Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`U.S. Patent No. 7,647,633
`Filing Date: June 22, 2005
`Issue Date: Jan. 12, 2010
`Title: Malicious Mobile Code Runtime Monitoring System and Methods
`
`DECLARATION OF AVIEL D. RUBIN IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,647,633
`
`Inter Partes Review No. 2015-01974
`
`
`Blue Coat Systems - Exhibit 1002 Page 1
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`Table of Contents
`
`Page
`
`I. 
`
`II. 
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A. 
`Engagement Overview ......................................................................... 1 
`B. 
`Summary of Opinions .......................................................................... 1 
`C. 
`Qualifications and Experience ............................................................. 3 
`1. 
`Education ................................................................................... 3 
`2. 
`Career ......................................................................................... 3 
`3. 
`Publications: ............................................................................... 7 
`4. 
`Curriculum Vitae ........................................................................ 8 
`D.  Materials Considered ............................................................................ 8 
`LEGAL PRINCIPLES USED IN THE ANALYSIS ................................... 13 
`A. 
`Person Having Ordinary Skill in the Art (“POSA”) .......................... 13 
`B. 
`Prior Art .............................................................................................. 15 
`C. 
`Broadest Reasonable Interpretations .................................................. 15 
`D. 
`Standards for Anticipation and Obviousness ..................................... 16 
`III.  TECHNOLOGY TUTORIAL ...................................................................... 28 
`IV.  THE ’633 PATENT ...................................................................................... 41 
`A.  Overview of the ’633 Patent ............................................................... 41 
`B. 
`The Claims of the ’633 Patent ............................................................ 42 
`C. 
`Interpretation of Claim Limitations in the ’633 Patent ...................... 44 
`1. 
`Non-Means-Plus-Function Limitations ................................... 44 
`2.  Means-Plus-Function Limitations ............................................ 47 
`The Priority Claims of the ’633 Patent .............................................. 50 
`D. 
`V.  OVERVIEW OF THE PRIOR ART ............................................................ 53 
`A.  Overview of Poison Java .................................................................... 53 
`B. 
`Overview of Shin ................................................................................ 55 
`C. 
`Overview of Brown ............................................................................ 55 
`D. 
`Poison Java, Shin, and Brown Are All Analogous Art ...................... 56 
`
`-i-
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`Blue Coat Systems - Exhibit 1002 Page 2
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`Table of Contents
`Continued
`
`Page
`
`2. 
`3. 
`4. 
`5. 
`6. 
`
`B. 
`
`C. 
`
`VI.  ANALYSIS ................................................................................................... 57 
`A. 
`Shin Renders Claims 1–4, 6–8, 13, 14, and 19 Obvious under
`35 U.S.C. § 103(a) .............................................................................. 57 
`1. 
`Independent Claim 1 ................................................................ 57 
`a. 
`Claim element 1[b]: “receiving” limitation ................... 57 
`b. 
`Claim element 1[c]: “determining” limitation ............... 57 
`Claim 3 ..................................................................................... 59 
`Claims 6 and 7 .......................................................................... 60 
`Claim 8 ..................................................................................... 61 
`Claim 13 ................................................................................... 62 
`Independent Claim 14 .............................................................. 63 
`a. 
`Claim element 14[a]: “computer program product” ...... 63 
`b. 
`Claim element 14[c]: “information re-
`communicator” and “mobile code executor” ................ 63 
`Claim element 14[d]: “receiving” limitation ................. 64 
`c. 
`Claim element 14[e]: “causing” limitation .................... 64 
`d. 
`Poison Java in view of Shin Renders Claim 1 Obvious under 35
`U.S.C. § 103(a) ................................................................................... 65 
`1. 
`Independent Claim 1 ................................................................ 65 
`a. 
`Claim element 1[c]: “determining” limitation ............... 65 
`Poison Java in view of Brown Renders Claims 14, 19, and 34
`Obvious under 35 U.S.C. § 103(a) ..................................................... 67 
`1. 
`Independent Claim 14 .............................................................. 67 
`a. 
`Claim element 14[a]: “computer program product” ...... 67 
`b. 
`Claim element 14[c]: “information re-
`communicator” and “mobile code executor” ................ 68 
`Claim element 14[d]: “receiving” limitation ................. 69 
`
`c. 
