Trials@uspto.

gov Paper 7
571-272-7822 Date: December 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

JUNIPER NETWORKS, INC.,

Petitioner,

v.

FINJAN, INC.,
Patent Owner.
____________

IPR2019-01403
Patent 7,418,731 B2
____________

Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and

CHARLES J. BOUDREAU, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

On July 26, 2019, Juniper Networks, Inc. (“Petitioner”) filed a

Petition (Paper 2, “Pet.”) pursuant to 35 U.S.C. §§ 311–319 to institute an
inter partes review of claim 17 of U.S. Patent No. 7,418,731 B2 (Ex. 1001,
“the ’731 patent”). Finjan, Inc. (“Patent Owner”) filed a Preliminary
Response (Paper 6, “Prelim. Resp.”). For the reasons set forth below, we
deny the Petition as time-barred by 35 U.S.C. § 315(b).
IPR2019-01403
Patent 7,418,731 B2

I. BACKGROUND
A. The ’731 Patent
The ’731 patent “relates to computer security and network gateways.”
Ex. 1001, 1:20–21. Petitioner summarizes the sole challenged claim as
follows:
Claim 17 (the challenged claim) of the ’731 Patent describes
performing the steps of retrieving a file from the internet and
scanning the file to derive a “security profile” that includes a
list of at least one computer command that the file is
programmed to perform. The file is then stored in a cache for
future access and indexed by a file identifier. The security
profile is also stored in a cache for future access and indexed by
the same file identifier so that when the file is subsequently
requested from the Internet, its security profile is readily
accessible without the need to re-scan the file.

Pet. 4.

B. Challenged Claim
Independent claim 17, the sole challenged claim, is reproduced below.
17. A computer-readable storage medium storing program code
for causing a computer to perform the steps of:
retrieving a requested file from the Internet;
scanning the retrieved file to determine computer
commands that the file is programmed to perform;
deriving a security profile for the retrieved file, the
security profile including a list of at least one computer
command that the retrieved file is programmed to perform;
storing the retrieved file within a file cache for future
access, and indexing the retrieved file in the file cache with a
file ID; and

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storing the security profile for the retrieved file within a

security profile cache for future access, and indexing the
security profile in the security profile cache with the file ID of
the retrieved file, so that when the same file is subsequently
requested from the Internet, its security profile is readily
accessible from the security profile cache without the need to
perform the scanning.

Ex. 1001, 13:26–43.

C. Evidence
Petitioner relies on the following references:
Tso US 6,088,803 July 11, 2000 Ex. 1006
Grecsek US 6,088,801 July 11, 2000 Ex. 1010

Anawat Chankhunthod, Peter Danzig, and Chuck Neerdaels, A Hierarchical

Internet Object Cache, USENIX, January 1996 (Exhibit 1008)
(“Chankhunthod”)

David J. Stang, Computer Viruses and Artificial Intelligence, Virus Bulletin

Conference, September 1995 (Exhibit 1009) (“Stang”)

C. Asserted Grounds of Unpatentability

Petitioner challenges claim 17 on the following grounds:
Claim Challenged 35 U.S.C. § References
17 103(a) Tso, Stang
17 103(a) Tso, Stang, Chankhunthod
17 103(a) Tso, Grecsek
17 103(a) Tso, Grecsek, Chankhunthod

Petitioner supports its challenges with a Declaration by Seth Nielson, Ph.D.

Ex. 1003.

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D. Real Parties in Interest

The parties identify only themselves as real parties in interest. Pet. 1;
Paper 4, 1.

E. Related Proceedings
The ’731 patent has been asserted by Patent Owner against Petitioner
in Finjan, Inc. v. Juniper Networks, Inc., 3:17-cv-05659 (N.D. Cal.) (“the
related litigation), which is on appeal to the Federal Circuit in Finjan, Inc. v.
Juniper Networks, Inc., No. 19-2405 (Fed. Cir.). Pet. 1; Paper 4, 1. In
addition, the ’731 patent is involved in the following matters: (1) Finjan,
Inc. v. Qualsys Inc., No. 4:18-cv-07229 (N.D. Cal.); Finjan, Inc. v. Check
Point Software Technologies, Inc., No. 18-cv-02621 (N.D. Cal.); (3) Finjan,
Inc. v. Fortinet, Inc., No. 3:18-cv-06555 (N.D. Cal.); and (4) Finjan, Inc. v.
Palo Alto Networks, Inc., No. 14-cv-04908 (N.D. Cal.). Pet. 1; Paper 4, 1.
Petitioner additionally identifies Finjan, Inc. v. Blue Coat Systems, No. 5:13-
cv-03999 (N.D. Cal.) and Finjan, Inc. v. Blue Coat Systems, No. 5:15-cv-
03295 (N.D. Cal.) as completed litigations involving the ’731 patent. Pet. 2.
The ’731 patent also was previously the subject of IPR2015-02000
and IPR2016-00493, both of which have been terminated. Pet. 1; Paper 4, 1.

