IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`Filed on behalf of Unified Patents Inc.
`By: Vincent J. Galluzzo, Reg. No. 67,830
`
`Teresa Stanek Rea, Reg. No. 30,427
`
`CROWELL & MORING LLP
`
`1001 Pennsylvania Avenue, N.W.
`
`Washington, D.C. 20004
`
`Tel: (202) 624-2781
`
`Email: vgalluzzo@crowell.com
`
`
`
`
`
`
`
`
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, D.C. 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`IPR2017-00430
`Patent 6,088,802
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 6,088,802
`CHALLENGING CLAIMS 1–39
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`TABLE OF CONTENTS
`
`I.  MANDATORY NOTICES ............................................................................. 1 
`A. 
`Real Party-in-Interest ................................................................................... 1 
`B. 
`Related Matters ............................................................................................ 1 
`C. 
`Counsel ........................................................................................................ 2 
`D. 
`Service Information, Email, Hand Delivery, and Postal ............................. 3 
`II. 
`CERTIFICATION OF GROUNDS FOR STANDING .................................. 3 
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................... 3 
`A. 
`Prior Art Patents and Printed Publications .................................................. 3 
`B. 
`Grounds for Challenge ................................................................................. 4 
`IV. 
`INTRODUCTION ........................................................................................... 4 
`V. 
`TECHNOLOGY BACKGROUND ................................................................. 6 
`VI.  OVERVIEW OF THE ʼ802 PATENT .......................................................... 12 
`A. 
`Summary of the Alleged Invention............................................................ 12 
`B. 
`Level of Ordinary Skill in the Art ............................................................. 14 
`C. 
`Prosecution History .................................................................................... 15 
`VII.  CLAIM CONSTRUCTION .......................................................................... 15 
`VIII.  SPECIFIC GROUNDS FOR PETITION ...................................................... 22 
`Ground I: Claims 1, 2, 6, 7, 11–13, 23–26, and 36–39 are anticipated by
`A. 
`Jones .......................................................................................................... 23 
`Overview of Jones .................................................................................... 23 
`Claims 1, 6, 11, 23, and 24 are anticipated by Jones ............................. 25 
`Claims 2, 7, 12, and 25 are anticipated by Jones ................................... 30 
`Claims 13 and 26 are anticipated by Jones ............................................ 30 
`Claims 36 and 37 are anticipated by Jones ............................................ 31 
`Claim 38 is anticipated by Jones ............................................................. 32 
`Claim 39 is anticipated by Jones ............................................................. 33 
`Ground II: Claims 5, 10, 14, 22, 27, and 35 are obvious over Jones in
`view of Harari ........................................................................................... 34 
`i
`
`1. 
`2. 
`3. 
`4. 
`5. 
`6. 
`7. 
`B. 
`
`
`
`

`

`1. 
`2. 
`3. 
`C. 
`
`4. 
`
`5. 
`
`6. 
`
`1. 
`2. 
`3. 
`
`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`Overview of Harari .................................................................................. 34 
`Claims 5, 10, 22, and 35 are obvious over Jones in view of Harari ........ 35 
`Claims 14 and 27 are obvious over Jones ............................................... 37 
`Ground III: Claims 1–39 are obvious over Clark in view of USB
`Specification ............................................................................................... 37 
`Overview of Clark .................................................................................... 37 
`Overview of USB Specification .............................................................. 41 
`Claims 1, 6, 11, 23, and 24 are obvious over Clark in view of USB
`Specification ............................................................................................ 42 
`Claims 2, 7, 12, and 25 are obvious over Clark in view of USB
`Specification ............................................................................................ 51 
`Claims 3, 8, 15, and 28 are obvious over Clark in view of USB
`Specification ............................................................................................ 52 
`Claims 4, 9, 19, and 32 are obvious over Clark in view of USB
`Specification ............................................................................................ 53 
`Claims 5, 10, 22, and 35 are obvious over Clark in view of USB
`Specification ............................................................................................ 53 
`Claims 13 and 26 are obvious over Clark in view of USB Specification
` ................................................................................................................. 54 
`Claims 14 and 27 are obvious over Clark in view of USB Specification
` ................................................................................................................. 55 
`10.  Claims 16 and 29 are obvious over Clark in view of USB Specification
` ................................................................................................................. 55 
`11.  Claims 17 and 30 are obvious over Clark in view of USB Specification
` ................................................................................................................. 56 
`12.  Claims 18 and 31 are obvious over Clark in view of USB Specification
` ................................................................................................................. 57 
`13.  Claims 20 and 33 are obvious over Clark in view of USB Specification
` ................................................................................................................. 57 
`14.  Claims 21 and 34 are obvious over Clark in view of USB Specification
` ................................................................................................................. 57 
`15.  Claims 36 and 37 are obvious over Clark in view of USB Specification
` ................................................................................................................. 58 
`ii
`
`7. 
