Trials@uspto.gov Paper No. 8
`Tel: 571-272-7822
`Entered: August 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00824
`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: August 17, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00824
`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
`
`
`
`
`IPR2017-00824
`Patent 6,088,802
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`I. INTRODUCTION
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–3, 6–8, 11–15, 23–28, and 36–39
`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 1–3, 6–8, 11–15, 23–28, and 36–39 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 Co. Inc., No. 8:16-cv-01790
`(C.D. Cal. Filed Sept. 27, 2016); SPEX Technologies, Inc. v. Western Digital
`Corp., 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 SPEX Technologies, Inc. v.
`2
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`Apricorn, No. 2:16-cv-07349 (C.D. Cal. Filed Sept. 28, 2016). Pet. 2; Paper
`3, 2–3.1
`The ’802 patent also was the subject of a petition for inter partes
`review filed December 14, 2016, by Unified Patents Inc. Case IPR2017-
`00430, Paper 2. A decision denying institution of inter partes review in that
`case was entered on July 5, 2017. Case IPR2017-00430, Paper 8.
`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 3) does not include page numbers. For ease of reference,
`the Parties are advised to include page numbers in all filings.
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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.
`Id. at 1:58–59, 2:22–32. 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;
`
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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 [pass] through means for performing
`the one or more security operations.
`Ex. 1001, 18:55–19:4, 22:13–38.
`
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`1004
`
`D. References Relied Upon
`Petitioner relies on the following references:
`Exhibit Reference
`1003
`PCT Application WO 95/16238, published June 15, 1995
`(“Jones”)
`U.S. Patent No. 5,675,645, issued Oct. 7, 1997
`(filed Apr. 18, 1995) (“Schwartz”)
`U.S. Patent No. 5,237,609, issued Aug. 17, 1993 (“Kimura”)
`U.S. Patent No. 5,465,338, issued Nov. 7, 1995 (“Clay”)
`Common Interface Specification for Conditional Access and
`Other Digital Video Broadcasting Decoder Applications,
`Digital Video Broadcasting, DVB Document A017, dated
`May 31, 1996 (“Common Interface Specification”)
`
`1005
`1007
`1008
`
`Pet. 4–5. Petitioner also relies on a declaration of Roy A. Griffin III, P.E.
`(Ex. 1009).
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–3, 6–8, 11–15, 23–
`28, and 36–39 under 35 U.S.C. § 103(a) on the following grounds:
`
`Reference(s)
`Jones
`Jones and (Schwartz and/or
`Kimura)
`Jones and Common Interface
`Specification
`Jones and Clay
`
`Claims Challenged
`1–3, 6–8, 11–15, 23–28, and 36–39
`
`1, 11, 23, 36, and 39
`
`3, 8, 15, and 28
`
`14 and 27
`
`
`Pet. 5.
`
`
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`III. DISCUSSION
`A. Claim Construction
`1. Applicable Standard and General Principles
`Although the ’802 patent’s expiration date is not mentioned by either
`party, we note that 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). Petitioner contends that, “[u]nder 37 C.F.R. § 42.100(b), a
`claim in inter partes review is given the ‘broadest reasonable construction’
`in light of the specification” and that “for purposes of this inter partes
`proceeding only, that the broadest reasonable interpretation should govern
`the meaning of the claim terms.” Pet. 24–25. Petitioner disregards that
`section 42.100(b) states more specifically only that “[a] claim in an
`unexpired patent that will not expire before a final written decision is issued
`shall be given its broadest reasonable construction” (emphasis added), and
`that we instead 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) (“While claims are generally given their broadest
`possible scope during prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed.
`Cir. 2000), the Board’s review of the claims of an expired patent is similar to
`that of a district court's review.”). 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.
`
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`A claim limitation using the phrase “means for” creates a rebuttable
`presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.2 See
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015).
`Section 112 ¶ 6 provides that:
`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.
`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). 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. This analysis applies similarly under both the broadest reasonable
`construction and district court-type claim construction standards. See
`Williamson, 792 F.3d at 1348 (affirming application of § 112 ¶ 6 in district
`court litigation); In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011)
`
`
`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
`September 16, 2012 (effective date of the statute), we refer to the pre-AIA
`version of 35 U.S.C. § 112.
