`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00151
`Patent No. 8,141,154
`
`__________________________________________________________
`
`PATENT OWNER’S RESPONSE ON REMAND
`
`
`
`
`
`
`
`
`
`Patent Owner’s Response on Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`TABLE OF CONTENTS
`
`B.
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1) ..................... 1
`A.
`The Proceeding Should Be Terminated Because Estoppel Attaches
`to Non-Challenged Dependent Claims .................................................. 2
`This Proceeding Should Be Terminated Because Estoppel Applies
`to the Entire Proceeding ........................................................................ 4
`III. ROSS IN VIEW OF CALDER DOES NOT RENDER CLAIMS 9
`AND 12 OBVIOUS UNDER 35 U.S.C. § 103(A) ......................................... 6
`A.
`Claims 9 and 12 Are Patentable Because They Depend From
`Patentable Base Claims ......................................................................... 6
`Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function” ................................ 7
`Ross in view of Calder fails to show or suggest “and wherein the
`modified input variable includes a call to a modified additional
`function instead of the call to the additional function” ......................... 9
`III. CONCLUSION .............................................................................................. 10
`
`
`B.
`
`C.
`
`- i -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331 (Fed. Cir. 2009) ............................................................................ 3
`Credit Acceptance Corp. v. Westlake Services,
`859 F.3d 1044 (Fed. Cir. 2017) ............................................................................ 4
`Ford Motor Co. v. Paice LLC,
`IPR2015-00792, Paper 30 (P.T.A.B. Oct. 25, 2016) ............................................ 3
`Palo Alto Networks, Inc., v. Finjan, Inc.,
`2017-2314, 2018 WL 6040843 (Fed. Cir. Nov. 19, 2018) ................................... 1
`Palo Alto Networks, Inc., v. Finjan, Inc.,
`IPR2016-00157, Paper 3 (P.T.A.B. Nov. 17, 2015) ............................................. 4
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................... 4, 5
`SynQor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ........................................................................ 2, 3
`Statutes
`35 U.S.C. § 103(a) ..................................................................................................... 6
`35 U.S.C. § 315(e)(1) ........................................................................................passim
`35 U.S.C. § 317(a) ..................................................................................................... 5
`35 U.S.C. § 318(a) ................................................................................................. 4, 5
`Regulations
`37 C.F.R. § 42.74(a) ................................................................................................... 5
`
`
`- ii -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`On January 23, 2019, the Board modified its original “institution decision to
`
`include review of dependent claims 9 and 12 of the ’154 patent.” Paper 55 at 2.
`
`Pursuant to the Remand Briefing Schedule, Petitioner filed its Institution Response
`
`Brief on February 13, 2019. Paper 56 at 5; Paper 60. Patent Owner’s Response is
`
`being timely filed by March 6, 2019. Id.
`
`I.
`
`INTRODUCTION
`
`Petitioner is estopped under 35 U.S.C. § 315(e)(1) from further participation
`
`in this proceeding. Each independent claim of the ‘154 Patent was the subject of a
`
`Final Written Decision in IPR2015-01979, which was filed by Petitioner. See Palo
`
`Alto Networks, Inc., v. Finjan, Inc., IPR2015-01979, Paper 62.
`
`II. THIS PROCEEDING SHOULD BE TERMINATED BECAUSE
`PETITIONER IS ESTOPPED UNDER 35 U.S.C. § 315(E)(1)
`Petitioner filed petitions for inter partes review challenging claims of the
`
`‘154 Patent in Case Nos. IPR2015-01979 and IPR2016-00151. On March 15,
`
`2017, the Board issued Final Written Decisions (“FWD”) in both cases confirming
`
`the patentability of claims 1–8, 10, and 11. Although the Federal Circuit vacated
`
`the Board’s FWD in this case, it affirmed the Board’s decision in IPR2015-01979.
`
`See Palo Alto Networks, Inc., v. Finjan, Inc., 2017-2314, 2018 WL 6040843, at *6
`
`(Fed. Cir. Nov. 19, 2018).
`
`By the plain terms of 35 U.S.C. § 315(e)(1), Petitioner cannot “maintain a
`
`proceeding before the Office with respect to [claims 1–8, 10 and 11] on any ground
`
`- 1 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`that the petitioner raised or reasonably could have raised during that inter partes
`
`review.” 35 U.S.C. § 315(e)(1). There should be no question that Petitioner could
`
`have raised the grounds asserted in IPR2016-00151 in IPR2015-01979 given that
`
`the two petitions were filed a little over a month apart. Moreover, Petitioner’s
`
`Brief on Estoppel in this case (Paper 30) made no attempt to demonstrate that it
`
`could not “have raised” the grounds presented in IPR2016-00151 in its earlier-filed
`
`petition. Accordingly, it should not be in dispute that Petitioner is estopped from
`
`maintaining the instant proceeding with respect to claims 1–8, 10, and 11.
`
`The fact that Petitioner is estopped from maintaining this proceeding with
`
`respect to claims 1-8, 10, and 11 means that this proceeding should be dismissed
`
`pursuant to 35 U.S.C. § 315(e)(1) for at least the reasons discussed below.
`
`A. The Proceeding Should Be Terminated Because Estoppel Attaches
`to Non-Challenged Dependent Claims
`Petitioner is estopped from maintaining a challenge to claims 1–12 of the
`
`‘154 Patent because the Board’s Final Written Decision confirming the
`
`patentability of each independent claim of the ‘154 Patent in IPR2015-01979 also
`
`confirms the patentability of every dependent claim, including claims 9 and 12.
`
`SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013)(“This
`
`court need not consider Defendants' arguments that certain dependent claim
`
`limitations would have been obvious where the base claim has not been proven
`
`invalid.”)(citation omitted). Thus, whether or not Petitioner challenged claims 9
`
`- 2 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`and 12 in IPR2015-01979, the Board’s FWD in that case necessarily extended to
`
`claims 9 and 12 because claims 6 and 10, from which claims 9 and 12 depend,
`
`were found patentable in that case. Id. No provision of the AIA prevents the
`
`Board from issuing a FWD confirming the patentability of claims not challenged in
`
`a Petition, and the Board should consider its FWDs to extend to claims not
`
`challenged in the Petition but which are not-unpatentable by force of law. Id.
`
`In the absence of this solution, petitioners could readily game the estoppel
`
`provisions simply by splitting challenges to claims depending from the same
`
`independent claim over two different petitions. Indeed, this case demonstrates how
`
`easily a party could devise an end-run around § 315(e)(1). Filing a second petition
`
`challenging dependent claims not challenged in the first petition allows for a
`
`second bite at claims that the petitioner is estopped from challenging directly
`
`because considering the patentability of a dependent claim necessarily demands
`
`consideration of the independent claim from which it depends. Callaway Golf Co.
`
`v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader independent
`
`claim cannot be nonobvious where a dependent claim stemming from that
`
`independent claim is invalid for obviousness.”); see also Ford Motor Co. v. Paice
`
`LLC, IPR2015-00792, Paper 30 at 15 (P.T.A.B. Oct. 25, 2016)(“address[ing] the
`
`limitations incorporated from base claims 1, 11, 21, and 30 into the respective
`
`dependent claims at issue” despite the independent claims being dismissed from
`
`- 3 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`the case under § 315(e)(1)). Indeed, in another case between these parties, the
`
`Board explicitly ruled that a challenge to dependent claims could not be
`
`maintained in the absence of a challenge to the independent claims from which
`
`they depend. See Palo Alto Networks, Inc., v. Finjan, Inc., IPR2016-00157, Paper
`
`3 at 2 (P.T.A.B. Nov. 17, 2015).
`
`Allowing a proceeding to advance on dependent claims when the petitioner
`
`is estopped from challenging the independent claims, as the Board did in, renders
`
`§ 315(e)(1) toothless and cannot be squared with 35 U.S.C. § 318(a), which
`
`requires that the Final Written Decision “must address every claim the petitioner
`
`has challenged.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018).
`
`Accordingly, in the situation where a FWD confirms the patentability of an
`
`independent claim, estoppel should attach to every claim depending from the
`
`patentable base claim.
`
`B.
`
`This Proceeding Should Be Terminated Because Estoppel Applies
`to the Entire Proceeding
`Before its decision in SAS, the Federal Circuit determined that “[b]ecause a
`
`final written decision does not determine the patentability of non-instituted claims,
`
`it follows that estoppel does not apply to those non-instituted claims in future
`
`proceedings before the PTO.” Credit Acceptance Corp. v. Westlake Services, 859
`
`F.3d 1044, 1052 (Fed. Cir. 2017). Post-SAS, this is no longer good law, and the
`
`Board should find that estoppel applies to the entire proceeding.
`
`- 4 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`First, under 35 U.S.C. § 318(a), the Board is obligated to “issue a final
`
`written decision with respect to the patentability of any patent claim challenged by
`
`the petitioner,” which includes the estopped claims. If the Board were to render a
`
`FWD in this case that did not include the claims from which Petitioner is estopped
`
`from challenging (as the Board did in Ford), it would be in violation of § 318(a)
`
`and SAS. But allowing the Petitioner to maintain the proceeding with respect to
`
`dependent claims necessarily means that it is also maintaining the proceeding with
`
`respect to any claims from which they depend, even if estoppel would otherwise
`
`attach.
