`Filed: October 28, 2016
`
`Filed on behalf of: FireEye, Inc.
`By:
`James M. Heintz
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Tel.: 703-773-4000
`Fax: 703-773-5000
`Email: jim.heintz@dlapiper.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`FIREEYE, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`
`
`Patent No. 8,225,408
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,225,408
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`Table of Contents
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`Page
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`I.
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`V.
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`INTRODUCTION .......................................................................................... 1
`A.
`The ’408 Patent, Prosecution History, and Priority Date ..................... 2
`B. Overview of the Prior Art ..................................................................... 4
`i.
`Chandnani (EX1007) ................................................................. 5
`ii.
`Kolawa (EX1008) ...................................................................... 6
`iii. Knuth (EX1009) ......................................................................... 7
`iv. Huang (EX1010) ........................................................................ 8
`v. Walls (EX1011) ......................................................................... 9
`vi. Chandnani, Kolawa, Knuth, Huang, and Walls Are All
`Analogous Art ............................................................................ 9
`Level of Skill in the Art ...................................................................... 10
`C.
`II. GROUNDS FOR STANDING ..................................................................... 11
`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................ 11
`A.
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 11
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ........................................... 11
`C.
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ........................ 12
`D.
`Service Information (37 C.F.R. § 42.8(b)(4)) .................................... 12
`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED.................................................................. 12
`STATEMENT RE: GROUNDS PRESENTED AND NON-
`REDUNDANCY .......................................................................................... 13
`VI. CLAIM CONSTRUCTION ......................................................................... 14
`A.
`“parse tree” ......................................................................................... 14
`B.
`“dynamically building ... while said receiving receives the
`incoming stream” ............................................................................... 15
`“dynamically detecting ... while said dynamically building
`builds the parse tree” .......................................................................... 15
`“instantiating ... a scanner for the specific programming
`language” ............................................................................................ 15
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`C.
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`D.
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`i
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`Table of Contents
`(Continued)
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`Page
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`B.
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`C.
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`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY ................................................................................. 16
`A.
`[Ground 1] Chandnani and Kolawa Disclose or Render Obvious
`Each Element of Independent Claims 1, 9, 23, and 29 ...................... 16
`i.
`Independent Claim 1 ................................................................ 16
`ii.
`Independent Claim 23 .............................................................. 36
`iii.
`Independent Claims 9 and 29 ................................................... 40
`[Ground 2] Claims 2, 11, 24-28, and 30-34 are Obvious under
`35 U.S.C. § 103 over Chandnani in view of Kolawa and Knuth ....... 41
`[Ground 3] Claim 8 is Obvious under 35 U.S.C. § 103 over
`Chandnani in view of Kolawa and Huang ......................................... 51
`[Ground 4] Claims 2, 11, 24-28, and 30-34 are Obvious under
`35 U.S.C. § 103 over Chandnani in view of Kolawa, Knuth, and
`Walls ................................................................................................... 56
`i.
`Dynamically building a parse tree ........................................... 57
`ii.
`Dynamically detecting potential exploits ................................ 59
`[Ground 5] Claim 8 is Obvious under 35 U.S.C. § 103 over
`Chandnani in view of Kolawa, Huang, and Walls ............................. 60
`VIII. CONCLUSION ............................................................................................. 60
`IX. CERTIFICATE OF COMPLIANCE ........................................................... 62
`X.
`PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103......... 63
`XI. APPENDIX – LIST OF EXHIBITS ............................................................. 64
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`D.
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`E.
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`Table of Authorities
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`Page(s)
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`CASES
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`Cuozzo Speed Techs., Inc. v. Lee
`-- S. Ct. ----; 2016 WL 3369425 *10 (June 20, 2016) ...............................................14
`
`Finjan, Inc. v. Blue Coat Systems, Inc.
`No. 5-15-cv-03295 (N.D. Cal.) ........................................................................................11
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`Finjan, Inc. v. FireEye, Inc.
`No. 4-13-cv-03133 (N.D. Cal.) ........................................................................................11
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`Finjan, Inc. v. Palo Alto Networks, Inc.
`No. 4-14-cv-04908 (N.D. Cal.) ........................................................................................11
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`Finjan, Inc. v. Proofpoint, Inc.
