`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SOPHOS, INC.
`
`Petitioner
`v.
`
`FINJAN, INC.
`
`Patent Owner
`
`
`
`CASE IPR Unassigned
`
`Patent No. 8,677,494
`
`
`PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,677,494
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 1
`1.
`Real Parties-In-Interest .............................................................. 1
`2.
`Related Matters .......................................................................... 1
`3.
`Lead and Back-up Counsel ........................................................ 2
`4.
`Powers of Attorney and Service Information ............................ 2
`Proof of Service on the Patent Owner .................................................. 3
`B.
`Fee ........................................................................................................ 3
`C.
`III. GROUNDS FOR STANDING ....................................................................... 3
`IV. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 3
`V.
`IDENTIFICATION OF CHALLENGE ......................................................... 3
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 4
`VII. SUMMARY OF THE ’494 PATENT ............................................................ 4
`Effective Filing Date ............................................................................ 4
`A.
`B. Overview of the Prosecution History ................................................... 6
`C.
`Patent Specification and Claims ........................................................... 7
`VIII. CLAIM CONSTRUCTION ......................................................................... 12
`IX. STATE OF THE ART PRIOR TO THE ’494PATENT .............................. 15
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`X.
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’494PATENT ....................................................................................... 17
`XI. DETAILED EXPLANATION OF THE GROUNDS FOR
`REJECTION ................................................................................................. 17
`Challenge to Claims 1, 10, and 18 based on ThunderBYTE
`A.
`Anti-Virus Utilities User Manual in view of Ji .................................. 17
`Challenge to Claim 14 based on ThunderBYTE Anti-Virus
`Utilities User Manual in view of Ji and Chen .................................... 29
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`B.
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`C.
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`D.
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`Challenge to Claims 1, 10, 14, and 18 based on Arnold in view
`of Chen and Ji ..................................................................................... 36
`Challenge to Claims 1, 10, 14, and 18 based on Chen in view of
`Arnold and Ji ...................................................................................... 44
`XII. THE CHALLENGES ARE NOT REDUNDANT ....................................... 50
`XIII. CONCLUSION ............................................................................................. 51
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`TABLE OF EXHIBITS
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`EXHIBIT
`
`DESCRIPTION
`
`U.S. Patent No. 8,677,494 to Edery et al.
`
`Expert Declaration of Paul Clark
`
`Curriculum Vitae of Paul Clark
`
`File History for U.S. Patent No. 8,677,494
`
`U.S. Provisional Patent Application No. 60/030,639 to Touboul et
`al.
`ThunderBYTE Anti-Virus Utilities User Manual, ThunderBYTE
`B.V. (1995)
`Information Disclosure Statement filed in U.S. Patent Application
`No. 08/605,285 on October 25, 1996
`U.S. Patent No. 5,440,723 to Arnold et al.
`
`U.S. Patent No. 5,623,600 to Ji et al.
`
`U.S. Patent No. 5,951,698 to Chen et al.
`
`Finjan, Inc. v. Sophos Inc., 14-cv-1197 – Finjan Opening Claim
`Construction Brief
`File History for U.S. Patent Application No. 11/370,114
`
`File History for U.S. Patent Application No. 09/861,229
`
`U.S. Patent No. 6,804,780
`
`U.S. Patent No. 6,092,194
`
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`U.S. Patent No. 6,480,962
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`Excerpts of Finjan v. McAfee et al., Trial Transcripts
`
`Information Disclosure Statement filed in U.S. Patent Application
`No. 08/684,580 on October 25, 1996
`Excerpts of Microsoft Press Computer Dictionary, Second
`Edition, Microsoft Press (1994)
`Mangosoft, Inc. v. Oracle Corp., 1:02-cv-545-SM – Claim
`Construction Order
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`
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`I.
`
`
`INTRODUCTION
`
`It is hereby requested that the United States Patent and Trademark Office
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`proceed with an inter partes review of claims 1, 10, 14, and 18 of U.S. Patent No.
