UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ae
`on
`a :
`
`=
`ge
`~~
`
`2017JULt
`
`PALO ALTO NETWORKS, INC.
`Petitioner
`
`.
`
`V.
`
`.
`
`FINJAN, INC.
`Patent Owner
`
`Inter Partes Review No. IPR2016-00151'
`US: Patent No. 8,141,154
`
`PETITIONERS’ NOTICE OF APPEAL.
`
`' Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ae
`on
`a :
`
`=
`ge
`~~
`
`2017JULt
`
`PALO ALTO NETWORKS, INC.
`Petitioner
`
`.
`
`V.
`
`.
`
`FINJAN, INC.
`Patent Owner
`
`Inter Partes Review No. IPR2016-00151'
`US: Patent No. 8,141,154
`
`PETITIONERS’ NOTICE OF APPEAL.
`
`' Case IPR2016-01071 has been joined with this proceeding.
`
`
`
`Petitioners’ Notice of Appeal
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. §§ 141(c), 142, and 319, Palo
`Alto Networks, inc. and Symantec Corp. (“Petitioners”) respectfully give notice
`that they appeal to the United States Court of Appeals for the Federal Circuit from
`the Patent Trial and Appeal Board’s Final Written Decision entered on March 15,
`2017 (Paper 51), the Board’s Decision Denying Rehearing entered on May 19,
`2017 (Paper 53), and from other related orders, decisions, rulings, and opinions
`underlying the Board’s decisions
`For the limited purpose of providing the Director of the United States Patent
`and Trademark Office with the information specified in 37 C.F.R. § 90.2(a)(3)(),
`the issues on appeal include the Board’s determination that Petitioners did not
`
`establish that claims 1-8, 10, and 11 of the ’154 patent are unpatentable under 35
`U.S.C. § 103 in view of the grounds ofunpatentability on which trial was instituted
`Paper 10). The issues on appeal also include any finding or determination
`
`supporting or related to these issues, as well as all other issues decided adversely to
`
`Petitioners in any order, decision, ruling, or opinion.
`
`? Symantec Corp. was petitioner in IPR2016-01071, which was consolidated and
`
`joined. with IPR2016-00151. (Paper 21.) Citations are to the IPR2016-00151
`
`docket.
`
`
`
`Petitioners’ Notice of Appeal
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`Simultaneous with this filing and in accordance with 37 C.F.R. § 90.2(a)(1),
`
`this Notice of Appeal is being filed with the Director and served on Patent Owner
`
`in accordance with 37 C.F.R. § 42.6(e). This Notice of Appeal, along with the
`
`required fees, is also being filed with the Clerk’s Office for the United States Court
`of Appeals for the Federal Circuit in accordance with Fed. Cir. R. 15(a)(1).
`
`Dated: July 17, 2017
`
`|
`
`Respectfully submitted,
`
`Counsel for Palo Alto Networks,Inc.
`Morrison & Foerster LLP
`.
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: (703) 760-7774
`Fax: (703) 890-2632
`SBiswas@mofo.com
`
`Counsel for Symantec Corp.
`Quinn Emanuel Urquhart & Sullivan
`500 West MadisonSt.
`Suite 2450
`Chicago,IL 60661
`Tel: (312) 705-7400
`Fax: (312) 705-7401
`nathanhamstra@quinnemanuel.com
`
`By:
`
`/ Shouvik Biswas/
`Shouvik Biswas
`Registration No.: 68,439
`
`Respectfully submitted,
`
`By:
`
`/ Nathan Hamstra /
`Nathan Hamstra
`
`
`
`Petitioners’ Notice of Appeal
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`CERTIFICATE OF SERVICE
`
`‘I hereby certify that, in addition to being filed electronically through the
`Patent Trial and Appeal Board’s End to End system, the foregoing Notice of
`
`Appeal wasfiled by Express Mail on July 17,2017, with the Director of the United
`
`States Patent and Trademark Office,at the following address:
`
`Office of the General Counsel
`_ Patent and Trademark Office
`Madison East
`10B20 600 DulanyStreet
`Alexandria, Virginia 22314
`
`kK
`
`I hereby certify that a true and correct copy of the foregoing Notice of
`Appeal wasfiled electronically by CM/ECF on July 17, 2017, with the Clerk’s
`Office ofthe United StatesCourt ofAppeals for the Federal Circuit..
