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`IPR2017-00430
`U.S. Patent No. 6,088,802
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`
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`UNIFIED PATENTS, INC.
`Petitioner
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`
`
`v.
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`
`
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH INTEGRATED SECURITY
`FUNCTIONALITY
`
`
`
`__________________________________________________________________
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`SPEX TECHNOLOGIES, INC.’S
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2017-00430
`__________________________________________________________________
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`IPR2017-00430
`U.S. Patent No. 6,088,802
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION ........................................................................................... 1
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`THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE INCORRECT
`IN LIGHT OF THE SPECIFICATION, THE CLAIMS, AND THE
`LAW ................................................................................................................ 3
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`A.
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`The Board Should Deny Institution on All Grounds Because
`Petitioner’s Construction of the “Security Means” Fails to
`Identify the Corresponding Structure .................................................... 3
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`III.
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`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED. .................................................................................. 7
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`Requirements for Showing Anticipation Under 35 U.S.C.
`§ 102 and Obviousness Under 35 U.S.C. § 103. ................................... 7
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`Ground I: Claims 1, 2, 6, 7, 11-13, 23-26, and 36-39 Are Not
`Anticipated by Jones ............................................................................. 9
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`1.
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`2.
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`3.
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`4.
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`Petitioner Failed to Show that the Claimed “Security
`Means” Is Disclosed in Jones ..................................................... 9
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`Petitioner Failed to Show that the Claimed “Means for
`Operably Connecting” Is Disclosed in Jones ............................10
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`Petitioner Failed to Show that the Claimed “Means for
`Mediating Communications . . . so that the
`Communicated Data Must First Pass through the
`Security Means” Is Disclosed in Jones .....................................12
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`Petitioner Failed to Show that Claims 38 and 39 Are
`Anticipated by Jones .................................................................17
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`i
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`A.
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`B.
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`C.
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`IPR2017-00430
`U.S. Patent No. 6,088,802
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`Ground II: Claims 5, 10, 14, 22, 27, and 35 Are Not Obvious
`over Jones in View of Harari ...............................................................18
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`D. Ground III: Claims 1-39 Are Not Obvious Over Clark in View
`of USB Specification ...........................................................................18
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`1.
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`2.
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`3.
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`4.
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`Petitioner Failed to Show that the Claimed “Security
`Means” Is Obvious Over Clark in View of the USB
`Specification ..............................................................................19
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`Petitioner Failed to Identify Where the “Target
`Means” Is Found in Clark or the USB Specification ................19
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`Petitioner Failed to Show that the Corresponding
`Structure for the Claimed “Means for Mediating
`Communications” Is Disclosed in Clark or the USB
`Specification ..............................................................................20
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`Petitioner Failed to Show that Claims 38 and 39 Are
`Obvious Over Clark in View of the USB Specification ...........21
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`IV. CONCLUSION ..............................................................................................22
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`ii
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`Cases
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`IPR2017-00430
`U.S. Patent No. 6,088,802
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`TABLE OF AUTHORITIES
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` Page(s)
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`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) ............................................................................ 4
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`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 7
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`Transclean Corp. v. Bridgewood Servs., Inc.,
`290 F.3d 1364 (Fed. Cir. 2002) ...................................................................... 8, 12
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`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) .............................................................................. 7
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ........................................................................ 5, 6
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`Statutes
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`35 U.S.C. § 102 .......................................................................................................... 7
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`35 U.S.C. § 103 .......................................................................................................... 7
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`35 U.S.C. § 112(6) ..................................................................................................... 6
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`35 U.S.C. § 312(a)(3) ............................................................................................... 10
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`35 U.S.C. § 314(a) ..................................................................................................... 2
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`Other Authorities
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`37 C.F.R. 42.104(b) ..........................................................................................passim
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`iii
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`I.
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`INTRODUCTION
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`On December 14, 2016, Unified Patents, Inc. (“Petitioner”) submitted a
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`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent
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`No. 6,088,802 (Ex. 1001, “the ’802 Patent”), challenging Claims 1 to 39 (“the
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`Challenged Claims”).
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`The Petition should be denied because it is deficient in several respects.
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`First, Petitioner does not properly construe the means-plus-function claim term,
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`“security means.” The Petition fails to identify the function and the corresponding
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`structure of the security means disclosed in the specification, but generically
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`identifies “hardware, software and/or firmware” or a “device” without specifying a
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`structure or algorithm clearly linked to the undisclosed function. Without a proper
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`construction, Petitioner has also failed to show that the structure of the “security
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`means” is found in the prior art.
