Trials@uspto.gov
`571-272-7822
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`
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` Paper 25
` Entered: January 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01433
`Patent 7,757,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 25
` Entered: January 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01433
`Patent 7,757,298 B2
`____________
`
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
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`I.
`
`INTRODUCTION
`Symantec Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`requesting institution of an inter partes review of claims 1–16 of
`U.S. Patent No. 7,757,298 B2 (Ex. 1001, “the ’298 patent”). Intellectual
`Ventures I LLC (“Patent Owner”) filed a Preliminary Response (Paper 5,
`“Prelim. Resp.”). Upon considering the Petition and the Preliminary
`Response, we instituted inter partes review of claims 1–4, 6–14, and 16 of
`the ’298 patent. Paper 6 (“Dec. on Inst.”).
`After institution, Patent Owner filed a Response (Paper 11, “PO
`Resp.”), and Petitioner filed a Reply (Paper 16, “Pet. Reply”)1. Petitioner
`proffered a Declaration of Jack W. Davidson, Ph.D. (Ex. 1011, “Davidson
`Declaration” or “Davidson Decl.”) with its Petition, and Patent Owner
`proffered a Declaration of David M. Goldschlag, Ph.D. (Ex. 2006,
`“Goldschlag Declaration” or “Goldschlag Decl.”) with its Response.
`Deposition transcripts for Dr. Goldschlag (Ex. 1035) and Dr. Davidson (Ex.
`2010) were filed.
`An oral hearing in this proceeding was held on October 12, 2017; a
`transcript of the hearing is included in the record (Paper 24, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–4, 6–14, and 16 of the ’298
`patent are unpatentable.
`
`
`
`1 We granted Petitioner’s unopposed motion to excuse the late filing of its
`Reply to the Patent Owner Response. Paper 19.
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`A. Grounds of Unpatentability at Issue
`We instituted inter partes review on the grounds that, under 35 U.S.C.
`§ 103(a):
`(1) claims 1, 3, 6–10, 12, 13, and 16 are unpatentable over De Souza2
`and Hoffman3,
`(2) claims 2 and 11 are unpatentable over De Souza, Hoffman, and
`Martins4,
`(3) claims 4 and 14 are unpatentable over De Souza, Hoffman, and
`Farber5,
`(4) claims 1–3, 6–11, 13, and 16 are unpatentable over Hyppönen6
`and Johnson7,
`(5) claims 4 and 14 are unpatentable over Hyppönen, Johnson, and
`Farber, and
`(6) claim 12 is unpatentable over Hyppönen, Johnson, and
`Nachenberg8. Dec. on Inst. 10, 11–12, 13, 18–19, 20, 28.
`B. Related Proceedings
`The parties indicate that the ’298 patent has been asserted in
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., Case No.
`6:15-cv-00660-JRG (E.D. Tex.); Intellectual Venture I LLC v. PNC
`Financial Services Group, Inc., Case No. 2:13-cv-00740-AJS (W.D. Pa.);
`
`
`2 U.S. Pat. No. 5,848,418, iss. Dec. 8, 1998 (Ex. 1002).
`3 U.S. Pat. No. 6,122,657, iss. Sept. 19, 2000 (Ex. 1005).
`4 U.S. Pat. No. 5,649,205, iss. July 15, 1997 (Ex. 1010).
`5 U.S. Pat. No. 5,978,791, iss. Nov. 2, 1999 (Ex. 1009).
`6 U.S. Pat. No. 6,577,920 B1, iss. June 10, 2003 (Ex. 1003).
`7 Alan Johnson, Steganography for DOS Programmers, Dr. Dobb’s J.,
`(1997) (Ex. 1006).
`8 U.S. Pat. No. 5,696,822, iss. Dec. 9, 1997 (Ex. 1008).
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`Intellectual Venture I LLC v. PNC Financial Services Group, Inc., Case No.
`2:14-cv-00832-AJS (W.D. Pa.); and Intellectual Venture I LLC v. Erie
`Indemnity Co., Case No. 1:14-cv-00220-MRH (W.D. Pa.). Pet. 1; Paper 4,
`1; Paper 12, 1; Exs. 2011–2013.
`The ’298 patent was also the subject of cases CBM2014-00032 and
`IPR2014-01516. Pet. 2; Paper 4 at 2.
