Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 1 of 6
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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
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`Case No.: 3:17-cv-05659-WHA
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`PLAINTIFF FINJAN, INC.’S REPLY TO
`JUNIPER NETWORKS, INC.’S BRIEF
`REGARDING PATENT ELIGIBILITY OF
`U.S. PATENT NO. 8,677,494 (DKT. NO. 564)
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`FINJAN, INC., a Delaware Corporation,
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`Plaintiff,
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`v.
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`JUNIPER NETWORKS, INC., a Delaware
`Corporation,
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`Defendant.
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`FINJAN’S REPLY RE PATENT ELIGIBILITY OF ’494 PATENT CASE NO.: 3:17-cv-05659-WHA
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`Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 2 of 6
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`I.
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`CLAIM 10’S BEHAVIOR-BASED TECHNIQUE IS AN INVENTIVE CONCEPT
`Judge Orrick and Judge Freeman both already determined that Claim 10 of the ’494 Patent
`recites an inventive behavior-based scanning technique that identifies the operations of a file (instead of
`its byte patterns). The trial record here establishes that this type of scanning is inventive because it
`provides a concrete way of achieving a benefit – detecting unknown viruses and malicious
`Downloadables spreading via the Internet. Dkt. No. 565 (“Finjan Br.”) at 1-2, 4-6; Finjan, Inc. v. Blue
`Coat Systems, LLC, No. 15-cv-03295, 2016 WL 7212322, at *11 (N.D. Cal. Dec. 13, 2016); Finjan,
`Inc. v. Sophos, Inc., 244 F. Supp. 3d 1016, 1060-61 (N.D. Cal. 2017) (“Sophos Order”).
`A.
`The Sophos Order Should Apply to Inventiveness
`Judge Orrick’s decision in the Sophos order applied the same Rule 52 standard as to be applied
`here, and Juniper is incorrect that the Sophos Order a different standard. Dkt. No. 564 (“Juniper Br.”) at
`2-3 (“[t]he Sophos Court thus essentially adopted a favorable analysis of the ’494 Patent inform the
`Blue Coat 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.”). The Sophos Order
`is an “Order [Regarding] Post-Trial Motions.” Sophos, 244 F. Supp. 3d at 1023. Thus, the decision in
`the Sophos Order is made in the same context as the present case – namely, under Rule 52 of the
`Federal Rules of Civil Procedure. In addition, Judge Orrick did not simply adopt Judge Freeman’s
`analysis. Rather, Judge Orrick “agree[s] with Judge Freeman’s conclusion” with his independent
`analysis and the benefit of the trial record in the Sophos case. Id. at 1023, 1052-61 (emphasis added).
`For reasons set forth in Finjan’s opening brief, the Sophos Order is also consistent with the trial
`record in this case, which clearly establishes that the behavior-based scanning technique in the ’494
`Patent was not well-understood, routine or conventional in 1996, when the virus scanning techniques
`focus on signatures of known viruses. See Finjan Br. at 1:9-3:3, 4:7-6:18. Finjan has provided strong
`evidence from multiple sources including trial testimonies, trial exhibits, and the patent itself to show
`that Claim 10 provides a non-traditional approach which has a number of benefits including proactively
`detecting new threats and addressing the threats arise as a result of Internet Downloadables. Id. at 1-2,
`4-6; see also Trial Tr. at 876:6-877:18 (explaining why the alleged references do not describe what
`Claim 10 is directed to). Further, nearly all alleged prior art references were either patents or research
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`Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 3 of 6
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`papers, which by definition, describe new concepts, not routine technologies. See Trial Exs. 1552,
`1070, 1069; see also Trial Tr. at 876:6-877:18 (explaining that the alleged references are describing
`novel concepts at the time).
`Juniper’s argument that the Sophos Court did not have this case’s factual record (Juniper Br. at
`3-5) is a red herring because the trial record in this case is consistent with the Sophos Order. In
`particular, in the Sophos Order, Judge Orrick relied on the disclosure in the ’494 Patent to find that the
`claim recites two benefits, and the ‘494 Patent is part of the trial record here. Sophos, 244 F. Supp. 3d
`at 1061 (“[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.”). Therefore, Juniper’s argument that these benefits are somehow no
`longer applicable (see Juniper Br. at 3-5) is without merits because the basis of Judge Orrick’s
`conclusion (i.e. the ’494 Patent itself) did not change. Moreover, nothing in the present record shows
`that the ’494 Patent cannot be implemented to provide the disclosed benefits when installed on an
`intermediate network, or otherwise not able to identify new viruses by extracting file operations. Thus,
`both benefits from the Sophos Order still stand.
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`B.
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`Claim 10 Has Repeatedly Been Found Valid by the Patent Trial and Appeal
`Board (“PTAB”)
`As noted in Finjan’s opening brief, the PTAB has repeatedly found Claim 10 of the ‘494 Patent
`valid over all cited prior art. Finjan Br. at 7-8. Thus, the PTAB’s determinations, which have found
`Claim 10 valid six times, supports that the claim are inventive and patent eligible. Additionally,
`Juniper’s argument (Juniper Br. at 5-6) that the PTAB’s decision on Claim 1 in view of an alleged prior
`art reference (Trial Ex. 1070) is somehow relevant to § 101 analysis for Claim 10 is erroneous, because
`Claim 10 was determined valid and the standards are different. Juniper Br. at 5-6. Claim 10 was valid
`before the Sophos Order and remains valid so now, because the PTAB found Claim 10 valid over the
`art raised for claim 1. Symantec Corp. v. Finjan, Inc., Case IPR2015-01892, Paper 58 at 51 (P.T.A.B.
