Trials@uspto.gov
`571-272-7822
`
`
`Paper 13
`Entered: May 18, 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
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 13
`Entered: May 18, 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
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2015-01974
`Patent 7,647,633 B2
`
`Palo Alto Networks, Inc. (“Petitioner”) requests rehearing of our
`decision regarding institution of inter partes review of claims 14 and 19 of
`U.S. Patent No. 7,647,633 B2 (“the ’633 patent”). Paper 9 (“Req. Reh’g”).
`In our Decision on Partial Institution (Paper 7), we exercised our discretion,
`under 35 U.S.C. § 325(d), not to institute inter partes review of claims 1−4,
`6−8, 13, 28, and 34. Dec. 12−13. Petitioner requests rehearing of our
`determination that the asserted grounds based, at least in part, on Shin,
`present the same or substantially the same prior art or arguments that were
`presented previously to the Office. Id. at 9−11. In particular, Petitioner
`asserts that our Decision was based on a clearly erroneous conclusion that
`the “teachings of [Shin] are substantially the same as the teachings of [Ji].”
`Req. Reh’g 1. We deny the request for rehearing for the reasons that follow.
`The party challenging the decision of the Board has the burden of
`showing that the decision should be modified. 37 C.F.R. § 42.71(d). “The
`request must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id.
`In our Decision, we stated that upon review of Shin and comparison
`of its disclosure to that which the Office considered in the reexamination
`proceeding, we were persuaded that the Shin technology relied upon in the
`Petition is substantially the same as that which was considered relevant in Ji
`during the reexamination proceeding and during appeal at the Board. Dec.
`10. Petitioner asserts that Shin discloses looking for a “magic byte
`sequence,” in addition to looking for <applet> tags. Req. Reh’g 5−6 (citing
`Pet. 26, 29). Petitioner argues that, regarding the “determining whether”
`2
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`IPR2015-01974
`Patent 7,647,633 B2
`
`limitation, Dr. Rubin, Petitioner’s declarant, “explained that Shin discloses
`precisely what was found to be missing in Ji.” Req. Reh’g 5 (citing Pet.
`29−30, 48; Ex. 1002 ¶¶ 109−14, 125, 127). We do not agree with Petitioner
`that we have overlooked or misapprehended Shin’s disclosure with respect
`to this issue.
`First, neither the Petition nor Dr. Rubin’s Declaration, at the pages
`cited, states what Petitioner now argues—that Shin is different than Ji in any
`material respect, including how each reference detects applets. The
`argument that Shin is distinguishable from Ji was not overlooked because it
`was not presented. Moreover, even if there were differences between Ji and
`Shin’s implementations of applet detection, the statute does not require a
`complete overlap of these implementations for us to deem their disclosures
`(or arguments presented regarding those disclosures) substantially the same.
`See 35 U.S.C. § 325(d) (“the same or substantially the same prior art or
`arguments”).
`Second, we did not overlook or misapprehend that Shin discloses
`searching a “magic byte sequence” to detect applets. As we stated in the
`Decision, “‘Applet’ detection techniques have been given full consideration
`during reexamination.” Dec. 10. During the reexamination proceeding
`(Control No. 90/013,016), the examiner addressed whether applet detection
`meets the “determining” limitation, and supported its assertion with two
`techniques disclosed in Ji: (1) discriminating between Java applets from
`non-applets (see Ex. 1003, at 25–26 (“Ji specifically teaches determining
`whether downloadable-information includes executable code by
`discriminating Java applets from non-applets”)); and (2) scanning
`3
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`IPR2015-01974
`Patent 7,647,633 B2
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`
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`downloaded information for particular executable instructions (see id.).
`Petitioner’s position regarding Shin is that it detects applets. Pet. 29−30.
`This position is no different than the examiner’s position in reexamination
`that Ji detects Java applets. Indeed, the issue is whether applet detection,
`alone, meets the “determining whether” limitation—an issue that, we are
`persuaded, has been fully considered in reexamination and on appeal to the
`Board. Therefore, notwithstanding that Shin states another way in which an
`applet may be detected, we are persuaded that applet detection, as a whole,
`has been given full consideration.
`Third, we are not persuaded that we overlooked or misapprehended
`the disclosure in the ’633 patent. Petitioner argues that the ’633 patent
`identifies Shin’s “magic byte sequence” method as an “example” of the
`“determining” limitation recited in the claims. Req. Reh’g 7. Petitioner
`states that Dr. Rubin and the Petition rely on the ’633 patent disclosure to
`assert that detecting a “magic byte sequence” was a known method of
`detecting Java applets. Id. (citing Pet. 29−30 and Ex. 1002 ¶ 114). But
`Shin, again, detects only Java applets, as stated above. Furthermore, Shin
`detects only uncompressed Java class files, (Ex. 1009, 18),1 which is not co-
`extensive with the so-called “example” provided in the ’633 patent. The
`’633 patent describes “analyz[ing] a received potential-Downloadable for a
`file header . . . [for] portable executable or standard ‘.exe’ file format for
`Windows OS application programs, a Java class header for Java applets, and
`
`
` 1
`
`
`
` Shin states that “this [magic byte sequence] technique can not detect class
`files which . . . are a part of compressed archive (Jar or Zip).”
`4
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`IPR2015-01974
`Patent 7,647,633 B2
`
`so on for other applications, distributed components, etc. ‘Zipped’, meta or
`other compressed files.” Ex. 1001, col. 14, ll. 60−67. That is, even if we
`were persuaded to rely on the’633 patent specification for examples of
`“determining whether the downloadable-information includes executable
`code,” an exercise in hindsight, the ’633 patent embodiment detects many
`types of file formats. This approach is consistent with an objective of the
`invention to “enable[] more reliable protection” against “Trojan horses and
`program code groupings, as well as software ‘components’, such as JavaTM
`applets, ActiveXTM controls, JavaScriptTM/Visual Basic scripts, add-ins, etc.,
`among others.” Ex. 1001, col. 2, ll. 25−33. We, therefore, do not agree with
`the characterization of Shin as disclosing an “example” of the “determining
`whether” limitation as disclosed in the ’633 patent. Accordingly, we are not
`persuaded that we overlooked or misapprehended Petitioner’s argument
`regarding Shin disclosing an alleged “example” described in the ’633 patent.
`Finally, we take notice of the reexamination proceeding Control No.
`90/013,652 (“the ’652 reexamination”), which asserts Shin as a primary
`reference with respect to claims 8 and 12 of the ’633 patent. Claim 8 has
`been challenged in this Petition, and it recites the “determining whether”
`limitation that Petitioner contends Shin discloses. The argument that Shin
`discloses a “magic byte sequence” was presented previously in the ’652
`reexamination. Moreover, the Office has issued (5/10/2016) a Notice of
`Intent to Issue Reexamination Certificate for failure to make a prima facie
`case of obviousness, a case which relied on Shin. This fact confirms our
`determination that the instrumented applet technology disclosed in Shin and
`the corresponding arguments concerning the “determining whether”
`5
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`IPR2015-01974
`Patent 7,647,633 B2
`
`
`
`limitation were previously presented to the Office and that we did not abuse
`our discretion to deny the instant Petition under 35 U.S.C. § 325(d).
`Petitioner’s request for rehearing is, therefore, denied.
`
`6
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`IPR2015-01974
`Patent 7,647,633 B2
`
`
`
`
`PETITIONER:
`Orion Armon (Lead Counsel)
`Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`7
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