Seagate Technology (Us) Holdings, Inc.v.Enova Technology Corp.

Patent Trial and Appeal Board

Sep 2, 2015

09704769 (P.T.A.B. Sep. 2, 2015)

Trials@uspto.gov Paper 47
571-272-7822 Entered: September 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SEAGATE TECHNOLOGY (US) HOLDINGS, INC. and
SEAGATE TECHNOLOGY LLC,
Petitioner,

v.

ENOVA TECHNOLOGY CORP.,
Patent Owner.
____________

Case IPR2014-00683
Patent 7,136,995 B1
____________

Before MICHAEL R. ZECHER, GEORGIANNA W. BRADEN, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
IPR2014-00683
Patent 7,136,995 B1

2
I. INTRODUCTION
Seagate Technology (US) Holdings, Inc. and Seagate Technology
LLC (collectively “Petitioner”) filed a Corrected Petition (“Pet.”) requesting
an inter partes review of claims 1–15 of U.S. Patent No. 7,136,995 B1 (“the
’995 patent”). Paper 4. Enova Technology Corp. (“Patent Owner”) timely
filed a Preliminary Response (“Prelim. Resp.”) to the Petition. Paper 9.
Based on these submissions, we instituted trial as to claims 1–15 of the ’995
patent on the following proposed grounds of unpatentability:

Paper 10, 29 (“Dec. to Inst.”).
After institution, Patent Owner filed a Patent Owner’s Response
(Paper 22, “PO Resp.”), and Petitioner filed a Reply (Paper 27, “Reply”). In
addition, Petitioner filed a Motion to Exclude. Paper 31 (“Pet. Mot.
Exclude”). Patent Owner filed an Opposition to Petitioner’s Motion to
Exclude (Paper 38, “PO Exclude Opp.”), and Petitioner filed a Reply (Paper
42, “Pet. Exclude Reply”). Patent Owner filed a Motion to Exclude. Paper
33 (“PO Mot. Exclude”). Petitioner filed an Opposition to Patent Owner’s
Motion to Exclude (Paper 37, “Pet. Exclude Opp.”), and Patent Owner filed

1 GB Patent App. No. 2,264,373 A, published Aug. 25, 1993 (Ex. 1002,
“Nolan”).
2 ANSI, SMALL COMPUTER SYSTEM INTERFACE-2 (ANSI X3.131-1994
(R1999), 1994) (Ex. 1003, “SCSI-2”).
3 US Patent No. 6,735,693 B1, issued May 11, 2004 (Ex. 1004, “Hamlin”).
4 US Patent No. 7,278,016 B1, issued Oct. 2, 2007 (Ex. 1005, “Detrick”).
Reference(s) Basis Claim(s) Challenged

Nolan1 and SCSI-22 § 103 1–13
Nolan, SCSI-2, and Hamlin3 § 103 14
Nolan, SCSI-2, and Detrick4 § 103 15
IPR2014-00683
Patent 7,136,995 B1

3
a Reply (Paper 41, “PO Exclude Reply”).
Patent Owner also filed a Motion to Seal Exhibits 2042, 2043, and
2044 (Paper 23, “Mot. to Seal”), which is addressed herein.
An oral hearing was conducted on May 11, 2015. A transcript of the
oral hearing is included in the record. Paper 46 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of claims 1–15. For the reasons discussed below, Petitioner has
demonstrated by a preponderance of the evidence that claims 1–15 are
unpatentable.
A. Related Proceedings
Petitioner indicates the ’995 patent currently is the subject of a related
proceeding between the parties in the U.S. District Court for the District of
Delaware titled Enova Tech. Corp. v. Seagate Tech. (US) Holdings, Inc.,
No. 1:13-cv-1011-LPS, which was filed on June 5, 2013. Pet. 1; Paper 7, 2.
Petitioner also indicates the ’995 patent was the subject of a prior federal
district court proceeding in the U.S. District Court for the District of
Delaware, No. 1:10-cv-00004-LPS (“Enova v. WD”), which closed on
March 4, 2013. Pet. 1. Additionally, related U.S. Patent No. 7,900,057 B2
is the subject of an inter partes review in Cases IPR2014-01178, IPR2014-
01297, and IPR2014-01449.
B. The ’995 Patent
The ’995 patent describes a cryptographic device that performs
encryption/decryption during data transfers between a data generating device
and a data storage device. Ex. 1001, 3:22–24. Figure 4 (reproduced below)
IPR2014-00683
Patent 7,136,995 B1

4
depicts schematically the architecture of cryptographic device 43 described
in the ’995 patent. Id. at 4:30–32.

Figure 4 shows cryptographic device 43 operatively coupled between
data generating device 41 and data storage device 42 for use during data
transfer. Id. at 4:32–35. The ’995 patent indicates that data generating
device 41 may be “a desktop/notebook computer, microprocessor . . . or any
other device capable of generating data.” Id. at 4:35–38. The ’995 patent
adds that data storage device 42 may be “a computer hard drive, tape drive
. . . magnetic tape . . . or any other device capable of storing data for retrieval
purposes.” Id. at 4:38–44. Further, cryptographic device 43 is described as
adapted to “perform transparently data encryption and decryption during
data transfers between data generating device 41 and data storage device 42
with no impact on overall system performance.” Id. at 4:45–49.
Additionally, Figure 4 shows that cryptographic device 43 includes
data stream interceptor 431 operatively coupled to a main controller 432.
IPR2014-00683
Patent 7,136,995 B1

5
Ex. 1001, 4:50–52. Main controller 432 communicates control signals to
data generating controller 433, data storage controller 434, and cipher engine
436. Id. at 4:52–54. Main controller 432 receives input from data stream
interceptor 431 and determines whether an incoming data stream, which may
include command/control and/or data signals, is to be encrypted, decrypted,
or passed through unmodified. Id. at 4:55–58. The ’995 patent discloses
that data stream interceptor 431 is adapted to distinguish between
command/control and data signal transfers, and is configured to pass through
certain command/control signals via bypass data path 44, and intercept other
command/control signals which are transmitted to main controller 432. Id.
at 4:58–65. Main controller 432 also “instructs data generating controller
433 and data storage controller 434 to perform specific data transfer
protocols . . . of data generating device 41 and data storage device 42,
respectively, according to the intercepted command/control signals.” Id. at
4:65–5:4.
As discussed previously, Figure 4 shows cipher engine 436. “Main
controller 432 also transmits control signals to cipher engine 436 to notify
the same of an incoming data stream.” Ex. 1001, 5:4–6. Cipher engine 436
is programmed to transparently encrypt/decrypt streaming data during data
transfer between data generating device 41 and data storage device 42. Id. at
5:6–11.
C. Illustrative Claim
Of the challenged claims, claims 1, 5, 9, 13, 14, and 15 are
independent. Claim 9 is illustrative of the subject matter of the ’995 patent,
and is reproduced below:
9. A cryptographic device, comprising:
IPR2014-00683
Patent 7,136,995 B1

6
at least one data stream interceptor that distinguishes
between command/control and data signal transfers;
a main controller receiving input from said at least one
data stream interceptor and determining whether incoming data
would be encrypted, decrypted or passed through based on the
received input from said at least one data stream interceptor;
at least one data generating controller adapted to perform
at least one data transfer protocol with at least one data
generating device on command from said main controller;
at least on data storage controller adapted to perform at
least one data transfer protocol with at least one data storage
device on command from said main controller; and
at least one cipher engine adapted to transparently
encrypt or decrypt at least one data stream between said at least
one data generating device and said at least one data storage
device on command from said main controller.
Ex. 1001: 6:45–64.
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that the level of ordinary skill in the art is a
bachelor’s degree in electrical or computer engineering or computer science,
and two years of experience in a relevant field of computer data storage, data
transmission, and encryption “or . . . equivalent knowledge and experience.”
Pet. 13 (citing Ex. 1006 ¶¶ 15–17). Patent Owner disagrees and urges a
different level of ordinary skill in the art as a bachelor’s degree in electrical
and/or computer engineering, plus either a master’s degree in one of those
fields or two years of industrial experience in the technical fields of
Application-Specific Integrated Circuit (ASIC) design, hard drive data
transfer protocols, and encryption standards, or equivalent knowledge and
experience. PO Resp. 12–13. Patent Owner further argues that a “person of
IPR2014-00683
Patent 7,136,995 B1

7
ordinary skill in the art of the ’995 patent should have experience with
hardware systems and related prior art, which persons with a pure software
background and a computer science degree do not necessarily have.” Id. at
13.
To determine the level of ordinary skill in the art in this case, we
consider the type of problems encountered in the art, the prior art solutions
to those problems, the rapidity with which innovations are made, and the
sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan
Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Also, we are guided by the
level of ordinary skill in the art as reflected by the prior art of record.
Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001).
We are persuaded by the parties’ contentions that the level of skill in
the art would include a bachelor’s degree in electrical or computer
engineering or computer science and either a master’s degree or two years of
experience in a relevant field such as computer data storage, data
transmission (e.g., data transfer protocols), and encryption. Pet. 13; PO
Resp. 13. We, however, do not agree with Patent Owner that the relevant
field of experience must include hardware encryption experience and
excludes persons having a software background or a degree in computer
science. PO Resp. 13; Ex. 2013 ¶ 42. Although the Specification of the
’995 patent and the challenged claims disclose a “cryptographic device,” we
do not agree with Patent Owner that the use of “device” in this manner
excludes software-based encryption. Indeed, the ’995 patent teaches that
encryption can be performed by either conventional software-based
applications or hardware devices available. Ex. 1001, 1:35–2:3.
Additionally, Petitioner’s declarant, Dr. Darrell Long, testifies that
IPR2014-00683
Patent 7,136,995 B1

8
[p]ersons of ordinary skill in the art at the time of the filing of
the ’995 Application also understood that encryption was
typically implemented using one of two methods: software-
based encryption or hardware-based encryption. Software-
based encryption typically relied on software in the host
computer, executed by the host [central processing unit (CPU)],
to run the necessary encryption algorithm. It was well-known
at the time of the filing of the ’995 Application that software-
based encryption was typically slower than hardware-based
encryption, as it used the host computer’s CPU to perform the
encryption. Hardware-based encryption, in contrast, was
typically faster as it was performed by dedicated hardware, such
as dedicated PCMCIA [Personal Computer Memory Card
International Association] cards plugged into the host or
external ASIC-based devices.
Ex. 1006 ¶ 32 (citing Ex. 1001, 1:38–40).
Moreover, the level of skill in the art as reflected in the prior art of
record encompasses both software-based and hardware-based encryption.
For example, Nolan does not restrict encryption methods to software
applications or hardware devices and describes the use of key-based
“[m]odern encryption algorithms.” Ex. 1002, 5:3–5.5 Thus, when
considering the entire evidence of record, we conclude that a person of
ordinary skill in the art at the time of the ’995 patent would have had a
bachelor’s degree in electrical or computer engineering or computer science
and either a master’s degree or two years of experience in a relevant field
such as computer data storage, data transmission (e.g., data transfer
protocols), and encryption.

