Filed: April 18, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SYMANTEC CORPORATION
`
`Petitioner,
`
`v.
`
`Filed on behalf of:
`Patent Owner Intellectual Ventures I LLC
`John R. King
`Ted M. Cannon
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email: BoxPGL40@knobbe.com
`
`By:
`
`
`
`
`
`
`
`
`
`
`INTELLECTUAL VENTURES I LLC,
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-01433
`U.S. Patent No. 7,757,298
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I. 
`
`INTRODUCTION ............................................................................................ 1 
`
`II.  LEVEL OF ORDINARY SKILL IN THE ART .............................................. 3 
`
`III.  CLAIM CONSTRUCTION .............................................................................. 4 
`
`Legal standard ....................................................................................... 4 
`A. 
`“unauthorized file” ................................................................................ 5 
`B. 
`“selecting” ............................................................................................. 8 
`C. 
`IV.  THE INSTITUTED CLAIMS ARE PATENTABLE OVER THE
`ALLEGED GROUNDS .................................................................................. 10 
`
`A. 
`
`B. 
`
`2. 
`
`The claims are patentable over the DeSouza and Hoffman
`combinations. ...................................................................................... 11 
`1. 
`Symantec did not prove that Hoffman discloses
`characterizing unauthorized files. ............................................. 11 
`Symantec did not prove that Hoffman discloses comparing
`an identification value of the selected file with
`identification values associated with unauthorized files. ......... 16 
`Symantec did not prove that DeSouza teaches a computer
`or computer program “selecting a file.” .................................... 17 
`Symantec did not prove that a skilled artisan would have
`had a reason to combine DeSouza and Hoffman ...................... 21 
`The claims are patentable over the Hyppönen and Johnson
`combinations. ...................................................................................... 27 
`1. 
`Prior Art Background ................................................................ 28 
`a. 
`Hyppönen ........................................................................ 28 
`
`3. 
`
`4. 
`
`b. 
`
`c. 
`
`Johnson ........................................................................... 29 
`
`Kuo.................................................................................. 31 
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`d. 
`
`Tate and Drake ................................................................ 33 
`
`2. 
`
`3. 
`
`Neither Hyppönen nor Johnson teaches “selecting [a] file
`based on whether the file comprises data beyond an end of
`data marker for the file.” ........................................................... 36 
`Symantec failed to prove that a skilled artisan would have
`had a reason to modify Hyppönen to select a file for virus
`scanning “based on whether the file comprises data beyond
`an end of data marker for the file.” ........................................... 38 
`V.  SYMANTEC CANNOT PROPERLY SUBMIT NEW OBVIOUSNESS
`EVIDENCE OR ARGUMENTS IN ITS REPLY .......................................... 44 
`
`VI.  CONCLUSION ............................................................................................... 45 
`
`
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Heart Failure Techs., LLC v. Cardiokinetix, Inc.,
`IPR2013-00183, Paper 12 (July 31, 2013) ......................................................... 21
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 417–18 (2007) ......................................................................... 21, 27
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ............................................................................ 4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 4
`
`Poly-America, L.P. v. API Indus., Inc.,
`839 F.3d 1131 (Fed. Cir. 2016) ............................................................................ 4
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) ............................................................................ 4
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 4
`
`77 Fed. Reg. 157 ...................................................................................................... 45
`
`
`
`-iii-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`TABLE OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Definitions of part and portion, Webster’s New Collegiate
`Dictionary 835, 896–97 (G.&C. Merriam Co. 1973)
`
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., No.
`6:16-cv-00660, Exhibit A to Amended Joint Claim Construction
`and Prehearing Statement (E.D. Tex. Apr. 4, 2016)
`
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., No.
`6:16-cv-00660, Plaintiff Intellectual Ventures I LLC and
`Intellectual Ventures II LLC’s Opening Claim Construction Brief
`(E.D. Tex. May 4, 2016)
`
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., No.
`6:16-cv-00660, Plaintiff Intellectual Ventures I LLC and
`Intellectual Ventures II LLC’s Reply Claim Construction Brief
`(E.D. Tex. May 25, 2016)
`
`Intellectual Ventures I LLC v. HCC Insurance Holdings, Inc., No.
