`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`JUNIPER NETWORKS, INC.
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________________
`
`Case IPR2019-00060
`Patent 7,647,633
`
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
` 
`
`II.
` 
`
`INTRODUCTION ........................................................................................... 1 
`
`FACTS ............................................................................................................. 4 
`
`A.
`
`  Overview of ‘633 Patent ....................................................................... 4 
`
`B.
`
` 
`
`Challenged Claims ................................................................................ 5 
`
`
`
`  CLAIM CONSTRUCTION ............................................................................ 5 III.
`
`A.
`
` 
`
`B.
`
` 
`
`C.
`
` 
`
`D.
`
` 
`
`E.
`
` 
`
`F.
` 
`
`“executable code” (all challenged claims) ............................................ 6 
`
`“mobile protection code” (all challenged claims) ................................. 6 
`
`“downloadable-information” (all challenged claims) ........................... 8 
`
`“determining, by the computer, whether the downloadable-
`information includes executable code” ................................................. 9 
`
`“information re-communicator” and “information monitor”
`(claims 8 and 14) ................................................................................. 11 
`
`“A Computer Program Product… The Method Comprising”
`(claims 14 and 19) ............................................................................... 13 
`
`IV.
`
`  THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d) ....... 14 
`
`A.
`
` 
`
`B.
`
` 
`
`C.
`
` 
`
`D.
`
` 
`
`The similarities and material differences between the asserted
`art and the prior art involved during examination ............................... 17 
`
`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, including whether the prior art was the basis for
`rejection ............................................................................................... 18 
`
`The extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art; .......................... 19 
`
`- i -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`E.
`
`  Whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art ................... 20 
`
`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) ....... 20 
`
`A.
`
` 
`
`B.
`
` 
`
`C.
`
` 
`
`D.
`
` 
`
`E.
`
` 
`
`F.
` 
`
`G.
`
` 
`
`Factor 1 Weighs Slightly Against Institution or is Neutral ................. 22 
`
`Factor 2 Weighs Against Institution ................................................... 22 
`
`Factor 3 Weighs Against Institution ................................................... 23 
`
`Factor 4 Weighs Against Institution ................................................... 25 
`
`Factor 5 Weighs Against Institution ................................................... 26 
`
`Factor 6 Weighs Against Institution ................................................... 27 
`
`Factor 7 is Neutral ............................................................................... 27 
`
`VI.
`
`  THE CHALLENGED CLAIMS ARE PATENTABLE ............................... 28 
`
`A.
`
`  Ground 1 Fails to Demonstrate a Reasonable Likelihood That
`Any Challenged Claim is Unpatentable .............................................. 28 
`
`1. 
`
`2. 
`
`Sonnenberg In View of Jensen Fails to Disclose
`“determining, by the computer, whether the
`downloadable-information includes executable code”
`(claims 1 and 8) ......................................................................... 28 
`
`Sonnenberg In View of Jensen Fails to Disclose “mobile
`protection code” (all challenged claims) .................................. 31 
`
`B.
`
` 
`
`Hanson Alone and Hanson in View of Lemay Fail to Render
`Obvious Claims 1, 8, 14, and 19 ......................................................... 33 
`
`1. 
`
`Hanson Alone and Hanson in View of Lemay Does Not
`Disclose “receiving[…] downloadable-information” ............... 34 
`
`- ii -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`2. 
`
`3. 
`
`4. 
`
`Hanson in View of Leamay Does Not Disclose an
`“information re-communicator” or an “information
`monitor” .................................................................................... 36 
`
`Hanson Alone and Hanson in View of Leamay Does Not
`Disclose an “determining, by the computer, whether the
`downloadable-information includes executable code” ............. 37 
`
`Hanson Alone Does Not Disclose “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” ........................................................................ 39 
`
`a.  Petitioner’s Argument That Hanson Does Not
`Disclose Modifying the Executable Code
`Should be Rejected ................................................... 40 
`
`b.  Hanson is Not Enabled ............................................. 42 
`
`c.  To the Extent That Hanson is Comprehensible,
`it Teaches Modifying the Executable Code ............. 43 
`
`5. 
`
`Hanson Does Not Disclose “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” ................................................................................... 46 
`
`
`
`  CONCLUSION .............................................................................................. 48 VII.
