Spotlight On Upcoming Oral Arguments ' July 2020

• Published date: 07 July 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Brooke M. Wilner

The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.

Tuesday, July 7, 2020

SecurityProfiling, LLC v. Trend Micro, Inc., No. 19-1881

For over a decade, SecurityProfiling prosecuted a series of patents directed to detecting vulnerabilities in computer systems and deploying methods to mitigate system attacks, all stemming from a provisional application filed in 2003. One resulting patent was U.S. Patent No. 8,894,644 (the "'644 patent"), against which Trend Micro filed a petition for inter partes review. Trend Micro's petition alleged, among other things, that certain claims of the '644 patent would have been obvious over two prior art references. The Patent Trial and Appeal Board ("PTAB") agreed with Trend Micro, finding that the challenged claims were not entitled to claim priority to the 2003 provisional because that provisional did not provide sufficient written description support for a "user option" claim limitation. And because the '644 patent could not claim priority back to 2003, SecurityProfiling could not swear behind the two references. The PTAB thus found the '644 patent invalid as obvious.

On appeal, SecurityProfiling argues that the PTAB erred in two ways. First, SecurityProfiling takes issue with the PTAB's finding that one of the prior art references disclosed the "user option" functionality but that the provisional did not. But both the prior art reference and the provisional describe this same functionality, SecurityProfiling asserts; thus, in SecurityProfiling's view, this dichotomy renders the PTAB's decision internally inconsistent'and thus in violation of the Administrative Procedure Act. Second, SecurityProfiling argues that each application in the '644 patent's priority chain incorporates the full disclosure of the provisional by reference, and thus each intermediate application provides written description support for the '644 patent. Trend Micro argues that the PTAB was correct in finding that the 2003 provisional lacked sufficient written description to support the '644 patent. Indeed, Trend Micro claims, there can be no written description support in the intermediate applications, because material may not be incorporated from another application which itself incorporates material by reference. In other words, there can be no double incorporation. Further, Trend Micro asserts that...