Trials@uspto.gov
`571-272-7822
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` Paper 41
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` Date: November 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZSCALER INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`IPR2018-00916
`Patent 7,360,249 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, BRYAN F. MOORE, and NEIL T. POWELL,
`Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Dismissal After Institution of Trial
`37 C.F.R. § 42.72
`
`I. INTRODUCTION
`Zscaler Inc. (“Petitioner”) requests inter partes review of claims 1, 2,
`5–9, 12–17, 20, and 22 of U.S. Patent No. 7,360,249 B1 (“the ’249 patent,”
`Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”). Petitioner
`
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`571-272-7822
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` Paper 41
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`
` Date: November 14, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ZSCALER INC.,
`Petitioner,
`
`v.
`
`SYMANTEC CORPORATION,
`Patent Owner.
`____________
`
`IPR2018-00916
`Patent 7,360,249 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, BRYAN F. MOORE, and NEIL T. POWELL,
`Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Dismissal After Institution of Trial
`37 C.F.R. § 42.72
`
`I. INTRODUCTION
`Zscaler Inc. (“Petitioner”) requests inter partes review of claims 1, 2,
`5–9, 12–17, 20, and 22 of U.S. Patent No. 7,360,249 B1 (“the ’249 patent,”
`Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”). Petitioner
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`relies on the testimony of Dr. Erez Zadok. Ex. 1003. Symantec Corporation
`(“Patent Owner”) filed a Preliminary Response. Paper 10 (“Prelim. Resp.”).
`On November 15, 2018, the Board instituted trial on claims 1, 2, 5–9, 12–17,
`20, and 22 of the ’249 patent based on all grounds of unpatentability alleged
`in the Petition. Paper 15. The Board has jurisdiction under 35 U.S.C. § 6(c).
`After institution of trial, Patent Owner, filed a Patent Owner Response
`(“PO Resp.”). Paper 21. Petitioner filed a Reply. Paper 26. Patent Owner
`filed a Sur-reply. Paper 33. An oral hearing was held on August 8, 2019. A
`transcript of the oral hearing is included in the record as Paper 40. Paper 40
`(“Tr.”).
`For the reasons discussed below, we are unable to reach a
`determination on the alleged grounds of unpatentability over prior art.
`Accordingly, we terminate this proceeding under 37 C.F.R. § 42.72.
`
`A. Related Matters
`A decision in this proceeding could affect or be affected by the
`following case pending in the United States District Court for the Central
`District of California and involving the ’249 patent: Symantec Corp. and
`Symantec Ltd. v. Zscaler, Inc., Case No. 17-cv-04414 (N.D. Cal.). Pet. 3;
`Paper 5, 2.
`
`B. The ’249 patent
`The ’249 patent is directed to “computer security, and in particular, to
`detecting and blocking malicious code propagation on computer systems.”
`Ex. 1001, 1:6–8. The ’249 patent provides that “[c]omputer systems face a
`threat of attack by malicious computer code, such as worms, viruses, and
`Trojan horses.” Id., 1:12–13.
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`C. Illustrative Claim
`Claims 1, 12, 16, and 20 are independent claims. Independent claim
`1, reproduced below, is illustrative of the claimed subject matter:
`1.
`A computer
`implemented method
`for preventing
`malicious code from propagating in a computer, the method
`comprising the steps of:
`
`a blocking-scanning manager detecting attempted
`malicious behavior of running code;
`the blocking-scanning
`responsive
`to
`the detection,
`manager blocking the attempted malicious behavior;
`the blocking-scanning manager generating a signature to
`identify the code that attempted the malicious behavior;
`the blocking-scanning manager detecting code identified
`by the signature, wherein detecting code identified by the
`signature comprises;
`
`the blocking-scanning manager alerting a user of the
`detection; and the blocking-scanning manager allowing the user
`to choose whether or not to block the execution of the identified
`code;
`the blocking-scanning manager overriding the user’s
`choice responsive to the user incorrectly choosing to block non-
`malicious behavior or incorrectly choosing not to block
`malicious behavior; and
`
`the blocking-scanning manager blocking the execution of
`the identified code.
