Trials@uspto.gov
`571-272-7822
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`Paper No. 37
`Entered: November 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`____________
`
`
`
`Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`and
`DECISION DENYING PATENT OWNER’S MOTION TO STRIKE
`
`
`
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`571-272-7822
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`Paper No. 37
`Entered: November 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`____________
`
`
`
`Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`and
`DECISION DENYING PATENT OWNER’S MOTION TO STRIKE
`
`
`
`
`
`
`
`IPR2017‐01342
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`Patent 8,661,498 B2
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`INTRODUCTION
`I.
`Zscaler, Inc. (“Petitioner” or “Zscaler”) filed a Petition (Paper 3,
`“Pet.”) requesting inter partes review of claims 1, 2, 13–15, 21, 23–28, and
`35–39 (hereinafter the “challenged claims”) of U.S. Patent No. 8,661,498 B2
`(Ex. 1001, “the ’498 patent”) pursuant to 35 U.S.C. §§ 311–319. Symantec
`Corporation (“Patent Owner” or “Symantec”) filed a Patent Owner
`Preliminary Response (Paper 9, “Prelim. Resp.”).
`On November 16, 2017, based on the record before us at that time, we
`instituted an inter partes review of only claims 1, 2, 13, 28, and 39. Paper
`10 (“Decision” or “Dec.”), 27.
`On February 1, 2018, Patent Owner filed a Patent Owner Response
`(Paper 14, “PO Resp.”) in which Patent Owner noted its filing of a statutory
`disclaimer (Ex. 2007) of claims 1, 2, 13, 28, and 39 and requested
`termination of this proceeding. PO Resp. 1. On February 13, 2018,
`Petitioner filed a Reply (Paper 15, “Reply”) in which Petitioner requested
`that we interpret Patent Owner’s Response as a request for adverse judgment
`against Patent Owner under 37 C.F.R. § 42.73(b)(2). Reply 2.
`Responsive to the Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we issued an Order on May 7, 2018,
`modifying our Decision to institute review of all claims and all grounds and
`instructed the parties to confer regarding any need for further briefing and
`changes to the schedule for trial. Paper 17 (“SAS Order”). Responsive to
`our instructions, the parties filed a Joint Motion to Amend Schedule
`proposing a revised schedule and, impliedly, requesting additional briefing.
`Paper 19 (“Motion”). Responsive to the Motion, we granted the requested
`schedule changes (with some adjustments), authorized Patent Owner to file a
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`Supplemental Response addressing the newly instituted claims (claims
`previously denied review for lack of a reasonable likelihood of prevailing),
`and authorized Petitioner to file a Supplemental Reply addressing issues
`raised by Patent Owner’s Supplemental Response. Paper 20. Responsive to
`the parties’ request in a conference call, we issued an Order to increase the
`number of pages for each party’s supplemental brief from 15 pages to 50
`pages. Paper 21. Patent Owner filed its Supplemental Response (Paper 22,
`“Supp. Resp.”) and Petitioner filed its Supplemental Reply (Paper 24,
`“Supp. Reply”).
`In a conference call on August 13, 2018, Patent Owner requested, and
`received, authorization to file a Motion to Strike Petitioner’s Supplemental
`Reply as improperly containing new arguments. Patent Owner filed the
`authorized Motion to Strike (Paper 27) and Petitioner filed its authorized
`Opposition to the Motion to Strike (Paper 32).
`Oral Argument was conducted on September 6, 2018, and a transcript
`of that hearing is of record. Paper 36 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The Petitioner has the
`burden of proving unpatentability by a preponderance of the evidence. See
`35 U.S.C. § 316(e); see also 37 C.F.R. § 42.1(d). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`shown by a preponderance of the evidence that claims 14 and 15 are
`unpatentable but has not shown by a preponderance of the evidence that
`claims 21, 23–27, and 35–38 are unpatentable.
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`Real Parties in Interest and Related Matters
`A.
`The Petition identifies Zscaler, Inc. as the sole real party in interest.
`Pet. 39. Both Petitioner and Patent Owner identify a related litigation matter
`captioned Symantec Corp. v. Zscaler, Inc., Case No. 1:16-cv-1176-SLR-
`SLF, filed in the U.S. District Court for the District of Delaware. Pet. 39;
`Paper 5, 2.
`
`
`The ’498 Patent
`B.
