Trials@uspto.gov
`571-272-7822
`
`
`Paper 7
`Entered: March 29, 2016
`
`
`
`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 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`37 C.F.R. § 42.108; 35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 7
`Entered: March 29, 2016
`
`
`
`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 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`37 C.F.R. § 42.108; 35 U.S.C. § 325(d)
`
`
`
`
`
`
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`
`Palo Alto Networks, Inc. (“Petitioner”) filed a Petition to institute
`inter partes review of claims 1−4, 6−8, 13, 14, 19, 28, and 34 of U.S. Patent
`No. 7,647,633 B2 (“the ’633 patent”) pursuant to 35 U.S.C. § 311−319.
`Paper 1 (“Pet.”). Finjan, Inc. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C.
`§ 314.
`For the reasons that follow, we institute inter partes review of claims
`14 and 19, and exercise our discretion under 35 U.S.C. § 325(d) to deny the
`asserted challenges to all other claims.
`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner identifies the ʼ633 patent as the subject matter of various
`district court cases filed in the U.S. District Court for the Northern District
`of California (Case Nos. 3-14-cv-04908, 13-cv-03133, 13-cv-03999, 5-13-
`cv-04398, 13-cv-05808, and 5-15-cv-01353). Pet. 2. Petitioner also states
`that petitions for inter partes review have been filed regarding other patents
`assigned to Patent Owner. Id.
`More importantly, certain claims of the ’633 patent are undergoing ex
`parte reexamination. Id. at 2, 12−13; See Ex. 1003. The final rejection of
`the claims undergoing reexamination has been appealed to the Board. See
`Ex. 1029. The details of the reexamination are discussed in more detail
`below.
`
`2
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`
`B. THE ’633 PATENT (EX. 1001)
`
`The ’633 patent relates to a system and a method for protecting
`network-connectable devices from undesirable downloadable operation. Ex.
`1001, 1:30−33. The patent describes that “Downloadable information
`comprising program code can include distributable components (e.g.
`JavaTM applets and JavaScript scripts, ActiveXTM controls, Visual Basic,
`add-ins and/or others).” Id. at 1:60−63. Protecting against only some
`distributable components does not protect against application programs,
`Trojan horses, or zip or meta files, which are other types of Downloadable
`Information. Id. at 1: 63−2:2. The ’633 patent “enables more reliable
`protection.” Id. at 2:27−28. According to the Summary of the Invention,
`In one aspect, embodiments of the invention provide for
`determining, within one or more network “servers” (e.g.
`firewalls, 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”). Embodiments also
`provide for delivering static, configurable and/or extensible
`remotely operable protection policies to a Downloadable-
`destination, more typically as a sandboxed package including
`the mobile protection code, downloadable policies and one or
`more received Downloadables. Further client-based or remote
`protection code/policies can also be utilized in a distributed
`manner. Embodiments also provide for causing the mobile
`protection code to be executed within a Downloadable-
`destination in a manner that enables various Downloadable
`operations to be detected, intercepted or further responded to
`via protection operations. Additional server/information-
`destination device security or other protection is also enabled,
`among still further aspects.
`
`Id. at 2:39−57.
`
`
`3
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`
`C. ILLUSTRATIVE CLAIM
`
`Challenged claims 1, 8, 13, 14, 28, and 34 are independent.
`Illustrative claims 1 and 14 are reproduced below.
`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.
`
`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:
`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;
`receiving, at the information re-communicator,
`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 20:54–62, 21:58–22:5
`
`4
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`
`
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges claims 1−4, 6−8, 13, 14, 19, 28, and 34 on the
`following grounds:
`Reference(s)
`
`Basis
`§ 103
`§ 102
`§ 103
`§ 103
`
`Challenged Claims
`1−4, 6−8, 13, 14, and 19
`28
`1
`14, 19, and 34
`
`Shin1
`Poison Java2
`Poison Java and Shin
`Poison Java and Brown3
`
`II. ANALYSIS
`Petitioner acknowledges that claims 1−7 and 28−33 of the ’633 patent
`are (or were) subject to ex parte reexamination (Control No. 90/013,016),
`which resulted in a Final Office Action rejecting the claims over (at least in
`part) Ji.4 Pet. 12−13. According to Patent Owner, Ji discloses the same
`“applet instrumentation prior art” that Petitioner asserts as prior art in this
`Petition, namely Poison Java. Prelim. Resp. 17−21. Patent Owner also
`asserts that the same techniques described in Ji are disclosed in Shin.
