Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`
` Entered: February 26, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORP.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01897
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

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`IPR2015-01897
`Patent 8,677,494 B2
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`
`I. INTRODUCTION
`Symantec Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5,
`6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex.
`1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition
`under 35 U.S.C. § 314, which provides that an inter partes review may not
`be instituted “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a).
`For the reasons that follow and on this record, we are not persuaded
`that Petitioner demonstrates a reasonable likelihood of prevailing in showing
`the unpatentability of any of the challenged claims on the asserted grounds.
`Accordingly, we deny Petitioner’s request to institute an inter partes review.
`A. The ’494 Patent
`The ’494 patent, entitled “Malicious Mobile Code Runtime
`Monitoring System and Methods,” issued March 18, 2014, from U.S. Patent
`Application No. 13/290,708 (“the ’708 application”), filed November 7,
`2011. Ex. 1001, [21], [22], [45], [54]. On its face, the ’494 patent purports
`to claim priority from nine earlier applications, including U.S. Patent
`Application No. 08,964,388 (“the ’388 application”), filed November 6,
`1997, which issued July 18, 2000, as U.S. Patent No. 6,092,194 (Ex. 1007,
`“the ’194 patent” or “Touboul I”). Ex. 1001, [60], [63], col. 1, ll. 7–55. For
`reasons stated below, we determine on this record that the challenged claims
`are entitled at least to the benefit of the November 6, 1997 filing date of the
`’388 application.
`
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`B. Related Proceedings
`The ’494 patent is the subject of a district court action between the
`parties, Finjan, Inc. v. Symantec Corp., 3:14-cv-02998 (N.D. Cal.), and has
`also been asserted in three other district court actions, Finjan, Inc. v. Sophos,
`Inc., 3:14-cv-01197 (N.D. Cal.), Finjan, Inc. v. Palo Alto Networks, Inc.,
`3:14-cv-04908 (N.D. Cal.), and Finjan, Inc. v. Blue Coat Systems, Inc., 5:15-
`cv-03295 (N.D. Cal.). Pet. 1; Paper 5, 1. Petitioner also has filed another
`petition seeking inter partes review of the ’494 patent, a petition seeking
`inter partes review of related U.S. Patent No. 6,154,844 (hereinafter
`“Touboul II”), and two petitions seeking inter partes review of related U.S.
`Patent No. 7,613,926, in Cases IPR2015-01892, IPR2015-01894, IPR2015-
`01893, and IPR2015-01895, respectively. Pet. 1. Palo Alto Networks, Inc.
`also has filed a petition seeking inter partes review of the ’494 patent (Case
`IPR2016-00159, Paper 2), and a petition filed by Sophos Inc. seeking inter
`partes review of the ’494 patent was denied on September 24, 2015 (Case
`IPR2015-01022, Paper 7).
`C. References Relied Upon
`Petitioner relies on the following references:
`
`Exhibit
`
`Reference
`
`1007 US 6,092,194, issued July 18, 2000 (“Touboul I”)
`
`1016 US 6,154,844, issued Nov. 28, 2000 (“Touboul II”)
`
`Pet. 23–24. Petitioner also relies on the Declaration of Jack W. Davidson
`(Ex. 1021).
`
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the challenged claims on the
`following four grounds:
`
`Reference Basis
`
`Claims Challenged
`
`Touboul I
`
`§ 102(b) 1, 5, 6, 10, 14, and 15
`
`Touboul I
`
`§ 103(a)
`
`2 and 11
`
`Touboul II § 102(b) 1, 5, 6, 10, 14, and 15
`
`Touboul II § 103(a)
`
`2 and 11
`
`
`Pet. 24.
`
`II. DISCUSSION
`A. Claim Interpretation
`In an inter partes review proceeding, claims of an unexpired patent
`are given their broadest reasonable interpretation in light of the specification
`of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re
`Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert.
`granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016).
`On this record and for purposes of this Decision, we determine that no claim
`terms require express construction.
`
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`B. Priority Date
`1. Background
`As filed, the ’708 application from which the ’494 patent issued
`claimed priority from the following seven earlier-filed applications:
`1) U.S. Patent Application No. 08/964,388 (“the ’388 application”) to
`Shlomo Touboul, which, as indicated in Section I.A. above, was filed on
`November 6, 1997, and issued as Touboul I on July 18, 2000;
`2) U.S. Patent Application No. 09/539,667 (“the ’667 application”) to
`Mr. Touboul, filed March 30, 2000, as a continuation of the ’388
`application; the ’667 application issued October 12, 2004, as U.S. Patent No.
