Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 1 of 32 Page ID #:1010
`
`RUSS, AUGUST & KABAT
`Marc A. Fenster, SBN 181067
`mfenster@raklaw.com
`Ben Wang, SBN 228712
`bwang@raklaw.com
`Andrew D. Weiss, SBN 232974
`aweiss@raklaw.com
`12424 Wilshire Boulevard, Twelfth Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`
`Attorneys for Plaintiff
`SPEX TECHNOLOGIES, INC.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`SOUTHERN DIVISION
`
`Case No. 8:16-CV-01790-JVS-AGR
`
`PLAINTIFF SPEX TECHNOLOGIES,
`INC.'S OPENING CLAIM
`CONSTRUCTION BRIEF
`
`v.
`
`Defendants.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`1
`
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`SPEX TECHNOLOGIES, INC.,
`
`
`
`
`Plaintiff,
`
`
`
`
`KINGSTON TECHNOLOGY
`CORPORATION, KINGSTON
`DIGITAL, INC., KINGSTON
`TECHNOLOGY COMPANY, INC.,
`IMATION CORPORATION,
`DATALOCKER INC., DATA
`LOCKER INTERNATIONAL, LLC,
`
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`1
`
`KINGSTON 1013
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 2 of 32 Page ID #:1011
`
`SPEX TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`v.
`
`
`
`
`WESTERN DIGITAL
`CORPORATION, WESTERN
`DIGITAL TECHNOLOGIES, INC.,
`HGST, INC.,
`
`
`Defendants.
`SPEX TECHNOLOGIES, INC.,
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`
`
`Case No. 8:16-CV-01799-JVS-AGR
`
`
`
`
`
`Case No. 8:16-CV-01800-JVS-AGR
`
`
`
` Case No. 2:16-CV-07349-JVS-AGR
`
`
`
`Plaintiff,
`
`v.
`
`
`
`
`TOSHIBA AMERICA
`ELECTRONICS COMPONENTS
`INC., TOSHIBA AMERICA
`INFORMATION SYSTEMS, INC.,
`TOSHIBA AMERICA, INC., AND
`TOSHIBA CORPORATION,
`
`
`Defendants.
`SPEX TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`
`
`
`APRICORN, INC.,
`
`
`v.
`
`Defendant.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`2
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`2
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 3 of 32 Page ID #:1012
`TABLE OF CONTENTS
`INTRODUCTION. ......................................................................................... 1
`
`I.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`II.
`
`BACKGROUND. ........................................................................................... 1
`
`III. CLAIM CONSTRUCTION PRINCIPLES. ................................................... 2
`
`IV. ARGUMENT: SPEX'S PROPOSED CONSTRUCTIONS ARE
`CONSISTENT WITH APPLICABLE PRINCIPALS AND LAW. .............. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`"Defined Interaction" And "Interaction With A Host Computing
`Device In A Defined Way." ................................................................. 3
`
`"Peripheral Device." ............................................................................. 6
`
`"Security Means For Enabling One Or More Security
`Operations To Be Performed On Data"/"Means For
`Performing The One Or More Security Operations" ........................... 8
`
`"Security Module That Is Adapted To Enable One Or More Security
`Operations To Be Performed On Data." ............................................. 10
`
`"Target Module That Is Adapted To Enable A Defined Interaction
`With The Host Computing Device." .................................................. 12
`
`"Target Module Is Adapted To Enable Communication With The
`Security Module And Prevent Direct Communication
`With The Host Computing Device." .................................................. 13
`
`"Means For Enabling Communication With A Host Computing
`Device" ............................................................................................... 15
`
`"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." ............. 17
`
`"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." .... 18
`
`"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." ......................................................................... 19
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`i
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`3
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 4 of 32 Page ID #:1013
`
`
`K.
`
`L.
`
`"Means For 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" ................................ 22
`
`"Providing To The Host Computing Device, In Response
`To The Request, Information Regarding The Type Of
`The Defined Interaction" .................................................................... 23
`
`M.
