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`EXHIBIT B
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`EXHIBIT B
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` §§E¥E§EE§ fiates Patient and $§as§emay§i fiffiee
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`ij‘irf of fife Cffieffimmciai Qfiigw
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`Document CodeWFEE
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`User @3541
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`Refund Accounting Datetfigr’t 5/2020
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`Effective Date
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`06/19/2020
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`Sale Item Reference Number Refund Total
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`90014535
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`$12,000.00
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`Document Number
`|20209EA38367807
`
`Fee Code Fee Code Description
`1812
`EX PARTE
`REEXAMINATION
`
`Amount Paid
`$12,000.00
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`Payment Method
`DA
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`Account Number
`195029
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`(1 .510(A)) NON-
`STREAMLINED
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` §§E¥E§EE§ fiates Patient and $§as§emay§i fiffiee
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`ij‘ire‘ of fife Cffieffimmciai Qfiigw
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`Document CodeWFEE
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`User @8641
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`Effective Date
`06/19/2020
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`Sale Accounting Date
`09/15/2020
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`Sale Item Reference Number
`90014535
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`Document Number
`|20209EA38367807
`
`Fee Code
`1812
`
`Fee Code Description
`EX PARTE REEXAMINATION
`(1 .510(A)) NON-STREAMLINED
`
`Amount Paid
`$12,000.00
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`Payment Method
`DA
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMNIERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`w
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`'I AND1%9
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`
`
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` \
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`90/014,535
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`06/19/2020
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`7975305
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`93436-0009
`
`3433
`
`Bey & Cotropia PLLC (Finjan Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, VA 23229
`
`FERRIS 111, FRED o
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`3992
`
`MAIL DATE
`
`09/ 1 0/2020
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`..................................................................................................................................................................................................................................................
`
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`POBox 1450
`Alexandna, VA 22313-1450
`wwwtusptotgov
`
`THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS
`
`Date: September 10, 2020
`
`EVERSHEDS SUTHERLAND (US) LLP
`
`999 PEACHTREE STREET, N.E.
`
`SUITE 2300
`
`ATLANTA, GA 30309
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. : 90014535
`
`PATENT NO. : 7975305
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above identified ex parte reexamination proceeding (37 CFR
`1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for
`filing a reply has passed, no submission on behalf of the ex parte reexamination
`requester will be acknowledged or considered (37 CFR 1.550(9)).
`
`

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`
`
`United States Patent and Trademark Office
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspt0.gov
`
`Bey & Cotropia PLLC (Finj an Inc.)
`Dawn-Marie Bey
`213 Bayly Court
`Richmond, Virginia 23229
`
`Eversheds Sutherland (US) LLP
`999 Peachtree Street, NE.
`Suite 2300
`
`Atlanta, Georgia 30309
`
`In re Rubin et a1.
`
`Ex Parte Reexamination Proceeding
`Control No. 90/014,53 5
`Deposited: June 19, 2020
`For: US. Patent No.: 7,975,305
`
`(For Patent Owner)
`
`(For Requester)
`
`:
`
`:
`:
`:
`:
`
`DECISION SUA SPONTE
`
`VACATING EX PARTE
`REEXAMINATION REQUEST
`FILING DATE AND DISMISSING
`PETITION AS MOOT
`
`This decision constitutes notice that, pursuant to 37 CFR 1.510(c), the filing date of
`June 19, 2020, which was assigned to the request for the above-captioned ex parte reexamination
`
`proceeding, is hereby vacated, because the request fails to comply with the requirement for a
`proper certification pursuant to 37 CFR 1.510(b)(6).
`
`This decision also addresses:
`
`0 Patent owner’s petition filed on June 29, 2020 and entitled “Petition to the Director of the
`USPTO under 37 CPR. 1.183 to Consider Pre-Institution Argument Under 35 U.S.C.
`§ 315(e)(1)” (patent owner’s June 29, 2020 petition), and
`
`o Requester’s paper filed on July 13, 2020 and entitled “Third Party Requester’s
`Opposition to Patent Owner’s Petition to Consider Pre-Institution Argument”, which is
`taken as an opposition paper (requester’s July 13, 2020 opposition).