5 All page numbers of Exhibit 1002 refer to the page numbers located at the
bottom, right-hand portion.
IPR2014-00683
Patent 7,136,995 B1

9
B. Weight Given to Petitioner’s Declarant, Dr. Long
Patent Owner asserts that Petitioner’s declarant, Dr. Long, is not
qualified to provide expert testimony in this proceeding because Dr. Long
does not have sufficient experience with hardware. PO Resp. 12.
Specifically, Patent Owner asserts that Dr. Long has experience in computer
data transmissions, data storage, and data security at the systems level, but
lacks hardware encryption experience. Id. at 13. Patent Owner further
asserts that Dr. Long’s testimony is entitled to little weight because he does
not fully understand the SCSI-2 Specification and provides “erroneous
information that confuses and oversimplifies critical aspects of the SCSI-2
Specification.” Id. at 14; see id. at 16. Patent Owner further contends Dr.
Long’s business affiliation with Petitioner indicates Dr. Long’s testimony is
biased.
First, we do not agree with Patent Owner that Dr. Long is not
qualified to provide expert testimony because he does not have hardware-
based encryption experience. As discussed above, we determine that the
level of skill in the art at the time of the filing of the ’995 patent does not
exclude persons having software-based instead of hardware-based
encryption experience. Moreover, we note that generally, arguments that the
scientific or technical experience and knowledge of Dr. Long do not match
the alleged level of skill in the art are unpersuasive as there is no
requirement of a perfect match between the expert’s experience and the field
of the art in question. See SEB S.A. v. Montgomery Ward & Co., Inc., 594
F.3d 1360, 1373 (Fed. Cir. 2010).
Second, a declarant may be qualified as an expert if the declarant’s
scientific, technical, or other specialized knowledge will help the trier of fact
IPR2014-00683
Patent 7,136,995 B1

10
to understand the evidence or to determine a fact in issue. Fed. R. Evid. 702.
Patent Owner has not filed a motion to exclude on the basis of competency
of Petitioner’s expert witness, Dr. Long, and, therefore, we do not undertake
an analysis of whether Dr. Long is, indeed, qualified under the Federal Rules
of Evidence. We do note, however, that Dr. Long has experience in the field
of computer data transmissions, data storage, and data security, including
experience with security and encryption for hard disk drives. Ex. 1006 ¶ 5;
see also Ex. 1014 (Dr. Long’s Curriculum Vitae).
Additionally, we are capable of discerning from the testimony and the
evidence presented the expertise and any potential bias of a witness, and
then attributing the appropriate weight to the witness’s testimony. See, e.g.,
Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998)
(“a witness’s pecuniary interest in the outcome of a case goes to the
probative weight of testimony, not its admissibility”). With these
considerations in mind, we now turn to the construction of certain claim
terms.
C. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent 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); see also In re Cuozzo
Speed Technologies, LLC, No. 2014-1301, 2015 WL 4097949, at *7–*8
(Fed. Cir. July 8, 2015) (“We conclude that Congress implicitly approved
the broadest reasonable interpretation standard in enacting the AIA” and
“the standard was properly adopted by PTO regulation.”), reh’g en banc
denied, 2015 WL 4100060 (Fed. Cir. July 8, 2015). There is a “heavy
presumption” that a claim term carries its ordinary and customary meaning.
IPR2014-00683
Patent 7,136,995 B1

11
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002);
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. data stream interceptor that distinguishes between
command/control and data signal transfers (claims 1, 5, 9, and
13–15)
For purposes of our Decision to Institute, we determined that the
phrase “data stream interceptor that distinguishes between command/control
and data signal transfers” should be construed as “one or more components
adapted to intercept at least one data stream and distinguish the command or
control signals in the data stream from the data signals” as proposed by the
Petitioner. Dec. to Inst. 7–8 (citing Pet. 10; Ex. 1001, 4:32–35, 55–65).
In its Patent Owner Response, Patent Owner asserts that its
construction for “data stream interceptor” as proposed in the Preliminary
Response is based on the plain language of the claims and is consistent with
the claim construction in the district court in Enova v. WD. PO Resp. 9–10
(citing Exs. 2001–2002). Specifically, Patent Owner proposes the
construction of “one or more components adapted to intercept at least one
data stream and distinguish between command/control signal transfers and
data signal transfers.” Prelim. Resp. 10–11 (citing Ex. 2001, 7). Patent
Owner further asserts that the term “interceptor” requires “some level of
examination of the data stream itself by, for example extracting some of the
data in the data stream, which then allows the data stream interceptor to
distinguish which parts of the data stream are command/control signal
transfers” and data signal transfers. PO Resp. 19 (emphasis added). Patent
Owner adds that the “interceptor” must do something more than allow the
“passing through” of signals. Id.; Tr. 36:22–37:21, 38:23–39:19.
IPR2014-00683
Patent 7,136,995 B1

12
In the Reply, Petitioner responds that it has not argued that
“intercepting” is synonymous with “passing through” via a bypass line.
Reply 1; Tr. 9:5–10:3. Rather, Petitioner argues that it used the phrase
“passing through” in the Petition to refer to receiving and acting on
information. Id. Petitioner adds that “the broadest reasonable construction
of intercept is simply are you . . . receiving it and doing something with it.”
Tr. 8:6–8. According to Petitioner, this is the ordinary and customary
meaning of “intercept,” which is consistent with the Specification’s
disclosure that the “data stream interceptor intercepts commands and sends
them to the main controller.” Id. at 8:11–20; see Reply 2. Petitioner further
argues the Specification of the ’995 patent does not limit what “intercepting”
covers or give the term a special meaning such as “‘examining’ or
‘extracting’ signals.” Reply 2; Tr. 7:21–8:8.
Based on the complete record before us, we agree with the parties that
the broadest reasonable interpretation of the term “intercept” is the plain,
ordinary, and customary meaning, which is to receive and act upon. The
Specification does not expressly define “interceptor”; however, the plain,
ordinary, and customary meaning of “intercept” is “to receive (a
communication or signal directed elsewhere) usually secretly” and “to stop,
seize, or interrupt in progress or course or before arrival.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (Frederick C. Mish et al., 10th ed.
1997) (Ex. 3002). This definition is consistent with the Specification, which
discloses “interceptor 431 is configured to pass through certain
command/control signals via a bypass data path 44, and intercept other
command/control signals which are transmitted to main controller 432.”
Ex. 1001, 4:55–65.
IPR2014-00683
Patent 7,136,995 B1

13
We further note that, in discussing the prior art references, Patent
Owner asserts that the “distinguishing function of the data stream interceptor
cannot be independent from the intercepting and from the data stream itself,”
and the distinguishing of signals cannot occur before a data stream is
present. PO Resp. 20–25; see Tr. 44:12–46:14. Essentially, Patent Owner
asserts that the claim language requires a specific manner of distinguishing
in a data stream. However, we do not agree that the term “distinguishes”
requires any such limitation. The literal language of the claim does not limit
how the data stream interceptor distinguishes the signals in the data stream.
This is consistent with the Specification, which also does not limit how
signals are distinguished. Ex. 1001, 4:58–65. Moreover, Patent Owner
conceded that, for the purposes of this proceeding, it agrees with the Board’s
construction in the Decision to Institute. Tr. 46:15–25. Thus, we discern no
sufficient reason to alter or depart from our claim construction of the phrase
“data stream interceptor that distinguishes between command/control and
data signal transfers” as “one or more components adapted to intercept at
least one data stream and distinguish the command or control signals in the
data stream from the data signals.” We do, nonetheless, clarify that the
plain, ordinary, and customary meaning of “intercept” applies and that
distinguishing signals in the data stream can be performed in any manner.
2. “transparently” (claims 1, 5, 9, and 13–15)
In the Decision to Institute, we determined that the broadest
reasonable interpretation of “transparently” is “functionally invisible”
because this construction is consistent with the ordinary and customary
meaning of “transparent” as would be understood by one with ordinary skill
in the art in light of the ’995 patent. Dec. to Inst. 9–11 (citing Ex. 1001,
IPR2014-00683
Patent 7,136,995 B1

14
3:34–36; Ex. 3001, 3).
Patent Owner argues that its proposed construction of “functionally,
data transfers appear to be performed directly between the data generating
device and the data storage device” (Prelim. Resp. 13–14) is directly
supported by the Specification as describing transparent encryption. PO
Resp. 10–11 (citing Ex. 1001, 3:62–4:2, 4:21–29). As we noted in the
Decision to Institute, Patent Owner’s proposal is more restrictive than the
claim language, which does not recite explicitly that data transfers appear to
be performed directly between the data generating device and data storage
device. Moreover, Patent Owner’s proposed construction ignores the
Specification’s disclosure that an “invisible” cryptographic device also
functionally performs data transfers “directly between data generating
device 13 and/or data storage device 11, respectively.” Ex. 1001, 3:30–34.
Although the Specification does not expressly define “transparently,” it does
describe the disclosed cryptographic device as an “invisible” data transfer
bridge connecting data generating device 13 and data storage device 11.
Ex. 1001, 3:34–36. This disclosure is consistent with the ordinary and
customary meaning of “transparently,” which is “[i]n computer use, of,
pertaining to, or characteristic of a device, function, or part of a program that
works so smoothly and easily that it is invisible to the user.” Ex. 3001, 3.
Accordingly, we maintain that the broadest reasonable interpretation of
“transparently” is “functionally invisible.”
3. “input” (claims 1, 5, 9, and 13–15)
In the Decision to Institute, we did not adopt Patent Owner’s proposed
construction of “input” and determined that the claim term does not require
input distinguishing between command/control and data signal transfers,
IPR2014-00683
Patent 7,136,995 B1

15
but rather encompasses either command/control or data signals. Dec. to Inst.
11–12. In response, Patent Owner contends that our construction is
inconsistent with the district court’s construction in Enova v. WD. PO Resp.
11. Specifically, Patent Owner argues that the district court’s construction
provides a link between “input” and the determination of whether to
encrypt/decrypt or pass through each signal. Id. (citing Ex. 1001, 4:55–61).
Patent Owner asserts that the district court’s construction requires “input”
resulting from the distinguishing to be sent to and used in some way by the
main controller in determining. Id. at 11–12 (citing Ex. 2002, 2).
Although the district court’s claim construction in Enova v. WD is
informative and provides some guidance on the interpretation of the term
“input,” we are not bound by the district court’s findings. Rather, we apply
the broadest reasonable interpretation standard in this proceeding, under
which we determined in the Decision to Institute that the term “input” does
not require a specific type of input. This interpretation is consistent with the
Specification, which teaches “[m]ain controller 432 receives input from data
stream interceptor 431 and determines whether an incoming data stream,
which may include command/control and/or data signals, is to be encrypted,
decrypted or passed through unmodified.” Ex. 1001, 4:55–58. The
Specification does not limit the described input to a type of information such
as that which distinguishes between signals. Based on the entire record
before us, we discern no reason to alter our claim construction for “input”
for this Final Written Decision.
IPR2014-00683
Patent 7,136,995 B1

16
4. “A cryptographic device operatively coupled between a data
generating device and a data storage device for use during data
transfer” (claim 13);
A cryptographic device integrated within a data storage device for
use during data transfer with a data generating device (claim 14);
and
A cryptographic device integrated within a data generating device
for use during data transfer with a data storage device (claim 15).
For the Decision to Institute, we concluded that the limitations recited
in the body of claims 13, 14, and 15 essentially are identical except for the
language of the preambles, which indicate the location of the cryptographic
device and provide the only difference in claim scope between claims 13,
14, and 15. Dec. to Inst. 13. We further determined that the preambles are
essential to understand the scope of claims 13, 14, and 15, and operate as
claim limitations. Id. In Patent Owner’s Response, Patent Owner reserved
the right to challenge our construction, but did not explain how the
preambles should be construed. PO Resp. 11. Accordingly, based on the
complete record before us, we maintain that the preambles of claims 13, 14,
and 15 are limiting.
D. Claims 1–13 – Obviousness over Nolan (Ex. 1002)
and SCSI-2 (Ex. 1003)
Petitioner argues claims 1–13 are unpatentable under 35 U.S.C.
§ 103(a) over Nolan and SCSI-2. Pet. 15–40. Patent Owner contests
Petitioner’s position. PO Resp.17–46. As explained below, we have
considered the arguments and evidence presented by both parties, and we
determine Petitioner has shown by a preponderance of the evidence that
claims 1–13 are unpatentable over Nolan and SCSI-2.
IPR2014-00683
Patent 7,136,995 B1

17
1. Summary of Nolan (Ex. 1002)
Nolan describes an apparatus for encrypting computer data before
storage. Ex. 1002, 5:1–2. Figure 1 (reproduced below) shows a block
diagram of an apparatus for encryption that is designed for use with tape
drives that use a Small Computer System Interface (SCSI). Id. at 8:8–10,
13–15.

