UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond VA 23229
`
`Ryan W. Cobb
`DLA Piper LLP
`401 B Street, Suite 1700
`San Diego CA 92101
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`[I (cid:9)
`E
`1 (cid:9) JUL 25,2014
`OFFICE OF PETITIONS
`
`Ex Parte Reexamination Proceeding
`Control No.: 90/013,017
`Filed: October 7, 2013
`For: U.S. Patent No. 7,058,822
`
`: DECISION GRANTING PETITION
`: TO ACCEPT UNINTENTIONALLY
`: DELAYED PRIORITY CLAIM UNDER 37
`: C.F.R. § 1.78(e)
`
`This is a decision on the March 6, 2014, 2014 patent owner petition entitled "PETITION TO
`ACCEPT UNINTENTIONALLY DELAYED PRIORITY CLAIM UNDER 37 C.F.R.
`§ 1.78". The petition will be treated under 37 CFR § 1.78(e),
`
`The petition is before the Office of Patent Legal Administration for consideration.
`
`The March 6, 2014 patent owner petition is granted.
`
`RELEVANT BACKGROUND
`1. On June 6, 2006, United States Patent No. 7,058,822 B2 was issued to Finjan Software, Ltd.
`(Finjan, Inc.).
`
`2. On October 7, 2013, a request for ex parte reexamination of U.S. Patent No. 7,058,822 B2
`was filed, and was assigned Reexamination Control No. 90/013,017.
`
`3. On March 6, 2014, patent owner filed a petition to accept an unintentionally delayed claim
`under 35 U.S.C. § 120 for the benefit of priority to the prior-filed nonprovisional
`applications set forth in the concurrently filed amendment.
`
`000001
`
`Symantec 1015
`IPR of U.S. Pat. No. 8,677,494
`
`

`
`Reexamination Control No. 90/013,017 (cid:9)
`
`page 2
`
`DECISION
`
`As stated in MPEP 2258 (IV)(E), a patent owner may correct the failure to adequately claim (in
`the application for the patent reexamined) benefit under 35 U.S.C. 120 of an earlier filed
`copending U.S. patent application. For a patent to be reexamined which matured from a utility
`or plant application filed on or after November 29, 2000, the patent owner must file a
`grantable petition for an unintentionally delayed priority claim under 37 CFR 1.78(e).
`
`A petition for acceptance of a claim for late priority under 37 CFR § 1.78(e) is applicable to
`those applications filed after the expiration of the period specified in 37 CFR § 1.78(d)(3). In
`addition, the petition under 37 CFR § 1.78(e) must be accompanied by:
`
`the reference required by 35 U.S.C. § 120 and 37 CFR §1.78(d)(2) of the prior-
`filed application;
`the petition fee set forth in § 1.17(m); and
`a statement that the entire delay between the date the claim was due under 37
`CFR § 1.78(d)(3) and the date the claim was filed was unintentional. The
`Director may require additional where there is a question whether the delay was
`unintentional.
`
`37 CFR § 1.78(e) requires a statement that the entire delay between the date the claim was due
`under 37 CFR § 1.78(d)(3) and the date the claim was filed was unintentional. Since the
`statement appearing in the petition varies from the required language, the statement is being
`construed as the statement required by 37 CFR §1.78(d)(3). If this is not a correct reading of the
`statement appearing in the petition, petitioner should promptly notify the Office.
`
`All the above requirements having been satisfied, the late claim for benefit of priority under 35
`U.S.C. § 120 is accepted as being unintentionally delayed.
`
`The granting of the petition to accept the delayed benefit claim to the prior-filed applications
`under 37 CFR s5 1.78(e) should not be construed as meaning that this application is entitled to
`the benefit of the filing date of the prior-filed applications. In order for this application to be
`entitled to the benefit of the prior-filed applications, all other requirements under 35 U.S.C.
`$120 and under 1.78 must be met. Similarly, the fact that the corrected Filing Receipt
`accompanying this decision on petition includes the prior-filed applications should not be
`construed as meaning that applicant is entitled to the claim for benefit of priority to the prior-
`filed applications noted thereon. Accordingly, the examiner will, in due course, consider this
`benefit claim and determine whether the application is entitled to the benefit of the earlier
`filing date.
`
`A corrected Filing Receipt, which includes the priority claim to the prior-filed applications,
`accompanies this decision on petition.
`
`000002
`
`

`
`Reexamination Control No. 90/013,017 (cid:9)
`
`page 3
`
`CONCLUSION
`
`The petition under 37 CFR § 1.78(e) is granted.
`
`Any questions concerning this matter may be directed to Petitions Attorney Shirene Willis
`Brantley at (571) 272-3230. All other inquiries concerning either the examination procedures or
`status of the application should be directed to the Technology Center.
`
`This application is being forwarded to Technology Center Art Unit 3992 for consideration by the
`examiner of the claim under 35 U.S.C. § 120 of the prior-filed nonprovisional applications.
`
`. of
`Pinchus M. Laufer
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`ATTACHMENT : Corrected Filing Receipt
`
`July 24, 2014
`
`000003
`
`

