Samsung Electronics Co Ltd v. Truesight Communications LLC

1. Case Identification

• Case #: IPR2025-00123
• Patent #: 8,745,749
• Filed: November 1, 2024
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics, America, Inc.
• Patent Owner(s): Truesight Communications LLC
• Challenged Claims: 1-8, 13-25

2. Patent Overview

• Title: Generating a Virtual Secure Digital (SD) Card
• Brief Description: The ’749 patent discloses a method for creating a virtual SD card in software that emulates the functionality of a physical SD card. The method involves reading security data like the Media Key Block (MKB) from a physical card and creating separate file systems for secure and user data on a storage device, with the size of the secure file system determined by the size of the user file system via a lookup table.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maeda, Hamann, and AAPA - Claims 1, 14-16, 18, 22-24 are obvious over Maeda in view of Hamann and Applicant Admitted Prior Art (AAPA).

• Prior Art Relied Upon: Maeda (Patent 6,611,907), Hamann (Application # 2002/0080190), and AAPA.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Maeda disclosed the fundamental architecture of a physical SD card, including its secure "protected area" and "user data area," as well as its use of an MKB and Media ID. Hamann taught a method for creating a virtual smart card (VSC) as a software backup of a physical card, creating a VSC with the same logical file structure as the original. Petitioner contended that the key limitation of using a "lookup table" to determine the size of the secure file system based on the user file system size was admitted to be part of the conventional SD card standard in the ’749 patent’s specification, constituting AAPA.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Maeda's standard SD card with Hamann's virtualization technique for the predictable benefit of creating a secure software backup. Virtualization was a well-known technique for improving data portability and protection. A POSITA implementing such a virtual SD card would necessarily have been motivated to conform to industry standards described in the AAPA, including the use of a lookup table for memory allocation, to ensure compatibility and proper function.
  • Expectation of Success: A POSITA would have had a high expectation of success because SD cards (Maeda) and smart cards (Hamann) are technologically similar secure storage devices, and virtualizing one based on teachings for the other would have been a straightforward application of a known technique.

Ground 2: Obviousness over Maeda, Hamann, AAPA, and Hirota - Claims 2, 6-8, and 19 are obvious over Maeda, Hamann, and AAPA in view of Hirota.

• Prior Art Relied Upon: Maeda (Patent 6,611,907), Hamann (Application # 2002/0080190), AAPA, and Hirota (Patent 6,789,192).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address claims requiring the "file system for secure data is encrypted" (claim 2) and located on different physical or logical partitions (claims 6-7). While Maeda suggested writing encrypted data to the protected area, Hirota was introduced for its explicit disclosure that its "authentication area" (analogous to Maeda's protected area) is itself encrypted to protect against unauthorized access. The AAPA was cited as disclosing that secure and user areas on "typical" SD cards may be implemented as either physical or logical partitions.
  • Motivation to Combine: A POSITA would be motivated to incorporate Hirota’s teaching of encrypting the secure storage area into the virtual SD card of the primary combination to enhance data security, a simple and predictable improvement. This was reinforced by Hamann’s teaching that its virtualized private area is also encrypted. The motivation to use separate partitions (AAPA) was to compartmentalize data for improved security and management, a routine practice in file system design.
  • Expectation of Success: Success was expected because encrypting a file system or partitioning a storage device were well-known, routine techniques available to a POSITA seeking to improve security.

Ground 3: Obviousness over Maeda, Hamann, AAPA, Hirota, and Lu - Claims 3-5, 17, 20-21, and 25 are obvious over Maeda, Hamann, AAPA, and Hirota in view of Lu.

• Prior Art Relied Upon: The references from Ground 2, plus Lu (CN 100468438C).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed claims requiring the encryption key to be "derived from computer system information" and "not stored by the computer system" (claim 3). The base combination established an encrypted secure file system. Lu was added because it taught an encryption method for hardware-software binding where a key is derived from a unique hardware identifier (e.g., a chip serial number). This allows the key to be regenerated when needed rather than being stored on the system.
  • Motivation to Combine: A POSITA would be motivated to add Lu's technique to the combination to bind the virtual SD card to a specific host computer. This would prevent the virtual card from being copied and used on an unauthorized machine, providing a significant and desirable security enhancement.
  • Expectation of Success: A POSITA would have expected success, as changing the source of an encryption key from a stored value to a derived one was a known design choice in computer security with predictable results.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 13 based on the combination of Maeda, Hamann, AAPA, and Matsukawa (Application # 2012/0272065), which taught generating a media ID from a random number source separate from the SD card.

4. Key Claim Construction Positions

• Petitioner argued that the term "file system" as used in the independent claims should be construed to mean a "storage area." This construction was based on the ’749 patent's specification, which described the "secured area file system" as being "configured as a storage area for secure data" and used the terms interchangeably when comparing the physical SD card's "secure area" to the virtual SD card's "virtual secured area file system."

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under 35 U.S.C. §325(d), contending that although one reference (Matsukawa) was considered during prosecution for one dependent claim, the core prior art combinations relied upon in the petition (Maeda and Hamann) were not. Crucially, Petitioner argued the Examiner erred by overlooking the patent's own admissions (AAPA) that the purportedly novel "lookup table" limitation was, in fact, part of the conventional, prior art SD card specification. Petitioner also stated it presented a Sotera stipulation, weighing against denial under the Director's guidance.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 and 13-25 of the ’749 patent as unpatentable.