UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`SYMANTEC CORP., and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-018921
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`ON TESTIMONY OF JACK W. DAVIDSON
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`SYMANTEC CORP., and
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-018921
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`ON TESTIMONY OF JACK W. DAVIDSON
`
`
`1 Case IPR2016-00890 has been joined with the instant proceeding.
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Patent Owner Finjan, Inc. submits the following observations of the
`
`November 2, 2016 cross-examination of Jack W. Davidson (Ex. 2041):
`
`Swimmer’s Audit Trail is a Log File, Not a Database
`
`1. In Exhibit 2041, pg. 76, lines 16-20, the witness testified:
`
`Q.· · ·Do you agree with Swimmer that an audit trail is a
`
`sequential file?
`
`A.· · ·The way he produces it, yes, it’s in order.· So, yes, it has
`
`the attribute of being sequential.
`
`This testimony is relevant because Dr. Davidson conceded that Swimmer’s audit
`
`trail is a sequential file because it is produced in order. This testimony is also
`
`relevant because it shows that Swimmer’s audit trail is a log file or event log,
`
`which is contrary to Petitioner’s argument that Swimmer’s audit trail is a database.
`
`2. In Exhibit 2041, pg. 34, lines 9-19, the witness testified:
`
`Q.· · ·So it would be fair to say that traditionally one would
`
`think of a log file as a sequential file, correct?
`
`A.· · ·Again, I think typically, because you’re -- if you’re
`
`logging data, that implies that things are happening in kind of a time
`
`order, you know, and so you would typically, for convenience, and
`
`maybe efficiency.· Although, again, I would say there’s no
`
`1
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`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`requirement.· But, yeah, I would think traditionally typically that’s the
`
`way it would be done.
`
`This testimony is relevant because Dr. Davidson admits that one would
`
`traditionally equate a sequential file to a log file. This testimony is also relevant
`
`because it is contrary to Petitioner’s argument that Swimmer’s audit trail, which is
`
`admittedly a sequential file, is not a log file or event log.
`
`3. In Exhibit 2041, pg. 34, line 20- pg. 35, line 4, the witness testified:
`
`Q.· · ·Can you explain why is it more convenient and efficient?
`
`A.· · ·Because, you know, like on a disk when you write things
`
`to it, there’s this kind of notion that the operating system kind of
`
`assumes that when you write a piece of data to a file you’re gonna
`
`write at the end of file, so that may be more efficient than having to
`
`seek to a particular record in the file. That seek might take more time.
`
`This testimony is relevant because Dr. Davidson recognizes why it would be more
`
`efficient and convenient to use a log file as opposed to a database, including how
`
`writing to the end of a log file is more efficient than having to seek to a particular
`
`record.
`
`4. In Exhibit 2041, pg. 86, lines 9-15, the witness testified:
`
`Q.· · ·So in your opinion the ‘194 patent distinguishes event
`
`logs from the security database, correct?
`
`2
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`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`A.· · ·Yes.· I mean, they’re being used for two distinct things,
`
`in my opinion.
`
`Dr. Davidson conceded that the ‘194 Patent, which is in incorporated in the ‘494
`
`Patent, makes clear that an event log is distinct from a database. This testimony is
`
`relevant because it contradicts Petitioner’s unreasonably broad interpretation of the
`
`claimed database.
`
`Converting File Formats is Not “Storing...in a Database”
`
`5. In Exhibit 2041, pg. 24, line 16- pg. 25, line 3, the witness testified:
`
`Q.· · ·Is an NADF file in the form of a file?
`
`A.· · ·Yes.
`
`Q.· · ·Is an NADF file the same thing as an audit trail in
`
`Swimmer?
`
`A.· · ·It’s a converted form of the audit trail.· It’s going to be
`
`called, I think the term is normalized audit data file.· So it has a
`
`slightly different, you know, format, but the information contained in
`
`an NADF file is the same as what was, you know, would be in an
`
`audit trail file.· They’re semantically equivalent and they have exactly
`
`the same information.
`
`This testimony is relevant because Dr. Davidson recognizes that an NADF file is in
`
`the form of a file, and that when an audit trail is converted into an NADF file it has
`
`3
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`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`exactly the same information as an audit trail. The only difference is that an NADF
`
`file has a slightly different format than an audit trail file. This contradicts
`
`Petitioner’s interpretation that equates the claimed “storing...in a database” to
`
`Swimmer’s “converting” (i.e., an audit trail from a native file format to an NADF
`
`file format).
`
`The Claimed List of Suspicious Computer Operations Cannot be
`Created Without Deeming Operations as Suspicious
`6. In Exhibit 2041, pg. 81, lines 10-21, the witness testified:
`
`Q.· · ·My question’s a little different. I’m asking do you agree
`
`that computer operations must first be deemed suspicious in order to
`
`qualify as a list of suspicious computer operations?
