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:
Novocrypt_IPR@finnegan.com
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

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

(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
ii

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

iii

LIST OF EXHIBITS
Exhibit
EX1001
EX1002
EX1003
EX1004
EX1005
EX1006
EX1007
EX1008
EX1009
EX1010
EX1011
EX1012
EX1013
EX1014
EX1015
EX1016
EX1017
EX1018
EX1019
EX1020
EX1021
EX1022
EX1023
EX1024
EX1025

Description
U.S. Patent No. 7,743,213 (filed 02/24/2006) (the 213 patent)
Petitioners Voluntary Interrogatory Responses
Declaration of Mr. Herbert Cohen
File History of The 213 Patent
U.S. Patent No. 7,849,267 to Monica Sin-Ling Lam et al (Lam)
U.S. Patent Application Publication No. 2003/0030839 to Craig
R. Walters et al (Walters)
U.S. Patent No. 7,600,000 to Richard Yuqi Yao et al (Yao)
IEEE Standard Dictionary of Electrical and Electronics Terms,
6th ed. (1996)
U.S. Patent No. 7,365,871 to David A Monroe (Monroe)
U.S. Patent No. 8,023,998 to Martin Croome (Croome)
U.S. Patent No. 6,405,278 to Steven F. Liepe et al (Liepe)
U.S. Patent Application Publication No. 2005/0036034 to Rea
(Rea)
U.S. Patent Application Publication 2007/0101143 to Yoshiaki
Iwata et al (Iwata)
U.S. Patent No. 7,643,168 to David A Monroe (Monroe)
U.S. Patent Application Publication 2005/0144353 to Ou Long
et al (Long)
U.S. Patent Application Publication 2006/0277216 to Tzvika
Shukhman (Shukhman)
U.S. Patent Application Publication 2007/0028046 to Chi Pham
et al (Pham)
U.S. Patent Application Publication 2007/0294457 to Alexander
Gantman et al (Gantman)
U.S. Patent Application Publication 2008/0161051 to Kai
Ruediger Schobbert et al (Schobbert)
Nikon WT-1 & WT-2 Wireless Transmitters Advertisement
(2005)
U.S. Patent No. 7,526,314 to Richard Kennedy (Kennedy)
U.S. Patent No. 7,493,487 to Thomas G Phillips et al (Phillips)
U.S. Patent No. 7,555,568 to Evan S. Huang (Huang)
U.S. Patent No. 7,231,449 to Brandon Jon Ellison, Alan Ladd
Painter (Ellison)
Sula Park et al, Design, Implementation, and Performance
iv

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

IPR2015-01606
U.S. Patent 7,743,213
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

IPR2015-01606
U.S. Patent 7,743,213
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
Novocrypt LLC v. Western Digital
Techs., Inc.
Novocrypt LLC v. Toshiba Am. Info.
Sys., Inc.
Novocrypt LLC v. Thecus USA, Inc.
Novocrypt LLC v. Synology Am. Corp.
Novocrypt LLC v. Silicon Power
Comp. & Commn USA Inc.
Novocrypt LLC v. Seagate Tech. LLC
Novocrypt LLC v. SanDisk Corp.
Novocrypt LLC v. Corsair
Components, Inc.
C.

Number

Dist.

Filed

2-15-cv-00227

TXED

Feb. 18, 2015

2-15-cv-00228

TXED

Feb. 18, 2015

2-15-cv-00229
2-15-cv-00230

TXED
TXED

Feb. 18, 2015

Feb. 18, 2015

2-15-cv-00231

TXED

Feb. 18, 2015

2-15-cv-00232
2-15-cv-00233

TXED
TXED

Feb. 18, 2015

Feb. 18, 2015

2-15-cv-00234

TXED

Feb. 18, 2015

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

IPR2015-01606
U.S. Patent 7,743,213
included below. Petitioner consents to electronic service of documents at
Novocrypt_IPR@finnegan.com.
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
1

Exhibit
No.

Claims 19, 12, and 13 are anticipated under 102(e) by U.S.