`.
`Pursuant to 37 CFR. §§ 90.2(a) and Federal Circuit Rule 15(a)(1), I certify
`that on July 17, 2017, the requisite fee for appeal of the foregoing Petitioners’
`Notice of Appeal was filed by CM/ECFin the United States Court of Appeals for
`
`the Federal Circuit.
`-
`ok
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served a true and
`- correct copy of the foregoing Petitioners’ Notice of Appeal on the Patent Ownerat
`
`
`
`Petitioners’ Notice of Appeal
`IPR2016-00151 (U.S. Patent No. 8,141,154)
`
`the correspondence address of the Patent Owneras follows: -
`
`James Hannah
`KRAMERLEVIN NAFTALIS &
`FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: (650) 752-1712
`Fax: (650) 752-1812
`jhannah@kramerlevin.com
`
`Michael Kim
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Phone: 650.397.9567
`mkim@finjan.com
`USPTO Reg. No. 40,450
`
`147984445 v1
`
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: (212) 715-7502
`Fax: (212) 715-8302
`jprice@kramerlevin.com
`
`Nathaniel A. Hamstra
`David Nelson
`.
`Kenneth K. Suh
`QUINN EMANUEL
`500 W. MadisonSt., Suite 2450
`Chicago, IL 60661
`nathanhamstra@quinnemanuel.com
`davenelson@quinnemanuel.com
`kennethsuh@quinnemanuel.com
`
`By:
`
`/ Kim Helenius/
`Kim Helenius
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 51
`Entered: March 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PALO ALTO NETWORKS,INC. and SYMANTEC CORP.,
`Petitioner,
`
`Vv.
`
`FINJAN,INC.,
`Patent Owner.
`
`Case IPR2016-00151!
`Patent 8,141,154 B2
`
`Before, THOMAS L. GIANNETTI, MIRIAM L. QUINN,and
`PATRICK M. BOUCHER,Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`! This case is joined with IPR2016-01071. Paper 21 (“Decision on
`Institution of Inter Partes Review and Grant of Motion for Joinder,” filed by
`Symantec Corp.).
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`Palo Alto Networks, Inc. and Symantec Corp.(collectively
`
`“Petitioner”) each havefiled petitions to institute inter partes review of
`
`claims 1-12 of U.S. Patent No. 8,141,154 B2 (“the ’154 patent”) pursuantto
`
`.
`
`35 U.S.C. § 311-319. Paper 2 (“Pet.”); IPR2016-01071, Paper 1. In
`responseto the petition filed by Palo Alto Networks, Inc. (Paper 2), Finjan,
`Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). Upon consideration of the Petition and the Preliminary Response,
`weinstituted trial as to challenged claims, 1-8, 10 and 11. Paper 10
`
`(“Dec.”).
`Subsequently, we reviewed and granted Symantec Corp.’s petition,
`which sought review ofthe same claims ofthe °154 patent. IPR2016-01071,
`Paper 1. With its petition, Symantec Corp.filed a motion requesting to join
`IPR2016-01071 with this proceeding, and we granted the motion. Paper 21.
`Upongranting the motion, we terminated Case IPR2016-01071, and ordered
`consolidation ofall Petitioner filings in this proceeding.
`/d. at 4—5.
`
`During trial, Patent Ownerfiled a Patent Owner Response (Paper19,
`“PO Resp.”); andPetitioner filed a Reply (Paper 32, “Reply”). Patent
`Owneralso filed a Motion for Observations of the December 20, 2016,
`
`cross-examination of Petitioner’s declarant, Dr. Aviel Rubin. Paper 40.
`Petitioner responded to Patent Owner’s Motion for Observations. Paper 43.
