Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 1 of 12
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`Exhibit 1
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 2 of 12
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`IRELL & MANELLA LLP
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`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Joshua P. Glucoft (SBN 301249)
`jglucoft@irell.com
`Casey Curran (SBN 305210)
`ccurran@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca L. 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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`
`
`IN THE 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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`10483401
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`Case No. 5:17-cv-00072-BLF
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`DEFENDANT JUNIPER NETWORKS,
`INC.’S PATENT L.R. 3-3 INVALIDITY
`CONTENTIONS
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 3 of 12
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`5.
`
`‟494 Patent
`
` U.S. Patent No. 6,253,370 to Abadi et al. (hereinafter, ―Abadi‖). Abadi was filed on
`
`December 1, 1997, issued on June 26, 2001, and thus it qualifies as prior art to the ‘494
`
`Patent under at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,440,723 to Arnold et al. (hereinafter, ―Arnold‖). Arnold was filed on
`
`January 19, 1993, issued August 8, 1995, and thus it qualifies as prior art to the ‘494 Patent
`
`under at least 35 U.S.C. §102(b) (pre-AIA).
`
` U.S. Patent No. 5,398,196 to David A. Chambers (hereinafter, ―Chambers‖), which was
`
`issued on March 14, 1995 and thus qualifies as prior art under at least 35 U.S.C. § 102 (e)
`
`(pre-AIA).
`
` U.S. Patent No. 5,951,698 to Chen et al. (hereinafter, ―Chen‖), which was filed on October
`
`2, 1996, was issued on September 14, 1999, and thus qualifies as prior art under at least 35
`
`U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,832,208 to Chen and Luo (hereinafter, ―Chen-Luo‖). Chen-Luo was filed
`
`on September 5, 1996 and published on November 3, 1998, and it thus qualifies as prior art
`
`to the ‘494 Patent under at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,485,575 to Chess et. al. (hereinafter, ―Chess‖). Chess was filed on
`
`November 21, 1994 and published on January 16, 1996 and thus qualifies as prior art under
`
`at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,504,921 to Roger H. Dev et al. (―Dev‖), filed May 16, 1994 as a
`
`continuation of an application filed September 17, 1990 and thus qualifies as prior art under
`
`at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. patent No. 5,412,717 to Fischer (hereinafter, ―Fischer‖). Fisher was filed on May 15,
`
`1992, issued on May 2, 1995, and thus it qualifies as prior art to the ‘494 Patent under at
`
`least 35 U.S.C. § 102 (b) (pre-AIA).
`
` U.S. Patent No. 6,088,801 to Grecsek (hereinafter ―Grecsek‖). Grecsek was filed on
`
`January 10, 1997, issued on July 11, 2000, and thus it qualifies as prior art to the ‘494 Patent
`
`under at least 35 U.S.C. §102(e) (pre-AIA).
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`10483401
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`- 11 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 4 of 12
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` U.S. Patent No. 5,958,050 to Griffin et al. (hereinafter, ―Griffin‖). Griffin was filed on
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`December 26, 1996, claiming priority to the provisional application 60/026,645 filed on
`
`September 24, 1996, issued on September 28, 1999, and thus qualifies as prior art under
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`35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,983,348 to Ji (hereinafter, ―Ji 348‖). Ji was filed on September 10, 1997
`
`and issued on November 9, 1999, thus it qualifies as prior art to the ‘494 Patent under at
`
`least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,623,600 to Ji (hereinafter, ―Ji ‘600‖). Ji ‘600 was filed on September 26,
`
`1996 and issued on April 22, 1997 and is prior art under at least 35 U.S.C. § 102 (e) (pre-
`
`AIA).
`
` U.S. Patent No. 5,574,927 to Henry L. Scantlin (―Scantlin‖), filed March 25, 1994. Scantlin
`
`qualifies as prior art under at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` U.S. Patent No. 5,842,002 to Schnurer et al. (hereinafter, ―Schnurer‖). Schnurer was filed
`
`on May 30, 1997 and issued on November 24, 1998, which is a continuation of application
`
`number 08/252,622 that was filed on June 1, 1994, thus it qualifies as prior art to the ‘494
`
`Patent under at least 35 U.S.C. §102(e) (pre-AIA).
