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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
`
`v.
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`FINJAN, INC.,
`Patent Owner
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`Patent No. 8,141,154
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`_______________
`Inter Partes Review No. IPR2016-001511
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`____________________________________________________________
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`PETITIONER’S REQUEST FOR REHEARING
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`1 Case IPR2016‐01071 has been joined with this proceeding.
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`sf-3755098
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`IPR2016-00151
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`Petitioner Palo Alto Networks, Inc. requests rehearing under 37 C.F.R. §
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`42.71(d) of the Board’s March 15, 2017 Final Written Decision (Paper No. 51).2
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`Petitioner respectfully submits that the Board erred as a matter of law in adopting a
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`construction of “a call to a first function” that is inconsistent with the definition of
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`the same term adopted in IPR2015-1979, an IPR involving the same patent, claims,
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`and parties. When the claim term is properly construed, the prior art invalidates all
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`of the involved claims.
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`I.
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`THE BOARD ISSUED CONFLICTING CLAIM CONSTRUCTIONS
`IN THIS CASE AND A RELATED IPR INVOLVING THE SAME
`PAENT AND PARTIES
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`The Boards in this case and in IPR2015-01979 (“the ’979 IPR”) issued
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`conflicting claim constructions for “a call to a first function.” Both IPRs involve
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`the same patent, the same claims, and the same parties, and the final decisions were
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`issued on the same day. The Board in this case construed “a call to a first
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`function” to mean “a statement or instruction in a program requesting the services
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`of a particular (i.e., first) function.” IPR2016-00151, Paper No. 51 at 9 (P.T.A.B.
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`Mar. 15, 2017) (emphasis added). In the ‘979 IPR, by contrast, the Board
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`construed “a call to a first function” to mean “a statement or instruction in the
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`content, the execution of which causes the function to provide a service.”
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`IPR2015-01979, Paper No. 62 at 16 (P.T.A.B. Mar. 15, 2017) (emphasis added).
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`2 Petitioner Symantec Corporation in joined Case IPR2016‐01071 joins this
`Request.
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`sf-3755098
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`IPR2016-00151
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`These constructions are inconsistent with one another in ways that directly
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`affected the outcome. In this case, the Board limited the “call to a first function” to
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`a “statement or instruction in a program requesting the services” of a particular
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`function. It then found that Ross failed to disclose such a “call” because the Board
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`credited testimony from Patent Owner’s expert Dr. Medvidovic that “Ross
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`describes the combined hook script and the original script as using an
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`‘assignment,’ not a ‘call’ for invoking the first function.” IPR2016-00151, Paper
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`No. 51 at 14. The Board thus found that Ross disclosed using an “assignment”
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`statement that resulted in “invoking” the required first function, but did not include
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`a “statement or instruction in a program requesting the services” of the function.
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`In the ’979 IPR, by contrast, the Board construed the term “call to a first
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`function” more broadly to mean “a statement or instruction in the content, the
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`execution of which causes the function to provide a service.” There can be no
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`question that Ross discloses a function call that satisfies this definition, as the
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`Board found based on Patent Owner’s own expert evidence that Ross discloses an
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`“assignment” instruction that results in “invoking the first function” and thus
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`“causes the function to provide a service.” IPR2016-00151, Paper No. 51 at No.
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`14; see also id. at 16 (“Dr. Medvidovic explains that the call to new
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`ActiveXObject(“Microsoft.XMLHTTP”) indirectly invokes ‘function
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`HookedActiveXObject,’ using Ross’s assignment technique.”).
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`IPR2016-00151
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`Thus, if the Board in this case had adopted the broader construction of “a
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`call to a first function” as in the ’979 IPR, it would have found that Ross disclosed
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`a “call to a first function” and that all of the challenged claims were unpatentable.
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`II. THE BOARD SHOULD GRANT REHEARING TO RESOLVE THE
`INCONSISTENT CLAIM CONSTRUCTIONS
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`Rehearing is an appropriate vehicle to resolve these inconsistent claim
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`constructions. As in Valeo North America, Inc. v. Magna Electronics, Inc.,
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`IPR2014-00220, the Board can grant rehearing to “to avoid an inconsistent
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`outcome.” Id., Paper No. 61 at 3 (P.T.A.B. July 14, 2015). In the Valeo case, the
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`Board reconsidered its final decision to ensure that a narrower claim was evaluated
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`consistently with a broader claim. In this case, the Board should grant rehearing to
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`ensure that the same claim term is treated consistently in the two IPR proceedings.
