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`IPR2017-00824
`U.S. Patent No. 6,088,802
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner
`
`
`
`v.
`
`
`
`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
`
`
`
`__________________________________________________________________
`
`SPEX TECHNOLOGIES, INC.’S
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2017-00824
`______________________________________________________________________________
`
`
`
`
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`IPR2017-00824
`U.S. Patent No. 6,088,802
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION ........................................................................................... 1
`
`PETITIONER IDENTIFIED THREE KINGSTON PARTIES AS
`REAL PARTIES-IN-INTEREST .................................................................... 4
`
`
`
`I.
`
`II.
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`III. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER HAS FAILED TO CONSTRUE THE MEANS-
`PLUS-FUNCTION CLAIM TERMS AND HAS TAKEN
`INCONSISTENT CLAIM CONSTRUCTION POSITIONS ......................... 5
`
`IV. PETITIONER'S LITIGATION POSITION THAT MANY TERMS
`OF THE CHALLENGED CLAIMS ARE INDEFINITE
`MANDATES DENIAL OF THE PETITION. ................................................ 7
`
`V.
`
`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED. ................................................................................10
`
`A.
`
`B.
`
`Requirements for Showing Anticipation Under 35 U.S.C.
`§ 102 and Obviousness Under 35 U.S.C. § 103. .................................10
`
`Ground I: Claims 1-3, 6-8, 11-15, 23-28, and 36-39 Are Not
`Obvious Over Jones.............................................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner Failed to Show that the Claimed “Security
`Means” Is Disclosed in Jones ...................................................14
`
`Petitioner Failed to Show that the Claimed “Means for
`Operably Connecting” Is Disclosed in Jones ............................16
`
`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 .....................................17
`
`Petitioner Failed to Show that Jones Discloses
`“Receiving a Request from a Host Computing Device
`
`i
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`IPR2017-00824
`U.S. Patent No. 6,088,802
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`for Information Regarding the Type of the Peripheral
`Device” as Recited in Claims 38 ..............................................24
`
`C.
`
`Ground II: Claims 1, 11, 23, 36, and 39 Are Not Obvious over
`Jones in View of Schwartz and/or Kimura .........................................25
`
`D. Ground III: Claims 3, 8, 15, and 28 Are Not Obvious Over
`Jones in View of Common Interface Specification ............................28
`
`E.
`
`Ground IV: Claims 14 and 17 Are Not Obvious Over Jones in
`View of Clay .......................................................................................28
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`VI. CONCLUSION ..............................................................................................29
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`ii
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`Cases
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`IPR2017-00824
`U.S. Patent No. 6,088,802
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`TABLE OF AUTHORITIES
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` Page(s)
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`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (PTAB June 26, 2015) ............................................................. 11
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00456 (PTAB June 15, 2015) ............................................................... 7
`
`Apple Inc. v. Immersion Corp.,
`IPR2016-01372 (Jan. 11, 2017) ............................................................................ 9
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir 2013) ........................................................................... 12
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288, 1299 (Fed. Cir. 2009) .............................................. 10, 15, 23, 26
`
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) .......................................................................... 14
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 11
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 12
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .................................................................... 12, 29
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 11, 27, 28
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
`Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ................................................ 12
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 10
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 11
`
`iii
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`IPR2017-00824
`U.S. Patent No. 6,088,802
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`Space Exploration Techs. Corp. v. Blue Origin LLC,
`IPR2014-01378 (Mar. 3, 2015) ............................................................................ 8
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 11
`
`Transclean Corp. v. Bridgewood Servs., Inc.,
`290 F.3d 1364 (Fed. Cir. 2002) .......................................................................... 10
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 12
`
`Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
`814 F.2d 628 (Fed. Cir. 1987) ............................................................................ 10
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................................ 6
`
`Statutes
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`35 U.S.C. § 102 ........................................................................................................ 10
`
`35 U.S.C. § 103 ........................................................................................................ 10
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`35 U.S.C. § 112 ...................................................................................................... 8, 9
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`35 U.S.C. § 314(a) ..................................................................................................... 4
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`Other Authorities
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`37 C.F.R. § 42.8(b)(1) ................................................................................................ 4
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`37 C.F.R. §42.104(b) ............................................................................... 5, 13, 15, 19
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`37 C.F.R. § 42.104(b)(3) ...................................................................................... 7, 14
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`37 C.F.R. § 42.104(b)(4) ............................................................................................ 1
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`iv
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`Exhibit No.
