Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: June 24, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00480
`Patent 7,647,633 B2
`_______________
`
`
`Before THOMAS L. 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 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: June 24, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00480
`Patent 7,647,633 B2
`_______________
`
`
`Before THOMAS L. 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 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`I.
`
`INTRODUCTION
`
`Blue Coat Systems, Inc. (“Petitioner” or “Blue Coat”) filed a Petition
`
`(Paper 3, “Pet.”) requesting inter partes review of claims 14, 68, 13, 14,
`
`19, 28, and 34 (“the challenged claims”) of U.S. Patent No. 7,647,633 B2
`
`(Ex. 1001, “the ’633 patent”), and concurrently filed a Motion for Joinder
`
`(Paper 4, “Mot.”). The Motion for Joinder seeks joinder of this proceeding
`
`with Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2015-01974 (“the
`
`PAN IPR”). Mot. 1. Patent Owner filed a Preliminary Response (Paper 8)
`
`that includes an opposition to the Motion for Joinder. For the reasons
`
`described below, we institute an inter partes review of claims 14 and 19, and
`
`grant Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those we
`
`considered in the PAN IPR, which was instituted on March 29, 2016. See
`
`Pet. 45. The trial in the PAN IPR is directed to the grounds of
`
`unpatentability challenging claims 14 and 19 as obvious over:
`
`1) Shin1; and
`
`2) Poison Java2 and Brown.3
`
`
`1 Insik Shin, et al., Java Bytecode Modification and Applet Security
`(Technical Report, Computer Science Dept., Stanford University, 1998),
`https://web.archive.org/web/19980418130342/http://www-cs-
`students.stanford.edu/~ishin/reserach.html (Ex. 1009).
`
`2 Eva Chen, Poison Java, IEEE SPECTRUM, August 1999 at 38 (Ex. 1004).
`
`3 MARK W. BROWN, SPECIAL EDITION USING NETSCAPE 3, (Que Corp. 1996)
`(Ex. 1041).
`
`
`
`2
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`PAN IPR, slip. op. at 16 (PTAB March 29, 2016) (Paper 7) (“’1974
`
`Decision”). All other grounds in the PAN IPR were denied institution.
`
`Upon review of the Petition here, we note that it is an identical, almost
`
`word-for-word copy of the Petition in the PAN IPR. Mot. 1 (“The Petition
`
`. . . is practically a copy of Palo Alto Network’s petition with respect to the
`
`proposed grounds, including the same analysis of the prior art and expert
`
`testimony.”).
`
`
`
`Notwithstanding the fact that the petitions are practically identical,
`
`Patent Owner argues that the Petition here should be denied on the merits for
`
`two reasons. First, Patent Owner argues that Shin does not disclose
`
`“downloadable-information” and “executable code.” Prelim. Resp. 4345.
`
`Second, Patent Owner argues that neither Shin nor Poison Java discloses
`
`“the executable code at the destination.” Id. at 4547; 5356. We are not
`
`persuaded at this juncture by either argument.
`
`
`
`Claim 14 recites the following:
`
`14. A computer program product, comprising a
`computer usable medium having a computer readable
`program code therein, the computer readable program
`code adapted to be executed for computer security, the
`method comprising:
`providing a system, wherein the system comprises
`distinct software modules, and wherein the distinct
`software modules comprise an information re-
`communicator and a mobile code executor;
`receiving, at
`the
`information
`re-communicator,
`downloadable-information including executable
`code; and
`causing mobile protection code to be executed by the
`mobile code executor at a downloadable-
`information destination such that one or more
`operations of
`the executable code at
`the
`
`
`
`3
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`destination, if attempted, will be processed by the
`mobile protection code.
`
`
`
`
`
`Patent Owner argues that claim 14 requires the disclosure of
`
`“downloadable-information” as well as “executable code,” but that
`
`Petitioner has only pointed to Shin’s Java applet without identifying
`
`separately each of the “downloadable-information” and “executable code.”
`
`Prelim. Resp. 44. In other words, Patent Owner argues that Petitioner has
`
`failed to meet the burden of showing that these two claim limitations are met
`
`by a specific (and distinct) disclosure in Shin. Id. This argument is not
`
`persuasive because it ignores that Petitioner specifically identified distinct
`
`Shin components as meeting the two claim limitations. For example, we
`
`note that the Petition identifies messages received by the HTTP proxy server
`
`as meeting the recited “downloadable information.” Pet. 39 (also stating that
`
`the HTTP proxy server of Shin forwards messages between client and web
`
`server). On the other hand, the Petition points to a Java applet as
`
`“executable code.” Pet. 41 (stating that “Shin also discloses that the
`
`safeguarding code processes operations attempted by the applet (‘executable
`
`code’)”). Accordingly, the Petition here points to two different disclosures
`
`in Shin—messages between client and web server, and a Java applet—as
`
`teaching the two limitations of “downloadable information” and “executable
`
`code.” Patent Owner’s argument that the Petition conflates the two
`
`limitations is, therefore, unpersuasive.