`
`
` 1
`
` Insik Shin, et al., Java Bytecode Modification and Applet Security
`(Technical Report, Computer Science Dept., Stanford University, 1998),
`https://web.archive.org/web/19980418130342/http://www-cs-
`students.stanford.edu/~ishin/reserach.html (Ex. 1009) (”Shin”).
`2 Eva Chen, Poison Java, IEEE SPECTRUM, August 1999 at 38 (Ex. 1004)
`(“Poison Java”).
`3 Mark W. Brown, et al., SPECIAL EDITION USING NETSCAPE 3, (Que Corp.
`1996) (Ex. 1041) (“Brown”).
`4 U.S. Patent No. 5,983,348 (Ex. 2006) (“Ji”).
`
`5
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`Prelim. Resp. 18. Consequently, Patent Owner argues that the Board should
`deny the Petition under 35 U.S.C. § 325(d) because the Petition relies on the
`same or substantially the same prior art already presented to the Office. Id.
`at 24.
`
`A. SECTION 325(D) ANALYSIS AND DETERMINATION
`
`Section 325(d) states that “[i]n determining whether to institute . . .
`the Director may take into account whether . . . the same or substantially the
`same prior art or arguments previously were presented to the Office.” Thus,
`the threshold issue is whether the grounds presented in the Petition present
`the same or substantially the same prior art and arguments as those presented
`in the reexamination.
`Petition Grounds Based, at Least in Part, on Poison Java
`Poison Java is an article that describes, among many Java-related
`features, a “hybrid solution” called “InterScan AppleTrap,” released by
`Trend Microsystems. Ex. 1004, 42.5 The article states, “AppleTrap first
`weeds out unwanted applets as HTML pages are downloaded.” Id. The
`article also describes running a “certificate check on the applets and
`block[ing] any that are unsigned.” Id. Further, Poison Java describes a
`“preparation process [] referred to as instrumentation[, in which] AppleTrap
`wraps monitoring code around the applet and attaches the security policy
`that determines what system resources it can access.” Id. “The HTML
`page, along with the instrumented applets, is then delivered to the client and
`displayed on its Web browser.” Id. at 43. Petitioner relies on these
`
`
` 5
`
` Page number references use the original pagination.
`
`6
`
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`Patent 7,647,633 B2
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`disclosures to assert that Poison Java anticipates claim 28. Pet. 44–45.
`Petitioner also relies on these disclosures to assert that claims 1, 14, 19, and
`34 would have been obvious over the AppleTrap system alone or in
`combination with either or both of the following: (1) a filtering technique
`disclosed in Shin and (2) Brown’s Java-enabled web browser. See Pet. 48–
`52.
`
`The above subject matter disclosed in Poison Java is the same as the
`subject matter disclosed in Ji, which formed the basis for anticipation and
`obviousness rejections (over Ji and Liu6 and Ji and Golan7) of claims 1−7
`and 28−33 in the reexamination proceeding. See Ex. 1027.8 We are further
`persuaded by Patent Owner’s side-by-side comparison showing the overlap
`of the disclosures in Poison Java and the corresponding disclosures in Ji—
`which on its face shows assignment to Trend Micro, the source of
`AppleTrap (see IPR2015-01999, Ex. 2004) and Poison Java. Prelim. Resp.
`19–21. This side-by-side comparison makes abundantly clear that the applet
`filter and instrumentation process disclosed in Poison Java is the same in all
`material respects as the process described in Ji. See id. (both describing
`filtering by verifying the signature, instrumenting the applet, wrapping
`monitoring code or creating a monitoring package, downloading the
`
`
` 6
`
` U.S. Patent No. 6,058,482 (“Liu”).
`7 U.S. Patent No. 5,974,549 (“Golan”).
`8 We are not aware of either party supplying a copy of the final Office
`Action issued in the reexamination proceeding. Nevertheless, we have
`reviewed that final Office Action, as well as the request for reexamination,
`and we note that the non-final Office Action filed by Petitioner as Exhibit
`1027 includes the same rejections made with respect to claims 1–7 and 28–
`33 as in the final Office Action.
`
`7
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`IPR2015-01974
`Patent 7,647,633 B2
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`instrumented applet at the client, and checking the instrumented instructions
`against a security policy). To be sure, Ji provides more detail of the
`disclosed system than Poison Java. This fact, however, weighs in favor of
`concluding that the Office has considered the relevant applet instrumentation
`techniques disclosed in Ji, which are more detailed than Poison Java’s
`description.