`Both parties also filed Motions to Exclude. Paper 38 (“Pet. Mot. to
`Exclude”); Paper 39 (“PO Mot. to Exclude”). Both parties filed Oppositions
`and Replies concerning the Motions to Exclude. Papers 42, 44, 45, 46. An
`oral hearing was held on January 24, 2017.”
`
`2 A transcript of the oral hearing is entered in the record as Paper 49 (“Tr.”).
`
`2
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`Wehavejurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons discussed
`herein, and in view ofthe recordin this trial, we determine that Petitioner
`
`|
`
`has not shown by a preponderanceofthe evidence that claims 1—8, 10, and
`
`11 of the ’154 patent are unpatentable.
`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner identifies the ’154 patent as the subject of variousdistrict
`
`court cases filed in the U.S. District Court for the Northern District of
`
`California and District of Delaware. Pet. 42. Petitioner also states that
`
`petitions for interpartes review havebeenfiled regarding otherrelated
`patents. Id. The ’154 patentis also the subject of another inter partes
`review: IPR2015-01979 (and IPR2016-00919,joined therewith). In
`
`IPR2015-01979, we issue a Final Written Decision, under 35 U.S.C.
`
`§ 318 (a), concurrently with the instant Final Written Decision.
`
`B. FINAL WRITTEN DECISIONIN IPR2015-01979
`
`The parties have briefed whether estoppel under 35 U.S.C.
`§ 315 (e)(1) affects our ability to render a Final Written Decision in this
`proceeding. See Papers 30, 31. As stated above, IPR2015-01979 is also
`directed to the ’154 patent, and considers the same claims challenged in the
`instant proceeding. Because weissue final written decisions in both
`proceedings concurrently, we need not decide what effect, if any, the
`estoppel provisions of § 315 (e)(1) have on our ability to renderthis
`
`decision.
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`C. INSTITUTED GROUNDS
`
`Weinstituted inter partes review of claims 1-8, 10, and 11 (“the
`
`challenged claims”) based on Petitioner’s challenge of those claims as
`unpatentable under 35'U.S.C. § 103(a) over Ross.’ Petitioner supports its
`contentions of unpatentability with a declaration from Dr. Aviel Rubin. Ex.
`1002 (“Rubin Declaration”). Patent Owner proffers a declaration from Dr.
`Nenad Medvidovic as evidence in support for its contentions. Ex. 2035
`(“Medvidovic Declaration”). The cross-examinations of Dr. Rubin and Dr.
`Medvidovicare in the record as Exhibits 2012 and 1011, respectively.
`
`D. THE ’154 PATENT (Ex. 1001)
`
`The ’154 patent relates to computer security and, more particularly, to
`systems and methods for protecting computers against malicious code such
`as computerviruses. Ex. 1001, 1:7—9, 8:38-40. The ’154 patent identifies
`the components of one embodimentof the system as follows: a gateway
`computer, a client computer, and a security computer. Jd. at 8:45—47. The
`gateway computerreceives content from a network, such asthe Internet,
`over a communication channel. Jd. at 8:47-48. “Such content may be in the
`
`form of HTML pages, XML documents, Java applets and other such web
`
`content that is generally rendered by a web browser.” Jd. at 8:48-51. A
`
`content modifier modifies original content received by the gateway
`computer and produces modified contentthat includes a layer of protection
`
`to combat dynamically generated malicious code. /d. at 9:13-16.
`
`3 Patent Application Pub. No. US 2007/0113282 Al (Exhibit 1003)
`(“Ross”).
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`E. ILLUSTRATIVE CLAIM
`
`Challenged claims 1, 4, 6, and 10 are independent, and illustrative
`
`claim 1 is reproduced below.
`1. A system for protecting a computer from dynamically
`generated malicious content, comprising:
`
`a content processor(i) for processing content received
`over a network, the content includinga callto a first function,
`and thecall including an input, and(ii) for invoking a second
`function with the input, only if a security computerindicates
`that such invocationis safe;
`
`a transmitter for transmitting the input to the security
`computerfor inspection, when the first function is invoked; and
`
`a receiver for receiving an indicator from the security
`computer whetherit is safe to invoke the second function with
`the input.
