Paper 40
` Entered: April 18, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN,
`Petitioners,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000821
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 Toshiba Corporation, Toshiba America Electronic Components, Inc., and
`Apricorn, which filed a Petition in Case IPR2018-01068, have been joined
`as petitioners in this proceeding.
`
`
` Entered: April 18, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN,
`Petitioners,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000821
`Patent 6,088,802
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 Toshiba Corporation, Toshiba America Electronic Components, Inc., and
`Apricorn, which filed a Petition in Case IPR2018-01068, have been joined
`as petitioners in this proceeding.
`
`
`
`IPR2018-00082
`Patent 6,088,802
`
`I. INTRODUCTION
`Western Digital Corporation (“Petitioner”) filed a Petition requesting
`inter partes review of claims 1, 2, 6, 7, 11, 12, 23–25, 38, and 39 (the
`“challenged claims”) of U.S. Patent No. 6,088,802 (“the ’802 patent,”
`Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Petition” or
`“Pet.”). SPEX Technologies, Inc. (“Patent Owner”) filed a Preliminary
`Response. Paper 6. In response to Patent Owner’s Preliminary Response,
`Petitioner filed an authorized Reply to Patent Owner’s Preliminary
`Response, addressing Patent Owner’s arguments directed to claim
`construction issues and to discretionary denial issues. Paper 9. Responsive
`to Petitioner’s Reply to the Preliminary Response, Patent Owner filed an
`authorized Sur-Reply. Paper 10.
`The Supreme Court held, on April 24, 2018, that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”). The
`day after the SAS decision issued, we issued a decision instituting trial on all
`claims and all grounds. Paper 11 (“Dec.” or “Decision”). However, our
`Decision made clear that, based on the preliminary record at that time, we
`found a reasonable likelihood of Petitioner prevailing only with respect to
`certain grounds addressing claims 38 and 39. Dec. 2, 26–42.
`Patent Owner requested rehearing of our Decision (Paper 15) and we
`denied that request (Paper 21).
`In view of our remarks in the Decision regarding challenged claims
`other than claims 38 and 39, Petitioner filed a Motion to Submit
`Supplemental Information. Paper 17. Patent Owner opposed this motion.
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`Paper 18. For reasons discussed further below, we denied Petitioner’s
`motion. Paper 22.
`Patent Owner elected to waive its right to file a Patent Owner
`Response. Paper 23. Responsive to Patent Owner’s waiver, Petitioner filed
`a Motion for Leave to File a Reply in the Absence of Patent Owner’s
`Response. Paper 24. Patent Owner opposed that motion. Paper 25. For
`reasons discussed further below, we denied Petitioner’s motion. Paper 32.
`Petitioner filed a Motion to Exclude Evidence requesting that we
`exclude Patent Owner’s Exhibit 2004. Paper 33. For the reasons discussed
`below, we dismiss Petitioner’s motion as moot.
`A telephonic hearing was conducted Thursday, January 24, 2019. A
`transcript of that hearing is in the record. Paper 39 (“Tr.”).
`Upon consideration of the complete record, we are persuaded by a
`preponderance of the evidence that claims 38 and 39 are unpatentable but
`are not persuaded that claims 1, 2, 6, 7, 11, 12, and 23–25 are unpatentable.
`
`II. BACKGROUND
`
`A. Related Matters
`The parties inform us that the ’802 patent is presently at issue in SPEX
`Technologies, Inc. v. Western Digital Corp., Case No. 8:16-cv-01799 (C.D.
`Cal.). Pet. 67–68; Paper 5, 2.2 In addition, Patent Owner further informs us
`that the ’802 patent is or has been involved in Case Nos. IPR2017-00430
`and IPR2017-00824 before the Board (institution denied in both cases);
`
`
`2 Paper 5, as filed, does not include page numbering as required by our rules.
`For purposes of this decision, we refer to the pages of Paper 5 sequentially
`with the caption page starting as page number 1.
`3
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`SPEX Technologies, Inc. v. Kingston Technologies Co., Case No. 8:16-cv-
`01790 (C.D. Cal.); SPEX Technologies, Inc. v. Toshiba America Electronic
`Components Inc., Case No. 8:16-cv-01800 (C.D. Cal.); SPEX Technologies,
`Inc. v. CMS Products, Inc., Case No. 8:16-cv-01801 (C.D. Cal.); SPEX
`Technologies, Inc. v. Integral Memory, PLC, Case No. 8:16-cv-01805 (C.D.
