Trials@uspto.gov Paper No. 8
`Tel: 571-272-7822
`Entered: July 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00430
`Patent 6,088,802
`____________
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Tel: 571-272-7822
`Entered: July 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00430
`Patent 6,088,802
`____________
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`IPR2017-00430
`Patent 6,088,802
`
`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter
`partes review of claims 1–39 of U.S. Patent No. 6,088,802 (Ex. 1001, “the
`’802 patent”). Paper 2 (“Pet.”). SPEX Technologies, Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314, an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). For the reasons that follow, we are not persuaded, on this record,
`that Petitioner has established a reasonable likelihood of prevailing in
`showing the unpatentability of any of the challenged claims on the asserted
`grounds. Accordingly, we deny the Petition and decline to institute an inter
`partes review of claims 1–39 of the ’802 patent.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties indicate that the ’802 patent is involved in SPEX
`Technologies, Inc. v. Kingston Technology Company Inc., No. 8:16-cv-
`01790 (C.D. Cal. Filed Sept. 27, 2016); SPEX Technologies, Inc. v.
`Western Digital Corporation, No. 8:16-cv-01799 (C.D. Cal. Filed Sept. 28,
`2016); SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., No. 8:16-cv-01800 (C.D. Cal. Filed Sept. 28, 2016);
`SPEX Technologies, Inc. v. CMS Products, Inc., No. 8:16-cv-01801
`(C.D. Cal. Filed Sept. 28, 2016); SPEX Technologies, Inc. v. Integral
`Memory, PLC, No. 8:16-cv-01805 (C.D. Cal. Filed Sept. 28, 2016); and
`
`
`
`2
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`Patent 6,088,802
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`SPEX Technologies, Inc. v. Apricorn, No. 2:16-cv-07349 (C.D. Cal. Filed
`Sept. 28, 2016). Pet. 1–2; Paper 4, 2–3.1
`The ’802 patent also is the subject of a pending petition for inter
`partes review filed January 31, 2017, by Kingston Technology Company,
`Inc. Case IPR2017-00824, Paper 2.
`B. The ’802 Patent
`The ’802 patent is directed to a peripheral device that may be
`connected to a host computer, where the peripheral device performs security
`operations such as encryption and decryption on data communicated
`between the peripheral device and the host computer. Ex. 1001, 1:17–27,
`1:35–38, 4:49–5:4. Figures 1, 2, and 3A of the ’802 patent are reproduced
`below.
`
`
`
`
`
`
`1 We note that Patent Owner’s Mandatory Notices Pursuant to 37 C.F.R.
`§ 42.8(a)(2) (Paper 4) does not include page numbers. For ease of reference,
`the Parties are advised to include page numbers in all filings.
`3
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`IPR2017-00430
`Patent 6,088,802
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`
`Figures 1 and 2 are block diagrams of prior art systems described in
`the ’802 patent. Id. at 1:52–3:14, 4:14–19. Figure 3A is a block diagram of
`a system according to the claimed invention of the ’802 patent. Id. at 4:20–
`21. The ’802 patent explains that in the prior art, such security operations
`were either performed by the host computer, as illustrated in Figure 1 with
`security mechanism 101a included in host computing device 101, or by a
`standalone security device, as illustrated by security device 203 in Figure 2.
`According to the ’802 patent, both of those arrangements were deficient in
`various ways. Id. at 2:10–21, 2:58–3:14.
`C. Illustrative Claims
`Of the challenged claims, claims 1, 6, 11, 23, 24, 36, 37, 38, and 39
`are independent. Claims 1, 38, and 39, reproduced below, are illustrative of
`the claimed subject matter:
`1. A peripheral device, comprising:
`security means for enabling one or more security operations to be
`performed on data;
`target means for enabling a defined interaction with a host
`computing device;
`means for enabling communication between the security means
`and the target means;
`means for enabling communication with a host computing device;
`
`
`
`4
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`IPR2017-00430
`Patent 6,088,802
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`means for operably connecting the security means and/or the target
`means to the host computing device in response to an
`instruction from the host computing device; and
`means for mediating communication of data between the host
`computing device and
`the
`target means so
`that
`the
`communicated data must first pass through the security means.
