Opposition to Motion to Amend for Inter Partes Review of U.S. 8,392,684 UNITED STATES PATENT AND TRADEMARK OFFICE

Transcription

1 Paper No. UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RIVERBED TECHNOLOGY, LLC Petitioner v. SILVER PEAK SYSTEMS, INC. Patent Owner Patent No. 8,392,684 Title: DATA ENCRYPTION IN A NETWORK MEMORY ARCHITECTURE FOR PROVIDING DATA BASED ON LOCAL ACCESSIBILITY Inter Partes Review No. IPR Before JUSTIN T. ARBES, HYUN J. JUNG, and MIRIAM L. QUINN, Administrative Patent Judges. PETITIONER RIVERBED TECHNOLOGY, LLC S OPPOSITION TO PATENT OWNER S MOTION TO AMEND i

2 TABLE OF CONTENTS I. Introduction... 1 II. Relief Requested... 1 III. Reasons for the Requested Relief... 1 A. Patent Owner s motion to amend should be denied because the substitute claims enlarge the scope of the challenged claims Patent Owner has eliminated that the data transmitted by the source-site appliance in the store instruction must be encrypted Proposed Substitute Claim 38 does not retain all of the features of the corresponding claim B. Patent Owner has not shown how the claims are generally patentable over the prior art... 4 C. Patent Owner has not met its burden in showing how the claims are patentable over the prior art as required by 37 C.F.R Proposed Claims 25, 26, 31-33, 38-40, and are Anticipated by McCanne Proposed claims 25, 26, 31-33, 38-40, and are obvious over McCanne Proposed Claims 27-30, 34-37, and are unpatentable as presented in the petition...15 IV. Conclusion...15 PETITIONER S EXHIBIT LIST...16 ii

3 I. Introduction Petitioner Riverbed Technology, LLC responds in opposition to Patent Owner s motion to amend that proposes substitute claims As will be shown below, the proposed claims (i) improperly enlarge the scope of the challenged claim, (ii) have not been shown by Patent Owner to be patentable, and (iii) are indeed unpatentable over the prior art. II. Relief Requested Petitioner asks that the Board deny Patent Owner s motion to amend and not enter proposed claims III. Reasons for the Requested Relief A. Patent Owner s motion to amend should be denied because the substitute claims enlarge the scope of the challenged claims. According to 37 C.F.R , a motion to amend can be denied where it seeks to enlarge the scope of the claims of the patent or introduce new subject matter. These rules were clarified in Idle Free, which stated that under 37 C.F.R (a)(2)(ii), a substitute claim may not enlarge the scope of the challenged claim it replaces by eliminating any feature. Idle Free Systems, Inc. v. Bergstrom, Inc., IPR , Paper No. 26 at Patent Owner has eliminated that the data transmitted by the source-site appliance in the store instruction must be encrypted. Original claim 1 of the 684 patent recites a source-site appliance that sends 1

4 data to a destination-site appliance. The claim requires that the source-site appliance encrypt the data before it is sent, and that the destination-site appliance store the data from the source-site. The claim further requires that the destination-site appliance decrypt the encrypted response data in response to a retrieve instruction. RIV-1001, p.26, see also, Id, pp (where independent claims 8 and 15 recite similar features). Thus, original claim 1 recites that data is first encrypted at the source-cite appliance and then sent to and decrypted by the destination-site appliance. Patent Owner s expert confirms that the data is encrypted by the source-site appliance, and then transmitted to the destination-site appliance where it is decrypted: Q. Would you agree with me then that the system of Claim 1, the destination site appliance decrypts data; correct? A. Yes.... Q. In Claim 1, which side encrypts the data that the destination site appliance decrypts? A. In Claim 1, the source site encrypts that data. RIV-1010, Dr. Kuenning Deposition, pp Accordingly, original claim 1 of the 684 patent requires that the data transmitted by the source-site appliance to the destination-site appliance be in encrypted form. Thus, in claim 1, the data flowing between the two appliances is encrypted. In contrast, new claim 25 (proposed substitute for claim 1) enlarges the scope 2

