Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 14
`Entered: January 23, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01441
`Patent 8,225,408 B2
`____________
`
`
`
`
`
`Before JAMES B. ARPIN, PATRICK M. BOUCHER, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`On July 15, 2016, Blue Coat Systems, Inc. (“Petitioner”) filed a
`Petition (Paper 2, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
`inter partes review of claims 2, 8, 11, 24–28, and 30–33 of U.S. Patent No.
`
`

`

`IPR2016-01441
`Patent 8,225,408 B2
`
`8,225,408 (Ex. 1001, “the ’408 patent”). Finjan, Inc. (“Patent Owner”) filed
`a Preliminary Response (Paper 6, “Prelim. Resp.”) on November 18, 2016.
`Pursuant to our authorization, Petitioner filed a Reply (Paper 12, “Reply”),
`and Patent Owner filed a Sur-reply (Paper 11, “Sur-reply”), limited to
`addressing certain issues identified below.
`Based on the particular circumstances of this case, we exercise our
`discretion under 35 U.S.C. §§ 314(a) and 325(d) and do not institute an inter
`partes review of the challenged claims.
`
`
`I. BACKGROUND
`A. The ’408 Patent
`The ’408 patent relates to network security, including scanning
`content that includes “mobile code” to produce a diagnostic analysis of
`potential exploits, such as viruses, within the code. Ex. 1001, col. 1, ll. 19–
`20, col. 1, ll. 59–64. Figure 2 of the ’408 patent is reproduced below.
`
`2
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`IPR2016-01441
`Patent 8,225,408 B2
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`
`
`Figure 2 provides a simplified block diagram of an adaptive rule-based
`content scanner system. Id. at col. 6, ll. 14–17.
`The ’408 patent explains that the adaptive rule-based scanner of
`Figure 2 “is preferably designed as a generic architecture that is language-
`independent, and is customized for a specific language through use of a set
`of language-specific rules.” Id. at col. 6, ll. 17–20. In addition, “security
`violations, referred to as exploits, are described using a generic syntax,
`which is also language-independent.” Id. at col. 6, ll. 28–30. Adaptive rule-
`based scanner 200 includes three main components: (1) tokenizer 210,
`which recognizes and identifies constructs (i.e., “tokens”) within a byte
`source code; (2) parser 220, which controls the process of scanning
`incoming content, such as with a parse tree data structure that represents the
`incoming content; and (3) analyzer 230, which checks for exploits by
`searching for specific patterns of content that indicate an exploit. Id. at
`
`3
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`

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`IPR2016-01441
`Patent 8,225,408 B2
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`col. 6, ll. 50–54, col. 8, ll. 18–27, col. 9, ll. 19–22. Sub-scanner 270 is
`another adaptive rule-based scanner used to scan a subsection of input being
`processed by scanner 200. Id. at col. 9, ll. 7–8. Pattern matching engine 260
`performs pattern matching for both parser 220 and analyzer 230, such as by
`accepting an input list of regular-expression elements describing a pattern of
`interest and an input list of nodes from the parse tree to be matched against
`the pattern of interest, and outputting a Boolean flag indicating whether a
`pattern is matched. Id. at col. 9, ll. 44–58.
`Using a “scanner factory,” such adaptive rule-based scanners may be
`produced “on demand” for different types of content. Id. at col. 15,
`ll. 15–16. The scanner factory “instantiates” a scanner repository, which
`produces a single instance of multiple scanners, such as “a scanner for
`HTML content, a scanner for JavaScript content, and a scanner for URI
`content,” each “able to initialize itself and populate itself with the requisite
`data.” Id. at col. 15, ll. 34–41. When content is downloaded, a pool of
`thread objects is created and stores the scanner-factory instance as member
`data. Id. at col. 15, ll. 53–55. When a thread object has content to parse, it
`requests an appropriate scanner from its scanner-factory object; when the
`thread finishes scanning the content, it returns the scanner instance to its
`scanner factory, “to enable pooling the [adaptive rule-based] scanner for
`later re-use.” Id. at col. 15, ll. 56–63.
`
`
`B. Illustrative Claim
`All of the challenged claims are dependent claims. Independent
`claim 1, from which challenged claims 2 and 8 depend, is illustrative of the
`claims at issue and is reproduced below.
