UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00165
`Patent 6,804,780
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`
`THE ‘780 PATENT ......................................................................................... 4
`
`I.
`
`II.
`
`A. Overview of the ‘780 Patent .................................................................. 4
`
`B.
`
`The Challenged Claims ......................................................................... 6
`
`III. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`
`
`B.
`
`
`
`C.
`
`
`
`D.
`
`
`
`“performing a hashing function on the Downloadable and the
`fetched software components to generate a Downloadable ID”
`(all claims) ............................................................................................. 9
`
`“Downloadable” (all claims) ............................................................... 12
`
`“Downloadable ID” (all claims) .......................................................... 13
`
`“means for obtaining a Downloadable” / “means for fetching at
`least one software component” / “means for performing a
`hashing function” (claim 17) ............................................................... 15
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES
`REVIEW SHOULD NOT BE INSTITUTED ............................................... 17
`
`A.
`
`Claims 1–18 are Patentable Over Rubin in view of Waldo ................ 17
`
`1.
`
`2.
`
`Rubin in View of Waldo does not Disclose “[a
`communications engine for/means for] obtaining a
`Downloadable that includes one or more references to
`software components required to be executed by a
`Downloadable” (claims 1, 9, 17, and 18) ................................. 20
`
`Rubin in View of Waldo does not Disclose “fetching at
`least one software component identified by the one or
`more references” (claims 1, 9, 17, and 18) ............................... 26
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`3.
`
`4.
`
`Rubin in View of Waldo does not Disclose “performing a
`hashing function on the Downloadable and the fetched
`software components to generate a Downloadable ID”
`(all challenged claims) .............................................................. 30
`
`The Petition Provides Inadequate Motivation to Combine
`the Rubin and Waldo References .............................................. 34
`
`(a) The Proposed Combination of Rubin and Waldo is
`a Result of Hindsight Bias .............................................. 35
`
`(b)
`
`Statements Made by Petitioner’s Declarant Should
`Not Be Considered As They Rely on
`Impermissible Incorporation by Reference .................... 37
`
`B.
`
`Petitioner’s Obviousness Arguments Fail as a Matter of Law
`Because it did not Conduct a Complete Obviousness Analysis ......... 39
`
`1.
`
`2.
`
`3.
`
`Petitioner Fails to Identify the Differences Between the
`Prior Art and the Challenged Claims ........................................ 40
`
`Petitioner Fails to Identify the Level of One of Ordinary
`Skill in the Art ........................................................................... 42
`
`Petitioner Fails to Address Secondary Considerations of
`Nonobviousness ........................................................................ 42
`
`CONCLUSION .............................................................................................. 43
`
`
`V.
`
`
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 23, 41
`
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 39
`
`In re Baxter Int’l, Inc.,
`678 F.3d 1357 (Fed. Cir. 2012) ............................................................................ 9
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 10
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case No. IPR2014-00454 (P.T.A.B. Aug. 29, 2014) ......................................... 37
`
`Corning Inc. v. DSM IP Assets B.V.,
`Case No. IPR2013-00043 (P.T.A.B. May 1, 2014) ................................ 24, 29, 33
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ........................................................................ 8, 9
`
`Google Inc. v. EveryMD.com LLC,
`Case No. IPR2014-00347 (P.T.A.B. May 22, 2014) .......................................... 40
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .......................................................................................... 39, 40
`
`Insite Vision Inc. v. Sandoz, Inc.,
`783 F.3d 853 (Fed. Cir. 2015) ............................................................................ 36
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) .......................................................................... 13
`
`KSR Int'l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 34, 36, 39
`
`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 34, 43
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`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 11
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 11
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 42
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 39
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .................................................................... 12, 25
`
`Symantec Corp. v. Finjan, Inc.,
`Case No. IPR2015-01547 (P.T.A.B. Jan. 14, 2016) ........................................... 32
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`Case No. IPR2012-00041 (P.T.A.B. Feb. 22, 2013) .......................................... 40
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .................................................................... 10, 14
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`Case No. CBM2014-00082 (P.T.A.B. Oct. 16, 2014) .......................................... 3
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 17
`
`35 U.S.C. § 103(a) ................................................................................................... 17
`
`35 U.S.C. § 112(f) .................................................................................................... 15
`
`35 U.S.C. § 311(b) ................................................................................................... 16
`
`Other Authorities
`
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 38, 42
`
`37 C.F.R. § 42.22(a)(2) ................................................................................ 27, 33, 41
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`37 C.F.R. § 42.104(b)(2) .......................................................................................... 32
`
`37 C.F.R § 42.104(b)(4) ............................................................................... 27, 33, 41
`
`37 C.F.R. § 42.108(c) ................................................................................................. 1
`
`37 C.F.R. § 42.65(a) ..................................................................................... 11, 34, 38
`
`77 Fed. Reg. 48756 (Aug. 14, 2012) ................................................................... 8, 33
`
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`I.
