Unified Patents Inc. v. Intellectual Ventures II, LLC, IPR2016-01404 (July 11, 2016) Petition)

Filed on behalf of: Unified Patents Inc.
By:
P. Andrew Riley
James D. Stein
Finnegan, Henderson,
Farabow, Garrett & Dunner, L.L.P.
901 New York Avenue, NW
Washington, DC 200014413
Telephone: 202-408-4266
Facsimile: 202-408-4400
Email: IV459-IPR@finnegan.com
Jonathan Stroud
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Telephone: 202-805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE

________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD

_________________________
UNIFIED PATENTS INC.,

Petitioner
v.
INTELLECTUAL VENTURES II, LLC
Patent Owner
_________________________
U.S. Patent 6,968,459
IPR2016-01404
COMPUTING ENVIRONMENT HAVING SECURE STORAGE DEVICE
__________________________________________________________________
PETITION FOR INTER PARTES REVIEW
IPR2016-01404, Petition
Patent 6,968,459
TABLE OF CONTENTS
I.
INTRODUCTION ...........................................................................................1
II.
MANDATORY NOTICES UNDER 37 C.F.R. 42.8 ...................................2

A.
Real Party-in-Interest ............................................................................2
B.
Related Matters......................................................................................2
C.
Lead and Back-Up Counsel, and Service Information .........................2
III.
FEE PAYMENT ..............................................................................................3
IV.
STATEMENT OF PRECISE RELIEF REQUESTED ...................................3
V.
VI.
A.
Claims for Which Review is Requested................................................3
B.
Statutory Grounds of Challenge ............................................................3
C.
The Level of Ordinary Skill in the Art at the Time of the

Claimed Invention .................................................................................4
THE 459 PATENT .........................................................................................5

A.
Overview of the Disclosure ...................................................................5
B.
Prosecution History ...............................................................................8
C.
Prior Art Secure Storage Devices..........................................................9
GROUNDS FOR STANDING......................................................................10
VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH

CLAIM CHALLENGED ..............................................................................10
A.
Claims for Which Review is Requested..............................................10
B.
Statutory Grounds of Challenge ..........................................................10
C.
Claim Construction .............................................................................11

1.
Device-Specific Security Information (Challenged

Claims 1, 15, 33, and 39) ..........................................................11
i
Patent 6,968,459
2.
Device-Specific Information (Challenged Claim 18)

and User-Specific Information (Challenged Claims 18
and 24).......................................................................................13
3.
Security Information (Challenged Claim 18) ........................14
4.
Status Change . . . for the Storage Device (Challenged

Claims 13 and 14) .....................................................................14
5.
Storage Manager (Challenged Claim 39) ..............................15
6.
Drive (Challenged Claim 39) ................................................17
VIII. CLAIMS 1, 2, 1315, 33, 34, 39, 46 AND 48 OF THE 459 PATENT
ARE UNPATENTABLE ...............................................................................18
A.
B.
C.
GROUND 1: Bensimon Anticipates Claims 1, 13, 14, 33, 39,

46, and 48 of the 459 Patent Under 35 U.S.C. 102(b) ....................18
1.
Overview of Bensimon ..............................................................19
2.
Independent Claim 1 .................................................................20
3.
Dependent Claims 13 and 14 ....................................................27
4.
Independent Claim 33 ...............................................................29
5.
6.
Dependent Claims 46 and 48 ....................................................32
GROUND 2: Bensimon in View of Takahashi Renders Obvious

Claims 2, 15, and 34 Obvious Under 35 U.S.C. 103(a) ...................33
1.
Overview of Takahashi .............................................................33
2.
Dependent Claim 2 ...................................................................36
3.
4.
Dependent Claim 34 .................................................................42
GROUND 3: Kimura in View of Takahashi Renders Obvious

Independent Claim 18 Under 35 U.S.C. 103(a) ...............................43
ii
Patent 6,968,459
IX.
1.
Overview of Kimura .................................................................43
2.
CONCLUSION..............................................................................................67
iii
Patent 6,968,459
LIST OF EXHIBITS
Exhibit
EX1001
EX1002
EX1003
EX1004
EX1005
EX1006
EX1007
EX1008
EX1009
EX1010
Description
U.S. Patent No. 6,968,459 to Jeffrey Morgan, et al.
Declaration of Expert: Dr. Paul Franzon
Excerpts of Prosecution History for U.S. Patent No. 6,968,459
U.S. Patent No. 5,533,125 to Daniel Bensimon, et al. (Bensimon)
U.S. Patent No. 5,825,878 Richard Takahashi, et al. (Takahashi)
U.S. Patent No. 5,237,609 to Masatoshi Kimura (Kimura)
Petitioners Voluntary Interrogatory Responses
U.S. Patent No. 6,738,877 to Yamakawa et al. (Yamakawa)
U.S. Patent No. 6,012,145 to Mathers et al. (Mathers)
Curriculum Vitae of Dr. Paul Franzon
iv
Patent 6,968,459
TABLE OF AUTHORITIES
Page(s)
Federal Cases
Cuozzo Speed Techs., LLC v. Lee,
No. 15-446, 579 U.S. ___ (June 20, 2016) ......................................................... 11
In re GPAC,
57 F.3d 1573 (Fed. Cir. 1995) .............................................................................. 4
Intellectual Ventures I, LLC, Intellectual Ventures II, LLC v. Lenovo
Group Ltd., Lenovo (United States) Inc., LenovoEMC Products
USA, LLC, and EMC Corp.,
No. 1:16-cv-10860 (D. Mass) ............................................................................... 2
Intellectual Ventures I, LLC, Intellectual Ventures II, LLC, v. NetApp,
Inc.,
No. 1:16-cv-10868 (D. Mass) ............................................................................... 2
In re Katz Interactive Call Processing Litig.,
639 F.3d 1303 (Fed. Cir. 2011) .......................................................................... 17
Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 2 USPQ2d 1051 (Fed. Cir. 1987) ................................................ 18
Williamson v. Citrix Online, LLC
792 F.3d 1339 (Fed. Cir. 2015) ..............................................................15, 16, 17
Federal Statutes
35 U.S.C. 102(a) ...............................................................................................8, 11
35 U.S.C. 102(b) ............................................................................................passim
35 U.S.C. 103(a) ............................................................................................passim
35 U.S.C. 112 ..................................................................................................15, 17
35 U.S.C. 311 ....................................................................................................3, 10
35 U.S.C. 311319 ................................................................................................ 1
v
Patent 6,968,459
Regulations
37 C.F.R. 42.8 ......................................................................................................... 2
37 C.F.R. 42.8(b)(1) ................................................................................................ 2
37 C.F.R. 42.15(a)................................................................................................... 3
37 C.F.R. 42.100(b) .............................................................................................. 11
37 C.F.R. 42.100 et seq. ........................................................................................ 1
37 C.F.R. 42.103(a)............................................................................................... 3
37 C.F.R. 42.104(a)............................................................................................... 10
77 Fed. Reg. at 48764 .............................................................................................. 11
Other Authorities
M.P.E.P. 2141.03 .................................................................................................... 4
vi
Patent 6,968,459
I.
INTRODUCTION
Petitioner Unified Patents Inc. (Unified) respectfully requests Inter Partes
Review (IPR) of claims 1, 2, 1315, 18, 33, 34, 39, 46, and 48 of U.S. Patent
6,968,459 (the 459 patent, EX1001) assigned to Intellectual Ventures II, LLC
under 35 U.S.C. 311319 and 37 C.F.R. 42.100 et seq. This petition shows
by a preponderance of the evidence that the claims are unpatentable for at least the
multiple reasons presented.
The 459 patent, filed on December 15, 1999, broadly claims restricting
access to data storage devices. More particularly, it claims methods and systems
for operating a data storage device in either full-access or restricted-access mode,
depending on whether the storage device has security information. The 459
specification suggests that this technology prevent[ed] an authorized user from
appropriating sensitive data by simply copying the sensitive data to a removable
storage device such as floppy diskette. EX1006 at 1:2131. But this simple
technology was well known and often described in patents and printed publications
long before the claimed priority date of the 459 patent, and was likewise obvious
to those of ordinary skill in late 1999.
Patent 6,968,459
II.
MANDATORY NOTICES UNDER 37 C.F.R. 42.8

A.
Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

party-in-interest, and further certifies that no other party exercised control or could
exercise control over Unifieds participation in this proceeding, the filing of this
petition, or the conduct of any ensuing trial. In this regard, Unified has submitted
voluntary discovery. See EX1007, Petitioners Voluntary Interrogatory Responses.
B.
Related Matters
Upon information and belief, the 459 patent was asserted in the following
cases:
1. Intellectual Ventures I, LLC, Intellectual Ventures II, LLC v.
Lenovo Group Ltd., Lenovo (United States) Inc., LenovoEMC
Products USA, LLC, and EMC Corp., No. 1:16-cv-10860 (D.
Mass);
2. Intellectual Ventures I, LLC, Intellectual Ventures II, LLC, v.
NetApp, Inc., No. 1:16-cv-10868 (D. Mass).
C.
Lead and Back-Up Counsel, and Service Information
The signature block of this petition designates lead counsel, backup counsel,
and service information for each petitioner. Unified designates P. Andrew Riley
(Reg. No. 66,290) as lead counsel and designates James D. Stein (Reg. No. 63,782)
as backup counsel. Both can be reached at Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, 901 New York Avenue, NW, Washington, D.C. 20001-4413
2
Patent 6,968,459
(phone: 202.408.4000; fax: 202.408.4400). Unified also designates as backup
counsel Jonathan Stroud (Reg. No. 72,518). Petitioner consents to e-mail service at
IV459-IPR@finnegan.com.
III.
FEE PAYMENT
The required fees are submitted under 37 C.F.R. 42.103(a) and 42.15(a).
If any additional fees are due during this proceeding, the Office may charge such
fees to Deposit Account No. 50-6990.
IV.
STATEMENT OF PRECISE RELIEF REQUESTED

