UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SYMANTEC CORP.,
`
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`
`Patent Owner.
`
`____________________
`
`Case IPR2015-01897
`
`Patent 8,677,494
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`
`
`
`I. 
`
`II. 
`
`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1 
`
`THE ‘494 PATENT ......................................................................................... 2 
`
`A.
`
`  Overview ............................................................................................... 2 
`
`B.
`
` 
`
`C.
`
` 
`
`Challenged Claims ................................................................................ 5 
`
`Prosecution History of the ‘494 Patent ................................................. 6 
`
`III.  CLAIM CONSTRUCTION ............................................................................ 7 
`
`A.
`
` 
`
`“database” (All Claims) ........................................................................ 8 
`
`IV.  SPECIFIC REASONS WHY THE CITED REFERENCES
`DO NOT INVALIDATE THE CLAIMS, AND WHY INTER
`PARTES REVIEW SHOULD NOT BE INSTITUTED ................................ 11 
`
`A.
`
` 
`
`B.
`
` 
`
`The Cited References Are Not Prior Art ............................................. 11 
`
`Finjan Properly Claims Priority to the ‘194 Patent Under
`35 U.S.C. § 120 ................................................................................... 11 
`
`1. 
`
`2. 
`
`3. 
`
`The ‘494 Patent and its Ancestral Applications Contain
`Specific References to the Earlier Filed Applications .............. 12 
`
`Each Application in the Priority Chain Satisfies the
`Written Description Requirement of 35 U.S.C. § 112 .............. 16 
`
`The Delayed Priority Claim Was Unintentional ....................... 26 
`
`V. 
`
`CONCLUSION .............................................................................................. 29 
`
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Advanced Display Sys., Inc. v. Kent State,
`212 F.3d 1272 (Fed. Cir. 2000) .......................................................................... 18
`
`Apple Inc. v. Samsung Elecs. Co.,
`No. 12-cv-00630-LHK, 2014 U.S. Dist. LEXIS 8157
`(N.D. Cal. Jan. 21, 2014) .................................................................................... 22
`
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 23
`
`Encyclopedia Britannica, Inc. v. Alpine Elecs. of Am., Inc.,
`609 F.3d 1345 (Fed. Cir. 2010) .......................................................................... 12
`
`Focal Therapeutics, Inc. v. Senorx, Inc.,
`IPR2014-00116, Paper 8 (PTAB Apr. 22, 2014). .............................................. 22
`
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) .................................................................... 21, 23
`
`Kingsdown Med. Consultants, Ltd. v. Hollister Inc.,
`863 F.2d 867 (Fed. Cir. 1988) ............................................................................ 28
`
`Ledergerber Med. Innovations, LLC v. W.L. Gore & Assocs., Inc.,
`736 F.Supp.2d 1172 (N.D. Ill. 2010) .................................................................. 16
`
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 16
`
`Medtronic Corevalve, LLC v. Edwards Lifesciences Corp.,
`741 F.3d 1359 (Fed. Cir. 2014) .......................................................................... 13
`
`Medtronic Vascular, Inc. v. Advanced Cardiovascular Sys., Inc.,
`614 F. Supp. 2d 1006 (N.D. Cal. 2009) .............................................................. 24
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
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`Microsoft Corp. v. Proxyconn, Inc.,
`Nos. 2014-1542, 2014-1543, 2015 WL 3747257
`(Fed. Cir. June 16, 2015) ...................................................................................... 9
`
`Purdue Pharm. Prods., L.P. v. Actavis Elizabeth, LLC,
`No. 12-5311 (JLL), 2014 U.S. Dist. LEXIS 80920
`(D.N.J. June 11, 2014) ........................................................................................ 23
`
`Round Rock Research, LLC v. Sandisk Corp.,
`No. 12-cv-00569-SLR, 2015 U.S. Dist. LEXIS 13080
`(D. Del. Feb. 4, 2015) ......................................................................................... 24
`
`SkinMedica, Inc. v. Histogen Inc.,
`No. 09-CV-122 JLS NLS, 2011 WL 2066619
`(S.D. Cal. May 24, 2011) .................................................................................... 23
`
`Sophos, Inc., v. Finjan, Inc.,
`Case No. IPR2015-00907, Paper 8 (PTAB Sept. 24, 2015) ............................. 8, 9
`
`Sophos, Inc. v. Finjan, Inc.,
`Case No. IPR2015-01022, Paper 7 (PTAB Sept. 24, 2015) ............................. 1, 8
`
