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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
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`v.
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`FINJAN, INC.,
`Patent Owner
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`Patent No. 8,141,154
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`_______________
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`Inter Partes Review No. IPR2016-00151
`____________________________________________________________
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`PETITIONER’S REPLY TO PATENT OWNER RESPONSE
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`IPR2016-00151
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` Attorney Docket No. 719712801200
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION .......................................................................................... 1
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`PATENT’S OWNER’S EVIDENCE OF CONCEPTION AND
`DILIGENCE FAIL TO MEET THE EVIDENTIARY STANDARDS
`REQUIRED TO ANTEDATE A REFERENCE ........................................... 2
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`A.
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`B.
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`Patent Owner’s evidence of diligence in reduction to practice
`falls short of the evidentiary standards required to antedate a
`reference ............................................................................................... 3
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`Patent Owner’s evidence of conception should be accorded
`little to no weight .................................................................................. 7
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`III. ROSS RENDERS OBVIOUS EACH AND EVERY RECITED
`FEATURE OF CLAIMS 1-8, 10, AND 11 OBVIOUS ................................. 9
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`A.
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`Ross renders obvious “processing content received over a
`network, the content including a call to a first function” ................... 10
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`1.
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`2.
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`Ross teaches or suggests that the hook scripts can include
`a call to a first function ............................................................ 10
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`Ross teaches or suggests that the content can be received
`over a network .......................................................................... 14
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`B.
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`C.
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`D.
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`Ross renders obvious “for invoking a second function with the
`input” .................................................................................................. 17
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`Ross renders obvious “a receiver for receiving an indicator
`from the security computer whether it is safe to invoke the
`second function with the input” ......................................................... 20
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`Ross renders obvious “calling a second function with a
`modified input variable” ..................................................................... 22
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`IV. PATENT OWNER’S EVIDENCE OF SECONDARY
`CONSIDERATIONS SHOULD BE GIVEN NO WEIGHT ....................... 23
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`TABLE OF CONTENTS
`(continued)
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`Page
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`A.
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`B.
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`Patent Owner fails to establish a nexus between any
`commercial success and the challenged claims of the ’154
`patent .................................................................................................. 24
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`Patent Owner fails to provide sufficient evidence with respect
`to other secondary considerations ...................................................... 24
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`V.
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`CONCLUSION ............................................................................................. 25
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Apple, Inc. v. Ameranth, Inc.,
`No. CBM2015-00080, Paper No. 44 (P.T.A.B. Aug. 26, 2016) .................. 23, 24
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`Baldwin Graphics Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 15
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`Bey v. Kollonitsch,
`806 F.2d 1024 (Fed. Cir. 1986.) ........................................................................... 6
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`CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`No. IPR2013-00033, Paper No. 122 (P.T.A.B. Mar. 3, 2014) ..................... 2, 8, 9
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`Coleman v. Dines,
`754 F.2d 353 (Fed. Cir. 1985) .............................................................................. 8
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`Cuozzo Speed Techs., LLC v. Lee,
`No. 15-446, slip op. (U.S. June 20, 2016) .......................................................... 15
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`Gould v. Schawlow,
`363 F.2d 908 (C.C.P.A. 1966) .............................................................................. 4
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`Griffith v. Kanamaru,
`816 F.2d 624 (Fed. Cir. 1987) .............................................................................. 3
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`In re Antor Media Corp.,
`689 F.3d 1282 (Fed. Cir. 2012) .......................................................................... 24
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`Iron Dome LLC v. E-Watch, Inc.,
`No. IPR2014-00439, Paper No. 16 (P.T.A.B. Aug. 4, 2014) ............................... 3
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`KCJ Corp. v. Kinetic Concepts, Inc.,
`223 F.3d 1351 (Fed. Cir. 2000) .......................................................................... 15
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`Perfect Surgical Techniques v. Olympus Am., Inc.,
`No. 2015-2043, slip .op. (Fed. Cir. Nov. 15, 2016) .......................................... 3, 4
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`Price v. Symsek,
`988 F.2d 1187 (Fed. Cir. 1993) ............................................................................ 8
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`TABLE OF AUTHORITIES
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`Page(s)
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`Statutes and Other Authorities
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`37 C.F.R.
