`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`
`ZSCALER, INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`___________
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`____________
`
`Record of Oral Hearing
`Held: August 8, 2019
`____________
`
`
`
`
`Before JEFFREY S. SMITH, BRYAN F. MOORE, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JARED BOBROW, ESQUIRE
`DONALD DAYBELL, ESQUIRE
`Orrick, Herrington & Sutcliffe LLP
`1000 Marsh Road
`Menlo Park, CA 92614
`
`
`
`
`
`
`
`
`
`
` ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`CHAD WALTERS, ESQUIRE
`MORGAN GRISSUM, ESQUIRE
`Baker Botts, LLP
`2001 Ross Avenue
`Dallas, TX 75201
`
`
`
`The above-entitled matter came on for hearing on Thursday, August 8,
`2019, commencing at 2:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia, before Chris Hofer, Notary Public.
`
`
`
`
`
` 2
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`
`
`
`
`
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE SMITH: Good afternoon. Welcome to the
`
`
`Patent Trial and Appeal Board. We're here for two cases IPR
`2018-00916 and IPR 2018- 00920. We' ll hear IPR 2018- 00916
`first and we'll take a ten minute break and we'll hear the second
`case. Each side will get 30 minutes and each side may reserve
`time for rebuttal if you so desire.
`
`
`Petitioner, please step up to the podium and state your
`appearance.
`
`
`MR. BOBROW: Good afternoon. My name is Jared
`Bobrow representing the Petitioner Zscaler and with me is Don
`Daybell.
`
`
`rebuttal?
`MR. BOBROW: On the 249 yes, I'd like to reserve
`
`
`ten minutes please.
`
`
`JUDGE SMITH: Okay. Thank you. Patent Owner,
`please step up to the podium and state your appearance.
`
`
`MR. WALTERS: Good afternoon, Your Honor. For
`Patent Owner my name is Chad Walters and with me is my
`colleague Morgan Grissum.
`
`
`JUDGE SMITH: Do you wish to reserve time for
`rebuttal?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`JUDGE SMITH: Do you wish to reserve time for
`
`
`
`
`
` 3
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`MR. WALTERS: I would like to reserve ten minutes
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`
`
`please.
`JUDGE SMITH: Thank you. Petitioner, you may
`
`
`begin when ready.
`
`
`MR. BOBROW: Thank you very much and may it
`please the Board. I'd like to begin simply by outlining the
`disputes as they pertain to the 249 patent and there are really two
`sets of disputes. One relates to the applicability of Section 112
`paragraph 6 and there are several disputes that we'll get to, and
`then the second set relates to the teachings of the prior art, the
`AppletTrap manual.
`
`
`So if I can begin first of all with the first issue as it
`relates to the applicability of Section 112 paragraph 6 and I'm on
`slide 7, specifically there are a couple of issues here and the first
`issue that the Patent Owner raises is a suggestion that somehow
`the petition is deficient because it did not address 112 paragraph
`6 and did not perform a means plus function analysis comparing
`corresponding structure and the like in the petition and we
`submit that that's simply incorrect and the reason simply is that
`none of the claims actually include the word means. There is no
`mention of means in the claims whatsoever and as a result of that
`Williamson, the Federal Circuit case from 2015 provides that
`there is a presumption that 112 6 does not apply in that
`circumstance. Because of that presumption there was no reason
`to address the applicability of 112 6 in the petition and as the
`
`
`
`
` 4
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`Board noted in its Institution decision it expected the parties to
`address this issue in the subsequent briefing and that's exactly
`what the parties did. There's no surprise, there's no unfairness,
`there's no prejudice here. Both sides had a chance to depose
`experts, both sides had a chance to brief the issue.
`
`
`So now turning to the applicability of Section 112
`paragraph 6, it is Petitioner's position that Section 112 paragraph
`6 does not apply to these claims. There are in a sense three, I'll
`call them sets of claims, that include different terms over which
`the parties have disputes on the applicability of 112 paragraph 6
`and if I may begin first of all with the claims that include the
`phrase "the blocking scanning manager." Now claims 1 and 12
`include this phrase and it's important to note at the outset that
`both of those claims are method claims and may I mention to the
`bench by the way, the clock isn't -- I don't know if the clock has
`been activated, it's still showing zero.
`
`
`JUDGE SMITH: Oh, I'm keeping track. At 2:23
`that'll be 20 minutes --
`
`
`MR. BOBROW: Oh, okay.
