Trials@uspto.

gov
571-272-7822

Paper 8
Entered: December 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS INC.,

Petitioner,
v.
NOVOCRYPT LLC,
Patent Owner.
____________
Case IPR2015-01606
Patent 7,743,213 B2
____________

Before JENNIFER S. BISK, TREVOR M. JEFFERSON, and

DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108

IPR2015-01606
Patent 7,743,213 B2
I. INTRODUCTION
Unified Patents Inc. (Petitioner) filed a Petition (Pet.) requesting
inter partes review of claims 113 (all claims) of U.S. Patent No. 7,743,213
B2 (the 213 patent, Ex. 1001). Paper 1. Novocrypt LLC (Patent
Owner) did not file a Preliminary Response. We have jurisdiction under 35
U.S.C. 314 and 37 C.F.R. 42.4(a).
The standard for instituting an inter partes review is set forth in
35 U.S.C. 314(a), which provides:
THRESHOLDThe Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311
and any response filed under section 313 shows that there is a
reasonable likelihood that the petitioner would prevail with
respect to at least 1 of the claims challenged in the petition.
After considering the Petition and associated evidence, we conclude
that Petitioner has demonstrated a reasonable likelihood of prevailing in
showing unpatentability of all the challenged claims. Thus, we institute an
inter partes review as to claims 113 of the 213 patent.
A. Related Matters
Petitioner and Patent Owner indicate that the 213 patent was asserted
in eight lawsuits in the United States District Court for the Eastern District
of Texas. Pet. 2; Paper 6, 2. Patent Owner indicates that all of these
lawsuits have been resolved. Paper 6, 2.
B. Order to Show Cause
On October 6, 2015, a conference call was held to discuss Patent
Owners failure to file mandatory notices. On October 9, 2015, we issued an
Order to Show Cause (Paper 4) giving Patent Owner five days to show why
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adverse judgment under 37 C.F.R. 42.73(b) should not be entered. Patent
Owner subsequently filed its mandatory notices (Paper 6) and a response to
the Order to Show Cause (Paper 7). In its response to the Order to Show
Cause, Patent Owner indicated it intends to participate in the proceeding.
In view of the foregoing, we dismiss the Order to Show Cause. As a
result, adverse judgment against Patent Owner will not be entered at this
time. Patent Owner, however, is cautioned that future failures to participate
in this proceeding or meet deadlines as required by our Rules may be
considered an abandonment of the contest and be treated as a request for
entry of adverse judgment under 37 C.F.R. 42.73(b).
C. The 213 Patent (Ex. 1001)
The 213 patent generally relates to a portable storage device with
network functionality that manages access to files between an electronic
apparatus coupled to the storage device and a remote network host. Ex.
1001, Abstract.
D. Illustrative Claim
Claim 1 of the 213 Patent is an independent claim, and claims 213
depend directly or indirectly from claim 1. Claim 1 is reproduced below:
1.
A portable storage device with network function,
comprising:
an interface unit for coupling to an electronic apparatus;
a network unit located within the portable storage device
for linking with a remote network host;
a memory unit located within the portable storage device
providing access of data and temporarily storing data received
from the electronic apparatus; and
a processing unit located within the portable storage
device that receives instructions from the electronic apparatus
for controlling access of data between the memory unit and the
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Patent 7,743,213 B2
electronic apparatus with data transmission via the interface
unit, and access of data between the memory unit and a remote
network host with data transmission via the network unit,
wherein data is directly stored on the remote network host;
wherein the portable storage device with network
function is removably coupled to said electronic apparatus,
expanding storage capacity of the electronic apparatus.
Ex. 1001, 3:514:11.
E. Prior Art Relied Upon
Petitioner relies upon the following prior art references:
Walters et al.
US 2003/0030839 A1 Feb. 13, 2003
(hereinafter Walters)

Ex. 1006

Yao et al.
(hereinafter Yao)

US 7,600,000 B2

Oct. 6, 2009
(filed Sept. 2,
2005)

Ex. 1007

Lam et al.
(hereinafter Lam)

US 7,849,267 B2

Dec. 7, 2010
(filed June 30,
2006)

Ex. 1005

F. Asserted Grounds of Unpatentability

Petitioner challenges claims 113 of the 213 patent based on the
asserted grounds of unpatentability set forth in the table below.