`
`Ex. 1001, 11:5–27.
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`D. References
`Petitioner relies on the following references. Pet. 14–27.
`Name
`Reference
`AppletTrap TREND MICRO INTERSCAN APPLETTRAP GETTING
`STARTED GUIDE, archived at Wayback machine
`on May 4, 2003
`U.S. Patent No. 6,338,141 B1, filed Sept. 30,
`1998, issued Jan. 8, 2002
`
`Wells
`
`Exhibit
`1005
`
`1007
`
`
`
`E. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1, 2, 5–9, 12–17, 20, and 22 are
`unpatentable based on the following grounds:
`
`
`
`
`
`Claims Challenged
`1, 2, 5–9, 12, 16, 17, 20,
`22
`13–15
`
`Pet. 4.
`
`35 U.S.C. § Reference(s)
`103
`AppletTrap
`
`103
`
`AppletTrap and Wells
`
`II. DISCUSSION
`
`Relevant Law
`A.
`Obviousness
`1.
`A 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 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) (“KSR”).
`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
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`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations, including commercial success, long-felt but unsolved needs,
`failure of others, and unexpected results.1 Graham v. John Deere Co.,
`383 U.S. 1, 17−18 (1966) (“the Graham factors”).
`Level of Skill
`2.
`For an obviousness analysis, prior art references must be “considered
`together with the knowledge of one of ordinary skill in the pertinent art.”
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
`571 F.2d 559, 562 (CCPA 1978)). Moreover, “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). That is because
`an obviousness analysis “need not seek out precise teachings directed to the
`specific subject matter of the challenged claim, for a court can take account
`of the inferences and creative steps that a person of ordinary skill in the art
`would employ.” KSR, 550 U.S. at 418; In re Translogic Tech., Inc., 504
`F.3d 1249, 1259 (Fed. Cir. 2007) (“Translogic”).
`Petitioner asserts a person of ordinary skill in the art of the subject
`matter of the ’249 patent would have had a “Bachelor of Science degree in
`computer science, computer engineering, or a similar degree, along with at
`least 2-3 years of experience in software development, preferably related to
`cyber-security or information assurance [and a] higher level of education
`may substitute for a lesser amount of experience, and vice versa.” Pet. 14
`
`1 Patent Owner does not put forth evidence it alleges tends to show
`secondary considerations of non-obviousness in its Patent Owner Response.
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`(citing Ex. 1003 ¶¶ 34–37). Patent Owner’s proposed level of skill does not
`differ, in any way relevant to determinations made in this Decision, from
`Petitioner’s statement nor does Patent Owner argue that there is any
`significance difference between the two articulations of level of skill. PO
`Resp. 7–8. Thus, we adopt Petitioner’s articulation of the level of skill and
`acknowledge that the level of ordinary skill in the art is also reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995);
`In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`Claim Construction
`B.
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2017).2 Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning as understood
`by a person of ordinary skill in the art in the context of the entire patent
`disclosure. See Translogic, 504 F.3d at 1257.
`1. “a running code blocking module, configured to block the
`attempted malicious behavior in response to positive detection”
`claim 16
`
`
`2 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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`Each limitation in the body of challenged claim 16 recites a “module”
`which is “configured to” perform a function. Under 35 U.S.C. § 112,
`paragraph 6 (“§ 112 ¶ 6”), “[a]n element in a claim for a combination may
`be expressed as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.”3
`Patent Owner asserts:
`[T]he Petition includes no analysis of whether any claim term
`should be construed under § 112 ¶ 6. In addition, the Petition
`provides no (i) identification of any structure, material, or acts
`corresponding to any term that should be construed under § 112
`¶ 6 or (ii) structural analysis of the references demonstrating that
`the corresponding structure is present in such references. For the
`reasons explained below, Petitioner’s failure to do so is fatal to
`the Petition.
