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`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 8,141,154
`____________
`
`Record of Oral Hearing
`Held: March 26, 2019
`____________
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`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
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`Case IPR2016-00151
`Patent 8,141,154
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MATTHEW I. KREEGER, ESQ.
`SHOUVIK BISWAS, ESQ.
`Morrison & Foerster, LLP
`425 Market Street
`San Francisco, California 94105-2482
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JEFFREY H. PRICE, ESQ.
`Kramer Levin Naftalis & Frankel, LLP
`1177 Avenue of the Americas
`New York, New York 10036
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, March 26,
`
`2019, commencing at 9:59 a.m., at the U.S. Patent and Trademark Office,
`Texas Regional Office, 207 S. Houston Street, Dallas, Texas 75202.
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`Case IPR2016-00151
`Patent 8,141,154
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`P R O C E E D I N G S
`- - - - -
` JUDGE QUINN: We're on the record. This is the oral
`argument for Palo Alto Networks versus Finjan, Inc., Case No.
`IPR2016-151 regarding Patent No. 8,141,154. With me are judges
`Tom Giannetti and Patrick Boucher and myself, Miriam Quinn. And
`this hearing is -- will proceed for 20 minutes for each side to
`present argument. Petitioner will begin and can reserve time for
`rebuttal. Patent Owner will also be able to reserve time for
`rebuttal.
` And instructions: No objections will be allowed to be
`interjected in each other's arguments. Because this hearing is
`telephonic and audio quality is of utmost importance, please mute
`all of your phones, computers, and anything that dings or has
`bells so that we don't have interruptions in the audio. Also,
`whenever speaking, you must identify yourself so the court
`reporter can attribute the statements to the appropriate person.
` Who do we have for Petitioner at this time?
` MR. KREEGER: Hello, Your Honor. This is Matthew
`Kreeger from Morrison and Foerster, appearing for Petitioner.
`With me on the phone is Shouvik Biswas.
` MR. BISWAS: Good morning, Your Honor.
` JUDGE QUINN: Good morning. Thank you.
` And counsel for Patent Owner, would you please state
`your appearance.
` MR. PRICE: Yes, Your Honor. Jeffrey Price for Patent
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`Owner, Finjan.
` JUDGE QUINN: Anybody else with you, Mr. Price?
` MR. PRICE: No. It's just me today.
` JUDGE QUINN: Okay. Thank you.
` All right. Let's begin with Petitioner. As I say, you
`have 20 minutes. How much would you like to reserve for rebuttal?
` MR. KREEGER: I'd like to reserve five minutes, please,
`Your Honor.
` JUDGE QUINN: Okay. You may proceed.
` MR. KREEGER: Thank you. May it please the board, I do
`represent -- this is Matthew Kreeger, and I represent Palo Alto
`Networks, the Petitioner in this case. I want to begin with the
`procedural issues that were raised by Finjan. First of all, as to
`estoppel, Palo Alto Networks is not estopped in this case. The
`estoppel statute is clear and unambiguous. Estoppel operates on a
`claim-by-claim basis, and in this case, there has never been a
`final written decision as to claims 9 and 12. In fact, that's the
`entire point of the remand from the federal circuit, so that the
`board can enter a final written decision after those claims, and
`therefore, just as a matter of statute, there's no estoppel.
` Now, Finjan argues that, in final written decision as to
`independent claims, applies to dependent claims, but they have no
`support for that in any case law or in the statute and actually
`would render the remand order a nullity in this case.
` Also, I'd like to point out that Finjan argues in its
`sur-reply that the board should terminate Palo Alto Networks as a
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`party in this matter or somehow foreclose it from participating in
`this remand proceeding, and that would be both contrary to the
`remand order and basically without basis because there is no
`estoppel here.
` JUDGE QUINN: Well, there is, Mr. Kreeger, the question
`that, procedurally, we are on a remand, but the final written
`decision, as it stands, has been vacated, so we would need to
`enter another final written decision in this case. And as I see
`the issue that Patent Owner has framed for us, the issuance of a
`final written decision would necessarily have to include all of
`the claims that were challenged by Petitioner in the '151 case.
