• Nissan North America, Inc. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 30, 2016 · IPR2015-01509 · APJ Jason J Chung · IPR · Final written decision

  Claims 26, 29, 30, 33, 42, 43, 48, 60, and 68 are unpatentable as anticipated by Frossard or Pagliaroli, or obvious over the stated combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner

    “In that 2007 filing, the term “signal” was defined as “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Ex. 2002, 11. We are persuaded that this definition is instructive to understanding the proper scope of these claim terms. Thus, a first signal, for example, is an “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information that is sent by a first device.” We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third device.” For convenience, this claim construction is reproduced in the table below.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are not persuaded that Mr. McNamara’s statements on cross examination are sufficient reason to accord his testimony little or no weight. The prosecution history is an important element in understanding the claims of a patent. We are persuaded that the statements made during cross examination appear to misstatements as to Mr. McNamara’s review of the patent and its underlying prosecution history. Mr. McNamara signed his declaration under penalty of perjury and he has made other statements consistent with his testimony under oath stating that he reviewed the prosecution history. See Ex. 1003 ¶ 14; Ex. 2003, 154:11–20. Mr. McNamara signed his declaration on June 24, 2015, which states that he read the ’130 patent and its prosecution history. Ex. 1003 ¶ 14. Although Mr. McNamara testified that he did not read the prosecution history (Ex. 2003, 153:11–15), Patent Owner ignores Mr. McNamara’s other statements that demonstrate that he reviewed the prosecution history (id. at 154:11–20). In addition, Mr. McNamara’s statement was during a lengthy deposition approximately nine months after Mr. McNamara signed his declaration. Mr. McNamara’s inconsistent testimony appears to illustrate a momentary lapse in memory. Compare e.g., id. at 153:11–15, with id. at 154:11–20. Moreover, the only claim terms Mr. McNamara defined in view of the prosecution history of the ’130 patent were “automatically” and “automatically received,” which neither party contests. Compare PO Resp. 10–16; Reply 1; Pet. 8–9, with Ex. 1020, 26. In addition, we are not persuaded that Mr. McNamara’s statement that he did not review the prosecution history of the ’130 patent displays a lack of understanding of the prosecution history because Patent Owner did not define any claim terms at issue in this proceeding that overlap with claim terms defined during the prosecution of the ’130 patent. Compare PO Resp. 10–16, with Ex. 1020, 26.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree with Petitioner that Patent Owner attempts to limit “control device” improperly in a way that contradicts Patent Owner’s proposed claim construction. As discussed supra, “control device” is construed as “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions.” We agree with Petitioner that Frossard’s server 1 and resource 2 discloses the claimed “second control device” because Patent Owner’s proposed definition of “control device” can comprise “part of a device”; it follows that a device can comprise multiple parts. Also, because a “control device” is a type of device, a “control device” can include necessarily multiple parts. We also determine that because Patent Owner acknowledged, in its own definition, that “control device” means “a device or a computer, or that part of a device or a computer, which performs an operation, an action, or a function, or which performs a number of operations, actions, or functions” (emphases added), it necessarily follows that the “or” implies that a control device can include multiple parts. Tr. 32:15–19. For example, a “control device” can be “[1] a device or [2] a computer”; in other words, logic dictates that the “or” can be interpreted as an “and” such that a “control device” can be “[1] a device and [2] a computer.” Id. Moreover, during oral hearing, Patent Owner acknowledged Frossard’s server 1 is a “computer” and Frossard’s resource 2 is a “device.” Id. at 34:14–35:11 (In response to the question, “[s]o you are saying that a server can’t be a device,” Patent Owner acknowledged “[a] server is a computer, and broadly, if you consider a computer a device, a server is a device.”) (In response to the question “resource 2 or indicating a network number 2, is that a device as well?” Patent Owner acknowledged “resource 2 has a coder and has a transmitter. I would say it is a computer, but in a broad sense it can be considered a device.”). Using Patent Owner’s acknowledgement during the oral hearing, it follows that Frossard’s server 1 and Frossard’s resource 2, together, discloses a “control device” under Patent Owner’s proposed definition of “control device.” Furthermore, Figure 1 illustrates that Frossard’s server 1 and resource 2, together, form a control device generating and transmitting a signal. Ex. 1005, Fig. 1. Frossard’s server 1 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of generating the message order M (i.e., the claimed “second signal”). Id. at 4– 5. In addition, Frossard’s resource 2 is part of the claimed “second control device,” such that this part performs an operation, an action, or a function of transmitting the order message M (i.e., the claimed “second signal”). Id.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner and Mr. McNamara that it would have been obvious to a person having ordinary skill in the art to combine Frossard’s system with Pagliaroli’s theft sensor 12 to provide a system for remotely disabling or enabling a vehicle that also provides a notification when it detects tampering or theft. Patent Owner fails to proffer any rationale or evidence for why the combination of Frossard and Pagliaroli would destroy the functionality of Frossard. Further, Patent Owner fails to proffer its own expert testimony refuting Petitioner’s arguments and Mr. McNamara’s opinion. Patent Owner’s arguments are conclusory attorney argument. Patent Owner’s argument that Pagliaroli does not provide a teaching or suggestion that its theft sensor 12 can function as Frossard’s receiver-decoder circuits 4 is improper because Petitioner argues for combining (rather than replacing) Pagliaroli’s theft sensor 12 and Frossard’s receiver-decoder circuits 4. In addition, Patent Owner is incorrect because any teaching or suggestion need not be found in the reference itself.” slip op. at 37

