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`__________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-019791
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION
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`1 Case IPR2016-00919 has been joined with this proceeding.
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Patent Owner Finjan, Inc. submits the following observations of the
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`November 14, 2016 cross-examination of Aviel Rubin (Ex. 2035):
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`Evidence that Should Have Been Cited in Petition Rather than the Reply
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`1. In Exhibit 2035, pg. 10, line 10- pg. 11, line 20, the witness testified:
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`Q You mentioned that you cited Exhibit Number 1044 Nebenzahl
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`and Wool, correct?
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`A Yes.
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`Q When were you first aware of this document?
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`A Probably in late 2003, 2004.
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`Q How did you become aware of the Nebenzahl document?
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`A So I worked actively as a researcher in this field and actually
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`Avishai Wool, the second officer is someone I know very well. He was at
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`the labs when I was at AT&T labs. He was at Bell Labs. And in fact he was
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`my host for my last sabbatical at Tel Aviv University. So his research is
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`research that I followed closely. And when he wrote this paper I'm sure that
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`I was aware of it, along with a lot of other papers in the field at the time.
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`Q The Nebenzahl document, it's not cited in your previous
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`declaration, correct?
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`A That's right.
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`1
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Q You could have cited the Nebenzahl document in your previous
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`
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`declaration, correct?
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`A I suppose I could cite any document that I want.
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`(Deposition Exhibit 2 was marked for purposes of identification.)
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`Q You've been handed an exhibit marked as Exhibit Number 2.
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`Exhibit Number 2 is entitled, "Install-Time Vaccination of Windows
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`Executables to Defend Against Stack Smashing Attacks." By Nebenzahl
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`and Wool. And at the bottom it's marked as Exhibit 1044. Is this the
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`Nebenzahl document we have been referring to?
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`A Yes.
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`This testimony is relevant because Nebenzal (Ex. 1044) is an improper reference
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`that Petitioner newly introduced after Patent Owner had already submitted its
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`Patent Owner Response. Dr. Rubin testified that he was aware of this reference
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`since 2003 and did not cite this in his original declaration even though he could
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`have included it in his original declaration.
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`Offers No Opinion on What is or Isn’t an Application
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`2. In Exhibit 2035, pg. 18, line 18-pg. 19, line 4, the witness testified:
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`Q So in your opinion an application is not any code that can be run,
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`correct?
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`A I don't think I said that.
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`2
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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` Q Is that your opinion though?
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` A Is what?
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` Q Is it your opinion that an application is not any code that can be
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`run?
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`A I don't offer opinion about what is or isn't an application in my
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`declaration.
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`This testimony is relevant because Petitioner insists that Khazan instruments
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`application. But after repeatedly asked for his understanding of what an
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`application is, Dr. Rubin concedes that his declaration fails to offer an opinion of
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`what is or isn’t an application.
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`Disassembly of a Binary Does not Instrument an Application
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`3. In Exhibit 2035, pg. 36, lines 13-23, the witness testified:
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` Q What is the IDA Pro Disassembler for?
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`A It's to disassemble binaries.
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`Q Is it your opinion that disassembling a binary is the same as
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`instrumenting applications?
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`A No.
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`Q Can you explain the difference?
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`A Disassembling binaries is converting binaries into assembly
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`language. And instrumenting applications is adding code to an application
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`3
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`in order to be able to do some kind of a check or operation on it before you
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`run the original code.
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`This testimony is relevant because Petitioner newly argues that the IDA Pro
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`Disassembler teaches a POSITA how to instrument an application. But Dr. Rubin
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`concedes that the purpose of the IDA Pro Disassembler is to disassembler binaries
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`not instrument applications. This testimony is also relevant because Dr. Rubin
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`goes on to explain why these two functionalities are different, including explaining
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`that disassembling binaries is converting binaries into assembly language while
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`instrumenting application is adding code to an application.
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`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
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`4
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`Dated: November 17, 2016
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
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`
`
`Michael Kim (Reg. No. 40,450)
`mkim@finjan.com
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
` (Case No. IPR2015-01979) Attorneys for Patent Owner
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`5
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Patent Owner’s Motion for Observations on
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`Testimony of Dr. Rubin was served on November 17, 2016, by filing this
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`document through the Patent Review Processing System as well as delivering via
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`electronic mail upon the following counsel of record for Petitioner and Joinder
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`6
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`Petitioner:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`
`
`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
`
`
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`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`
`
`
`
`Nathaniel A. Hamstra
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
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`
`7