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
`Case IPR2016-00157
`Patent 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)1
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in
`the caption.
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2015-02001
`Case IPR2016-00157
`Patent 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PARTIAL REQUEST FOR
`REHEARING PURSUANT TO 37 C.F.R. §§ 42.71(c) and 42.71(d)1
`
`
`1 The word-for-word identical paper is filed in each proceeding identified in
`the caption.
`
`
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Board Overlooked Patent Owner’s Substantive Arguments
`Regarding Chandnani’s Failure to Disclose “dynamically detecting…” ........ 2
`
`III. The Board Overlooked Patent Owner’s Arguments Regarding Walls’
`Failure to Disclose “dynamically detecting…” ............................................... 4
`
`IV. Conclusion ....................................................................................................... 6
`
`
`
`i
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF AUTHORITIES
`
`Cases
`Star Fruits S.N.C. v. U.S.,
`393 F.3d 1277 (Fed. Cir. 2005) ........................................................................ 1, 2
`
` Page(s)
`
`Statutes
`
`35 U.S.C. § 103(a) ..................................................................................................... 6
`
`Other Authorities
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`
`
`ii
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Patent Owner, Finjan, Inc. (“Finjan” or “Patent Owner”), respectfully
`
`requests rehearing of the Board’s Decision on Institution (IPR2015-02001, Paper
`
`No. 7; IPR2016-00157, Paper No. 10) (the “Consolidated Institution Decision”)
`
`under 37 C.F.R. § 42.71(d). In particular, Finjan respectfully requests
`
`reconsideration of the decision to institute trial on the four grounds identified in the
`
`Consolidated Institution Decision.
`
`I.
`
`INTRODUCTION
`
`The Board applies an abuse of discretion standard when rehearing a decision
`
`on institution. “An abuse of discretion occurs where the decision is based on an
`
`erroneous interpretation of the law, on factual findings that are not supported by
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`factors.” Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005) (citation
`
`omitted). Here, the Board should grant Patent Owner’s Request for Rehearing of
`
`the Institution Decision because the Board’s decision to institute trial with respect
`
`to Chandnani and Kolawa (and Chandnani and Kolawa further in view of Walls
`
`and/or Huang) rely on factual findings that are not supported by substantial
`
`evidence.
`
`1
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`II. THE BOARD OVERLOOKED PATENT OWNER’S SUBSTANTIVE ARGUMENTS
`REGARDING CHANDNANI’S FAILURE TO DISCLOSE “DYNAMICALLY
`DETECTING…”
`
`The Institution Decision should be modified because it relies “on factual
`
`findings that are not supported by substantial evidence.” Star Fruits, 393 F.3d at
`
`1281. In particular, the Board overlooked Patent Owner’s argument that
`
`Chandnani does not disclose the “dynamically detecting…” feature of the
`
`challenged claims at least because Chandnani “discloses a sequential, disjointed
`
`process for tokenizing a data stream and processing the tokens.” See IPR2016-
`
`00157, Paper No. 9 (“‘157 POPR”) at 29; see also IPR2015-02001, Paper No. 6
`
`(“‘2001 POPR”) at 19–20 and 30 n.6. In its Consolidated Institution Decision, the
`
`Board indicated that it adopted Petitioner’s fatally flawed argument because
`
`“Patent Owner’s counterargument relies on its position that Chandnani fails to
`
`disclose receipt of an incoming stream that is scanned.” See Institution Decision at
`
`18. However, this analysis does not address Patent Owner’s substantive arguments
`
`regarding the clear deficiencies of Chandnani presented in the ‘157 and ‘2001
`
`POPRs:
`
`In fact, Chandnani’s lexical analyzer (notably, tokenizer is not
`mentioned anywhere in the reference) does not operate ‘continuously
`and simultaneously,’ but rather discloses a sequential, disjointed
`process for tokenizing a data stream and processing the tokens. Once
`the data stream is generated on the computer, Chandnani discloses
`
`2
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`performing a two stage process for detecting viruses that first
`‘tokenize[s] the data stream’ and then ‘process[es] the tokens
`using the detection data.’ Id. at 7:56–59. Notably, as a result of
`this two-stage process, the processing of the tokens does not occur
`until after the data stream is fully tokenized. Id; see also id. at
`8:50–53 (‘If the check [to be performed] is a pattern match, the token
`stream is analyzed lexically using the pattern match detection
`data….’).
`
`‘157 POPR at 29; see also ‘2001 POPR at 19–20 and 30 n.6 (emphasis added).
`
`These arguments, which were explicitly presented in the POPRs, and which were
`
`not addressed by the Petition or the Board, fully rebut the unsupported argument
`
`presented in the Petitions upon which the Board relied in its decisions to institute
`
`trial in the instant cases—namely, that Chandnani’s tokenizer and analyzer
`
`“continuously and simultaneously operate on the incoming data stream.” ‘2001
`
`Petition at 33–34; see also Consolidated Institution Decision at 18.
`
`Accordingly, Patent Owner respectfully submits that the Board overlooked
`
`the argument the Chandnani in view of Kolawa fails to 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.” As argued in the ‘2001 and ‘157 POPRs, rather than
`
`teaching an analyzer that “continuously and simultaneously operates on the
`
`incoming data stream” as Petitioner misleadingly argues, Chandnani discloses a
`
`3
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`two-stage process in which “the processing of the tokens does not occur until after
`
`the data stream is fully tokenized.” ‘157 POPR at 29; see also ‘2001 POPR at 19–
`
`20.
