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`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Date: March 23, 2016
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`________________
`
`Case IPR2015-02000
`Patent 7,418,731
`________________
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`
`Palo Alto Networks, Inc. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of claims 1–22 (all
`claims) of U.S. Patent No 7,418,731 (Ex. 1001, “the ’731 patent”). Paper 1
`(“Pet.”). Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper
`6 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we deny
`Petitioner’s request and deny institution of an inter partes review of all
`challenged claims.
`
`
`I. BACKGROUND
`A. The ʼ731 Patent (Ex. 1001)
`
`The ʼ731 patent is titled “Method and System for Caching at Secure
`
`Gateways.” Petitioner summarizes the patent as follows:
`The ’731 patent is directed at preventing the spread of viruses
`in and among computer networks. The ’731 patent discloses
`gateways and methods of operating gateways that scan
`incoming or outgoing files for viruses and store the scanned
`files in a file cache. The gateways also store security profiles,
`which are lists of the operations that the scanned files are
`programmed to perform, and, in some cases, security policies
`for the intranet computers connected to the gateway.
`Pet. 1.
`
`The invention is illustrated by Figure 1 of the patent, reproduced here:
`
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`2
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`Figure 1 is a simplified block diagram of a network gateway in
`
`accordance with the ʼ731 patent. Ex. 1001, col. 5, ll. 22–24. Shown in
`Figure 1 is network gateway computer 110, which serves as a proxy between
`an intranet and the Internet. Specifically, gateway computer 110 intervenes
`between requests for web pages originating from intranet 120 of clients 123,
`125, and 127, and responses originating from Internet servers 133, 135 and
`137. Id. at col. 5, ll. 24–30.
`
`The gateway computer includes code scanner 140 for scanning
`incoming web pages and web objects in order to detect the presence of
`malicious executable scripts or active code. When gateway 110 receives a
`web page, it also retrieves the web objects referenced by the web page, and
`scanner 140 scans the web page and the web objects that may be malicious.
`Id. at col. 5, l. 63–col. 6, l. 2. Scanner 140 analyzes each file it scans to
`determine the nature of computer operations that the file is programmed to
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`3
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`perform, and derives a security profile therefor, summarizing potentially
`malicious computer operations. Id. at col. 6, ll. 17–21. Web page security
`profiles are stored in a security profile cache 150, and the web page and the
`web objects that the page references are stored in web cache 160. Id. at col.
`6, ll. 56–58.
`
`Use of a hash ID for web pages and web objects serves to identify
`web content duplicates, and to determine if web content on the Internet has
`changed since it was earlier cached within web content cache 160. Id. at col.
`7, ll. 18–20.
`
`When a client computer requests a web page, P, from a server
`computer, the request is first transmitted to gateway computer 110, which
`checks whether or not the web page is already resident within web cache
`160. If not, then the computer gateway forwards the request to the server
`computer, which in turn sends the requested web page to gateway computer
`110. Id. at col. 7, ll. 28–35.
`
`
`Upon receipt of the requested web page P, gateway computer 110
`fetches the web objects referenced by the page, determines which files to
`scan, determines security profiles for the scanned files, caches the security
`profiles for the web page in security profile cache 150, and caches web page
`P and web objects in web cache 160. Id. at col. 7, ll. 35–42.
`
`After the gateway computer has stored web page P in the web cache,
`and has stored its corresponding security profile in the security profile cache,
`it determines whether or not to send the web page to the client computer that
`requested it. If web page P may perform malicious operations to the client
`computer, then the gateway computer may not transmit this web page to the
`
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`client computer. Id. at col. 7, ll. 43–49. This decision is based on a security
`policy for the client computer stored in security policy cache 170. Id. at col.
`7, ll. 50–59.
