Novocrypt_IPR Petition IPR2015-01606

Paper No. __ Filed: July 22, 2015

Filed on behalf of: Unified Patents Inc. By: P. Andrew Riley James D. Stein

Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Avenue, NW Washington, DC 200014413 Telephone: 202-408-4266

Facsimile: 202-408-4400

Jonathan Stroud Unified Patents Inc. 1875 Connecticut Ave. NW, Floor 10 Washington, D.C., 20009

Telephone: 202-805-8931 Email: [email protected]

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________

UNIFIED PATENTS INC.,

Petitioner

v.

NOVOCRYPT LLC Patent Owner

____________

IPR201501606 Patent 7,743,213

Portable Storage Device with Network Function ____________

PETITION FOR INTER PARTES REVIEW

OF U.S. PATENT 7,743,213

i

TABLE OF CONTENTS I. INTRODUCTION .............................................................................................. 1 II. GROUNDS FOR STANDING .......................................................................... 1 III. MANDATORY NOTICES .............................................................................. 1

A. REAL PARTY-IN-INTEREST ................................................................................. 1 B. RELATED MATTERS ........................................................................................... 2 C. LEAD AND BACK-UP COUNSEL; CONSENT TO ELECTRONIC SERVICE ................. 2

IV. FEE PAYMENT ............................................................................................... 3 V. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 3

A. CLAIMS FOR WHICH REVIEW IS REQUESTED ..................................................... 3 B. STATUTORY GROUNDS OF CHALLENGE ............................................................. 3 C. THE LEVEL OF ORDINARY SKILL IN THE ART AT THE TIME OF THE CLAIMED INVENTION ............................................................................................................... 3 D. STATE OF THE ART AT THE TIME OF THE CLAIMED INVENTION ......................... 4

VI. SUMMARY OF THE 213 PATENT ............................................................. 6 A. SPECIFICATION AND CLAIMS OF THE 213 PATENT ............................................ 6 B. PROSECUTION OF THE 213 PATENT ................................................................... 8 C. CLAIM CONSTRUCTION .................................................................................... 10

VII. CLAIMS 113 OF THE 213 PATENT ARE UNPATENTABLE ........... 13 A. GROUND 1: CLAIMS 19, 12, AND 13 ARE ANTICIPATED UNDER 35 U.S.C. 102(E) BY LAM .................................................................................................... 13

1. Overview of Lam......................................................................................... 13 2. Claim 1 ........................................................................................................ 15

a) A portable storage device with network function ................................ 15 b) an interface unit for coupling to an electronic apparatus ..................... 16 c) a network unit located within the portable storage device for linking with a remote network host .......................................................................... 16 d) a memory unit located within the portable storage device providing access of data and temporarily storing data received from the electronic apparatus ...................................................................................................... 17 e) a processing unit located within the portable storage device .................. 18

(1) that receives instructions from the electronic apparatus for controlling access of data between the memory unit and the electronic apparatus with data transmission via the interface unit ...................................................... 18

ii

(2) [and controlling] access of data between the memory unit and a remote network host with data transmission via the network unit ............ 19

f) wherein data is directly stored on the remote network host; ................... 20 g) wherein the portable storage device with network function is removably coupled to said electronic apparatus, expanding storage capacity of the electronic apparatus. ...................................................................................... 20

3. Dependent Claim 2 ...................................................................................... 21 4. Dependent Claims 3 and 4 .......................................................................... 21 5. Dependent Claim 5 ...................................................................................... 22 6. Dependent Claim 6 ...................................................................................... 23 7. Dependent Claims 7 and 12 ........................................................................ 24 8. Dependent Claim 8 ...................................................................................... 25

a) Dependent Claim 9 .................................................................................. 25 9. Dependent Claim 13 .................................................................................... 26

B. CLAIM CHARTS FOR LAM ................................................................................. 26 C. GROUND II: CLAIMS 113 ARE OBVIOUS UNDER 103(A) BY WALTERS IN VIEW OF YAO ................................................................................................................... 39

1. Overview of Walters ................................................................................... 39 2. Overview of Yao ......................................................................................... 41 3. Independent Claim 1 ................................................................................... 43

a) A portable storage device with network function ................................ 43 b) an interface unit for coupling to an electronic apparatus ..................... 44 c) a network unit located within the portable storage device for linking with a remote network host .......................................................................... 44 d) a memory unit located within the portable storage device providing access of data and temporarily storing data received from the electronic apparatus ...................................................................................................... 45 e) a processing unit located within the portable storage device .................. 46

(1) that receives instructions from the electronic apparatus for controlling access of data between the memory unit and the electronic apparatus with data transmission via the interface unit ...................................................... 46 (2) [controlling] access of data between the memory unit and a remote network host with data transmission via the network unit wherein data is directly stored on the remote network host ................................................ 48

f) wherein the portable storage device with network function is removably coupled to said electronic apparatus, expanding storage capacity of the electronic apparatus. ...................................................................................... 48

iii

g) Rationale to combine Walters with Yao .................................................. 50 4. Dependent Claim 2 ...................................................................................... 53 5. Dependent Claims 3 and 4 .......................................................................... 54 6. Dependent Claim 5 ...................................................................................... 56 7. Dependent Claim 6 ...................................................................................... 57 8. Dependent Claims 7 and 12 ........................................................................ 58 9. Dependent Claim 8 ...................................................................................... 58 10. Dependent Claim 9 ...................................................................................... 59 11. Dependent Claims 10 and 11 ...................................................................... 59 12. Dependent Claim 13 .................................................................................... 60

VIII. CONCLUSION ............................................................................................. 60

iv

LIST OF EXHIBITS Exhibit Description EX1001 U.S. Patent No. 7,743,213 (filed 02/24/2006) (the 213 patent) EX1002 Petitioners Voluntary Interrogatory Responses EX1003 Declaration of Mr. Herbert Cohen EX1004 File History of The 213 Patent EX1005 U.S. Patent No. 7,849,267 to Monica Sin-Ling Lam et al (Lam) EX1006 U.S. Patent Application Publication No. 2003/0030839 to Craig

R. Walters et al (Walters) EX1007 U.S. Patent No. 7,600,000 to Richard Yuqi Yao et al (Yao) EX1008 IEEE Standard Dictionary of Electrical and Electronics Terms,

6th ed. (1996) EX1009 U.S. Patent No. 7,365,871 to David A Monroe (Monroe) EX1010 U.S. Patent No. 8,023,998 to Martin Croome (Croome) EX1011 U.S. Patent No. 6,405,278 to Steven F. Liepe et al (Liepe) EX1012 U.S. Patent Application Publication No. 2005/0036034 to Rea

(Rea) EX1013 U.S. Patent Application Publication 2007/0101143 to Yoshiaki

Iwata et al (Iwata) EX1014 U.S. Patent No. 7,643,168 to David A Monroe (Monroe) EX1015 U.S. Patent Application Publication 2005/0144353 to Ou Long

et al (Long) EX1016 U.S. Patent Application Publication 2006/0277216 to Tzvika

Shukhman (Shukhman) EX1017 U.S. Patent Application Publication 2007/0028046 to Chi Pham

et al (Pham) EX1018 U.S. Patent Application Publication 2007/0294457 to Alexander

Gantman et al (Gantman) EX1019 U.S. Patent Application Publication 2008/0161051 to Kai

Ruediger Schobbert et al (Schobbert) EX1020 Nikon WT-1 & WT-2 Wireless Transmitters Advertisement

(2005) EX1021 U.S. Patent No. 7,526,314 to Richard Kennedy (Kennedy) EX1022 U.S. Patent No. 7,493,487 to Thomas G Phillips et al (Phillips) EX1023 U.S. Patent No. 7,555,568 to Evan S. Huang (Huang) EX1024 U.S. Patent No. 7,231,449 to Brandon Jon Ellison, Alan Ladd

Painter (Ellison) EX1025 Sula Park et al, Design, Implementation, and Performance

v

Analysis of the Remote Storage System in Mobile Environment, Proceedings of the 2nd International Conference on Information Technology for Application (2004)

EX1026 Microsoft Support Windows 2000 Logon Passwords EX1027 Wikipedia Windows 2000

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I. INTRODUCTION

Petitioner Unified Patents Inc. (Unified) requests Inter Partes Review

(IPR) of claims 113 of U.S. Patent No. 7,743,213 (the 213 patent) assigned

to Novocrypt LLC (Novocrypt) (EX1001).

