Symantec Corporationv.Finjan, Inc.

Patent Trial and Appeal Board

Feb 25, 2016

10768920 (P.T.A.B. Feb. 25, 2016)

Trials@uspto.gov Paper 12
571-272-7822 Entered: February 25, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SYMANTEC CORP.,
Petitioner,

v.

FINJAN, INC.,
Patent Owner.
____________

Case IPR2015-01545
Patent 7,756,996

Before THOMAS L. GIANNETTI, RICHARD E. RICE, and
MIRIAM L. QUINN, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 CFR § 42.71(d)

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INTRODUCTION
Symantec Corporation (“Petitioner”) filed a Petition pursuant to 35
U.S.C. §§ 311–319 to institute an inter partes review of claims 1–7 (all
claims) of U.S. Patent No 7,756,996, issued on July 13, 2010 (Ex. 1001, “the
’996 patent”). Paper 1 (“Pet.”). Finjan, Inc. (“Patent Owner”) filed a
Preliminary Response. Paper 8 (“Prelim. Resp.”). In our Decision dated
January 14, 2016, we denied the Petition as to all claims. Paper 10
(“Decision”).
Petitioner requests “partial” reconsideration of our Decision. Paper 11
(“Req. Reh’g”). Petitioner limits its request to independent claims 4 and 7,
and dependent claims 5 and 6. Req. Reh’g 2. Petitioner’s stated grounds for
rehearing are that (1) in denying trial as to claim 7, the Board relied on
limitations not recited in the claim; (2) the Board improperly limited claim 7
to a particular embodiment; (3) the Board’s “implicit” construction of the
term “management data” is improper; and (4) the Board improperly limited
independent claim 4.
For the reasons that follow, Petitioner’s request for rehearing is
denied.
ANALYSIS
The applicable standard for a request for rehearing is set forth in 37
C.F.R. § 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for
rehearing, without prior authorization from the Board. The
burden of showing a decision should be modified lies with the
party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.

