`571-272-7822
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`
`
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`Paper 10
`Entered: March 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GREAT WEST CASUALTY COMPANY, BITCO GENERAL
`INSURANCE CORPORATION, and
`BITCO NATIONAL INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`TRANSPACIFIC IP I LTD. and
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01912
`Patent 8,929,555 B2
`____________
`
`
`
`Before MICHAEL W. KIM, THOMAS L. GIANNETTI, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Great West Casualty Company, BITCO General Insurance
`Corporation, and BITCO National Insurance Company (collectively
`“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319 to institute
`
`
`
`IPR2015-01912
`Patent 8,929,555 B2
`
`an inter partes review of claims 1, 7, and 13–15 of U.S. Patent No.
`8,929,555, issued on January 6, 2015 (Ex. 1001, “the ’555 patent”). Paper 1
`(“Pet.”). Transpacific IP I Ltd. and Intellectual Ventures II LLC
`(collectively “Patent Owner”) filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
`which requires demonstration of a reasonable likelihood that Petitioner
`would prevail with respect to at least one challenged claim, we institute an
`inter partes review of all challenged claims.
`I. BACKGROUND
`A. The ʼ555 patent (Ex. 1001)
`The ʼ555 patent is entitled “Data Encryption Systems and Methods.”
`The ’555 patent generally relates to data encryption methods that involve the
`generation of encryption key seeds that may be utilized for generating data
`encryption keys. Ex. 1001, 1:35–43. The ’555 patent recites:
`The system includes a storage device storing data and an
`encryption/decryption module.
` The encryption/decryption
`module randomly generates a device key seed according to the
`occurrence time of a specific operation or the interval between
`two specific operations on the storage device, and applies the
`device key seed to data encryption.
`
`
`
`Id. at Abstract. The ’555 patent discloses a storage device and a host, each
`of which includes an encryption/decryption module. Id. at 3:1–2, 7–9, 11–
`16, Fig. 1. The host may be a processor-based electronic device, such as a
`computer system, an electronic schoolbag, or a mobile device. Id. at 3:4–7.
`The storage device is used for storing data and may also be a mobile device,
`such as a mobile phone, USB handy disk, or a language learning machine.
`Id. at 3:9–11; see also id. at Abstract, Fig. 1.
`
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`According to the ’555 patent, the encryption/decryption modules may
`
`be implemented in either hardware or software and are responsible for
`generating key seeds and keys, as well as performing encryption and
`decryption operations. Id. at 3:7–9, 15–20. The storage device receives a
`read data request, and in response randomly generates a device key seed Sd
`according to the time of a specific operation or the interval between two
`specific operations on the storage device. Id. at 3:25–30. The device key
`seed is also randomly generated “in response to interrupts that notify the
`storage device of occurrence of the two specific operations.” E.g., id. at
`5:17–20.
`
`
`
`B. Illustrative Claim
`Claims 1, 7, and 15 are the contested independent claims. Claim 1 is
`illustrative of the claims at issue and is reproduced below:
`1. A data encryption system, comprising:
`a storage device adapted to store data D, the storage device
`including:
`an encryption/decryption module adapted to randomly
`generate a device key seed Sd according to a time interval
`between two specific operations on the storage device, and
`adapted to apply the generated device key seed Sd to data
`encryption of the data D,
`wherein the storage device is adapted to randomly
`generate the device key seed Sd in response to interrupts that
`notify the storage device of occurrence of the two specific
`operations.
`Ex. 1001, 5:9–20. Claims 1, 7, and 15 are similar in scope. One notable
`difference is that claim 1 refers to “an encryption/decryption module adapted
`to,” but claims 7 and 15 do not require such a module.
`
`
`
`3
`
`
`
`C. Related Proceedings
`Petitioner identifies the following related proceedings involving the
`ʼ555 patent: Intellectual Ventures II LLC v. BITCO General Insurance
`Corporation f/k/a Bituminous Casualty Corporation et al, Civ. No. 6-15-cv-
`00059 (E.D. Tex.), Intellectual Ventures II LLC v. Great West Casualty
`Company, Civ. No. 6-15-cv-00060 (E.D. Tex.), and Intellectual Ventures I
`LLC et al v. HCC Insurance Holdings, Inc. et al., Civ. No. 6-15-cv-00660
`(E.D. Tex.). Pet. 1–2. See also Paper 5 (Patent Owner Mandatory Notices).