` And so by understanding that claims 9 and 12 are the
`scope of the remand, we still have to issue a final written
`decision on all the other claims that are potentially estopped.
`So what we do about that?
` MR. KREEGER: Well, it's our position that Palo Alto
`Networks is not maintaining this proceeding at this point. The
`federal circuit remanded the case. And just as a case on appeal
`is not being maintained for the PTAB, at this point, the board
`should comply with the remand order and not consider Palo Alto
`Networks as maintaining the case.
` But in any event, we're not asking you to revisit the
`issues or the decision that you entered with respect to the
`independent claims. We're expecting the board to reissue that
`portion of its decision in unchanged form.
` As to claims 9 and 12, we're asking that the board go
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`ahead and consider the merits of those claims because we have not
`been estopped after that.
` Now, as to how the board should deal with those claims,
`we recognize the board has some flexibility here. We encourage
`the board to consider the merits of the challenge as to claims 9
`and 12 and whether the calls are in Ross combination discloses the
`limitations found in claims 9 and 12 in the interest of judicial
`economy. If the board simply rules those claims invalid because
`they depend from -- I'm sorry -- the board (indiscernible)
`patentable because they depend from patentable independent claims,
`there is a risk that some length of proceeding -- because, as you
`know, those independent claims are still under review from the
`federal circuit, there's a possibility that if they are ultimately
`determined to be unpatentable, that the issues with respect to the
`dependent claims will still need to be resolved. So we propose
`the most efficient way to deal with that is to go ahead and
`consider that -- the arguments as to claims 9 and 12 on the merits
`now, similar to the MaxLinear case, to avoid a potential for a
`second remand.
` Now, turning to the merits, the first point here is that
`the evidence that the Petitioner submitted, including its
`declaration of Dr. Rubin, stands unrebutted here. Since it had an
`opportunity if it chose at this point in the proceeding to submit
`counterevidence or counter-declaration testimony, then they
`declined to do so. So Dr. Rubin's testimony is, you know,
`uncontradicted by the evidence of record. And what it shows is
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`that these claims are obvious in light of Calder and Ross, or at
`least the particular limitations of 9 and 12 are disclosed by
`those references.
` As to Ross, Dr. Rubin, his testimony pointed out that
`Ross filed a virus detection system to prevent malicious script
`code using JavaScript. As Dr. Rubin further testified, that
`JavaScript was well-known to those in the art to include these
`recursive functions, functions that call other functions. I'm
`referring here to paragraph 158 of the Rubin declaration.
` And he said that he refers to functions were commonly
`employed and were well-known in the art, and this portion of his
`testimony actually was corroborated by Finjan's preliminary
`response. What Finjan did in its preliminary response is it
`pointed to a section of the '154 patent to explain what it meant
`by a function called -- with an input variable that includes a
`call to another function, which is (indiscernible) claim
`limitation at issue in claim 9.
` And the board -- it pointed to a portion in the
`specification with an example -- a script example that spelled
`this out, and the board relied on this section in its institution
`decision to help it understand what the claim means. But that
`almost verbatim that exact same example appears in the background
`section in column 3 of the patent. I apologize; in preparing for
`this, I realized that we had a mistaken citation in our opening --
` JUDGE QUINN: Yeah, there was a typo there with respect
`to -- you pointed me to column 1, but it was really column 3.
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` MR. KREEGER: Apologies, Your Honor. The portion -- the
`relevant portion is actually column 3 of the specification. And
`what it does is it shows that that exact same example, this
`re-cursive function example, was actually known in the art and --
` JUDGE QUINN: Well, here's the issue: You're asking --
`you're asking for us to go back to the preliminary response to
`somehow find some sort of admission that this was well-known in
`the art. We're not -- we're not entirely sure why would we want
`to go back to the preliminary response? Is this an argument that
`you presented in the petition with respect to whether the patent
`disclosed that having such a recursive function issue in the
`content that is received was well-known in the art?
` MR. KREEGER: Well, first, I'd point out that this is
`not a new issue. This is just something that Dr. Rubin testified
`in paragraph 158 of his declaration. He talks about these type of
`functions are known as recursive functions and are commonly
`employed in scripted language -- that's Java -- which were widely
`available before the priority date of the patent.
