trials@uspto.gov
`571-272-7822
`
`
`
`RECORD OF ORAL RECORD
`
`IPR2016-00159, Paper No. 49
`March 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`------
`
`PALO ALTO NETWORKS, INC. And
`
`BLUE COAT SYSTEMS, LLC
`
`Petitioner,
`
`V.
`
`FINJAN, INC.,
`
`Patent Owner.
`
`------
`
`Case IPR2016-00159
`
`Patent 8,677,494 B2
`
`------
`
`
`
`Before: CHARLES J. BOUDREAU, ZHENYU YANG, and
`SHEILA F. McSHANE (by Videoconference), Administrative Patent
`Judges.
`
`
`The above-entitled matter was heard on Thursday,
`February 16, 2017 at the U.S. Patent and Trademark Office, 26 South Fourth
`Street, Courtroom 322, San Jose, California at 10:01 a.m.
`
`
`571-272-7822
`
`
`
`RECORD OF ORAL RECORD
`
`IPR2016-00159, Paper No. 49
`March 9, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`------
`
`PALO ALTO NETWORKS, INC. And
`
`BLUE COAT SYSTEMS, LLC
`
`Petitioner,
`
`V.
`
`FINJAN, INC.,
`
`Patent Owner.
`
`------
`
`Case IPR2016-00159
`
`Patent 8,677,494 B2
`
`------
`
`
`
`Before: CHARLES J. BOUDREAU, ZHENYU YANG, and
`SHEILA F. McSHANE (by Videoconference), Administrative Patent
`Judges.
`
`
`The above-entitled matter was heard on Thursday,
`February 16, 2017 at the U.S. Patent and Trademark Office, 26 South Fourth
`Street, Courtroom 322, San Jose, California at 10:01 a.m.
`
`
`
`APPEARANCES:
`
`FOR THE PETITIONER:
`
` Cooley, LLP
` By: ORION ARMON
` oarmon@cooley.com
` 380 Interlocken Crescent
` Suite 900
` Broomfield, Colorado 80021-8023
` (720) 566-4119
`FOR THE PATENT-OWNER:
`
` Kramer Levin
` By: JAMES HANNAH
` jhannah@kramerlevin.com
` 990 Marsh Road
` Menlo Park, California 94025-1949
` (650) 752-1712
`
`
`
`2
`
`
`
`P R O C E E D I N G S
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`(10:01 a.m.)
`JUDGE BOUDREAU: Good morning. This is the
`oral hearing in case IPR2016- 00159, captioned Palo Alto
`Networks, Incorporated versus Finjan, Incorporated, to which
`IPR2016-01174, captioned Blue Coat Systems, Incorporated
`versus Finjan, Incorporated has been joined.
`I'm Judge Boudreau. We're joined on the video
`screen from Virginia by Judges Yang and McShane. We seem
`to have some additional interference here from Virginia.
`JUDGE YANG: No, Judge Boudreau. It's not from
`us. We're very quiet here.
`JUDGE BOUDREAU: Okay. It seems to have
`
`stopped.
`
`All right. Anyway, because of the limitations on
`our audio technology Judges Yang and McShane will only be
`able to hear you if you're standing at the podium speaking into
`the microphone. So we ask that anytime you're speaking you
`remain at the podium.
`Let's have counsel come up and enter an
`appearance and state your names for the record. We'll start
`with counsel for the Petitioner.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`3
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`MR. ARMON: Good morning. Orion Armon, lead
`counsel for Petitioner Palo Alto Networks. And I have my
`colleague Mikaela Stone with me, and Michael Skrzypek here
`as our trial tech sitting next to me at counsel table.
`JUDGE BOUDREAU: And for Patent Owner?
`MR. HANNAH: Good morning, Your Honor. Nice
`to see you in person instead of over a video screen.
`Good morning, Your Honors. James Hannah on
`behalf of Finjan and with me is Hien Lien.
`JUDGE BOUDREAU: Thank you.
