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 RESPONSE
`
`
`
`
`
`
`

`
`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
` 
`
`II.
` 
`
`INTRODUCTION ........................................................................................... 1 
`
`FACTS ............................................................................................................. 3 
`
`A.
`
` 
`
`The ‘154 Patent ..................................................................................... 3 
`
`
`
`  CLAIM CONSTRUCTION ............................................................................ 5 III.
`
`A.
`
` 
`
`B.
`
` 
`
`“first function,” “second function,” “transmitter” and “receiver” ........ 5 
`
`“content” ................................................................................................ 5 
`
`IV.
`
`  PETITIONER HAS FAILED TO PROVE THAT SIRER WAS
`PUBLICLY ACCESSIBLE ............................................................................. 7 
`
`V.
`
`  GROUND 1 - KHAZAN IN VIEW OF SIRER DOES NOT RENDER
`CLAIMS 1–5 OF THE ‘154 PATENT OBVIOUS UNDER 35 U.S.C.
`§ 103(a) .......................................................................................................... 11 
`
`A.
`
` 
`
`The Combination of Khazan and Sirer Does not Disclose “a
`content processor ... for processing content received over a
`network” or program code for causing a computing device to
`“process content received over a network” (claims 1, 4, 6, and
`10) ........................................................................................................ 11 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Neither an “Instrumented Application Executable” Nor
`an “Instrumented Executable” Appear in Khazan. ................... 15 
`
`The Application Executable is Not Disclosed to be
`Received over a Network. ......................................................... 19 
`
`Khazan’s Instrumented DLL is not Content Received
`Over a Network. ........................................................................ 21 
`
`Sirer does not Cure the Deficiencies in Khazan. ...................... 23 
`
`B.
`
` 
`
`The Combination of Khazan and Sirer does not Disclose
`“content received over a network, the content including a call to
`a first function” (Claims 1, 4, 6, and 10) ............................................. 24 
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`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`1. 
`
`2. 
`
`Khazan does not disclose “the content including a call to
`a first function.” ........................................................................ 24 
`
`Khazan does not disclose “the call including an input”
`(claims 1 and 4). ........................................................................ 28 
`
`3.  Microsoft Detours Does not Support an Assertion that
`Khazan Discloses the “call including an input.” ...................... 29 
`
`4. 
`
`Sirer does not Cure the Deficiencies of Khazan. ...................... 32 
`
`A.
`
` 
`
`The Combination of Khazan and Sirer Does not Disclose
`Invoking a Second Function with the Input, only if such
`Invocation is Safe (claims 1 and 4) ..................................................... 34 
`
`1. 
`
`Khazan Does Not Disclose Invoking a Second Function
`With the Input “only if a security computer indicates that
`such invocation is safe.” ........................................................... 35 
`
`2. 
`
`Sirer Does not Cure the Deficiencies of Khazan. ..................... 39 
`
`The Combination of Khazan and Sirer Fails to Teach the
`Claimed Transmitting of Input “When the First Function is”
`Invoked ................................................................................................ 40 
`
`The Combination of Khazan and Sirer Does not Disclose the
`Receiver Elements ............................................................................... 42 
`
`The Combination of Khazan and Sirer Does not Disclose
`“wherein said content processor (i) suspends processing of the
`content after said transmitter transmits the input to the security
`computer” (claim 2)............................................................................. 44 
`
`The Combination of Khazan and Sirer Does not Disclose
`wherein said content processor… (ii) resumes processing of the
`content after said receiver receives the indicator from the
`security computer” (claim 2) ............................................................... 46 
`
`There is No Basis to Combine Khazan and Sirer in the Manner
`Disclosed in the Claims of the ‘154 Patent ......................................... 47 
`
`1. 
`
`There is no Motivation to Combine Khazan and Sirer. ............ 47 
`
`B.
`
` 
`
`C.
`
` 
`
`D.
`
` 
`
`E.
`
` 
`
`F.
` 
`
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`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`2. 
`
`The Suggested Combination of Khazan and Sirer is
`Inoperable. ................................................................................. 50 
`
`VI.