A.
Claims for Which Review is Requested
Petitioner respectfully requests inter partes review under 35 U.S.C. 311 of

claims 1, 2, 1315, 18, 33, 34, 39, 46, and 48 of the 459 patent and cancellation of
those claims as unpatentable.
B.
Statutory Grounds of Challenge
Petitioner requests that the Board hold claims 1, 2, 1315, 18, 33, 34, 39, 46,
and 48 unpatentable as follows:
Ground
Proposed Statutory Challenges for the 459 Patent
Claims 1, 13, 14, 33, 39, 46 and 48 are anticipated under

35 U.S.C. 102(b) by U.S. Patent No. 5,533,125 to
Bensimon, et al. (Bensimon).
Claims 2, 15, and 34 are obvious under 35 U.S.C. 103(a)
over Bensimon in view of U.S. Patent No. 5,825,878 to
Takahashi, et al. (Takahashi).
Claim 18 is obvious under 35 U.S.C. 103(a) over U.S.
Patent No. 5,237,609 to Kimura (Kimura) in view of
Exhibit
No(s).
EX1004
EX1004,
EX1005
EX1006,
EX1005
Patent 6,968,459
Takahashi.
Bensimon, Takahashi, and Kimura all qualify as prior art to the 459 patent under
pre-AIA 35 U.S.C. 102(b) because the patents issued more than a year before the
December 15, 1999 priority date of the 459 patent.
C.
The Level of Ordinary Skill in the Art at the Time of the Claimed
Invention
Several factors define the level of ordinary skill in the art. They include (1)
the types of problems encountered in the art; (2) the prior art solutions to those
problems; (3) the rapidity with which innovations are made; (4) the sophistication
of the technology; and (5) the educational level of active workers in the field. See
M.P.E.P. 2141.03 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). The
459 patent was filed on December 15, 1999. At that time, a person having
ordinary skill in the art of secure computer data storage devices (i.e. in the art for
the 459 patent) would have had (i) a B.S. degree in electrical engineering,
computer engineering, computer science, or equivalent training, and (ii)
approximately two years of experience in the design or research of secure
computer data storage devices. See EX1002 (Dr. Franzon decl.) at 32.
Patent 6,968,459
V.
THE 459 PATENT

A.
Overview of the Disclosure
The 459 patent describes a computer 100 that automatically operates in a

secure data storage mode when the computer 100 senses that storage device 151 is
a secure storage device. EX1001 (459 patent) at 2:3033.
EX1001 (459 patent), FIG. 1.

The storage device 151 can be a floppy diskette, a magneto-optical storage
device, an optical disk, a SuperDiskTM diskette, a ZipTM disk, a JazzTM disk, a tape
cartridge, etc. Id. at 3:1013.
5
Patent 6,968,459
In particular, [i]n block 204, the storage manager detects whether storage
device 151 is a secure removable device by attempting to read any devicespecific security information from storage device 151. EX1001 (459 patent) at
5:710. The security information can be a function of a unique identifier retrieved
from an electronic circuit embedded within the removable storage device or a
serial number etched on the storage device during manufacturing. Id. at Abstract.
In another embodiment, the device-specific security information [is] derived from
the unique format information of the removable storage device. Id. at 3:664:1.
For example, the device-specific security information is a function of the lowlevel format information and, therefore, uniquely identifies the underlying media
of storage device 151, such as a hash of the addresses of the bad sectors for
storage device 151. Because it is a function of the physical characteristics of the
actual storage medium within storage device 151, the format information is
inherently unique to each storage device 151. Id. at 4:917.
If the device-specific security information is not successfully read, then the
storage manager proceeds to block 216 and operates computer 100 in a restrictedaccess data storage mode. Id. at 5:1519. If it is successfully read, however, then
the computer 100 operates the storage device in full-access mode. Id. at 6:2833.
Patent 6,968,459
EX1001 (459 patent), FIG. 2.

In full-access mode, both read and write access to the removable storage device are
permitted, and a cryptographic key may be used to encrypt and decrypt the data
stream between the computer and the storage device. Id. at 7:816. In restrictedaccess mode, read-only access is permitted such that the user can read data from
the storage device but cannot write data to the drive. Id. at 7:816.
Patent 6,968,459
B.
Prosecution History
The application was filed on December 15, 1999 and did not claim priority
to any other application. See EX1003 (Pros. history) at 134. Thus, the 459 patent
has an effective filing date of December 15, 1999.
The Examiner opened prosecution in November of 2003, rejecting every one
of the original sixty-seven claims as being either anticipated or obvious in light of
the prior art under 35 U.S.C. 102(a) or 103(a). Id. at 85118. In response,
Applicant cancelled two claims and amended some claims to provide more details
about the two different access modes. Id. at 120140. In February of 2005, the
Examiner responded with a requirement for restriction to one of the two distinct
inventions claimed thereineither (I) the group of claims drawn to controlling
types of access to a storage device based on drive specific and/or user specific
information, or (II) the group of claims drawn to generating a cryptographic key
used to encrypt/decrypt data based on the type of access request made to the
storage device. Id. at 143146.
After the Applicants March 2005 response to the restriction requirement,
electing to proceed with group (I), the Examiner mailed a Notice of Allowance on
May 20, 2005. Id. at 149155. Upon the cancellation of the claims captured within
group (II), the newly allowed claims of group (I) were converted to final claims 1
50. Id. at 157. In the Notice of Allowance, the Examiner declined to identify the
8
Patent 6,968,459
allowable aspects of the claims, and instead merely stated that Claims 17, 918,
2031, 3931, 4560, 66 and 67 are allowed. Id. at 157.
C.
Prior Art Secure Storage Devices
Prior art secure storage devices like

those claimed in the 459 patent were well
known before the filing of the 459 patent.
EX1002 (Dr. Franzon decl.) at 29-30.
For example, U.S. Patent No.
6,738,877
to
Yamakawa
et
al.
(Yamakawa) describes a system where a

host unit 5 supplies a master password to
a drive unit 2, which writes the master
password onto an optical disk 3. EX1008 (Yamakawa) 10:822, FIG. 1
(reproduced right). And, like the device-specific security information of the 459
patent, in the Yamakawa, [t]he master password is provided to limit access to the
optical disk 3. Id. at 8:6566.
Another example of a secure portable storage device like the one in the 459
patents is described in U.S. Patent No. 6,012,145 to Mathers et al. (Mathers).
Mathers describes [a] portable hard disk drive ha[ving] an electrically erasable
programmable read-only-memory (EEPROM) for storing a first password for
9
Patent 6,968,459
allowing a user access to the disk and a random access memory (RAM) for
temporarily storing a password entered by a user. EX1009 (Mathers), Abstract. A
microprocessor compare[s] the user-entered passed with the password stored in
the EEPROM and . . . generate[s] a signal to allow a user access to the disk if a
valid match is found and to prohibit access if there is no match. Id.
VI.
GROUNDS FOR STANDING

Petitioner certifies that the 459 patent is available for IPR and that the
Petitioner is not barred or estopped from requesting IPR challenging the 459
patent on the grounds identified. See 37 C.F.R. 42.104(a). Specifically: (1)
Petitioner is not the owner of the 459 patent; (2) Petitioner is not barred or
estopped from requesting IPR; and (3) Petitioner has not been served with a
complaint alleging infringement of the 459 patent.
VII.
STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH

CLAIM CHALLENGED
A.
Claims for Which Review is Requested
Petitioner respectfully requests review under 35 U.S.C. 311 of claims 1, 2,

1315, 18, 19, 24, 33, 34, 39, 46, and 48 of the 459 patent, and their cancellation
as unpatentable.
B.
Statutory Grounds of Challenge
Claims 2, 5, 15, 18, 19, 24, 34, and 40 are challenged as unpatentable under
35 U.S.C. 103(a). Additionally, claims 1, 13, 14, 33, 39, 46, and 48 are
10
Patent 6,968,459
challenged as unpatentable under 35 U.S.C. 102(a). The claim construction,
reasons for unpatentability, and specific evidence supporting this request are
detailed below.
C.
Claim Construction
A claim in an unexpired patent subject to inter partes review shall be given

