`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00391
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`

`

`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘633 PATENT ......................................................................................... 4
`
`A. Overview ............................................................................................... 4
`
`B.
`
`Challenged Claims ................................................................................ 5
`
`III. CLAIM CONSTRUCTION ............................................................................ 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“determining… whether the downloadable-information
`includes executable code” (claims 1–4, 8, 11–13) ................................ 9
`
`“causing mobile protection code to be executed by the
`mobile code executor at a downloadable-information
`destination such that one or more operations of the
`executable code at the destination, if attempted, will be
`processed by the mobile protection code” (claim 14) ........................... 9
`
`“means for receiving downloadable-information” (claim 13) ............ 11
`
`“means for determining whether the downloadable-
`information includes executable code” (claim 13) ............................. 11
`
`“means for causing mobile protection code to be
`communicated to at least one information-destination of the
`downloadable-information, if the downloadable information
`is determined to include executable code” (claim 13) ........................ 13
`
`IV. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D) ...... 14
`
`A.
`
`B.
`
`C.
`
`The Similarities and Material Differences Between the
`Asserted Art and the Prior Art Previously Considered By
`the Office ............................................................................................. 14
`
`The Cumulative Nature of the Asserted Art and the Prior
`Art Evaluated During Examination ..................................................... 17
`
`The Extent to Which the Asserted Art was Evaluated
`During Examination ............................................................................ 18
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`D.
`
`The Extent of the Overlap Between the Arguments Made
`During Examination and the Manner in Which Petitioner
`Relies on the Prior Art ......................................................................... 18
`
`E. Whether Petitioner Has Pointed Out Sufficiently How the
`Examiner Erred In Its Evaluation of the Asserted Prior Art ............... 19
`
`F.
`
`The Extent to Which Additional Evidence and Facts
`Presented in the Petition Warrant Reconsideration of the
`Prior Art or Arguments ....................................................................... 20
`
`V.
`
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 314(A) ...... 21
`
`A. General Plastic Factors 2–7 Weigh Strongly in Favor of
`Denial .................................................................................................. 23
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Factor 2: The Cited References Were Available At the
`Time the Earlier Petitions Were Filed ...................................... 23
`
`Factor 3: At the Time of Filing, An Extensive Inter
`Partes Review Record Already Existed With Respect
`to the ‘494 Patent ...................................................................... 24
`
`Factor 4: The Timing of the Instant Petition Weighs in
`Favor of Denial ......................................................................... 26
`
`Factor 5: Petitioner Provides No Justification for
`Filing This Petition and Does Not Account for the
`Delay in Filing .......................................................................... 27
`
`Factors 6 and 7: The Board’s Resources Are Better
`Directed Elsewhere ................................................................... 28
`
`B.
`
`Factor 1 Is Neutral or Weighs In Favor of Denial .............................. 29
`
`1.
`
`Factor 1: The Same Claims Have Previously Been
`Challenged and the Identity of Petitioner Does Not
`Preclude Denial Under 35 U.S.C. § 314(a) ............................... 29
`
`VI. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES
`REVIEW SHOULD NOT BE INSTITUTED ............................................... 30
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`A. Hanson in View of Hypponen Does Not Render Obvious
`the Claims 1–4, 8, 11, 13, and 14 ........................................................ 31
`
`1.
`
`2.