`
`  GROUND 2 - KHAZAN WITH SIRER AND BEN-NATAN DOES
`NOT RENDER CLAIMS 2, 4–8, 10, AND 11 OF THE ‘154
`PATENT OBVIOUS UNDER 35 U.S.C. § 103(a) ....................................... 51 
`
`A.
`
`  Khazan, Sirer, and Ben-Natan do Not Teach a “Modified Input
`Variable” ............................................................................................. 51 
`
`B.
`
` 
`
`There is no Basis to Combine Khazan, Sirer and Ben-Natan in
`the Manner Described in the Claims of the ‘154 Patent ..................... 53 
`
`1. 
`
`2. 
`
`3. 
`
`There is No Motivation to Combine Ben-Natan with
`Khazan and Sirer. ...................................................................... 54 
`
`Ben-Natan is Not Analogous Art to the’154 Patent. ................ 56 
`
`The Suggested Combination is Inoperable. .............................. 58 
`
`
`
`  SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .............. 58 VII.
`
`A.
`
` 
`
`B.
`
` 
`
`C.
`
` 
`
`D.
`
` 
`
`E.
`
` 
`
`Commercial Success............................................................................ 58 
`
`Long-Felt But Unresolved Need and Recognition of a Problem ........ 64 
`
`Skepticism and Unexpected Results ................................................... 65 
`
`The Failure of Others .......................................................................... 65 
`
`Secondary Considerations Must be Considered .................................. 66 
`
`
`
`  CONCLUSION .............................................................................................. 66 VIII.
`
`
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`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 66
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ...................................................................... 7, 10
`
`Cuozzo Speed Tech’s, LLC v. Lee,
`No. 15-446, 2016 WL 3369425 (2016) .............................................................. 18
`
`In re: Cyclobenzaprine Hydrochloride Extended-Release Capsule Pat.
`Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 65
`
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) .......................................................................... 59
`
`Estee Lauder Inc. v. L’Oreal, S.A.,
`129 F.3d 588 (Fed. Cir. 1997) ...................................................................... 34, 41
`
`Graftech Int’l Holdgs, Inc., v. Laird Techs., Inc.,
`Nos. 2015-1796, -1797, -1798, 2016 WL 3357427 (Fed. Cir. June
`17, 2016) ............................................................................................................. 58
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 58
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ........................................................................ 7, 8
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ........................................................................ 7, 9
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 6
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`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics,
`Inc.,
`976 F.2d 1559 (Fed. Cir. 1992) .......................................................................... 63
`
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc.,
`707 F.2d 1376 (Fed. Cir. 1983) .......................................................................... 65
`
`Osram Sylvania Inc. v. Am. Induction Techs., Inc.,
`701 F.3d 698 (Fed. Cir. 2012) ............................................................................ 66
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 66
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 48
`
`In re Royka,
`490 F.2d 981 (C.C.P.A. 1974) ............................................................................ 41
`
`SAS Institute, Inc. v. Complementsoft, LLC,
`No. 2015-01346, -1347 (Fed. Cir. June 10, 2016) ............................................ 5, 6
`
`SRI Int’l, Inc. v. Internet Sec. Sys. Inc.,
`511 F.3d 1186 (Fed. Cir. 2008) .......................................................................... 10
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .......................................................................... 47
`
`Statutes
`
