UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2016-00157
`Patent No. 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘408 PATENT ......................................................................................... 4
`
`A. Overview ............................................................................................... 4
`
`B.
`
`Challenged Claims ................................................................................ 5
`
`III. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`B.
`
`C.
`
`D.
`
`“parse tree” (all challenged claims): ..................................................... 6
`
`“dynamically building . . . while said receiving receives the
`incoming stream” (all claims): .............................................................. 7
`
`“dynamically detecting, while said dynamically building builds
`the parse tree” (all claims): .................................................................... 9
`
`“instantiating . . . a scanner for the specific programming
`language” (claims 1 and 22): ............................................................... 10
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES
`REVIEW SHOULD NOT BE INSTITUTED ............................................... 11
`
`A.
`
`The Board Should Deny the Petition Under 35 U.S.C. § 325(d) ........ 13
`
`B. Grounds 1 and 2 Do Not Render the Challenged Claims
`Obvious Under 35 U.S.C. § 103.......................................................... 16
`
`1.
`
`2.
`
`Chandnani in view of Kolawa Does not Disclose
`“receiving, by a computer, an incoming stream of
`program code” (claims 1 and 9) ................................................ 19
`
`Chandnani in view of Kolawa Does not Disclose
`“instantiating a scanner for the specific programming
`language, in response to said determining” (claims 1 and
`9) ............................................................................................... 21
`
`i
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`

`
`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`3.
`
`Chandnani in view of Kolawa Does not Disclose
`“dynamically building, by the computer while said
`receiver receives the incoming stream, a parse tree whose
`nodes represent tokens and patterns in accordance with
`the parser rules” (all challenged claims) ................................... 23
`
`(a) Chandnani does not Disclose Building the Claimed
`Parse Tree ....................................................................... 23
`
`(b) Chandnani in view of Kolawa does not Disclose
`Dynamically Building a Parse Tree Whose Nodes
`Represent Tokens and Patterns in Accordance with
`the Parser Rules .............................................................. 25
`
`Chandnani in view of Kolawa Does not Disclose
`“dynamically detecting, by the computer while said
`dynamically building builds the parse tree, combinations
`of nodes in the parse tree which are indicators of
`potential exploits, based on the analyzer rules” all
`challenged claims)..................................................................... 27
`
`The Petition Provides Inadequate Motivation to Combine
`the Chandnani and Kolawa References to Reach the
`Claimed “dynamically detecting, by the computer while
`said dynamically building builds the parse tree,
`combinations of nodes in the parse tree which are
`indicators of potential exploits, based on the analyzer
`rules” ......................................................................................... 30
`
`4.
`
`5.
`
`6.
`
`The Petition Provides Inadequate Motivation to Combine
`the Huang with the Chandnani and Kolawa References .......... 32
`
`C. Grounds 3 and 4 Do Not Render the Challenged Claims
`Obvious Under 35 U.S.C. § 103.......................................................... 33
`
`1.
`
`2.
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “receiving, by a computer, an incoming stream
`of program code” (all challenged claims) ................................. 34
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “instantiating a scanner for the specific
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`programming language, in response to said determining”
`(claims 1 and 22) ....................................................................... 34
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “dynamically building, by the computer while
`said receiver receives the incoming stream, a parse tree
`whose nodes represent tokens and patterns in accordance
`with the parser rules” (all challenged claims) ........................... 35
`
`Chandnani in view of Kolawa and Walls Does not
`Disclose “dynamically detecting, by the computer while
`said dynamically building builds the parse tree,
`combinations of nodes in the parse tree which are
`indicators of potential exploits, based on the analyzer
`rules” (all challenged claims) .................................................... 37
`
`The Petition Provides Inadequate Motivation to Combine
`the Huang with the Chandnani, Kolawa, and Walls
`References ................................................................................. 39
`
`3.
`
`4.
`
`5.
`
`D.
`
`The Board Should Also Deny Instituting Trial Because
`Petitioner Cannot Rely on Impermissible Incorporation by
`Reference To Cure Its Defective Petition ........................................... 40
`
`V.
