`571-272-7822
`
`
`Paper 55
`Entered: January 23, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00151
`Patent 8,141,154
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`We issued a Final Written Decision in this proceeding on March 14,
`
`2017. Paper 51. In that Decision we determined that Petitioner had not
`
`shown by a preponderance of the evidence that challenged claims 18, 10,
`
`and 11 of the ’154 patent are unpatentable. Id. The Decision, however, did
`
`not address challenged dependent claims 9 and 12 because we denied
`
`institution of those claims. Paper 10. Petitioner appealed the Final Written
`
`Decision. See Paper 54. On April 24, 2018, and while that appeal was
`
`pending, the Supreme Court held that a decision to institute under 35 U.S.C.
`
`§ 314 may not institute on fewer than all claims challenged in the petition.
`
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). The Federal Circuit,
`
`pursuant to Petitioner’s request, remanded this proceeding to the Board to
`
`address the non-instituted claims set forth in the Petition. See Ex. 3001.
`
`ORDER
`
`We modify the institution decision to include review of dependent
`
`claims 9 and 12 of the ’154 patent on the grounds set forth in the petition.
`
`
`
`
`2
`
`
`
`IPR2016-00151
`Patent 8,141,154
`
`
`
`
`PETITIONER:
`
`Matthew I. Kreeger
`Jonathan Bockman
`Shouvik Biswas
`Nathaniel Hamstra
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`FinjanPANMofoTeam@mofo.com
`Nathanhamstra@quinnemanuel.com
`
`
`PATENT OWNER:
`James Hannah
`Jeffrey H. Price
`Michael Kim
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`
`3
`
`
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