`C. The ’298 Patent (Ex. 1001)
`The ’298 patent relates to “methods and apparatus for identifying and
`characterizing errant electronic files stored on computer storage devices.”
`Ex. 1001, 1:29–31. The ’298 patent states that when “users upload files that
`are offensive, illegal, unauthorized, or otherwise undesirable,” storage
`resources are wasted, and thus, it provides a method “for identifying and
`characterizing files electronically stored on a computer storage device.” Id.
`at 1:43–46, 2:49–51. Figure 1 of the ’298 patent is reproduced below:
`
`
`Figure 1 illustrates a wide area network in which a web host delivers
`web pages to users. Id. at 3:9–11, 36–38. User computer 120 communicates
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`with Web host 110 through Internet 102. Id. at 3:41–48. Web host 110
`includes server 112 that can access data files stored in database 116, and the
`data files can be requested, retrieved, and viewed at user computer 120. Id.
`at 3:48–58. Web host 110 further includes file identification application 114
`that analyzes data files stored on database 116 and tests various attributes of
`those files to determine whether they satisfy a particular profile in order to
`identify suspect files. Id. at 4:19–27, 4:48–54, Fig. 2A.
`File identification application 114 can review the contents of a file to
`determine whether the file structure is as expected for a file of the type
`indicated, and if not, the file can be reported as a suspect file or marked for
`deletion. Id. at 7:4–14, Fig. 2B. File identification application 114 can also
`determine whether the file contains data extending past an end of data
`marker because any such additional data may constitute a portion of an illicit
`file. Id. at 7:26–31, Fig. 2B.
`After the files within a directory have been reviewed and a list of
`suspect files generated, file identification application 114 compares a
`checksum generated from the suspect files to a library of checksum values
`corresponding to known illicit files. Id. at 7:40–45, Fig. 2C. The checksum
`is a unique number, generated by one of “numerous possible algorithms,”
`based on a range of bytes in a file. Id. at 7:45–47, 9:10–12; Fig. 3.
`D. Illustrative Claim
`The ’298 patent has 16 claims, and of the claims at issue, claims 1, 10,
`and 16 are independent. Claim 1 is reproduced below:
`1. A computer-implemented method for identifying
`and characterizing stored electronic
`files, said method
`comprising:
`
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`under control of one or more configured computer
`systems:
`selecting a file from a plurality of files stored in a
`computer storage medium, wherein selecting the file is
`performed according to at least one of:
`selecting the file based on the size of the file by
`determining whether an aggregate size of plural
`identically-sized files exceeds a predetermined threshold;
`selecting the file based on whether content of the
`file matches a file type indicated by a name of the file; or
`selecting the file based on whether the file
`comprises data beyond an end of data marker for the file;
`generating an identification value associated with the
`selected file, wherein the identification value is representative of
`at least a portion of the content of the selected file;
`comparing the generated identification value to one or
`more identification values associated with one or more of a
`plurality of unauthorized files; and
`characterizing the file as an unauthorized file if the
`identification value matches one of the plurality of identification
`values associated with the unauthorized files.
`Ex. 1001, 12:21–44.
`
`II.
`
`CLAIM INTERPRETATION
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard).
`In the Decision on Institution, we interpreted “portion” as “a
`subdivision that is less than the whole.” Dec. on Inst. 7 (citing Ex. 2001,
`835, 896). Neither party presents post-institution arguments or evidence
`regarding the term “portion.” See PO Resp. 4–10; Pet. Reply 3–9. Thus,
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`based on our review of the complete record, we do not perceive any reason
`or evidence that compels any deviation from our interpretation of “portion.”
`Petitioner proposes interpretations for “unauthorized files” and
`“checksum.” Pet. 12–13. Patent Owner proposes an interpretation for
`“unauthorized file.” PO Resp. 5–8.
`For the term “selecting,” Patent Owner contends that the “ordinary
`meaning of [‘selecting from a plurality of files’] is apparent on its face” but
`“‘selecting’ should not be confused with merely identifying the ‘plurality of
`files’ from which the selection is to be made.” PO Resp. 8–9 (citing
`Goldschlag Decl. ¶¶ 37, 39). Patent Owner also argues that “selecting a file
`from a plurality of files” is “not satisfied by creating a list of files from
`which to choose.” Id. at 9–10. Petitioner replies that “there is no need for
`the Board to construe this phrase” and that “[t]here is no dispute that merely
`‘creating’ a list of files, by itself, does not necessarily ‘select a file.’” Pet.
