Western Digital Corp v. SPEX Technologies Inc

1. Case Identification

• Case #: IPR2017-[XXXX]
• Patent #: Patent 6,003,135
• Filed: October 16, 2017
• Petitioner(s): Western Digital Corporation
• Patent Owner(s): SPEX Technologies, Inc.
• Challenged Claims: 55-58

2. Patent Overview

• Title: Modular Device with Security and Target Modules
• Brief Description: The ’135 patent describes a method and system for a modular peripheral device that communicates with a host computer. The core concept is integrating a "security module" for performing operations like encryption and a separate "target module" (e.g., for data storage or communication) into a single modular unit, moving the security function from the host into the peripheral itself.

3. Grounds for Unpatentability

Ground 1: Obviousness over Harari and PCMCIA System Architecture - Claims 55-58 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 publication by Don Anderson).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Harari disclosed the core elements of the challenged claims. Harari teaches a modular peripheral device, structured as a "mother/daughter card" combination, that connects to a host system. The mother card contains "functional modules" capable of "encryption and decryption," which Petitioner mapped to the ’135 patent's "security module." The daughter card provides various functionalities like flash memory or modem communication, mapping to the "target module." Petitioner contended that while Harari teaches the hardware concept, PCMCIA System Architecture provides the well-known, standard protocol for its operation. Specifically, PCMCIA describes how a host computer would request and receive information about the peripheral's type and function using its Card Information Structure (CIS), directly teaching the method steps of claims 55 and 58 related to device identification and communication.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Harari’s modular card system with the standardized PCMCIA protocol to ensure interoperability and compatibility with host systems. Using a well-documented standard like PCMCIA was a common and best practice at the time for reducing development complexity and cost. Harari itself explicitly suggests its device communicates in accordance with PCMCIA specifications.
  • Expectation of Success: A POSITA would have had a high expectation of success, as PCMCIA was a robust, established standard designed specifically to facilitate the predictable and reliable interfacing of peripheral cards with host computers.

Ground 2: Obviousness over Harari, Dumas, and PCMCIA System Architecture - Claims 56-57 are obvious over Harari in view of Dumas and PCMCIA System Architecture.

• Prior Art Relied Upon: Harari (Patent 5,887,145), Dumas (Patent 6,199,163), and PCMCIA System Architecture (a 1995 publication).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1, adding Dumas as an alternative or supplementary teaching for specific limitations in dependent claim 56 and independent claim 57. Petitioner asserted that should Harari be deemed insufficient to teach the "in-line" security aspects, Dumas explicitly does. Dumas discloses an encryption circuit placed between a processor and a hard disk, teaching that data must pass through the encryption circuit. This directly maps to the limitation in claim 56 that the target module is adapted to "prevent direct communication with the host computing device" and the limitation in claim 57 of "mediating communication ... so that the exchanged data must first pass through the security module."
  • Motivation to Combine: A POSITA would be motivated to integrate the teachings of Dumas into the Harari framework to enhance data security, particularly for removable storage media—a specific problem Dumas aimed to solve. Dumas’s encryption circuit was described as fast and transparent to the system, making it an attractive and simple solution for adding robust, in-line encryption to Harari's modular device without degrading performance.
  • Expectation of Success: The expectation of success would be high because Dumas describes a simple, self-contained circuit designed to be easily "dropped into" an existing data path between a host and a peripheral, making its integration into the Harari architecture straightforward.

4. Key Claim Construction Positions

• Means-Plus-Function Terms: Petitioner's invalidity arguments relied heavily on construing key claim terms as means-plus-function limitations under 35 U.S.C. §112(6), adopting the constructions urged by the Patent Owner in a co-pending district court litigation.
• "security module that is adapted to enable...": Petitioner argued that under the Patent Owner's proposed construction, this is a means-plus-function term. The function is "enabling one or more security operations," and the corresponding structures disclosed in the specification include a special purpose embedded processor (e.g., MYK-82) or a specific hardware component programmed to perform security operations. Petitioner then mapped Harari's "functional module" for encryption directly onto these structures.
• "target module that is adapted to enable...": Similarly, Petitioner treated this as a means-plus-function term. The function is "enabling a defined interaction with a host," and the corresponding structures include a memory module or a communications module. Petitioner argued Harari’s daughter card, which could be a memory or modem card, was an identical or equivalent structure. This strategy aimed to show the claims were obvious even under the Patent Owner's own, potentially narrower, interpretation.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 55-58 of the ’135 patent as unpatentable under 35 U.S.C. §103.