Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 1 of 8
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`Exhibit M
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`Exhibit M
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 2 of 8
`Trials@uspto.gov
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` Paper No. 11
`571-272-7822
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`Filed: April 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02155
`Patent 8,677,494 B2
`____________
`
`
`Before ZHENYU YANG, CHARLES J. BOUDREAU, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 3 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`undesirable, suspicious or other ‘malicious’ operations that might otherwise
`be effectuated by remotely operable code.” Ex. 1001, 2:51–56. “[R]emotely
`operable code that is protectable against can include,” for example,
`“downloadable application programs, Trojan horses and program code
`groupings, as well as software ‘components’, such as Java™ applets,
`ActiveX™ controls, JavaScript™/Visual Basic scripts, add-ins, etc., among
`others.” Id. at 2:59–64.
`
`C. Illustrative Claim
`Of the challenged claims, only claim 10, reproduced below, is
`independent.
`10. A system for managing Downloadables, comprising:
`a receiver for receiving an incoming Downloadable;
`a Downloadable scanner coupled with said receiver, for
`deriving security profile data for the Downloadable, including a
`list of suspicious computer operations that may be attempted by
`the Downloadable; and
`a database manager coupled with said Downloadable scanner,
`for storing the Downloadable security profile data in a database.
`
`Ex. 1001, 22:7–16.
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 4 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Claims
`10, 11, 14–16
`
`10, 11, 14–16
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`Basis
`§ 103
`
`References
`Shear1 and Kerchen2
`
`§ 103 Crawford 913 and the knowledge of
`a person of ordinary skill in the art
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`
`Pet. 24. Petitioner also relies on a Declaration of Dr. Paul Clark, filed as
`Exhibit 1003.
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`II. DISCUSSION
`A. Claim Construction
`Based on the ’494 patent’s claim of priority from U.S. Patent
`Application No. 08/790,097, filed January 29, 1997, the ’494 patent expired
`no later than January 29, 2017. See 35 U.S.C. § 154(a)(2). In an inter
`partes review, we construe claims of an expired patent according to the
`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc).
`
`
`1 US 6,157,721, issued Dec. 5, 2000 (filed Aug. 12, 1996) (Ex. 1004).
`2 Paul Kerchen et al., Static Analysis Virus Detection Tools for UNIX
`Systems, Proc. 13th Nat’l Computer Security Conf. 350 (1990) (Ex. 1019).
`3 R. Crawford et al., A Testbed for Malicious Code Detection: A Synthesis of
`Static and Dynamic Analysis Techniques, Proc. 14th Ann. Conf. Dep’t
`Energy Computer Security Group (1991) (Ex. 1011).
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 5 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`Under that standard, the words of a claim are generally given their “ordinary
`and customary meaning,” which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. See Phillips, 415 F.3d at 1312–13.
`Only those terms in controversy need to be construed, and only to the extent
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner contends that each of the claim terms in the challenged
`claims should be given its plain and ordinary meaning and that no specific
`construction of any term is required. Pet. 11. Petitioner nonetheless
`addresses the phrase “a list of suspicious computer operations,” as recited in
`independent claim 10, “in light of arguments that Patent Owner has made in
`previous proceedings.” Id. Patent Owner responds to Petitioner’s
`arguments concerning this phrase and additionally proposes that the term
`“database,” which also is recited in independent claim 10, should be
`construed. Prelim. Resp. 4–11.
`
`1. “a list of suspicious computer operations”
`Petitioner contends, in particular, that although neither the previous
`petitioners nor Patent Owner explicitly sought a construction of the phrase
`“a list of suspicious computer operations” in prior inter partes review
`proceedings, Patent Owner “implicitly sought a narrow claim construction in
`[IPR2015-01894] . . . by arguing that this element . . . excludes the
`identification of non-suspicious operations, code or functions in the DSP.”
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 6 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`knowledge of a person of ordinary skill in the art teaches or suggests a
`“database manager . . . for storing the Downloadable security profile data in
`a database.” Prelim. Resp. 47–49. We agree, in particular, that Petitioner
`has made no persuasive showing that the “elaborate data structure” of
`Crawford 91 is a “database” as that term has been construed here and in
`previous proceedings involving the ’494 patent, including “organiz[ation]
`according to a database schema to serve one or more applications.” See
`supra Section II.A.2; Prelim. Resp. 47–48. We also agree, for the reasons
`stated by Patent Owner, that Petitioner has not shown that Crawford 93 cures
`the deficiency. Id. at 48. Lastly, because Petitioner has not established that
`the combination of Crawford 91 with the knowledge of a person of ordinary
`skill in the art teaches or suggests a database, and because we further agree
`with Patent Owner that Petitioner has not otherwise identified a database
`manager in Crawford 91 (see id.), we conclude that Petitioner has not
`demonstrated that the combination of Crawford 91 with the knowledge of a
`person of ordinary skill in the art teaches or suggests a “database
`manager . . . for storing the Downloadable security profile data in a
`database,” as recited in claim 10.
`For the foregoing reasons, Petitioner has not shown that the
`combination of Crawford 91 with the knowledge of a person of ordinary
`skill in the art as of November 1996 teaches or suggests either “a receiver
`for receiving an incoming Downloadable” or a “database manager . . . for
`storing the Downloadable security profile data in a database,” as recited in
`claim 10. Consequently, we are not persuaded that Petitioner demonstrates a
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 7 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`reasonable likelihood that it would prevail at trial with respect to claim 10 or
`its dependent claims 11 and 14–16 over the asserted combination.
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`C. Additional Considered Arguments
`Patent Owner additionally has advanced arguments that the Petition
`should be denied under 35 U.S.C. §§ 314(a) and 325(d) in view of prior
`petitions for inter partes review of the ’494 patent filed by other petitioners.
`Prelim. Resp. 1–2, 12–29. Patent Owner’s arguments under § 314(a) were
`the subject of further authorized briefing. Reply 1–5; Sur-reply 1–5. We
`have considered the parties’ respective arguments, but in view of our
`determination not to institute trial on the basis of Petitioner’s substantive
`grounds asserted in the Petition, we do not address those arguments further
`herein.
`
`III. CONCLUSION
`On this record, we are not persuaded that Petitioner demonstrates a
`reasonable likelihood that it would prevail in showing the unpatentability of
`any of claims 10, 11, and 14–16 of the ’494 patent on the grounds asserted in
`the Petition. Consequently, the Petition is denied.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that the Petitioner is denied, and no inter partes review is
`instituted as to any of claims 10, 11, and 14–16 of the ’494 patent.
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`Case 5:17-cv-04467-BLF Document 400-13 Filed 03/11/21 Page 8 of 8
`IPR2017-02155
`Patent 8,677,494 B2
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`For PETITIONER:
`
`Patrick D. McPherson
`Patrick Muldoon
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`pcmuldoon@duanemorris.com
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Lee
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
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