Paper No. 8
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00809
`U.S. Patent No. 9,530,137
`________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`

`

`TABLE OF CONTENTS
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Page
`
`I.
`II.
`
`INTRODUCTION ...........................................................................................1
`OVERVIEW OF THE ’137 PATENT ............................................................4
`A.
`The ’137 Patent Specification ...............................................................4
`B.
`The ’137 Patent Claims .........................................................................7
`C.
`Prosecution History of the ’137 Patent .................................................9
`III. OVERVIEW OF THE ASSERTED PRIOR ART........................................10
`A.
`Jakobsson.............................................................................................10
`B. Maritzen...............................................................................................11
`C.
`Schutzer ...............................................................................................12
`D.
`Niwa ....................................................................................................13
`LEVEL OF ORDINARY SKILL IN THE ART...........................................13
`CLAIM CONSTRUCTION ..........................................................................14
`A.
`“The One Or More Signals” (All Challenged Claims) .......................14
`THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CLAIM IS INVALID BASED ON
`JAKOBSSON IN VIEW OF MARITZEN (GROUND 1)............................17
`A.
`Petitioner Fails To Show Any Disclosure Of Transmitting And
`Processing “The One Or More Signals” (Limitations 1[f], 1[h],
`And 12[f])............................................................................................19
`Petitioner Has Failed To Demonstrate Jakobsson Discloses
`Limitations 1[i] and 12[i] ....................................................................23
`A POSITA Would Not Be Motivated To Combine Jakobsson
`With Maritzen......................................................................................27
`VII. GROUND 3 IS MOOT BECAUSE CLAIMS 8 AND 11 HAVE
`BEEN CANCELLED ....................................................................................32
`VIII. CONCLUSION..............................................................................................33
`
`IV.
`V.
`
`VI.
`
`B.
`
`C.
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Page
`
`CASES
`C&D Zodiac, Inc. v. B/E Aerospace, Inc.,
`Case No. IPR2014-00727 (P.T.A.B. October 29, 2014)...............................23
`Cheese Sys. v. Tetra Pak Cheese & Powder Sys.,
`725 F.3d 1341 (Fed. Cir. 2013) .....................................................................28
`Commvault Systems, Inc. v. Realtime Data LLC,
`Case No. IPR2017-02006 (P.T.A.B. March 29, 2018) .................................23
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016)...................................................................................14
`Google Inc. v. SimpleAir, Inc.,
`|Case CBM2015-00019 (PTAB May 19, 2015)..................................... 12, 32
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................29
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007).......................................................................................28
`Light Guard Systems, Inc. v. Spot Devices, Inc.,
`2012 WL 2131943 (D. Nev. 2012)................................................................15
`Medgraph, Inc. v. Medtronic, Inc.,
`843 F.3d 942 (Fed. Cir. 2016) .......................................................................15
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed.Cir.2005) .......................................................................25
`Square, Inc. v. Cooper,
`IPR2014-0015 (May 15, 2014)......................................................................32
`
`STATUTES
`37 C.F.R. § 42.100 ...................................................................................................14
`
`ii
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`

`

`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Exhibit #
`2001
`
`2002
`
`2003
`
`EXHIBIT TABLE
`
`Description
`Declaration of Markus Jakobsson in Support of Patent
`Owner's Preliminary Response
`
`Curriculum Vitae of Markus Jakobsson
`
`USR Disclaimer Filed July 6, 2018
`
`iii
`
`

