UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SYMANTEC CORP.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01892
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SYMANTEC CORP.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01892
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD MISAPPREHENDED OR OVERLOOKED KEY
`ARGUMENTS THAT DEMONSTRATE PATENTABILITY OF
`THE ‘494 PATENT OVER SWIMMER ........................................................ 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Board Overlooked the Petition’s Improper Conflation of
`Claim Limitations .................................................................................. 4
`
`The Board Overlooked Swimmer’s Failure to Disclose
`“Storing” its Audit Records ................................................................... 7
`
`The Institution Decision Should Be Reconsidered to Avoid an
`Inconsistent Outcome ............................................................................ 9
`
`The Board Misapprehended the Significance of Patent Owner’s
`Argument Regarding Petitioner’s Failure to Address Objective
`Indicia of Nonobviousness ..................................................................13
`
`III. CONCLUSION ..............................................................................................14
`
`
`
`- i -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) .............................................................................. 6
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 13
`
`mFormation Techs., Inc. v. Research in Motion Ltd.,
`764 F.3d 1392 (Fed. Cir. 2014) ............................................................................ 5
`
`Sophos, Inc. v. Finjan, Inc.,
`Case No. IPR2015-01022, Decision Denying Request for
`Rehearing, Paper No. 7 (P.T.A.B. Sept. 24, 2015) ............................................. 10
`
`Sophos, Inc. v. Finjan, Inc.,
`Case No. IPR2015-01022, Decision Denying Request for
`Rehearing, Paper No. 9 (P.T.A.B. Jan. 28, 2016) ............................................... 10
`
`Star Fruits S.N.C. v. U.S.,
`393 F. 3d 1277 (Fed. Cir. 2005) ..................................................................... 1, 11
`
`Valeo N. Am., Inc. v. Magna Elecs., Inc.,
`Case No. IPR2014-00220, Decision on Request for Rehearing,
`Paper No. 61 (P.T.A.B. July 14, 2015) ................................................................. 9
`
`Veeam Software Corp. v. Symantec Corp.,
`Case No. IPR2013-00142, Patent Owner’s Request for Rehearing,
`Paper No. 12 (P.T.A.B. Aug. 21, 2013)................................................................ 9
`
`Veeam Software Corp. v. Symantec Corp.,
`Case No. IPR2013-00142, Decision on Patent Owner’s Request for
`Rehearing, Paper No. 17 (P.T.A.B. Sept. 30, 2013) ............................................. 9
`
`In re Wilson,
`424 F.2d 1382 (C.C.P.A. 1970) ........................................................................ 2, 5
`
`- ii -
`
`
`
`Patent Owner’s Preliminary Response
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Statutes
`
`35 U.S.C. § 103(a) ............................................................................................... 1, 14
`
`Other Authorities
`
`37 C.F.R. 42.104(b)(4) ............................................................................................... 4
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`- iii -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Patent Owner, Finjan, Inc., (“Finjan” or “Patent Owner”) respectfully
`
`requests partial rehearing of the Board’s Decision on Institution (Paper No. 9)
`
`(“Institution Decision”) under 37 C.F.R. § 42.71(d). In particular, Finjan
`
`respectfully requests reconsideration of the decision to institute trial on Ground 3
`
`of the Petition, which proposes that claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S.
`
`Patent No. 8,677,494 are unpatentable under 35 U.S.C. § 103(a) in view of
`
`Swimmer et al., Dynamic Detection and Classification of Computer Viruses Using
`
`General Behaviour Patterns (Ex. 1005, “Swimmer”).
`
`I.
`
`INTRODUCTION
`
`On March 18, 2016, the Board decided to institute inter partes review as to
`
`Ground 3 which asserts that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ‘494 Patent
`
`is unpatentable over Swimmer under 35 U.S.C. § 103(a). Finjan requests
`
`reconsideration because the Board “misapprehended or overlooked” arguments
`
`presented in Patent Owner’s Preliminary Response (Paper No. 7) (“POPR”). See
`
`37 C.F.R. § 42.71(d). The matters misapprehended or overlooked by the Board
`
`amount to an abuse of discretion resulting in a decision that is based on an
`
`erroneous interpretation of law. See Star Fruits S.N.C. v. U.S., 393 F. 3d 1277,
`
`1281 (Fed. Cir. 2005) (“An abuse of discretion occurs where the decision is based
`
`on an erroneous interpretation of the law, on factual findings that are not supported
`
`- 1 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`by substantial evidence, or represents an unreasonable judgment in weighing
`
`relevant factors.”) (citation omitted).
