Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: June 20, 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 IPR2016-00479
`Patent 6,965,968 B1
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. BACKGROUND
`Blue Coat Systems, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–38
`of Patent No. US 6,965,968 B1 to Touboul (Ex. 1001, “the ’968 patent”). Pet. 8.
`
`
`
`1
`
`
`571-272-7822
`
`Paper 10
`Entered: June 20, 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 IPR2016-00479
`Patent 6,965,968 B1
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. BACKGROUND
`Blue Coat Systems, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”)
`pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–38
`of Patent No. US 6,965,968 B1 to Touboul (Ex. 1001, “the ’968 patent”). Pet. 8.
`
`
`
`1
`
`
`
`Case IPR2016-00479
`Patent 6,965,968 B1
`
`Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”).
`Concurrently with the Petition, Petitioner filed a Motion for Joinder. Paper
`4 (“Joinder Motion.”). The Joinder Motion seeks to join this proceeding with Palo
`Alto Networks, Inc. v. Finjan, Inc., Case IPR2016-00150 (“’150 IPR”). Joinder
`Motion 1. Petitioner states that the Petition here “in fact is practically a copy” of
`the ’150 IPR petition with respect to the proposed grounds of unpatentability. Id.
`In particular, Petitioner states that
`The Petition does not present any new ground of
`unpatentability. As mentioned above, the Petition presents only the
`grounds raised in Palo Alto Networks’ petition, and is based on the
`same prior art analysis and expert testimony submitted by Palo Alto
`Networks. The petitions do not differ in any substantive way.
`Id. at 5. Patent Owner opposes the Joinder Motion in its Preliminary Response.
`Prelim. Resp. 12–19.
`At the time Petitioner filed its Petition and Motion for Joinder, the Board
`had not yet decided whether to institute an inter partes review of the ʼ968 patent in
`the ʼ150 IPR. On May 15, 2016, however, we entered a Decision in the ʼ150 IPR
`denying the Petition as to all challenges. ʼ150 IPR, Paper 11 (“Institution
`Decision”). We determined that, applying the standard set forth in 35 U.S.C.
`§ 314(a), the petitioner in that proceeding, Palo Alto Networks, Inc., had failed to
`demonstrate a reasonable likelihood that it would prevail in showing the
`unpatentability of at least one challenged claim of the ʼ968 patent. Id. at 33. Palo
`Alto Networks, Inc. did not file a request for rehearing in the ʼ150 IPR.
`Patent Owner asserts that the Petition should be dismissed because it is
`“unquestionably” time-barred under the provisions of 35 U.S.C. § 315(b) and
`37 C.F.R. § 42.101(b). Prelim. Resp. 11. Patent Owner also contends that the
`Petition should be denied for substantially the same reasons as the petition in the
`2
`
`
`
`
`
`Case IPR2016-00479
`Patent 6,965,968 B1
`
`ʼ150 IPR. See id. at 33–60; cf. ’150 IPR, Paper 7, 26–56. For the reasons that
`follow, we determine that the Joinder Motion should be dismissed as moot and the
`Petition for inter partes review should be denied.
`
`II. DISMISSAL OF MOTION FOR JOINDER
`Because we denied the petition in IPR2016-00150, and we did not institute
`inter partes review in that case, Petitioner’s Joinder Motion is dismissed as moot.
`35 U.S.C. § 315(c).1
`
`III. DENIAL OF INTER PARTES REVIEW
`A. Time Bar Under 35 U.S.C. § 315(b)
`
`Petitioner acknowledges that a complaint alleging infringement of the
`ʼ968 patent was served on Petitioner more than a year before the filing date of the
`Petition. Pet. 9. Under 35 U.S.C. § 315(b), that is a bar to the institution of inter
`partes review unless Petitioner’s request for joinder is granted. See id.
`(“[H]owever, a motion to joinder has been filed to join the inter partes review
`requested in the ’150 petition not later than 1 month after institution in accordance
`with 37 U.S.C. § 315(c).”). Because we dismiss the Joinder Motion (see supra
`Section II), we conclude that the Petition should be denied as time-barred under
`§ 315(b).
`B. Denial on the Same Grounds as the ʼ150 IPR
`Petitioner states that it relies on the same references and expert testimony as
`the petition denied in the ʼ150 IPR. See Joinder Motion 4 (“[The Petition] also
`relies on the same prior art analysis and expert testimony submitted by Palo Alto
`Networks. Indeed, the Petition is virtually identical with respect to the grounds
`
`
`1 Patent Owner filed its Preliminary Response in IPR2016-00479 before we issued
`our Institution Decision denying institution of inter partes review in IPR2016-
`00150.
`
`
`
`3
`
`
`
`Case IPR2016-00479
`Patent 6,965,968 B1
`
`raised in Palo Alto Networks’ petition, and does not include any grounds not raised
`in Palo Alto Networks’ petition.”); supra Section I (quoting Joinder Motion 5).
`Thus, Petitioner challenges claims 1–38 of the ʼ968 patent on the same grounds
`(Pet. 8) as those asserted in the ʼ150 IPR, namely,
`Ground
`References and Document Challenged Claims
`35 U.S.C. § 103(a) Coss and Zuk
`1–3, 5–8, 12–17, 20,
`21, 23–27, 29, and 32–
`36
`35 U.S.C. § 103(a) Coss, Zuk, and Check Point 9–11
`35 U.S.C. § 103(a) Coss, Zuk, and Ke
`4, 18, 19, and 28
`35 U.S.C. § 103(a) Coss, Zuk, and Ganesan
`22, 30, 31, 37, and 38
`’150 IPR, Paper 11, 8; see ’150 IPR, Paper 2, 5, 8. In view of our determination
`that the Petition is time-barred under 35 U.S.C. § 315(b), however, we do not need
`to decide the separate grounds for denial urged by Patent Owner. See Prelim Resp.
`19–60.
`
`IV. ORDER
`
`It is, therefore,
`ORDERED that the Motion for Joinder is dismissed as moot; and
`FURTHER ORDERED that the Petition is denied as to all challenged claims
`as untimely filed, and no trial is instituted.
`
`
`
`
`
`4
`
`
`
`Case IPR2016-00479
`Patent 6,965,968 B1
`
`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
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
`5
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