NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

KINGSTON TECHNOLOGY COMPANY, INC.,

Appellant

v.

SPEX TECHNOLOGIES, INC.,

Appellee

______________________

2019-1256

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2017-

01021.

______________________

Decided: February 21, 2020

______________________

DAVID M. HOFFMAN, Fish & Richardson, P.C., Austin, 

TX, argued for appellant. Also represented by OLIVER 

RICHARDS, San Diego, CA. 

 KRISTOPHER DAVIS, Russ August & Kabat, Los Angeles, 

CA, argued for appellee. Also represented by MARC AARON 

FENSTER, PAUL ANTHONY KROEGER, BENJAMIN T. WANG.

 ______________________

Before DYK, O’MALLEY, and STOLL, Circuit Judges.

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2 KINGSTON TECH. CO. v. SPEX TECHS., INC.

STOLL, Circuit Judge.

Kingston Technology Company, Inc. appeals the Patent Trial and Appeal Board’s final written decision declining to find claims 55–57 of U.S. Patent No. 6,003,135

anticipated by PCT Application WO 95/16238 (Jones). Because substantial evidence supports the Board’s determination that Jones does not expressly or inherently disclose 

certain limitations of claims 55 and 56, we affirm as to 

those claims. With regard to claim 57, we hold that the 

Board abused its discretion when it rejected Kingston’s 

supplemental briefing for purportedly presenting a new 

theory of invalidity. We therefore vacate the Board’s decision as to claim 57 and remand for the Board to consider 

Kingston’s supplemental briefing addressing claim 57.

BACKGROUND

I

The ’135 patent, titled “Modular Security Device,” is directed to a modular, typically portable, device that communicates with a host computing device—e.g., a host 

computer. The disclosed modular device contains a security module and a target module. The security module provides security functionality such as encryption or password 

control, while the target module provides non-security 

functionality such as data storage, biometric scanning, a 

modem, or a smart card reader. The ’135 patent discloses

that separating the security elements of the modular device from other functionality provides for a single security 

module that can be used to provide security to multiple 

types of interactions with the host computer.

In certain embodiments, the security module can be positioned inline such that all communications between the 

target module and the host computer must travel through 

it. The same security module can also be used with a variety of target modules, thereby increasing flexibility. In addition, the modular device can be implemented to assume 

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the identity of the target module such that the security 

module is transparent to the host computer.

Claims 55 and 57 are illustrative:

55. For use in a modular device adapted for communication with a host computing device, the modular device comprising a security module that is 

adapted to enable one or more security operations 

to be performed on data and a target module that 

is adapted to enable a defined interaction with the 

host computing device, a method comprising the 

steps of: 

receiving a request from the host computing device 

for information regarding the type of the modular 

device; 

providing the type of the target module to the host 

computing device in response to the request; and 

operably connecting the security module and/or the 

target module to the host computing device in response to an instruction from the host computing 

device.

. . .

57. For use in a modular device adapted for communication with a host computing device, the modular device comprising a security module that is 

adapted to enable one or more security operations 

to be performed on data and a target module that 

is adapted to enable a defined interaction with the 

host computing device, a method comprising the 

steps of: 

communicating with the host computing device to 

exchange data between the host computing device 

and the modular device; 

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performing one or more security operations and the 

defined interaction on the exchanged data; 

mediating communication of the exchanged data 

between the host computing device and the modular device so that the exchanged data must first 

pass through the security module; and 

operably connecting the security module and/or the 

target module to the host computing device in response to an instruction from the host computing 

device.

’135 patent col. 26 ll. 12–53 (emphases added to highlight 

disputed claim limitations).

The specification of the ’135 patent explains that some 

embodiments conform to the PCMCIA standard. PCMCIA 

cards, popularized in the 1990s, were removable modules 

with a variety of functions—e.g., modem, smart card 

reader, data storage—that could be inserted into a designated slot in a laptop computer. The Personal Computer 

Memory Card International Association established the 

standard for PCMCIA cards (hence the name),1 and the 

PCMCIA standard is comprised of multiple discrete specifications.

II

Jones is the only prior art reference at issue on appeal. 

Jones is a PCT Application directed to “[a] detachable 

PCMCIA memory card . . . incorporating a smartcard integrated circuit.” Jones at Abstract. The memory card of 

Jones provides removable data storage secured by a password, encryption, or both.

Jones discloses at least one embodiment that conforms 

to the PCMCIA standard. Jones specifically cites to the 

1 PCMCIA cards were later dubbed “PC Cards.”

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“PC Card Standard Specification, Release 2.01, published 

in November, 1992,” but does not expressly incorporate 

that specification by reference. Jones col. 5 ll. 22–23; see 

also id. at col. 8 ll. 26–29 (similar). Elsewhere, Jones explains that “[t]he programming interface to the PCMCIA 

Card Services software is defined in Section 3 of the 

PCMCIA Standard (Release 2.01),” but again does not expressly incorporate that disclosure by reference. Id.

at col. 9 ll. 16–19.

