Case IPR2015-01547
`U.S. Patent No. 8,141,154
`
`Filed on behalf of Symantec Corporation
`By:
`Joseph J. Richetti
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORP.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`IPR2015-01547
`U.S. Patent No. 8,141,154
`
`PETITIONER’S REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(c) FOR PARTIAL
`RECONSIDERATION OF ITS DECISION TO NOT INSTITUTE TRIAL
`
`
`U.S. Patent No. 8,141,154
`
`Filed on behalf of Symantec Corporation
`By:
`Joseph J. Richetti
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORP.
`Petitioner
`
`v.
`
`FINJAN, INC.
`Patent Owner
`
`IPR2015-01547
`U.S. Patent No. 8,141,154
`
`PETITIONER’S REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. § 42.71(c) FOR PARTIAL
`RECONSIDERATION OF ITS DECISION TO NOT INSTITUTE TRIAL
`
`
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ...........................................................................................1
`
`THE STANDARD OF REVIEW FOR REHEARING...................................3
`
`III. ARGUMENT...................................................................................................4
`
`A.
`
`B.
`
`Symantec demonstrated that Ross discloses a content processor that
`receives content over a network, the content including a call to a first
`function..................................................................................................4
`
`Ross discloses that both the original data content and the hook script
`(i.e., the claimed content) are received over a network ........................9
`
`IV. CONCLUSION..............................................................................................12
`
`
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`Petitioner Symantec Corporation (“Symantec” or “Petitioner”) respectfully
`
`requests a rehearing pursuant to 37 C.F.R. § 42.71(c) for partial reconsideration of
`
`the Board’s Decision Denying Institution of Trial (Paper No. 9) (“Decision”) with
`
`respect
`
`to claims 1-12 of U.S. Patent 8,141,154 (“the ‘154 patent”). More
`
`specifically, Symantec requests reconsideration of the Board’s decision as to
`
`Grounds 1-3 of the Petition, which primarily pertain to U.S. Patent Publication
`
`2007/0113282 (“Ross”). Petitioner respectfully submits that the Board overlooked
`
`duly presented evidence when it decided to not institute trial in this proceeding
`
`with respect to claims 1-12 under Ross. Specifically, in its discussion of Ross, the
`
`Board focused on one embodiment illustrated in figure 2, while ignoring other
`
`embodiments described in Ross and relied on in the Petition that clearly disclose
`
`the one allegedly missing claim limitation. Thus, the Board’s decision is premised
`
`on factual findings that are not supported by substantial evidence.
`
`I.
`
`INTRODUCTION
`On January 14, 2014, the Board denied the institution of inter partes review
`
`of claims 1-12 of the ‘154 patent with respect to all four grounds presented in the
`
`petition, namely:
`
`1.
`
`2.
`
`Anticipation of Claims 1-5 by Ross;
`
`Obviousness of Claims 2, 4-8, 10 and 11 by Ross;
`
`
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`Obviousness of Claims 9 and 12 in view of Ross and U.S. Patent
`
`Publication 2002/0066022 (“Calder”); and
`
`Obviousness of Claims 1-12 in view of Calder and Sirer.1
`
`3.
`
`4.
`
`Decision, p. 2-3, 13.
`
`Symantec respectfully requests rehearing because the Board overlooked
`
`Symantec’s arguments and evidence in its Petition when incorrectly concluding
`
`that Ross does not disclose “a content processor (i) for processing content
`
`received over a network, the content including a call to a first function, and the
`
`call including an input.” Decision, p. 5 (emphasis added). In fact, this conclusion
`
`is contradicted by the Board’s own characterization of the reference when
`
`providing an “Overview of Ross.” Decision, p. 5-6.
`
`In particular, the Board
`
`acknowledged that Ross’ detection engine, which provides the hook script (i.e.,
`
`content) including hook functions (i.e., first function) to the content processor,
`
`“may be physically located away from client 202.” Decision, p. 6. Thus, it is clear
`
`that, in these embodiments of Ross, the client’s script processing engine (i.e.,
`
`content processor), which resides on client 202, necessarily receives the hook
`
`script (i.e., content including a first function) over a network.
`
`1 Sirer et al., Design and Implementation of a Distributed Virtual Machine for
`
`Networked Computers, (1999).
