SPEX Tech., Inc. v. Kingston Tech. Corp. et al, 8:16-cv-01790 JVS-AGR (Sept.
`27, 2016)
`SPEX Tech., Inc. v. Western Digital Corp. et al, 8:16-cv-01799 JVS-AGR (Sept.
`28, 2016)
`SPEX Tech., Inc. v. Toshiba Am. Elec. Components Inc. et al, 8:16-cv-01800
`JVS-AGR (Sept. 28, 2016)
`SPEX Tech., Inc. v. Apricorn, 2:16-cv-07349 JVS-AGR (Sept. 28, 2016)
`
`TENTATIVE 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 construction 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:
`
`• U.S. Pat. 6,088,802 (the “’802 patent”). Docket No. 96, Ex. 1.
`• 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 and each patent incorporates
`
`1All docket citations are to Case No. 8:16-cv-01790 unless otherwise noted.
`
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`the other by reference. ’802 Patent at 1:7–13; ’135 Patent at 1:6–13. 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 infringe 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.
`
`SPEX also alleges that Defendants infringe 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
`
`2
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`

`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, 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
`
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`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
`
`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
`
`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.
`
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`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.
`
`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.
`
`5
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`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
`I.
`Patent, 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
`
`Court’s
`Construction
`“an interaction
`[with a host
`computing device]
`that can provide a
`variety of
`functionalities”
`
`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
`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
`
`6
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`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.
`
`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.
`
`7
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`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.
`
`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.
`
`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
`
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`

`familiar 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.”
`Specifically, Mr. Gomez provides further explanation for the ordinary meaning of
`the word “defined” as it would be understood in the context of the patent.
`
`The Court finds the term “defined interaction” conveys a reasonably certain
`meaning to a person of skill in the art. The Court construes the term as “an
`interaction [with a host computing device] that can provide a variety of types of
`functionality.”
`
`II.
`
`“peripheral device” (’802 Patent, Claims 1, 2, 6, 7, 11, 12, 23, 25, 38, 39)
`
`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
`outside of 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”
`
`The parties dispute whether “peripheral device” must be limited to a type of
`device located physically outside the housing or casing of a host computing
`
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`

`device. SPEX argues that a peripheral device may be housed with a host
`computing device, while Defendants argue 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.
`
`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 parties, however, dispute whether
`this express definition (and specifically the word “outside”) requires a physical
`separation between the peripheral device and 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 parties dispute whether certain disclosure in the specification limits the
`term “peripheral device.” SPEX Op. Br. at 6–8; Defendants Op. Br. at 8–9;
`Defendants Resp. Br. at 4–5. Both parties tie their arguments about “peripheral
`device” to characterizations about the scope of the term “host computing device.”
`Id. For instance, SPEX asserts 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 cites 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).
`
`Defendants argue that SPEX is attempting to narrow the meaning of “host
`computing device” by excluding internal hard drives. Defendants Resp. Br. at 4.
`Defendants contend that the patent discloses a broader interpretation of a “host
`computing device,” which includes the hard disk drives internally housed with the
`rest of the host computing device. Defendants’ Resp. Br. at 4. The ’802 Patent
`discloses:
`
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`

