Takeaway: Allegations tantamount to inequitable conduct are not proper in a petition for inter partes review and will be disregarded.

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ‘494 patent. The ‘494 patent is entitled “Malicious Mobile Code Runtime Monitoring System and Methods” and claimed priority to seven earlier-filed applications.

As an initial matter, the Board stated that the claims of an unexpired patent are given “their broadest reasonable interpretation in light of the specification of the patent in which they appear.” The Board determined, however, that “no claim terms require express construction.”

In the Petition, Petitioner contended that “the priority claims in the ’494 patent are ‘defective for a number of reasons and, therefore, the challenged claims are not entitled to earlier priority based on any of the Priority Applications.’” Patent Owner countered “that the ’494 patent properly claims priority back to Touboul I, rendering both Touboul I and Touboul II ‘inoperative as prior art.’”

The Board stated the requirements to properly claim priority from an earlier application:

To claim priority from an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earliest application must comply with the written description requirement of 35 U.S.C. § 112. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977) (“[T]here has to be a continuous chain of copending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed.”). If any application in the priority chain fails to make the requisite disclosure, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).

According to Petitioner, certain claim elements and features are not described in some of the earlier-filed applications. The Board found Petitioner’s assertions “not persuasive”:

As Patent Owner correctly explains [], material necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions [], the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011).

The Board further found the facts of this case “distinguishable from those in cases on which Petitioner relies.”

The Board next addressed Petitioner’s contention that the priority chain was originally broken and a suspicious delay in correction of the priority claim during prosecution by means of a Petition to Accept Unintentionally Delayed Priority Claim Under 37 C.F.R. § 1.78 “cast[s] serious doubts concerning the veracity of Patent Owner’s representation that this delayed priority claim . . . was ‘unintentional.’” The Board recognized, however, that “Petitioner is essentially alleging inequitable conduct,” which is not proper in a petition for inter partes review. The Board thus disregarded the argument, noting that “we do not make any determination with respect to Petitioner’s allegations regarding the veracity of Patent Owner’s statements to the Office in prior proceedings.”

In the end, because “Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims,” the Board denied institution of the Petition for inter partes review.

Symantec Corp. v. Finjan, Inc., IPR2015-01897
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: February 26, 2016
Patent: 8,677,494 B2
Before: James B. Arpin, Zhenyu Yang, and Charles J. Boudreau
Written by: Boudreau
Related proceedings: Finjan, Inc. v. Symantec Corp., 14-02998 (N.D. Cal.); Finjan, Inc. v. Sophos, Inc., 14-01197 (N.D. Cal.); Finjan, Inc. v. Palo Alto Networks, Inc., 14-04908 (N.D. Cal.); Finjan, Inc. v. Blue Coat Systems, Inc., 15-03295 (N.D. Cal.); IPR2015-01892; IPR2015-01894; IPR2015-01893; IPR2015-01895; IPR2016-00159; IPR2015-01022.