The 213 patent, which has an effective filing date of Nov. 24, 2006,

purports that the named inventors invented a portable storage device that provides

data access between the portable storage device and its host and between the

portable storage device and remote storage via the Internet. Id. at Abstract; 6:48. A

wealth of prior art suggests otherwise. Please institute this proceeding on claims

1-13 based on the Grounds identified below.

II. GROUNDS FOR STANDING

Petitioner certifies that the 213 patent is available for IPR and that the

Petitioner is not barred or estopped from requesting IPR challenging the 213

patent on the Grounds identified. See 37 C.F.R. 42.104(a). Specifically: (1)

Petitioner is not the owner of the 213 patent; (2) Petitioner is not barred or

estopped from requesting IPR; and (3) Petitioner has not been served with a

complaint alleging infringement of the 213 patent.

III. MANDATORY NOTICES

A. Real Party-in-Interest

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

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party-in-interest, and further certifies that no other party exercised control or could

exercise control over Unifieds participation in this proceeding, the filing of this

petition, or the conduct of any ensuing trial. In this regard, Unified has submitted

voluntary discovery. See EX1002 (Petitioners Voluntary Interrogatory

Responses).

B. Related Matters

The 213 patent is at issue in the following litigations:

Caption Number Dist. Filed Novocrypt LLC v. Western Digital Techs., Inc. 2-15-cv-00227 TXED Feb. 18, 2015

Novocrypt LLC v. Toshiba Am. Info. Sys., Inc. 2-15-cv-00228 TXED Feb. 18, 2015

Novocrypt LLC v. Thecus USA, Inc. 2-15-cv-00229 TXED Feb. 18, 2015 Novocrypt LLC v. Synology Am. Corp. 2-15-cv-00230 TXED Feb. 18, 2015 Novocrypt LLC v. Silicon Power Comp. & Commn USA Inc. 2-15-cv-00231 TXED Feb. 18, 2015

Novocrypt LLC v. Seagate Tech. LLC 2-15-cv-00232 TXED Feb. 18, 2015 Novocrypt LLC v. SanDisk Corp. 2-15-cv-00233 TXED Feb. 18, 2015 Novocrypt LLC v. Corsair Components, Inc. 2-15-cv-00234 TXED Feb. 18, 2015

C. Lead and Back-up Counsel; Consent to Electronic Service

The signature block of this petition designates lead counsel, backup counsel,

and service information. Unified designates P. Andrew Riley (Reg. No. 66,290) as

lead counsel, and designates Jonathan Stroud (Reg. No. 72,518) and James D.

Stein (Reg. No. 63,782) as back-up counsel. They can be reached at the address

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included below. Petitioner consents to electronic service of documents at

[email protected].

IV. FEE PAYMENT

The required fees are submitted under 37 C.F.R. 42.103(a) and 42.15(a).

If any additional fees are due during this proceeding, the Office may charge such

fees to Deposit Account No. 060916.

V. STATEMENT OF PRECISE RELIEF REQUESTED

A. Claims for Which Review Is Requested

Petitioner requests IPR and cancellation of claims 113 of the 213 patent

under 35 U.S.C. 311.

B. Statutory Grounds of Challenge

Petitioner requests that the Board hold claims 113 unpatentable as follows:

Ground Proposed Statutory Rejections for the 213 Patent Exhibit No.

1 Claims 19, 12, and 13 are anticipated under 102(e) by U.S. Patent No. 7,849,267 to Monica Sin-Ling Lam (Lam) EX1005

2

Claims 113 are obvious under 103(a) by U.S. Patent Application Publication US2003/0030839 to Craig R. Walters et al (Walters), in view of U.S. Patent No. 7,600,000 to Richard Yuqi Yao et al. (Yao)

EX1006 +

EX1007

C. The Level of Ordinary Skill in the Art at the Time of the Claimed Invention

The 213 patent purports an effective filing date of Nov. 24, 2006, based on

the Taiwan Application No. 95143624 A. At that time, a person having ordinary

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skill in the art (POSA) of data storage and access (i.e., in the art for the 213

patent) would have had (i) a B.S. degree in electrical engineering, computer

engineering, computer science, or equivalent training, and (ii) approximately two

years of experience in designing networked data storage and access technologies.

See EX1003 (Cohen Decl.) at 18.

D. State of the Art at the Time of the Claimed Invention

The field of portable data storage/access was quite mature prior to Nov. 24,

2006. For instance, in January 2001, IBM Japans research arm published an

overview of Bluetooth Technology. See EX1006 (Walters), at [0010]. IBM

explained that the many types of mobile devices with high-level computing

capabilities, such as cellular phones, GPS, digital cameras, and high-performance

PDAs had come into widespread use. Id. Bluetooth technology had made

short-range wireless communication between such devices, ad-hoc networking,

peripheral devices, portable storage devices, and USB-connected storage devices

ubiquitous. Id. at [0010][0011]. Indeed, IBM estimated that as early as August 8,

2001, more than two thousand companies have adopted the Bluetooth

technology for such ease of use. Id. at [0012].

Thus, throughout the early 2000s, portable storage and local networking

technologies were well established. Likewise, it was well known to use networks

for remote data storage and access and to route data storage and access requests

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through other devices, such as routers, cell phones, portable satellite dishes, and

other portable storage devices. See generally EX1003. In 2003, there were many

readily available transmission systems and standard remote stations that were

used to transmit and then store images, data, and faxes. EX1009 (Monroe), at

Abstract.

A 2004 paper by a group of inventors describes remote storage applications,

methods, and systems. See EX1025 (Park), at Abstract. The paper outlined the

industrys explosive growth in mobile device usage, the resultant problem with

limited storage capacity, the limited solutions available at the time, and a proposed

solution using a portable device with an operating system and a wireless

transmitter for uploading data to a remote server. Id.

The solution for limited storage or memory of mobile devicesusing

remote storage systemswas described and implemented by others well prior to

Nov. 24, 2006. Dozens of published and patented examples of portable storage

devices, portable laptop computers, routers, network cards, digital cameras with

additional wireless-storage capabilities, and the like were disclosed in the art

before 2006. See, e.g., EXs. 10091025. While Unified only raises only two

grounds in this petition, many other references render the 213 patent claims

unpatentable.

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VI. SUMMARY OF THE 213 PATENT

A. Specification and Claims of the 213 Patent

The 213 patent includes only three

figures, three columns of written description, one

independent claim, and twelve dependent claims.

See EX1001. The 213 patent describes a

portable storage device with network function

that includes a network file management

system, allowing an electronic apparatus to manage[] the access of files

between a memory unit of the portable storage device and a remote network host.

Id. at Abstract.

As shown in FIG. 1 above, the 213 patent describes a portable storage

device (PSD) 1, with a network function, for interfacing with electronic consumer

apparatuses (EAs) 6. Id. at 2:2335. The PSD 1 has an interface unit (IU) 2, a

wired or wireless network unit (NU) 3, a memory unit (MU) 4, and a processing

unit (PU) 5. Id. The EA 6 interfaces with the PSD 1, which in turn communicates

with a remote network host (RNH) 12. Id. at 6062. FIGS. 23 of the 213 patent,

reproduced below, show embodiments of the PSD 1 in a wireless network system

and in a wired network system, respectively.

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FIG. 2 FIG. 3

Claim 1 is the sole independent claim:

1. A portable storage device with network function, comprising:

an interface unit for coupling to an electronic apparatus;

a network unit located within the portable storage device for

linking with a remote network host;

a memory unit located within the portable storage device

providing access of data and temporarily storing data received from

the electronic apparatus; and

a processing unit located within the portable storage device

that receives instructions from the electronic apparatus for controlling

access of data between the memory unit and the electronic apparatus

With data transmission via the interface unit, and access of data

between the memory unit and a remote network host with data

transmission via the network unit, wherein data is directly stored on

the remote network host;

wherein the portable storage device with network function is

removably coupled to said electronic apparatus, expanding storage

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capacity of the electronic apparatus.

Id. at cl. 1 (emphases added).

The specification does not disclose algorithms, hardware or software details,

or identify commercially-available options for the otherwise-undescribed network

file management systems, systems security unit[s], or authentication unit[s].

Id. at 2:4252. Lacking description of any specific implementations for these

components, the specification just briefly mentions that computer operation may

be executed at any place on any computer or electronic apparatus, id. at

3:29-32 (emphases added), and that the user would not be restricted to a specific

computer to use the network host, id. at 3:35 (emphasis added).

