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`IRELL & MANELLA LLP
`
`A Registered Limited Liability
`
`Law Partnership Including
`
`Professional Corporations
`
`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 1 of 9
`
`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`Casey Curran (SBN 305210)
`ccurran@irell.com
`Sharon Song (SBN 313535)
`ssong@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Kevin Wang (SBN 318024)
`kwang@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`
`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`vs.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`Defendant.
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`)
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`Case No. 3:17-cv-05659-WHA
`
`DEFENDANT JUNIPER NETWORKS,
`INC.’S RESPONSE RE EARLY MOTION
`FOR SUMMARY JUDGMENT RE ’494
`PATENT
`
`
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 2 of 9
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`1
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`I.
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`QUESTION 1
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`A.
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`Part 1: Regarding Juniper’s “database” construction, did the PTAB actually
`rely upon Finjan’s distinction between “flat file” and “flat file database?”
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`The PTAB did not rely upon Finjan’s distinction between “flat file” and “flat file database”
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`in upholding the validity of claim 10 in IPR2015-01892 because the PTAB found that the
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`Swimmer reference disclosed a “database” even under Finjan’s narrower proposed construction.
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`Ex. 1 (Final Written Decision, Paper 58) at 16-17, 39-41.
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`B.
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`Part 2: If not, on what authority can Juniper argue that Finjan’s distinction
`amounts to a true disclaimer?
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`Although the PTAB distinguished claim 10 from Swimmer on grounds other than Finjan’s
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`“database” argument, Finjan’s statements about the meaning of “database” nevertheless limit the
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`meaning of the term. The Federal Circuit has made clear that “[b]ecause an IPR proceeding
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`involves reexamination of an earlier administrative grant of a patent, it follows that statements
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`made by a patent owner during an IPR proceeding can be considered during claim construction
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`and relied upon to support a finding of prosecution disclaimer.” Aylus Networks, Inc. v. Apple
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`Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017). This rule follows from the well-settled principle that,
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`“[a]n applicant’s argument made during prosecution may lead to a disavowal of claim scope even
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`if the Examiner did not rely on the argument.” Seachange Intern., Inc. v. C-COR, Inc., 413 F.3d
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`1361, 1374 (Fed. Cir. 2005) (“The fact that the Examiner did not indicate reliance on the point-to-
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`point distinction is of no consequence.”); Microsoft Corp. v. Multi–Tech Sys., 357 F.3d 1340, 1350
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`(Fed.Cir.2004) (“We have stated on numerous occasions that a patentee’s statements during
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`prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”);
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`Barnes & Noble, Inc. v. LSI Corp., 2014 WL 1365422 at *12 n. 2 (N.D. Cal. April 7, 2014) (citing
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`Anderson Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007) (fact that
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`applicant amended claims and distinguished reference on other grounds did “not change the fact
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`that the applicants advanced an express definition of the term ‘time stamp’ before the PTO in an
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`attempt to distinguish prior art”).
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`The Federal Circuit’s decision in American Piledriving Equip., Inc. v. Geoquip, Inc., 637
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`F.3d 1324 (Fed. Cir. 2011) is instructive. In that case, the patentee attempted to distinguish a
`
`IRELL & MANELLA LLP
`
`A Registered Limited Liability
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`Law Partnership Including
`Professional Corporations
`
`
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`
`
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 3 of 9
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`reference during a reexamination proceeding by arguing that the term “integral” meant that two
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`components were “one-piece.” Id. at 1336. The patentee later argued that “integral” should not
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`mean “formed or cast of one piece” on the grounds that its statement during reexamination was not
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`a disavowal because it “was unnecessary to overcome the reference and that the examiner
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`explicitly disagreed with it.” Id. The Federal Circuit squarely rejected this argument, explaining
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`that “American Piledriving unambiguously argued that ‘integral’ meant ‘one-piece’ during
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`reexamination and cannot attempt to distance itself from the disavowal of broader claim scope.”
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`Id.
