Paper 34
`
`Trials@uspto.gov
`571-272-7822 Entered: January 10, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 10, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01404
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
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`
`I.
`INTRODUCTION
`Unified Patents Inc. (“Petitioner”) sought inter partes review of
`claims 1, 2, 13–15, 18, 33, 34, 39, 46, and 48 of U.S. Patent No. 6,968,459
`B1 (“the ’459 patent”), owned by Intellectual Ventures II, LLC (“Patent
`Owner”). Paper 2 (“Petition” or “Pet.”). Patent Owner filed a Preliminary
`Response. Paper 8 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted an inter partes review of claims 1,
`2, 13, 14, 33, 34, 39, 46, and 48 (the “Instituted Claims”) pursuant to
`35 U.S.C. § 314. Paper 9 (“Decision on Institution” or “Dec. on Inst.”). We
`did not institute, however, review of claims 15 and 18 because we
`determined that Petitioner had not established a reasonable likelihood it
`would prevail with respect to those claims. Id.
`During the trial, Patent Owner filed a Patent Owner Response
`(Paper 19, “PO Resp.”) and observations on cross examination (Paper 30).
`Petitioner filed a Reply to the Patent Owner Response (Paper 23, “Reply”)
`and a reply to Patent Owner’s observations (Paper 31). An oral hearing was
`conducted on November 14, 2017. The record contains a transcript of the
`hearing (Paper 33, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`preponderance of the evidence. See 35 U.S.C. § 316(e); see also 37 C.F.R.
`§ 42.1(d). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has failed to show by a preponderance of the evidence that any of the
`Instituted Claims are unpatentable.
`
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`
`II.
`BACKGROUND
`The ’459 patent (Ex. 1001)
`A.
`The ’459 patent seeks to create “a highly secure computing
`environment . . . preventing the appropriation of sensitive data.” Ex. 1001,
`1:13–31. The ’459 patent describes “a secure computing environment in
`which a computer automatically operates in a secure ‘full access’ data
`storage mode when the computer detects the presence of a secure removable
`storage device.” Id. at 1:35–39. If, however, the computer detects the
`presence of a removable storage device that is not secure, “then the
`computer automatically operates in a ‘restricted-access’ mode.” Id. at 1:39–
`42. Figure 1 of the ’459 patent is reproduced below.
`
`Figure 1 of the ’459 patent depicts a block diagram of a secure
`computing environment, including computer 100, which senses whether
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`storage device 151 is secure. Id. at 1:30–33. To determine whether a
`removable storage device is secure, the ’459 patent describes attempting to
`read “device-specific security information” from the storage device. Id. at
`5:7–10. The device-specific security information is “derived from the
`unique format information of the removable storage device.” Id. at 3:65–
`4:1. The ’459 patent elaborates:
`In one embodiment, the device-specific security information is a
`function of the low-level format information and, therefore,
`uniquely identifies the underlying media of storage device 151.
`For example, in one embodiment the device-specific security
`information is a hash of the addresses of the bad sectors for
`storage device 151. Because it is a function of the physical
`characteristics of the actual storage medium within storage
`device 151, the format information is inherently unique to each
`storage device 151. In other words, the addresses of the bad
`sectors change from device to device.
`
`
`Id. at 4:9–19.
`According to the ’459 patent, when a computer operates in a secure
`“full access” data storage mode, storage management software encrypts and
`decrypts data transmitted between the computer and the removable storage
`device using a cryptographic key. Id. at 3:61–64. The system of the ’459
`patent generates this cryptographic key by combining any number of the
`following types of information: “(1) device-specific security information
` . . . , (2) manufacturing information that has been etched onto the storage
`device, (3) drive-specific information, such as drive calibration parameters,
`retrieved from the storage drive, and (4) user-specific information such as a
`password or biometric information.” Id. at 3:65–4:5.
