Trend Micro Inc. v. Cupp Computing As

• Court: Court of Appeals for the Federal Circuit
• Decided: October 25, 2022
• Docket: 20-2237
• Status: Unpublished

Opinion

Case: 20-2237 Document: 53 Page: 1 Filed: 10/25/2022

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

TREND MICRO INC., Appellant

v.

CUPP COMPUTING AS, Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________

2020-2237, 2020-2238 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019- 00561, IPR2019-00641. ______________________

Decided: October 25, 2022 ______________________

STANLEY JOSEPH PANIKOWSKI, III, DLA Piper LLP (US), San Diego, CA, argued for appellant. Also repre- sented by ROBERT BUERGI, MARK D. FOWLER, East Palo Alto, CA. Case: 20-2237 Document: 53 Page: 2 Filed: 10/25/2022

JAMES R. HANNAH, Kramer Levin Naftalis & Frankel LLP, Redwood Shores, CA, argued for appellee. Also rep- resented by PAUL J. ANDRE; CRISTINA MARTINEZ, JEFFREY PRICE, New York, NY.

BENJAMIN T. HICKMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for intervenor. Also represented by KAKOLI CAPRIHAN, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED. ______________________

Before DYK, TARANTO, and STARK, Circuit Judges. TARANTO, Circuit Judge. Trend Micro Inc. filed petitions in the Patent and Trademark Office seeking inter partes reviews (IPRs) un- der 35 U.S.C. §§ 311–19 of certain claims of two patents owned by CUPP Computing AS—claims 1, 7, and 16 of U.S. Patent No. 8,365,272 and claims 1, 6, and 7 of U.S. Patent No. 9,756,079. The PTO’s Patent Trial and Appeal Board, after instituting and conducting the requested reviews, is- sued final written decisions holding each claim 1 to be un- patentable but rejecting Trend Micro’s challenges to claims 7 and 16 of the ’272 patent and claims 6 and 7 of the ’079 patent. Trend Micro Inc. v. CUPP Computing AS, No. IPR2019-00561, 2020 WL 3709007, at *1 (P.T.A.B. July 6, 2020) (IPR561 Decision); Trend Micro Inc. v. CUPP Com- puting AS, No. IPR2019-00641, 2020 WL 3697863, at *1 (P.T.A.B. July 6, 2020) (IPR641 Decision). Trend Micro ap- peals the Board’s holding regarding claims 7 and 16 of the ’272 patent and claim 7 of the ’079 patent. We vacate the Board’s final written decisions on each appealed claim and remand. Case: 20-2237 Document: 53 Page: 3 Filed: 10/25/2022

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I A The ’272 patent is the grandparent of the ’079 patent, so we cite only to the former’s specification (replicated in relevant part in the latter). The specification discusses as- pects of communication between (a) a computer (or a par- ticular application on the computer) that is part of a particular network (e.g., the computer’s home network) and (b) computers or applications outside that network (e.g., on a public network). In particular, it recognizes that such a computer or application may have an “internal” (e.g., home- network) address that, for one or more reasons, should not be included as the source (originating) address in a commu- nication sent outside that network. Computers often communicate with one another using packets that adhere to an Internet Protocol, i.e., using IP packets. Such a packet includes a header that contains a source IP address and a destination IP address, which typ- ically identify the source and destination computers. The packet may also include source and destination port num- bers to identify source and destination applications within the source and destination computers. IP addresses and port numbers are important for reliably communicating, by initial message and reply, between the source and intended destination. Such reliable communication can be impaired when a computer that is part of a local (home) network is assigned an IP address that is unique within that network (for use in internal-to-the-network communication) but that is not unique within a broader public network (because another computer outside the local network may be using it). To deal with the problem, and its counterpart problem for non- unique port numbers, when a packet from such a local-net- work computer is destined for an external computer, the source’s internal-network IP address and port number in the outgoing packet are often translated, before leaving the Case: 20-2237 Document: 53 Page: 4 Filed: 10/25/2022

