Takeaway: Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy.

In its Decision, the Board denied the Petition as to each challenged claim of the ‘251 patent. Thus, no inter partes review of any claim of the ‘251 patent was instituted.

The ‘251 patent is generally directed to “network security and specifically to application-level content processing of network service protocols using a firewall.” Petitioner had sought inter partes review of claims 1, 6, 9, 12, 17, 18, 22, 26, 27, 29, 31 and 32 of the ‘251 patent. The asserted grounds were: (1) obviousness of claims 1, 6, 12, 17, 18, 26, 27, 29, and 31 under 35 U.S.C. § 103 in view of Taylor; (2) obviousness of claims 1, 12, 17, 18, 26, 27, and 29 under 35 U.S.C. § 103 in view of Sonnenberg; (3) obviousness of claims 9, 22, and 32 under 35 U.S.C. § 103 in view of Taylor and Astaro; and (4) obviousness of claims 6, 9, 22, 31, and 32 under 35 U.S.C. § 103 in view of Sonnenberg and Astaro.

As for claim construction, the Board did not construe either of the terms for which a proposed construction had been provided. As cited in Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999), “only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy.”

With respect to asserted ground (1), the Board agreed with Patent Owner that “Taylor describes DPF 207, not proxy 211, as applying the disclosed filtering rules[.]” Accordingly, “[b]ecause those rules are applied by DPF 207, not proxy 211, [the Board was] not persuaded that such filtering constitutes ‘processing, by the proxy module,’ as recited in independent claim 1, and similarly recited in independent claims 17 and 26.” The Board also agreed with Patent Owner that Taylor “does not teach ‘reassembling the application-level content from a plurality of packets of the packet stream,’ as recited in independent claim 1, and similarly recited in independent claims 17 and 26.”  Moreover, the Board was not persuaded that “reassembling and scanning is inherent in Taylor.”

As for ground (2), the Board agreed with Patent Owner that “Sonnenberg does not teach ‘scanning . . . based on the retrieved one or more content processing configuration schemes’ because the scanning by Sonnenberg’s scanning modules is not ‘based on’ the ‘proxy rules’ that Petitioner identifies as the ‘configuration schemes.’” According to the Board, because Petitioner had not directed the Board to, and the Board could not find, “a disclosure in Sonnenberg that teaches or suggests that a proxy does any scanning[,]” The Board was “not persuaded that the scanning taught in Sonnenberg is performed ‘by the proxy module’ as recited in independent claim 1, and similarly recited in independent claims 17 and 26.” The Board also agreed with Patent Owner that “Sonnenberg does not contemplate that the scanning performed by the scanning modules is ‘based on’ the proxy rules identified by Petitioner as the configuration schemes[.]”

The Board did not find ground (3) or ground (4) to be persuasive either. As stated by the Board, “Petitioner does not contend that Astaro teaches any of the independent claim limitations determined above to be missing in Taylor and Sonnenberg.”

Sophos Ltd. and Sophos Inc. v. Fortinet, Inc., IPR2015-00911
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: August 24, 2015
Patent: 8,205,251 B2
Before: Michael R. Zecher, Matthew R. Clements, and Minn Chung
Written by: Clements
Related Proceedings: Co-pending district court case in the U.S. District Court for District of Delaware; IPR2015-00910; and IPR2015-00912