`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`
`Juniper Networks, Inc.,
`Petitioner
`
`v.
`
`Finjan, Inc.,
`Patent Owner
`
`
`___________
`
`
`IPR2019-00060
`Patent No. 7,647,633
`
`___________
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10682004
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`IPR2019-00060
`Patent No. 7,647,633
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`TABLE OF CONTENTS
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`Page(s)
`INTRODUCTION .................................................................................. 1
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`LEGAL STANDARD ............................................................................ 1
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`I.
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`II.
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`III. ARGUMENT ......................................................................................... 2
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`IPR2019-00060
`Patent No. 7,647,633
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`I.
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`INTRODUCTION
`On April 29, 2019, the Board denied institution of inter partes review of U.S.
`
`Patent No. 7,647,633 (“the ‘633 Patent”), rejecting Petitioner’s assertion that certain
`
`claims of the ‘633 Patent are unpatentable over prior art Sonnenberg in view of prior
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`art Jensen (Ground 1). See Paper 7 (Institution Decision) at 13. In its Institution
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`Decision, the Board misapprehended the critical difference between Petitioner’s and
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`Patent Owner’s constructions of the term “mobile protection code” and, as a result,
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`failed to resolve the key claim construction dispute between the parties as required.
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`See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1374-75 (Fed.
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`Cir. 2017) (citing O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
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`1351, 1360 (Fed. Cir. 2008)) (requiring the Board to resolve claim construction
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`disputes when a disputed term is relied upon for a holding on the merits). As
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`explained further below, the Board’s failure to resolve the key claim construction
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`dispute led to a logically unsupportable holding regarding the purported deficiency
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`in the prior art. Rehearing is therefore warranted to resolve the claim construction
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`dispute between the parties and fix the plain error in the Institution Decision.
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`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing without
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`prior authorization from the Board” and must “specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where each
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`IPR2019-00060
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`matter was previously addressed in a motion, opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d). This request is timely filed within 30 days from the Institution Decision
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`denying institution. See 37 C.F.R. § 42.71(d)(2).
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`III. ARGUMENT
`The Board fundamentally misapprehended the dispute between the parties
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`regarding the construction of the term “mobile protection code” (hereinafter,
`
`“MPC”). In the Institution Decision, the Board stated:
`
`According to Patent Owner, the difference between
`Petitioner and Patent Owner’s constructions is that
`Petitioner’s broader construction does not specify that the
`mobile protection code monitors and intercepts operations
`without modifying the executable code.
`
`Paper 7 (Institution Decision) at 5 (emphasis in original). The Board erred in
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`adopting Patent Owner’s characterization of the claim construction dispute.1 The
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`actual dispute between the parties is completely different and has nothing to do with
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`whether MPC modifies the executable code or not.
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`
`1 Petitioner does not oppose Patent Owner’s proposal that MPC operate
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`“without modifying the executable code” and therefore there is no dispute with
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`respect to this issue.
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`As background, the Petition proposed that the broadest reasonable
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`interpretation of “mobile protection code” (MPC) is “code for causing one or more
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`predetermined malicious operations or operation combinations of a Downloadable
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`to be monitored or otherwise intercepted.” Paper 2 (Petition) at 9 (emphasis added).
`
`The Petition explained the practical import of this “for causing” language was that
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`the MPC does not itself have to monitor or intercept operations but rather may work
`
`in conjunction with other software, such as the operating system, in order to cause
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`monitoring or intercepting to occur. Id. at 9-10. The Petition then explained how,
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`under this construction that does not require the MPC to itself monitor or intercept,
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`prior art Jensen’s “protection wrappers” constitute MPC because Jensen’s protection
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`wrappers cause monitoring or intercepting by the operating system’s Access Control
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`Lists. See Paper 2 (Petition) at 25-27.
