Case 3:17-cv-05659-WHA Document 565 Filed 06/28/19 Page 1 of 10
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`
`
`PAUL J. ANDRE (State Bar No. 196585)
`pandre@kramerlevin.com
`LISA KOBIALKA (State Bar No. 191404)
`lkobialka@kramerlevin.com
`JAMES HANNAH (State Bar No. 237978)
`jhannah@kramerlevin.com
`KRISTOPHER KASTENS (State Bar No. 254797)
`kkastens@kramerlevin.com
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`
`Attorneys for Plaintiff
`FINJAN, INC.
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`
`
`Case No.: 3:17-cv-05659-WHA
`
`PLAINTIFF FINJAN, INC.’S RESPONSE
`REGARDING PATENT ELIGIBILITY OF
`U.S. PATENT NO. 8,677,494
`
`
`FINJAN, INC., a Delaware Corporation,
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`
`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
`
`
`
`
`
`
`Defendant.
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`FINJAN’S RESPONSE RE PATENT ELIGIBILITY
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`CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 565 Filed 06/28/19 Page 2 of 10
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`Claim 10 of U.S. Patent No. 8,677,494 (Trial Ex. 1, the “’494 Patent”) is patent eligible under
`35 U.S.C. § 101 because it teaches how to protect a user from malicious malware on the Internet using
`behavior-based analysis which was directly contrary to the conventional thinking at the time of filing
`the ‘494 Patent. Further, the Court should follow the Federal Circuit holding which confirmed that
`Finjan’s behavior-based scanning technique (which is covered in the ’494 Patent) is non-abstract and
`Judge Orrick’s and Judge Freeman’s reasoning finding that Claim 10 of the ’494 Patent includes an
`inventive concept.
`I.
`FACTUAL BACKGROUND
`The ‘494 Patent solved a major problem in computer security. In 1996, when the invention of
`the ‘494 Patent was filed, viruses infected computer much like a cold and would spread when a file was
`shared on floppy disks attaching itself to other files on a user’s computer. Trial Tr. at 226:1-19, 885:16-
`19. To combat these viruses, anti-virus companies would obtain the virus, dissect it, and write
`signatures which identified a series of unique bytes within the virus. Trial Tr. at 233:8-23, 234:16-24.
`If a file was scanned on a user’s computer and it matched a signature of a virus, the file was deemed
`infected and remedial measures would be taken. Trial Tr. at 233:8-23, 234:16-24. This technique was
`known as “reactive” because the virus had to be known, obtained, and analyzed before any protection
`could be put in place to protect against the virus. Trial Tr. at 233:8-23; 235:1-7.
`With the debut of the Internet, Finjan realized that signature-based technique would no longer
`work. Trial Tr. at 226:16-19. Instead of spreading viruses that attach to files, hackers would be able to
`create powerful malicious stand-alone software (termed “malware”) that would infect computers as
`soon as the program was downloaded and run. Trial Tr. at 234:1-9. Finjan coined these threats as
`“Downloadables” and there was no solution that protected against them. U.S. Pat. No. 6,092,194 (the
`“’194 Patent”) at 1:41-49 (“these security systems [at the time] are not configured to recognize
`computer viruses which have been attached to or configured as Downloadable application programs,
`commonly referred to as ‘Downloadables’”); Trial Tr. at 869:3-870:8 (Downloadables were a “new
`kind of threats … and were not very well recognized and understood”).
`To protect against these new types of threats, Finjan invented proactive security that did not rely
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`Case 3:17-cv-05659-WHA Document 565 Filed 06/28/19 Page 3 of 10
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`upon traditional signatures but rather analyzed the behavior of a program. Trial Ex. 107 at FINJAN-JN
`437129 (recognizes Finjan is “the inventor of proactive content behavior inspection”). Contrary to
`traditional reactive techniques, Finjan’s proactive approach created a behavior profile of the
`Downloadable and determined whether the behavior was malicious based on the generated profile.
`’494 Patent, Claim 10 (reciting “deriving security profile data for the Downloadable, including a list of
`suspicious computer operations that may be attempted by the Downloadable”). In this way, Finjan was
`able to detect against brand-new malicious software programs that attempted to run on a user’s
`computer regardless of whether anti-virus companies had analyzed the program before or tried to create
`a signature for it. Finjan, Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016, 1061 (N.D. Cal. 2017) (stating that
`the ’494 Patent describes a technique capable of detecting unknown viruses); Trial Ex. 107 at FINJAN-
`JN 437130 (Finjan “provides day-zero defense against new, previously unknown attacks by leveraging
`its proprietary application-level behavior blocking technology”).