`
`2
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`For the reasons discussed more fully below, Symantec requests that the
`
`Board reconsider its denial of institution, and institute trial on Grounds 1-3, each
`
`of which rely on the teachings of Ross for the disclosure of the sole claim
`
`limitation deemed missing by the Board. This Request for Rehearing is filed
`
`within thirty days of the Decision Denying Institution and is thus timely under 37
`
`C.F.R. § 42.71, § 1.7.
`
`II.
`
`THE STANDARD OF REVIEW FOR REHEARING
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`
`occurs when a “decision was based on an erroneous conclusion of law or clearly
`
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v.
`
`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations
`
`omitted); see also O'Keefe v. U.S. Postal Service, 318 F.3d 1310, 1314 (Fed. Cir.
`
`2002) (“The Board necessarily abuses its discretion when it rests its decision on
`
`factual
`
`findings unsupported by substantial evidence.”)
`
`(internal quotations
`
`omitted). “The request [for rehearing] must specifically identify all matters the
`
`party believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`
`§ 42.71(d).
`
`3
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`
`III. ARGUMENT
`
`A.
`
`Symantec demonstrated that Ross discloses a content processor
`that receives content over a network, the content including a call
`to a first function
`
`In discussing the sole limitation deemed missing by the Board, Symantec
`
`argued that “Ross discloses a client computer, which includes a ‘script processing
`
`engine’ (i.e., a content processor) that receives web content over a network.”
`
`Petition, p. 18-19 (citing Ross, ¶¶ 23, 26, 34, and FIGS. 2, 4-6).
`
`Symantec further argued that this script processing engine receives content
`
`in the form of a “hook script,” which includes a hook function (i.e., first function).
`
`More specifically, as explained in Ross, this hook script is generated by a “hook
`
`script generator” in a “detection engine,” which analyzes the original script and
`
`replaces certain original functions with hook functions. Petition, p. 18-19. Indeed,
`
`the Board recognized that Ross’ “hook script generator” generates hook functions
`
`(Decision, p. 7), and explicitly references the detection engine 240, which includes
`
`hook script generator 244. Decision, p. 6 (reproducing figure 2 and referencing
`
`components 240 and 244).
`
`Although Ross describes certain embodiments in which the content
`
`processor and detection engine are implemented together on the client computer
`
`(e.g., Ross, Fig. 2), Ross also discloses other embodiments in which the detection
`
`engine is located on a different computer and connected to the client via a network
`
`4
`
`
`
`(e.g., Ross, ¶ 26).
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`Importantly, paragraph 26 of Ross, which is cited on page 18
`
`of the Petition, makes clear that the detection engine, or some of its components,
`
`such as the hook script generator and/or the script injector can be physically
`
`located away from the client and implemented as part of a “third”/“network”
`
`device that intercepts client/server communications (e.g., web content being sent to
`
`the client across connection networks 208/210).
`
`In one embodiment, detection engine 240 includes a script injector
`242, a hook script generator 244, and/or a communication object
`246. Script injector 242 may intercept incoming data content,
`such as HTTP data, and introduce the incoming data to script
`processing engine 224. Incoming data may be, for example, a
`requested web page delivered over network 208. Script injector 242
`may be implemented as a browser plug-in, such as a Multipurpose
`Internet Mail Extensions (MIME) plug-in, for web browser 224.
`Hook script generator 244 creates new functions,
`including
`constructor functions, which replace the standard JavaScript
`functions. Alternatively, hook script generator 244 may create a
`generic hook script off-line for archive or reading in to a remote client
`through a network 208 or other delivery means. In this manner, a
`script manufacturer may design and distribute a hook script for use by
`a plurality of client end-users. The distributed hook script may be read
`in to a web browser prior to reading in any web page in order to
`provide run-time detection and control of the data content processing
`for the remote client. In another embodiment, some portion or all
`of detection engine 240 may be physically located away from
`5
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`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`client 202. Some portion or all of detection engine 240 may be
`moved onto another platform termed a third device, and may be
`implemented as another client device (not shown), an auxiliary device
`operationally connected to client 202 (not shown), and/or a network
`device that intercepts messages up to an including all traffic
`between connection networks 208 and 210. In one example, the
`script injection and generation could be accomplished by the third
`device.
`
`Ross, ¶ 26 (emphasis added).
