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`EXHIBIT E
`EXHIBIT E
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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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`29.
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`In IPR2016-00159, the PTAB issued a Final Written Decision invalidating Claim 1 of the
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`‘494 Patent in view of a prior art article titled “Dynamic Detection and Classification of Computer
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`Viruses Using General Behaviour Patterns” by Morton Swimmer et al. (“Swimmer”). IPR2016-0159,
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`Paper 50 (Ex. 19) at 45. More specifically, the PTAB found that all of the overlapping limitations in
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`Claim 10 (i.e., everything from the limitations that is not bolded/underlined in the table above) was
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`disclosed in the art before the priority date for the ‘494 Patent.
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`30.
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`In reaching this conclusion, the PTAB applied a construction of the term “a list of
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`suspicious computer operations” as “a list of all operations that could ever be deemed potentially
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`hostile.” Paper 50 at 33. That construction differs from the construction of the term applied by the Court
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`in this proceeding of “a list of computer operations in a received Downloadable that are deemed hostile
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`or potentially hostile.” Dkt. No. 189 at 5. But the Board noted that its “ultimate conclusions regarding
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`patentability of the challenged claims did not turn on [its] adoption of that construction….” Paper 50 at
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`33. Indeed, the Board found “that Swimmer discloses deriving security profile data including a list of
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`suspicious computer operations even under Patent Owner’s proposed construction,” which was “a list of
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`computer operations deemed suspicious.” Paper 50 at 33-34. I agree with the Board that Swimmer
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`discloses deriving “a list of computer operations deemed suspicious.” In addition, Finjan’s prior
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`proposed construction is substantially similar to the construction adopted by the Court in this matter, and
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`therefore it is my opinion that the Board’s previous finding that Swimmer teaches all of the limitations
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`in Claim 1 applies in this proceeding as well.
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`B.
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`The Element Of A “Receiver For Receiving An Incoming Downloadable” Does Not
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`Contain An Inventive Concept.
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`31.
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`It is my opinion that using a “receiver” to receive an incoming Downloadable is not an
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`inventive concept. Rather, receivers were well known, routine, and conventional in the art before the
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`priority date of Claim 10 of the ‘494 Patent, and using a receiver to receive an incoming file (including
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`Java files, HTML, PDFs, Microsoft Word, executables, etc.) was a routine and conventional use of a
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`receiver.
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`32.
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`For example, Swimmer teaches that a receiver can be used for receiving an incoming
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`Downloadable in a malware detection system. Ex. 3 at 13 (“One possibility is to use it as a type of
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`firewall for programs entering a protected network.”). I note that Finjan did not even challenge whether
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`Swimmer taught a receiver during the IPR proceedings. See generally IPR 2016-00159, Paper 17 (Patent
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`Owner’s Response) (Ex. 20).
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`33.
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`There are numerous other prior art references that disclosed using a “receiver” to receive
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`a Downloadable. See, e.g., U.S. Patent No. 5,802,275 (Ex. 29) (filed June 22, 1994) at Claim 6 (“a
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`receiver for receiving [] programs”); U.S. Patent No. 6,065,118 (Ex. 30) (filed September 24, 1996) at
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`Claim 11 (“importing to the system a data stream containing at least one mobile program component
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`which is to execute on the computer system from an external source”) and Claim 7 (“the program
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`components which are to be intercepted and run within the execution location are Applets”).
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`34.
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`Indeed, firewalls and network gateways were well-known long before the priority date of
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`the ‘494 Patent, and all firewalls and network gateways must necessarily have a receiver for receiving
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`files to be processed. See, e.g., U.S. Patent No. 6,065,118 (Ex. 30) at Claim 5 (“the execution location
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`is provided with at least one firewall between the execution location and one of the external sources of
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`data and the end user system”).
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`C.
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`The Element Of “A Downloadable scanner coupled with said receiver, for deriving
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`security profile data for the Downloadable, including a list of suspicious computer
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`operations that may be attempted by the Downloadable” Does Not Contain An
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`Inventive Concept
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`35.
