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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`PALO ALTO NETWORKS, INC.,
`Petitioner
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`v.
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`FINJAN, INC.,
`Patent Owner
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`Patent No. 8,141,154
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`_______________
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`Inter Partes Review No. IPR2016-00151
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`____________________________________________________________
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`PETITIONER’S REPLY BRIEF
`ON REMAND
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`la-1411894
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`IPR2016-00151
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`TABLE OF CONTENTS
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`Page
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`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
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`I.
`II.
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`V.
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`IPR2016-00151
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`I.
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`INTRODUCTION
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`In its Response on Remand (“Response,” Paper 61), Patent Owner (“Finjan”)
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`tries to convince the Board to disregard the substance of Petitioner’s arguments. As
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`discussed below, however, the Board can and should consider Petitioner’s arguments
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`on the merits. When those arguments are fully considered, claims 9 and 12 should be
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`found unpatentable as obvious in light of Ross and Calder.
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`II.
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`PETITIONER IS NOT ESTOPPED UNDER § 315(e)(1) BECAUSE
`THERE IS NO FINAL WRITTEN DECISION WITH RESPECT TO
`CLAIMS 9 AND 12.
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`Finjan first argues that Petitioner is estopped from making the very arguments
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`that the Federal Circuit remanded this case for the Board to consider. Finjan’s
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`argument is contrary to the express provisions of 35 U.S.C. § 315(e)(1), and is not
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`supported by any relevant authority. Claims 9 and 12 have no final written decisions
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`issued against them, and thus Petitioner is not estopped from maintaining a
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`proceeding before this Board with respect to those claims.
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`Under § 315(e)(1) (emphasis added), a “petitioner in an inter partes review of a
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`claim in a patent under this chapter that results in a final written decision under
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`section 318(a). . . may not request or maintain a proceeding before the Office with
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`respect to that claim on any ground that the petitioner raised or reasonably could have
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`raised during that inter partes review.” Thus, the estoppel provisions of § 315 apply
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`on a claim-by-claim basis. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
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`1044, 1052 (Fed. Cir. 2017) (“the relevant IPR estoppel statute, § 315(e)(1) . . .
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`applies on a claim-by-claim basis. . . . There is no IPR estoppel with respect to a
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`claim as to which no final written decision results”). If, and only if, there is a final
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`written decision issued as to a particular claim, are the provisions of § 315(e)(1)
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`triggered.
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`Despite the unambiguous text of § 315(e)(1), Finjan argues that “in the
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`situation where a FWD confirms the patentability of an independent claim, estoppel
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`should attach to every claim depending from the patentable base claim.” (Patent
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`Owner’s Response at 4.) This interpretation of § 315(e)(1) is not supported by the
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`text of the statute or any authority. Finjan cites only to SynQor, Inc. v. Artesyn
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`Technologies, Inc., but in that case the Federal Circuit exercised its discretion on
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`appeal not to consider certain dependent claims. SynQor, Inc. v. Artesyn Techs., Inc.,
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`709 F.3d 1365, 1375 (Fed. Cir. 2013). SynQor accordingly does not address estoppel.
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`Under § 315(e)(1), Petitioner is not estopped from challenging the validity of claims 9
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`and 12 of the ’154 patent.
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`III. THE BOARD SHOULD ADDRESS PETITIONER’S ARGUMENTS
`WITH RESPECT TO CLAIMS 9 AND 12.
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`The Board’s original written decision addressed claims 1-8, 10 and 11, but did
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`not address challenged claims 9 and 12. As a result, the Federal Circuit vacated and
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`“remand[ed] to allow the Board to issue a Final Written Decision consistent with SAS
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`[SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018)].” Palo Alto Networks, Inc. v.
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`Finjan, Inc., 752 F. App’x 1017, 2018 WL 6040843, at *3 (Fed, Cir. Nov. 19, 2018).
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`Finjan nonetheless argues now that the Board on remand need not consider the
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`patentability of claims 9 and 12, because those claims depend from claims that the
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`Board found patentable in its original final decision. (Patent Owner’s Response at 6-
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`7.) Contrary to the Finjan’s argument, the Board can and should address petitioner’s
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`arguments as to claims 9 and 12, as doing so will fully comply with the remand from
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`the Federal Circuit in this case.
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`The Board’s decision in this case as to the patentability of claims 1-8, 10 and
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`11 has not yet been reviewed by the Federal Circuit. If the Federal Circuit ultimately
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`concludes that those claims should have been held unpatentable in this case, then the
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`patentability of claims 9 and 12 will still need to be resolved. The Board can and
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`should resolve that issue now. The recent case of MaxLinear Inc., v. CF Crespe LLC,
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`880 F.3d 1373 (Fed. Cir. 2018), is a good example of the risk of avoiding resolution
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`of these dependent claims now. In that case, the Board did not independently address
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`arguments concerning the patentability of certain dependent claims, relying on the
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`fact that those claims depended from claims that had been found patentable over the
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`prior art references. (Id. at 1375-76.) However, in a parallel proceeding, the
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`independent claims were found to be unpatentable. As a result, the Federal Circuit
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`remanded the case for the Board to address the patentability of the dependent claims.
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`(Id. at 1377-78.)
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`Here, as in MaxLinear, if the Board declines to address separately the
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`patentability of claims 9 and 12, we may end up in another remand if the Federal
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`Circuit finds the independent claims unpatentable on appeal. The Board can and
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`should avoid this by resolving the patentability challenges to claims 9 and 12.
