Trials@uspto.gov
`571-272-7822
`
`
`Paper 13
`
`Entered: June 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`571-272-7822
`
`
`Paper 13
`
`Entered: June 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`
`I. INTRODUCTION
`Finjan, Inc. (“Patent Owner”) filed a Request for Rehearing Pursuant
`to 37 C.F.R. §§ 42.71(c) and 42.71(d) (Paper 11, “Req. Reh’g”), requesting
`rehearing of our determination, in our Decision to Institute entered May 13,
`2016 (Paper 8, “Dec. to Inst.”), to institute an inter partes review of claims
`1–6 and 10–15 of U.S. Patent No. 8,677,494 B2 (Ex. 1001, “the ’494
`patent”). For the reasons that follow, Patent Owner’s Request for Rehearing
`is denied.
`
`II. BACKGROUND
`Palo Alto Networks, Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) challenging the patentability of claims 1–18 of the ’494 patent (“the
`challenged claims”) on the following grounds:
`
`Reference(s)
`Touboul1
`
`Touboul and Swimmer2
`Touboul and Ji3
`Touboul
`Swimmer
`Swimmer and Martin4
`
`Basis
`35 U.S.C. § 102
`
`Claims Challenged
`1, 3–6, 9, 10, 12–15,
`and 18
`2 and 11
`35 U.S.C. § 103
`7 and 16
`35 U.S.C. § 103
`8 and 17
`35 U.S.C. § 103
`35 U.S.C. § 103 1, 2, 6, 10, 11, and 15
`35 U.S.C. § 103
`3–5 and 12–14
`
`
`1 International Patent Publication No. WO 98/21683 to Shlomo Touboul,
`published May 22, 1998 (Ex. 1026)
`2 Morton Swimmer et al., Dynamic Detection and Classification of
`Computer Viruses Using General Behaviour Patterns, VIRUS BULL.
`CONF. 75 (Sept. 1995) (Ex. 1006)
`3 U.S. Patent No. 5,983,348 to Shuang Ji (Ex. 1010)
`4 David M. Martin, Jr. et al., Blocking Java Applets at the Firewall, PROC.
`1997 SYMP. ON NETWORK & DISTRIBUTED SYS. SEC. (©1997) (Ex. 1047)
`
`
`
`2
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`Pet. 5. Prior to the filing of the Petition, the ’494 patent previously was the
`subject of three other petitions for inter partes review. See Sophos Inc. v.
`Finjan, Inc., Case IPR2015-01022 (Paper 1); Symantec Corp. v. Finjan, Inc.,
`Case IPR2015-01892 (Paper 1), Symantec Corp. v. Finjan, Inc., Case
`IPR2015-01897 (Paper 1).5 Of note here, the petition in Case
`IPR2015-01892 challenged the patentability of claims 1, 2, 5, 6, 10, 11, 14,
`and 15 of the ’494 patent over Swimmer (Ex. 1006), and the petition in Case
`IPR2015-01897 challenged the patentability of those same claims over two
`United States patents related to Touboul (Ex. 1026). The arguments made
`by Symantec, the petitioner in those two cases, overlap with, but also differ
`substantively from, the arguments advanced by Petitioner in the instant case.
`On February 17, 2016, Patent Owner filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”) in which it argued, inter alia, that Touboul does
`not qualify as prior art to the challenged claims (id. at 2–3, 13–26) and that
`Petitioner did not demonstrate that Swimmer discloses certain limitations
`recited in the challenged independent claims (id. at 3–4, 26–40). Patent
`Owner also asserted that “Case No. IPR2015-01897 . . . is substantially
`similar to Grounds 1–4 of the instant Petition in terms of the art cited and the
`arguments made” and that “Case No. IPR2015-01893 [sic] . . . asserts
`substantially similar art and arguments to Grounds 5 and 6 of the instant
`Petition.” Id. at 1. Patent Owner further stated that it “has filed Patent
`Owner Preliminary Responses in [those] two cases, which await institution
`
`
`5 Additionally, to date, two more petitions have been filed that challenge
`certain claims of the ’494 patent. See Blue Coat Systems, Inc. v. Finjan,
`Inc., Case IPR2016-00890 (Paper 2); Blue Coat Systems, Inc. v. Finjan, Inc.,
`Case IPR2016-01174 (Paper 2).
