Paper No. 22
`Trials@uspto.gov
`571-272-7822 Entered: July 23, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding Regarding Petitioner’s Reply and
`Denying Petitioner’s Motion for Supplemental Information
`37 C.F.R. §§ 42.5, 42.123
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: July 23, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00082
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding Regarding Petitioner’s Reply and
`Denying Petitioner’s Motion for Supplemental Information
`37 C.F.R. §§ 42.5, 42.123
`
`
`
`
`
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`I. MAY 9, 2018 CONFERENCE CALL
`Following entry of our Decision on Institution on April 25, 2018
`(Paper 11, “Decision” or “Dec.”), at Patent Owner’s request, a conference
`call was conducted on May 9, 2018, with counsel for the parties and Judges
`Pettigrew, Fishman, and Boudreau. A transcript of that call was filed as
`Exhibit 2006 (“Tr.”). In the conference call, Patent Owner inquired:
`(A) whether Petitioner would be permitted to file a Reply if Patent Owner
`waived its option to file a Patent Owner Response (Tr. 4), (B) whether
`Petitioner would be permitted to present arguments or evidence addressing
`claims that we found failed to meet the reasonable likelihood of prevailing
`standard (id.), and (C) whether the trial schedule would be expedited if
`Patent Owner waived its option to file a Patent Owner Response (Tr. 17).
`
`
`PETITIONER’S REPLY
`A.
`We interpret our rules as permitting a Petitioner’s Reply to respond
`only to arguments made in a Patent Owner Response. 37 C.F.R. § 42.23(b)
`(“A reply may only respond to arguments raised in the corresponding
`opposition, patent owner preliminary response, or patent owner response.”).
`Thus, in accordance with our standard procedures, if Patent Owner were to
`waive its option to file a Patent Owner Response, there would be no
`“arguments raised in the corresponding . . . patent owner response” to which
`Petitioner could reply.
`In a Chat With The Chief webinar on April 30, 2018, Chief Judge
`David Ruschke presented guidance regarding procedures of the Board in
`view of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, 138 S.
`Ct. 1348 (2018). Specifically, the guidance indicates that, “[f]or pending
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`Patent 6,088,802
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`trials in which a panel has instituted trial on all of the challenges raised in
`the petition, the panel will continue with the proceeding in the normal
`course.” Chat With The Chief, April 30, 2018, slides 5–6 (presentation
`slides available at: https://www.uspto.gov/sites/default/files/documents/
`chat_with_chief_sas_5.3.18.pdf).
`Our Decision instituted review on all challenged claims and all
`grounds. Dec. 43. Thus, in accordance with the above guidance, we
`proceed in the normal course under our interpretation of the rules wherein
`Petitioner would not have an opportunity to submit a Reply if Patent Owner
`waives its option to file a Patent Owner Response. That said, Petitioner may
`request authorization to file a motion asking us to waive our rules and allow
`such a reply upon a persuasive showing of good cause. See 37 C.F.R.
`§ 42.5(a)–(b).
`
`
`ADDITIONAL ARGUMENTS AND EVIDENCE
`B.
`Under defined conditions, our rules provide for submission of
`Supplemental Evidence (37 C.F.R. § 42.64(b)(2)) and Supplemental
`Information (37 C.F.R. § 42.123). In addition to the above rules, if
`Petitioner is permitted to file a Reply in response to a Patent Owner
`Response, the Reply may submit arguments and evidence that are responsive
`to arguments raised in the Patent Owner Response. 37 C.F.R. § 42.23(b).
`
`
`EXPEDITED TRIAL SCHEDULE
`C.
`At this stage of the proceeding, we perceive no reasons to alter the
`schedule of the instituted trial as defined in our Scheduling Order (Paper 12).
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`Case IPR2018-00082
`Patent 6,088,802
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`The parties may request authorization to file a motion seeking desired
`changes to the schedule for good cause.
