`
`
`
`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`WESTERN DIGITAL CORPORATION
`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. IPR2018-00082
`______________________________________________________________________________
`
`
`

`

`
`
`
`
`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`TABLE OF CONTENTS
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY THE PETITION DUE TO PETITIONER’S STRATEGIC
`DELAY IN FILING THE PETITION ............................................................ 6
`
`
`
`I.
`
`II.
`
`III. THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED ...............................................................................................13
`
`IV. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED .................................................................................16
`
`A.
`
`B.
`
`Requirements for Showing Obviousness Under 35 U.S.C.
`§ 103. ...................................................................................................16
`
`Ground 1: Claims 1-2, 6-7, 11-12, 23-25, and 38-39 Are Not
`Obvious Over Harari in View of PCMCIA System
`Architecture .........................................................................................19
`
`1.
`
`2.
`
`3.
`
`Petitioner Failed to Show that the Claimed “Security
`Means” Is Disclosed in Harari ..................................................20
`
`Petitioner Failed to Show that the Claimed “Means for
`Operably Connecting” Is Disclosed in Harari or
`PCMCIA System Architecture .................................................24
`
`Petitioner Failed to Show that Harari or PCMCIA
`System Architecture Discloses the “Means for
`Providing” as Recited in Claims 6, 23, and 24, and
`“Receiving a Request from a Host Computing Device”
`and Providing Information in Response to the Request
`as Recited in Claims 38 .............................................................26
`
`i
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`4.
`
`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 Harari ....................................29
`
`C.
`
`Ground 2: Claims 1-2, 11-12, 23 and 39 Are Not Obvious
`Over Harari in View of PCMCIA System Architecture and
`Wang....................................................................................................33
`
`D. Grounds 3 and 4: Claims 1-2, 11-12, 23 and 39 Are Not
`Obvious for the Same Reasons as Grounds 1-2 when
`Considered Further in View of Dumas ...............................................36
`
`V.
`
`CONCLUSION ..............................................................................................37
`
`
`
`ii
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`

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`
`
`Cases
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`
`
`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355 (P.T.A.B. June 26, 2015) ......................................................... 17
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir 2013) ........................................................................... 18
`
`Carefusion Corp. v. Baxter Int’l, Inc.,
`Case IPR2016-01456 (P.T.A.B. Feb. 6, 2017) ................................................... 14
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 6
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) .................................................................... 19, 22
`
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357 (P.T.A.B. Sept. 6, 2017) ...........................................passim
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 17
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .......................................................................... 18
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 18
`
`Intelligent Bio-Syst., Inc. v. Illumina Cambridge Ltd.,
`Case IPR2013-00324 (P.T.A.B. Nov. 21, 2013) .................................................. 6
`
`Kingston Tech. Co. v. SPEX Techs., Inc.,
`Case IPR2017-00824 (P.T.A.B. Aug. 17, 2017) .................................. 3, 9, 10, 21
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 17, 35
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ............................................... 18
`
`iii
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`

`

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`
`
`
`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`NetApp Inc. v. Realtime Data LLC,
`Case IPR2017-01354 (P.T.A.B. Nov. 14, 2017) .............................................. 8, 9
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ............................................................................ 17
`
`SPEX Tech., Inc. v. Kingston Tech. Corp.,
`No. 8:16-cv-01790 (C.D. Cal.) ............................................................................. 2
`
`SPEX Techs., Inc. v. Western Dig. Corp.,
`No. 8:16-cv-01799 (C.D. Cal.) ............................................................................. 1
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .......................................................................... 17
`
`Toyota Motor Corp. v. Blitzsafe Texas LLC,
`Case IPR2016-00422 (P.T.A.B. July 6, 2016) ................................................... 13
`
`Unified Patents, v. SPEX Techs., Inc.,
`Case IPR2017-00430 (P.T.A.B. Dec. 14, 2016) ............................................. 9, 10
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) .......................................................................... 18
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) .......................................................................... 22
`
`Statutes
`
`35 U.S.C. 112(f) ....................................................................................................... 13
`
`35 U.S.C. § 103 ........................................................................................................ 16
`
`35 U.S.C. § 314(a) ........................................................................................... 6, 7, 13
`
`Other Authorities
`
`37 C.F.R. § 42.104(b)(3) ................................................................................ 3, 13, 16
`
`37 C.F.R. § 42.104(b)(4) ...................................................................................passim
`
`37 C.F.R. § 42.108(a) ....................................................................................... 6, 7, 13
`
`
`
`iv
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`LIST OF EXHIBITS
`
`
`Exhibit Number Document
`
`2001
`
`2002
`
`2003
`
`2004
`
`Defendants’ Joint Invalidity Contentions, dated March 30,
`2017, in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-
`cv-01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.).
