UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`WESTERN DIGITAL CORPORATION
`Petitioner
`
`v.
`
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`_________________________
`
`Case No. IPR2017-______
`Patent 6,088,802
`_________________________
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,088,802
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`Petition for Inter Partes Review of US Patent No. 6,088,802
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION AND RELIEF REQUESTED .......................................... 1 
`I. 
`II.  GROUNDS FOR STANDING ........................................................................ 1 
`III.  PROPOSED GROUNDS OF UNPATENTABILITY .................................... 1 
`A. 
`Statutory Grounds for Challenge ........................................................... 2 
`B. 
`Prior Art Offered for the Present Unpatentability Challenges .............. 2 
`IV.  BACKGROUND ............................................................................................. 3 
`A.  Description of the ’802 Patent ............................................................... 3 
`B. 
`Technological Background .................................................................... 6 
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7 
`V. 
`VI.  CLAIM CONSTRUCTION ............................................................................ 7 
`“defined interaction” (all Claims) and “interaction with a host
`A. 
`computing device in a defined way” (Claims 38–39) ........................... 8 
`“peripheral device” (all Claims) ............................................................ 9 
`“security means for enabling one or more security operations to
`be performed on data” (Claims 1–2, 6–7, 11–12, 23–25) and
`“means for performing the one or more security operations”
`(Claim 39) ............................................................................................ 10 
`“target means for enabling a defined interaction with a host
`computing device” (Claims 1–2, 6–7, 11–12, 23–25) ........................ 11 
`“means for enabling communication between the security
`means and the target means” (Claims 1–2, 6–7, 11–12, 23–25) ......... 12 
`“means for enabling communication with a host computing
`device” (Claims 1–2, 6–7, 11–12, 23–25) ........................................... 12 
`
`B. 
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`G. 
`
`H. 
`
`“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” (Claims 1–2, 6–7) ........ 13 
`“means for mediating communication of data between the host
`computing device and the target means so that the
`communicated data must first pass through the security means”
`(Claims 1–2, 11–12, 23) ...................................................................... 14 
`“means for providing to a host computing device, in response to
`a request from the host computing device for information
`regarding the type of the peripheral device, information
`regarding the function of the target means” (Claims 6–7, 23–
`25) ........................................................................................................ 14 
`“means for non-volatilely storing data” (Claims 2, 12, 25) ................ 15 
`J. 
`VII.  THE PRIOR ART RENDERS OBVIOUS CLAIMS 1–2, 6–7, 11–12,
`23–25, 38–39 OF THE ’802 PATENT .......................................................... 15 
`A.  Cited Prior Art ..................................................................................... 16 
`1. 
`Harari ................................................................................................... 16 
`2. 
`PCMCIA System Architecture: 16-Bit PC Cards (1995) ................... 19 
`3.  Wang .................................................................................................... 22 
`4. 
`Dumas .................................................................................................. 24 
`B.  Ground 1: Claims 1–2, 6–7, 11–12, 23–25, and 38–39 are
`Rendered Obvious by Harari in View of PCMCIA System
`Architecture ......................................................................................... 25 
`1.  Motivation to Combine Harari and PCMCIA System
`Architecture ......................................................................................... 27 
`Independent Claim 1 ........................................................................... 28 
`Dependent Claim 2 .............................................................................. 45 
`Independent Claim 6 ........................................................................... 46 
`Dependent Claim 7 .............................................................................. 52 
`Independent Claim 11 ......................................................................... 53 
`Dependent Claim 12 ............................................................................ 53 
`Independent Claim 23 ......................................................................... 53 
`Independent Claim 24 ......................................................................... 54 
`
`I. 
`
`2. 
`3. 
`4. 
`5. 
`6. 
`7. 
`8. 
`9. 
`
`ii
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`10.  Dependent Claim 25 ............................................................................ 54 
`11. 
`Independent Claim 38 ......................................................................... 54 
`12. 
`Independent Claim 39 ......................................................................... 56 
`C.  Ground 2: Claims 1–2, 11–12, 23, and 39 are Rendered Obvious
`by Harari in View of Wang ................................................................. 59 
`1.  Motivation to Combine Harari, Wang, and PCMCIA System
`Architecture ......................................................................................... 59 
`2.  Wang Discloses Means for Mediating Communication of Data
`Between the Host Computing Device and the Target Means So
`That the Communicated Data Must First Pass Through the
`Security Means (Elements [1F], [11E], [23E], [39C]) ........................ 60 
`D.  Grounds 3-4: Claims 1–2, 11–12, 23, and 39 are Rendered
`Obvious for the Same Reasons as Grounds 1-2 when
`Considered Further in View of Dumas. .............................................. 64 
`1.  Motivation to Combine Dumas with Harari, PCMCIA System
`Architecture, and Wang ....................................................................... 65 
`Dumas Discloses 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 (Elements [1F], [11E], [23E], and [39C]) ............................... 66 
`VIII.  MANDATORY NOTICES ........................................................................... 67 
`IX.  CONCLUSION .............................................................................................. 69 
`
`
`2. 
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 8
`In Re Rambus Inc.,
`694 F.3d 42 (Fed. Cir. 2012) ................................................................................ 8
`Randall Mfg. v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) .......................................................................... 15
`SPEX Techs., Inc. v. Western Digital Corp.,
`Case No. 8:16-cv-01799 (C.D. Cal.) .................................................................. 67
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ............................................................................ 8
`Statutes
`35 U.S.C. § 102(b) ..................................................................................................... 3
`35 U.S.C. § 102(e) ..................................................................................................... 2
`35 U.S.C. § 103 ........................................................................................................ 15
`35 U.S.C. § 311(c) ..................................................................................................... 1
`Regulations
`37 C.F.R. § 42.6(e) ..................................................................................................... 1
`37 C.F.R. § 42.10(b) ................................................................................................ 68
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`
`
`iv
`
`

