UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01974
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘633 PATENT ......................................................................................... 4
`
`A. Overview ............................................................................................... 4
`
`B.
`
`Challenged Claims ................................................................................ 7
`
`III. CLAIM CONSTRUCTION .......................................................................... 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“mobile protection code (“MPC”)” (all challenged claims) ............... 10
`
`“information re-communicator” (challenged claims 2, 14, and
`19) ........................................................................................................ 11
`
`“means for receiving downloadable-information” (claim 13) ............ 12
`
`“means for determining whether the downloadable-information
`includes executable code” (claim 13) ................................................. 13
`
`“means for causing mobile protection code to be communicated
`to at least one information-destination of the downloadable-
`information, if the downloadable information is determined to
`include executable code” (claim 13) ................................................... 14
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED ............................................................... 15
`
`A.
`
`B.
`
`The Board Should Deny the Petition Under 35 U.S.C. § 325(d) ........ 17
`
`The Board Should Deny the Petition Under 37 C.F.R. §§
`42.20(c), 42.22(a)(2), and 42.104(b)(4) .............................................. 24
`
`C. Ground 1: Shin does not Render Obvious Claims 1–4, 6–8, 13,
`14, and 19 ............................................................................................ 28
`
`1.
`
`Petitioner Has Not Demonstrated that Shin Discloses “[a
`content inspection engine communicatively coupled to
`the information monitor for/means for] determining [,by
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`the computer] whether the downloadable-information
`includes executable code” (claims 1, 8, and 13) ....................... 30
`
`2.
`
`Petitioner Has Not Demonstrated that Shin Discloses
`“causing mobile protection code to be executed by the
`mobile code executor at a downloadable-information
`destination such that one or more operations of the
`executable code at the destination, if attempted, will be
`processed by the mobile protection code” (claims 14) ............. 32
`
`D. Ground 2: Poison Java Does Not Anticipate Claim 28 ....................... 34
`
`1.
`
`Petitioner Has Not Demonstrated that Poison Java
`Discloses “receiving a sandboxed package that includes
`mobile protection code (“MPC”) and a Downloadable
`and one or more protection policies at a computer at a
`Downloadable-destination” (claim 28) ..................................... 35
`
`E.
`
`Ground 3: Poison Java in view of Shin does not Render Claim 1
`Obvious ............................................................................................... 38
`
`1.
`
`Petitioner Has Not Demonstrated that Poison Java in
`view of Shin Discloses “determining ,by the computer
`whether the downloadable-information includes
`executable code” (claim 1) ........................................................ 39
`
`F.
`
`Ground 4: Poison Java in view of Brown does not Render
`Claims 14, 19, and 34 Obvious ........................................................... 39
`
`1.
`
`2.
`
`Petitioner Has Not Demonstrated that Poison Java in
`view of Brown Discloses “causing mobile protection
`code to be executed by the mobile code executor at a
`downloadable-information destination such that one or
`more operations of the executable code at the destination,
`if attempted, will be processed by the mobile protection
`code” (claim 14) ........................................................................ 39
`
`Petitioner Has Not Demonstrated that Poison Java in
`view of Shin Discloses “a sandboxed package capable of
`being received an initiated by the mobile code executor
`on the computer, the sandboxed package including a
`Downloadable and mobile protection code (“MPC”) for
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`causing one or more Downloadable operations to be
`intercepted by the computer and for processing the
`intercepted operations by the computer, if the
`Downloadable attempts to initiation the operations”
`(claim 34) .................................................................................. 40
`
`V.