`6:16-cv-00660, Exhibit A to Joint Claim Construction Chart
`Pursuant to P.R. 4-5(D) (E.D. Tex. June 1, 2016)
`
`Declaration of David M. Goldschlag, Ph.D.
`
`CV of David M. Goldschlag, Ph.D.
`
`Definition of “Unauthorized,” Merriam-Webster.com
`
`Definition of “Select,” Merriam-Webster.com
`
`Deposition transcript of Jack Davidson (April 5, 2017)
`
`Intellectual Ventures I LLC, et al. v. Erie Indemnity Company, et
`al., No. 2017-1147, Brief for Appellants (Fed. Cir.)
`
`Intellectual Ventures I LLC, et al. v. Erie Indemnity Company, et
`al., No. 2017-1147, Brief for Defendants-Appellees (Fed. Cir.)
`
`-iv-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`Exhibit No.
`
`2013
`
`Description
`
`Intellectual Ventures I LLC, et al. v. Erie Indemnity Company, et
`al., No. 2017-1147, Reply Brief for Appellants (Fed. Cir.)
`
`
`
`Exhibits 2011–2013 are briefs filed in a Federal Circuit appeal involving the
`
`’298 Patent, and are submitted herewith for the Board’s information. Exhibit 2011
`
`includes, as an addendum, a district court decision finding that claims of the ’298
`
`Patent are patent-ineligible under 35 U.S.C. § 101.
`
`
`
`-v-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`Patent Owner (“IV”) hereby submits its Patent Owner Response to the
`
`Petition (Paper 2, “Pet.”) for Inter Partes Review filed against U.S. Patent No.
`
`7,757,298 (“the ’298 patent”) by Petitioner (“Symantec”).
`
`I.
`The ’298 patent claims novel and non-obvious systems and methods for
`
`INTRODUCTION
`
`identifying and characterizing unauthorized files on a computer system or network.
`
`Unauthorized files are not simply files a user does not like. Users browsing a
`
`computer network—such as the Internet—frequently run into annoying or
`
`undesirable files, such as those that include advertisements. But the claimed
`
`invention is not about filtering out petty annoyances like advertising based on a
`
`user’s personal preferences. Rather, the claimed invention tackles the much more
`
`significant problem that bad actors would highjack a computer to store files
`
`without authority or permission from a system administrator.
`
`The invention includes two key features that work together to characterize a
`
`file as an unauthorized file. The first key feature is selecting a file for further
`
`processing based on red flags that indicate that the file has a high risk of being an
`
`unauthorized file. The second key feature is subjecting the selected file to extra
`
`scrutiny to determine whether the file is, indeed, an unauthorized file. The claims
`
`include significantly more detail for each of these key features.
`
`-1-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`There is no dispute that the claimed invention is novel. Symantec does not
`
`even allege that the alleged prior art anticipates any claim of the ’298 Patent.
`
`Instead, Symantec alleges that two general obviousness combinations—one based
`
`primarily on DeSouza and Hoffman and the other based primarily on Hyppönen
`
`and Johnson—disclose all of the claimed details of the invention. But Symantec
`
`failed to meet its burden to prove obviousness for two fundamental reasons.
`
`First, even assuming that the references can properly be combined, the
`
`proposed combinations do not even disclose all of the claim limitations. For
`
`example, with respect to the DeSouza and Hoffman combinations, Hoffman does
`
`not disclose characterizing unauthorized files. All Hoffman does is block
`
`advertisements based on a user’s personal web-browsing preferences.
`
`Advertisements may be annoying or undesirable, but they are not “unauthorized
`
`files” as that phrase is used in the ’298 Patent. And with respect to the Hyppönen
`
`and Johnson combinations, Johnson merely prints a directory listing of files that
`
`have data beyond their end-of-data marker, but it does not select any of the listed
`
`files for extra processing. Symantec’s proposed obviousness combinations also
`
`have other missing limitations, as explained below.
