`
`
`
`
`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 REPLY BRIEF
`ON REMAND
`
`
`
`
`
`
`
`la-1411894
`
`
`
`IPR2016-00151
`
`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION .............................................................................................. 1
`PETITIONER IS NOT ESTOPPED UNDER § 315(E)(1) BECAUSE
`THERE IS NO FINAL WRITTEN DECISION WITH RESPECT TO
`CLAIMS 9 AND 12............................................................................................ 1
`III. THE BOARD SHOULD ADDRESS PETITIONER’S ARGUMENTS
`WITH RESPECT TO CLAIMS 9 AND 12. ...................................................... 2
`IV. CLAIMS 9 AND 12 ARE RENDERED OBVIOUS BY ROSS AND
`CALDER. ........................................................................................................... 4
`CONCLUSION ................................................................................................... 7
`
`
`I.
`II.
`
`V.
`
`
`
`
`la-1411894
`
`-i-
`
`
`
`
`
`IPR2016-00151
`
`I.
`
`INTRODUCTION
`
`In its Response on Remand (“Response,” Paper 61), Patent Owner (“Finjan”)
`
`tries to convince the Board to disregard the substance of Petitioner’s arguments. As
`
`discussed below, however, the Board can and should consider Petitioner’s arguments
`
`on the merits. When those arguments are fully considered, claims 9 and 12 should be
`
`found unpatentable as obvious in light of Ross and Calder.
`
`II.
`
`PETITIONER IS NOT ESTOPPED UNDER § 315(e)(1) BECAUSE
`THERE IS NO FINAL WRITTEN DECISION WITH RESPECT TO
`CLAIMS 9 AND 12.
`
`Finjan first argues that Petitioner is estopped from making the very arguments
`
`that the Federal Circuit remanded this case for the Board to consider. Finjan’s
`
`argument is contrary to the express provisions of 35 U.S.C. § 315(e)(1), and is not
`
`supported by any relevant authority. Claims 9 and 12 have no final written decisions
`
`issued against them, and thus Petitioner is not estopped from maintaining a
`
`proceeding before this Board with respect to those claims.
`
`Under § 315(e)(1) (emphasis added), a “petitioner in an inter partes review of a
`
`claim in a patent under this chapter that results in a final written decision under
`
`section 318(a). . . may not request or maintain a proceeding before the Office with
`
`respect to that claim on any ground that the petitioner raised or reasonably could have
`
`raised during that inter partes review.” Thus, the estoppel provisions of § 315 apply
`
`on a claim-by-claim basis. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
`2
`
`la-1411894
`
`
`
`IPR2016-00151
`
`1044, 1052 (Fed. Cir. 2017) (“the relevant IPR estoppel statute, § 315(e)(1) . . .
`
`applies on a claim-by-claim basis. . . . There is no IPR estoppel with respect to a
`
`claim as to which no final written decision results”). If, and only if, there is a final
`
`written decision issued as to a particular claim, are the provisions of § 315(e)(1)
`
`triggered.
`
`Despite the unambiguous text of § 315(e)(1), Finjan argues that “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.” (Patent
`
`Owner’s Response at 4.) This interpretation of § 315(e)(1) is not supported by the
`
`text of the statute or any authority. Finjan cites only to SynQor, Inc. v. Artesyn
`
`Technologies, Inc., but in that case the Federal Circuit exercised its discretion on
`
`appeal not to consider certain dependent claims. SynQor, Inc. v. Artesyn Techs., Inc.,
`
`709 F.3d 1365, 1375 (Fed. Cir. 2013). SynQor accordingly does not address estoppel.
`
`Under § 315(e)(1), Petitioner is not estopped from challenging the validity of claims 9
`
`and 12 of the ’154 patent.
`
`III. THE BOARD SHOULD ADDRESS PETITIONER’S ARGUMENTS
`WITH RESPECT TO CLAIMS 9 AND 12.
`
`The Board’s original written decision addressed claims 1-8, 10 and 11, but did
`
`not address challenged claims 9 and 12. As a result, the Federal Circuit vacated and
`
`“remand[ed] to allow the Board to issue a Final Written Decision consistent with SAS
`
`la-1411894
`
`2
`
`
`
`IPR2016-00151
`
`[SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018)].” Palo Alto Networks, Inc. v.
