“[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms.”
How later courts described this case
- “[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms.”
- holding a court should “not import limitations into claims from examples or embodiments appearing only in a patent’s written description, even when a specification describes very specific embodiments of the invention or even describes only a single embodiment”
Written by the judges who cited it.
The opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_______________________________________
)
Intellectual Ventures I, LLC, )
Intellectual Ventures II, LLC, )
)
Plaintiffs, )
)
v. ) Civil Action
) No. 16-10860-PBS
Lenovo Group Ltd., Lenovo )
(United States) Inc., LenovoEMC )
Products USA, LLC, and EMC )
Corp., )
)
Defendants. )
________________________________________)
)
Intellectual Ventures I, LLC, )
Intellectual Ventures II, LLC, )
)
Plaintiffs, ) Civil Action
) No. 16-10868-PBS
v. )
)
NetApp, Inc., )
)
Defendant. )
________________________________________)
MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
September 9, 2019
Saris, C.J.
INTRODUCTION
Intellectual Ventures I, LLC and Intellectual Ventures II,
LLC (collectively, “IV”) accuse Defendants EMC Corporation,
Lenovo Group Ltd., Lenovo (United States) Inc., LenovoEMC
Products, USA, LLC, and NetApp, Inc. (collectively “Defendants”)
of infringing U.S. Patent No. 6,968,459 (the “ʼ459 patent”)
entitled “Computing environment having secure storage device.”
IV asserts claims 15, 18, 24, and 25. Independent claims 15 and
18 state:
15. A method for accessing a storage device comprising:
detecting a storage device within the storage
drive;
sensing whether a storage device has device-
specific security information stored thereon;
providing full-access to the storage device
when the storage device has the device-
specific security information by:
encrypting digital data using the
security information during a write
access to write the digital data to the
storage device; and
decrypting digital data using the
security information during a read
access to read the digital data from the
storage device; and
providing restricted-access to the storage
device when the storage device does not store
the device-specific security information by
preventing the digital data from being
written to the storage device during the
write access.
18. A method for controlling access to a storage device
comprising:
detecting a storage device within a storage drive;
sensing whether the storage device has security
information generated from a combination of
device-specific information associated with the
storage device and user-specific information
associated with a user;
configuring the storage drive to prevent write
access to the storage device when the security
information is not sensed; and
configuring the storage drive to permit write
access by encrypting digital data using the
security information and writing the encrypted
digital data to the storage device when the
security information is sensed.
ʼ459 patent, claims 15 and 18. The parties dispute the claim
construction of five terms: (1) “detecting a storage device
within a storage drive,” including disputes around “storage
device” and “storage drive,” (2) “sensing whether a storage
device has [device-specific] security information,” (3) “device-
specific security information,” (4) “security information
generated from a combination of device-specific information
associated with the storage device and user-specific information
associated with a user,” and (5) “encrypting digital data using
the security information.” The Court held a non-evidentiary
Markman hearing on April 24, 2019, and the parties submitted
supplemental briefing afterwards.
BACKGROUND
The ʼ459 patent relates to a method of creating a secure
computing environment by “preventing the authorized user from
using sensitive data in an unauthorized manner.” ʼ459 patent,
col. 1, ll. 21-23. With “conventional security measures” prior
to the invention claimed in the ʼ459 patent, it was “very
difficult to prevent an authorized user from appropriating
sensitive data by simply copying the sensitive data to a
removable storage device such as a floppy diskette.” Id. at col.
1, ll. 23-26. To address this issue, the inventors of the ʼ459
patent developed a computing environment “in which a computer
automatically operates in a secure ‘full-access’ data storage
mode when the computer detects the presence of a secure
removable storage device.” Id. at col. 1, ll. 36-39.
Alternatively, “[i]f the computer senses a non-secure removable
storage device then the computer automatically operates in a
‘restricted-access’ mode.” Id. at col. 1, ll. 39-42.
Figure 1 of the ʼ459 patent, below, illustrates a system-
level overview, depicting “a diagram of a computer 100 that
automatically operates in a secure data storage mode when the
computer 100 senses that storage device 151 is a secure storage
device.” Id. at col. 2, ll. 30-33. “Each storage device 151
represents a removable device having a storage medium for
holding digital information such as a floppy diskette . . . .”