`Interim Status Report, dated April 3, 2017, in SPEX Techs., Inc.
`v. Kingston Tech. Corp., No. 8:16-cv-01790-JVS-AGR (C.D.
`Cal.), SPEX Techs., Inc. v. Western Dig. Corp., No. 8:16-cv-
`01799-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Toshiba Am.
`Electronics Components, Inc., No. 8:16-cv-01800-JVS-AGR
`(C.D. Cal.), SPEX Techs., Inc. v. Apricorn, No. 8:16-cv-07349-
`JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v. Integral
`Memory PLC, No. 8:16-cv-01805-JVS-AGR (C.D. Cal.).
`Order Regarding Claim Construction, dated October 18, 2017,
`in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
`01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.).
`Plaintiff SPEX Technologies, Inc. Disclosure of Asserted
`Claims and Infringement Contentions, dated February 13, 2017,
`in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
`01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.), and SPEX
`Techs., Inc. v. Integral Memory PLC, No. 8:16-cv-01805-JVS-
`AGR (C.D. Cal.).
`
`v
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`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`Exhibit Number Document
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`2005
`
`
`
`Joint Claim Construction Chart, dated May 30, 2017, in SPEX
`Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-01790-JVS-
`AGR (C.D. Cal.), SPEX Techs., Inc. v. Western Dig. Corp., No.
`8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v.
`Toshiba Am. Electronics Components, Inc., No. 8:16-cv-01800-
`JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v. Apricorn, No.
`8:16-cv-07349-JVS-AGR (C.D. Cal.).
`
`vi
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`

`

`I.
`
`INTRODUCTION
`
`On October 16, 2017, Western Digital Corporation (“Petitioner”) 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 1-2, 6-7, 11-12,
`
`23-25, and 38-39 (the “Challenged Claims”).
`
`The Board should exercise its discretion to deny the Petition because it is an
`
`improper serial petition. Petitioner delayed filing this Petition for months after
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`other petitions concerning the ’802 Patent had been filed even though Petitioner
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`long possessed nearly all of the prior art cited in the Petition. Unified Patents filed
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`a petition for inter partes review (IPR2017-00430, the “430 IPR”) of the ’802
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`Patent on December 14, 2016, and Kingston Technology Company, Inc.
`
`(“Kingston”) filed a petition for inter partes review (IPR2017-00824, the “824
`
`IPR”) of the ’802 Patent on January 31, 2017. On March 30, 2017, Petitioner
`
`served invalidity contentions (jointly with Kingston1 and others) in the district
`
`court litigations brought by Patent Owner2 that identified Harari3, PCMCIA
`
`
`1
` Petitioner and Kingston have been working together as part of a “joint defense
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`group” in the underlying district court litigation.
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`2 Petitioner is a defendant in the district court case styled as SPEX Techs., Inc. v.
`
`Western Dig. Corp., No. 8:16-cv-01799 (C.D. Cal.). Kingston is a defendant in the
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`
`
`1
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`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`System Architecture4, and Dumas5 as prior art references. Ex. 2001 at 8, 9. But,
`
`
`
`instead of filing a petition for inter partes review at that time, or joining in
`
`Kingston’s IPR, Petitioner waited until two months after the Board had issued its
`
`decision on August 17, 2017 denying institution of Kingston’s IPR to file this
`
`Petition. Petitioner’s delay can only be explained as a strategic decision to serially
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`challenge the ’802 Patent. Petitioner waited until the Board had rendered its
`
`institution decisions so that Petitioner could gain valuable insight into Patent
`
`Owner’s arguments and the Board’s conclusions on claim construction and the
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`scope and content of the prior art. Under the factors set forth in General Plastic
`
`Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (P.T.A.B. Sept.
`
`6, 2017), Paper 19 (precedential), the Board should deny this Petition.
`
`The Petition should also be denied because it is deficient in several respects.
`
`As a threshold matter, all Grounds should be denied institution because Petitioner
`
`
`district court case styled as SPEX Tech., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
`
`01790 (C.D. Cal.). These cases were consolidated for all purposes except trial.
