Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 1 of 218
`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 1 of 218
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`EXHIBIT 1
`EXHIBIT 1
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 2 of 218
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`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Joshua Glucoft (301249)
`jglucoft@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
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`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
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`Attorneys for Defendant
`JUNIPER NETWORKS, INC.,
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`
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`Case No. 3:17-cv-05659-WHA
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`JUNIPER NETWORKS, INC.’S FIRST
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`SUPPLEMENT TO INITIAL
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`DISCLOSURES
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`FINJAN, INC.,
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`Plaintiff,
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`vs.
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`JUNIPER NETWORKS, INC.,
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`Defendant.
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`10567759
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`JUNIPER’S FIRST SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 3 of 218
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`Name & Contact Information
`Frank Jas*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Rakesh Manocha*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Raju Manthena*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Chandra Nagarajan*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Shelly Gupta*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Michael Bushong*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Michael Marcellin*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Scott Coonan*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Shlomo Touboul
`Senior Advisor, Finjan
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`Summary of Information
`May have technical information about accused
`Juniper and Cyphort products.
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`May have technical information about accused
`Juniper products.
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`May have technical information about accused
`Juniper products.
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`May have technical information about accused
`Juniper products.
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`May have financial information related to accused
`Juniper products.
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`May have marketing information related to the
`accused Juniper products.
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`May have company information related to Juniper.
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`May have company information related to Juniper,
`Juniper’s licensing practices, and Juniper’s
`communications with Finjan.
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`Named inventor on the ‘844, ‘780, ‘926, ‘633, ‘731,
`and ‘494 Patents. May have information regarding
`the patents-in-suit, including: inventorship;
`conception and reduction to practice; prior art and
`inequitable conduct; alleged embodiments of the
`patents-in-suit; offers for sale; assignments or other
`transactions regarding ownership; secondary
`considerations regarding the obviousness of the
`patents-in-suit; and licensing and enforcement
`activities.
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`10567759
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`- 3 -
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`JUNIPER’S FIRST SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 4 of 218
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on September 10, 2018, a copy of JUNIPER
`NETWORKS, INC.’S FIRST SUPPLEMENT TO INITIAL DISCLOSURES was caused to be
`served via email on the following counsel of record:
` Email Service Addresses
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`pandre@kramerlevin.com
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`lkobialka@kramerlevin.com
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`jhannah@kramerlevin.com
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`kkastens@kramerlevin.com
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`amanes@kramerlevin.com
`shedvat@kramerlevin.com
`mhlee@kramerlevin.com
`cmartinez@kramerlevin.com
`SNguyen@kramerlevin.com
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`/s/ Eileen Holland
`Eileen Holland
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`10567759
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`JUNIPER’S FIRST SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 5 of 218
`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 5 of 218
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`EXHIBIT 2
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 6 of 218
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`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.,
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`Plaintiff,
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`vs.
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`JUNIPER NETWORKS, INC.,
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`Defendant.
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`10604227
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`Case No. 3:17-cv-05659-WHA
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`JUNIPER NETWORKS, INC.’S SECOND
`SUPPLEMENT TO INITIAL
`DISCLOSURES
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`JUNIPER’S SECOND SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 7 of 218
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`Name & Contact Information
`
`Summary of Information
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`
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`Meredith McKenzie*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Alex Icasiano*
`1133 Innovation Way
`Sunnyvale, CA 94089
`408-745-2000
`Shlomo Touboul
`Senior Advisor, Finjan
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`Nachshon Gal
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`Yigal Mordechai Edery
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`Nimrod Itzhak Vered
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`10604227
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`
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`May have company information related to Juniper,
`Juniper’s licensing practices, and Juniper’s
`communications with Finjan.
`
`May have operational information related to the
`accused Juniper products.
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`Named inventor on the ‘844, ‘780, ‘926, ‘633, ‘731,
`and ‘494 Patents. May have information regarding
`the patents-in-suit, including: inventorship;
`conception and reduction to practice; prior art and
`inequitable conduct; alleged embodiments of the
`patents-in-suit; offers for sale; assignments or other
`transactions regarding ownership; secondary
`considerations regarding the obviousness of the
`patents-in-suit; and licensing and enforcement
`activities.
`Named inventor on the ‘844 Patent. May have
`information regarding the patents-in-suit, including:
`inventorship; conception and reduction to practice;
`prior art and inequitable conduct; alleged
`embodiments of the patents-in-suit; offers for sale;
`assignments or other transactions regarding
`ownership; secondary considerations regarding the
`obviousness of the patents-in-suit; and licensing and
`enforcement activities.
`Named inventor on the ‘926, ‘633, and ‘494 Patents.
`May have information regarding the patents-in-suit,
`including: inventorship; conception and reduction to
`practice; prior art and inequitable conduct; alleged
`embodiments of the patents-in-suit; offers for sale;
`assignments or other transactions regarding
`ownership; secondary considerations regarding the
`obviousness of the patents-in-suit; and licensing and
`enforcement activities.
`Named inventor on the ‘926, ‘633, and ‘494 Patents.
`May have information regarding the patents-in-suit,
`including: inventorship; conception and reduction to
`practice; prior art and inequitable conduct; alleged
`embodiments of the patents-in-suit; offers for sale;
`assignments or other transactions regarding
`ownership; secondary considerations regarding the
`obviousness of the patents-in-suit; and licensing and
`enforcement activities.
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`- 4 -
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`JUNIPER’S SECOND SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:13-cv-00616-JCS)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 8 of 218
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`the patents-in-suit are unenforceable, and reasonable attorneys’ fees and costs incurred in this
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`action pursuant to 35 U.S.C. § 285.
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`IV.
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`Insurance Agreements
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`Juniper is not aware of any insurance agreements under which an insurance business may
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`be liable to satisfy all or part of a possible judgment in this action or to indemnify or reimburse
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`Juniper for payments made to satisfy a judgment.
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`Dated: November 5, 2018
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`Respectfully submitted,
`
`/s/ Rebecca Carson
`Rebecca Carson
`Irell & Manella LLP
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`10604227
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`- 13 -
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`JUNIPER’S SECOND SUPPLEMENT TO
`INITIAL DISCLOSURES
`(Case No. 3:13-cv-00616-JCS)
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 9 of 218
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`Exhibit 3
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`REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE SEALED
`DOCUMENT REDACTED IN ITS
`ENTIRETY
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 10 of 218
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`Exhibit 4
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`REDACTED VERSION OF
`DOCUMENT SOUGHT TO BE SEALED
`DOCUMENT REDACTED IN ITS
`ENTIRETY
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`

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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 11 of 218
`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 11 of 218
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`EXHIBIT 5
`EXHIBIT 5
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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 12 of 218
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`
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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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`10571956
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`- 1 -
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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 254-10 Filed 11/27/18 Page 13 of 218
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`http://avirubin.com/Avi_Rubins_home_page/Vita.html. My CV found at that website is incorporated
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`herein by reference and also attached hereto as Exhibit 1.
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`A.
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`6.
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`Education & Career
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`I received my Ph.D. in Computer Science and Engineering from the University of
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`Michigan, Ann Arbor in 1994, with a specialty in computer security and cryptographic protocols. My
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`thesis was titled “Nonmonotonic Cryptographic Protocols” and concerned authentication in long-
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`running networking operations.
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`7.
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`I am currently employed as Professor of Computer Science at Johns Hopkins University,
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`where I perform research, teach graduate courses in computer science and related subjects, and supervise
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`the research of Ph.D. candidates and other students. Courses I have taught include Security and Privacy
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`in Computing and Advanced Topics in Computer Security. I am also the Technical Director of the Johns
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`Hopkins University Information Security Institute, the University’s focal point for research and
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`education in information security, assurance, and privacy. The University, through the Information
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`Security Institute’s leadership, has been designated as a Center of Academic Excellence in Information
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`Assurance by the National Security Agency and leading experts in the field. The focus of my work over
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`my career has been computer security, and my current research concentrates on systems and networking
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`security, with special attention to software and network security.