Figure 1 shows encryption/decryption apparatus 10 connected to host
computer 12 and tape storage medium 11 via a SCSI BUS. Encryption and
decryption apparatus 10 includes host computer interface 15 and tape drive
interface 16 on respective sides. Ex. 1002, 8:25–26.
Encryption/decryption apparatus 10 includes an encryption block and
microprocessor 17. Under the control of the microprocessor 17, host
computer interface 15, tape drive interface 16, and the encryption block
transfer data to or from host memory buffer 18 or target memory buffer 19.
Id. at 8:27–9:8. Whether a particular memory block responds to a request
signal is controlled by microprocessor 17. Microprocessor 17 can switch on
IPR2014-00683
Patent 7,136,995 B1

18
and off the flow of data into and out of a particular memory buffer from a
particular source or destination. Id. at 9:13–18. Microprocessor 17 also sets
the encryption block to encrypt or decrypt, and transfers data through the
encryption block from a memory buffer. Id. at 9:25–6:2.
Additionally, Nolan’s Figure 2 shows a flow diagram of the main
program steps performed by microprocessor 17. Ex. 1002, 10:12–13. After
initiation 30 and 31, microprocessor 17 reads the common encryption key
stored on the tape and stores it in encryption/decryption apparatus 10. Id. at
10:14–16. “[M]icroprocessor 17 waits for a command to be sent from the
host computer, step 32” (“Wait for Input SCSI Command”). Id. at 10:17–
18. If the command involves tape movement, “the anticipated amount of
movement is calculated and stored, step 35.” Id. at 10:21–23. “The
microprocessor then ascertains whether any transfer of encrypted data is
required, steps 36 and 37.” Id. at 10:23–25. “If not, the command is
executed, step 38.” Id. “If it does involve the transfer of encrypted data
then the stored encryption key is modified by the current tape position, step
39.” Id. at 10:26–29.
2. Summary of SCSI-2 (Ex. 1003)
SCSI-2 describes SCSI as a local input/output (I/O) bus that can be
operated over a wide range of data rates. Ex. 1003, 35.6 “When two SCSI
devices communicate on the SCSI bus, one acts as an initiator and the other
acts as a target. The initiator originates an operation and the target performs
the operation.” Id. at 59.

6 All page numbers for SCSI-2 refer to the page number located in the
bottom, right-hand corner.
IPR2014-00683
Patent 7,136,995 B1

19
SCSI-2 discloses that the SCSI architecture includes eight distinct
phases: (a) BUS Free phase, (b) ARBITRATION phase, (c) SELECTION
phase, (d) RESELECTION phase, (e) COMMAND phase, (f) DATA phase,
(g) STATUS phase, and (h) MESSAGE phase. Ex. 1003, 68. SCSI-2 adds
that the SCSI bus “can never be in more than one phase at any given time.”
Id. SCSI-2 also refers to the COMMAND, DATA, STATUS, and
MESSAGE phases, collectively, as information transfer phases because
“they are all used to transfer data or control information via the DATA
BUS.” Ex. 1003, 71.
SCSI-2 also discloses that SCSI bus signals include an I/O signal, a
C/D (CONTROL/DATA) signal, and a MSG (MESSAGE) signal.
Ex. 1003, 61. The C/D signal is “driven by a target that indicates whether
CONTROL or DATA information is on the DATA BUS. True indicates
CONTROL.” Id. SCSI-2 further discloses “[e]ach signal driven by an SCSI
device shall have” a lower voltage of 0 to 0.5 volts for signal assertion and a
higher level voltage of 2.5 to 5.25 volts for signal negation. Id. at 54.
Additionally, the C/D, I/O and MSG signals are used to distinguish between
the different information transfer phases. Id. at 71. The “target drives these
three signals and therefore controls all changes from one phase to another.”
Id. Table 8 (reproduced below) shows the use of C/D, I/O, and MSG
signals. Id. at 72.
IPR2014-00683
Patent 7,136,995 B1

20

As shown in Table 8, during the DATA phase, the C/D signal
indicates False. Id. During the COMMAND phase, the C/D signal indicates
True. Id.
3. Analysis
Below we discuss independent claim 9, which is illustrative of
challenged claims 1–8 and 10–13. Claim 9 recites a cryptographic device
comprising “at least one data stream interceptor that distinguishes between
command/control and data signal transfers.” Ex. 1001, 6:46–47.
Petitioner asserts that Nolan’s disclosure of SCSI Interface 15
implemented using the details of SCSI-2 teaches this limitation. Pet. 19.
More particularly, Petitioner points to Figure 1 of Nolan to show all data
streams originating from host computer 12 travel over SCSI bus 13 and are
intercepted by SCSI Interface 15 when entering encryption/decryption
apparatus 10. Id. Petitioner further argues Nolan’s SCSI Interface 15
distinguishes between command/control signals and data signals by using
the C/D signal disclosed in SCSI-2. Id. at 20.
Additionally, Petitioner asserts a person of ordinary skill in the art
would have been motivated to combine Nolan’s cryptographic device with
SCSI-2, because Nolan explicitly teaches the use of SCSI to transfer data
IPR2014-00683
Patent 7,136,995 B1

21
between the host computer and the storage medium. Pet. 17 (citing Ex.
1002, 4:13–15). Petitioner’s declarant, Dr. Long, also testifies that:
The embodiment in Figure 1 of Nolan is implemented using
multiple “SCSI bus[es]” and “SCSI Interface[s]” 15 and 16.
(Id. at Figure 2.) The specification repeats that Nolan can be
implemented using “SCSI commands” (see Figure 2) and other
features detailed in the “SCSI-1 and SCSI-2” protocols (id. at
8:25). In my opinion, these teachings would have directed one
of ordinary skill to look to the SCSI-2 Specification for specific
details of how the SCSI protocol operates in Nolan.
Ex. 1006 ¶ 58.
Patent Owner argues that the combination of Nolan and SCSI-2 does
not teach a data stream interceptor that intercepts data streams and performs
the claimed distinguishing function. PO Resp. 17. Patent Owner first
asserts that Petitioner argues SCSI Interface 15 intercepts data streams
because data from host computer 12 travels over SCSI bus 13 and “pass
through” SCSI Interface 15. Id. at 18. Patent Owner contends that “passing
through” and “intercepting” are different functions in the context of the ’995
patent (id. at 19 (citing Ex. 2013 ¶ 83)), and intercepting the data stream as
claimed requires “examination of the data stream itself by, for example,
extracting some of the data in the data stream, which then allows the data
stream interceptor to distinguish which parts of the data stream are
command/control signal transfers and which parts of the data stream are data
signal transfers.” Id. at 19 (citing Ex. 2013 ¶ 84); Tr. 36:22–37:9.
In its Reply, Petitioner responds that it used the phrase “passing
through” in the Petition to describe that “all information [in Nolan] passes
through in the sense that the information arrives at SCSI interface, it’s
interpreted, reviewed, and acted on.” Reply 1; see Tr. 9:11–16. As an
IPR2014-00683
Patent 7,136,995 B1

22
example, Petitioner asserts that Nolan’s SCSI Interface 15 does not have a
bypass path and, therefore, intercepts all commands and sends them to the
microprocessor. Reply 2; see Tr. 8:20–22. During oral argument, Petitioner
clarifies that the ’995 patent teaches an “almost identical” manner of
interception in that the data stream interceptor intercepts commands and
sends them to the main controller. Tr. 8:17–20.
First, we do not agree with Patent Owner that the ordinary and
customary meaning of “intercept” requires examination of a data stream and
extraction of data in the data stream. See supra, Section II.C.1.,Claim
Construction. As discussed previously, we find that the ordinary and
customary meaning of “intercept,” is “to receive and act upon.” Consistent
with this interpretation, the Specification of the ’995 patent describes data
stream interceptor 431 as intercepting command/control signals, which are
transmitted to main controller 432. Ex. 1001, 4:61–64. Thus, the scope of
the term “intercept,” as described in the ’995 patent, encompasses receiving
command/control signals and transmitting those signals elsewhere such as
main controller 432. See id.
Second, turning to the disclosure in Nolan relied upon by Petitioner,
SCSI Interface 15 performs interception in nearly the same manner as
described by the ’995 patent, namely, by receiving information from host
computer 12 through SCSI bus 13 and transmitting data to host memory
buffer 18 and commands to microprocessor 17. Ex. 1002, Fig. 1, 8:27–9:1.
Moreover, according to Patent Owner and Patent Owner’s declarant, Dr.
Thomas Conte, “Nolan discloses that commands are sent to the
microprocessor 17 and that data is sent to host memory buffer 18.” Ex. 2013
¶ 95 (citing Ex. 1002, 10:14–18, 5:9–19); PO Resp. 33. Thus, based on the
IPR2014-00683
Patent 7,136,995 B1

