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.