Case 3:17-cv-05659-WHA Document 222-2 Filed 11/09/18 Page 1 of 4
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`I.
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`INTRODUCTION
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`EXPERT REPORT OF AVIEL D. RUBIN
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`1.
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`I have been retained as an independent expert in this lawsuit by the law firm of Irell &
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`Manella LLP on behalf of Juniper Networks, Inc. (“Juniper”). I have been asked to provide an opinion
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`related to whether Claim 10 of U.S. Patent No. 8,677,494 (“the ‘494 Patent”) contains an inventive
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`concept sufficient to transform the claimed abstract idea into a patent-eligible application. As discussed
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`in further detail in this declaration, it is my opinion that Claim 10 does not contain an inventive concept
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`sufficient to transform the claimed abstract idea into a patent-eligible application.
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`2.
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`In addition to opinions outlined in this report, I may also provide testimony (1) in rebuttal
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`to Finjan’s positions, including opinions of its experts and materials they discuss or rely upon, (2) based
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`on any Orders from the Court, (3) based on documents, contentions, or other discovery that Finjan or
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`others have not yet produced or were produced too late to be considered before my report was due, and/or
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`(4) based on witness testimony which has not been given or was given too late to be considered before
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`my report was due. I reserve the right to supplement or amend my opinions as further documentation
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`and information is received.
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`3.
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`If called to testify in this matter, I may use as exhibits various documents produced in this
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`matter that refer or relate to the matters discussed in this report. I have not yet selected the particular
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`exhibits that may be used. In addition, I may create or assist in the creation of certain demonstrative
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`exhibits or summaries of my findings and opinions to assist me in testifying. Such exhibits have not yet
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`been created.
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`II.
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`BACKGROUND AND QUALIFICATIONS
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`4.
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`I am being paid at my customary rate of $775 per hour for time spent on this case. I am
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`also being reimbursed for reasonable and customary expenses. My compensation is not dependent in
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`any way on the results of the lawsuit or the substance of my testimony.
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`5.
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`I provide below an overview of my background and qualifications. Additional details of
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`my education and employment history, professional service, patents, publications, and other testimony
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`are
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`set
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`forth
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`in my current curriculum vitae
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`(CV), which can be
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`found here:
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`DECL. OF AVIEL D. RUBIN REGARRDING § 101
`Case No. 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 222-2 Filed 11/09/18 Page 2 of 4
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`similar reasoning in holding that the ‘494 Patent claims were abstract. I agree with the holdings and
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`reasoning by these courts that the ‘494 Patent (including Claim 10) is directed to an abstract idea.
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`VIII. CLAIM 10 DOES NOT CONTAIN AN INVENTIVE CONCEPT
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`26.
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`Considering the elements of Claim 10 both individually and as an ordered combination,
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`it is my opinion that Claim 10 does not have a transformative inventive concept. Instead, each of the
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`components found in the claim were well understood, routine, and conventional activities previously
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`known to the industry prior to the time of the purported invention, and the combination of the elements
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`is also well understood, routine, and conventional.
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`A.
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`27.
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`The Functionality Recited In Claim 10 Was Not Inventive.
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`It is my opinion that the following steps were well known, routine, and conventional in
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`the art before the priority date of Claim 10 of the ‘494 Patent: receiving an incoming Downloadable;
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`deriving security profile data for the Downloadable, including a list of suspicious computer operations
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`that may be attempted by the Downloadable; and storing the Downloadable security profile data in a
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`database.
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`28.
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`Claim 10 of the ‘494 Patent is nearly identical to Claim 1 of the ‘494 Patent, where Claim
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`10 is merely a system claim that performs the steps claimed in the method of Claim 1. The following
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`table compares the claims, and shows the additional system components that differentiate Claim 10 from
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`for managing Downloadables,
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`Claim 1:
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`Claim 1
`for computer-based method,
`A method
`comprising the steps of:
`receiving an incoming Downloadable;
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`the
`for
`deriving security profile data
`Downloadable, including a list of suspicious
`computer operations that may be attempted by
`the Downloadable
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`storing the Downloadable security profile
`data in a database
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`for
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`receiving
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`an
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`incoming
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`Claim 10
`A
`system
`comprising:
`a
`receiver
`Downloadable;
`a Downloadable scanner coupled with said
`receiver, for deriving security profile data for the
`Downloadable, including a list of suspicious
`computer operations that may be attempted by the
`Downloadable
`said
`a database manager coupled with
`the
`for
`storing
`Downloadable
`scanner,
`Downloadable security profile data in a database.
