`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`
`v.
`
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`
`Case IPR2016-00159
`U.S. Patent No. 8,677,494
`
`__________________________________________________________
`
`SUPPLEMENTAL DECLARATION OF MICHAEL GOODRICH, Ph.D.,
`IN SUPPORT OF PATENT OWNER’S RESPONSE TO PETITION
`
`
`
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 1
`
`
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`I, Michael Goodrich, Ph.D., declare and state as follows:
`
`I.
`
`QUALIFICATIONS
`
`1.
`
`I make this Declaration based upon my own personal knowledge,
`
`information, and belief, and I would and could competently testify to the matters
`
`set forth in this Declaration if called upon to do so.
`
`2.
`
`I received a Bachelor of Arts (“BA”) degree in Mathematics and
`
`Computer Science from Calvin College in 1983 and a Ph.D. in Computer Sciences
`
`from Purdue University in 1987.
`
`3.
`
`I am a Chancellor’s Professor in the Department of Computer Science
`
`at the University of California, Irvine (“UCI”), where I have been a faculty
`
`member since 2001. The Chancellor’s Professor title at UCI is designed for
`
`persons who have earned the title of Professor and who have demonstrated unusual
`
`academic merit and whose continued promise for scholarly achievement is
`
`unusually high. In addition, I am technical director for the Center for Algorithms
`
`and Theory of Computation in the Donald Bren School of Information and
`
`Computer Sciences at UCI. I was a professor in the Department of Computer
`
`Science at Johns Hopkins University from 1987-2001.
`
`4.
`
`I have authored and coauthored over 300 publications, including
`
`several widely adopted books, such as Introduction to Computer Security and
`
`Algorithm Design and Applications. My research includes contributions to data
`
`
`
`1
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 2
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`structures and algorithms, information security and privacy, networking, graph
`
`algorithms, computational geometry, distributed and parallel algorithms, and cloud
`
`security. For example, I have published research articles about tracing network
`
`attacks, authenticating users and data to prevent intrusions and viruses, and
`
`certifying email messages to stop malware attachments. My research is currently
`
`supported by a grant from the Defense Advanced Research Projects Agency
`
`(DARPA) to study new ways of discovering malware and a grant from the
`
`National Science Foundation (NSF) to study methods for secure and private data
`
`storage and retrieval in networks.
`
`5.
`
`In addition, I have consulting experience in matters involving
`
`algorithms, cryptography, machine learning, digital rights management, computer
`
`security, networking, software, and storage technologies.
`
`6.
`
`I am an ACM Distinguished Scientist, a Fellow of the American
`
`Association for the Advancement of Science (AAAS), a Fulbright Scholar, a
`
`Fellow of the institute of Electrical and Electronics Engineers (IEEE), and a Fellow
`
`of the Association for Computing Machinery (ACM). I am also a recipient of the
`
`IEEE Computer Society Technical Achievement Award and the Pond Award for
`
`Excellence in Undergraduate Teaching.
`
`7.
`
`Attached to this Declaration as Appendix A is a true and correct copy
`
`of my curriculum vitae (CV).
`
`
`
`2
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 3
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`8.
`
`In developing my opinions below, I have considered the materials
`
`cited herein, including the subject Petition and all the exhibits cited therein and
`
`identified on Petitioners’ Exhibit List. In addition, I have reviewed the Patent
`
`Owner Response and the documents cited by Dr. Nenad Medvidovic in his
`
`declaration to the Patent Owner Response (“Medvidovic Declaration”).
`
`II. OBVIOUSNESS
`
`9.
`
`Counsel has informed me, and I understand, that an issued patent
`
`claim is invalid as obvious if it can be shown that the differences between the
`
`patented subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious, at the time the invention was made, to a person having
`
`ordinary skill in the art. Relevant considerations include the level of ordinary skill
`
`in the art; the scope and content of the prior art; differences between the prior art
`
`and the claims at issue; and the so-called objective secondary factors of
`
`nonobviousness.
`
`10. Counsel has informed me, and I understand, that in order to evaluate
`
`the obviousness of any claim of the ‘494 Patent over a given prior art combination,
`
`I should analyze whether the prior art references, included collectively in the
`
`combination, disclose each and every element of the allegedly invalid claim as
`
`those references are read by the person of ordinary skill in the art at the time of the
`
`invention. Then, I am to determine whether that combination makes the claims of
`
`
`
`3
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 4
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`the ‘494 Patent obvious to the person of ordinary skill in the art by a
`
`preponderance of the evidence, at the time of the invention. I understand that such
`
`preponderance of the evidence is satisfied if the proposition is more likely to be
`
`true than not true.
