Symantec Corporationv.Finjan Inc.

Patent Trial and Appeal Board

Jan 14, 2016

11606707 (P.T.A.B. Jan. 14, 2016)

Trials@uspto.gov Paper 9
571-272-7822 Entered: January 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SYMANTEC CORP.,
Petitioner,

v.

FINJAN, INC.,
Patent Owner.
____________

Case IPR2015-01548
Patent 8,015,182 B2
____________

Before, THOMAS L. GIANNETTI, RICHARD E. RICE, and
MIRIAM L. QUINN Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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Symantec Corp. (“Petitioner”) filed a Petition to institute inter partes
review of claims 811 and 13 U.S. of Patent No. 8,015,182 B2 (“the ’182
patent”) pursuant to 35 U.S.C. §§ 311319. Paper 1 (“Pet.”). Finjan, Inc.
(“Patent Owner”) timely filed a Preliminary Response. Paper 8 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314.
For the reasons that follow, we deny the Petition.
I. BACKGROUND
A. RELATED MATTERS
Petitioner identifies that the patent-at-issue is the subject matter of a
district court case filed in the U.S. District Court for the Northern District of
California (Case No. 3:14-cv-02998-RS). Pet. 1. Petitioner also states that
petitions for inter partes review have been filed regarding patents at issue in
the foregoing litigation. Id.
B. ASSERTED GROUNDS
Petitioner contends that claims 811 and 13 (“the challenged claims”)
are unpatentable under 35 U.S.C. § 103 based on the following specific
grounds:
Reference[s] Basis Claims challenged
Dixon1 and Bates2 § 103 811 and 13

1 U.S. Patent No. 8,296,664 B2 (Exhibit 1004) (“Dixon”).
2 U.S. Patent No. 6,721,721 B1 (Exhibit 1007 (“Bates”).
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Reference[s] Basis Claims challenged
Rowan3 and Bates § 103 811 and 13
C. THE ’182 PATENT (EX. 1001)
The ’182 patent relates to “a system and method for combining
operation of a search engine with operation of a content security filter, so as
to provide security assessments for web pages or media content
(collectively, web content) located by the search engine.” Ex. 1001,
2:1217. In particular, the ’182 patent describes displaying search results
with appended security information, as illustrated in Figure 2, reproduced
below. Id. at 6:35.

3 U.S. Patent No. 7,694,135 B2 (Exhibit 1008) (“Rowan”).
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The display depicted in Figure 2 “was generated by querying a web
search engine with the search term “screensavers.” Id. at 6:67.
Specifically, Figure 2 shows links 210 and 230, which reference web pages
with content that was inspected and found to have potential security risks.
Id. at 6:713. Alerts are provided for both links to state “Forbidden URL.
URL Category is Hacking,” an alert to a potential spyware risk in following
the links to the referenced websites. Id. at 6:1117.
Figure 4, reproduced below, describes a flow chart of a server-side
method for appending security information to search results. Id. at 7:6164.
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Figure 4 depicts steps performed by a client computer, search engine,
and content scanner. Id. at 7:658:3. In particular, Figure 4 illustrates that
when search results are found, the search engine, at step 480, receives
security assessments for the web pages referenced in search results. The
client computer, thereafter, receives, at step 475, and displays, at step 480,
modified search results that include appended security assessments. Id. at
8:6267. “In turn, the client computer updates the search results based on
the security assessments.” Id.
D. ILLUSTRATIVE CLAIM
Challenged claim 8 is independent, and illustrative of the claimed
subject matter:
8. A system for appending security information to
search engine results, comprising:
a search engine for locating web content that
includes at least one designated search term, for preparing
a search results summary that presents the located web
content, and for embedding an active program within the
search results summary, wherein the active program,
when executed, requests and receives security assessments
of web content from a content security scanner;
a client computer communicatively coupled with
said search engine for issuing a search request with at
least one designated search term to said search engine, for
receiving the search results summary with the embedded
active program from said search engine, for executing the
active program, and for combining the search results
summary received from said search engine in response to
the search request with security assessments received
from said content security scanner in response to
executing the active program, by (i) displaying a
presentation of the search results summary with a portion
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of the security assessments while some of the security
assessments have not yet been received, and (ii)
dynamically updating the presentation when additional
security assessments are received; and
a content security scanner communicatively
coupled with said client computer, which is invoked by
the active program to assess security of at least a portion
of the located web content for potential security risks.