III

Kingston petitioned for inter partes review of 

claims 55–58 of the ’135 patent based on anticipation by 

Jones, obviousness over Jones alone, and obviousness over 

Jones in view of other prior art. The Board initially declined to institute review for claims 55–57, but modified its 

institution decision to include those claims following SAS 

Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). The Board 

then permitted Kingston to submit supplemental information pursuant to 37 C.F.R. § 42.123. The Board also authorized the parties to file supplemental briefing 

addressing the supplemental information submitted by 

Kingston.

The Board issued a final written decision in which it 

held claim 58 unpatentable, but declined to hold 

claims 55–57 unpatentable. See generally Kingston Tech. 

Co. v. SPEX Techs., Inc., No. IPR2017-01021, 2018 WL 

4773543, at *1 (P.T.A.B. Oct. 1, 2018) (“Decision”). Relevant here, the Board found that Kingston had failed to 

show by a preponderance of the evidence that claims 55–57 

of the ’135 patent are anticipated by Jones.2 In so finding, 

the Board declined to consider Kingston’s supplemental 

2 Although not at issue on appeal, the Board also rejected Kingston’s obviousness arguments based on Jones 

alone and in combination with other references.

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6 KINGSTON TECH. CO. v. SPEX TECHS., INC.

briefing regarding claim 57 because Kingston had, in the 

Board’s assessment, presented “new argument and new invalidity theories not presented or relied upon in the Petition.” Id. at *12 (first citing 37 C.F.R. § 42.23(b); then 

citing Office Patent Trial Practice Guide, August 2018 Update 14, https://go.usa.gov/xU7GP).

Kingston appeals the Board’s finding of no anticipation 

of claims 55 and 56 along with the Board’s refusal to consider Kingston’s arguments addressing claim 57 in its supplemental briefing. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

I

We first address the Board’s finding of no anticipation 

of claims 55 and 56. “A patent claim is invalid as anticipated only if each and every element of the claim is expressly or inherently disclosed in a single prior art 

reference.” Guangdong Alison Hi-Tech Co. v. Int’l Trade 

Comm’n, 936 F.3d 1353, 1363 (Fed. Cir. 2019) (first citing 

35 U.S.C. § 102 (2006);3 then citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008)). 

Anticipation is a question of fact that we review for substantial evidence. Blue Calypso, LLC v. Groupon, Inc., 

815 F.3d 1331, 1341 (Fed. Cir. 2016) (citing Kennametal, 

Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 

(Fed. Cir. 2015)). For the reasons that follow, we conclude 

3 Because the ’135 patent does not contain any claim 

with an effective filing date on or after March 16, 2013, the 

applicable version of 35 U.S.C. § 102 is the one preceding 

the changes made by the America Invents Act. See

Leahy-Smith America Invents Act, Pub. L. No. 112-29 

§ 3(n), 125 Stat. 284, 293 (2011).

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that the Board’s findings as to claims 55 and 56 are supported by substantial evidence, and accordingly, we affirm.

Claim 55 recites, in relevant part, “receiving a request 

from the host computing device for information regarding 

the type of the modular device,” and “providing the type of 

the target module to the host computing device in response 

to the request.” ’135 patent col. 26 ll. 19–22. Claim 56 depends from claim 55 and therefore includes the same “receiving” and “providing” limitations.

In its petition, Kingston identified certain passages of 

Jones as disclosing the “receiving” and “providing” limitations. In particular, Kingston pointed to Jones’s disclosure 

that, “[t]o implement the PCMCIA interface standard,” its 

secure memory card “stores information enabling the host 

computer to automatically identify the particular PCMCIA 

card as soon as the card and host are connected.” Jones

col. 5 ll. 24–29 (emphasis added). The Board was not persuaded by this passage because, in its view, “automatically 

identify” is not specific enough to disclose the separate “receiving” and “providing” steps of claim 55. Indeed, the 

Board noted that Jones’s reference to “automatic” identification actually suggests that Jones does not require any

request from the host computer prior to the identification 

of the PCMCIA card.

In support of its supplemental briefing for claims 55

and 56, Kingston submitted excerpts from two PCMCIA 

standard specifications. Before the Board, Kingston contended that this additional evidence established that the

“automatic” identification of Jones incorporates functions 

from the PCMCIA standard that satisfy the “receiving” and 

“providing” limitations of claims 55 and 56. In particular, 

Kingston pointed to the GetTupleData and GetConfigurationInfo functions as implementing the automatic identification described in Jones.

