Trials@uspto.gov
`571-272-7822
`
`
`Paper 53
`Entered: May 19, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001511
`Patent 8,141,154 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN,
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`Paper 53
`Entered: May 19, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-001511
`Patent 8,141,154 B2
`
`____________
`
`
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN,
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`On March 15, 2017, the Board issued a Final Written Decision in this
`
`proceeding. Paper 51 (“Final Dec.”). On April 14, 2017, Palo Alto
`Networks, Inc. (“Petitioner”) filed a Request for Rehearing. Paper 52 (Req.
`Reh’g.). Petitioner’s Request urges the Board to review the construction of
`“a call to a first function” for consistency with the construction given to the
`same term in our Final Written Decision in IPR2015-01979.2 We agree with
`Petitioner that the construction of “a call to a first function” must be
`consistent with our determination in IPR2015-01979.
`
`Accordingly, we hereby modify our Final Written Decision in this
`proceeding to reflect that the construction for the term “a call to a first
`function” means “a statement or instruction in the content, the execution of
`which causes the function to provide a service.” That construction remains,
`however, consistent with our analysis and determinations made in our Final
`Written Decision, and therefore requires no modification of our conclusions.
`For example, at page 8 of that Decision we stated that “we determine that the
`‘call’ is a statement or instruction in the content, the execution of which
`causes the function to provide a service.” Final Dec. 8. Accordingly, the
`last sentence of the first paragraph in page 9 of the Final Written Decision is
`modified to repeat what we stated earlier in page 8 of the Decision: “we
`determine that a ‘call to a first function’ means a statement or instruction in
`the content, the execution of which causes the function to provide a service.”
`
`Notwithstanding the modification to the sentence in page 9, we clarify
`that we do not agree with Petitioner’s argument that this construction
`expands the scope of the term to include “invocations” of a function when
`
`
`2 Palo Alto Networks, Inc., v. Finjan, Inc., IPR2015-01979, Paper 62 (PTAB
`Mar. 15, 2017) (“1979 Final Dec.”).
`
`2
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`the “call” is to another function. For example, we understand Petitioner’s
`argument on rehearing to be that as long as the “call” results in invoking the
`first function, the call’s statement or instruction need not expressly include
`or identify the first function. In support of this argument, Petitioner points to
`portions of the ’154 patent Specification where the words “call” and
`“invoke” allegedly are used interchangeably. Req. Reh’g 7.
`
`We are not persuaded by Petitioner’s argument. In our Final Written
`Decision, we considered Petitioner’s “interchangeability” argument and
`rejected it. Final Dec. 8. Also, the Specification portions cited in the
`Request do not warrant reading the claims in the manner Petitioner requests.
`For example, the Specification states that the “call to Function() has been
`replaced with a call to Substitute[f]unction().” Ex. 1001, 9:25. This passage
`describes what the content modifier does to modify the incoming content.
`The call included in the content received at the client computer is a “call to a
`Substitutefunction(),” and “Substitutefunction()” is the function that is
`invoked when the client processes the call in the modified content. There is
`no indication in this, or any other, cited portion of the Specification, that the
`’154 patent describes embodiments in which the “call” included in the
`modified content identifies a function different from the function that is
`invoked during processing.
`
`Further, we do not agree that we “overlooked” an instance where the
`Specification states that content modifier inserts program code or a link to
`the substitute function. Req. Reh’g 7 (citing Ex. 1001, 9:37−40). That
`passage, again, describes the content modifier’s insertion of program code
`into the content. And more particularly, the passage alludes to the function
`program code or a link to the function program code being included in the
`
`3
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`content in addition to the call to that function. See Ex. 1001, 9:37−41; Table
`I (describing that the content modifier also inserts program code for the
`substitute function into the content, or a link to the substitute function,
`shown in Table I—which lists the function code, but does not show any
`inclusion of a link in the call to the function).
`
`More important, the plain language of the claims forbids the reading
`Petitioner advocates. The word “call” is recited in claim 1 as a noun, and is
`the statement or instruction included in the content that causes the first
`function to provide a service. Final Dec. 7; Ex. 1001, 17:34−36. The word
`“invoking” appears elsewhere in the claim in connection with the
`transmission of the call’s input, which occurs “when the first function is
`invoked.” Ex. 1001, 17:39−40. The claim language is straightforward: the
`received content includes a call to a first function, and when that same first
`function is invoked, the function’s input is transmitted to the security
`computer.
`
`In summary, Petitioner’s request urges us to view the claim
`construction as allowing the call included in the received content to request
`the services of a function different from the function in the call statement or
`instruction. To illustrate, if the content states “call function X” but instead,
`during runtime, function Y is invoked, Petitioner asserts that this scenario
`would be a “call” to function Y, and therefore meet the claim. As stated
`above, however, the claim language does not support this reading. The call
`to the first function must be included in the content, and it is the same first
`function that is invoked later in the claim. Our claim construction does not
`change the plain reading of the claim language. Therefore, the execution of
`the statement or instruction included in the content must cause the function
`
`4
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`identified in the statement or instruction to provide a service. To illustrate,
`if the content states “call function X,” during runtime, function X must be
`invoked. Ross,3 as we discuss in our Final Written Decision, does not do
`this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the
`hook function without any need to include a call to that hook function).
`CONCLUSION
`We have modified a sentence in the claim construction section of the
`Final Written Decision to clarify that a “call to a first function” means a
`statement or instruction in the content, the execution of which causes the
`function to provide a service. This modification, however, does not change
`our determination that Petitioner failed to show unpatentability of claims
`1−8, 10, and 11 of the ’154 patent for obviousness over Ross.
`ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that our Final Written Decision is modified only as to the
`clarification of the claim construction of a “call to a first function” to reflect
`the exact wording of the claim construction provided for the same term in
`IPR2015-01979: a “call to a first function” means a statement or instruction
`in the content, the execution of which causes the function to provide a
`service. No further modification of the Final Written Decision is warranted.
`
`
`
`3 Patent Application Pub. No. US 2007/0113282 A1 (Exhibit 1003)
`(“Ross”).
`
`5
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`PETITIONER:
`Matthew I. Kreeger (Lead Counsel)
`Jonathan Bockman (Back-up Counsel)
`Shouvik Biswas (Back-up Counsel)
`MKreeger@mofo.com
`JBockman@mofo.com
`SBiswas@mofo.com
`
`Nathaniel Hamstra (Back-up Counsel)
`nathanhamstra@quinnemanuel.com
`
`
`PATENT OWNER:
`
`James Hannah (Lead Counsel)
`Jeffrey H. Price (Back-up Counsel)
`Michael Kim (Back-up Counsel)
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mkim@finjan.com
`
`
`
`6
`
`
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