Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 1 of 13
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`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@irell.com
`Harry A. Mittleman (SBN 172343)
`hmittleman@irell.com
`Joshua Glucoft (SBN 301249)
`jglucoft@irell.com
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067-4276
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Rebecca Carson (SBN 254105)
`rcarson@irell.com
`Dennis Courtney (SBN 307646)
`dcourtney@irell.com
`Ingrid Petersen (SBN 313927)
`ipetersen@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.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`FINJAN, INC., a Delaware Corporation,
`)
`Case No. 3:17-cv-05659-WHA
`
`)
`
`BRIEF REGARDING INVALIDITY OF
`Plaintiff,
`)
`CLAIM 10 OF U.S. PATENT NO. 8,677,494
`
`)
`UNDER 35 U.S.C. § 101
`vs.
`
`)
`
`)
`JUNIPER NETWORKS, INC., a Delaware
`)
`Corporation,
`)
`
`)
`)
`)
`
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`
`
`Defendant.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`
`
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
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`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 2 of 13
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`TABLE OF CONTENTS
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`I.
`
`
`
`II.
`
`III.
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`Page
`LEGAL STANDARDS ....................................................................................................... 1
`A.
`Section 101 .............................................................................................................. 1
`B.
`Rule 52 .................................................................................................................... 1
`THE COURT SHOULD ENTER JUDGMENT IN JUNIPER’S FAVOR
`ON § 101 ............................................................................................................................. 2
`A.
`The Court Should Not Follow Sophos. ................................................................... 2
`The Sophos Decision Was Based On A Different Standard. ...................... 2
`Sophos Did Not Have The Benefit Of This Case’s Factual
`Record. ........................................................................................................ 3
`Sophos Did Not (And Could Not) Consider The PTAB’s
`Decision. ...................................................................................................... 5
`Clear And Convincing Evidence In This Case Demonstrates That
`Claim 10 Does Not Contain A Transformative Inventive Concept. ....................... 6
`CONCLUSION ................................................................................................................... 8
`
`
`
`B.
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`- i -
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`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
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`IRELL & MANELLA LLP
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`
`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 3 of 13
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Alice Corp. Pty. v. CLS Bank Int’l,
`573 U.S. 208 (2014) .................................................................................................................1, 6
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) ............................................................................................1, 4, 5
`
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ....................................................................................................7
`
`Finjan, Inc. v. Blue Coat Sys., LLC,
`No. 15-CV-03295-BLF, 2016 WL 7212322 (N.D. Cal. Dec. 13, 2016) .............................2, 3, 5
`
`Finjan, Inc. v. Sophos, Inc.,
`244 F. Supp. 3d 1016 (N.D. Cal. 2017) ............................................................................. passim
`
`Fitbit, Inc. v. AliphCom,
`No. 15-CV-04073-EJD, 2017 WL 528491 (N.D. Cal. Feb. 9, 2017) ..........................................7
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) ....................................................................................................6
`
`Lytle v. Household Mfg., Inc.,
`494 U.S. 545 (1990) .....................................................................................................................1
`
`Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314 (Fed. Cir. 2016) ....................................................................................................8
`
`Procter & Gamble Co. v. QuantifiCare Inc.,
`288 F. Supp. 3d 1002 (N.D. Cal. 2017) .......................................................................................8
`
`Ritchie v. United States,
`451 F.3d 1019 (9th Cir. 2006) ..................................................................................................1, 3
`
`Symantec Corp. v. Finjan, Inc.,
`No. IPR2016-01892 (P.T.A.B. March 15, 2017) .........................................................................5
`
`Zkey Invs., LLC v. Facebook Inc.,
`225 F. Supp. 3d 1147 (C.D. Cal. 2016), aff’d, 708 F. App’x 681 (Fed. Cir.