`
`"Providing The Type Of The Target Module To
`The Host Computing Device In Response To The Request" ............. 24
`
`N.
`
`"Modular Device" ............................................................................... 25
`
`V.
`
`CONCLUSION. ........................................................................................... 25
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`ii
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`4
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 5 of 32 Page ID #:1014
`TABLE OF AUTHORITIES
`
`Cases
`Aristocrat Techs. Australia PTY Ltd. V. Int'l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008) .................................................................... 21
`Biomedino, LLC v. Waters Techs. Corp.,
`490 F.3d 946 (Fed. Cir. 2007) ........................................................................ 3
`Dow Chem. Corp. v. NOVA Chems. Corp. (Can.),
`809 F.3d 1223 (Fed. Cir. 2015) ...................................................................... 5
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009) .................................................... 2, 17, 19, 24
`Harari v. Lee,
`656 F.3d 1331 (Fed. Cir. 2011) ...................................................................... 2
`Linear Tech. Corp. v. Impala Linear Corp.,
`379 F.3d 1311 (Fed. Cir. 2004) .............................................................. 12, 13
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995) .......................................................................... 2
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F.3d 1205 (Fed. Cir. 2003) ...................................................................... 3
`Mentor H/S, Inc. v. Medical Device Alliance, Inc.,
`244 F.3d 1365 (Fed. Cir. 2001) ...................................................................... 2
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120 (2014) ..................................................................................... 5
`One-E-Way, Inc. v. ITC,
`No. 2016-2105, 2017 WL 2509382 (Fed. Cir. Jun. 12, 2017) ....................... 6
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................... 2
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) ................................................................ 7, 17
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ................................................................ 3, 11
`Statutes
`35 U.S.C. § 112(6) ........................................................................................... passim
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`iii
`
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`5
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 6 of 32 Page ID #:1015
`
`I.
`
`1
`
`INTRODUCTION.
`SPEX is asserting that Defendants infringe two patents: U.S. Patent No.
`6,088,802 (the "'802 patent") and U.S. Patent No. 6,003,135 (the "'135 patent")
`(collectively, the "patents-in-suit"). The patents-in-suit are attached to this brief as
`Exhibits 1 and 2 of the Declaration of Andrew D. Weiss in support of this brief
`("Weiss Decl."). The patents-in-suit claim technology that improves on existing
`technology to allow for in-line hardware cryptographic functionality to be
`contained entirely within a peripheral or modular device.
`Despite the plain and straight-forward language used in the asserted claims
`of the patents-in-suit, and the extensive description of the invention in the
`specifications, the parties have only been able to agree on a limited number of
`proposed constructions. A large number of disputes remain, including whether
`multiple terms are indefinite and whether limitations should be imported into
`otherwise clear limitations. For the reasons discussed in detail below, the Court
`should adopt SPEX's proposed constructions and reject Defendants' improper
`proposals.
`II. BACKGROUND.
`SPEX was formed to facilitate licensing of the technology developed and
`practiced by Spyrus, Inc. ("Spyrus"). Spyrus, founded in 1992, is a pioneering
`encryption company that, among other things, develops cryptographic products
`that are used in both the public and private sectors to secure sensitive information.
`Around 1996 or 1997, Spyrus began to expand on its then-existing highly regarded
`cryptographic technology. Spyrus developed the Hydra series of products, which
`added capabilities such as data storage and modem functionalities to Spyrus'
`existing technology. Spyrus continues to sell products like the PocketVault P-3X
`that are based on its Hydra technology. The inventions claimed in the patents-in-
`suit were created during the development of the initial Hydra products.
`Like Spyrus, Defendants design, manufacture and sell hardware encrypting
`
`1
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`6
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 7 of 32 Page ID #:1016
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`hardware data storage devices. SPEX alleges that Defendants' hardware-
`encrypting storage products infringe claims 1, 2, 6, 7, 11, 12, 23, 25, 38 and 39 of
`the '802 patent and claims 55 through 58 of the '135 patent. Both of the patents-in-
`suit were filed on the same day and contain similar specifications. Each patent
`incorporates the other by reference. '802 patent at 1:6-13, '135 patent at 6-13.