`Star Scientific Inc. v. R.J. Reynolds Tobacco Co.,
`537 F.3d 1357 (Fed. Cir. 2008) ......................................................................... 29
`
`Therasense, Inc. v. Becton, Dickenson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011) (en banc) .................................................... 28, 29
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`CBM2014-0082, Paper 12 (PTAB Oct. 16, 2014) ............................................... 2
`
`X2Y Attenuators, LLC, v. Int’l Trade Comm’n,
`757 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 21
`
`Zenon Environmental, Inc. v. U.S. Filter Corp.,
`506 F.3d 1370 (Fed. Cir. 2007) .................................................................... 18, 23
`
`Statutes
`
`35 U.S.C. § 102(b) ................................................................................................... 11
`
`35 U.S.C. § 112 ............................................................................................ 12, 16, 22
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`35 U.S.C. § 120 .................................................................................................passim
`
`35 U.S.C. § 311(b) ................................................................................................... 28
`
`Other Authorities
`
`37 C.F.R. § 1.57(b) .................................................................................................. 18
`
`37 C.F.R. § 1.57(c) ................................................................................................... 18
`
`37 C.F.R. § 1.57(d)(1) .............................................................................................. 18
`
`37 C.F.R § 1.78 .................................................................................................. 15, 26
`
`37 C.F.R § 1.78(e) .............................................................................................. 26, 27
`
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`
`I.
`
`INTRODUCTION
`
`On September 11, 2015, Symantec Corp. (“Petitioner”) submitted a Petition
`
`to institute an inter partes review (“IPR”) of U.S. Patent No. 8,677,494 (“the ‘494
`
`Patent”) challenging claims 1, 2, 5, 6, 10, 11, 14, and 15. Petitioner has failed to
`
`show a reasonable likelihood of unpatentability over the challenged claims.
`
`Indeed, Board previously declined to institute a trial for inter partes review of the
`
`‘494 Patent in Sophos, Inc. v. Finjan, Inc., Case No. IPR2015-01022, Paper 7
`
`(PTAB Sept. 24, 2015).
`
`Finjan, Inc.’s (“Finjan” or “Patent Owner”) Preliminary Response relates to
`
`a fundamental aspect of patent law—the earliest filing date on which a patent may
`
`rely, referred to as the “priority date.” The priority date serves as the cutoff-date
`
`for prior art. The ‘494 Patent claims priority to a number of U.S. patents and
`
`provisional patent applications dating back to 1997. Petitioner now challenges the
`
`right of the ‘494 Patent to claim priority back to the earliest application in the
`
`patent family and indeed cites an application from the priority chain against its
`
`claims. However, Petitioner’s arguments are meritless. The ‘494 Patent properly
`
`claims priority back to one of the very references (Touboul I) cited against the
`
`claims—the primary reference cited in both of Petitioner’s proposed grounds—and
`
`that priority claim renders both Touboul I and another one of Finjan’s patents
`
`(Touboul II) cited against the claims inoperative as prior art. Accordingly, the
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`Board should not institute inter partes review because the Petition fails to make the
`
`requisite threshold showings.
`
`Furthermore, although there are a variety of reasons why the ‘494 Patent is
`
`valid over Petitioner’s asserted prior art references, this Preliminary Response
`
`focuses on only limited reasons why inter partes review should not be instituted.
`
`See Travelocity.com L.P. v. Conos Techs., LLC, CBM2014-00082, Paper 12 at 10
`
`(PTAB Oct. 16, 2014) (“[N]othing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason.”). In view of IPR2015-01545, Paper No. 9 (PTAB Dec. 11, 2015), Patent
`
`Owner specifically reserves its right to dispute that Symantec has correctly named
`
`all real-parties-in-interest in the event that sufficient factual bases supporting such
`
`a challenge surface during the pendency of this proceeding. The deficiencies of
`
`the Petition noted herein, however, are more than sufficient for the Board to find
`
`that Petitioner has not met its burden to demonstrate a reasonable likelihood that it
`
`would prevail in showing unpatentability of any of the challenged claims.
`
`II. THE ‘494 PATENT
` Overview
`A.