`
`- iii -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Aqua Prods., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................ 8
`
`Beckman Instruments, Inc. v. LKB Produkter AB,
`892 F.2d 1547, 1551 (Fed. Cir. 1989) ................................................................ 42
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`Case IPR2017-01586, Paper 8 (P.T.A.B. Dec. 15, 2017) .................................. 16
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 6
`
`Eset, LLC v. Finjan, Inc.,
`Case IPR2017-01738, Paper 21 (P.T.A.B. June 18, 2018) ................................ 16
`
`General Plastic Industrial Co. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ...........................passim
`
`In re Kumar,
`418 F.3d 1361 (Fed. Cir. 2005) .......................................................................... 42
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F. 3d 1292, 1298 (Fed. Cir. 2015) ................................................................. 8
`
`Motorola, Inc. v. Interdigital Tech. Corp.,
`121 F.3d 1461, 1471 (Fed.Cir.1997) .................................................................. 42
`
`See NetApp Inc. v. Realtime Data LLC,
`Case IPR2017-01195, Paper 9 at 10 (P.T.A.B. Oct. 12, 2017) .................... 21, 22
`
`In re NTP, Inc.,
`654 F.3d 1279, 1288 (Fed. Cir. 2011) .................................................................. 8
`
`Palo Alto Networks, Inc. v. Finjan, Inc.,
`IPR2015-01974, Final Written Decision, Paper 49 (P.T.A.B. Mar.
`16, 2017) ............................................................................................................. 39
`
`- i -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`In re Payne,
`606 F.2d 303, 314 (CCPA 1979) ........................................................................ 42
`
`Shenzhen Silver Star Intelligent Tech. Co. v. IRobot Corp.,
`Case IPR2018-00761, Paper 15 (P.T.A.B. Sept. 5, 2018) ................ 21, 25, 26, 27
`
`Travelocity.com L.P. v. Cronos Techs., LLC,
`Case CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ................................ 3
`
`Statutes
`35 U.S.C. § 314(a) ...........................................................................................passim
`
`35 U.S.C. § 315(b) .............................................................................................. 1, 26
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.100(b) ................................................................................................ 6
`
`37 C.F.R. § 42.108(c) ................................................................................................ 1
`
`
`
`- ii -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`On October 10, 2018, Juniper Networks, Inc., (“Petitioner” or “Juniper”)
`
`filed a Petition for inter partes review of claims 1, 8, 14, and 19 of U.S. Patent No.
`
`7,647,633 (Ex. 1001, the “‘633 Patent”). 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).
`
`
`I.
`
`INTRODUCTION
`
`This Petition should be denied under 35 U.S.C. § 325(d) and/or § 314(a) as it
`
`constitutes a harassing, duplicative, and meritless challenge to the petitioned
`
`claims. This Petition is the fifth petition for inter partes review of the ’633 Patent
`
`and the seventh post-grant challenge to the ’633 Patent, including the ex parte
`
`reexaminations in Control Nos. 90/013,016 and 90/013,652. Petitioner here asserts
`
`the same primary reference (Hanson) in two of its three proposed grounds that is
`
`currently the subject of a pending inter partes review in IPR2018-00391, waiting
`
`as long as possible under 35 U.S.C. § 315(b) to observe the proceeding and attempt
`
`to tailor its petition to address perceived deficiencies in the parties’ positions. The
`
`Board should not reward this type of gamesmanship by consenting to expend its
`
`and Patent Owner’s resources on this duplicative challenge, particularly since
`
`- 1 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`Petitioner could have chosen instead to join the instituted proceeding in IPR2018-
`
`00391. The Petition should also be denied substantively on the merits.
`
`Proposed Ground 1, in which Petitioner asserts that the challenged claims
`
`are unpatentable over Sonnenberg in view of Jensen fails to disclose “determining,
`
`by the computer, whether the downloadable-information includes executable code”
`
`because Sonnenberg only teaches distinguishing between “document executable
`
`files,” both of which (by Sonnenberg’s express disclosure) can include executable
`
`code, such as viruses. See Sonnenberg, U.S. Patent No. 7,076,650 (Ex. 1005,
`
`“Sonnenberg”) at 8:22–29. Jensen does not cure this deficiency because it merely
`
`describes the different types of code without disclosing “determining, by the
`
`computer, whether [any] downloadable-information includes executable code.”