`PO Resp. 16. For example, claim 16 recites “a running code blocking
`module, configured to block the attempted malicious behavior in response to
`positive detection.” This phrase, containing a functional limitation, does not
`include the word “means” and thus presumptively is not a means-plus-
`function limitation under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792
`F.3d 1339, 1348 (Fed. Cir. 2015) (en banc) (“Williamson”). Nevertheless,
`that presumption can be overcome when the phrase does not recite
`
`
`
`
`3 Paragraphs 1–6 of § 112 were replaced with §§ 112(a)–(f) when § 4(c) of
`the Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284,
`329 (2011) (“AIA”) took effect on September 16, 2012. Because the patent
`application resulting in the ’249 patent was filed before the effective date of
`the AIA, we refer to the pre-AIA version of 35 U.S.C. § 112.
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`sufficiently definite structure or recites function without sufficient structure
`for performing that function. Id. at 1349. That is the case here.
`The term “module” is so broad that it does not sufficiently convey
`definite structure. See id. at 1350 (“‘Module’ is a well-known nonce word
`that can operate as a substitute for ‘means’ in the context of § 112, para. 6.”).
`As the Federal Circuit has stated, “[g]eneric terms such as ‘mechanism,’
`‘element,’ ‘device,’ and other nonce words that reflect nothing more than
`verbal constructs may be used in a claim in a manner that is tantamount to
`using the word ‘means’ because they ‘typically do not connote sufficiently
`definite structure.’” Id. at 1350 (citation omitted). In this case, “module” is
`used as a generic place-holder for anything that performs the recited
`function, much as the word “means” does. Id. at 1350–51 (recognizing “the
`term ‘module,’ standing alone is capable of operating as a ‘nonce word’
`substitute for ‘means’”). The words before and after “module” are “running
`code blocking” and “configured to block the attempted malicious behavior.”
`Those recitations are not structural but functional. The words are generic
`and do not impart specific structure. Rather, they would literally cover any
`structure that performs the function that follows. Furthermore, the entire
`phrase reflects the typical format of a means-plus-function element that does
`employ the word “means,” with “module” substituting for “means” and
`“configured to” substituting for “for.” See Unified Patents Inc. v. Blackbird
`Tech LLC , IPR2017-01525, Paper 11 at 8–11 (PTAB Dec. 1, 2017) (“[A]
`plain reading of the term ‘module configured to’ in context of the claim
`language suggest the term ‘module configured to’ is analogous to ‘means
`for.’”)
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`Accordingly, the non-means presumption is overcome by the absence
`of sufficiently definite structure in the language used and by the fact that the
`language at issue recites function without sufficient structure for performing
`that function. We determine the phrase “a running code blocking module,
`configured to block the attempted malicious behavior in response to positive
`detection” is properly construed as a means-plus-function element under §
`112 ¶ 6. The function recited is “block[ing] the attempted malicious
`behavior in response to positive detection.” The words “running code
`blocking” are simply part of the name for the element and do not change the
`function recitation that comes after it.
`For a means-plus-function limitation, Petitioner is required to
`“identify the specific portions of the specification that describe the structure,
`material, or acts corresponding to each claimed function.” 37 C.F.R.
`§ 42.104(b)(3). As the Federal Circuit has noted: “structure disclosed in the
`specification is ‘corresponding’ structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim. This duty to link or associate structure to function is the
`quid pro quo for the convenience of employing § 112, ¶ 6.” Saffran v.
`Johnson & Johnson, 712 F.3d 549, 562 (Fed. Cir. 2013) (quoting B. Braun
`Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)); see also
`Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012).