  Patent outcomesUS 6,549,130 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,549,130
• Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 29, 2016 · IPR2015-01466 · APJ Stacey G White · IPR · Final written decision

  Claims 22, 29, 31, 32, 39, and 40 are unpatentable as anticipated by French; claim 27 is unpatentable as obvious over French and Caglayan.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “skill in the art. Id. at 16. Mr. Bennett testified that a person of ordinary skill would have “a bachelor’s degree in engineering or equivalent coursework and at least two years of experience in networked systems.” Id. (quoting Ex. 1002 ¶ 18). Mr. Bennett, however, does not have a degree in engineering and he has limited coursework in the field. Id. at 16–21. Thus, according to Patent Owner his testimony should be accorded little to no weight because he does not meet his own definition of a person of ordinary skill in the art. Id. This argument is not persuasive. Our reviewing court has noted that “[t]he ‘person of ordinary skill in the art’ is a theoretical construct used in determining obviousness under § 103, and is not descriptive of some particular individual.” Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040, 1042 (Fed. Cir. 1997) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 963 (Fed. Cir. 1986)). The Federal Circuit has instead examined whether the purported expert has substantial credentials that would allow the judge to permit testimony from the purported expert. Id. Under the Federal Rules of Evidence, the question is whether Mr. Bennett has “scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702; see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Rule 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art”). We are persuaded that Mr. Bennett has such credentials. Mr. Bennett has nearly 40 years of experience in networked systems (Reply. 14 (citing Ex. 1019, 210:2–9)) and is a named inventor in four issued patents dealing with networked systems (id. (citing Ex. 1003, 4–5; Ex. 1019, 49:15–50:10)). Patent Owner did not raise any substantive issues with Mr. Bennett’s experience or knowledge; instead, it only argued that Mr. Bennett did not have sufficient classroom education. We find that Mr. Bennett’s work experience, research, and industry participation are sufficient to provide the expertise necessary to assist us in this matter.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We find Petitioner’s argument to be persuasive. We have not been directed to evidence in the specification sufficient to show that the Applicant desired to narrow this very broad definition of signal in a manner that would exclude signals that pass through intermediaries. As defined by the Applicant, a signal may be an indication, information, or a message and we are not persuaded that it is impermissible for an intermediary to pass this information on and to add further data to the information that it received. For the foregoing reasons, we construe the term “first signal” to be “a signal sent by a first device;” “second signal” to be “a signal sent by a second device;” and “third signal” to be “a signal sent by a third (communications) device.” The recited signals all are construed to be “an indication, or an indication having or conveying data, information, or a message, or a conveyor of data, information, or a message, or an indication representing data or information.” Finally, we are not persuaded that these terms exclude signals that may pass through an intermediary. Further, we are persuaded that the claims are broad enough to encompass situations in which an intermediary may append additional information to the received signals.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “second processing device because “there is an intermediate device between the local control module 38a and the central control system 20 that receives the ‘first signal’ from the local control module 38a and then subsequently generates and sends a ‘second signal’ to control system 20.” PO Resp. 25– 26 (citing Ex. 2012 ¶ 18); see also id at. 30–31. Dr. DiEuliis testified that “Global Control Module 30a assembles the data from the Local Control Module 38a and other modules, it generates a signal that contains all of this information and transmits it on network 32, where it is received by the Central Control System 20.” Ex. 2012 ¶ 22 (citing Ex. 1005, 6:43–53). As discussed above, we are not persuaded that the claims exclude systems with intermediate devices such as French’s global control module. See § II.B.2. As noted by Dr. DiEuliiss, French’s global control module transmits a signal to the central control module that “contains all of [the information received from the local control module].” Ex. 2012 ¶ 22. Pursuant to our construction, the signal received by the central control module (second control device) is the first signal because it contains all of the information sent by the local control module (first device). Thus, we do not find Patent Owner’s argument to be persuasive and we are persuaded by Petitioner’s arguments regarding the disclosures of French. Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French discloses the limitations of claim 22. See Pet. 19– 28. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of independent claim 22 over the disclosures of French.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Desktop, Internet, and Intranet Agents. Ex. 1006, 1. Caglayan describes how intelligent agents manage tasks such as notifying users of events of significance. Id. at 66. Petitioner argues that it would have been obvious to use Caglayan’s intelligent agents in French’s automation system to further automate the remote monitoring system and more efficiently monitor the data received from the building equipment and systems remotely. Pet. 35– 36 (citing Ex. 1002 ¶¶ 41–44). We find this rationale to be reasonable. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Based on our review of the full record, we find persuasive Petitioner’s arguments and evidence and we adopt them as the basis for our determination that French and Caglayan teach the limitations of claim 27. See Pet. 33–36. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claim 27 over the combined teachings of French and Caglayan.” slip op. at 19