II. ANALYSIS
A. CLAIM INTERPRETATION
The Board interprets claims using the “broadest reasonable
construction in light of the specification of the patent in which [they]
appear[].” 37 C.F.R. § 42.100(b). We presume that claim terms have their
ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the
meaning that the term would have to a person of ordinary skill in the art in
question.”).
Petitioner proposed a construction for one term: “dynamically
updating the presentation when additional security assessments are
received.” See Pet. 1115. Patent Owner submitted that the term has a plain
and ordinary meaning understood to a person of ordinary skill in the art and
that no construction is needed. Prelim. Resp. 810. We do not need to
construe a proposed term if the construction is not helpful in our
determination of whether to institute trial. Because the construction of the
term “dynamically generate[d]” is not germane to our determination whether
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to institute trial, we will not consider either of the parties’ arguments. No
term will be construed.
B. GROUNDS BASED ON DIXON
Petitioner asserts one ground predicated on a combination of Dixon
and Bates. Pet. 1636. In particular, Petitioner asserts that Dixon teaches
the “dynamically updating” limitation. Pet. 3033. Patent Owner disputes
the assertion by pointing out that the Dixon features on which Petitioner
relies have “nothing to do with the dynamic update of a presentation of when
security assessments are received.” Prelim. Resp. 1415. We agree with
Patent Owner that Petitioner’s assertion lacks merit. A short summary of
Dixon is in order.
1. Overview of Dixon (Exhibit 1004)
Dixon relates to improving computer and user security and protection
through reputation services. Ex. 1004, 7:1820. In particular, Dixon
describes clients 102 interacting with servers 104 through reputation server
110, such as by making a request through the Internet. Id. at 17:5157.
Figure 4, reproduced below, illustrates a reputation information process
involving user Internet requests, where a reputation analyis is performed. Id.
at 17:6165.
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According to Figure 4, and the accompanying description, reputation
analysis 404 may be performed on the results produced. Id. at 17:6266. A
decision thereafter may be made to “either provide the requested information
(e.g. the site or search results) 408 and or to provide an alert, caution,
warning, recommendation, or other reputation service as described herein
410.” Id. at 18:610. According to Dixon, the reputation analysis may be
provided, in the example relating to acceptable reputation evaluation in
search results, by presenting the search results. Id. at 18:1415.
Alternatively, Dixon describes that the user may be presented with search
results having “an indication of the reputation of each such result.” Id. at
18:2022.
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2. Discussion
Petitioner contends that Dixon displays a presentation and
dynamically updates the presentation because Dixon teaches that a search
result may be presented with indication of reputation and that reputations are
iteratively updated. Pet. 2933 (citing Dixon Abstract, cols. 18, 20, 27, 19,
29, 44, 45, and Ex. 1002, “the Jha Declaration”). Patent Owner challenges
Petitioner’s contention arguing that Dixon’s iterative updates of web site
reputations are “completely unrelated to dynamically updating a
presentation.” Prelim. Resp. 14. In particular, Patent Owner asserts that the
only Dixon disclosure that supports the contention of updating a presentation
of search results is found in the Abstract of Dixon. Id. at 15 (“an indicia of
risk associated with the search results is presented, in real-time, within the
graphical user interface”). Patent Owner, however, urges that we may draw
another inference from Dixon: that Dixon’s search engine returns search
results with augmented reputations of URLs appearing as a result of a real-
time database query. Id. (citing in support Dixon at 20:710).
We agree with Patent Owner that Petitioner has not demonstrated