`6,804,780 B1 (Ex. 1006, “the ’780 patent”);
`3) U.S. Patent Application No. 09/551,302 (“the ’302 application”) to
`Mr. Touboul, filed April 18, 2000; the ’302 application issued November 12,
`2002, as U.S. Patent No. 6,480,962 B1 (Ex. 1009, “the ’962 patent”);
`4) U.S. Provisional Patent Application No. 60/205,591 (Ex. 1005,
`“the ’591 provisional”) to Nimrod Itzhak Vered, Yigal Mordechai Edery,
`and David R. Kroll, filed May 17, 2000;
`5) U.S. Patent Application No. 09/861,229 (“the ’229 application”) to
`Messrs. Edery, Vered, Kroll, and Touboul,1 filed May 17, 2001, as a
`
`
`1 The ’229 application, as filed, named only Messrs. Vered, Edery, and Kroll
`as inventors. However, a Request to Correct Inventorship, requesting to add
`Mr. Touboul as an inventor, was filed on June 21, 2005. Ex. 2005, 3. The
`Request was accompanied by supporting papers, including a statement
`signed by Mr. Touboul and stating that the error in inventorship occurred
`inadvertently and that there was no deceptive intent on his part; an Assent of
`Assignee To Correction And/Or Addition of Inventor; a new Declaration
`signed by Messrs. Vered, Edery, Kroll, and Touboul; and an Assignment
`executed by Mr. Touboul. Id. at 4–14. The Office granted the Request on
`
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`continuation-in-part of the ’667 and ’302 applications and claiming the
`benefit of the ’591 provisional; the ’229 application issued June 6, 2006, as
`U.S. Patent No. 7,058,822 B2 (Ex. 1004, “the ’822 patent”);
`6) U.S. Patent Application No. 11/370,114 (“the ’114 application”) to
`Messrs. Edery, Vered, Kroll, and Touboul, filed March 7, 2006, as a
`continuation of the ’229 application; the ’114 application issued November
`3, 2009, as U.S. Patent No. 7,613,926 B2 (Ex. 1003, “the ’926 patent”); and
`7) U.S. Patent Application No. 12/471,942 (“the ’942 application”) to
`Messrs. Edery, Vered, Kroll, and Touboul, filed May 26, 2009, as a
`continuation of the ’114 application; the ’942 application issued December
`13, 2011, as U.S. Patent No. 8,079,086 B1 (Ex. 1002, “the ’086 patent”).
`Ex. 3002, 1.
`On December 6, 2013, during original prosecution of the ’708
`application, Applicants filed a petition to amend the application to include
`references to priority claims from two additional applications, namely, U.S.
`Patent Application No. 08/790,097 (“the ’097 application”) to Mr. Touboul,
`filed January 29, 1997, which issued as U.S. Patent No. 6,167,520 (Ex.
`1010, “the ’520 patent”), and of which the ’302 application was a
`continuation; and U.S. Provisional Application No. 60/030,639 (Ex. 1008,
`“the ’639 provisional”) to Mr. Touboul, filed November 8, 1996, from which
`the ’388 and ’097 applications had both claimed priority. Ex. 3003. The
`Office granted the Applicants’ petition on December 24, 2013. Ex. 3004.
`
`
`August 11, 2005, before the ’822 patent issued. Id. at 15–17. Although Mr.
`Touboul’s name was not printed on the ’822 patent when it issued (Ex. 1004,
`[75]), it was later added by a Certificate of Correction (id. at 25) issued on a
`request filed under 37 C.F.R. § 1.322 (“Certification of correction of Office
`mistake”). Ex. 3001.
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`To better understand Patent Owner’s claims to priority for the ’494
`patent, Petitioner prepared a chart, which we have reproduced below with an
`annotation to identify the ’194 patent as Touboul I:
`
`
`Petitioner’s chart provides “a graphical depiction of the claimed priority
`chain in the ’494 patent (with dashed arrows indicating that the later
`application is a continuation-in-part of the earlier application).” Pet. 4.
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`As set forth in Section I.D. above, Petitioner contends that claims 1, 5,
`6, 10, 14, and 15 of the ’494 patent are anticipated—and claims 2 and 11 of
`the ’494 patent are rendered obvious—by each of Touboul I and Touboul II.