`
`Second, the Supreme Court dictates the Petitioner controls the proceeding,
`
`not the Director. SAS, 138 S. Ct. at 1355. That means that the Board does not
`
`have discretion dismiss certain claims from a case while allowing other claims to
`
`survive. Accordingly, if the decision is to either (1) terminate a proceeding that
`
`includes claims from which the Petitioner is estopped from challenging, or (2)
`
`proceed to a final written decision on all claims challenged despite the estoppel
`
`provisions of 35 U.S.C. § 315(e)(1), the Board should terminate the proceeding.
`
`Third, the provision that permits the Office to issue a Final Written
`
`Decision in the absence of a Petitioner only applies to the situation where the
`
`petitioner’s absence resulted from a settlement. See 35 U.S.C. § 317(a); 37 C.F.R.
`
`§ 42.74(a). If the Board determines, however, that it retains the discretion not to
`
`- 5 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`terminate the case pursuant to § 315(e)(1), the Board should terminate Petitioner as
`
`a party to the proceeding, expunge its post-remand briefing, and proceed to issue a
`
`Final Written Decision reiterating the patentability of claims 1–8, 10, and 11 and
`
`confirming the patentability of claims 9 and 12 at least on the basis that they
`
`depend from patentable base claims.
`
`III. ROSS IN VIEW OF CALDER DOES NOT RENDER CLAIMS 9 AND
`12 OBVIOUS UNDER 35 U.S.C. § 103(A)
`A. Claims 9 and 12 Are Patentable Because They Depend From
`Patentable Base Claims
`The Board has already determined that Petitioner did not meet its burden to
`
`demonstrate that independent claims 6 and 10 are unpatentable. Claims 9 and 12,
`
`which represent the sole subject of the substantive briefing on remand, are
`
`narrower than claims 6 and 10 and are therefore patentable for at least the same
`
`reasons as the Board articulated in its first Final Written Decision in this case. The
`
`remand ordered by the Federal Circuit and the briefing ordered by the Board
`
`Any decision regarding the patentability of claims 9 and 12 based solely on
`
`Petitioner’s arguments regarding the additional subject matter therein is mooted by
`
`the Board’s prior decision regarding independent claims 6 and 10, particularly
`
`given that no additional briefing was permitted on those claims. See Paper 56 at 2–
`
`3. Thus, in the best case for Petitioner, a Final Written Decision addressing the
`
`- 6 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`patentability of claims 9 and 12 would amount to no more than an advisory opinion
`
`that claims 9 and 12 could be unpatentable in circumstances not before the Board.
`
`Nevertheless, Patent Owner addresses the substance of Petitioner’s Opening
`
`Brief on Remand below.
`
`B. Ross in view of Calder fails to show or suggest “wherein the input
`variable includes a call to an additional function”
`With respect to the “input variable[s] includ[ing] a call to an additional
`
`function,” Petitioner incorrectly argues that the Board overlooked its argument that
`
`“Ross discloses this limitation in reference to Java code.” Opening Brief at 2.
`
`Contrary to Petitioner’s statement, the Board explicitly considered and rejected this
`
`argument. See Institution Decision at 15 (“We are persuaded that Petitioner has
`
`not shown sufficiently that Ross impliedly the limitation . . . . With regard to
`
`Ross’s disclosure, we find insufficient Petitioner’s assertion that the mere
`
`disclosure of JavaScript is sufficient to teach the limitation.”).
