PTAB

IPR2018-00082

Western Digital Corporation v. SPEX TECHNOLOGIES, INC.

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1. Case Identification

2. Patent Overview

  • Title: Peripheral Device with Integrated Security Functions
  • Brief Description: The ’802 patent relates to a peripheral device that communicates with a host computing device. The invention’s stated aim is to integrate security functionality (e.g., encryption) within the peripheral itself, rather than having the security functions performed by the host computer or a separate external device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Harari and PCMCIA System Architecture

Claims 1-2, 6-7, 11-12, 23-25, and 38-39 are obvious over Harari in view of PCMCIA System Architecture.

  • Prior Art Relied Upon: Harari (Patent 5,887,145) and PCMCIA System Architecture (a 1995 technical book by Don Anderson).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Harari discloses all elements of the challenged claims. Harari teaches a modular peripheral device (a PC card with mother/daughter card portions) where the mother card contains "functional modules" for performing encryption/decryption (the "security means") and the daughter card provides various functionalities like flash memory or modem capabilities (the "target means"). Petitioner asserted that for any details not explicitly laid out, PCMCIA System Architecture provides the necessary teachings, as Harari explicitly states its preferred embodiment communicates using PCMCIA standards. This includes the protocol for a host to request and receive device information (the Card Information Structure, or CIS) to operably connect the peripheral.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine these references because Harari expressly teaches that its peripheral communicates using PCMCIA standards. The PCMCIA System Architecture book is a standard industry guide for implementing such systems. Therefore, a POSITA implementing Harari’s device would naturally consult the PCMCIA standard to ensure compatibility and proper functionality.
    • Expectation of Success: A POSITA would have a high expectation of success in combining the teachings, as it involves using a well-documented, standardized architecture (PCMCIA) to implement a device (Harari) that was designed for that very architecture.

Ground 2: Obviousness over Harari, Wang, and PCMCIA System Architecture

Claims 1-2, 11-12, 23, and 39 are obvious over Harari in view of Wang and PCMCIA System Architecture.

  • Prior Art Relied Upon: Harari (Patent 5,887,145), Wang (Patent 5,765,027), and PCMCIA System Architecture.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the disclosures of Harari and PCMCIA System Architecture. Petitioner contended that Wang teaches a specific structure for the "means for mediating communication," a key limitation in several claims. Wang discloses a PCMCIA card with an Application-Specific Integrated Circuit/Field Programmable Gate Array (ASIC/FPGA) controller that mediates data flow between the host computer, a local processor, and an RF communication module (the target means). Petitioner argued this FPGA controller is a direct structural counterpart to the mediating means claimed in the ’802 patent.
    • Motivation to Combine: A POSITA would combine Wang with Harari to find a specific implementation for Harari’s more general controller. Both references describe PCMCIA-form-factor peripherals with controllers that manage data. Wang provides a known, specific solution (an FPGA) for mediating data communications in such a device, making it an obvious choice for implementing or improving the controller in Harari.
    • Expectation of Success: Success would be expected because it involves integrating a known type of controller (Wang's FPGA) into a compatible system (Harari's PCMCIA peripheral) to perform a well-understood function (mediating data transfer).

Ground 3: Obviousness over Harari and PCMCIA System Architecture, further in view of Dumas

Claims 1-2, 11-12, 23, and 39 are obvious over Harari and PCMCIA System Architecture, further in view of Dumas.

  • Prior Art Relied Upon: Harari (Patent 5,887,145), PCMCIA System Architecture, and Dumas (Patent 6,199,163).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if the Board found the "mediating communication... so that the communicated data must first pass through the security means" limitation was not met by the primary combination, Dumas explicitly teaches it. Dumas discloses an encryption circuit placed directly on the data path between a processor and a hard disk, such that all data traveling between them must pass through the encryption circuit for encryption or decryption.
    • Motivation to Combine: A POSITA would be motivated to incorporate the teachings of Dumas into Harari's system to enhance security for removable data storage. Dumas provides a simple, fast, and transparent method for encryption that would be attractive for securing the data on Harari's removable daughter card without affecting system performance.
    • Expectation of Success: A POSITA would have expected success in combining the references because Dumas discloses a simple, self-contained encryption circuit that could be easily integrated into the data path of an existing architecture like Harari's.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-2, 11-12, and 23 based on the combination of Harari, Wang, Dumas, and PCMCIA System Architecture, relying on the same rationales.

4. Key Claim Construction Positions

Petitioner's arguments relied heavily on its construction of several means-plus-function claim terms, adopting constructions urged by the Patent Owner in related district court litigation.

  • “security means for enabling one or more security operations...” (e.g., Claim 1A): Petitioner argued that Harari’s disclosure of “functional modules” or a “comprehensive controller” capable of performing encryption and decryption is an identical or structurally equivalent hardware component to the corresponding structures disclosed in the ’802 patent (e.g., a cryptographic processor or specific hardware programmed for security operations).
  • “target means for enabling a defined interaction...” (e.g., Claim 1B): Petitioner contended that Harari’s “daughter card,” which can be configured with functionalities like non-volatile flash memory or as a communication modem, is an identical or equivalent structure to the corresponding structures disclosed in the ’802 patent (e.g., a memory module or a communications module).
  • “means for mediating communication...” (e.g., Claim 1F): Petitioner asserted that Harari’s comprehensive controller, especially when implemented with the specific FPGA structure taught by Wang, provides the corresponding structure for this function, which is to ensure data passes through the security means.

5. Relief Requested

  • Petitioner requests institution of inter partes review (IPR) and cancellation of claims 1-2, 6-7, 11-12, 23-25, and 38-39 of the ’802 patent as unpatentable.