`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Attorney Docket: UKY-778IPR
`
`
`Inter partes Review Case No. IPR2015-01440
`
`Inter partes Review of: U.S. Patent No. 7,706,778
`
`Issued: April 27, 2010
`
`To: Peter R. Lowe
`
`For: System and Method for Remotely Assigning and Revoking Access
`Credentials Using a Near Field Communication Equipped Mobile Phone
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`USPN 7,706,778
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`Steven M. Bauer, Reg. No. 31,481
`Joseph A. Capraro, Jr., Reg. No. 36,471
`Proskauer Rose LLP
`One International Place
`Boston, MA 02110
`Tel: (617) 526-9600
`
`
`
`

`

`
`Table of Contents
`I. Mandatory Notices Under 37 C.F.R. § 42.8(a) .............................................. 1 
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) .................................. 1 
`B. Related Matters under 37 C.F.R. § 42.8(b)(2) ........................................... 1 
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ........................ 1 
`D. Service Information under 37 C.F.R. § 42.8(b)(4) ..................................... 2 
`E. Proof of Service on the Patent Owner ........................................................ 2 
`F.  Power of Attorney ...................................................................................... 2 
`II. Payment of Fees Under 37 C.F.R. § 42.103 .................................................... 2 
`III. Requirements for Inter Partes Review under 37 C.F.R. § 42.104 ................ 2 
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ................................... 2 
`B. Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ....................................... 3 
`C. Threshold Requirement for Inter Partes Review Under 37 C.F.R.
`§ 42.108(c) .................................................................................. 3 
`IV. Overview of the ’778 Patent ............................................................................ 4 
`A. Brief Description of the Patent ................................................................... 4 
`B. Summary of the Prosecution History of the ’778 Patent ............................ 4 
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................ 5 
`D. Summary of Prior Art References Relied Upon ......................................... 5 
`V. Level of Ordinary Skill in the Art .................................................................. 7 
`VI. Claims 1-42 of the ’778 Patent are Unpatentable ......................................... 8 
`A. Claims 1, 3-12, 14-16, and 20-42 are anticipated by Libin; claims
`2, 13, and 17-19 are rendered obvious by Libin in view of
`Nielsen ........................................................................................ 8 
`B. Claims 1-8, 9-25, and 27-42 are rendered obvious by Nielsen in
`view of Kärkäs. ......................................................................... 35 
`VII. Conclusion ....................................................................................................... 60 
`
`
`
`
`
`
`
`

`

`
`
`
`Table of Exhibits
`
`
`Exhibit
`
`Description
`
`1003
`
`1001 USPN 7,706,778 (“’778 patent”)
`(patent under Inter Partes Review)
`1002 Declaration of Bruce Schneier in
`Support of Request for Inter Partes
`Review of the ’778 Patent
`Joint Claim Construction and
`Prehearing Statement Pursuant to Local
`Patent Rule 4-3, Ex. A, Assa Abloy AB
`v. Spectrum Brands, Inc., Civil Action
`No. 14-cv-00947-CJC (C.D. CA)
`1004 USPN 7,205,882 to Libin (“Libin”)
`1005 USPN 7,012,503 by Nielsen
`(“Nielsen”)
`1006 USPN 7,873,989 by Kärkäs et al.
`(“Kärkäs”)
`
`Publication
`Date or Filing
`Date
`April 3, 2006
`
`Type of
`Prior Art
`(35 U.S.C.)
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`Nov. 10, 2004
`Dec. 5, 2002
`
`102(e)
`102(a)
`
`Mar. 14, 2002
`
`102(a)
`
`
`
`iii
`
`