its broadest reasonable construction in light of the specification of the patent in
which it appears. 37 C.F.R. 42.100(b); Cuozzo Speed Techs., LLC v. Lee, No.
15-446, 579 U.S. ___ (U.S. 2016). Unified suggests the following constructions are
helpful in assessing the patentability of the claims at issue. Claim terms not
addressed below should be given their plain and ordinary meaning under the
broadest reasonable interpretation standard. 37 C.F.R. 42.100(b); Office Patent
Trial Practice Guide, 77 Fed. Reg. at 48764.
1. Device-Specific Security Information (Challenged Claims
1, 15, 33, and 39)
The above-identified challenged claims recite device-specific security
information. This term should be construed to mean information that is specific
to the storage device and used to secure access to the storage device. EX1002 at
37-40. This construction is consistent with the specification and claims of the
459 patent.
11
Patent 6,968,459
First, the specification explains that the security information is specific to
the device. The security information can be a function of a unique identifier
retrieved from an electronic circuit embedded within the removable storage device
or a serial number etched on the storage device during manufacturing. EX1001 at
Abstract (emphasis added). In another embodiment, the device-specific security
information [is] derived from the unique format information of the removable
storage device. EX1001 (459 patent) at 3:664:1 (emphasis added). For example,
the device-specific security information is a function of the low-level format
information and, therefore, uniquely identifies the underlying media of storage
device 151, such as a hash of the addresses of the bad sectors for storage device
151. Because it is a function of the physical characteristics of the actual storage
medium within storage device 151, the format information is inherently unique to
each storage device 151. Id. at 4:917.
Additionally, the 459 patent teaches that the device-specific security
information is used to secure access to the storage device. In particular, in the 459
patent teaches that computer 100 detects the device-specific security information
on storage device 151 and automatically operates in a full-access data storage
mode. Id. at 4:4749. But [i]f the device-specific security information is not
successfully read, then the storage manager proceeds to block 216 and operates
computer 100 in a restricted-access data storage mode . . . . Id. at 5:1518. Since
12
Patent 6,968,459
the presence or absence of the device-specific security information dictates
whether the storage device 151 operates in full-access or restrict-access mode, it is
used to secure access to the storage device 151. Consistent with this, the claims of
the 459 patent also explain that the device-specific security information is used to
secure access to the storage device 151. See, e.g., EX1001 (459 patent) at claim 1
(reciting that the storage device operates in full-access mode if the storage device
has the device-specific information but operates in a restricted-access mode if it
does not have the information).
Accordingly, device-specific security information should be construed to
mean information that is specific to the storage device and that is used to secure
access to the storage device.
2. Device-Specific Information (Challenged Claim 18) and
User-Specific Information (Challenged Claims 18 and 24)
The above-identified challenged claims recite device-specific information
user-specific security information. These terms should be construed to mean
information specific to the device and information specific to the user,
respectively. EX1002 at 41-43.
Device-specific information is similar to device-specific security
information discussed above, except it lacks the security prefix. Thus, for the
13
Patent 6,968,459
reasons discussed for device-specific security information, the term devicespecific information simply means information specific to the device.
Similarly, the 459 patent explains that the user-specific information is
information specific to a user, such as a password or biometric information such
as input received from a fingerprint scan or retina scan. EX1001 (459 patent) at
4:45; see also id. at 11:17 (claims 2527 reciting that the user-specific
information is a password, biometric information, or digital output from a retina
scanner or a fingerprint scan, respectively).
3. Security Information (Challenged Claim 18)
Challenged claim 18 recites security information. This is similar to the
device-specific security information term discussed above, except that it lacks
the device-specific aspect. So, for the reasons discussed for device-specific
security information, the term security information simply means information
that is used to restrict access. EX1002 at 44.
4. Status Change . . . for the Storage Device (Challenged
Claims 13 and 14)
The above-identified challenged claims recite status change . . . for the
storage device. The broadest reasonable construction of this term includes
insertion or removal of the storage device 151 into/from the media drive 121 of the
computer 100. EX1002 at 45. While the 459 patent specification does not
14
Patent 6,968,459
expressly define the term, it explains that the storage manager performs method
200 anytime a status change is detected for storage device 151, such as when
storage device 151 is inserted into removable media drive 121. EX1001 (459
patent) at 4:5760 (emphasis added). Similarly, the storage manager repeats [the
security process] when a status change is detected for storage device 151, such as
when storage device 151 is removed from removable media drive 121 and a new
storage device 151 is inserted. EX1001 (459 patent) at 6:2428 (emphasis
added). Dependent claim 14 of the 459 patent confirms that the status change
indicates the insertion of the storage device into the computer. Id. at 10:79.
Accordingly, the broadest reasonable construction of status change . . . for
the storage device must include the insertion or removal of the storage device
into/from a media drive.
5. Storage Manager (Challenged Claim 39)
Challenged independent claim 39 recites a storage manager. EX1001
(459 patent) at 12:5. In determining whether a particular limitation should be
construed under 35 U.S.C. 112, 6th paragraph/(f) as means-plus-function
language, the essential inquiry is not merely the presence or absence of the word
means but whether the words of the claim are understood by persons of ordinary
skill in the art to have a sufficiently definite meaning as the name for structure.
Williamson v. Citrix Online, LLC792 F.3d 1339, 1348 (Fed. Cir. 2015). Here,
15
Patent 6,968,459
persons of skill in the art would not have understood storage manager to have a
sufficiently definite meaning as the name for structure, and thus the term may be
construed under 35 U.S.C. 112, 6th paragraph/(f).
Construing a means-plus function claim term is a two-step process. The
court must first identify the claimed function. . . . Then, the court must determine
what structure, if any, disclosed in the specification corresponds to the claimed
function. 792 F.3d 1339, 1351 (Fed. Cir. 2015).
a. Claimed Function
The claim identifies the claimed function as:
selectively configur[ing] the drive to operate in a fullaccess mode of operation or a restricted-access mode of
operation as a function of the device-specific security
information stored on the storage device, wherein in the
full-access mode the drive permits both read and write
access to the storage device, and in the restricted-access
mode the drive permits read access to the storage device
and prevents write access to the storage device.
EX1001 (459 patent) at 12:513.
b. Corresponding Structure
With respect to the structure of claim 39s storage manager, the 459
patent discloses that [m]ethod 200 is described in reference to one or more
software applications 136 executing on computer 100, referred to hereafter as the
16
Patent 6,968,459
storage manager. Id. at 4:4952. Thus, the structure corresponding to the claimed
storage manager is one or more software applications executing on a
computer. EX1002 at 46.
While generally a computer-implemented means-plus-function limitation
is limited to a disclosed algorithm, the Federal Circuit holds that an algorithm is
not required where the limitation does not involve[] [a] specific function that
would need to be implemented by programming a general purpose computer to
convert it into a special purpose computer capable of performing those specified
functions. In re Katz Interactive Call Processing Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011). Instead, if a limitation recites functions [that] can be achieved by
any general purpose computer without special programming, it is not necessary
to disclose more structure than [a] general purpose processor that performs those
functions. Id. Here, the functions of claim 39s storage manager could be
implemented by any general-purpose computer that performs those functions.
Thus, one or more software applications executing on a computer is sufficient
structure. Accordingly, storage manager should be construed to mean one or
more software applications executing on a computer.
6. Drive (Challenged Claim 39)
Challenged independent claim 39 recites a drive. EX1001 (459 patent) at
12:2. This term need not be construed under 35 U.S.C. 112, 6th paragraph,
17
Patent 6,968,459
because it would be understood by persons of ordinary skill in the art to have a
sufficiently definite meaning as the name for structure. Williamson 792 F.3d
1339, 1348 (Fed. Cir. 2015). For example, one of ordinary skill in the art would
readily identify the claimed drive as a floppy drive, a magneto-optical drive, a
CD-ROM drive, a SuperDiskTM drive, a removable-cartridge drive such as a ZipTM
drive, or even a tape drive, EX1001 (459 patent) at 3:1517, or the like. Further
construction of drive is unnecessary. EX1002 at 47.
VIII.
CLAIMS 1, 2, 1315, 33, 34, 39, 46 AND 48 OF THE 459 PATENT

ARE UNPATENTABLE
A. GROUND 1: Bensimon Anticipates Claims 1, 13, 14, 33, 39,
and 48 of the 459 Patent Under 35 U.S.C. 102(b)
46,
A claim is anticipated if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). Bensimon is directed to a removable computer
security device. EX1004, Title. As explained below, Bensimon discloses each
element of claims 1, 10, 13, 14, 33, 39, 46, 47, and 48 of the 459 patent and
therefore anticipates these claims.
18
Patent 6,968,459
1.
Overview of Bensimon
U.S. Patent 5,533,125 to Bensimon et al. (EX1004, Bensimon) issued on

July 2, 1996. The 459 patent application was filed on December 15, 1999, so
Bensimon is prior art under at least pre-AIA 35 U.S.C. 102(b).
Bensimon discloses [a]n intelligent removable information storage device
(100), for coupling to a host microcomputer system (10). EX1004, Abstract. The
intelligent removable information storage device 100 has a storage medium (or
media) 102 for storing information, such as an IC memory or a magnetic disk.
EX1004 (Bensimon) at 4:4348.
EX1004, FIG. 1 (annotation added)
EX1004, FIG. 3 (annotation added).
Bensimons storage device 100 stores a password and a password-enabling

flag in its onboard storage media 102. Id. at 6:3537 (In a preferred embodiment,
19
Patent 6,968,459
the password and a password enabling flag are stored in the media 102 itself, along
with the protected data, rather than with the control electronics.). Generally:
[t]here are two classes of passwords: (1) Write protection (read-only);
and (2) Read/Write protection. In the case of write protection
passwords, the device 100 is fully operational, with the exception that
any write or format operations are disabled. In the read/write
protection mode, the device 100 is rendered useless to those without
knowledge of the password.
EX1004 (Bensimon) at 6:1319. Thus, the owner of a pc card (e.g., card 100)
would insert the pc card 100 into the port 14 in the computer 10 (shown in FIG. 1)
to use the card 100. Id. at 5:3335. After the storage device 100 or PC card is
inserted, any [h]ost systems that are password aware may look at this data field
prior to attempting access, and determine whether the password is required to be
issued to the drive. Id. at 6:3032 (emphasis added).
2.
Independent Claim 1
Independent claim 1 of the 459 patent recites a simple method comprising