5 of claim 1. New claim 25 recites that the source-site appliance transmit original data to the destination-site appliance. See Patent Owner s Motion to Amend, pp.1-7 (including where new substitute independent claims 32 and 39 recite similar features). But, according to Patent Owner s expert, original data is unencrypted data. See RIV-1010, pp Thus, in claim 25 (proposed substitute for claim 1), the data flowing between the two appliances is not encrypted. The rule for broadening a claim is well established in the context of reissues and reexaminations: if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. 1 In the present case, if a system transmitted un-encrypted data from the source to destination appliance, it would not have been covered by original claim 1 (which required the data to be encrypted), but now it could be covered by new claim 25 (which does not require the transmitted data to be encrypted). Thus, new claim 25, along with claims 32 and 39, are broader, at least in this one aspect. Therefore, since the proposed substitute independent claims eliminate 1 MPEP , citing Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603 (CCPA 1958). It is understood that the present proceeding is not an examination, but the PTO s and Court s instructions are nevertheless relevant. 3

6 features, the proposed substitute claims enlarge the scope of the challenged claims they replace in at least one respect. Patent Owner s motion should be denied. 2. Proposed Substitute Claim 38 does not retain all of the features of the corresponding claim 14. In the motion to amend, Patent Owner states that [t]he proposed substitute claims, retain all of the features of the corresponding original claims... PO Motion, p.9 (emphasis added). In that regard, Patent Owner proposed claim 38 as a substitute for claim 14, which depended from claim 9. However, proposed claim 38 depends directly from proposed claim 32 (the substitute for claim 8). That is, proposed claim 38 does not recite the features of claim 9 of the 684 patent, and as such, laim 38 does not retain the features of the corresponding claim 14 (which included the features of original claim 9). Thus, claim 38 enlarges the scope of the claim it replaces, and Patent Owner s motion should be denied. B. Patent Owner has not shown how the claims are generally patentable over the prior art. Idle Free reiterated that 37 C.F.R (c) places the burden on the patent owner to show general patentability over prior art. Idle Free, Paper No. 66 at 33. Here, the Patent Owner relies primarily on the expert declaration by Dr. Kuenning for allegedly showing general patentability over the prior art. However, Dr. Kuenning s declaration falls far short of the requirements set forth in Idle Free. Did not consider other contexts. The Patent Owner must show whether 4

7 [the] methods of operations [of the proposed substitute claims] pre-existed in other contexts, and, if so, how they worked. Id. at 35 (referring to this as essential ). Yet, Patent Owner s expert acknowledged that he only searched two sources to look[] for examples of security vulnerabilities in WAN optimization devices. See RIV-1010, at pp Moreover, Patent Owner s expert freely admitted he (i) did not conduct any searches generally, (ii) did not conduct any patent searches, and (iii) did not look through information available on the Internet from companies that are involved in WAN optimization. Id. Thus, Patent Owner s expert did not consider other contexts for the alleged point of novelty for the new claims (hereinafter referred to as disk encryption ). Still further, Patent Owner s expert basically admitted that he was unfamiliar with the WAN optimization marketplace in general when he was unable to identify any other companies in the marketplace other than the parties in this proceeding. 2 By conducting such a limited analysis and by not presenting an expert having extensive personal knowledge of the marketplace, Patent Owner has failed to meet the essential step of showing the other methods of operations that pre-existed. Disk encryption was known and used. Contrary to the Patent Owner s and Dr. Kuenning s arguments, not only was disk encryption well known at the time of 2 Id. As shown in RIV-1011, not only were Riverbed and Silver Peak not the only two WAN optimization companies at the time, they were not even the largest. 5

8 the invention, it was commonly used in WAN optimization devices. First, Patent Owner argues that it was not known to perform disk encryption on a receiving WAN optimization device. Yet, it was known in the prior art to perform disk encryption on WAN optimization devices to secure sensitive data. See RIV-1012 at 1-8 ( Tolly Report ). Specifically, the Tolly Report discloses WAN optimization devices in communication that maintain end-to-end security where data stored within the device are encrypted and secure. Id. at 4 and Fig. 6. Second, Patent Owner argues that no one in the art recognized the security needs for WAN optimization devices. Yet, it was precisely known in the prior art that WAN optimization devices had security needs. See RIV-1013 at 2-6. It was so well-known that it was a frequently asked question[]. Id. at 2. Third, Patent Owner argues that encryption techniques would not be applied to WAN optimization devices. However, the portions of the 684 patent cited by Patent Owner for describing that the destination-site appliance can encrypt received data discuss storing encrypted data in a database. See PO Motion, pp.8-9 (citing to Figs. 4 & 7, 67 & 76 of the 684 patent). Encrypting data in a database for security reasons was exceedingly well known in the art prior to the filing date of the 684 patent. See RIV-1014 (U.S. Publication No. 2002/ disclosing encrypting data for security purposes in databases in a network); RIV-1015 (U.S. Publication No. 2004/ disclosing encrypting data in a database for security); 6

