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`EXHIBIT D
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`EXHIBIT D
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`EXHIBIT D
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`EXHIBIT D
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`Trials@uspto. gov
`571-272-7822
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`Paper 57
`Entered: January 24, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ESET, LLC and ESET spol s.r.o.,
`Petitioner,
`
`V.
`
`FINJAN, INC,
`Patent Owner.
`
`Case IPR2017-01738
`
`Patent 7,975,305 B2
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`
`ZHENYU YANG, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`FINJAN-QUALYS 318370
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`IPR2017-01738
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`Patent 7,975,305 B2
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`In response to a Petition (Paper 2, “Pet.”) filed by ESET, LLC, and
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`ESET spol s.r.o. (collectively, “Petitioner”), we instituted an inter partes
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`review of claims 1—25 of US. Patent No. 7,975,305 B2 (“the ’305 patent”).
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`Paper 10 (“Dec”); Paper 19. During the trial, Finjan, Inc. (“Patent Owner”)
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`filed a Response (Paper 311, “PO Resp”) to which Petitioner filed a Reply
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`(Paper 37, “Reply”) and Patent Owner filed a Sur-Reply (Paper 49, “Sur-
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`Reply”).2 Both parties filed Motions to Exclude evidence filed by the other
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`side, with subsequent responsive briefing. Papers 46, 47, 51, 52, 54, 55. An
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`oral hearing was held with the parties, and a copy of the transcript was
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`entered into the record. Paper 56 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
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`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
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`claims on which we instituted trial. Based on the record before us, Petitioner
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`has not shown, by a preponderance of the evidence, that any claim of the
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`’305 patent is unpatentable.
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`1 Paper 31 is a redacted version of Patent Owner’s complete Response, filed
`with restricted access as Paper 30. We do not rely on the redacted portions
`of the Response in this Decision, and therefore cite to the publicly available
`version.
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`2 Filing of the Sur-Reply was authorized in accordance with the Board’s
`2018 Revised Trial Practice Guide. Paper 44. We denied Petitioner’s
`request to file a Sur-Sur-Reply because the “filing of a Sur-Sur—Reply is not
`contemplated by the revisions to the Practice Guide.” Paper 50, 3.
`2
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`FINJAN-QUALYS 318371
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`IPR2017-Ol738
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`Patent 7,975,305 B2
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`1. BACKGROUND
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`A. The ’305 Patent
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`1 . Disclosure
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`The ’305 patent relates to network security, including seaming of
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`mobile content for exploits through “behavioral analysis,” in which
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`incoming content is analyzed in terms of its programmatic behavior—“[a]s
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`distinct from prior art approaches that search for byte patterns.” Ex. 1001,
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`1:24—25, 1:64—67. “Exploits” are “[p]ortions of code that are malicious”;
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`the ’305 patent provides an example that uses JavaScript to create a window
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`that fills an entire screen, leaving the user unable to access any underlying
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`windows.
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`Id. at 5:65—63.
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`Figure 2 of the ’305 patent is reproduced below.
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`mm\
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`
`
`M
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`290
`
`31“
`
`
`
`magnum
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`GENDER
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`
`
`
`
`m \‘
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`imam
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`Amman
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`l’ m
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`PARSE TREE
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`
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`i'fiiRSER RULES
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`ANALYZER RULES
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`
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`270
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`I
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`SuEanSWNER
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`
`
`l
`}
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`PAWERNMATCHINGENGINE
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`pm
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`FIG. 2
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`3
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`FINJAN-QUALYS 318372
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`IPR2017-Ol738
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`Figure 2 provides a simplified block diagram of an adaptive rule-based
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`content scanner system, which is “able to adapt itself dynamically to scan a
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`specific type of content, such as inter alia JavaScript, VB Script, URI, URL
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`and HTML.” Id. at 6:14—17, 2:10—14. The ’305 patent explains that the
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`adaptive rule-based scanner of Figure 2 “is preferably designed as a generic
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`architecture that is language-independent, and is customized for a specific
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`language through use of a set of language-specific rules.” Id. at 8:4346. In
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`addition, “security Violations, referred to as exploits, are described using a
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`generic syntax, which is also language-independent.” Id. at 8:54—56.
