Patent Owner may file a preliminary response to the petition no later than three months from the date of this Notice.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration,

Whether the PTAB erred in finding that Petitioner has shown by a preponderance of the evidence that claims 1-3, 8-14, 16-17, and 21-27 of the ’678 Patent are unpatentable under 35 U.S.C. § 103 as obvious in view of U.S. Pat. App. Pub. No. 2014/0013112 A2 (“Cidon”), U.S. Pat. App. Pub. No. 2014/0359282 A1 (“Shikfa”), and U.S. Pat. App. Pub. No. 2003/0055994 A1 (“Herrmann”);

Whether the PTAB erred in finding that Petitioner has shown by a preponderance of the evidence that claim 6 of the ’678 Patent is unpatentable under 35 U.S.C. § 103 as obvious in view of Cidon, Shikfa, Hermann, and U.S. Pat. App. Pub. No. 2005/0010593 A1 (“Fellenstein”);

Whether the PTAB erred in finding that Petitioner has shown by a preponderance of the evidence that claim 15 of the ’678 Patent is unpatentable under 35 U.S.C. § 103 as obvious in view of Cidon, Shikfa, Hermann, and U.S. Pat. No. 6,622,248 B1 (“Hirai”);

Whether the PTAB erred in finding that Petitioner has shown by a preponderance of the evidence that claim 6 of the ’678 Patent is unpatentable under 35 U.S.C. § 103 as obvious in view of Auradkar, Chiueh, Chambers, and U.S. Pat. App. Pub. No. 2003/0063321 (“Inoue”);

The undersigned hereby certifies that a true and correct copy of the foregoing document was filed electronically by CM/ECF on October 14, 2024, with the Clerk’s Office of the United States Court of Appeals for the Federal Circuit.

Pursuant to the Board’s May 9, 2024 Order Setting Oral Argument (Paper 23), Petitioner objects to three figures/drawings presented on the lower halves of pages 6, 7 and 8 of Patent Owner’s demonstratives.

Petitioner has conferred with Patent Owner to resolve the objections, however, no agreement was reached.

This drawing was not part of any prior Patent Owner filings or exhibits of record, and includes texts and graphics that constitute new evidence and arguments.

This drawing was not part of any prior Patent Owner filings or exhibits of record, and includes texts and graphics that constitute new evidence and arguments.

This drawing was not part of any prior Patent Owner filings or exhibits of record, and includes texts and graphics that constitute new evidence and arguments.

“Each container can include multiple encrypted file chunks, which may be named by means of searchable indices as mentioned in connection with the description of FIGS. 3A-B.

For instance, container 1 can include four file chunks having their names (adfbhlbewfuwed, ewuiyrt, hdweuf, and uetywo).” Ex. 1001 (678 Patent) at 12:67-13:2 “Hello” encrypted to:

Pet. 20-21; POR 10-11 Overview of Petitioner’s Cidon/Shikfa combination (Grounds 1-3) • Petitioner proposes combining • Cidon’s file segmentation and SHA-2 hashing and • Cidon’s policies with • Shikfa’s searchable encrypted index where the index maps encrypted keywords with chunks Ex. 1006 (Shikfa) at Fig. 2 (annotated by Petitioner and Patent Owner)

All Grounds, All Claims (“a policy”): Claim Construction Salazar v. AT&T Mobility LLC, 64 F.4th 1311, 1318 (Fed. Cir. 2023) • District Court held that “a microprocessor” means “one or more microprocessors” at least one which satisfies all limitations: “The district court … construed the term to mean ‘one or more microprocessors, at least one of which is configured to perform the generating, creating, retrieving, and generating functions.’ … Thus, the district court reasoned, “at least one microprocessor must satisfy all the functional (and relational) limitations recited for `said microprocessor.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311, 1314 (Fed. Cir. 2023)

For instance, container 1 can include four file chunks having their names (adfbhlbewfuwed, ewuiyrt, hdweuf, and uetywo).” Ex. 1001 (678 Patent) at 12:67-13:2

Claim Construction – Namespace “Namespace” can have different forms, for example: • Can be hierarchical (Ex. 1020 – Adya et al.), • Can include domains (Ex. 1021 – Mika et al. ), or • Can be a flat, e.g., single number chosen uniformly at random (EX. 1023 – Balakrishnan et al.): Pet., 10-11; Lee, ¶¶ 41-42 Ex. 1023, p. 344

Claim Construction – Namespace According to the Dictionary of Computer and Internet Terms: Pet., 39-40; Lee, ¶98; Ex. 1014

• Shikfa did not teach away the gateway-side encryption because it does not “‘criticize, discredit, or otherwise discourage investigation into’ the claimed invention.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citation omitted).

Doing so would have “prevented [the user] from directly accessing” other unauthorized storages, such as the location where the original file was stored, thereby improving data security.

Auradkar + Chiueh + Chambers Grounds – Configuring Namespace M-W Dictionary (Ex. 1027) Chiueh’s mapping of keywords to document IDs constituted “configuring the namespaces” because Chiueh created an index (a significant word set (SWS)) that mapped encrypted keywords to corresponding document ID(s) of the encrypted pages, so that the content of the encrypted pages could be searched using those keywords.

