UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-01979
`Patent 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD MISAPPREHENDED OR OVERLOOKED KEY
`ARGUMENTS THAT DEMONSTRATE PATENTABILITY OF
`THE ‘154 PATENT OVER KHAZAN, SIRER, AND BEN-NATAN .......... 3
`
`A.
`
`B.
`
`The Board Misapprehended or Overlooked Petitioner’s and
`Patent Owner’s Common Identification of “Content” .......................... 3
`
`The Board Improperly Cited Evidence and Made Additional
`Arguments Not Presented in the Petition .............................................. 6
`
`III. CONCLUSION ................................................................................................ 9
`
`
`
`- i -
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Star Fruits S.N.C. v. U.S.,
`393 F. 3d 1277 (Fed. Cir. 2005) ....................................................................... 1, 3
`
`Statutes
`
`35 U.S.C. § 103(a) ................................................................................................. 1, 9
`
`35 U.S.C. § 316(e) ................................................................................................. 3, 6
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) .................................................................................................... 9
`
`37 C.F.R. § 42.20(c) ....................................................................................... 2, 6, 7, 9
`
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 2, 7, 9
`
`37 C.F.R. § 42.104(b)(4) .................................................................................... 2, 7, 9
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`- ii -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner, Finjan, Inc., (“Finjan” or “Patent Owner”) respectfully
`
`requests rehearing of the Board’s Decision on Institution (Paper No. 8)
`
`(“Institution Decision”) under 37 C.F.R. § 42.71(d). In particular, Finjan
`
`respectfully requests reconsideration of the decision to institute trial on Grounds 1
`
`and 2 of the Petition, which propose that claims 1–8, 10, and 11 of U.S. Patent No.
`
`8,141,154 (“the ‘154 Patent”) are unpatentable under 35 U.S.C. § 103(a) over
`
`Khazan et al. U.S. Patent Application Publication No. 2005/0108562 (Ex. 1003,
`
`“Khazan”) in view of Sirer et al., Design and Implementation of a Distributed
`
`Virtual Machine for Networked Computers (Ex. 1004, “Sirer”) and Ben-Natan U.S.
`
`Patent No. 7,437,362 (Ex. 1005, “Ben-Natan”).
`
`I.
`
`INTRODUCTION
`
`On March 21, 2016, the Board decided to institute inter partes review as to
`
`Grounds 1 and 2 which asserts that claims 1–5 of the ‘154 Patent are unpatentable
`
`over Swimmer in view of Sirer under 35 U.S.C. § 103(a), and claims 6–8, 10, and
`
`11 of the ‘154 Patent are unpatentable over Swimmer in view of Sirer and Ben-
`
`Natan. Finjan requests reconsideration of the Institution Decision because the
`
`Board “misapprehended or overlooked” arguments presented in Patent Owner’s
`
`Preliminary Response (Paper No. 6) (“POPR”). See 37 C.F.R. § 42.71(d). The
`
`matters misapprehended or overlooked by the Board amount to an abuse of
`
`discretion. See Star Fruits S.N.C. v. U.S., 393 F. 3d 1277, 1281 (Fed. Cir. 2005)
`
`- 1 -
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`(“An abuse of discretion occurs where the decision is based on an erroneous
`
`interpretation of the law, on factual findings that are not supported by substantial
`
`evidence, or represents an unreasonable judgment in weighing relevant factors.”)
`
`(citation omitted).
`
`Reconsideration of the Institution Decision is appropriate because the Board
`
`overlooked or misapprehended Petitioner’s and Patent Owner’s common
`
`identification of the “content” that must include the call to the first function. In
`
`particular, both Petitioner and Patent Owner agree that the “content received over a
`
`network” is the “application executable,” which is separate and apart from the
`
`“libraries” that are actually “instrumented.” See Petition at 19–20 (citing Khazan
`
`at ¶¶ [0029], [0040], and [0073], Fig. 1, Fig. 4A, and claim 35); POPR at 15–17.
`
`Overlooking Petitioner’s and Patent Owner’s common identification of
`
`“content” led the Board to institute trial based an invalidity theory that was never
`
`raised in the Petition. See Institution Decision at 9–10 (citing Khazan to support an
`
`“instrumented application and libraries” theory that does not appear in the Petition.
`
`In contrast, the law dictates that it is 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.” See 37 C.F.R. §§ 42.20(c),
`
`42.22(a)(2), and 42.104(b)(4) (emphasis added). The Board’s reliance on an
`
`- 2 -
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`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`invalidity theory that was never specified by either the Petition or Petitioner’s
`
`expert declaration, improperly imposes on Patent Owner to rebut evidence and
`
`arguments first presented at institution of trial, adding an unnecessary burden of
`
`time and expense to all parties involved by instituting inter partes review
`
`proceedings in a case that should not have progressed beyond the preliminary
`
`phase.