`

`
`
`
`Exhibit List
`
`
`
`Exhibit Number
`1001
`
`Document
`U.S. Patent No. 6,088,802 (“the ’802 Patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`Summons Returned as Executed, SPEX Techs., Inc. v.
`Western Digital Corp., Case No. 8:16-cv-01799 (C.D. Cal.
`filed Oct. 31, 2016)
`
`File History of the ’802 Patent
`
`U.S. Patent No. 5,887,145 to Harari et al. (“Harari”)
`
`U.S. Patent No. 6,199,163 to Dumas et al. (“Dumas”)
`
`Don Anderson, PCMCIA SYSTEM ARCHITECTURE: 16-
`BIT PC CARDS (MindShare, Inc., 2nd ed. 1995)
`(“PCMCIA Architecture”)
`
`U.S. Patent No. 5,822,196 to Hastings et al. (“Hastings”)
`
`U.S. Patent No. 5,922,060 to Goodrum (“Goodrum”)
`
`U.S. Patent No. 5,941,965 to Moroz et al. (“Moroz”)
`
`U.S. Patent No. 5,943,482 to Culley et al. (“Culley”)
`
`U.S. Patent No. 6,009,151 to Staples (“Staples”)
`
`Windows Developers Journal, Vol. 7, No. 8 (Aug. 1996)
`
`Claim Construction Briefing in SPEX Techs., Inc. v.
`Western Digital Corp., Case No. 16-cv-01799 (C.D. Cal.)
`(“SPEX Claim Construction Brief”)
`
`Tentative Order Regarding Claim Construction, Case No.
`16-cv-01799 (C.D. Cal.) (“Tentative Constructions”)
`
`Declaration of Dr. Martin Kaliski, Ph.D. (“Kaliski Decl.”)
`
`i
`
`

