`571-272-7822
`
`Paper No. 13
`Filed: January 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLUE COAT SYSTEMSLLC,
`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 ofInter Partes Review
`37 CFR. $ 42.108
`
`
`
`IPR2016-01443
`Patent 8,677,494 B2
`
`I. INTRODUCTION
`
`Blue Coat Systems, Inc., now known as Blue Coat Systems LLC,!
`
`(“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 argumentsin the Preliminary Responsethat the Petition is
`
`procedurally barred under 35 U.S.C. §§ 312, 315(e)(1), and 325(d) (Paper7,
`
`“Reply”), and Patent Ownerfiled a Sur-Reply (Paper8, “Sur-Reply’’)
`
`responsive to Petitioner’s Reply.
`Based ontheparticular circumstancesof this case, we exercise our
`discretion under 37 C.F.R. § 42.108 and do notinstitute an inter partes
`
`review ofthe 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]. Onits face, the °494 patent purportsto claim priority
`from nine earlier applications, of which the earliest-filed is U.S. Provisional
`
`Application No. 60/030,639, filed November8, 1996 (Ex. 1002, “the 639
`
`application”). We need not make a determination on this record whether or
`
`' See Paper9,1.
`
`
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`IPR2016-01443
`Patent 8,677,494 B2
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`/
`
`not the challengedclaims 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 otherpersistently 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 codethat 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.” Jd. at 2:59-64.
`
`B. Related Proceedings
`
`The parties-report that the ’494 patentis the subjectof a district court
`action betweenthe parties, Fiinjan, Inc. v. Blue Coat Systems, Inc., No. 5:15-
`cv-03295 (ND. Cal. 2015), and that the ’494 patent also has beenasserted 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 patentalso is the subject ofCase IPR2015-01892, in which
`trial was instituted with respect to claims1, 2, 5, 6, 10, 11, 14, and 15 ona
`petition filed by Symantec Corporation; and Case IPR2016-00159, in which
`trial was been instituted with respect to claims 1-6 and 10-15 onapetition
`
`
`
`IPR2016-01443
`Patent 8,677,494 B2
`
`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 May13, 2016) (Paper 8) (“PAN Dec.onInst.”).
`
`Petitioner previously filed two additional petitions for inter partes
`
`review ofthe ’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 [PR2016-00890, Paper 2 (challenging claims1, 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).
`
`Weinstituted 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) (Paper8).
`
`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
`
`Noneof the challenged claims is independent; rather, each of
`
`challenged claims 7-9 depends from unchallenged independentclaim 1, and
`
`each of challenged claims 16—18 depends from unchallenged independent
`
`
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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 stepsof:
`
`receiving an incoming Downloadable;
`
`deriving security profile data for the Downloadable, includinga 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 includesa 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:
`
`Morton Swimmeret 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|Luotonenet al., World-Wide Web Proxies, 27 Comput. Networks
`& ISDN Sys. 147 (1994) (“Luotonen’’)
`
`
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`IPR2016-01443
`Patent 8,677,494 B2
`
`Reference
`
`1008|US 5,978,484, issued Nov. 2, 1999 (filed Apr. 25, 1996)
`
`(“Apperson”) 009
`
`|Loetal., Towards a Testbedfor Malicious Code Detection
`(1991) (“Lo”)?
`
`Pet. 18-48. Petitioner also relies on declarations of Azer Bestavros, Ph.D.
`
`(Ex. 1002) and Sylvia Hall-Ellis, Ph.D. (Ex. 1024). Patent Ownerrelies 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:
`
`
`
`
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`re
`
`7 and 16
`
`7 and 16
`
`
`
`
`
`Groundsasserted 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 ofits 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 notbe sufficient to establish that a reference was publicly
`accessible—and,thus, a “printed publication” for purposes of inter partes
`review—asofthe 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 May18, 2015). Because we deny the Petition for other reasons, we
`do not decide whetherPetitioner has established on this record that Lo1s a
`printed publication.
`
`.
`
`
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`Patent 8,677,494 B2
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`| Swimmer and Apperson|35 U.S.C. § 103(a) 8 and 17
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 103(a)
`
`9 and 18
`
`Pet. 17.
`
`Il. DISCUSSION
`
`Patent Ownerraises four procedural bases on whichit 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 sameprior art and
`
`substantially the same arguments that were already presented to the Patent
`
`Office in Cases Nos. IPR2016-00890 and IPR2016-01147[sic]”? (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 Ownerrefers 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, wasfiled by Petitioner and joined with Case IPR2016-00159.
`
`7
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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 considereda variety
`
`of factors in deciding whether to exercise discretion notto institute review,
`
`including, inter alia:
`
`(1) the finite resources of the Board;
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issueafinal
`determination not later than one year after the date on which the
`Director notices institution of review;
`
`(3) whether the samepetitioner previously filed a petition directed to
`the sameclaims of the samepatent;
`
`(4) whether,at the time offiling of the earlier petition, the petitioner
`knew ofthe prior art asserted in the later petition or should have
`knownofit;*
`
`(5) whether, at the time offiling of the later petition, the petitioner
`already received the patent owner’s preliminary responseto 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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`IPR2016-01443
`Patent 8,677,494 B2
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`earlier petition or received the Board’s decision on whetherto
`institute review in theearlier petition;>
`
`(6) the length of time that elapsed between the time the petitioner
`learned of thepriorart asserted in the later petition and the filing of
`the later petition;
`
`(7) whetherthe petitioner provides adequate explanationfor the time
`elapsed betweenthe 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 presentedto the Office.®
`
`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 May4, 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
`
`> See Conopco, Inc. v. Proctor & Gamble Co., Case IPR2014-00628,slip op.