`
` U.S. Patent No. 6,157,721 to Shear et al. (hereinafter, ―Shear‖). Shear was filed on August
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`12, 1996, issued on December 5, 2000, and thus it qualifies as prior art to the ‘494 Patent
`
`under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
`6.
`
`‟926 Patent
`
` U.S. Patent No. 5,825,877: ―Support for Portable Trusted Software‖ issued to Asit Dan et al.
`
`(hereinafter, ―Dan‖). Dan was filed on June 11, 1996, and thus qualifies as prior art to the
`
`‘926 patent under at least 35 U.S.C. § 102(e) (pre-AIA).
`
` U.S. Patent No. 6,088,801: ―Managing the Risk of Executing a Software Process‖ issued to
`
`Matthew T. Grecsek (―Grecsek‖). Grecsek was filed on January 10, 1997, and thus qualifies
`
`as prior art to the ‘926 patent under at least 35 U.S.C. § 102(e) (pre-AIA).
`
`10483401
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`- 12 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 5 of 12
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` ―JavaScript Instrumentation in Practice,‖ by Haruka Kikuchi, Dachuan Yu, Ajay Chander,
`
`Hiroshi Inamura, and Igor Serikov, APLAS 2008, LNCS 5359, 2008 (hereinafter,
`
`―Kikuchi‖). Kikuchi was published December 9, 2008, thus it qualifies as prior art to the
`
`‘154 Patent under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Sweeping the Boards,‖ by Jonathan Burchell, Virus Bulletin, November 1994 (hereinafter,
`
`―Burchell‖). Burchell was published in November, 1994, thus it qualifies as prior art to the
`
`‘154 Patent under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Design and implementation of a distributed virtual machine for networked computers,‖ by
`
`Emin Gun Sirer, Robert Grimm, Arthur J. Gregory, Brian N. Bershad, 17th ACM
`
`Symposium on Operating System Principles (SOSP ‘99) Published as Operating Systems
`
`Review 34(5): 202-216, Dec. 1999 (hereinafter, ―Sirer‖). Sirer was published in December,
`
`1999, thus it qualifies as prior art to the ‘154 Patent under at least 35 U.S.C. § 102 (b) (pre-
`
`AIA).
`
` David E. Evans, Policy-Directed Code Safety, Massachusetts Institute of Technology,
`
`February 2000 (―Evans I‖) was published and/or publicly known before December 12, 2005,
`
`and is prior art to the ‘154 patent‖ under 35 U.S.C. §§ 102(a) and (b) (pre-AIA).
`
` D. Evans & A. Twyman, Flexible Policy-Directed Code Safety, IEEE Symposium on
`
`Security & Privacy, May 1999 (―Evans II‖) was published and/or publicly known before
`
`December 12, 2005, and is prior art to the ‘154 patent under 35 U.S.C. §§ 102(a) and (b)
`
`(pre-AIA).
`
` Robert Filman and Ted Linden, ―Communicating Security Agents,‖ Proceedings of
`
`Workshops on Enabling Technologies: Infrastructure for Collaborative Enterprises (WET
`
`ICE) (1996) (hereinafter, ―Filman‖). Filman was published in 1996, thus it qualifies as prior
`
`art under at least 35 U.S.C. § 102(a) (pre-AIA).
`
`5.
`
`‟494 Patent
`
` ―An Immune System for Cyberspace,‖ by Jeffrey O. Kephart et al., in Proc. of the IEEE
`
`SMC‘97 (hereinafter, ―Kephart 1997‖). Kephart 1997 was published and/or publicly known
`
`at least as early as 1997 and is prior art under at least 35 U.S.C. § 102 (a) (pre-AIA).
