Finjan wins big patent victory as USPTO denies institution on 6 Symantec IPR petitions

By Gene Quinn
January 18, 2016

phil-hartstein-05-2015

Phil Hartstein, Finjan President and CEO.

Finjan Holdings, Inc. (NASDAQ: FNJN), the parent of wholly-owned subsidiary Finjan, Inc., recently announced that the Patent Trial and Appeal Board (PTAB) for the United States Patent & Trademark Office (USPTO) denied six of Symantec Corporations petitions for inter partes review (IPR) of Finjan patents.

“This is an unprecedented response by the US Patent Office, today denying the institution of six IPRs and all challenged claims filed by Symantec in response to our lawsuit filed against it in 2014,” stated Phil Hartstein, President and CEO of Finjan, upon learning of the decision of the PTAB.

The word “unprecedented” gets thrown around all too frequently unfortunately, but the use of the word here is entirely appropriate. That Finjan would prevail in six separate IPR institution decisions relating to the same patent litigation seems an extraordinary long shot. While Finjan has not said it in a press release or to me directly (see more later), allow me to notice that this speaks volumes both about the relative strength of the Finjan patents and the relative weakness of the Symantec invalidity case against these patents. If the PTAB wasn’t even willing to take another look in a proceeding that is so hopelessly stacked against the patent owner these patents are about as rock solid from a validity standpoint as they could possibly be.

Just last week Judge Pauline Newman of the United States Court of Appeals for the Federal Circuit in a dissenting opinion in Ethicon Endo-Surgery, Inc. v. Covidien LP, pointed out that the statutory design of the IPR process is so horribly one sided at the initiation decision point that it is by design practically set up to force affirmative institution decisions. She wrote:

The Director’s institution decision carries a different burden of persuasion, is decided on limited submissions before trial, and is barred from appeal. In its implementing regulations, the Office excludes all substantive evidence from the patent owner’s preliminary response, including expert declarations or other rebuttal evidence. 37 C.F.R. § 42.107(c). Thus the statutory structure favors institution, for the overarching purpose is to provide a forum for early, expeditious review of granted patents.

This critique of the IPR initiation process is perfectly on point and exactly why there have been so many decisions to institute IPRs against patent owners ever since this post grant challenge procedure became available in September 2012. Indeed, the USPTO has only three months to determine whether to institute an IPR proceeding, and will do so if the petitioner can demonstrate that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. See 37 C.F.R. 42.108(c). The reasonable likelihood threshold is a particularly easy threshold to satisfy ordinarily given that the patent owner is not allowed to submit substantive evidence in a patent owner preliminary response. See 37 C.F.R. 42.107(c). That means Finjan was able to defeat the Symantec IPR petitions without the benefit of testimonial evidence, which they will be allowed to introduce should Symantec continue to challenge the validity of these patents at trial.

The patents Symantec challenged were:

U.S. Patent No. 7,756,996, which is entitled Embedding management data within HTTP messages, and relates to the efficient delivery of management data between a network management server and multiple client computers.

U.S. Patent No. 7,757,289, which is entitled System and method for inspecting dynamically generated executable code, and relates to computer security generally and more specifically to protection against malicious code such as computer viruses.

U.S. Patent No. 7,930,299, which is entitled System and method for appending security information to search engine results, and relates to a system and method for combining operation of a search engine with operation of a content security filter in order to provide security assessments for web pages and media content located by the search engine.

U.S. Patent No. 8,015,182, which like the ‘299 patent is entitled System and method for appending security information to search engine results, and similarly relates to a system and method for combining operation of a search engine with operation of a content security filter. Both the ‘299 and ‘182 patents share a common priority claim to a provisional patent application filed on November 30, 2015.

U.S. Patent No. 8,141,154, which is entitled System and method for inspecting dynamically generated executable code, and similarly to the ‘289 patent relates to protection against malicious code such as computer viruses.

At this point it is unclear whether the lawsuit filed by Finjan in the United States Federal District Court for the Northern District of California will proceed. The patent lawsuit filed by Finjan in July of 2014 (CAND-3-14-cv-02998) against Symantec alleged infringement of eight U.S. patents, the five patents mentioned above and U.S. Patent Nos. 6,154,844, 7,613,926, and 8,677,494. Federal District Court Judge Haywood Gilliam had ordered the case stayed pending the decision on the first five petitions, with the three remaining IPR petitions expected to be decided in March. The parties are now to submit a joint report to the court so Judge Gilliam can decide whether it makes sense to keep the stay in place or whether the case can proceed.

“Our patents are strong and we are really focused on winning on the merits,” said Julie Mar-Spinola, Chief Intellectual Property Officer, Vice President of Legal Operations and a Member of the newly formed Finjan Mobile, Inc. Board of Directors. “All the credit goes to Michael Kim and our outside counsel team at Kramer Levin.”