`at 11 (PTAB October 20, 2014) (Paper 21) (discouraging filing ofa 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 whetherto 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 sameor 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 accountthe interests ofjustice and fairness to both
`
`petitioners and patent owners where multiple proceedings involving the
`
`samepatent 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.
`
`Asnoted above,the instant Petition is the seventh petition filed
`
`against the ’494 patent, and Petitioneris a party to two ofthe related
`
`proceedings, both of which are in an advanced stage. An oral hearing was
`
`conducted in joined Cases IPR2015-01892 and IPR2016-00890 on
`
`December16, 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
`
`challengedin 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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`
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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 whetherto institute trial. Rather, 35 U.S.C. § 325(d) is concerned
`
`only with whethera petition presents ‘the same or substantially the same
`399
`prior art or arguments.’”). Furthermore, because each ofthe 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 independentclaims 1 and 10); see
`
`generally 37 C.F.R. § 42.15(a)(4) (fee for challenging dependent claims
`
`requires paymentfor “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
`
`independentclaims 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.” Jd. at 1.
`
`Moreover, Petitioner does not allege that the additionally cited
`
`references—Ji, Luotonen, Apperson, and Lo— previously were unknownto
`
`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
`
`11
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`“References Cited” section of the ’494 patent. Ex. 1001, [56]. Indeed, Ji
`
`wascited twice by the Examineras an anticipatory reference during
`
`prosecution of the challenged claims (Ex. 1004 (’494 patentfile history),
`
`814, 864), and was overcomeas priorart by a declaration under 37 C.F.R.
`
`§ 1.131 from co-inventor Shlomo Touboul(id. at 288-89); and Apperson
`
`previously wascited in a petition for inter partes review ofa 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 journalarticle published more than twenty years ago, and
`
`Petitioner articulates no reason whyit was not or should not have been
`
`knownoravailable to Petitioner at the time offiling Cases IPR2016-00890
`
`and IPR2016-01174. See Conopco at 6 (denyinga petition for inter partes
`
`review becausethe petitioner “present[ed] no argumentor evidence that the
`
`7 We acknowledgePetitioner’s contention that Mr. Touboul’s declaration
`did not address expressly certain claims, including challenged claims 7 and
`16, and doesnot 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 Ownerpoints out
`in the Preliminary Response, the portion of Ji cited by Petitioneris directed
`explicitly to the very product referenced in the inventor’s declaration as
`embodyinghis invention, and, thus, supports his claim of prior conception
`and reduction to practice of at least the limitations of claims 7 and 16 for
`whichPetitioner 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 ofthe
`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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`several newly cited references were not known oravailable to it at the time
`
`of filing of the [earlier] Petition”).
`
`With respect to the fifth and seventh factors, we observethat, at the
`
`timePetitionerfiled 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 issuedits Institution Decision some months
`
`previously, and Patent Ownerhadfiled 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 March18,
`
`2016), Paper 27 (Patent Owner Responsefiled June 21, 2016); Case
`
`IPR2016-00159, Paper 6 (Preliminary Response filed February 17, 2016),
`
`Paper8 (Institution Decision entered May 13, 2016). Indeed, even when
`
`Petitioner filed its petitions in Cases JPR2016-00890 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 whyit did not or could not
`
`have included challenges to dependent claims 7—9 and 16—18 in those
`
`petitions or in a contemporaneouslyfiled petition.
`
`Petitioner contendsthat it “could not reasonably” have done so
`
`“because doing so would have addedissues 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 Ownerthat “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 groundsinits
`
`earlier petitions would have ‘jeopardized[its] joinder requests.’” Prelim.
`
`13
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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 seekinginstitution of inter partes review on the full claim setit
`
`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 scopeofits earlier challenges
`
`appears, instead, to have been a tactical one meant to improveits likelihood
`
`of success in joining Cases IPR2015-01892 and IPR2016-00159. Further, as
`
`Patent Ownerpoints out (Prelim. Resp. 12), the instant Petition wasfiled on
`
`the one-year anniversary ofthe filing of Patent Owner’s complaint against
`
`Petitioner in the district court on July 15, 2015—1.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 proceedingis filed more than 1 year
`
`after the date on whichthe petitioner .
`
`.
`
`. is served with a complaint alleging
`
`infringementof 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
`
`Ownerin defending its patent. See ZTE Corp. v. ContentGuard Holdings,
`
`14
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`
`
`IPR2016-01443
`Patent 8,677,494 B2
`
`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 whicharepartially inadequate.”); Butamax Advanced Biofuels LLC
`
`v. Gevo, Inc., Case IPR2014-00581, slip op. at 12-13 (PTAB Oct. 14, 2014)
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`(Paper 8) (“Allowing similar, serial challenges to the same patent, by the
`
`same petitioner, risks harassment of patent owners andfrustration of
`
`Congress’s intent in enacting the Leahy-Smith America Invents Act.”(citing
`
`H.R. Rep. No. 112-98, pt. 1, at 48 (2011))).
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`These various considerations also inform our consideration of thefirst
`
`and secondfactors. “The Board’s resources would be more fairly expended
`oninitialpetitions, rather than onfollow-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).
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`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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`IV. ORDER
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`Upon consideration of the record before us, it is, therefore,
`
`ORDEREDthatthe Petition is denied, and no inter partes review is
`
`instituted.
`
`15
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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@wsegr.com
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`Shannon Hedvat
`KRAMERLEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN,INC.
`mkim@finjan.com
`
`16
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`