Paper 9
`
`Entered: January 11, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`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, PETER P. CHEN, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Entered: January 11, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`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, PETER P. CHEN, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-01404
`Patent 6,968,459 B1
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Unified Patents Inc. requested, on July 11, 2016, inter
`
`partes review of claims 1, 2, 13–15, 18, 33, 34, 39, 46, and 48 (the
`
`“Challenged Claims”) of U.S. Patent No. 6,968,459 B1 (“the ’459 patent”).
`
`Paper 2 (“Petition” or “Pet.”). On October 19, 2016, Patent Owner
`
`Intellectual Ventures II, LLC filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless it is determined that there is “a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” Based on the information presented in the Petition and
`
`Preliminary Response, we are persuaded that there is a reasonable likelihood
`
`Petitioner would prevail with respect to claims 1, 2, 13, 14, 33, 34, 39, 46,
`
`and 48. We are not persuaded, however, that there is a reasonable likelihood
`
`Petitioner would prevail with respect to claims 15 and 18.
`
`Accordingly, we institute inter partes review of claims 1, 2, 13, 14,
`
`33, 34, 39, 46, and 48 on the grounds specified below. Our factual findings
`
`and conclusions at this stage of the proceeding are based on the evidentiary
`
`record developed thus far. This is not a final decision as to patentability of
`
`claims for which inter partes review is instituted. Further, we decline to
`
`institute inter partes review of claims 15 and 18 for the reasons set forth
`
`below.
`
`
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`2
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`IPR2016-01404
`Patent 6,968,459 B1
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`
`II.
`
`BACKGROUND
`
`A.
`
`The ’459 patent (Ex. 1001)
`
`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 that senses whether 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
`
`
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`3
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`IPR2016-01404
`Patent 6,968,459 B1
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`“device-specific security information” from the storage device. Id. at 5:7–
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`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:
`
`the device-specific security
`In one embodiment,
`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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`4
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`IPR2016-01404
`Patent 6,968,459 B1
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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 claims. Claim 1 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. 5,553,125, 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”).
`
`5
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`IPR2016-01404
`Patent 6,968,459 B1
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`Petitioner further relies on the Declaration of Dr. Paul Franzon
`
`(Ex. 1002).
`
`D.
`
`Proposed Grounds of Unpatentability
`
`Petitioner advances the following grounds of unpatentability:
`
`References
`
`Statutory Ground Challenged 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, 15, and 34
`
`Kimura & Takahashi
`
`35 U.S.C. § 103(a) 18
`
`
`E.
`
`Related Proceedings
`
`Petitioner identifies the following related matters: 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 Intellectual Ventures I, LLC and
`
`Intellectual Ventures II, LLC v. NetApp, Inc., No. 1:16-cv-10868 (D. Mass).
`
`Pet. 2.
`
`
`
`III. CLAIM CONSTRUCTION
`
`Petitioner seeks construction of the following terms: “device-specific
`
`security information,” “device-specific information,” “user-specific security
`
`information,” “status change . . . for the storage device,” and “storage
`
`manager.” Pet. 11–17. Patent Owner urges that we need not construe the
`
`terms of the Challenged Claims. Prelim. Resp. 6. Because construction of
`
`the terms proposed by Petitioner is not necessary to our analysis on whether
`
`to institute a trial, we do not construe these terms. Vivid Techs., Inc. v. Am.
`
`6
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`Patent 6,968,459 B1
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`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only
`
`claim terms in controversy need to be construed, and only to the extent
`
`necessary to resolve the controversy).
`
`
`
`IV. ANALYSIS
`
`A. Overview of Cited References
`
`1.
`
`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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`7
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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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`8
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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.
`
`2.
`
`Takahashi
`
`Takahashi teaches a secure memory management unit “fabricated on a
`
`single integrated circuit chip 10.” Ex. 1005, 2:28–30. Figure 1 of Takahashi
`
`is reproduced below.
`
`Figure 1 of Takahashi depicts “a block diagram of a preferred
`
`embodiment of a secure memory management unit” on integrated circuit
`
`chip 10. Id. at 2:26–34. Takahashi’s secure memory management unit
`
`“comprises a memory controller 16 and a secure digital memory access
`
`controller 14.” Id. at 2:48–49. The primary function of this secure memory
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`9
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`Patent 6,968,459 B1
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`management unit is “to read encrypted external program code instructions
`
`and data stored in the external memory,” decrypt these instructions, and
`
`store the information in a secure random access memory (“RAM”). Id. at
`
`2:32–40.
