Trials@uspto.gov
`571-272-7822
`
`
`Paper 7
`Date: April 21, 2016
`
`
` 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 B1
`________________
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
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`Case IPR2016-00165
`Patent 6,804,780 B1
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`Palo Alto Networks, Inc. (“Petitioner”) filed a Petition pursuant to 35
`U.S.C. §§ 311–319 to institute an inter partes review of all claims (claims
`1–18) of U.S. Patent No 6,804,780 B1 (Ex. 1001, “the ’780 patent”). Paper
`2 (“Pet.”). Finjan, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C.
`§ 314(a), which requires demonstration of a reasonable likelihood that
`Petitioner would prevail with respect to at least one challenged claim, we
`deny Petitioner’s request and deny institution of an inter partes review of all
`challenged claims.
`
`
`I. BACKGROUND
`A. The ʼ780 Patent (Ex. 1001)
`
`The ʼ780 patent is titled “System and Method for Protecting a
`
`Computer and a Network from Hostile Downloadables.” The abstract
`describes the subject matter as follows:
`A computer-based method for generating a Downloadable ID to
`identify a Downloadable, including obtaining a Downloadable
`that includes one or more references to software components
`required by the Downloadable, fetching at least one software
`component identified by the one or more references, and
`performing a function on the Downloadable and the fetched
`software components to generate a Downloadable ID. A system
`and a computer-readable storage medium are also described and
`claimed.
`Ex. 1001, Abstract.
`
`The invention is illustrated by Figure 8 of the patent, reproduced here:
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`Figure 8 is a flowchart illustrating a method for generating a
`
`Downloadable ID for identifying a Downloadable. Ex. 1001, col, 9, ll. 58–
`60. According to the ʼ780 patent, a “Downloadable” is “an executable
`application program, which is downloaded from a source computer and run
`on the destination computer.” Id. at col. 1, ll. 50–53. Also according to the
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`patent, a Downloadable “is typically requested by an ongoing process such
`as by an Internet browser or web engine.” Id. at col. 1, ll. 53–55. Examples
`of a Downloadable from the ʼ780 patent include Java applets, JavaScript
`scripts, and ActiveX controls. Id. at col, 1, ll. 55–59.
`
`As described in the patent, the method of generating a Downloadable
`ID begins at step 810 of Figure 8, with an ID generator (not shown)
`receiving a Downloadable from an external computer network. Ex. 1001,
`col. 9, ll. 60–62. In step 820, the ID generator fetches some or all
`components referenced in the Downloadable code and, in step 830, includes
`the fetched components in the Downloadable code. Id. at col. 9, ll. 62–65.
`
`In step 840, the ID generator performs a hashing function on at least a
`portion of the Downloadable code (including the fetched components) to
`generate a Downloadable ID. Id. at col. 9, ll. 65–67. The ID generator, in
`step 850, stores the generated Downloadable ID in a security database as a
`reference to the appropriate Downloadable Security Profile (“DSP”) data.
`Accordingly, the Downloadable ID will be the same for the identical
`Downloadable each time it is encountered. Id. at col. 9, l. 67–col. 10, l. 5.
`
`The Downloadable ID, in conjunction with the DSP, is used to
`identify potentially hostile operations. Id. at col. 5, ll. 45–67.
`
`B. Illustrative Claim
`The ʼ780 patent has four independent claims: 1, 9, 17, and 18. Claim
`1 illustrates the relevant subject matter of the patent:
`
`1. A computer-based method for generating a
`Downloadable ID to identify a Downloadable, comprising:
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`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.
`C. Related Proceedings
`Patent Owner and Petitioner are involved in ongoing litigation,
`
`Finjan, Inc. v. Palo Alto Networks, Inc., Case No. 4:14-cv-04908 (N.D.
`Cal.), in which the ʼ780 patent has been asserted. Pet. 3, Paper 5, 1.
`Petitioner also has filed petitions for inter partes review of numerous related
`patents. Pet. 3–4.
`
`Patent Owner also has asserted the ’780 patent against Blue Coat
`Systems, Inc., in Finjan, Inc. v. Blue Coat Systems, Inc., Case No. 5:13-cv-
`03999 (N.D. Cal. 2013) (“the Blue Coat Litigation”). Paper 5, 1. Exhibits
`2010 and 2011 are, respectively, excerpts from the trial transcript and the
`jury’s verdict form from that litigation.
