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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
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`______________________
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`NETAPP, INC., LENOVO (UNITED STATES) INC., and EMC CORP.,
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II, LLC
`Patent Owner
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`____________________________
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`CASE IPR: IPR2017-00467
`U.S. PATENT NO. 6,968,459
`____________________________
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`REQUEST FOR REHEARING
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2017-00467
`U.S. Patent No. 6,968,459
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.71(d), NetApp, Inc., Lenovo (United States) Inc.,
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`and EMC Corp. (collectively “Petitioner”) respectfully request that the Board
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`reconsider its decision not to institute inter partes review (“IPR”) of U.S. Patent
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`No. 6,968,459 (“‘459 Patent”) on the basis of Ground 2 as presented in the Petition
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`(Paper 1) in this proceeding. Specifically, Petitioner requests that the Board
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`reconsider its decision that the Petition did not show that there is “a reasonable
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`likelihood that petitioner would prevail” in showing that at least one of claims 15,
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`18, 24 and 25 is obvious over Uchida in view of Bramhill. 35 U.S.C. §314(a);
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`Paper 10 (“Institution Decision”) at pp. 13-15.
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`This Request for Rehearing focuses on two specific portions of the Petition
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`that Petitioner believes the Board misapprehended or overlooked, and identifies the
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`portions of the Petition (and evidence submitted with the Petition) that set forth
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`each matter. 37 C.F.R. § 42.71(d).
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`II. CLAIMS 15, 18, 24, AND 25 ARE OBVIOUS OVER UCHIDA AND
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`BRAMHILL (PETITION GROUND 2)
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`a.
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`The Petition Explained the Combination of Uchida with Bramhill
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`On page 14 of the Institution Decision, the Board found that “[n]either
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`Petitioner nor Mr. Jestice explains how Bramhill’s cybermetrics would be
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`combined with Uchida’s passwords in order to provide restricted-access preventing
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`1
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`data from being written when the device-specific security information is not
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`sensed.” Institution Decision, p. 14.
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`Petitioner respectfully submits that the “Motivation to Combine” section of
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`the Petition, supported by Mr. Jestice’s declaration at ¶¶87-88, with regard to
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`Ground 2 sets forth the explanation the Board found to be lacking and overlooked.
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`In particular, page 49 of the Petition states: “A POSA would have been motivated
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`to modify the source for Uchida’s security with the cybermetrics disclosures of
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`Bramhill.” Petition, p. 49.1 Pages 49 and 50 of the Petition, as well as cited
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`paragraphs 87 and 88 of Mr. Jestice’s declaration, explain why “a POSA would
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`understand Bramhill’s use of a cybermetric as an alternate or addition to the
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`security information disclosed in Uchida.” Petition, pp. 49-50; Ex. 1002, ¶87.
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`Mr. Jestice also explained that the combination of Bramhill and Uchida
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`“would have involved combining known methods and systems, for example, using
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`the device-specific disk formatting information disclosed in Bramhill either in
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`addition to or in place of the password disclosed in Uchida, and basing an
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`encryption/decryption code on such device-specific security information.” Ex.
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`1002, ¶88 (cited on page 50 of the Petition). He further explained the combination
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`in paragraph 91 (cited on page 51 of the Petition).
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`1 All emphasis is added unless indicated otherwise herein.
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`2
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`Petitioner submits that the Board appears not to have considered the
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`combination analysis provided in the Petition (and cited evidence, including the
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`testimony of Mr. Jestice) with regard to how Uchida would have been combined
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`with Bramhill. Accordingly, Petitioner requests rehearing with regard to the issue
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`of the combinability of Uchida and Bramhill.
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`b.
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`The Petition Relied on Uchida’s Disclosure of Restricted-Access to
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`a Subset of a Disk
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`On page 14 of the Institution Decision, the Board asserted that “Uchida fails
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`to teach restricted-access preventing writing data when the disk is not password
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`protected (i.e., when the storage device does not contain the device-specific
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`security information).” Institution Decision, p. 14. Petitioner requests rehearing of
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`this determination. Rehearing is appropriate because Petitioner believes the Board
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`misapprehended or overlooked the portions of Uchida (and the corresponding
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`testimony of Mr. Jestice) that the Petition relies on as satisfying this limitation.
