UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MICROSOFT CORP.,
`Petitioner
`
`v.
`
`PROVEN NETWORKS, LLC,
`Patent Owner
`
`Case No. IPR2021-00888
`U.S. Patent No. 8,165,024
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`WEST\293960884.4
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`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`MICROSOFT CORP.,
`Petitioner
`
`v.
`
`PROVEN NETWORKS, LLC,
`Patent Owner
`
`Case No. IPR2021-00888
`U.S. Patent No. 8,165,024
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`WEST\293960884.4
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`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Microsoft Corp.
`
`(“Petitioner”) moves for joinder with the Inter Partes Review of U.S. Patent No.
`
`8,165,024 (“the ’024 Patent”), Palo Alto Networks, Inc. v. Proven Networks, LLC,
`
`IPR2021-00595 (“the Palo Alto Networks IPR”), for which the petition for Inter
`
`Partes Review was filed on March 4, 2021, and is currently pending. IPR2021-
`
`00595, paper 2. Petitioner requests that action on this motion be held in abeyance
`
`until, and only if, the Palo Alto Networks IPR is instituted.1 This motion is timely
`
`because it is filed before institution of the Palo Alto Networks IPR, i.e., “no later
`
`than one month after the institution date” of the Palo Alto Networks IPR. 37 C.F.R.
`
`§ 42.122(b); Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity,
`
`LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that
`
`§ 42.122(b) is “[t]he only timing requirement for a motion for joinder”). Petitioner
`
`understands that the petitioner in the Palo Alto Networks IPR (“the Palo Alto
`
`Networks Petitioner”) does not oppose Petitioner’s requests for joinder.
`
`1 Should the Board deny institution of the Palo Alto Networks IPR, this Motion
`
`should be considered moot and Petitioner respectfully requests that the Board
`
`consider this petition independently of the Palo Alto Networks IPR.
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`-1-
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`
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`Petitioner requests institution of this Petition for Inter Partes Review. This
`
`Petition is substantively identical to the original Palo Alto Networks IPR petition in
`
`all material respects, with the exception that the challenges in this Petition identify
`
`and address certain constructions promulgated by a district court after the filing of
`
`Palo Alto Networks IPR petition, without relying on any additional references. The
`
`primary changes are in the Introduction to identify the correct Petitioner, in
`
`mandatory notices under 37 C.F.R. § 42.8(b), and in identifying and addressing
`
`claim construction rulings in In re Proven Networks Patent Litigation, Case No.
`
`6:20-mc-02959-ADA (W.D. Tex.) (not involving Microsoft), which were issued
`
`after filing of the Palo Alto Networks IPR Petition. The Petition here and the Palo
`
`Alto Networks IPR petition challenge the same claims of the ’024 patent on the same
`
`grounds relying on the same prior art and evidence, including a declaration identical
`
`in substance from the same expert.2
`
` Thus, the Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C.
`
`§ 315(c) permits Petitioner’s joinder to the Palo Alto Networks IPR.
`
`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Palo Alto Networks IPR and coordinate all filings with the Palo Alto Networks
`
`2 The declaration has been updated only to reflect retention by Petitioner and is
`
`otherwise identical to the declaration submitted in the Palo Alto Networks IPR.
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`-2-
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`
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`Petitioner in the Palo Alto Networks IPR. The Palo Alto Networks Petitioner will
`
`maintain the lead role in the proceedings so long as it is a party to the proceedings
`
`and is not estopped under § 315(e)(1) , and Petitioner here will assume an understudy
`
`role. Petitioner will only assume the lead role in the proceedings if the Palo Alto
`
`Networks Petitioner is no longer a party to the proceedings or unable to advance
`
`arguments for one or more claims, or grounds, for example, because of § 315(e)(1).
`
`Petitioner agrees to consolidated filings for all substantive papers in the proceeding.
`
`The Palo Alto Networks Petitioner and Petitioner will be jointly responsible for the
`
`consolidated filings. Absent a Board order precluding the Palo Alto Networks
`
`Petitioner from making arguments that would otherwise be available to Petitioner,
`
`Petitioner will not advance any arguments separate from those advanced by the Palo
`
`Alto Networks Petitioner in the consolidated filings. These limitations will avoid
`
`lengthy and duplicative briefing. Also, Petitioner will not seek additional
`
`depositions or deposition time, and will coordinate deposition questioning and
`
`hearing presentations with the Palo Alto Networks Petitioner. Petitioner agrees to
`
`the foregoing conditions even in the event that other IPRs filed by other, third-party
`
`petitioners are joined with the Palo Alto Networks IPR.