Id. at col. 3, ll. 8-10. “Each removable media drive 121
represents a device suitable for servicing access requests for
storage device 151 such as a floppy drive . . . .” Id. at col.
3, ll. 13-15.
1 0
112
SYSTEM MEMORY
19
ae Is 125
5 116
Bus Controller
System Adapter
20
Software 136
Applications
120 RI
Hard i 10 N tk LOCAL AREA NETWORK
ee Removable Media Drives dee K
sl
E+
it) —_
Remote
cc
42
40
FIG. |
According to the invention, “computer 100 automatically operates
in full-access data storage mode only when the computer 100
detects a secure removable storage device 151 present within any
one of the removable media drives 121.” Id. at col. 3, ll. 57-
60. To “automatically detect whether a storage device 151 isa
secure device, computer 100 determines whether device-specific
security information was written to storage device 151.” Id. at
col. 4, 11. 6-9. Method 200, illustrated in the figure below,
details an exemplary way in which software applications 136 on
computer 100 (hereinafter referred to as the “storage manager”)
detect the required security information to allow computer 100
to operate in full-access mode.1 See id. at col. 4, ll. 46-52.
“In block 204, the storage manager detects whether storage
device 151 is a ‘secure’ removable device by attempting to read
any device-specific security information from storage device
151.” 2 Id. at col. 5, ll. 7-10. “In block 206, the storage
manager retrieves drive-specific security information that is
specific to removable media drive 121 such as a serial number or
calibration parameters . . . .” Id. at col. 5, ll. 20-22. “In
block 208, the storage manager retrieves user-specific security
information from the computer user by, for example, prompting
the user for a password, or performing a retina or fingerprint
scan.” Id. at col. 5, ll. 39-42. “In block 210, the storage
manager retrieves manufacturing information that was physically
1 “In one embodiment, the storage manager performs method 200 anytime a .
. . storage device 151 is inserted into removeable media drive 121. In
another embodiment, the storage manager performs method 200 at the request of
a user.” ʼ459 patent, col. 4, ll. 57-62.
2 “[I]n one embodiment the device-specific security information is a hash
of the addresses of the bad sectors for storage device 151. Because it is a
function of the physical characteristics of the actual storage medium within
storage device 151, the format information is inherently unique to each
storage device 151.” ʼ459 patent, col. 4, ll. 12-17. “In other words, the
addresses of the bad sectors change from device to device.” Id. at col. 4,
ll. 18-19. This seems like cataloguing where a specific floppy disk or CD is
scratched or damaged such that the specific portion of the removeable storage
device could not have data written on to it, or read from it, in those areas.
etched on storage device 151 during the manufacturing process.”
Id. at col. 5, 11. 47-49.3
2 OT
204-,
_ Error
Read media-specific information from the storage device.
206
Error
Read drive-specific information from the storage drive.
208
4 3 . Error
Get user-specific security information from the user. =
210~
Read manufacturing information etched on the storage Error
device during manufacturing.
21 a
i
Generate unique encryption key.
214 16
Operate in "full-access" Operate in “restricted-
mode using the key. _access" mode.
3 “For example, in one embodiment a laser etches a unique serial number,
run number or a date stamp on the storage device during manufacturing. In
another embodiment, however, storage device 151 contains a computer chip for
electronically storing a unique identifier.” Id. at col. 5, 11. 49-54.
If for some reason the storage manager is unable to read or
retrieve the necessary security information in one of the
blocks, the storage manager proceeds to block 216 and operates
computer 100 in a restricted-access data storage mode. Id. at
col. 5, ll. 15-19, 35-38, 42-46, 54-57. In restricted-access
mode, removable media-drive 121 is configured “as a read-only
drive such that the user can read data from the removable
storage device but cannot write data to the drive. In addition,
the user is prevented from accessing non-sensitive data within
the organization.” Id. at col. 7, ll. 9-13.
Otherwise, if the storage manager is able to retrieve or
read the required security information, then “[i]n block 212,
the storage manager generates a cryptographic key by combining
the information, or a portion thereof, that was retrieved in
blocks 206 through 210.” Id. at col. 5, ll. 58-60. In one
embodiment, “the storage manager combines, such as by
concatenating, all or various portions of the information that
was retrieved in blocks 206 through 210 and submits the result
to a conventional cryptographic hashing algorithm.” Id. at col.