`
`Second, neither proposed obviousness combination can properly be
`
`combined, because Symantec failed to prove that a person of ordinary skill in the
`
`art (“skilled artisan”) would have had any reason or motivation to combine the
`
`-2-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`references in the manner proposed by Symantec. A skilled artisan would have had
`
`no reason to combine DeSouza and Hoffman because DeSouza relates to the
`
`complex technology of detecting hidden illicit content while Hoffman relates to the
`
`much different and simpler technology of filtering unhidden and easy-to-identify
`
`banner advertisements. And a skilled artisan would have had no reason to modify
`
`Hyppönen’s virus scanner to target files with data beyond their end-of-data
`
`markers because a skilled artisan would not have believed, at the relevant time, that
`
`such files are particularly susceptible to virus infection.
`
`Accordingly, because Symantec failed to meet its burden to prove
`
`obviousness for at least two independent reasons, the Board should find that all
`
`challenged claims of the ’298 Patent are patentable over the alleged prior art of
`
`record.
`
`II. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition defines the level of ordinary skill in the art on pages 11 and 12.
`
`Although IV does not necessarily agree with all aspects of Symantec’s definition,
`
`the definition is sufficiently accurate to assess the patentability challenges raised
`
`against the ’298 Patent in this IPR. Ex. 2006 ¶ 25. Accordingly, IV adopts
`
`Symantec’s proposed definition for the purpose of this IPR only. IV reserves the
`
`right to pursue a different definition in other proceedings.
`
`-3-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`III. CLAIM CONSTRUCTION
`
`A. Legal standard
`The Board applies the broadest-reasonable-interpretation standard to
`
`construe claims in an IPR. 37 C.F.R. § 42.100(b). The broadest reasonable
`
`interpretation does not mean the broadest possible interpretation. Microsoft Corp.
`
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Rather, this standard
`
`gives claim terms their ordinary and customary meanings, as understood by one of
`
`ordinary skill in the art, such that the claims as a whole receive their broadest
`
`reasonable interpretation in light of the intrinsic record. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The only exceptions to giving the
`
`words in a claim their ordinary meaning are (1) when the applicant acts as his own
`
`lexicographer; and (2) when the applicant disavows or disclaims the full scope of a
`
`claim term in the specification. Poly-America, L.P. v. API Indus., Inc., 839 F.3d
`
`1131, 1136 (Fed. Cir. 2016), petition for cert filed (U.S. March 16, 2017) (No. 16-
`
`1123).
`
`The ordinary meaning of a claim term is the meaning the term would have
`
`had to a person of ordinary skill in the art at the time of the invention after reading
`
`the entire patent. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir.
`
`2005) (en banc). Ordinary meaning may be evidenced by a variety of sources,
`
`including the words of the claims themselves, the written description, the
`
`-4-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`drawings, and extrinsic sources. Id. at 1314–19. Above all, however, the ordinary
`
`meaning must be consistent with the specification. Id. at 1315–17.
`
`“unauthorized file”
`
`B.
`The claims require “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 a plurality of identification values associated
`
`with the unauthorized files.” Claim 1 (emphases added).
`
`Symantec’s proposed construction of “unauthorized files” to mean “errant,
`
`illegal, or otherwise undesirable files” is legally incorrect because it is inconsistent
`
`with both the ordinary meaning of “unauthorized” and the specification of the ’298
`
`Patent. Ex. 2006 ¶ 35. Indeed, Symantec simply ignores the ordinary meaning and
`
`mischaracterizes the specification. Id.
`
`“Unauthorized” is a common English word with a clear-cut ordinary
`
`meaning. Id. ¶ 30. Specifically, “unauthorized” means “without authority or
`
`permission.” Id.; Ex. 2008. The broadest reasonable interpretation of “unauthorized
`
`file” should, at a minimum, incorporate this ordinary meaning of “unauthorized.”
`
`But Symantec’s proposed construction does not even acknowledge the ordinary
`
`meaning—“without authority or permission”—of “unauthorized.”