`
`In fact, when summarizing Ross’ disclosure, the Board recognized that
`
`Ross’ “detection engine 240 may be physically located away from client 202. Id.
`
`at ¶ 26.” Decision, p. 6. However, in its subsequent analysis regarding the one
`
`limitation deemed missing in Ross, the Board appears to have ignored this critical
`
`disclosure and, instead, limited its analysis to the specific embodiment that is
`
`depicted in figure 2 of Ross. Figure 2 cannot be viewed in isolation without taking
`
`into account
`
`the other
`
`relevant disclosure in Ross,
`
`including the alternate
`
`embodiments described in paragraph 26, which was cited together with figure 2 on
`
`page 18 of the Petition. As discussed above, paragraph 26 describes different
`
`configurations and locations for the elements of the detection engine 240 shown in
`
`figure 2, and references other components of figure 2, namely “connection
`
`networks 208 and 210.” See Petition, p. 18 (citing Ross, ¶ 26 along with figure 2).
`
`6
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`Significantly, when the detection engine 240 is located physically away from
`
`the client, it is indisputable that this detection engine, along with its components
`
`(e.g., hook script generator 244 and script
`
`injector 242) are in network
`
`communication with client 202. Thus, any content, such as the hook script, that is
`
`generated by detection engine 240 and directed from the detection engine to client
`
`202 is necessarily received by the client over a network.
`
`In turn, the Board
`
`correctly found that the detection engine generates a hook script that includes hook
`
`functions (to replace standard functions) using hook script generator 244.
`
`Decision, p. 6. Accordingly, when the hook script generator is located on a
`
`network device (i.e., rather than on the client), it necessarily follows that this hook
`
`script (i.e., the claimed content) already includes the hook function (i.e., first
`
`function), when the hook script is transmitted from the detection engine to the
`
`client’s script processing engine (i.e., content processor) over a network.
`
`Paragraph 85 of Dr. Davidson’s declaration, which is cited on pages 20-21
`
`of the Petition as part of a discussion of the various network-oriented disclosures in
`
`Ross, confirms the above conclusion:
`
`devices
`other
`communicate with
`also
`client may
`The
`implementing the detection engine. For example, “some portion or
`all of detection engine 240 may be physically located away from
`client 202… moved onto another platform termed a third device, and
`may be implemented as another client device (not shown), an
`
`7
`
`
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`auxiliary device operationally connected to client 202... and/or a
`network device.” Ross, ¶ 26. As explained in Ross, the client’s
`content processor communicates with the remote computer(s)
`implementing the detection engine using communication objects. This
`communication may involve sending/receiving over a network.
`Ross, ¶¶ 26-28.
`
`Exhibit 1010, ¶ 85.
`
`Figure 6 of Ross, which is also cited on page 18 of the Petition and on page
`
`7 of the Board’s decision further supports Petitioner’s position. More specifically,
`
`although figure 6 is a dataflow diagram that does not indicate where the constituent
`
`components are physically located, it illustrates that Ross’ script processing engine
`
`(i.e., content processor) receives hooked script code from the script injector. Ross,
`
`¶ 34. To provide the hooked script code, the script injector communicates bi-
`
`directionally with the hook script generator; it supplies script code to the hook
`
`script generator which, in turn, supplies the injector with hooked script code
`
`content. See Petition, p. 19 “(‘hook script generator 606 may receive some portion
`
`or all of data content 602 and supply a generated script code including one or more
`
`hook functions configured to replace corresponding original functions’)” (citing
`
`Ross, ¶ 34).2 Accordingly, when both the script injector and hook script generator
`
`2 Paragraph 34 of Ross also establishes the correspondence between the
`
`components of figures 2 and 6, such as the hook script generator. Ross, ¶ 34
`
`8
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`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`of Ross’ detection engine are located on a third/networked device, the client’s
`
`script processing engine (i.e., content processor) necessarily receives the content
`
`including a first function – namely a hook function – over a network. Ross, ¶ 26.
`
`Thus, contrary to the Board’s conclusion, Ross discloses a content processor
`
`(e.g., a script processing engine) for processing content (e.g., a hook script)
`
`received over a network (e.g., from a script injector/detection engine located on a
`
`third/network device), the content including a call to a first function (e.g., a hook
`
`function). Petition, p. 18-20.
`
`B.