three elements. The first involves sensing whether a storage device has stored
device-specific security information. If the storage device has the information, then
it operates in full-access mode, thus permitting reading and writing. Alternatively,
if the information is not present, then the storage device operates in a restricted-
20
Patent 6,968,459
access mode, where write-access is prevented. EX1001 (459 patent) at 9:1528.
Bensimon discloses all three elements.
a. A method comprising: sensing whether a storage
device has device-specific security information stored
thereon
Bensimon discloses a storage device 100 that corresponds to the claimed
storage device. In particular, Bensimon describes an intelligent removable
information storage device 100 that has a storage medium (or media) 102 for
storing information, such as an IC memory or a magnetic disk. EX1004
(Bensimon) at 4:4348. Bensimons storage device is intelligent because
[storage] device 100 also includes a media control logic circuit 102, and a local
processor 106. Id. at 4:4850. The storage device 100 can be a PC card or
memory card, such as a PCMCIA-ATA card. Id. at 5:1618. Bensimon
sometimes refers to the storage device 100 as a PC card. See, e.g., Id. at 5:3233,
21
Patent 6,968,459
FIG. 3 (PC Card 100). Bensimons figures 1 and 3 show the storage device.
EX1004, FIG. 1 (annotation added)
EX1004, FIG. 3 (annotation added).
Bensimons storage device stores a password and a password-enabling flag

in its onboard storage media 102. Id. at 6:3537 (In a preferred embodiment, the
password and a password enabling flag are stored in the media 102 itself, along
with the protected data, rather than with the control electronics.) The password
and password-enabling flag, alone or in combination, disclose the claimed devicespecific security information stored thereon. EX1002 at 52-60.
As explained above in Section VII.C.1, device-specific security
information refers to information that is specific to the storage device and that is
used to secure access to the storage device. The password and password-enabling
flag of Bensimon meet this construction.
Regarding the password, Bensimon teaches that storage device 100 . . .
include[s] a password security feature at the device level, and that [p]assword
security at the device level provides an advantage over system-level password
security in that a stolen storage device cannot be used in any computer system
unless the thief also knows the password. EX1004 (Bensimon) at 4:5056. The
password also defines the mode of operation for Bensimons storage device 100. In
particular, [t]here are two classes of passwords: (1) Write protection (read-only);
and (2) Read/Write protection. In the case of write protection passwords, the
22
Patent 6,968,459
device 100 is fully operational, with the exception that any write or format
operations are disabled. In the read/write protection mode, the device 100 is
rendered useless to those without knowledge of the password. Id. at 6:1319. So,
depending on the type of password stored on Bensimon storage device 100, the
device operates in different security modes. Thus, the password is used to secure
access to the storage device.
Bensimon also teaches passwords that are unique or specific to the storage
device 100:
To indicate that card 100 is password protected, a unique
string of characters is returned from the card 100 to the
computer 10 (within the ID DRIVE information block).
This provides a standard method for the computer system
10 to determine whether it must supply a password (via
the password command) to continue operation with the
storage device.
EX1004 (Bensimon) at 6:230 (emphasis added). Bensimon also teaches that the
password can be part of the electronics instead of the media on the storage
device 100 itself, but that this is less secure because the electronics can be
switched to gain access to the media. The electronics and the media are easy to
separate as a result of the manufacturing process. Id. at 6:4246. Thus,
Bensimons password is specific to the storage device and is used to secure access
23
Patent 6,968,459
to the storage device, and thus satisfies the claimed device-specific security
information.
The password-enabling flag of Bensimon alternatively or additionally meets
this aspect of claim 1. In particular, when the password-enabling flag is stored on
Bensimons storage device 100, it places the storage device in a password
protected mode and make[s] the card 100 password protected. EX1004
(Bensimon) at 5:3436. Thus, Benimons password-enabling is information that is
specific to the storage device and that is used to secure access to the storage
device, like the claimed device-specific security information.
Finally, Bensimon teaches sensing that the storage device 100 has the
password and/or password-enabling flag, as recited in claim 1. That is, sensing that
the password and flag are stored on the storage device 100. Specifically, the
owner of a pc card (e.g., card 100) would insert the pc card 100 into the port 14 in
the computer 10 (shown in FIG. 1) to use the card 100. Id. at 5:3335. After the
storage device 100 or PC card is inserted, [h]ost systems that are password aware
may look at this data field prior to attempting access, and determine whether the
password is required to be issued to the drive. Id. at 6:3032 (emphasis added). In
one embodiment, the password is issued to the device 100 via system prompt of
the user. Id. at 6:3334. By looking at the storage device 100 to determine
whether it has the password/password-enabling flag data field, the host computer
24
Patent 6,968,459
sens[es] whether a storage device has device-specific security information stored
thereon, as recited in claim 1.
Bensimon also discloses the claimed sensing by the storage device 100
examining the password entered by the user to make sure it matches the password
on the storage device 100. In particular, [w]hen a user enters the Password-Send
command into the computer 10 it transfers the password string to the device 100.
The device 100 compares this string with its recorded string (if password
protection been previously invoked) and enables normal operation if the password
is valid. EX1004 (Bensimon) at 5:6567 (emphasis added). And if the system
senses that the storage device 100 is not password-enabled (i.e., secure) based on
the absence of the password-enabling flag at the outset, it does not try to perform a
password comparison. Id. at 6:14 (It does not compare passwords if password
security is not enabled.).
Accordingly, for the reasons above, Bensimon discloses a method
comprising sensing whether a storage device has device-specific security
information stored thereon, as claimed. EX1002 at 52-60.
25
Patent 6,968,459
b. operating a computer in a full-access mode when the
storage device has the device-specific security
information, wherein in the full-access mode the
computer permits both read and write access to the
storage device
As discussed in the previous section, Bensimon states that [t]here are two
classes of passwords: (1) Write protection (read-only); and (2) Read/Write
protection. Id. at 6:1314 (emphasis added). The above step of claim 1 is met in a
situation where Bensimons storage device 100 has the password-enabling flag and
the read/write password as the device-specific security information. EX1002 at
61. In this case, if the user correctly enters the read/write password on the storage
device 100 at the comparison step, the user is given full access to the storage
device 100 (i.e., both read and write access). See EX1004 (Bensimon) at 6:1329.
Thus, Bensimon discloses operating a computer in a full-access mode when the
storage device has the device-specific security information, wherein in the fullaccess mode the computer permits both read and write access to the storage
device. EX1001 (459 patent) at 9:1923.
26
Patent 6,968,459
c. operating the computer in a restricted-access mode
when the storage device does not have the devicespecific security information, wherein in the
restricted-access mode the computer permits read
access to the storage device and prevents write access
to the storage device
As explained above, in Bensimon, [t]here are two classes of passwords: (1)
Write protection (read-only); and (2) Read/Write protection. EX1004 (Bensimon)
at 6:1314 (emphasis added). The above step of claim 1 is met in a situation where
Bensimons storage device 100 does not have the read-write password as devicespecific security information but instead has the write-only password. In this case,
if the user correctly enters the write-only password on the storage device 100 at the
comparison step, the user is given only write access to the storage device 100.
See Id. at 6:1329. Thus, Bensimon discloses operating the computer in a
restricted-access mode when the storage device does not have the device-specific
security information, wherein in the restricted-access mode the computer permits
read access to the storage device and prevents write access to the storage device.
EX1002 at 62-63.
3.
Dependent Claims 13 and 14
Claim 13 depends from claim 1 and recites that sensing the storage device
is performed when a status change is detected for the storage device. EX1001
(459 patent) at 10:46. Claim 14 depends from claim 13 and adds that the status
27
Patent 6,968,459
change indicates the insertion of the storage device into the computer. Id. at 79.
As explained above, Bensimon discloses the features of claim 1. Moreover,
Bensimon discloses the additional features of claims 13 and 14. EX1002 at 6465.
As explained above in Section VIIC.4, status change includes the 459
patents example the inserting or removing a storage device into/from a media
drive. Bensimon discloses that the sensing (i.e., determining whether the storage
device 100 contains a password and password enabling flag, a comparing the
password to the password entered by the user) occurs when the user inserts the
storage device 100 into a host computer 100. Specifically, Bensimon discloses that
[o]perationally, the owner of a pc card (e.g., card 100) would insert the pc card
100 into the port 14 in the computer 10 (shown in FIG. 1) to use the card 100.
EX1004 (Bensimon) at 5:3234 (emphasis added). Upon insertion of the pc card
100 into the computer 10, [h]ost systems that are password aware may look at this
data field prior to attempting access, and determine whether the password is
required to be issued to the drive. Preferably, this issuance will be accomplished
via system prompt of the user. EX1004 (Bensimon) at 6:3034.
Thus, Bensimon teaches the additional features of claims 13 and 14.
28
Patent 6,968,459
4.
Independent Claim 33
Independent claim 33 of the 459 patent is identical in substance to

independent claim 1, but whereas claim 1 is directed to a method, independent
claim 33 is couched as [a] computer-readable medium having computerexecutable instructions for performing that identical method recited in claim 1.
Compare EX1001 (459 patent) at 9:1628 with id. at 11:3245. Bensimons
computer 10 has such a computer-readable medium: read-only memory (ROM) 64
and/or random-access memory (RAM) 38, 65-67:
29
Patent 6,968,459
EX1006, FIGS. 2B, 2C; see EX1006 at 3:9-4:13. Additionally, Bensimon teaches
that computer 10 has a system processor 32 that executes instructions stored in the
ROM 64 and/or RAM 38, 65-67 to perform functions of the computer 10. See
EX1006 at 3:9-4:13. Moreover, Bensimon teaches that microcomputer system 10
. . . embod[ies] the present invention, EX1004 at 2:63-64, by interacting with the
storage device 100 to perform the method discussed above for claim 1, see
EX1004 at 5:32-6:60. Thus, one of ordinary skill in the art would understand that
the ROM and/or RAM of Bensimons computer 10 corresponds to the claimed
computer-readable
medium
having
computer-executable
instructions
performing the same method recited in claim 1. EX1002 at 66-67.

30
for
Patent 6,968,459
Bensimon Accordingly, Bensimon anticipates claim 33.
5.
Independent claim 39 of the 459 patent is virtually identical in substance to

independent claim 1. But whereas claim 1 is directed to a method, independent
claim 39 is directed to a computer that has a drive and a storage manager
that performs aspects of claim 1s method. Compare EX1001 (459 patent) at
12:113 with id. at 11:3245. Bensimon discloses such a computercomputer 10.
As shown in FIG. 1 of
Bensimon,
reproduced
right,
the
computer 10 has a drive or a slot 14

for a personal computer card (or,
simply, a pc card) that receives
storage
device
100.
EX1004
(Bensimon) at 3:12. Thus, the

owner of a pc card (e.g., card 100)
would insert the pc card 100 into the port 14 in the computer 10 (shown in FIG. 1)
to use the card 100. Id. at 5:3335. As discussed in Section VIII.A.2.a for claim 1,
Bensimons pc card 100 is a data storage device having device-specific security
information stored thereon, as recited in claim 39.
31
Patent 6,968,459
Moreover, Bensimons computer 10 has the claimed storage manager. As
discussed above in Section VII.C.5, storage manager refers to one or more
software applications executing on a computer. In particular, Bensimon teaches
that computer 10 has [a] system processor 32, which comprises a microprocessor,
connected by a high speed central processing unit (CPU) local bus 34, through a
bus control timing unit 35, to a memory control unit 36 which is further connected
to a volatile random access memory (RAM) 38. EX1004 (Bensimon) at 3:1318.
Additionally, Bensimon teaches the computer 10s system processor 32 executes
instructions stored in the ROM 64 and/or RAM 38, 65-67 to perform functions of
the computer 10, and that the computer 10 interacts with the storage device 100 to
perform the security functions. See EX1006 at 3:9-4:13, 2:63-64, 5:32-6:60. Thus,
one of ordinary skill in the art would understand that Bensimon discloses one or
more software applications executing on the computer 10 to perform the method
discussed above. EX1002 at 68-70.
Accordingly, Bensimon anticipates claim 39.
6.
Dependent Claims 46 and 48
Claim 46 depends from claim 39 and recites that the storage device is a
removable storage medium. EX1001 at 12:42-43. Claim 48 also depends from
claim 39 and adds that the storage device has a disk-shaped storage medium.
Id.at 12:47-48. Additionally, as explained in the previous section, Bensimon
32
Patent 6,968,459
discloses the features of claim 39. Further, Bensimon teaches that storage device
100 is an intelligent removable information storage device 100. EX1004 at 4:4445 (emphasis added). Specifically, the storage device 100 is a so-called personal
computer card (or simply, pc card) made in accordance with the standard
established by the Personal Computer Memory Card International Association
(PCMCIA), which are used in substantially the same way as memory diskettes,
which removable. Id. at 1:57-66 (emphases added). Bensimon also teaches that the
storage medium 102 on the storage device 100 can be a magnetic disk, which is
by definition a disk-shaped medium. Accordingly, Bensimon discloses that the
storage device is a removable storage medium as recited by claim 46 or has a
disk-shaped medium as recited by claim 48. EX1002 at 71-72.
Accordingly, Bensimon anticipates claims 1, 13, 14, 33, 39, 46, and 48 of the
459 patent, and these claims should be canceled.
B.
GROUND 2: Bensimon in View of Takahashi Renders Obvious

Claims 2, 15, and 34 Obvious Under 35 U.S.C. 103(a)
As discussed below, Bensimon in view of Takahashi renders obvious the

subject matter of claims 2, 15, and 34 of the 459 patent.
1. Overview of Takahashi
Takahashi is U.S. Patent No. 5,825,878, issued October 20, 1998. It is
therefore prior art to the 459 patent under at least 35 U.S.C. 102(b).
33
Patent 6,968,459
Takahashi is directed to a system that improves the security of data written
from a host system to an external memory device or read from the external
memory to the host system. See, e.g., EX1005 (Takahashi) at 1:57, Abstract.
Takahashi observes that, if this data is encrypted, it prevent[s] unauthorized
parties from determining instructions or data stored in the memory by reading out
the information and then utilizing the information so that unauthorized third
parties are not able to use it unless they can obtain access to the unencrypted
firmware which is handled by the microprocessor. EX1005 (Takahashi) at 1:7
14. To this end, Takahashi discloses [a] secure embedded memory management
unit for a microprocessor [that] is used for encrypted instruction and data transfer
from an external memory. Id. at Abstract.
In Takahashis system, [p]hysical security is obtained by . . . an
encryption/decryption logic. Id. at Abstract. When data is read from the external
memory 11 to the host in Takahashi, a secure memory management unit (MMU)
on the chip 10 . . . read[s] encrypted external program code instructions and data
stored in the external memory 11 . . . decrypt[s] and store[s] the information in a
secure random access memory (RAM) with an internal microprocessor CPU core
12 then utilizing the information, which is stored in the secure internal RAM. Id.
at 2:2639 (emphasis added). Likewise, when Takahashi writes data from the host
to the external memory 11, the MMU moves the data from the SRAM memory 18
34
Patent 6,968,459
to the encryption core 20 and then to the external memory 11. Id. at 2:673:5.
In this manner, the new encrypted instruction or data is stored in the external
memory 11. Id. at 6:2335. Thus, in the Takahashi technique, [a]t all times,
whether information is being read from the external memory 11 or written to the
external memory 11, the information on this bus is encrypted. Id. at 6:3841
(emphasis added); see also id. at 14:2527 (claiming [a] method for securely
decrypting and encrypting information obtained from and supplied to an external
memory).
FIGS. 2 and 3 of Takahashi show the encrypted reading and writing
processes, respectively:
35
Patent 6,968,459
EX1005 (Takahashi), FIGS. 2, 3.

2.
Dependent Claim 2
Claim 2 of the 459 patent depends from claim 1 and recites that operating
the computer in full-access mode includes: (1) encrypting digital data to be written
to the storage device from the computer, and (2) decrypting digital data read from
the storage device by the computer. EX1001 (459 patent) at 9:2936. As
explained above, Bensimon discloses the features of claim 1. See Section VIII.A.2.
Bensimon, however, does not expressly teach encrypting data to be written to the
36
Patent 6,968,459
storage device 100 and descripting data read from the storage device 100, as
recited by claim.
a. Takahashi Discloses the Features of Claim 2
As discussed above in the overview, Takahashi discloses a system for
securely writing data to, and reading data from, an external memory device. In
Takahashi, [a]t all times, whether information is being read from the external
memory 11 or written to the external memory 11, the information on this bus is
encrypted. EX1005 (Takahashi) at 6:3841 (emphasis added); see also id. at
14:2527 (claiming [a] method for securely decrypting and encrypting
information obtained from and supplied to an external memory). Specifically,
when Takahashi reads data from the external memory to the host, a secure
memory management unit (MMU) on the chip 10 . . . read[s] encrypted external
program code instructions and data stored in the external memory 11 . . .
decrypt[s] and store[s] the information in a secure random access memory (RAM)
with an internal microprocessor CPU core 12 then utilizing the information, which
is stored in the secure internal RAM. Id. at 2:2639 (emphasis added). Likewise,
when Takahashi writes data from the host to the external memory, the MMU
moves the data from the SRAM memory 18 to the encryption core 20 and then
to the external memory 11. Id. at 2:673:5.
37
Patent 6,968,459
Thus, Takahashi discloses (1) encrypting digital data to be written to the
storage device from the computer, and (2) decrypting digital data read from the
storage device by the computer, as recited by claim 2. EX1002 at 77-79.
b. Bensimon and Takahashi Provide Reasons to
Combine Their Disclosures
Bensimon and Takahashi provide reasons to combine Takahashis technique
of encrypting digital data written to the storage device from the computer and
decrypting digital data read from the storage device by the computer with
Bensimons secure storage device 100. EX1002 at 80-81. For example,
Bensimon identifies a need to secure data from unauthorized users, particularly in
systems where removable storage devices are involved:
Protection from unauthorized users may be required in
cases where confidential or classified information is
handled by automated information systems, such as
personal computer systems. The need for security
becomes acute in systems using small removable
information storage devices, such as pc cards, because of
their value. . . Previously, small removable memory
devices (e.g., diskettes and CD ROMs) typically used
physical means of security such as write-prevent tabs or
switches and locks. . . However, in the cases of small
removable storage devices these security measures may
38
Patent 6,968,459
be inadequate because of the attractiveness for theft of
these devices.
See EX1004 (Bensimon) at 2:926 (emphases added). In response, Bensimons
system has a password security feature that would prevent the unauthorized
access to the information stored in these devices and the use of the devices
themselves. Id. at 3:38. In particular, Bensimons storage device 100 has a
password security feature at the device level so that a stolen storage device
cannot be used in any computer system unless the thief also knows the password.
Id. at 4:5056. Thus, one of ordinary skill in the art reading Bensimon would have
looked to ways to improve the security of data read from and written to removable
external storage devices. EX1002 (Dr. Franzon Decl.), 80.
And Takahashis technique would provide another way to secure data on an
external storage device beyond Bensimons technique. EX1002 at 81. Takahashi
observes that, when writing data from a host system to an external memory device
or when reading data from the external memory to the host system, if this data is
encrypted, it prevent[s] unauthorized parties from determining instructions or data
stored in the memory by reading out the information and then utilizing the
information so that unauthorized third parties are not able to use it unless they
can obtain access to the unencrypted firmware which is handled by the
microprocessor. EX1005 (Takahashi) at 1:714. Thus, one of ordinary skill would
39
Patent 6,968,459
have recognized that, by adding Takahashis technique to Bensimons system, the
unauthorized user would not only have to know the password for the device as
described by Bensimon, but would also need to have the particular encryption
firmware as described by Takahashi. EX1002 at 81.
Additionally, Takahashis technique is not superfluous to Bensimons. Id. at
82. This is because Bensimons technique focuses on securing the initial access to
the storage device 100. Id. But if an unauthorized user was able to access
Bensimons storage device despite this initial physical security, the data would
be compromised. Takahashi, on the other hand, focuses on securing the data itself
written to or read from the storage device. Id. So even though the unauthorized
user had access to Bensimons storage device 100, the unauthorized user would
have to overcome another encryption hurdle to use the data. Id. One of ordinary
skill in the art therefore would have sought to add Takahashis technique to
Bensimons system as described above. Id.
Accordingly, Bensimon in view of Takahashi effectively renders the subject
matter of claim 2 obvious.
3.
Independent claim 15 of the 459 patent recites a method that is substantially

similar to the subject matter of dependent claim 2 (which depends from
independent claim 1). Compare EX1001 (459 patent) at 10:1027 with id. at
40
Patent 6,968,459
9:1639. The unpatentability of claim 2 in view of Bensimon and Takahashi was
addressed in Section VIII.B.2 above, and independent claim 15 is unpatentable for
the same reasons.
In particular, like claim 1, claim 15 recites sensing whether a storage device
has device-specific security information stored thereon. Claim 15 also recites
providing full-access to the storage device when the storage device has the
device-specific security information, which is similar to claim 1s operating a
computer in a full-access mode when the storage device has the device-specific
security information, wherein in the full-access mode the computer permits both
read and write access to the storage device. Claim 15 also recites providing
restricted-access to the storage device when the storage device does not store the
device-specific security information by preventing the digital data from being
written to the storage device during the write access, which is similar to claim 1s
operating the computer in a restricted-access mode when the storage device does
not have the device-specific security information, wherein in the restricted-access
mode the computer permits read access to the storage device and prevents write
access to the storage device. This feature was addressed above in Section
VIII.A.2.e.
Claim 15 also recites encrypting digital data using the security information
during a write access to write the digital data to the storage device and
41
Patent 6,968,459
decrypting digital data using the security information during a read access to read
the digital data from the storage device. These are substantively similar to claim
2s encrypting digital data to be written to the storage device from the computer;
and decrypting digital data read from the storage device by the computer. These
features were addressed above in connection with claim 2. See Section VIII.B.2.
Claim 15 also adds that the encryption and decryption us[es] the security
information. It would have been obvious to encrypt the outbound data (i.e., the
data written to the storage device) in Takahashi using the security information of
Bensimon. Because Bensimons security information is made up of a password
already shared by the storage device 100 and the host computer 10, one of ordinary
skill would have found it obvious to use that same security information to encrypt
the outbound data being written to the memory card, as taught in Takahashi. In this
manner, the host computer 10, having the password used for the encryption, would
likewise be able to decrypt information read from the card. EX1002 at 82-85.
Accordingly, Bensimon in view of Takahashi renders claim 15 of the 459
patent obvious.
4.
Dependent Claim 34
Claim 34 depends from claim 33 and recites two additional elements:

encrypting digital data to be written to the storage drive; and decrypting digital
data read from the storage device. EX1001 (459 patent) at 11:4651. Thus, claim
42
Patent 6,968,459
34 is substantively virtually identical to independent claim 15, except that claim 15
is directed to a method and claim 34 is directed to [a] computer-readable medium
having computer-executable instructions for performing that method. Compare id.
at 11:3252 with id. at 10:1027. And as explained above for claim 33, Bensimon
discloses the computer-readable medium. See Section VIII.A.4. Accordingly,
Bensimon in view of Takahashi renders claim 34 of the 459 patent obvious.
EX1002 at 86.
Accordingly, for the reasons above, Bensimon in view of Takahashi renders
obvious the subject matter of claims 2, 5, 15, and 34 of the 459 patent, and these
claims should be canceled.
C.
GROUND 3: Kimura in View of Takahashi Renders Obvious

Independent Claim 18 Under 35 U.S.C. 103(a)
As discussed below, Bensimon in view of Takahashi renders obvious the

subject matter of independent claim 18 of the 459 patent.
1.
Overview of Kimura
Kimura is U.S. Patent No. 5,237,609, issued on August 17, 1993. Kimura is
prior art to the 459 patent under at least 35 U.S.C. 102(b) because it issued more
than a year before the 459 patents earliest claimed priority date.
Kimura describes [a] portable information memory card and a system for
utilizing such card which provides security without the necessity for an onboard
43
Patent 6,968,459
microprocessor. EX1006 (Kimura) at 18:4043. In Kimura a portable memory
card 100 is into an external terminal 200 that has a slot or other close fitting
receptacle into which the memory device 100 is inserted and which will cause
mating of electrical contacts between the portable card 100 and the external
terminal 200. Id. at 5:4953.
EX1006, FIG. 1.
Figure 6 of Kimura depicts a flowchart that illustrates the operation of the
system:
44
Patent 6,968,459
EX1006, FIG. 6.
Kimura discloses that after the insertion of the portable memory card 100
into the external terminal 200, as depicted in step 300, circuitry on the card 100
detects its insertion into the terminal 200. Specifically, a check is made to
determine that the terminal power is on in step 301, and when such power is on, an
appropriate supply of power is coupled to the external power supply bus 111 of the
45
Patent 6,968,459
portable card. As noted in connection with describing the respective embodiments,
that is sensed by internal circuitry on the card to couple power to the standby nonpowered circuit elements and also to provide a first enabling signal to the memory
selection circuit. EX1006 at 16:6017:3.
Then Kimura performs the security check. In step 302, enciphered external
information stored in non-volatile security memory 50 on the card 100 is read into
the external terminal 200. Id. at 17:47. The security check determines from the
deciphered information whether the security check operation should use a PIN keyin procedure. Id. at 17:1316. If so, a PIN input is entered by the user. Id. at 17:16
19.
EX1006 (Kimura), FIG. 6 (annotation added).

In step 304, the system determines from the PIN number and the
deciphered information the particular addresses in the internal identification
46
Patent 6,968,459
memory at which the bytes of the assigned security code is stored and read[s] out
the bytes of the identification code assigned to the particular card in question.
EX1006 at 17:2334. The security code of the card 100 is written into one side 60b
of a comparator 60 on the card. Id. at 17:3541.
Then the security check performs a step 306 to decipher from the
information previously read out from the external identification information
memory the identification code assigned to the card. Id. at 17:4347. This security
code can be deciphered from two pieces of information: (1) a key read out from the
security card and (2) a PIN entered by the user. Id. at 17:4753.
EX1006 (Kimura), FIG. 6 (annotations added).

The deciphered security code is also written into the comparator 60, on the other
side 60a. Id. at 18:36.
47
Patent 6,968,459
EX1006 (Kimura), FIG. 5 (annotations added).

Lastly, [a] step 308 then performs a comparison between the internal and
external codes stored in the sections 60a, 60b. A test 309 is performed to determine
if those codes match. If they do under a step 310, access to the main memory is
allowed. If a match is not detected, the step 311 indicates that access to the main
memory is refused. EX1006 at 18:812.
2.
Independent claim 18 of the 459 patent recites a simple method for

controlling access to a storage device, comprising four elements. First, a storage
device is detected within a storage drive. EX1001 (459 patent) at 10:3638. Then
48
Patent 6,968,459
it is sensed whether the storage device has security information. Id. at 10:3940.
The security information is made up of a combination of device-specific
information and user-specific information. Id. at 10:4042. If the storage device
has the information, then the storage drive permits write access to the storage
device, writing encrypted data to the storage device. Id. at 10:4649. But if the
storage device does not have the information, write access is prevented. Id. at
10:4345. As discussed below, Kimura in view of Takahashi render obvious the
subject matter of claim 18 of the 459 patent. EX1002 at 95-119.
c. A method for controlling access to a storage device
Kimura discloses a portable memory device in which the on-board memory
is accessible to the outside only after completion of a security check which
matches information stored in a separate section of memory on the card. EX1006
(Kimura) at 3:6468. This security check procedure is initiated upon insertion of
[the] portable memory card into an appropriate terminal by performance of step
300. Id. at 16:6063. Kimuras security check corresponds to the claimed
method for controlling access to a storage device, as recited in claim 18. EX1002
at 96.
d. detecting a storage device within a storage drive
The access control method of claim 18 of the 459 patent includes detecting
a storage device within a storage drive. EX1001 (459 patent) at 10:38. Kimuras
49
Patent 6,968,459
portable memory card 100 corresponds to the claimed storage device. EX1002 at
97. Kimura teaches that the external terminal 200 has a slot or other close fitting
receptacle into which the memory device 100 is inserted and which will cause
mating of electrical contacts between the portable card 100 and the external
terminal 200. EX1006 (Kimura) at 5:4953. Kimuras receptacle corresponds to
the claimed storage drive.
EX1006 (Kimura), FIG. 6.