Petitioner also fails to show that the prior art discloses at least one Case No. IPR2023-00459 U.S. Patent No. 10,084,825 policy that performs all of the recited functions required in the claims.

Petitioner’s construction is necessary to sweep in an alleged namespace that is, at best, defined by the prior art reference (which specifies SHA-2 identifiers) and not created as part of a method for encrypting a file.

Thus, Dr. Lee agrees that all four steps are part of a process for encrypting a particular file that must be performed by a gateway device or cloud storage system, which is how Patent Owner characterized it in the POR.

POR 38-39; Salazar v. AT&T Mobility LLC, 64 F.4th 1311, 1318 (Fed. Cir. 2023) (“[I]t does not suffice to have multiple microprocessors able to perform just one of the recited functions; the claim language requires at Case No. IPR2023-00459 U.S. Patent No. 10,084,825

The set of available XML tags in Auradkar or document IDs in Chiueh was created and defined by the references, not the gateway device as claimed.

Pursuant to 37 C.F.R. § 42.53, Patent Owner Fortinet, Inc. (“Fortinet”) by and through its attorneys, will conduct cross-examination by deposition of Dr. Wenke Lee.

The deposition will take place remotely and commence on May 16, 2024 at 10:00 am (PT), or at such place and time as agreed upon by the parties.

The cross-examination of Dr. Lee will be taken before a Notary Public or other officer authorized by law to administer oaths.

Dr. Lee will remain under oath commencing at 10:00 am (PT), or other time agreed upon by the parties, on May 16, 2024 until the conclusion of the deposition.

The deposition will be recorded using audiotape and/or stenographic means with real-time transcription.

11) entered on September 13, 2023, Patent Owner hereby respectfully requests oral argument in this proceeding, to be held virtually by video conference.

Patent Owner further requests that each side be allotted sixty (60) minutes total for oral argument.

Any other issues the Petitioner and Patent Owner properly raised in the Petition, Patent Owner Response, Reply, and Sur-reply in the proceeding; 3.

Any procedural or evidentiary issues raised in such briefing; and 4.

Patent Owner requests the ability to use audio/visual equipment to display demonstratives and exhibits at the oral hearing, to the extent available at the time of the hearing.

PTAB Case No. IPR2023-00458 Petitioner’s Request for Oral Argument Pursuant to 37 C.F.R. § 42.70 and the Board’s Scheduling Order dated September 13, 2023 (Paper 11), Petitioner Netskope Inc. (“Netskope”) submits this request for oral argument, currently scheduled for June 21, 2024.

Nonetheless, if Patent Owner requests it, Petitioner submits its preference to proceed with oral argument virtually by video conference.

If oral argument will be conducted in-person at the offices of the United States Patent and Trademark Office, Petitioner respectfully requests that the Board provide audio/visual equipment for displaying demonstrative exhibits and evidence of record during oral argument, including a projector and screen for displaying documents.

At the oral hearing, Petitioner intends to discuss the issues raised or discussed in the parties’ filings and the Board’s Institution Decision in the ongoing IPR proceeding, and any issues raised by Patent Owner or the Board at the hearing.

PTAB Case No. IPR2023-00458 Petitioner’s Request for Oral Argument grants more than 40 minutes, Petitioner requests any additional time be split Respectfully submitted, /Thomas N. Millikan/ Lead Counsel, Thomas N. Millikan, Reg. No. 72,316 Back-Up Counsel, Babak Tehranchi (Reg. No. 55,937) Andrew N. Klein (pro hac vice) Wei Yuan (Reg. No. 71,772) Attorneys for Petitioner evenly between the parties.

In Proceedings of the 2004 ACM SIGMOD international conference on Management of data (pp.563-574) (“Agrawal”) Adya, A., Bolosky, W. J., Castro, M., Cermak, G., Chaiken, R., Douceur, J. R., Howell, J., Lorch, J. R., Theimer, M., and Wattenhofer, R. P. 2002.

Cidon disclosed creating namespaces because it described generating unique identifiers for file segments (chunks) based on their contents using SHA-2 signature computation.

Moreover, PO’s concerns (POR at 51)6 about the unreliability of a remote server in the encryption process, viewing it as untrusted, overlooks that in the Auradkar-Chambers combination, the gateway is controlled by the data-protecting entity, rendering PO’s alleged “peeked/leaked” risks moot.

Specifically, Chiueh did not criticize, discredit, or otherwise discourage the use of its searchable encryption mechanism in a system with a gateway device owned by the same entity seeking to protect data like the one in the Auradkar-Chambers combination.

PO’s argument that Inoue alone did not disclose or render obvious “wherein the step of configuring the namespaces comprises storing content of the file as filenames” mischaracterizes Petitioner’s proposed combination.

Case No. IPR2023-00458 Patent No. 9,280,678 Notice of Deposition of Dr. John Black Jr. Pursuant to 37 C.F.R. § 42.53, Petitioner Netskope, Inc. hereby provides

notice to Patent Owner Fortinet, Inc. that Netskope, by and through its respective counsel, shall conduct cross-examination by deposition of Dr. John Black Jr. on April 3, 2024, beginning at 9:00 am Pacific Time, or at such other time and place as agreed to by the parties.