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`Second, Petitioner failed to show that the cited references, U.S. Patent
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`No. 5,623,637 to Jones (“Jones”) and U.S. Patent No. 5,815,577 to Clark
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`(“Clark”), disclose the structure of the “means for mediating communication . . . so
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`that the communicated data must first pass through the security means.” Petitioner
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`identified an “interface control device, including a conventional field-
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`programmable gate away (FPGA)” as the corresponding structure for the claimed
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`U.S. Patent No. 6,088,802
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`“means for mediating communication . . . so that the communicated data must first
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`pass through the security means,” but provided no structural analysis of whether
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`the cited references disclose an interface control device or an equivalent.
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`Third, Petitioner fails to identify the “target means” disclosed in the Clark
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`reference. The section of the Petition dedicated to the “target means” describes a
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`variety of structures disclosed in Clark, but Petitioner does not specify which of
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`these structures, if any, are the “target means.”
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`Fourth, Petitioner asserts that Jones anticipates several claims of the ’802
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`Patent, but then argues that the “means for operably connecting” is obvious over
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`Jones in view of the knowledge of one of ordinary skill in the art concerning
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`PCMCIA standards or drivers. As such, Petitioner fails to properly identify the
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`legal grounds for its invalidity arguments.
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
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`explicitly reserves the right to provide further distinctions and deficiencies, the
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`deficiencies of the Petition noted herein are sufficient for the Board to find that
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`U.S. Patent No. 6,088,802
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`Petitioner has not met its burden to demonstrate a reasonable likelihood that it
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`would prevail in showing unpatentability of any of the Challenged Claims.
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`II. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER'S CLAIM CONSTRUCTIONS ARE
`INCORRECT IN LIGHT OF THE SPECIFICATION, THE
`CLAIMS, AND THE LAW1
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`A. The Board Should Deny Institution on All Grounds Because
`Petitioner’s Construction of the “Security Means” Fails to
`Identify the Corresponding Structure
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`The claim element “security means for enabling one or more security
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`operations to be performed on data” is found in Claims 1-37. Petitioner’s proposed
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`construction of “security means” is incorrect because Petitioner failed to identify a
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`recited function and a corresponding structure disclosed in the specification that is
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`1 For the sake of brevity, Patent Owner currently addresses only those of
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`Petitioner’s claim constructions that are most relevant to the arguments in this
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`response. The Petition is deficient, even without considering the scope of other
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`constructions. Patent Owner’s silence regarding the appropriate construction of
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`any term should not be taken as an agreement with Petitioner’s construction and
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`Patent Owner reserves the right to challenge any of Petitioner’s constructions at a
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`later juncture in this proceeding and elsewhere.
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`3
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`U.S. Patent No. 6,088,802
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`clearly linked or associated with the function in the claim. Golight, Inc. v. Wal-
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`Mart Stores, Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004). Petitioner bears the
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`burden of identifying the claimed function and the specific portions of the
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`specification that describe the structure corresponding to the claimed function
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`when construing a means-plus-function claim term. 37 C.F.R. § 42.104(b)(3).
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`Petitioner identifies two structures that allegedly correspond to the
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`undisclosed function of the “security means”:
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`1. Hardware, software and/or firmware capable of performing
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`cryptographic or other related mathematical functions,
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`including data encryption and decryption. See id. at 12:10-16,
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`17:52-67, 15:63-67; see also id. at 2:30-32.
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`2. A device that performs security operations and that includes
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`one or more mechanisms to provide security for the content of
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`those operations. See id. at 5:32-33.
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`Pet. at 18. Petitioner does not show how either of these structures is clearly linked
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`to the function of the “security means.” Even assuming that the function of the
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`security means is “enabling one or more security operations to be performed on
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`data,” the generic “structures” identified by Petitioner are not bona fide structures.
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`4
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`The first alleged structure cannot be the required corresponding structure
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`because the specification does not link “hardware, software and/or firmware” to
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`the claimed security means. The sole reference to the language “hardware,
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`software and/or firmware” in the specification is at 2:30-32, cited by Petitioner as a
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`“see also,” which refers to a security device 203 in the prior art. Nothing in the
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`specification indicates that the claimed security means is the security means in the
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`prior art.