`
`D. References
`Petitioner relies on the following references:
`Reference
`
`Date
`Apr. 12, 2002
`(filed)
`Oct. 16, 2003
`(published)
`July 3, 19961
`
`Exhibit
`
`Ex. 1005
`
`Ex. 1006
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`IPR2015-01912
`Patent 8,929,555 B2
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`
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`Dillaway
`
`US 7,545,931 B2
`
`Dev/Random
`
`
`Extracting
`Randomness
`
`Theodore Ts’o, random.c – A
`strong random number
`generator, version 1.00, last
`modified May 26, 1996
`
`José Castejón-Amenedo et al.,
`Extracting Randomness From
`External Interrupts, IASTED
`Int’l Conf. on Comm., Network,
`and Information Security,
`presented Dec. 10–12, 2003
`
`Dec. 10, 2003 Ex. 1007
`
`
`Petitioner also relies on the Declaration of Bruce Schneier. Ex. 1003.
`
`
`1 For purposes of this Decision, we accept Petitioner’s evidence that
`Dev/Random was a publicly available printed publication as of July 3, 1996.
`See Pet. 21–24 and accompanying exhibits.
`
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`E. Grounds Asserted
`Petitioner challenges the patentability of claims 1, 7, and 13–15 of the
`
`ʼ555 patent on the following grounds (Pet. 2–3):
`Reference(s)
`Basis
`Dillaway
`§ 102
`
`Claims Challenged
`1, 7, and 13–15
`
`Dillaway
`
`Dillaway and
`Dev/Random
`
`Dillaway and Extracting
`Randomness with or
`without Dev/Random
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`1, 7, and 13–15
`
`1, 7, and 13–15
`
`§ 103(a)
`
`13 and 14
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under the rule of broadest reasonable interpretation, claim terms are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Furthermore,
`if the applicant for patent desires to be its own lexicographer, the purported
`definition must be set forth in either the specification or prosecution history.
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Only terms which are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman
`
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`Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Further, in this Decision,
`we determine that it is only necessary to address certain claim terms
`proposed for construction by one of the parties.
`1. “device key seed Sd”
`Each claim at issue requires a “device key seed Sd.” Petitioner
`proposes that the broadest reasonable interpretation of this term “includes
`‘an input to an encryption key generation algorithm of the storage device,’”
`and “the Board need not define the term further.” Pet. 8. Patent Owner does
`not address Petitioner’s proposed interpretation of “device key seed Sd.” See
`Prelim. Resp. 11–14.
`Petitioner contends its proposed interpretation is appropriate because
`the Specification “explains that the disclosed ‘device key seed Sd’ is
`generated by the disclosed encryption/decryption module,” and “that the key
`seed is used by the storage device to generate an encryption key.” Pet. 8
`(citing Ex. 1001, 1:38–39, 1:49–50, 2:19–21, 4:32–34). Referring to the
`Specification, Petitioner also notes the seed is used as an input to a detailed
`algorithm for generating an encryption key. Id. at 9 (citing Ex. 1001, 4:4–
`20). Thus, according to Petitioner, the Specification discloses that the
`“‘device key seed’” is used as an input to a process for generating an
`encryption key and the broadest reasonable interpretation should embrace
`that disclosure. Id.
`As additional support, Petitioner contends its interpretation is
`consistent with the proposed construction of Patent Owner’s exclusive
`licensee in related litigation. See I.C, supra. “Patent Owner’s exclusive
`licensee has proposed that ‘device key seed’ be construed to mean ‘[a] digital
`value used to generate cryptographic keys.’” Pet. 9–10 (quoting Ex. 1024).
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`On this record, we agree with Petitioner that the broadest reasonable
`interpretation, in light of the Specification, of device key seed Sd “includes
`‘an input to an encryption key generation algorithm of the storage device.’”
`Pet. 8.