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`It is my opinion that using a “Downloadable scanner” to derive security profile data for a
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`Downloadable, including a list of suspicious operations that may be attempted by the Downloadable was
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`not an inventive concept at the time of the priority date for the ‘494 Patent.
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`36.
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`As noted above, the PTAB found that Swimmer disclosed the function of “deriving
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`security profile data for the Downloadable, including a list of suspicious computer operations that may
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`be attempted by the Downloadable,” as recited in Claim 1. The PTAB determined, however, that the
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`Petitioner had not demonstrated that Swimmer taught a “scanner,” because Swimmer’s system was a
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`dynamic analyzer—as opposed to a more traditional “scanner” such as a static analyzer. IPR2016-
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`00159, Paper 50 at 51-52.
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`37.
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`I understand that the Court in this matter has since construed the term “scanner” to mean
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`“software that searches code to identify suspicious patterns or suspicious computer operations.” Dkt. No.
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`189 at 13. I further understand that the Court has interpreted its construction to include dynamic
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`analyzers. Dkt. No. 189 at 14. If dynamic analyzers are included within the scope of the term “scanner,”
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`then Swimmer clearly discloses this element of Claim 10. Ex. 3 at, e.g., 9-10 (“The audit system was
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`integrated into an existing PC emulation by placing hooks into the module for processing all opcodes
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`corresponding with the events (see fig. 4). These are primarily calls to the DOS functions. … Internally,
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`the audit trail complies to a canonical format, which is [] very generic, and allows most types of records
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`to be implemented.”).
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`38. Whether or not the construction of “scanner” includes dynamic analyzers, it is my opinion
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`that the use of a “scanner” to derive security profile data (including suspicious computer operations) was
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`conventional as of the priority date of the ‘494 Patent and is not an inventive concept.
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`In fact, at the time of the priority date for the ‘494 Patent, one of the most typical ways for a program to
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`determine whether a file was malicious was by using “software that searches code to identify suspicious
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`patters or suspicious computer operations.” One example of malware detection that used a “scanner” is
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`static analysis, where the features and characteristics of a file are analyzed without actually executing
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`the code and checking, for example, for specific byte sequences or other patterns in the code, or using
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`heuristic analysis that identifies features such as if the file has an invalid digital signature, has a high
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`entropy, or has no publisher information. Static analyzers have existed since at least the mid-1980s.
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`39.
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`By the early 1990s, scanners performing static analysis that used parsing techniques1 to
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`decompose code and flag specific extracted components (including operations) that were suspicious
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`were commonly used. See, e.g., Ex. 4 at p. 5 (“Hexadecimal patterns may be used to detect the presence
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`of the virus with . . . a dedicated virus scanner.”; Ex. 3 at p. 3 (“Scanning techniques are further
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`1 At the lowest level, computer instructions are in numerical form called “machine code” that is
`only legible to a computer, which are directly executable by a computer’s central processing unit. A
`“disassembler” can be used to abstract the machine code into a low-level but human-readable language
`known as “assembly language.” Instructions written in assembly language, however, are still generally
`difficult for a human to understand, so for analysis purposes, programs are often parsed to “decompile”
`the machine code into source code, which is the more human-understandable language in which a
`computer program is generally written. Parsing involves identifying and separating various parts of a
`program into the instructions and parameters that make up the program.
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`(“suspect instructions”).
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`42.
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`To the extent “scanner” is interpreted to include dynamic analyzers (as per the Court’s
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`Order discussed above), there were numerous additional prior art references that disclosed the use of a
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`dynamic analyzer to derive a security profile that included suspicious operations. “Dynamic” analysis
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`or “emulation,” means that the file is actually executed or “detonated” in a safe, simulated environment
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`known as a “sandbox” that determines what the file actually does when it is executed. Dynamic analysis
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`has existed since at least the early 1990s, and there were many of dynamic analyzers that created security
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`profiles that included suspicious operations. For example, Swimmer teaches using dynamic analysis to
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`create a Downloadable security profile that includes a list of suspicious operations. See supra.
