Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 1 of 52 Page ID #:2032
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`Present: The
`Honorable
`
`James V. Selna
`
`Karla J. Tunis
`
`Deputy Clerk
`
`Not Present
`
`Court Reporter
`
`Attorneys Present for Plaintiffs:
`
`Attorneys Present for Defendants:
`
`Not Present
`
`Not Present
`
`Proceedings:
`
`(IN CHAMBERS)
`ORDER REGARDING CLAIM CONSTRUCTION
`
`Plaintiff SPEX Technologies, Inc. (“SPEX” or “Plaintiff”) and Defendants Toshiba
`America Electronic Components Inc., Toshiba America Information Systems, Inc.,
`Toshiba Corporation, Western Digital Corporation, Western Digital Technologies, Inc.,
`HGST, Inc., Imation Corporation, Kingston Technology Corporation, Kingston Digital
`Inc., Kingston Technology Company, Inc., Apricorn, Datalocker, Inc., and Data Locker
`International, LLC (together “Defendants”) have submitted proposed claim constructions
`for terms contained in two of SPEX’s patents. See, e.g., Docket Nos. 88, 92.1 Both parties
`have submitted opening and responsive claim construction briefs. SPEX Op. Br., Docket
`No. 96; Defendants Op. Br., Docket No. 94; SPEX Resp. Br., Docket No. 100;
`Defendants Resp. Br., Docket No. 98.
`
`
`
`The Court construes the claim terms identified below.
`
`BACKGROUND
`
`Two of SPEX’s patents are currently at issue:
`
`1. U.S. Pat. 6,088,802 (“the ’802 patent”). Docket No. 96, Ex. 1.
`
`1All docket citations are to Case No. 8:16-cv-01790 unless otherwise noted.
`CV-90 (06/04)
`CIVIL MINUTES - GENERAL
`
`Page 1 of 52
`
`SPEX Technologies, Inc.
`IPR2018-00082 Ex. 2003
`
`1
`
`

`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 2 of 52 Page ID #:2033
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`2. U.S. Pat. 6,003,135 (“the ’135 patent”). Id. Ex. 2.
`
`The applications resulting in the ’802 Patent and the ’135 Patent were filed the
`same day: June 4, 1997. The two patents are not technically related. However, the patent
`applications were prosecuted in parallel. The patents also have overlapping figures and
`specification disclosures.
`
`Both patents relate to devices that can communicate with host computing devices
`to provide various operations, including security operations. See ’802 Patent at Abstract;
`’135 Patent at Abstract. The ’802 Patent is titled “PERIPHERAL DEVICE WITH
`INTEGRATED SECURITY FUNCTIONALITY” and issued on July 11, 2000. The ’135
`Patent is titled “MODULAR SECURITY DEVICE” and issued on December 14, 1999.
`Both patents are now expired.
`
`SPEX alleges that Defendants infringed Claims 1, 2, 6, 7, 11, 12, 23, 25, 38, and
`39 of the ’802 Patent. SPEX Op. Br. at 2. Claim 1 recites:
`
`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;
`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.
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 2 of 52
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`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 3 of 52 Page ID #:2034
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`SPEX also alleges that Defendants infringed Claims 55–58 of the ’135 Patent.
`SPEX Br. at 2. Claim 55 recites:
`
`55. For use in a modular device adapted for communication with a host
`computing device, the modular device comprising a security module that is
`adapted to enable one or more security operations to be performed on data
`and a target module that is adapted to enable a defined interaction with the
`host computing device, a method comprising the steps of:
`receiving a request from the host computing device for information
`regarding the type of the modular device;
`providing the type of the target module to the host computing device
`in response to the request; and
`operably connecting the security module and/or the target module to
`the host computing device in response to an instruction from the
`host computing device.
`
`LEGAL STANDARD
`
`I.
`
`General Claim Construction Principles
`
`Claim construction is “exclusively within the province of the court.” Markman v.
`W. Instruments, Inc., 517 U.S. 370, 372 (1996). Such construction “must begin and
`remain centered on” the claim language itself. Interactive Gift Express, Inc. v.
`Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). But extrinsic evidence may also
`be consulted “if needed to assist in determining the meaning or scope of technical terms
`in the claims.” Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir.
`1995).
`
`In construing the claim language, the Court begins with the principle that “the
`words of a claim are generally given their ordinary and customary meaning.” Phillips v.
