`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S RESPONSE ON REMAND
`
`
`
`
`
`
`
`
`
`Patent Owner’s Response on Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`TABLE OF CONTENTS
`
`B.
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1) ..................... 1
`A.
`The Proceeding Should Be Terminated Because Estoppel Attaches
`to Non-Challenged Dependent Claims .................................................. 2
`This Proceeding Should Be Terminated Because Estoppel Applies
`to the Entire Proceeding ........................................................................ 4
`III. ROSS IN VIEW OF CALDER DOES NOT RENDER CLAIMS 9
`AND 12 OBVIOUS UNDER 35 U.S.C. § 103(A) ......................................... 6
`A.
`Claims 9 and 12 Are Patentable Because They Depend From
`Patentable Base Claims ......................................................................... 6
`Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function” ................................ 7
`Ross in view of Calder fails to show or suggest “and wherein the
`modified input variable includes a call to a modified additional
`function instead of the call to the additional function” ......................... 9
`III. CONCLUSION .............................................................................................. 10
`
`
`B.
`
`C.
`
`- i -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ............................................................................ 3
`Credit Acceptance Corp. v. Westlake Services,
`859 F.3d 1044 (Fed. Cir. 2017) ............................................................................ 4
`Ford Motor Co. v. Paice LLC,
`IPR2015-00792, Paper 30 (P.T.A.B. Oct. 25, 2016) ............................................ 3
`Palo Alto Networks, Inc., v. Finjan, Inc.,
`2017-2314, 2018 WL 6040843 (Fed. Cir. Nov. 19, 2018) ................................... 1
`Palo Alto Networks, Inc., v. Finjan, Inc.,
`IPR2016-00157, Paper 3 (P.T.A.B. Nov. 17, 2015) ............................................. 4
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................... 4, 5
`SynQor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ........................................................................ 2, 3
`Statutes
`35 U.S.C. § 103(a) ..................................................................................................... 6
`35 U.S.C. § 315(e)(1) ........................................................................................passim
`35 U.S.C. § 317(a) ..................................................................................................... 5
`35 U.S.C. § 318(a) ................................................................................................. 4, 5
`Regulations
`37 C.F.R. § 42.74(a) ................................................................................................... 5
`
`
`- ii -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`On January 23, 2019, the Board modified its original “institution decision to
`
`include review of dependent claims 9 and 12 of the ’154 patent.” Paper 55 at 2.
`
`Pursuant to the Remand Briefing Schedule, Petitioner filed its Institution Response
`
`Brief on February 13, 2019. Paper 56 at 5; Paper 60. Patent Owner’s Response is
`
`being timely filed by March 6, 2019. Id.
`
`I.
`
`INTRODUCTION
`
`Petitioner is estopped under 35 U.S.C. § 315(e)(1) from further participation
`
`in this proceeding. Each independent claim of the ‘154 Patent was the subject of a
`
`Final Written Decision in IPR2015-01979, which was filed by Petitioner. See Palo
`
`Alto Networks, Inc., v. Finjan, Inc., IPR2015-01979, Paper 62.
`
`II. THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1)
`Petitioner filed petitions for inter partes review challenging claims of the
`
`‘154 Patent in Case Nos. IPR2015-01979 and IPR2016-00151. On March 15,
`
`2017, the Board issued Final Written Decisions (“FWD”) in both cases confirming
`
`the patentability of claims 1–8, 10, and 11. Although the Federal Circuit vacated
`
`the Board’s FWD in this case, it affirmed the Board’s decision in IPR2015-01979.
`
`See Palo Alto Networks, Inc., v. Finjan, Inc., 2017-2314, 2018 WL 6040843, at *6
`
`(Fed. Cir. Nov. 19, 2018).
`
`By the plain terms of 35 U.S.C. § 315(e)(1), Petitioner cannot “maintain a
`
`proceeding before the Office with respect to [claims 1–8, 10 and 11] on any ground
`
`- 1 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`that the petitioner raised or reasonably could have raised during that inter partes
`
`review.” 35 U.S.C. § 315(e)(1). There should be no question that Petitioner could
`
`have raised the grounds asserted in IPR2016-00151 in IPR2015-01979 given that
`
`the two petitions were filed a little over a month apart. Moreover, Petitioner’s
`
`Brief on Estoppel in this case (Paper 30) made no attempt to demonstrate that it
`
`could not “have raised” the grounds presented in IPR2016-00151 in its earlier-filed
`
`petition. Accordingly, it should not be in dispute that Petitioner is estopped from
`
`maintaining the instant proceeding with respect to claims 1–8, 10, and 11.