`When a computer operates in a “restricted-access” data storage mode,
`the computer operates the storage device as “read-only” such that the user
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`may read data from the device but may not write any data to the device. Id.
`at 1:63–66. Alternatively, the user may be permitted “to write the non-
`sensitive data to the removable storage device in an unencrypted format.”
`Id. at 1:66–2:2.
`B.
`Illustrative Claim
`Claims 1, 15, 18, 33, and 39 are independent. Claim 1
`illustrates the claimed subject matter and is reproduced below.
`1.
`A method comprising:
`sensing whether a storage device has device-specific
`security information stored thereon;
`operating a computer in a full-access mode when the
`storage device has the device-specific security information,
`wherein in the full-access mode the computer permits both read
`and write access to the storage device; and
`operating the computer in a restricted-access mode when
`the storage device does not have the device-specific security
`information, wherein in the restricted-access mode the computer
`permits read access to the storage device and prevents write
`access to the storage device.
`C.
`Evidence Relied Upon
`Petitioner relies on the following references:
`1. Bensimon et al., U.S. Patent No. 5,533,125, issued July 2, 1996
`(Ex. 1004, “Bensimon”).
`2. Takahashi et al., U.S. Patent No. 5,825,878, issued Oct. 20, 1998
`(Ex. 1005, “Takahashi”).
`3. Kimura, U.S. Patent No. 5,237,609, issued Aug. 17, 1993
`(Ex. 1006, “Kimura”).
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`Instituted Grounds of Unpatentability
`D.
`We instituted trial based on the following two grounds of
`unpatentability (Dec. on Inst. 31):
`References
`Statutory Ground Instituted Claims
`Bensimon
`35 U.S.C. § 102(b) 1, 13, 14, 33, 39, 46,
`and 48
`
`Bensimon & Takahashi 35 U.S.C. § 103(a) 2 and 34
`
`
`Testimony
`E.
`Petitioner supports its challenges with a declaration of
`Dr. Paul Franzon (Ex. 1002), filed contemporaneously with the Petition, and
`a supplemental declaration of Dr. Franzon (Ex. 1012), filed
`contemporaneously with the Reply. Dr. Franzon testified further by
`deposition on May 4, 2017, and a transcript of his testimony has been
`entered into the record. Ex. 2003.
`Patent Owner rebuts Petitioner’s challenges with a declaration of
`Dr. David Goldschlag (Ex. 2004), filed contemporaneously with the Patent
`Owner Response. Dr. Goldschlag testified further by deposition on
`August 25, 2017, and a transcript of his testimony has been entered into the
`record. Ex. 1011.
`F.
`Related Proceedings
`According to Petitioner, the ’459 patent is the subject of the following
`litigation in the United States District Court for the District of
`Massachusetts: Intellectual Ventures I, LLC and Intellectual Ventures II,
`LLC v. Lenovo Group Ltd., Lenovo (United States) Inc., LenovoEMC
`Products USA, LLC, and EMC Corp., No. 1:16-cv-10860 (D. Mass); and
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`Intellectual Ventures I, LLC and Intellectual Ventures II, LLC v. NetApp,
`Inc., No. 1:16-cv-10868 (D. Mass). Pet. 2.
`
`
`III. ANALYSIS
`Principles of Law
`A.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail in its challenges to the Instituted Claims,
`Petitioner must demonstrate by a preponderance of the evidence that the
`claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`A claim is unpatentable under 35 U.S.C. § 102(b) only if every
`element set forth in the claims is found, either expressly or inherently
`described in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil.
`Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention
`must be shown in as complete detail as is contained in the . . . claim.”
`Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The
`elements must be arranged as required by the claim, but identity of
`terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter as a whole would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
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`prior art; (3) the level of skill in the art; and (4) objective evidence of non-
`obviousness, i.e., secondary considerations such as commercial success, long
`felt but unsolved needs, and failure of others. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). The obviousness inquiry further requires an
`analysis of “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness”)).
