UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BLUE COAT SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2016-01441
`Patent 8,225,408
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II. Overview of The ‘408 Patent ........................................................................... 2
`
`III. Claim Construction .......................................................................................... 8
`
`IV. The Petition is Moot Under 35 U.S.C. § 315(E)(1) ........................................ 8
`
`V.
`
`The Petition Should be Rejected Under 35 U.S.C. § 325(D) ........................ 10
`
`VI. The Petition Cannot be Considered Under 35 U.S.C. § 312 ......................... 15
`
`A.
`
`B.
`
`C.
`
`Petitioner Has Not Identified the Claims Challenged as
`Required Under 35 U.S.C. § 312(a)(3) or 37 C.F.R.
`§ 42.104(b)(1) ...................................................................................... 17
`
`Petitioner Has Not Paid the Full Fees Require Under 35 U.S.C.
`§ 312(a)(1) or 37 C.F.R. §§ 42.103(a) and 42.15(a) ........................... 20
`
`Petitioner Has Not Identified All Real-Parties-In-Interest Under
`35 U.S.C. § 312(a)(2) .......................................................................... 22
`
`VII. Because Petitioner failed to identify Symantec as a real-party in
`interest or identify the current entity that should be identified as
`Petitioner, this Petition should be denied under 35 U.S.C. §
`312(a)(2).The Proposed Combinations of Chandnani, Kolawa, nd
`Walls Do Not Invalidate Claims 1, 9, 23, and 29 of the ‘408 Patent ............ 23
`
`VIII. Petitioner’s Proposed Grounds 1 and 3 do not Invalidate Claims 2, 8,
`11, 24–28, or 30–34 Of The ‘408 Patent ....................................................... 24
`
`A. Grounds 1 and 3 Fail to Render Obvious Claims 26–28 and 32–
`34 ......................................................................................................... 25
`
`IX. Secondary Considerations of Non-Obviousness ........................................... 28
`
`A.
`
`Copying and Industry Praise ............................................................... 28
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`B.
`
`Commercial Success and Licensing .................................................... 30
`
`X.
`
`Conclusion ..................................................................................................... 36
`
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
`851 F.2d 1387 (Fed. Cir. 1988) .......................................................................... 31
`
`Finjan Software, Ltd. v. Secure Computing Corp.,
`No. 06-cv-00369-GMS (D. Del.) ........................................................................ 29
`
`Finjan v. Websense, Inc.,
`No. 13-CV-04398-BLF (N.D. Cal.) .................................................................... 32
`
`Ford Motor Co. v. Paice LLC,
`Case IPR2015-00767, Decision Denying Institution of ..................................... 13
`
`GrafTech Int’l Holdings, Inc., v. Laird Techs., Inc.,
`652 Fed. Appx. 973 (Fed. Cir. June 17, 2016) ................................................... 30
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`738 F.3d 1337 (Fed. Cir. 2013) .......................................................................... 28
`
`J.T. Eaton & Co. v. Atl. Paste & Glue Co.,
`106 F.3d 1563 (Fed. Cir. 1997) .......................................................................... 30
`
`Kofax, Inc., v. Uniloc USA, Inc.,
`Case No. IPR2015-01207Decision on Motion to Terminate Inter
`Partes Review, Paper 22 (PTAB June 2, 2016) ................................................. 10
`
`Life Techs. Corp. v. Unisone Strategic IP,
`Case CBM2016-00025 ....................................................................................... 12
`
`Minnesota Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics,
`Inc.,
`976 F.2d 1559 (Fed. Cir. 1992) .......................................................................... 35
`
`Oxford Nanopore Techs. LTD. v. University of Washington,
`Case IPR2015-00057, Paper 10 (PTAB Apr. 27, 2015) ..................................... 15