`
`Petitioner Has Not Demonstrated that Hanson in View
`of Hypponen Discloses “[a content inspection engine
`communicatively coupled to the information monitor
`for/means for] determining [,by the computer] whether
`the downloadable-information includes executable
`code” (claims 1, 8, and 13) ....................................................... 32
`
`Petitioner Has Not Demonstrated that Hanson in View
`of Hypponen Discloses “causing mobile protection
`code to be executed by the mobile code executor at a
`downloadable-information destination such that one or
`more operations of the executable code at the
`destination, if attempted, will be processed by the
`mobile protection code” (claims 14) ......................................... 36
`
`B. Hanson In View of Hypponen and Touboul ’98 Does Not
`Render Obvious the Claim 12 ............................................................. 39
`
`VII. CONCLUSION .............................................................................................. 39
`
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 38
`
`Apple Inc. v. Immersion Corp.,
`Case IPR2017-01371, Paper 7 (P.T.A.B. Nov. 21, 2017) .................................. 22
`
`Becton, Dickinson & Co., v. B. Braun Melsungen AG,
`Case IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) ...........................passim
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 7
`
`General Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ...........................passim
`
`Jiawei Tech. (HK) Ltd. v. Simon Nicholas Richmond,
`Case IPR2014-00937, Paper 24 (P.T.A.B. Feb. 6, 2015) ..................................... 8
`
`Kayak Software Corp. v. IBM Corp.,
`Case CBM2016-00075, Paper 16 (P.T.A.B. Dec. 15, 2016) .............................. 25
`
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`Case IPR2014-00529, Paper 8 (P.T.A.B. Sept. 23, 2014) .................................. 38
`
`Mentor Graphics Corp. v. In-Depth Test LLC,
`IPR2017-02094, Paper 8 (P.T.A.B. Mar. 14, 2018) ................................... 8, 9, 10
`
`Netapp Inc. v. Realtime Data LLC,
`Case IPR2017-01195, Paper 9 (P.T.A.B. Oct. 12, 2017) ................................... 24
`
`Netapp, Inc. v. Realtime Data LLC,
`Case IPR2017-01354, Paper 16 (P.T.A.B. Nov. 14, 2017) .......................... 23, 30
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`Case CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ................................ 4
`
`- iv -
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`Unified Patents, Inc. v. Silver State Intell. Techs., Inc.,
`Case IPR2017-01531, Paper 7 (P.T.A.B. Dec. 11, 2017) .................................. 28
`
`Statutes
`
`35 U.S.C. § 103 .................................................................................................. 31, 38
`
`35 U.S.C. § 112(6) ............................................................................................. 11, 13
`
`35 U.S.C. § 112(f) .................................................................................................... 12
`
`35 U.S.C. §§ 314(a) ..........................................................................................passim
`
`35 U.S.C. § 315(e)(2) ............................................................................................... 30
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.8 ....................................................................................................... 27
`
`37 C.F.R. § 42.22(a)(2) ........................................................................................ 8, 38
`
`37 C.F.R. § 42.65(a) ................................................................................................. 38
`
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.104(b) ................................................................................................ 8
`
`37 C.F.R. § 42.108 ............................................................................................... 1, 23
`
`77 Fed. Reg. 48756 at 48766 (Aug. 14, 2012) ........................................................... 7
`
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`I.
`
`INTRODUCTION
`
`On December 22, 2017, Cisco Systems, Inc., (“Cisco” or “Petitioner”)
`
`submitted a Petition to institute inter partes review (“IPR”) of U.S. Patent No.
`
`7,647,633 (Ex. 1001, “the ‘633 Patent”), challenging claims 1–4, 8, and 11–14.
`
`Finjan, Inc. (“Patent Owner”) requests that the Board not institute inter partes
`
`review because Petitioner has not demonstrated a reasonable likelihood that it
`
`would prevail in showing unpatentability of any of the challenged claims on the
`
`grounds asserted in its Petition, as required under 37 C.F.R. § 42.108(c).
`
`The Petition should be denied under 35 U.S.C. §§ 314(a) and/or 325(d). The
`
`‘633 Patent has now been the subject of four Petitions for Inter Partes Review.
`
`See generally Case Nos. IPR2015-01974, IPR2016-00480, and IPR2016-00966. A
`
`Final Written Decision has issued confirming the patentability of all claims. The
`
`‘633 Patent has also been the subject of two ex parte reexamination requests. See
`
`generally Control Nos. 90/013,016 and 90/013,652. The challenged claims have
`
`survived each one of these challenges, and multiplicity of requests for review
`
`presents an overwhelming strain on the Board’s resources. Compounding these
`
`facts, Petitioner improperly failed either to apply the Board’s prior constructions of
`
`dispositive claim terms or to argue that the Board’s prior constructions were in
`
`error.
