Seagate Technology (US) Holdings, Inc.v.ENOVA TECHNOLOGY GROUP

Patent Trial and Appeal Board

Dec 18, 2015

11282175 (P.T.A.B. Dec. 18, 2015)

Trials@uspto.gov Paper 47
571-272-7822 Entered: December 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

v.

ENOVA TECHNOLOGY CORP.,
Patent Owner.
____________

Case IPR2014-01449
Patent 7,900,057 B2
____________

Before MICHAEL R. ZECHER, NEIL T. POWELL, and
TIMOTHY J. GOODSON, Administrative Patent Judges.

GOODSON, 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 40–53 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 40–53 of the
’057 patent on the following proposed ground of unpatentability: Claims
40–53 as unpatentable under 35 U.S.C. § 103(a) over Sullivan
1
and SATA
Standard.
2
Paper 8, 16 (“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 40–53. 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 is the subject of inter partes reviews involving the
same parties in Cases IPR2014-01178 and IPR2014-01297. Additionally,
Case IPR2014–00683 involved the same parties and related U.S. Patent No.
7,136,995 B1 (“the ’995 patent”). Another panel of this Board mailed a
Final Written Decision in Case IPR2014-00683, in which they determined
that the Petitioner in that proceeding demonstrated by a preponderance of the
evidence that claims 1–15 of the ’995 patent are unpatentable. 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 payload 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, claims 40–42, 45, 48, and 51 are
independent. Claims 43 and 44, 46 and 47, 49 and 50, and 52 and 53
directly depend from claims 42, 45, 48, and 51, respectively. Claim 40 is
illustrative of the challenged claims, and is reproduced below:
40. A cryptographic method, comprising the steps of:
a cryptographic SATA apparatus detecting a PIO
(Programmed Input/Output) data-out command FIS (Frame
Information Structure) received from a host interface;
said cryptographic SATA apparatus determining whether
the received PIO data-out command FIS is associated with a
pre-defined category of command set that requires setting in
encryption mode;
said cryptographic SATA apparatus passing a PIO setup
FIS received from a device interface to the host interface;
said cryptographic SATA apparatus detecting a data FIS
payload received from said host interface;
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said cryptographic SATA apparatus encrypting said
detected data FIS payload; and
said cryptographic SATA apparatus detecting a Register-
Device to Host FIS received from said device interface, said
Register-Device to Host FIS representing completion of an
operation or an aborted operation associated with the PIO data-
out command FIS.
Ex. 1001, 16:43–63.
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 Tech., LLC, No. 2014-1301, slip op. 11–19 (Fed. Cir. Feb. 4, 2015)
(holding that “Congress implicitly adopted the broadest reasonable
interpretation standard in enacting the AIA,” and “the standard was properly
adopted by PTO regulation”). Under the broadest reasonable construction
standard, and absent any special definitions, claim terms are given 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).
The Decision to Institute did not provide express constructions for any
of the terms of the challenged claims, noting that “claim terms need only be
construed ‘to the extent necessary to resolve the controversy.’” Dec. to Inst.
6–7 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011)). Patent Owner’s Response does not propose any claim
constructions, asserting instead that “even under the claim constructions
proposed by Petitioner[], the references of record do not render any claims
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of the ’057 Patent obvious.” PO Resp. 15. The parties’ arguments in this
proceeding following the Decision to Institute do not provide any reason to
deviate from the claim construction approach in the Decision to Institute.
Based on the record before us, we need not provide express constructions for
any claim terms.
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.
C. Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, we consider the
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type of problems encountered in the art, the prior art solutions to those
problems, the rapidity with which innovations are made, and the
sophistication of the technology. Custom Accessories, Inc. v. Jeffrey-Allan
Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Also, we are guided by the
level of ordinary skill in the art as reflected by the prior art of record.
Okajima v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001).
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 M. 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.
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 id. 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.
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
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bachelor’s degree in electrical engineering, computer engineering or
computer science, and at least two years of experience.
D. Claims 40–53 – Obviousness over Sullivan (Ex. 1002) and SATA
Standard (Ex. 1003)
Petitioner argues claims 40–53 are unpatentable under 35 U.S.C.
§ 103(a) over Sullivan and SATA Standard. Pet. 22–60. Patent Owner
contests Petitioner’s position. PO Resp. 15–57. 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 40–53 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
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
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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. ¶ 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. Figure 9 depicts packet 700 transmitted to
encryption unit 90 from host 10. Id. at Fig. 9. Packet 700 includes
header 710 with command information 712, status information 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
different purposes. See id. at 185–200. The FIS type is indicated by the
value in a designated field of the FIS.
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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.
In addition, SATA Standard describes several command classes,
which are groups of specified commands that share a common sequence of
transfers in the execution of the command. See, e.g., Ex. 1003, 248–54.
Two such command classes are Programmed Input/Output (PIO) data-out
and Direct Memory Access (DMA) data-in. Id. at 252–53.
3. Claim 40
The Petition argues that each limitation of claim 40 is rendered
obvious by Sullivan in combination with SATA Standard. See Pet. 24–33.