`MR. HANNAH: Thanks.
`JUDGE BOUDREAU: W e set out the procedure for
`today's hearing in the Hearing Order, which was Paper 46, but
`I'll just take a few minutes to remind everyone. Petitioner and
`Patent Owner will each have 30 minutes to present arguments.
`Petitioner will go first and present its case regarding the
`challenged claims and may reserve time for rebuttal. Patent
`Owner will then respond to Petitioner's presentation.
`Petitioner will then have the opportunity to use any reserved
`rebuttal time to respond to Patent Owner's arguments.
`The parties may also discuss their respective
`motions to exclude evidence, and in Patent Owner's case, its
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`4
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`Motion for Observations on Cross Examination, during their
`initially allotted time.
`And if you do bring up any of those motions during
`your initial presentation, then the other party will have the
`opportunity to respond during its response or rebuttal time.
`Just a few other points. Keep in mind that Judges
`Yang and McShane won't be able to see the screen over there.
`So anytime that you're referring to any demonstratives or
`papers in the case, please make sure that you identify them by
`the exhibit number or the page number of the demonstratives
`just so that the record is clear for the transcript as well as for
`Judges Yang and McShane's benefit.
`Lastly, just as a common courtesy, if you believe
`that the other party is making a new argument that wasn't
`presented in the briefs or if you have any our objections, we
`just ask that you reserve them until the end or until your
`presentation, rather than interrupting.
`With that, unless there are any questions from any
`of the parties, we may proceed.
`And Mr. Armon, just before you begin, would you
`like to reserve any of your time for rebutt al?
`MR. ARMON: I'd like to reserve ten minutes for
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`5
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`rebuttal, please.
`JUDGE BOUDREAU: Okay.
`MR. ARMON: Good morning. And may it please
`
`the Board.
`
`Turning to slide 2 of our demonstratives, I intend
`to briefly speak to the priority date of the '494 patent, then
`turn briefly to the issue of claim construction and specifically
`the plain and ordinary meaning of the "suspicious computer
`operation" clause in the petition claims before reaching the
`issues of obviousness including specifically questions
`concerning the key claim construction issue in dispute, as well
`as hopefully reaching the issue of database.
`Turning first to the priority date of the petition
`claims, Palo Alto Networks' position is that the proper priority
`date for the petition claims is March 30th, 2000.
`In the institution decision the Board preliminarily
`found that the petition claims are entitled to an earlier priority
`date, and it's our position that the Board should reach this
`decision and find that the March 30th, 2000 date is the correct
`date.
`
`The background here, of course, is that Patent
`Owner filed a certificate of correction in the '822 priority
`
`
`
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`patent and the question is the effect of that certificate of
`correction in this case.
`JUDGE BOUDREAU: But that petition was
`granted on July 24th -- 25th, 2014; is that right?
`MR. ARMON: Yes. Turning to slide 6 of our
`demonstratives, there's a timeline that shows the history. A
`petition to correct the priority claim was originally filed in
`2014. It's the first bullet. That's Exhibit 1017 in our
`materials. The petition was preliminarily granted on July 25th,
`2014, and on September 8th, 2014, the examiner concluded in a
`final Office action that the claims were entitled to a May 2000
`date. And we know subsequently the Board reversed the
`determination of the examiner, but the last three bullets on
`slide 6 are the material bullets for this issue.
`Palo Alto Networks was served with a complaint in
`District Court in November of 2014 and the Petition in this
`case, in this proceeding, was filed on November 6th, 2015.
`Those are key dates because they are both before the
`reexamination certificate's issuance on February 16th, 2016.
`Turning very briefly to the decision to institute, in
`the decision the Board preliminarily found two things:
`Preliminarily found that the date that the examiner entered the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`7
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`certificate of correction was an effective date for correcting
`the priority chain, or that it was effective retroactively once
`the reexamination certificate issued.