`
`
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`
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`-ii-
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`Blue Coat Systems - Exhibit 1002 Page 3
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`Table of Contents
`Continued
`
`Page
`
`2. 
`
`d. 
`Claim element 14[e]: “causing” limitation .................... 69 
`Independent Claim 34 .............................................................. 70 
`a. 
`Claim element 34[b]: “mobile code executor” .............. 70 
`VII.  SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............. 71 
`VIII.  CONCLUSION ............................................................................................. 72 
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`-iii-
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`Blue Coat Systems - Exhibit 1002 Page 4
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`1.
`
`I, Aviel Rubin, declare as follows:
`
`2.
`
`I have personal knowledge of the facts stated in this declaration, and
`
`could and would testify to these facts under oath if called upon to do so.
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Palo Alto Networks, Inc. in this
`
`case as an expert in the relevant art. I am being compensated for my work at the
`
`rate of $688 per hour. No part of my compensation is contingent upon the outcome
`
`of this petition.
`
`4.
`
`I was asked to study U.S. Patent 7,647,633 (the “ʼ633 patent”), its
`
`prosecution history, and the prior art and to render opinions on the obviousness or
`
`non-obviousness of certain claims of the ʼ633 patent (the “Petitioned Claims”) in
`
`light of the teachings of the prior art, as understood by a person of ordinary skill in
`
`the art in the 2000-2001 timeframe.
`
`B.
`5.
`
`Summary of Opinions
`
`After studying the ʼ633 patent, its file history, and the prior art, and
`
`considering the subject matter of the claims of the ʼ633 patent in light of the state
`
`of technical advancement in the field of mobile-code security in the 2000-2001
`
`timeframe, I reached the following conclusions:
`
`1
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`Blue Coat Systems - Exhibit 1002 Page 5
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`a) By the year 2000, techniques for identifying mobile code in
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`network traffic were already well known to those of ordinary
`
`skill in the art.
`
`b) By the year 2000, hybrid solutions for mobile-code security
`
`combining server/gateway-based scanning of data traffic and
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`client-side runtime monitoring of mobile code instrumented at
`
`the server/gateway was already well known.
`
`c) By the year 2000, it was already well known to apply and
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`enforce security policies on client computers in conjunction
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`with runtime monitoring of the instrumented mobile code.
`
`d) By the year 2000, the concept of sandboxing mobile code
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`through code rewriting or instrumentation was also well known.
`
`6.
`
`I have reviewed Petitioner’s Petition for Inter Partes Review of
`
`claims 1–4, 6–8, 13, 14, 19, 28, and 34 of the ʼ633 patent (the “Petitioned
`
`Claims”), and I agree with all of the grounds of invalidity presented therein. In
`
`light of that review and my general conclusions above, and as explained in more
`
`detail throughout this declaration, it is therefore my opinion that each of the
`
`Petitioned Claims was invalid as obvious in the 2000-2001 timeframe in light of
`
`the knowledge of skill in the art at that time and the teachings, suggestions, and
`
`2
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`Blue Coat Systems - Exhibit 1002 Page 6
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`motivations present in the prior art.
`
`C. Qualifications and Experience
`7.
`I possess the knowledge, skills, experience, training and the education
`
`to form an expert opinion and testimony in this matter. I have 22 years of
`
`experience in the field of computer science, and specifically, in Internet and
`
`computer security.
`
`Education
`
`1.
`I received my Ph.D. in Computer Science and Engineering from the
`
`8.
`
`University of Michigan, Ann Arbor in 1994, with a specialty in computer security
`
`and cryptographic protocols. My thesis was titled “Nonmonotonic Cryptographic
`
`Protocols” and concerned authentication in long-running networking operations.
`
`Career
`
`2.
`I will discuss my current position as a professor first, followed by a
`
`9.
`
`synopsis of my career and work from when I received my Ph.D. to the present.
`
`10.
`
`I am currently employed as Professor of Computer Science at Johns
`
`Hopkins University, where I perform research, teach graduate courses in computer
`
`science and related subjects, and supervise the research of Ph.D. candidates and
`
`other students. Courses I have taught include Security and Privacy in Computing
`
`and Advanced Topics in Computer Security. I am also the Technical Director of
`
`the Johns Hopkins University Information Security Institute, the University’s focal
`
`3
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`Blue Coat Systems - Exhibit 1002 Page 7
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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`point for research and education in information security, assurance, and privacy.