`
`
`JUDGE SMITH: (Indiscernible.)
`
`
`MR. BOBROW: Thank you. And so - -
`
`
`JUDGE SMITH: Just one thing. When you refer to
`slides can you include the slide numbers so that the court
`reporter can (indiscernible.)
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`MR. BOBROW: Yes, thank you very much. Thank
`
`
`you. So turning to slide 10, I think it's important to note as to
`claims 1 and 12 that both of those are method claims to which
`typically means plus function does simply not apply but as it
`relates to these claims in particular, there are a few instances
`where the Federal Circuit has said that means plus function
`analysis applies notwithstanding the fact that the claim is a
`method claim. But it limits that quite severely and essentially
`what the law says there is that the only time that means plus
`function applies to a method claim is when first of all there is
`some sort of an insufficient structural element referred to in the
`claim and secondly, when that insufficient structural element is
`nonetheless important to the scope of the claim. The Federal
`Circuit cases talk about it being important to the point of novelty
`of the claim and here neither of those criteria are met.
`
`
`First of all, as it relates to the point of novelty that's
`not what these claims are about, the " blocking scanning
`manager". What the novelty is is actually the method, the steps
`that are outlined in terms of the detection of attempted malicious
`behavior, the blocking of that behavior, the generation of a hash
`or a signature, the reporting of that, that's what the point of
`novelty is, not the software routine here or the executable is
`actually doing that, and I think the law is clear that when you are
`dealing with conventional structures that happen to be in a
`method claim 112 6 does not apply and that's the case here.
`
`
`
`
` 6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`JUDGE MOORE: So is their argument that the
`
`
`blocking and scanning manager I think you say it's an antivirus
`software and antivirus software in general is conventional
`enough that you don't have to describe how it works?
`
`
`MR. BOBROW: That's correct and essentially in the
`background section of the 249 patent there is a description of
`scanning software, scanning antivirus software as well as
`blocking antivirus software. Both of those are described as
`being known and Professor Zadok, our expert, submitted a
`detailed declaration describing the fact that indeed this kind of
`software, this sort of executable is very well known.
`
`
`JUDGE MOORE: Well why in your briefing did you
`not point to that? As far as I can see in the briefing you point to
`a sort of a general statement about antivirus software and you do
`refer to the declaration and then you point to a figure, but
`standing here you're talking about what sounds like a fulsome
`description of antivirus software. I didn't see the reference to
`that in your briefing.
`
`
`MR. BOBROW: I believe, Your Honor, that at page 2
`-- and it might have been a brief reference in the brief -- but I
`thought that in our reply brief around pages 2 and 3 we discussed
`that and I believe we cited to Dr. Zadok's declaration and my
`memory if it serves me is around paragraphs 15, 16 and 17 where
`we talked about the conventionality of this kind of scanning and
`blocking software and that it was known and it may be because
`
`
`
`
` 7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`of page limits it simply wasn't amplified there but it certainly I
`believe it was alluded to and we noted the fact that it was a
`conventional set of software and that this sort of software was
`well known in the field. Not only was it well known but indeed,
`I think as our papers also showed, it is indeed structural and
`that's shown really in figure 1 of the 249 patent where you can
`see the various components you can see how they're connected
`together.
`JUDGE SMITH: What slide is this?
`
`
`MR. BOBROW: And now I'm on slide 12, Your
`
`
`Honor, I apologize. And so in figure 1 you can see the
`interconnections between all of these different routines. You can
`see how they're connected, what they communicate to. So this is
`not simply some sort of a black box, there's actual structure No.
`1, and No. 2 it's conventional and therefore the means plus
`function law simply doesn't apply.
`
`
`JUDGE SMITH: So let me just make sure I
`understand what you're -- you're saying that the method -- what's
`the point of novelty? You're saying that the method steps are the
`conventional and what's the point of novelty (indiscernible)?
`
`
`MR. BOBROW: The point of alleged novelty are the
`method steps themselves, in other words the detection, the
`blocking in response to detection, the generation of the
`signature, the essentially allowing an override of that, those are
`the method steps and that's the point of novelty for claims 1 and
`
`
`
`
` 8
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`12 and I have slide 11 at this point that simply has those claims
`depicted and the point of novelty is not the conventional
`software that is through which this is happening, it is those steps
`that are point of novelty.