`

`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`I.
`
`INTRODUCTION
`
`In just one month, Petitioner Apple Inc. (“Petitioner”) has flooded the Board
`
`with eleven petitions challenging four related patents assigned to Universal Secure
`
`Registry LLC (“Patent Owner”). See IPR2018-00808, IPR2018-00809, IPR2018-
`
`00810,
`
`IPR2018-00811,
`
`IPR2018-00812,
`
`IPR2018-00813, CBM2018-00022,
`
`CBM2018-00023, CBM2018-00024, CBM2018-00025, CBM2018-00026. The
`
`present Petition (Paper 1, IPR2018-00809) is one of three petitions challenging
`
`claims 1, 2, 5-7, 9, 10 and 12 of U.S. Patent No. 9,530,137 (“the ’137 Petition”).
`
`See also IPR2018-00808, CBM2018-00022. Petitioner is unable to muster any
`
`anticipation ground against any claim of the ’137 patent.
`
`Instead, each of its
`
`petitions puts forth hindsight combinations that selectively cull components from
`
`prior art references in an attempt to fit the parameters of the patented invention. In
`
`the present case, the Petition attempts to combine “Jakobsson in view of Maritzen”
`
`to invalidate the independent claims—Claims 1 and 12—of the ’137 patent.
`
`Like its other petitions attacking the ’137 patent, this Petition fails for
`
`several independent reasons. First, limitations 1[f], 1[h], and 12[f]1 require a first
`
`device transmit “the one or more signals” to a second device for processing. The
`
`’137 patent makes clear that three separate, and distinct, types of information must
`
`1 Patent Owner’s Preliminary Response adopts the limitation numbering format
`(e.g., “limitation 1[a]) used by Petitioner in its Petition.
`
`1
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`

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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`be transmitted and processed in “the one or more signals, specifically:” (1) first
`
`authentication information, (2) an indicator of biometric authentication of the user
`
`of the first device, and (3) a time varying value. While Petitioner asserts that
`
`Jakobsson discloses these limitations by disclosing an “authentication code,” it
`
`makes no attempt to show how Jakobsson’s authentication code transmits to the
`
`second device for processing the three separate, and distinct types of information
`
`that must be included in “the one or more signals.” The Board should reject this
`
`Petition for such failure of proof.
`
`Second, Petitioner has failed to demonstrate that Jakobsson discloses
`
`limitation 1[i] and corresponding limitation 12[i]. Specifically, these limitations
`
`require enabling a transaction based on, amongst other things, the following two
`
`types of information: (1) “the indication of biometric authentication” and (2) “at
`
`least a portion of the first authentication information.” However, the Petition
`
`points to the same item, Jakobsson’s authentication code, for this limitation. But,
`
`this single code cannot be both items. Also, it cannot be an indicator of biometric
`
`authentication because it does not
`
`indicate that biometric authentication has
`
`occurred.
`
`Indeed, Jakobsson discloses that its authentication code may render it
`
`such that “the [authentication code] does not allow one to reconstruct the input
`
`provided.” See, e.g., Ex. 1113, Jakobsson at [0071].
`
`In other words, from the
`
`authentication code it cannot be said that there was authentication of biometric
`
`2
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`

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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`information. Moreover, Jakobsson does not disclose that the authentication code
`
`implicitly indicates biometric authentication has occurred. Thus, the authentication
`
`code cannot be an indicator of biometric authentication.
`
`Consistent with
`
`Jakobsson’s disclosure, Patent Owner submits the declaration of an inventor of the
`
`reference, Markus Jakobsson, who confirms that one skilled in the art, including
`
`himself, would not consider the authentication code an indicator of biometric
`
`authentication because it does not
`
`indicate that biometric authentication has
`
`occurred. Markus Decl., ¶59.2
`
`Third, all of Petitioner’s proposed grounds rely upon the combination of
`
`Jakobsson in view of Maritzen. See, e.g., Pet. at iii (“Ground 1: Claims 1, 2, 6, 7,
`
`9, 10, and 12 are Obvious Over Jakobsson in View of Maritzen”; “Ground 2:
`
`Claim 5 is Obvious over Jakobsson in View of Maritzen and Niwa”; Ground 3:
`
`Claim 8 and 11 are Obvious over Jakobsson in View of Maritzen and Schutzer).
`
`But, Petitioner fails to demonstrate that a POSITA would have been motivated to
`
`combine these two references. Indeed, they are not in the same field or address the
`
`same problem: Maritzen discloses a system for a real-time settlement of vehicle-
`
`2 As Patent Owner’s expert is an inventor of Petitioner’s primary prior art reference
`(Jakobsson), to avoid confusion, the reference (Ex. 1113) is referred to herein as
`“Jakobsson,” while the expert declaration (Ex. 2001) is referred to as “Markus.”
`See Markus Decl., ¶14 (“I am an inventor of Petitioner’s primary prior art
`reference.”).
`
`3
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`