`
`2. “interrupt”
`Petitioner requests we construe the term “interrupt” recited in each of
`claims 1, 7, and 15. Pet. 11. Petitioner proposes “[t]he broadest reasonable
`construction of ‘interrupt’ is ‘a signal from a device to a computer’s
`processor requesting attention from the processor, such as a request for
`service generated by hardware components (e.g., a keyboard, mouse, disk
`drive, I/O port, and microprocessor).’” Id.
`
`Patent Owner contends Petitioner’s proposed construction is improper
`“because it is not the broadest reasonable interpretation of ‘interrupt.’”
`Prelim. Resp. 14. In particular, Patent Owner contends the material after
`“such as” was unnecessarily incorporated from an unrelated patent, and the
`example goes beyond the ordinary meaning. Id.
`
`On this record, we agree with Patent Owner, and determine that the
`additional language offered by the Petitioner, specifically “such as a request
`for service generated by hardware components (e.g., a keyboard, mouse,
`disk drive, I/O port, and microprocessor),” is unnecessary to the broadest
`reasonable interpretation of “interrupt.” We therefore construe “interrupt,”
`as “a signal from a device to a computer’s processor requesting attention
`from the processor.” See Ex. 1013 at 285.
`
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`3. “wherein the device key seed Sd is said randomly generated in
`response to interrupts that notify the storage device of
`occurrence of the two specific operations”
`Patent Owner contends the language “in response to interrupts” found
`in each independent claim should be changed to “is caused by interrupts.”
`Prelim. Resp. 13. Patent Owner argues the terminology used in the claim
`“denotes causation,” and “indicates that interrupts cause the random
`generation of the device key seed.” Id. Patent Owner relies on a statement,
`or argument, it made during prosecution of the application leading to the
`’555 patent as support for this change. Id. The statement, addressing
`features of the Khare prior art reference, reads: “the interrupt causes the
`‘seed’ to be ‘loaded’ into the pseudo-random number generator 325, rather
`than causing the ‘seed’ to be ‘generated’ by the pseudo-random number
`generator 325.” Ex. 1002 at 221.
`Based on the record before us, including the statement made during
`prosecution, we disagree with Patent Owner that the claimed wherein clause
`should be rewritten to substitute “is caused by interrupts” with the language
`of the claim — “in response to interrupts.” Patent Owner contends its
`proposed construction is mandated by the arguments it made during
`prosecution. Prelim. Resp. 13. The statement relied on by Patent Owner
`addresses the alleged shortcomings of the Khare prior art reference, but we
`disagree this statement mandates the interpretation proposed by Patent
`Owner. At this stage of the proceedings, we determine that “in response to
`interrupts” need not be interpreted as Patent Owner proposes.
`B. Anticipation of Claims 1, 7, and 13–15 Based On Dillaway
`
`Petitioner contends that these claims are anticipated by Dillaway
`under 35 U.S.C. §§ 102(a), (b), and (e). Pet. 2, 15. Dillaway was filed on
`
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`April 12, 2002, published on October 16, 2003, and is therefore prior art
`under 35 U.S.C. §§ 102(a), (b), and (e). Ex. 1005. For the reasons that
`follow, we conclude that Petitioner has met the standard for instituting a
`review of claims 1, 7, and 13–15 based on this challenge.
`1. Dillaway Overview
`Dillaway relates to protecting information critical to an application’s
`functionality, and it describes a method and system for securely storing,
`managing, and sending critical application data (application secrets).
`Ex. 1005, Abstract. Dillaway likewise describes “protecting information
`critical to an application’s functionality by encrypting data based on
`machine-specific entropy and application-specific evidence.” Id. at 1:6–9.
`Dillaway discloses that it is “applicable to any general purpose computing
`platform capable of running a variety of operating systems, virtual machines;
`and applications . . . .” Id. at 4:37–43.
`Dillaway explains that its “inventive methods may be embodied as
`computer readable instructions stored on a computer readable medium such
`as a floppy disk, CD-ROM, removable storage device, hard disk, system
`memory, or other data storage medium.” Id. at 6:8–12 (referring to Fig. 2).