`Our position and, again as stated in the Petition , is
`that the statute governing certificates of correction as well as
`the regulations on this issue do not allow this type of
`correction to have retroactive effect, and because the IPR in
`this case was filed prior to the issuance of the reexamination
`certificate, that certificate has no effect here.
`Now, the operative statutory language is in section
`
`255.
`
`JUDGE BOUDREAU: Why wasn't the petition
`effective as of the date it was granted?
`MR. ARMON: That relates to the language of the
`statute as it's been interpreted by the Federal Circuit as well as
`the CFR. On the face of section 255 it states that a certificate
`of correction is only effective for causes thereafter arising, and
`that language has been interpreted by the Federal Circuit in the
`H-W Tech. case. For the panel I'm on slide 8.
`And the key portion of the Federal Circuit's
`holding in that case was that certificate of correction is only
`effective for causes of action arising after a certificate was
`
`
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`issued.
`
`JUDGE BOUDREAU: Did that case involve a
`certificate of correction with respect to a priority date or was
`that the correction of a claim?
`MR. ARMON: It did, Your Honor. Sorry. It did,
`but it was related to a District Court proceeding, not an IPR
`proceeding. But there was a priority date of correction there.
`JUDGE BOUDREAU: In any event, when wouldn't
`Swimmer and Martin both be prior art regardless of which
`priority date we ultimately determine is correct?
`MR. ARMON: Finjan takes the position -- and
`that's one of the reasons I think this is an important issue for
`the Board to reach in this case. Finjan's position with respect
`to Martin is that the stamp from a library that received the
`Martin publication in 1998 is the actual publication date and
`Finjan takes the position that the preliminary 1997 priority
`date that the Board afforded the '494 patent claims subject to
`this proceeding is therefore a date earlier than the Martin
`publication date.
`So we have an actual dispute on our hands not only
`concerning whether Martin qualifies as prior art for the '494
`patent. We also have the uncertainty regarding issue
`
`
`
`9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`preclusion. Courts have not yet decided the effect, if any, of
`issues like this when they are adjudicated in one forum and
`there is underlying litigation going in District Court.
`So it's important to Petitioner to have this issue
`decided properly for that reason.
`The third issue is that the sole reason why the
`Board decided not to institute our lead grounds, the Touboul
`grounds, was because of this priority date issue. So having a
`clear record on that is very important to us.
`I'll just add on slide 9 that the CFR also aligns
`with both the Federal Circuit's interpretation of the statute and
`the statutory language itself and it states that the proposed
`amendments will not be effective until the reexamination
`certificate is issued and published.
`So very briefly jumping back, what section 255 and
`the CFR as well as the Federal Circuit's interpretations hold is
`because the reexamination certificate issued after this Petition
`was filed it should have no retroactive effect in this case. And
`although perhaps for future cases Finjan may be entitled to that
`priority date, our position is that in this particular case it
`cannot be retroactive and therefore the proper priority date
`should be the 2000 date that's argued in the Petition .
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`10
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`JUDGE YANG: Counsel, I have a question.
`Earlier you mentioned the H-W Technology case from the
`Federal Circuit. I missed that. Did you say it relates to a
`priority issue or it doesn't?
`MR. ARMON: Your Honor, it does, but it was a
`District Court-related issue. To my knowledge, there's been no
`case deciding this issue specifically with respect to the fact
`scenario we have here where the prior proceeding is an IPR
`proceeding.
`JUDGE YANG: That is fine. Do you by any
`chance recall what H -W -- what the case is about? I have to
`admit I'm not very familiar with the case.
`MR. ARMON: Your Honor, it's been some time
`since I read the full case.
`JUDGE YANG: That is fine.