`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotation marks
`omitted). This ordinary and customary meaning “is the meaning that the [claim] term
`would have to a person of ordinary skill in the art in question at the time of the invention,
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 3 of 52
`
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`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 4 of 52 Page ID #:2035
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`i.e., as of the effective filing date of the patent application.” Id. at 1313. “[T]he person of
`ordinary skill in the art is deemed to read the claim term not only in the context of the
`particular claim in which the disputed term appears, but in the context of the entire patent,
`including the specification.” Id.
`
`“In some cases, the ordinary meaning of claim language as understood by a person
`of skill in the art may be readily apparent even to lay judges, and claim construction in
`such cases involves little more than the application of the widely accepted meaning of
`commonly understood words. In such circumstances general purpose dictionaries may be
`helpful.” Id. at 1314 (internal citation omitted). In other cases, “determining the ordinary
`and customary meaning of the claim requires examination of terms that have a particular
`meaning in a field of art.” Id. Then “the court looks to those sources available to the
`public that show what a person of skill in the art would have understood disputed claim
`language to mean.” Id. (internal quotation marks omitted). These sources include “the
`words of the claims themselves, the remainder of the specification, the prosecution
`history, and extrinsic evidence concerning relevant scientific principles, the meaning of
`technical terms, and the state of the art.” Id. (internal quotation marks omitted).
`
`But it is improper to read limitations from the specification into the claim.
`Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1368 (Fed. Cir. 2005) (“[I]f we once
`begin to include elements not mentioned in the claim, in order to limit such claim . . . we
`should never know where to stop.”) (quoting Phillips, 415 F.3d at 1312). A court does
`“not import limitations into claims from examples or embodiments appearing only in a
`patent’s written description, even when a specification describes very specific
`embodiments of the invention or even describes only a single embodiment, unless the
`specification makes clear that ‘the patentee . . . intends for the claims and the
`embodiments in the specification to be strictly coextensive.’” JVW Enters., Inc. v.
`Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005) (internal citations
`omitted) (italics added).
`
`II. Means Plus Function Claims
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 4 of 52
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 5 of 52 Page ID #:2036
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`Under 35 U.S.C. § 112(6),2 means-plus-function claiming occurs when an element
`in a claim is a “means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof . . . .” In that case, “such claim shall be
`construed to cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.” Id. This provision allows “patentees to express a
`claim limitation by reciting a function to be performed rather than by reciting structure
`for performing that function . . . .” Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1347 (Fed. Cir. 2015) (en banc). At the same time, it constrains “how such a limitation is
`to be construed, namely, by restricting the scope of coverage to only the structure,
`materials, or acts described in the specification as corresponding to the claimed function
`and equivalents thereof.” Id.
`
`The failure to use the term “means” creates a rebuttable presumption that § 112(6)
`does not apply. See Advanced Ground Info. Sys., Inc. v. Life360, Inc., 830 F.3d 1341,
`1347 (Fed. Cir. 2016). To overcome this presumption a challenger must show “that the
`claim term fails to recite sufficiently definite structure or else recites function without
`reciting sufficient structure for performing that function.” Id. (quoting Williamson, 792
`F.3d at 1348). The challenger must establish § 112(6)’s applicability by a preponderance
`of the evidence. Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1019 (Fed. Cir. 2017).
`
`Once a court concludes that a term is subject to § 112(6), it follows a two-step
`process. Williamson, 792 F.3d at 1351. “First, the court must determine the claimed
`function. Second, the court must identify the corresponding structure in the written
`description of the patent that performs the function.” Noah Sys., Inc. v. Intuit Inc., 675
`F.3d 1302, 1311 (Fed. Cir. 2012) (internal citations omitted). “Where there are multiple
`claimed functions . . . the patentee must disclose adequate corresponding structure to
`perform all of the claimed functions. If the patentee fails to disclose adequate
`corresponding structure, the claim is indefinite.” Williamson, 792 F.3d at 1351.
`
`2 § 112(6) was renamed as § 112(f) by the America Invents Act, Pub. L. No. 112–29 (“AIA”), which took
`effect on September 16, 2012. Because the inventors here applied for the patents-in-suit before the act’s passage,
`§ 112(6) applies here.
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 5 of 52
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 6 of 52 Page ID #:2037
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`A corresponding structure is one that the specification or prosecution history
`“clearly links . . . to the function recited in the claim.” Id. The specification’s disclosure
`of a corresponding structure “must be of adequate corresponding structure to achieve the
`claimed function.” Id. (internal quotations omitted). “If a person of ordinary skill in the
`art would be unable to recognize the structure in the specification and associate it with the
`corresponding function in the claim, a means-plus-function clause is indefinite.” Id.
`
`For cases “involving a special purpose computer-implemented means-plus-
`function limitation,” the disclosed structure must “be more than simply a general purpose
`computer or microprocessor.” Noah, 675 F.3d at 1312. Instead, the specification must
`“disclose an algorithm for performing the claimed function.” Id. (quoting Net MoneyIN,
`Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008)). “The specification can
`express 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.’” Id.
`(quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
`
`CLAIM CONSTRUCTION
`
`“defined interaction” (’802 Patent, Claims 1, 6, 11, 23, 38, 39; ’135 Patent,
`I.
`Claims 55, 57, 58) and “interaction with a host computing device in a defined way”
`(’802 Patent, Claims 38, 39)
`
`Defendants’
`Construction
`Both terms:
`Indefinite
`
`SPEX’s Construction
`
`“defined interaction”:
`A specific, predefined functionality of the
`device, such as data storage, data
`communication, data input and output or
`user identification
`“interaction with a host computing device in
`a defined way”: “Interaction with a host
`
`Court’s
`Construction
`“an interaction
`[with a host
`computing device]
`that can provide
`one or more of a
`variety of
`functionalities”
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 6 of 52
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 7 of 52 Page ID #:2038
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`computing device using a specific,
`predefined functionality of the device, such
`as data storage, data communication, data
`input and output or user identification
`
`The parties dispute whether the terms “defined interaction” and “interaction with a
`host computing device in a defined way” are indefinite. Defendants argue that the terms
`are indefinite because they “have no ordinary meaning in the art and are not defined or
`otherwise clarified by the specifications of the Asserted Patents.” Defendants Op. Br. at
`3. Defendants argue that the claims themselves and the extrinsic evidence do not provide
`the metes and bounds of a “defined interaction” or otherwise clarify the term’s meaning.
`Id. at 4. Defendants also challenge SPEX’s construction as improperly swapping the term
`“interaction” for the term “functionality” and the term “defined” for the terms “specific,
`predefined.” Id. at 5–6.
`
`Claims 38 and 39 of the ’802 Patent include both the “defined interaction” and
`“interaction with a host computing device in a defined way” terms. In these two claims,
`the term “interaction with a host computing device in a defined way” provides an
`antecedent basis for the term “defined interaction.” For example, Claim 38 recites:
`
`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.
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 7 of 52
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`7
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 8 of 52 Page ID #:2039
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`Accordingly, these terms should be construed the same. Haemonetics Corp. v. Baxter
`Healthcare Corp., 607 F.3d 776, 780–82 (Fed. Cir. 2010).
`
`The ’802 Patent Abstract further discusses “defined interactions”:
`
`The defined interactions can provide a variety of types of functionality (e.g.,
`data storage, data communication, data input and output, user identification).
`The peripheral device can also be implemented so that the security
`operations are performed in-line, i.e., the security operations are performed
`between the communication of data to or from the host computing device
`and the performance of the defined interaction.
`
`’802 Patent at Abstract (emphasis added); see also id. at 3:33–36; ’135 Patent at 4:18–31.
`
`Defendants challenge SPEX’s construction for omitting the term “interaction.” Id.
`In doing so, Defendants acknowledge that they understand the plain meaning of the term
`“interaction.” See Defendants Op. Br. at 4–5 (arguing that SPEX’s proposed construction
`“conflicts with the meaning of the word ‘interaction’. . .”). The Court agrees with
`Defendants that this word should not be read out of the claim terms.
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
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`Page 8 of 52
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`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 9 of 52 Page ID #:2040
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`The Court similarly agrees that swapping the term “interaction” for the term
`“functionality” would be in error. As Defendants note, the patent specification refers to a
`defined interaction as providing a functionality. It would be nonsensical to construe an
`“interaction” as a “functionality” because it would lead portions of the specification to
`effectively state that a “functionality provides a functionality.”
`
`But while SPEX’s proposed constructions have a number of shortcomings,
`
`Defendants have not met their burden of showing by clear and convincing evidence that
`these claim terms are indefinite. As stated, Defendants acknowledge that the term
`“interaction” has meaning. Defendants also acknowledge that the specification refers to a
`defined interaction as providing “a variety of types of functionality.” Defendants Op. Br.
`at 5; see ’802 Patent at Abstract. The patent uses the terms “defined interaction” and
`“interaction with a host computing device in a defined way” consistent with the plain and
`ordinary meaning of the words “defined” and “interaction.” Although both parties appear
`to agree that “defined interaction” is not a term in the art, it does not follow that a person
`of skill in the art would not understand the boundaries of the phrase “defined interaction”
`in the context of the asserted patents.