`No. 3-13-cv-05808 (N.D. Cal.) ........................................................................................11
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`STATUTES
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`35 U.S.C. § 102 .................................................................................................passim
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`35 U.S.C. § 103 ................................................................................................................. passim
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`35 U.S.C. § 311 .........................................................................................................................12
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.8 ...................................................................................................................11, 12
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`37 C.F.R. §42.24 ...................................................................................................... 62
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`37 C.F.R. § 42.100(b) ..............................................................................................................14
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`37 C.F.R. § 42.104(a) ...............................................................................................................11
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`AIA § 6 ........................................................................................................................................12
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`“On the Translation of Languages from Left to Right” (“Knuth”) ................................7
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`I.
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`Introduction
`FireEye, Inc. (“FireEye”) hereby requests inter partes review of U.S. Patent
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`No. 8,225,408 to Rubin et al. (“the ’408 patent,” EX1001) that issued on July 17,
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`2012, and is currently assigned to Finjan, Inc. (“Patent Owner”). This Petition
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`demonstrates that there is a reasonable likelihood that Petitioner will prove by a
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`preponderance of the evidence that claims 1-2, 8-9, 11, 23-28, and 29-34 of the
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`’408 patent are unpatentable for failing to distinguish over prior art. Thus, claims
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`1-2, 8-9, 11, 23-28, and 29-34 of the ’408 patent should be found unpatentable and
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`canceled.
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`A petition for inter partes review of the ’408 patent, Blue Coat Systems,
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`Inc. v. Finjan, Inc., IPR2016-01441, (“the 01441 IPR”) has been filed by Blue Coat
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`Systems, Inc. (“Blue Coat”). No institution decision for that Petition has been
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`issued. A motion for joinder to that petition has been filed concurrent with this
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`Petition.
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`The Board has previously instituted inter partes review of the ’408 patent,
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`including of the independent claims from which claims 2, 8, 11, 24-28, and 30-33
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`depend, in Nos. IPR2015-02001 and IPR2016-00157 (“the PAN IPRs”). This
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`Petition presents essentially the same disclosure and arguments for those
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`independent claims. The additional requirements of the challenged dependent
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`claims 2, 8, 11, 24-28, and 30-33 are insufficient to lend them patentability.
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`A. The ’408 Patent, Prosecution History, and Priority Date
`Application No. 10/930,884 was filed on August 30, 2004 and issued on
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`July 17, 2012 as U.S. Patent No. 8,225,408. The ’408 patent is entitled “METHOD
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`AND SYSTEM FOR ADAPTIVE RULE-BASED CONTENT SCANNERS.” The
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`’408 patent is directed at protecting computers against potentially malicious
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`programs using programming language-specific sets of rules and a “parse tree”
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`data structure. EX1001 at Title, Abstract. The ’408 patent describes scanning an
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`incoming stream of computer code by creating tokens, generating a parse tree
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`using patterns in those tokens, and identifying patterns of tokens in the parse tree
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`as potential exploits. See id. Patterns are identified using “parser rules” and
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`“analyzer rules” specific to one of multiple programming languages.
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`When the application that led to the ’408 patent was filed in 2004, there was
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`already a crowded field of prior art security software that analyzed computer code
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`for security problems such as viruses and other malicious code. After
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`approximately four years of prosecution without a single allowed claim, the
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`patentee was forced to amend each of the independent claims from which the
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`challenged claims depend to add two elements: (1) multi-language scanning
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`capability; and (2) the ability to “dynamically” analyze a parse tree as it was being
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`built. See EX1004 at 40-53, 69-71. But as discussed below, numerous prior art
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`references that were not before the Examiner—including the primary references
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`discussed in this Petition—confirm that these features were both well-known and
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`obvious for use in security scanners.
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`The application that led to the ’408 patent was a continuation-in-part of
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`Application No. 09/539,667 (now U.S. Patent No. 6,804,780), filed on March 30,
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`2000, which is itself a continuation of Application No. 08/964,388 (now U.S.