`
`UNITED STATES PATENT AND TI ADEMARK OFFICE
`
`UNITED STATFN DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto gov
`
`APPLICATION I
`
`90/013,017
`
`FILING or
`37I(c) DATE
`10/07/2013
`
`I (cid:9) GRP
`T
`
`UNIT
`3992 (cid:9)
`
`I
` FIL FEE REC'D I (cid:9)
`12000 (cid:9)
`
`115222
`Bey & Cotropia PLLC (Finjan Inc.)
`213 Bayly Court
`Richmond, VA 23229
`
`ATTY.DOCKET.NO
`FINREXM0006
`
`[TOT CLAIMSIIND CLAIMS
`6
`35 (cid:9)
`CONFIRMATION NO. 6388
`CORRECTED FILING RECEIPT
`
`11111111111
`
`Date Mailed: 07/24/2014
`
`Receipt is acknowledged of this non-provisional patent application. The application will be taken up for examination
`in due course. Applicant will be notified as to the results of the examination. Any correspondence concerning the
`application must include the following identification information: the U.S. APPLICATION NUMBER, FILING DATE,
`NAME OF APPLICANT, and TITLE OF INVENTION. Fees transmitted by check or draft are subject to collection.
`Please verify the accuracy of the data presented on this receipt. If an error is noted on this Filing Receipt, please
`submit a written request for a Filing Receipt Correction. Please provide a copy of this Filing Receipt with the
`changes noted thereon. If you received a "Notice to File Missing Parts" for this application, please submit
`any corrections to this Filing Receipt with your reply to the Notice. When the USPTO processes the reply
`to the Notice, the USPTO will generate another Filing Receipt incorporating the requested corrections
`Inventor(s)
`
`7058822, Residence Not Provided;
`FINJAN INC., SAN JOSE, CA;
`RYAN W. COBB (3RD PTY REQ.), SAN DIEGO, CA;
`
`Applicant(s)
`
`RYAN W. COBB DLA PIPER LLP (US), EAST PALO ALTO, CA
`Assignment For Published Patent Application
`FINJAN, INC., SAN JOSE, CA
`Power of Attorney: The patent practitioners associated with Customer Number 115222
`Domestic Priority data as claimed by applicant
`This application is a REX of 09/861,229 05/17/2001 PAT 7058822
`which claims benefit of 60/205,591 05/17/2000
`and is a CIP of 09/539,667 03/30/2000 PAT 6804780
`which is a CON of 08/964,388 11/06/1997 PAT 6092194
`and said 09/861,229 05/17/2001
`is a CIP of 09/551,302 04/18/2000 PAT 6480962
`which is a CON of 08/790,097 01/29/1997 PAT 6167520
`Foreign Applications for which priority is claimed (You may be eligible to benefit from the Patent Prosecution
`Highway program at the USPTO. Please see http://www.uspto.gov for more information.) - None.
`Foreign application information must be provided in an Application Data Sheet in order to constitute a claim to
`foreign priority. See 37 CFR 1.55 and 1.76.
`
`If Required, Foreign Filing License Granted: 07/23/2014
`page 1 of 3
`
`000004
`
`(cid:9)
`