`

`
`
`Through counsel, real party-in-interest UniKey Technologies, Inc.
`
`(“Petitioner” or “UniKey”) hereby petitions for Inter Partes Review (“IPR”) under
`
`35 U.S.C. §§ 311-319 and 37 C.F.R. § 42 of claims 1-42 of U.S. Patent 7,706,778
`
`(Ex. 1001) (“’778 patent”). This Petition shows that there is a reasonable
`
`likelihood that Petitioner will prevail in establishing that at least one of these
`
`claims is unpatentable and should be canceled.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Petitioner, UniKey Technologies, Inc., is the real party-in-interest for the
`
`instant petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The following matters would affect, or may be affected, by a decision in this
`
`proceeding: Assa Abloy AB v. Spectrum Brands, Inc., Civil Action No. 14-cv-
`
`00947-CJC, filed on June 19, 2014 in the U.S. District Court for the Central
`
`District of California (“District Court Action”); U.S. Patent No. 8150374; U.S.
`
`Application Nos. 13/404915, 14/674085, 14/674094, 14/674109, 14/674125,
`
`14/674167, 14/674175; and IPR2015-01441.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`Steven M. Bauer
`Reg. No. 31,481
`Proskauer Rose LLP
`
`BACK-UP COUNSEL
`Joseph A. Capraro, Jr.
`Reg. No. 36,471
`Proskauer Rose LLP
`
`
`
`
`
`

`

`
`
`One International Place
`One International Place
`Boston, MA 02110
`Boston, MA 02110
`Tel: (617) 526-9800
`Tel: (617) 526-9700
`Fax: (617) 526-9899
`Fax: (617) 526-9899
`jcapraro@proskauer.com
`PTABMattersBoston@proskauer.com
`D.
`Service Information under 37 C.F.R. § 42.8(b)(4)
`UniKey may be served at the lead counsel address provided in Section I.C of
`
`this Petition and consents to electronic service at the email address indicated.
`
`Proof of Service on the Patent Owner
`
`E.
`As identified in the attached Certificate of Service, a copy of the present
`
`Petition, in its entirety, including all exhibits and a power of attorney, is being
`
`served by EXPRESS MAIL® to Sheridan Ross PC, 1560 Broadway, Suite 1200,
`
`Denver, CO 80202.
`
`F.
`
`Power of Attorney
`
`A power of attorney pursuant to 37 C.F.R. § 42.10(b) is filed herewith.
`
`II.
`
`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned paid the fee set forth in 37C.F.R. § 42.15(a), as required by
`
`37 C.F.R. § 42.103, from Deposit Account No. 50-3081. The undersigned further
`
`authorizes the Director to charge any additional fees that may be due in connection
`
`with this matter to Deposit Account 50-3081.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’778 patent is eligible for Inter Partes Review
`
`and further certifies that Petitioner is not barred or otherwise estopped from
`2
`
`
`
`

`

`
`challenging the identified claims on the grounds identified within the present
`
`petition.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner requests Inter Partes Review of claims 1-42 of the ’778 patent on
`
`the grounds set forth in the table below and requests that each of the claims be
`
`found unpatentable. An explanation of how claims 1-42 are unpatentable under the
`
`statutory grounds identified below—including the identification of where each
`
`element is found in the prior art patents or publications and the relevance of the
`
`prior art reference—is provided in the form of analysis of each claim element.
`
`Additional explanation and support for each ground of rejection is set forth in the
`
`Declaration of Bruce Schneier. (See Ex. 1002.)
`
`Ground ’778 Patent Claims
`A(1)
`1, 3-12, 14-16, and 20-42
`A(2)
`2, 13, and 17-19
`B
`1-8, 9-25, and 27-42
`
`
`
`Basis for Rejection
`Libin (§102)
`Libin in view of Nielsen (§103)
`Nielsen in view of Kärkäs (§103)
`
`C. Threshold Requirement for Inter Partes Review Under 37 C.F.R.
`§ 42.108(c)
`
`An IPR should be instituted when there is a “reasonable likelihood that the
`
`requester will prevail with respect to at least one of the claims challenged.” 35
`
`U.S.C. § 314(a). This Petition meets the threshold. In particular, as set forth
`
`herein, each limitation of the challenged claims is disclosed or suggested by the
`
`prior art references. Moreover, where applicable, this Petition sets forth reasons
`
`
`
`3
`
`