`
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`(“[T]he broadest reasonable interpretation . . . [of] means-plus-function
`language is that statutorily mandated in [Section 112] paragraph six.”
`(quoting In re Donaldson Co., 16 F.3d 1189, 1194–95 (Fed. Cir. 1994)
`(en banc))); Donaldson, 16 F.3d at 1193 (“[P]aragraph six applies regardless
`of the context in which the interpretation of means-plus-function language
`arises, i.e., whether as part of a patentability determination in the PTO or as
`part of a validity or infringement determination in a court.”).
`Our Rules 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).
`2. “security means for enabling one or more security operations
`to be performed on data” / “means for performing . . . one or
`more security operations”
`The limitation “security means for enabling one or more security
`operations to be performed on data” is recited in each of independent claims
`1, 6, 11, 23, 24, 36, and 37 of the ’802 patent. The limitation “means for
`performing . . . one or more security operations” is recited in independent
`claim 39. Petitioner does not address these limitations—or any other claim
`terms—expressly in the “Claim Construction” portion of the Petition. See
`generally Pet. 24–25. In the discussion of its first asserted ground of
`
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`unpatentability, however, Petitioner contends as follows, with respect to the
`“security means” limitation of claim 1:
`The function recited by this mean-plus-function language
`is the function of enabling one or more security operations to be
`performed on data. The ’802 patent describes a “security
`mechanism” that is used to perform a range of security operations
`on data, including cryptographic functions:
`
`Generally, the security mechanism 302a can be configured
`to perform any electronic data security operation (herein,
`referred to simply as “security operation”) including, for
`example, operations that provide one or more of the basic
`cryptographic functions, such as maintenance of data
`confidentiality, verification of data
`integrity, user
`authentication and user nonrepudiation.
` Particular
`security operations that can be implemented in a
`peripheral device according to the invention are described
`in more detail below.
`
`The security mechanism 302a can be, for example,
`embodied as a security token. Herein, “security token”
`refers to a device that performs security operations and
`that includes one or more mechanisms (such as, for
`example, use of a hardware random number generator
`and/or protected memory) to provide security for the
`content of those operations.
`
`Pet. 27–28 (quoting Ex. 1001, 5:23–39) (citing Ex. 1001, 15:63–67;
`Ex. 1009 ¶ 44). Petitioner does not identify expressly the function or any
`corresponding structure disclosed in the ’802 patent with respect to the
`“means for performing . . . one or more security operations” recited in claim
`39. Id. at 60–62.
`In the Preliminary Response, Patent Owner argues that the recited
`“security means” and “means for performing the one or more security
`
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`operations,” among other claim terms, are presumed to be means-plus-
`function terms. Prelim. Resp. 5–6. Patent Owner does not dispute
`Petitioner’s contentions with respect to the functions of these limitations or
`the applicability of the disclosures of the ’802 patent cited by Petitioner, but
`instead takes issue, inter alia, with Petitioner’s failure to state explicitly that
`these limitations are governed by § 112 ¶ 6 or to advance constructions of
`any claim term in the Claim Construction section of the Petition. Id. at 6–7.
`Patent Owner further contends, “Petitioner failed to identify the
`corresponding structure disclosed in the ’802 Patent that is clearly linked or
`associated with the function in the claim of ‘enabling one or more security
`operations to be performed on data.’” Id. at 14. More particularly, Patent
`Owner argues, “[w]hile Petitioner states that the ‘’802 Patent describes a
`“security mechanism” that is used to perform a range of security operations
`on data,’ Petitioner stops short of admitting that the security mechanism
`302a is the corresponding structure and showing how the security
`mechanism is clearly linked to the claimed function.” Id. As such, Patent
`Owner argues, “Petitioner has failed to carry its burden” of identifying the
`claimed function and the specific portions of the specification that describe
`the structure corresponding to the claimed function. Id.
`Having considered the parties’ arguments, we agree with Patent
`Owner that the recited “security means” and “means for performing the one
`or more security operations” are means-plus-function limitations subject to
`construction under 35 U.S.C. § 112 ¶ 6 and that the burden was on Petitioner
`under 37 C.F.R. § 42.104(b)(3) to identify the specific portions of the ’802
`patent specification that describe the structure, material, or acts
`corresponding to the claimed functions.
