`571-272-7822
`
`
`
`
`
`
`Paper 12
`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 IPR2016-00955
`Case IPR2016-00956
`Patent 8,225,408 B21
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, 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)
`
`
`
`
`1 We consolidate the proceedings under 35 U.S.C. § 314(d) and join with
`IPR2015-02001 and IPR2016-00157, which have also been consolidated.
`
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`
`
`On April 27, 2016, Blue Coat Systems, Inc. (“Petitioner”) filed (1) a
`
`Petition (IPR2016-00955, Paper 2 (“955 Petition” or “Pet. 955”)) to institute
`
`an inter partes review of claims 1, 9, 22, 23, 29, and 35 of U.S. Patent
`
`No. 8,225,408 B2 (“the ’408 patent”); and (2) a Petition (IPR2016-00956,
`
`Paper 2 (“956 Petition” or “Pet. 956”)) to institute an inter partes review of
`
`claims 3–7, 12–16, and 18–21 of the ’408 patent. Concurrent with filing its
`
`Petition in IPR2015-00955, Petitioner filed a Motion for Joinder of
`
`IPR2016-00955 (IPR2016-00955, Paper 3, “955 Motion” or “Mot. 955”)
`
`with Palo Alto Networks, Inc. v. Finjan, Inc., Cases IPR2015-02001 and
`
`IPR2016-00157 (“the consolidated PAN IPRs”), which is a consolidated
`
`proceeding instituted on March 29, 2016. On August 1, 2016, Petitioner
`
`filed a Motion for Joinder of IPR2016-00956 (IPR2016-00956, Paper 12,
`
`“956 Motion” or “Mot. 956”) with the consolidated PAN IPRs. The 955
`
`Motion is timely but the 956 Motion is untimely. 37 C.F.R. § 42.122(b).
`
`Patent Owner filed waivers of its Preliminary Responses in both IPR2016-
`
`00955 (Paper 10) and IPR2016-00956 (Paper 11).
`
`We institute inter partes review in both proceedings, consolidate the
`
`proceedings, and join with the consolidated PAN IPRs. We excuse the
`
`untimeliness of the 956 Motion.
`
`
`
`I. INSTITUTION OF INTER PARTES REVIEW
`
`The 955 Petition asserts the same grounds as those asserted in the
`
`petition filed in IPR2015-02001. See Pet. 955, 4. Upon review of the 955
`
`
`
`2
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`Petition, we note that it substantially duplicates, almost word-for-word, the
`
`petition filed in IPR2015-02001. See Mot. 955, 1 (“. . . narrowly tailored to
`
`the grounds of unpatentability that are the subject of IPR2015-02001, . . .
`
`including the same analysis of the prior art and expert testimony”).
`
`Similarly, the 956 Petition asserts the same grounds as those asserted in the
`
`petition filed in IPR2016-00157 in substantially duplicative fashion. See
`
`Pet. 956, 4, Mot. 956, 1. The cited art is (Exhibits 1003–1005 are the same
`
`in both proceedings):
`
`Chandnani
`Kolawa
`Walls
`Huang
`
`US 7,636,945 B2
`US 5,860,011
`US 7,284,274 B1
`US 6,968,539 B1
`
`Dec. 22, 2009
`Jan. 12, 1999
`Oct. 16, 2007
`Nov. 22, 2005
`
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1062 of
`IPR2016-00956
`
`
`
`Petitioner’s challenges of independent claims 1, 9, 22, 23, 29, and 35 in
`
`IPR2016-00955, and challenges of dependent claims 3–7, 12–16, and 18–21
`
`in IPR2016-00956, as obvious under 35 U.S.C. § 103(a), are summarized in
`
`the following table. Pet. 955, 4; Pet. 956, 4.
`
`
`
`Claims Challenged
`References
`1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35
`Chandnani and Kolawa
`1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35
`Chandnani, Kolawa, and Walls
`6, 7, 20, and 21
`Chandnani, Kolawa, and Huang
`Chandnani, Kolawa, Walls, and Huang 6, 7, 20, and 21
`
`
`In view of the identity of the challenges between the instant Petitions
`
`and those considered in the consolidated PAN IPRs, and in light of Patent
`
`
`
`3
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`Owner’s waiver of its Preliminary Responses, we institute inter partes
`
`reviews in these proceedings on the same grounds instituted in the
`
`consolidated PAN IPRs, and consolidate the proceedings under 35 U.S.C.
`
`§ 315(d). In subsequent briefing (subject to the limits described below), the
`
`parties shall file consolidated briefs that collectively address the issues in
`
`both proceedings, subject to the usual page limits.
`
`
`
`II. MOTIONS 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.
`
`
`
`4
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`The 955 Motion was filed less than one month after institution of the
`
`consolidated PAN IPRs, but the 956 Motion was filed outside that time
`
`window, making the 956 Motion untimely. 37 C.F.R. § 42.122(b).