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Petitioner provides no justification for why the Board should consider this
`
`sixth post-grant challenge over 35 U.S.C. § 325(d) other than that “the grounds do
`
`not rely on modifying (e.g., instrumenting) applets to include protection code, and
`
`the Petitioner’s arguments regarding the ‘determining’ limitation have not been
`
`addressed previously by the Office.” Petition at 35. However, at least the
`
`“determining” argument presented in the Petition is precisely the same one
`
`previously rejected by the Board.1
`
`Petitioner also misunderstands the General Plastic factors in arguing that the
`
`Board should institute inter partes review of this sixth post-grant challenge to the
`
`‘633 Patent. In particular, it appears to understand the Board’s precedent to mean
`
`that not being “a named defendant at the time of filing the previous IPRs and… not
`
`seeking to join a previously filed IPR,” that the General Plastic factors do not
`
`apply. See Petition at 34. In coming to this conclusion, Petitioner failed to present
`
`any meaningful analysis of the General Plastics factors and ignored this Board’s
`
`precedent, which demonstrates that dismissal of the Petition under
`
`35 U.S.C.§ 314(a) is proper.
`
`
`1 As discussed below, Petitioner fails to provide any explanation to support its
`
`conclusion that a POSA would understand Hanson’s packet tagging technique to
`
`not modify executable code. See § VI.A.2, infra.
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`Petitioner’s proposed grounds also substantively fail to demonstrate a
`
`reasonable likelihood that it would prevail in showing unpatentability with respect
`
`to the challenged claims. For example, the Board has previously found that “[i]n
`
`order to disclose determining whether the downloadable-information includes
`
`executable code, [a reference] must disclose distinguishing between two alternative
`
`possibilities: executable code is included in the downloadable-information, and
`
`executable code is not included in the downloadable-information.” Ex. 2001 at 5.
`
`(emphasis in original). Incredibly, Petitioner ignored the Board’s prior
`
`construction when applying the cited references to the ‘633 Patent claims and
`
`failed even to argue that the Board’s prior construction was in error. None of the
`
`references cited, taken alone or in combination, disclose this aspect of the
`
`challenged claims.
`
`Similarly, Petitioner ignored the Board’s prior construction of the term
`
`“causing mobile protection code to be executed by the mobile code executor at a
`
`downloadable-information destination such that one or more operations of the
`
`executable code at the destination, if attempted, will be processed by the mobile
`
`protection code.” See Ex. 2002 at 17–18 (“In light of the disclosure, the plain and
`
`ordinary meaning of the disputed claim language emerges: the executable code
`
`whose operations are processed by the mobile protection code at the destination is
`
`the same as the executable code received, i.e., it undergoes no modification.”).
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`Although there are a variety of reasons why the ‘633 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 CBM2014-00082, Paper 12 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.”). The deficiencies of the Petition noted herein, however, are 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 ‘633 PATENT
`
`A. Overview
`
`The ‘633 Patent claims priority to a number of patents and patent
`
`applications, including U.S. Provisional Patent Application No. 60/205,591 and
`
`U.S. Patents Nos.7,058,822 (“the ‘822 Patent”), 6,804,780 (“the ‘780 Patent”),
`
`6,092,194 (Ex. 1020, “the ‘194 Patent”), 6,480,962 (“the ‘962 Patent”), and
`
`6,167,520 with an earliest claimed priority date of January 29, 1997. See Ex. 1013.
`
`The ‘633 Patent describes systems and methods for protecting against
`
`executable code downloaded from remote sites, such as web servers. ‘633 Patent
`
`at Abstract. In particular, the ‘633 Patent describes a network “re-communicator”
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`that intercepts downloadable-information and determines whether the
`
`downloadable-information includes executable code (i.e. is a “Downloadable”).
`
`Id. at 2:39–44. For this purpose, the ‘633 Patent further discloses a detection
`
`engine that is able to determine whether the downloadable-information includes
`
`executable code, thus identifying that the downloadable is a “detected-
`
`downloadable.” Id. at 12:8–17. If the downloadable-information includes
`
`executable code, in one example, the re-communicator causes the mobile
`
`protection code (“MPC”) to be transferred to the destination. Id. at 2:66–3:4.
`
`The MPC and protection policies can be packaged with the downloadable-
`
`information in a “sandbox.” Id. “The sandboxed package includes mobile
`
`protection code (‘MPC’) for causing one or more predetermined malicious
`
`operations or operation combinations of a Downloadable to be monitored or
`
`otherwise intercepted.” Id. at 3:7–11. When an undesirable operation is
`
`intercepted, the protection policy causes one or more predetermined operations to
`
`be performed. Id. at 3:11–16.