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`43.
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`As another example, the paper “Automated Assistance for Detecting Malicious Code” by
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`R. Crawford et al. similarly teaches using dynamic analysis to create a Downloadable security profile
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`that includes a list of suspicious computer operations. For example, Crawford teaches that “the MCT
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`[Malicious Code Testbed] also provides automated support for detecting hierarchical advanced –
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`occurrences of interesting activities during the execution of the suspicious program. This capability
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`allows the MCT to represent the suspicious program’s behavior in terms of whatever higher-level
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`abstractions have been defined by the security analyst.” Ex. 8 at 4-5. Thus, Crawford discloses a scanner
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`under the Court’s construction (“MCT”) that derives a list of suspicious computer operations
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`(“suspicious program’s behavior in terms of [] hire-level abstractions”).
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`44.
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`As another example, the SRI International paper titled “Detecting Unusual Program
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`Behavior Using the Statistical Component of the Next-generation Intrusion Detection Expert System
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`(NIDES)” by Debra Anderson et al., teaches using dynamic analysis to create a Downloadable security
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`profile that includes a list of suspicious computer operations. For example, Anderson teaches: “Aspects
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`of subject behavior are represented as measures…. For each measure, we construct a probability
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`distribution of short-term and long-term behaviors. … We refer to the collection of measures and their
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`long-term probability distributions as the subject’s profile.” Ex. 9 at 3-4. Thus, Anderson teaches a
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`scanner under the Court’s construction (NIDES) that derives a list of suspicious computer operations
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`(unusual short-term behaviors comprising part of the “subject’s profile”).
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`45.
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`As evidenced by the abundance of prior art literature discussing the use of static and
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`dynamic analyzers that create security profiles that include lists of suspicious operations in the files that
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`are being analyzed, there is nothing transformative or inventive about this element. Rather, this element
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`claims a typical and conventional component (“scanner”) that is used for its typical and conventional
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`purpose (deriving security profile data, including suspicious operations). It is further my opinion that
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`there is nothing transformative or inventive about combining the well-known components of a receiver
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`and a scanner to perform the recited functions, even as an ordered combination that requires the receiver
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`to first receive an incoming downloadable before the scanner performs. To the contrary, this is the usual
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`and typical order for performing malware analysis (i.e., first the system receives the file, then it scans
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`the file and generates the profile).
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`D.
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`The Element Of “Database Manager Coupled With Said Receiver, For Storing The
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`Downloadable Security Profile Data In A Database” Does Not Contain An Inventive
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`Concept
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`46.
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`It is my opinion that using a “database manager” to store downloadable security profile
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`data in a database was not an inventive concept at the time of the priority date for the ‘494 Patent.
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`47.
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`As noted above, the PTAB found that Swimmer disclosed the function of “storing the
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`Downloadable security profile data in a database,” as recited in Claim 1, but that Petitioner had not met
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`its burden to show that Swimmer disclosed a “database manager” that performs this function. IPR2016-
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`00159, Paper 50 at 52-53.
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`48.
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`I understand that the term “database” has been construed by prior Courts and PTAB
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`panels as a “collection of data organized according to a database schema to serve one or more
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`applications.” I further understand that the Court in this matter has not yet resolved the meaning of
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`“database schema” within the context of this construction. That said, Finjan’s expert Dr. Medvidovic,
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`testified that “a person skilled in the art at the time [of the priority date of the ‘494 Patent] would
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`understand a ‘database schema’ to be ‘a description of a database to a database management system
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`(DBMS) in the language provided by the DBMS.’” IPR 2016-00159, Paper 17 at 35 (Patent Owner’s
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`Response quoting Medvidovic declaration ¶¶ 60, 106, 134). Thus, Finjan seems to acknowledge that all
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`“databases” within the meaning of the ‘494 Patent have a database management system (which is another
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`term for “database manager”).