`Patent Owner’s ‘494 Patent claims priority to U.S. Patents Nos. 8,079,086
`
`(Ex. 1002, “the ‘086 Patent”), 7,613,926 (Ex. 1003, “the ‘926 Patent”), 7,058,822
`
`(Ex. 1004, “the ‘822 Patent”), 6,804,780 (Ex. 1006, “the ‘780 Patent”), 6,092,194
`
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`(Ex. 1007, “the ‘194 Patent”), 6,480,962 (Ex. 1009, “the ‘962 Patent”), and
`
`6,167,520 (Ex. 1010, “the ‘520 Patent”). (Ex. 1001 at 1:7–55). The ‘494 also
`
`claims the benefit of U.S. Provisional Application Nos. 60/205,591 (Ex. 1005, “the
`
`‘591 Application”) and 60/030,639 (Ex. 1008, “the ‘639 Application”). Id. The
`
`earliest priority date claimed on the face of the ‘494 Patent is the filing date ‘639
`
`Application, November 8, 1996. Id. As will be demonstrated below, the ‘494
`
`Patent is entitled, at least, to a priority date of November 7, 1997, which
`
`corresponds to the filing date of U.S. Patent Application No. 08/964,388, which
`
`matured into the ‘194 Patent.
`
`The systems and methods of the ‘494 Patent protect personal computers
`
`(PCs) and other network accessible devices from “suspicious or other ‘malicious’
`
`operations that might otherwise be effectuated by remotely operable code.” ‘494
`
`Patent at 2:51–56.
`
`The protection paradigm involves deriving security profile data for an
`
`incoming Downloadable. ‘494 Patent at 21:21; ‘194 Patent at 5:38–45; 9:20–22.
`
`The Downloadable security profile (“DSP”) data for each Downloadable includes a
`
`“list of all potentially hostile or suspicious computer operations that may be
`
`attempted by a specific Downloadable.” ‘194 Patent at 5:45–48. Security policies,
`
`which include policies specific to particular users and generic policies, can be
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`compared with the DSP data for an incoming Downloadable to determine whether
`
`to allow or block the incoming Downloadable. ‘194 Patent at 4:18–24.
`
`The derived DSP data is stored in a database. ‘494 Patent at 21:24–25; ‘194
`
`Patent at 4:14–18; 9:52–55. Because DSP data stored in this manner can be
`
`efficiently retrieved when a known Downloadable is encountered, the invention
`
`claimed in the ‘494 Patent allows accurate security decisions to be made without
`
`the need to generate profiles for all incoming Downloadables; additionally, there is
`
`no need for the Downloadable to be scanned for malicious operations at the
`
`destination device since the DSP data already lists malicious operations that may
`
`be attempted by the Downloadable. See ‘194 Patent at 5:38–41. As shown in FIG.
`
`3, for example, DSP Data 310 can be stored in and retrieved from Security
`
`Database 240:
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
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`
`
`See, e.g., id. at 5:38–41 (retrieving DSP data from the security database); and 6:9–
`
`12 (storing DSP data in the security database).
`
`B.
`
` Challenged Claims
`Petitioner challenges eight claims of the ’494 Patent, namely independent
`
`method claim 1 and claims 2, 5, and 6 depending therefrom, and independent
`
`system claim 10 and claims 11, 14, and 15 depending therefrom. Claim 1 is
`
`reproduced below:
`
`1. A computer-based method, comprising the steps of:
`
`receiving an incoming Downloadable;
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`deriving security profile data for the Downloadable, including a
`
`list of suspicious computer operations that may be attempted by the
`Downloadable; and
`
`storing the Downloadable security profile data in a database.
`
`Ex. 1001 at 21:19–25. System claim 10 further recites the components “receiver,”
`
`“Downloadable scanner,” and “database manager.” Id. at 22:7–16. Claims 2 and
`
`11 recite storing a date & time when the Downloadable security profile data was
`
`derived, in the database. Id. at 21:26–28; 22:17–20. Claims 5 and 14 recite
`
`“wherein the Downloadable includes program script.” Id. at 21: 33–34; 22:26–27.
`
`Claims 6 and 15 recite “wherein suspicious computer operations include calls
`
`made to an operating system, a file system, a network system, and to memory.” Id.
`
`at 21:35–37; 22:28–30.
`
`C.