`According to Dillaway, “computer readable medium 201 may store one or
`more software modules, such as code components 411, SSC module 403,
`entropy 405, and encrypted data store 409.” Id. at 6:15–18, Fig. 2. The SSC
`module, or “secret store component” (id. at 3:42) module “manages
`application secrets” and its function may store or retrieve encrypted secret
`data to or from the encrypted store. Id. at 6:41–45, Fig. 2.
`The “SSC Module” of Dillaway can securely store “SSC (or machine-
`specific) internal entropy data, compute encryption keys . . . encrypt and
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`decrypt secret data using predefined cryptographic algorithms, and provide
`persistent storage of encrypted secrets.” Id. at 6:53–61 (referring to Fig. 4).
`The entropy used by the SSC module of Dillaway “may be any data that
`cannot easily be determined by an attacker and that is specific to an instance
`of SSC 403.” Id. at 6:63–64. The entropy preferably “includes random
`binary data specific to the SSC in a given computer environment” and “may
`be computed using any high quality random number generator.” Id. at 6:62–
`7:2, Fig. 4. Dillaway discloses that “[r]eliable random number generators
`may use a hardware source of randomness if available, or it may use a
`software random number generator that uses multiple sources of
`unpredictable events such as a hard disk head position, time between
`keyboard entries, and so forth.” Id. at 7:2–6.
`In reference to Figure 5, Dillaway further describes “a method for
`protecting a code component secret by encrypting the secret using a key
`based on the code component’s evidence, as well as on machine-specific
`entropy.” Id. at 8:27–31. The SSC module “retrieves the machine-specific
`entropy byte array,” (step 505) and then “calculates the cryptographic key K
`that will be used to encrypt the secret S by combining the evidence with the
`entropy” (step 507). Id. at 8:45–51. “[T]he SSC encrypts S using key K,”
`(step 511) and “[f]inally in step 513, SCC 403 stores the encrypted secret in
`persistent data store 409.” Id. at 9:12–26.
`2. Discussion
`For each limitation of claims 1, 7, and 13–15, Petitioner identifies
`elements in Dillaway corresponding to the ʼ555 patent claims. Pet. 27–40.
`Petitioner relies also on testimony from its expert, Mr. Schneier. See Ex.
`1003 ¶¶ 97–114. For example, Petitioner asserts that the limitation “adapted
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`to randomly generate a device key seed Sd according to a time interval
`between two specific operations on the storage device” of independent claim
`1 is met by Dillaway’s disclosure of the SSC Module storing internal
`entropy data and using it to compute encryption keys and encrypt and
`decrypt secret data using predefined cryptographic algorithms. Pet. 32–34.
`Specifically, Petitioner cites Dillaway as disclosing that entropy may be
`created from the “time between keyboard entries” as a random number
`generator. Ex. 1005 at 7:5–6; see also id. at 6:62–7:8 (“Entropy . . . includes
`random binary data specific to the SSC in a given computer environment . . .
`may be computed using any high quality random number generator.”).
`Petitioner contends “[a] person of ordinary skill in the art would understand
`that a ‘keyboard entry’ is a type of ‘specific operation’ on the generalized
`computing platform of Dillaway.” Pet. 34 (citing Ex. 1003 ¶ 113).
`As another example, Petitioner contends the “wherein clause” of
`claim 1, requiring random generation of “the device key seed Sd in response
`to interrupts,” is met by Dillaway’s disclosure of “keyboard entries,” which
`Petitioner asserts are known interrupts. Pet. 36–38. Specifically,
`Petitioner’s expert explains that “[a] keyboard entry in the Windows-based
`and Linux-based computing platforms disclosed by Dillaway necessarily
`creates an interrupt upon pressing of the key.” Ex. 1003 ¶ 132. Based on
`this record, we are persuaded by Petitioner’s contentions that Dillway meets
`this limitation of claim 1, and similarly worded independent claims 7 and 15.
`Claims 13 and 14, which depend from claims 1 and 7 respectively,
`further require that the random generation of the device key seed Sd occur
`“according to an occurrence time of one of the specific operations as
`obtained from a clock.” Petitioner asserts that Dillaway’s disclosure of
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`using “time between keyboard entries,” would necessarily require obtaining
`the occurrence time of at least one of the keyboard entries from a clock in
`order to calculate the time between them. Pet. 38 (citing Ex. 1003 ¶ 145).