1
2

Reference(s)

Basis

Claims Challenged

Lam
Walters and Yao

102(e)
103(a)

19, 12, 13
113

II. 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); In re Cuozzo Speed
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Patent 7,743,213 B2
Techs., LLC, 793 F.3d 1268, 127578 (Fed. Cir. 2015), rehg en banc
denied, 793 F.3d 1297 (Fed. Cir. 2015). In determining the broadest
reasonable construction, we presume that claim terms carry their ordinary
and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). This presumption may be rebutted when a patentee,
acting as a lexicographer, sets forth an alternate definition of a term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Petitioner proposes constructions for two terms of the 213 patent:
network driving unit for driving the network unit, as recited in claim 3,
and interface driving unit for driving the interface, as recited in claim 4.
See Pet. 1112. Citing a technical dictionary definition of driver,
Petitioner proposes to construe network driving unit and interface driving
unit to mean a software module that invokes, controls, or monitors the
network unit and the interface unit, respectively. Pet. 12. We are not
persuaded that the broadest reasonable interpretation of these terms requires
importation of the functions of invok[ing], control[ling], and
monitor[ing] from a technical dictionary. In addition, the portion of the
specification of the 213 patent cited by Petitioner does not provide any
guidance on the meaning of these terms in addition to what is in claims 3
and 4, which specify that these driving units are part of the operating
system and drive the network unit and the interface unit, respectively.
See Pet. 1112 (citing Ex. 1001, 2:4245).
For the foregoing reasons, we are not persuaded that the terms
identified by Petitioner are limited in the way Petitioner argues. These