`
`Ross discloses that both the original data content and the hook
`script (i.e., the claimed content) are received over a network
`
`As part of the Board’s decision, the Board stated that “the hook script
`
`generator generates the hook function, which is loaded separate from data content
`
`602 that is received over the network.” Decision, p. 7; see also id. (stating that the
`
`Petition does not show “how Ross’s data content [602] received over a network
`
`also includes the hook functions”). Thus, the Board appears to be suggesting that,
`
`in Ross, only the data content (e.g., the original web content) is received by the
`
`client over a network, whereas the hook script (i.e., the modified content that
`
`(“Hook script generator 606 is an exemplary embodiment of script generator 244
`
`(FIG. 2).”).
`
`9
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`includes the hook/first function) is loaded separately at the client (i.e., not received
`
`over the network). This is incorrect.
`
`Although Ross explains that the hook script may be generated and loaded
`
`separately at the client, this is only true for certain embodiments, namely the
`
`particular embodiment depicted in figure 2 of Ross. In this embodiment, where the
`
`detection engine is located on the client, the hook script is generated at the client,
`
`after the client receives the data content over the network. Importantly, however,
`
`as discussed above, Ross discloses other embodiments in which this hook script is
`
`generated by a detection engine that is located on a separate network device before
`
`it is transmitted over a network to the client. Supra at 4-9. These network-based
`
`embodiments disclosed in paragraph 26 of Ross were discussed in both the Petition
`
`and cited portions of Dr. Davidson’s declaration. Id.
`
`Thus, in these embodiments, the hook script generator and script injector of
`
`the network detection engine intercept/receive the original script portion of data
`
`content 602 before it is delivered to the client, generate the hook functions to
`
`replace certain original script functions, and then transmit the resulting hook script
`
`(i.e., claimed content) over a network to the client’s script processing engine, as
`
`discussed above. See also, Petition, p. 19 “(‘hook script generator 606 may receive
`
`some portion or all of data content 602 and supply a generated script code
`
`including one or more hook functions configured to replace corresponding original
`
`10
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`functions’)” (citing Ross, ¶ 34). Therefore, the Board’s conclusion – that only the
`
`original data content 602 in Ross is received over a network – is contradicted by
`
`the express disclosure of Ross.
`
`Additionally, whether or not “data content 602” in Ross includes a hook
`
`function (i.e., first function) is not the relevant inquiry. This is because Ross’ hook
`
`script (i.e., the modified script content with the hook functions) – not data content
`
`602 (i.e., the original web content) is what corresponds to the claimed “content . . .
`
`including a call to a first function,” as set forth in the Petition. Petition, p. 18-22.
`
`Indeed, as recognized by the Board, Ross makes clear that the hook script includes
`
`the hook functions that have been inserted to replace original functions in the
`
`original script content. Ross, ¶ 26; Petition, p. 18; Decision, p. 6. This is also
`
`consistent with the discussion and examples corresponding to the claimed
`
`“content” in the specification of the ’154 patent.
`
`’154 patent, col. 9:13-23
`
`(differentiating “original content” from “modified content,” which includes a
`
`substitute function), which is cited on page 9 of the Petition; ’154 patent, col. 2:67-
`
`3:2 (“[s]uch Internet content may be in the form of executable code, JavaScript,
`
`VBScript, Java applets, ActiveX controls, which are supported by web browsers.”),
`
`which is cited on page 8 of the Petition.
`
`11
`
`
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`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`
`IV. CONCLUSION
`
`In view of the foregoing, Symantec respectfully requests that the Board
`
`reconsider its decision on Grounds 1-3 pertaining to Ross and institute trial on
`
`claims 1-12 challenged therein.
`
`Date: February 16, 2016
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – Symantec
`Corporation
`
`12
`
`
`
`Case IPR2015-01547
`U.S. Patent No. 8,141,154
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that the above-captioned “PETITIONER’S
`REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. § 42.71(c) FOR
`PARTIAL RECONSIDERATION OF ITS DECISION TO NOT INSTITUTE
`TRIAL” was served electronically via e-mail on February 16, 2016, in its entirety
`on the following:
`
`Jeffrey H. Price
`jprice@kramerlevin.com
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`
`James Hannah
`jhannah@kramerlevin.com
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`Michael Kim
`mkim@finjan.com
`Finjan Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`
`Date: February 16, 2016
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – Symantec
`Corporation
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