`Pet. 24. Although neither Touboul I nor Touboul II issued until 2000,
`Petitioner contends that the priority claims in the ’494 patent are “defective
`for a number of reasons and, therefore, the challenged claims are not entitled
`to earlier priority based on any of the Priority Applications.” Pet. 5. In
`particular, according to Petitioner,
`It is well settled that, in order for a later-filed application
`to be entitled to the benefit of the filing dates of earlier-filed
`applications, each application in the priority chain must, inter
`alia: (i) satisfy the written description requirement of § 112 for
`the claims of the later-filed application; and (ii) include specific
`references to each of the earlier-filed applications in the chain.
`Here, the priority chain of the ’494 patent fails to meet
`either requirement.
` The Priority Applications
`lack
`the
`continuing disclosure throughout the chain that is necessary to
`support the challenged claims of the ’494 patent. In particular,
`each of the ’086, ’926, and ’822 patents lacks sufficient
`disclosure under § 112 for virtually all of the elements recited in
`the challenged claims. Thus, each of these patents constitutes a
`break in the priority chain and, therefore, the challenged claims
`are not entitled to earlier priority. Moreover, neither the ’086
`patent, nor the ’926 patent, include a priority claim or any
`reference whatsoever to a number of earlier-filed applications
`(i.e., the ’194 patent, ’520 patent and ’639 provisional) that are
`included in the priority chain of the ’494 patent. Thus, the ’086
`and ’926 patents both fail to satisfy the specific-reference
`requirement under § 120 and, for this additional reason, these
`patents constitute a break in the priority chain.
`Additionally, when it issued in 2006, the ’822 patent also
`lacked any priority claim or any reference whatsoever to these
`earlier-filed applications (nor did it even share any inventors in
`common with the many of the earlier-filed applications). This
`remained the case until 2014 . . . when Patent Owner amended
`
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`the priority claims during an ex parte reexamination of the ’822
`patent.
`Id. at 5–6 (internal citations omitted). Accordingly, Petitioner contends, “the
`earliest possible priority date of the challenged claims is the filing date of the
`’494 patent, i.e., November 7, 2011,” and both Touboul I and Touboul II are
`“prior art to the ’494 patent under pre-AIA 35 U.S.C. § 102(b).” Id. at 8, 23,
`24.
`
`Patent Owner counters, inter alia, that the ’494 patent properly claims
`priority back to Touboul I, rendering both Touboul I and Touboul II
`“inoperative as prior art.” Prelim. Resp. 1. For the reasons that follow, we
`agree with Patent Owner.
`2. Continuity of Disclosure
`To claim priority from an earlier application under 35 U.S.C. § 120,
`each application in the chain leading back to the earliest application must
`comply with the written description requirement of 35 U.S.C. § 112. Zenon
`Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see
`also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a
`continuous chain of copending applications each of which satisfies the
`requirements of § 112 with respect to the subject matter presently
`claimed.”). If any application in the priority chain fails to make the requisite
`disclosure, the later-filed application is not entitled to the benefit of the filing
`date of applications preceding the break in the priority chain. Lockwood v.
`Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).
`Petitioner contends that the priority chain of the ’494 patent does not
`satisfy the requirement set forth by the Federal Circuit and the Board that
`each application must include sufficient disclosure to satisfy the written
`
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`description requirements of 35 U.S.C. § 112 for the claims at issue to secure
`the benefit of the earliest claimed priority date. Pet. 8 (citing Holmer v.
`Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012); Hyatt v. Boone, 146 F.3d
`1348, 1354–55 (Fed. Cir. 1998); In re Hogan, 559 F.2d at 609; Polaris
`Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, Paper 62, slip op.
`at 22 (PTAB Nov. 3, 2014); Focal Therapeutics, Inc. v. Senorx, Inc., Case
`IPR2014-00116, Paper 8, slip op. at 12 (PTAB Apr. 22, 2014)). According
`to Petitioner, claim elements and features such as “deriving security profile
`data for [a] Downloadable,” Downloadable security profile (“DSP”) data
`“including a list of suspicious computer operations that may be attempted by
`the Downloadable,” and “storing the [DSP] data in a database,” as recited in
`challenged independent claims 1 and 10; “stor[ing] a date & time when the
`[DSP] data was derived [by said Downloadable scanner], in the database,” as
`recited in dependent claims 2 and 11; and “suspicious computer operations
`includ[ing] calls made to an operating system, a file system, a network
`system, and to memory,” as recited in dependent claims 6 and 15, “are
`described in some of the earliest-filed applications in the priority chain,
`namely: the ’780 patent, the ’194 patent, and the ’639 provisional.” Pet. 9.
`Petitioner asserts that, “[i]mportantly, however, none of this same disclosure
`corresponding to these claim elements is included in the specifications of the
`’086, ’926, or ’822 patents. Nor are these claim elements described
`anywhere in the ’086, ’926, or ’822 patents.” Id. at 9–10 (citations omitted).
