Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 21
`
`Entered: May 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORP.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01892
`Patent 8,677,494 B2
`____________
`
`
`
`Before JAMES B. ARPIN, ZHENYU YANG, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`IPR2015-01892
`Patent 8,677,494 B2
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`I. INTRODUCTION
`Finjan, Inc. (“Patent Owner”) filed a Partial Request for Rehearing
`Pursuant to 37 C.F.R. §§ 42.71(c) and 42.71(d) (Paper 13, “Req. Reh’g” or
`“Request for Rehearing”), requesting rehearing of our determination to
`institute an inter partes review of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S.
`Patent No. 8,677,494 B2 (“the ’494 patent,” Ex. 1001). For the reasons that
`follow, Patent Owner’s Request for Rehearing is denied.
`II. BACKGROUND
`Symantec Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`challenging the patentability of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the
`’494 patent (“the challenged claims”) on the following grounds:
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Swimmer1
`
`35 U.S.C. § 102(b)
`
`1, 2, 6, 10, 11, and 15
`
`Swimmer
`
`Swimmer
`
`35 U.S.C. § 103(a)
`
`5 and 14
`
`35 U.S.C. § 103(a) 1, 2, 5, 6, 10, 11, 14, and 15
`
`Cline2 and Ji3
`
`35 U.S.C. § 103(a) 1, 2, 5, 6, 10, 11, 14, and 15
`
`Forrest4 and Ji 35 U.S.C. § 103(a) 1, 2, 5, 6, 10, 11, 14, and 15
`
`Pet. 5. In the Institution Decision entered on March 18, 2016, we concluded,
`following consideration of Petitioner’s explanations and supporting evidence
`
`1 Morton Swimmer et al., Dynamic Detection and Classification of
`Computer Viruses Using General Behaviour Patterns, VIRUS BULL.
`CONF. 75 (Sept. 1995) (Ex. 1005)
`2 U.S. Patent No. 5,313,616 to David C. Cline et al. (Ex. 1003)
`3 U.S. Patent No. 5,623,600 to Shuang Ji et al. (Ex. 1012)
`4 Stephanie Forrest et al., A Sense of Self for Unix Processes, PROC. 1996
`IEEE SYMPOSIUM ON SEC. & PRIVACY 120 (1996) (Ex. 1004)
`
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`in view of Patent Owner’s Preliminary Response (Paper 7, “Prelim. Resp.”),
`that Petitioner had demonstrated in its Petition a reasonable likelihood of
`prevailing in showing the unpatentability of each of the challenged claims
`under 35 U.S.C. § 103(a) over Swimmer. Paper 9 (“Dec. on Inst.”), 12–23.
`Accordingly, we instituted an inter partes review on that ground. Id. at 34.
`We also concluded, however, that Petitioner had not established a reasonable
`likelihood that it would prevail on any of the other grounds asserted, and we
`declined to institute an inter partes review on any other ground. Id. at 23–
`34.
`
` Patent Owner now contends that we “misapprehended or overlooked”
`arguments presented in its Preliminary Response, and that the matters
`misapprehended or overlooked “amount to an abuse of discretion resulting
`in a decision that is based on an erroneous interpretation of law.” Req.
`Reh’g 1.
`
`III. DISCUSSION
`1. Standard for Rehearing
`
`When considering a request for rehearing, we review the decision for
`an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs
`when a “decision [i]s based on an erroneous conclusion of law or clearly
`erroneous factual findings, or . . . a clear error of judgment.” PPG Indus.
`Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir.
`1988). “The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). A request for
`rehearing is not an opportunity merely to disagree with the panel’s
`assessment of the arguments or weighing of the evidence, or to present new
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`arguments or evidence. It is not an abuse of discretion to have performed an
`analysis or reached a conclusion with which Patent Owner disagrees, and
`mere disagreement with our analysis or conclusion is not a proper basis for
`rehearing.