Kimura teaches that the insertion of the card 100 into the terminal 200
cause[s] mating of electrical contacts between the portable card 100 and the
external terminal 200, Id. at 5:5153, and the completed circuit on the card 100
senses it has been inserted into the terminal 200:
When a card 100 is inserted into an appropriate terminal
200, the interface bus 140 provides continuity between
the data, address and control lines between the terminal
and the memory unit. In addition, the terminal 200
provides power to the internal power bus 111 of the
memory unit 100. The internal power supply and sensing
circuit 2 senses the application of power and applies DC
power to the internal circuit elements as well as an initial
enabling signal to memory selection circuit 5a. Having
50
Patent 6,968,459
thus established the lines of communication, the terminal
is then in condition to initiate a security check function.
EX1006 (Kimura) at 13:3647. Accordingly, Kimura discloses detecting a storage
device within a storage drive, as recited in claim 18. EX1002 at 97-98.
e. sensing whether the storage device has security
information
The method of claim 18 of the 459 patent includes sensing whether the
storage device has security information. EX1001 (459 patent) at 10:3940.
Kimura discloses comparator circuit 60 on the card 100:
EX1006 (Kimura), FIG. 5 (annotation added showing comparator).
51
Patent 6,968,459
As explained below, Kimuras comparator circuit 60 performs the sensing of
claim 18 by comparing a security code assigned to the card 100 with another
security code deciphered from external information. The security code of
Kimuras card 100 is the claimed security information. EX1002 at 99-108.
In particular, during
Kimuras security check, the
external terminal 200 reads
from the security memory 50
on
the
particular
card
100
security
the
code
assigned to the card in

question. That information is
clocked into the internal
information latch 60b where
it is held for comparison
with external information.
EX1006 (Kimura) at 14:12
21; see also id. at 17:2737
(the external terminal . . . addresses the internal identification information
memory [50] to read out . . . the identification code assigned to the particular card
52
Patent 6,968,459
in question. That information is read out onto the internal bus which is maintained
internal to the card and is coupled only to the internal latch portion 60b of the
comparator circuit). That is, in Kimura, the external terminal 200 reads from the
security memory 50 of the card 100 a security code assigned to the card 100
the claimed security informationand the code is written to one side 60b of
comparator 60 for a subsequent comparisonthe claimed sensing. This shown
in step 305 of Kimuras FIG. 6, reproduced above (previous page).
53
Patent 6,968,459
Later
in
Kimuras
security check, the external

terminal 200 deciphers
another version of that same
security code of the card
100 from other external
information read from the
security memory 50. In
particular, in a step 302[,]
...
enciphered
external
information stored in nonvolatile security memory

[50] is read into the external
terminal [200]. EX1006 at
17:47 (Kimura). Then, in step 306, the external terminal 200 deciphers that
54
Patent 6,968,459
external information to obtain the deciphered version of the cards security code
and, in step 307, the security code is written to the other side 60a of the comparator
60. EX1006 (Kimura) at 17:4347 (the external terminal then performs a step 306
to decipher from the information previously read out from the external
identification information memory the identification code assigned to the card),
18:36
(Having
deciphered
the
identification code in the

step 306, step 307 is then
performed to write that
deciphered code into the
comparator
circuit,
namely, into the external

storage section 60a of
the comparator circuit).
These
steps
are
annotated above in FIG.

6 of Kimura (previous
page).
55
Patent 6,968,459
Finally, after writing the actual security code of the card 100 to one side 60b
of the comparator 60 and the deciphered version of the security code to the other
side 60a of the comparator 60, [a] step 308 then performs a comparison between
the . . . codes stored in the sections 60a, 60b. A test 309 is performed to determine
if those codes match. EX1006 (Kimura) at 18:69. The comparison is highlighted
in FIG. 6 of Kimura, reproduced above (previous page).
By comparing the deciphered security code to the security code on the
card 100, Kimura sens[es] whether the storage device has security information,
as claimed. EX1002 at 99.
As
Section
discussed
VII.C.3,
above
in
security
information means information

that is used to restrict access.
Kimuras security code meets this construction because it is used to restrict access
to the card 100. In particular, Kimura teaches that if the comparison indicates that
the two codes match, access to the main memory [of the card 100] is allowed.
[But] [i]f a match is not detected, the step 311 indicates that access to the main
memory is refused. EX1006 (Kimura) at 18:812.
Accordingly, Kimura discloses sensing whether the storage device has
security information, as recited in claim 18.
56
Patent 6,968,459
f. the security information generated from a
combination of device-specific information associated
with the storage device and user-specific information
associated with a user
Claim 18 further recites that the security information is generated from a
combination of device-specific information associated with the storage device and
user-specific information associated with a user. EX1001 (459 patent) at 10:40
42.
In
particular,
as
explained below, Kimuras

security code is generated
from a combination of (1) a
key and (2) a personal
identification number (PIN)
of a user. And the key meets
the claimed device-specific
information and the PIN
discloses the claimed userspecific
information.
EX1002 at 105-108.
As explained in the
previous section, Kimura
57
Patent 6,968,459
teaches that the security code is deciphered from external information read from
the card 100. Specifically, the external terminal . . . performs a step 306 to
decipher[,] from the information previously read out from the external
identification information memory[,] the identification code assigned to the card.
EX1006 (Kimura) at 17:4247; see also id. at 13:5256 (The terminal then reads
out such external identification information, which information includes an
enciphered external identification number comprising both the enciphered number
itself as well as the key by which it can be deciphered.). The deciphering is
highlighted in FIG. 6 of Kimura above.
Kimura teaches that there are two ways the security code can be deciphered.
In the first method, [the security code] can be deciphered directly using only the
key which had been read out with the information. Id. at 17:4749. The second
method additionally utilize[s] the PIN number in [the] deciphering operation. Id.
at 17:4750. In either case, the external terminal then is able to utilize the
enciphered information to derive the deciphered identification code for writing into
the external portion of the comparator circuit. Id. at 17:5053. The case where the
security code is deciphered using both the key and the PIN discloses the claimed
security information generated from a combination of device-specific information
associated with the storage device and user-specific information associated with a
user. That is, Kimuras security code is the claimed security information,
58
Patent 6,968,459
Kimuras key is the claimed device-specific information, and Kimuras PIN is
the claimed user-specific information. And the security code is generated from
these two pieces because those two pieces of information are used to decipher the
security code. EX1002 at 105-108.
As explained above, the claimed device-specific information and userspecific security information mean information specific to the device and
information specific to the user, respectively. Section VII.C.2. Kimuras key is
information specific to the device because, for example: (1) the key . . . [is]
stored in the security memory [50] of the card 100 (EX1006 (Kimura) at 13:34
35); (2) the key [is] for deciphering the identification number [of the card 100]
(d. at 13:6667); and (3) [the] key identif[es] the storage locations in internal
identification information memory 90 [of the card 100] at which the internal
identifier is stored (EX1006 at 16:79.) And Kimuras PIN is information
specific to the user because, for example, the PIN input is entered by the user.
Id. at 17:1920; see also id. at 18:3539. EX1002 at 108.
Accordingly, Kimura discloses that the security information is generated
from a combination of device-specific information associated with the storage
device and user-specific information associated with a user, as recited in claim 18.
59
Patent 6,968,459
g. configuring the storage drive to prevent write access
to the storage device when the security information is
not sensed
As discussed above, Kimura teaches that:
A step 308 then performs a comparison between the
internal and external codes stored in the sections 60a,
60b. A test 309 is performed to determine if those codes
match. If they do under a step 310, access to the main
memory is allowed. If a match is not detected, the step
311 indicates that access to the main memory is refused.
(emphasis added); Id. at FIG. 6
(reproduced right, annotation
added).
Thus,
in
Kimura,
access to the storage device is not permitted if the card 100 does not have the same
security code as the one deciphered by the external terminal 200. Accordingly,
Kimura teaches configuring the storage device to prevent write access to the
storage device when the security information is not sensed, as recited in claim 18.
EX1002 at 109.
60
Patent 6,968,459
h. configuring the storage drive to permit write access
. . . when the security information is sensed
As discussed above, Kimura teaches that:
A step 308 then performs a comparison between the
internal and external codes stored in the sections 60a,
60b. A test 309 is performed to determine if those codes
match. If they do under a step 310, access to the main
memory is allowed. If a match is not detected, the step
311 indicates that access to the main memory is refused.
12 (emphasis added); FIG.
6
(reproduced
right,
annotation added). Thus, in