`
`
`JUDGE SMITH: I mean I'm a little confused. If
`these steps are the point of novelty, how are they implemented
`by conventional software?
`
`
`MR. BOBROW: Well it's a conventional set of steps
`that allegedly is put together in some way that hadn't been done
`before.
`JUDGE SMITH: I see, right.
`
`
`MR. BOBROW: But there's nothing novel about
`
`
`scanning, there's nothing about detecting, there's nothing novel
`about blocking, and so these sorts of software programs as our
`expert alluded to were in the prior art and the patent itself
`acknowledges this in the background section. So that's not the
`point of novelty.
`
`
`The second disputed term of means plus function has
`to do with the phrase "program code for" in claim 20 and this is
`highlighted on slide 15, and here the claim is a computer
`readable medium claim and it has a number of elements that
`begin program code for.
`
`
`Turning to slide 16 the law is clear here that this
`language code, program, these are not nonce words. The Federal
`Circuit said that in Zeroclick and the Amdocs case from the
`
`
`
`
` 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`Eastern District of Virginia provides the same. Code is
`structural, it conveys structure and so these are not nonce words
`and so the means plus function law doesn't apply.
`
`
`With respect to the term module, turning to slide 18,
`that term appears in claim 16 and that term as used here in the
`context of this claim also does not trigger the applicability of
`112 paragraph 6.
`
`
`Once again, turning to slide 19 you can see figure 1
`and here the specification shows you in this diagram the location
`of the modules, what they're connected to, what the relationship
`is between and among them and essentially the specification
`provides what they're configured to do and how they
`communicate with each other.
`
`
`JUDGE MOORE: But isn't in this case different from
`the method claims where there's a blocking manager which
`includes all those modules as methods that in the claim 16 where
`on to the system claim, each of those boxes there in that figure is
`a claim limitation written in the sort of -- let's see if I can pull
`one up -- but written as a signature module for example, or a
`blocking module for example, so why is that not straightforward,
`I guess the Blackberry case or other cases that talk about black
`boxes having to do with software, why isn't this just dead on
`each module is a black box that's not described in the spec?
`
`
`MR. BOBROW: So if I may, and I'll turn back first to
`slide 18 and claim 16 itself, first of all the claim itself talks
`
`
`
`
` 10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`about these modules being configured to do certain things, No. 1.
`But No. 2, it also tells you what they are coupled to and so that
`is providing structure and orientation in terms of the operation
`and performance of what this software does.
`
`
`JUDGE MOORE: Well, this structure having to do
`with how modules are connected but it's not structure as to how
`the module itself operates. So just that it's operably connected
`to something else is enough structure?
`
`
`MR. BOBROW: Yes. And I think that that's what,
`and turning to slide 19, that's what the Finjan, Inc., v.
`Proofpoint, Inc., provides. That case came out after the
`Williamson case and you'll recall, Your Honor, that Williamson
`dealt with a claim term that involved the use of the term module
`and there held that 112 6 did apply. But Williamson also said
`that that's not necessarily the case, that you look at the context,
`you look at the surrounding claim language and of course you
`look at what's in the specification to see whether or not it
`provides any sort of structure and here this does and in the
`Finjan case there was a term, essentially it was like a processor
`for doing something, and in that case the court said look, it
`shows you what all of these different things are connected to,
`what they're configured to do and it shows you their relationship
`one to the other and how they relate to one another and so that is
`a sufficient structure to take it outside of Section 112 paragraph
`6, and that case specifically cited Williamson but nonetheless
`
`
`
`
` 11
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`distinguished it on this very ground that once you describe the
`relationship of these different components and you show what
`they're communicably coupled to do that you have sufficient
`structure to take it outside of 112 paragraph 6.
`
`
`Now regardless of the applicability, Petitioner
`submits that we have more than adequately shown that to the
`extent that 112 6 does apply it's been satisfied here. Our reply
`brief at pages 7 through 11 shows side by side essentially what
`the corresponding structure is in the 249 patent itself and or the
`equivalent or identical structure appears in AppletTrap. Our
`expert, Professor Zadoc, went into detail to line these things up
`and compare them and demonstrate the corresponding structure
`and equivalents in 21 paragraphs of his declaration, paragraphs
`35 to 55 as outlined on slide 22.