`The industry did not adopted Finjan’s technology, in the beginning, for a number of reasons.
`First, the Internet was in its early stages and the threat of malicious Downloadables was simply not
`prevalent. Second, it was computationally expensive to generate a behavior profile for every
`Downloadable that was encountered. Third, it is difficult to break into an industry with cutting edge
`technology that had not been tested for many years before. ’494 Patent at 1:65-2:21; see also Trial Tr.
`at 876:3-877:18 (explaining none of Juniper’s alleged prior art provides the same level of functionalities
`as Claim 10 of the ’494 Patent). In fact, industry reports published years after the invention of the ’494
`Patent showed that the computer security industry was slow to adopt behavior-based analysis, which
`confirms that the technique of Claim 10 was not well-understood, routine, or conventional in 1996. See
`Trial Ex. 126 at FINJAN-JN 009790-91 (where a 2003 industry report states that “[f]orward-looking
`organizations are beginning to realize they cannot rely upon reactive signature-based antivirus
`technology alone” and “IDC believes the integration of real-time behavior analysis technologies with
`traditional signature-based antivirus technologies will allow for a greater degree of accuracy in
`detecting both known and unknown threats”); Trial Ex. 125 at FINJAN-JN 429657 (which is a market
`analysis report bearing a copyright date of 2003, where the report states that “[s]everal proactive virus
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`detection technologies, such as behavior-based analysis and heuristics, are becoming part of
`organizations’ security architectures.”); Trial Ex. 105 at FINJAN-JN 437020 (where a U.S.
`Government presentation shows that pre-2008, malware detection is largely signature-based).
`The Federal Circuit confirmed that Finjan was the pioneer of behavior-based malware detection,
`upholding the patentability of its parent application on those grounds. U.S. Patent No. 6,154,844 (the
`“’844 Patent”) is a parent to the ‘494 Patent. The Federal Circuit confirmed that the ‘844 Patent was
`patent eligible because it covers behavior-based detection, just like the ‘494 Patent. Finjan, Inc. v. Blue
`Coat Sys., Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018) (“[t]he question, then, is whether this behavior-
`based virus scan in the ’844 patent constitutes an improvement in computer functionality. We think it
`does.”); see also Blue Coat Sys., 879 F.3d at 1304 (“[t]he ‘behavior-based’ approach to virus scanning
`was pioneered by Finjan” and “[i]n contrast to traditional ‘code-matching’ systems, which simply look
`for the presence of known viruses, ‘behavior-based’ scans can analyze a downloadable’s code and
`determine whether it performs potentially dangerous or unwanted operations–such as renaming or
`deleting files.”); Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018) (“In Finjan, we
`held that claims to a ‘behavior-based virus scan’ were a specific improvement in computer functionality
`and hence not directed to an abstract idea.”) (citing Blue Coat Sys., 879 F.3d at 1304).
`II.
`LEGAL FRAMEWORK
`The ‘494 Patent should be viewed in the light most favorable to Finjan because patents are
`presumed valid under 35 U.S.C. § 101 unless proven otherwise by clear and convincing evidence. CLS
`Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1304-05 (Fed. Cir. 2013); Berkheimer v. HP Inc.,
`881 F.3d 1360, 1368 (Fed. Cir. 2018).
`III. ARGUMENT
`
`1.
`
`The Court Should Adopt the Reasoning Judges Freeman and Orrick, and Find
`Claim 10 Patent Eligible under Step Two of Alice
`Two courts in this District have already found Claim 10 of the ’494 Patent eligible under Alice
`step two because claim elements, when considered as a whole, recite an inventive concept. Finjan, Inc.
`v. Blue Coat Sys. LLC, No. 15-cv-03295-BLF, 2016 WL 7212322, at *11 (N.D. Cal. Dec. 13, 2016)
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`(“at the time of invention, virus protection was localized and reactive” and that the ’494 Patent claims
`“both spatial and temporal alterations to this paradigm”) (the “Blue Coat Order”); Sophos, 244 F. Supp.