`35 U.S.C. § 103(A) ............................................................................................ 11, 51
`
`Other Authorities
`
`37 C.F.R. § 42.20(c) ................................................................................................. 18
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 25
`
`37 C.F.R. § 42.104(b)(4) .............................................................................. 15, 29, 45
`
`
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`
`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`PATENT OWNER’S EXHIBIT LIST
`
`
`
`Description
`
`Exhibit-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
`
`Exhibit-2002 Declaration of Dr. Nenad Medvidovic on the Validity of Claims 1-
`5, 6-8, 10, and 11 of U.S. Patent No. 8,141,154 in Support Patent
`Owner Response in Case No. IPR2015-01979
`
`Exhibit-2003 Curriculum Vitae of Dr. Nenad Medvidovic
`
`Exhibit-2004 Declaration of S.H. Michael Kim in Support of Patent Owner’s
`Response in Case No. IPR2015-01979
`
`Exhibit-2005 Deposition Transcript of Aviel Rubin in Case No. IPR2015-01979,
`taken on May 20, 2016
`
`Exhibit-2006 Deposition Transcript of Mr. DeSart in Case No. IPR2015-01979,
`taken on June 21, 2016
`
`Exhibit-2007 Webster’s New World Computer Dictionary, 10th Edition (Page
`43, 82, 115, 350, 353, 390)
`
`Exhibit-2008 Silberschatz, Galvin, and Gagne, Operating System Concepts,
`Sixth Edition, Chapters 9.1.1. and 9.1.4 (Pages 273-276, 278)
`
`Exhibit-2009 Definition of kernel32.dll - available at
`http://www.webopedia.com/TERM/K/kernel32_dll.html
`
`Exhibit-2010 Elmasri and Navathe, Fundamentals of Database Systems, Third
`Edition (Pages 243-284, 717)
`
`Exhibit-2011 Definition of Type signature - available at
`https://en.wikipedia.org/wiki/Type_signature
`
`Exhibit-2012 Microsoft webpage regarding Detours, available at
`http://research.microsoft.com/en-us/projects/detours/
`
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`

`
`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`Description
`
`Exhibit-2013 Stackoverflow webpage - How does Microsoft Detours work and
`how do I use it to get a stack trace? - available at
`http://stackoverflow.com/questions/4507581/how-does-microsoft-
`detours-work-and-how-do-i-use-it-to-get-a-stack-trace
`
`Exhibit-2014 Microsoft Press Computer Dictionary, Third Edition (page 62,
`212, 271)
`
`Exhibit-2015
`
`Infringement chart created by Dr. Nenad Medvidovic regarding the
`products of Avast Software and the ‘154 Patent
`
`Exhibit-2016
`
`Infringement chart created by Dr. Nenad Medvidovic regarding the
`products of F-Secure and the ‘154 Patent
`
`Exhibit-2017
`
`‘154 Patent Infringement chart regarding the products of
`Websense, Inc., served in Finjan v. Websense, Inc., 13-CV-04398-
`BLF (N.D. Cal.), February 28, 2014
`
`Exhibit-2018
`
`‘154 Patent Infringement chart regarding the products of
`Proofpoint, Inc. and Armorize Technologies, Inc., served in
`Finjan, Inc. v. Proofpoint, Inc. and Armorize Technologies, Inc.,
`13-cv-05808-HSG (N.D. Cal.), April 17, 2014
`
`Exhibit-2019 Proofpoint, Inc.’s 10-K, dated December 31, 2014  
`
`Exhibit-2020 Finjan Holdings, Inc. 8-K, dated April 7, 2015
`
`Exhibit-2021 Finjan Holdings, Inc. 8-K, dated December 30, 2015
`
`Exhibit-2022 Finjan Holdings, Inc. 8-K, dated May 14, 2015
`
`Exhibit-2023 Finjan Holdings, Inc. 8-K, dated May 20, 2016
`
`Exhibit-2024 Finjan Holdings, Inc. 8-K, dated November 15, 2015
`
`Exhibit-2025 Finjan Holdings, Inc. 8-K, dated September 24, 2014
`
`Exhibit-2026 Gartner - Magic Quadrant for Secure Web Gateways, May 28,
`2013
`
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`

`
`Patent Owner’s Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`Description
`
`Exhibit-2027 Gartner - Magic Quadrant for Secure Email Gateways, July 2,
`2013
`
`Exhibit-2028 Reuters news article - Avast worth ‘upwards of $2 billion’; no IPO
`before 2017, available at http://www.reuters.com/article/us-avast-
`ceo-idUSKCN0SN2MJ20151029
`
`Exhibit-2029 F-Secure 2015 revenue and financials, available at https://www.f-
`secure.com/en/web/investors_global/financials.  
`
`Exhibit-2030 F-Secure Whitepaper - F-Secure DeepGuard, available at
`https://www.f-
`secure.com/documents/996508/1030745/deepguard_whitepaper.pd
`f.  