`
`4
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`

`

`IPR2016-01441
`Patent 8,225,408 B2
`
`
`1. A computer processor-based multi-lingual method for
`scanning incoming program code, comprising:
`receiving, by a computer, an incoming stream of program
`
`code;
`
`determining, by the computer, any specific one of a
`plurality of programming languages in which the incoming
`stream is written;
`instantiating, by the computer, a scanner for the specific
`programming language, in response to said determining, the
`scanner comprising parser rules and analyzer rules for the
`specific programming language, wherein the parser rules define
`certain patterns in terms of tokens, tokens being lexical
`constructs for the specific programming language, and wherein
`the analyzer rules identify certain combinations of tokens and
`patterns as being indicators of potential exploits, exploits being
`portions of program code that are malicious;
`identifying, by the computer, individual tokens within the
`incoming stream;
`dynamically building, by the computer while said
`receiving receives the incoming stream, a parse tree whose nodes
`represent tokens and patterns in accordance with the parser rules;
`dynamically detecting, by the computer while said
`dynamically building builds the parse tree, combinations of
`nodes in the parse tree which are indicators of potential exploits,
`based on the analyzer rules; and
`indicating, by the computer, the presence of potential exploits
`within the incoming stream, based on said dynamically detecting.
`Id. at col. 19, l. 45–col. 20, l. 7.
`
`
`C. References
`Petitioner relies on the following references. Pet. 3–9.
`Chandnani
`US 2002/0073330 A1
`June 13, 2002
`Kolawa
`US 5,860,011
`Jan. 12, 1999
`Huang
`US 6,968,539 B1
`Nov. 22, 2005
`Walls
`US 7,284,274 B1
`Oct. 16, 2007
`
`Ex. 1007
`Ex. 1008
`Ex. 1010
`Ex. 1011
`
`5
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`IPR2016-01441
`Patent 8,225,408 B2
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`
`Donald E. Knuth, On the Translation of Languages from Left to Right, 8
`INFORMATION AND CONTROL 607 (1965) (“Knuth”) (Ex. 1009).
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges claims 2, 8, 11, 24–28, and 30–33 under 35
`U.S.C. § 103(a) over the following combinations of references. Pet. 13.
`
`
`References
`Chandnani, Kolawa, and Knuth
`Chandnani, Kolawa, and Huang
`Chandnani, Kolawa, Knuth, and Walls
`Chandnani, Kolawa, Huang, and Walls
`
`Claim(s)
`2, 11, 24–28, and 30–34
`8
`2, 11, 24–28, and 30–34
`8
`
`
`
`E. Related Proceedings
`The parties identify the following district-court proceedings as
`involving the ’408 patent: Finjan, Inc. v. Blue Coat Sys., Inc., No. 5-15-cv-
`03295 (N.D. Cal.); Finjan, Inc. v. Palo Alto Networks, Inc., No. 3-14-cv-
`04908 (N.D. Cal.); Finjan, Inc. v. FireEye, Inc., No. 4-13-cv-03113 (N.D.
`Cal.). Pet. 11; Paper 3, 1. Petitioner additionally identifies Finjan, Inc. v.
`Proofpoint, Inc., No. 3-13-cv-05808 (N.D. Cal.) as involving the ’408
`patent. Pet. 11.
`Petitions for inter partes review of the ’408 patent were filed in
`IPR2016-00967 and IPR2016-00970. Both of those proceedings were
`terminated prior to institution in response to a joint request for termination
`by the parties involved. Proofpoint, Inc., and Armorize Techs., Inc. v.
`Finjan, Inc., Case IPR2016-00967 (PTAB June 24, 2016) (Paper 11); Paper
`3, 1.
`
`6
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`IPR2016-01441
`Patent 8,225,408 B2
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`
`In addition, a third party, Palo Alto Networks, Inc., filed petitions for
`inter partes review of the ’408 patent in IPR2015-02001 and IPR2016-
`00157. Those proceedings were consolidated, and review was instituted
`with respect to claims 1, 3–7, 9, 12–16, 18, 19, 20–23, 29, and 35. Palo Alto
`Networks, Inc. v. Finjan, Inc., Case IPR2015-02001, slip op. at 24 (PTAB
`Mar. 29, 2016) (Paper 7). Petitioner filed petitions for inter partes review of
`the ’408 patent in IPR2016-00955 and IPR2016-00956 with respective
`joinder requests to IPR2015-02001 and IPR2016-00157. Those joinder
`requests were granted. Blue Coat Sys., Inc. v. Finjan, Inc., Case IPR2016-
`00955, slip op. at 6–7 (PTAB Aug. 30, 2016) (Paper 12). We refer below to
`the proceeding that resulted from IPR2015-02001, IPR2016-00157,
`IPR2016-00955, and IPR2016-00956 as the “related proceeding.” Petitioner
`is a party to the related proceeding as a consequence of granting its motions
`for joinder in IPR2016-00955 and IPR2016-00956.