The specification describes one example of using the PSD 1 with a digital

camera 7 and another example of using it with a general computer. Id. at

3:10-12, 2527. In the camera example, when the digital camera is used in an

environment without any available network, the photos having been taken may be

temporarily stored on the portable storage device with network function 1. Id. at

3:1322.

B. Prosecution of the 213 Patent

The application for the 213 patent was filed in the U.S. Patent and

Trademark Office (USPTO) in February of 2007. EX1004 at 1, 45. The first Office

Action did not issue until June 2009, when the Examiner rejected claims 15 and

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713 under 35 U.S.C. 102(e) as anticipated by U.S. Patent 6,105,119 to Kerr. Id.

at 4649. He also rejected claim 6 under 35 U.S.C. 103(a) by Kerr. Id. at 49. The

action identified four prior art references, none of which is used in proposed

Grounds 1 and 2.

In response, the applicant amended the independent claim to recite that three

of PSDs four unitsthe network unit, memory unit, and processing unit

were located within the portable storage device. Id. at 67. The amendments also

added that the data was directly stored on the remote network host, and that the

portable storage device with network function is removably coupled to said

electronic apparatus, expanding storage capacity of the electronic apparatus. Id.

The applicant argued that the amendment overcame the Kerr rejection because

Kerr disclosed a DRAM main memory that was coupled to a host central

processing unit, but does not disclose a portable storage device with network

function that may be removably coupled to an electronic apparatus. Id. at 71. The

applicant also argued that Kerr did not disclose a processing unit that receives

instructions from the electronic apparatus for controlling access of data between

the memory unit and the electronic apparatus with data transmission via the

interface unit, and access of data between the memory unit and a remote network

host with data transmission via the network unit, wherein data is thus stored on a

remote network host. Id. The applicant continued that, among other things, Kerr

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failed to disclose temporarily storing data onto the memory unit. Applicant has

amended claim 1 to reflect such novelty. Id. at 72.

Unpersuaded, the Examiner maintained both rejections, arguing that Kerr

did teach those elements, including an interface unit, memory unit, and processing

unit, and that the computer could be decoupled. Id. at 84. The applicant then

requested a pre-appeal brief conference. Id. at 91.

In February 2010, the Examiners supervisor and the Examiner had a pre-

appeal brief conference, where they decided to withdraw the rejection and issue a

new office action. The Examiner then allowed the patent, citing the applicants

arguments in the pre-appeal brief conference request. Id. at 106.

In his reasons for allowance, the Examiner generally stated that the prior art

does not fully suggest the claimed portable storage device with network

function. Id. at 110. But the Examiner cited four new prior art references as not

relied upon [but] considered pertinent to applicants disclosure, including Ground

1s Lam (EX1005). Id. at 111 (The following prior art are in the same field of

technology: US2007/0124536; US2007/0061505; US 2005/0144353; and US

7373451). The Examiner allowed the application without further discussion of

Lam or the other newly-identified prior art.

C. Claim Construction

Claim construction is an important step in a patentability determination.

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Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (Both

anticipation under 102 and obviousness under 103 are two-step inquiries. The

first step in both analyses is a proper construction of the claims. . . . The second

step in the analyses requires a comparison of the properly construed claim to the

prior art. (internal citations omitted)).

The 213 patent is in force. In IPR, unexpired patent claims receive the

broadest reasonable construction in light of the specification of the patent in

which it appears. 37 C.F.R. 42.100(b); In re Cuozzo Speed Techs., LLC, 778

F.3d 1271, 1281 (Fed. Cir. 2015). This means that the words of the claim must be

given their plain meaning unless the plain meaning is inconsistent with the

specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Unless otherwise

noted, Petitioner proposes that the claim terms of the 213 patent be given their

plain and ordinary meaning.1

Claims 3 and 4 recite a network driving unit for driving the network unit

and an interface driving unit for driving the interface, respectively. The

specification does not define these terms, but describes these two units as part of

1 While Petitioner advances certain constructions for the purposes of this Petition,

Petitioner does not concede that one or more of the following claim terms meet the

definiteness and written description requirements of 35 U.S.C. 112.

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the operating system and as driving the network unit and the interface unit,

respectively, just like the claim language. Compare Ex. 1001, cls. 2, 3, with id. at

2:4245. This description is consistent with a standard technical dictionary,

defining driver as [a] software module that invokes and, perhaps, controls and

monitors the execution of one or more other software modules. See EX1008 at

318. Thus, network driving unit and interface driving unit mean a software

module that invokes, controls, or monitors the network unit and the interface unit,

respectively.

This is in contrast to the processing, memory, interface, and network units,

which refer to structures from the specification and the claims. The specification

indicates the interface unit, for instance, may include structures, such as a universal

serial bus interface, or other physical structures. EX1001 at 2:3032. Thus,

Petitioner submits that the claim elements interface unit, network unit,

memory unit, and processing unit are understood by persons of ordinary skill

in the art to have a sufficiently definite meaning as the name for structure, and

thus do not invoke 35 U.S.C. 112, 6th paragraph. Williamson v. Citrix Online,

LLC, No. 2013-1130, slip op. at 16 (Jun. 16, 2015).

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VII. CLAIMS 113 OF THE 213 PATENT ARE UNPATENTABLE

A. Ground 1: Claims 19, 12, and 13 are anticipated under 35 U.S.C. 102(e) by Lam

On June 30, 2006, a team of inventors filed a patent application for

Network-Extended Storage, that was published on January 3, 2008 as

US2008/0005121 and became U.S. Patent 7,849,267 to Lam. See EX1005

(Lam). Thus, Lam is prior art under 102(e).

1. Overview of Lam

Lam discloses a system for network-extended storage, where devices 101

(called portable storage devices)2 like a digital camera 115 are coupled to a host

computer 102, such as a laptop, a workstation, a midrange computer, a

mainframe, an embedded system, telephone, a handheld or tablet computer, a

personal digital assistant (PDA), or other type of computer. See id. at Fig. 1; id.

at 6:355. In turn, the host computer 102 is connected to a remote network

2 Lam refers to the first device 101 as portable storage device and the second device as

a host computer. Lam (EX1005), at Abstract, Fig. 1. The 213 patent uses the term

electronic apparatus for the first device and portable storage device for the second

device. See EX1001 (213 patent), at Abstract, Fig. 1. Although Lam calls element 101 a

portable storage device, it plays the same role as the electronic apparatus in the 213

patent, as shown herein.

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repository 103. See id. at Fig. 1; id. at 6:355. Thus, Lam discloses a portable

storage device 101 that connects to a host computer 102 to upload data to a remote

network repository 103, like so:

Lam discloses that the portable storage device 101 may be a digital camera

115 or any number of devices, including a personal digital assistant (PDA), a

MICROSOFT POCKETPC device, a PALM TREO device, or a key

drive. Id. at 6:412. The architectures of these apparatuses are shown in Lams

FIG. 2A, below.

101("portablestoragedevice")

102("hostcomputer")

103("remotenetwork

repository")

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As shown in FIG. 1 of Lam, right,

portable storage devices 101 are coupled,

wirelessly or via a wired connection, to

the host device 102. While illustrated in

Fig. 1 as a desktop PC, in further

implementations the host device 102 may

be a laptop, a handheld or tablet

computer, a personal digital assistant (PDA), or other portable computer, id. at

6:3944, which connects to server 103 via wireless connection 112.

Lam discloses the elements of claims 19, 12, and 13 and thus anticipates

these claims, as explained below.

2. Claim 1

a) A portable storage device with network function

Lams host computer 102 may be a laptop computer, a phone, a handheld or

tablet computer, a PDA, or other type of portable computer, as claimed. EX1005

(Lam) at 6:3944; EX1003 at 31. Thus, Lam discloses a portable device.

Lams host computer 102 is also a storage device as claimed because it has,

among other things, main memory (RAM) 210, ROM 211, and a disk storage 220.