`
`Exhibit-2031 Websense, Inc. Revenue and Financial Data, available at
`http://www.hoovers.com/company-information/cs/revenue-
`financial.websense_inc.89ee9262879a5b65.html.  
`
`Exhibit-2032 Websense, Inc. brochure - Triton APX (2015), available at
`https://www.websense.com/assets/brochures/brochure-triton-apx-
`en.pdf.  
`
`Exhibit-2033 Proofpoint Inc. 10-K, dated February 25, 2016 
`
`Exhibit-2034 Proofpoint, Inc. Press Release - Proofpoint Announces Fourth
`Quarter and Full Year 2015 Financial Results (Jan. 28, 2016),
`available at
`http://investors.proofpoint.com/releasedetail.cfm?releaseid=95229
`5 
`
`
`
`- iii -
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`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I.
`
`INTRODUCTION
`
`On September 25, 2015, Palo Alto Networks, Inc., (“Petitioner”) filed a
`
`Petition for Inter Partes Review, challenging claims 1–8, 10, and 11 of U.S. Patent
`
`No. 8,141,154 (“the ‘154 Patent”). Based on a limited record, the Board instituted
`
`inter partes review of the ‘154 Patent on March 21, 2016. Decision Instituting
`
`Inter Partes Review, IPR2015-01979, Paper No. 8 at 12, 15 (“Institution
`
`Decision”). Patent Owner, Finjan, Inc., respectfully submits that, based on the full
`
`record for the Board should find that Petitioner has not met its burden to
`
`demonstrate that the challenged claims are unpatenable over the proposed
`
`combinations of Khazan1 and Sirer2 and Khazan, Sirer, and Ben-Natan.3
`
`Both of Petitioner’s unpatentability theories, Grounds 1 and 2, rely on
`
`references that teach “reactive” techniques used for viruses that already reside with
`
`the computer’s file system, which are distinguished in the Background of the
`
`Invention section of the ‘154 Patent. The ‘154 Patent claims systems and methods
`
`for protecting a computer from dynamically generated malicious content. As
`
`explained by the ‘154 Patent, “reactive” techniques for viruses that already reside
`
`1 Patent Application Pub. No. US 2005/0108562 A1 (Exhibit 1003) (“Khazan”).
`
`2 Sirer et al., Design and Implementation of a Distributed Virtual Machine for
`
`Networked Computers (Exhibit 1004) (“Sirer”).
`
`3 U.S. Patent No. 7,437,362 B1 (Exhibit 1005) (“Ben-Natan”).
`
`1
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`with the computer’s file system do not adequately protect against dynamically
`
`generated malicious code, which enter a user’s system via “Internet viruses
`
`embedded within web content” and “begin executing within an Internet browser as
`
`soon as they enter a computer.” See ‘154 Patent, 1:27–43. The ‘154 Patent
`
`overcomes such deficient reactive techniques by requiring the processing of
`
`“content received over a network.” Using the techniques disclosed in the ‘154
`
`Patent, a potentially malicious function input in web content received from the
`
`Internet is transmitted to a security computer for inspection, causing dynamically
`
`generated web content to be remotely inspected by a remote security computer
`
`before a function can be invoked with the input. In fact, the claimed protection
`
`requires that such a function invocation occurs “only if a remote computer
`
`indicates that such invocation is safe.”
`
`Khazan does not process web content received from the Internet. Petitioner
`
`nonetheless attempts to shoehorn the reference’s teachings for operating system
`
`libraries (e.g. DLLs) to fit the claims—often by intentionally obscuring Khazan’s
`
`disclosure or by failing to remain consistent in its identification of the teachings of
`
`Khazan that allegedly map onto the elements of the challenged claims. Petitioner
`
`also fails to provide the requisite motivation for modifying Khazan with Sirer or
`
`Ben-Natan or show that these secondary references cure Khazan’s own fatal
`
`deficiencies. For these reasons, and those stated below, Petitioner’s obviousness
`
`2
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`challenge to the asserted claims of the ‘154 Patent should be denied and all claims
`
`found patentable.