6, ll. 4-8. When the storage manager is successfully able to
complete method 200, computer 100 operates in full-access mode.
When the computer is operating in full-access mode,
“storage management software uses a cryptographic key to encrypt
and decrypt the data stream between the computer and the
removable storage device.” Id. at col. 3, ll. 61-64. Depending
upon the system’s selected security level, the cryptographic key
is generated by combining one or more of the following:
(1) device-specific security information derived from
the unique format information of the removable storage
device, (2) manufacturing information that has been
etched onto the storage device, (3) drive-specific
information, such as drive calibration parameters,
retrieved from the storage drive, and (4) user-
specific information such as a password or biometric
information.
Id. at col. 3, ll. 66 – col. 4, ll. 5. In addition to encrypting
data written to the storage device, the computer allows the user
to access the local area network and remote computer. Id. at
col. 6, ll. 46-47. Thus, “[i]n this manner, the present
invention allows storage device 151 to be used as an ‘access
card’ by which the user gains access to sensitive data of the
organization. In addition, data stored on other storage devices,
such as internal hard disk 120 . . . may actually be encrypted
using the unique key generated from the unique format
information of key disk 151.” Id. at col. 6, ll. 48-54.
LEGAL STANDARD
Claim construction is an issue of law for the court.
Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
Courts seek to give words of a claim their “ordinary and
customary meaning,” which is “the meaning that the term would
have to a person of ordinary skill in the art in question at the
time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303,
1312-13 (Fed. Cir. 2005) (en banc) (citations omitted). A person
of ordinary skill in the art looks to “the words of the claims
themselves, the remainder of the specification, the prosecution
history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the
art.” Id. at 1314 (quoting Innova/Pure Water, Inc. v. Safari
Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir.
2004)). “[T]he specification is the single best guide to the
meaning of a disputed term,” and is “thus, the primary basis for
construing the claims.” Id. at 1321 (citations and quotations
omitted). However, a court should be careful not to import
limitations from specific embodiments in the specification into
the claims, see id. at 1320, nor should the construction of the
claim exclude a preferred embodiment, see Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583-84 (Fed. Cir. 1996).
The prosecution history “often inform[s] the meaning of the
claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the
course of prosecution.” Phillips, 415 F.3d at 1317. The
prosecution history “consists of the complete record of
proceedings before the PTO,” id., including a patent owner’s
statements during an inter partes review proceeding, see Aylus
Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir.
2017). This “ensure[s] that claims are not argued one way in
order to maintain their patentability and in a different way
against accused infringers.” Id.
DISCUSSION
1. “detecting a storage device within a storage drive”
Defendants’ Proposed
IV’s Proposed Construction
Construction
Detecting the presence of a Determining that a removable
storage device within a storage storage device, such as a
drive. floppy diskette, has been
inserted into a storage drive.
• “storage device” – a
device capable of storing • “storage device” – a
computer data. device having a storage
medium for holding
• “storage drive” – hardware digital information.
and software used to host
and represent a storage • “storage drive” – a
device in a computer or device suitable for
computer system. servicing access requests
for the storage device.
The parties dispute the meaning of the term “detecting a
storage device within a storage drive.” Defendants argue that
this term requires a “removable” storage device, while IV argues
that the claim term includes detecting both removable storage
devices and fixed storage devices, like hard disk drives. At the
hearing, the parties agreed that a “storage device” is “a device
having a storage medium for holding digital information.” Docket
No. 250 at 39:17-40:8. The parties also dispute the meaning of
the term “storage drive.”
IV argues that because the term “removable” is not present
in either claim 15 or 18, its inclusion would improperly import
a limitation into the claim language. See JVW Enters., Inc. v.
Interact Accessories, Inc., 424 F.3d 1324, 1335 (Fed. Cir. 2005)
(holding a court should “not import limitations into claims from
examples or embodiments appearing only in a patent’s written
description, even when a specification describes very specific
embodiments of the invention or even describes only a single
embodiment”).
A court may depart from the plain and ordinary meaning of
the claim language in only two instances: (1) if the patentee is
acting as his own lexicographer, or (2) “when the patentee
disavows the full scope of the claim term either in the
specification or during prosecution.” Hill-Rom Servs., Inc. v.
Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (quoting
Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012)). Neither party argues that the patentee is
acting as his own lexicographer, but Defendants assert that the
patentee disavowed detecting storage devices that are not
removable. A court may find “disavowal or disclaimer based on
clear and unmistakable statements by the patentee that limit the
claims, such as ‘the present invention includes . . .’ or ‘the
present invention is . . .’ or ‘all embodiments of the present
invention are . . . .’” Luminara Worldwide, LLC v. Liown Elecs.
Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). When a patent
“describes the features of the ‘present invention’ as a whole,
this description limits the scope of the invention.” Regents of
Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir.
2013) (quoting Verizon Servs. Corp. v. Vonage Holdings Corp.,
503 F.3d 1295, 1308 (Fed. Cir. 2007)).
Here, the specification states that: “the present invention
allows storage device 151 to be used as an ‘access card’ by
which the user gains access to sensitive data of the
organization.” ʼ459 patent, col. 6, ll. 48-50. Since “[e]ach
storage device 151 represents a removable storage device,” the
specification confirms that the invention involves a storage
device that can be inserted into and removed from the computer,
like an “access card.” Id. at col. 3, ll. 8-9; see also id. at
fig.1 (showing a computer system which depicts a removable
device/drive combination).
In the specification, the patentee also distinguishes prior
art, stating that “with conventional security measures it is
very difficult to prevent an authorized user from appropriating
sensitive data by simply copying the sensitive data to a
removable storage device such as floppy diskette.” Id. at col.
1, ll. 23-26. “According to the invention,” this problem is
“addressed by a secure computing environment in which a computer
automatically operates in a secure ‘full-access’ data storage
mode when the computer detects the presence of a secure
removable storage device. If the computer senses a non-secure
removable storage device then the computer automatically
operates in a ‘restricted-access’ mode.” Id. at col. 1, ll. 3643
(emphasis added). While the term “storage device” is broad
enough to include internal hard disk drives, the patentee has
disavowed an invention that detects fixed as well as removable
storage devices.
IV argues that the doctrine of claim differentiation
requires that “removable” not be read into claims 15 and 18
because Defendants’ construction would make the language of
dependent claims 5, 28, 37, and 46 superfluous. “The doctrine of
claim differentiation stems from the common sense notion that
different words or phrases used in separate claims are presumed
to indicate that the claims have different meanings and scope.”
Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1368–69
(Fed. Cir. 2005) (cleaned up). For example, dependent claim 28
recites: “The method of claim 18, wherein writing the encrypted
digital data includes writing the encrypted digital data to a
removable storage medium.” ʼ459 patent, claim 28. Claim 46 also
recites, “[t]he computer of claim 39, wherein the storage device
is a removable storage medium.” Id. at claim 46. Thus, IV argues
the storage device detected in claims 15 and 18 need not be
removable.
Defendants respond that the “removable storage medium” in
the claims is actually described in the specification as a
subtype of a removable storage device. See id. at col. 7, ll.
43-65 (discussing the floppy diskette depicted in figures 3A and
3B as one embodiment of a storage device and the disc-shaped
magnetic medium within it as a storage medium); see also id. at
claim 16 (“The method of claim 15, wherein encrypting the
digital data includes generating a cryptographic key as a
function of format characteristics of an underlying storage
medium of the storage device.”). While the record is not clear
about the difference between a “storage device” and a “storage
medium,” the use of different terms undermines IV’s position
that “removable” must not be included in claims 15 and 18.
Therefore, “detecting a storage device within a storage drive”
means “detecting a removable storage device within a storage
drive.”
The parties also dispute the meaning of “storage drive.”
Defendants, drawing from language in the specification, propose
that a storage drive is “a device suitable for servicing access
requests for the storage device.” See id. at col. 3, ll. 13-14
(“Each removable media drive 121 represents a device suitable
for servicing access requests for storage device 151 . . . .”).
IV proposes that a storage drive is “hardware and software used
to host and represent a storage device in a computer or computer
system.” But this language does not appear in the claims,
specification, or extrinsic evidence.
