Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 1 of 8
`Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 1of8
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`EXHIBIT 19
`EXHIBIT 19
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`Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 2 of 8
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`Trials@uspto.gov
`571-272-7822
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`Paper 7
`Date: April 21, 2016
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`________________
`
`Case IPR2016-00165
`Patent 6,804,780 B1
`________________
`
`
`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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`

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`Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 3 of 8
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`Case IPR2016-00165
`Patent 6,804,780 B1
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`information provided by Petitioner and the supporting Declaration of Aviel
`D. Rubin. We are persuaded, based on this record, that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on this challenge.
`1. Overview of Rubin (Ex. 1003)
`
`
`As described by Petitioner, Rubin discloses a method for secure
`distribution of files over the Internet. Pet. 2. The disclosure is summarized
`in the Abstract as follows:
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`The process is composed of two phases, a registration
`phase and an electronic file distribution phase. In the
`registration phase, a trusted third party receives information
`about an author, including the author's public key, and
`affirmatively verifies the accuracy of this information. In the
`file distribution phase, an author sends to the trusted third party
`a signed message containing the hash of the file the author
`wants to distribute. The trusted third party creates an electronic
`certificate, signed by the trusted third party, containing the hash
`of the file sent by the author.
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`A user desiring to receive the file retrieves the file with
`the certificate, and uses the certificate to verify, first, that the
`certificate was created by the trusted third party, and, second,
`that the hash of the file in the certificate is the same as the hash
`that is computed from the retrieved file. If these two hashes
`match, then the user is assured that the file did originate with
`the author and is uncorrupted.
`
`Ex. 1003, Abstract (paragraphing added and minor typographical
`errors corrected).
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`2. Overview of Waldo (Ex. 1004)
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`As described by Petitioner, Waldo discloses a system that uses
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`hashing functions to generate unique inputs for identifying objects (i.e.,
`software components) referenced in software program code. Pet. 2. The
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`Case IPR2016-00165
`Patent 6,804,780 B1
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`Patent Owner responds further that Petitioner’s showing of motivation
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`to combine the references is insufficient:
`Petitioner fails to explain why a person of ordinary skill in the
`art would be motivated to modify Rubin’s trusted third party
`based technique for assuring “that [a] file did originate with the
`author and is uncorrupted” (Rubin at Abstract) with Waldo’s
`system “for uniquely identifying object ‘types’ for objects that
`are used in processing of object-oriented programs and the like”
`(Waldo at 4:27–30).
`Prelim. Resp. 34. Patent Owner further contends that there would have been
`no reason to combine Rubin and Waldo because to certify that a downloaded
`file is not corrupted, as in Rubin, would not require either Rubin or Waldo to
`fetch any software components referenced in the file. Id. at 35. Patent
`Owner also points out that Petitioner does not look to either reference for the
`motivation to combine them, but to the disclosure of the ʼ780 patent itself.
`Id. at 36.
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`4. Discussion
`a. Motivation to Combine References
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`
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`We are persuaded by Patent Owner’s argument that Petitioner has not
`provided a sufficient rationale for combining Rubin and Waldo. KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[T]here must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)). The problem addressed by Rubin is “establishing the integrity
`of an electronic document as it is distributed over a network.” Ex. 1003, col.
`1, ll. 6–8. Specifically, the “invention provides a trusted third party
`certification process which enables a recipient of an electronic document to
`verify that the content of the document is uncorrupted and verify that the
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`author of the document is the one identified, independent of any knowledge
`of the identity of the sending entity.” Id. at col. 1, ll. 8–13. We agree with
`Patent Owner that in such an application, there is “no need . . . to fetch any
`software components referenced in the downloaded file.” Prelim. Resp. 35.
`
`Waldo, on the other hand, addresses a different problem. Waldo
`describes generating “fingerprint” identifiers for uniquely identifying types
`of objects, such as classes that are used in processing of Java and other
`object-oriented programs. Ex. 1004, col. 2, ll. 30–33. We agree with Patent
`Owner that Petitioner does not present a persuasive reason why a person of
`ordinary skill would have been motivated to modify Rubin’s trusted third-
`party technique for assuring the integrity of downloaded files with Waldo’s
`system for uniquely identifying object types. It would, in fact, be contrary to
`the purpose of Rubin to provide such multiple fingerprints, as in Waldo.
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013):
`While a prior art reference may support any finding apparent to
`a person of ordinary skill in the art, prior art references that
`address different problems may not, depending on the art and
`circumstances, support an inference that the skilled artisan
`would consult both of them simultaneously. See Kinetic
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366
`(Fed.Cir.2012) (finding invention nonobvious when none of the
`“reference[s] relate to the [problem] described in the patents”
`and no evidence was proffered “indicating why a person having
`ordinary skill in the art would combine the references”).