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`3 U.S. Patent No. 5,887,145 to Harari (Ex. 1004, “Harari”).
`
`4 Don Anderson, PCMCIA SYSTEM ARCHITECTURE: 16-BIT PC CARDS
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`(MindShare, Inc., 2nd ed. 1995) (Ex. 1006, “PCMCIA System Architecture”).
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`5 U.S. Patent No. 6,199,163 to Dumas (Ex. 1005, “Dumas”).
`
`2
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`has failed to meet its burden under 37 C.F.R. § 42.104(b)(3) to propose claim
`
`
`
`constructions that it believes are correct under applicable law. Petitioner merely
`
`identified constructions advocated by Patent Owner in the district court without
`
`taking the position that these constructions are correct. Indeed, in the litigation,
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`Petitioner took the position that many of the constructions were not correct, and
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`that certain of the relevant claim terms are indefinite. Because all Grounds of this
`
`Petition depend on means-plus-function claim terms as to which Petitioner failed to
`
`supply constructions, the Petition should be denied in its entirety.
`
`All Grounds should be denied as to Claims 1-2, 6-7, 11-12, 23-25, and 39
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`because Petitioner has failed to meet its burden under 37 C.F.R. § 42.104(b)(4) to
`
`show where the claimed “security means” is disclosed in Harari. The Board
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`previously found in an earlier petition that the corresponding structure for the
`
`“security means” is “‘a security token that performs security operations and that
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`uses a hardware random number generator or protected memory, or both, to
`
`provide security for the content of those operations,’ as well as equivalents
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`thereof.” Kingston Tech. Co. v. SPEX Techs., Inc., Case IPR2017-00824, Paper 8,
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`13 (Aug. 17, 2017). Petitioner argues that the functional modules 42 perform the
`
`function of the security means, but Petitioner does not compare the structure of the
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`functional modules 42 with the “security token” identified by the Board to show
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`3
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`that the security means is disclosed in Harari. For this reason, all Grounds should
`
`
`
`be denied as to Claims 1-2, 6-7, 11-12, 23-25, and 39.
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`Petitioner also fails to show where the claimed “means for operably
`
`connecting” in Claims 1-2 (all Grounds) and 6-7 (Ground 1) is disclosed in Harari
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`or PCMCIA System Architecture. Petitioner contends that the function of the
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`“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” is performed by the PCMCIA interface and memory section and a
`
`PCMCIA device or host driver, but Petitioner does not identify “an instruction
`
`from the host computing device” in response to which a connection takes place.
`
`For similar reasons, the Petition should be denied as to Claims 6-7 (Ground
`
`1), 23 (Grounds 1-4), 24-25 (Ground 1), and 38 (Ground 1). These claims require
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`“a request from the host computing device for information regarding the type of
`
`peripheral device,” and providing to the host computing device certain information
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`(regarding “the type of defined interaction” or “the function of the target means”)
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`in response to the request. But, Petitioner does not identify any request from the
`
`host computing device for information, nor does Petitioner show that the claimed
`
`information is provided in response to this unidentified request.
`
`4
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`All Grounds should be denied as to Claims 1-2, 11-12, 23, and 39 because
`
`
`
`Petitioner failed to show where the claimed “means for mediating” is found in
`
`Harari, Wang6, and Dumas. Petitioner contends that the corresponding structure
`
`for the “means for mediating” is (1) a field programmable gate array (FPGA) that
`
`may or may not require an algorithm for receiving data from a computing device,
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`providing the data to a cryptographic processor, and transferring data to a target
`
`means; and (2) an interface control device 910 in the ’802 Patent. While Petitioner
`
`appears to argue that the function of the “means for mediating” is performed by
`
`Harari, Petitioner does not show that Harari discloses the corresponding structure
`
`of an FPGA or an interface control device 910. Petitioner relies on Wang for the
`
`disclosure of an FPGA as a “means for mediating,” but Wang’s FPGA does not
`
`perform the claimed function, and Petitioner identifies no factual underpinnings for
`
`its motivation to combine. Finally, Petitioner does not contend that Dumas teaches
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`either structure of a “means for mediating,” but simply an arrangement where data
`
`must pass through an encryption circuit. Thus, Dumas does not remedy the
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`deficiencies of Harari and Wang.