`
`8. 
`
`9. 
`
`
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`16.  Claim 38 is obvious over Clark in view of USB Specification ............... 60 
`17.  Claim 39 is obvious over Clark in view of USB Specification ............... 61 
`IX.  CONCLUSION .............................................................................................. 62 
`
`
`
`
`iii
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`I. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
`
`that no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of this petition, or the conduct of any
`
`ensuing trial. In this regard, Unified has submitted voluntary discovery. See
`
`EX1027 (Petitioner’s Voluntary Interrogatory Responses).
`
`B. Related Matters
`
`U.S. Patent 6,088,802 (“the ʼ802 Patent” (EX1001)) is owned by SPEX
`
`Technologies, Inc. (“SPEX” or “Patent Owner”). See EX1028 (Kingston
`
`Complaint), at 12.
`
`On September 27, 2016, SPEX filed a lawsuit in the Central District of
`
`California alleging infringement of the ʼ802 Patent in SPEX Technologies, Inc. v.
`
`Kingston Technology Company Inc., et al., No. 8:16-cv-01790 (C.D. Cal. Filed
`
`Sept. 27, 2016).
`
`On September 28, 2016, SPEX filed five additional lawsuits also in the
`
`Central District of California and also alleging infringement of the ʼ802 Patent in
`
`SPEX Technologies, Inc. v. Western Digital Corporation, et al., No. 8:16-cv-01799
`
`(C.D. Cal. Filed Sept. 28, 2016); SPEX Technologies, Inc. v. Toshiba America
`
`1
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`Electronics Components Inc., et al., No. 8:16-cv-01800 (C.D. Cal. Filed Sept. 28,
`
`2016); SPEX Technologies, Inc. v. CMS Products, Inc., No. 8:16-cv-01801 (C.D.
`
`Cal. Filed Sept. 28, 2016); SPEX Technologies, Inc. v. Integral Memory, PLC, No.
`
`8:16-cv-01805 (C.D. Cal. Filed Sept. 28, 2016); and SPEX Technologies, Inc. v.
`
`Apricorn, No. 2:16-cv-07349 (C.D. Cal. Filed Sept. 28, 2016).
`
`SPEX filed against, inter alia, Kingston Technology Company Inc.;
`
`Kingston Digital, Inc.; Kingston Technology Corporation; Imation Corporation;
`
`DataLocker, Inc.; Data Locker International, LLC; Western Digital Corporation;
`
`Western Digital Technologies, Inc.; HGST, Inc.; Toshiba America Electronics
`
`Components Inc.; Toshiba America Information Systems, Inc.; Toshiba America,
`
`Inc.; Toshiba Corporation; CMS Products, Inc.; Integral Memory, PLC; and
`
`Apricorn, claiming that certain of these companies’ products or services infringe
`
`the ʼ802 Patent. These cases are in their early stages and no schedule or trial date
`
`has been set.
`
`C. Counsel
`
`Vincent J. Galluzzo (Reg. No. 67,830) will act as lead counsel; Teresa
`
`Stanek Rea (Reg. No. 30,427) and Jonathan Stroud (Reg. No. 72,518) will act as
`
`back-up counsel.
