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
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-001511
`U.S. Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`
`
`1 Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
` Patent Owner Finjan, Inc. submits the following observations of the
`
`December 20, 2016 cross-examination of Aviel Rubin (Ex. 2043):
`
`Observations Concerning the Missing “Call to a First Function”
`
`Observation #1 : “There is no explicit call to a hooked function”
`
`Dr. Rubin confirmed in his deposition that “there is no explicit call to a
`
`hooked function” in Ross and confirmed that Dr. Rubin actually relies on his own
`
`pseudocode, labeled My Pseudocode, to show what is missing from the
`
`pseudocode in figure 4 of Ross. Ex. 2043 at 88:11-16 (“the opinion that I have is
`
`that in the pseudocode in figure 4, there's no explicit call to a hooked function. But
`
`I showed in my pseudocode how, by adding a trivial amount of code, that
`
`functionality can be shown…”).
`
`This testimony is relevant because it is contrary to Dr. Rubin’s declaration
`
`testimony that the “content” processed by Ross already includes a call to a hook
`
`function, which is alleged to be the “call to a first function.” Ex. 1002 at ¶109 (“a
`
`POSITA would have understood that the hook scripts (i.e., content) processed by
`
`the script processing engine 224 to include a call to a first function call (i.e., hook
`
`functions within a hook script)…”). This testimony is relevant because it confirms
`
`the required “call to a first function” was not disclosed by the cited prior art.
`
`1
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`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Observation #2 : Dr. Rubin Adds Code “Not in the Original Pseudocode”
`
`Dr. Rubin confirmed in his deposition that “there's no explicit call in the
`
`pseudocode” of Ross and that his own pseudocode adds code that “was not in the
`
`original pseudocode” of Ross. Ex. 2043 at 88:25-89:3 (“Q: What do you mean by
`
`there's no explicit call in the pseudocode? A: The line that I added in the
`
`pseudocode was not in the original pseudocode.”).
`
`This testimony is relevant because it confirms that Dr. Rubin’s added code
`
`“was not in the original pseudocode” disclosed by Ross. This testimony is
`
`relevant because it undermines the argument that Ross’s alleged “content” includes
`
`a “call to a first function,” as required by claim 1. Ex. 1002 at ¶107 (“The
`
`‘content’ received by the script processing engine 618 (i.e., a content processor)
`
`includes a call to a first function.”)(emphasis added).
`
`Observation #3: How Dr. Rubin’s Pseudocode Differs From Ross
`
`Dr. Rubin further testified as to how his own pseudocode differs from Ross’s
`
`pseudocode in multiple ways. Ex. 2043 at 89:2-9 (“I added a line that's a function
`
`called hooked active X object which has a single line in that function which is a
`
`call to the substitute active X object and then I changed the name of the hooked
`
`active X object to be substitute active X object.”).
`
`This testimony demonstrates that Ross’s pseudocode fails to include the
`
`recited “call to a first function” and that Dr. Rubin’s invalidity opinion improperly
`
`2
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`relies on changing Ross’s original pseudocode to include what is missing from
`
`Ross. The testimony is relevant because the statements contradict Dr. Rubin’s
`
`assertion in his declaration that the “content” processed by Ross already includes a
`
`call to a first function. Ex. 1002 at ¶107 (“The ‘content’ received by the script
`
`processing engine 618 (i.e., a content processor) includes a call to a first
`
`function.”); see also id. at ¶109 (“a POSITA would have understood that the hook
`
`scripts (i.e., content) processed by the script processing engine 224 to include a call
`
`to a first function call (i.e., hook functions within a hook script)…”).
`
`Observation #4 : Dr. Rubin’s Pseudocode was Created in 2016 Not 2005
`
`Dr. Rubin confirmed in his deposition that his pseudocode, labeled My
`
`Pseudocode, was created approximately a month ago in November of 2016. Ex.
`
`2043 at 89:14-21 (“Q: So it's -- the code labeled my pseudocode, when did you
`
`create this? A: This was maybe about a month ago, approximately. Q: So it would
`
`be fair to say that you created the code labeled my pseudocode in November of
`
`2016? A: I don't remember the exact date, but that’s very likely the case.”). Dr.
`
`Rubin further confirmed in his deposition that his pseudocode was not created in
`
`2005. Ex. 2043 at 90:4-7 (“Q: So is it true that the code labeled my pseudocode
`
`that appears on paragraph 7 of your declaration was not created in 2005? A: It was
`
`not…”).
`
`3
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`This testimony is relevant because it confirms that Dr. Rubin’s pseudocode
`
`was created after the priority date of the ‘154 Patent. This testimony is relevant to
`
`Dr. Rubin’s Reply declaration where he attempts to cure the deficiency of Ross’s
`
`pseudocode by creating his own code labeled “My Pseudocode,” created in 2016.