`
`Il.
`
`ANALYSIS
`
`A. CLAIM INTERPRETATION
`
`In an interpartes review, claim terms in an unexpired patent are
`interpreted accordingto their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142-46 (2016).
`Consistent with that standard, claim termsalso are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). There are, however, two exceptions
`to that rule: “1) whena patenteesets out a definition and acts as his own
`lexicographer,” and “2) when the patentee disavowsthe full scope of a claim
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`term either in the specification or during prosecution.” See Thorner v. Sony
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`If an inventor acts as his or her own lexicographer, the definition must
`be set forth in the specification with reasonable clarity, deliberateness, and
`precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
`1249 (Fed. Cir. 1998). Although it is improper to read a limitation from the
`specification into the claims, In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
`Cir. 1993), claimsstill must be read in view of the specification of which
`they are a part. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
`1347 (Fed. Cir. 2004).
`In our Decision on Institution, we did not construe expressly any
`
`claim terms. Dec. 4—5. In its papers, Patent Owner arguesdistinctions from
`the prior art that hinge on whetherthe term “call to a first function” is
`different from “invoking”the first function. PO Resp. 22-23 (“Ross teaches
`a technique in which received content does not includea call to a first
`function. In contrast, Ross’ technique involves invoking a hook function.. .
`without the content including a call to the hook function.” (emphasis in
`
`original)).
`
`“call to afirstfunction”
`The term “call to a first function”is recited in all challenged claims.
`The argumentspresented regarding this limitation turn on the scope of the
`word “call.” Specifically, Patent Owner argues that Ross may invokethe
`“first function,” but Petitioner has not identified that Ross’s content includes
`a “call to a first function,” as required by the claims. Jd. at 20-21. At issue
`is to what extent the recited “call” refers to execution of the function. Dr.
`Medvidovic, Patent Owner’s expert, proffers opinions on the issue by
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`relying on a definition of “functioncall” derived from the Microsoft Press
`Computer Dictionary. Ex. 2035 4 57 (citing Ex. 2013). That Dictionary
`provides that a “function call” is “[a] program’s request for the services of a
`particular function.” Jd.; Ex. 2013. It also explainsthat “[a] function call is
`coded as the nameofthe function along with any parameters neededfor the
`function to perform its task.” Id.
`The Specification of the ’154 patent does not define the term “call to a
`first function.” But the Specification uses the phrase “function call”in
`stating that “before the client computer invokes a functioncall that may
`potentially dynamically generate malicious code, the client computer passes
`the input to the function to the security computer for inspection.” Ex. 1001,
`
`4:38-42. The Specificationalso states that “the present invention operates
`
`by replacingoriginal function calls with substitute function calls within the
`content, at a gateway computer, prior to the content being received at the
`
`client computer.” Jd. at 4:57-60. From such examples, we understand the
`Specification to use the phrase “function call” in the same sense that the
`claimsrecite in the phrase “call to a [] function.” Thatis, a “call” is part of
`the recited “content,” as a statement or instruction containing the function
`
`that, when executed, causes the function to provide a service. Thus, we find
`
`the dictionary definition of the term “functioncall” applicable here and
`indicative of the meaningofthe term to a person of ordinary skill in the art.
`
`Furthermore, the dictionary definition is consistent with the
`
`embodiments described in the Specification. For example, one embodiment
`
`of the ’154 patent provides for modifying an original function call with |
`
`“corresponding function calls Substitute_function(input,*).” Id. at 9:21—24.
`
`That is, the specification describes that the services of the function
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`Substitute_function are being requested by the modified content.
`
`Furthermore, the format of the function in this particular embodiment
`
`identifies the nameof the function and the parameters “input” and “*”. See
`
`also id. at 9:26-28 (explaining that the “input intended forthe original
`
`function is also passed to the substitute function, along with possible
`additional input denoted by ‘*’”). From this description we determinethat
`the “call” is a statementor instruction in the content, the execution of which
`
`causes the function to provide a service.