`
`The ex parle reexamination request deposited on June 19, 2020 and assigned control no.
`90/014,53 5, as well as patent owner’s June 29, 2020 petition, requester’s July 13, 2020
`opposition, and the record as a whole, are before the Office of Patent Legal Administration for
`consideration.
`
`SUMMARY
`
`Requester’s certification pursuant to 37 CFR 1.510(b)(6), deposited with the request in the
`present reexamination proceeding, is improper. The requester is estopped under 35 U.S.C.
`
`

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`Ex Parle Reexamination Control No. 90/014,535
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`2
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`315(e)(1) from requesting reexamination of claims 3, 4, 7, 8, 10, 14-16, and 18-24 of US. Patent
`No. 7,975,305 on the grounds raised in the request.
`
`The request deposited on June 19, 2020 fails to comply with the requirement for a proper
`certification pursuant to 37 CFR 1.510(b)(6). For this reason, the filing date of June 19, 2020,
`which was assigned to the request for the present ex parte reexamination proceeding, is hereby
`vacated.
`
`All other papers of record which were issued by the Office in this proceeding, and the
`
`proceeding as a whole, are hereby vacated.
`
`Patent owner’s June 29, 2020 petition and requester’s July 13, 2020 opposition are dismissed as
`moot.
`
`All papers, including the request papers, all previously issued Office communications, and all
`other papers deposited by the parties in the present reexamination proceeding, including patent
`owner’s June 29, 2020 petition and requester’s July 13, 2020 opposition, will be expunged by
`marking the papers “closed” and “non-public,” and will not constitute part of the public record.
`
`A refund of the $12,000 reexamination filing fee will be made to the requester in due course.
`
`The present decision will remain open to the public to provide a record of the action being
`taken.
`
`STATUS OF THE CLAIMS
`
`Claims 1, 2, 5, and 13 of the ’305 patent have been cancelled by ex parte reexamination
`certificate, which issued on January 29, 2020, and which reflects the results of ex parle
`reexamination proceeding 90/013,660 (the ’660 reexamination proceeding).
`
`DECISION
`
`I. Requester’s Certification Pursuant to 37 CFR 1.150(b)(6) is Improper
`
`The requester, Eset, requests reexamination of claims 3, 4, 7, 8, 10, 14-16, and 18-24 of US.
`Patent No.: 7,975,305 (the ’305 patent) in the present request for reexamination. Requester’s
`certification pursuant to 37 CFR 1.510(b)(6), however, which was deposited with the present
`request as required by the rule, is improper for the reasons set forth below.
`
`A certification under 37 CFR 1.510(b)(6)1 is either proper or improper. If any part of the
`certification is improper, then the entire certification is improper. If the Office determines that
`
`1 The regulations governing ex parte reexamination do not require a requester to identify itself upon the filing of a
`request for reexamination. For this reason, one of the purposes of the requirement for a certification is to permit the
`requester, i.e., the real party in interest, to file its request anonymously. “The certification requirement of 37 CFR
`1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations when transacting business before the
`Office, are considered sufficient to ensure compliance with the inter partes review and post grant statutory estoppel
`
`

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`3
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`any part of requester’s certification pursuant to 37 CFR 1.5 10(b)(6) is improper, the Office will
`vacate the entire proceeding, including the filing date of the reexamination proceeding.
`
`37 CFR 1.510(b) provides, in pertinent part:
`
`Any request for reexamination must include the following parts:
`
`* *
`
`(6) A certification by the third party requester that the statutory estoppel provisions of
`35 U.S.C. 3 l5(e)(l) or 35 U.S.C. 325(e)(l) do not prohibit the requester from filing
`the ex parle reexamination request.
`
`In the present case, the record shows that the requester is estopped under 35 U.S.C. 3 l5(e)(l)
`from requesting reexamination of claims 3, 4, 7, 8, 10, 14-16, and 18-24 of the ’305 patent on the
`grounds raised in the request.
`
`35 U.S.C. 3l5(e)(l) provides:
`
`PROCEEDINGS BEFORE THE OFFICE—The petitioner in an inter partes review of
`a claim in a patent under this chapter that results in a final written decision under [35
`U.S.C.] 318(a), or the real party in interest or privy of the petitioner, may not request or
`maintain a proceeding before the Office with respect to that claim on any ground that
`the petitioner raised or reasonably could have raised during that inter partes review.
