`
`
`
`
`Filed on behalf of: Unified Patents Inc.
`By:
`
`P. Andrew Riley
`James D. Stein
`Finnegan, Henderson,
`Farabow, Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4266
`Facsimile: 202-408-4400
`Email: IV459-IPR@finnegan.com
`
`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Telephone: 202-805-8931
`Email: jonathan@unifiedpatents.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`UNIFIED PATENTS, INC.,
`Petitioner
`v.
`
`INTELLECTUAL VENTURES II, LLC
`Patent Owner
`_________________________
`
`U.S. Patent No. 6,968,459
`IPR2016-01404
`
`COMPUTING ENVIRONMENT HAVING SECURE STORAGE DEVICE
`__________________________________________________________________
`
`DECLARATION OF DR. PAUL FRANZON
`
`
`
`
`
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`1
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`Page 1 of 71
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`Unified Patents Exhibit 1002
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`
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`I.
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`
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`
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
`
`Contents
`
`INTRODUCTION ........................................................................................... 4
`
`II. QUALIFICATIONS ........................................................................................ 4
`
`III. MATERIALS CONSIDERED ........................................................................ 6
`
`IV. RELEVANT LEGAL STANDARDS ............................................................. 7
`
`A.
`
`Prior Art ................................................................................................. 7
`
`B. Anticipation: 35 U.S.C. § 102 ............................................................... 8
`
`C. Obviousness: 35 U.S.C. § 103 ............................................................... 9
`
`V.
`
`SUMMARY OF MY OPINIONS ................................................................. 11
`
`VI. THE ’459 PATENT ....................................................................................... 11
`
`A. Overview of the Disclosure ................................................................. 11
`
`B.
`
`C.
`
`Prior Art Secure Storage Devices ........................................................ 15
`
`Level of Ordinary Skill in the Art ....................................................... 16
`
`VII. MEANING OF CERTAIN CLAIM TERMS ............................................... 17
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“Device-Specific Security Information” (Challenged Claims 1,
`15, 33, and 39) ..................................................................................... 17
`
`“Device-Specific Information” (Challenged Claim 18) and
`“User-Specific Information” (Challenged Claims 18 and 24) ............ 19
`
`“Security Information” (Challenged Claim 18) .................................. 20
`
`“Status Change . . . for the Storage Device” (Challenged Claims
`13 and 14) ............................................................................................ 20
`
`“Storage Manager” (Challenged Claim 39) ........................................ 21
`
`“Drive” (Challenged Claim 39) ........................................................... 21
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`2
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`U.S. Patent No. 6,968,459
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`Declaration of Paul Franzon
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`VIII. EACH ELEMENT OF CLAIMS 1, 2, 13-15, 33, 34, 37, 39, 46, AND
`48 OF IS TAUGHT OR RENDERED OBVOIUS BY THE PRIOR
`ART ............................................................................................................... 22
`
`A. Ground 1: Bensimon ........................................................................... 22
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Bensimon (US. Patent No. 5,533,125) ................. 22
`
`Bensimon Discloses the Elements of Independent Claim
`1 ................................................................................................. 24
`
`Bensimon Discloses the Elements of Claims 13 and 14 ........... 31
`
`Bensimon Discloses the Elements of Claim 33 ........................ 32
`
`Bensimon Discloses the Elements of Claim 39 ........................ 34
`
`Bensimon Discloses the Elements of Claims 46 and 48 ........... 36
`
`B. Ground 2: Bensimon and Takahashi .................................................. 36
`
`1.
`
`2.
`
`3.
`
`4.
`
`Overview of Takahashi (US Patent. 5,825,878) ...................... 37
`
`Bensimon and Takahashi Render Obvious the Elements
`of Claim 2 .................................................................................. 39
`
`Bensimon and Takahashi Render Obvious the Elements
`of Claim 15 ................................................................................ 43
`
`Bensimon and Takahashi Render Obvious the Elements
`of Claim 34 ................................................................................ 45
`
`C. Ground 3: Kimura and Takahashi ...................................................... 46
`
`1.