`
`11. Counsel has informed me, and I understand, that the obviousness
`
`inquiry requires that the prior art be considered in its entirety. I am further
`
`informed and I understand that an invention cannot be obvious to try where “the
`
`breadth of the [] choices and the numerous combinations indicate that the []
`
`disclosures would not have rendered the claimed invention obvious to try.”
`
`12. Counsel has informed me, and I understand, that even where all of the
`
`claim limitations are expressly disclosed in the prior art references, there must be
`
`some showing that a person of ordinary skill in the art would have been motivated
`
`to combine such prior art references and that there would have been a reasonable
`
`expectation of successfully achieving the claimed invention from such
`
`combination.
`
`13. Counsel has informed me, and I understand, in considering the
`
`obviousness of a claimed invention, one should not view the invention and the
`
`prior art with the benefit of hindsight. It is for that reason, I am informed and I
`
`understand, that obviousness is assessed by the person of ordinary skill in the art at
`
`the time the invention was made. In this regard, I am informed and I understand
`
`
`
`4
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 5
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`that the invention cannot be used as a guide to selecting and understanding the
`
`prior art. I understand that the appropriate standard is to determine whether a
`
`person of skill in the art would be motivated to combine references, not whether
`
`they could.
`
`14. Counsel has informed me, and I understand, that obviousness cannot
`
`be predicated on what was unknown at the time of the invention, even if the
`
`inherency of a certain feature is later established. Counsel has also informed me,
`
`and I understand, that unknown properties of the prior art may not be relied upon
`
`to provide the rationale for modifying or combining the prior art to reach the
`
`claimed subject matter.
`
`15. Counsel has informed me, and I understand, that a reference may be
`
`said to teach away when a person of ordinary skill, upon reading the reference,
`
`would be discouraged from following the path set out in the reference, or would be
`
`led in a direction divergent from the path that was taken by the applicant.
`
`III. RELEVANT TIMEFRAME FOR PERSON OF ORDINARY SKILL
`IN THE ART
`
`16.
`
`I have been informed by counsel and I understand that the analysis of
`
`whether a patent is anticipated or obvious is performed from the perspective of a
`
`POSITA at the time of the patented inventions. The relevant timeframe for the
`
`claims at issue of the ‘494 Patent is November 1996. I understand that Petitioner
`
`believes that the ‘494 Patent is not entitled to a priority date prior to November
`
`
`
`5
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 6
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`1997. Whether the relevant time frame for POSITA is November 1996 or
`
`November 1997, my opinion is the same.
`
`IV. CLAIM CONSTRUCTION
`
`17.
`
`In my opinion, a person of ordinary skill in the art would understand
`
`the term “database” to mean “a collection of interrelated data organized according
`
`to a database schema to serve one or more applications.” I understand that
`
`Petitioner and Patent Owner agree about the construction of the term database in
`
`this proceeding, and the Board adopted this construction in its Decision
`
`instituting trial.
`
`V.
`
`SECONDARY CONSIDERATIONS
`
`18. Counsel has informed me, and I understand, that an issued patent
`
`claim is invalid as obvious if it can be shown that the differences between the
`
`patented subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious, at the time the invention was made, to a person having
`
`ordinary skill in the art. Relevant considerations include the level of ordinary skill
`
`in the art; the scope and content of the prior art; differences between the prior art
`
`and the claims at issue; and the so-called objective secondary factors of
`
`nonobviousness.
`
`19. Finjan’s counsel informed me and I understand that evidence of
`
`commercial success when there is a nexus between the claimed invention and
`
`
`
`6
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 7
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`commercial success is a factor that supports non-obviousness of the patented
`
`invention. Had the invention been obvious to persons skilled in the art, it would
`
`have been successfully brought to market sooner given the market demand. I have
`
`been informed and I understand that a prima facie case of nexus is made when the
`
`patentee shows both that the product is a commercial success and that the
`
`commercially successful product is the invention disclosed and claimed in the
`
`patent. I understand that Finjan has entered into multiple licensing agreements and
`
`that such agreements cover multiple patents, including the ‘494 Patent. I
`
`understand that under those agreements the licensees have paid Finjan millions
`
`of dollars.