`The ’498 patent generally relates to detecting preselected data in
`messages transmitted over a network. Ex. 1001, 1:9–11. According to the
`’498 patent, known systems for content filtering may monitor or restrict web
`traffic to certain identified sites and/or may block email messages containing
`certain restricted words or proprietary information. Id. at 4:15–26. The ’498
`patent discloses methods and structures to search for such restricted data
`(e.g., “preselected” data) through use of an abstract data structure to
`represent the proprietary/restricted data. Id. at 4:30–37. In one embodiment
`of the ’498 patent, an abstract data structure may be an index that represents
`preselected data in a database to be protected from transmission over a
`network. Id. at 6:43–48. This exemplary abstract data structure may contain
`a hash value and other parameters that, collectively, represent data at a
`particular location in a database and can be used to search messages (e.g.,
`email or web exchanges) to determine whether the preselected data
`corresponding to the hash value is being transmitted improperly. Id. at
`6:48–58.
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`C. Disclaimed Claims
`As noted supra, Patent Owner filed a statutory disclaimer of claims 1,
`2, 13, 28, and 39. PO Resp. 1–2; Ex. 2007. Petitioner filed a Reply arguing
`that the statutory disclaimer be construed as a request for adverse judgment
`by Patent Owner pursuant to our rules. Reply 1 (citing 37 C.F.R.
`§ 42.73(b)(2) which states: “[a]ctions construed to be a request for adverse
`judgment include: . . . [c]ancellation or disclaimer of a claim such that the
`party has no remaining claim in the trial”). At the time that Petitioner filed
`its Reply, it was true that all claims for which review had been instituted
`were disclaimed, thus, leaving “no remaining claim in the trial.” However,
`Petitioner’s request for adverse judgment was taken up by this panel after
`our SAS Order issued, an order that added claims to the trial for which
`review had been earlier denied. Thus, at the time the Board considered
`Petitioner’s Reply requesting adverse judgment be entered against Patent
`Owner, there were claims remaining in the trial. Following entry of our SAS
`Order, there is no basis to enter an adverse judgment because claims
`remained to be adjudicated in the trial.
`Regardless, it is sufficiently clear that, at a minimum, the disclaimed
`claims (1, 2, 13, 28, and 39) are cancelled and, thus, no longer at issue in this
`case. See 37 C.F.R. § 1.321. However, remaining challenged claims 14 and
`15 depend from cancelled claim 13, which, in turn, depends from cancelled
`claim 1. Remaining challenged claims 21 and 23–27 depend from cancelled
`claim 1 and remaining challenged claims 35–38 depend from cancelled
`claim 28. Therefore, we consider the arguments directed to the disclaimed
`(now cancelled) claims 1, 13, and 28 because the remaining challenged
`claims incorporate the features of those respective base claims.
`
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`Illustrative Claims
`D.
`Claims 1, 28, and 39 (all cancelled) are the independent claims of the
`’498 patent. Independent claims 1 and 28, reproduced below, are illustrative
`of the remaining challenged claims:
`1. A method comprising:
`identifying, by a message monitoring system (MMS), an
`abstract data structure derived from preselected data to be
`protected from traveling across a network, the abstract data
`structure not revealing data elements of the preselected data to
`be protected;
`performing, by the MMS, content searches on a plurality
`of messages electronically transmitted to reach a respective
`destination over the network, the content searches to be
`performed to determine whether one or more of the plurality of
`searched messages contain at least a portion of the preselected
`data to be protected using the abstract data structure that does not
`reveal the data elements of the preselected data; and
`causing a searched message of the plurality of searched
`messages to be prevented from reaching the respective
`destination in response to a determination that the searched
`message contains at least a portion of the preselected data to be
`protected.
`Remaining claims 14, 15, 21, and 23–27 depend, directly or indirectly, from
`claim 1.
`
`28. A preselected data protection system comprising:
`a policy management computer system to set a policy
`identifying preselected data to be protected from traveling across
`a network and to derive an abstract data structure from the
`preselected data to be protected, the abstract data structure not
`revealing data elements of the preselected data to be protected;
`and
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`a message monitoring computer system to implement the
`policy by
`
`performing content searches on a plurality of
`messages electronically transmitted to reach a respective
`destination over the network, the content searches to be
`performed to determine whether one or more of the
`plurality of searched messages contain at least a portion of
`the preselected data to be protected using the abstract data
`structure that does not reveal the data elements of the
`preselected data; and
`preventing a searched message of the plurality of
`searched messages
`from
`reaching
`the
`respective
`destination in response to a determination that the
`searched message contains at least a portion of the
`preselected data to be protected.