`
`2.
`
`Overview of Kimura (US Patent 498,848) ............................... 46
`
`Kimura and Takahashi Render Obvious the Elements of
`Claim 18 .................................................................................... 51
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`IX. CONCLUSION .............................................................................................. 70
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`
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`
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`I, Dr. Paul Franzon, declare as follows:
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`I.
`
`INTRODUCTION
`
`
`
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
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`I have been retained by Unified Patents Inc. (“Unified” or “Petitioner”) as an
`
`independent expert consultant in this proceeding before the United States Patent
`
`and Trademark Office. Although I am being compensated at my usual rate of $500
`
`per hour for the time I spend on this matter, no part of my compensation depends
`
`on the outcome of this proceeding, and I have no other interest in this proceeding.
`
`II. QUALIFICATIONS
`1.
` I am a currently a Distinguished Professor in the Department of
`
`Electrical and Computer Engineering at North Carolina State University (“NCSU”)
`
`in Raleigh, North Carolina. I have been affiliated with NCSU in various roles
`
`since 1989.
`
`2.
`
`I obtained my Ph.D. in Electrical and Electronic Engineering in 1989
`
`from the University of Adelaide in Australia. I obtained two additional degrees
`
`from the University of Adelaide, a Bachelor of Engineering in Electrical and
`
`Electronic Engineering (1984) and a Bachelor of Science in Physics and
`
`Mathematics (1983).
`
`3.
`
`I have over 20 years of experience with memory hierarchies and
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`security in electronic hardware. My experience in these areas started in the early-
`
`mid 1990s.
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`
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`From 1989 to 1996, I taught a graduate level course on Computer
`
`4.
`
`Design that included sections on memory hierarchies, including caching and disk
`
`storage.
`
`5.
`
`As part of a DARPA funded project that ran from 1993 to 1997, I led
`
`a group in building an encryption processor that implemented the Data Encryption
`
`Standard (DES). This was built as 3-chip module, on what would today be called
`
`an interposer.
`
`6.
`
`From 2007 to 2009, I collaborated with Irvine Sensors on a DARPA
`
`funded project in which we used a cryptographic technique, a one way hash
`
`function, to obfuscate the design of digital systems.
`
`7.
`
`Since 2011, I have been the lead author and editor of the chapter on
`
`Emerging Research Architectures
`
`for
`
`the
`
`International Roadmap
`
`for
`
`Semiconductors (ITRS). One subsection of this has been on “Storage Class
`
`Memories” (SCM), with a partial focus on solid state mass storage. I have helped
`
`run ITRS workshops on this topic, and co-wrote a book chapter on SCMs.
`
`8.
`
`Since 2015, I have been the Principal Investigator of a project funded
`
`by the Air Force Research Laboratories on interfacing a secure processor to a 3D
`
`memory chip stack.
`
`9.
`
`Since 2015, I have been leading a DARPA funded project in 3D
`
`methods to obfuscate the design of secure chips.
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`
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`10. Over my years at NCSU I have led manyprojects involving memory
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`technologies andsolid state storage, including 3D memories, novel cache designs,
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
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`and novelsolid state memory devices.
`
`Il. MATERIALS CONSIDERED
`
`11.
`
`J understand that this proceeding involves U.S. Patent No. 6,968,459
`
`(“the ’459 patent”) (EX1001). The application that lead to the ’459 patent wasfiled
`
`on Reissue Application No. 10/994,925 that lead to the ’281 patent was filed on
`
`December15, 1999.
`
`12.
`
`I have been asked to consider whether certain prior art references
`
`disclose or suggest the features recited in certain °459 patent claims.
`
`I have also
`
`been asked to consider the state of the art of secure storage devices in the 1999
`
`timeframe, and compare the systems and methods of the *459 patentto the prior art
`
`available at that time. My opinionsare provided below.
`
`13.
`
`In forming myopinions, I have considered, amongotherthings:
`
`Description
`eit
`EX1001|U-/S. Patent No. 6,968,459 to Jeffrey Morgan,et al.