`
`3.
`
`Kimura
`
`Kimura describes “a portable information memory card and a system
`
`for utilizing such card which provides security without the necessity for an
`
`onboard microprocessor.” Ex. 1006, 18:40–43. The system of Kimura
`
`stores on the portable memory card two separate pieces of information to be
`
`used in a security check comparison: (i) an identification code and (ii)
`
`external identification information. Id. at 18:40–60. The identification code
`
`is internal information specific to the particular memory card and cannot be
`
`easily read out from the card because it “is not available to the interface bus
`
`under any circumstances.” Id. The external identification information is
`
`encrypted and thus must be read out from the card and decrypted in order to
`
`perform the security check comparison. Id.
`
`B.
`Anticipation of Claims 1, 13, 14, 33, 39, 46, and 48 based on
`Bensimon
`
`1.
`
`Claim 1
`
`Petitioner asserts Bensimon anticipates independent claim 1. Pet. 20–
`
`27. We have reviewed the information provided by Petitioner, including the
`
`relevant portions of the supporting Franzon Declaration. Petitioner’s
`
`analysis demonstrates where Bensimon discloses each element of claim 1.
`
`Id. For example, relying on the Franzon Declaration, Petitioner contends
`
`Bensimon’s password and password-enabling flag stored on the storage
`
`media meet the claimed “device-specific security information.” Id. at 22
`
`(citing Ex. 1002 ¶¶ 52–60). According to Petitioner, Bensimon discloses the
`
`10
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`Patent 6,968,459 B1
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`claimed “full-access mode” permitting read and write access when
`
`Bensimon’s storage device 100 has the password-enabling flag and the
`
`read/write password as the “device-specific security information.” Pet. 26
`
`(citing Ex. 1002 ¶ 61); see also Ex. 1004, 6:13–29. Further, Petitioner
`
`contends Bensimon discloses the claimed “restricted-access mode”
`
`permitting read access and preventing write access when Bensimon’s storage
`
`device 100 has the password-enabling flag and the “write protection (read-
`
`only) password” as the “device-specific security information.” See Pet. 27
`
`(citing Ex. 1002 ¶¶ 62–63); see also Ex. 1004, 6:13–29.
`
`Patent Owner argues Bensimon does not disclose the “restricted-
`
`access mode” because when Bensimon’s password security is not enabled,
`
`the device operates in an “unprotected mode.” Prelim. Resp. 10 (citing Ex.
`
`1004, 6:3–4). Similarly, Patent Owner argues Bensimon does not disclose
`
`the “restricted-access mode” because, “if the write protection (read only)
`
`password is not entered correctly, write access and read access are
`
`restricted.” Prelim. Resp. 12. We are not persuaded by Patent Owner’s
`
`arguments. Claim 1 recites, “A method comprising. . . .” “The transition
`
`‘comprising’ in a method claim indicates that the claim is open-ended and
`
`allows for additional steps.” Invitrogen Corp. v. Biocrest Manufacturing,
`
`L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). The presence of an additional
`
`“unprotected mode” in Bensimon, therefore, is not excluded by the scope of
`
`claim 1. Similarly, the presence of an additional mode preventing access
`
`due to incorrect password entry is not excluded by the scope of claim 1.
`
`Rather, we agree with Petitioner that Bensimon discloses the claimed
`
`“restricted-access mode” permitting read access and preventing write access
`
`in the situation where Bensimon’s storage device 100 has the password-
`
`11
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`IPR2016-01404
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`enabling flag and the correctly-entered “write protection (read-only)
`
`password.” See Pet. 27 (citing Ex. 1002 ¶¶ 62–63); see also Ex. 1004, 6:13–
`
`29.
`
`Patent Owner additionally argues Bensimon lacks the claimed
`
`“device-specific security information” because “Bensimon’s passwords are
`
`‘user-specific information’—a user selects and sets the password.” Prelim.
`
`Resp. 15 (emphasis omitted). Thus, according to Patent Owner, “the user
`
`can assign the exact same password to each and every device in Bensimon.”
