PTAB Upholds Finjan Cybersecurity Patent In Juniper IP Row
By Britain Eakin
Law360 (April 9, 2020, 6:45 PM EDT) -- The Patent Trial and Appeal Board has upheld a Finjan anti-malware patent after determining that Juniper Networks failed to show the three claims it challenged were invalid as obvious in light of an earlier patent and printed publication.
The board devoted a good chunk of Tuesday's decision to discussing the patent's priority date, ultimately shooting down Israeli software maker Finjan Inc.'s bid to escape one of the prior art references. Finjan had argued that there were three priority applications that predate its patent's Dec. 22, 1997, filing date, which also means they predate an earlier patent Juniper Networks Inc. cited as prior art, and so the prior art can't be used to invalidate its patent.
But the board said the claims in Finjan's patent were not supported in the written descriptions of those applications, so it can't have an earlier priority date. The board said its reasoning was supported by its 2013 decision in Polaris Wireless v. TruePosition , which held that a patent is not entitled to a presumption of an earlier priority date when the written descriptions in the earlier applications aren't the same as the patent in question.
But even if there was written description support in the earlier applications, the board said it agreed with Juniper that Finjan didn't comply with a part of the Patent Act that requires a patent to explicitly state its relationship to priority applications. The board said Finjan's patent didn't meet that requirement, and that it mischaracterized its failed attempt to get a certificate of correction from the U.S. Patent and Trademark Office.
"Despite patent owner's assertion that the office denied the request because 'no correction was necessary' ... we agree with petitioner that the office instead denied the request because it was an improper attempt to perfect a claim of priority that was not found in the original application," the decision said.
As such, the board determined that the earlier patent, which was issued in Dec. 1, 1997, was prior art for the purposes of challenging the patent. Ultimately the priority date issue didn't hurt Finjan, with the board determining that the earlier patent doesn't identify suspicious code in the same way Finjan's claimed invention does.
The board further said that combining the earlier patent with another printed publication prior art reference wouldn't cure the deficiencies it identified.
Although Finjan prevailed at the PTAB, it didn't fare so well in the California district court case where it asserted the patent, along with several others, against Juniper in 2017. The parties moved to voluntarily dismiss what was left of the underlying suit in August after Juniper secured favorable outcomes in the case.
U.S. District Judge William Alsup had ordered a "shoot out" in the case, a tactic he's become known for where he instructs parties to choose one claim they think they can win on and move for summary judgment. According to court records, Finjan lost its first bid for summary judgment, after which that claim went to trial, with the jury determining in December 2018 that Juniper didn't infringe.
Juniper won summary judgment on the claim it selected and then prevailed again when Finjan moved for summary judgment on a third claim.
Nonetheless, Finjan welcomed the PTAB's ruling in a statement, touting the patent's survivability in the face of nine challenges in different forums. Finjan's Chief Intellectual Property Officer Julie Mar-Spinola said repeated validations of the patent, which has drawn more than $350 million in licensing revenue for the company, "should cement its durability and enormous value in the cybersecurity industry."
"And yet, accused infringers continue to delay liability not based on the merits but rather by gaming the patent system and laws with serial, non-meritorious challenges," she said.
Mar-Spinola went on to say the decision would bolster other cases in which Finjan has asserted the patent, including a suit against rival ESET. Last month, the court in that case declared a mistrial in light of the COVID-19 pandemic, saying it would contact the parties for further scheduling once the national emergency is over.
Counsel for the parties declined to comment on Tuesday's decision.
The patent-in-suit is U.S. Patent No. 6,154,844.
Judges Zhenyu Yang, Charles J. Boudreau and Sheila F. McShane sat on the panel for the PTAB.
Juniper is represented by Michael R. Fleming, Jonathan S. Kagan and Rebecca Carson of Irell & Manella LLP.
Finjan is represented by James Hannah, Shankar Nair, Jeffrey Price and Michael Lee of Kramer Levin Naftalis & Frankel LLP.
The case is Juniper Networks Inc. v. Finjan Inc. case number IPR2019-00026, at the U.S. Patent Trial and Appeal Board.
--Additional reporting by Jack Queen and Cara Bayless. Editing by Adam LoBelia.