`2018) .............................................................................................................................................8
`
`Statutes
`
`35 U.S.C. § 101 ........................................................................................................................ passim
`
`35 U.S.C. § 102 ..............................................................................................................................5, 6
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
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`- ii -
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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 4 of 13
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`35 U.S.C. § 103 ..................................................................................................................................6
`
`Other Authorities
`
`Fed. R. Civ. P. 12 ...............................................................................................................................2
`
`Fed. R. Civ. P. 52 .......................................................................................................................1, 2, 3
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`Fed. R. Civ. P. 52(c) ...........................................................................................................................1
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`
`
`
`- iii -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 5 of 13
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`Each court that found an “inventive concept” in U.S. Patent No. 8,677,494 (the “’494
`Patent”) that allowed it to survive a patentability analysis pursuant to Section 101 did so under a
`different legal standard and without the full (and different) evidentiary record before this Court.
`These decisions, therefore, are not only not controlling but they are also inapplicable to the issue
`before this Court. In this case, there is a full evidentiary record that demonstrates—by clear and
`convincing evidence—that Claim 10 of the ’494 Patent is unpatentable. Juniper therefore
`respectfully requests that the Court find Claim 10 invalid under § 101.
`I.
`LEGAL STANDARDS
`A.
`Section 101
`
`This Court has already determined that Claim 10 is directed to an abstract concept: “the
`fundamental practice of collecting data, analyzing data, and storing results . . . .” Dkt. 189 at 18.
`The only remaining issue is whether Claim 10 contains an “inventive concept” in the form of “an
`element or combination of elements that is sufficient to ensure that the patent in practice amounts
`to significantly more than a patent upon the abstract idea itself.” Alice Corp. Pty. v. CLS Bank Int’l,
`573 U.S. 208, 217–18 (2014). Thus, the relevant inquiry is whether the evidence in the record
`establishes by clear and convincing evidence that the claim recites nothing more than “well-
`understood, routine, conventional activit[ies]” previously known in the industry. Id. at 225;
`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) (“The question of whether a claim
`element or combination of elements is well-understood, routine and conventional to a skilled artisan
`in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity
`conclusion must be proven by clear and convincing evidence.”).
`B.
`Rule 52
`
`Unlike the prior court decisions concerning § 101—both of which viewed the ’494 patent in
`a light favorable to Finjan—“[i]n deciding whether to enter judgment on partial findings under Rule
`52(c), the district court is not required to draw any inferences in favor of the non-moving party;
`rather, the district court may make findings in accordance with its own view of the evidence.”
`Ritchie v. United States, 451 F.3d 1019, 1023 (9th Cir. 2006) (emphasis added); see also Lytle v.
`Household Mfg., Inc., 494 U.S. 545, 554–55 (1990).
`
`IRELL & MANELLA LLP
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`- 1 -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 6 of 13
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`II.
`
`THE COURT SHOULD ENTER JUDGMENT IN JUNIPER’S FAVOR ON § 101
`The evidence introduced in this case—the vast majority of which was not considered by the
`Sophos court (including a PTAB decision canceling portions of the ’494 Patent issued the day after
`the Sophos decision)—demonstrates that the elements of Claim 10 do not individually or in
`combination transform its abstract idea—namely, collecting, analyzing, and storing data—into an
`inventive concept. To the contrary, as Dr. Rubin testified at trial, the “receiver,” “scanner” and
`“database manager” components of Claim 10 are “well-understood, routine, and conventional in the
`art,” see, e.g., Trial Tr. at 721:24-722:11, and the activities they perform are not arranged in an
`inventive way, but are instead arranged in the “only one order that makes sense.” Trial Tr. at 732:14-
`25. Dr. Rubin’s analysis was supported by convincing documentary evidence, and Finjan did not
`provide any persuasive rebuttal on these issue.
`A.
`The Court Should Not Follow Sophos.
`
`The Sophos court believed claims of the ’494 Patent were inventive for two reasons: (1) they
`allegedly described a system where malware scanning takes place on “a separate, intermediate
`network” instead of “an end-user computer,” and (2) they allegedly described the new concept of
`detecting unknown viruses (rather than just known viruses) by “scanning and extracting particular
`suspicious elements of a file rather than scanning only entire files.” Finjan, Inc. v. Sophos, Inc.,
`244 F. Supp. 3d 1016, 1060 (N.D. Cal. 2017). This reasoning is not applicable in this case for at
`least two reasons. First, it was expressly based upon “viewing the ’494 patent in the light most
`favorable to Finjan,” a standard not applicable in the Rule 52 context. Id. Second, this analysis was
`based solely on the specification of the ’494 Patent, without the benefit of the evidentiary record
`that Juniper developed in this case, which conclusively establishes that both of these concepts were,
`in fact, well-known, routine and conventional.