`
`10483401
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`- 16 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 6 of 12
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` ―Static Analysis of Programs with Application to Malicious Code Detection‖ by R. Lo
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`(hereinafter, ―Lo Thesis‖). Lo Thesis was publically available by 1992 and thus qualifies as
`
`prior art under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Blueprint For A Computer Immune System‖, by Kephart et al. (hereinafter, ―Kephart‖).
`
`Kephart was published in October 1997, thus it qualifies as prior art to the ‘494 Patent under
`
`at least 35 U.S.C. § 102 (a) (pre-AIA).
`
` ―Heuristic Scanners: Artificial Intelligence?‖ by Righard Zwienenberg (hereinafter,
`
`―Zwienenberg‖). Zwienenberg was published in 1995, thus it qualifies as prior art to the
`
`‘494 Patent under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Proof-Carrying Code‖, CMU-CS-96-165, by George C. Necula and Peter Lee (hereinafter,
`
`―Necula‖). Necula was published in September 1996, thus it qualifies as prior art to the
`
`‘494 Patent under at least 35 U.S.C. § 102 (a) (pre-AIA).
`
` ―Web Security & Commerce,‖ O‘Reilly & Associates, Inc., Garfinkel and Spafford
`
`(hereinafter, ―Spafford‖). Spafford was published in June 1997 thus it qualifies as prior art
`
`to the ‘949 Patent under at least 35 U.S.C. §102(e) (pre-AIA).
`
`
`
` ―MCF: A Malicious Code Filter,‖ by Lo et al. (hereinafter ―Lo 94‖). Lo 94 was published
`
`in December 1995 and thus qualifies as prior art to ‘494 Patent under at least 35 U.S.C.
`
`§ 102 (b) (pre-AIA).
`
` ―Static Analysis Virus Detection Tools for Unix Systems,‖ by Kerchen et al. (hereinafter,
`
`―Kerchen‖). Kerchen was published in October 1990, and thus it qualifies as prior art to the
`
`‘494 Patent under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―A New Technique for Detecting Polymorphic Computer Viruses,‖ University of California,
`
`Los Angeles, Carey Stover Nachenberg (hereinafter, ―Nachenberg‖). Nachenberg was
`
`published in 1995, thus it qualifies as prior art to the ‘494 Patent under at least 35 U.S.C.
`
`§ 102 (b) (pre-AIA).
`
` ―Towards a Testbed for Malicious Code Detection,‖ by R. Lo et al. (hereinafter ―Lo 91‖).
`
`Lo 91 was published January 1991, thus it qualifies as prior art under at least 35 U.S.C.
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`§102(b) (pre-AIA).
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`10483401
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`- 17 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 7 of 12
`
` ―Dynamic Detection and Classification of Computer Viruses Using General Behavior
`
`Patterns,‖ by Swimmer (hereinafter ―Swimmer‖). Swimmer was published in September
`
`1995, and thus is prior art under at least 35 U.S.C. § 102 (a) (pre-AIA).
`
` ―Automated Assistance for Detecting Malicious Code,‖ by Crawford et al. (hereinafter,
`
`―Crawford 93‖). Crawford 93 was published on June 18, 1993 and thus is prior art to ‗494
`
`Patent under at least 35 U.S.C. § 102 (a) (pre-AIA).
`
` ―A Testbed for Malicious Code Detection: A Synthesis of Static and Dynamic Analysis
`
`Techniques,‖ by Crawford et al. (hereinafter, ―Crawford ‗91‖). Crawford ‗91 was published
`
`in May 1991 and thus is prior art to ‘494 Patent under at least 35 U.S.C. § 102 (a) (pre-
`
`AIA).
`
` ―Main Memory Database Systems: An Overview‖ by Hector Garcia-Molina (―Garcia‖),
`
`published at least as early as December 1992. Garcia qualifies as prior art under at least 35
`
`U.S.C. § 102 (e) (pre-AIA).
`
` ―MANDATE: Managing Networks Using Database Technology‖ by Jayant R. Haritsa et al.