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`Adaptive rule-based scanner 200 includes three main components:
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`(1) tokenizer 210, which recognizes and identifies constructs (i.e., “tokens”)
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`within a byte source code; (2) parser 220, which controls the process of
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`seaming incoming content, such as with a parse tree data structure that
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`represents the incoming content; and (3) analyzer 230, which checks for
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`exploits by searching for specific patterns of content that indicate an exploit.
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`Id. at 9:9—14, 10:45—55, 2:54—57. Sub-scanner 270 is another adaptive rule-
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`based scanner used to scan a subsection of input being processed by scanner
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`200.
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`Id. at 12:4344. Pattern matching engine 260 performs pattern
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`matching for both parser 220 and analyzer 230, such as by accepting an
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`input list of regular-expression elements describing a pattern of interest and
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`an input list of nodes from the parse tree to be matched against the pattern of
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`interest, and outputting a Boolean flag indicating whether a pattern is
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`matched.
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`Id. at 13:13—29.
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`FINJAN-QUALYS 318373
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`IPR2017-Ol738
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`Patent 7,975,305 B2
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`Figure 9 of the ’408 patent is reproduced below.
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`RULfiS UPDNIE m DESKTOP
`
`To BROWSER. MIL CLIENT AND
`OTHER IMEMETAPPLEATIOMS
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`FIG. 9
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`Figure 9 is a simplified block diagram that illustrates a desktop-computer
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`implementation of an adaptive rule-based content scanner. Id. at 19:26—30.
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`Network interface 910 receives TCP/IP content fiom the Internet, and
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`network traffic probe 920 passes incoming traffic to its destination, such as
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`to a browser, email client, or other Internet application. Id. at 19:30—38.
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`Network traffic probe 920 also “selectively diverts” incoming network
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`traffic to adaptive rule-based scanner 930, which scans and analyzes content
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`to detect the presence of exploits. Id. at 19:38—42.
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`In the context of
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`Figure 1 (not reproduced here), the Specification of the ’305 patent explains
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`that a pre-scanner uses “conventional signature technology” to scan content,
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`and can thereby “quickly determine if content is innocuous, but over-blocks
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`on the safe side.” Id. at 8:5—8. The pre-scanner, thus, is “useful for
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`recognizing content that poses no security threat,” with the adaptive rule-
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`based scanner “perform[ing] much more intensive processing” for “further
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`diagnosis” on content that is “potentially malicious.” Id. at 8:9—21.
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`5
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`FINJAN-QUALYS 318374
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`IPR2017-01738
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`Patent 7,975,305 B2
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`According to the ’305 patent, “[i]t is expected that pre-scanner 150 filters
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`90% of incoming content, and that only 10% of the content requires
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`extensive scanning by [the adaptive rule-based scanner].” Id. at 8:23—25.
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`Database 940 is maintained with coded exploit rules “in the form of
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`deterministic or non-deterministic finite automata, which perform pattern
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`matches appropriate to exploits under consideration.” Id. at 19:42—46. If
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`adaptive rule-based scanner 930 does not detect a match with a potential
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`exploit, the content is routed to its destination.
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`Id. at 19:4648. Conversely,
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`if adaptive rule-based scanner detects the presence of potential exploits, the
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`suspicious content is passed to content blocker 950, which removes or
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`inoculates the content.
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`Id. at 19:48—5 1. Rules update manager 960
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`periodically receives modified and new rules over the Internet, and updates
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`database 940 to keep database 940 current.
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`Id. at 19:52—5 5 .
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`2. Illustrative Claim
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`Independent claim 1 of the ’305 patent, reproduced below, recites a
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`“security system for scanning content within a computer,” and is illustrative
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`of the claims at issue, with independent claims 13 and 25 respectively
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`reciting corresponding methods and computer-readable storage media. See
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`Pet. 6—ll (tables provided by Petitioner illustrating correspondence of
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`limitations in these claims).