`38. For use in a peripheral device adapted for communication with
`a host computing device, performance of one or more security
`operations on data, and interaction with a host computing device
`in a defined way, a method comprising the steps of:
`receiving a request from a host computing device for information
`regarding the type of the peripheral device; and
`providing to the host computing device, in response to the request,
`information regarding the type of the defined interaction.
`39. For use in a peripheral device adapted for communication with
`a host computing device, performance of one or more security
`operations on data, and interaction with a host computing device
`in a defined way, a method comprising the steps of:
`communicating with the host computing device to exchange data
`between the host computing device and the peripheral device;
`performing one or more security operations and the defined
`interaction on the exchanged data; and
`mediating communication of the exchanged data between the host
`computing device and the peripheral device so that the
`exchanged data must first sass through means for performing
`the one or more security operations.
`Ex. 1001, 18:55–19:4, 22:13–38.
`
`
`
`5
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`IPR2017-00430
`Patent 6,088,802
`
`D. References Relied Upon
`Petitioner relies on the following references:
`Exhibit Reference
`1003
`U.S. Patent No. 5,623,637, issued April 22, 1997
`(“Jones”)
`U.S. Patent No. 5,887,145, issued Mar. 23, 1999
`(filed Jan. 9, 1997) (“Harari”)
`U.S. Patent No. 5,815,577, issued Sept. 29, 1998
`(filed Mar. 24, 1997) (“Clark”)
`Universal Serial Bus Specification, Rev. 1.0
`(Jan. 15, 1996) (“USB Specification”)
`
`1004
`
`1005
`
`1006
`
`Pet. 4. Petitioner also relies on a declaration of Ivan Zatkovich (Ex. 1002).
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–39 on the following
`grounds:
`
`Jones
`
`Reference(s)
`
`Claims Challenged
`Basis
`35 U.S.C. § 102(a) 1, 2, 6, 7, 11–13, 23–26,
`and 36–39
`35 U.S.C. § 103(a) 5, 10, 14, 22, 27, and 35
`Jones and Harari
`Clark and USB Specification 35 U.S.C. § 103(a) 1–39
`
`Pet. 23–61.
`
`III. DISCUSSION
`A. Claim Construction
`1. General Principles
`The ’802 patent issued from an application filed June 4, 1997, and
`accordingly expired no later than June 4, 2017. 35 U.S.C. § 154(a)(2). In an
`
`
`
`6
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`IPR2017-00430
`Patent 6,088,802
`
`inter partes review, we construe claims of an expired patent according to the
`standard applied by the district courts. See In re Rambus Inc., 694 F.3d 42,
`46 (Fed. Cir. 2012). Specifically, we apply the principles set forth in
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc).
`Under that standard, the words of a claim are generally given their ordinary
`and customary meaning, which is the meaning the term would have to a
`person of ordinary skill at the time of the invention, in the context of the
`entire patent including the specification. See Phillips, 415 F.3d at 1312–13.
`“An element in a claim for a combination may be expressed as a
`means . . . for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be
`construed to cover the corresponding structure, material, or acts described in
`the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6.2 A claim
`limitation using the term “means” creates a rebuttable presumption that
`§ 112 ¶ 6 applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348
`(Fed. Cir. 2015). Construing a means-plus-function claim term is a two-step
`process, wherein we first identify the claimed function and then determine
`what structure, if any, disclosed in the specification corresponds to the
`claimed function. Id. at 1351; Med. Instrumentation & Diagnostics Corp. v.
`Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc.
`v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Our Rules
`
`
`2 Section 4(c) of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
`112-29, § 4(c), 125 Stat. 284 (2011), re-designated 35 U.S.C. § 112 ¶ 6 as
`35 U.S.C. § 112(f). Because the ’802 patent has a filing date before the
`September 16, 2012, effective date of that statute, we refer to the pre-AIA
`version of 35 U.S.C. § 112.
