Trials@uspto.gov
`571-272-7822
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` Paper No. 13
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` Filed: January 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BLUE COAT SYSTEMS LLC,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01443
`Patent 8,677,494 B2
`____________
`
`
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`

`

`IPR2016-01443
`Patent 8,677,494 B2
`
`
`I. INTRODUCTION
`
`Blue Coat Systems, Inc., now known as Blue Coat Systems LLC,1
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting inter partes review
`pursuant to 35 U.S.C. § 311 of claims 7–9 and 16–18 of U.S. Patent
`No. 8,677,494 B2 (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`With leave from the Board, Petitioner subsequently filed a Reply, limited to
`addressing arguments in the Preliminary Response that the Petition is
`procedurally barred under 35 U.S.C. §§ 312, 315(e)(1), and 325(d) (Paper 7,
`“Reply”), and Patent Owner filed a Sur-Reply (Paper 8, “Sur-Reply”)
`responsive to Petitioner’s Reply.
`Based on the particular circumstances of this case, we exercise our
`discretion under 37 C.F.R. § 42.108 and do not institute an inter partes
`review of the challenged claims.
`
`II. BACKGROUND
`
`A. The ’494 Patent
`
`The ’494 patent, titled “Malicious Mobile Code Runtime Monitoring
`System and Methods,” issued March 18, 2014, from U.S. Patent Application
`No. 13/290,708 (“the ’708 application”), filed November 7, 2011. Ex. 1001,
`[21], [22], [45], [54]. On its face, the ’494 patent purports to claim priority
`from nine earlier applications, of which the earliest-filed is U.S. Provisional
`Application No. 60/030,639, filed November 8, 1996 (Ex. 1002, “the ’639
`application”). We need not make a determination on this record whether or
`
`
`1 See Paper 9, 1.
`
`2
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`IPR2016-01443
`Patent 8,677,494 B2
`
`not the challenged claims are entitled to the benefit of the filing dates of any
`of those earlier applications.
`The ’494 patent describes protection systems and methods “capable of
`protecting a personal computer (‘PC’) or other persistently or even
`intermittently network accessible devices or processes from harmful,
`undesirable, suspicious or other ‘malicious’ operations that might otherwise
`be effectuated by remotely operable code.” Ex. 1001, 2:51–56. “Remotely
`operable code that is protectable against can include,” for example,
`“downloadable application programs, Trojan horses and program code
`groupings, as well as software ‘components’, such as Java™ applets,
`ActiveX™ controls, JavaScript™/Visual Basic scripts, add-ins, etc., among
`others.” Id. at 2:59–64.
`
`B. Related Proceedings
`
`The parties report that the ’494 patent is the subject of a district court
`action between the parties, Finjan, Inc. v. Blue Coat Systems, Inc., No. 5:15-
`cv-03295 (N.D. Cal. 2015), and that the ’494 patent also has been asserted in
`four other district court actions, Finjan, Inc. v. Sophos, Inc., No. 3:14-cv-
`01197 (N.D. Cal. 2014), Finjan, Inc. v. Symantec Corp., No. 3:14-cv-02998
`(N.D. Cal. 2014), Finjan, Inc. v. Palo Alto Networks, Inc., No. 3:14-cv-
`04908 (N.D. Cal. 2014), and Finjan, Inc. v. Cisco Systems Inc., No. 17-cv-
`00072 (N.D. Cal. 2017). Pet. 15; Paper 4, 1; Paper 10, 1.
`The ’494 patent also is the subject of Case IPR2015-01892, in which
`trial was instituted with respect to claims 1, 2, 5, 6, 10, 11, 14, and 15 on a
`petition filed by Symantec Corporation; and Case IPR2016-00159, in which
`trial was been instituted with respect to claims 1–6 and 10–15 on a petition
`
`3
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`Patent 8,677,494 B2
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`filed by Palo Alto Networks, Inc. Symantec Corp. v. Finjan, Inc., Case
`IPR2015-01892 (PTAB Mar. 18, 2016) (Paper 9) (“Symantec Dec. on
`Inst.”); Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2016-00159
`(PTAB May 13, 2016) (Paper 8) (“PAN Dec. on Inst.”).
