By Peter Reap, J.D., LL.M.
The Patent Trial and Appeal Board did not err in determining that Enova Technology Corp.’s patent for an apparatus and method for processing cryptographic processing in a computer storage device like a hard drive was invalid as obvious, the U.S. Court of Appeals for the Federal circuit has ruled. Specifically, substantial evidence supported the Board’s finding that two items of prior art disclosed the patent’s pre-defined category limitation, and the Board did not commit reversible error in evaluating the objective indicia of obviousness offered by Enova. Thus, the Board’s rulings were affirmed (Enova Technology Corp. v. Seagate Technology (US) holdings Inc., September 6, 2017, Lourie, A.).
Enova’s U.S. Patent 7,900,057 (the ’057 patent) generally describes an apparatus and method for cryptographic processing in a system using the serial Advanced Technology Attachment protocol ("SATA protocol"). The SATA protocol is often used to transmit data to a connected electrical storage device, for example, to a computer hard drive. In the SATA protocol, data is communicated using frame information structures ("FISes"). An FIS includes two parts: a header, which indicates the FIS type, and a body (or "payload"), which contains data.
During prosecution of the ‘057 patent before the USPTO, the examiner rejected the then-pending claims as obvious over a combination of U.S. Patent Publication 2004/0054914 ("Sullivan"), which relates to encryption and decryption of data in a serial communication system, in view of a technical document describing implementation of the SATA protocol. The pre-defined category limitation was added, among others, in response to that rejection, and the examiner then indicated that the claims were ready for allowance with nonsubstantive additions.
In 2014, Seagate Technology (US) Holdings and Seagate Technology (together, Seagate) filed three petitions for IPR of the ’057 patent, alleging in sum that all claims of the ’057 patent would have been obvious at the time of the invention over Sullivan and SATA. The Board instituted each IPR.
In its final written decisions, the Board concluded that claims 1-53 of the patent were unpatentable as obvious. Specifically, the Board reasoned that the combination of Sullivan and SATA disclosed or suggested the pre-defined category limitation because Sullivan disclosed that control data should be treated differently from user data, and SATA provided sufficient description of the commands in the SATA protocol to allow a skilled artisan to implement a system where user data were encrypted and control data were not. Enova appealed.
Content of the prior art. Enova first argued that because Sullivan treats the payloads of all packets the same, it cannot disclose or suggest the patented method of treating payloads differently depending on the associated command. The appellate court agreed with Seagate, however, that the Board’s finding that Sullivan treats user and control data differently was supported by substantial evidence. The evidence supported the Board’s finding that Sullivan discloses a system that does not encrypt all payload data, as it states that control and user data are treated differently for encryption purposes. Considering this broad disclosure, the Board’s finding that Sullivan discloses that user data can be encrypted and control data should not be encrypted was supported by substantial evidence.
Enova next argued that neither Sullivan nor SATA discloses grouping the commands in the SATA protocol into pre-defined categories, or using those categories to determine which payloads to encrypt. The appellate court disagreed, holding that the Board’s finding that the combination of Sullivan and SATA suggests the predefined category limitation was supported by substantial evidence. As explained previously, Sullivan discloses that control data should not be encrypted, and user data may be encrypted. The Board found that SATA describes the general manner in which the SATA protocol uses FISes to transfer data, that different types of FISes may be used for different purposes, and that certain commands are associated with transferring certain types of data. The Board also credited Dr. Long’s testimony during his deposition that implementation of Sullivan’s invention using the SATA protocol would require using FISes, and that because Sullivan disclosed that control data should be treated differently from user data, a skilled artisan would therefore treat FISes with control data differently from FISes with user data.
Enova next contended that even if the combination does disclose the pre-defined category limitation, a skilled artisan would not have been motivated to combine Sullivan and SATA because the combination would have been inoperative. To the contrary, the Board’s finding of a motivation to combine was supported by substantial evidence, the court held. The Board did not find that Sullivan and SATA would have produced an inoperable device, but instead recognized that the combination would be inoperable if Sullivan was read as narrowly as Enova urged. The Board determined that that result weighed against reading Sullivan so narrowly, particularly where Sullivan specifically disclosed that it could be used in a SATA system.
Enova next attacked Seagate’s expert evidence as conclusory and infected by hindsight. But the Board used Dr. Long’s evidence properly. Dr. Long based his conclusions on his own experience and the content of both Sullivan and SATA. Moreover, Dr. Long did consider the possibility of objective indicia of nonobviousness.
Finally, Enova argued that the Board improperly shifted the burden of persuasion to Enova. This contention was without merit, the court ruled.
Objective indicia. Enova next challenged the Board’s evaluation of its evidence of objective indicia of nonobviousness. Enova introduced evidence that it argued established commercial success, industry praise, and copying and licensing by others.
The Board’s findings that Enova did not adequately prove nexus or commercial success were supported by substantial evidence, according to the Federal Circuit. Substantial evidence supported the finding that Enova did not provide sufficient evidence tying the purported success of its own products to the claimed invention. Indeed, the document that Enova argued links the success of its X-Wall products to the claimed invention also lists other benefits—for example, operating system independence—unrelated to the claimed invention’s cryptographic processing. Moreover, Enova did not present data establishing the commercial success of its own products or Seagate’s products.
Further, substantial evidence supported the Board’s finding that Enova failed to link the evidence of praise to the claimed invention. Enova’s evidence of praise only addressed the products at a high level, and Enova’s expert offered only conclusory opinions in support.
Finally, Enova argued that the Board should have credited its evidence of copying and licensing. Although the Federal Circuit has recognized that knowledge of the patent and products embodying the patent may be relevant in determining whether an invention was copied, it has not held that such knowledge is sufficient to establish copying, the court said. At best, the evidence submitted by Enova established that Seagate and Initio knew of the patent and of Enova’s products. Similarly, the Board’s findings relating to Enova’s evidence of licensing were supported by substantial evidence. The existence of licenses was insufficient to establish nonobviousness; there must be some nexus between the licenses and the claimed invention.
The case is Nos. 2016-1749, 2016-1751, and 2016-2039.
Attorneys: Darryl Michael Woo (Vinson & Elkins LLP) for Enova Technology Corp. David J.F. Gross (Faegre Baker Daniels LLP) for Seagate Technology [US] Holdings Inc. and Seagate Technology LLC.
Companies: Seagate Technology [US] Holdings Inc.; Seagate Technology LLC; Enova Technology Corp.
MainStory: TopStory Patent FedCirNews
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