In rebutting Petitioner’s arguments and evidence regarding claim 40, Patent
Owner’s Response focuses on two limitations: “determining whether the
received PIO data-out command FIS is associated with a pre-defined
category of command set that requires setting in encryption mode” (Ex.
1001, 16:47–50; see PO Resp. 16–45) and “passing a PIO setup FIS received
from a device interface to the host interface” (Ex. 1001, 16:51–53; see PO
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Resp. 45–47). For convenience, we refer to these limitations as the
“associated with” and the “passing” limitations, respectively.
a. “Associated with” Limitation
Petitioner asserts that Sullivan teaches that the encryption unit
encrypts data to be stored on the storage device. Pet. 26 (citing Ex. 1002
¶¶ 35, 47, 70). Petitioner further asserts that Sullivan also teaches that
control information, including commands and status information, is not
encrypted or decrypted. Id. (citing Ex. 1002, Abstract, ¶¶ 6, 9, claim 1,
claim 9). Petitioner argues that a skilled artisan would have understood
Sullivan as “embody[ing] the principle that only user data, and not control
information, should be encrypted.” Id. (citing Ex. 1006 ¶ 155). Petitioner’s
declarant, Dr. Darrell Long, testifies that a skilled artisan would have known
that in SATA, some of the commands in the PIO data-out command class
are used to write user data, whereas other commands are used to transmit
control information. Ex. 1006 ¶ 156 (citing Ex. 1003, 252; Ex. 1019, 81,
223). Against this backdrop, Dr. Long testifies that “it would have been a
routine task for . . . a person implementing these teachings in SATA to
configure the encryption unit of Sullivan to determine whether the PIO data-
out command . . . is a write command that requires setting Sullivan’s
encryption unit in encryption mode.” Id. Doing so “would have achieved
the predictable result, described by Sullivan, of encrypting only user data
while leaving control information unaltered and in a usable form.” Id.
(citation omitted).
Petitioner also points to Sullivan’s disclosure of a command pass filter
in the encryption unit for passing “only a predetermined allowed set of
commands,” wherein “[t]ypical allowed commands will be read, write, and
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other commands associated with data or memory access and storage.”
Pet. 28 (quoting Ex. 1002 ¶¶ 55, 56, and 64). According to Petitioner, a
skilled artisan would have known that Sullivan’s command pass filter,
implemented using SATA, would be capable of determining whether the
PIO data-out command is a command from the pre-defined group of PIO
write commands that require encryption. Id. at 29. Petitioner asserts that
such a combination would have been nothing more than the “predictable use
of prior art elements according to their established functions.” Id. (quoting
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)).
In response, 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. 18–34. 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 21. 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 23 (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 ¶ 71). 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
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by encrypting the header of each FIS would result in a non-functional
system. Id. at 25.
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. 28. 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.
Id. at 28–29 (citing Ex. 2061 ¶ 103). Patent Owner argues, with citation to
Dr. Conte’s declaration, 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 30–32 (citing Ex. 2061 ¶¶ 46, 105, 106).
Patent Owner’s next argument for why the cited combination does not
render obvious the “associated with” limitation is that SATA Standard does
not teach the limitation. See PO Resp. 34–45. 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 recognized that Sullivan, when
implemented using SATA, has the practical effect of allowing Data FISes to
be sent to the cryptographic core only when they are associated with a
command from the ‘predetermined allowed set of commands’ that are
‘typically associated with data or memory access and storage.’” Id. (quoting
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Pet. 29). 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 35–36. 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 (citing
Ex. 2061 ¶ 108; Ex. 1003, 250, 252).
Patent Owner also disputes Dr. Long’s testimony that, “[a]s a result of
the relationships specified by the SATA Standard, the nature of the contents
of any particular Data FIS can be determined by identifying the command
associated with that Data FIS.” PO Resp. 37 (quoting Ex. 1006 ¶ 130).
Patent Owner states that Dr. Long’s deposition testimony establishes that no
grouping of commands that read or write user data exists in SATA Standard,
itself, and that Dr. Long did not assemble such a list himself. Id. (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. (citing Ex. 2061 ¶ 34). Further, 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
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considering what these references together would teach to a skilled artisan.
See Reply 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 40, 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.
Further, 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
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header of a packet and encrypting the payload. See id.; PO Resp. 18 (citing
Ex. 1002 ¶¶ 39, 47), 23 (citing Ex. 1002 ¶ 9).
However, 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 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.
Further, 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
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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. 25; Reply 9. As
summarized above, Patent Owner argues that this non-functionality
demonstrates a flaw in Petitioner’s proposed combination. See PO Resp. 25.
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
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 9–10 (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 have recognized 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 8–9 (quoting Ex. 1002 ¶ 50).
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Thus, although Sullivan describes encryption operations for a single
packet, a skilled artisan would have appreciated that SATA devices utilize
prescribed sequences of FISes to transfer data. See Ex. 1006 ¶¶ 91–99
