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

Patent Trial and Appeal Board

Feb 4, 2016

11282175 (P.T.A.B. Feb. 4, 2016)

Trials@uspto.gov Paper 51
571-272-7822 Entered: February 4, 2016

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 IPR2014-01297
Patent 7,900,057 B2
____________

Before NEIL T. POWELL, GEORGIANNA W. BRADEN, and TIMOTHY
J. GOODSON, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
Seagate Technology (US) Holdings, Inc. and Seagate Technology
LLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
an inter partes review of claims 33–39 of U.S. Patent No. 7,900,057 B2
(“the ’057 patent,” Ex. 1001). Enova Technology Corporation (“Patent
Owner”) timely filed a Preliminary Response to the Petition. Paper 7.
Based on these submissions, we instituted trial as to claims 33–39 of the
’057 patent on the following proposed ground of unpatentability: Claims
33–39 as unpatentable under 35 U.S.C. § 103(a) over Sullivan1 and SATA
Standard.2 Paper 8, 21 (“Dec. to Inst.”).
After institution, Patent Owner filed a Patent Owner’s Response
(Paper 24, “PO Resp.”), and Petitioner filed a Reply (Paper 26, “Reply”).
Patent Owner also filed a Motion to Seal Exhibits 2042, 2043, and 2044,
which is addressed herein. Paper 23 (“Mot. to Seal”).
An oral hearing was conducted on November 2, 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 33–39. For the reasons discussed below, Petitioner
has demonstrated by a preponderance of the evidence that these claims are
unpatentable.
A. Related Proceedings
Petitioner indicates the ’057 patent currently is the subject of a related

1 U.S. Patent Publication No. 2004/0054914 A1, published Mar. 18, 2004
(Ex. 1002, “Sullivan”).
2 Serial ATA: High Speed Serialized AT Attachment, Serial ATA
Workgroup, Rev. 1.0a, Jan. 7, 2003 (Ex. 1003, “SATA Standard”).
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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. Pet. 1. Petitioner also represents the ’057 patent was the
subject of a prior proceeding in the U.S. District Court for the District of
Delaware titled Enova v. WD, No. 1:10-cv-00004-LPS. Id.
The ’057 patent was the subject of inter partes reviews involving the
same parties in Cases IPR2014-01178 and IPR2014-01449. In both of those
cases, a Final Written Decision has been mailed. Seagate Tech. (US)
Holding, Inc. v. Enova Tech. Corp., Case IPR2014-01178 (PTAB Dec. 18,
2015) (Paper 49); Seagate Tech. (US) Holding, Inc. v. Enova Tech. Corp.,
Case IPR2014-01449 (PTAB Dec. 18, 2015) (Paper 47). Additionally, Case
IPR2014-00683 involved the same parties and related U.S. Patent No.
7,136,995 B1 (“the ’995 patent”). In that case, a Final Written Decision also
has been mailed. Seagate Tech. (US) Holding, Inc. v. Enova Tech. Corp.,
Case IPR2014-00683 (PTAB Sept. 2, 2015) (Paper 47).
B. The ’057 Patent
The ’057 patent relates to a cryptographic serial Advanced
Technology Attachment (ATA) apparatus and method. Ex. 1001, Title,
1:33–40. The ’057 patent also refers to serial ATA as “SATA.” Id. at 1:44–
45. The ’057 patent discloses that the SATA specification defines a point-
to-point connection between a host adapter, such as an integrated circuit, and
a storage device controller, such as a SATA hard-disk drive. Id. at 1:49–56.
According to the ’057 patent, the SATA specification also provides for
layering of functions and includes a Link layer “responsible for delivering
packets of payload data, which are called Frame Information Structures
(FISes).” Id. at 2:46–48.
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Figure 1 is reproduced below.

