Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 1 of 8
`
`IRELL & MANELLA LLP
`Jonathan S. Kagan (SBN 166039)
`jkagan@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
`
`)
`
`RESPONSIVE BRIEF REGARDING
`Plaintiff,
`)
`INVALIDITY OF CLAIM 10 OF
`
`)
`U.S. PATENT NO. 8,677,494 UNDER
`vs.
`
`)
`35 U.S.C. § 101
`
`)
`JUNIPER NETWORKS, INC., a Delaware
`)
`Corporation,
`)
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`)
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`Defendant.
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE 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 569 Filed 07/01/19 Page 2 of 8
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`TABLE OF CONTENTS
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`Page
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`A.
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`B.
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`C.
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`Finjan’s Attempts To Equate Claim 10 To The ’844 Patent Are
`Misplaced. ............................................................................................................... 1
`Behavior-Based Scanning Was Well-Known, Routine And
`Conventional. .......................................................................................................... 2
`Juniper Is Not Conflating The Section 101 Analysis With
`Obviousness. ........................................................................................................... 4
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
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`- i -
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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 3 of 8
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`
`
`Cases
`
`TABLE OF AUTHORITIES
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`Page(s)
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`Berkheimer v. HP Inc.,
`881 F.3d 1360 ...............................................................................................................................4
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018) ............................................................................................1, 2, 3
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) ....................................................................................................4
`
`Procter & Gamble Co. v. QuantifiCare Inc.,
`288 F. Supp. 3d 1002 (N.D. Cal. 2017) .......................................................................................2
`
`Statutes
`
`35 U.S.C. § 101 ..............................................................................................................................1, 4
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`35 U.S.C. § 102 ..................................................................................................................................4
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`35 U.S.C. § 103 ..................................................................................................................................4
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- ii -
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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 4 of 8
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`Finjan’s ill-fated effort to resuscitate Claim 10 is based upon the argument that Claim 10
`implements a new “behavior-based scanning technique.” Even a cursory reading of the claim,
`however, demonstrates that Claim 10 does not describe how to use “behavior-based” scanning to
`protect a user computer. Finjan’s effort to save Claim 10 by comparing it with patents that do
`implement “behavior-based” protection is thus misplaced. Moreover, even if Claim 10 did
`incorporate “behavior-based” protection, clear and convincing evidence from this case
`demonstrates that this purportedly inventive concept was old hat by 1996.
`A.
`Finjan’s Attempts To Equate Claim 10 To The ’844 Patent Are Misplaced.
`
`Finjan argues that “[t]he elements of Claim 10 describe a behavior-based scanning
`technique” to address problems in “Downloadables,” and purportedly “describes exactly how to
`protect against them.” Dkt. 535 at 5:6-8 (emphasis added). Finjan then repeatedly cites the Federal
`Circuit’s analysis of U.S. Patent No. 6,154,844 in Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299
`(Fed. Cir. 2018) as if it were dispositive of the § 101 analysis for any patent that supposedly covers
`“behavior-based” malware analysis. See, e.g., Dkt. 565 at 3:4-5; 8:10-11. This attempt to conflate
`Claim 10 with claims in an entirely different patent is mistaken.
`First, although Finjan argues that “Claim 10 provides the same benefits as those recognized
`by the Federal Circuit as patent eligible,” Dkt. 565 at 8:14-15, it provides no factual support for this
`argument (or any other similarity between the ’494 and ’844 patents). Indeed, contrary to Finjan’s
`allegations, Dkt. 565 at 3:5-6, the ’844 patent is not a parent to the ’494 patent, see, e.g., IPR2017-
`02154, Paper 8 at 10-11 (claims in ’844 patent have a November 6, 1997 priority date, after the
`November 8, 1996 claimed priority date for the ’494 patent).
`In fact, Blue Coat actually undermines Finjan’s argument, as it turns upon differences
`between Claim 10 and the ’844 patent. While the ’844 Patent claims steps after determining whether
`or not “suspicious code” may actually be computer virus, Claim 10 recites only a system for
`generating and storing a list of operations that may or may not be indicative of a virus. Dkt. 564 at
`5:18-26 (reciting a system for receiving a “Downloadable” and deriving/storing a list of “suspicious”
`operations in a database). Claim 10 does not recite doing anything with this list, much less how to
`use the list to detect a virus (via a “behavior-based” process or otherwise). Dkt. 189 (MSJ Order)
`
`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- 1 -
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`

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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 5 of 8
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`at 5-8 (the “list of suspicious operations” must be compared against a separate “access control” list
`to decide whether to pass or fail a Downloadable, but “this important pass-fail step is not itself
`recited or reached in Claim 10”) (emphasis added). Claim 10 recites only “the familiar progression
`of acquiring and analyzing information of a desired type to extract results from that information,”
`without even purporting to describe how to extract those results, and is not inventive. Procter &
`Gamble Co. v. QuantifiCare Inc., 288 F. Supp. 3d 1002, 1027 (N.D. Cal. 2017).
`By contrast, the ’844 Patent generates a “security profile” that identifies suspicious code,
`which it then links “to the Downloadable before a web server makes the Downloadable available to
`web clients”—thus “attach[ing] . . . virus scan results to the downloadable in the form of a newly
`generated file.” Blue Coat, 879 F.3d at 1304 (emphasis added). The Federal Circuit found this
`approach was not abstract because it “allow[ed] access to be tailored for different users and ensures
`that threats are identified before a file reaches a user’s computer.” Id. at 1305. Because Claim 10
`(as this Court has already found) recites only the generation and storage of information, it does not
`and cannot describe how to generate virus scan results or use those results to allow or deny access
`to user computers. Dkt. 189 at 19:10-13.
`B.
`Behavior-Based Scanning Was Well-Known, Routine And Conventional.
`
`Even if Claim 10 actually implemented “behavior-based” scanning—which it does not—
`Finjan’s contention that behavior-based malware analysis was new in the computer security field as
`of 1996 is contrary to the evidentiary record in this case. As one example, Juniper introduced a
`research paper by David J. Stang published in 1995 that states that “[t]he idea of behavior blocking
`is not entirely new,” and identifies several behavior blockers available in the market as of 1995. Tr.
`Ex. 1069-6 (“Smart behavior blocking has been in use worldwide for several years.”). Stang also
`describes the use of “heuristic” scanning, (i.e., a form of static analysis that looks for suspicious
`operations or code patterns and can detect unknown viruses), and notes that products employing
`heuristic analysis had been around for years. Id. at 9 (“Products able to do heuristic analysis of
`static code (i.e. a file or sector which was stored on a drive) and conclude whether or not the code
`contained a virus have been around for years.”). Indeed, Morton Swimmer’s 1995 research paper
`confirms in the “Current State of the Art” section that heuristics were already being used to detect
`
`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- 2 -
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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 6 of 8
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`unknown viruses by 1995: “The next shift many scanners are presently experiencing is away from
`known virus only detection to detection of unknown viruses. The method of choice is heuristics.”
`Tr. Ex. 1070-4. The evidentiary record therefore clearly and convincingly demonstrates that
`behavior-based malware analysis was well-known, routine and conventional before 1996. There is
`no evidence that this evidence was in the record or considered by the Sophos or Blue Coat courts
`that previously addressed the ’494 patent.
`Finjan attempts to rebut this evidence by relying on the testimony of its expert, Dr. Bims,
`claiming that he opined that Finjan realized that older “signature-based” malware detection was not
`as effective as the “behavior-based” scanning it claims is practiced by Claim 10. See, e.g., Dkt. 565
`at 1:9-21 (citing Dr. Bims to support its narrative about Finjan’s alleged contributions to the field).
`But Dr. Bims said no such things about Finjan or Claim 10 of the ’494 Patent. Indeed, although
`Dr. Bims has testified for Finjan on at least six prior occasions, he admitted that he did not express
`any opinion as to whether Finjan had invented anything, much less whether Finjan had invented
`“behavior-based” scanning. Trial Tr. at 239:20-24, 240:20-241:23.