  Patent outcomesUS 6,542,077 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,542,077
• Terremark North America LLC / Verizon Business Network Services Inc. et al. v. Joao Control & Monitoring Systems, LLCAll claims unpatentable
  PTAB · Dec 22, 2016 · IPR2015-01477 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 30, 33, 53, and 85–88 are unpatentable by disclaimer; claims 33 and 90 are also unpatentable as obvious over Fuhr, but not anticipated by Goldberg.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentUnpatentable

    “Patent Owner states that it “hereby disclaims claims 30, 53, and 85‒ 88.” PO Resp. 21. Patent Owner does not present any arguments in its Patent Owner Response directed to those claims. A review of the USPTO electronic file of the ʼ046 patent indicated that Patent Owner had not filed a statutory disclaimer. In an Order entered December 7, 2016, we notified Patent Owner that if it failed to file a notice in this proceeding indicating that it has filed a statutory disclaimer for claims 30, 53, and 85‒88 in the patent, the claims will be held unpatentable. Paper 28. The period provided for filing of such notice has passed without response from Patent Owner. See id. at 2. Accordingly, we determine that claims 30, 53, and 85‒88 are 1 Time Warner Cable Inc. and iControl Networks, Inc. also were named as petitioners. We granted a joint motion to terminate the inter partes review with respect to those parties. Paper 22. unpatentable. The patentability of claims 33 and 90 remain for consideration in this Final Written Decision.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “objections with respect to Mr. Bennett’s testimony, nor sought to preclude him from testifying as an expert witness. In any event, to testify as an expert under Federal Rule of Evidence 702, a person need not be a person of ordinary skill in the art, but rather may be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). We give appropriate weight to the testimony of Mr. Bennett as an individual with more than 30 years of industry experience in computers and networking, including the development of real-time video collaboration tools (Ex. 1003, 2) and software for a video-on-demand server (Ex. 1002 ¶ 12). See generally Ex. 1002 ¶¶ 5‒12; Ex. 1003 (CV).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We construe “video information” to mean “data or information containing, pertaining to or representing, an image or images or a photograph.” PO Resp. 12; see also Prelim. Resp. 25. Patent Owner submits that “real-time video information” should be construed as synonymous with “live video information,” with each meaning “video information” that is broadcast or transmitted as the video information event occurs. PO Resp. 13‒14. Patent Owner refers to a Memorandum and Order from the U.S. District Court for the Southern District of New York, which construes those terms in the ʼ046 patent. Id. (citing Ex. 2013, 17). We adopt the construction set forth by the District Court and as advocated by Patent Owner. Petitioner does not oppose that construction. See Pet. Reply 2 (“Petitioners have no issue with the wording of this construction, provided it is understood that the construction does not require instantaneous transmission of video information.”).” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). “The identical invention must be shown in as complete detail as is contained in the patent claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The expert testimony upon which the Petition relies does not provide sufficient support for anticipation. Mr. Bennett submits that the camera disclosed in Goldberg “is capable of capturing and transmitting individual images, as well as live video.” Ex. 1002 ¶ 38 (emphasis added). His Declaration does not allege that the artisan would understand that Goldberg discloses a system that includes live video. Further, Goldberg’s description of “two possible fixes” for a live video feed (Ex. 1006, 210 n.1) is in the form of an invitation for the artisan to investigate possible ways to supply a live video feed, as opposed to describing an invention in terms such that the ordinary artisan would be placed in possession of it. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” (quoting In re LeGrice, 301 F.2d 929, 936 (CCPA 1962))). Goldberg, however, describes a system having “a limited level of teleoperation.” Ex. 1006, 210 (§ 2). slip op. at 11