The Board was not persuaded by the additional evidence submitted by Kingston. Although Jones expressly 

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references the “PC Card Standard Specification, Release 2.01, published in November, 1992,” Jones col. 5

ll. 22–23, the Board noted that Jones does not incorporate 

that specification by reference. And even assuming that

Jones incorporates the identified specification, the Board 

noted that the functions relied on by Kingston are described in a different specification, the PCMCIA Card Services Specification, Release 2.0.

Finding no express disclosure in Jones, the Board 

turned to inherent disclosure. The Board found that Jones 

also fails to inherently disclose the “receiving” and “providing” limitations through its general references to the 

PCMCIA standard. Specifically, the Board was unpersuaded that a person of ordinary skill in the art would have

understood the automatic identification of Jones to require 

use of the GetTupleData and GetConfigurationInfo functions—not least because Jones makes no reference to the 

PCMCIA specification that describes those functions. Even 

assuming that an ordinarily skilled artisan would have understood Jones’s “automatic” identification to reference 

those functions, the Board further reasoned that the specification identified by Kingston provides no indication that 

the functions are mandated by the PCMCIA standard. Indeed, the passage that Kingston cited for the GetTupleData function explains that 

Card Services clients may need to process a 

PC Card’s Card Information Structure (CIS) to determine if and how they will interact with a card 

detected in a socket. (Some clients may receive all 

the information they require from the 

CARD_INSERTION event).

J.A. 1623 (emphases added).

On this record, we cannot say that the Board’s finding

of no anticipation is unsupported by substantial evidence. 

Kingston bore the burden of proof on this issue, and there 

are numerous material flaws in the evidence that Kingston 

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presented. The Board reasonably found that Jones itself 

does not expressly disclose the limitations at issue through 

its automatic identification feature, and further that Jones 

does not incorporate by reference any PCMCIA specification, much less the ones proffered by Kingston. The Board 

also reasonably declined to find inherent anticipation here, 

where Kingston’s theory of invalidity relies on multiple inferential leaps. In particular, Kingston’s theory requires 

an inference that an ordinarily skilled artisan would have 

understood Jones’s general reference to the PCMCIA 

standard to necessarily disclose the use of the GetTupleData and GetConfigurationInfo functions—the use of 

which, based on the official descriptions provided by Kingston, does not appear to be a requirement of the PCMCIA 

standard. See Alison, 936 F.3d at 1364 (“An element may 

be inherently disclosed only if it ‘is “necessarily present,”

not merely probably or possibly present, in the prior art.’”

(quoting Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380 

(Fed. Cir. 2002))).

We have considered the other arguments advanced by 

Kingston—including that Jones must disclose the limitations at issue because it discloses the initial communication at the same level of detail as the ’135 patent; that the 

Board’s application of inherency was too strict; and that the 

Board ignored key evidence and arguments from a parallel

district court litigation—but we discern no reversible error 

in the Board’s analysis. We therefore affirm the Board’s 

determination as to claims 55 and 56.

II

We next address the Board’s finding of no anticipation 

of claim 57. Kingston specifically challenges the Board’s 

rejection of its supplemental briefing for improperly presenting a new theory of invalidity for claim 57. We review 

the Board’s decision not to consider a new argument for an 

abuse of discretion. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 

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2016). For the reasons that follow, we hold that the Board 

abused its discretion when it declined to consider the arguments addressing claim 57 in Kingston’s supplemental 

briefing. We therefore vacate the Board’s finding of no anticipation of claim 57 and remand to the Board for further 

consideration.

Claim 57 recites, in relevant part, “performing one or 

more security operations and the defined interaction on the 

exchanged data.” ’135 patent col. 26 ll. 45–46 (emphasis 

added). In its petition, Kingston identified the “defined interaction” in Jones as “the transfer of data between the 

host computer 110 and the data storage 150.” J.A. 1825–

26 (citing Jones col. 11 ll. 15–20).4

In its supplemental briefing, Kingston argued that 

SPEX Technologies, Inc., the patent owner, had taken a position regarding claim 57 in the IPR that was “directly contrary” its position on infringement in a parallel district 

court litigation. J.A. 1017. Kingston specifically pointed to 

the testimony of SPEX’s litigation expert, who had purportedly identified data storage as the “defined interaction” in 

the accused devices. In the course of doing so, Kingston 

characterized its own argument in the petition as having 

established that “Jones allow[s] for the transfer and storage of data.” J.A. 1016 (emphasis added) (citing J.A. 1824–

26); see also J.A. 1017 (“Spex cannot argue that claim limitations can be met by transfer and storage of data for infringement purposes, then deny that transfer or storage of 

data is sufficient to anticipate these elements.”).

In its final written decision, the Board rejected Kingston’s supplemental arguments addressing claim 57 for

4 Kingston similarly identified the “defined interaction” in the ’135 patent as “the exchange of data between 

the host and the target module (memory).” J.A. 1824 (citing ’135 patent col. 20 ll. 28–36).