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`Patent No. 6,092,194), filed on November 6, 1997. Although filed as a
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`continuation-in-part, however, the ’408 patent shares almost nothing with these
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`earlier-filed applications. The ‘667 and ‘388 applications describe a system that
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`simply compares a downloadable application to a security policy and blocks the
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`application if it violates the policy. See EX1005, EX1006. Neither of those
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`applications describes a scanner that parses a data stream into tokens and searches
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`for patterns that represent potential exploits. See id. Neither of those applications
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`includes any of the figures that appear in the ’408 patent. See id. In fact, neither of
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`those applications even mentions the terms “token,” “parse tree,” “analyzer rule,”
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`“parser rule,” or “exploit”—and each of these terms appears throughout all
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`independent claims of the ’408 patent. See id.; see also EX1002 ¶¶19-20. In short,
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`the ‘667 and ‘388 applications contain no disclosure supporting the challenged
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`claims, which are therefore entitled to a priority date no earlier than August 30,
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`2004, the ’408 patent’s own filing date.
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`B. Overview of the Prior Art
`As explained in detail in the corresponding Declaration of Azer Bestavros,
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`Ph.D. (EX1002) and addressed in further detail below (Supra Section VII), the
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`challenged claims would not have been considered new or nonobvious to a person
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`of ordinary skill in the art at the relevant time.
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`The grounds presented below all use the same base references: a
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`combination of Chandnani’s multi-language scanner with Kolawa’s disclosure of
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`parse trees for storing and analyzing code. The Board previously instituted trial of
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`the independent claims of the ’408 patent against this combination in the PAN
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`IPRs.
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`Ground 1 combines Chandnani and Kolawa to render independent claims 1,
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`9, 23, and 29 obvious. Ground 2 combines Chandnani and Kolawa with Knuth.
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`Knuth is cited for an explicit teaching of the well-known shift-and-reduce process,
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`and to provide a basic description of the process for building a parse tree. Ground
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`3 combines Chandnani and Kolawa with Huang.1 Huang is cited for an explicit
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`teaching of parsing embedded program code, which again was well-known.
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`Grounds 4 and 5 are images of Grounds 2 and 3 with one additional prior art
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`reference, Walls, that teaches pipelining techniques that satisfy the “dynamically
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`1 The Board has previously instituted trial against other dependent claims on
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`the basis of the combination including Huang in the PAN IPRs.
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`building” and “dynamically detecting” limitations of the challenged claims. In the
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`PAN IPRs, the Board instituted otherwise identical grounds both with and without
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`Walls.
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`Below is an overview of each prior art reference.
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`Chandnani (EX1007)
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`i.
`U.S. Patent Appl. Pub. No. 2002/0073330 (“Chandnani”), titled “Detection
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`of Polymorphic Script Language Viruses by Data Driven Lexical Analysis,” was
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`filed on July 14, 2001.2 Chandnani is prior art under 35 U.S.C. § 102(b) because it
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`was published on June 13, 2002, more than one year before the filing date of the
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`’408 patent.
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`Chandnani teaches detecting polymorphic script language viruses using
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`data-driven lexical analysis. EX1007 at [0002]. Like the ’408 patent, Chandnani
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`scans for polymorphic viruses—those that have slightly different code but the same
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`malicious functionality—by converting a data stream into a stream of tokens and
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`then searching for patterns that indicate the presence of potentially malicious
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`programs. Id. at [0014]-[0020], [0056]-[0065]. Also like the ’408 patent,
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`Chandnani scans a continuous stream of data, and continues to receive upstream
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`2 This is the publication that corresponds with the date relied on in the PAN
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`IPRs. Its disclosure is the same as the issued U.S. Patent No. 7,636,945 (EX1032)
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`that was cited in the PAN IPRs.
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`data while analyzing downstream data. See, e.g., id. at [0057] (describing the data
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`stream as a series of characters), [0060] (describing a two-stage detection process),
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`Fig. 2. Although Chandnani may not expressly describe how tokens are parsed and
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`analyzed, Chandnani suggests the use of a parse tree for storing tokens. EX1007 at
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`[0040]-[0046]; EX1002 ¶¶29-32.
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`
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`ii. Kolawa (EX1008)
`U.S. Patent No. 5,860,011 (“Kolawa”), titled “Method and System for
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`Automatically Checking Computer Source Code Quality Based on Rules,” was
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`filed on February 29, 1996. Kolawa is prior art under 35 U.S.C. § 102(b) because
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`it issued on January 12, 1999, more than one year before the August 30, 2004
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`filing date of the ’408 patent.