`
`8,677,494 (Exhibit 1001) (hereinafter “the ’494 patent”).
`
`
`
`The ’494 patent relates generally to detecting suspicious computer
`
`operations in downloaded files. The claims are directed to receiving an incoming
`
`Downloadable, deriving security profile data for the Downloadable, and storing the
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`security profile data in a database. The security profile data includes a list of
`
`suspicious computer operations that may be attempted by the Downloadable. As
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`explained below, the claimed systems had been developed and were well known in
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`the virus detection and computer security field long before the application for the
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`’494 patent had been filed. Specifically, it was well known to receive downloaded
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`files that could be infected with malware, examine the files to identify suspicious
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`computer operations that may be attempted by the files, and store the identified
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`data in a database. All of the claims of the ’494 patent are therefore invalid over
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`the prior art identified below, each of which was cited during prosecution of the
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`’494 patent.
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`1
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`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Parties-In-Interest
`Sophos Limited and wholly owned subsidiary, Sophos Inc., are the real
`
`
`
`parties-in-interest.
`
`Related Matters
`
`2.
`To the knowledge of Petitioner, a decision in this proceeding would affect or
`
`be affected by the following matters where Finjan is asserting the ’494 patent: (1)
`
`Finjan, Inc. v. Sophos Inc., 3:14-1197 (N.D. Cal.), (2) Finjan, Inc. v. Websense,
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`Inc., Case No. 3:14-cv-1353 (N.D. Cal.), and (3) Finjan, Inc. v. Palo Alto
`
`Networks, Inc., Case No. 3:14-cv-4908 (N.D. Cal.).
`
`Lead and Back-up Counsel
`
`3.
`Lead Counsel for Petitioner is James M. Heintz, DLA Piper LLP (US), Reg.
`
`No.
`
`41,828, who
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`can
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`be
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`reached
`
`by
`
`
`at Sophos-Finjan-
`
`494IPR@dlapiper.com, by phone at 703-773-4148, by fax at 703-773-5200, and by
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`mail at 11911 Freedom Drive, Suite 300, Reston, VA 20190. Backup counsel for
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`Petitioner is Nicholas Panno of DLA Piper LLP (US), Reg. No. 68,513, who can
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`be reached by email at Sophos-Finjan-494IPR@dlapiper.com, by phone at 703-
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`773-4157, by fax at 703-773-5157, and by mail at 11911 Freedom Drive, Suite
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`300, Reston, VA 20190.
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`4.
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`Powers of Attorney and Service Information
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`Powers of attorney are being filed with the designation of counsel in
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`accordance with 37 C.F.R. § 42.10(b). Service information for lead and back-up
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`counsel is provided in the designation of lead and back-up counsel above. Service
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`of any documents via hand delivery may be made at the postal mailing address of
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`the respective lead and back-up counsel designated above.
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`Proof of Service on the Patent Owner
`
`B.
`As identified in the attached Certificate of Service, a copy of this Petition in
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`
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`its entirety is being served on the Patent Owner’s attorney of record at the address
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`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
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`Fee
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`C.
`The undersigned authorizes the Director to charge the fee specified by 37
`
`
`
`C.F.R. § 42.15(a) and any additional fees that might be due in connection with this
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`Petition to Deposit Account No. 50-1442.
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`III. GROUNDS FOR STANDING
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`In accordance with 37 C.F.R. § 42.104(a), the Petitioner certifies that the
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`’494 patent is available for inter partes review and that the Petitioner is not barred
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`or estopped from requesting an inter partes review challenging the patent claims
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`on the grounds identified in this Petition.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED
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`In accordance with 37 C.F.R. § 42.22, the Petitioner respectfully requests
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`that claims 1, 10, 14, and 18 of the ’494 patent be invalidated for the reasons set
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`forth below.
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`V.