The claims require that a storage drive must be able to
prevent or permit “write access” to a storage device depending
on whether the removable storage device detected within it is
secure. See id. at claim 18 (claiming a method for controlling
access to a storage device comprising “configuring the storage
drive to prevent write access . . . configuring the storage
drive to permit write access”). The specification supports
Defendants’ reading of the claim language. The specification
explains that “[e]ach removable media drive 121 represents a
device suitable for servicing access requests for storage device
151 such as a floppy drive, a magneto-optical drive, a CD-ROM
drive, a SuperDisk™ drive, a removable-cartridge drive such as a
Zip™ drive, or even a tape drive.” Id. at col. 3, ll. 13-17; see
also id. at col. 3, ll. 7-8 (“[R]emovable media drives 121 . . .
are used to access one or more removable storage devices 151.”).
The parties agree that technical dictionaries from the time
of the invention do not define “storage drive.” However,
dictionary definitions of “drive” and “disk drive” buttress
Defendants’ proposed construction. See Docket No. 258-1 (Ex. 18,
The Authoritative Dictionary of IEEE Standards Terms (7th ed.
2000)) at 5 (“disk drive”: “[a]n electromechanical device that
reads from and writes to disks.”); Docket No. 258-2 (Ex. 19, The
Computer Glossary (9th ed. 2001)) at 4 (“disk drive”: “[a]
peripheral storage device that holds, spins, reads and writes
magnetic or optical disks. It may be a receptacle for disk
cartridges, disk packs or floppy disks, or it may contain
nonremovable disk platters like most personal computer hard
disks.”); Docket No. 258-3 (Ex. 20, The Computer Desktop
Encyclopedia (2d ed. 1999)) at 5 (same); Docket No. 258-4 (Ex.
21, Microsoft Computer Dictionary (4th ed. 1999)) at 5 (“disk
drive”: “[a]n electromechanical device that reads from and
writes to disks. . . . Two types of disk drives are in common
use: floppy disk drives and hard disk drives.”). Additionally,
Defendants’ proposed construction is supported by
contemporaneous marketing literature from Imation, the original
assignee of the ʼ459 patent. A 1998 presentation given by
Imation on its SuperDisk product (reference in the patent’s
specification) describes a “drive” as a component that can
“[r]ead and write 120 MB superdisks.” Docket No. 258-5 at 7.
In supplemental briefing, IV raises a new argument that a
storage drive could be either a “logical drive” or a “physical
drive.” A “logical drive” is “[a]n allocated part of a physical
disk drive that is designated and managed as an independent
unit. For example, drives C:, D: and E: could represent three
physical drives or one physical drive partitioned into three
logical drives. Contrast with physical drive.” Docket No. 259-2
(Ex. 1, The Computer Desktop Encyclopedia (2d. ed. 1999)) at 6.
A “physical drive” is defined as “the actual unit of hardware of
a disk or tape drive.” Id. at 7. IV argues that a logical drive
could be the storage drive because a storage device could be
connected to a logical drive destination. However, IV provides
no support -- intrinsic or extrinsic -- for this construction.
Additionally, IV does not explain whether a logical drive can
read from or write to a removable storage device. This last-
minute proposed construction is incongruous with the rest of the
claim language and specification. Accordingly, the Court
declines the proposed construction and limits the term to a
physical drive that can read from and write to a storage device.
A “storage drive” is a “device suitable for servicing access
requests for the storage device.”
2. “sensing whether a storage device has device-specific
security information” and “sensing whether the storage device
has security information”
IV’s Proposed Construction Defendants’ Proposed
Construction
No construction required. Determining whether the storage
device has [devicespecific
security information/security
information] stored on it.
This step requires sensing the
presence of security
information stored on the
device, rather than sensing
whether a password is required
to access the device.
The parties dispute the meaning of the term “sensing
whether the storage device has security information.” ʼ459
patent, claim 18. IV argues that the term does not require
construction because it only requires the application of
commonly understood words. Defendants urge the Court to
interpret the word “has” to mean “stored on it.”
The Court begins with the plain and ordinary meaning of the
word “has,” which means “to hold, include, or contain as a part
or a whole.” Docket No. 231-2 (Merriam-Webster’s Collegiate
Dictionary (10th ed. 1993)) at 5. This meaning is consistent
with the position IV took during the two inter partes reviews of
the ʼ459 patent -- the first filed by Unified Patents, Inc.,
(IPR2016-01404) and the second by the Defendants (IPR2017-
00467). During these proceedings, IV made several arguments
about the scope of claims 15 and 18 in order to distinguish the
cited prior art. The doctrine of prosecution disclaimer extends
to inter partes review proceedings as long as a patent owner’s
statements are “clear and unmistakable.” Aylus Networks, 856
F.3d at 1360-61.