`
`Wenote that this construction of “call to a first function” need not
`
`define the format of the instruction or statement, or further detail regarding
`
`its parameters. Wereach this determination because the claim language
`itself requires that either the call or the function include an input. For
`example, claim | recites the “call including an input,” while claim6recites
`
`“the first function including an input variable.”
`
`Petitioner arguesthat a call to a function and invoking a function are
`
`equivalent. Tr. 26:2-12. Dr. Rubin furthertestifies that a call is “when a
`
`function is invoked.” Ex. 2038, 74:9-11; see also 74:18—75:4 (testifying
`
`also that invoking the function name,transferring execution to the code in
`that function is acall). We do not agree with Petitioner in this regard. The
`claimsrecite “including a call” and “invoking”distinctly from each other.
`
`For example, claims 1 and4recite “the content includinga call to a first
`
`function” and “whenthe first function is invoked.” These limitations have
`
`different connotations. In the first instance, the “call” (noun)is included in
`the content, and therefore points to a programmatic statement or instruction
`in the content. The secondinstance, “first function is invoked,” however,
`
`refers to the effect of the call to the function being executed, 1.e., invoked.
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`The sameanalysis applies regarding the language of claims 6 and 10,
`which do notrecite the word “invoke.” Claims 6 and 10, for example, recite
`“the content includinga call to a first function” and “whenthe first function
`is called.” Again, the “call” (noun) refers to a programmatic statement
`included in the content. However, “calling” is the effect of the call to the
`function being executed. Accordingly, based on the foregoing and under the
`broadest reasonable interpretation, we determinethat a “call to a first
`function” means a statementor instruction in a program requesting the
`services of a particular (i.e., first) function. |
`
`B. PRINCIPLES OF LAW
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the priorart are such that the subject
`
`matter, as a whole, would have been obviousat the time the invention was
`
`madeto a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousnessis resolved on the basis of underlying factual
`determinations including: (1) the scope and contentoftheprior art; (2) any
`differences between the claimed subject matter and thepriorart; (3) the level
`
`of ordinary skill in the art; and (4) objective evidence of nonobviousness.
`
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`
`C. THE LEVEL OF SKILL IN THE ART
`
`In determining the level of ordinary skill in the art at the time of the
`
`invention, we note that various factors may be considered,including “type of
`
`' problemsencounteredin the art; prior art solutions to those problems;
`rapidity with which innovations are made; sophistication of the technology;
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`and educational level of active workersin the field.” In re GPAC, Inc., 57
`
`F.3d 1573, 1579 (Fed. Cir. 1995)(citing Custom Accessories, Inc. v. Jeffrey-
`
`Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
`Petitioner asserts, through its expertDr. Aviel Rubin, that the
`“relevant technologyfield for the ’154 patent is security programs,including
`content scanners for program code.” Ex. 1002 § 25. Further, Dr. Rubin
`opines that a person ofordinary skill in the art would “hold a bachelor’s
`degree or the equivalent in computer science (or related academic fields) and
`three to four years of additional experience in the field of computersecurity,
`
`or equivalent work experience.” Id.
`Patent Owner, through its expert Dr. Nenad Medvidovic,offers a level
`
`of ordinary skill that is different from Petitioner’s. Ex. 2035 35. In
`Particular, Dr. Medvidovic opines that a person ofordinary skill in the art
`
`would have a “bachelor’s degree in computer science or related field, and
`either (1) two or moreyears of industry experience and/or (2) an advanced
`degree in computer science orrelated field.” Jd. In comparison,it appears
`that the minimum experience under Patent Owner’s proffered level of skill is
`one yearless than Petitioner’s. Also, Patent Owner proffers an alternative to
`work experience, namely an advanced degree. There is no specific
`articulation regarding howthe difference of one year’s experience or the
`proposedalternative of an advanced degree in lieu of experience tangibly
`affects our obviousness inquiry. Further, there is no evidence in this record
`that the differences noted above impact in any meaningful waythe level of
`expertise of a person of ordinary skill in the art. Indeed, wenote that Dr.