`
`B. Challenged Claims
`
`Petitioner challenges claims 1–4, 8, 11, 13, and 14 of the ‘633 Patent, of
`
`which claims 1, 8, 13, and 14 are independent. The challenged claims are
`
`reproduced below:
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`1. A computer processor-based method, comprising:
`
`receiving, by a computer, downloadable-information;
`
`determining, by the computer, whether the downloadable-
`information includes executable code; and
`
`based upon the determination, transmitting from the computer
`mobile protection code to at least one information-destination of the
`downloadable-information, if the downloadable-information is
`determined to include executable code.
`
`8. A computer processor-based system for computer security, the
`system comprising
`
`an information monitor for receiving downloadable-information
`by a computer;
`
`a content inspection engine communicatively coupled to the
`information monitor for determining, by the computer, whether the
`downloadable-information includes executable code; and
`
`a protection agent engine communicatively coupled to the
`content inspection engine for causing mobile protection code
`(“MPC”) to be communicated by the computer to at least one
`information-destination of the downloadable-information, if the
`downloadable-information is determined to include executable code.
`
`13. A processor-based system for computer security, the system
`comprising:
`
`means for receiving downloadable-information;
`means for determining whether the downloadable-information
`includes executable code; and
`means for causing mobile protection code to be communicated to at
`
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`least one information-destination of the downloadable-information, if
`the downloadable-information is determined to include executable
`code.
`
`14. A computer program product, comprising a computer usable
`medium having a computer readable program code therein, the
`computer readable program code adapted to be executed for computer
`security, the method comprising:
`
`providing a system, wherein the system comprises distinct
`software modules, and wherein the distinct software modules
`comprise an information re-communicator and a mobile code
`executor;
`
`receiving, at the information re-communicator, downloadable-
`information including executable code; and
`
`causing mobile protection code to be executed by the mobile
`code executor at a downloadable-information destination such that
`one or more operations of the executable code at the destination, if
`attempted, will be processed by the mobile protection code.
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review proceeding, claims are given their broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756 at 48766 (Aug. 14, 2012); see also In re Cuozzo Speed Techs., LLC,
`
`793 F.3d 1268, 1278 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`
`approved the broadest reasonable interpretation standard in enacting the AIA.”).
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`As noted in the Introduction, the ‘633 Patent has been the subject of
`
`extensive post-grant litigation. Over the course of these proceedings, several terms
`
`of the ‘633 Patent have been construed. Petitioner, however, failed in its
`
`obligation to notify the Board of these constructions. See 37 C.F.R. § 42.22(a)(2)
`
`(“(a) Each petition or motion must be filed as a separate paper and must include…
`
`(2) A full statement of the reasons for the relief requested, including a detailed
`
`explanation of the significance of the evidence including material facts, and the
`
`governing law, rules, and precedent.”) (emphasis added).
`
`Petitioner’s failure to (1) inform the Board of these prior, dispositive
`
`constructions, (2) apply these constructions to the challenged claims, and/or (3)
`
`argue for a different construction of these terms warrants denial of the Petition
`
`under 37 C.F.R. § 42.104(b)(3)–(5). See Jiawei Tech. (HK) Ltd. v. Simon Nicholas
`
`Richmond, Case IPR2014-00937, Paper 24 at 1 (P.T.A.B. Feb. 6, 2015) (“Our
`
`denial of review these claims was premised on Petitioner’s failure to offer a
`
`construction and analysis of a term critical to understanding the scope of
`
`independent claims 1 and 45–47, “color changing cycle,” and consequent failure to
`
`meet its burden under 37 C.F.R. § 42.104(b)(3)–(5).”); see also Mentor Graphics
`
`Corp. v. In-Depth Test LLC, IPR2017-02094, Paper 8 at 9 (P.T.A.B. Mar. 14,
`
`2018) (finding that “Petitioner’s failure to take a clear position on” a term
`
`previously construed by the Board “is grounds alone for denying the Petition”).
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
`
`A.