`With respect to “a running code blocking module, configured to block
`the attempted malicious behavior in response to positive detection,”
`Petitioner has not identified sufficient corresponding structure described in
`the Specification of the ’249 patent for performing the recited “blocking.”
`In fact, Petitioner does not acknowledge the possibility that this claim
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`language may be considered means plus function language despite the fact
`that in the Federal Circuit’s Williamson decision (discussed further below),
`the word “module,” when referring to computer routines, was considered to
`indicate means plus function treatment and a lack of structure. See
`Williamson, 792 F.3d at 1351.
`As quoted above Patent Owner argues that “the Petition provides no
`. . . identification of any structure, material, or acts corresponding to any
`term” and that Petitioner’s failure to do so “is fatal to the Petition.” PO
`Resp. 16. In fact, the Petition does not construe any claim term. Pet. 12–13.
`We agree that the Petition does not explicitly identify structure
`corresponding to terms such as “running code blocking module” which
`should be construed as 112 ¶ 6 limitations. Nevertheless, below we examine
`whether the Petition suggested corresponding structure, whether the
`Specification in fact discloses such structure, and the arguments in
`Petitioner’s Reply brief.
`As stated above, the Petition does not explicitly identify structure
`corresponding to this limitation. Nevertheless, the “running code blocking
`module” relates to the “blocking-scanning manager” recited in the
`Specification.4 Thus, in the Petition, the closest Petitioner comes to making
`an identification of structure is this: “the blocking-scanning manager
`
`4 Here the phrase “blocking-scanning manager” is similar to a term “access
`control manager” which the Federal Circuit determined, when found in the
`specification, did not impart structure. Blackboard, Inc. v. Desire2Learn,
`Inc., 574 F.3d 1371, 1383 (Fed. Cir. 2009) (“[W]hat the patent calls the
`‘access control manager’ is simply an abstraction that describes the function
`of controlling access to course materials, which is performed by some
`undefined component of the system. The ACM is essentially a black box
`that performs a recited function.”) (“Blackboard”).
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`‘blocks’ the attempted malicious behavior.” Pet. 8–9 (citing Ex. 1001, 9:48–
`51).
`
`In its “OVERVIEW OF THE 249 PATENT” section of the Petition,
`Petitioner describes the invention in general and describes disclosure that
`may be related to corresponding structure. For example, Petitioner cites to
`Figure 6, which is a flowchart for the “detecting and blocking” element of
`the alleged invention. Pet. 8. Figure 6 is reproduced below.
`
`
`Figure 6, above, is a flow chart regarding the “detecting and blocking”
`element of the alleged invention. The “blocking” portion of the flow chart
`in Figure 6 above, however, is represented by one box titled “Block
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`Execution of Identified Code on Target or Remote Computer.” Thus, this
`does not represent an algorithm for the “blocking” element of the claims.
`Thus, at best, even assuming that Petitioner even intended to identify
`corresponding structure, Petitioner has identified the corresponding structure
`only generally as “the blocking-scanning manager.” Petitioner also points to
`Figure 1 of the Specification, which recites black box representations of
`elements of the “blocking-scanning manager.”
`
`As shown in Figure 1, above, the reference to “running code blocking
`module” suggests only a module on a computer, which is too generic to
`identify any specific structure. Ex. 1001, Fig. 1.
`In its Reply, Petitioner points to text in the Specification as possible
`corresponding structure. Reply 6–11. For “running code blocking module,”
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`Petitioner asserts “code routine(s) that block malicious behavior by
`removing, disabling or isolating the code” is possible corresponding
`structure for this limitation. Id. at 8 (citing Ex. 1001, 5:4–12). This citation
`is reproduced below:
`In response to detection of attempted malicious behavior,
`the running code blocking module 106 of the blocking-scanning
`manager 101 blocks the behavior. The running code blocking
`module 106 can block the malicious behavior in a number of
`ways. For example, the running code blocking module 106 might
`remove the code from the computer system, might disable the
`code in some manner, might isolate the code by placing it in a
`repository where it is prevented from causing harm, etc.