`
`First, reconsideration is appropriate because the Board overlooked
`
`Petitioner’s inappropriate conflation of claim terms and Patent Owner’s argument
`
`that Petitioner improperly conflated the claim limitations of “deriving security
`
`profile data for the Downloadable…” with “storing the Downloadable security
`
`profile data in a database.” See POPR at 20–21 (asserting that Swimmer’s creation
`
`of an audit record cannot satisfy both the claimed “deriving security profile data
`
`for the Downloadable” and “storing the Downloadable security profile data in a
`
`database”). In its Decision, the Board seemed to adopt Petitioner’s fatally flawed
`
`argument by equating both limitations with Swimmer’s creation of “audit records.”
`
`See Institution Decision at 22–23. In contrast, the Federal Circuit requires proper
`
`consideration of each claim term in judging the patentability of a claim against the
`
`prior art. In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A. 1970) (“All words in a
`
`claim must be considered in judging the patentability of that claim against the prior
`
`art.”). As such, reconsideration is appropriate given Petitioner’s failure to give
`
`proper consideration to each claim term.
`
`Furthermore, the Board overlooked Patent Owner’s argument that Swimmer
`
`does not teach “storing the Downloadable security profile data in a database”
`
`because Swimmer does not teach “storing” its audit records anywhere, let alone
`
`- 2 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`storing them in a database. See POPR at 21. As such, reconsideration is
`
`appropriate given Petitioner’s failure to give proper consideration to the
`
`“storing…” language recited in each of the independent claims.
`
`Moreover, the Board’s determination that Swimmer’s “audit record is a
`
`database” is inconsistent with the Board’s previous determinations as to the proper
`
`construction for the claimed “database.” Thus, the Institution Decision should be
`
`modified to avoid an inconsistent outcome with the Board’s own determinations
`
`for the same patent.
`
`Additionally, the Board misapprehended the significance of Patent Owner’s
`
`arguments with respect to objective indicia of nonobviousness, namely that
`
`Petitioner’s failure to consider Finjan’s objective indicia of nonobviousness
`
`renders the Petition deficient as a matter of law. See POPR at 48-51.
`
`Because the Board’s misapprehension resulted in an Institution Decision that
`
`is erroneous as a matter of law, it meets the stringent “abuse of discretion”
`
`standard. Patent Owner respectfully requests, therefore, that the Board reconsider
`
`its decision to institute trial and deny the Petition.
`
`- 3 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`II. THE BOARD MISAPPREHENDED OR OVERLOOKED KEY
`ARGUMENTS THAT DEMONSTRATE PATENTABILITY OF THE
`‘494 PATENT OVER SWIMMER
`A. The Board Overlooked the Petition’s Improper Conflation of
`Claim Limitations
`
`The Board should reconsider instituting trial with respect to Swimmer
`
`because its decision overlooked Petitioner’s failure to separately address each
`
`claim term and Patent Owner’s argument that Swimmer’s creation of an audit
`
`record cannot satisfy both the claimed “deriving security profile data for the
`
`Downloadable” and “storing the Downloadable security profile data in a database.”
`
`See POPR at 20–21. As a result, the Institution Decision is based on an erroneous
`
`interpretation of law that conflates claim terms rather than consider all words in the
`
`claim. See id. at 21 (citing In re Wilson, 424 F.2d at 1385) (“All words in a claim
`
`must be considered in judging the patentability of that claim against the prior art.”).
`
`Each of the independent claims recite two different claim limitations:
`
`• “deriving security profile data for the Downloadable…”
`
`• “storing the Downloadable security profile data in a database”
`
`Thus, in order to meet its threshold burden the Petition was, at least, required to
`
`specify where (1) the deriving of security profile data; as well as (2) the storing of
`
`this security profile data in a database are found in Swimmer. See POPR at 1
`
`(quoting 37 C.F.R. 42.104(b)(4) (“[t]he petition must specify where each element
`
`of the claim is found in the prior art…”)); see also POPR at 20–21.
`
`- 4 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`In contrast, Petitioner took the position that both “security profile data” and
`
`“database” should be redundantly the same, by mapping both to Swimmer’s audit
`
`records. See POPR at 20 (citing Petition at 18 (“Swimmer discloses deriving
`
`security profile data (e.g., audit records).”); see also id. at 20 (citing Petition at 19
`
`(“[T]he audit record includes a list of suspicious operations identified by the audit
`
`system that are organized according to a clearly defined structure with various
`
`fields….”). In instituting trial, the Board overlooked Petitioner’s legally deficient
`
`position. In fact, the Institution Decision states that Swimmer’s “audit record is a
`
`database” despite acknowledging that Petitioner already relies on these “audit
`
`records” to be the claimed “security profile data.” Institution Decision at 16
`
`(“Lastly, Petitioner argues that Swimmer discloses that the audit records (i.e.,
`
`Downloadable security profile data)…”) (emphasis added); id. at 23 (“we are
`
`persuaded on this record that the audit record is a database…”) (emphasis added).
