UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2015-02001
`Patent No. 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘408 PATENT ......................................................................................... 4
`
`A. Overview ............................................................................................... 4
`
`B.
`
`Challenged Claims ................................................................................ 5
`
`III. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`“parse tree” (all challenged claims): ..................................................... 6
`
`“dynamically building . . . while said receiving receives the
`incoming stream” (all claims): .............................................................. 7
`
`“dynamically detecting, while said dynamically building builds
`the parse tree” (all claims): .................................................................... 9
`
`“instantiating . . . a scanner for the specific programming
`language” (claims 1 and 22): ............................................................... 10
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES
`REVIEW SHOULD NOT BE INSTITUTED ............................................... 11
`
`A.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL AS THE
`PETITION IS PLAINLY DEFECTIVE ON ITS FACE .................... 12
`
`1.
`
`2.
`
`The Board Should Deny the Petition Under 37 C.F.R. §§
`42.20(c), 42.22(a)(2), and 42.104(b)(4) .................................... 12
`
`The Board Should Also Deny Instituting Trial Because
`Petitioner Cannot Rely on Impermissible Incorporation
`by Reference To Cure Its Defective Petition ............................ 15
`
`B. Ground 1: Chandnani in view of Kolawa Does Not Render the
`Challenged Claims Obvious Under 35 U.S.C. § 103 .......................... 18
`
`i
`
`

`
`1.
`
`2.
`
`3.
`
`4.
`
`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`Chandnani in view of Kolawa Does not Disclose
`“receiving, by a computer, an incoming stream of
`program code” (all challenged claims) ..................................... 21
`
`Chandnani in view of Kolawa Does not Disclose
`“instantiating a scanner for the specific programming
`language, in response to said determining”
`(claims 1 and 22) ....................................................................... 22
`
`Chandnani in view of Kolawa Does not Disclose
`“dynamically building, by the computer while said
`receiver receives the incoming stream, a parse tree whose
`nodes represent tokens and patterns in accordance with
`the parser rules” (all challenged claims) ................................... 23
`
`(a) Chandnani does not Disclose Building the Claimed
`Parse Tree ....................................................................... 24
`
`(b) Chandnani in view of Kolawa does not Disclose
`Dynamically Building a Parse Tree ................................ 25
`
`Chandnani in view of Kolawa Does not Disclose
`“dynamically detecting, by the computer while said
`dynamically building builds the parse tree, combinations
`of nodes in the parse tree which are indicators of
`potential exploits, based on the analyzer rules” (all
`challenged claims)..................................................................... 27
`
`C. Ground 2: Chandnani in view of Kolokawa and Walls Does Not
`Render the Challenged Claims Obvious Under 35 U.S.C. § 103 ....... 30
`
`1.
`
`2.
`
`3.
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “receiving, by a computer, an incoming stream
`of program code” (all challenged claims) ................................. 31
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “instantiating a scanner for the specific
`programming language, in response to said determining”
`(claims 1 and 22) ....................................................................... 32
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “dynamically building, by the computer while
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`said receiver receives the incoming stream, a parse tree
`whose nodes represent tokens and patterns in accordance
`with the parser rules” (all challenged claims) ........................... 32
`
`4.
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “dynamically detecting, by the computer while
`said dynamically building builds the parse tree,
`combinations of nodes in the parse tree which are
`indicators of potential exploits, based on the analyzer
`rules” (all challenged claims) .................................................... 34
`
`V.
