`
`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 No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘154 PATENT ......................................................................................... 3
`
`A. Overview ............................................................................................... 3
`
`B.
`
`Challenged Claims ................................................................................ 5
`
`III. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`B.
`
`“first function” (all challenged claims): ................................................ 6
`
`“second function” (all challenged claims): ........................................... 8
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED ............................................................... 12
`
`A. Ground 1: Khazan in view of Sirer Does Not Render Claims 1–5
`Obvious Under 35 U.S.C. § 102(e) ..................................................... 12
`
`1.
`
`2.
`
`3.
`
`Khazan in view of Sirer Does not Disclose “a content processor
`(i) for processing content received over a network, the content
`including a call to a first function, and the call including an
`input” (claims 1 and 4) .............................................................. 14
`
`Khazan in view of 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) .................................................................................... 21
`
`Khazan in view of Sirer Does not Disclose “wherein the input is
`dynamically generated by said content processor prior to being
`transmitted by said transmitter” (claims 3 and 5) ..................... 23
`
`B. Ground 2: Khazan in view of Sirer and Ben-Natan Does Not Render
`Claims 6–8, 10, and 11 Obvious Under 35 U.S.C. § 103(a) ............... 24
`
`1.
`
`Ben-Natan is Not Analogous Art .............................................. 24
`
`i
`
`

`

`2.
`
`3.
`
`4.
`
`5.
`
`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`Khazan in view of Sirer and Ben-Natan Does not Disclose “a
`content processor (i) for processing content received over a
`network, the content including a call to a first function, and the
`call including an input variable” (claims 6 and 10) .................. 28
`
`Khazan in view of Sirer and Ben-Natan Does not Disclose “(ii)
`for calling a second function with a modified input variable”
`(claims 6 and 10) ....................................................................... 28
`
`Khazan in view of 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 7) .................................................................................... 29
`
`Khazan in view of Sirer Does not Disclose “wherein the input is
`dynamically generated by said content processor prior to being
`transmitted by said transmitter” (claims 8 and 11) ................... 30
`
`V.
`
`THE PETITION IMPERMISSIBLY PRESENTS ARGUMENTS
`INCORPORATED BY REFERENCE .......................................................... 30
`
`VI. PETITIONER’S OBVIOUSNESS ARGUMENTS FAIL AS A MATTER
`OF LAW BECAUSE IT DID NOT CONDUCT A COMPLETE
`OBVIOUSNESS ANALYSIS ....................................................................... 32
`
`VII. CONCLUSION .............................................................................................. 32
`
`
`
`
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`Patent Owner’s Preliminary 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) .......................................................................... 33
`
`Aventis Pharms. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) ........................................................................ 8, 9
`
`BomTech Elects., Co., v. Medium-Tech Medizingerate GMBH,
`IPR2014-00138, Paper No. 8 (PTAB April 22, 2014) ....................................... 32
`
`Cisco Sys., Inc., v. C-Cation Technologies, LLC,
`Case No. IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) ....................... 31, 32
`
`EMC Corp. v. Secure Axcess, LLC,
`Case No. IPR2014-00475, Paper No. 10 (PTAB Sept. 9, 2014) ........................ 23
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 33
`
`Leo Pharmaceutical v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 34, 35
`
`Ortho-McNeil Pharm., Inc. v. Mylan Labs, Inc.,
`520 F.3d 1358 (Fed. Cir. 2008) .......................................................................... 34
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 34
`
`Rambus Inc. v. Teresa Stanek Rea,
`731 F.3d 1248 (Fed. Cir. 2013) .......................................................................... 35
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 33
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d (Fed. Cir. 2012) ................................................................................. 2, 7
`
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`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Statutes
`
`35 U.S.C. § 102(e) ................................................................................................... 12
`
`35 U.S.C. § 103(a) ............................................................................................. 24, 28
`
`Other Authorities
`
`37 C.F.R. § 42.6(e) ................................................................................................... 38
`
`37 C.F.R. § 42.104(b) .............................................................................................. 15
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
`
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`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`I.