`
`But conflating the “security profile data” itself with the “database” that stores the
`
`“security profile data,” would render these limitations redundant, giving no effect
`
`to the additional requirement of “storing…in a database” as recited by the claims.
`
`In contrast, the law requires that “all words in a claim must be considered in
`
`judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d
`
`at 1385; see also mFormation Techs., Inc. v. Research in Motion Ltd., 764 F.3d
`
`1392, 1399 (Fed. Cir. 2014) (reaffirming that claim limitations cannot be construed
`
`- 5 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`in a way that “would render another limitation superfluous.”) (citation omitted);
`
`see also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)
`
`(dictating that claims must be “interpreted with an eye toward giving effect to all
`
`terms in the claim.”) (citation omitted).
`
`This erroneous interpretation of law was exactly what Patent Owner’s
`
`arguments warned against in the POPR. Indeed, the Institution Decision overlooks
`
`Patent Owner’s argument that interpreting Swimmer’s audit records to be both the
`
`claimed “security profile data” and the claimed “database” is contrary to the law by
`
`giving no effect to the “storing … in a database” language recited in the claims:
`
`Furthermore, such an interpretation would be contrary to the claim
`language which requires the generation of security profiles as well as
`storing the profiles in a database. Here, Petitioner already relies on
`Swimmer’s audit record to be the claimed “Downloadable
`security profile data.” See id. at 18 (“Swimmer discloses deriving
`security profile data (e.g., audit records).” Swimmer’s creation of
`this audit record alone cannot satisfy both limitations. Indeed,
`such an interpretation gives no effect to the “storing … in a
`database” language in the claim contrary to the law. In re Wilson,
`424 F.2d at 1385 (“All words in a claim must be considered in judging
`the patentability of that claim against the prior art.”).
`
`POPR at 20–21 (emphasis added). This fatal deficiency was not addressed in the
`
`Institution Decision despite being explicitly raised in the POPR.
`
`- 6 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Accordingly, the Institution Decision should be reconsidered at least because
`
`the Board’s overlooking of Patent Owner’s argument regarding Petitioner’s
`
`improper conflation led the Board to adopt an erroneous result as a matter of law.
`
`B.
`
`The Board Overlooked Swimmer’s Failure to Disclose “Storing”
`its Audit Records
`
`The Board should also reconsider instituting trial with respect to Swimmer
`
`because the Institution Decision overlooked Swimmer’s failure to disclose
`
`“storing” its audit records. As described above, Petitioner improperly conflated
`
`“security profile data” with “database,” by equating both to Swimmer’s audit
`
`records. Petitioner’s improper conflation also reveals Swimmer’s fatal “storing”
`
`deficiency.
`
`In addition to generating security profile data, the independent claims further
`
`require the “storing” of that data, namely “storing the Downloadable security
`
`profile data in a database.” In its POPR, Patent Owner pointed out that Petitioner’s
`
`“audit records” theory also fails because the “storing” of audit records is never
`
`disclosed by Swimmer. POPR at 21 (“In fact, Swimmer fails to disclose storing an
`
`audit record anywhere.”).
`
`Patent Owner further illustrated why Swimmer never stores its audit records,
`
`namely due to Swimmer’s critical “efficiency” requirement. As explained by
`
`Swimmer, because audit records are “large sequential files,” Swimmer’s critical
`
`- 7 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`“efficiency” requirement only allows each record to be analyzed “only once,”
`
`regardless of the complexity of the analysis:
`
`In fact, Swimmer fails to disclose storing an audit record anywhere.
`Rather, Swimmer explicitly discloses that audit records are only
`analyzed once, which means that there would be no need to store the
`audit records after analysis, let alone in a database:
`Efficiency is a critical requirement for the analysis of
`large sequential files, especially when on-line monitoring
`is involved. The very principle of the rule-based language
`RUSSEL allows each record to be processed only once,
`whatever complex is the analysis.
`Swimmer at 13 (emphasis added).
`
`POPR at 21 (emphasis added).1 As shown above, Swimmer’s critical “efficiency”
`
`requirement for analyzing audit records further supports that Swimmer’s audit
`
`records are never stored, let alone stored in a database.
