Final Written Decision Finding Challenged Claims Unpatentable Where Patent Owner’s Proposed Claim Construction Was Too Narrow IPR2014-01297


Takeaway: When proposing a claim construction from a corresponding litigation or other related proceeding, the proposing party must provide sufficient reasoning for the proposed construction – such as support in the specification – and must address any conflicting constructions previously proposed by the Board.

In its Final Written Decision, the Board found that each of challenged claims 33-39 of the ‘057 patent was unpatentable. The Board denied Patent Owner’s Motion to Seal as well, opting instead to enter the Board’s default Protective Order.

The Board had instituted trial with respect to claims 33-39 of the ‘057 patent. The sole asserted ground was unpatentability under 35 U.S.C. § 103(a) in view of Sullivan and SATA Standard.

The ‘057 patent describes a cryptographic serial Advanced Technology Attachment (SATA) apparatus and method. According to the ‘057 patent, “the SATA specification defines a point-to-point connection between a host adapter, such as an integrated circuit, and a storage device controller, such as a SATA hard-disk drive.” The ‘057 further states that “the SATA specification also provides for layering of functions and includes a Link layer ‘responsible for delivering packets of payload data, which are called Frame Information Structures (FISes).’”

The Decision to Institute had construed “SATA device protocol stack for communicating with a host interface of a SATA host” in claim 33 to mean “a set of SATA protocols that work together on different levels to enable communication on a network for communicating with a host interface of a SATA host” and “SATA host protocol stack for communicating with a device interface of a SATA device” to mean “a set of SATA protocols that work together on different levels to enable communication on a network for communicating with a device interface of a SATA device.” Patent Owner had argued that, instead, the Board should adopt the constructions arrived at by the District Court in Enova v. WD.

The Board ended up relying on its original constructions, finding that: “Patent Owner does not point to any support in the Specification for its proposed construction, nor does Patent Owner persuasively address the reasoning provided in the Decision to Institute for the construction we initially adopted for purposes of this proceeding[;]” that “[t]he District Court’s claim construction order on which Patent Owner relies includes little persuasive support for Patent Owner’s position[;]” and that “Patent Owner does not contend that the difference between its proposed construction and the construction in the Decision to Institute has any impact on the obviousness analysis in this proceeding.”

The Board agreed with Petitioner’s contention that independent claim 33 and its dependent claims would have been obvious in view of Sullivan taken in combination with SATA Standard. Particularly, the Board “[agreed] with Petitioner that Patent Owner’s primary arguments attack the two references individually instead of considering what these references together would teach to a skilled artisan.” In doing so, the Board noted that “Petitioner [was] not relying on either Sullivan or SATA Standard individually as teaching the ‘associated with’ limitation,” but instead, was asserting that “[this] limitation would have been obvious to a skilled artisan seeking to implement Sullivan’s teachings—specifically, Sullivan’s teaching to encrypt or decrypt user data but not control information—in a SATA device.” Thus, according to the Board, “Patent Owner’s arguments that neither Sullivan nor SATA Standard individually teaches the ‘associated with’ limitation do not address directly the obviousness case that Petitioner has presented.”

The Board also found Patent Owner’s rebuttal arguments to be unpersuasive because they were based on “an unduly narrow view of Sullivan’s teachings.” Moreover, the Board found that one of the arguments presented by Patent Owner “[was] unpersuasive because it is based on a misunderstanding of Petitioner’s obviousness case.”

In its further arguments for patentability, Patent Owner had attempted to rely on secondary considerations including “industry praise, commercial success, copying, and licensing[.]” But the Board was not persuaded by any of these positions, citing lack of nexus and other deficiencies.

Patent Owner had also filed a Motion to Seal certain exhibits alleged to contain confidential agreements between Patent Owner and a third parties not involved in this proceeding. At the same time, Patent Owner had “submitted a revised proposed protective order . . . that reflects the terms of a protective order entered in the parties’ co-pending district court proceeding.” The Board concluded that it could not confirm the asserted confidentiality of the exhibits in question or grant the Motion to Seal for good cause. According to the Board, “each exhibit [had] been heavily redacted, leaving only a handful of lines per each exhibit” and “[the] un-redacted portions do not provide sufficient detail to verify the contents of these exhibits.”

Seagate Technology (US) Holdings, Inc. and Seagate Technology LLC v. Enova Technology Corp., IPR2014-01297
Paper 51: Final Written Decision
Dated: February 4, 2016 Patents: 7,900,057 B2
Before: Neil T. Powell, Georgianna W. Braden, and Timothy J. Goodson
Written by: Powell
Related Proceedings: Enova Tech. Corp. v. Seagate Tech. (US) Holdings, Inc., No. 1:13-cv-1011-LPS (D. Del.); Enova v. WD, No. 1:10-cv-00004-LPS (D. Del.); Seagate Tech. (US) Holding, Inc. v. Enova Tech. Corp., Case IPR2014-01178 (PTAB); Seagate Tech. (US) Holding, Inc. v. Enova Tech. Corp., Case IPR2014-01449 (PTAB); Seagate Tech. (US) Holding, Inc. v. Enova Tech. Corp., Case IPR2014-00683 (PTAB)