`
`
`II.
`
`FACTS
`
`A.
`
` The ‘154 Patent
`
`The ‘154 Patent was filed June 14, 2010, and claims priority to U.S. Patent
`
`No. 7,757,289, filed December 12, 2005. The systems and methods of the ‘154
`
`Patent are generally directed to protecting a computer from dynamically generated
`
`malicious content. ‘154 Patent at Abstract. This type of malware takes advantage
`
`of dynamic features of web content, to evade traditional detection when received
`
`over the network. ‘154 Patent at 3:36–39. For example, dynamic web pages can
`
`include input that initially appears to be merely innocuous text embedded within
`
`HTML pages, only to subsequently generate malicious content on the fly. ‘154
`
`Patent at 3:30–4:8.
`
`To protect against such dynamically generated malicious content, the ‘154
`
`Patent not only processes content when it is received over a network but also
`
`transmits input within the received content to a security computer, with a specific
`
`timing requirement, namely when the first function is invoked. See ‘154 Patent at
`
`5:4–25. A second function is then invoked with the input only if the security
`
`computer deems that such invocation is safe. Id. Thus, even if the input was
`
`unknown when the content was received over the network, the claimed invention
`
`3
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`can still protect against dynamically generated malicious content by transmitting
`
`the input to a security computer for inspection when the received content is
`
`processed. The call to the first function can be a call to a substitute function that is
`
`found in the content received over the network (e.g.
`
`Substitute_document.write(‘<h1>hello</h1>’)), as shown below:
`
`
`
`‘154 Patent at 10:41–59.
`
`When the first function is invoked, the input of this first function is sent to
`
`the security computer for inspection. Using this method, the security computer can
`
`inspect dynamically generated function inputs that may not be identifiable or
`
`scannable using traditional scanning techniques. See ‘154 Patent at 3:65–4:2.
`
`Notably, each independent claim of the ‘154 Patent recites that the call to the first
`
`4
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`function be found in the content received over a network, a feature that is disclosed
`
`nowhere in the references cited in the Petition. ‘154 Patent at Claims 1, 4, 6, and
`
`10.
`
` CLAIM CONSTRUCTION
`III.
`
`A.
`
`
`
`“first function,” “second function,” “transmitter” and “receiver”
`
`In the Institution Decision, the Board did not provide a construction for “first
`
`function,” “second function,” “transmitter” or “receiver.” Institution Decision at
`
`5. As such, for the purposes of this proceeding, the plain and ordinary meaning
`
`controls for these terms. SAS Institute, Inc. v. Complementsoft, LLC, No. 2015-
`
`01346, -1347, *17 (Fed. Cir. June 10, 2016) (holding that an agency may not
`
`change theories in midstream without giving reasonable notice of the change and
`
`the opportunity to present argument under the new theory).
`
`B.
`
`
`
`“content”
`
`The term “content” is properly construed as “a data container that can be
`
`rendered by a client web browser.” In the Background of the Invention section of
`
`the ‘154 Patent, the inventors described a new class of virus that could not be
`
`detected using conventional file scans. See ‘154 Patent at 1:34–42. These Internet
`
`viruses would be embedded in web pages and other web content and could begin
`
`executing as soon as they entered a computer. Id. Given the foregoing, the
`
`5
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`problem addressed by the inventors of the ‘154 Patent addressed security concerns
`
`raised particularly in the context of Internet content:
`
`Such content may be in the form of an HTML web page, an XML
`document, a Java applet, an EXE file, JavaScript, VBScript, an
`ActiveX Control, or any such data container that can be rendered by
`a client web browser.
`
`Id at 13:49–52 (emphasis added); see also id at 4:35–37 (“The present invention
`
`operates through a security computer that is preferably remote from a client
`
`computer that is being shielded while processing network content.”) (emphasis
`
`added); id. at 2:64–3:2 (“Such Internet content may be in the form of executable
`
`code, JavaScript, VBScript, Java applets, ActiveX controls, which are supported
`
`by web browsers.”) (emphasis added); 8:47–51 (“Such content may be in the form
`
`of HTML pages, XML documents, Java applets and other such web content that
`
`is generally rendered by a web browser.”) (emphasis added). This construction is
`
`also reinforced by the explicit language of each claim of the ‘154 Patent, which
`
`requires the processing of “content received over a network.”