(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
packets 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 protocol defines that what would be a packet in
Sullivan becomes a transaction.
Ex. 2060, 79:13–80:1.
With respect to how to implement in a SATA device Sullivan’s
teachings to encrypt or decrypt user data and leave control information
unaltered, we find persuasive Petitioner’s explanation that a skilled artisan
would have found it obvious to determine whether the PIO data-out
command in the Register-Host to Device FIS is a write command that
requires setting the encryption unit in encryption mode. See Pet. 27, 29;
Ex. 1006 ¶¶ 156, 158; see also Reply 5–6; Ex. 1006 ¶¶ 30–35, 50.
Patent Owner’s second argument is unpersuasive because it is based
on a misunderstanding of Petitioner’s obviousness case. To recapitulate this
argument, Patent Owner identifies certain commands in SATA Standard,
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such as SMART READ LOG SECTOR, that result in Data FISes whose
payloads should not be encrypted. PO Resp. 34–36. 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). But, as
discussed above, Petitioner’s proposed combination relies on the association
in SATA Standard between PIO data-out commands that are used to write
user data and the resulting Data FIS with user data in its payload. See Pet.
27; Ex. 1006 ¶¶ 50, 101, 156; Reply Br. 5–6. Petitioner further provides an
articulated reason with a rationale underpinning explaining why it would be
obvious to implement this configuration–namely, to separate user data from
control information for encryption purposes, as taught by Sullivan. See Pet.
27; Ex. 1006 ¶ 156; Ex. 1002 ¶ 6. We agree with Petitioner that “Patent
Owner provides no rationale for why a skilled artisan would 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, 22:12–20, 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. 37. 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 ¶ 155. 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
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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
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. 1016.
In our view, this point confirms 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.
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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, based
on the record before us, 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. 37. However,
“[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. 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.
b. “Passing” Limitation
Turning to the “passing” limitation of claim 40, Petitioner asserts that
a skilled artisan would have known that this step would be carried out when
Sullivan’s encryption unit is implemented according to SATA Standard.
Pet. 29–30. Petitioner points to SATA Standard’s disclosure of the PIO
data-out command protocol, which calls for transmission of a PIO setup FIS
to the host. Ex. 1003, 252; see also id. at 198 (“Transmission of PIO Setup
by Device Prior to a Data Transfer from Host to Device”).
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Patent Owner argues that Petitioner has not addressed “whether a PIO
Setup FIS would present a cryptographic determination, despite Sullivan’s
disclosure regarding encrypting data payloads.” PO Resp. 45. This
argument appears to be premised on Patent Owner’s contention that a skilled
artisan implementing Sullivan in a SATA device would have treated each
individual FIS identically, and it is not persuasive for essentially the same
reasons discussed above with respect to the “associated with” limitation.
Patent Owner further argues that Sullivan’s filter embodiment teaches
away from the “passing” limitation because Sullivan’s filter module
“permits only two operations for packets that reach the cryptographic
module: they are passed to the cryptographic module and encrypted, or they
are rejected and filtered out.” PO Resp. 46 (citing Ex. 2061 ¶¶ 104–05,
122). Thus, according to Patent Owner, Sullivan teaches only encrypting,
decrypting, or rejecting packets, and does not teach bypassing cryptographic
processing as the “passing” limitation requires. See id. at 46–47.
Patent Owner’s teaching away argument is not persuasive. First, as
Petitioner correctly notes, Patent Owner has not pointed to specific language
in claim 40 that requires a determination whether or not to cryptographically
alter the PIO setup FIS. See Reply 19. The claim language merely recites
“said cryptographic SATA apparatus passing a PIO setup FIS received from
a device interface to the host interface.”
Further, even if we were to assumine that Patent Owner is correct that
the “passing” limitation requires that the PIO FIS bypasses cryptographic
processing in passing from host to device, we disagree that Sullivan’s
description of the filter module teaches away from causing a PIO setup FIS
to bypass the cryptographic engine. Sullivan teaches that the filter module
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may be “configured to pass only a predetermined allowed set of commands,
status and other information or categories of information.” Ex. 1002 ¶ 55.
Sullivan teaches that “[t]ypical allowed commands will be read, write, and
other commands associated with data or memory access and storage.”
Ex. 1002 ¶ 56. Dr. Long and Dr. Conte agree that information that is
allowed by Sullivan’s filter is transmitted to the cryptographic core for
encryption or decryption. See Ex. 1006 ¶ 117; Ex. 2061 ¶ 76.
Sullivan further teaches that, “[a]lternatively or additionally, the filter
module may include logic to reject a predetermined set of information or
categories of information, e.g. to reject certain types of data, address
pointers, and so on.” Ex. 1002 ¶ 55.
3
Based on this disclosure, Patent
Owner contends that Sullivan’s filter only permits two outcomes: (1)
passing packets to the cryptographic module for encryption; or (2) rejecting
them. PO Resp. 46 (citing Ex. 2061 ¶ 122).
However, because Sullivan describes the rejection feature as
alternative or additional, we find Dr. Long’s description of how a skilled
artisan would have understood these teachings to be more credible. Dr.
Long testifies that Sullivan’s paragraph 55 “reminds us there’s a number of
ways to do this, look-up table, formula logic, whatever. It discloses the idea
of you can pass some subset of commands to the encryption unit, and you
can block other set of commands. It’s silent on the intersection of those two
sets.” Ex. 2060, 74:3–8. Elaborating further, Dr. Long testifies:

3
Sullivan does not state expressly what becomes of the information that is
rejected. Dr. Conte testifies that it is “rejected and filtered out.” Ex. 2061
¶ 122. Dr. Long appears to be in agreement that information blocked by the
rejection feature is not processed further. See Ex. 2060, 74:17–18 (testifying
that “[t]here is a set of things that are blocked, which means they don’t go
anywhere”).
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There’s a set of things that are passed to the encryption unit.
There is a set of things that are blocked, which means they
don’t go anywhere. And a person of ordinary skill in the art
would think this through, but there could be things that are in
neither set.
Id. at 74:16–21. In other words, Sullivan’s description of the filter module
leaves open the possibility that some of the information will be neither
passed for encryption nor rejected and discarded. Thus, Sullivan’s
description of the filter module does not criticize, discredit, or otherwise
discourage a skilled artisan from causing certain FISes to bypass the
cryptographic engine.
Moreover, we agree with Petitioner that passing a PIO Setup FIS
without encrypting it would have been obvious to a skilled artisan
implementing Sullivan’s teachings in view of SATA Standard. As discussed
above in the context of the “associated with” limitation, we agree with
Petitioner that Sullivan teaches that control information should not be
encrypted or decrypted. For example, Sullivan’s claim 9 describes
“transmitting the encrypted data with the associated control information to
the second device, where the associated control information is transmitted in
an unencrypted form.” Ex. 1002, claim 9. Further, Dr. Long testifies that a
skilled artisan would have known that the PIO setup FIS contains control
information. Ex. 1006 ¶ 82, 179. Accordingly, we find persuasive
Petitioner’s argument that it would have been obvious to pass a PIO Setup
FIS from device interface to host interface without encrypting it.
c. Other Limitations of Claim 40
We have reviewed Petitioner’s contentions and supporting evidence
regarding the remaining limitations of claim 40 (Pet. 24–33), which Patent
Owner does not address specifically in its Response. We are persuaded that
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Petitioner presents sufficient evidence to support a finding that the
combination of Sullivan and SATA Standard renders obvious the subject
matter of these remaining limitations of claim 40. Based on the record
before us, we conclude that Petitioner has demonstrated by a preponderance
of the evidence that claim 40 would have been obvious over the combination
of Sullivan and SATA Standard.
4. Claims 41–53
Petitioner provides detailed explanations of how each limitation of
claims 41–53 is taught or suggested by the combination of Sullivan and
SATA Standard. Pet. 33–60. Patent Owner’s arguments for the
patentability of these claims relies on the “associated with” limitation and,
therefore, are not persuasive for the same reasons discussed above in the
context of claim 40. See PO Resp. 16–45.
Patent Owner also presents arguments directed specifically to claims
44, 47, 50, and 53. PO Resp. 47–49. Each of claims 44 and 47 recites
specific commands that are included in the pre-defined category of
command set. See Ex. 1001, 17:41–45, 18:6–10. Petitioner argues that the
commands recited in claims 44, 47, 50, and 53 come from SATA Standard,
and that a skilled artisan would have known that these commands are used
for writing or reading user data. Pet. 39–40 (citing Ex. 1003, 252; Ex. 1006
¶ 193), id. at 44–45 (citing Ex. 1006 ¶ 210); id. at 57–58 (citing Ex. 1006
¶ 249); id. at 60 (citing Ex. 1006 ¶ 268).
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 44, 47, 50, and 53. PO Resp. 48
(citing Ex. 2061 ¶¶ 38–39, 126–27). Patent Owner further argues that
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Sullivan’s teaching to pass for encryption “commands associated with data
or memory access and storage” would have le skilled artisans to include
commands that should not be cryptographically processed, such as SMART
READ LOG. See id. at 48–49 (citing Ex. 2061 ¶ 128).
Patent Owner’s arguments are not persuasive. It is undisputed that the
commands recited in claims 44, 47, 50, and 53 appear in SATA Standard.
See Ex. 1003, 250–254. Dr. Long’s testimony supports that a skilled artisan
would have known that the recited commands cause the transmission of user
data. See Ex. 1006 ¶¶ 193, 249.
4
We agree with Petitioner that “including
these commands as part of the ‘pre-defined category of command set’ would
have been obvious . . . in order to achieve Sullivan’s cryptographic goals.”
Reply 21 (citing Ex. 2006 ¶¶ 193, 210, 249, 268). 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 have reviewed Petitioner’s contentions and supporting evidence
regarding the remaining limitations of claims 41–53 (Pet. 33–60), which
Patent Owner does not address specifically in its Response. We are
persuaded that Petitioner presents sufficient evidence to support a finding

4
Further, as discussed above with respect to claim 40, 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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that the combination of Sullivan and SATA Standard renders obvious the
subject matter of these remaining limitations of claims 41–53. Based on the
record before us, we conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 41–53 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 1–32. PO Resp. 50–56.
Secondary considerations, when present, must always be considered
as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling,
Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
one with ordinary skill in the art at the time of the patent’s invention, the
totality of the evidence submitted, including objective evidence of
nonobviousness, may lead to a conclusion that the challenged claims would
not have been obvious to one with ordinary skill in the art. In re Piasecki,
745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary considerations may
include any of the following: long-felt but unsolved need, failure of others,
unexpected results, commercial success, copying, licensing, and praise. See
Graham, 383 U.S. at 17–18; Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007).
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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. 51–52. We 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
address the increasing requirement for privacy and
confidentiality, satisfying the growing demand for maximum
security.”
Id. at 51–52 (citing Ex. 2018, 1). Although Exhibit 2018 discusses general
features of Patent Owner’s X-Wall products, Patent Owner does not identify
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any praise due to specific elements that are recited in the challenged claims.
See PO Resp. 51–52; Ex. 2018.
Patent Owner also asserts that its products embodying the invention of
the ’057 patent have received industry awards. PO Resp. 52. 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.
at 55 (citing Exs. 2020, 2038, 2039).
5
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 the challenged claims.
Accordingly, Patent Owner has not established a sufficient nexus
between the merits of the claimed invention and 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
and advertisement of Patent Owner’s encryption devices. PO Resp. 52–54.
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.

