`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner
`
`v.
`
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`______________
`
`
`Case IPR: IPR2017-00824
`U.S. Patent No. 6,088,802
`
`______________
`
`Date: January 31, 2017
`
`______________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.100
`
`

`

`Attorney Docket No. 37307-0012IP1
`
`I. 
`
`V. 
`
`TABLE OF CONTENTS
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`(37 C.F.R. § 42.22(A)) .................................................................................... 1 
`II.  GROUNDS FOR STANDING (37 C.F.R. § 42.104(A)) ................................ 1 
`III.  MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1)) ..................................... 2 
`A. 
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................... 2 
`B. 
`Identification of Related Matters (37 C.F.R. § 42.8(b)(2)) ................... 2 
`C. 
`Counsel and Service Information (37 C.F.R. §§ 42.8(b)(3) &
`(b)(4)) .................................................................................................... 3 
`Payment of fees (37 C.F.R. § 42.103) ................................................... 3 
`D. 
`IV.  REQUEST FOR REVIEW .............................................................................. 3 
`A. 
`Claims to be Reviewed .......................................................................... 3 
`B. 
`Each of the Cited References Is Available as Prior Art ........................ 4 
`C. 
`Identification Of Challenge ................................................................... 5 
`BACKGROUND ............................................................................................. 6 
`A.  Description of the ’802 Patent ............................................................... 6 
`B. 
`Prosecution History ............................................................................. 21 
`C. 
`Level of Ordinary Skill in the Art ....................................................... 23 
`D. 
`State of the Art .................................................................................... 23 
`VI.  CLAIM CONSTRUCTION .......................................................................... 24 
`VII.  THERE IS A REASONABLE LIKELIHOOD THAT CLAIMS 1-3,
`6-8, 11-15, 23-28, and 36-39 ARE UNPATENTABLE ............................... 25 
`A.  Ground I – Obviousness of Claims 1-3, 6-8, 11-15, 23-28, and
`36-39 Based on Jones (Ex. 1003) ........................................................ 25 
`Ground II – Obviousness of Claims 1, 11, 23, 36, and 39 Based
`on Jones (Ex. 1003) in View of Schwartz et al. (Ex. 1004)
`and/or Kimura (Ex. 1005) ................................................................... 62 
`Ground III – Obviousness of Claims 3, 8, 15, and 28 Based on
`Jones (Ex. 1003) in View of Common Interface Specification
`(Ex. 1008) ............................................................................................ 64 
`D.  Ground IV – Obviousness of Claims 14 and 27 Based on Jones
`(Ex. 1003) in View of Clay (Ex. 1007) ............................................... 67 
`VIII.  CONCLUSION .............................................................................................. 67 
`
`B. 
`
`C. 
`
`i
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`

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`Exhibit List for Inter Partes Review of U.S. Patent No. 6,088,802
`
`
`Attorney Docket No. 37307-0012IP1
`
`
`Exhibit Description
`
`U.S. Patent No. 6,088,802
`
`Prosecution History of U.S. Patent No. 6,088,802
`
`WO 95/16238, to Jones et al. (“Jones”)
`
`U.S. Patent No. 5,675,645, to Schwartz et al.
`
`U.S. Patent No. 5,237,609, to Kimura
`
`Patent Owner’s Claims Chart, comparing the ’802 patent to a
`Petitioner product that Patent Owner accuses of infringement
`
`U.S. Patent No. 5,465,338, to Clay
`
`Common Interface Specification for Conditional Access and
`Other Digital Video Broadcasting Decoder Applications, Digital
`Video Broadcasting, DVB Document A017, May 1996
`(hereinafter “Common Interface Specification”)
`
`Exhibit No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Declaration by Roy A. Griffin III, P.E. Regarding U.S. Patent No.
`6,088,802 Under 37 C.F.R. § 42.63(a) (hereinafter “Griffin
`Dec.”), with attachment
`
`1009
`
`
`
`ii
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`