`

`
`why a person of ordinary skill in the art would be motivated to combine the
`
`references.
`
`IV. OVERVIEW OF THE ’778 PATENT
`A. Brief Description of the Patent
`The ’778 patent generally relates to secure access systems in which
`
`credential data can be stored on a mobile device. (Ex. 1001, Abstract.) For
`
`example, the ’778 patent discusses an access control system in which readers
`
`control access to assets, such as a reader controlling a door that permits access to a
`
`secure room. (See, e.g., Ex. 1001, 3:25-32.) The mobile device can communicate
`
`with the reader to determine if the credential data on the mobile device permits
`
`access to the asset associated with the reader. (See, e.g., Ex. 1001, 3:29-32.) The
`
`independent claims of the ’778 patent are directed to basic approaches to updating
`
`this credential data on mobile devices. (See, e.g., Ex. 1001, claims 1, 16, and 33.)
`
`The dependent claims of the ’778 patent are further directed to the content of the
`
`credential data, how the updates are communicated to the mobile device, what the
`
`mobile device does in response to the update, or interactions between the mobile
`
`device and readers. (See, e.g., Ex. 1001, claims 2-15, 17-32, and 34-42).
`
`Summary of the Prosecution History of the ’778 Patent
`
`B.
`The ’778 patent issued from U.S. Patent Application No. 11/397,542 (“’542
`
`application”), filed on April 3, 2006. The ’542 application purports to be entitled
`
`
`
`4
`
`

`

`
`to the filing date of U.S. Provisional Patent Application No. 60/668,828, filed on
`
`April 5, 2005.
`
`While the Patent Office discussed several pieces of prior art during
`
`prosecution, it did not discuss the pieces of prior art discussed below, nor were
`
`they cited. Thus, the Examiner did not consider any of these references.
`
`C. Claim Construction Under 37 C.F.R. § 42.104(b)(3)
`In the District Court Action, the patent owner has taken the position that the
`
`term “self-authenticating data” should be construed to mean “data that can assist
`
`the mobile device in determining if it is eligible to gain access to a particular
`
`asset.”1 (Ex. 1003, at A16-A17.) As explained further below, the prior art relied
`
`upon in this petition meets patent owner’s proposed construction of this term in the
`
`District Court Action.
`
`Summary of Prior Art References Relied Upon
`
`D.
`Petitioner relies upon the following prior art references, for which full
`
`citations are provided in the Table of Exhibits above:
`
`1.
`
`Libin
`
`
`1 Any claim constructions discussed in this IPR do not reflect Petitioner’s view as
`
`to the proper constructions for litigation before a district court or any other
`
`proceeding, and Petitioner expressly reserves the right to present different claim
`
`constructions during litigation.
`
`
`
`5
`
`

`

`
`
`Libin (Ex. 1004) discloses a security system in which access codes are
`
`provided to a wireless device, and then the wireless device can transmit the access
`
`codes to a controller that actuates the security system (e.g., unlocks a door). (See,
`
`e.g., Ex. 1004, Abstract; see also FIG. 2). Figure 3 of Libin illustrates a computer
`
`workstation 42 used to transmit data and/or programming information updates (e.g.,
`
`access codes) to a cell phone 32. (See, e.g., Ex. 1004, 5:38-48.)
`
`
`
`The computer workstation 42 contains a first table 202 that has a plurality of
`
`entries corresponding to cell phone users (e.g., cell phone 32). (See, e.g., Ex. 1004,
`
`12:19-25, Fig. 11.) Each entry includes information for identifying the user and
`
`information needed to program the cell phone. (See, e.g., Ex. 1004, 12:19-25.)
`
`The generation module 206 of the computer workstation 42 receives data from the
`
`first table 204, along with other information, and then uses network 44 to provide
`
`appropriate programming information and access codes to the cell phone 32. (See,
`
`e.g., Ex. 1004, 12:33-50.)
`
`Nielsen
`
`2.
`Nielsen discloses “an access control system” for “managing a predetermined
`
`access right to a location.” (See, e.g., Ex. 1005, Abstract.) Similar to Libin,
`
`Nielsen describes programming “electronic key devices” with access codes, which
`6
`
`
`
`