`

`
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Exhibit A (Updated) to Defendants’ Reply Claim
`Construction Brief
`
`Reporter’s Transcript of Proceedings in SPEX Techs, Inc.
`v. Kingston Tech. Corp., et al., Case No. 16-cv-01790
`(C.D. Cal.) (“Markman Hearing Transcript”)
`
`Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis Decl.”)
`
`U.S. Patent No. 5,765,027 to Wang et al. (“Wang”)
`
`MARC Record
`
`’802 Patent Challenged Claims
`
`Claim 1
`[1Pre] A peripheral device, comprising:
`[1A] security means for enabling one or more security operations to be
`performed on data;
`[1B] target means for enabling a defined interaction with a host computing
`device;
`[1C] means for enabling communication between the security means and the
`target means;
`[1D] means for enabling communication with a host computing device;
`[1E] means for operably connecting the security means and/or the target means
`to the host computing device in response to an instruction from the host
`computing device; and
`[1F] means for mediating communication of data between the host computing
`device and the target means so that the communicated data must first pass
`through the security means.
`Claim 2
`[2] A peripheral device as in claim 1, wherein the target means comprises means
`for non-volatilely storing data.
`Claim 6
`[6Pre] A peripheral device, comprising:
`[6A] security means for enabling one or more security operations to be
`performed on data;
`[6B] target means for enabling a defined interaction with a host computing
`device;
`
`ii
`
`

`

`
`
`[6C] means for enabling communication between the security means and the
`target means;
`[6D] means for enabling communication with a host computing device;
`[6E] means for operably connecting the security means and/or the target means
`to the host computing device in response to an instruction from the host
`computing device; and
`[6F] means for providing to a host computing device, in response to a request
`from the host computing device for information regarding the type of the
`peripheral device, information regarding the function of the target means.
`Claim 7
`[7] A peripheral device as in claim 6, wherein the target means comprises means
`for non-volatilely storing data.
`Claim 11
`[11Pre] A peripheral device, comprising:
`[11A] security means for enabling one or more security operations to be
`performed on data;
`[11B] target means for enabling a defined interaction with a host computing
`device;
`[11C] means for enabling communication between the security means and the
`target means;
`[11D] means for enabling communication with a host computing device; and
`[11E] means for mediating communication of data between the host computing
`device and the target means so that the communicated data must first pass
`through the security means.
`Claim 12
`[12] A peripheral device as in claim 11, wherein the target means comprises
`means for non-volatilely storing data.
`Claim 23
`[23Pre] A peripheral device, comprising:
`[23A] security means for enabling one or more security operations to be
`performed on data;
`[23B] target means for enabling a defined interaction with a host computing
`device;
`[23C] means for enabling communication between the security means and the
`target means;
`[23D] means for enabling communication with a host computing device;
`[23E] means for mediating communication of data between the host computing
`device and the target means so that the communicated data must first pass
`through the security means; and
`
`iii
`
`

`

`
`
`[23F] means for providing to a host computing device, in response to a request
`from the host computing device for information regarding the type of the
`peripheral device, information regarding the function of the target means.
`Claim 24
`[24Pre] A peripheral device, comprising:
`[24A] security means for enabling one or more security operations to be
`performed on data;
`[24B] target means for enabling a defined interaction with a host computing
`device;
`[24C] means for enabling communication between the security means and the
`target means;
`[24D] means for enabling communication with a host computing device; and
`[24E] means for providing to a host computing device, in response to a request
`from the host computing device for information regarding the type of the
`peripheral device, information regarding the function of the target.
`Claim 25
`[25] A peripheral device as in claim 24, wherein the target means comprises
`means for non-volatilely storing data.
`Claim 38
`[38Pre.1] For use in a peripheral device
`[38Pre.2] adapted for communication with a host computing device,
`[38Pre.3] performance of one or more security operations on data,
`[38Pre.4] and interaction with a host computing device in a defined way, a
`method comprising the steps of:
`[38A] receiving a request from a host computing device for information
`regarding the type of the peripheral device; and
`[38B] providing to the host computing device, in response to the request,
`information regarding the type of the defined interaction.
`Claim 39
`[39Pre.1] For use in a peripheral device
`[39Pre.2] adapted for communication with a host computing device,
`[39Pre.3] performance of one or more security operations on data,
`[39Pre.4] and interaction with a host computing device in a defined way, a
`method comprising the steps of:
`[39A] communicating with the host computing device to exchange data between
`the host computing device and the peripheral device;
`[39B] performing one or more security operations and the defined interaction on
`the exchanged data; and
`
`iv
`
`

`

`
`
`[39C] mediating communication of the exchanged data between the host
`computing device and the peripheral device so that the exchanged data must first
`[p]ass through means for performing the one or more security operations.
`
`v
`
`