`
`PETITIONER’S OBVIOUSNESS ARGUMENTS FAIL AS A
`MATTER OF LAW BECAUSE IT DID NOT CONDUCT A
`COMPLETE OBVIOUSNESS ANALYSIS ................................................. 36
`
`VI. CONCLUSION .............................................................................................. 38
`
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’n, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 33
`
`Apple Inc. v. Int'l Trade Comm'n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 35
`
`Aventis Pharms. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) .......................................................................... 11
`
`BAE Sys. Information and Electronic Sys. Integration, Inc. v. Cheetah
`Omni, LLC,
`Case IPR2013-00175 .......................................................................................... 13
`
`In re Baxter Int’l,
`678 F.3d 1357 (Fed. Cir. 2012) ............................................................................ 6
`
`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`Case No. IPR2014-00454 ................................................................. 17, 18, 19, 20
`
`Corning Incorp. v. Danjou’s DSM IP Assets B.V.,
`Case No. IPR2013-00043 ................................................................................... 29
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) .............................................................................. 17
`
`EMC Corp, v. Secure Axcess, LLC,
`Case IPR2014-00475 .......................................................................................... 16
`
`EMC Corp. v. Secure Axcess, LLC,
`Case No. IPR2014-00475 ............................................................................. 23, 24
`
`Finjan, Inc. v. Palo Alto Networks, Inc.,
`Case No. 14-cv-04908-PJH (N.D. Cal.) ............................................................. 39
`
`Finjan, Inc. v. Proofpoint, Inc.,
`Case No. 13-cv-05808-HSG, Dkt. No. 267 (N.D. Cal.) ..................................... 39
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`Finjan, Inc. v. Proofpoint, Inc.,
`Case No. 3:13-cv-05808-HSG, Dkt. 267 (Ex. 2001 at 13) ................................... 6
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ........................................................................ 7, 8
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 35
`
`Leo Pharm. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 37
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 36
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 35
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 7
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 11
`
`In re Vaeck,
`947 F.2d 488 (Fed. Cir. 1991) ............................................................................ 14
`
`In re Wilson,
`424 F.2d 1382 (CCPA 1970) .............................................................................. 14
`
`Statutes
`
`35 U.S.C. § 103 ............................................................................................ 18, 30, 36
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 15, 34
`
`37 C.F.R. § 42.6(e) ................................................................................................... 40
`
`37 C.F.R. § 42.20(c) ..................................................................................... 12, 13, 15
`
`37 C.F.R. § 42.22(a)(2) ................................................................................ 12, 13, 15
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`37 C.F.R. § 42.24 (a)(1) ........................................................................................... 17
`
`37 C.F.R. § 42.65(a) ................................................................................................. 29
`
`37 C.F.R. § 42.104(b) .............................................................................................. 22
`
`37 C.F.R. § 42.104(b)(4) ........................................................... 12, 13, 15, 21, 23, 29
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
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`- vi -
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`

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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`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. 8,225,408 (Ex.
`
`1001, “the ‘408 Patent”), challenging claims 1, 9, 22, 23, 29 and 35 (“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 ‘408 Patent generally discloses systems and methods for receiving
`
`incoming content, determining the specific programming language being used, and
`
`then detecting exploits within received content by instantiating a language-specific
`
`scanner which has parser rules and analyzer rules created for that programming
`
`language. The Patent teaches that by dynamically building a parse tree potential
`
`exploits can be dynamically detected during the receiving and scanning of the
`
`incoming program code. See ’408 Patent, Abstract and Claim 1. For instance, the
`
`parse tree can be dynamically analyzed to detect exploits within the content using
`
`analyzer rules using a pattern matching engine, which can identify patterns that
`
`match those of potential exploits. See id. at 2:25–3:6 and 9:42-54.
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`In contrast, Petitioner’s primary reference (Chandnani) does not mention any
`
`kind of tree structure, let alone the dynamically built parse tree used to
`
`dynamically detect exploits within incoming program code as recited in the claims
`
`of the ‘408 Patent.