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improperly presenting a new theory of invalidity outside of 

the scope of the petition. The Board explained that Kingston’s argument in the petition identified the “defined interaction” in Jones as the transfer of data, not the storage

of data. According to the Board, “the only mention of the 

word ‘storage’ . . . in the Petition is a parenthetical statement identifying the physical components between which 

the ‘transfer of data,’ alleged in the Petition to be the recited ‘defined interaction,’ allegedly takes place.” Decision, 

2018 WL 4773543, at *12 (citing J.A. 1825–26). The Board

thus concluded that Kingston’s supplemental briefing on 

claim 57 constituted an “impermissible new argument”

that the Board would not consider—regardless of any inconsistent positions that SPEX may have taken in the parallel litigation. Id.

On appeal, Kingston admits that it did not use the 

words “data storage” in its petition. But Kingston insists 

that its supplemental argument was proper because it

merely clarified Kingston’s original theory of invalidity for 

claim 57 in response to criticism from the Board and inconsistent litigation positions taken by SPEX.

We agree with Kingston. Although the Board “‘has 

broad discretion to regulate the presentation of evidence,’

that discretion is not without limits.” Altaire Pharm., Inc. 

v. Paragon Bioteck, Inc., 889 F.3d 1274, 1285 (Fed. Cir. 

2018) (first quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 

1064, 1081 (Fed. Cir. 2015); then citing Ultratec, Inc. 

v. CaptionCall, LLC, 872 F.3d 1267, 1274 (Fed. Cir. 2017)), 

remand order modified by stipulation, 738 F. App’x 1017

(Fed. Cir. 2018). We acknowledge that the Board’s rules 

prohibit a petitioner from submitting new evidence or new

argument in reply that the petitioner could have presented 

earlier. See, e.g., 37 C.F.R. § 42.23(b). Indeed, we have repeatedly endorsed that proposition. See, e.g., Henny Penny 

Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 

2019) (affirming Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would 

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have been obvious); Intelligent Bio-Sys., 821 F.3d at 1369–

70 (affirming Board’s rejection of a reply argument presenting an “entirely new rationale” for motivation to combine). Yet we have also explained that “[p]arties are not 

barred from elaborating on their arguments on issues previously raised,” Chamberlain Grp., Inc. v. One World 

Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (citing Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 

1323, 1347 (Fed. Cir. 2001)), and that a reply argument is 

proper if it “cites no new evidence and merely expands on 

a previously argued rationale,” Ericsson Inc. v. Intellectual 

Ventures I LLC, 901 F.3d 1374, 1381 (Fed. Cir. 2018). 

Here, we conclude that Kingston did not improperly introduce new issues or new evidence relating to claim 57 in 

its supplemental briefing. Instead, Kingston’s supplemental briefing merely elaborates upon its original argument in order to clarify that the identified transfer of data

in Jones incorporates the act of storing that data. Kingston 

did not identify or discuss any new theory based on Jones 

in its supplemental briefing, citing instead to the corresponding pages of its petition. See J.A. 1016–17 (citing 

J.A. 1824–26).5 Kingston’s petition characterizes the defined interaction in Jones as “the transfer of data between

the host computer . . . and the data storage.” J.A. 1825–26

(emphases added). As Kingston points out, in common parlance “a memory module is storage.” Reply at 24. And at 

oral argument before this court, counsel for SPEX conceded

that the act of transferring data from a host computer to 

memory is normally understood to include the act of storing

that data. See Oral Arg. at 28:28–28:41, http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2019-1256.mp3. 

5 The only new evidence offered by Kingston relating 

to claim 57—i.e., SPEX’s arguments in district court—was 

previously unavailable because those arguments were 

made after the petition was filed.

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Indeed, counsel for SPEX could not articulate any act beyond storage that would normally take place when data is 

transferred from a host computer to memory. See id. 

at 28:00–28:28.

On this record, Kingston’s supplemental briefing on 

claim 57 is properly characterized as a “clarification of its 

prior position in response to [others’] arguments,” as in

Chamberlain, 944 F.3d at 925, not “an entirely new rationale” worthy of being excluded, as in Intelligent Bio-Systems, 821 F.3d at 1370. To hold otherwise would endorse 

an overly formalistic approach that would unduly inhibit a 

petitioner from responding to criticisms of issues that it 

properly presented in the petition. Accordingly, we vacate 

and remand for the Board to consider Kingston’s arguments addressing claim 57 in its supplemental briefing.

CONCLUSION

We have considered the parties’ other arguments, and 

we do not find them persuasive. For the foregoing reasons, 

we affirm the Board’s finding of no anticipation for 

claims 55 and 56, vacate the Board’s finding of no anticipation for claim 57, and remand to the Board to consider 

Kingston’s supplemental briefing on claim 57.

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs. 

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