Examiners May Rely On Incomplete Prior Art References To Establish Obviousness

In In re Enhanced Security Research, LLC, No. 13-1114 (Fed. Cir. Jan. 13, 2014), the Federal Circuit affirmed the Board's decision rejecting as obvious the claims of U.S. Patent No. 6,119,236 ("the '236 patent") owned by Enhanced Security Research, LLC ("ESR").

The '236 patent, as amended, claims a computer security device and method for preventing unauthorized access to a local computer network. Specifically, the '236 patent claims a security device that protects a local network by (1) monitoring communications throughout the network to detect suspicious communication patterns, (2) assigning weighted values to any threatening activity detected, and (3) blocking communications based on their assigned weight value using a firewall.

During a third-party requested ex parte reexamination, the examiner rejected all claims of the '236 patent as obvious based on two potential prior art references: (1) the manual of a software product called NetStalker ("the Manual"), and (2) a scholarly article ("Liepins"). The NetStalker software, similar to the '236 patent, protects local networks from attempted security breaches by monitoring network communications, identifying attempted security breaches, and automatically blocking any unauthorized access attempts. Liepins describes a computer system capable of detecting newly identified anomalous activity by automatically generating, weighing, and applying a set of decision rules. The Board affirmed the examiner's obviousness rejections of the amended claims, and ESR appealed to the Federal Circuit.

The Federal Circuit affirmed. The Court held that substantial evidence supported the Board's obviousness determination that "the Manual in combination with Liepins teaches a person of ordinary skill in the art how to assess the severity of an attempted security breach and then block that attempted breach based on its severity." Slip op. at 8. According to the Court, the NetStalker software teaches responding to attempted security breaches based on user-defined severity parameters, and while the Manual does not disclose the automatic assignment of different weights to different types of attempted security breaches, Liepins fills this gap by disclosing a systematic rule-based framework capable of automatically identifying exceptional network activity. The Court also held that ESR had waived arguing the separate patentability of any of the dependent claims by failing to argue these claims separately under distinct...