`Reply 7.
`For purposes of this Decision, we adopt the parties’ agreed to
`understanding of “selecting a file from a plurality of files,” as recited by
`independent claims 1, 10, and 16, to require more than creating a list of files.
`No further express interpretation of the phrase is necessary for determining
`whether Petitioner has demonstrated unpatentability of the challenged claims
`by a preponderance of the evidence. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (construing only those claim terms
`in controversy and only to the extent necessary to resolve the controversy).
`Also, we determine that no other claim term requires express interpretation
`to determine whether Petitioner has proven unpatentability by a
`preponderance of the evidence. Id.
`
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`III. OBVIOUSNESS CHALLENGES
`To prevail in its challenges, under 35 U.S.C. § 103(a), of (1) claims 1,
`3, 6–10, 12, 13, and 16 as unpatentable over De Souza and Hoffman; (2)
`claims 2 and 11 as unpatentable over De Souza, Hoffman, and Martins; (3)
`claims 4 and 14 as unpatentable over De Souza, Hoffman, and Farber; (4)
`claims 1–3, 6–11, 13, and 16 as unpatentable over Hyppönen and Johnson;
`(5) claims 4 and 14 as unpatentable over Hyppönen, Johnson, and Farber;
`and (6) claim 12 as unpatentable over Hyppönen, Johnson, and Nachenberg,
`Petitioner must prove unpatentability by a preponderance of the evidence.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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 ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1996).
`As discussed below, the parties do not present arguments or evidence
`disputing the level of ordinary skill in the art or present objective evidence
`of nonobviousness. Instead, the parties’ dispute relates to the scope and
`content of the prior art and differences between the claimed subject matter
`and the prior art.
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`A. Level of Ordinary Skill
`Petitioner contends that
`A person of ordinary skill in the art . . . would have a Master’s
`degree in computer science, computer engineering, or a similar
`field, or a Bachelor’s degree in computer science, computer
`engineering, or a similar field, with approximately two years of
`industry experience relating to computer security. Additional
`graduate education might substitute for experience, while
`significant experience in the field of computer programming
`might substitute for formal education.
`
`
`Pet. 11–12 (citing Davidson Decl. ¶¶ 34–36).
`Patent Owner responds that, although it “does not necessarily agree
`with all aspects of Symantec’s definition, the definition is sufficiently
`accurate to assess the patentability challenges raised,” and Patent Owner
`“adopts Symantec’s proposed definition for the purpose of this IPR only.”
`PO Resp. 3 (citing Goldschlag Decl. ¶ 25); Goldschlag Decl. ¶ 25 (Patent
`Owner’s declarant stating that “I believe that [Petitioner’s] definition is
`sufficiently accurate to assess the patentability challenges raised against the
`’298 Patent in this IPR” and “for the purpose of my analysis in this IPR
`only, I have adopted Symantec’s proposed definition of the person of
`ordinary skill in the art of the ’298 Patent”).
`We, therefore, apply Petitioner’s proposed level of ordinary skill in
`the art, as stated on pages 11–12 of the Petition and quoted above, in
`analyzing its obviousness challenges.
`B. Challenge Based on De Souza and Hoffman
`Petitioner contends that claims 1, 3, 6–10, 12, 13, and 16 are rendered
`obvious by De Souza and Hoffman and supports this contention with
`citations to De Souza, Hoffman, and the Davidson Declaration (Ex. 1011).
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`Pet. 6, 16–28. Patent Owner opposes this contention and responds with
`citations to the same references and the Goldschlag Declaration (Ex. 2006).
`PO Resp. 11–27.
`1. De Souza (Ex. 1002)
`De Souza relates to “an apparatus and method for locating and
`analyzing electronic documents that contain graphic images or objectionable
`language.” Ex. 1002, 1:9–11. De Souza states that “widespread use of
`personal computers” and “easy access to computer networks” provide access
`to “adult subject matter consist[ing] of pornographic literature and
`photographs, descriptions of violent activities, and potential illegal activities,
`not to mention the use of offensive language.” Id. at 1:15–22.
`De Souza’s method “checks each file to determine the file’s real type
`property” and “looks for files that are disguised, such as a file with an
`executable suffix (.exe) which in reality is a graphics file that should have
`had a graphics suffix (like .gif).” Id. at 2:1–2, 2:18–21. A “file suffix is
`typically the last three characters of the file name that come after the final
`‘.’” and is “used as a handy way to differentiate between different files and
`different file formats.” Id. at 5:21–27.
`The file suffix is read and compared to real type property 616 which
`“designat[es] the actual type of file found by analyzing the contents of the
`file.” Id. at 3:50–52, 4:14–16, 4:23, 5:19–30, Fig. 2, step 206, Fig. 3, steps
`302, 316, 318. The method subsequently decides if each file contains text as
`well as graphic images or audio clips. Id. at 4:3–6, Fig. 2, step 208. If real
`property type 616 is not equivalent to the claimed type property, then the
`result type property 620 is set to “questionable” with yellow color code
`
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`property 608 or “suspicious” with red color code property 608. Id. at 5:42–
`53, Fig. 4, step 402.
`Once all of the files have been checked, a list of the various files is
`presented on a display for a user to review for subsequent destruction or
`some other action. Id. at 7:20–22. “The files are ordered by their result type
`property 620 and a color icon is displayed according to the color code
`property 608 in order to aid the user in distinguishing harmful files from
`innocuous ones.” Id. at 7:23–26.
`2. Hoffman (Ex. 1005)
`Hoffman relates to “methods for speeding up the process of browsing
`Web content in a computer system.” Ex. 1005, 1:23–25. Hoffman describes
`a filter module that manages content of Web pages downloaded from the
`Internet according to user-configurable filter settings. Id. at 5:13–17. The
`filter processes Web browser requests for content. Id. at 8:20–32. Hoffman
`indicates that Cyclic Redundancy Checking (“CRC”) is a “well-known
`checksum technique.” Id. at 27:3–5. Hoffman states that for ads, it
`“connects to the Web site, grabs the image file from the site, and then
`proceeds to perform a CRC calculation . . . on the image” and the
`“calculated CRC value is then compared against a list of image signatures or
`IDs.” Id. at 30:29–35. “If the computer ID is determined to represent a
`‘bad’ image . . . the method proceeds to kill the image.” Id. at 30:37–41.
`The filter can also be “configured to kill ads or kill images larger than a
`preselected image size.” Id. at 30:23–24.
`3. Independent Claims 1, 10, and 16
`Petitioner contends that De Souza teaches or suggests the limitations
`of independent claims 1, 10, and 16. Pet. 18–23 (citing Exs. 1002, 1005,
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`1006; Davidson Decl. ¶¶ 69–73, 94–115). In particular, for “selecting a file
`from plurality of files,” Petitioner argues that De Souza teaches a method
`that locates and “selects particular files that meet certain criteria (e.g., files
`that have a suffix that does not match the file contents . . . ), designates them
`as questionable/red, suspicious/yellow, or unknown, and includes them in a
`listing of files presented to a user for further review.” Id. at 21 (citing Ex.
`1001, 2:24–27, 3:13–4:13, 7:10–13; Davidson Decl. ¶ 105).
`Petitioner also argues that “[t]o the extent De Souza does not teach
`generating the claimed ‘identification value’ for a selected file, this would
`have been obvious” because it was “commonplace in the prior art” and
`Hoffman expressly teaches the feature. Pet. 23–24 (citing Exs. 1004, 1005,
`1007; Davidson Decl. ¶¶ 52–59, 116–120); see also id. at 25 (citing
`Davidson Decl. ¶ 270).
`Petitioner contends that a person of ordinary skill in the art would
`look to De Souza and Hoffman and asserts that “it would have been obvious
`that the automated process for inspecting image files using CRCs (i.e.,
`identification values) taught by Hoffman could be applied to the mismatched
`graphic files identified and selected in De Souza” so as “to reduce or
`eliminate the need for manual review of graphic files” and “would have
`merely involved combining well known prior art elements, using well-
`known computer programming techniques, to achieve a predictable result.”
`Pet. 17 (citing Davidson Decl. ¶¶ 85–93). Petitioner also asserts that a
`person of ordinary skill in the art “would have found it obvious to apply
`Hoffman’s automated checksumming method for inspecting image files to
`analyze the graphics files selected by De Souza’s system.” Pet. 24 (citing
`Davidson Decl. ¶¶ 121–125).
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`Petitioner also argues that a person of ordinary skill in the art “would
`have understood that, when [Hoffman is] combined with De Souza, the
`selected graphics file would be characterized as an unauthorized file . . . if its
`identification value matched an identification value associated with a known
`unauthorized graphics file.” Pet. 25 (citing Davidson Decl. ¶ 131).
`Petitioner contends that it would have been obvious to characterize selected
`graphics files as unauthorized “based on whether their checksums matched
`one of the checksums associated with unauthorized image files.” Id. (citing
`Davidson Decl. ¶¶ 128, 129, 131, 132).
`We determine that the record before us indicates that Petitioner
`sufficiently demonstrates that its proposed combination of De Souza and
`Hoffman teaches the limitations of independent claims 1, 10, and 16. Pet.
`18–26 (citing Ex. 1002, Abstract, 1:7–13, 1:29–57, 2:1–4, 2:13–14, 2:18–21,
`2:24–27, 2:57–4:13, 5:18–6:15, 6:50–61, 7:1–32, Fig. 1; Ex. 1005, Abstract,
`3:14–38; 8:1–30:62, Davidson Decl. ¶¶ 52–59, 69–73, 94–104, 106–117).
`We are persuaded that the portions of De Souza and Hoffman cited by
`Petitioner teach or suggest the limitations of independent claims 1, 10, and
`16. Further, Petitioner provides articulated reasoning with some rational
`underpinning. Pet. 17, 24, 25 (citing Davidson Decl. ¶¶ 85–93, 121–134,
`270). We credit Dr. Davidson’s testimony as to why one of ordinary skill in
`the art would have combined De Souza and Hoffman.
`Patent Owner first responds that Petitioner fails to show that Hoffman
`teaches characterizing or categorizing a file as an unauthorized file, as
`required by independent claims 1, 10, and 16. PO Resp. 11–12 (citing Pet.
`24–25; Goldschlag Decl. ¶¶ 29, 43). Patent Owner also responds that
`Petitioner does not rely on “DeSouza or any other reference combined with
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`Hoffman” to teach characterizing or categorizing a file as an “unauthorized
`file.” Id. at 15 (citing Goldschlag Decl. ¶ 50).
`In view of the complete record, Petitioner shows by a preponderance
`of the evidence that De Souza and Hoffman teach characterizing or
`categorizing unauthorized files. Petitioner argues that one of ordinary skill
`in the art “would have found it obvious to apply Hoffman’s automated
`checksumming method for inspecting image files to analyze the graphics
`files selected by De Souza’s system” (Pet. 24 (citing Davidson Decl. ¶¶ 121–
`125)) and “would have understood that, when [Hoffman is] combined with
`DeSouza, the selected graphics file would be characterized as an
`unauthorized file . . . if its identification value matched an identification
`value associated with a known unauthorized graphics file” (id. at 25 (citing
`Davidson Decl. ¶ 131)).
`Patent Owner also responds that Petitioner equates the advertising
`images of Hoffman to the unauthorized files of claims 1, 10, and 16 but that
`Hoffman’s advertising images are not “stored on a computer without
`authority or permission from a system administrator.” PO Resp. 12 (citing
`Pet. 25; Goldschlag Decl. ¶ 46). Patent Owner also contends that “bad” or
`“unwanted” advertising images are not “unauthorized” files because the ’298
`patent distinguishes “undesirable files” from “unauthorized files.” Id. at 13
`(citing Pet. 25; Ex. 1001, 1:41–56; Davidson Decl. ¶¶ 130–132; Goldschlag
`Decl. ¶ 47). Patent Owner further contends that the “bad” images of
`Hoffman “are simply the ones that the end-user . . . prefers not to see” and
`that “Hoffman’s filtering is based on the user’s personal preferences.” Id. at
`14–15 (citing Ex. 1005, 2:63–67, 3:51–54, 5:13–17, 30:37–41; Goldschlag
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`Decl. ¶ 48). Patent Owner asserts that “annoying or undesirable” images are
`not “unauthorized files.” Id. at 15.
`Patent Owner’s arguments focus on Hoffman’s filtering of advertising
`images, which Patent Owner asserts are not “unauthorized images” (PO
`Resp. 11–15). Petitioner, however, does not equate the advertising images
`of Hoffman to the unauthorized files of the independent claims, as argued by
`Patent Owner. Patent Owner’s arguments do not address De Souza’s
`teachings of a method that locates “electronic documents that contain
`graphic images or objectionable language” (Ex. 1001, 1:9–11), which
`Petitioner relies on for the recited “unauthorized file.” See Pet. 25
`(“POSITA would have understood that when combined with DeSouza, the
`selected graphics file would be characterized as an unauthorized file (e.g.,
`bad or unwanted image) if its identification value matched an identification
`value associated with a known unauthorized graphics file.”).
`Petitioner’s proposed combination applies “Hoffman’s automated
`checksumming method for inspecting image files to analyze the graphics
`files selected by DeSouza’s system” (Pet. 24) so as to result in locating
`“electronic documents that contain graphic images” such as “pornographic
`. . . photographs . . . and potential illegal activities,” as disclosed by De
`Souza (Ex. 1001, 1:9–11, 1:19–21). The record before us indicates that such
`photographs would be “a file stored on a computer without authority or
`permission from a system administrator.” Goldschlag Decl. ¶ 21 (“There are
`several types of files that a system administrator may deem to be
`unauthorized . . . such as pornographic files.”).
`Also, even if we were to accept Patent Owner’s proposed construction
`of “unauthorized file” as “a file stored on a computer without authority or
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`IPR2016-01433
`Patent 7,757,298 B2
`
`permission from a system administrator” (PO Resp. 8), we would find that
`De Souza teaches that its method locates “electronic documents that contain
`graphic images or objectionable language” (Ex. 1001, 1:9–11), finds
`“objectionable material” (id. at 1:56), and remedies problems related to
`“files containing pre-selected objectionable subject matter” (id. at 1:46–50)
`such as “pornographic literature and photographs, descriptions of violent
`activities, and potential illegal activities” (id. at 1:19–21).
`Further, Patent Owner states that the “’298 Patent mentions a few
`types of files that may be stored without authorization or permission from a
`system administrator, such as files that violate terms of use or copyright
`laws.” PO Resp. 6–7. Because the full record does not indicate any
`meaningful difference between “potential illegal activities” (Ex. 1001, 1:19–
`21) and “files that violate . . . copyright laws” (PO Resp. 6–7), we determine
`that such potentially illegal activities are “file[s] stored on a computer
`without authority or permission from a system administrator” (PO Resp. 8).
`See also Goldschlag Decl. ¶ 21 (“There are several types of files that a
`system administrator may deem to be unauthorized . . . such as . . . files that
`violate the law.”).
`Patent Owner also responds that Petitioner failed to demonstrate that
`Hoffman teaches comparing an identification value of a selected file with
`identification values of unauthorized files, as required by the independent
`claims, because Petitioner fails to show that Hoffman teaches “unauthorized
`files.” PO Resp. 16. Patent Owner further responds that, even if Hoffman
`discloses characterizing or categorizing unauthorized files, Petitioner failed
`to demonstrate that the characterizing includes comparing an identification
`value of a selected file with identification values of unauthorized files. Id.
`
`
`
`16
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`IPR2016-01433
`Patent 7,757,298 B2
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`Patent Owner asserts that Petitioner’s explanation is inadequate. Id. at 16–
`17 (citing Pet. 24–25; Davidson Decl. ¶¶ 128–134).
`However, Petitioner argues that one of ordinary skill in the art “would
`have found it obvious to apply Hoffman’s automated checksumming method
`for inspecting image files to analyze the graphics files selected by
`DeSouza’s system.” Pet. 24 (citing Davidson Decl. ¶¶ 121–125). As
`explained above, the record indicates that Petitioner is relying on De Souza
`for teaching “unauthorized files,” not Hoffman as asserted by Patent Owner.
`We are persuaded that Petitioner shows by a preponderance of the evidence
`that its proposed combination of De Souza and Hoffman teaches comparing
`an identification value of a selected file with identification values of
`unauthorized files and that the characterizing includes comparing an
`identification value of a selected file with identification values of
`unauthorized files, as required by the independent claims. See also
`Davidson Decl. ¶ 90 (Petitioner’s declarant testifying “it would have been
`obvious . . . that the automated process for inspecting image files through the
`use of CRCs . . . taught by Hoffman could be applied to the graphic files
`identified and selected by De Souza’s system”).
`Patent Owner additionally responds that the proposed combination of
`De Souza and Hoffman does not teach a computer or computer program for
`performing the “selecting a file” limitation of the independent claims. PO
`Resp. 17–18. Patent Owner argues that “DeSouza expressly teaches that a
`user . . . selects a file” from a displayed list of files flagged for various
`reasons. Id. at 18–20 (citing Ex. 1002, 1:7–8, 1:56–57, 2:25–27, 5:42–67,
`6:1–15, claims 1–20; Goldschlag Decl. ¶¶ 53, 54, 56, 57, 59). Patent Owner
`also argues that one of ordinary skill in the art would understand that
`
`
`
`17
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`IPR2016-01433
`Patent 7,757,298 B2
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`presenting an itemized list of files is not selecting a file.” Id. at 20 (citing
`Goldschlag Decl. ¶ 57). Patent Owner further argues that De Souza does not
`suggest a computer selecting a file and does not refer to selecting a file for
`further processing. Id. (citing Ex. 1002, 1:46–49; Goldschlag Decl. ¶ 58).
`The record supports Petitioner’s position by a preponderance of the
`evidence that De Souza “selects particular files that meet certain criteria” –
`e.g., files that are designated as “questionable/red, suspicious/yellow, or
`unknown” and “presented to a user for further review.” Pet. 21. We are
`persuaded that De Souza teaches that a computer or computer program
`“select[s] a file from a plurality of files,” as recited by independent claims 1,
`10, and 16, and the file is selected for further processing. See Ex. 1001, 3:9–
`12 (“Alternate embodiments of computer system 10 may include mainframe
`computers, or networks of PCs”), 7:20–22 (“Once all of the files have been
`reviewed, a list of the various files are presented . . . for the user’s review
`and if necessary, destruction or some other action.”); Goldschlag Decl. ¶ 54
`(“In one step in De Souza, files are marked as suspicious, questionable, or
`okay.”). Petitioner proposes modifying De Souza to include Hoffman’s
`checksumming method “to reduce or eliminate the need for manual review
`of graphic files.” Pet. 17.
`Also, we find that De Souza teaches selecting files according to a
`certain criteria, specifically, selecting files that have mismatching real type
`property 616 and claimed type property 618. Ex. 1002, 5:42–53; see also
`Goldschlag Decl. ¶ 36 (“The verb ‘selecting’ is not a technical term with any
`special meaning unique to the field of computer security”), ¶ 55 (“De Souza
`also lists some of the ‘[r]easons as to why the file was flagged.’”). The
`record persuades us that De Souza, thus, teaches “selecting a file from a
`
`
`
`18
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`IPR2016-01433
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`
`plurality of files,” as required by independent claims 1, 10, and 16. We find
`that De Souza teaches that, if a file has mismatching real type property 616
`and claimed type property 618, the file is presented for user review or some
`other action. Ex. 1001, 5:42–53, 7:20–22. In other words, the file is
`selected from a plurality of files based on the mismatching of its properties
`616, 618.
`Patent Owner argues that De Souza does not meet the “selecting a
`file” limitation because De Souza describes how the user (and not a
`computer or computer program) selects from a listing of files that are
`suspicious or questionable. PO Resp. 18. However, we find that De Souza
`meets this limitation because, as discussed above, it teaches a prior selecting
`was accomplished by its method that results in a file being flagged as
`suspicious or questionable. Ex. 1001, 5:42–53, 7:20–22. Each of the
`flagged files in the listing has met the mismatching criteria, and each
`requires user review; however, other files do not meet the mismatching
`criteria and do not require further user review. Id. at 7:20–26. Thus, each
`file flagged as suspicious or questionable is the result of “selecting a file
`from a plurality of files,” such that it can be listed and subsequently dealt
`with by a user.
` To further illustrate the point above, we find that De Souza’s method
`can flag just a single file with mismatching real type property 616 and
`claimed type property 618 that would be presented to a user for further
`action. In such a case with only a single file flagged, the method of De
`Souza would teach a single selection, and the single selected f
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