EX1005
Patent No. 7,849,267 to Monica Sin-Ling Lam (Lam)
Claims 113 are obvious under 103(a) by U.S. Patent
EX1006
Application Publication US2003/0030839 to Craig R. Walters
+
et al (Walters), in view of U.S. Patent No. 7,600,000 to
EX1007
Richard Yuqi Yao et al. (Yao)
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

IPR2015-01606
U.S. Patent 7,743,213
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

IPR2015-01606
U.S. Patent 7,743,213
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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U.S. Patent 7,743,213
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.

IPR2015-01606
U.S. Patent 7,743,213
FIG. 3

FIG. 2

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
7

IPR2015-01606
U.S. Patent 7,743,213
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

IPR2015-01606
U.S. Patent 7,743,213
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

IPR2015-01606
U.S. Patent 7,743,213
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 preappeal 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.

10

IPR2015-01606
U.S. Patent 7,743,213
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.

11

IPR2015-01606
U.S. Patent 7,743,213
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).

12

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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.

13

IPR2015-01606
U.S. Patent 7,743,213
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:
101 ("portable
storage
device")

102 ("host
computer")

103 ("remote
network
repository")

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.

14

IPR2015-01606
U.S. Patent 7,743,213
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

15

IPR2015-01606
U.S. Patent 7,743,213
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

16

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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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IPR2015-01606
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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 backend 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.
5.

Dependent Claim 5

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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U.S. Patent 7,743,213
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.
6.

Dependent Claim 6

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.
8.

Dependent Claim 8

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 IEEE1394 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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U.S. Patent 7,743,213
9.

Dependent Claim 13

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
[1.1] A portable
storage device
with network
function,
comprising:

U.S. Patent 7,849,267 (Lam) (EX1005)

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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IPR2015-01606
U.S. Patent 7,743,213
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;
[1.3] a network
unit located within
the portable
storage device for
linking with a
remote network
host;

EX1005 at 7:2527 (a portable storage device interface 218

which provides a wired or wireless communication interface
to the portable storage device 101.).
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).
EX1005 at 7:37:22 (a random access memory (RAM)
[1.4] a memory
unit located within 210 where computer instructions and data are stored in a
volatile memory device for processing by the computer CPU
the portable
200; a read-only memory (ROM) 211 where invariant losstorage device
level systems code or data for basic system functions such as
providing access
basic input and output (I/O), startup, or reception of
of data and
keystrokes from the keyboard 105 are stored in a nontemporarily
volatile memory device; and optionally a storage 220 or
storing data
received from the other suitable type of memory (e.g. such as random-access
memory (RAM), read-only memory (ROM),
electronic
programmable read-only memory (PROM), erasable
apparatus; and
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 EX1005 at 7:5060 (The computer CPU 200 is one of a
unit located within number of high-performance computer processors, including
an INTEL or AMD processor, a POWERPC processor,
the portable
storage device that a MIPS reduced instruction set computer (RISC)
processor, a SPARC processor, an ACORN RISC
receives
Machine (ARM) architecture processor, a HP
instructions from
ALPHASERVER 55 processor or a proprietary computer
the electronic
processor for a main-frame.).
apparatus for
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 computerexecutable 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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IPR2015-01606
U.S. Patent 7,743,213
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.).

[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 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.).

Id. at 10:4852 (The network extension code is operable to

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IPR2015-01606
U.S. Patent 7,743,213
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 10:50
60.

[1.9] wherein the

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

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.).