`
`The fact that Petitioner is estopped from maintaining this proceeding with
`
`respect to claims 1-8, 10, and 11 means that this proceeding should be dismissed
`
`pursuant to 35 U.S.C. § 315(e)(1) for at least the reasons discussed below.
`
`A. The Proceeding Should Be Terminated Because Estoppel Attaches
`to Non-Challenged Dependent Claims
`Petitioner is estopped from maintaining a challenge to claims 1–12 of the
`
`‘154 Patent because the Board’s Final Written Decision confirming the
`
`patentability of each independent claim of the ‘154 Patent in IPR2015-01979 also
`
`confirms the patentability of every dependent claim, including claims 9 and 12.
`
`SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013)(“This
`
`court need not consider Defendants' arguments that certain dependent claim
`
`limitations would have been obvious where the base claim has not been proven
`
`invalid.”)(citation omitted). Thus, whether or not Petitioner challenged claims 9
`
`- 2 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`and 12 in IPR2015-01979, the Board’s FWD in that case necessarily extended to
`
`claims 9 and 12 because claims 6 and 10, from which claims 9 and 12 depend,
`
`were found patentable in that case. Id. No provision of the AIA prevents the
`
`Board from issuing a FWD confirming the patentability of claims not challenged in
`
`a Petition, and the Board should consider its FWDs to extend to claims not
`
`challenged in the Petition but which are not-unpatentable by force of law. Id.
`
`In the absence of this solution, petitioners could readily game the estoppel
`
`provisions simply by splitting challenges to claims depending from the same
`
`independent claim over two different petitions. Indeed, this case demonstrates how
`
`easily a party could devise an end-run around § 315(e)(1). Filing a second petition
`
`challenging dependent claims not challenged in the first petition allows for a
`
`second bite at claims that the petitioner is estopped from challenging directly
`
`because considering the patentability of a dependent claim necessarily demands
`
`consideration of the independent claim from which it depends. Callaway Golf Co.
`
`v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader independent
`
`claim cannot be nonobvious where a dependent claim stemming from that
`
`independent claim is invalid for obviousness.”); see also Ford Motor Co. v. Paice
`
`LLC, IPR2015-00792, Paper 30 at 15 (P.T.A.B. Oct. 25, 2016)(“address[ing] the
`
`limitations incorporated from base claims 1, 11, 21, and 30 into the respective
`
`dependent claims at issue” despite the independent claims being dismissed from
`
`- 3 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`the case under § 315(e)(1)). Indeed, in another case between these parties, the
`
`Board explicitly ruled that a challenge to dependent claims could not be
`
`maintained in the absence of a challenge to the independent claims from which
`
`they depend. See Palo Alto Networks, Inc., v. Finjan, Inc., IPR2016-00157, Paper
`
`3 at 2 (P.T.A.B. Nov. 17, 2015).
`
`Allowing a proceeding to advance on dependent claims when the petitioner
`
`is estopped from challenging the independent claims, as the Board did in, renders
`
`§ 315(e)(1) toothless and cannot be squared with 35 U.S.C. § 318(a), which
`
`requires that the Final Written Decision “must address every claim the petitioner
`
`has challenged.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018).
`
`Accordingly, in the situation where a FWD confirms the patentability of an
`
`independent claim, estoppel should attach to every claim depending from the
`
`patentable base claim.
`
`B.
`
`This Proceeding Should Be Terminated Because Estoppel Applies
`to the Entire Proceeding
`Before its decision in SAS, the Federal Circuit determined that “[b]ecause a
`
`final written decision does not determine the patentability of non-instituted claims,
`
`it follows that estoppel does not apply to those non-instituted claims in future
`
`proceedings before the PTO.” Credit Acceptance Corp. v. Westlake Services, 859
`
`F.3d 1044, 1052 (Fed. Cir. 2017). Post-SAS, this is no longer good law, and the
`
`Board should find that estoppel applies to the entire proceeding.