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`2001
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`IPR2017-00824
`U.S. Patent No. 6,088,802
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`LIST OF EXHIBITS
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`Exhibit Description
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`Defendants’ Preliminary Claim Constructions in SPEX
`Technologies, Inc. v. Kingston Technology Company Inc., et al.,
`No. 8:16-cv-01790 (C.D. Cal.)
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`v
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`I.
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`INTRODUCTION
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`On January 31, 2017, Kingston Technology Company, Inc. (“Petitioner”)
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`submitted a Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S.
`
`Patent No. 6,088,802 (Ex. 1001, “the ’802 Patent”), challenging Claims 1-3, 6-8,
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`11-15, 23-28, and 36-39 (“the Challenged Claims”).
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`The Petition should be denied because it is deficient in several respects.
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`Ground I should be denied because Petitioner has failed to meet its burden under
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`37 C.F.R. § 42.104(b)(4) to show where the claimed “security means” is disclosed
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`in the cited reference, W/O 95/16238 to Jones (“Jones”). Petitioner argues that the
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`encryption-decryption unit 177 and gate 178 of Jones perform the function of the
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`security means, but Petitioner does not compare the structure of the encryption-
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`decryption unit 177 and gate 178 of Jones to the corresponding structure of the
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`security means in the ’802 Patent to show that the security means is disclosed in
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`Jones. For this reason alone, Ground I should be denied as to Claims 1-3, 6-8, 11-
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`15, 23-28, 36-37, and 39.
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`Similarly, Petitioner failed to show where the claimed “means for
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`mediating” is found in Jones. Petitioner contends that the corresponding structure
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`for the “means for mediating” is the “interface control device” in the ’802 Patent,
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`and it argues that Jones’s card lock logic circuit 220 and the data bus buffer 173
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`
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`1
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`“correspond to the means for mediating communication.” But, Petitioner does not
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`
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`show, or even attempt to argue, that the structure of the “interface control device”
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`is disclosed in Jones as the card lock logic circuit 220 and the data bus buffer 173.
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`This is another basis to deny Ground 1 as to Claims 1-3, 6-8, 11-15, 23-28, 36-37,
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`and 39.
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`Ground I must be denied as to Claim 38 because Petitioner fails to show that
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`the step of “receiving a request from a host computing device for information
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`regarding the type of the peripheral device” because the passages quoted by
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`Petitioner do not teach “receiving a request from a host computing device.”
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`Petitioner also does not show that information provided to the host computer
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`“regarding the type of the defined interaction” was provided in response to this
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`unidentified request.
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`Ground II should be denied because U.S. Patent No. 5,237,609 to Kimura
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`(“Kimura”) does not remedy the deficiencies of Jones to the extent that Jones fails
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`to disclose “the communicated data must first pass through the security means.”
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`Petitioner fails to demonstrate that a security operation is performed on
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`“communicated data,” or that “the communicated data must first pass through the
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`security means.”
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`2
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`Moreover, Ground II is also deficient because Petitioner does not identify
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`
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`the “security means” in Kimura and does not compare the structure of the security
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`means in Kimura to that of the ’802 Patent to show that the security means of the
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`’802 Patent is disclosed in Kimura. Similarly, though Petitioner seems to argue
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`that a “security chip” in U.S. Patent No. 5,675,645 to Schwartz (“Schwartz”) is the
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`claimed “security means,” Petitioner fails to show that a security chip has the same
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`structure as the security means in the ’802 Patent.