23
complete record, we agree with Petitioner that Nolan discloses a “data
stream interceptor” that receives information and then transmits commands
to a microprocessor and transmits data to a memory buffer.
Alternatively, Petitioner asserts that one of ordinary skill in the art
would have understood that SCSI Interface 15 is adapted to route signals
from entering data streams to internal registers for temporary storage and
then to different locations within apparatus 10. Reply 1–2 (citing Ex. 1006
¶¶ 76–78); Tr. 11:14–12:9. Petitioner relies on the testimony of Dr. Long
and Exhibits 1017 and 1019 to show that a person of ordinary skill in the art
would have possessed this background knowledge at or around the time the
application leading to the ’995 patent was filed. Reply 1–2 (citing Ex. 1006
¶¶ 76–77). Patent Owner contends that Nolan does not provide this
disclosure. PO Resp. 33–34. Despite Patent Owner’s contention to the
contrary, we credit the testimony of Dr. Long and the disclosures in Exhibits
1017 and 1019 and we find that knowledge of temporary registers may be
imputed to a hypothetical person of ordinary skill for purposes of an
obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed.
Cir. 2013) (non-applied art or evidence may be considered as background
information known to a person of ordinary skill in the art). Accordingly,
based on Petitioner’s alternative reasoning, we also agree that Nolan
discloses a “data stream interceptor.”
Next, Patent Owner argues that the combination of Nolan and SCSI-2
does not teach the distinguishing function of the “data stream interceptor.”
PO Resp. 19–34. Patent Owner argues that the selection of “Information
Transfer Phases,” as described in SCSI-2, by Nolan’s SCSI Interface 15 does
not distinguish between command/control and data signal transfers because
IPR2014-00683
Patent 7,136,995 B1

24
SCSI Interface 15 presumes the incoming signals will correspond to the
information transfer phase that has been selected previously. PO Resp. 20–
22 (“SCSI Interface 15 knows, based on the information transfer phase it has
set, what kind of signal is incoming and can act accordingly. It need not
‘distinguish’ between signal types when that signal has already been divided
into neat buckets for it.”); Tr. 40:20–23 (“We think that SCSI interface 15 is
commanding or setting the data transfer phase, and that it does not do any
distinguishing through these voltages.”).
Patent Owner further argues that, during a SCSI data transmission, the
selection of an information transfer phase, such as COMMAND or DATA
(represented by a C/D signal) on a control wire, is subsequently followed by
the transmission of a data stream on the DATA BUS. PO Resp. 22–24.
Specifically, Patent Owner argues that SCSI-2 teaches the transmission of a
data stream over the DATA BUS does not occur until after the C/D signal is
set (information transfer phase selected) and a REQ/ACK handshake
protocol is satisfied. Id. at 23–24. Patent Owner asserts that the C/D signal
on the control wire is not part of the data stream that is transferred over the
DATA BUS cables and SCSI Interface 15 cannot distinguish command or
control signals in the data stream from the data signals because there is no
data stream at the time the C/D signal is driven by SCSI Interface 15. Id. at
23–24.
In response, Petitioner argues that the claims do not restrict how or
when distinguishing may occur and that SCSI Interface 15 distinguishes the
type of incoming signal based on the information transfer phrase selected.
Reply 4–6 (“The ’995 Patent places no restrictions on which signals may be
used to perform the distinguishing function, and provides no particular
IPR2014-00683
Patent 7,136,995 B1

25
method for distinguishing.”). Petitioner adds that, “even if a timing
limitation were justified, the SCSI-2 Specification teaches that the C/D
signals are maintained throughout each phase so that Nolan’s SCSI Interface
15 continues to distinguish command/control signals from data signals as
those signals travel on the DATA BUS.” Id. at 5 (citing Ex. 1003, 71 n.25,
431, Fig. A1).
We agree with Petitioner and find that the ordinary and customary
meaning of “distinguishes,” as recited in claim 9, does not require a specific
manner of distinguishing. See supra Section II.C.1., Claim Construction.
For example, the claim language does not require the recited data stream
interceptor to distinguish command/control signals and data signals by using
signals in the data stream. Further, the claim language does not impose a
timing requirement as to when the distinguishing must or cannot occur.
Additionally, Patent Owner asserts that SCSI-2 does not distinguish
between command/control signals and data signals because the SCSI-2 does
not distinguish user data from non-user data. PO Resp. 26–29. Patent
Owner argues that the use of the term “DATA” in SCSI-2 is not the same as
the “data signals” recited in the claims of the ’995 patent because both user
data and non-user data are transferred during the “DATA” phase. PO Resp.
26–27 (citing Ex. 2013 ¶¶ 73, 93). Patent Owner’s declarant, Dr. Conte,
further testifies that SCSI-2 discloses
certain commands, such as INQUIRY, result in “data” sent
across the bus during a DATA phase that is not in fact user data
but other data, which Dr. Long defines as a control signal
(responsive to the inquiry from another device). In the case of
INQUIRY, it includes information about the SCSI target’s
capabilities as well as vendor information. See supra ¶ 73.
This is clearly not user data or data signals as claimed. Second,
there are commands in the SCSI-2 protocol that include
IPR2014-00683
Patent 7,136,995 B1

26
parameters that are sent from the initiator to the target during
the DATA OUT phase, such as the COPY command. A person
of ordinary skill in the art would consider these command
parameters as “command signals,” rather than “data signals,”
within the meaning of the ’995 patent.
Ex. 2013 ¶ 93. Patent Owner adds that Nolan also does not distinguish
between user data and non-user because it discloses an embodiment in which
all data sent through the data bus would be encrypted, including commands.
PO Resp. 29 (citing Ex. 1002, 12:18–20). Patent Owner further argues that
Petitioner’s declarant, Dr. Long, has not explained sufficiently how a skilled
artisan would distinguish between user data and non-user data based on
Nolan and SCSI-2. Id. at 28.
In response, Petitioner asserts that the ’995 Patent “requires only that
the interceptor be adapted to distinguish command or control signals from
data signals—i.e., user data—in at least one data stream, which SCSI
Interface 15 does in the data streams for the READ(6) and WRITE(6)
operations using the C/D line, as discussed above.” Reply 6. Petitioner
further contends that Patent Owner’s citation to an alternative embodiment
in Nolan does not diminish Nolan’s disclosure of other embodiments where
SCSI Interface 15 implemented with SCSI-2 would perform the claimed
distinguishing function. Id. at 7.
First, we agree with Petitioner that Nolan’s description of one
embodiment with complete encryption/decryption of data does not discount
Nolan’s concurrent disclosure of other embodiments in which
encryption/decryption is optional. See Ex. 1002, 5:20–28. Second, we agree
with Petitioner that the claim language “data stream interceptor that
distinguishes between command/control and data signal transfers” does not
IPR2014-00683
Patent 7,136,995 B1

27
require the interceptor to distinguish between user data and non-user date.
We also agree with Petitioner that SCSI-2’s READ(6) and WRITE(6)
operations describe at least one instance where information transfer phases
distinguish between command/control signals and data signals. Pet. 19
(citing Ex. 1006 ¶¶ 99–107); Reply 6 n.2, 8 n.3 (citing Ex. 1006 ¶ 105;
Ex. 1029, 61:10–17; 62:6–23; 67:6–11; 68:1–10.
A better understanding of SCSI-2’s READ(6) and WRITE (6)
operations can be derived by looking at, for example, Table 22 of SCSI-2
reproduced below.

Table 2 shows the command block of READ(6). Ex. 1003, 197. During
cross-examination, Patent Owner’s declarant, Dr. Conte, testified that the
READ(6) command block, shown in Table 22, is an example of a SCSI-2
command used to transfer user data from a storage device to a host
computer. Ex. 1029, 61:10–17. Dr. Conte further testified that “there’s no
additional parameters to the READ(6) command beyond what’s in the 6
bytes in the command block.” and that the READ(6) command is sent during
the command phase of a data transfer operation. Id. at 62:6–63:7. Dr. Conte
also agreed that user data would be sent in a data phrase of the data transfer
operation. Id. at 63:8–15. Additionally, Dr. Conte acknowledged that the
fourth paragraph on page 102 of SCSI-2 describes: (1) an example of a
single SCSI-2 command, such as a READ command; and (2) transfer of the
command descriptor block during the COMMAND phase and transfer of
IPR2014-00683
Patent 7,136,995 B1

28
data during the DATA IN phase. Id. at 65:7–66:17. Thus, we agree with
Petitioner that operation of the READ(6) command involves the selection of
COMMAND phase to transmit the READ command and the selection of the
DATA IN phase to transmit data.
At the oral hearing, Patent Owner argued that the Petition did not
contain the READ(6) and WRITE(6) arguments because Petitioner relied
generally on the C/D wire “theory” without limiting that theory to read or
write commands. Tr. 47:12–48:12. However, when discussing how Nolan’s
SCSI Interface 15 is capable of distinguishing between command/control
signals and data signals on page 19 of the Petition, Petitioner refers to
paragraphs 99–107 of Dr. Long’s declaration. The relevant portion of
paragraph 105 states:
when data is being sent from the host computer, encrypted, and
written on the tape drive, SCSI Interface 15 distinguishes the
“write” command sent from the host computer from data sent
from the host computer. Likewise, when data is being read
from the tape drive, decrypted, and sent to the host computer,
SCSI Interface 15 distinguishes the “read” command sent from
the host computer from data.
Ex. 1006 ¶ 105.
Moreover, Patent Owner was given an opportunity to address the
READ(6) and WRITE(6) arguments at the oral hearing. Tr. 47:12–51:23.
At the oral hearing, Patent Owner argued that Petitioner’s theory that SCSI-
2’s C/D wire distinguishes between command/control and signals and data
signals is not supported by the description of the READ(6) and WRITE(6)
commands because SCSI-2 discloses other commands, i.e., INQUIRY and
COPY commands, where command signals are transmitted during the
DATA phase. Tr. 47:3–50:9. We do not agree with Patent Owner’s
IPR2014-00683
Patent 7,136,995 B1

29
arguments because, as discussed above, Petitioner has explained sufficiently
that SCSI-2 teaches the C/D wire distinguishes command/control and data
signal for at least one data stream, which is shown in SCSI-2’s READ(6)
and WRITE(6) operations.
In the Patent Owner Response, Patent Owner further argues that
SCSI-2’s INQUIRY and COPY commands demonstrate that the status of the
C/D wire cannot distinguish between data signals and control/command
signals sent during a DATA phase. PO Resp. 30–33. Patent Owner
additionally argues that Petitioner’s reliance on temporary registers for the
distinguishing functionality is not supported by the references. Id. at 33–34.
We do not agree with Patent Owner’s arguments. Instead, upon considering
the complete record before us, we agree with Petitioner that the operation of
SCSI-2’s READ(6) and WRITE(6) commands teaches sufficiently how the
signal of the C/D wire distinguishes between data signals and
control/command signals.
Claim 9 further recites “a main controller receiving input from said at
least one data stream interceptor and determining whether incoming data
would be encrypted, decrypted or passed through based on the received
input from said at least one data stream interceptor.” Ex. 1001, 6:48–52.
Petitioner argues Nolan’s disclosure of microprocessor 17 receiving
input from SCSI Interface 15 meets this limitation. Pet. 23–24. Petitioner
explains that Nolan’s Figure 1 shows that microprocessor 17 receives input
from SCSI Interface 15. Id. at 24. Petitioner’s declarant, Dr. Long, adds
“SCSI bus 13 connects host computer 12 to SCSI Interface 15 and transfers
data through SCSI bus 13 using the SCSI protocol.” Ex. 1006 ¶ 124 (citing
Ex. 1002, Fig. 1, 4:17–26). Petitioner further argues Figure 2 of Nolan
IPR2014-00683
Patent 7,136,995 B1