`
`2. Overview
`Patent Owner raises four principal arguments in its Request for
`Rehearing. First, Patent Owner argues, “the Board overlooked Petitioner’s
`inappropriate conflation of claim terms and Patent Owner’s argument that
`Petitioner improperly conflated the claim limitations of ‘deriving security
`profile data for the Downloadable…’ with ‘storing the Downloadable
`security profile data in a database.’” Req. Reh’g 2 (citing Prelim. Resp. 20–
`21). Second, Patent Owner contends that “the Board overlooked Patent
`Owner’s argument that Swimmer does not teach ‘storing the Downloadable
`security profile data in a database’ because Swimmer does not teach
`‘storing’ its audit records anywhere, let alone storing them in a database.”
`Id. at 2–3 (citing Prelim. Resp. 21). Third, Patent Owner contends that “the
`Board’s determination that Swimmer’s ‘audit record is a database’ is
`inconsistent with the Board’s previous determinations as to the proper
`construction for the claimed ‘database.’” Id. at 3. Fourth, Patent Owner
`argues, “the Board misapprehended the significance of Patent Owner’s
`arguments with respect to objective indicia of nonobviousness.” Id. We
`address Patent Owner’s arguments in turn. For the reasons set forth below,
`we are not persuaded by Patent Owner’s arguments.
`3. Alleged Conflation of Claim Terms
`Each of independent claims 1 and 10 recites, inter alia, “deriving
`security profile data for the Downloadable” and “storing the Downloadable
`
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`security profile data in a database.” Ex. 1001, 21:21, 21:24–25, 22:11,
`22:15–16. Patent Owner contends that “Petitioner took the position that
`both ‘security profile data’ and ‘database’ should be redundantly the same,
`by mapping both to Swimmer’s audit records,” and that “[i]n instituting trial,
`the Board overlooked Petitioner’s legally deficient position. In fact, the
`Institution Decision states that Swimmer’s ‘audit record is a database’
`despite acknowledging that Petitioner already relies on these ‘audit records’
`to be the claimed ‘security profile data.’” Req. Reh’g 5 (citing Pet. 18, 19;
`Dec. on Inst. 16, 23). According to Patent Owner, “the Institution Decision
`overlooks Patent Owner’s argument that interpreting Swimmer’s audit
`records to be both the claimed ‘security profile data’ and the claimed
`‘database’ is contrary to the law by giving no effect to the ‘storing . . . in a
`database’ language recited in the claims.” Id. at 6 (citing Prelim. Resp. 20–
`21).
`
`Patent Owner’s contentions are not persuasive. As Petitioner argued
`in the Petition, Swimmer’s VIDES uses an emulator to monitor application
`programs and code, which Petitioner identified as the recited
`Downloadables, and to generate a stream of system activity data. Pet. 16
`(citing Ex. 1005, 7 (“The prerequisite for using an Intrusion Detection (ID)
`system like ASAX is an audit system which securely collects system activity
`data.”)). Petitioner explains, “To generate th[ese] system activity data, the
`emulator, ‘accepts the entire instruction set of a processor as input, and
`interprets the binary code as the original processor would.’” Id. (citing
`Ex. 1005, 8–9 (“audit record attributes of records as collected by the PC
`emulator have the following meaning . . . [t]he final format for an MS-DOS
`audit record is as follows: <code segment, RecType[,] StartTime, EndTime,
`
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`function number, arg ( ... [)],ret ( ... )>”)). “In other words, the audit system
`and/or emulator generates audit records for the Downloadables (i.e.,
`Downloadable security profile data) that identifies and lists functions (i.e.,
`operations) that the Downloadables attempt to invoke,” and “[s]ignificantly,
`these operations identified by Swimmer’s audit system are the very same
`types of operations referred to by the applications related to the ‘494 patent
`as examples of ‘suspicious operations.’” Pet. 17–18. We understand
`Swimmer’s “activity data,” which, as cited by Petitioner, are each contained
`within an audit record, to be “Downloadable security profile data,” in the
`parlance of claims 1 and 10 of the ’494 patent. Moreover, as Petitioner also
`contends, “Swimmer further discloses that these audit records are stored in
`a database.” Id. at 19 (emphasis added) (cited by Dec. on Inst. 17). Based
`on Petitioner’s arguments regarding the recited database limitations of
`claims 1 and 10, we understand Petitioner to equate the aggregate collection
`of Swimmer’s activity data/audit records, each recorded according to a
`structured schema, with the recited “database.” Id. at 13, 19–20 (citing Ex.
