Symantec Corp. v. Finjan: Denying Institution in View of Piecemeal Claim Limitation Presentation IPR2015-01548
Takeaway: Piecemeal presentation of claim limitations, without adequate explanation of how the various embodiments in the prior art tie to the claims, is not sufficient to persuade the Board that the standard for institution has been met.
In its Decision, the Board denied the Petition and declined to institute inter partes review of any claim of the ‘182 patent. The Board’s view was that Petitioner had not sufficiently shown a reasonable likelihood of establishing that the challenged claims are unpatentable.
Petitioner had challenged claims 8-11 of the ‘182 patent on the following grounds: (1) obviousness of claims 8-11 and 13 under 35 U.S.C. § 103 in view of Dixon and Bates; and (2) obviousness of claims 8-11 and 13 under 35 U.S.C. § 103 in view of Rowan and Bates. The ‘182 patent relates to “displaying search results with appended security information” in the context of “a system and method for combining operation of a search engine with operation of a content security filter, so as to provide security assessments for web pages or media content (collectively, web content) located by the search engine.”
In connection with the first ground (1), Patent Owner had disputed the assertion by Petitioner that Dixon teaches the “dynamically updating” limitation, finding that the section(s) of Dixon relied upon by Petitioner had “nothing to do with the dynamic update of a presentation of when security assessments are received.” The Board agreed with Patent Owner on this point. It also found that “Petitioner [had] not demonstrated sufficiently that Dixon’s iterative update teaches or suggests an update to the search results presentation” because “Dixon teaches an update of reputation information, not of a display of search results.” The Board also agreed with Patent Owner that the Jha (Petitioner’s Declarant) Declaration was conclusory.
With respect to the second ground (2), Patent Owner had challenged Petitioner’s contention that “Rowan’s presentation of the search results is dynamically updated.” The Board agreed with Patent Owner that “Petitioner has not demonstrated sufficiently that Rowan in view of Bates teaches the dynamically updating limitation.”
Symantec Corp. v. Finjan, Inc., IPR2015-01548
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: January 14, 2016
Patent: 8,015,182 B2
Before: Thomas L. Giannetti, Richard E. Rice, and Miriam L. Quinn
Written by: Quinn
Related Proceedings: District Court case filed in the U.S. District Court for the Northern District of California (Case No. 3:14-cv-02998-RS); additionally, “petitions for inter partes review have been filed regarding patents at issue in the foregoing litigation.”