`3d at 1061 (the “Sophos Order”) (“[l]ooking at the ’494 patent as a whole, the claims recite an inventive
`concept because they detail a system that involves scanning malware on an intermediate network, rather
`than an end-user computer, and because they detail a process for identifying unknown viruses by
`extracting specific suspicious operations from files.”).
`In the Sophos Order, Judge Orrick agreed with Judge Freeman’s analysis in the Blue Coat
`Order, and found that “the claims recite an inventive concept when taken as an ordered combination
`and considered in context.” Sophos, 244 F. Supp. 3d at 1060. Judge Orrick found that “prior to its
`invention, malware protection programs were only able to detect and protect against known viruses and
`were installed on particular user computers.” Id., citing ’494 Patent at 2:11-21. First, “the patent
`specifications make clear that the claim steps take place on a network” and “this arrangement represents
`a novel use of specific computer systems in a ‘non-conventional and non-generic arrangement’ to
`improve malware protection systems for computer networks.” Id. at 1960-61. Second, the ’494 Patent
`involves extracting operations of a file he found “innovative because it allows a malware detection
`program to detect new viruses, previously unknown files that contain suspicious operations, rather than
`identifying only known viruses.” Id., citing ’494 Patent at 2:56-64.
`The trial record supports the reasoning of Judge Orrick and Judge Freeman that the elements of
`Claim 10 recite an inventive concept that were not well-understood, routine, or conventional in 1996.
`Claim 10 addresses a problem from the advances of the computer networks technologies, which
`provided a new way of spreading viruses (i.e. via Downloadables) and allowed viruses to spread faster.
`Trial Tr. at 226:1-227:7 (“prior to the mid-’90s, the Internet has not yet taken off” and it was fairly slow
`“propagating viruses at the time; but then once the Internet came about, then it was much, much easier
`for viruses to simply be downloaded over the Internet”); ’194 Patent at 1:29-36 (the public Internet “has
`become a major source of many system damaging and system fatal application programs”); Trial Tr. at
`869:3-870:8 (Downloadables were a “new kind of threats … and were not very well recognized and
`understood”). These types of inventions, i.e., those that address the problem caused by Internet
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`technologies and are rooted in computer technology, are patent eligible. DDR Holdings, LLC v.
`Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (finding claims addressing a technical Internet-
`centric problem patent eligible). As such, the trial record establishes that there is an inventive concept
`in Claim 10 of the ‘494 Patent under both the reasoning from Judges Orrick and Freeman, as well as the
`established law of the Federal Circuit.
`The elements of Claim 10 describe a behavior-based scanning technique to address the
`problems caused by these new types of files, namely Downloadables, and thus is patent eligible because
`it describes exactly how to protect against them. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
`F.3d 1288, 1311 (Fed. Cir. 2016) (a claim is patent-eligible if it recites “a particular means for
`accomplishing an underlying goal”). Claim 10 recites a system with specific components such as a
`receiver that can receive Downloadables over a network, a Downloadable scanner that creates profiles
`of suspicious code, and a database manager that stores the profiles, each of which performs certain
`aspects of the claimed functions, to achieve this the behavior-based scanning technique. The claim uses
`a Downloadable scanner for deriving security profile data including a list of suspicious computer
`operations that may be attempted by a Downloadable to analyze the behaviors of the Downloadable.
`’494 Patent, Claim 10; Trial Tr. at 870:9-871:3. The claim also uses a database manager for storing the
`Downloadable security profile data in a database which avoids reanalyzing the same Downloadable in
`subsequent encounters. ’494 Patent, Claim 10; Trial Tr. at 237:17-238:1 (”rather than repeat that
`process every single time, the security profile that’s created can be stored in a database for later
`retrieval”); id. at 870:9-871:3 (“this kind of analysis to identify suspicious operations in a downloadable
`can be very expensive”). These elements allowed for a more robust protection, including protection
`against viruses that had never been seen before and efficiencies in this scanning process by storing the
`results of analysis. Trial Tr. at 235:8-237:16 (“virus has fooled the [signature-based] virus detection
`software” when its fingerprint cannot be found, while the behavior-based approach focuses on the
`operations to determine “whether or not it looks like it could be a virus”); id. at 870:9-871:3 (using a
`database to store the results from the behavioral analysis, “[y]ou don’t have to redo the analysis a
`second time”). Furthermore, the ‘494 Patent sets forth how to protect against malicious Downloadables
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`in that it requires the generation of a new data, namely a profile, that is analyzed to determine if the
`Downloadable itself should be blocked or not. Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999-
`BLF, 2015 WL 7351450, at *9-10 (N.D. Cal. Nov. 20, 2015) (stating that creating a new data file, i.e. a
`downloadable security profile, does not describe an abstract concept), aff’d in part, 879 F.3d 1299 (Fed.