`
`INTRODUCTION
`
`On September 25, 2015, Palo Alto Networks, Inc., (“Petitioner”) submitted a
`
`Petition to institute inter partes review (“IPR”) of U.S. Patent No. 8,141,154 (“the
`
`‘154 Patent”), challenging claims 1–8, 10, and 11 (“the Challenged Claims”).
`
`Finjan, Inc. (“Patent Owner”) requests that the Board not institute inter partes
`
`review because Petitioner has not demonstrated a reasonable likelihood that it
`
`would prevail in showing unpatentability of any of the challenged claims on the
`
`grounds asserted in its Petition, as required under 37 C.F.R. § 42.108(c).
`
`The ‘154 Patent generally discloses systems and methods for inspecting
`
`dynamically generated code. The claims require, inter alia, (1) processing content
`
`received over a network, the content including a call to a first function, and the call
`
`including an input, and either (2) invoking a second function with the input, only if
`
`a security computer indicates that such invocation is safe or (3) calling a second
`
`function with a modified input variable. It may be appreciated that these claims
`
`recite an approach to computer security that involves the evaluation of a function
`
`input found in a call to a first function in content received over a network, and the
`
`invocation of a second function with the original function input or a modified
`
`version of the function input.
`
`The references cited in Grounds 1 and 2 of the Petition do not disclose this
`
`approach to computer security. In addition to further deficiencies, Petitioner has
`
`1
`
`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`failed to meet its burden under 37 C.F.R. § 42.104(b) to demonstrate that the cited
`
`references disclose:
`
` processing content received over a network, the content including a
`call to a first function, and the call including an input (all independent
`claims);
` calling a second function with the modified input variable
`(independent claims 6 and 10);
` wherein said content processor (i) suspends processing of the content
`after said transmitter transmits the input to the security computer
`(claims 2 and 7); or
` wherein the input is dynamically generated by said content processor
`prior to being transmitted by said transmitter (claims 3, 5, 8, and 11).
`Although there are a variety of reasons why the ‘154 Patent is valid over
`
`Petitioner’s asserted prior art references, this Preliminary Response focuses on
`
`only limited reasons why inter partes review should not be instituted. See
`
`Travelocity.com L.P. v. Conos Technologies, LLC, CBM2014-00082, Paper 12 at
`
`10 (PTAB Oct. 16, 2014) (“[N]othing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason.”). In addition, Patent Owner specifically reserves its right to dispute that
`
`Petitioner has correctly named all real-parties-in-interest in the event that sufficient
`
`factual bases supporting such a challenge surface during the pendency of this
`
`proceeding. Regardless, the deficiencies of the Petition noted herein, however, are
`
`more than sufficient for the Board to find that Petitioner has not met its burden to
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`demonstrate a reasonable likelihood that it would prevail in showing
`
`unpatentability of any of the challenged claims.
`
`II. THE ‘154 PATENT
`A. Overview
`Patent Owner’s ‘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 systems and methods for protecting a
`
`computer from dynamically generated malicious content. These types of malware
`
`take advantage of dynamic features of web content, to evade traditional detection
`
`when received over the network. 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. See ‘154
`
`Patent at 5:4–25. A second function is then invoked with the input if the security
`
`computer deems that such invocation is safe. Id. Thus, even if the input was yet
`
`unknown when the content was received over the network, the claimed invention
`
`can still protect against dynamically generated malicious content by including the
`
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`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`security computer lookup when the received content is processed. In one
`
`implementation, 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>’):”
`
`
`
`‘154 Patent at 10:41–59.
`
`In other implementations, the first function can be a non-substitute function
`
`found in the content received over the network upon invocation of which the input
`
`is sent to the security computer for inspection. Using this method, the security
`
`computer can inspect function inputs that are dynamically generated and, therefore,
`
`may not be identifiable or scannable using traditional scanning techniques.
