IPR2016-01404
`US. Patent No. 6,968,459
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIFIED PATENTS, INC.
`Petitioner
`v.
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`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
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`U.S. Patent No. 6,968,459
`IPR2016-01404
`__________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`US. Patent No. 6,968,459
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`UNIFIED PATENTS, INC.
`Petitioner
`v.
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`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
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`U.S. Patent No. 6,968,459
`IPR2016-01404
`__________________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. ARGUMENT ................................................................................................... 4
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`A.
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`B.
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`C.
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`The Claimed “Device-specific Security Information” Need Not
`Be “Unique” .......................................................................................... 4
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`Bensimon Anticipates Claims 1, 13, 14, 33, 39, 46, and 48 ............... 13
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`The Combination of Bensimon and Takahashi Renders Obvious
`Claims 2 and 34. .................................................................................. 25
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`III. CONCLUSION .............................................................................................. 25
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`IPR2016-01404
`US. Patent No. 6,968,459
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`Exhibit 1001.
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`LIST OF EXHIBITS
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`U.S. Patent No. 6,968,459 to Jeffrey Morgan, et al. (“the ’459
`Patent”).
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`Exhibit 1002.
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`Declaration of Expert: Dr. Paul Franzon.
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`Exhibit 1003.
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`Excerpts of Prosecution History for U.S. Patent No. 6,968,459.
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`Exhibit 1004.
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`Exhibit 1005.
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`U.S. Patent No. 5,533,125 to Daniel Bensimon, et al.
`(“Bensimon”).
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`U.S. Patent No. 5,825,878 Richard Takahashi, et al.
`(“Takahashi”).
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`Exhibit 1006.
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`U.S. Patent No. 5,237,609 to Masatoshi Kimura (“Kimura”).
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`Exhibit 1007.
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`Petitioner’s Voluntary Interrogatory Responses.
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`Exhibit 1008.
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`U.S. Patent No. 6,738,877 to Yamakawa et al. (“Yamakawa”)
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`Exhibit 1009.
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`U.S. Patent No. 6,012,145 to Mathers et al. (“Mathers”)
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`Exhibit 1010.
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`Curriculum Vitae of Dr. Paul Franzon.
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`Exhibit 1011.
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`Transcript of 8/25/2017 Deposition of Dr. Goldschlag (newly
`submitted).
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`Exhibit 1012.
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`Supplemental Declaration of Dr. Franzon (newly submitted).
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`Exhibit 1013.
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`Excerpt of Microsoft Computer Dictionary (newly submitted).
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`Exhibit 1014.
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`Excerpts of Merriam Webster’s Collegiate® Dictionary (newly
`submitted).
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`TABLE OF AUTHORITIES
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`IPR2016-01404
`US. Patent No. 6,968,459
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` Page(s)
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`Federal Cases
`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016) ............................................................................ 7
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`Braintree Laboratories, Inc. v. Novel Laboratories, Inc.,
`749 F.3d 1349, 2014 WL 1584451 (Fed. Cir. 2014) ............................................ 4
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`EPOS Technologies Ltd. v. Pegasus Technologies Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) ............................................................................ 9
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`Intel Corp. v. U.S. Intern. Trade Com’n,
`F.2d 821, 836 (Fed. Cir. 1991) ............................................................................. 5
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`Karlin Technology, Inc. v. Surgical Dynamics, Inc.,
`F.3d 968 (Fed. Cir. 1999) ..................................................................................... 4
`
`In re Katz Interactive Call Processing Patent Litigation,
`2011 WL 607381 (Fed. Cir. 2011) ....................................................................... 4
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`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) .............................................................................. 9
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`PSN Illinois, LLC v. Ivoclar Vivadent, Inc.,
`525 F.3d 1159 (Fed. Cir. 2008) ............................................................................ 6
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`Regulations
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`77 Fed. Reg. 48764 (Aug. 14, 2012) ......................................................................... 1
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`IPR2016-01404
`US. Patent No. 6,968,459
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`I.
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`INTRODUCTION
`This Reply responds to Patent Owner’s Response to the Petition filed May
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`16, 2017 (Paper 19). For the reasons below, Petitioner requests the Board to cancel
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`challenged claims 1, 2 13, 14, 33, 34, 39, 46, and 48.