`
`
`You can see an example of this at slide 23 on the alert
`module. Essentially what this does is it's not simply saying oh,
`have a computer do this but rather this is showing the algorithm
`for the alert module. It's showing you essentially what it is,
`what that decision tree is for how that alert module works, what
`it gives notice to, what the choice it provides and then what the
`override does and essentially it's a series of various if, then and
`all sorts of statements and those are outlined for each one of
`these terms in extensive detail in our papers. So regardless the
`algorithms are set forth and so even if Section 112 6 applies, it's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 12
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`certainly satisfied here through the detailed comparison in our
`papers.
`Now turning then to a couple of the issues as to the
`
`
`adequacy of the AppletTrap disclosure, Petitioner submits that
`the AppletTrap disclosure teaches each and every one of the
`limitations that we have here. There are disputes over a handful
`of them but we submit that the disclosure of AppletTrap is more
`than sufficient to render the claims obvious.
`
`
`The first disputed term relates to the generating a
`signature as shown on slide 28 and one of the elements of all the
`claims --
`JUDGE MOORE: Looking at the shortcut the way I
`
`
`see it, and you can feel free to tell me if I'm not right about this,
`but the way I see it Patent Owner argues two things. That there
`are multiple ways to get the hash of the applet malicious code
`including a work station and a server, doing it as a server or
`getting a preexisting hash and then the term in AppletTrap "to be
`calculated" which is also related to the term extract means that
`you're obtaining a preexisting hash, not creating a hash. So to
`the first point it looks like in your petition you mention the work
`station and the server.
`
`
`MR. BOBROW: That's right.
`
`
`JUDGE MOORE: So it may be sort of more of a
`question for Patent Owner but from your perspective in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`petition do you assert the work station or the server as both
`locations where the hash can be created?
`
`
`MR. BOBROW: It's both, Your Honor, and that is set
`forth as you noted in the petition and that was outlined both in
`the petition itself and the accompanying declaration of Professor
`Zadoc. It's really either one can do this. There are, as outlined,
`there are certain advantages to having the work station do it but
`really both can provide that hashing function.
`
`
`As to your second point that this could be downloaded
`and there's another way to do it. Really I think the evidence
`strongly shows that that is absolutely not the case and that it
`cannot be downloaded and that's not how it works and there are
`several bases for that. Basis No. 1 is that AppletTrap itself says
`that it instruments unsigned applets and that those applets are
`instrumented at the server and then sent on to the work station
`and so the work station then is essentially operating on and using
`an unsigned applet. If it's unsigned there's nothing to download.
`
`
`JUDGE MOORE: So what do we do with the fact that
`it says it has to visit the -- or not visit – but it goes to the URL
`location. What's going on there? Why does it need to go to the
`URL location?
`
`
`MR. BOBROW: So there's two issues that it'll impact
`there. So it only does that in certain circumstances. So in the
`circumstance when the applet comes in and is -- it's unsigned --
`and it's instrumented and then gets sent to the work station, you
`
`
`
`
` 14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`don't need to go anywhere because it's unsigned and there's
`nothing to do and so it's calculated at AppletTrap. As to the
`instance there where you have that manual update of the user
`configurable list which is what that example is talking about on
`the to be calculated, what that is essentially saying is yes,
`AppletTrap will then go to the site and will download the applet
`and generate the hash on that applet that it visited at the website.
`That's what that means and to be calculated is not to be
`downloaded or to be obtained or to be added, or anything else,
`it's to be calculated and so yes, you visit the site, you grab the
`applet from the site and then you run your MB5 hash on it.
`
`
`JUDGE MOORE: Okay. So you've described two
`scenarios. One scenario where it's unsigned and just so I can be
`clear about what Patent Owner is saying what you're saying,
`you're saying there is a scenario described in AppletTrap where
`an unsigned applet is identified and so as to the claim and
`generating the signature, how does that happen in that scenario?
`
`
`MR. BOBROW: In that scenario, and I brought up
`slide 36 where the language is highlighted at the very bottom and
`it's at AppletTrap page 20 where it talks about this, what happens
`there is that an unsigned applet comes in to the server and it's
`instrumented so that one can look at it and evaluate it at the
`work station to see whether some suspicious or malicious
`behavior is going on and so what this is saying is if the system is
`configured to accept unsigned applets, the applets will by- pass
`
`
`
`
` 15
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`this process, meaning this sort of resigning process, and will be
`delivered to the client work stations immediately after
`instrumentation. So it goes to the work station, it is monitored
`to see whether something suspicious is going on and it's treated
`just like any other applet at that point. You look at it, see what's
`going on, if there's something suspicious about it then you
`generate a hash for it and --
`
`
`JUDGE SMITH: Your 20 minutes is up.
