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571-272-7822

Paper 8 Entered: January 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________

ESET, LLC, and ESET spol s.r.o., Petitioner,

v.

FINJAN, INC., Patent Owner. ____________

Case IPR2017-01969 Patent 8,079,086 B1

____________

Before JAMES B. ARPIN, PATRICK M. BOUCHER, and ZHENYU YANG, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION Denying Institution of Inter Partes Review and Denying Motion for Joinder

37 C.F.R. §§ 42.108, 42.122

IPR2016-01969

Patent 8,079,086 B1

ESET, LLC and ESET spol s.r.o. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1, 2, 4–6, 9, 10, 12–14, 17, 24, 35, and 37 of U.S. Patent No. 8,079,086 B1 (“the ’086 patent”). Petitioner concurrently moved for joinder with FireEye, Inc. v. Finjan, Inc., IPR2016-01444 (“the 1444 proceeding”). Paper 3 (“Joinder Motion” or “Mot.”). Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). For the reasons set forth below, we deny both the Petition and the Joinder Motion.

I. BACKGROUND

A. The ’086 Patent

The ’086 patent is directed to systems and methods capable of protecting personal computers and other network-accessible devices from “harmful, undesirable, suspicious or other ‘malicious’ operations that might otherwise be effectuated by remotely operable code.” Ex. 1001, col. 2, ll. 30–35. The ’086 patent claims the benefit of the filing date of a number of other patents and patent applications, and incorporates their disclosures by reference. Id. at [63], col. 1, ll. 8–35. Certain of these earlier patents are of particular relevance to this Decision. First, the ’086 patent is a continuation of U.S. Patent No. 7,613,926 (Ex. 3001, “the ’926 patent”), which was the subject of Palo Alto Networks, Inc. v. Finjan, Inc., IPR2016-00145 (“the 0145 proceeding”), and which we discuss further below. Id. at [63]. Second, the ’086 patent claims the benefit of the filing date of U.S. Patent No. 6,092,194, which includes disclosure upon which we based our decision to institute the 1444 proceeding. See FireEye, Paper 11, 3–4.

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The parties additionally note that the ’086 patent claims the benefit of the filing dates of U.S. Patent Appl. No. 08/790,097, filed January 29, 1997, and U.S. Provisional Appl. No. 60/039,639, filed November 8, 1996. See Pet. 3 (citing Ex. 1004, 36–37); Prelim. Resp. 1. Figure 3 of the ’194 patent is reproduced below.

IPR2016-01969 Patent 8,079,086 B1 The parties additionally note that the ’086 patent claims the benefit of

Figure 3 is a block diagram that illustrates a security program (lower dashed

box) and security database 240 (upper dashed box). Ex. 1005, col. 3, ll. 62–

  • 63. The security program operates in conjunction with security database

240, “which includes security policies 305, known Downloadables 307, known certificates 309 and Downloadable Security Profile (DSP) data 310 corresponding to the known Downloadables 307.” Id. at col. 4, ll. 14–18. Security policies 305, which include policies specific to particular users and generic policies for determining whether to block an incoming

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Downloadable, “may identify specific Downloadables to block, specific Downloadables to allow, or necessary criteria for allowing an unknown Downloadable.” Id. at col. 4, ll. 18–24. DSP data 310 “includes the list of all potentially hostile or suspicious computer operations that may be attempted by each known Downloadable 307, and may also include the respective arguments of these operations.” Id. at col. 4, ll. 33–37.

B. Illustrative Claims

Independent claims 1, 9, and 17 of the ’086 patent are illustrative of the claims at issue:

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; appending a representation of the Downloadable security profile data to the Downloadable, to generate an appended Downloadable; and transmitting the appended Downloadable to a destination computer. Ex. 1001, col. 20, l. 60–col. 21, l. 2.