`
`The Sophos Decision Was Based On A Different Standard.
`Although Sophos decided the § 101 issue post-trial, its analysis was expressly premised upon
`an apparent belief that the court was obligated to “view[] the ’494 patent in a light favorable to
`Finjan” when assessing whether it contained an innovative concept. 244 F. Supp. 3d at 1060. The
`Sophos court thus essentially adopted a favorable analysis of the ’494 Patent inform the Blue Coat
`
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`- 2 -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 7 of 13
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`case, which in turn was made in the context of a Rule 12 motion where the court expressly
`interpreted the ’494 Patent in a light most favorable to Finjan in its § 101 analysis. See, e.g., Finjan,
`Inc. v. Blue Coat Sys., LLC, No. 15-CV-03295-BLF, 2016 WL 7212322, at *7-8 (N.D. Cal. Dec.
`13, 2016).
`As noted above, for purposes of a Rule 52 decision, this Court is not required to make any
`inferences in favor of Finjan. Ritchie, 451 F.3d at 1023. Instead, the court is entitled to—and
`should—weigh the evidence provided by the parties in making its factual and legal findings. As
`detailed below, this evidence overwhelmingly shows that the supposedly inventive concepts
`identified in Sophos were not actually inventive at all.
`
`Sophos Did Not Have The Benefit Of This Case’s Factual Record.
`In addition to applying a different standard of analysis, the Sophos decision relied solely
`upon the ’494 Patent—accepting all statements made in its specification at face value. 244 F. Supp.
`3d at 1060–61. In this case, in contrast, Juniper has developed a factual record that undermines the
`key assertions in the ’494 Patent that the Sophos and Blue Coat courts relied on.
`As to the first purportedly inventive concept—i.e., that “instead of conducting malware
`analysis on an end-user computer, the ’494 patent describes a system where malware scanning take
`place on a separate, intermediate network” (id. at 1060 (citing Blue Coat, 2016 WL 7212322 at
`*11))—Finjan did not introduce any evidence in this case that this was a requirement of Claim 10,
`much less that this made Claim 10 innovative. Moreover, contrary to the Blue Coat court’s assertion
`that “[a]ll embodiments of the protection engines disclosed in the ’494 and ’194 specifications reside
`on a network server”—which was accepted as true in Sophos—the ’194 specification (which is
`expressly incorporated by reference in the ’494 patent, see Tr. Ex. 1 at 1:35-38) explains that “the
`invention can be embodied in a system for protecting an individual computer,” and various
`embodiments in the ’494 specification describe a protection engine as being located on a client.
`See U.S. Patent No. 6,092,194 at 9:64-65; Tr. Ex. 1 at Fig. 1(a) (identifying element 104
`“Subsystem-1” as “sandbox protected”); 6:42-50 (explaining that “[s]ubsystems 104-106 can, for
`example, include one or more servers, personal computers (“PCs”) . . .”); 7:40-44 (server can
`supply “mobile protection code” for execution by “client devices 145”); 17:45-18:31 (describing an
`
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`- 3 -
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`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 8 of 13
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`embodiment where the “protection engine” for performing dynamic analysis is located on the
`client).
`Moreover, contrary to the Blue Coat court’s assertion that all “protection engines” in the
`’494 Patent (including the Downloadable scanner) must “reside on a network server,” nothing in
`Claim 10 specifies a location for the claimed Downloadable scanner. Tr. Ex. 1 at 22:7-16. Even
`Finjan’s technical expert, Dr. Cole, agreed that nothing in Claim 10 required implementation at an
`intermediate location, and that Claim 10’s system could be implemented on an end-user’s computer.