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`Finally, Petitioner’s obviousness analysis falls short because it fails to
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`identify why a skilled artisan would have been motivated to combine Kimura or
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`Schwartz with Jones to add the missing features to achieve the claimed invention,
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`as required by the claims. Petitioner failed to articulate any reasoning with rational
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`underpinning for combining the references.
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`Grounds III and IV are also deficient for lack of a sufficient obviousness
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`analysis. Ground III applies a hindsight analysis by assuming, without factual
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`support, that a POSITA would be motivated to arrive at the precise functionality of
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`the claims. Ground IV concludes that the use of an ATA format flash disk drive
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`was merely a design choice because the ATA interface standard was known in the
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`art, but Petitioner does not show why a POSITA would have been motivated to
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`make that design choice for this specific application.
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`3
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`Due to at least these deficiencies, the Petition does not establish “a
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`
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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 present additional arguments, the deficiencies of the
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`Petition noted herein are sufficient for the Board to find that Petitioner has not met
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`its burden to demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
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`II.
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`PETITIONER IDENTIFIED THREE KINGSTON PARTIES AS
`REAL PARTIES-IN-INTEREST
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`Petitioner is required to identify all of the real parties-in-interest under 37
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`C.F.R. § 42.8(b)(1). In Petitioner’s Updated Mandatory Notice, “Petitioner
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`identifies Petitioner Kingston Technology Company, Inc., Kingston Digital Inc.
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`and Kingston Technology Corporation under 37 C.F.R. §42.8(b)(1).” Paper No. 6
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`at 2. Patent Owner views this disclosure as an unequivocal admission that all three
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`of the named Kingston entities are real parties-in-interest. To the extent that
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`Petitioner disagrees, it has not complied with 37 C.F.R. § 42.8(b)(1) and the
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`Petition should be denied on this basis.
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`4
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`III. THE PETITION SHOULD NOT BE INSTITUTED BECAUSE
`PETITIONER HAS FAILED TO CONSTRUE THE MEANS-
`PLUS-FUNCTION CLAIM TERMS AND HAS TAKEN
`INCONSISTENT CLAIM CONSTRUCTION POSITIONS1
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`
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`Petitioner bears the burden of specifying how the Challenged Claims are to
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`be construed and, in the case of means-plus-function claim limitations, identifying
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`the claimed function and the specific portions of the specification that describe the
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`structure corresponding to the claimed function. 37 C.F.R. § 42.104(b)(3).
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`The Challenged Claims include several means-plus-function claim terms,
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`including “security means . . . ,” “target means . . . ,” means for enabling
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`communication between the security means and the target means,” “means for
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`enabling communication with a host computing device,” “means for operably
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`connecting . . . ,” and “means for mediating communication . . .” in at least Claim
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`1; “means for providing to a host computing device . . .” in at least Claim 6; and
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`“means for performing the one or more security options” in Claim 39. These
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`1 Patent Owner’s silence regarding the appropriate construction of any term should
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`not be taken as an agreement with Petitioner’s apparent construction, and Patent
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`Owner reserves the right to challenge any of Petitioner’s apparent constructions at
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`a later juncture in this proceeding and elsewhere. Patent Owner does not expressly
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`take a position at this stage in this proceeding as such a position is irrelevant with
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`regard to Petitioner’s failure to meet its burden to construe the claims.
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`5
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`phrases are presumed to be means-plus-function claim terms unless the
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`
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`presumption is rebutted. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
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`(Fed. Cir. 2015). In order to properly analyze means-plus-function phrases, the
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`Petitioner must identify the claimed function(s) and show the corresponding
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`structure(s) clearly linked to the claimed function(s). However, the Claim
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`Construction section of the Petition does not advance a construction for any claim
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`term, including the above phrases. The Claim Construction section also does not
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`rebut the presumption that the above phrases are subject to means-plus-function
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`claim terms.