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`IV. CLAIMS 9 AND 12 ARE RENDERED OBVIOUS BY ROSS AND
`CALDER.
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`Finjan’s response on the merits is limited to contending that (1) Petitioner
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`failed to show that the Board “overlooked” or “misapprehended” various arguments
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`from the Petition, and (2) Petitioner’s brief consists of improper new argument.
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`Finjan misstates the applicable legal standard for this remand proceeding and
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`mischaracterizes Petitioner’s arguments. Moreover, Finjan offers no persuasive
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`defense for the patentability of claims 9 and 12.
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`First, to comply with SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the
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`Board is obliged to issue a considered, final written decision on the merits as to all
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`claims and all grounds. AC Tech. v. Amazon, Inc., 912 F.3d 1358, 1364 (Fed. Cir.
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`Jan. 9, 2019) (“If the Board institutes an IPR, it must issue a final decision addressing
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`all claims challenged by the petitioner [and] it must similarly address all grounds of
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`unpatentability raised by the petitioner”). To comply with the remand in this case, the
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`Board authorized Petitioner to file a brief showing “matters that Petitioner believes
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`the Board misapprehended or overlooked, or otherwise erred in its institution
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`decision discussing the newly-added claims [claims 9 and 12].” (Order, Conduct of
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`the Proceeding, Paper 56 at 2 (emphasis added).) Although this showing bears some
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`similarity to a motion for rehearing, it is not limited to issues that the Board
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`“misapprehended or overlooked.” As the Board recognized in its order, Petitioner
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`can prevail if it shows that the Board “otherwise erred” in its original institution
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`decision. In its response, Finjan repeatedly argues that Petitioner’s arguments must
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`fail because Petitioner supposedly does not show that the Board “overlooked” or
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`“misapprehended” a previous argument. (See, e.g., Patent Owner’s Response at 7-
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`10.) Finjan fails to apply the relevant legal standard.
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`Second, Finjan fails to respond to the substance of Petitioner’s arguments on
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`remand. With respect to whether the prior art discloses that the “input variable
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`includes a call to an additional function,” as recited in claims 9 and 12, Petitioner
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`showed that the Board overlooked the evidence that Finjan introduced into the
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`record. (Petitioner’s Opening Remand Brief at 2.) Specifically, in its preliminary
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`response Finjan cited to 12:28-42 of the ’154 patent to explain what the patent
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`applicants meant by “input variable[s] includ[ing] a call to an additional function.”
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`As described in Petitioner’s opening brief, this citation by Finjan actually
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`corroborates the arguments and evidence from the Petition and the supporting
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`declaration of Dr. Rubin, explaining how Ross discloses the limitation in reference to
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`Java code. (Id. at 2-3.) Finjan does not offer any substantive response.
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`Third, Finjan also fails to grapple with the substance of Petitioner’s argument
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`that the Board misapprehended Petitioner’s argument with respect to Calder, when it
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`characterized that argument as simply “rel[ying] on rewriting DLLs loaded during
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`program execution,” as teaching or suggesting the “modified additional function”
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`limitation of claims 9 and 12. (See Petitioner Opening Remand Brief at 6 (quoting
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`Institution Decision at 17).) As discussed in Petitioner’s opening brief on remand,
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`Petitioner was instead relying on Calder’s disclosure with respect to the method by
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`which those DLLs are rewritten as teaching this feature to a POSITA. (Id.) Finjan
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`does not offer any substantive response.
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`Finally, Finjan incorrectly contends that Petitioner is relying on improper new
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`arguments in its opening remand brief. (See Patent Owner’s Response at 7-8, 10.) To
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`the contrary, Petitioner’s opening brief on remand is responsive to the Patent Owner’s
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`preliminary response and the Board’s institution decision, and shows how the original
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`Petition and supporting evidence render the claims invalid.
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`With respect to Ross, Patent Owner claims that Petitioner supposedly relies on
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`“an argument not made it in the Petition” and “attempts to morph its argument that
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`‘the ability of the inputs described in Ross to call additional functions is implied by
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`its discussion of Java code’ into a new argument. . .” (Patent Owner’s Response at 7.)
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`However, as discussed above, Petitioner’s opening brief on remand merely points out
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`that the Board had not considered the evidence that Finjan itself introduced in its
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`Patent Owner Preliminary Response that corroborates the Petitioner’s contention that
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`recursive functions were well-known in the art. (Petitioner’s Opening Remand Brief
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`at 2-3.) Petitioner is not introducing a new theory or argument.
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`Finjan also argues that Petitioner’s argument that Calder teaches “wherein the
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`modified input variable includes a call to a modified additional function instead of the
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`call to the additional function,” is somehow “a new argument that was not presented
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`in the Petition.” (Patent Owner’s Response at 10.) However, in its Opening Remand
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`Brief, the Petitioner specifically cited to the portions of both its Petition and Dr.
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`Rubin’s declaration where these arguments were previously made. (See Petitioner’s
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`Opening Remand Brief at 6.)
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`V. CONCLUSION
`The Board should fully consider and issue a final written decision on
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`challenged claims 9 and 12, and find them unpatentable per the grounds identified in
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`the Petition.
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`IPR2016-00151
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`Dated: March 13, 2019
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`Respectfully submitted,
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` / 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.
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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 REPLY BRIEF ON
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`REMAND was served as of the below date via e-mail to the following counsel of
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`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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`Dated: March 13, 2019
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`/ Shouvik Biswas /
`Shouvik Biswas
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`la-1411894
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