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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
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`WESTERN DIGITAL CORPORATION,
`Petitioner,
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`
`v.
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`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH INTEGRATED SECURITY
`FUNCTIONALITY
`
`
`__________________________________________________________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`SUBMISSION OF SUPPLEMENTAL INFORMATION
`
`Case No. IPR2018-00082
`__________________________________________________________________
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`I.
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`TABLE OF CONTENTS
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`PETITIONER SHOULD NOT BE PERMITTED TO SUBMIT THE
`PROPOSED SUPPLEMENTAL INFORMATION BECAUSE IT IS
`NOT RELEVANT TO ANY THEORY OF INVALIDITY
`PRESENTED IN THE PETITION................................................................. 1
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`Page(s)
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`II.
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`DENYING THIS MOTION WOULD NOT VIOLATE ANY
`CONTROLLING LAW .................................................................................. 4
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`i
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`Cases
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`TABLE OF AUTHORITIES
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` Page(s)
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`Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 2
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 4
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`Statutes
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`35 U.S.C. § 312(a)(3) ................................................................................................. 4
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`Other Authorities
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`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) ........................................................... 3
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`i
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`IPR2017-01021
`U.S. Patent No. 6,003,135
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`I.
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`PETITIONER SHOULD NOT BE PERMITTED TO SUBMIT
`THE PROPOSED SUPPLEMENTAL INFORMATION
`BECAUSE IT IS NOT RELEVANT TO ANY THEORY OF
`INVALIDITY PRESENTED IN THE PETITION
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`Petitioner admits that the proposed supplemental information is intended to
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`support the invalidity argument that Figure 4 of Harari discloses structures that are
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`at least equivalent to the interface control device 910 of the ’802 Patent, which is
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`the corresponding structure for the claimed “means for mediating” as construed by
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`the Board. Paper 17 at 1. However, the Petition does not argue that Harari
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`discloses the interface control device 910. In the Decision on Institution, the
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`Board found that Petitioner had not compared the structure of the interface control
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`device 910 to the structure in Harari that Petitioner contended performed the
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`function of the means for mediating, which were the comprehensive controller 41
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`or the functional module 42:
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`[T]he Petition does not persuade us that the identical or equivalent
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`structure for this means, as disclosed in the ’802 patent, is disclosed
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`by the proposed combinations of references. In accord with the
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`District Court construction, interface control device 910 is disclosed
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`in the ’802 patent as the structure corresponding to the function of the
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`means for mediating. Ex. 2003, 31–38. Patent Owner argues the
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`Petition fails to show where this or an equivalent structure is disclosed
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`in the combination of references. Prelim. Resp. 5. Although Petitioner
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`notes this construction by the District Court (Pet. 14 (citing Ex. 1014,
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`1
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`24–25)), Petitioner does not apply the District Court’s interpretation
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`of this element to compare the structure of interface control device
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`910 to controller 41 or functional module 42 of Harari (see id. at
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`43–45) or to the ASIC/FPGA of Wang (see id. at 59–64). Instead,
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`based on a construction proffered by Patent Owner that the District
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`Court rejected, in which the structure for this means is disclosed as an
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`FPGA (see Ex. 2003, 33–36), Petitioner compares the FPGA structure
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`of Wang with an FPGA structure in Figure 8 of the ’802 patent. Id. at
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`61–64.
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`Paper 11 at 35-36 (emphasis added).
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`The supplemental evidence should not be admitted because it can only
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`support a new theory of invalidity that is not in the Petition and, therefore, cannot
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`be introduced into the proceedings at this time by any mechanism. “It is of the
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`utmost importance that petitioners in the IPR proceedings adhere to the
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`requirement that the initial petition identify ‘with particularity’ the ‘evidence that
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`supports the grounds for the challenge to each claim.’” Intelligent BioSystems, Inc.
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`v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35
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`U.S.C. § 312(a)(3)). “Unlike district court litigation—where parties have greater
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`freedom to revise and develop their arguments over time and in response to newly
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`discovered material—the expedited nature of IPRs bring with it an obligation for
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`petitioners to make their case in their petition to institute.” Id. A reply brief filed
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`in response to any patent owner response could not rely on an argument supported
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`2
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`by Petitioner’s proposed supplemental information because “a reply that raises a
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`new issue or belatedly presents evidence will not be considered and may be
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`returned. The Board will not attempt to sort proper from improper portions of the
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`reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012). Submission of “new evidence necessary to make out a prima facie case” of
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`unpatentability of an original claim is an indication that new issues have been
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`improperly raised on reply. Id.
