Finjan Prevails Against Unified Patents Inc., PTAB Cites Five Reasons for Denying Institution of IPR
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April 14, 2020
EAST PALO ALTO, Calif., April 14, 2020 (GLOBE NEWSWIRE) -- Finjan Holdings, Inc. (NASDAQ: FNJN), a cybersecurity company, and its subsidiary Finjan, Inc. (Finjan), announce that under 35 U.S.C. §314 the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) issued a Decision Denying Institution of Inter Partes Review (IPR) of U.S. Patent No. 8,079,086 (the '086 Patent) on April 13, 2020.
Unified Patents Inc.'s (Unified) petition for IPR is the seventh unsuccessful challenge to the '086 Patent (four IPRs and three Reexamination Requests) concerning substantially the same claims and prior art. Here, in Unified Patents Inc. v. Finjan, Inc., IPR2019-01611, Paper 18, dated April 13, 2020, the PTAB considered the "extensive history of the prior IPRs" and "the potential for abuse of the review process by repeated attacks on patents" as bearing strongly on its decision to deny institution. The PTAB concluded that "five of the seven General Plastic factors weigh in favor of exercising [its] decision to deny institution of the proceeding, and no factor weighs against doing so." Paper 18 at 20. One of those five factors that weighed heavily in favor of denying institution was that Unified was unfairly able to study Finjan's previous arguments and the PTAB's institution decisions. Paper 18 at 13.
"We appreciate the PTAB's attention to the record of past challenges to the '086 Patent and its conclusions. This is a particularly satisfying victory for Finjan because Unified is notorious for helping entities violate even quality patents such as Finjan's '086 Patent," said Julie Mar-Spinola, Finjan's Chief IP Officer and VP of Legal Operations. "Except for preserving its membership revenues, Unified exists solely for accused infringers such as Rapid7, Cisco, and Palo Alto Networks to leverage this entity and gain multiple attempts to delay meritorious patent claims and to invalidate our patents. While Unified markets itself as going after "bad patents," Finjan's patents have proven time and again to be useful, valuable, and durable. There was no legitimate purpose behind Unified's petition other than a lackluster attempt to shield its members from liability, skirt established rules of the IPR process, and to harass Finjan. Finjan had also requested the PTAB deny Unified's petition for failure to identify other beneficiaries as real parties in interest. Still, the PTAB decided 'not [to] reach this dispute' without explanation."
Finjan has asserted '086 Patent in litigation against ESET, Check Point, Rapid 7, and Fortinet. Finjan also has pending patent infringement lawsuits against Palo Alto Networks, Cisco, SonicWall, Juniper, and Qualys relating to, collectively, more than 20 patents in the Finjan portfolio. The court dockets for the other 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.
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