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`8.
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`After receiving my Ph.D., I began working at Bellcore in its Cryptography and Network
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`Security Research Group from 1994 to 1996. During this period I focused my work on Internet and
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`Computer Security. While at Bellcore, I published an article titled “Blocking Java Applets at the
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`Firewall” about the security challenges of dealing with JAVA applets and firewalls, and a system that
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`we built to overcome those challenges.
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`9.
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`In 1997, I moved to AT&T Labs, Secure Systems Research Department, where I
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`continued to focus on internet and computer security. From 1995 through 1999, in addition to my work
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`in industry, I served as Adjunct Professor at New York University, where I taught undergraduate classes
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`on computer, network and internet security issues.
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`10.
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`I stayed at AT&T until 2003, when I left to accept a full time academic position at Johns
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`Hopkins University. I was promoted to full professor with tenure in April, 2004.
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`10571956
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`- 2 -
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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 254-10 Filed 11/27/18 Page 14 of 218
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`
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`11.
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`I serve, or have served, on a number of technical and editorial advisory boards. For
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`example, I served on the Editorial and Advisory Board for the International Journal of Information and
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`Computer Security. I also served on the Editorial Board for the Journal of Privacy Technology. I have
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`been Associate Editor of IEEE Security and Privacy Magazine, and served as Associate Editor of ACM
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`Transactions on Internet Technology. I am currently an Associate Editor of the journal Communications
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`of the ACM. I was an Advisory Board Member of Springer’s Information Security and Cryptography
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`Book Series. I have served in the past as a member of the DARPA Information Science and Technology
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`Study Group, a member of the Government Infosec Science and Technology Study Group of Malicious
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`Code, a member of the AT&T Intellectual Property Review Team, Associate Editor of Electronic
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`Commerce Research Journal, Co-editor of the Electronic Newsletter of the IEEE Technical Committee
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`on Security and Privacy, a member of the board of directors of the USENIX Association, the leading
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`academic computing systems society, and a member of the editorial board of the Bellcore Security
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`Update Newsletter.
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`12.
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`I have spoken on information security and electronic privacy issues at more than 50
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`seminars and symposia. For example, I presented keynote addresses on the topics “Security of Electronic
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`Voting” at Computer Security 2004 Mexico in Mexico City in May 2004; “Electronic Voting” to the
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`Secure Trusted Systems Consortium 5th Annual Symposium in Washington DC in December 2003;
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`“Security Problems on the Web” to the AT&T EUA Customer conference in March, 2000; and “Security
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`on the Internet” to the AT&T Security Workshop in June 1997. I also presented a talk about hacking
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`devices at the TEDx conference in October 2011 and also another TEDx talk on the same topic in
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`September 2015.
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`13.
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`I was founder and President of Independent Security Evaluators (ISE), a computer
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`security consulting firm, from 2005-2011. In that capacity, I guided ISE through the qualification as an
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`independent testing lab for Consumer Union, which produces Consumer Reports magazine. As an
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`independent testing lab for Consumer Union, I managed an annual project where we tested all of the
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`popular anti-virus products. Our results were published in Consumer Reports each year for three
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`consecutive years.
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`10571956
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`- 3 -
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`DECL. OF AVIEL D. RUBIN REGARRDING § 101
`Case No. 3:17-cv-05659-WHA
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`

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`Case 3:17-cv-05659-WHA Document 254-10 Filed 11/27/18 Page 15 of 218
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`14.
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`I am currently the founder and managing partner of Harbor Labs, a software and
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`networking consulting firm.
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`B.
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`15.
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`16.
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`Publications
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`I am a named inventor on ten U.S. patents in the information security area.
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`I have also testified before Congress regarding the security issues with electronic voting
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`machines and in the U.S. Senate on the issue of censorship. I also testified in Congress on November
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`19, 2013 about security issues related to the government’s Healthcare.gov website.
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`17.