`
`Id. We are not persuaded by Patent Owner’s argument. To the extent Patent
`
`Owner contends passwords may not be “device-specific security
`
`information,” we disagree. The ’459 patent does not disclose that device-
`
`specific security information must not include passwords, or that all
`
`passwords are user-specific rather than device-specific. See Ex. 1001, 3:65–
`
`4:5. Moreover, Petitioner relies on both Bensimon’s password and its
`
`password-enabling flag, and cites Bensimon’s description of the password-
`
`enabling flag stored on the storage media as a “unique string of characters.”
`
`Pet. 26–27 (citing Ex. 1004, 6:13–29). We agree with Petitioner, based on
`
`the record before us and at this stage of the proceeding, that at least
`
`Bensimon’s password and password-enabling flag stored on the device are
`
`“device-specific” as required by claim 1.
`
`For the reasons discussed above and based on the current record
`
`at this stage of the proceeding, we determine Petitioner has shown a
`
`reasonable likelihood of prevailing on this anticipation challenge to
`
`claim 1.
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`2.
`
`Claims 33 and 39
`
`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. Accordingly, for the
`
`reasons discussed above in the context of claim 1 and based on the current
`
`record at this stage of the proceeding, we determine Petitioner has shown a
`
`reasonable likelihood of prevailing on this anticipation challenge to claims
`
`33 and 39. See supra Section IV.B.1.
`
`3.
`
`Claims 13 and 14
`
`Petitioner asserts Bensimon anticipates dependent claims 13 and 14.
`
`Pet. 27–28. We have reviewed the information provided by Petitioner,
`
`including the relevant portions of the supporting Franzon Declaration.
`
`Petitioner’s analysis demonstrates where Bensimon discloses each element
`
`of claims 13 and 14. Id. For example, Petitioner contends Bensimon meets
`
`the claim 13 limitation of performing the claimed sensing step “when a
`
`status change is detected” and the claim 14 limitation that “the status change
`
`indicates the insertion of the storage device into the computer” because
`
`Bensimon discloses:
`
`Upon insertion of the pc card 100 into the computer 10,
`“[h]ost systems that are password aware may look at this
`
`13
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`data field prior to attempting access, and determine
`whether the password is required to be issued to the
`drive. Preferably, this issuance will be accomplished via
`system prompt of the user.
`
`
`Id. at 28 (citing Ex. 1004, 6:30–34).
`
`Patent Owner argues Bensimon fails to meet the limitations of claim
`
`13 and 14 because “Bensimon does not disclose detecting the insertion of
`
`the PC card, let alone performing the ‘sensing’ step once the detection
`
`occurs.” Prelim. Resp. 18 (emphasis omitted). We are not persuaded by
`
`Patent Owner’s arguments. The passages of Bensimon cited by Petitioner
`
`disclose that “password aware” systems determine whether a password is
`
`required to be issued to the card prior to attempting access to the card (i.e.,
`
`sensing whether a storage device has device-specific security information
`
`stored thereon). Ex. 1004, 6:30–32. If a password is required to be issued,
`
`Bensimon discloses prompting the user to issue the password. Id. at 6:32–
`
`34. According to Bensimon, this process allows the user to enable
`
`protection for a pc card not previously in a password protected mode upon
`
`insertion of the pc card into the computer (i.e., “when a status change is
`
`detected . . . the status change indicates the insertion of the storage device
`
`into the computer”). Id. at 5:32–40. Therefore, we agree with Petitioner,
`
`based on the record before us and at this stage of the proceeding, that
`
`Bensimon meets the limitations of claims 13 and 14.
`
`For the reasons discussed above and based on the current record
`
`at this stage of the proceeding, we determine Petitioner has shown a
`
`reasonable likelihood of prevailing on this anticipation challenge to
`
`claims 13 and 14.
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`4.
`
`Claims 46 and 48
`
`Petitioner asserts Bensimon anticipates dependent claims 46
`
`and 48. Pet. 32–33. We have reviewed the information provided by
`
`Petitioner, including the relevant portions of the supporting Franzon
`
`Declaration. Petitioner’s analysis demonstrates where Bensimon
`
`discloses each element of claims 46 and 48. Id. Specifically,
`
`Petitioner cites Bensimon’s pc card 100 as meeting the “removable
`
`storage medium” recited in claim 46 and the magnetic disk within pc
`
`card 100 as meeting the “disk-shaped storage medium” recited in
`
`claim 48. Id. at 33. Patent Owner does not present separate
`
`arguments on these issues. See Prelim. Resp. 17–20. Accordingly,
`
`based on the current record at this stage of the proceeding, we
`
`determine Petitioner has shown a reasonable likelihood of prevailing
`
`on this anticipation challenge to claims 46 and 48.