`
`Furthermore, there is no specific programming language that is subject to a
`
`scanner as required under the ‘408 Patent in Chandnani. In fact, Chandnani
`
`specifically explains that every portion of script language or content is subjected to
`
`the analysis and detection techniques described. See e.g., Chandnani, 9:8-12. The
`
`‘408 Patent, conversely, specifically explains and requires that only specific
`
`programming languages be subject to the scanner
`
`To cure Chandnani’s deficiencies, Petitioner relies on Kolawa (for Grounds
`
`1 and 2) as well as Walls (for Ground 2). But these references do not even qualify
`
`as analogous art as they make no mention of detecting exploits. Rather, both
`
`references are focused on helping companies create software without bugs. See
`
`Kolawa at 1:25-29 (describing how Kolawa is addressed at the “problem of writing
`
`error-free computer programs has plagued programmers since the very
`
`beginning.”); see also Walls at 2:10-21 (describing how Walls is directed towards
`
`“companies that develop and release application software… Developers of
`
`operating systems such as Sun Microsystems and Hewlett-Packard”); see also
`
`Walls at 6:30–43 (describing how Walls provides a “process for certifying whether
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`a software program is free from a common class of software flaws…”),. In
`
`contrast to looking for flaws or bugs, the invention claimed by the ‘408 Patent is
`
`directed towards identifying the presence of malicious intent. This is why all the
`
`independent claims define exploits as “portions of program code that are
`
`malicious.” See ‘408 Patent (requiring “exploits being portions of program code
`
`that are malicious”) In contrast, no software company would ever certify that they
`
`created software containing “portions of program code that are malicious.”
`
`Because Kolawa and Walls are “non-analogous,” neither reference qualify as prior
`
`art under 35 U.S.C. § 103. Thus, the Petition cannot make the threshold showing
`
`of obviousness.
`
`Although there are a variety of reasons why the ‘408 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 Techs., 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 view of IPR2015-01545, Paper No. 9 (PTAB Dec. 11, 2015), Patent
`
`Owner explicitly disagrees with Petitioner’s contention that all of challenged
`
`claims recite essentially the same elements and only groups limitations for the
`
`purpose of rebutting Petitioner’s arguments, which inappropriately fail to
`
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`

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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`distinguish claim limitations. Patent Owner explicitly reserves the right to provide
`
`further distinctions between the prior art and the challenged claims. The
`
`deficiencies of the Petition noted herein, however, are sufficient for the Board to
`
`find that Petitioner has not met its burden to demonstrate a reasonable likelihood
`
`that it would prevail in showing unpatentability of any of the challenged claims.
`
`II. THE ‘408 PATENT
`
`A. Overview
`
`Patent Owner’s ‘408 Patent was filed August 30, 2004, and claims priority
`
`to U.S. Patent No. 6,804,780, filed Mar. 30, 2000, and U.S. Patent No. 6,092,194,
`
`filed Nov. 6, 1997. The systems and methods of the ‘408 Patent are generally
`
`directed towards systems and methods for using a dynamically built parse tree to
`
`detect exploits within incoming program code. This parse tree is dynamically
`
`created and analyzed using parser rules that define certain patterns in terms of
`
`tokens and analyzer rules that identify certain combinations of tokens and patterns
`
`as being indicators of potential exploits. See, e.g., ‘408 Patent at 2:25–3:6; id. at
`
`9:42–54. By describing portions of potentially malicious program code in this
`
`novel manner, the ‘408 Patent allows for efficient and accurate detection of
`
`exploits within incoming program code. See ’408 Patent, Abstract and Claim 1.
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`B. Challenged Claims
`Petitioner challenges independent claims 1, 9, 22, 23, 29, and 35 of the ‘408
`
`Patent. Claim 1 is reproduced below:
`
`1. A computer processor-based multi-lingual method for scanning
`incoming program code, comprising:
`
`
`
`receiving, by a computer, an incoming stream of program code;
`
`determining, by the computer, any specific one of a plurality of
`
`programming languages in which the incoming stream is written;
`
`instantiating, by the computer, a scanner for the specific
`
`programming language, in response to said determining, the scanner
`comprising parser rules and analyzer rules for
`the specific
`programming language, wherein the parser rules define certain
`patterns in terms of tokens, tokens being lexical constructs for the
`specific programming language, and wherein the analyzer rules
`identify certain combinations of tokens and patterns as being
`indicators of potential exploits, exploits being portions of program
`code that are malicious;
`
`identifying, by the computer, individual tokens within the
`
`incoming stream;
`
`dynamically building, by the computer while said receiving
`
`receives the incoming stream, a parse tree whose nodes represent
`tokens and patterns in accordance with the parser rules;
`
`dynamically detecting, by the computer while said dynamically
`
`building builds the parse tree, combinations of nodes in the parse tree
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`which are indicators of potential exploits, based on the analyzer rules;
`and
`
`indicating, by the computer, the presence of potential exploits
`
`within the incoming stream, based on said dynamically detecting.