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`Due to at least these deficiencies, the Petition does not establish “a
`
`reasonable likelihood that the Petitioner would prevail with respect to at least one
`
`
`6 U.S. Patent No. 5,765,027 to Wang (Exhibit 1019, “Wang”)
`
`5
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
`
`
`
`explicitly reserves the right to present additional arguments, the deficiencies of the
`
`Petition noted herein are sufficient for the Board to find that Petitioner has not met
`
`its burden to demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
`
`II. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY THE PETITION DUE TO PETITIONER’S STRATEGIC
`DELAY IN FILING THE PETITION
`
`Pursuant to 35 U.S.C. § 314(a), the “Director may not authorize an inter
`
`partes review to be instituted unless . . . the information presented in the
`
`petition . . . shows that there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.”
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`“Congress did not mandate that an inter partes review must be instituted under
`
`certain conditions. Rather, by stating that the Director—and by extension, the
`
`Board—may not institute review unless certain conditions are met, Congress made
`
`institution discretionary.” Intelligent Bio-Syst., Inc. v. Illumina Cambridge Ltd.,
`
`Case IPR2013-00324, slip op. 4 (P.T.A.B. Nov. 21, 2013) (Paper 19); see also
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s
`
`decision to deny a petition is a matter committed to the Patent Office’s discretion.
`
`See [5 U.S.C.] § 701(a)(2); 35 U.S.C. § 314(a) (no mandate to institute review).”)
`
`(remainder of citation omitted); 37 C.F.R. § 42.108(a) (“When instituting inter
`
`6
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`

`

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`IPR2018-00082
`U.S. Patent No. 6,088,802
`partes review, the Board may authorize the review to proceed on all or some of the
`
`
`
`challenged claims and on all or some of the grounds of unpatentability asserted for
`
`each claim.”) (emphasis added).
`
`In General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case
`
`IPR2016-01357 (P.T.A.B. Sept. 6, 2017), Paper 19 (precedential), an expanded
`
`panel of the Board set forth a non-exclusive list of seven factors that bear on the
`
`issue of whether the Board should invoke its discretion to deny institution under 35
`
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a):
`
`1. whether the same petitioner previously filed a petition
`
`directed to the same claims of the same patent;
`
`2. whether at the time of filing of the first petition the
`
`petitioner knew of the prior art asserted in the second
`
`petition or should have known of it;
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`3. whether at the time of filing of the second petition the
`
`petitioner already received the patent owner’s preliminary
`
`response to the first petition or received the Board’s decision
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`on whether to institute review in the first petition;
`
`7
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`4. the length of time that elapsed between the time the
`
`
`
`petitioner learned of the prior art asserted in the second
`
`petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation for the
`
`time elapsed between the filings of multiple petitions
`
`directed to the same claims of the same patent;
`
`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`
`determination not later than 1 year after the date on which
`
`the Director notices institution of review.
`
`IPR2016-01357 Paper 19, 16 (citations omitted). Although these General Plastic
`
`factors typically have been used to analyze situations in which the same party files
`
`multiple petitions challenging the same patent, the Board has found that the
`
`General Plastic factors provide a useful framework for analyzing the facts and
`
`circumstances presented in cases where a different petitioner filed a petition
`
`challenging a patent that had been challenged already by previous petitions. See
`
`NetApp Inc. v. Realtime Data LLC, Case IPR2017-01354 (P.T.A.B. Nov. 14,
`
`2017), Paper 16 at 10 (applying the General Plastic factors to deny institution to a
`
`8
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`petition filed after petitions challenging the same patent had been filed by different
`
`
`
`petitioners).
`
`The General Plastic factors weigh in favor of denying the Petition.
`
`Factor 1 does not weigh in favor of denying the Petition because Petitioner
`
`has not previously filed a petition challenging the ’802 Patent. Since Factor 2 is
`
`directed to situations in which the same petitioner files two separate petitions at
`
`different times, it is neutral. See NetApp Inc., Case IPR2017-01354, Paper 16 at
`
`11.
