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