30
shows a flowchart with a “WAIT FOR INPUT SCSI COMMAND,” shown
as step 32. Pet. 24. Petitioner explains that microprocessor 17 receives the
input SCSI command from SCSI Interface 15, and “whenever input received
from SCSI Interface 15 indicates a data transfer (step 36), microprocessor 17
makes a determination as to whether encryption or decryption is required
(step 37).” Id. at 24–25.
Patent Owner argues Nolan’s microprocessor 17 does not determine
whether to encrypt or decrypt data based on a SCSI command received from
SCSI Interface 15. PO Resp. 35–36 (citing Ex. 2013 ¶ 101) (“That the
microcontroller 17 may make a determination of whether to encrypt or
decrypt ‘whenever input [is] received’ does not show that any such
determination is based on that input.”); Tr. 59:14–18. Referring to Figure 2
of Nolan, Patent Owner asserts Petitioner does not provide a link between
the alleged “input,” a host SCSI command, and the decision to encrypt
because tape movement is the only determination Nolan discloses as based
on the command, and whenever input received from SCSI Interface 15
indicates a data transfer (Fig. 2, step 36), microprocessor 17 makes a
determination as to whether encryption or decryption is required (Fig. 2, step
37). PO Resp. 36–37 (citing Ex. 1002, Fig. 2, 10:18–25). Additionally,
Patent Owner argues that Nolan does not describe how step 37, “ENC/DEC
REQUIRED?” (Ex. 1002, Fig. 2), is performed, but asserts that this step is
likely based on checking a configuration setting provided by a user (e.g.,
through keypad 21). PO Resp. 39–42. Patent Owner also refers to examples
disclosed in Detrick and Hamlin, describing encryption based on user
configured settings, as showing that one of ordinary skill in the art would not
have understood Nolan as teaching encryption based on the SCSI input
IPR2014-00683
Patent 7,136,995 B1

31
command. Id. at 41–42. Patent Owner further asserts that the INQUIRY
command disclosed in SCSI-2 demonstrates a command that may require
tape movement in Nolan without requiring encryption/decryption of the
control information. Id. at 37–38 (citing Ex. 2013 ¶ 102); Tr. 57:17–58:10.
In response, Petitioner argues “the only input in Figure 2 [of Nolan]
for the tape movement (step 33), data transfer (step 36), and
encryption/decryption of the transferred data (step 37) is the SCSI command,
indicating that each decision is based on the SCSI command.” Reply 11
(citing Ex. 1002, Fig. 2).
We agree with Petitioner that Nolan sufficiently teaches
microprocessor 17 determines “whether incoming data would be encrypted,
decrypted or passed through based on the received input from said at least
one data stream interceptor” because the claim language does not require
that the recited determination is based directly or wholly on the received
input (i.e., SCSI command at step 32). Figure 2 of Nolan is reproduced
below.
IPR2014-00683
Patent 7,136,995 B1

32

Figure 2 shows a flow diagram of the main program steps controlling
the microprocessor 17. Ex. 1002, 6:12–13 (emphasis added). Figure 2
indicates, at step 32, microprocessor 17 waits for a SCSI command to be
sent from the host computer. Id. at 6:17–18. If the SCSI command requires
tape movement (step 33), microprocessor 17 continues to step 35 to
determine the amount of tape movement, and then to steps 36 and 37 to
“ascertain[] whether any transfer of encrypted data is required.” Id. at 6:21–
IPR2014-00683
Patent 7,136,995 B1

33
25. Accordingly, microprocessor 17 may perform step 37, “ENC/DEC
REQUIRED,” only after microprocessor 17 receives the SCSI command at
step 32, and determines the SCSI command involves tape movement at step
33 and data transfer at step 36. Although encryption or decryption
determination at step 37 does not occur directly after step 32, receipt of the
SCSI command prompts microprocessor 17 to determine whether to perform
steps 33 and 35–37.
Furthermore, we do not agree with Patent Owner’s arguments
regarding SCSI-2’s INQUIRY command, Nolan’s alternative embodiment
(e.g., keypad 21), or Detrick and Hamlin’s teachings. As Patent Owner
acknowledges, these arguments are based on “speculation,” which we do not
find detracts from or otherwise undermines Nolan’s description of the
embodiment shown in Figure 2. See Tr. 61:6–8.
Patent Owner further argues that based on the claim construction
adopted by the district court in Enova v. WD, Nolan does not teach that the
SCSI command is “input” that distinguishes between command/control and
data signal transfers. PO Resp. 42–43. We have not adopted Patent
Owner’s construction for “input” and, therefore, do not agree that Nolan
must teach a microprocessor receives input resulting from the distinguishing
function performed by the data stream interceptor.
Claim 9 also recites
at least one data generating controller adapted to perform
at least one data transfer protocol with at least one data
generating device on command from said main controller;
IPR2014-00683
Patent 7,136,995 B1

34
at least on data storage controller adapted to perform at
least one data transfer protocol with at least one data storage
device on command from said main controller[.]
Ex. 1006, 6:53–60.
Petitioner argues that SCSI Interface 15 and 16 meet these limitations,
because Nolan teaches that host computer interface 15 (also called SCSI
Interface 15) “can, under the control of the microprocessor 17, transfer data
directly to or from a host memory buffer 18,” and SCSI Interface 16
transfers data between the tape storage medium and host memory buffer or
target memory buffer under the control of microprocessor 17. Pet. 26 (citing
Ex. 1002, 8:27–9:1). More specifically, Petitioner argues that Figure 1 of
Nolan teaches that data transfers from memory buffers 18 and 19 by SCSI
Interfaces 15 and 16 continue to the host computer and target. Reply 12–13.
Petitioner further asserts that SCSI Interface 15 performs a data transfer
protocol with the data generating device (host computer 12) on command
from the main controller (microprocessor 17). Pet. 26 (citing Ex. 1002, Fig.
1, 4:17–26; Ex. 1006 ¶ 124). Petitioner also explains that “SCSI Interface
16 in Nolan (also called target tape drive interface 16), when implemented
using the SCSI-2 Specification, performs a data transfer protocol with the
data storage device (tape storage medium 11) on command from the main
controller (microprocessor 17).” Pet. 27 (citing Ex. 1006 ¶ 128).
Patent Owner argues that Nolan does not teach SCSI Interface 15 is a
data generating controller that performs a data transfer protocol with a data
generating device because Nolan only describes moving data to internal
memory buffers. PO Resp. 44 (citing Ex. 2012, 143:3–25; Ex. 2013 ¶ 108).
For similar reasons, Patent Owner contends Nolan does not teach SCSI
IPR2014-00683
Patent 7,136,995 B1

35
Interface 16 is a data storage controller that performs a data transfer protocol
with a data storage device. PO Resp. 45–46.
We agree with Petitioner’s position. During cross-examination,
Patent Owner’s declarant, Dr. Conte, confirmed that SCSI Interfaces 15 and
16 communicate with the host computer and tape drive. Ex. 1029, 77:7–
82:10; see Ex. 2013 ¶ 54. Moreover, we agree with Petitioner that Nolan’s
Figure 1, and accompanying description, discloses the use of the SCSI
protocol with SCSI Interface 15 and 16 to communicate with memory
buffers and the host computer 12 and tape storage medium 11, respectively.
For example, Nolan teaches that host computer 12 is connected by SCSI
cable 13 to encryption/decryption apparatus 10. Ex. 1002, 4:17–21. Nolan
further teaches that SCSI Interface 15, under the control of microprocessor
17, can transfer data into or out of memory buffer 18. Id. at 4:25–5:1. As
shown in Figure 1, data from host computer 12 can be transferred to memory
buffer 18 via SCSI bus 13 and SCSI Interface 15. Id. at Fig. 1. Similar
operations are disclosed for SCSI Interface 15, memory buffer 19, and tape
storage medium 11.
Claim 9 also recites “at least one cipher engine adapted to
transparently encrypt or decrypt at least one data stream between said at
least one data generating device and said at least one data storage device on
command from said main controller.” Ex. 1001, 6:61–64. Petitioner argues
“Nolan discloses a cipher engine—encryption block 20—situated within
Nolan’s cryptographic device (‘apparatus 10’) between the data generating
device (host computer 12) and the data storage device (tape storage medium
11).” Pet. 29. Petitioner’s declarant, Dr. Long, testifies that encryption
block 20 performs data transfers transparently, because “[l]ike the cipher
IPR2014-00683
Patent 7,136,995 B1

36
engine in the ’995 Patent, Nolan’s encryption block 20 has its own dedicated
microprocessor 17 as part of the encryption/decryption apparatus 10,” and
“Nolan’s cryptographic device also uses the SCSI bus lines 13 and 14 that
normally would have connected the host computer 12 directly to tape storage
medium 11 without alteration.” Id. at 30 (quoting Ex. 1006 ¶ 133). Patent
Owner does not address separately the cipher engine limitation in its Patent
Owner Response. Applying our claim construction for the term
“transparently,” we are satisfied that the disclosure in Nolan meets the
cipher engine limitation.
Upon review of Petitioner’s evidence and analysis, and taking into
account Patent Owner’s secondary consideration arguments discussed
below, we determine that Petitioner has shown by a preponderance of the
evidence that claim 9 is unpatentable under 35 U.S.C. § 103 over Nolan and
SCSI-2. Further, Petitioner provides detailed explanations of how each
limitation of claims 2–13 is taught or suggested by the combination of Nolan
and SCSI-2. Pet. 31–40. Patent Owner does not address separately these
claims in its Patent Owner Response. See generally PO Resp. 17–46. We,
therefore, adopt Petitioner’s explanations and supporting evidence as our
own. Accordingly, we conclude after considering the complete record
(including Patent Owner’s secondary consideration arguments) that
Petitioner has established by a preponderance of the evidence that claims 2–
13 would have been obvious over Nolan and SCSI-2.
E. Claim 14 – Obviousness over Nolan, SCSI-2,
and Hamlin (Ex. 1004)
Petitioner argues claim 14 is unpatentable under 35 U.S.C.
§ 103(a) over Nolan, SCSI-2, and Hamlin. Pet. 40–44. Specifically,
Petitioner contends claims 13 and 14 contain the same limitations, except
IPR2014-00683
Patent 7,136,995 B1

37
that claim 14’s preamble recites “[a] cryptographic device integrated within
a data storage device for use during data transfer with a data generating
device.” Id. at 40 (emphasis added). As discussed above, we treat the
preamble of claim 14 as limiting. See supra Section II.C.1.,Claim
Construction. Patent Owner contests Petitioner’s position. PO Resp. 47–48.
As explained below, we have considered the arguments and evidence
presented by both parties, and we determine Petitioner has shown by a
preponderance of the evidence that claim 14 is unpatentable over Nolan,
SCSI-2, and Hamlin.
1. Summary of Hamlin (Ex. 1004)
Hamlin is directed to the “need for a disk drive comprising a tamper
resistant cryptosystem which is protected from an attacker employing chosen
plaintext attacks.” Ex. 1004, 2:3–5. Hamlin discloses “[a] disk drive
comprising a disk for storing encrypted data.” Ex. 1004, Abstract. Hamlin
teaches second circuit 100, including encryption circuitry 110, that is housed
within the disk drive. Id. at 2:66–3:3, Fig. 1.
2. Analysis
Petitioner argues Hamlin discloses encryption circuitry 110 connected
to interface 104, which is “connected to receive user data from a host
computer.” Pet. 44 (citing Ex. 1004, Fig. 2, 4:18–22). Petitioner further
asserts encryption circuit 110 is housed within disk drive, which is a data
storage device. Id. at 43. Petitioner asserts that a person of ordinary skill in
the art would have recognized the physical security of Nolan’s cryptographic
device (implemented using the SCSI-2 Specification), and particularly
access to Nolan’s SCSI bus, could be enhanced by housing Nolan’s
cryptographic device within a storage device, as taught by Hamlin. Id. at 44.
IPR2014-00683
Patent 7,136,995 B1