`
`THE PROPOSED GROUNDS ARE CUMULATIVE ................................. 41
`
`VI. CONCLUSION .............................................................................................. 41
`
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`Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`EMC Corp, v. Secure Axcess, LLC,
`Case IPR2014-00475, Paper No. 10 (P.T.A.B. Sep. 9, 2014) ............................ 27
`
`Goertek, Inc. v. Knowles Electronics, Inc.,
`IPR2013-00523, Paper 26 (PTAB May 30, 2014) ............................................. 41
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 37, 38
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 38
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Inc.,
`CBM2012-00003, Paper No. 7 (PTAB Oct. 25, 2012) ...................................... 41
`
`Prism Pharma Co., v. Choongwae Pharma Corp.,
`Case No. IPR2014-00315, Paper 14 (PTAB July 8, 2014). ............................... 16
`
`Ring & Pinion Service Inc. v. ARB Corp.,
`743 F. 3d 831 (Fed. Cir. 2014) ........................................................................... 12
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 38
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .......................................................................... 12
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`CBM2014-00082, Paper 12 (PTAB Oct. 16, 2014) ............................................. 4
`
`ZTE Corp. v. Contentguard Holdings, Inc.,
`IPR2013-00136, Paper 31 (Nov. 5, 2013) ................................................... 27, 28
`
`Statutes
`
`35 U.S.C. § 102(a) ................................................................................................... 15
`
`35 U.S.C. § 103 ........................................................................................................ 28
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`Patent Owner’s Preliminary Response
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`35 U.S.C. § 103(a) ................................................................................................... 15
`
`35 U.S.C. § 112(6) ....................................................................................... 12, 13, 14
`
`35 U.S.C. § 112(f) .................................................................................................... 13
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. §§ 42.20(c), 42.22(a)(2), and 42.104(b)(4) ................................. 16, 25, 27
`
`37 C.F.R § 42.22(a)(2) ............................................................................................. 36
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`I.
`
`INTRODUCTION
`
`On September 30, 2015, Palo Alto Networks, Inc. (“Petitioner”) submitted a
`
`Petition to institute inter partes review (“IPR”) of U.S. Patent No. 7,647,633 (Ex.
`
`1001, “the ‘633 Patent”), challenging claims 1–4, 6–8, 13, 14, 19, 28, and 34.
`
`Finjan, Inc. (“Patent Owner”) requests that the Board not institute inter partes
`
`review because Petitioner has not demonstrated a reasonable likelihood that it
`
`would prevail in showing unpatentability of any of the challenged claims on the
`
`grounds asserted in its Petition, as required under 37 C.F.R. § 42.108(c).
`
`The ‘633 Patent generally discloses systems and methods for protecting
`
`network-connectable devices from undesirable downloadables. ‘633 Patent at
`
`1:30–33. One set of independent claims requires, inter alia, receiving
`
`downloadable-information, determining whether downloadable-information
`
`includes executable code and, if the downloadable-information is determined to
`
`include executable code, transmitting mobile protection code to an information
`
`destination of the downloadable-information. See ‘633 Patent at independent
`
`claims 1, 8, and 13. Another set of independent claims requires, inter alia, a
`
`sandboxed package including a Downloadable and mobile protection code. See id.
`
`at independent claims 28 and 34. Yet another independent claim requires (1)
`
`receiving, at the information re-communicator, downloadable-information
`
`including executable code and (2) causing mobile protection code to be executed
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`by the mobile code executor at a downloadable-information destination such that
`
`one or more operations of the executable code at the destination, if attempted, will
`
`be processed by the mobile protection code. See id. at claim 14.
`
`As a result, Finjan’s approach is able to provide efficient and flexible
`
`protection against malicious operations hidden within apparently inert or otherwise
`
`“friendly” downloadable-information, including web pages, streaming media,
`
`transaction-facilitating information, program updates or other downloadable-
`
`information. See id. at 4:16–27.
`
`The Board has already determined, with respect to U.S. Patent 7,058,822
`
`(“the ‘822 Patent”), of which the ‘633 Patent is a continuation, that the techniques
`
`disclosed in the various references cited in Grounds 1–4 of the Petition do not
`
`disclose Finjan’s approach at least because they do not determine whether
`
`downloadable-information includes executable code or form a sandboxed package
`
`including mobile protection code and the downloadable-information. See Ex. 2002
`
`at 5–7. In reversing an Examiner’s decision regarding the ‘822 Patent, the Board
`
`ruled that applet instrumentation does not disclose the claimed determining of
`
`executable code nor the use of a sandboxed package. See id. (affirming the
`
`patentability of the ‘822 Patent in view of applet instrumentation).
`
`The primary references cited in this Petition (i.e. Shin and Poison Java)
`
`disclose the same functionality the Board rejected, namely applet instrumentation.
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`See Ex. 1009 (“Shin”) at Abstract; and Ex. 1004 (“Poison Java”) at 5, col. 3–6,
`
`col. 1. In fact, Poison Java discusses the exact same technology that the Board
`
`distinguished, namely AppletTrap. See Ex. 2005 (demonstrating that Ji U.S. Patent
`
`5,983,348, which issued to Trend Micro, Inc., is directed to its AppletTrap
`
`product). Thus, the Board should deny Grounds 1–4 under 35 U.S.C. § 325(d)
`
`because the Petition inappropriately recycles the same applet instrumentation
`
`arguments already presented to the Board and which the Board already rejected in
`
`the reexamination of the related ‘822 Patent.
`
`Like the ex parte reexamination in which the Board confirmed the
`
`patentability of the ‘822 claims, the instant Petition never identifies how applet
`
`instrumentation references disclose or render obvious each of the claim elements.
`
`Instead, Petitioner attempts to abstract away claim elements by lumping them
`
`together with other distinct claim elements. Indeed, none of the Petition’s grounds
`
`identifies how the prior art discloses determining “whether the downloadable-
`
`information includes executable code,” forms the claimed “sandboxed package
`
`including the MPC and the Downloadable,” or “one or more operations of the
`
`executable code.” At best, both Shin and Poison Java simply modify every applet
`
`encountered into an instrumented applet without making the required executable
`
`code determination, forming the claimed “sandboxed package,” or processing one
`
`or more operations of the executable code at the destination, which was received at
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`an information re-communicator. Brown, which is directed towards a Java-
`
`enabled Web browser, does not cure these fatal deficiencies in the primary
`
`references. Ex. 1041 (“Brown”).
`
`Although there are a variety of reasons why the ‘633 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.”). Patent Owner specifically reserves its right to dispute that Petitioner 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 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 ‘633 PATENT
`A. Overview
`Patent Owner’s ‘633 Patent claims priority to a number of patents and patent
`
`applications, including U.S. Provisional Patent Application No. 60/205,591 and
`
`U.S. Patents Nos.7,058,822 (“the ‘822 Patent”), 6,804,780 (“the ‘780 Patent”),
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`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`6,092,194 ( “the ‘194 Patent”), 6,480,962 (“the ‘962 Patent”), and 6,167,520 with
`
`an earliest claimed priority date of January 29, 1997. See Ex. 2003 at 1.
`
`The ‘633 Patent describes systems and methods for protecting against
`
`executable code downloaded from remote sites, such as web servers. ‘633 Patent at
`
`Abstract. In particular, the ‘633 Patent describes a network “re-communicator”
`
`that intercepts downloadable-information and determines whether the
`
`downloadable-information includes executable code (i.e. is a “Downloadable”).
`
`Id. at 2:39–44. For this purpose, the ‘633 Patent further discloses a detection
`
`engine that is able to determine whether the downloadable-information includes
`
`executable code, thus identifying that the downloadable is a “detected-
`
`downloadable.” ‘633 Patent at 12:8–17. If the downloadable-information includes
`
`executable code, in one example, the re-communicator causes the mobile
`
`protection code (“MPC”) to be transferred to the destination. ‘633 Patent at 2:66–
`
`3:4.
`
`The MPC and protection policies can be packaged with the downloadable-
`
`information in a “sandbox.” Id. “The sandboxed package includes mobile
`
`protection code (‘MPC’) for causing one or more predetermined malicious
`
`operations or operation combinations of a Downloadable to be monitored or
`
`otherwise intercepted.” Id. at 3:7–11. When an undesirable operation is
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`intercepted, the protection policy causes one or more predetermined operations to
`
`be performed. Id. at 3:11–16.
`
`As noted in the Background of the Invention Section, the invention disclosed
`
`and claimed in the ‘633 Patent provided distinct advantages over the virus
`
`protection paradigms that existed at the time:
`
`To make matters worse, certain classes of viruses are not well
`recognized or understood, let alone protected against. It is observed by
`this inventor, for example, that Downloadable information comprising
`program code can include distributable components (e.g. Java™
`applets and JavaScript scripts, ActiveX™ controls, Visual Basic, add-
`ins and/or others). It can also include, for example, application
`programs, Trojan horses, multiple compressed programs such as zip
`or meta files, among others. U.S. Pat. No. 5,983,348 to Shuang,
`however, teaches a protection system for protecting against only
`distributable components
`including “Java applets or ActiveX
`controls”, and further does so using resource intensive and high
`bandwidth static Downloadable content and operational analysis, and
`modification of the Downloadable component; Shuang further fails to
`detect or protect against additional program code included within a
`tested Downloadable.
