Enova Technology Corp. v. Seagate Technology (US) Holdings Inc.
706 F. App'x 987
| Fed. Cir. | 2017Background
- Enova owns U.S. Patent No. 7,900,057, claiming a SATA cryptographic apparatus that selectively encrypts/decrypts data FISes based on predefined command categories to avoid de-encapsulation/re-encapsulation and reduce latency.
- Seagate petitioned for three inter partes reviews (IPRs) asserting claims 1–53 are obvious over Sullivan (a prior patent publication about in-line encryption) and a SATA technical specification; the PTAB instituted and found the claims unpatentable as obvious.
- Central disputed claim limitation: sending a data FIS to a cryptographic engine "responsive to the first data FIS associated with a pre-defined category of command set" (the "pre-defined category" limitation) — i.e., grouping commands into bypass-true/false categories to decide encryption.
- The Board found Sullivan teaches treating control and user data differently for encryption and that Sullivan’s explicit mention of serial ATA supports combining Sullivan with the SATA specification to yield the claimed grouping and operation.
- Enova asserted secondary considerations (commercial success, industry praise, copying/licensing), but the Board found no adequate nexus tying that evidence to the claimed invention; Enova appealed.
- The Federal Circuit affirmed: (1) substantial evidence supports the Board’s findings about the prior art combination and motivation to combine; (2) Enova failed to prove nexus for objective indicia.
Issues
| Issue | Enova's Argument | Seagate's Argument | Held |
|---|---|---|---|
| Whether Sullivan and SATA, alone or combined, disclose the pre-defined category limitation | Sullivan treats payloads the same and does not disclose grouping SATA commands into predefined categories | Sullivan teaches treating control vs. user data differently and expressly contemplates use with serial ATA, so combined with SATA it suggests the claimed grouping | The combination of Sullivan and SATA, as found by the Board, discloses/suggests the pre-defined category limitation; substantial evidence supports that finding |
| Whether a skilled artisan would be motivated to combine Sullivan and SATA or whether the combination would be inoperable | Combination would be inoperable or Sullivan must be read narrowly, so no motivation to combine | Sullivan expressly contemplates use with SATA; any alleged inoperability arises only from a narrow reading the Board rejected | Board’s finding of motivation to combine is supported by substantial evidence; no fatal inoperability when Sullivan is reasonably read |
| Whether Seagate’s expert testimony was conclusory, hindsight, or improperly credited without live testimony | Expert was conclusory and hindsight; live testimony required for deference | Expert relied on experience and the references; live testimony not required; Board properly credited the expert | The Board properly credited Seagate’s expert testimony; no error in its consideration or deference |
| Whether Enova’s objective indicia (commercial success, praise, copying/licensing) establish nonobviousness | Evidence shows X-Wall products and Seagate products had commercial success; industry praise and copying/licensing support nexus | Evidence fails to tie sales/praise/licenses to the claimed invention; licenses and admissions do not establish copying or nexus | Board correctly found Enova failed to establish nexus or sufficient proof of commercial success, praise, or copying/licensing; objective indicia do not overcome obviousness |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (Sup. Ct. 2007) (basic framework for obviousness analysis)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (Sup. Ct. 1966) (Graham factors for obviousness)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (standard of review for Board fact findings)
- Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2016) (scope and content of prior art as factual findings)
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (patentee’s burden to rebut obviousness with objective indicia)
- Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340 (Fed. Cir. 2012) (evidence required to prove copying)
- In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (licenses require nexus to claimed invention to show nonobviousness)
- Yorkey v. Diab, 601 F.3d 1279 (Fed. Cir. 2010) (deference to Board credibility determinations for expert witnesses)