`
`2
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`Service Information, Email, Hand Delivery, and Postal
`
`D.
`
`Unified consents to electronic service at vgalluzzo@crowell.com and
`
`jonathan@unifiedpatents.com. Petitioner can be reached at Crowell & Moring
`
`LLP, 1001 Pennsylvania Avenue, N.W., Washington, DC 20004, Tel.: (202) 624-
`
`2781, Fax: (202) 628-8844 and Unified Patents Inc., 1875 Connecticut Avenue,
`
`N.W., Floor 10, Washington, D.C. 20009, Tel.: (650) 999-0899.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`claims 1–39 of the ʼ802 Patent.
`
`A.
`
`Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:1
`
`
`1 The ʼ802 Patent issued from a patent application filed prior to enactment of the
`
`America Invents Act (“AIA”). Accordingly, pre-AIA statutory framework applies.
`
`3
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`U.S. Patent 5,623,637 (filed on May 17, 1996, published on April 22,
`
`1.
`
`1997) (“Jones”) (EX1003), which is prior art under 35 U.S.C.
`
`§ 102(a);
`
`2.
`
`U.S. Patent 5,887,145 (filed on January 9, 1997; published on March
`
`23, 1999) (“Harari”) (EX1004), which is prior art under 35 U.S.C.
`
`§ 102(e);
`
`3.
`
`U.S. Patent 5,815,577 (filed on March 24, 1997, published on
`
`September 29, 1998) (“Clark”) (EX1005), which is prior art under 35
`
`U.S.C. § 102(e); and
`
`4.
`
`Compaq Computer Corporation, et al., Universal Serial Bus
`
`Specification Revision 1.0 (published on January 15, 1996) (“USB
`
`Specification”) (EX1006), which is prior art under 35 U.S.C. § 102(b).
`
`B. Grounds for Challenge
`
`This Petition, supported by the Declaration of Ivan Zatkovich (“Zatkovich
`
`Declaration” (EX1002)), requests cancellation of challenged claims 1–39 as
`
`unpatentable under 35 U.S.C. § 103. See 35 U.S.C. § 314(a).
`
`IV.
`
`INTRODUCTION
`
`The admitted “novelty” of the ʼ802 Patent lies in the simple combination of
`
`two separate devices: a “security device” that performs security operations on
`
`behalf of a host computer and a “portable device” that performs some non-security
`
`4
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`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`function, such as data storage, for that computer. See, e.g., EX1001 (ʼ802 Patent),
`
`at 3:1–3, 3:27–33. Security devices and portable devices were each well-known
`
`individually, as the ʼ802 Patent illustrates in Figure 2 and describes elsewhere in
`
`great detail:
`
`
`
`Id. at 2:22–3:14, Fig. 2. Known security devices could perform cryptographic
`
`operations on information that it provided to the host computer or on information
`
`that the host computer provided to it. Id. at 1:66–2:9. Portable devices like
`
`PCMCIA cards, smart cards, CD-ROMs, and the like, could “perform an
`
`assortment of functions,” such as data storage, for the host computer. Id. at 1:35–
`
`38. The ʼ802 Patent’s alleged contribution is thus no more than the combination of
`
`the two into a single “peripheral device”:
`
`5
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`(ALLEGED INVENTION)
`
`
`
`Id. at Figs. 2, 3A (red annotation added).
`
`Yet it was well known in June 1997 to integrate security and portable device
`
`functionality into a single peripheral device, and the applicants of the ’802 Patent
`
`failed to understand the state of the art at the time they filed the application that led
`
`to the ʼ802 Patent. These integrated devices had been used in various industries,
`
`from computer security to remote banking. There was nothing novel about the
`
`combination of a “security” device and a “portable” device into a single peripheral,
`
`and the combination of the two devices and functionalities was obvious in June
`
`1997. Therefore, the ʼ802 Patent is unpatentable over the prior art submitted with
`
`this Petition.