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`The Board assumed for purposes of its Institution Decision that “Uchida’s
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`passwords meet the claimed device-specific security information” in claims 15 and
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`18. Institution Decision, p. 14. Notwithstanding, the Board relied on only a
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`portion of one cited embodiment of Uchida—a portion that the Petition did not rely
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`on in explaining why the claims of the ‘459 Patent are obvious—to decide to deny
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`institution of Ground 2 on the ground that Uchida did not disclose restricted access
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`3
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`when the disk is not password protected. In particular, the Institution Decision
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`relied on step 62 of Figure 10 of Uchida, and overlooked the steps of Figure 10
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`(namely, Steps 63, 64, 65 and 66 of Figure 10) that the Petition actually relies on
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`with regard to the restricted-access recited in claims 15 and 18. Institution
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`Decision, p. 14 (citing to step 62 of Uchida at 11:51-53); Petition, pp. 62-64, 67-68
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`(addressing “restricted-access” and “prevent write access” limitations of claims 15
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`and 18, respectively); see also pp. 54-56, 68-70 (addressing “full-access” and
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`“permit write access” limitations of claims 15 and 18, respectively), p. 45 (“partial
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`read access may be granted on one correct password…whereas full read and write
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`access…may be granted based on a different correct password.”). The Board
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`concluded that “Uchida thus teaches allowing full access rather than restricted
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`access, when the storage device does not store the device-specific security
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`information.” Institution Decision, p. 14.
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`However, as set forth in the Petition, “the predetermined password of Uchida
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`is an example of the device specific security information stored on the security
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`device.” See, e.g., Petition, p. 53. The Petition also explains that in the
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`embodiment of Uchida where “a user enters a password and ‘the first
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`[predetermined] password coincides, a user is allowed to access all of the bands 0-
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`9, and when the second [predetermined] password coincides, the user is allowed to
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`access only the band 0.’” Petition, p. 54 (square brackets in Petition); see also p.
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`4
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`45 (“partial read access may be granted based on one correct password, id., 3:39-
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`42, whereas full read and write access to the ‘whole removable storage medium’
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`may be granted based on a different correct password. Id., 3:49-52; Ex. 1002,
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`¶¶59-61.”). Furthermore, page 63 of the Petition states that Uchida “teaches
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`dividing a removable…disc into 10 areas called bands (0 to 9) and providing the
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`disk with two predetermined passwords.” Petition, p. 63. It continues: “[w]hen the
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`first [pre-determined] password coincides, a user is allowed to access all of the
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`bands 0 to 9, and when the second [pre-determined] password coincides, the user is
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`allowed to access only the band 0.” Petition, p. 63 (square brackets in Petition).
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`The Petition relies on Uchida’s disclosure that full-access is provided (such
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`that the user has full access to all bands 0-9) when the sensing step indicates the
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`device-specific security information (the user-inputted password) is stored on the
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`device. This will be the case when the user inputted password matches the
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`predetermined password that is stored on the device. The Petition also points to
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`Uchida’s disclosure that restricted access is provided (access to only band 0, and
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`thus an inability to write to bands 1-9) when the sensing step indicates that the
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`device-specific security information is not stored on the device because (the user
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`inputted password does not match the predetermined password). Petition, pp. 63-
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`64. With regard to claim 18’s “prevent write access” limitation, the Petition also
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`relies on the Figure 9 embodiment of Uchida, which discloses “if the inputted
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`5
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`password does not coincide with the registered password, a writing error is
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`returned.” Petition, pp. 67-68.
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`Finally, the Petition relies on Mr. Jestice’s testimony at paragraphs 177-179
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`with regard to claim 15 (Petition, pp. 62-64) and paragraphs 194-195 with regard
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`to claim 18 (Petition, p. 68), which the Board noted in passing (Institution
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`Decision, p. 14) but did not address in substance.
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`The Board appears to have misapprehended or overlooked this analysis of
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`Uchida, as it did not address the relied-on logic of Uchida that follows Step 62 of
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`Figure 10 (namely, Steps 63, 64, 65 and 66 of Figure 10). Rehearing is appropriate
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`to address the aspects of Uchida actually relied on in the Petition as meeting claims
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`15 or 18 of the ‘459 Patent in its explanation of Ground 2.
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`III. CONCLUSION
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`Petitioner respectfully requests that the Board reconsider its decision not to
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`institute Ground 2 of the Petition in view of the identified arguments presented in
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`the Petition and supported by evidence submitted therewith as set forth above. The
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`as-filed Petition (and relied-on testimony from Mr. Jestice) explain how Bramhill’s
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`cybermetrics would be combined with Uchida’s teachings, and further explain why
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`Uchida teaches restricted-access to a disk (by preventing writing to certain areas of
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`the disk) when the device does not store the device-specific security information,
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`as is required by the Challenged Claims.
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`6
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`Respectfully submitted by
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`By:
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`K&L Gates LLP,
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`/Benjamin E. Weed/
`Reg. No. 65,939
`Date: July 21, 2017
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`7
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`IPR2017-00467
`U.S. Patent No. 6,968,459
`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing Request for Rehearing
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`was served electronically via e-mail on July 21, 2017, in its entirety on the
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`following:
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`Lori A. Gordon, lgordon-PTAB@skgf.com
`Steven W. Peters, speters-PTAB@skgf.com
`ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`
`
`James R. Hietala, jhietala@intven.com
`Tim R. Seeley, tim@intven.com
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, WA 98005
`Tel.: 425-283-4789
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`
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`By:
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`
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`
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`Customer No. 24573
`benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
`Date: July 21, 2017
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
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`8
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