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`Case No. IPR2016-00157, Paper 3 (PTAB Nov. 17, 2015) ............................... 19
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`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`Praxair Distribution, Inc. v. Ino Therapeutics LLC,
`Case IPR2016-00781, Decision Denying Institution of ....................................... 9
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`Case IPR2012-00042, Paper 60 (PTAB Feb. 22, 2014) ..................................... 22
`
`Travelocity.com L.P., Priceline.com Inc. v. Cronos Techs., LLC,
`Case CBM2015-00047, Decision Denying Covered Business
`Machine Patent Review, Paper 7 (PTAB June 15, 2015) ................................... 13
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`Case CBM2014-00082, Paper 12 (PTAB Oct. 16, 2014) .................................. 24
`
`Unilever, Inc. v. Procter & Gamble Co.,
`Case IPR2014-00506, Paper 17 (PTAB July 7, 2014) ....................................... 15
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`Case IPR2013-00454, Decision Institution of .................................................... 11
`
`Statutes
`35 U.S.C. § 312(a)(3) ........................................................................................passim
`
`35 U.S.C. § 103 .................................................................................................. 19, 27
`
`35 U.S.C. § 311 .................................................................................................. 16, 18
`
`35 U.S.C. § 312 ................................................................................15, 16, 20, 22, 23
`
`35 U.S.C. § 315 ................................................................................2, 8, 9, 10, 16, 24
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 9
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.15(a) ............................................................................... 17, 21, 21, 22
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 14
`
`37 C.F.R. § 42.103 ....................................................................................... 17, 20, 22
`
`37 C.F.R. § 42.104 ....................................................................................... 17, 18, 20
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`37 C.F.R. § 42.106 ............................................................................................. 17, 22
`
`37 C.F.R. § 42.108 ..................................................................................................... 2
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) ........................................................ 9
`
`77 F.R. 48680, 48702 ............................................................................................... 12
`
`
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`EXHIBIT LIST
`
`
`
`Description
`
`Exhibit-2001 Reserved
`
`Exhibit-2002 Reserved
`
`Exhibit-2003 Reserved
`
`Exhibit-2004 Reserved
`
`Exhibit-2005 Reserved
`
`Exhibit-2006 Cisco Webpage – “What Is the Difference: Viruses, Worms,
`Trojans, and Bots?” – available at
`http://www.cisco.com/c/en/us/about/security-center/virus-
`differences.html
`
`Exhibit-2007 Reserved
`
`Exhibit-2008 Reserved
`
`Exhibit-2009 Reserved
`
`Exhibit-2010 Reserved
`
`Exhibit-2011 Reserved
`
`Exhibit-2012 Declaration of S.H. Michael Kim in Support of Patent Owner’s
`Preliminary Response
`
`Exhibit-2013 Declaration of Harry Bims, Ph.D. in Support of Patent Owner’s
`Preliminary Response to Petition with Appendix A (Curriculum
`Vitae of Harry Bims)
`
`Exhibit-2014 Finjan, Inc. v. Websense, Inc., Case No. 13-cv-04398 (N.D. Cal.),
`Appendix C (‘408 Patent Claim Chart) to Plaintiff Finjan, Inc.’s
`Disclosure of Asserted Claims and Infringement Contentions,
`dated February 28, 2014
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`
`
`Description
`
`Exhibit-2015 Websense, Inc. Revenue and Financial Data, available at
`http://www.hoovers.com/company-information/cs/revenue-
`financial.websense_inc.89ee9262879a5b65.html.
`
`Exhibit-2016 Websense, Inc. brochure - Triton APX (2015), available at
`https://www.websense.com/assets/brochures/brochure-triton-apx-
`en.pdf.