local network, and replaced with a public-source IP address and port number that are (at the time) unique within the public network. This process is referred to as network ad- dress translation (NAT) and port address translation (PAT)—collectively, NPAT. Such translations can achieve the uniqueness needed for reply communication by the ex- ternal computer and can protect the security and privacy of the internal-network computer and application ad- dresses by situating the NPAT-processing unit as a firewall intermediary in the line of reply communication. Computers must obtain public IP addresses from some- where, and there are various means for doing so. For ex- ample, a computer administrator could manually assign an IP address. Commonly, though, computers use Dynamic Host Configuration Protocol (DHCP) to get an IP address, for use as a source address in outgoing packets, within a given network. Under DHCP, computers request IP ad- dresses for use as public-source IP addresses in outgoing packets and receive (potentially renewable) leases for ad- dresses for set times. The parties agree that claims 7 and 16 of the ’272 pa- tent and claim 7 of the ’079 patent deal specifically with outgoing communications from a computer application to addresses in networks that are external to the originating network, with such communications including a source ad- dress (useful to enable an eventual reply) and a destination address. In particular, the claims recite “dynamically iso- lating” the internal address of a computer application from an external network by translating the application’s inter- nal address so as to include a different origination address in the message sent to a computer outside the home net- work. Claim 16 of the ’272 patent reads: 16. A method within a computer of processing outgoing data, the method comprising: Case: 20-2237 Document: 53 Page: 5 Filed: 10/25/2022

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receiving the outgoing data from an applica- tion, the application being associated with an in- ternal address; translating, using a network address transla- tion engine within the computer, the internal ad- dress into a public address; routing, using a driver within the computer, at least a subset of the outgoing data to an external network using the public address, thereby dynami- cally isolating the internal address from the exter- nal network; and providing, using a network interface within the computer, the subset of the outgoing data to the ex- ternal network. ’272 patent at col. 26, lines 37–48 (emphasis added). Claim 7 of the ’079 patent reads: 7. A system comprising: a network interface configured to be coupled to an external network; a firewall in communication with the network interface, the firewall configured to perform both network-level security and application-level secu- rity on incoming data packets, the firewall being further configured to reject the incoming data packets if the incoming data packets include mali- cious content according to a security policy, the firewall being configured to allow the incoming data packets to pass to one or more applications if the incoming data packets do not include malicious content according to the security policy; a computer system in communication with the firewall, the computer system having one or more applications associated with at least one applica- tion address, the computer system being Case: 20-2237 Document: 53 Page: 6 Filed: 10/25/2022

configured to send to the firewall outgoing data packets including an application identifier identi- fying a particular application of the one or more applications to the firewall; and an address translation engine configured to translate the at least one application address asso- ciated with the particular application of the one or more applications to an external address, thereby dynamically isolating the particular application of the one or more applications from the external net- work. ’079 patent, col. 26, lines 4–29 (emphasis added). Claim 7 of the ’272 patent, col. 25, lines 34–57, is a system claim that is similar, for purposes of these appeals, to claim 7 of the ’079 patent. And the parties have not shown that the “dynamically isolating” limitations of the three claims at issue differ from each other in any way material to these appeals, so we use the singular and refer to the “dynami- cally isolating” limitation. B In its IPR petitions, Trend Micro asserted that the claims are unpatentable under 35 U.S.C. § 103 (2008) 1 be- cause their subject matter would have been obvious, at the relevant priority date in 2007, over certain combinations of prior-art references that include WO2006/069041 (Sikdar), which was published on June 29, 2006, and is undisputedly prior art. In addressing the “dynamically isolating”

1 The parties do not dispute the Board’s determina- tion, IPR561 Decision at *6 n.5; IPR641 Decision at *6 n.6, that, for both patents at issue, the applicable version of § 103 is the version pre-dating the Leahy-Smith America Invents Act, Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 293 (2011). Case: 20-2237 Document: 53 Page: 7 Filed: 10/25/2022