`Cal.); and SPEX Technologies, Inc. v. Apricorn, Case No. 2:16-cv-07349
`(C.D. Cal.). Paper 5, 2.
`
`B. The ’802 Patent
`The ’802 patent is directed to a peripheral device that may be
`connected to a host computer, where the peripheral device performs security
`operations such as encryption and decryption on data communicated
`between the peripheral device and the host computer. Ex. 1001, 1:17–27,
`1:35–38, 4:49–5:4. Figures 1, 2, and 3A of the ’802 patent are reproduced
`below.
`
`
`
`
`
`4
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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.
`The ’802 patent purports to address these problems by integrating
`security operations into the peripheral device, as security mechanism 302a is
`integrated in peripheral device 302 of Figure 3A. See id. at 3:27–33, 4:56–
`62.
`
`C. Illustrative Claim
`Claims 1, 6, 11, 23, 24, 38, and 39 are the independent claims among
`the challenged claims. Claims 1, 6, 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;
`
`5
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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.
`Id. at 18:55–19:4.
`6. 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 providing to a host computing device, in
`response to a request from the host computing device for
`information regarding the type of the peripheral device,
`information regarding the function of the target means.
`Id. at 19:15–32.
`
` For use in a peripheral device adapted for
`38.
`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.
`
`6
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`Id. at 22:13–23.
` For use in a peripheral device adapted for
`39.
`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.
`Id. at 22:24–38.
`
`7
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the challenged claims are unpatentable based on the
`following grounds (Pet. 23):
`
`References
`Harari4 and Anderson5
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`Claims challenged
`1, 2, 6, 7, 11, 12, 23–25,
`38, and 39
`1, 2, 11, 12, 23, and 39
`
`1, 2, 11, 12, 23, and 39
`
`Harari, Anderson, and
`Wang6
`Harari, Anderson, and
`Dumas7
`Harari, Anderson, Dumas,
`and Wang
`
`Petitioner relies on the testimony of Martin Kaliski, Ph.D. (Ex. 1015) in
`support of its assertions.
`
`§ 103
`
`1, 2, 11, 12, 23, and 39
`
`III. DISCUSSION
`
`A. Claim Construction
`The ’802 patent issued from an application filed June 4, 1997, and
`accordingly expired no later than June 4, 2017. See 35 U.S.C. § 154(a)(2).
`“While claims are generally given their broadest possible scope during
`
`3 The summary of the asserted grounds on page 2 of the Petition fails to list
`claim 39 in grounds 2 and 4. However, the substance of the Petition
`addresses claim 39 in both of these grounds. See Pet. 59, 64. We deem this
`apparent typographic error to be harmless.
`4 U.S. Patent No. 5,887,145 (“Harari,” Ex. 1004).
`5 Don Anderson, PCMCIA System Architecture 16-Bit PC Cards, Second
`Edition, 1995 (“Anderson,” Ex. 1006).
`6 U.S. Patent No. 5,765,027 (“Wang,” Ex. 1019).
`7 U.S. Patent No. 6,199,163 B1 (“Dumas,” Ex. 1005).
`8
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`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.” In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`Specifically, we apply the principles set forth in Phillips v. AWH Corp., 415
`F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). Under that standard (the
`“Phillips Standard”), the words of a claim are generally given their ordinary
`and customary meaning, which is the meaning the words 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.
`Furthermore, a claim limitation using the phrase “means for” creates a
`rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112
`¶ 6.8 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.
`Williamson, 792 F.3d at 1351; Med. Instrumentation & Diagnostics Corp. v.
`Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc.
`
`
`8 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.
`
`9
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`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.
`Lastly, only terms that are in controversy need to be construed and
`only to the extent necessary to resolve the controversy. See Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`1. District Court Constructions Adopted
`The Petition represents itself to be “based on the claim constructions
`urged by Patent-Owner in the [District Court] Litigation or as the parties
`agreed.” Pet. 8. In interpreting various terms, as discussed further below,
`the Petition cites claim interpretations adopted by the District Court in the
`underlying litigation and notes where the parties agreed to certain
`interpretations. See Pet. 8–15.