`
`Because the Board’s oversights and misapprehensions resulted in an
`
`Institution Decision that is not supported by substantial evidence and is contrary to
`
`35 U.S.C. § 316(e), it meets the stringent “abuse of discretion” standard. Patent
`
`Owner respectfully requests, therefore, that the Board reconsider its decision to
`
`institute trial and deny the Petition.
`
`II. THE BOARD MISAPPREHENDED OR OVERLOOKED KEY
`ARGUMENTS THAT DEMONSTRATE PATENTABILITY OF THE
`‘154 PATENT OVER KHAZAN, SIRER, AND BEN-NATAN
`A. The Board Misapprehended or Overlooked Petitioner’s and
`Patent Owner’s Common Identification of “Content”
`
`The Board should reconsider instituting trial on Grounds 1 and 2 because its
`
`decision overlooked Petitioner’s and Patent Owner’s agreement that the “content
`
`received over a network” as recited in challenged independent claims 1, 4, 6, and
`
`10 is Khazan’s “application executable.” See POPR at 20–21. As a result, the
`
`Institution Decision is based on “factual findings that are not supported by
`
`substantial evidence.” See Star Fruits, 393 F. 3d at 1281.
`
`- 3 -
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`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Petitioner identified “content” in the teachings of Khazan as “instrumented
`
`‘application executable’ that the ‘one or more processors’ execute.” Petition at 19.
`
`However, the two paragraphs of Khazan cited to support this assertion, ¶¶ [0040]
`
`and [0073], clarify beyond any doubt that “application executable 102 [,which]
`
`may be executed by one or more processors of the host computer”, (Khazan at
`
`¶ [0040]) is separate and distinct from the “associated libraries” that are “loaded
`
`into memory” and “instrumented” (Khazan at ¶ [0073]). Accordingly, in
`
`challenging Khazan, Patent Owner pointed out that Khazan’s “instrumented
`
`application executable” does not meet the claimed “content” because the claim
`
`language requires that the “content” must include the call to the first function.
`
`Indeed, the other evidence cited in this section of the Petition only confirm
`
`that the “application executable” equated with the “content” claimed in the ‘154
`
`Patent is distinct from the instrumented libraries. See Khazan at ¶ [0029]
`
`(discussing Khazan’s “host systems”), Fig. 1 (showing a schematic view of
`
`Khazan’s computer system 10), Fig. 4A (reproduced below), and claim 35
`
`(claiming that “said binary form [of a library] obtained from at least one of… a
`
`host other than a host on which said application is executed.”).
`
`- 4 -
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`Khazan, Fig. 4A. Khazan never refers to an “instrumented application” until after
`
`the “associated libraries… are instrumented to intercept calls to a predetermined
`
`set of target functions at run time.” Khazan at ¶ [0073]. Thus, as argued in the
`
`POPR, the content identified by Petitioner does not include “a call to a first
`
`function” as required by each independent claim of the ‘154 Patent:
`
`As may be appreciated with reference Petitioner’s Annotated version
`of Khazan’s Fig. 7, the “Call to first function” is not in the
`Application.EXE, which Petitioner equates with the “content received
`over a network.” Petition at 19 (“Khazan discloses ‘content’ such as
`an instrumented ‘application executable’ that the ‘one or more
`processors execute.”).
`
`- 5 -
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`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Additionally, Petitioner’s statement that “[a]s received, the content
`includes
`the
`substitute
`first
`function
`(added by Khazan’s
`instrumentation)” is simply incorrect. Petition at 20. Khazan discloses
`first loading the application being monitored and the associated
`libraries into memory (step 124) and then instrumenting the libraries
`“to intercept calls” (step 126). Khazan at ¶ [0073].
`
`POPR at 16–17.
`
`Given that it Petitioner had the “burden of proof to establish that it is entitled
`
`to the requested relief,” Patent Owner reasonably relied on Petitioner’s stated
`
`position regarding the identification of “content” in Khazan. 37 C.F.R. § 42.20(c);
`
`see also 35 U.S.C. § 316(e). Because the Board overlooked the agreement
`
`between the parties that the “content received over a network” is Khazan’s
`
`“application executable,” which does not include “a call to a first function,” the
`
`Board should modify the Institution Decision and deny inter partes review of the
`
`‘154 Patent.
`
`B.
`
`The Board Improperly Cited Evidence and Made Additional
`Arguments Not Presented in the Petition
`
`Rather than recognizing the deficiencies of the Petition, the Board relies on
`
`an invalidity theory not found in the Petition.
`
`Here, the Institution Decision acknowledges that the Petition equates the
`
`claimed “content” to the instrumented application executable. Institution Decision
`
`at 9 (“We understand the Petition as equating the claimed “content” to the
`
`- 6 -
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`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`instrumented application executable…..”). As explained above, this theory fails as
`
`the content identified by does not include “a call to a first function.” The
`
`Institution Decision, however, goes on to rely on a different theory (i.e.
`
`“instrumented application and libraries”) that does not appear in the Petition. In
`
`contrast, the law dictates that it is 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.” See 37 C.F.R. §§ 42.20(c), 42.22(a)(2), and
`
`42.104(b)(4) (emphasis added).