9 RIV-1016 (U.S. Patent No. 6,963,980 disclosing protecting data in a database via encryption); RIV-1017 (U.S. Patent No. 8,386,797 disclosing transparent encryption on data storage); RIV-1018 (U.S. Patent No. 7,278,016 disclosing encryption of temporary/fleeting and permanent data in a data storage medium); RIV-1019 (U.S. Publication No. 2003/ disclosing encrypting data in a database for security); RIV-1020 (U.S. Publication No. 2003/ disclosing encrypting data within database for database security); RIV-1021 U.S. Patent No. 7,111,005 disclosing automatic database encryption for security); and RIV-1022 (PCT Publication No. WO disclosing reencryption of data in database for security). It is expected, reasonably, to explain [] pre-existing manners of operation, and why it would not have been applicable to render the invention [] obvious to one with ordinary skill in the art. Idle Free, Paper No. 66 at pp Here, it was clearly well-known in the art to (i) perform disk encryption on data in a sending and receiving WAN optimization device, (ii) to encrypt data stored in a database in a network (just as described in the 684 s specification), and (iii) investigate encryption as a tool to protect temporary/fleeting data sitting on a network device. Neither Patent Owner nor Patent Owner s expert provided any of this evidence in the motion to amend, much less provided any detailed explanation as to why these pre-existing manners of operation and knowledge of persons of skill in the art would not have rendered the proposed substitute claims obvious. 7

10 In view of the state of the art, where it was known to encrypt data in WAN optimization devices, where it was known to encrypt data in databases (i.e., the exact technology being claimed by Patent Owner), where the security risks of WAN optimization devices were known, clearly Patent Owner has not met their burden to demonstrate general patentability over the prior art. The motion to amend should be denied. C. Patent Owner has not met its burden in showing how the claims are patentable over the prior art as required by 37 C.F.R Patent Owner s motion to amend should be denied because Patent Owner has not met its burden of proof as required by 37 C.F.R In Idle Free, the Board reiterated that Patent Owner has the burden to show patentability over the prior art. Idle Free, Paper No. 66 at pp As shown below, the proposed substitute claims are invalid over the same art used in the original petition. 1. Proposed Claims 25, 26, 31-33, 38-40, and are Anticipated by McCanne 376 Petitioner challenges the validity of proposed claims 25, 26, 31-33, 38-40, and as anticipated by McCanne 376 (RIV-1003) under 35 U.S.C. 102(b). In that regard, Patent Owner limits its arguments to proposed claim 25. Thus, all proposed substitute claims presented by Patent Owner stand or fall together with respect to the features recited in claim 25. McCanne 376 anticipates the proposed claims because the STA (source-site 8

11 appliance) intercepts data (original data) sent from the server (source-site computer) to the client (destination-site computer). See RIV-1003, 60, 69, 89, and 94. McCanne 376 further teaches that the STA (source-site appliance) encrypts the intercepted data (original data) and stores the encrypted data in its PSS (first memory device). See RIV-1003, 87-89, 94, and 95, Table 1, and claims 4 and 5. McCanne 376 teaches that the STA (source-site appliance) determines whether the intercepted data (original data) exists in the PSS of a CTA (destinationsite appliance). RIV-1003, 69, 78, and 90. McCanne 376 teaches that the STA transmits encoded data (store instruction) that includes the intercepted data (original data) in the form of bindings to the CTA. RIV-1003, 69, 78, 90, and 94 (Table 1 and 88 of McCanne 376 state that encoded data includes unencoded raw data and that the sending transaction accelerator can transmit verbatim segments, namely original data.) McCanne 376 teaches that the CTA (destinationsite appliance) is configured to receive the encoded data (store instruction) that includes the data (original data). See RIV-1003, 78, 87-89, 94-97, 101, and Table 1 (noting a receiving TA using the the segment data in a binding to reconstruct the original data. ). And, McCanne 376 teaches encrypting the received data and storing the encrypted data in the PSS (second memory device) of the CTA. See RIV-1003, 78, 87-89, and 101 Table 1, and Claims 4 and 5. Patent Owner s premise for patentability over McCanne 376 is based on an 9