`
`Nevertheless, within the one-month window, Petitioner indicated its
`
`intention to file the 956 Motion concurrently with the 956 Petition.
`
`Pet. 956, 2 (“Petitioner has filed herewith a motion to join the Consolidated
`
`PAN IPRs”); see Mot. 956, 1 (assertion that “[t]his Motion for Joinder . . . is
`
`submitted within one month of the date on which the Consolidate PAN IPRs
`
`were instituted” suggests original intention to file with the 956 Petition).
`
`Patent Owner does not oppose joinder in either proceeding and
`
`acknowledges that Petitioner’s failure to file timely the 956 Motion “appears
`
`to be a clerical error.” IPR2016-00956, Paper 11, 1. Under the
`
`circumstances, and although Petitioner has not filed a motion to have the
`
`untimely filing accepted, we excuse the delay in filing the 956 Motion. See
`
`42.5(c)(1) (authorizing the Board to modify default times by order, subject
`
`to statutory restrictions).
`
`Petitioner shows sufficiently that joinder is appropriate. The Petitions
`
`are substantially identical and rely on the same evidence, including the same
`
`declaration testimony by Dr. Aviel D. Rubin. Ex. 1002 (both proceedings).
`
`Petitioner further shows that the trial schedule will not be affected by
`
`joinder. Mot. 955, 6–7; Mot. 956, 6–7. No changes in the schedule are
`
`anticipated or necessary, and Petitioner’s limited participation, if at all, will
`
`not impact the timeline of the ongoing trial. We limit Petitioner’s
`
`participation in the joined proceeding such that Petitioner shall require prior
`
`
`
`5
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`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.
`
`
`
`It is
`
`III. ORDER
`
`ORDERED that IPR2016-00955 and IPR2016-00956 are
`
`consolidated;
`
`FURTHER ORDERED that inter partes review is instituted with
`
`respect to the following grounds of unpatentability:
`
`
`
`(1) claims 1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35 as
`
`unpatentable under 35 U.S.C. § 103(a) over Chandnani and Kolawa;
`
`
`
`(2) claims 1, 3–5, 9, 12–16, 18, 19, 22, 23, 29, and 35 as
`
`unpatentable under 35 U.S.C. § 103(a) over Chandnani, Kolawa, and Walls;
`
`
`
`(3) claims 6, 7, 20, and 21 as unpatentable under 35 U.S.C.
`
`§ 103(a) over Chandnani, Kolawa, and Huang; and
`
`
`
`(4) claims 6, 7, 20, and 21 as unpatentable under 35 U.S.C.
`
`§ 103(a) over Chandnani, Kolawa, Walls, and Huang;
`
`FURTHER ORDERED that Petitioner’s Motions for Joinder are
`
`granted;
`
`FURTHER ORDERED that the grounds on which trial was instituted
`
`in consolidated IPR2015-02001 and IPR2016-00157 are unchanged, and no
`
`other grounds are included in the joined proceeding;
`
`
`
`6
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2015-02001 (Paper 8) and IPR2016-00157 (Paper 11) shall govern the
`
`schedule of the joined proceeding, subject to permissible stipulated schedule
`
`changes by the parties;
`
`FURTHER ORDERED that, throughout the joined proceeding, no
`
`filing by Petitioner Blue Coat Systems, Inc. alone is permitted without prior
`
`authorization by the Board;
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the record of IPR2015-02001 and IPR2016-00157;
`
`FURTHER ORDERED that IPR2016-00955 and IPR2016-00956 are
`
`terminated under 37 C.F.R. § 42.72 and all further filings in the joined
`
`prcoeeding be made in consolidated IPR2015-02001 and IPR2016-00157;
`
`and
`
`FURTHER ORDERED that the case caption in consolidated
`
`IPR2015-02001 and IPR2016-00157 be changed to reflect joinder in
`
`accordance with the attached example.
`
`
`
`
`
`
`
`7
`
`
`
`IPR2016-00955, IPR2016-00956
`Patent 8,225,408 B2
`
`
`
`PETITIONER:
`Michael T. Rosato (Lead Counsel)
`Andrew S. Brown (Back-up counsel)
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`PETITIONER in consolidated PAN IPRs:
`Matthew I. Kreeger (Lead Counsel)
`Jonathan Bockman
`FinjanPANMofoTeam@mofo.com
`
`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)
`Michael Lee (Back-up Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`Shannon Hedvat (Back-up Counsel)
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`shedvat@kramerlevin.com
`
`
`
`8
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper XX
`Entered: XX
`
`
`
`
`
`
`
`
`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 IPR2015-02001
`Case IPR2016-00157
`Patent 7,647,633 B21
`_______________
`
`
`
`1 Cases IPR2015-02001 and IPR2016-00157 are consolidated. Cases
`IPR2016-00955 and IPR2016-00956 have been consolidated and joined with
`this consolidated proceeding.