`

`
`
`I.
`
`INTRODUCTION AND RELIEF REQUESTED
`Western Digital Corporation (“Petitioner”) petitions for institution of inter
`
`partes review of U.S. Patent No. 6,088,802 (“the ’802 Patent”) (Ex. 1001). The ’802
`
`Patent issued on July 11, 2000, and is assigned to SPEX Technologies, Inc. (“Patent-
`
`Owner”). Petitioner respectfully requests cancellation of claims 1–2, 6–7, 11–12,
`
`23–25, and 38–39 of the ’802 Patent based on the grounds of unpatentability detailed
`
`herein. The prior art and other evidence offered with this Petition establishes that
`
`all elements in the challenged claims of the ’802 Patent were well known as of the
`
`earliest alleged priority date, and that the claimed devices and methods recited in the
`
`’802 Patent are obvious.
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that the ’802 Patent is available for review under 35 U.S.C.
`
`§ 311(c) and that Petitioner is not estopped from requesting an inter partes review
`
`challenging claims 1–2, 6–7, 11–12, 23–25, and 38–39 on the grounds identified in
`
`this Petition.
`
`III. PROPOSED GROUNDS OF UNPATENTABILITY
`The present Petition relies on prior art references that have not been
`
`considered by the Patent Office in the file history of the ’802 Patent, Ex. 1003, and
`
`details how the challenged claims are obvious.
`
`1
`
`

`

`
`
`Statutory Grounds for Challenge
`
`A.
` Ground 1: Harari in view of PCMCIA System Architecture renders claims 1–2,
`
`6–7, 11–12, 23–25, and 38–39 obvious under §103(a);
`
` Ground 2: Harari in view of Wang and in further view of PCMCIA System
`
`Architecture renders claims 1–2, 11–12, and 23 obvious under § 103 (a);
`
` Ground 3: Harari in view of Dumas and PCMCIA System Architecture renders
`
`claims 1–2, 11–12, 23, and 39 obvious under § 103(a); and
`
` Ground 4: Harari in view of Dumas, Wang and PCMCIA System Architecture
`
`renders claims 1–2, 11–12, and 23 obvious under § 103 (a).
`
`B.
`Prior Art Offered for the Present Unpatentability Challenges
`Grounds 1-4 rely on the following patents and printed publications:
`
` U.S. Patent No. 5,887,145 to Harari et al. (“Harari”) (Ex. 1004) was filed on
`
`January 9, 1997; this reference is prior art at least under pre-AIA 35 U.S.C. §
`
`102(e) (the ’802 Patent’s earliest claimed priority date is June 4, 1997).
`
` U.S. Patent No. 5,765,027 to Wang et al. (“Wang”) (Ex. 1019) was filed on
`
`September, 26 1994; this reference is prior art at least under pre-AIA 35
`
`U.S.C. § 102(e).
`
` U.S. Patent No. 6,199,163 to Dumas et al. (“Dumas”) (Ex. 1005) was filed on
`
`March 26, 1996; this reference is prior art at least under pre-AIA 35 U.S.C. §
`
`102(e).
`
`2
`
`

`

`
`
` Don Anderson, PCMCIA System Architecture: 16-Bit PC Cards (MindShare,
`
`Inc., 2nd ed. 1995) (Ex. 1006). PCMCIA System Architecture was published
`
`in 1995, making it prior art at least under pre-AIA 35 U.S.C. § 102(b).
`
`PCMCIA System Architecture bears a copyright date of 1995 and a Library of
`
`Congress Cataloging-in-Publication with ISBN and been referenced as prior
`
`art in numerous patents filed before the earliest claim of priority in this case,
`
`including U.S. Patent No. 5,822,196 (filed June 5, 1996) (Ex. 1007); U.S.
`
`Patent No. 5,922,060 (filed December 31, 1996) (Ex. 1008); U.S. Patent No.
`
`5,941,965 (filed July 12, 1996) (Ex. 1009); U.S. Patent No. 5,943,482 (filed
`
`June 5, 1996) (Ex. 1010); U.S. Patent No. 6,009,151 (filed August 27, 1996)
`
`(Ex. 1011), to name a few. It also appears in a number of applications
`
`incorporated by reference or as admitted prior art by the applicant as well,
`
`including in the ’965 Patent (Ex. 1009) at 3:3336 and the ’151 Patent (Ex.
`
`1011) at 4:34-37, listed above. In addition, PCMCIA System Architecture was
`
`reviewed as a “recent title” in the August 1996 edition of the Windows
`
`Developer’s Journal. Ex. 1012 at 61-63. PCMCIA System Architecture was
`
`published and publicly available by September 22, 1995 according to its
`
`MARC record. See Hall-Ellis Decl., Ex. 1018 at ¶20; Ex. 1020.
`
`IV. BACKGROUND
`A. Description of the ’802 Patent
`
`3
`
`