12 argument that McCanne 376 does not disclose performing encryption of received data at a receiving transaction accelerator (TA). See PO Motion, pp Patent Owner acknowledges, though, that McCanne 376 teaches disk encryption at the sending TA. Id. at 11. Nevertheless, Patent Owner argues that [t]he prior art does not disclose or suggest the claimed feature of encrypt[ing] the original data received with the store instruction at the destination-site appliance to generate encrypted received data and stor[ing] the encrypted received data in the second memory device. PO Motion, p. 10. Thus, Patent Owner s argument is that, while McCanne 376 teaches disk encryption at the sending TA, McCanne 376 does not similarly discuss encryption at the receiving TA. This is simply incorrect. 10

13 In reference to Fig. 2 of McCanne 376, reproduced above, Patent Owner s expert acknowledges that McCanne discloses that either transaction accelerator 20 or 22 can be a receiver that stores received segment data in its respective persistent segment store: Q. Both transaction accelerator 20 and transaction accelerator 22, can be either a sender or receiver; right? A. Right. Q. Both transaction accelerators, 20 and transaction accelerator 22, has it's own storage medium; right? A. That's correct. Q. That storage medium is the persistent segment storage; right? A. Yes.... Q. So a receiver stores received segment data in it's PSS? A. Yes. RIV-1010, at That is, Patent Owner s expert has acknowledged that McCanne 376 discloses that both the sending TA and the receiving TA store segment data. This is important because McCanne explicitly teaches encrypting segment data when it is stored: when segment data is to be stored as part of a segment reference, transforming the segment data via... an encryption function, RIV-1003, 87-89, Claims 4 and 5. This is even acknowledged by Patent Owner: McCanne 376 mentions that data can be stored encrypted... PO Motion, p. 14. Accordingly, McCanne 376 expressly discloses: (i) the receiving TA stores data (RIV-1010, at 24-25) and (ii) that, when data is stored, 11

14 the data is encrypted (RIV-1003, 87-89, Claims 4 and 5). Patent Owner s argument that McCanne 376 does not teach encrypting at the receiving TA is erroneous. 2. Proposed claims 25, 26, 31-33, 38-40, and are obvious over McCanne 376. Even assuming arguendo that McCanne 376 does not anticipate a receiving WAN optimization device that encrypts and stores data, the present record clearly makes obvious such a modification. Encrypting data at a receiving WAN optimization device is obvious in view of McCanne 376, as evidenced by the testimony of Patent Owner s expert. Patent Owner s expert has acknowledged that McCanne 376 discloses that the receiving WAN optimization device stores segment data. RIV-1010, at He also states that [a]t the time of the invention, a person of ordinary skill in the art would have understood that data could be secured when it is being stored in files on servers and recognized that encryption techniques could be used to secure it. SIL And, Patent Owner s expert states that the knowledge existed to implement disk encryption both on the sending side and the receiving side. RIV at 24. However, Patent Owner s expert argues that a person of ordinary skill in the art would not have found it obvious to modify McCanne 376 to perform encryption at the receiving (destination-site) appliance and store the received encrypted data at 12

15 the destination-site appliance because there were no reasons unrelated to security why it would have been obvious to modify McCanne 376 to perform encryption at the receiving TA. SIL &76. In his deposition, Patent Owner s expert contradicted this earlier conclusion: A. It was generally known to people of ordinary skill in the art that in certain circumstances where data was at risk. Encryption was one of the solutions available for protecting that data, so if the data is on the source side residing on a static disk, then yes, encrypting that data on that disk would be known to people of ordinary skill in the art and, similarly, for data on the destination side. RIV-1010 at 7 (emphasis added). Thus, according to Patent Owner s expert, it was known to persons of ordinary skill in the art that encryption was a solution for protecting data on the destination side. Further, Patent Owner s expert also argues that modification of McCanne 376 would not have been obvious because a person of ordinary skill in the art would not have appreciated the data security risks and vulnerabilities posed by WAN optimization appliances at the time. SIL However, contrary to Patent Owner s expert s assertion, the main concern of persons having ordinary skill in the art was the security of data stored on WAN optimization devices: The main concern for a security-conscious organization is that a Steelhead data store potentially holds gigabytes of sensitive data. IT managers responsible for data security are concerned by questions of how an attacker might access the Steelhead data store and use the 13

