`
`
`
`
`
`
`
`
`
`EXHIBIT A (UPDATED)
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 1 of 11
`
`

`

`Exhibit A (Updated)
`The updated tables below show the parties’ agreed and disputed claim construction
`terms for the asserted claims of U.S. Patent Nos. 6,088,802 (“’802 Patent”) and
`6,003,135 (“’135 Patent). The update to this exhibit was necessitated by changes
`SPEX made to its claim construction positions on July 13, 2017, the due date for
`opening claim construction briefs.
`SPEX informed Defendants on the morning of July 13, 2017 that it would agree to
`Defendants’ construction for “means for enabling communication between the
`security means and the target means,” but it did not communicate its modified
`constructions for Terms 2, 3, 5, and 10 to Defendants until after Defendants’
`opening claim construction brief had been filed.
`Agreed Constructions
`Agreed Construction
`Subject to 35 U.S.C. § 112(6).
`Recited Function: non-volatilely storing data
`Corresponding Structure: non-volatile memory devices; or
`equivalents thereof.1
`Subject to 35 U.S.C. § 112(6).
`Recited function: enabling a defined interaction with a host
`computing device
`Corresponding structures: (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 reader, or (4) biometric device, or equivalents thereof.2
`
`“target means for
`enabling a defined
`interaction with a host
`computing device”
`(’802 Patent, claims 1-
`2, 6-7, 11-12, 23, 25)
`
`Claim Term
`“means for non-
`volatilely storing data”
`(’802 Patent, claims 2,
`7, 12, 25)
`
` 1 Although Defendants agree that 35 U.S.C. § 112(6) permits “equivalents” of the
`disclosed structure for the purposes of an infringement analysis, Defendants
`disagree that “equivalents” should be included as part of claim construction or
`that “equivalents” form part of the “corresponding structure,” as “equivalents”
`are not disclosed in the patent.
` 2 See footnote 1.
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 2 of 11
`
`

`

`Agreed Construction
`Notwithstanding the Parties’ agreement as to relevant structure,
`Defendants maintain that this term is invalid for indefiniteness in
`view of its inclusion of the words “defined interaction,” a term
`that the Parties are separately briefing.
`Subject to 35 U.S.C. § 112(6).
`Recited function: enabling communication between the security
`means and the target means
`Corresponding structure: conventional computer bus 615; or
`equivalents thereof.3
`
`Claim Term
`
`Claim Term
`1. “defined
`interaction”
`(all asserted
`claims)
`
`“means for enabling
`communication
`between the security
`means and the target
`means” (’802 Patent,
`claims 1-2, 6-7, 11-12,
`23, 25)
`
`10 Most Significant Disputed Terms as Identified in the Amended Joint Claim
`Construction Chart
`SPEX’s Proposal
`Defendants’ Proposal
`SPEX Proposal: a specific,
`Defendants Proposal: Indefinite
`predefined functionality of the
`under 35 U.S.C. § 112.
`device, such as data storage, data
`
`communication, data input and
`
`output or user identification
`SPEX Proposal: 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
`SPEX Proposal: 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.
`
`1a. “interaction
`with a host
`computing
`device in a
`defined way”
`(’802 Patent,
`claims 38-39)
`2. “peripheral
`device” (’802
`Patent, all
`asserted
`claims)
`
`Defendants Proposal: Indefinite
`under 35 U.S.C. § 112.
`
`
`Defendants Proposal: Any device
`that operates outside of a host
`computing device and that is
`connected to the host computing
`device
`
`
` 3 See footnote 1.
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 3 of 11
`
`