Figure 1 depicts a block diagram of cryptographic SATA apparatus 20
configured to receive input RXh from and transmit output TXh to a SATA
host adapter. Id. at 5:40–42. The SATA host adapter or host may be
provided on a host personal computer (PC). Id. at 5:42–44. Figure 1 also
shows that cryptographic SATA apparatus 20 is configured to receive input
RXd from and transmit output TXd to a SATA device controller. Id. at 5:44–
47. The SATA device controller or device may be provided on a peripheral
device, such as a hard disk drive, optical drive, or the like. Id. at 5:47–51.
The ’057 patent indicates that cryptographic SATA apparatus 20
communicates with the host and the device through appropriate
communicative coupling (e.g., SATA cables). Id. at 5:51–53.
As further shown in Figure 1, cryptographic SATA apparatus 20
includes cryptographic engine 22 operatively coupled between main
controller 24 and device and host protocol stacks 26 and 28. Ex. 1001,
Fig. 1. Main controller 24 regulates all signal paths that carry data,
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command, control, and status signals. Id. at 6:12–13. Main controller 24
further regulates the operation of cryptographic engine 22. Id. at 6:21–23.
Cryptographic engine 22 performs encryption/decryption operations
on predefined and/or selected data FIS payloads exchanged between the host
and the device. Ex. 1001, 6:1–3. Non-data FISes or data FISes that do not
require encryption/decryption, such as FISes carrying command, control or
status information, are allowed to pass straight through SATA apparatus 20,
thereby bypassing cryptographic engine 22. Id. at 6:3–8, 7:30–33. SATA
apparatus 20 may be configured to examine the FIS type field (i.e., the first
byte of the received FIS header) to determine FIS type. Id. at 6:40–43. An
FIS type detector may be provided in Transport layer 34 or in Link layer 32
to determine FIS type. Id. at 6:43–45, 7:67–8:8.
C. Illustrative Claim
Of the challenged claims, claim 33 is independent. Claims 34–39
depend, directly or indirectly, from claim 33. Claim 33 is illustrative of the
challenged claims, and is reproduced below:
33. A cryptographic Serial ATA (SATA) apparatus,
comprising:
a SATA device protocol stack for communicating with a
host interface of a SATA host;
a SATA host protocol stack for communicating with a
device interface of a SATA device;
a cryptographic engine operatively coupled between the
SATA device protocol stack and the SATA host protocol stack
for encrypting or decrypting at least a subset of data FISes
(Frame Information Structures) communicated to or from the
device interface; and
a main controller implemented at least partially in
hardware, the main controller configured to cause:
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the SATA host protocol stack to send at least first
payload of a first data FIS to the cryptographic engine
responsive to the first data FIS associated with a pre-
defined category of command set;
the cryptographic engine to decrypt at least a
portion of the first payload received from the SATA host
protocol stack;
the SATA device protocol stack to send the
decrypted portion of the first payload of the first data FIS
to the host interface; and
the SATA device protocol stack to process a
Register-Device to Host FIS to the host interface without
decryption responsive to receiving the Register-Device to
Host FIS from the device interface.
Ex. 1001, 15:50–16:10.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (holding that
“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA” and “the standard was properly adopted by
PTO regulation”). Under that standard, and absent any special definitions,
we give claim terms their ordinary and customary meaning, as would be
understood by one of ordinary skill in the art, in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
In the Decision to Institute, we construed the recitation in claim 33 of
“SATA device protocol stack for communicating with a host interface of a
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SATA host” to mean “a set of SATA protocols that work together on
different levels to enable communication on a network for communicating
with a host interface of a SATA host.” See Dec. to Inst. 6–8. Similarly, we
construed “SATA host protocol stack for communicating with a device
interface of a SATA device” to mean “a set of SATA protocols that work
together on different levels to enable communication on a network for
communicating with a device interface of a SATA device.” Id. In its
Response, Patent Owner argues we should adopt constructions of these
terms “in line with” the District Court’s in Enova v. WD, which was “one or
more of a physical, a link and a transport layer and does not include the
application layer.” PO Resp. 14–16 (citing Ex. 1015; Ex. 2061 ¶¶ 68–69).
Patent Owner asserts that the District Court’s construction “better captures
the meaning according to one of skill in the art, because it captures the layers
described in the SATA Standard itself.” Id. at 15–16.
Patent Owner does not point to any support in the Specification for its
proposed construction, nor does Patent Owner persuasively address the
reasoning provided in the Decision to Institute for the construction we
initially adopted for purposes of this proceeding. See id. at 14–16. The
District Court’s claim construction order on which Patent Owner relies
includes little persuasive support for Patent Owner’s position here. See
Ex. 1015 ¶ 6. Moreover, Patent Owner does not contend that the difference
between its proposed construction and the construction in the Decision to
Institute has any impact on the obviousness analysis in this proceeding. See
PO Resp. 15–16 (asserting that the Petition fails to demonstrate obviousness
under either the construction adopted in the Decision to Institute or Patent
Owner’s proposed construction); Tr. 88:4–23.
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Accordingly, Patent Owner does not provide a persuasive reason to
alter the constructions of “SATA device protocol stack for communicating
with a host interface of a SATA host” and “SATA host protocol stack for
communicating with a device interface of a SATA device” that we set forth
in the Decision to Institute. Therefore, for the reasons explained in the
Decision to Institute, we maintain our constructions of these terms as set
forth in the Decision to Institute.
B. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under § 103(a) if the differences between the claimed subject
matter and the prior art are such that the subject matter, as a whole, would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved based on underlying factual determinations, including: (1) the
scope and content of the prior art; (2) any differences between the claimed
subject matter and the prior art; (3) the level of skill in the art; and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere,
383 U.S. 1, 17–18 (1966). We also recognize that prior art references must
be “considered together with the knowledge of one of ordinary skill in the
pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In
re Samour, 571 F.2d 559, 562 (CCPA 1978)).
We analyze the instituted ground of unpatentability in accordance
with the above-stated principles.
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C. Level of Skill in the Art
In determining the level of skill in the art, 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 skill in the art
as reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d. 1350,
1355 (Fed. Cir. 2001).
Petitioner contends that a person of ordinary skill in the field of this
invention would have had at least a bachelor’s degree in electrical
engineering, computer engineering, or computer science, and two years of
experience in a relevant field, or equivalent knowledge and experience. Pet.
4 (citing Ex. 1006 ¶¶ 16–17). Patent Owner’s Response does not address
specifically the level of ordinary skill in the art. We note, however, that
Patent Owner’s declarant, Dr. Thomas A. Conte, testifies that, because the
claims of the ’057 patent describe a cryptographic apparatus, which is a
computer hardware device, one of ordinary skill in the art should have
experience with the hardware of devices and systems. Ex. 2061 ¶ 18.
Although the Specification of the ’057 patent and the challenged
claims disclose a “cryptographic device,” the ’057 patent teaches that “[t]he
above-described embodiments may be implemented in hardware and/or
software form, as desired.” Ex. 1001, 12:10–11. Therefore, Dr. Conte’s
testimony does not persuade us that hardware encryption experience is a
prerequisite for the level of ordinary skill, such that persons having a
software background or a degree in computer science are excluded from
being persons of ordinary skill. See Ex. 2061 ¶ 18.
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After considering the evidence of record, we conclude that a person of
ordinary skill in the art at the time of the ’057 patent would have had a
bachelor’s degree in electrical engineering, computer engineering, or
computer science, and at least two years of experience.
D. Claims 33–39 – Obviousness over Sullivan (Ex. 1002) and SATA
Standard (Ex. 1003)
Petitioner argues claims 33–39 are unpatentable under 35 U.S.C.
§ 103(a) over Sullivan and SATA Standard. Pet. 20–49. Patent Owner
contests Petitioner’s position. PO Resp. 16–59. As explained below, we
have considered the arguments and evidence presented by both parties, and
we determine that Petitioner has shown by a preponderance of the evidence
that claims 33–39 are unpatentable over Sullivan and SATA Standard.
1. Summary of Sullivan (Ex. 1002)
Sullivan relates to a method and apparatus for in-line serial data
encryption. Ex. 1002, Title. Sullivan describes the encryption of data
transmitted from a host computer to a target device, such as a storage
system, where the encryption is carried out in-line with the data channel.
Ex. 1002 ¶ 2.
Figures 1 and 9 are reproduced below.