sufficiently that Dixon’s iterative update teaches or suggests an update to the
search results presentation. In particular, we agree with Patent Owner that
Dixon teaches an update of reputation information, not of a display of search
results. Prelim. Resp. 15. The evidence in Dixon cited by Petitioner and
Patent Owner leads us to interpret Dixon as providing a reputation service
where the queries to the database are performed in real-time, as the search
results are prepared. As Patent Owner argues, the reference in Dixon’s
Abstract to a graphical user interface for presenting an indicia of risk in real-
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time is described more fully in Dixon as a real-time database query interface
for looking up the reputation of Web sites, programs, Web forms, and other
such content. Ex. 1004, Abstract, 20:1416. We agree with Patent Owner
that presenting search results, in real-time utilizing a database query, is
different from updating the presentation when additional security
assessments are received, as the claims require.
We also agree with Patent Owner that the Jha Declaration on this
point is conclusory. See Prelim. Resp. 15. Specifically, Dr. Jha, Petitioner’s
Declarant, states, without factual support, that “once an ‘Unknown’ site has
been iteratively updated to indicate whether it is safe or not, it will be
provided to the client computer so as to be added in the presentation of the
search results and reputation information.” Ex. 1002 ¶ 93. This opinion
evidence is unpersuasive, as it is not factually supported by Dixon. See 37
C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying
facts or data on which the opinion is based is entitled to little or no
weight.”). Also unpersuasive is Dr. Jha’s assessment of the disclosure of the
provisional application. Id. Even if we were to consider the provisional
application as part of the disclosure of Dixon, the application, at best,
supports the contention that Dixon’s database is updated while a search
request is requested, and providing a cache in case the service is unavailable.
See Pet. 30 n.12. That is, the updates in Dixon are of the database
reputation, but Dixon has not been shown sufficiently to update the
presentation with the reputation.
Accordingly, and for at least the above-identified reason, we are not
persuaded that Petitioner has demonstrated a reasonable likelihood of
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prevailing in its contention that the challenged claims are unpatentable over
Dixon and Bates.
C. GROUND BASED ROWAN
Petitioner asserts one ground predicated on the combination of Rowan
and Bates.
1. Overview of Rowan (Ex. 1008)
Rowan describes a general implementation of a service that includes a
search site that allows a user or system to provide an address and perform a
search. Ex. 1008, 3:2831. The services check for Secure Socket Layer
(SSL) activity, and checks information to assign a trustworthiness score to
the address that was searched, “and this information can be displayed or
returned to the user in a more detailed trustworthiness report.” Id. at
3:3141. Rowan further describes one embodiment of a toolbar that can use
the service. Id. at 9:911. The toolbar can display an indicator, such as a
“green” indicator that indicates the location is trustworthy. Id. at 9:1113.
“A waiting indicator indicates that the source is trying to locate the site, and
that the user should click on that location again.” Id. at 9:1618.
Rowan also describes that to reduce the number of accesses to the
service and provide greater efficiency, the trustworthiness level of the site
can be cached on the user’s computer. Id. at 11:710. The service provides
to the user an indication of the trustworthiness level and a period of time for
which the site may be considered to have that trustworthiness level. Id. at
11:10–14. “The user is thus caching the verification status and the
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trustworthiness of the site for some period of time, and the period of time
can be controlled or adjusted based on a set of rules.” Id. at 11:2528.