`
`Factor 3 weighs heavily in favor of denying institution. This factor “is
`
`directed to situations in which a petitioner delays filing a subsequent petition so
`
`that it can tailor its arguments to address issues identified by the patent owner
`
`and/or the Board during a prior proceeding.” Id. Here, Unified Patents filed the
`
`430 IPR challenging all claims of the ’802 Patent on December 14, 2016, Unified
`
`Patents, v. SPEX Techs., Inc., Case IPR2017-00430 (P.T.A.B. Dec. 14, 2016),
`
`Paper 2, and Kingston filed the 824 IPR challenging claims 1-3, 6-8, 11-15, 23-28,
`
`and 36-39 of the ’802 Patent on January 31, 2017, Kingston Tech. Co. v. SPEX
`
`Techs., Inc., Case IPR2017-00824 (P.T.A.B. Jan. 31, 2017), Paper 2. All of the
`
`Challenged Claims were addressed in both prior petitions. Patent Owner filed its
`
`Preliminary Response to the 430 IPR on April 11, 2017, Unified Patents, Case
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`9
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`IPR2017-00430, Paper 7, and its Preliminary Response to the 824 IPR on May 24,
`
`
`
`2017, Kingston Tech. Co., Case IPR2017-00430, Paper 7. The Board issued its
`
`Decision Denying Institution of the 430 IPR on July 5, 2017, Unified Patents, Case
`
`IPR2017-00430, Paper 8, and issued its Decision Denying Institution of the 824
`
`IPR on August 17, 2017, Kingston Tech. Co., Case IPR2017-00430, Paper 8. By
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`waiting to file this Petition until October 16, 2017, Petitioner had two months to
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`study the Board’s decision in the 824 IPR and over three months to study the
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`Board’s decision in the 430 IPR.
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`Petitioner cannot argue that it was unaware of the 430 IPR and 824 IPR
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`because the parties filed a joint interim status report in the district court on April 3,
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`2017 informing the court of the filing of the IPRs. Ex. 2002 at 3. Nevertheless,
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`perhaps in an effort to avoid notifying the PTAB of the serial nature of its petition,
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`Petitioner failed to disclose either of these IPRs to the Board in its Mandatory
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`Notices. Pet. at 67-68.
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`Factor 4 also weighs heavily in favor of denying the Petition because
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`Petitioner was aware of three of the four prior art references cited in the Petition,
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`Harari, PCMCIA System Architecture, and Dumas, at least as of the date it served
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`its initial invalidity contentions on March 30, 2017, and likely well before those
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`contentions were served. Ex. 2001 at 8, 9. While Wang was not disclosed in
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Petitioner’s invalidity contentions, it is not relevant to the bulk of the Petition
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`
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`because it is cited only in Ground 3 for the proposition that an FPGA can be
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`substituted for a controller in the claimed “means for mediating.” Moreover, in
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`view of the district court’s rejection of the proposed construction of “means for
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`mediating” as having an FPGA as the corresponding structure (the position
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`advocated for by Petitioner), Ex. 2003 at 31-34, and the possibility that the Board
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`may do the same in this Petition, the Wang reference may not be relevant to any
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`Ground in this Petition. This factor weighs in favor of denying institution.
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`Factor 5 weighs in favor of denying the Petition because Petitioner will not
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`be able to argue that it lacked sufficient information regarding Patent Owner’s
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`infringement claims or claim construction positions until it filed this Petition on
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`October 16, 2017. Patent Owner identified the Challenged Claims in its
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`infringement contentions served on February 13, 2017, Ex. 2004 at 2, and the
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`parties filed their joint claim construction chart with the district court setting forth
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`their proposed claim constructions and supporting evidence on May 30, 2017, Ex.
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`2005. While the district court more recently issued its claim construction ruling,
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`Ex. 2003, Petitioner explicitly states that “[t]his petition is based on the claim
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`constructions urged by Patent-Owner in the DCT Litigation, or as the parties
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`agreed.” Pet. at 8. Thus, by May 30, 2017, Petitioner was aware of the Challenged
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Claims, the three most important prior art references, and Patent Owner’s proposed
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`
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`claim constructions, and yet Petitioner waited four and a half months to file this
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`Petition against claims that were challenged in two prior IPRs already on file. This
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`factor weighs heavily against institution.
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`Factor 6 weighs against institution because serial challenges that require the
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`Board to repeatedly take up the same subject matter every few months are
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`inefficient and wasteful of the Board’s resources. Petitioner should have presented
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`the invalidity arguments in the Petition—arguments that it was well aware of long
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`ago—to the Board in time for it to review those arguments at least in conjunction
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`with the 824 IPR. Petitioner now seeks to have the Board review, for the third
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`time, the ’802 Patent and its claims, potential claim constructions, and prior art
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`references which are similar to those already previously presented. This approach
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`squanders the finite resources of the Board.