`
`INTRODUCTION
`
`On November 6, 2015, Palo Alto Networks, Inc. (“Petitioner”) submitted a
`
`Petition to institute an inter partes review (“IPR”) challenging claims 1–18 of U.S.
`
`Patent No. 6,804,780 (“the ‘780 Patent”). 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).
`
`The ‘780 Patent is generally directed to protecting a network against
`
`application programs, referred to as Downloadables, that may be hostile or
`
`suspicious. ‘780 Patent at 1:63-67 (“Therefore, a system and method are needed to
`
`protect a network from hostile Downloadables…The present invention provides a
`
`system for protecting a network from suspicious Downloadables.”). The ‘780
`
`Patent recognized that conventional “security systems are not configured to
`
`recognize computer viruses which have been attached to or configured as
`
`Downloadable application programs.”
`
`To protect a network against suspicious Downloadables, the ‘780 Patent
`
`specifies the use of hashing to generate a “Downloadable ID” to serve as an
`
`identifier for a Downloadable. In particular, the ‘780 Patent discloses an ID
`
`generator that receives a Downloadable, fetches software components identified in
`
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`the Downloadable, and generates a Downloadable ID that identifies the
`
`Downloadable. Id. at 4:50–63. The resulting Downloadable ID allows the
`
`network security system to avoid expensive analysis for Downloadables that have
`
`been seen previously. Id. at 4:64–5:3.
`
`The references cited in the Petition do not disclose this approach to
`
`computer security. The primary reference, Rubin U.S. Patent No. 5,683,446 (Ex.
`
`1003, “Rubin”) merely discloses a certification process for files. At most, this
`
`certification process “enables a recipient to verify that the content of the document
`
`is not uncorrupted,” as opposed to “generating a Downloadable ID to identify a
`
`Downloadable,” let alone a Downloadable ID generated as a result of performing a
`
`hashing function on the Downloadable and fetched software components. In fact,
`
`Rubin does not concern itself with any software components referenced in the file.
`
`See, e.g., Rubin at 1:8–13.
`
`Waldo et al., U.S. Patent No. 5,815,709 (Ex. 1004, “Waldo”) does not cure
`
`Rubin’s deficiencies. Indeed, Waldo is not directed towards security, let alone
`
`protecting a network against suspicious application programs. Rather, Waldo is
`
`concerned with making sure client computers are able to run/process Java
`
`programs without error. In particular, Waldo’s system exists on each client
`
`computer in order to provide these client computers with the ability to identify the
`
`methods and interfaces comprising an object that is loaded by a Java program
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`already running on the client computer. Waldo at 3:39-48. Waldo does not
`
`generate a Downloadable ID, let alone a Downloadable ID generated as a result of
`
`performing a hashing function on the Downloadable and fetched software
`
`components.
`
`Notably, the ‘780 Patent has been successfully litigated against Finjan’s
`
`competitors since 2006. Over the years, Finjan has received an injunction blocking
`
`its competitors from using the technology claimed in the ‘780 Patent and has been
`
`awarded millions of dollars in damages. Each tribunal has maintained the validity
`
`of the ‘780 Patent.