Figure 1 depicts processor-based system 10, which includes subsystem 30 in
communication with serial channel or bus 50. Ex. 1002 ¶ 21. Sullivan
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discloses “[t]he serial channels . . . may be any of a number of other suitable
serial channels, such as serial ATA.” Id. ¶ 38. Storage devices 60–80 are
connected to serial channel 50 via encryption unit 90. Id. ¶ 22. Figure 9
depicts encryption unit 90 with filter module 730 configured to pass only a
predetermined set of commands, status, or other information included in
header 710. Id. ¶ 54, 55. “Alternatively or additionally, the filter module
may include logic configured to reject a predetermined set of information or
categories of information, e.g. to reject certain types of data, address
pointers, and so on.” Id. ¶ 55. Figure 9 depicts packet 700 transmitted to
encryption unit 90 from host 10. Id. at Fig. 9. Packet 700 includes
header 710 with command and status information 712–714, and data 720.
Id. ¶ 54.
Additionally, as shown in Figure 2, Sullivan further discloses
encryption unit 90 may include processor 100, memory 105, encrypt
module 110, and transmit module 120. Ex. 1002 ¶ 23. Sullivan teaches an
encrypt module may be configured to “encrypt the data bits and to leave the
control information substantially unaltered.” Id. at claim 1.
2. Summary of SATA Standard (Ex. 1003)
SATA Standard, titled “Serial ATA: High Speed Serialized AT
Attachment,” is directed to providing a “technical specification of a high-
speed serialized ATA data link interface.” Ex. 1003, 11. SATA Standard
discloses that “[s]erial ATA is a high-speed serial link replacement for the
parallel ATA attachment of mass storage devices.” Id. at 23.
SATA Standard discloses that information may be transferred
between a host and a device through FISes. Ex. 1003, 184, 199. SATA
Standard includes several different types of FISes, which are used for
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different purposes. See id. at 185–200. The FIS type is indicated by the
value in a designated field of the FIS.
For example, SATA Standard specifies that a “Register-Device to
Host FIS” is indicated when the FIS Type field is set to a value of 34h.
Ex. 1003, 188. This FIS Type is used “by the device to update the contents
of the host adapter’s Shadow Register Block. This is the mechanism by
which devices indicate command completion status . . . .” Id.
As another example, a value of 46h in the FIS Type field indicates a
Data FIS, which is “used for transporting payload data, such as the data read
from or written to a number of sectors on a hard drive.” Ex. 1003, 199.
SATA Standard describes that “[t]his FIS is generally only one element of a
sequence of transactions leading up to a data transmission and the
transactions leading up to and following the Data FIS establish the proper
context for both the host and device.” Id.
3. Claims 33 and 35
The Petition argues that each limitation of claim 33 is rendered
obvious by Sullivan in combination with SATA Standard. See Pet. 21–37.
In rebutting Petitioner’s arguments and evidence regarding claim 33, Patent
Owner’s Response focuses on the limitation that the main controller is
configured to cause the SATA host protocol stack to send at least a first
payload of a first data FIS to the cryptographic engine “responsive to the
first data FIS associated with a pre-defined category of command set.”
Ex. 1001, 15:62–67; see PO Resp. 16–46. For convenience, we refer to this
limitation as the “associated with” limitation.
Petitioner argues that the “associated with” limitation would have
been obvious to a skilled artisan implementing Sullivan’s teachings using
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SATA Standard. See Pet. 28–35. Specifically, Petitioner asserts that
Sullivan teaches that the encryption unit encrypts data to be stored on the
storage device and will decrypt encrypted data read from the storage device.
Id. at 29 (citing Ex. 1002 ¶¶ 35, 39, 47, 64–65, 70). Sullivan also teaches
that control information, including command and status information, is not
encrypted. Id. at 30 (citing Ex. 1002, Abstract, ¶ 6, claim 1, claim 9). Based
on these disclosures, Petitioner’s declarant, Dr. Long, testifies that:
Sullivan thus reflects the concept well known to persons of
ordinary skill in the art at the time the ’057 Patent was filed . . .
that user data is stored on the disk of a hard disk drive and is
suitable for encryption, but control information is used by the
hard disk drive, must be readable by the drive, and should not be
changed because encrypting that information would render the
information unusable or unreadable.
Ex. 1006 ¶ 96.
Regarding SATA Standard, Dr. Long testifies that SATA Standard
“specifies the sequence of FISes transmitted between the host and the device
in order to execute a particular command.” Id. ¶ 88. In particular, Dr. Long
explains that:
[I]n SATA, execution of a particular command triggers the
transmission of Data FISes and dictates the contents of those
Data FISes. . . . For example, the “READ SECTOR(S)”
command will be associated with a Data FIS containing user data
previously stored on and read from the disk. In contrast, the
“IDENTIFY_DEVICE” command will be associated with a Data
FIS containing control information. Although the execution of
both of these commands involves the transfer of Data FISes . . .
, the commands associated with each Data FIS require different
types of information (i.e., control information or user data) to be
included in the Data FIS.
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Id. ¶ 93. Dr. Long’s declaration includes an exemplary list of commands in
SATA Standard that are for reading user data from the hard drive or writing
user data to the hard drive. Id. ¶ 91 (citing Ex. 1003, 250–55).
Thus, Petitioner argues that it would have been obvious to configure
Sullivan’s main controller to send the payload of a Data FIS to the
cryptographic engine when that Data FIS is associated with a read or write
command from a pre-defined group of read or write commands in SATA.
Pet. 32 (citing Ex. 1006 ¶¶ 146). The motivation for doing so, according to
Petitioner, would have been to achieve the predictable result of encrypting or
decrypting user data while leaving control information unaltered. Id.
Petitioner also points to Sullivan’s description of a filter module in the
interface of the cryptographic core to act as a “command pass filter” for
passing “only a predetermined allowed set of commands.” Pet. 33 (citing
Ex. 1002 ¶¶ 55, 64–65). Petitioner notes Sullivan’s description that
“[t]ypical allowed commands will be read, write, and other commands
associated with data or memory access and storage.” Id. (quoting Ex. 1002
¶ 56). Petitioner argues that Sullivan’s filter, when implemented in SATA,
would allow only Data FISes sent pursuant to those approved commands to
reach the cryptographic core for encryption or decryption. Id. at 33–34
(citing Ex. 1006 ¶ 148). Thus, according to Petitioner, a skilled artisan
would have appreciated that Sullivan’s filter could be used to encrypt or
decrypt only data associated with a predetermined allowed set of commands,
such as read and write commands, in order to encrypt or decrypt data to be
written to or read from a storage device without encrypting command,