`B.
`Level of Ordinary Skill in the Art
`Petitioner states––and Patent Owner does not dispute––that “a person
`having ordinary skill in the art of secure computer data storage devices (i.e.
`in the art for the ’459 patent) would have had (i) a B.S. degree in electrical
`engineering, computer engineering, computer science, or equivalent training,
`and (ii) approximately two years of experience in the design or research of
`secure computer data storage devices.” Pet. 4 (citing Ex. 1002 ¶ 32). We
`agree with Petitioner’s statement of the level skill of an ordinary artisan at
`the time and adopt it as our own. Although Patent Owner does not directly
`address an ordinary artisan’s level of skill, Petitioner’s description of the
`level of skill accords with that of Patent Owner’s witness Dr. Goldschlag.
`Compare id., with Ex. 2004 ¶ 21 (opining that “one of ordinary skill in the
`art would have had a Bachelor’s degree in Computer Science, Computer
`Engineering, Electrical Engineering, or equivalent training, as well as two to
`three years of technical experience in the field of computer security and
`storage devices.”). We further find the level of ordinary skill in the art is
`reflected by the prior art of record. See Okajima v. Bourdeau,
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`261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579
`(Fed. Cir. 1995).
`C.
`Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Under the broadest reasonable
`interpretation standard, and absent any special definitions, 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. In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definitions for claim terms or phrases must be set forth with reasonable
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994). In the absence of such a definition, limitations are not to
`be read from the specification into the claims. See In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993).
`The parties’ sole claim construction dispute focuses on the term
`“device-specific security information,” as recited in each of independent
`claims 1, 33, and 39. We interpret claim terms to the extent necessary to
`resolve the controversy before us. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy”). Accordingly, we construe below the term “device-
`specific security information” in order to resolve the parties’ claim
`construction dispute. We further determine that construction of additional
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`terms is not necessary for our analysis and, therefore, do not construe any
`additional terms. See id.
`Petitioner asserts “device-specific security information” means:
`“information that is specific to the storage device and used to secure access
`to the storage device.” Pet. 11 (citing Ex. 1002 ¶¶ 37–40). Patent Owner’s
`proposed construction differs from Petitioner’s only in that it replaces
`“specific” with “unique.” PO Resp. 7 (seeking construction of “device-
`specific security information” as “information that is unique to the storage
`device and used to secure access to the storage device.”). The parties’ claim
`construction dispute, therefore, turns on the meaning of “specific.”
`Citing a dictionary definition, Patent Owner argues that “specific”
`means “restricted to a particular individual, situation, relation, or effect,”
`such that the term “device-specific security information” means ‘“security
`information’ [that] must be ‘restricted to a particular’ device,” i.e. unique.
`PO Resp. 8 (citing Ex. 2006, 1198). Petitioner states the plain and ordinary
`meaning of “specific” is broader than that of “unique.” Reply 5 (citing Ex.
`1014, 3–4) (“While ‘specific’ requires some degree of particularity, it does
`not require the one-of-a-kind precision of ‘unique.’”). According to
`Petitioner, “device-specific information refers to information particular to,
`but not necessarily unique to, a device.” Id. (citing Ex. 1012 ¶ 5).
`Each of dependent claims 9 and 17 recites “a unique identifier stored
`within an electronic circuit embedded within the storage device.” Ex. 1001,
`9:58–59, 10:34–35. Although these claims are not at issue in this case, they
`evince the patentee’s desire to employ each of the terms “unique” and
`“specific” where each is intended. It is well established that ordinarily
`different claim terms are presumed to have different meanings. Applied
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`Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir.