To distinguish a prior art patent (“Blakley”) during inter
partes review, IV argued that the sensing limitation required
the security information to be stored on the device for both
claim 15 and claim 18. See Docket No. 231-3 at 20 (“Petitioners’
argument ignores a key portion of the claim element -- that the
sensing action determines whether the device-specific security
information is stored on the storage device. Petitioners’
omission is not surprising because Blakley never stores the
pseudorandom bit string on the storage device.”); id. at 33
(“Petitioners’ argument [for claim 18] fails because Blakley
never discloses ‘sensing whether the storage device has’ the
pseudorandom bit string. As explained above relative to claim
15, Petitioners conflate the pseudorandom bit string, which
Blakley generates anew for each disk access and never stores,
with the one-way function of the secret key, which is used for
password authentication.” (emphasis added)).
IV’s argument was adopted by the PTAB in denying
institution of inter partes review on claims 15 and 18. The
Board noted that claim 15 “requires . . . a determination of
whether the storage device contains ‘device-specific security
information.’” Docket No. 231-6 at 10 (emphasis added). It went
on to find that “Blakley teaches [the] . . . pseudorandom bit
string is not stored on the storage device, as required by claim
15.” Id. at 12 (emphasis added). As to claim 18, the Board held
that it also “requires a determination of whether the storage
device contains ‘security information.’” Id. at 13 (emphasis
added). And it declined to institute review of claim 18 for the
same reasons as claim 15. See id. at 14.
Therefore, the Court construes “sensing whether the storage
device has security information” to mean “sensing whether the
storage device contains security information stored on it.”
Defendants’ also propose a limitation on what “sensing”
requires. The Court gives the word “sensing” its plain and
ordinary meaning.
3. “device-specific security information”
IV’s Proposed Construction Defendants’ Proposed
Construction
Information specific to a Information specific to the
storage device that is used to storage device (as opposed to
secure information. manufacturing information that
has been etched onto the
storage device, drive-specific
information, and user-specific
information) that is used to
secure access to the storage
device.
The parties dispute the meaning of the term “device-
specific security information.” Both parties agree that device-
specific information is information specific to a storage
device. Defendants seek to construe the claim language to
exclude “manufacturing information that has been etched onto the
storage device, drive specific information, and user-specific
information” from also being “device-specific security
information,” while IV argues that its construction is
consistent with the construction adopted by the Patent Trial and
Appeal Board (“PTAB”) in a related inter partes review
proceeding. The parties also disagree about whether the security
information is used to “secure information” or used to “secure
access to the storage device.”
The Court begins with the claim language. Claim 18
explicitly differentiates between “device-specific information
associated with the storage device” and “user-specific
information associated with a user.” ʼ459 patent, claim 18; see
also Innova/Pure Water, 381 F.3d at 1119 (“[W]hen an applicant
uses different terms in a claim it is permissible to infer that
he intended his choice of different terms to reflect a
differentiation in the meaning of those terms.”).
The specification differentiates between the four types of
security information. See, e.g., ʼ459 patent, col. 3, ll. 64 –
col. 4, ll. 5 (noting that depending upon the selected security
level, the cryptographic key is generated by combining
(1) device-specific security information, (2) manufacturing
information, (3) drive-specific security information, and
(4) user-specific security information). It also states that in
one embodiment “the device specific security information can be
combined with information that was etched into the storage
device 151 via a laser during manufacturing,” to increase the
level of security of computer 100. Id. at col. 4, ll. 20-25.
During a prior inter partes review proceeding, IV argued:
[T]he ʼ459 patent consistently stresses that the
“device-specific security information” is separate and
distinct from other security information, including
“(2) manufacturing information that has been etched
onto the storage device, (3) drive-specific
information, such as drive calibration parameters,
retrieved from the storage device, and (4)
userspecific information such as a password or
biometic [sic] information.”
Docket No. 231-4 at 21 (emphasis removed) (quoting ʼ459 patent,
col. 4, ll. 1-5). Because statements made by a patent owner
during an inter partes review proceeding are part of the
prosecution history, IV may not now argue that “device-specific
security information” includes other types of security
information.
