No Patentable Weight To Preamble Amendments In This Patent IPR2015-01855, 1877


Takeaway: The Board may not afford patentable weight to preamble amendments that are made to provide consistency to amendments concurrently made to the body of the claim.

In its Decision, the Board instituted inter partes review of claims 1, 3-5, 8, 10, and 12 of the ’196 patent.

As stated by the Board, the ’196 patent “describes systems and methods for online diagnosing, remedying, and blocking of harmful information, such as computer viruses.” Petitioner asserts the following obviousness challenges to the patentability of the ’196 patent: (1) claims 1, 3, and 12 in view of Hodges and Butt, (2) claim 5 in view of Hodges, Butt, and Ször, (3) claims 8 and 10 in view of Hodges, Butt, and Levergood, and (4) claims 4 and 5 in view of Hodges, Butt, and Freund.

Petitioner argued that the preambles are not entitled to patentable weight because “[t]he body of the claim sets forth all the limitations of the claimed invention,” and because “[i]n view of the entire claim, the preamble merely states a purpose for the claimed method.” Patent Owner responded that “in real time” and “in a file to be executed” were “added to the preamble of the claims during prosecution to emphasize the real-time nature of the entire method, including the step of a web server transmitting a harmful information blocking code module to the client computer.”

The Board, quoting Symantec Corp. v. Comput. Assocs. Int’l, Inc., 522 F.3d 1279, 1289 (Fed. Cir. 2008), stated “it is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.” The Board agreed with Petitioner because it is “not apparent from the prosecution history that the preamble amendments [to the preamble] accomplish anything more than routine consistency with amendments made concurrently to the body of the claims.”

Petitioner alleged that Hodge and Butt teach all of the limitations of independent claims 1 and 12. The Board stated that it was persuaded that “Petitioner has made a sufficient showing with respect to steps (c1)–(c3) of independent claim 1 by identifying Butt’s disclosure of an interceptor function that scans files for viruses on access” and that “Petitioner provides sufficient reasoning at this stage to combine the teachings of Hodges and Butt in the manner proposed.” The Board reached the same conclusions with respect to Petitioner’s other obviousness challenges and claims 3-5, 8, and 10.

McAFEE, INC. v. CAP CO. LTD., IPR2015-01855, -01877
Paper 14: Decision on Institution
Dated: March 8, 2016
Patent RE42,196
Before: Donna M. Praiss, Patrick M. Boucher, and J. John Lee
Written by: Boucher
Related Proceedings: CAP Co. Ltd. v. McAfee, Inc., No. 3:14-cv-05068-JD (N.D. Cal.); CAP Co. Ltd. v. Microsoft Corp., No. 2:14-cv-01899 (W.D. Wash.); and CAP Co., Ltd. v. Symantec Corp., No. 3:14-cv-05071-JD (N.D. Cal.).