`Further, Petitioner asserts, “[a]lthough the ’822 patent is characterized as a
`‘continuation-in-part’ of the ’780 patent, the ’822 patent specification is
`directed to completely new subject matter and is missing the vast majority of
`the disclosure in the ’780 patent.” Id. at 10.
`
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`Petitioner’s assertions are not persuasive. As Patent Owner points
`out, the ’822 patent incorporates by reference the ’780 and ’962 patents; the
`’926 patent incorporates by reference the ’194, ’780, ’962, and ’822 patents;
`the ’086 patent incorporates by reference the ’194, ’780, ’962, ’822, and
`’926 patents; and the ’494 patent incorporates by reference the ’822, ’926,
`and ’086 patents. Prelim. Resp. 17. The ’494 patent also incorporates by
`reference the ’194, ’780, and ’962 patents. Ex. 1001, 1:31–32, 35–38, 47–
`48.
`
`As Patent Owner correctly explains (Prelim. Resp. 17–18), material
`necessary to provide a written description of a claimed invention as required
`by 35 U.S.C. § 112 may be incorporated into a patent application by
`reference, provided that the incorporated reference is a U.S. patent or U.S.
`patent application publication that does not itself incorporate such “essential
`material” by reference, by “[e]xpress[ing] a clear intent to incorporate by
`reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly
`identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c),
`(d). Moreover, the Federal Circuit has explained that “incorporated patents
`are ‘effectively part of the host [patents] as if [they] were explicitly
`contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757
`F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting
`Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed.
`Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the
`“boilerplate language” used in the ’822, ’926, ’086, and ’494 patents,
`broadly stating without further qualification that the earlier-filed patents are
`“incorporated by reference,” is sufficient in view of Federal Circuit
`
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`precedent to incorporate the disclosure of at least the ’780 patent2 into each
`later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir.
`2011) (finding “entire . . . application disclosure was incorporated by the
`broad and unequivocal language: ‘The disclosures of the two applications
`are hereby incorporate[d] by reference’”). We agree with Patent Owner that
`the facts here are distinguishable from those in cases on which Petitioner
`relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner
`asserts, there was a lack of continuity of disclosure in a priority chain
`because the priority references were not incorporated in their entirety, but
`only with respect to specific portions. Id.
`On this record, and particularly in view of Petitioner’s statement that
`the specification of the ’780 patent, among others, describes the “claim
`elements and features” not otherwise included in the specifications of the
`’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself
`incorporate such “essential material” by reference (see 37 C.F.R.
`§1.57(d))—we agree with Patent Owner’s conclusion that “each application
`in the priority chain contains written description support for the challenged
`claims, and continuity of disclosure exists up to and including the ’494
`[p]atent without interruption.” Prelim. Resp. 16.3
`
`
`2 We note that, although the ’822 patent does not expressly incorporate by
`reference the ’194 patent, the ’667 application from which the ’780 patent
`issued was a continuation of the ’388 patent from which the ’194 patent
`issued, and the ’194 and ’780 patents share essentially the same disclosure.
`Compare Ex. 1006 with Ex. 1007.
`3 Petitioner also asserts that “the ’822 patent did not even include any
`inventors in common with the earlier applications until Patent Owner
`‘corrected’ the inventorship more than 5 years after the ’822 patent issued.”
`Pet. 10. As explained in note 1 supra, however, the inventorship of the ’229
`
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`3. Specific Reference to Earlier-Filed Applications
`A patent is entitled to the priority date of an earlier filed application if,
`among others, it contains or is amended to contain a specific reference to the
`earlier filed application. 35 U.S.C. § 120.
`Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the
`’926 patent, include a priority claim or any reference whatsoever to a
`number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and
`’639 provisional) that are included in the priority chain of the ’494 patent”
`(Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194
`patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002,
`[63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points
`out, the ’520 patent and ’639 provisional are not within the priority chain
`from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086
`patents to include a priority claim or reference to the ’520 patent and ’639
`provisional does not affect the ’494 patent’s entitlement to the benefit of the
`November 6, 1997 filing date of the ’388 application that matured into the
`’194 patent (i.e., Touboul I).
`Petitioner also argues that the failure of the ’926 and ’086 patents to
`include a priority claim or any reference to the ’520 patent and ’639
`provisional constitutes a break in the priority chain of the ’494 patent. Pet.
`17. For purposes of this Decision, however, we need not reach this issue.