`
`Interpreting the term “content” to extend well beyond the scope of what was
`
`explicitly contemplated in the specification—including, for example, the
`
`filesystem resident operating system libraries (e.g. DLLs) and application
`
`executables disclosed in Khazan—is contrary to the teachings of the ‘154 Patent
`
`and the law. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`
`6
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Cir. 2015) (“Even under the broadest reasonable interpretation, the Board's
`
`construction cannot be divorced from the specification and the record evidence,
`
`and must be consistent with the one that those skilled in the art would reach.”)
`
`(internal citations and quotations omitted). Accordingly, Patent Owner requests
`
`that the Board adopt Patent Owner’s proposed construction of the term “content”
`
`as “a data container that can be rendered by a client web browser.”
`
`IV.
`
` PETITIONER HAS FAILED TO PROVE THAT SIRER WAS
`PUBLICLY ACCESSIBLE
`
`Public accessibility “is determined on a case-by-case basis based on the
`
`‘facts and circumstances surrounding the reference’s disclosure to members of the
`
`public.’” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009) (quoting In re
`
`Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). For a reference to be prior art,
`
`there must be a “‘satisfactory showing that such document has been disseminated
`
`or otherwise made available to the extent that persons interested and ordinarily
`
`skilled in the subject matter or art exercising reasonable diligence, can locate it.’”
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir.
`
`2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed.
`
`Cir. 2008)); see also In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989). In the
`
`context of a document allegedly housed in a library, the public accessibility
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`question whether the document was “cataloged or indexed in a meaningful way.”
`
`In re Cronyn, 890 F.2d at 1161.
`
`7
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Sirer is not a properly indexed “printed publication” because a person
`
`interested in the subject would have been able to locate Sirer using reasonable
`
`diligence. Kyocera Wireless, 545 F.3d at 1350. The only evidence in the record
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`that the Sirer reference was available as prior art is from the declaration of Mr.
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`DeSart, a librarian from the University of Washington. In his declaration, Mr.
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`DeSart testified that the Sirer reference was publically available in the library one
`
`month before February 8, 2000. Ex. 1036 (“DeSart Declaration”) at ¶ 3. However,
`
`during Dr. DeSart’s deposition, he clarified that for an interested person in the art
`
`to have found Sirer at the University of Washington Library, he or she would have
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`needed to know somehow that the Sirer article was located within the “Operating
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`Systems Review” journal within the library. Exhibit 2006 (“DeSart Tr.”) at 9:17–
`
`12:1. It would have been nearly impossible to find the article without having this
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`precise knowledge as the references at the University of Washington during the
`
`relevant timeframe were organized in alphabetical order according to their journal
`
`name, not the name of the articles within the journal, including the Sirer reference.
`
`An attempt to locate Sirer through the library’s catalogue would have
`
`required that the interested person know at least a partial title of the journal in
`
`which the Sirer reference could be found, Operating Systems Review, and that the
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`Sirer reference was in a particular volume of that journal. DeSart Tr. at 10:16–
`
`12:1. A search for Sirer by the title of the article, “Design and Implementation of a
`
`8
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Distributed Virtual Machine for Networked Computers,” would not have generated
`
`any results. DeSart Tr. at 11:24–12:1. Based on the evidence Petitioner has
`
`presented, a person only would have located Sirer by happenstance. Accordingly,
`
`Petitioner has not established that Sirer was publicly accessible because it could
`
`not be located without having specific knowledge as to its existence. See
`
`Application of Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978) (holding that a
`
`reference in a library was not publicly available because a person would have
`
`needed to be informed of its existence to find it, rather than use “customary
`
`research aids available in the library” to find it).