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`Regardless, even if the term “hardware, software and/or firmware” at 2:30-
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`32 were linked to the claimed security means, Petitioner has not met its burden
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`because the cited portion of the specification fails to identify a specific hardware
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`structure or, if the structure includes software or firmware as Petitioner contends, a
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`software algorithm for performing the claimed function. See Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 2015). The cited passage merely
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`recites the function of the “hardware, software and/or firmware” without
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`identifying structure: “The security device 203 includes appropriately configured
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`hardware, software and/or firmware which can be directed to perform one or more
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`cryptographic operations.” Ex. 1001 at 2:30-32. Generic references to “hardware”
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`or “software,” similar to the “module” in Williamson, are insufficient to identify
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`corresponding structure for a mean-plus-function claim term in the absence of an
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`algorithm. Williamson, 792 F.3d at 1350.
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`The remaining cited portions of the specification do not cure this defect.
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`The passage at 12:10-16 refers to a “peripheral device” that performs encryption
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`and decryption without identifying the structure of the device. The passage at
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`17:52-67 refers to the “security functionality of a peripheral device,” but also fails
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`to identify a structure. Finally, the passage at 15:63-67 refers to a “cryptographic
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`processing device 801” that Petitioner does not contend is a corresponding
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`structure. Ex. 1001 at 15:64-67. Thus, Petitioner has not met its burden to show
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`that “hardware, software, and/or firmware” is a proper corresponding structure to
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`meet the requirements of 35 U.S.C. § 112(6). Williamson, 792 F.3d at 1352.
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`The second alleged structure, “[a] device that performs security operations
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`and that includes one or more mechanisms to provide security for the content of
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`those operations,” is similarly defective. This alleged structure replaces the
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`“security means” in the claim with a nonce term, “device,” that is not the name of a
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`structure, Williamson, 792 F.3d at 1350, and then reiterates the function of the
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`“security means” albeit with different words.
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`6
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`U.S. Patent No. 6,088,802
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`While Patent Owner believes that the specification discloses sufficient
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`structure to render the “security means” definite, it is the Petitioner’s burden, and
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`not the Patent Owner’s burden, to identify the claimed function and cite the
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`appropriate corresponding structure. 37 C.F.R. § 42.104(b)(3). Because Petitioner
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`has failed to properly construe “security means,” the Petition cannot properly
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`identify how the prior art renders the claims unpatentable. The Petition should be
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`denied on all grounds with respect to Claims 1 through 37.
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`III. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED.
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`A. Requirements for Showing Anticipation Under 35 U.S.C.
`§ 102 and Obviousness Under 35 U.S.C. § 103.
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`A reference cannot anticipate a claim unless each and every element as set
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`forth in the claim is found in that reference. See, e.g., Verdegaal Bros., Inc. v.
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`Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the elements
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`in the reference must be arranged as required by the claim. Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1371-72 (Fed. Cir. 2008).
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`To establish the presence of a means-plus-function limitation in the prior art,
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`the challenger must show that the structure corresponding to the claimed function,
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`or an equivalent, is present in the prior art. Fresenius USA, Inc. v. Baxter Int’l,
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`7
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`U.S. Patent No. 6,088,802
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`Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009). “To anticipate a claim reciting a
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`means-plus-function limitation, the anticipatory reference must disclose the recited
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`function identically.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364,
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`1372 (Fed. Cir. 2002).
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`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`skill in the art, and (4) where in evidence, so-called secondary considerations.
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`Graham, 383 U.S. 1, at 17–18. The Board has held that a failure to identify the
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`differences between the claimed subject matter and the prior art is fatal to an
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`obviousness challenge. See, Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-
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`00355, Decision Denying Institution of Inter Partes Review, Paper 9 at 9-10
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`(PTAB June 26, 2015) (denying institution for failure to identify the differences
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`between the claimed subject matter and the prior art).
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`This Petition is deficient because it fails to meet the fundamental
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`requirements for demonstrating invalidity. The Petitioner was required to “specify
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`where each element of the claim is found in the prior art patents or printed
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`U.S. Patent No. 6,088,802
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`publications relied upon.” 37 C.F.R. § 42.104(b)(4). As set forth below, Petitioner
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`failed to meet this burden.