`
`PETITIONER’S OBVIOUSNESS ARGUMENTS FAIL AS A
`MATTER OF LAW BECAUSE IT DID NOT CONDUCT A
`COMPLETE OBVIOUSNESS ANALYSIS ................................................. 42
`
`VI. CONCLUSION .............................................................................................. 44
`
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’n, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 32, 36
`
`Apple Inc. v. Int'l Trade Comm'n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 43
`
`Aventis Pharms. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) .......................................................................... 11
`
`In re Baxter Int’l, Inc.,
`678 F.3d 1357 (Fed. Cir. 2012) ............................................................................ 6
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 19
`
`Cisco Sys., Inc., v. C-Cation Techs., LLC,
`Case No. IPR2014-00454 (P.T.A.B. Aug. 29, 2014) ................................... 41, 42
`
`Corning Inc. v. DSM IP Assets B.V.,
`Case No. IPR2013-00043 (P.T.A.B. May 1, 2014) ............................................ 29
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) .............................................................................. 41
`
`EMC Corp. v. Secure Axcess, LLC,
`Case No. IPR2014-00475 (P.T.A.B. Sept. 9, 2014) ........................................... 24
`
`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`Case No. IPR2013-00183 (P.T.A.B. July 31, 2013) .......................................... 31
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ........................................................................ 7, 9
`
`Kinetic Techs., Inc. v. Skyworks Solutions, Inc.,
`Case No. IPR2014-00529 (P.T.A.B. Sept. 23, 2014) ......................................... 31
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 30, 42
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`Leo Pharm. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 44
`
`LG Elecs., Inc. v. ATI Techs., ULC,
`IPR2015-00327 (P.T.A.B. Sept. 2, 2015) ........................................................... 16
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 44
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 43
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ............................................................................ 7
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ...................................................................... 3, 11
`
`In re Wilson,
`424 F.2d 1382 (C.C.P.A. 1970) .......................................................................... 31
`
`Statutes
`
`35 U.S.C. § 103 ............................................................................................ 16, 33, 43
`
`35 U.S.C. § 108(a) ................................................................................................... 16
`
`35 U.S.C. § 314(a) ................................................................................................... 16
`
`35 U.S.C. § 325(d) ................................................................................... 1, 13, 15, 16
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 36, 40
`
`37 C.F.R. § 42.6(e) ................................................................................................... 47
`
`37 C.F.R. § 42.20(c) ................................................................................................. 12
`
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 12, 22
`
`37 C.F.R. § 42.24 (a)(1) ........................................................................................... 41
`
`37 C.F.R. § 42.65(a) ................................................................................................. 29
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`37 C.F.R. § 42.104(b)(4) ...................................................................................passim
`
`37 C.F.R. § 42.108 ............................................................................................... 1, 33
`
`157 Cong. Rec. S1360-S1394 (March 8, 2011) ....................................................... 16
`
`H.R. Rep. No. 112-98, pt. 1 (2011).............................................................. 16, 17, 18
`
`
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`I.
`
`INTRODUCTION
`
`On November 6, 2015, Palo Alto Networks, Inc., (“Petitioner”) submitted a
`
`Petition to institute inter partes review (“IPR”) of U.S. Patent No. 8,225,408 (Ex.
`
`1001, “the ‘408 Patent”), challenging claims 1, 3–7, 9, 12–16, and 18–21 (“the
`
`Challenged Claims”).1 Finjan, Inc. (“Patent Owner”) requests that the Board not
`
`institute inter partes review because Petitioner has not demonstrated a reasonable
`
`likelihood that it would prevail in showing unpatentability of any of the challenged
`
`claims on the grounds asserted in its Petition, as required under 37 C.F.R.
`
`§ 42.108(c).
`
`Petitioner has also filed a petition for inter partes review of the ‘408 Patent
`
`challenging claims 1, 9, 22, 23, 29 and 35 thereof in Palo Alto Networks, Inc. v.
`
`Finjan, IPR2015-02001. Substantially similar art and arguments were raised in
`
`these two cases against the ‘408 Patent, and Patent Owner requests that the Board
`
`use its discretion and decline to institute trial in both of these cases under
`
`35 U.S.C. § 325(d).
`
`1 Petitioner originally filed on claims 3–7, 12–16, and 18–21 of the ‘408 Patent in
`
`the instant Petition. In its Notice of Filing Date Accorded to the Petition, the
`
`Board required that petitioner also challenge claims 1 and 9, from which claims 3–
`
`7, 12–16, and 18–21 depend. IPR2016-00157, Paper 3 at 2. The corrected Petition
`
`was accepted on November 20, 2016. Id, Paper 6.