`B. Illustrative Claim
`The ʼ731 patent has eight independent claims: 1, 7, 13, 14, 17, 18, 20,
`and 22. Claim 1 illustrates the relevant subject matter of the patent:
`1. A computer gateway for an intranet of computers,
`comprising:
`a scanner for scanning incoming files from the Internet
`and deriving security profiles for the incoming files, wherein
`each of the security profiles comprises a list of computer
`commands that a corresponding one of the incoming files is
`programmed to perform;
`a file cache for storing files that have been scanned by
`the scanner for future access, wherein each of the stored files is
`indexed by a file identifier; and
`a security profile cache for storing the security profiles
`derived by the scanner,
`wherein each of the security profiles is indexed in the
`security profile cache by a file identifier associated with a
`corresponding file stored in the file cache; and
`a security policy cache for storing security policies for
`intranet computers within the intranet, the security policies each
`including a list of restrictions for files that are transmitted to a
`corresponding subset of the intranet computers.
`C. Related Proceedings
`Patent Owner and Petitioner are involved in ongoing litigation,
`
`Finjan, Inc. v. Palo Alto Networks, Inc., Case No. 3:14-cv-04908 (N.D.
`Cal.), in which the ʼ731 patent has been asserted. Petitioner also has filed
`petitions for inter partes review of numerous related patents. Pet. 3.
`
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`5
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`Patent Owner also asserted the ’731 patent against Bluecoat Systems,
`
`Inc., in Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 5-13-cv-03999
`(N.D. Cal. 2013) (“the Blue Coat Litigation”). Paper 5, 1. Exhibits 2003
`and 2004 are, respectively, the jury’s verdict form and the district judge’s
`post-trial order on nonjury legal issues from that litigation.
`D. Real Party-in-Interest
`The Petition names one real party-in-interest: Palo Alto Networks,
`Inc. The Preliminary Response does not challenge this.
`
`E. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Under that standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`Both parties have stated that the ʼ731 patent claims should be
`construed in accordance with their plain and ordinary meaning. Pet. 12;
`Prelim. Resp. 7. Patent Owner submits that the plain and ordinary meaning
`of the term “file cache” is “memory for storing a file at least temporarily.”
`Prelim. Resp. 7. Petitioner does not proffer any claim constructions. Pet.
`12. On this record, we determine that the plain and ordinary meaning of
`“file cache” is “a memory for holding a file, at least temporarily.”
`
`
`
`6
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`F. References
`Petitioner relies on the following references:1
`1. International Publ. No. WO 98/21683, published May 22, 1998
`(“Touboul”) (Ex. 1012)
`2. U.S. Patent No. 6,088,803, issued July 11, 2000 (“Tso”) (Ex.
`1003);
`3. Internet Content Adaptation Protocol (ICAP) Network Appliance,
` Version 1.01, July 30, 2001 (“ICAP”) (Ex. 1004);
`4. “Caching 101 – An Overview of Web Caching,”
` www.caching.com/caching101.html, November 6, 1999 (“Caching
` 101”) (Ex. 1010);
` 5. U.S. Patent No. 5,889,943, issued Mar. 30, 1999 (“Ji ’943”)
` (Ex. 1005).
`
`Petitioner contends that each of these references is prior art to the ʼ731
`
`patent under 35 U.S.C. § 102(b), “because each reference was filed,
`published, and/or issued in the United States before the 2004 priority date of
`the Petitioned Claims.” Pet. 4–5.
`
`
` G. Grounds Asserted
`
`The Petition asserts the following grounds of unpatentability under 35
`U.S.C. § 103(a):
`
`References
`
`Claims Challenged
`
`Touboul and Tso
`
`Touboul, Tso, and ICAP
`Touboul, Tso, and Caching 101
`
`1, 2, 6–9, 13–15, and
`17
`3, 10, and 16
`4, 5, 11, and 12
`
`
`1 The references are listed with effective dates asserted by Petitioner.
`7
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`References
`
`Claims Challenged
`
`Touboul, Ji ʼ943, and Tso
`Touboul, Tso, Ji ʼ943, and Caching 101
`
`In addition to the supporting argument for these grounds in the Petition,
`Petitioner also presents expert testimony. Ex. 1002, Declaration of Aviel D.
`Rubin (“Rubin Decl.”).