  Patent outcomesUS 6,587,046 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,587,046
• Finjan Holdings, Inc. v. Sophos LimitedAll claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01405 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1, 11, and 12 are unpatentable under § 103 over Lee and Cooley (claims 1 and 12), and Lee, Cooley, and Tuvell (claim 11); also over Farley and Cooley (claims 1 and 12), and …

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “On this record, we determine that Petitioner’s construction is consistent with the plain and ordinary meaning of “ranked” and requires no construction.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “party is definitive because the way the evidence is presented is contradictory. We begin our analysis with the words used in the claims. “The usage of the disputed claim terms in the context of the claims as a whole also informs the proper construction of the terms.” Abbott Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1351 (Fed. Cir. 2003) (citations omitted). Claims 1 and 12 recite that “malicious behavior indications” are compared to “phenotypes,” as construed above. As a result of the comparison, the phenotypes “are ranked to create increasing levels of confidence that a runtime object is executing a behavior pattern comparable to a known family of malware.” It is only in the context of the comparison that the ranking occurs. There is no explanation in the specification or otherwise as to why the phenotypes would be ranked apart from and prior to the comparison being made. The reason for the comparison between the “malicious behavior indications” and the “phenotypes” is to identify the most problematic phenotype, which is “ranked” according to how similar it is to the “executing computer program.” To the extent there is a grammar issue raised, we agree with Petitioner’s evidence that “the past participle form of a verb merely ‘signifies ‘perfectiveness’ or completion, but is not restricted to past time.’” Pet. Reply 4 (citing Ex. 1023, 282, 286–87; Ex. 1024, 409). This is consistent with our plain and ordinary meaning analysis immediately above.” slip op. at 11

  • Skill levelSkill level board ownOther

    “substantially similar. Petitioner asserts a person of ordinary skill would have an undergraduate degree “in Computer Science or a comparable subject and at least five years of work experience in either the field of intrusion detection or in malware detection; or (ii) an advanced degree (or equivalent) in Computer Science or a comparable subject and at least one year of post-graduate research or work experience in either the field of intrusion detection or in malware detection.” Pet. 17–18 (citing Ex. 1020 ¶ 33). Patent Owner’s proposed level of ordinary skill is a “bachelor’s degree or the equivalent in computer science, computer engineering, or a related degree, and three to four years of experience in the field of Internet software, including anti-virus and other malware, or equivalent work experience.” PO Resp. 8–9 (citing Ex. 2001 ¶¶ 17–20). Both proposals are similar in requiring at least an undergraduate degree and between three to five years of experience. Accordingly, we find that the person of ordinary skill has an undergraduate degree in computer science, computer engineering, or a related or comparable degree and at least four years of work experience in the field of Internet software, including anti-virus or intrusion or malware, detection, or equivalent work experience.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are not persuaded by Dr. Sauer’s testimony that substituting Lee’s behavior analysis for Cooley’s would not have been obvious to a person of ordinary skill in the art. Ex. 2001 ¶ 58. Dr. Sauer’s opinion is based on the length of time difference between Lee and Cooley and the related “worst of all” problem that occurs “long after startup.” Ex. 2001 ¶¶ 56–58; see PO Resp. 19–20. Neither Patent Owner nor Dr. Sauer persuades us that the length of time differences between Lee and Cooley would have been of any significant consequence to the motivation of the person seeking to solve the problem of detecting malware. Thus, we determine that Dr. Sauer’s conclusion is entitled to little weight. We find the motivation for the combination is based on the undisputed fact that Lee and Cooley both use behavioral analysis to solve the same problem. This overlap between the problem and its solution is “a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Both Lee and Cooley use behavioral analysis to address that problem and are interrelated. Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. (internal citation omitted). Based on our findings concerning the interrelated teachings of Lee and Cooley, we determine that one of ordinary skill in the art would have had reason to combine Lee and Cooley or to substitute one technique for the technique used in the other.” slip op. at 28