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`Id. at 1:58–2:6. Notably, the Poison Java article cited against the claims discusses
`
`“InterScan AppletTrap,” which is the product that corresponds to the Shuang (Ji)
`
`patent discussed in this section.1 See Ex. 2005 at 1.
`
`B. Challenged Claims
`Petitioner challenges claims 1, 4–6, 8, 9, 12, 16–20, 22, 24, and 27 of the
`
`‘633 Patent, of which claims 1, 4, 9, 12, and 16 are independent. Claim terms
`
`specifically discussed in this Patent Owner’s Preliminary Response are highlighted
`
`below. Claim 1 recites:
`
`1. A computer processor-based method, comprising:
`
`receiving, by a computer, downloadable-information;
`determining, by the computer, whether the downloadable-
`
`information includes executable code; and
`
`based upon the determination, transmitting from the computer
`mobile protection code to at least one information-destination of the
`downloadable-information,
`if
`the downloadable-information
`is
`determined to include executable code.
`
`‘633 Patent at 20:54–62 (emphasis added). Claim 8 recites:
`
`8. A computer processor-based system for computer security, the
`system comprising
`
`
`1 A feature-by-feature comparison of the description of AppletTrap with U.S.
`
`Patent No. 5,983,348 (“Ji”) (Ex. 2006) is provided below in § IV.A.
`
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`an information monitor for receiving downloadable-information
`
`by a computer;
`a content inspection engine communicatively coupled to the
`
`information monitor for determining, by the computer, whether
`the downloadable-information includes executable code; and
`
`a protection agent engine communicatively coupled to the
`content inspection engine for causing mobile protection code
`(“MPC”) to be communicated by the computer to at least one
`information-destination of
`the downloadable-information,
`if
`the
`downloadable-information is determined to include executable code.
`
`Id. at 21:19–32 (emphasis added). Claim 13 recites:
`
`13. A processor-based system for computer security, the system
`comprising:
`
`means for receiving downloadable-information;
`means
`for determining whether
`the downloadable-
`
`information includes executable code; and
`
`means for causing mobile protection code to be communicated
`to at
`least one
`information-destination of
`the downloadable-
`information, if the downloadable-information is determined to include
`executable code.
`
`Id. at 21:49–57 (emphasis added). Claim 14 recites:
`
`14. A computer program product, comprising a computer usable
`medium having a computer readable program code therein, the
`computer readable program code adapted to be executed for computer
`security, the method comprising:
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`providing a system, wherein the system comprises distinct
`
`software modules, and wherein the distinct software modules
`comprise an information re-communicator and a mobile code
`executor;
`re-communicator,
`information
`the
`at
`receiving,
`
`downloadable-information including executable code; and
`causing mobile protection code to be executed by the mobile
`
`code executor at a downloadable-information destination such
`that one or more operations of the executable code at the
`destination, if attempted, will be processed by the mobile
`protection code.
`
`Id. at 21:58–22:5 (emphasis added). Claim 28 recites:
`
`28. A processor-based method, comprising:
`includes mobile
`receiving a sandboxed package that
`
`protection code (“MPC”) and a Downloadable and one or more
`protection policies at a computer at a Downloadable-destination;
`
`causing, by the MPC on the computer, one or more operations
`attempted by the Downloadable to be received by the MPC;
`
`receiving, by the MPC on the computer, an attempted operation
`of the Downloadable; and
`
`initiating, by the MPC on the computer, a protection policy
`corresponding to the attempted operation.
`
`Id. at 22:52–63 (emphasis added). Claim 34 recites:
`
`34. A processor-based system for computer security, the system
`comprising:
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`a mobile code executor on a computer for initiating received
`
`mobile code; and
`
`a sandboxed package capable of being received and
`
`initiated by the mobile code executor on the computer, the
`sandboxed package
`including a Downloadable and mobile
`protection code (“MPC”) for causing one or more Downloadable
`operations to be intercepted by the computer and for processing the
`intercepted operations by the computer, if the Downloadable attempts
`to initiate the operations.
`
`Id. at 23:17–28 (emphasis added).
`
`III. CLAIM CONSTRUCTION
`A.
`“mobile protection code (“MPC”)” (all challenged claims)
`Petitioner argues that “mobile protection code” should be construed as “code
`
`that, at runtime, monitors or intercepts actually or potentially malicious code
`
`operations,” because this was supposedly the same construction provided by the
`
`district court’s claim construction order in the Blue Coat Litigation. Petition at 19.