`2006) (“[T]he use of two terms in a claim requires that they connote
`different meanings. . . .”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH,
`224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of evidence to the
`contrary, we must presume that the use of these different terms in the claims
`connotes different meanings.”). Further, the Specification describes that,
`depending on the selected security level, a cryptographic key can be
`generated using in part “device-specific security information derived from
`the unique format information of the removable storage device.” Ex. 1001,
`3:66–4:1. The Specification thus describes the format information of the
`removable storage device as “unique” but describes the security information
`of the device merely as “specific,” not “unique.” Finally, the Specification
`discloses “for exemplary purposes only” an embodiment wherein “a unique,
`device-specific security information can be generated from the unique
`characteristics of the underlying storage medium.” Id. at 7:43–47 (emphasis
`added). The Specification thus describes device-specific security
`information as unique in a particular, non-limiting example and explicitly
`indicates that the device-specific security information derived in that
`example is “unique.” See id.
`In light of the foregoing description, we disagree with Patent Owner’s
`arguments that “specific” in the context of the claim term “device-specific
`security information” means unique. Construing “specific” to mean
`“unique” as Patent Owner urges would render meaningless the subsequent
`use of “unique” in claims 9 and 17, without a clear indication in the
`Specification of such an intent. See In re Paulsen, 30 F.3d at 1480. Instead,
`we accord the word “specific” its ordinary and customary meaning and
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`construe “device-specific security information” as meaning “information
`particular to, but not necessarily unique to, a storage device and used to
`secure access to the storage device.” Although we construe the disputed
`term “device-specific security information,” our determination that
`Petitioner has failed to show by a preponderance of the evidence that any of
`the Instituted Claims are unpatentable is not dependent upon our
`construction, as detailed below.
`D.
`Anticipation based on Bensimon
`1.
`Overview of Bensimon
`Bensimon relates to a system for securing removable information
`storage devices, including “means for preventing the computer system from
`reading from, or writing to, the storage device absent the entry of a selected
`password by a user of the host computer system.” Ex. 1004, 2:45–49.
`Figure 1 of Bensimon is reproduced below.
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`Figure 1 of Bensimon depicts computer 10 and storage device 100,
`which Bensimon describes as “an ‘intelligent’ storage device.” Id. at 4:50,
`5:32–34. The intelligent storage device of Bensimon includes “a password
`security feature at the device level. Password security at the device level
`provides an advantage over system-level password security in that a stolen
`storage device cannot be used in any computer unless the thief also knows
`the password.” Id. at 4:50–56.
`Figure 3 of Bensimon is reproduced below.
`
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`Figure 3 of Bensimon depicts “a simplified block diagram of an
`intelligent removable information storage device 100 in accordance with the
`invention.” Id. at 4:35–45. In a preferred embodiment of Bensimon, “the
`password and a password enabling flag are stored in the media 102 itself,
`along with the protected data, rather than with the control electronics.” Id. at
`6:35–37.
`The invention of Bensimon employs “two classes of passwords:
`(1) Write protection (read-only); and (2) Read/Write protection. In the case
`of write protection passwords, the device 100 is fully operational [but] write
`or format operations are disabled. In the read/write protection mode, the
`device 100 is rendered useless” without the password. Id. at 6:13–19. That
`is, a user not having the password “is both unable to use the device and to
`access the data contained therein” such that even read-only access is
`prohibited. Id. at 6:19–23.
`2.
`Claim 1
`Claim 1 recites, in relevant part, sensing whether a storage device has
`“device-specific security information” stored thereon, operating in a “full-
`access mode” permitting both read and write access “when the storage
`device has the device-specific security information,” and operating in a
`“restricted-access mode” permitting read access but preventing write access
`“when the storage device does not have the device-specific security
`information.” Ex. 1001, 9:16–28.
`Relying on the testimony of Dr. Franzon, Petitioner identifies
`Bensimon’s read/write password, either alone or in combination with the
`password-enabling flag, as meeting the claimed “device-specific security
`information.” Reply 13; Pet. 22 (citing Ex. 1002 ¶¶ 52–60). Petitioner
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`further states the read/write password and password-enabling flag are
`“sensed” as claimed because Bensimon describes a host system that is
`“password aware,” wherein the system determines whether a password is
`required to use the storage device and prompts the user for the password.