2. Discussion
Petitioner contends that Rowan’s disclosure of caching a
trustworthiness level teaches presenting a previously accessed location’s
trustworthiness indicator, while other assessments are retrieved. Pet. 5051
(citing the Jha Declaration, Ex. 1002 ¶¶ 121122, and Rowan, cols. 7, 8, 9,
11). Petitioner also contends that Rowan’s waiting indicator teaches that
“once Rowan’s service locates the site, it will dynamically update the
presentation to the user such that the user will be provided with an updated
trustworthiness report.” Pet. 52 (citing exclusively the Jha Declaration, Ex.
1002 ¶ 123). Petitioner does not rely on Bates for these limitations. Patent
Owner challenges Petitioner’s assessments of Rowan, particularly with
respect to Petitioner’s contention that Rowan’s presentation of the search
results is dynamically updated. Prelim. Resp. 18. We agree with Patent
Owner that Petitioner has not demonstrated sufficiently that Rowan in view
of Bates teaches the dynamically updating limitation.
First, Petitioner has shown that Rowan, at best, teaches that the
trustworthiness report may be retrieved upon a user requesting it, not that
Rowan teaches updating the presentation. For example, as Patent Owner
points out, and we agree, when a “waiting indicator” is provided on the
toolbar, the indicator “indicates that the source is trying to locate the site,
and that the user should click on that location again.” Ex. 1008, 9:1618.
Although the trustworthiness report may be retrieved afterwards, Petitioner
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does not point out how Rowan’s system “updates” the display absent user
intervention. In other words, the Petition states in a conclusory fashion that
“once Rowan’s service locates the site, it will dynamically update the
presentation to the user.” Pet. 52 (citing the Jha Declaration, Ex. 1002
¶ 123). The cited paragraph in the Jha Declaration does not elaborate on this
point. Nor do we find that Dr. Jha has supported this bare assertion with
factual support. Consequently, we agree with Patent Owner that the Petition
lacks sufficient factual support for the contention that Rowan in view of
Bates teaches the dynamically updating limitation.
Second, we are unpersuaded by Petitioner’s attempts to demonstrate
that Rowan teaches “displaying a presentation of the search results summary
with a portion of the security assessments while some of the security
assessments have not yet been received,” as recited in claim 8. Pet. 5051.
In particular, we note that the claim requires displaying a search results
summary with some, but not all, of the corresponding security assessments.
Petitioner relies on Rowan’s caching feature to support its contentions
regarding this limitation. The caching feature in Rowan is described with
respect to the toolbar embodiment. Ex. 1008, 10:6163. The toolbar
provides a single trustworthiness report, for the site accessed. See Figs.
7(a)7(g); see also Fig. 9(b) (showing toolbar providing trustworthiness
indicator for www.trustwatch.com and no other sites); 11:2124 (providing
that the validity of the trustworthiness indicator may be maintained for a
period of time regardless of whether the user visits other sites, or the system
may assume the status valid only as long as the user is on that site);
10:6411:3 (explaining that a user goes to an online bookstore and the
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toolbar client requests a trustworthiness indicator for that site). Similarly,
Rowan’s TrustWatch service uses a Cache List, but that service “runs over
the Internet, and provides a trust rating, in the form of a numeric score, for a
specified location [defined by a fully qualified DNS name] on the Internet.”
Ex. 1008, 7:915 (emphasis added). That is, the cache is used to maintain a
list of user-accessed websites and to interact with an application, e.g., the
toolbar, on a site-by-site basis.
Rowan’s search engine, however, is a different embodiment of
implementing access to the trustworthiness reports. See Ex. 1008, 6:1012
(“in the case of another service, for example, a search engine could be used
to provide results in response to a query”). Petitioner has pointed to
Rowan’s search engine embodiment as teaching the recited search engine
limitations. See Pet. 44 (referring to the embodiments depicted in Figs.
9(a)9(c) exclusively, and citing the Jha Declaration, Ex. 1002 ¶¶ 115116
(explaining that the search engine results in Rowan are performed using a
standard search engine receiving search requests by a user’s web browser)).
The Petition does not explain how, or if, Rowan’s search engine
embodiment utilizes the cache or Cache List. Nor does Petitioner explain
why Rowan’s search engine would be modified to use the local cache or
Cache List, as described, given the statement in Rowan that the icon
presented in the search engine results would indicate “not verified,” as
shown in Figure 9(c). See Ex. 1008, 6:1720. The indication of “not
verified” in Rowan’s search engine results appears to contradict Petitioner’s
contention that a “waiting indicator” would be used. Although all of these
separate embodiments are described in the same reference, Petitioner has the
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burden of supporting in detail its contentions of how the various
embodiments in the prior art reference teach the claimed limitations. See 37
C.F.R. § 42.22 (a)(2). Petitioner’s piecemeal presentation of the claim
limitations, without adequate explanation of how the various embodiments
in the prior art tie to the claims, is insufficient to persuade us that the
standard for institution has been met.
Accordingly, we are not persuaded that Petitioner has shown
sufficiently a reasonable likelihood of prevailing in its contention that the
challenged claims are unpatentable as obvious over Rowan and Bates.
III. CONCLUSION
For the foregoing reasons, we do not institute inter partes review of
the ’182 patent.
IV. ORDER
After due consideration of the record before us, it is
ORDERED that the Petition is denied and no trial is instituted.
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PETITIONER:
Joseph J. Richetti (Lead Counsel)
Daniel A. Crowe (Back-up Counsel)
BRYAN CAVE LLP
joe.richetti@bryancave.com
dacrowe@bryancave.com

PATENT OWNER:

James Hannah (Lead Counsel)
Jeffrey H. Price (Back-up Counsel)
KRAMER LEVIN NAFTALIS & FRANKEL LLP
jhannah@kramerlevin.com
jprice@kramerlevin.com

Michael Kim (Back-up Counsel)
FINJAN INC.
mkim@finjan.com

kis