`
`Although there are a variety of reasons why the ‘780 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.1 See
`
`Travelocity.com L.P. v. Conos Techs., LLC, Case No. 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 reason.”). Accordingly, while Patent Owner reserves its right to advance
`
`additional arguments in the event that trial is instituted on any ground, the
`
`1 For example, Patent Owner specifically reserves its right to dispute that Petitioner
`
`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
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`deficiencies of the Petition noted herein are more than 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 ‘780 PATENT
`
`A. Overview of the ‘780 Patent
`
`The ‘780 Patent discloses systems and methods “for protecting a network
`
`from suspicious Downloadables.” ‘780 Patent at 1:66–67. To protect a network
`
`against suspicious Downloadables,” the claimed invention, exists on a network
`
`security system (e.g. internal network security system 110):
`
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`‘780 Patent at Figure 1. This enables the claimed invention to protect the client
`
`computers which are part of the internal computer network before the
`
`Downloadable arrives there.
`
`In particular, the ‘780 Patent describes the use of hashing to generate a
`
`“Downloadable ID” to identify a Downloadable. See, e.g., id. at 2:12–16; 4:50–54;
`
`9:58–59. For example, as described with respect to FIG. 8 of the ‘780 Patent, a
`
`method for generating a Downloadable ID can include receiving a Downloadable,
`
`fetching some or all components referenced in the Downloadable, and performing
`
`a hashing function to generate a Downloadable ID. Id. at 9:60–67.
`
`The Downloadable ID can then be stored in a security database as a
`
`reference to Downloadable security profile data (“DSP”). Id. at 9:67–10:3. In that
`
`manner, when a Downloadable is received, its Downloadable ID can be calculated
`
`to determine whether or not the received Downloadable is known, whereupon its
`
`DSP data can be retrieved and forwarded on with the Downloadable for further
`
`processing. Id. at 5:46–51.
`
`In accordance with this general principle, the claims of the ‘780 Patent
`
`require, inter alia, (1) obtaining a Downloadable that includes one or more
`
`references to software components required to be executed by the Downloadable,
`
`(2) fetching at least one software component identified by the one or more
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`references, and (3) performing a hashing function on the Downloadable and the
`
`fetched software components to generate a Downloadable ID. Id. at 8:55–62.
`
`B.
`
`The Challenged Claims
`
`Petitioner challenges claims 1–18 of the ‘918 Patent, of which claims 1, 9,
`
`17, and 18 are independent. The independent claims are reproduced below:
`
`1. A computer-based method for generating a Downloadable ID to
`identify a Downloadable, comprising:
`
`obtaining a Downloadable that includes one or more references
`to software components required to be executed by the Downloadable;
`
`fetching at least one software component identified by the one
`or more references; and
`
`performing a hashing function on the Downloadable and the
`fetched software components to generate a Downloadable ID.
`
`‘780 Patent at 10:23–32.
`
`9. A system for generating a Downloadable ID to identify a
`Downloadable, comprising:
`
`a communications engine for obtaining a Downloadable that
`includes one or more references to software components required to
`be executed by the Downloadable; and
`
`an ID generator coupled to the communications engine that
`fetches at least one software component identified by the one or more
`references, and
`for performing a hashing
`function on
`the
`Downloadable and the fetched software components to generate a
`Downloadable ID.
`
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`Id. at 10:49–59.
`
`17. A system for generating a Downloadable ID to identify a
`Downloadable, comprising:
`
`means for obtaining a Downloadable that includes one or more
`references to software components required to be executed by the
`Downloadable;
`
`means for fetching at least one software component identified
`by the one or more references; and
`
`means for performing a hashing function on the Downloadable
`and the fetched software components to generate a Downloadable ID.
`
`Id. at 11:9–12:3.
`
`18. A computer-readable storage medium storing program code for
`causing a computer to perform the steps of:
`obtaining a Downloadable that includes one or more references to
`software components required to be executed by the Downloadable;
`fetching at least one software component identified by the one or
`more references; and
`performing a hashing function on the Downloadable and the fetched
`software components to generate a Downloadable ID.
`
`Id. at 12:4–13.
`
`Claims 2 and 10 depend from claims 1 and 9, respectively, and recite,
`
`“wherein the Downloadable includes an applet.”