`§ 42.23 ................................................................................................................... 1
`§42.51(b)(iii) ......................................................................................................... 2
`§ 42.65(a) ............................................................................................................ 24
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`Petitioner’s Exhibit List for Inter Partes Review of U.S. Patent No. 8,141,154
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`Exhibit Description
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`Exhibit #
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`U.S. Patent No. 8,141,154 (“the ’154 Patent”)
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`Declaration of Dr. Aviel D. Rubin in Support of Petition for Inter
`Partes Review (“Rubin Decl.”)
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`U.S. Publication No. 2007/0113282 A1 (“Ross”)
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`U.S. Publication No. 2002/0066022 A1 (“Calder”)
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`Declaration of Dr. Aviel Rubin in support of Petitioner’s Reply
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`Excerpt of Finjan Responses to Symantec First Interrogatories
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`Excerpt of Finjan Supplement Responses to Symantec First
`Interrogatories
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`Declaration of Nathan Hamstra, Esq.
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`Deposition Transcript of Mr. Yuval Ben-Itzhak
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`Deposition Transcript of Dr. Marc Berger, PhD
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`Deposition Transcript of Dr. Nenand Medvidovic
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`TCP/IP Network Administration
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`Excerpt of File History for 09/595,839
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`Excerpt of File History for 09/730,326
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`Petitioner’s Exhibits 1001-1004 were previously filed and are listed again here
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`based on 37 C.F.R. § 42.63. Petitioner’s Exhibits 1005-1014 are newly filed.
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`Palo Alto Networks, Inc. (“Petitioner”) provides this Reply under 37 C.F.R.
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`§ 42.23 to the Patent Owner’s Response, filed August 31, 2016 (“Response”) by
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`Finjan, Inc. (“Patent Owner” or “Finjan”). Petitioner requests the cancellation of
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`claims 1-8, 10, and 11 of U.S. Patent No. 8,141,154 (“the ’154 patent”; Ex. 1001).
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`I.
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`INTRODUCTION
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`The Patent Owner Response fails to identify any persuasive reason why the
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`teachings of Ross fail to render claims 1-8, 10, and 11 of the ’154 patent obvious.
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`Patent Owner attempts to antedate (i.e., swear behind) Ross by providing
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`scant, uncorroborated evidence that it was first to conceive of the invention and
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`diligently reduce it to practice. As shown below, Patent Owner’s evidentiary
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`showing falls far short of the standards required to antedate a reference. Patent
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`Owner’s argument relies on the uncorroborated statements of two witnesses who
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`both admit to being unable to remember any specifics. Patent Owner’s evidence of
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`conception is equally dubious and relies on an unauthenticated document file that
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`includes a supposed draft patent application whose date is suspect and unknown.
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`Patent Owner provides no corroborating evidence to support its assertion of
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`conception, thus their arguments fail as a matter of law.
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`Patent Owner’s attempts to distinguish Ross are premised on a series of
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`misleading and unduly narrow readings of Ross. As explained below, when the
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`complete disclosure of Ross is considered, the reference teaches or suggests each
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`and every feature of the instituted claims and any differences between Ross and the
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`’154 patent would have been obvious to one of skill in the art.
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`II.
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`PATENT’S OWNER’S EVIDENCE OF CONCEPTION AND
`DILIGENCE FAIL TO MEET THE EVIDENTIARY STANDARDS
`REQUIRED TO ANTEDATE A REFERENCE
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`In multiple patent infringement suits before the Federal District Courts,
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`Patent Owner states that the date of conception and reduction to practice for the
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`’154 patent is December 12, 2005.1 Now, in its Patent Owner Response, and for
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`the first time, Patent Owner alleges that it conceived of the invention disclosed in
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`the ’154 patent on October 31, 2005 and was diligent in reducing the invention to
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`practice. The Patent Owner bears the burden of proof in antedating a reference,
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`and in order to prove conception, diligence, and reduction to practice, the Patent
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`Owner is required to provide corroborating evidence establishing the invention was
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`conceived of prior to the critical date and that the inventors were diligent in
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`reducing the invention to practice. See CBS Interactive Inc. v. Helferich Patent
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`Licensing, LLC, No. IPR2013-00033, Paper No. 122 at 44-45 (P.T.A.B. Mar. 3,
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`2014).