`Remaining claims 35–38 depend from claim 28.
`
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`Alleged Grounds of Unpatentability
`E.
`The Petition sets forth the following asserted grounds of
`unpatentability:
`Challenged Claims
`Basis
`Reference(s)
`102(b) 1, 2, 13, 21,2 23–28, and 35–39
`Peled1
`103(a) 13–15, 26, and 35–38
`Peled and Liddy3
`Pet. 8. Petitioner relies on the Declaration of Dr. Marcus Jakobsson
`(Ex. 1003) in support of its contentions. Patent Owner relies on the
`Declarations of Dr. Sandeep Chatterjee (Exs. 2002, 2015) in support of its
`contentions.
`
`
`
`
`1 U.S. Patent No. 7,681,032 B2. Ex. 1008 (“Peled”).
`2 The Petition requests inter partes review of claims 1, 2, 13, 23–28, and 35–
`39 (excluding claims 14, 15, and 21). Pet. 1. Later, the Petition “requests”
`inter partes review in a first ground for claims 1, 2, 13, 23–28, and 35–39
`and in a second ground for claims 13–15, 26, and 35–38. Id. at 8. Thus, the
`Petition adds claims 14 and 15 in the second asserted ground but never
`“requests” review of claim 21. However, the Petition includes dependent
`claim 21 in its analysis for the first ground (id. at 29) and includes claims 14
`and 15 in its analysis for the second ground (id. at 34–35) but did not request
`inter partes review for claim 21 (id. at 1, 8). Patent Owner’s Preliminary
`Response responded to Petitioner’s assertions regarding claims 14, 15, and
`21. Prelim. Resp. 37–38, 49–52. Therefore, we find Petitioner’s failure to
`include claims 14, 15, and 21 in the formal “request” for review is harmless
`error and we consider the parties’ arguments regarding claims 14, 15, and
`21.
`3 U.S. Patent No. 6,829,613 B1. Ex. 1010 (“Liddy”).
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`II. ANALYSIS
`A. General Legal Principles
`1.
`Anticipation
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). Each element of the challenged claim must be found, either
`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
`Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). While the
`elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive
`question is whether one skilled in the art would reasonably understand or
`infer from a prior art reference that every claim element is disclosed in that
`reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–
`UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). Still further, “it
`is proper to take into account not only specific teachings of the reference but
`also the inferences which one skilled in the art would reasonably be
`expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
`
`
`Obviousness
`2.
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter[,] as a whole[,] would have been obvious at the time
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`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations.4 Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`
`Level of Ordinary Skill in the Art
`3.
`Petitioner argues a person of ordinary skill in the art related to the
`’498 patent would have a Bachelor’s Degree in computer engineering,
`computer science, or the equivalent, and two years of experience in
`computer security. Pet. 9 (citing Ex. 1003 ¶ 27).
`In its Preliminary Response, Patent Owner suggested a higher level of
`skill of at least two to four years of experience in “network security,
`distributed computer systems, or a related technology field.” Prelim. Resp.
`9–10. Patent Owner’s Response does not address the level of skill in the art
`but its Supplemental Response argues, “Petitioner and Patent Owner have
`presented different levels of ordinary skill in the art.” Supp. Resp. 5. The
`“different” level asserted by Patent Owner presumably refers to the
`argument presented in its Preliminary Response. Our orders make clear that
`
`
`4 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Response or Supplemental Response. Therefore,
`without any evidence regarding secondary considerations of non-
`obviousness in the record, secondary considerations do not constitute part of
`our analysis.
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`an argument in the Preliminary Response that is not repeated in the
`Response (or in the later authorized Supplemental Response) is waived. See
`Paper 11, 3. Thus, Patent Owner’s arguments in the Preliminary Response
`regarding the level of skill in the art are waived. Regardless, Patent Owner
`argues in its Supplemental Response that the alleged differing levels do not
`impact our decisions in this proceeding. Supp. Resp. 5.
`We are persuaded by Petitioner’s definition of the level of ordinary
`skill in the art and we find this definition is commensurate with the level of
`ordinary skill in the art as reflected in the prior art. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
`findings on the level of skill in the art does not give rise to reversible error
`where the prior art itself reflects an appropriate level and a need for
`testimony is not shown.” (internal quotation marks omitted)); In re GPAC
`Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`Therefore, we define the level of ordinary skill in the art, at the time
`of the ’498 patent, to include a Bachelor’s degree in computer engineering or
`computer science and at least two years of experience in computer security.