`
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`IDENTIFICATION OF CHALLENGE
`In accordance with 35 U.S.C. § 311 and 37 C.F.R. § 42.104(b), inter partes
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`review of claims 1, 10, 14, and 18 of the ’494 patent is requested in view of the
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`following grounds:
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`
`
`A.
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`Claims 1, 10, and 18 are invalid under 35 U.S.C. § 103 (pre-AIA) as
`
`being obvious over ThunderBYTE Anti-Virus Utilities User Manual (“TBAV”) in
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`view of U.S. Patent No. 5,623,600 to Ji et al. (“Ji”).
`
`
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`B.
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`Claim 14 is invalid under 35 U.S.C. § 103 (pre-AIA) as being obvious
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`over TBAV in view of Ji and U.S. Patent No. 5,951,698 to Chen et al. (“Chen”).
`
`
`
`C.
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`Claims 1, 10, 14, and 18 are invalid under 35 U.S.C. § 103 (pre-AIA)
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`as being obvious over U.S. Patent No. 5,440,723 to Arnold et al. (“Arnold”) in
`
`view of Chen and Ji.
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`
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`D.
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`Claims 1, 10, 14, and 18 are invalid under 35 U.S.C. § 103 (pre-AIA)
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`as being obvious over Chen in view of Arnold and Ji.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art at the time of the alleged invention of
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`the ’494 patent would generally have a bachelor’s degree or the equivalent in
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`4
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`computer science, computer engineering, or a related degree, and three to four
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`years of experience in the fields of network software and security, or equivalent
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`work experience. This person would have been aware of the computer security
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`technology discussed herein and would have been capable of understanding and
`
`applying the prior art references discussed herein, alone or in combination. Ex.
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`1003 ¶ 52.
`
`VII. SUMMARY OF THE ’494 PATENT
`A.
`Effective Filing Date
`
`
`
`
`The ’494 patent, entitled “Malicious Mobile Code Runtime Monitoring
`
`System and Methods,” issued on March 18, 2014, and arises from U.S. patent
`
`application No. 13/290,708 (“the ’708 application”), which was filed on November
`
`7, 2011. The patent was assigned upon issuance to Finjan, Inc. According to
`
`USPTO records, this patent is currently assigned to Patent Owner.
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`
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`The ’494 patent claims the benefit of provisional applications No.
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`60/205,591 (filed May 17, 200) and No. 60/030,639 (filed November 8, 1996).
`
`Thus, assuming the ’494 patent correctly claims the benefit of the ’639 application,
`
`the earliest possible effective filing date of the ’494 patent is November 8, 1996.
`
`Ex. 1003 ¶¶ 47-51. Several other patents claiming the benefit of the same
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`provisional application (U.S. Patent Nos. 6,092,194; 6,167,520; 6,480,962; and
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`7,058,822) have been invalidated as a result of Federal Court or PTAB
`
`proceedings.
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`
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`B. Overview of the Prosecution History
`
`The ’708 application was filed on November 7, 2011. A non-final rejection
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`was mailed on July 23, 2012, which rejected the claims of the ’708 application for
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`double patenting and under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent
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`No. 5,983,348 to Ji. Ex. 1004, pp. 757-766. Applicants addressed the rejections by
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`filing a terminal disclaimer and a petition to accept unintentionally delayed claim
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`of priority to the ’639 application. Ex. 1004, pp. 721-256. This petition was
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`dismissed on Novmber 27, 2012 because it was not accompanied by a copy of
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`the’639 application. Ex. 1004, pp. 719-720. A final rejection was mailed on
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`January 7, 2013, accepting the terminal disclaimer and citing the same U.S. Patent
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`No. 5,983,348 to Ji. Ex. 1004, pp. 711-717. On May 7, 2013, Applicants filed a
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`declaration by inventor Shlomo Touboul purporting to establish an invention date
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`prior to the filing date of the Ji patent. Ex. 1004, pp. 182-190. Specifically,
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`Touboul declares that his "sole invention was in [his] mind and developed by at
`
`least November 18, 1996," which is after the filing date of the ‘639 application. Ex.