`For instance, the time would have to be calculated either by obtaining the
`time of a system clock or through use of a counter. Id. Petitioner asserts
`that both would qualify as a “clock” under the broadest reasonable
`interpretation of that term. See Ex. 1003 ¶ 145 (“a counter used to count
`time would be considered by a person or ordinary skill in the art to be a
`clock”). On this record, we are persuaded by Petitioner’s contentions that
`this limitation of claims 13 and 14 is met.
`On this record, therefore, we determine that Petitioner demonstrates a
`reasonable likelihood of prevailing on this ground of challenge to claims 1,
`7, and 13–15.
`C. Obviousness of Claims 1, 7, and 13–15 Over Dillaway
`Petitioner contends these claims are also obvious over Dillaway. Pet.
`40–43 (citing Ex. 1003 ¶¶ 115, 133, 146). For reasons similar to those set
`forth above, and in the analysis and claim charts provided in the Petition for
`this challenge, we are persuaded that Petitioner has also met the threshold
`showing required by § 314(a) with respect to these claims. We therefore
`institute a review of claims 1, 7, and 13–15 based on this challenge.
`D. Obviousness of Claims 1, 7, and 13–15 Over Dillaway and
`Dev/Random
`Petitioner contends that the subject matter of these claims would have
`been obvious over Dillaway and Dev/Random. Pet. 43–52. We have
`considered the information provided by Petitioner, including the claim-by-
`claim, element-by-element analysis, and the supporting Declaration of Mr.
`Bruce Schneier (Ex. 1003). Pet. 43–52. We are persuaded, based on this
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`record, that Petitioner has demonstrated a reasonable likelihood of prevailing
`on this challenge as to all claims.
`1. Dev/Random Overview
`Dev/Random discloses a number generation routine for the Linux
`operating system that was developed purportedly by Dr. Theodore Ts’o in
`1994. Ex. 1006, 1. Dev/Random describes that “[t]his routine gathers
`environmental noise from device drivers, etc., and returns good random
`numbers, suitable for cryptographic use.” Id. The “random number
`generator” was implemented through the Linux source code file “random.c.”
`Id. Petitioner has presented evidence that “[v]ersion 1.00 of that source code
`was last modified on May 26, 1996, and was publically available for
`redistribution by programmers as of July 3, 1996, making it a printed
`publication for purposes of Section 102.” Pet. 21–24, 24 (“The version of
`Dev/Random relied on here was thus publically available before November
`23, 2003 and is therefore prior art to the 555 Patent pursuant to 35 U.S.C. §§
`102 (a) and (b).”).
`Dev/Random explains that its routine “gathers environmental noise
`from device drivers, etc., and returns good numbers, suitable for
`cryptographic use.” Ex. 1006 at 1. Dev/Random relies on sources of
`randomness from the environment including, “inter-keyboard timings, inter-
`interrupt timings from some interrupts, and other events which are both (a)
`non-deterministic and (b) hard for an outside observer to measure.” Id. at 1–
`2. The sources of randomness are added into an “entropy pool, which is
`mixed using a CRC-like function” on every interrupt. Pet. 24–25 (quoting
`Ex. 1006 at 2 (“Randomness from these sources are added to an ‘entropy
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`pool’ . . . randomness is . . . fast enough that the overhead of doing it on
`every interrupt is very reasonable.”)).
`Dev/Random explains that three exported interfaces may be used for
`gathering environmental noise from the device, including:
`add_keyboard_randomness(unsigned char scancode)
`add_mouse_randomness(__u32mouse_data)
`add_interrupt_randomness(int irq)
`Ex. 1006 at 2–3. These interfaces apparently provide random input into the
`entropy pool. Id. at 3. Dev/Random explains that the
`add_keyboard_randomness function uses the timing between presses on a
`keyboard as a source of entropy. Id. at 3 (“add_keyboard_randomness()
`
`uses the inter‐keypress timing, as well as the scancode as random inputs into
`
`the ‘entropy pool.’”). Likewise, Dev/Random discloses that the
`add_interrupt_randomness function uses the timing between interrupts as
`“random inputs to the entropy pool.” Id.
