Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 9
`Entered: April 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SPLUNK INC.,
`Petitioner,
`v.
`SABLE NETWORKS, INC.,
`Patent Owner.
`____________
`
`IPR2022-00228
`Patent 8,243,593 B2
`____________
`
`
`Before STACEY G. WHITE, GARTH D. BAER, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`

`

`IPR2022-00228
`Patent 8,243,593 B2
`
`
`
`
`
`On November 24, 2021, Splunk Inc. (“Splunk” or “Petitioner”)1 filed
`a Petition seeking institution of inter partes review of claims 1–44 of U.S.
`Patent No. 8,243,593 B2 (Ex. 1001, “the ’593 patent”). Paper 2 (“Pet.”).
`Sable Networks, Inc.2 (“Patent Owner”) elected not to file a Preliminary
`Response.
`Concurrently with the filing of the Petition, Petitioner filed a Motion
`for Joinder, seeking to join itself as a petitioner in Cloudflare, Inc. v. Sable
`Networks, Inc., IPR2021-00909 (“the 909 IPR”). Paper 3 (“Joinder Motion”
`or “Mot.”). Patent Owner responded to the Joinder Motion (Paper 6 (“Mot.
`Resp.”)), and Petitioner filed a reply (Paper 7 (“Mot. Reply”)).
`Upon considering the information presented in each of these papers,
`for reasons discussed below, we institute trial in this inter partes review, we
`grant Petitioner’s Joinder Motion, and we join Petitioner as a party to the
`909 IPR.
`
`I. BACKGROUND
`A. Related Matters
`The parties indicate that the ’593 patent has been asserted in several
`district court lawsuits, including Sable Networks, Inc. v. Splunk Inc., 5:21-
`cv-00040 (E.D. Tex.) and Sable Networks, Inc. v. Cloudflare, Inc., 6:21-cv-
`00261 (W.D. Tex.). Pet. 77; Paper 5, 1–3. The parties also identify the 909
`IPR as a related proceeding. Pet. 77; Paper 5, 1.
`
`
`1 Petitioner also identifies Critical Start Inc. as a real party-in-interest.
`Pet. 76.
`2 Patent Owner also identifies Sable IP, LLC as a real party in interest.
`Paper 5 (PO Mandatory Notices), 1.
`
`2
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`IPR2022-00228
`Patent 8,243,593 B2
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`B. The Petition’s Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 1–2):
`
`
`
`Claim(s) Challenged
`
`35
`U.S.C.
`§
`1, 2, 4–7, 17, 18, 25–27, 37, 38 103(a)3 Yung4
`
`Reference(s)/Basis
`
`9–13, 19–24, 29–33, 39–44
`
`103(a) Yung, Copeland5
`
`3
`
`103(a) Yung, Four-Steps Whitepaper6
`
`8, 14–16, 28, 34–36
`
`103(a) Yung, Copeland, Ye7
`
`In support of its contentions, Petitioner relies on the testimony of Dr. Kevin
`Jeffay. Ex. 1003.
`
`C. Summary of the 909 IPR
`In the 909 IPR, Cloudflare, Inc. (“Cloudflare”) challenges the
`patentability of the same claims (i.e., claims 1–44 of the ’593 patent) on the
`same grounds as those identified above. See IPR2021-00909, Paper 1 at 1;
`supra § I.B (table of Petition’s asserted grounds). After considering that
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of § 103.
`4 US 7,664,048 B1, filed Nov. 24, 2003, issued Feb. 16, 2010 (Ex. 1005).
`5 US 7,185,368 B2, filed Nov. 30, 2001, issued Feb. 27, 2007 (Ex. 1007).
`6 “Four Steps to Application Performance Across the Network with
`Packeteer’s PacketShaper®,” retrieved from https://web.archive.org/web/
`20030317051910/http:/packeteer.com/PDF_files/4steps.pdf (Ex. 1006).
`7 US 7,295,516 B1, filed Nov. 13, 2001, issued Nov. 13, 2007 (Ex. 1008).
`
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`IPR2022-00228
`Patent 8,243,593 B2
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`petition and Patent Owner’s preliminary response in the 909 IPR, we
`determined that Cloudflare had demonstrated a reasonable likelihood of
`showing that claims 1, 2, 4–7, and 25–27 would have been obvious over
`Yung and that claims 9–13, 19–24, 29–33, and 39–44 would have been
`obvious over Yung and Copeland. See IPR2021-00909, Paper 16 at 24–48
`(PTAB Nov. 19, 2021) (“909 Institution Decision”). In the 909 Institution
`Decision, we also queried whether dependent claims 17, 18, 37, and 38
`should be included in the Yung-Copeland ground (rather than the Yung
`ground) (see id. at 3, 38–39), and we provided our initial assessment of other
`disputed issues (see id. at 48–57). Ultimately, in the 909 IPR, we instituted
`trial on all grounds of unpatentability specified in that petition. Id. at 57.