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`1. A security system for scanning content within a computer,
`comprising:
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`FINJAN-QUALYS 318375
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`IPR2017-01738
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`Patent 7,975,305 B2
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`for
`a network interface, housed within a computer,
`receiving incoming content from the Internet on its destination to
`an Internet application running on the computer;
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`a database of parser and analyzer rules corresponding to
`computer exploits, stored within the computer, computer exploits
`being portions of program code that are malicious, wherein the
`parser and analyzer rules describe computer exploits as patterns
`of types of tokens, tokens being program code constructs, and
`types of tokens comprising a punctuation type, an identifier type
`and a function type;
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`a rule-based content scanner that communicates with said
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`database of parser and analyzer rules, operatively coupled with
`said network interface, for scanning incoming content received
`by said network interface to recognize the presence of potential
`computer exploits therewithin;
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`a network traffic probe, operatively coupled to said
`network interface and to said rule-based content scanner, for
`selectively diverting incoming content
`from its
`intended
`destination to said rule-based content scanner; and
`
`a rule update manager that communicates with said
`database of parser and analyzer rules, for updating said database
`of parser and analyzer rules periodically to incorporate new
`parser and analyzer rules that are made available.
`
`Ex. 1001, 29:44—30:47.
`
`B. Evidence
`
`Petitioner relies on the following references.
`
`Chandnani
`Freund
`
`US 7,636,945 B2
`US 5,987,611
`
`Dec. 22, 2009
`Nov. 16, 1999
`
`Ex. 1013
`Ex. 1014
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`FINJAN-QUALYS 318376
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`Patent 7,975,305 B2
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`In addition, Petitioner provides Declarations by Eugene H. Spafford,
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`PhD. Exs. 1006, 1032. Dr. Spafford was cross-examined by Patent Owner,
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`and a transcript of his deposition entered into the record. EX. 2011. Patent
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`Owner provides Declarations of Nenad Medvidovic, Ph.D., and Phil
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`Hartstein. Exs. 2008, 2012. Dr. Medvidovic and Mr. Hartstein were cross-
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`examined by Petitioner, and transcripts of their depositions entered into the
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`record. Exs. 1033, 1034.
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`C. Instituted Grounds of Unpatentability
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`The Petition challenges claims 1—25 over Chandnani alone and over
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`Freund in combination with Chandnani. Pet. 18—62.
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`In the Institution
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`Decision, we identified an inconsistency in the Petition’s presentation “in
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`that it characterizes all of its challenges over Chandnani alone as anticipation
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`challenges .
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`.
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`. but presents arguments that are clearly directed to
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`obviousness challenges for claims 4—12 and 16—24.” Dec. 8 (citing Pet. 18,
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`37411). For example, in addressing claims 4 and 16, the Petition asserts that
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`a modification to Chandnani “would have been obvious or obvious to try,”
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`and similar assertions are made with respect to claims 5—12 and 17—24.
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`Pet. 37, 39 (“a person of ordinary skill would have found it obvious .
`
`. .”), 40
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`(same).
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`In the Institution Decision, we found Petitioner’s intent sufficiently
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`clear, and treated the challenges to claims 4—12 and 16—24 as obviousness
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`challenges over Chandnani alone. Dec. 8.
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`With respect to those challenges, Patent Owner argues that “the
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`Supreme Court foreclosed the type of flexibility exercised by the Board in
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`its Institution Decision.” PO Resp. 27 (citing SAS Institute, Inc. v. Iancu,
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`138 S. Ct. 1348, 1356 (2018) (“Nothing suggests the Director enjoys a
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`license to depart fiom the petition and institute a dzfierent inter partes review
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`of his own design.”)). We do not reach this argument. As we explain
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`below, we find that Chandnani does not disclose a key limitation of the
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`independent claims, so that the Chandnani-based challenges of claims 4—12
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`and 16—24 fail regardless of whether they are treated as anticipation or
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`obviousness challenges.
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`Our original Institution Decision denied institution of the challenge to
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`claims 1—25 for obviousness over the combination of Freund and Chandnani
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`because “Freund was considered extensively by the Office during
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`prosecution, including no fewer than five Office Actions in which the
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`Examiner and Applicant negotiated the scope of the claims in light of the
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`teachings of Freund.” Dec. 25.