`Ex. 1001, 5:4–11. This quote simply describes at high level conceptual
`options for performing the function in the claims but does not explain how
`the function in the claim is implemented in software.
`In Aristocrat Technologies Australia Proprietary Ltd. v. International
`Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008), the Federal Circuit
`stated that “the corresponding structure for a § 112 ¶ 6 claim for a computer-
`implemented function is the algorithm disclosed in the specification.” Id.
`(quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir.
`2005)). As the Federal Circuit explained, “a general purpose computer
`programmed to carry out a particular algorithm creates a ‘new machine’
`because a general purpose computer ‘in effect becomes a special purpose
`computer once it is programmed to perform particular functions pursuant to
`instructions from program software.’” Id.; see also WMS Gaming, Inc. v.
`Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Consequently, a
`patent’s specification must disclose enough of a specific algorithm to
`provide the necessary structure under § 112 ¶ 6. Finisar Corp. v. DirectTV
`
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`Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (“Finisar”). Allowing a
`computer programmed to perform a specialized function to be claimed
`without disclosure of the algorithm used for that programming would exhibit
`the same type of impermissible overbreadth of purely functional claims. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008).
`If special programming is required for a general purpose computer to
`perform the corresponding claimed function, then the default rule requiring
`disclosure of an algorithm applies. An algorithm need not be disclosed only
`in rare circumstances where any general purpose computer can perform the
`claimed function without any special programming. Ergo Licensing, LLC v.
`CareFusion, 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012); see also
`Williamson, 792 F.3d at 1352 (“In cases . . . involving a claim limitation that
`is subject to § 112, para. 6 that must be implemented in a special purpose
`computer, this court has consistently required that the structure disclosed in
`the specification be more than simply a general purpose computer or
`microprocessor. . . . [T]he specification [must] disclose an algorithm for
`performing the claimed function.” (citations omitted)).
`By simply pointing to “running code blocking module,” which may be
`code routines performing the function of blocking (i.e., removing, disabling
`or isolating) malicious code, Petitioner has not identified the underlying
`algorithm of any such program. This is not a circumstance falling within the
`narrow exception explained in In re Katz, 639 F.3d 1303, 1316 (Fed. Cir.
`2011), where the function recited is generic and can be performed by any
`general purpose computer without special programming, e.g., “processing,”
`“receiving,” and “storing.” The specialized function here includes “blocking
`the attempted malicious behavior.” Petitioner makes no explanation as to
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`why the recited function would be so basic that it could be performed by a
`general purpose computer without any special programming. Accordingly,
`in the Petition, Petitioner has not identified corresponding structure,
`described in the Specification of the ’249 patent, that causes a computer to
`perform the recited function of “blocking the attempted malicious behavior.”
`In its Reply, Petitioner asserts, based on two district court cases, that
`the test for whether a claim recites sufficient structure includes whether “the
`intrinsic evidence describes the term’s location and its interactions with
`other components.” Reply 5–6 (citing Finjan, Inc. v. Proofpoint, Inc, 2015
`WL 7770208, *11 (N.D. Cal. Dec. 3, 2015) (holding “content processor” did
`not invoke § 112 ¶ 6 because the claim language describes how it interacts
`with the invention’s other components, and the specification identifies its
`location in block diagrams and its relationship with other components);
`Tech. Licensing Corp. v. Blackmagic Design Pty. Ltd., 2016 WL8902602,
`*12–14 (N.D. Cal. Nov. 23, 2016) (holding “fill calculator circuit” conveyed
`sufficient structural meaning because “the claim prefaces the term ‘circuit’
`with the identifier ‘fill calculator,’ and provides a description of the circuit’s
`operation”).5 Based on its reading of those cases, Petitioner relies on the
`following as showing “location” and “interaction” of components:
`the running code blocking module is “communicatively coupled
`to the running code detection module,” the signature module is
`“communicatively coupled to the running code blocking
`
`5 We note that Technology Licensing acknowledges that cases such as Apex
`Inc. v. Raritan Computer, Inc., 325 F.3d 1364 (Fed. Cir. 2003) and Linear
`Technology Corp. v. Impala Linear Corp., 379 F.3d 1311 (Fed. Cir. 2004)
`predate Williamson, but nevertheless found that the recitation of a “circuit”
`provides sufficient structure to avoid applying the means plus function
`rubric.