`
`-5-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`The ’298 Patent’s usage of “unauthorized files” is also consistent with
`
`incorporating “without authority or permission” into the broadest reasonable
`
`interpretation of “unauthorized file.” Ex. 2006 ¶ 31. Symantec incorrectly asserts
`
`that “the term ‘unauthorized’ only appears in the claims.” Pet. at 12. In fact, the
`
`specification of the ’298 Patent refers to unauthorized files in the following
`
`paragraph:
`
`In view of the relative ease of public access to these electronic file
`storage resources, there is also widespread abuse of Web server space
`in which users upload files that are offensive, illegal, unauthorized,
`or otherwise undesirable and thus wasteful of storage resources.
`These file types are predominantly of four types: music, video,
`software and graphics. Many such files may contain pornography in
`violation of the terms of use of the Web hosting service. Moreover,
`the copying of these files to the Web server may be in violation of
`U.S. copyright laws. Consequently, the identification and removal of
`such files represents a significant administrative burden to the Web
`hosting services. In addition, the presence of certain files (such as
`depictions of child pornography or copyrighted music files) on user
`computers on corporate networks poses great legal risks to the
`corporation.
`Ex. 1001 at 1:41–56 (emphases added). Thus, in the context of the ’298 Patent, the
`
`phrase “unauthorized files” refers to files that are stored on a computer without
`
`authorization or permission from a system administrator. Ex. 2006 ¶ 31. The ’298
`
`-6-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`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. Id.
`
`
`
`Importantly, the ’298 Patent does not define “unauthorized files” broadly
`
`enough to cover files that are merely annoying or undesirable. Id. ¶ 32. Indeed, the
`
`’298 Patent expressly distinguishes “unauthorized files” from merely “undesirable”
`
`ones. Id. While the ’298 Patent discloses a broader classifications of files—
`
`including “offensive, illegal, unauthorized, or otherwise undesirable” files—the
`
`patent claims the identification of the narrower classification of “unauthorized”
`
`files. Id.1
`
`The specification passage referencing unauthorized files also indicates that
`
`unauthorized files are an “abuse of Web server space.” Ex. 1001 at 1:43 (emphasis
`
`added). Id. ¶ 34. Significantly, the specification also describes the circumvention of
`
`advertising “such that the advertisements are not displayed” as an “additional
`
`abuse of these web hosting services,” which “rely on advertising revenue to fund
`
`1 Because a system administrator would typically not authorize the storage of
`
`illegal files on a computer, a skilled artisan would recognize that illegal files are
`
`likely unauthorized files also. But unauthorized files are not necessarily illegal. Ex.
`
`2006 ¶ 33.
`
`-7-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`their operation.” Id.; Ex. 1001 at 2:27–30 (emphasis added). In other words, the
`
`specification discloses that advertisements are authorized for the positive purpose
`
`of funding the operation of a web hosting service. Ex. 2006 ¶ 34. Thus, a
`
`construction of “unauthorized files” that includes advertisements would be
`
`unreasonable in view of the specification. Id.
`
`Accordingly, the correct construction of “unauthorized file,” under the BRI
`
`standard, is “a file stored on a computer without authority or permission from a
`
`system administrator.” Id. ¶ 29.
`
`C.
`“selecting”
`The claims require “selecting a file from a plurality of files stored in a
`
`computer storage medium.” Ex. 1001, claims 1, 10, 16 (emphasis added).
`
`“Selecting” is a common English word with a clear-cut ordinary meaning.
`
`Specifically, “selecting” means “choos[ing] (as by fitness or excellence) from a
`
`number or group.” Ex. 2006 ¶ 36; Ex. 2009. This is consistent with the express
`
`claim language: “selecting a file from a plurality of files.” Ex. 1001, claims 1, 10,
`
`16 (emphasis added). Accordingly, because the ordinary meaning of this claim
`
`phrase is apparent on its face, the Board should construe “selecting a file from a
`
`plurality of files” to mean “selecting a file from a plurality of files.” Ex. 2006 ¶ 37.
`
`However, “selecting” should not be confused with merely identifying the
`
`“plurality of files” from which the selection is to be made. Id. at ¶ 39. “Selecting a
`
`-8-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`file” refers to choosing a file, not just determining the alternatives from which to
`
`choose. Id. In the context of the ’298 Patent, a computer may, in preparation for the
`
`“selecting” step, create a list of files from which the computer can choose in the
`
`“selecting” step of the claims. Id. The list may look something like this:
`
` patent_application.doc
`
` budget.xls
`
` patent_owner_response.pdf
`
`Id. Significantly, creating the list of files defines the “plurality of files” from which
`
`the single “selected filed” is chosen in the “selecting” step. Id. But creating the list
`
`of alternatives is not “selecting.” Id.