`
`V. TECHNOLOGY BACKGROUND
`
`The technology at issue in this Petition relates generally to peripheral
`
`computing devices, and more particularly, to the combination of the functionality
`
`6
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`of two peripheral computing devices, a security device and a portable device, into
`
`one.
`
`Computer security is a necessary component of all modern computing
`
`devices, but robust computer security methods are complex and dominate
`
`computing resources at the expense of other user-desired processes. To avoid this
`
`bottleneck, those skilled in the art have known since at least the early 1980s to
`
`offload security capabilities from a computer onto a peripheral security device.
`
`See, e.g., EX1007 (Buchanan), at 1; see also EX1008 (Boone). Such a computer
`
`could more quickly perform software processing as it was no longer burdened by
`
`complex security operations. EX1007 (Buchanan), at 1. Coincidentally, security
`
`operations were also faster, as they were consolidated into a single peripheral
`
`controller connected to the computer through a communications channel having
`
`“acceptable data rates.” Id.
`
`Various companies conceived of peripheral security devices that interacted
`
`with a host computer in this way well before June 1997. One idea from Samsung
`
`Electronics included a “security device for a digital computer system having a
`
`peripheral device and a peripheral device controller,” including a “security user
`
`input/output unit” that is connected to the security controller, “thereby allowing a
`
`computer system to interface with an input/output device or a file in a normal state
`
`7
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`while the security device protects the computer system.” EX1009 (Hwang), at
`
`Abstract.
`
`Another security solution from the early 1990s conceived of a storage media
`
`reader (like a CD-ROM drive or smart card reader) with integrated security
`
`functionality and a keypad for entering personal security information like a PIN or
`
`biometric information. See EX1010 (Lang), at 2:23–33, 2:35–41, 3:11–16, 4:64–
`
`5:3, 5:16–25; see also EX1011 (Lane). Yet another solution from the mid-1990s
`
`from IBM consisted of a removable PC card having security functionality that
`
`prevented access to the PC card’s storage media absent valid user credentials.
`
`EX1012 (Bensimon). Other solutions limited access to the host computer itself.
`
`See EX1013 (Wade); EX1014 (Angelo). Many other solutions in the art existed
`
`prior to June 1997, including messaging peripherals that interacted with host
`
`computers via communications standards known at the time (such as PCMCIA),
`
`EX1015 (Macko), peripherals that read data sent between a keyboard and a host
`
`computer, EX1016 (Goodman), and others as described throughout this Petition.
`
`Research into security cards as small as a credit card was well underway at
`
`least as early as 1988. EX1017 (Schamüller-Bichl). These security cards were
`
`effective as a “‘special computer’ for taking over selected security functions” of a
`
`user’s computer in “high-security applications.” Id. at 192. While they had many
`
`potential applications, those skilled in the art knew that the security cards could be
`
`8
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`configured to “encipher all data transmitted between the card and the card reader,”
`
`which was connected to the user’s computer. Id. at 194. The card could also be
`
`used to encrypt external data and store it in the security card’s memory, and then to
`
`“retransmit[]” the data “to the card reader” and thus to the user’s computer. Id.
`
`The user could even use a PIN, or even “biometric parameters” to access the
`
`functionality of the security card on demand. Id. at 193. In each of these
`
`functions, the data communicated between the card and the card reader on a user’s
`
`computer must necessarily pass through the security functionality of the security
`
`card:
`
`9
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`Id. at 195. This late-1980s research further suggested that security cards could be
`
`improved by expanding the card’s memory and storing more user and computer
`
`data and to take over more of the security functionality of a user’s computer. Id. at
`
`
`
`198.
`
`One advanced solution came from a Canadian inventor in 1990, which
`
`included a portable card, a peripheral device, and a remote host computer.
`
`EX1018 (Graves), at 3:9–10. The peripheral device contained a microprocessor
`
`and memory, a card reading device to read the portable card, and a fingerprint
`
`10
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`scanner for security. Id. at 3:13–14. When a user inserted the card into the
`
`peripheral, the card verifies that the terminal is valid while the peripheral verifies
`
`that the card was valid and that the user’s fingerprint was valid. Id. at 3:16–19.