`
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`Although we further agree with Patent Owner that Petitioner “stops
`short” in the Petition of stating that “security mechanism 302a” disclosed in
`the ’802 patent is the corresponding structure and showing how it is clearly
`linked to the claimed function (Prelim. Resp. 14), we are not persuaded that
`“security mechanism 302a,” standing alone, provides sufficient structure to
`satisfy the requirements of 35 U.S.C. § 112 ¶ 6. As the Federal Circuit
`explained in Williamson, “[g]eneric terms such as ‘mechanism,’ . . . 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)). Accordingly, merely replacing “means” with the similarly
`generic word “mechanism” would 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, even if
`Petitioner had been explicit in linking the disclosure of security mechanism
`302a with the claimed function.
`We note, however, that, as quoted above, Petitioner additionally cites
`the ’802 patent as disclosing that “security mechanism 302a can be, for
`example, embodied as a security token,” where “‘security token’ refers to a
`device that performs security operations and that includes one or more
`mechanisms (such as, for example, use of a hardware random number
`generator and/or protected memory) to provide security for the content of
`those operations.” Pet. 28 (quoting Ex. 1001, 5:23–39). On the current
`record, we find such security token to be the only sufficiently definite
`
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`structure identified by the parties linked with the functions of the “security
`means” recited in independent claims 1, 6, 11, 23, 24, 36, and 37, as well as
`the “means for performing . . . one or more security operations” recited in
`independent claim 39 but not separately addressed by Petitioner.
`Accordingly, for purposes of this Decision, we construe both “security
`means for enabling one or more security operations to be performed on data”
`and “means for performing the one or more security operations” under
`35 U.S.C. § 112 ¶ 6 to cover “a security token that performs security
`operations and that uses a hardware random number generator or protected
`memory, or both, to provide security for the content of those operations,” as
`well as equivalents thereof.
`3. Other terms
`For reasons stated below, we determine that the construction of
`“security means” and “means for performing the one or more security
`operations” provided in the previous subsection is dispositive of all of
`Petitioner’s challenges as to claims 1–3, 6–8, 11–15, 23–28, 36, 37, and 39
`of the ’802 patent. Moreover, the parties have not identified any dispute
`regarding the construction of any terms of the remaining challenged claim,
`i.e., claim 38. Accordingly, we need not construe any other terms on the
`present record. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
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`B. Analysis of Asserted Grounds of Unpatentability
`1. General Principles
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter[,] as a whole[,] would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations, including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art3; and (4) objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`Our Rules require that a petition for inter partes review identify
`“[h]ow the construed claim is unpatentable under the statutory grounds
`identified” and must 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). Moreover, “a challenger who seeks to demonstrate that a
`means-plus-function limitation was present in the prior art must prove that
`the corresponding structure—or an equivalent—was present in the prior art.”
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir.
`2009) (citing Donaldson, 16 F.3d at 1193).
`
`
`3 Petitioner proposes a definition for a person of ordinary skill in the art.
`Pet. 23; see Ex. 1009 ¶ 20. Patent Owner does not challenge this definition.
`For purposes of this Decision and to the extent necessary, we adopt
`Petitioner’s definition.
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`2. Asserted Obviousness of Claims 1–3, 6–8, 11–15, 23–28, 36,
`37, and 39 over Jones
`Petitioner asserts that claims 1–3, 6–8, 11–15, 23–28, 36, 37, and 39
`are unpatentable as obvious over Jones. Pet. 25–56, 58–62. Having
`reviewed the Petition and Preliminary Response, as well as the presented
`evidence, we determine that Petitioner has not established a reasonable
`likelihood of prevailing on its assertion that the subject matter of claims 1–3,
`6–8, 11–15, 23–28, 36, 37, and 39 would have been obvious over Jones.
`a. Overview of Jones
`Jones, titled “Secure Computer Memory Card,” describes a detachable
`memory card that may be interconnected with a host personal computer by
`means of a hardware and software interface in conformance with the
`Personal Computer Memory Card International Association (PCMCIA)
`standard. Ex. 1003, Title, Abstract, 4:3–7. Figure 1 of Jones is reproduced
`below.
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`Figure 1 is a block diagram of a memory card described by Jones,
`shown interconnected with a host computer that is, in turn, connected to
`other computers by telecommunications links. Ex. 1003, 3:26–29. As
`illustrated in Figure 1, memory card 100 includes smart card integrated
`circuit (I.C.) 250 for storing a password, as well as logic circuitry for
`preventing access to information stored on the memory card unless a user of
`host computer 110 to which memory card 100 is connected can supply a
`password matching the stored password. Id. at Abstract. Smart card I.C.
`250 may also be used to store public and private key values used to encrypt
`and decrypt data stored on memory card 100, elsewhere on host computer
`110, or exchanged with remote computer 120. Id.
`According to Jones, memory card 100 stores data in common memory
`array 150, preferably implemented with non-volatile flash memory
`integrated circuits. Id. at 4:29–30. Data transfers between common memory
`array 150 and host computer 110 are accomplished via interface data
`terminals 171, data bus buffer 173, internal data bus 175, internal
`encryption/decryption unit 177, gate 178, and internal data bus 179. Id. at
`5:1–4. Control signals are exchanged between common memory array 150
`and host computer 110 via PCMClA interface control terminals 181 and
`internal control bus 185. Id. at 5:4–7.
`b. Discussion
`As stated in § 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,” and independent claim
`39 recites “means for performing . . . one or more security operations.”
`Challenged claims 2, 3, 7, 8, 12–15, and 25–28 are dependent claims that
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`depend directly or indirectly from claim 1, 6, 11, or 24, and each accordingly
`also includes the same “security means” limitation. See 35 U.S.C. § 112 ¶ 4.
`In support of its contention that claim 1 is unpatentable over Jones,
`Petitioner argues as follows with respect to the recited “security means”
`limitation:
`Jones’s abstract states:
`
`
`A detachable PCMCIA memory card incorporating a
`smartcard integrated circuit for storing a password value
`and logic circuitry for preventing access to information
`stored on the memory card unless the user of the host
`computer to which the memory card is connected can
`supply a password matching the stored password. . . .
`
`Jones discloses an encryption-decryption unit 177 and gate that
`perform cryptographic functions on data, and thus correspond to
`the security means claimed in the ’802 patent. With regard to the
`encryption-decryption unit, Jones states: “To provide additional
`security, the data transferred over the 16-bit data bus between the
`data bus buffer 173 and the gate 178 is processed by the
`encryption-decryption unit 177 which preferably [i]mplements a
`symmetrical key algorithm . . . .” Ex. 1003 at page 8, lines 3–6.
`Further, “[g]ate 178 prevents the common memory array 150
`from exchanging data with the host 150 via data bus 179 unless
`an authorization signal is supplied to the gate via a control line
`219 from a card lock logic circuit 220.” Id. at page 6, lines 5–7.
`Griffin Dec. (Ex. 1009), ¶¶ 45–46.
`
`Pet. 28–29. Petitioner relies on the same argument with respect to the
`“security means” limitations of claims 6, 11, 23, 24, 36, and 37. Id. at
`41, 44, 48, 50, 54, 55. Petitioner does not separately address the
`“means for performing . . . one or more security operations” limitation
`of claim 39, but argues that Figure 1 of Jones “shows that the
`
`
`
`17
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`IPR2017-00824
`Patent 6,088,802
`
`exchanged data must first pass through Encrypt-Decrypt block 177
`and gate 178 of security module 290/250” in arguing that Jones
`teaches the recited step of “mediating communication of the
`exchanged data between the host computing device and the peripheral
`device so that the exchanged data must first pass through means for
`performing the one or more security operations.”
`Patent Owner responds that, although Petitioner points to
`encryption-decryption unit 177 and gate 178 of Jones as
`corresponding to the “security means” and “means for performing the
`one or more security operations” of the challenged claims, “Petitioner,
`however, never performed the required structural analysis.” Prelim.
`Resp. 15. More particularly, Patent Owner contends, “even if the
`‘security mechanism 302a’ is the corresponding structure identified by
`Petitioner, Petitioner never compared the structure of the security
`mechanism 302a to the encryption-decryption unit 177 and gate 178
`in Jones to show that the structures are the same.” Id. at 16.
`Accordingly, Patent Owner concludes, Petitioner has failed to carry its
`burden to show where the claimed “security means” is disclosed in
`Jones, and Petitioner’s challenge of claims 1–3, 6–8, 11–15, 23–28,
`36, 37, and 39 should be denied. Id.
`We agree with Patent Owner. An unpatentability determination
`with respect to claims subject to construction under § 112 ¶ 6 requires
`structural analysis demonstrating that the corresponding structure in
`the challenged patent specification—or an equivalent structure—is
`present in the prior art. SpaceCo Bus. Sols., Inc. v. Moscovitch,
`IPR2015-00127, slip op. at 25 (PTAB May 14, 2015) (Paper 16)
`
`
`
`18
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`IPR2017-00824
`Patent 6,088,802
`
`(citing Fresenius, 582 F.3d at 1299). Although for the reasons stated
`in § III.A.2 supra we are not persuaded that “security mechanism
`302a” is the proper corresponding structure for the recited “security
`means” and “means for performing the one or more security
`operations” limitations, Petitioner’s failure to perform any structural
`comparison of Jones’s encryption-decryption unit 177 and gate 178
`alleged to correspond to the claimed means limitations with any
`structure disclosed in the ’802 patent is fatal to Petitioner’s
`contentions. Accordingly, we do not institute an inter partes review
`of claims 1–3, 6–8, 11–15, 23–28, 36, 37, and 39 as unpatentable over
`Jones.
`
`3. Asserted Obviousness of Claim 38 over Jones
`Petitioner asserts that claim 38 is unpatentable as obvious over Jones.
`Pet. 56–58. Having reviewed the Petition and the Preliminary Response, as
`well as the presented evidence, we determine that Petitioner has not
`established a reasonable likelihood of prevailing on this assertion.
`Claim 38 recites, in part, “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 (emphasis added). In support of its contention that claim 38 is
`unpatentable over Jones, Petitioner quotes Jones as follows:
`To implement the PCMCIA interface standard, the secure
`memory card includes a non-volatile attribute memory 190
`which stores information enabling the host computer to
`automatically identify the particular PCMCIA card as soon as the
`card and host are connected, and to automatically establish the
`
`
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`19
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`IPR2017-00824
`Patent 6,088,802
`
`appropriate hardware/software interface using suitable driver
`software which executes on the host computer 110.
`
`Pet. 56–57 (quoting Ex. 1003, 5:24–29 (emphasis added by Petitioner)); id.
`at 58 (quoting the same passage). Petitioner further contends:
`This is consistent with the teachings of Jones that the host calls
`on various card functions when the host and peripheral device
`are connected:
`
`
`Whenever a PCMCIA card is newly inserted into the
`socket of a running host computer, the Client Device
`Driver is notified by the Card Services software (via its
`CARD INSERTION callback function), so that it can
`process the card’s CIS entries to identify each partition
`that may be password-protected. Similarly, when the host
`computer is first powered up and the Client Device Driver
`is initialized, the Client Device Driver calls Card Services
`functions to process the cards CIS entries to identify each
`partition that may be locked. The device driver software
`then attempts to access each identified partition.
`
`Ex. 1003 at page 10, lines 10–18 (emphasis added). Griffin Dec.
`(Ex. 1009), ¶ 124.
`
`
`Pet. 57.
`Patent Owner responds that Petitioner fails to show that the step of
`“receiving a request from a host computing device for information regarding
`the type of the peripheral device” is disclosed by Jones, as the passages of
`Jones quoted by Petitioner do not teach “receiving a request from a host
`computing device,” and also fails to show that Jones discloses “providing to
`the host computing device, in response to the request, information regarding
`the type of the defined interaction.” Prelim. Resp. 24–25. With regard to
`the first passage from Jones quoted by Petitioner, Patent Owner argues that
`
`
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`20
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`IPR2017-00824
`Patent 6,088,802
`
`passage “states that the PCMCIA card contains information ‘enabling the
`host computer to automatically identify the particular PCMCIA card . . . and
`establish the appropriate driver software,’” but “does not disclose that the
`PCMCIA card ‘receives a request from a host computing device.’” Id. at 24.
`Regarding
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