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`B. Ground I: Claims 1, 2, 6, 7, 11-13, 23-26, and 36-39 Are Not
`Anticipated by Jones
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`Petitioner failed to meet its burden with respect to Ground I because
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`Petitioner (1) did not identify the corresponding structure for the “security means,”
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`and, therefore, failed to show where that structure is disclosed in Jones; (2) failed
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`to show that the claimed “means for operably connecting” is disclosed in Jones;
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`(3) failed to show that the “means for mediating communications” is found in
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`Jones; and (4) failed to show that Claims 38 and 39 are anticipated by Jones.
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`1.
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`Petitioner Failed to Show that the Claimed “Security
`Means” Is Disclosed in Jones
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`Independent claims 1, 6, 11, 23, 24, 36, and 37 of the ʼ802 Patent recite a
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`“security means” and dependent claims 2, 7, 12, 13, 24, and 25 include this
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`limitation via dependence. As set forth above, Petitioner failed to identify the
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`corresponding structure for the “security means” disclosed in the specification.
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`Because the Board’s rules require that the Petitioner “must specify where each
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`element of the claim is found in the prior art patents or printed publications relied
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`upon,” 37 C.F.R. 42.104(b)(4), and the controlling Federal Circuit case law
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`requires that “a challenger who seeks to demonstrate that a means-plus-function
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`U.S. Patent No. 6,088,802
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`limitation was present in the prior art must prove that the corresponding
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`structure—or an equivalent—was present in the prior art,” Fresenius USA, 582
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`F.3d at 1299, Ground I is deficient with respect to Claims 1, 2, 6, 7, 11-13, 23-26,
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`and 36-37 and should be denied as to those claims.
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`2.
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`Petitioner Failed to Show that the Claimed “Means for
`Operably Connecting” Is Disclosed in Jones
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`The Petition is deficient because the Petitioner fails to accurately disclose
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`the statutory grounds for its arguments. A petition is required to “identif[y], in
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`writing and with particularity, each claim challenged, the grounds on which the
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`challenge to each claim is based, and the evidence that supports the grounds for the
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`challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition must provide a
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`statement of “[t]he specific statutory grounds under 35 U.S.C. 102 or 103 on which
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`the challenge to the claim is based and the patents or printed publications relied
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`upon for each ground.” 37 C.F.R. § 42.104(b)(2). The Petition also must identify
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`“[h]ow the construed claim is unpatentable under the statutory grounds identified
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`in paragraph (b)(2).” 37 C.F.R. § 42.104(b)(4).
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`Independent claims 1 and 6 recite a “means for operably connecting the
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`security means and/or the target means to the host computing device in response to
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`an instruction from the host computing device.” Petitioner argues that Jones
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`U.S. Patent No. 6,088,802
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`discloses this claim element because “Jones uses the PCMCIA interface standard
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`and the related standard software device driver for implementing that interface
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`standard in communicating between the secure memory card and host computer of
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`Jones.” Pet. at 27. Petitioner also contends that Jones discloses that the secure
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`memory card “stores information to help the host computer and secure memory
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`card of Jones to establish an appropriate communications interface using ‘suitable
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`driver software which executes on the host computer.’” Pet. at 27-28. Petitioner
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`does not, however, argue that Jones discloses that the operable connection of the
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`host computer to the security means and/or target means occurs “in response to an
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`instruction from the host computing device” as required in the claimed function.
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`In an admission that Jones does not disclose this aspect of the claimed
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`function, Petitioner argues that a person of ordinary skill in the art would have
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`known that a plug-and-play feature “ubiquitous” among PCMCIA standard devices
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`“involves the suitable software drivers being provided to the host computer in
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`response to an instruction to do so by the host computer.” Pet. at 28. In other
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`words, Petitioner admits that Jones does not disclose that the software drivers are
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`provided to the host computer “in response to an instruction from the host
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`computing device,” but that this limitation is either supplied by the PCMCIA
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`standard or is at least common in PCMCIA standard devices. This is an
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`obviousness, not anticipation, argument. See Transclean Corp., 290 F.3d at 1372
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`(a claimed function must be disclosed identically in the cited reference to be
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`anticipated).
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`By cloaking its obviousness argument as an anticipation argument,
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`Petitioner has submitted a deficient Petition, and Ground I of the Petition should be
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`denied as to Claims 1, 2, 6, and 7.
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`3.