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`1004, p. 189. A notice of allowance was mailed on August 29, 2013. Ex. 1004, pp.
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`118-124. Applicants subsequently filed a petition to withdraw from issue, a new
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`petition to accept unintentionally delayed claim of priority to the ’639 application,
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`and a request for continued examination on October 1, 2013, and a corrected
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`petition on December 6, 2013. Ex. 1004, ppp. 65-77, 94-102. The USPTO granted
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`the petition for acceptance of a claim for late priority to the ’639 application on
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`December 24, 2013, and the patent issued on March 18, 2014. Ex. 1001, p.1; Ex.
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`1004, pp. 53-54.
`
`
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`
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`C.
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`Patent Specification and Claims
`
`The ’494 patent relates generally to protecting personal computers (PCs) or
`
`other devices from malicious software obtained over a network. The ’494 patent
`
`refers
`
`to executable
`
`files and software obtained over a network as
`
`“Downloadables” and focuses on identifying malicious Downloadables. The
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`specification of the ‘494 patent itself has little specific teaching of the claimed
`
`subject matter beyond providing descriptions that are broadly in the same field as
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`the claims. Ex. 1002 ¶39.
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`
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`The disclosure of the ’639 application most closely resembles the subject
`
`matter claimed by the ‘494 patent. The ’639 application relates generally to a
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`system and method for protecting computers from hostile Downloadables. Ex.
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`1005, p. 1, ll. 6-8; Ex. 1002 ¶40. A Downloadable is described as “an executable
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`application program which is automatically downloaded from a source computer
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`and run on the destination computer.” Ex. 1005, p. 2, ll. 1-4; Ex. 1002 ¶40.
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`Examples of Downloadables include executables as well as applets for Java and
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`Active X. Ex. 1005, p. 2, ll. 4-7; Ex. 1002 ¶40. According to the ’639 application,
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`viruses may be attached to Downloadables. Ex. 1005, p. 1, ll. 20-22; p. 2, ll. 7-9;
`
`Ex. 1002 ¶40.
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`
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`The method
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`taught by
`
`the ’639 application
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`includes receiving a
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`Downloadable, and, when the Downloadable does not get identified as a previously
`
`identified hostile Downloadable, deriving Downloadable security profile data from
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`the received Downloadable. Ex. 1005, p. 3, ll. 13-21; Ex. 1002 ¶41.
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`
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`Specifically, an
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`internal network
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`security
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`system 110 examines
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`Downloadables, determines whether they are hostile, and prevents hostile
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`Downloadables from reaching an internal computer network 115 (e.g., a corporate
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`local area network (LAN)). Ex. 1005, p. 6, ll. 2-17; Ex. 1002 ¶42. The internal
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`network security system 110 is shown in FIG. 2 and includes a central processing
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`unit (CPU) 205, communications interfaces 210, 225, input/output (I/O) interfaces
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`215, a data storage device 230, memory 235, and a signal bus 220. Ex. 1005, p. 6,
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`l. 19 – p. 8, l. 4; Ex. 1002 ¶42. The security program 255 in memory 235 controls
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`the operations of the internal network security system 110. Ex. 1005, p. 8, ll. 1-4;
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`Ex. 1002 ¶42. The security database 240 in the data storage device 230 stores
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`Downloadable security profiles (DSPs). Ex. 1005, p. 8, ll. 14-19; Ex. 1002 ¶42.
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`FIG. 3 illustrates security program 255 details. An ID generator 315 of the
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`security program 255 receives a Downloadable from external computer network
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`105. Ex. 1005, p. 9, ll. 14-16; Ex. 1002 ¶43.
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`A first comparator 320 of the security program 255 determines if the
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`Downloadable is identical to a known non-hostile or hostile Downloadable 307 and
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`discards the Downloadable if it is identical to a known hostile Downloadable. Ex.