` So this was Dr. Rubin's testimony. What we're pointing
`out is -- and there's only for us to anticipate this because the
`preliminary response is (indiscernible) after, is that -- and this
`is what happens in cases. You know, if there had been
`institution, obviously, we'd be looking at things from a
`preliminary response. We'd be looking at any counter testimony
`that was putting in and that would become part of the record on
`trial. And that's what happened here.
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` The preliminary response showed that this was -- that
`Dr. Rubin's testimony was true, that this was, in fact, wildly
`known. This is something the patent admits was part of the
`background; that, like you say, JavaScript, one of skill in the
`art understands that means that includes recursive functions that
`call other functions as an input variable.
` JUDGE QUINN: There was an argument that you're
`confusing the disclosure that you can have a JavaScript input into
`the document write function, which is what column 3 of the patent
`discloses, and there's another difference altogether when
`referring to Java code in general because they're entirely
`different. JavaScript runs on the web browser whereas Java code,
`it's a different language that needs to be compiled. So I'm not
`sure that the two are interrelated or how much weight do we give
`statements that are not truly germane to the particulars of the
`'154 patent.
` MR. KREEGER: Well, what Dr. Rubin actually said in that
`paragraph that I just referred you to is he referred to scriptive
`language -- scriptive languages such as Java. And we contend --
`and the institution decision took this to mean -- and I think it
`was correct -- to take this to be a reference to JavaScript, which
`is what Dr. Rubin was talking about. I admit, you know, he uses
`the word "Java," but it's clear, when he says "scriptive languages
`such as Java," he's talking about JavaScript.
` JUDGE QUINN: Okay. Now, can you move to the issue of
`Calder?
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` MR. KREEGER: Yes. Yes, as to Calder, what the petition
`and Dr. Rubin's declaration established was that Calder talked at
`an application which corresponds to the first function in the
`claims, could attempt to make a memory page executable, which
`corresponds to the additional functions. And one of skill in the
`art knew that if a function call to a second function included
`that function as an input variable, as in JavaScripts recursive
`functions, that that would need to be dealt with using the same
`interceptor module that Calder taught.
` So what Calder essentially teaches is that this
`interceptor module can be used in a way that ensured that every
`call to a suspicion function will be redirected to the
`interceptor. And they do that by invoking this interceptor DLL
`before additional DLLs are loaded. This is spelled out in
`paragraph 105 of Calder.
` JUDGE QUINN: Yeah, but --
` MR. KREEGER: And it says that all -- I'm sorry?
` JUDGE QUINN: My understanding of Calder as to the DLL
`example is that, by the time that you are rewriting the DLLs that
`are further invoked, that is being done at run time in the client
`computer. We're looking for how you identify in Calder what the
`claim requires, which is that the content that -- that the content
`that includes the call to an additional function. Where is that
`function call that includes that input variable that is an
`additional function call?
` MR. KREEGER: So here's where the combination comes in
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`to play. The Ross hook scripts are set up in such a way that the
`scriptive language is modified so that the hook script is inserted
`in place of the regular script. And what Calder taught was, if
`you want to ensure that every time this function is invoked, it's
`prevented, is you use this interceptor module. And the
`combination of the two would, as Dr. Rubin explains, ensure that
`every call, even to recursive functions, would have this property
`that they would be -- they used the hook function other than the
`regular function or the interceptor in Calder rather than the
`initial DLL.
` JUDGE QUINN: Where is the first --
` MR. KREEGER: The combination is key to this.
` JUDGE QUINN: Where is the first function calling
`Calder? Your allegation of the first function --
` MR. KREEGER: That's the application. I'm sorry.
`That's the application that's attempting to make memory page
`executable.
` JUDGE QUINN: An application. How is that a function?
` MR. KREEGER: Well, as Dr. Rubin explains, the
`application of this case is the function. That's what he found to
`be corresponding to the function.
` JUDGE QUINN: And that's what you had? You had
`Dr. Rubin telling you that an application is a function -- a call
`to a function.
` MR. KREEGER: Yes. Yes. And the DLL example is a good
`example that the DLL -- as the DLL gets invoked by some
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`application, that is the function call.