`MR. ARMON: But as I recall, the facts are
`analogous to the situation we have here in the sense that you
`had overlap between a certificate of correction that had been
`filed earlier, in other words, a petition for a certificate of
`correction had been filed earlier, I believe, but then a District
`Court proceeding began and the certificate of correction wasn't
`actually issued until after the proceeding had commenced.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`11
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`And so you had the same type of overlap that you
`have in this case. And the question became whether or not it
`was the filing date for the certificate of correction or its actual
`final issuance that mattered. And the key holding that I think
`just reiterates the plain text of the statutory language is that
`these certificates of correction never have retroactive effect.
`And so what we have here is a circumstance where the -- the
`issuance of the reexam certificate coming in 2016 -- let me hop
`back to the timeline -- is after both the initiation of the District
`Court litigation against Palo Alto Networks as well as after the
`filing of the Petition.
`And there is an important policy consideration
`here. Petitioner filed its Petition right at the statutory
`one-year deadline. We couldn't have waited any longer for that
`proceeding to conclude or we would have passed our bar date.
`So it's a matter of policy as well in addition to the statutory
`language. I think as a matter of fairness we had to petition on
`the patent as it then stood uncorrected.
`So we submit that this is a material issue both with
`respect to the priority date of Martin, also because of the issue
`preclusion effect, and finally because the Board's
`non-institution of the Touboul grounds was solely because of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`12
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`this issue.
`
`I'd like to now turn briefly to claim construction, if
`I may. There's one issue in this case that remains disputed.
`The patent has expired. The parties agree on that and so the
`claim construction standard in this case has converted to the
`Phillips standard.
`JUDGE BOUDREAU: Will that affect any of the
`constructions instanced -- any of the constructions that we
`determined in the decision to institute?
`MR. ARMON: Your Honor, there's two
`constructions that are agreed. I believe that the parties still
`have agreement on those. And so I don't think that the change
`would affect that. There's no briefing on that issue and we're
`certainly not taking the position that either of the agreed
`constructions would change. With respect to -- and that
`specifically relates to "downloadable" and "database." Those
`constructions are not disputed.
`There is a dispute about the plain and ordinary
`meaning of -- again slide 13 summarizes the -- the positions of
`the parties on the two agreed terms.
`There is a dispute between the parties on the
`limitation "deriving security profile data for the
`
`
`
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`Downloadable" -- and this is the key portion -- "including a list
`of suspicious computer operations that may be attempted by the
`Downloadable."
`The Petitioner proposed a construction for this
`term. The Board at institution went with plain and ordinary
`meaning. We now have a dispute about what the plain and
`ordinary meaning of what this term is. And to summarize
`briefly, Patent Owner focuses on the notion that operations
`need to be deemed suspicious.
`Our position is that deeming is an inappropriate
`characterization of this claim limitation because it suggests
`affirmative action would be required. And if you look at the
`'194 patent that contains the key language that provides the
`support for this limitation, you see that it's actually very
`broadly disclosed.
`So I'll turn to slide -- first of all very briefly to
`slide 16. It's worth reminding the panel that we have a claim
`differentiation issue here. Claims 7 and 8 indicate that the
`Downloadable Security Profile data can include a URL or a
`digital certificate. I think it goes without saying that those
`things wouldn't be deemed suspicious. So DSP data certainly
`can include other information.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`14
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`But turning to the specification of the priority
`patent for this disclosure, which is the '194 patent on slide 17.
`There's broad disclosure in multiple places in the '194 patent
`and I'm speaking to the '194 patent because the '494 patent
`does not directly address Downloadable Security Profile data.
`That disclosure is more about mobile protection code.
`But here in the '194 specification there's several
`disclosures that describe DSP data. On slide 17 we have one
`and it says "DSP data 310 includes a list of all." I think even
`under a plain and ordinary meaning construction as in Phillips
`is important. All potentially hostile or suspicious computer
`operations. So the word "all" and "potentially" are important
`to us here. That may be attempted by a specific Downloadable.
`JUDGE BOUDREAU: Now, the claims of the '494
`patent use the term "suspicious ," whereas the '194 patent uses
`"potentially hostile." Is there any difference between
`"suspicious" and "potentially hostile"?