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`1 (See Exs. 1006-1007; see also Declaration of Nathan Hamstra, Ex. 1008 ¶¶ 2-3.)
`Petitioner notes that by failing to notify Petitioner of an inconsistent position in a
`concurrent proceeding, Patent Owner neglects its discovery obligations under 37
`C.F.R. §42.51(b)(iii).
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`Here, Patent Owner seeks to antedate the ’154 patent with respect to Ross,
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`using only the incomplete and uncorroborated recollections of two witnesses as
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`proof of diligence, and an alleged draft patent application whose date cannot be
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`ascertained from the provided evidence. The Board should find that Patent Owner
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`fails to antedate the ’154 patent.
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`A.
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`Patent Owner’s evidence of diligence in reduction to practice falls
`short of the evidentiary standards required to antedate a
`reference
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`Patent Owner’s evidence does not meet the evidentiary requirements
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`required to prove diligence. Patent Owner only provides the uncorroborated
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`testimony of two witnesses: Mr. Yuval Ben-Itzhak, one of the inventors listed on
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`the ’154 patent, and Dr. Marc Berger who allegedly drafted the patent application.
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`However, both Mr. Ben-Itzhak and Dr. Berger provide incomplete recollections of
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`their activities over 10 years ago, and Patent Owner fails to corroborate their
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`testimony with any independent evidence.
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`During the period in which diligence must be shown, there must be an
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`evidentiary showing of reasonably continuous diligence. Perfect Surgical
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`Techniques v. Olympus Am., Inc., No. 2015-2043, slip .op. at 7 (Fed. Cir. Nov. 15,
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`2016). A party alleging diligence must account for the entire critical period.
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`Griffith v. Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987). Even a short period of
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`unexplained inactivity is sufficient to defeat a claim of diligence. Iron Dome LLC
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`v. E-Watch, Inc., No. IPR2014-00439, Paper No. 16 at 7 (P.T.A.B. Aug. 4, 2014)
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`(citing Morway v. Bondi, 203 F.2d 742, 749 (C.C.P.A. 1953); Ireland v. Smith, 97
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`F.2d 95, 99-100 (C.C.P.A. 1938).) With respect to the evidence required to
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`establish diligence, a party alleging diligence must provide corroborating evidence
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`that is specific both as to facts and dates. Gould v. Schawlow, 363 F.2d 908, 920
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`(C.C.P.A. 1966). Corroboration is assessed under a holistic “rule of reason,” but
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`this standard is not so permissive that is dispenses with the requirements for some
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`evidence of independent corroboration. Perfect Surgical, slip op. at 9-10.
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`Mr. Yuval Ben-Itzhak’s testimony regarding the diligence exercised in
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`reducing his invention to practice is not specific as to facts and dates, and is
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`uncorroborated by any other evidence. For instance, Mr. Ben-Itzhak alleges that
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`he first provided Dr. Berger with a draft patent application in October 2005, and
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`further alleges that from October 31 through December 12, 2005 he worked
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`diligently with Dr. Berger to finalize the application. (Ben-Itzhak Decl., Ex. 2011
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`¶¶ 6-7.) As part of his alleged diligence, he claims that he and Dr. Berger had
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`“several” phone conversations between November 13, 2005 and December 12,
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`2005 regarding the patent application. (Id. ¶ 7.) However, Mr. Ben-Itzhak is
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`unable to recall any specific dates or facts with respect to those alleged phone calls.
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`(See Ben-Itzhak Dep., Ex. 1009 at 18:5-9.)
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`Mr. Ben-Itzhak’s failure to recall any specifics with the alleged phone calls
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`is further compounded by a failure by the Patent Owner to provide any
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`corroborating evidence to demonstrate that Mr. Ben-Itzhak and Dr. Berger
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`discussed the application during the relevant time period for diligence. Thus, Mr.
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`Ben-Itzhak’s testimony fails to provide the required evidence necessary for a
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`showing of diligence.