`
`The University, through the Information Security Institute’s leadership, has been
`
`designated as a Center of Academic Excellence in Information Assurance by the
`
`National Security Agency and leading experts in the field. The focus of my work
`
`over my career has been computer security, and my current research concentrates
`
`on systems and networking security, with special attention to software and network
`
`security.
`
`11. After receiving my Ph.D., I began working at Bellcore in its
`
`Cryptography and Network Security Research Group from 1994 to 1996. During
`
`this period I focused my work on Internet and Computer Security. While at
`
`Bellcore, I published an article titled “Blocking Java Applets at the Firewall” about
`
`the security challenges of dealing with JAVA applets and firewalls, and a system
`
`that we built to overcome those challenges.
`
`12.
`
`In 1997, I moved to AT&T Labs, Secure Systems Research
`
`Department, where I continued to focus on Internet and computer security. From
`
`1995 through 1999, in addition to my work in industry, I served as Adjunct
`
`Professor at New York University, where I taught undergraduate classes on
`
`computer, network and Internet security issues.
`
`4
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`Blue Coat Systems - Exhibit 1002 Page 8
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`13.
`
`I stayed in my position at AT&T until 2003, when I left to accept a
`
`full time academic position at Johns Hopkins University. The University promoted
`
`me to full professor with tenure in April, 2004.
`
`14.
`
`I serve, or have served, on a number of technical and editorial
`
`advisory boards. For example, I served on the Editorial and Advisory Board for the
`
`International Journal of Information and Computer Security. I also served on the
`
`Editorial Board for the Journal of Privacy Technology. I have been Associate
`
`Editor of IEEE Security and Privacy Magazine, and served as Associate Editor of
`
`ACM Transactions on Internet Technology. I am currently an Associate Editor of
`
`the journal Communications of the ACM. I was an Advisory Board Member of
`
`Springer’s Information Security and Cryptography Book Series. I have served in
`
`the past as a member of the DARPA Information Science and Technology Study
`
`Group, a member of the Government Infosec Science and Technology Study
`
`Group of Malicious Code, a member of the AT&T Intellectual Property Review
`
`Team, Associate Editor of Electronic Commerce Research Journal, Co-editor of
`
`the Electronic Newsletter of the IEEE Technical Committee on Security and
`
`Privacy, a member of the board of directors of the USENIX Association, the
`
`leading academic computing systems society, and a member of the editorial board
`
`of the Bellcore Security Update Newsletter.
`
`5
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`Blue Coat Systems - Exhibit 1002 Page 9
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`15.
`
`I have spoken on information security and electronic privacy issues at
`
`more than 50 seminars and symposia. For example, I presented keynote addresses
`
`on the topics “Security of Electronic Voting” at Computer Security 2004 Mexico
`
`in Mexico City in May 2004; “Electronic Voting” to the Secure Trusted Systems
`
`Consortium 5th Annual Symposium in Washington DC in December 2003;
`
`“Security Problems on the Web” to the AT&T EUA Customer conference in
`
`March, 2000; and “Security on the Internet” to the AT&T Security Workshop in
`
`June 1997. I also presented a talk about hacking devices at the TEDx conference in
`
`October, 2011.
`
`16.
`
`I was founder and President of Independent Security Evaluators (ISE),
`
`a computer security consulting firm, from 2005-2011. In that capacity, I guided
`
`ISE through the qualification as an independent testing lab for Consumer Union,
`
`which produces Consumer Reports magazine. As an independent testing lab for
`
`Consumer Union, I managed an annual project where we tested all of the popular
`
`anti-virus products. Our results were published in Consumer Reports each year for
`
`three consecutive years.
`
`17.
`
`I am currently the founder and managing partner of Harbor Labs, a
`
`software and networking consulting firm.
`
`18. As is apparent from the above description, virtually my entire
`
`professional career has been dedicated to issues relating to information and
`
`6
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`Blue Coat Systems - Exhibit 1002 Page 10
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`network security. Moreover, through my consulting work and my work at AT&T
`
`and Bellcore, I am familiar with the practical aspects of designing, analyzing, and
`
`deploying security applications in network environments.
`
`Publications:
`
`3.
`I am a named inventor on ten United States patents, all in the
`
`19.
`
`information security area. The patent numbers and titles as well as my co-inventors
`
`are listed on the attached curriculum vitae. (See Ex. 1084.)