`
`Patent Owner identifies two other cases in which it has asserted the
`ʼ780 patent: Finjan, Inc. v. FireEye, Inc., 4:13-cv-03133 (N.D. Cal.); and
`Finjan, Inc. v. Sophos, Inc., 3:14-cv-01197 (N.D. Cal.). Paper 5, 1.
`D. Real Party-in-Interest
`The Petition names one real party-in-interest: Palo Alto Networks,
`Inc. Pet. 3. The Preliminary Response does not challenge this.
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`E. References
`Petitioner relies on the following two references:
`
`1. U.S. Patent No. 5,638,446, filed on August 28, 1995 and issued on
`June 10, 1997 (“Rubin”) (Ex. 1003).
`2. U.S. Patent No. 5,815,709, filed on April 23, 1996 (“Waldo”) (Ex.
`1004).
`Petitioner contends that the ʼ780 patent is entitled to a filing date of
`
`“no earlier than November 6, 1997.” Pet. 10. Patent Owner does not
`dispute this. Accordingly, Petitioner asserts that these references are prior
`art to the ʼ780 patent under 35 U.S.C. §§ 102(a) or 102(e). Pet. 15.
`
`
` F. Ground Asserted
`
`The Petition challenges claims 1–18 as unpatentable under 35 U.S.C.
`§ 103(a) over Rubin and Waldo. Pet. 15–48. In addition to the supporting
`argument for this ground in the Petition, Petitioner also presents expert
`testimony. Ex. 1002, Declaration of Aviel D. Rubin (“Rubin Decl.”). Dr.
`Rubin is the named inventor of the Rubin reference. Id. ¶ 71.
`
`
`II. ANALYSIS
`
`
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Under that standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`1. “performing a hashing function on the Downloadable and the
` fetched software components to generate a Downloadable ID”
` (all claims)
`The parties disagree on the construction of this phrase. Petitioner
`contends that the broadest reasonable construction is “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 value.” Pet. 10–11.
`Petitioner recognizes that the district court, in the Blue Coat
`Litigation, adopted a different construction for part of the above claim term.
`The district court construed the following phrase: “performing a hashing
`function on the Downloadable and the fetched software components.” Pet.
`11. According to Petitioner, the district court’s construction of this term
`was: “performing a hashing function on the Downloadable together with its
`fetched software components.” Id. Petitioner asserts that the construction
`for this proceeding should be broader:
`Indeed, a POSA would have understood that “hashing” could
`refer to a series of mathematical operations performed on each
`of a Downloadable and its fetched software components
`separately. (Ex. 1002 ¶¶ 41, 65.) Furthermore, a POSA would
`have understood that the resulting series of separate hashes
`could collectively comprise a unique identifier (or ID) for the
`Downloadable and its fetched software components. (Id. ¶ 43.)
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`Pet. 11 (emphases added). Petitioner further contends that this proposed
`construction is consistent with Patent Owner’s position in the Blue Coat
`Litigation. Id. at 10–11.
`
`Patent Owner responds that the phrase “performing a hashing function
`on the Downloadable and the fetched software components to generate a
`Downloadable ID” does not require construction. Prelim. Resp. 9.
`Alternatively, Patent Owner urges the Board to adopt the district court’s
`construction. Id. Patent Owner criticizes Petitioner’s construction as an
`effort to “rewrite the claim language to support its invalidity case.” Id. at 10.
`Specifically, Patent Owner objects to the omission by Petitioner of “to
`generate a Downloadable ID” and replacing it by what it terms “extraneous
`limitations.” Id.
`
`We determine that Petitioner’s proposed construction is not consistent
`with the description in the ʼ780 patent specification discussed supra.
`Petitioner does not provide any supporting citations to the ʼ780 patent. We
`are persuaded, instead, to adopt the district court’s claim construction here.
`We note that “to generate a Downloadable ID” is not present in the District
`Court’s claim construction. We, therefore, construe the phrase “performing
`a hashing function on the Downloadable and the fetched software
`components” “as “performing a hashing function on the Downloadable
`together with its fetched software components.” Ex. 1004, 2 (emphasis
`added). We have reviewed the excerpts of testimony from the Blue Coat
`trial submitted by Patent Owner (Ex. 1010) and find them incomplete and
`inconclusive, and therefore not helpful on this issue.
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`2. “Downloadable” (all claims)
`As noted supra, the ʼ780 patent defines this term as “an executable
`application program, which is downloaded from a source computer and run
`on the destination computer.” Ex. 1001, col. 1, ll. 50–53. We determine,
`therefore, that no further construction is needed.
