Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: May 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00155
`Patent 8,079,086 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`Before JAMES B. ARPIN, PATRICK M. BOUCHER, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review and
`Dismissing Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 9
`Entered: May 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00155
`Patent 8,079,086 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`Before JAMES B. ARPIN, PATRICK M. BOUCHER, and
`ZHENYU YANG, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review and
`Dismissing Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`
`On October 28, 2016, FireEye, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an inter
`partes review of claims 1, 4–6, 9, 12–14, 17, 24, 35, 37, and 42 of U.S.
`Patent No. 8,079,086 B2 (Ex. 1001, “the ’086 patent”). Petitioner
`concurrently filed a Motion for Joinder with Blue Coat Systems, Inc. v.
`Finjan, Inc., IPR2016-01444 (“the Blue Coat proceeding” or “Blue Coat”).
`Paper 3 (“Mot.”). Finjan, Inc. (“Patent Owner”) filed an Opposition to the
`Motion for Joinder (Paper 7) and a Preliminary Response (Paper 8) to the
`Petition. We deny the Petition and dismiss the Motion for Joinder, without
`prejudice.
`
`I. BACKGROUND
`A. The ’086 Patent
`
`The ’086 patent discloses 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.
`
`B. Illustrative Claim
`
`Independent claim 1 is illustrative of the claims at issue and is
`reproduced below.
`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
`
`2
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`
`transmitting the appended Downloadable to a destination
`computer.
`Id. at col. 20, l. 60–col. 21, l. 2.
`B. References
`
`Petitioner relies on the following references. Pet. 7–12.
`Morton Swimmer, Baudouin Le Charlier, and Abdelaziz Mounji,
`Dynamic Detection and Classification of Computer Viruses
`Using General Behaviour Patterns, PROC. FIFTH INT’L VIRUS
`BULL. CONF. 75 (Virus Bulletin Ltd. 1995) (Ex. 1003)
`(“Swimmer”).
`
`George C. Necula, Proof-Carrying Code, PROC. 24TH ACM
`SIGPLAN-SIGACT SYMP. ON PRINCIPLES OF PROGRAMMING
`LANGUAGES 106 (ACM 1997) (Ex. 1004) (“Necula”).
`
`M. Douglas McIlroy, Virology 101, 2 COMP. SYS. 173 (1989)
`(Ex. 1005) (“McIlroy”).
`
`Ari Luotonen and Kevin Altis, World-Wide Web proxies, 27
`COMP. NETWORKS AND ISDN SYS. 147 (1994) (Ex. 1006)
`(“Luotonen”).
`C. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1, 4–6, 9, 12–14, 17, 24, 35, 37, and 42
`under 35 U.S.C. § 103(a) over the following combinations of references.
`Pet. 14.
`
`References
`Swimmer and Necula
`Swimmer, Necula, and McIlroy
`Swimmer, Necula, and Luotonen
`
`Claims
`1, 5, 9, 13, 17, 24, and 42
`4 and 12
`6, 14, 35, and 37
`
`
`
`3
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`
`D. Related Proceedings
`1. District Court Proceedings
`
`Both parties identify the following district court proceedings as
`involving the ’086 patent: Finjan, Inc. v. ESET LLC et al. No. 3:16-cv-
`03731 (N.D. Cal.); and Finjan, Inc. v. Blue Coat Systems, Inc., 5:15-cv-
`03295 (N.D. Cal.). Pet. 13; Paper 5, 1. Petitioner additionally identifies the
`following district court proceedings as involving the ’086 patent: Finjan,
`Inc. v. Proofpoint, Inc. et al., No. 3:13-cv-05808 (N.D. Cal.); and Finjan,
`Inc. v. FireEye, Inc., 4:13-cv-03133 (N.D. Cal.). Pet. 13.
`
`2. Reexamination Proceeding
`
`Patent Owner identifies the following reexamination proceeding as
`involving the ’086 patent: Control No. 90/013,654. Paper 5, 1.
`
`3. Inter Partes Review
`
`A petition for inter partes review of the ’086 patent was filed in the
`Blue Coat proceeding. Although that petition was denied, a timely-filed
`request for rehearing of the denial is currently pending before the Board.
`Blue Coat, Papers 9, 10.
`
`II. ANALYSIS
`A. Statutory Time Bar
`
`Patent Owner has asserted the ’086 patent against a number of
`defendants, including Petitioner, who acknowledges that “[i]n 2013, Patent
`Owner filed a complaint asserting the ’086 patent against [Petitioner].”
`Mot. 2. Relevant to this proceeding, Petitioner was served with the
`
`4
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`complaint for infringement of the ’086 patent on July 11, 2013, more than a
`year before the October 28, 2016, filing of the instant Petition. Ex. 2050.
`“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, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also
`37 C.F.R. § 42.101(b) (mirroring statutory language in regulation defining
`who may file a petition for inter partes review). Accordingly, the Petition is
`statutorily barred.
`
`B. Motion for Joinder
`
`Section 315(b) provides an exception to the statutory bar for a request
`for joinder: “The time limitation set forth in the preceding sentence shall not
`apply to a request for joinder under subsection (c).” Nevertheless, there
`must be an instituted proceeding to join: “If the Director institutes an inter
`partes review, the Director, in his or her discretion, may join as a party to
`that inter partes review any person who properly files a petition . . . that the
`Director . . . determines warrants the institution of an inter partes review
`under section 314.” 35 U.S.C. § 315(c) (emphasis added).
`Petitioner’s filing of the Petition and Motion for Joinder, before the
`Board reached a decision on institution of an inter partes review in the Blue
`Coat proceeding, is premature. The exception to the statutory bar against
`the Petition, which would allow consideration of the Petition and Motion for
`Joinder on their merits, will apply only if the request for rehearing in the
`Blue Coat proceeding is granted and an inter partes review is instituted in
`that proceeding. Because we are mandated statutorily to take action on the
`Petition in this proceeding by May 3, 2017, we deny the Petition as
`
`5
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`statutorily barred and dismiss the Motion for Joinder, without prejudice. 35
`U.S.C. § 314(b). If the request for rehearing in the Blue Coat proceeding is
`granted and an inter partes review is instituted in that proceeding, pursuant
`to 37 C.F.R. § 42.122(b), Petitioner may refile the Petition and Motion for
`Joinder.
`
`III. ORDER
`
`It is
`ORDERED that the Petition is denied; and
`FURTHER ORDERED that the Motion for Joinder is dismissed
`without prejudice.
`
`
`
`
`
`
`6
`
`
`
`IPR2017-00155
`Patent 8,079,086 B2
`
`PETITIONER:
`James Heintz
`Jeffrey Cole
`DLA PIPER LLP (US)
`jim.heintz@dlapiper.com
`jeff.cole@dlapiper.com
`
`
`
`PATENT OWNER:
`James Hannah
`Michael Lee
`Shannon Hedvat
`Michael Kim
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`mkim@finjan.com
`
`
`7
`
`
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