`Medvidovic’s opinions would not changeif he had consideredinsteadthe
`level or ordinary skill in the art proffered by Dr. Rubin. Id. § 39.
`
`10
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`Accordingly, we determinethatin this case no expressarticulation of
`
`the level of ordinary skill in the art is necessary and that the level of ordinary
`
`skill in the art is reflected by the prior art of record. See Okajimav.
`
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`D. OBVIOUSNESS GROUND BASED ON Ross
`
`The Petition relies on Rossas teaching or suggesting all the
`
`limitations of claims 1-8, 10, and 11. Pet. 14-37. Having reviewed the
`
`arguments and evidence provided by Petitioner and the arguments and
`evidence presented by Patent Owner, we determine that Petitioner has failed
`to show by a preponderanceofthe evidence that Ross teaches or suggests all
`the limitations of the challenged claims, and moreparticularly, “the content
`
`includinga call to a first function.”
`
`1. Overview ofRoss (Exhibit 1003)
`
`Ross describes one embodiment where a device receives and
`
`processes“data content having at least one original function call [andit]
`includes a hook script generator and a script processing engine.” Ex. 1003
`4 10. One such deviceis depicted in Figure 2 of Ross, reproduced below.
`
`11
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`
`
`220
`DISPLAY
`
`
`
`TRANSCEIVER
`
`232
`PROCESSOR
`
`234
`PROCESSOR
`MEMORY
`224
`SCRIPT
`PROCESSING
`ENGINE (WEB
`BROWSER)
`
`202 204
`
`
` CLIENT
`SERVER
`
`
`
`250
`
`
`WEB SERVER
`TRANSCEIVER
`
`
`
`
`252
`
`
`WEB PAGE#1
`
`WEB PAGE#2
`PROCESSOR
`
`
`
`
`
`254
`PROCESSOR
`MEMORY
`
`
`
`
`— 200
`
`
`WEB PAGE #N
`
`
`
`
`
`
`
`
`
`
`.
`
`
`
`
`SCRIPT INJECTOR
`(BROWSER PLUG-IN)
`
`244
`HOOK SCRIPT GENERATOR
`
`246
`COMMUNICATION OBJECT
`
`FIG 2
`
`Figure 2 showsa client network device (client 202) and a server
`
`network device (server 204) communicating with each other over
`
`communication network 208 to exchange information, including web
`
`content. Id. Jf 16, 23. Figure 2 depicts web browser 224 and detection
`
`engine 240atthe client, but in other embodiments, detection engine 240
`
`maybe physically located away from client 202. Id. | 26. Detection
`
`engine 240 includesscript injector 242 to intercept incoming data content
`
`and introduce the incoming data to script-processing engine 224. Id. “Hook
`
`script generator 244 creates new functions, including constructor functions,
`
`which replace the standard JavaScript functions.” Jd.
`
`12
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`2. Discussion ofIndependent Claims
`Independent claim1is directed to a system, while claim 4 is directed
`to stored program code including functions performed by a computer device,
`where those functions track the functions recited in claim 1. Independent
`
`claim 6 is also directed to a system, albeit with somelimitations different
`
`from the system of claim 1. And independentclaim 10 is directed to stored
`program codeincluding functions performed by a computer device, where
`those functions track the functionsrecited in claim 6. Notwithstanding their
`differences, all the independentclaimsrecite “the content includinga call to
`
`a first function.” We find that Ross does not disclose this limitation.
`
`Content Includes a Call to a First Function
`
`Petitioner asserts that the recited “content” is met by a combination of
`
`Ross’s web content (HTTP data) and hook functions in the hook script. Pet.
`
`16 (“script processing engine processes content from both the web (HTTP
`data content) and from the hook script generator (hook functions)”). The
`Petition points out that Ross’s “hookscripts and their associated inputs teach
`or suggest ‘the content includingacall to a first function, and thecall
`including an input,’ as recited in claim 1.” Id. Specifically, the Petition
`states that each hookscript has “at least one hook function[,] where each
`hook function is configured to supersede a corresponding original function.”