`
`(―HaritsaIEEE‖), published at least as early as December 1993. HaritsaIEEE qualifies as
`
`prior art under at least 35 U.S.C. § 102 (e) (pre-AIA).
`
` ―A Prototype Real-Time Intrusion-Detection Expert System‖ by Teresa F. Lunt et al.
`
`(―Lunt‖), published at least as early as 1988 Lunt qualifies as prior art under at least 35
`
`U.S.C. § 102 (e) (pre-AIA).
`
` ―Preliminary Report on Distributed ASAX‖ by Abdelaziz Mounji et al. (―Mounji‖),
`
`published at least as early as March 27, 1994. Mounji qualifies as prior art under at least 35
`
`U.S.C. § 102 (e) (pre-AIA).
`
` ―The Simple Book: An Introduction to Networking Management‖ by Marshall T. Rose
`
`(―Rose‖), published at least as early as March 20, 1996. Rose qualifies as prior art under at
`
`least 35 U.S.C. § 102 (e) (pre-AIA).
`
` ―SQL for Dummies‖ by Allen G. Taylor (hereinafter, ―SQL for Dummies‖), published at
`
`least as early as 1995. SQL for Dummies thus qualifies as prior under at least 35 U.S.C.
`
`§ 102 (a) (pre-AIA).
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`10483401
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`- 18 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 8 of 12
`
` ―Scanners of the Year 2000: Heuristics‖ by Dmitry Gryaznov (hereinafter, ―Gryaznov‖).
`
`Gryaznov was publically available by September 1995 and thus qualifies as prior art under
`
`at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―A Generic Virus Scanner‖ by S. Kumar (hereinafter, ―Kumar 1992‖). Kumar 1992 was
`
`publically available by 1992 and thus qualifies as prior art under at least 35 U.S.C. § 102 (a)
`
`(pre-AIA).
`
` ―Computer Viruses and Artificial Intelligence‖ by D. Stang (hereinafter, ―Stang‖). Stang
`
`was publically available by September 1995 and thus qualifies as prior art under at least 35
`
`U.S.C. § 102 (b) (pre-AIA).
`
` ―A Taxonomy of UNIX System and Network Vulnerabilities‖ by M. Bishop (hereinafter,
`
`―Bishop‖). Bishop was publically available by May 1995 and thus qualifies as prior art
`
`under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Automatic Extraction of Computer Virus Signatures‖ by J. Kephart and W. Arnold
`
`(hereinafter, ―Kephart 1994‖). Kephart 1994 was publically available by 1994 and thus
`
`qualifies as prior art under at least 35 U.S.C. § 102 (b) (pre-AIA).
`
` ―Communicating Security Agents‖ by Filman (hereinafter, ―Filman‖). Filman was available
`
`by at least June 1996 and thus qualifies as prior art under at least 35 U.S.C. § 102 (a) (pre-
`
`AIA).
`
` ―Design of the Mandate MIB‖ by J. Haritsa et al. (hereinafter, ―Haritsa‖). Haritsa was
`
`publically available by 1993 and thus qualifies as prior art under at least 35 U.S.C. § 102(b)
`
`(pre-AIA).
`
` ―ThunderByte Anti-Virus for Networks‖ by Jonathan Chau (hereinafter, ―Chau‖). Chau
`
`was published on March 31, 1996 and thus qualifies as prior art under at least 35 U.S.C.
`
`§ 102 (a) (pre-AIA).
`
`
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`10483401
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 9 of 12
`
`Sweep/InterCheck is described in ―Sweep Virus Detection User Manual – Windows NT,‖
`
`dated August 1996 (hereinafter, ―Sweep NT‖), which qualifies as prior art under at least
`
`35 U.S.C. § 102(b) (pre-AIA), ―Sweep Virus Detection User Manual – Windows 95,‖ dated
`
`December 1995 (hereinafter, ―Sweep 95‖), which qualifies as prior art under at least
`
`35 U.SC. § 102(b) (pre-AIA), and ―Client/Server Virus Detection: A Corporate Solution,‖
`
`which was publicly available at least as of December 11, 1997 (hereinafter, ―Corporate
`
`Solution‖) and qualifies as prior art under at least 35 U.S.C. § 102(b) (pre-AIA).