EX1005 at 6:567:39; FIG. 2A. Moreover, the host computer 102 has a computer

network interface 216 which provides a communication interface to the computer

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network 112 over the computer network connection 114. Id. at 7:1925. The host

computer 102 provide[s] network extended storage functionality to the storage

device 101. Id. at 11:710; EX1003 at 31. Thus, Lams host computer 102

discloses a portable storage device with network function, as claimed.

b) an interface unit for coupling to an electronic apparatus

Lam discloses this feature, because the host computer 102 has an interface

218 which provides a wired or wireless communication interface to the portable

storage device 101. EX1005 at 7:2527. Lams interface 218 corresponds to the

claimed interface unit, and Lams portable storage device 101 corresponds to the

claimed electronic apparatus. EX1003 at 32. Thus, Lam discloses an interface

unit for coupling to an electronic apparatus as claimed.

c) a network unit located within the portable storage device for linking with a remote network host

Lam discloses the above feature, because, as shown Lams FIG. 2A above,

the portable host computer 102 has a computer network interface 216 that

provides a communication interface to the computer network 112 over the

computer connection 114, EX1005 at 7:2325, and [t]he host computer 102 is

connected to the network repository 103 via the network 112, id. at 6:1819.

[T]he network repository 103 is a server or other network-attached storage device

that is dedicated to file sharing, id. at 6:1921, so it corresponds to the claimed

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remote network host. EX1003 at 33. Thus, Lam discloses a network unit

located within the portable storage device for linking with a remote network host,

as claimed.

d) a memory unit located within the portable storage device providing access of data and temporarily storing data received from the electronic apparatus

Lams host computer 102 has internal non-transient RAM storage 210 as

main memory, transient ROM memory 211, and a disk 220. EX1005 at Fig. 2A;

EX1003 at 34. Lam discloses that the data is stored on the host computer

temporarily before being transferred on to the remote storage network. EX1005 at

6:1215. Additionally, [n]ew or modified data is written onto the portable storage

device, and space is made on the host computer for the data, and where

sufficient space already exists on the host computer for the data, no space is made

on the host computer. Id. at 16:4350; EX1003 at 34. Lam further discloses

that the host computer 102 is itself a repository for data written to the portable

storage device 101. Id. at 6:5355. Because data is written onto the host computer

2s memory before transfer to the network repository, Lam discloses a memory

unit providing access of data and temporarily storing data received from the

electronic apparatus, as claimed.

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e) a processing unit located within the portable storage device

Lams host computer 2 has an internal CPU 200, see EX1005 at Fig. 2A,

which can be one of a number of high-performance computer processors,

including an INTEL or AMD processor, a POWERPC processors, or others.

EX1005 at 7:5060; EX1003 at 35. Thus, Lam discloses a processing unit

located within the portable storage device, as claimed.

(1) that receives instructions from the electronic apparatus for controlling access of data between the memory unit and the electronic apparatus with data transmission via the interface unit

Lam discloses instructions as a network extension code, as shown in FIG.

3, which Lam describes as instructions to be performed by a host computer when

the portable storage device is coupled to the host computer. EX1005 at 2:6064,

Fig. 3. The instructions cause the host computer to, once the portable storage

device is coupled to it, install network extension code, stored on portable storage

device, onto host computer. Id. at Fig. 3, 2:6468. Additionally, processing unit

200 of the host computer 102 is operable to execute the application programs 222,

and invoke the network extension code when the portable storage device 101 is

coupled to the host computer 102. Id. at 9:4750. The network extension code

224, which is stored on Lams portable storage device 101, is invoked such as by

running, executing, or otherwise calling the network extension code stored on the

portable storage device. Id. at 11:2232. Thus, once the portable storage device

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is removed from the host computer no traces of the network extension code

remain. Id. at 12:510.

The network extension code 224 of Lam controls any transfer of data

between portable storage device 101 and host computer 102. It is operable to

detect a file system write function call generated by an application executing on the

host computer, the file system write function call operable to cause data to be

written to the portable storage device, and cause the data to be written to the

portable storage device based upon the file system write function call. Id. at

1:43-52, 9:3342; EX1003 at 36. Thus, Lam discloses a processing unit that

receives instructions from the electronic apparatus for controlling access of data

between the memory unit and the electronic apparatus with data transmission via

the interface unit, as claimed.

(2) [and controlling] access of data between the memory unit and a remote network host with data transmission via the network unit

Regarding the above feature of claim 1, Lam discloses a direct transfer of

storage capacity on a device 101 to a host computer 102 and then on to the back-

end network repository. EX1005. at 10:4750; EX1003 at 37. It does so through

the same network extension code 224 (the claimed instructions), which is

further operable to generate a transmit determination indicative of whether to

transmit the data to a network repository, and transmit the data to the network

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repository based upon the transmit determination. EX1005 at 1:4852, 9:4247.

This transfer is initiated by the network extension code 224 discussed above.

EX1003 at 37. Thus, Lam discloses a processing unit that provides access of

data between the memory unit and a remote network host with data transmission

via the network unit, as claimed.

f) wherein data is directly stored on the remote network host;

Claim 1 further recites that data is directly stored on the remote network

host. Lam discloses this feature by explaining that, through the action of the

network extension code 224, the [n]ew or modified data is written onto the

portable storage device, and then is transparently transmitted and stored to the

network repository. Id. at 3:1820; 10:5060; EX1003 at 38. Thus, Lam

discloses a processing unit that provides access of data between the memory unit

and a remote network host with data transmission via the network unit, wherein

data is directly stored on the remote network host, as claimed.

g) wherein the portable storage device with network function is removably coupled to said electronic apparatus, expanding storage capacity of the electronic apparatus.

Regarding the above feature of claim 1, Lam, in its very title, discloses

network-extended storage, EX1005 at Title, achieved via removably coupled

devices 101 and host computers 102 that connect to a network repository 103, id.

at 5:5152 (The host computer 102 is directly or indirectly coupled to the portable

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storage device 101.). Network-extended storage refers to a server or other

network-attached storage device that is dedicated to file sharing. Id. at 6:1820;

EX1003 at 39. Thus, Lam discloses wherein the portable storage device with

network function is removably coupled to said electronic apparatus, expanding

storage capacity of the electronic apparatus, as claimed.

3. Dependent Claim 2

Lam discloses that the host computer 102s disk 220 stores an operating

system 221. EX1005 at 7:638:16 (listing commercially available operating

systems 221), FIG. 2A; EX1003 at 40. Therefore, Lam discloses that the

memory unit has an operating system stored therein, as recited in claim 2.

4. Dependent Claims 3 and 4

As discussed, Lam discloses that the host computer 102 includes network

extension code 224. The network extension code 224 is operable to . . . cause the

data to be written to the portable storage device 101 based upon the file system

write function call. EX1005 at 9:3843. As discussed above in 2(2.b), the host

computer 102 accesses the portable storage device 101 (the claimed electronic

apparatus) via Lams interface 218 (the claimed interface unit). Id. at 7:2527;

EX1003 at 41. Thus, Lams network extension code 224 drives the interface 218

as the claimed interface driving unit . . . driv[es] the interface unit in claim 4.

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Lams network extension code 224 also operates to transmit the data to the

network repository 103 based upon the transmit determination, id. at 9:4347, so

it controls Lams computer network interface 216 (the claimed network unit) by

which it accesses the computer network 112 and network repository 103, id. at

7:1925. Thus, Lams network extension code 224 also drives the computer

network interface 216 as the claimed network driving unit . . . driv[es] the

network unit in claim 3. EX1003 at 41. Moreover, the network extension code

224 provides bottomless, encrypted and disconnected access to data by changing

how the operating system accesses the data, id. at 8:669:1, so it is included in

the operating system as the driving units in claims 3 and 4. EX1003 at 41. Thus,

Lam anticipates claims 3 and 4.


Claim 5 depends from claim 2, and recites that the operating system

includes a network file management system, via which the electronic apparatus

manages the access of data between the memory unit and the electronic apparatus,

and between the memory unit and the remote network host. As noted 2(2.e)(1),

Lam discloses a network extension code present on the portable storage device,

which manages and grants access to data between the first portable storage device,

the host computer, and the network repository. The network extension code 224

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controls any transfer of data between portable storage device 101 and host

computer 102, and between host computer and the network repository:

[network extension code 224 is] operable to detect a file system

write function call generated by an application executing on the

host computer, the file system write function call operable to

cause data to be written to the portable storage device, and

cause the data to be written to the portable storage device based

upon the file system write function call. The network extension

code is further operable to generate a transmit determination

indicative of whether to transmit the data to a network

repository, and transmit the data to the network repository

based upon the transmit determination.

Id. at Abstract (emphases added); EX1003 at 42.

Thus, Lam discloses claim 5.