`
`Accordingly, Patent Owner respectfully requests that the Board modify its
`
`Consolidated Institution Decision to institute trial on the ‘408 Patent at least
`
`because Chandnani does not teach the “dynamically detecting” limitations of the
`
`challenged claims, as affirmatively demonstrated in Patent Owner’s POPRs.
`
`III. THE BOARD OVERLOOKED PATENT OWNER’S ARGUMENTS REGARDING
`WALLS’ FAILURE TO DISCLOSE “DYNAMICALLY DETECTING…”
`
`In addition, the Board failed to provide any analysis of Walls, leaving Patent
`
`Owner to guess at the reasons that trial was instituted. Specifically, Grounds 2 and
`
`4 of the Board’s Consolidated Institution Decisions rely on a proposed
`
`combination of Walls with Chandnani and Kolawa. As the Board acknowledges,
`
`Petitioner proposed the addition of Walls to the combination of Chandnani and
`
`Kolawa as “an alternative ground for finding that two limitations—the
`
`‘dynamically building’ and ‘dynamically detecting’ elements common to every
`
`Petitioned Claim—would have been obvious.” Consolidated Institution Decision
`
`at 21. However, the Board overlooked Patent Owner’s arguments regarding this
`
`“alternative” invalidity theory, which demonstrate that Walls does not teach the
`
`two features for which it was explicitly cited. See ‘157 POPR at 35–39; see also
`
`‘2001 POPR at 32–35.
`
`4
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Rather than providing any analysis, the Board only states that “[i]n view of
`
`our determination that Petitioner demonstrates a reasonable likelihood of
`
`prevailing on the basis of the Chandnani-Kolawa combination, it follows that we
`
`find Patent Owner’s arguments as to asserted deficiencies in that combination
`
`unpersuasive.” Consolidated Institution Decision at 22. Given this reasoning,
`
`Patent Owner is at a loss to understand the grounds of unpatentability that are at
`
`issue in this inter partes review proceeding. If the Board intends to rely solely on
`
`Chandnani and Kolawa, the grounds that add Walls are redundant because Walls
`
`adds nothing to the underlying combination. If the Board intends to give full
`
`consideration to the combination of Chandnani, Kolawa, and Walls proposed in the
`
`Petition, Patent Owner is entitled to have its pre-institution arguments regarding
`
`the deficiencies of Walls addressed by the Board, especially given that the
`
`arguments should significantly narrow the questions of patentability at issue in the
`
`current proceedings.
`
`In either case, in light of the Board’s decision to overlook Patent Owner’s
`
`dispositive arguments regarding Walls’ failure to disclose the claim limitations for
`
`which it was specifically cited, Patent Owner respectfully requests that the Board
`
`modify its Consolidated Institution Decision to remove Grounds 2 and 4 from trial.
`
`5
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`IV. CONCLUSION
`
`For at least the foregoing reasons, Finjan respectfully submits that the Board
`
`overlooked or misapprehended the arguments presented in the POPR that
`
`demonstrate that Petitioner failed to meet its burden to show a reasonable
`
`likelihood of success on the sole instituted ground. Finjan requests, therefore, that
`
`the Board modify its Institution Decision and decline to subject claims 1, 3–5, 9,
`
`12–16, 18, 19, 22, 23, 29, and 35 of the ‘408 Patent to inter partes review under
`
`35 U.S.C. § 103(a) in view of Chandnani, Kolawa, Walls, and Huang.
`
`Dated: April 12, 2016
`
`(Case No. IPR2015-02001
` Case No. IPR2016-00157)
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`mkim@finjan.com
`
`Attorneys for Patent Owner
`
`6
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`PALO ALTO NETWORKS, INC.,
`v.
`FINJAN, INC.,
`
`Case No. IPR2015-02001
`Case No. IPR2016-00157
`Patent 8,225,408
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit 2001 Claim Construction Order in Finjan, Inc. v. Proofpoint, Inc., Case
`No. 13-cv-05808-HSG, Dkt. No. 267, (N.D. Cal.), dated
`December 3, 2015.
`
`Exhibit 2002
`
`Plaintiff Finjan, Inc.’s Objections and Responses to Defendant
`Palo Alto Networks, Inc.’s First Set of Interrogatories (Nos. 1-
`13), in Finjan, Inc. v. Palo Alto Networks, Inc., Case No. 14-cv-
`04908-PJH, (N.D. Cal.), dated February 25, 2015.
`Exhibit 2003 Palo Alto Networks, Inc. v. Finjan, Inc., Case No. IPR2015-2001,
`Petition for Inter Partes Review of U.S. Patent No. 8,225,408
`(P.T.A.B. Sept. 30, 2015)
`
`- 7 -
`
`
`
`Patent Owner’s Partial Request for Rehearing
`IPR2015-02001 & IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`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 Partial Request for Rehearing
`
`Pursuant to 37 C.F.R. §§ 42.71(c) and 42.71(d) was served on April 12, 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:
`
`Matthew I. Kreeger (Reg. No. 56,398)
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`
`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
`
`
`Jonathan Bockman (Reg. No. 45,640)
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`JBockman@mofo.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`zpatdcdocketing@cooley.com
`
`Joshua A. Crawford (Reg. No. 72,137)
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`JCrawford@mofo.com
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`- 8 -
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