`
`D. Statutory Disclaimer
`On March 11, 2022, in the 909 IPR, Patent Owner filed an updated
`mandatory notice stating that it had filed and recorded “a statutory
`disclaimer disclaiming claims 1, 2, 4–8, 14–16, 25–28, 34–36 from
`challenged U.S. Patent No. 8,243,593 . . . under 35 U.S.C. § 253(a) and 37
`C.F.R. § 1.321(a).” IPR2021-00909, Paper 29; see also IPR2021-00909,
`Ex. 2006 (statutory disclaimer of the ’593 patent).
`Based on our review of Exhibit 2006 in the 909 IPR and the Office’s
`public records, we are persuaded that claims 1, 2, 4–8, 14–16, 25–28, 34–36
`have been disclaimed under 35 U.S.C. § 253(a) in compliance with
`37 C.F.R. § 1.321(a). Consequently, for purposes of determining whether to
`institute review, we consider only claims 3, 9–13, 17–24, 29–33, and 37–44.
`See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based
`on disclaimed claims.”).
`
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`IPR2022-00228
`Patent 8,243,593 B2
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`II. DISCUSSION
`A. Institution of Trial
`Petitioner here (Splunk) challenges all 44 claims of the ’593 patent.
`Pet. 1–2. Petitioner represents that the present Petition is substantively
`identical to the petition in the 909 IPR, challenges the same claims based on
`the same grounds, and relies on the same expert declaration. Pet. 1 n.1;
`Mot. 4–5. We have considered the relevant petitions and we agree with
`Petitioner’s representation that this Petition is substantially identical to the
`petition in the 909 IPR. Compare Pet., with IPR2021-00909, Paper 1.
`Patent Owner did not file a Preliminary Response in this proceeding.
`At this stage of the proceeding, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in its challenge to
`claims 9–13, 19–24, 29–33, and 39–44 as unpatentable over Yung and
`Copeland for the reasons set forth in the 909 Institution Decision.8
`Accordingly, we institute inter partes review.
`
`B. Motion for Joinder
`Based on 35 U.S.C. § 315(c) and authority delegated to us by the
`Director, we have discretion to join a petitioner as a party to a previously
`instituted inter partes review. Section 315(c) provides, in relevant part, that
`“[i]f 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.”
`
`
`8 We incorporate the entire 909 Institution Decision into this Decision.
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`IPR2022-00228
`Patent 8,243,593 B2
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`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. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4
`(PTAB Apr. 24, 2013).
`We find that Petitioner timely filed its motion for joinder, in
`accordance with 37 C.F.R. § 42.122(b). We further determine that Petitioner
`has met its burden of showing that joinder is appropriate, at least because the
`instant Petition: (1) is substantively identical to the petition in the 909 IPR;
`(2) contains the same grounds based on the same evidence; and (3) relies on
`the same declaration of Dr. Kevin Jeffay. See Mot. 4–5; see also Ex. 1003
`(declaration). The Petition does not present any new grounds of
`unpatentability, and Petitioner does not request any change to the schedule
`in the 909 IPR (see Mot. 5–6).9 In addition, Petitioner represents that
`Cloudflare does not oppose the motion. Mot. 2; Mot. Reply 3 n.1.
`Moreover, we are persuaded that, with the appropriate conditions,
`Petitioner’s joinder will have minimal impact on the 909 IPR. Petitioner’s
`
`
`9 The Joinder Motion includes two references to joining this proceeding
`with the 909 IPR (see Mot. 1, 5–6); however, Section 315(c) authorizes
`joinder of a party to another proceeding, not a joinder of proceedings. See
`Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1334 (Fed.
`Cir. 2020) (“No part of § 315(c) provides the Director or the Board with the
`authority to put two proceedings together.”). We determine that these
`references are harmless errors, as the Joinder Motion demonstrates that
`Petitioner seeks to be joined as a petitioner in the 909 IPR. See, e.g., Mot. 3
`(requesting joinder under 35 U.S.C. § 315(c)).