`
`Petitioner also relies on U.S. Patent No. 6,324,685 (Ex. 1024 at 2) to
`
`establish Sirer as publicly available prior art. See Petition at 5 (relying on an
`
`alleged citation to Sirer in a patent). However, there is no evidence in the record
`
`that the reference cited in the patent is the same as the reference that was presented
`
`in this proceeding. Moreover, the Federal Circuit dictates that the listing of a
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`reference in an Information Disclosure Statement does not relieve the requirement
`
`that the reference be publically accessible. See In re Lister, 583 F.3d at 1317
`
`(holding that “evidence contained in the IDS neither provides substantial evidence
`
`that the [reference] was publicly accessible as of the critical date”).
`
`There are several additional factors that demonstrate that the Sirer reference
`
`was not publically available as a matter of law. First, it is uncontested that the
`
`9
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Sirer reference was not indexed according to subject matter, which the Federal
`
`Circuit has held is a prerequisite to demonstrate public availability. See In re
`
`Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) (theses organized by the students’
`
`names were not sufficiently publicly available because the name had no
`
`relationship to the subject of the thesis). Instead, the library simply organized
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`journals (not the actual articles) in alphabetical order in a periodical display
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`section, which consisted of approximately 800 to 1,000 books. DeSart Tr. at 9:17–
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`10:20 (“Q. So to be clear, in 2000, these were organized by alphabetical order? A.
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`Yes. Alphabetic by title, by title of journal.”); 16:16–24. Additionally, the display
`
`periodical area was on the second floor of the library, away from the library’s
`
`entrance, demonstrating that the journal and the article were not readily accessible.
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`DeSart Tr. at 20:6–25. Furthermore, the library did not have a system in place that
`
`would alert those interested in the art that a journal or periodical was newly added.
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`DeSart Tr. at 23:6–21. Finally, Petitioner has not provided any evidence of the
`
`public ever accessing Sirer, thus weighing against a finding of public accessibility.
`
`SRI Int’l, 511 F.3d at 1197–98 (a lack of retrieval may “suggest[] an absence of
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`actual public accessibility.”). Indeed, Mr. DeSart stated that he did not know
`
`whether anyone accessed Sirer. DeSart Tr. at 26:17–21. In light of all of these
`
`factors, there is insufficient evidence that the Sirer reference was readily
`
`accessible.
`
`10
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Each of the grounds at issue in this proceeding relies on an obvious
`
`combination involving Sirer. Because there is insufficient evidence in the record
`
`to establish that Sirer was publicly available, it cannot be considered prior art in
`
`these proceedings, and the challenged claims should be deemed patentable.
`
`V.
`
` GROUND 1 - KHAZAN IN VIEW OF SIRER DOES NOT RENDER
`CLAIMS 1–5 OF THE ‘154 PATENT OBVIOUS UNDER 35 U.S.C. §
`103(A)
`
`Based on the limited record before it, the Board instituted inter partes
`
`review of the ‘154 Patent, finding that Petitioner raised a reasonable likelihood that
`
`claims 1–5 are unpatentable over the combination of Khazan with Sirer under 35
`
`U.S.C. § 103(a). For at least the following reasons, Patent Owner respectfully
`
`requests that the Board find the challenged claims not obvious over the
`
`combination of Khazan and Sirer.
`
`A.
`
` The Combination of Khazan and Sirer Does not Disclose “a
`content processor ... for processing content received over a
`network” or program code for causing a computing device to
`“process content received over a network” (claims 1, 4, 6, and 10)
`
`Claims 1 and 6 of the ‘154 Patent require “a content processor (i) for
`
`processing content received over a network.” ‘154 Patent, 17:34–35, 18:9–10.
`
`Similarly, claims 4 and 10 require “program code for causing a computing device
`
`to: process content received over a network.” ‘154 Patent, 17:54–55, 18:37–38.
`
`Petitioner has not established processing “content received over a network” is
`
`disclosed in the combination of Khazan and Sirer.
`
`11
`
`

`
`Patent Owner’s Objections to Evidence
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Petitioner is deliberately coy in its identification of what element of the
`
`Khazan reference allegedly corresponds to the claimed “content received over a
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`network.” For example, Petitioner variously maps both the “application
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`executable” and an “instrumented… library” to the content that is allegedly
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`received over the network. See Petition at 15 (