`

`Attorney Docket No. 37307-0012IP1
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`(37 C.F.R. § 42.22(A))
`Kingston Technology Company, Inc. (“Petitioner”) hereby petitions for
`
`institution of inter partes review of U.S. Patent No. 6,088,802 (the “’802 patent”)
`
`(Ex. 1001). The ’802 patent issued on July 11, 2000. SPEX Technologies, Inc.
`
`(“Patent Owner”) alleges that it is the assignee of the ’802 patent. Petitioner
`
`respectfully requests cancellation of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of
`
`the ’802 patent based on the grounds of unpatentability herein. The prior art and
`
`other evidence offered with this Petition establishes that all elements in the
`
`challenged claims of the ’802 patent were well known as of the earliest alleged
`
`priority date, and that the claimed methods and systems recited in the ’802 patent
`
`were obvious.
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`Petitioner certifies that the ’802 patent is available for review under
`
`35 U.S.C. § 311(c) and that Petitioner is not estopped from requesting an inter
`
`partes review challenging claims 1-3, 6-8, 11-15, 23-28, and 36-39 on the grounds
`
`identified herein.
`
`1
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`

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`Attorney Docket No. 37307-0012IP1
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`III. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`The real party in interest is Petitioner Kingston Technology Company, Inc.
`
`Parent company Kingston Technology Corporation and the affiliate company
`
`Kingston Digital Inc. do not have control over this Petition, and, thus, are not
`
`believed to be real parties in interest. However, Petitioner identifies these entities
`
`pursuant to 37 C.F.R. § 42.8(b)(1) as they are related to Petitioner and are co-
`
`Defendants in the pending suit filed by SPEX Technologies, Inc. (see below).
`
`B.
`Identification of Related Matters (37 C.F.R. § 42.8(b)(2))
`The following matter would be affected by a decision in this proceeding:
`
`SPEX Technologies, Inc. v. Kingston Tech. Corp., et al., Case No. 8:16-cv-01790
`
`(C.D. Cal.), filed September 27, 2016. Patent Owner has asserted claim 11 of the
`
`’802 patent against Petitioner in this matter.
`
`Petitioner also is filing a petition for inter partes review of Patent Owner’s
`
`U.S. Patent No. 6,003,135, which was filed the same day and relates to the same
`
`subject matter as the ’802 patent (though the two patents are not related by priority
`
`claim), and which patent also is being asserted against Petitioner in the litigation
`
`identified in the prior paragraph.
`
`2
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`

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`Attorney Docket No. 37307-0012IP1
`
`
`C. Counsel and Service Information (37 C.F.R. §§ 42.8(b)(3) &
`(b)(4))
`Petitioner designates the following Lead and Back-up Counsel.
`
`Concurrently filed with this Petition is a Power of Attorney per 37 C.F.R.
`
`§ 42.10(b). Service via hand-delivery may be made at the postal mailing address
`
`below. Petitioner consents to electronic service by e-mail to the e-mail addresses
`
`listed below.
`
`Lead Counsel
`David Hoffman (Reg. No. 54,174)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (512) 472-8154
`Fax: (202) 783-2331
`IPR37307-0012IP1@fr.com
`D.
`Payment of fees (37 C.F.R. § 42.103)
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Back-Up Counsel
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S. J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: (714) 641-4022
`Fax: (714) 641-2082
`IPR@sjclawpc.com
`
`
`
`Account No. 06-1050 for the petition fee and for any other required fees.
`
`IV. REQUEST FOR REVIEW
`A. Claims to be Reviewed
`Petitioner requests review of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of the
`
`’802 patent.
`
`3
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`

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`Attorney Docket No. 37307-0012IP1
`
`
`B.
`Each of the Cited References Is Available as Prior Art
`Each of the references cited in this petition qualifies as prior art. All of the
`
`references have an effective date prior to the earliest potential effective filing date
`
`of the ’802 patent of June 4, 1997.
`
` WO 95/16238, to Jones et al. (“Jones”) (Ex. 1003), which issued as
`
`U.S. Patent No. 5,623,637, was published June 15, 1995.
`
`Accordingly, Jones is prior art under 35 U.S.C. §102(b).
`
`U.S. Patent No. 5,675,645, to Schwartz et al. (Ex. 1004), was filed
`
`April 18, 1995, and thus is prior art under 35 U.S.C. §102(e).
`
` 
`
`
`
`
`
`
`
`U.S. Patent No. 5,237,609, to Kimura (Ex. 1005), issued August 17,
`
`1993, and thus is prior art under 35 U.S.C. §102(b).
`
`
`
`
`
`U.S. Patent No. 5,465,338, to Clay (Ex. 1007), issued November 7,
`
`1995, and thus is prior art under 35 U.S.C. §102(b).
`
`
`
`
`
`Common Interface Specification for Conditional Access and Other
`
`Digital Video Broadcasting Decoder Applications, Digital Video
`
`Broadcasting, DVB Document, May 1996 (hereinafter “Common
`
`4
`
`

