Tnals@uspte. gov
`
`
`571-272-7822
`
`Paper8
`Date: December9, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WIZ, INC.,
`Petitioner,
`
`V.
`
`ORCA SECURITY LTD.,
`Patent Owner.
`
`IPR2024-00865
`Patent 11,693,685 B2
`
`Before MICHAEL R. ZECHER, GARTH D. BAER, and
`SCOTT RAEVSKY,Administrative Patent Judges.
`
`ZECHER,Administrative Patent Judge.
`
`DECISION
`Granting Institution ofnter Partes Review
`SS US.C. $314
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`I. INTRODUCTION
`
`Petitioner, Wiz, Inc. (“Wiz”), filed a Petition requesting an inter
`
`partes review (“IPR”) of claims 1—22 ofU.S. Patent No. 11,693,685 B2
`
`(Ex. 1001, “the 685 patent”). Paper 2 (“‘Pet.”). Patent Owner, Orca
`
`Security Ltd. (“Orca”), filed a Preliminary Response. Paper6 (“‘Prelim.
`
`Resp.”). Based on the authority delegated to us by the Director under
`
`37 C.F.R. § 42.4(a), we maynot institute an IPR unless the information
`
`presented in the Petition and any preliminary response thereto shows“there
`
`is a reasonablelikelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a). Taking
`
`into account Orca’s Preliminary Response, we conclude that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Wiz would prevail in demonstrating at least one of claims 1—22 ofthe 685
`
`patent is unpatentable. Pursuant to § 314, we herebyinstitute an IPR as to
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`these claims ofthe ’685 patent.
`
`A. Real Party in Interest (“RPI”)
`
`Wiz identifies itselfas an RPI. Pet. 1. Orca identifies itselfas an RPI.
`
`Paper 3 (Orca’s Mandatory Notices), 1.
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`B. RelatedMatters
`
`The parties indicate that the 685 patent is the subject ofa district
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`court case titled Orca Security Ltd. v. Wiz, Inc., No. 1:23-cv-00758(D. Del.
`
`filed July 12, 2023) (“Delaware Action”). Pet. 2; Paper 3,1. In addition to
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`this Petition, Wiz filed another petition challenging a related patent owned
`
`by Orca in a proceeding titled Wiz, Inc. v. Orca Security Ltd. , [PR2024-
`
`00220, Paper 2 (PTAB Jan. 8, 2024) (challenging claims 1—7, 9-17, and 19
`
`of U.S. Patent No. 11,431,735 B2 (“the ’735 patent”)). Pet.2. In IPR2024-
`
`2
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`00220, the Board denied institution because Orca disclaimed all the
`
`challenged claims ofthe *735 patent. Wiz, Inc. v. Orca Security Ltd. ,
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`IPR2024-00220, Paper 7 (PTAB May9, 2024) (Decision Denying
`
`Institution). We also note that Wiz filed the following four other petitions
`
`challenging related patents owned by Orca: (1) Wiz, Inc. v. Orca Security
`
`Ltd. , [PR2024-00863, Paper 2 (PTAB May24, 2024) (challenging claims 1—
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`16 of U.S. Patent No. 11,663,031 B2); (2) Wiz, Inc. v. Orca Security Ltd. ,
`
`IPR2024-00864, Paper 2 (PTAB May 24, 2024) (challenging claims 1—25 of
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`U.S. Patent No. 11,663,032 B2); (3) Wiz, Inc. v. Orca Security Ltd. ,
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`IPR2024-01190, Paper 2 (PTAB July 31, 2024) (challenging claims 1—15 of
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`U.S. Patent No. 11,740,926 B2); and (4) Wiz, Inc. v. Orca Security Ltd. ,
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`IPR2024-01191, Paper 2 (PTAB Aug. 7, 2024) (challenging claims 1—28 of
`
`U.S. Patent No. 11,775,326 B2).
`
`C. The ’685 Patent
`
`The 685 patent, titled “Virtual Machine Vulnerabilities and Sensitive
`
`Data Analysis and Detection,” issued from U.S. Patent Application No.
`
`17/361,861, filed on June29, 2021. Ex. 1001, codes (54), (21), (22).