`
`Patent Owner’s “storing” arguments were not addressed in the Institution
`
`Decision despite being explicitly raised in the POPR. Rather, the Board focused
`
`on determining whether Swimmer’s “audit record is a database.” Institution
`
`Decision at 23 (“we are persuaded on this record that the audit record is a
`
`
`1 See also Swimmer at 7 (“As a matter of fact, ASAX itself is the logical choice to
`
`act as the filter. The first ASAX system reads the raw audit trail, converts it into
`
`generic data, and pipes its output as a NADF file for further processing….”).
`
`- 8 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`database...”). However, the Board overlooked that its “database” finding does not
`
`address Finjan’s separate argument that Swimmer does not disclose “storing” audit
`
`records. Indeed, the Board’s “database” finding does not discuss the “storing”
`
`language at all. Institution Decision at 23. Because the “storing…” language is
`
`recited in each of the independent claims, Ground 3 should be denied based on
`
`Swimmer’s “storing” deficiency alone.
`
`Accordingly, Patent Owner respectfully requests rehearing because the
`
`Board overlooked Swimmer’s failure to disclosure “storing” its audit records
`
`C. The Institution Decision Should Be Reconsidered to Avoid an
`Inconsistent Outcome
`
`The Board should also reconsider its decision as its “database” finding with
`
`respect to Swimmer results in an inconsistent outcome with the Board’s previous
`
`determinations for the claimed “database.” See Veeam Software Corp. v. Symantec
`
`Corp., Case No. IPR2013-00142, Patent Owner’s Request for Rehearing, Paper
`
`No. 12 at 1, 4-6 (P.T.A.B. Aug. 21, 2013) (pointing out inconsistency in co-
`
`pending case); see also Veeam Software Corp. v. Symantec Corp., Case No.
`
`IPR2013-00142, Decision on Patent Owner’s Request for Rehearing, Paper No. 17
`
`(P.T.A.B. Sept. 30, 2013) (granting patent owner’s rehearing request); Valeo N.
`
`Am., Inc. v. Magna Elecs., Inc., Case No. IPR2014-00220, Decision on Request for
`
`Rehearing, Paper No. 61 at 3 (P.T.A.B. July 14, 2015) (finding that the decision
`
`“should be reconsidered to avoid an inconsistent outcome…”).
`
`- 9 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`In construing the term “database” with a meaning that is “consistent with the
`
`specification,” the Board correctly rejected multiple attempts to unduly broaden
`
`this term. See Sophos, Inc. v. Finjan, Inc., Case No. IPR2015-01022, Decision
`
`Denying Request for Rehearing, Paper No. 9 at 6–10 (P.T.A.B. Jan. 28, 2016)
`
`(rejecting construing “database” to mean “data that are organized in some
`
`recognized fashion…”) (Ex. 2006); see also Sophos, Inc. v. Finjan, Inc., Case No.
`
`IPR2015-01022, Decision Denying Institution of Inter Partes Review, Paper No. 7
`
`at 9–10, 14 (P.T.A.B. Sept. 24, 2015) (rejecting construing “database” to mean
`
`“any structured store of data”) (Ex. 2004); see also Institution Decision at 7–11
`
`(rejecting construing “database” to mean “an organized collection of data.”).
`
`Based on these rejections, prior art that merely discloses “an organized collection
`
`of data” or even “data that are organized in some recognized fashion…” would not
`
`meet the claimed “database.”
`
`In determining Swimmer’s “audit records is a database,” however, the Board
`
`overlooked its previous determinations and equated the claimed “database” with a
`
`meaning that is so broad that it inconsistently encompasses the very constructions
`
`it already rejected, including “data that are organized in some recognized
`
`fashion…” and “an organized collection of data.” Institution Decision at 23
`
`(finding that “audit record is a database,” because it is “organized with a specific
`
`“canonical format” to serve the ASAX tool.”).
`
`- 10 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Notably, this decision also overlooked that Petitioner never purported that
`
`Swimmer’s audit records met the adopted construction of “database” which is “a
`
`collection of interrelated data organized according to a database schema to serve
`
`one or more applications.” Indeed, Petitioner chose to argue against the “database
`
`schema” requirement during claim construction, which is why the Petition does not
`
`discuss the “database schema” requirement at all for Swimmer. See Petition at 12.