`
`Whether estoppel under 35 U.S.C. 3 l5(e)(l) applies to a claim requested to be reexamined on
`any of the grounds raised in an ex parte reexamination proceeding may be analyzed by
`determining: 2
`
`1. Whether the third party requester of the ex parle reexamination proceeding was a
`petitioner in the inter partes review, or was a real party in interest or a privy of the
`petitioner,
`
`2. Whether the claim(s) of the patent under inter partes review are also requested to be
`reexamined in the ex parte reexamination proceeding,
`
`3. Whether the inter partes review has resulted in a final written decision pursuant to
`35 U.S.C. 318(a),
`
`4. Whether the ground(s) raised in the ex parte reexamination proceeding are the same
`ground(s) that were raised or reasonably could have been raised by the requester
`during the inter partes review.
`
`requirements.” MPEP 2214. Thus, to permit a requester to file a request anonymously, the Office generally relies
`on requester’s certification under 37 CFR 1.510(b)(6), coupled with a party’s 37 CFR 11.18 certification obligations.
`
`2 The four elements set forth in this decision are found in the language of the statute, 35 U.S.C. 315(e).
`
`

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`4
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`A. The Record Sufficiently Shows that Element 1 Is Satisfied
`
`To satisfy element 1, the record must sufficiently show that the third party requester of the
`present reexamination proceeding was a petitioner in the inter partes review, or was a real party
`in interest or a privy of the petitioner.
`
`The record shows that the third party requester of the present reexamination proceeding, Eset,
`was the petitioner in 1PR2017-01738 (the ’ 1738 IPR). See, e.g., Eset, LLC andEset spol s.r.o v.
`Finjan, Inc, 1PR2017-0173 8, Paper No. 2 (PTAB July 4, 2017).
`
`Accordingly, the record shows that element 1 has been satisfied.
`
`B. The Record Sufficiently Shows that Element 2 Is Satisfied
`
`To satisfy element 2, the record must sufficiently show that the claims of a patent under inter
`partes review are also requested to be reexamined in the present reexamination proceeding. 3
`
`Claims 3, 4, 7, 8, 10, 14-16, and 18-24 of the ’305 patent are requested to be reexamined in the
`present reexamination proceeding.
`
`The record shows that the same claims, i.e., 3, 4, 7, 8, 10, 14-16, and 18-24 ofthe ’305 patent,
`were under review in the ’1738 IPR. See Eset, LLC and Eset spol s.r.o v. Finjan, Inc, 1PR2017-
`01738, Paper No. 57 (PTAB January 24, 2019).
`
`Accordingly, the record shows that element 2 has been satisfied.
`
`C. The Record Sufficiently Shows that Element 3 Is Satisfied
`
`To satisfy element 3, the record must sufficiently show that the inter partes review has resulted
`in a final written decision pursuant to 35 U.S.C. 318(a).
`
`The record shows that a final written decision pursuant to 35 U.S.C. 318(a) was rendered by the
`PTAB on January 24, 2019 in the ’1738 IPR, finding that petitioner failed to demonstrate, by a
`preponderance of the evidence, that claims 1-25 are unpatentable. Again see Eset, LLC and Eset
`spol s.r.o v. Finjan, Inc, 1PR2017-0173 8, Paper No. 57 (PTAB January 24, 2019).
`For this reason, the record shows that the inter partes review (the ’1738 IPR) has resulted in a
`final written decision pursuant to 35 U.S.C. 318(a) with respect to claims, 3, 4, 7, 8, 10, 14-16,
`and 18-24 of the ’305 patent.
`
`3 The Federal Circuit has specifically held that 35 U.S.C. 315(e)(1) applies on a claim-by-claim basis. See Credit
`Acceptance v. Westlake Servs., 859 F.3d 1044, 1052-53 (Fed. Cir. 2017), where the Federal Circuit explained
`(emphasis in italics in original):
`
`. applies on a claim-by-claim basis. It provides,
`.
`On its face, the relevant IPR estoppel statute, § 315(e)(1) .
