`Entered: June 8, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00493
`Patent No. 7,418,731
`____________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`
`
`
`GIANNETTI, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2016-00493
`Patent 7,418,731
`
`
`I. BACKGROUND
`Blue Coat Systems, Inc. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1–22 of U.S.
`Patent No. 7,418,731 (“the ’731 patent”). Paper 3 (“Pet.”). Finjan, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 8 (“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 IPR2015-
`02000 (“’2000 IPR”). Joinder Motion 1. Petitioner states that the Petition
`here is “practically a copy” of the ’2000 IPR petition, “including the same
`analysis of the prior art and expert testimony.” Id. Patent Owner opposes
`the Joinder Motion in its Preliminary Response. Prelim. Resp. 8–10.
`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
`ʼ731 patent in the ʼ2000 IPR. On March 23, 2016, however, we entered a
`Decision in the ʼ2000 IPR denying the Petition as to all challenges.
`ʼ2000 IPR, Paper 7 (“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 with respect to at least one challenged claim of the
`ʼ731 patent. Id. at 13. Palo Alto Networks, Inc. filed a request for
`rehearing, which has been denied. ʼ2000 IPR, Papers 8 and 9.
`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. 1. Patent Owner also contends
`that the Petition should be denied for the same reasons as the petition in the
`
`
`
`2
`
`
`
`Case IPR2016-00493
`Patent 7,418,731
`
`ʼ2000 IPR. Id. at 2. Patent Owner also contends the joinder motion should
`be denied because of the Board’s denial of institution in the ʼ2000 IPR. Id.
`For the reasons that follow, we determine that the Joinder Motion should be
`dismissed as moot and the Petition for inter partes review be denied.
`
`
`II. DISMISSAL OF MOTION FOR JOINDER
`Because the petition in IPR2016-02000 was denied and inter partes
`review was not instituted, Petitioner’s Joinder Motion is dismissed as moot.
`35 U.S.C. § 315(c).
`
`
`III. DENIAL OF INTER PARTES REVIEW
`A. Time Bar Under 35 U.S.C. § 315(b)
`
`Petitioner admits that a complaint alleging infringement of the
`ʼ731 patent was served on Petitioner more than a year before the filing date
`of the Petition. Pet. 4. 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., final sentence. Because we conclude supra that the joinder
`motion is dismissed, we conclude also that the Petition should be denied as
`time-barred under § 315(b).
`B. Denial on the Same Grounds as the ʼ2000 IPR
`Petitioner states that it relies on the same references and expert
`testimony as the petition denied in the ʼ2000 IPR. See supra. Thus,
`Petitioner challenges claims 1–22 of the ʼ731 patent on the same grounds
`(Pet. 5) as those asserted in the ʼ2000 IPR, namely, obviousness under 35
`U.S.C. 103(a) over Touboul in combination with various other references.
`Pet. 5.
`
`
`
`3
`
`
`
`Case IPR2016-00493
`Patent 7,418,731
`
`
`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 this separate ground for
`denial urged by Patent Owner.
`
`IV. ORDER
`It is, therefore,
`ORDERED that the Motion for Joinder is dismissed as moot;
`FURTHER ORDERED that the Petition is denied as to all challenged
`claims and no trial is instituted.
`
`
`
`
`
`4
`
`
`
`Case IPR2016-00493
`Patent 7,418,731
`
`PETITIONER:
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`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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