Claim 6 depends from claim 2 and recites that the operating system includes

a system security unit for protecting the operating system against computer virus

infection. Lam discloses standard authentication, encryption, and copy-protection

algorithms, EX1005 at 18:2053, as well as a number of operating systems that

came standard with virus protection, see id. at 7:638:16. EX1003 at 43

(explaining that the operating systems listed in Lam had some form of modest virus

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protection). Thus, Lam discloses where the operating system includes a system

security unit for protecting the operating system against computer virus infection.

7. Dependent Claims 7 and 12

Claim 7 depends from claim 2 and recites that the operating system

includes an authentication unit for authenticating at least one user. Claim 12

depends from claim 7 and adds that the authentication unit conducts

authentication in a manner selected from the group consisting of password

authentication, fingerprint authentication, and voice authentication.

As shown in FIG 2A of Lam above, the extension code 224 of the host

computer 102 contains an authentication agent 231. Like the claimed

authentication unit of claims 7 and 12, Lams authentication agent 231 is

included in the operating system 221 because, as discussed above for other claims,

Lams extension code 224 containing the authentication agent 231 is part of the

operating system 221. EX1005 at 8:669:1; EX1003 at 44. It also discloses

network identification data that is in effect a master password. Id. at 13:12.

Moreover, Lams authentication agent 231 authenticates the use of the

network repository 103 and the portable storage device 101, anticipating claim 7.

EX1005 at 9:2325, 2:2931 (The network extension code may be operable . . . to

authenticate a user), FIG. 5, and 17:4519:13 (describing Lams authentication

method 500). Lams user authentication method 500 applies user name and

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password matching or matching of voice, fingerprint, biometric, or other

authentication data, anticipating claim 12. EX1003 at 45.


Claim 8 recites that the claimed interface unit is one of a USB interface,

an SD interface, a CF interface, an XD interface, a PCMCIA interface, a 1394

interface, an infrared interface, and a Bluetooth interface. Lam anticipates this

claim by teaching that its PSD interface unit 218 (the claimed interface unit) can

be one of many types of wireless connectors such as an INFRARED DATA

ASSOCIATION (IrDA) wireless connector or a BLUETOOTH wireless

connector, or may be one of many types of wired connectors such as a IEEE-

1394 FIREWIRE connector or USB connector. EX1005 at 5:516:11;

EX1003 at 46.

a) Dependent Claim 9

Claim 9 recites that the electronic apparatus is one of a digital camera, a

personal computer, a notebook computer, and a PDA. Lams PSD 101, the

claimed electronic apparatus, discloses this feature. EX1005 at 6:311 (The

portable storage device 101 may be a media player such as an APPLE IPOD

media player, a telephone, a hand-held game system, a navigation system . . . a

personal digital assistant (PDA), a MICROSOFT POCKETPC device, [or] a

PALM TREO device.); EX1003 at 47.

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26


Claim 13 recites [t]he portable storage device . . . as claimed in claim 1,

further comprising an MP3 player or a voice pen. The language of claim 13 does

not require the portable storage device itself to be an MP3 player, so Lam

anticipates this claim by teaching that the PSD 101 is an MP3 player. EX1005 at

17:6364. Additionally, Lam anticipates claim 13 by teaching that the host

computer 102 (the claimed portable storage device) may be a PC . . . a laptop, a

workstation, . . . telephone, a handheld or tablet computer, a personal digital

assistant (PDA), or other type of computer. EX1005 at 6:3944. These types of

devices typically can play MP3 files, and are therefore MP3 players as claimed.

EX1003 at 48.

B. Claim Charts for Lam

The claim charts below further demonstrate and supplement how each claim

limitation of claims 19, 12, and 13 is met by Lam.

Claim 1 U.S. Patent 7,849,267 (Lam) (EX1005) [1.1] A portable storage device with network function, comprising:

EX1005 at 9:3738 (In this regard, and in summary, the system 100 includes the network repository 103, the portable storage device 101, and the host computer 102.). Id. at 6:3944 (Although the host computer 102 is illustrated in FIG. 1 as a desktop PC, in further implementations the host computer 102 may be a laptop, a workstation, a midrange computer, a mainframe, an embedded system, telephone, a handheld or tablet computer, a personal digital assistant (PDA), or other type of computer.);

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Id. at 7:37:22 (a random access memory (RAM) 210 where computer instructions and data are stored in a volatile memory device for processing by the computer CPU 200; a read-only memory (ROM) 211 where invariant los-level systems code or data for basic system functions such as basic input and output (I/O), startup, or reception of keystrokes from the keyboard 105 are stored in a non-volatile memory device; and optionally a storage 220 or other suitable type of memory (e.g. such as random-access memory (RAM), read-only memory (ROM), programmable read-only memory (PROM), erasable programmable read-only memory (EPROM), electrically erasable programmable read-only memory (EEPROM), magnetic disks, optical disks, floppy disks, hard disks, removable cartridges, flash drives), where the files that comprise an operating system 221, application programs 222 (including, optionally, network extension code 224, other applications 225, and install/uninstall applications 227 which install and uninstall network extension code to the host computer 102, as necessary) and data files 226 are stored.). Id. at 7:1925 (a computer network interface 216 which provides a communication interface to the computer network 112 over the computer network connection 114.); see also id. at 11:710.

[1.2] an interface unit for coupling to an electronic apparatus;

EX1005 at 7:2527 (a portable storage device interface 218 which provides a wired or wireless communication interface to the portable storage device 101.).

[1.3] a network unit located within the portable storage device for linking with a remote network host;

EX1005 at 7:2325 (a computer network interface 216 which provides a communication interface to the computer network 112 over the computer network connection 114). Id. at 6:1819 (The host computer 102 is connected to the network repository 103 via the network 112). Id. at 6:1921 (the network repository 103 is a server or

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other network-attached storage device that is dedicated to file sharing).

[1.4] a memory unit located within the portable storage device providing access of data and temporarily storing data received from the electronic apparatus; and

EX1005 at 7:37:22 (a random access memory (RAM) 210 where computer instructions and data are stored in a volatile memory device for processing by the computer CPU 200; a read-only memory (ROM) 211 where invariant los-level systems code or data for basic system functions such as basic input and output (I/O), startup, or reception of keystrokes from the keyboard 105 are stored in a non-volatile memory device; and optionally a storage 220 or other suitable type of memory (e.g. such as random-access memory (RAM), read-only memory (ROM), programmable read-only memory (PROM), erasable programmable read-only memory (EPROM), electrically erasable programmable read-only memory (EEPROM), magnetic disks, optical disks, floppy disks, hard disks, removable cartridges, flash drives), where the files that comprise an operating system 221, application programs 222 (including, optionally, network extension code 224, other applications 225, and install/uninstall applications 227 which install and uninstall network extension code to the host computer 102, as necessary) and data files 226 are stored.); see also Fig. 2A. Id. at 9:3747 (In this regard, and in summary, the system 100 includes the network repository 103, the portable storage device 101, and 35 the host computer 102. The portable storage device 101 fur-ther includes a storage medium storing the network extension code 224. The network extension code 224 is operable to detect a file system write function call generated by the appli-cation programs 222, the file system write function call operable to cause the data to be written to the portable storage device 101 based upon the file system write function call, generate a transmit determination indicative of whether to transmit the data to the network repository 103, and transmit the data to the network repository 103 based upon the transmit determination.).

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Id. at 6:5355 (the host computer 102 is itself a repository for data written to the portable storage device 101.). Id. at 14:3846 (the question of what data to keep stored on the portable storage device and what data to transmit to the network repository is based upon a cache eviction algorithm, since the portable storage device becomes, in effect, a cache of the network repository.). Id. at 16:435 (New or modified data is written onto the portable storage device, and space is made on the host computer for the data, and where sufficient space already exists on the host computer for the data, no space is made on the host computer.).

[1.5] a processing unit located within the portable storage device that receives instructions from the electronic apparatus for

EX1005 at 7:5060 (The computer CPU 200 is one of a number of high-performance computer processors, including an INTEL or AMD processor, a POWERPC processor, a MIPS reduced instruction set computer (RISC) processor, a SPARC processor, an ACORN RISC Machine (ARM) architecture processor, a HP ALPHASERVER 55 processor or a proprietary computer processor for a main-frame.). Id. at 7:2639 (The constituent devices and the computer CPU 200 communicate with each other over the computer bus 250. The RAM 210 interfaces with the computer bus 250 so as to provide quick RAM storage to the computer CPU 200 during the execution of software programs such as the operating system application programs, and device drivers. More specifically, the computer CPU 200 loads computer-executable process steps from the fixed disk drive 107, the portable 35 storage device 101, or other memory media into a field of the RAM 210 in order to execute software programs. Data is stored in the RAM 210, where the data is accessed by the computer CPU 200 during execution.). Id. at 9:4750 (the host computer 102 is operable to execute the application programs 222, and invoke the network extension code when the portable storage device 101 is

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coupled to the host computer 102.). Id. at 2:606 (network extension code, instructions to be performed by a host computer when the portable storage device is coupled to the host computer.). Id. at 11:2232 (network extension code is invoked such as by running, executing, or otherwise calling the network extension code stored on the portable storage device.).

[1.6] controlling access of data between the memory unit and the electronic apparatus with data transmission via the interface unit, and

EX1005 at 2:606 (network extension code, instructions to be performed by a host computer when the portable storage device is coupled to the host computer.). Id. at 11:2232 (network extension code is invoked such as by running, executing, or otherwise calling the network extension code stored on the portable storage device.). Id. at 9:3347 (The network extension code 224 is operable to detect a file system write function call generated by the application programs 222, the file system write function call operable to cause data to be written to the portable storage device 101 . . . based upon the file system write function call, generate a transmit determination indicative of whether to transmit the data to the network repository 103, and transmit the data to the network repository 103 based upon the transmit determination.).

[1.7] access of data between the memory unit and a remote network host with data transmission via the network unit,

EX1005 at 10:4755 (With the network-extended storage virtualization approach, the storage capacity of a portable storage device coupled to a host computer is virtualized, or extended beyond its physical capacity, by transparently providing the portable storage device with a back-end network repository over network connection. A determination is dynamically generated as to which data is stored on the portable storage device and the network repository, by factors such as data usage, without requiring user interaction.). Id. at 10:4852 (The network extension code is operable to

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generate a transmit determination indicative of whether to transmit the data to a network repository, and transmit the data to the network repository based upon the transmit determination.); see also 9:4247.

[1.8] wherein data is directly stored on the remote network host;

EX1005 at 11:6567 (The user is also enabled to manually elect which data should be stored to the portable storage device or the network repository.). Id. at 3:1820 (New or modified data is written onto the portable storage device, and then is transparently transmitted and stored to the network repository.); see also id. at 10:5060.

[1.9] wherein the portable storage device with network function is removably coupled to said electronic apparatus, expanding storage capacity of the electronic apparatus.

EX1005 at 5:5152 (The host computer 102 is directly or indirectly coupled to the portable storage device 101.). Id. at Title (network-extended storage). Id. at 6:1820 (network repository 103 is a server or other network-attached storage device that is dedicated to file sharing.).

Dependent Claim 2 2. The portable storage device with network function as claimed in claim 1, wherein the memory unit has an operating system stored therein.

See Claim 1, supra. EX1005 at 5:3134 (Operating system programs, applications, and various data files, are stored on disks, which are stored on the fixed disk drive 107.). Id. at 4:5254 (Software used to invoke network extension code is stored locally on computer readable memory media, such as the fixed disk drive 107.). Id. at 7:37:22 (a random access memory (RAM) 210

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where computer instructions and data are stored in a volatile memory device for processing by the computer CPU 200; a read-only memory (ROM) 211 . . . where the files that comprise an operating system 221 . . . are stored.) Id. at 7:638:16 (The operating system 221 may be MICROSOFT WIN-DOWS NT/WINDOWS 2000/WINDOWS XP Work-station; WINDOWS NT/WINDOWS 2000/WIN-DOWS XP Server; a variety ofUNIX-flavored operating systems, including AIX for IBM workstations and serv-ers, SUN OS for SUN workstations and servers, LINUX for INTEL CPU-based workstations and servers, HP UX WORKLOAD MANAGER for HP workstations and servers, IRIX for SGI workstations and servers, VAX/ VMS for Digital Equipment Corporation computers, OPEN-VMS for HP ALPHASERVER-based computers, MAC OS X for POWERPC based workstations and servers; SYMBIAN OS, WINDOWS MOBILE or WINDOWS CE, PALM, NOKIA OS (NOS), OSE, or EPOC for mobile devices, or a proprietary operating system for computers or embedded systems. The application develop-ment platform or framework for the operating system 221 may be: BINARY RUNTIME ENVIRONMENT FOR WIRELESS (BREW); Java Platform, Micro Edition (Java ME) or Java 2 Platform, Micro Edition (J2ME); PYTHON, FLASH LITE, or MICROSOFT.NET Compact.).

Dependent Claim 3 3. The portable storage device with network function as claimed in claim 2, wherein the operating system includes a

See Claim 2, supra. EX1005 at 7:1024 (where the files that comprise an operating system 221, application programs 222 (including, optionally, network extension code 224, other applications 225, and install/uninstall applications 227 which install and uninstall network extension code to the host computer 102, as necessary) and data files 226 are stored.).

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network driving unit for driving the network unit.

Id. at 7:3033 (The RAM 210 interfaces with the computer bus 250 so as to provide quick RAM storage to the computer CPU 200 during the execution of software programs such as the operating system application programs, and device drivers.). Id. at 8:1724 (The network extension code 224 is invoked by the host computer 102. Invocation of the network extension code 224 may occur manually, such as when the user enters commands to invoke the network extension code 224, or automatically, such as when no user interaction is required.). Id. at 9:3843 (The network extension code 224 is operable to . . . cause the data to be written to the portable storage device 101 based upon the file system write function call.). Id. at 8:669:1 (the network extension code 224 provides bottomless, encrypted and disconnected access to data by changing how the operating system accesses the data.).

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Dependent Claim 4 4. The portable storage device with network function as claimed in claim 2, wherein the operating system includes an interface driving unit for driving the interface unit.

See Claim 2, supra. EX1005 at 7:2029 (portable storage device interface 218 which provides a wired or wireless communication interface to the portable storage device 101. The constituent devices and the computer CPU 200 communicate). Id. at 7:3033 (The RAM 210 interfaces with the computer bus 250 so as to provide quick RAM storage to the computer CPU 200 during the execution of software programs such as the operating system application programs, and device drivers.). Id. at 8:179:22 (the network extension code 224 implements a file system filter driver which maintains a cached data or a placeholder associated with the data on the portable storage device, and intercepts, captures or otherwise detects a file system read function call to the user data.). Id. at 9:4347 (network extension code transmit[s] the data to the network repository 103 based upon the transmit determination.). Id. at 8:669:1 (the network extension code 224 provides bottomless, encrypted and disconnected access to data by changing how the operating system accesses the data.); see id. at 7:1925;

Dependent Claim 5 5. The portable storage device with network function as claimed in claim 2, wherein the operating system includes a network file management system, via which the electronic apparatus manages the

See Claim 1.6 and 2, supra. EX1005 at Abstract (The network extension code is operable to detect a file system write function call generated by an application executing on the host computer, the file system write function call operable to cause data to be written to the portable storage device, and cause the data to be written to

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access of data between the memory unit and the electronic apparatus, and between the memory unit and the remote network host.

the portable storage device based upon the file system write function call. The network extension code is further operable to generate a transmit determination indicative of whether to transmit the data to a network repository, and transmit the data to the network repository based upon the transmit determination.).

Dependent Claim 6 6. The portable storage device with network function as claimed in claim 2, wherein the operating system includes a system security unit for protecting the operating system against computer virus infection.

See Claim 2, supra. EX1005 at 7:2053 (disclosing operating systems that came standard with virus protection). See id. at 7:638:16. Id. at 9:2 (the MICROSOFT WINDOWS operating system.). Id. at 7:638:16 (The operating system 221 may be MICROSOFT WINDOWS NT/WINDOWS 2000/WINDOWS XP Work-station; WINDOWS NT/WINDOWS 2000/WIN-DOWS XP Server; a variety of UNIX-flavored operating systems, including AIX for IBM workstations and serv-ers, SUN OS for SUN workstations and servers, LINUX for INTEL CPU-based workstations and servers, HP UX WORKLOAD MANAGER for HP workstations and servers, IRIX for SGI workstations and servers, VAX/ VMS for Digital Equipment Corporation computers, OPEN-VMS for HP ALPHASERVER-based computers, MAC OS X for POWERPC based workstations and servers; SYMBIAN OS, WINDOWS MOBILE or WINDOWS CE, PALM, NOKIA OS (NOS), OSE, or EPOC for mobile devices, or a proprietary operating system for computers or embedded systems. The application develop-ment platform or framework for the operating system 221 may be: BINARY RUNTIME ENVIRONMENT FOR WIRELESS (BREW); Java Platform, Micro Edition (Java ME) or Java 2 Platform, Micro Edition (J2ME); PYTHON, FLASH LITE, or

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MICROSOFT.NET Compact.).

