Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 53
`Entered: July 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`Before ZHENYU YANG, CHARLES J. BOUDREAU, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`Paper 53
`Entered: July 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC. and
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001591
`Patent 8,677,494 B2
`____________
`
`
`Before ZHENYU YANG, CHARLES J. BOUDREAU, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2016-01174 has been joined with the instant proceeding.
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`INTRODUCTION
`
`In a Final Written Decision entered on April 11, 2017, in the
`
`above-captioned inter partes review (Paper 50, “Final Dec.”), we
`
`determined that Palo Alto Networks, Inc. (“PAN”) and Blue Coat Systems
`
`LLC (formerly known as Blue Coat Systems, Inc.2 (“Blue Coat”))
`
`(collectively, “Petitioner”) demonstrated by a preponderance of the evidence
`
`adduced at trial that claims 1, 2, and 6 of U.S. Patent No. 8,677,494 B2 (“the
`
`’494 patent”) are unpatentable under 35 U.S.C. § 103(a) over Morton
`
`Swimmer et al., Dynamic Detection and Classification of Computer Viruses
`
`Using General Behaviour Patterns, Virus Bull. Conf. 75 (Sept. 1995)
`
`(“Swimmer”). Patent Owner, Finjan, Inc., filed a Request for Rehearing.
`
`Paper 52 (“Reh’g Req.”). Patent Owner contends that we misapprehended
`
`the claim language and the prior art in the Final Written Decision, alleging
`
`that “Petitioners failed to disclose an inconsistent opinion from their own
`
`expert that directly contradicts the positions they advanced in this matter,
`
`thereby misleading the Board and flouting their discovery obligations.”
`
`Reh’g Req. 1. Patent Owner requests that we reverse our decision and hold
`
`that claims 1, 2, and 6 of the ’494 patent are patentable. Id. at 2. For the
`
`reasons discussed below, Patent Owner’s Request for Rehearing is denied.
`
`BACKGROUND
`
`PAN and Blue Coat filed petitions requesting inter partes review of
`
`certain claims of the ’494 patent as being unpatentable over Swimmer,
`
`among other references. Paper 2 (Petition filed by PAN, requesting review
`
`
`2 See Paper 30, 1. Blue Coat Systems LLC identified Symantec Corp. as an
`additional real party in interest in this proceeding. Paper 39.
`
`2
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`of claims 1–18 of the ’494 patent on various grounds); IPR2016-01174,
`
`Paper 2 (Petition filed by Blue Coat, requesting review of claims 1–6 and
`
`10–15 of the ’494 patent on various grounds and seeking joinder in the
`
`instant case). We instituted a trial pursuant to 35 U.S.C. § 314(a) with
`
`respect to claims 1–6 and 10–15—including claims 1, 2, 6, 10, 11, and 15 as
`
`being unpatentable over Swimmer—and subsequently joined Case IPR2016-
`
`01174 with the instant case. Paper 8; see also Paper 20 (copy of decision
`
`instituting inter partes review in Case IPR2016-01174 and granting motion
`
`for joinder; also filed as IPR2016-01174, Paper 8). In our Final Written
`
`Decision, we determined that Petitioner demonstrated by a preponderance of
`
`the evidence that claims 1, 2, and 6 are unpatentable over Swimmer. Final
`
`Dec. 20–48, 60–68, 82. In reaching that conclusion, we found, inter alia,
`
`that the claim 1 limitation “deriving security profile data for [a]
`
`Downloadable, including a list of suspicious computer operations that may
`
`be attempted by the Downloadable” was taught by Swimmer, even under
`
`Patent Owner’s implied construction3 of “a list of suspicious computer
`
`operations” as “a list of computer operations deemed suspicious,” based in
`
`part on our finding that the cited portions of Swimmer teach generation of
`
`audit records that include the same types of operations that U.S. Patent No.