`

`
`the “electronic key device” can transmit to a “lock control unit” for access. For
`
`example, figure 2b of Nielsen illustrates such a system including an “electronic key
`
`device 201, for example a mobile phone,” “lock control unit 221,” and “an access
`
`code management system 211.” (See, e.g., Ex. 1005, 11:46-12:20.)
`
`
`
`Nielsen discloses “access code management system 211 generates and administers
`
`the access codes.” (See, e.g., Ex. 1005, 12:27-28.) For example, “access code
`
`management system 211 transmits access codes to the electronic key device 201
`
`and/or the lock control unit 221” automatically. (See, e.g., Ex. 1005, 12:22-42.)
`
`Kärkäs
`
`3.
`Kärkäs discloses a security system similar to that in Libin and Nielsen.
`
`Kärkäs discloses “[t]he access device also includes wireless communication
`
`means . . . for providing the key and validity information to [another] party.” (See,
`
`e.g., Ex. 1006, Abstract.) According to Kärkäs, “if the key and validity
`
`information are determined by the other party to be valid access is provided.” (See,
`
`e.g., Ex. 1006, Abstract.)
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`7
`
`
`
`

`

`
`
`In light of the specification, the references of record, and other available
`
`evidence, a person of ordinary skill in the relevant field at the alleged time of
`
`invention of the ’778 patent would have an undergraduate degree in computer
`
`science or electrical engineering and two to three years of experience in the field,
`
`or an equivalent combination of education and experience. (See Ex. 1002, ¶ 31.)
`
`VI. CLAIMS 1-42 OF THE ’778 PATENT ARE UNPATENTABLE
`A detailed explanation of the relevance and manner of applying the prior art
`
`references to Claims 1-42 of the ’778 patent is provided below.
`
`A. Claims 1, 3-12, 14-16, and 20-42 are anticipated by Libin; claims 2,
`13, and 17-19 are rendered obvious by Libin in view of Nielsen
`
`Libin discloses each element of claims 1, 3-12, 14-16, and 20-42. Libin in
`
`view of Nielsen renders obvious each element of claims 2, 13, and 17-19. There is
`
`motivation to combine Libin and Nielsen. As noted, Libin discloses a security
`
`system in which access codes are provided to a wireless device, and the wireless
`
`device transmits the access codes to a controller that actuates the security system.
`
`(See, e.g., Ex. 1004, Abstract; see also FIG. 2.) Nielsen similarly discloses a
`
`system where an electronic key device is used to access a location by transmitting
`
`an access code to the lock control unit. (See, e.g., Ex. 1005, Abstract.) Because
`
`the systems of Libin and Nielsen have similar structure and provide similar
`
`functionality (e.g., allowing an electronic device to transmit codes to a lock
`
`controller in order to gain access), one of skill in the art would be readily
`
`motivated to incorporate Nielsen’s methods of distributing access codes and
`8
`
`
`
`

`

`
`reporting activity into the system of Libin to yield the predictable variations in
`
`such distribution and reporting within the security systems. (See, e.g., Ex. 1002, ¶¶
`
`53-56.)
`
`1.
`
`Claim 1
`
`a.
`
`[1a.] A method of remotely maintaining a secure
`access system, comprising:
`
`Libin discloses a secure access system: “a security system 30 includes the
`
`doors 24, 24', 24'' and the controllers 26, 26', 26'' . . . The system 30 also includes a
`
`cell phone 32 that may transmit access codes to one or more of the controllers 26,
`
`26', 26'' to cause a corresponding one of the doors 24, 24', 24'' to open and allow
`
`access to a restricted area.” (See, e.g., Ex. 1004, 4:48-54.) Libin discloses
`
`maintaining the secure access system by programming the cell phone 32 with the
`
`access codes used for gaining access to the restricted areas. (See, e.g., Ex. 1004,
`
`4:48-57, 5:38-54, FIGS. 2-3.) (See, e.g., Ex. 1002, ¶ 57.)
`
`b.
`
`[1b.] receiving, at a secure access system controller, a
`credential update for at least one user of the secure
`access system;
`
`Libin discloses a secure access controller system, the workstation 42, that
`
`controls programming the cell phone 32. The workstation 42 stores a first table
`
`202 that lists the users of the security system and a second table 204 that contains
`
`the access codes for the security system. (See, e.g., Ex. 1004, 12:32-37, FIG. 11.)
`
`The workstation 42 includes a generation module 206 that receives a credential
`
`update, authorization information, that “indicates to the generation module which
`9
`
`
`
`