`
`20.
`
`In March, 2004, I was asked by the Federal Trade Commission to
`
`submit a report commenting on the viability and usefulness of a national do not e-
`
`mail registry. I submitted my report entitled “A Report to the Federal Trade
`
`Commission on Responses to Their Request For Information on Establishing a
`
`National Do Not E-mail Registry” on May 10, 2004.
`
`21.
`
`I have also testified before Congress regarding the security issues with
`
`electronic voting machines and in the United States Senate on the issue of
`
`censorship. I also testified in Congress on November 19, 2013 about security
`
`issues related to the government’s Healthcare.gov web site.
`
`22.
`
`I am author or co-author of five books regarding information security
`
`issues: Brave New Ballot, Random House, 2006; Firewalls and Internet Security
`
`(second edition), Addison Wesley, 2003; White-Hat Security Arsenal, Addison
`
`Wesley, 2001; Peer-to-Peer, O’Reilly, 2001; and Web Security Sourcebook, John
`
`7
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`Blue Coat Systems - Exhibit 1002 Page 11
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`Wiley & Sons, 1997. I am also the author of numerous journal and conference
`
`publications.
`
`4.
`Curriculum Vitae
`23. Additional details of my education and employment history, recent
`
`professional service, patents, publications, and other testimony are set forth in my
`
`current curriculum vitae, attached to this declaration as Ex. 1084.
`
`D. Materials Considered
`24. My analysis is based on my experience in the computer industry since
`
`1994, including the documents I have read and authored and systems I have
`
`developed and used since then.
`
`25. Furthermore, I have reviewed the various relevant publications from
`
`the art at the time of the alleged invention and the invalidity proofs that are
`
`included in the Petition for Inter Partes Review of the ʼ633 patent, to which this
`
`Declaration relates. Based on my experience as a person having ordinary skill in
`
`the art (“POSA”) at the time of the alleged invention, the references accurately
`
`characterize the state of the art at the relevant time. Specifically, I have reviewed
`
`the following:
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,647,633 (“Edery et al.”)
`1003
`90/013,016, Final Office Action (“633 Reexam”) (May 22, 2015)
`
`Description of Document
`
`8
`
`Blue Coat Systems - Exhibit 1002 Page 12
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`Description of Document
`
` 1008
`
`Eva Chen “Poison Java” IEEE Spectrum (1999)
`2015-09-10 Declaration of Gerard P. Grenier in support of the “Poison
`Java” reference
`1006 Webpage: Workshop and Miscellaneous Publications, Insik Shin
`1007 Webpage: Filewatcher – 7/27/98
`Ian Welch and Robert Stroud “Kava – A Reflective Java Based on
`Bytecode Rewriting” (January 1999)
`Shin Insik and John C. Mitchell “Java Bytecode Modification and
`Applet Security” (1998)
`1010
`Carey Nachenberg “The Evolving Virus Threat”
` 1011 David M. Chess “Security Issues in Mobile Code Systems” (1998)
`R. Braden and J. Postel “Requirements for Internet Gateways” (June
`1987)
`1013
`International Publication No. WO 9821683 to (“Touboul”).
`1014 U.S. Patent No. 6,088,803 (“Tso”)
`1015 U.S. Patent No. 5,889,943 (“Ji”)
`Li Gong et al. “Going Beyond the Sandbox: An Overview of the New
`Security Architecture in the Java Development Kit 1.2” (1997)
`1017 Webpage: Oracle - Java Security Architect
`Paul Sabanal, Mark Yason, and Mark Vincent “Digging Deep Into the
`Flash Sandboxes” (2012)
`1019 Webpage: Oracle - Deploying With the Applet Tag
`1020 Yougang Song et al. “BRSS: A Binary Rewriting Security System for
`Mobile Code”
`1021 Yougang Song and Brett D. Fleisch “Utilizing Binary Rewriting for
`Improving End-host Security” IEEE Vol. 18, No. 12 (Dec. 2007)
`Stephen McCamant and Greg Morrisett “Efficient, Verifiable Binary
`Sandboxing for CISC Architecture”
`
`Exhibit
`No.
`1004
`
`1005
`
`1009
`
`1012
`
`1016
`
`1018
`
`1022
`
`9
`
`Blue Coat Systems - Exhibit 1002 Page 13
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`1025
`
`1026
`
`1027
`
`1028
`
`1033
`
`1034
`
`Description of Document
`
`Exhibit
`No.