`
`
`
`Patent Owner next argues that the executable code at the destination,
`
`according to the claim, must be the same executable code that was received
`
`at the information re-communicator. Prelim. Resp. 4546. Shin, according
`
`to Patent Owner, however, “ensures that an applet received by its HTTP
`
`
`
`4
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`proxy server is modified into a different executable entity before it can reach
`
`a client browser.” Id. at 46 (emphasis added). We are not persuaded, at this
`
`juncture, by this argument. We addressed this argument in the ’1974
`
`Decision:
`
`The claim recites the “downloadable information” received at
`the
`re-communicator as “including executable code”
`(emphasis added). The claim language does not require that
`the only content of the downloadable-information be
`executable code, nor that it include only one executable code.
`See Ex. 1001, 2:49 (“one or more received Downloadables”).
`The claim further states that one or more operations “of the
`executable code at the destination” are processed, but does
`not require “the executable code” to encompass the entirety
`or an intact version of executable code received. It also
`appears that the claim may be read broadly, but reasonably,
`to state that “one or more operations of the executable code”
`are at the destination at the time of processing. Therefore, we
`find persuasive, on the current record, Petitioner’s assertion
`that the received “downloadable-information” includes an
`applet, and that the operations “of the executable code at the
`destination” are operations in the modified applet that satisfy
`the limitation.
`
`
`
`’1974 Dec. 14. We relied on the above analysis also to find unpersuasive
`
`Patent Owner’s argument regarding the deficiencies in Poison Java, which
`
`were the same as the argument proffered with regards to Shin. ’1974
`
`Dec. 15. For the same reasons stated in the ’1974 Decision, and based on
`
`the present record, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on its challenge of unpatentability that
`
`claims 14 and 19 would have been obvious in view of Shin alone, or in view
`
`of the combination of Poison Java and Brown.
`
`
`
`5
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`
`In view of the identity of the challenge in the instant Petition and in
`
`the petition in the PAN IPR, considering the information presented in the
`
`instant Patent Owner Preliminary Response, and determining that the motion
`
`for joinder is granted (below), we institute inter partes review in this
`
`proceeding on the same grounds, regarding claims 14 and 19, on which we
`
`instituted inter partes review in the PAN IPR. We do not institute inter
`
`partes review on any other grounds.
`
`III. 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 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 who properly files 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 inter
`parties review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it 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 on the trial schedule for the existing
`
`review. See Frequently Asked Question H5,
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`
`Petitioner asserts that it was served with a complaint alleging
`
`infringement of the ’633 patent more than a year before the date of the
`
`Petition. Pet. 4; Mot. 2. Nevertheless, Petitioner asserts it has grounds for
`
`
`
`6
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`standing because, in accordance with 35 U.S.C. § 315(c), Petitioner filed a
`
`motion for joinder concurrently with the Petition and not later than one
`
`month after institution of the PAN IPR. Id.
`
`Patent Owner opposes joinder on the basis that the filings of the
`
`Petition and the motion for joinder were premature, in violation of § 315(c)
`
`and 37 C.F.R. § 42.122(b). In particular, Patent Owner argues that a request
`
`for joinder cannot be filed before the date of institution of the inter partes
`
`review for which joinder is requested. Prelim. Resp. 1213. We are not
`
`persuaded by this argument.
`
`Rule 122(b) requires that the request for joinder must be filed no later
`
`than one month after the institution date of any inter partes review for which
`
`joinder is requested. The plain language of the rule does not forbid a request
`
`for joinder that is filed before the inter partes review is instituted. Further,
`
`we are not persuaded by Patent Owner’s reliance on another panel’s decision
`
`in Linear Technology Corp. v. In-Depth Test LLC, Case IPR2015-01994
`
`(PTAB Oct. 20, 2015) (Paper 7). That decision relied on facts materially
`
`different than those before us here, i.e., at the time of decision of the request
`
`for joinder, there was no institution of the inter partes review for which
`
`joinder had been requested.
`
`We find that the Petition and the Motion for Joinder here are not
`
`untimely. Institution of inter partes review in the PAN IPR occurred on
`
`March 29, 2016. The Petition in this proceeding has been accorded a filing
`
`date of January 20, 2016 (Paper 5), and the Motion for Joinder was filed
`
`concurrently with the Petition. The January 20th date is clearly no later than
`
`one month after the institution date of March 29th. The Petition and the
`
`Motion for Joinder, therefore, satisfy the requirement of the request being
`
`
`
`7
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`filed no later than one month from our instituting a trial in IPR2015-01974.
