Finjan Holdings, Inc. (NASDAQ: FNJN), the parent of wholly owned subsidiary Finjan, Inc., recently announced that the Patent Trial and Appeal Board (PTAB) for the United States Patent & Trademark Office (USPTO) denied six of Symantec Corporation’s petitions for inter partes review (IPR) of Finjan patents.
“This is an unprecedented response by the US Patent Office,” stated Phil Hartstein (left), President and CEO of Finjan, upon learning of the decision of the PTAB.
The word “unprecedented” gets thrown around all too frequently, but the use of the word here does seem entirely appropriate. That Finjan would prevail in six separate IPR institution decisions relating to the same patent litigation seems nothing short of extraordinary given that the PTAB is instituting 80% of IPR petitions, and given how slanted IPR rules are against the patent owner, particularly at the institution stage.
Indeed, the USPTO has only three months to determine whether to institute an IPR proceeding, and will do so if the petitioner can demonstrate that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. See 37 C.F.R. 42.108(c). The reasonable likelihood threshold is a particularly easy threshold to satisfy, given that the patent owner is not allowed to submit substantive evidence in a patent owner preliminary response. See 37 C.F.R. 42.107(c). That means Finjan was able to defeat the Symantec IPR petitions without the benefit of testimonial evidence. So even with the procedural deck stacked against Finjan, they managed to prevail on six separate IPR proceedings at the institution stage against Symantec. Their total consecutive victory total is 9 in a row, if you factor in all recent institution decisions.
“Our patents are strong and we are really focused on winning on the merits,” said Julie Mar-Spinola, Chief Intellectual Property Officer, Vice President of Legal Operations and a Member of the newly formed Finjan Mobile, Inc. Board of Directors. “All the credit goes to Michael Kim and our outside counsel team at Kramer Levin.”
Mar-Spinola attributes this success, at least in part, to Finjan recognizing the value of filing patent owner’s preliminary responses, a tool that surprisingly seems under-utilized, even if it is procedurally not ideally fair. “We have used a patent owner’s preliminary response since our first challenges and I think, generally speaking, it helps the PTAB judges to have the patent owner’s perspective, when they are trying to determine whether or not to grant institution.”
Other IPR institution decisions on other Finjan patents subject to this lawsuit remain outstanding. Therefore, at this point, it is unclear whether the lawsuit filed by Finjan in the United States Federal District Court for the Northern District of California will proceed. The patent lawsuit filed by Finjan in July of 2014 (CAND-3-14-cv-02998) against Symantec alleged infringement of eight U.S. patents, the five patents mentioned above and U.S. Patent Nos. 6,154,844, 7,613,926, and 8,677,494. Federal District Court Judge Haywood Gilliam had ordered the case stayed pending the decision on the first five petitions, with the three remaining IPR petitions expected to be decided in March. The parties await a ruling on the submission of a joint report to the court so Judge Gilliam can decide whether it makes sense to keep the stay in place or whether the case can proceed.
Tags: Finjan Holdings, institution decision, Inter Partes Review, IPR, patent, patent trial and appeal board, patents, PTAB, Symantec Corporation, USPTO
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