`
`II. MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`In an e-mail message to the Board sent on May 22, 2018, Petitioner
`timely requested authorization to file a Motion to Submit Supplemental
`Information under 37 C.F.R. § 42.123(a) to address issues relating to
`construction of the term “means for mediating.” In response, on May 23,
`2018, we authorized Petitioner’s filing of such a motion and an opposition
`from Patent Owner. On May 29, 2018, Petitioner timely filed its Motion to
`Submit Supplemental Information (Paper 17, “Motion” or “Mot.”), and on
`June 1, 2018, Patent Owner timely filed its Opposition to the Motion
`(Paper 18, “Opp.”). The Motion requests entry of proposed Exhibits 1022,
`1023, and 1024. Exhibits 1022 and 1023 are excerpts of deposition
`testimony by Patent Owner’s expert witnesses in the related District Court
`litigation. Exhibit 1024 is a supplemental declaration by Petitioner’s
`declarant in this proceeding, Dr. Martin Kaliski, explaining the relevance of
`Exhibits 1022 and 1023 to our Decision’s construction of the term “means
`for mediating.”
`In our Decision on Institution, in accordance with the Supreme
`Court’s holdings in SAS, we instituted review of all claims and on all
`grounds. Dec. 42–43. However, in order to provide the parties with insight
`into the Board’s analysis of all grounds, we determined that the Petition,
`supported by the preliminary record, failed to persuade us of a reasonable
`likelihood of prevailing with regard to some of the asserted claims and
`grounds. In particular, regarding the challenges to independent claim 1,
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`Case IPR2018-00082
`Patent 6,088,802
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`based on the preliminary record, we were unpersuaded by the Petition that
`the applied references taught all features because the Petition failed to
`identify an equivalent structure to that identified as corresponding structure
`in the ’802 patent for the recited “means for mediating.” Dec. 35–36.
`The Petition asserts that it “is based on the claim construction urged
`by Patent-Owner in the [District Court] Litigation, or as the parties agreed.”
`Paper 1 (“Pet.”), 8. Regarding the term “means for mediating,” the Petition
`asserts the term is a means-plus-function term to be construed under
`35 U.S.C. § 112 ¶ 6 and argues:
`This means-plus-function term’s function is “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.”
`Patent-Owner proposed that the corresponding structure
`is: (1) a field programmable gate array (FPGA); and (2) interface
`control device 910 (as shown in Figure 9B). Ex. 1013 at 20. If
`an algorithm is necessary for the FPGA, Patent-Owner asserts
`that the algorithm is (1) receiving data from host computing
`device; (2) depending on configuration settings, providing data
`to be processed by a cryptographic processor; and (3)
`transferring data to target means. Ex. 1013 at 20 (citing ’802
`Patent at Fig. 9A, 16:58–17:7).
`The district court tentatively agreed with Patent-Owner’s
`proposed function, but rejected
`that
`the FPGA was a
`corresponding structure. Ex. 1014 at 24–25. Instead, the district
`court tentatively found that the corresponding structure is
`interface control device 910 (as shown in Figure 9B). Id.
`Pet. 14. Based on these contentions and for purposes of the Decision on
`Institution, we adopted the District Court’s interpretation of “means for
`mediating” as the above-identified function and the above-identified
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`Case IPR2018-00082
`Patent 6,088,802
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`corresponding structure (control device 910 as depicted in Figure 9B of the
`’802 patent). Dec. 13–14.
`In the Petition’s analysis of the “means for mediating” element of
`claim 1, there is no discussion comparing the structure of any of the
`combined references with the structure of control device 910 to show that
`the structures are identical or equivalent. More precisely, there is no further
`mention of control device 910 in the remainder of the Petition after the
`above-identified claim construction. Instead, the Petition, supported by Dr.
`Kaliski’s declaration (Ex. 1015), points to elements 41 and 42 of Harari’s
`Figure 7 as structure that performs the recited function. Pet. 43–45.
`In our Decision, we were unpersuaded of a reasonable likelihood of
`Petitioner prevailing in showing claim 1 was unpatentable, in part because
`the Petition fails to sufficiently identify any equivalent structure in Harari (or
`the other references of the proposed combinations) by comparing the
`structure of elements 41 and 42 of Harari’s Figure 7 (or any structure of the
`combined references) to the structure of element 910 of the ’802 patent.
`Dec. 35 (“Petitioner does not apply the District Court’s interpretation of this
`element to compare the structure of interface control device 910 to controller
`41 or functional module 42 of Harari (see id. at 43–45) or to the
`ASIC/FPGA of Wang (see id. at 59–64).”).
`Petitioner’s Motion argues:
`Patent Owner’s (PO) district court invalidity rebuttal experts—
`Dr. Rhyne and Mr. Gomez—confirmed in their depositions that
`the controllers in Harari Fig. 4 are structures corresponding to
`interface control device 910 in Fig. 9B of the ’802 patent (Exs.