`
`Ex. 1005 at ¶7. This testimony is relevant because it confirms the required “call to
`
`a first function” was not disclosed by Ross at the time of the claimed invention.
`
`Observation #5 : Dr. Rubin’s Pseudocode was Created Using Hindsight Bias
`
`Dr. Rubin confirmed in his deposition that he looked to the disclosure of the
`
`‘154 Patent itself to create his pseudocode. Ex. 2043 at 90:14-17 (testifying that he
`
`looked to “table III of the '154 patent in creating the code labeled my pseudocode”
`
`in order “[t]o emphasize the similarity between my pseudocode and the
`
`pseudocode of table III.”).
`
`The testimony that Dr. Rubin used the specification of the ‘154 Patent to
`
`create his pseudocode is relevant because it demonstrates Dr. Rubin’s improper
`
`reliance on ex post reasoning and hindsight bias. This testimony is relevant
`
`because it undermines Dr. Rubin’s Reply declaration testimony that the claimed
`
`invention “would have been obvious to a POSITA, at the time of the filing of the
`
`’154 patent.” Ex. 1005 at ¶6.
`
`4
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`Observations Concerning Dr. Rubin’s Inconsistent Testimony
`
`Observation #6: Inconsistent Testimony for “Content”
`
`Dr. Rubin confirmed in his deposition that HTTP data content 602, as shown
`
`in Figure 6 of Ross, does not meet the recited “content.” Ex. 1002 at ¶105; see
`
`also Ex. 2043 at 64:8-13 (“Q: Is HTTP content 602 the recited content received
`
`over a network? A: In this figure, the box 602 is not hooked and not protected…
`
`that's not content that meets the claim limitation.”).
`
`This testimony is relevant as it is contrary to Dr. Rubin’s declaration
`
`testimony mapping “HTTP data content 602” to the recited “content.” Ex. 1002 at
`
`¶¶104, 105 and annotated figure 6 (circling “HTTP data content 602”). This
`
`testimony is also relevant because it affects what weight, if any, should be given to
`
`Dr. Rubin’s opinion regarding the “content” limitation.
`
`Observation #7: Inconsistent Testimony for “Transmitter”
`
`Dr. Rubin confirmed in his deposition that element 622 of Figure 6 of Ross
`
`uses the LPC interface and the “LPC stands for Local Procedure Call” and it is
`
`“designed for things that are going to be called on the same machine” and that in
`
`contrast to a “remote procedure call, which calls a function on another machine,
`
`this calls a function that’s already on the same computer.” Ex. 2043 at 85:22-87:8.
`
`The testimony is relevant because Dr. Rubin’s “called on the same machine”
`
`and “same computer” testimony is contradictory to his declaration testimony with
`
`5
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`respect to the allegation that Ross discloses its “decision service” as an “external
`
`computing device” and undermines the argument that Ross transmits to a remote
`
`computer as required by the “transmitter” element of claim 1. Ex. 1002 at ¶111.
`
`This testimony is also relevant because it affects what weight, if any, should be
`
`given to Dr. Rubin’s opinion regarding the “transmitter” limitation.
`
`Observation #8: Inconsistent Testimony for “Modified Input Variable”
`
`Dr. Rubin testified that the recited “modified input variable” is the output
`
`from the decision service rather than functions. Ex. 2043 at 87:18-24.
`
`The testimony is relevant because the statements are inconsistent with Dr.
`
`Rubin’s Reply declaration testimony which makes no mention of Ross’s decision
`
`service when discussing Ross’s alleged disclosure of “calling a second function
`
`with a modified input variable,” as recited in claim 6. Ex. 1005 at ¶¶29-32. This
`
`testimony is also relevant because it affects what weight, if any, should be given to
`
`Dr. Rubin’s opinion regarding the “modified input variable” limitation.
`
`
`
`Dated: December 28, 2016
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Jeffrey H. Price (Reg. No. 69,141)
`
`6
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`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`
`
`(Case No. IPR2016-00151)
`
`
`
`
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8000
`
`Michael Kim (Reg. No. 40,450)
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Tel: 650.397.9567
`
`Attorneys for Patent Owner
`
`7
`
`
`
`
`
`Patent Owner’s Motion for Observations on Testimony of Dr. Rubin
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Motion for Observations was served on December
`
`28, 2016, by filing this document through the Patent Review Processing System as
`
`well as delivering via electronic mail upon the following counsel of record for
`
`Petitioner:
`
`Nathaniel A. Hamstra
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`500 West Madison St., Ste. 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`
`
`
`
`
`
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`8
`
`Matthew I. Kreeger
`MORRISON FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`mkreeger@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`Jonathan Bockman
`Shouvik Biswas
`MORRISON FOERSTER LLP
`1650 Tysons Blvd., Ste. 400
`McLean, Virginia 22102
`jbockman@mofo.com
`SBiswas@mofo.com
`FinjanPANMofoTeam@mofo.com
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