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`There was no reason for the Board to reach different conclusions as to the
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`meaning of the claim term. The Boards in each of the IPRs cited to the same
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`evidence in arriving at the construction of “a call to a first function.” Both
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`decisions cite to identical passages from the specification in which the term
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`“function call” appears. Compare IPR2016-00151, Paper No. 51 at 7, with
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`IPR2015-01979, Paper No. 62 at 14. Both decisions also cite to an embodiment in
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`the disclosure that uses the “Substitute_function(input,*)” function call. Compare
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`IPR2016-00151, Paper No. 51 at 7-8, with IPR2015-01979, Paper No. 62 at 15.
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`Both decisions contain identical language regarding the particular format of the
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`IPR2016-00151
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`instruction and details regarding the function’s parameters. Compare IPR2016-
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`00151, Paper No. 51 at 8, with IPR2015-01979, Paper No. 62 at 15. Finally, both
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`decisions cite to the same extrinsic evidence, including identical testimony from
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`Dr. Medvidovic and the same dictionary definition. Compare IPR2016-00151,
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`Paper No. 51 at 6-7 with IPR2015-01979, Paper No. 62 at 14. Thus, there is no
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`reason in the records of these two proceedings for the Board to arrive at contrary
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`claim constructions. The Board should grant rehearing to resolve this
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`inconsistency.
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`Having a consistent construction between this proceeding and IPR2015-
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`01979 serves the public interest. In Markman v. Westview Instruments, Inc., the
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`Supreme Court explained that the purpose of patent claims is to apprise the public
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`of what is and is not protected by a particular patent, and emphasized the
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`“importance of uniformity” in the treatment (i.e., the claim construction) of a given
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`patent. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996).
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`Uniformity in claim construction serves the public interest: “the limits of a patent
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`must be known for the protection of the patentee, the encouragement of the
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`inventive genius of others and the assurance that the subject of the patent will be
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`dedicated ultimately to the public.” Id. (quoting General Elec. Co. v. Wabash
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`Appliance Corp., 304 U.S. 364, 369 (1938)). The Board’s inconsistent
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`constructions of the term “call to a first function” create an impermissible “zone of
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`uncertainty” for the parties and public. Id. Rehearing should be granted to
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`eliminate that uncertainty by harmonizing the construction of “call to a first
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`function” in this case with the correct construction entered in the ’979 IPR case.
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`Id.
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`III. THE BOARD SHOULD MODIFY THE CONSTRUCITON IN THIS
`CASE TO MATCH THE CONSTRUCTION ADOPTED IN THE ’979
`IPR
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`Petitioner respectfully submits that the Board should resolve the inconsistent
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`claim constructions by adopting in this IPR the construction of “a call to a first
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`function” from the ’979 IPR: “a statement or instruction in the content, the
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`execution of which causes the function to provide a service.” As explained above,
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`that construction would lead to the result that the claims are invalid as obvious in
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`light of Ross.
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`As argued in the Petition, under “the broadest reasonable construction
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`standard, claim terms are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
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`disclosure.” Petition at 7-8 (citing In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007)). To be sure, the Board must interpret the claims in light of
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`the specification. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.
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`Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). However, in considering the
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`specification for claim construction, the Board must also avoid impermissibly
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`importing limitations from the specification of the patent to the claims. Comark
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`Commc’ns v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). As the Federal
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`Circuit explained in Alloc, Inc. v. International Trade Commission, 342 F.3d
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`1361, 1370 (Fed. Cir. 2003):
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`In this respect, this court looks to whether the specification refers to a
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`limitation only as a part of less than all possible embodiments or whether the
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`specification read as a whole suggests that the very character of the
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`invention requires the limitation be a part of every embodiment. For
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`example, it is impermissible to read the one and only disclosed embodiment
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`into a claim without other indicia that the patentee so intended to limit the
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`invention. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.
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`Cir. 2002). On the other hand, where the specification makes clear at
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`various points that the claimed invention is narrower than the claim language
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`might imply, it is entirely permissible and proper to limit the claims. SciMed
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`Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345
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`(Fed. Cir. 2001).
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`Id.
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`Thus, in order to limit the plain and ordinary meaning of a claim term, the intrinsic
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`evidence must show that the patentee intended to limit the claim term.