Mar-Spinola also attributes this success to Finjan recognizing the value of filing patent owner’s preliminary responses, a tool that surprisingly seems under utilized even if it is procedurally not ideally fair. “We have used a patent owner’s preliminary response since our first challenges and I think, generally speaking, it helps the PTAB judges to have the patent owners perspective, when they are trying to determine whether or not to grant institution.”

Patent owners are no doubt at a severe disadvantage at the institution decision stage of an inter partes review challenge. While a preliminary response can be filed, no testimonial evidence can be supplied by the patent owner for the PTAB to consider. That and the other monumental procedural hurdles facing the patent owner are obviously not insurmountable, and based on Finjan’s success it seems that patent owners should be making aggressive use of the patent owners preliminary response. If you have good patents and you take the IPR petition seriously you clearly have a chance to persuade the PTAB not to institute, which will no doubt pay great dividends in any subsequent patent litigation.

For those interested in the PTAB denial decisions see the following files:

 

Updated Tuesday, January 19, 2016, at 8:59am ET. An earlier version of this article incorrectly identified Finjan Holdings as a subsidiary of Finjan, Inc., and also incorrectly identified Julie Mar-Spinola as a Member of the Finjan Board of Directors.

The Author

Gene Quinn

Gene Quinn is a patent attorney and the founder and Editor of IPWatchdog.com. He is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene has worked with independent inventors and start-up businesses in a variety of different technology fields, but specializes in software, systems and electronics. is admitted to practice law in New Hampshire, is a Registered Patent Attorney licensed to practice before the United States Patent Office and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 15 Comments comments.

  1. Edward Heller January 18, 2016 12:12 pm

    Bully.

    I also agree that the institution decision is heavily biased in favor of institution, and if the same panel later sits in judgment, it is biased in favor of defending its institution decision.

    Add this to BRI and the lower standard of proof, the overall situation is extremely bad for the patent owner. If they do not win at the institution stage, they are not likely to win in the final decision. That is why we see about an 85% cancellation rate if IPRs are instituted.

  2. Ken January 18, 2016 2:25 pm

    I think the Cuozzo cert grant may help inject a bit a reason into some of these – if the PTAB knows that there’s at least a chance of being held accountable.

    Anti-inventor types like to tout the low actual usage of IPRs, but what they neglect is the great impact the (often implicit) threats have.

  3. Edward Heller January 18, 2016 2:35 pm

    Ken, but it remains that 85% of litigated IPRs result in an invalid claim. In contrast, 65% of litigated patents are found valid and infringed — meaning the invalidity rate has got to be below 35%, and probably substantially below.

    There is no doubt that the choice of forum is decisive.

    And it is remarkable that the Federal Circuit has such a deaf ear to what is really going on, given that it was created in the first place to end this kind of forum shopping.

  4. Eric Berend January 19, 2016 5:27 am

    @3, Edward: at this point, I have discovered enough of a ‘smoking gun’ in the whole sordid Leader Technologies, Inc. affair, to be able to assert that such mendacious effect against individual inventors *is*, in fact, the underlying goal of the forces influencing judges of the CAFC, and therefore, of the Court itself; with Judge Newman’s often scathing dissents and Judge Lynn’s occasionally moderate incompatibility with the usual anti-inventor majority decisions being the only exceptions.

    Otherwise, as regards the CAFC, capricious anti-Constitutional quasi-lordship for the benefit of protected plutocrats, is their lodestar.

  5. Benny January 19, 2016 6:00 am

    Edward,
    Your maths makes no sense to me. You are assuming all patents are equal, but in the real world, an expensive IPR wouldn’t be initiated without, say, an 85% chance of success, nor would litigation against an infringer (also financially risky) be initiated without, for example, 65% assurance that the claims are valid.

  6. Edward Heller January 19, 2016 7:15 am

    Benny, you are also assuming that patent owners assert claims that they know are invalid and that will likely draw an IPR. IPRs are expensive to patent owners as well. Very.

    All we have to go on is the raw stats.

  7. Edward Heller January 19, 2016 7:44 am

    Eric, I am not familiar with the Leader Tech scandal, but I did review the patent and briefly the petition for cert. I think the complaint is that the Feds found the patent invalid as on-sale based on a statement by the inventor in the record; and the complaint was that the Feds were doing factfinding on appeal.

    Is this correct?

  8. Paul F. Morgan January 19, 2016 9:49 am

    The contents/completeness of IPR petitions makes a vital difference. [This is not ex parte practice.] Here is just one part of the first above IPR petition rejection by the PTAB:
    “The Petition either does not address the particulars or provides convoluted references to Calder’s various embodiments so that Petitioner’s contentions on this matter are rendered intractable. In this last regard, given the complexity and breadth of the asserted prior art references, we find that the Petition lacks a cogent presentation and adequate explanations of how the numerous, cited Calder
    embodiments, presented in piecemeal fashion, tie to the claims.”

  9. xtian January 19, 2016 11:24 am

    In the instant case, does Finjan have an abuse of process claim against Symantec if Symantec doesn’t stipulate to validity? Of course, the court can mover forward on the basis of non/infringement.