`
`The combination also fails to disclose the “causing mobile protection code to be
`
`executed” element of claim 14 because rather than “operations of the executable
`
`[… being] processed by the mobile protection code,” Jensen explicitly discloses
`
`that the operations continue to “rely on the protection mechanisms of the
`
`underlying operating system” rather than being processed by the “protection
`
`wrappers” that Petitioner maps to the claimed MPC. Jensen et al., Protection
`
`Wrappers (Ex. 1006, “Jensen”) at 3.
`
`Petitioner’s proposed Ground 2 is also substantively meritless. The Board
`
`has already determined that Hanson does not disclose “determining, by the
`
`- 2 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`computer, whether the downloadable-information includes executable code.” See
`
`Cisco Sys., Inc. v. Finjan, Inc., Case IPR2018-00391, Paper 7 (June 5, 2018).
`
`Petitioner’s reliance on the newly-cited Lemay does not cure this deficiency
`
`because the program Petitioner cites to as allegedly not including executable code
`
`are in fact executable, even if they cannot be executed as a stand-alone program.
`
`See Lemay, et al., Teach Yourself Java in 21 Days (Ex. 1009, “Lemay”) at 15
`
`(disclosing that the allegedly non-executable code is executable so long as there is
`
`“a separate Java applet or application that uses this class”). Moreover, Hanson is
`
`not enabling of the challenged claims and fails to disclose other claim elements,
`
`including “receiving downloadable-information” and “providing a system…
`
`wherein the distinct software modules comprise an information re-communicator
`
`and a mobile code executor.”
`
`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. Cronos 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
`
`- 3 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`likelihood that it would prevail in showing unpatentability of any of the challenged
`
`claims.
`
`
`II.
`
`FACTS
`
`A.
`
` Overview of ‘633 Patent
`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. 2010, “the ’194 Patent”), 6,480,962 (“the ’962 Patent”), and
`
`6,167,520 with an earliest claimed priority date of January 29, 1997. See ‘633
`
`Patent, Reexam. Cert. at 1:21-48.
`
`The ‘633 Patent describes systems and methods for protecting against
`
`malicious executable code. ‘633 Patent at Abstract. In particular, for the
`
`challenged claims, the ‘633 Patent describes a network “re-communicator” that
`
`receives downloadable-information that includes executable code (i.e., is a
`
`“Downloadable”). Id. at 2:39–44. The re-communicator causes mobile protection
`
`code (“MPC”) and the downloadable-information with executable code to be
`
`transferred to the destination, without modifying the executable code. Id. at 2:66–
`
`3:4, 4:11-16, 10:39-45.
`
`As noted in the Background of the Invention Section, the invention disclosed
`
`and claimed in the ‘633 Patent distinguishes itself over the prior art because the
`
`- 4 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`prior art modifies executable code while the ‘633 Patent does not modify
`
`executable code:
`
`To make matters worse, certain classes of viruses are not well
`recognized or understood, let alone protected against. It is observed by
`this inventor, for example, that Downloadable information comprising
`program code can include distributable components (e.g. Java™
`applets and JavaScript scripts, ActiveX™ controls, Visual Basic, add-
`ins and/or others). It can also include, for example, application
`programs, Trojan horses, multiple compressed programs such as zip
`or meta files, among others. U.S. Pat. No. 5,983,348 to Shuang,
`however, teaches a protection system for protecting against only
`distributable components
`including “Java applets or ActiveX
`controls”, and further does so using resource intensive and high
`bandwidth static Downloadable content and operational analysis, and
`modification of the Downloadable component; Shuang further fails to
`detect or protect against additional program code included within a
`tested Downloadable.
`
`Id. at 1:58–2:6.
`
`B.
`
` Challenged Claims
`Petitioner challenges claims 1, 8, 14, and 19 of the ’633 Patent. The claims
`
`are reproduced in Appendix A.
`
` CLAIM CONSTRUCTION
`III.
`
`In an inter partes review proceeding, claims are given their broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the patent in which
`
`- 5 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`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.”).
`
`A.