`Petitioner previously filed two additional petitions for inter partes
`review of the ’494 patent, in Cases IPR2016-00890 and IPR2016-01174,
`accompanied by motions for joinder with the ongoing inter partes reviews
`initiated by Symantec Corporation and Palo Alto Networks, Inc. in Cases
`IPR2015-01892 and IPR2016-00159, respectively. Blue Coat Sys., Inc. v.
`Finjan, Inc., Case IPR2016-00890, Paper 2 (challenging claims 1, 2, 5, 6,
`10, 11, 14, and 15), Paper 3 (requesting to join Case IPR2015-01892); Blue
`Coat Sys., Inc. v. Finjan, Inc., Case IPR2016-01174, Paper 2 (challenging
`claims 1–6 and 10–15), Paper 3 (requesting to join Case IPR2016-00159).
`We instituted trial on both of Petitioner’s previous petitions and granted both
`motions for joinder. Blue Coat Sys., Inc. v. Finjan, Inc., Case IPR2016-
`00890 (PTAB Aug. 30, 2016) (Paper 8); Blue Coat Sys., Inc. v. Finjan, Inc.,
`Case IPR2016-01174 (PTAB Oct. 4, 2016) (Paper 8).
`The ’494 patent also was the subject of two other petitions, both of
`which were denied. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022
`(PTAB Sept. 24, 2015) (Paper 7); Symantec Corp. v. Finjan, Inc., Case
`IPR2015-01897 (PTAB Feb. 26, 2016) (Paper 7).
`
`C. Illustrative Claims
`
`None of the challenged claims is independent; rather, each of
`challenged claims 7–9 depends from unchallenged independent claim 1, and
`each of challenged claims 16–18 depends from unchallenged independent
`
`4
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`IPR2016-01443
`Patent 8,677,494 B2
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`claim 10. Challenged claims 7–9 are illustrative and are reproduced below
`with unchallenged independent claim 1 also reproduced for context:
`1. A computer-based method, comprising the steps of:
`receiving an incoming Downloadable;
`deriving security profile data for the Downloadable, including a list of
`suspicious computer operations that may be attempted by the
`Downloadable; and
`storing the Downloadable security profile data in a database.
`
`7. The computer-based method of claim 1 wherein the Downloadable
`security profile data includes a URL from where the Downloadable
`originated.
`
`8. The computer-based method of claim 1 wherein the Downloadable
`security profile data includes a digital certificate.
`
`9. The computer-based method of claim 1 wherein said deriving
`Downloadable security profile data comprises disassembling the
`incoming Downloadable.
`
`Ex. 1001, 21:19–25, 21:38–22:6. Challenged claims 16–18 recite limitations
`similar to claims 7–9, respectively. Id. at 22:31–38.
`
`D. References Relied Upon
`
`Petitioner relies on the following references:
`
`Exhibit Reference
`1005 Morton Swimmer et al., Dynamic Detection and Classification of
`Computer Viruses Using General Behaviour Patterns, Virus
`Bull. Conf. 75 (Sept. 1995) (“Swimmer”)
`1006 US 5,983,348, issued Nov. 9, 1999 (filed Sept. 10, 1997) (“Ji”)
`1007 Luotonen et al., World-Wide Web Proxies, 27 Comput. Networks
`& ISDN Sys. 147 (1994) (“Luotonen”)
`
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`Patent 8,677,494 B2
`
`Exhibit Reference
`1008 US 5,978,484, issued Nov. 2, 1999 (filed Apr. 25, 1996)
`(“Apperson”)
`1009 Lo et al., Towards a Testbed for Malicious Code Detection
`(1991) (“Lo”)2
`
`Pet. 18–48. Petitioner also relies on declarations of Azer Bestavros, Ph.D.