`
`
`II. ANALYSIS
`In its Preliminary Response, Patent Owner raises a number of
`procedural bases on which it contends we should deny institution: (1)
`mootness under 35 U.S.C. § 315(e)(1) because “Petitioner will be estopped
`from maintaining this proceeding upon the issuance of [a] Final Written
`Decision[] in [the related proceeding,] and to which Petitioner, Blue Coat,
`Inc., is a party” (Prelim. Resp. 8–10); (2) the Board’s discretion under 35
`U.S.C. § 325(d) because “the Petition recycles substantially the same prior
`art and substantially the same arguments that were already presented to the
`Patent Office in [the related proceeding]” (id. at 10–15); (3) the Petition
`insufficiently identifies the claims challenged as required by 35 U.S.C.
`
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`IPR2016-01441
`Patent 8,225,408 B2
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`§ 312(a)(3) (id. at 17–20); (4) Petitioner failed to pay the full fees required
`under 35 U.S.C. § 312(a)(1) (id. at 20–22); and (5) the Petition fails to
`identify all real parties in interest as required by 35 U.S.C. § 312(a)(2) (id. at
`22–23). We authorized the parties to address “the estoppel aspects” of
`Patent Owner’s arguments under 35 U.S.C. §§ 312, 315(e)(1), and 325(d) in
`the Reply and Sur-reply, as well as to address the impact of the fee
`deficiency in the event that an attempt to correct an apparent error by the
`Office in confirming the correct fees did not resolve that issue. Paper 7, 1, 2.
`Because we exercise our discretion under 35 U.S.C. § 325(d) to deny the
`Petition, we do not reach the remaining issues.
` Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108. Panels of the Board have considered a variety
`of factors in deciding whether to exercise discretion not to institute review,
`including, inter alia:
`(1) the finite resources of the Board;
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than one year after the date on which the
`Director notices institution of review;
`
`
`(3) whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`
`
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`IPR2016-01441
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`(4) whether, at the time of filing the earlier petition, the petitioner
`knew of the prior art asserted in the later petition or should have
`known of it1;
`
`
`(5) whether, at the time of filing the later petition, the petitioner
`already received the patent owner’s preliminary response to the
`earlier petition or received the Board’s decision on whether to
`institute review in the earlier petition2;
`
`
`(6) the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the later petition and the filing of
`the later petition;
`
`
`(7) whether the petitioner provides adequate explanation for the time
`elapsed between the filing dates of multiple petitions directed to
`the same claims of the same patent; and
`
`
`(8) whether the same or substantially the same prior art or arguments
`previously were presented to the Office.3
`
`
`
`
`1 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op.
`at 4 (PTAB Dec. 10, 2014) (Paper 25) (informative) (“Conopco”); Conopco,
`Inc. v. Proctor & Gamble Co., Case IPR2014-00506, slip op. at 6 (PTAB
`July 7, 2014) (Paper 17); Toyota Motor Corp. v. Cellport Sys., Inc., Case
`IPR2015-01423, slip op. at 8 (PTAB Oct. 28, 2015) (Paper 7) (“Toyota
`Motor Corp.”).
`2 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628, slip op.
`at 11 (PTAB Oct. 20, 2014) (Paper 21) (discouraging filing of a first petition
`that holds back prior art for use in later challenges against the same patent if
`the first petition is denied); Toyota Motor Corp., slip op. at 8 (“[T]he
`opportunity to read Patent Owner’s Preliminary Response in IPR2015-
`00634, prior to filing the Petition here, is unjust.”).
`3 See 35 U.S.C. § 325(d) (“In determining whether to institute or order a
`proceeding under . . . chapter 31 [providing for inter partes review], the
`Director 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.”).