`“[t] he petitioner in an inter partes review ofa claim in a patent .
`.
`. that results in a final written decision
`under section 318(a) .
`.
`. may not request or maintain a proceeding before the Office with respect to that
`claim .
`.
`35 U.S.C. § 315(e)(1) (emphasis added). There is no IPR estoppel with respect to a claim as to
`which no final written decision results.
`
`

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`5
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`Accordingly, the record shows that element 3 has been satisfied.
`
`D. The Record Sufficiently Shows that Element 4 Is Satisfied
`
`To satisfy element 4, the record must sufficiently show that the ground(s) raised in the
`reexamination proceeding are the same ground(s) that were raised or reasonably could have been
`raised by the requester during the inter partes review.
`
`1. Clarification of General Policy and Practice
`
`As an initial matter, the issue of what prior art reasonably could have been raised need not be
`further addressed if the record provides evidence, for example, that a reference was known to the
`requester at a time when it could have been raised in the inter partes review, such as, e. g., prior
`to the filing of the petition for inter partes review.
`If the record shows that a reference was
`known to the requester at the time of filing a petition for inter partes review, particularly in the
`context of the patent requested to be reviewed, then the reference reasonably could have been
`raised in the petition for inter partes review. Such evidence may include, for example, a copy of
`any invalidity contentions filed in litigation involving the patent requested to be reviewed (and
`requested to be reexamined). Alternatively, the record may show, for example, that a reference
`appears on the face of the patent, and/or was applied in a rejection by the examiner, and/or was
`cited in the original prosecution of the application which became the patent requested to be
`reviewed (and requested to be reexamined). A requester is presumed to have been aware of such
`a reference at the time of filing a petition for inter partes review of the patent.
`
`The issue of what prior art reasonably could have been raised in an earlier inter partes review,
`however, is not limited to the actual knowledge of the requester. The legislative history of the
`America Invents Act (AIA) defines grounds which “reasonably could have been raised” as
`“prior art which a skilled searcher conducting a diligent search reasonably could have been
`expected to discover” (emphasis added in bold).4 See also IBM Corp. v. Intellectual Ventures 1]
`LLC, lPR2014-Ol465, Paper No. 32, page 6 (PTAB November 6, 2015), in which the PTAB
`stated (emphasis in bold added):
`
`. the legislative history does not limit “what reasonably could have been raised” to art
`.
`.
`which Petitioner, itself, was aware, but describes what reasonably could have been
`raised as more broadly including “prior art which a skilled searcher conducting a
`diligent search reasonably could have been expected to discover.”
`
`In view of the number of commercial databases available to the public, most patents and printed
`publications, particularly US. patents and US. patent application publications, may, in general,
`be expected to be discovered by a reasonably diligent search. The record may show, for
`example, that the prior art may reasonably have been expected to be discovered by searching, for
`example, publicly available databases using keywords or keyword combinations from the claims
`and/or specification of the patent requested to be reviewed (and requested to be reexamined).
`See In re Lister, 583 F.3d 1307, 1318-1319 (Fed. Cir. 2009) (“A reasonably diligent researcher
`
`4 157 Cong. Rec. $1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`
`

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`6
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`with access to a database that permits the searching of titles by keyword would be able to attempt
`several searches using a variety of keyword combinations”).
`
`In fact, the legislative history of 35 U.S.C. 315(e) specifically states that the estoppel provisions
`set forth in the statute eflectively bar a petitioner in an inter partes review from subsequently
`requesting an ex parte reexamination of the same patent claim (emphasis in bold added): 5
`
`Under paragraph (1) of sections 315(e) and 325(e), a party that uses inter partes or post-
`grant review is estopped from raising in a subsequent PTO proceeding any issue that he
`raised or reasonably could have raised in the post-grant or inter partes review. This
`effectively bars such a party or his real parties in interest or privies from later using
`inter partes review or ex parte reexamination against the same patent, since the only
`issues that can be raised in an inter partes review or ex parte reexamination are
`those that could have been raised in the earlier post-grant or inter partes review.