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limitation of claims 7 and 16 of the ’272 patent and claim 7 of the ’079 patent—the claims on appeal now—Trend Micro asserted that Sikdar teaches that limitation. See IPR561 Decision at *13–15, 19–20; IPR641 Decision at *19–21. In ultimately rejecting Trend Micro’s challenge to these three claims, the Board’s sole stated basis was that Trend Micro failed to show that teaching in Sikdar. IPR561 Decision at *13–15, 19–20; IPR641 Decision at *19–22. 2 In reaching that conclusion, the Board relied on a claim construction now accepted as correct by both parties. The Board construed “dynamically isolating” in its institution decisions sua sponte (applying the standard of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)), and it stated in its final written decisions that it was maintain- ing its earlier construction. J.A. 2139–41; IPR561 Decision at *7–10. It construed the phrase “as including the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses.” IPR561 Decision at *8. It added that the phrase “further refer[s] to an oper- ation that occurs ‘when and as needed.’” Id. With respect to the latter aspect, the Board explained that the term “dy- namically” modifies “isolating,” id. at *9, so that transla- tion that occurs “beforehand, at device configuration[,] . . . would not be dynamic,” id. The parties accept that con- struction on appeal. Opening Br. at 26–28; Response Br. at 18; Reply Br. at 5; Oral Arg. at 12:31–13:20. The issue on appeal is whether, as the Board ulti- mately found, Sikdar fails to disclose what that construc- tion requires. Sikdar discloses in relevant part a Reconfigurable Semantic Processor (RSP) capable of per- forming NAT and PAT. J.A. 836–39. The RSP, Sikdar

2 The Board’s construction of “dynamically isolating” and its obviousness analysis with respect to this claim lim- itation are the same in the two IPRs. We hereafter cite only to the Board’s rulings in IPR2019-00561. Case: 20-2237 Document: 53 Page: 8 Filed: 10/25/2022

teaches, “can be programmed for NAT/PAT operations that convert IP addresses and/or port numbers for packets trav- eling thru the firewall 1062 between public IP addresses that are used for transporting the packet over public net- work 12 and private IP addresses that are used for trans- porting the packet over the private network 24.” J.A. 836. The RSP in Sikdar includes a Semantic Processing Unit (SPU). J.A. 795–96, 914. Sikdar states that the SPU “gen- erates the public IP address and port number for the packet” and that “the public IP address is usually the IP address assigned to firewall 1062.” J.A. 838. Sikdar fur- ther states, regarding that embodiment, that there are typ- ically “multiple unique private IP addresses associated with different network processing devices operating in pri- vate network 24” and that “only one, or a few, public IP addresses may be used to represent the multiple private IP addresses.” Id. Sikdar also discloses an alternative em- bodiment, in which one-to-one mapping occurs, disclosing that “one or more IP addresses have an associated individ- ual public IP address.” J.A. 837. In finding that Sikdar does not disclose the “dynami- cally isolating” limitation, the Board found that Sikdar uses the same public IP address, i.e., the address of the fire- wall, as the source (originating) address for all outgoing communications and does not disclose the source from which Sikdar obtains that public IP address. IPR561 De- cision at *14. In making that determination, the Board found that the SPU in Sikdar does not “actually” generate the public IP address used as the source address in out- going packets. Id. Based on those findings, the Board de- termined that Sikdar does not disclose the translation of IP addresses “using DHCP or other source of addresses.” Id. The Board also noted that Sikdar does not satisfy the “dy- namically isolating” limitation because its “public IP ad- dress is not determined ‘on the fly’” and because, “[i]nstead, the same firewall IP address is used.” Id. Case: 20-2237 Document: 53 Page: 9 Filed: 10/25/2022