`
`
`application from which the ’822 patent issued was corrected in 2005, prior to
`the issuance of the ’822 patent. See Ex. 2005. Accordingly, Petitioner’s
`assertion is both incorrect and unpersuasive.
`
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`4. Delay in Correction of ’822 Patent Priority Claim
`As filed, the ’229 application that matured into the ’822 patent
`included a claim of priority from, and incorporated by reference, the ’302
`application that matured into the ’962 patent, the ’667 application that
`matured into the ’780 patent, and the ’591 provisional, but it did not claim
`priority from or include any reference to the ’520 and ’194 patents or the
`’097 and ’388 applications from which those patents respectively issued. As
`Petitioner points out, however, Patent Owner, in the course of ex parte
`reexamination of the ’822 patent in 2014, filed a Petition to Accept
`Unintentionally Delayed Priority Claim Under 37 C.F.R. 1.78, requesting
`amendment to include references to the ’520 and ’194 patents.
`Reexamination Control No. 90/013,017, Petition dated March 6, 2014, at 1–
`3 (Ex. 1015, 7–9); see also Pet. 18. The Office granted Patent Owner’s
`Petition on July 25, 2014. Reexamination Control No. 90/013,017, Decision
`dated July 25, 2014, at 1–3 (Ex. 1015, 1–3)).
`Notwithstanding Patent Owner’s representation that the delay in
`requesting correction of the priority claim was unintentional, Petitioner
`asserts that “the publically available information concerning the ’822 patent,
`as well as other patents in the same family and other applications owned by
`Patent Owner, cast[s] serious doubts concerning the veracity of Patent
`Owner’s representation that this delayed priority claim in the ’822 patent
`was ‘unintentional.’” Pet. 19 (emphasis added). In support of this assertion,
`Petitioner points to Patent Owner’s amendment of the priority claim in the
`application that matured into the ’494 patent; the assertions of priority
`claims going through the ’822 patent in the applications for the ’926, ’086,
`and ’494 patents; and amendments of priority claims in one other application
`
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`and one other patent, and suggests that “it appears Patent Owner has, on
`numerous occasions, attempted to gain extra patent term for its patents by
`not making certain priority claims up front, and then only doing so in certain
`applications when an earlier priority date is needed to avoid/disqualify
`intervening prior art.” Id. at 20–22.
`Patent Owner responds, inter alia, that “Petitioner is essentially
`alleging inequitable conduct by questioning the veracity of Patent Owner’s
`Statement to the USPTO,” and “validity challenges based on inequitable
`conduct are improper in a petition for Inter Partes Review.” Prelim. Resp.
`28. We agree. The Board is not a court of general jurisdiction, but an
`administrative tribunal whose jurisdiction is limited statutorily in the context
`of inter partes review proceedings to determinations of patentability
`pursuant to 35 U.S.C. §§ 102 and 103 based on prior art consisting of
`patents and printed publications. 35 U.S.C. § 311(b). Thus, we do not make
`any determination with respect to Petitioner’s allegations regarding the
`veracity of Patent Owner’s statements to the Office in prior proceedings.
`Moreover, Petitioner’s doubts and inferences regarding Patent Owner’s past
`actions and motives are insufficient bases for us to question Patent Owner’s
`candor in this proceeding. See 37 C.F.R. § 42.11.
`C. Anticipation by and Obviousness over Touboul I and Touboul II
`On this record and for the reasons stated in Section II.B. above, we are
`persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are
`entitled at least to the benefit of the November 6, 1997 filing date of the ’388
`patent that matured into the ’194 patent, and, accordingly, that neither
`Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November
`28, 2000, from an application filed December 22, 1997, constitutes prior art
`
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`to those claims. We conclude, therefore, that Petitioner has not
`demonstrated a reasonable likelihood that it would prevail at trial on any of
`the asserted grounds.
`
`
`III. CONCLUSION
`On this record, Petitioner has not shown that Touboul I and
`Touboul II are prior art to the challenged claims of the ’494 patent.
`Accordingly, Petitioner has not demonstrated a reasonable likelihood of
`prevailing on its challenges to the patentability of those claims on the
`grounds asserted in the Petition.
`
`
`IV. ORDER
`Upon consideration of the record before us, it is, therefore,
`ORDERED that the Petition is denied, and no inter partes review is
`instituted as to any claim of the ’494 patent.
`
`
`
`
`16
`
`

`
`IPR2015-01897
`Patent 8,677,494 B2
`
`For PETITIONER:
`
`Joseph J. Richetti
`Daniel A. Crowe
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`dacrowe@bryancave.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
`
`
`
`17