`
`C. Obviousness of Claims 2, 15, and 34 based on Bensimon in
`combination with Takahashi
`
`1.
`
`Claims 2 and 34
`
`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
`
`42–43 (analysis of claim 34). We have reviewed the information provided
`
`by Petitioner, including the relevant portions of the supporting Franzon
`
`Declaration. Petitioner’s analysis demonstrates where the elements of
`
`claims 2 and 34 are taught or suggested by Bensimon and Takahashi. Id.
`
`For example, Petitioner relies on Takahashi’s secure memory management
`
`unit whose primary function is “to read encrypted external program code
`
`instructions and data stored in the external memory” (Ex. 1005, 2:26–40),
`
`decrypt these instructions, and store the information in a secure RAM as
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`15
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`teaching or suggesting the claim 2 limitations: “encrypting digital data to be
`
`written to the storage device from the computer” and “decrypting digital data
`
`read from the storage device by the computer.” Pet. 36–38 (citing Ex. 1005,
`
`2:26–39). Petitioner further relies on Takahashi as teaching or suggesting
`
`“encrypting digital data to be written to the storage drive; and decrypting
`
`digital data read from the storage device,” as recited by claim 34. Id. at 42–
`
`43.
`
`Finally, relying on the Franzon Declaration, Petitioner asserts one of
`
`ordinary skill in the art would have been motivated to combine the cited
`
`references because “one of ordinary skill would have recognized that, by
`
`adding Takahashi’s technique to Bensimon’s system, the unauthorized user
`
`would not only have to know the password for the device as described by
`
`Bensimon, but would also need to have the particular encryption firmware as
`
`described by Takahashi.” Id. at 38–40 (citing Ex. 1002 ¶ 81; see also id. ¶
`
`82).
`
`Patent Owner advances no argument on claim 34 and argues regarding
`
`claim 2 that Petitioner fails to show the cited references teach or suggest
`
`automatically performing the encrypting and decrypting. Prelim. Resp. 21.
`
`We are not persuaded by this argument because Takahashi teaches
`
`performing the cited encryption and decryption without user intervention via
`
`direct memory access controller 14 and memory controller 16. Ex. 1005,
`
`2:60–3:20.
`
`For the reasons discussed above and based on the current record
`
`at this stage of the proceeding, we determine Petitioner has shown a
`
`reasonable likelihood of prevailing on this obviousness challenge to
`
`claims 2 and 34.
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`2.
`
`Claim 15
`
`Claim 15 recites, in relevant part, providing full-access when the
`
`storage device senses device-specific security information by encrypting and
`
`decrypting digital data “using the security information.” Thus, claim 15
`
`requires using the device-specific security information to encrypt and
`
`decrypt digital data.
`
`Petitioner asserts independent claim 15 would have been obvious in
`
`light of Bensimon and Takahashi. Pet. 40–42. More particularly, Petitioner
`
`contends, “It would have been obvious to encrypt the outbound data (i.e., the
`
`data written to the storage device) in Takahashi using the ‘security
`
`information’ of Bensimon.” Pet. 42. This is because, according to
`
`Petitioner, “Bensimon’s ‘security information’ is made up of a password
`
`already shared by the storage device 100 and the host computer 10.” Id.
`
`Petitioner does not proffer any citations from Bensimon in support for this
`
`statement. After concluding the paragraph containing this assertion,
`
`Petitioner directs our attention to paragraphs 82 through 85 of the Franzon
`
`Declaration. Id. Paragraph 85 of the Franzon Declaration summarily asserts
`
`Bensimon’s password is “already shared by the storage device 100 and the
`
`host computer 10,” without citation to Bensimon. Ex. 1002 ¶ 85.