`
`A requester may, however, provide evidence that a skilled searcher conducting a diligent search
`reasonably could not have been expected to discover the reference. The legislative history of the
`AIA distinguishes the meaning of the language “reasonably could have raised” from an
`interpretation which would have required a “scorched-earth search”:6
`
`The present bill also softens the could-have-raised estoppel that is applied by inter
`partes review against subsequent civil litigation by adding the modifier “reasonably.”
`It is possible that courts would have read this limitation into current law’s estoppel.
`Current law, however, is also amenable to the interpretation that litigants are estopped
`from raising any issue that it would have been physically possible to raise in the inter
`partes reexamination, even if only a scorched-earth search around the world would have
`uncovered the prior art in question. Adding the modifier “reasonably” ensures that the
`could-have-raised estoppel extends only to that prior art which a skilled searcher
`conducting a diligent search reasonably could have been expected to discover.
`
`The requester may show, for example, that a reference is an “obscure text[] unlikely to be
`discovered upon a reasonably diligent search of the relevant prior art.” See Praxair Distribution,
`Inc. et al. v. [NO Therapeutics, LLC, lPR2016-00781, Paper No. 10 (PTAB August 25, 2016),
`page 9.
`
`Furthermore, the statute does not require that the grounds that “could have been raised” must be
`the same combinations of references proposed in the request. The legislative history supports the
`broader reading that the estoppel is not so limited. If a reference reasonably could have been
`expected to be discovered by a “skilled searcher conducting a diligent search” at the time of
`filing the petition for inter partes review, then any grounds based on that reference, such as, e.g.,
`obviousness or anticipatory grounds, reasonably could have been raised by the requester during
`the inter partes review.
`
`5 157 Cong. Rec. $1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`6 157 Cong. Rec. $1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
`
`

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`Ex Parte Reexamination Control No. 90/014,535
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`7
`
`See also Shaw Indus. Grp. v. Automated Creel Sys, 817 F.3d 1293 (Fed. Cir. 2016) (Shaw)
`(where a petitioner challenges a claim based on a reference in a petition for inter partes review,
`and review of that claim is not instituted with respect to that reference, then that petitioner (or a
`real party in interest or a privy of that petitioner) is not estopped under 35 U.S.C. 315(e) from
`later challenging the same claim based on the same reference in another proceeding).
`In Shaw,
`the petitioner challenged certain claims with respect to several references. Institution with
`respect to those claims was denied with respect to one reference, and granted with respect to the
`remaining references (i.e., a partial institution).7 The effect of the Shaw holding, however, is
`now limited after the Supreme Court’s holding in SAS v. Iancu, 138 S.Ct. 1348 (2018) (SAS). In
`SAS, the Supreme Court held that once trial is instituted, a petitioner “is entitled to a final written
`decision addressing all of the claims it has challenged.” SAS at 1359.
`In light of SAS, the current
`policy of the PTAB is to “either (1) institute as to all claims challenged in the petition and on all
`grounds in the petition, or (2) institute on no claims and deny institution.”8 As a result, the
`PTAB no longer conducts partial institutions, such as the one at issue in Shaw.
`
`2. The Claims Reguested to be Reexamined
`
`Claims 3, 4, 7, 8, 10, 14-16, and 18-24 of the ’305 patent are requested to be reexamined in the
`present reexamination proceeding.
`
`3. The Prior Art Relied Upon in the Present Reguest
`
`0 US. Patent No. 8,140,660, issued March 20, 2012 to Wells et al. (Wells).
`
`0 US. Patent Application Publication No. 2005/0172338, published August 4, 2005, now
`US. Patent No. 7,707,634, issued April 27, 2010 to Sandu et al. (Sandu).
`
`0 US. Patent No. 5,987,611, issued November 16, 1999 to Gregor Freund (Freund).
`
`4. All of the References Relied Upon in the Present Reguest Either Were Raised
`0r Reasonably Could Have Been Raised in the ’1738 IPR
`
`The record shows that the Freund reference was specifically raised by the requester against the
`claims of the ’305 patent in the ’ 1738 IPR petition.9
`
`7 37 CFR 42.108(a) provides: “When instituting inter partes review, the Board may authorize the review to proceed
`on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim”
`(i.e., a partial institution). See also SAS at 1354.