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`While Petitioner does address some of the means-plus-function analysis
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`elsewhere in the Petition, in several cases Petitioner avoids taking basic, necessary
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`positions, such as whether the claim terms are governed by section 112(6). For
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`instance, Petitioner admits that “security means” and “target means” are “means-
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`plus-function language,” Pet. at 27, 29, but refuses to state that other “means”
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`terms are governed by section 112(6) despite Petitioner’s burden to construe the
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`claims. See Pet. at 30-35 (“means for enabling communication between the
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`security means and the target means,” “means for enabling communication with a
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`host computing device,” “means for operably connecting . . . ,” and “means for
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`mediating communication . . . ”), Pet. at 42-44 (“means for enabling
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`6
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`communication between the security means and the target means,” “means for
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`
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`enabling communication with a host computing device,” “means for operably
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`connecting . . . ,” and “means for providing to a host computing device . . . ”), and
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`Pet. at 60-62 (“means for performing the one or more security operations”).
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`Petitioner’s failure to clearly state its claim constructions, and particularly,
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`its failure to take a position regarding whether the above-identified claim terms are
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`subject to section 112(6), is fatal to its Petition because the Petition does not meet
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`Petitioner’s burden under 37 C.F.R. § 42.104(b)(3). See Apple, Inc. v.
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`Contentguard Holdings, Inc., IPR2015-00456, Decision Denying Institution of
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`Inter Partes Review, Paper 9 at 8-10 (PTAB June 15, 2015) (denying institution
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`where Petitioner failed to identify the corresponding structure or to provide even
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`the alleged prior constructions because “the Petition does not show how the
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`challenged claims are to be construed”). Accordingly, the Board should not
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`institute the Petition on any grounds.
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`IV. PETITIONER’S LITIGATION POSITION THAT MANY
`TERMS OF THE CHALLENGED CLAIMS ARE INDEFINITE
`MANDATES DENIAL OF THE PETITION
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`Petitioner has taken positions in the Petition which are inconsistent with
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`those it has taken on the same issues in the District Court. Specifically, although
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`Petitioner has asserted in the Petition that all of the claims are able to be construed
`
`and are allegedly found in the prior art, in the litigation, Petitioner contended that
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`7
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`at least one term in each of the Challenged Claims is indefinite under 35 U.S.C.
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`
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`§ 112: (1) “defined interaction,” which is found in all Challenged Claims, see
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`Ex. 2001 at 1; (2) “interaction with a host computing device in a defined way,”
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`which is found in Claims 38 and 39 of the ’802 Patent, id.; (3) “means for
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`mediating communication of data between the host computing device and the
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`target means so that the communicated data must first pass through the security
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`means,” which is found in Claims 1-2, 11-14, and 23 of the ’802 Patent, id. at 52;
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`and (4) “means for providing to a host computing device, in response to a request
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`from the host computing device for information regarding the type of the
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`peripheral device, information regarding the function of the target means,” which
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`is found in Claims 6-7, 23, and 24-27 of the ’802 Patent, id. at 57. Assuming that
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`Petitioner did not violate its Rule 11 obligations to the Board as well as the District
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`Court and that Petitioner’s positions have simply “evolved,” Petitioner’s position
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`that the Challenged Claims are indefinite means that the Challenged Claims are not
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`amenable to inter partes review. See, e.g., Space Exploration Techs. Corp. v. Blue
`
`Origin LLC, IPR2014-01378, Decision Denying Institution of Inter Partes Review,
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`Paper No. 6 at 8-9 (Mar. 3, 2015) (denying institution of inter partes review where
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`a means-plus-function claim term was indefinite for lack of sufficient disclosure of
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`corresponding structure because any comparison of the prior art to the indefinite
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`8
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`claim “would be speculative and futile”); Apple Inc. v. Immersion Corp., IPR2016-
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`
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`01372, Paper No. 7 at 20-21 (Jan. 11, 2017) (declining to institute inter partes
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`review of claims which include an indefinite claim term).
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`The application of the “broadest reasonable interpretation” standard offers
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`no help to Petitioner. Pet. at 25. For instance, Petitioner does not argue that the
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`application of the broadest reasonable interpretation standard would impact the
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`application of section 112(6) in terms of identifying the corresponding structure of
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`the “means for mediating communication” or “means for providing” terms that
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`Petitioner contended in the District Court are indefinite. As another example,
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`Petitioner offers no construction for “defined interaction” or “interaction with a
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`host computing device in a defined way” and certainly has not offered any analysis
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`showing how the section 112 analysis would be affected by differing claim
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`construction standards.