Dependent Claim 7 7. The portable storage device with network function as claimed in claim 2, wherein the operating system includes an authentication unit for authenticating at least one user.

See Claim 2, supra. EX1005 at 13:57 (Authentication, as performed by the authentication agent, is detailed more fully below with reference to the method 500 and FIG. 5.). Id. at 8:669:1 (Among many features, the network extension code 224 provides bottomless, encrypted and disconnected access to data by changing how the operating system accesses the data.). Id. at 9:2325 (authentication agent 231 authenticates the use of the network repository 103 and the portable storage device 101). Id. at 2:2931 (The network extension code may be operable . . . to authenticate a user). Id. at 17:6018:20 (In more detail, the method 500 begins (step S501), and the 60 user logs on to the host computer (step S502). When the user requests access to the portable storage device (step S504), such as by attempting a read or write operation onto the portable storage device, an authentication agent (such as authentication agent 231) generates a dialog box or other 65 input interface which requests the input of identification data (step S505). The contents of the portable storage device are not accessible to the user until the user input, which may be user name and password information, matches information stored on the network repository. Matching can occur using an exact string match, an algorithmic match, or other type of match. In one implementation, if disconnected operation is enabled, a match of the password with the password used for the last successful network login will also effectuate access to the contents of the portable storage device.

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Id. at 13:12 (network identification data that is in effect a master password.).

Dependent Claim 8 8. The portable storage device with network function as claimed in claim 1, wherein the interface unit is selected from the group consisting of a USB interface, an SD interface, a CF interface, an XD interface, a PCMCIA interface, a 1394 interface, an infrared interface, and a Bluetooth interface.

See Claim 1, supra. EX1005 at 8:2126 (the portable storage device 101 is wired or wirelessly coupled to the USB port of the host computer 102); Id. at 5:4565 (The connector may be a wired or wireless connector, such as BLUETOOTH, INFRARED DATA ASSOCIATION, Standard 802.11 wireless connectors, ultra wide band (UWB) wireless connector, or example wired connectors like an IEEE-1394 FIREWIRE connector or a USB connector.).

Dependent Claim 9 9. The portable storage device with network function as claimed in claim 1, wherein the electronic apparatus is selected from the group consisting of a digital camera, a personal computer, a notebook computer, and a PDA.

See Claim 1, supra. EX1005 at 6:412 (101 can be a digital camera 115, or a personal digital assistant (PDA), a MICROSOFT POCKETPC device, a PALM TREO device, or a key drive.).

Dependent Claim 12 12. The portable storage device with network function as claimed in claim 7, wherein the authentication unit conducts authentication in a manner selected from the group consisting of password authentication, fingerprint authentication, and voice authentication.

See Claim 7, supra. EX1005 at 19:6720:3 (The contents of the portable storage device are not accessible to the user until the user input, which may be user name and password information, matches information stored on the network repository.); id. at 2:4043 (The user input may be password, voice, fingerprint, or

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biometric data.).

Dependent Claim 13 13. The portable storage device with network function as claimed in claim 1, further comprising an MP3 player or a voice pen.

See Claim 1, supra. EX1005 at at 6:3944 (PC . . . a laptop, a workstation, . . . telephone, a handheld or tablet computer, a personal digital assistant (PDA), or other type of computer.).

For the forgoing reasons, please cancel claims 19, 12, and 13 as anticipated

by Lam, and thus unpatentable, under 102(e).

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C. Ground II: Claims 113 are obvious under 103(a) by Walters in view of Yao3

1. Overview of Walters

Walters, filed by IBM on August 8, 2001, was published as a Patent

Application Publication on February 13, 2003, and thus is prior art under 35 USC

102(b). Walters (EX1006) at (22), (43).

Walters describes a system that provides the end user of a digital camera,

PDA, or other wireless device, with a virtually inexhaustible amount of local

storage, Id. at [0053]. The system increases storage by transmitting data between

user device[s] and

interchangeable

transmitters, which can

3 Grounds I and II are not redundant. Ground I relies on 102(e), while Ground II

relies on 103. For ground II, Walters is admittedly not explicit about the

processing unit. Lam (Ground I) provides more details about processing units, but

qualifies as prior art under 102(e) and has a prior art date closer to the priority

date of the 213 patent than either Walters or Yao (Ground II). See, e.g.,

MicroStrategy, Inc. v. Zillow, Inc., IPR2013-00034 (PTAB Apr. 2, 2013)

(requiring bi-directional explanation for non-rendundancy of grounds).

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then communicate with remote storage servers. Id. at [0050]; Fig. 5, reproduced

above.

Fig. 7 of Walters shows an

example system, which connects a user

device (digital image device), with a

base memory and user interface, to

remote storage server (Internet/Private

Server) over the Internet via

transceiver. Id. at [0059]; Fig. 7,

reproduced right.

As Walters notes, [t]he preferred embodiment of this device is two main

functional pieces, which can be easily disconnected and reconnected. Id. at

[0050]. The first device (the transceiver or first computer) and the

secondary device is a user device, where that first device uses a wireless

receiver that communicates within the wireless network with the user and which

will allow numerous secondary devices to communicate with the host device

[transceiver] via the wireless receiver. Id. at [0050]; see also id. at [0062].

The first computer acts as a receiver for use with various digital cameras 11

and is serviceable in a wireless network. Id. at [003233]. It can also

communicate wirelessly with a portable mass storage device 13, a palm-sized

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minicomputer 14, a remote visualization display 15, a cellular phone 16, and a

scanner printer, or via a USB wired connection. Id. at [0032].

As Walters notes, the preferred embodiment of this device is composed of a

disk drive . . . with a Bluetooth transmitter/reciever. Id. at [0058]. It notes that,

[a]s the pictures are taken, they are transferred directly to a

intrantet/Internet/Private server, id. at [0060], although where the Bluetooth

enabled local mass storage is used for temporary storage, the images are not

available on the internet until the storage device comes within range of a Bluetooth

enabled transmitter. Id. at [0062].

The system of Walters makes it possible for users of wireless devices, who

need larger storage capacities, to have a simple solution to their problem. Id. at

[0054].

2. Overview of Yao

On September 2, 2005, inventors Richard Yuqi Yao, Steven O. Elliott, and

Ya-Qin Zhang filed a patent application titled Ultra Wideband Wireless Storage

Device, which eventually matured into U.S. Patent 7,600,000. EX1007 (Yao), at

Title, (22). As such, Yao is 102(e) prior art over the 213 patent.

Yao discloses a portable ultra wideband device that wirelessly connects

to personal computers and other computing or consumer devices, thus providing

data storage and retrieval functionalities. Id. at Abstract. It transmits data from a

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communication interface of the portable device that sends the information

directly to remote storage. Id.

Yao discloses a number of embodiments in Figures 1, 2, and 3, all with

portable computing units for relaying data from personal user devices to remote

storage. For instance, FIG. 1 includes a computing device 100 comprising a

processing unit 102, system memory 104, removable storage 109, and non-

removable storage 110, and a network unit

(communications connection 116). Id. at Fig. 1.

In FIG. 2, a mobile computing device 200 of

Yao contains a memory 220, a processor 210, an

operating system 222, an interface driver, and a

network unit 280. Id. at Fig. 2, reproduced left.

Yao discloses numerous remote devices that communicate with each other to

share a data load remotely, and discloses such devices communicating both with 1)

mobile user devices and 2) host computers. Compare EX1007 at FIG. 2 (mobile

computing device and ultra wideband device, above) with id. at FIG. 4 (ultra

wideband device and host computing device).

Yao discloses that a user may submit a file transmission request to transfer

files stored on the ultra wideband device to a public terminal such that the files are

accessible from the public terminal. Id. at 9:60-68. Yao further discloses that the

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devices of Yao may communicate over any network, such as intranets and

extranets. Id. at 4:645:5.

3. Independent Claim 1

Walters in view of Yao render obvious the 213 patent claims.

a) A portable storage device with network function

Walters discloses a local, portable storage device that is enabled with a

wireless interface, EX1006 at [0054]. Specifically, Walters discloses a first

computer of a network. Id. at Abstract (A digital camera supplies images to a first

computer of a network via a receiver which is enabled as a bridge for Bluetooth,

wireless LAN and infrared transmission from a digital camera); EX1003 at 62.