`Dkt. 126-8 (Ex. 4 to MSJ Opp.) at 65:21-66:5. Thus, as Claim 10 does not require that malware
`scanning take place on a separate, intermediate network, this issue is irrelevant to a § 101 analysis.
`Berkheimer, 881 F.3d at 1369 (holding that when claims “d[id] not recite any of the purportedly
`unconventional activities disclosed in the specification,” they could not be patent eligible on this
`basis). And, even if the claim did require the scanner to be located in a certain place in the network
`(which it does not), the evidence in this case shows that it was well-known, routine, and conventional
`to perform malware analysis at a firewall, as opposed to an end-user machine. See, e.g., Tr. Ex.
`1070-14 (describing a prior art virus detection system, VIDES, and noting that it could be employed
`“as a type of firewall for programs entering a protected network”); Tr. Ex. 2197-7 (noting that, as
`of 1994, “some Internet Firewalls can be configured to [decode a file] automatically” before
`scanning all incoming software).
`The evidence also demonstrates that the second inventive concept identified in Sophos—
`“scanning and extracting particular suspicious elements of a file rather than scanning only entire
`files,” which supposedly inventively “allow[ed] a malware detection program to detect new viruses”
`rather than “identifying only known viruses,” Sophos, 244 F. Supp. 3d at 1061—was also well
`known, routine, and conventional. As Juniper’s expert Dr. Rubin explained, scanners that detected
`unknown viruses by extracting and analyzing suspicious code patterns and operations were well-
`known before the ’494 patent. See, e.g., Trial Tr. at 724:18-725:7 (discussing how Figure 3 of Tr.
`Ex. 1070-10 depicted a “list of suspicious operations” extracted by a prior art product); see also id.
`at 728:21-729:8 (noting how the prior art taught “behavior blocking based on [monitoring] the
`behavior of the code when you’re running it”) (discussing Tr. Ex. 1069-5). Dr. Rubin’s opinion is
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`- 4 -
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`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 9 of 13
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`consistent with the documentary evidence admitted at trial, which confirms that, as of 1995, it was
`common for scanners to perform these functions. Tr. Ex. 1070-4 (noting that “[t]he method of
`choice [for detecting unknown viruses] is heuristics . . . . This is most often done by looking for a
`pattern of certain code fragments that occur most often in viruses and hopefully not in bona fide
`programs”); Tr. Ex. 1069-9 (noting that “heuristic analysis of static code” that “conclude[d] whether
`. . . the code contained a virus ha[s] been around for years”).
`
`Sophos Did Not (And Could Not) Consider The PTAB’s Decision.
`In addition to the evidence identified above, the Sophos court—and the prior Blue Coat
`court—analyzed the ’494 Patent without the benefit of the Final Written Decision of the Patent Trial
`and Appeal Board (“PTAB”) in Symantec Corp. v. Finjan, Inc., No. IPR2016-01892 (P.T.A.B.
`March 15, 2017), which issued one day after the Sophos opinion. In this decision, the PTAB
`determined that all elements of Claim 1 of the ’494 Patent were disclosed or rendered obvious by
`Swimmer, a prior art reference from 1995 (Tr. Ex. 1070 in this case, and discussed as an example
`of a “scanner” in Dr. Rubin’s § 101 trial testimony; see § II.B below). Id. at 32-42. In other words,
`the Sophos court believed all claims of the ’494 Patent to be valid, when this is no longer the case.
`As Dr. Rubin explained, Claim 1 and Claim 10 are nearly identical, except for the generic
`components “receiver,” “Downloadable scanner,” and “database manager”:
`Claim 1
`Claim 10
`A computer-based method, comprising
`A system for managing Downloadables, comprising:
`the steps of:
`
`
`receiving an incoming Downloadable;
`
`deriving security profile data for the
`Downloadable, including a list of
`suspicious computer operations that may
`be attempted by the Downloadable; and
`
`
`storing the Downloadable security profile
`data in a database.
