Symantec Corporationv.the Trustees of Columbia University in the City of New York

Patent Trial and Appeal Board

Jun 17, 2015

10208432 (P.T.A.B. Jun. 17, 2015)

Trials@uspto.gov Paper 13
571-272-7822 Date Entered: June 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SYMANTEC CORP.,
Petitioner,

v.

THE TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK,
Patent Owner.
____________

Case IPR2015-00370
Patent 7,487,544 B2
____________

Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. BACKGROUND
Symantec Corp. (Petitioner) requests inter partes review of claims
1–43 (all the claims) of U.S. Patent No. 7,487,544 B2 (“the ’544 patent”)
(Ex. 1001) under 35 U.S.C. §§ 311–319. Paper 2 (“Petition” or “Pet.”). The
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Trustees of Columbia University in the City of New York (Patent Owner)
filed a preliminary response (Paper 10, “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 314.
For the reasons that follow, we do not institute an inter partes review
as to any of the challenged claims of the ’544 patent.

Related Proceeding
According to the parties, the ’544 patent is involved in the following
lawsuit: The Trustees of Columbia University in the City of New York v.
Symantec Corp., No. 3:13-cv-808 (E.D. Va.). Pet. 1; see Paper 6, 2.

The ’544 Patent
The ’544 patent issued from an application filed July 30, 2002. Ex.
1001. The patent relates to a system and methods for detecting malicious
executable attachments at an email processing application of a computer
system using data mining techniques. Id. (Abstract).

Illustrative Claim
Claim 1 is illustrative.
1. A method for classifying an executable attachment in
an email received at an email processing application of a
computer system comprising:
a) filtering said executable attachment from said email;
b) extracting a byte sequence feature from said
executable attachment; and
c) classifying said executable attachment by comparing
said byte sequence feature of said executable attachment with a
classification rule set derived from byte sequence features of a
set of executables having a predetermined class in a set of
classes to determine the probability whether said executable
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attachment is malicious, wherein extracting said byte sequence
features from said executable attachment comprises creating a
byte string representative of resources referenced by said
executable attachment.

Prior Art and Other Evidence Included with Petition
Chen et al. US 5,832,208 Nov. 3, 1998 (Ex. 1007)
(“Chen”)

Forman et al. US 6,823,323 B2 Nov. 23, 2004 (Ex. 1011)
(“Forman”)

Kelley J. Cardinale and Hugh M. O’Donnell, A Constructive Induction
Approach to Computer Immunology, (March 1999) (Master of Science
Thesis, Department of Electrical and Computer Engineering, Graduate
School of Engineering, Air Force Institute of Technology) (Air University,
Air Education and Training Command) (“Cardinale”) (Exhibit 1008).

William Arnold and Gerald Tesauro, Automatically Generated WIN32
Heuristic Virus Detection, Virus Bulletin Conference (September 2000) at
51–60 (“Arnold”) (Exhibit 1009).

Peter Szor, Attacks on WIN32, Virus Bulletin Conference (October
1998) at 57–84 (“Szor”) (Exhibit 1010).

Charles Elkan, Boosting and Naive Bayesian Learning, Technical Report
No. CS97-557, Dept. of Computer Science and Engineering, University of
California, San Diego (September 1997) (“Elkan”) (Ex. 1012).

Declaration of Michael T. Goodrich, PhD (Ex. 1003).

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Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability for
obviousness under 35 U.S.C. § 103(a) (Pet. 14–48):

Evidence

Claim(s)

Chen and Cardinale

34

Chen, Cardinale, and Forman

6, 7, 10–15, 35, and 38–40

Cardinale, Admitted Prior Art
(“APA”), and Forman

43

Chen, Cardinale, Arnold, and Szor
1, 2, 5, 28, 29, 31–33, 41,
and 42

Chen, Cardinale, and Elkan

36 and 37

Cardinale, APA, Szor, and Arnold

16, 17, and 25–27

Chen, Cardinale, Arnold, Szor, and
APA

3 and 30

Chen, Cardinale, Arnold, Szor, and
Forman

4

Chen, Cardinale, Forman, and Elkan

8 and 9

Cardinale, APA, Szor, Arnold, and
Chen

24

Cardinale, APA, Szor, Arnold, and
Forman

18, 19, and 21–23

Cardinale, APA, Szor, Arnold, and
Elkan

20
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II. ANALYSIS
Scope of Inter Partes Review
The scope of an inter partes review is limited. 35 U.S.C. § 311(b)
provides:
A petitioner in an inter partes review may request to cancel as
unpatentable 1 or more claims of a patent . . . only on the basis
of prior art consisting of patents or printed publications.

Printed Publication
We look to the underlying facts to make a legal determination as to
whether a document is a printed publication. Suffolk Techs., LLC v. AOL
Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a
document is a “printed publication” under 35 U.S.C. § 102(b) involves a
case-by-case inquiry into the facts and circumstances surrounding its
disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). Public accessibility is a key question in determining
whether a document is a printed publication. Suffolk Techs., 752 F.3d at
1364. To qualify as a printed publication, a document “must have been
sufficiently accessible to the public interested in the art.” In re Lister, 583
F.3d 1307, 1311 (Fed. Cir. 2009).