`
`5.
`
`‟494 Patent
`
` The Digital Immune System, available from IBM or Symantec, as evidenced by the paper,
`
`―Blueprint for a Computer Immune System,‖ by Kephart et al. (hereinafter, ―Kephart‖),
`
`which was published in October 1997 and therefore is prior art under at least under 35
`
`U.S.C. § 102(a) (pre-AIA) .
`
` ThunderBYTE Anti-Virus, available from ESass B.V., as evidenced by the ThunderBYTE
`
`Anti-Virus Utilities User Manual (1996), the ThunderBYTE Anti-Virus Utilities User
`
`Manual (1995), and ThunderByte Anti-Virus for Networks by Jonathan Chau.
`
` SurfinShield, available from Finjan, Inc., as evidenced by ―Java Security: Issues &
`
`Solutions‖ (hereinafter, ―Finjan Java Security‖); ―Powerful PC Security for the New World
`
`of JavaTM and Downloadables SurfinShieldTM‖ (hereinafter, ―Finjan Powerful PC
`
`Security‖); ―Finjan – Safe Surfing‖ (hereinafter, ―Finjan – Safe Surfing‖); ―Gateway Level
`
`Corporate Security for the New World of JavaTM and Downloadables‖ (hereinafter,
`
`―Gateway Level Corporate Security‖); and ―Finjan Announces Major Power Boost and New
`
`Features for SurfinShieldTM 2.0‖, published on November 18, 1996 (hereinafter, ―New
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`Features for SurfinShieldTM 2.0‖).
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` SurfinGate, available from Finjan, Inc., as evidenced by the press release ―Gateway Level
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`Corporate Security for the New World of JavaTM and Downloadables,‖ which upon
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`information and belief was transmitted to potential customers at least as early as October 31,
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`1996; the Internet Archive (see, e.g., https://web.archive.org/web/19961104170028/http:/
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`www.finjan.com:80/), which reflects the Products marketing materials from Finjan‘s
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 10 of 12
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`website and the press release ―SurfinGate ‗Reinvents‘ Internet Security First to Protect
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`Against Downloadables at the Gateway Level‖ from as early as November 04, 1996; U.S.
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`Patent 5,983,348 to Ji which was filed on September 10, 1997 and issued on November 9;
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`and the April 17, 2013 Declaration Of Prior Invention In The United States To Overcome
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`Cited Patent Or Publication (37 C.F.R. § 131) by Shlomo Touboul, filed May 7, 2013 in the
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`prosecution of the ‘494 Patent.
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` S&S International PLC‘s Dr. Solomon‘s Anti-Virus Toolkit (hereinafter, ―DSAVT‖). Upon
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`information and belief, AVTK was commercially available by at least as early as November
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`1995, and therefore is prior art under at least 35 U.S.C. § 102 (b) (pre-AIA).
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` Cheyenne Software‘s InocuLAN (hereinafter, ―InocuLAN‖). Upon information and belief,
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`InocuLAN was publically available by at least as early as 1995 and thus qualifies as prior art
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`under at least 35 U.S.C. § 102(b) (pre-AIA).
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`6.
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`‟926 Patent
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` Content Derived Naming, available from University of Maryland, as evidenced by ―Using
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`Content-Derived Names for Caching and Software Distribution‖ by Miller et al.
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`(hereinafter, ―Miller96‖), which was published in August 1996, and thus qualifies as prior
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`art to the ‘926 Patent under at least 35 U.S.C. § 102 (a) (pre-AIA).
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` Content Derived Naming, available from University of Maryland, as evidenced by ―Using
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`Content-Derived Names for Configuration Management‖ by Ethan L. Miller et al.
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`(―Miller97‖), which was published at least as early as March 1997, and thus qualifies for
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`prior art to the ‘926 patent under at least 35 U.S.C. § 102(a) (pre-AIA).