`1005, 9, Fig. 3); see also Ex. 1005, 7 (disclosing “audit system . . . securely
`collects system activity data” (emphasis added)).5 Consequently, we do not
`understand Petitioner to have taken the position that “both ‘security profile
`data’ and ‘database’ should be redundantly the same” or to have “conflat[ed]
`the ‘security profile data’ itself with the ‘database’ that stores the ‘security
`profile data,’” as Patent Owner suggests. Req. Reh’g 5.
`
`
`5 In the Institution Decision, we state that “[a]s explained by Swimmer, the
`audit record includes records collected by Swimmer’s VIDES system,
`organized with a specific ‘canonical format’ to serve the ASAX tool.” Dec.
`on Inst. 23. We are persuaded on this record that Swimmer’s collection of
`audit records, so organized, is a database.
`
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`4. “Storing the Downloadable Security Profile Data in a Database”
`Patent Owner argues that “[t]he Board should also reconsider
`instituting trial with respect to Swimmer because the Institution Decision
`overlooked Swimmer’s failure to disclose ‘storing’ its audit records.” Req.
`Reh’g 7. According to Patent Owner, “[i]n its [Preliminary Response],
`Patent Owner pointed out that Petitioner’s ‘audit records’ theory also fails
`because the ‘storing’ of audit records is never disclosed by Swimmer.” Id.
`(citing Prelim. Resp. 21). Patent Owner points, in particular, to argument in
`its Preliminary Response that “Swimmer explicitly discloses that audit
`records are only analyzed once, which means that there would be no need to
`store the audit records after analysis, let alone in a database.” Id. at 8 (citing
`Prelim. Resp. 21). Patent Owner argues further that “Patent Owner’s
`‘storing’ arguments were not addressed in the Institution Decision despite
`being explicitly raised in the [Preliminary Response].” Id.
`Although not explicitly addressed in our Institution Decision, we
`considered and were not persuaded by Patent Owner’s argument that
`Swimmer fails to disclose “storing” Downloadable security profile data.
`Whereas Swimmer states that “[e]fficiency is a critical requirement for the
`analysis of large sequential files” and that the “rules-based language
`RUSSEL allows each record to be processed only once, whatever complex is
`the analysis” (Ex. 1005, 13), none of the challenged claims recite that the
`Downloadable security profile stored in the database must be analyzed at all,
`let alone more than once.
`5. Alleged Inconsistency with Prior Board Decisions
`Patent Owner contends that, “[i]n determining Swimmer’s ‘audit
`records is a database,’ . . . the Board overlooked its previous determinations
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`and equated the claimed ‘database’ with a meaning that is so broad that it
`inconsistently encompasses the very constructions it already rejected.” Req.
`Reh’g 10 (citing Dec. on Inst. 23; Sophos, Inc. v. Finjan, Inc., Case
`IPR2015-01022, slip op. at 9–10, 14 (PTAB Sept. 25, 2015) (Paper 7) (Ex.
`2004); Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 6–10
`(PTAB Jan. 28, 2016) (Paper 9) (Ex. 2006)). Patent Owner further contends
`“this decision also overlooked that Petitioner never purported that
`Swimmer’s audit records met the adopted construction of ‘database’ which
`is ‘a collection of interrelated data organized according to a database schema
`to serve one or more applications.’” Id. at 11. According to Patent Owner,
`“the Petition does not discuss the ‘database schema’ requirement at all for
`Swimmer,” but “always carefully chose to use the broader term ‘schema’
`instead.” Id. (citing Pet. 12, 19). Further, according to Patent Owner, “[i]n
`stark contrast [to Swimmer’s technique], the construction of ‘database’
`requires storing [Downloadable security profile (DSP)] according to a
`‘database schema,’ advantageously allowing DSP to be efficiently retrieved
`when a previously scanned incoming Downloadable is received.” Id. at 11–
`12; see also Prelim. Resp. 21 (stating that Swimmer’s “technique stands in
`stark contrast to the one disclosed in the ’494 patent, which includes storing
`DSP data in a database so that when a known Downloadable is received, it
`may not need [to be] rescanned; rather, its DSP data can simply be retrieved
`from the database” (citing Ex. 1001, 5:36–41)).