`1022, 1023). Petitioner’s expert, Dr. Kaliski, explains in a
`supplemental declaration (Ex. 1024) that this testimony shows
`that Harari teaches the “means for mediating” limitation in
`
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`Case IPR2018-00082
`Patent 6,088,802
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`claims 1–2, 11–12, and 23. This evidence (Exs. 1022–1024)
`should be allowed as supplemental information.
`Mot. 1. Petitioner further contends denial of its Motion risks violating its
`due process rights because “if PO waives its response to try to close the
`record on issues that the Board believes were not reasonably likely to
`succeed, that would result in a de facto partial institution because the
`outcome would be preordained.” Mot. 5.
`Patent Owner argues in its Opposition that the proposed new exhibits
`do not support the arguments of the Petition regarding the “means for
`mediating” of claim 1 but, instead, present a new argument that Harari’s
`Figure 4 discloses structure equivalent to control device 910 of the ’802
`patent. Opp. 3–4. Patent Owner notes that Petitioner’s Motion does not
`explain why the proposed new exhibits support the arguments presented in
`the Petition but, instead, “attempt[s] to effectively amend the Petition.”
`Opp. 4. Patent Owner contends the Court’s ruling in SAS “does not create
`the requirement that the Board give a Petitioner a second chance to submit a
`viable invalidity argument with new evidence in order to address claims as
`to which it did not meet its burden of proof in the petition.” Opp. 4.
`A party filing a motion has the burden of proof to establish that it is
`entitled to the requested relief. 37 C.F.R. § 42.20. This is so, no matter the
`requested relief—including a motion to submit supplemental information
`under Rule 42.123(a). Satisfaction of the rule alone, however, does not
`mean the Board will grant the motion. See Redline Detection, LLC v. Star
`Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). Rule 42.123(a) is not
`intended to be an avenue for bolstering a petition’s deficiencies, once those
`deficiencies are identified by a patent owner or the Board. See id. at 442
`
`7
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`Case IPR2018-00082
`Patent 6,088,802
`
`(citing Changes to Implement Inter Partes Review Proceedings, Post-Grant
`Review Proceedings, and Transitional Program for Covered Business
`Method Patents, 77 Fed. Reg. 48,680, 48,708 (Aug. 14, 2012) (“Petitioners
`are encouraged to set forth their best grounds of unpatentability and
`supporting evidence in their petitions.”)). The provision for submitting
`supplemental information under Rule 42.123(a) “is not intended to provide a
`petitioner an advantageous ‘wait-and-see’ opportunity to use a patent
`owner’s preliminary response and our decision on institution in order to
`refine or bolster petitioner’s position.” Ooma, Inc. v. Deep Green Wireless
`LLC, Case IPR2017-01541, slip op. at 3–4 (PTAB Jan. 23, 2018) (Paper 14);
`see also Pac. Mkt. Int’l, LLC v. Ignite USA, LLC, Case IPR2014-00561, slip
`op. at 3 (PTAB Dec. 2, 2014) (Paper 23) (stating that “a petitioner should
`not expect § 42.123 to present a ‘wait-and-see’ opportunity to supplement a
`petition after initial comments or arguments have been laid out by a patent
`owner”). Rule 42.123(a) sets forth the requirements that must be satisfied so
`as to obtain authorization to file a motion to submit supplemental
`information. Satisfaction of those requirements, however, does not
`guarantee that a motion will be either authorized or granted. Redline. 811
`F.3d at 445–449.
`We are persuaded by Patent Owner’s arguments that the proposed
`supplemental information constitutes an attempt to improperly amend the
`grounds asserted in the Petition. The Petition addresses the “means for
`mediating” element of claim 1 by asserting that elements 41 and 42 of
`Harari’s Figure 7 perform the same function as the recited means but makes
`no attempt to compare the structure of elements 41 and 42 to that of control
`device 910 of Figure 9B of the ’802 patent. The proposed supplemental
`
`8
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`Case IPR2018-00082
`Patent 6,088,802
`
`information now seeks to compare the structure in Harari’s Figure 4 with
`that of control device 910 but does not support the ground of unpatentability
`asserted in the Petition based on elements 41 and 42 in Harari’s Figures 5B
`and 7. See Pet. 43–45. The Petition does not refer to Harari’s Figure 4 in its
`discussion of the “means for mediating,” and Figure 4 does not appear to
`have any relationship to elements 41 and 42 that the Petition identified as the
`structure corresponding to the recited function. In proposed Exhibit 1024,
`Dr. Kaliski asserts “[s]ubsequent to my initial declaration (Ex. 1015),
`additional evidence has come to light that, in my opinion, establishes that
`Figure 4 in Harari discloses the same or equivalent structure as interface
`control device 910.” Proposed Ex. 1024 ¶ 2. Such new evidence is not
`directed to the arguments of the Petition that assert elements 41 and 42 of
`Figures 5B and 7 are equivalent structures to that of device 910 of the ’802
`patent.