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`Here, Finjan unambiguously argued during post-grant proceedings that a “database
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`10
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`schema” is defined as a “description of a database to a database management system (DBMS) in
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`the language provided by the DBMS” and that Swimmer did not satisfy the “database” element
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`because it did not store the data “in the form of a table, where only one table can be used for each
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`database.” Ex. 2 (Patent Owner’s Response, Paper 27) at 37-39. Just as in American Piledriving,
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`these statements constitute a disavowal of any broader meaning of “database” and support the
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`adoption of Juniper’s construction.
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`II.
`
`QUESTION 2
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`A.
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`Part 1: A WRITE command is a legitimate command, but it is disclosed as a
`suspicious computer operation in the ’194 patent at column 5 line 59. Where in
`the ’194 patent does it explain how to distinguish between a suspicious versus
`non-suspicious operation?
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`The ’194 Patent does not explain how to distinguish between suspicious versus non-
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`suspicious operations. As the Court correctly notes, the ’194 Patent identifies a WRITE command
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`as an example of a “suspicious computer operation,” even though a WRITE command, by itself is
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`a legitimate command. The patent provides no teaching or explanation of how to distinguish
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`between which legitimate commands are “suspicious” and which ones are not. Indeed, other than
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`the “Example List of Operations Deemed Potentially Hostile,” the ’194 Patent’s only explanation
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`of what constitutes “suspicious” is an almost unbounded description of computer operations:
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`It will be further appreciated that a Downloadable is deemed suspicious if
`it performs or may perform any undesirable operation, or if it threatens or
`may threaten the integrity of an internal computer network 115
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`IRELL & MANELLA LLP
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`A Registered Limited Liability
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`
`
`- 2 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 4 of 9
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`component. It is to be understood that the term “Suspicious” includes
`hostile, potentially hostile, undesirable, potentially undesirable, etc.
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`’194 Patent at 3:12-16 (emphasis added). The patent offers no objective criteria for how one
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`would determine whether something satisfies one of these sub-categories; for example, there is no
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`explanation as to how one would objectively determine whether something is, e.g., “undesirable”
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`or “potentially undesirable.” Without more, this statement is meaningless, as what constitutes an
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`“undesirable” operation to one user may be very different than what is “undesirable” to another.
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`Even Finjan’s expert Dr. Cole admitted that what is “suspicious” depends on the person making
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`the evaluation, as well as the particular requirements of the network. Dkt. No. 126-8 (Cole Depo.
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`Tr.) at 83:1-11 (whether something is suspicious “could depend on either the – the evaluation
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`that’s performed, the level of sensitivity. For example, on highly sensitive government systems,
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`you might have less tolerance for certain operations than in other environments and could also
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`be deemed based on the code that was written to look for what is or is not suspicious”). Thus,
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`what is “undesirable” differs depending on the personal opinions and subjective preferences of the
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`particular user, and the patent does not provide a POSITA with any way to distinguish which
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`operations are within the scope of the patent and which are outside the scope.1
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`In the past, Finjan has identified Column 9, lines 24-29 of the ’194 Patent as providing
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`evidence about how one would derive a list of suspicious operations. That passage states:
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`The code Scanner 325 in step 710 resolves a respective command in the
`machine code, and in step 715 determines whether the resolved command
`is Suspicious (e.g., whether the command is one of the operations
`identified in the list described above with reference to FIG.3).
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`But this passage merely refers back to the “Example List” without explaining how operations like
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`WRITE got on that list in the first place.
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`Finjan has previously admitted that the ’194 Patent does not set forth rules to explain how
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`to distinguish between a suspicious versus non-suspicious operation or when a legitimate
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`command like WRITE should be considered “suspicious.” Specifically, in IPR2015-01892,
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`1 As noted in Juniper’s Opposition Brief, Dr. Cole admitted that the definition of “suspicious”
`differs from network security professional to network security professional. Dkt. No. 126-8 (Cole
`Depo. Tr.) at 79:1-11.
`
`IRELL & MANELLA LLP
`
`A Registered Limited Liability
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`
`Professional Corporations
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`
`
`- 3 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 5 of 9
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`Finjan stated: “there is no a priori understanding of what constitutes a ‘suspicious computer
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`operation.’” Ex. 2 at 11. No “a priori” understanding means that a “suspicious computer
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`operation” cannot be determined from any general rule and can only be confirmed on subjective
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`observation. If the ’194 Patent provided any real explanation as to what makes an operation
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`“suspicious,” then one would be able to deduce in advance whether or not an operation was
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`suspicious. Finjan thus admits that the ’194 Patent does not teach how to do that, including how
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`to determine whether a WRITE command is legitimate or not.