`
`Notably, each independent claim of the ‘154 Patent recites that the call to the first
`
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`

`Patent Owner’s Preliminary Response
`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.
`
`B. Challenged Claims
`Petitioner challenges independent claims 1–12 of the ‘154 Patent, of which
`
`claims 1, 4, 6, and 10 are independent. Claim 1 is reproduced below:
`
`1. A system for protecting a computer from dynamically
`generated malicious content, comprising:
`
`a content processor (i) for processing content received over a
`network, the content including a call to a first function, and the call
`including an input, and (ii) for invoking a second function with the
`input, only if a security computer indicates that such invocation is
`safe;
`a transmitter for transmitting the input to the security computer
`
`for inspection, when the first function is invoked; and
`
`a receiver for receiving an indicator from the security computer
`whether it is safe to invoke the second function with the input.
`
`Independent claim 4 a recites non-transitory computer-readable storage medium
`
`storing program code for causing a computing device to carry out the processing,
`
`transmitting, receiving, and resuming features of claim 1. Claims 3 and 5 depend,
`
`respectively from claims 1 and 4 and recite that the input is dynamically generated
`
`by the content processor prior to being transmitted by the transmitter. Independent
`
`claim 6 recites:
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`6. A system for protecting a computer from dynamically generated
`malicious content, comprising:
`
`a content processor (i) for processing content received over a
`network, the content including a call to a first function, and the first
`function including an input variable, and (ii) for calling a second
`function with a modified input variable;
`
`a transmitter for transmitting the input variable to a security
`computer for inspection, when the first function is called; and
`
`a receiver for receiving the modified input variable from the
`security computer,
`
`wherein the modified input variable is obtained by modifying
`the input variable if the security computer determines that calling a
`function with the input variable may not be safe.
`
`Independent claim 10 claims a non-transitory computer-readable storage medium
`
`storing program code for causing a computing device to carry out the processing,
`
`calling, transmitting, receiving, and obtaining features of claim 6. Claims 8 and 11
`
`depend, respectively from claims 6 and 10 and recite that the input is dynamically
`
`generated by the content processor prior to being transmitted by the transmitter.
`
`III. CLAIM CONSTRUCTION
`A.
`“first function” (all challenged claims):
`The plain and ordinary meaning should be applied to the term “first
`
`function” because a person of ordinary skill in the art understands the meaning of
`
`this term. In fact, this term does not require construction as it is already defined in
`
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`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`the claim language in a manner that is easily understood by one of ordinary skill in
`
`the art. For example, claim 1 explains that a call to a first function is included
`
`within the content received over a network: “content received over a network, the
`
`content including a call to a first function.” Petitioner seeks a construction that
`
`improperly narrows the term “first function” to “substitute function” and in doing
`
`so, rewrites the claims to include limitations that do not exist in the claims. See
`
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012)
`
`(“The patentee is free to choose a broad term and expect to obtain the full scope of
`
`its plain and ordinary meaning…”).
`
`First, the claims that recite a first function do not explicitly mention that this
`
`function must be a “substitute”, only that it is a “first” function. Second, there are
`
`other claims do require a substitute function by actually reciting “substitute” in the
`
`claim language. For example, claim 1 of the ‘289 Patent, which shares the same
`
`specification as the ‘154 Patent, recites: “replacing the call to the original function
`
`with a corresponding call to a substitute function, the substitute function being
`
`operational to send the input to a security computer for inspection.” Under the
`
`doctrine of claim differentiation, there is a presumption that the claims, which do
`
`not contain such a limitation, do not require the first function to also be a substitute
`
`function. Third, while the specification discusses embodiments that utilize a
`
`substitute function, “ [t]his is not enough [] to limit the patentee's clear, broader
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`claims ... [as the patentee] did not act as his own lexicographer or disavow claim
`
`scope." Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009).
`
`Accordingly, Petitioner’s attempt to rewrite plain claim language should be
`
`rejected because claims are assumed to mean what was written and should not be
`
`rewritten to state something else. See Aventis Pharms. v. Amino Chems. Ltd., 715
`
`F.3d 1363, 1373 (Fed. Cir. 2013)(“Courts are required therefore to ‘look to the
`
`words of the claims themselves . . . to define the scope of the patented
`
`invention.’”).