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`I am author or co-author of five books regarding information security issues: Brave New
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`Ballot, Random House, 2006; Firewalls and Internet Security (second edition), Addison Wesley, 2003;
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`White-Hat Security Arsenal, Addison Wesley, 2001; Peer-to-Peer, O’Reilly, 2001; and Web Security
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`Sourcebook, John Wiley & Sons, 1997. I am also the author of numerous journal and conference
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`publications, which are reflected in my CV.
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`III. MATERIALS CONSIDERED
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`18.
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`I have considered information from various sources in forming my opinions. In addition
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`to drawing from over two decades of experience in the computer industry, I also have reviewed the
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`following documents: (a) the ‘494 Patent; (b) the prosecution file history (including IPRs) for the ‘494
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`Patent; (c) the parties’ summary judgment briefing related to the ‘494 Patent, including exhibits thereto,
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`and the related Court Order; and (d) the other documents and references cited herein (not limited to the
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`specific excerpts cited). I am also aware of information generally available to, and relied upon by,
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`persons of ordinary skill in the art at the relevant time, including, for example, textbooks, manuals,
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`technical papers, and articles, as well as commercially available systems.
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`IV.
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`LEVEL OF ORDINARY SKILL
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`19.
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`Finjan’s expert Dr. Medvidovic has previously opined that a person of ordinary skill in
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`the art in the field of the ‘494 Patent would be someone with a bachelor’s degree in computer science or
`
`a related field and either two or more years of industry experience and/or an advanced degree in computer
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`science or related field. IPR2015-01892, Ex. 2007 ¶ 37 (Ex. 21 hereto); see also IPR2016-00159, Ex.
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`2011 ¶ 37 (Ex. 22 hereto). For purposes of my analysis, I have adopted this level of ordinary skill, but I
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`do not think that my analysis would change if a somewhat higher or lower level of skill were adopted.
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`V.
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`PRIORITY DATE OF THE ‘494 PATENT
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`20.
`
`I understand that Finjan has asserted that Claim 10 of the ‘494 Patent is entitled to a
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`priority date of November 8, 1996. Ex. 2 at 6. For purposes of my analysis, I have assumed that this
`
`priority date applies and considered the state of the art as it existed prior to that time.
`
`VI.
`
`LEGAL STANDARDS
`
`21.
`
`As set forth by the Court in this matter regarding Section 101 of Title 35 of the United
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`States Code (“Section 101” or “§ 101”), I understand that:
`
`Under well-established Supreme Court precedent, laws of nature, natural
`phenomena, and abstract ideas remain patent-ineligible under Section 101.
`See, e.g., Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
`576, 589 (2013) (citations and quotations omitted). The Supreme Court has
`set forth a two-step “framework for distinguishing patents that claim laws
`of nature, natural phenomena, and abstract ideas from those that claim
`patent-eligible applications of those concepts.” Under this framework, a
`court must first “determine whether the claims at issue are directed to one
`of those patent-ineligible concepts.” If so, then the court must further
`“consider the elements of each claim both individually and ‘as an ordered
`combination’ to determine whether the additional elements ‘transform the
`nature of the claim’ into a patent-eligible application.” Alice Corp. Pty. Ltd.
`v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
`
`Dkt. No. 189 (Ex. 17) at 18. I may refer to this two-step analysis set forth by the Supreme Court and
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`summarized by the Court in this matter as the “Alice test.”
`
`22. With respect to Step Two of the Alice test, as this Court held:
`
`The Supreme Court has described step two as “a search for an inventive
`concept — i.e., an element or combination of elements that is sufficient to
`ensure that the patent in practice amounts to significantly more than a patent
`upon the ineligible concept itself.” Alice, 134 S. Ct. at 2355 (quotations and
`citation omitted) (emphasis added).
`
`Dkt. No. 189 at 20. I further understand that in order for components to transform the nature of the
`
`claim, their role must be more than “‘well-understood, routine, [and] conventional activit[ies]’
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`previously known to the industry.” Alice, 134 S. Ct. at 2359
`
`VII. CLAIM 10 FAILS STEP ONE OF THE ALICE TEST
`
`23.
`
`It is my opinion that Claim 10 claims a patent-ineligible abstract idea and therefore fails
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`Step One of the Alice test.
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`24.
`
`I understand that the Court in this matter has already found that Claim 10 of the ‘494
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`Patent is directed to a patent-ineligible abstract idea. Dkt. No. 189 at 18-19. Of particular relevance, the
`
`Court found:
`
`It broadly claims the fundamental practice of collecting data, analyzing
`data, and storing results, a concept that is inherently needed for virtually
`any variation of data analysis, storage, and retrieval. … Claim 10 does not
`recite “a new kind of file,” i.e. a security profile, “that enables a computer
`security system to do things it could not do before.” [citation] Rather, Claim
`10 recites deriving “security profile data.” Ultimately, the thrust of Claim
`10 is on analyzing a file and extracting information — which, once washed
`of its technological context, is merely an abstract idea. … Claim 10 of the
`‘494 patent does not itself recite any step beyond the mere identification of
`suspicious operations within a received Downloadable (and then storing the
`information somewhere). [citation] It stops short of claiming any non-
`fundamental, routine step, such as comparing the security profile with the
`access control list or any kind of protective measure. As such, Claim 10 is
`directed to an abstract idea rather than an improvement on computer
`functionality.
`
`Dkt. No. 189 at 18-19. I agree with the Court’s reasoning and analysis. Claim 10 is directed to collecting,
`
`analyzing, and storing data using well-understood, routine, and conventional steps.
`
`25.
`
`I understand that at least two other courts have also found that Claim 10 is directed to an
`
`abstract idea. Finjan, Inc. v. Blue Coat Sys., LLC, No. 15-cv-03295-BLF, 2016 WL 7212322, at *9
`
`(N.D. Cal. Dec. 13, 2016) (“Blue Coat”); Finjan v. Sophos, 244 F. Supp. 3d 1016, 1059-60 (N.D. Cal.
`
`Mar. 14, 2017). The Blue Coat court found that the ‘494 Patent claims were abstract, reasoning that
`
`“[a]lthough they are deployed in the context of malware detection, the asserted claims merely recite the
`
`familiar concepts of gathering data, analyzing that data for certain characteristics, and storing the results
`
`of that analysis[; t]hese are fundamental concepts germane to any type of content analysis.” Blue Coat,
`
`2016 WL 7212322, at *9. The court further reasoned “[a]t their heart, they claim nothing more than a
`
`solution that scans through data (e.g., the disassembled code from the code scanner . . .), identifies certain
`
`characteristics (e.g., the operations that match its pre-existing list of operations . . .), and stores the results
`
`of the analysis (e.g., the list of suspicious operations encountered, stored as formatted DSP data . . .).
`
`This is not inherently different from how a human would perform a classification process with pencil
`
`and paper. . . . Accordingly, the ‘character as a whole’ of the claims is directed to data collection and
`
`analysis, an abstract idea.” Id. (internal citations omitted). The Sophos court adopted substantially
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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.
`
`VIII. CLAIM 10 DOES NOT CONTAIN AN INVENTIVE CONCEPT
`
`26.
`
`Considering the elements of Claim 10 both individually and as an ordered combination,
`
`it is my opinion that Claim 10 does not have a transformative inventive concept. Instead, each of the
`
`components found in the claim were well understood, routine, and conventional activities previously
`
`known to the industry prior to the time of the purported invention, and the combination of the elements
`
`is also well understood, routine, and conventional.
`
`A.
`
`27.
`
`The Functionality Recited In Claim 10 Was Not Inventive.
`
`It is my opinion that the following steps were well known, routine, and conventional in
`
`the art before the priority date of Claim 10 of the ‘494 Patent: receiving an incoming Downloadable;
`
`deriving security profile data for the Downloadable, including a list of suspicious computer operations
`
`that may be attempted by the Downloadable; and storing the Downloadable security profile data in a
`
`database.
`
`28.