`Cir. 2018); Blue Coat Sys., 2016 WL 7212322, at *11 (“deriving security profile data” refers to the
`process of identifying operations, which was non-conventional). Creating a profile for a Downloadable
`was directly contrary to the conventional thinking at the time which focused on scanning existing files
`rather than creating new data files that were analyzed to determine the behavior of the Downloadable
`that was suspicious.
`Additionally, security measures in 1996 were based signatures of known viruses. Trial Tr. at
`233:8-23 (signature matching “was the original way in which viruses were detected”); Trial Ex. 105 at
`FINJAN-JN 437020 (the industry mostly uses signature-based scanning pre-2008). These industry
`reports recognize that these behavior-based scanning techniques pioneered by Finjan were only adopted
`years after the priority date of the ’494 Patent. See e.g., Trial Ex. 126 at FINJAN-JN 009790-91; Trial
`Ex. 125 at FINJAN-JN 429657. This shows that the elements of Claim 10 were not conventional at the
`time of the invention. Blue Coat Sys., 2016 WL 7212322, at *11 (“deriving security profile data” refers
`to the process of identifying operations and “[a]t the time, this move from profiling at the file level to
`profiling at the operation level was non-conventional rearrangement of malware profiling process”).
`
`2.
`
`Juniper Failed to Establish that Claim 10 of the ‘494 Patent Does Not Have an
`Inventive Concept
`Juniper failed to prove by clear and convincing evidence that elements of Claim 10 were well-
`understood, routine and conventional, either individually or as a combination. Instead, Juniper put on a
`de facto obviousness case against the ‘494 Patent, by dividing Claim 10 into individual sub-elements.
`Juniper then used five references that were not established to be well known, routine, and conventional
`in the industry in 1996 (Trial Exs. 1070, 1059, 1241, 1552, 2197), to argue that an aspect of Claim 10
`was not inventive. See Trial Tr. at 719:24-731:24. Juniper’s analysis was legally insufficient because
`“[t]he inventiveness inquiry of § 101 should [] not be confused with the separate novelty inquiry of
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`§ 102 or the obviousness inquiry of § 103.” Amdocs, 841 F.3d at 1311. Novelty under § 103 is “the
`question of whether the claimed invention is new” whereas “[i]nventiveness is the question of whether
`the claimed matter is invention at all, new or otherwise.” Id. Indeed, Judge Orrick already rejected the
`same type of argument in the Sophos Order. See Sophos, 244 F. Supp. 3d at 1060-61.
`Moreover, Juniper did not present evidence that elements of Claim 10, taken as a combination,
`well-understood, routine, and conventional. The Federal Circuit is clear that the step two analysis
`“requires more than recognizing that each claim element, by itself, was known in the art … [as] an
`inventive concept can be found in the non-conventional and non-generic arrangement of known,
`conventional pieces.” Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
`1349-50 (Fed. Cir. 2016) (disagreeing with district court’s analysis under the step two because “[t]he
`district court’s analysis in this case [] looks similar to an obviousness analysis under 35 U.S.C. § 103,
`except lacking an explanation of a reason to combine the limitations as claimed.”). The trial record
`establishes that the state of the art at the time was signature-based virus detection, not behavior-based as
`was in Claim 10. See Trial Tr. at 876:12-877:18; Trial Ex. 1552 at 1:19-22 (reference published 3 years
`after the invention of Claim 10, stating that “[v]iruses are commonly detected using signature scanning
`techniques.”). In fact, Juniper’s expert, Dr. Rubin confirmed, on cross-examination, that he praised
`Finjan’s technology in the 90s. Trial Tr. at 772:21-24, 773:3-8 (“‘Finjan’s use of sophisticated
`behavior-blocking technology to stop malicious code is impressive,’ said Avi Rubin”).
`Lastly, none of the alleged prior art references used by Juniper disclose all of Claim 10. In fact,
`some were already considered by the Patent Office. See, e.g., ’494 Patent at p. 2 (citing Trial Ex. 1552
`(“Chen”)), p. 6 (citing Trial. Ex. 1059 (“Stang”)). Additionally, the validity of Claim 10 has been tested
`in at least six IPRs and all of which found Claim 10 as valid, which includes the IPR decision that
`Juniper relied on that invalidated Claim 1. See Cisco Sys., Inc. v. Finjan, Inc., Case IPR2017-02155,
`Paper 11 (P.T.A.B. Apr. 3, 2018); Palo Alto Networks, Inc. and Blue Coat Sys. LLC v. Finjan, Inc.,
`Case IPR2016-00159, IPR2016-01174, Paper 50 (P.T.A.B. Apr. 11, 2017); Blue Coat Sys., Inc. and
`Symantec Corp. v. Finjan, Inc., Case IPR2015-01892, IPR2016-00890, Paper 58 (P.T.A.B. Mar. 15,
`2017); Symantec Corp. v. Finjan, Inc., Case IPR2015-01897, Paper 7 (P.T.A.B. Feb. 26, 2016); Sophos,
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`Inc. v. Finjan, Inc., Case IPR2015-01022, Paper 7 (P.T.A.B. Jan. 28, 2016). These decisions confirm
`that Claim 10 was not well-understood, routine or conventional.
`3.
`The Court Should Find Claim 10 is Non-Abstract
`In light of the recent Federal Circuit holding, Claim 10 should be found to be non-abstract as
`well as containing an inventive concept. After the Sophos Order, in 2018, the Federal Circuit issued a
`decision on the ’844 Patent finding that the behavior-based virus scanning pioneered by Finjan is an
`improvement in computer functionality and not an abstract idea. Blue Coat Sys., 879 F.3d at 1304-05;
`see also Ancora, 908 F.3d at 1348 (“In Finjan, we held that claims to a ‘behavior-based virus scan’
`were a specific improvement in computer functionality and hence not directed to an abstract idea.”)
`(citation omitted). As the Federal Circuit decision issued after the Sophos Order and is also directed to
`a behavior-based virus scan, this Court should adopt the Federal Circuit’s rationale and find Claim 10 of
`the ’494 Patent is non-abstract because it is also rooted in computer technology and teaches one of skill
`in the art how to build a behavior-based security system. Sophos, 244 F. Supp. 3d at 1060.
`Claim 10 provides the same benefits as those recognized by the Federal Circuit as patent
`eligible. In one example, Claim 10 focuses on the operations of a Downloadable and deriving security
`profile data which includes a list of suspicious or potentially suspicious operations, which is similar to
`those recognized by the Federal Circuit as patent eligible. Blue Coat Sys., 879 F.3d at 1304
`(“information about potentially hostile operations produced by a ‘behavior-based’ virus scan [which is]
`distinguished from traditional, ‘code-matching’ virus scans”). As another example, the “the security
`profile approach allows access to be tailored for different users and ensures that threats are identified
`before a file reaches a user’s computer.” This flexibility is also reflected in Claim 10 of the ’494 Patent
`where security profile data (having a list of suspicious operations) can be included as part of the security
`profile and stored in a database. Trial Tr. at 237:17-238:1; id. at 870:9-871:3 (same). Because Claim
`10 of the ’494 Patent provides the same behavior-based protection as the ’844 Patent, Claim 10 of the
`’494 Patent is non-abstract. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)
`(“specific asserted improvement in computer capabilities” are not abstract); see also McRo, Inc. v.
`Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); DDR Holdings, 773 F.3d at 1259.
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`IV. CONCLUSION
`Therefore, the Court should find that Claim 10 of the ’494 Patent is patent-eligible.
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`Dated: June 28, 2019
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`Respectfully submitted,
`
`
`By: /s/ Kristopher Kastens
`Paul J. Andre (State Bar No. 196585)
`Lisa Kobialka (State Bar No. 191404)
`James Hannah (State Bar No. 237978)
`Kristopher Kastens (State Bar No. 254797)
`KRAMER LEVIN NAFTALIS
`& FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`Facsimile: (650) 752-1800
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`jhannah@kramerlevin.com
`kkastens@kramerlevin.com
`
`Attorneys for Plaintiff
`FINJAN, INC.
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`FINJAN’S RESPONSE RE PATENT ELIGIBILITY
`OF U.S. PATENT NO. 8,677,494
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`CASE NO.: 3:17-cv-05659-WHA
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