`EX1004
`|U-‘S. Patent No. 5,533,125 to Daniel Bensimon,et al.
`(“Bensimon”
`
`EX1005|U-/S. Patent No. 5,825,878 Richard Takahashi, et al. (“Takahashi”
`EX1006|U.S. Patent No. 5,237,609 to Masatoshi Kimura (“Kimura”
`EX1008
`|U-S. Patent No. 6,738,877 to Yamakawaetal. (“Yamakawa”
`EX1009
`|U-/S. Patent No. 6,012,145 to Matherset al.
`
`(“Mathers”
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`IV. RELEVANT LEGAL STANDARDS
`14.
`I have been asked to provide my opinions as to whether the cited prior
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
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`art teaches or renders obvious the elements of claims 1, 2, 13-15, 18, 33, 34, 39,
`
`46, and 48 of the ’459 patent from the perspective of a person of ordinary skill in
`
`the art in the 1999 timeframe.
`
`15.
`
`I am an engineer and innovator by training and profession. The
`
`opinions I express in this declaration involve the application of my technical
`
`knowledge and experience to the evaluation of certain prior art with respect to the
`
`’459 patent. In addition, I understand that the following legal principles apply, as
`
`explained to me by Unified’s counsel.
`
`16.
`
`I understand that a patent is only valid when the invention claimed in
`
`the patent is new, useful, and nonobvious in light of the prior art. That is, the
`
`invention as defined by the claims of the patent must not be anticipated by or
`
`rendered obvious by the prior art.
`
`17.
`
`I understand that a dependent claim is a patent claim that refers back
`
`to another patent claim. A dependent claim, as I understand it, includes all of the
`
`limitations of the claim to which it refers.
`
`A.
`18.
`
`Prior Art
`
`I understand that prior art is generally the state of technology in the
`
`relevant field at the time of the alleged invention and includes such documentary
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`materials as patents and publications, as well as evidence of actual uses or sales of
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`a technology within the United States. I have been advised that, in this inter partes
`
`review, two types of prior art can be used against the ’459 patent: (1) patent
`
`publications filed or published before the inventor made his invention; and (2) non-
`
`patent printed publications that were publicly available before the inventor made
`
`the invention.
`
`B. Anticipation: 35 U.S.C. § 102
`19.
`I understand that a person cannot obtain a patent on an invention if the
`
`prior art included that invention. If an invention is not new, then the invention has
`
`been “anticipated” by the prior art. A claim is “anticipated” by the prior art if each
`
`and every limitation of the claim is disclosed, expressly or inherently, in a single
`
`item of prior art, from which a person of ordinary skill in the art could practice the
`
`invention without undue experimentation. Further, I understand that material not
`
`explicitly contained in a single, prior art document may still be considered for
`
`purposes of anticipation if that material is incorporated by reference into the
`
`document. Incorporation by reference provides a method for integrating material
`
`from various documents into a host document—a patent or printed publication in
`
`an anticipation determination—by citing such material in a manner that makes
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`clear that the material is effectively part of the host document as if it were
`
`explicitly contained therein.
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`C. Obviousness: 35 U.S.C. § 103
`20.
`It is my understanding that a claim is unpatentable under 35 U.S.C.
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
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`§ 103 if the claimed subject matter as a whole would have been obvious to a
`
`person of ordinary skill in the art at the time of the alleged invention. I also
`
`understand that an obviousness analysis takes into account the scope and content of
`
`the prior art, the differences between the claimed subject matter and the prior art,
`
`and the level of ordinary skill in the art at the time of the invention.
`
`21.