`
`The country code and number of your priority application, to be used for filing abroad under the Paris Convention,
`is US 90/013,017
`
`Projected Publication Date: None, application is not eligible for pre-grant publication
`
`Non-Publication Request: No
`
`Early Publication Request: No
`Title
`
`MALICIOUS MOBILE CODE RUNTIME MONITORING SYSTEM AND METHODS
`Preliminary Class
`
`726
`
`Statement under 37 CFR 1.55 or 1.78 for MA (First Inventor to File) Transition Applications: No
`
`PROTECTING YOUR INVENTION OUTSIDE THE UNITED STATES
`
`Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no
`effect in a foreign country, an inventor who wishes patent protection in another country must apply for a patent
`in a specific country or in regional patent offices. Applicants may wish to consider the filing of an international
`application under the Patent Cooperation Treaty (PCT). An international (PCT) application generally has the same
`effect as a regular national patent application in each PCT-member country. The PCT process simplifies the filing
`of patent applications on the same invention in member countries, but does not result in a grant of "an international
`patent" and does not eliminate the need of applicants to file additional documents and fees in countries where patent
`protection is desired.
`
`Almost every country has its own patent law, and a person desiring a patent in a particular country must make an
`application for patent in that country in accordance with its particular laws. Since the laws of many countries differ
`in various respects from the patent law of the United States, applicants are advised to seek guidance from specific
`foreign countries to ensure that patent rights are not lost prematurely.
`
`Applicants also are advised that in the case of inventions made in the United States, the Director of the USPTO must
`issue a license before applicants can apply for a patent in a foreign country. The filing of a U.S. patent application
`serves as a request for a foreign filing license. The application's filing receipt contains further information and
`guidance as to the status of applicant's license for foreign filing.
`
`Applicants may wish to consult the USPTO booklet, "General Information Concerning Patents" (specifically, the
`section entitled "Treaties and Foreign Patents") for more information on timeframes and deadlines for filing foreign
`patent applications. The guide is available either by contacting the USPTO Contact Center at 800-786-9199, or it
`can be viewed on the USPTO website at http://www.uspto.gov/weti/offices/pac/doc/general/index.html.
`
`For information on preventing theft of your intellectual property (patents, trademarks and copyrights), you may wish
`to consult the U.S. Government website, http://www.stopfakes.gov. Part of a Department of Commerce initiative,
`this website includes self-help "toolkits" giving innovators guidance on how to protect intellectual property in specific
`countries such as China, Korea and Mexico. For questions regarding patent enforcement issues, applicants may
`call the U.S. Government hotline at 1-866-999-HALT (1-866-999-4258).
`
`page 2 of 3
`
`000005
`
`

`
`LICENSE FOR FOREIGN FILING UNDER
`
`Title 35, United States Code, Section 184
`
`Title 37, Code of Federal Regulations, 5.11 & 5.15
`
`GRANTED
`
`The applicant has been granted a license under 35 U.S.C. 184, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" followed by a date appears on this form. Such licenses are issued in all applications where
`the conditions for issuance of a license have been met, regardless of whether or not a license may be required as
`set forth in 37 CFR 5.15. The scope and limitations of this license are set forth in 37 CFR 5.15(a) unless an earlier
`license has been issued under 37 CFR 5.15(b). The license is subject to revocation upon written notification. The
`date indicated is the effective date of the license, unless an earlier license of similar scope has been granted under
`37 CFR 5.13 or 5.14.
`
`This license is to be retained by the licensee and may be used at any time on or after the effective date thereof unless
`it is revoked. This license is automatically transferred to any related applications(s) filed under 37 CFR 1.53(d). This
`license is not retroactive.
`
`The grant of a license does not in any way lessen the responsibility of a licensee for the security of the subject matter
`as imposed by any Government contract or the provisions of existing laws relating to espionage and the national
`security or the export of technical data. Licensees should apprise themselves of current regulations especially with
`respect to certain countries, of other agencies, particularly the Office of Defense Trade Controls, Department of
`State (with respect to Arms, Munitions and Implements of War (22 CFR 121-128)); the Bureau of Industry and
`Security, Department of Commerce (15 CFR parts 730-774); the Office of Foreign AssetsControl, Department of
`Treasury (31 CFR Parts 500+) and the Department of Energy.
`
`NOT GRANTED
`
`No license under 35 U.S.C. 184 has been granted at this time, if the phrase "IF REQUIRED, FOREIGN FILING
`LICENSE GRANTED" DOES NOT appear on this form. Applicant may still petition for a license under 37 CFR 5.12,
`if a license is desired before the expiration of 6 months from the filing date of the application. If 6 months has lapsed
`from the filing date of this application and the licensee has not received any indication of a secrecy order under 35
`U.S.C. 181, the licensee may foreign file the application pursuant to 37 CFR 5.15(b).
`
`SelectUSA
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location for
`business investment, innovation, and commercialization of new technologies. The U.S. offers tremendous resources
`and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation works to
`promote and facilitate business investment. SelectUSA provides information assistance to the international investor
`community; serves as an ombudsman for existing and potential investors; advocates on behalf of U.S. cities, states,
`and regions competing for global investment; and counsels U.S. economic development organizations on investment
`attraction best practices. To learn more about why the United States is the best country in the world to develop
`technology, manufacture products, deliver services, and grow your business, visit http://www.SelectUSA.gov or call
`+1-202-482-6800.
`
`page 3 of 3
`
`000006
`
`

