Nexus Between Secondary Consideration And Claims Was Not Sufficient IPR2014-01449


Takeaway: A consent judgment is not sufficient evidence that a product is within the scope of a claim in order for the secondary consideration of objective evidence of non-obviousness tied to that product to be given substantial weight.

In its Final Written Decision, the Board determined that Petitioner has shown by a preponderance of the evidence that claims 40-53 of the ’057 patent are unpatentable. The Board also denied Patent Owner’s Motion to Seal and proposed protective order.  According to the Board, the ’057 patent relates to a cryptographic serial Advanced Technology Attachment (ATA) apparatus and method.

Petitioner asserted that claims 40-53 are unpatenable over Sullivan and SATA standard. Patent Owner argued that two limitations are not rendered obvious by this combination: (1) “determining whether the received PIO data-out command FIS is associated with a pre-defined category of command set that requires setting in encryption mode,” and (2) “passing a PIO setup FIS received from a device interface to the host interface.” The limitations are referred to as the “associated with” and “passing” limitations, respectively.

Regarding the “associated with” limitation, Patent Owner argued that Sullivan does not teach associating a pre-defined category of a command set. Rather, according to Patent Owner, Sullivan describes a “simple solution tied to the kinds of packets described by Sullivan.” Patent Owner argued that Sullivan, as applied to the SATA Standard, does not teach differentiation between payloads. Patent Owner further argued that SATA Standard is silent as to the use of encryption and teaches nothing about whether a data payload should be decrypted or encrypted.

The Board was unpersuaded by Patent Owner’s arguments, stating that Patent Owner is attacking the references individually instead of considering what these references together would teach to a skilled artisan. The Board stated that the combination of the references rendered the “associated with” limitation obvious. The Board further stated that Patent Owner has adopted a narrow view of Sullivan. Contrary to Patent Owner’s assertions, Sullivan states that data and control information can be treated separately for both encryption purposes and for handling various types of attacks. The Board also agreed with Petitioner that an ordinary artisan would not have applied Sullivan to the SATA Standard to yield a non-functioning SATA device as argued by Patent Owner. The Board determined that Petitioner had provided an articulated reason with a rational underpinning explaining why it would have been obvious to implement the proposed prior art combination.

As for the “passing” limitation, Patent Owner’s first argument relied upon the treatment of each individual Frame Information Structure (FIS) identically. The Board deemed this argument unpersuasive for the same reasons as in the “associated with” analysis. Next, Patent Owner asserted that Sullivan’s filter embodiment teaches away from the “passing” limitation. According to Patent Owner, Sullivan’s filter module “permits only two operations for packets that reach the cryptographic module: they are passed to the cryptographic module and encrypted, or they are rejected and filtered out.” In response, Petitioner argued, and the Board agreed, that the claim language does not require a determination whether or not to alter cryptographically the PIO setup FIS. The Board was not persuaded that Sullivan teaches away from the “passing” limitation, noting that Sullivan’s description of the filter module leaves open the possibility that some of the information will be neither passed for encryption nor rejected and discarded.

The Board also was persuaded by Petitioner’s arguments concerning the other limitations of claim 40 of the ’057 patent. Thus, the Board concluded that Petitioner has demonstrated by a preponderance of the evidence that claim 40 would have been obvious over the combination of Sullivan and SATA Standard. The Board also was not persuaded by Patent Owner’s arguments concerning claims 41-53.

Patent Owner next argues that secondary considerations in the form of industry praise, commercial success, copying, and licensing establish the non-obviousness of the challenged claims. To be given substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. Regarding the industry praise alleged by Patent Owner, the Board noted that Patent owner did not identify any praise due to specific elements that are recited in the challenged claims. Similarly, the Patent Owner did not explain how products which won industry awards embody any of the challenged claims. Thus, the Board did not find a nexus for these secondary considerations.

Patent Owner asserted, as evidence of commercial success, its previous business relationship with Petitioner and Petitioner’s alleged praise and advertisement of Patent Owner’s encryption devices. Patent Owner asserted that Petitioner’s “BlackArmor” product received the ’057 patent’s encryption technology and that it was praised by Petitioner’s chief technologist. The Board noted that Patent Owner’s assertions are based on unsubstantiated allegations made in its complaint from the related district court proceeding between the parties. Patent Owner had not established that the “BlackArmor” product infringes the ’057 patent. Patent Owner must prove that sales were a direct result of the unique characteristics of the invention, and not a result of economic factors unrelated to the quality of the patented subject. The Board was not persuaded that Patent Owner had established a nexus between the claimed invention and Patent Owner’s or Petitioner’s products.

Patent Owner next asserts that copying and licensing of the ’057 patent is objective indicia of non-obviousness. Patent Owner argued that in Enova v. WD, Initio Corporation admitted in a consent judgment that its products practice the ’057 patent. The Board stated that a consent judgment is not sufficient that a product is within the scope of a claim in order for objective evidence of non-obviousness tied to that product to be given substantial weight. The Board also noted that Patent Owner had not established that licenses arose out of recognition and acceptance of the claimed subject matter. Thus, the Board did not find a nexus for the asserted copying and licensing.

Patent Owner filed a Motion to Seal certain exhibits which include confidential agreements between Patent Owner and third parties not involved in the instant proceeding. The Board noted that the exhibits are heavily redacted and that the un-redacted portions “do not provide sufficient detail to verify the contents of these exhibits.” Thus, the Board denied Patent Owner’s Motion to Seal the identified exhibits because Patent Owner has not established the standard of “for good cause” as required under 37 C.F.R. § 42.54.

Patent Owner also filed a revised proposed protective order concerning the co-pending district court proceeding. Patent Owner indicated that it had conferred with Petitioner regarding the proposed protective order; however, no agreement had been reached. The Board denied Patent Owner’s request to enter its proposed protective order because it could not ascertain the contents of the redacted exhibits.

Paper 47: Final Written Decision
Dated: December 18, 2015
Patent 7,900,057
Before: Michael R. Zecher, Neil T. Powell, and Timothy J. Goodson
Written by: Goodson
Related Proceedings: Enova Tech. Corp. v. Seagate Tech. (US) Holdings, Inc., No. 1:13-cv-1011-LPS; Enova v. WD, No. 1:10-cv-00004-LPS; IPR2014-01178; IPR2014-01297, and IPR2014-00683.