`
`Joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the Palo Alto
`
`Networks IPR for all interested parties. Further, the Patent Owner has asserted the
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`
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`’024 patent in district court against Petitioner. Joinder will estop Petitioner from
`
`asserting in district court those issues resolved in a final decision from the Palo Alto
`
`Networks IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2). Finally, joinder would not complicate or delay the Palo Alto Networks
`
`IPR and would not adversely affect any schedule set in that proceeding. In sum,
`
`joinder would promote efficient adjudication in multiple forums. On the other hand,
`
`if instituted, maintaining the Petitioner’s IPR proceeding separate from that of the
`
`Palo Alto Networks IPR would entail needless duplication of effort.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
`
`adequately protected in the Palo Alto Networks IPR proceedings, particularly if the
`
`Palo Alto Networks Petitioner settles with the Patent Owner. Petitioner should be
`
`allowed to join in a proceeding affecting a patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`Proven Networks, LLC (the “Patent Owner”) is the owner of the ’024 patent.
`
`The Patent Owner asserted the ’024 patent against Petitioner in Proven Networks,
`
`LLC v. Microsoft Corporation, 6-21-cv-00022 (W.D. Tex. Jan. 11, 2021). Patent
`
`Owner has also asserted the ’024 patent in Proven Networks, LLC v. Dell
`-4-
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`
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`Technologies, Inc., No. 1:20-cv-710-ADA (W.D. Tex.); Proven Networks, LLC v.
`
`F5 Networks, Inc., 5-20-cv-02521 (N.D. Cal.); Proven Networks, LLC v. Arista
`
`Networks, 6:20-cv-00281 (W.D. Tex.); Proven Networks, LLC v. Hewlett Packard
`
`Enterprise Co., 6:20-cv-00632 (W.D. Tex.); Proven Networks, LLC v. Cisco
`
`Systems, Inc., 2-20-cv-00074 (E.D. Tex.); Proven Networks, LLC v. Palo Alto
`
`Networks, Inc., 2-20-cv-00389 (E.D. Tex.); Proven Networks, LLC v. Broadcom
`
`Inc., 6-21-cv-00003 (W.D. Tex.); Proven Networks LLC v. Barricuda Networks,
`
`Inc., 3:21-cv-02185 (N.D. Cal.); and Proven Networks LLC v. Juniper Networks,
`
`Inc., 6-21-cv-00305 (W.D. Tex.). The ’024 patent is also the subject of SonicWall
`
`Inc. v. Proven Networks, LLC, 6:20-cv-00977-ADA (W.D. Tex.), in which
`
`SonicWall Inc. is seeking declaratory judgments of noninfringement and invalidity.3
`
`On March 4, 2021, Palo Alto Networks filed its IPR petition, IPR2021-00595,
`
`against the ’024 patent. Petitioner here timely moves for joinder with the Palo Alto
`
`Networks IPR.
`
`3 Many of the listed cases have been consolidated for pre-trial in the Western District
`
`of Texas as 6:20-mc-02959-ADA. Petitioner Microsoft’s case, however, has not
`
`been consolidated in 6:20-mc-02959-ADA.
`
`-5-
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`III.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
`
`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
`
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
`
`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the 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.
`
`Dell, IPR2013-00385, Paper 19, at 4.
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`-6-
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`
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`B.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
`
`are at issue in the Palo Alto Networks IPR. For simplicity and efficiency, Petitioner
`
`has substantially copied the substance of Palo Alto Networks’ petition and
`
`accompanying declaration. Petitioner does not seek to introduce grounds or claims
`
`not in the Palo Alto Networks IPR and seeks only to join the proceeding as instituted.
`
`Petitioner retained the same expert, who has submitted an identical declaration as in
`
`the Palo Alto Networks IPR. The Patent Owner should not require any discovery
`
`beyond that which it may need in the Palo Alto Networks IPR—nor should the Board
`
`permit any. The Petition presents no new substantive issues relative to the Palo Alto
`
`Networks IPR and does not seek to broaden the scope of the Palo Alto Networks
`
`IPR.