`
`8See, Patent Trial and Appeal Board Consolidated Trial Practice Guide, November 2019, pages 5-6, citing SAS
`Institute Inc. v.1ancu, 138 S. Ct. 1348, 1359—60 (2018); PGS Geophysical/15 v. Iancu, 891 F.3d 1354, 1359—62
`(Fed. Cir. 2018); andAdidasAG v. Nike, Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018).
`
`9 See Eset, LLC and Eset Spol S.r.o v. Finjan, Inc., IPR2017-01738, Paper No. 2, page 41 (PTAB July 4, 2017). The
`record also shows that Freund was applied by the examiner in a rejection of the claims during prosecution of the
`’305 patent. See, e. g, the non-final Office action issued on September 5, 2008 in application serial no. 11/009,437.
`
`

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`8
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`Furthermore, the legislative history of the America Invents Act (AIA) defines what “reasonably
`could have raised” as “prior art which a skilled searcher conducting a diligent search reasonably
`could have been expected to discover.” 10 In the present case, however, there is no need to
`determine whether the Sandu and Wells references reasonably could have been discovered by a
`diligent search. The record shows that both Sandu and Wells were known to the requester at the
`time of the filing of the ’1738 IPR petition. In fact, the record shows that the Wells and Sandu
`references were specifically identified by the requester in the ’1738 IPR petition as having been
`previously raised against the claims of the ’305 patent in an ex parle reexamination proceeding,
`i.e., control no. 90/013,660 (the ’660 reexamination proceeding). 11 Furthermore, the Sandu
`reference (and, for that matter, the Freund reference) is cited on the face of the ’305 patent. The
`requester is presumed to be aware of any reference cited on the face of a patent that it requests to
`be reviewed.
`
`For all of these reasons, the record shows that all of the references relied upon in the present
`reexamination request either were raised or reasonably could have been raised in the ’1738 IPR.
`
`a. The Issue is Not Whether the Reguester Could Foresee That a Particular
`Claim Construction Would Be Later Adopted
`
`The requester points out that, at the time of filing the ’1738 IPR petition, the PTAB had not yet
`rendered its final decision in the ’660 reexamination proceeding. The requester states that the
`PTAB’s interpretation, in its final written decision, of the term “parser rules” as recited in the
`claims of the ’305 patent, differed from the examiner’s construction of the same claim term in
`the final rejection. The requester asserts that for this reason, the PTAB’s interpretation of this
`claim term was not available to the requester at the time of filing the petition in the ’1738 IPR.12
`Requester further asserts that the PTAB’s position in the ’660 reexamination proceeding “has
`since been affinned on appeal to the Federal Circuit and conclusively sets forth the scope and
`meaning of the claims, particularly as they relate to Sandu and Wells.”13 In other words, the
`requester is arguing that it could not have foreseen that a particular claim construction would be
`later adopted.14
`
`10See 157 Cong. Rec. Sl375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl):
`
`Adding the modifier “reasonably” ensures that could-have-raised estoppel extends only to that prior art
`which a skilled searcher conducting a diligent search reasonably could have been expected to discover.
`
`11 See Eset, LLC and Eset Spol s.r.o v. Finjan, Ina, IPR2017-01738, Paper No. 2, page 11 (PTAB July 4, 2017). The
`requester refers to Exhibit 1007 which accompanied the ’1738 IPR petition. Exhibit 1007 is a copy of the final
`rejection mailed in the ’660 reexamination proceeding. The ’660 reexamination proceeding was filed by a different
`requester. See also the August 24, 2016 final Office action applying Wells and Sandu to claims of the ’305 patent in
`the ’660 reexamination proceeding, which was available to the requester prior to filing the July 4, 2017 petition for
`inter partes review in the ’1738 IPR proceeding.
`
`12 See page 73 of the present request.
`13 Id.
`
`14The requester asserts that although the requester “previously initiated IPR20 17 -0 1738 that resulted in a final
`written decision, the estoppel provisions of 35 U.S.C. § 325(c)(1) [sic] do not apply because this current request is
`based on grounds that were not raised and reasonably could not have been raised during that inter partes review.”