`(Ex. 1002) and Sylvia Hall-Ellis, Ph.D. (Ex. 1024). Patent Owner relies on a
`declaration of Nenad Medvidovic, Ph.D. (Ex. 2007).
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the challenged claims on the
`following grounds:
`
`Claims Challenged
`7 and 16
`7 and 16
`
`Basis
`References
`35 U.S.C. § 103(a)
`Swimmer and Ji
`Swimmer and Luotonen 35 U.S.C. § 103(a)
`
`2 Grounds asserted in an inter partes review must be based on “patents or
`printed publications” (35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2)).
`Although Exhibit 1009 includes the notation “CH2961-1/91/0000/0160
`$01.00 © 1991 IEEE” at the bottom of its first page, apparently indicating a
`claim of a 1991 copyright date, we note that the exhibit does not include any
`publication information. The Board previously has found that a copyright
`notice alone may not be sufficient to establish that a reference was publicly
`accessible—and, thus, a “printed publication” for purposes of inter partes
`review—as of the critical date. See, e.g., TRW Auto. US LLC v. Magna
`Elecs. Inc., Case IPR2015-00960, slip op. at 18–19 (PTAB Oct. 5, 2015)
`(Paper 9); ServiceNow v. Hewlett-Packard Co., Case IPR2015-00707, slip
`op. at 17 (PTAB Aug. 26, 2015) (Paper 12); but see Ericsson, Inc. v.
`Intellectual Ventures I LLC, Case IPR2014-00527, 2015 WL 2409306, at *6
`(PTAB May 18, 2015). Because we deny the Petition for other reasons, we
`do not decide whether Petitioner has established on this record that Lo is a
`printed publication.
`
`6
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`IPR2016-01443
`Patent 8,677,494 B2
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`
`Basis
`References
`Swimmer and Apperson 35 U.S.C. § 103(a)
`Swimmer and Lo
`35 U.S.C. § 103(a)
`
`Claims Challenged
`8 and 17
`9 and 18
`
`Pet. 17.
`
`III. DISCUSSION
`
`Patent Owner raises four procedural bases on which it contends that
`we should deny the Petition, namely that (1) the Petition is moot 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 Case No.
`IPR2015-01892 or [Case No.] IPR2016-00159, . . . to which Petitioner . . . is
`a party” (Prelim. Resp. 6–9); (2) the Petition should be rejected under
`35 U.S.C. § 325(d) for “recycl[ing] substantially the same prior art and
`substantially the same arguments that were already presented to the Patent
`Office in Cases Nos. IPR2016-00890 and IPR2016-01147 [sic]” 3 (Prelim.
`Resp. 9–14); (3) the Petition is barred under 35 U.S.C. § 315(b) “because a
`real party in interest was served with a complaint for infringement of the
`’494 Patent more than one year before the filing date of the Petition”
`(Prelim. Resp. 14–15); and (4) “[t]he Petition is incomplete and cannot be
`considered under 35 U.S.C. § 312(a)(3)” (Prelim. Resp. 15–16). Because we
`exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition, we do
`not reach the remaining issues.
`
`
`3 Patent Owner refers here and elsewhere in the Preliminary Response to
`“Case No. IPR2016-01147.” See Prelim. Resp. 1, 9, 10, 13. We understand
`all such references to refer instead to Case IPR2016-01174, which, as noted
`above, was filed by Petitioner and joined with Case IPR2016-00159.
`
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`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;
`(4) whether, at the time of filing of the earlier petition, the petitioner
`knew of the prior art asserted in the later petition or should have
`known of it;4
`(5) whether, at the time of filing of the later petition, the petitioner
`already received the patent owner’s preliminary response to the
`
`
`4 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.”).
`
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`
`earlier petition or received the Board’s decision on whether to
`institute review in the earlier petition;5
`(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.6
`See LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-
`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 for Trials Before
`the Patent Trial and Appeal Board, 81 Fed. Reg. 18750, 18759 (Apr. 1,
`2016) (“[T]he current rules provide sufficient flexibility to address the
`
`
`5 See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628, slip op.