`
`- 4 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`First, under 35 U.S.C. § 318(a), the Board is obligated to “issue a final
`
`written decision with respect to the patentability of any patent claim challenged by
`
`the petitioner,” which includes the estopped claims. If the Board were to render a
`
`FWD in this case that did not include the claims from which Petitioner is estopped
`
`from challenging (as the Board did in Ford), it would be in violation of § 318(a)
`
`and SAS. But allowing the Petitioner to maintain the proceeding with respect to
`
`dependent claims necessarily means that it is also maintaining the proceeding with
`
`respect to any claims from which they depend, even if estoppel would otherwise
`
`attach.
`
`Second, the Supreme Court dictates the Petitioner controls the proceeding,
`
`not the Director. SAS, 138 S. Ct. at 1355. That means that the Board does not
`
`have discretion dismiss certain claims from a case while allowing other claims to
`
`survive. Accordingly, if the decision is to either (1) terminate a proceeding that
`
`includes claims from which the Petitioner is estopped from challenging, or (2)
`
`proceed to a final written decision on all claims challenged despite the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1), the Board should terminate the proceeding.
`
`Third, the provision that permits the Office to issue a Final Written
`
`Decision in the absence of a Petitioner only applies to the situation where the
`
`petitioner’s absence resulted from a settlement. See 35 U.S.C. § 317(a); 37 C.F.R.
`
`§ 42.74(a). If the Board determines, however, that it retains the discretion not to
`
`- 5 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`terminate the case pursuant to § 315(e)(1), the Board should terminate Petitioner as
`
`a party to the proceeding, expunge its post-remand briefing, and proceed to issue a
`
`Final Written Decision reiterating the patentability of claims 1–8, 10, and 11 and
`
`confirming the patentability of claims 9 and 12 at least on the basis that they
`
`depend from patentable base claims.
`
`III. ROSS IN VIEW OF CALDER DOES NOT RENDER CLAIMS 9 AND
`12 OBVIOUS UNDER 35 U.S.C. § 103(A)
`A. Claims 9 and 12 Are Patentable Because They Depend From
`Patentable Base Claims
`The Board has already determined that Petitioner did not meet its burden to
`
`demonstrate that independent claims 6 and 10 are unpatentable. Claims 9 and 12,
`
`which represent the sole subject of the substantive briefing on remand, are
`
`narrower than claims 6 and 10 and are therefore patentable for at least the same
`
`reasons as the Board articulated in its first Final Written Decision in this case. The
`
`remand ordered by the Federal Circuit and the briefing ordered by the Board
`
`Any decision regarding the patentability of claims 9 and 12 based solely on
`
`Petitioner’s arguments regarding the additional subject matter therein is mooted by
`
`the Board’s prior decision regarding independent claims 6 and 10, particularly
`
`given that no additional briefing was permitted on those claims. See Paper 56 at 2–
`
`3. Thus, in the best case for Petitioner, a Final Written Decision addressing the
`
`- 6 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`patentability of claims 9 and 12 would amount to no more than an advisory opinion
`
`that claims 9 and 12 could be unpatentable in circumstances not before the Board.
`
`Nevertheless, Patent Owner addresses the substance of Petitioner’s Opening
`
`Brief on Remand below.
`
`B. Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function”
`With respect to the “input variable[s] includ[ing] a call to an additional
`
`function,” Petitioner incorrectly argues that the Board overlooked its argument that
`
`“Ross discloses this limitation in reference to Java code.” Opening Brief at 2.
`
`Contrary to Petitioner’s statement, the Board explicitly considered and rejected this
`
`argument. See Institution Decision at 15 (“We are persuaded that Petitioner has
`
`not shown sufficiently that Ross impliedly the limitation . . . . With regard to
`
`Ross’s disclosure, we find insufficient Petitioner’s assertion that the mere
`
`disclosure of JavaScript is sufficient to teach the limitation.”).
