IP Law Daily, PATENT—Fed. Cir.: Obviousness determination reversed in computer network security patent dispute, (Aug 16, 2024)

By Kevin M. Finson

The PTAB erroneously required a showing of a specific benefit from the proposed motivation to combine.

In finding that challenged claims of a computer security patent were invalid for obviousness, the Patent Trial and Appeal Board applied the wrong legal standard to a motivation to combine analysis, the U.S. Court of Appeals for the Federal Circuit has held. Evidence other than a particular benefit from a combination ought to have been considered (Cisco Systems, Inc. v. K. Mizra LLC, No. 22-2290 (Fed. Cir. Aug. 16, 2024)).

K.Mizra, LLC (K.Mizra) was the owner of U.S. Patent No. 8,234,705 (the ’705 patent), which claimed a system and method for ensuring that a computer cannot connect to a protected network and spread harmful viruses throughout that network. Cisco Systems, Inc. (Cisco) petitioned for inter partes review of several claims of the ’705 patent on the ground of obviousness over the combination of three prior art references. The Board instituted review and found that Cisco had failed to show a motivation to combine two of the references, specifically as concerned one which taught serving a quarantine notification page to a host device when that device made a service request and another which taught the sending the IP address of a quarantine server when that service request contained a DNS query. Cisco appealed.

Motivation to combine. Cisco argued, and the court held, that the Board had made an error of law when it required a specific motivation to improve one reference with the other in order to obtain a particular benefit. The Board explained that a particular benefit was one particular way of showing a motivation to combine, but that Cisco’s argument that an artisan would use the known techniques to notify a user of a quarantine from both references interchangeably because they were so similar was at least plausibly sufficient to show a motivation to combine even without a specific claimed benefit. The Board therefore erred by refusing to consider this argument.

Sur-reply. Cisco argued that the Board erred in considering three arguments which K.Mizra raised for the first time on sur-reply. Reviewing the briefs, the court held that the sur-reply did not introduce new evidence and only responded, properly, to arguments which Cisco had raised it its reply.

Substantial evidence. Finally, Cisco argued that the board’s rejection of one of Cisco’s arguments in favor of a benefit found in combining the prior art references was not supported by substantial evidence. The Board had found that one reference disclosed notification messages displayed in a browser using XML. The court found that there was no evidence in the record to support the display of notification messages in a browser, or that the Board had relied improperly on attorney argument instead of admissible evidence in reaching this conclusion.

The court vacated the motivation to combine analysis and unpatentability decision and remanded for further proceedings.

The Case is Nos. 22-2290 and 23-1183.

Judge: Reyna, J.

Attorneys: Angela M. Oliver (Haynes Boone LLP) for Cisco Systems, Inc. and Hewlett Packard Enterprise Co. Manish Mehta (Benesch Friedlander Coplan & Aronoff) for Hewlett Packard Enterprise Co. Cliff Win, II (Folio Law Group, PLLC) for K.Mizra LLC.

Companies: Cisco Systems, Inc.; Hewlett Packard Enterprise Co.; K.Mizra LLC

Cases: Patent FedCirNews GCNNews