`

`Interface Specification”) (Ex. 1008), published May 31, 1996, and
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`Attorney Docket No. 37307-0012IP1
`
`
`thus is prior art under 35 U.S.C. §102(b).
`
`
`C.
`
`Identification Of Challenge
`
`The ’802 patent is unpatentable based on 35 U.S.C. §103. In particular, the
`
`claims are invalid on the following grounds:
`
`1.
`
`Jones (Ex. 1003) renders claims 1-3, 6-8, 11-15, 23-28, and 36-39 of
`
`the ’802 patent obvious under §103.
`
`2.
`
`Jones (Ex. 1003) in view of Schwartz et al. (Ex. 1004) and/or Kimura
`
`(Ex. 1005) renders claims 1, 11, 23, 36, and 39 of the ’802 patent obvious under
`
`§103.
`
`3.
`
`Jones (Ex. 1003) in view of Common Interface Specification (Ex.
`
`1008) renders claims 3, 8, 15, and 28 of the’802 patent obvious under §103.
`
`4.
`
`Jones (Ex. 1007) in view of Clay (Ex. 1007) renders claims 14 and 27
`
`obvious under §103.
`
`Petitioner evaluates the scope and content of the prior art and, any
`
`differences between the prior art and the claims, and the level of skill of a person
`
`of ordinary skill in the art in accordance with Graham v. John Deere Co., 383
`
`U.S. 1 (1966) and KSR Int’l C. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“a court
`
`must ask whether the improvement is more than the predictable use of prior art
`
`elements according to their established functions”) (emphasis added).
`
`5
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`Attorney Docket No. 37307-0012IP1
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`A detailed explanation of why claims 1-3, 6-8, 11-15, 23-28, and 36-39 are
`
`invalid is provided below, including ground stated in the supporting evidentiary
`
`Griffin Dec. (Ex. 1009).
`
`V. BACKGROUND
`A. Description of the ’802 Patent
`The ’802 patent is directed to a peripheral, often portable, device that can
`
`communicate with a host computing device to enable one or more security
`
`operations to be performed by the peripheral device on data stored within the host
`
`computing device, data provided from the host computing device to the peripheral
`
`device, or data retrieved by the host computing device from the peripheral device.
`
`Ex. 1001 at 1:17-27. See generally Griffin Dec. (Ex. 1009), ¶¶ 22-34. The ’802
`
`patent is directed to securing a computational environment wherein a host
`
`computer and a portable peripheral device are connected, such as is the case when
`
`a PCMCIA card is inserted into a PC. Ex. 1001 at 1:29-38. The ’802 patent notes
`
`that such a computational environment is more susceptible to security breaches.
`
`Therefore, prior art mechanisms have been developed to enable increased levels of
`
`environment security to be obtained. Id. at 1:39-2:57.
`
`6
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`Attorney Docket No. 37307-0012IP1
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`Two particular prior art security mechanisms are discussed with reference to
`
`prior art Figures 1 and 2. The lack of data security associated with the Figure 1
`
`prior art can be mitigated by the Figure 2 prior art solution. Ex. 1001 at 2:48-57.
`
`However, the ’802 patent notes remaining deficiencies in the Figure 2 approach.
`
`Id. at 2:58-3:14. Figure 2 of the ‘802 patent is shown below:
`
`The ’802 patent describes the operation of the Figure 2 prior art system as
`
`follows (Ex. 1001 at 2:33-47):
`