`We conclude that the same or substantially the same prior art or
`arguments were presented to the Office in the ex parte reexamination of
`claims 1−7 and 28−33 as are presented here. Although the Office
`considered the same subject matter of Ji/Poison Java in combination with
`references different from the ones presented in the Petition, we do not find
`those differences material. First, the Examiner rejected all the claims
`challenged in the reexamination as anticipated over Ji, and, therefore, the
`Office has considered the applet instrumentation technology with regards to
`all the limitations recited in those claims. See Ex. 1027 at 7.9 Second, the
`rejections based on an obviousness combination (claims 28−33) relied on
`Golan for the disclosure of a Java sandbox, whereas Petitioner in the instant
`proceeding relies on the instrumented applet as disclosing the sandbox
`limitation. See e.g., Pet. 57 (“The sandboxed package, that is ‘[t]he HTML
`page, along with the instrumented applet, is then delivered to the client and
`displayed on its Web browser.’ Thus the sandboxed package, including an
`applet (‘downloadable-information’) and monitoring code (‘mobile
`
`
`
` 9
`
` Page numbers for Exhibit 1027 refer to pagination on exhibit label in the
`footer of the document, as this Exhibit contains multiple reexamination
`proceeding papers.
`
`8
`
`
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`IPR2015-01974
`Patent 7,647,633 B2
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`protection code’) can be received and initiated by the client web browser
`(‘mobile code executor’)”); Ex. 1027 at 29. That is, the reexamination
`involves consideration of two independent contentions of how the sandbox
`limitation of claim 28 is disclosed: Golan’s Java sandbox and Ji’s
`instrumented applet. One of those contentions has been presented in this
`proceeding, based on the applet instrumentation. Therefore, regardless of
`the additional references considered in reexamination, the Office has
`considered the same contention being presented here, i.e., whether the
`instrumented applet and monitoring code delivered to the client satisfy the
`sandboxed package limitation.
`Having reviewed the reexamination proceeding records and the instant
`Petition, we are persuaded that the subject matter presented in the Petition in
`the Poison Java grounds is the same in all material respects to the
`information presented in the rejections over Ji and considered by the Office
`during reexamination.
`Petition Grounds Based at Least on Shin
`Shin is an article titled “Java Bytecode Modification and Applet
`Security.” Ex. 1009. Petitioner asserts several grounds with Shin as primary
`reference. In particular, Petitioner relies on Shin for its disclosure of
`detecting “applets, (‘downloadable information’ that includes executable
`code)” and “inserting additional bytecode instructions into the applet.” See
`Pet. 29−30. Shin describes the bytecode modification as “put[ting]
`restrictions on applets by inserting additional bytecode instructions that will
`perform the necessary run-time tests.” Ex. 1009, 2. According to the
`Petition, Shin describes a proxy server that,
`
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`
`Inserts “safeguarding code” in the applet before
`passing the applet on to a client’s browser. The
`safeguarding code can be implemented as a class-
`level or method-level modification of the applet.
`When an instrumented applet runs on a client
`computer, the safeguarding code can monitor and
`control resource usage and limit the functionality of
`the applet.
`
`Pet. 26 (internal citations omitted). Petitioner’s description of Shin is
`consistent with Patent Owner’s contention that Shin and Poison Java both
`modify the received applet into instrumented applets. Prelim. Resp. 15−16,
`18. Upon review of Shin and comparison of its disclosure to that which the
`Office considered in the reexamination proceeding, we are persuaded that
`the technology for which Shin is relied upon in the Petition is substantially
`the same as that which was considered relevant in Ji during the
`reexamination proceeding.
`
`For example, Petitioner relies on the detection of applets (by looking
`for <applet> tags) and forwarding the applets with the additional bytecode
`instructions to the client. See Pet. 29–31. In comparison, in the
`reexamination, the Ji reference was considered for its disclosure of detecting
`applets and instrumenting the applet by inserting monitoring functions and
`delivering the instrumented applet code in a file to the client (see Ex. 1027,
`27−28). “Applet” detection techniques have been given full consideration
`during reexamination.