The cross-examination will be conducted remotely using video teleconferencing service(s) and/or telephony service(s) that provide remote access for authorized parties wishing to participate in the deposition via the Internet and/or telephonically.

The cross-examination will be recorded stenographically by a court reporter authorized by law to administer oaths.

Respectfully submitted, /Thomas N. Millikan/ Lead Counsel, Thomas N. Millikan, Reg. No. 72,316 Back-Up Counsel, Babak Tehranchi, Reg. No. 55,937 Andrew N. Klein (pro hac vice) Wei Yuan (Reg. No. 71,772) Attorneys for Petitioner

Petitioner Netskope, Inc. (“Petitioner”) respectfully requests that the Board admit Andrew N. Klein as backup counsel pro hac vice in this proceeding.

Therefore, Mr. Klein meets the requirements of “an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding” under 37 C.F.R. § 42.10(c).

Mr. Klein regularly litigates patent cases in various forums, including federal district courts across the United States.

(Id.) He has experience representing clients in many phases of litigation including discovery, Markman hearings, dispositive motions, jury trials, and appeals.

Therefore, Petitioner respectfully submits that there is good cause for the Board to recognize Andrew Klein as counsel pro hac vice during this proceeding.

U.S. Patent No. 9,280,678 Petitioner Netskope, Inc. and Patent Owner Fortinet, Inc. (the “Parties”) hereby stipulate to modify Due Dates 2 and 3 in the Board’s Scheduling Order (Paper No. 11) of September 13, 2023, and which were previously modified in the Parties’ Second Notice of Stipulation to Extend Deadlines filed on February 27, 2024, as follows: Prior Due Date Due Date 2 (Petitioner’s reply to Patent Owner’s response to petition): March 29, 2024 Due Date 3 (Patent Owner’s sur-reply to reply): May 10, 2024 Due Dates 4-8 remain unchanged.

Stipulated Due Date April 10, 2024 May 22, 2024 It is not believed that any other action by the parties or by the Board is required to put the requested schedule modification into effect.

/James M. Glass/ James M. Glass (Reg. No. 46,729) Attorney for Patent Owner Fortinet, Inc.

Dated: March 20, 2024

/Thomas N. Millikan/ Lead Counsel Thomas N. Millikan (Reg. No. 72,316) Back-up Counsel Babak Tehranchi (Reg. No. 55,937) Andrew N. Klein (pro hac vice) Wei Yuan (Reg. No. 71,772) Attorneys for Petitioner Netskope, Inc.

U.S. Patent No. 9,280,678 Petitioner Netskope, Inc. and Patent Owner Fortinet, Inc. (the “Parties”) hereby stipulate to modify Due Dates 2 and 3 in the Board’s Scheduling Order (Paper No. 11) of September 13, 2023, and which were previously modified in the Parties’ first Notice of Stipulation to Extend Deadlines filed on November 15, 2023, as follows: Prior Due Date Due Date 2 (Petitioner’s reply to Patent Owner’s response to petition): March 15, 2024 Due Date 3 (Patent Owner’s sur-reply to reply): April 26, 2024 Due Dates 4-8 remain unchanged.

Stipulated Due Date March 29, 2024 May 10, 2024 It is not believed that any other action by the parties or by the Board is required to put the requested schedule modification into effect.

Respectfully submitted,

/Thomas N. Millikan/ Lead Counsel Thomas N. Millikan (Reg. No. 72,316) Back-up Counsel Babak Tehranchi (Reg. No. 55,937) Andrew N. Klein (pro hac vice) Wei Yuan (Reg. No. 71,772) Attorneys for Petitioner Netskope, Inc.

Referring to the example in Figure 2 below, annotated by Dr. Black, the system operates as an intermediary “Gateway” [204] that facilitates “interactions between enterprise users [202a, 202b, 202c] and cloud service providers [206a, 206b, 206c] for storage, retrieval, and searching of data and content stored by the providers.” Ex. 1001, 8:27-9:4; Ex. 2003, ¶¶31-32.

In an inter partes review, claim terms receive their plain and ordinary meaning in light of the specification of the patent in which it appears, the same standard as used in district court.

Although the Institution Decision states that Patent Owner merely “attacks the references individually rather than as Petitioner proposes,” respectfully, the Board may not “ignore[] the express disclosure ... that teaches away from the claimed invention.” Chermours Co. FC, LLC v. Daikin Industries, 4 F.4th 1370, 1376 (Fed. Cir. 2021).

The Institution Decision rejected a similar argument, stating that Case No. IPR2023-00458 U.S. Patent No. 9,280,678 “Chiueh does not counsel against encrypting document pages and word sets at an enterprise system of Auradkar or at an intermediate gateway of the Auradkar-Chambers combination.” Paper 10, 44.

As discussed above, the Institution Decision rejected a similar argument made in Patent Owner’s Preliminary Response, stating that the claims do not require a single policy that performs all the recited functions.