`
`“determining… whether the downloadable-information includes
`executable code” (claims 1–4, 8, 11–13)
`
`The Board previously determined that the term “determining… whether the
`
`downloadable-information includes executable code” means “distinguishing
`
`between two alternative possibilities: executable code is included in the
`
`downloadable-information and executable code is not included in the
`
`downloadable-information.” Ex. 2001 at 5. Petitioner was aware of the
`
`reexamination in which the Board made this determination. See Petition at v
`
`(citing “Select portions2 of the prosecution history of the U.S. Reexamination
`
`application No. 90/013,016”); id. at 6 (noting that the ‘633 Patent was subject to
`
`reexamination in Control No. 90/013,016). Nevertheless, Petitioner failed to apply
`
`this construction to the challenged claims or argue for a different construction,
`
`which “is grounds alone for denying the Petition.” Mentor Graphics, Paper 8 at 9.
`
`B.
`
`“causing mobile protection code to be executed by the mobile code
`executor at a downloadable-information destination such that one
`or more operations of the executable code at the destination, if
`attempted, will be processed by the mobile protection code”
`(claim 14)
`
`The Board previously determined that the term “causing mobile protection
`
`code to be executed by the mobile code executor at a downloadable-information
`
`
`2 Notably, Petitioner did not include the Board’s decision finding the challenged
`
`claims patentable in its “Select portions of the prosecution history.”
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`destination such that one or more operations of the executable code at the
`
`destination, if attempted, will be processed by the mobile protection code” means
`
`that “the executable code whose operations are processed by the mobile protection
`
`code at the destination is the same as the executable code received, i.e., it
`
`undergoes no modification.” Ex. 2002 at 18.
`
`As with the “determining” term discussed above, Petitioner was aware of the
`
`proceedings in which the Board made this determination. See Petition at 6 (noting
`
`that the ‘633 Patent was subject to inter partes review in Case Nos. IPR2015-
`
`01974 and IPR2016-00480). Again, however, Petitioner failed to apply this
`
`construction to the challenged claims or argue for a different construction, which is
`
`sufficient reason for the Board to deny this Petition.3 Mentor Graphics, Paper 8 at
`
`9. As discussed in more detail below, this conclusion is unsupported by the plain
`
`text of Hanson, and Petitioner’s expert provides no explanation as to why a POSA
`
`would reach this conclusion.
`
`
`3 The Petition includes one conclusory footnote asserting that “Hanson describes
`
`and POSA would have understood that the security program is attached (tagged) to
`
`the data packets (executable code) as a separate object that does not modify the
`
`data packets (executable code).” Petition at 57.
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`“means for receiving downloadable-information” (claim 13)
`
`C.
`Governed by 35 U.S.C. § 112(6), this term has the function: receiving
`
`downloadable-information, and the structure: re-communicating device. See ‘633
`
`Patent at 5:34-37 (providing examples of “information re-communicating devices”
`
`for performing the relevant function of “receiving downloadable-information.”).
`
`Petitioner’s claim construction excludes examples from the specification.
`
`See Petition at 20 (proposing that the “corresponding structure for performing this
`
`function is a server or firewall.”). In contrast, the specification of the ‘633 Patent
`
`provides that servers, firewalls, resources, gateways, email relays or other
`
`information re-communicating devices receive downloadable information. ‘633
`
`Patent at 5:34-39. Because Petitioner’s construction excludes these embodiments,
`
`the proper structure for receiving Downloadable-information is a re-
`
`communicating device.
`
`D.
`
`“means for determining whether the downloadable-information
`includes executable code” (claim 13)
`
`Governed by 35 U.S.C. § 112(6), this term has the function: determining
`
`whether the downloadable-information includes executable code, and the structure:
`
`detection engine. See ‘633 Patent at 12:8-26 and Figs. 4 & 5 (describing various
`
`components of “detection engine 402”). The “detection engine” of the ‘633 Patent
`
`is a component of the “protection engine” that “receives a potential-downloadable
`
`and determines, more suitably in conjunction with inspection parameters 422,
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`whether the potential-Downloadable includes executable code and is thus a
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`‘detected-Downloadable’.”). Id. at 12:9–12; 11:36–40 (“Protection engine 400
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`comprises information monitor 401, detection engine 402, and protected packaging
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`engine 403….”).
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`Petitioner’s construction includes the extraneous limitation that the structure
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`includes equivalents. See Petition at 21 (proposing that the structure is “a server
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`programmed to perform file type detection or content detection on the
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`downloadable-information and equivalents.”). This limitation is unnecessary as
`
`the statute already provides that the structure of a means-plus-function claim
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`includes the “equivalents thereof.” 35 U.S.C. § 112(f). As such, there is no need
`
`to include “equivalents” in the construction of this term.