`Petitioner’s principal argument for combining Rubin and Waldo relies
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`on the availability of Java. Pet. 16. According to Petitioner, “as of the ’780
`patent’s effective filing date, a POSA would have understood that software
`programs downloaded in accordance with Rubin’s teachings would include
`programs written in Java.” Id. According to Petitioner, by combining Rubin
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`Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 6 of 8
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`and Waldo, a person of ordinary skill “would have a system capable of
`identifying not only a downloaded software program but also its referenced
`Java classes.” Id. at 17. On this issue, Petitioner relies on testimony of its
`expert and named inventor of the Rubin reference, Dr. Aviel D. Rubin: “By
`1997, a POSA would have viewed Rubin’s disclosure through the new lens
`of Java.” Ex. 1002 ¶ 79.
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`We are not persuaded that Petitioner has carried its burden on this
`issue. First, Petitioner’s argument lacks credibility because nowhere does
`Petitioner or Dr. Rubin point to any disclosure of Java—which he testifies
`was available in 1995—in the Rubin reference. Ex. 1002 ¶ 77 (“In 1995,
`Java had just been released . . . .”). Nor does Dr. Rubin explain this absence
`of disclosure from his own patent, filed in 1995, when Java was available.
`Ex. 1003 (filed Aug. 28, 1995). We regard Petitioner’s argument and Dr.
`Rubin’s testimony about his own patent as a hindsight reconstruction of the
`prior art in light of the ʼ780 patent. This is confirmed by Petitioner’s
`reference to the ʼ780 patent disclosure in its argument for combining Rubin
`and Waldo. Prelim. Resp. 36 (citing Pet. 17).
`
`Furthermore, because Petitioner has not persuaded us of any necessity
`for downloaded Java objects in Rubin, we are also unpersuaded that Waldo’s
`objects (and therefore the associated signatures) would be useful in Rubin’s
`system. As discussed supra, Rubin is directed to securing and verifying the
`content of generic files, not to executing software programs that would
`require downloading associated objects. Thus, even if we were to agree that
`documents downloaded in Rubin may have included programs written in
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`Java (Pet. 16), we still would not be persuaded that a person of ordinary skill
`“would naturally have looked to Waldo.” Pet. 17.
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`In sum, the Petition fails to present sufficient proof that Rubin and
`Waldo would have been combined.
`b. Other Arguments
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`
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`As noted, Patent Owner argues that the combination of Rubin and
`Waldo fails to meet several elements of the ʼ780 patent claims. For
`example, Patent Owner contends that the Rubin-Waldo combination fails to
`disclose a “obtaining a Downloadable that includes one or more references
`to software components required to be executed by a Downloadable.”
`Prelim. Resp. 20–25. Patent Owner asserts Petitioner “concedes” that Rubin
`is “silent” as to “receiving a file that includes one or more references to
`software components required to be executed by the Downloadable.” Id.
`Patent Owner contends that Waldo does not fill this gap because “the
`Petition fails to show that Waldo obtains any kind of program.” Id. “Waldo
`deals with objects rather than the programs that load them.” Id. at 22.
`
`For reasons discussed above, we agree with Patent Owner’s analysis
`and are persuaded, therefore, that Petitioner has failed to establish that this
`element of all independent claims is met by the combination of Rubin and
`Waldo.
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`Likewise, we are not persuaded Petitioner has shown that the
`combination of references meets the requirement for “fetching at least one
`software component identified by the one or more references” for the
`reasons presented by Patent Owner. Pet. 26–30. As discussed supra, with
`respect to Rubin, we are not persuaded by Petitioner’s argument that Java
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`Case 3:17-cv-05659-WHA Document 393-21 Filed 03/14/19 Page 8 of 8
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`Case IPR2016-00165
`Patent 6,804,780 B1
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`programs and their referenced objects are downloaded by Rubin. Likewise,
`we are unpersuaded that the objects in Waldo are “identified by one or more
`of the references” included in the Downloadable, as required by the claims.
`Pet. 27. We agree with Patent Owner’s explanation that the objects
`retrieved by Waldo are those referred to by other objects in the object store.
`Prelim. Resp. 27–29.
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`Finally, we are not persuaded that the Petition demonstrates how the
`Rubin-Waldo combination meets the limitation “performing a hashing
`function on the Downloadable and the fetched software components to
`generate a Downloadable ID.” Pet. 30–33. We agree with Patent Owner
`that “Petitioner never explains how this random assortment of hash values
`allegedly generated by Rubin and Waldo collectively identify the
`Downloadable and its fetched software components, let alone how this these
`values could possible constitute a Downloadable ID as recited in the
`challenged claims.” Prelim. Resp. 32 (citation and inner quotation marks
`omitted). Thus, even if Rubin and Waldo were combined, Petitioner would
`fail to carry its burden.
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`5. Conclusion
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`The information presented in the Petition fails to persuade us that it is
`reasonably likely that claims 1–18 are not patentable under 35 U.S.C.
`§ 103(a).
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