`

`
`
`The ’802 Patent relates to a peripheral device that “communicate[s] with a
`
`host computing device to enable one or more security operations to be performed by
`
`the peripheral device on data stored within the host computing device, data provided
`
`from the host computing device to the peripheral device, or data retrieved by the host
`
`computing device from the peripheral device.” ’802 Patent, Ex. 1001, 1:21- 27. The
`
`’802 Patent illustrates the aim of the invention through figures that contrast the
`
`claimed invention with the prior art.
`
`Figures 1 and 2, below, are each a block diagram of an admitted “prior art
`
`system for enabling a host computing device to provide secured data to, and retrieve
`
`secured data from, a portable device.” Ex. 1001, 1:52–54; 2:22–24.
`
`
`
`4
`
`

`

`
`
`
`
`Id., Figs. 1 and 2.
`
`Figure 3A, reproduced below, illustrates how the claimed invention allegedly
`
`differs from the prior art: it moves the security function from either within the host
`
`computing device or a separate external device into the peripheral device at issue.
`
`
`
`Id., Fig. 3A; id. at 3:49-51. The alleged invention pertains to a peripheral device
`
`“adapted to enable, in a single integral peripheral device, performance of one or more
`
`security operations on data, and a defined interaction with a host computing device
`
`that has not previously been integrated with security operations in a single integral
`
`5
`
`

`

`
`
`device.” Id. at 3:28-33. “[D]efined interactions can provide a variety of types of
`
`functionality (e.g., data storage, data communication, data input and output, user
`
`identification).” Id. at 3:33-35. At bottom, the ’802 Patent is directed toward
`
`combining a security functionality with an additional functionality in the same
`
`peripheral device.
`
`Each challenged claim is directed to a “peripheral device” or a method “[f]or
`
`use in a peripheral device.” Claims 1–2, 6–7, 11–12, and 23–25 are device claims
`
`with means-plus-function elements related to providing security, a defined
`
`interaction, and establishing communications between various computer structures.
`
`Claims 38–39 are method claims with limitations that parallel the elements in the
`
`device claims.
`
`B.
`Technological Background
`By the early-to-mid 1990s, computers were household items with ever-
`
`increasing capabilities and an ever-expanding array of available peripheral devices
`
`(i.e., external devices that communicate with a computer) usable with a computer.
`
`Kaliski Decl., Ex. 1015, ¶25. To protect sensitive data and to limit access to
`
`authorized users, skilled artisans developed ways to secure data, such as by
`
`restricting access to data using passwords and encryption. Id., ¶27. Other related
`
`technologies such as public key/private key data encryption dates back to this era
`
`also. Id., ¶29. Developers began to place encryption within devices that perform
`
`6
`
`

`

`
`
`additional functions such as communication or data storage once the physical
`
`capabilities of the devices could support it. Id., ¶¶26-29. At the same time, a need
`
`arose to easily connect peripheral devices to host computers to enable
`
`communication between the two. Id., ¶31. Storage became smaller, lighter, and
`
`more powerful, utilizing solid state (or Flash) memory. Standards were developed
`
`to accomplish this. Id., ¶¶30-31. The Personal Computer Memory Card
`
`International Association (PCMCIA) released a standard in September 1990 that
`
`enabled a PC Card to easily mate with, for example, the portable computers of the
`
`era. Id., ¶32. At first, PCMCIA focused on memory card add-ons, but input/output
`
`devices (such as modems and network devices) followed shortly thereafter in
`
`Release 2.0. Id. With this development of easily portable peripherals, encryption
`
`capabilities, such as those mentioned above, became a critical need for many of these
`
`peripherals. Id.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art of the ’802 Patent would have at least a
`
`Bachelor’s degree in electrical engineering or computer science, and at least one year
`
`of experience in computer security and/or computer architecture for peripheral
`
`devices or equivalent education or experience. Kaliski Decl., Ex. 1015, ¶16.
`
`VI. CLAIM CONSTRUCTION
`Claims of an expired patent in inter partes review are construed according to
`
`7
`
`

