Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 30
` Entered: August 30, 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 IPR2016-00890
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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)
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 30
` Entered: August 30, 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 IPR2016-00890
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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)
`
`
`
`
`
`
`
`
`IPR2016-00890
`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, 2, 5, 6, 10, 11, 14, and 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
`Symantec Corp. v. Finjan, Inc., Case IPR2015-01892 (“the Symantec 1892
`IPR”). Paper 3 (“Mot.). Finjan, Inc. (“Patent Owner”) filed a Waiver of Its
`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, 2, 5, 6, 10, 11, 14, and 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. 1; 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 ’494 patent has previously been challenged in Sophos, Inc. v.
`Finjan, Inc., Case IPR2015-01022 (“Sophos IPR”); Symantec Corp. v.
`Finjan, Inc., Case IPR2015-01897 (“Symantec 1897 IPR”); and Palo Alto
`
`
`
`2
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`Networks, Inc. v. Finjan, Inc., Case IPR2016-00159 (“PAN IPR”), as well as
`in the Symantec 1892 IPR. Pet. 1; Paper 6, 1–2. Blue Coat has also filed
`two additional petitions challenging certain claims of the ’494 patent. Blue
`Coat Systems, Inc. v. Finjan, Inc., Case IPR2016-01174 (Paper 2); Blue Coat
`Systems, Inc. v. Finjan, Inc., Case IPR2016-01443 (Paper 2).
`In the Symantec 1892 IPR, we instituted inter partes review of claims
`1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent under 35 U.S.C. § 103(a) as
`unpatentable over Morton Swimmer et al., Dynamic Detection and
`Classification of Computer Viruses Using General Behaviour Patterns,
`Virus Bull. Conf. 75 (Sept. 1995) (“Swimmer”). See Symantec Corp. v.
`Finjan, Inc., Case IPR2015-01892, slip op. at 34 (PTAB Mar. 18, 2016)
`(Paper 9) (“Symantec 1892 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 PAN IPR, we instituted inter partes review of claims 1, 2,
`6, 10, 11, and 15 of the ’494 patent under 35 U.S.C. § 103(a) as unpatentable
`over 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). See IPR2016-
`00159, slip op. at 34 (PTAB May 13, 2016) (Paper 8).
`
`
`III.
`INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`unpatentability as that on which we instituted review in the Symantec 1892
`IPR. Compare Pet. 4, with Symantec 1982 Dec. 34. Indeed, as Blue Coat
`
`
`
`3
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`notes, the Petition filed in this proceeding is “narrowly tailored to the ground
`of unpatentability that is the subject of the Symantec [1892] IPR, with a
`single ground of unpatentability that is substantially identical to the
`instituted ground of the Symantec [1892] 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 which institution was not granted.” Id. at 6.
`For the same reasons set forth in our institution decision in the
`Symantec 1892 IPR, we determine that the information presented in Blue
`Coat’s Petition shows a reasonable likelihood that Blue Coat would prevail
`in showing that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are
`unpatentable over Swimmer. See Symantec 1892 Dec. 12–23. Accordingly,
`we institute an inter partes review on that same ground in this case.
`
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were filed on
`April 14, 2016, and the Petition was accorded that same filing 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 Symantec
`1892 IPR, i.e., March 18, 2016. See 35 U.S.C. § 315(c); 37 C.F.R.
`§ 42.122(b); Mot. 4.
`The statutory provision governing joinder in 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 who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`
`
`
`4
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability 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
`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 ground of unpatentability on
`which we instituted review in the Symantec 1892 IPR. See Mot. 1–5; Pet.
`3–4, 11–23; Symantec 1892 Dec. 34. Blue Coat also relies on the same prior
`art analysis and expert testimony submitted by Symantec Corp.
`(“Symantec”) in the Symantec 1892 IPR. See Mot. 1, 3, 4, 6. Indeed, the
`Petition is nearly identical to the petition filed by Symantec with respect to
`the grounds on which review was instituted in the Symantec 1892 IPR.
`Compare Pet. 11–23, with Symantec Corp. v. Finjan, Inc., Case IPR2015-
`01892, Paper 1 at 12–25. Thus, this inter partes review does not present any
`ground or matter not already at issue in the Symantec 1892 IPR.
`If joinder is granted, Blue Coat “anticipates participating in the
`proceeding in a limited capacity,” absent termination of Symantec 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 Symantec to
`consolidate any filings, manage questioning at depositions, manage
`presentations at the hearing, ensure that briefing and discovery occur within
`the time normally allotted, and avoid redundancies.” Id. at 1–2. Blue Coat
`also states that, “if the proceedings are joined and absent termination of
`
`
`
`5
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`Symantec as a party, it is anticipated that no expert witnesses beyond those
`presented by Symantec and Patent Owner will present testimony.” Id. at 6–
`7.
`
`Because the Petition copies the grounds instituted in the Symantec
`1892 IPR, and because Blue Coat anticipates participating in the proceeding
`in a limited capacity absent termination of Symantec as a party, Blue Coat
`submits that joinder will not negatively impact the Symantec 1892 IPR trial
`schedule, and “Blue Coat does not believe that any extension of the schedule
`will be required by virtue of joinder 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 Symantec 1892 IPR is appropriate under the
`particular facts and circumstances of this case. Accordingly, we grant Blue
`Coat’s Motion for Joinder.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that an inter partes review is instituted in IPR2016-00890
`as to claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2
`under 35 U.S.C. § 103(a) as unpatentable over Swimmer;
`FURTHER ORDERED that the Motion for Joinder with
`IPR2015-01892 is granted, and Blue Coat Systems, Inc. is joined as a
`petitioner in IPR2015-01892;
`FURTHER ORDERED that IPR2016-00890 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in
`IPR2015-01892;
`
`
`
`6
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2015-01892 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2015-01892 (Paper 10), as modified by a joint
`stipulation of Symantec and Patent Owner in that case (Paper 25), remains
`unchanged, subject to any further stipulations agreed to by the Parties;
`FURTHER ORDERED that in IPR2015-01892, Symantec 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 such filing as a
`consolidated filing;
`FURTHER ORDERED that, for any consolidated filing, if Blue Coat
`wishes to file an additional paper to address points of disagreement with
`Symantec, Blue Coat must request authorization from the Board to file a
`motion for additional words or pages, and no additional paper may be filed
`without authorization;
`FURTHER ORDERED that Symantec and Blue Coat shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by Symantec and Blue Coat, within the timeframes set forth in 37 C.F.R.
`§ 42.53(c) or agreed to by the Parties;
`FURTHER ORDERED that Symantec and Blue Coat shall
`collectively designate attorneys to present a consolidated argument at the
`oral hearing, if requested and scheduled;
`
`
`
`7
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`
`FURTHER ORDERED that the case caption in IPR2015-01892 shall
`be changed to reflect joinder of Blue Coat as a petitioner in accordance with
`the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2015-01892.
`
`
`
`8
`
`
`
`IPR2016-00890
`Patent 8,677,494 B2
`
`For PETITIONER:
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shadvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`
`9
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORP., and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-018921
`Patent 8,677,494 B2
`____________
`
`
`
`
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
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