UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-019791
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATION
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`__________________
`
`
`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
`
`
`1 Case IPR2016-00919 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Patent Owner Finjan, Inc. submits the following observations of the
`
`November 14, 2016 cross-examination of Aviel Rubin (Ex. 2035):
`
`Evidence that Should Have Been Cited in Petition Rather than the Reply
`
`1. In Exhibit 2035, pg. 10, line 10- pg. 11, line 20, the witness testified:
`
`Q You mentioned that you cited Exhibit Number 1044 Nebenzahl
`
`and Wool, correct?
`
`A Yes.
`
`Q When were you first aware of this document?
`
`A Probably in late 2003, 2004.
`
`Q How did you become aware of the Nebenzahl document?
`
`A So I worked actively as a researcher in this field and actually
`
`Avishai Wool, the second officer is someone I know very well. He was at
`
`the labs when I was at AT&T labs. He was at Bell Labs. And in fact he was
`
`my host for my last sabbatical at Tel Aviv University. So his research is
`
`research that I followed closely. And when he wrote this paper I'm sure that
`
`I was aware of it, along with a lot of other papers in the field at the time.
`
`Q The Nebenzahl document, it's not cited in your previous
`
`declaration, correct?
`
`A That's right.
`
`1
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Q You could have cited the Nebenzahl document in your previous
`
`
`
`declaration, correct?
`
`A I suppose I could cite any document that I want.
`
`(Deposition Exhibit 2 was marked for purposes of identification.)
`
`Q You've been handed an exhibit marked as Exhibit Number 2.
`
`Exhibit Number 2 is entitled, "Install-Time Vaccination of Windows
`
`Executables to Defend Against Stack Smashing Attacks." By Nebenzahl
`
`and Wool. And at the bottom it's marked as Exhibit 1044. Is this the
`
`Nebenzahl document we have been referring to?
`
`A Yes.
`
`This testimony is relevant because Nebenzal (Ex. 1044) is an improper reference
`
`that Petitioner newly introduced after Patent Owner had already submitted its
`
`Patent Owner Response. Dr. Rubin testified that he was aware of this reference
`
`since 2003 and did not cite this in his original declaration even though he could
`
`have included it in his original declaration.
`
`Offers No Opinion on What is or Isn’t an Application
`
`2. In Exhibit 2035, pg. 18, line 18-pg. 19, line 4, the witness testified:
`
`Q So in your opinion an application is not any code that can be run,
`
`correct?
`
`A I don't think I said that.
`
`2
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
` Q Is that your opinion though?
`
` A Is what?
`
` Q Is it your opinion that an application is not any code that can be
`
`run?
`
`A I don't offer opinion about what is or isn't an application in my
`
`declaration.
`
`This testimony is relevant because Petitioner insists that Khazan instruments
`
`application. But after repeatedly asked for his understanding of what an
`
`application is, Dr. Rubin concedes that his declaration fails to offer an opinion of
`
`what is or isn’t an application.
`
`Disassembly of a Binary Does not Instrument an Application
`
`3. In Exhibit 2035, pg. 36, lines 13-23, the witness testified:
`
` Q What is the IDA Pro Disassembler for?
`
`A It's to disassemble binaries.
`
`Q Is it your opinion that disassembling a binary is the same as
`
`instrumenting applications?
`
`A No.
`
`Q Can you explain the difference?
`
`A Disassembling binaries is converting binaries into assembly
`
`language. And instrumenting applications is adding code to an application
`
`3
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`in order to be able to do some kind of a check or operation on it before you
`
`run the original code.
`
`This testimony is relevant because Petitioner newly argues that the IDA Pro
`
`Disassembler teaches a POSITA how to instrument an application. But Dr. Rubin
`
`concedes that the purpose of the IDA Pro Disassembler is to disassembler binaries
`
`not instrument applications. This testimony is also relevant because Dr. Rubin
`
`goes on to explain why these two functionalities are different, including explaining
`
`that disassembling binaries is converting binaries into assembly language while
`
`instrumenting application is adding code to an application.
`
`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
`
`4
`
`
`
`Dated: November 17, 2016
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`
`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
`
`
`
`5
`
`
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`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 Motion for Observations on
`
`Testimony of Dr. Rubin was served on November 17, 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 and Joinder
`
`6
`
`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
`
`
`
`
`
`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
`
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