`
`6
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`IPR2022-00228
`Patent 8,243,593 B2
`
`
`Joinder Motion states that Petitioner “anticipates participating in the
`proceeding in a limited capacity” and will “coordinate with Cloudflare [the
`original petitioner] to consolidate any filings” and other activities. Mot. 1–2;
`see also id. at 5–6. Patent Owner contends that this requested role is too
`broad and too amorphous (Mot. Resp. 2–6), and Patent Owner instead
`proposes that joinder be granted only if Petitioner does not have “any right
`to participate in the joined proceeding, including filing papers, engaging in
`discovery, or participating in depositions and oral argument, jointly or
`otherwise, without first obtaining authorization from the Board.” Mot.
`Resp. 2. In its Reply, Petitioner does not contest these conditions. See Mot.
`Reply. Rather, Petitioner responds that it “did not carve out any exceptions
`from its role as an understudy to [the 909 IPR]” and expressly “defer[s] to
`the Board’s preference on this issue and [agrees to] participate in the
`capacity prescribed by the Board.” Mot. Reply 1–2; see also id. at 4 (“If the
`Board prefers, Splunk will also obtain authorization from the Board prior to
`separate substantive filing (if any) . . . .”)).
`We are persuaded that limiting Petitioner to an understudy role
`promotes the just and efficient administration of the ongoing trial in the 909
`IPR, and protects the interests of Cloudflare (as the original petitioner in
`IPR2021-00909) and of Patent Owner. Accordingly, we limit Petitioner’s
`participation in the 909 IPR, such that: (1) Cloudflare alone is responsible
`for all petitioner filings in the 909 IPR unless and until Cloudflare is
`terminated from the 909 IPR; (2) Petitioner must obtain Board authorization
`prior to filing any paper or exhibit or taking any action on its own until
`Cloudflare is terminated from the 909 IPR; and (3) Petitioner is bound by all
`filings by Cloudflare and all discovery agreements between Patent Owner
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`IPR2022-00228
`Patent 8,243,593 B2
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`and Cloudflare in the 909 IPR, except for (a) filings regarding termination or
`settlement and (b) filings where Petitioner receives permission from the
`Board to file an independent paper.
`Finally, although Patent Owner contends that Petitioner should be
`required to withdraw its exhibits from this proceeding (see Mot. Resp. 2, 6
`(citing 37 C.F.R. § 42.6(d)), we do not agree. The exhibits previously filed
`in IPR2022-00228 were not previously of record this proceeding, and we
`discern no justification for their removal from it.
`In sum, we grant Petitioner’s Motion for Joinder and join Petitioner as
`an understudy petitioner in IPR2021-00909. Petitioner’s activities in the 909
`IPR are subject to the conditions identified above.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`is hereby instituted in IPR2022-00228;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2021-00909 is granted, and Splunk is joined as a petitioner in IPR2021-
`00909 pursuant to 35 U.S.C. § 315(c);
`FURTHER ORDERED that all future filings are to be made only in
`IPR2021-00909;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in IPR2021-00909 remain unchanged, and the
`Scheduling Order currently in place for IPR2021-00909 (Paper 17) shall
`continue to govern the 909 IPR;
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`IPR2022-00228
`Patent 8,243,593 B2
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`FURTHER ORDERED that, unless and until Cloudflare is terminated
`from IPR2021-00909, Splunk is bound by all filings by Cloudflare (except
`for filings regarding termination or settlement and filings where Petitioner
`receives permission from the Board to file an independent paper);
`FURTHER ORDERED that Splunk must obtain prior Board
`authorization to file any paper or exhibit or take any action on its own in
`IPR2021-00909;
`FURTHER ORDERED that the case caption in IPR2021-00909 for all
`further submissions shall be changed to add Splunk as a named petitioner,
`and to indicate by footnote the joinder of Petitioner Splunk to that
`proceeding, as indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00909.
`
`
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`IPR2022-00228
`Patent 8,243,593 B2
`
`FOR PETITIONER:
`Alex S. Yap
`Mehran Arjomand
`Rose S. Lee
`MORRISON & FOERSTER LLP
`ayap@mofo.com
`marjomand@mofo.com
`roselee@mofo.com
`
`FOR PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`Patrick Maloney
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CLOUDFLARE, INC. and
`SPLUNK INC.,
`Petitioner,
`
`v.
`
`SABLE NETWORKS, INC,
`Patent Owner.
`____________
`
`IPR2021-009091
`Patent 8,243,593 B2
`
`
`
`1 Splunk, Inc., which filed a petition in IPR2022-00228, has been joined as
`a petitioner in this proceeding.
`
`