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`Rather than moving to amend its claims,1 Patent Owner tries to rewrite them
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`through argument and claim construction. Patent Owner proposes to construe
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`“device-specific security information” as “information that is unique to the storage
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`device and used to secure access to the storage device.” Paper 19 at 7 (emphasis
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`added). This construction wrongly reads out the broader term “specific” and
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`replaces it with the narrower tem “unique.” See Paper 9, 6-7 (Board finding that
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`construction is not necessary); Paper 2 at 11-13 (Petitioner proposing a
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`construction consistent with the claim language that does not read “specific” out of
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`the claims). Additionally, Patent Owner and its expert improperly attempt to
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`import the characteristics of examples of allegedly-unique types of “device-
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`specific security information” from the specification into the claims.
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`1 See 77 Fed. Reg. 48764 (Aug. 14, 2012) (“Should the Patent Owner, to
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`avoid the prior art, contend that a claim term has a construction different from its
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`broadest reasonable interpretation, the appropriate course is for the Patent Owner
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`to seek to amend the claim to expressly correspond to its contentions in this
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`proceeding.”).
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`1
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`Patent Owner contends that its revision is needed to ensure the claims
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`achieve a stated goal of the ’459 Patent—preventing an authorized user from using
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`data in an unauthorized way. Paper 19 at 9-10; EX2004 at ¶¶28-29. But Patent
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`Owner and its expert admit that this purpose is actually accomplished by an
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`unclaimed feature: encrypting the data written to the storage device using device-
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`specific security information that is unique. Paper 19 at 9-10; EX2004 at ¶¶28-29,
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`EX1011, 107:10-108:5. This unclaimed feature should not be read into the
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`independent claims.
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`Patent Owner then attempts to argue that Bensimon does not teach the
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`rewritten claims, but does not dispute that Bensimon’s read/write password
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`qualifies as device-specific security information under Petitioner’s construction or
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`the Board’s view that construction is unnecessary. See Paper 19 at 13-18.
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`Moreover, a person of ordinary skill in the art would have understood Bensimon’s
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`read/write password to be unique, EX1013, so Bensimon discloses the feature even
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`with Petitioner’s rewrite.
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`Patent Owner also argues that Bensimon does not disclose “operating the
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`computer in a restricted-access mode when the storage device does not have the
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`device-specific security information” (claims 1 and 33). First, Patent Owner
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`wrongly interprets these open-ended claims as closed. Paper 19 at 26-29. Patent
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`Owner then argues that Bensimon’s restricted-access mode does not meet the
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`2
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`closed claim language because Petitioner contends that the absence of the
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`read/write password (the claimed device-specific security information) plus the
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`presence of a different password (write-protection) causes Bensimon’s system to
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`enter the restricted access mode. Id. But the claim language is not so narrow—the
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`claims are open-ended. Moreover, Petitioner relies on Bensimon’s read/write
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`password, not the write-protection password, as the claimed “device-specific
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`security information.”
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`Second, Patent Owner contends that it would be “illogical” for Bensimon’s
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`storage device to have a write-protection (read-only) password and not a read/write
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`password. Paper 19 at 21; EX2004 at ¶50. But their opinion does not change the
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`fact that Bensimon discloses configuring the storage device a password—which
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`can be a write-protection password. EX1004 5:29-51. Besides, a POSITA would
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`have recognized logical reasons for Bensimon’s storage device having only a write-
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`protection password.
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`Patent Owner also contends that Bensimon does not disclose the claimed
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`“restricted-access mode” because, “in Bensimon, the PC card, and not the
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`computer, prevents write access.” Paper 19 at 30 (citing EX2004 at ¶70).
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`Although Bensimon’s storage device checks the password entered by the user
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`before permitting access, the host computer of Bensimon also prevents access to
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`the storage device.
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`3
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`Because the Board should address the claims as issued rather than as
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`rewritten by Patent Owner, the Board should cancel the challenged claims.
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`II.