`
`“second function” (all challenged claims):
`
`B.
`As with the term “first function” discussed directly above, the plain and
`
`ordinary meaning should be applied to the term “second function” because a
`
`person of ordinary skill in the art understands the meaning of this term. Despite
`
`the fact that this term does not require construction and is easily understood by one
`
`of ordinary skill in the art, Petitioner seeks a construction that improperly narrows
`
`the term “first function” to “original function” and in doing so, rewrites the claims
`
`to include limitations that do not exist in the claims. See Thorner, 669 F.3d at
`
`1367 (“The patentee is free to choose a broad term and expect to obtain the full
`
`scope of its plain and ordinary meaning…”).
`
`Petitioner’s proposed construction is incorrect because the claims do not
`
`limit the recited “second function” to an “original function.” Again the claims that
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`recite a second function do not explicitly mention that this function must also be
`
`“original”, only that it is a “second” function. In addition, there are other claims
`
`do require an original function by actually reciting “original” in the claim
`
`language. For example, claim 1 of the ‘289 Patent, which shares the same
`
`specification as the ‘154 Patent, recites: “replacing the call to the original function
`
`with a corresponding call to a substitute function, the substitute function being
`
`operational to send the input to a security computer for inspection.” Under the
`
`doctrine of claim differentiation, there is a presumption that the claims, which do
`
`not contain such a limitation, do not require the second function to also be an
`
`original function. Further, while the specification discusses embodiments that
`
`utilize an original function, “ [t]his is not enough [] to limit the patentee's clear,
`
`broader claims ... [as the patentee] did not act as his own lexicographer or disavow
`
`claim scope." Kara Tech. Inc., 582 F.3d at 1347.
`
`Petitioner’s attempt to rewrite plain claim language should be rejected
`
`because claims are assumed to mean what was written and should not be rewritten
`
`to state something else. See Aventis, 715 F.3d at 1373 (“Courts are required
`
`therefore to ‘look to the words of the claims themselves . . . to define the scope of
`
`the patented invention.’”).
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`“transmitter” (claims 1–3 and 6–8):
`
`A.
`
`The term “transmitter” needs no construction, and the plain and ordinary
`
`meaning within the context of the claims should apply. See, e.g., Interactive Gift
`
`Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“If the
`
`claim language is clear on its face, then our consideration of the rest of the intrinsic
`
`evidence is restricted to determining if a deviation from the clear language of the
`
`claims is specified.”). This term appears in challenged claims 1–3 and 6–8 with its
`
`scope clearly set forth in the claims. For example, claim 1 recites a system for
`
`protecting a computer from dynamically generated malicious content, comprises “a
`
`transmitter for transmitting the input to the security computer for inspection, when
`
`the first function is invoked.” Further, claim 6 recites a system for protecting a
`
`computer from dynamically generated malicious content, comprising “a transmitter
`
`for transmitting the input variable to a security computer for inspection, when the
`
`first function is called.”
`
`Petitioner proposes that the term “transmitter ” should mean “a circuit or
`
`electronic device designed to send electrically encoded data to another location.”
`
`Petition at 11. Petitioner provides no reason to replace the common, well-
`
`understood term “transmitter” with “a circuit or electronic device designed to send
`
`electrically encoded data to another location.” Despite the fact that this term does
`
`not require construction and is easily understood by one of ordinary skill in the art,
`
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`Petitioner seeks a construction that adds unnecessary limitations to the claim and in
`
`doing so, rewrites the claims to include the additional limitations of the transmitter
`
`(1) being “a circuit or electronic device;” that transmits (2) “electrically encoded
`
`data;” (3) “to another location.” See Thorner, 669 F.3d at 1367 (“The patentee is
`
`free to choose a broad term and expect to obtain the full scope of its plain and
`
`ordinary meaning…”).