`3. “Downloadable ID” (all claims)
`Petitioner proposes that this term means “one or more hash values that
`collectively identify a Downloadable and its fetched software components.”
`Pet. 13 (emphases added). Patent Owner contends that this construction is
`incorrect because it “improperly narrows” the term. Prelim. Resp. 13.
`According to Patent Owner, the plain and ordinary meaning should apply.
`Id.
`
`We agree that Petitioner’s proposed construction should not be
`adopted. The construction is not consistent with the patent specification. In
`the ʼ780 patent a single hash value is used to identify a Downloadable. Ex.
`1001, col. 9, ll. 65–67 (“The ID generator 315 in step 840 performs a
`hashing function on at least a portion of the Downloadable code to generate
`a Downloadable ID.”) (emphasis added). Petitioner provides no persuasive
`support in the specification or the language of the claims for construing a
`Downloadable ID as “one or more” hash values, that “collectively” identify
`a Downloadable.
`4. Means-Plus-Function Terms
`Claim 17 contains three “means-plus-function” terms. These are:
`“means for obtaining a Downloadable,” “means for fetching at least one
`software component,” and “means for performing a hashing function.”
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`The parties agree that the claim terms themselves identify the
`functions. Pet. 13; Prelim. Resp. 15. Petitioner identifies external
`communications interface 210 as the structure corresponding to the first
`means-plus function term. Pet. 13. Petitioner contends that the second and
`third terms are indefinite because there is no “appropriate physical structure”
`linked to them. Pet. 14.
`
`Patent Owner responds that the structure corresponding to the first
`means is an external communication interface or the ID generator. Prelim.
`Resp. 15–16. Further, Patent Owner asserts that the claim is not indefinite
`because the patent discloses an ID generator that obtains a Downloadable,
`fetches software components of the Downloadable, and performs a digital
`hash of the Downloadable to generate a Downloadable ID. Id. at 16. Patent
`Owner asserts the patent discloses how this component may be
`implemented, i.e., “using a programmed general purpose digital computer,
`using application specific integrated circuits, or using a network of
`interconnected conventional components and circuits.” Prelim. Resp. 16
`(quoting Ex. 1001, col. 10, ll. 13–16).
`
`We agree with Patent Owner’s construction and assertion that these
`disclosures are sufficient. “The key inquiry is whether one of ordinary skill
`in the art would understand the patent to disclose structure that sufficiently
`corresponds to the claimed function, which in the case of a specific function
`implemented on a general purpose computer requires an algorithm.” In re
`Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1317 (Fed.
`Cir. 2011) (citations omitted). Here, the claim is directed to functions such
`as “fetching” and “hashing.” “Fetching,” like “processing,” “receiving,” and
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`“storing” in Katz, is a function that can be “achieved by any general purpose
`computer without special programming.” Id. at 1316. Accordingly, the
`inclusion of “fetching” in the claim “do[es] not run afoul of the rule against
`purely functional claiming.” Id.
`
`Furthermore, “hashing” is a mathematical technique or algorithm
`specifically disclosed in the ʼ780 patent’s specification. Ex. 1001, Fig. 8,
`col. 2, l. 10, col. 9, l. 66; Ex. 1002 ¶¶ 65–66. Petitioner’s expert testifies that
`several hashing algorithms were known in the mid-1990’s. Ex. 1002 ¶ 66.
`“Where the specification discloses an algorithm that the accused infringer
`contends is inadequate, we judge the disclosure’s sufficiency based on the
`skilled artisan’s perspective.” EON Corp. IP Holdings LLC v. AT & T
`Mobility LLC, 785 F.3d 616, 624 (Fed. Cir. 2015) (citations omitted). See
`also AllVoice Computing PLC v. Nuance Commc’n, Inc., 504 F.3d 1236,
`1245 (Fed. Cir. 2007) (“In software cases, therefore, algorithms in the
`specification need only disclose adequate defining structure to render the
`bounds of the claim understandable to one of ordinary skill in the art.”);
`Med. Instrumentation and Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
`1214 (Fed. Cir. 2003) ("[H]ere there would be no need for a disclosure of the
`specific program code if software were linked to the converting function and
`one skilled in the art would know the kind of program to use."). We are not
`persuaded, therefore, that the claim is indefinite.
