UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-00492
`Patent 6,804,780
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘780 PATENT ......................................................................................... 5
`
`A. Overview of the ‘780 Patent .................................................................. 5
`
`B.
`
`The Challenged Claims ......................................................................... 7
`
`III. The Board Should Dismiss The Petition Because it is Unquestionably
`Time Barred Under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b) ............. 10
`
`A.
`
`Petitioner’s Motion for Joinder Should be Denied as it Seeks to
`Join a Proceeding That Has Already Been Denied ............................. 10
`
`B. Granting Petitioner’s Joinder Request Would Defeat the
`Purpose of the Time Bar Under 35 U.S.C. § 315(b) and the
`Estoppel Provisions of 35 U.S.C. § 315(e) ......................................... 12
`
`IV. CLAIM CONSTRUCTION .......................................................................... 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`“performing a hashing function on the Downloadable and the
`fetched software components to generate a Downloadable ID”
`(all claims) ........................................................................................... 15
`
`“Downloadable” (all claims) ............................................................... 19
`
`“Downloadable ID” (all claims) .......................................................... 19
`
`“means for obtaining a Downloadable” / “means for fetching at
`least one software component” / “means for performing a
`hashing function” (claim 17) ............................................................... 21
`
`V.
`
`SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES
`REVIEW SHOULD NOT BE INSTITUTED ............................................... 23
`
`A.
`
`Claims 1–18 are Patentable Over Rubin in view of Waldo ................ 24
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`1.
`
`2.
`
`3.
`
`4.
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
`
`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 the
`Downloadable” (claims 1, 9, 17, and 18) ................................. 27
`
`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) ............................... 32
`
`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) .............................................................. 37
`
`The Petition Provides Inadequate Motivation to Combine
`the Rubin and Waldo References .............................................. 40
`
`(a) The Proposed Combination of Rubin and Waldo is
`a Result of Hindsight Bias .............................................. 41
`
`(b)
`
`Statements Made by Petitioner’s Declarant Should
`Not Be Considered As They Rely on
`Impermissible Incorporation by Reference .................... 43
`
`B.
`
`Petitioner’s Obviousness Arguments Fail as a Matter of Law
`Because it did not Conduct a Complete Obviousness Analysis ......... 46
`
`1.
`
`2.
`
`3.
`
`Petitioner Fails to Identify the Differences Between the
`Prior Art and the Challenged Claims ........................................ 46
`
`Petitioner Fails to Identify the Level of One of Ordinary
`Skill in the Art ........................................................................... 48
`
`Petitioner Fails to Address Secondary Considerations of
`Nonobviousness ........................................................................ 49
`
`VI. CONCLUSION .............................................................................................. 50
`
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................... 30, 47
`
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .......................................................................... 46
`
`In re Baxter Int’l, Inc.,
`678 F.3d 1357 (Fed. Cir. 2012) .......................................................................... 16
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 17
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`Case No. IPR2014-00454, Paper 12 (P.T.A.B. Aug. 29, 2014) ......................... 44
`
`Corning Inc. v. DSM IP Assets B.V.,
`Case No. IPR2013-00043, Paper No. 95 (P.T.A.B. May 1, 2014) ... 31, 36, 37, 39
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .......................................................................... 15
`
`Google Inc. v. EveryMD.com LLC,
`Case No. IPR2014-00347, Paper 9 (P.T.A.B. May 22, 2014) ............................ 47
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 46
`
`Insite Vision Inc. v. Sandoz, Inc.,
`783 F.3d 853 (Fed. Cir. 2015) ............................................................................ 43
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) .......................................................................... 19
`
`KSR Int'l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 40, 43, 46
`
`Linear Tech. Corp. v. In-Depth Test LLC,
`Case No. IPR2015-01994, Paper No. 7 (P.T.A.B. Oct. 20, 2015) ................. 2, 11
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`Patent Owner’s Preliminary Response
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`Leo Pharm. Prods., Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .................................................................... 41, 49
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 17
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case No. IPR2016-00165, Paper No. 7 (P.T.A.B. Apr. 21, 2016) ........... 1, 11, 52
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .......................................................................... 17
`
`Plantronics, Inc. v. Aliph, Inc.,
`724 F.3d 1343 (Fed. Cir. 2013) .......................................................................... 49
