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,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01174
`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. 8
` Entered: October 4, 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 IPR2016-01174
`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)
`
`
`
`
`
`
`
`
`
`
`IPR2016-01174
`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 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 1–6 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; 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 IPR2015-01892 (“Symantec 1892 IPR”); Symantec Corp.
`
`
`
`2
`
`
`
`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 in the PAN IPR. Pet. 1; Paper 6, 1–2. Blue Coat also has filed
`
`one additional petition challenging certain claims of the ’494 patent. Blue
`
`Coat Systems, Inc. v. Finjan, Inc., Case IPR2016-01443 (Paper 2).
`
`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 Morton Swimmer et 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 May 13, 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, 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 Swimmer; we later instituted inter
`
`partes review of the same claims on the same ground in the Blue Coat
`
`890 IPR, and then joined Blue Coat as 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) (Paper 8).
`
`
`
`
`
`3
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`
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`IPR2016-01174
`Patent 8,677,494 B2
`
`
`III.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as those on which we instituted 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 grounds that 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 which institution was not granted.” Id. at 5.
`
`For the same reasons set forth in our institution decision in the PAN
`
`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, 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 grounds in
`
`this case.
`
`
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinder in this proceeding were filed on
`
`June 10, 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 PAN IPR,
`
`i.e., May 13, 2016. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); Mot. 3.
`
`
`
`4
`
`
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`IPR2016-01174
`Patent 8,677,494 B2
`
`
`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
`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 grounds of unpatentability
`
`on which we instituted review in the PAN IPR. See Mot. 1–6; Pet. 5, 19–35;
`
`PAN Dec. 34. Blue Coat also relies on the same prior art 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 was instituted in the
`
`PAN IPR. Compare Pet. 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.
`
`If joinder is granted, Blue Coat “anticipates participating in the
`
`proceeding in 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
`
`
`
`5
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`
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`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.” Id. at 7. Blue Coat also states
`
`that, “if the proceedings are joined and absent termination of PAN as a party,
`
`it is anticipated that no expert witnesses beyond those presented by PAN and
`
`Patent Owner will present testimony.” Id. at 6.
`
`Because the Petition copies the grounds instituted 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 IPR trial schedule negatively, 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 PAN 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 IPR2016-01174
`
`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 ORDERED that the Motion for Joinder with
`
`IPR2016-00159 is granted, and Blue Coat Systems, Inc. is joined as a
`
`petitioner in IPR2016-00159;
`
`FURTHER ORDERED that IPR2016-01174 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in
`
`IPR2016-00159;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`
`trial in IPR2016-00159 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`
`Order in place for IPR2016-00159 (Paper 9), as modified by a joint
`
`stipulation of PAN and Patent Owner in that case (Paper 14), remains
`
`unchanged, subject to any further stipulations agreed to by the Parties;
`
`FURTHER ORDERED that 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 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
`
`PAN, 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 PAN 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 PAN
`
`
`
`7
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`
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`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 ORDERED that PAN and Blue Coat collectively shall
`
`designate attorneys to present a consolidated argument at the oral hearing, if
`
`requested and scheduled;
`
`FURTHER ORDERED that the case caption in IPR2016-00159 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 IPR2016-00159.
`
`
`
`8
`
`
`
`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
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`
`9
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
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