`
`Furthermore, the final rejection is on appeal to the Board, and briefing
`is complete. The arguments presented by Petitioner regarding (1) whether
`detecting an applet satisfies the “determining” limitation; and (2) whether a
`Java file consisting of the instrumented applet code satisfies the “sandboxed
`
`10
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`
`package” limitations are now before the Board. Accordingly, we are
`persuaded that the grounds based on Shin as a primary reference present the
`same or substantially the same prior art or arguments that have been
`presented previously to the Office in another proceeding.
`Claims 8, 13, and 34
`Claims 8, 13, and 34 were not part of the reexamination proceeding.
`
`Claims 8 and 13, however, recite the same “determining” limitation recited
`in claim 1. And claim 34 recites the “sandboxed package” limitation
`similarly recited in claim 28. As discussed above, these limitations have
`been contested in the reexamination proceeding and are involved in the
`pending appeal to the Board.10 Because these claims recite substantially
`similar limitations to claims 1 and 28, and in light of the same or
`substantially the same prior art already considered, we determine that, for
`these claims, the same or substantially the same prior art or arguments
`already have been presented to the Office.
`Claims 14 and 19
`Claims 14 and 19 were not part of the reexamination proceeding.
`These claims also appear to have substantially different elements than the
`claims addressed in the reexamination proceeding. For example, claims 14
`and 19 do not recite either the “determining” limitation or “sandboxed
`package” limitation addressed in the reexamination proceeding. We are not
`
`
`
`
`
`10 We also note that the Board has rendered a decision in Reexamination
`Control No. 90/013,017 involving U.S. Patent No. 7,058,822, which is the
`parent of the ’633 patent and includes claims with claim terms similar to
`those recited in claims 1−7 and 28−33 of the ’633 patent.
`
`11
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`persuaded that these claims stand on the same footing as claims 1−7 and
`28−33 of the ’633 patent. Although the claims 14 and 19 have been
`challenged based on Poison Java and Shin, we are not able to say that the
`arguments presented with regards to claims 14 and 19 have been presented
`previously to the Office. Therefore, we address whether to institute inter
`partes review of these claims further below.
`Exercise of Discretion to Deny Institution of Trial
`We have found that the instant Petition raises the same or
`substantially the same prior art or arguments that were presented previously
`to the Office with regards to challenged claims 1−4, 6−8, 13, 28, and 34.
`We now determine whether we exercise our discretion to deny institution
`under § 325(d).
`We deny the Petition with regard to claims 1−4, 6−8, 13, 28, and 34
`for three reasons. First, the patent-at-issue has undergone a full
`reexamination and there is a pending appeal of that proceeding. The same
`subject matter and arguments were presented in the reexamination
`proceeding and are being presented on appeal to the Board. Second,
`although the references are not identical to the prior art already considered,
`the same subject matter was considered thoroughly in the reexamination
`proceeding. That is, the disclosure of the prior art involved in the
`reexamination was more detailed and comprehensive than the disclosures
`presented in the instant Petition. We are not persuaded that the addition of a
`witness declaration, by itself, is sufficient to persuade us that the thorough
`evaluation the claims underwent in reexamination in light of a more detailed
`disclosure of the same technology as that alleged in the Petition should be
`set aside.
`
`12
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`
`Finally, although we acknowledge that Petitioner has a direct interest
`in pursuing the instant Petition, we also acknowledge the burden and
`expense to Patent Owner in having to defend another challenge of the
`patent-at-issue based on substantially the same prior art and arguments
`already considered. See Prelim. Resp. 16. Further, considering that the
`appeal is far along as all the briefs on the issues have been filed, we
`determine that the resources of the Board should not be expended revisiting
`the issues here.
`Therefore, we deny the Petition regarding claims 1−4, 6−8, 13, 28,
`and 34 because we exercise our discretion under 35 U.S.C. § 325(d).
`
`B. REVIEW OF ARGUMENTS AND EVIDENCE PRESENTED REGARDING
`CLAIMS 14 AND 19
`
`Petitioner asserts that claims 14 and 19 are unpatentable as obvious
`over two grounds: (1) Shin; and (2) Poison Java and Brown. Specifically,
`with regards to Shin, Petitioner contends that Shin discloses Python or Java
`code (Pet. 38−39) with software modules (Pet. 39) implemented in an HTTP
`proxy server or “re-communicator” and a Java Virtual Machine within the
`HTTP client (Pet. 40) to receive “messages” from the web server and to send
`those “messages” to the client (Pet. 41). At the HTTP client, according to
`Petitioner, Shin executes safeguarding code incorporated in modified applets
`to process the operations attempted by the applet, “such as window attacks,
`network accesses, and uniform resource locator (URL) spoofing, by
`performing security checks and raising exceptions if those checks fail.” Pet.