IV asserts that its proposed construction is based on the
PTAB’s construction of the term. In a prior inter partes review
proceeding, non-party UPI argued that “device-specific security
information,” meant “information that is specific to the storage
device and used to secure access to the storage device.” Docket
No. 233-2 (Ex. A, IPR2016-01404, Final Written Decision) at 11.
IV responded that the information was “unique,” rather than
specific. Id. The PTAB construed “device-specific security
information” to mean “information particular to, but not
necessarily unique to, a storage device used to secure access to
the storage device.” Id. at 12-13. The Court adopts the PTAB’s
definition, which is based on the plain and ordinary meaning of
“specific,” and holds that “device-specific security
information” means “information particular to, but not
necessarily unique to, a storage device used to secure access to
the storage device.” Consistent with IV’s prior statements to
the PTAB, the Court also excludes from the construction the
other three types of security information.
4. “security information generated from a combination of
device-specific information associated with the storage device
and user-specific information associated with a user” / “the
security information”
IV’s Proposed Construction Defendants’ Proposed
Construction
Information created by Information that is created by
combining together combining together (such as by
devicespecific information and concatenating) device-specific
userspecific information for information and user-specific
the purpose of securing access. information and that is used to
control access.
This step requires more than
using information falling under
both categories.
At the hearing, the parties appeared to agree that the
Court should use the plain and ordinary meaning of the term. See
Docket No. 250 at 114:18-25. Consequently, the term “security
information generated from a combination of device-specific
information associated with the storage device and user-specific
information associated with a user” requires no further
construction.
5. “encrypting digital data using the security information”
IV’s Proposed Construction Defendants’ Proposed
Construction
Using the security information Using the security information
to create an encrypted form of to mathematically transform
the digital data. digital data into a secret,
encoded form.
Both claims 15 and 18 describe “encrypting digital data
using the security information.” ʼ459 patent, claims 15 and 18.
The parties dispute what “encrypting” means. The Court gives the
term its plain and ordinary meaning. See Docket No. 231-10 (Ex.
9, Newton’s Telecom Dictionary (20th ed. 2004)) at 4 (describing
“encryption” as “the transformation of data into a form
unreadable by anyone without a secret decryption key”); Docket
No. 231-11 (Ex. 10, McGraw-Hill Illustrated Telecom Dictionary
(2001)) at 4 (“Encryption”: “The process of translating of data
into a secret code.”); Docket No. 231-12 (Ex. 11, Dictionary of
Computer and Internet Terms (7th ed. 2000)) at 4 (“encryption”:
“the act of converting information into a code or cipher so that
people will be unable to read it.”); Docket No. 231-13 (Ex. 12,
Microsoft Press Computer Dictionary (3rd ed. 1997)) at 4
(“encryption”: “The process of encoding data to prevent
unauthorized access, especially during transmission. Encryption
is usually based on a key that is essential for decoding.”);
Docket No. 231-14 (Ex. 13, The New Oxford American Dictionary
(2d ed. 2005)) at 4 (“encrypt”: “convert (information or data)
into cipher or code, esp. to prevent unauthorized access”); see
also Docket No. 258-5 at 35 (Imation, the original assignee of
the patent, describing “encryption” as “the scrambling of
information to make it accessible only to specific parties . . .
requir[ing] a key or password for access”). So, the term
requires no further construction.
ORDER
For the reasons stated above, the Court construes the
disputed terms as follows:
- “detecting a storage device within a storage drive” means
“detecting a removable storage device within a storage
drive”
o “storage device” is “a device having a storage medium
for holding digital information”
o “storage drive” is “a device suitable for servicing
access requests for a storage device”
- “sensing whether the storage device has security
information” means “sensing whether the storage device
contains security information stored on it”
- “device-specific security information” means “information
particular to, but not necessarily unique to, a storage
device used to secure access to the storage device
(excluding manufacturing information, drive-specific
information, and user-specific information)”
The terms “security information generated from a combination of
device-specific information associated with the storage device
and user-specific information associated with a user” and
“encrypting digital data using the security information” do not
require construction.
SO ORDERED.
/s/ PATTI B. SARIS
Patti B. Saris
Chief United States District Judge