`1023 Virus Bulletin (March 1991)
`1024
`Patent Application 11/159,455 Office Action – Non-Final Rejection
`Patent Application 11/159,455 – Patent Owner Amendment and
`Response to Office Action Under 37.C.F.R. §1.111
`Patent Application 11/159,455 - Notice of Allowance and Fee(s) due
`(May 26, 2009)
`90/013,016 Reexam Non-Final Office Action (November 19, 2013)
`90/013,016 Reexam Supplemental Amendment to Correct Priority
`Paragraphs Required by 37 CFR §§ 1.78 (August 25, 2014)
`1029
`90/013,016 Reexam Notice of Appeal (June 22, 2015)
`1030
`Patent Application 11/159,455 Data Sheet
`1031 U.S. Pat. No. 6,804,780 to Touboul
`1032 U.S. Pat. No. 6,480,962 to Touboul
`Plaintiff Finjan, Inc.’s Reply Claim Construction Brief, Finjan, Inc. v.
`Blue Coat Systems, Inc., 13-cv-3999-BLF (July 7, 2014)
`Joint Post-Hearing Claim Construction Chart, Ex. A, Finjan Software,
`Ltd. v. Secure Computing Corporation et al. 06-cv-369-GMS (October
`30, 2007)
`Plaintiff Finjan, Inc.’s Opening Claim Construction Brief, Finjan, Inc.
`1035
`v. Websense, Inc., 13-cv-4398-BLF (September 23, 2014.)
`1036 Order Construing Claims, Finjan, Inc. v. Blue Coat Systems, Inc., 13-
`cv-3999-BLF (October 20, 2014)
`Plaintiff Finjan, Inc.’s Opening Claim Construction Brief, Finjan, Inc.
`v. Proofpoint, Inc. and Armorize Technologies, Inc., 5:13-cv-5808-
`HSG (May 1, 2015)
`Claim Construction Order, Finjan Software, Ltd. v. Secure Computing
`et al. 06-cv-369-GMS (December 11, 2007)
`Plaintiff Finjan, Inc.’s Opening Claim Construction Brief, Finjan, Inc.
`v. Blue Coat Systems, Inc., 13-cv-3999-BLF (June 16, 2014)
`Provisional Application No. 60/205,591
`
`1037
`
`1038
`
`1039
`1040
`
`10
`
`Blue Coat Systems - Exhibit 1002 Page 14
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`Exhibit
`Description of Document
`No.
`1041 Mark Brown “Using Netscape 3,” (1996)
`90/013,016 Reexam Response to Non-Final Office Action (February
`1042
`19, 2014)
`Finjan Investor Presentation, Q1 (2013)
`1043
`Dr. Frederick Cohen “Computer Viruses: Theory and Experiments”
`1044
`(1987)
`Thomas M. Chen and Jean-Marc Robert “The Evolution of Viruses
`1045
`and Worms”
`1046 Virus Bulletin Issue Archive
`Sandeep Kumar and Eugene H. Spafford “A Generic Virus Scanner in
`1047
`C++,” (September 17, 1992)
`1048 Morgan B. Adair “Detecting Viruses in the NetWare Environment”
`1049 Virus Bulletin (November 1991)
`1050 Virus Bulletin, (December 1991)
`1051 Webpage: McAfee Antivirus product page
`1052 Webpage: Norton Antivirus product page
`1053 Webpage: Information Security StackExchange
`1054 Webpage: W3Schools, JavaScript Tutorial page
`Sarah Gordon and David Chess “Attitude Adjustment: Trojans and
`1055
`Malware on the Internet: An Update”
`Andreas Moser et al. “Limits of Static Analysis for Malware
`Detection”
`Ian Goldberg “A Secure Environment for Untrusted Helper
`1057
`Applications (Confining the Wily Hacker)” (July 1996)
`1058 Wayne A. Jansen “Countermeasures for Mobile Agent Security”
`Byron Cook et al. “Proving Program Termination,” Communications
`1059
`of the ACM, Vol. 54, No. 5 (May 2011)
`1060 Webpage: Schneier on Security
`Javier Esparza “Decidability of Model Checking for Infinite-State
`1061
`Concurrent Systems”
`Edmund Clarke et al. “Model Checking and State Explosion Problem”
`1062
`
`1056
`
`11
`
`Blue Coat Systems - Exhibit 1002 Page 15
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`1070
`
`1071
`
`1069
`
`Exhibit
`Description of Document
`No.
