Finjan Holdings reports on recent decisions by PTAB
Finjan Holdings reported on recent decisions by the United States Patent and Trademark Office's, or USPTO, Patent Trial and Appeal Board, or PTAB, concerning Juniper's multiple petitions for inter partes review, or IPR, of certain claims relating to Finjan's U.S. Patent Nos. 6,154,844; 7,613,926; 7,647,633 and 8,141,154. Most recently on May 1, the board denied institution of Juniper's petition for IPR institution of claims 15 and 22 of the '926 Patent, finding that "the information presented ... and the accompanying evidence does not establish a reasonable likelihood that [Juniper] would prevail in showing the unpatentability of either of claims 15 and 22 of the '926 patent...." On April 29, the board also denied institution of Juniper's petition for inter partes review of claims 1, 8, 14, and 19 of the '633 Patent on essentially three grounds. First, the PTAB found that Juniper failed to establish a reasonable likelihood of prevailing that the claims are unpatentable as obvious over prior art. Second, the PTAB agreed with Finjan that the board should deny the petition under 35 U.S.C. Section 314 under General Plastics Industrial Co., Ltd. v. Canon Kabushiki Kaisha, as even though Juniper had not filed a previous petition for IPR on this patent, 35 U.S.C. Section325, gives the board discretion to deny the petition as appropriate because Juniper argued "the same or substantially the same prior art or arguments previously presented to the Office". Lastly, the PTAB denied institution under the U.S. Supreme Court's SAS Ins., Inc. v. Iancu, stating that "our only options are to institute an inter partes review as to all grounds and all challenged claims, or to deny institution." In finding that one of three of Juniper's grounds for challenging the unpatentability of the '633 Patent to "be without merit," the PTAB determined that denial of the petition was appropriate. On April 9, 2019, regarding IPR 2019-00026 in which Juniper petitioned for IPR of claims 1, 15, and 41 on the '844 Patent, the PTAB did institute review and determined based on the parties' preliminary arguments that Juniper had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of such claims. The PTAB, however, emphasized that "this Decision is not a final determination on  the patentability of any challenged claims ... and, thus, leaves undecided any remaining fact issues necessary to determine whether sufficient evidence supports [Juniper's] contentions by a preponderance of the evidence in the final written decision." Lastly, as reported in a separate press release on April 1, the PTAB also denied Juniper's petition for IPR of claim 1 of the '154 Patent.