`
`Ruiz v. A.B. Chance Co.,
`234 F.3d 654 (Fed. Cir. 2000) ............................................................................ 46
`
`Sophos, Inc. v. Finjan, Inc.,
`IPR2015-00907, Paper 8 (P.T.A.B. Sept. 24, 2015) ........................................... 19
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) .................................................................... 18, 32
`
`Symantec Corp. v. Finjan, Inc.,
`Case No. IPR2015-01547, Paper 9 (P.T.A.B. Jan. 14, 2016) ......................... 1, 39
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`Case No. IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) .......................... 47
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ........................................................ 16, 17, 20, 21
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`Case No. CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ......................... 4
`
`Statutes
`
`35 U.S.C. § 102 ........................................................................................................ 23
`
`35 U.S.C. § 103(a) ............................................................................................. 24, 46
`
`35 U.S.C. § 112(f) .................................................................................................... 21
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`Patent Owner’s Preliminary Response
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`35 U.S.C. § 311(b) ................................................................................................... 23
`
`35 U.S.C. §§ 315 .................................................................................... 11, 12, 13, 14
`
`Other Authorities
`
`37 C.F.R. 42.101(b) ................................................................................................. 10
`
`37 C.F.R. § 42.6(a)(3) ........................................................................................ 44, 48
`
`37 C.F.R. § 42.22(a)(2) ...................................................................................... 33, 48
`
`37 C.F.R. § 42.65(a) ..................................................................................... 18, 40, 44
`
`37 C.F.R. § 42.100(b) .............................................................................................. 15
`
`37 C.F.R. §42.101(b) ........................................................................................... 1, 10
`
`37 C.F.R § 42.104(b)(4) ............................................................................... 33, 38, 48
`
`37 C.F.R. § 42.122(b) .............................................................................................. 12
`
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
`
`I.
`
`INTRODUCTION
`
`On January 21, 2016, Blue Coat Systems, Inc., (“Petitioner” or “Blue Coat”)
`
`submitted a Petition to institute an inter partes review (“IPR”) challenging claims
`
`1–18 of U.S. Patent No. 6,804,780 (Ex. 1001, “the ‘780 Patent”). The instant
`
`Petition is unquestionably time-barred under 35 U.S.C. § 315(b) and 37 C.F.R.
`
`§42.101(b). In an effort to evade the statutory timing restriction, Blue Coat seeks
`
`to join a rejected inter partes review brought by Palo Alto Networks, Inc. (“Palo
`
`Alto Networks”), namely Palo Alto Networks, Inc. v. Finjan, Inc., Case No.
`
`IPR2016-00165 (“the ‘165 Case”).1 See Motion for Joinder, Blue Coat Systems,
`
`Inc., v. Finjan, Inc., Paper No. 4 (“Joinder Motion”) (requesting to join Palo Alto
`
`Networks, Inc. v. Finjan, Inc., Case No. IPR2016-00165 (“the ‘165 Case”); see
`
`also Ex. 2002, Decision Denying Institution of Inter Partes Review, Palo Alto
`
`Networks, Inc. v. Finjan, Inc., Case No. IPR2016-00165, Paper No. 7 (P.T.A.B.
`
`Apr. 21, 2016) (denying institution of inter partes review of the ‘165 Case).
`
`Finjan, Inc. (“Patent Owner” or “Finjan”) requests that the Board deny the
`
`Petition at least because 35 U.S.C. § 315(b) and 37 C.F.R. §42.101(b) prohibit
`
`Petitioner’s time-barred Petition.
`
`1 Petitioner states that its Petition “in fact is practically a copy of Palo Alto
`
`Networks’ petition with respect to the proposed grounds, including the same
`
`analysis of the prior art and expert testimony.” Joinder Motion at 1.
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`Patent Owner also requests that the Petition and Petitioner’s Joinder Motion
`
`be denied because the Board already denied institution of inter partes review of the
`
`‘165 Case, which is the very case that Petitioner seeks to join. Because “a request
`
`for joinder is appropriate only if a decision granting institution has been entered in
`
`the inter partes review for which joinder is requested,” and the inter partes review
`
`that Petitioner’s motion is requested for has already been denied, joinder is not
`
`appropriate. See Linear Tech. Corp. v. In-Depth Test LLC, Case No. IPR2015-
`
`01994, Paper No. 7 at 4 (P.T.A.B. Oct. 20, 2015)(“It is clear from both the statute
`
`and the rule that a request for joinder is appropriate only if a decision granting
`
`institution has been entered in the inter partes review for which joinder is
`
`requested.”).
`
`In any case, Petitioner’s Petition should be denied for the same reasons the
`
`‘165 Case was denied, as discussed below.
`
`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
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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
`
`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.
`
`Furthermore, the references cited in the Petition do not disclose Finjan’s
`
`approach to computer security. The primary reference, Rubin U.S. Patent No.
`
`5,638,446 (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.