`A district court’s interpretation of claim terms may be useful in our
`claim construction and must be considered in our analysis. See Knowles
`Elecs. LLC v. Iancu, 886 F.3d 1369, 1376 (Fed. Cir. 2018) (“While ‘the
`[PTAB] is not generally bound by a previous judicial interpretation of a
`disputed claim term[, this] does not mean . . . that it has no obligation to
`acknowledge that interpretation or to assess whether it is consistent with the
`[broadest reasonable interpretation] of the term.’” (quoting Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1327 (Fed. Cir. 2015))). Here, in
`view of the expiration of the ’802 patent no later than June 4, 2017, we apply
`
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`the same claim construction standard as the District Court, and accordingly,
`the case for adopting the District Court’s construction is stronger than in
`certain proceedings involving unexpired patents in which we would apply
`the broadest reasonable interpretation standard.9
`In the related litigation, the U.S. District Court for the Central District
`of California engaged in a Markman hearing considering the positions of the
`parties regarding construction of disputed terms. See Ex. 1017 (Reporter’s
`Transcript of Proceeding dated Sept. 18, 2017). The Court then issued a
`tentative Markman order construing terms of the ’802 patent claims
`(Tentative Order Regarding Claim Construction undated, Ex. 1014) and
`issued a Markman order, seemingly substantively identical to the tentative
`order, establishing the Court’s claim construction in the related litigation
`(Order Regarding Claim Construction dated Oct. 18, 2017, Ex. 2003).
`The Markman orders of the District Court address only terms for
`which the parties did not agree to a construction. For those disputed terms,
`we agree with the District Court’s claim interpretation, finding it thorough
`and well-reasoned. We adopt the claim term interpretations as presented in
`the District Court’s Markman order entered October 18, 2017 (Ex. 2003),
`and we highlight below particular constructions of the District Court
`relevant to this Decision.
`
`
`9 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42) (applies to
`petitions filed on or after November 13, 2018).
`11
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`2. “[S]ecurity means”
`The Petition notes that the parties in litigation agreed that the term
`“security means” is subject to means-plus-function interpretation and notes
`Patent Owner’s arguments in litigation directed to the structure
`corresponding to the function but does not indicate that the parties agreed on
`identification of the structure corresponding to the recited function. Pet. 16.
`In view of the parties’ apparent disagreement in interpreting the term, we
`adopt the District Court’s interpretation of this term under 35 U.S.C. § 112
`¶ 6 where the function is “enabling one or more security operations to be
`performed on data” and the corresponding structure is “[a] specific hardware
`component programmed or configured to perform a security operation
`disclosed in ’802 Patent at 18:1–47.” Ex. 2003, 16–22.
`We further note the District Court construed “means for performing
`the one or more security operations” as recited in method claim 39, finding
`the function (“performing the one or more security operations”) is provided
`by the same structure as the “security means” recited in the apparatus claims.
`See id. at 16–17, 22–23.
`
`3. “[T]arget Means”
`The District Court did not construe the term “target means” because
`the parties in litigation generally agreed on a construction of this term.
`Specifically, the parties agreed that the recited function is “enabling a
`defined interaction with a host computing device” and generally agreed that
`the ’802 patent discloses structure corresponding to the recited function as:
`(1) a memory module adapted to enable non-volatile storage of data, (2) a
`communications module adapted to enable communications between the
`host computing device and a modem or LAN transceiver, (3) a smart card
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`reader, or (4) a biometric device. Pet. 11–12; see also Ex. 1016, 2; Ex.
`2005, 40. We find the parties’ agreed upon interpretation of “target means”
`is consistent with the claims and with the Specification of the ’802 patent
`and, therefore, we adopt the above construction agreed to by the parties.
`
`4. “[M]eans for mediating . . .”
`The Petition identifies the function of the recited “means for
`mediating” as “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.” Pet. 14. Petitioner then notes Patent
`Owner’s proposed interpretation that the corresponding structure is a field
`programmable gate array (“FPGA”) or interface control device 910 of
`Figure 9B. Id. (citing Ex. 1013, 20). The Petition does not indicate that the
`parties agreed on an identification of the structure corresponding to the
`identified function. Id. Petitioner further notes that the District Court
`“tentatively agreed with Patent-Owner’s proposed function, but rejected that
`the FPGA was a corresponding structure.” Id. (citing Ex. 1014, 24–25).