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`Kolawa teaches a method and system for rule-based evaluation of source
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`code quality. EX1008 at 1:19-22. In particular, Kolawa discloses using a
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`“conventional” lexical analyzer that scans code, groups it into tokens, and
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`organizes the tokens using a parse tree:
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`The source code 10 is read as input to a lexical analyzer/parser 11
`which is conventional in the art. The lexical analyzer scans the source
`code 10 and groups the instructions into tokens. The parser performs
`the hierarchical analysis which groups the tokens into grammatical
`phrases that are represented by a parse tree 12.
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`Id. at 3:66-4:4; see also id. at Fig. 1. Kolawa then searches the parse tree to
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`identify problematic code based on a set of rules. See id. at 4:48-59. Kolawa
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`reports rule violations as error messages that describe the corresponding quality
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`concern. Id. at 4:59-60; EX1002 ¶¶33-34.
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`iii. Knuth (EX1009)
`“On the Translation of Languages from Left to Right” (“Knuth”) was
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`published in Information and Control in 1965. Knuth is prior art under 35 U.S.C.
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`§ 102(b) because it was published more than one year before the August 30, 2004
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`filing date of the ’408 patent.
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`Knuth is a foundational paper describing the parsing of programming
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`languages from left-to-right. EX1009 at Abstract; EX1002 ¶36. Knuth provides
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`examples of parsing code and building parse trees using a shift-and-reduce process.
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`EX1009 at 618-625, Tables I and II. In one example, detailed in Table I, Knuth
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`describes the shift and reduce process: “‘Shift’ means ‘perform the shift left
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`operation’ mentioned in step 2; ‘reduce p’ means ‘perform the transformation (21)
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`with production p.’” EX1009 at 620. Knuth also describes the basic parsing steps
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`of recursively matching patterns in strings and generating parent nodes attached to
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`those patterns, thereby generating a parse tree. EX1009 at 609-610; EX1002 ¶36.
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`iv. Huang (EX1010)
`U.S. Patent No. 6,968,539 (“Huang”), titled “Methods and Apparatus for a
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`Web Application Processing System,” was filed on August 4, 2000. Huang is prior
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`art under 35 U.S.C. § 102(e) because it was filed before the August 30, 2004 filing
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`date of the ’408 patent.
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`Huang teaches a method and system for processing web applications written
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`in the form of web pages using, e.g., the programming language HTML. EX1010
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`at Abstract, 5:7-20; EX1002 ¶38. Huang further teaches that scripting languages
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`such as JavaScript are commonly used in web content such as HTML documents,
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`and that they can be provided as program code embedded in an HTML document.
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`EX1010 at 8:57-64; EX1002 ¶39.
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`v. Walls (EX1011)
`U.S. Patent No. 7,284,274 (“Walls”), titled “System and Method for
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`Identifying and Eliminating Vulnerabilities in Computer Software Applications,”
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`was filed on January 18, 2002. Walls is prior art under 35 U.S.C. § 102(e) because
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`it was filed before the August 30, 2004 filing date of the ’408 patent.
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`Walls, like Kolawa, teaches a methodology for identifying potential source
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`code vulnerabilities. EX1011 at Abstract. Like Kolawa, Walls also generates a
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`parse tree of the code being analyzed and then searches the parse tree for matches
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`that indicate potential vulnerabilities. Id. at 7:25-31, 8:31-36. Walls uses a
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`“pipelined” approach to analyze code in stages, such that different parts of a single
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`code stream can be parsed and analyzed at the same time. Id. at 7:3-6; EX1002
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`¶41. One advantage of this technique is “the advantage of pipelining the process
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`where multiple components can be analyzed simultaneously.” EX1011 at 7:7-11.
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`vi. Chandnani, Kolawa, Knuth, Huang, and Walls Are All
`Analogous Art
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`Each prior art reference used in this Petition is analogous to the ’408 patent
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`because it is in the same field of endeavor and/or is highly pertinent to the
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`problems at which the ’408 patent is directed. EX1002 ¶¶42-55.
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`The ’408 patent is directed to the field of rule-driven “content scanners” for
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`program code. See EX1001 at Title, Abstract. Although the ’408 patent focuses
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`on detecting malicious code, a person of ordinary skill in the art understood that
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`scanning for malware involves the same or similar techniques as scanning for
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`related code quality and security issues. See EX1002 ¶¶44-48.
