PTAB refuses to institute harassing IPR challenges against Finjan

By Gene Quinn
February 1, 2017

Harassment gavelRecently the Patent Trial and Appeal Board (Board) at the United States Patent and Trademark Office (USPTO) denied institution in two separate inter partes review (IPR) challenges. IPR2016-01441 (relating to U.S. Patent No. 8,225,408) and IPR2016-01443 (relating to U.S. Patent No. 8,677,494). Both IPR petitions were filed by Blue Coat Systems, LLC, against Finjan, Inc. In both instances the Board found that the Blue Coat IPR petitions were harassing and denied institution.

“We are encouraged by the PTAB’s comprehensive decisions denying both of Blue Coat’s petitions. The PTAB is spot on to recognize that piecemeal and serial challenges to Finjan’s patents — or any others’ valid patents — are not only harassing, but also contrary to ‘Congress’ intent in enacting the Leahy-Smith America Invents Act,'” commented Julie Mar-Spinola, CIPO of Finjan Holdings. “This is an instance where the USPTO truly met its objective to ‘take into account the interests of justice and fairness to both petitioners and patent owners where multiple proceedings involving the same patent claims are before the Office.'”

Although two separate panels of the Board handled each case, the decisions were remarkably similar. Indeed, so similar were these decisions denying institution that it is surprising the same Administrative Patent Judge did not author both decisions. There was, however, overlap between the panels. APJ James Arpin and APJ Zhenyu Yang were on both panels. APJ Patrick Boucher wrote the decision in IPR2016-01441, while APJ Charles Boudreau wrote the decision in IPR2016-01443.

Each decision explained that other panels of the Board have considered a variety of factors in deciding whether to exercise discretion not to institute review, including, inter alia:

(1) the finite resources of the Board;

(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than one year after the date on which the Director notices institution of review;

(3) whether the same petitioner previously filed a petition directed to the same claims of the same patent;

(4) whether, at the time of filing of the earlier petition, the petitioner knew of the prior art asserted in the later petition or should have known of it;4

(5) whether, at the time of filing of the later petition, the petitioner already received the patent owner’s preliminary response to the earlier petition or received the Board’s decision on whether to institute review in the earlier petition;

(6) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the later petition and the filing of the later petition;

(7) whether the petitioner provides adequate explanation for the time elapsed between the filing dates of multiple petitions directed to the same claims of the same patent; and

(8) whether the same or substantially the same prior art or arguments previously were presented to the Office.

Explaining that these factors are but a guide, and that not all factors need to be present in order for the Board to exercise its discretion to refuse to institute a petition for inter partes review (IPR), the Board declined to institute both challenges. In the challenge to the ‘494 patent the Board specifically stated: “With these factors in mind and for the reasons that follow, we exercise our discretion and do not institute a review based on the instant Petition.”

In both cases the IPR challenge was the seventh petition filed against the patents. With respect to the ‘494 patent Blue Coat is already a party in two related proceedings, with respect to the ‘408 patent Blue Coat is already a party in one related proceeding.

With respect to the third factor, the Board in both cases noted that the challenged claims are dependent upon claims that are already subject to an active proceeding. Thus, although the claims are different these petitions would require duplicative work given the need to consider base claims already being challenged in a related proceeding.

With respect to factors four, six and eight, the Board pointed out that the prior art presented by Blue Coat is virtually identical to the prior art presented in related cases. Further, the prior art is not late discovered art. In one case a journal article was published more than forty years ago and Blue Coat provided no reason why it did not or should not have been aware of that article, or that it was previously unavailable.

With respect to factors five and seven, the Board noted that these petitions were filed after related proceedings were instituted and Blue Coat provided insufficient reasons why it did not, or could not, have included challenges to these claims in those related cases. Blue Coat did attempt to argue that it could not have reasonably challenged these claims because it would have jeopardized their joinder request, but the Board pointed out that there is no compulsion to join any proceeding. Essentially, Blue Coat could have simply forgone joining the related proceedings and filed their own challenged, but they did not do that.

The Board also saw Blue Coat’s efforts for what they undoubtedly were – an attempt to harass Finjan. The Board explained relative to the ‘408 patent challenge:

Petitioner’s decision to limit the scope of its earlier challenges appears, instead, to have been a tactical one meant to improve its likelihood of success in joining IPR2015-02001 and IPR2016-00157. Thus, it is appropriate to consider the harassing impact that the resulting piecemeal challenges have on Patent Owner in defending its patent.

Ultimately, the Board said all of these considerations informed their analysis of the first two factors. The Board explained that their resources are better devoted to initial petitions rather than follow-on petitions.

These two decisions could mark a turning point in the maturation of the Board. At least several patent owners, including Finjan, are routinely subject to serial, harassing IPR challenges. The Patent Office doing something about harassing IPR challenges is long overdue. If the Director is not going to exercise the discretion vested in that Office by the America Invents Act (AIA) hopefully more panels of the Board will take it upon themselves to do just that. Patent owner harassment needs to stop. Patent owners shouldn’t have to be subjected to many dozens of IPR challenges before someone recognizes there is coordinated harassment – perhaps even collusion – against certain patent owners who have the audacity to want to be paid for blatant, ongoing, willful infringement.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney 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 11 Comments comments.

  1. Bemused February 1, 2017 1:57 pm

    Gene, is it just me or is the PTAB trying to play a little nice(r) lately? I don’t have any hard facts or data but just from looking at the daily PTAB dockets, etc. it feels like there is a dip in institution decisions as well as more final orders finding claims patentable. If this is accurate, I don’t know if that change (albeit, however slight) is because the CAFC is starting to push back on some of the more idiotic PTAB decisions or because the powers that be at the PTAB are terrified they won’t have a job once this new administration turns its sights to the US patent system.