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`1005, p. 9, l. 20 – p. 10, l. 5; Ex. 1002 ¶44. Known Downloadables 307 (hostile
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`and non-hostile) along with corresponding DSP data 310 are stored in the data
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`storage device 230. Ex. 1005, p. 8, ll. 13-19; Ex. 1002 ¶44. DSP data 310 includes
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`the
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`fundamental computer operations
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`included
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`in
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`the known hostile
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`Downloadables 307 (e.g., read, write, file management operations, system
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`management operations, memory management operations, CPU allocation
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`operations). Ex. 1005, p. 9, ll. 9-13; Ex. 1002 ¶44.
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`In the event that the Downloadable is unknown (either not identical to a
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`known hostile Downloadable or not
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`identical
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`to a known non-hostile
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`downloadable), a code scanner 325 of the security program 255 decomposes the
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`code of the unknown Downloadable into DSP data and sends the Downloadable
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`and DSP data to a second comparator 330 of the security program 255. Ex. 1005,
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`p. 10, ll. 9-20; Ex. 1002 ¶45. Decomposing the code includes disassembling the
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`machine code of the Downloadable, resolving a command in the machine code,
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`and determining whether the resolved command is a suspect command (e.g., a
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`memory allocation command or loop command). Ex. 1005, p. 15, l. 15 – p. 16, l. 2;
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`Ex. 1002 ¶45. Code containing suspect commands is decoded, and the command
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`and command parameters are registered as DSP data that can be stored in the data
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`storage device 230; Ex. 1002 ¶45.
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`
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`The second comparator 330 compares the DSP data against stored security
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`policies 305 to determine whether the Downloadable includes a hostile operation.
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`Ex. 1005, p. 10, l. 21 – p. 11, l. 5; Ex. 1002 ¶46. The known Downloadables 307
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`stored in the data storage device 230 include Downloadables that the second
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`comparator 330 determines to be hostile. The DSP data 310 associated with these
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`hostile Downloadables includes the fundamental operations performed by the
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`Downloadables (i.e., the hostile operations). Ex. 1005, p. 9, ll. 3-13; Ex. 1002 ¶46.
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`VIII. CLAIM CONSTRUCTION
`In accordance with 37 C.F.R. § 42.104(b)(3), Petitioner provides the
`
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`following statement regarding construction of the ’494 patent claims.
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`
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`
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`A.
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`Legal Standard
`
`Claims in an inter partes review of an unexpired patent are to be given their
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`“broadest reasonable interpretation in light of the specification.” 37 C.F.R.
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`42.100(b). This standard is often referred to as “BRI”.
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`
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`
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`B. Construction of the Terms Used in the Claims
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`Because the claim construction standard in this proceeding differs from that
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`used in U.S. district court litigation, Petitioner expressly reserves the right to assert
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`different claim construction positions under the standard applicable in district court
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`for any term of the ’494 patent in any district court litigation. Claim construction is
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`further discussed in Ex. 1002 ¶¶ 53-66.
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`1.
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`“Downloadable” (claims 1, 10, 14, and 18): Under the BRI,
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`this limitation should be understood to mean “an executable application program
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`which is downloaded from a source computer and can be run on the destination
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`computer”, as defined in the ’639 application. Ex. 1005, p. 2, ll. 1-4; Ex. 1002 ¶60.
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`This construction is also consistent with the ’494 patent, which describes a
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`Downloadable as “information including executable code.” This definition is what
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`one of ordinary skill in the art would understand from the specification of the ’494
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`patent. Ex. 1001, col. 9, ll. 46-52; Ex. 1002 ¶60. This construction is also
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`consistent with what was agreed upon by Petitoner and Patent Owner in related
`
`proceedings cited above. Ex. 1011, p. 4.
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`
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`2.
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`“suspicious computer operations” (claims 1 and 10): Under
`
`the BRI, this limitation should be understood to mean “computer instructions that
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`are deemed to be potentially hostile”. This construction is consistent with the
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`disclosure in the ’639 application regarding “potentially hostile operations” and
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`“suspect commands.” Ex. 1005, p. 8, l. 19 – p. 9, l. 3; p. 15, l. 19 – p. 16, l. 2; Ex.