` And the combination of Ross and Calder together teach
`that the intercepter module, when applied to the hook script
`technology in Ross, would ensure that every call, including
`recursive calls, are redirected. And that's the point of the
`combination that we relied on here.
` JUDGE QUINN: Well, since we're not going to reconsider
`our findings of whether Ross discloses the content includes a call
`to a first function, then, reviewing these dependent claims
`wouldn't yield any different -- it wouldn't alter that initial
`determination. So why would we try to make sense out of this
`combination where, when we have already found that Ross does not
`even -- does not disclose or teach the content that includes a
`call to a first function? That seems to be a prerequisite of your
`combination.
` MR. KREEGER: I appreciate that, Your Honor. We're not
`asking you to -- as I say, to revisit the independent claims.
`What we're proposing you do is -- and recognize that we do still
`have an issue with that, that we intend to raise in the federal
`circuit. Whether Ross calls that -- you know, whether that
`constitutes a function that calls another function, that is the
`primary issue we will have on appeal.
` So what we're asking you to do is, you know, find that
`Ross and Calder, in combination, disclose these additional
`limitations or take together the additional limitations in claims
`9 and 12 so that, if the federal circuit agrees with us, as the
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`independent claims, they can deal with these claims as well.
` JUDGE QUINN: So if your combination of Ross and Calder
`do teach this limitation and rests on a prerequisite that Ross has a
`call to a first function, and all that Calder is providing is the
`recursive function, how do you -- how do you expect that we would,
`let's say, bother with that analysis of all we to say is you
`hadn't really shown that Ross doesn't have this first function
`call.
` MR. KREEGER: Well, let me just correct one thing in the
`premise here. As we pointed out and Dr. Rubin pointed out, Ross
`teaches about JavaScript which, by itself, teaches to one of skill
`in the art, the recursive function problem. So that's not -- it's
`not simply the combination.
` But as to the main point of your question, we're
`proposing that you find that Ross and Calder together teach the
`additional limitation of claims 9 and 12.
` JUDGE QUINN: Okay.
` MR. KREEGER: If the board agreed -- at the end --
`assuming that the Ross references itself in each of the dependent
`claims -- the independent claims. That's the point of this
`because that's the argument we're going to raise on appeal.
` JUDGE QUINN: Okay. Thank you. Your time has run out.
` MR. KREEGER: Thank you, Your Honor.
` JUDGE QUINN: Thank you.
` Mr. Price, how much time would you --
` MR. PRICE: Yes, Your Honor.
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` JUDGE QUINN: How much time would you like for rebuttal?
` MR. PRICE: I'll reserve three minutes, Your Honor.
` JUDGE QUINN: Three minutes. Okay. Let me --
` MR. PRICE: I keep --
` JUDGE QUINN: Hold on. Let me set the timer. Hold on.
` MR. PRICE: Sorry. Go ahead.
` JUDGE QUINN: All right. You can start now.
` MR. PRICE: All right. Thank you.
` So I think I'll start with the issue that Your Honor
`just raised, and that is really -- I mean, should we be
`considering the limitations of claims 9 and 12 in a vacuum, you
`know, when the independent claims from which they depend are --
`you know, have already been found to be non-patentable in this
`case and where briefing on those independent claims is closed and
`not subject to reconsideration.
` You know, and I think our position is that, you know,
`claim elements can be -- can vary and shouldn't be considered in a
`vacuum. And the discussion that just happened where Your Honor
`brought up the fact that, you know, Ross has deemed to not teach a
`call to a first function, you know, that has significant
`interplays with, you know, whether or not there are -- you know,
`the combination of Ross and Calder could be found to teach the
`other limitations of claims 9 and 12.
` And I also want to bring up, in response to Petitioner's
`argument regarding the MaxLinear case where Petitioner is
`suggesting that, in judicial economy, shows that, you know, these
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`claims should be dealt with on remand on the merits, even though,
`you know, any finding that the -- Ross and Calder teach these
`limitations, would really amount to an advisory opinion.
` The issue that judicial economy wouldn't be concerned
`here, the board didn't specifically rule on any other dependent
`claim of the '154 patent nor did the board rule on other issues
`that could show the patentability of the claims, including whether
`or not Ross is actually prior art.