`
`B.
`
`“receiver” (claims 1–3 and 6–8):
`
`As with the term “transmitter” discussed direction above, the term “receiver”
`
`needs no construction, and the plain and ordinary meaning within the context of
`
`the claims should apply. See Interactive Gift Express, 256 F.3d at 1331. This term
`
`appears in challenged claims 1–3 and 6–8 with its scope clearly set forth in the
`
`claims. For example, claim 1 recites a system for protecting a computer from
`
`dynamically generated malicious content, comprises “a receiver for receiving an
`
`indicator from the security computer whether it is safe to invoke the second
`
`function with the input.” Further, claim 6 recites a system for protecting a
`
`computer from dynamically generated malicious content, comprising “a receiver
`
`for receiving the modified input variable from the security computer.”
`
`Petitioner proposes that the term “receiver ” should mean “a circuit or
`
`electronic device designed to accept data from an external communication system.”
`
`Petition at 12. Once again, Petitioner provides no reason to replace the common,
`
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`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`well-understood term “receiver.” Despite the fact that this term does not require
`
`construction and is easily understood by one of ordinary skill in the art, Petitioner
`
`seeks a construction that adds unnecessary limitations to the claim and in doing so,
`
`rewrites the claims to include the additional limitations of the receiver (1) being “a
`
`circuit or electronic device;” (2) “designed to accept data;” from (3) “an external
`
`communication system.” See Thorner, 669 F.3d at 1367.
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`A. Ground 1: Khazan in view of Sirer Does Not Render Claims 1–5
`Obvious Under 35 U.S.C. § 102(e)
`
`Khazan discloses techniques for detecting “malicious code by verifying that
`
`an application executes in accordance with a model defined using calls to a
`
`predetermined set of targets, such as external routines.” Khazan at Abstract. The
`
`model is created using information obtained from a static analysis (id. at [0065]),
`
`which outputs a list of target functions to be monitored (id. at [0070]). Once the
`
`model is created, the application and associated libraries are loaded into memory.
`
`Id. at [0073].
`
`Here, Petitioner asserts that this application is the claimed “content” that
`
`includes “a call to a first function” and “received over a network” by Khazan. But
`
`such a proposition would be contrary to the claim language requiring the claimed
`
`“content” include “a call to a first function.” Indeed, what Petitioner alleges to be
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`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`the claimed “first function” (Khazan’s wrapper function) is never included in the
`
`application, let alone “content received over a network.” Rather, 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.") In contrast, the claim language
`
`requires the claimed “first function” must be included in the content received over
`
`the network. Indeed, instrumenting these libraries rather than the application is
`
`precisely how Khazan monitors the DLL library functions (“target functions”)
`
`accessed by the application. Id. at [0073]. Accordingly, because the claim
`
`language requires the claimed “first function” must be included in the content
`
`received over the network and Khazan’s wrapper functions are not included in the
`
`application, let alone “content received over the network,” Petitioner’s argument
`
`fails.
`
`Sirer discloses a distributed virtual machine (DVM) for networked
`
`computers. Sirer at Abstract. The article is cited mainly for its disclosure of
`
`“factor[ing] out” services from client computers and instead locating them on
`
`network servers. Id. Here, Petitioner alleges that these client computers process
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`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`content received over the network. But again Petitioner’s proposition is contrary to
`
`the claim language requiring the claimed “content” include “a call to a first
`
`function.” Indeed, what Petitioner alleges to be the claimed “first function”
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`(Sirer’s Dynamic Service Components) is not even a function, let alone included in
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`“content received over a network.” Rather, Sirer’s Dynamic Service Components
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`are separate computers. See Sirer at Figure 1 (illustrating Sirer’s “Dynamic Service
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`Components” are separate computers, such as a Network Management Server, a
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`Security Server, and a Library Manager).