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`The ‘408 Patent generally discloses systems and methods for receiving
`
`incoming content, determining the specific programming language being used, and
`
`then detecting exploits within received content by instantiating a language-specific
`
`scanner which has parser rules and analyzer rules created for that programming
`
`language. The ‘408 Patent teaches that by dynamically building a parse tree
`
`potential exploits can be dynamically detected during the receiving and scanning of
`
`the incoming program code. See ’408 Patent, Abstract and Claim 1. For instance,
`
`the parse tree can be dynamically analyzed to detect exploits within the content
`
`using analyzer rules and a pattern matching engine, which can identify patterns that
`
`match those of potential exploits. See id. at 2:25–3:6 and 9:42-54.
`
`In contrast, Petitioner’s primary reference, Chandnani, does not mention any
`
`kind of tree structure, let alone the dynamically built parse tree used to
`
`dynamically detect exploits within incoming program code as recited in the claims
`
`of the ‘408 Patent. Furthermore, there is no specific programming language that is
`
`subject to a scanner as required under the ‘408 Patent. In fact, Chandnani
`
`specifically explains that every portion of script language or content is subjected to
`
`analysis and does not determine the specific programming languages of the content
`
`in its analysis. See e.g., Chandnani at 9:8–12.
`
`To cure Chandnani’s deficiencies, Petitioner relies on Kolawa (for Grounds
`
`1–4), Walls (for Grounds 3 and 4) and Huang (for Grounds 2 and 4). But at least
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`the Kolawa and Walls references do not even qualify as analogous art as they make
`
`no mention of detecting exploits. Rather, these references are focused on helping
`
`companies create software without bugs. See Kolawa at 1:25-29 (describing how
`
`Kolawa is addressed at the “problem of writing error-free computer programs has
`
`plagued programmers since the very beginning.”); see also Walls at 2:10-21
`
`(describing how Walls is directed towards “companies that develop and release
`
`application software… Developers of operating systems such as Sun Microsystems
`
`and Hewlett-Packard”); see also Walls at 6:30–43 (describing how Walls
`
`“provides a process for certifying whether a software program is free from a
`
`common class of software flaws…”). Rather than assisting a software company
`
`identify flaws or bugs in their own software, the ‘408 Patent is directed towards
`
`identifying the presence of malicious intent as exemplified with the description of
`
`“portions of code that are malicious.” ‘408 Patent at 4:15–16.
`
`Although there are a variety of reasons why the ‘408 Patent is valid over
`
`Petitioner’s asserted prior art references, this Preliminary Response focuses on
`
`only limited reasons why inter partes review should not be instituted. See
`
`Travelocity.com L.P. v. Conos Techs., LLC, CBM2014-00082, Paper 12 at 10
`
`(P.T.A.B. Oct. 16, 2014) (“[N]othing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`reason.”).2 Patent Owner explicitly disagrees with Petitioner’s contention that all
`
`of challenged claims recite essentially the same elements and Patent Owner only
`
`groups limitations for the purpose of rebutting Petitioner’s arguments, which
`
`inappropriately fail to distinguish claim limitations. Patent Owner explicitly
`
`reserves the right to provide further distinctions between the prior art and the
`
`challenged claims. The deficiencies of the Petition noted herein, however, are
`
`sufficient for the Board to find that Petitioner has not met its burden to demonstrate
`
`a reasonable likelihood that it would prevail in showing unpatentability of any of
`
`the challenged claims.
`
`II. THE ‘408 PATENT
`
`A. Overview
`
`Patent Owner’s ‘408 Patent was filed on August 30, 2004, and claims
`
`priority to U.S. Patent No. 6,804,780, filed Mar. 30, 2000, and U.S. Patent No.
`
`6,092,194, filed Nov. 6, 1997. The systems and methods of the ‘408 Patent are
`
`generally directed towards systems and methods for using a dynamically built
`
`parse tree to detect exploits within incoming program code. This parse tree is
`
`2 Patent Owner specifically reserves its right to dispute that Palo Alto Networks,
`
`Inc., has correctly named all real-parties-in-interest in the event that sufficient
`
`factual bases supporting such a challenge surface during the pendency of this
`
`proceeding.