`
`In determining the scope and content of the prior art, it is my
`
`understanding that a reference is considered relevant prior art to the ’459 patent if
`
`it falls within the field of the inventor’s endeavor. In addition, a reference is prior
`
`art if it is reasonably pertinent to the particular problem with which the inventor
`
`was involved. A reference is reasonably pertinent if it logically would have
`
`commended itself to an inventor’s attention in considering his problem. Thus,if a
`
`reference relates to the same problem as the claimed invention, that supports use of
`
`the reference as prior art in an obviousness analysis. In my opinion, the prior art
`
`references identified above in paragraph 13 seek to solve the same types of
`
`problems as the ’459 patent and logically would have commended themselves to
`
`an inventor’s attention considering the problems of the ’459 patent. In particular,
`
`the ’459 patent and the cited prior art concern techniques and systems for securing
`
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`access to removable storage devices and the data written to, or read from, such
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`devices, and their associated challenges.
`
`22.
`
`I also understand that to assess the differences between prior art and
`
`the claimed subject matter to determine obviousness, the claimed invention to be
`
`considered as a whole. This “as a whole” assessment involves showing that one of
`
`ordinary skill in the art at the time of invention, confronted by the same problems
`
`as the inventor and with no knowledge of the claimed invention, would have
`
`selected the elements from the prior art and combined them in the claimed manner.
`
`23.
`
`It is my further understanding that several rationales may be applied
`
`for combining references or modifying a reference to show obviousness of claimed
`
`subject matter. These rationales include: combining prior art elements according
`
`to known methods to yield predictable results; simple substitution of one known
`
`element for another to obtain predictable results; a predictable use of prior art
`
`elements according to their established functions; applying a known technique to a
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`known device (method or product) ready for improvement to yield predictable
`
`results; choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and some teaching, suggestion, or motivation in
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`the prior art that would have led one of ordinary skill to modify a prior art
`
`reference or to combine prior art teachings to arrive at the claimed invention.
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`V.
`
`SUMMARY OF MY OPINIONS
`
`24.
`
`Asset forth more fully herein, it is my opinion that several references
`
`disclose or suggest the features of claims 1, 2, 13-15, 18, 33, 34, 39, 46, and 48 of
`
`the °459 patent, such that they would have been disclosed or obvious to a person
`
`having ordinary skill in the art at the time of the invention. In my opinion, the
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`following prior art
`
`references and grounds demonstrate anticipation and
`
`obviousnessof ’459 patent claims:
`
`1
`
`
`
`Claims 1, 13, 14, 33, 39, 46, and 48 are anticipated by U.S. Patent No.
`5,533,125 to Bensimon,et al.
`(“Bensimon”
`Claims 2, 15, and 34 are obvious over Bensimon in view of U.S. Patent
`No. 5,825,878 to Takahashi, et al.
`(“Takahashi”’
`Claim 18 is obvious over U.S. Patent No. 5,237,609 to Kimura
`3
`(‘Kimura’) in view of Takahashi
`
`
`VI. THE ’459 PATENT
`
`A.
`
`Overview of the Disclosure
`
`25. As part of my analysis, I read and considered the ’459 patent, which
`
`relates to a secure storage device. EX1001 at Title, Abstract. This overview is not
`
`meant to describe my full understanding of the °459 patent, but rather to highlight
`
`the general aspects of the ’459 patent.
`
`26.
`
`The ’459 patent describes “a computer 100 that automatically operates
`
`in a secure data storage mode when the computer 100 senses that storage device
`
`151 is a secure storage device.” EX1001 at 2:30-33.
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`U.S. Patent No. 6,968,459
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`EX1001, FIG. 1. The storage device 151 can be “a floppy diskette, a magneto-
`
`optical storage device, an optical disk, a SuperDiskTM diskette, a ZipTM disk, a
`
`JazzTM disk, a tape cartridge, etc.” EX1001 at 3:10-13.
`
`27.
`
`In particular, “[i]n block 204, the storage manager detects whether
`
`storage device 151 is a ‘secure’ removable device by attempting to read any
`
`device-specific security information from storage device 151.” EX1001 at 5:7-10.
`
`“The security information can be a function of a unique identifier retrieved from an
`
`electronic circuit embedded within the removable storage device or a serial number
`
`etched on the storage device during manufacturing.” EX1001 at Abstract. In
`
`another embodiment, the “device-specific security information [is] derived from
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`the unique format information of the removable storage device.” EX1001 at 3:66-
`
`4:1. For example, “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,” such as “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.” EX1001 at 4:9-17.
`
`28.
`
`“If the device-specific security information is not successfully read,
`
`then the storage manager proceeds to block 216 and operates computer 100 in a
`
`restricted-access data storage mode.” EX1001 at 5:15-19. If it is successfully read,
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`however, then the computer 100 operates the storage device in full-access mode.
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`EX1001 at 6:28-33.
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`EX1001, FIG. 2. In full-access mode, both read and write access to the removable
`
`storage device are permitted, and a cryptographic key is used to encrypt and
`
`decrypt the data stream between the computer and the storage device. EX1001 at
`
`abstract, 6:40-44, 7:30-33, 9:8-14. In restricted-access mode, read-only access is
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`permitted such that the user can read data from the storage device but cannot write
`
`data to the drive. EX1001 at 7:8-16.
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`
`B.
`Prior Art Secure Storage Devices
`29. Based on my review of the
`
`prior art, secure storage devices like those
`
`claimed in the ’459 patent were known
`
`before the filing of the ’459 patent. For
`
`example, U.S. Patent No. 6,738,877 to
`
`Yamakawa et al. (“Yamakawa”) describes
`
`technology
`
`in
`
`the field of “providing
`
`security with respect to data stored on a
`
`storage medium.” EX1008 at 1:9-11. It
`
`describes a system where a host unit 5 supplies a master password to a drive unit 2,
`
`which writes the master password onto an optical disk 3. EX1008 10:8-22, FIG. 1
`
`(reproduced right). And, like the device-specific security information of the ’459
`
`patent, in the Yamakawa, “[t]he master password is provided to limit access to the
`
`optical disk 3.” EX1008 at 8:65-66.
`
`30. Another example of a secure portable storage device like the one in
`
`the ’459 patents is described in U.S. Patent No. 6,012,145 (“Security System for
`
`Hard Disk Drive”) to Mathers et al. (“Mathers”). Mathers describes “[a] portable
`
`hard disk drive ha[ving] an electrically erasable programmable read-only-memory
`
`(EEPROM) for storing a first password for allowing a user access to the disk and a
`
`
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`random access memory (RAM) for temporarily storing a password entered by a
`
`user.” EX1009, Abstract. A microprocessor “ compare[s] the user-entered passed
`
`with the password stored in the EEPROM and . . . generate[s] a signal to allow a
`
`user access to the disk if a valid match is found and to prohibit access if there is no
`
`match.” EX1009, Abstract.
`
`C. Level of Ordinary Skill in the Art
`31.
`It is my understanding that when interpreting the claims of the ’459
`
`patent I must do so based on the perspective of one of ordinary skill in the art at the
`
`relevant 1999 priority date.
`
`32. Based on my experience as an engineer and innovator, I believe that a
`
`person of 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.
`
`33.
`
` I have used this definition in my analysis below. This level of skill is
`
`approximate, and more experience can compensate for less formal education, and
`
`vice versa.
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`
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`VII. MEANING OF CERTAIN CLAIM TERMS
`34.
`I have been advised that the first step of assessing the validity of a
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`U.S. Patent No. 6,968,459
`Declaration of Paul Franzon
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`patent claim is to interpret or construe the meaning of the claims. I have been
`
`advised that in inter partes review proceedings before the U.S. Patent and
`
`Trademark Office, an expired patent claim’s terms receive their broadest
`
`reasonable construction consistent with the specification, as would be understood
`
`by one of skill in the art. One exception to applying this construction is when the
`
`patent applicant acts as his or her own lexicographer by defining a claim term in a
`
`way that diverges from the broadest reasonable construction. I have been informed
`
`that constructing a patent claim applied during this proceeding may differ from that
`
`in a district court proceeding.
`
`35. To the extent that additional information becomes available, I reserve
`
`the right to continue my investigation and study, which may include a review of
`
`documents and information that recently have been or may be produced, as well as
`
`testimony from depositions that may yet be taken.