5
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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Patent Owner argues that Petitioner sought out Patent Owner’s
assistance to bring hardware encryption products to market. PO Resp. 52.
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. (citing Ex. 2003 ¶¶ 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 53. 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 53–54 (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. 52–53 (citing Ex. 2003). For
example, Patent Owner argues that the sales and awards of Petitioner’s
“BlackArmor” product support the nonobviousness of the ’057 patent. Id. at
54 (citing Ex. 2009, 1; Ex. 2021, 1; Ex. 2003 ¶ 26). Presumably, Patent
Owner’s assertion is based on the allegation that Petitioner’s BlackArmor
product infringes the ’057 patent. Ex. 2003 ¶ 40. Petitioner disputes Patent
Owner’s allegations (id.) and Patent Owner has not established 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
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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. 52–54. 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. 2003 ¶ 40 (denying
infringement of the ’057 patent).
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
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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. 55 (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. at 55 (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 55–56 (citing Ex. 2024;
Ex. 2042–45). Patent Owner adds that both Initio and Western Digital
license the ’057 patent from Patent Owner.
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.
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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. Indeed, the version of the licenses that Patent
Owner relies on in this proceeding are almost entirely redacted. Because we
cannot verify Patent Owner’s assertions regarding these agreements, we find
that these agreements do not provide objective evidence of nonobviousness.
4. Summary
On balance, we determine that Petitioner’s evidence of obviousness
outweighs the evidence of secondary considerations of nonobviousness
submitted by Patent Owner.
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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. See 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
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. 2063) that reflects the terms of a protective order
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Patent 7,900,057 B2

36
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’x B (emphasis added)). As we cannot ascertain that the contents
of the redacted Exhibits 2042, 2043, and 2044 constitute the Patent Owner’s
confidential information, we do not grant Patent Owner’s request to enter its
proposed protective order. We do, however, enter the default Protective
Order provided in Appendix B of the Trial Practice Guide.
III. CONCLUSION
We conclude Petitioner has shown by a preponderance of the evidence
that claims 40–53 of the ’057 patent are unpatentable under 35 U.S.C. § 103
over Sullivan and SATA Standard.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 40–53 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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Patent 7,900,057 B2

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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:

Ajeet Pai
apai@velaw.com

Seth A. Lindner
slindner@velaw.com