`
`
`
`7
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`IPR2017-00430
`Patent 6,088,802
`
`specifically require that a petition for inter partes review identify how each
`challenged claim is to be construed, including identification of the
`corresponding structure for means-plus-function limitations. In particular,
`“[w]here the claim to be construed contains a means-plus-function . . .
`limitation as permitted under 35 U.S.C. 112 [¶ 6], the construction of the
`claim must identify the specific portions of the specification that describe the
`structure, material, or acts corresponding to each claimed function.”
`37 C.F.R. § 42.104(b)(3). Moreover, “structure disclosed in the
`specification is ‘corresponding’ structure only if the specification or
`prosecution history clearly links or associates that structure to the function
`recited in the claim.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327,
`1334 (Fed. Cir. 2004); Cardiac Pacemakers, 296 F.3d at 1113.
`2. “security means for enabling one or more security operations
`to be performed on data”
`Petitioner proposes constructions for fourteen different claim phrases
`in the Petition (see Pet. 17–22), including, inter alia, the phrase “security
`means for enabling one or more security operations to be performed on data”
`(id. at 18), which appears in each of independent claims 1, 6, 11, 23, 24, 36,
`and 37. With respect to that phrase, Petitioner contends:
`This phrase should be construed under pre-AIA 35 U.S.C.
`§ 112, ¶ 6 to include the following corresponding structure
`described in the specification, and equivalents thereof:
`1.
`Hardware, software and/or firmware capable of
`performing
`cryptographic or other
`related
`mathematical functions, including data encryption
`and decryption. See [Ex. 1001,] 12:10–16, 17:52–
`67, 15:63–67; see also id. at 2:30–32.
`A device that performs security operations and that
`includes one or more mechanisms to provide
`8
`
`2.
`
`
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`IPR2017-00430
`Patent 6,088,802
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`security for the content of those operations. See id.
`at 5:32–33.
`
`Pet. 18.
`Patent Owner responds that the Petition is deficient in several regards,
`including by failing “to identify a recited function and a corresponding
`structure disclosed in the specification that is clearly linked or associated
`with the function in the claim.” Prelim. Resp. 3–4. According to Patent
`Owner, “[e]ven assuming that the function of the security means is ‘enabling
`one or more security operations to be performed on data,’ the generic
`‘structures’ identified by Petitioner are not bona fide structures.” Id. at 4.
`Patent Owner concludes, “[b]ecause Petitioner has failed to properly
`construe ‘security means,’ the Petition cannot properly identify how the
`prior art renders the claims unpatentable,” and “[t]he Petitioner should be
`denied on all grounds with respect to Claims 1 through 37.” Id. at 7.
`We agree with Patent Owner. Although Petitioner identifies two
`“structures” that it alleges to correspond to the security means, Petitioner
`does not show how either of these structures is clearly linked or associated in
`the specification or the prosecution history with the function recited in the
`claims. As Patent Owner points out (Prelim. Resp. 5), the only reference to
`“hardware, software and/or firmware” in the specification of the ’802 patent
`refers to prior art standalone security device 203, rather than to any security
`means in the claimed peripheral devices. See Ex. 1001, 2:30–32. Moreover,
`as Patent Owner further points out (Prelim. Resp. 5), even if the
`specification had linked the recited “hardware, software and/or firmware” to
`the claimed security means, those terms—like the term “security means”
`itself—do not connote any specific structure and are described only
`
`
`
`9
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`IPR2017-00430
`Patent 6,088,802
`
`functionally in the specification: “The security device 203 includes
`appropriately configured hardware, software and/or firmware which can be
`directed to perform one or more cryptographic operations.” Ex. 1001, 2:30–
`32. The latter deficiency applies as well to Petitioner’s second proposed
`“structure,” “[a] device that performs security operations and that includes
`one or more mechanisms to provide security for the content of those
`operations.” Pet. 18. As the Federal Circuit has explained, “[g]eneric terms
`such as . . . ‘device,’ and other nonce words that reflect nothing more than
`verbal constructs may be used in a claim in a manner that is tantamount to
`using the word ‘means’ because they ‘typically do not connote sufficiently
`definite structure’ and therefore may invoke § 112, para. 6.” Williamson,
`792 F.3d at 1350 (quoting Mass. Inst. of Tech. v. Abacus Software, 462 F.3d
`1344, 1354 (Fed. Cir. 2006)). The corresponding structure of a
`means-plus-function limitation must be more than simply a general-purpose
`computer or microprocessor to avoid pure functional claiming. Aristocrat
`Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir.
