- Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.
RulingsFinal written decision- Skill levelOther
“differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35
Patent outcomesUS 6,154,844 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,154,844 - Palo Alto Networks, Inc. v. Finjan, Inc.Institution deniedPTAB · May 9, 2016 · IPR2016-00145 · APJ Zhenyu Yang · IPR · Institution
Institution was denied for claims 1–5, 8–12, 15–19, 22–26, 29, and 30 because the asserted combinations relied on references published after the claims’ November 6, 1997 priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The ’194 patent describes the code scanner sending the Downloadable and the DSP data to the ACL comparator for comparison with the security policy. Ex. 1007, 6:9–12. Petitioner does not argue that the Downloadable and the DSP data must be transmitted independently. In other words, the Downloadable and the DSP data may be transmitted together, that is, with the DSP data attached to the Downloadable. As stated above, we accept Petitioner’s proposed construction of “append/appending” to mean “attach/attaching.” See supra at 5. Thus, we are persuaded by Patent Owner that the ’194 patent provides written description support for both the appending and the transmitting limitations.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,613,926 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01897 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Symantec did not show a reasonable likelihood of prevailing: the challenged claims were entitled to the 1997 priority date, making Touboul I and II not prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent2 into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (finding “entire . . . application disclosure was incorporated by the broad and unequivocal language: ‘The disclosures of the two applications are hereby incorporate[d] by reference’”). We agree with Patent Owner that the facts here are distinguishable from those in cases on which Petitioner relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner asserts, there was a lack of continuity of disclosure in a priority chain because the priority references were not incorporated in their entirety, but only with respect to specific portions. Id. On this record, and particularly in view of Petitioner’s statement that the specification of the ’780 patent, among others, describes the “claim elements and features” not otherwise included in the specifications of the ’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself incorporate such “essential material” by reference (see 37 C.F.R. §1.57(d))—we agree with Patent Owner’s conclusion that “each application in the priority chain contains written description support for the challenged claims, and continuity of disclosure exists up to and including the ’494 [p]atent without interruption.” Prelim. Resp. 16.3” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“among others, it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. § 120. Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the ’926 patent, include a priority claim or any reference whatsoever to a number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and ’639 provisional) that are included in the priority chain of the ’494 patent” (Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194 patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002, [63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points out, the ’520 patent and ’639 provisional are not within the priority chain from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086 patents to include a priority claim or reference to the ’520 patent and ’639 provisional does not affect the ’494 patent’s entitlement to the benefit of the November 6, 1997 filing date of the ’388 application that matured into the ’194 patent (i.e., Touboul I). Petitioner also argues that the failure of the ’926 and ’086 patents to include a priority claim or any reference to the ’520 patent and ’639 provisional constitutes a break in the priority chain of the ’494 patent. Pet. 17. For purposes of this Decision, however, we need not reach this issue.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“C. Anticipation by and Obviousness over Touboul I and Touboul II On this record and for the reasons stated in Section II.B. above, we are persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are entitled at least to the benefit of the November 6, 1997 filing date of the ’388 patent that matured into the ’194 patent, and, accordingly, that neither Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November 28, 2000, from an application filed December 22, 1997, constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial on any of the asserted grounds. III. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’494 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of those claims on the grounds asserted in the Petition.” slip op. at 15
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 8,677,494 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01895 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the challenged claims were entitled to the November 6, 1997 filing date, making the asserted references unavailable as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or the combination of Touboul I and Dan, renders the challenged claims obvious. Pet. 32–52. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Thus, neither Touboul I (the ’194 patent) nor Touboul II (issued on November 28, 2000, from an application filed December 22, 1997) constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated that the 14 combination of Touboul I and Touboul II, or the combination of Touboul I and Dan, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 15, 18–20, 22, 25–27, and 30 of the ’926 patent is denied.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Incorporation by reference “provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Zenon, 506 F.3d at 1378 (quotation marks omitted). Incorporation by reference must be set forth in the specification and must (1) express a clear intent to incorporate by reference by using the root words “incorporate” and “reference” (e.g., “incorporate by reference”); and (2) clearly identify the referenced patent, application, or publication. 