`
`Beyond arguing incorrectly that the Board overlooked this argument,
`
`Petitioner attempts to morph its argument that “the ability of the inputs described
`
`in Ross to call additional functions is implied by its discussion of Java code” into a
`
`new argument—namely, “that recursive function calls was a known feature of
`
`Java.” Opening Brief at 3–4. In citing portions of the ‘154 Patent not cited or
`
`discussed in the Petition (e.g. ‘154 Patent at 1:43-53) to support an argument not
`
`made in the Petition, Petitioner has violated the Board’s order, which permits only
`
`- 7 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`briefing on “matters that Petitioner believes the Board misapprehended or
`
`overlooked, or otherwise erred in its institution decision discussing the newly-
`
`added claims.” See Paper 56 at 2. The Board could not have misapprehended or
`
`overlooked an argument not presented in the Petition.1
`
`Petitioner also incredibly argues that the Board “overlooked” its argument
`
`that Calder discloses this limitation. Opening Brief at 2. To the contrary,
`
`however, the Board considered Petitioner’s argument in detail, explaining why it
`
`found that “Calder is silent on, and Petitioner does not explain sufficiently, which
`
`and how the input variable in Calder’s alleged memory page request is a call to
`
`another function.” See Institution Decision at 16. And although Petitioner repeats
`
`its argument that Calder teaches this claim element, it does not point to any
`
`“matters that Petitioner believes the Board misapprehended or overlooked, or
`
`otherwise erred in its institution decision.” Paper 56 at 2. In fact, Petitioner’s
`
`discussion of Calder does not address the Board’s Institution Decision at all and
`
`instead simply paraphrases the argument made in the Petition without addressing
`
`the Board’s concern that “Petitioner has failed to lay the foundation for [its]
`
`rationale.” Institution Decision at 16.
`
`
`1 The Opening Brief also continues Petitioner’s mistaken impression that Java is
`
`equivalent to JavaScript. See Opening Brief at 3.
`
`- 8 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`In short, the Opening Brief shares the same deficiencies as the Petition,
`
`namely that “various embodiments of the Calder reference, including its discussion
`
`of modifiable memory pages and DLL rewriting are presented piecemeal, without
`
`any explanation of how they could be considered together to reach the claimed
`
`feature, and without any cogent mapping of the disclosure to the language of the
`
`claims.” Preliminary Response at 26. Indeed, Petitioner’s Opening Brief fails to
`
`explain how an application could be considered a function or how the act of an
`
`application calling a function means that Calder teaches “wherein the input
`
`variable includes a call to an additional function.” See Opening Brief at 4–5.
`
`C. Ross in view of Calder fails to show or suggest “and wherein the
`modified input variable includes a call to a modified additional
`function instead of the call to the additional function”
`Petitioner also argues that the Board misapprehended its argument with
`
`respect to the term “wherein the modified input variable includes a call to a
`
`modified additional function instead of a call to the additional function.” Opening
`
`Brief at 6. As with the previous element, however, the Opening Brief merely
`
`repeats its argument from the Petition without addressing the Board’s statement
`
`that “there is insufficient explanation regarding Petitioner’s contention of how
`
`Calder’s interception of DLLs meets the limitation of the modified input variable
`
`including a call to a modified additional function.” Institution Decision at 17.
`
`- 9 -
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`Petitioner’s conclusion, that “even if a DLL call was included as an input
`
`variable to another DLL call, that input variable DLL call would also invoke the
`
`interception module (i.e., the modified additional function call)” fails to
`
`demonstrate that the Board misapprehended its argument. Opening Brief at 7.
`
`First, this conclusion is a new argument that was not presented in the Petition.
`
`Second, Petitioner cites no evidence that a DLL call would be included as an input
`
`variable to another DLL call. And third, Petitioner’s new scenario does not even
`
`meet the language of the claims, which requires “a call to a modified additional
`
`function instead of the call to the additional function.” (emphasis added).
`
`Accordingly, Petitioner has not demonstrated that the Board overlooked or
`
`misapprehended any matters with respect to the term “wherein the modified input
`
`variable includes a call to a modified additional function instead of a call to the
`
`additional function.”
`
`III. CONCLUSION
`
`Petitioner is estopped from maintaining this proceeding, and it should be
`
`terminated pursuant to 35 U.S.C. § 315(e)(1). Petitioner also has not established
`
`that claims 9 and 12 of the ‘154 Patent are unpatentable. Accordingly, in the
`
`absence of terminating this case under 35 U.S.C. § 315(e)(1), Finjan respectfully
`
`requests that the Board issue a Final Written Decision confirming the patentability
`
`of claims 1–12 of the ’154 Patent.
`
`- 10 -
`
`
`
`
`
`Patent Owner’s Response On Remand
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`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: 212.715.8000
`
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.7502 Fax: 212.715.8302
`
`Attorneys for Patent Owner
`
`Dated: March 6, 2019
`
`(Case No. IPR2016-00151)
`
`
`
`- 11 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Response on Remand was served on
`
`March 6, 2019, 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:
`
`Matthew I. Kreeger
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`
`Shouvik Biswas
`Morrison & Foerster LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`sbiswas@mofo.com
`FinjanPANMofoTeam@mofo.com
`
`
`
`
`
`
`Jonathan Bockman
`MORRISON & FOERSTER LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`JBockman@mofo.com
`
`
`
`
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`- 12 -
`
`