`
`“executable code” (all challenged claims)
`
`
`In IPR2015-01974 and IPR2018-00391, the Board determined 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.” Petitioner does not dispute this construction, and it should also be
`
`adopted in this case.
`
`B.
`
`“mobile protection code” (all challenged claims)
`
`
`The term “mobile protection code” means “code that, at runtime, monitors or
`
`intercepts actually or potentially malicious code operations without modifying the
`
`executable code.” This construction has been adopted in two different district
`
`courts. See Ex. 2001 at 5; see also Ex. 2002 at 3–4.
`
`Petitioner cites to one of Patent Owner’s claim construction briefs from
`
`these cases to support its position that “mobile protection code” means “code for
`
`causing one or more predetermined malicious operations or operation
`
`combinations of a Downloadable to be monitored or otherwise intercepted.”
`
`Petition at 9. However, Petitioner fails to inform the Board that (1) its proposed
`
`- 6 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`construction is not commensurate with the construction actually proposed by
`
`Finjan in those cases and (2) that in both cases, Finjan lost this argument in favor
`
`of the construction it proposes herein. See Ex. 2001 at 5 (Finjan proposing to
`
`construe MPC as “code capable of monitoring or intercepting [actually or]
`
`potentially malicious code”); Ex. 2002 at 3-4 (Finjan proposing to construe MPC
`
`as “code capable of monitoring or intercepting potentially malicious code”).
`
`Petitioner explains that its proposed “construction means that the MPC may
`
`work in conjunction with other software, including the operating system, in order
`
`to effect monitoring and intercepting.” Petition at 9. This statement is accurate, as
`
`the portion of the specification cited in the Petition accurately describes how, in
`
`one embodiment, the MPC “installs the sandbox engine (803-805) and policies 342
`
`into the downloadable process space P2[,which] is done in a different way in each
`
`operating system.” ’633 Patent at 18:17-19.
`
`However Petitioner’s overbroad construction does not follow from its
`
`argument. Rather, in the same portion of the specification cited in support of its
`
`argument, the specification explicitly states that “[d]uring Downloadable
`
`operation, resource access analyzer or ‘RAA’ 805 receives and determines a
`
`response to diverted Downloadable (i.e. ‘malicious’) operations in accordance with
`
`corresponding protection policies of policies 342.” ’633 Patent at 18:25–28. In
`
`other words, the MPC monitors and intercepts the Downloadable’s operations
`
`- 7 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`without modifying the executable code. Petitioner cites no aspect of the
`
`specification that suggests that the MPC does not monitor or intercept
`
`Downloadable operations and should, therefore, be rejected. See Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F. 3d 1292, 1298 (Fed. Cir. 2015), overruled on other
`
`grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (“Even
`
`under the broadest reasonable interpretation, the Board's construction ‘cannot be
`
`divorced from the specification and the record evidence….’” (quoting In re NTP,
`
`Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011))).
`
`Accordingly, the Board should adopt Patent Owner’s proposed construction
`
`of the term MPC and reject Petitioner’s overbroad construction that is inconsistent
`
`with the intrinsic record.
`
`C.
`
`“downloadable-information” (all challenged claims)
`
`
`The term “downloadable-information” means “information which is
`
`downloaded from a source computer which may or may not include executable
`
`code.” See Declaration of Nenad Medvidovic, Ph.D. on the Validity of Claims 1-
`
`4, 8, and 11-14 of U.S. Patent No. 7,647,633 (Ex. 2003, “Medvidovic Decl.”),
`
`¶ 45.
`
`A Downloadable is “an executable application program, which is
`
`downloaded from a source computer and run on the destination computer.” ’194
`
`- 8 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`Patent at 1:44-46. The ‘633 Patent further notes that a Downloadable is
`
`downloadable-information “found to include executable code”:
`
`Thus, for convenience, received information will also be referred to as
`a “potential-Downloadable”, and received information found to
`include executable code will be referred to as a “Downloadable” or
`equivalently as a “detected-Downloadable” (regardless of whether the
`executable code
`includes one or more application programs,
`distributable “components” such as Java, ActiveX, add-in, etc.).
`
`‘633 Patent at 9:18-24; Medvidovic Decl., ¶ 46. Thus, downloadable-information
`
`should be considered “information which is downloaded from a source computer
`
`which may or may not include executable code.”