`Mar. 15, 2017) (“[w]e agree with Patent Owner that Swimmer does not teach or suggest either the
`‘Downloadable scanner’ or the ‘database manager’ recited in claim 10.”). Importantly, the PTAB’s
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`Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 4 of 6
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`decision for Claim 1 also cannot be legally be considered because the §§ 101 and 103 analyses are
`separate inquiries under Federal Circuit law, and § 101 inquiry requires “more than recognizing that
`each claim element, by itself, was known in the art.” Bascom Global Internet Servs., Inc. v. AT&T
`Mobility LLC, 827 F.3d 1341, 1349-50 (Fed. Cir. 2016).
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`II.
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`JUNIPER CANNOT SHOW CLAIM 10 WAS INVALID BY CLEAR AND
`CONVINCING EVIDENCE
`Juniper failed to meet the clear and convincing standard for invalidity. First, Juniper did not
`rebut that Claim 10 as a combination recites an inventive concept because Juniper’s sole argument is
`the legally irrelevant argument that “[t]he activities [the elements] perform are not arranged in an
`inventive way, but are instead arranged in the “only one order that makes sense.”” Juniper Br. at 2, 8.
`The inventive concept inquiry is not about how many ways claim elements can be arranged, instead it
`requires considering the elements as a whole to determine whether the claim is providing an inventive
`technique. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
`Next, Juniper also failed to meet the Federal Circuit’s requirement of going beyond what is “prior art”
`to establish what was actually “well-understood, routine, and conventional.” Berkheimer v. HP Inc.,
`881 F.3d 1360, 1369 (Fed. Cir. 2018). Dr. Rubin’s testimony failed because he only argued that
`individual components such as receiver, scanner, and database manager are disclosed in the prior art
`and then equated the teaching of a prior art to the requirement of “well-known” (Juniper Br. at 6-8).
`This again directly contradicts the Federal Circuit’s instruction. Bascom, 827 F.3d at 1349-50 (rejecting
`an analysis which “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.”). Aside from a few conclusory
`statements, Dr. Rubin did not establish how any of the alleged prior art references such as Trial Exhibits
`1552, 1070, and 1069 disclose the claimed Downloadable scanner or how it derives security profile data
`including a list of suspicious computer operations. In fact, the PTAB already found that the reference
`cited by Rubin does not teach Claim 10. Symantec Corp. v. Finjan, Inc., Case IPR2015-01892, Paper
`58 at 51 (P.T.A.B. Mar. 15, 2017). Trial Exs. 1069 and 1552 were also previously considered by the
`Patent Office and both explicitly support Finjan’s position, namely the conventional approach at the
`time was signature-based scanning. ’494 Patent at p. 2 (citing Trial Ex. 1552 (“Chen”)), p. 6 (citing
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`Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 5 of 6
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`Trial. Ex. 1069 (“Stang”)); Trial Ex. 1069 at 3 (“The traditional approach for dealing with removal was
`to 'hard code' the instructions for removal into the product: move the file pointer, copy bytes, then
`truncate the file”); Trial Ex. 1552 at 1:19-20 (“Viruses are commonly detected using signature scanning
`techniques.”).
`Juniper argument regarding the ’194 Patent also failed because the ’194 Patent at 5:42-45
`(Juniper Br. at 7) does not show that the scanner element as claimed is well-known, because it only
`states that the conventional parsing technique is one of the parsing techniques that can be used to
`decompose the code. Claim 10 does not simply claim a parsing technique, rather it is about analyzing a
`file to identify its behaviors (i.e. suspicious computer operations) for downloadable security profile data.
`See, e.g., ’194 Patent at 9:20-42 (“The code scanner 325 in step 720 registers the commands and
`command parameters into a format based on command class (e.g., file operations, network operations,
`registry operations, operating system operations, resource usage thresholds)”). Juniper’s argument that
`“using a database manager to store things in a database is ‘well known in the art”’ (Juniper Br. at 8) also
`failed because the claim is not about storing anything in a database. Rather, database manager solves a
`specific problem related to deriving DSP data (e.g. that it’s time consuming to perform on the fly),
`where such problem does not exist in the conventional system since the conventional system uses byte
`sequence matching which does not involve analyzing a file’s behaviors. Trial Tr. at 233:8-23
`(explaining signature-based scanning).
`Juniper cases such as buySAFE, Fitbit, Mortg. Grader, Zkey Invs., and Procter & Gamble
`should be ignored because they do not establish the state of the art of the ’494 Patent as they are for
`different patents and inventions, and from different time frames. If anything, the Court must adopt the
`Federal Circuit’s Blue Coat decision on parent of the ’494 Patent finding that the behavior-based
`scanning technique is non-abstract, as the Federal Circuit’s decision addresses similar subject matter
`with the same priority date as Claim 10. Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1302-06
`(Fed. Cir. 2018). Furthermore, since the behavior-based scanning technique is non-abstract as found by
`the Federal Circuit, the Court should end its analysis there and does not even need to look at Juniper’s
`evidence which only pertains to the inventive concept inquiry. Id., 879 F.3d at 1306 (Fed. Cir. 2018)
`(“The idea is non-abstract and there is no need to proceed to step two of Alice”).
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`Case 3:17-cv-05659-WHA Document 568 Filed 07/01/19 Page 6 of 6
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`Dated: July 1, 2019
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`Respectfully submitted,
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`
`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 REPLY RE PATENT ELIGIBILITY OF ’494 PATENT CASE NO.: 3:17-cv-05659-WHA
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