`
`Claim 10 of the ‘494 Patent is nearly identical to Claim 1 of the ‘494 Patent, where Claim
`
`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
`
`for managing Downloadables,
`
`Claim 1:
`
`Claim 1
`for computer-based method,
`A method
`comprising the steps of:
`receiving an incoming Downloadable;
`
`the
`for
`deriving security profile data
`Downloadable, including a list of suspicious
`computer operations that may be attempted by
`the Downloadable
`
`storing the Downloadable security profile
`data in a database
`
`for
`
`receiving
`
`an
`
`incoming
`
`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
`Downloadable
`scanner,
`for
`the
`storing
`Downloadable security profile data in a database.
`
`
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`29.
`
`In IPR2016-00159, the PTAB issued a Final Written Decision invalidating Claim 1 of the
`
`‘494 Patent in view of a prior art article titled “Dynamic Detection and Classification of Computer
`
`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
`
`Claim 10 (i.e., everything from the limitations that is not bolded/underlined in the table above) was
`
`disclosed in the art before the priority date for the ‘494 Patent.
`
`30.
`
`In reaching this conclusion, the PTAB applied a construction of the term “a list of
`
`suspicious computer operations” as “a list of all operations that could ever be deemed potentially
`
`hostile.” Paper 50 at 33. That construction differs from the construction of the term applied by the Court
`
`in this proceeding of “a list of computer operations in a received Downloadable that are deemed hostile
`
`or potentially hostile.” Dkt. No. 189 at 5. But the Board noted that its “ultimate conclusions regarding
`
`patentability of the challenged claims did not turn on [its] adoption of that construction….” Paper 50 at
`
`33. Indeed, the Board found “that Swimmer discloses deriving security profile data including a list of
`
`suspicious computer operations even under Patent Owner’s proposed construction,” which was “a list of
`
`computer operations deemed suspicious.” Paper 50 at 33-34. I agree with the Board that Swimmer
`
`discloses deriving “a list of computer operations deemed suspicious.” In addition, Finjan’s prior
`
`proposed construction is substantially similar to the construction adopted by the Court in this matter, and
`
`therefore it is my opinion that the Board’s previous finding that Swimmer teaches all of the limitations
`
`in Claim 1 applies in this proceeding as well.
`
`B.
`
`The Element Of A “Receiver For Receiving An Incoming Downloadable” Does Not
`
`Contain An Inventive Concept.
`
`31.
`
`It is my opinion that using a “receiver” to receive an incoming Downloadable is not an
`
`inventive concept. Rather, receivers were well known, routine, and conventional in the art before the
`
`priority date of Claim 10 of the ‘494 Patent, and using a receiver to receive an incoming file (including
`
`Java files, HTML, PDFs, Microsoft Word, executables, etc.) was a routine and conventional use of a
`
`receiver.
`
`32.
`
`For example, Swimmer teaches that a receiver can be used for receiving an incoming
`
`Downloadable in a malware detection system. Ex. 3 at 13 (“One possibility is to use it as a type of
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`firewall for programs entering a protected network.”). I note that Finjan did not even challenge whether
`
`Swimmer taught a receiver during the IPR proceedings. See generally IPR 2016-00159, Paper 17 (Patent
`
`Owner’s Response) (Ex. 20).
`
`33.
`
`There are numerous other prior art references that disclosed using a “receiver” to receive
`
`a Downloadable. See, e.g., U.S. Patent No. 5,802,275 (Ex. 29) (filed June 22, 1994) at Claim 6 (“a
`
`receiver for receiving [] programs”); U.S. Patent No. 6,065,118 (Ex. 30) (filed September 24, 1996) at
`
`Claim 11 (“importing to the system a data stream containing at least one mobile program component
`
`which is to execute on the computer system from an external source”) and Claim 7 (“the program
`
`components which are to be intercepted and run within the execution location are Applets”).
`
`34.
`
`Indeed, firewalls and network gateways were well-known long before the priority date of
`
`the ‘494 Patent, and all firewalls and network gateways must necessarily have a receiver for receiving
`
`files to be processed. See, e.g., U.S. Patent No. 6,065,118 (Ex. 30) at Claim 5 (“the execution location
`
`is provided with at least one firewall between the execut