Thus, Walters teaches a storage device with network function.

In addition, Walters teaches that the first computer, also called the

transceiver, is portable. EX1006 at [0062] (a local device functioning as the first

computer and called the transceiver which is coupled to the Internet/Private Server.

The first computer in the form of a local device (transceiver) may be a long

distance transmitter such as a cell phone used to connect to a remote server, a local

Bluetooth hub connected to a server or Bluetooth enabled local mass storage.);

EX1003 at 62. Thus, Walters discloses a portable storage device with network

function as claimed.

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b) an interface unit for coupling to an electronic apparatus

Walters discloses that its first computer (portable storage device) has a

common interface hardware (interface unit) allowing coupling to secondary

devices (electronic apparatus). For instance, it notes that, [a]s the pictures are

taken, they are transferred directly to a intrantet/Internet/Private server, id. at

[0060], and where the first computer provides common interface hardware for

acting as a wireless receiver which . . . will allow numerous secondary

devices to communicate with the host device via the wireless receiver.). Id. at

[0050] (emphasis added); EX1003 at 63. Thus, Walters discloses an interface

unit for coupling to an electronic apparatus as claimed.

c) a network unit located within the portable storage device for linking with a remote network host

Walters discloses that its first computer (portable storage device) has a

long distance transmitter that serves as the claimed network unit. For instance,

Walters discloses a Digital Imaging Device that uses Bluetooth wireless

communication user interface to transmit images to a local device functioning as

the first computer called the transceiver which is coupled to the Internet/Private

Server, where the local device (transceiver) may be a long distance

transmitter such as a cell phone used to connect to a remote server i.e., a

network unit in the first computer. EX1006 at [0062]. Walters discloses the

Internet/Private Server is linked to the first computer called the transceiver via a

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long distance transmitter, for instance, when Walters discloses that the images are

uploaded to the server via the intranet/Internet and made directly available for

viewing on public or private web pages by the service provider at the end user

interface. Id. at [0062]; EX1003 at 64. Thus, Walters discloses a network unit

located within the portable storage device for linking with a remote network host

as claimed.

d) a memory unit located within the portable storage device providing access of data and temporarily storing data received from the electronic apparatus

Walters also a memory unit located within the first computer (portable

storage device). For example, Walters preferred embodiment employs a device

having internal memory that would transfer the data up to the Internet through a

wireless transceiver. EX1006 at [0059]. This first computer or transceiver also

contains a disk drive. Id. at [0058] (The preferred embodiment of this device is

composed of a disk drive, such as the IBM Deskstar 75GXP 45 GB HDD . . .).

Walters discloses the first computer is a local, portable storage device that is

enabled with a wireless interface. Id. at [0054]; EX1003 at 65. Thus, Walters

discloses a memory unit located within the portable storage device, as claimed.

Additionally, Walters explicitly envisions the first computers memory

acting as temporary storage. Specifically, Walters teaches that the Digital Image

Device, corresponding to the claimed electronic apparatus, transmits images to

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the first computer, which then uploads the images to the remote server (claimed

remote network host). EX1006 at [0062]; EX1003 at 65. Thus, Walters

discloses a memory unit providing access of data and temporarily storing data

received from the electronic apparatus as claimed.

e) a processing unit located within the portable storage device

As discussed, Walters first computer is the claimed portable storage device.

Walters discloses that the first computer can be, for example, an IBM ThinkPad,

and other self-contained computing devices, which all contain processors. EX1006

at [0032], [0053], [0054]; EX1003 at 66. Thus, Walters discloses a processing

unit located within the portable storage device as claimed. If the Patent Owner

argues that Walters does not expressly disclose a processing unit in the first

computer, it would have been obvious for the reasons discussed in section i) below.

(1) that receives instructions from the electronic apparatus for controlling access of data between the memory unit and the electronic apparatus with data transmission via the interface unit

Walters discloses the claimed processing unit, as described in the previous

subsection. Walters further discloses the user of a Digital Image Device (i.e., a

digital camera, the claimed electronic apparatus), enters data and commands for

controlling the access of that data between the first computers memory unit and

the Digital Image Device with data transmission via the interface unit. EX1006

at [0066] (A PDA type interface for the digital camera would include an area

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which the user would write on to enter data . . . Appropriate data to be entered by

the user could include . . . commands to be issued to the digital camera (e.g. Send

image to NYPD server at 555-1211).). Thus, the user provides input to a user

interface of the digital camera (the claimed electronic apparatus), which

transmits images to the first computer (the claimed portable storage device). Id.

at [0062]. This transmission corresponds to the claimed instructions, because it

causes the second computer to receive, store, and upload[s the images] to the

server via the intranet/internet [where they become] directly available for viewing

on public or private web pages by the service provider at the end user interface.

Id.; EX1003 at 67. Walters notes that these commands cause the transmission of

the data object via the [t]ransfer of the data object from the Camera to the remote

server . . . either directly or over a Storage Area Network. EX1006 at [0084]. This

transfer occurs via the wireless receiver: The data object is received by the

wireless receiver . . . and is sent to the receiving computers IP stack. This routes

the data from the receiving computer to the destination machine. Id. at [0085].

Walters further discloses that using standard TCP/IP provides the user with a

means to direct the data. Id. at [0086]. Thus, Walters discloses a processing unit

that receives instructions from the electronic apparatus for controlling access of

data between the memory unit and the electronic apparatus with data transmission

via the interface unit, as claimed.

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(2) [controlling] access of data between the memory unit and a remote network host with data transmission via the network unit wherein data is directly stored on the remote network host

In Walters, the user provides input to a user interface of the digital camera

(the claimed electronic apparatus), which transmits images to the first computer

(the claimed portable storage device). Id. at [0062]. The second computer then

upload[s the images] to the server via the intranet/internet and [become] directly

available for viewing on public or private web pages by the service provider at the

end user interface.). Id; EX1003 at 68. The digital cameras transmission the

first computer corresponds to the claimed instructions received from the

electronic apparatus, because they control access of data (images) between

Walters first computer (the claimed portable storage device) and Walters

remote server (the claimed remote network host). Thus, Walters discloses the

claimed access of data between the memory unit and a remote network host with

data transmission via the network unit wherein data is directly stored on the remote

network host.

f) wherein the portable storage device with network function is removably coupled to said electronic apparatus, expanding storage capacity of the electronic apparatus.

As previously discussed, Walterss first device corresponds to the claimed

portable storage device. Walters teaches that this first computer provides

common interface hardware for acting as a wireless receiver which

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communicates within the wireless network with the user [device] . . . and which

will allow numerous secondary devices to communicate with the host device via

the wireless receiver. EX1006 at [0050]. Additionally, the first device (claimed

portable storage device) may couple to a user device like the digital camera

(claimed electronic apparatus) via Bluetooth, wireless LAN and infrared image

reception capability, . . . serial, USB, [or] IDE communication ports id. at [0054],

which provide removable coupling as claimed. Indeed, in Walters, [t]he preferred

embodiment of this device is two main functional pieces, which can be easily

disconnected and reconnected. Id. at [0050].

Moreover, as explained above, Walters provides the end user of a digital

camera, PDA, or other wireless device, with a virtually inexhaustible amount of

local storage, id. at [0053], thereby expanding storage capacity of the electronic

apparatus, as claimed. EX1003 at 68-69.

In addition, Walters discloses the first computer may be an IBM ThinkPad

or other types of portable computers, all of which must necessarily contain central

processing units for carrying out the functions required by Walters. To the extent

Patent Owner may argue that Walters does not explicitly disclose a processing unit

carrying out the claimed functions, Yao renders these elements obvious as

discussed below.

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g) Rationale to combine Walters with Yao

Walters teaches a networking storage solution for a plurality of user devices,

using a first computer acting as a wireless transceiver for user devices to connect

them to remote storage to increase storage on the device. Walters discloses:

A digital camera supplies images to a first computer of a network via

a receiver which is enabled as a bridge for Bluetooth, wireless LAN

and infrared transmission from a digital camera. . . . transmissions

from the camera can be transmitted to the receiving first computer and

thereafter transferred over the network for creation of a multi-media

file which can be viewed at a private network or Internet accessible

second computer.

EX1006 at Abstract.

Yao discloses an invention in the same field of endeavor of Walters using

similar technolog

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