`
`
`
`
`
`Finjan, Inc., 752 F. App’x 1017, 2018 WL 6040843, at *3 (Fed, Cir. Nov. 19, 2018).
`
`Finjan nonetheless argues now that the Board on remand need not consider the
`
`patentability of claims 9 and 12, because those claims depend from claims that the
`
`Board found patentable in its original final decision. (Patent Owner’s Response at 6-
`
`7.) Contrary to the Finjan’s argument, the Board can and should address petitioner’s
`
`arguments as to claims 9 and 12, as doing so will fully comply with the remand from
`
`the Federal Circuit in this case.
`
`The Board’s decision in this case as to the patentability of claims 1-8, 10 and
`
`11 has not yet been reviewed by the Federal Circuit. If the Federal Circuit ultimately
`
`concludes that those claims should have been held unpatentable in this case, then the
`
`patentability of claims 9 and 12 will still need to be resolved. The Board can and
`
`should resolve that issue now. The recent case of MaxLinear Inc., v. CF Crespe LLC,
`
`880 F.3d 1373 (Fed. Cir. 2018), is a good example of the risk of avoiding resolution
`
`of these dependent claims now. In that case, the Board did not independently address
`
`arguments concerning the patentability of certain dependent claims, relying on the
`
`fact that those claims depended from claims that had been found patentable over the
`
`prior art references. (Id. at 1375-76.) However, in a parallel proceeding, the
`
`independent claims were found to be unpatentable. As a result, the Federal Circuit
`
`la-1411894
`
`3
`
`
`
`IPR2016-00151
`
`remanded the case for the Board to address the patentability of the dependent claims.
`
`
`
`
`
`(Id. at 1377-78.)
`
`Here, as in MaxLinear, if the Board declines to address separately the
`
`patentability of claims 9 and 12, we may end up in another remand if the Federal
`
`Circuit finds the independent claims unpatentable on appeal. The Board can and
`
`should avoid this by resolving the patentability challenges to claims 9 and 12.
`
`IV. CLAIMS 9 AND 12 ARE RENDERED OBVIOUS BY ROSS AND
`CALDER.
`
`Finjan’s response on the merits is limited to contending that (1) Petitioner
`
`failed to show that the Board “overlooked” or “misapprehended” various arguments
`
`from the Petition, and (2) Petitioner’s brief consists of improper new argument.
`
`Finjan misstates the applicable legal standard for this remand proceeding and
`
`mischaracterizes Petitioner’s arguments. Moreover, Finjan offers no persuasive
`
`defense for the patentability of claims 9 and 12.
`
`First, to comply with SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the
`
`Board is obliged to issue a considered, final written decision on the merits as to all
`
`claims and all grounds. AC Tech. v. Amazon, Inc., 912 F.3d 1358, 1364 (Fed. Cir.
`
`Jan. 9, 2019) (“If the Board institutes an IPR, it must issue a final decision addressing
`
`all claims challenged by the petitioner [and] it must similarly address all grounds of
`
`unpatentability raised by the petitioner”). To comply with the remand in this case, the
`
`la-1411894
`
`4
`
`
`
`IPR2016-00151
`
`Board authorized Petitioner to file a brief showing “matters that Petitioner believes
`
`
`
`
`
`the Board misapprehended or overlooked, or otherwise erred in its institution
`
`decision discussing the newly-added claims [claims 9 and 12].” (Order, Conduct of
`
`the Proceeding, Paper 56 at 2 (emphasis added).) Although this showing bears some
`
`similarity to a motion for rehearing, it is not limited to issues that the Board
`
`“misapprehended or overlooked.” As the Board recognized in its order, Petitioner
`
`can prevail if it shows that the Board “otherwise erred” in its original institution
`
`decision. In its response, Finjan repeatedly argues that Petitioner’s arguments must
`
`fail because Petitioner supposedly does not show that the Board “overlooked” or
`
`“misapprehended” a previous argument. (See, e.g., Patent Owner’s Response at 7-
`
`10.) Finjan fails to apply the relevant legal standard.
`
`Second, Finjan fails to respond to the substance of Petitioner’s arguments on
`
`remand. With respect to whether the prior art discloses that the “input variable
`
`includes a call to an additional function,” as recited in claims 9 and 12, Petitioner
`
`showed that the Board overlooked the evidence that Finjan introduced into the
`
`record. (Petitioner’s Opening Remand Brief at 2.) Specifically, in its preliminary
`
`response Finjan cited to 12:28-42 of the ’154 patent to explain what the patent
`
`applicants meant by “input variable[s] includ[ing] a call to an additional function.”
`
`As described in Petitioner’s opening brief, this citation by Finjan actually
`
`la-1411894
`
`5
`
`
`
`IPR2016-00151
`
`corroborates the arguments and evidence from the Petition and the supporting
`
`
`
`
`
`declaration of Dr. Rubin, explaining how Ross discloses the limitation in reference to
`
`Java code. (Id. at 2-3.) Finjan does not offer any substantive response.
`
`Third, Finjan also fails to grapple with the substance of Petitioner’s argument
`
`that the Board misapprehended Petitioner’s argument with respect to Calder, when it
`
`characterized that argument as simply “rel[ying] on rewriting DLLs loaded during
`
`program execution,” as teaching or suggesting the “modified additional function”
`
`limitation of claims 9 and 12. (See Petitioner Opening Remand Brief at 6 (quoting
`
`Institution Decision at 17).) As discussed in Petitioner’s opening brief on remand,
`
`Petitioner was instead relying on Calder’s disclosure with respect to the method by
`
`which those DLLs are rewritten as teaching this feature to a POSITA. (Id.) Finjan
`
`does not offer any substantive response.
`
`Finally, Finjan incorrectly contends that Petitioner is relying on improper new
`
`arguments in its opening remand brief. (See Patent Owner’s Response at 7-8, 10.) To
`
`the contrary, Petitioner’s opening brief on remand is responsive to the Patent Owner’s
`
`preliminary response and the Board’s institution decision, and shows how the original
`
`Petition and supporting evidence render the claims invalid.
`
`With respect to Ross, Patent Owner claims that Petitioner supposedly relies on
`
`“an argument not made it in the Petition” and “attempts to morph its argument that
`
`la-1411894
`
`6
`
`
`
`IPR2016-00151
`
`‘the ability of the inputs described in Ross to call additional functions is implied by
`
`
`
`
`
`its discussion of Java code’ into a new argument. . .” (Patent Owner’s Response at 7.)
`
`However, as discussed above, Petitioner’s opening brief on remand merely points out
`
`that the Board had not considered the evidence that Finjan itself introduced in its
`
`Patent Owner Preliminary Response that corroborates the Petitioner’s contention that
`
`recursive functions were well-known in the art. (Petitioner’s Opening Remand Brief
`
`at 2-3.) Petitioner is not introducing a new theory or argument.
`
`Finjan also argues that Petitioner’s argument that Calder teaches “wherein the
`
`modified input variable includes a call to a modified additional function instead of the
`
`call to the additional function,” is somehow “a new argument that was not presented
`
`in the Petition.” (Patent Owner’s Response at 10.) However, in its Opening Remand
`
`Brief, the Petitioner specifically cited to the portions of both its Petition and Dr.
`
`Rubin’s declaration where these arguments were previously made. (See Petitioner’s
`
`Opening Remand Brief at 6.)
`
`V. CONCLUSION
`The Board should fully consider and issue a final written decision on
`
`challenged claims 9 and 12, and find them unpatentable per the grounds identified in
`
`the Petition.
`
`
`
`la-1411894
`
`7
`
`
`
`IPR2016-00151
`
`Dated: March 13, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` / 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 Palo Alto
`Networks, Inc.
`
`la-1411894
`
`8
`
`
`
`IPR2016-00151
`
`
`
`
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached PETITIONER’S REPLY BRIEF ON
`
`REMAND was served as of the below date via e-mail 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
`
`
`
`Dated: March 13, 2019
`
`
`
`
`
`
`
`
`/ Shouvik Biswas /
`Shouvik Biswas
`
`
`
`la-1411894
`
`9
`
`