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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
`
`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. See
`
`Travelocity.com L.P. v. Conos Techs., LLC, Case No. CBM2014-00082, Paper 12
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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
`
`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
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`
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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
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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
`
`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 ‘780 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.
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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.
`
`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;
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`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.”
`
`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
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`depends from claim 9 and recites, “wherein the ID generator fetches all software
`
`components referenced by the Downloadable.”
`
`III. THE BOARD SHOULD DISMISS THE PETITION BECAUSE IT IS
`UNQUESTIONABLY TIME BARRED UNDER 35 U.S.C. § 315(B) AND 37 C.F.R.
`§ 42.101(B)
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
`
`which the petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent.” See also 37 C.F.R. 42.101(b)
`
`(mirroring the language of section 315(b) in dictating “who may petition for inter
`
`partes review.”). Petitioner admits that “[a] complaint alleging infringement of the
`
`’780 patent was served on Petitioner more than a year before the date of this
`
`Petition….” See Petition at 5; see also Joinder Motion at 2 (conceding that
`
`Petitioner was served with a complaint alleging infringement of the ‘780 Patent on
`
`Aug. 28, 2013, which is more than 2 years before the instant Petition was filed).
`
`Thus, Petitioner’s belated request for inter partes review of the ‘780 Patent should
`
`be denied at least because the Petition is prohibited under the time-bar set forth by
`
`35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b).
`
`A.
`
`Petitioner’s Motion for Joinder Should be Denied as it Seeks to
`Join a Proceeding That Has Already Been Denied
`
`Because Petitioner seeks to join a proceeding that has already been denied
`
`by the Board, its Joinder Motion should be denied as the law dictates that joinder
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`Patent Owner’s Preliminary Response
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`cannot be appropriate where there is no “decision granting institution has been
`
`entered in the inter partes review for which joinder is requested.” See Linear
`
`Tech. Corp., Case No. IPR2015-01994, Paper No. 7 at 4 (“It is clear from both the
`
`statute and the rule that a request for joinder is appropriate only if a decision
`
`granting institution has been entered in the inter partes review for which joinder is
`
`requested.”). Indeed, on April 21, 2016, the Board denied institution of inter
`
`partes review of the very case that Petitioner seeks to join, namely the ‘165 Case.
`
`See Ex. 2002, Decision Denying Institution of Inter Partes Review, Palo Alto
`
`Networks, Inc. v. Finjan, Inc., Case No. IPR2016-00165, Paper No. 7 (P.T.A.B.
`
`Apr. 21, 2016). Thus, joinder should be denied as “the inter partes review for
`
`which joinder is requested” was denied.
`
`In fact, under 35 U.S.C. § 315(c) it is clear that the Director may only join a
`
`party to an inter partes review proceeding after the proceeding has been instituted:
`
`If the Director institutes an inter partes review, the Director, in his
`or her discretion, may join as a party to that inter partes review any
`person who properly files a petition under section 311 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added). The conditional phrase highlighted above
`
`leaves no doubt that a motion for joinder is only appropriate when the case to be
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`joined is an instituted inter partes review proceeding. Similarly, the Patent Rules
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`provide that any request for joinder must be filed within one month of the
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`institution date of the inter partes review to be joined:
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`Joinder may be requested by a patent owner or petitioner. Any request
`for joinder must be filed, as a motion under §42.22, no later than one
`month after the institution date of any inter partes review for which
`joinder is requested. The time period set forth in §42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
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`37 C.F.R. § 42.122(b). That is, a request for joinder is a request to join an inter
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`partes review, which only exists after the Board’s institution decision.
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`Accordingly, Petitioner’s Joinder Motion should be denied as it seeks to join a
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`proceeding that has already been denied.
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`B. Granting Petitioner’s Joinder Request Would Defeat the Purpose
`of the Time Bar Under 35 U.S.C. § 315(b) and the Estoppel
`Provisions of 35 U.S.C. § 315(e)
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`On August 28, 2013, Patent Owner filed a complaint against Petitioner
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`alleging infringement of, inter alia, U.S. Patent Nos. 6,154,844 (“the ‘844 Patent”),
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`6,804,780 (“the ‘780 Patent”), 6,965,968 (“the ‘968 Patent”), 7,418,731 (“the ‘731
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`Patent”), and 7,647,633 (“the ‘633 Patent”), collectively “the challenged patents.”
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`The challenged patents are currently the subject of requests for inter partes review
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`in the following cases:
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`Case No.
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`Patent No. Original Petitioner
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`Status
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`IPR2015-01894
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`6,154,844
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`Symantec Corp.