`
`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Palo Alto Networks IPR;
`
`2. Submit “consolidated” filings with the Palo Alto Networks Petitioner,
`
`as set forth above in the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
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`-7-
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`5. Assume a second-chair role as long as the Palo Alto Networks
`
`Petitioner remains in the proceeding.4
`
`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents substantially identical arguments and supporting evidence
`
`as the Palo Alto Networks IPR. Joinder will simplify briefing and discovery. Given
`
`that the Palo Alto Networks IPR and the Petition address the same prior art and
`
`grounds for rejection of the same claims, joining these proceedings allows for joint
`
`submissions and discovery, further streamlining the proceedings. This should
`
`promote efficiency and conserve the Board’s and the parties’ resources. Further,
`
`joinder will estop Petitioner from asserting in district court those issues resolved in
`
`a final written decision in the Palo Alto Networks IPR, thus narrowing the issues in
`
`the district court actions. See 35 U.S.C. § 315(e)(2).
`
`4 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`WEST\293960884.4
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`-8-
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`
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`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)).
`
`Here, because Petitioner seeks institution on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Palo Alto Networks IPR,
`
`institution is warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Palo
`
`Alto Networks IPR is appropriate under 35 U.S.C. § 315(c). No new grounds of
`
`unpatentability are asserted. As explained above, joinder would not adversely
`
`impact the trial schedule, briefing, or discovery in the Palo Alto Networks IPR, and
`
`the remaining equities compel joinder.
`
`Petitioner is filing this Petition and joinder motion to ensure that the trial is
`
`completed in the event that the Palo Alto Networks Petitioner reaches settlement
`
`with Patent Owner.
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`-9-
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`
`
`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
`
`parties against whom the ’024 patent has been asserted in a federal district court
`
`action, may not be adequately protected by the Palo Alto Networks Petitioner in the
`
`Palo Alto Networks IPR proceedings. For example, Petitioner has an interest that
`
`the Palo Alto Networks IPR reach a final determination to facilitate a timely and
`
`cost-effective end to the controversy between Petitioner and the Patent Owner.
`
`Petitioner should be allowed to join in a proceeding affecting a patent asserted
`
`against it.
`
`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
`
`a final determination, serves the parties’ and Board’s interests.
`
`IV. GENERAL PLASTICS IS INAPPLICABLE
`Petitioner respectfully submits application of the General Plastic analysis is
`
`inapplicable here. In General Plastic, the Board set forth a series of factors that may
`
`be analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`Here, both Microsoft and Palo Alto Networks submitted separate, independent
`
`petitions. In the current motion, Microsoft merely seeks to join Palo Alto Networks’
`
`petition and does not present any new grounds. As such, Microsoft respectfully
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`WEST\293960884.4
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`-10-
`
`
`
`submits that General Plastic does not apply in this circumstance because Microsoft
`
`would be taking an understudy role and the Board’s finite resources would not be
`
`impacted. Moreover, a joinder petition in these circumstances is not the type of
`
`serial petition to which General Plastic applies, as there is no strategic advantage to
`
`be gained by filing this additional petition, and there are no concerns of “road
`
`mapping” the Patent Owner’s strategy particularly where the Patent Owner
`
`Preliminary Response has not yet been filed, as is the case here.
`
`In the event the Board does analyze the General Plastic factors, those factors
`
`heavily weigh in favor of instituting the present IPR. General Plastic Indus. Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, slip op. at 16 (PTAB Sept. 6,
`
`2017) (Paper 19) (precedential as to § II.B.4.i).
`
`The first factor is whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent. Microsoft has not previously filed a
`
`petition against the ’024 Patent. Microsoft is concurrently filing two inter partes
`
`review petitions directed to the ’024 patent but will provide a ranking document in
`
`the event the PTAB decides not to institute review of both petitions, such that the
`
`PTAB will only expend resources on the higher-ranked petition. Accordingly, this
`
`factor weighs in favor of institution.
`
`The second factor is whether at the time of filing the first petition the petitioner
`
`knew or should have known of the prior art asserted in the second petition. This
`
`WEST\293960884.4
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`-11-
`
`
`
`factor is neutral, if not inapplicable, in the General Plastic analysis. Here, Palo Alto
`
`Networks’ petition and Microsoft’s Petition share the same prior art because
`
`Microsoft’s Petition is a “copycat” of Palo Alto Networks’ petition. Because
`
`Microsoft is merely seeking to join in an understudy role, the factor is neutral, at
`
`best, in determining whether to institute.