  • 9. A system for managing Downloadables, comprising:

a receiver for receiving an incoming Downloadable; a Downloadable scanner coupled with said receiver for deriving security profile data for the Downloadable; a file appender coupled with said Downloadable scanner, for appending a representation of the Downloadable security profile data to the Downloadable, to generate an appended Downloadable; and a transmitter coupled with said file appender, for transmitting the appended Downloadable to a destination computer.

Id. at col. 21, ll. 21–34.

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  • 17. 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 transmitting the Downloadable and a representation of the

Downloadable security profile data to a destination computer, via a transport protocol transmission.

Id. at col. 21, ll. 52–59.

C. References

Petitioner relies on the following references.

Morton Swimmer, Baudouin Le Charlier, and Abdelaziz Mounji,

Dynamic Detection and Classification of Computer Viruses

Using General Behaviour Patterns, PROC. FIFTH INTL VIRUS BULL. CONF. 75 (Virus Bulletin Ltd. 1995) (Ex. 1006) (“Swimmer”).

George C. Necula, Proof-Carrying Code, PROC. 24 TH ACM

SIGPLAN-SIGACT SYMP. ON PRINCIPLES OF PROGRAMMING

LANGUAGES 106 (ACM 1997) (Ex. 1008) (“Necula”).

Ari Luotonen and Kevin Altis, World-Wide Web proxies, 27 COMP. NETWORKS AND ISDN SYS. 147 (1994) (Ex. 1010) (“Luotonen”).

M. Douglas McIlroy, Virology 101, 2 COMP. SYS. 173 (1989) (Ex. 1011) (“McIlroy”).

David M. Martin Jr., Sivaramakrishman Rajagopalan, and Aviel D. Rubin, Blocking Java Applets at the Firewall, PROC. 1997

SYMP. ON NETWORK AND DISTRIBUTED SYSTEMS SECURITY

(IEEE 1997) (Ex. 1012).

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D. Asserted Grounds of Unpatentability

Petitioner challenges claims 1, 2, 4–6, 9, 10, 12–14, 17, 24, 35, and 37 under 35 U.S.C. § 103(a) over the following combinations of references. Pet. 14–15.

References

Claims

Swimmer and Necula

1, 5, 9, 13, 17, and 24

Swimmer, Necula, and Martin

  • 2 and 10

Swimmer, Necula, and McIlroy

  • 4 and 12

Swimmer, Necula, and Luotonen

6, 14, 35, and 37

E. Related Proceedings

Both parties identify the following matters as involving the ’086 patent: (1) Finjan, Inc. v. ESET, LLC, No. 3:17-cv-00183-CAB-BGS (S.D. Cal.); and (2) Finjan, Inc. v. Blue Coat Systems LLC, No. 5:15-cv-03295 BLF (N.D. Cal.). Pet. 1; Paper 5, 1. In addition, Petitioner identifies the following matters: (1) Finjan, Inc. v. Symantec Corp, No. 3:14-cv-02998 (N.D. Cal.); (2) Finjan, Inc. v. Sophos Inc., No. 3:14-cv-01197 (N.D. Cal.); and (3) Finjan, Inc. v. Palo Alto Networks, Inc., No. 3:14-cv-4908 (N.D. Cal.). Pet. 1. Patent Owner additionally identifies Finjan, Inc. v. FireEye, Inc., No. 4:13-cv-03133 SBA (N.D. Cal.). Paper 5, 1. The Board instituted the 1444 proceeding, which also involves the ’086 patent, by granting a petition (“the Blue Coat petition”) for inter partes review filed by Blue Coat Systems, Inc. (“Blue Coat”). Case IPR2016- 01444, Paper 11. FireEye, Inc. (“FireEye”) subsequently was joined as a party to the 1444 proceeding, and the Board dismissed FireEye’s own petition for inter partes review. Case IPR2016-01444, Paper 13; Case IPR2017-00155, Papers 9, 11. Thereafter, the 1444 proceeding was terminated with respect to Blue Coat when Blue Coat settled its disputes

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involving the ’086 patent with Patent Owner. IPR2016-01444, Paper 48. The 1444 proceeding currently includes FireEye as the only petitioner.