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`Factor 7 does not weigh against institution because the 430 IPR and 824 IPR
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`were not instituted.
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`In summary, four of the General Plastic factors weigh against institution,
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`some heavily so, and only two factors weigh in favor of institution. Based on these
`
`factors, Patent Owner respectfully requests that the Board exercise its discretion
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of the
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`
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`Petition.
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`III. THE PETITION SHOULD BE DENIED BECAUSE
`PETITIONER HAS FAILED TO PROVIDE A SUFFICIENT
`STATEMENT OF HOW THE CLAIMS SHOULD BE
`CONSTRUED
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`Petitioner has failed to meet its burden under 37 C.F.R. § 42.104(b)(3)
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`because Petitioner failed to disclose the claim constructions that Petitioner believes
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`are correct under applicable law and should therefore be applied by the Board.
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`The regulations provide that a petition for inter partes review must identify:
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`[h]ow the challenged claim is to be construed. Where the claim
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`to be construed contains a means-plus-function or step-plus-
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`function limitation as permitted under 35 U.S.C. 112(f), the
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`construction of the claim must identify the specific portions of
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`the specification that describe the structure, material, or acts
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`corresponding to each claimed function;
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`37 C.F.R. § 42.104(b)(3). The Board has said that “[t]he ‘construction’ referred to
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`by 37 C.F.R. § 42.104(b)(3) is the construction proposed by the Petitioner, one that
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`Petitioner believes is the correct construction under applicable law and should
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`apply in the involved proceeding.” Toyota Motor Corp. v. Blitzsafe Texas LLC,
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`Case IPR2016-00422 (P.T.A.B. July 6, 2016), Paper 12 at 26-27 (emphasis added)
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`(noting that the Petitioner provided the claim constructions of the district court, but
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`
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`did not “take ownership” of the constructions and, in two instances, asserted that
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`the constructions were incorrect). This Board has held that:
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`Petitioner’s statement that it agrees with Patent Owner’s alleged
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`claim construction solely for the purposes of its Petition is
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`insufficient in this case to show that Petitioner agrees with,
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`proposes, or adopts that construction as required by 37 C.F.R.
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`§ 42.104(b)(3). That is, having stated that it does not agree that
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`Patent Owner’s claim constructions are correct . . . , Petitioner’s
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`qualified agreement with this particular construction is
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`insufficient to take ownership of that construction.
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`Carefusion Corp. v. Baxter Int’l, Inc., Case IPR2016-01456 (P.T.A.B. Feb. 6,
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`2017) Paper 9 at 11.
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`Here, Petitioner does not propose claim constructions that it contends are
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`correct. Petitioner admits that “[t]his petition is based on the claim constructions
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`urged by Patent-Owner in the DCT Litigation, or as the parties agreed.” Pet. at 8
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`(emphasis added). As to the claim terms that are central to its Petition, including
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`“defined interaction” and “interaction with a host computing device in a defined
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`way,” Pet. at 8-9; “security means,” Pet. at 10-11; “means for operably
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`connecting,” id. at 13-14; “means for mediating communications,” id. at 14; and
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`
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`“means for providing to a host computing device, in response to a request from the
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`host computing device for information regarding the type of the peripheral device,
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`information regarding the function of the target means,” id. at 14-15, Petitioner
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`simply repeats Patent Owner’s positions taken in the district court concerning the
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`corresponding structure for each term, and states whether the district court had
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`tentatively agreed with Patent Owner as of the date of the Petition. Petitioner
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`never contends that any of the constructions proffered by Patent Owner are correct,
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`nor does it advocate for any construction by, for example, presenting intrinsic
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`evidence supporting the construction. See id. at 10-14.
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`Indeed, in the district court, Petitioner advocated against many of the
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`constructions upon which it now relies. For instance, Petitioner argued that
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`“defined interaction,” “interaction with a host computing device in a defined way,”
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`“means for mediating communications,” and “means for providing to a host
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`computing device, in response to a request from the host computing device for
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`information regarding the type of the peripheral device, information regarding the
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`function of the target means,” are indefinite. Ex. 2003 at 6-7, 31-32, 38-39.
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`Petitioner also disagreed with the corresponding structure proposed by Patent
`
`Owner for several section 112(6) claim terms, including for “security means” and
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`15
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`means for operably connecting.” Ex. 2003 at 16-18, 26-27. The Petition is
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`
`
`therefore deficient because Petitioner failed to meet its bu