`Accordingly, for clam construction purposes, both patents effectively have the
`same specification consisting of both the '802 and '135 specifications. See Harari
`v. Lee, 656 F.3d 1331, 1334-37 (Fed. Cir. 2011) (holding that disclosure
`incorporated by reference could be used to overcome a written description
`rejection).
`III. CLAIM CONSTRUCTION PRINCIPLES.
`Interpreting the proper meaning and scope of a patent claim is a question of
`law exclusively for the Court to decide. Markman v. Westview Instruments, Inc.,
`52 F.3d 967, 970-71 (Fed. Cir. 1995). SPEX believes the Court is familiar with the
`general doctrines of claim construction. For the purposes of this brief, however,
`SPEX emphasizes two important points. First, it is important to emphasize that,
`where a term is used in accordance with its plain meaning, the Court should not re-
`characterize it using different language. Mentor H/S, Inc. v. Medical Device
`Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001). Second, it is important to
`emphasize that there is "a heavy presumption that claim terms carry their full
`ordinary and customary meaning" unless Defendants can show clear and
`unambiguous disclaimer or a lexicographic definition by the inventors. E.g. ,
`Epistar Corp. v. ITC, 566 F.3d 1321, 1334 (Fed. Cir. 2009); Phillips v. AWH
`Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) ("our cases recognize that the
`specification may reveal a special definition given to a claim term by the patentee
`that differs from the meaning it would otherwise possess. In such cases, the
`inventor's lexicography governs. In other cases, the specification may reveal an
`intentional disclaimer, or disavowal, of claim scope by the inventor.").
`
`2
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`RUSS, AUGUST & KABAT
`
`7
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 8 of 32 Page ID #:1017
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`Many of the issues raised in this Brief are related to means-plus-function
`claims. If a claim recites the word "means," there is a presumption that 35 U.S.C.
`§ 112(6) ("§ 112(6)") applies. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1348 (Fed. Cir. 2015) (en banc). Conversely if the claim does not recite the word
`"means," there is a presumption that § 112(6) does not apply. Id. "The standard is
`whether the words of the claim are understood by persons of ordinary skill in the
`art to have a sufficiently definite meaning as the name for structure." Id. at 1349
`(emphasis added).
`If § 112(6) applies, the analysis has two steps: "1) the court must first
`identify the function of the limitation; and 2) the court must then look to the
`specification and
`identify
`the corresponding structure for
`that function."
`Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007) (citing
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1212
`(Fed. Cir. 2003)). The specification must "clearly link or associate structure with
`the claimed function…." Med. Instrumentation, 344 F.3d at 1211.
`IV. ARGUMENT: SPEX'S PROPOSED CONSTRUCTIONS ARE
`CONSISTENT WITH APPLICABLE PRINCIPALS AND LAW.
`"Defined Interaction" And "Interaction With A Host Computing
`A.
`Device In A Defined Way."1
`SPEX's Proposal
`Proposal for "defined interaction": a
`specific, predefined functionality of the
`device, such as data storage, data
`communication, data input and output or
`user identification
`
`Proposal for "interaction with a host
`computing device in a defined way":
`interaction with a host computing device
`using
`a
`specific,
`predefined
`
`1 These phrases are used in asserted claims 1, 6, 11, 23, 25, 38 and 39 of the '802
`patent, and claims 55, 57 and 58 of the '135 patent. The parties agree that they
`have the same construction.
`
`Defendants' Proposal
`Proposal for "defined interaction"
`and "interaction… in a defined way":
`Indefinite under 35 U.S.C. § 112.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`3
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`8
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 9 of 32 Page ID #:1018
`
`functionality of the device, such as data
`storage, data communication, data input
`and output or user identification
`Although SPEX's proposed constructions are slightly different due to
`grammatical differences of the phrases to be construed,2 SPEX proposes to
`construe these terms consistently as referring to a specific, predefined functionality
`of the device, consistent with the plain language and intrinsic evidence. The
`claims describe a defined interaction as functionality enabled by the target means.
