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Kingston Tech. Co. v. SPEX Techs., Inc.

United States Court of Appeals for the Federal Circuit

February 21, 2020, Decided

2019-1256

Opinion

 [*630]  Stoll, Circuit Judge.

Kingston Technology Company, Inc. appeals the Patent Trial and Appeal Board's final written decision declining to find claims 55-57 of U.S. Patent No. 6,003,135 anticipated by PCT Application WO 95/16238 (Jones). Because substantial evidence supports the Board's determination that Jones does not expressly or inherently disclose certain limitations of claims 55 and 56, we affirm as to those claims. With regard to claim 57, we hold that the Board abused its discretion when it rejected Kingston's supplemental briefing for purportedly presenting a new theory of invalidity. We therefore vacate the Board's decision as to claim 57 and remand for the Board to consider Kingston's supplemental briefing addressing [**2]  claim 57.

Background

The '135 patent, titled "Modular Security Device," is directed to a modular, typically portable, device that communicates with a host computing device—e.g., a host computer. The disclosed modular device contains a security module and a target module. The security module provides security functionality such as encryption or password control, while the target module provides non-security functionality such as data storage, biometric scanning, a modem, or a smart card reader. The '135 patent discloses that separating the security elements of the modular device from other functionality provides for a single security module that can be used to provide security to multiple types of interactions with the host computer.

In certain embodiments, the security module can be positioned inline such that all communications between the target module and the host computer must travel through it. The same security module can also be used with a variety of target modules, thereby increasing flexibility. In addition, the modular device can be implemented to assume the identity of the target  [*631]  module such that the security module is transparent to the host computer.

Claims 55 and 57 are illustrative:

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798 Fed. Appx. 629 *; 2020 U.S. App. LEXIS 5268 **; 2020 WL 864876

KINGSTON TECHNOLOGY COMPANY, INC., Appellant v. SPEX TECHNOLOGIES, INC., Appellee

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-01021.

Disposition: AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED.

CORE TERMS

host, module, card, supplemental briefing, computing, anticipation, specification, modular, interaction, target, limitations, disclose, functions, automatic, storage, identification, invalidity, memory, data storage, adapted, comprising, presenting, patent, reply

Patent Law, Anticipation & Novelty, Fact & Law Issues, Jurisdiction & Review, Standards of Review, Substantial Evidence, Civil Procedure, Appeals, Abuse of Discretion, Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings