatentable over Swimmer; welater instituted inter
`partes review ofthe 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
`
`Ill.
`
`INSTITUTION OF JNTER 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 “narrowly tailored 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
`
`further asserts 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 samereasonsset forth in ourinstitution decision in the PAN
`
`IPR, we determinethat the information presented in Blue Coat’s Petition
`
`showsa reasonablelikelihood that Blue Coat would prevail in showingthat
`
`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, weinstitute an inter partes review on those same groundsin
`
`this case.
`
`TV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinderin this proceeding were filed on
`
`June 10, 2016, and the Petition was accorded that samefiling date. See
`
`Paper 4. Thus, Blue Coat’s Motion for Joinderis timely because joinder was
`
`requested nolater than one monthafterthe institution date of the PAN IPR,
`
`i.e., 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 interr partes review
`proceedings1is.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 under section 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-interT partes
`-
`_ reviewunder. section 314.,.
`.
`A motion for joinder should (1) set forth reasons why joinderis appropriate;
`(2) identify any new grounds ofunpatentability 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
`maybesimplified. 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
`|
`. onwhich weinstituted review in the PAN IPR. See Mot. 1-4;Pet. 5, 19-35;
`PAN Dec.34. Blue Coatalsorelies on the same priorart 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 interpartes review
`does notpresent any groundormatter not already at issue in the PAN IPR.
`Ifjoinderis granted, Blue Coat “anticipates participating in the
`proceedingin a limited capacity,” absent termination of PAN as a party.
`Mot. 1, 6. In particular, Blue Coat agrees that, to the extent that it does
`
`~
`
`participate in the joined proceeding,it “will coordinate with PAN to
`a“
`
`
`
`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 Coatalso states
`
`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 Coat anticipates participating in the proceeding in a
`
`limited capacity absent termination of PAN as a 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
`
`Coat that joinder with the PAN IPR is appropriate underthe particular facts
`
`and circumstancesof this case. Accordingly, we grant Blue Coat’s Motion
`
`for Joinder.
`
`V. ORDER
`
`Accordingly,it is
`ORDEREDthat an interpartes review is instituted in IPR2016-01 174
`
`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 Swimmerand Martin;
`
`6
`
`
`
`IPR2016-01174
`Patent 8,677,494 B2
`
`FURTHER ORDEREDthatthe 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,andall 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
`
`consolidatedfiling;
`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 Board to file a motion
`
`for additional words or pages, and no additional paper may befiled 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 timeframes set 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 ORDEREDthat the case caption in IPR2016-00159 shall
`
`be changedto reflect joinder of Blue Coat as a petitioner in accordance with
`
`the attached example; and
`
`FURTHER ORDEREDthata copy ofthis 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@wsgr.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.
`
`
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