`E.g., '802 patent claim 11 ("target means for enabling a defined interaction with a
`host computing device"). The Abstract of the '802 patent teaches that "[t]he
`defined interaction can provide a variety of types of functionality (e.g., data
`storage, data communication, data input and output, user identification)." The
`specification similarly teaches that the "defined interactions can provide a variety
`of types of functionality (e.g., data storage, data communication, data input and
`output, user identification), as described further below." '802 patent at 3:33-36; see
`also '135 patent at 4:18-31 ("The target module is adapted to enable a defined
`interaction with a host computing device (examples of which are given below)";
`describing data storage, data communication, data input and output and user
`identification); '802 patent at 4:62-5:4 (describing the defined interactions of the
`target functionality); 13:27-15:41 (same with additional detail).3 The file history
`does not alter the teachings of the other intrinsic evidence. Thus, the intrinsic
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`2 Defendants may raise concerns that SPEX's proposed constructions are not
`identical and mean different things. SPEX does not intend to propose different
`meanings for the terms. If the Court is concerned that the constructions mean
`different things, SPEX proposes both terms be construed as "a specific, predefined
`functionality of the device, such as data storage, data communication, data input
`and output or user identification."
`3 These terms would be definite to a layperson, let alone a person of ordinary skill
`in the art. The plain meaning of the term means an interaction that is defined.
`Particularly in light of the examples in the specification, a layperson would
`understand what these terms mean.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`4
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`9
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 10 of 32 Page ID #:1019
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`evidence is consistent with the plain meaning of "defined interaction" as something
`that is a specific, predefined functionality of the target means, such as data storage
`or data communications. See also Gomez Decl.4 at ¶¶ 35-43. "Interaction with a
`host computing device in a defined way" has the same meaning.
`Defendants contend that this term is indefinite. "[A] patent is invalid for
`indefiniteness [only] if its claims, read in light of the specification delineating the
`patent, and the prosecution history, fail to inform, with reasonable certainty, those
`skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig
`Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). "The burden of proving
`indefiniteness remains on
`the party challenging validity which must be
`establish[ed] by clear and convincing evidence." Dow Chem. Corp. v. NOVA
`Chems. Corp. (Can.), 809 F.3d 1223, 1227 (Fed. Cir. 2015) (Moore, J.,
`concurring). For the reasons discussed above, the intrinsic evidence informs a
`person of ordinary skill in the art of the scope of this term. E.g., Gomez Decl. at ¶¶
`35-46. Indeed, until it became legally expedient to alter its position, the Kingston
`defendants apparently understood these terms sufficiently to file petitions for inter
`partes reviews. E.g., Weiss Decl. Ex. 3 at 29-30 ("The '802 patent explains that
`this defined interaction can include storing data, and that the structure that
`performs this function includes memory"); see also, e.g., Weiss Decl. Ex. 3 at 57-
`58; Weiss Decl. Ex. 4 at 24 (the defined interaction in the prior art "is the exchange
`of data between the host and the target module (memory)"), 26 (similar statement);
`Weiss Decl. Ex. 5 at 26, 27 (similar statements).5 In any event, Defendants'
`
`4 "Gomez Decl." refers to the Declaration of Mr. Miguel Gomez Regarding Claim
`Construction, filed concurrently.
`5 Inter partes review cannot address indefinite claims. Despite their apparent
`change of position with respect to this term, as well as the allegedly indefinite
`means-plus-function terms discussed below, the Kingston defendants have not
`withdrawn their petitions.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`5
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`10
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 11 of 32 Page ID #:1020
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`primary argument appears to be that the phrase cannot be understood because the
`patents do not describe the meaning of an "undefined" interaction or how a defined
`interaction is different from an interaction. "Undefined interaction," however, is
`not a claim term. "Interaction," distinct from "defined interaction," is also not a
`claim term. These unused terms should not impact the indefiniteness analysis.