`
`
`MR. BOBROW: Thank you. And may I finish this
`point?
`JUDGE SMITH: Yes, keep going.
`
`
`MR. BOBROW: So it's treated just like a signed
`
`
`applet at that point. The signed ones and the unsigned one go to
`the work station and then they are reviewed to see whether
`there's malicious behavior and then a hash is generated and then
`in the event that it's malicious and these lists get automatically
`updated.
`JUDGE MOORE: And is that scenario described in
`
`
`the petition?
`
`
`MR. BOBROW: The specific instance of the
`resigning, no I don't believe that it is because this was in
`response to the argument that no, these are things are all
`downloaded and are available and the fact is is that they're not,
`not all applets are signed and so because AppletTrap has to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`generate a hash for all of these, it has to generate it, it can't
`download it because it may not exist.
`
`
`If I may just bleed into some of my rebuttal time to
`address one more issue if I might. I just wanted to briefly touch
`upon the issue as it relates to the Patent Owner's argument about
`overriding. So I'm now on slide 53 and there was the claims 1,
`16 and 20 talk about the blocking and scanning manager
`overriding the user's choice responsive to the user incorrectly
`choosing not to block malicious behavior and we submit that
`AppletTrap clearly discloses that.
`
`
`Recall that now on slide 54 that there are two lists in
`AppletTrap, a user configurable list and a downloadable list. On
`slide 55 we show that the user can essentially disable the user
`configurable list. What that means is that the user can
`essentially say look, I'm prepared to accept this risk. Okay,
`maybe you think there's some suspicious behavior going on, I'm
`going to disable this because --
`
`
`JUDGE MOORE: That's the entire list and also one
`line item from the list.
`
`
`MR. BOBROW: That's correct. And so that one line
`item, for example, is shown on slide 58 and this has a box to
`enable the particular line item or disable it and then you can see
`there's a column for the hash and for the URL. So this can all be
`updated. It gets uploaded to Trend Micro and AppletTrap says
`that the Trend Micro engineers look at this information, they
`
`
`
`
` 17
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`look at the list and the list is shown right here on slide 58. They
`look at this list with all this information and they make
`judgments about whether, you know, this is actually more
`dangerous than you think, we're going to put it on our
`downloadable list. That downloadable list trumps the user
`configurable list and so that's where you get into a situation
`where the user configurable list gets uploaded, it gets evaluated,
`there's a determination perhaps that it's an enhanced risk and so
`it gets added to the downloadable list and then that overrides the
`user's choice of the user's decision.
`
`
`JUDGE MOORE: All right. So the question it seems
`to me, you know, not maybe the ultimate question but is this
`scenario of Trend Micro looking at a particular person's list and
`saying No. 3 that you said you don't want to block, we're going
`to decide to block it. How explicitly is that described in
`AppletTrap?
`
`
`MR. BOBROW: Yes, very much so. Because I think
`for example at page 107 it talks about this, that Trend Micro
`keeps its own list and it says that they can add this to that
`downloadable list and that list is provided for in AppletTrap to
`say yes, that it is always enabled, and that's at slide 56 which is
`AppletTrap page 59. It says the downloadable hash list is always
`enabled. The user can't disable it and so if the user says, you
`know, I disabled that, I'm going to go see if I can fetch that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 18
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`applet and tries to fetch the applet, the downloadable list will
`block it and it trumps it.
`
`
`So that is, and I think it's important and I'll end on
`this point. It's important to note that this is exactly what the
`specification of the 249 patent describes. In terms of any
`support for this limitation about the blocking and the overriding
`being responsive to the user's choice, this is all that the
`specification at slide 62 says about that and this is column 4,
`lines 52 to 56 of the patent. It just says the alert module might
`override a user's choice, if after further analysis of the
`potentially malicious codes conducted it's determined that the
`code is likely to be malicious. That's exactly what AppletTrap
`does. Thank you very much.
`
`
`JUDGE SMITH: Thank you. Petitioner, you have
`seven minutes remaining for rebuttal. Patent Owner, you asked
`for 20 minutes to make your case. The time is now 2:28. You
`may begin when ready.
`
`
`MR. WALTERS: Just one moment please. I'm ready,
`Your Honors.
`
`
`JUDGE SMITH: Okay.