  Patent outcomesUS 8,776,218 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,776,218
• Xactware Solutions, Inc. v. Eagle View Technologies, Inc.Rehearing denied
  PTAB · Sep 21, 2016 · IPR2016-00582 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Xactware’s rehearing request, leaving institution denied for claims 1–5, 7–13, 15–23, 25–31, 33–40, 42, 46–52, and 54–56 because Hsieh’s public accessibility was not sufficiently shown.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “that Hsieh was indexed prior to the critical date. Req. Reh’g 2–5. Petitioner points to indicia on the first few pages of Hsieh showing dates and bar codes, provides an explanation of the import of those indicia, and argues that we should have found a reasonable inference of public accessibility before the critical date. We considered the indicia along with Petitioner’s failure to explain the import of the indicia and found the evidence presented by Petitioner lacking. Dec. 5–6 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)). A request for rehearing is not an opportunity merely to disagree with the Panel’s assessment of the arguments or weighing of the evidence. It is not an abuse of discretion to have performed an analysis or reached a” slip op. at 2

  § 102 anticipation
  Patents in suitUS 8,078,436
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · Jun 30, 2016 · IPR2015-00377 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–16, 18–24, and 26 are unpatentable as obvious; the challenges to claims 2, 8, 11, 17, 25, and 27 were not proven.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “claims). Pet. 7. In our Decision to Institute, we determined the broadest reasonable construction of anomalous is: “deviation/deviating from a model of typical computer system usage.” Dec. 6. We specifically recognized that the Specification contemplates that “attack data” may be used to build the model used as a baseline for comparison to identify anomalous behavior. Id. Neither party has indicated that our determination in regard to that claim construction was improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determination.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “one of these distinct models, the ‘Oracle model,’ is combined with other models.” Pet. Reply 6 (citing Ex. 1008, 11:53–64 (showing that a selected ‘Oracle model’ is used in combination with a k-means algorithm and a Markov transition model); Ex. 1015 (Goodrich Suppl. Decl.) ¶ 19). Petitioner has not explained, however, why models created on different computers would be relevant to Khazan’s static model where the specific execution of two different computers would not affect the model.2 See In re Omeprazole Patent Litig., 536 F.3d 1361, 1380 (Fed. Cir. 2008) (reasoning that even though a certain modification could have been possible, it would not have been obvious because a person of ordinary skill in the art “would not have seen any need” to make the modification). Although we acknowledge Petitioner’s argument that Agrawal teaches using a combined model from different processors and the testimony of Petitioner’s Declarant, Dr. Goodrich to that effect (Pet. 23 (citing Ex. 1003 ¶ 84)), we are not persuaded that this would be sufficient to motivate the 2 Petitioner’s Declarant, in his supplemental declaration, states “[u]sing multiple computers spreads the computational overhead involved in creating the models across the computers, and allows for more models to be created in a shorter amount of time.” Ex. 1015 ¶ 20. We do not rely on this statement because this theory was not presented in the Petition and although the paragraph containing this language is cited to in Petitioner’s Reply at page 6, it is not explained or specifically relied upon. 24 combination given the differences discussed above. In other words, we agree with Patent Owner that Petitioner has not shown sufficiently that there was a motivation to apply the models produced on different computers as taught by Agrawal to the system of Khazan. Therefore, Petitioner, has not shown by a preponderance of the evidence that claims 2, 11, and 27 were obvious over the combination of Khazan and Agrawal.” slip op. at 24

  • Obviousness (§103) › KSR rationalesNot shown unpatentableUnpatentableMixed

    “Petitioner also asserts through its Declarant that “one of ordinary skill in the art would recognize that random selection of models is one of a finite number of identified, predictable selection techniques and it would be obvious to try random selection among models because it has a reasonable expectation of success.” Pet. 29–30 (citing Ex. 1003 ¶ 86). Petitioner does not explain how random selection is one of a finite number of predictable selection techniques; for example, Petitioner does not show how many other techniques could be considered. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (“KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness . . . . [T]his clearly is not the easily traversed, small and finite number of alternatives that KSR suggested might support an inference of obviousness.”). Dr. Goodrich has not identified sufficient support for the predictability of the art. For example, Dr. Goodrich has not explained sufficiently why, or identified evidence that shows the invention described in the ’322 Patent falls into a very predictable field, one of ordinary skill in the art would have possessed the requisite skills to make the proposed combinations, or one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556 F.3d 1310, 1319–20 (Fed. Cir. 2009). 21 Finally, Petitioner cites Sobel (Ex. 1011)1 as support for it being “obvious to randomly select a subset of a group of computing choices.” Pet. 30. Petitioner characterizes Sobel’s teachings too broadly. Ex. 2030 ¶ 117. Sobel is directed to “providing software updates to a random sample of computers,” not to randomly selecting models. Pet. 30. Thus, we are not persuaded that Sobel is relevant to the inquiry here. For the reasons stated above, Petitioner has not shown by a preponderance of the evidence that claims 8, 17, and 25 were obvious over the combination of Khazan and Agrawal.” slip op. at 21