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
See Claim 2, supra.
3. The portable
storage device
EX1005 at 7:1024 (where the files that comprise an operating
with network
system 221, application programs 222 (including, optionally,
function as
claimed in claim network extension code 224, other applications 225, and
install/uninstall applications 227 which install and uninstall
2, wherein the
operating system network extension code to the host computer 102, as necessary)
and data files 226 are stored.).
includes a

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IPR2015-01606
U.S. Patent 7,743,213
network driving
unit for driving
Id. at 7:3033 (The RAM 210 interfaces with the computer
the network unit. 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

34

access of data between the

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

IPR2015-01606
U.S. Patent 7,743,213
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 See Claim 2, supra.
storage device
EX1005 at 7:2053 (disclosing operating systems that came
with network
standard with virus protection). See id. at 7:638:16.
function as
claimed in claim
Id. at 9:2 (the MICROSOFT WINDOWS operating
2, wherein the
system.).
operating
system includes
Id. at 7:638:16 (The operating system 221 may be
a system
WINDOWS
NT/WINDOWS
security unit for MICROSOFT
2000/WINDOWS
XP
Work-station;
WINDOWS
protecting the
NT/WINDOWS 2000/WIN-DOWS XP Server; a variety
operating
of UNIX-flavored operating systems, including AIX for
system against
computer virus IBM workstations and serv-ers, SUN OS for SUN
workstations and servers, LINUX for INTEL CPU-based
infection.
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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IPR2015-01606
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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.

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 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.).

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

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

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 nonremovable

storage

110,

and

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 <105> 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 <105> 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 technology to achieve the same purpose, and discloses a processing unit in
a device playing a similar role to Walters first computer and carrying out the
instructions and functions as claimed. That device is used for storing information
when storage capabilities of other computing devices approach maximum
capacity. Id. at 3:664:3. That device is a portable ultra wideband device [that]
wirelessly connects to personal computers and other computing or consumer
devices with an ultra-high speed link and that provides data storage and retrieval
functionalities. EX1007 at 2:79, 6467. Yao discloses that [c]ommunication

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may occur over a network, including intranets and extranets. EX1007 at 4:64
5:5; EX1003 at 108109.
Both Walters and Yao are thus in the same field of endeavor, and both
propose to solve the problem of limited storage on portable and personal
computing and digital storage devices. Walters does so using a wireless, wired,
and/or Bluetooth-capable transceiver to act as a bridge. Yao does so using a
wireless, wired, and/or Bluetooth-capable computera portable ultra wideband
device. The device Yao discloses, [t]he ultra wideband device[,] may also be
used for storing information when storage capabilities of other computing devices
approach maximum capacity. Id. at 3:664:1.
Yao contains a processor unit, and all of the detailed limitations Walters
implies or discloses generically. Yao discloses a processor unit, as the device
includes a central processing unit . . . with embedded operating system code. Id.
Yao discloses that there is a file transmission request, that is submitted in
response to user activation on the user device where, [f]or example, a user may
submit the 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 9:6367. Yao discloses that a file to be transmitted is retrieved
from a storage device on the device that initiates transmission, and that data is
then transmitted from an ultra wideband communication interface over a wireless

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medium to the other devices. Id. at 2:1420. Yao also discloses that data is
transmitted from an ultra wideband communication interface of the transmitting
device over a wireless medium to the receiving device and an ultra wideband
communication interface on the receiving device processes the data according to an
ultra wideband protocol where the translated data is automatically available to
the receiving device. Id. at Abstract.
It would have been obvious to a POSA to combine Walters with the
disclosures of Yao, as Yao teaches matching a Walters-type device with a
processing unit connected with a memory unit, a network unit, and an interface
unit, where the processing unit contains an operating system with file management,
authentication, security systems, and virus protection present on a portable device,
to improve functionality. Combining these teachings would merely implement the
known, generic means of Yao as alternatives to generic processors, computers, and
PCs disclosed in Walters. EX1006 at [0048] (through a PC); id. at [0053] (the
common interface first computer); id. at [0054] (The use of an IBM Thinkpad.).
A POSA would have had a reasonable likelihood of success in applying the
device architecture of Yao to the system architecture of Walters, at least because
Yao teaches a well-known, modular way to construct a portable storage device
meant to expand local device storage via wireless uplink by including a processor,

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a memory, a network unit, and a communications unit, using an operating system
and a file management system.
4.

