`
`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 -
`
`