  • Skill levelSkill level board ownDecided for petitioner

    “We have considered Patent Owner’s argument that the Petition fails to propose properly a level of ordinary skill in the Petition itself and that the level of skill suggested by Petitioner’s Declarant is higher than the level used in the related district court case. PO Resp. 6–8. Nevertheless, Patent Owner does not argue that the combinations of the teachings of the references are beyond the level of skill of a person of ordinary skill in the relevant art. The level of skill in the art might be gleaned from the prior art itself. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985) (“A specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is not shown.”). Here, we find that the prior art adequately reflects an appropriate level of skill and that Patent Owner does not demonstrate a need for testimony or other evidence to establish the level of skill of a person of ordinary skill in the relevant art. Also, we find that, even though Dr. Goodrich suggests a level of skill higher than the level used in the related district court case, Patent Owner does not show sufficiently that any such difference in level of skill is material to the obviousness analysis in this case.” slip op. at 28

  Patent outcomesUS 8,601,322 mixed
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,601,322
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkAll claims unpatentable
  PTAB · Jun 30, 2016 · IPR2015-00375 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–8, 11, 13–18, 21, 22, 24–29, 32, 34–39, and 42 are unpatentable: anticipated by Khazan or obvious over Khazan with Arnold, with Agrawal added for claims 3, 13, 24, and 34.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownTerm construed petitioner constructionDecided for petitioner

    “claims). Pet. 8. In our Decision to Institute, we determined the broadest reasonable construction of anomalous is: “deviation/deviating from a model of typical computer system usage.” Dec. 6. We specifically recognized that the Specification contemplates that “attack data” may be used to build the model used as a baseline for comparison to identify anomalous behavior. Id. Neither party has indicated that our determination in regard to that claim construction was improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determination. Patent Owner also suggests the construction “deviation/deviating from a model of typical computer system usage” requires “identifying statistical deviations from normal.” PO Resp. 23. The claim language does not require a statistical analysis, and Patent Owner does not present sufficient evidence of any language in the Specification that suggests that such a limitation was intended to be imported into the claims. Thus, we do not adopt this limit on our construction.” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “We have considered Patent Owner’s argument that the Petition fails to propose properly a level of ordinary skill in the Petition itself and that the level of skill suggested by Petitioner’s Declarant is higher than the level used in the related district court case. PO Resp. 4–6. Nevertheless, Patent Owner does not argue that the combinations of the teachings of the references are beyond the level of skill of a person of ordinary skill in the relevant art. “The level of skill in the art might be gleaned from the prior art itself.” See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985) (“A specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is not shown.”). Here, we find that the prior art adequately reflects an appropriate level of skill and that Patent Owner does not demonstrate a need for testimony or other evidence to establish the level of skill of a person of ordinary skill in the relevant art. Also, we find that, even though Dr. Goodrich suggests a level of skill higher than the level used in the related district court case, Patent Owner does not show sufficiently that any such difference in level of skill is material to the obviousness analysis in this case.” slip op. at 23

