UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`
`Patent No. 8,141,154
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`
`v.
`
`FINJAN, INC.,
`Patent Owner
`
`Patent No. 8,141,154
`
`_______________
`
`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATIONS
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`II.
`
`PATENT OWNER’S OBSERVATIONS ON CROSS-
`EXAMINATION SHOULD BE EXPUNGED FOR BEING
`IMPROPERLY ARGUMENTATIVE ........................................................... 1
`RESPONSES TO PATENT OWNER OBSERVATIONS ............................ 1
`A. Dr. Rubin’s testimony regarding FIG. 4 of Ross ................................. 1
`B. Dr. Rubin’s testimony regarding when the pseudocode provided
`in his declaration was written ............................................................... 2
`C. Dr. Rubin’s testimony regarding his use of table III of the ’154
`patent .................................................................................................... 3
`D. Dr. Rubin’s testimony relating to the teachings of Ross with
`respect to the recited “content received over a network” ..................... 4
`
`
`
`-i-
`
`
`
`
`
`IPR2016-00151
`
`Attorney Docket No. 719712801200
`
`TABLE OF AUTHORITIES
`
`
`CASE
`Medtronic, Inc. v. Nuvasive, Inc.,
`No. IPR2013-00506, Paper No. 37 (P.T.A.B. Oct. 15, 2014) .............................. 1
`
`Page(s)
`
`STATUTE
`
`37 C.F.R. § 42.7(a) ..................................................................................................... 1
`
`OTHER AUTHORITY
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756-01 (Aug. 14, 2012) ........... 1
`
`
`
`i
`
`
`
`IPR2016-00151
`
`Attorney Docket No. 719712801200
`
`Petitioner Palo Alto Networks, Inc. provides the following responses to
`
`Patent Owner’s Motion for Observations filed December 28, 2016 (Paper No. 40).
`
`I.
`
`PATENT OWNER’S OBSERVATIONS ON CROSS-EXAMINATION
`SHOULD BE EXPUNGED FOR BEING IMPROPERLY
`ARGUMENTATIVE
`
`Patent Owner’s observations on cross-examination are improperly
`
`argumentative and violate rules established by the Board’s Trial Practice Guide.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756-01, 48767-768 (Aug. 14,
`
`2012); 37 C.F.R. § 42.7(a). Thus, the Board should decline to enter and consider
`
`Patent Owner’s argumentative observations. See Medtronic, Inc. v. Nuvasive, Inc.,
`
`No. IPR2013-00506, Paper No. 37 at 2 (P.T.A.B. Oct. 15, 2014).
`
`II. RESPONSES TO PATENT OWNER OBSERVATIONS
`A. Dr. Rubin’s testimony regarding FIG. 4 of Ross
`In exhibit 2043, on page 55, lines 6-14 Dr. Rubin testified (objection
`
`omitted):
`
`Q: What do you mean could include a call to a first function?
`
`A: If you take the pseudocode in figure 4 of Ross, it would have been
`
`obvious to one of ordinary skill in the art that that [sic] code could be
`
`written as my pseudocode which I include in there which calls the
`
`hook function in the code itself. So it [referring to hook scripts]
`
`includes a call to a first function.
`
`
`
`1
`
`
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`IPR2016-00151
`
`Attorney Docket No. 719712801200
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`This testimony is responsive to Patent Owner’s observations on cross-
`
`examination (see Paper No. 40 at 1-3), and is relevant because it demonstrates that
`
`contrary to Patent Owner’s argument, Dr. Rubin has analyzed Ross to show that
`
`the reference teaches or suggests the features of the claims in the ’154 patent. It is
`
`also relevant to show, contrary to Patent Owner’s argument, that Dr. Rubin’s
`
`testimony has been consistent throughout these proceedings. (See Ex. 1002 ¶ 107;
`
`see also Ex. 1005 ¶ 3.)
`
`B. Dr. Rubin’s testimony regarding when the pseudocode provided
`in his declaration was written
`
`In exhibit 2043, on page 89 line 22 to page 90 line 8, Dr. Rubin testified:
`
`Q: The code labeled my pseudocode was not created in 2005,
`
`correct?
`
`A: I mean, in my pseudocode it’s literally two trivial changes that
`
`anyone who knows how to program, like my 14 year old son, would
`
`easily know how to make.
`
`Q: So can you answer my question?
`
`A: I wasn’t involved in this case in 2005.