`
`Alternatively, the peripheral could verify the user by a retinal or DNA scan. Id. at
`
`3:18–19. Encryption is used in the system both at the card-peripheral interface and
`
`at the peripheral-host computer interface. Id. at 3:33–34, 5:8–10.
`
`The ʼ802 Patent also recognizes some of the state of the art in June 1997 in
`
`its description of some of the prior art systems. One of those systems is where a
`
`host computing device connects separately to a portable device and a security
`
`device, as shown in Figure 2:
`
`
`
`EX1001 (ʼ802 Patent), at Fig. 2. The security device contains software and
`
`hardware sufficient to perform desired cryptographic operations. Id. at 2:30–32.
`
`The portable device can take essentially any form and performs some other
`
`function. Id. at 1:31–38. The host computing device communicates directly with
`
`11
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`the security device and portable device, but the security device and portable device
`
`do not communicate with each other. Id. at 2:22–30. Thus, the prior art has all of
`
`the functionality of an integrated security/portable peripheral device system, but
`
`the security device and portable device must use the host computer as an
`
`intermediary to communicate with each other. Id. at 2:33–47. This difference is
`
`insignificant, and the integrated communications functionality that the ʼ802 Patent
`
`claims as its own was disclosed in the prior art well before June 1997.
`
`VI. OVERVIEW OF THE ʼ802 PATENT
`A.
`
`Summary of the Alleged Invention
`
`The ʼ802 Patent relates to a peripheral device connected to a host computer,
`
`where the peripheral device performs security operations (such as cryptography)
`
`on data communicated between the peripheral device and the host computer as
`
`well as some other operations traditionally done by peripheral devices. Id. at 1:17–
`
`27, 1:35–38, 4:49–5:4. According to the ʼ802 Patent, combining the security
`
`functionality and peripheral, or “target,” functionality into one device did not exist
`
`in the prior art. Instead, there were two systems available: one where a security
`
`function is located in the host computing device, one where the security function is
`
`located in a standalone security device, both as shown below:
`
`12
`
`

`

`Data flow
`
`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`Id. at Figs. 1, 2 (red annotations added); id. at 1:51–2:9, 2:22–43. In each of the
`
`prior art examples discussed in the ʼ802 Patent, security operations are performed
`
`on communicated data as it passes through the security function or device en route
`
`from the host computer to the portable device, and vice versa. Id. at 1:51–2:9,
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`2:22–43.
`
`The ʼ802 Patent simply integrates the previously separate security and
`
`peripheral functions into a single integrated device, as shown in Figure 3A below:
`
`Data flow
`
`
`Id. at Fig. 3A (red annotations added). The ʼ802 Patent admits that its only alleged
`
`“novelty” lies in enabling “a defined interaction with a host computing device that
`
`13
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`has not previously been integrated with security operations in a single integral
`
`device.” Id. at 3:27–33.
`
`Other than integrating the security function into the peripheral device, the
`
`primary security and peripheral functions are unchanged. The security function
`
`still performs well-known security operations on the communicated data. Id. at
`
`4:55–62, 5:22–6:9, 17:52–67. The peripheral device still performs its peripheral
`
`function on the data. Id. at 4:63–5:4. For example, if the peripheral device is a
`
`flash memory, it is still a flash memory. Id. at 13:29–31 (“any such memory
`
`device can be used to embody such target functionality”). If it is a communication
`
`modem, it is still a communication modem. Id. at 13:53–55. If it is a biometric
`
`device, it is still a biometric device. Id. at 14:15–16. And if it is a smart card
`
`reader, it is still a smart card reader. Id. at 15:28–30.
`
`This simple integration of security and peripheral functions is not novel, and
`
`was obvious as of June 1997, and therefore, the ʼ802 Patent is unpatentable over
`
`the prior art discussed throughout this Petition.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art (“POSA”) for the ʼ802 Patent would
`
`have a bachelor’s degree in computer science, electrical engineering, or related
`
`study with two years of experience in design and development of computer
`
`peripheral interfaces. EX1002 (Zatkovich Declaration), at ¶¶ 24—25.