`
`A.· · ·I’m sorry, it’s kind of a circular thing.· You’re saying
`
`must be deemed suspicious to be in a list of suspicious.· So, yeah, I
`
`mean, I have to deem it to be suspicious to write it to that list of
`
`suspicious computer operations.· I would agree with that statement.
`
`This testimony is relevant because Dr. Davidson recognizes that the claimed list of
`
`suspicious computer operations cannot be created without the additional step of
`
`deeming certain operations as suspicious. This testimony contradicts Petitioner’s
`
`reply argument that there is no need to deem any operations as suspicious in order
`
`to qualify as a list of suspicious computer operations.
`
`4
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`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`The Claims Require “Storing” After “Deriving”
`
`7. In Exhibit 2041, pg. 57, lines 11-24, the witness testified:
`
`Q.· · ·Do you see the heading “Swimmer Teaches ‘Storing’
`
`After ‘Deriving’”?
`
`A.· · ·Yes.
`
`Q.· · ·Do you agree that the claims at issue in the ‘494 patent
`
`requires storing after deriving?
`
`A.· · ·Let me think about that, claims. So it’s receiving
`
`downloadable, deriving.
`
`Yeah, I mean, again, basically, yeah, it’s deriving and then it
`
`says storing in a database.
`
`So there’s deriving the downloadable security profile.
`
`This testimony is relevant because Dr. Davidson agreed that that the claims require
`
`“storing” (i.e. storing DSP in a database) after “deriving” (i.e., storing DSP in a
`
`database). This testimony is contrary to Petitioner’s interpretation, which maps
`
`Swimmer’s functionality of generating of an audit trail to both of these two distinct
`
`claim limitations.
`
`Swimmer’s Emulator Only Interprets Binary Code Not Program Script
`
`8. In Exhibit 2041, pg. 82, line 9- pg. 83, line 4, the witness testified:
`
`5
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Q.· · ·Can you go to page 57 of Exhibit No. 1.· Do you see at
`
`the top where you quote Swimmer at page 8 with the sentence, “An
`
`emulation is a program which accepts the entire instruction set of a
`
`processor as input, and interprets the binary code as the original
`
`processor would.”· Do you see that?
`
`A.· · ·Yes, I do.
`
`Q.· · ·An emulator interprets binary code, correct?
`
`A.· · ·In the case of Swimmer, yes. I mean, you could have an
`
`emulator for other – I mean, you could emulate Java byte codes as
`
`well, but here in Swimmer, yes, we’re emulating the 8086 instruction
`
`set in the binary code.
`
`Q.· · ·A script is not binary code, correct?
`
`A.· · ·Typically, no.· A script would be some high-level
`
`language, you know, Perl, more of a high-level programming
`
`language.· It would not be the -- considered a binary.
`
`This testimony is relevant because it contradicts Petitioner’s position that
`
`Swimmer discloses claims 5 and 14, which require “wherein the Downloadable
`
`includes program script.” Dr. Davidson admits that Swimmer’s emulator only
`
`interprets binary code, but does not interpret program script.
`
`6
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`Improper New Evidence
`
`9. In Exhibit 2041, pg. 12, line 13- pg. 13, line 8, the witness testified:
`
`Q.· · ·So the Denning and Comer references are only cited in
`
`your 2016 declaration, but you were aware of them as of 2015,
`
`correct?
`
`A.· · ·Yeah.· I’ve been aware -- again, these are, like I said, I
`
`know these people so I’m familiar with their work over the years.
`
`Q.· · ·So therefore you could have cited the Comer and
`
`Denning reference in your 2015 declaration, correct?
`
`A.· · ·I, you know, could have but we decided not to.· Again,
`
`this is something I worked with counsel on deciding what references
`
`to include.· You know, I think there’s some desire to not have a huge
`
`number of references in these things, and so you decide -- I mean,
`
`again, I think this is part of the decision process, but I definitely rely
`
`on counsel in terms of, you know, what to include and not include.
`
`This testimony is relevant because Comer (1031) and Denning (1032) are improper
`
`references that Petitioner newly introduced after Patent Owner had already
`
`submitted its Patent Owner Response. Dr. Davidson testified that he was aware of
`
`these references and could have included these two new references in his original
`
`7
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`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`IPR2015-01892 (U.S. Patent No. 8,677,494)
`
`declaration in 2015, but did not include them because Petitioner’s counsel made a
`
`conscious decision not to do so.
`
`
`
`Dated: November 9, 2016
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`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)
`mkim@finjan.com
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
` (Case No. IPR2015-01892) Attorneys for Patent Owner
`
`
`
`8
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Davidson
`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 Motion for Observations on
`
`Testimony of Dr. Davidson was served on November 9, 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 and Joinder
`
`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
`
`9
`
`Petitioner:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`joe.richetti@bryancave.com
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH
`& ROSATI
`701 Fifth Ave., Ste. 5100
`Seattle, WA 98104
`mrosato@wsgr.com
`asbrown@wsgr.com
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