`
`36.
`
`I reserve the right to have my opinions provided here to this review
`
`only, and I reserve the right to continue my investigation and study such that I am
`
`not bound by my opinions in other proceedings.
`
`A.
`
` “Device-Specific Security Information” (Challenged Claims 1, 15,
`33, and 39)
`
`
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`I understand that the above-identified challenged claims recite
`
`37.
`
`“device-specific security information.” In my view, this means “information that is
`
`specific to the storage device and that is used to secure access to the storage
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`device.”
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`38. The specification explains that “[t]he security information can be a
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`function of a unique identifier retrieved from an electronic circuit embedded within
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`the removable storage device or a serial number etched on the storage device
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`during manufacturing.” EX1001 at Abstract (emphasis added). In another
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`embodiment, the “device-specific security information [is] derived from the unique
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`format information of the removable storage device.” EX1001 at 3:66-4:1
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`(emphasis added). For example, “the device-specific security information is a
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`function of the low-level format information and, therefore, uniquely identifies the
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`underlying media of storage device 151,” such as “a hash of the addresses of the
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`bad sectors for storage device 151. Because it is a function of the physical
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`characteristics of the actual storage medium within storage device 151, the format
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`information is inherently unique to each storage device 151.” EX1001 at 4:9-17.
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`39.
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`I also understand the ’459 patent to teach that the device-specific
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`security information is used to secure access to the storage device. In particular, in
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`the ’459 patent explains that “computer 100 detects the device-specific security
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`information on storage device 151 and automatically operates in a full-access data
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`storage mode.” EX1001 at 4:47-49. But “[i]f the device-specific security
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`information is not successfully read, then the storage manager proceeds to block
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`216 and operates computer 100 in a restricted-access data storage mode . . . .”
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`EX1001 at 5:15-18. Since the presence or absence of the device-specific security
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`information dictates whether the storage device 151 operates in full-access or
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`restrict-access mode, it is used to secure access to the storage device 151.
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`Consistent with this, the claims of the ’459 patent also explain that the device-
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`specific security information is used to secure access to the storage device 151.
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`See, e.g., ’459 patent claim 1 (reciting that the storage device operates in full-
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`access mode if the storage device has the device-specific information but operates
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`in a restricted-access mode if it does not have the information).
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`40. Accordingly, in my opinion, “device-specific security information”
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`refers to “information that is specific to the storage device and that is used to
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`secure access to the storage device.”
`
`B.
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`“Device-Specific Information” (Challenged Claim 18) and “User-
`Specific Information” (Challenged Claims 18 and 24)
`
`41. The above-identified challenged claims recite “device-specific
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`information” “user-specific security information.” In my opinion, these terms mean
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`“information specific to the device” and “information specific to the user,”
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`respectively.
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`“Device-specific information” is similar to “device-specific security”
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`42.
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`information discussed above, except it lacks the “security” prefix. Thus, for the
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`reasons discussed for “device-specific security information,” in my opinion,
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`device-specific information” simply means information specific to the device.
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`43. Similarly, the ’459 patent explains that the “user-specific information”
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`is information specific to a user, “such as a password or biometric information
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`such as input received from a fingerprint scan or retina scan.” EX1001 at 4:4-5; see
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`also EX1001 at 11:1-7 (claims 25-27 reciting that the user-specific information is a
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`password, biometric information, or digital output from a retina scanner or a
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`fingerprint scan, respectively).
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`C.
`“Security Information” (Challenged Claim 18)
`44. Challenged claim 18 recites “security information.” This is similar to
`
`the “device-specific security information” term discussed above, except that it
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`lacks the “device-specific” aspect. So, for the reasons discussed for “device-
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`specific security information,” in my opinion, “security information” simply means
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`information that is used to restrict access.
`
`D.