`Pet. 24 (citing Ex. 1004, 6:30–34).
`Petitioner identifies Bensimon’s “read/write protection mode” as
`meeting the claimed full-access mode. Pet. 23. According to Petitioner, this
`“step of claim 1 is met in a situation where Bensimon’s storage device 100
`has the password-enabling flag and the read/write password as the ‘device-
`specific security information.’” Id. at 26 (citing Ex. 1002 ¶ 61). Petitioner
`continues: “In this case, if the user correctly enters the read/write password
`on the storage device 100 . . ., the user is given full access to the storage
`device 100 (i.e., both read and write access).” Pet. 26 (citing Ex. 1004,
`6:13–29).
`With regard to the claimed “restricted-access mode,” Petitioner states
`this “step of claim 1 is met in a situation where Bensimon’s storage device
`100 does not have the read-write password as ‘device specific security
`information’ but instead has the write-only password.” Pet. 27. Petitioner
`clarifies: “Bensimon’s read/write password alone, or together with the
`password-enabling flag, discloses ‘device-specific security information.’
`Thus, when Bensimon’s storage device 100 only has the write-protection
`(read-only) password, Bensimon discloses that the storage device does not
`have ‘device-specific security information’ because it does not have the
`read-write password.” Reply 16 (internal citations omitted).
`Patent Owner contends, inter alia, that Petitioner fails to identify in
`Bensimon explicit or inherent disclosure of the claimed restricted-access
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`mode because “Bensimon never discloses that its system has a mode of
`operation where a read-only password is present but not a read-write
`password.” PO Resp. 18–29.
`Based on the complete evidentiary record before us, we determine
`Petitioner has not identified in Bensimon explicit or inherent disclosure of
`the claimed restricted-access mode. Claim 1 requires operating in restricted-
`access mode “when the storage device does not have the device-specific
`security information.” Ex. 1001, 9:24–26. Petitioner identifies Bensimon’s
`read/write password, either alone or in combination with the password-
`enabling flag, as meeting the claimed device-specific security information.
`Reply 13; Pet. 22. Thus, in order to meet the requirements of claim 1,
`Petitioner is required to show that Bensimon discloses operating in
`restricted-access mode when the storage device does not have the read/write
`password, or alternatively does not have the combination of the read/write
`password and password-enabling flag. See, e.g., In re Bond, 910 F.2d at 832
`(Fed. Cir. 1990) (holding that in order to show anticipation, claimed
`elements must be arranged as required by the claim).
`Petitioner does not make the required showing. As Petitioner argues:
`“these claims recite operating in one mode if ‘the device-specific security
`information’ (i.e., that instance of device-specific security information) is
`present, and operating in another mode if ‘the device-specific security
`information’ (i.e., that instance of device-specific security information) is
`not present.” Reply 16. Petitioner identifies Bensimon’s read/write
`password, alone or in combination with the password-enabling flag, as the
`device-specific security information, yet Petitioner does not identify in
`Bensimon an explicit disclosure that Bensimon’s storage device operates in
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`the claimed restricted-access mode when the read/write password is absent
`from the device. See id. at 16–22. Rather, Bensimon describes two different
`possible modes of operation when the read/write password is absent from the
`storage device, namely either no protection or write protection. Ex. 1004,
`5:33–39, 6:3–4, 6:13–29. Contrary to the claim language, operation in
`Bensimon’s write protection mode depends upon the presence of the write
`protection password, not upon the absence of the read/write password and
`password-enabling flag (i.e. the claimed device-specific security
`information). Ex. 1004, 6:13–23; see also Reply 16 (citing Ex. 1012 ¶ 18)
`(asserting the claimed restricted-access mode is met “when Bensimon’s
`storage device 100 only has the write-protection (read-only) password”).