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1. Claim 7 - Reliance on Limitations not Recited
Petitioner contends that in our Decision, we relied on two limitations
not recited in claim 7 in distinguishing that claim from Bavadekar (Pub. No.
US 2003/0009571). Req. Reh’g 3–4. Those limitations are “server-
originated” and “receiving from a management server computer.” Id.
As we pointed out in our Decision, Petitioner did not provide claim-
by-claim, element-by-element claim charts demonstrating how each
individual claim limitation is met by Bavadekar, or by any of the other
references relied upon in the Petition. Decision 12. Thus, Petitioner did not
provide an analysis of claim 7 separate from claim 4 or any other claim.
As the rehearing request acknowledges, Petitioner provided a chart
showing the limitations of claims 1, 4, and 7 in a side-by-side format. Req.
Reh’g 13–14; Pet. 7–8. In presenting that chart, Petitioner explained the
purpose as follows:
The text of the three challenged independent claims (1, 4, and
7) is reproduced in the chart below. For ease of reference, labels
have been assigned to each limitation, such as 1[P] which refers
to the preamble of claim 1 and 4[G] which refers to the final
step of claim 4. Other than the claim format (i.e., system,
method and computer-readable storage medium), independent
claims 1, 4, and 7 recite substantially similar limitations. The
only meaningful difference is that claim 1 is directed to a
system and further requires a “network gateway computer
storing a network gateway communicator,” to communicate
with a client, management server, and HTTP server, and data
“embedders” and “extractors” on the client and gateway. Thus,
where applicable, these claims are discussed together herein.
Pet. 6–7 (emphasis added; bracketed material in original).
As indicated, Petitioner’s chart assigned a label to each limitation, and
equated many of the limitations that appear in all three independent claims.
For example, claim element [B] in claim 4 recites, “receiving server-
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originated non-HTTP management data from a management server
computer intended for at least one client computer.” According to the chart,
this term or its equivalent is present in all three independent claims. Pet. 7–
8.
The chart, and Petitioner’s accompanying explanation, are discussed and
relied upon in the Decision at pages 13–14. Based on Petitioner’s
representations and the fact that Petitioner’s analysis treated the common
elements together, we discussed claims separately only where differences
were relied on by Petitioner. Decision 13.
Petitioner’s anticipation challenge based on Bavadekar discusses
claims 4 and 7 together. Pet. 14. Specifically, as to the above claim element
[B] limitations “server-originated” and “receiving . . . from a management
server computer,” Petitioner’s analysis in relation to Bavadekar does not
distinguish between claim 4 and claim 7. Pet. 15–17. Consequently, our
Decision took this into account and treated those claims together. Decision
12–16.
Petitioner’s rehearing request asserts that this was error. Req. Reh’g
3–5. Petitioner now asserts that the Petition “pointed out the differences
between claims 1, 4, and 7.” Id. at 13. Petitioner cites to the statement,
quoted above, that the “only meaningful difference is that claim 1 is directed
to a system, and further requires a ‘network gateway computer . . . .’” Id.
Because this argument addresses the “network gateway” recitation in
claim 1, not the two claim differences the rehearing request alleges the
Board misapprehended or overlooked in considering claim 7, we do not find
it persuasive. Nor are we persuaded by Patent Owner’s alternative argument
based on a section heading in its Petition, where square brackets were used
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to indicate the differences in language between claims 4 and 7 discussed
supra. Id. at 14. The analysis that followed this heading did not discuss the
claims separately and did not distinguish between them. Pet. 15–17.
In summary, we conclude that the differences in language between
claims 4 and 7 that Petitioner cites in its rehearing request were not relied on
in the Petition; in fact, Petitioner told the Board that the claims “recite
substantially similar limitations.” Accordingly, the alleged distinction relied
on now could not have been overlooked or misapprehended by the Board in
its Decision.
2. Claim 7 – Improperly Limited to a Particular Embodiment
Petitioner contends that the Board improperly limited claim 7 by
requiring a management server separate from the gateway that receives
management data. Req. Reh’g 4–8. Also, according to Petitioner, claim 7
“should not be limited to embodiments where the management data and
HTTP messages are generated by different computers.” Id. at 8.
In the Decision, we explained that our rationale for distinguishing
Bavadekar was based on the claims:
Patent Owner points out that in Bavadekar, the same computer
that generates the message also generates the HTTP packet with
the message as the payload. [Prelim. Resp.] at 16. As a result,
message data is never “received from” the management server
computer as these claims require. Id. at 17. We find this
argument persuasive. In the ʼ996 patent, the management server
is separate from the gateway that receives the management data.
See Fig. 3, reproduced supra. The claims reflect this by reciting
“receiving server-originated non-HTTP management data from
a management server computer intended for at least one client
computer.” Petitioner has failed to show that this element is met
by Bavadekar.
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Decision 14 (emphasis added). This explanation shows that we were relying
on specific claim language requiring “receiving” non-HTTP management
data, which we determined was not met by Bavadekar because there the
same computer generates the message and the HTTP packet with the
message as its payload.
Thus, we are not persuaded that there was an improper reading of
limitations from the embodiments into claim 7 as Petitioner asserts. Req.
Reh’g 5–8. Petitioner’s argument on this issue amounts to a disagreement
with the Board’s findings regarding Bavadekar, and is not persuasive that
anything was overlooked or misapprehended by the Board.
3. Improper “Implicit” Construction of Management Data
Petitioner admits that neither party provided a proposed construction
of the term “management data.” Req. Reh’g 8. Nevertheless, Petitioner
asserts that the Board’s “interpretation” is not supported by “substantial
evidence.”
Our rules require that a rehearing request “must specifically identify
all matters the party believes the Board misapprehended or overlooked.” 37
C.F.R. § 42.71(d). Petitioner did not propose a construction for this term,
and, therefore, cannot show that something was overlooked. Petitioner
instead presents an analysis of the term “management data” that was already
considered by the Board in denying the Petition. Req. Reh’g 9–10.
Petitioner’s argument on this issue amounts to a disagreement with the
Board’s conclusion, and is not persuasive that anything was overlooked or
misapprehended.
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4. Claim 4 – Improperly Limited
Petitioner’s assertion that claim 4 was “improperly limited” by the
Board tracks its arguments pertaining to claim 7, supra. Req. Reh’g 12–13.
For the reasons discussed, we are not persuaded that anything was
overlooked or misapprehended.
5. Other Arguments
We have considered Petitioner’s other arguments (Req. Reh’g 13–15)
and do not find them persuasive.

CONCLUSION
Petitioner has not carried its burden of demonstrating that our
Decision denying institution of inter partes review of claims 4–7 of the ʼ996
patent misapprehended or overlooked any matters or that the Board abused
its discretion. 37 C.F.R. § 42.71(d).

ORDER
For the foregoing reasons, Petitioner’s Request for Rehearing is denied.

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PETITIONER:
Joseph Richetti
Daniel Crowe
BRYAN CAVE LLP
joe.richetti@bryancave.com
dacrowe@bryancave.com

PATENT OWNER:
James Hannah
Jeffrey Price
KRAMER LEVIN NAFTALIS & FRANKEL LLP
jhannah@kramerlevin.com
jprice@kramerlevin.com

Michael Kim
FINJAN INC.
mkim@finjan.com