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`the structural components (i.e., the receiver, scanner, and database manager) are being used to perform
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`their conventional functions (i.e., storing, deriving security profile information, and storing data in a
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`database).
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`55. Moreover, the functional steps described in the claim are being performed in the typical
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`and expected order—i.e., first receive a file, then perform a malware analysis, then store the results.
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`Thus, there is nothing unconventional or inventive about the order in which the steps are being
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`performed.
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`56.
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`In addition, the PTAB found that the functional combination of deriving security profile
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`data for a Downloadable (including a list of suspicious operations) and then storing that profile in a
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`database was disclosed by the Swimmer prior art reference, so the combined functions also lack an
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`inventive concept.
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`57.
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`I understand that—prior to the PTAB’s finding that Claim 1 is invalid in view of
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`Swimmer—the Blue Coat court found that the ‘494 invention was patentable under Alice Step Two
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`because, “the claims, taken as an ordered combination, recite an inventive concept sufficient to render
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`them patent-eligible.” Blue Coat, 2016 WL 7212322, at *10-11. More specifically, the Blue Coat court
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`found that “spatially, the ‘494 claims move malware profiling from its traditional location on end-user
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`computers to an intermediate location on the network,” and “temporally, the ‘494 claims shift malware
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`profiling logic from something that must be applied to a single, complete file to something that must be
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`applied to extracted aspects or components of a file (namely, operations) after it has been decomposed.”
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`Id. at *11.
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`58.
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`Given the plain language of the claim, the subsequent IPR proceedings, and the factual
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`record developed in this case, I disagree with the Blue Coat court’s conclusion that there were “spatial”
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`and “temporal” concepts that made the ‘494 Patent inventive.
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`59.
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`For example, with regard to the “spatial” concept, there is nothing in the claim language
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`that actually requires the ‘494 invention to be implemented on an intermediate location on the network.
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`Specifically, there is nothing in the Court’s construction of “scanner,” “suspicious operations,” or any
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`other term that limits the invention to an intermediate location on the network. Finjan does not even
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`appear to dispute this. Ex. 10 at 65:21-66:5.
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`decomposed. See, e.g., Ex. 3 at 3 (“When polymorphic technology improved, statistical analysis of the
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`opcodes2 was used. Recently, the best of the scanners have shifted course for merely detecting viruses
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`to attempting to identify the virus. This is often done with added strings, perhaps position dependent, or
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`checksums, over the invariant part of the virus. … The next shift many scanners are presently
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`experiencing is away from known virus only detection to detection of unknown viruses. … This is most
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`often done by looking for a pattern of certain code fragments most often in viruses…. “).
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`64.
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`Finjan has also argued that Claim 10 contains an inventive concept because it supposedly
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`allows for the detection of new viruses, rather than only identifying known viruses. But the concept and
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`process of detecting new viruses was not new as of the priority date of the ‘494 Patent. Indeed, Swimmer
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`specifically notes that “many scanners are [shifting] away from known virus only detection to detection
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`of unknown viruses.” Ex. 3 at 3. And it further notes that “This is most often done by looking for a
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`pattern of certain code fragments most often in viruses.” Id. Thus, the prior art shows that this was a
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`common technique and not anything unconventional or inventive.
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`65.
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`In sum, it is my opinion that there is nothing transformative or inventive about Claim 10,
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`even as an ordered combination and even if the “spatial” and/or “temporal” concepts articulated by the
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`Blue Coat court were actually recited in the claim.
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`IX.
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`POSSIBLE REVISIONS TO REPORT
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`66.
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`I intend to review and consider any additional information provided to me after the
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`production of this report and I reserve the right to supplement or revise my analysis and conclusions.
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`Date: September 11, 2018
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`Aviel D. Rubin
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`2 Ex. 3 at 9 (noting that “opcodes” are “primarily calls to the DOS functions” in a program).
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