Samsung Electronics Co Ltd v. Communication Technologies Inc

1. Case Identification

• Case #: IPR2022-01221
• Patent #: 6,725,444
• Filed: June 30, 2022
• Petitioner(s): Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
• Patent Owner(s): Joseph E. Fergus
• Challenged Claims: 1-26

2. Patent Overview

• Title: System and Method for Programmable Removal of Sensitive Information From Computing Systems
• Brief Description: The ’444 patent discloses a method for securely removing sensitive information from a computer. The system allows a user to pre-select information removal options, including a trigger based on a number of unsuccessful logon attempts, which then generates and executes a purge script to delete file and directory information from a File Allocation Table (FAT) and overwrite the data in physical memory.

3. Grounds for Unpatentability

Ground 1A: Claims 1-3, 5-11, and 14-20 are obvious over Mooney in view of Motoyama.

• Prior Art Relied Upon: Mooney (Patent 5,610,981) and Motoyama (Patent 6,304,948).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mooney disclosed a computer security system that performs a destructive security operation after a pre-programmed number of failed access attempts (unsuccessful logons). Mooney’s disclosed operations included clearing RAM or physically destroying memory. Motoyama was cited for its teaching of a more secure data deletion method, which involved not only deleting file and directory entries from a file directory or FAT but also overwriting the stored data with a predetermined value to make it unrecoverable. The combination, referred to as the Mooney-Motoyama combination (MMC), allegedly met the limitations of independent claims 1, 11, and 16 by triggering a secure data purge (as taught by Motoyama) after a set number of failed logons (as taught by Mooney).
  • Motivation to Combine: A POSITA would combine these references to provide a system administrator with a more flexible and less extreme data security option. Instead of Mooney’s drastic physical destruction of hardware, a POSITA would have been motivated to implement Motoyama’s secure software-based data erasure as one of the selectable security levels in Mooney’s system, thereby achieving secure data removal without destroying the hardware.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying a known secure deletion method (Motoyama) to a known security system that triggered actions based on failed logins (Mooney) to achieve the predictable result of secure, automated data removal.

Ground 2A: Claims 13 and 21-26 are obvious over Mooney, Motoyama, and Lakoski or Solaris.

• Prior Art Relied Upon: Mooney (Patent 5,610,981), Motoyama (Patent 6,304,948), and either Lakoski (WO 90/05340) or Solaris (Solaris Common Desktop Environment: User’s Guide, Feb. 2000).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the MMC by adding a user-initiated trigger. The primary combination of Mooney and Motoyama provided the system for automated data purges. Lakoski and Solaris were introduced to teach the use of a user-defined "hotkey" to invoke a program or trigger an event. This combination allegedly rendered claims 13 and 21-26 obvious by teaching a system where the secure data purge could be initiated automatically upon detecting the selection of a hotkey.
  • Motivation to Combine: A POSITA would be motivated to add a hotkey trigger to the MMC to provide the user with greater and more immediate control over data purging. This would be a selectable security option allowing a user to manually trigger a data wipe if they believed their device was about to be stolen, misplaced, or exposed, rather than waiting for a set number of failed logon attempts.
  • Expectation of Success: Success was expected as using hotkeys to invoke functions was a well-known programming technique. Implementing this functionality into the MMC would have involved routine skill to create an additional, predictable security feature.

Ground 5A: Claims 1-3, 5-11, and 14-20 are obvious over Bernhard, Motoyama, and Hakomori.

• Prior Art Relied Upon: Bernhard (Patent 6,275,942), Motoyama (Patent 6,304,948), and Hakomori (Patent 6,370,402).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Mooney. Petitioner argued Bernhard disclosed a flexible computer security network with Automated Response Modules (ARMs) that execute in response to detected "computer misuse," explicitly including a user unsuccessfully attempting to log in three times. Hakomori was cited for its teaching of erasing memory content after a password has been entered incorrectly a predetermined number of times. Motoyama again supplied the teaching of securely deleting data by overwriting it. This combination allegedly taught a system where an ARM (Bernhard) is configured to trigger a secure data purge (Motoyama) in response to a set number of failed password attempts (Hakomori).
  • Motivation to Combine: A POSITA would combine the references to enhance Bernhard's flexible ARM system. Bernhard's system was designed to handle various misuses, and a POSITA would have found it obvious to configure an ARM to handle the specific misuse of repeated failed password entries (as taught by Hakomori) by executing a known secure deletion method (as taught by Motoyama) as the automated response.
  • Expectation of Success: The combination was foreseeable because it involved configuring a flexible security system (Bernhard) to respond to a known threat (repeated failed logins from Hakomori) with a known and effective countermeasure (secure data deletion from Motoyama).

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These included adding Macon (Patent 5,715,455) to the Mooney combination to explicitly teach a FAT in RAM. Several grounds added Hakomori to teach password-based logon attempts specifically. Further, Petitioner argued that if a narrower interpretation of "purge script file" is required, all grounds could be combined with Sachse (Patent 6,985,901), which explicitly teaches a purge_records.pl script file, to render the claims obvious.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate for three primary reasons. First, the median time to trial in the parallel district court litigation (E.D. Tex.) was in close proximity to the statutory deadline for a Final Written Decision (FWD), weighing against denial. Second, Petitioner stipulated that it would not pursue in the district court the same grounds or grounds utilizing the primary references of Mooney or Bernhard, ensuring the IPR would not be duplicative of litigation. Third, Petitioner asserted that the petition presented compelling evidence of unpatentability across 16 different grounds, making institution a matter of public interest.

7. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-26 of the ’444 patent as unpatentable under 35 U.S.C. §103.