`MR. ARMON: Your Honor, we think that the
`description of "suspicious computer operation" as "potentially
`hostile" informs the meaning of the claim terms in the '494. So
`we have the language here. We also have other language in
`Exhibit 1013 which is the '194 patent.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`15
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`At column 4, for example, lines 32 to 35, it says:
`"A list of all potentially hostile or suspicious computer
`operations." At column 5, lines 50 to 54 there's a reference to
`"a list of all operations which could ever be deemed potentially
`hostile." The key point here from Petitioner's perspective is
`that the plain and ordinary meaning construction even under
`Phillips should not read in a limitation from the spec that
`requires some affirmative determination.
`The broad disclosure here focuses on "potentially
`hostile or suspicious operations" including the word "all."
`It means that you could certainly have a wide range
`of information or activities captured in the DSP data without
`an actual determination of suspiciousness.
`JUDGE BOUDREAU: Is it your position that all
`MS- DOS functions are suspicious operations?
`MR. ARMON: No, Your Honor, it's not. I would
`agree that if a disclosure focused on capturing literally
`everything, that wouldn't satisfy this limitation. But it's
`important. I'd like to turn to the disclosure in Swimmer and
`show you why Swimmer doesn't disclose capturing everything.
`Now Swimmer actually teaches away from
`capturing "all," and Swimmer teaches -- and this is Exhibit
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`16
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`1006. In Exhibit 1006 you look at page 7. There's actually a
`description in section 4.1 that describes a very first
`implementation of Swimmer. And what it says about the very
`first implementation was that it was an auditing system that he
`used a filter to catch everything. It says specifically the very
`first implementation of an auditing system was a filter which
`was placed before DOS services and registered all calls to DOS
`functions. Okay?
`Swimmer explains that that system was scrapped.
`In fact, the very next line on the bottom of page 7
`says, "This limitation was soon scrapped." So a filter catching
`everything was the proof of concept that they did not use and
`that's not the focus of Swimmer.
`Let me hop to slide 22 here. What you see instead
`with Swimmer is a design that is intended to capture
`potentially suspicious activity by using hooks into the op
`codes. And the effect of those hooks in the op codes is to
`catch potentially suspicious operations. Now, we've explained
`that a person of ordinary skill in the art would have understood
`the examples of the function calls that are being hooked
`including those that were known suspicious.
`It's also important to note, as the Board noted both
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`17
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`in its institution decision at 21, and as you'll see at Exhibit
`1006 at page 13, is that Swimmer, in our view, teaches not
`only designing the system using these hooks into the op codes
`to capture suspicious activity, but Finjan also -- I'm sorry, but
`Swimmer also discloses on page 13 that -- and I'll jump to that
`language right now. Over to slide 25.
`On slide 25 Swimmer also teaches tuning the audit
`system to derive only the data necessary for detecting viruses.
`You'll see that's the language here highlighted in yellow that
`the audit system can be tuned to provide only the necessary
`data in order to eliminate overhead.
`So we have a disclosure in Swimmer that first
`notes on page 7 that the original system did catch everything.
`That was scrapped. We then have the disclosure describing
`that -- on page 9 of Exhibit 1006 that Swimmer hooks into the
`op codes to catch the potentially suspicious functions; and then
`on page 13 of Exhibit 1006 an explanation, an express teaching
`of tuning the system to provide only the necessary data, which
`again would be the suspicious computer information.
`JUDGE BOUDREAU: How does that tuning relate
`to Figure 3 of Swimmer?
`MR. ARMON: So, Your Honor, in F igure 3 -- I'll
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`18
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`jump back here. Figure 3 is on slide 22, at least an excerpt of
`it. Figure 3 is a depiction in plain English text of the readout
`of the audit trail that's generated by the emulator in Swimmer.
`JUDGE BOUDREAU: That actually raises a
`question. Does F igure 3 depict a raw audit trail or does it
`depict an NADF file?
