Forescout Technologies Inc v. Fortinet Inc

1. Case Identification

• Case #: IPR2021-00915
• Patent #: 9,948,662
• Filed: May 14, 2021
• Petitioner(s): Forescout Technologies, Inc.
• Patent Owner(s): Fortinet, Inc.
• Challenged Claims: 1-2, 5-7, 9-10, and 13-15

2. Patent Overview

• Title: Providing Security In A Communication Network
• Brief Description: The ’662 patent discloses a method for optimizing network security device performance by dynamically managing security features. The system determines if an external network accessed by a client device is "trusted" and, if so, selectively disables a subset of security features to conserve system resources and improve performance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ramsey - Claims 1-2, 5-7, 9-10, and 13-15 are obvious over Ramsey.

• Prior Art Relied Upon: Ramsey (Patent 7,331,061).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ramsey, which discloses an integrated firewall and Intrusion Detection System (IDS), teaches every element of the challenged claims. Ramsey's firewall receives network packets and evaluates them to determine if they originate from a "trusted" source. If a packet is deemed trusted, it is permitted to bypass the full IDS analysis and is passed directly to the secured network. Petitioner asserted that this IDS is a "security feature" and that bypassing it for trusted traffic constitutes the claimed "selectively disabling" of a subset of security features based on a trust determination. For dependent claims, Petitioner argued Ramsey’s disclosure of using packet header information (like IP addresses) to determine trust meets the "network parameter" limitations (claim 5), and that enabling full IDS processing for non-trusted packets satisfies the limitations of claim 2.
  • Key Aspects: Petitioner contended that Ramsey's core teaching of bypassing security functions for trusted traffic to increase processing speed is the same inventive concept claimed in the ’662 patent, rendering the claims obvious.

Ground 2: Obviousness over Ramsey and Harris - Claims 1-2, 5-7, 9-10, and 13-15 are obvious over Ramsey in view of Harris.

• Prior Art Relied Upon: Ramsey (Patent 7,331,061) and Harris (Patent 9,419,989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent Ramsey does not explicitly teach every detail, Harris supplies the missing elements. Specifically, Harris teaches using various "databases" (e.g., whitelists, reputation databases) to store information about network locations, which directly addresses the "database" limitation in claims 6 and 14. Furthermore, Harris explicitly describes a system with multiple "levels of trust" (e.g., "high," "low," "intermediate") that correspond to different network sources and can trigger various remedial security actions. Petitioner asserted this directly teaches the "trust level" limitation recited in independent claims 1 and 9, satisfying even Petitioner's proposed construction of the term.
  • Motivation to Combine: A POSITA would combine Harris’s teachings with Ramsey’s system for several reasons. It would have been a predictable and simple substitution to use a well-known data structure like Harris's database to implement the "lists" of trusted hosts described in Ramsey. Both references are in the same network security field and address similar problems. Moreover, Petitioner argued that Ramsey identifies a "need... for centralized control," which Harris’s database system directly provides, thus furnishing an explicit motivation to combine the references to improve Ramsey's system.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references, as it involved applying a known data storage technology (a database for trust levels) to an existing security framework to achieve the predictable result of more organized and efficient trust management.

4. Key Claim Construction Positions

• Petitioner asserted that most terms should be given their plain and ordinary meaning but highlighted a dispute over the term "trust level" from the parallel district court litigation.
• Petitioner's proposed construction for "trust level" was "one of multiple (two or more) trust levels corresponding to the number of security features that can be disabled."
• Patent Owner had proposed "plain meaning" for the term.
• Petitioner argued that its invalidity grounds rendered the claims obvious under either construction, asserting that Ramsey alone met the plain meaning and the combination with Harris met the more specific multi-level construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigation was in its early stages, with no trial date set, making a stay pending IPR likely and ensuring the PTAB’s Final Written Decision would issue before any trial.
• Petitioner contended that the invalidity grounds and prior art (Ramsey and Harris) raised in the petition were not raised during prosecution and did not overlap with issues in the litigation, minimizing the risk of duplicative efforts.
• Petitioner also argued that denial under §325(d) was unwarranted because the prior art presented was not the same as, or cumulative to, the art considered by the examiner during the original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 5-7, 9-10, and 13-15 of the ’662 patent as unpatentable.