`
`Claims 3 and 11 depend from claims 1 and 9, respectively, and recite,
`
`“wherein the Downloadable includes an active software control.”
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`Claims 4 and 12 depend from claims 1 and 9, respectively, and recite,
`
`“wherein the Downloadable includes a plugin.”
`
`Claims 5 and 13 depend from claims 1 and 9, respectively, and recite,
`
`“wherein the Downloadable includes HTML code.”
`
`Claims 6 and 14 depend from claims 1 and 9, respectively, and recite,
`
`“wherein the Downloadable includes an application program.”
`
`Claim 7 depends from claim 1 and recites, “wherein said fetching includes
`
`fetching a first software component referenced by the Downloadable.” Claim 15
`
`depends from claim 9 and recites, “wherein the ID generator fetches a first
`
`software component referenced by the Downloadable.”
`
`Claim 8 depends from claim 1 and recites, “wherein said fetching includes
`
`fetching all software components referenced by the Downloadable.” Claim 16
`
`depends from claim 9 and recites, “wherein the ID generator fetches all software
`
`components referenced by the Downloadable.”
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review proceeding, claims are given their broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756 at 48766 (Aug. 14, 2012); see also In re Cuozzo Speed Techs., LLC,
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`793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`
`approved the broadest reasonable interpretation standard in enacting the AIA.”).
`
`A.
`
`
`
`“performing a hashing function on the Downloadable and the
`fetched software components to generate a Downloadable ID” (all
`claims)
`
`The term “performing a hashing function on the Downloadable and the
`
`fetched software components to generate a Downloadable ID” does not require
`
`construction. However, as a matter of full disclosure, the term was construed as
`
`“performing a hashing function on the Downloadable together with its fetched
`
`software components to generate a Downloadable ID” in the Finjan v. Blue Coat
`
`case. Ex. 1009 at 4. Notably, in that litigation, the ‘780 Patent was found
`
`infringed and valid over the prior art, including Waldo, which is at issue here.2
`
`The Board should either decline to construe this term as its plain and ordinary
`
`meaning is readily apparent to those of skill in the art or adopt the construction
`
`adopted in the Finjan v. Blue Coat case. See In re Baxter Int’l, Inc., 678 F.3d
`
`1357, 1365 (Fed. Cir. 2012) (“even with a more lenient standard of proof, the PTO
`
`ideally should not arrive at a different conclusion.”).
`
`
`2 Notably, the cited trial testimony merely shows that one way to satisfy the
`
`limitation at issue is by performing the claimed hashing together in time to
`
`generate a Downloadable ID, which remains consistent with Finjan’s position.
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`Patent Owner’s Preliminary Response
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`Petitioner proposes that this claim term be construed as “generating a hash
`
`value for the Downloadable and one or more hash values for its fetched software
`
`components, wherein the hash values collectively identify the Downloadable and
`
`its fetched software components, whether or not combined into a single hash.”
`
`Petition at 10–11. Contrary to the law, Petitioner seeks to rewrite the claim
`
`language to support its invalidity case—namely by removing the “generate a
`
`Downloadable ID” language and replacing it with extraneous limitations such as
`
`“collectively identify” and “whether or not combined into a single hash value.”
`
`See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir.
`
`2012) (“We do not read limitations from the specification into claims; we do not
`
`redefine words. Only the patentee can do that.”). Without support for such a
`
`lengthy and verbose construction, Petitioner’s arguments should be rejected.
`
`Petitioner also never explains why the phrase “to generate a Downloadable
`
`ID” should be removed from the language of the claims. Indeed, the claim
`
`language explicitly requires that the hashing be performed “to generate a
`
`Downloadable ID” and the Federal Circuit dictates that “claims must be
`
`“interpreted with an eye toward giving effect to all terms in the claim.” See Bicon,
`
`Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
`
`Moreover, Petitioner’s proposed construction is contrary to the law because
`
`it ignores the specification altogether and exclusively relies on conclusory
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`arguments from its expert to support its definition. Petition at 11. As a
`
`preliminary matter, Petitioner’s tactic misunderstands the law as the Federal
`
`Circuit dictates that "[e]ven under the broadest reasonable interpretation, the
`
`Board's construction cannot be divorced from the specification.” Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)(citation and internal
`
`quotations omitted); see also Phillips v. AWH Corp., 415 F.3d 1303, 1318–19 and
`
`1324 (Fed. Cir. 2005) (dictating that extrinsic evidence may not be used to vary or
`
`contradict any intrinsic evidence). Thus, Petitioner’s failure to consider the
`
`specification is inexcusable.