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`In light of SAS Institute’s holding that a
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`final written decision under 35 U.S.C. § 318(a) must decide the patentability
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`of all claims challenged in a petition for inter partes review, we notified the
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`parties that “we modify our Institution Decision to institute on all of the
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`challenged claims and all of the grounds presented in the Petition.” Paper
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`19, 2.
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`Patent Owner contested that decision, requesting, in part, “that the
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`proceedings be terminated pursuant to 35 U.S.C. § 325(d) because as
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`recognized in the Original Institution Decision and the Modified Institution
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`Decision, the Petition presented ‘the same or substantially the same prior art
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`or arguments previously were presented to the Office. ’” Paper 21, 10 (citing
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`Dec. 25—26; Paper 19, 3). We denied that request because “we have been
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`instructed that the Office SAS Guidance is to be interpreted with the weight
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`of Office policy as precluding termination of a partially instituted
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`proceeding in response to SAS Institute.” Paper 28, 10. Accordingly, we
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`address the combination of Freund and Chandnani below.
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`D. Real Parties in Interest and Related Proceedings
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`The parties identify only themselves as real parties in interest. Pet. 1;
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`Paper 3, l.
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`The ’305 patent is asserted by Patent Owner against Petitioner in Civil
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`Action No. 3:17-cv-00183-CAB-BGS (S.D. Cal). Pet. 1; Paper 3, l.
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`The ’305 patent is also the subject of Reexamination Control No.
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`90/013,660, and the Board’s decision holding claims 1, 2, 5, and 13
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`unpatentable is currently on appeal to the Federal Circuit. Pet. 1; Paper 3, 1;
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`Ex parte Finjan, Inc., Appeal No. 2017-010477 (PTAB July 2, 2018).
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`II. MOTIONS
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`A. Motion for Entry of Default Protective Order and to Seal
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`Patent Owner moves (1) for entry of the Board’ s Default Protective
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`Order, filed by Patent Owner as Exhibit 2026, and (2) to seal portions of its
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`Response and portions of Mr. Hartstein’s Declaration, filed as Exhibit 2012.
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`Paper 32, 1. The Motion asserts that portions of these documents
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`“[c]ontain[] highly confidential information regarding licensing practices.”
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`Id.
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`In particular, Patent Owner asserts that “information regarding certain
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`licenses, and the development efforts and strategies at Finjan, would allow
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`competitors to access information that would significantly harm Finj an’s
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`competitive position in the marketplace.” Id. at 3.
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`Petitioner has not opposed the Motion. Patent Owner indicates that it
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`“conferred with Petitioner regarding the scope of the Default Protective
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`Order,” and that “Petitioner does not object to entry of the Default Protective
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`Order.” Id. at 4.
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`Except as ordered otherwise, proceedings before the Board are
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`available to the public. The Board’s standards for granting motions to seal
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`are discussed in Garmin International v. Cuozzo Speed Technologies, LLC,
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`Case IPR2012-OOOOl, slip op. (PTAB March 14, 2013) (Paper 34). In
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`summary, there is a strong public policy for making all information covered
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`in inter partes review proceedings open to the public. The standard for
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`granting a motion to seal is “good cause.” 37 C.F.R. § 42.54. The moving
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`party bears the burden of showing that the relief requested should be
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`granted. 37 C.F.R. § 42.20(c). This includes showing that the information
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`is truly confidential, and that such confidentiality outweighs the strong
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`public interest in having an open record. A motion to seal is required to
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`include a certification that the moving party has in good faith conferred, or
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`attempted to confer, with the opposing party in an effort to come to an
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`agreement on the scope of the protection sought. Garmin at 3.
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`Patent Owner makes a sufficient showing with respect to each of these
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`factors, and the amount of information sought to be sealed is appropriately
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`limited. We accordingly grant the motion.
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`B. Petitioner’s Motion to Exclude Evidence
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`Petitioner filed a Motion to Exclude Exhibits 2008—2010 and
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`2012—2025, as well as “those portions of the Patent Owner’s Response
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`(Paper 30) that rely on the foregoing exhibits.” Paper 46, 1. These include
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`the Declarations of Dr. Medvidovic and Mr. Hartstein. Exs. 2008, 2012.