`This disclosure is insufficient to establish anticipation because claim 1
`requires operating in restricted access mode when the storage device does
`not have the device-specific storage information, which Petitioner asserts is
`the read/write password and password-enabling flag. “A claim is anticipated
`only if each and every element as set forth in the claims is found.”
`Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
`1987).
`We similarly are not persuaded that Bensimon inherently anticipates
`claim 1. “Under the principles of inherency, if the prior art necessarily
`functions in accordance with, or includes, the claimed limitations, it
`anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
`2002) (citations and internal quotation marks omitted). Here, the cited
`disclosure identifies two possible modes of operation when the read/write
`password and password-enabling flag are absent from Bensimon’s storage
`device, neither of which necessarily must occur.
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`
`
`Having considered the parties’ positions in light of the full trial
`record, we determine for the reasons set forth above that Petitioner has
`failed to show by a preponderance of the evidence that Bensimon
`anticipates claim 1.
`3.
`Claims 13, 14, 33, 39, 46, and 48
`Petitioner asserts Bensimon anticipates independent claims 33 and 39,
`which Petitioner asserts are of commensurate scope with claim 1. Pet. 29–
`30 (analysis of claim 33) and 31–32 (analysis of claim 39). Petitioner does
`not present separate arguments on either claim 33 or claim 39, instead
`relying on the arguments presented on claim 1. Id. Claim 1 recites a
`method, claim 33 recites a computer-readable medium containing
`instructions for performing a method, and claim 39 recites a computer
`comprising components for performing particular functions. For purposes of
`our analysis, we determine that claims 33 and 39, although differing in
`format, do not require a separate analysis from claim 1. Petitioner further
`relies on its analysis of claim 1 to assert Bensimon anticipates dependent
`claims 13, 14, 46, and 48. Pet. 27–28 (analysis of claims 13 and 14) and 32–
`33 (analysis of claims 46 and 48).
`Accordingly, for the reasons discussed above in the context of claim 1
`and based on the full trial record, we determine that Petitioner has failed to
`show by a preponderance of the evidence that Bensimon anticipates
`independent claims 33 and 39, and dependent claims 13, 14, 46, and 48. See
`supra Section III.D.2.
`E. Obviousness of Claims 2 and 34 based on Bensimon in
`combination with Takahashi
`Petitioner asserts dependent claims 2 and 34 would have been obvious
`in light of Bensimon and Takahashi. Pet. 36–40 (analysis of claim 2) and
`
`18
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`42–43 (analysis of claim 34). Petitioner’s analysis of these claims does not
`repair the deficiencies described above with regard to the claimed restricted-
`access mode. See id.; see also Reply 25. Accordingly, for the reasons
`discussed above in the context of claim 1 and based on the full trial record,
`we determine that Petitioner has failed to show by a preponderance of the
`evidence that claims 2 and 34 would have been obvious in light of Bensimon
`and Takahashi. See supra Section III.D.2.
`
`
`IV. SUMMARY
`We conclude Petitioner has not shown by a preponderance of the
`
`evidence that the Instituted Claims are unpatentable.
`
`
`V. ORDER
`
`It is, therefore,
`ORDERED that Petitioner has not demonstrated by a preponderance
`of the evidence that claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 of U.S. Patent
`No. 6,968,459 are unpatentable; and
`FURTHER ORDERED that because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of the decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
`
`
`
`
`19
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`FOR PETITIONER:
`Lionel M. Lavenue
`James D. Stein
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Lionel.Lavenue@finnegan.com
`James.Stein@finnegan.com
`
`Roshan Suresh Mansinghani
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`PATENT OWNER:
`Lori A. Gordon
`Byron Pickard
`Steven Peters
`STERNE, KESSLER GOLDSTEIN & FOX PLLC
`lgordon-ptab@skgf.com
`bpickard@skgf.com
`speters@skgf.com
`
`
`20
`
`
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