`
`Exhibit-2017 Finjan, Inc. v. Proofpoint Technologies, Inc. et al., Case No. 13-
`cv-05808-HSG (N.D. Cal.), Appendix E (‘408 Patent Claim Chart)
`to Plaintiff Finjan, Inc.’s Disclosure of Asserted Claims and
`Infringement Contentions, dated April 17, 2014
`
`Exhibit-2018 Proofpoint, Inc. 10-K, dated December 31, 2014
`
`Exhibit-2019 Proofpoint, Inc. Press Release - Proofpoint Announces Fourth
`Quarter and Full Year 2015 Financial Results (Jan. 28, 2016),
`available at
`http://investors.proofpoint.com/releasedetail.cfm?releaseid=95229
`5
`
`Exhibit-2020 Proofpoint Inc. 10-K, dated February 25, 2016
`
`Exhibit-2021 Gartner - Magic Quadrant for Secure Web Gateways, 2007
`
`Exhibit-2022 Gartner - Magic Quadrant for Secure Email Gateways, July 2,
`2013
`
`Exhibit-2023 Gartner - Magic Quadrant for Secure Web Gateways, May 28,
`2013
`
`Exhibit-2024 Finjan Holdings, Inc. 8-K, dated September 24, 2014
`
`Exhibit-2025 Finjan Holdings, Inc. 8-K, dated April 7, 2015
`
`Exhibit-2026 Finjan Holdings, Inc. 8-K, dated May 14, 2015
`
`Exhibit-2027 Finjan Holdings, Inc. 8-K, dated November 15, 2015
`
`Exhibit-2028 Finjan Holdings, Inc. 8-K, dated December 30, 2015
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`
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`Description
`
`Exhibit-2029 Finjan Holdings, Inc. 8-K, dated May 20, 2016
`
`Exhibit-2030 Reserved
`
`Exhibit-2031 Reserved
`
`Exhibit-2032 Reserved
`
`Exhibit-2033 Reserved
`
`Exhibit-2034 Reserved
`
`Exhibit-2035 Reserved
`
`Exhibit-2036 Reserved
`
`Exhibit-2037 Reserved
`
`Exhibit-2038 Reserved
`
`Exhibit-2039 Reserved
`
`Exhibit-2040 Reserved
`
`Exhibit-2041 Press Release - Symantec Completes Acquisition of Blue Coat to
`Define the Future of Cyber Security, dated August 1, 2016
`
`Exhibit-2042 Symantec Corporation Form 8-K, dated August 1, 2016
`
`Exhibit-2043 Complaint for Patent Infringement in Finjan, Inc. v. Blue Coat
`Systems, Inc., Case No. 15-cv-03295 (N.D. Cal.), filed on July 15,
`2015
`
`Exhibit-2044 First Amended Complaint for Patent Infringement in Finjan, Inc.
`v. Symantec Corp., Case No. 14-cv-02998 (N.D. Cal.), filed on
`September 11, 2014
`
`Exhibit-2045 Defendant Blue Coat Systems, Inc.’s Supplemental Rule 7.1
`Certification of Interested Entities or Persons in Finjan, Inc. v.
`Blue Coat Systems, Inc., filed on August 25, 2016
`
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`
`
`Description
`
`Exhibit-2046 Symantec Corporation Form 8-K, dated June 12, 2016
`
`Exhibit-2047 Plaintiff Finjan’s Trial Exhibit PTX-45 from Finjan, Inc. v. Blue
`Coat Systems, Inc., Case No. 13-cv-03999-BLF, entitled “Finjan
`Attack Pack”
`
`Exhibit-2048 Excerpts from transcript of trial proceedings in Finjan, Inc. v
`Sophos, Inc., Case No. 14-cv-01197-WHO
`
`Exhibit-2049 Fees Payment Receipt for Inter Partes Review IPR2016-01441
`
`Exhibit-2050 Defendant’s Notice of Change of Party Name in Finjan, Inc. v.
`Blue Coat Systems, Inc., Case No. 13-cv-03999-BLF, Dkt. 122
`(N.D. Cal. Oct. 14, 2016)
`
`Exhibit-2051 Finjan Software, Ltd., v. Secure Computing Corp. et al, 06-cv-
`00369-GMS (D. Del. August 18, 2009), Dkt. No. 305
`
`Exhibit-2052 Plaintiff Finjan’s Trial Exhibit PTX-36 from Finjan Software, Ltd.
