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`IPR2018-00082
`U.S. Patent No. 6,088,802
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`
`v.
`
`
`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
`LEAVE TO FILE A REPLY UNDER 37 C.F.R. § 42.5
`
`
`Case No. IPR2018-00082
`__________________________________________________________________
`
`
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`
`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`LIST OF EXHIBITS
`
`
`Description
`Defendants’ Joint Invalidity Contentions, dated March 30,
`2017, in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-
`cv-01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.).
`Interim Status Report, dated April 3, 2017, in SPEX Techs., Inc.
`v. Kingston Tech. Corp., No. 8:16-cv-01790-JVS-AGR (C.D.
`Cal.), SPEX Techs., Inc. v. Western Dig. Corp., No. 8:16-cv-
`01799-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Toshiba Am.
`Electronics Components, Inc., No. 8:16-cv-01800-JVS-AGR
`(C.D. Cal.), SPEX Techs., Inc. v. Apricorn, No. 8:16-cv-07349-
`JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v. Integral
`Memory PLC, No. 8:16-cv-01805-JVS-AGR (C.D. Cal.).
`Order Regarding Claim Construction, dated October 18, 2017,
`in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
`01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.).
`Plaintiff SPEX Technologies, Inc. Disclosure of Asserted
`Claims and Infringement Contentions, dated February 13, 2017,
`in SPEX Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-
`01790-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v. Western
`Dig. Corp., No. 8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX
`Techs., Inc. v. Toshiba Am. Electronics Components, Inc., No.
`8:16-cv-01800-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v.
`Apricorn, No. 8:16-cv-07349-JVS-AGR (C.D. Cal.), and SPEX
`Techs., Inc. v. Integral Memory PLC, No. 8:16-cv-01805-JVS-
`AGR (C.D. Cal.).
`
`i
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`Exhibit No.
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`2005
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`2006
`2007
`2008
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`Description
`Joint Claim Construction Chart, dated May 30, 2017, in SPEX
`Techs., Inc. v. Kingston Tech. Corp., No. 8:16-cv-01790-JVS-
`AGR (C.D. Cal.), SPEX Techs., Inc. v. Western Dig. Corp., No.
`8:16-cv-01799-JVS-AGR (C.D. Cal.), SPEX Techs., Inc. v.
`Toshiba Am. Electronics Components, Inc., No. 8:16-cv-01800-
`JVS-AGR (C.D. Cal.), and SPEX Techs., Inc. v. Apricorn, No.
`8:16-cv-07349-JVS-AGR (C.D. Cal.).
`Transcript of May 9, 2018 Conference Call with the PTAB
`Transcript of August 2, 2018 Conference Call with the PTAB
`Transcript of the Deposition of Martin E. Kaliski, Ph.D., July
`18, 2018
`
`
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`ii
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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 REPLY BRIEF AND SUPPORTING EVIDENCE
`BECAUSE THEY RAISE A NEW INVALIDITY ARGUMENT
`NOT 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
`PETITIONER’S DUE PROCESS RIGHTS .................................................. 4
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`i
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`IPR2017-01021
`U.S. Patent No. 6,003,135
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`The Board should deny Petitioner’s motion for leave to submit a reply brief
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`and evidence in support of a new argument for unpatentability which Petitioner
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`could have presented in the Petition. The Board has recently confirmed that
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`“Petitioner may not submit new evidence or argument in reply that it could have
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`presented earlier, e.g. to make out a prima facie case of unpatentability.” 2018
`
`Revised Trial Practice Guide, § I. Petitioner cannot show good cause to submit a
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`reply brief and new evidence that are expressly prohibited by the Board’s rules.
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`I.
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`PETITIONER SHOULD NOT BE PERMITTED TO SUBMIT
`THE PROPOSED REPLY BRIEF AND SUPPORTING
`EVIDENCE BECAUSE THEY RAISE A NEW INVALIDITY
`ARGUMENT NOT PRESENTED IN THE PETITION
`
`Petitioner contends that its proposed reply brief and evidence support the
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`invalidity argument that Harari discloses structures that are at least equivalent to
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`the interface control device 910 in Figure 9B of the ‘802 Patent, which is the
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`corresponding structure for the claimed “means for mediating” as construed by the
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`Board. Paper 24 at 1. However, the Petition does not argue that Harari (or any
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`reference) discloses the structure of interface control device 910 or an
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`equivalent. In the Decision on Institution, the Board found that Petitioner had not
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`compared the structure of the interface control device 910 to the structures in
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`Harari that Petitioner contended perform the function of the means for mediating,
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`which were the comprehensive controller 41 or the functional module 42:
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`1
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`[T]he Petition does not persuade us that the identical or equivalent
`structure for this means, as disclosed in the ‘802 patent, is disclosed
`by the proposed combinations of references. In accord with the
`District Court construction, interface control device 910 is disclosed
`in the ‘802 patent as the structure corresponding to the function of the
`means for mediating. Ex. 2003, 31–38. . . . Although Petitioner notes
`this construction by the District Court (Pet. 14 (citing Ex. 1014, 24–
`25)), Petitioner does not apply the District Court’s interpretation of
`this element to compare the structure of interface control device 910
`to controller 41 or functional module 42 of Harari (see id. at 43–45)
`or to the ASIC/FPGA of Wang (see id. at 59–64). Instead, based on a
`construction proffered by Patent Owner that the District Court
`rejected, in which the structure for this means is disclosed as an FPGA
`(see Ex. 2003, 33–36), Petitioner compares the FPGA structure of
`Wang with an FPGA structure in Figure 8 of the ‘802 patent. Id. at
`61–64.