`
`
`MR. WALTERS: Thank you, Your Honors. May it
`please the Board. I'd first like to address the issue of Petitioner's
`contention that it was not obligated to address the 112 6 issues in
`the petition because Williamson creates a rebuttable presumption
`that means plus function does not apply when the word means is
`
`
`
`
` 19
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`not used. The rebuttable presumption in Williamson goes to the
`process for analyzing 112 6 claims. Williamson was not about
`the PTAB's rules which should apply here. Petitioner has cited
`no case law for its suggestion that the petition does not have to
`address means plus function claim issues in the petition and
`that's clear from 37 C.F.R. 42.104(b)(3) that clearly requires that
`the petition must analyze 112 6 claim terms in the petition,
`identify the corresponding structure in the patent and there's also
`case law that shows that the Petitioner must also identify the
`identical or equivalent structure in the references.
`
`
`If the rules were to apply as Petitioner suggests, then
`the prejudice to Patent Owner is great. Petitioner waited until its
`reply to address the 112 6 issues so for the first time in its reply
`it uses a declaration expert testimony and can use other evidence
`to identify the corresponding structure in the patent and the
`identical or equivalent structure in the reference.
`
`
`Patent Owner however only has one more brief and
`it's the surreply and as Your Honors know we're not allowed to
`present new evidence in the surreply, we're not allowed to
`present any expert testimony in the surreply, so there's no
`opportunity for Patent Owner to rebut with expert testimony or
`other evidence the positions that Petitioner takes for the first
`time in its reply. These are why the rules require that Petitioner
`address the 112 6 issues in the petition. I'd like to walk through
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 20
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`some of the 112 6 specific claim terms starting with the
`"blocking scanning manager" terms of claims 1 and 12.
`
`
`JUDGE MOORE: So besides the case law, is there
`any other reason that came up in District Court or is there any
`other evidence that Petitioner should have been aware of the 112
`6 when they filed the petition? And I understand just looking at
`the claims and the case law, but any other facts than that?
`
`
`MR. WALTERS: Sure. I would say that the rules
`simply require it. That Petitioner's obligated to do claim
`construction analysis in the petition. We know that claim
`construction analysis includes 112 6 issues and so the rules, and
`it's not only that the rules require claim construction, the C.F.R.
`section I just cited specifically requires that 112 6 issues be
`addressed in the petition and that the petition identify the
`corresponding structure in the patent in the petition, otherwise
`there's no opportunity for Patent Owner to effectively rebut.
`
`
`JUDGE SMITH: When you refer to your
`demonstratives, can you also state the page number?
`
`
`MR. WALTERS: Yes, Your Honor.
`
`
`JUDGE SMITH: Thank you.
`
`
`MR. WALTERS: Thank you. Starting with the
`blocking scanning manager terms of claims 1 and 12, these terms
`are clearly in means plus function.
`
`
`JUDGE SMITH: So which slide number is this?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 21
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`MR. WALTERS: I'm sorry, thank you. This is slide
`
`
`22. The Federal Circuit on this issue is the Media Rights case
`and in that case the term was compliance mechanism. The
`Federal Circuit held that where the claims simply recite
`functions performed by the term that is not structural, then
`without defining the specific structure 112 6 applies. The
`Petitioner referenced that there was another case on this issue
`and that was actually a District Court case, it was not Federal
`Circuit, the Alacritech case. Petitioner suggested that Alacritech
`required that the 112 6 term be the point of novelty. That's not
`what Alacritech said. Alacritech actually said, and this is on
`page 28 of Patent Owner's response, that the terms played a
`meaningful role in defining claim scope and the terms were
`defined solely by the fact that they performed the functions
`recited in the claims. That's exactly what this " blocking
`scanning manager" has done. It's defined in the claim. It's only
`performing the function that's actually recited.
`
`
`JUDGE MOORE: And Alacritech, that's a District
`Court case?
`
`
`MR. WALTERS: It is.
`
`
`JUDGE MOORE: Right.
`
`
`MR. WALTERS: The Media Rights Federal Circuit
`case applied 112 6 when there was not sufficient structure for the
`thing in the method claim that's performing the function.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 22
`
`
`
`Case IPR2018-00916
`Patent 7,360,249 B1
`
`JUDGE SMITH: Was that case -- the thing in the
`
`
`method claim that was performing the function -- was that the
`novelty in the claim in that case,
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