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`Because Petitioner cannot seek inter partes review of claims that it contends
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`are indefinite, the Board should not institute the Petition on any grounds.
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`9
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`V.
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED
`
`A. Requirements for Showing Anticipation Under 35 U.S.C.
`§ 102 and Obviousness Under 35 U.S.C. § 103.
`
`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
`
`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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`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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`10
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
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`
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`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
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`themselves would have been obvious, but whether the claimed invention as a
`
`whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
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`1530, 1537 (Fed. Cir. 1983).
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`The Board has held that a failure to identify the differences between the
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`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
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`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
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`Institution of Inter Partes Review, Paper 9 at 9-10 (PTAB June 26, 2015) (denying
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`institution for failure to identify the differences between the claimed subject matter
`
`and the prior art).
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`In arriving at an obviousness determination, the Board must sufficiently
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`explain and support the conclusions that the prior-art references disclose all the
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`elements recited in the Challenged Claims and a relevant skilled artisan not only
`
`could have made, but would have been motivated to combine all the prior art
`
`references in the way the patent claims and reasonably expected success. Pers.
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`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even
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`if all the claim elements are found across a number of references, an obviousness
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`determination must consider whether a person of ordinary skill in the art would
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`11
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`have the motivation to combine those references. Intelligent Bio-Sys., Inc. v.
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`
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
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`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
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`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
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`determination, in part, because the Board did not make factual finding as to
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`whether there was an apparent reason to combine all three prior art references to
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`achieve the claimed invention and whether a person of skill in the art would have
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`had a reasonable expectation of success from such a combination.) This
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`combinability determination, as supported by an articulated motivation to combine,
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`requires a plausible rationale as to why those prior art references would have
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`worked together. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir
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`2013). Absent some articulated rationale, a “common sense” finding is no
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`different than the conclusory statement “would have been obvious.” In re Van Os,
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`844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional importance, “knowledge of a
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`problem and motivation to solve it are entirely different from motivation to
`
`combine particular references.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
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`1373 (Fed. Cir. 2008).
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`This Petition is deficient because it fails to meet the fundamental
`
`requirements for demonstrating invalidity. Petitioner did not “specify where each
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`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). Petitioner also neglected to support its
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`obviousness combinations with motivations to combine supported by “some
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`articulated reasoning with some rational underpinning.” As set forth below, the
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`Petition should be denied institution.
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`B. Ground I: Claims 1-3, 6-8, 11-15, 23-28, and 36-39 Are Not
`Obvious Over Jones
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`Petitioner failed to meet its burden with respect to Ground I because
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`Petitioner (1) failed to identify where the corresponding structure for the “security
`
`means,” is disclosed in Jones; (2) failed to show that the claimed “means for
`
`operably connecting” is disclosed in Jones; (3) failed to show that the “means for
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`mediating communications” is found in Jones; and (4) failed to show that Jones
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`discloses the steps of “receiving a request from a host computing device for
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`information regarding the type of the peripheral device” and “providing to the host
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`computing device, in response to the request, information regarding the type of the
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`defined interaction.”
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`Petitioner Failed to Show that the Claimed “Security
`Means” Is Disclosed in Jones
`
`1.
`
`Independent Claims 1, 6, 11, 23, 24, 36, 37, and 392 of the ʼ802 Patent recite
`
`a “security means” and Dependent Claims 2, 3, 7, 8, 12-15, and 25-28 include this
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`limitation via dependence. As a preliminary matter, Petitioner failed to identify the
`
`corresponding structure disclosed in the ’802 Patent that is clearly linked or
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`associated with the function in the claim of “enabling one or more security
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`operations to be performed on data.” Pet. at 27; Golight, Inc. v. Wal-Mart Stores,
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`Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004). Petitioner bears the burden of
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`identifying the claimed function and the specific portions of the specification that
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`describe the structure corresponding to the claimed function when construing a
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`means-plus-function claim term. 37 C.F.R. § 42.104(b)(3). While Petitioner states
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`that the “’802 Patent describes a ‘security mechanism’ that is used to perform a
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`range of security operations on data,” Petitioner stops short of admitting that the
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`security mechanism 302a is the corresponding structure and showing how the
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`security mechanism is clearly linked to the claimed function. Pet. at 27. As such,
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`Petitioner has failed to carry its burden, and this Ground is deficient.