`
`The 685 patent is acontinuation ofU.S. Patent Application No. 16/585 ,967,
`
`whichwasfiled on September 27, 2019—nowthe ’735 patent—andit
`
`claims priority to U.S. Provisional Patent Application No. 62/797,718
`
`(“the 718 application”), which wasfiled on January 28, 2019. Jd. at codes
`
`(63), (60).
`
`The ’685 patent generally relates to “cyber-security systems and, more
`
`specifically, to techniques for securing virtual machines.” Ex. 1001, 1:14—
`
`16. Accordingto the ’685 patent, organizations like Amazon, Microsoft,
`
`and Google “have increasingly adapted their applicationsto be run from
`
`3
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`multiplecloud computing platforms.” /d. at 1:20—23. “Virtualization
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`[plays] a key role in a cloud computing”by “allowing multiple applications
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`and users to share the same cloud computing infrastructure.” /d. at 1:24—26.
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`This is accomplished by using “virtual machines”that “emulate[] a number
`
`of ‘computers’ or instances, all within a single physical device.” /d. at 1:28—
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`30. The 685 patentstates that “virtual machines running on top of
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`virtualization technologies are... vulnerableto some cyberthreats,” but that
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`“[p]rotection of a cloud computing infrastructure, and particularly ofvirtual
`
`machines can be achieved via inspection oftraffic.” Jd. at 1:39—46.
`
`Conventionally,traffic inspection may be accomplishedby “a network
`
`device connected betweenaclient anda server... hosting virtual
`99 ¢¢
`
`machines,”
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`“a network scanner deployed outofpath,”“a traffic monitor that
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`listens to traffic flows betweenclients andthe server,” or by using
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`“vulnerability management and security assessmentsolutions... based on
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`agents installed in each server in acloud computing platform.” /d. at 1:46—
`
`2:14. The ’685 patent, however, explains how there are certain
`
`disadvantages associated with each ofthese conventional waysoftraffic
`
`inspection. See id.
`
`The ’685 patent ostensibly addresses these disadvantages by providing
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`a method, system, and non-transitory computer readable medium for
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`“securing virtual cloud assets in a cloud computing environment against
`
`cyber threats.” Ex. 1001, 2:34—36, 2:45—48, 2:57-59. Figure 1B ofthe ’685
`
`patent, reproduced below,illustrates a network diagram that implements
`
`various embodiments. /d. at 3:11—12.
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`
`
`FAS. 18
`
`Figure 1B illustrates cloud computing platform 110 that includes client
`
`environment 130 with storage 117 containing virtual disk 118-1, server 115
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`hosting virtual machine (“VM”) 119, and security system 140.
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`/d. at 3:32—
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`4:14. “[S]ecurity system 140 is configured to detect vulnerabilities and
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`other cyberthreats related to the execution ofVM 119.” /d. at 4:43-45.
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`Morespecifically, “security system 140 can scan and detect vulnerable
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`software, non-secure configurations, exploitation attempts, compromised
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`assets, data leaks, data mining, and so on,” as well as “provide security
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`services, such as incident response, anti-ransomware, and cyber insurance by
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`accessing the security posture.” /d. at 4:48—S4.
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`D. Challenged Claims
`
`Of the challenged claims, claims 1, 13, and 22 are independent.
`
`Independentclaim 1 is directed to “[a] system for inspecting data,”
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`independent claim 13 is directed to “[a] computer-implemented method for
`
`inspecting data,” and independent claim 22 is directed to “[a] non-transitory
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`computer readable medium storing instructions, which, when executedbyat
`
`least one processor, cause a computing device to” perform certain steps.
`
`Ex. 1001, 9:33—34, 10:26—27, 11:9-11. Claims 2—12 directly or indirectly
`
`depend from independentclaim 1 and claims 14—21 directly or indirectly
`
`depend from independent claim 13.
`
`/d. at 9:55—10:25, 10:48-11:8.
`
`Independentclaim 1 is illustrative ofthe challenged claims and1s
`
`reproduced below.