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`1002 ¶62. This construction is also consistent with the ’494 patent, which describes
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`“harmful, undesirable, suspicious or other ‘malicious’ operations that might
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`otherwise be effectuated by remotely operable code.” Ex. 1001, col. 2, ll. 54-56;
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`Ex. 1002 ¶62.
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`
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`3.
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`“database” (claims 1 and 10): Under the BRI, this limitation
`
`should be understood to mean “any structured store of data”. The ’639 application
`
`does not define “database”, but one of ordinary skill in the art would understand
`
`the term “database” to have this meaning. See, e.g., Ex. 1020, p. 29 (wherein
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`database files are given as examples of structured stores of data). This construction
`
`is consistent with the disclosure in the ’639 application of a data storage device
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`230 that stores a security database 240. Ex. 1005, p. 7, ll. 16-20; Ex. 1002 ¶64.
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`This construction is also consistent with the ’494 patent, which teaches “[a]ny
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`suitable explicit or referencing list, database or other storage structure(s) or storage
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`structure configuration(s) can also be utilized to implement a suitable user/device
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`based protection scheme” Ex. 1001, col. 17, ll. 10-14; Ex. 1002 ¶64.
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`4.
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`“program script” (claim 14): Under the BRI, this limitation
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`should be understood to mean “a set of instructions that can be executed by a
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`computer through an interpreter or some other program with a computer.”. The
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`’639 application does not define “program script”, but one of ordinary skill in the
`
`art would understand the term “program script” to have this meaning. See, e.g., Ex.
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`1019, p. 350. This construction is consistent with the disclosure in the ’639
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`application regarding Downloadables containing Java applets or ActiveX applets.
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`Ex. 1005, p. 2, ll. 1-7; Ex. 1002 ¶66. This construction is also consistent with the
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`’494 patent, which describes “downloadable application programs, Trojan horses
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`and program code groupings, as well as software ‘components’, such as JavaTM
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`applets, ActiveXTM controls, JavaScript/Visual Basic scripts, add-ins, etc.” Ex.
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`1001, col. 2, ll. 59-64; Ex. 1002 ¶66. Those of ordinary skill in the art would
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`understand that JavaTM applets, ActiveXTM controls, JavaScript/Visual Basic
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`scripts contain instructions that can be executed by a computer through an
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`interpreter or some other program. Ex. 1002 ¶66.
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`IX. STATE OF THE ART PRIOR TO THE ’494 PATENT
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`The state of the art prior to the ’494 patent is discussed generally in Ex. 1002
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`¶¶35-38. By the time of the filing of the ‘494 patent, malware downloaded from a
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`network was a well-known threat. Companies like Norton, McAfee, and Trend
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`Micro were known to offer established products available to detect and prevent
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`hostile downloadable software from being installed through the use of local and
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`firewall resident scanners. In particular, these commercially available solutions
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`generally included data files intended to assist an executable scanner in the
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`identification of malware.
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`
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`These companies and others continuously monitored developments in
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`malware to identify new malware and update their product data files to enable
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`identification of the new malware. Data file updates were distributed to end users
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`periodically to keep their systems up to date.
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`
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`However, it was widely known that new malware could appear on an end
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`user system faster than it could be detected and incorporated into the data files by
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`scanner software distributors. For example, it was widely known at the timein 1996
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`that files could be downloaded onto computers from networks. FTP, HTTP, and
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`other network protocols were in general use, and computers used these protocols to
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`interface with networks to download files, including executable files and files
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`containing program script. See, e.g., Ex. 1009, col. 1, ll. 15-42; col. 2, l. 39 – col.