`Id. at 17 (citing Ex. 1003 § 38). With regard to the “call” limitation,
`Petitioner asserts that a person of ordinary skill in the art would have
`understood that the hook scripts “includeacall to a first function call (i.e.,
`
`109).
`hook functions within a hook script).” Jd. at 18 (citing Ex. 1002
`Based on these assertions, we understand Petitioner’s contentionto be that
`
`13
`
`
`
`1PR2016-00151
`Patent 8,141,154 B2
`
`Ross’s description of hook functions in the hookscript teaches or suggests
`the “call to a first function.”
`
`Patent Ownerchallenges these assertions by arguing that merely
`
`pointing to hook functions within a hookscript is insufficient. PO Resp.
`
`20-22. According to Patent Owner, Ross’s hook script includes a function,
`
`i.e., the hook function, but not the “call” to that function. Jd. (citing Ex.
`
`2035 9956-59). Ross, according to Patent Owner, teaches a technique
`
`different from the claims. Jd. at 22—23. Rossfirst calls the original
`
`function, which Petitioner identifies as the recited “second function,” in
`
`order to invoke the hook function (“first function”). Jd. at 23 (citing Ex.
`
`1003 4] 12-13). In contrast, the claims require that the content include a
`
`call to a first function, in order to invoke the first function first. See, e.g.,
`
`claim 1 (“transmitting the input to the security computer... when the first
`function is invoked” and “invoking a second function with the input only ifa
`
`_
`
`security computer indicates that such invocation is safe”); claim 6
`(“transmitting the input variable to a security computer .
`.
`. when thefirst
`tunctionis called”“modifying the input variable if the security computer
`
`determinesthat[it is not] safe” and “calling a second function with a
`
`modified input variable”).
`In support ofPatent Owner’s argument, Dr. Medvidovic explains that
`Ross describes the combined hookscript and the original script as using an
`
`“assignment,” not a “call” for invoking the first function. PO Resp. 23-24
`
`(citing Ex. 2035 461). We credit this testimony. Rossillustrates in Figure 4,
`reproduced below, a combinedscript, which shows more detail regarding
`how Ross formulates the hook script and the included hook function. See
`
`Ex. 1003, Fig. 4.
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`/ Generated Hook Script (Highly simplified example)
`SCRIPT language="JavaScript’”>
`ealAXO = ActiveXObject;
`
`function myXMLObject(realconstructor) {
`// Generated code (create Microsoft.XMLHTTP wrapperobject and return it)
`
`}
`
`
`
`
`nection HookedActiveXObject(objname) {
`/{ Security checks go here
`if (objname == “Microsoft.XMLHTTP") {
`return new myXMLObject(realAXO);
`} else {
`retum realAXO(objname); // ifno more security checks are needed
`
`}
`
`
`
`}A
`
`404
`
`302
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ctiveXObject = HookedActiveXObject;
`</SCRIPT>
`
`/ Original Script
`SCRIPT language="JavaScript”>
`
`ar Req;
`eq = new ActiveXObject("Microsoft.XMLHTTP"),
`
`/ Open the request object with MKCOLand specify thatit will be sent asynchronously.
`eq.Open("MKCOL",folderURL,false);
`
`
`
`Figure 4 illustrates combined script 402 including hook script 404 and
`original script 302. Jd. Dr. Medvidovic identifies the hook function in hook
`script 404 as “function HookedActiveXObject(objname).” Ex. 2035 { 61.
`The combinedscript does not include a call to the function
`“HookedActiveXObject.” Instead, as Dr. Medvidovic explains, Ross’s hook
`
`script includesacall to the originalfunction, not the hook function, as
`
`shown below in Patent Owner’s annotated Figure 4.
`
`15
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`
`inciaons sayXMLObyect{realeonstrucioe) {
`ft Generand code (creme MicteaoRXMLHTTP arapper object and return it}
`stonookedAsivesbyob)(i
`ifCobjasmme= “MecrnotAMLUTIO"){
` Securny chects go
`|
`returnnewpryXMLObyecsreatAXO},
`
`belse {
`return realAXOfobec), «ofno more securrty checks are needed
`
`HookiFunction
`
`}
`
`A ASS,
`
`
`
`gineXObject * HeokedActovedObyext,
`OrgadSeng .