`
`9
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`IPR2016-01441
`Patent 8,225,408 B2
`
`See LG Electronics Inc. v. Core Wireless Licensing S.A.R.L., Case IR2016-
`00986, slip op. at 6–7 (PTAB Aug. 22, 2016) (Paper 12) (“LG Elecs.”);
`NVIDIA Corp. v. Samsung Elec. Co., Case IPR2016-00134, slip op. at 6–7
`(PTAB May 4, 2016) (Paper 9); Unified Patents, Inc. v. PersonalWeb
`Techs., LLC, Case IPR2014-00702, slip op. at 7–9 (PTAB July 24, 2014)
`(Paper 13); see also Amendments to the Rules of Practice Before the Patent
`Trial and Appeal Board, 81 Fed. Reg. 18,750, 18,759 (Apr. 1, 2016) (“[T]he
`current rules provide sufficient flexibility to address the unique factual
`scenarios presented to handle efficiently and fairly related proceedings
`before the Office on a case-by-case basis, and that the Office will continue
`to take into account the interests of justice and fairness to both petitioners
`and patent owners where multiple proceedings involving the same patent
`claims are before the Office.”). These factors guide our decision to exercise
`discretion, but not all factors need be present, and we need not give equal
`weight to each factor in reaching our decision.
`As noted above, the Petition is the seventh petition filed against the
`’408 patent, and Petitioner is a party to the related proceeding, which is in an
`advanced stage that includes having conducted an oral hearing on January 5,
`2017. See Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2015-02001,
`Paper 8 (Scheduling Order). Several of the factors summarized above are
`implicated by the relationship of this proceeding with the related proceeding.
`With respect to the third factor, the claims challenged in the instant
`Petition (i.e., claims 2, 8, 11, 24–28, and 30–33) differ from those
`challenged in the related proceeding (i.e., claims 1, 3–7, 9, 12–16, 18, 19,
`20–23, 29, and 35). This fact alone does not weigh compellingly in favor of
`institution. Ford Motor Co. v. Paice LLC, Case IPR2015-00767, slip op. at
`
`10
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`

`IPR2016-01441
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`7 (PTAB Aug. 18, 2015) (Paper 14) (“[T]he express language of 35 U.S.C.
`§ 325(d) does not mention claims as being a factor in deciding whether to
`institute trial. Rather, 35 U.S.C. § 325(d) is concerned only with whether a
`petition presents ‘the same or substantially the same prior art or
`arguments.’”). Furthermore, because each of the claims challenged in the
`instant Petition depends from a claim challenged in the related proceeding,
`consideration of the Petition necessarily requires consideration of claims
`already challenged in the related proceeding. See Pet. 16–40 (analysis of
`unchallenged independent claims 1, 9, 23, and 29); see generally 37 C.F.R.
`§ 42.15(a)(4) (fee for challenging dependent claims requires payment for
`“unchallenged claims from which a challenged claim depends”).
`Consideration of the fourth, sixth, and eighth factors is impacted by
`the essential similarity of the prior art used for the challenges in the instant
`Petition and for the challenges in the related proceeding, particularly against
`the underlying independent claims. The challenges to underlying
`independent claims 1, 9, 23, and 29 in the related proceeding are made under
`35 U.S.C. § 103(a) over U.S. Patent No. 7,636,945 B2 (Ex. 3001, “the ’945
`patent”) and Kolawa, and over the ’945 patent, Kolawa, and Walls. Palo
`Alto Networks, Inc. v. Finjan, Inc., Case IPR2015-02001, slip op. at 24
`(PTAB Mar. 29, 2016) (Paper 7). The ’945 patent differs from Chandnani
`only in immaterial respects: Chandnani is the published version of U.S.
`Patent Appl. No. 09/905,343 (“the ’343 application”) and the ’945 patent is
`the patent that issued from the ’343 application. Compare Ex. 1007, [21]
`with Ex. 3001, [21]. The Petition’s underlying challenges to claims 1, 9, 23,
`and 29 under 35 U.S.C. § 103(a) over Chandnani and Kolawa, and over
`Chandnani, Kolawa, and Walls, thus, are essentially identical. See Pet. 16–
`
`11
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`IPR2016-01441
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`40. Indeed, Petitioner acknowledges that “[t]his Petition presents essentially
`the same disclosure and arguments for those independent claims.” Id. at 1.
`Knuth is the only reference not applied in any challenge in the related
`proceeding. But Knuth is a journal article published more than forty years
`ago, and Petitioner articulates no reason why it was not or should not have
`been known to, or available to, Petitioner at the time of filing IPR2016-
`00955 and IPR2016-00956. See Conopco at 6 (denying a petition for inter
`partes review because the petitioner “present[ed] no argument or evidence
`that the several newly cited references were not known or available to it at
`the time of filing of the [earlier] Petition”).