`
`1. Asystem for inspecting data, the system comprising:at
`least one processor configured to:
`establish an interface between a client environment and
`security components;
`using the interface, utilize cloud computing platform
`[application programminginterfaces (“APIs’)| toidentify virtual
`disks of a virtual machine in the client environment;
`
`use the computing platform APIs to query a location ofat
`least one ofthe identified virtual disks;
`
`receive an identification ofthe location ofthe virtual disks
`of the virtual machine;
`
`generate at least one snapshot of the virtual disks of the
`virtual machine;
`
`analyze the at least one snapshot to detect vulnerabilities
`and sensitive data, wherein analyzing the at least one snapshot
`requires no interaction with the virtual machine;
`determine arisk level of the virtual machine; and
`
`report the detected vulnerabilities and sensitive data as
`alerts, wherein the alerts are filtered and prioritized based on the
`determinedrisk level ofthe virtual machine.
`
`Td. at 9:33—54.
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`FE. AssertedPrior Art References
`
`Wiz relies on the prior art referencesset forth in thetables below.
`
`
`
`Veselov.|US 11,216,563B1 issued Jan 4. 2022; 1007
`
`peeeehteaniay2017
`
`Forum Telfor? (“Huseinovi¢’”).
`
`
`
`filed July 24, 2013
`Hufsmith|US 2020/0097662 A2|published Mar. 26, 2020;|1078
`filed Sept. 28, 2018
`
`filed Oct. 13, 2011
`
`Alvin Huseinovic¢ & Samir Ribié, “Virtual Machine
`Memory Forensics” 2013 21st Telecommunications
`
`F. Asserted Grounds ofUnpatentability
`
`Wiz challenges claims 1—22 ofthe ’685 patent based on the asserted
`
`grounds ofunpatentability set forth in the table below. Pet. 3, 21—71.
`
`' Forclarity and ease ofreference, we only list the first named inventor.
`? To support its argument that Huseinovic qualifies as a printed publication
`that was available publicly at least as ofNovember 2013, Wiz introduces a
`Declaration ofDr. Angelos Stavrou (Ex. 1002 497-100), a Declaration of
`Gordon MacPherson, whois the Director Board Governance & Policy
`Development of The Institute ofElectrical and Electronic Engineers,Inc.
`(“TEEE”) (Ex. 1060), an IEEE Xplore webpagethat presents usage metrics
`for Huseinovic (Ex. 1050), and two other documents confirming that
`Huseinovic¢ wascited in other pre-2019 publications (Exs. 1061, 1062).
`
`7
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`IPR2024-00865
`Patent 11,693,685 B2
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`2, 3,14, 15
`
`103
`
`
`
`Vesely, anh, Cha
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`Veselov, Hufsmith, Chari, Price,
`Huseinovic
`
`Il. ANALYSIS
`
`A. Discretionary DenialArguments Under § 314(a)
`
`In the Petition, Wiz contendsthat the non-exclusivelist of six factors
`
`set forth in Apple Inc. v. Fintiv, Inc. , 1PR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary
`
`Denial) (precedential) do not support exercising our discretion to deny the
`
`Petition under § 314(a). Pet. 6—7. In the Prelimimary Response, Orca
`
`contends that we should exercise ourdiscretion to deny the Petition under
`
`§ 314(a) because “the overall balance ofthe Fintiv factors showsthat
`
`‘efficiency, fairness, and the merits support the exercise of authority to deny
`
`institution.” Prelim. Resp. 52—53 (quoting Fintiv at 6); see also id. at 53-59
`
`(arguing that five ofthe six Fintiv factors favor discretionary denial of
`
`institution). After Orca filed its Preliminary Response, we granted Wiz
`
`authorization to file a stipulation consistent with the stipulation filed in
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`Sotera Wireless, Inc. v. Masimo Corp. , PR2020-01019, Paper 12 (PTAB
`
`Dec. 1, 2020) (Decision Granting Institution) (precedential as to § IT.A).
`
`Ex. 3001; Ex. 1083.
`
`> The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287-88 (2011), amended35 U.S.C. § 103, effective March 16,
`2013. Becausethe 685 patent claims the benefit ofthe ’718 application,
`whichwasfiled after this date, the post-AIA version of § 103 applies.
`Ex. 1001, code (60).
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`It is well settled that institution of an IPR1s discretionary. Harmonic
`
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [U.S.