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`With respect to these Declarations, Petitioner agreed at the oral hearing that,
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`rather than arguing to exclude the testimony, it should “really be arguing for
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`limited weight.” Tr. 37 :25—38:5. We consider the motion in that context.3
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`3 The objections underlying Petitioner’ s Motion to Exclude Evidence were
`not timely filed. 37 CPR. § 42.64(b)(l) (requiring filing of an objection
`“within five business days of service of evidence to which the objection is
`directed”); see Paper 46, 2 n.l (acknowledging filing of objections after
`more than five business days). Petitioner provides no legal support for its
`contention that service by Patent Owner late in the day “result[s] in de facto
`service” on the next day. See Paper 46, 2 n. 1. Petitioner alternatively
`contends that it should be accorded a one-day extension “[a]s an
`accommodation” because it agreed to a one-day extension for the filing of
`Patent Owner’s Response. Id.; see Tr. 39:6402 Although we encourage
`reciprocal courtesy among parties, we are not in a position to police the
`granting of such courtesy, particularly after the fact. Nevertheless, in the
`interest of a complete record, we address the merits of Petitioner’ s Motion.
`l2
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`First, with respect to Dr. Medvidovic’ s Declaration, Petitioner
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`contends that Dr. Medvidovic “lacks the knowledge and experience
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`necessary” to provide testimony regarding “how Chandnani and Freund
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`would have been understood by a person of ordinary skill in the art in
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`August 2004, when the application that matured as the ’305 patent was
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`filed.” Paper 46, 2—3. According to Petitioner, Dr. Medvidovic’s
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`experience after the 2004 filing date is “irrelevant.” Id. at 3—5 (Petitioner
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`highlighting that “[o]nly two of his graduated PhD students did so before
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`2004,” that no conferences chaired or co-chaired by Dr. Medvidovic were
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`prior to 2004, that Dr. Medvidovic edited only one journal prior to August
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`2004, that several books edited by Dr. Medvidovic are dated after August
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`2004, and discounting work performed in 2013—2015).
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`We disagree with such a characterization. Experience obtained after a
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`certain date may still usefully inform what a person of skill in the art would
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`have understood as of that date, and we discern insufficient reason to
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`discount it. See T. Rowe Price Investment Servs., Inc. v. Secure Access,
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`LLC, Case CBM2015-00027, slip op. at 21—22 (PTAB June 13, 2016)
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`(Paper 31) (“In holding that, to testify as an expert under FRE 702, one must
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`be qualified as an expert in the pertinent art, the Federal Circuit has not
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`placed temporal restrictions, such as requiring an expert be qualified in the
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`pertinent art at the time of the invention”) (citing Sandance, Inc. v. DeMonte
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`Fabricating Ltd., 550 F.3d 1356, 1363—64 (Fed. Cir. 2008)); US. Endoscopy
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`Group, Inc. v. CDX Diagnostics, Inc., Case IPR2014-00639, slip op. at 18
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`13
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`(PTAB Sept. 14, 2015) (Paper 27) (“A witness must provide testimony
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`about the level of skill in the art as of the critical date; however, the witness
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`need not have acquired that knowledge as of the critical date”).
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`Petitioner also attacks the pertinence of Dr. Medvidovic’ s experience
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`as insufficiently related to anti-virus or malware work.
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`Id. But as Patent
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`Owner emphasizes, Dr. Medvidovic has significant relevant experience that
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`includes tenured university positions, a position as Editor-in-Chief of IEEE
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`Transactions on Software Engineering, the supervision of seventeen
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`graduated doctoral students in the field of computer science, and the
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`publication of numerous refereed journal articles and book chapters in the
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`field of computer science. Ex. 2028, 5—63; Paper 52, 4—6. In addition, “Dr.
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`Medvidovic has been qualified as an expert in many district court litigations
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`concerning [Patent Owner’s] patents, including the ‘305 Patent.” Paper 52,
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`5—6 (Citing Finjan, Inc. v. Blue Coat Systems LLC, Case No. 5-15-cv-O3295,
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`Dkt. No. 505 at 898:20—25 (ND. Cal); Finjan, Inc. v. Sophos, Inc., Case
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`No. 3-14-cv-01197, Dkt. No. 364 at 760:12—15 (N.D. Cal.)).