` So the concern that there could possibly be a second
`remand from the federal circuit, I think, is a little bit
`misplaced. You know, I think if there's -- if there is a remand,
`you know, we'll, you know, deal with the issues and crystallize
`the issues on the remand rather than, you know, going through this
`exercise which really is kind of futile and --
` JUDGE QUINN: So let me ask you, Mr. Price: Are you
`saying that issuing a decision, particularly to claims 9 and 12,
`if there were an appeal of the final written decision that we
`issue and the decision that we have on claims -- on the
`independent claims were overturned, there will still be a remand
`even if we addressed 9 and 12 because of other issues? Is that
`what you're saying?
` MR. PRICE: That's correct, Your Honor.
` JUDGE QUINN: Okay.
` MR. PRICE: Yes.
` Okay. So with that sort of preliminary out of the way,
`I'll move on to the Petitioner's arguments on the merits because,
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`you know, I think, as the board recognized in the institution
`decision, this ground of Ross and Calder was really not very well
`developed, you know, Patent Owner had a very difficult time
`understanding, you know, precisely how the petition purported to
`not -- teaching the Ross and/or Calder to the claim elements, you
`know, as I think the board is aware that, you know, neither Ross
`nor Calder actually deal with the problem of an input variable
`that includes a call to an additional function, you know, with
`either recognizing that as being the problem or with providing a
`solution to the problem.
` I'd like to address a particular -- it refers to as an
`admission from the background section of the '154 patent with its
`block of code at column 3, lines 43 to 53. And I'd just like to
`point out that this is not a -- this block of code does not show a
`variable as a call to another function. It does show some
`JavaScript in between -- you know, in the document that I write so
`there is some JavaScript as the input to the document's write
`function, but it's -- all that's disclosed here in column 3 is
`that it's dynamically generated JavaScript. It does not disclose
`that it's -- that this dynamically generated JavaScript is or is
`generated by a call to an additional function.
` So I think Petitioner's argument that this was admitted
`as well-known is not well-founded. You know, and where the call
`to the additional function as an input variable is disclosed in
`the details description section, and that's in column 12 between
`lines about 27 through 42, and that's the disclosure that Patent
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`Case IPR2016-00151
`Patent 8,141,154
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`Owner pointed to in its preliminary response.
` So, you know, I think we have mentioned it's not
`certified, but, you know, the idea that you can take the
`disclosure of the patent at, you know, the inventor's -- where the
`inventors recognize the problem, solve the problem as an admission
`that the problem and solution were somehow well-known in the art,
`I think, is an argument that should be rejected pretty easily.
` So I'd also like to mention the fact that Petitioner's
`briefing on remand relies pretty extensively on this argument that
`they, you know, Petitioner says that they developed in the
`petition regarding Ross plus what it contends to be an admission
`in the '154 patent, but if you actually go back to the petition
`itself on pages 38 to 40 where the Petitioner says that this
`argument was made, Petitioner didn't actually make that argument
`there. You know, all that's stated on 38 to 40 with regard to
`Ross is -- I mean, what they say is that, to the extent that Ross
`does not teach or suggest the input variable, including the call
`to the initial function, Calder (indiscernible) teaches a
`suggestive feature.
` Now, you know, on remand, the Petitioner is pointing to
`testimony in its expert's report that was, you know, not actually
`developed in the petition.
` So now I will move on to Calder. And so Petitioner
`makes the argument that Calder teaches both elements 921 and 922,
`and we think that the board was correct in its institution
`decision that Petitioner did not meet its burden and correctly
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`Case IPR2016-00151
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`dismissed this argument.
` So, you know, in the institution decision, the board
`found that Calder is silent on and Petitioner did not sufficiently
`explain which and how the input varies on Calder's alleged memory
`page request at the call to another function. And, you know, in
`the remand briefing, frankly, we don't see where the Petitioner
`addressed the board's finding on this point or further explains
`what relevance Calder's memory page modification example has to
`visit the claim language, which requires, as you know, an input
`variable that included a call to an additional function.