`In view of the parties’ apparent disagreement in interpreting the term,
`we adopt the District Court’s interpretation of this term under 35 U.S.C.
`§ 112 ¶ 6 in which the function is “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” and the
`corresponding structure is “[i]nterface control device 910 (as shown in Fig.
`9B).” Ex. 2003, 31–38.
`
`5. “[M]eans for providing . . .”
`Claims 6, 7, and 23–25 each include a recitation relating to a means
`for providing information regarding the function of the target means to the
`
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`host computing device. The Petition identifies the function as “providing to
`a host computing device, in response to a request from the host computing
`device for information regarding the type of the peripheral device,
`information regarding the function of the target means.” Pet. 14–15. The
`Petition then notes Patent Owner’s argument in litigation identifying
`memory 612a as the corresponding structure. Pet. 15 (citing Ex. 1013, 23;
`Ex. 1001, 7:60–8:14); see also Ex. 1014, 30.
`The Petition does not indicate that the parties agreed on the
`interpretation of this term. To the contrary, in the underlying litigation,
`Petitioner argued the ’802 patent fails to disclose a corresponding structure
`and, thus, that the term is indefinite. Pet. 30. The District Court agreed with
`Petitioner in the related litigation that the ’802 patent Specification fails to
`disclose sufficient corresponding structure that performs this function and,
`thus, claims reciting this element are indefinite. Pet. 15; see also Ex. 1014,
`30–32; Ex. 2003, 38–43. In the litigation, Patent Owner argued memory
`612a of the ’802 patent Specification is the structure that corresponds to the
`recited function of providing the function of the target means to the host
`computing device. See Ex. 2003, 42 (quoting cited portions of Ex. 1001,
`7:62–8:21). However, the District Court found, and we agree, the cited
`portions of the ’802 patent Specification fail to disclose that memory 612a
`stores such information regarding the function of the target means, let alone
`provides such information to the host computing device. Ex. 2003, 42–43.
`As discussed supra, Petitioner has not proffered any particular
`interpretation but, instead, merely notes Patent Owner’s proffered claim
`construction from the litigation—an interpretation with which Petitioner
`disagreed in the litigation. See Pet. 15; see also Ex. 1014, 30. We agree
`
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`with the District Court that Patent Owner’s construction, the only
`construction put forth in this proceeding, does not satisfy the requirement for
`a disclosure (in the Specification) of structure corresponding to the identified
`function. Thus, we are unable to construe this limitation. See In re Aoyama,
`656 F.3d 1293, 1298 (Fed. Cir. 2011).
`
`B. Petitioner’s Motion to Submit Supplemental Information
`On May 29, 2018, Petitioner timely filed an authorized Motion to
`Submit Supplemental Information (Paper 17, “Mot. Supp. Inf.”), and on
`June 1, 2018, Patent Owner timely filed its authorized Opposition to
`Petitioner’s Motion to Submit Supplemental Information (Paper 18, “Opp.
`Supp. Inf.”). The Motion to Submit Supplemental Information requested
`entry of proposed Exhibits 1022, 1023, and 1024—now renumbered as
`Exhibits 3001, 3002, and 3003, respectively.10 Exhibits 3001 and 3002 are
`excerpts of deposition testimony by Patent Owner’s expert witnesses in the
`related District Court litigation. Exhibit 3003 is a supplemental declaration
`by Petitioner’s declarant in this proceeding, Dr. Martin Kaliski, explaining
`the relevance of Exhibits 3001 and 3002 to our Decision’s construction of
`the term “means for mediating.”
`Regarding the proposed supplemental information, Petitioner argued:
`Patent Owner’s (PO) district court invalidity rebuttal experts—
`Dr. Rhyne and Mr. Gomez—confirmed in their depositions that
`the controllers in Harari Fig. 4 are structures corresponding to
`
`
`10 Because Exhibits 1022, 1023, and 1024 were denied entry to the record,
`the Exhibits have been removed from the evidence considered of record and
`remain for consideration of the order denying their entry renumbered as
`Exhibits 3001, 3002, and 3003, respectively. We refer to the renumbered
`Exhibits.
`
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`interface control device 910 in Fig. 9B of the ’802 patent (Exs.
`[3001], [3002]). Petitioner’s expert, Dr. Kaliski, explains in a
`supplemental declaration (Ex. [3003]) that this testimony shows
`that Harari teaches the “means for mediating” limitation in
`claims 1–2, 11–12, and 23. This evidence (Exs. [3001–3003])
`should be allowed as supplemental information.
`Mot. Supp. Inf. 1. Petitioner further contended denial of its Motion risked
`violating its due process rights because “if PO waives its response to try to
`close the record on issues that the Board believes were not reasonably likely
`to succeed, that would result in a de facto partial institution because the
`outcome would be preordained.” Id. at 5; see also Tr. 4:10–7:21, 10:8–
`11:19.
`Patent Owner argued in opposition that the proposed new exhibits do
`not support the arguments of the Petition regarding the “means for
`mediating” of claim 1 but, instead, presented a new argument that Harari’s
`Figure 4 discloses structure equivalent to control device 910 of the ’802
`patent. Opp. Supp. Inf. 3–4. Patent Owner noted that Petitioner’s Motion to
`Submit Supplemental Information did not explain why the proposed new
`exhibits support the arguments presented in the Petition but, instead,
`“attempt[ed] to effectively amend the Petition.” Id. at 4. Patent Owner
`contended the Court’s ruling in SAS “does not create the requirement that the
`Board give a Petitioner a second chance to submit a viable invalidity
`argument with new evidence in order to address claims as to which it did not
`meet its burden of proof in the petition.” Id. at 4; see also Tr. 8:10–10:3,
`12:1–19.
`After consideration of the parties’ respective positions, we entered an
`order denying Petitioner’s Motion to Submit Supplemental Information
`Paper 22 (“Order Supp. Inf.”). We agreed with Patent Owner that the
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`proposed supplemental information presented a new ground for
`unpatentability based on different disclosures of Harari in an attempt to
`correct a weakness of the Petition we noted in our Decision on Institution.
`We instituted trial (e.g., for claim 1) based on the Petition’s arguments
`regarding elements 41 and 42 of Harari disclosing the recited “means for
`mediating” and noted the weakness of that argument. Dec. 34–36. The new
`arguments presented in the proposed supplemental information and
`Petitioner’s Motion for Supplemental Information did not address those
`issues but, instead, presented a wholly new argument that reads the recited
`means for mediating on disclosed structures of Harari’s Figure 4—structure
`unrelated to elements 41 and 42 of Figures 5B and 7 as identified in the
`Petition.
`For the above reasons, we denied Petitioner’s Motion to Submit
`Supplemental Information. Order Supp. Inf. 11.
`
`C. Petitioner’s Motion for Leave to File a Reply
`Our Decision on Petitioner’s Motion to Submit Supplemental
`Information also clarified that our rules require that a Petitioner’s Reply be
`limited to addressing only issues raised in a Patent Owner Response. Order
`Supp. Inf. 2 (citing 37 C.F.R. § 42.23(b)).
`On August 7, 2018, Patent Owner filed a paper notifying the Board
`and Petitioner that it did not intend to file a Patent Owner Response. Paper
`23. On August 13, 2018, Petitioner filed an authorized Motion For Leave
`To File A Reply Under 37 C.F.R. § 42.5 In The Absence Of Patent Owner’s
`Response. Paper 24 (“Mot. for Reply” or “Motion to File Reply”). On
`August 21, 2018, Patent Owner filed an authorized opposition to Petitioner’s
`Motion. Paper 25 (“Opp. to Reply”). After reviewing the parties’ respective
`
`17
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`
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`IPR2018-00082
`Patent 6,088,802
`
`positions, discussed below, we denied Petitioner’s Motion to File Reply,
`finding Petitioner failed to show good cause for waiving our rule. Paper 32
`(“Order Denying Reply”).
`
`1. Due Process
`Petitioner argued we were required to waive our rules to allow
`Petitioner to file a Reply despite the absence of a Patent Owner Response:
`Absent waiver, Petitioner would not have had any opportunity to
`establish unpatentability during the trial based on the grounds
`instituted on claims 1, 2, 11 and 12. Depriving Petitioner of this
`opportunity would violate SAS Institute, Inc. v. Iancu, 138 S. Ct.