`Patent Owner’s contentions again are unpersuasive. As explained by
`Swimmer, the activity data/audit records generated by the VIDES system are
`organized with a specific “canonical format” to serve the ASAX tool.
`Ex. 1005, 9–10. We are persuaded on this record that the collection of
`
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`activity data, so organized, constitutes a database as that term is construed
`both in the Institution Decision and in the Sophos case as “a collection of
`interrelated data organized according to a database schema to serve one or
`more applications.” Dec. on Inst. 11; Case IPR2015-01022, slip op. at 10
`(Paper 7). Although Petitioner argued for a different interpretation of
`“database” in its Petition (Pet. 10–12), we remain persuaded that the
`arguments and evidence cited in the Petition sufficiently demonstrate that
`Swimmer teaches a database according to the interpretation adopted by us
`(see id. at 19–20 (citing Ex. 1005, 1, 2, 9, Fig. 3; Ex. 1018 ¶¶ 108–110)).
`Moreover, we are satisfied, on the present record, that there is no meaningful
`distinction between “database schema,” as recited in our interpretation of
`“database” (Dec. on Inst. 11), and the “structured schema” or “particular
`schema” referred to in the Petition to describe Swimmer’s canonical format
`(Pet. 13, 19).
`Despite Patent Owner’s allegation that the Institution Decision
`“should be reconsidered to avoid an inconsistent outcome,” our decision in
`Sophos does not compel a different conclusion. Req. Reh’g 9. In contrast
`with Swimmer’s collection of activity data organized with a canonical
`format to serve ASAX, the log file disclosed by the reference at issue in
`Sophos had no discernable organization or service to any other applications.
`See Case IPR2015-01022, slip op. at 14 (Paper 7) (“TBAV does not appear
`to disclose that the log file has any particular organization or serves any
`other applications, which . . . are among the hallmarks of a database.
`Instead, the log file appears . . . to be a simple output of ‘infected program
`files, specifying heuristic flags . . . and complete pathnames’ either to a
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`printer or to a file that is, by default, overwritten by the results of each new
`scan by the TbScan program.”).
`Finally, notwithstanding Patent Owner’s arguments regarding
`efficient retrieval of DSP when a previously scanned incoming
`Downloadable is received (Req. Reh’g 11–12; Prelim. Resp. 21), none of the
`challenged claims recite that the database must permit DSP data to be
`retrieved “when a known Downloadable is received.”
`6. Objective Indicia of Nonobviousness
`Patent Owner argues that we misapprehended its argument regarding
`objective indicia of nonobviousness, which was, “[s]tated simply, [that]
`‘Petitioner’s failure to present the Board with a complete obviousness
`analysis in its Petition is, as a matter of law, enough to deny the institution of
`a trial on Section 103 grounds.’” Req. Reh’g 13 (quoting Prelim. Resp. 48).
`According to Patent Owner, “Patent Owner did not (nor did it intend to in its
`[Preliminary Response]—with its limited opportunity to provide new
`testimonial evidence) argue the merits of its secondary considerations of
`nonobviousness,” but “simply argued that in failing to address the secondary
`considerations of which Petitioner was aware, the Petition’s obviousness
`grounds were legally deficient under the framework provided by the
`Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).”
`Id. Further, according to Patent Owner, although “[t]he Board’s decision
`appears to acknowledge that proper obviousness analysis requires
`consideration of objective evidence of nonobviouness,” “the Board never
`addressed the fact that consideration of objective evidence of
`nonobviousness does not appear in the Petition.” Id.
`
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`Although Patent Owner is correct that “proper obviousness analysis
`requires consideration of objective evidence of nonobviousness,” if such
`evidence is presented, we have not at this stage of the proceeding made any
`final determination as to whether any of the challenged claims would have
`been obvious over Swimmer. Rather, we have made only a determination
`that Petitioner has established a reasonable likelihood that it will prevail in
`challenging the claims on that basis. See Dec. on Inst. 23. We will consider
`objective evidence of nonobviousness in our Final Written Decision, to the
`extent justified by the parties’ arguments and evidence presented at trial.