`
`14
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`
`C.
`
`Prosecution History
`
`The ʼ802 Patent issued from U.S. Patent Application 08/869,305 (“the ʼ305
`
`Application”), which was filed on June 4, 1997. EX1001 (ʼ802 Patent), at [21]–
`
`[22]. The ʼ802 Patent states that it is “related to the commonly owned, co-pending
`
`United States patent Application entitled ‘Modular Security Device,’ by William P.
`
`Bialick, Mark J. Sutherland, Janet L. Dolphin-Peterson, Thomas K. Rowland, Kirk
`
`W. Skeba and Russell D. Housely, filed on the same date as the present application
`
`and having Attorney Docket No. SPY-003.” Id. at 1:6–12. Petitioners believe this
`
`reference is to U.S. Patent Application 08/869,120, which was also filed on June 4,
`
`1997, which is subject to a terminal disclaimer to the ʼ802 Patent, and which issued
`
`as U.S. Patent 6,003,135. The ʼ305 Application went through a series of rejections
`
`before it was eventually granted, and issued on July 11, 2000.
`
`The ʼ305 Application was filed after the January 1, 1996 GATT date, and
`
`the ʼ802 Patent is not entitled to any patent term extension. Therefore, the ʼ802
`
`Patent is likely to expire on June 4, 2017. That date is within eighteen months of
`
`the filing date of this Petition, and therefore within eighteen months from any
`
`Notice of Filing Date Accorded to Petition here.
`
`VII. CLAIM CONSTRUCTION
`
`Claim terms of a patent in inter partes review are normally given their
`
`“broadest reasonable construction in light of the specification.” 37 C.F.R.
`
`15
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`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`
`Where the patent term of the claims has expired, however, construction is similar
`
`to that in a district court’s review. In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012). Specifically, the Board applies the principle that the words of a claim are
`
`generally given their ordinary and customary meaning, as understood by a person
`
`of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415
`
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
`
`As noted above in Section VI(C), the ʼ802 Patent is likely to expire on June
`
`4, 2017. While Petitioner does not request that the Board apply the Phillips claim
`
`construction standard, Petitioner’s proposed constructions
`
`follow explicit
`
`definitions in the ʼ802 Patent specification or are means-plus-functions limitations
`
`consistent with the specification. Those explicit definitions or means-plus-
`
`functions limitations are therefore consistent with, and would still remain, the
`
`correct constructions under the Phillips standard, should the Board determine to
`
`use that standard here.2
`
`
`2 The construction of means-plus-function terms under pre-AIA 35 U.S.C. § 112,
`
`¶ 6 is statutorily mandated, and thus is consistent whether a “broadest reasonable
`
`interpretation” or Phillips construction standard is used. In re Donaldson Co., 16
`
`(Continued...)
`
`16
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`The following discussion proposes constructions and support for those
`
`constructions. Any claim terms not included in the following discussion should be
`
`given their appropriate construction under the applicable standard used by the
`
`Board in reviewing the ʼ802 Patent.
`
`“peripheral device”
`
`This term should be construed to mean “a device that operates outside of a
`
`host computing device and that is connected to the host computing device,” which
`
`is how the ʼ802 Patent explicitly defines the term. See EX1001 (ʼ802 Patent), at
`
`4:52–55.
`
`“security operations”
`
`This term should be construed to include, without limitation, “[1] operations
`
`that provide one or more of the basic cryptographic functions, such as maintenance
`
`of data confidentiality, [2] verification of data integrity, [3] user authentication and
`
`[4] user non-repudiation,” which are the explicit and non-limiting examples given
`
`of “security operation[s]” in the ’802 Patent. Id. at 5:23–29.
`
`________________________
`F.3d 1189, 1193–95 (Fed. Cir. 1994) (en banc); see also Williamson v. Citrix
`
`Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc).
