Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 9
`Entered: April 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00157
`Patent 8,225,408 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
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 9
`Entered: April 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00157
`Patent 8,225,408 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
`Denying Motion for Joinder
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`IPR2017-00157
`Patent 8,225,408 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, 2, 8, 9, 11, 23–28, and 29–34 of U.S. Patent No.
`8,225,408 B2 (Ex. 1001, “the ’408 patent”). Petitioner concurrently filed a
`Motion for Joinder with Blue Coat Systems, Inc. v. Finjan, Inc., IPR2016-
`01441 (“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
`both the Petition and the Motion for Joinder.
`
`I. BACKGROUND
`A. The ’408 Patent
`
`The ’408 patent relates to network security, including scanning
`content that includes “mobile code” to produce a diagnostic analysis of
`potential exploits, such as viruses, within the code. Ex. 1001, col. 1, ll. 19–
`20, col. 1, ll. 59–64. Figure 2 of the ’408 patent is reproduced below.
`
`2
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`IPR2017-00157
`Patent 8,225,408 B2
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`
`
`
`Figure 2 provides a simplified block diagram of an adaptive rule-based
`content scanner system. Id. at col. 6, ll. 14–17.
`The ’408 patent explains that the adaptive rule-based scanner of
`Figure 2 “is preferably designed as a generic architecture that is language-
`independent, and is customized for a specific language through use of a set
`of language-specific rules.” Id. at col. 6, ll. 17–20. In addition, “security
`violations, referred to as exploits, are described using a generic syntax,
`which is also language-independent.” Id. at col. 6, ll. 28–30. Adaptive rule-
`based scanner 200 includes three main components: (1) tokenizer 210,
`which recognizes and identifies constructs (i.e., “tokens”) within a byte
`source code; (2) parser 220, which controls the process of scanning
`incoming content, such as with a parse tree data structure that represents the
`incoming content; and (3) analyzer 230, which checks for exploits by
`searching for specific patterns of content that indicate an exploit. Id. at
`
`3
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`IPR2017-00157
`Patent 8,225,408 B2
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`col. 6, ll. 50–54, col. 8, ll. 18–27, col. 9, ll. 19–22. Sub-scanner 270 is
`another adaptive rule-based scanner used to scan a subsection of input being
`processed by scanner 200. Id. at col. 9, ll. 7–8. Pattern matching engine 260
`performs pattern matching for both parser 220 and analyzer 230, such as by
`accepting an input list of regular-expression elements describing a pattern of
`interest and an input list of nodes from the parse tree to be matched against
`the pattern of interest, and outputting a Boolean flag indicating whether a
`pattern is matched. Id. at col. 9, ll. 44–58.
`Using a “scanner factory,” such adaptive rule-based scanners may be
`produced “on demand” for different types of content. Id. at col. 15,
`ll. 15–16. The scanner factory “instantiates” a scanner repository, which
`produces a single instance of multiple scanners, such as “a scanner for
`HTML content, a scanner for JavaScript content, and a scanner for URI
`content,” each “able to initialize itself and populate itself with the requisite
`data.” Id. at col. 15, ll. 34–41. When content is downloaded, a pool of
`thread objects is created and stores the scanner-factory instance as member
`data. Id. at col. 15, ll. 53–55. When a thread object has content to parse, it
`requests an appropriate scanner from its scanner-factory object; when the
`thread finishes scanning the content, it returns the scanner instance to its
`scanner factory, “to enable pooling the [adaptive rule-based] scanner for
`later re-use.” Id. at col. 15, ll. 56–63.
`
`B. Illustrative Claim
`
`Independent claim 1 is illustrative of the claims at issue and is
`reproduced below.
`1. A computer processor-based multi-lingual method for
`scanning incoming program code, comprising:
`
`4
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`IPR2017-00157
`Patent 8,225,408 B2
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`
`code;
`
`receiving, by a computer, an incoming stream of program
`
`determining, by the computer, any specific one of a
`plurality of programming languages in which the incoming
`stream is written;
`instantiating, by the computer, a scanner for the specific
`programming language, in response to said determining, the
`scanner comprising parser rules and analyzer rules for the
`specific programming language, wherein the parser rules define
`certain patterns in terms of tokens, tokens being lexical
`constructs for the specific programming language, and wherein
`the analyzer rules identify certain combinations of tokens and
`patterns as being indicators of potential exploits, exploits being
`portions of program code that are malicious;
`identifying, by the computer, individual tokens within the
`incoming stream;
`dynamically building, by the computer while said
`receiving receives the incoming stream, a parse tree whose nodes
`represent tokens and patterns in accordance with the parser rules;
`dynamically detecting, by the computer while said
`dynamically building builds the parse tree, combinations of
`nodes in the parse tree which are indicators of potential exploits,
`based on the analyzer rules; and
`indicating, by the computer, the presence of potential
`exploits within the incoming stream, based on said dynamically
`detecting.
`Id. at col. 19, l. 45–col. 20, l. 7.
`C. References
`
`Petitioner relies on the following references. Pet. 4–9.
`Chandnani
`US 2002/0073330 A1
`June 13, 2002
`Kolawa
`US 5,860,011
`Jan. 12, 1999
`Huang
`US 6,968,539 B1
`Nov. 22, 2005
`Walls
`US 7,284,274 B1
`Oct. 16, 2007
`
`Ex. 1007
`Ex. 1008
`Ex. 1010
`Ex. 1011
`
`
`
`5
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`IPR2017-00157
`Patent 8,225,408 B2
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`Donald E. Knuth, On the Translation of Languages from Left to Right, 8
`INFORMATION AND CONTROL 607 (1965) (“Knuth”) (Ex. 1009).