`2. Discussion
`Petitioner’s element-by-element analysis attempts to demonstrate
`where each limitation of claims 1, 7, and 13–15 is met by the Dillaway and
`Dev/Random combination. Pet. 43–52. For example, Petitioner identifies
`the “wherein” clause in the independent claims as corresponding to the
`Dev/Random’s “interface called ‘add_interrupt_randomness’ that ‘uses the
`
`inter‐interrupt timing as random inputs to the entropy pool’ and specifically
`
`discloses that ‘[d]isk interrupts’ should be used.” Pet. 49 (quoting Ex. 1006
`at 2). As explained by Petitioner, “[t]he ‘add_interrupt_randomness’ method
`therefore generates entropy in response to the interrupts that notify the
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`system of the occurrence of operations such as disk accesses and keyboard
`or mouse operations.” Id.
`As another example, for claims 13 and 14, Petitioner explains that
`“Dev/Random discloses an interface called ‘add_timer_randomness’ which
`uses the occurrence time of a specific operation as obtained from a clock to
`generate a random number.” Id. at 50. Petitioner notes that information
`from this routine is added to the entropy pool and its generation is based on
`clock ticks. Id. at 50–51 (citing Ex. 1003 ¶ 147). Accordingly, Petitioner
`presents evidence demonstrating Dev/Random teaches or suggests
`“randomly generat[ing] the device key seed Sd according to an occurrence
`time of one of the specific operations as obtained from a clock,” as recited
`by each of claims 13 and 14.
`Petitioner asserts additionally that a person of ordinary skill in the art
`would have been motivated to combine the teachings of Dillaway and
`Dev/Random for multiple reasons. Id. at 45–48; Ex. 1003 ¶¶ 120–25. At
`this stage, we are satisfied that Petitioner has sufficiently explained the
`reasons a person of ordinary skill would have combined Dev/Random with
`Dillaway.
`We have considered Petitioner’s arguments, including Mr. Schneier’s
`Declaration. On this record, we are persuaded that they are sufficient to
`demonstrate a reasonable likelihood of prevailing on this challenge to claims
`1, 7, and 13–15.
`E. Obviousness of Claims 13 and 14 Over Dillaway, Dev/Random,
`and Extracting Randomness
`Petitioner contends that the subject matter of these claims would have
`been obvious over Dillaway, Dev/Random, and Extracting Randomness.
`Pet. 53–55. Although Petitioner states that this combination may be with or
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`without Dev/Random, Petitioner presents the grounds as a combination of all
`three references. See Pet. 53–55. We therefore exercise our discretion and
`only consider obviousness over Dillaway, Dev/Random, and Extracting
`Randomness for this ground. We have considered the information provided
`by Petitioner, including the claim-by-claim, element-by-element analysis,
`and the supporting Declaration of Mr. Schneier (Ex. 1003). Pet. 53–55. We
`are persuaded, based on this record, that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this challenge.
`1. Extracting Randomness Overview
`The paper Extracting Randomness From External Interrupts
`(“Extracting Randomness”) lists copyright 2003, and Petitioner has
`presented evidence demonstrating a publication date of December 10, 2003.
`Thus, the reference would be prior art to the ’555 patent pursuant to 35
`U.S.C. § 102(a). See Ex. 1007; Pet. 26; Ex. 1003 ¶ 94.
`Extracting Randomness describes “a method for generating random
`bits on a computer system using interrupts from external sources (e.g.,
`keyboard strokes, hard-disk I/O completions, network packet arrivals, etc).”
`Ex. 1007 at 141. The reference purportedly “show[s] how a sequence of
`timestamps of external interrupts can be converted into a uniformly
`distributed random sequence of 0’s and 1’s” and then “how the random
`sequence can later be used in blocking (/ dev / random) and nonblocking (/
`dev / urandom) devices for providing a source of random bits in an UNIX
`environment.” Id. Extracting Randomness uses an entropy gathering
`mechanism with “timestamps derived directly from the processor clock.” Id.
`at 142. Further, timestamps of interrupts are apparently transformed “into
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`truly random bits” with the timestamp being “the value of the clock register
`at the time when an interrupt is recorded.” Id.