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`Petitioner Failed to Show that the Claimed “Means for
`Mediating Communications . . . so that the Communicated
`Data Must First Pass through the Security Means” Is
`Disclosed in Jones
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`Independent claims 1, 11, 23, and 36 recite a “means for mediating
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`communication of data between the host computing device and the target means so
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`that the communicated data must first pass through the security means.” Petitioner
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`proposed to construe this term to include the corresponding structure described in
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`the specification: an interface control device, including a conventional field
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`programmable gate array (FPGA),” citing Ex. 1001 at 16:40-56 and, also, 13:5–26.
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`12
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`Pet. at 212. Petitioner then argues that the “means for mediating communication”
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`is disclosed by the gate 178 of Jones. Pet. at 29, 32.
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`Petitioner’s argument that the gate 178 of Jones performs the same function
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`as the interface control device disclosed in the ’802 Patent at 16:40-56, and has the
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`same or equivalent structure as the interface control device, should be rejected.
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`The interface control device 802, depicted in Figure 8, “enables the in-line
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`cryptography aspect of the invention, since the interface control device 802
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`controls the flow of data between the host computing device and the target
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`functionality 807.” Ex. 1001 at 16:52-56. Figure 9A illustrates the flow of data
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`through the interface control device 802. Ex. 1001 at 16:57-58.
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`2 Patent Owner does not agree that Petitioner’s proposed construction is correct.
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`As shown, in embodiments where data from the host computing device is
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`processed by the cryptographic processing device and passed to the target device,
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`the interface control device 802 mediates the communication of data by causing
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`data to flow from the host interface 806 to the cryptographic processing device
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`interface 808 prior to being sent to the target functionality interface 807. Ex. 1001
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`at 16:57-17:6.
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`Petitioner has failed to meet its burden to “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon” as
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`required by 37 C.F.R. § 42.104(b)(4) because Petitioner does not argue that gate
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`178 performs the claimed function of “mediating communication of data between
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`the host computing device and the target means so that the communicated data
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`must first pass through the security means.” Instead, Petitioner states this
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`limitation is met because “[d]ata from the host computing device must first pass
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`through the gate before it can make its way to the common memory array,” Pet. at
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`29, but Petitioner does not contend that the gate 178 mediates this communication
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`“so that the communicated data must first pass through the security means” as
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`required by the claim limitation. Thus, Petitioner has failed to meet its burden of
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`showing how this element of the claim is met by the gate 178.
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`Petitioner could not argue that gate 178 performs this function because gate
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`178 has no role in passing data first through the alleged security means of Jones,
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`which Petitioner identifies as the encryption-decryption unit 177. As is apparent
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`from Figure 1 of Jones reproduced below, the communication of data from the host
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`computer 110 to the encryption-decryption unit 177 could not be mediated by gate
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`178 because the gate is not interposed between the host computer and encryption-
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`decryption unit. Ex. 1003, Fig. 1. Thus, gate 178 does not mediate
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`communications so that the data must first pass through the encryption-decryption
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`unit 177.
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`Additionally, even if the gate 178 performed the function of a “means for
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`mediating communication,” Petitioner has not shown that the gate 178 has the
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`same or equivalent structure as the interface control device that Petitioner asserts is
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`the corresponding structure. As the Federal Circuit has stated:
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`It is firmly established in our precedent that a structural analysis
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`is required when means-plus-function limitations are at issue; a
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`functional analysis alone will not suffice. . . . Just as a patentee
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`who seeks to prove infringement must provide a structural
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`analysis by demonstrating that the accused device has the
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`identified corresponding structure or an equivalent structure, a
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`challenger who seeks to demonstrate that a means-plus-function
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`limitation was present in the prior art must prove that the
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`corresponding structure—or an equivalent—was present in the
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`prior art.
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`Fresenius USA, Inc., 582 F.3d at 1299 (citations omitted).
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`Petitioner did not perform a structural analysis in the Petition. Petitioner
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`simply states, without explanation, that the gate in Jones is an interface control
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`device without comparing the structure of the gate to the structure of the interface
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`control device. Pet. at 29. It is evident from the disclosure of the ’802 Patent that
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`an interface control device must be more than a simple gate. Moreover, an FPGA
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`includes, among other things, an array of gates, which is much more than a single
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`gate. Petitioner’s purely functional analysis is insufficient under the controlling
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`law. Accordingly, Ground I is deficient with respect to Claims 1, 2, 11-13, 23, and
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`36 and should be denied.
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`4.