`
`
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`B. Obviousness
`
`Petitioner contends that the subject matter of claims 1–18 would have
`been obvious over Rubin and Waldo. Pet. 15–48. We have considered the
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`information provided by Petitioner and the supporting Declaration of Aviel
`D. Rubin. We are persuaded, based on this record, that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on this challenge.
`1. Overview of Rubin (Ex. 1003)
`
`
`As described by Petitioner, Rubin discloses a method for secure
`distribution of files over the Internet. Pet. 2. The disclosure is summarized
`in the Abstract as follows:
`
`The process is composed of two phases, a registration
`phase and an electronic file distribution phase. In the
`registration phase, a trusted third party receives information
`about an author, including the author's public key, and
`affirmatively verifies the accuracy of this information. In the
`file distribution phase, an author sends to the trusted third party
`a signed message containing the hash of the file the author
`wants to distribute. The trusted third party creates an electronic
`certificate, signed by the trusted third party, containing the hash
`of the file sent by the author.
`
`A user desiring to receive the file retrieves the file with
`the certificate, and uses the certificate to verify, first, that the
`certificate was created by the trusted third party, and, second,
`that the hash of the file in the certificate is the same as the hash
`that is computed from the retrieved file. If these two hashes
`match, then the user is assured that the file did originate with
`the author and is uncorrupted.
`
`Ex. 1003, Abstract (paragraphing added and minor typographical
`errors corrected).
`
`2. Overview of Waldo (Ex. 1004)
`
`As described by Petitioner, Waldo discloses a system that uses
`
`hashing functions to generate unique inputs for identifying objects (i.e.,
`software components) referenced in software program code. Pet. 2. The
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`patent specifically mentions the Java language. Ex. 1004, col. 1, ll. 43–46.
`This system is illustrated in Figure 1 of Waldo, following:
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`Figure 1 of Waldo is a functional block diagram of a computer
`
`arrangement 10 including an object-type identification generating system.
`Ex. 1004, col. 3, ll. 24–26. Computer network 10 includes computers 12(1)
`through 12(N) (generally identified as 12(n)) interconnected by
`communication link 14. The computers are of the conventional stored-
`program computer architecture. Id. at col. 3, ll. 24–35. The computers
`transfer information, in the form of messages, through their respective
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`network interface devices 18(n), among each other over communication link
`14. Id. at col. 3, ll. 43–46.
`
`Waldo provides a fingerprint generator 20 for use in connection with
`computers 12(n) that maintain or use various objects 22(m) to generate a
`respective fingerprint 24(m) for each of objects 22(m). The fingerprint
`24(m) represents a value that is used to identify the “type” of the object,
`which may be used to identify the object as being of a type to be used by a
`program that is processed by the computer system 12(N) which maintains
`the object 22(m), or as being of a type required by a program being
`processed by another computer 12(1) through 12(N-1) in the system. Id. at
`col. 6, ll. 6–21. In one embodiment of Waldo, the object fingerprint value
`generator processes the object 22(m) to generate the object fingerprint value
`using a conventional secure hashing algorithm. Id. at col. 6, ll. 65–67.
`3. Contentions of the Parties
`
`
`Petitioner contends that the Rubin-Waldo combination meets each
`element of the ʼ780 patent claims. Pet. 9. According to Petitioner, Rubin
`“teaches obtaining downloadable content, such as a software program, and
`performing a hashing function on the content to generate an identifier.” Id.
`Petitioner asserts Waldo “teaches that downloaded software programs can
`reference objects (software components) required for their execution, and
`further teaches fetching any objects that are not part of the software program
`code.” Id. Further, “Waldo teaches the use of hashing functions on the
`software components to generate unique identifiers.” Id.
`
`Petitioner contends it would have been obvious to combine the
`teachings of Rubin and Waldo:
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`Thus, as of the ’780 patent’s effective filing date, a POSA
`would have understood that software programs downloaded in
`accordance with Rubin’s teachings would include programs
`written in Java. ([Ex. 1002] ¶¶ 79, 88.) A POSA would also
`have known, based on the way Java is structured, that such
`programs would include references to class libraries (or objects)
`that are fetched and loaded for execution as required. (Id. ¶¶
`67-70, 78-80.)
`
`Pet. 16.
`
`Patent Owner responds that the combination of Rubin and Waldo fails
`to meet all elements of the challenged claims. Prelim. Resp. 17. Among
`other reasons, the combination fails to show or suggest “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 17–18.