`
`
`Claim Construction
`4.
`As a step in our analysis of patentability, we determine the meaning of
`the claims for this Decision. In an inter partes review, a claim in an
`unexpired patent, as is the case here, shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2142–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard).
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`Under the broadest reasonable construction standard, claim terms are
`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). “[A] claim construction analysis must begin and remain centered on
`the claim language itself.” Innova/Pure Water, Inc. v. Safari Water
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). “Though
`understanding the claim language may be aided by the explanations
`contained in the written description, it is important not to import into a claim
`limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV
`Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Only terms that are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Aside from the following term, we determine that it is unnecessary to
`construe any other claim terms.
`
`
`“Abstract Data Structure”
`All claims recite the use of an “abstract data structure” for detecting
`the presence of preselected data in messages. Specifically, for example,
`claim 1 recites “identifying . . . an abstract data structure derived from
`preselected data to be protected from traveling across a network, the abstract
`data structure not revealing data elements of the preselected data to be
`protected.” Petitioner proffers an interpretation that “abstract data structure”
`means “a structure for storing or organizing data that does not contain
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`fragments or copies of the preselected data to be protected.” Pet. 9. In its
`Preliminary Response, Patent Owner asserts no construction of “abstract
`data structure” is necessary because “the term is clear on its face.” Prelim.
`Resp. 13.5 Patent Owner contends the claims already make clear that an
`abstract data structure is one that does “not reveal[] elements of the
`preselected data to be protected.” Id. (alteration in original) (quoting claim
`1). Patent Owner further asserts “construction of the term is not necessary to
`resolve the parties’ dispute in this IPR.” Id. Patent Owner’s Supplemental
`Response does not address construction of this term.
`Claim interpretation focuses on the claim itself. Innova, 381 F.3d at
`1116. “Under a broadest reasonable interpretation, words of the claim must
`be given their plain meaning, unless such meaning is inconsistent with the
`specification and prosecution history.” Trivascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). Accordingly, we construe “abstract data
`structure” based on the plain meaning of a data structure and based on the
`context of the claims. Specifically, we determine that “data structure” is a
`term of art well understood by the ordinarily skilled artisan as evidenced by
`the Microsoft Computer Dictionary. See Pet. 9–10 (citing Ex. 1011, 110
`(defining data structure as “an organizational scheme, such as a record or an
`array, applied to data so that it can be interpreted and so that specific
`operations can be performed upon that data”)); see also Ex. 1003 ¶¶ 43–44.
`In addition, the context of the term in claim 1 clearly indicates that an
`abstract data structure is a data structure that is “derived from preselected
`
`
`5 We do not depend on Patent Owner’s remarks in its Preliminary Response
`because arguments not repeated in the Patent Owner’s Response are waived.
`Paper 11, 3.
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`data to be protected from traveling across a network [and does] not reveal[]
`data elements of the preselected data to be protected.”
`Thus, we interpret abstract data structure to mean “any data structure
`that is derived from preselected data to be protected from traveling across a
`network and does not reveal data elements of the preselected data to be
`protected.”
`
`
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`Patent Owner’s Motion to Strike
`B.
`Patent Owner moves to strike arguments in Petitioner’s Supplemental
`Reply contending “Petitioner’s Reply supplied arguments necessary for its
`prima facie case for the first time, using PO’s responses and the Board’s
`Institution Decision as roadmaps.” Paper 27, 2. Patent Owner identifies
`alleged new arguments directed to claims 14, 15, 21, 23, 26, and 35–38, but
`does not clarify precisely what portions of Petitioner’s Supplemental Reply
`it is requesting be stricken.
`In an update to our Trial Practice Guide, the Board has indicated,
`In most cases, the Board is capable of identifying new issues or
`belatedly presented evidence when weighing the evidence at the
`close of trial, and disregarding any new issues or belatedly
`presented evidence that exceeds the proper scope of reply or sur-
`reply. As such, striking the entirety or a portion of a party’s brief
`is an exceptional remedy that the Board expects will be granted
`rarely.