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`According to Petitioner, Dr. Medvidovic “also demonstrated that his
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`opinions are unreliable by relying on hearsay third-party webpages from
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`2016.” Paper 46, 5. But expert witnesses are permitted to rely on hearsay
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`and other forms of inadmissible evidence “[i]f experts in the field would
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`reasonably rely on those kinds of facts or data in forming an opinion on the
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`subject.” Fed. R. Evid. 703.
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`14
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`FINJAN-QUALYS 318383
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 16 of 52
`Case 4:18-cv-O7229—YGR Document 132-5 Filed 11/05/20 Page 16 of 52
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`IPR2017-01738
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`We discern insufficient compelling reasons presented by Petitioner
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`not to accord due weight to the testimony of Dr. Medvidovic, and
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`accordingly deny the motion in this respect.
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`Second, with respect to Mr. Hartstein’ s Declaration and various
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`exhibits identified by Petitioner, we do not rely on such evidence in our
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`analysis. Petitioner’ s Motion is therefore moot with respect to such
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`evidence.
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`C. Patent Owner’s Motion to Exclude Evidence
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`Patent Owner moves to exclude the Declarations of Dr. Spafford (Exs.
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`1006, 1032) and the deposition testimony of its own declarants (Exs. 1033,
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`1034). Paper 47, 1. Patent Owner’s Motion is grounded in its contention
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`that “Petitioner’s Reply improperly introduced new arguments, including
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`new bases of invalidity, and evidence that are inadmissible under 37 C.F.R.
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`§ 42.61 and are properly subject to exclusion.” Id. (citing Belden Inc. v.
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`Berk—Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015)).
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`In addition, Patent
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`Owner contends that Dr. Spafford’s Declarations “should similarly be
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`excluded because his opinions are conclusory, unreliable and could have
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`been submitted earlier with its Petition.” Id. at 5. Accordingly, “Patent
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`Owner respectfully requests the Board exclude and not consider new
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`evidence introduced in the Reply because it was available at the time that
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`Petitioner filed its Petition.” Id. (citing Office Patent Trial Practice Guide,
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`15
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 17 of 52
`Case 4:18-cv-O7229-YGR Document 132-5 Filed 11/05/20 Page 17 of 52
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`Patent 7,975,305 B2
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`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); Scotts Co. v. Encap LLC, Case
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`IPR2013-00110, slip op. at 5—6 (PTAB June 24, 2014) (Paper 79)).
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`We exercise our discretion and decline to exclude either the Reply or
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`the evidence identified by Petitioner. Those materials include relevant
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`argument and evidence that bear on other issues in the proceeding.
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`Nevertheless, because we agree with Patent Owner that new arguments are
`
`introduced with respect to the combination of Freund and Chandnani, we
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`limit our consideration of those materials as we discuss more fully in our
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`analysis below. We are also insufficiently persuaded by Patent Owner’ s
`
`arguments that we should exclude the deposition testimony of its own
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`declarants. See Paper 47, 7 (arguing Petitioner’s reliance on deposition
`7)
`(L
`
`transcripts is “misleading and confusing,
`
`taken out of context,”
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`“inadmissible under FRE 402 and 403,” and “unfairly prejudicial”). Patent
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`Owner was afforded adequate opportunity to place its declarants’ cross-
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`examination testimony in context during the proceeding, including through
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`redirect examination and its authorized filing of a Sur-Reply.
`
`III. ANALYSIS
`
`A. Legal Principles
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
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`Karsten Mfg. Corp. v. Cleveland Golf C0., 242 F.3d 1376, 1383 (Fed. Cir.
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`16
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 18 of 52
`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 18 of 52
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`2001). While the elements must be arranged in the same way as is recited in
`
`the claim, “the reference need not satisfy an ipsissimis verbis test.” In re
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`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
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`832—33 (Fed. Cir. 1990). Identity of terminology between the anticipatory
`
`prior art reference and the claim is not required. Prior art references must be
`
`“considered together with the knowledge of one of ordinary skill in the
`
`pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting
`
`In re Samour, 571 F3,d 559, 562 (CCPA 1978).