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`dynamically created and analyzed using parser rules that define certain patterns in
`
`terms of tokens and analyzer rules that identify certain combinations of tokens and
`
`patterns as being indicators of potential exploits. See, e.g., ‘408 Patent at 2:25–3:6;
`
`see also id. at 9:42–54. By describing portions of potentially malicious program
`
`code in this novel manner, the ‘408 Patent allows for efficient and accurate
`
`detection of exploits within incoming program code. See ’408 Patent, Abstract and
`
`Claim 1.
`
`B. Challenged Claims
`Petitioner challenges independent claims 1, 3–7, 9, 12–16, and 18–21 of the
`
`‘408 Patent. Claim 1 is reproduced below:
`
`1. A computer processor-based multi-lingual method for scanning
`incoming program code, comprising:
`
`receiving, by a computer, an incoming stream of program code;
`
`determining, by the computer, any specific one of a plurality of
`programming languages in which the incoming stream is written;
`
`instantiating, by the computer, a scanner for the specific
`programming language, in response to said determining, the scanner
`comprising parser rules and analyzer rules for
`the specific
`programming language, wherein the parser rules define certain
`patterns in terms of tokens, tokens being lexical constructs for the
`specific programming language, and wherein the analyzer rules
`identify certain combinations of tokens and patterns as being
`indicators of potential exploits, exploits being portions of program
`code that are malicious;
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`identifying, by the computer, individual tokens within the
`
`incoming stream;
`
`dynamically building, by the computer while said receiving
`receives the incoming stream, a parse tree whose nodes represent
`tokens and patterns in accordance with the parser rules;
`
`dynamically detecting, by the computer while said dynamically
`building builds the parse tree, combinations of nodes in the parse tree
`which are indicators of potential exploits, based on the analyzer rules;
`and
`indicating, by the computer, the presence of potential exploits
`
`within the incoming stream, based on said dynamically detecting.
`
`‘408 Patent at 19:45–20:7.
`
`III. CLAIM CONSTRUCTION
`A.
`“parse tree” (all challenged claims):
`The term “parse tree” means “a hierarchical structure of interconnected
`
`nodes built from scanned content.” This is the construction arrived at by the
`
`District Court in Finjan, Inc. v. Proofpoint, Inc., Case No. 3:13-cv-05808-HSG,
`
`Dkt. 267 (Ex. 2001 at 13). Importantly, the Federal Circuit explained: “even with
`
`a more lenient standard of proof, the PTO ideally should not arrive at a different
`
`conclusion.” In re Baxter Int’l, Inc., 678 F.3d 1357, 1365 (Fed. Cir. 2012). This
`
`construction is also consistent with the intrinsic evidence:
`
`[P]arser 220 uses a parse tree data structure to represent scanned
`content. A parse tree contains a node for each token identified while
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`parsing, and uses parsing rules to identify groups of tokens in a single
`pattern.
`
`‘408 Patent at 8:24–27.
`
`Petitioner’s proposed construction, “tree data structure that represents
`
`program code,” is completely at odds with how the claimed “parse tree” is
`
`described in the claim language and the specification. See, e.g., ‘408 Patent at
`
`claim 1 (reciting that “combinations of nodes in the parse tree which are indicators
`
`of potential exploits” with “exploits being portions of program code that are
`
`malicious.”); id. at 8:18-25 (describing how the claimed parse tree is used during
`
`the process of scanning incoming content rather than creating content using a
`
`compiler). Indeed, the Federal Circuit dictates that BRI does not allow claims to
`
`be interpreted “to embrace anything remotely related to the claimed invention.” In
`
`re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). Thus, the Board
`
`should reject Petitioner’s proposed construction of the term “parse tree.”
`
`B.
`
`“dynamically building . . . while said receiving receives the
`incoming stream” (all claims):
`
`When read within the context of the claims, there is no need to construe the
`
`phrase “dynamically building…while said receiving receives the incoming
`
`stream.” See, e.g., Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
`
`1323, 1331 (Fed. Cir. 2001) (“If the claim language is clear on its face, then our
`
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`consideration of the rest of the intrinsic evidence is restricted to determining if a
`
`deviation from the clear language of the claims is specified.”).
`
`The term “dynamically building…while said receiving receives the
`
`incoming stream” appears in all of the challenged claims3 with its scope clearly set
`
`forth in the claims. Each of the challenged independent claims generally show that
`
`(1) an incoming stream is received by a computer, (2) identifying tokens within the
`
`incoming stream, and (3) dynamically building a parse tree whose nodes represent
`
`tokens and patterns while the receiver receives the incoming stream.