`See page 72 of the present request. However, because the earlier proceeding was an inter partes review, not a post-
`grant review, the estoppel provisions of 35 U.S.C. 315(c)(1), not 35 U.S.C. 325(c)(1), specifically govern in the
`present case.
`
`

`

`Case 4:18-cv-07229-YGR Document 132-3 Filed 11/05/20 Page 14 of 19
`Case 4:18-cv-07229—YGR Document 132-3 Filed 11/05/20 Page 14 of 19
`
`Ex Parte Reexamination Control No. 90/014,535
`
`9
`
`The issue, however, is not whether the requester could foresee that a particular claim
`construction would be later adopted. Rather, the relevant issue is whether a reference was raised
`or reasonably could have been raised during the earlier inter partes review (in the present case,
`the ’ 1738 IPR). See, e. g., IBM Corp. v. Intellectual Ventures II LLC, IPR2014-001465, Paper
`No. 32, pages 6-7 (PTAB November 6, 2015) (“We are also not persuaded that Petitioner could
`not have reasonably raised [the reference] because Petitioner could not have anticipated that
`Patent Owner would make certain arguments in the earlier proceeding .
`.
`. our focus is on what a
`skilled searcher conducting a diligent search reasonably could have been expected to discover,
`not whether Petitioner could foresee that Patent Owner would make certain arguments in the
`earlier proceeding”) In the present case, it is not necessary to determine whether the references
`raised in the request reasonably could have been discovered by a skilled searcher conducting a
`diligent search, as discussed previously. The record shows that the Freund reference was raised
`against the claims of the ’305 patent in the ’1738 IPR, and that the requester was aware of the
`Wells and Sandu references at the time of filing the ’1738 IPR petition, as discussed
`previously. 15
`
`Furthermore, the issue is not whether the requester should have chosen to raise, as a litigation
`strategy, the Sandu and Wells references in the ’1738 IPR petition, in view of the examiner’s
`claim construction in the final rejection in the ’660 reexamination proceeding. The relevant issue
`is whether these references could have been raised in the ’1738 IPR. Pursuant to the legislative
`history of the AIA, grounds which the petitioner “reasonably could have raised” are defined as
`“prior art which a skilled searcher conducting a diligent search reasonably could have been
`expected to discover.” 16 The record shows that the requester had discovered the Wells and Sandu
`references at the time of filing the ’1738 IPR petition.
`In addition, the Freund reference was
`specifically raised by the requester in its challenge to the claims in the ’1738 IPR. For these
`reasons, the record shows that these references either were raised or reasonably could have been
`raised during the ’1738 IPR.17
`
`Requester relies on Boston Sci. Sctmed, Inc. v. Cook Grp., Inc., 809 Fed. Appx. 984 (Fed. Cir.
`2020) as recognizing that “‘any ground that the petitioner raised or reasonably could have raised
`during that inter partes review’ is not limited to patent and printed publications, but can also
`
`15 In any event, the record fails to show why the requester could not have anticipated that the PTAB might interpret
`the claim term as expressly defined in the specification of the patent, as was done by the PTAB in its decision in the
`’660 reexamination proceeding, particularly where, as here, the patent owner specifically argued that the claim term
`be interpreted as defined in the specification. See, e. g., pages 6-8 of patent owner’s response filed on October 24,
`2016, to the final rejection in the ’660 reexamination proceeding. The PTAB affirmed the examiner’s final rejection
`in any event, finding that “[w]ithout regard to whether our construction of “parser rules” differs from the Examiner’s
`construction, we are unpersuaded of error in the Examiner’s finding that ‘parser rules’ reads on Sandu’s routine
`token sets.” See the decision rendered by the PTAB on July 2, 2018 in the ’660 reexamination proceeding.
`
`16See 157 Cong. Rec. $1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl):
`
`Adding the modifier “reasonably” ensures that could-have-raised estoppel extends only to that prior art
`which a skilled searcher conducting a diligent search reasonably could have been expected to discover.
`
`17 There is nothing in the regulations that would have prevented the requester from raising Sandu and Wells in the
`’ 17 38 IPR petition, and from arguing a claim construction that differed from the claim construction adopted by an
`examiner in a different proceeding. This is particularly true where the requester is arguing that a claim term should
`be interpreted as specifically defined in the specification o