`
`
`
`3
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`decisions, and requests that the Board use its discretion to reject the instant
`Petition under 35 U.S.C. § 325(d) for recycling substantially the same art
`and arguments previously submitted to the USPTO.” Id. at 1–2 (emphasis
`added).
`Shortly after Patent Owner filed its Preliminary Response in this case,
`we entered a decision denying institution of inter partes review of the
`challenged claims in Case IPR2015-01897, explaining that we were
`persuaded on the record before us in that case that claims 1, 2, 5, 6, 10, 11,
`14, or 15 were entitled to a priority date of at least November 6, 1997, and
`that, based on that priority date, the references cited in that case did not
`constitute prior art to the challenged claims. Symantec Corp. v. Finjan, Inc.,
`Case IPR2015-01897, slip op. 5–16 (PTAB Feb. 26, 2016) (Paper 7). We
`then entered a decision instituting an inter partes review in Case
`IPR2015-01892, concluding that Symantec had demonstrated a reasonable
`likelihood that it would prevail in showing the unpatentability of each of
`claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent as unpatentable under
`35 U.S.C. § 103(a) over Swimmer. Symantec Corp. v. Finjan, Inc., Case
`IPR2015-01892, slip op. 12–23 (PTAB Mar. 18, 2016) (Paper 9). Patent
`Owner requested reconsideration of our institution decision in the latter case
`on April 1, 2016. Case IPR2015-01892, Paper 13.
`In our Decision to Institute, we concluded, following consideration of
`Petitioner’s explanations and supporting evidence in view of Patent Owner’s
`Preliminary Response, that Petitioner had demonstrated in its Petition a
`reasonable likelihood of prevailing in showing the unpatentability of
`challenged claims 1, 2, 6, 10, 11, and 15 under 35 U.S.C. § 103(a) over
`Swimmer and claims 3–5 and 12–14 under § 103(a) over Swimmer and
`
`
`
`4
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`Martin, as well as that relatively weak evidence of secondary considerations
`on the record before us did not overcome the relatively strong evidence of
`obviousness. Dec. to Inst. 17–33. Accordingly, we instituted an inter partes
`review on those grounds. Id. at 34. We also concluded, however, that
`Touboul does not qualify as prior art to the challenged claims, and we
`declined to institute an inter partes review on any other ground. Id. at 9–17,
`34.
`
`Patent Owner now contends we overlooked its request that we
`exercise our discretion to reject the Petition under 35 U.S.C. § 325(d) and
`that our Decision to Institute “‘represents an unreasonable judgment in
`weighing relevant factors’ and therefore, meets the stringent ‘abuse of
`discretion’ standard.” Req. Reh’g 1 (quoting Star Fruits S.N.C. v. United
`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)).
`III. DISCUSSION
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Upon a request for rehearing, the
`decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R.
`§ 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an
`erroneous conclusion of law or clearly erroneous factual findings, or . . . a
`clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties
`Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).
`In relevant part, 35 U.S.C. § 325(d) provides that, “[i]n determining
`whether to institute or order a proceeding under . . . chapter 31, the Director
`
`
`
`5
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`may take into account whether, and reject the petition or request because, the
`same or substantially the same prior art or arguments previously were
`presented to the Office” (emphasis added). As Patent Owner recognizes,
`§ 325(d) provides the Board with the discretion to deny institution of a
`petition for inter partes review in the event that the same or similar prior art
`or arguments previously were presented to the Office. Req. Reh’g 2; see
`Apple, Inc. v. Aylus Networks, Inc., Case IPR2014-01566, slip op. at 8
`(PTAB Apr. 23, 2015) (Paper 10) (exercising discretion under § 325(d) to
`deny a second petition filed by the same petitioner against a subset of the
`claims challenged in earlier petition over the same prior art). Section
`325(d), however, does not compel any particular outcome. See, e.g., Cisco
`Sys., Inc. v. Crossroads Sys., Inc., Case IPR2014-01544, slip op. at 15
`(PTAB Apr, 3, 2015) (Paper 9) (“Denial of a Petition under § 325(d) is
`discretionary, not mandatory.”). Indeed, by using the phrase “may take into
`account,” § 325(d) permits, but does not require, us to take into account
`whether the same or substantially the same prior art or arguments previously
`were presented to the Office, let alone require us to reject a petition on that
`basis. Given that the same panel issued the institution decision in Case
`IPR2015-01892 as in the instant case, we, of course, did take into account
`that Swimmer was previously presented in the former case and did not
`“overlook” Patent Owner’s argument regarding § 325(d). Cf. Req. Reh’g 4–
`6. Although not expressly addressed, it is implicit in our Decision to
`Institute an inter partes review in the instant case that we declined to
`exercise our discretion under § 325(d) in this case.