`
`Q: So is it true that the code labeled my pseudocode that appears on
`
`paragraph 7 of your declaration was not created in 2005?
`
`A: It was not, but if someone in 2005 wanted to do this, they would
`
`do it the same way.
`
`
`
`2
`
`
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`IPR2016-00151
`
`Attorney Docket No. 719712801200
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`This testimony is responsive to Patent Owner’s observation on cross-
`
`examination (see Paper No. 40 at 3-4), and it is relevant because it demonstrates
`
`that even though Dr. Rubin’s exemplary modifications to the code were generated
`
`in 2016, the modifications would have been obvious to a person of ordinary skill in
`
`the art in 2005, the priority date of the ’154 patent.
`
`C. Dr. Rubin’s testimony regarding his use of table III of the ’154
`patent
`
`In exhibit 2043, on page 90 line 14 to page 91 line 16, Dr. Rubin testified
`
`(court reporter question omitted):
`
`Q: Why did you look at table III of the ’154 patent in creating the
`
`code labeled my pseudocode?
`
`A: To emphasize the similarity between my pseudocode and the
`
`pseudocode of table III.
`
`Q: What was the purpose of emphasizing the similarity between the
`
`[sic] table III of the ’154 patent and your pseudocode?
`
`A: One of the things that I’m doing is looking at the teachings and
`
`suggestions of Ross with respect to the claims of the ’154 patent and
`
`by showing that with only a very minor, in fact, trivial change to the
`
`pseudocode disclosed and taught by Ross, you arrive at the same sort
`
`of a description in the specification of the ’154. So it seemed relevant
`
`to me to point that out.
`
`
`
`3
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`
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`Q: Why is table III of the ’154 patent relevant in this case?
`
`A: Well, you know, this is the written description of the ’154 patent
`
`and so, you know, ultimately it comes down to comparing the
`
`teachings and suggestions of Ross to one of skill in the art to the
`
`claims of the ’154 and that is where I make my main opinions. But
`
`here I’m showing the similarity not as, you know, the opinion that I’m
`
`relying on for invalidity, but rather as just an example.
`
`This testimony is responsive to Patent Owner’s observation on cross-
`
`examination (see Paper No. 40 at 4), and it is relevant because it demonstrates,
`
`contrary to Patent Owner’s argument, that Dr. Rubin has not relied on table III to
`
`create his pseudocode.
`
`D. Dr. Rubin’s testimony relating to the teachings of Ross with
`respect to the recited “content received over a network”
`
`At exhibit 2043, on page 63 line 16 to page 64 line 4, Dr. Rubin testified
`
`(objections omitted):
`
`Q: What exactly is the recited content received over a network in
`
`Ross, that’s processed in Ross?
`
`A: It’s web content such as HTTP data which has been -- whose
`
`scripts have been hooked, so modified.
`
`Q: So just to be clear, the hook script alone is not the content received
`
`over the network, correct?
`
`
`
`4
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`IPR2016-00151
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`Attorney Docket No. 719712801200
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`A: I would say that that’s another read that’s valid as well.
`
`This testimony is responsive to Patent Owner’s observation on cross-
`
`examination (see Paper No. 40 at 5), and it is relevant because it shows Dr.
`
`Rubin’s opinion that Ross discloses multiple examples of “content received over a
`
`network,” as recited in the claims of the ’154 patent.
`
`Respectfully submitted,
`
`
`
`
`
`By: / Shouvik Biswas /
`Shouvik Biswas
` Registration No.: 68,439
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: (703) 760-7774
`Attorney for Petitioner
`
`5
`
`
`
`
`
`
`Dated: January 4, 2017
`
`
`
`
`
`
`
`
`
`
`IPR2016-00151
`
`Attorney Docket No. 719712801200
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached Petitioner’s Response to Patent Owner’s
`
`Motion for Observations was served on the below date on the Patent Owner via e-
`
`mail (by consent) to the following counsel of record for the Patent Owner:
`
`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: (650) 752-1712
`Fax: (650) 752-1812
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`svdocketing@kramerlevin.com
`mkim@finjan.com
`
`Petitioner’s counsel of record in IPR2016-01071:
`
`Nathaniel A. Hamstra (Lead Counsel)
`
`nathanhamstra@quinnemanuel.com
`
`
`
`Dated: January 4, 2017
`
`
`
`
`
`
`
`
`
`
`
` / Kim Helenius /
`Kim Helenius
`
`
`
`
`
`6
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