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`In its argument distinguishing the prior art, Patent Owner implicitly disputed
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`Petitioner’s claim construction of MPC with respect to whether MPC must “itself”
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`monitor or intercept. Patent Owner argued that prior art Jensen did not teach MPC
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`for the following reason:
`
`As Petitioner readily acknowledges, Jensen’s technique
`involves a “protection wrapper” that does not, itself
`“monitor[] or intercept[] actually or potentially malicious
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`code operations” but instead “rel[ies] on the protection
`mechanisms of the underlying operating system:
`
`
`Protection wrappers rely on the protection
`mechanisms of the underlying operating
`system, in our case primarily file access
`control implemented by Access Control Lists
`(ACLs). …
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`Paper 6 (POPR) at 32-33 (emphasis added, alterations in original). Thus, Patent
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`Owner clearly argued that prior art Jensen in Ground 1 did not teach MPC because
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`Jensen does not “itself” monitor or intercept operations and instead relies on the
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`operating system for such monitoring or intercepting.
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`
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`As discussed above, the Board misapprehended the claim construction dispute
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`between the parties and erroneously believed that the dispute was only whether MPC
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`operates “without modifying the executable code.” See Paper 7 (Institution
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`Decision) at 5. As a result, the Board failed to resolve the real dispute between the
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`parties of whether the MPC must “itself” monitor or intercept or if the MPC may
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`instead cause monitoring or intercepting by other software.
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`The Board must resolve this dispute under Homeland because the Board relied
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`on the fact that prior art Jensen did not “itself” monitor or intercept as its sole reason
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`for denying Ground 1:
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`Thus, the protection wrapper itself does not monitor or
`intercept any operation of the program. As Jensen
`explains, the protection wrapper relies on the protection
`mechanisms of the underlying operating system.
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`Paper 7 (Institution Decision) at 11 (emphasis added). The Board’s holding is
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`completely unsupportable because the Board did not adopt a construction of MPC
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`that expressly required that the MPC “itself” monitor or intercept. See Paper 7
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`(Institution Decision) at 6.
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`The Board should resolve the key claim construction dispute in Petitioner’s
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`favor because Patent Owner expressly agreed that MPC does not “itself” have to
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`monitor or intercept and could rely on other software. See Paper 6 (POPR) at 7
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`(“Petitioner explains that its proposed ‘construction means that the MPC may work
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`in conjunction with other software, including the operating system, in order to effect
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`monitoring and intercepting.’ [citation] This statement is accurate…” (emphasis
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`added)). The Petition also sets forth several additional reasons why Petitioner’s
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`proposed construction is correct, in particular that the construction is taken verbatim
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`from the specification and was repeatedly referred to as a “definition” by the Patent
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`Owner. See Paper 2 (Petition) at 9. The Petition also demonstrates how prior art
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`Jensen teaches MPC under Petitioner’s proper construction of the term, which
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`includes code that causes monitoring or intercepting by working in conjunction with
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`other software, such as the operating system. See Paper 2 (Petition) at 25-28.
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`Petitioner therefore respectfully requests that the Board grant rehearing and institute
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`IPR.
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`May 23, 2019
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`By: /Michael R. Fleming/
` Michael R. Fleming, Reg. No. 67,933
`
`Joshua Glucoft, Reg. No. 67,696
`
`IRELL & MANELLA LLP
`
`1800 Avenue of the Stars, Ste. 900
`
`Los Angeles, CA 90067
`
`Juniper-FinjanIPRs@irell.com
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`IPR2019-00060
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on May 23, 2019, a
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`complete copy of PETITIONER’S REQUEST FOR REHEARING is being
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`served, by electronic mail, as agreed to by the parties, upon the following:
`
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`
`James Hannah
`jhannah@kramerlevin.com
`
`Jeffrey Price
`jprice@kramerlevin.com
`
`Michael Lee
`mhlee@kramerlevin.com
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`
`
`
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`
` /Susan M. Langworthy/
` Susan M. Langworthy
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`10682004
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