`
`18, 20, and 22
`19 and 21
`
`II. ANALYSIS
`A. Effective Filing Date of the ʼ731 Patent Claims
`
`A central issue in this proceeding is the effective filing date of the
`
`ʼ731 patent claims being challenged. Petitioner contends that the claims are
`entitled to a date of May 3, 2004, the date on which the application for the
`ʼ731 patent was filed. Pet. 12. Patent Owner, on the other hand, argues that
`the claims are entitled to the benefit of a grandparent application filed on
`November 6, 1997, which matured into U.S. Patent 6,092,194 (“the ʼ194
`patent”). Prelim. Resp. 7. This is significant because the effective dates of
`the alleged prior art references relied on by Petitioner are later than
`November 6, 1997. See supra.
`
`Moreover, Petitioner’s principal reference, Touboul, is related to the
`ʼ731 patent. Touboul is the PCT counterpart to the ʼ194 patent and shares
`the same disclosure. Prelim. Resp. 1–2. Patent Owner provides the
`following graphic showing the “priority chain” for the ʼ731 patent:
`
`
`
`
`8
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`This graphic shows the relationship between the ʼ731 patent, its
`
`grandparent, the ʼ194 patent (Ex. 2001), and the Touboul reference (Ex.
`1012). Prelim. Resp. 7. As shown, the ʼ731 patent is a continuation-in-part
`of U.S. Patent 6,804,780 (Ex. 2002; “the ’780 patent”), which is, in turn, a
`continuation of the ʼ194 patent. Id. The ʼ194 grandparent and the ʼ780
`parent share the same disclosure.
`
`As the chart also shows, the ʼ194 patent also claims priority from the
`Touboul reference. Id. As Petitioner recognizes, the ʼ780 patent and the
`Touboul reference also share the same disclosure: “[Touboul’s] specification
`is identical to that of the ’667 application (now U.S. Patent No. 6,804,780),
`of which the ’731 patent is a continuation-in-part.” Pet. 13. In sum, the
`ʼ194 patent, the ʼ780 patent, and the Touboul reference all have the same
`disclosure.
`
`
`
`9
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`B. The Applicable Legal Standard Under 35 U.S.C. § 120
`
`Under 35 U.S.C § 120, to claim the benefit of the filing date from an
`
`earlier application, each application in the chain leading back to the earlier
`application must comply with the written description requirement of 35
`U.S.C. § 112. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378
`(Fed. Cir. 2007); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977)
`(“[T]here has to be a continuous chain of co-pending applications each of
`which satisfies the requirements of § 112 with respect to the subject matter
`presently claimed.”). If any application in the priority chain fails to include
`the requisite disclosure, the later-filed application is not entitled to the
`benefit of the filing date of applications preceding the break in the priority
`chain. Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir.
`1997).
`C. Contentions of the Parties
`
`
`Petitioner contends that the parent and grandparent applications —
`corresponding to the ʼ780 and ʼ194 patents, respectively—do not provide
`written description support for the ʼ731 patent claims. Pet. 12. In addition,
`Petitioner asserts that Patent Owner “tacitly admitted” during prosecution of
`the ʼ731 patent that the claims were not entitled to the earlier filing date. Id.
`
`Specifically, Petitioner contends that the earlier applications do not
`disclose the “file cache” recited in the ʼ731 patent claims. As explained by
`Petitioner, “the word cache does not appear in either application.” Id. In
`presenting its obviousness challenge, Petitioner states: “The only significant
`distinction between claim 1 [of the ʼ731 patent] and the computer gateway in
`Touboul is the file cache.” Pet. 19.
`
`
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`10
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`Patent Owner responds that the ʼ194 and ʼ780 patents provide
`
`sufficient written description support for the challenged claims. Prelim.
`Resp. 16–19. Patent Owner points to the disclosure in the ʼ194 patent of a
`“security database” that stores “known Downloadables” as supporting the
`file cache recitation. Id. at 17 (citing Ex. 2001, col. 4, ll. 29–33). According
`to Patent Owner, such Downloadables are files, and the security database
`can be used for temporary storage. Id. at 18. Further, Patent Owner points
`out that known Downloadables includes Downloadables “previously
`received.” Id. at 18.
`
`Patent Owner relies also on the disclosure of a “second memory
`portion storing known hostile Downloadables” in a provisional application
`that the ʼ194 patent incorporates by reference. Id. at 19 (citing Ex. 2005, 9,
`ll. 2–12). Patent Owner also points out that in the Blue Coat Litigation, the
`district judge determined that the ʼ194 and ʼ780 patents provide written
`description support for the ʼ731 patent claims. Id. at 16 (citing Ex. 2003, 9).