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “40. Dr. Goodrich testified “Agrawal discloses using a Markov process to randomly select a model. (Agrawal, 2:63–3:3, Ex. 1008; Ex. 1009 at p.3) (A ‘Markov process’ is ‘a stochastic process which assures that in a series of random events the probability of an occurrence of each event depends only on the immediately preceding outcome.’).” Ex. 1003 ¶ 96. Dr. Goodrich does not explain how use of the Markov process results in a random selection beyond the fact that “random events” are a focus of the process. 32 Petitioner also asserts through its Declarant that “one of ordinary skill in the art would recognize that random selection of models is one of a finite number of identified, predictable selection techniques and it would be obvious to try random selection among models because it has a reasonable expectation of success.” Pet. 42 (citing Ex. 1003 ¶ 96). Petitioner does not explain how random selection is one of a finite number of predictable selection techniques, for example, Petitioner does not show how many other techniques could be considered. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (“KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness . . . . [T]his clearly is not the easily traversed, small and finite number of alternatives that KSR suggested might support an inference of obviousness.”). Dr. Goodrich has not identified sufficient support for the predictability of the art. For example, Dr. Goodrich has not explained sufficiently why, or identified evidence that shows the invention described in the ’115 Patent falls into a very predictable field, one of ordinary skill in the art would have possessed the requisite skills to make the proposed combinations, or one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556, F.3d 1310, 1319–20 (Fed. Cir. 2009).” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “application executes additional monitoring code which indicates which of the programs functions are being called. Pet. 20–21; Ex. 1010, ¶¶ 5, 44, 73, 75, 78. Khazan states that “[w]hen the application is executed, dynamic analysis is used to intercept calls to targets and verify them against the model.” Ex. 1010, Abstract. Further, Petitioner emphasizes that Khazan explains that dynamic analysis is performed “during execution of the application.” Pet. 21; Ex. 1010 ¶ 62. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses modifying a program to include indicators of program-level function calls being made during execution of the program. Claims 22, 32, and 42 further recite comparing at least one of the indicators of program-level function calls being made in an emulator to a model of function calls for at least a part of the program. For this limitation, Petitioner contends that Khazan discloses monitoring of program level function calls made by an application in an emulator. Pet. 22; Ex. 1010 ¶¶ 66, 111. Petitioner asserts that Khazan discloses “[w]hen the application is executed, dynamic analysis is used to intercept calls to targets and verify them against the model” and “[t]he verifications may involve comparing the invocation and target location, as well as other call-related information . . . to the corresponding information identified by static analysis.” Pet. 22; Ex. 1010, Abstract. Further, Petitioner states that Khazan explains that dynamic analysis is performed “during execution of the application.” Pet. 21; Ex. 1010 ¶ 62. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses comparing at least one of the indicators of 14 program-level function calls being made in an emulator to a model of function calls for at least a part of the program. Claims 22, 32, and 42 further recite identifying a function call corresponding to the at least one of the indicators as anomalous based on the comparison. For these limitations, Petitioner contends that Khazan discloses the verification described above involves comparing run time behavior with the application model. Pet. 23; Ex. 1010, Abstract. Petitioner contends that the run time behavior in Khazan is monitored using monitoring code added to the application using the instrumentation technique (i.e., indicators). Pet. 23; Ex. 1010 ¶¶ 64, 75. Khazan further discloses “[i]f the run time behavior deviates from the application model, it is determined that the application executable has executed MC [malicious code, i.e., anomalous function call].” Pet. 23 Ex. 1010 ¶ 65. We are persuaded by Petitioner’s showing, which we adopt as our own, that Khazan discloses identifying a function call corresponding to the at least one of the indicators as anomalous based on the comparison.” slip op. at 14

  Patent outcomesUS 8,074,115 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Markman · KSR
  Patents in suitUS 8,074,115
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00372 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1 and 3–8 are unpatentable as obvious over Bace and Russinovich; claims 9 and 10 were not shown unpatentable because the evidence did not establish the claimed likelihood of observing a feature.

  RulingsFinal written decision

  • BurdenMixed

    “We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 3–8 would have been obvious over Bace and Russinovich. We determine that Petitioner has not shown by a preponderance of the evidence that claims 9 and 10 would have been obvious over Bace and Russinovich.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “2. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Michael T. Goodrich, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 18–19. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 13–14; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 9

  • Expert testimonyOther

    “Patent Owner’s Motion for Observations E. Patent Owner filed a Motion for Observations on the cross examination of Dr. Michael T. Goodrich (Paper 47), to which Petitioner filed a Response (Paper 50). We have considered Patent Owner’s observations and Petitioner’s responses, and we have given Dr. Goodrich’s testimony the appropriate weight in making our determination in this case.” slip op. at 30

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 9. Pet. 39–41; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 39–41; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 9 would have been obvious over Bace and Russinovich. Claim 10 6. Claim 10 depends from claim 9, and recites “wherein determining a likelihood of observing a feature comprises determining a conditional probability of observing a first feature in the records of processes that access the operating system registry given an occurrence of a second feature in the records.” Ex. 1001, col. 23, ll. 8–12. Because claim 10 depends from claim 9, and Petitioner has not shown that claim 9 would have been obvious over Bace and Russinovich, we determine that Petitioner also has not shown by a preponderance of the evidence that claim 10 would have been obvious over Bace and Russinovich. See supra Section II.B.5.” slip op. at 25