`v. Secure Computing Corp., Case No. 06-cv-0369-GMS, an e-mail
`from Joepen Horst to Martin Stecher et al. dated June 18,
`2004
`
`Exhibit-2053 Finjan Software, Ltd., v. Secure Computing Corp. et al, 06-cv-
`00369-GMS (D. Del. August 18, 2009), Dkt. No. 284
`
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`
`I.
`
`INTRODUCTION
`
`This case is the third filed by Blue Coat Systems, Inc., (“Blue Coat” or
`
`“Petitioner”) against the claims of U.S. Patent No. 8,225,408 (Ex. 1001) (“the ‘408
`
`Patent”) owned by Finjan, Inc. (“Finjan” or “Patent Owner”). See Case Nos.
`
`IPR2016-01441, and IPR2016-00955 and IPR2016-00956 (joined with
`
`consolidated Case Nos. IPR2015-02001 and IPR2016-00157) (the “Blue Coat
`
`Petitions”). Each ground advanced in the Blue Coat Petitions relies upon the same
`
`primary references, Chandnani U.S. Patent Application No. 2002/0073330 (Ex.
`
`1007, “Chandnani”) and Kolawa U.S. Patent No. 5,860,011 (Ex. 1008, “Kolawa”):
`
`The grounds presented below all use the same base references: a
`combination of Chandnani’s multi-language scanner with Kolawa’s
`disclosure of parse trees for storing and analyzing code. The Board
`previously instituted trial of the independent claims of the ’408 patent
`against this combination in the PAN IPRs.1
`
`Petition at 4. The only substantive difference between Blue Coat’s three petitions
`
`is the dependent claims challenged in each case:
`
`IPR2016-00955: Challenged Claims 1, 3–7, 9, 12-16, 18–23, 29, and 35;
`
`IPR2016-00956: Challenged Claims 1, 3–7, 9, 12–16, 18–23, 29, and 35;
`
`
`1 Although Petitioner refers to consolidated Case Nos. IPR2015-02001 and
`
`IPR2016-00157 as “the PAN IPRs,” Blue Coat is a party to the consolidated case.
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`IPR2016-01441: Challenged Claims 2, 9, 11, 24–28, and 30–34.
`
`Given that Petitioner is already involved in an inter partes review
`
`proceeding involving the ‘408 Patent (which will give rise to estoppel under 35
`
`U.S.C. § 315(e)(1)), that the current challenge relies on the same primary
`
`references at issue in that proceeding, that Petitioner provides no persuasive reason
`
`for its piecemeal and harassing challenges, and that Petitioner has not
`
`demonstrated that the references cited against claims 2, 9, 11, 24–28, and 30–34
`
`were unavailable at the time the prior two petitions were filed, the Board should
`
`deny the instant Petition under 35 U.S.C. § 325(d).
`
`Furthermore, as explained in detail below, the Petition is substantively
`
`deficient and fails to “demonstrate that there is a reasonable likelihood that at least
`
`one of the claims challenged in the petition is unpatentable.” 37 C.F.R. § 42.108.
`
` OVERVIEW OF THE ‘408 PATENT
`II.
`
`Patent Owner’s ‘408 Patent was filed on August 30, 2004, and claims
`
`priority to U.S. Patent No. 6,804,780, filed March 30, 2000, and U.S. Patent No.
`
`6,092,194, filed November 6, 1997. The systems and methods of the ‘408 Patent
`
`are generally directed towards systems and methods for using a dynamically built
`
`parse tree to detect exploits within incoming program code. This parse tree is
`
`dynamically created and analyzed using parser rules that define certain patterns in
`
`terms of tokens and analyzer rules that identify certain combinations of tokens and
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`patterns as being indicators of potential exploits. See, e.g., ‘408 Patent at 2:25–3:6;
`
`see also id. at 9:42–54. By describing portions of potentially malicious program
`
`code in this novel manner, the ‘408 Patent allows for efficient and accurate
`
`detection of exploits within incoming program code. See ’408 Patent at 14:48–55.
