UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
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`SOPHOS LIMITED AND SOPHOS INC.,
`Petitioners
`
`v.
`
`FORTINET, INC.,
`Patent Owner
`
`U.S. Patent No. 8,205,251
`Filing Date: May 24, 2011
`Issue Date: June 19, 2012
`Title: Policy-Based Content Filtering
`
`
`
`Inter Partes Review No.: IPR2015-00911
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,205,251
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`
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`WEST\261717322.1
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SOPHOS LIMITED AND SOPHOS INC.,
`Petitioners
`
`v.
`
`FORTINET, INC.,
`Patent Owner
`
`U.S. Patent No. 8,205,251
`Filing Date: May 24, 2011
`Issue Date: June 19, 2012
`Title: Policy-Based Content Filtering
`
`
`
`Inter Partes Review No.: IPR2015-00911
`
`
`
`PETITIONER’S REQUEST FOR REHEARING OF
`DECISION DENYING INSTITUTION OF INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,205,251
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`
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`WEST\261717322.1
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`
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`IPR2015-00911
`Request for Rehearing
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`I.
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`
`Introduction
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`Pursuant to 37 CFR §42.71, Sophos Limited and Sophos Inc. (“Petitioner”)
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`respectfully moves for rehearing of the Decision Denying Institution of Inter
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`Partes Review issued on August 24, 2015 (Paper 8)(the “Decision”), as to claims
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`1, 6, 9, 12, 17, 18, 22, 26, 27, 29, 31, and 32 (“challenged claims”) of U.S. Patent
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`No. 8,205,251 (the “’251 patent”) (Ex. 1001).
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`
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`Petitioner submitted its Petition in the above listed matter (“Petition”) on
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`March 20, 2015. The Petition presented four grounds of unpatentability of the
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`challenged claims. The grounds were based on three prior art references: U.S.
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`Patent No. 6,728,885 (“Taylor”) (Ex. 1006), U.S. Patent No. 7,076,650
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`(“Sonnenberg”) (Ex. 1007), and Astaro Security Linux V5 (Version 5.026) User
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`Manual, Release 8.0 © Astaro AG (2004) (“Astaro”) (Ex.1008). Petition at 3-4.
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`The Petition and the grounds set forth therein were supported by the Declaration of
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`Charles P. Pfleeger (“Pfleeger Declaration”) (Ex. 1009).
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`
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`The Patent Owner filed its Preliminary Response to the Petition (Paper 6) on
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`June 26, 2015. The Board citing to several of the Patent Owner’s arguments
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`subsequently denied institution of inter partes review on all grounds in the
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`Petition. In its Decision, the Board stated that it was not persuaded that Taylor
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`taught “processing, by the proxy module,” “reassembling the application-level
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`content from a plurality of packets of the packet stream,” and “reassembling and
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`1
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`scanning” application-level content. Decision at 10-11 (emphasis original). The
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`IPR2015-00911
`Request for Rehearing
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`Board was also not persuaded that Sonnenberg accounted for the processing and
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`scanning limitations of these claims. Id. at 15-16. The Board denied the grounds
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`that used Astaro as a secondary reference in combinations with Taylor (Ground 3)
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`and Sonnenberg (Ground 4) because “Petitioner does not contend that Astaro
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`teaches any of the independent claim limitations determined above to be missing in
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`Taylor and Sonnenberg.” Id. at 16-17.
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`
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`However, for the reasons set forth below, Petitioner respectfully submits that
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`the Board misapprehended or overlooked the arguments and factual support set
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`forth in the Petition, which were backed-up by the Pfleeger Declaration, and
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`applied erroneous legal standards in its obviousness analysis. Under the
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`appropriate legal standards (applied in the Petition), all challenged claims of the
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`’251 patent are obvious in view of Taylor and Sonnenberg alone or in respective
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`combinations with Astaro for the reasons set forth in the Petition and the Pfleeger
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`Declaration. Accordingly, it is respectfully submitted that the conclusions in the
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`Decision amount to an abuse of discretion that warrants rehearing. To simplify the
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`issues for the Board, however, Petitioner is only seeking rehearing of the grounds
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`based on Taylor (i.e., Grounds 1 and 3).
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`2
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`II. Legal Standard
`In considering a request for rehearing under 37 C.F.R. § 42.71(d), the Board
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`IPR2015-00911
`Request for Rehearing
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`reviews a prior decision “for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The
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`burden of showing a decision should be modified lies with the party challenging
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`the decision. The request must specifically identify all matters the party believes
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`the Board misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).
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`“An abuse of discretion occurs when a ‘decision was based on an erroneous
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`conclusion of law or clearly erroneous factual findings, or . . . a clear error of
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`judgment.’” Illumina, Inc. v. Trustees of Columbia University, IPR2013-00011,
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`Paper 44 at 2 (Patent Tr. & App. Bd. May 10, 2013) (citing PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
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`III. Argument
`As established in the Petition and confirmed by Petitioners’ expert, Dr.
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`
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`Pfleeger, claims 1, 6, 12, 17, 18, 26, 27, 29, and 31 are unpatentable under 35
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`U.S.C. § 103(a) over Taylor because Taylor either disclosed, taught or suggested to
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`a person of ordinary skill in the art all of the limitations of these claims. Petition at
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`6-27; Pfleeger Declaration at ¶¶ 79-106.
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`
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`The Board, relying on Patent Owner’s arguments in its Preliminary
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`Response (at 15-27), concluded that Taylor does not “account” for the
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`3
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`IPR2015-00911
`Request for Rehearing
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`“processing,” “reassembling,” and “scanning” limitations as recited in independent
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`claims 1, 17, and 26 of the ’251 patent. However, in reaching its conclusions, the
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`Board appears to have misapprehended Petitioner’s arguments, overlooked
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`argument and facts set forth in the Petition, and applied incorrect legal standards in
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`its analysis.
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`A. The Board Overlooked Argument and Facts Showing That Taylor
`Disclosed “Processing,” “Reassembling,” and “Scanning”
`Application-Level Content
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`
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`The Board concluded that Taylor did not render obvious claims 1, 6, 12, 17,
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`18, 26, 27, 29, and 31 for three reasons. Petitioner now explains why the factual
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`findings and legal conclusions adopted by the Board are erroneous and amount to
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`an abuse of discretion.
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`Taylor’s Proxy Applies Filtering Rules
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`1.
`In the Decision, the Board states that because Taylor’s filtering rules “are
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`applied by DPF 207, not by proxy 211, we are not persuaded that such filtering
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`constitutes ‘processing, by the proxy module’…” Decision at 10. To support this
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`finding the Board cited to selected portions of Taylor’s disclosure while ignoring
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`the conclusions of Petitioner’s expert and the understanding of the person of
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`ordinary skill in the art (as established by Petitioner’s expert). Specifically, the
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`Board relied on the following passages from Taylor to conclude that Taylor’s DPF
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`applies filtering rules instead of its proxy module as argued by Petitioner and its
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`4
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`expert: “Once proxy 211 determines whether to allow the connection and which
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`IPR2015-00911
`Request for Rehearing
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`one of the rules to apply to the connection, that information is transferred to DPF
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`207,” Ex. 1006 at 6:58-60, and “[s]ubsequent packets received with the same
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`attribute information are then automatically forwarded without consulting the
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`proxy.” Id. at 3:63-65. Decision at 10.
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`The cited language, however, does not support the Board’s conclusion that
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`Taylor’s proxy does not apply filtering rules. Instead, the cited passages confirm
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`that Taylor’s proxy performs filtering via a rule: “Once proxy 211 determines
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`whether to allow the connection and which one of the rules to apply to the
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`connection.” Ex. 1006 at 6:58-60 (emphasis added). Furthermore, Taylor
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`explicitly discloses that the “[p]roxy 211, upon receiving the attribute information
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`from DPF 207, determines whether to allow the connection. If the connection is to
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`be allowed, proxy 211 further determines which filter dynamic filter rule to
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`apply.” Petition at 10, 22 (citing Ex. 1006 at 6:22-25) (emphasis added). Taylor
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`also discloses that “the packet is eventually forwarded to proxy 211 to be filtered at
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`the application layer level.” Id. at 11-12, 22-23 (citing Ex. 1006 at 11:46-48; Ex.
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`1009 at ¶¶ 82, 99). This disclosure clearly indicates that Taylor’s proxy uses the
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`filtering rules on the connection. Petitioner’s expert agrees. Pfleeger Declaration
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`at ¶¶ 58, 82-83. Thus, the Board overlooked the disclosure of Taylor as cited in the
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`Petition and the conclusions of Petitioner’s expert and thus erred both factually and
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`5
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`legally by concluding that “Taylor’s filtering rules are applied by DFP 201 – not
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`IPR2015-00911
`Request for Rehearing
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`by proxy 211.”
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`2. One of Ordinary Skill in the Art Would Understand that
`Taylor Teaches “reassembling the application level
`content…”
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`The Board also found that Taylor’s processing is performed on a packet-by-
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`packet basis and concluded that Taylor “does not teach ‘reassembling the
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`application-level content from a plurality of packets of the packet stream” as
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`recited in claims 1, 17, and 26. Decision at 11.
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`As noted in the Petition, Taylor discloses “applying a proxy filter at the
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`application layer to all packets received.” Petition at 11 (emphasis added). The
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`Petition further explained, as supported by Dr. Pfleeger’s declaration, that “[t]o be
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`filtered at the application layer level, the proxy must reconstruct the application
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`level content from a plurality of packets of the packet stream.” Id. at 12; Pfleeger
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`Declaration at ¶¶ 83-85 (emphasis added). Furthermore, Dr. Pfleeger’s declaration
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`cited numerous examples of prior art disclosing that reconstructing application-
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`level content is inherent in the process of filtering packets. Pfleeger Declaration at
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`¶¶ 55-57. Thus, the Board overlooked the disclosure of Taylor as cited in the
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`Petition and the conclusions of Petitioner’s expert and thus erred in concluding that
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`Taylor does not teach “reconstructing the application-level content…from a
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`plurality of packets of the packet stream.”
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`6
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`Apparently, the Board accepted Patent Owner’s argument that Taylor
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`IPR2015-00911
`Request for Rehearing
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`allegedly discloses processing packets only on a packet-by-packet basis. Patent
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`Owner, however, misled the Board by narrowing the scope of Taylor’s disclosure.
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`For example, Patent Owner cited to Taylor’s Fig. 7 and col. 12, ll. 5-19 to suggest
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`that Taylor only discloses processing packets on a packet-by-packet basis.
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`Preliminary Response at 23-24. That selected disclosure describes the method of
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`processing a packet during data communication. However, it is well understood
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`that during such communication, a plurality of packets will be exchanged.
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`Pfleeger Declaration at ¶¶ 55-57. For exemplary purposes, Taylor only disclosed
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`reconstructing one packet, however one of ordinary skill in the art would
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`understand that during a data communication, multiple packets (i.e., a packet
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`stream) will undergo the described procedure. Id. Therefore, Taylor discloses,
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`teaches and suggests processing a plurality of packets in the packet stream.
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`Furthermore, common sense dictates that it would have been obvious to use
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`the teaching of packet processing on a plurality of packets of a packet stream as
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`taught by Taylor and as understood in the art. In this regard, the Federal Circuit
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`decision in Perfect Web is instructive. See Perfect Web Techs., Inc. v. InfoUSA,
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`Inc., 587 F.3d 1324 (Fed. Cir. 2009). The method claim at issue in Perfect Web
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`included 4 steps labeled (A) through (D). Id. at 1326. The fourth step (D) of the
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`claimed method recited “repeating steps (A)-(C)” until certain conditions were
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`7
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`IPR2015-00911
`Request for Rehearing
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`satisfied. Id. The Federal Circuit affirmed the District Court’s determination that a
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`prior art reference which disclosed steps (A)-(C), but did not expressly disclose the
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`final step, nevertheless rendered the claim obvious, because the “final step of the
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`claimed method is merely the logical result of the common sense application of the
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`maxim ‘try, try again.’” Id. at 1327, 1331. Here, applying the teaching of Taylor
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`to a plurality of packets of a packet stream would have been obvious for the same
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`reasons.
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`Taylor Discloses Application-Level Content Processing
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`3.
`In the Decision, the Board also found that reassembling and scanning of
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`
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`application-level content is not inherently disclosed in Taylor. Decision at 11
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`(emphasis added). The Board arrived at this conclusion because “[t]he phrase
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`‘application level content,’ is not used by Taylor.” Id. Further, the Board stated
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`that “[a]lthough Taylor uses the term ‘application layer’ with respect to proxy 211,
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`this term is used to describe where proxy 211 is executing…not to describe what
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`type of content proxy 211 is filtering or processing.” Id.
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`
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`However, the Board overlooked or misunderstood Taylor’s disclosure and
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`the arguments set out in the Petition (supported by Petitioner’s expert) and erred in
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`reaching its conclusion on these limitations. Simply put, merely because Taylor
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`did not use the claim term “application level content” does not mean that
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`“application level content” is not disclosed or that the arguments in the Petition
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`8
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`(and the Petitioner’s expert) should be ignored. As noted in the Petition, Taylor
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`IPR2015-00911
`Request for Rehearing
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`discloses that: [t]he computer program includes a first module located in an
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`application layer…configured to examine a number of packets received by the
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`computer network from at least one outside network”, “[e]ach of the packets
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`passing through this type of firewall is examined at the application layer”,
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`“applying a proxy filter at the application layer to all packets received on a specific
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`connection”, and that “the packet is eventually forwarded to proxy 211 to be
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`filtered at the application layer level.” Petition at 11-12. Common sense indicates
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`that processing content at the application level inherently makes that content
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`application-level content. See Perfect Web, 587 F.3d at 1327, 1331; see also
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`Pfleeger Dec’l at ¶ 58. One skilled in the art would understand that content which
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`is processed at the application level, would mean that such content is application
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`level content. Pfleeger Dec’l at ¶ 83.
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`
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`Furthermore, the prior art need not use the same exact phrases to anticipate
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`the claims: “[t]he elements must be arranged as required by the claim, but this is
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`not an ipsissimis verbis test, i.e., identity of terminology is not required.” MPEP
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`2131 citing In re Bond, 910 F.2d 831 (Fed. Cir. 1990) (emphasis added).
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`Therefore, there is no requirement that Taylor use the phrase “application level
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`content” to anticipate the claimed limitation – accordingly, the Board applied the
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`wrong legal standard when it concluded (at 11) that “reassembling” and “scanning”
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`9
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`
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`of application-level content is not inherently disclosed in Taylor because “[t]he
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`IPR2015-00911
`Request for Rehearing
`
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`phrase ‘application level content,’ is not used by Taylor.”
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`The Board Overlooked the Ground Based on Taylor and Astaro
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`B.
`The Board concluded that Taylor in view of Astaro did not render obvious
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`
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`“several” dependent claims (i.e., claims 9, 22, and 32). Decision at 16-17. The
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`Board, like the Patent Owner (Preliminary Response at 45), simply concluded that
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`“Petitioner [did] not contend that Astaro teaches any of the independent claim
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`limitations determined above to be missing in Taylor and Sonnenberg.” Id.
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`Petitioner submits, however, that since the conclusions based on Taylor were
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`erroneous and require rehearing, that using those conclusions to deny the ground
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`based on Taylor in view of Astaro is also erroneous and amounts to an abuse of
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`discretion. Accordingly, the ground based on Taylor in view of Astaro should be
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`reconsidered on its merits.
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`IV. Conclusion
`Petitioner respectfully submits the Board misapprehended or overlooked
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`
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`Petitioner’s obviousness argument, and applied erroneous legal standards in its
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`analysis. Petitioner submits that the Board’s denial of the Petition was therefore an
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`abuse of discretion. For these reasons, Petitioner respectfully requests rehearing of
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`the Board's decision, a finding that the Petition has established a reasonable
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`likelihood that Petitioner will prevail with respect to the obviousness of claims 1,
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`WEST\261717322.1
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`10
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`6, 9, 12, 17, 18, 22, 26, 27, 29, 31, and 32 of the ’251 patent, and a finding that
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`IPR2015-00911
`Request for Rehearing
`
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`inter partes review should be instituted.
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`
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`Dated: September 23, 2015
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`
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`
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`Respectfully Submitted,
`
`
`
`
`
` /Gianni Minutoli/
`Gianni Minutoli
`Reg. No. 41,198
`gianni.minutoli@dlapiper.com
`Phone: 703-773-4045
`Fax: 703-773-5019
`
`Attorneys for Petitioner Sophos Ltd. and
`Sophos Inc.
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`WEST\261717322.1
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`11
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`
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`CERTIFICATE OF SERVICE
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`IPR2015-00911
`Request for Rehearing
`
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`Pursuant to 37 C.F.R. 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that
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`on September 23, 2015, a complete and entire copy of this PETITIONER’S REQUEST
`FOR REHEARING OF DECISION DENYING INSTITUTION OF INTER
`PARTES REVIEW OF U.S. PATENT NO. 8,205,251 was served by email, at the
`following addresses of record:
`
`Jason Liu
`jasonliu@quinnemanuel.com
`Robert Kang
`robertkang@quinnemanuel.com
`Quinn Emanuel Urquhart & Sullivan
`50 California St, 22nd Floor
`San Francisco, CA 94111
`
`Michael A. DeSanctis
`mdesanctis@hdciplaw.com
`Hamilton, DeSanctis & Cha LLP
`225 Union Blvd., Ste. 150
`Lakewood, CO 80228
`
`
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`Dated: September 23, 2015
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`Respectfully Submitted,
`
`
`
`
`
` /Gianni Minutoli/
`Gianni Minutoli
`Reg. No. 41,198
`gianni.minutoli@dlapiper.com
`Phone: 703-773-4045
`Fax: 703-773-5019
`
`Attorneys for Petitioner Sophos Ltd. and
`Sophos Inc.
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`WEST\261717322.1
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`12
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