Cardinale (Ex. 1008)
The Petition submits that Cardinale was “published March 1999” and
is, thus, “prior art to the ’544 patent under pre-AIA §§ 102(a) and (b).”
Pet. 3. We do not find any discussion in the Petition in support of the
allegation that Cardinale was published in March 1999.
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Page 3 of Cardinale is reproduced below.

Cardinale at 3 states that the document is a “THESIS Presented to the
Faculty of the Graduate School of Engineering of the Air Force Institute of
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Technology Air University Air Education and Training Command In Partial
Fulfillment of the Requirements for the Degree of Master of Science.”1 The
page contains the date “March 1999,” with the further notation “[a]pproved
for public release; distribution unlimited.” The page also contains the
designation “AFIT/GCS/ENG/99M-02.” The next page (page 4) of
Cardinale contains the signature of four persons (presumably, faculty
members), each dated March 8, 1999. Ex. 1008, 4.
Cardinale contains a government-standard “report documentation
page.” Ex. 1008, 243. The “report date” is March 1999, and the “report
type” is “Master’s Thesis.” Id. The page reveals further that the designation
“AFIT/GCS/ENG/99M-02” is a “performing organization report number.”
Id.
A document purporting to be a thesis, without more, does not
establish that the document is a printed publication. Although the Petition
does not point to any evidence in the record that Cardinale was ever placed
in a library, mere defense of a thesis and placement of the document in a
library is insufficient to establish that the thesis is a publication. A
predecessor court of the U.S. Court of Appeals for the Federal Circuit, the
Court of Customs and Patent Appeals in In re Bayer, 568 F.2d 1357 (CCPA
1978), held:
[W]e are unconvinced that appellant’s thesis defense before the
graduate committee in its official capacity as arbiter of
appellant’s entitlement to a master's degree was somehow
transmuted into a patent-defeating publication merely by
depositing the thesis in the university library where it remained
uncatalogued and unshelved as of the critical date in question.

1 We cite to the pagination of Exhibit 1008 rather than the document’s
pagination.
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Bayer, 568 F.2d at 1362. The Court explained that the thesis was not a
printed publication under 35 U.S.C. § 102(b). Because the “thesis could
have been located in the university library only by one having been informed
of its existence by the faculty committee[,] . . . ‘the probability of public
knowledge of the contents of the [thesis]’ . . . was virtually nil.” Bayer, 568
F.2d at 1361 (citation omitted).
Indexing is not “a necessary condition for a reference to be publicly
accessible.” Lister, 583 F.3d at 1312. But “indexing is a relevant factor in
determining accessibility of potential prior art, particularly library-based
references.” Voter Verified, Inc. v. Premier Election Solutions, Inc., 698
F.3d 1374, 1380 (Fed. Cir. 2012) ((citing In re Hall, 781 F.2d 897 (Fed. Cir.
1986) (holding that a dissertation indexed in a university library catalog was
a publicly accessible printed publication) and Bayer, 568 F.2d 1357 (holding
that a thesis housed, but neither shelved nor catalogued, within a university
library was not publicly accessible)).
In this case, Petitioner provides insufficient evidence by declaration or
documentation tending to show the public accessibility of Cardinale prior to
the filing date of the ’544 patent. Cf. Hall, 781 F.2d at 899 (examining
affidavit in support of public availability of dissertation). We acknowledge
that Cardinale contains the notation “[a]pproved for public release;
distribution unlimited.” Ex. 1008, 3; see also id. at 243 (“Distribution
Availability Statement”). Petitioner, however, has not provided evidence
extrinsic to Exhibit 1008 tending to show when the thesis actually may have
been released or distributed to the public. We observe also that Cardinale
includes an Abstract and a list of subject terms (Ex. 1008, 243) that appear
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suited for facilitating an electronic-database search. The Petition points to
no evidence, however, that the thesis was entered into an electronic database
prior to the critical date, much less into a publicly accessible database prior
to the critical date. Nor has Petitioner shown, for that matter, that the thesis
was otherwise “sufficiently accessible to the public interested in the art.”
Lister, 583 F.3d at 1311.
“A given reference is ‘publicly accessible’ upon a satisfactory
showing that such document has been disseminated or otherwise made
available to the extent that persons interested and ordinarily skilled in the
subject matter or art exercising reasonable diligence, can locate it.” SRI
Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006)). We conclude that, on this record, Petitioner has failed to meet
its burden of at least a preliminary showing that Cardinale is a printed
publication as contemplated by 35 U.S.C. §§ 102 and 311(b).

III. CONCLUSION
Because each proposed ground of rejection against the claims relies
on a combination that includes Cardinale, the Petition fails to demonstrate a
reasonable likelihood of prevailing on the grounds that the challenged claims
are obvious over the prior art.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that the petition is denied as to all challenged claims and
no trial is instituted.
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For Petitioner:
David D. Schumann
Brian M. Hoffman
FENWICK & WEST LLP
dschumann@fenwick.com
bhoffman@fenwick.com

For Patent Owner:

Hong Zhong
IRELL & MANELLA LLP
hzhong@irell.com