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`Petitioner Failed to Show that Claims 38 and 39 Are
`Anticipated by Jones
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`Petitioner states that Claims 38 and 39 are invalid for the same reasons as
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`independent Claims 1, 6, 11, 23, 24, 36, and 37 because Claims 38 and 39 “do not
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`provide patentably distinguishing claim elements.” Pet. at 32-33. Petitioner
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`assumes that the Board will reach the same conclusion as the Examiner did
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`concerning the scope of the claims (while arriving at a different conclusion
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`regarding patentability) without any articulated reasoning or analysis. In so doing,
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`Petitioner fails to fulfill its obligation to “specify where each element of the claim
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`is found in the prior art patents or printed publications relied upon,” 37 C.F.R.
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`42.104(b)(4). For this reason, Ground I should be denied as to Claims 38 and 39.
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`In any event, if Petitioner is correct that Claims 38 and 39 are of the same
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`scope as Claims 1 and 11, then for the same reasons as set forth above, Petitioner
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`has failed to demonstrate that Claims 38 and 39 are anticipated by Jones for at least
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`the reasons set forth above.
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`C. Ground II: Claims 5, 10, 14, 22, 27, and 35 Are Not Obvious
`over Jones in View of Harari
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`Ground II should be denied because Harari is cited to address solely
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`dependent claims and does not cure the defects in Petitioner’s arguments set forth
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`above in Section III.B. Since all of the claims of Ground II depend from claims
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`that Petitioner has not shown are anticipated by Jones in Ground I, and Harari does
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`not supply the missing limitations, Ground II should not be instituted.
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`D. Ground III: Claims 1-39 Are Not Obvious Over Clark in
`View of USB Specification
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`Ground III should not be instituted because Petitioner (1) did not identify the
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`corresponding structure for the “security means” and, therefore, failed to show
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`where that structure is disclosed in Clark; (2) failed to identify where the “target
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`means” is found in Clark; (3) failed to show that the “means for mediating
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`communications” is found in Clark; and (4) failed to show that Claims 38 and 39
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`are obvious over Clark in view of the USB Specification.
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`1.
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`Petitioner Failed to Show that the Claimed “Security
`Means” Is Obvious Over Clark in View of the USB
`Specification
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`As set forth above, independent Claims 1, 6, 11, 23, 24, 36, and 37 of the
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`ʼ802 Patent recite a “security means,” but Petitioner failed to identify the
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`corresponding structure for the “security means” disclosed in the specification of
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`the ’802 Patent. See supra, § II.A. Therefore, as discussed with respect to
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`Ground I, Petitioner has failed to meet its burden to “specify where each element
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`of the claim is found in the prior art patents or printed publications relied upon,”
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`37 C.F.R. 42.104(b)(4), because Petitioner has not shown where the unidentified
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`corresponding structure for the “security means” is disclosed in Clark (and does
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`not contend that it is disclosed in the USB Specification). Pet. at 43; supra,
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`§ III.B.1. Accordingly, Ground III is deficient with respect to Claims 1-37 and
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`should be denied.
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`2.
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`Petitioner Failed to Identify Where the “Target Means” Is
`Found in Clark or the USB Specification
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`Petitioner has failed to meet its burden to “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon” as
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`required by 37 C.F.R. § 42.104(b)(4) because Petitioner did not identify where the
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`“target means” is found in Clark. Petitioner states that the “[a]cquisition input unit
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`of the Clark encryption module can take many forms,” and that Clark’s encryption
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`module can include “virtually any source” for providing confidential data to be
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`encrypted. Pet. at 43-44. However, Petitioner never explicitly states that any
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`specific structure in Clark is the claimed “target means,” and Petitioner does not
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`contend that the “target means” is disclosed in the USB Specification.
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`Accordingly, Ground III is deficient with respect to Claims 1-37 and should be
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`denied.
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`3.
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`Petitioner Failed to Show that the Corresponding Structure
`for the Claimed “Means for Mediating Communications” Is
`Disclosed in Clark or the USB Specification
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`Similar to its argument with respect to Jones in Ground I, Petitioner argues
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`that the “means for mediating communication of data between the host computing
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`device and the target means so that the communicated data must first pass through
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`the security means” is the switch 3912 of Clark3. Petitioner argues that switch
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`3912 mediates the communication between the acquisition input 3904 and the PC
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`via communication links 3926-3932 so that the data must pass through the
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`encryption engine 3924. Pet. at 49.
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`3 Petitioner does not contend that the USB Specification discloses this limitation.
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`Even assuming that the switch performs the claimed function, the Petition is
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`deficient because Petitioner has not sh
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