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`Finjan’s representations to the Federal Circuit further confirm that the ’194 Patent does not
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`explain how to distinguish between a suspicious and non-suspicious operations. In particular,
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`Finjan argued that “computer operations are only ‘suspicious’ to the extent that they have been
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`deemed so.” Symantec Corp. v. Finjan, Inc., Appeal No. 17-2034, ECF 36 (Finjan’s Principal and
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`Response Brief) at 28 (Fed. Cir. Feb. 7, 2018). Finjan’s position makes clear that operations are
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`not “suspicious” because they meet some objective criteria set forth in the ’194 Patent; rather, they
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`are “suspicious” only because someone deemed them as suspicious. Thus, Finjan’s argument is
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`entirely circular.
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`Notwithstanding the circular nature of its argument, Finjan argues that “a list of suspicious
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`computer operations” should be construed as “a list of computer operations that are deemed hostile
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`or potentially hostile.” See Dkt. No. 154 at 4. This construction fails to eliminate the subjectivity
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`of the claim scope because it provides no objective criteria for how to “deem” something
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`suspicious or not. In fact, Finjan’s proposed construction creates more uncertainty because it does
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`not identify who is doing the “deeming” or place any restrictions on their determination. It is
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`well-settled law that a patent is indefinite when its scope depends on the “unpredictable vagaries
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`of any one person’s opinion.” See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
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`1350 (Fed. Cir. 2005). The subjective nature of Finjan’s proposed construction is further
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`evidenced in provisional application no. 60/030,639, which the ’194 Patent incorporates by
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`reference. In this application, Finjan concedes that the determination of which operations are
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`“potentially hostile” hinge on what “a user” thinks is “potentially hostile”: “potentially hostile
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`operations may include READ/WRITE operations on a system configuration file, READ/WRITE
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`- 4 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 6 of 9
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`operations on a document containing trade secrets, or any other operation that a user deems
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`potentially hostile.” ’194 Patent at 1:15-20; Ex. 3 (’639 Provisional Application) at 8:21-9:3.
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`B.
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`Part 2: Is the failure to give such an explanation fatal to Claim 10?
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`The ’194 Patent’s failure to provide objective criteria for distinguishing between a
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`suspicious and non-suspicious operation is fatal to Claim 10. Without clear teachings in the
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`specification, “suspicious computer operations” fails to inform those of skill in the art with
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`reasonable certainty as to its scope. It is therefore indefinite. For example, in Interval Licensing
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`LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014), the Federal Circuit found a claim with the term
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`of degree “unobtrusive manner” indefinite, noting:
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`What if a displayed image takes up 20% of the screen space occupied by
`the primary application with which the user is interacting? Is the image
`unobtrusive? The specification offers no indication, thus leaving the skilled
`artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’
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`Id. at 1374. The Federal Circuit’s concern in Interval Licensing is remarkably similar to the issues
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`raised by “suspicious.” Indeed, when asked if “determining whether something is suspicious
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`involves a subjective determination,” Finjan’s expert Dr. Cole testified “There are absolutely
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`degrees of suspicion with operations so something could be 80 percent suspicious or 20 percent
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`suspicious. It could also change based on the circumstances.” Dkt. No. 126-8 (Cole Depo. Tr.) at
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`82:5-13. If the Federal Circuit cannot determine whether something that obtrudes “20% of the
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`screen” is “unobtrusive” with reasonable certainty, then how can anyone determine whether an
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`operation that is “20% suspicious” should be included on the claimed list of suspicious computer
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`operations? See also Int’l Test Sols., Inc. v. Mipox Int’l Corp., 2017 WL 1367975, *4 (N.D. Cal.
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`Apr. 10, 2017) (holding that examples did not make the term “predetermined characteristics”
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`definite because the subjective choice of characteristics “could affect whether a given product
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`infringes the claims”).
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`The cases on which Finjan relies are readily distinguishable. For example, in Cioffi v.