`D. Discussion
`
`
`We agree with Petitioner that the words “file cache” do not appear in
`the ʼ194 or ʼ780 patents. Pet. 12. However, as Patent Owner points out, that
`is not the proper test. Prelim. Resp. 13–14. The claimed subject matter need
`not be described “in haec verba” in the original specification in order to
`satisfy the written description requirement. In re Wright, 866 F.2d 422, 425
`(Fed. Cir. 1989). Rather, “the test . . . is whether a person of ordinary skill
`in the art would recognize that the applicant possessed what is claimed in the
`later filed application as of the filing date of the earlier filed application.”
`Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004).
`
`
`
`11
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`We are persuaded that, on the record presented, this test has been met.
`
`We are persuaded that the disclosure in the ʼ194 patent of a security database
`storing “known Downloadables” provides written description support for the
`file cache recitation in the ʼ731 patent claims. Prelim. Resp. 17–19.
`Petitioner does not dispute that known Downloadables are files. Pet. 26
`(“Touboul discloses generating and using a Downloadable ID (file identifier)
`to identify each Downloadable (file).”). Moreover, Petitioner specifically
`refers to components of the security database as caches: “Claim 1 [of the
`ʼ731 patent] is the obvious combination of a cache such as the cache taught
`by Tso with the scanner, security profile cache, and security policy cache in
`Touboul’s gateway as detailed below.” Pet. 20 (emphasis added). We see
`no basis to distinguish these descriptions of caches from the storage of
`Downloadables in the security database. Moreover, we are persuaded that a
`security database providing temporary storage of known Downloadables
`meets the requirements of a cache as “a memory for holding a file, at least
`temporarily.” See supra.
`
`We find that Petitioner’s argument is unavailing for an additional
`reason. Petitioner’s obviousness challenge focuses on finding similarities
`between Touboul’s disclosure and the ʼ731 patent claims. At the same time,
`Petitioner’s challenge to the early filing date depends upon pointing out
`differences between the disclosures in the ʼ780 and ʼ194 patents, which
`disclosures are the same as Touboul’s, and those same claims. We find
`these arguments to be inconsistent and therefore lacking credibility. We are
`not persuaded that this inconsistency is overcome by Petitioner’s argument
`that just one claim element is lacking in the ʼ194 patent disclosure, while
`
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`12
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`asserting that it is the “only significant distinction.” Pet. 19. As discussed
`supra, we conclude that the record does not support this argument.
`
`We are not persuaded, either, by Petitioner’s position, unsupported by
`any citation of authority, that Patent Owner’s decision not to claim the
`benefit of the earlier filing date during prosecution of the ʼ731 patent is an
`admission. Nor are we persuaded by the conclusory testimony of
`Petitioner’s expert on the filing date issue. See Rubin Decl. ¶ 69. Under our
`rules, expert testimony that does not have a proper basis is entitled to little or
`no weight. 37 C.F.R. § 42.65(a).
`E. Conclusion
`
`
`We agree with Patent Owner that the ʼ731 patent claims are entitled to
`the benefit of the grandparent application filed on November 6, 1997.
`Accordingly, Touboul and the other art asserted by Petitioner does not
`qualify as prior art to the ʼ731 patent under 35 U.S.C. § 102(b), as asserted
`by Petitioner.
`
`III. ORDER
`In view of the foregoing, it is
`
`ORDERED that Petitioner’s request for inter partes review of claims
`
`1–22 of U.S. Patent 7,418,731 is denied.
`
`
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`
`13
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`For Petitioner:
`
`Orion Armon
`Christopher Max Colice
`Jennifer Volk
`Brian Eutermoser
`COOLEY LLP
`oarmon@cooley.com
`mcolice@cooley.com
`jvolk@cooley.com
`beutermoser@cooley.com
`
`For Patent Owner:
`
`James Hannah
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim
`FINJAN INC.
`mkim@finjan.com
`
`
`
`
`
`
`
`
`14
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`
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