Kingston Technology Co Inc v. SPEX Technologies Inc

1. Case Identification

• Case #: IPR2018-01002
• Patent #: 6,003,135
• Filed: May 2, 2018
• Petitioner(s): Kingston Technology Company, Inc.
• 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 relates to a method for use in a modular peripheral device that communicates with a host computer. The device comprises a "security module" for performing security operations and a "target module" (e.g., data storage, communication) for enabling a defined interaction with the host.

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 book by Don Anderson).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Harari disclosed all limitations of the challenged claims. Harari taught a modular peripheral device in the form of a removable PC card with a "mother card" and a "daughter card." Petitioner asserted that Harari’s "mother card," which contained "functional modules" for performing encryption and decryption, corresponded to the claimed "security module." Harari’s "daughter card," which provided functionality like memory storage or modem communications, corresponded to the claimed "target module." The combination communicated with a host system via a standard interface. For claim steps involving the host requesting and receiving the device type, Petitioner contended that PCMCIA System Architecture explicitly taught this process. The book described the Card Information Structure (CIS), a data structure on a PC card that a host computer reads during initialization to identify the card's type, function, and configuration requirements using standard software protocols.
  • Motivation to Combine: A POSITA would combine these references because Harari explicitly taught that its preferred embodiment communicates with the host system using the PCMCIA standard. PCMCIA System Architecture was a well-known instructional guide for implementing that very standard. A POSITA implementing Harari’s system would have naturally consulted the PCMCIA guide to ensure proper compatibility, interoperability, and functionality, such as the standardized method for device identification.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a device designed for a specific standard (Harari) with the official implementation guide for that standard (PCMCIA System Architecture) was a routine and predictable engineering task.

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 book by Don Anderson).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, adding Dumas to explicitly teach limitations in dependent claim 56 and independent claim 57 that require data to be routed through the security module. Specifically, claim 56 required the target module to be adapted to prevent direct communication with the host, and claim 57 required "mediating communication" so that data "must first pass through the security module." Petitioner argued that while Harari suggested this architecture, Dumas explicitly disclosed it. Dumas taught an in-line encryption circuit placed between a processor (host) and a hard disk (target module), where all data must pass through the encryption circuit for encryption or decryption. This directly mapped to the claimed limitations of mediating and forcing data flow through the security module.
  • Motivation to Combine: A POSITA would combine Dumas with Harari to enhance the security features already present in Harari. Harari disclosed using encryption, and Dumas provided a simple, efficient, and transparent circuit for implementing in-line encryption, particularly for removable storage like the hard disks mentioned in Harari. Dumas's solution to protect data on removed hard disks would have been an attractive and straightforward improvement to Harari’s modular system.
  • Expectation of Success: The combination would have yielded predictable results. Dumas taught a simple encryption circuit that could be easily integrated into an existing architecture like Harari's to improve security without significant modification or disruption to the data transfer process.

4. Key Claim Construction Positions

• Petitioner's arguments were based on the claim constructions urged by the Patent Owner in a co-pending district court litigation, thereby arguing for invalidity even under the Patent Owner's own proposed interpretations.
• "security module" and "target module": Petitioner addressed these as potential means-plus-function terms under §112, para. 6. Petitioner mapped the prior art to the specific structures identified by the Patent Owner from the patent's specification (e.g., a "cryptographic processing device" for the security module; a "memory module" or "communications module" for the target module). This strategy aimed to show that the prior art disclosed structures identical or structurally equivalent to those the Patent Owner relied upon to support the claims.

5. Arguments Regarding Discretionary Denial

• The petition was filed more than one year after Petitioner was served with a complaint in a co-pending district court action. However, Petitioner argued that filing was permissible because it was filed in conjunction with a Motion for Joinder to an existing IPR (IPR2017-00084), pursuant to 35 U.S.C. § 325(c).

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 55-58 of the ’135 patent as unpatentable.