`

`
`
`the standard applied in the district courts under Phillips v. AWH Corp., 415 F.3d
`
`1303 (Fed. Cir. 2005) (en banc). In Re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012); 37 C.F.R. § 42.100(b). Means-plus-function claim elements are restricted to
`
`“only the structure, materials, or acts described in the specification as corresponding
`
`to the claimed function and equivalents thereof.” Williamson v. Citrix Online, LLC,
`
`792 F.3d 1339, 1347-48 (Fed. Cir. 2015).
`
`Patent-Owner and Petitioner submitted claim construction briefing in the DCT
`
`Litigation.1 And the Court issued tentative constructions. Ex. 1014. This petition
`
`is based on the claim constructions urged by Patent-Owner in the DCT Litigation,
`
`or as the parties agreed. See Patent-Owner’s Opening Claim Construction Br.
`
`(“Claim Construction Br.”), Ex. 1013.
`
`A.
`
`“defined interaction” (all Claims) and “interaction with a host
`computing device in a defined way” (Claims 38–39)
`Patent-Owner argued that “defined interaction” is “a specific, predefined
`
`functionality of the device, such as a data storage, data communication, data input
`
`and output, or user identification.” Ex. 1013 at 3. Patent-Owner also asserted that
`
`“interaction with a host computing device in a defined way” is an “interaction with
`
`
`1 The Court has not yet entered an order construing the claims in the DCT
`
`Litigation.
`
`8
`
`

`

`
`
`a host computing device using a specific, predefined functionality of the device, such
`
`as data storage, data communication, data input and output, or user identification.”
`
`Ex. 1013 at 3-4. Outside the claims, the ’802 Patent mentions “defined interaction”
`
`only in the Abstract and the Summary of the Invention where it states “the peripheral
`
`device can be adapted to enable, in a single integral peripheral device, performance
`
`of one or more security operations on data, and a defined interaction with a host
`
`computing device that has not previously been integrated with security operations in
`
`a single integral device.” ’802 Patent, Ex. 1001, at Abstract; 3:28-33. The
`
`description further explains, “defined interactions can provide a variety of types of
`
`functionality (e.g., data storage, data communication, data input and output, user
`
`identification).” Id. at 3:33-35. The district court tentatively rejected that
`
`construction, and construed these terms as meaning: “an interaction [with a host
`
`computing device] that can provide a variety of functionalities.” Ex. 1014 at 6.
`
`B.
`“peripheral device” (all Claims)
`The ’802 Patent provides a definition of “peripheral device” stating,
`
`“‘peripheral device’ can refer to any device that operates outside of a host computing
`
`device and that is connected to the host computing device.” ’802 Patent, Ex. 1001,
`
`4:52-55. Patent-Owner thus proposed construing this term as “any device that
`
`operates outside of a host computing device (i.e. the keyboard-computer-screen
`
`system) and that is connected to the host computing device. Typical peripheral
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`9
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`

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`
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`devices include but are not limited to a disk drive and a printer.” Ex. 1013 at 6. The
`
`district court tentatively rejected that construction, and construed these terms as
`
`meaning: “a device that operates outside of a host computing device and that is
`
`connected to the host computing device, including such devices in the same housing
`
`as the host computing device.” Ex. 1014 at 9.
`
`C.
`
`“security means for enabling one or more security operations to
`be performed on data” (Claims 1–2, 6–7, 11–12, 23–25) and
`“means for performing the one or more security operations”
`(Claim 39)
`The parties agree that this is a means-plus-function term and that the recited
`
`function is “enabling one or more security operations to be performed on data”
`
`(Claims 1–2, 6–7, 11–12, 23–25) and “performing the one or more security
`
`operations” (Claim 39). Patent-Owner proposed that the corresponding structures
`
`are: (1) a cryptographic processing device 801 (processor capable of performing the
`
`cryptographic operations) based on ’802 Patent, Ex. 1001, at 15:63–64, Fig. 8; (2) a
`
`security token device that performs security operations and that includes one or more
`
`mechanisms (such as, for example, use of a hardware random number generator
`
`and/or protected memory) to provide security for the content of those operations
`
`based on 5:35–39; (3) a specific hardware component programmed or configured to
`
`perform a security operation based on 18:1–47; (4) a special purpose embedded
`
`processor, embodied on a single integrated chip and designated as MYK-82 (and
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`10
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`
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`referred to by the name Capstone), which includes an ARM6 processor core and
`
`several special purpose cryptographic processing elements that have been developed
`
`by the Department of Defense based on 16:1–6; or (5) equivalents thereof. Ex. 1013
`
`at 8–9.
`
`The district court tentatively agreed with the proposed function, but limited
`
`the structures to: (1) a specific hardware component programmed or configured to
`
`perform a security operation disclosed in ’802 Patent at 18:1-47 or (2) a special
`
`purpose embedded processor, embodied on a single integrated chip and designated
`
`as MYK-82 (and referred to by the name Capstone), which includes an ARM6™
`
`processor core and several special purpose cryptographic processing elements that
`
`have been developed by the Department of Defense (’802 Patent at 15:67-16:8). Ex.
`
`1014, at 13–14.
`
`D.
`
`“target means for enabling a defined interaction with a host
`computing device” (Claims 1–2, 6–7, 11–12, 23–25)
`The parties agreed on the construction in the DCT Litigation of this means-
`
`plus-function term, subject to Defendants’ argument regarding the indefiniteness of
`
`the term “defined interaction.” Ex. 1016, at Page 5. The recited function is
`
`“enabling a defined interaction with a host computing device.” The agreed
`
`corresponding structures based on the disclosure in the specification, and in view of
`
`the parties’ proposed constructions for “defined interaction,” are: (1) a memory
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`11
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`
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`module adapted to enable non-volatile storage of data (’802 Patent at 13:27–29); (2)
`
`a communications module adapted to enable communications between the host
`
`computing device and a modem or LAN transceiver (’802 Patent at 13:50–62); (3)
`
`a smart card reader (’802 Patent at 15:24–28); (4) biometric device (’802 Patent at
`
`14:10–19); or (5) equivalents therefore.
`
`E.
`
`“means for enabling communication between the security means
`and the target means” (Claims 1–2, 6–7, 11–12, 23–25)
`The parties agreed to the construction in the DCT Litigation for this means-
`
`plus-function term. Ex. 1016, at Page 6. The recited function is “enabling
`
`communication between the security means and the target means.” In the DCT
`
`Litigation, the parties agreed that the corresponding structure is conventional
`
`computer bus 615 based on the disclosure at 6:40-45. Ex. 1016, at Page 6.
`
`F.
`
`“means for enabling communication with a host computing
`device” (Claims 1–2, 6–7, 11–12, 23–25)
`This function for this means-plus-function term is “enabling communication
`
`with a host computing device.” Patent-Owner’s proposed corresponding structure
`
`includes: (1) Input/Output (I/O) device, for example a conventional computer bus
`
`based on 6:37-40; (2) PCMCIA based on 5:5-10; (3) Cord between housing and
`
`matching receptacle based on 7:3-5; (4) Wireless communication based on 5:5-10;
`
`(5) Smart card interface based on 5:5-10; (6) Serial interface (such as RS-232) based
`
`on 5:5-10; (7) Parallel interface based on 5:5-10; (8) SCSI interface based on 5:5-
`
`12
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`

`
`
`10; (9) IDE interface based on 5:5-10; or (10) equivalents thereof. Ex. 1013 at 15.
`
`The district court tentatively agreed with Patent-Owner. Ex. 1014 at 32–33.
`
`G.
`
`“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” (Claims 1–2, 6–7)
`This means-plus-function term’s function is “operably connecting the security
`
`means and/or the target means to the host computing device in response to an
`
`instruction from the host