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`IPR2016-00151
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`In this case, the intrinsic evidence cited by the Board in construing the
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`phrase “a call to a first function” does not support the conclusion that the term
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`should be limited to “a statement or instruction in a program requesting the
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`services of a particular (i.e., first) function.” See IPR2016-00151, Paper No. 51 at
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`9. The Board overlooked that the specification uses a broad variety of terms to
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`describe how the “first function” (i.e., security check) is invoked. For instance,
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`while the Board points out (Ex. 1001) that the specification refers to a “function
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`call” at 4:38-42, and 4:57-60, the Board overlooks that the specification repeatedly
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`uses the term “a call” (see, e.g., id. at 9:25, 10:34, 14:2), and “invoke” (see, e.g.,
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`id. at 12:65, 16:25) interchangeably to describe how the substitute function is
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`called. The Board also overlooked that the specification in one instance even
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`states that “[p]referably, content modifier 265 also inserts program code for the
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`substitute function into the content, or a link to the substitute function.” (Id. at
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`9:37-40 (emphasis added).)
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`The fact that the specification uses varied terms to describe the mechanism
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`by which the substitute function is called is evidence that the plain and ordinary
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`meaning of “a call to a first function” should not be limited to the equivalent of “a
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`function call” as described in the specification. Particular limitations or
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`embodiments appearing in the specification should not be read into the claims,
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`without other indicia that the patentee so intended to limit the invention. Teleflex,
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`IPR2016-00151
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`Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); SRI Int’l, Inc. v.
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`Matsushita Elec. Corp., 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc)
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`(merely because “a specification describes only one embodiment does not require
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`that each claim be limited to that one embodiment”); Transmatic, Inc. v. Gulton
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`Indus., Inc., 53 F.3d 1270, 1277 (Fed. Cir. 1995) (“[A] patent claim is not
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`necessarily limited to a preferred embodiment disclosed in the patent.”). In this
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`case, the patentee has not manifested, through the specification, any intent to
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`narrow the scope of the claims.
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`The Board noted that the claims use the term “a call” and “invoke” and
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`correctly notes that one term (“a call”) is a noun while the other (“invoke”) is a
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`verb. IPR2016-00151, Paper No. 51 at 7-9 The Board correctly held that this
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`grammatical difference means that a “call” must be limited to “a programmatic
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`statement or instruction.” Id at 9. But this does not mean, as the Board
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`misapprehended, that the programmatic statement or instruction must “request[]
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`the services of a particular (i.e. first) function.” Id. Rather, the broadest
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`reasonable interpretation of a “call” includes a programmatic statement or
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`instruction “the execution of which causes the function to provide a service” as the
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`Board found in the ’979 IPR. IPR2015-01979, Paper No. 62 at 16. Nothing in the
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`Board’s grammatical analysis shows otherwise.
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`IPR2016-00151
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`The Board’s construction of a “call to a first function” in this case is based
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`on an erroneous conclusion of law. For the reasons discussed above, Petitioner
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`respectfully requests that the Board reconsider its construction.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests rehearing of the final decision
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`in this case to correct an erroneous claim construction, and for the Board to find
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`that claims 1-8, 10, and 12 of the ’154 patent are unpatentable under 35 U.S.C
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`§ 103(a) in view of Ross.
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`IPR2016-00151
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`Respectfully submitted,
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`Dated: April 14, 2017
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`By: / 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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`
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`By: /Nathaniel A. Hamstra/
`Nathaniel A. Hamstra
`Registration No. 65,680
`Quinn Emanuel Urquhart & Sullivan ,
`LLP
`500 West Madison Street, Suite 2450
`Chicago, IL 60661
`Tel.: (312)705-7400
`Fax: (312)705-7401
`Attorney for Petitioner Symantec
`Corporation
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`Dated: April 14, 2017
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`sf-3755098
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`IPR2016-00151
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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 Request for Rehearing was
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`served as of the below date via e-mail (by agreement) 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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`Petitioner’s counsel of record in IPR2016-01071:
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`Respectfully submitted,
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`
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`By: / Shouvik Biswas /
`Shouvik Biswas
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`11
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`Nathaniel A. Hamstra (Lead Counsel)
`nathanhamstra@quinnemanuel.com
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`Dated: April 14, 2017
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`sf-3755098
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