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`Dr. Marc Berger’s testimony similarly lacks any specific dates or facts with
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`respect to the alleged phone calls that took place between he and Mr. Ben-Itzhak
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`from November 13, 2005 – December 12, 2005. (See Berger Dep., Ex. 1010 at
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`17:20-18:22.)
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`Q: Can you describe – can you state what days you spoke with Mr.
`Ben-Itzhak regarding this application during this time period?
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`A: We spoke between November 13 until December 6 when I
`provided a first full draft.
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`Q: Do you recall on what days in particular in that time period that
`you just described that you spoke to Mr. Ben-Itzhak?
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`A: I don’t remember.
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`Q. Do you remember how many phone conversations you had with
`Mr. Ben-Itzhak regarding this patent application in that time period?
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`A: No I don’t.
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`(Id. (objections omitted).)
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`Thus, Mr. Ben-Itzhak and Dr. Berger’s lack of recollection leave fatal gaps
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`of time during the relevant period in which there is insufficient evidence of
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`diligence. Patent Owner attempts to cure these evidentiary gaps by alleging that
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`Dr. Berger was working on a series of unrelated Office Actions during the relevant
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`period. (Patent Owner Response at 8-9.) However, simply alleging that one
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`worked on unrelated Office Actions without providing corroborating evidence is
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`insufficient. “Generally, the patent attorney must show that unrelated cases are
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`taken up in chronological order, thus, the attorney has the burden of keeping
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`good records of the dates when cases are docketed as well as the dates when
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`specific work is done on the applications. Bey v. Kollonitsch, 806 F.2d 1024,
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`1028 (Fed. Cir. 1986.) Dr. Berger nor the Patent Owner have provided any records
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`showing the dates when cases are docketed, nor any evidence (such as billing
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`records) with respect to the specific dates when work was done on the Office
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`Actions. In fact, Dr. Berger himself cannot remember when he worked on any
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`particular Office Action. (See Berger Dep., Ex. 1010 at 11:6-16:16.) At least
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`some of the Office Action responses Dr. Berger claims to have worked on and filed
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`do not bear his signature and thus fail to corroborate the assertion that he worked
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`on those responses. (See Exs. 1013-1014.)
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`The fairest interpretation of the evidence is that any diligence of Dr. Berger
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`and Mr. Ben-Itzhak did not commence until early December, 2005, several weeks
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`after the filing date of Ross. Exhibit 2007, dated December 6, 2005, stated that Dr.
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`Berger was only “reviewing the disclosure” as of that date, implying that he had
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`not yet begun to draft the application at that time. It is not reasonable to suggest
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`that Dr. Berger spent over three weeks (from the November 17, 2005 filing date of
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`Ross to December 6, 2005) merely reviewing the application. There is certainly no
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`corroborated evidence that this is the case.
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`Mr. Ben-Itzhak’s and Dr. Berger’s lack of recollection and the failure of the
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`part of the Patent Owner to provide any corroborating evidence means that Patent
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`Owner fails to meet its evidentiary burdens required to establish diligence in
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`reduction to practice. If anything, the evidence suggests that Mr. Ben-Itzhak and
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`Dr. Berger were not diligent from prior to the filing of Ross to the filing of the
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`application that issued as the ’154 patent, but rather that Dr. Berger picked up the
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`application weeks after Ross’s filing. For at least this reason the Board should
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`decline to allow Patent Owner to swear behind Ross.
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`B.
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`Patent Owner’s evidence of conception should be accorded little
`to no weight
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`The Patent Owner’s evidence of conception is also insufficient to antedate
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`Ross. Patent Owner’s allegation of conception relies on an undated and
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`unauthenticated draft patent application and the uncorroborated testimonies of Mr.
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`Ben-Itzhak and Dr. Berger. As a matter of law, such sparse evidence is insufficient
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`to establish a date of conception prior to the filing date of Ross.
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`“Conception must be proved by corroborating evidence which shows that
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`the inventor disclosed to others his ‘completed thought expressed in such clear
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`terms as to enable those skilled in the art’ to make the invention.” Coleman v.
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`Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). The courts apply a rule of reason to
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`determine whether the inventor’s testimony has been corroborated. Price v.