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00378 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 14 and 16–24 are unpatentable as obvious over Bace and Russinovich; claims 25 and 26 were not shown unpatentable because the evidence did not establish the claimed feature-likelihood limitations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “contends that this construction is necessary to clarify that the challenged claims require monitoring registry accesses because Petitioner’s declarant, Dr. Michael T. Goodrich, testified during his deposition that the records “may be records that don’t have direct impact on the registry.” Id. at 7–8. Even if Patent Owner’s characterization of Dr. Goodrich’s deposition testimony is accurate, Petitioner does not argue in the Petition or the Reply that the challenged claims do not require monitoring registry accesses. See Pet. 13–15, 21–32; Pet. Reply 1, 3–8. As such, there does not appear to be a dispute that requires claim construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Nonetheless, in order to avoid any ambiguity, we provide an express construction of the phrase “records regarding processes that access the operating system registry.” We determine that the evidence supports Patent Owner’s proposed construction. The written description of the ’084 patent consistently indicates that records of processes are obtained by monitoring accesses to the operating system registry. Ex. 1001, col. 5, ll. 6–18, col. 8, ll. 9–10, col. 8, ll. 22–24, col. 13, ll. 28–31, col. 13, ll. 46–52. In addition, Petitioner acknowledges that the challenged claims require monitoring accesses to the operating system registry. Tr. 12:15–13:3. Patent Owner’s proposed construction, however, omits the claim terms “processes” and “operating system,” which are part of the phrase being construed. Ex. 1001, col. 23, ll. 32–34. Therefore, we modify Patent Owner’s proposed construction to include those terms. Specifically, we construe the phrase “records regarding processes that access the operating system registry” to mean “records regarding processes obtained by monitoring accesses to the operating system registry.”1” slip op. at 6

  • Skill levelOther

    “of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 9–10. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 7–8; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case. Patent Owner argues that, even if Petitioner correctly defines the level” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “90–93, 128, 139 (pp. 68–69); Ex. 1029 ¶¶ 9–10. Therefore, the teachings of Bace, together with the background knowledge and perspective of a person of ordinary skill in the art, would have made it obvious to use records obtained by monitoring registry accesses as an information source for an anomaly detection system. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362– 63 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Thus, Petitioner identifies evidence indicating that Bace teaches determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 25. Pet. 41–42; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 41–42; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 25 would have been obvious over Bace and Russinovich.” slip op. at 28

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00374 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable as anticipated by Bace and Denning; claims 7 and 8 were not shown unpatentable because neither reference disclosed determining the likelihood of observing a feature.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “of ordinary skill in the art at the time of the ’306 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’306 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 24. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 8. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex. 1029 ¶¶ 7–8. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 5

  • BurdenMixed

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace discloses determining the likelihood of observing a feature, as recited in claim 7. Pet. 30–32; Pet. Reply 14–15; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 30–32; Pet. Reply 14–15; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’306 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Bace specifies that certain information sources are used for a computer system with a Windows operating system. Namely, Bace discloses that, for a Windows computer system, “security log events are the primary focus of intrusion detection systems,” and “especially those having to do with the creation, deletion, and alteration of system files and other 3 Patent Owner suggests that this portion of Bace only relates to the system call records gathered by UNIX system audit trails. Paper 48 ¶¶ 3–5. Section 3.2.4 of Bace, however, describes the advantages of operating system audit trails generally, not just UNIX system audit trails. Ex. 1007, 70. objects.” Id. at 74–75 (emphases added). Bace then explains that the reference data obtained from the Windows computer system is used to generate the anomaly detection models discussed later in Bace. Ex. 1007, 109 (“Anomaly detectors are populated by running them against the collected reference event data.”); id. at 74–75, 121–122; Ex. 1003 ¶ 112. Thus, for a Windows computer system, Bace expressly links the reference data obtained by monitoring the creation, deletion, and alteration of system files with the disclosed anomaly detection models. Ex. 1029 ¶¶ 15–19; cf. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (explaining that the prior art did not link two distinct teachings). Bace further discloses that Denning’s anomaly detection model, which includes the mean and standard deviation model, is the “seminal” anomaly detection model. Ex. 1007, 108, 121–122. As a result, Bace provides a specific reason for selecting Denning’s anomaly detection model from among the other models disclosed in Bace. Ex. 1003 ¶ 111; Ex. 1029 ¶ 19. c. Summary For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by Bace.” slip op. at 11

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Here, Patent Owner argues that Petitioner’s Reply exceeds the scope of a proper reply because it presents a new theory of unpatentability for claim 7 based on the TIM system in Bace that is not included in the Petition. PO Mot. Str. 2–3. Petitioner, on the other hand, argues that its Reply is proper because the Petition relies on the TIM system in Bace with respect to claim 8, and, thus slip op. at 27

  Patent outcomesUS 7,913,306 mixed
  § 102 anticipation
  Patents in suitUS 7,913,306

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.