`2. Discussion
`Petitioner’s element-by-element analysis attempts to demonstrate
`where each limitation of claims 13 and 14 is met by the Dillaway,
`Dev/Random, and Extracting Randomness combination. Pet. 53–55. For
`example, Petitioner identifies the “according to an occurrence time of one of
`the specific operations as obtained from a clock” limitation, recited in both
`claims 13 and 14, as corresponding to Extracting Randomness’ disclosure
`that the occurrence time of various operations on a computer, as obtained
`from a system clock, may be used as a source of entropy for a random
`number generator employed in an encryption module. See Pet. 53–54.
`Petitioner also notes that Extracting Randomness “specifically suggest[s] its
`use with dev/random in particular” and “[t]he authors further provide an
`express suggestion to use a clock to obtain the occurrence time of operations
`used for entropy purposes.” Id.
`We have considered Petitioner’s arguments, including Mr. Schneier’s
`Declaration. On this record, we determine that they are sufficient to
`demonstrate a reasonable likelihood of prevailing on this ground of
`challenge to claims 13 and 14.
`F. “Redundant” Grounds
`Patent Owner contends that the Board should deny certain grounds
`because they are “redundant.” Prelim. Resp. 5–9.
`Based on the record before us, we are unpersuaded that we should
`exercise our discretion in denying institution of certain grounds for the
`reasons set forth by Patent Owner. For example, we are unpersuaded that
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`the asserted obviousness ground based on Dillaway should not be
`maintained alongside the anticipation ground based on Dillaway. Petitioner
`has made a sufficient threshold showing on both grounds. For example,
`Petitioner provides distinct reasoning and expert testimony to support the
`ground based on obviousness. See Pet. 40–43 (citing Ex. 1003 ¶¶ 115, 133,
`146). In addition, Petitioner identifies what Patent Owner may or may not
`argue are shortcomings in Dillaway’s disclosure, and thereafter provides two
`additional references (Dev/Random and Extracting Randomness) directed at
`those areas. See Pet. 43–55. We determine that the use of the two additional
`references is rational, narrowly targeted, and not burdensome considering
`only five claims with very similar limitations are at issue. We determine
`also that Petitioner’s arguments adequately explain why each of the two
`additional references may more closely satisfy certain claim limitations at
`issue than compared to Dillaway alone. The Petition also conveys the
`circumstances in which the full combination may be stronger. For instance,
`claims 13 and 14 each require “an occurrence time of one of the specific
`operations as obtained from a clock” and Dev/Random with Extracting
`Randomness seemingly provide specific routines describing use of clock for
`entropy. On these facts, we decline to exercise our discretion to deny any
`ground set forth in the Petition.
`III. CONCLUSION
`Petitioner has demonstrated a reasonable likelihood that it will prevail
`in establishing the unpatentability of claims 1, 7, and 13–15 of the ’555
`patent.
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`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or the
`construction of any claim term.
`
`
`IV. ORDER
`
`It is, therefore,
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted on the following grounds:
`Claims 1, 7, and 13–15 under 35 U.S.C. § 102 as anticipated based on
`Dillaway;
`Claims 1, 7, and 13–15 under 35 U.S.C. § 103 as obvious over
`Dillaway;
`Claims 1, 7, and 13–15 under 35 U.S.C. § 103 as obvious over
`Dillaway and DEV/RANDOM; and
`Claims 13 and 14 under 35 U.S.C. § 103 as obvious over Dillaway,
`Dev/Random, and Extracting Randomness;
`FURTHER ORDERED that review based on any other proposed
`grounds of unpatentability is not authorized; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this decision.
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`PETITIONER:
`Joseph A. Micallef
`Russell E. Cass
`Erik J. Carlson
`Vernon M. Winters
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`rcass@sidley.com
`ecarlson@sidley.com
`vwinters@sidley.com
`
`
`
`PATENT OWNER:
`Brenton R. Babcock
`Ted M. Cannon
`Scott Raevsky
`Bridget A. Smith
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2BRB@knobbe.com
`2tmc@knobbe.com
`2bzs@knobbe.com
`
`Tim Seeley
`James Hietala
`Scott Raevsky
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`2sxr@knobbe.com
`
`
`
`
`
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