`
`Rather, the Petition always carefully chose to use the broader term "schema"
`
`instead. See Petition at 19 (“(i.e., an organized collection of data that is organized
`
`based on a particular schema)”). Thus, to the extent the Board determined that
`
`Swimmer's canonical format is a "database schema," such a finding is not even
`
`supported by attorney argument, let alone the required “substantial evidence”
`
`necessary to support a factual finding. See Star Fruits, 393 F. 3d at 1281 (“An
`
`abuse of discretion occurs where the decision is based …on factual findings that
`
`are not supported by substantial evidence...”).
`
`In challenging Swimmer, Patent Owner explained the significance of
`
`requiring “database schema” within the construction of “database,” including why
`
`storing DSP in accordance to a database schema is entirely different from
`
`Swimmer's technique. As explained in the POPR, Swimmer’s technique relies on
`
`audit records, which are “large sequential files.” See POPR at 21(citing Swimmer
`
`at 13). In stark contrast, the construction of “database” requires storing DSP
`
`- 11 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`according to a “database schema,” advantageously allowing DSP to be efficiently
`
`retrieved when a previously scanned incoming Downloadable is received, as
`
`illustrated in the manner in which security database 240 stores DSP data 310
`
`below:
`
`See POPR at 10-11; see also id. at 21 (“This is the very reason that Patent Owner’s
`
`proposed construction of the term ‘database’ is ‘a collection of interrelated data
`
`organized according to a database schema to serve one or more applications.’ …
`
`With the DSP data stored according to a database schema, it can be efficiently
`
`retrieved when a previously scanned incoming Downloadable is received.”).
`
`Accordingly, Patent Owner respectfully submits that the Board overlooked
`
`its previous “database” determinations and Patent Owner’s “database schema”
`
`- 12 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`argument, which led the Board to adopt a decision that should be reconsidered to
`
`avoid an inconsistent outcome.
`
`D. The Board Misapprehended the Significance of Patent Owner’s
`Argument Regarding Petitioner’s Failure to Address Objective
`Indicia of Nonobviousness
`
`In light of the Institution Decision, Patent Owner respectfully submits that
`
`the Board has misapprehended its argument regarding the objective indicia of
`
`nonobviousness. Stated simply, “Petitioner’s failure to present the Board with a
`
`complete obviousness analysis in its Petition is, as a matter of law, enough to deny
`
`the institution of a trial on Section 103 grounds.” POPR at 48. Patent Owner did
`
`not (nor did it intend to in its POPR—with its limited opportunity to provide new
`
`testimonial evidence) argue the merits of its secondary considerations of
`
`nonobviousness, which the Board nonetheless addressed. Rather, Patent Owner
`
`simply argued that in failing to address the secondary considerations of which
`
`Petitioner was aware, the Petition’s obviousness grounds were legally deficient
`
`under the framework provided by the Supreme Court in Graham v. John Deere
`
`Co., 383 U.S. 1, 17–18 (1966). See POPR at 48. The Board’s decision appears to
`
`acknowledge that proper obviousness analysis requires consideration of objective
`
`evidence of nonobviousness. Institution Decision at 11. However, the Board
`
`never addressed the fact that consideration of objective evidence of
`
`nonobviousness does not appear in the Petition.
`
`- 13 -
`
`
`
`Patent Owner’s Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Patent Owner respectfully requests rehearing because the Board
`
`misapprehended the significance of Patent Owner’s argument regarding
`
`Petitioner’s failure to address objective indicia of nonobviousness.
`
`III. CONCLUSION
`
`For at least the foregoing reasons, Finjan respectfully submits that the Board
`
`overlooked or misapprehended the arguments presented in the POPR that
`
`demonstrate that Petitioner failed to meet its burden to show a reasonable
`
`likelihood of success on the sole instituted ground. Finjan requests, therefore, that
`
`the Board modify its Institution Decision and decline to subject claims 1, 2, 5, 6,
`
`10, 11, 14, and 15 of the ‘494 Patent to inter partes review under 35 U.S.C.
`
`§ 103(a) in view of Swimmer.
`
`- 14 -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`Dated: April 1, 2016
`
`(Case No. IPR2015-01892)
`
`- 15 -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Partial Request for Rehearing
`
`Pursuant to 37 C.F.R. §§ 42.71(c) and 42.71(d) was served on April 1, 2016, by
`
`filing this document through the Patent Review Processing System as well as
`
`delivering via electronic mail upon the following counsel of record for Petitioner:
`
`Daniel A. Crowe
`BRYAN CAVE LLP
`One Metropolitan Square
`211 N. Broadway, Suite 3600
`St. Louis, MO 63102
`dacrowe@bryancave.com
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`Joseph J. Richetti.
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`joe.richetti@bryancave.com
`
`
`
`- 16 -
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