control, or status information. Id. at 34–35 (citing Ex. 1006 ¶ 148).
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Patent Owner argues that the “associated with” limitation would not
have been obvious based on the cited combination for at least two reasons.
First, Patent Owner argues that Sullivan does not teach associating a pre-
defined category of command set. PO Resp. 19–35. In presenting this
argument, Patent Owner asserts that “the encryption approach described in
Sullivan is a simple solution tied to the kinds of packets described by
Sullivan.” Id. at 22. Specifically, “Sullivan teaches that the ‘control
information’ in the disclosed serial ‘packets’ is in the header. ‘The data is
separated from the header, encrypted, recombined with the header, and
transmitted to the target device.’” Id. at 24 (quoting Ex. 1002 ¶ 9). Patent
Owner points out that, like the packets described in Sullivan, FISes have
headers and bodies as well. Id. (citing Ex. 1006 ¶ 69). Thus, Patent Owner
argues that “[t]he disclosure of Sullivan, as applied to the SATA Standard, is
a discussion of the internals of every FIS; it does not teach to differentiate
between payloads in any way.” Id. (citing Ex. 2061 ¶ 96). According to
Patent Owner, following this approach of treating every FIS in the same way
by encrypting the header of each FIS would result in a non-functional
system. Id. at 26.
Patent Owner further argues that Sullivan’s description of the
command pass filter does not teach the “associated with” limitation because
Sullivan’s filter “does not associate Data FISes with the category of
command set at all.” PO Resp. 29. Rather, according to Patent Owner,
the filter module of Sullivan examines information in a given
packet and then determines whether it will allow that packet to
pass through to the encryption engine or not, at which point, if
allowed to pass, the data in the payload of the packet in which
the very same control information appears is encrypted. If not
allowed to pass, the entire packet is rejected and dropped.
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Id. at 29–30 (citing Ex. 2061 ¶ 103). Patent Owner argues, citing Dr.
Conte’s declaration as support, that if Sullivan’s filter were implemented in
certain sequences of FISes in a SATA device, the result would be to encrypt
the payloads of FISes that should not be encrypted and to reject other FISes
that should be encrypted. Id. at 30–33 (citing Ex. 2061 ¶¶ 46, 105–106).
Patent Owner’s next argues the cited combination does not render
obvious the “associated with” limitation because the SATA Standard does
not teach the limitation. See PO Resp. 35–45. Patent Owner asserts that
“SATA Standard is silent as to the use of encryption and teaches nothing
about whether a data payload should be decrypted or encrypted.” Id. at 35
(citing Ex. 2061 ¶ 107). Patent Owner challenges Petitioner’s contention
that a skilled artisan “would have appreciated that Sullivan, when
implemented in SATA, teaches decrypting the payload of a Data FIS when
that Data FIS is associated with one of SATA’s read commands.” Id. at 34–
35 (quoting Pet. 29–30). Patent Owner argues that the association of a Data
FIS with a read or write command could not be used to determine whether to
encrypt or decrypt the Data FIS’s payload because “there are several read
and write commands in the SATA Standard that would result in Data FISes
whose payloads should not be cryptographically processed.” Id. at 36. For
example, Patent Owner asserts that Data FISes transmitted in response to
SMART READ LOG SECTOR should not be cryptographically processed
because they contain data relating to the drive’s operation. Id. at 36–37
(citing Ex. 2061 ¶ 108; Ex. 1003, 250, 252).
Patent Owner disputes Dr. Long’s list of commands in SATA
Standard for reading user data from the hard drive and for writing user data
to the hard drive. See PO Resp. 37; Ex. 1006 ¶ 91. Patent Owner states that
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Dr. Long’s deposition testimony establishes that Dr. Long did not assemble
this list himself and that the list does not exist in the same form in SATA
Standard itself. Id. at 37–38 (citing Ex. 2060, 41:5–14, 42:11–22). Patent
Owner contends that “neither Sullivan nor the SATA Standard alone provide
enough information to determine which commands carry command, control,
or status information and which ones do not, since the purpose of the
commands is not found in the SATA Standard.” Id. at 38 (citing Ex. 2061
¶ 34). Furthermore, Patent Owner notes that “the ATA Standard, a
predecessor of the SATA Standard, is not one of the two references” in the
ground on which this proceeding was instituted. Id.
We do not find Patent Owner’s arguments summarized above to be
persuasive. As an initial point, we agree with Petitioner that Patent Owner’s
primary arguments attack the two references individually instead of
considering what these references together would teach to a skilled artisan.
See Reply 2–3 (citing In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986)).
Here, Petitioner is not relying on either Sullivan or SATA Standard
individually as teaching the “associated with” limitation. Rather,
Petitioner’s obviousness case against claim 33, as summarized above, is
premised on the notion that the “associated with” limitation would have been
obvious to a skilled artisan seeking to implement Sullivan’s teachings—
specifically, Sullivan’s teaching to encrypt or decrypt user data but not
control information—in a SATA device. Patent Owner’s arguments that
neither Sullivan nor SATA Standard individually teaches the “associated
with” limitation do not address directly the obviousness case that Petitioner
has presented.
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Furthermore, Patent Owner’s arguments take an unduly narrow view
of Sullivan’s teachings. Specifically, Patent Owner’s arguments are
premised on the view that a skilled artisan would have understood from
Sullivan’s teachings that each packet must be treated identically for
encryption purposes. We are not persuaded that a skilled artisan would have
understood Sullivan in that way, especially when Sullivan’s teachings are
implemented in a SATA device as in the proposed combination. On this
point, we note that Patent Owner does not cite (and we do not find) any
disclosure in Sullivan expressly stating that every packet should be treated
the same way in carrying out the encryption operation. See Tr. 74:13–75:13.
Instead, Patent Owner infers from Sullivan’s disclosure that all individual
packets must be treated the same way because Sullivan teaches only one
way to process packets for encryption—i.e., by removing control
information in the header of a packet and encrypting the payload. See id.;
PO Resp. 19–20 (citing Ex. 1002 ¶¶ 39, 47), 24 (citing Ex. 1002 ¶ 9).
Patent Owner’s reading of Sullivan does not account adequately for
the disclosure in Sullivan that is broader and more general. For example, in
the Background section, Sullivan describes that:
A system is needed whereby transmission of data in a serial
channel can be accomplished in-line and in real time, where the
data and control information can be treated separately for both
encryption purposes and for handling various types of attacks
and covert processes embedded in or achieved by the transmitted
information.

