PTAB

IPR2016-00222

McAfee Inc v. Cap Co Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and method for blocking harmful information online, and computer readable medium therefor
  • Brief Description: The ’196 patent relates to a system and method for blocking harmful computer information. It discloses automatically downloading, installing, and executing an antivirus protection module onto a client computer to provide real-time scanning of files upon execution, thereby aiming to eliminate the need for manual user intervention in maintaining antivirus protection.

3. Grounds for Unpatentability

Ground 1: Claims 9, 11, and 14 are obvious over Hodges in view of Butt and Levergood.

  • Prior Art Relied Upon: Hodges (Patent 6,035,423), Butt (Patent 6,728,964), and Levergood (Patent 5,708,780).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references taught all limitations of the challenged claims. Hodges disclosed a client-server system for automatically delivering antivirus program updates over a network, where the updates are then automatically installed and executed. Hodges also taught the concept of "on-access scanning" for real-time protection. Butt disclosed a specific method for achieving real-time virus detection by "hooking" file input/output (I/O) routines; its system used a dynamic linked library (DLL) to intercept file access, scan the file, and then treat it (e.g., clean, deny access) if a virus was found. This mapped directly to the claims’ "hooking" and "treating" limitations. Finally, Levergood taught a standard multi-server web architecture where a client is redirected from a directory server to a separate merchant server, which Petitioner contended disclosed the two-server network structure recited in the claims.
    • Motivation to Combine: Petitioner asserted multiple motivations for a person of ordinary skill in the art (POSITA) to combine the references. Hodges and Butt were in the same field of computer security and addressed the same problem: the need for proactive, real-time virus blocking rather than reactive, post-infection repair. Their teachings were complementary, with Hodges providing an automated delivery and update mechanism and Butt providing a more advanced real-time detection and blocking engine. A POSITA would combine these to create a more effective antivirus product. Furthermore, to implement such a system as an online service, a POSITA would naturally look to a standard web architecture like that taught by Levergood for managing client connections and redirection between servers.
    • Expectation of Success: Petitioner argued that combining these known elements for their established functions would have yielded predictable results. Integrating an automated update system (Hodges), a real-time scanning engine (Butt), and a standard web redirection architecture (Levergood) was a straightforward engineering task with a high expectation of success.

Ground 2: Claim 15 is obvious over Hodges in view of Butt.

  • Prior Art Relied Upon: Hodges (Patent 6,035,423) and Butt (Patent 6,728,964).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 15 is a system claim that depends from claim 12 and adds the limitation that the "harmful information blocking code module continues to run on the client computer even when the client computer accesses another web server." Petitioner argued that Hodges taught this limitation by disclosing an antivirus "update agent" that would "start[ ] and remain resident in the client computer" and perform its functions "in the 'background'." This background operation would persist regardless of a user's browsing activities on other websites. The combination with Butt's persistent, system-level file I/O monitoring further supported that the combined system would run continuously.
    • Motivation to Combine: The motivation was to improve overall antivirus efficacy by integrating an automated update and delivery system (Hodges) with a superior real-time scanning method (Butt). This combination was presented as an obvious design choice for any developer seeking to provide the most up-to-date virus protection.
    • Expectation of Success: A POSITA would have reasonably expected that combining these two complementary antivirus components would function predictably, as both were designed to operate on standard computer systems without interfering with each other.

4. Key Claim Construction Positions

  • "harmful information blocking code module": Petitioner proposed construing this term as "an executable program that blocks harmful information." This construction was argued to be essential because the claims require the module to be "automatically running" or "executed," capabilities limited to executable programs. Petitioner contended this distinguished the claimed invention from non-executable "digital information" and was consistent with the patent's specification, which repeatedly refers to the module as a "program."
  • "automatically running" / "automatically executed": Petitioner proposed these terms mean "running/executed without user installation, start-up, or other involvement." This construction was rooted in the patent's explicit objective to solve the problem of "labor-intensive" manual installation of antivirus software. The core of the alleged invention, Petitioner argued, was this automation, which required execution without user interaction.
  • "by hooking up file I/O routines": Petitioner proposed this term means "by executing additional or alternate routine(s) upon a call to the operating system's file I/O routines." This construction was based on the well-understood technical meaning of "hooking" in the art at the time, which involves intercepting system calls to add or replace functionality, as taught explicitly by the Butt reference.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 9, 11, and 14-15 of Patent RE42,196 as unpatentable.