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`
`the differences between the claimed subject matter and the prior art are
`
`“such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 US. 398,
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`406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations, including:
`
`(1) the scope and content of
`
`the prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`
`indicia of non-obviousness, i.e., secondary considerations. Graham v. John
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`Deere C0., 383 US. l, 17—18(1966).
`
`Additionally, the obviousness inquiry typically requires an analysis of
`
`“whether there was an apparent reason to combine the known elements in
`
`the fashion claimed by the patent at issue.” KSR, 550 US. at 418 (citing In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`
`l7
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 19 of 52
`Case 4:18-cv-O7229—YGR Document 132-5 Filed 11/05/20 Page 19 of 52
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
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`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deatschland KG
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`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`
`To prevail on its challenges, Petitioner must demonstrate by a
`
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
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`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`
`the burden from the onset to show with particularity why the patent it
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`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
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`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`
`partes review petitions to identify “with particularity .
`
`.
`
`. the evidence that
`
`supports the grounds for the challenge to each claim”)). This burden never
`
`shifts to Patent Owner. See Dynamic Drinkware LLC v. National Graphics,
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`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1326—27 (Fed. Cir. 2008)) (discussing the
`
`burden of proof in inter partes review). Furthermore, Petitioner does not
`
`satisfy its burden of proving obviousness by employing “mere conclusory
`
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
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`Cir. 2016).
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`B. Level of Skill in the Art
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`Neither party articulates a proposed level of skill in the art in its
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`papers, but their respective experts address the issue. EX. 1006 1111 20—21;
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`18
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 20 of 52
`Case 4:18-cv-O7229—YGR Document 132-5 Filed 11/05/20 Page 20 of 52
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`Ex. 2008 W 34—39. Petitioner’s expert, Dr. Spafford, asserts that a person of
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`ordinary skill in the art “would have been a person having at least a
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`bachelor-level degree in computer science and three years of experience in
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`the design and development of computer security/anti-virus software, or a
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`person with a Ph.D. in computer science and two-three years’ involvement
`
`in academic research relating to computer virus detection and computer
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`security.” Ex. 1006 1] 20. Patent Owner’s expert, Dr. Medvidovic, asserts
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`that such a person “would be someone with a bachelor’s degree in computer
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`science or related field, and either (1) two or more years of industry
`
`experience and/or (2) an advanced degree in computer science or related
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`field.” Ex. 2008 1] 36.
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`Our analysis does not depend on nuanced distinctions in the level of
`
`skill in the art, and we find the articulations by the two experts to be
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`generally similar. Moreover, Dr. Medvidovic specifically testifies that his
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`opinions “would be the same if rendered from the perspective of a person of
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`ordinary skill in the art set out by Dr. Spafford.” Id. 1] 39. Accordingly, we
`
`adopt the level of skill asserted by Dr. Spafford. We would, however, reach
`
`the same result under either formulation.
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`C. Claim Construction
`
`In an inter partes review proceeding based on a petition filed prior to
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`November 13, 2018, the Board interprets claims of an unexpired patent
`
`using the broadest reasonable construction in light of the specification of the
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`19
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`Case 4:18-cv-07229-YGR Document 132-5 Filed 11/05/20 Page 21 of 52
`Case 4:18-cv-07229—YGR Document 132-5 Filed 11/05/20 Page 21 of 52
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`patent in which they appear. See 37 C.F.R. § 42.100(b) (2016); Cuozzo
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`Speed Techs, LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016) (upholding the
`
`use of the broadest reasonable interpretation standard). Under the broadest
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`reasonable interpretation standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention. In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. Previously Construed Terms
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`Each of independent claims 1, 13, and 25 recites “a database of parser
`
`and analyzer rules corresponding to computer exploits, .
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`.
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`. wherein the
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`parser and analyzer rules describe computer exploits as patterns of types of
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`tokens, tokens being program code constructs, and types of tokens
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`comprising a punctuation type, an identifier type and a function type.”
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`Ex. 1001, 29:49—56, 31:19—26, 32:28—35. In the Institution Decision, we
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`provided preliminary constructions of the following terms that appear within
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`this recitat
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