`
`Beyond arguing incorrectly that the Board overlooked this argument,
`
`Petitioner attempts to morph its argument that “the ability of the inputs described
`
`in Ross to call additional functions is implied by its discussion of Java code” into a
`
`new argument—namely, “that recursive function calls was a known feature of
`
`Java.” Opening Brief at 3–4. In citing portions of the ‘154 Patent not cited or
`
`discussed in the Petition (e.g. ‘154 Patent at 1:43-53) to support an argument not
`
`made in the Petition, Petitioner has violated the Board’s order, which permits only
`
`- 7 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`briefing on “matters that Petitioner believes the Board misapprehended or
`
`overlooked, or otherwise erred in its institution decision discussing the newly-
`
`added claims.” See Paper 56 at 2. The Board could not have misapprehended or
`
`overlooked an argument not presented in the Petition.1
`
`Petitioner also incredibly argues that the Board “overlooked” its argument
`
`that Calder discloses this limitation. Opening Brief at 2. To the contrary,
`
`however, the Board considered Petitioner’s argument in detail, explaining why it
`
`found that “Calder is silent on, and Petitioner does not explain sufficiently, which
`
`and how the input variable in Calder’s alleged memory page request is a call to
`
`another function.” See Institution Decision at 16. And although Petitioner repeats
`
`its argument that Calder teaches this claim element, it does not point to any
`
`“matters that Petitioner believes the Board misapprehended or overlooked, or
`
`otherwise erred in its institution decision.” Paper 56 at 2. In fact, Petitioner’s
`
`discussion of Calder does not address the Board’s Institution Decision at all and
`
`instead simply paraphrases the argument made in the Petition without addressing
`
`the Board’s concern that “Petitioner has failed to lay the foundation for [its]
`
`rationale.” Institution Decision at 16.
`
`
`1 The Opening Brief also continues Petitioner’s mistaken impression that Java is
`
`equivalent to JavaScript. See Opening Brief at 3.
`
`- 8 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`In short, the Opening Brief shares the same deficiencies as the Petition,
`
`namely that “various embodiments of the Calder reference, including its discussion
`
`of modifiable memory pages and DLL rewriting are presented piecemeal, without
`
`any explanation of how they could be considered together to reach the claimed
`
`feature, and without any cogent mapping of the disclosure to the language of the
`
`claims.” Preliminary Response at 26. Indeed, Petitioner’s Opening Brief fails to
`
`explain how an application could be considered a function or how the act of an
`
`application calling a function means that Calder teaches “wherein the input
`
`variable includes a call to an additional function.” See Opening Brief at 4–5.
`
`C. Ross in view of Calder fails to show or suggest “and wherein the
`modified input variable includes a call to a modified additional
`function instead of the call to the additional function”
`Petitioner also argues that the Board misapprehended its argument with
`
`respect to the term “wherein the modified input variable includes a call to a
`
`modified additional function instead of a call to the additional function.” Opening
`
`Brief at 6. As with the previous element, however, the Opening Brief merely
`
`repeats its argument from the Petition without addressing the Board’s statement
`
`that “there is insufficient explanation regarding Petitioner’s contention of how
`
`Calder’s interception of DLLs meets the limitation of the modified input variable
`
`including a call to a modified additional function.” Institution Decision at 17.
`
`- 9 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`Petitioner’s conclusion, that “even if a DLL call was included as an input
`
`variable to another DLL call, that input variable DLL call would also invoke the
`
`interception module (i.e., the modified additional function call)” fails to
`
`demonstrate that the Board misapprehended its argument. Opening Brief at 7.
`
`First, this conclusion is a new argument that was not presented in the Petition.
`
`Second, Petitioner cites no evidence that a DLL call would be included as an input
`
`variable to another DLL call. And third, Petitioner’s new scenario does not even
`
`meet the language of the claims, which requires “a call to a modified additional
`
`function instead of the call to the additional function.” (emphasis added).
`
`Accordingly, Petitioner has not demonstrated that the Board overlooked or
`
`misapprehended any matters with respect to the term “wherein the modified input
`
`variable includes a call to a modified additional function instead of a call to the
`
`additional function.”
`
`III. CONCLUSION
`
`Petitioner is estopped from maintaining this proceeding, and it should be
`
`terminated pursuant to 35 U.S.C. § 315(e)(1). Petitioner also has not established
`
`that claims 9 and 12 of the ‘154 Patent are unpatentable. Accordingly, in the
`
`absence of terminating this case under 35 U.S.C. § 315(e)(1), Finjan respectfully
`
`requests that the Board issue a Final Written Decision confirming the patentability
`
`of claims 1–12 of the ’154 Patent.
`
`- 10 -
`
`
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`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
`
`Attorneys for Patent Owner
`
`Dated: March 6, 2019
`
`(Case No. IPR2016-00151)
`
`
`
`- 11 -
`
`
`
`
`
`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 Response on Remand was served on
`
`March 6, 2019, 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
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`
`Shouvik Biswas
`Morrison & Foerster LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`sbiswas@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`
`
`
`
`
`Jonathan Bockman
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`JBockman@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
`
`- 12 -
`
`
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