`
`Petitioner’s proposed construction should also be rejected because it adds
`
`extraneous functional language to the identified “structure.” While Petitioner
`
`recognizes that “the protection engine within the server provides for ‘detecting
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`whether received potential-Downloadables include executable code,” its identified
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`structure is not commensurate with that observation. Because Petitioner’s
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`construction is contrary to the law, the proper structure for receiving
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`Downloadable-information is a detection engine.
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`E.
`
`“means for causing mobile protection code to be communicated to
`at least one information-destination of the downloadable-
`information, if the downloadable information is determined to
`include executable code” (claim 13)
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`Governed by 35 U.S.C. § 112(6), this term has the function: causing
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`mobile protection code to be communicated to at least one information destination
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`of the downloadable information, if the downloadable information is determined to
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`include executable code, and the structure: re-communicating device. See ‘633
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`Patent at 5:34-47 (providing examples of “information re-communicating devices”
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`for performing the relevant function of “causing mobile protection code (‘MPC’)
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`and downloadable protection policies to be communicated to . . . information
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`destinations.”).
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`Similar to the means plus function terms described above, Petitioner
`
`proposes a construction for this term that is contrary to the law and unnecessary.
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`Petition at 22 (asserting that the “means for causing” recited in claim 13 is
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`“protection engine programmed to package the mobile protection code with the
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`downloadable-information for transfer to the information destination of the
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`downloadable-information and equivalents”). For the same reasons noted above,
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`Petitioner’s construction should be rejected because it does not match the legal
`
`standard, and further, is unnecessary and it does not define the appropriate
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`structure for the function recited.
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`IV. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D)
`
`The Board should exercise its discretion under 35 U.S.C. § 325(d) to decline
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`to institute inter partes review because the Petition relies on substantially the same
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`arguments that were previously presented to the Patent Office. In particular,
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`Petitioner’s arguments regarding the “determining” feature recited in claims 1–4,
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`8, and 11–13 have already been considered and rejected by the Office. See, e.g.,
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`Ex. 2001 at 3–5.
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`The Board recently set out a number of non-exclusive factors for
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`determining whether to exercise its discretion under 35 U.S.C. § 325(d). As
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`demonstrated below, those factors weigh in favor of declining institution. See
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`Becton, Dickinson & Co., v. B. Braun Melsungen AG, Case IPR2017-01586, Paper
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`8 at 17–18 (P.T.A.B. Dec. 15, 2017).
`
`A. The Similarities and Material Differences Between the Asserted
`Art and the Prior Art Previously Considered By the Office
`
`The first factor, “the similarities and material differences between the
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`asserted art and the prior art involved during examination” weighs in favor of
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`denying the Petition under 35 U.S.C. § 325(d). Becton, Dickinson, Paper 8 at 17.
`
`Petitioner cites both Hanson and Hypponen as allegedly disclosing the
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`“determining” step recited in claims 1–4, 8, and 11–13 of the ‘633 Patent. See
`
`Petition at 48–54. However, both of these references share the same material
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`Patent Owner’s Preliminary Response
`IPR2018-00391 (U.S. Patent No. 7,647,633)
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`deficiencies of the references the Office previously considered with respect to this
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`term.
`
`During reexamination of the ‘633 Patent, the Office considered whether Ji
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`U.S. Patent No. 5,983,348 (Ex. 2004, “Ji”) disclosed “determining… whether the
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`downloadable-information includes executable code.” See Ex. 2001 at 3–5.
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`Relevant to the Board’s determination was that Ji’s disclosure of using applet tags
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`to recognize “the existence of executable applet code” is not sufficient to meet this
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`claim limitation:
`
`In order to disclose determining whether the downloadable-
`information
`includes executable code,
`Ji must disclose
`distinguishing between two alternative possibilities: executable
`code is included in the downloadable-information, and executable
`code is not included in the downloadable-information.
`
`To the extent Ji's scanner does detect applets (for example, via
`applet tags), Ji does determine some cases where executable code
`is included in the downloadable-information (the applet tag
`reasonably indicates the existence of executable applet code).
`Nonethele