PTAB Reverses Examiner's Rejection Of Security Patent
Share us on: By Tiffany Hu
Law360 (October 3, 2018, 6:25 PM EDT) -- The Patent Trial and Appeal Board has reversed an examiner's decision rejecting several claims of a computer security patent held by cybersecurity firm Finjan Holdings Inc., finding that prior art did not disclose "all of the elements" in the claimed invention.
The PTAB found Monday that a patent examiner had wrongly concluded that claims in Finjan's U.S. Patent No. 8,015,182 B2 were unpatentable for being obvious over prior art, reversing the examiner's decision to reject those claims. In doing so, the board ruled that prior art known as Bates did not disclose claims relating to a system for scanning and checking for computer viruses, but only the results of such virus checking, which are then sent back to the computer and included in the computer's virus database.
"Finjan recognizes and appreciates this most recent affirmation that another of its patents is valid over various combinations of prior art," Julie Mar-Spinola, Finjan's chief intellectual property officer and vice president of legal operations, said in a Wednesday press release. "This is another arrow in our quiver used to preserve the established value of our patents."
The '182 patent covers a system and method for assessing security risks in webpages that are listed in search engines, and displays "search results with appended security information," according to case filings.
Finjan said that an unnamed entity had challenged the '182 patent before the U.S. Patent and Trademark Office and requested a re-examination the patent, which the office agreed to do.
A patent examiner had initially found that the a combination of Bates and other prior art disclosed an "active program" that processes security assessments of webpages and a "content security scanner" evaluate the security of those pages, according to the PTAB.
On appeal, Finjan had contended that the examiner had found a substantial new question of patentability in the present case, as the proposed prior art combination were already asserted against the '182 patent, the cybersecurity firm argued.
In that proceeding, Symantec had unsuccessfully challenged the '182 patent, among others, with the board finding that Symantec couldn't show a reasonable likelihood that it would prevail in invalidating at least one challenged claim of the patent.
But the PTAB said that because no trial had been instituted, there was no "final holding of invalidity" or "concluded examination or review" over the proposed combination. As such, the examiner had not erred in finding the question of patentability to be new and substantial based on that combination, the board concluded.
Despite this, the board disagreed with the examiner's findings that Bates disclosed all the elements of the '182 patent, and reversed the examiner's decision with regards to those claims.
The patent-at-issue is U.S. Patent No. 8,015,182 B2.
Finjan is represented by Dawn-Marie Bey of Bey & Cotropia PLLC.
The case is Ex parte Finjan Inc., case number 2018-007444, before the Patent Trial and Appeal Board.
--Additional reporting by Vin Gurrieri. Editing by Breda Lund.