`
`Prosecution History of the ‘494 Patent
`
`
`The ‘494 Patent issued March 18, 2014, from U.S. Patent Application Serial
`
`No. 13/290,708, filed November 7, 2011. A graphical view of the priority chain of
`
`the ‘494 Patent is inset below:
`
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
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`III. CLAIM CONSTRUCTION
`Finjan requests the Board to reject Petitioner’s claim constructions as they
`
`are inconsistent with the disclosure of the ‘494 Patent and the law.
`
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`
`A.
`
`“database” (All Claims)
`
`
`The proper construction of “database” is “a collection of interrelated data
`
`organized according to a database schema to serve one or more applications.”
`
`Ex. 2001 at 3. This construction stays true to the claim language and most
`
`naturally aligns with the patent’s description of the invention as well as the well-
`
`accepted definition of the term. Id. Furthermore, this claim construction has been
`
`applied by every other tribunal that has construed this term. In a district court
`
`litigation pending between Patent Owner and Sophos, Inc., the district court
`
`indicated that Patent Owner’s construction follows the context of the patent and the
`
`well-understood accepted definition for database: “[b]ecause Finjan’s definition
`
`appears to reflect both the context of the patent as well as a well-accepted
`
`definition of the term.” Ex. 2002 at 7. The Board also applied this construction in
`
`two previous inter partes review proceedings: Sophos, Inc. v. Finjan, Inc.,
`
`IPR2015-01022, Paper 7 at 9–10 (PTAB Sept. 24, 2015) (institution denied), the
`
`petition for which was filed against the ‘494 Patent; and Sophos, Inc. v. Finjan,
`
`Inc., IPR2015-00907, Paper 8 at 8–10 (PTAB Sept. 24, 2015) (institution denied,
`
`rehearing request denied), the petition for which was filed against the related ‘926
`
`Patent. See Ex. 2003; Ex. 2004.
`
`Despite these previous confirmations of Patent Owner’s proposed
`
`construction, Petitioner proposes to construe the term “database” as “an organized
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`collection of data” under the BRI. Petition at 30. The goal of Petitioner's
`
`construction is to broaden the term database beyond the specification so that it
`
`reads upon the techniques described in the cited prior art (e.g. a log file). To the
`
`contrary, the Federal Circuit dictates that the broadest reasonable interpretation
`
`requires consideration of specification. See Microsoft Corp. v. Proxyconn, Inc.,
`
`Nos. 2014-1542, 2014-1543, 2015 WL 3747257, at *3 (Fed. Cir. June 16, 2015)
`
`(“[A] construction that is ‘unreasonably broad’ and which does not ‘reasonably
`
`reflect the plain language and disclosure’ will not pass muster.”). FIG. 3 of the
`
`‘194 Patent clearly illustrates that the security database 240 that stores DSP data
`
`310 is completely different than a simple log file (i.e. Event Log 245):
`
`
`
`Petitioner neglects to mention one of the passages of the ‘494 Patent
`
`specifically relied upon by both the district court Finjan, Inc. v. Sophos, Inc. as
`
`well as the Board in Sophos, Inc., v. Finjan, Inc., Case Nos. IPR2015-00907
`
`(institution denied, rehearing request denied) and IPR2015-01022, that led both
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`bodies to the conclusion that the claimed database could not be equated with a
`
`simple log file log file::
`
`The fact that a database is listed along with more simple files does not
`mean that the database includes or is equated with these types of
`files. In fact, one could argue that this list serves to further
`differentiate a database from simpler files.
`
`Ex. 2002 at 5 n.1 (emphasis added); see also Ex. 2003 at 9 (IPR2015-00907
`
`Institution Decision); Ex. 2004 at 9–10 (IPR2015-01022 Institution Decision).
`
`Petitioner also blatantly misrepresents Patent Owner’s position taken in the
`
`concurrent district court litigation. To wit, Petitioner claims that “Patent Owner
`
`agreed that a ‘database’ is a collection of organized data.” Petition at 31 (citing
`
`Ex. 1020 at 4). Not so. Patent Owner’s proposed construction in the concurrent
`
`district court litigation is exactly the construction proposed herein—namely “a
`
`collection of interrelated data organized according to a database schema to serve
`
`one or more applications.” Ex. 1020 at 3.
`
`Because there is no support for Petitioner’s broader construction of
`
`“database” in the ‘494 patent, the PTAB should adopt Patent Owner’s construction
`
`as following the ‘494 patent, adopted well-understood definition, and the law.