Dependent Claim 2

Claim 2 recites the portable storage device with network function as

claimed in claim 1, wherein the memory unit has an operating system stored
therein. Walters discloses its devices using operating systems, and discusses
operating systems software necessary for the devices to operate as described. See
EX1006 at [0006] (Since Microsoft unveiled its Windows 95 photo viewing
and printing of images uploaded (sometimes called download, offload or
otherwise transferred) to the personal computer viewing and printing system
over the USB cable has been available to the many users of Microsofts imaging
software which is included with the operating system installed on most personal
computers and laptops.); id. at [0032]. Walters also provides an example where
the first computer (claimed portable storage device) is equipped with the
Microsoft Windows 2000 operating system. Id. at [0045]; EX1003 at 71.
Walters does not explicitly disclose the memory unit of the first computer
having the operating system stored therein as recited in claim 1, but this would
have been obvious based on Yao. As discussed above, Yao discloses an ultra high
wideband portable storage device where the system memory 104 typically
includes an operating system 105, one or more applications 106, and may include

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program data 107. Yao (EX1007), at 4:3740. Yao discloses a generic operating
system as well as specific examples, and discloses that the operating system resides
on the memory. Yao (EX1007) at 5:2237 (The mobile computing
device 200 includes an operating system 222, such as the Windows CE operating
system from the Microsoft Corporation of Redmond, Wash. or another operating
system, which is resident in the memory 220 and executes on the processor 210.).
EX1003 at 95.
It would have been obvious to a POSA to store Walters first devices
operating system in memory unit as described by Yao, because the operating
system would not execute, and the first device would not have been able to
perform the functions that Walterss describes, unless this was the case. EX1003 at
111. Moreover, using or implementing a commercially available, modular
operating system on a memory unit would have required only routine skill and
would not have impeded a POSA. Id.
5.

Dependent Claims 3 and 4

Claims 3 depends from claim 2 and adds that the operating system includes
a network driving unit for driving the network unit, and claim 4 further adds that
the operating system includes an interface driving unit for driving the interface
unit. Because Walters describes the first computer as having an operating system
and communicating through the two interfaces, the operating system would have

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necessarily have software modules to control operation of those two interfaces
(i.e., driving units). EX1003 at 72. And even if this were not the case, it would
have been obvious based Yaos disclosure.
Yao discloses computer operating system software modules that control
operation of a network interface and an ultra wideband interface. Specifically, Yao
describes a network interface card driver 416, 466 and an ultra wideband device
driver 418, 468. EX1007 at 7:5260; EX1003 at 96. Thus, Yao discloses a
portable storage device with network function as claimed in claim 3 and 4, wherein
the operating system includes a network driving unit for driving the network unit,
and wherein the operating system includes an interface driving unit for driving the
interface unit.
It would have been obvious to a POSA to use driving software as described
in Yao in Walters first devices operating system on its memory unit, for the
reasons outlined above, and because the interface unit and network unit would not
function as the claims require without driving software. Indeed, the first device
would not have been able to perform the functions that Walters describes, unless
this was the case. EX1003at 112. Moreover, using or implementing any
commercially available software module drivers would have been a basic
requirement of programming both devices, would have required no great skill, and
would have involved only routine substitution of known programs.

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6.

Dependent Claim 5

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. Walters does not
explicitly include this limitation. But Yao describes a file management system
software architecture, shown in Fig. 4, where a file system 420, 470 performs
logical operations on files. Block driver 435, 485 controls and manages sectors on
storage device 444, 494. Data analyzer 425, 475 analyzes the system operation
commands and parameters. Data analyzer 425, 475 determines whether the
operation occurs on corresponding local storage device 444, 494 or on a remote
device. Data analyzer 425, 475 performs the operation command and parameter
transformation for Wireless file transfer to a remote computing device. EX1007 at
7:608:2.
It would have been obvious to a POSA to use a file management system like
the one described in Yao within the portable storage device of Walters, within the
first devices operating system on its memory unit, for the reasons outlined above,
and because the portable storage device would be useless for its intended purpose
without a means by which to manage the transfer of the files. EX1003 at 113.
Moreover, using or implementing any commercially available software module

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drivers would have been a basic requirement of programming both devices, would
have required no great skill, and would have involved only routine substitution of
known programs.
7.

