PTAB Says Juniper Patent Challenge Would Be 'Inefficient'
By Matthew Bultman
Law360 (April 30, 2019, 5:13 PM EDT) -- With Cisco’s challenge to a Finjan patent on cybersecurity technology in its final stages, the Patent Trial and Appeal Board on Monday said starting a new review of the patent based on a request from Juniper Networks would be an “inefficient” use of resources.
The PTAB denied a petition that Juniper filed in October seeking inter partes review of the patent. Juniper’s challenge came amid an ongoing infringement dispute between the Sunnyvale, California, cybersecurity company and Finjan, a licensing company.
Juniper had three arguments why various claims in the patent were obvious. According to the PTAB, one simply wasn’t convincing, and the other two were based primarily on an old patent application — the same application Cisco used in its challenge.
“Notwithstanding some differences in the prior art combined with [the application], we are persuaded that instituting trial here would be an inefficient use of board resources and would result in substantial overlap and duplication of issues, arguments, and evidence,” the board wrote.
The PTAB has increasingly been taking a hard look at petitions that follow an earlier challenge to the same patent, even if different companies file them. Earlier this month, two U.S. senators urged the board to do even more to limit “serial attacks” to patents.
An attorney for Finjan declined to comment on the board’s decision. Counsel for Juniper could not immediately be reached.
Finjan owns a portfolio of patents related to cybersecurity technology. And it has not been shy about enforcing them. This particular patent has been involved in close to a dozen cases, according to PTAB filings.
Juniper brought its PTAB challenge almost 10 months after Cisco petitioned the board for inter partes review. The PTAB is expected to issue a final decision on the validity of the challenged claims in Cisco’s case by early June.
Acknowledging it wasn’t first in line to challenge the patent, Juniper argued the board should nonetheless institute review because it had some new evidence the PTAB had never before considered. Juniper also noted that it challenged a claim not at issue in the Cisco review.
Ruling Monday, the PTAB emphasized IPRs have become an “all-or-nothing affair” since the U.S. Supreme Court barred partial institutions in SAS Institute v. Iancu . The board said Juniper was well aware of this when it filed a petition in which two of its three arguments had some overlap with another case.
“Furthermore, we note that at the time of filing this petition, significant activity in the [Cisco] case has informed the petition here, evidenced by petitioner’s attempts to bolster the weaknesses identified in the [Cisco] case with additional arguments and prior art,” the board wrote.
Also, were review to begin, the PTAB said it would have to reconcile arguments and evidence across multiple trials. And delaying the Cisco case to “eliminate potential inconsistencies” wasn’t an option, the board said, given the requirement there be a final decision within one year of instituting review.
“Accordingly, it would not be prudent to institute yet another trial on the [patent] with [the old patent application] featuring so prominently,” the board wrote.
Cisco and Juniper aren’t the first companies to take aim at this patent at the PTAB. The board in 2016 upheld certain claims challenged by Palo Alto Networks and Blue Coat Systems, finding the companies had not shown the claims were invalid.
The patent at issue is U.S. Patent No. 7,647,633.
Juniper is represented by Michael Fleming and Joshua Glucoft of Irell & Manella LLP.
Finjan is represented by James Hannah, Jeffrey Price and Michael Lee of Kramer Levin Naftalis & Frankel LLP.
The case is Juniper Networks Inc. v. Finjan Inc., case number IPR2019-00060, at the Patent Trial and Appeal Board.
--Editing by Alyssa Miller.
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