PTAB Relies on Priority Analysis in a Related Proceeding in Denying IPR

Jan 17, 2018

Reading Time : 1 min

ESET argued that the claims of the ’086 Patent are obvious in view of several combinations of prior art references, primarily relying on a reference titled Proof-Carrying Code (“Necula”). In the 01444 proceeding, Finjan argued that FireEye had failed to establish that Necula antedated the priority date of the ’086 Patent. ESET argued that the ’086 Patent was not entitled to a priority date antedating Necula because none of the patents or patent applications from which the ’086 Patent claimed benefit disclosed the specific limitations claimed by the ’086 Patent. The PTAB stated that it had analyzed the claims of the ’926 Patent in the 00145 proceeding and sided with the patent owner, finding that the disclosure provided sufficient written-description support. The PTAB noted that the claims of the ’086 Patent at issue contained limitations that were nearly identical to those of the ’926 Patent. For example, Claim 1 of the ’926 Patent recites “appending a representation of the retrieved Downloadable security profile data to the incoming Downloadable, to generate and appended Downloadable,” and Claim 1 of the ’086 Patent recites the same limitation without the words “retrieved” and “incoming”.

Given that the claim language of the ’926 Patent was nearly identical to that of the ’086 Patent, the PTAB held that the ’086 Patent shares essentially the same disclosure as the ’926 Patent. The PTAB also noted that the ’086 Patent incorporates the ’926 Patent by reference. The PTAB therefore denied ESET’s petition and joinder motion.

ESET, LLC v. Finjan, Inc., IPR2017-01969, Paper No. 8 (PTAB January 9, 2018).

Share This Insight

Previous Entries

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

IP Newsflash

May 13, 2025

The Federal Circuit recently affirmed a district court’s holding that patent term extension (PTE) for a reissued patent was properly based on the issue date of the original patent and not that of the reissued patent. The Federal Circuit concluded that, where both the original and reissued patents claimed a drug product under regulatory review, using the issue date of the original patent to calculate PTE comports with both the purpose of the Hatch-Waxman Act and the related statutory context.

...

Read More

IP Newsflash

May 12, 2025

The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not persuaded by petitioner’s arguments that a second petition was needed due to alleged claim construction issues or the number, length or scope differences of the challenged claims.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.