`2008). The specification must disclose the “algorithm in any understandable
`terms including as a mathematical formula, in prose, or as a flow chart, or in
`any other manner that provides sufficient structure.” Finisar Corp. v.
`DirectTV Group Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal
`citations omitted). Accordingly, merely replacing “security means” with the
`similarly generic word “device” and rewording the claimed function, as
`Petitioner proposes, does not discharge Petitioner’s obligation under
`37 C.F.R. § 42.104(b)(3) to identify the portions of the specification that
`describe the structure corresponding to the claimed function.
`
`
`
`10
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`IPR2017-00430
`Patent 6,088,802
`
`B. Analysis of Asserted Grounds of Unpatentability
`1. Claims 1–37
`Petitioner challenges claims 1, 2, 6, 7, 11–13, 23–26, 36, and 37 as
`anticipated by Jones; claims 5, 10, 14, 22, 27, and 35 as unpatentable over
`the combination of Jones and Harari; and claims 1–37 as being unpatentable
`over the combination of Clark and USB Specification Pet. 23–32, 34–60.
`As stated in section III.A.2. supra, each of independent claims 1, 6, 11, 23,
`24, 36, and 37 includes the limitation “security means for enabling one or
`more security operations to be performed on data.” Moreover, challenged
`claims 2–5, 7–10, 12–22, and 25–35 are dependent claims that depend
`directly or indirectly from claim 1, 6, 11, or 24, and each accordingly also
`includes that same “security means” limitation. See 35 U.S.C. § 112 ¶ 4. In
`arguing that Jones, Harari, Clark, and USB Specification variously anticipate
`or render obvious the subject matter of claims 1–37, Petitioner relies on its
`deficient construction of “security means,” contending only that Jones and
`Clark3 teach “hardware and software” that performs the claimed function of
`the “security means” without any analysis of whether such hardware and
`software has the same or an equivalent structure (e.g., algorithm) to that
`disclosed in the ’802 patent specification. See Pet. 26 (“The
`encryption-decryption unit of Jones is a combination of hardware and
`software that is capable of performing cryptographic functions. That
`encryption-decryption unit processes data transferred over the data
`bus . . . [and] also ‘decrypts the data back into its ordinal form when it is
`
`
`3 Petitioner does not cite Harari or USB Specification as teaching the
`“security means” limitation.
`
`
`
`11
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`IPR2017-00430
`Patent 6,088,802
`
`retrieved . . . .’” (citations omitted)), 43 (“The encryption engine of the
`Clark encryption module is a programmed microcontroller or processor that
`encrypts confidential data received by or sent to the encryption module from
`the host computer. The encryption engine is capable of cryptographic
`operations, such as ‘DES, RSA, elliptical curve public/private key
`management,’ and the like.” (citations omitted)). Because it was Petitioner’s
`obligation under 37 C.F.R. § 42.104(b)(3) in the first instance to identify
`corresponding structure for terms subject to construction under 35 U.S.C.
`§ 112 ¶ 6, and we determine for the reasons set forth above that Petitioner
`does not identify any appropriate structure corresponding to the “security
`means” limitation, we determine that Petitioner cannot meet its burden of
`showing a reasonable likelihood of prevailing in its challenges to claims 1–
`37.4
`
`2. Claims 38 and 39
`Petitioner challenges claims 38 and 39 as anticipated by Jones and as
`unpatentable over the combination of Clark and USB Specification Pet. 32–
`34, 60–61. Petitioner does not provide any mapping of the cited references
`onto those claims, but instead relies upon its arguments with respect to those
`references vis-à-vis independent claims 1, 6, 11, 23, 24, 36, and 37. Indeed,
`the totality of Petitioner’s argument that Jones anticipates claim 38 is as
`follows:
`
`
`4 To be clear, we do not hold as a general proposition that a petitioner’s
`failure to identify the correct structure, material, or acts for a means-plus-
`function or step-plus-function limitation necessarily renders a petition fatally
`deficient, but instead that failure to identify any specific structure, material,
`or acts tied in the specification to the claimed function may do so.