`
`Patent and Trademark Office] is permitted, but never compelled, to institute
`
`an IPR proceeding.”); 35 U.S.C. § 314(a) (‘The Director may not authorize
`
`an [IPR] to be instituted unless the Director determinesthat the information
`
`presented in the petition filed under section 311 and any responsefiled
`
`undersection 313 showsthat there is a reasonable likelihood that the
`
`petitioner would prevail with respectto at least 1 ofthe claims challenged in
`
`the petition.” (emphasis added)). In Fintiv, the Board discussed potential
`
`applications ofNHK Spring Co. v. Intri-Plex Techs., Inc. ,1PR2018-00752,
`
`Paper 8 (PTAB Sept. 12, 2018) (Decision Denying Institution)
`
`(precedential), as well as a numberof other cases dealing with discretionary
`
`denial under § 314(a). Fintiv identifies a non-exclusive list of six factors
`
`parties may consider addressing, particularly wherethere is a related district
`
`court case involving the same patent and whether such a case provides any
`
`basis for discretionary denial. Fintiv at 5-16. Those factors include the
`
`following:
`
`1. whether the court granted a stay or evidence exists that one
`may be grantedif a proceeding1s instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadlinefor a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap betweenissuesraised in the petition and in the parallel
`proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`9
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Id. at 5-6.
`
`On June 21, 2022, the Director issued interim guidance in the form of
`
`a memo thatfurther clarifies how we should approach analyzing the Fintiv
`
`factors. See Interim Procedure for Discretionary Denials in AIA Post-grant
`
`Proceedings with Parallel District Court Litigation, available at
`
`https://www.uspto.gov/sites/default/files/documents/intermprocdiscretion
`
`arydenialsaiaparalleldistrictcourtlitigationmemo20220621pdf.
`
`Notably, the Director stated that “the [Patent Trial and Appeal Board
`
`(‘PTAB’)] will not discretionarily deny institution in view ofparallel district
`
`court litigation wherea petitioner presents a stipulation not to pursue in a
`
`parallel proceeding the same groundsor any groundthat could have been
`
`reasonably raised before the PTAB.” /d. With this interim guidance in
`
`mind, we decline to exercise our discretion to deny institution ofthis
`
`proceeding underFintiv because Wizfiled a Sofera stipulation. Ex. 1083.
`
`B. Discretionary DenialArguments Under 35 U.S.C. § 325(d)
`
`In the Petition, Wiz contendsthat discretionary denial “is not
`
`appropriate under § 325(d).” Pet. 7. In the Preliminary Response, Orca
`
`contends we should exercise our discretion to deny the Petition under
`
`§ 325(d). Prelim. Resp. 60-62.
`
`1. § 325(d) Analysis
`
`Wehavethe authority to deny a petition when “the same or
`
`substantially the same prior art or arguments previously were presented”in
`
`another proceeding before the Office. 35 U.S.C. §325(d). A determination
`
`10
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
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`as to “[w]hether to denyinstitution oftrial on the basis of 35 U.S.C. § 325(d)
`
`is a fact-dependent decision.” Consolidated Trial Practice Guide at 62.4
`
`The question ofwhethera petition presents art or argumentsthat are
`
`“the same or substantially the same”as art or arguments previously
`
`presented to the Office may be resolved by referenceto the factors set forth
`
`in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`
`Paper 8 (PTAB Dec. 15, 2017) (Decision GrantingInstitution) (precedential
`
`as to § III.C.5, first paragraph). The precedential section ofthat decision
`
`sets forth the following factors for consideration:
`
`(a) the similarities and material differences between the
`asserted art and the prior art involved during exam ination;
`(b) the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`(c) the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection;
`(d) the extent of the overlap between the arguments made
`during examination and the mannerin whichPetitionerrelies on
`the prior art or Patent Ownerdistinguishesthe priorart;
`(ec) whether Petitioner has pointed out sufficiently how the
`Examinererredin its evaluation ofthe asserted prior art; and
`(f) the extent to which additional evidence andfacts presented
`in the Petition warrant reconsideration of the prior art or
`arguments.
`Becton, Dickinson at 17-18. Factors (a), (b), and (d) provide guidance as to
`
`whetherthe art or arguments presentedin the petition are the sameor
`
`substantially the same as those previously presented to the Office, whereas
`
`factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a
`
`‘Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
`
`11
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`material error by the Office”in its prior consideration of suchart or
`
`arguments. AdvancedBionics, LLC v. Med-El Elektromedizinische Gerdite
`
`GmbH, IPR2019-01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (Decision
`
`Denying Institution) (precedential). “At bottom, this [two-part] framework
`
`reflects acommitmentto defer to previous Office evaluations ofthe
`
`evidence of record unless material error 1s shown.” /d. at 9.
`
`a. Becton, Dickinson (a), (b), and (d)
`
`In the Petition, Wiz contendsthat, although “Veselov wasdisclosed as
`
`one of many references across multiple information disclosure statements
`
`..., It was neverapplied in a rejection or substantively discussed” by the
`
`Examinerduring prosecution ofthe 685 patent. Pet. 7 (citing Ex. 1004
`
`(prosecution history ofthe °685 patent), 57, 104-105, 190-191, 364—368°).
`
`Wiz arguesthat “Veselov wasalso never considered in combination with
`
`Hufsmith, Chari, or Huseinovié,” nor did the Examinerconsider“additional
`
`evidence discussedherein, including the declaration provided by Wiz’s
`
`expert, Dr. [Angelos] Stavrou.” /d. at 7-8 (citing Ex. 1002). Inthe
`
`Preliminary Response, Orca contendsthat “[W1z] concedesthat its primary
`
`prior art reference for every ground—Veselov—wasdisclosedto the...
`
`Office during the °685 patent’s prosecution and considered by the
`
`Examiner.” Prelim. Resp. 60 (citing Pet. 7; Ex. 1004, 57, 104). Orca argues
`
`that, even though Veselov was not considered in combination with
`
`Hufsmith, Chari, or Huseinovic¢, nor did the Examiner have the benefit of
`
`> All references to the page numbersin the prosecution history ofthe °685
`patent refer to the page numbersinserted by Wiz in the bottom,right-hand
`corner of each page in Exhibit 1004.
`
`12
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`

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`IPR2024-00865
`Patent 11,693,685 B2
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`Dr. Stavrou’s testimony, Wiz cannot “circumvent § 325(d) by raising any
`
`new combination or submitting an expert declaration” otherwisethis “statute
`
`would be rendered meaningless.” /d. at 61 (citing Pet. 7).
`
`The parties do not dispute that Veselov is the only reference that serves
`
`as the basis ofWiz’s asserted obviousness grounds that was considered by
`
`the Examinerduring prosecution ofthe °685 patent. See Ex. 1004, 57, 104.
`
`The Examiner, however, did not meaningfully address Veselov during
`
`prosecution ofthe ’685 patent. Stated differently, with respect to factor (a),
`
`the Examinerdid not apply the teachings ofVeselovto teach or suggest the
`
`limitations ofthe originally presented claims ofthe ’685 patent, nor did the
`
`Examiner apply the teachings ofVeselov to accountfor language that was
`
`added via amendmentduring prosecution. It is undisputed that the other
`
`four referencesthat serve as the basis ofWiz’s asserted obviousness grounds
`
`(i.e., Hufsmith, Chari, Price, and Huseinovic) were not considered by the
`
`Examinerduring prosecution ofthe °685 patent. Nor did the Examiner have
`
`the benefit ofDr. Stavrou’s testimony regarding the teachingsofall five
`
`references. Orca’s arguments do not appearto implicate factors (b) and (d),
`
`so we decline to engage in a substantive analysis ofthesetwo factors based
`
`on the record before us. Accordingly, we are not persuaded by Orca’s
`
`argumentsthat the Petition presents substantially the same art and arguments
`
`that were considered previously by the Examiner during prosecution ofthe
`
`°685 patent.
`
`13
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`

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`IPR2024-00865
`Patent 11,693,685 B2
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`b. Becton, Dickinson (c), (e), and (f)
`
`AdvancedBionics further informs our evaluation of factors(c), (e), and
`
`(f). Advance Bionics indicatesthat satisfying thefirst part ofthe framework
`
`is a pre-requisite to reaching the second part ofthe framework. See
`
`AdvancedBionics at 8, 10. As we explain above, we determine that the
`
`Petition does not present the same or substantially the same art or arguments
`
`that was presented previously to the Office. Asa result, we need not reach
`
`whether Wiz has demonstrated that the Office erred in a manner material to
`
`the patentability ofthe challenged claims ofthe 685 patent.
`
`2. Summary
`
`After weighing the Becton, Dickinson factors, we concludethat, on
`
`balance, the circumstances presented here do not warrantus exercising our
`
`discretion to denyinstitution under § 325(d). Although the obviousness
`
`groundsraisedin the Petition are based, at least in part, on Veselov, this
`
`reference was not meaningfully addressed by the Examiner during
`
`prosecution ofthe ’685 patent. In addition, the remaining references
`
`(i.e., Hufsmith, Chari, Price, and Huseinovic) were not considered by the
`
`Examinerduring prosecution ofthe °685 patent. Asaresult, we declineto
`
`exercise ourdiscretion to deny institution under § 325(d).
`
`C. Claim Construction
`
`In this IPR, claim termsare construed using the same claim
`
`construction standard as in a civil action under 35 U.S.C. § 282(b). See
`
`37 C.F.R. § 42.100(b). That is, claim terms generally are construed in
`
`accordance with their ordinary and customary meaning, as would have been
`
`understood by a person ofordinary skill in the art, in view ofthe
`
`specification and the prosecution history pertaining to the patentat issue.
`
`14
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`See id. The ordinary and customary meaning of aclaim term “is its meaning
`
`to the ordinary artisan after reading the entire patent” “as ofthe effective
`
`filing date ofthe patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
`
`1313, 1321 (Fed. Cir. 2005) (en banc).
`
`In the Petition, Wiz proposesthat two claim terms require construction.
`
`See Pet. 9-11. First, Wiz contends that each of independent claims 1, 13,
`
`and 22 require querying a “location”of at least one ofthe identified virtual
`
`disks, anda person ofordinary skill in the art reading these claimsin light of
`
`the specification ofthe °685 would have understood that the claim term
`99 ¢¢
`
`“location”
`
`“encompassesatleast a virtual location anda non-virtual
`
`location.” /d. at 9-10. To support its proposed construction, Wiz directs us
`
`to the specification ofthe 685 patent and the supporting testimonyofits
`
`declarant, Dr. Stavrou. /d. at 9-10 (citing Ex. 1001, 4:27—30; Ex. 1002
`
`49 30, 45, 46, 78-80).
`
`Second, Wiz contendsthat each of independent claims 1, 13, and 22
`
`require “[analyze/analyzing| the at least one snapshot.” Pet. 10. According
`
`to Wiz, the ordinary and customary meaningofthis claim term
`
`“encompassesdirect analysis ofthe snapshot data (e.g., analyzing the
`
`snapshot as a data file without instantiating an assessment VM).” /d.
`
`To support its proposed construction, Wiz directs usto the specification of
`
`the °685 patent and the supporting testimony of its declarant, Dr. Stavrou.
`
`Id. (citing Ex. 1001, 5:19—20, 5:36—-39, 6:4-11, 6:35—58; Ex. 1002 94 81—
`
`84). Inthe Delaware Action, Wiz notes that “Orca appearsto treat this
`
`limitation as also encompassing analysis of a VM instantiated from a
`
`snapshot.” /d. at 9-10 (citing Ex. 1006 (Second Amended Complaint For
`
`Patent Infringement), 23, 57-58). For purposesofthis proceeding, Wiz also
`
`15
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`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`proposes applying Orca’s interpretation in the Delaware Action. /d. at 10
`
`(citing Ex. 1002 4 83). Accordingly, Wiz argues that we should construe the
`
`claim term “[analyze/analyzing]the at least one snapshot”as “encompassing
`
`both direct analysis ofthe snapshot data and analysis of a VM instantiated
`
`from the snapshot.” /d. (citing Ex. 1002 4 84).
`
`In the Preliminary Response, Orca disagrees with Wiz that the claim
`
`term “[analyze/analyzing] the at least one snapshot” shouldbe construed as
`
`“encompassing both direct analysis ofthe snapshotdata and analysis of a
`
`VM instantiated from the snapshot.” Prelim. Resp. 10 (citing Pet. 10-11).
`
`According to Orca,“[n]othing in [its] amended complaint alleges, states, or
`
`otherwise indicates that analyzing a VM instantiated from a snapshotis
`
`‘analyzing [a] snapshot’ as claimed.” /d. at 10—11 (citing Ex. 1006, 23, 57—
`
`58) (third alteration in original). Instead, Orca arguesthat, “[o]nce a VM is
`
`instantiated from a snapshot, for example, when a duplicate VM is
`
`instantiated from a snapshotfor subsequent monitoring, the instantiated VM
`
`is not a ‘snapshot,’ and monitoring or assessing it is not ‘analyzing’ a
`
`‘snapshot’ as claimed.” /d. at 11. To support its position, Orca directs us to
`
`the specification ofthe °685 patent, the purported lack of explanation in the
`
`testimony from Wiz’s declarant, Dr. Stavrou, andthe testimony of Orca’s
`
`declarant, Dr. David Kaeli.
`
`/d. (citing Ex. 1001, 4:58—59; Ex. 1002 4 83;
`
`Ex. 2001 (Declaration ofDr. David Kaeli in Support ofPatent Owner’s
`
`Preliminary Response) 4 28-30).
`
`Based on the preliminary record, the only claim term that requires
`
`construction is “[analyze/analyzing] the at least one snapshot,” and only to
`
`the extent necessary to resolve the controversy betweenthe parties. See
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. , 868 F.3d 1013,
`
`16
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`1017 (Fed. Cir. 2017) (noting that “we need only construe terms‘that are in
`
`controversy, and only to the extent necessary to resolve the controversy’”
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc. , 200 F.3d 795, 803
`
`(Fed. Cir. 1999))). We understand Wiz to propose a construction for the
`
`claim term “[analyze/analyzing]the at least one snapshot”that encompasses
`
`the following two alternative approaches: (1) “direct analysis ofthe
`
`snapshot data’; and (2) “analysis ofa VM instantiated from the snapshot.”
`
`See Pet. 10-11. Orca disputes the latter approach, but not the former
`
`approach. See Prelim. Resp. 10-11.
`
`With this in mind, and for purposesofinstitution, we preliminarily
`
`agree that the claim term “[analyze/analyzing| the at least one snapshot”
`
`encompasses“direct analysis ofthe snapshot data.” This construction finds
`
`support in the specification ofthe °685 patent.° See, e.g., Ex. 1001, 5:19-20
`
`(“The snapshot is parsed and analyzed by the security system 140 to detect
`
`vulnerabilities.”), 5:36—39 (Further, the security system 140 maybe
`
`configured to match the applicationfiles, either directly (using binary
`
`comparison) or by computing a cryptographic hash against [a] database of
`
`files in vulnerable applications.”). Because, as we explain below, Wiz’s
`
`obviousnessanalysisis sufficient underthis first approach, we take no
`
`position on the second alternative approach in Wiz’s proposed construction.
`
`° At this stage ofthe proceeding, we do not makeafinding oflexicography
`or disclaimer. Nor do we determine that “[analyze/analyzing] at least one
`snapshot”is necessarily limited to “direct analysis ofthe snapshot data.”
`
`17
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`D. Obviousness Over the Combined Teachings of
`Veselov andHufsmith
`Wiz contendsthat claims 1—22 ofthe ’685 patent are unpatentable
`
`under 35 U.S.C. § 103 as obvious over the combined teachings ofVeselov
`
`and Hufsmith. Pet. 21-59. Wiz contends that the combinedteachings of
`
`Veselov and Hufsmith accountfor the subject matter of each challenged
`
`claim, and provides reasoning as to whya person ofordinary skill in the art
`
`would have been prompted to modify the teachings ofthesereferences. /d.
`
`Wiz submits the Declaration ofDr. Stavrou to support its positions.
`
`See Ex. 1002.
`
`Based on the preliminary record, we determine that Wiz has shown
`
`that there is a reasonable likelihood that it would prevail in demonstrating at
`
`least one of claims 1—22 ofthe °685 patent is unpatentable. We begin our
`
`analysis with the principles of law that generally apply to an asserted ground
`
`based on obviousness, then we assess the level of skill in the art, next we
`
`provide overviews ofVeselov and Hufsmith, and then we address the
`
`parties’ contentions with respect to independentclaims 1, 13, and 22.
`
`1. Principles ofLaw
`
`A claim is unpatentable under § 103 if the differences between the
`
`claimed subject matter andthe prior art are such that the subject matter, as a
`
`whole, “would have been obviousat thetime the invention was made toa
`
`person having ordinary skill in the art to which said subject matter pertains.”
`
`KSR Int’! Co. v. Teleflex Inc. , 550 U.S. 398, 406 (2007). The question of
`
`obviousness1s resolved on the basis ofunderlying factual determinations,
`
`including (1) the scope and contentofthe priorart; (2) any differences
`
`between the claimed subject matter andthepriorart; (3) the level of skill in
`
`18
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`the art; and (4) when in evidence, objective indicia of obviousnessor non-
`
`obviousness(i.e., secondary considerations, such as commercial success,
`
`long-felt but unsolved needs,failure ofothers, etc.).’ Graham v. John Deere
`
`Co. ofKansas City, 383 U.S. 1, 17-18 (1966). We analyze the asserted
`
`groundsbased on obviousnesswith the principles we identify above in mind.
`
`2. Level ofSkill in the Art
`
`In determining whether an invention would have been obviousat the
`
`time it was made, we considerthe level of ordinary skill in the pertinentart
`
`at the time ofthe invention. Graham, 383 U.S. at 17. “The importance of
`
`resolving the level of ordinary skill in the art lies in thenecessity of
`
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co.v.
`
`Nu-Star, Inc. ,950 F.2d 714, 718 (Fed. Cir. 1991). The “person having
`
`ordinary skill in the art” is a hypothetical construct, from whose vantage
`
`point obviousnessis assessed. /n re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`
`1998).
`
`Factors pertinent to a determination ofthe level of ordinary skill in the
`
`art include “(1) the educational level ofthe inventor; (2) type ofproblems
`
`encounteredin the art; (3) prior art solutions to those problems; (4) rapidity
`
`with which innovations are made; (5) sophistication ofthe technology; and
`
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`
`Union Oil Co. ofCal. , 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic
`
`Equip. Co. v. All Orthopedic Appliances, Inc. ,707 F.2d 1376, 1381—82 (Fed.
`
`Cir. 1983)). “Not all such factors may be present in every case, and one or
`
`’ At this stage in the proceeding, Orca does not present arguments or
`evidence of secondary considerations. See Prelim. Resp.
`
`19
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`more ofthese or other factors may predominate in a particular case.” /d. at
`
`696-97.
`
`For purposesofinstitution, there 1s sufficient evidence in the record
`
`that enables us to determine the knowledgelevel ofa person ofordinary skill
`
`in the art. Relying on thetestimony ofDr. Stavrou, Wiz arguesthe
`
`following:
`
`[a person of ordinary skill in the art] as of January 2019 would
`have held at least a bachelor’s degree in computer science,
`computer engineering, electrical engineering,or a relatedfield,
`and would also have 2-3 years of professional experience
`working with cyber
`security analysis and virtualization.
`Additional experience could compensate for less education and
`vice versa. Relevant work experience includes, for example,
`malware analysis, security analysis of cloud computing systems,
`and security analysis ofvirtual machines.
`Pet. 8 (citing Ex. 1002 4921, 22).
`
`Orca offers essentially the same assessmentofthe level of skill in the
`
`art as Wiz, arguing the following:
`
`[a person of ordinary skill in the art] as of the °685 patent’s
`earliest priority date (January 28, 2019), would have hadatleast
`a Bachelor’s degree in computer science, computer engineering,
`or a related field, and two years of industry experience or
`academic
`research experience
`in
`cyber
`security and
`virtualization,
`including cloud computing cybersecurity.
`Additional education can compensate for less experience and
`vice-versa.
`
`Prelim. Resp. 9-10 (citing Ex. 2001 49 1-12, 19-26).
`
`Wedonot discern a material difference between the assessments of
`
`the level of skill in the art advanced by either party, nor does either party
`
`premise its arguments exclusively on itsown assessment. For purposes of
`
`institution, we adopt Wiz’s assessment, except that we delete the qualifier
`
`20
`
`

`

`IPR2024-00865
`Patent 11,693,685 B2
`
`“at least” to eliminate vagueness asto the appropriate level of education.
`
`The qualifier expands the range withoutan upper bound(1.e., encompassing
`
`a Ph.D. degree and beyond), and does not meaningfully indicate the level of
`
`skill in the art. Wiz’s assessment—without the qualifier—is supported by
`
`the testimonyofDr. Stavrou andit is consistent with the °685 patent andthe
`
`asserted prior art. We note, however, that our obviousness analysis would
`
`be the same unde

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