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C Trend Micro timely appealed the Board’s final written decisions. We have jurisdiction under 28 U.S.C. § 1295(a)(4) and 35 U.S.C. §§ 141(c), 319. II We review the Board’s legal conclusions de novo and its factual findings for substantial-evidence support. Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). “A finding is supported by substan- tial evidence if a reasonable mind might accept the evi- dence to support the finding.” Id. Obviousness is a question of law based on underlying findings of fact, includ- ing what the prior art teaches. See, e.g., In re Warsaw Or- thopedic, Inc., 832 F.3d 1327, 1329-31 (Fed. Cir. 2016). As we have noted, the parties agree that the Board’s express construction of the claims—requiring “the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses” and “an operation that occurs ‘when and as needed’”—is correct. We need only decide whether substantial evidence supports the Board’s finding that Sikdar does not disclose “dynamically isolating” under that construction. See Seal-Flex, Inc. v. Athletic Track & Court Construction, 172 F.3d 836, 842 (Fed. Cir. 1999) (accepting as correct a construction adopted by the district court that the parties did not dis- pute on appeal). We conclude that the Board’s finding is not supported by substantial evidence. We do not see, and CUPP has not pointed us to, any evidence that would per- mit a reasonable finding that Sikdar fails to teach “dynam- ically isolating” under the agreed-on construction. We therefore reject that Board finding regarding Sikdar, as we have done in other cases where the evidence presented could not reasonably support a Board finding. See, e.g., Becton, Dickinson & Co. v. Baxter Corp. Englewood, 998 F.3d 1337, 1340–42 (Fed. Cir. 2021); Corning v. Fast Felt Case: 20-2237 Document: 53 Page: 10 Filed: 10/25/2022

Corp., 873 F.3d 896, 901–03 (Fed. Cir. 2017); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077 (Fed. Cir. 2015). Sikdar clearly discloses “the use of DHCP or other source of addresses in connection with a NAT engine to translate IP addresses.” This claim construction does not require the use of DHCP or a source that is, in some nar- rowing way, similar or comparable to DHCP. By its broad terms, this construction simply requires any source of ad- dresses—“DHCP or other source of addresses.” Sikdar teaches this aspect of the claim construction in several ways: It discloses that the SPU “generates” the public IP address, says that this address is “usually” the address “as- signed to” the firewall, and describes, in an alternative em- bodiment, a one-to-one mapping of private and public addresses. J.A. 837–38. These disclosures teach a “source of addresses in connection with a NAT engine to translate IP addresses.” In finding otherwise, the Board found that Sikdar does “not actually” generate the public IP address because “the public IP address is simply the firewall’s public IP ad- dress,” IPR561 Decision at *14, so that “Sikdar discloses using the same IP address (the IP address of the firewall) for all packets traveling from the private network to the public network,” id. But even if Sikdar were limited to us- ing an unvarying public IP address (of the firewall), it still falls within the claim construction, which nowhere re- quires variability of the swapped-in public IP address from packet to packet. Indeed, the Board explicitly rejected CUPP’s initial argument to build into a claim construction a requirement that would “involve[] addresses that are not ‘predetermined.’” Id. at *9. After all, as the Board ex- plained, “dynamic” in the claim phrase refers to the act of translating (converting, swapping), not to variability of re- placement addresses among packets. Id. The Board’s finding that, in Sikdar, “the public IP ad- dress is simply the firewall’s public IP address,” id. at *14, Case: 20-2237 Document: 53 Page: 11 Filed: 10/25/2022

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is also unsupported by substantial evidence. The referred- to portion of Sikdar says only that the swapped-in address is “usually” the public address assigned to the firewall— not always. J.A. 838. And what “usually” allows, and in- deed suggests, an alternative embodiment in Sikdar makes explicit. Specifically, Sikdar teaches what the Board acknowledges was a one-to-one-mapping embodiment. IPR561 Decision at *14 n.11. The Board dismissed that embodiment as irrelevant, id., but it offered, and CUPP has furnished, no reasonable basis for that dismissal. In that embodiment, each private address within Sikdar’s private network is associated with a corresponding public address for use on the public network. J.A. 837. That embodiment teaches the use of different swapped-in addresses where there is more than one private address. Sikdar also discloses that translation occurs “when and as needed.” Sikdar discloses that translation (i.e., the swapping of addresses) occurs when “a device 1078 operat- ing in private network 24 . . . send[s] packet 1072 through firewall 1062 to a destination public network 12.” Id. In particular, the RSP “receives packet 1072 from local device 1078 in private network 24 that contains a private IP ad- dress 1070,” and “[i]f the packet 1072 is directed to an end- point 1056 in public network 12, the RSP 100 converts the private IP address 1070 into a public address 1052 that is used to route packet 1050 over public network 12 to end- point 1056.” Id. This conversion of an address, described precisely as taking place when an outgoing packet is in transit, occurs “when and as needed”—as packets pass through the RSP and “if” the packet containing a private source IP address is destined for a public network. The Board lacked a reasonable basis (and hence lacked substantial evidence on which) to find that Sikdar fails to teach this aspect of the claim construction. The Board, for this aspect of the claim construction as for the “source of address” aspect, relied on its finding that “the public IP ad- dress assigned to the packets is the IP address of the Case: 20-2237 Document: 53 Page: 12 Filed: 10/25/2022