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terms, as well as all remaining terms, need not be construed explicitly at this
time.
III. ANALYSIS
A. Anticipation Based on Lam
1. Lam
Lam generally relates to coupling a portable storage device to a
host computer and using network-extended storage to mask the underlying
capacity of the portable storage device. See Ex. 1005, 3:822.
2. Petitioners Contentions
Petitioner contends that claims 19, 12, and 13 are anticipated under
35 U.S.C. 102(e) by Lam. Pet. 1338. Petitioner provides detailed
analysis and claim charts to explain how Lam allegedly discloses the
claimed subject matter and relies upon the Declaration of Mr. Herbert Cohen
(Ex. 1003) to support its positions. Id. Petitioners analysis and claim chart
have not been addressed by Patent Owner at this stage of the proceeding.
a. Independent Claim 1
First, Petitioner argues that Lams disclosure of a host computer
that may be a laptop computer, a phone, a handheld or tablet computer, or a
PDA discloses a portable device. Pet. 15 (citing Ex. 1005, 6:3944; Ex.
1003 31). Petitioner also argues Lams host computer is a storage
device because it has memory, including RAM, ROM, and disk storage. Pet.
15 (citing Ex. 1005, 6:567:39, Fig. 2A). Petitioner also argues the host
computer is a portable storage device with network function, as claimed,
because it has a computer network interface 216 which provides a
communication interface to the computer network 112 over the computer
network connection 114. Pet. 1516 (quoting Ex. 1005, 7:2325).
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Next, Petitioner contends Lam discloses the host computer has an
interface unit for coupling to an electronic apparatus, as recited in claim 1.
Pet. 16 (citing Ex. 1005, 7:2527; Ex. 1003 32). In particular, Petitioner
contends that Lams portable storage device interface 218, which
provides a wired or wireless communication interface to the portable
storage device 101 (Ex. 1005, 7:2527), corresponds to the claimed
interface unit and that Lams portable storage device 101 corresponds to
the electronic apparatus of claim 1. Pet. 16.
Petitioner then contends Lam discloses the host computer has a
network unit located within the portable storage device for linking with a
remote network host, as recited in claim 1. Pet. 1617 (citing Ex. 1005,
7:2325, 6:1821, Fig. 2A; Ex. 1003 33). In particular, Petitioner
contends that Lams computer network interface 216 which provides a
communication interface to the computer network 112 over the computer
network connection 114 corresponds to the claimed network unit. Pet. 16
(quoting Ex. 1005, 7:2325). Petitioner argues network repository 103
corresponds to the remote network host recited in claim 1. Pet. 1617
(citing Ex. 1005, 6:1821 (The host computer 102 is connected to the
network repository 103 via the network 112. In general, the network
repository 103 is a server or other network-attached storage device that is
dedicated to file sharing.); Ex. 1003 33).
Petitioner also contends Lam discloses a memory unit located within
the portable storage device providing access of data and temporarily storing
data received from the electronic apparatus, as recited in claim 1. Pet. 17
(citing Ex. 1005, 6:1215, 6:5355, 16:4350, Fig. 2A; Ex. 1003 34). For
example, Lam discloses the host computer has various types of memory,
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including random access memory (RAM) 210 and disk storage 220. Ex.
1005, Fig. 2A, 7:422. Petitioner argues Lam discloses the host computer
temporarily stores data received from the portable storage device. Pet. 17
(citing Ex. 1005, 6:1215, 6:5355, 16:4350; Ex. 1003 34). On this
record we agree with Petitioner because Lam discloses: Applications
running on the host computer 102 can directly access the data stored on the
portable storage device 101 even when the computer is not connecting to the
network. Ex. 1005, 6:1215; see also Ex. 1005, 2:914 (The network
extension code may also be operable to encrypt or decrypt the data, or to
detect a file system read function call made by the application, the file
system read function call operable to read the data on the portable storage
device, and effectuate reading the data from the portable storage device to
the application.).
Next, Petitioner contends Lam discloses a processing unit, such as
the host computers internal CPU 200, that receives instructions, as recited
in claim 1. Pet. 18 (citing Ex. 1005, 7:5060, Fig. 2A). Petitioner argues
Lams network extension code discloses the claimed instructions from
the electronic apparatus. Pet. 1820; see Ex. 1005, 11:2122 (Network
extension code, stored on the portable storage device, is installed onto the
host computer (step S304).); see also Ex. 1005, 2:6068, Fig. 3.
Petitioner argues that the network extension code control[s] access of
data between the memory unit and the electronic apparatus with data
transmission via the interface unit, and access of data between the memory
unit and a remote network host with data transmission via the network unit,
wherein data is directly stored on the remote network host, as recited in
claim 1. Pet. 1920 (citing Ex. 1005, 1:4352, 3:1820, 9:3347, 10:4760;
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Ex. 1003 3638). We are persuaded on this record because Lam
discloses:
[S]ystem 100 includes the network repository 103, the portable
storage device 101, and the host computer 102. The portable
storage device 101 further includes a storage medium storing
the network extension code 224. The network extension code
224 is operable to detect a file system write function call
generated by the application programs 222, the file system
write function call operable to cause data to be written to the
portable storage device 101, cause the data to be written to the
portable storage device 101 based upon the file system write
function call, generate a transmit determination indicative of
whether to transmit the data to the network repository 103, and
transmit the data to the network repository 103 based upon the
transmit determination. The host computer 102 is operable to
execute the application programs 222, and invoke the network
extension code 224 when the portable storage device 101 is
coupled to the host computer 102.
Ex. 1005, 9:3450.
Finally, Petitioner argues Lam discloses that the portable storage
device with network function is removably coupled to said electronic
apparatus, expanding storage capacity of the electronic apparatus, as recited
in claim 1. Pet. 2021 (citing Ex. 1005, 5:5152, 6:1820; Ex. 1003 39).
We agree with Petitioner because Lam discloses that [t]he host computer
102 is directly or indirectly coupled to the portable storage device 101. Ex.
1005, 5:5152; see also Ex. 1005, 10:4651 (With the network-extended
storage virtualization approach, the storage capacity of a portable storage
device coupled to a host computer is virtualized, or extended beyond its
physical capacity, by transparently providing the portable storage device
with a back-end network repository over a network connection.).

IPR2015-01606
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Based on the record before us, Petitioner has demonstrated a
reasonable likelihood of prevailing on its assertion that independent claim 1
would have been unpatentable as anticipated by Lam.
b. Dependent Claims 29 and 12
We have reviewed the analysis and supporting evidence presented by
Petitioner that explain how Lam allegedly discloses the claimed subject
matter recited in dependent claims 29 and 12 (Pet. 2126, 3138), and we
are persuaded Petitioner has demonstrated a reasonable likelihood of
prevailing on its assertion that these claims would have been unpatentable as
anticipated by Lam.
c. Dependent Claim 13
Claim 13 recites: The portable storage device with network function
as claimed in claim 1, further comprising an MP3 player or a voice pen.
Petitioner argues: The language of claim 13 does not require the portable
storage device itself to be an MP3 player, so Lam anticipates this claim by
teaching that the PSD 101 is an MP3 player. Pet. 26 (citing Ex. 1005,
17:6364). Although Lam discloses that portable storage device 101 can
also be an MP3 player (Ex. 1005, 15:6364),1 Petitioner contends portable
storage device 101 is the electronic apparatus of claim 1, not the portable
storage device with network function of claim 1. See Pet. 16 (Lams
portable storage device 101 corresponds to the claimed electronic
apparatus.). Petitioner contends that Lams host computer 102 discloses
a portable storage device with network function, as claimed. Pet. 16.
Thus, Lams disclosure that the electronic apparatus is an MP3 player
1

Petitioner and Petitioners expert mistakenly cite column 17, rather than
column 15, for the disclosure of MP3 devices. Pet. 26; Ex. 1003 48.
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does not show that what is alleged to be the portable storage device with
network function in Lam is an MP3 player.
Petitioner also cites Lams disclosure that host computer 102 can be a
PC . . . a laptop, a workstation, . . . telephone, a handheld or tablet
computer, a personal digital assistant (PDA), or other type of computer
(Ex. 1005, 6:3944) and argues that [t]hese types of devices typically can
play MP3 files, and are therefore MP3 players as claimed. Pet. 26 (citing
Ex. 1003 48). As support, Petitioner relies on the testimony of its expert,
Mr. Cohen, who, citing Lams disclosure of devices for the host computer at
col. 6, lines 3944, states:
A POSA during the time of invention would recognize that
these types of devices typically can play MP3 files, and are
therefore MP3 players as claimed. Lam discloses that the
devices may be an MP3 player or realize MP3 capabilities. Id.
at 17:6364 (Furthermore a portable storage device which is
also an MP3 player). Thus, it is my opinion that Lam
discloses the portable storage device with network function
may further comprise an MP3 player or a voice pen.
Ex. 1003 48. Here, Petitioners expert cites to Lams disclosure that the
portable storage device of Lam, which Petitioner alleges is the claimed
electronic apparatus, is an MP3 player. Petitioners expert does not cite to
disclosure within Lam stating that host computer 102, which is alleged to be
the claimed portable storage device with network function, is an MP3
player.
We also are not persuaded that Petitioners argument that some of the
host computer devices listed in Lam typically can play MP3 files (Pet. 26
(citing Ex. 1005, 6:3944; Ex. 1003 48)) establishes a reasonable
likelihood of prevailing in showing claim 13 is anticipated. A claim is
anticipated only if each and every element as set forth in the claim is found,
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either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). Furthermore,
[t]o establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted). First, we note Petitioner has not alleged explicitly
anticipation by inherency. In addition, although it may be possible that a
certain type of computer can play an MP3 file if properly programmed, for
example, Petitioner has not proffered evidence showing that MP3
functionality is necessarily present in host computer 102 (the alleged
portable storage device with network function) of Lam.
On this record, we are not persuaded Petitioner has established a
reasonable likelihood of prevailing in showing that claim 13 is anticipated
by Lam.
B. Obviousness Based on Walters and Yao
1. Walters
Walters describes a system that provides the end user of a digital
camera, PDA, or other wireless device, with a virtually inexhaustible amount
of local storage. Ex. 1006 53.

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2. Yao
Yao generally relates to [a] portable ultra wideband device with an
ultra wideband communication interface wirelessly connects to a host device
to transfer data over an ultra high-speed link. Ex. 1007, 2:79.
3. Petitioners Contentions
Petitioner contends that claims 113 would have been unpatentable
under 35 U.S.C. 103(a) as obvious over Walters and Yao. Pet. 3960.
Petitioner provides a detailed analysis to explain how Walters and Yao
allegedly teach the claimed subject matter and relies upon the Declaration of
Mr. Herbert Cohen to support its positions. Id. Petitioners analysis and
supporting evidence have not been addressed by Patent Owner at this stage
of the proceeding. On this record, we are persuaded by Petitioners
explanation of invalidity over Walters and Yao.
First, Petitioner argues that the first computer of Walters teaches a
portable storage device with network function, as claimed. Pet. 43 (citing
Ex. 1006 54, 62, Abstract; Ex. 1003 62). On this record we agree
because Walters teaches:
A digital camera supplies images to a first computer of a
network via a receiver which is enabled as a bridge for
Bluetooth, wireless LAN and infrared transmission from a
digital camera. Once a digital camera is registered in a
computer system, transmissions from the camera can be
transmitted to the receiving first computer and thereafter
transferred over the network for creation of a multi-media file
which can be viewed at a private network or Internet accessible
second computer.
Ex. 1006, Abstract; see also Ex. 1006 62 (The first computer in the form
of a local device (transceiver) may be a long distance transmitter such as a

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cell phone used to connect to a remote server, a local Bluetooth hub
connected to a server or Bluetooth enabled local mass storage.).
Next, Petitioner contends Walters discloses the first computer has
common interface hardware that teaches an interface unit for coupling to
an electronic apparatus, as recited in claim 1. Pet. 44 (citing Ex. 1006
50, 60; Ex. 1003 63). We are persuaded because, for example, Walters
teaches: The first device represented by the first computer provides
common interface hardware for acting as a wireless receiver <105> which
communicates within the wireless network with the user and which will
allow numerous secondary devices to communicate with the host device via
the wireless receiver. Ex. 1006 50.
Petitioner then contends Walters discloses the first computer has a
transmitter that teaches a network unit located within the portable storage
device for linking with a remote network host, as recited in claim 1. Pet.
4445 (citing Ex. 1006 62; Ex. 1003 64). On this record we are
persuaded because Walters teaches:
[T]he user interface from the Digital Imaging Device . . . uses
Bluetooth wireless communication user interface to transmit the
images to a local device functioning as the first computer and
called the transceiver which is coupled to the Internet/Private
Server. The first computer in the form of a local device
(transceiver) may be a long distance transmitter such as a cell
phone used to connect to a remote server, a local Bluetooth hub
connected to a server or Bluetooth enabled local mass storage.
Ex. 1006 62 (emphases added).
Petitioner also contends Walters teaches a memory unit located
within the portable storage device providing access of data and temporarily
storing data received from the electronic apparatus, as recited in claim 1.
Pet. 4546 (citing Ex. 1006 54, 58, 59; Ex. 1003 65). For example,
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Petitioner cites Walters teaching that [t]he Thinkpad provides with its plug
in floppy storage a local, portable storage device that is enabled with a
wireless interface. Ex. 1006 54. Petitioner argues Walters teaches that
the first computers memory acts as temporary storage by teaching that an
electronic apparatus, such as a digital imaging device, transmits images to
the first computer, which then uploads those images to a remote server. Pet.
4546 (citing Ex. 1006 62).
Next, Petitioner contends that the computing devices identified as the
first computer, which corresponds to the claimed portable storage
device, contain processors, and, therefore, Walters teaches a processing
unit located within the portable storage device. Pet. 46 (citing Ex. 1006
32, 53, 54; Ex. 1003 66).
Petitioner contends Walters teaches the processing unit of the first
computer
receives instructions from the electronic apparatus for
controlling access of data between the memory unit and the
electronic apparatus with data transmission via the interface
unit, and access of data between the memory unit and a remote
network host with data transmission via the network unit,
wherein data is directly stored on the remote network host,
as recited in claim 1. Pet. 4648. In particular, Petitioner argues Walters
teaches a user of a digital imaging device enters commands for controlling
access of the data between the device and the first computer and the remote
network host. Pet. 4648 (citing Ex. 1006 62, 66, 8486; Ex. 1003
6768).
We are persuaded on the record before us, finding that Walters
teaches that the user interface from the Digital Imaging Device . . . uses
Bluetooth wireless communication user interface to transmit the images to a
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local device functioning as the first computer and called the transceiver
which is coupled to the Internet/Private Server. Ex. 1006 62. Walters
further teaches [a] PDA type interface for the digital camera would include an
area which the user would write on to enter data, including commands to be
issued to the digital camera (e.g. Send image to NYPD server at 555-1211).

Ex. 1006 66. Walters also teaches that [i]nformation entered at the
camera interface at the time the picture is taken may be used to direct the
program as to where the image should appear in the clients web directory
(marked by subject category, marked as private, marked as public, marked
as send to e-mail distribution list X). Ex. 1006 64. Walter teaches that
images are uploaded to the server via the intranet/internet and made directly
available for viewing on public or private web pages by the service provider
at the end user interface. Ex. 1006 62.
Petitioner argues Walters teaches that the portable storage device
with network function is removably coupled to said electronic apparatus,
expanding storage capacity of the electronic apparatus, as recited in
claim 1. Pet. 4849 (citing Ex. 1006 50, 53, 54; Ex. 1003 6869). We
are persuaded because Walters describes a system that provides the end
user of a digital camera, PDA, or other wireless device, with a virtually
inexhaustible amount of local storage (Ex. 1006 53) and teaches that the
common interface hardware of the first computer will allow numerous
secondary devices to communicate with the host device via the wireless
receiver (Ex. 1006 50).
Petitioner notes that Walters is admittedly not explicit about the
processing unit (Pet. 39 n.3) and argues that [t]o the extent Patent Owner
may argue that Walters does not explicitly disclose a processing unit
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carrying out the claimed functions, Yao renders these elements obvious as
discussed below (Pet. 49).
Yao describes an ultra wideband device that provides an exemplary
portable storage device with an ultra wideband communication interface
and wirelessly connects to personal computers and other consumer
electronic devices with an ultra-high speed link. Ex. 1007, 6:3338. Yao
discloses that [t]he hardware architecture of ultra wideband device 300
includes communication interface 310, user interface 320, control system
330 optionally provided by central processing unit 332, storage device 340,
and power system 350. Ex. 1006, 6:3842. Yao further teaches: Control
system 330 controls and manages ultra wideband device 300. In one
embodiment, control system 330 includes a central processing unit 332
which is a 32-bit processor with embedded operating system code. Ex.
1006, 6:5861.
Petitioner argues that Yao is in the same field of endeavor as Walters
as they both relate to providing added storage capabilities, including storage
over a network. Pet. 5051 (citing Ex. 1007, 2:79, 2:6467, 3:664:3,
4:645:5; Ex. 1003 10809). Petitioner contends that it would have been
obvious to implement Yaos teachings relating to a processing unit in the
device of Walters because [c]ombining these teachings would merely
implement the known, generic means of Yao as alternatives to generic
processors, computers, and PCs disclosed in Walters. Pet. 52. Petitioner
argues that a person of ordinary skill in the art would have had a reasonable
likelihood of success in doing so because Yao teaches a well-known,
modular way to construct a portable storage device meant to expand local
device storage via wireless uplink by including a processor, a memory, a
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network unit, and a communications unit, using an operating system and a
file management system. Pet. 5253. On the current record, we are
persuaded by Petitioners argument that it would have been obvious to
combine the teachings of Yao and Walters so as to implement Yaos
processing unit in the storage device of Walters and that there would have
been a likelihood of success in doing so.
Based on the record before us, Petitioner has demonstrated a
reasonable likelihood of prevailing on its assertion that independent claim 1
would have been unpatentable over the combination of Walters and Yao.
In addition, we have reviewed the analysis and supporting evidence
presented by Petitioner that explain how the combination of Walters and
Yao allegedly teaches or suggests the claimed subject matter recited in
dependent claims 213 (Pet. 5360), and we are persuaded Petitioner has
demonstrated a reasonable likelihood of prevailing on its assertion that
dependent claims 213 would have been unpatentable over the combination
of Walters and Yao.
IV.

CONCLUSION

For the foregoing reasons, we conclude that the information presented

in the Petition establishes that there is a reasonable likelihood that Petitioner
would prevail in showing that claims 19 and 12 of the 213 patent would
have been unpatentable under 35 U.S.C. 102(e) over Lam and that claims
113 would have been unpatentable under 35 U.S.C. 103(a) over Walters
and Yao. However, we have not made a final determination with respect to
the patentability of these claims.

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V. ORDER
Accordingly, it is:
ORDERED that pursuant to 35 U.S.C. 314(a), an inter partes
review is hereby instituted as to claims 113 of the 213 patent on the
following grounds:
A. Claims 19 and 12 of the 213 patent as unpatentable under 35
U.S.C. 102(e) over Lam;
B. Claims 113 of the 213 patent as unpatentable under 35 U.S.C.
103(a) over the combination of Walters and Yao;
FURTHER ORDERED that no other grounds of unpatentability are
authorized for this inter partes review as to the claims of the 213 patent;
FURTHER ORDERED that the Order to Show Cause (Paper 4) is
dismissed; and
FURTHERED ORDERED that pursuant to 35 U.S.C. 314(c) and
37 C.F.R. 42.4, notice is hereby given of the institution of a trial. The trial
will commence on the entry date of this decision.

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For PETITIONER:
P. Andrew Riley
James D. Stein
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
Novocrypt_IPR@finnegan.com
Jonathan Stroud
UNIFIED PATENTS INC.
Novocrypt_IPR@finnegan.com
For PATENT OWNER:
Jay B. Johnson
KIZZIA JOHNSON PLLC
jay@kjpllc.com

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