`See, e.g., One-E-Way, Inc. v. ITC, No. 2016-2105, 2017 WL 2509382, at *6 (Fed.
`Cir. Jun. 12, 2017) (rejecting argument that that a claim term is indefinite because
`of a failure to identify how it differs in scope from an unasserted claim term).
`Further, Defendants' argument makes little sense because the meaning of a phrase
`is usually understood even if the meaning of the opposite phrase is not defined.
`Accordingly, the Court should reject Defendants' indefiniteness proposal and
`should adopt the constructions proposed by SPEX.
`"Peripheral Device."6
`B.
`SPEX's Proposal
`Any device that operates outside of a
`(i.e.,
`computing device
`host
`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.
`The intrinsic and extrinsic evidence supports SPEX's proposed construction.
`"Peripheral device" is used in the preamble of the claims of the '802 patent. E.g.,
`'802 patent at claim 11. The specification also uses "peripheral device" according
`to its ordinary meaning. For example, the specification describes a "peripheral
`device" as a "device that operates outside of a host computing device and that is
`connected to the host computing device." ' 802 patent at 4:52-55. A host
`computing device is described as the monitor, keyboard, CPU and RAM
`
`Defendants' Proposal
`Any device that operates outside of a
`host computing device and
`that
`is
`connected to the host computing device.
`
`
`6 This phrase is used in asserted claims 1, 2, 6, 7, 11, 12, 25 and 25 of the '802
`patent.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`6
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`11
`
`

`

`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 12 of 32 Page ID #:1021
`
`combination. '802 patent at 6:23-33, Fig. 6; see also Gomez Decl. at ¶ 49.7 The
`description of "peripheral device" in the specification is consistent with the plain
`and ordinary meaning of the term in 1997, when the '802 patent was filed. Weiss
`Decl. Ex. 6 (peripheral: "a device that is not part of the keyboard-computer-
`screen system, but is connected to it separately and can exchange signals with it.
`Typical peripherals are a disk drive, a printer…" (emphasis added)); Ex. 7 ("In
`computing, a device, such as a disk drive, printer, modem, or joystick, that is
`connected to a computer and is controlled by the computer's microprocessor."
`(emphasis added)); Gomez Decl. at ¶ 48. The file history does not alter the plain
`and ordinary meaning. SPEX's proposed construction should therefore be adopted.
`The primary dispute here is Defendants' interpretation of their construction.
`Defendants argue that "peripheral device" excludes hard drives within a computer
`case. The plain meaning of "peripheral device" would not exclude hard drives
`within a computer case. Weiss Decl. Exs. 6, 7; Gomez Decl. at ¶ 48. Because
`Defendants are proposing to narrow the ordinary meaning of the term, Defendants
`must show clear and unambiguous evidence that the inventors intended to limit the
`scope of "peripheral device." E.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`1313, 1327 (Fed. Cir. 2002). Defendants cannot meet this burden. The only basis
`disclosed by Defendants during the meet and confer process for their position is the
`following statement: "The 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.
`This statement does not clearly and unambiguously disclaim the ordinary meaning
`
`7 After Mr. Gomez rendered his opinion, SPEX amended its construction to better
`highlight the dispute among the parties. SPEX's amendment does not change the
`meaning of SPEX's proposed construction and does not alter the opinions rendered
`by Mr. Gomez.
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`7
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`12
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 13 of 32 Page ID #:1022
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`of "peripheral device." It notes that a driver can be stored on a hard disk but notes
`that the driver is stored in memory section 606b in the preferred embodiment. The
`statement does not clearly and unambiguously disclose that memory section 606b
`(or memory device 606) is a hard drive. Unrebutted testimony from expert Miguel
`Gomez further shows that Defendants' argument is inconsistent with the
`understanding of one of ordinary skill in the art at the time. Gomez Decl. at ¶¶ 50.