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`Petitioner’s argument that the proposed new exhibits “supplement (but do
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`not change) the instituted grounds by building on their teachings,” Paper 17 at 4,
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`must be rejected because invalidity analysis offered by Petitioner’s expert based on
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`these exhibits differs from the Petition’s analysis in every respect. In the Petition,
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`Petitioner argued that the function of the “means for mediating” is performed by
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`Harari’s comprehensive controller 41 or functional module 42 as shown in Figure
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`7; the corresponding structure for the “means for mediating” is the FPGA in Figure
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`8 of the ’802 Patent; and this FPGA is disclosed in the Wang reference. Paper 11
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`at 30-32, 35-36 (citing Pet. at 57, 61-64). Now, in his supplemental declaration,
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`Dr. Kaliski argues that the function of the “means for mediating” is performed by
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`the Host Interface 54 and Memory Interface 56 depicted in Figure 4 of Harari
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`(along with configuration registers); the corresponding structure for the “means for
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`mediating” is the interface control device 910 in Figure 9B of the ’802 Patent; and
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`3
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`this structure or an equivalent is shown in Figure 4 of Harari. Paper 17 at 1-3
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`(citing Ex. 1024, ¶¶ 9-15). Thus, Petitioner’s supplemental information does not
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`support the grounds presented in the Petition, but instead presents an entirely new
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`theory of how the “means for mediating” is allegedly disclosed in Harari.
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`Petitioner does not attempt to explain why the proposed supplemental
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`information supports a theory of invalidity disclosed in the Petition, nor does it
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`point to any authority that would permit it to incorporate supplemental information
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`on a new theory of invalidity into any brief to be filed in these proceedings or to
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`use the supplemental information at an oral hearing. Indeed, there is no authority
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`supporting Petitioner’s attempt to effectively amend the Petition. For these
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`reasons, the Board should deny Petitioner’s motion to submit that evidence.
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`II. DENYING THIS MOTION WOULD NOT VIOLATE ANY
`CONTROLLING LAW
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`The Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
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`1354 (2018), requires that the Board address every claim in its final written
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`decision, but it does not create the requirement that the Board give a Petitioner a
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`second chance to submit a viable invalidity argument with new evidence in order
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`to address claims as to which it did not meet its burden of proof in the petition.
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`Doing so would eviscerate the statutory requirement that the petition identify the
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`evidence that supports the grounds for challenging the claims, 35 U.S.C.
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`§ 312(a)(3), which the Supreme Court did not do.
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`4
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Denying Petitioner’s motion does not necessarily shut the door on every
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`
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`petitioner that seeks to submit supplemental information to support grounds for
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`invalidity which did not meet the petitioner’s initial burden, as Petitioner argues.
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`Supplemental information may be appropriate in certain cases where a petitioner
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`raises a potentially meritorious ground, but fails to support it with sufficient
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`evidence. In these proceedings, however, Petitioner should be foreclosed from
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`submitting supplemental information because it is not relevant to any invalidity
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`theory advanced in the Petition. Specifically, because the Petitioner applied an
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`incorrect claim construction for the “means for mediating,” no amount of
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`supplemental information would permit the Petitioner to show that the “means for
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`mediating” is found in the prior art unless the Petitioner were permitted to change
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`its claim construction position and present a new analysis of how the prior art
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`discloses the properly construed claim limitation. This would require the
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`Petitioner to effectively rewrite its Petition to change the grounds for invalidity
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`which is impermissible. Thus, supplemental information is irrelevant to the
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`grounds in the Petition, and this motion should be denied.
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`Dated: June 1, 2018
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`Respectfully submitted,
`
`/Peter Lambrianakos/
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`BROWN RUDNICK LLP
`7 Times Square
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`5
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Enrique W. Iturralde (Reg. No. 72,883)
`Back-up Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: vrubino@brownrudnick.com
`Email: eiturralde@brownrudnick.com
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`6
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`CERTIFICATE OF SERVICE
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`A copy of Patent Owner’s Opposition to Petitioner’s Motion for Submission
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`of Supplemental Information has been served on Petitioner’s counsel of record as
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`follows:
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`Brian Buroker
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bburoker@gibsondunn.com
`
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bsilver@gibsondunn.com
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`Rustin Mangum
`Gibson, Dunn & Crutcher LLP
`3161 Michelson Drive
`Irvine, CA 92612-4412
`rmangum@gibsondunn.com
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`June 1, 2018
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`By:
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`/Peter Lambrianakos /
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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