Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 32
`Entered: October 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`KINGSTON TECHNOLOGY COMPANY, INC.,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN,
`Petitioner,
`
`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.
`
`
`
`
`
`1 Kingston Technology Company, Inc., which filed a Petition in Case
`IPR2018-01003, has been joined as a petitioner in this proceeding. Toshiba
`Corporation, Toshiba America Electronic Components, Inc., and Apricorn,
`which filed a Petition in Case IPR2018-01067, have been joined as
`petitioners in this proceeding.
`
`
`571-272-7822
`
`
` Paper No. 32
`Entered: October 12, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`KINGSTON TECHNOLOGY COMPANY, INC.,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN,
`Petitioner,
`
`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.
`
`
`
`
`
`1 Kingston Technology Company, Inc., which filed a Petition in Case
`IPR2018-01003, has been joined as a petitioner in this proceeding. Toshiba
`Corporation, Toshiba America Electronic Components, Inc., and Apricorn,
`which filed a Petition in Case IPR2018-01067, have been joined as
`petitioners in this proceeding.
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`ORDER
`Conduct of Proceeding
`Denying Petitioner’s Motion To File A Reply
`37 C.F.R. § 42.5
`
`INTRODUCTION
`
`I.
`
`On April 25, 2018, we entered our Decision on Institution (Paper 11,
`
`“Dec.” or “Decision”) instituting inter partes review of all challenged claims
`
`(i.e., claims 1, 2, 6, 7, 11, 12, 23–25, 38, and 39) under all asserted grounds.
`
`Dec. 42–43. Our Decision determined there was a reasonable likelihood that
`
`Petitioner would prevail in showing that at least one of claims 38 and 39 is
`
`unpatentable under one or more of the asserted grounds. Id. Our Decision
`
`also articulated reasons that Petitioner had not shown a reasonable likelihood
`
`of prevailing on other claims/grounds. See Dec. 24–42.
`
`In a conference call on May 9, 2018, the parties inquired whether
`
`Petitioner would be allowed to file a Petitioner’s Reply if Patent Owner
`
`waived its opportunity to file a Patent Owner Response. See Ex. 2006. In
`
`that conference call, we advised the parties that we understood our rules to
`
`preclude a Petitioner’s Reply if Patent Owner were to waive its opportunity
`
`for a Patent Owner Response. Ex. 2006, 15:2–11.
`
`On May 29, 2018, Petitioner filed a motion to submit supplemental
`
`information (Paper 17) accompanied by proposed new Exhibits 1022, 1023,
`
`and 1024 (renumbered as 3001, 3002, and 3003, respectively). Patent
`
`Owner filed an opposition to Petitioner’s motion. Paper 18. On July 23,
`
`2018, we issued an Order (Paper 22) denying Petitioner’s motion. We
`
`determined that arguments in the motion and the proposed supplemental
`
`information (Exhibits 3001–3003) did not support the arguments made in the
`
`Petition but instead raised new arguments not presented in the Petition.
`
`2
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`Case IPR2018-00082
`Patent 6,088,802
`
`Paper 22, 8–11. Thus, we ordered that the proposed supplemental
`
`information would not be considered as evidence (though not expunged
`
`from the record). Id. at 11.
`
`Our Order (Paper 22) also clarified that our rules require that a
`
`Petitioner’s Reply be limited to addressing only issues raised in a Patent
`
`Owner Response. Paper 22, 2 (citing 37 C.F.R. § 42.23(b)). Under the cited
`
`rule, our Order instructed the parties that, if Patent Owner waived its
`
`opportunity to file a Response, there would be nothing for Petitioner to
`
`respond to in a Reply, and, hence, no Petitioner’s Reply would be permitted.
`
`Id. at 2–3. We noted in our Order that Petitioner could request authorization
`
`to file a motion asking us to waive our rules upon a showing a good cause
`
`pursuant to 37 C.F.R. § 42.5. Id. at 3.
`
`On August 2, 2018, another conference call was conducted with the
`
`parties. See Ex. 2007. In that conference call, Patent Owner informed the
`
`Board (and Petitioner’s counsel) that it did not intend to file a Patent Owner
`
`Response. Id. at 5:23–6:5. In the conference call, we also reiterated our
`
`interpretation of the rules (37 C.F.R. § 42.23(b)) as effectively precluding a
`
`Petitioner’s Reply in the absence of a Patent Owner Response. Id. at 15:16–
`
`19. We also authorized Petitioner to file a motion to waive our rules for
`
`good cause shown under 37 C.F.R. § 42.5 and authorized Patent Owner to
`
`file an opposition to that motion. Id. at 17:12–17.