`
`Petitioner argues that “dynamically building…while said receiving receives
`
`the incoming stream” should mean “building during a time period that overlaps
`
`with the time period during which the incoming stream is being received.” Petition
`
`at 12. However, Petitioner does not assert either that the claim language is unclear
`
`or that the intrinsic record demands an alternative construction, let alone the
`
`construction proposed in the Petition. As such, the Board should reject Petitioner’s
`
`proposed construction and follow the plain claim language requirement for
`
`“dynamically building…while said receiving receives the incoming stream.”
`
`
`3 This claim term is explicitly recited in independent claim 1. The minor variations
`
`of the claim language recited in independent claim 9 should be considered identical
`
`for purposes of this claim construction.
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`C.
`
` “dynamically detecting, while said dynamically building builds
`the parse tree” (all claims):
`
`When read within the context of the claims, there is no need to construe the
`
`phrase “dynamically detecting, while said dynamically building builds the parse
`
`tree.” See, e.g., Interactive Gift Express, 256 F.3d at 1331 (“If the claim language
`
`is clear on its face, then our consideration of the rest of the intrinsic evidence is
`
`restricted to determining if a deviation from the clear language of the claims is
`
`specified.”).
`
`The term “dynamically detecting, while said dynamically building builds the
`
`parse tree” appears in all of the challenged claims4 with its scope clearly set forth
`
`in the claims. Each of the challenged independent claims generally show that (1)
`
`an incoming stream is received by a computer, (2) identifying tokens within the
`
`incoming stream, (3) dynamically building a parse tree whose nodes represent
`
`tokens and patterns while the receiver receives the incoming stream, and (4)
`
`dynamically detecting, by the computer while said dynamically building builds the
`
`parse tree, combinations of nodes in the parse tree which are indicators of potential
`
`exploits.
`
`
`4 This claim term is explicitly recited in independent claims 1, 22, 23, and 35. The
`
`minor variations of the claim language recited in independent claims 9 and 29
`
`should be considered identical for purposes of this claim construction.
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
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`Petitioner argues that “dynamically detecting…while said dynamically
`
`building builds the parse tree” should mean “detecting during a time period that
`
`overlaps with the time period during which the parse tree is being built.” Petition
`
`at 14. But as with the “dynamically building” term discussed directly above,
`
`Petitioner does not assert either that the claim language is unclear or that the
`
`intrinsic record demands an alternative construction, let alone the construction
`
`proposed in the Petition. As such, the Board should reject Petitioner’s proposed
`
`construction and follow the plain claim language requirement for “dynamically
`
`detecting…while said dynamically building builds the parse tree.”
`
`D.
`
` “instantiating . . . a scanner for the specific programming
`language” (claims 1 and 22):
`
`The proper construction of “instantiating” is “creating a real instance of a
`
`scanner for the specific programming language.” This term is used according to its
`
`widely accepted meaning in the specification of the ‘408 Patent:
`
`ARB scanner factory module 630 instantiates a scanner repository
`640. Repository 640 produces a single instance of each ARB scanner
`defined in the archive file.
`
`‘408 Patent at 15:30–35. In fact, Petitioner cites to the Microsoft Computing
`
`Dictionary, Third Edition, which defines “instantiate” as “[t]o create an instance of
`
`a class.” Thus, Finjan’s proposal is the proper construction of this term.
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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`In contrast to Petitioner’s own dictionary definition, Petitioner proposes that
`
`“instantiating” should mean “making a language-specific scanner available for
`
`use.” Petition at 14. Petitioner never explains why this term should be construed
`
`differently than its own dictionary definition, let alone citing anything in the
`
`specification that supports its construction.
`
`Rather, the real motivation for Petitioner’s proposed construction is to
`
`rewrite the claimed “instantiating” such that it reads upon the prior art. Because
`
`Petitioner cannot be allowed to circumvent the plain language and alter the scope
`
`of the claims to support its invalidity arguments, Petitioner’s construction should
`
`be rejected. See Aventis Pharms. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373
`
`(Fed. Cir. 2013) (dictating the requirement to “‘look to the words of the claims
`
`themselves . . . to define the scope of the patented invention.’”) (citation omitted);
`
`see also Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed.
`
`Cir. 2012) (“[W]e do not redefine words. Only the patentee can do that.”).
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`
`Petitioner’s proposed Grounds rely on four references: Chandnani et al.,
`
`U.S. Patent No. 7,636,945 (Ex. 1003; “Chandnani”); Kolawa et al. U.S. Patent No.