`Paper 11 at 35-36 (emphasis added).
`
`In denying Petitioner’s Motion to Submit Supplemental Information, the
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`Board found that although the Petition contended that the corresponding structure
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`for the “means for mediating” was an FPGA or the interface control device 910,
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`the Petition contains “no discussion comparing the structure of any of the
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`combined references with the structure of control device 910 to show that the
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`structures are identical or equivalent.” Paper 22 at 6. Thus, any argument that a
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`structure in Harari is equivalent to the interface control device 910 is a new
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`2
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`argument of unpatentability that cannot properly be presented for the first time on
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`
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`reply. 2018 Revised Trial Practice Guide, § I.
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`Petitioner attempts to show that its proposed reply argument is not new by
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`blurring the distinctions between elements 41 and 42 in Figures 5B and 7 of Harari,
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`which are discussed in the Petition as performing the function of the “means for
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`mediating,” Pet. at 43-45, and Figure 4 of Harari, which is discussed in the
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`proposed new testimony. Paper 24 at 4-5. This argument fails for two reasons.
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`First, the supplemental expert declaration of Dr. Kaliski relies specifically on the
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`Host Interface 54 and Memory Interface 56 of Figure 4 as disclosing the structure
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`of interface control device 910 in Figure 9B of the ‘802 Patent, see Ex. 1024 ¶ 9,
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`but neither of these elements is disclosed in either Figure 5B or 7 of Harari.
`
`Second, even if the structures in Figures 4, 5B and 7 were indistinguishable, a
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`comparison of any structure in Harari to interface control device 910 is necessarily
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`a new argument for unpatentability because, as this Board has previously found, no
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`such comparison was made in the Petition. Paper 22 at 6.
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`Petitioner cannot deny that its proposed reply and new evidence “present[] a
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`new ground for unpatentability based on different disclosures of Harari in an
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`attempt to correct a weakness of the Petition we noted in our Decision on
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`Institution.” Paper 22 at 9 (denying Petitioner’s Motion to Submit Supplemental
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`3
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Information). Accordingly, Petitioner has failed to show good cause because its
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`
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`proposed reply and new evidence are improper under the Board’s rules.
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`II. DENYING THIS MOTION WOULD NOT VIOLATE
`PETITIONER’S DUE PROCESS RIGHTS
`
`Petitioner provides no legal support for its assertion that its due process
`
`rights would be violated if it were not permitted to submit a reply brief with new
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`arguments and evidence. Petitioner argues that the Board’s rejection of an FPGA
`
`as a structure for the “means for mediating” and its adoption of the interface
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`control device 910 as the sole structure for the “means for mediating” presents a
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`“new theory” of which Petitioner did not have “notice and the opportunity to be
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`heard” prior to receiving the Board’s Decision on Institution. Paper 24 at 2.
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`Petitioner’s argument should be rejected because Petitioner itself proposed
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`that the interface control device 910 is a corresponding structure for the “means for
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`mediating,” Pet. at 14, but elected not to analyze whether any of the cited
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`references, including Harari, disclose that structure. Petitioner’s expert,
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`Dr. Kaliski, admitted in his deposition that he simply decided not to address the
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`interface control device 910 in his original declaration:
`
`Q. So you were provided with the construction with three
`possible structures for limitation 1F. Correct?
`A. SPEX proposed three possible structures if you count the
`equivalence thereof as a third option.
`Q. And you applied that construction in your analysis. Right?
`4
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`A. Yes.
`Q. But you didn’t look for interface control device 910 as
`shown in figure 9B in Harari. Right?
`A. It’s not in this declaration. That is correct.
`Q. You didn’t look for it when you wrote your original
`declaration. Right?
`A. I didn’t -- I decided not to put that analysis of that in this
`declaration.
`Ex. 2008 at 62:11-14.
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`Petitioner would not be denied due process if it were not permitted to submit
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`arguments in reply that it intentionally declined to include in its Petition.
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`Petitioner was aware that it is limited under the Board’s rules to the arguments
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`presented in its Petition; it knew that the structure for the “means for mediating”
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`could be limited to the interface control device 910—the District Court had
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`preliminarily rejected the FPGA as a corresponding structure, Pet. at 14; and it was
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`in possession of the Harari reference with a full and fair opportunity to analyze its
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`disclosure for a structure equivalent to the interface control device 910.
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`Nevertheless, Petitioner decided not to argue that any portion of Harari discloses
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`the interface control device 910. That Petitioner now believes that it may have
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`overlooked a potential argument with respect to Figure 4 in Harari in light of
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`testimony from Patent Owner’s experts in the District Court is no basis for
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`Petitioner to obtain a “do-over” on reply. Petitioner’s motion should be denied.
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`5
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`Dated: August 16, 2018
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`
`Respectfully submitted,
`
`/Peter Lambrianakos/
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`BROWN RUDNICK LLP
`7 Times Square
`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
`
`6
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`CERTIFICATE OF SERVICE
`
`
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`A copy of Patent Owner’s Opposition to Petitioner’s Motion for Leave to
`
`File a Reply Under 37 C.F.R. § 42.5 has been served on Petitioner’s counsel of
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`record as follows:
`
`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
`
`Rustin Mangum
`Gibson, Dunn & Crutcher LLP
`3161 Michelson Drive
`Irvine, CA 92612-4412
`rmangum@gibsondunn.com
`
`August 16, 2018
`
`
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`
`
`By:
`
`/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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`
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