`

`
`of the users from the first table 202 is to have his cell phone programmed with
`
`which access codes from the second table 204.” (See, e.g., Ex. 1004, 5:63-6:17,
`
`FIG. 4.) The updates may be periodic, causing new access codes to be sent to the
`
`cell phone 32. (See, e.g., Ex. 1004, 6:67-7:3 (“as long as a user who has
`
`possession of the cell phone 32 is authorized for a particular type of access, new
`
`access codes may be periodically sent to the cell phone 32 as appropriate.”)) (See,
`
`e.g., Ex. 1002, ¶¶ 58-60.)
`
`c.
`
`[1c.] in response to receiving the credential update,
`said controller automatically initiating a system
`update process, the system update process
`comprising:
`
`Libin discloses that in response to receiving the authorization information
`
`206, the workstation 42 automatically initiates a system update process when
`
`“[t]he generation module 206 interfaces with the network 44 to provide appropriate
`
`programming information/access codes to the cell phone 32.” (See, e.g., Ex. 1004,
`
`12:47-50) Libin discloses that the update process is automatic because, after
`
`receiving the authorization information, the generation module 206 transmits the
`
`programming information/access codes to cell phone 32 without requiring any
`
`party to request transmission of the programming information/access codes. (See,
`
`e.g., Ex. 1002, ¶¶ 61-62.)
`
`d.
`
`[1d.] generating a message comprising information
`representing the credential update;
`
`
`
`10
`
`

`

`
`
`Libin discloses generating a message comprising information representing
`
`the credential update, the programming information/access codes, that represents
`
`the access granted by the authorization information: “The generation module 206
`
`also receives authorization information data that indicates to the generation
`
`module which of the users from the first table 202 is to have his cell phone
`
`programmed with which access codes from the second table 204. . . . The
`
`generation module 206 interfaces with the network 44 to provide appropriate
`
`programming information/access codes to the cell phone 32.” (See, e.g., Ex. 1002,
`
`12:33-50 (emphasis added).) (See, e.g., Ex. 1002, ¶¶ 63.)
`
`e.
`
`[1e.] determining at least one target for said message,
`wherein said at least one target comprises at least one
`mobile device associated with the at least one user;
`and
`
`Libin discloses determining at least one target, a cell phone, for the
`
`programming information/access codes based on the authorization information:
`
`“The generation module 206 also receives authorization information data that
`
`indicates to the generation module which of the users from the first table 202 is to
`
`have his cell phone programmed with which access codes from the second table
`
`204. . . . The generation module 206 interfaces with the network 44 to provide
`
`appropriate programming information/access codes to the cell phone 32.” (See,
`
`e.g., Ex. 1002, 12:33-50 (emphasis added).) (See, e.g., Ex. 1002, ¶ 64.)
`
`f.
`
`[1f.] transmitting said message to said at least one
`target; and
`
`
`
`11
`
`