`
`5,860,011 (Ex. 1004, “Kolawa”); Walls et al. U.S. Patent No. 7,284,274 (Ex. 1005,
`
`“Walls”); and Huang et al. U.S. Patent No. 6,968,539.
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Ground 1 proposes that Chandnani in view of Kolawa renders obvious
`
`claims 1, 3–5, 9, 12–16, 18, and 19 of the ‘408 Patent.
`
`Ground 2 proposes that Chandnani in view of Kolawa and Huang renders
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`obvious claims 16, 7, 20 and 21 of the ‘408 Patent.
`
`Ground 3 proposes that Chandnani in view of Kolawa and Walls renders
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`obvious claims 1, 3–5, 9, 12–16, 18, and 19 of the ‘408 Patent.
`
`Ground 4 proposes that Chandnani in view of Kolawa, Walls and Huang
`
`renders obvious claims 16, 7, 20 and 21 of the ‘408 Patent.
`
`As a threshold matter, the Board should not institute trial as the Petition is
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`plainly defective on its face. Specifically, the Petition does not identify how the
`
`cited references disclose or render obvious each of the claim elements, contrary to
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`37 C.F.R. §§ 42.20(c), 42.22(a)(2), and 42.104(b)(4). For this reason alone, the
`
`Petition should be dismissed.
`
`Furthermore, trial should not be instituted because Petitioner has failed to
`
`show a reasonable likelihood of success with respect to at least the following
`
`limitations: “receiving…incoming stream of computer code,” “instantiating a
`
`scanner for the specific programming language…,” “dynamically building…while
`
`said receiver receives the incoming stream, a parse tree whose nodes represent
`
`tokens and patterns in accordance with the parser rules,” and “dynamically
`
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`

`
`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`detecting, … while said dynamically building builds the parse tree, combinations
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`of nodes in the parse tree which are indicators of potential exploits….”
`
`A. The Board Should Deny the Petition Under 35 U.S.C. § 325(d)
`As a threshold matter, the Board should deny Grounds 1–4 under 35 U.S.C.
`
`§ 325(d) because the Petition recycles substantially the same prior art as well as
`
`substantially the same arguments that were already presented to the Patent Office
`
`in Case No. IPR2015-02001, filed by Petitioner on September 30, 2015. See
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`35 U.S.C. § 325(d) (“In determining whether to institute or order a
`
`proceeding…the Director may take into account whether, and reject the petition or
`
`request because, the same or substantially the same prior art or arguments
`
`previously were presented to the Office.”).
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`In particular, the instant Petition is nearly identical to the petition filed in
`
`terms of the prior art cited and the substantive arguments lodged against the
`
`claims. Indeed, as the tables below demonstrate, the art cited against the claims in
`
`Grounds 1 and 3 of in the instant Petition is identical to the art cited in Grounds 1
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`and 2 of the petition filed in IPR2015-02001.
`
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`

`
`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Petition at 4.
`
`
`
`
`
`Ex. 2003 at 13. Although the petition filed in Case No. IPR2015-02001 challenged
`
`additional independent claims,5 Petitioner simply applied its analysis of
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`independent claims 1 and 9 to claims 22, 23, 29, and 35 nearly wholesale. See Ex.
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`2003 at 52–65. Thus, the arguments advanced in this case with respect to
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`independent claims 1 and 9 are indistinguishable from those advanced in that case
`
`with respect to independent claims 1, 9, 22, 23, 29, and 35.
`
`
`5 As previously mentioned, claims 1 and 9 are also challenged in this Petition
`
`despite being omitted from the chart on page 4 of the Petition.
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`

`
`Patent Owner’s Preliminary Response
`IPR2016-00157 (U.S. Patent No. 8,225,408)
`
`Despite the two petitions being nearly identical in terms of the art cited and
`
`arguments made, Petitioner makes no attempt to distinguish them whatsoever. In
`
`fact, the Petition contains only the barest notice that another petition challenging
`
`the claims of the ‘408 Patent is even pending:
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`Finjan, Inc. (“Patent Owner” or “Finjan”) has asserted the ’408 patent
`in Finjan, Inc. v. FireEye, Inc., 4:13-cv-03133 (N.D. Cal. July 8,
`2013); Finjan, Inc. v. Websense, Inc., 5: