Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 18
`
`Entered: October 17, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC., LENOVO (UNITED STATES) INC., and EMC CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00467
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`
`
`Paper 18
`
`Entered: October 17, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC., LENOVO (UNITED STATES) INC., and EMC CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00467
`Patent 6,968,459 B1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, PATRICK M. BOUCHER, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`JIVANI, Administrative Patent Judge.
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-00467
`Patent 6,968,459 B1
`
`
`INTRODUCTION
`I.
`NetApp, Inc., Lenovo (United States) Inc., and EMC Corporation
`(collectively, “Petitioner”) requested an inter partes review of claims 15, 18,
`24, and 25 (the “challenged claims”) of U.S. Patent No. 6,968,459 B1 (“the
`’459 patent”). Paper 1 (“Petition” or “Pet.”). Patent Owner Intellectual
`Ventures II, LLC filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`We denied the Petition and did not institute an inter partes review. Paper 10
`(“Dec.”). Petitioner requests rehearing of our decision not to institute
`review. Paper 11 (“Reh’g Req.”).
`“The burden of showing a decision should be modified lies with the
`party challenging the decision.” 37 C.F.R. § 42.71(d). We “review [our]
`decision for an abuse of discretion.” Id. § 42.71(c). The request for
`rehearing “must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” Id. § 42.71(d).
`After considering the Request for Rehearing, we determine that
`Petitioner has not demonstrated that we abused our discretion in denying
`institution. We deny the Request for Rehearing for the following reasons.
`II. BACKGROUND
`Petitioner advanced two grounds of unpatentability, namely that all
`challenged claims would have been rendered obvious by the combination of
`Blakley1 and Bramhill2 or, alternatively, by the combination of Uchida3 and
`
`
`1 Blakley III et al., U.S. Patent No. 5,677,952, iss. October 14, 1997
`(Ex. 1005).
`2 Ian D. Bramhill & Mathew Sims, Copyright in a Digital Age, BT Technol.
`J. Vol. 15 No. 2 (April 1997) (Ex. 1007).
`3 Uchida, U.S. Patent No. 7,124,301 B1, iss. October 17, 2006 (Ex. 1006).
`
`2
`
`
`
`IPR2017-00467
`Patent 6,968,459 B1
`
`Bramhill. Pet. 16. Petitioner does not request rehearing of our disposition
`of its challenges combining Blakley and Bramhill, and instead only requests
`rehearing of our disposition of its grounds asserting Uchida and Bramhill.
`Reh’g Req. 1 (citing Dec. 13–15).
`In our Decision, we determined Petitioner failed to show a reasonable
`likelihood of success on its challenges combining Uchida and Bramhill
`because Petitioner failed to show teachings or suggestions sufficient to meet
`the following limitation of independent claim 15: “providing restricted-
`access to the storage device when the storage device does not store the
`device-specific security information by preventing the digital data from
`being written to the storage device during the write access.” Dec. 13–15.
`We similarly determined Petitioner failed to show teachings or suggestions
`sufficient to meet the commensurate limitation recited in independent
`claim 18: “configuring the storage drive to prevent write access to the
`storage device when the security information is not sensed.” Id. at 15.
`III. ANALYSIS
`Petitioner argues that we erred in our Decision for two reasons. First,
`according to Petitioner, “the Board appears not to have considered the
`combination analysis provided in the Petition (and cited evidence, including
`the testimony of Mr. Jestice) with regard to how Uchida would have been
`combined with Bramhill.” Reh’g Req. 3. Second, Petitioner asserts that our
`review of its Uchida analysis addressed Step 62 of Uchida’s Figure 10, “but
`did not address the relied-on logic of Uchida that follows Step 62 of Figure
`10 (namely, Steps 63, 64, 65 and 66 of Figure 10).” Id. at 6.
