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`Trials@uspto.gov
`571-272-7822
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`Date: December 9, 2024
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`
`
`
`
`
`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 of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`#: 5742
` Paper 8
`Trials@uspto.gov
`571-272-7822
`
`Date: December 9, 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 of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
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`I. INTRODUCTION
`Petitioner, Wiz, Inc. (“Wiz”), filed a Petition requesting an inter
`partes review (“IPR”) of claims 1–22 of U.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. Paper 6 (“Prelim.
`Resp.”). Based on the authority delegated to us by the Director under
`37 C.F.R. § 42.4(a), we may not institute an IPR unless the information
`presented in the Petition and any preliminary response thereto shows “there
`is a reasonable likelihood 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 of the ’685
`patent is unpatentable. Pursuant to § 314, we hereby institute an IPR as to
`these claims of the ’685 patent.
`A. Real Party in Interest (“RPI”)
`Wiz identifies itself as an RPI. Pet. 1. Orca identifies itself as an RPI.
`Paper 3 (Orca’s Mandatory Notices), 1.
`B. Related Matters
`The parties indicate that the ’685 patent is the subject of a district
`
`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
`this Petition, Wiz filed another petition challenging a related patent owned
`by Orca in a proceeding titled Wiz, Inc. v. Orca Security Ltd., IPR2024-
`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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`00220, the Board denied institution because Orca disclaimed all the
`challenged claims of the ’735 patent. Wiz, Inc. v. Orca Security Ltd.,
`IPR2024-00220, Paper 7 (PTAB May 9, 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., IPR2024-00863, Paper 2 (PTAB May 24, 2024) (challenging claims 1–
`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
`U.S. Patent No. 11,663,032 B2); (3) Wiz, Inc. v. Orca Security Ltd.,
`IPR2024-01190, Paper 2 (PTAB July 31, 2024) (challenging claims 1–15 of
`U.S. Patent No. 11,740,926 B2); and (4) Wiz, Inc. v. Orca Security Ltd.,
`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 June 29, 2021. Ex. 1001, codes (54), (21), (22).
`The ’685 patent is a continuation of U.S. Patent Application No. 16/585,967,
`which was filed on September 27, 2019—now the ’735 patent—and it
`claims priority to U.S. Provisional Patent Application No. 62/797,718
`(“the ’718 application”), which was filed on January 28, 2019. Id. 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. According to the ’685 patent, organizations like Amazon, Microsoft,
`and Google “have increasingly adapted their applications to be run from
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`multiple cloud computing platforms.” Id. at 1:20–23. “Virtualization
`[plays] a key role in a cloud computing” by “allowing multiple applications
`and users to share the same cloud computing infrastructure.” Id. at 1:24–26.
`This is accomplished by using “virtual machines” that “emulate[] a number
`of ‘computers’ or instances, all within a single physical device.” Id. at 1:28–
`30. The ’685 patent states that “virtual machines running on top of
`virtualization technologies are . . . vulnerable to some cyber threats,” but that
`“[p]rotection of a cloud computing infrastructure, and particularly of virtual
`machines can be achieved via inspection of traffic.” Id. at 1:39–46.
`Conventionally, traffic inspection may be accomplished by “a network
`device connected between a client and a server . . . hosting virtual
`machines,” “a network scanner deployed out of path,” “a traffic monitor that
`listens to traffic flows between clients and the server,” or by using
`“vulnerability management and security assessment solutions . . . based on
`agents installed in each server in a cloud computing platform.” Id. at 1:46–
`2:14. The ’685 patent, however, explains how there are certain
`disadvantages associated with each of these conventional ways of traffic
`inspection. See id.
`The ’685 patent ostensibly addresses these disadvantages by providing
`a method, system, and non-transitory computer readable medium for
`“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 of the ’685
`patent, reproduced below, illustrates a network diagram that implements
`various embodiments. Id. at 3:11–12.
`
`4
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`Figure 1B illustrates cloud computing platform 110 that includes client
`environment 130 with storage 117 containing virtual disk 118-1, server 115
`hosting virtual machine (“VM”) 119, and security system 140. Id. at 3:32–
`4:14. “[S]ecurity system 140 is configured to detect vulnerabilities and
`other cyber threats related to the execution of VM 119.” Id. at 4:43–45.
`More specifically, “security system 140 can scan and detect vulnerable
`software, non-secure configurations, exploitation attempts, compromised
`assets, data leaks, data mining, and so on,” as well as “provide security
`services, such as incident response, anti-ransomware, and cyber insurance by
`accessing the security posture.” Id. at 4:48–54.
`D. Challenged Claims
`Of the challenged claims, claims 1, 13, and 22 are independent.
`Independent claim 1 is directed to “[a] system for inspecting data,”
`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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`computer readable medium storing instructions, which, when executed by at
`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 independent claim 1 and claims 14–21 directly or indirectly
`depend from independent claim 13. Id. at 9:55–10:25, 10:48–11:8.
`Independent claim 1 is illustrative of the challenged claims and is
`reproduced below.
`1. A system 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 programming interfaces (‘APIs’)] to identify virtual
`disks of a virtual machine in the client environment;
`use the computing platform APIs to query a location of at
`least one of the identified virtual disks;
`receive an identification of the location of the 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 a risk 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
`determined risk level of the virtual machine.
`Id. at 9:33–54.
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`E. Asserted Prior Art References
`Wiz relies on the prior art references set forth in the tables below.
`Name1
`Reference
`Dates
`Exhibit
`No.
`1007
`
`Veselov US 11,216,563 B1
`
`issued Jan 4. 2022;
`filed May 19, 2017
`US 2013/0247133 A1 published Sept. 19, 2013;
`filed Oct. 13, 2011
`US 2015/0033221 A1 published Jan. 29, 2015;
`filed July 24, 2013
`Hufsmith US 2020/0097662 A2 published Mar. 26, 2020;
`filed Sept. 28, 2018
`Printed Publication
`Alvin Huseinović & Samir Ribić, “Virtual Machine
`Memory Forensics” 2013 21st Telecommunications
`Forum Telfor2 (“Huseinović”).
`
`Price
`
`Chari
`
`
`
`1048
`
`1056
`
`1078
`
`Exhibit No.
`1049
`
`
`
`F. Asserted Grounds of Unpatentability
`Wiz challenges claims 1–22 of the ’685 patent based on the asserted
`grounds of unpatentability set forth in the table below. Pet. 3, 21–71.
`
`
`1 For clarity and ease of reference, we only list the first named inventor.
`2 To support its argument that Huseinović qualifies as a printed publication
`that was available publicly at least as of November 2013, Wiz introduces a
`Declaration of Dr. Angelos Stavrou (Ex. 1002 ¶¶ 97–100), a Declaration of
`Gordon MacPherson, who is the Director Board Governance & Policy
`Development of The Institute of Electrical and Electronic Engineers, Inc.
`(“IEEE”) (Ex. 1060), an IEEE Xplore webpage that presents usage metrics
`for Huseinović (Ex. 1050), and two other documents confirming that
`Huseinović was cited in other pre-2019 publications (Exs. 1061, 1062).
`
`7
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`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–22
`1033
`Veselov, Hufsmith
`1–22
`103
`Veselov, Hufsmith, Chari
`2, 3, 14, 15
`103
`Veselov, Hufsmith, Chari, Price,
`Huseinović
`II. ANALYSIS
`A. Discretionary Denial Arguments Under § 314(a)
`In the Petition, Wiz contends that the non-exclusive list of six factors
`set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, 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 Preliminary Response, Orca
`contends that we should exercise our discretion to deny the Petition under
`§ 314(a) because “the overall balance of the Fintiv factors shows that
`‘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 of the 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
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
`Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).
`Ex. 3001; Ex. 1083.
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’685 patent claims the benefit of the ’718 application,
`which was filed after this date, the post-AIA version of § 103 applies.
`Ex. 1001, code (60).
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`It is well settled that institution of an IPR is 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 determines that the information
`presented in the petition filed under section 311 and any response filed
`under section 313 shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” (emphasis added)). In Fintiv, the Board discussed potential
`applications of NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (Decision Denying Institution)
`(precedential), as well as a number of other cases dealing with discretionary
`denial under § 314(a). Fintiv identifies a non-exclusive list of six factors
`parties may consider addressing, particularly where there 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 granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
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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 that further 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/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf.
`Notably, the Director stated that “the [Patent Trial and Appeal Board
`(‘PTAB’)] will not discretionarily deny institution in view of parallel district
`court litigation where a petitioner presents a stipulation not to pursue in a
`parallel proceeding the same grounds or any ground that could have been
`reasonably raised before the PTAB.” Id. With this interim guidance in
`mind, we decline to exercise our discretion to deny institution of this
`proceeding under Fintiv because Wiz filed a Sotera stipulation. Ex. 1083.
`B. Discretionary Denial Arguments Under 35 U.S.C. § 325(d)
`In the Petition, Wiz contends that 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
`We have the 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
`
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`as to “[w]hether to deny institution of trial on the basis of 35 U.S.C. § 325(d)
`is a fact-dependent decision.” Consolidated Trial Practice Guide at 62. 4
`The question of whether a petition presents art or arguments that are
`“the same or substantially the same” as art or arguments previously
`presented to the Office may be resolved by reference to the factors set forth
`in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8 (PTAB Dec. 15, 2017) (Decision Granting Institution) (precedential
`as to § III.C.5, first paragraph). The precedential section of that decision
`sets forth the following factors for consideration:
`(a) the similarities and material differences between the
`asserted art and the prior art involved during examination;
`(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 manner in which Petitioner relies on
`the prior art or Patent Owner distinguishes the prior art;
`(e) whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art; and
`(f) the extent to which additional evidence and facts 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
`whether the art or arguments presented in the petition are the same or
`substantially the same as those previously presented to the Office, whereas
`factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a
`
`
`
`4Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf
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`material error by the Office” in its prior consideration of such art or
`arguments. Advanced Bionics, LLC v. Med-El Elektromedizinische Gerӓte
`GmbH, IPR2019-01469, Paper 6 at 10 (PTAB Feb. 13, 2020) (Decision
`Denying Institution) (precedential). “At bottom, this [two-part] framework
`reflects a commitment to defer to previous Office evaluations of the
`evidence of record unless material error is shown.” Id. at 9.
`a. Becton, Dickinson (a), (b), and (d)
`In the Petition, Wiz contends that, although “Veselov was disclosed as
`one of many references across multiple information disclosure statements
`. . . , it was never applied in a rejection or substantively discussed” by the
`Examiner during prosecution of the ’685 patent. Pet. 7 (citing Ex. 1004
`(prosecution history of the ’685 patent), 57, 104–105, 190–191, 364–3685).
`Wiz argues that “Veselov was also never considered in combination with
`Hufsmith, Chari, or Huseinović,” nor did the Examiner consider “additional
`evidence discussed herein, including the declaration provided by Wiz’s
`expert, Dr. [Angelos] Stavrou.” Id. at 7–8 (citing Ex. 1002). In the
`Preliminary Response, Orca contends that “[Wiz] concedes that its primary
`prior art reference for every ground—Veselov—was disclosed to 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 Huseinović, nor did the Examiner have the benefit of
`
`
`5 All references to the page numbers in the prosecution history of the ’685
`patent refer to the page numbers inserted by Wiz in the bottom, right-hand
`corner of each page in Exhibit 1004.
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`Dr. Stavrou’s testimony, Wiz cannot “circumvent § 325(d) by raising any
`new combination or submitting an expert declaration” otherwise this “statute
`would be rendered meaningless.” Id. at 61 (citing Pet. 7).
`The parties do not dispute that Veselov is the only reference that serves
`as the basis of Wiz’s asserted obviousness grounds that was considered by
`the Examiner during prosecution of the ’685 patent. See Ex. 1004, 57, 104.
`The Examiner, however, did not meaningfully address Veselov during
`prosecution of the ’685 patent. Stated differently, with respect to factor (a),
`the Examiner did not apply the teachings of Veselov to teach or suggest the
`limitations of the originally presented claims of the ’685 patent, nor did the
`Examiner apply the teachings of Veselov to account for language that was
`added via amendment during prosecution. It is undisputed that the other
`four references that serve as the basis of Wiz’s asserted obviousness grounds
`(i.e., Hufsmith, Chari, Price, and Huseinović) were not considered by the
`Examiner during prosecution of the ’685 patent. Nor did the Examiner have
`the benefit of Dr. Stavrou’s testimony regarding the teachings of all five
`references. Orca’s arguments do not appear to implicate factors (b) and (d),
`so we decline to engage in a substantive analysis of these two factors based
`on the record before us. Accordingly, we are not persuaded by Orca’s
`arguments that the Petition presents substantially the same art and arguments
`that were considered previously by the Examiner during prosecution of the
`’685 patent.
`
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`b. Becton, Dickinson (c), (e), and (f)
`Advanced Bionics further informs our evaluation of factors (c), (e), and
`(f). Advance Bionics indicates that satisfying the first part of the framework
`is a pre-requisite to reaching the second part of the framework. See
`Advanced Bionics 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. As a result, we need not reach
`whether Wiz has demonstrated that the Office erred in a manner material to
`the patentability of the challenged claims of the ’685 patent.
`2. Summary
`After weighing the Becton, Dickinson factors, we conclude that, on
`balance, the circumstances presented here do not warrant us exercising our
`discretion to deny institution under § 325(d). Although the obviousness
`grounds raised in the Petition are based, at least in part, on Veselov, this
`reference was not meaningfully addressed by the Examiner during
`prosecution of the ’685 patent. In addition, the remaining references
`(i.e., Hufsmith, Chari, Price, and Huseinović) were not considered by the
`Examiner during prosecution of the ’685 patent. As a result, we decline to
`exercise our discretion to deny institution under § 325(d).
`C. Claim Construction
`In this IPR, claim terms are 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 of ordinary skill in the art, in view of the
`specification and the prosecution history pertaining to the patent at issue.
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`See id. The ordinary and customary meaning of a claim term “is its meaning
`to the ordinary artisan after reading the entire patent” “as of the effective
`filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
`1313, 1321 (Fed. Cir. 2005) (en banc).
`In the Petition, Wiz proposes that 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 of the identified virtual
`disks, and a person of ordinary skill in the art reading these claims in light of
`the specification of the ’685 would have understood that the claim term
`“location” “encompasses at least a virtual location and a non-virtual
`location.” Id. at 9–10. To support its proposed construction, Wiz directs us
`to the specification of the ’685 patent and the supporting testimony of its
`declarant, Dr. Stavrou. Id. at 9–10 (citing Ex. 1001, 4:27–30; Ex. 1002
`¶¶ 30, 45, 46, 78–80).
`Second, Wiz contends that 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 meaning of this claim term
`“encompasses direct analysis of the snapshot data (e.g., analyzing the
`snapshot as a data file without instantiating an assessment VM).” Id.
`To support its proposed construction, Wiz directs us to 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 ¶¶ 81–
`84). In the Delaware Action, Wiz notes that “Orca appears to treat this
`limitation as also encompassing analysis of a VM instantiated from a
`snapshot.” Id. at 9–10 (citing Ex. 1006 (Second Amended Complaint For
`Patent Infringement), 23, 57–58). For purposes of this proceeding, Wiz also
`
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`proposes applying Orca’s interpretation in the Delaware Action. Id. at 10
`(citing Ex. 1002 ¶ 83). Accordingly, Wiz argues that we should construe the
`claim term “[analyze/analyzing] the at least one snapshot” as “encompassing
`both direct analysis of the snapshot data and analysis of a VM instantiated
`from the snapshot.” Id. (citing Ex. 1002 ¶ 84).
`In the Preliminary Response, Orca disagrees with Wiz that the claim
`term “[analyze/analyzing] the at least one snapshot” should be construed as
`“encompassing both direct analysis of the snapshot data 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 snapshot is
`‘analyzing [a] snapshot’ as claimed.” Id. at 10–11 (citing Ex. 1006, 23, 57–
`58) (third alteration in original). Instead, Orca argues that, “[o]nce a VM is
`instantiated from a snapshot, for example, when a duplicate VM is
`instantiated from a snapshot for subsequent monitoring, the instantiated VM
`is not a ‘snapshot,’ and monitoring or assessing it is not ‘analyzing’ a
`‘snapshot’ as claimed.” Id. at 11. To support its position, Orca directs us to
`the specification of the ’685 patent, the purported lack of explanation in the
`testimony from Wiz’s declarant, Dr. Stavrou, and the testimony of Orca’s
`declarant, Dr. David Kaeli. Id. (citing Ex. 1001, 4:58–59; Ex. 1002 ¶ 83;
`Ex. 2001 (Declaration of Dr. David Kaeli in Support of Patent Owner’s
`Preliminary Response) ¶¶ 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 between the parties. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`16
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`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 of the
`snapshot data”; and (2) “analysis of a 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 purposes of institution, we preliminarily
`agree that the claim term “[analyze/analyzing] the at least one snapshot”
`encompasses “direct analysis of the snapshot data.” This construction finds
`support in the specification of the ’685 patent.6 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 may be
`configured to match the application files, 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
`obviousness analysis is sufficient under this first approach, we take no
`position on the second alternative approach in Wiz’s proposed construction.
`
`
`6 At this stage of the proceeding, we do not make a finding of lexicography
`or disclaimer. Nor do we determine that “[analyze/analyzing] at least one
`snapshot” is necessarily limited to “direct analysis of the snapshot data.”
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`D. Obviousness Over the Combined Teachings of
`Veselov and Hufsmith
`Wiz contends that claims 1–22 of the ’685 patent are unpatentable
`under 35 U.S.C. § 103 as obvious over the combined teachings of Veselov
`and Hufsmith. Pet. 21–59. Wiz contends that the combined teachings of
`Veselov and Hufsmith account for the subject matter of each challenged
`claim, and provides reasoning as to why a person of ordinary skill in the art
`would have been prompted to modify the teachings of these references. Id.
`Wiz submits the Declaration of Dr. 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 of the ’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 of Veselov and Hufsmith, and then we address the
`parties’ contentions with respect to independent claims 1, 13, and 22.
`1. Principles of Law
`A claim is unpatentable under § 103 if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, “would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`
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`the art; and (4) when in evidence, objective indicia of obviousness or non-
`obviousness (i.e., secondary considerations, such as commercial success,
`long-felt but unsolved needs, failure of others, etc.).7 Graham v. John Deere
`Co. of Kansas City, 383 U.S. 1, 17–18 (1966). We analyze the asserted
`grounds based on obviousness with the principles we identify above in mind.
`2. Level of Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity 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 obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998).
`Factors pertinent to a determination of the level of ordinary skill in the
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