`
`More particularly, the ‘408 Patent is directed to adaptive rule-based
`
`(“ARB”) content scanners, which adapt themselves dynamically to scan specific
`
`types of content, such as JavaScript, VBScript, URI, URL, and HTML, as opposed
`
`to being hard coded for one particular content type. ‘408 Patent at 1:65–2:3. The
`
`invention disclosed in the ‘408 Patent utilizes at least three different types of rule
`
`files that are used to identify tokens, patterns of tokens, and potential exploits:
`
`Rule files are text files that describe lexical characteristics of a
`particular language. Rule files for a language describe character
`encodings, sequences of characters that form lexical constructs of the
`language, referred to as tokens, patterns of tokens that form
`syntactical constructs of program code, referred to as parsing rules,
`and patterns of tokens that correspond to potential exploits, referred to
`as analyzer rules.
`
`Id. at 2:6–13. Taken together, the ‘408 Patent discloses identifying exploits
`
`in computer code by using rule files that (1) describe the basic constructs of
`
`a particular programming language (e.g. rule files used to tokenize an
`
`incoming byte source into language constructs, such as words), (2) identify
`
`groups of tokens as a single pattern (e.g. parser rules that group tokens into
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`phrases), and (3) identify syntax patterns that indicate a potential computer
`
`exploit (e.g. analyzer rules that match phrases to potential exploits).
`
`FIG. 2 of the ‘408 Patent is a simple block diagram illustrating an exemplary
`
`scanner system that uses these rule files to identify computer exploits:
`
`
`
`In the context of the ‘408 Patent, the tokenizer functions to “recognize and identify
`
`constructs, referred to as tokens, within a byte source, such as JavaScript source
`
`code.” ‘408 Patent at 6:51–54. The parser controls the scanning of incoming
`
`content by invoking the tokenizer, which returns tokens identified in the incoming
`
`byte stream, and positioning successive tokens as siblings in a parse tree. ‘408
`
`Patent at 8:18–32. The parser applies “pars[er] rules” to identify a group of sibling
`
`tokens as a single pattern and reducing the siblings to a single parent node that
`
`represents the pattern. ‘408 Patent at 8:32–37. The analyzer uses a set of
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`“analyzer rules,” which define generic syntax patterns that indicate a potential
`
`exploit. ‘408 Patent at 9:23–27.
`
`Importantly, the techniques described and claimed in the ‘408 Patent involve
`
`operating on an “incoming stream of program code.” See ‘408 Patent at claims 1,
`
`9, 22, 23, 29, and 35; see also id. at 8:18–20 (“parser 220 controls the process of
`
`scanning incoming content.”); 9:19–20 (“Preferably, immediately after parser 220
`
`performs a reduce operation, it calls analyzer 230 to check for exploits.”); 2:20–21
`
`(“Thus it may be appreciated that the present invention is able to diagnose
`
`incoming content.”). Indeed, each independent claim of the ‘408 Patent explicitly
`
`recites that exploits are detected in an incoming stream of program code. Claim 1,
`
`for example, recites:
`
` “dynamically building, by the computer while said receiving receives
`
`the incoming stream, a parse tree…” and
`
` “dynamically detecting, by the computer while said dynamically
`
`building builds the parse tree, combinations of nodes in the parse tree
`
`which are indicators of potential exploits.”
`
`‘408 Patent at claim 1 (emphasis added). This technique of dynamically detecting
`
`potential exploits in incoming program code stands in stark contrast to the staged
`
`code analysis disclosed in Chandnani, Kolawa, and Walls where program code is
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`fully tokenized before any parse tree is built and a parse tree (if built at all) is fully
`
`built before any analysis begins.