`
`Moreover, Petitioner’s reliance on its expert is unavailing as his opinion is
`
`fundamentally flawed. Here, Petitioner solely cites to paragraphs 41, 43 and 65 of
`
`the declaration of its expert, Dr. Rubin. Petition at 11. These paragraphs reveal that
`
`Dr. Rubin cites no evidence, let alone anything from the specification to support
`
`his opinion. Thus, 37 C.F.R. § 42.65(a) dictates that it is entitled to little or no
`
`weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
`
`underlying facts or data on which the opinion is based is entitled to little or no
`
`weight.”). Accordingly, Petitioner’s attempt to rewrite the claim language using a
`
`defective expert declaration is legally improper.
`
`Petitioner also attempts to justify its proposal by arguing that its construction
`
`is “consistent” with cherry-picked statements from the Finjan v. Blue Coat trial.
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`See Petition at 11-12. Again, Petitioner misunderstands the law. The issue is not
`
`whether Petitioner’s construction is “consistent” with the Finjan v. Blue Coat trial.
`
`To contrary, the Federal Circuit dictates that the broadest reasonable interpretation
`
`must be “consistent with the specification.” See In re Suitco Surface, Inc., 603
`
`F.3d 1255, 1259-60 (Fed. Cir. 2010) (dictating that BRI does not give “an
`
`unfettered license to interpret claims to embrace anything remotely related to the
`
`claimed invention. Rather, claims should always be read in light of the
`
`specification and teachings in the underlying patent.”)(citations omitted).
`
`Because Petitioner makes no attempt to show that its convoluted
`
`construction is consistent with the specification, the basis of Petitioner’s proposed
`
`construction is insufficient as a matter of law and should be rejected.
`
`B.
`
`
`
`“Downloadable” (all claims)
`
`The term “Downloadable” means “an executable application program, which
`
`is downloaded from a source computer and run on a destination computer.” See
`
`Petition at 12–13 (proposing a nearly identical construction). This definition is
`
`provided in the specification of the ‘780 Patent. ‘780 Patent at 1:50–53.
`
`Additionally, this definition has previously been adopted by the Board for patents
`
`related to the ‘780 Patent. See, e.g., Decision Denying Institution, Sophos, Inc. v.
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`Finjan, Inc., IPR2015-00907, Paper 8 at 11; Decision Denying Institution, Sophos,
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`Inc. v. Finjan, Inc., IPR2015-01102, Paper 7 at 7.
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`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`C.
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`
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`“Downloadable ID” (all claims)
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`The plain and ordinary meaning should be applied to the term
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`“Downloadable ID” because a person of ordinary skill in the art understands the
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`meaning of this term. See, e.g., Interactive Gift Express, Inc. v. Compuserve, Inc.,
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`256 F.3d 1323, 1331 (Fed. Cir. 2001) (“If the claim language is clear on its face,
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`then our consideration of the rest of the intrinsic evidence is restricted to
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`determining if a deviation from the clear language of the claims is specified.”).
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`The intrinsic evidence does not support any deviation from the easily
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`understandable meaning of this claim term. See ‘780 Patent at 2:12–14 (“The
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`system uses an ID generator to compute a Downloadable ID identifying the
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`Downloadable….”).
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`Petitioner’s proposes that the term Downloadable ID means “one or more
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`hash values that collectively identify a Downloadable and its fetched software
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`components.” Petition at 13. This proposed construction is incorrect because
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`Petitioner seeks a construction that improperly narrows the term “Downloadable
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`ID” and in doing so, rewrites the claims to include limitations that do not exist in
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`the claims.