II. ANALYSIS

An issue in the 1444 proceeding is whether Necula is prior art to the challenged claims. See IPR2016-01444, Paper 47, 48–53 (Patent Owner contending that FireEye “failed to establish that Necula is a prior art printed publication that predates the January 29, 1997, priority date that the ‘086 Patent is entitled to.”). Resolution of that issue may depend on the effective filing date ultimately accorded to the challenged claims. Petitioner characterizes the position taken in the instant Petition as an “argument that the ’086 patent is not entitled to claim priority to any application in the chain of priority.” Mot. 5. Indeed, Petitioner asserts that, other than including challenges to claims 2 and 10, and omitting a challenge to claim 42, this argument is the “only difference[]” between the instant Petition and the petition upon which the 1444 proceeding was instituted. Id. Otherwise, according to Petitioner, the instant Petition is “narrowly tailored to the same disclosures and arguments of unpatentability that are the subject of [the FireEye proceeding], and in fact is substantively identical” to the petition upon which the FireEye proceeding was instituted “with respect to the analysis of the prior art and expert testimony on the claims in common.” Mot. 3. Specifically, Petitioner contends that none of the patents and patent applications, to which the ’086 patent claims the benefit of an earlier filing date, discloses the following limitations: (1) “appending a representation of the Downloadable security profile data to the Downloadable, to generate an appended Downloadable,” as recited in independent claim 1; (2) “a file

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appender

. . .

for appending a representation of the Downloadable security

profile data to the Downloadable, to generate an appended Downloadable,” as recited in independent claim 9; or (3) “transmitting the Downloadable and a representation of the Downloadable security profile to a destination computer,” as recited in independent claims 17, 24, 35, and 37. Id. at 3–4; Pet. 5. In addressing these limitations, the Petition proposes constructions for “appended Downloadable” (including a contention that “the term ‘appending’ would have been understood by a person of ordinary skill in the art, given the context of the ’086 claims, as adding the security profile data to a file that includes the Downloadable”), “file appender,” “transmitter,” and “transmitting.” Pet. 10–14. These proposed constructions were not made in the original petition in the 1444 proceeding. See IPR2016-01444, Paper 2, 15–16. As Patent Owner observes, in the 0145 proceeding, the Board had occasion to consider whether limitations similar to those identified by Petitioner had sufficient written-description support in the ’926 patent. For example, claim 1 of the ’926 patent recites “appending a representation of the retrieved Downloadable security profile data to the incoming

Downloadable, to generate an appended Downloadable.” Ex. 3001, col. 21, ll. 3–5 (emphases added). Except for the emphasized words “retrieved” and “incoming,” the limitation is identical to the corresponding limitation of challenged independent claim 1 of the ’086 patent. See Ex. 1001, col. 20, ll. 65–67).

Similarly, claim 8 of the ’926 patent recites “a file appender

for

. . . appending are presentation [sic: a representation] of the Downloadable security profile data to the incoming Downloadable, to generate an appended

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Downloadable.” Ex. 3001, col. 21, ll. 36–39 (emphasis added). Except for the emphasized word “incoming” and an obvious typographical error, the limitation is identical to the corresponding limitation of challenged independent claim 9 of the ’086 patent. 1 See Ex. 1001, col. 21, ll. 27–30. In addition, claims 15 and 22 of the ’926 patent recite “transmitting the incoming Downloadable and a representation of the retrieved Downloadable security profile data to a destination computer, via a transport protocol transmission.” Ex. 3001, col. 22, ll. 1–4, col. 22, ll. 32–35 (emphases added). Again, except for the emphasized words “incoming” and “retrieved,” the limitation is identical to the corresponding limitation of challenged independent claims 17, 24, 35, and 37 of the ’086 patent. See

Ex. 1001, col. 21, ll. 57–59, col. 22, ll. 17–20, col. 23, ll. 6–8, col. 23, ll. 18–

21.