`
`Symantec’s assertions that the prior art performs the “selecting” step rely on
`
`an implicit construction of “selecting” that is unreasonably broader than its
`
`ordinary meaning. Specifically, Symantec asserts that DeSouza selects a file by
`
`displaying a prioritized list of suspicious, questionable, or okay files and that
`
`Johnson selects a file merely by displaying a list of files with data beyond their
`
`end-of-data markers. Further, Dr. Davidson’s expert does not know what it means
`
`to “select,” undermining the credibility of his testimony that the prior art discloses
`
`this limitation. Ex. 2010 at 35:22–36:23.
`
`Therefore, to resolve any potential dispute regarding the ordinary meaning
`
`of “selecting a file from a plurality of files,” the Board should clarify that this
`
`-9-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`limitation is not satisfied by creating a list of files from which to choose. Id.
`
`In addition, the “selecting a file” limitation in each independent claim is
`
`modified by an additional limitation expressly requiring a computer or computer
`
`application—not a user—to perform the “selecting a file” function. Ex. 2006 ¶ 40.
`
`Claim 1 expressly states that this function must be performed “under control of one
`
`or more configured computer systems.” Id. This express claim language excludes
`
`“selecting a file” under a user’s control. Id. Similarly, claim 10 expressly requires
`
`“a file identification application”—again, not a user—to “provid[e] the function[]
`
`of: selecting a file.” Id. Finally, claim 16 requires instructions that “cause the
`
`computing device to perform . . . operations comprising: selecting a file.” Id.
`
`The ordinary meaning of these express claim limitations is apparent, and
`
`nothing in the specification of the ’298 Patent is inconsistent with the ordinary
`
`meaning. Id. ¶ 41. Specifically, in accordance with the ordinary meaning of the
`
`express claim language, the broadest reasonable interpretation of the claims
`
`requires a computer or computer application—not a user—to perform the
`
`“selecting a file” function. Id.
`
`IV. THE INSTITUTED CLAIMS ARE
`PATENTABLE OVER THE ALLEGED GROUNDS
`
`The claims of the ’298 patent are patentable over the alleged prior art for the
`
`reasons set forth below.
`
`-10-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`A. The claims are patentable over the DeSouza and Hoffman
`combinations.
`
`The Board instituted trial on the following grounds involving DeSouza and
`
`Hoffman:
`
`claims 1, 3, 6–10, 12, 13, and 16 are unpatentable over
`DeSouza and Hoffman,
`claims 2 and 11 are unpatentable over DeSouza, Hoffman, and
`Martins, and
`claims 4 and 14 are unpatentable over DeSouza, Hoffman, and
`Farber[.]
`Inst. Dec. at 28 (the “DeSouza and Hoffman combinations”). As explained below,
`
`however, all of these claims—1–4, 6–14, and 16—are patentable because neither
`
`DeSouza nor Hoffman teaches several of the claim limitations. Ex. 2006 ¶ 43. In
`
`addition, Symantec failed to show that a skilled artisan would have had a reason to
`
`combine DeSouza and Hoffman. Id.
`
`1.
`
`Symantec did not prove that Hoffman discloses
`characterizing unauthorized files.
`
`Each of independent claims 1, 10, and 16 requires characterizing or
`
`categorizing a file as an “unauthorized file.” Id. As explained above, the broadest
`
`reasonable interpretation of “unauthorized file” is “a file stored on a computer
`
`without authority or permission from a system administrator.” Id. ¶ 29.
`
`-11-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`Symantec relies entirely on Hoffman as allegedly teaching characterizing or
`
`categorizing a file as an unauthorized file. Pet. at 24–25. Specifically, Symantec
`
`argues:
`
`Hoffman explains that, “[i]f the computed ID [i.e., CRC for the
`selected image file] is determined to represent a ‘bad’ image – that is,
`an unwanted image which is targeted for filtering (e.g., ad image)—
`the method proceeds to kill the image.” Id., 30:35-46. In other words,
`Hoffman teaches that the selected image file is characterized as “bad”
`(i.e., unauthorized) if its CRC value or signature (i.e., identification
`value) matches one of the identification values for known “bad”
`image files. Davidson Decl., ¶130. Thus, a 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. Id., ¶131.
