Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: May 16, 2016
`
`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 B21
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.42.71(d)
`
`
`
`
`
`
`1 These proceedings have been consolidated.
`
`
`571-272-7822
`
`
`
`
`
`Paper 13
`Entered: May 16, 2016
`
`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 B21
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.42.71(d)
`
`
`
`
`
`
`1 These proceedings have been consolidated.
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`
`Patent Owner requests rehearing of our Decision (Paper 10,2 “Dec.”)
`instituting inter partes review of claims 1, 3–7, 9, 12–16, 18, 19, 20–23, 29,
`and 35 of U.S. Patent No. 8,225,408 B2. Paper 12 (“Req. Reh’g”).3 On
`rehearing, the burden of showing that the Decision should be modified lies
`with Patent Owner, the party challenging the Decision. 37 C.F.R. 42.71(d).
`“The request must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id. Patent
`Owner contends that: (1) “the Board overlooked Patent Owner’s argument
`that Chandnani does not disclose the ‘dynamically detecting . . . ’ feature of
`the challenged claims”; and (2) “the Board failed to provide any analysis of
`Walls [i.e., U.S. Patent No. 7,284,274 B1], leaving Patent Owner to guess at
`the reasons that trial was instituted.” Req. Reh’g 2, 4.
`Independent claim 1 recites “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.” A similar limitation is recited in each of challenged
`independent claims 9, 22, 23, 29, and 35. In its Petitions, Petitioner
`contended that “Chandnani [i.e., U.S. Patent No. 7,636,945 B2] discloses
`dynamic detection because its tokenizer and analyzer operate ‘continuously
`and simultaneously’ on the incoming data stream, supporting its position
`with testimony by Dr. [Aviel] Rubin.” Dec. 18 (citing Pet. 2001, 33–34
`
`
`2 Unless otherwise indicated, citations are to IPR2016-00157.
`3 Patent Owner represents that the Requests for Rehearing filed in the two
`proceedings are “word-for-word identical.” Paper 9, 1, n.1.
`2
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`(citing Ex. 1003, col. 8, ll. 50–52, col. 9, ll. 12–16; Ex. 1002 ¶¶ 183–85));
`See Paper 2 (“Pet. 157”), 35–36. Petitioner’s contention was grounded on its
`observation that Chandnani discloses a detection stage “operat[ing] on a
`stream of tokens in the same way the tokenizer operates on the incoming
`stream of computer code.” Pet. 157 (citing Ex. 1003, col. 8, ll. 50–52 (“If
`the check is a pattern match, the token stream is analyzed lexically using the
`pattern match detection data and language description data (step 44).”).
`In its Request for Rehearing, Patent Owner draws our attention to the
`following argument presented in its Preliminary Response for IPR2016-
`00157, with a similar argument presented in its Preliminary Response for
`IPR2015-02001:
`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 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 . . . . ’).
`
`Req. Reh’g 2–3 (citing Paper 9 (“Prelim. Resp. 157”), 29; IPR2015-02001,
`Paper 6, 19–20, n.6) (emphasis and alterations by Patent Owner). Patent
`Owner contends that “[t]hese arguments, which were explicitly presented in
`the [Preliminary Responses], and which were not addressed by the Petition
`
`3
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`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.” Req. Reh’g 3.
`The two-stage process described by Chandnani is not unambiguous:
`The data stream, in an embodiment in which the target script
`languages are defined by pattern matching rules and the patterns
`are associated with output tokens (described above), may be
`converted to a stream of tokens. The tokens may correspond to
`respective language constructs, and each token may be a
`corresponding unique number, symbol, etc. A detection process
`in that embodiment has two stages: (i) tokenize the data stream;
`and (ii) process the tokens using the detection data.
`
`Ex. 1003, col. 7, ll. 51–59. That is, it is not apparent from this description
`that the two stages identified by Chandnani occur, as Patent Owner
`contends, as a “sequential, disjointed process,” rather than as interleaved
`stages. At this stage of the proceeding, we credit the testimony of Dr. Rubin
`that “[i]n the context of the Chandnani + Kolawa combination, [operation on
`a stream of tokens] means that at any given time, the continuous data stream
`will intersect with both the tokenizer (which feeds nodes from the stream to
`the parse tree for storage) and the analyzer (which searches the nodes[’]
`output by the parsing stage for patterns that represent potential exploits).”
`Ex. 1002 ¶ 190. Such testimony regarding what one of skill in the art would
`understand from Chandnani and Kolawa is not unambigously contradicted
`by the disclosure identified by Patent Owner, and Patent Owner provides
`insufficient reason for us to discount it at this stage of the proceedings.
`With respect to Patent Owner’s argument regarding Walls, Petitioner
`contended, in its Petitions, that the combination of Chandnani, Kolawa, and
`
`4
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`Walls provides “an alternative ground for finding that two limitations in the
`independent claims . . . —the ‘dynamically building’ and ‘dynamically
`detecting’ elements common to every Petitioned Claim—would have been
`obvious to a [person of ordinary skill in the art] at the time of the alleged
`invention claimed in the ’408 patent.” Pet. 157, 54 (citation omitted).
`Petitioner relied on (1) Walls’s disclosure of “a pipelined approach for
`certifying software wherein distinct components are assembled into a
`pipeline such that the results of one component are used as input for the next
`component,” and; (2) Walls’s disclosure of building an abstract syntax tree
`(which Petitioner identified as the “parse tree” recited in the claims) to feed
`a first pipeline stage at the same time upstream portions of code have not yet
`been received. Dec. 21; see Pet. 157, 55–56.
`Patent Owner responded that such reliance was “both irrelevant and
`unsupported by any evidence.” Prelim. Resp. 157, 36. We disagree with
`Patent Owner’s argument that “Petitioner does not explain where [Walls]
`teaches (1) parsing and analyzing one part of a data stream or (2) while other
`parts of the stream are still being received.” Id. Petitioner specifically
`identifies Figure 2 of Walls as showing building of an abstract syntax tree to
`feed a first pipeline stage at the same time upstream portions of code have
`not yet been received, and supports that reasoning with testimony by Dr.
`Rubin. Pet. 157 (citing Ex. 1005, col. 7, ll. 25–31, Fig. 2; Ex. 1002 ¶ 176).
`Petitioner makes that argument in its Petitions, and, to the degree the
`argument is supported by testimony of Dr. Rubin, our Institution Decision
`rejected Patent Owner’s broad contention that Petitioner’s reliance on Dr.
`
`5
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`Rubin’s testimony “amounts to improper incorporation by reference.” Pet.
`157, 55–56 (citing Ex. 1002 ¶¶ 173–83); Prelim. Resp. 157, 36; see Dec. 16.
`We conclude that Petitioner has not identified adequately any matter
`that we misapprehended or overlooked.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`6
`
`
`
`IPR2015-02001, IPR2016-00157
`Patent 8,225,408 B2
`
`PETITIONER:
`
`IPR2015-02001
`Orion Armon (Lead Counsel)
`Christopher Max Colice (Back-up Counsel)
`Jennifer Volk (Back-up Counsel)
`Brian Eutermoser (Back-up Counsel)
`oarmon@cooley.com
`mcolice@cooley.com
`jvolkfortier@cooley.com
`beutermoser@cooley.com
`
`IPR2016-00157
`Matthew I. Kreeger (Lead Counsel)
`Jonathan Bockman (Back-up Counsel)
`FinjanPANMofoTeam@mofo.com
`
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim (Back-up Counsel)
`mkim@finjan.com
`
`
`7
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