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 921 0 1
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www .uspto.gov
`
`~~OfLrEW
`JUL 2 5 "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.
`
`PALO ALTO NETWORKS Exhibit 1017 Page 1
`
`

`
`Reexamination Control No. 90/013,017
`
`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 3 7 CFR 1. 78( e).
`
`A petition for acceptance of a claim for late priority under 3 7 CFR § I. 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:
`
`(1)
`
`(2)
`(3)
`
`the reference required by 35 U.S.C. § 120 and 37 CFR §1.78(d)(2) ofthe prior(cid:173)
`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 3 7
`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.
`
`3 7 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 be.nefit of priority under 35
`U.S.C. § 120 is accepted as being unintentionally delayed.
`
`The granting of the petition to accept the delaved benefit claim to the prior-tiled applications
`under 37 CFR § 1. 78(e) should not be construed as meaning that this application is entitled to
`the benefit o(tlte filing date ofthe prior-tiled applications. In order [or this application to be
`entitled to the benefit ofthe prior-tiled applications. all other requirements under 35 U.S. C.
`§120 and under 1. 78 must be met. Similarlv. 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 [or benefit o(prioritv to tlte prior(cid:173)
`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 o(the earlier
`filing date.
`
`A corrected Filing Receipt, which includes the priority claim to the prior-filed applications,
`accompanies this decision on petition.
`
`PALO ALTO NETWORKS Exhibit 1017 Page 2
`
`

`
`Reexamination Control No. 90/013,017
`
`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.
`
`Pinchus M. Laufer
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`ATTACHMENT : Corrected Filing Receipt
`
`July 24, 2014
`
`PALO ALTO NETWORKS Exhibit 1017 Page 3