`
`REEXAMINATION CONTROL NO.: 90/013,017
`ATTORNEY DOCKET NO.: FINREXM0006
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of U.S. Patent No. : Confirmation No.: (cid:9)
`7,058,822 to Edery, et al.
`
`6388
`
`Control Number: 90/013,017
`
`Patent No.: (cid:9)
`
`7,058,822
`
`Inventors: (cid:9)
`
`Edery et al.
`
`Issued: (cid:9)
`
`Title: (cid:9)
`
`June 6, 2006
`
`MALICIOUS MOBILE
`CODE RUNTIME
`MONITORING SYSTEM
`AND METHODS
`
`: Group Art Unit: (cid:9)
`
`3992
`
`: Examiner: (cid:9)
`
`Proctor, Jason Scott
`
`: Attorney Docket No.: FINREXM0006
`
`Mail Stop PETITION
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION TO ACCEPT UNINTENTIONALLY DELAYED PRIORITY CLAIM
`UNDER 37 C.F.R. 1.78
`
`Dear Sir:
`
`Patent Owner hereby petitions under 37 C.F.R. § 1.78(a) to request acceptance of an
`
`unintentionally delayed corrected benefit claim under 35 U.S.C. § 120 for the benefit of prior-
`
`filed nonprovisional applications, for a utility patent application filed after November 29, 2000.
`
`U.S. Patent No. 7,058,822 ("the '822 patent") is presently the subject of Ex Parte
`
`Reexamination, Ser. No. 90/013,017, filed October 7, 2013.
`
`I. Authority
`
`37 C.F.R. § 1.78(a)(3) and MPEP § 2258 (IV)(E) (Claiming Foreign and Domestic Priority in
`
`Reexamination) allow the filling of a petition to correct a failure to adequately claim the benefit
`
`1
`
`000007
`
`

`
`REEXAMINATION CONTROL NO.: 90/013,017
`ATTORNEY DOCKET NO.: FINREXM0006
`
`under 35 U.S.C. § 120. A petition to accept the priority claim and referenced required under 35
`
`U.S.C. § 120 and 37 C.F.R. § 1.78(a)(2) and (a)(3) made after four months from the filing date or
`
`sixteen months from the filing date of the priority application may be accepted if the reference
`
`was unintentionally delayed. Furthermore, a petition to accept an unintentionally delayed claim
`
`under 35 U.S.C. § 120 for the benefit of a prior filed application must be accompanied by:
`
`(1)
`
`(2)
`
`(3)
`
`the reference required by 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(2);
`
`a surcharge payment as set forth in 37 C.F.R. § 1.17(m); and
`
`a statement that the entire delay between the date the was due under 37 C.F.R. §
`
`1.78(a)(2)(ii) and the date the claim was filed was unintentional.
`
`II. Reference
`
`The present petition is accompanied by an Amendment to correct the language of the benefit
`
`claim recited in the first paragraph of the specification filed in a response to Non-Final Office
`
`Action. For the Petitions Office's convenience the amendment is reproduced below:
`
`This application claims benefit and hereby incorporates by reference provisional
`
`application Ser. No. 60/205,591, entitled "Computer Network Malicious Code Run-time
`
`Monitoring," filed on May 17, 2000 by inventors Nimrod Itzhak Vered, et al. This
`
`application is also a Continuation-In-Part of and hereby incorporates by reference patent
`
`application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780, entitled "System and
`
`Method for Protecting a Computer and Network From Hostile Downloadables" filed on
`
`Mar. 30, 2000 by inventor Shlomo Touboul, which is a continuation of U.S. patent
`
`application Ser. No. 08/964,388, now U.S. Patent No. 6,092,194, entitled "System and
`
`Method for Protecting a Computer and a Network from Hostile Downloadables" filed on
`
`November 6, 1997 by inventor Shlomo Touboul. This application is also a Continuation-
`
`In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302,
`
`now U.S. Pat. No. 6,480,962 entitled "System and Method for Protecting a Client During
`
`2
`
`000008
`
`

`
`REEXAMINATION CONTROL NO.: 90/013,017
`ATTORNEY DOCKET NO.: FINREXM0006
`
`Runtime From Hostile Downloadables", filed on Apr. 18, 2000 by inventor Shlomo
`
`Touboul, which is a continuation of U.S. application Ser. No. 08/790,097, now U.S.
`
`Patent No. 6,167,520 entitled "System and Method For Protecting a Client From Hostile
`
`Downloadables", filed January 29, 1997 by inventor Shlomo Touboul.
`
`III.
`
`Surcharge
`
`The present petition is also accompanied by authorization to charge the requisite fee under 37
`
`C .F .R. § 1.17(m).
`
`IV. Unintentional Delay
`
`The entire delay between the date a correctly worded benefit claim was due under paragraph
`
`(a)(5)(ii) of 37 C.F.R. § 1.78 and the date the correctly worded benefit claim was filed was
`
`unintentional.
`
`Dated: March 6, 2014
`
`Bey & Cotropia PLLC
`213 Bayly Court
`Richmond, VA 23229
`(850) 441-8530
`Attorneys for Finjan, Inc.
`
`Respectfully submitted,
`
`/Dawn-Marie Bey — 44,442/
`Dawn-Marie Bey
`Registration No.: 44,442
`
`3
`
`000009