`

`Claim Term
`
`3. “security
`means for
`enabling one or
`more security
`operations to
`be performed
`on data” (’802
`Patent, claims
`1-2, 6-7, 11-
`12, 23, 25)
`
`
` “means for
`performing the
`one or more
`security
`operations”
`(’802 Patent,
`claim 39)
`
`Defendants’ Proposal
`
`
`
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6).
`
`
`Recited function: (1) enabling
`security operations to be
`performed on data; (2)
`performing the security
`operations;
`
`Corresponding structure:
`1. A specific hardware
`component programmed or
`configured to perform a security
`operation disclosed at 18:1-47
`of the ’802 Patent or 21:29 –
`22:9 of the ’135 Patent.
`
`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 ARM6™ processor
`core and several special purpose
`cryptographic processing elements
`that have been developed by the
`Department of Defense.
`
`SPEX’s Proposal
`Typical peripheral devices
`include but are not limited to a
`disk drive and a printer.
`SPEX Proposal: Subject to 35
`U.S.C. ¶ 112(6)
`Recited function: enabling
`one or more security
`operations to be performed
`on data
`Corresponding structure:
`1. Cryptographic processing
`device 801 (special purpose
`processor capable of
`performing the cryptographic
`operations, as described at
`'802 patent, 15:63-15:57);
`
`2. Security token (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 as
`described at '802 patent at
`5:35-39);
`
`3. A specific hardware
`component programmed or
`configured to perform a
`security operation disclosed at
`18:1-47 of the ’802 Patent or
`21:29 – 22:9 of the ’135
`Patent;
`
`4. A special purpose
`embedded processor,
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 4 of 11
`
`

`

`SPEX’s Proposal
`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 (’802
`patent at 15:67-16:8); or
`5. Equivalents thereof
`SPEX Proposal: This is not
`subject to 35 U.S.C. ¶ 112(6).
`
`If this phrase is subject to 35
`U.S.C. ¶ 112(6):
`Recited function: enabling
`one or more security
`operations to be performed on
`data
`
`Corresponding structure: see
`the previous term
`
`Claim Term
`
`3a. “security
`module that is
`adapted to
`enable one or
`more security
`operations to
`be performed
`on data” (’135
`Patent, claims
`55–58)4
`
`6. “means for
`enabling
`communication
`between the
`security means
`
`Defendants’ Proposal
`
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6).
`
`
`Recited function: enable
`security operations to be
`performed on data
`
`Corresponding structure:
`See corresponding structure
`provided above for “security
`means for enabling one or more
`security operations to be
`performed on data” and “means
`for performing the one or more
`security operations.”
`
`
`
`
`
`The proposed construction for this term has been moved to the
`“Agreed Constructions” section as the parties reached agreement on
`the proper construction of this term on July 13, 2017.
`
`
` 4 Defendants erroneously referred to this term as “Term 3b” in their opening
`brief, when the term should have been identified as “Term 3a” in accordance
`with its identification in the Amended Joint Claim Construction Chart.
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 5 of 11
`
`

`

`Claim Term
`and the target
`means” (’802
`Patent, claims
`1-2, 6-7, 11-
`12, 23, 25)
`7. “means for
`enabling
`communication
`with a host
`computing
`device” (’802
`Patent, claims
`1-2, 6-7, 11-
`12, 23, 25)
`
`8. “means for
`operably
`connecting the
`security means
`and/or the
`target means to
`the host
`computing
`device in
`response to an
`instruction
`
`SPEX’s Proposal
`
`Defendants’ Proposal
`
`SPEX Proposal: Subject to 35
`U.S.C. ¶ 112(6)
`
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6).
`
`Recited function: enabling
`communication with a host
`computing device
`
`Recited function: enabling
`communication with a host
`computing device
`
`Corresponding structure:
`1. Input/Output (I/O) device,
`for example a conventional
`computer bus;
`2. PCMCIA;
`3. Cord between housing and
`matching receptacle;
`4. Wireless communication;
`5. Smart card interface;
`6. Serial interface (such as
`RS-232);
`7. Parallel interface;
`8. SCSI interface;
`9. IDE interface; or
`10. Equivalents thereof.
`SPEX Proposal: Subject to 35
`U.S.C. ¶ 112(6)
`
`Recited function: 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
`
`Corresponding structure: a
`wireless communications
`interface, a PCMCIA interface,
`a smart card interface, a serial
`RS-232 interface, a SCSI
`interface, or an IDE interface
`
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6).
`
`Recited function: 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.
`
`Corresponding structure: a
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 6 of 11
`
`

`

`Claim Term
`from the host
`computing
`device” (’802
`Patent, claims
`1-2, 6-7)
`
`SPEX’s Proposal
`Corresponding structure:
`1. PCMCIA interface and
`memory section 612a;
`2. PCMCIA interface and a
`device or host driver; or
`3. equivalents thereof.
`
`
`
`
`SPEX Proposal: No
`construction necessary
`
`Defendants’ Proposal
`PCMCIA interface and a device
`or host driver for operably
`connecting to the host
`computing device by selecting
`from three modes—a security
`means only mode, a target
`means only mode, and a
`combined security and target
`means mode—in response to an
`instruction from the host
`computing device.
`Defendants Proposal: operably
`connecting to the host computing
`device by selecting from three
`modes—a security module only
`mode, a target module mode, and a
`combined security and target
`module mode—in response to [an
`/the] instruction from the host
`computing device.
`
`
`
`9. “operably
`connecting the
`security
`module and/or
`the target
`module to the
`host computing
`device in
`response to [an
`/ the]
`instruction
`from the host
`computing
`device” (’135
`Patent, claims
`55-58)
`10. “means for
`mediating
`communication
`of data
`between the
`host computing
`device and the
`target means so
`that the
`communicated
`data must first
`
`SPEX Proposal: Subject to 35
`U.S.C. ¶ 112(6)
`
`
`Recited function: 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
`
`
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6) and
`indefinite for lack of sufficient
`corresponding structure.
`
`
`Recited function: 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.
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 7 of 11
`
`

`

`Claim Term
`pass through
`the security
`means” (’802
`Patent, claims
`1-2, 11-12, 23)
`
`SPEX’s Proposal
`Corresponding structure:
`1. A field programmable gate
`array (FPGA). If an algorithm
`is necessary, 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 (see Fig.
`9A, 16:58-17:7);
`2. Interface control device 910
`(as shown in Fig. 9B); or
`3. Equivalents thereof.
`
`
`
`
`11. “means for
`providing to a
`host computing
`device, in
`response to a
`request from
`the host
`computing
`device for
`information
`regarding the
`
`SPEX Proposal: Subject to 35
`U.S.C. ¶ 112(6)
`
`
`Recited function: 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]
`
`Defendants’ Proposal
`
`Corresponding structure: The
`patent fails to provide sufficient
`corresponding structure; the
`structure it discloses is a specific
`hardware component limited to:
`
`(i) a field-programmable gate
`array programmed to perform
`the steps at 16:57 – 17:15 of the
`’802 Patent; or
`
`(ii) a device with the elements
`shown or described in Figure 9B
`and 17:25-51 of the ’802 Patent
`and programmed to control the
`flow of data between the host
`computing device and the target
`means so that the communicated
`data must first pass through the
`security means.
`
`The patent’s disclosure is
`insufficient, however, because it
`fails to disclose how the devices
`are configured or programmed to
`perform the recited function.
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6) and
`indefinite for lack of sufficient
`corresponding structure.
`
`
`Recited function: 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,
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 8 of 11
`
`

`

`Claim Term
`type of the
`peripheral
`device,
`information
`regarding the
`function of the
`target means”
`(’802 Patent,
`claims 6-7, 23,
`25)
`
`12. “providing to
`the host
`computing
`device, in
`response to the
`request,
`information
`regarding the
`type of the
`defined
`interaction”
`(’802 Patent,
`claim 38)
`13. “providing the
`type of the
`target module
`to the host
`computing
`device in
`response to the
`request” (’135
`Patent, claims
`55-56)
`14. “modular
`device” (’135
`
`SPEX’s Proposal
`
`Corresponding structure:
`1. Memory section 612a; or
`2. Equivalents thereof.
`
`SPEX Proposal: No
`construction necessary.
`
`SPEX Proposal: No
`construction necessary.
`
`Defendants’ Proposal
`information regarding the
`function of the target means.
`
`Corresponding structure: none.
`
`The patent’s disclosure is
`insufficient because it fails to
`disclose sufficient structure for
`providing information about a
`“target means” in response to a
`request for information about a
`“peripheral.”
`Defendants Proposal: In response
`to the request for one type of
`information (i.e., information
`regarding the type of the peripheral
`device), providing to the host
`computing device different
`information (i.e., information about
`the type of defined interaction).
`
`As previously indicated, however,
`the term “defined interaction” is
`indefinite, thus rendering this term
`indefinite.
`Defendants Proposal: In response
`to the request for one type of
`information (i.e., information
`regarding the type of the modular
`device), providing different
`information (i.e., information about
`the type of target module).
`
`SPEX Proposal: Plain and
`ordinary meaning. The plain and
`
`Defendants Proposal: A device
`that operates outside of a host
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 9 of 11
`
`

`

`Claim Term
`Patent, claims
`55-58)
`
`SPEX’s Proposal
`ordinary meaning is: “physically
`separate devices that can be
`physically and electronically
`joined”
`
`Defendants’ Proposal
`computing device and that is
`connected to the host computing
`device
`
`
`
`
`Claim Term
`4. “target module
`that is adapted
`to enable a
`defined
`interaction
`with the host
`computing
`device” (’135
`Patent, claims
`55–58)
`
`5. “target module
`is adapted to
`
`SPEX Proposal: This is not
`subject to 35 U.S.C. ¶ 112(6).
`
`Remaining Disputed Constructions
`SPEX’s Proposal
`Defendants’ Proposal
`SPEX Proposal: This is not
`Defendants Proposal: Governed
`subject to 35 U.S.C. ¶ 112(6).
`by 35 U.S.C. § 112(6).
`
`
`If this phrase is subject to 35
`
`U.S.C. ¶ 112(6):
`
`Recited function: enabling a
`defined interaction with a host
`computing device
`
`Corresponding structure:
`1. A Memory module
`adopted to enable non-volatile
`storage of data;
`2. A communications module
`adopted to enable
`communications between the
`host computing device and a
`modem or LAN transceiver;
`3. A smart card reader;
`4. Biometric device; or
`5. Equivalents thereof
`
`Recited function: enabling a
`defined interaction with the host
`computing device.
`
`Corresponding structure: For the
`“target means,” the structure is
`(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 reader, or (4)
`biometric device. The
`specification does not describe
`corresponding structure for
`“enabling a defined interaction
`with a host computing device.”
`Further, as previously
`mentioned, the term “defined
`interaction” is indefinite.
`Defendants Proposal: Governed
`by 35 U.S.C. § 112(6) and
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 10 of 11
`
`

`

`Claim Term
`enable
`communication
`with the
`security
`module and
`prevent direct
`communication
`with the host
`computing
`device” (’135
`Patent, claim
`56)
`
`
`
`Defendants’ Proposal
`indefinite for lack of sufficient
`corresponding structure.
`
`
`Recited function: enabling
`communication with the security
`module and preventing direct
`communication with the host
`computing device
`
`Corresponding structure: none.
`The patent’s disclosure is
`insufficient because it does not
`disclose adapting the target
`module to “prevent direct
`communication with the host
`computing device” and likewise
`fails to disclose structure
`corresponding to such a
`functionality.
`
`SPEX’s Proposal
`
`If this phrase is subject to 35
`U.S.C. ¶ 112(6):
`
`Recited function: enabling
`communication with the
`security module and
`preventing direct
`communication with the host
`computing device
`
`Corresponding structure: The
`target module as above
`configured so that the target
`module is connected to the
`security module to allow in-
`line security operations (as
`shown in Figures 4B, 6, 8 or
`9A) and further adopted with:
`1. Pins and sockets;
`2. Computer bus;
`3. Input/output (I/O) device
`618; or
`4. Equivalents thereof.
`
`WESTERN DIGITAL CORPORATION, EXHIBIT 1016
`Page 11 of 11
`
`