`a CalltoOriginal Function
`SerrneuerpeSenge>
`24om ActiveXObed"Mucrosa®XMLUTTP"},
`7Open the request obyect with MKCOL and specsdy that t will be scat asynchronously.
`09.Open“MKCOL", folderURL, fstve).
`RUT?
`
`“04
`
`302
`
`FIG 4
`
`The annotated Figure 4 of Ross, above, annotates Ross’s script by
`pointing out: (1) in brackets, that a group of instructions comprise the
`function “Hooked ActiveXObject(objname);”and (2) that the bodyofthe
`function is the “Hook Function.” See PO Resp. 23. The annotations also
`
`show that the instruction “Req=new
`ActiveXObject(“Microsoft.XMLHTTP”)”is the “Call to Original Function.”
`
`Id. Dr. Medvidovic explainsthat the call to “new
`ActiveXObject(“Microsoft.XMLHTTP”) indirectly invokes “function
`HookedActiveXObject,” using Ross’s assignment technique. See Ex. 2035
`{ 61. Ross’s description of the hook functions confirmsthis technique. For
`example, Rossstates that “[t]he hook function correspondingto the data
`content original function is executed when the originalfunction is called.”
`
`16
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`Ex. 1003, Abstract; see also J 13 (“executing a hook function when a
`
`correspondingoriginal function is called in the data content”). Ross further
`
`states that the “hook function is configured to supersede a corresponding
`
`original function.” Id. J] 10-12.
`
`Although we have explained that the first invocation in Rossis not of
`
`the first function, the issue is not simply whether Ross executes or processes
`
`the first function first, before the second function. The issue is whetherthe
`
`content in Ross includesa “call to a first function,” as claimed. We find that
`
`|
`
`Ross doesnot.
`Patent Owner’s explanation of Ross is consistent with Ross’s
`description of how the hookscript is generated and processed. Ross’s hook
`
`script generator creates new functionsto replace the original functions, such
`
`as the JavaScript function embedded in a web page. Jd. § 26. When the web
`
`pageis received,thescript filter injects “the JavaScript that hooks the
`
`critical functions and methods before any other HTML in a loading page.”
`
`Id. § 29. To implement these “hooks,” Rossstates that it replaces the
`
`original function with a new replacementfunction or that it substitutes an
`
`original function with a filtered function by instantiating a “hooked”process.
`
`Id. ¥§ 33, 34. These statements of “replacement” and “substitution,”
`
`however, refer to how the hook functions are implemented whenthe script
`
`executes. Neither of these statements explains whethera “call” to a hook
`
`function is included in the script. That is, the replacementor substitution
`
`mayresult in invoking the hook function, without the content actually
`
`including a call. And this indirect invocation—notusing a call—ofthe
`
`hooked function is what Ross tends to show. Forinstance, Ross describes
`
`the method of processing the content as follows: (1) generating a hook
`
`17
`
`
`
`IPR2016-00151
`Patent 8,141,154 B2
`
`script with a hook function; (2) loading the hookscript; (3) loading the data
`content havingthe original function; and (4) executing a hook function when
`a corresponding originalfunction is called in the data content. Id. § 38.
`
`Thus, the hook function is loaded before anything else is loaded in
`
`order to define the hook function and to effectuate the replacement. The
`
`replacement, or the method of superseding, is accomplished by the
`
`assignmentthat results from the use of the instruction
`ActiveXObject=HookedActiveXObject. As Dr. Medvidovic explains, by
`
`wayof assignment of ActiveXObject(original function) to
`
`HookedActiveXObject (substitute or first function), a call to the original
`
`function indirectly invokes the substitute or first function. See Ex. 1011,
`
`10:20-13:21. This understanding is further confirmed by Ross’s description
`ofthe hook functions, as stated above, and whenit refers to them as “new
`objects that
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