`
`D.
`
`
`
` “determining, by the computer, whether the downloadable-
`information includes executable code”
`
`The term “determining, by the computer, 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.” This construction has been adopted by the Board in Control No.
`
`90/013,016, IPR2015-01974, and IPR2018-00391. Petitioner does not dispute this
`
`construction, and it should be adopted in this case. See Petition at 11.
`
`Petitioner argues that Patent Owner argued for a broader construction of this
`
`term in the parallel district court litigation between the parties. In particular,
`
`- 9 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`Petitioner states that “Finjan has proposed a broader construction of the term as
`
`‘detecting content that is likely to be of an executable type that can carry
`
`executable content.’” Id. Not so.
`
`In the parallel litigation, Finjan argued that this term should be accorded its
`
`“plain and ordinary meaning.” See Ex. 1011. However, Finjan did not object to
`
`Juniper’s proposed construction on the basis of the construction involving
`
`“distinguishing between two alternative possibilities” or that one of those
`
`alternative possibilities was that “executable code is not included in the
`
`downloadable-information.” Rather, Finjan’s objection to Juniper’s construction
`
`was that it did not account for all of the embodiments in the specification. Finjan
`
`noted that the term was “readily understood…as detecting content that is likely to
`
`be of an executable type that can carry executable content.” Ex. 1011 at 9
`
`(emphasis added). In other words, the plain language of the claims support
`
`Finjan’s position that the term “determining… whether” requires distinguishing
`
`between the two alternative possibilities, but that determining that “executable
`
`code is included in the downloadable-information” includes “looking at indicators
`
`to show that the file is likely to have executable code.” Id. at 10.
`
`Accordingly, the Board should construe this term to mean “distinguishing
`
`between two alternative possibilities: executable code is included in the
`
`downloadable-information, and executable code is not included in the
`
`- 10 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`downloadable-information,” consistent with its previous decisions and the plain
`
`language of the claims.
`
`E.
`
`
`
`“information re-communicator” and “information monitor”
`(claims 8 and 14)
`
`The term “information re-communicator” means “a software module that
`
`receives downloadable-information from an external network and then sends it on
`
`to its destination.” Medvidovic Decl., ¶ 48. Notably, this construction is slightly
`
`modified from the construction proposed in IPR2018-00391 to reflect the actual
`
`claim language. However, the analysis in this POPR and in IPR2018-00391 is
`
`unaffected by the modification of the claim construction.
`
`This construction is consistent with the way that the term “re-
`
`communicator” is used in the ‘633 Patent. For example, as described with respect
`
`to FIG. 1a, subsystems 104–106 are separated via external network 101 from
`
`resource servers 102–103. See ‘633 Patent at 5:63–6:26 and FIG. 1a. The resource
`
`servers “might provide one or more resources including web pages, streaming
`
`media, transaction-facilitating information, program updates or other downloadable
`
`information….” Id. at 6:2–5. Subsystems 104–106, on the other hand, receive
`
`downloadable information through the external network and provide protection
`
`“against potentially harmful or other undesirable (‘malicious’) effects in
`
`conjunction with receiving downloadable information.” Id. at 6:27–33;
`
`Medvidovic Decl., ¶ 49.
`
`- 11 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`
`Two specific examples of subsystems that receive downloadable information
`
`over an external network include are described with respect to FIGs. 1b and 1c,
`
`reproduced below.
`
`
`
`These exemplary subsystems each includes re-communicator that receives and is
`
`“capable of transferring or otherwise ‘re-communicating’ downloadable
`
`
`
`- 12 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`information” received over an external network to other devices. ‘633 Patent at
`
`6:54–7:43; Medvidovic Decl., ¶¶ 50–51.
`
`The ‘633 Patent also demonstrates that an “information monitor” is “a
`
`component of an information re-communicator that monitors downloadable-
`
`information from an external network.” In particular, the ‘633 Patent states that an
`
`“information monitor” is part of a “protection engine” that “is operable within one
`
`or more network servers, firewalls or other network connectable information re-
`
`communicating devices”:
`
`A protection engine according to an embodiment of the invention is
`operable within one or more network servers, firewalls or other
`network connectable information re-communicating devices (as are
`referred to herein summarily one or more “servers” or “re-
`communicators”). The protection engine includes an information
`monitor for monitoring information received by the server, and a code
`detection engine for determining whether the received information
`includes executable code.