`We further disagree with Patent Owner’s contention that “relevant
`factors” weigh in favor of denial under § 325(d). Req. Reh’g 6–8. Case
`
`
`
`6
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`IPR2015-01892 was filed by Symantec, which is not a Petitioner in this
`case. Nor is Petitioner a party or an identified privy or real party in interest
`in Case IPR2015-01892. Moreover, at the time we entered our Decision to
`Institute in the instant case, our institution decision in Case IPR2015-01892
`was subject to a pending request for rehearing filed by Patent Owner. Under
`these circumstances, we deemed it appropriate not to exercise our discretion
`under § 325(d) to reject the instant Petition. See T. Rowe Price Inv. Servs.,
`Inc. v. Secure Axcess, LLC, Case CBM2015-00027, slip op. at 3–4 (PTAB
`June 22, 2015) (Paper 9) (declining to exercise discretion under § 325(d) to
`dismiss fourth-filed petition, where petitioner was not a party to any of the
`previous petitions); Square, Inc. v. Protegrity Corp., Case CBM2014-00182,
`slip op. at 7–8 (PTAB Mar. 5, 2015) (Paper 16) (declining to exercise
`discretion under § 325(d) to dismiss second petition, where petitions based
`on the same prior art and based upon substantially the same arguments were
`filed by different petitioners and first proceeding settled prior to issuance of
`a final written decision).
`We also are satisfied that there are sufficient differences in the way
`the prior art has been asserted in the instant case compared with Case
`IPR2015-01892, despite the overlap in the grounds. Whereas we instituted
`review only of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent as
`unpatentable under 35 U.S.C. § 103(a), over Swimmer alone, in Case
`IPR2015-01892; Petitioner in the instant case asserted that claims 3–5 and
`12–14 are unpatentable over the combination of Swimmer and Martin. See
`Samsung Elecs. Am., Inc. v. Smartflash LLC, Case CBM2014-00199, slip
`op. 11–12 (PTAB Mar. 30, 2015) (Paper 9) (declining to exercise discretion
`
`
`
`7
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`under § 325(d) to reject petition asserting anticipation based on the same
`prior art that an earlier petition asserted in an obviousness challenge).
`The legislative history and cases cited by Patent Owner (Req. Reh’g
`6–8) do not compel any different conclusion. See, e.g., Owens Corning v.
`Fast Felt Corp., Case IPR2015-00650, slip op. at 25 (PTAB Aug. 13, 2015)
`(Paper 9) (“The permissive language of § 325(d) does not prohibit instituting
`inter partes review based on arguments previously presented to the
`Office.”); Seagate Tech. (US) Holdings, Inc. v. Enova Tech. Corp., Case
`IPR2014-01178, slip op. at 16 (PTAB Feb. 5, 2014) (Paper 10) (“Given the
`permissive language in this statute, e.g. ‘may,’ we are not required to reject a
`petition simply because certain arguments or art were considered previously
`by the Office, and we decline to do so in this case.”).
`IV. CONCLUSION
`Having considered Patent Owner’s Request for Rehearing in its
`entirety, we are not persuaded that we misunderstood or overlooked
`arguments presented in Patent Owner’s Preliminary Response or that any
`allegedly misapprehended or overlooked matters amounted to an abuse of
`discretion.
`
`V. ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`8
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`For PETITIONER:
`
`Orion Armon
`Jennifer Volk-Fortier
`Max Colice
`Brian Eutermoser
`COOLEY LLP
`oarmon@cooley.com
`jvolkfortier@cooley.com
`mcolice@cooley.com
`beutermoser@cooley.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
`
`
`
`9
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