    B

  2. Gene Quinn February 1, 2017 2:28 pm

    Bemused-

    I’ve also noticed the same thing. It does seem that the PTAB is behaving differently. Perhaps that is the influence of the new Chief Judge filtering through the ranks. I don’t know him well. I know him a little and do have high regard for him. I know a lot of people think very highly of him. It is hard to know, but the older I get the more I realize that judges on every level DO respond to criticism. As they seem to be making one bad decision after another they have a tendency to pull back from the edge just before the community is about to bend down and pick up the pitch forks and march. We saw that with the Supreme Court in the early 1980s. I think we are seeing that with the Federal Circuit now, and also with the PTAB.

    -Gene

  3. Pro Se February 1, 2017 3:13 pm

    Well, I’m on to 6 newly filed IPRs against my portfolio for a total to date of 11.

    The 6 are the weakest filed to date but the weight of needing to answer and respond is a headache. Hopefully this result means the PTAB are keeping an eye out for frivolous filings.

  4. Stephen Curry February 1, 2017 4:25 pm

    Congratulations to Julie Mar-Spinola of Finjan on her and her staffs’ PTAB wins. A very good attorney she is, you can google her.

  5. xtian February 2, 2017 1:34 pm

    Kyle Bass, Erich Spangenberg and the Coalition of Affordable patents take note.

  6. Gene Quinn February 2, 2017 3:35 pm

    xtian-

    I’m not sure the IPR filings of Bass and Spangenberg would, should, or could be properly characterized as harassing, particularly given that many of them have been instituted and at least several of the denials were beyond disingenuous.

    Quite a different thing for a pharma company to face an IPR of a drug patent than it is for Finjan to face many dozens of IPRs, with 6, 8 or 10 filed against the same patent. That is harassment.

    I know biotech and pharma think any IPRs against them are harassing, but they were supportive of the PTAB and post grant challenges. Obviously, what is good for that patents of others has to be good, fair and just for their patents as well.

  7. xtian February 3, 2017 9:10 am

    Gene,

    As I said in other thread, Pharma got taken to the showers with its support of IPRs. In fact, as I said before, IPRs neuter the balance struck by Hatch-Waxman.

    I do believe all patents should be treated equal and haven’t advocated for special rules for pharma patents. In the first instance, what is a “pharma patent.” I would rather see the IPR process completely go away for all patent holders regardless of their industry.

    Regarding Bass, I don’t dispute that some of his filings on Pharma patents are consistent with the spirit of IPRs. Other filings, I am not so sure. Take for example his multiple filings on Biogen’s Tefcidera patent. If you don’t first succeed, try try again. Couple these multiple filings with his expressly-stated motivation of taking a short position in the companies upon filing the IPR and it becomes more difficult for me to see that he is is using the IPR process to weed out patents that should not have been granted in the first instance.

  8. Anon February 3, 2017 7:23 pm

    What is this “spirit” of IPRs…?

  9. Stephen Curry February 3, 2017 10:07 pm

    @8

    here’s a guess that is probably wrong.
    it’s all about fellowship and congregating in IPR spirit and in faith? physical and spiritual renewals go hand in hand.

    http://chipsnetwork.org/wp-content/uploads/2016/02/icl111419img001-crop-600×338-400×225.jpg

  10. Eric Berend February 7, 2017 8:00 am

    The elephant in the room is the small but rapidly increasing realm of patents not disclosed by inventors with real world, innovative, non-obvious inventions: that rightfully refuse to subject their genius hard work, to the absurd kangeroo court that the USPTO and IPRs in particular, have become.

    This elephant is, so-to-speak, gagged, partially blindfolded and in fetters, but it is there. Constitutional property here; fruit of these inventors’ labors: yet, functionally and in fact, these economic heroes are now denied all but a cruel mockery of the explicitly stated protection, of their lawful property.

    The conflation of an illusion of truth with the lies of the thieves is rampant:
    – no independent inventors in testimony before Congress supposedly justifying ever more draconian lawmaking proposals;
    – skewed and deceptive so-called “surveys” deliberately designed to obscure the facts in public opinion;
    – preposterous economic damage claims such as $37,000,000,000 alleged as being merely ONE YEAR’s worth of the so-called “harm” of the unproven false canard of ‘patent trolls’;
    – endless nonsense screeds about “patent quality” that speak to no living inventor and fulfill only the arbitrary agenda of the enormous technological thieves known as “infringers”
    – the incredibly vicious treachery of the “Big Pharma” industry that had the ludicrous gall to lobby for a special exemption, for only their ‘type’ of patents – THIS, after being the ones to provide the lobbyist “heavy lifting” that pushed the AIA over the finish line into law.
    – the obdurate refusal of the key legislators to treat inventors or their representatives with the slightest respect, while enacting wholesale radical changes to some 200 years of superior U.S. jurisprudence
    – the propensity to “pile on” with ever greater demands for limiting and even punitive effects against an inventor seeking U.S. Constitutionally mandated protection of his or her lawful property, despite the overwhelming “success” of the AIA in chilling and shutting down actual inventors’ activities, across the United States.

    There is no possible reading or interpretation of the applicable Articles of the U.S. Constitution could legitimately support the grotesque, evil farce that this has become. Surely, if the spirit of the Founding Fathers still exists in even the most vestigial form, it is outraged at these corrupt and dangerous machinations.

  11. Gene Quinn February 7, 2017 10:28 am

    Eric @10-

    Any interest in turning your comment into an article for posting on IPWatchdog.com?

    -Gene