`With respect to the fifth and seventh factors, we observe that, at the
`time of filing the instant Petition on July 15, 2016, Patent Owner had filed
`its Preliminary Responses in both IPR2015-02001 and IPR2016-00157, and
`the Board had issued its Institution Decision some months previously. See
`IPR2015-02001, Paper 6 (Preliminary Response filed January 6, 2016),
`Paper 7 (Institution Decision entered March 29, 2016); IPR2016-00157, 9
`(Preliminary Response filed February 17, 2016), Paper 10 (Institution
`Decision entered March 29, 2016). Indeed, even when Petitioner filed its
`petitions in IPR2016-00955 and IPR2016-00956 on April 27, 2016, the
`Board already had issued its Institution Decision in IPR2015-02001 and
`
`12
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`IPR2016-01441
`Patent 8,225,408 B2
`
`IPR2016-00157. See IPR2016-00955, Paper 2; IPR2016-00956, Paper 2.4
`Petitioner articulates insufficient reason why it did not or could not have
`included challenges to dependent claims 2, 8, 11, 24–28, and 30–33 in or
`with those petitions.
`Petitioner contends that it “could not reasonably” have done so
`“because doing so would have raised issues not present in [IPR2015-02001
`and IPR2016-00157] and jeopardized [Petitioner’s] joinder requests.” Pet.
`14. We are not persuaded by this contention. Rather, we agree with Patent
`Owner that “Petitioner was not compelled to request joinder with either one
`of these proceedings.” Prelim. Resp. 14. Petitioner identifies no statutory or
`regulatory hurdle that would have prevented it from forgoing joinder with
`the other proceedings and instead seeking institution of inter partes review
`on the full claim set it wished to challenge. Further, on these facts, the lack
`of a joinder request would not have prevented the Board from consolidating
`related proceedings. See 35 U.S.C. § 315(d). Nor does Petitioner identify
`any basis (beyond the time limit for requesting joinder under 37 C.F.R.
`§ 42.122(b)) that required early filing of its petitions in IPR2016-00955 and
`IPR2016-00956, rather than at the time it was prepared to present its full
`challenges, including those directed at the additional dependent claims.
`
`
`4 The Motion for Joinder in IPR2016-00955 was filed concurrently with the
`respective petition, but the Motion for Joinder in IPR2016-00956 was filed
`untimely on August 1, 2016. See IPR2016-00955, Paper 3; IPR2016-00956,
`Paper 12. Because the record evidenced an intention by Petitioner to file the
`Motion for Joinder concurrently with its respective petition in IPR2016-
`00956, the Board excused the untimeliness of the filing. Blue Coat Sys., Inc.
`v. Finjan, Inc., IPR2015-00955, slip op. at 4–5 (PTAB Aug. 30, 2016)
`(Paper 14).
`
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`IPR2016-01441
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`
`Petitioner’s decision to limit the scope of its earlier challenges
`appears, instead, to have been a tactical one meant to improve its likelihood
`of success in joining IPR2015-02001 and IPR2016-00157. Thus, it is
`appropriate to consider the harassing impact that the resulting piecemeal
`challenges have on Patent Owner in defending its patent. See ZTE Corp. v.
`ContentGuard Holdings, Inc., Case IPR2013-00454, slip op. at 5–6 (PTAB
`Sept. 25, 2013) (Paper 12) (“The Board is concerned about encouraging,
`unnecessarily, the filing of petitions which are partially inadequate.”);
`Butamax Advanced Biofuels LLC v. Gevo, Inc., Case IPR2014-00581, slip
`op. at 12–13 (PTAB Oct. 14, 2014) (Paper 8) (“Allowing similar, serial
`challenges to the same patent, by the same petitioner, risks harassment of
`patent owners and frustration of Congress’s intent in enacting the Leahy-
`Smith America Invents Act.” (citing H.R. Rep. No. 112-98, pt. 1, at 48
`(2011))).
`These various considerations also inform our consideration of the first
`and second factors. “The Board’s resources would be more fairly expended
`on initial petitions, rather than on follow-on petitions, such as the Petition in
`this case.” Alarm.com Inc. v. Vivint, Inc., Case IPR2016-01091, slip op.
`at 13 (PTAB Nov. 23, 2016) (Paper 11) (emphases added).
`After weighing the factors identified above, we conclude that those
`factors weigh against instituting inter partes review based on the instant
`Petition.
`
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`IPR2016-01441
`Patent 8,225,408 B2
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`
`III. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
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`IPR2016-01441
`Patent 8,225,408 B2
`
`PETITIONER
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`Email: mrosato@wsgr.com
`
`
`
`PATENT OWNER
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`Email jhannah@kramerlevin.com
`
`
`16
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`