`[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 tangentially related to the construction of “peripheral device.” Indeed, the
`parties have not asked the Court to construe the term “host computing device.” At
`bottom, these disclosures in the patent do not discuss the physical location of the
`“peripheral device.” Indeed, Defendants have not pointed to any disclosure in the
`patent explicitly restricting the location of the “peripheral device” to be physically
`separate from the “host computing device.” While the patent discloses that a driver
`can be stored on a hard disk or memory section in the host computing device, as
`depicted for example in Figure 6 of the ’802 Patent, Defendants fail to identify
`language in the specification that explicitly limits a “peripheral device” to a device
`that operates physically outside a host computing device. See ’802 Patent at 9:5–9,
`Fig. 6. Absent an unambiguous disclaimer, the Court finds “peripheral device”
`need not be physically separate from the host computing device.
`
`The extrinsic evidence supports this understanding of a peripheral device.
`According to Mr. Gomez’s expert testimony, “[h]ard drives (i.e., a permanent
`storage solution that resides in a computer case) were considered peripheral
`devices.” Gomez Decl. ¶ 48. Mr. Gomez cites a dictionary definition that states, in
`part, “[t]ypical peripherals are a disk drive, a printer. . . .” Id. (citing SPEX Op.
`Br., Ex. 6). This evidence is consistent with how a person of skill in the art would
`understand the term “peripheral device” in the context of the ’802 Patent.
`
`In view of the above, the Court construes “peripheral device” as “any device
`that operates outside of 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.”
`
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`III.
`
`“modular device” (’135 Patent, Claims 55, 57, 58)
`
`SPEX’s Construction
`
`Plain and ordinary
`meaning. The plain and
`ordinary meaning is:
`“physically separate
`devices that can be
`physically and
`electronically joined”
`
`Defendants’
`Construction
`“a 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
`outside of a host computing
`device and that is connected
`to the host computing
`device”
`
`Defendants argue that peripheral device and modular device are used
`interchangeably by the asserted patents and should be construed the same.
`Defendants Op. Br. at 9–10 (citing ’135 Patent at 10:34–42, 9:45–48, 9:53–59).
`Unlike its arguments for peripheral device, SPEX argues that modular device has a
`plain and ordinary meaning and is a physically separate device that can be
`physically and electronically joined to the host computing device. SPEX Op. Br. at
`25 (citing ’135 Patent at 7:42–45).
`
`The specification uses the terms peripheral device and modular device
`interchangeably. For instance, the ’135 Patent states:
`
`Once connection between the modular device and the host computing
`device is made, the host computing device detects the presence of the
`modular device, as shown by step 502. Such detection of the presence
`of a peripheral device is typically enabled as a standard aspect of the
`operating system software of the host computing device.
`
`’135 Patent at 9:45–48; see also id. at 9:53–59, 10:34–42.
`
`SPEX’s argument that the modular device must be a physically separate
`device is unpersuasive. SPEX’s citations from the intrinsic record relate to
`
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`physically and electrically joining a security module and a target module in a
`particular embodiment. See ’135 Patent at 7:42–45 (“The security module 401 and
`target module 402 are physically separate devices that can be physically and
`electrically joined (as described further below) to enable communication between
`the modules 401 and 402.”). This disclosure does not require that a modular
`device be a physically separate device.
`
`The Court is also unpersuaded by Plaintiff’s argument about the prosecution
`history. See SPEX Op. Br. at 25. While the patent examiner referred to the
`peripheral device and modular device in slightly different terms (see SPEX Op.
`Br., Ex. 8 at 4), the patent applicant did not make any representations about the
`similarities or differences between a peripheral device and a modular device.
`Particularly given the ’135 Patent’s interchangeable use of the terms, there is no
`clear basis in the prosecution history for finding that these terms have different
`scope.
`
`The Court construes “modular device” consistent with “peripheral device”
`as “a device that operates outside of 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.”
`
`“security means for enabling one or more security operations to be
`IV.
`performed on data” (’802 Patent, Claims 1, 6, 11, 23, 25); “means for
`performing the one or more security operations” (’802 Patent, Claim 39)
`
`SPEX’s Construction
`
`Subject to 35 U.S.C. §
`112(6)
`Recited Function: enabling
`one or more security
`operations to be performed
`on data; performing the
`one or more security
`
`Defendants’
`Construction
`Subject to 35 U.S.C. §
`112(6)
`Recited Function: (1)
`enabling security
`operations to be performed
`on data; (2) performing the
`security operations
`
`Court’s Construction
`
`Subject to 35 U.S.C. §
`112(6)
`Recited Function: enabling
`one or more security
`operations to be performed
`on data; performing the one
`or more security operations
`
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`Corresponding Structures:
`1. A specific hardware
`component programmed or
`configured to perform a
`security operation
`disclosed in the ‘802
`Patent at 18:1-47 or the
`‘135 Patent at 21:29-22:9;
`2. A special purpose
`embedded processor,
`embodied on a single
`integrated chip and
`designated as MYK-82
`(and also referred to by the
`name Capstone), which
`includes an ARM6TM
`processor core and several
`special purpose
`cryptographic processing
`elements that have been
`developed by the
`Department of Defense.
`
`Corresponding Structures:
`1. A specific hardware
`component programmed or
`configured to perform a
`security operation
`disclosed in ‘802 Patent at
`18:1-47 or ‘135 Patent at
`21:29-22:9;
`2. A special purpose
`embedded processor,
`embodied on a single
`integrated chip and
`designated as MYK-82
`(and referred to by the
`name Capstone) , which
`includes an ARM6TM
`processor core and several
`special purpose
`cryptographic processing
`elements that have been
`developed by the
`Department of Defense
`(‘802 Patent at 15:67-16:8)
`
`operations
`Corresponding Structures:
`1. Cryptographic
`processing device 801
`(processor capable of
`performing the
`cryptographic operations ,
`as described at ‘802 Patent
`at 15:63-67);
`2. Security token (device
`that performs security
`operations and that include
`one or more mechanisms
`(such as, for example, use
`of a hardware random
`number generator and/or
`protected memory) to
`provide security for the
`content of those operations
`as described at ‘802 Patent
`at 5:33-39);
`3. A specific hardware
`component programmed or
`configured to perform a
`security operation
`disclosed in ‘802 Patent at
`18:1-47 or ‘135 Patent at
`21:29-22:9;
`4. A special purpose
`embedded processor,
`embodied on a single
`integrated chip and
`
`14
`
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`Page 14 of 41
`
`

`

`designated as MYK-82
`(and referred to by the
`name Capstone) , which
`includes an ARM6TM
`processor core and several
`special purpose
`cryptographic processing
`elements that have been
`developed by the
`Department of Defense
`(‘802 Patent at 15:67-
`16:8); or
`5. Equivalents thereof.
`If an algorithm is
`necessary for any
`corresponding structures,
`SPEX identifies one or
`more of the security
`operations disclosed in the
`‘802 Patent at 18:1-47.
`
`The parties agree that the “security means . . .” terms are subject to § 112(6)
`and agree on two corresponding structures:
`
`1. A specific hardware component programmed or configured to
`perform a security operation disclosed in the ‘802 Patent at 18:1-47 or
`the ‘135 Patent at 21:29-22:9;
`
`2. A special purpose embedded processor, embodied on a single
`integrated chip and designated as MYK-82 (and also referred to by
`the name Capstone), which includes an ARM6TM processor core and
`several special purpose cryptographic processing elements that have
`been developed by the Department of Defense.
`
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`

`SPEX argues that this term should encompass two additional structures: a
`cryptographic processing device and a security token. SPEX Op. Br. at
`9–10. Defendants argue that the specification fails to disclose algorithms for
`these additional “generic elements” and they should be rejected. Defendants
`Op. Br. at 12–13.
`
`The “special purpose embedded processor” structure, which the
`parties agree on, is disclosed in the ’802 Patent as a type of cryptographic
`processing device 801:
`
`The cryptographic processing device 801 can be adapted to perform
`security operations. Generally, the cryptographic processing device
`801 can be embodied by any processor capable of performing the
`cryptographic operations desired to be provided by the peripheral
`device 800. In one embodiment of the peripheral device 800, the
`cryptographic processing device 801 is a special purpose embedded
`processor, embodied on a single integrated chip and designated as
`MYK-82 (and also referred to by the name Capstone), which includes
`an ARM6™ processor core and several special purpose cryptographic
`processing elements that have been developed by the Department of
`Defense. The construction and operation of the Capstone chip is
`known by those skilled in the art of cryptographic processing.
`
`’802 Patent at 15:63–16:9. The specification’s more general disclosure of a
`cryptographic processing device provides insufficient corresponding structure for
`this means plus function term. For patent claims “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)). Besides the specific example
`provided, the patent’s disclosure of “any processor capable of performing the
`cryptographic operations desired” does not provide sufficient particularity to
`constitute a corresponding structure for this claim term.
`
`16
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`

`SPEX’s proposed “security token” structure suffers from a similar defect.
`The ’802 Patent discloses:
`
`The security mechanism 302a can be, for example, embodied as a
`security token. Herein, “security token” refers to a device that
`performs security operations and that includes one or more
`mechanisms (such as, for example, use of a hardware random number
`generator and/or protected memory) to provide security for the
`content of those operations.
`
`’802 Patent at 5:33–39. SPEX argues that a “security token” is a “special purpose
`device” for performing cited functions. SPEX Op. Br. at 10. But SPEX does not
`argue that a security token is a device well known in the art to have a particular
`corresponding structure. Further, the ’802 Patent describes the security token
`generally and in terms of its functio