`MR. ARMON: Your Honor, our understanding is
`that it depicts an audit trail. Figure 3 on page 9 of Exhibit
`1006, we don't have the whole thing here, but it's expressly
`captioned an excerpt from an audit trial. You'll see in the text
`on page 9 that it explains that the audit record attributes of
`record as collected by the PC emulator have the following
`structure. And that's the structure that's shown in Figure 3.
`Now, Swimmer explains. So, in other words, this
`structure that you see is read out by the emulator as the audit
`trail. What Swimmer explains a few pages later on page 12 of
`Exhibit 1006, section 5.1, regarding universality, is that the
`audit trail values are included in what's called the normalized
`audit data format. So the normalized audit data format is
`actually created by ASAX as an additional publication step to
`assist with the ASAX analysis of the data.
`The actual audit trail values as shown on section
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`19
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`5.1 are included in the NADF file, but what's read out by the
`emulator is the structure shown in F igure 3. I should note, as
`Swimmer explains on page 10, I believe, that that is a
`somewhat simplified plain English version. There's some
`additional information that he said he left out for
`simplification purposes.
`JUDGE BOUDREAU: Well, on page 10 it also
`says an example of an audit trail as depicted in F igure 3. This
`is a human- readable representation of the binary NADF file.
`So that's why I think there's a little bit of confusion as to
`whether Figure 3 is the audit trail or if it's the NADF file.
`MR. ARMON: Your Honor, our understanding is
`that the -- because as explained in section 5.1, the actual audit
`data value is included in the NADF file. The entirety of the
`audit data is included in the NADF file, but you have the
`additional identifier lengths and for the integer information
`that's bulleted out in section 5.1 that's expressly characterized
`as being used to assist ASAX with its processing of the data.
`So we're getting into the issue of database that I'd
`like to speak to very quickly before I reserve the remainder of
`our time. Our claim construction for database --
`JUDGE BOUDREAU: Can a log file be interpreted
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`20
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`as a database?
`MR. ARMON: Yes, Your Honor. We think it can
`be, if it has the right characteristics. During cross- examination
`of Dr. Goodrich, one of Patent Owner's experts, he agreed that
`labels are less important than structure, and the focus should
`be on the structure that's disclosed and not on whether it's
`labeled as a log file, labeled as a flat file , or something else.
`Our position is that the description in Swimmer is
`of a flat-file database. And let me jump briefly to -- let's see
`if I perhaps went too far here. I'd like to briefly touch on the
`construction that explained why Swimmer's disclosure satisfies
`the construction.
`The construction that's agreed by the parties is a
`collection of interrelated data and -- that's one, interrelated
`data. Organized according to a database schema. That's part 2.
`To serve one or more applications is part 3.
`I don't think there's any dispute between the parties
`regarding "interrelated data."
`JUDGE BOUDREAU: What is the interrelationship
`between the data that's listed in Figure 3 here of Swimmer?
`MR. ARMON: Figure 3 I think is our best example
`of the data that's captured. It's related in the sense that these
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`21
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`are all function calls relating to the same code segments. And
`so you'll notice, Your Honor, that there is an interrelationship
`because the CS in the first field or column in Figure 3 has a
`shared number because you're going to be capturing
`information about the same Downloadable. You might be
`capturing multiple bits of information about activity that that
`Downloadable will generate. So there is an interrelation as
`shown by the fact that you have the same code segment
`number.
`
`The second requirement is a database schema. The
`schema that is applied to the audit trail information is
`described on page 9 of Exhibit 1006, and our view is that the
`Denning model that's characterized there unquestionably is a
`schema. And we pointed to three bits of information to support
`that interpretation. One is Dr. Rubin, the Petitioner's expert,
`who supports that view.
`We also point to Exhibit 1086, which is a Chang
`reference. Chang is a prior art patent that characterizes at
`column 3, lines 15 to 20, that a flat-file database is made up of
`records composed of fields. And I think that's what we have
`here. We have records or rows shown in F igure 3 and fields or
`columns shown as well.