Ex. 1002 ¶ 6 (emphasis added); see also id. at ¶ 10 (“The control
information, which may include commands and status information, can be
subjected to filtering and rejecting operations by the encryption unit, to pass
through only a predetermined set of commands and/or to reject a
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predetermined set of commands.”); id. at ¶ 55 (“[T]he filter module 730 may
be configured as an information or command pass filter or blocking filter for
any control information that may be included in the packet 700, whether
or not in the header.”) (emphasis added); id. at claim 9 (“transmitting the
encrypted information with the associated control information to the second
device, where the associated control information is transmitted in an
unencrypted form”). In view of these teachings, we agree with Petitioner
that “Sullivan describes making encryption decisions based on the type of
data and not simply the location of the data (e.g., in a header or in a
payload).” Reply 8.
Furthermore, a skilled artisan would not have understood Sullivan’s
teaching to strip out the header and encrypt the payload as a prescription for
how each individual FIS should be treated when Sullivan is applied to a
SATA device, because that encryption strategy would yield a non-
functioning SATA device. It is undisputed that implementing Sullivan in a
SATA device in this manner would result in a non-functional system,
because doing so would result in encryption of payloads that should not be
encrypted, thereby rendering the FISes unintelligible to the host or the
peripheral device intended to process them. See PO Resp. 26; Reply 9. As
summarized above, Patent Owner argues that this non-functionality
demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 26.
Yet, we view Patent Owner’s argument regarding non-functionality as
detracting from the persuasiveness of Patent Owner’s contentions regarding
how a skilled artisan would have understood Sullivan’s disclosure. In
particular, it strains credulity that a skilled artisan would apply Sullivan in
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the manner Patent Owner urges when doing so would result in a non-
functioning device.
We agree with Petitioner that an artisan having ordinary skill and
creativity would not have applied Sullivan’s teachings in such a simplistic
and plainly counterproductive fashion. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also Reply 9 (citing In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); Scanner Techs. Corp. v. ICOS
Vision Sys. Corp., 528 F.3d 1365, 1382 (Fed. Cir. 2008)). We further agree
with Petitioner that a skilled artisan would recognize that “Sullivan teaches a
flexible cryptographic device that can be implemented using a variety of
data transfer protocols . . . and is designed to ‘accommodate[] whatever
standard is used.’” Reply 8 (quoting Ex. 1002 ¶ 50).
Thus, although Sullivan describes encryption operations for a single
packet, we are satisfied that a skilled artisan would have appreciated that
SATA devices use prescribed sequences of FISes to transfer data. See Ex.
1006 ¶¶ 87–95 (summarizing data transfer operations in SATA Standard and
noting that “SATA Standard . . . specifies the sequence of FISes transmitted
between the host and the device in order to execute a particular command.”);
Ex. 2061 ¶ 42 (“The command protocols dictate a prescribed sequence of
FIS transmissions, which Dr. Long describes in his declaration. I generally
agree with Dr. Long’s recitation of the order of FISes for various
operations.”). As Dr. Long explained succinctly in his deposition testimony:
Sullivan is a fairly high-level disclosure in that it talks about
packet in the generic sense. And when implemented in SATA,
that gets turned into a transaction, which is a sequence of FISes
going back and forth. . . . Sullivan says this can be implemented
in SATA. In order to implement this in SATA, the SATA
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protocol defines that what would be a packet in Sullivan becomes
a transaction.
Ex. 2060, 79:13–80:1.
With respect to how Sullivan’s teachings would be implemented in a
SATA device, we are persuaded by Petitioner’s explanation that a skilled
artisan would have found it obvious to distinguish between Data FISes that
carry user data and Data FISes that carry control, command, or status
information, by utilizing the association in SATA Standard between a given
command and the type of information in a resulting Data FIS. See Pet. 29–
30, 32–33; Ex. 1006 ¶¶ 30–35, 49, 93–95, 145; Reply 5–6.
Patent Owner’s second argument is unpersuasive because it is based
on a misunderstanding of Petitioner’s obviousness case. To recapitulate
Patent Owner’s second argument, Patent Owner identifies certain commands
in SATA Standard, such as SMART READ LOG SECTOR, that result in
Data FISes whose payloads should not be encrypted. PO Resp. 35–37.
According to Patent Owner, this point rebuts Petitioner’s contention that the
association of a Data FIS with a read or write command could be used to
determine whether to encrypt or decrypt the Data FIS’s payload. Id. (citing
Pet. 29). As discussed above, however, Petitioner’s proposed combination
relies on the association in SATA Standard between commands that call for
the transfer of user data and the resulting Data FIS with user data in its
payload. See Pet. 32–33; Ex. 1006 ¶¶ 49, 93, 145; Reply 5–6. Petitioner
further provides an articulated reason with a rational underpinning
explaining why it would be obvious to utilize this association–namely, to
separate user data from control information for encryption purposes, as
taught by Sullivan. See Pet. 32–33; Ex. 1002 ¶ 6. We agree with Petitioner
that “Patent Owner provides no rationale for why a skilled artisan would
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have been misled into thinking a command transfers user data simply
because the name of the command includes the word ‘read’ or ‘write.’”
Reply 13–14 (citing Ex. 2060, 22:12–24, 43:3–13; Ex. 2061 ¶ 41).
In this regard, we are not persuaded by Patent Owner’s contention that
SATA Standard does not provide enough information for a skilled artisan to
determine which commands call for the transmission of control information
and which commands call for user data. See PO Resp. 38. Rather, we agree
with Petitioner that identifying the commands in the SATA Standard that
transfer user data would not have been uniquely challenging or otherwise
beyond the level of an ordinary skilled artisan. See Ex. 1006 ¶ 147. Dr.
Conte testifies that “[t]he purpose and function of the individual commands
described by the various command protocols is outside of the scope of the
SATA Standard on which the Petition[] rel[ies]; they are described by the
ATA specification itself.” Ex. 2061 ¶ 41. Yet, SATA Standard lists the
ATA specification as a reference “contain[ing] provisions that, through
reference in the text, constitute provisions of this standard.” Ex. 1003, 13.
Dr. Conte also testifies that “[t]he SATA protocol was developed as a high-
speed replacement for the then-popular ATA protocol.” Ex. 2061 ¶ 27; see
also id. at ¶ 54 (explaining the use of “legacy ATA commands” in a SATA
device); PO Resp. 5 (“SATA emulates the same ATA commands.”). Given
the popularity of the ATA protocol, commonly used ATA commands would
have been familiar to the skilled artisan by the time SATA Standard was
adopted. See Ex. 2061 ¶ 27.
We note Dr. Conte’s testimony that a skilled artisan would not have
been generally familiar with the purpose of ATA commands because “[i]t’s
a large standard. One of ordinary skill in the art would have to study the
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ATA standard.” Ex. 1041, 27:22–25. Yet in this respect, Dr. Conte’s
testimony is consistent with Dr. Long’s testimony that in order to determine
which SATA commands transfer user data and which transfer non-user data,
“[s]ome of them are just really obvious, and other ones we would . . . look at
the ATA spec because nobody memorizes all the commands.” Ex. 2060,
91:19–21. The sheer length of SATA Standard and the ATA specification,
each of which is over 300 pages, buttresses the testimony of both experts
