IBM Corp v. Croga Innovations Ltd

1. Case Identification

• Case #: IPR2025-00380
• Patent #: 10,601,780
• Filed: December 30, 2024
• Petitioner(s): International Business Machines Corporation
• Patent Owner(s): Croga Innovations Ltd.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Networked Computer System with Isolated Virtual System
• Brief Description: The ’780 patent discloses techniques for providing network security to a host computer that supports a virtual guest system. The patent’s purported novelty, argued during prosecution, is the use of three distinct methods of isolation: an internal firewall, a host-based firewall, and a network firewall or web proxy.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 9-17, and 19-20 are obvious over Delco in view of Adams.

• Prior Art Relied Upon: Delco (Patent 8,166,474) and Adams (Application # 2010/0077476).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Delco discloses a computer system with the three distinct isolation methods recited in the ’780 patent. Specifically, Delco’s packet filter 74, which separates a virtual machine from the host system, functions as the claimed "internal firewall." Delco’s packet filter application 32, which protects the host system from the network, serves as the "host-based firewall." Finally, Delco’s independent firewall system 30, which protects the entire local intranet from the internet, is the claimed "network firewall." Petitioner asserted that Adams is used to supply conventional details for Delco's network firewall, teaching that such a network appliance would obviously include a processor and memory to perform its functions, as required by claims dependent on the external device.
  • Motivation to Combine: A POSITA would combine Delco and Adams to supply the conventional, undisclosed hardware details of Delco’s network firewall appliance. Since Delco describes its firewall system 30 as a "network appliance," a POSITA would have looked to references like Adams that describe the well-known internal components of such devices (i.e., a processor and memory) to implement the system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because implementing Delco’s network appliance with a processor and memory, as taught by Adams, is a standard design choice for performing known firewall functions and would yield predictable results.

Ground 2: Claims 8 and 18 are obvious over Delco, Adams, and Dadhia.

• Prior Art Relied Upon: Delco (Patent 8,166,474), Adams (Application # 2010/0077476), and Dadhia (Patent 7,886,351).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targets claims 8 and 18, which add limitations requiring the host-based firewall to implement different security policies depending on the network to which the computer is connected (e.g., a trusted vs. untrusted network). Petitioner argued that Delco and Adams teach the base system, and Dadhia explicitly teaches a "Network Aware Firewall" that applies different policies based on the network type. Dadhia discloses implementing a permissive "first policy" (e.g., allowing file sharing) when connected to a trusted private network and a more restrictive "second policy" (e.g., disabling file sharing) when connected to an untrusted public network. This directly maps to the limitations of claims 8 and 18.
  • Motivation to Combine: A POSITA would combine Dadhia with the Delco/Adams system to improve its security functionality. Delco already teaches a system that can identify different network "zones" and apply policies accordingly, making it amenable to improvement. Incorporating Dadhia's network-aware policy switching would be a predictable way to enhance Delco's system by making it more adaptable and secure when moving between different network environments, which was a known problem with a known solution.
  • Expectation of Success: A POSITA would expect success because Dadhia’s technique of applying different software-based firewall policies is directly compatible with Delco’s software-based packet filter firewall. The combination would predictably result in a network-aware firewall that uses stricter policies on untrusted networks.

4. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial would be inappropriate.
  • Fintiv Factors (§314(a)): Petitioner argued against denial under Fintiv, asserting that the co-pending district court litigation is in its early stages, with significant events like claim construction and discovery scheduled well after the IPR institution decision. Petitioner contended the scheduled trial date is likely to slip past the Final Written Decision (FWD) date due to the judge's heavy caseload. Further, Petitioner offered a stipulation that it will not pursue the same invalidity grounds in the district court for any claim on which IPR is instituted, thereby avoiding duplicative efforts.
  • Same Art (§325(d)): Petitioner argued denial under §325(d) is unwarranted because the prior art references (Delco, Adams, Dadhia) are new and were never considered by the examiner during prosecution. Petitioner asserted the references are not cumulative and directly teach the "three distinct methods of isolation" limitation that the Patent Owner relied upon to secure the patent, making the challenge compelling.
  • General Plastic Factors: Petitioner stated that this is not a "follow-on" petition subject to General Plastic analysis. It is substantively identical to a co-pending IPR filed by another party (Cisco IPR), and Petitioner intends to file a motion for joinder to improve efficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’780 patent as unpatentable.