`
` receiver for receiving an incoming Downloadable;
`
` a
`
` a
`
` Downloadable scanner coupled with said
`receiver, for deriving security profile data for the
`Downloadable, including a list of suspicious
`computer operations that may be attempted by the
`Downloadable; and
`
` a
`
` database manager coupled with said
`Downloadable scanner, for storing the
`Downloadable security profile data in a database.
`
`
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`Trial Tr. at 721:13-722:5.
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`- 5 -
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`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 10 of 13
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`Had the Sophos court been aware that each of the elements of Claim 1 was disclosed in the
`prior art, this would have had an impact on its conclusions concerning § 101 analysis. Berkheimer,
`881 F.3d at 1368 (“[T]he Supreme Court recognized that in making the § 101 determination, the
`inquiry ‘might some-times overlap’ with other fact-intensive inquires like novelty under § 102.”)
`(internal citations omitted); see also, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
`1343, 1347 (Fed. Cir. 2015) (“precedent illustrates that pragmatic analysis of § 101 is facilitated by
`considerations analogous to those of §§ 102 and 103 as applied to the particular case”). In
`determining that claims of the ’494 patent were inventive “because they detail[ed] a process for
`identifying unknown viruses by extracting specific suspicious operations from files,” Sophos, 244
`F. Supp. 3d at 1061, Sophos came to essentially the opposite determination of the PTAB, when the
`PTAB alone had engaged in a factual inquiry. Thus, Sophos should not guide this court’s analysis.
`B.
`Clear And Convincing Evidence In This Case Demonstrates That Claim 10
`Does Not Contain A Transformative Inventive Concept.
`
`As shown above, the overwhelming evidence of record shows that the functional
`components of Claim 10—which wholly overlap with the elements of now-invalidated Claim 1—
`do not supply an inventive concept. Juniper also met its burden to establish by clear and convincing
`evidence that the additional hardware components required in Claim 10 were “well-understood,
`routing, [and] conventional” components “previously known to the industry” that were being used
`in a traditional customary manner. Alice, 573 U.S. at 225. The vast majority of Juniper’s evidence
`on these issues was unrebutted, and Finjan’s only evidence regarding the inventiveness of Claim 10
`was the conclusory testimony of its expert, which was contrary to the documentary evidence.
`For example, Dr. Rubin testified that “scanners” were “very well known” and that the pairing
`of a receiver with a scanner is entirely conventional because “[t]he only way that you can scan
`something that comes from the Internet is to have a receiver to receive it[,] unless you wrote it
`yourself.” Trial Tr. 722:12-15, 729:15-17. In support of his opinion, Dr. Rubin provided several
`specific examples of “scanners” described in the prior art, including a scanner that used a “24-byte
`hexadexamical search pattern” to perform a “static scan,” id. at 724:10-17 (discussing Tr. Ex. 2197-
`4), a dynamic analyzer that built a “list of suspicious operations” to derive security profile data from
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`- 6 -
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`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 11 of 13
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`a downloadable, id. at 724:18-725:9 (discussing Tr. Ex. 1070-10), and a “macro virus scanning
`module” that used “comparison data” to detect “combinations of suspected instructions,” id. at
`726:7-19 (discussing Tr. Ex. 1552-9). Dr. Rubin also testified that each of the prior art “scanners”
`he identified had a “receiver” in the sense of the ’494 patent. Trial Tr. at 729:20-22.
`Finjan’s expert Dr. Orso did not dispute that the “receiver” component of Claim 10 was
`insufficient to confer patent eligibility. As prior courts have recognized, “[t]hat a computer receives
`and sends . . . information over a network . . . is not even arguably inventive.” buySAFE, Inc. v.
`Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see also Fitbit, Inc. v. AliphCom, No. 15-CV-
`04073-EJD, 2017 WL 528491, at *8 (N.D. Cal. Feb. 9, 2017) (claims found patent ineligible when
`“the various steps of transmitting or receiving information and how they are accomplished . . . recite
`these steps only functionally and require no inventive algorithm or data structure for performing
`them”). As to the “scanner” element, Dr. Orso’s only response was that the cited disclosures were
`“either patents or research papers” that “by definition” “describe novel technology that are definitely
`not conventional and not routine and not well known and understood” and that they were only
`“talking about the standard virus detectors” that “recognize[] known viruses.” Trial Tr. at 876:12-
`877:5. But Dr. Orso’s conclusory testimony is not persuasive, as it is directly refuted by the
`references themselves, which unequivocally state that scanners capable of detecting unknown
`viruses by looking at code patterns (not whole files) had been around for years. See, e.g., Tr.