`In the system 200, if it is desired to provide secured data
`from the host computing device 201 to the portable
`device 202, the host computing device 201 first causes
`data to be transferred to the security device 203, where
`appropriate cryptographic operations are performed on
`the data. The secured data is then transferred back to the
`host computing device 201, which, in turn, transfers the
`secured data to the portable device 202. Similarly, the
`host computing device 201 can receive secured data from
`
`7
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`Attorney Docket No. 37307-0012IP1
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`the portable device 202 by, upon receipt of secured data,
`transferring the secured data to the security device 203,
`which performs appropriate cryptographic operations on
`the data to convert the data into a form that enables the
`data to be accessed and/or modified by a person who is
`authorized to do so, then transfers the unsecured data
`back to the host computing device 201.
`
`The ’802 patent states that Figure 2’s security mechanism has certain
`
`deficiencies (Ex. 1001 at 2:58-3:14):
`
`However, the system 200 may still not always ensure
`adequately secured data. In particular, unsecured data
`may be provided by the host computing device 201 to the
`portable device 202 if the host computing device 201--
`whether through inadvertent error or deliberate attack by
`a user of the host computing device 201, or through
`malfunction of the host computing device 201--fails to
`first transfer data to the security device 203 for
`appropriate cryptographic treatment before providing the
`data to the portable device 202.
`
`Additionally, the system 200 requires the use of two
`separate peripheral devices (portable device 202 and
`security device 203) to enable the host computing device
`201 to exchange secured data with the portable device
`202. For several reasons, this may be inconvenient.
`First, both devices 202 and 203 may not be available at
`
`8
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`Attorney Docket No. 37307-0012IP1
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`the time that it is desired to perform a secure data
`exchange (e.g., one may have been forgotten or
`misplaced). Second, even if both devices 202 and 203
`are available, it may not be possible to connect both
`devices 202 and 203 at the same time to the host
`computing device 201, making use of the devices 202
`and 203 cumbersome and increasing the likelihood that
`unsecured data is provided by the host computing device
`201 to the portable device 202.
`
`The ’802 patent is directed to a peripheral device that addresses the
`
`deficiencies listed in the prior art of Figure 2. Specifically, the ’802 patent is
`
`directed to a peripheral device that can communicate with a host computing device
`
`to enable one or more security operations to be performed by the peripheral device
`
`on data stored within the host computing device, data provided from the host
`
`computing device to the peripheral device, or data retrieved by the host computing
`
`device from the peripheral device. Ex. 1001 at 1:17-27. The security deficiencies
`
`listed in the ’802 patent are solved by placing the security between the host and the
`
`target, as shown generally in Figure 9A and as described at Ex. 1001 at 16:57-
`
`17:14:
`
`9
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`