`
`6,092,194 (Ex. 1013), incorporated by reference into the ’494 patent, recited
`
`in an “example list of operations deemed potentially hostile.” Id. at 33–35
`
`
`3 As we explained in the Final Written Decision, Patent Owner explicitly
`proposed the referenced construction in IPR2015-01892, and we considered
`and rejected that construction in the final written decision in that case. Final
`Dec. 33 (citing Symantec Corp. v. Finjan, Inc., Case IPR2015-01892, slip
`op. at 8–12 (PTAB Mar. 15, 2017) (Paper 58)).
`
`3
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`(quoting Ex. 1013, 5:50–6:4 (initial capitalization omitted)). In our Final
`
`Written Decision, we also noted both that Patent Owner acknowledged our
`
`explanation in our Decision on Institution that we do not understand the
`
`“deriving” step of claim 1 to require the recited list to consist only of
`
`suspicious computer operations (Final Dec. 35) and that, regardless, we do
`
`not understand Swimmer to register all calls to DOS functions (id. at 36
`
`n.10).
`
`ANALYSIS
`
`“The burden of showing a decision should be modified lies with the
`
`party challenging the decision[,]” which party “must specifically identify all
`
`matters the party believes the Board misapprehended or overlooked, and the
`
`place where each matter was previously addressed in a motion, an
`
`opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`In the Request for Rehearing, Patent Owner contends that “Petitioners
`
`failed to disclose an inconsistent opinion from their own expert that directly
`
`contradicts the positions they advanced in this matter”; that “Petitioners
`
`served an expert report that repeatedly and unequivocally states that a list of
`
`all operations attempted by a downloadable ‘cannot be a “list of suspicious
`
`computer operations”’”; that “Petitioners now expressly renounce the very
`
`arguments they made before this Board”; and that “Petitioners knew all
`
`along that their expert would present a contrary opinion in the District
`
`Court.” Reh’g Req. 1, 2 (underlining added). Notwithstanding Patent
`
`Owner’s use of the plural terms “Petitioners” and “their,” however, Patent
`
`Owner’s proffered evidence consists only of an expert report allegedly
`
`served by Blue Coat. See id. at 3 (asserting that “Petitioner Blue Coat
`
`Systems, Inc.” served a “Rebuttal Expert Report of Dr. Seth Nielson
`
`4
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`Regarding Noninfringement (the ‘Report’) in the underlying action between
`
`Patent Owner and Petitioner Blue Coat Systems”). Patent Owner does not
`
`proffer any evidence that PAN served any report alleged to be similarly
`
`inconsistent with any positions advanced in this matter. Nor does Patent
`
`Owner offer any evidence that PAN was aware of Dr. Neilson’s report
`
`served by Blue Coat prior to the issuance of our Final Written Decision.
`
`Patent Owner has not sufficiently shown on this record that Blue Coat
`
`violated its duty of candor. Even if it had, however, and we further were to
`
`agree that the requested reversal of our conclusion in the Final Written
`
`Decision as to the unpatentability of claims 1, 2, and 6 would potentially be
`
`an appropriate remedy for that violation, we still would not be persuaded
`
`that PAN engaged in any conduct that would justify imposing the same
`
`remedy against PAN.
`
`Although we agree with Patent Owner that the drafting of Dr.
`
`Neilson’s report most likely began before we issued our Final Written
`
`Decision, see Reh’g Req. 2 (“[T]hey surely began drafting the highly
`
`technical, 217-page report long before the Board issued its final written
`
`decision – because they disclosed it just ten days later.”)), we can do no
`
`more than speculate, on the record before us, particularly as to whether the
`
`specific portions of Dr. Neilson’s report alleged by Patent Owner to
`
`contradict positions advanced in this matter were drafted prior to the entry
`
`of our Decision. If a party purposely withheld an expert report with
`
`contradictory testimony until after the issuance of a Board decision, that
`
`would be troubling indeed, and we unequivocally condemn such
`
`gamesmanship in the strongest terms possible. The participants in an inter
`
`partes review are under a continuing duty of duty of candor to the Board.
