PTAB

IPR2025-00123

SamSung ElecTronics Co Ltd v. Truesight CommunicatIONs LLC

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1. Case Identification

2. Patent Overview

  • Title: Method for Generating a Virtual Secure Digital (SD) Card
  • Brief Description: The ’749 patent relates to a system for generating a virtual Secure Digital (SD) card on a computing device. The disclosed method involves reading security information, such as a media key block and media ID, from a physical SD card and creating separate file systems for secure data and user data, where the size of the secure file system is determined from a lookup table based on the size of the user data file system.

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 # 2002/0080190A1), and AAPA from the ’749 patent specification.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maeda taught the fundamental architecture of an SD card, including a protected area for secure data, a user data area, and the process of reading a media key block (MKB) and media ID. Hamann taught a method for creating a software-based virtual smart card (VSC) that mirrors the logical file structure of a physical card to serve as a backup. Petitioner asserted that the key limitation—using a lookup table to determine the secure area's size based on the user area's size—was explicitly admitted in the ’749 patent’s specification to be a feature of "typical" SD cards conforming to industry specifications, making it Applicant Admitted Prior Art.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Maeda’s SD card architecture with Hamann’s virtualization technique to create a virtual SD card for the known purpose of data backup and security. When implementing this combination, a POSITA would naturally consult and apply the governing SD card industry standards (the AAPA) to correctly size the virtual partitions, which taught using a lookup table.
    • Expectation of Success: Success would be highly expected, as the combination involved applying a known virtualization method (Hamann) to a standardized hardware device (Maeda) and following its own public specifications (AAPA) for implementation details.

Ground 2: Obviousness over Maeda-Hamann-AAPA and Hirota - Claims 2, 6-8, and 19 are obvious over the combination of Ground 1 in view of Hirota.

  • Prior Art Relied Upon: Maeda, Hamann, AAPA, and Hirota (Patent 6,789,192).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring the secure file system to be encrypted. Petitioner asserted that while the base combination established the virtual SD card structure, Hirota explicitly taught a semiconductor memory card with an encrypted "authentication area" (argued to be analogous to the claimed secure file system) to protect stored keys and other sensitive information.
    • Motivation to Combine: A POSITA would be motivated to incorporate Hirota’s explicit encryption teachings into the virtual SD card of Ground 1 to enhance its security. This was framed as a simple, predictable improvement to protect the virtualized secure data, which is a primary goal of creating such a virtual card.

Ground 3: Obviousness over Maeda-Hamann-AAPA-Hirota and Lu - Claims 3-5, 17, 20-21, and 25 are obvious over the combination of Ground 2 in view of Lu.

  • Prior Art Relied Upon: Maeda, Hamann, AAPA, Hirota, and Lu (CN100468438C).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims where an encryption key is derived from computer system information (e.g., a hardware serial number) and not stored on the system. Petitioner argued that Lu taught methods for hardware/software binding by deriving an encryption key from a unique hardware identifier (e.g., a chip serial number), which allows the key to be generated on-demand whenever needed.
    • Motivation to Combine: A POSITA would be motivated to substitute the key storage/derivation methods of the base references with Lu's method to securely bind the virtual SD card to a specific host computer. This would prevent the virtual card's secure contents from being copied and used on unauthorized machines, a well-known security objective.
  • 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 with random data not allocated from the SD card itself.

4. Key Claim Construction Positions

  • Petitioner argued that the term "file system" should be construed to mean a "storage area." This position was based on the ’749 patent’s own specification, which allegedly used the terms interchangeably and depicted a "virtual secured area file system" as the software equivalent of a physical "secure area." This construction is critical to Petitioner's arguments, as it allows prior art that describes secure "areas" or "partitions" to meet the "file system" limitations of the challenged claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §325(d). Petitioner acknowledged that one reference, Matsukawa, was considered by the Examiner during prosecution in a rejection of what became claim 13. However, Petitioner contended that its primary invalidity grounds relied on new combinations of art (Maeda, Hamann, Hirota, Lu) that were not before the Examiner. More importantly, Petitioner argued the Examiner fundamentally erred by overlooking the Applicant Admitted Prior Art (AAPA) within the patent's own specification, which disclosed the very "lookup table" feature that the Examiner identified as the basis for allowing the claims.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-8 and 13-25 of the ’749 patent as unpatentable under 35 U.S.C. §103.