`at 11 (PTAB October 20, 2014) (Paper 21) (discouraging filing of a first
`petition that holds back prior art for use in later attacks 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.”).
`6 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.”).
`
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`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.
`With these factors in mind and for the reasons that follow, we exercise
`our discretion and do not institute a review based on the instant Petition.
`As noted above, the instant Petition is the seventh petition filed
`against the ’494 patent, and Petitioner is a party to two of the related
`proceedings, both of which are in an advanced stage. An oral hearing was
`conducted in joined Cases IPR2015-01892 and IPR2016-00890 on
`December 16, 2016, and an oral hearing in joined Cases IPR2016-00159 and
`IPR2016-01174 is scheduled for February 16, 2017. See Symantec Corp. v.
`Finjan, Inc., Case IPR2015-01892, Paper 56 (Hearing Transcript); Palo Alto
`Networks, Inc. v. Finjan, Inc., Case IPR2016-00159, Paper 9, 7 (Scheduling
`Order). Several of the factors summarized above are implicated by the
`relationship of this proceeding with those related proceedings.
`With respect to the third factor, Petitioner contends that the claims
`challenged in the instant Petition (i.e., claims 7–9 and 16–18) differ from
`those challenged in the related proceedings (i.e., claims 1, 2, 5, 6, 10, 11, 14,
`and 15 in joined Cases IPR2015-01892 and IPR2016-00890; and claims 1–6
`and 10–15 in joined Cases IPR2016-00159 and IPR2016-01174). See, e.g.,
`Pet. 16–17. Nevertheless, this fact alone does not weigh compellingly in
`favor of institution. See Ford Motor Co. v. Paice LLC, Case IPR2015-
`
`10
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`00767, slip op. at 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 each of
`the related proceedings, consideration of the Petition necessarily requires
`consideration of claims already challenged in the related proceedings. See
`Pet. 18–29 (analysis of unchallenged independent claims 1 and 10); 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 proceedings, particularly
`against the underlying independent claims. The challenges to underlying
`independent claims 1 and 10 in the related proceedings are made under
`35 U.S.C. § 103(a) over Swimmer. Symantec Dec. on Inst. 34; PAN Dec.
`on Inst. 34. The Petition’s underlying challenges to claims 1 and 10, thus,
`are substantially identical. See Pet. 18–29. Indeed, Petitioner acknowledges
`that “[t]his Petition presents essentially the same disclosure and arguments
`for those independent claims.” Id. at 1.
`Moreover, Petitioner does not allege that the additionally cited
`references—Ji, Luotonen, Apperson, and Lo— previously were unknown to
`it. Although those references are not applied in either Case IPR2015-01892
`or Case IPR2016-00159, each of Ji, Apperson, and Lo appears in the
`
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`
`“References Cited” section of the ’494 patent. Ex. 1001, [56]. Indeed, Ji
`was cited twice by the Examiner as an anticipatory reference during
`prosecution of the challenged claims (Ex. 1004 (’494 patent file history),
`814, 864), and was overcome as prior art by a declaration under 37 C.F.R.
`§ 1.131 from co-inventor Shlomo Touboul (id. at 288–89);7 and Apperson
`previously was cited in a petition for inter partes review of a related patent
`filed September 11, 2015, more than ten months before the instant Petition.