firewall,” and it added that the “public IP address is not determined ‘on the fly.’” IPR561 Decision at *14. But this reasoning, besides overlooking the “usually” and one-to- one-mapping aspects of Sikdar (discussed just above), de- parts from the simple “when and as needed” language of the unchallenged claim construction. That language refers only to the timing of the act of conversion for an outgoing communication, i.e., the act of replacing a private-source address in a packet by a different, public address as pack- ets pass through the translation engine. Sikdar plainly teaches that process. The language “when and as needed” does not address how many different public addresses are used as the replacements or when the replacements are identified (as opposed to when they are actually swapped in). The Board did not cite, and CUPP has not pointed us to, any expert testimony that would permit a reasonable finding that Sikdar fails to teach “dynamically isolating” under the agreed-on construction. CUPP’s expert, Dr. Medvidovic, opined that “the Board should find the [’]272 [p]atent valid over the cited prior art” because Trend Mi- cro’s expert, Dr. Jakobsson, “fail[ed] to provide any analy- sis that would support a finding that the cited reference disclosed or suggested the use of DHCP or a similar dy- namic source of addresses in connection with NAT transla- tion.” J.A. 2289–90 (emphasis added). Dr. Medvidovic’s reasoning rests on a claim construction that is contrary to the one the Board adopted (and CUPP does not challenge): His rationale mistakenly treats “dynamic” as modifying “source” rather than “isolating”; and it requires a source “similar” to DHCP. Dr. Medivodovic’s declaration thus does not support the Board’s finding. Dr. Jakobsson, for his part, testified that “the public IP address is generated somewhere.” J.A. 2904. That testi- mony certainly does not point against the evidence, dis- cussed above, showing that Sikdar teaches what the claim construction requires. It therefore cannot provide Case: 20-2237 Document: 53 Page: 13 Filed: 10/25/2022

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substantial-evidence support for the Board’s finding. That is so whether or not the Board reasonably characterized Dr. Jakobsson’s testimony in this respect as “conclusory,” add- ing that the testimony does not identify “how the public IP address disclosed in Sikdar, namely, the IP address of the firewall, is sourced.” IPR561 Decision at *14. Even if we accept the characterization, substantial evidence is lacking for the Board’s finding about Sikdar. The Board relied on the mistaken firewall-only reading of Sikdar and imported a requirement of identifying the address source, rather than simply having an address source; and it disregarded the facial sufficiency of Dr. Jakobsson’s point that, of course, there must be a source (whose character is not lim- ited to one similar to DHCP). For the foregoing reasons, we conclude that no substan- tial evidence supports the Board’s finding that Sikdar does not disclose “dynamically isolating.” Rather, as we have explained, Sikdar does teach that requirement under the Board’s express construction, which the parties accept. Trend Micro does not, however, ask for reversal of the final written decisions as to the appealed claims on this basis. It seeks only vacatur and remand to allow the Board to ad- dress issues (relevant to the appealed claims) that the Board has not yet addressed. See Trend Micro Opening Br. at 55; Response Br. at 38–39; Oral Arg. at 0:55–3:01. We follow that course, with the claim construction of “dynami- cally isolating” and Sikdar’s teaching of that claim limita- tion now settled. III The Board’s final written decisions on each appealed claim is vacated, and the case is remanded for further pro- ceedings consistent with this opinion. Costs awarded to Trend Micro. VACATED AND REMANDED