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`Inter partes review should not be instituted at least because each proposed
`
`ground of invalidity relies upon the ‘194 Patent, styled Touboul I in the Petition, or
`
`the ‘844 Patent, styled Touboul II in the Petition, which are not prior art to the ‘494
`
`Patent.
`
`A.
`
` The Cited References Are Not Prior Art
`The ‘494 Patent is entitled to claim priority at least to the filing date of the
`
`‘194 Patent, which is November 6, 1997. Accordingly, none of the references
`
`cited against the ‘494 Patent qualify as prior art under 35 U.S.C. § 102(b) as
`
`alleged in the Petition. See Petition at 23–24. The ‘194 Patent (styled Touboul I in
`
`the Petition) issued on July 18, 2000, and Patent Owner’s ‘844 Patent (styled
`
`Touboul II in the Petition) issued on November 28, 2000, both of which dates fall
`
`after the priority date of the ‘494 patent.
`
`Furthermore, even assuming that the priority date of the ‘494 patent is the
`
`filing date of the ‘822 patent, May 7, 2001, this date still renders Touboul I and
`
`Touboul II inoperative as prior art to the ‘494 Patent.
`
`B.
`
`
`
`Finjan Properly Claims Priority to the ‘194 Patent Under
`35 U.S.C. § 120
`
`Finjan properly claims a priority date of November 6, 1997, for the ‘494
`
`Patent under 35 U.S.C. § 120. Under this statute, there are four requirements for
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`an application to obtain the benefit of an earlier filing date of a previously filed
`
`application: (1) the invention in the application must be disclosed in the original
`
`application pursuant to 35 U.S.C. § 112; (2) the application must be filed while the
`
`previously filed application is still pending; (3) there must be a common inventor
`
`between both applications; and (4) there must be a specific reference to the earlier
`
`filed application. There is no dispute that the ‘494 Patent, and each application in
`
`the priority chain, satisfy the second and third requirements of 35 U.S.C. § 120,
`
`and each of Petitioner’s other challenges to the priority date of the ‘494 Patent are
`
`wholly deficient.1
`
`1.
`
`The ‘494 Patent and its Ancestral Applications Contain
`Specific References to the Earlier Filed Applications
`
`In each application within the priority chain of the ‘494 patent, Patent Owner
`
`has presented a specific reference to all earlier filed applications in the chain to the
`
`‘194 patent as required under 35 U.S.C. § 120. See Encyclopedia Britannica, Inc.
`
`
`1 Petitioner incorrectly states the ‘822 and ‘780 Patents lacked common
`
`inventorship until Patent Owner “amended the priority claims during an ex parte
`
`reexamination of the ‘822 patent.” Petition at 6. In fact, a Request to Correct
`
`Inventorship was filed while the application that led to the ‘822 patent was
`
`pending. Ex. 2005 at 3–4. The Examiner granted Applicant’s request on August
`
`15, 2005. Id. at 15–17.
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1352 (Fed. Cir. 2010) (holding that 35
`
`U.S.C. § 120 requires each application in the chain of priority to refer to the prior
`
`applications); see also Medtronic Corevalve, LLC v. Edwards Lifesciences Corp.,
`
`741 F.3d 1359, 1365 (Fed. Cir. 2014) (finding that a specific reference requires
`
`identification of a priority reference and a recitation of the family relationship
`
`between the references). In each case, the USPTO has officially acknowledged
`
`Patent Owner’s priority claims had has, indeed, recognized the complete priority
`
`chain from the ‘194 patent to the ‘494 patent.
`
`a. The ‘494 Patent Claims Priority to the ‘194 Patent
`
`On its face, the ‘494 Patent claims priority back to the ‘194 Patent, and
`
`includes a specific reference to each application in the priority chain, including the
`
`‘086 Patent, the ‘926 Patent, the ‘822 Patent, the ‘780 Patent, and the ‘194 Patent.
`
`See ‘494 Patent at 1:7–55. This priority claim was recognized by the USPTO as
`
`shown, for example, on the cover sheet of the ‘494 Patent. ‘494 Patent at Cover
`
`Sheet.