`Symantec Corp. v. Finjan, Inc., Case IPR2015-01894 (Paper 1). Moreover,
`Luotonen is a journal article published more than twenty years ago, and
`Petitioner articulates no reason why it was not or should not have been
`known or available to Petitioner at the time of filing Cases IPR2016-00890
`and IPR2016-01174. See Conopco at 6 (denying a petition for inter partes
`review because the petitioner “present[ed] no argument or evidence that the
`
`
`7 We acknowledge Petitioner’s contention that Mr. Touboul’s declaration
`did not address expressly certain claims, including challenged claims 7 and
`16, and does not present sufficient antedating evidence with respect to any
`claim of the ’494 patent. Pet. 6–7. Petitioner’s contentions are unpersuasive
`with respect to the challenged claims, however. As Patent Owner points out
`in the Preliminary Response, the portion of Ji cited by Petitioner is directed
`explicitly to the very product referenced in the inventor’s declaration as
`embodying his invention, and, thus, supports his claim of prior conception
`and reduction to practice of at least the limitations of claims 7 and 16 for
`which Petitioner relies on Ji. Prelim. Resp. 19–20; see also Ex. 1004, 289
`(Mr. Touboul declaring that his sole invention embodied in Finjan’s
`SurfinGate product contained a fully function implementation of the
`technology described and claimed in the application for the ’494 patent);
`Pet. 30–32 (citing Ex. 1006, 2:22–25, 2:28–41, describing functionality of
`SurfinGate, as allegedly disclosing DSP data including the URL from which
`a Downloadable originated, as recited in claims 7 and 16).
`
`12
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`IPR2016-01443
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`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 Petitioner filed the instant Petition on July 15, 2016, Patent Owner had
`filed its Preliminary Responses in both Cases IPR2015-01892 and IPR2016-
`00159, the Board had issued its Institution Decision some months
`previously, and Patent Owner had filed its Patent Owner Response in Case
`IPR2015-01892. See Case IPR2015-01892, Paper 7 (Preliminary Response
`filed December 28, 2015), Paper 9 (Institution Decision entered March 18,
`2016), Paper 27 (Patent Owner Response filed June 21, 2016); Case
`IPR2016-00159, Paper 6 (Preliminary Response filed February 17, 2016),
`Paper 8 (Institution Decision entered May 13, 2016). Indeed, even when
`Petitioner filed its petitions in Cases IPR2016-00890 and IPR2016-01174 on
`April 14, 2016, and June 10, 2016, respectively, the Board already had
`issued its Institution Decisions in Cases IPR2015-01892 and IPR2016-
`00159. Petitioner articulates insufficient reason why it did not or could not
`have included challenges to dependent claims 7–9 and 16–18 in those
`petitions or in a contemporaneously filed petition.
`Petitioner contends that it “could not reasonably” have done so
`“because doing so would have added issues not present in [Cases IPR2015-
`01892 and IPR2016-00159] and jeopardized [Petitioner’s] joinder requests.”
`Pet. 16. 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, nor has Petitioner cited any ‘governing law,
`rules [or] precedent’ . . . indicating that addressing these grounds in its
`earlier petitions would have ‘jeopardized [its] joinder requests.’” Prelim.
`
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`Resp. 13. 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 Cases IPR2016-00890 and IPR2016-01174,
`rather than at the time it was prepared to present its full challenges,
`including those directed at the additional dependent claims.
`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 Cases IPR2015-01892 and IPR2016-00159. Further, as
`Patent Owner points out (Prelim. Resp. 12), the instant Petition was filed on
`the one-year anniversary of the filing of Patent Owner’s complaint against
`Petitioner in the district court on July 15, 2015—i.e., just before the raising
`of the bar against further challenges by Petitioner to any claims of the ’494
`patent. See 35 U.S.C. § 315(b) (“An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner . . . is served with a complaint alleging
`infringement of the patent); Ex. 2043 (Complaint, Finjan, Inc. v. Blue Coat
`Sys., Inc., No. 5:15-cv-03295 (N.D. Cal.), dated July 15, 2015); Ex. 3001
`(Proof of Service, Finjan, Inc. v. Blue Coat Sys., Inc., No. 5:15-cv-03295
`(N.D. Cal.), dated July 17, 2015). 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,
`
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`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.
`
`IV. ORDER
`
`Upon consideration of the record before us, it is, therefore,
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
`
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`IPR2016-01443
`Patent 8,677,494 B2
`
`For PETITIONER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`asbrown@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
`
`16
`
`