`
`‘408 Patent at 19:45–20:7.
`
`III. CLAIM CONSTRUCTION
`A.
`“parse tree” (all challenged claims):
`The term “parse tree” means “a hierarchical structure of interconnected
`
`nodes built from scanned content.” This is the construction arrived at by the
`
`District Court in Finjan, Inc. v. Proofpoint, Inc., Case No. 3:13-cv-05808-HSG,
`
`Dkt. 267 (Ex. 2001 at 13). Importantly, the Federal Circuit explained: “even with
`
`a more lenient standard of proof, the PTO ideally should not arrive at a different
`
`conclusion.” In re Baxter Int’l, 678 F.3d 1357, 1365 (Fed. Cir. 2012). This
`
`construction is also consistent with the intrinsic evidence:
`
`[P]arser 220 uses a parse tree data structure to represent scanned
`content. A parse tree contains a node for each token identified while
`parsing, and uses parsing rules to identify groups of tokens in a single
`pattern.
`
`‘408 Patent at 8:23–27.
`
`Petitioner’s proposed construction is unduly broad because it would
`
`encompass any tree data structure that could possibly represent program code. But
`
`this broad interpretation is completely at odds with how the claimed “parse tree” is
`
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`described in the claim language and the specification. See e.g. ‘408 Patent at claim
`
`1 (reciting that “combinations of nodes in the parse tree which are indicators of
`
`potential exploits” with “exploits being portions of program code that are
`
`malicious.”); ‘408 Patent at 8:18-25 (describing how the claimed parse tree is used
`
`during the process of scanning incoming content rather than creating content using
`
`a compiler). Indeed, the Federal Circuit dictates that BRI does not allow claims to
`
`be interpreted “to embrace anything remotely related to the claimed invention.” In
`
`re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). Thus, the Board
`
`should reject Petitioner’s proposed construction of the term “parse tree.”
`
`B.
`
`“dynamically building . . . while said receiving receives the
`incoming stream” (all claims):
`
`When read within the context of the claims, there is no need to construe the
`
`phrase “dynamically building…while said receiving receives the incoming
`
`stream.” 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.”).
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`The term “dynamically building…while said receiving receives the
`
`incoming stream” appears in all of the challenged claims1 with its scope clearly set
`
`forth in the claims. Each of the challenged independent claims show that (1) an
`
`incoming stream is received by a computer, (2) identifying tokens within the
`
`incoming stream, and (3) dynamically building a parse tree whose nodes represent
`
`tokens and patterns while the receiver receives the incoming stream.
`
`Petitioner argues that “dynamically building…while said receiving receives
`
`the incoming stream” should mean “building during a time period that overlaps
`
`with the time period during which the incoming stream is being received.”
`
`However, Petitioner does not assert either that the claim language is unclear or that
`
`the intrinsic record demands an alternative construction, let alone the construction
`
`proposed in the Petition. As such, the Board should reject Petitioner’s proposed
`
`construction and follow the plain claim language requirement for “dynamically
`
`building…while said receiving receives the incoming stream.”
`
`
`1 This claim term is explicitly recited in independent claims 1, 22, 23, and 35. The
`
`minor variations of the claim language recited in independent claims 9 and 29
`
`should be considered identical for purposes of this claim construction.
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`C.
`
` “dynamically detecting, while said dynamically building builds
`the parse tree” (all claims):
`
`When read within the context of the claims, there is no need to construe the
`
`phrase “dynamically detecting, while said dynamically building builds the parse
`
`tree.” See, e.g., Interactive Gift Express, 256 F.3d at 1331 (“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.”).
`
`The term “dynamically detecting, while said dynamically building builds the
`
`parse tree” appears in all of the challenged claims2 with its scope clearly set forth
`
`in the claims. Each of the challenged independent claims show that (1) an
`
`incoming stream is received by a computer, (2) identifying tokens within the
`
`incoming stream, (3) dynamically building a parse tree whose nodes represent
`
`tokens and patterns while the receiver receives the incoming stream, and (4)
`
`dynamically detecting, by the computer while said dynamically building builds the
`
`parse tree, combinations of nodes in the parse tree which are indicators of potential
`
`exploits.