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`DECL. OF AVIEL D. RUBIN REGARRDING § 101
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`Case 3:17-cv-05659-WHA Document 222-2 Filed 11/09/18 Page 3 of 4
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`29.
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`In IPR2016-00159, the PTAB issued a Final Written Decision invalidating Claim 1 of the
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`‘494 Patent in view of a prior art article titled “Dynamic Detection and Classification of Computer
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`Viruses Using General Behaviour Patterns” by Morton Swimmer et al. (“Swimmer”). IPR2016-0159,
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`Paper 50 (Ex. 19) at 45. More specifically, the PTAB found that all of the overlapping limitations in
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`Claim 10 (i.e., everything from the limitations that is not bolded/underlined in the table above) was
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`disclosed in the art before the priority date for the ‘494 Patent.
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`30.
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`In reaching this conclusion, the PTAB applied a construction of the term “a list of
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`suspicious computer operations” as “a list of all operations that could ever be deemed potentially
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`hostile.” Paper 50 at 33. That construction differs from the construction of the term applied by the Court
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`in this proceeding of “a list of computer operations in a received Downloadable that are deemed hostile
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`or potentially hostile.” Dkt. No. 189 at 5. But the Board noted that its “ultimate conclusions regarding
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`patentability of the challenged claims did not turn on [its] adoption of that construction….” Paper 50 at
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`33. Indeed, the Board found “that Swimmer discloses deriving security profile data including a list of
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`suspicious computer operations even under Patent Owner’s proposed construction,” which was “a list of
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`computer operations deemed suspicious.” Paper 50 at 33-34. I agree with the Board that Swimmer
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`discloses deriving “a list of computer operations deemed suspicious.” In addition, Finjan’s prior
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`proposed construction is substantially similar to the construction adopted by the Court in this matter, and
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`therefore it is my opinion that the Board’s previous finding that Swimmer teaches all of the limitations
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`in Claim 1 applies in this proceeding as well.
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`B.
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`The Element Of A “Receiver For Receiving An Incoming Downloadable” Does Not
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`Contain An Inventive Concept.
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`31.
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`It is my opinion that using a “receiver” to receive an incoming Downloadable is not an
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`inventive concept. Rather, receivers were well known, routine, and conventional in the art before the
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`priority date of Claim 10 of the ‘494 Patent, and using a receiver to receive an incoming file (including
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`Java files, HTML, PDFs, Microsoft Word, executables, etc.) was a routine and conventional use of a
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`receiver.
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`32.
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`For example, Swimmer teaches that a receiver can be used for receiving an incoming
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`Downloadable in a malware detection system. Ex. 3 at 13 (“One possibility is to use it as a type of
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`Case 3:17-cv-05659-WHA Document 222-2 Filed 11/09/18 Page 4 of 4
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`decomposed. See, e.g., Ex. 3 at 3 (“When polymorphic technology improved, statistical analysis of the
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`opcodes2 was used. Recently, the best of the scanners have shifted course for merely detecting viruses
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`to attempting to identify the virus. This is often done with added strings, perhaps position dependent, or
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`checksums, over the invariant part of the virus. … The next shift many scanners are presently
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`experiencing is away from known virus only detection to detection of unknown viruses. … This is most
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`often done by looking for a pattern of certain code fragments most often in viruses…. “).
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`64.
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`Finjan has also argued that Claim 10 contains an inventive concept because it supposedly
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`allows for the detection of new viruses, rather than only identifying known viruses. But the concept and
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`process of detecting new viruses was not new as of the priority date of the ‘494 Patent. Indeed, Swimmer
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`specifically notes that “many scanners are [shifting] away from known virus only detection to detection
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`of unknown viruses.” Ex. 3 at 3. And it further notes that “This is most often done by looking for a
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`pattern of certain code fragments most often in viruses.” Id. Thus, the prior art shows that this was a
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`common technique and not anything unconventional or inventive.
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`65.
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`In sum, it is my opinion that there is nothing transformative or inventive about Claim 10,
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`even as an ordered combination and even if the “spatial” and/or “temporal” concepts articulated by the
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`Blue Coat court were actually recited in the claim.
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`IX.
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`POSSIBLE REVISIONS TO REPORT
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`66.
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`I intend to review and consider any additional information provided to me after the
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`production of this report and I reserve the right to supplement or revise my analysis and conclusions.
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`Date: September 11, 2018
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`Aviel D. Rubin
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`2 Ex. 3 at 9 (noting that “opcodes” are “primarily calls to the DOS functions” in a program).
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`DECL. OF AVIEL D. RUBIN REGARRDING § 101
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