`Drew Dean et al. “Java Security: From HotJava to Netscape and
`1063
`Beyond”
`1064 NSA Defense in Depth
`1065 Dr. Thomas Porter “The Perils of Deep Packed Inspection”
`Mark J. Smith et al. “Protecting a Private Network: The AltaVista
`1066
`Firewall”
`Check Point Firewall-I™ White Paper, Version 3.0 (June 1997)
`1067
`Emin Gün Sirer et al. “Design and Implementation of a Distributed
`1068
`Virtual Machine for Networked Computers”
`Intrusion Detection Systems Group Test (Edition 2) – An NSS Group
`Report
`Dries Vanoverberghe and Frank Piessens “A Caller-Side Inline
`Reference Monitor for an Object-Oriented Intermediate Language”
`Ulfar Erlingsson “The Inlined Reference Monitor Approach to
`Security Policy Enforcement” (2004)
`Ari Luotonen and Kevin Altis “World-Wide Web Proxies” (April
`1994)
`James Gosling and Henry McGilton “The Java™ Language
`1073
`Environment: A White Paper” (May 1996)
`1074 Webpage: “A Simple Guide to HTML”
`David M. Martin Jr. et al. “Blocking Java Applets at the Firewall”
`1075
`(1997)
`Eric Perlman and Ian Kallen “Common Internet File Formats”
`1076
`“Developing Stored Procedures in Java: An Oracle Technical White
`1077
`Paper” (April 1999)
`Larry L. Peterson et al. “OS Support for General-Purpose Routers”
`1078
`Roel Wieringa “Traceability and Modularity in Software Design”
`1079
`1080 U.S. Patent No. 6,434,499 (“Ulrich”)
`90/013,016 Reexam Renewed Petition to Accept Unintentionally
`1081
`Delayed Priority Claim Under 37 C.F.R. § 1.78
`2015-09-13 Declaration of Peter Kent in support of the “Brown”
`1082
`reference
`1083 U.S. Patent No. 7,058,822 (“Edery”)
`
`1072
`
`12
`
`Blue Coat Systems - Exhibit 1002 Page 16
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`Exhibit
`Description of Document
`No.
`Provisional Application No. 60/030,639
`1085
`1086 U.S. Patent No. 6,092,194 (“Touboul”)
`1087 U.S. Patent No. 6,167,520 (“Touboul”)
`2014-02-18 Phil Hartstein declaration in 90/013,016 Reexam
`1088
`90/013,016 Reexam Final Rejection (September 8, 2014)
`1089
`1090 Webpage: Finjan Software Company Overview
`Excerpted Markman Hearing Transcript, Finjan, Inc. v. Blue Coat
`1091
`Systems, Inc., 13-cv-3999-BLF (August 22, 2014)
`1092 Affidavit of Christopher Butler of the Internet Archive (“Brown”)
`1093 Affidavit of David Sherfesee of Alexa Internet
`1094 U.S. Application No. 09/861,229
`1095 Affidavit of Christopher Butler of the Internet Archive (“Shin”)
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`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`26.
`I am not a patent attorney, nor have I independently researched the
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`law on patent validity. Attorneys for the Petitioner have explained certain legal
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`principles to me that I have relied upon in forming my opinions set forth in this
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`report.
`
`A.
`27.
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`Person Having Ordinary Skill in the Art (“POSA”)
`
`I understand that I must undertake my assessment of the claims of the
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`ʼ633 patent from the perspective of what would have been known or understood by
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`a POSA as of the earliest claimed priority date of the patent claim.
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`28. Counsel has advised me that to determine the appropriate level of one
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`13
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`Blue Coat Systems - Exhibit 1002 Page 17
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`of ordinary skill in the art, I may consider the following factors: (a) the types of
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`problems encountered by those working in the field and prior art solutions thereto;
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`(b) the sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`29. The relevant technology field for the ʼ633 patent is security programs,
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`including content scanners for program code. Based on this, and the four factors
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`above, it is my opinion that POSA would hold a bachelor’s degree or the
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`equivalent in computer science (or related academic fields) and three to four years
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`of additional experience in the field of computer security, or equivalent work
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`experience. This definition of the POSA would not change whether the time of the
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`alleged invention is deemed to be 1997 or 2001.