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`Google, Inc., 632 Fed. Appx. 1013, 1022-23 (Fed. Cir. 2015), the Federal Circuit did not find the
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`term “critical file” indefinite because “the experts from both sides agreed that ‘critical file’ had a
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`well-understood and objective definition to one of skill in the art. … [N]either party’s expert
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`- 5 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`

`

`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 7 of 9
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`suggested that ‘critical file’ alone is subjective or indefinite.” By contrast, in this case, Finjan’s
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`own expert Dr. Cole admits that what is “suspicious” can “change based on the circumstances”
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`and neither Finjan nor its expert have been able to set out an objective test to determine what is
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`suspicious. See Dkt. No. 126-8 (Cole Depo. Tr.) at 82:5-13. Sonix Tech. Co., Ltd. v. Publications
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`International, Ltd., 844. F3d 1370 (Fed. Cir. 2017) is similarly distinguishable. In that case, the
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`Federal Circuit held that “visually negligible” was not indefinite because that patent included
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`“statements that provide guidance on how to create visually-negligible indicators, and specific
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`examples that provide points of comparison for the result.” Id. at 1376-77. By contrast, neither
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`the ’494 Patent nor the ’194 Patent provide any concrete guidance on how to determine whether
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`something is “suspicious,” and the examples provided in the ’194 specification cannot serve as
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`“points of comparison” because different functions do different things and there is no explanation
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`as to what the unifying theme is in the ’194 Patent’s list of examples.
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`III. QUESTION 3
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`A. Why shouldn’t the Court hold that “suspicious computer operations” is
`inherently subjective and Claim 10 is therefore indefinite unless limited to the
`specific list set forth in the “Example List of Operations Deemed Potentially
`Hostile” (’194 patent at 5:58–6:4)?
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`As noted above, the term “suspicious computer operations” is inherently subjective and the
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`Court should therefore hold that it is indefinite.
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`The problem with trying to preserve the validity of Claim 10 by limiting “suspicious
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`computer operations” to the specific list set forth in the “Example List of Operations Deemed
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`Potentially Hostile” of the ’194 Patent at 5:58–6:4 is that this construction would specifically
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`exclude a preferred embodiment. Specifically, the ’194 Patent teaches that “The code scanner 325
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`may generate the DSP data 310 as a list of all operations in the Downloadable code which could
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`ever be deemed potentially hostile.” ’194 Patent at 5:50-53 (emphasis added); see also id. at 5:54-
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`58 (“It will be appreciated that the code scanner 325 may search the code for any pattern, which is
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`undesirable.”). Because “a claim interpretation that excludes a preferred embodiment from the
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`scope of the claim is rarely, if ever, correct.” Accent Packaging, Inc. v. Leggett & Platt, Inc., 707
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`F.3d 1318, 1326 (Fed. Cir 2013), Juniper believes that this would not be an appropriate
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`IRELL & MANELLA LLP
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`A Registered Limited Liability
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`Professional Corporations
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`- 6 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 8 of 9
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`construction. Thus, the Court cannot save the patent in this way. See Interval, 766 F.3d at 1733
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`(“[w]e decline to cull out a single ‘e.g.’ phrase from a lengthy written description to serve as the
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`exclusive definition of a facially subjective claim term.”); Nautilus, Inc. v. Boisig Instruments,
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`Inc., 134 S.Ct. 2120, 2130 (disfavoring ‘post hoc’ efforts to ‘ascribe some meaning to a patent’s
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`claims’)”).
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`In fact, any construction that would exclude an embodiment where the list includes all
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`operations in the Downloadable code which could ever be deemed potentially hostile would be
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`improper. This includes Finjan’s proposed construction of “a list of computer operations that are
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`deemed hostile or potentially hostile.” Finjan’s proposed construction also glaringly omits other
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`portions of the same sentence from the specification on which the construction is based: “It is to
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`be understood that the term ‘Suspicious’ includes hostile, potentially hostile, undesirable,
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`potentially undesirable, etc.” ’194 Patent at 3:12-16. In any event, as explained above, the patent
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`provides no objective criteria for how the sub-categories that Finjan cherry-picks for its proposed
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`construction could be satisfied, and the Federal Circuit has expressly warned against adopting
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`meaningless definitions in an attempt to overcome indefiniteness: “Even if a claim term’s
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`definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the
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`art cannot translate the definition into meaningfully precise claim scope.” Halliburton Energy
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`Services, Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir 2008).