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`Each reference combined in this Petition is directed to scanning and
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`analyzing programming code and to scanning for potential exploits and/or other
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`security concerns. See EX1002 ¶¶50-55. For example, Chandnani is directed to
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`analyzing code to detect potential viruses. See id. ¶50; EX1007. Kolawa discloses
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`rule-based systems for detecting potential problems in source code. See EX1008 at
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`2:34-36 (“automatically checking source code quality based on rules”); EX1002
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`¶¶51-52. Knuth is a foundational paper describing the parsing of programming
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`languages from left-to-right. EX1009 at Abstract; EX1002 ¶53. Huang is directed
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`to analyzing the code of web application to ensure, among other things, that no
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`security rules are violated. See EX1010; EX1002 ¶54. Walls scans for security
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`vulnerabilities in programming code. See EX1011; EX1002 ¶55.
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`C. Level of Skill in the Art
`The ’408 patent is directed at the field of computer security programs,
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`including content scanners for analyzing program code. EX1002 ¶57. At the time
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`of the alleged invention in or around August 2004, a person of ordinary skill in the
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`art held a bachelor’s degree or the equivalent in computer science (or related
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`academic fields) and three to four years of additional experience in the field of
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`computer security, or equivalent work experience. Id. ¶¶58-59.
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`II. GROUNDS FOR STANDING
`FireEye certifies that, under 37 C.F.R. § 42.104(a), the ’408 patent is
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`available for inter partes review, and FireEye is not barred or estopped from
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`requesting inter partes review of the ’408 patent on the grounds identified.
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`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`Petitioner FireEye, Inc., is the real party-in-interest.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Finjan, Inc. (“Patent Owner” or “Finjan”) has asserted the ’408 patent in
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`Finjan, Inc. v. Blue Coat Systems, Inc., No. 5-15-cv-03295 (N.D. Cal.); Finjan,
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`Inc. v. Palo Alto Networks, Inc., No. 4-14-cv-04908 (N.D. Cal.); Finjan, Inc. v.
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`FireEye, Inc., No. 4-13-cv-03133 (N.D. Cal.); and Finjan, Inc. v. Proofpoint, Inc.,
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`No. 3-13-cv-05808 (N.D. Cal.).
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`Two inter partes reviews involving different claims of the ’408 patent,
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`Nos. IPR2015-02001 and IPR2016-00157, each styled Palo Alto Networks, Inc. v.
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`Finjan, Inc., were instituted on March 29, 2016 and consolidated into a single
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`proceeding by the Board. Blue Coat filed petitions and accompanying motions to
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`join the PAN IPRs, which petitions have been assigned Nos. IPR2016-00955 and -
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`00956. The motions to join the PAN and Blue Coat IPRs were granted on August
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`30, 2016. This Petition challenges dependent claims not at issue in the PAN IPRs,
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`though it relies on the same prior art and arguments with respect to the independent
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`claims.
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`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`Lead Counsel: James M. Heintz (Reg. No. 41,828)
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`Back-Up Counsel: Jeffrey R. Cole (Reg. No. 56,052)
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`D.
`FireEye hereby consents to electronic service.
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`Email: jim.heintz@dlapiper.com; jeff.cole@dlapiper.com
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`Post: DLA Piper LLP (US), 11911 Freedom Drive, Suite 300, Reston, VA
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`20190
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`Tel.: (703) 773.4148
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`
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`Fax: (703) 773.5008
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`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`FireEye requests inter partes review of claims 1-2, 8-9, 11, 23-28, and 29-34
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`of the ’408 patent under 35 U.S.C. § 311 and AIA § 6 and that each challenged
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`claim be determined unpatentable and canceled. The grounds of unpatentability
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`are as follows:
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`Ground
`1
`2
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`3
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`Description
`Claims
`1, 9, 23, and 29 Obvious under § 103 over Chandnani and Kolawa
`2, 11, 24-28,
`Obvious under § 103 over Chandnani, Kolawa, and
`30-34
`Knuth
`Obvious under § 103 over Chandnani, Kolawa, and
`8
`Huang
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`Ground
`4
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`5
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`V.