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`ARGUMENT
`A. The Claimed “Device-specific Security Information” Need Not Be
`“Unique”
`Patent Owner is wrong to require “device-specific security information” to
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`be unique because this construction: (1) reads “specific” out of the claims, (2)
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`improperly imports embodiments from the specification into the independent
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`claims, (3) ignores dependent claims directed to such embodiments, and (4)
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`improperly imports a purpose statement from the specification into the independent
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`claims. Each of these reasons alone is sufficient to reject Patent Owner’s
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`construction. See, e.g., In re Katz Interactive Call Processing Patent Litigation,
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`2011 WL 607381, *14 (Fed. Cir. 2011) (rejecting construction importing a
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`limitation from one of the disclosed embodiments while also reading out other
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`disclosed embodiments from the scope of the claim); Karlin Technology, Inc. v.
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`Surgical Dynamics, Inc., F.3d 968 (Fed. Cir. 1999) (different words or phrases
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`used in separate patent claims are presumed to indicate that the claims have
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`different meanings and scope, and limitations in dependent claims are normally not
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`to be read into their independent claim); Braintree Laboratories, Inc. v. Novel
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`Laboratories, Inc., 749 F.3d 1349, 1354-55, 2014 WL 1584451, *3-*4 (Fed. Cir.
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`2014) (district court properly refused to read into claim a term a requirement that
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`US. Patent No. 6,968,459
`an alleged goal be achieved because it was not claimed); Intel Corp. v. U.S. Intern.
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`Trade Com’n, F.2d 821, 836 (Fed. Cir. 1991) (refusing to read limitations about a
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`goal from the specification into the claims because the goal was not contained in
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`the claims).
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`1.
`Patent Owner reads “specific” out of the claims.
`Independent claims 1, 33, and 39 recite “device-specific security
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`information,” not “device-unique security information” (emphases added). Patent
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`Owner, however, asks the Board to construe “device-specific security information”
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`in a way that reads “specific” out of the claims: “information that is unique to the
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`storage device and used to secure access to the storage device.” Paper 19 at 7
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`(emphasis added).
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`“Unique” is narrower than “specific.” Unique means “being the only one” or
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`“being without a like or equal.” EX1014, 4. While “specific” requires some degree
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`of particularity, it does not require the one-of-a-kind precision of “unique.” See,
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`e.g., EX1014, 3 (“constituting or falling into a specifiable category,” “sharing or
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`being those properties of something that allow it to be referred to a particular
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`category”). Thus, device-specific information refers to information particular to,
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`but not necessarily unique to, a device. EX1012 at ¶5. Patent Owner’s construction
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`improperly replaces the broader term “specific” with the narrower term “unique.”
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`5
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`For example, in PSN Illinois, LLC v. Ivoclar Vivadent, Inc., the Federal
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`Circuit ruled that the district court construed “ready for mounting” too narrowly by
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`excluding any finishing steps before mounting when the specification suggested
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`that some finishing steps may be performed before mounting. 525 F.3d 1159, 1162
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`(Fed. Cir. 2008). Here, Patent Owner construes device-specific information too
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`narrowly by excluding all information that is specific to the storage device but not
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`necessarily unique, and the ’459 Patent does not require device-specific security
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`information to be unique. For example, the specification states: “depending on the
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`necessary level of security, the system uses format information that is unique to the
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`removable storage device, manufacturing-specific information that is etched on the
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`storage device….” EX1004 9:2-5 (emphases added). This passage suggests that
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`whether the information is unique may depend on the necessary level of security,
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`which the challenged claims never address. EX1012 at ¶6.
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`The summary of the invention section does not even mention the word
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`“unique,” much less require that device-specific security information be “unique.”
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`EX1001 1:33-2:2; EX1011 92:13-93:4 (Patent Owner’s expert conceding this
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`point). And when the specification lists examples of allegedly-unique, device-
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`specific information, it characterizes them as non-limiting using language like “in
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`one embodiment” and “depending on the [selected] security level.” See, e.g.,
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`EX1001 1:47-55, 3:64-4:5, 4:9-19, 5:10-13, 5:49-57, 9:2-7; EX1012 at ¶8. If
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`Patent Owner intended for the claimed security information to be unique, the
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`Patent Owner could have used that term. In fact, Patent Owner used “unique” in
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`claims 9 and 17 but not in the claims at issue.