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`Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993). “The rule of reason, however, does
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`not dispense with the requirement for some evidence of independent
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`corroboration.” Coleman, 754 F.2d at 360.
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`In this case, Patent Owner relies on Exhibit 2007, a print out of a supposed
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`email chain between Mr. Ben-Izthak and Dr. Berger, to establish an alleged date of
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`conception as October 31, 2005. However, from the exhibit itself, it is unclear that
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`the draft patent application provided in the exhibit is indeed the draft patent
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`application that Mr. Ben-Itzhak supposedly attached to his supposed October 31st
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`email. “The law requires sufficient proof for the date and identity of a physical
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`exhibit offered to show conception.” CBS Interactive, Paper No. 122 at 46. No
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`such proof is provided here. As Dr. Berger admits in his declaration, the entirety
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`of Exhibit 2007 is documents that he located in his files, not any actual emails.
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`(Ex. 2010 at ¶5). There is no evidence from the files that the draft patent
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`application provided in Exhibit 2007 was the draft referred to in the supposed
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`October 31st email. In fact, Exhibit 2007 suggests that the “attachment” included
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`within the exhibit is not the same document that was attached to the email sent on
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`October 31st. In the email of October 31st, Mr. Ben-Itzhak states that the title of the
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`draft application he is attaching is “System and method for the remote inspection
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`of code.” (Ex. 2007 at 2.) However, the document included within Exhibit 2007 is
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`titled “System and Method for Inspecting Dynamically Generated Executable
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`Code.” (Id. at 3.) Patent Owner does not explain the discrepancy in titles. Patent
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`Owner wholly relies on the statements of Dr. Berger in his declaration to establish
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`that the draft patent application provided in Exhibit 2007 is the attachment referred
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`to in the supposed October 31st email. However, this testimony is insufficient.
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`Conception must be proven by corroborating evidence; an inventor’s testimony,
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`standing alone, is insufficient prove conception. CBS Interactive, Paper No. 122 at
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`45-46.
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`Exhibit 2007’s lack of authentication and the unsupported testimony of Mr.
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`Ben-Itzhak and Dr. Berger are insufficient to establish that the draft patent
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`application provided in Exhibit 2007 was sent on October 31, 2005. The Board
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`should therefore decline to establish a date of conception prior to the filing date of
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`Ross.
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`III. ROSS RENDERS OBVIOUS EACH AND EVERY RECITED
`FEATURE OF CLAIMS 1-8, 10, AND 11 OBVIOUS
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`As discussed in detail below, Ross, when read in its entirety, teaches and
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`suggests each and every feature of claims 1-8, 10, and 11.
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`A. Ross renders obvious “processing content received over a
`network, the content including a call to a first function”
`1.
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`Ross teaches or suggests that the hook scripts can include a
`call to a first function
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`As stated in the Petition, Ross’ description of a script processing engine that
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`receives generated hook scripts over a network teaches or suggests “a content
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`processor for processing content received over a network, the content including a
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`call to a first function,” as recited in claims 1, 4, 6, and 10 of the ’154 patent. (See
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`Petition at 15-17; Rubin Decl., Ex. 1005 ¶¶ 3-14.) Patent Owner alleges that Ross’
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`hook scripts do not teach or suggest any calls to a function within the received
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`hook scripts. (See Patent Owner Response at 20.) As shown below, this assertion
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`is wrong.
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`Patent Owner relies exclusively on FIG. 4 of Ross to support its argument
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`that Ross does not teach or suggest “a call to a first function” within the hook
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`scripts (i.e., content received over a network). (See id. at 19.) Specifically, the
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`Patent Owner response states that “Ross’ technique involves invoking a hook
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`function . . . without the content including a call to the hook function.” (Id. at 22.)
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`However, the example of FIG. 4 teaches or suggests calling a function within the
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`hook script in at least two ways.
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`First, the example of FIG. 4 would readily teach or suggest to a POSITA that
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`the act of having a hook function supersede a call to an original function can be
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`achieved via a call to a hook function within the hook script. (Rubin Decl. ¶ 3.)