16 information in ways that might be harmful to the organization. This paper answers frequently asked questions about the security of the Steelhead data store. RIV-1013 at p.2 (emphasis added) ( White Paper ). Moreover, the White Paper states that [a] future release of the Steelhead appliance will include disk encryption as a security measure to protect data on the WAN optimization devices. See RIV-103 at p.3. Further, the White Paper recognized the perceived performance impact that disk encryption would have on a WAN optimization device. Id. In fact, the White Paper evidences that persons in the field were so aware of the security issue in WAN optimization device, that it was part of the frequently asked questions. RIV-1013 at p.2. Patent Owner s assertions that persons having ordinary skill in the art did not recognize the security threats for WAN optimization devices are untrue. The modification of McCanne 376 to encrypt data at both the sending and receiving side device would have been a predictable result because, as shown in the White Paper, the main concern of those skilled in the art was the security of data stored on WAN optimization devices. As a solution to this problem, the White Paper states that disk encryption would be included in a future release of the discussed WAN optimization device. And, as acknowledged by Patent Owner s expert, it was known how to implement disk encryption on a receiving side device. Thus, McCanne 376 renders obvious the claimed feature of encrypt[ing] the 14

17 original data received with the store instruction at the destination-site appliance to generate encrypted received data and stor[ing] the encrypted received data in the second memory device, as recited by claim Proposed Claims 27-30, 34-37, and are unpatentable as presented in the petition As discussed above, Patent Owner does not individually argue the patentability of any of the proposed substitute claims other than the above discussed portions of claim 25. Therefore, the other features recited in claims 27-30, 34-37, and were previously shown to be, and still are, unpatentable as discussed in the petition. See Petition, at IV. Conclusion For at least the foregoing reasons, Petitioner respectfully requests that the Board deny Patent Owner s Motion to Amend. Respectfully submitted, /David M. O Dell/ David M. O Dell Lead Counsel for Petitioner Registration No. 42,044 Dated: October 14, 2014 HAYNES AND BOONE, LLP 2323 Victory Avenue, Suite 700 Dallas, Texas Telephone: 972/ Facsimile: 214/

18 PETITIONER S EXHIBIT LIST October 14, 2014 RIV-1001 Hughes, U.S. Patent No. 8,392,684 RIV-1002 Prosecution History of U.S. Patent No. 8,392,684 RIV-1003 McCanne et al., U.S. Publication No. 2004/ RIV-1004 Stein et al., U.S. Publication No. 2003/ RIV-1005 Rarick, U.S. Publication No. 2004/ RIV-1006 Anand, U.S. Publication No. 2003/ RIV-1007 Gleichauf, U.S. Publication No. 2003/ RIV-1008 RIV-1009 RIV-1010 RIV-1011 RIV-1012 RIV-1013 Declaration of Steven W. Landauer Excerpts from Newton s Telecom Dictionary, 17 th Ed. Dr. Kuenning Deposition Lui, Vincent, excerpt from Worldwide WAN Optimization Management Forecast and Analysis, IDC#E3371, Vol. 1 (May 2005). The Tolly Group, Certeon, Inc. S-Series Acceleration Appliance: Secure Application Networking Performance Evaluation, No , February Security and the Riverbed Steelhead Data Store: Frequently Asked Questions, A Riverbed Technology, Inc. White Paper, April 11, RIV-1014 Benfield, et al., U.S. Publication No. 2002/

19 RIV-1015 Dettinger, et al., U.S. Publication No. 2004/ RIV-1016 Mattsson, U.S. Patent No. 6,963,980 RIV-1017 Danilak, U.S. Patent No. 8,386,797 RIV-1018 Detrick et al., U.S. Patent No. 7,278,016 RIV-1019 Newman et al., U.S. Publication No. 2003/ RIV-1020 He et al., U.S. Publication No. 2003/ RIV-1021 Wessman, U.S. Patent No. 7,111,005 RIV-1022 Valfridsson et al., PCT Publication No. WO

20 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RIVERBED TECHNOLOGY, LLC PETITIONER V. SILVER PEAK SYSTEMS, INC. PATENT OWNER PATENT NO. 8,392,684 Inter Partes Review No. IPR CERTIFICATE OF SERVICE The undersigned hereby certifies that service was made on Patent Owner s counsel of record as detailed below. Date of service October 14, 2014 Manner of service Electronic Mail: ddonnelly-ptab@fenwick.com; jamselptab@fenwick.com; emancera@fenwick.com Documents served Persons served Petitioner Riverbed Technology, LLC s Opposition to Patent Owner s Motion to Amend; Petitioner s Exhibit List Darren E. Donnelly Jason E. Amsel Fenwick & West LLP Silicon Valley Center 801 California Street Mountain View, CA /David M. O Dell/ David M. O Dell Lead Counsel for Petitioner Registration No. 42,044 18