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`Different words in the same claim are generally presumed to have different
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`meanings, and constructions that do so are preferred over ones that do not. See,
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`e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). On appeal from
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`a CBM proceeding, the Federal Circuit in Apple v. Ameranth found that the PTAB
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`correctly construed the term “menu” to be “a list of options available to a user
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`displayable on a computer.” Id. 1236. The patent owner had argued that menu
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`should be construed as “computer data representing collections of [hierarchical]
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`linked levels of choices or options intended for display in a graphical user
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`interface.” Id. (emphasis added). The Federal Circuit rejected the patent owner’s
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`construction and found “[t]he Board was correct to not include in its construction
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`of ‘menu’ features of menus that are [already] expressly recited in the
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`claims. Ideally, claim constructions give meaning to all of a claim’s terms.” Id.,
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`1237. Here, Patent Owner’s proposed construction requiring “unique” in the
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`independent claims eliminates the meaning of “unique” recited in dependent
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`claims 9 and 17.
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`Because Patent Owner’s construction improperly reads terms out of the
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`claims, it should be rejected.
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`7
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`Patent Owner improperly imports examples from the
`specification into the claims.
`Patent Owner’s construction improperly imports mere examples of “unique”
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`2.
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`security information into the claims. Patent Owner and its expert repeatedly omit
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`the fact that the ’459 Patent expressly prefaces those examples with the phrase “in
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`one embodiment” or other qualifying language. See, e.g., EX1001, 1:47-55, 3:64-
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`4:5, 4:9-19, 5:10-13, 5:49-57, 9:2-7. For example, in paragraph 26 of his
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`declaration, Dr. Goldschlag identifies allegedly-unique examples of the claimed
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`device-specific information mentioned in the ’459 Patent. He contends “[t]he ’459
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`Patent states that low-level format information qualifies as device-specific security
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`information and ‘uniquely identifies the underlying media of storage device 151.’”
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`EX2004 at ¶26 (citing EX1001, 4:9-12); see also Paper 19 at 8-9. But both Dr.
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`Goldschlag and Patent Owner fail to mention that this passage prefaces this
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`example with the phrase “in one embodiment”:
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`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.
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`EX1001 4:9-12 (emphases added). Properly understood, this passage means that, in
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`one embodiment—not
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`in all embodiments—the device-specific security
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`information uniquely identifies the underling media of the storage device. EX1011
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`The Federal Circuit has held “it is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—
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`into the claims absent a clear indication in the intrinsic record that the patentee
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`intended the claims to be so limited.” EPOS Technologies Ltd. v. Pegasus
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`Technologies Ltd., 766 F.3d 1338, 1343 (Fed. Cir. 2014) (emphasis added)
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`(quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir.
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`2004)). Thus, even if the only examples in the specification of device-specific
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`information were unique, it would still be improper to import this characteristic
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`into the challenged claims.
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`The patent never states that the “device-specific security information” must
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`be unique. See id.; EX1012 at ¶¶8, 21. Indeed, the ’459 Patent uses the prefix
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`“unique” before “device-specific information,” meaning that ordinarily, device-
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`specific information need not be unique. EX1001, 7:43-46 (“… how a unique,
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`device-specific security
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`information can be generated
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`from
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`the unique
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`characteristics of the underlying storage medium.” (emphasis added); see also id.
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`8:57-58 (“generation of a unique, device-specific key.” (emphasis added).);
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`EX1012 at ¶9. Even Patent Owner’s expert admitted that examples may exist in
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`which device-specific security information is not unique. EX1011:97:17-98:6.
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`The only intrinsic evidence relied upon by Patent Owner is a set of citations
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`purportedly demonstrating that “[t]he specification only recites examples of
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`device-specific information that is unique to the device.” EX2004 at ¶27; Paper 19
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`at 8-9. But none of these passages supports Patent Owner’s construction.
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`As explained above, the final citation, ’459 Patent 7:43–46, uses the prefix
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`“unique” before “device-specific information,” meaning that ordinary device-
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`specific information is not unique. EX1001, 7:43-46 (“… how a unique, device-
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`specific security information can be generated from the unique characteristics of
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`the underlying storage medium.” (emphasis added). This supports Petitioner’s
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`construction, not Patent Owner’s.