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`Ross explicitly suggests that a call to a hook function that supersedes a call to an
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`original function can be achieved through a number of ways, specifically stating
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`that “[a]lthough shown as a single, combined script 402, generated hook script 404
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`and original script code 302 may be introduced, or injected, into script processing
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`engine 618 individually by any means as long as a hook script function
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`corresponding to an original script function is processed first.” (Ex. 1003 ¶ 31;
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`Rubin Decl. ¶ 4.) It would have been obvious to a POSITA, at the time of the
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`filing of the ’154 patent, that one way to ensure that the hook script function
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`corresponding to an original script is processed first would have been to include a
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`call to the hook function within the hook script. (Rubin Decl. ¶¶5- 6.) Dr. Rubin
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`in his declaration provides an example of a hook script that ensures that the hook
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`function is called first, before the original function, and that utilizes a call to the
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`hook function within the hook script itself. (Id. ¶¶ 7-9.) As Ross explicitly
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`suggests that superseding an original function with a hook function could be
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`achieved through various means not illustrated in FIG. 4, and that it would be
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`obvious to a POSITA to achieve the same goal that Ross describes by calling the
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`hook function within the hook script, Ross teaches or suggests “processing content
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`received over a network, the content including a call to a first function,” as recited
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`in the challenged claims.
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`Second, the example of FIG. 4 itself provides the suggestion that the hook
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`script can include a call to a hook function. (Rubin Decl. ¶ 10.) FIG. 4 of Ross
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`(reproduced below, with annotations) illustrates an exemplary hook script as taught
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`by Ross.
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`As illustrated in FIG. 4, the hook script 404 includes a hook function
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`(labeled in the figure as HookdActiveXObject). (Rubin Decl. ¶ 11.) The example
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`of FIG. 4 illustrates that the hook function can include security checks using the
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`comment line “//Security checks go here” (see highlighted portion of figure). Ross
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`explains that an “executed hook function may pass a message to decision service
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`624 that is used in a vulnerability assessment,” and that the “information passed to
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`the decision service may include the method name, the object name, any
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`parameters passed to the method, as well as relevant object properties or global
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`variable values.” (Ross ¶¶ 38, 36; Rubin Decl. ¶ 11.) It would have been obvious
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`to a POSITA that the security checks illustrated in FIG. 4 of Ross could be
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`implemented by calling a separate hook function within the hook script. (Rubin
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`Decl. ¶¶ 12-13.) Specifically, it would have been obvious to a POSITA that the
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`“security checks” within the hook function “HookedActiveXObject” could be
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`implemented by calling another hook function within the received hook script.
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`(Rubin Decl. ¶ 14.) The “hook function” that is executed is therefore the “first
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`function.”
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`There is no dispute in the expert testimony as to this issue. Dr. Rubin
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`testifies that one of skill in the art would understand the Ross teaching of “security
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`checks go here” as suggesting inserting a call to a function that would perform the
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`security checks. Patent Owner’s expert Dr. Medvidovic similarly testified that the
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`“security checks” illustrated in the example of FIG. 4 could be implemented as a
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`call to a separate function. (See Medvidovic Dep., Ex. 1011 at 8:17-9:5.)
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`A: They would understand what the comment says, which is the,
`“Security checks go here.”
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`Q: Okay. And one way to insert the security checks at that location
`would be to insert a call to a function that performs the security
`checks, correct?
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`A: A call to a function would be possible, but this is – I don’t mean
`to be rude, so to speak, but your example is incomplete. It’s unclear
`what that call would have. So, in computer science, a call to a
`function is always possible. But what kind of call, et cetera, that
`doesn’t seem clear from your question.
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`(Id. (objection omitted).)
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`The claims of the ’154 patent simply require “a call to a function” and do not
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`require a certain type of call. As Dr. Medvidovic and Dr. Rubin agree, one of skill
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`in the art would understand that the security checks illustrated in FIG. 4 of Ross
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`could be implemented as a call to a function. Thus Ross, through its disclosure
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`relating to performing security checks within a hook function, plainly teaches
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`“processing content received over a network, the content including a call to a first
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`function,” as recited in the challenged claims.
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`2.