`

`
`
`Libin discloses transmitting the programming information/access codes to
`
`the target cell phone: “The generation module 206 interfaces with the network 44
`
`to provide appropriate programming information/access codes to the cell phone 32.”
`
`(See, e.g., Ex. 1002, 12:48-50.) (See, e.g., Ex. 1002, ¶ 65.)
`
`g.
`
`[1g.] wherein said at least one mobile device has a first
`set of credential data stored thereon,
`
`Libin discloses the cell phone stores, e.g., access codes in the access code
`
`data element 62. (See, e.g., Ex. 1004, 6:30-41, FIG. 5.) As noted above with
`
`respect to claim element [1a.], the access codes are the credentials provided to
`
`controllers 26, 26', 26'' to gain access to restricted areas. Libin further discloses
`
`cell phone 32 receiving new access codes while storing other access codes. (See,
`
`e.g., Ex. 1004, 6:67-7:3 (“as long as a user who has possession of the cell phone 32
`
`is authorized for a particular type of access, new access codes may be periodically
`
`sent to the cell phone 32 as appropriate.”)) (See, ex. 1002, ¶ 66-67.)
`
`h.
`
`[1h.] wherein upon receiving said message from said
`controller, said first set of credential data is changed
`to a second different set of credential data,
`
`Libin discloses that upon reception, “the access codes are stored in the cell
`
`phone 32 in, for example, the access code data element 62.” (See, e.g., Ex. 1004,
`
`11:24-29, FIG. 10.) By storing the new access codes with those access codes
`
`already stored in the access code data element 62, the access codes stored in access
`
`code data element 62 become a different set of credential data. (See, e.g., Ex. 1002,
`
`¶ 68.)
`
`
`
`12
`
`

`

`
`
`i.
`
`[1i.] wherein said message is transmitted to said at
`least one mobile device without receiving a request for
`said message from said at least one user,
`
`Libin discloses that after receiving the authorization information, the
`
`generation module 206 transmits the programming information/access codes to the
`
`cell phone. (See, e.g., Ex. 1004, 12:32-50, FIG. 11.) Libin describes that the
`
`generation module 206 transmits the programming information/access codes to cell
`
`phone 32 without requiring any party request transmission of the programming
`
`information/access codes. (See, e.g., Ex. 1002, ¶ 69.)
`
`j.
`
`[1j.] wherein said at least one mobile device is a smart
`mobile device,
`
`Libin discloses at least one mobile device is a smart mobile device, e.g., a
`
`cell phone. (See, e.g., Ex. 1004, 4:48-57, FIG. 2.) (See, e.g., Ex. 1002, ¶ 70.)
`
`k.
`
`[1k.] wherein said first set of credential data
`comprises self-authenticating data,
`
`Libin discloses two forms of “self-authenticating data,” i.e., data that can
`
`assist the cell phone 32 in determining if it is eligible to gain access to a particular
`
`asset (e.g., the correct access codes for a controller 26). First, Libin discloses the
`
`cell phone 32 “determine[s] which of the access codes from the access codes data
`
`element 62 should be transmitted” to the controller. (See, e.g., Ex. 1004, 7:29-8:3,
`
`FIG. 7.) As a part of this process, “it is determined if the reader (e.g., the card
`
`reader associated with the controller 26) has provided location information to the
`
`cell phone 32.” (See, e.g., Ex. 1004, 7:45-47, FIG. 7.) Libin discloses “the
`
`
`
`13
`
`

`

`
`number of possible access codes is reduced based on information from the reader,”
`
`for example “if the reader indicates that the reader is in a particular city, access
`
`codes for other cities are not to be used, and thus are eliminated as possible access
`
`codes to transmit.” (See, e.g., Ex. 1004, 7:52-59, FIG. 7.) Accordingly, Libin
`
`inherently discloses location data, stored on the cell phone 32, that is associated
`
`with the access codes. This location data is compared to the information received
`
`from the reader to determine if the cell phone 32 has a possible access code for the
`
`reader. (See, e.g., Ex. 1004, 7:52-59, FIG. 7.) Accordingly, the location data can
`
`assist the cell phone 32 in determining if it is eligible to gain access to a particular
`
`asset by determining if cell phone 32 has a possible code for a particular controller
`
`26. (See, e.g., Ex. 1002, ¶¶ 71-73)
`
`Second, Libin discloses that access codes can have an associated expiration
`
`data. (See, e.g., 7:20-23 (“[f]or some or all of the access codes in the access code
`
`data element 62, the expiration data 66 may have a corresponding expiration
`
`date”).) Libin further describes cell phone 32 deletes an access code if the access
`
`codes has expired. (See, e.g., Ex. 1004, 9:51-55 (cell phone 32 “determin[es] if the
`
`Ith access code has expired. The test at the step 104 may be fairly straight-forward
`
`and may include, for example, comparing the current date with the expiration date
`
`stored in the expiration data element 66”).) Accordingly, the expiration data can
`
`assist the cell phone 32 in determining if it is eligible to gain access to a particular
`
`
`
`14
`
`