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`The first cited passage, in the Summary of the Invention section, does not
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`even use the word “unique.” See EX1001, 1:33-2:2. Patent Owner and its expert
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`misquote the passage as stating that “‘the cryptographic key is generated by
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`combining one or more of the following: (1) device-specific security information
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`derived from the unique format information of the removable storage device….’”
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`EX2004 at ¶26 (citing EX1001, 1:46–54) (emphasis in original). Not so. The
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`Summary of the Invention section does not even use the word “unique.” See
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`EX1011, 104:20-105:6, 105:21-106:15. Moreover,
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`that passage discusses
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`encryption while the claims at issue do not require encryption—claims 3, 4, 15-19,
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`28, and 29 of ’459 Patent recite such features. Patent Owner’s expert concurred.
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`See EX1011, 107:1-103:18-109:2. Thus, this passage also supports Petitioner’s
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`construction, not Patent Owner’s.
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`The second passage likewise does not support Patent Owner’s position.
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`EX1001, 3:66-4:1. Patent Owner failed to mention that the examples of this
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`passage “depend[] on the selected security level”:
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`Depending upon the selected security level, the cryptographic
`key is generated by combining one or more of the following:
`(1) device-specific security information derived from the
`unique format information of the removable storage device, ….
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`EX1004 3:64-4:1. This passage suggests that the type of device-specific security
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`information or other information used to generate the key depends on a selected
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`security level. EX1012 at ¶10. But no claim even mentions a “security level,”
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`much less recites a particular security level that demands device-specific security
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`information to be unique. Id.
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`Not only does the next cited passage (4:9-12) also recite “[i]n one
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`embodiment,” Patent Owner ignored the previous sentence that recites “device-
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`specific security information” without mentioning it needs to be unique. EX1001,
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`4:6-9 (“computer 100 determines whether device-specific security information was
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`written to storage device 151”); EX1012 at ¶11. In context, this passage supports
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`Petitioner rather than Patent Owner because it makes clear that the recited unique,
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`device-specific security information was merely an example.
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`11
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`Because Patent Owner’s construction improperly imports examples from the
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`specification into the claims, it should be rejected.
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`3.
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`Patent Owner improperly imports a purpose of the ’459
`Patent into the claims.
`Patent Owner and its expert also contend that device-specific security
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`information must be unique because “a goal of the ’459 Patent is to ‘prevent an
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`authorized user from appropriating sensitive data by simply copying the sensitive
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`data to a removable storage device.’” EX2004 at ¶28 (quoting EX1001 1:23–26);
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`Paper 19 at 9. Dr. Goldschlag, however, goes on to explain that this goal is
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`accomplished because “[t]he data can only be stored on the original storage device
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`… because
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`it was encrypted with a key comprised of device-specific
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`information--information unique to the device.” EX2004 at ¶28 (emphasis added);
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`see also Paper 19 at 9-10. Dr. Goldshlag confirmed that the ’459 Patent
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`accomplishes the goal through encryption:
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`Q. And you also explained in paragraph 28 that this [goal] is
`accomplished by encrypting the data on the storage device
`using the unique device-specific security information, right?
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`A. Yes. So paragraph 28 says that unlike the Bensimon, where
`a password is used to control access to the data on the device, in
`’459, the computer uses device-specific security information
`to-as part of a cryptographic key, in some cases, to encrypt the
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`data that ends up on the device. So that even if the data is read
`off of the device, the data is not available to somebody else.
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`EX1011, 107:16-108:5. However, as explained above and admitted by Dr.
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`Goldschlag, dependent claims recite the encryption feature. EX1001, claims 3, 4,
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`15-19, 28, and 29; see also EX1011, 108:6-109:2. The independent claims do not.
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`This demonstrates that Patent Owner is wrong to require “device-specific
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`security information” to be unique in order to satisfy an unclaimed purpose recited
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`in the specification. Not only does this improperly import a limitation from the
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`specification, it ignores the fact that dependent claims recite what is required to
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`satisfy the purpose identified in the specification (as admitted by the Patent
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`Owner’s expert).