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`3, l. 16. Such files were known to be potentially contain suspicious computer
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`instructions, such as malware. Often, malware was distributed to computers via
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`networks in executable or script files before it could be detected by the distributors
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`of malware protection software. See, e.g., Ex. 1006, p. 165.
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`
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`To that end, it was well known by the time of the filing of the ‘494 patent to
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`include modules for end user systems and other network-deployed systems to
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`allow them to detect and respond to programs that contained suspicious
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`instructions, and therefore potentially hostile software, in the absence of a
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`signature in the scanner’s data file.
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`
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`As discussed below, all of the elements of claims 1, 10, 14, and 18 of the
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`’494 patent are known in the prior art, and it would have been obvious to combine
`
`the prior art in the manner recited in those claims.
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`X. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF THE
`’494 PATENT
`A petition for inter partes review must demonstrate “a reasonable likelihood
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`
`
`that the Petitioner would prevail with respect to at least one of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). This Petition meets that threshold.
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`There is a reasonable likelihood that Petitioner will prevail in establishing that at
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`least one of claims 1, 10, 14, and 18 of the ’494 patent is invalid under 35 U.S.C. §
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`103 as explained below.
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`XI. DETAILED EXPLANATION OF THE GROUNDS FOR REJECTION
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`A detailed explanation of the pertinence and manner of applying the prior art
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`references to claims 1, 10, 14, and 18 of the ’494 patent is provided below in
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`accordance with 37 C.F.R. §§ 42.104(b)(4) and 42.104(b)(5). Except as noted, the
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`detailed explanation set forth below assumes that the claims of the ’494 patent are
`
`construed consistent with the claim constructions set forth above.
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`
`
`
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`A. Challenge to Claims 1, 10, and 18 based on TBAV in view of Ji
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`TBAV qualifies as prior art to the ’494 patent under 35 U.S.C. § 102(a)
`
`because TBAV has a copyright date of 1995 and was publicly available by at least
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`October 25, 1996, as evidenced by the fact that it was disclosed by a patent
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`applicant in an Information Disclosure Statement which was filed in U.S. Patent
`
`Application No. 08/605,285 on October 25, 1996 and an Information Disclosure
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`Statement which was filed in U.S. Patent Application No. 08/684,580 on October
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`25, 1996. See Ex. 1007, pp. 2 and 6; Ex. 1018, pp. 2 and 65. October 25, 1996 is
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`prior to the earliest possible effective filing date of the application of the ’494
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`patent on November 8, 1996. Ex. 1006, cover page; Ex. 1007, pp. 2 and 6. Ji
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`qualifies as prior art to the ’494 patent under 35 U.S.C. § 102(e) because Ji was
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`granted on an application filed in the U.S. on September 26, 1995, which is prior to
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`the earliest possible ’494 patent effective filing date.
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`TBAV: TBAV is a user manual for the ThunderBYTE anti-virus software.
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`TBAV describes a software program that protects computer systems against both
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`known and unknown viruses. The TBAV software includes TbScan, a virus
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`scanner, and TbScanX, a memory resident version of TbScan. Ex. 1006, pp. 1-2;
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`Ex. 1002 ¶ 70.
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`
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`TbScan is run upon user request or automatically (e.g., on startup via the
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`AUTOEXEC.BAT file), and can be used to scan some or all files that have been
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`downloaded or that have otherwise been stored on disks, fixed drives, and/or
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`network drives. Ex. 1006, pp. 48-51; Ex. 1002 ¶ 71. TbScan includes a signature
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`scanner and a heuristic scanner. The signature scanner detects known viruses
`
`whose signatures are stored in a signature file. The heuristic scanner disassembles
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`files using a built-in disassembler and searches for suspicious instruction
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`sequences within the files using a built-in code analyzer. Ex. 1006, pp. 1-2, 153-
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`155; Ex. 1002 ¶ 71. The heuristic scanner disassembles files and interprets their
`
`instructions. The heuristic scanner disassembles the files to allow scanning to be
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`restricted to an area of a file where a virus might reside, to make it possible to use
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`algorithmic detection methods on encrypted viruses, and to make it possible to
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`detect suspicious instruction sequences. Ex. 1006, p. 154; Ex. 1002 ¶ 71.