`
`17
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`“defined interaction” and “interaction . . . in a defined way”
`
`These phrases should be construed to include, without limitation, “[1] data
`
`storage, [2] data communication, [3] data input and output, [and 4] user
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`identification,” which are the explicit and non-limiting examples given of “defined
`
`interactions” in the ’802 Patent. See id. at Abstract; see also id. at 3:33–36.
`
`“security means for enabling one or more security operations to be
`performed on data”
`
`This phrase should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6 to
`
`include the following corresponding structure described in the specification, and
`
`equivalents thereof:
`
`1.
`
`2.
`
`firmware capable of performing
`Hardware, software and/or
`cryptographic or other related mathematical functions, including data
`encryption and decryption. See id. at 12:10–16, 17:52–67, 15:63–67;
`see also id. at 2:30–32.
`
`A device that performs security operations and that includes one or
`more mechanisms to provide security for the content of those
`operations. See id. at 5:32–33.
`
`“target means for enabling a defined interaction with a host computing
`device”
`
`This phrase should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6 to
`
`include the following corresponding structure described in the specification, and
`
`equivalents thereof:
`
`1.
`
`A memory device adapted to enable non-volatile storage of data,
`including solid state memory devices, flash memory devices, ATA
`
`18
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`format flash drives, NAN flash memory devices, SCSI disks, and IDE
`disks. See id. at 13:27–49; see also id. at 4:64–5:4.
`
`A communications device adapted to enable communication between
`the host computing device and a remote device, including modems
`and LAN transceivers. See id. at 13:50–14:9; see also id. at 4:64–5:4.
`
`A biometric device, including fingerprint and retinal scanning devices.
`See id. at 14:10–15:23; see also id. at 4:64–5:4.
`
`A smart card reader device adapted to communicate with a smart card,
`including smart card readers compliant with ISO 7816 standards. See
`id. at 15:24–37; see also id. at 4:64–5:4.
`
`2.
`
`3.
`
`4.
`
`“means for enabling communication between the security means and
`the target means”
`
`This phrase should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6 to
`
`include the following corresponding structure described in the specification, and
`
`equivalents thereof: a computer bus. See id. at 6:40–45.
`
`“means for enabling communication with a host computing device”
`
`This phrase should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6 to
`
`include the following corresponding structure described in the specification, and
`
`equivalents
`
`thereof:
`
` a communications
`
`interface,
`
`including wireless
`
`communication interfaces, PCMCIA interfaces, smart card interfaces, serial
`
`interfaces, parallel interfaces, SCSI interfaces, and IDE interfaces. See id. at 4:50–
`
`52, 5:51–54, 15:42–62; see also id. at 5:5–21.
`
`19
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`“means for operably connecting the security means and/or the target
`means to the host computing device in response to an instruction from
`the host computing device”
`
`This phrase should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6 to
`
`include the following corresponding structure described in the specification, and
`
`equivalents thereof: a standard software device driver, including a peripheral
`
`device driver. See id. at 7:11–24, 8:50–61, 9:42–49, 9:50–51; see also id. at Fig. 7,
`
`10:13–20, 16:64–17:2.
`
`While the phrase “in response to an instruction,” is absent from the
`
`specification of the ʼ802 Patent, device drivers typically enable the host to instruct
`
`the operation of the device. See EX1002 (Zatkovich Declaration), at ¶¶ 28—30.
`
`Thus, the two devices are operatively connected in response to such instructions.
`
`See id. at ¶ 55. This is supported by the ʼ802 Patent specification, which describes
`
`“plug-and-play” functionality where the peripheral device driver is stored in the
`
`peripheral device memory. See EX1001 (ʼ802 Patent), at 9:13–25. The first time
`
`the host and peripheral device are connected, the host causes the peripheral device
`
`driver to be transferred to the host so that the host can execute the driver and
`
`thereby operatively connect with the peripheral device. Id.
`
`20
`
`

`

`IPR2017-00430 Petition
`U.S. Patent 6,088,802
`“means for mediating communication of data between the host
`computing device and the target means so that the communicated data
`must first pass through the security means”
`
`This phrase should be constru