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`B.
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`Bensimon Anticipates Claims 1, 13, 14, 33, 39, 46, and 48
`1. Bensimon discloses the claimed “device-specific security
`information”
`Independent claims 1, 33, and 39 each recites “device-specific security
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`information.” Petitioner contends that Bensimon’s read/write password or the
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`combination of the read/write password and the password-enabling flag disclose
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`the claimed “device-specific security information.” Paper 2 at 21-25. According to
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`Patent Owner, neither of these discloses “device-specific security information”
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`because “Bensimon’s read-write password … is not unique.” Paper 19 at 16. Not
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`so, for at least two reasons.
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`First, none of the claims at issue requires the device-specific information to
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`be unique. See supra Section II.A. Nor does Patent Owner dispute that Bensimon’s
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`read/write password qualifies as device-specific security information under
`
`Petitioner’s construction or the Board’s view that construction is unnecessary. See
`
`Paper 19 at 21:16-19; Paper 2 at 13-14. Thus, Bensimon’s read/write password
`
`alone or together with the password-enabling flag discloses the claimed “device-
`
`specific security information” under a correct construction of this term.
`
`Second, a person of ordinary skill in the art would have understood
`
`Bensimon’s password to be unique. EX1012 at ¶16. A technical dictionary at the
`
`time defined “password” in the computer context to be unique. See, e.g. EX1013, 8
`
`(“[a] unique character string that a user types to access a computer, network, or an
`
`application such as a database or a Web-based service.” (emphasis added). This
`
`corresponds to the understanding of a person of ordinary skill in the art at the time.
`
`EX1012 at ¶16.
`
`Hence, Bensimon discloses
`
`the claimed “device-specific
`
`security
`
`information” under Petitioner’s construction, the Board’s construction, or Patent
`
`Owner’s incorrect construction.
`
`
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`14
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`IPR2016-01404
`US. Patent No. 6,968,459
`2. Bensimon discloses “operating the computer in a restricted-
`access mode when the storage device does not have the device-
`specific security information” by configuring the storage
`device 100 with only a write-protection password.
`Independent claims 1 and 33 of the ’459 Patent recite “operating the
`
`computer in a restricted-access mode when the storage device does not have the
`
`device-specific security information.”2 The Petition explained that Bensimon
`
`satisfies this feature as follows:
`
`The [operating in a restricted access mode] step … 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. In this
`case, if the user correctly enters the write-only password on the
`storage device 100 at the ‘comparison’ step, the user is given
`only write access to the storage device 100. See [EX1004] at
`6:13–29.
`
`
`2 Independent claim 39 is broader in this respect because it recites
`
`“selectively configure the drive to operate in a full-access mode of operation or a
`
`restricted-access mode of operation as a function of the device-specific security
`
`information stored on the storage device.” It does not require the storage device to
`
`not have the device-specific security information to operate in restricted access
`
`mode.
`
`
`
`15
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`IPR2016-01404
`US. Patent No. 6,968,459
`Paper 2 at 27. Bensimon’s read/write password alone, or together with the
`
`password-enabling flag, discloses “device-specific security information.” Supra
`
`Section II.B.1. 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. EX1012 at ¶18.
`
`First, Patent Owner contends that Petitioner’s interpretation of Bensimon
`
`rewrites the claims to have two different instances of “device-specific security
`
`information” because, “if Bensimon’s read-write password constitutes device-
`
`specific security information, then the write-protection password must as well.”
`
`Id., 17. But this argument reveals that it is Patent Owner that is redrafting the
`
`claim; whether Bensimon’s write-protection password can be characterized as an
`
`item of “device-specific security information” is irrelevant.
`
`Under the correct interpretation, much more so under the broadest
`
`reasonable interpretation, 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.
`
`
`
`16
`
`
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`IPR2016-01404
`US. Patent No. 6,968,459
`Instead of seeking to amend its claims, Patent Owner incorrectly attempts to
`
`rewrite the claims as operating based on whether any device-specific security
`
`information is present: “operating the computer in a restricted-access mode when
`
`the storage device does not have the any device-specific security information.”