that a skilled artisan would not have committed to memory all of the detail
in those standards. See Ex. 1003; Ex. 1019.
In our view, this point supports Petitioner’s position that persons of
ordinary skill in the art would have known to consult the ATA specification
to gather information about SATA Standard commands with which they
were not already familiar. See Ex. 2060, 15:5–9; Tr. 100:7–101:22; see also
Endress + Hauser, Inc. v. Hawk Measurement Sys. Pty. Ltd., 122 F.3d 1040,
1042 (Fed. Cir. 1997) (“The person of ordinary skill is a hypothetical person
who is presumed to be aware of all the pertinent prior art.”) (quoting Custom
Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
1986)). Thus, we determine that, if a skilled artisan was unfamiliar with a
particular command listed in SATA Standard, it would have been routine
engineering work to consult the ATA specification to determine whether that
command transferred user data or control information.
Patent Owner argues that the ATA specification “is not one of the
references in the ground[] allowed by the Board.” PO Resp. 38; see
Ex. 2061 ¶ 41. We disagree, because “[a]rt can legitimately serve to
document the knowledge that skilled artisans would bring to bear in reading
the prior art identified as producing obviousness.” Ariosa Diagnostics v.
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Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (citing Randall
Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013)). Petitioner’s use of
the ATA specification in its obviousness case falls squarely into this
category.
Petitioner contends that the remaining limitations of claim 33 are
obvious in view of the cited prior art. Pet. 21–37. Patent Owner does not
provide contentions regarding the additional limitations recited in claim 33.
See generally PO Resp.; see 37 C.F.R. § 42.23(a). After consideration of the
language recited in claim 33 of the ’057 patent, the Petition, the Patent
Owner Response, and Petitioner’s Reply, as well as the relevant evidence
discussed in those papers, we find that one of ordinary skill in the art would
have considered this claim obvious over Sullivan and SATA Standard.
In addition, upon reviewing the unchallenged contentions and
supporting evidence regarding dependent claim 35 presented in the Petition
(Pet. 38–45), we are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that dependent claim 35 would have been
obvious over the combination of Sullivan and SATA Standard.
4. Data FISes Not Associated with the Pre-Defined Category of
Command Set in Claims 36–38.
Dependent claims 36–38 recite data FISes that are not associated with
the predefined category of command set. See Ex. 1001, 16:28–36. Claim 36
recites “wherein the data FIS not associated with the pre-defined category of
command set carries command information.” Id. at 16:29–30. Claim 37
recites “wherein the data FIS not associated with the pre-defined category of
command set carries control information.” Id. at 16:32–33. Claim 38 recites
“wherein the data FIS not associated with the pre-defined category of
command set carries status information.” Id. at 16:35–36.
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Petitioner argues that these limitations would have been obvious in
view of Sullivan and SATA Standard. Pet. 45–47. Petitioner asserts that
one of ordinary skill in the art would have recognized that SATA involves
transmitting command, control, and status information in data FISes
associated with certain commands, such as the “IDENTIFY_DEVICE”
command, the “SMART_READ_LOG_SECTOR” or “SMART READ
LOG” command, and the “CFA TRANSLATE SECTOR” command. Id. at
46 (citing Ex. 1006 ¶ 169; Ex. 1003, 250; Ex. 1019, 73, 88, 197–204).
Petitioner further argues that
Because Sullivan reflects the common understanding that only
user data is encrypted or decrypted and that command, control,
and status information should not be altered (e.g., Ex. 1002,
claim 9), one of ordinary skill in the art would have understood
that Data FISes associated with ‘IDENTIFY_DEVICE’,
‘SMART_READ_LOG_SECTOR’, and ‘CFA TRANSLATE
SECTOR’ commands should not be encrypted or decrypted.
(Ex. 1006, ¶ 170). In other words, such a person would have
been motivated to exclude those commands from the pre-defined
group of commands (whose associated Data FISes carry user
data and are encrypted or decrypted), so that the Data FISes
associated with those commands and that convey command,
control, and status information are not encrypted or decrypted.
(Id.)
Id. at 46–47.
Patent Owner argues that “the proposed combination [of Sullivan and
SATA Standard] does not teach or suggest the limitations of claims 36 to
38.” PO Resp. 48. Patent Owner reiterates that Petitioner does not identify
disclosure in either Sullivan or SATA Standard identifying certain
commands and data FISes that are or are not associated with the predefined
category of command set. Id. at 47. Patent Owner further argues that
Sullivan’s teaching to pass for encryption “commands associated with data
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or memory access and storage” would have led skilled artisans to include
commands that should not be cryptographically processed, such as
IDENTIFY_DEVICE and SMART_READ_LOG_SECTOR. Id. at 47–48.
Patent Owner’s arguments are not persuasive. It is undisputed that the
IDENTIFY_DEVICE, SMART_READ_LOG_SECTOR, and
CFA_TRANSLATE_SECTOR commands appear in SATA Standard and
are associated with command information, control information, and status
information. See Ex. 1003, 250–254; Pet. 45–46; PO Resp. 46–48. We
agree with Petitioner that it would have been obvious to exclude these
commands from the predefined category of command set so that command
information, control information, and status information in the associated
data FISes would not be cryptographically processed. As discussed above in
Section II.D.3, we are persuaded that Sullivan’s broad, general teachings
would have rendered it obvious to cryptographically process user data but
not other data, including command information, control information, and
status information. Patent Owner’s argument based on Sullivan is
unpersuasive, because it rests on the proposition that a skilled artisan would
have understood “other commands associated with data or memory access
and storage” to include any command that happens to include the word
“read,” even when doing so would result in the encryption of command,
control, and status information, which runs counter to Sullivan’s other
teachings. See Ex. 1002 ¶ 56.
We are persuaded that Petitioner has demonstrated by a
preponderance of the evidence that claims 36–38 would have been obvious
over the combination of Sullivan and SATA Standard.
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5. Command Categories in Claims 34 and 39
Dependent claims 34 and 39 recite specific commands that are
included in the predefined category of command set. See Ex. 1001, 16:11–
16, 16:37–42. Petitioner argues that the commands recited in claims 34 and
39 are copied from SATA Standard, and that a skilled artisan would know
that these commands are used for reading or writing user data. Pet. 38
(citing Ex. 1003, 250, 253; Ex. 1006 ¶ 156), id. at 47–48 (citing Ex. 1003,
252, 254; Ex. 1006 ¶ 171).
Patent Owner argues that SATA Standard does not group commands
by whether they are read or write commands and, therefore, it does not teach
the particular command sets of claims 34 and 39. PO Resp. 49 (citing
Ex. 2061 ¶¶ 38–39, 126–27). Patent Owner further argues that Sullivan’s
teaching to pass for encryption “commands associated with data or memory
access and storage” would have led skilled artisans to include commands
that should not be cryptographically processed, such as SMART READ
LOG. See id. at 49–50 (citing Ex. 2061 ¶ 128).
Patent Owner’s arguments are not persuasive. It is undisputed that the
commands recited in claims 34 and 39 appear in SATA Standard. See
Ex. 1003, 250–254. Dr. Long testifies that a skilled artisan would have
appreciated that the recited commands cause the transmission of user data.
Ex. 1006 ¶¶ 156, 171.3 We agree with Petitioner that “including these
commands as part of the ‘pre-defined category of command set’ would have

