Palo Alto Networks, Inc. vs. Finjan, Inc.
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`IPR No. 2015-01979
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`1
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`IPR No. 2015-01979
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`1
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`Petitioner’s Burden of ProofPetitioner’s Burden of Proof
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`35 U.S.C. 316(e)
`“In an inter partes review instituted under this
`chapter, the petitioner shall have the burden
`of proving a proposition of unpatentablity by
`a preponderance of evidence”
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`2
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`Petitioner’s Burden of ProofPetitioner’s Burden of Proof
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`Petitioner:
`Must prove alleged prior art is prior art under the
`law.
`Must prove prior art references encourage and lead
`one skilled in the art to make the invention.
`Must prove hindsight was not used in analysis.
`Must prove there are no secondary considerations
`that demonstrate non-obviousness.
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`3
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`Summary of Arguments Summary of Arguments
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`Petitioner has not proved that Sirer was publically
`available.
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`Khazan does not teach multiple elements of the ‘154
`Patent.
`Each theory includes numerous holes under scrutiny.
`
`Petitioner did not sufficiently address secondary
`considerations.
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`35 U.S.C. 315(e)(1) estoppes Petitioner from maintaining
`additional IPR challenges.
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`4
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`Petitioner’s Failure of ProofPetitioner’s Failure of Proof
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`Sirer was not accessible to public.
`Sirer was not properly indexed.
`Sirer was published in a journal, and journal was indexed
`alphabetically.
`Sirer was not indexed according to subject matter.
`Location of Sirer proves in library proves it was not accessible.
`No proof Sirer was actually accessed.
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`5
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`‘154 Patent‘154 Patent
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`Claim 1
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`Source: pg. 16
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`6
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`Claim ConstructionClaim Construction
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`Content is properly defined as “a data container
`that can be rendered by a client web browser.”
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`Upon adoption of the proper construction, there is
`no reasonable dispute that ‘154 Patent is valid over
`prior art.
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`7
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`‘154 Patent is Valid‘154 Patent is Valid
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`Petitioner’s argument is product of hindsight.
`
`Petitioner takes prior art and tries to map it backwards to
`claims, rather than view what prior art teaches.
`
`“The challenger’s expert’s testimony ‘was nothing more
`than impermissible hindsight; she opined that all of the
`elements of the claims disparately existed in the prior art,
`but failed to provide the glue to combine these
`references.
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`In Touch Techs., Inc. v. VGO Comm’s Inc., 751 F.3d 1327, 1348-49 (Fed. Cir. 2014)
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`8
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`Petitioner Changed Its TheoryPetitioner Changed Its Theory
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`9
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`Petitioner’s Papers are MisleadingPetitioner’s Papers are Misleading
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`Source: Ex. 1038 at 11-12 (40:6-44:21)
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`Neno Deposition at 42:12-16
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`10
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`‘154 Patent is Valid‘154 Patent is Valid
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`Petitioner’s hindsight analysis is highlighted with
`multiple, confusing invalidity theories.
`Does not meet evidentiary standard of proving
`invalidity.
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`Nevertheless, all invalidity theories contain holes.
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`11
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`KhazanKhazan
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`Source Ex 1003 Figure 7
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`12
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`KhazanKhazan
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`Source Ex 1003 Figure 7
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`13
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`‘154 Patent is Valid‘154 Patent is Valid
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`If application is “content,” then:
`Content is not received over a network.
`Claim 35 pertains to libraries, not applications.
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`Content does not include a first function or second function.
`Alleged “first function” in wrapper is not in content that is
`received over a network.
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`Original function is always invoked.
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`Input is not sent to security computer.
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`14
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`‘154 Patent is Valid‘154 Patent is Valid
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`No disclosure that
`application can be
`instrumented.
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`Source Ex 1003 Figure 4B
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`15
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`‘154 Patent is Valid‘154 Patent is Valid
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`No disclosure of instrumented application or how it would work.
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`Even if instrumented application is “content,” then:
`Content is not received over a network.
`Claim 35 only pertains to libraries, not applications.
`Petitioner does not identify a first function and second
`function.
`Alleged “first function” in wrapper is not in content that is
`received over a network.
`Second function (original function) is always invoked.
`Input is not sent to security computer.
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`16
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`‘154 Patent is Valid‘154 Patent is Valid
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`‘154 Patent is Valid‘154 Patent is Valid
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`18
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`‘154 Patent is Valid‘154 Patent is Valid
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`A DLL library is not content.
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`Even if instrumented library is “content,” then:
`Content does not include “call” to a first function.
`Jump is not a call.
`See Figure 7.
`Wrapper with alleged “first function” is not contained
`within content.
`Petitioner does not identify a second function.
`Input is not sent to a security computer.
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`19
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`‘154 Patent is Valid over Sirer‘154 Patent is Valid over Sirer
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`Sirer does not disclose sending an input to a security computer.
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`Sirer is focused on developing virtual machine systems for
`managability.
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`Dynamic service components are not functions.
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`Combination of Khazan and Sirer would not work.
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`‘154 Patent is Valid over Ben-Natan‘154 Patent is Valid over Ben-Natan
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`SQL query is not a function input.
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`No disclosure of modifying the input variable when it “may not
`be safe.”
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`No motivation to combine Ben-Natan with Khazan and Sirer.
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`Not analogous art.
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`21
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`Petitioner Is Estopped From Maintaining Petitioner Is Estopped From Maintaining
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`IPR2016-00151IPR2016-00151
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`Source: pg. 3
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`Petitioner Is Estopped From Maintaining Petitioner Is Estopped From Maintaining
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`IPR2016-00151IPR2016-00151
`Statute is clear that Petitioner cannot maintain -00151
`case after Final Written Decision in this case.
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`Case law is clear that Petitioner is estopped from
`maintaining -00151 case.
`Kofax v. Uniloc, IPR2015-01207.
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`Petitioner was fully aware of prior art cited in -00151 case.
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`IPR2016-00151 should be stayed.
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`23
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