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`Attorney Docket No. 37307-0012IP1
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`
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`Security is enhanced in this topology since communications between the host and
`
`target must necessarily pass through security functionality first en-route to the
`
`target functionality.
`
`The ’802 patent provides a view of such a device’s functionality in Figure 4:
`
`
`
`
`
`As shown and described by the ’802 patent, this embodiment takes the form of a
`
`PCMCIA card that contains both security and target functionality. Ex. 1001 at
`
`5:50-58. The ’802 patent provides in Figure 8 a block diagram view of an
`
`exemplary peripheral device of Figure 4:
`
`10
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`

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`Attorney Docket No. 37307-0012IP1
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`
`
`
`The peripheral device 800 has a cryptographic processing device 801 and
`
`connects to a host computing device via PCMCIA connector 806 and to a target
`
`Peripheral Mechanism via connector 807. Id. at 15:42-47. The electrical block
`
`diagram comports well with the arrangement shown in Figure 4, where the security
`
`functionality is a cryptographic processing device and the target functionality is
`
`defined by the Peripheral Mechanism 807.
`
`The ’802 patent describes embodiments where the peripheral device is in
`
`communication with a host computing device via a PCMCIA standard interface.
`
`See, e.g., Ex. 1001 at 5:7-8, 5:57-58; 6:65-67; 8:1-3; 14:59-62. Through this
`
`interface, the host computing device reads the “attribute memory” to determine the
`
`11
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`Attorney Docket No. 37307-0012IP1
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`identity of the card, id. at 8:7, and through this interface the host communicates
`
`instructions to the security device functionality to implement security functionality
`
`and/or to the target functionality to implement target functionality
`
`While the ’802 patent discloses in FIG. 9B the target functionality being
`
`memory functionality (compact flash memory), target functionality is not limited
`
`to a memory module. Exemplary target functionality includes communications
`
`functionality, biometric functionality, and smart card reader functionality. Ex.
`
`1001 at 4:62-5:4. In relation to smart card reader functionality, the ’802 patent
`
`discloses that the smart card reader is used to read an ISO 7816 standard smart
`
`card. Id. at 15:24-41.
`
`The claims of the ’802 patent that are the subject of this inter parties review
`
`petition are reproduced below. Bracketed letters are added, for clarity of the
`
`discussion that follows, as many claim elements appear verbatim in other claims.
`
`1. A peripheral device, comprising:
`[a] security means for enabling one or more security operations to be
`performed on data;
`[b] target means for enabling a defined interaction with a host
`computing device;
`[c] means for enabling communication between the security means
`and the target means;
`[d] means for enabling communication with a host computing device;
`[e] means for operably connecting the security means and/or the target
`
`12
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`

`

`Attorney Docket No. 37307-0012IP1
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`means to the host computing device in response to an instruction from
`the host computing device; and
`[f] 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.
`
`2. A peripheral device as in claim 1, wherein the target means
`comprises means for non-volatilely storing data.
`
`3. A peripheral device as in claim 1, wherein the target means
`comprises means for enabling communication between the host
`computing device and a remote device.
`
`6. A peripheral device, comprising:
`[a] security means for enabling one or more security operations to be
`performed on data;
`[b] target means for enabling a defined interaction with a host
`computing device;
`[c] means for enabling communication between the security means
`and the target means,
`[d] means for enabling communication with a host computing device;
`[e] 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; and
`[f] means for providing to a host computing device, in response to a
`request from the host computing device for information regarding the
`type of the peripheral device, information regarding the function of
`
`13
`
`

`

`Attorney Docket No. 37307-0012IP1
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`the target means.
`
`7. A peripheral device as in claim 6, wherein the target means
`comprises means for non-volatilely storing data.
`
`8. A peripheral device as in claim 6, wherein the target means
`comprises means for enabling communication between the host
`computing device and a remote device.
`
`11. A peripheral device, comprising:
`[a] security means for enabling one or more security operations to be
`performed on data;
`[b] target means for enabling a defined interaction with a host
`computing device;
`[c] means for enabling communication between the security means
`and the target means;
`[d] means for enabling communication with a host computing device;
`and
`[e] 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.
`
`12. A peripheral device as in claim 11, wherein the target means
`comprises means for non-volatilely storing data.
`
`13. A peripheral device as in claim 12, wherein the means for non-
`volatilely storing data further comprises a solid-state disk storage
`
`14
`
`