3 Furthermore, as discussed above with respect to claim 33, to the extent a
skilled artisan was not already familiar with a particular command in SATA
Standard, it would have been routine engineering work to consult the ATA
specification to determine whether the command results in the transmission
of user data.
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been obvious . . . in order to achieve Sullivan’s goal of encrypting and
decrypting the user data transferred in-line between the computer and the
storage device.” Reply 21 (citing Ex. 1006 ¶¶ 156, 171). Patent Owner’s
argument based on Sullivan is unpersuasive because it is premised on the
proposition that a skilled artisan would have understood “other commands
associated with data or memory access and storage” to include any
command that happens to include the word “read,” even when doing so
would result in the encryption of control information, which runs counter to
Sullivan’s other teachings. See Ex. 1002 ¶ 56.
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that claims 34 and 39 would have been obvious over the
combination of Sullivan and SATA Standard.
E. Secondary Considerations
Patent Owner argues that secondary considerations in the form of
industry praise, commercial success, copying, and licensing establish the
nonobviousness of claims 33–39. PO Resp. 53–59.
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
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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 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
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 SATA-to-SATA X-Wall MX, and
SATA-to-USB X-Wall FX products embody the claimed invention of the
’057 patent, and have generated industry praise. PO Resp. 54 (citing
Ex. 2046). We have reviewed the materials and find that Patent Owner has
not established a sufficient nexus between the claimed cryptographic
apparatus and the alleged industry praise of Patent Owner’s products.
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
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address the increasing requirement for privacy and
confidentiality, satisfying the growing demand for maximum
security.”
Id. at 54–55 (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. 54–55; Ex. 2018.
Patent Owner also asserts that its products embodying the invention of
the ’057 patent have received industry awards. PO Resp. 55. Patent Owner
asserts that its X-Wall MX product was awarded a 2012 Business World
Golden Bridge Award in the Encryption Solutions Innovations category. Id.
(citing Exs. 2020, 2038, 2039).4 Exhibit 2020 only lists X-Wall MX without
any discussion or description of X-Wall MX. Ex. 2020, 6. Further, Patent
Owner does not provide any analysis explaining how its products embody
any of the challenged claims of the ’057 patent. See Tr. 62:10–64:6.
Consequently, we are unable to determine whether the X-Wall product
includes features recited in these challenged claims.
Accordingly, Patent Owner has not established a sufficient nexus
between the merits of the claimed invention and any industry praise of
Patent Owner’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