`12
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`IPR2017-00430
`Patent 6,088,802
`
`the same
`Independent claim 38 recites essentially
`invention as independent claims 1, 6, 11, 23, 24, 36, and 37 of
`the ’802 Patent because the limitations of claim 38 are common
`to each of those claims, and the minor grammatical differences
`between the limitations of claim 38 and those of claims 1, 6, 11,
`23, 24, 36, and 37 do not provide patentably distinguishing claim
`elements. The Office agreed during prosecution of the ʼ305
`Application, finding that claim 38 “do[es] not teach or cover
`more than those which are covered by [’305 Application] claims
`1 [and] 8,” which correspond to ʼ802 Patent claims 1 and 11.
`EX1025 (ʼ802 File History, Office Action (12/11/1998)), at 6.
`As explained in detail above, Jones discloses all of the
`limitations of patent claims 1 and 11. See Section VIII(A)(2),
`supra. Therefore, for the same reasons discussed in Sections
`VIII(A)(2) and VIII(A)(5), Jones discloses this claim.
`Pet. 32–33.
`Petitioner’s argument that Jones anticipates claim 39 is identical to the
`above quotation but for the substitution of “claim 39” for “claim 38.” Id. at
`33–34. Petitioner’s arguments that claims 38 and 39 are unpatentable over
`the combination of Clark and USB Specification likewise are identical to the
`above quotation, except for the substitution of “the combination of Clark
`and USB Specification teach[es] or suggest[s]” for “Jones discloses.” Id. at
`60–61. As reproduced in Section II.C., however, claims 38 and 39 are
`method claims that recite steps that differ in kind from the elements of the
`peripheral devices to which 1, 6, 11, 23, 24, 36, and 37 are directed.
`Claim 38, for example, recites the steps of “receiving a request from a host
`computing device for information regarding the type of the peripheral
`device” and “providing to the host computing device, in response to the
`request, information regarding the type of the defined interaction.”
`Ex. 1001, 22:18–23. Notwithstanding Petitioner’s conclusory argument,
`
`
`
`13
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`IPR2017-00430
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`
`it is not apparent on the record before us how such steps are “common” to
`any of the device claims, especially claims 1 and 11 specifically referenced
`by Petitioner. Pet. 32–33, 60. Although we note that claims 6 and 23 recite
`“means for providing to a host computing device, in response to a request
`from the host computing device for information regarding the type of the
`peripheral device, information regarding the function of the target means”
`(Ex. 1001, 19:28–32, 20:34–38), and claim 24 includes a similar limitation
`(id. at 20:49–52), those claims contemplate provision of information
`regarding “the function of a target means,” rather than information regarding
`“the type of the defined interaction,” as recited in claim 38 (id. at 22:21–23).
`On this record, it is far from apparent that this merely is a “minor
`grammatical difference” without “patentabl[e] distin[ction]” (cf. Pet. 32, 60).
`Our Rules require that a petition for inter partes review “specify
`where each element of [a challenged] claim is found in the prior art patents
`or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Because the
`Petition fails to specify where the steps of claims 38 and 39 are found in
`Jones or in the combination of Clark and USB Specification, Petitioner has
`failed to establish a reasonable likelihood of prevailing in its challenges to
`claims 38 and 39.
`C.
`Conclusion
`For the reasons discussed above, Petitioner has not established a
`reasonable likelihood that it would prevail with respect to any of the claims
`challenged in the Petition.
`
`
`
`14
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`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Petition is denied, and no inter partes review is
`instituted on any asserted ground.
`
`
`
`15
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`
`PETITIONER:
`
`Vincent J. Galluzzo
`Teresa Stanek Rea
`CROWELL & MORING LLP
`vgalluzzo@crowell.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`
`
`
`16
`
`
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