`Additionally, other intrinsic evidence suggests that the "peripheral device" includes
`internal disk drives, such as the reference to using SCSI and IDE interfaces (which
`are protocols used exclusively by devices internal to a computer case). '802 patent
`at 5:46-49.
`Accordingly, the Court should adopt SPEX's proposed construction.
`"Security Means For Enabling One Or More Security
`C.
`Operations To Be Performed On Data"/"Means For
`Performing The One Or More Security Operations"8
`SPEX's Proposal
`Defendants' Proposal
`Subject to 35 U.S.C. § 112(6)
`Governed by 35 U.S.C. § 112(6).
`
`
`Recited function: enabling one or more
`Recited Functions: (1) enabling security
`security operations to be performed on
`operations to be performed on data; (2)
`data
`(claims 1, 6, 11, 23, 25);
`performing the security operations;
`performing the one or more security
`
`operations (claim 39)
`Corresponding Structures:
`1. A specific hardware component
`
`Corresponding Structures:
`programmed or configured
`to
`1. Cryptographic processing device
`perform a
`security operation
`disclosed at 18:1-47 of the '802
`801 (processor capable of
`Patent or 21:29 – 22:9 of the '135
`performing the cryptographic
`Patent.
`operations, as described at '802
`2. A special purpose embedded
`patent, 15:63-15:67);
`2. Security token (device that
`processor, embodied on a single
`integrated chip and designated as
`performs security operations and
`MYK-82 (and also referred to by
`that includes one or more
`the name Capstone), which
`mechanisms (such as, for
`includes an ARM6™ processor
`example, use of a hardware
`core and several special purpose
`random number generator and/or
`cryptographic
`processing
`protected memory) to provide
`
`8 These phrases are used in asserted claims 1, 6, 11, 23, 25 and 39 of the '802
`patent. The parties agree that they have the same construction.
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`
`8
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`RUSS, AUGUST & KABAT
`
`13
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 14 of 32 Page ID #:1023
`
`
`been
`have
`that
`elements
`developed by the Department of
`Defense.
`
`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, embodied on a single
`integrated chip and designated as
`MYK-82 (and 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.
`
`If an algorithm is necessary for any
`corresponding
`structures,
`SPEX
`identifies one or more of the security
`operations disclosed at
`'802 patent,
`18:1-47.
`The parties agree that these phrases are means-plus-function phrases.
`Though the parties have proposed different recited functions, SPEX's recited
`functions track the claim language directly. The specification discloses multiple
`structures that are clearly linked to the recited function of enabling/performing
`security operations.
`The parties agree that the specification discloses the structures identified by
`Defendants as corresponding structures – the specific hardware component and the
`special purpose processor (structures 3 and 4 in SPEX's proposed construction).
`The specification discloses two additional corresponding structures. First,
`the specification discloses a cryptographic processing device 801 and explicitly
`links it to the recited function of performing security functions:
`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
`
`9
`
`PLAINTIFF SPEX TECHNOLOGIES, INC.'S OPENING CLAIM CONSTRUCTION
`BRIEF
`
`170713 SPEX Opening Claim Construction Brief.docx
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`RUSS, AUGUST & KABAT
`
`14
`
`

`

`Case 8:16-cv-01799-JVS-AGR Document 53 Filed 07/13/17 Page 15 of 32 Page ID #:1024
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`operations desired to be provided by the peripheral device.
`'802 patent at 15:63-67. The cryptographic processing device 801 is clearly linked
`to the recited function. Id. at 15:63-64 ("The cryptographic processing device 801
`can be adapted to perform security operations"). Thus, the security means element
`should be construed to include the cryptographic processing device 801 as a
`corresponding structure.
`Second, the specification discloses a security token and explicitly links it to
`the recited function:
`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. A security token is a special purpose device: "a device that
`performs security operations and that includes one or more mechanisms (such as,
`for example, use of a