`
`b. The ‘086 Patent Claims Priority to the ‘194 Patent
`
`The ‘494 Patent is a continuation of the ‘086 Patent. On its face, the ‘086
`
`Patent claims priority back to the ‘194 Patent and includes a specific reference to
`
`each application in the priority chain, including the ‘926 Patent, the ‘822 Patent,
`
`the ‘780 Patent, and the ‘194 Patent. See ‘086 Patent at 1:7–35. This priority claim
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`was recognized by the USPTO as shown, for example, on the cover sheet of the
`
`‘086 Patent. Id. at Cover Sheet.2
`
`c. The ‘926 Patent Claims Priority to the ‘194 Patent
`
`The ‘086 Patent is a continuation of the ‘926 Patent. On its face, the ‘926
`
`Patent claims priority back to the ‘194 Patent and includes a specific reference to
`
`each application in the priority chain, including the ‘822 Patent, the ‘780 Patent,
`
`and the ‘194 Patent. See ‘926 Patent at 1:8–32. This priority claim was recognized
`
`by the USPTO as shown, for example, on the cover sheet of the ‘926 Patent. Id. at
`
`Cover Sheet.3
`
`d. The ‘822 Patent Claims Priority to the ‘194 Patent
`
`The ‘926 patent is a continuation of the ‘822 patent. See ‘926 Patent at
`
`Cover Sheet. On its face, the ‘822 Patent includes a specific reference the ‘780
`
`patent, indicating that it is a continuation-in-part of that patent. See ‘822 Patent at
`
`1:11–16. This priority claim was recognized by the USPTO as shown, for
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`example, on the cover sheet of the ‘822 Patent. Id. at Cover Sheet.
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`2 Notably, Petitioner makes the blatantly false assertion that neither the ‘086 Patent
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`nor the ‘926 Patent “include a priority claim or any reference whatsoever to a
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`number of earlier filed applications (i.e. the ‘194 patent…).” Petition at 6.
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`3 See footnote 2, supra.
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`Additionally, Patent Owner filed a Petition to Accept Unintentionally
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`Delayed Priority Claim Under 37 C.F.R § 1.78 during Ex Parte Reexamination of
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`the ‘822 Patent. Ex. 1015 at 7–9. In the Petition, Patent Owner requested
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`acceptance of an unintentionally delayed benefit claim under 35 U.S.C. § 120 for
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`the benefit of the ‘194 and ‘520 patents. Id. The USPTO granted Patent Owner’s
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`Petition on July 25, 2014, thereby recognizing the ‘822 patent’s priority claim to
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`these patents. Id. at 1–3. The USPTO also mailed a Corrected Filing Receipt
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`confirming recognition of Patent Owner’s priority claims to the ‘520 and ‘194
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`patents, the relevant portion of which is reproduced below:
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`
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`Id. at 4–6.
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`e. The ‘780 Patent Claims Priority to the ‘194 Patent
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`The ‘822 patent is a continuation-in-part of the ‘780 Patent. See ‘822 Patent
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`at Cover Sheet. On its face, the ‘780 Patent includes a specific reference the ‘194
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`patent, indicating that it is a continuation of that patent. See ‘780 Patent at 1:7–11.
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`This priority claim was recognized by the USPTO as shown, for example, on the
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`cover sheet of the ‘780 patent. See id. at Cover Sheet.
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`Each Application in the Priority Chain Satisfies the Written
`Description Requirement of 35 U.S.C. § 112
`
`2.
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`An application is entitled to the benefit of the filing date of an earlier
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`application under 35 U.S.C. § 120 if each application in the priority chain complies
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`with the written description requirement of 35 U.S.C. § 112. Ledergerber Med.
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`Innovations, LLC v. W.L. Gore & Assocs., Inc., 736 F.Supp.2d 1172, 1179 (N.D.
`
`Ill. 2010). In order to satisfy the written description requirement, the prior
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`application must describe the invention “in sufficient detail that one skilled in the
`
`art can clearly conclude that the inventor invented the claimed invention as of the
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`filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
`
`Cir. 1997) (citation omitted).
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`a. Continuity of Disclosure Exists for Every Application in the
`Priority Chain for the ‘494 Patent
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`Petitioner asserts that the ‘494 Patent cannot properly claim priority to the
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`‘194 Patent because certain of its ancestors, namely the ‘086, 926, and ‘822 patents
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`allegedly lack written description for a number of elements of the challenged
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`claims. See Petition at 11. To the contrary, each application in the priority chain
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`contains written description support for the challenged claims, and continuity of
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`disclosure exists up to and including the ‘494 Patent without interruption.