`Trial Practice Guide August 2018 Update, p. 17–18, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_
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`Practice_Guide.pdf (“TPG Update”).6 Here, we discern no need to strike
`any portions of Petitioner’s Supplemental Reply. Instead, our analysis
`identifies and disregards, where appropriate, any new arguments. Thus, we
`deny Patent Owner’s motion to strike.
`
`
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`Anticipation by Peled
`C.
`The Petition asserts claims 1, 2, 13, 21, 23–28, and 35–39 are
`anticipated by Peled. Pet. 12–30.
`
`
`Peled (Ex. 1008)
`1.
`Peled “relates to monitoring transport of digital content, particularly
`but not exclusively for the enforcement of digital copyright, secrecy and
`confidentiality.” Ex. 1008, 1:15–17. Specifically, Peled discloses
`inspecting and analyzing computer network traffic to detect the transmission
`of unauthorized/restricted content. Id. at 3:1–3. The detection extracts
`features from content transmitted over the network and compares those
`features to features in a database extracted from content that is to be
`protected from unauthorized transmission. Id. at 3:4–10. In one
`embodiment of Peled, a database stores signatures that are extracted from
`restricted content to be monitored on the network. Id. at 3:25–28.
`
`
`6 We further note the Board’s published Frequently Asked Questions clarify
`that “the Petitioner will receive a limited opportunity for supplemental
`briefing, to respond to the Institution Decision, regardless of whether Patent
`Owner says anything about the claims or grounds added to the proceeding.”
`See USPTO, SAS Q & A (2018), https://www.uspto.gov/sites/default/files
`/documents/sas_qas_20180605.pdf (“SAS Q & A”).
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`Peled’s Figure 1 is reproduced below.
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`Peled’s Figure 1 is a simplified block diagram of a system for
`detecting unauthorized transport of restricted content. Id. at 11:64–67.
`Inbound content (“inward transport” 101) is received at inspection point 102,
`in which extractor 1021 extracts a signature of the received content. Id. at
`12:1–5. The signature extracted from an inbound packet is compared with
`previously extracted signatures from restricted content stored in database
`104. Id. at 12:26–28. The extracted signatures may be “the output of a hash
`function” applied to the data payload of a packet. Id. at 13:3–6. Signature
`search and comparison mechanism 103 compares the extracted signature
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`from inbound content 101 with previously extracted signature in database
`104. Id. at 12:28–30. When a match is detected, policy determinator 106 in
`conjunction with policy enforcement subsystem 107 determine an
`appropriate action in response to the unauthorized transmission including,
`for example, blocking the transmission of the unauthorized transmission
`through outward transport 108. Id. at 12:36–55.
`
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`Independent Claims 1, 28, and 39
`2.
`As noted supra, claim 39 is cancelled and no remaining challenged
`claims depend from claim 39. Thus, we need not reach the issue of
`unpatentability of claim 39. Although independent claims 1 and 28 are
`cancelled, all remaining challenged claims depend (directly or indirectly)
`from these two independent claims and, thus, incorporate these recited
`features. Therefore, we address the parties’ arguments relating to claims 1
`and 28 because they apply to their respective dependent claims.
`Regarding independent claim 1, Petitioner identifies each element in
`the disclosures of Peled. Pet. 12–22. In particular, Petitioner identifies
`Peled’s database 104 (which stores previously extracted signatures) as the
`claimed “abstract data structure.” Id. at 16–17. Petitioner argues Peled’s
`extracted signatures (signatures extracted from inbound packets as they are
`received or signatures previously extracted and stored in database 104) do
`not reveal the data elements of the preselected data to be protected as
`required of the recited abstract data structure. Id. at 17. Petitioner further
`argues, in one embodiment, the signatures are the output of a hash function
`such as a 64-bit cyclic redundancy check (“CRC”) value that is generally
`non-invertible. Id. at 17–18 (citing Ex. 1001, 13:2–11, 13:3–6, 13:9–11,
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`13:16–23; Ex. 1003 ¶¶ 40, 51–52). Petitioner argues Peled’s comparison of
`a signature (extracted from a received inbound transport) with the extracted
`signatures stored in the database discloses the recited step of performing
`content searches. Id. at 18–21. Lastly, Petitioner argues the step of
`preventing the searched message from reaching its destination is disclosed
`by Peled’s policy determinator 1067 and policy enforcement subsystem 107
`by actions such as stopping the transport of the message. Id. at 21–22.
`Patent Owner argues the Petition fails to establish anticipation of
`claim 1 (and claim 28) because there is no express disclosure of the claimed
`“abstract data structure not revealing data elements of the preselected data to
`be protected” and the Petition does not argue the feature is inherent in Peled.