`
`“Status Change . . . for the Storage Device” (Challenged Claims
`13 and 14)
`45. The above-identified challenged claim recites “status change . . . for
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`the storage device.” In my opinion, this includes the ’459 patent’s example of
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`insertion or removal of the storage device 151 into/from the media drive 121 of the
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`computer 100. While the ’459 patent specification does not expressly define the
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`term, it explains that “the storage manager performs method 200 anytime a status
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`change is detected for storage device 151, such as when storage device 151 is
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`inserted into removable media drive 121.” EX1001 at 4:57-60 (emphasis added).
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`Similarly, “the storage manager repeats [the security process] when a status
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`change is detected for storage device 151, such as when storage device 151 is
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`removed from removable media drive 121 and a new storage device 151 is
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`inserted.” EX1001 at 6:24-28 (emphasis added). Dependent claim 14 of the ’459
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`also expressly says that “the status change indicates the insertion of the storage
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`device into the computer.” EX1001 at 10:7-9. Accordingly, in my opinion, “status
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`change . . . for the storage device” must include the insertion or removal of the
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`storage device into/from a media drive.
`
`E.
`46.
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`“Storage Manager” (Challenged Claim 39)
`
`I understand that challenged independent claim 39 recites “a storage
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`manager.” EX1001 at 12:5. When discussing claim 39’s “storage manager,” the
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`’459 patent explains that “[m]ethod 200 is described in reference to one or more
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`software applications 136 executing on computer 100, referred to hereafter as the
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`storage manager.” EX1001 at 4:49-52. Thus, the claimed “storage manager” refers
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`to “one or more software applications executing on a computer.”
`
`F.
`
` “Drive” (Challenged Claim 39)
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`47. Challenged independent claim 39 recites “a drive.” EX1001 at 12:2.
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`In my opinion, one of ordinary skill in the art would readily identify “drive” as “a
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`floppy drive, a magneto-optical drive, a CD-ROM drive, a SuperDiskTM drive, a
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`removable-cartridge drive such as a ZipTM drive, or even a tape drive,” or another
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`type of storage drives known the 1999 timeframe. EX1001 at 3:15-17. The ’459
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`patent describes an embodiment where the storage device “contains a computer
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`chip for electronically storing a unique identifier.” EX1001 at 5:51-53. Thus, the
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`storage device could be a simple ROM or could be a more sophisticated storage
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`device with embedded processing, and the “drive” could be any type of drive for
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`accessing such a storage device.
`
`VIII. EACH ELEMENT OF CLAIMS 1, 2, 13-15, 33, 34, 39, 46, AND 48 OF
`IS TAUGHT OR RENDERED OBVOIUS BY THE PRIOR ART
`A. Ground 1: Bensimon
`48.
`It is my opinion that Bensimon describes each element of claims 1,
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`13, 14, 33, 39, 46 and 48 of the ’459 patent.
`
`1. Overview of Bensimon (US. Patent No. 5,533,125)
`49. A person of ordinary skill in the art, reviewing Bensimon, would
`
`understand that Bensimon discloses “[a]n intelligent removable information storage
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`device (100), for coupling to a host microcomputer system (10).” EX1004,
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`Abstract. The “intelligent removable information storage device 100” has “a
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`storage medium (or media) 102 for storing information,” such as “an IC memory
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`or a magnetic disk.” EX1004 at 4:43-48.
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`
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`EX1004, FIG. 1 (annotation added)
`
`
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`EX1004, FIG. 3 (annotation added).
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`50. Bensimon explains that the storage device 100 stores a password and a
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`password-enabling flag in its onboard storage media 102. EX1004 at 6:35-37 (“In a
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`preferred embodiment, the password and a password enabling flag are stored in the
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`media 102 itself, along with the protected data, rather than with the control
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`electronics.”) “There are two classes of passwords: (1) Write protection (read-
`
`only); and (2) Read/Write protection. In the case of write protection passwords, the
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`device 100 is fully operational, with the exception that any write or format
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`operations are disabled. In the read/write protection mode, the device 100 is
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`rendered useless to those without knowledge of the password.” EX1004 at 6:13-19.
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`“Operationally, the owner of a pc card (e.g., card 100) would insert the pc card