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`Thus, the Petition fails as it gives no effect to the claim language requiring
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`the “content received over the network” to include “a call to a first function,”
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`contrary to established case law. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
`
`1970) (“All words in a claim must be considered in judging the patentability of that
`
`claim against the prior art.”). Accordingly, Petitioner has failed to establish a
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`reasonable likelihood that it will prevail with respect to Ground 1 and 2.
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`1.
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`Khazan in view of Sirer Does not Disclose “a content processor
`(i) for processing content received over a network, the content
`including a call to a first function, and the call including an
`input” (claims 1 and 4)
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`Critically, and fatal to Petitioner’s Grounds 1 and 2, Petitioner has not met
`
`its burden to show that Khazan in view of Sirer discloses “a call to a first function”
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`in “content received over a network” as affirmatively recited in challenged claims
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`1, 4, 6, and 10. Thus, the Petition fails to “specify where each element of the claim
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`is found in the prior art patents or printed publications relied upon.” 37 C.F.R.
`
`§ 42.104(b). Institution on Grounds 1 and 2 should be denied on this basis alone.
`
`(a) Khazan Fails to Show or Suggest “processing content
`received over a network, the content including a call to a
`first function”
`Petitioner asserts that Khazan receives an “instrumented executable” over a
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`network and that the instrumented executable “includes the substitute first function
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`(added by Khazan’s instrumentation).” Petition at 19–20. Petitioner’s argument
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`that Khazan discloses this feature is, therefore, facially deficient because it does
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`not give any patentable weight to the term “call” recited in independent claims 1,
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`4, 6, and 10. See In re Wilson, 424 F.2d at 1385 (All words in a claim must be
`
`considered in judging the patentability of that claim against the prior art.”).
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`Indeed, the challenged independent claims do not require that the content received
`
`over the network include “a first function,” but rather “a call to a first function.”
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`Khazan does not teach receiving content over a network that includes a call
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`to the function Petitioner identifies as the first function—namely, the “wrapper
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`function.” See Petition at 24 (“Khazan discloses the ‘call’ of 1[d] as call ‘204’ to
`
`the ‘wrapper function’ that contains the pre-monitoring code.”). Petitioner’s own
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`annotated version of Khazan’s Fig. 7, reproduced below, only reinforces the fact
`
`that the “call” to the “first function” is not in the “instrumented ‘application
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`- 15 -
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`executable’” Petitioner identifies as the “content” (i.e. Application.EXE (Source
`
`Function) (see Petition at 19):
`
`
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`Petition at 24. As may be appreciated with reference Petitioner’s Annotated
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`version of Khazan’s Fig. 7, the “Call to first function” is not in the
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`Application.EXE, which Petitioner equates with the “content received over a
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`network.” Petition at 19 (“Khazan discloses ‘content’ such as an instrumented
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`‘application executable’ that the ‘one or more processors execute.”).
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`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
`
`- 16 -
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`

`

`Patent Owner’s Preliminary Response
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`monitored and the associated libraries into memory (step 124) and then
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`instrumenting the libraries “to intercept calls” (step 126). Khazan at ¶ [0073].
`
`(b)
`
`Sirer Fails to Show or Suggest “processing content
`received over a network, the content including a call to a
`first function”
`Recognizing these deficiencies in Khazan, Petitioner cites Sirer and asserts
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`that it would be “obvious to combine Sirer with Khazan, e.g., by substituting
`
`Sirer’s instrumentation and dynamic analysis for Khazan’s.” Petition at 20.
`
`However, Petitioner’s argument that Sirer teaches “a content processor (i) for
`
`processing content received over a network, the content including a call to a first
`
`function, and the call including an input” is also facially deficient.
`
`First, Petitioner does not demonstrate that Sirer’s content includes “a call to
`
`a first function.” Rather, Petitioner only states that Sirer’s “instrumented
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`application” (a term found nowhere in the Sirer reference) “includes calls to
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`dynamic service components that check safety at runtime.” Petition at 21
`
`(emphasis added). However, a “dynamic service component” is not a function, let
`
`alone a “first function,” as recited in the challenged independent claims. Rather, as
`
`may be a