`Therefore, we agree with Patent Owner that this proposed
`supplemental information presents a new ground for unpatentability based
`on different disclosures of Harari in an attempt to correct a weakness of the
`Petition we noted in our Decision on Institution. We determine that the
`proposed supplemental information would not aid the Board in resolving the
`patentability challenges as crafted by Petitioner and presented in the Petition.
`We instituted trial (e.g., for claim 1) based on the Petition’s arguments
`regarding elements 41 and 42 of Harari disclosing the recited “means for
`mediating.” The new arguments presented in the proposed supplemental
`information and Patent Owner’s Motion do not address those issues but,
`instead, present a wholly new argument that reads the recited means for
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`Case IPR2018-00082
`Patent 6,088,802
`
`mediating on disclosures of Harari (Figures 5B and 7) unrelated to elements
`41 and 42.
`Furthermore, contrary to Petitioner’s assertions, denial of this Motion
`does not result in a “preordained” outcome of the trial. See Mot. 5. Further
`development in the instituted proceeding may clarify or explain that we
`misapprehended or overlooked arguments in the Petition that elements 41
`and 42 of Harari’s Figure 7 are an equivalent structure to that of control
`device 910 of the ’802 patent or that some other structure discussed in the
`Petition is asserted to be equivalent structure. However, presenting a new
`argument, based on a reading of the references different from that of the
`Petition, is not a permissible application of our Rule 42.123.
`Our reviewing Court has noted problems in a prior Board decision to
`deny a motion to submit supplemental information. Ultratec, Inc. v.
`CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017). Specifically, the
`Court there found the Board’s decision was deficient for three reasons: (1)
`the decision lacked sufficient information to support a reasoned decision, (2)
`the procedure in reaching the decision permitted a decision without an
`explanation of a reasoned basis, and (3) the decisional procedure impeded a
`meaningful appellate review. Id. at 1273–74. By contrast, here, we explain
`more fully the basis for our decision to deny Petitioner’s motion and provide
`an evidentiary basis to support our decision and to enable appellate review
`(if any). Furthermore, in CaptionCall, the motion to submit supplemental
`information was submitted by Patent Owner rather than Petitioner (as here).
`Our procedures and rules do not substantively limit the scope of Patent
`Owner’s response to the Petition, whereas Petitioner is limited to the
`arguments presented in its Petition and reply arguments responsive to issues
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`Case IPR2018-00082
`Patent 6,088,802
`
`raised by the Patent Owner’s response. Therefore, this denial of Petitioner’s
`motion is not inconsistent with the Court’s holdings in CaptionCall.
`Accordingly, Petitioner’s Motion to Submit Supplemental Information
`is denied.
`Furthermore, although proposed Exhibits 1022, 1023, and 1024 will
`not be expunged from the record to provide a full record for any potential
`appeals, the parties shall not rely on these proposed exhibits in any further
`arguments or briefings in this proceeding. To help avoid unintended
`citations to the proposed exhibits, Exhibits 1022, 1023, and 1024 shall be
`renumbered as Exhibits 3001, 3002, and 3003, respectively.
`
`
`III. ORDERS
`
`
`For the above reasons, it is:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is DENIED;
`FURTHER ORDERED that Exhibits 1022, 1023, and 1024 shall be
`renumbered as Exhibits 3001, 3002, and 3003, respectively; and
`FURTHER ORDERED that the parties may not rely on Exhibits
`3001, 3002, or 3003 in any further arguments or briefings in this matter.
`
`
`
`
`
`
`
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`11
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`
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`Case IPR2018-00082
`Patent 6,088,802
`
`FOR PETITIONER:
`Brian Buroker
`Blair Silver
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PATENT OWNER:
`Peter Lambrianakos
`Vincent J. Rubino, III
`Enrique W. Iturralde
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`eiturralde@brownrudnick.com
`
`12
`
`
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