`Having considered Petitioner’s arguments in its Request for
`Rehearing, we are not persuaded that we abused our discretion. Petitioner
`
`3
`
`
`
`IPR2017-00467
`Patent 6,968,459 B1
`
`first contends that we overlooked the “Motivation to Combine” section of its
`Petition, wherein Petitioner asserts one of ordinary skill in the art would use
`Bramhill’s cybermetrics either in addition to or in place of the passwords
`disclosed in Uchida. Reh’g. Req. 2 (citing Pet. 49–51; Ex. 1002 ¶¶ 87, 88,
`91). Petitioner’s argument is not responsive to the deficiency we identified.
`We stated in our Decision that even if “Uchida’s passwords meet the
`claimed device-specific security information, Uchida fails to teach
`restricted-access preventing writing data when the disk is not password
`protected (i.e., when the storage device does not contain the device-specific
`security information).” Dec. 14 (emphasis added). Adding to or replacing
`Uchida’s passwords with Bramhill’s cybermetrics does not explain how
`Uchida, even with the proposed password/cybermetric combination, would
`prevent data from being written when the password/cybermetric
`combination is not stored (claim 15) or sensed (claim 18). Id.
`We are similarly not persuaded by Petitioner’s second argument that
`we overlooked Petitioner’s reliance on the “logic of Uchida that follows Step
`62 of Figure 10 (namely, Steps 63, 64, 65 and 66 of Figure 10)” because this
`logic is not relevant to our findings. As Petitioner admits, Figure 10 of
`Uchida describes actions taken when Uchida’s removable optical magnetic
`disk is protected by two pre-determined passwords, which are stored on the
`disk. Pet. 63 (citing Ex. 1006, 3:31–34; Ex. 1002, ¶¶ 177–178); see also
`Reh’g. Req. 4. Claims 15 and 18, however, require preventing writing to the
`disk “when the disk is not password protected (i.e., when the storage device
`does not contain the device-specific security information).” Dec. 14
`(emphases added). As we explained in our Decision, Petitioner fails to show
`that Uchida meets the language of the challenged claims because STEP S62
`
`4
`
`
`
`IPR2017-00467
`Patent 6,968,459 B1
`
`of Uchida’s Figure 10 “teaches allowing full access, rather than restricted
`access, when the storage device does not store the device-specific security
`information.” Id. With regard to independent claim 18, we stated, “[l]ike
`Figure 10 discussed in Section IV.C.1 above, Figure 9 describes writing data
`when Uchida’s disk is not password protected.” Id. at 15 (citing Ex. 1006,
`10:65–66 (“If it is not protected by a password, the data is written
`(STEP S52)”)). We thus are not persuaded by Petitioner’s second argument
`because it does not address Petitioner’s failure to show how Uchida’s
`methods purportedly teach preventing writing when Uchida’s disk is not
`password protected.
`
`IV. CONCLUSION
`Upon consideration of the Petitioner’s Request for Rehearing, the
`Petition, the Preliminary Response, and the evidence before us, we
`determine that Petitioner has not established that we abused our discretion in
`denying institution of an inter partes review based on its grounds asserting
`the combination of Uchida and Bramhill against claims 15, 18, 24, and 25.
`Accordingly, we deny the Request for Rehearing.
`
`
`V. ORDER
`
`It is hereby
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-00467
`Patent 6,968,459 B1
`
`FOR PETITIONER:
`Benjamin E. Weed
`Erik J. Halverson
`K&L GATES LLP
`benjamin.weed.PTAB@klgates.com
`erik.halverson@klgates.com
`
`Peter Dichiara
`Theodoros Konstantakopoulos
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Peter.dichiara@wilmerhale.com
`Theodoros.konstantakopoulos@wilmerhale.com
`
`PATENT OWNER:
`Byron L. Pickard
`James Hietala
`Tim Seeley
`Steven Peters
`Daniel Block
`Lestin Kenton
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`bpickard-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`lkentonPTAB@sternekessler.com
`jhietala@intven.com
`tim@intven.com
`ptab@sternekessler.com
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