`
`But Petitioner failed to present the whole story by omitting the fact that the same
`
`claim construction order also found “that the MPC does not modify executable
`
`code found in the downloadable-information.” Ex. 1036 at 10. While Patent
`
`Owner advocated against the Court’s construction in the Blue Coat Litigation,
`
`Patent Owner submits that in the interest of accuracy the full description provided
`
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`by the district court’s claim construction should be noted rather than Petitioner’s
`
`partial construction.
`
`“information re-communicator” (challenged claims 2, 14, and 19)
`
`B.
`The term “information re-communicator” means “a device or process that is
`
`capable of receiving and transferring a Downloadable.” This definition is
`
`explicitly provided in the specification of the ‘633 Patent:
`
`In one aspect, embodiments of the invention provide for determining,
`within one or more network “servers” (e.g. fireballs [sic], resources,
`gateways, email relays or other devices/processes that are capable of
`receiving-and-transferring
`a Downloadable) whether
`received
`information includes executable code (and is a “Downloadable”).
`
`‘633 Patent at 2:39–44. As explained in the ‘633 Patent, the term “server” was
`
`specifically designated for convenience as an alternative to the term “re-
`
`communicator” and was meant to encompass “one or more network servers,
`
`firewalls or other network connectable information re-communicating devices:
`
`A protection engine according to an embodiment of the invention is
`operable within one or more network servers, firewalls or other
`network connectable information re-communicating devices (as are
`referred to herein summarily one or more “servers” or “re-
`communicators”).
`
`Id. at 2:58–62.
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`Thus, Petitioner’s proposed construction for the term “information re-
`
`communicator” as a “server” (Petition at 20) is incorrect because it fails to consider
`
`the possibility that the information re-communicator is a firewall, resources, email
`
`relay, or any other device or process that is capable of receiving and transferring a
`
`Downloadable. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
`
`2010) (“Rather, claims should always be read in light of the specification and
`
`teachings in the underlying patent.”).
`
`“means for receiving downloadable-information” (claim 13)
`
`C.
`Governed by 35 U.S.C. § 112(6), this term has the function: receiving
`
`downloadable-information, and the structure: recommunicating device. See ‘633
`
`Patent at 5:34-37 (providing examples of “information re-communicating devices”
`
`for performing the relevant function of “receiving downloadable-information.”).
`
`In contrast, Petitioner proposes a construction that is contrary to the law.
`
`Petitioner’s construction requires “equivalents known to persons of ordinary skill
`
`at the time the ‘633 Patent was filed.” However, the law provides that equivalents
`
`are determined at the time of issuance. Ring & Pinion Service Inc. v. ARB Corp.,
`
`743 F. 3d 831, 835 (Fed. Cir. 2014). Thus, as a matter of law, Petitioner’s claim
`
`construction arguments fail.
`
`Further, Petitioner’s construction includes the extraneous limitation that the
`
`structure includes equivalents. This limitation is unnecessary as the statute already
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`provides that the structure of a means-plus-function claim includes the
`
`“equivalents thereof.” 35 U.S.C. § 112(f). As such, there is no need to include
`
`“equivalents known to persons of ordinary skill in the art” in the construction of
`
`this term.
`
`Lastly, Petitioner’s claim construction excludes examples from the
`
`specification. Specifically, the specification of the ‘633 Patent provides that
`
`servers, firewalls, resources, gateways, email relays or other information re-
`
`communicating devices receive downloadable information. ‘633 Patent at 5:34-39.
`
`In other embodiments, ISP and Internet servers can receive downloadable
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`information. Id. at 7:8-11 Because Petitioner’s construction excludes these
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`embodiments, the proper structure for receiving Downloadable-information is a
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`recommunicating device.
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`D.
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`“means for determining whether the downloadable-information
`includes executable code” (claim 13)
`
`Governed by 35 U.S.C. § 112(6), this term has the function: determining
`
`whether the downloadable-information includes executable code, and the structure:
`
`detection engine. See ‘633 Patent at 12:8-26 and Figs. 4 & 5 (describing various
`
`components of “detection engine 402”).
`
`Similar to the means-plus-function term described above, Petitioner
`
`proposes a construction for this term that is contrary to the law and unnecessary.
`
`Petition at 21 (asserting that the “means for determining whether the downloadable
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`information includes executable code” recited in claim 13 is “code detection
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`engine and equivalents known to persons of ordinary skill in the art at the time
`
`the ’633 patent was filed.”) (emphasis added). For the same reasons noted above,
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`Petitioner’s construction should be rejected because it does not match the legal
`
`standard, and further, is unnecessary and it does not define the appropriate
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`structure for the function recited.
`
`E.
`
`“means for causing mobile protection code to be communicated to
`at least one information-destination of the downloadable-
`information, if the downloadable information is determined to
`include executable code” (claim 13)
`
`Governed by 35 U.S.C. § 112(6), this term has the function: causing
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`mobile protection code to be communicated to at least one information destination
`
`of the downloadable information, if the downloadable information is determined to
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`include executable code, and the structure: recommunicating device. See ‘633
`
`Patent at 5:34-47 (providing examples of “information re-communicating devices”
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`for performing the relevant function of “causing mobile protection code (‘MPC’)
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`and downloadable protection policies to be communicated to . . . information
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`destinations.”).
`
`Similar to the means plus function terms described above, Petitioner
`
`proposes a construction for this term that is contrary to the law and unnecessary.
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`Petition at 23 (asserting that the “means for causing” recited in claim 13 is
`
`“packaging engine and equivalents known to persons of ordinary skill in the art
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`

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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
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`at the time the ’633 patent was filed.”). For the same reasons noted above,
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`Petitioner’s construction should be rejected because it does not match the legal
`
`standard, and further, is unnecessary and it does not define the appropriate
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`structure for the function recited.
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`
`Petitioner’s four proposed Grounds rely on three references.
`
`Ground 1 proposes that Insik Shin et al, Java Bytecode Modification and
`
`Applet Security,” Technical Report, Computer Science Department, Stanford
`
`University (Ex. 1009, “Shin”) renders claims 1–4, 6–8, 13, 14, and 19 obvious
`
`under 35 U.S.C. § 103(a).
`
`Ground 2 proposes that Eva Chen, Poison Java, IEEE Spectrum (Ex. 1004,
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`“Poison Java”) anticipates claim 28 under 35 U.S.C. § 102(a).
`
`Ground 3 proposes that Shin in view of Poison Java renders claim 1 obvious
`
`under 35 U.S.C. § 103(a).
`
`Ground 4 proposes that Poison Java in view of Brown et al., Using Netscape
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`3 (Ex. 1041, “Brown”) renders claims 14, 19, and 34 obvious under 35 U.S.C.
`
`§ 103(a).
`
`As a threshold matter, the Board should deny Grounds 1–4 under 35 U.S.C.
`
`§ 325(d) because Petitioner simply relies on Shin and Poison Java to recycle
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`Patent Owner’s Preliminary Response
`IPR2015-01974 (U.S. Patent No. 7,647,633)
`
`substantially the same art and/or arguments previously presented to the Office.
`
`Patent Owner should not be required to defend a multiplicity of challenges to the
`
`‘633 Patent based on substantially the same prior art and arguments that have
`
`already been presented to and considered by the USPTO. See Prism Pharma Co.,
`
`v. Choongwae Pharma Corp., Case No. IPR2014-00315, Paper 14 at 12–13
`
`(PTAB July 8, 2014).
`
`Furthermore, the Board should deny Grounds 1–4 under 37 C.F.R. §§
`
`42.20(c), 42.22(a)(2), and 42.104(b)(4), because the Petition does not identify how
`
`the references disclose or render obvious each of the claim elements, including the
`
`“downloadable-information” and “executable code” elements recited in claims 1,
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`8, and 13; the “sandboxed package,” “mobile protection code,” and
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`“Downloadable” elements recited in claims 29 and 34, and the “one or more
`
`operations of the executable code” element recited in claim 14. Rather, Petitioner
`
`effectively invites the Board to make the required identifications. But it is
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`Petitioner’s burden to “establish that it is entitled to the requested relief” and to do
`
`so “[t]he petition must specify where each element of the claim is found in the
`
`prior art” and provide “a detailed explanation of the significance of the evidence.”
`
`37 C.F.R. §§ 42.20(c), 42.22(a)(2), and 42.104(b)(4). Because the Petition fails to
`
`even make the threshold identification of claim elements, the Board should decline
`
`to institute a trial.
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`Patent Owner’s Preliminary