38
Patent Owner argues that Nolan and SCSI-2 does not disclose the
recited data stream interceptor or main controller, and Hamlin does not
supply the missing teaching. PO Resp. 47. For the same reasons discussed
above with respect to claim 9, we agree with the Petitioner that the teachings
in Nolan and SCSI-2 satisfy the data stream interceptor and main controller
limitations recited in claim 14.
IPR2014-00683
Patent 7,136,995 B1

39
Patent Owner further contends that Nolan teaches the use of a keypad
and display to configure apparatus 10 for encryption, and a person of
ordinary skill in the art would not have combined a keyboard and display
with Hamlin’s disk drive (e.g., Figure 3 of Hamlin) because this would
require incorporating a keypad and display inside Hamlin’s circuit-based
system. PO Resp. 47–48. Patent Owner also argues that Hamlin teaches
away from using a keypad to enter a cryptographic key because this
introduces potential vulnerabilities into Hamlin’s system. Id. at 48.
Claim 14, however, does not require a keyboard or display, and
Petitioner has not proposed the use of a keyboard or display with Hamlin’s
system. Petitioner explains that Hamlin teaches housing encryption circuitry
within a disk drive improves system security, and that, based on this
teaching, one of ordinary skill in the art would have recognized the security
benefits of locating Nolan’s cryptography device within a storage device.
Pet. 44 (citing Ex. 1006 ¶ 177–178). Moreover, “[i]t is well-established that
a determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements,” but instead
turns on “whether the claimed inventions are rendered obvious by the
teachings of the prior art as a whole.” In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012).
Accordingly, upon review of Petitioner’s evidence and analysis, and
taking into account Patent Owner’s secondary consideration arguments
discussed below, we determine that Petitioner has shown by a preponderance
of the evidence that claim 14 is unpatentable under 35 U.S.C. § 103 over
Nolan, SCSI-2, and Hamlin.
IPR2014-00683
Patent 7,136,995 B1

40
F. Claim 15 – Obviousness over Nolan, SCSI-2,
and Detrick (Ex. 1005)
Petitioner argues claim 15 is unpatentable under 35 U.S.C. § 103(a)
over Nolan, SCSI-2, and Detrick. Pet. 44–49. Specifically, Petitioner
contends claims 13 and 15 contain the same limitations, except that claim
15’s preamble recites “a cryptographic device integrated within a data
generating device for use during data transfer with a data storage device.”
Id. at 45 (emphasis added). As discussed above, we treat the preamble of
claim 15 as limiting. See supra Section II.C.1.,Claim Construction. Patent
Owner contests Petitioner’s position. PO Resp. 48–50. As explained below,
we have considered the arguments and evidence presented by both parties,
and we determine Petitioner has shown by a preponderance of the evidence
that claim 15 is unpatentable over Nolan, SCSI-2, and Detrick.
1. Summary of Detrick (Ex. 1005)
Detrick is directed to “implementing encryption and decryption of
data stored from a computing system to a storage medium.” Ex. 1005, 1:9–
10. Figure 1 (reproduced below) shows an “embodiment of a computing
system implementing encryption/decryption capabilities.” Id. at 2:61–63.
IPR2014-00683
Patent 7,136,995 B1

41

Figure 1 shows computing system 10 with processor 12 and drive
controller 20. “The hardware encryption and decryption could be either in
the drive controller 20 (as shown), or in the drive itself.” Id. at 3:50–52.
Detrick states driver controller 20 can “regulate the flow of data to and from
a disk drive, floppy drive, etc.” Id. at 3:65–67. Detrick discloses
“[c]ommon types of drive controllers include . . . SCSI.” Id. at 4:1–2.
2. Analysis
Petitioner asserts Figure 1 of Detrick shows encryption/decryption
hardware housed within a data generating device. Pet. 48. Petitioner’s
declarant, Dr. Long, testifies:
[a] person of ordinary skill in the art at the time of the filing of
the ’995 Application would have recognized from the teachings
of Detrick that the physical security of Nolan’s cryptographic
IPR2014-00683
Patent 7,136,995 B1

42
device (implemented using the SCSI-2 Specification), and
particularly access to Nolan’s SCSI bus, could be enhanced by
housing Nolan’s cryptographic device within a data generating
device such as a computer.
Id. at 48–49 (quoting Ex. 1006 ¶ 193).
Patent Owner argues again that Nolan and SCSI-2 does not disclose
the recited data stream interceptor or main controller, and Hamlin does not
supply the missing teaching. PO Resp. 49–50. Similarly, Patent Owner
asserts that one of ordinary skill in the art would not place Nolan’s apparatus
10 with keyboard and monitor inside a host computer. Id. at 49.
For the same reasons discussed above with respect to claims 9 and 14,
we agree with Petitioner that the teachings in Nolan and SCSI-2 satisfy the
data stream interceptor and main controller limitations recited in claim 15.
We also find that Petitioner has explained sufficiently how the combination
of Nolan, SCSI-2, and Detrick teach or suggest the remaining limitations of
claim 15. Based on the current record, and taking into account Patent
Owner’s secondary consideration arguments discussed below, we determine
Petitioner has demonstrated by a preponderance of the evidence that claim
15 would have been obvious over Nolan, SCSI-2, and Detrick.
G. Secondary Considerations
As discussed above we have determined that: (1) Nolan and SCSI-2
teach or suggest the subject matter recited in claims 1–13; (2) Nolan, SCSI-
2, and Hamlin teach or suggest the subject matter recited in claim 14; and (3)
Nolan, SCSI-2, and Detrick teach or suggest the subject matter recited in
claim 15. Nonetheless, our inquiry continues because Patent Owner argues
that secondary considerations in the form of industry praise, commercial
IPR2014-00683
Patent 7,136,995 B1

43
success, copying, and licensing establish the nonobviousness of claims 1–15.
PO Resp. 50–59.
Secondary considerations, when present, must always be considered
as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling,
Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
one with ordinary skill in the art at the time of the patent’s invention, the
totality of the evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the challenged claims would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unsolved need, failure of others,
unexpected results, commercial success, copying, licensing, and praise. See
Graham, 383 U.S. at 17–18; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
To be relevant, evidence of nonobviousness must be reasonably
commensurate in scope with the claimed invention. In re Huai-Hung Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011) (citing In re Tiffin, 448 F.2d 791, 792
(CCPA 1971)); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
More fundamentally, to be accorded substantial weight, there must be a
nexus between the merits of the claimed invention and the evidence of
secondary considerations. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir.
1995). “Nexus” is a legally and factually sufficient connection between the
IPR2014-00683
Patent 7,136,995 B1

44
objective evidence and the claimed invention, such that the objective
evidence should be considered in determining nonobviousness. Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988). The burden of showing that there is a nexus lies with the Patent
Owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
1. Industry Praise
Patent Owner argues that its line of encryption ASCIs “X-Wall”
products (i.e., X-Wall SE, Enigma, IDE-to-IDE version X-Wall CO, SATA-
to-SATA version X-Wall MX, and SATA-to-USB version X-Wall FX)
embody the claimed invention of the ’995 patent, and have generated
industry praise. PO Resp. 52–53 (citing Ex. 2013 ¶ 127). We have
reviewed the materials and find that Patent Owner has not established a
sufficient nexus between the claimed cryptographic device and the alleged
industry praise of Patent Owner’s products.
First, Patent Owner asserts that
Rocstor, a provider of fast, high-capacity data storage and
encryption security solutions, describes Enova as “a leading
ASIC design engineering company focused on bringing
innovative encryption security solutions to market” and praises
“Enova’s leading-edge hardware based encryption products
address the increasing requirement for privacy and
confidentiality, satisfying the growing demand for maximum
security.”
PO Resp. 52 (citing Ex. 2018, 1). Although Exhibit 2018 discusses general
features of Patent Owner’s X-Wall products, Patent Owner does not identify
any praise due to specific elements that are recited in the challenged claims.
See PO Resp. 52–53; Ex. 2018.
IPR2014-00683
Patent 7,136,995 B1

45
Second, Patent Owner cites a 2002 Computerworld article that
allegedly praises Enova’s X-Wall SE product. PO Resp. 52. Patent Owner
asserts that Computerworld describes the X-Wall SE as sitting “between the
PC motherboard and the hard disk, encrypting all data flowing to the hard
disk,” and the operation of X-Wall SE as “transparent to the user.” PO
Resp. 52 (citing Ex. 2019, 1; see Ex. 2013 ¶ 123, Exs. 2029–2030).
As an initial matter, we do not agree the Computerworld article’s
description of the X-Wall SE product amounts to praise. Rather, the
Computerworld article simply describes the X-Wall SE’s: (1) location
between the PC motherboard and the hard disk; and (2) operation as
transparent. However, the article does not on its face attribute any
advantage or benefit to these features. Ex. 2019. Thus, we are not
persuaded that Exhibit 2019 provides praise for X-Wall SE. See Bayer
Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1377
(Fed. Cir. 2013) (finding that brief discussions of Patent Owner’s product in
journal articles “fall well short of demonstrating true industry praise”).
Furthermore, to the extent that the Computerworld article touts
advantages of the X-Wall SE product, Patent Owner does not does not
explain sufficiently where these product features are recited in the
challenged claims. For example, in his Declaration, Dr. Conte describes X-
Wall SE as performing transparent encryption, which requires “no special
software or changes to the host computer or disk drive.” Ex. 2013 ¶ 123
(citing Exs. 2037, 2030). However, Dr. Conte and Patent Owner do not
explain how the challenged claims require no special software or changes to
the host computer or disk drive. As an example, claim 9 recites “at least one
cipher engine adapted to transparently encrypt or decrypt at least one data
IPR2014-00683
Patent 7,136,995 B1

46
stream between said at least one data generating device and said at least one
data storage device on command from said main controller.” Ex. 1001,
6:46–47 (emphasis added). Nonetheless, Patent Owner has not explained
sufficiently how transparent operation, as described in the Computerworld
article, relates to the recited function of “transparently encrypt or decrypt.”
Moreover, even assuming the transparent operation discussed in the
Computerworld article describes “transparently” encrypting or decrypting,
as claimed, Petitioner has demonstrated that this feature, as discussed above,
is disclosed by Nolan. See Pet. 29–30 (citing Ex. 1006 ¶ 133). Under these
circumstances, any evidence of secondary considerations stems from what
was known in the prior art, so that there can be no nexus. Tokai Corp. v.
Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If [secondary
considerations are] due to an element in the prior art, no nexus exists.”).
Third, Patent Owner asserts its products embodying the invention of
the ’995 patent have received industry awards. PO Resp. 52. Patent Owner
argues that its Enigma I product received an Editor’s Choice Award and an
“Excellent” rating from PC Magazine for Enigma I’s “[s]imple, seamless
full-disk encryption for any USB mass storage device.” Id. at 52–53 (citing
Ex. 2013 ¶ 127; Ex. 2017, 1). Patent Owner also asserts that Enigma I won
a TAITRONICS Technology Innovation Award in 2012. Id. at 53 (citing
Ex. 2013 ¶ 127; Ex. 2015, 1). Additionally, Patent Owner asserts that its X-
Wall MX product was awarded a 2012 Business World Golden Bridge
Award in the Encryption Solutions Innovations category. PO Resp. 53
(citing Ex. 2020).
Turning first to the PC Magazine award, we do not agree that Patent
Owner has established a sufficient nexus between the “Editor’s Choice
IPR2014-00683
Patent 7,136,995 B1

47
Award”/“Excellent” rating of Enigma I and the claimed features of the ’995
patent. PC Magazine describes several “pros” and “benefits” of Enigma I,
including “[s]imple, seamless full-disk encryption for any USB mass storage
device.” Ex. 2017, 1. Patent Owner attributes the advantage of a “[s]imple,
seamless full-disk encryption for any USB mass storage device” to the
claimed elements of the ’995 patent, but does not explain specifically what
claimed features provide this advantage. In his declaration, Dr. Conte
testifies that Enigma’s encryption is “totally transparent,” as it uses the
patented methods of the ’995 patent. Ex. 2013 ¶ 127. However, Dr. Conte
does not indicate how “transparent” encryption relates to the “simple,
seamless full-disk encryption” discussed in the PC Magazine article. Id.
Moreover, even assuming Patent Owner and Dr. Conte attribute “simple,
seamless full-disk encryption” to transparent encryption, as claimed,
Petitioner has demonstrated that this feature, as discussed above, is disclosed
by Nolan. See Pet. 29–30 (citing Ex. 1006 ¶ 133).
We also are not persuaded by Patent Owner’s reliance on a
TAITRONICS Technology Innovation Award given to Enigma I or the
Business World Golden Bridge Award for X-Wall MX in 2012. Ex. 2015,
1; Ex. 2020, 6. Exhibit 2015 provides no discussion of the Enigma product
other than listing “Enigma” as a product receiving a TAITRONICS award.
Ex. 2015, 1. Similarly, for Business World Golden Bridge Award, Exhibit
2020 only lists X-Wall MX without any discussion or description of X-Wall
MX. Ex. 2020, 6. As a consequence, we are unable to determine whether
the Enigma product or X-Wall MX include features recited in the challenged
claims.
IPR2014-00683
Patent 7,136,995 B1

48
Fourth, Patent Owner relies on its previous business relationship with
Petitioner and Petitioner’s description of Petitioner’s own products as
evidence of industry praise. PO Resp. 54–56. Patent Owner argues that
Petitioner was aware of industry praise for Patent Owner’s products and
sought out Patent Owner’s assistance to bring hardware encryption products
to market. Id. at 53. Patent Owner further asserts that Petitioner purchased
Patent Owner’s X-Wall products and used them in Petitioner’s hard disk
drives, including Petitioner’s Momentus drive. Id. at 53–55 (citing Ex. 2027
¶¶ 15–17, Answer to Complaint). According to Patent Owner, by using
Patent Owner’s products, Petitioner touted and advertised the advantages of
hardware-based full disk encryption and transparent encryption. Id. at
(citing Exs. 2006–2008, 2013 ¶ 127; Ex. 2027 ¶¶ 15–19, 22). Patent Owner
further asserts that Petitioner extended the ’995 patent’s hardware encryption
technology to Petitioner’s BlackArmor product (id. at 56–57), and that
“Seagate’s chief technologist, Dr. Robert Thibadeau, praised the patented
hardware encryption technology Enova provided to Seagate” (id. at 54
(citing Ex. 2005, 3–6)).
To start, Patent Owner’s assertions are unpersuasive because Patent
Owner cites to unsubstantiated allegations made in its Complaint, from the
related district court proceeding between the parties, which Petitioner has
denied in a responsive Answer. PO Resp. 54–56 (citing Ex. 2005;
Ex. 2027). For example, in response to paragraph 17 of the Complaint,
Petitioner admitted that it published a press release on June 8, 2005,
describing its Momentus drive as having hardware-based full disk
encryption, but denied the other allegations of paragraph 17. Ex. 2027 ¶ 17.
Patent Owner has not cited to the underlying press release at issue in
IPR2014-00683
Patent 7,136,995 B1

49
paragraph 17, and we decline to comb through the submissions in this
proceeding to confirm the presence of the referenced press release in the
record and ascertain its contents.
As a further example, Patent Owner argues that Petitioner’s
statements regarding its “BlackArmor” product apply to claimed elements of
the ’995 patent. PO Resp. 56–57 (citing Ex. 2021, 1; Ex. 2027 ¶ 25).
Presumably, Patent Owner’s assertion is based on the allegation that
Petitioner’s BlackArmor product infringes the ’995 patent. Ex. 2005 ¶ 30.
Petitioner disputes Patent Owner’s allegations (Ex. 2027 ¶ 30) and Patent
Owner has not established that the BlackArmor product infringes the ’995
patent or incorporates any claimed elements of the ’995 patent.
Additionally, Patent Owner cites to Exhibit 2021, which shows
“BlackAmor” listed as a CES winner. Ex. 2021, 1. But Exhibit 2021
provides no discussion of the BlackAmor product features. Thus, Patent
Owner has not established that Black Armor received this award due to the
claimed elements of the ’995 patent.
Dr. Conte’s testimony also does not establish that the allegations
made in the Complaint and Answer of the related district court proceeding
establish nexus. Dr. Conte relies on unsubstantiated allegations in Patent
Owner’s Complaint that Dr. Thibadeau praised Patent Owner’s patented
hardware (Ex. 2005, 3–6); however, Petitioner has denied these allegations
(Ex. 2027 ¶ 14). Ex. 2013 ¶ 127. In addition, Dr. Conte confirmed in his
cross-examination testimony that he has not analyzed Petitioner’s products
other than reviewing Petitioner’s public statements and taking a photograph
of the Momentus drive. Ex. 1029, 118:25–120:11.
IPR2014-00683
Patent 7,136,995 B1

50
Next, we are not persuaded by Patent Owner’s contention that
Petitioner’s own statements regarding hardware-based encryption and
transparent encryption establish a nexus for industry praise of claimed
elements in the ’995 patent. PO Resp. 54–56 (citing Exs. 2006–2008). For
example, Patent Owner relies on the testimony of Dr. Conte to assert that
Petitioner’s statements regarding Petitioner’s own Momentus product
amount to industry praise of the claimed elements in the ’995 patent because
the “hardware-based encryption FDE feature” of the Momentus product is
accomplished through the claimed limitation of “whether incoming data
would be encrypted or passed through based on the received input,” and the
“transparency” feature of the product is provided by the “cipher engine
adapted to transparently encrypt.” PO Resp. 55 (citing Ex. 2013 ¶ 127).
However, Petitioner’s statements discussing its own products (e.g.,
Momentus) and are not attributed to Patent Owner’s encryption products or
any claimed element of the ’995 patent. Exs. 2007–2008, 2013. Further, as
discussed above, Dr. Conte admitted during cross-examination that he has
not conducted an analysis of Petitioner’s hard disk drive products with
encryption beyond considering Petitioner’s “public statements” and
removing the cover of one of Petitioner’s device to take a “picture” of it.
Ex. 1029, 118:25–120:11.
With respect to the referenced “picture,” we also do not agree that Dr.
Conte’s “picture” establishes a sufficient nexus. The “picture” is shown as
photos at paragraph 127 of Dr. Conte’s declaration. Ex. 1029, 118:25–
120:2. In one of the photos, we discern a chip bearing the description
“Enova X-Wall CO.” Ex. 2013 ¶ 127. Dr. Conte testifies that “X-Wall CO
is a revised version of the X-Wall SE . . . [and] [l]ike the SE, it practices the
IPR2014-00683
Patent 7,136,995 B1

51
claimed transparent encryption of the ’995 patent.” Id. ¶ 124. In describing
X-Wall SE, Dr. Conte testifies that it “intercepts IDE data streams and
transparently encrypts the data. As it performs the transparent encryption of
the invention, it requires no special software or changes to the host computer
or disk drive.” Id. ¶ 123 (citing Ex. 2030, 2; Ex. 2037, 3). Dr. Conte’s
descriptions of both X-Wall SE and X-Wall CO do not explain how the
challenged claims recite performing transparent encryption with “no special
software or changes to the host computer or disk drive.” Ex. 2013 ¶¶ 123–
124.
Moreover, even assuming that Petitioner’s statements are attributable
to claimed elements of hardware-based encryption and transparency,
Petitioner has demonstrated that these elements are disclosed in Nolan and
SCSI-2, as discussed above. Indeed, the ’995 patent itself acknowledges
that hardware-based encryption was known and conventional as of the filing
date. Ex. 1001, 1:35–40. In addition, to the extent that Patent Owner asserts
that there is a difference between hardware-based encryption and hardware-
based full disc encryption, Patent Owner and Dr. Conte have not explained
sufficiently how such a difference establishes a nexus between Petitioner’s
Momentus product and the claimed invention of the ’995 patent. For
example, Petitioner’s presentation shown in Ex. 2007 describes several
features of full disc encryption including: (1) a closed encryption device for
which encryption cannot be turned off (id. at 3); (2) FDE functionality (id. at
6); and (3) “FDE Keys and IDs” (id. at 7). However, Patent Owner has not
explained sufficiently what aspects of full disc encryption are tied to the
claimed elements of the ’995 patent. See, e.g., Ex. 2007, 1–12.
IPR2014-00683
Patent 7,136,995 B1

52
Accordingly, based on the entire record, we determine that Patent
Owner has not established a sufficient nexus between the merits of the
claimed invention and industry praise of either Patent Owner’s products or
Petitioner’s products.
2. Commercial Success
As evidence of commercial success, Patent Owner relies on its
previous business relationship with Petitioner and Petitioner’s alleged praise
and advertisement of Patent Owner’s encryption devices. PO Resp. 53–57.
For the same reasons discussed above, we are not persuaded Patent Owner
has established a sufficient nexus between the merits of the claimed
invention and either Patent Owner’s own products or Petitioner’s products.
In addition, we are not persuaded by Patent Owner’s arguments
regarding the sales of Petitioner’s products constitute evidence of
commercial success. PO Resp. 56–57. Patent Owner asserts that: (1)
Petitioner’s “efforts to bring its FDE drives to market were successful
because of Enova’s key technological assistance and supply of X-Wall
ASICs”; (2) “[i]n February 2011, Seagate ‘announced that it has shipped
more than 1 million self-encrypting laptop and enterprise hard drives’”; and
(3) “Seagate further explained that ‘[s]ales of the Seagate® hard drives with
built-in encryption continue to surge as more computer makers offer the
drives to protect against unauthorized access to sensitive data.’” Id. at 56–
57 (citing Ex. 2009, 1; Ex. 2027 ¶ 26).
Initially, we note “[e]vidence of commercial success, or other
secondary considerations, is only significant if there is a nexus between the
claimed invention and the commercial success.” Ormco Corp. v. Align
Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). To show how
IPR2014-00683
Patent 7,136,995 B1

53
commercial success supports nonobviousness, Patent Owner must prove that
the sales were a direct result of the unique characteristics of the invention,
and not a result of economic and commercial factors unrelated to the quality
of the patented subject matter. In re Applied Materials, Inc., 692 F.3d 1289,
1299–1300 (Fed. Cir. 2012). In addition, “if the commercial success is due
to an unclaimed feature of the device,” or “if the feature that creates the
commercial success was known in the prior art, the success is not pertinent.”
Ormco, 463 F.3d at 1312; see also Huai-Hung Kao, 639 F.3d at 1070
(requiring a determination of “whether the commercial success of the
embodying product resulted from the merits of the claimed invention as
opposed to the prior art or other extrinsic factors”).
Here, Patent Owner fails to provide sufficient proof of such a
relationship between any alleged sales and the unique characteristics of the
invention embodied in the challenged claims. First, Patent Owner has not
established that the products described in Petitioner’s statements include
features claimed in the ’995 patent. PO Resp. 56–57. Patent Owner simply
relies on allegations made in the Complaint of the related district court
proceeding, which, as we explained above, Petitioner has denied. Id.; see
also Ex. 2027 ¶ 27 (denying infringement of the ’995 patent). Further,
Petitioner’s statements in Exhibit 2009 also do not establish that the sales of
Petitioner’s “self-encrypting laptop and enterprise hard drives” have any
relationship to the merits of the claimed invention. Additionally, Dr. Conte
admitted that he did not conduct any economic analysis of either Patent
Owner’s products or Petitioner’s products. Ex. 1029, 115:24–118:12;
120:13–25; 121:9–122:1.
IPR2014-00683
Patent 7,136,995 B1

54
Moreover, even if the Petitioner’s product sales are considered in the
context of commercial success, “evidence related solely to the number of
units sold provides a very weak showing of commercial success, if any.” In
re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). According to the Federal
Circuit, “the more probative evidence of commercial success relates to
whether the sales represent ‘a substantial quantity in th[e] market.’” Applied
Materials, 692 F.3d at 1300 (quoting Huang, 100 F.3d at 140). Patent
Owner offers no evidence of the size of the market to which to compare
Petitioner’s sales. Accordingly, we are not persuaded that Patent Owner’s
alleged objective indicia of commercial success shows non-obviousness.
3. Copying and Licensing
Patent Owner further argues that copying and licensing of the ’995
patent by others is objective indicia of non-obviousness. Specifically, Patent
Owner argues that Initio Corporation (“Initio”) marketed and sold infringing
products incorporating the patented invention of the ’995 patent to major
hard drive manufactures. PO Resp. 57–58 (citing Ex. 2004; Ex. 2032).
Patent Owner contends the resolution of Enova v. WD “confirms Initio’s
infringement of the ’995 patent” because “Initio admitted in a consent
judgment that its products practice the ’995 patent and further began
marking its products with the ’995 patent number.” Id. at 58 (citing
Ex. 2004, 2). Patent Owner additionally argues that Western Digital and
Buffalo, Inc. each incorporated Initio encryption circuits in their hard drives,
and that both parties entered agreements with Patent Owner to resolve their
disputes in Enova v. WD. Id. at 58–59 (citing Ex. 2024; Ex. 2042–45).
Patent Owner adds that both Initio and Western Digital license the ’995
patent from Patent Owner.
IPR2014-00683
Patent 7,136,995 B1

55
Patent Owner’s reliance on Initio’s consent judgement in Enova v.
WD does not establish that Initio copied the claimed invention or infringed
the ’995 patent based on the unique aspects of the claimed subject matter. It
is not sufficient that a product or its use merely be within the scope of a
claim in order for objective evidence of nonobviousness tied to that product
or use to be given substantial weight. Like other types of objective
evidence, evidence of copying must be shown to have nexus. Wm. Wrigley
Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir. 2012).
Moreover, a showing of copying is only equivocal evidence of
nonobviousness in the absence of more compelling objective indicia of other
secondary considerations. Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d
1361, 1380 (Fed. Cir. 2000). Copying could result from lack of concern
about patent property, contempt for the patent, or accepted practices in the
industry, among others. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1028 (Fed. Cir. 1985), overruled on other grounds by Midwest Indus.,
Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999).
We also are not persuaded by Patent Owner’s arguments regarding
licensing and settlement. Patent Owner relies on Exhibits 2042, 2043, and
2044. These exhibits are almost entirely redacted. In fact, they are redacted
to the point that even the parties involved in the agreements have been
obscured. Exs. 2042–44; Tr. 70:21–71:8. Thus, because we cannot verify
Patent Owner’s assertions regarding these agreements, we find that these
agreements do not provide objective evidence of nonobviousness.
4. Summary
Accordingly, on balance, we determine that Petitioner’s strong
evidence of obviousness, which includes that claims 1–13 would have been
IPR2014-00683
Patent 7,136,995 B1

56
obvious based on Nolan and SCSI-2; claim 14 would have been obvious
based on Nolan, SCSI-2, and Hamlin; and claim 15 would have been
obvious based on Nolan, SCSI-2, and Detrick, under 35 U.S.C. § 103(a),
outweighs the evidence of secondary considerations of nonobviousness
submitted by Patent Owner,
H. Petitioner’s Motion to Exclude
Petitioner seeks to exclude Exhibits 2004–2009, 2015, 2017–2032,
2037–2047, and paragraphs 117–130 of Exhibit 2013. Pet. Mot. Exclude 1.
In particular, Petitioner argues that Patent Owner “has failed to establish the
nexus necessary to show the relevance of this evidence.” Id. at 1–13. We
need not reach the merits of Petitioner’s Motion to Exclude because, as
explained above, even if the disputed evidence is considered, Patent Owner
has not shown that the evidence of secondary considerations of
nonobviousness it submitted outweighs the strong evidence of obviousness
presented by Petitioner. Accordingly, Petitioner’s Motion to Exclude is
dismissed as moot.
I. Patent Owner’s Motion to Exclude
Patent Owner asserts that Petitioner’s reliance on Exhibit 1028 in
Petitioner’s Reply improperly adds a new reference and new basis to
Petitioner’s obviousness challenges presented in the Petition and discussed
in the Board’s Decision to Institute. PO Mot. to Exclude 1–7. Patent Owner
seeks to exclude Exhibit 1028 because it asserts Petitioner was required to
present Exhibit 1028 earlier in the proceeding. Id. We do not rely on the
disputed evidence in rendering this Final Written Decision. Therefore,
Patent Owner’s Motion to Exclude is dismissed as moot.
IPR2014-00683
Patent 7,136,995 B1

57
J. Patent Owner’s Motion to Seal
Patent Owner filed a Motion to Seal Exhibits 2042, 2043, and 2044
under 37 C.F.R. § 42.54. Paper 23. In its Motion, Patent Owner asserts that
the redacted exhibits are “confidential” agreements reached between the
Patent Owner and third parties Initio, Western Digital, and Buffalo, Inc.,
each of which are not involved in this proceeding. Mot. to Seal 1. With its
Motion to Seal, Patent Owner filed confidential redacted versions of
Exhibits 2042, 2043, and 2044, but did not file confidential unredacted
copies of the same. Patent Owner indicated that it intended to file
unredacted versions of the agreements, but had not received the consent of
the third parties to do so. Mot. to Seal 2; See Tr. 70:21–71:7.
The standard for granting a motion to seal is “for good cause.”
37 C.F.R. § 42.54. Patent Owner, as the moving party, has the burden of
proof in showing entitlement to the requested relief. 37 C.F.R. § 42.20(c).
We need to know why the information sought to be sealed constitutes the
Patent Owner’s confidential information.
In reviewing the “confidential” version of these exhibits, we note that
each exhibit has been heavily redacted, leaving only a handful of lines per
each exhibit. As we explained in the oral hearing, these unredacted portions
do not provide sufficient detail to verify the contents of these exhibits. See,
e.g., Tr. 70:21–71:7. Thus, we cannot confirm Patent Owner’s assertions
regarding the confidentiality of these exhibits, nor can we grant Patent
Owner’s Motion to Seal for good cause. Accordingly, we deny Patent
Owner’s Motion to Seal Exhibits 2042, 2043, and 2044.
Additionally, Patent Owner has submitted a revised proposed
protective order (Ex. 2049) that reflects the terms of a protective order
IPR2014-00683
Patent 7,136,995 B1

58
entered in the parties’ co-pending district court proceeding. Mot. to Seal 3.
Patent Owner represents that it has conferred with Petitioner regarding the
terms of the proposed protective order; however, no agreement has been
made. Id.
We note that the Office Patent Trial Practice Guide states the
following concerning protective orders:
(a) Purpose. This document provides guidance on the procedures
for filing of motions to seal and the entry of protective orders in
proceedings before the Board. The protective order governs the
protection of confidential information contained in documents,
discovery, or testimony adduced, exchanged, or filed with the Board.
The parties are encouraged to agree on the entry of a stipulated
protective order. Absent such agreement, the default standing
protective order will be automatically entered.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48769 (Aug. 14,
2012) (App’x B (emphasis added)). As we cannot ascertain that the contents
of the redacted Exhibits 2042, 2043, and 2044 constitute the Patent Owner’s
confidential information, we do not grant Patent Owner’s request to enter its
proposed protective order. We do, however, enter the default Protective
Order provided in Appendix B of the Trial Practice Guide.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–15 of the ’995 patent are held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed as moot;
FURTHER ORDERED that Petitioner’s Motion to Seal is denied;
IPR2014-00683
Patent 7,136,995 B1

59
FURTHER ORDERED that the Board’s default Protective Order
appearing in the Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,769–
71 (Aug. 14, 2012), is hereby entered in this proceeding; and
FURTHER ORDERED that any party to the proceeding seeking
judicial review of this Final Written Decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

IPR2014-00683
Patent 7,136,995 B1

60
PETITIONER:
Richard M. Marsh, Jr.
Faegre Baker Daniels LLP
richard.marsh@faegreBD.com

Elizabeth Cowan Wright
Faegre Baker Daniels LLP
elizabeth.cowanwright@faegreBD.com

Christopher L. Larson
Faegre Baker Daniels LLP
chris.larson@faegreBD.com

Calvin L. Litsey
Faegre Baker Daniels LLP
calvin.litsey@faegreBD.com

David J.F. Gross
Faegre Baker Daniels LLP
david.gross@faegreBD.com

PATENT OWNER:

Hector Ribera
Fenwick & West LLP
hribera@fenwick.com

Robert Hulse
Fenwick & West LLP
rhulse@fenwick.com

Natu J. Patel
The Patel Law Firm, P.C.
npatel@thepatellawfirm.com