`
`
`2 This claim term is explicitly recited in independent claims 1, 22, 23, and 35. The
`
`minor variations of the claim language recited in independent claims 9 and 29
`
`should be considered identical for purposes of this claim construction.
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
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`Petitioner argues that “dynamically detecting…while said dynamically
`
`building builds the parse tree” should mean “detecting during a time period that
`
`overlaps with the time period during which the parse tree is being built.” But as
`
`with the “dynamically building” term discussed directly above, Petitioner does not
`
`assert either that the claim language is unclear or that the intrinsic record demands
`
`an alternative construction, let alone the construction proposed in the Petition. As
`
`such, the Board should reject Petitioner’s proposed construction and follow the
`
`plain claim language requirement for “dynamically detecting…while said
`
`dynamically building builds the parse tree.”
`
`D.
`
` “instantiating . . . a scanner for the specific programming
`language” (claims 1 and 22):
`
`The proper construction of “instantiating” is “creating a real instance of a
`
`scanner for the specific programming language.” This term is used according to its
`
`widely accepted meaning in the specification of the ‘408 Patent:
`
`ARB scanner factory module 630 instantiates a scanner repository
`640. Repository 640 produces a single instance of each ARB scanner
`defined in the archive file.
`
`‘408 Patent at 15:30–35. In fact, Petitioner cites to the Microsoft Computing
`
`Dictionary, Third Edition, which defines “instantiate” as “[t]o create an instance of
`
`a class.” Thus, Finjan’s proposal is the proper construction of this term.
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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`In contrast to Petitioner’s own dictionary definition, Petitioner proposes that
`
`“instantiating” should mean “making a language-specific scanner available for
`
`use.” Petitioner never explains why this term should be construed differently than
`
`its own dictionary definition, let alone citing anything in the specification that
`
`supports its construction.
`
`Rather, the real motivation for Petitioner’s proposed construction is to
`
`rewrite the claimed “instantiating” such that it reads upon the prior art. Because
`
`Petitioner cannot be allowed to circumvent the plain language and alter the scope
`
`of the claims to support its invalidity arguments, Petitioner’s construction should
`
`be rejected. See Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373
`
`(Fed. Cir. 2013) (dictating the requirement to “‘look to the words of the claims
`
`themselves . . . to define the scope of the patented invention.’”) (citation omitted);
`
`see also Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed.
`
`Cir. 2012) (“[W]e do not redefine words. Only the patentee can do that.”).
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`
`Petitioner’s proposed Grounds rely on three references: Chandnani et al.,
`
`U.S. Patent No. 7,636,945 (Ex. 1003; “Chandnani”); Kolawa et al. U.S. Patent No.
`
`5,860,011 (Ex. 1004, “Kolawa”); and Walls et al. U.S. Patent No. 7,284,274 (Ex.
`
`1005, “Walls”).
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`

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`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`Ground 1 proposes that Chandnani in view of Kolawa renders obvious
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`claims 1, 9, 22, 23, 29, and 35 of the ‘408 Patent.
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`Ground 2 proposes that Chandnani in view of Kolawa and Walls renders
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`obvious claims 1, 9, 22, 23, 29, and 35 of the ‘408 Patent.
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`As a threshold matter, the Board should not institute trial as the Petition is
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`plainly defective on its face, namely because (1) the Petition does not identify how
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`the cited references disclose or render obvious each of the claim elements, contrary
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`to 37 C.F.R. §§ 42.20(c), 42.22(a)(2), and 42.104(b)(4). Thus, the Board should
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`not institute trial for these reasons alone.
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`Furthermore, trial should not be instituted because Petitioner has failed to
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`show a reasonable likelihood of success with respect to at least the following
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`limitations: “receiving…incoming stream of computer code,” “instantiating a
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`scanner for the specific programming language…,” “dynamically building…while
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`said receiver receives the incoming stream, a parse tree whose nodes represent
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`tokens and patterns in accordance with the parser rules,” and “dynamically
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`detecting, … while said dynamically building builds the parse tree, combinations
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`of nodes in the parse tree which are indicators of potential exploits….”