`
`Id. at 25. Symantec equates the so-called “bad” or “unwanted” advertising images
`
`disclosed in Hoffman with the “unauthorized files” that must be characterized or
`
`categorized in claims 1, 10, and 16 of the ’298 Patent. Id.; Ex. 2006 ¶ 46. But
`
`Symantec does not establish that Hoffman’s advertising images are “stored on a
`
`computer without authority or permission from a system administrator.” Ex. 2006 ¶
`
`46. Moreover, Symantec does not offer any construction for “unauthorized file”
`
`that would cover Hoffman’s advertising images.
`
`-12-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`
`
`Indeed, the extent of Symantec’s analysis of whether Hoffman’s “bad” or
`
`“unwanted” advertising images are “unauthorized files” as required by claims 1,
`
`10, and 16 is to put the labels “bad,” “unwanted,” and “unauthorized” in close
`
`proximity to each other and hope that the reader will assume that these terms are
`
`synonymous. Pet. at 25 (using phrases “‘bad’ (i.e., unauthorized)” and
`
`“unauthorized file (e.g., bad or unwanted image).)” The declaration of Symantec’s
`
`expert is no better, using exactly the same technique of attempting to associate
`
`“unauthorized” with “bad” or “unwanted.” Ex. 1011 ¶¶ 130–132.
`
`Symantec’s cursory analysis is flawed because neither “bad” nor
`
`“unwanted” means “unauthorized.” Ex. 2006 ¶ 47. While both “bad” and
`
`“unwanted” convey the concept that Hoffman’s advertisements are “undesirable,”
`
`they do not convey that the advertisements are placed “without authority or
`
`permission” as required by the ordinary meaning of “unauthorized.” Id. Moreover,
`
`the ’298 Patent expressly distinguishes “undesirable files,” which are disclosed but
`
`not claimed, from “unauthorized files,” which are claimed. See Ex. 1001 at 1:41–
`
`56 (“users upload files that are offensive, illegal, unauthorized, or otherwise
`
`undesirable and thus wasteful of storage resources”) (emphasis added).
`
`Symantec’s attempt to modify the narrower claim phrase “unauthorized files” to
`
`read on the broader phrase “undesirable files” should be rejected.
`
`-13-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`
`
`Further, an analysis of how Hoffman determines that advertisements are
`
`“bad” or “unwanted” confirms that those advertisements are not “unauthorized” as
`
`required by the ’298 Patent. Hoffman discloses that so-called “bad” images are
`
`simply ones that the end-user—that is, the person using a web browser—prefers
`
`not to see. Ex. 2006 ¶ 48. The portion of Hoffman Symantec relies on discloses:
`
`If the computed ID is determined to represent a ‘bad’ image—that is,
`an unwanted image which is targeted for filtering (e.g., ad image)—
`the method proceeds to kill the image at lines 620–631.
`Ex. 1005 at 30:37–41 (emphasis added). This portion does not teach anything more
`
`than the user being able to filter out advertisements based on his or her personal
`
`preferences. Ex. 2006 ¶ 48. Indeed, other portions of Hoffman make it abundantly
`
`clear that Hoffman’s filtering is based on the user’s personal preferences. Id. For
`
`example, Hoffman discloses:
`
`Of particular interest, the system 220 includes a Filter module 225 of
`the present invention. The Filter 225 manages content of Web pages
`downloaded from the Internet (or Intranet) by a user, according to
`user-configurable filter settings.
`Ex. 1005 at 5:13–17 (emphasis added).
`
`In an exemplary embodiment, the Filter method provides handlers for
`specific processing of various HTML tags, all operating according to
`user-configurable filtering preferences.
`Id. at 3:51–54 (emphasis added).