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`Juniper believes that, to the extent the Court thinks it necessary to provide a construction
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`that will preserve the validity of the patent, the Court should instead adopt the PTAB’s
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`construction from IPR2015-01892 (Paper 58 at 12) (Ex. 1) and IPR2016-00159 (Paper 50 at 35-
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`36) (Ex. 4), namely “a list of all operations that could ever be deemed potentially hostile.” The
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`PTAB specifically noted that “The inclusion of the phraseology ‘all operations…which could ever
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`be deemed potentially hostile’ in that passage renders it more objective.” Ex. 1 at 8. In other
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`words, the PTAB’s construction addresses the subjectivity issue that otherwise renders the claim
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`term indefinite. The PTAB’s construction also encompasses the preferred embodiment referenced
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`above.
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`Regardless of whether the Court adopts the narrower construction limited to only the
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`IRELL & MANELLA LLP
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`A Registered Limited Liability
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`Law Partnership Including
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`Professional Corporations
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`- 7 -
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`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
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`

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`Case 3:17-cv-05659-WHA Document 183 Filed 08/21/18 Page 9 of 9
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`Example List or the broader construction of a list of all operations that could ever be deemed
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`potentially hostile, there is no dispute that the accused systems do not meet this limitation. As Dr.
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`Rubin noted, “The list [of suspicious computer operations] that Finjan cites does not even include,
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`for example ‘CHANGE PROCESS/THREAD PRIORITY,’ which are specific examples of
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`suspicious operations disclosed in the ‘494 Patent.” Dkt. No. 125-10 (Rubin Dec.) at ¶ 49
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`(referring to Juniper Source Code at Dkt. 125-7 (Opposition Exhibit 7) showing a list of “APIs to
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`alert on” that does not include CHANGE PROCESS/THREAD PRIORITY). And Finjan presents
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`no evidence at all under the broader construction, as Finjan’s expert Dr. Cole admitted that he did
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`not perform any analysis under that construction. Dkt. No. 126-8 (Ex. 4) at 72:13-73:17 (“My
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`understanding is it is not have to be a complete comprehensive list of every possible operation that
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`could ever be deemed suspicious.”).2
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`Dated: August 21 2018
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`Respectfully submitted,
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`IRELL & MANELLA LLP
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`By: /s/ Rebecca L. Carson
`Rebecca L. Carson (SBN 254105)
`rcarson@irell.com
`840 Newport Center Drive, Suite 400
`Newport Beach, California 92660-6324
`Telephone: (949) 760-0991
`Facsimile: (949) 760-5200
`
`Attorneys for Defendant
`JUNIPER NETWORKS, INC
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`2 Finjan cannot argue that Juniper's dynamic sandbox analysis creates a list of all operations that
`could ever be deemed potentially hostile because it allegedly logs all operations performed by the
`file under analysis. Finjan has already represented that such an approach would create “a different
`type of list…namely a list of computer operations as opposed to the required ‘list of suspicious
`computer operations.’” Finjan, Inc.’s Principal and Response Brief, ECF 36 at 28, Symantec Corp.
`v. Finjan, Inc., Appeal No. 17-2034 (Fed. Cir. Feb. 7, 2018) (emphasis in original). Moreover,
`Finjan disclaimed dynamic analysis as being outside the scope of the claimed “scanner.” Compare
`Symantec Corp. v. Finjan, Inc., IPR 2015-01892, Paper 27 at 29 (PTAB June 21, 2016)(“Swimmer
`does not disclose the ‘Downloadable scanner’”), with Dkt. No. 126-9 at 2 (“In this paper, the
`concept of dynamic analysis as applied to viruses is discussed.”); see generally Dkt. No. 126 at 3, 8.
`
`IRELL & MANELLA LLP
`
`A Registered Limited Liability
`
`Law Partnership Including
`
`Professional Corporations
`
`
`
`
`- 8 -
`
`JUNIPER'S RESPONSE RE
`’494 PATENT SUMMARY JUDGMENT
`(Case No. 3:17-cv-05659-WHA)
`
`
`
`