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`Each of these systems anticipates and/or renders obvious one or more of the Asserted Claims
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`of the Patents-in-Suit as set forth in the associated chart. Juniper relies on the references cited above
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`at least as evidence of the functionality of the associated system. Juniper also reserve the right to
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`rely on each of the references cited above as itself anticipating or rendering obvious, alone or in
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`combination with any other prior art in the associated charts, the Asserted Claims.
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`Juniper does not yet have complete information regarding the dates by which these systems
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`were publicly disclosed, made, used, sold, or offered for sale, the circumstances under which the
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`10483401
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`- 29 -
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
`
`

`

`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 11 of 12
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`5.
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`‟494 Patent
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`All of the Asserted Claims of the ‘494 are directed to non-statutory subject matter, under 35
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`U.S.C. § 101 because the claims are directed to an abstract idea of identifying suspicious computer
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`operations, which is something that can be done in the human mind. The Asserted Claims are also
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`invalid under 35 U.S.C. § 101 because they fail to claim any element or combination of elements
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`sufficient to ensure that the patent amounts to significantly more than a patent on an ineligible
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`concept, i.e., fails to contain an ―inventive concept‖ sufficient to transform the claimed abstract idea
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`into a patent-eligible application. For example, the claims recite a ―database,‖ one of the basic
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`building blocks of computing systems. Moreover, limiting use of an abstract idea to a particular
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`technological environment is insufficient for eligibility, and, inter alia, the remainder of the claims
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`add nothing specific other than what is well-understood, routine, conventional activity, previously
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`engaged in by those in the field. The claims recite generic software components that does not
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`amount to significantly more than the abstract idea itself. See CyberSource Corp. v. Retail
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`Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Therefore, the Asserted Claims of the ‘494
`
`Patent are not directed to patent-eligible subject matter under 35 U.S.C. § 101 and are invalid.
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`6.
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`‟154 Patent
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`All of the Asserted Claims of the ‘154 are directed to non-statutory subject matter, under 35
`
`U.S.C. § 101 because the claims are directed to an abstract idea of using a remote location to test for
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`safety. The Asserted Claims are also invalid under 35 U.S.C. § 101 because they fail to claim any
`
`element or combination of elements sufficient to ensure that the patent amounts to significantly more
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`than a patent on an ineligible concept, i.e., fails to contain an ―inventive concept‖ sufficient to
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`transform the claimed abstract idea into a patent-eligible application. Limiting use of an abstract
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`idea to a particular technological environment is insufficient for eligibility, and, inter alia, the
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`remainder of the claims add nothing specific other than what is well-understood, routine,
`
`conventional activity, previously engaged in by those in the field. The claims recite generic
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`computer components, such as a ―content processor,‖ that does not amount to significantly more
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`than the abstract idea itself. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
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`10483401
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 319-1 Filed 12/11/18 Page 12 of 12
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`each limitation of each asserted claim is found within each Accused Instrumentality.‖ (Patent L.R.
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`3-1(c)).
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`Juniper is producing documents sufficient to show the sales, revenue, cost, and profits for the
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`properly accused instrumentalities specifically identified in both the operative complaint and in
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`Finjan‘s
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`Infringement Contentions.
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`
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`See
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`JNPR-FNJN_29028_00472484
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`and
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`JNPR-
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`FNJN_29028_00472485.
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`(e) All agreements that may be used to support the party denying infringement‟s damages
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`case.
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`Juniper is producing agreements that may be used to support its damages case. See JNPR-
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`FNJN_29013_00163501 through JNPR-FNJN_29013_00163657.
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`
`
`Dated: April 23, 2018
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`Respectfully submitted,
`
`IRELL & MANELLA LLP
`
`/s/ Joshua Glucoft
`Joshua Glucoft
`Attorneys for Defendant
`Juniper Networks, Inc.
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`10483401
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`JUNIPER‘s INCALIDITY CONTENTIONS
`PURSUANT TO PATENT L.R. 3-3
`(Case No. 3:17-cv-05659-WHA)
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