`
`The third factor is whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary response to the first
`
`petition or received the Board’s decision on whether to institute review in the first
`
`petition. Patent owner has not yet responded to the Palo Alto Networks petition, and
`
`the Board has not decided whether to institute review on that IPR. Further, because
`
`the present Petition is essentially a copy of the prior Palo Alto Networks Petition and
`
`submitted with a motion for joinder stating that Microsoft will serve an understudy
`
`role, the Petition is not an attempt to harass the Patent Owner or otherwise engage
`
`in serial,
`
`tactical filings.
`
` Thus,
`
`this factor weighs against denial of
`
`joinder/institution.
`
`The fourth factor is the length of time elapsed between the time the petitioner
`
`learned of the prior art asserted in the second petition and filing of the second
`
`petition, and the fifth factor is whether the petitioner provides adequate explanation
`
`for the time elapsed between the filings of multiple petitions directed to the same
`
`claims of the same patent. In the context of a joinder motion where Microsoft will
`
`WEST\293960884.4
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`-12-
`
`
`
`be taking an understudy role, these factors are inapplicable. In any event, Microsoft
`
`filed its Petition less than two months after Palo Alto Networks filed its petition, and
`
`before Patent Owner has provided its preliminary response.
`
`The sixth factor is the finite resources of the Board. Allowing Microsoft’s
`
`joinder motion where it will serve in an understudy role will not impact the Board’s
`
`resources beyond those resources the Board dedicates to the instant joinder motion.
`
`The seventh factor is the requirement under 35 U.S.C. § 316(a)(11) to issue a
`
`final determination not later than 1 year after the date on which the Director notices
`
`institution of review. As noted above, joining Microsoft should not impact the
`
`schedule. Accordingly, this factor weighs in favor of institution.
`
`An eighth factor identified by the Board in Shenzhen is the extent to which
`
`the petitioner and any prior petitioner(s) were similarly situated defendants or
`
`otherwise realized a similar-in-time hazard regarding the challenged patent.
`
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp., IPR2018-00898,
`
`Paper 9 at 7, 13-14 (PTAB Oct. 1, 2018) (noting “the purpose of proposed Factor 8
`
`is to discourage tactical filing of petitions over time by parties that faced the same
`
`threat at the same time” such that earlier petitions are filed as “test case(s)” to gain
`
`“tactical advantage”). Because Microsoft’s Petition does not introduce any new
`
`grounds of unpatentability and will effectively merge into a single proceeding with
`
`Palo Alto Networks’ IPR, no such tactical advantage is gained here.
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`-13-
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`
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`Thus, none of the General Plastic factors weighs against institution and
`
`joinder in this situation.
`
`V.
`
`CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Palo Alto
`
`Networks IPR. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 8,165,024 and joinder with Palo Alto Networks, Inc. v. Proven
`
`Networks, LLC, IPR2021-00595.
`
`Dated: May 14, 2021
`
`Respectfully submitted,
`
`/ James M. Heintz/
`James M. Heintz, Reg. No. 41,828
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`WEST\293960884.4
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`-14-
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`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned hereby
`
`certifies that a copy of the foregoing Motion for Joinder was provided to Patent
`
`Owner by emailing a copy of same (by agreement) to the following attorneys of
`
`record for the Patent Owner:
`
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`bledahl@raklaw.com
`bwang@raklaw.com
`RUSS AUGUST & KABAT
`
`In addition, a copy of this Motion for Joinder and supporting material is being
`
`electronically served in its entirety on counsel for Petitioner in related Case No.
`
`IPR2021-00595.
`
`Jtuminar-PTAB@sternekessler.com
`Mspecht-PTAB@sternekessler.com
`Dblock-PTAB@sternekessler.com
`Tthurheimer-PTAB@sternekessler.com
`PTAB@sternekellser.com
`Sterne, Kessler, Goldstein & Fox, P.L.L.C.
`
`Dated: May 14, 2021
`
`Respectfully submitted,
`
`
`By:/ James M. Heintz /
`James M. Heintz (Reg. No. 41,828)
`Email: jim.heintz@dlapiper.com
`11911 Freedom Dr., Suite 300
`Reston VA 20190
`Phone: 703.773.4148
`Fax: 703.773.5000
`Counsel for Petitioner Microsoft Corp.
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`WEST\293960884.4
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