`Finjan also points to reports that claim that Finjan invented “proactive content behavior
`inspection” (Tr. Ex. 107 at FINJAN-JN 437130), call Finjan a “pioneer in proactive content behavior
`inspection” (Tr. Ex. 126 at FINJAN-JN 009791), and generally describe the market for malware
`analysis products in the mid-2000’s as focused upon signature-based products (Tr. Exs. 105 and
`125). But again, Finjan’s own expert Dr. Bims was unable to testify as to whether Finjan invented
`“behavior-based” scanning. Trial Tr. at 240:20-241:23. Moreover, the documents—even if true—
`are irrelevant. There is no evidence that connects them to the technology claimed in Claim 10.
`These documents do not mention the ’494 Patent, and the only Finjan product identified by Finjan
`as practicing the ’494 Patent was released in 2016—years after these reports issued. Trial Tr. at
`924:1-13 (Finjan argued: “There’s no evidence in this case that other than [the Finjan Mobile Vital
`Security] product, no other product practices ’494 other than Juniper’s infringing product.”). A
`marketing research company’s statement about Finjan’s technology in the early 2000s is irrelevant
`hearsay that says nothing about what a person of skill in the art would have considered to be known,
`routine, and conventional to a person of skill in the art as of 1996.
`
`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- 3 -
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`

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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 7 of 8
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`C.
`
`Juniper Is Not Conflating The Section 101 Analysis With Obviousness.
`
`Finjan claims that Juniper’s § 101 defense should be rejected because it was a “de facto
`obviousness case.” Dkt. 565 at 6. This is simply not true. Juniper is not pointing to Stang or
`Swimmer (or other documents introduced at trial) to argue that each of the individual elements of
`Claim 10 existed in the prior art and were thus obvious (although this is true). Rather, these
`documents rebut Finjan’s contention that “behavior-based” analysis was “new” in 1996. They also
`provide evidence that each of the components of Claim 10 (i.e., the receiver, scanner, and database
`manager) were being used in a traditional and conventional way. See, e.g., Dkt. 564 at 6:22-7:23.
`And, while § 101 analysis is distinct from invalidity analysis under §§ 102-103, there can be overlap
`between these analyses. Berkheimer v. HP Inc., 881 F.3d 1360, 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”). Thus, there can be no question that—while it is not
`determinative of the § 101 inquiry—the PTAB’s ruling that all of the functional elements of Claim
`10 that overlap with Claim 1 existed in the prior art is relevant to the § 101 analysis in this case.
`Finjan’s related contention that “Juniper did not present evidence that elements of Claim 10,
`taken as a combination” were well-understood, routine, and conventional is also wrong. Dkt. 565
`at 7. As detailed in Juniper’s initial brief, Dr. Rubin provided compelling testimony on this issue
`that was supported by documentary evidence. Dkt. 564 at 8:14-24. To the contrary, Finjan’s expert
`made only conclusory statements that were directly contradicted by the documentary evidence in
`the record. See, e.g., Dkt. 565 at 7 (citing Trial Tr. at 876:12-8:77:18 where Dr. Orso testifies that
`all of the papers identified by Dr. Rubin were “talking about the standard virus detectors” that “were
`signature based” despite the fact that several of the papers specifically discuss the detection of
`unknown viruses using heuristics and behavior blocking, as detailed above).
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`IRELL & MANELLA LLP
`A Registered Limited Liability
`Law Partnership Including
`Professional Corporations
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- 4 -
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`Case 3:17-cv-05659-WHA Document 569 Filed 07/01/19 Page 8 of 8
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`
`
`Dated: July 1, 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
`
`10705656
`
`
`RESPONSIVE BRIEF REGARDING INVALIDITY
`OF CLAIM 10 OF U.S. PATENT NO. 8,677,494
`(Case No. 3:17-cv-05659-WHA)
`
`- 5 -
`
`