`1348 (2018), the APA, and Petitioner’s Due Process rights.
`Mot. for Reply 1.
`Patent Owner argued Petitioner’s due process rights are not violated
`because the Petition recognized the District Court identified interface control
`device 910 of the ’802 patent as the corresponding structure of the means for
`mediating “but elected not to analyze whether any of the cited references,
`including Harari, disclose that structure.” Opp. to Reply 4 (citing Pet. 14).
`Patent Owner further argues Dr. Kaliski (Petitioner’s expert) admitted in his
`deposition that he was aware of device 910 as identified corresponding
`structure but decided not to address device 910 in his original declaration.
`Id. at 4–5 (citing Ex. 2008, 62:11–14). Therefore, Patent Owner contended
`Petitioner had “a full and fair opportunity to analyze its disclosure for a
`structure equivalent to the interface control device 910,” and thus, had no
`basis “to obtain a ‘do-over’ on reply” when it specifically decided not to
`present that argument in its Petition. Id. at 5.
`We agreed with Patent Owner that Petitioner had the opportunity in its
`Petition to identify equivalent structures in the references by comparisons
`
`18
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`
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`IPR2018-00082
`Patent 6,088,802
`
`with device 910 of the ’802 patent—identified as the structure corresponding
`to the recited means for mediating element by the Petition and by the District
`Court—to identify equivalent structures in the references but chose not to do
`so in its Petition. Order Denying Reply 5. Furthermore, Petitioner chose not
`to avail itself of the opportunity to be heard in a request for rehearing. Id. at
`5–6.
`
`Accordingly, we were unpersuaded that denial of Petitioner’s Motion
`to file a Reply in the absence of a Patent Owner Response denied
`Petitioner’s Due Process rights.
`
`2. No New Construction
`Petitioner further asserted our Decision on Institution reflected a
`change from the grounds asserted by the Petition by narrowing “the ‘means
`for mediating’ limitation’s claim construction from the one used in the
`Petition” and, thus, that we must waive our rules to permit Petitioner to file a
`Reply to respond to that “new theory.” Mot. for Reply 2.
`We disagreed. Order Denying Reply 6–7. As discussed above,
`Petitioner clearly understood that the District Court identified interface
`control device 910 as the corresponding structure and rejected an
`interpretation that an FPGA is the corresponding structure. The District
`Court’s tentative claim construction and ultimate claim construction both
`rejected an FPGA as the corresponding structure for the means for mediating
`because of the programmable nature of such a device and the lack of any
`disclosed algorithm for such a device. Ex. 1014, 26–28; Ex. 2003, 33–35.
`Our Decision on Institution did not change the construction from that
`proposed in the Petition, as suggested by Petitioner, but, instead, merely
`adopted the District Court’s ultimate claim construction identified in the
`
`19
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`
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`IPR2018-00082
`Patent 6,088,802
`
`Petition—an interpretation that identified the corresponding structure as
`interface control device 910 in Figure 9B of the ’802 patent. Dec. 15 (citing
`Ex. 2003, 31–38). Thus, our Decision on Institution did not change the
`construction of “means for mediating” from that of the Petition such that
`Petitioner must be afforded the opportunity to respond to a “new theory.”
`
`3. New Arguments in Proposed Reply
`Petitioner contended its proposed reply (based on Exhibits 3001–
`3003) would not introduce any new ground because a new ground “requires
`new prior art or a new statutory basis for invalidity.” Mot. for Reply 4. By
`contrast, Petitioner argued “[a]ddressing a different figure in an already-
`identified prior art reference or presenting new arguments and evidence
`addressing that same prior art would not create a new ground of
`unpatentability.” Id. Furthermore, Petitioner acknowledged that the Petition
`identified modules 41 and 42 and Figure 7 of Harari as the structure for the
`recited means for mediating and contended the proposed Reply would not
`propose a “new ground”:
`Although Petitioner compared these elements [(modules 41 and
`42)] to the FPGA in the ’802 patent in accordance with the
`Petition’s claim construction, the proposed Reply would explain,
`supported by new evidence, how these elements are also
`equivalent to
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