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`module,” etc. See also Ex. 1001, 13:26-28 (scanning module and
`signature module); 29-32 (identified code blocking module and
`scanning module); 36-38 (alert module and running code
`detection module and scanning module). Figure 1 specifies the
`location of each module within the blocking-scanning manager,
`and Figures 2-6 and the majority of the specification describe the
`relationships among the modules and the algorithmic structures
`of the modules.
`Reply 5.
`It is notable that Petitioner does not cite to Williamson, which states,
`in pertinent part, with regard to the claim at issue in that case,
`[w]hile portions of the claim do describe certain inputs and
`outputs at a very high level (e.g., communications between the
`presenter and audience member computer systems), the claim
`does not describe how the ‘distributed learning control module’
`interacts with other components in the distributed learning
`control server in a way that might inform the structural character
`of the limitation-in-question or otherwise impart structure to the
`‘distributed learning control module’ as recited in the claim.”
`Williamson, 792 F.3d at 1351. In other words, the Federal Circuit was
`concerned with whether the claim described interactions between
`components that inform the structural character or actually impart structure.
`Id.; Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366,
`1373 (Fed. Cir. 2015) (Media Rights) (“[describing how a limitation is]
`connected to other claimed components of the system [] alone was not
`sufficient to avoid the application of § 112 ¶ 6. Rather, it was the
`specification’s disclosure regarding how the [device] and its internal
`components operated as a circuit, which we had recognized in prior cases to
`connote sufficient structure”) (citations omitted).
`Here, claim 16 recites black box software structures that are merely
`described as inputs and outputs to each other, i.e., “communicatively
`
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`coupled” to each other. Thus, for the reasons above we find that claim 16
`includes a means plus function limitation and that Petitioner has not cited to
`sufficient corresponding structure.
`2. “blocking-scanning manager blocking the attempted malicious
`behavior” claims 1 and 12
`Claims 1 and 12 are method claims that claim essentially the same
`functions as claim 16. Claim 1, reproduced in Section I.C. above, recites a
`“blocking-scanning manager” performing several functions, e.g.,
`“detecting,” “blocking,” “generating,” “alerting,” etc. Claim 12 recites a
`“blocking-scanning manager” performing similar functions except claim 1
`recites “generating a signature” and alerting the user of malicious code and
`allowing the user to block the code, and claim 12 recites using a hash of the
`signature to identify and block the code.
`As we stated in the Decision to Institute, applying means plus function
`orthodoxy to method claims is uncommon but not unprecedented. As such
`we will discuss the background of this issue below. For discussion of the
`issue below, when appropriate we will refer to the limitation of claims 1 and
`12 as “the blocking-scanning manager blocking the attempted malicious
`behavior.”
`a. Background of Method and Means Plus Function
`A couple of recent Federal Circuit cases have examined applying §
`112 ¶ 6 to elements of a method claim. Before we discuss these cases we
`provide some background.
`Steps in a method claim can be analyzed under § 112 ¶ 6. The statute
`explicitly authorizes expressing claim elements in both means-plus-function
`and step-plus-function form:
`
`17
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`IPR2018-00916
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`
`
`An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claims shall be construed to cover the corresponding
`structure, material, or acts described in the specification and
`equivalents thereof.