  10. Eric Berend January 19, 2016 1:24 pm

    @7, Edward: without pulling in verbatim large sections of references found on another Internet site, Leader Technologies, Inc. (“Leader”) was introduced to Chandler who told the company to “reduce the invention to practice”; meanwhile, when the same technology appeared in the form of Facebook, Leader instituted suit alleging infringement. There were two such proceedings in which Facebook was found to have infringed. In addition, there were also two PGR proceedings at USPTO in which the patent claims at issue were found to be valid.

    After all that, the supposedly notoriously strict Kappos spearheaded an unprecedented, irregular and possibly illicit *3rd* PGR in which said subject claims were at last, found ineligible.

    Aspects of concealment of evidence from these and other related proceedings have surfaced in the form of 28 hard drives and email messages sent while at Harvard U., which were demanded in discovery but never produced, along with other shenanigans usually not favored by courts (please see http://americans4innovation.blogspot.com/2015/04/judge-broderick-slaps-down-facebook.html?m=1).

    If the allegations found there have any credibility whatsoever, then there exists a “smoking gun” email revealed in the Ceglia v. Zuckerberg suit which implies perjury by Zuckerberg for the period in which such technology was purportedly stolen from Leader, as described in the Leader v. Facebook trial. In other words, it is likely that Zuckerberg under the advice of his trial attoneys at Cooley Godward LLP, outright obfuscated at trial under oath in answer to essential questions regarding his activities from 2003 – 2004.

    Furthermore, Gibson, Dunn (Facebook’s attorneys at the Ceglia trial) actually *defied a Court order* in discovery in the Leader v. Facebook proceedings. But apparently, for conduct before a court that would doubtless draw a sanction at the least were *you* the attorney so cited, that Court merely moaned about Gibson Dunn’s “…labyrinth of babble”.

    The constructive assertions arising from the two Leader v. Facebook that amount to ‘ol ‘Zuck, there somehow coded Facebook more-or-less “…over a couple of weekends…” at Harvard while chasing girls; rather than Leader’s 145,000 man-hours and another $10M round of financing just to finish the job; ring as patently ludicrous when considered by anyone with relevant software development experience.

    Since I am an inventor who also has significant software development experience, these critical nuances are immediately apparent to me, but not so readily for other professionals such as attorneys, accountants or marketers. BTW, I currently favor the D programming language for a majority of substantial software projects.

  11. Eric Berend January 19, 2016 2:18 pm

    @7, Edward: more facts for fun from the collateral Ceglia v. Zuckerberg affair –
    http://www.fbcoverup.com/docs/ceglia/2015-03-23-Defendant-s-Opposition-to-Motion-to-Dismiss-Doc-No-20-US-v-Ceglia-Case-No-15-628-2nd-Circuit-Mar-23-2015.pdf

    Notice that the U.S. Federal gov’t experts themselves found no evidence of (alleged) tampering of Ceglia’s work-for-hire contract with Zuckerberg; yet former Gibson Dunn associate, now U.S. Attorney P. Brahara has now charged Ceglia with forgery in a criminal complaint. Given the volume of business claims of false contract piling up on prosecutors’ desks every week in reality, it is curious that such weight of government resources is brought to bear in such specious circumstances.

  12. Edward Heller January 19, 2016 4:04 pm

    Eric, “subject claims were at last, found ineligible…”

    I read the patent and it is clear that the software it covered was fully developed and not some pie-in-the-sky idea. Versata seems to have run into the same problem with its software having been declared ineligible in a CBM. All this goes to show me that if patents are not to be allowed to cover software, and if copyright protection is insufficient to cover the functional aspects of software, then we might need something like a design patent to cover software that is half patent, half copyright in that it would cover the functional aspects of programs that are registered for copyright protection.

  13. Anon January 19, 2016 6:27 pm

    Mr. Heller,

    something like a design patent“…?

    There is NO need to make a monstrosity out of one of patent laws largest monstrosity.

    Regular patent law is meant to protect that which provides utility.

    The better path would be for you to stop your excessive attempts to deny patent protection for what clearly deserves patent protection. No further contortions necessary.

  14. Eric Berend January 20, 2016 1:37 am

    @12, Edward: cogent thinking, indeed; and a notion that I fully agree with, as I had specifically described previously in a comment to an article in response to Gene’s criticism of my own possible seeming ignorance of certain aspects of patent history; please see http://www.ipwatchdog.com/2015/05/20/patent-system-fuel-fire-genius/id=57918/ for my own analysis of precisely this issue.

    However, I do also consider this approach to be but a necessary workaround to address not only the lack of semantic evolution in concurrence with technological development over the past five decades of “the computer age”, but also the recent arbitrary and damaging changes in statutory and judge-made “case” patent laws.

  15. Mark Syman January 21, 2016 4:43 pm

    Great news. This should put a chill down the spine of the “efficient infringers”.