Free Letter - District Court of Delaware - Delaware

Case 1:04-cv-01199-SLR Document 436 Filed 07/21/2006 Paget of 2
MORRIS, JAMES, HITCHENS & WILLIAMS LLP
222 Delaware Avenue, 10th Floor
Wilmington, Delaware 19801-1621
(302) 888-6800
Facsimile (302) 571-1750
www.morrisjames.com
Richard K. Herrmann Mailing Address
(302) 888-6816 P.0. Box 2306
rhen·[email protected] Wilmington, DE 19899-2306
July 21, 2006
VIA EFILING AND HAND DELIVERY
The Honorable Sue L. Robinson
United States District Court
District of Delaware
844 King Street
Wilmington, DE 19801
Re: SRI International v. ISS and Symantec, D. Del., C.A. N0. 04-1199-SLR
Your Honor:
Defendants Intemet Security Systems, Inc., a Delaware corporation, Internet Security
Systems, Inc., a Georgia corporation, and Symantec Corp. write to briefly respond to SRI
Intemational's July 20, 2006 letter to the Court regarding certain patent claims in SRI's pending
continuation application that were recently allowed by the United States Patent and Trademark
Office ("PTO").
In its letter, SRI contends that the PTO's decision is relevant to the portion of Defendant's
pending motion for summary judgment of invalidity based on the J iNao Report because the new
claims were allowed after SRI had disclosed the JiNao Report to the PTO. SRI argues that the
decision to allow the claims is a "rejection by the PTO itself of one of defendants' key
arguments." SRI's claim is without merit.
SRI apparently submitted the JiNao Report to the PTO, without any explanation, as the
72nd reference on a disclosure containing 146 other references. There was no substantive
discussion of the J iNao Report by the Examiner. Nor did the PTO have the benefit of
Defendants' summary judgment briefing and evidence (including inventor and expert testimony).
But more importantly, the newly allowed claims are significantly different than the
asserted claims at issue in Defendants' summary judgment motion. SRI did not include the text
of the allowed claims with its letter to the Court. A side-by—side comparison of newly allowed
claim 1 of the ’61l application with claim 1 of the '338 patent, however, reveals significant
differences:
Dover (302) 678-8815 Broom Street (302) 655-2599 Newark (302) 368-4200

Case 1:04-cv-01199-SLR Document 436 Filed 07/21/2006 Page 2 of 2
MoRR1s,]AMEs, HITCHENS & W1LL1AMs LLP
The Hon. Sue L. Robinson
July 2l. 2006
Page 2
Newly Allowed Claim 1 Claim 1 of ‘338 Patent
A method of network surveillance, comprising: A method of network surveillance, comprising:
monitoring an event stream derived from receiving network packets handled by a
network packets; network entity;
building a long—temr and multiple short-term building at least one long-term and at least one
statistical profiles from at least one measure of short—tenn statistical profile from at least one
said event stream; measure of the network packets, the at least
one measure monitoring data transfers, errors,
comparing one of the multiple short-term or network connections;
statistical profiles with the long-term statistical
profile; and comparing at least one long-term and at least
one short-term statistical profile; and
determining whether the difference between
the one of the multmle short-tenn statistical determining whether the difference between
profiles and the long—ter1n statistical profile the short—ter1n statistical profile and the long- .
indicates suspicious network activity. term statistical profile indicates suspicious
network activity.
Thus, even if the PTO initially determined that the JiNao Report did not anticipate the
newly allowed claims, it does not follow that the J iNao Report cannot anticipate the asserted '338
claims at issue in Defendants' summary judgment motion, particularly since the PTO did not
consider the J iNao Report during the prosecution of the '338 patent.
For the reasons detailed in Defendants' motion papers, summary judgment of invalidity of
the asserted claims of the '338 patent should be granted. The PTO's recent decision with respect
to different claims is simply irrelevant.
Respectfully,
Richard K. Heiann
cc: John Horvath, Esq. (via email w/ enclosures)
David Moore, Esq. (via email w/ enclosures)
Katherine Prescott, Esq. (via email w/ enclosures)
Theresa Moehlman, Esq. (via email w/ enclosures)
Holmes Hawkins, III, Esq. (via email w/ enclosures)