`
`5
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`See Innolux Corp. v. Semiconductor Energy Lab. Co., Case IPR2013-00028,
`
`Paper 31 at 4 (PTAB May 21, 2013); see also Bayer Cropscience S.A. v.
`
`Syngenta Ltd., Pat. Int. No. 105,255, 2005 WL 3121463, at *4 (BPAI Aug.
`
`16, 2005) (“[L]itigants and their counsel always have a duty of candor
`
`toward the tribunal before which they appear. The PTO relies, and should
`
`be able to rely, upon attorneys registered to practice before it to act in an
`
`honest and forthright manner in their dealings with the PTO. . . . Because of
`
`this very strong duty to be candid and act in good faith before the PTO, there
`
`is, in effect, a presumption that the parties in making arguments and
`
`submitting evidence to the PTO have acted in good faith and in accordance
`
`with the duty of candor.” (citations omitted)). Nonetheless, to establish such
`
`to be the case here would require evidentiary support, which Patent Owner
`
`has not provided.4
`
`Regardless, and of dispositive significance here, we are not persuaded
`
`that we overlooked or misapprehended any matter of consequence in
`
`reaching the conclusions set forth in our Final Written Decision. In
`
`particular, even if we had had the portions of Dr. Neilson’s report filed by
`
`Patent Owner as Exhibit 2050 with its Request for Rehearing, our
`
`conclusions would not have been altered substantively. As explained above,
`
`we were persuaded that Swimmer discloses deriving a list of suspicious
`
`computer operations based on the usage of that term in the specification of
`
`the ’494 patent, including in the related ’194 patent incorporated by
`
`reference therein. See Final Dec. 33–36. And indeed, consistent with the
`
`
`4 To provide such support, Patent Owner likely would have needed
`additional discovery, but no request for this discovery was made.
`
`6
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`very statements in Dr. Neilson’s report that Patent Owner contends are
`
`inconsistent with Petitioner’s position, Petitioner’s counsel argued at the oral
`
`hearing in this case that it is not Petitioner’s position that all MS-DOS
`
`functions—let alone “all operations attempted by a downloadable”—are
`
`“suspicious operations.” Paper 49 (Oral Hearing Transcript), 16:14–18
`
`(JUDGE BOUDREAU: Is it your position that all MS-DOS functions are
`
`suspicious operations? MR ARMON: No, Your Honor, it’s not. I would
`
`agree that if a disclosure focused on capturing literally everything, that
`
`wouldn’t satisfy this limitation.”).
`
`Lastly, because our rules do not authorize the filing or introduction of
`
`new evidence with a request for rehearing, we exercise our authority under
`
`37 C.F.R. § 42.7(a) to expunge Exhibits 2050–2052 filed with Patent
`
`Owner’s Request for Rehearing. See, e.g., Cox Commc’ns, Inc. v. AT&T
`
`Intellectual Prop. I, L.P., Case IPR2015-01227, slip op. at 2 (PTAB Sept.
`
`22, 2016) (Paper 67) (expunging request for rehearing and exhibits filed
`
`therewith).
`
`We accordingly deny Patent Owner’s Request for Rehearing and
`
`order Exhibits 2050–2052 expunged from the record.
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s Request for Rehearing is denied; and
`
`FURTHER ORDERED that Exhibits 2050–2052 are expunged from
`
`the record of this proceeding.
`
`7
`
`
`
`IPR2016-00159
`Patent 8,677,494 B2
`
`For PETITIONER:
`
`Orion Armon
`Brian Eutermoser
`Max Colice
`Jennifer Volk-Fortier
`oarmon@cooley.com
`beutermoser@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`
`
`Michael T. Rosato
`Andrew S. Brown
`Neil N. Desai
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`ndesai@wsgr.com
`
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`8
`
`
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