`
`VI. EXHIBITS
`
`A. Declaration of Dr. Nenad Medvidovic (Exhibit 2011)
`
`20.
`
`I have reviewed the declaration of Dr. Nenad Medvidovic, attached to
`
`the Patent Owner Response as Exhibit 2011, and in my opinion, Dr. Medvidovic
`
`provides credible and reliable support for his opinions. Dr. Medvidovic provides
`
`over 90 pages of analysis to support his opinion. Further, in my opinion, Dr.
`
`Medvidovic is qualified to provide technical opinions of a person having skill in
`
`the art based on Dr. Medvidovic’s Curriculum Vitae (included in Exhibit 2011).
`
`
`
`7
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 8
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`21.
`
`In general, in my opinion, Dr. Medvidovic based the opinions stated
`
`in his declaration on (1) sources that experts would rely on in forming opinions and
`
`(2) the appropriate meaning of technical terms in the computer and software arts.
`
`22. For example, in order to confirm and prove that a database and a log
`
`file are distinct concepts, I would support my opinion with the same citations to the
`
`intrinsic record of the ‘494 Patent as Dr. Medvidovic supplied in his declaration.
`
`See, e.g., U.S. Patent No. 6,092,194 (Ex. 1013) at FIG. 2 and FIG.3 (The ‘494
`
`Patent incorporates by reference the ‘194 Patent). Further, I would cite to the
`
`Microsoft Press Computer Dictionary Third Edition (Ex. 2017) as Dr. Medvidovic
`
`has in his declaration. I would also consider sources such as Wikipedia and
`
`techterms.com in order to confirm my opinion that a log and a database are distinct
`
`concepts.
`
`B.
`
`Finjan’s Infringement Contentions – Finjan, Inc. v. Websense, Inc.
`(Exhibit 2025) and Dr. Nenad Medvidovic’s Claim Charts
`Regarding the Products of Finjan’s Licensees and the ‘494 Patent
`(Exhibit 2027).
`
`23. Dr. Medvidovic based the opinions stated in his declaration on
`
`sources that experts would rely on in forming opinions as they relate to secondary
`
`considerations. For example, I have reviewed (1) Patent Owner’s Infringement
`
`Contentions from Finjan, Inc. v. Websense, Inc. (Ex. 2025) and (2) the claim charts
`
`Dr. Medvidovic created comparing Avast, F-Secure, Proofpoint, and Armorize’s
`
`products with the ‘494 Patent, attached to the Patent Owner Response as Exhibit
`
`
`
`8
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 9
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`2027, which demonstrate the nexus between their products and the invention
`
`described in the ‘494 Patent. It is my opinion that such claim charts establish that
`
`the ‘494 Patent is not obvious because they are adequate secondary considerations
`
`of commercial success.
`
`24. Specifically, based on my review of Exhibit 2025, I agree with Dr.
`
`Medvidovic that Websense was infringing the ‘494 Patent, for example, through its
`
`products and technologies identified in the infringement contentions. These include
`
`Websense Triton products, Web Security Gateway products, Data Security
`
`products, CyberSecurity Intelligence, and ThreatSeeker Intelligence Cloud Service
`
`by utilizing the invention described in the ‘494 Patent.
`
`25. Based on my review of Exhibit 2027, I agree with Dr. Medvidovic
`
`that Avast’s Endpoint Protection and other antivirus products that use Avast!
`
`Research Labs, DynaGen, Malware Similarity Search, and Evo-Gen technologies
`
`utilize the invention described in the ‘494 Patent.
`
`26. Further, I agree with Dr. Medvidovic that Exhibit 2027 also shows
`
`that F-Secure’s products and services that use Real-Time Protection Network and
`
`DeepGuard technologies utilize the invention described in the ‘494 Patent.
`
`27.
`
`I also agree with Dr. Medvidovic that Exhibit 2027 shows that
`
`Proofpoint and Armorize’s products, which include Enterprise Protection and
`
`Targeted Attack Protection, use the invention described in the ‘494 Patent.
`
`
`
`9
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 10
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`28.
`
`In my opinion, such claim charts demonstrate that these companies
`
`have enjoyed commercial success as a result of their licenses from Finjan for the
`
`‘494 Patent because they show the nexus between competitor’s products and the
`
`invention described in the ‘494 Patent. As such, Dr. Medvidovic’s discussion of
`
`Exhibit 2027 is helpful when considering secondary considerations of non-
`
`obviousness.