`
`Patent Owner contends that “Rubin is silent with respect to the file
`including references to software components, fetching any such components,
`or performing a hashing function the file to generate a Downloadable ID, let
`alone performing the hashing function on the file and the fetched software
`components to generate a Downloadable ID.” Id. at 18. Patent Owner
`asserts that Waldo fails to cure these deficiencies: “Waldo is likewise silent
`with respect to at least fetching software components referenced in a
`Downloadable and performing the hashing function on the Downloadable
`and the fetched software components to generate a Downloadable ID.” Id.
`Petitioner contends that Waldo generates “fingerprint identifiers” only for
`objects loaded by programs, but not for the programs themselves. Id. at 20.
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`Patent Owner responds further that Petitioner’s showing of motivation
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`to combine the references is insufficient:
`Petitioner fails to explain why a person of ordinary skill in the
`art would be motivated to modify Rubin’s trusted third party
`based technique for assuring “that [a] file did originate with the
`author and is uncorrupted” (Rubin at Abstract) with Waldo’s
`system “for uniquely identifying object ‘types’ for objects that
`are used in processing of object-oriented programs and the like”
`(Waldo at 4:27–30).
`Prelim. Resp. 34. Patent Owner further contends that there would have been
`no reason to combine Rubin and Waldo because to certify that a downloaded
`file is not corrupted, as in Rubin, would not require either Rubin or Waldo to
`fetch any software components referenced in the file. Id. at 35. Patent
`Owner also points out that Petitioner does not look to either reference for the
`motivation to combine them, but to the disclosure of the ʼ780 patent itself.
`Id. at 36.
`
`
`4. Discussion
`a. Motivation to Combine References
`
`
`
`We are persuaded by Patent Owner’s argument that Petitioner has not
`provided a sufficient rationale for combining Rubin and Waldo. KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(“‘[T]here must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2006)). The problem addressed by Rubin is “establishing the integrity
`of an electronic document as it is distributed over a network.” Ex. 1003, col.
`1, ll. 6–8. Specifically, the “invention provides a trusted third party
`certification process which enables a recipient of an electronic document to
`verify that the content of the document is uncorrupted and verify that the
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`author of the document is the one identified, independent of any knowledge
`of the identity of the sending entity.” Id. at col. 1, ll. 8–13. We agree with
`Patent Owner that in such an application, there is “no need . . . to fetch any
`software components referenced in the downloaded file.” Prelim. Resp. 35.
`
`Waldo, on the other hand, addresses a different problem. Waldo
`describes generating “fingerprint” identifiers for uniquely identifying types
`of objects, such as classes that are used in processing of Java and other
`object-oriented programs. Ex. 1004, col. 2, ll. 30–33. We agree with Patent
`Owner that Petitioner does not present a persuasive reason why a person of
`ordinary skill would have been motivated to modify Rubin’s trusted third-
`party technique for assuring the integrity of downloaded files with Waldo’s
`system for uniquely identifying object types. It would, in fact, be contrary to
`the purpose of Rubin to provide such multiple fingerprints, as in Waldo.
`Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1334 (Fed. Cir. 2013):
`While a prior art reference may support any finding apparent to
`a person of ordinary skill in the art, prior art references that
`address different problems may not, depending on the art and
`circumstances, support an inference that the skilled artisan
`would consult both of them simultaneously. See Kinetic
`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366
`(Fed.Cir.2012) (finding invention nonobvious when none of the
`“reference[s] relate to the [problem] described in the patents”
`and no evidence was proffered “indicating why a person having
`ordinary skill in the art would combine the references”).
`Petitioner’s principal argument for combining Rubin and Waldo relies
`
`on the availability of Java. Pet. 16. According to Petitioner, “as of the ’780
`patent’s effective filing date, a POSA would have understood that software
`programs downloaded in accordance with Rubin’s teachings would include
`programs written in Java.” Id. According to Petitioner, by combining Rubin
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`and Waldo, a person of ordinary skill “would have a system capable of
`identifying not only a downloaded software program but also its referenced
`Java classes.” Id. at 17. On this issue, Petitioner relies on testimony of its
`expert and named inventor of the Rubin reference, Dr. Aviel D. Rubin: “By
`1997, a POSA would have viewed Rubin’s disclosure through the new lens
`of Java.” Ex. 1002 ¶ 79.
`
`We are not persuaded that Petitioner has carried its burden on this
`issue. First, Petitioner’s argument lacks credibility because nowhere does
`Petitioner or Dr. Rubin point to any disclosure of Java—which he testifies
`was available in 1995—in the Rubin reference. Ex. 1002 ¶ 77 (“In 1995,
`Java had just been released . . . .”). Nor does Dr. Rubin explain this absence
`of disclosure from his own patent, filed in 1995, when Java was available.