`

`Attorney Docket No. 37307-0012IP1
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`
`device.
`
`14. A peripheral device as in claim 13, wherein the solid-state disk
`storage device comprises an ATA format flash disk drive.
`
`15. A peripheral device as in claim 11, wherein the target means
`comprises means for enabling communication between the host
`computing device and a remote device.
`
`23. A peripheral device, comprising:
`[a] security means for enabling one or more security operations to be
`performed on data;
`[b] target means for enabling a defined interaction with a host
`computing device;
`[c] means for enabling communication between the security means
`and the target means;
`[d] means for enabling communication with a host computing device;
`[e] 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; and
`[f] means for providing to a host computing device, in response to a
`request from the host computing device for information regarding the
`type of the peripheral device, information regarding the function of
`the target means.
`
`24. A peripheral device, comprising:
`[a] security means for enabling one or more security operations to be
`
`15
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`Attorney Docket No. 37307-0012IP1
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`performed on data;
`[b] target means for enabling a defined interaction with a host
`computing device;
`[c] means for enabling communication between the security means
`and the target means;
`[d] means for enabling communication with a host computing device;
`and
`[e] means for providing to a host computing device, in response to a
`request from the host computing device for information regarding the
`type of the peripheral device, information regarding the function of
`the target.
`
`25. A peripheral device as in claim 24, wherein the target means
`comprises means for non-volatilely storing data.
`
`26. A peripheral device as in claim 25, wherein the means for non-
`volatilely storing data further comprises a solid-state disk storage
`device.
`
`27. A peripheral device as in claim 26, wherein the solid-state disk
`storage device comprises an ATA format flash disk drive.
`
`28. A peripheral device as in claim 24, wherein the target means
`comprises means for enabling communication between the host
`computing device and a remote device.
`
`36. A data security system, comprising:
`
`16
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`Attorney Docket No. 37307-0012IP1
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`[a] a host computing device including one or more device interfaces
`adapted to enable communication with another device;
`[b] a peripheral device, comprising:
`[c] security means for enabling one or more security operations to be
`performed on data;
`[d] target means for enabling a defined interaction with a host
`computing device; and
`[e] means for enabling communication between the security means
`and the target means;
`[f] means for enabling communication with a host computing device;
`and
`[g] 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.
`
`37. A data security system, comprising:
`[a] a host computing device including one or more device interfaces
`adapted to enable communication with another device;
`[b] a peripheral device, comprising:
`[c] security means for enabling one or more security operations to be
`performed on data;
`[d] target means for enabling a defined interaction with a host
`computing device; and
`[e] means for enabling communication between the security means
`and the target means;
`[f] means for enabling communication with a host computing device;
`and
`
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`Attorney Docket No. 37307-0012IP1
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`[g] means for providing to a host computing device, in response to a
`request from the host computing device for information regarding the
`type of the peripheral device, information regarding the function of
`the target means.
`
`38. For use in a peripheral device adapted for communication with a
`host computing device, performance of one or more security
`operations on data, and interaction with a host computing device in a
`defined way, a method comprising the steps of:
`[a] receiving a request from a host computing device for information
`regarding the type of the peripheral device; and
`[b] providing to the host computing device, in response to the request,
`information regarding the type of the defined interaction.
`
`39. For use in a peripheral device adapted for communication with a
`host computing device, performance of one or more security
`operations on data, and interaction with a host computing device in a
`defined way, a method comprising the steps of:
`[a] communicating with the host computing device to exchange data
`between the host computing device and the peripheral device;
`[b] performing one or more security operations and the defined
`interaction on the exchanged data; and
`[c] mediating communication of the exchanged data between the host
`computing device and the peripheral device so that the exchanged data
`must first sass [sic] through means for performing the one or more
`security operations.
`
`
`18
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`Attorney Docket No. 37307-0012IP1
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`The following table groups the claim elements, for clarity:
`
`CLAIM LANGUAGE
`
`ELEMENTS
`
`“[A] peripheral device, comprising”
`
`1, 6, 11, 23, 24, 36b, 37b
`
`“security means for enabling one or more security
`
`1[a], 6[a], 11[a], 23[a],
`
`operations to be performed on data”
`
`24[a], 36[c], 37[c]
`
`“target means for enabling a defined interaction with
`
`1[b], 6[b], 11[b], 23[b],
`
`a host computing device”
`
`24[b], 36[d], 37[d]
`
`“means for enabling communication between the
`
`1[c], 6[c], 11[c], 23[c],
`
`security means and the target means”
`
`24[c], 36[e], 37[e]
`
`“means for enabling communication with a host
`
`1[d], 6[d], 11[d], 23[d],
`
`computing device”
`
`24[d], 36[f], 37[f]