`
`Another key feature that distinguishes the ‘408 Patent from the prior art is its
`
`focus on detecting exploits “being portions of program code that are malicious,”
`
`rather than simply recognizing previously known malware. See ‘408 Patent,
`
`claims 1, 9, 22, 23, 29, and 35; id. at 4:15–16 (“Many examples of malicious
`
`mobile code are known today. Portions of code that are malicious are referred to as
`
`exploits.”). Although malware, such as viruses, can sometimes include an exploit,
`
`they are not the same thing:
`
`An exploit is a piece of software, a command, or a methodology that
`attacks a particular security vulnerability. Exploits are not always
`malicious in intent—they are sometimes used only as a way of
`demonstrating that a vulnerability exists. However, they are a
`common component of malware.
`
`Ex. 2006 at 1-2 (explaining the differences between an exploit versus the most
`
`common types of malware, such as viruses, worms and Trojans).
`
`Detecting individual exploits, particularly using the behavior-based scanning
`
`techniques disclosed in the ‘408 Patent, facilitates the “zero-day” recognition of
`
`malicious code, even if it is surrounded by otherwise benign and/or not previously
`
`encountered code, based only on the behavior associated with the exploit.
`
`Moreover, changes to the code—ranging from major structural changes to
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`superficial changes, like variable renaming—that can easily defeat signature-based
`
`scanners are transparent to the ‘408 Patent’s exploit recognition techniques. To
`
`overcome this problem, the ‘408 Patent claims scanning content to detect patterns
`
`or combinations “of nodes in the parse tree which are indicators of potential
`
`exploits.” See, e.g.,‘408 Patent at claim 1. The insight is not to attempt to simply
`
`recognize program code that has been seen before, but rather to recognize exploits
`
`within program code because both the exploit and the code surrounding the exploit
`
`can be easily obfuscated.
`
`On the other hand, the scanning technique disclosed in Chandnani requires
`
`that an entire file or program that contains malicious code be known before it can
`
`be detected because, in each case, the token patterns and CRC checks used to
`
`identify content are generated based upon the known malware and are used to
`
`recognize the known malware. See Chandnani at 3, ¶ 37 (describing the generation
`
`of “viral code detection data” by taking samples of and analyzing collected
`
`(known) polymorphic script language viral code). Accordingly, rather than
`
`analyzing program code to detect potential exploits, Chandnani’s analysis is
`
`designed to identify already known viral code, whether or not it contains any
`
`exploits.
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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` CLAIM CONSTRUCTION
`III.
`
`For purposes of this Patent Owner Preliminary Response, Patent Owner does
`
`not dispute Petitioner’s proposed constructions of the terms “parse tree,”
`
`“dynamically building… while said receiving receives the incoming stream,”
`
`“dynamically detecting… while said dynamically building builds the parse tree,”
`
`or “instantiating… a scanner for the specific programming language.” See Petition
`
`at 14–16.
`
`IV.
`
` THE PETITION IS MOOT UNDER 35 U.S.C. § 315(E)(1)
`
`The instant Petition is moot because Petitioner will be estopped from
`
`maintaining this proceeding upon the issuance of Final Written Decisions in Case
`
`Nos. IPR2015-02001 and IPR2016-00157, which have been consolidated, and to
`
`which Petitioner, Blue Coat, Inc., is a party. See IPR2015-02001, Paper 21
`
`(decision granting Blue Coat’s Motion for Joinder with IPR2015-02001);
`
`IPR2016-00157, Paper 21 (granting Blue Coat’s Motion for Joinder); IPR2015-
`
`02001, Paper 7 (consolidating Case Nos. IPR2015-02001 and IPR2016-00157).