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`Petitioner even acknowledges that “[t]hese claim elements and features are
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`described in some of the earliest-filed applications in the priority chain, namely:
`
`the ‘780 patent, the ‘194 patent, and the ‘639 provisional.” Id.
`
`The ‘494 Patent is a continuation of the ‘086 Patent, which is a continuation
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`of the ‘926 Patent, which is a continuation of the ‘822 Patent. See § IV.A. 1,
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`supra. These four patents have nearly identical disclosures. Furthermore, the ‘494
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`Patent incorporates the ‘086, ‘926, and ‘822 Patents by reference. ‘494 Patent at
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`1:7–55. There should be no question then that there is continued disclosure
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`between the ‘494 and ‘822 Patents and, indeed, the Petition does not identify any
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`deficiencies these priority claims. Petitioner contends, however, that because the
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`specification of the ‘086, ‘926, and ‘822 Patents are different from its ancestral
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`applications that “the ‘086, ‘926, and ‘822 patents each constitute a break in the
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`priority chain of the ‘494 patent.” Petition at 11. Not so.
`
`On its face, the ‘822 Patent is a continuation-in-part of and incorporates by
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`reference Finjan’s ‘962 and ‘780 Patents. ‘822 Patent at 1:11–21. The ‘926 Patent
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`is a continuation of the ‘822 patent in incorporates by reference Finjan’s ‘822,
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`‘962, ‘780, and ‘194 patents. ‘926 Patent at 1:8–32. The ‘086 Patent is a
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`continuation of the ‘926 Patent and incorporates by reference Finjan’s ‘926, ‘822,
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`‘962, ‘780, and ‘194 patents. ‘086 Patent at 1:7–35.
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`The patent rules provide that essential material may be incorporated into a
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`patent application by reference, so long as the reference is a U.S. patent or U.S.
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`patent application publication. 37 C.F.R. § 1.57(c). Essential material is defined
`
`as material that is necessary to, inter alia, “[p]rovide a written description of the
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`claimed invention.” 37 C.F.R. § 1.57(d)(1). In order to incorporate a patent or
`
`application by reference in a patent application, the applicant must express a clear
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`intent to incorporate by reference by using the words “incorporate[e]” and
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`“reference” and clearly identify the referenced patent or application. 37 C.F.R.
`
`§ 1.57(b).
`
`The Federal Circuit has stated that “[i]ncorporation by reference provides a
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`method for integrating material from various documents into a host document—a
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`patent or printed publication in an anticipation determination—by citing such
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`material in a manner that makes clear that the material is effectively part of the
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`host document as if it were explicitly contained therein.” Advanced Display Sys.,
`
`Inc. v. Kent State, 212 F.3d 1272, 1282 (Fed. Cir. 2000). “To incorporate material
`
`by reference, the host document must identify with detailed particularity what
`
`specific material in incorporates and clearly indicate where the material is found in
`
`the various documents.” Id. The “standard of one reasonably skilled in the art
`
`should be used to determine whether the host document describes the material to
`
`be incorporated by reference with sufficient particularity.” Zenon Environmental,
`
`Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1384 (Fed. Cir. 2007) (citation and
`
`internal quotation omitted). There can be no dispute that the ‘086, ‘926, and ‘822
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`Patent Owner’s Preliminary Response
`IPR2015-01897 (U.S. Patent No. 8,677,494)
`patents comply with these rules and properly incorporate the ‘962 and ‘780 Patents
`
`by reference:
`
`This application is a continuation of assignee's application Ser. No.
`11/370,114, filed Mar. 7, 2006, now U.S. Pat. No. 7,613,926, entitled
`“Method and System for Protecting a Computer and a Network from
`Hostile Downloadables,” which is a continuation of Ser. No.
`09/861,229, filed on May 17, 2001, now U.S. Pat. No. 7,058,822,
`entitled “Malicious Mobile Code Runtime Monitoring System And
`Methods”, all of which are hereby incorporated by reference. U.S.
`application Ser. No. 09/861,229 claims benefit of provisional
`application Ser. No. 60/205,591, entitled “Computer Network
`Malicious Code Run-time Monitoring,” filed on May 17, 2000 by
`inventors Nimrod Itzhak Vered, et al., which is hereby incorporated
`by reference. U.S. application Ser. No. 09/861,229 is also a
`Continuation-