`
`37 C.F.R. § 42.122.
`
`
`
`We also find that Petitioner has met its burden of showing that joinder
`
`is appropriate. The Petition here is identical to the Petition in the PAN IPR.
`
`Mot. 4. The evidence also is identical, including the reliance on the same
`
`declaration of Dr. Aviel Rubin. Id. Although Patent Owner argues that
`
`there is no indication that Petitioner has retained Dr. Rubin, we are
`
`persuaded that the Petition is supported by declaration evidence that, at this
`
`juncture, is proper. Prelim. Resp. 19. Patent Owner’s assertion that
`
`Petitioner “will reasonably have to rely on new declarants and/or new
`
`evidence” (Prelim. Resp. 19) should Palo Alto Networks settle, is
`
`speculative, and, therefore, unpersuasive.
`
`
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Mot. 67. No changes in the schedule are anticipated or
`
`necessary, and the limited participation, if at all, of Petitioner will not impact
`
`the timeline of the ongoing trial. Id. Patent Owner, nevertheless, argues that
`
`joining Petitioner to the ongoing trial would complicate attempts to settle.
`
`Prelim. Resp. 18. Patent Owner also argues that, because Petitioner has had
`
`a full opportunity to litigate the validity of the ’633 patent in district court,
`
`any participation by Petitioner here would be contrary to the statutory
`
`estoppel and time-bar provisions. Prelim. Resp. 18. Patent Owner urges the
`
`Board to deny joinder, given that Petitioner has obtained a jury verdict in
`
`district court that it did not prove, by clear and convincing evidence, that the
`
`challenged claims are invalid. Prelim. Resp. 1316. We are not persuaded
`
`by Patent Owner’s arguments.
`
`
`
`8
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`
`First, the assertion that joining Petitioner would complicate settlement
`
`with Palo Alto Networks is unsupported by the facts before us, and is, at
`
`best, Patent Owner’s speculative posture, which is unpersuasive. Second,
`
`although we recognize that, in enacting the one-year estoppel provision
`
`applicable to inter partes review, a concern was repeated harassment of
`
`patent holders, that concern does not inform our understanding of whether
`
`joinder is proper under the circumstances argued here. Specifically, we note
`
`that § 315(b), the statutory provision barring a Petitioner who has been sued
`
`more than one year before filing the Petition (“one-year bar”), exempts
`
`requests for joinder. Patent Owner’s argument that joinder should be denied
`
`because of the jury verdict against Petitioner does not persuade us to set
`
`aside the one-year-bar exemption, especially given the different standards of
`
`proof between invalidity in a district court trial and unpatentability in an
`
`inter partes review. We have also considered the timing of Petitioner’s
`
`joinder request, and do not find that granting it would unduly complicate
`
`matters for Patent Owner or present a significant disruption to the trial
`
`schedule.
`
`
`
`Joinder is discretionary based on the particular circumstances of each
`
`proceeding. In the instant proceeding, we agree with Petitioner that joinder
`
`is appropriate and will not unduly impact the ongoing trial. Presented with
`
`the concerns expressed by Patent Owner regarding Petitioner’s participation,
`
`we determine that, at this time, 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 promotes the
`
`just and efficient administration of the ongoing trial and the interests of
`
`Petitioner and Patent Owner.
`
`
`
`9
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`IV. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that IPR2016-00480 is hereby instituted as to claims 14
`
`and 19;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2015-01974 is granted;
`
`FURTHER ORDERED that the grounds on which trial in IPR2015-
`
`01974 was instituted are unchanged and no other grounds are included in the
`
`joined proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2015-01974 (Paper 8) and schedule changes agreed-to by the parties in
`
`IPR2015-01974 (pursuant to the Scheduling Order) shall govern the
`
`schedule of the joined proceeding;
`
`FURTHER ORDERED that, throughout the joined proceeding, all
`
`filings in IPR2015-01974 will be consolidated and no filing by Petitioner
`
`Blue Coat alone will be allowed without prior authorization by the Board;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2016-00480;
`
`FURTHER ORDERED that IPR2016-00480 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`
`made in IPR2015-01974; and
`
`FURTHER ORDERED that the case caption in IPR2015-01974 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2016-00480
`Patent No. 7,647,633 B2
`
`
`
`
`PETITIONER:
`
`Michael T. Rosato (Lead Counsel)
`Andrew S. Brown (Back-up counsel)
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`
`
`PETITIONER in 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 Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`
`
`
`11
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 9
` Entered: June 24, 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 IPR2015-019741
`Patent 7,647,633 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2016-00480 has been joined with this proceeding.
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