`
`Because there is no question that the grounds raised in this Petition “reasonably
`
`could have been raised,” in either Case No. IPR2015-02001 or Case No. IPR2016-
`
`00157, Petitioner will not be permitted to maintain any inter partes review
`
`instituted based on this Petition:
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`The petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision under section
`318(a), or the real party in interest or privy of the petitioner, may not
`request or maintain a proceeding before the Office with respect to
`that claim on any ground that the petitioner raised or reasonably could
`have raised during that inter partes review.
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`35 U.S.C. § 315(e)(1) (emphasis added).
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`Petitioner has not even argued that grounds based on the “new” reference—
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`Knuth, On the Translation of Languages from Left to Right, Information and
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`Control 8, 607–39 (1965) (Ex. 1009) (“Knuth”)—could not reasonably have been
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`raised in the prior proceedings, which the Board has held to include any “prior art
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`which a skilled searcher conducting a diligent search reasonably could have been
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`expected to discover.” See Praxair Distribution, Inc. v. Ino Therapeutics LLC,
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`Case IPR2016-00781, Decision Denying Institution of Inter Partes Review, Paper
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`10 at 7 (PTAB Aug. 25, 2016) (citing 157 Cong. Rec. S1375 (daily ed. Mar. 8,
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`2011) (statement of Sen. Kyl)).
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`Pursuant to 35 U.S.C. § 316(a)(11), the Board will be required to issue a
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`Final Written Decisions in Case Nos. IPR2015-02001 and IPR2016-00157 no later
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`than March 18, 2017, and in Case No. IPR2016-00159 no later than March 29,
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`2017. See IPR2015-02001, Paper 7 (instituting trial on March 29, 2016); see also
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`IPR2016-00157, Paper 10 (instituting trial on March 29, 2016). Accordingly, after
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`March 29, 2017, the estoppel provision of 35 U.S.C. § 315(e)(1) will ripen and
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`prevent Petitioner from maintaining this case. See, e.g., Kofax, Inc. v. Uniloc USA,
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`Inc., Case No. IPR2015-01207, Decision on Motion to Terminate Inter Partes
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`Review, Paper 22 at 8, 11–12 (PTAB June 2, 2016) (terminating an inter partes
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`review in which a party to an earlier action that ended in a final written decision
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`was found to have “had an opportunity to raise the grounds in the earlier
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`proceeding within one month of its institution by filing the [new] grounds in an
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`inter partes review petition and requesting joinder”).
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`Moreover, estoppel will attach to Blue Coat once a Final Written Decision
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`does issue in Case Nos. IPR2015-02001 or IPR2016-00157. Thus, Patent Owner
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`requests that the Board consider the substantial waste of resources attendant to
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`instituting trial on this moot Petition in its determination of whether to exercise its
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`discretion to reject this Petition under 35 U.S.C. § 325(d).
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`V.
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` THE PETITION SHOULD BE REJECTED UNDER 35 U.S.C. § 325(D)
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`The Board should deny Grounds 1–4 under 35 U.S.C. § 325(d) because the
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`Petition recycles substantially the same prior art and substantially the same
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`arguments that were already presented to the Patent Office in Case Nos. IPR2015-
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`02001 and IPR2016-00157:
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`The Board has previously instituted inter partes review of the ‘408
`patent, including of the independent claims from which claims 2, 8,
`11, 24–28, and 30–33 depend, in Nos. IPR2015-02001 and IPR2016-
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`00157 (“the PAN IPRs”). This petition presents essentially the same
`disclosure and arguments for those independent claims.
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`Petition at 1 (emphasis added); see also 35 U.S.C. § 325(d) (“In determining
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`whether to institute or order a proceeding…the Director may take into account
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`whether, and reject the petition or request because, the same or substantially the
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`same prior art or arguments previously were presented to the Office.”). Indeed, in
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`its attempt to elide the fact that any IPR instituted in this proceeding will
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`necessarily involve independent claims 1, 9, 23, and 29—which are already the
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`subject of two proceedings to which Petitioner is a party—Petitioner “ignores the
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`burden and inequity on the Patent Owner if it is forced to defend the same claims
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`twice from attack by the same Petitioner.” ZTE Corp. v. ContentGuard Holdings,
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`Inc., Case IPR2013-00454, Decision Institution of Inter Partes Review, Paper 12
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`at 7 (PTAB Sept. 25, 2013) (informative opinion).
