Trend Micro Inc v. Cupp Computing As

1. Case Identification

• Case #: IPR2021-00813
• Patent #: 10,621,344
• Filed: April 19, 2021
• Petitioner(s): Trend Micro Inc.
• Patent Owner(s): CUPP Computing AS
• Challenged Claims: 1-20

2. Patent Overview

• Title: Mobile Security System
• Brief Description: The ’344 patent describes a security system designed to protect mobile devices that travel outside of a trusted enterprise network. The system provides security services and applies security policies to the mobile device even when it is disconnected from the enterprise network, with management and updates provided by an IT administrator.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Groenendaal.

• Prior Art Relied Upon: Groenendaal (Application # 2005/0260996).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Groenendaal discloses every element of the challenged claims. Groenendaal teaches a security system featuring a server within an enterprise network that supports and manages mobile clients operating outside that trusted network. The server includes a processor and memory storing security and configuration profiles, which contain security code, policies (e.g., firewall settings, network access rules), and data. An administrator on the enterprise network uses a graphical user interface (GUI) to manage these profiles, which are then used to provide security services to the mobile devices. Petitioner asserted this maps directly to the ’344 patent’s claimed security system, its processor configured to store and provide security code, policy, and data, and the management of these elements by an IT administrator. The argument extends to dependent claims, covering gateway services, firewall services, and remote updates.
  • Motivation to Combine (for §103 grounds): As this ground relies on a single reference, the argument is that Groenendaal itself teaches the claimed invention. Petitioner contended that to the extent any minor feature was not explicitly disclosed, a person of ordinary skill in the art (POSITA) would have found it obvious to implement it. For example, implementing an administrator's updates via a specific "update command" would have been a common-sense design choice to effectuate the disclosed functionality.
  • Expectation of Success: Petitioner asserted that any minor modifications to implement the claimed features based on Groenendaal’s teachings would involve applying known techniques for their intended purpose, leading to predictable results and a high expectation of success.
  • Key Aspects: Petitioner emphasized that the claims of the ’344 patent are nearly identical to claims of a related patent (the '164 patent), which the PTAB previously found unpatentable over the same Groenendaal reference in IPR2019-00368.

4. Key Claim Construction Positions

• "one or more policies": Petitioner argued this term does not require the policies to be stored in computer memory. A policy can be an abstract construct, such as an "IT decision" made by an administrator, which is distinct from its subsequent technical implementation (e.g., a stored list of prohibited URLs). This construction, Petitioner contended, is consistent with the specification and avoids rendering the separate claim limitation of a "stored security policy" superfluous.
• "configured based on one or more policies implemented by...IT administrators": Petitioner asserted this language means the system's configuration is based on the policy itself (the administrator's decision), not necessarily on the stored implementation of that policy. This distinction is central to mapping Groenendaal, where an administrator's inputs into a GUI reflect policies that are then used to configure stored profiles.
• "provide security services" / "implement security services": Petitioner argued the plain meaning of these phrases includes the act of sending security information, such as updated security profiles or virus definitions, from a server to a mobile device. This position was previously adopted by the Board in the IPR involving the related ’164 patent.
• "on the trusted enterprise network": Applying the doctrine of the last antecedent, Petitioner argued this phrase modifies the immediately preceding noun, "one or more IT administrators," not the more distant verb "implemented." The construction means the administrator is located on the network, which Groenendaal discloses, rather than requiring the policy implementation itself to occur on the network.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a) (Fintiv).
• §325(d): Petitioner argued that although Groenendaal was cited in an Information Disclosure Statement (IDS) during prosecution, the examiner made no rejection and provided no substantive analysis of the reference. Petitioner asserted this failure to meaningfully consider the primary prior art, especially after being notified of the institution decision against the nearly identical ’164 patent, weighs against denying institution.
• §314(a) (Fintiv): Petitioner argued the Fintiv factors strongly favor institution. The parallel district court litigation was in its early stages, with a trial date scheduled for well after the statutory deadline for a Final Written Decision (FWD). Crucially, Petitioner stipulated that if the IPR is instituted, it will not pursue in the district court any invalidity ground that was raised or could have been reasonably raised in the IPR. Petitioner cited PTAB precedential decisions holding that such a stipulation weighs heavily in favor of institution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 10,621,344 as unpatentable.