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`
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`TbScan looks into a file’s contents and interprets the file’s instructions to
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`detect their purpose (e.g., formatting a disk or infecting a file). Heuristic flags are
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`assigned to suspicious instructions, such as instructions that are common to viruses
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`but uncommon to normal programs. TBAV discloses that a heuristic flag is a
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`character indicating a specific type of suspicious instruction. Ex. 1006, pp. 155,
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`180-185; Ex. 1002 ¶ 72. For example, the flags include “# - Decryptor code found”
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`(indicating that the file contains instructions that perform self-decryption
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`operations), “A – Suspicious Memory Allocation” (indicating the program contains
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`instructions
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`that perform non-standard memory search and/or allocation
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`operations), “B – Back to entry” (indicating the program contains instructions that
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`perform endless loop operations), “D – Direct disk access” (indicating the program
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`contains instructions that perform a write operation to a disk directly), “L –
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`program load trap” (indicating the program contains instructions that perform an
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`operation to trap the execution of other software), “S – Search for executables”
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`(indicating the program contains instructions that perform a search operation for
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`executable files), and “U – Undocumented system call” (indicating the program
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`contains instructions that perform unknown DOS call or interrupt operations),
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`among others. Ex. 1006, pp. 180-185; Ex. 1002 ¶ 72.
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`
`
`The heuristic flags are associated with scores, so that if the total score (i.e.,
`
`the sum of heuristic flag scores) for a file exceeds a predefined limit, the file is
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`assumed to contain a virus. Ex. 1006, pp. 153-155. Multiple predefined limits can
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`be established, so that a file having a score above a sensitive limit “might” be
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`19
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`
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`infected, and a file having a score above a higher limit is assumed to include a
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`virus. Ex. 1006, p. 155; Ex. 1002 ¶ 73.
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`
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`TbScan provides the option to output scan results to a log file. The results in
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`the log file include the heuristic flags assigned to each file. Ex. 1006, p. 60; Ex.
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`1002 ¶ 74. If suspicious instructions are found in a file during a scan, the heuristic
`
`flags in the log file indicate their presence and describe the nature of the suspicious
`
`instructions. In addition to these flags, if a detailed log level is selected for the log,
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`TbScan adds a description to the log file. Ex. 1006, pp. 76-77; Ex. 1002 ¶ 74.
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`
`
`TbScan scans files with filename extensions that indicate the file is a
`
`program file (e.g., .EXE, .COM, .BIN, .SYS, .OV?). TbScan can be configured to
`
`also scan files with filename extensions that suggest the file can be infected by
`
`viruses (e.g., .DLL, .SCR, .MOD, .CPL, .00?, and .APP). Ex. 1006, p. 57; Ex. 1002
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`¶75. Files such as .DLLs contain executable code that is executed by other
`
`programs, so these files can be infected by malware, as those of ordinary skill in
`
`the art would understand. Ex. 1002 ¶75.
`
`
`
`TBAV also includes a TbGenSig program that can be called by TbScan to
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`define signature records for suspicious files. Ex. 1006, pp. 4, 57; Ex. 1002 ¶76.
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`TbScan is used to extract instructions from files that are being examined, such as
`
`files that are believed to be infected with viruses. The signature comprises
`
`suspicious instructions form a signature for of the potential virus infecting the file.
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`20
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`
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`Ex. 1006, pp. 166-168; Ex. 1002 ¶76. A virus name, one or more keywords, and
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`the instructions are added to a file (e.g., USERSIG.DAT). Ex. 1006, p. 168; Ex.
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`1002 ¶76. Note that TBAV explicitly uses *.DAT files as databases (see also,
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`ANTI-VIR.DAT). Ex. 1006, pp. 4, 36; Ex. 1002 ¶76. TbGenSig