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`Consistent with the specification of the ‘780 Patent, a Downloadable ID
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`identifies a Downloadable. See ‘780 Patent at 2:12–14; 4:50–54 (“The ID
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`generator 315 receives a Downloadable (including the URL from which it came
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`and the userID of the intended recipient) from the external computer network 105
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`via the external communications interface 210, and generates a Downloadable ID
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`for identifying each Downloadable.”). Any limitations on what the Downloadable
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`ID includes and how it is computed are defined in the claims and should not be
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`incorporated into any adopted definition of the term Downloadable ID itself. See
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`Thorner, 669 F.3d at 1367 (“The patentee is free to choose a broad term and expect
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`to obtain the full scope of its plain and ordinary meaning….”).
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`Additionally, Petitioner’s proposed construction of this term, independent of
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`its proposed construction for “performing a hashing function on the Downloadable
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`and the fetched software components to generate a Downloadable ID,” is
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`confusing and nonsensical because it already provided a proposed construction for
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`Downloadable ID within the context of the term “performing a hashing function on
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`the Downloadable and the fetched software components to generate a
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`Downloadable ID.”
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`Thus, the Board should decline to adopt Petitioner’s proposed construction
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`and construe the term Downloadable ID according to its plain and ordinary
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`meaning.
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`Patent Owner’s Preliminary Response
`IPR2016-00165 (U.S. Patent No. 6,804,780)
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`D.
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`
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`“means for obtaining a Downloadable” / “means for fetching at
`least one software component” / “means for performing a hashing
`function” (claim 17)
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`Finjan agrees that construction of these terms is governed by 35 U.S.C.
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`§ 112(f). That statute requires that “such claim shall be construed to cover the
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`corresponding structure, material, or acts described in the specification and
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`equivalents thereof.”
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`Finjan also agrees that that the proper function associated with each of these
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`terms is the verbatim language from the claims. See Petition at 13. However, the
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`functions that Petitioner attributes to these terms are not correct because they
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`ignore claim language and are, therefore, defective as a matter of law. The proper
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`functions for these three claim terms are: “obtaining a Downloadable that includes
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`one or more references to software components required to be executed by the
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`Downloadable;” “fetching at least one software component identified by the one or
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`more references;” and “performing a hashing function on the Downloadable and
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`the fetched software components to generate a Downloadable ID.” ‘780 Patent at
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`11:1–12:3.
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`The ‘780 Patent discloses that the corresponding structure for the term
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`“means for obtaining a Downloadable,” is “an external communications interface”
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`or “an ID generator.” See ‘780 Patent at 3:36–40 and 3:44–50 (disclosing an
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`external communications interface 210 that can receive a Downloadable; 4:50–54
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`(disclosing an ID generator that can receive a Downloadable).
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`Petitioner’s contention that the ‘780 Patent does not teach any physical
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`structures corresponding to the terms “means for fetching at least one software
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`component” and “means for performing a hashing function” is contrary to the
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`intrinsic record. Petition at 14. The ‘780 Patent discloses an “ID generator” that
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`obtains a Downloadable, fetches software components of the Downloadable, and
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`performs a digital hash of the Downloadable to generate a Downloadable ID. ‘780
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`Patent at 4:50–63. The ‘780 Patent teaches that such components “may be
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`implemented using a programmed general purpose digital computer, using
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`application specific integrated circuits, or using a network of interconnected
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`conventional components and circuits.” Id. at 10:13–16. Accordingly, the ‘780
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`Patent discloses a physical structure for the ID generator that corresponds to the
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`“fetching at least one software component” and “performing a hashing function”
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`functions recited in independent claim 17. Claim 17 is thus not indefinite.
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`In any event, a Petitioner may not raise indefiniteness grounds in a Petition
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`for inter partes review. 35 U.S.C. § 311(b) “A petitioner in an inter partes review
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`may request to cancel as unpatentable 1 or more claims of a patent only on a
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`ground that could be raised under section 102 or 103 and only on the basis of
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`Patent Owner’s Preliminary Response
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`prior art c