Each of claims 1, 8, 15, and 22 of the ’926 patent was challenged in the 0145 proceeding, with the petitioner in that proceeding arguing that “[i]ndependent claims in the ’926 patent recite new subject matter that was not introduced until the filing date of the ’926 patent.” Case IPR2016- 00145, Paper 9, 6. Similar to the argument made by Petitioner here, the petitioner in the 0145 proceeding argued that the “appending” and “transmitting” limitations lacked written-description support in the chain of

1 We have reproduced the limitation with an ellipsis to emphasize the relevant portion of the full limitation, similar to Petitioner’s quotation. See Mot. 6. The full limitations additionally differ in that claim 8 of the ’926 patent recites that the file appender is “coupled with said receiver,” while claim 9 of the ’086 patent recites that the file appender is “coupled with said Downloadable scanner.” Compare Ex. 3001, col. 21, ll. 36–39, with Ex. 1001, col. 21, ll. 27–30. This distinction is not relevant to this Decision.

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earlier priority patents and applications, and that the claims of the ’926 patent, therefore, were not entitled to an earlier effective filing date. Id. at 6. The Board considered that argument in the 0145 proceeding, including Patent Owner’s identification of disclosure in the ’194 patent that Patent Owner contended provided sufficient written-description support. Id. at 6–7. The Board found “Patent Owner’s argument more persuasive,” and concluded that it was “persuaded by Patent Owner that the ’194 patent provides written description support for both the appending and the transmitting limitations.” Id. at 7. We do not find it productive to revisit this finding, particularly because joinder to the 1444 proceeding would disrupt the progress of that proceeding by adding additional issues and evidence addressing those additional issues, as well as a new Declaration by Petitioner’s witness, Eugene H. Spafford, Ph.D. (Ex. 1002) to that proceeding. As a continuation of the ’926 patent, the ’086 patent shares essentially the same disclosure of the ’926 patent—and, in any event, incorporates that disclosure by reference. Petitioner conditions both its Petition and its Joinder Motion on whether the Board is “willing to determine whether the ’086 patent is entitled to claim”

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an earlier effective filing date. Mot. 8 n.1. If not, Petitioner “respectfully withdraws its Petition and this Motion for Joinder.” Id. 2 Accordingly, we deny both the Petition and the Joinder Motion.

III. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that the Petition is denied, and no inter partes review is instituted; and FURTHER ORDERED that the Joinder Motion is denied.

2 Because we are exercising our discretion to deny the Petition and the Joinder Motion in accordance with Petitioner’s request, we need not reach whether 35 U.S.C. § 315(b) permits the joinder of issues to an instituted proceeding. Nevertheless, we note that, but for a grant of joinder, the Petition appears to be time-barred, and that judges of the Federal Circuit have expressed skepticism as to whether issue joinder is statutorily permissible. See Mot. 4 (complaint filed by Patent Owner asserting the ’086 patent against Petitioner on July 1, 2016, more than one year before the August 16, 2017 filing of the Petition); 35 U.S.C. § 315(b) (barring institution of inter partes review “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”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1020 (Fed. Cir. 2017) (Dyk, Wallach, JJ., concurring) (“We think it unlikely that Congress intended that petitioners could employ the joinder provision to circumvent

the time bar by adding time-barred issues to an otherwise timely proceeding,

whether the petitioner seeking to add new issues is the same party that

brought the timely proceeding

. . .

or the petitioner is a new party.”).

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PETITIONER

Nicola A. Pisano Christopher C. Bolten

FOLEY & LARDNER LLP

PATENT OWNER

James Hannah Jeffrey H. Price KRAMER LEVIN NAFTALIS & FRANKEL LLP

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