II. ANALYSIS
An inter partes review “may not be instituted if the petition requesting
the proceeding is filed more than 1 year after the date on which the
petitioner, real party in interest, or privy of the petitioner is served with a

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complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Patent

Owner contends that “Petitioner was first served with a complaint for
infringement of the ‘713 Patent on June 8, 2018, which is more than one
year and seven weeks before July 26, 2019, the date this Petition was filed.”
Prelim. Resp. 2 (citing Exs. 2001, 2002). We have reviewed Patent Owner’s
evidence and agree that the Petition is time-barred.
The served complaint expressly asserts claim 17 of the ’731 patent.
See Ex. 2002 ¶¶ 27–29, 126–138. In addition to providing proof of service
of that complaint on Petitioner, Ex. 2001, Patent Owner provides evidence
of the circumstances under which the complaint was served. Exs. 2003–
2006. Specifically, in the related litigation, the district court granted leave
for Patent Owner to file the complaint in an order dated June 6, 2018.
Ex. 2003. “Due to an error by the Court,” the district court vacated that
order on June 13, 2018. Ex. 2004. After a hearing, the district court again
granted leave for Patent Owner to file the complaint on July 19, 2018.
Ex. 2005. The complaint was filed with the court on July 27, 2018. See
Ex. 2006; Prelim. Resp. 2. Service occurred between the June 6, 2018 grant
by the district court and the June 13, 2018 vacatur of that grant by the
district court.
The evidence before us does not explain clearly the nature of the
district court’s “error” that resulted in vacatur of its earlier order, but under
controlling precedent, the specific nature of that error does not impact our
determination. That is, the Federal Circuit has held that the one-year bar for
inter partes review proceedings “unambiguously precludes the Director
from instituting an IPR” and “is implicated once a party receives notice

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through official delivery of a complaint in a civil action, irrespective of

subsequent events.” Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d
1321, 1330 (Fed. Cir. 2018) (en banc) (emphasis added); see also Bennett
Regulator Guards, Inc. v. Atlanta Gas Light Co. 905 F.3d 1311, 1315 (Fed.
Cir. 2018) (reiterating Click-to-Call’s holding). Click-to-Call is unequivocal
that “the text of § 315(b) clearly and unmistakably considers only the date
on which the petitioner, its privy, or a real party in interest was properly
served with a complaint.” Click-to-Call, 899 F.3d at 1332 (emphasis added).
We do not find that the facts here provide sufficient distinction with
Click-to-Call, which specifically addressed a complaint later voluntarily
dismissed without prejudice. See id. at 1327. In particular, we note that the
Board has addressed Click-to-Call in determining that “if service of a
pleading asserting infringement occurred ‘in a manner prescribed by law,’
then the one-year time period for a petitioner to file a petition under § 315(b)
is triggered on the date of service.” GoPro, Inc. v. 360Heros, Inc., IPR2018-
01754, Paper 38 at 10 (PTAB Aug. 23, 2019) (precedential). Although “the
Board has recognized [that] a complaint improperly served does not trigger
the § 315(b) time bar,” id. at 14, service occurred at a time authorized by the
district court, and we discern no evidence on this record that service failed to
comply with Rule 4 of the Federal Rules of Civil Procedure.
Accordingly, because Petitioner was properly served with a complaint
alleging infringement of the ’731 patent more than a year before filing its
Petition, we conclude that the Petition is barred.

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It is
ORDERED that the Petition is denied and no trial is instituted.

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PETITIONER
Michael Fleming
mfleming@irell.com

PATENT OWNER

James Hannah
jhannah@kramerlevin.com

Jeffrey Price
jprice@kramerlevin.com

Michael Lee
mhlee@kramerlevin.com