`
`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 SUR-REPLY TO PETITIONER’S
`REPLY BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief on Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1) ..................... 1
`
`ROSS IN VIEW OF CALDER DOES NOT RENDER CLAIMS 9 AND 12
`OBVIOUS UNDER 35 U.S.C. § 103(A) ........................................................ 3
`
`A.
`
`B.
`
`C.
`
`Claims 9 and 12 Are Patentable Because They Depend From
`Patentable Base Claims ......................................................................... 3
`
`Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function” ................................ 3
`
`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” ......................... 5
`
`III. CONCLUSION ................................................................................................ 7
`
`
`
`- i -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief 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) ............................................................................ 2
`
`Credit Acceptance Corp. v. Westlake Services,
`859 F.3d 1044 (Fed. Cir. 2017) ........................................................................ 2, 4
`
`Ford Motor Co. v. Paice LLC,
`IPR2015-00758, Paper 28 (P.T.A.B. Nov. 8, 2016) ............................................. 1
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 1
`
`Synopsys, Inc. v.Mentor Graphics Corp.,
`814 F.3d 1309 (Fed. Cir. 2016) ............................................................................ 2
`
`Statutes
`35 U.S.C. § 315(e)(1) ........................................................................................passim
`
`
`
`- ii -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1)
`
`I.
`
`In the Patent Owner Response on Remand, Finjan argued that Petitioner is
`
`estopped from maintaining this proceeding with respect to claims 1–8, 10 and 11
`
`as a result of the Board’s Final Written Decision in IPR2015-01979. Response at
`
`1. Petitioner does not dispute this fact.
`
`Before SAS, the Board handled situations like this by terminating the inter
`
`partes review with respect to any estopped claims. See Ford Motor Co. v. Paice
`
`LLC, IPR2015-00758, Paper 28 at 7–8 (P.T.A.B. Nov. 8, 2016). That procedure is
`
`no longer possible given that the SAS dictates that “[t]he agency cannot curate the
`
`claims at issue but must decide them all.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`
`1353 (2018). The Board is now faced with the question of whether to proceed to
`
`issue a Final Written Decision on claims for which the Petitioner is undisputedly
`
`estopped, to terminate Petitioner as a party to the case and proceed to a Final
`
`Written Decision without Petitioner’s further participation, or to terminate the
`
`proceedings pursuant to 35 U.S.C. § 315(e)(1). The final option most faithfully
`
`adheres to the statutory text.
`
`Rather than address Finjan’s arguments, Petitioner incorrectly argues that
`
`Finjan’s position is not supported by any authority. Reply at 2. As discussed in
`
`the Response, it is settled law that a challenge to a dependent claim “necessarily
`
`demands consideration of the independent claims from which it depends.”
`
`- 1 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`Response at 3 (citing Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331 (Fed. Cir.
`
`2009)). Accordingly, allowing a petitioner to maintain a proceeding with respect
`
`to a dependent claim violates § 315(e)(1) when the petitioner is estopped from
`
`maintaining the challenge to the independent claim from which it depends. To
`
`prevent violation of § 315(e)(1) under such circumstances, the Board should
`
`consider estoppel to attach to all claims dependent upon a patentable base claim.
`
`Thus, while this particular issue may be one of first impression post-SAS, Finjan’s
`
`position is supported by the statutory text as well as the dictates of the Supreme
`
`Court and Federal Circuit.
`
`Petitioner’s reliance on Credit Acceptance Corp. v. Westlake Servs., 859
`
`F.3d 1044, 1052 (Fed. Cir. 2017) for the proposition that § 315(e)(1) is only
`
`relevant when a Final Written Decision issues for a particular claim fails. First, the
`
`decision in Credit Acceptance was premised in large part on the Federal Circuit’s
`
`decision in Synopsys, where the Court found that “the Board may institute an IPR
`
`on a claim-by-claim basis.” Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d
`
`1309, 1314 (Fed. Cir. 2016). The Supreme Court foreclosed this reasoning in SAS.
`
`Second, Credit Acceptance is distinguishable on the basis that it did not consider
`
`interplay between independent and dependent claims in determining whether
`
`maintenance of a proceeding on claims not facially subject to estoppel would still
`
`violate § 315(e)(1).
`
`- 2 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`The Board should terminate these proceedings pursuant to § 315(e)(1) or, if
`
`the Board determines that it retains the discretion not to 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.
`
`II. 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. Petitioner ignores
`
`this argument, stating instead that “claims 9 and 12 should be found unpatentable
`
`as obvious in light of Ross and Calder.” Reply at 1. Such an outcome is not
`
`possible given that the record is closed with respect to the independent claims from
`
`which claims 9 and 12 depend.
`
`B. Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function”
`
`Petitioner incorrectly faults Finjan for allegedly applying the wrong legal
`
`standard to this proceeding. Reply at 5 (“Finjan repeatedly argues that Petitioner’s
`
`arguments must fail because Petitioner supposedly does not show that the Board
`
`- 3 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`‘overlooked’ or ‘misapprehended’ a previous argument.”). The record shows that
`
`Finjan invoked and applied the correct legal standard in its Response. See, e.g.,
`
`Response at 8. And where Petitioner couched its arguments in terms of what the
`
`Board allegedly overlooked or misapprehended, Finjan could not have erred by
`
`responding to the arguments as framed by Petitioner. See, e.g., Opening Brief at 2
`
`(“The Board overlooked these arguments in denying institution.”).
`
`Petitioner’s attempt to use the disclosure of the ’154 Patent itself to
`
`invalidate the claims fails. See Reply at 5–6. Petitioner points to no language in
`
`the ’154 Patent suggesting, let alone admitting, that recursive function calls were
`
`well-known in the art rather than, for example, a new problem that the inventors
`
`identified and solved. In fact, given that abundant evidence in the record that the
`
`’154 Patent antedates Ross, Petitioner cannot use the disclosure of the ’154 Patent
`
`in combination with Ross and Calder in an attempt to invalidate claims 9 and 12.
`
`See Patent Owner Response (Paper 19) at 5–16. Moreover, Petitioner does not
`
`address Finjan’s observation that the ’154 Patent’s disclosure of recursive function
`
`calls in JavaScript does not support its unsupported assertion that “the ability of
`
`the inputs described in Ross to call additional functions is implied by its discussion
`
`of Java code,” which is an unrelated programming language. Compare Opening
`
`Brief at 4 with Response at 7-8.
`
`- 4 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`Petitioner does not address Finjan’s argument regarding the Board’s well-
`
`reasoned discussion of why Calder fails to disclose “wherein the input variable
`
`includes a call to an additional function.” Response at 9. The Board should
`
`therefore find that Ross in view of Calder fails to disclose this element.
`
`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”
`
`With respect to this claim element Petitioner alleges that Finjan failed to
`
`address the substance of its argument. Reply at 6. However, as noted in the
`
`Response Petitioner alleged but failed to explain what about its argument the
`
`Board misapprehended.
`
`In the Institution Decision, the Board explained 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. Petitioner’s Reply,
`
`which insists that it is “relying on Calder’s disclosure with respect to the method
`
`by which those DLLs are rewritten,” does not clarify its argument or demonstrate
`
`that there are any issues that the Board misapprehended. Still lacking from the
`
`record is any explanation as to how the “method by which [Calder’s] DLLs are
`
`rewritten” bear any relation to the claim language.
`
`- 5 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`And contrary to the assertion that Finjan did not “offer any substantive
`
`response” to Petitioner’s argument, Finjan presented the following arguments,
`
`which are not addressed in the Reply:
`
`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.”
`
`Response at 10.
`
`Finally, Petitioner does not address Finjan’s argument that the following
`
`conclusion was presented in the Petition (or explain how it follows from the
`
`proceeding citations to the record):
`
`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.
`
`Id.
`
`While Petitioner points to the Opening Brief at 6 as allegedly showing where it
`
`previously made this argument, the conclusion at issue was articulated on page 7,
`
`and it lacks citation to any argument made in the Petition. It is a new argument
`
`that does not follow from the evidence cited, and it is therefore not a matter that the
`
`- 6 -
`
`
`
`Patent Owner’s Sur-Reply to Petitioner’s Reply Brief On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`Board could have “misapprehended or overlooked, or otherwise erred in its
`
`institution decision.”
`
`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) or terminating
`
`Petitioner as a party to the proceeding, Finjan respectfully requests that the Board
`
`issue a Final Written Decision confirming the patentability of claims 1–12 of the
`
`’154 Patent.
`
`Dated: March 20, 2019
`
`(Case No. IPR2016-00151)
`
`
`
`
`
`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
`
`- 7 -
`
`
`
`
`
`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 Sur-Reply to Petitioner’s Reply Brief
`
`on Remand was served on March 20, 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
`
`- 8 -
`
`
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