`
`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 a Motion For Leave To File A
`
`Reply Under 37 C.F.R. § 42.5 In The Absence Of Patent Owner’s Response.
`
`3
`
`
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`Case IPR2018-00082
`Patent 6,088,802
`
`Paper 24 (“Mot.” or “Motion”). On August 21, 2018, Patent Owner filed an
`
`opposition to Petitioner’s Motion. Paper 25 (“Opp.” or “Opposition”).
`
`
`
`II. DISCUSSION
`
`Due Process
`
`Petitioner argues due process requires that we 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. 1. Petitioner asserts the SAS decision impacts our rules such that
`
`Petitioner must be afforded an opportunity to file a Reply regardless of
`
`whether Patent Owner files a Patent Owner Response. Id.
`
`Patent Owner argues 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. 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 contends
`
`Petitioner had “a full and fair opportunity to analyze its disclosure for a
`
`structure equivalent to the interface control device 910,” and thus, has no
`
`basis “to obtain a ‘do-over’ on reply” when it specifically decided not to
`
`present that argument in its Petition. Id. at 5.
`
`4
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`
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`Case IPR2018-00082
`Patent 6,088,802
`
`
`We agree with Patent Owner that Petitioner had the opportunity in its
`
`Petition to identify equivalent structures in the references by comparisons
`
`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—but made a choice not to present such a comparison. The Petition
`
`identifies modules 41 and 42 in Harari as disclosed in Figures 5B and 7 as
`
`the structure for the recited means for mediating. Pet. 43–45 (citing Ex.
`
`1004, Figs. 5B, 7, 8:58–64, 9:18–30, 13:12–23, 13:63–14:19; Ex. 1003
`
`¶¶ 114–116). However, the Petition makes no attempt to compare the
`
`identified structures of Harari with device 910 of the ’802 patent. See id.
`
`Thus, at the time of filing its Petition, Petitioner had the opportunity to
`
`present arguments comparing elements of the references (i.e., modules 41
`
`and 42 of Harari) to interface control device 910 of the ’802 patent to
`
`identify equivalent structures in the references but chose not to do so in its
`
`Petition.
`
`Furthermore, under our rules, Petitioner had the opportunity to argue
`
`that our Decision on Institution was in error by filing a request for rehearing.
`
`37 C.F.R. § 42.71. In the conference call on May 9, 2018: (1) counsel for
`
`Patent Owner noted that that day (May 9, 2018) was the deadline for it to
`
`submit a request for rehearing (Ex. 2006, 11:17–24), (2) we inquired of both
`
`parties if they intended to file a request for rehearing (id. at 13:9–13),
`
`(3) counsel for Petitioner, incorrectly believing the deadline was still in the
`
`future, indicated it was still considering whether to file a request for
`
`rehearing (id. at 14:15–20), and (4) we corrected Petitioner’s counsel that the
`
`deadline for a request for rehearing was that day—May 9, 2018 (id. at
`
`15:12–16:7). Therefore, Petitioner was reminded of the deadline for filing a
`
`5
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`Case IPR2018-00082
`Patent 6,088,802
`
`request for rehearing to argue that our Decision on Institution was in error.
`
`Thus, although Petitioner had notice and an opportunity to be heard
`
`regarding our Decision on Institution, Petitioner chose not to avail itself of
`
`the opportunity to be heard in a request for rehearing.
`
`Accordingly, we are not persuaded a denial of Petitioner’s Motion to
`
`file a Reply in the absence of a Patent Owner Response would deny
`
`Petitioner’s Due Process rights.
`
`
`
`No New Construction
`
`Petitioner further asserts 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. 2.
`
`We disagree. The Petition discussed a construction of the recited
`
`means for mediating but did not clearly adopt any particular construction:
`
`This means-plus-function term’s 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.”
`
`Patent-Owner proposed that the corresponding structure
`is: (1) a field programmable gate array (FPGA); and (2) interface
`control device 910 (as shown in Figure 9B). Ex. 1013 at 20. If
`an algorithm is necessary for the FPGA, Patent-Owner asserts
`that the algorithm is (1) receiving data from host computing
`device; (2) depending on configuration settings, providing data
`to be processed by a cryptographic processor; and (3)
`transferring data to target means. Ex. 1013 at 20 (citing ’802
`Patent at Fig. 9A, 16:58–17:7).
`
`6
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`The district court tentatively agreed with Patent-Owner’s
`proposed function, but rejected
`that
`the FPGA was a
`corresponding structure. Ex. 1014 at 24–25. Instead, the district
`court tentatively found that the corresponding structure is
`interface control device 910 (as shown in Figure 9B). Id.
`
`Pet. 14. Although not adopting any particular interpretation, the 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 as
`
`proposed by the Petition but, instead, merely adopted the District Court’s
`
`ultimate claim construction 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.”
`
`
`
`New Arguments in Proposed Reply
`
`Petitioner contends 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. 4. Petitioner cites
`
`Senator Kyl’s comments in the Congressional Record and Clearlamp, LLC
`
`v. LKQ Corp., 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016) as
`
`supporting its contention that a new ground must necessarily rely on new
`
`7
`
`
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`Case IPR2018-00082
`Patent 6,088,802
`
`references or a new statutory basis. Mot. 4. By contrast, Petitioner argues
`
`“[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
`
`acknowledges that the Petition identified modules 41 and 42 and Figure 7 of
`
`Harari as the structure for the recited means for mediating and contends the
`
`proposed Reply would not propose a “new ground”:
`
`Although Petitioner compared these elements 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 device 910 in Fig. 9B,
`in accordance with the narrowed claim construction adopted by
`the Board. This is not a new ground.
`
`Mot. 5.
`
`We are not persuaded by Petitioner’s argument. First we note Senator
`
`Kyl’s remarks and Clearlamp are inapposite as they are directed to estoppel
`
`issues in the context of 35 U.S.C. § 315(e)(1)–(2). Nothing in these remarks
`
`regarding estoppel explains why we would waive our rule (37 C.F.R.
`
`§ 42.23(b)) that a Reply can only respond to issues raised in the Patent
`
`Owner Response and, in the absence of such a Response, why Petitioner
`
`should be permitted to change the thrust of its arguments in the Petition.
`
`Second, Petitioner’s statement that “Petitioner compared these
`
`elements [(modules 41 and 42)] to the FPGA in the ’802 patent” is simply
`
`incorrect. The Petition identifies modules 41 and 42 of Harari as the
`
`structure of the recited means for mediating but in no way compares these
`
`elements to any structures of the ’802 patent. See Pet. 43–45. Therein lies
`
`the problem in the Petition. After discussing construction of “means for
`
`mediating” (Pet. 14), there is no further discussion of device 910 of the ’802
`
`8
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`
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`Case IPR2018-00082
`Patent 6,088,802
`
`patent in the remainder of the Petition—let alone a comparison of
`
`device 910 to Harari’s modules 41 and 42. Similarly, to whatever extent
`
`Petitioner intended to cite an FPGA in the ’802 patent as the corresponding
`
`structure for the means for mediating in the ’802 patent, there is no mention
`
`of an FPGA in the Petition in comparison to the structure of Harari’s
`
`modules 41 and 42.
`
`Thus, Petitioner’s Reply, as proposed, would necessarily be raising
`
`new arguments not present in the Petition and, in the absence of a Patent
`
`Owner Response, could not possibly be in response to issues raised therein.
`
`
`
`III. CONCLUSION
`
`We are not persuaded that Petitioner has shown good cause for
`
`waiving our rules to allow a Petitioner’s Reply in the absence of Patent
`
`Owner Response.
`
`
`
`IV. ORDER
`
`
`For the above reasons, it is
`
`ORDERED that Petitioner’s Motion For Leave To File A Reply
`
`Under 37 C.F.R. § 42.5 In The Absence Of Patent Owner’s Response (Paper
`
`24) is DENIED.
`
`9
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`
`FOR PETITIONER:
`
`Brian Buroker
`bburoker@gibsondunn.com
`
`Blair Silver
`bsilver@gibsondunn.com
`
`David Hoffman
`hoffman@fr.com
`
`Martha Hopkins
`mhopkins@sjclawpc.com
`
`Hersh Mehta
`Hersh.mehta@morganlewis.com
`
`Douglas Stewart
`Doug.stewart@bracewelllaw.com
`
`Mark Bentley
`mbentley@mwe.com
`
`Jared Schuettenhelm
`Jared.schuettenhelm@bracewelllaw.com
`
`Patrick Connolly
`Patrick.connolly@bracewelllaw.com
`
`
`FOR PATENT OWNER:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`10
`
`
`
`Case IPR2018-00082
`Patent 6,088,802
`
`
`Enrique Iturralde
`eiturralde@brownrudnick.com
`
`
`11
`
`
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