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`Institution Denied
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`IPR2015-01974
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`7,647,633
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`Palo Alto Networks, Inc. Trial Instituted
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`IPR2015-02000
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`7,418,731
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`Palo Alto Networks, Inc.
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`Institution Denied
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`IPR2016-00149
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`6,965,968
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`Palo Alto Networks, Inc. Pending
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`IPR2016-00150
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`6,965,968
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`Palo Alto Networks, Inc. Pending
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`IPR2016-00165
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`6,804,780
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`Palo Alto Networks, Inc.
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`Institution Denied
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`Petitioner chose not to avail itself of the opportunity to file petitions for inter
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`partes review of the challenged patents within the one-year statutory period set
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`forth in 35 U.S.C. § 315(b), opting instead to prosecute its invalidity cases at the
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`district court, and thereby avoiding the estoppel provisions of 35 U.S.C. § 315(e).
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`On August 4, 2015, the jury in the district court case returned a verdict confirming
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`validity of the challenged patents:
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`Ex. 2003, Jury Verdict at 5, Finjan, Inc. v. Blue Coat Systems, Inc., No. 5-13-cv-
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`03999 (N.D. Cal. Aug. 4, 2015).
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`Now Petitioner seeks a bite of the apple it previously declined. This end run
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`around the provisions of 35 U.S.C. §§ 315(b) and 315(e) should not be
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`countenanced. The legislative history indicates that Congress established the
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`estoppel rules in order to balance “the need to encourage [the] use [of the inter
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`partes review] while at the same time preventing the serial harassment of patent
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`holders.” House Judiciary Transcript for Mark-Up of H.R. 1249, The America
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`Invents Act, at 72 (Apr. 14, 2011) (statement of Cong. Smith); see also 157 Cong.
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`Rec. S1041-42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) (speaking about the
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`need to avoid “serial challenges” and the resulting burden on the patent owners
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`from multiple proceedings involving the same patent). As the Committee Report
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`emphasized, the inter partes review proceedings “are not to be used as tools for
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`harassment… through repeated litigation and administrative attacks on the validity
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`of a patent. Doing so would frustrate the purpose of the section as providing quick
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`and cost effective alternatives to litigation.” H.R. Rep. No. 112-98, at 48 (2011),
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`as reprinted in 2011 U.S.C.C.A.N. 67, 78.
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`The one-year time bar provision of section 315(b) protects patent owners
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`from belated challenges to the validity of the patents they had asserted in a federal
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`court against potential infringers—such as the challenges that the time-barred Blue
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`Coat brought in the proceeding below over two years after having been served with
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`Finjan’s infringement complaint. Patent Owner, therefore, requests that the Board
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`exercise its discretion to deny Petitioner’s Motions for Joinder.
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`IV. CLAIM CONSTRUCTION
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`In an inter partes review proceeding, claims are given their broadest
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`reasonable interpretation (“BRI”) in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed.
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`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
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`approved the broadest reasonable interpretation standard in enacting the AIA.”).
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`A.
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`“performing a hashing function on the Downloadable and the
`fetched software components to generate a Downloadable ID” (all
`claims)
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`The term “performing a hashing function on the Downloadable and the
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`fetched software components to generate a Downloadable ID” does not require
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`construction. However, as a matter of full disclosure, the term was construed as
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`“performing a hashing function on the Downloadable together with its fetched
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`software components to generate a Downloadable ID” in the Finjan v. Blue Coat
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`case. Ex. 1009 at 4. Notably, in that litigation, the ‘780 Patent was found
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`Patent Owner’s Preliminary Response
`IPR2016-00492 (U.S. Patent No. 6,804,780)
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`infringed and valid over the prior art, including Waldo, which is at issue here.2
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`The Board should either decline to construe this term as its plain and ordinary
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`meaning is readily apparent to those of skill in the art or adopt the construction
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`adopted in the Finjan v. Blue Coat case. See In re Baxter Int’l, Inc., 678 F.3d
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`1357, 1365 (Fed. Cir. 2012) (“even with a more lenient standard of proof, the PTO
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`ideally should not arrive at a different conclusion.”).
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`Petitioner proposes that this claim term be construed as “generating a hash
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`value for the Downloadable and one or more hash values for its fetched software
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`components, wherein the hash values collectively identify the Downloadable and
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`its fetched software components, whether or not combined into a single hash.”
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`Petition at 10–11. Contrary to the law, Petitioner seeks to rewrite the claim
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`language to support its invalidity case—namely by removing the “generate a
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`Downloadable ID” language and replacing it with extraneous limitations such as
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`“collectively identify” and “whether or not combined into a single hash value.”
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`See Thorner v. Sony Computer Entm’t