`

`
`asset by determining if the access code for the reader has expired. (See, e.g., Ex.
`
`1002, ¶¶ 71, 74.)
`
`l.
`
`[1l.] wherein said second set of credential data
`comprises different self-authenticating data, and
`
`Libin discloses said second set of credential data comprises different self-
`
`authenticating data by disclosing receiving new programming information/access
`
`codes, as discussed with respect to limitation [1h]. (See, e.g., Ex. 1004, 11:4-33,
`
`FIG. 10.) For example, Libin discloses “new access codes may be periodically
`
`sent to the cell phone 32 as appropriate.” (See, e.g., Ex. 1004, 7:2-3.) As
`
`discussed above with respect to limitation [1k.], the programming
`
`information/access codes constitute self-authenticating data. (See also, e.g., Ex.
`
`1004, 11:61-12:18.) (See, e.g., Ex. 1002, ¶ 75.)
`
`m.
`
`[1m.] wherein said self-authenticating data enables
`said at least one mobile device to make a
`determination of its own access rights with respect to
`an asset.
`
`Libin discloses the location information and/or the expiration data enables
`
`the cell phone 32 to make a determination of its own access rights with respect to
`
`an asset, as discussed above with respect to element [1k]. (See, e.g., Ex. 1002, ¶
`
`76.)
`
`
`
`2.
`
`Claim 2. [2.] The method of claim 1, wherein the system
`update process further comprises transmitting said message
`to at least one of a reader and a database.
`
`15
`
`

`

`
`
`Nielsen discloses transmitting access codes to a reader, the lock control unit:
`
`“transmit[ting] access codes to . . . the lock control unit 221” “automatically,”
`
`rendering this element obvious for the reasons set forth in section VI(A). (See, e.g.,
`
`Ex. 1005, 12:29-33.) (See, e.g., Ex. 1002, ¶¶ 77-78.)
`
`3.
`
`Claim 3. [3.] The method of claim 1, wherein said first set of
`credential data has at least one of a key, password, unique
`ID, encryption scheme, and transmission protocol that is
`different in said second set of credential data.
`
`As discussed above with respect to claim limitation [1h] above, Libin
`
`discloses the first set of credential data is different than the second set of credential
`
`data. (See, e.g., Ex. 1004, 6:64-7:30; 11:4-33, FIG. 10.) Libin discloses the sets of
`
`credential data contain different access codes, which are keys because they are
`
`used by cell phone 32 to verify its authenticity to controllers 26. (See, e.g., Ex.
`
`1004, 6:64-7:30; 8:9-12; 11:4-33, FIG. 10.) (See, e.g., Ex. 1002, ¶ 79.)
`
`4.
`
`Claim 4. [4.] The method of claim 1, further comprising, in
`the event that said at least one mobile device does not receive
`said message and is subsequently presented to a reader,
`determining, by said reader, that said at least one mobile
`device is invalid.
`
`Libin discloses in the event that cell phone 32 does not receive the message
`
`containing new access codes sent periodically, the stored codes will be expired.
`
`(See, e.g., Ex. 1004, 6:64-7:10; 2:59-60 (“The first set of access codes provided to
`
`the wireless device may expire.”).) Libin further discloses that such expired codes
`
`sent to a reader will not be accepted. (See, e.g., Ex. 1004, 1:30-39, 6:64-7:10.)
`
`(See, e.g., Ex. 1002, ¶¶ 80.)
`
`
`
`16
`
`