`D. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims 1, 2, 8, 9, 11, 23–28, and 29–34 under
`35 U.S.C. § 103(a) over the following combinations of references. Pet. 13.
`
`Claim(s)
`References
`1, 9, 23, and 29
`Chandnani and Kolawa
`2, 11, 24–28, and 30–34
`Chandnani, Kolawa, and Knuth
`8
`Chandnani, Kolawa, and Huang
`2, 11, 24–28, and 30–34
`Chandnani, Kolawa, Knuth, and Walls
`8
`Chandnani, Kolawa, Huang, and Walls
`Except for the additional challenge of claims 1, 9, 23, and 29 over
`Chandnani and Kolawa, these challenges parallel those in the Blue Coat
`proceeding. Blue Coat, Paper 14, 6; see Pet. 13–14.
`
`E. Related Proceedings
`1. District Court Proceedings
`
`The parties identify the following district court proceedings as
`involving the ’408 patent: Finjan, Inc. v. Blue Coat Sys., Inc., No. 5-15-cv-
`03295 (N.D. Cal.); Finjan, Inc. v. Palo Alto Networks, Inc., No. 3-14-cv-
`04908 (N.D. Cal.); Finjan, Inc. v. FireEye, Inc., No. 4-13-cv-03113 (N.D.
`Cal.). Pet. 11; Paper 3, 1. Petitioner additionally identifies Finjan, Inc. v.
`Proofpoint, Inc., No. 3-13-cv-05808 (N.D. Cal.) as involving the ’408
`patent. Pet. 11.
`
`2. Inter Partes Reviews
`
`Petitions for inter partes review of the ’408 patent were filed in
`IPR2016-00967 and IPR2016-00970. Both of those proceedings were
`terminated prior to institution in response to a joint request for termination
`
`6
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`IPR2017-00157
`Patent 8,225,408 B2
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`by the parties involved. Proofpoint, Inc., and Armorize Techs., Inc. v.
`Finjan, Inc., Case IPR2016-00967 (PTAB June 24, 2016) (Paper 11); Paper
`3, 1.
`
`In addition, a third party, Palo Alto Networks, Inc., filed petitions for
`inter partes review of the ’408 patent in IPR2015-02001 and IPR2016-
`00157. Those proceedings were consolidated, and review was instituted
`with respect to claims 1, 3–7, 9, 12–16, 18, 19, 20–23, 29, and 35. Palo Alto
`Networks, Inc. v. Finjan, Inc., Case IPR2015-02001, slip op. at 24 (PTAB
`Mar. 29, 2016) (Paper 7). Another third party, Blue Coat Systems, Inc.,
`filed petitions for inter partes review of the ’408 patent in IPR2016-00955
`and IPR2016-00956, with respective joinder requests to IPR2015-02001 and
`IPR2016-00157. Those joinder requests were granted. Blue Coat Sys., Inc.
`v. Finjan, Inc., Case IPR2016-00955, slip op. at 6–7 (PTAB Aug. 30, 2016)
`(Paper 12). On March 17, 2017, a Final Written Decision was issued by the
`Board in these consolidated and joined proceedings, concluding that no
`claim of the ’408 patent was shown, by a preponderance of the evidence, to
`be unpatentable. Palo Alto Networks, Inc. v. Finjan, Inc., Case IPR2015-
`02001, slip op. at 26 (PTAB Mar. 17, 2017) (Paper 41).
`
`3. The Blue Coat Proceeding
`
`On January 23, 2017, the Petition in the Blue Coat Proceeding was
`denied, and no inter partes review was instituted. Blue Coat, Paper 14, 15.
`
`II. ANALYSIS
`A. Statutory Time Bar
`
`Patent Owner has asserted the ’408 patent against a number of
`defendants, including Petitioner, who acknowledges that “[i]n 2013, Patent
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`7
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`IPR2017-00157
`Patent 8,225,408 B2
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`Owner filed a complaint asserting the ’408 patent against [Petitioner].”
`Mot. 3. Relevant to this proceeding, Petitioner was served with a complaint
`for infringement of the ’408 patent on July 11, 2013, more than a year before
`the October 28, 2016, filing of the instant Petition. Ex. 2001.
`“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).” There must nevertheless
`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).
`Because the Blue Coat proceeding was not instituted, the Motion for
`Joinder to that proceeding necessarily is denied. And because the Motion
`for Joinder is denied, no exception to the statutory bar against the Petition
`applies.
`
`
`
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`8
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`IPR2017-00157
`Patent 8,225,408 B2
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`
`C. Summary
`
`Accordingly, we deny both the Petition and the Motion for Joinder.
`
`III. ORDER
`
`It is
`ORDERED that the Motion for Joinder is denied; and
`FURTHER ORDERED that the Petition is denied, and no inter partes
`review is instituted.
`
`
`
`
`9
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`
`
`IPR2017-00157
`Patent 8,225,408 B2
`
`PETITIONER
`James M. Heintz
`Jeffrey R. Cole
`DLA PIPER LLP (US)
`jim.heintz@dlapiper.com
`jeff.cole@dlapiper.com
`
`PATENT OWNER
`James Hannah
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`Michael Kim
`FINJAN INC.
`mkim@finjan.com
`
`10
`
`
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