`
`Defendants’ only other argument appears to be that the term “defined” does not
`have a reasonably definite scope. The Court finds SPEX’s expert testimony on this issue
`persuasive:
`
`In the 1997 timeframe, it had become common to specify operating behavior
`for end-point devices in order to improve compatibility and interoperability
`within a host computing environment. Legacy systems that lacked this
`capability often demonstrated an inability to coexist and operate properly.
`The problem had become especially severe in open systems such as personal
`computers where circuit cards were commonly added to expand the system
`capabilities. Often these cards did not work as intended due to a mismatch of
`the expected behaviors. A person of ordinary skill in the timeframe of the
`patent was very familiar with these problems and would have been familiar
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 9 of 52
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 10 of 52 Page ID
` #:2041
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`with the solutions. One such solution was to define the types of functionality
`within which a product would operate and to convey that information to the
`host computer.
`
`SPEX Op. Br., Attachment 10 (“Gomez Decl.”) ¶ 40. Mr. Gomez’s explanation of a
`solution that “define[s] the types of functionality within which a product would operate
`and [] convey[s] that information to the host computer” is consistent with how the patent
`claims and specification use the term “defined interaction.”
`
`At the hearing, Defendants submitted that SPEX had also disavowed claim scope
`for the term “defined interaction” in Patent Owner Preliminary Responses during inter
`partes review proceedings. After reviewing the parties’ supplemental briefs on the issue
`(Docket Nos. 105, 115) and supporting evidence, the Court is not persuaded that SPEX’s
`statements to the PTAB reflect a clear disavowal of “defined interaction” to exclude the
`transfer of data between the host computer and data storage. Rather, as the PTAB noted
`in its explanation for denying the IPR petition, Patent Owner (SPEX) simply pointed out
`that “[t]he claims explicitly require ‘communicating . . . to exchange data’ as a separate
`limitation from ‘performing one or more security operations and the defined interaction
`on the exchanged data.’” Docket No. 106, Ex. A (IPR2017-00825, Paper No. 8) at 18
`(emphasis added). This does not exclude transferring data from being functionality
`provided by a “defined interaction.” SPEX’s statements were not such a clear disavowal
`as to warrant limiting this claim term.
`
`The Court finds the terms “defined interaction” and “interaction with a host
`computing device in a defined way” convey reasonably certain meaning to a person of
`skill in the art. The Court construes the terms as “an interaction [with a host computing
`device] that can provide one or more of a variety of types of functionality.”
`
`II.
`
`“peripheral device” (’802 Patent, Claims 1, 2, 6, 7, 11, 12, 23, 25, 38, 39)
`
`CV-90 (06/04)
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`CIVIL MINUTES - GENERAL
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`Page 10 of 52
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`10
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`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 11 of 52 Page ID
` #:2042
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`SPEX’s Construction
`
`“Any device that operates
`outside of a host
`computing device (i.e. the
`keyboard-computer-screen
`system) and that is
`connected to the host
`computing device. Typical
`peripheral devices include
`but are not limited to a
`disk drive and a printer.”
`
`Defendants’
`Construction
`“any device that operates
`outside of a host
`computing device and that
`is connected to the host
`computing device”
`
`Court’s Construction
`
`“a device that operates
`functionally separate from a
`host computing device and
`that is connected to the host
`computing device, including
`such devices in the same
`housing as the host
`computing device”
`
`In their papers, the parties disputed whether “peripheral device” must be limited to
`a type of device located physically outside the housing or casing of a host computing
`device. SPEX argued that a peripheral device may be housed with a host computing
`device, while Defendants argued the term must be limited solely to devices that exist
`physically apart from the host computing device. SPEX Op. Br. at 6–8; Defendants Op.
`Br. at 8–9.
`
`At the hearing, Defendants’ arguments emphasized their concern that the
`peripheral device be functionally separate from the host computing device. Defendants
`argued, for example, that in their opinion, a device that performs part of the operation of
`the host computing device could not also perform the functions of the claimed peripheral
`device. In this regard, Defendants identified portions of the specification referring to prior
`art where security features were incorporated into the host computing device itself,
`leading to inadequate security. See ’802 Patent at 2:10–21. SPEX, to some extent,
`appeared to agree with Defendants about the ’802 Patent requiring functional separation
`between the host computing device and peripheral device by directing the Court’s
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 11 of 52
`
`11
`
`

`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 12 of 52 Page ID
` #:2043
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`attention to the fact that the ’802 Patent specifically describes connecting the peripheral
`to the host computing device. SPEX, however, expressed concerns over possible
`ambiguity with using the phrase “functionally separate” in the construction because,
`SPEX argued, a peripheral device in its plain and ordinary sense may be controlled by the
`host computer.