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`30. Unless otherwise specified, when I mention a POSA or someone of
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`ordinary skill, I am referring to someone with the above level of knowledge and
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`understanding.
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`31. Based on my experiences, I have a good understanding of the
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`capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to
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`being a person of at least ordinary skill in the art, I have worked closely with many
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`such persons over the course of my career, and I have regularly taught material
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`fundamental to the art in my role as professor and researcher over the past 22
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`14
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`Blue Coat Systems - Exhibit 1002 Page 18
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`years.
`
`B.
`32.
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`Prior Art
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`I understand that the law provides categories of information that
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`constitute prior art that may be used to anticipate or render obvious patent claims.
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`To be prior art to a particular patent under the relevant law, a reference must have
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`been made, known used, published, or patented, or be the subject of a patent
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`application by another, before the priority date of the patent. I also understand that
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`the POSA is presumed to have knowledge of the relevant prior art.
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`33. As discussed below, I understand that the Petitioner has determined
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`that various claims of the ʼ633 patent are entitled to different priority dates. These
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`dates range from 2000 to 2001. However, other than the differences in which art is
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`considered prior art, my conclusions and discussion in this declaration would not
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`be substantively different regardless of which date in that range is ascribed to the
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`POSA.
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`C. Broadest Reasonable Interpretations
`34.
`I understand that, in Inter Partes Review, the claim terms are to be
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`given their broadest reasonable interpretation (BRI) in light of the specification.
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`See 37 C.F.R. § 42.100(b). In performing my analysis and rendering my opinions, I
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`have interpreted claim terms for which the Petitioner has not proposed a BRI
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`construction by giving them the ordinary meaning they would have to a POSA,
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`15
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`Blue Coat Systems - Exhibit 1002 Page 19
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`

`
`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`reading the ʼ633 patent with its effective filing date in mind (May 17, 2000, or
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`May 17, 2001, depending on the particular petitioned claim at issue), and in light
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`of its specification and file history.
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`D.
`35.
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`Standards for Anticipation and Obviousness
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`I understand that 35 U.S.C. §§ 102 and 103 contain a variety of
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`requirements for obtaining a patent. I understand that pursuant to those sections,
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`a patent is invalid if it was anticipated or rendered obvious by the prior art.
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`36.
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`I understand that the Model Patent Jury Instructions for the Northern
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`District of California (June 17, 2014) provide the following instructions for
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`anticipation and obviousness:
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`4.3a1 ANTICIPATION
`A patent claim is invalid if the claimed invention is not
`new. For the claim to be invalid because it is not new, all
`of its requirements must have existed in a single device
`or method that predates the claimed invention, or must
`have been described in a single previous publication or
`patent that predates the claimed invention. In patent law,
`these previous devices, methods, publications or patents
`are called “prior art references.” If a patent claim is not
`new we say it is “anticipated” by a prior art reference.
`The description in the written reference does not have to
`be in the same words as the claim, but all of the
`requirements of the claim must be there, either stated or
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`16
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`Blue Coat Systems - Exhibit 1002 Page 20
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`

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`Declaration of Aviel D. Rubin
`Petition for Inter Partes Review of Patent No. 7,647,633
`
`
`necessarily implied, so that someone of ordinary skill in
`the field of [identify field] looking at that one reference
`would be able to make and use the claimed invention.
`Here is a list of the ways that [alleged infringer] can
`show that a patent claim was not new [use those that
`apply to this case]:
`[– if the claimed invention was already publicly known
`or publicly used by others in the United States before
`[insert date of conception unless at issue];]
`[– if the claimed invention was already patented or
`described in a printed publication anywhere in the world
`before [insert date of conception unless at issue]. [A
`reference is a “printed publication” if it is accessible to
`those interested in the field, even if it is difficult to
`find.];]
`[– if the claimed invention was already made by someone
`else in the United States before [insert date of conception
`unless in issue], if that other person had not abandoned
`the invention or kept it secret;]
`[– if the claimed invention was already described in
`another issued U.S. patent or published U.S. patent
`application that was based on a patent application filed
`before [insert date of the patent holder’s application
`filing date] [or] [insert date of conception unless at
`issue];]
`
`17
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`Blue Coat Systems - Exhibit 1002 Page 21
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`

`
`Decl