Kimura, unrestricted access to the storage device is permitted if the card 100 has
the same security code as the one deciphered by the external terminal 200.
Accordingly, Kimura teaches configuring the storage device to permit write
access . . . when the security information is sensed, as recited in claim 18.
EX1002 at 110.
i. the write access by encrypting digital data using the
security information and writing the encrypted digital
data to the storage device
61
Patent 6,968,459
Claim 18 further recites that the write access occurs by encrypting digital
data using the security information and writing the encrypted digital data to the
storage device. EX1001 (459 patent) at 10:4649. Kimura does not expressly
teach that, when data is written to the storage device 100, the data is encrypted
using the security information. However, Kimura in view of Takahashi renders this
feature obvious.
1) Takahashi Discloses This Feature
As discussed above, Takahashi discloses a system for securely writing data
to, and reading data from, an external memory device. In Takahashi, [a]t all
times, whether information is being read from the external memory 11 or written to
the external memory 11, the information on this bus is encrypted. EX1005
(Takahashi) at 6:3841 (emphasis added); see also id. at 14:2527 (claiming [a]
method for securely decrypting and encrypting information obtained from and
supplied to an external memory). Specifically, Takahashi reads data from the
external memory to the host, a secure memory management unit (MMU) on the
chip 10 . . . read[s] encrypted external program code instructions and data stored in
the external memory 11 . . . decrypt[s] and store[s] the information in a secure
random access memory (RAM) with an internal microprocessor CPU core 12 then
utilizing the information, which is stored in the secure internal RAM. Id. at 2:26
39 (emphasis added). Likewise, when Takahashi writes data from the host to the
62
Patent 6,968,459
external memory, the MMU moves the data from the SRAM memory 18 to the
encryption core 20 and then to the external memory 11. Id. at 2:673:5.
Thus, Takahashi providing write access by encrypting digital data using the
security information and writing the encrypted digital data to the storage device,
as recited in claim 18. EX1002 at 111-112.
2) Kimura and Takahashi Provide Reasons to
Combine Their Disclosures
Kimura and Takahashi provide reasons to combine Takahashis technique of
encrypting digital data and writing it to an external storage device with Kimuras
secure card 100. EX1002 at 114-119. For example, Kimura discloses that, in
memory cards, the capacity for performing security checks before allowing access
to the main memory was substantially limited at the time of its invention. EX1006
(Kimura) at 1:3033. Kimura also discloses how, at the time, the memory cards
and the related techniques available for securing the stored information are not as
reliable as could be desired. Id. at 1:5155. Thus, Kimura sought to provide a
portable memory device exhibiting a comparatively high degree of security,
without having an onboard microprocessor. Id. at 3:5763. Kimura accomplishes
this, in part, by providing two decoupled data buses 140, 152. Only the main
interface bus 140, which provides enciphered information used in the security
check itself, is accessible before completion of the security check:
63
Patent 6,968,459
In FIG. 1, the interface bus 140 is shown interconnecting
the security control circuit 51 and security memory 50,
illustrating that the external terminal has the ability for
limited access to the security memory in performance of
the security check. Also shown connecting those modules
is an internal bus 152 which is provided only between the
security memory 50 and security control circuit 51. Such
bus, as will be described in greater detail below, provides
a means for readout of security information which is not
necessarily enciphered for coupling to the security
control circuit in performance of the security check. The
fact that the bus 152 is internal only and not coupled to
the main interface bus 140 provides a significant degree
of security when it is appreciated that the only
information which is available to the interface bus is in
enciphered format, and only external terminals of
approved form have the ability to utilize the encipher key
to decipher the enciphered security information.
EX1006 (Kimura) at 7:827 (emphasis added).
Accordingly, a person of ordinary skill in the art looking at Kimura would
have been focused on making the content written to external storage devices more
secure. Takahashis encryption technique would provide another way to secure
data on an external storage device beyond Kimuras technique. Takahashi observes
that, when writing data from a host system to an external memory device or when
64
Patent 6,968,459
reading data from the external memory to the host system, if this data is encrypted,
it prevent[s] unauthorized parties from determining instructions or data stored in
the memory by reading out the information and then utilizing the information so
that unauthorized third parties are not able to use it unless they can obtain access
to the unencrypted firmware which is handled by the microprocessor. EX1005
(Takahashi) at 1:714. Thus, one of ordinary skill would have recognized that, by
adding Takahashis technique to Kimuras system, the unauthorized user would
not only have to overcome Kimuras security check to access the card 100 itself,
but would also need to have the particular encryption firmware as described by
Takahashi in order to use any of the data stored on the card 100. EX1002 at 115.
Takahashis technique is not superfluous to Kimuras. Id. at 116. This is
because Kimuras technique focuses on securing the initial access to the card 100.
Id. But if an unauthorized user was able to access the card 100 despite this initial
access security, the data would be compromised. Takahashi, on the other hand,
focuses on securing the data itself written to or read from the storage device. Id. So
even though the unauthorized user may obtain physical access to Kimuras card
100, the unauthorized user would have to overcome another encryption hurdle to
use the data. Id. One of ordinary skill in the art therefore would have sought to add
Takahashis technique to Kimuras system as described above. Id.
65
Patent 6,968,459
Further, it would have been obvious to encrypt the outbound data in
Takahashi using the security information of Kimura. Because Kimuras
security information is made up of a key and user PIN already shared by the
memory card 100 and the terminal 200, it would have been obvious to use that
same security information to encrypt the outbound data being written to the
memory card, as taught in Takahashi. Id.at 117.
Furthermore, both Kimura and Takahashi are analogous references in the
same art of secure memory devices. Id. at 118. Indeed, Takahashi discloses that
firmware encryption should be used to prevent access to sensitive information by
unauthorized parties, EX1005 (Takahashi) at 1:710, while Kimura discloses a
security function intended to protect information stored in a portable memory,
EX1006 (Kimura) at 1:69. Thus, the combination of Kimura and Takahashi
would also have been obvious because it would have provided a more desirable
storage device, one more secure against eavesdroppers attempting to access private
communications or confidential information without authorization. EX1002 at
118.Such a modification merely combines known elements and functionsi.e.,
modifying secure portable memory devices to include a security encryption
functionality that was known and commonly implemented in memory devices at
the time of the 459 patents application date. Id.
66
Patent 6,968,459
Therefore, it would have been obvious to modify Kimuras portable secure
memory device 100 with Takahashis technique of digital data encryption. Id. at
119. A person of ordinary skill in the art would have had a reasonable likelihood of
success when combining the two because the storage devices in both systems are
ordinary, common storage devices, and the implementation of a known function
would have been straightforward and predictable. Id. Accordingly, Kimura in view
of Takahashi renders claim 18 obvious, and claim 18 should be canceled.
IX.
CONCLUSION
For these reasons, the challenged claims 1, 2, 1315, 18, 33, 34, 39, 46, and
48 are unpatentable and Petitioner respectfully requests that the Board grant this
Petition and institute trial.
67
Patent 6,968,459
Date: July 11, 2016
Respectfully submitted,
/James D. Stein/
P. Andrew Riley
Reg. No. 66,290
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC 20001-4413
Telephone: 202-408-4266
Facsimile: 202-408-4400
E-mail: Andrew.Riley@finnegan.com
James D. Stein
Reg. No. 63,782
271 17th Street NW
Suite 1400
Atlanta, GA
Telephone: 404-653-6439
Facsimile: 404-653-6444
E-mail: James.Stein@finnegan.com
Jonathan Stroud
Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Telephone: 202-805-8931
Facsimile: 650-887-0349
E-mail: jonathan@unifiedpatents.com
68
Patent 6,968,459
CERTIFICATE OF COMPLIANCE
The undersigned hereby certifies that the foregoing Petition for Inter Partes
Review contains 12,107 words, excluding those portions identified in 37 C.F.R.
42.24(a), as measured by the word-processing system used to prepare this paper.
/James D. Stein/
James D. Stein
Garrett & Dunner, L.L.P.
69
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) and
42.105(b) Express Mail of a true and correct copy of this PETITION FOR
INTER PARTES REVIEW on July 11, 2016, on Patent Owner and Counsel for
the Patent Owner at the correspondence addresses below.
Intellectual Ventures II LLC
2711 Centerville Road
Suite 400
Wilmington, DC 19808
Fitch, Even, Tabin & Flannery LLP

120 South LaSalle Street
Suite 1600
Chicago, IL 60603
Dated: July 11, 2016
By: /Lauren K. Young/

Lauren K. Young
Legal Assistant

Unified Patents Inc. v. Intellectual Ventures II, LLC, IPR2016-01404 (July 11, 2016) Petition)

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Filed on behalf of: Unified Patents Inc.

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIFIED PATENTS INC.,

MANDATORY NOTICES UNDER 37 C.F.R. 42.8 ...................................2

Real Party-in-Interest ............................................................................2

Lead and Back-Up Counsel, and Service Information .........................2

FEE PAYMENT ..............................................................................................3

STATEMENT OF PRECISE RELIEF REQUESTED ...................................3

Claims for Which Review is Requested................................................3

Statutory Grounds of Challenge ............................................................3

The Level of Ordinary Skill in the Art at the Time of the

THE 459 PATENT .........................................................................................5

Overview of the Disclosure ...................................................................5

Prosecution History ...............................................................................8

Prior Art Secure Storage Devices..........................................................9

GROUNDS FOR STANDING......................................................................10

VII. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH

Claims for Which Review is Requested..............................................10

Statutory Grounds of Challenge ..........................................................10

Claim Construction .............................................................................11

Device-Specific Security Information (Challenged

Device-Specific Information (Challenged Claim 18)

Security Information (Challenged Claim 18) ........................14

Status Change . . . for the Storage Device (Challenged

Storage Manager (Challenged Claim 39) ..............................15

Drive (Challenged Claim 39) ................................................17

GROUND 1: Bensimon Anticipates Claims 1, 13, 14, 33, 39,

Overview of Bensimon ..............................................................19

Independent Claim 1 .................................................................20

Dependent Claims 13 and 14 ....................................................27

Independent Claim 33 ...............................................................29

Independent Claim 39 ...............................................................31

Dependent Claims 46 and 48 ....................................................32

GROUND 2: Bensimon in View of Takahashi Renders Obvious

Overview of Takahashi .............................................................33

Dependent Claim 2 ...................................................................36

Independent Claim 15 ...............................................................40

Dependent Claim 34 .................................................................42

GROUND 3: Kimura in View of Takahashi Renders Obvious

Overview of Kimura .................................................................43

Independent Claim 18 ...............................................................48

MANDATORY NOTICES UNDER 37 C.F.R. 42.8

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

Lead and Back-Up Counsel, and Service Information

STATEMENT OF PRECISE RELIEF REQUESTED

Claims for Which Review is Requested

Petitioner respectfully requests inter partes review under 35 U.S.C. 311 of

Statutory Grounds of Challenge

Proposed Statutory Challenges for the 459 Patent

Claims 1, 13, 14, 33, 39, 46 and 48 are anticipated under

THE 459 PATENT

Overview of the Disclosure

The 459 patent describes a computer 100 that automatically operates in a

EX1001 (459 patent), FIG. 1.

EX1001 (459 patent), FIG. 2.

Prior Art Secure Storage Devices

Prior art secure storage devices like

(Yamakawa) describes a system where a

GROUNDS FOR STANDING

STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH

Claims for Which Review is Requested

Petitioner respectfully requests review under 35 U.S.C. 311 of claims 1, 2,

Statutory Grounds of Challenge