`Ex. 1003 (filed Aug. 28, 1995). We regard Petitioner’s argument and Dr.
`Rubin’s testimony about his own patent as a hindsight reconstruction of the
`prior art in light of the ʼ780 patent. This is confirmed by Petitioner’s
`reference to the ʼ780 patent disclosure in its argument for combining Rubin
`and Waldo. Prelim. Resp. 36 (citing Pet. 17).
`
`Furthermore, because Petitioner has not persuaded us of any necessity
`for downloaded Java objects in Rubin, we are also unpersuaded that Waldo’s
`objects (and therefore the associated signatures) would be useful in Rubin’s
`system. As discussed supra, Rubin is directed to securing and verifying the
`content of generic files, not to executing software programs that would
`require downloading associated objects. Thus, even if we were to agree that
`documents downloaded in Rubin may have included programs written in
`
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`Java (Pet. 16), we still would not be persuaded that a person of ordinary skill
`“would naturally have looked to Waldo.” Pet. 17.
`
`In sum, the Petition fails to present sufficient proof that Rubin and
`Waldo would have been combined.
`b. Other Arguments
`
`
`
`As noted, Patent Owner argues that the combination of Rubin and
`Waldo fails to meet several elements of the ʼ780 patent claims. For
`example, Patent Owner contends that the Rubin-Waldo combination fails to
`disclose a “obtaining a Downloadable that includes one or more references
`to software components required to be executed by a Downloadable.”
`Prelim. Resp. 20–25. Patent Owner asserts Petitioner “concedes” that Rubin
`is “silent” as to “receiving a file that includes one or more references to
`software components required to be executed by the Downloadable.” Id.
`Patent Owner contends that Waldo does not fill this gap because “the
`Petition fails to show that Waldo obtains any kind of program.” Id. “Waldo
`deals with objects rather than the programs that load them.” Id. at 22.
`
`For reasons discussed above, we agree with Patent Owner’s analysis
`and are persuaded, therefore, that Petitioner has failed to establish that this
`element of all independent claims is met by the combination of Rubin and
`Waldo.
`
`Likewise, we are not persuaded Petitioner has shown that the
`combination of references meets the requirement for “fetching at least one
`software component identified by the one or more references” for the
`reasons presented by Patent Owner. Pet. 26–30. As discussed supra, with
`respect to Rubin, we are not persuaded by Petitioner’s argument that Java
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`programs and their referenced objects are downloaded by Rubin. Likewise,
`we are unpersuaded that the objects in Waldo are “identified by one or more
`of the references” included in the Downloadable, as required by the claims.
`Pet. 27. We agree with Patent Owner’s explanation that the objects
`retrieved by Waldo are those referred to by other objects in the object store.
`Prelim. Resp. 27–29.
`
`Finally, we are not persuaded that the Petition demonstrates how the
`Rubin-Waldo combination meets the limitation “performing a hashing
`function on the Downloadable and the fetched software components to
`generate a Downloadable ID.” Pet. 30–33. We agree with Patent Owner
`that “Petitioner never explains how this random assortment of hash values
`allegedly generated by Rubin and Waldo collectively identify the
`Downloadable and its fetched software components, let alone how this these
`values could possible constitute a Downloadable ID as recited in the
`challenged claims.” Prelim. Resp. 32 (citation and inner quotation marks
`omitted). Thus, even if Rubin and Waldo were combined, Petitioner would
`fail to carry its burden.
`
`5. Conclusion
`
`The information presented in the Petition fails to persuade us that it is
`reasonably likely that claims 1–18 are not patentable under 35 U.S.C.
`§ 103(a).
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`III. ORDER
`In view of the foregoing, it is
`
`ORDERED that Petitioner’s request for inter partes review of claims
`
`1–18 of U.S. Patent 6,804,780 B1 is denied and no trial is instituted.
`
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`Patent 6,804,780 B1
`
`For Petitioner:
`
`Matthew I. Kreeger
`Jonathan Bockman
`Matthew Chivvis
`MORRISON & FOERSTER LLP
`MKreeger@mofo.com
`JBockman@mofo.com
`MChivvis@mofo.com
`finjanpanmofoteam@mofo.com
`
`For Patent Owner:
`
`James Hannah
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim
`FINJAN INC.
`mkim@finjan.com
`
`
`
`
`22