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`Claims
`2, 11, 24-28,
`30-34
`8
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`Description
`Obvious under § 103 over Chandnani, Kolawa,
`Knuth, and Walls
`Obvious under § 103 over Chandnani, Kolawa,
`Huang, and Walls
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`STATEMENT RE: GROUNDS PRESENTED AND NON-
`REDUNDANCY
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`Although Blue Coat seeks review of only dependent claims 2, 8, 11, 24-28,
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`and 30-33 in the ’01441 IPR, the petition establishes that the underlying
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`independent claims 1, 9, 23, and 29 are obvious over Chandnani and Kolawa
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`without challenging the independent claims as a separate ground. Section VII.A. in
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`Paper 2 of the ’01441 IPR. In its petition, Blue Coat explains that because it is not
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`challenging claims 1, 9, 23, and 29, the grounds in the ’01441 IPR are not
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`redundant to the ground in Blue Coats petition and motion for joinder with the
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`PAN IPRs. Section V. in Paper 2 of the ’01441 IPR.
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`FireEye’s inclusion of Ground 1 for independent claims 1, 9, 23, and 29 do
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`not present any new disclosure or argument because (1) the Board has previously
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`instituted inter partes review of the ’408 patent in the PAN IPRs, including of the
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`independent claims from which claims 2, 8, 11, 24-28, and 30-33 depend; (2) the
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`’01441 IPR petition presents essentially the same disclosure and arguments as the
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`PAN IPRs for those independent claims; and (3) this Petition presents exactly the
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`same disclosure and arguments as the ’01441 IPR petition for those independent
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`claims. Further, FireEye is not a petitioner in any IPR in which it raised or
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`reasonably could have raised the issues in Ground 1 of this Petition, so Ground 1 is
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`not redundant and FireEye is not estopped from asserting Ground 1.
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`VI. CLAIM CONSTRUCTION
`A claim subject to inter partes review receives the broadest reasonable
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`construction in light of the specification of the patent in which it appears. Cuozzo
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`Speed Techs., Inc. v. Lee, -- S. Ct. ----; 2016 WL 3369425 *10 (June 20, 2016);
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`see also 37 C.F.R. § 42.100(b).
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`“parse tree”
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`A.
`The broadest reasonable interpretation of the term “parse tree” includes “a
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`hierarchical structure of interconnected nodes built from scanned content.” The
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`Board adopted this construction in the PAN IPRs. IPR2015-02001, Paper 7 at 8.
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`Moreover, this construction is consistent with the understanding of a person of
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`ordinary skill in the art in view of the specification. EX1002 ¶62.
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`B.
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`“dynamically building ... while said receiving receives the
`incoming stream”
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`The broadest reasonable interpretation of the term “dynamically building ...
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`while said receiving receives the incoming stream” includes “a time period for
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`dynamically building overlaps with a time period during which the incoming
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`stream is being received.” The Board adopted this construction in the PAN IPRs.
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`IPR2015-02001, Paper 7 at 8. Moreover, this construction is consistent with the
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`understanding of a person of ordinary skill in the art in view of the specification.
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`EX1002 ¶63.
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`C.
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`“dynamically detecting ... while said dynamically building builds
`the parse tree”
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`The broadest reasonable interpretation of the term “dynamically detecting ...
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`while said dynamically building builds the parse tree” includes “a time period for
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`dynamically detection overlap with a time period during which the parse tree is
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`built.” The Board adopted this construction in the PAN IPRs. IPR2015-02001,
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`Paper 7 at 9. Moreover, this construction is consistent with the understanding of a
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`person of ordinary skill in the art in view of the specification. EX1002 ¶64.
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`D.
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`“instantiating ... a scanner for the specific programming
`language”
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`The broadest reasonable interpretation of the term “instantiating ... a scanner
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`for the specific programming language” includes “substituting specific data,
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`instructions, or both into a generic program unit to make it usable for scanning the
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`specific programming language.” The Board adopted this construction in the PAN
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`IPRs. IPR2015-02001, Paper 7 at 10. Moreover, this construction is consistent
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`with the understanding of a person of ordinary skill in the art in view of the
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`specification. EX1002 ¶65.
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`VII. DETAILED EXPLANATION OF GROUNDS FOR
`UNPATENTABILITY
`A.