4 Exhibits 2038 and 2039 appear to be copies of product literature for the X-
Wall. Patent Owner does not cite to any particular portion of these lengthy
exhibits, or explain how they are germane to its secondary consideration
argument. See PO Resp. 55.
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and advertisement of Patent Owner’s encryption devices. PO Resp. 55–57.
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.
Patent Owner argues that Petitioner sought out Patent Owner’s
assistance to bring hardware encryption products to market. PO Resp. 55.
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 55– 56 (citing Ex. 2027 ¶¶ 15–17).
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 56. Patent Owner further asserts that
Petitioner extended the ’057 patent’s hardware encryption technology to
Petitioner’s BlackArmor product, and that “Seagate’s chief technologist, Dr.
Robert Thibadeau, praised the patented hardware encryption technology
Enova provided to Seagate.” Id. at 56– 57 (citing Ex. 2005, 3–6)).
Patent Owner’s assertions are unpersuasive to the extent that they are
based on unsubstantiated allegations made in its own Complaint, from the
related district court proceeding between the parties, which Petitioner denied
in a responsive Answer. See PO Resp. 55–57 (citing Ex. 2027). For
example, Patent Owner argues that the sales and awards of Petitioner’s
“BlackArmor” product support the nonobviousness of the ’057 patent. Id. at
57 (citing Ex. 2009, 1; Ex. 2021, 1; Ex. 2027 ¶¶ 25–26). Presumably, Patent
Owner’s assertion is based on the allegation that Petitioner’s BlackArmor
product infringes the ’057 patent. Ex. 2005 ¶ 40. Petitioner disputes Patent
Owner’s allegations (Ex. 2027 ¶ 40) and Patent Owner has not established
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that the BlackArmor product infringes the ’057 patent or incorporates any
claimed elements of the ’057 patent.
“Evidence 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 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 In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (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 Petitioner’s products include features claimed in the ’057
patent. PO Resp. 55–57. 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 ¶ 40 (denying
infringement of the ’057 patent).
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Moreover, even if 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 ’057
patent by others is objective indicia of non-obviousness. Specifically, Patent
Owner argues that Initio Corporation (“Initio”) marketed and sold infringing
products incorporating the claimed invention of the ’057 patent to major
hard drive manufactures. PO Resp. 58 (citing Ex. 2032; Ex. 2059). Patent
Owner contends the resolution of Enova v. WD “confirms Initio’s
infringement of the ’057 patent” because “Initio admitted in a consent
judgment that its products practice the ’057 patent and further began
marking its products with the ’057 patent number.” Id. (citing Ex. 2059, 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 Exs. 2024–2025; Exs. 2042–45;
Ex. 2059). Patent Owner adds that both Initio and Western Digital license
the ’057 patent from Patent Owner. Id. at 59 (citing Exs. 2042–2043).
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With respect to Patent Owner’s reliance on Initio’s consent judgement
in Enova v. WD, it is not sufficient that a product is within the scope of a
claim in order for objective evidence of nonobviousness tied to that product
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. “Licenses taken under the patent in suit may
constitute evidence of nonobviousness; however, only little weight can be
attributed to such evidence if the patentee does not demonstrate ‘a nexus
between the merits of the invention and the licenses of record.’” GPAC, 57
F.3d at 1580 (quoting Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1539 (Fed. Cir. 1983)). Here, Patent Owner has not established that the
licenses arose out of recognition and acceptance of the subject matter
claimed in the ’057 patent. See id. Indeed, the version of the licenses that
Patent Owner relies on in this proceeding is almost entirely redacted.
Because we cannot verify Patent Owner’s assertions regarding these
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agreements, we find that these agreements do not provide objective evidence
of nonobviousness.
4. Summary
On balance, we determine that Petitioner’s evidence of obviousness
outweighs the evidence of secondary considerations of nonobviousness
submitted by Patent Owner.
F. 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 (“Mot. to Seal”). 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 is not involved in this proceeding. Mot. to
Seal 1–2. With its Motion to Seal, Patent Owner filed confidential redacted
versions of Exhibits 2042, 2043, and 2044, but did not file confidential un-
redacted copies. Patent Owner indicated that it intended to file un-redacted
versions of the agreements, but had not received the consent of the third
parties to do so. Mot. to Seal 2.
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).
This burden includes showing that the information sought to be sealed is
truly confidential, and that such confidentiality outweighs the strong public
policy interest in having an open record in inter partes reviews.
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. These un-redacted portions do not provide sufficient detail to
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36
verify the contents of these exhibits. 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
entered in the parties’ co-pending district court proceeding. Mot. to Seal 2.
Patent Owner represents that it has conferred with Petitioner regarding the
terms of the proposed protective order; however, no agreement has been
reached. Id. at 3.
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. B (emphasis added)). As we cannot ascertain that the contents
of the redacted Exhibits 2042, 2043, and 2044 or what constitutes the Patent
Owner’s alleged 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.
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III. CONCLUSION
We conclude Petitioner has shown by a preponderance of the evidence
that claims 33–39 of the ’057 patent are unpatentable under 35 U.S.C. § 103
over Sullivan and SATA Standard.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 33–39 of the ’057 patent are held
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Seal is denied;
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, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Richard Marsh
Richard.marsh@faegrebd.com

Elizabeth Cowan Wright
Elizabeth.cowanwright@faegrebd.com

David Gross
David.gross@faegrebd.com

Calvin Litsey
Calvin.litsey@faegrebd.com

PATENT OWNER:

Jeffrey Han
jhan@velaw.com

Darryl M. Woo
dwoo@velaw.com

Nickou Oskoui
noskoui@velaw.com