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`2 Claim 39 recites a “means for performing the one or more security operations,”
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`whereas the other independent claims recite a “security means for enabling one or
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`more security operations to be performed on data.” See, e.g., Claim 1. Petitioner
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`Even assuming that the security mechanism 302a in the ’802 Patent is the
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`corresponding structure for the security means, Petitioner did not show that the
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`security mechanism 302a is disclosed in Jones. Petitioner “must specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon,” 37 C.F.R. § 42.104(b)(4), and the controlling Federal Circuit case
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`law requires that “a challenger who seeks to demonstrate that a means-plus-
`
`function 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.
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`Petitioner argues that the encryption-decryption unit 177 and gate 178
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`correspond to the claimed “security means” in the ’802 Patent, i.e., that the
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`“encryption-decryption unit 177 and gate 178 . . . perform cryptographic functions
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`on data, and thus correspond to the security means claimed in the ’802 Patent.”
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`Pet. at 28. Petitioner, however, never performed the required structural analysis.
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`treats these limitations as synonymous, as its argument that Jones discloses the
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`“means for performing the one or more security operations” (as part of the
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`“mediating communication” step of Claim 39) is a verbatim copy of a portion of
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`the argument for the “means for mediating” limitation of Claim 1 that describes the
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`“security means.” Compare Pet. at 60-62 with Pet. at 36-38.
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`As discussed above, since Petitioner did not adequately identify the corresponding
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`structure, Petitioner could not have engaged in this analysis. Further, even if the
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`“security mechanism 302a” is the corresponding structure identified by Petitioner,
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`Petitioner never compared the structure of the security mechanism 302a to the
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`encryption-decryption unit 177 and gate 178 in Jones to show that the structures
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`are the same. Accordingly, because Petitioner has failed to carry its burden on this
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`Petition to show where claimed “security means” is disclosed in Jones, Ground I is
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`deficient with respect to Claims 1-3, 6-8, 11-15, 23-28, 36, 37, and 39 and should
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`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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`Independent Claims 1 and 6 of the ʼ802 Patent recite a “means for operably
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`connecting the security means and/or the target means to the host computing
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`device in response to an instruction from the host computing device,” and
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`Dependent Claims 2, 3, 7, and 8 include this limitation via dependence.
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`Petitioner’s argument that this function is performed in Jones is deficient
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`because Petitioner does not show that Jones discloses a “means for operably
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`connecting” which is performed “in response to an instruction from the host
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`computing device.” Petitioner argues that both the ’802 Patent and Jones disclose
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`PCMCIA-standard drivers that perform this function, Pet. at 34-35, but Petitioner
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`IPR2017-00824
`U.S. Patent No. 6,088,802
`does not show where Jones discloses the “instruction from the host computing
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`device” that is included in the function. Petitioner’s argument that the PCMCIA
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`standard supplies this limitation is unsupported by any evidence in the Petition and
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`is purely conclusory. Id. Further, even if evidence were in the record regarding
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`the PCMCIA standard, Petitioner’s argument would be obviousness in view of the
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`PCMCIA standard which has not been asserted in the Petition.
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`Petitioner misconstrues a statement in the prosecution history as an
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`admission that this limitation is found in the prior art. Pet. at 35. In fact, the cited
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`statement is a conclusion by the Examiner that certain admitted prior art discloses
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`this limitation—there is no admission by the Patent Owner that the prior art
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`discloses this limitation. To the extent that Petitioner claims that the prior art
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`referenced in the prosecution history discloses this limitation, those grounds should
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