`35 U.S.C. § 112 ¶ 6. The statute’s format and language suggest a strong
`correlation between means and step-plus-function claim elements in both
`their identification and interpretation. Based on the arrangement of § 112 ¶
`6, it is apparent that “structure” and “material” are associated with “means,”
`while “acts” is associated with “step.” See O.I. Corp. v. Tekmar Co. Inc.,
`115 F.3d 1576, 1583 (Fed. Cir. 1997) (“In this paragraph, structure and
`material go with means, acts go with steps.”). Therefore, a claim element
`deserves means-plus-function treatment when “expressed as a means . . . for
`performing a specified function without the recital of structure [or] material
`. . . in support thereof.” Id. (emphasis added). Similarly, a claim element
`deserves step-plus-function treatment when “expressed as a . . . step for
`performing a specified function without the recital of . . . acts in support
`thereof.” Id. (emphasis added).
`
`Here, claims 1 and 12 do not use the “step for” language but they do
`recite language that can invoke § 112 ¶ 6. There are a few cases from the
`Federal Circuit that have clearly applied means-plus-function analysis to
`elements found in method claims. In On Demand Machine Corp. v. Ingram
`Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006), the Federal Circuit affirmed
`the district court’s application of means-plus-function analysis to a limitation
`in a method claim. 442 F.3d at 1336, 1340–41 (in a claim reciting a
`“method of high speed manufacture of a single copy of a book,” the
`limitation “providing means for a customer to visually review said sales
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`18
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`IPR2018-00916
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`information” was correctly deemed to be in means-plus-function form).
`Also, in J & M Corp. v. Harley-Davidson, Inc., 269 F.3d 1360 (Fed. Cir.
`2001), the Court indicated that a method claim contained a “means-plus-
`function limitation” that was “nearly identical” to the limitation found in
`apparatus claims reciting “gripping means for engaging the inner and outer
`surfaces of said helmet above the bottom edge, the gripping means including
`a fulcrum located below the bottom edge.” 269 F.3d at 1364 n.1, 1367 (Fed.
`Cir. 2001).
`Notably, both cases had an explicit recitation of “means” in the claim.
`Also, more recent cases have made it clear that
`[t]he mere fact that a method claim is drafted with language
`parallel to an apparatus claim with means-plus-function language
`does not mean that the method claim should be subject to an
`analysis under § 112, paragraph 6. Rather, each limitation of
`each claim must be independently reviewed to determine if it is
`subject to the requirements of § 112, paragraph 6.”
`Generation II Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1368 (Fed.
`Cir. 2001). So the mere fact that claims 1 and 12 are written with similar
`language to claim 16 does not convert them to means plus function claims.
`b. Application of Means Plus Function to “Blocking-Scanning
`Manager”
`More recently the Federal Circuit has ruled that elements reciting
`nonce words that do not connote structure in a method claim can be analyzed
`under § 112 ¶ 6. Media Rights, 800 F.3d at 1372. In Media Rights, the
`Federal Circuit found that the term “compliance mechanism” in a method
`claim did not connote a definite structure because “the claims simply state[d]
`
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`IPR2018-00916
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`that the ‘compliance mechanism’ can perform various functions.”6 Id. The
`written description in Media Rights, did “depict[] and describe[] how what
`[was] referred to as the ‘copyright compliance mechanism’ [was] connected
`to various parts of the system, how the ‘copyright compliance mechanism’
`function[ed], and the potential—though not mandatory—functional
`components of the ‘copyright compliance mechanism.’” Id. Nevertheless,
`the Federal Circuit found that none of the passages, in the written description
`of Media Rights, describing the “compliance mechanism” defined the term
`“in specific structural terms.” Id. at 1372–73. Additionally, Media Rights
`found that the “claims [at issue did] not use the term ‘compliance
`mechanism’ as a substitute for an electrical circuit, or anything else that
`might connote a definite structure. Rather, the claims simply state that the
`
`
`
`6 An illustrative claim at issue in Media Rights recite
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