`See Samsung Elecs. Co. v. Queen’s Univ. at Kingston, Case IPR2015-00603,
`slip op. at 21 (PTAB Aug. 6, 2015) (Paper 10) (“At this stage of the
`proceedings, we consider it premature to address objective indicia of non-
`obviousness because all the relevant evidence is not yet before us.”);
`Crocs, Inc. v. Polliwalks Inc., Case IPR2014-00423, slip op. at 15 (PTAB
`Aug. 20, 2014) (Paper 8) (“[S]econdary considerations are better considered
`in the context of a trial when the ultimate determination of obviousness is
`made.”).
`Patent Owner cites no authority for the proposition that a petitioner
`must address preemptively a patent owner’s objective evidence of
`nonobviousness at the petition stage of a proceeding. Indeed, the Board has
`repeatedly found similar arguments unpersuasive in other proceedings.
`See, e.g., Samsung, Case IPR2015-00603, slip op. at 21 (Paper 10) (finding
`unpersuasive patent owner’s argument that petition’s obviousness analysis
`was fundamentally flawed for failing to address objective evidence of
`nonobviousness alleged in related lawsuit); Petroleum Geo-Servs. Inc. v.
`WesternGeco LLC, Case IPR2014-01477, slip op. at 32 (PTAB Mar. 17,
`
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`2015) (Paper 18) (finding unpersuasive patent owner’s argument that
`petition was fatally deficient because it did not address secondary indicia of
`nonobviousness alleged to be an issue in related district court litigation and
`holding “Patent Owner’s citations . . . and respective arguments for legal
`insufficiency of the Petition are premature, as the evidence of secondary
`indicia of non-obviousness must be first developed in this proceeding by
`Patent Owner” (emphasis added)); GTNX Inc. v. INTTRA Inc.,
`Case CBM2014-00075, slip op. at 22 (PTAB Aug. 12, 2014) (Paper 8)
`(finding unpersuasive patent owner’s faulting of petitioner for failing to
`address objective evidence of nonobviousness in petition). Of course, a
`petitioner who does not address objective evidence risks denial of its petition
`if a patent owner is able to come forward with sufficient objective evidence
`of nonobviousness in a preliminary response. See Omron Oilfield &
`Marine Inc. v. MD/Totco, Case IPR2013-00265, slip op. at 12–16 (PTAB
`Oct. 31, 2013) (Paper 11) (denying institution of inter partes review due to
`patent owner’s sufficient showing of commercial success in preliminary
`response). In this case, however, for the reasons provided in the Institution
`Decision, we determine that Patent Owner has not yet made a sufficient
`showing, on the current record and at this stage of the proceeding, with
`respect to alleged industry praise, licensing, copying, and commercial
`success to overcome the evidence of obviousness presented by Petitioner.
`See Dec. on Inst. 33–34. Ultimately, in this preliminary proceeding, Patent
`Owner cannot rely on Petitioner to make Patent Owner’s secondary
`considerations arguments and then to overcome them.
`
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`IV. CONCLUSION
`For the reasons given, Patent Owner has not shown that our
`determination to institute an inter partes review of claims 1, 2, 5, 6, 10, 11,
`14, and 15 of the ’494 patent over Swimmer constituted an abuse of
`discretion. Having considered Patent Owner’s Request for Rehearing in its
`entirety, we are not persuaded that we misunderstood or overlooked
`arguments presented in Patent Owner’s Preliminary Response or that any
`allegedly misapprehended or overlooked matters amounted to an abuse of
`discretion.
`
`V. ORDER
`Accordingly, it is hereby ORDERED that Patent Owner’s Request for
`Rehearing is denied.
`
`
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`For PETITIONER:
`
`Joseph J. Richetti
`Daniel A. Crowe
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`dacrowe@bryancave.com
`
`
`
`For PATENT OWNER:
`
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`Michael Kim
`FINJAN, INC.
`mkim@finjan.com
`
`
`
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