`
`“means for operably connecting the security means
`
`1[e], 6[e]
`
`and/or the target means to the host computing device
`
`in response to an instruction from the host computing
`
`device”
`
`“means for mediating communication of data
`
`1[f], 11[e], 23[e], 36[g]
`
`between the host computing device and the target
`
`means so that the communicated data must first pass
`
`through the security means”
`
`19
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`Attorney Docket No. 37307-0012IP1
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`“the target means comprises means for non-volatilely
`
`2, 7, 12, 25
`
`storing data”
`
`“the target means comprises means for enabling
`
`3, 8, 15, 28
`
`communication between the host computing device
`
`
`
`and a remote device”
`
`“means for providing to a host computing device, in
`
`6[f], 23[f], 24[e], 37[g]
`
`response to a request from the host computing device
`
`for information regarding the type of the peripheral
`
`device, information regarding the function of the
`
`target means”
`
`“the means for non-volatilely storing data further
`
`13, 26
`
`comprises a solid-state disk storage device”
`
`“the solid-state disk storage device comprises an
`
`14, 27
`
`ATA format flash disk drive”
`
`“A data security system, comprising”
`
`36, 37
`
`“a host computing device including one or more
`
`36[a], 37[a]
`
`device interfaces adapted to enable communication
`
`with another device”
`
`“For use in a peripheral device adapted for
`
`38, 39
`
`20
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`Attorney Docket No. 37307-0012IP1
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`
`communication with a host computing device,
`
`performance of one or more security operations on
`
`data, and interaction with a host computing device in
`
`a defined way, a method comprising the steps of”
`
`
`B.
`Prosecution History
`The application that led to the ’802 patent was filed June 4, 1997, as
`
`Application No. 08/869,305, entitled “Modular Security Device,” with 32 claims.
`
`Ex. 1002.
`
`In a December 11, 1998, Office Action, application claims 6, 7, and 13 were
`
`objected to, and all other claims were either rejected or subjected to a restriction
`
`requirement. Objected-to application claims 6, 7, and 13 read as follows:
`
`6. A peripheral device as in Claim 1, further comprising
`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.
`
`7. A peripheral device as in Claim 1, further comprising
`means for providing to a host computing device, in
`response to a request from the host computing device for
`information regarding the type of the peripheral device,
`information regarding the function of the means for
`
`21
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`Attorney Docket No. 37307-0012IP1
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`enabling a defined interaction with a host computing
`device.
`
`13. A peripheral device as in Claim 8, further
`comprising means for providing to a host computing
`device, in response to a request from the host computing
`device for information regarding the type of the
`peripheral device, information regarding the function of
`the means for enabling a defined interaction with a host
`computing device.
`
`In response, in its March 11, 1999, Response to Office Action (and March
`
`12, 1999, Supplemental Response to Office Action), applicant amended each
`
`independent claim that is the subject of this inter partes review to incorporate a
`
`variation of the language above from application claims 6, 7, and/or 13.
`
`Specifically,
`
`
`
`issued claim elements 1[f], 11[e], 23[e], and 36[g] (see above
`and Griffin Dec. (Ex. 1009), ¶ 35 for nomenclature) were
`amended to include a variation of the objected-to language from
`application claim 6, to recite in issued form, “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”;
`
`
`
`issued claim elements 6[f], 23[f], 24[e], 37[g], and 38[a] were
`amended to include a variation of the objected-to language from
`
`22
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`Attorney Docket No. 37307-0012IP1
`
`
`application claims 7 and 13, to recite in issued form, “means for
`providing to a host computing device, in response to a request
`from the host computing device for information regarding the
`type of the peripheral device, information regarding the
`function of the target means”; and
`
`
`
`issued claim element 39[c] was amended to include a variation
`of the objected-to language from application claim 6, to recite
`in issued form a method that includes “mediating
`communication of the exchanged data between the host
`computing device and the peripheral device so that the
`exchanged data must first sass [sic] through means for
`performing the one or more security operations.”
`
`The claims then were allowed. See Ex. 1002 at June 7, 1999, Notice of
`
`Allowability.
`
`C. Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art as of the time of
`
`the ’802 patent would have had a bachelor’s degree in Electrical Engineering and
`
`at least three years of experience working in the fields of digital electronic
`
`interfacing, computing, and electronic data security. Griffin Dec. (Ex. 1009), ¶ 20.
`
`D.
`State of the Art
`At the time of the ’802 patent’s priority date, peripheral security devices
`
`incorporating separate security and target functions were known. One such prior
`
`art security device (known as the DVB common interface) is embodied in a
`
`23
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`Attorney Docket No. 37307-0012IP1
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`
`PCMCIA card that was designed to be plugged into a generic host satellite
`
`television receiver. See Common Interface Specification, Ex. 1008. The PCMCIA
`
`card incorporated on-board circuitry that was used as a common hardware base for
`
`secure descrambling of television broadcast signals. The PCMCIA card also
`
`incorporated a security function to provide access control functionality to the
`
`PCMCIA card so that television subscription authorizations could be ma