` Now, it came up earlier --
` JUDGE QUINN: Well, apparently -- and from what I hear
`from Petitioner, what I read in the brief, is that the mapping
`that Petitioner's attempting to show is that an application is the
`function and that the input variable that calls -- that is a call
`to another function is, for example, the memory page protection
`request. Do you have any response to that?
` MR. PRICE: Yes, Your Honor. Thank you. I was just
`getting to that. You know, as you recognize, Petitioner's now
`making this argument that its application is a function, and you
`know, I think that any person of skill in the art, you don't have
`to be a person of skill in the art can distinguish an application
`from a function. Right? An application can include functions.
`But an application itself is not a function.
` So, you know, I think right off the bat here, we're
`dealing with a situation where we're trying to relabel -- relabel
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`Case IPR2016-00151
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`things in an attempt to read them on claims when, you know, any
`reasonable way of the evidence shows that, you know, these
`concepts are just not -- not related.
` And, you know, while Petitioner, again, points to
`Dr. Rubin's testimony, it's unsupported, you know -- it's
`Dr. Rubin's word that an application is a function, and, you know,
`I think it's sort of -- not something that can be supported by a
`person of ordinary skill in the art that that testimony could be
`credited.
` And, like I said, it's not supported by any underlying
`evidence that a person of ordinary skill in the art would actually
`consider an application to be a function.
` So then moving on to the next claim elements where
`Petitioner is relying on Calder's DLL rewriting procedure, again,
`it's unclear how this DLL writing procedure is not going to the
`elements of the claims. Now, in his briefing on remands,
`Petitioner went through and basically repeated its arguments made
`in the petition and then came up with this new conclusion where it
`stated that, even if the DLL call -- and this is on page 7 of
`their opening brief -- was included as an input variable to
`another DLL call, then if the variable would also invoke the
`intersection module. And so in that -- our response, we laid out
`three arguments as to why this argument, one, should be ignored,
`and two, is unpersuasive. This conclusion is new. There was
`never, in the petition -- or in the petition, there was never any
`argument that the DLL call could or would be included as an input
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`variable under the DLL call.
` So while the whole proceeding argument, you know, was
`supported in the record, maybe not in the petition itself but as
`Dr. Rubin's declaration, their conclusion, you know, tends to
`believe it's not supported by the prior discussion and is not made
`in the petition.
` But it's also -- there's no evidence that the DLL call
`could or would be included as an input variable. But most
`importantly, it doesn't, you know, even as a surrogate, it doesn't
`meet the language of the claims. So the claims talk about
`modified input variable, and this idea of being a DLL call and
`actually invoking another -- a modified DLL is not the same as the
`input itself actually being modified and calling it an additional
`function. And, you know, they are well-tuned in to the difference
`between invoking a function and having a call to a function.
` So, you know, I think it should be a pretty
`straightforward exercise to see how -- you know, whether or not
`there's a modified DLL that's invoked, doing it through this
`interception process of, you know, a modified call to the DLL
`doesn't meet the claim language.
` So before I move on to estoppel, do Your Honors have any
`questions?
` JUDGE QUINN: No.
` JUDGE BOUCHER: This is Judge Boucher. I just had one
`quick question. You mentioned that one of the approaches we might
`take would amount to giving an advisory opinion and that seems to
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`be what the Petitioners are asking us to do. But do you agree,
`though, that, as an administrative agency, there's no particular
`barrier to us writing an advisory opinion, if it's warranted,
`versus something that would make that innately improper?
` MR. PRICE: I think -- I don't know in terms of whether
`it's black book law and improper, but I will come back to the
`discussion that we had earlier where claim elements are not -- you
`know, are not and should not be considered in a vacuum. Right?
`So, you know, A, the consideration of independent elements in a
`dependent claim, when not considered in the context of the full
`claim language in which those elements, you know, are and should
`be considered is, I think, an imprudent use of (indiscernible).
` JUDGE BOUCHER: Okay. Thanks.
` MR. PRICE: That's my point.
` Okay. And so (indiscernible) also believes that
`Petitioner is estopped from making any -- at this proceeding, and
`as the board's jurisprudence states, you know, maintain proceeding
`includes all action of a proceeding up to and including the oral
`argument, which we're having now. So one of the issues that we
`have right off the bat is, you know, we
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