`
`Contrary to Petitioner’s assertions, Patent Owner contends
`
`Bensimon’s “password is stored only on the storage device and not on the
`
`host computer” and “the computer has no need for the password because the
`
`storage device controls access to its memory.” Prelim. Resp. 24–25 (citing
`
`Ex. 1004, 5:65–67). We agree with Patent Owner. Bensimon describes a
`
`user entering a password string and the computer “transfer[ring] the
`
`password string to the device 100.” Ex. 1004, 5:63–65. Petitioner does not
`
`17
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`IPR2016-01404
`Patent 6,968,459 B1
`
`cite, and we do not find, support in Bensimon for the notion that the
`
`password is “shared” by the computer and the device. Sharing the password
`
`in the manner proposed by Petitioner would be contrary to Bensimon’s
`
`disclosure that password security “at the device level provides an advantage
`
`over system-level password security.” Id. at 4:50–56. Further, Bensimon
`
`describes storing the password and the password enabling flag “in the media
`
`102 itself, along with the protected data, rather than with the control
`
`electronics.” Id. at 6:35–37. Petitioner fails to explain in the record before
`
`us why one of ordinary skill in the art would be motivated to modify
`
`Bensimon’s password—described in the above-cited passages as secured
`
`within the storage media itself—to be shared between the storage media and
`
`the computer such that the computer could use that password to decrypt data.
`
`For the reasons discussed above, we determine Petitioner has
`
`not shown a reasonable likelihood of prevailing on this obviousness
`
`challenge to claim 15.
`
`D. Obviousness of Claim 18 based on Kimura in combination with
`Takahashi
`
`Claim 18 recites, in relevant part, “sensing whether the storage device
`
`has security information generated from a combination of device-specific
`
`information associated with the storage device and user-specific information
`
`associated with a user.” Thus, claim 18 requires a determination of whether
`
`the storage device contains “security information” generated from a
`
`combination of device-specific and user-specific information.
`
`Petitioner relies on Kimura’s “particular security code assigned to the
`
`card in question” as meeting the claimed security information. Pet. 52. Id.
`
`at 52–53 (citing Ex. 1006, 14:12–21, 17:27–37). Petitioner further relies on
`
`Kimura’s comparison of this internal security code (i.e., security
`
`18
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`
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`IPR2016-01404
`Patent 6,968,459 B1
`
`information) “with another security code ‘deciphered’ from ‘external
`
`information’” as meeting the claimed “sensing whether the storage device
`
`has security information.” Pet. 52.
`
`We are not persuaded by Petitioner’s arguments because they are not
`
`commensurate with the claim language. Claim 18 requires sensing the
`
`presence of security information, which Petitioner contends is taught or
`
`suggested by Kimura’s security code. Pet 52. Petitioner’s contentions,
`
`however, fail to identify adequate teaching or suggestion of sensing the
`
`presence of this secure code. Id. Kimura describes the cited security code
`
`as internal information “assigned to that particular card” and “not available
`
`to the interface bus under any circumstances.” Ex. 1006, 18:40–60. Thus,
`
`Kimura describes the card has the cited security code within its internal
`
`memory once the code has been assigned to that card. See id. Rather than
`
`establishing that Kimura senses the presence of this code in the internal
`
`memory of the card, Petitioner directs our attention to Kimura’s comparison
`
`of a second code to the internal security code. Pet. 52, 57–59. Whether the
`
`two codes match, however, does not address sensing whether Kimura’s card
`
`contains the internal security code—which Kimura teaches is in fact stored
`
`within the card after it is assigned to the card. Ex. 1006, 18:40–60.
`
`For the reasons discussed above and based on the current record
`
`at this stage of the proceeding, we determine Petitioner has not shown
`
`a reasonable likelihood of prevailing on this obviousness challenge to
`
`claim 18.
`
`
`
`19
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`IPR2016-01404
`Patent 6,968,459 B1
`
`
`V.
`
`SUMMARY
`
`
`
`We determine that Petitioner has demonstrated a reasonable likelihood
`
`of prevailing on its challenges to claims 1, 2, 13, 14, 33, 34, 39, 46, and 48.
`
`Petitioner has failed to demonstrate, however, that there is a reasonable
`
`likelihood Petitioner would prevail with respect to claims 15 and 18. At this
`
`stage of the proceeding, we have not made a final determination as to the
`
`patentability of any of the Challenged Claims.
`
`
`
`VI. ORDER
`
`It is, therefore:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of the ʼ459 patent is hereby instituted on the following grounds:
`
`A. Anticipation of claims 1, 13, 14, 33, 39, 46, and 48 by Bensimon;
`
`and
`
`B. Obviousness of claims 2 and 34 over Bensimon and Takahashi.
`
`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.
`
`
`
`20
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`IPR2016-01404
`Patent 6,968,459 B1
`
`
`
`FOR PETITIONER:
`
`P. Andrew Riley
`James D. Stein
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Andrew.Riley@finnegan.com
`James.Stein@finnegan.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@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
`
`
`21
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