`
`In fact, the Board relies on number of arguments that were never made by
`
`Petitioner or Patent Owner. In particular, the Board states that Patent Owner drew
`
`a distinction between an “instrumented application executable” and an
`
`“instrumented executable” that was never made in the POPR. See Institution
`
`Decision at 9 (citing POPR at 12–13). Indeed, careful review of the POPR reveals
`
`that Patent Owner never acknowledged that Khazan teaches “an ‘instrumented
`
`application executable’ (which involves wrapper functions included in an
`
`application)” as indicated by the Board. Id. In fact, Patent Owner clearly
`
`represented that, based on its reading of the Khazan reference, and in agreement
`
`with Petitioner’s identification of “content” in Khazan, that (calls to) wrapper
`
`functions are never included in the content received over the network:
`
`- 7 -
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`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Khazan’s wrapper functions are merely included in Khazan’s
`libraries not within the application itself. Indeed, Khazan clarifies
`that these libraries are operating system libraries such as the DLLs
`included within the Windows operating system not “content received
`over a network.” (id. at [0041]) (“It should be noted that a DLL as
`used herein refers to a particular type of library as used in the
`Windows operating system by Microsoft Corporation.”)
`
`POPR at 12–13 (emphasis added).
`
`The Board then presents a new “instrumented application and libraries”
`
`theory - apparently to rebut the above argument, which Patent Owner did not
`
`make. See Institution Decision at 9 (asserting “that Khazan teaches instrumentation
`
`of both when it refers to “instrumented application and libraries.”). Notably, the
`
`Petition never identifies this invalidity theory, as is apparent by the Institution
`
`Decision’s supporting citations which are limited to Khazan in place of the
`
`Petition. See id. In fact, even the citations fail to appear in the Petition as well as
`
`the declaration of Petitioner’s expert. See id. at 9 (using the but see flag to
`
`introduce evidence not cited in the Petition). This evidence includes: Fig. 4B,
`
`which was not cited or otherwise discussed in the Petition or Dr. Rubin’s
`
`declaration; ¶ [0079], which was cited in the Petition, but only with respect to its
`
`unrelated discussion of the “Microsoft Detours package” (see Petition at 28); and
`
`¶ [0118], which was not cited or otherwise discussed in the Petition or Dr. Rubin’s
`
`declaration.
`
`- 8 -
`
`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Patent Owner did not have the opportunity to address these issues in the pre-
`
`institution proceedings because they were first raised in the Board’s Institution
`
`Decision. Patent Owner is also cognizant that it is not permitted within the rules to
`
`address these new arguments in this paper. However, Patent Owner requests that
`
`the Board grant its request to modify the Institution Decision in view of the fact
`
`Petitioner did not establish that it is entitled to the requested relief as the Petition
`
`never specified the invalidity theory relied upon by the Institution Decision,
`
`contrary to 37 C.F.R. §§ 42.20(c), 42.22(a)(2), and 42.104(b)(4). Indeed, forcing
`
`the Patent Owner to account for arguments and citations in the POPR, that never
`
`appeared the Petition is further contrary to the purpose and basic framework for a
`
`“just, speedy, and inexpensive resolution” of every IPR proceeding. 37 C.F.R. §
`
`42.1(b).
`
`III. CONCLUSION
`
`For at least the foregoing reasons, Finjan respectfully submits that the Board
`
`overlooked or misapprehended the arguments presented in the POPR that
`
`demonstrate that Petitioner failed to meet its burden to show a reasonable
`
`likelihood of success on the instituted grounds. Finjan requests, therefore, that the
`
`Board modify its Institution Decision and decline to subject claims 1–8, 10, and 11
`
`of the ‘154 Patent to inter partes review under 35 U.S.C. § 103(a) in view of
`
`Khazan, Sirer, and Ben-Natan.
`
`- 9 -
`
`
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`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`Dated: April 4, 2016
`
`(Case No. IPR2015-01979)
`
`- 10 -
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`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`PALO ALTO NETWORKS, INC.,
`v.
`FINJAN, INC.,
`
`Case IPR2015-01979
`Patent 8,141,154
`
`PATENT OWNER’S EXHIBIT LIST
`
`FIN-2001
`
`
`
`
`
`Plaintiff Finjan, Inc.’s Objections and Responses to Defendant Palo
`Alto Networks, Inc.’s First Set of Interrogatories (Nos. 1-13), in
`Finjan, Inc. v. Palo Alto Networks, Inc., Case No. 14-cv-04908-
`PJH, (N.D. Cal.), dated February 25, 2015
`
`
`
`
`- 11 -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Partial Request for Rehearing
`
`Pursuant to 37 C.F.R. §§ 42.71(c) and 42.71(d) was served on April 4, 2016, by
`
`filing this document through the Patent Review Processing System as well as
`
`delivering via electronic mail upon the following counsel of record for Petitioner:
`
`
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`zpatdcdocketing@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`
`- 12 -
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
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