Trend Micro Corp v. Cupp Computing As

1. Case Identification

• Case #: PGR2021-00100
• Patent #: 10,951,632
• Filed: July 15, 2021
• Petitioner(s): Trend Micro Inc.
• Patent Owner(s): Cupp Computing As
• Challenged Claims: 1, 9, 16, and 24

2. Patent Overview

• Title: Mobile security system
• Brief Description: The ’632 patent discloses a security system that provides protection for a mobile device when it is outside of a trusted enterprise network. The system is designed to manage security services for the mobile device, particularly by sending a "wake signal" to activate the device from a "power management mode" to perform security tasks.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hall - Claims 1, 9, 16, and 24 are obvious over Hall.

• Prior Art Relied Upon: Hall (Application # 2008/0120423).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hall discloses all elements of the challenged claims. Hall describes a security system centered around a "backend service center" that communicates with subscriber devices like laptops. Petitioner contended that Hall’s backend service center is the claimed "security system," its first subscriber device (a laptop) is the "mobile device," and its second subscriber device is the "security administrator device." Crucially, Hall’s backend center detects a "wake event" (e.g., the laptop being reported stolen) and, in response, sends a wireless message to "awaken" the laptop from a power-saving state to perform security services like deleting files. This functionality was argued to meet the limitations of independent claims 1 and 16 regarding detecting a wake event and sending a wake signal to the mobile device to perform security tasks.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner asserted that Hall inherently contains instructions ("wake code") to perform its disclosed wake-up function. Alternatively, Petitioner argued it would have been obvious for a person of ordinary skill in the art (POSITA) to implement Hall’s disclosed wake-up functionality using software code stored on its network servers, as this would be the most straightforward implementation.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in implementing Hall's disclosed functions using conventional software, as it would require minimal effort and yield predictable results fully compatible with Hall’s system.

Ground 2: Obviousness over Hall in view of Meenan - Claims 9 and 24 are obvious over Hall in view of Meenan.

• Prior Art Relied Upon: Hall (Application # 2008/0120423) and Meenan (Application # 2006/0101277).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Hall to address the specific limitation in claims 9 and 24 of "removing unauthorized data." While Hall taught a security service of "deleting files" from a stolen laptop, Meenan disclosed a client-server security system for detecting and removing specific "unauthorized programs" (e.g., spyware, viruses, malware) from a client device. Petitioner argued that Meenan’s teaching of removing unauthorized programs directly maps to this claim limitation.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the known technique from Meenan with the similar system of Hall to improve Hall’s security features. Since both references describe server-based systems deploying security services to client devices, a POSITA would have been motivated to enhance Hall's general "delete files" capability with Meenan’s more specific and targeted method for removing malicious software to provide more robust security.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in adding Meenan’s functionality to Hall’s system, as Hall’s laptop was already configured to receive instructions from a server and perform security actions, like deleting files, upon being awakened.

Ground 3: Obviousness over Joseph - Claims 1 and 16 are obvious over Joseph.

• Prior Art Relied Upon: Joseph (Application # 2010/0218012).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Joseph, as an alternative to Hall, also disclosed all elements of claims 1 and 16. Joseph described a "security/technical support entity" (the claimed "security system") that communicates with a laptop (the "mobile device") containing a security/diagnostics unit (SDU). A separate "network entity" for user registration was mapped to the "security administrator device." Joseph’s security entity detects a "wake event" (e.g., service activation or the laptop being reported stolen) and sends a "wake mode" command to the SDU, which wakes from a "sleep mode" (a power management mode). After waking, a security agent on the laptop performs security services like erasing or encrypting data.
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. Similar to the Hall argument, Petitioner asserted that Joseph either inherently disclosed the necessary "wake code" to perform its described functions or that it would have been obvious for a POSITA to implement such functionality using software instructions stored in the memory of Joseph’s servers.
  • Expectation of Success (for §103 grounds): A POSITA would have readily implemented Joseph’s disclosed wake-up and security functions using conventional software with a high expectation of success.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 9 and 24 over Joseph in view of Meenan, relying on reasoning analogous to Ground 2.

4. Key Claim Construction Positions

• "power management mode": Petitioner proposed construing this term as "a mode where the mobile device conserves power." This construction was based on an agreement between the parties in a related litigation involving the parent ’595 patent.
• "security administrator device": Petitioner argued for the plain and ordinary meaning, which includes a device that performs security administration tasks. This was supported by the ’632 patent’s disclosure of an administrator device performing tasks like updating security policies and storing audit trails.
• "a security system processor": Petitioner argued this means "one or more security system processors," consistent with conventional claim construction principles and the patent’s specification, which states the security system may comprise more processors than depicted.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: Petitioner contended that none of the challenged claims were entitled to the priority date of the ’134 provisional application (August 4, 2008). It was argued that the specification was significantly expanded after the provisional filing to include new matter related to the "wake" functionality, which is central to all challenged claims. Therefore, the earliest effective filing date was argued to be August 4, 2009, making Hall, Meenan, and Joseph prior art under the America Invents Act (AIA).

6. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d) or the Fintiv factors. It was asserted that the examiner did not consider Hall and only saw Joseph buried in a large Information Disclosure Statement without making a rejection. Regarding Fintiv, Petitioner argued that the parallel district court litigation was in its early stages, a stay was likely if the Post-Grant Review (PGR) was instituted, and the scheduled trial date would likely post-date the Final Written Decision, especially considering delays attributable to the Patent Owner. Critically, Petitioner stipulated that if the PGR were instituted, it would not pursue any invalidity ground in the district court that was raised or reasonably could have been raised in the PGR.

7. Relief Requested

• Petitioner requested institution of a PGR and cancellation of claims 1, 9, 16, and 24 of the ’632 patent as unpatentable.