`See Supp. Resp. 12–24. In particular, Patent Owner argues the Petition fails
`to identify in Peled an abstract data structure as recited in the claims because
`Peled’s database 104 fails to meet the “not revealing” requirement of the
`claimed abstract data structure. Id. at 12–18. More specifically, Patent
`Owner argues there is no express disclosure in Peled that database 104 does
`not contain the underlying data or contains only the signatures. Id. at 14.
`Patent Owner contends Petitioner’s expert admitted in his deposition that
`Peled “fails to describe that the database does not have information other
`than the signatures.” Id. (citing Ex. 2008, 90:13–17, 90:19–22). Patent
`Owner points to several of the citations Petitioner relies on in Peled and
`argues these portions never expressly disclose that the underlying data to be
`protected is not revealed. Id. at 15–17 (citing Ex. 2015 ¶¶ 45, 46). Dr.
`Chatterjee’s Declaration regarding contents of Peled’s database primarily
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`7 We note as harmless error that Petitioner mislabeled determinator 106 as
`reference number 107. Pet. 21.
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`focuses on the lack of any express language in Peled that its database only
`contains the signatures or that the database does not contain the underlying
`data to be protected. Ex. 2015 ¶¶ 44–49. In the absence of such express
`disclosure, Dr. Chatterjee concludes “one of ordinary skill would have
`understood that Peled’s databases include the content to be protected.” Id.
`¶ 44; see also id. ¶ 49.
`In its Supplemental Reply, Petitioner argues the ordinarily skilled
`artisan would have understood Peled’s disclosures of a “database of
`signatures” to mean a database of signatures but devoid of the underlying
`data from which the signatures are extracted—thus, not revealing the
`preselected data as claimed. Supp. Reply 8–9. Petitioner further argues
`Patent Owner’s position would have merit if there were “anything in Peled
`suggesting a reason to store both signatures and the underlying content
`together in the same database.” Id. at 10. Petitioner contends Patent Owner
`has not identified any such disclosure in Peled. Id. Petitioner further
`contends “[i]t would be unnecessary, inefficient, and indeed self-defeating to
`superfluously store both signatures and the underlying contents from which
`the signatures were derived in the signature database.” Id.
`We are persuaded by Petitioner’s arguments. As noted supra, the
`dispositive question is whether one skilled in the art would reasonably
`understand or infer from a prior art reference that every claim element is
`disclosed in that reference. Eli Lilly, 849 F.3d at 1074–75; see also Preda,
`401 F.2d at 826. Dr. Jakobsson’s testimony in his deposition explains that
`the ordinarily skilled artisan would have understood that the only
`information required in Peled’s signature database is the signatures extracted
`from the content to be protected—other information would be superfluous to
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`the purpose of the signature database. See, e.g., Ex. 2008, 90:1–8, 100:8–16,
`110:7–11, 113:15–114:16, 117:2–18. We agree. Peled could have matched
`the protected information per se with a transmission rather than extracted
`signatures of each but, instead, creates a signature from the protected
`information, stores the signatures in a database, and uses those stored
`signatures to match with a signature of transmitted information to detect a
`violation. See, e.g., Ex. 1008, Abstract (“a signature extractor, associated
`with said transport data monitor, for extracting a derivation of said data, said
`derivation being indicative of content of said payload”), 12:26–28 (“The
`extracted signature is compared to previously extracted illegal content
`signatures, which have been stored in a preferably pre-sorted database
`104.”), 12:64–66 (“FIG. 2 illustrates a subsystem for detection of the
`presence of unauthorized content, based on extracted binary signatures.”),
`19:59–65 (“Signatures are then extracted from the data in any of the ways
`explained above and transferred to the central control of the monitoring
`system 910. The signatures are then analyzed by the signature analyzer
`9101 and compared with stored signatures to determine whether the
`monitored transport shows any significant level of correspondence with any
`of the content items represented by the stored signatures.”).
`Patent Owner’s alleged “admissions” by Petitioner’s expert, are not
`persuasive because they are lacking context. Patent Owner’s Counsel and
`Dr. Jakobsson engage in an extensive colloquy regarding the content of
`Peled’s database 104. See Ex. 2008, 86:6–119:11. An enlightening
`exchange occurs near the end of that lengthy discussion (objections and
`individual names omitted):
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