PTAB Rules Palo Alto Networks Failed to Prove Cybersecurity Firm Finjan’s 154 Patent Unpatentable
Established more than 20 years ago, Finjan is a globally recognized leader in cybersecurity. Their inventions are embedded within a strong portfolio of patents focusing on software and hardware technologies capable of proactively detecting previously unknown and emerging threats on a real-time, behavior-based basis.
On May 23, 2019 Finjan Holdings, Inc. (FNJN), and its subsidiary, Finjan, Inc. (“Finjan”),announced that the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) entered a Final Written Decision on Remand, dated May 15, 2019, concerning Palo Alto Networks, Inc.’s (“Palo Alto Networks”) petition for Inter Partes Review (“IPR”, Case IPR2016-00151) of Claims 1-12 of Finjan’s U.S. Patent No. 8,141,154 (“the ‘154 Patent”). Specifically, the PTAB determined that in addition to determining that Palo Alto Networks failed to show “by a preponderance of the evidence that claims 1-8, 10, and 11 of the ‘154 patent are unpatentable,” Palo Alto Networks also failed to show that claims 9 and 12 are unpatentable.
Palo Alto Networks filed a Petition for IPR on Claims 1-12 of the ‘154 Patent on November 5, 2015. The PTAB instituted trial on Claims 1-8, 10, and 11, and denied institution of dependent Claims 9 and 12. The PTAB then issued its original Final Written Decision on March 15, 2017, and determined that Palo Alto Networks had not shown that Claims 1-8, 10, and 11 were unpatentable. Palo Alto Networks appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”). While the appeal was pending, the U.S. Supreme Court ruled in a different case, SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355-56 (2018), that IPR proceedings must consider “each claim challenged” and “the grounds on which the challenge to each claim is based.” The CAFC vacated the March 15 Final Written Decision and remanded to the PTAB for reconsideration “consistent with SAS.” On reconsideration, the PTAB ruled that because “independent claims 1 and 10 have not been shown to be unpatentable over [prior art], we determine that [Palo Alto Networks] has not shown … that [dependent] claims 9 and 12 are unpatentable over [prior art].”
“The ‘154 Patent has been subject to seven administrative challenges, resulting in four favorable written decisions and three institutions denied or terminated by the PTAB. This most recent PTAB decision should offer some additional guidance to other venues where we have asserted the ‘154 Patent,” stated Julie Mar-Spinola, Finjan’s CIPO. “In addition to Palo Alto Networks, the ‘154 Patent is involved in district court actions against Cisco Systems, Inc.; SonicWall, Inc.; BitDefender, Inc. and BitDefender S.R.L.; Juniper Networks, Inc.; Check Point Software Technologies Inc. and Check Point Software Technologies LTD.; Rapid7, Inc. and Rapid7 LLC; and Qualys, Inc.
The current status of IPR proceedings are listed below. There are no more cases pending pre-institution.
- ‘633 Patent – Final Written Decision – PTAB’s Deadline is June 5.
- ‘494 Patent – Federal Circuit Opinion – No deadline
Pending cases with activity still underway:
- ‘844 Patent – Patent Owner Response due July 9.
- ‘305 Patent – ESET Federal Circuit Appeal. ESET’s opening brief due date is TBD.
- ‘305 Patent – Reexam Federal Circuit Appeal. Oral Argument date is TBD.
- The court dockets for the foregoing cases are publicly available on the Public Access to Court Electronic Records (PACER) website, www.pacer.gov, which is operated by the Administrative Office of the U.S. Courts.