`
`
`
`22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`Finally, again, as I mentioned earlier,
`Dr. Goodrich in his deposition transcript, which
`you find in Exhibit 1098, page 63, lines 14 to 22, agrees that
`the focus should be on the structure, not on the name.
`The last piece that we need to show to satisfy the
`construction is serving one or more applications. And our
`slide 32 here speaks to that issue. Swimmer discloses again in
`1006 at 2 and several other places that the ASAX system uses
`the activity data, in other words, the audit system data that's
`collected by the PC emulator.
`So we have ASAX as the one or more applications
`using the data, and I think that the disclosure concerning the
`NADF or normalized audit data format on page 12 supports
`that view. The entire discussion in section 5.1 is about the fact
`that the data needs to be normalized so that ASAX can use it.
`Unless the panel has any questions, I'd like to
`reserve my remaining five minutes for rebuttal.
`JUDGE BOUDREAU: Yes, you can.
`MR. ARMON: Thank you.
`MR. HANNAH: Just give me a second to set up
`here. Thanks.
`First of all, I just wanted to say thank you very
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`23
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`much to the Board. Thank you for your time. Thank you for
`your consideration. I know all of you have a lot of cases and a
`lot of things to do, but this case is very important to Finjan as
`is all the other cases that we're involved with.
`So I do want to thank you for your time and I
`appreciate your consideration in viewing the record anew,
`looking at all the evidence and considering the references as a
`whole to make the determination in this case.
`Now, may it please the Court here, I've heard from
`some people that proving a patent is obvious is easier than
`proving a patent is anticipated. For anticipation you have to
`match each element to the claim to the prior art and for
`obviousness you have to consider the patent and the prior art as
`a whole.
`
`I think in this case proving obviousness is much
`more difficult because of the Swimmer reference and because
`you must consider Swimmer as a whole and what it teaches.
`All you have to do is look to the abstract of
`Swimmer to see exactly what it is. It's Exhibit 1006.
`Swimmer has two stages. The first stage is
`emulating a file, which results in this activity data. The
`second stage is applying rules to that activity data to determine
`
`
`
`24
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`if there's a virus present. Petitioner's entire case is based on
`stage 1, the emulator generating the activity data. But when
`you consider Swimmer as a whole Petitioner's argument
`completely falls apart because in Swimmer -- and it teaches in
`Swimmer you don't know if you have a virus. You don't know
`if anything is suspicious until you apply those rules to the
`activity data.
`And for that reason alone you don't have a list of
`suspicious operations. If I asked the court -- if the court
`reporter here asked me can you list all of the females in this
`room and I gave him a list of everyone in this room, the court
`reporter would tell me, "You gave me the wrong list.
`You did not give me a list of all the females."
`And that's exactly what Swimmer does and how
`Petitioner uses Swimmer. If you look at that figure, F igure 3
`-- which is everything. It's the list of suspicious operations.
`It's the database. It's the storage in the database. Everything
`is in Figure 3. And you look to the description of it right
`below -- I'm looking at page 9.
`It says, "The audit system was integrated into an
`existing PC emulation by placing hooks into the module for
`processing all op codes."
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`25
`
`
`
`Case IPR2016-00159
`Patent 8,677,494 B2
`
`
`
`I heard during the Petitioner's presentation that
`that does not meet the claim element. He said that that process
`was scrapped. It absolutely was not scrapped.
`Swimmer specifically says that you process all op
`codes and by processing all op codes you have a -- you have an
`audit trail, a log file of all the system activity. There's no
`determination of a list of suspicious operations. It simply does
`not happen until later in the process.
`The other reason that obviousness is much tougher
`to prove in this case in considering Swimmer as a whole is the
`database. When Swimmer talks about a database Swimmer
`says that it's inefficient. It doesn't work. It only works -- it
`won't work for polymorph
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