Dependent Claim 6

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. Walters discloses where the first computer (claimed
portable storage device) is equipped with the Microsoft Windows 2000 operating
system. EX1007 at [0045], and as Mr. Cohen explains, the operating system
disclosed includes basic computer virus protection. EX1003 at 114; EX1026;
EX1027.
Yao discloses a file system 420 which may scan the data for viruses and
correct any errors. Yao (EX1007), at 8:2328. Yao discloses element 620 that
scans for viruses, and, for example, in claim 16 virus scanning data associated
with the received ultra wideband communication.
It would have been obvious to a POSA to add commercially available virus
protection like that disclosed in Yao to the device of Walters, for the reasons
outlined above, and because using or implementing any commercially available
virus protection to a portable storage device that was connected to the Internet
would have allowed the portable storage device to function safely and securely in

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its planned network environment. Moreover, the combination would have required
no great skill, and would have involved only the application of known,
commercially available programs.
8.

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. Walters
discloses where the first computer (claimed portable storage device) is equipped
with the Microsoft Windows 2000 operating system. EX1006 at [0045]. As Mr.
Cohen explains, the operating system disclosed includes basic password
authentication. EX1003 at 73; EX1026; EX1027.
9.

Dependent Claim 8

Claim 8 depends from claim 1 and recites that 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 inter- face, an infrared interface, and a
Bluetooth interface.
Walters discloses a device linked with 802.11b wireless access, Bluetooth,
Infrared, USB, Wireless LAN, Cellular Modem, Digital PCS, or their equivalents

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which can be received by the first computer of the system.). Id. at [0063];
EX1003 at 74 Thus, Walters discloses a number of the wired and wireless
connections from the 213 patents claim 8.
10.

Dependent Claim 9

Claim 9 depends from claim and recites that the electronic apparatus is
selected from the group consisting of a digital camera, a personal computer, a
notebook computer, and a PDA. As discussed previously, Walters discloses the
first computer (the claimed portable storage device) can be an IBM ThinkPad.
Walters (EX1006) at [0032], [0060]. Thus, Walters discloses claim 9.
11.

Dependent Claims 10 and 11

Claims 10 and 11 depend from claim 1 and recite that the network unit is
selected from the group consisting of a wired network chip and a wireless network
chip, and that the processing unit comprises a SOC (System on chip)
configuration, respectively. Walters does not explicitly teach the system-on-chip
limitations of claims 10 and 11, but they would have been obvious based on Yao.
Yao discloses the control system 330 and communication interface 310 may
be integrated on one chip. See, e.g., EX1007 at 7:56. Thus, Yao discloses the
system-on-chip and communication chip limitations of claims 10 and 11.
It would have been obvious to a POSA to combine Walters in view of Yao,
for the reasons outlined above, and to to achieve low cost, high data rate, low

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power consumption and compact size compared to a separate architecture, as
noted by Yao. Id. at 7:68.
12.

Dependent Claim 13

Claim 13 depends from claim 1 and recites [t]he portable storage device
with network function as claimed in claim 1, further comprising an MP3 player or
a voice pen. Walters teaches this claim by teaching that the first computer is a
commercially available laptop, an IBM Thinkpad. EX1006 at [0032], [0054].
These types of devices can play MP3 files, and are therefore MP3 players as
claimed. EX1003 at 76. Moreover, even if the first computer were not an MP3
player, Yao suggests [w]ith optional software and hardware modules, the ultra
wideband device can provide additional features such as MP3 player abilities, so
it would have been obvious to incorporate an MP3 player into Walters. EX1007 at
4:58; EX1003 at 76. It would have been obvious to a POSA to combine Walters
in view of Yao to provide an MP3 player.
VIII. CONCLUSION
Petitioners respectfully request inter partes review of claims 113 of U.S.
Patent No. 7,743,213 for the foregoing reasons.
Respectfully submitted,

July 22, 2015

By: /P. Andrew Riley/

P. Andrew Riley (Lead Counsel)
Reg. No. 66,290

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