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Kingston Technology Company, Inc. v. SPEX Technologies, Inc.

Docket IPR2018-01003, Patent Trial and Appeal Board (May 2, 2018)
Charles Boudreau, Daniel Fishman, Lynne Pettigrew, presiding
Case TypeInter Partes Review
Patent6088802
Patent Owner SPEX Technologies, Inc.
Petitioner Kingston Technology Company, Inc.
Petitioner Toshiba America Electronic Components
...
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13 Order: Order Conduct of Proceeding Denying Petitioners Motion to File a Reply 37 CFR 425

Document IPR2018-01003, No. 13 Order - Order Conduct of Proceeding Denying Petitioners Motion to File a Reply 37 CFR 425 (P.T.A.B. Oct. 12, 2018)
Our Order (Paper 22) also clarified that our rules require that a Petitioner’s Reply be limited to addressing only issues raised in a Patent Owner Response.
Therefore, Patent Owner contends Petitioner had “a full and fair opportunity to analyze its disclosure for a structure equivalent to the interface control device 910,” and thus, has no basis “to obtain a ‘do-over’ on reply” when it specifically decided not to present that argument in its Petition.
Accordingly, we are not persuaded a denial of Petitioner’s Motion to file a Reply in the absence of a Patent Owner Response would deny Petitioner’s Due Process rights.
The Petition discussed a construction of the recited means for mediating but did not clearly adopt any particular construction: 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).
Petitioner cites Senator Kyl’s comments in the Congressional Record and Clearlamp, LLC v. LKQ Corp., 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016) as supporting its contention that a new ground must necessarily rely on new Case IPR2018-00082 Patent 6,088,802 references or a new statutory basis.
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12 Institution Decision: Trial Instituted Document

Document IPR2018-01003, No. 12 Institution Decision - Trial Instituted Document (P.T.A.B. Oct. 9, 2018)
Patent Owner opposes the joinder of Kingston to the 82 IPR, arguing: On October 16, 2017, after having reviewed two preliminary responses by SPEX and two institution denials by
the PTAB, Western Digital filed a third petition in case number IPR2018-00082 (“82-IPR”) alleging that claims 1-2, 6-7, 11-12, 23-25, and 38-39 of the ’802 Patent were unpatentable over Harari and other references.
Paper 14, 16–20 (addressing Patent Owner’s arguments urging we exercise our discretion to deny the WDC Petition in the 82 IPR based on the General Plastic factors).
Accordingly, we grant Kingston’s Motion for Joinder with the 82 IPR, subject to the condition that: Petitioner here (i.e., Kingston Technology Company, Inc.) will be bound by all substantive and procedural filings and representations of current Petitioner in IPR2018-00082 (i.e., Western Digital Corporation), without a separate opportunity to be heard, whether orally or in writing, unless and until the proceeding is terminated with respect to Western Digital Corporation.
In view of the foregoing, we determine that joinder based upon the above-noted condition will have little or no impact on the timing, cost, or presentation of the trial on the instituted grounds.
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7 Notice: Notice of Accepting Corrected Petition

Document IPR2018-01003, No. 7 Notice - Notice of Accepting Corrected Petition (P.T.A.B. May. 16, 2018)
Mailed: May 16, 2018 Before Carrie Johnson, Trial Paralegal
The corrected petition filed on May 15, 2018, in the above proceeding is accepted.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
To file documents, users must first obtain a user ID and password by registering with PRPS.
Patent 6,088,802 regarding how to register with and use PRPS is available at the Board Web site.
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5 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2018-01003, No. 5 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. May. 10, 2018)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration,
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11 Opposition: Patent Owners Opposition to Petitioners Motion for Joinder, Coordi...

Document IPR2018-01003, No. 11 Opposition - Patent Owners Opposition to Petitioners Motion for Joinder, Coordination, and a Shortened Time to File a Preliminary Response (P.T.A.B. Jun. 4, 2018)

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3 Petition: IPR Petition USP6088802

Document IPR2018-01003, No. 3 Petition - IPR Petition USP6088802 (P.T.A.B. May. 2, 2018)
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).
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.
“The functional module 42 may provide error detection and correction, encryption and decryption, compression and decompression of data, image, audio and voice, as well as other features useful in the mobile computing environment.” Id. at 8:60–64.
“Card services provides a software layer consisting of high-level functions that programmers can call to gain access to a card, determine its configuration requirements, and request the system resources it requires.” Id. at 28.
Wang improves Harari by teaching a specific system for moving data between a host computer and a peripheral communication module with a PCMCIA form factor.
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2 Petition: IPR Petition US Patent No 6,088,802

Document IPR2018-01003, No. 2 Petition - IPR Petition US Patent No 6,088,802 (P.T.A.B. May. 2, 2018)
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).
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.
“The functional module 42 may provide error detection and correction, encryption and decryption, compression and decompression of data, image, audio and voice, as well as other features useful in the mobile computing environment.” Id. at 8:60–64.
“Card services provides a software layer consisting of high-level functions that programmers can call to gain access to a card, determine its configuration requirements, and request the system resources it requires.” Id. at 28.
Wang improves Harari by teaching a specific system for moving data between a host computer and a peripheral communication module with a PCMCIA form factor.
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