`Ex. 1070-4; Tr. Ex. 1069-9. In fact, the ’194 Patent (incorporated by reference into the ’494 Patent)
`expressly acknowledges that the claimed scanner is nothing more than a conventional component:
`“the code scanner [] uses conventional parsing techniques to decompose the code (including all
`prefetched components) of the Downloadable into the DSP data.” ’194 Patent at 5:42-45 (emphasis
`added).
`Juniper also presented clear and convincing testimony that the “database manager”
`component of Claim 10 did not supply an inventive concept. Finjan’s own expert Dr. Cole
`previously admitted that databases existed prior to the ’494 Patent, and almost all databases have
`some sort of “database manager.” See, e.g., Dkt. 126 at 40. While Finjan’s other expert, Dr. Orso,
`opined that a purported benefit of Claim 10 was that it reduced the expense associated with malware
`
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`- 7 -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 12 of 13
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`analysis because it stores the results in a database so that you “don’t have to redo the analysis a
`second time,” Trial Tr. at 871:2-3, even he could not testify that the concept of using a database to
`store things was unconventional. Indeed, and as Dr. Rubin explained, using a database manager to
`store things in a database was “well known in the art,” as exemplified by the SQL for Dummies
`book published in 1995, which describes “database management systems” (“DBMSs”) and observes
`that “[t]here are many DBMSs on the market today.” Trial Tr. at 731:2-732:6 (discussing Ex. 1241-
`39). Prior courts have also confirmed that the components of a database and database manager are
`generic and do not provide an inventive concept. See, e.g., Mortg. Grader, Inc. v. First Choice Loan
`Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (finding a “database” element not inventive in
`a claim involving the use of a network to transfer information to a database); see also Zkey Invs.,
`LLC v. Facebook Inc., 225 F. Supp. 3d 1147, 1156 (C.D. Cal. 2016) (characterizing database
`management systems as “generic computer technology” in a § 101 analysis), aff’d, 708 F. App’x
`681 (Fed. Cir. 2018).
`Finally, Juniper provided clear and convincing evidence that Claim 10 does not contain an
`unconventionally ordered combination of elements that provides an inventive concept. As
`Dr. Rubin explained, the system of Claim 10 is arranged in a conventional way—indeed, the only
`way that the elements could be configured to work together: “In Claim 10, there’s really only one
`order that makes sense. We’re talking about receiving a downloadable. We’re talking about
`analyzing the downloadable that’s been received. We’re talking about building a list of suspicious
`operations and then storing that list. Any way that you try to put those steps in another order, it
`wouldn’t work.” Trial Tr. at 732:14-25. This reflects only “the familiar progression of acquiring
`and analyzing information of a desired type to extract certain results from that information”: a non-
`inventive combination of non-inventive elements. Procter & Gamble Co. v. QuantifiCare Inc., 288
`F. Supp. 3d 1002, 1027 (N.D. Cal. 2017).
`III. CONCLUSION
`Claim 10 is directed to patent-ineligible subject matter and does not contain any inventive
`concepts. For the foregoing reasons, Claim 10 should be declared invalid, and Finjan’s claims for
`infringement of Claim 10 dismissed with prejudice.
`
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`- 8 -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`

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`Case 3:17-cv-05659-WHA Document 564 Filed 06/28/19 Page 13 of 13
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`Dated: June 28, 2019
`
`Respectfully submitted,
`
`IRELL & MANELLA LLP
`By: /s/ Rebecca L. Carson
`Rebecca L. Carson
`Attorneys for Defendant
`JUNIPER NETWORKS, INC.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
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`- 9 -
`
`BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`