37 C.F.R. § 1.57(c). “Essential material,” such as material necessary to provide a written description of a claimed invention, may be incorporated by reference by reference to a U.S. patent or U.S. patent application publication, as long as the referenced patent or patent application publication does not itself incorporate such essential material by reference. Id. § 1.57(d). In Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), the Federal Circuit concluded that the broad and unequivocal language “[t]he disclosures of the two applications are hereby incorporated by reference” incorporates the entire disclosures of the two applications. Id. at 1335. The incorporation statement in the ’822 patent is similar: 9 This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780 . . . . This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302, now U.S. Pat. No. 6,480,962 . . . . Ex. 1002, 1:11–19. Petitioner acknowledges that the ’780 patent provides written support for the limitations of the challenged claims. Pet. 10. In other words, the ’780 patent does not itself incorporate such “essential material” by reference. See 37 C.F.R. § 1.57(d). Thus, the holding of Harari informs our conclusion that the ’822 patent incorporates by reference the ’780 patent in its entirety. Because the ’194 and ’780 patents share essentially the same disclosure (compare Ex. 1004 with Ex. 1005), we agree with Patent Owner that continuity of disclosure exists between the ’194 and ’926 patents.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), 1 Shlomo Touboul, U.S. Patent No. 6,092,194, issued July 18, 2000 (Ex. 1005, “Touboul I,” or “the ’194 patent”). 2 Shlomo Touboul and Nachshon Gal, U.S. Patent No. 6,154,844, issued Nov. 28, 2000 (Ex. 1012, “Touboul II”). 3 Asit Dan et al., U.S. Patent No. 5,825,877, issued October 20, 1998 (Ex. 1013, “Dan”). 4 cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 4
Claim construction§ 112 disclosurePatents in suitUS 7,613,926 - Motionpoint Corporation v. Transperfect Global, Inc.All claims unpatentablePTAB · Jul 15, 2015 · CBM2014-00060 · APJ Bart A Gerstenblith · CBM · Final written decision
Claims 1–28 are unpatentable for lack of adequate written description under § 112, first paragraph.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“that “hyperlink” is a well-understood term that the ’022 patent uses in accordance with its ordinary meaning. As explained above, the Microsoft Computer User’s Dictionary makes clear that a hyperlink includes a connection to another element or document. Patent Owner points to no persuasive evidence that the ’022 patent describes a hyperlink as separate from this connection such that the connection can be changed with the hyperlink remaining the same. Indeed, the ’022 patent describes “replac[ing] all links in the translated web page 7 with links that point to the translation manager 4” as part of the translation process. Ex. 1001, 3:37–38. Thus, as described in the patent, changing the connection to point to the translation manager requires a new link. This is consistent with the ordinary meaning of a hyperlink as including a specific connection from one document to another element or document. Our preliminary construction of “hyperlink” included “a link or connection” but did not include a recitation of the element or document linked. To resolve the parties’ dispute, consistent with the ordinary meaning and the specification, we conclude, on the full record before us, that one of ordinary skill in the art at the time of the invention would have understood “hyperlink” to mean “a connection between an element in a hypertext document, such as a word, phrase, symbol, or image, and a different element in the document, another hypertext document, a file, or a script.”” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“First, the inter partes reexamination of the ’022 patent is relevant to our consideration of the claim construction issues presented here because claim construction was at issue in the reexamination. Second, we see no risk of undue prejudice that would outweigh the probative value of the documents and evidence submitted in the reexamination. Of note, is that this proceeding is not a jury trial and, thus, the risk of prejudice in this forum is less than what may otherwise exist before a jury. Third, we agree with Petitioner that Exhibit 1013 is not hearsay at least under Federal Rule of Evidence 801(d)(2)(B) because the testimony in Dr. Nakhimovsky’s Declaration was submitted by, and on behalf of, Patent Owner to the Patent Office, thus evidencing that Patent Owner manifested a belief that the statements contained therein were true. Accordingly, Patent Owner’s Motion to Exclude as applied to Exhibit 1013 is denied.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Patent Owner’s first argument is contrary to our constructions of the term “hyperlink” and the phrase “said hyperlink.” As reflected in our construction, “said hyperlink” in each of independent claims 1, 17, and 26, refers back to the original recitation of “one or more hyperlinks” in the original (untranslated) electronic communication. The portion of the specification relied upon by Patent Owner does not disclose providing translation of said further electronic communications when the original one or more hyperlink is activated. Rather, this disclosure indicates that the translation manager may replace all of the links (i.e., hyperlinks) in the translated web page with links that point to the translation manager. These replaced links are in the translated electronic communication (e.g., web page 7), and not in the original untranslated electronic communication (e.g., web page 2). Thus, this disclosure does not reasonably convey to one of ordinary skill in the art that the inventors had possession of a translation manager that provides translation of further electronic communications when the one or more hyperlinks in the original untranslated electronic communication is activated (i.e., one or more hyperlinks with unmodified destination addresses). See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 25
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“E. Indefiniteness of Claims 23 and 25–28 Under 35 U.S.C. § 112, Second Paragraph Our determination that each challenged claim is unpatentable for lack of an adequate written description renders it unnecessary to reach Petitioner’s contentions that claims 23 and 25–28 of the ’022 patent are indefinite.” slip op. at 31
Patent outcomesUS 6,857,022 unpatentableClaim construction§ 112 disclosurecites PhillipsPatents in suitUS 6,857,022
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.