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`A. THE BOARD SHOULD NOT INSTITUTE TRIAL AS THE
`PETITION IS PLAINLY DEFECTIVE ON ITS FACE
`1.
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`The Board Should Deny the Petition Under 37 C.F.R. §§
`42.20(c), 42.22(a)(2), and 42.104(b)(4)
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`

`
`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`As a threshold matter, the Board should not institute trial because the
`
`Petition does not identify how the cited references disclose or render obvious each
`
`of the claim elements. Rather, the Petition makes inadequate conclusory
`
`statements that Chandnani, Kolawa and Walls disclose limitations without
`
`providing any explanation of how the references disclose each element recited in
`
`these limitations. At most, the Petition includes a paraphrasing of the claim
`
`elements and a claim chart purporting to map each claim element to the cited
`
`references. However, neither the paraphrased claim elements nor the claim chart
`
`address all of the claimed features or in any way indicates how the elements of the
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`references could be arranged or combined as recited in the challenged claims.
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`Thus, Petitioner effectively invites the Board to make the required identification.
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`But the Board should decline this invitation as it is Petitioner’s burden to “establish
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`that it is entitled to the requested relief” and to do so “[t]he petition must specify
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`where each element of the claim is found in the prior art” and provide “a detailed
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`explanation of the significance of the evidence.” 37 C.F.R. §§ 42.20(c),
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`42.22(a)(2), and 42.104(b)(4).
`
`As a threshold matter, the Board should not institute trial because the
`
`Petition does not identify how the cited references disclose or render obvious each
`
`of the claim elements. Rather, the Petition makes inadequate mere conclusory
`
`statements that Chandnani, Kolawa and Walls disclose limitations without
`
`- 13 -
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`

`
`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`providing any explanation of how the references disclose each element recited in
`
`these limitations. At most, the Petition includes a paraphrasing of the claim
`
`elements and a claim chart purporting to map each claim element to the cited
`
`references. However, neither the paraphrased claim elements nor the claim chart
`
`address all of the claimed features or in any way indicates how the elements of the
`
`references could be arranged or combined as recited in the challenged claims.
`
`For example, the Petition never identifies the “parser rules,” the “analyzer
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`rules,” “the specific programming language” that are allegedly included in
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`Chandnani’s detection engine. See Petition at 22 (paraphrasing the claimed “the
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`scanner comprising parser rules and analyzer rules for the specific programming
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`language” recited in claim 1(d) as “scanner with language-specific rules”).
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`Making matters worse, the Petition simply cites to previous sections of the Petition
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`to evade explaining distinctions recited in subsequent claims. For example, the
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`Petition simply cites SectionX.D.4 (discussing claim 23) for claim 29’s
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`requirement that the claimed detection be “based on the descriptions of exploits
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`vis-à-vis the specific programming language,” even though SectionX.D.4 does not
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`mention this language at all. Petition at 53. In contrast, Federal Circuit dictates
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`that prima facie obviousness requires all words in a claim to be taught or suggested
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`by the prior art. See In re Vaeck, 947 F.2d 488 (Fed. Cir. 1991); see also In re
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`- 14 -
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`

`
`Patent Owner’s Preliminary Response
`IPR2015-02001 (U.S. Patent No. 8,225,408)
`
`Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be
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`considered in judging the patentability of that claim against the prior art.”).
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`Notably, the Petition also provides numerous bare citations to substitute for
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`the Petition’s failure to present fully developed arguments that make required
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`identification. But “[i]t is improper for any argument to be fully developed and
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`presented, not in the party’s paper itself, but in the declaration of an expert.” See
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`BAE Sys. Information and Electronic Sys. Integration, Inc. v. Cheetah Omni, LLC,
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`Case IPR2013-00175, Paper No. 45 (P.T.A.B. June 19, 2014) Such citations
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`effectively invite the Board to sift through numer