`
`Hence, whether Bensimon’s write-protection password is considered “device-
`
`specific security information” is irrelevant—Bensimon disclosing operating in the
`
`two claimed modes depending on the presence of the read-write password (“the
`
`device-specific security information”) is sufficient. EX1012 at ¶19. Thus, Patent
`
`Owner’s argument should be rejected.
`
`Second, Patent Owner contends that Petitioner is wrong that “Bensimon’s
`
`system can store a read only password alone, without also storing a read-write
`
`password.” Paper 19 at 20-21. According to Patent Owner, “Bensimon does not
`
`contemplate a mode of operation where only its read-only password would be
`
`stored without a read-write password.” Paper 19 at 20-21; EX2004 at ¶¶49-52. But
`
`this is wrong.
`
`First, a person of ordinarys skill int the art would have understood Bensimon
`
`to disclose configuring the storage device 100 with one password. EX1012 at ¶21.
`
`As explained in the Petition, Bensimon teaches that “[t]here are two classes of
`
`passwords: (1) Write protection (read-only); and (2) Read/Write protection.”
`
`EX1004 6:13-14 (emphases added); Paper 2 at 22-23. A person of ordinary skill
`
`
`
`17
`
`
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`IPR2016-01404
`US. Patent No. 6,968,459
`would have understood this to mean that the storage device can use a write-
`
`protection password, a read/write protection password, or both types of passwords.
`
`EX1012 at ¶21. Bensimon never says that both types of passwords must always be
`
`put on the storage device. Id. Dr. Goldschlag could not identify any language in
`
`Bensimon requiring both passwords to be stored on the device. EX1011, 86:16-
`
`88:13.
`
`Bensimon supports such a reading when it discloses the process for
`
`configuring the storage device 100 with “a password” using a “Password-Enable
`
`command.” EX1004 5:30-51 (emphasis added). Bensimon describes this process as
`
`transferring one password (i.e., either a read/write password or a write-protection
`
`password) to the storage device:
`
`If the pc card is not previously in a password protected mode
`and the owner wishes to make the card 100 password protected,
`he or she would enter a valid password into the computer unit
`10 along with a Password-Enable command. The computer unit
`10 would then transfer the password string to the card 100 thus
`enabling a protection mode in the device 100.
`
`EX1004 5:34-43 (emphases added). This passage explains that the Password-
`
`Enable command transfers one password to the storage device (at least at a time).
`
`Patent Owner’s expert agreed that this is the literal understanding of this passage.
`
`See EX1011, 72:2-73:9, 78:2-18, 83:1-13. And given Bensimon’s disclosure of two
`
`
`
`18
`
`
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`IPR2016-01404
`US. Patent No. 6,968,459
`types of passwords, the one password sent to the storage device could be either a
`
`read-write password or a write-protection password. EX1012 at ¶22.
`
`Patent Owner’s incorrect view that Bensimon’s storage device must always
`
`store both types of password stems not from the actual disclosure of Bensimon but
`
`from their opinion that a read-only configuration in Bensimon is “illogical.” Paper
`
`19 at 21; EX2004 at ¶50; EX1011, 87:5-13.
`
`First, Patent Owner suggests that it would be illogical to equip the storage
`
`device with only a write-protection password because data could never be written
`
`to the device. Paper 19 at 21. This argument fails because Bensimon discloses that
`
`the storage device initially has no password or security mode, and a user adds the
`
`password using the password-enable command. EX1004 5:34-41 (“If the pc card is
`
`not previously in a password protected mode and the owner wishes to make the
`
`card 100 password protected, he or she would enter a valid password into the
`
`computer unit 10 along with a Password-Enable command. The computer unit 10
`
`would then transfer the password string to the card 100 thus enabling a protection
`
`mode in the device 100.”); EX1012 at ¶17. Patent Owner overlooks that the owner
`
`could put data on the card before configuring it with the write-protection password.
`
`EX1012 at ¶23.
`
`Second, Patent Owner contends that “[s]uch a system would be illogical
`
`because the password can be used to enable or disable password protection.”
`
`
`
`19
`
`
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`IPR2016-01404
`US. Patent No.
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