`
`29. Therefore, the commercial success of these companies’ products,
`
`which are covered under the ‘494 Patent, and whose sale is possible through
`
`Finjan’s licensing of its technology described in the ‘494 Patent, indicates that the
`
`‘494 Patent is not obvious.
`
`C. Definition of Logfile from Wikipedia, available at
`http://en.wikipedia.org/wiki/Logfile (Exhibit 2020)
`
`30.
`
`I have reviewed the Wikipedia webpage for “logfile,” attached to the
`
`Patent Owner Response as Exhibit 2020, and it is my opinion that Exhibit 2020 is
`
`useful in defining the term “logfile.” It is my opinion that the term “logfile,” as
`
`defined in Wikipedia, is consistent with the definition a person having skill in the
`
`art would have defined it at the relevant time frame. The applicable relevant time
`
`frame is November 1996 or November 1997. Accordingly, I agree with Dr.
`
`Medvidovic that the appropriate definition for a log file is “a record of transactions
`
`or activities that take place on a computer system.” (Ex. 2011 at ¶ 107.) This
`
` 10
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 11
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`demonstrates that a log file is distinct from a database because a log file is not
`
`organized according to a database schema.
`
`D. Definition of Log File, available at
`http://techterms.com/definition/logfile (Exhibit 2022)
`
`31.
`
`I have reviewed the TechTerms.com webpage for “log file,” attached
`
`to the Patent Owner Response as Exhibit 2022, and it is my opinion that Exhibit
`
`2022 is useful in defining the term “log file.” It is my opinion that the term “log
`
`file,” as defined on TechTerms.com, is consistent with the definition a person
`
`having skill in the art would have defined it at the relevant time frame. The
`
`applicable relevant time frame is November 1996 or November 1997.
`
`Accordingly, I agree with Dr. Medvidovic that the appropriate definition for a log
`
`file is “a record of transactions or activities that take place on a computer system.”
`
`(Ex. 2011 at ¶ 107.) This demonstrates that a log file is distinct from a database
`
`because a log file is not organized according to a database schema.
`
`E. Declaration of Dr. Nenad Medvidovic – Finjan, Inc. v. Sophos,
`Inc. (Ex. 2024)
`
`32.
`
`I have reviewed Dr. Medvidovic’s declaration that was submitted in
`
`the Finjan, Inc. v. Sophos, Inc. case. Ex. 2024. It is my opinion that Dr.
`
`Medvidovic’s declaration in support of the opening claim construction brief is
`
`useful in construing the term “database.” Accordingly, I agree with Dr.
`
` 11
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 12
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`Medvidovic that a POSITA would understand that a “database” does not include a
`
`log file. (Ex. 2011 at ¶ 125.)
`
`DECLARATION
`
`I declare under penalty and perjury under the laws of the United States of
`
`America that this declaration is true, complete, and accurate to the best of my
`
`knowledge. I further acknowledge that willful false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001.
`
`Executed at Irvine, California, on September 2, 2016.
`
`
`
`
` _____________________________
`
`
`
`
` Michael Goodrich, Ph.D.
`
`
`
`
`
`
`
`
`
`
`
` 12
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 13
`
`
`
`Supplemental Declaration of Michael Goodrich, Ph.D.
`IPR2016-00159 (U.S. Patent No. 8,677,494)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Supplemental Declaration of Michael Goodrich,
`
`Ph.D., in Support of Patent Owner’s Response to Petition was served on September
`
`2, 2016, by delivering via electronic mail upon the following counsel of record for
`
`Max Colice
`COOLEY LLP
`500 Boylston Street, 14th Floor
`Boston, Massachusetts 02116-3736
`mcolice@cooley.com
`
`Jennifer Volk-Fortier
`COOLEY LLP
`One Freedom Square
`Reston Town Center
`11951 Freedom Drive
`Reston, Virginia 2019
`jvolkfortier@cooley.com
`
` /James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
`
`Petitioner:
`
`Orion Armon
`Brian Eutermoser
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, Colorado 80021
`oarmon@cooley.com
`beutermoser@cooley.com
`zpatdcdocketing@cooley.com
`zPaloAltoNetworksIPR@cooley.com
`
`
`
`
`
`
` 13
`
`Patent Owner Finjan, Inc. - Ex. 2047, p. 14
`
`
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