`
`-14-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`Accordingly, there is great interest in developing techniques which
`speed up the process of browsing Web content or “Web surfing,”
`including decreasing the background noise (e.g., ancillary graphics)
`which are not desired by the user.
`Id. at 2:63–67 (emphasis added).
`
`
`
`Accordingly, Hoffman consistently describes the advertisements that the
`
`user can choose to filter as annoying or undesirable to the user, but never says the
`
`advertisements violate any policy or are otherwise “unauthorized” to be on the
`
`computer. Ex. 2006 ¶ 49. Because the filtered advertisements disclosed by
`
`Hoffman are not “files stored on a computer without authority or permission from
`
`a system administrator,” they are not “unauthorized files” as properly construed
`
`under the BRI standard. Id.
`
`
`
`Therefore, Hoffman does not disclose the limitations of claims 1, 10, and 16
`
`that require characterizing or categorizing a file as an “unauthorized file.” Id. ¶ 50.
`
`Because Symantec does not even allege that DeSouza or any other reference
`
`combined with Hoffman meets this limitation, Symantec has failed to meet its
`
`burden to prove the claims unpatentable in view of the DeSouza and Hoffman
`
`combinations. Id. The Board should find claims 1–4, 6–14, and 16 patentable over
`
`the DeSouza and Hoffman combinations. Id.
`
`-15-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`2.
`
`Symantec did not prove that Hoffman discloses comparing
`an identification value of the selected file with identification
`values associated with unauthorized files.
`
`For two reasons, Symantec failed to prove that Hoffman discloses
`
`comparing an identification value of the selected file with identification values
`
`associated with unauthorized files. First, as explained above in Section IV(A)(1),
`
`Hoffman does not deal with “unauthorized files” because the advertisements that
`
`Hoffman blocks are merely annoying or undesirable, not unauthorized.
`
`Accordingly, for the same reason that Hoffman does not disclose characterizing or
`
`categorizing unauthorized files, it also does not disclose comparing identification
`
`values of unauthorized files with anything.
`
`Second, even if Hoffman disclosed characterizing or categorizing
`
`“unauthorized files”—which it does not—Symantec did not prove that such
`
`characterization includes comparing an identification value of the selected file with
`
`identification values associated with unauthorized files. Every independent claim
`
`includes a limitation requiring such a comparison.
`
`Symantec’s argument that Hoffman discloses the comparing limitation is on
`
`pages 24–26 of the Petition. Symantec relies on column 30, lines 35–46 of
`
`Hoffman and Dr. Davidson’s conclusion that:
`
`In my opinion, one of ordinary skill would have understood that
`Hoffman teaches characterizing the image file as unauthorized or
`
`-16-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`(“bad”) if its CRC value or signature (i.e., identification value)
`matches one of the identification values for image files that are known
`to be “bad.”
`Ex. 1011 ¶ 131 (cited by Pet. at 25); see also Ex. 1011 ¶¶ 128–134. Symantec
`
`argues:
`
`In other words, Hoffman teaches that the selected image file is
`characterized as “bad” (i.e. unauthorized) if its CRC value or
`signature (i.e. identification value) matches one of the identification
`values for known “bad” image files. Davidson Decl., ¶ 130. Thus, a
`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. Id., ¶ 131.
`Pet. at 25. Both this argument and the portions of Dr. Davidson’s declaration upon
`
`which it relies are entirely conclusory, however. Symantec failed to adequately
`
`explain how Hoffman discloses the comparing limitation and, thus, Symantec
`
`failed to meet its burden.
`
`3.
`
`Symantec did not prove that DeSouza teaches a computer
`or computer program “selecting a file.”
`
`As explained above, the claims of the ’298 Patent require a computer or
`
`computer program to performing the “selecting a file” claim limitation. The claims
`
`are not satisfied by a user selecting a file.
`
`-17-
`
`

`

`IPR2016-01433
`Symantec v. Intellectual Ventures
`
`Symantec’s DeSouza and Hoffman combinations rely entirely on DeSouza
`
`as allegedly teaching the “selecting a file” limitation. But Symantec did not prove
`
`that DeSouza meets the “selecting a file” limitation. In fact, DeSouza expressly
`
`teaches that a user—not a computer or computer program as