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`The instant Petition differs from those filed in Case Nos. IPR2016-00955
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`and IPR2016-00956 only in the dependent claims challenged. See IPR2016-00955
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`(no dependent claims challenged); IPR2016-00956 (challenging dependent claims
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`3–7, 12–16, and 18–2); IPR2016-01441 (challenging dependent claims 2, 8, 11,
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`24–28, and 30–33). But these serial challenges to Patent Owner’s rights should not
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`be countenanced, and the Board should exercise its discretion to reject the Petition
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`under 35 U.S.C. § 325(d). In its comments on the proposed rules for implementing
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`the AIA, the USPTO specifically indicated that § 325(d) is the appropriate
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`mechanism addressing harassment of patent owners through “piecemeal challenges
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`against specific claims in the same patent:”
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`Comment 55: A few comments expressed concerns regarding
`piecemeal challenges against specific claims in the same patent, and
`encouraged the Board to use its authority under 35 U.S.C. 325(d) to
`discourage efforts by petitioners to avoid estoppel through successive
`petitions against different claims within a patent.
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`Response: The Office recognizes these concerns and will exercise its
`authority under 35 U.S.C. 325(d), where appropriate, to deny petitions
`that submit the same or substantially the same prior art or arguments
`previously presented to the Office.
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`77 F.R. 48680, 48702 (emphasis added). Although Petitioner cites Life Techs.
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`Corp. v. Unisone Strategic IP, Case CBM2016-00025—a case that is neither
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`binding nor informative—for the premise that § 325(d) is not applicable in cases
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`where a second petition challenged different claims than the first, it is apparent that
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`the Board was not articulating a rule, but only that the Patent Owner did not
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`“persuade [the Board] that the timing of Petitioner’s filing of the Petition in this
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`case translates to a ‘waste’ of Board resources or that the filing constitutes ‘a
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`misuse of USPTO proceedings.’” Id., Decision Institution of Covered Business
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`Method Patent Review, Paper 7 at 18 (PTAB July 5, 2016); Petition at 14. Indeed,
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`the Board has denied petitions under § 325(d) despite the follow-on petition
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`Patent Owner’s Preliminary Response
`IPR2016-01441 (U.S. Patent No. 8,225,408)
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`challenging previously unchallenged claims. See, e.g., Ford Motor Co. v. Paice
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`LLC, Case IPR2015-00767, Decision Denying Institution of Inter Partes Review,
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`Paper 14 at 7 (PTAB Aug. 18, 2015) (“We also have considered Petitioner’s
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`arguments that because it presents a new set of claims, e.g., consisting of
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`previously challenged claims, but also including newly challenged claims, we must
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`consider the Petition. We are not persuaded by this argument because the express
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`language of 35 U.S.C. § 325(d) does not mention claims as being a factor in
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`deciding whether to institute trial.”) (internal citations omitted); see also
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`Travelocity.com L.P., Priceline.com Inc. v. Cronos Techs., LLC, Case CBM2015-
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`00047, Decision Denying Covered Business Machine Patent Review, Paper 7 at
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`11–13 (PTAB June 15, 2015) (dismissing a follow-on petition that challenged
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`claims not challenged in the first petition).
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`The legislative history also indicates that § 325(d) was designed to prevent
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`precisely the type of piecemeal challenges raised in this case and its predecessors.
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`See H.R. Rep. No. 112-98, pt. 1, at 48 (2011) (warning that the AIA’s procedures,
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`including inter partes review, should “not… be used as tools for harassment or a
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`means to prevent market entry through repeated litigation and administrative
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`attacks on the validity of a patent.”). Indeed,