`
`The specification explicitly defines a “peripheral device” as “any device that
`operates outside of a host computing device and that is connected to the host computing
`device.” ’802 Patent at 4:52–55. The patentee thus acted as its own lexicographer in
`defining a “peripheral device.” Moreover, the plain language of this definition provides
`that the peripheral device be connected to the host computing device. In other words, the
`peripheral device must have some type of separation from the host computing device.
`
`The term “peripheral device” appears in the preamble of the claims. For example,
`the preamble of Claim 1 of the ’802 Patent states: “[a] peripheral device, comprising . . .
`.” Id. at 18:55. The claims do not recite language that would impose a limitation on the
`physical location of the peripheral device. The claims do, however, refer to “means for
`enabling communication with a host computing device.” ’802 Patent, Claim 1. Like the
`specification, the claims indicate a distinction between the peripheral device and the host
`computing device.
`
`In their briefing, both parties tied their arguments about “peripheral device” to
`characterizations about the scope of the term “host computing device.” SPEX Op. Br. at
`6–8; Defendants Op. Br. at 8–9; Defendants Resp. Br. at 4–5. For instance, SPEX
`asserted a narrow interpretation of host computing device, describing the “host
`computing device” as a system that may physically exist with other structures (such as a
`peripheral device) even though such structures are not considered part of the “host
`computing device.” SPEX Op. Br. 6–8 (citing ’802 Patent at 6:23–33, Fig. 6).
`Specifically, SPEX cited to a portion of the patent specification that describes the “host
`computing device” as a “monitor, keyboard, CPU[,] and RAM combination.” Id. at 6–7
`(citing ’802 Patent at 6:23–33, Fig. 6).
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 12 of 52
`
`12
`
`

`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 13 of 52 Page ID
` #:2044
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGRx): SPEX Technologies, Inc. v. Toshiba America Electronics
`Components Inc., et al
` CV16-07349 JVS(AGRx): SPEX Technologies, Inc. v. Apricorn
`
`Defendants argued that SPEX was attempting to narrow the meaning of “host
`computing device” by excluding internal hard drives. Defendants Resp. Br. at 4.
`Defendants contended that the patent discloses a broader interpretation of a “host
`computing device” that includes the hard disk drives internally housed with the rest of the
`host computing device. Defendants’ Resp. Br. at 4. Defendants cited to portions of the
`’802 Patent that disclose:
`
`[t]he peripheral device driver can have previously been installed on a data
`storage device (e.g., hard disk) of the host computing device (in FIG. 6, the
`peripheral device driver is shown stored in the memory section 606b of the
`memory device 606 of the host computing device 601) . . . .
`
`’802 Patent at 9:5–9; see Defendants Resp. Br. at 4.
`
`The parties’ arguments about the scope of the term “host computing device” are
`only tangentially related to the construction of “peripheral device.” Indeed, the parties
`have not asked the Court to construe the term “host computing device.” The Court
`declines to do so. At bottom, these disclosures in the patent do not discuss the physical
`location of the “peripheral device,” or its functional relationship with the host computing
`device.
`
`While physical separation is not required, the specification in general distinguishes
`between the operation and functioning of the peripheral device compared to the host
`computing device. Indeed, the Background of the Invention emphasizes that in the prior
`art system,
`
`The host computing device 101 includes a security mechanism 101a (which
`can be embodied by appropriately configured hardware, software and/or
`firmware, such as, for example, a general purpose microprocessor operating
`in accordance with instructions of one or more computer programs).
`
`CV-90 (06/04)
`
`CIVIL MINUTES - GENERAL
`
`Page 13 of 52
`
`13
`
`

`

`Case 8:16-cv-01790-JVS-AGR Document 122 Filed 10/18/17 Page 14 of 52 Page ID
` #:2045
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`CIVIL MINUTES - GENERAL
`
`Date October 18, 2017
`
`Case
`No.
`and
`Title
`
`SACV 16-01790 JVS(AGRx): SPEX Technologies, Inc. v. Kingston Technology Corp., et al.
`SACV16-01799 JVS(AGRx): SPEX Technologies, Inc. v. Western Digital Corporation, et al
`SACV16-01800 JVS(AGR