`

`
`
`5.
`
`Claim 5. [5.] The method of claim 1, wherein said credential
`updates are received at the controller on a periodic basis.
`
`Libin discloses said credential updates are received at the controller on a
`
`periodic basis by disclosing distributing new access code monthly. (See, e.g., Ex.
`
`1004, 11:59-66.) (See, e.g., Ex. 1002, ¶ 81.)
`
`6.
`
`Claim 6
`
`a.
`
`b.
`
`[6a.] The method of claim 1, further comprising:
`
`[6b.] receiving said message at said at least one mobile
`device; and
`
`Libin discloses receiving the programming information/access codes at the
`
`cell phone 32. (See, e.g., Ex. 1004, 11:4-9, FIG. 10 (“. . . chart 150 illustrates steps
`
`performed in connection with receiving new access codes . . .”).) (See, e.g., Ex.
`
`1002, ¶¶ 82.)
`
`c.
`
`[6c.] modifying at least a portion of memory of said at
`least one mobile device according to said updated
`credential information.
`
`Libin discloses cell phone 32 contains a memory including the access code
`
`data element 62 that stores access codes. (See, e.g., Ex. 1004, 6:39-41.) Libin
`
`discloses modifying the access code data element 62 by storing the received access
`
`codes in the access code data element of the cell phone. (See, e.g., Ex. 1004,
`
`11:24-29 (“. . . the access codes are stored in the cell phone 32 in, for example, the
`
`access code data element 62.”).) (See, e.g., Ex. 1002, ¶ 83.)
`
`7.
`
`Claim 7. [7.] The method of claim 6, wherein said modifying
`comprises at least one of disabling and revoking at least a
`portion of said memory.
`17
`
`
`
`

`

`
`
`Libin also discloses disabling a portion of the access code data element 62
`
`by deleting access codes. Libin discloses “examining each of the expiration dates
`
`and, in response to a particular expiration date being prior to a current date, erasing
`
`from the wireless device a particular one of the first set of access codes that
`
`corresponds to the particular expiration date.” (See, e.g., Ex. 1004, 2:3-7) (See
`
`also, e.g., Ex. 1004, 10:1-8.) (See, e.g., Ex. 1002, ¶¶ 84.)
`
`8.
`
`Claim 8. [8.] The method of claim 6, further comprising:
`disabling at least a portion of said memory unless an
`enabling message is received.
`
`As described with respect to claim [7], Libin discloses disabling at least a
`
`portion of said memory by erasing access codes if they are expired. Libin further
`
`discloses that cell phone 32 can receive an enabling message, a message including
`
`a new expiration date. (See, e.g., Ex. 1004, 10:1-4 (“The expiration dates
`
`associated with access codes . . . may be provided separately [from access codes] at
`
`different times.”)) (See also, e.g., Ex. 1004, 9:50-10:8, FIG. 6, FIG. 8.)
`
`Accordingly, Libin discloses erasing access codes if they are expired, unless a new
`
`expiration date is received by the cell phone 32. (See, e.g., Ex. 1002, ¶ 85.)
`
`9.
`
`Claim 9. [9.] The method of claim 1, further comprising de-
`enrolling a user of at least one mobile device from an access
`list, wherein said credential update is generated in response
`to de-enrolling said user from said access list.
`
`Libin discloses de-enrolling a user of at least one mobile device from an
`
`access list by periodically deleting users: “the creation and deletion of special
`
`purpose users may be automated so that, for example, old special purpose users are
`18
`
`
`
`

`

`
`revoked and new special purpose users are created at set periods of time or after
`
`significant events (e.g., after every N times the cell phone 32 is programmed).”
`
`(See, e.g., Ex. 1004, 12:13-18.) In connection with periodically revoking users,
`
`Libin describes a credential update being generated that provides new access
`
`codes: “The frequency that special purpose user codes are changed is a matter of
`
`policy . . .” (See, e.g., Ex. 1004, 11:66-67.) (See, e.g., Ex. 1002, ¶ 86.)
`
`10. Claim 10. [10.] The method of claim 1, wherein said
`message is transmitted over a cellular communication
`network.
`
`Libin discloses transmitting the programming information/access over a
`
`cellular telephone network. (See, e.g., Ex. 1004, 5:38-54, FIG. 3.) (See, e.g., Ex.
`
`1002, ¶ 87.)
`
`11. Claim 11. [11.] The method of claim 1, wherein said
`message is transmitted by at least one of a radio frequency
`signal an