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`[Ground 1] Chandnani and Kolawa Disclose or Render Obvious
`Each Element of Independent Claims 1, 9, 23, and 29
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`Although not directly challenged in this Petition, each of the challenged
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`claims depend from one of claim 1, 9, 23, or 29. These independent claims recite
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`essentially the same elements in method (claims 1 and 23) and system (claims 9
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`and 29) form. As described in more detail below, each and every element of
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`independent claims 1, 9, 23, and 29 is obvious under 35 U.S.C. § 103 over
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`Chandnani and Kolawa. This is the same combination of prior art over which the
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`Board instituted review of claims 1, 9, 23, and 29 in the PAN IPRs.
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`Independent Claim 1
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`i.
`To the extent that the claim 1 preamble is limiting, Chandnani in view of
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`Kolawa discloses the claim 1 preamble:
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`’408 Patent
`1. A computer
`processor-based
`multi-lingual
`method for
`scanning
`incoming
`program code,
`comprising:
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`Chandnani in view of Kolawa
`“The data stream corresponding to a file to scan is tokenized by
`lexical analysis .... To tokenize the data stream, a script
`language used in the data stream is determined using the
`language check data. The data stream is analyzed using the
`language check data to select the language definition data to
`use for the detection process.” EX1007 at [0062].
`“In one embodiment, the method includes preparing language
`description data corresponding to at least one script language
`....” EX1007 at [0014].
`“FIG. 1 illustrates a computer system or computer 70 on which
`a potentially infected file may execute and/or reside (and which
`thus may be a target of a script language virus). Computer
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`’408 Patent
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`Chandnani in view of Kolawa
`system 70 comprises a processor 71 ....” Chandnani at [0030].
`See also EX1002 ¶¶69-77.
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`Chandnani discloses a computer system, including a processor, that scans an
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`incoming data stream. EX1007 at [0014] (“method of detecting a script language
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`virus” includes “analyzing a data stream”), [0030] (“Computer system 70
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`comprises a processor 71”), [0062], Figs. 1-3. Chandnani’s system and method are
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`multi-lingual, using “language check data” to determine the language used in the
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`stream, and “select[ing] the language definition data to use for the detection
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`process.” Id. at [0062], [0035].
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`Chandnani in view of Kolawa discloses element 1.1:
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`’408 Patent
`[1.1] receiving,
`by a computer,
`an incoming
`stream of
`program code;
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`Chandnani in view of Kolawa
`“This disclosure provides tools (in the form of apparatus,
`systems and methods) for detecting script language viruses by
`performing a lexical analysis of a data stream on a computing
`device/system. The data stream may be generated from a
`potentially infected file (“subject file”). The subject file may
`be stored on a storage medium, such as hard disk or floppy
`disk, or received via a network, such as the Internet, or a wired
`or wireless transmission medium, such as telephone landlines
`or RF airwaves.” EX1007 at [0029].
`See also EX1002 ¶78.
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`
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`Chandnani discloses that “[t]he data stream may be generated from a
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`potentially infected file,” which may be “received via a network, such as the
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`Internet.” EX1007 at [0029]; see also id. at [0057].
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`Chandnani in view of Kolawa discloses element 1.2:
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`Chandnani in view of Kolawa
`“The present disclosure provides for detecting script language
`viruses by lexical analysis. Before the analysis is
`commenced, target script languages, including their
`constituent parts, which may be used by the script language
`viruses, are identified/defined.” EX1007 at [0034].
`See also EX1007 at [0062].
`See also EX1002 ¶79.
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`’408 Patent
`[1.2] determining,
`by the computer,
`any specific one of
`a plurality of
`programming
`languages in
`which the
`incoming stream is
`written;
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`Chandnani determines the programming language of the data stream using
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`“language check data” to determine the script language used in the data stream,
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`and then “select[ing] the language definition data to use for the detection process.”
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`EX1007 at [0062]. “Language check rules, which define characteristics of the
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`target script languages, differentiate one language (or group of languages) from
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`another language (or group of languages).” Id. at [0035].
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`Chandnani in view of Kolawa discloses element 1.3:
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`’408 Patent
`[1.3]
`instantiating, by
`the computer, a
`scanner for the
`specific
`programming
`language, in
`response to said
`determining,
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`Chandnani in view of Kolawa
`“T