`
`‘633 Patent at 2:58–66 (emphasis added); Medvidovic Decl., ¶ 53.
`
`F.
`
`
`
`“A Computer Program Product… The Method Comprising”
`(claims 14 and 19)
`
`The district court in the Blue Coat litigation has determined that claim 14 is
`
`not indefinite under IPXL because “the Court [found] no confusion over when
`
`infringement of Claim 14 occurs.” Ex. 2004 at 24. The Court found that the
`
`“claim’s typographical error can be corrected as Finjan requests here.” Ex. 1011 at
`
`- 13 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`7. Juniper does not request a different action here, so the Board should strike the
`
`words “the method” from claim 14. See Petition at 11–12.
`
`IV.
`
` THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D)
`
`The Board should deny Petitioner’s proposed ground under 35 U.S.C.
`
`§ 325(d) because the Petition recycles substantially the same arguments that were
`
`already presented to the Patent Office. See 35 U.S.C. § 325(d) (“In determining
`
`whether to institute or order a proceeding . . . the Director may take into account
`
`whether, and reject the petition or request because, the same or substantially the
`
`same prior art or arguments previously were presented to the Office.”).
`
`Two of the three grounds raised in the Petition assert Hanson as the primary
`
`reference. See Petition at 4. The same reference was cited as the primary
`
`reference in IPR2018-00391, which is currently pending before the Board. In its
`
`Institution Decision, the Board found that Cisco Systems, Inc. (“Cisco”) did not
`
`raise a reasonable likelihood that Hanson in view of a secondary reference,
`
`Hypponen, that claims 1 and 8 were unpatentable. The Board should not entertain
`
`a second petition directed to considering the patentability of the ’633 Patent claims
`
`over Hanson.
`
`As a preliminary matter, the fact that Petitioner raises an alternative ground
`
`of unpatentability that was not previously presented to the Office—Sonnenberg in
`
`view of Jensen—is not reason to institute this Petition even if the Board finds that
`
`- 14 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`grounds 2 and 3 would have been denied under 35 U.S.C. § 325(d) under the pre-
`
`SAS partial-institution paradigm. In its SAS Q&A, the USPTO anticipated that
`
`there would be “situations where only some of the challenges fall within” the scope
`
`of § 325(d) and stated that the panel should determine whether to deny the entire
`
`petition:
`
`The panel will evaluate the challenges and determine whether
`§ 325(d) is sufficiently implicated that its statutory purpose would be
`undermined by instituting on all challenges. If so, the panel will
`evaluate whether the entire petition should be denied.
`
`SAS Q&A, D1, available at https://www.uspto.gov/sites/default/files/documents/
`
`sas_qas_20180605.pdf. Petitioner appears to misunderstand this principle, arguing
`
`that the Becton, Dickinson factors do not apply when a petition raises ground that
`
`“rely entirely or in part on references that have never been considered by the
`
`office.” Petition at 67 (arguing that factors (a)–(f) “do not apply to Grounds 1 and
`
`21”).
`
`To the contrary, the circumstances here are such that “the entire petition
`
`should be denied.” As Patent Owner articulated, in a different case before the
`
`
`1 As discussed below, the Becton, Dickenson factors weigh heavily in favor of
`
`denying both of Petitioner’s Hanson-based grounds, including Ground 2, under
`
`§ 325(d).
`
`- 15 -
`
`

`

`Patent Owner’s Preliminary Response
`IPR2019-00060 (U.S. Patent No. 7,647,633)
`Board, there is a very real threat that the Supreme Court’s SAS decision could have
`
`unforeseen ramifications for the applicability of § 325(d) to AIA trial proceedings:
`
`Under the full-institution, full-review paradigm laid out in the Board’s
`Modified Institution Order and envisioned by the Guidelines, Patent
`Owners will be forced to defend against the very types of harassing
`challenges that these sections of the America Invents Act [35 U.S.C.
`§§ 314(a) and 325(d)] were designed to prevent, namely to “prevent
`parties from mounting attacks on patents that raise issues that are
`substantially the same as issues that were already before the Office
`with respect