`42−43. Therefore, Shin, according to Petitioner, teaches all the limitations
`recited in claim 14. As for claim 19, Petitioner alleges that Shin teaches the
`further limitation of “at least one of a firewall and a network server” because
`
`13
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`Shin teaches the use of an HTTP proxy server that modifies classes before
`they are received by the browser. Pet. 44.
`Patent Owner challenges Petitioner’s assertions with regards to Shin
`because the claim language “requires that ‘the executable code at the
`destination’ be the same ‘executable code’ received in the preceding
`‘receiving, at the information re-communicator . . .’” Prelim. Resp. 33. This
`argument is not persuasive. The claim recites the “downloadable-
`information” received at the re-communicator as “including executable
`code” (emphasis added). The claim language does not require that the only
`content of the downloadable-information be executable code, nor that it
`include only one executable code. See Ex. 1001, 2:49 (“one or more
`received Downloadables”). The claim further states that one or more
`operations “of the executable code at the destination” are processed, but
`does not require “the executable code” to encompass the entirety or an intact
`version of executable code received. It also appears that the claim may be
`read broadly, but reasonably, to state that “one or more operations of the
`executable code” are at the destination at the time of processing. Therefore,
`we find persuasive, on the current record, Petitioner’s assertion that the
`received “downloadable-information” includes an applet, and that the
`operations “of the executable code at the destination” are operations in the
`modified applet that satisfy the limitation.
`With regards to Poison Java, Petitioner contends that AppleTrap is a
`system including code (Pet. 51) in distinct software modules (Pet. 51) where
`a web browser at the client receives instrumented applets and the HTML
`page (Pet. 52). Petitioner also contends that Brown discloses running
`applets in a Java-enabled web browser. Pet. 52. According to Petitioner,
`
`14
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`
`Poison Java teaches wrapping monitoring code around the applet, such that
`the monitoring code monitor and intercept potentially malicious code. Pet.
`53−54. This monitoring process “processes—and if appropriate, blocks—
`the executable code’s operations.” Id. at 54. Therefore, Petitioner argues
`that Poison Java teaches all the claim limitations of claim 14 with the added
`teaching of a Java-enabled web browser from Brown. As for claim 19,
`Petitioner also contends that Poison Java teaches the further limitation of “at
`least one of a firewall and a network server” because Poison Java describes a
`proxy server. Id.
`Patent Owner challenges Petitioner’s assertions based on the same
`argument proffered with regards to Shin. As stated above, we are not
`persuaded by the argument because it is not commensurate with the scope of
`the claim.
`Based on our review of the information presented in the Petition and
`the Preliminary Response, we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing in its contention that claims 14 and 19
`are unpatentable based on the following grounds:
`1) Obviousness over Shin; and
`2) Obviousness over Poison Java and Brown.
`
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`
`III. CONCLUSION
`For the foregoing reasons, we conclude that the instant Petition raises
`the same or substantially the same prior art or arguments as those previously
`presented to the Office with regards to claims 1−4, 6−8, 13, 28, and 34. In
`light of the circumstances of the present case, we exercise our discretion not
`to institute inter partes review of the ’633 patent on those claims. With
`regard to claims 14 and 19 we determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing on its contention of unpatentability as to
`both claims as follows:
`1) Obviousness over Shin; and
`2) Obviousness over Poison Java and Brown.
`The Board has not made a final determination on the patentability of
`any challenged claim. Nor has the Board made a final conclusion as to the
`claim construction of any terms addressed in this Decision.
`
`IV. ORDER
`It is ORDERED that the Petition is denied with regard to all grounds
`asserted for claims 1−4, 6−8, 13, 28, and 34, and no trial is instituted on
`those claims.
`FURTHER ORDERED that the Petition is granted for claims 14 and
`19, and we institute inter partes review of the ’633 patent on the grounds
`identified in the Conclusion for these claims; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ’633 patent is hereby instituted with trial commencing
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and 37
`C.F.R. § 42.4, notice is hereby given of the institution of trial.
`
`16
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`
`17
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`PETITIONER:
`Orion Armon
`Max Colice
`Jennifer Volk
`Brian Eutermoser
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`Michael Kim
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
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