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`Ross teaches or suggests that the content can be received
`over a network
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`The challenged claims of the ’154 patent simply recite “processing content
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`received over a network.” However, Patent Owner relies on a strained and overly
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`narrow claim interpretation by arguing that the claims’ reference to “a network”
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`must be limited to “a single network.” Patent Owner offers no support for its
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`narrow claim construction, and it should be rejected.
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`Before the USPTO, claim terms are interpreted under the broadest
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`reasonable interpretation standard. See Cuozzo Speed Techs., LLC v. Lee, No. 15-
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`446, slip op. at 1 (U.S. June 20, 2016). The Federal Circuit “has repeatedly
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`emphasized that an indefinite article ‘a’ or ‘an” in patent parlance carries the
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`meaning of ‘one or more’ in open-ended claims containing the transitional phrase
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`‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.
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`Cir. 2000). “That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule,
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`rather than merely as a presumption or even a convention. The exceptions to this
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`rule are extremely limited: a patentee must ‘evince[] a clear intent’ to limit ‘a’ or
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`‘an’ to ‘one.’” Baldwin Graphics Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342
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`(Fed. Cir. 2008) (quoting KCJ Corp., 223 F.3d at 1356). Here, Patent Owner
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`points to nothing in the specification showing of a clear intent to limit the “a” as
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`recited in the claims to one and only one. There is no reason for this Board to
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`deviate from the general rule here. Thus, Patent Owner’s argument fails as a
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`matter of law.
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`Even if the claims of the ’154 patent somehow did require that the HTTP
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`content be received over the same network as the hook scripts, Ross would still
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`teach or suggest such a configuration. (Rubin Decl. ¶ 15.) As a preliminary
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`matter, the Patent Owner submits an annotated version of FIG. 6 (reproduced
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`below) of Ross that purports to show that the received HTTP content and the hook
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`scripts of Ross are received over separate networks. (Id. ¶ 16.)
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`However, FIG. 6 of Ross is labeled as a “data flow block diagram,” and not
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`a networking diagram. (See Ross ¶ 20; Rubin Decl. ¶¶ 16-17.) As Dr. Medvidovic
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`admits, “[p]recisely speaking, one would not call a network diagram a data flow
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`diagram or the other way around.” (Medvidovic Dep., Ex. 1011 at 18:17-25.)
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`Thus, contrary to Patent Owner’s argument, the separate components illustrated on
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`FIG. 6 need not be on separate networks. (Rubin Decl. ¶¶ 16-17.)
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`Ross actually explicitly teaches that the HTTP content and the hook scripts
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`could be received over the same network through its discussion of an embodiment
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`in which the hook script injector can be implemented as a networked device. (See
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`Ross ¶ 26.) As Dr. Rubin explains, a hook script generator being implemented as a
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`network device could be implemented in TCP/IP. (Rubin Decl. ¶¶ 18-20.) Since a
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`POSITA would have understood that a network device could be implemented
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`using a TCP/IP network, and that HTTP content would also be received over a
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`TCP/IP network, Ross plainly suggests that the HTTP content and the hook scripts
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`could be received over the same network. (Id. ¶ 20.) Dr. Medvidovic confirms
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`that a network device could utilize a TCP/IP network.
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`Q: Okay. And a network device could communicate over a TCP/IP
`network, couldn’t it?
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`A: In general, yes. Outside of any context of this particular patent,
`yes, a network device could communicate through TCP/IP.
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`(Medvidovic Dep., Ex. 1011 at 20:21-21:1 (objection omitted).)
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`While the claims of the ’154 patent do not require that the HTTP content and
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`the hook scripts disclosed in Ross be received over the same network, even under
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`such an improperly narrow interpretation of the claims, Ross plainly teaches or
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`suggests that the HTTP content and the hook scripts could be received over the
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`same network.
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`B. Ross renders obvious “for invoking a second function with the
`input”
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`Ross teaches “a content processor . . . for invoking a second function with
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`the input,” as recited in the challenged claims. (Rubin Decl. ¶ 21.) As further
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`explained below, Ross teaches that a hook function is called using the inputs of the
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`original function, and once a decision service determines that the original function
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`is determined to be safe, the original function can be invoked. It would have bee