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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`accessed anonymous payment systems, in contrast to Jakobsson’s personal event
`
`detecting and alert system.
`
`A POSITA would also recognize that Maritzen is poorly suited for
`
`combination with Jakobsson for several reasons. For instance, Petitioner cites
`
`examples of Jakobsson’s use of a PIN or password to generate its authentication
`
`code. In contrast, Maritzen does not teach PIN-based authentication, nor would it
`
`as revealing such information would not aid in anonymous payment, nor reduce
`
`time (such as at a vehicle toll-booth)—both goals of the invention. Further,
`
`Maritzen already discloses a method of secured authentication—use of biometric
`
`information; there is no need to add Jakobsson. Petitioner ignores these facts, as
`
`well as the other statements and teachings in Jakobsson and Maritzen that make
`
`clear a POSITA would not combine the two references.
`
`II. OVERVIEW OF THE ’137 PATENT
`
`A.
`
`The ’137 Patent Specification
`
`The '137 patent relates to a unique and highly secure distributed transaction
`
`approval system. Markus Decl., ¶ 25. Figure 21 depicts one possible embodiment
`
`of such a transaction approval system:
`
`4
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`

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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`The claimed invention provides improved transaction security by providing
`
`a system where users locally authenticate themselves at a first device using multi-
`
`factor authentication (e.g., a PIN code and a biometric, such as a fingerprint)
`
`before the first device generates a transaction approval request that it transmits to a
`
`remote second device. See, e.g., id. at 29:21-44; Fig. 21; see also Markus Decl.,
`
`¶26. That transaction approval request from the first device is improved as well.
`
`See, e.g., id. at 16:49-17:54; Figs. 6, 21. The request signal(s) include at least three
`
`specific types of data: first authentication information, an indicator of the device's
`
`biometric authentication of the user, and a one time code that is a time varying
`
`value. See, e.g., id. at 14:26-53, 32:31-33:19; Figs. 21, 23. The request signal(s)
`
`are sent to a second device for processing authorization of the transaction (e.g., by
`
`5
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`U.S. Patent No. 9,530,137
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`a server). Markus Decl., ¶ 26. The second device may return an enablement signal
`
`based on the request signal(s), as well as second authentication information of the
`
`user available at the second device. See, e.g., id. at 33:20-34:6; Figs. 21, 24-25.
`
`The claimed invention solves a technical problem specifically encountered
`
`in distributed electronic transaction approval systems. Markus Decl., ¶ 27. One
`
`important concern is ensuring that the person remotely initiating a transaction is an
`
`authorized user, and not someone fraudulently using a counterfeit or stolen device
`
`(e.g., access card, credit card, phone, etc.).
`
`Id. The claimed invention addresses
`
`this concern by locally authenticating the user of the first device through
`
`multifactor authentication (e.g., a secret PIN and fingerprint), and by generating
`
`and sending the remote second device an indication of biometric authentication and
`
`other data that is difficult to counterfeit. See, e.g., id. at 2:50-52, 13:62-14:7,
`
`22:16-20. Another critical concern in a distributed electronic transaction approval
`
`system is preventing the interception of sensitive information that could be
`
`fraudulently used in future transactions. Markus Decl., ¶ 27. The claimed
`
`invention addresses this concern by generating and sending authentication
`
`information (rather than requiring users to send their social security number,
`
`password, credit card number, or other sensitive information) from the local first
`
`device to the remote second device, and by incorporating a time varying value that
`
`6
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`may be used to prevent a replay attack. See, e.g., id. at 4:23-31, 15:43-50, 18:27-
`
`34, 19:45-52.
`
`Hence, the '137 patent provides an improved secure distributed transaction
`
`approval system. Markus Decl., ¶ 28. A user needs more than just possession of
`
`the local device to conduct
`
`transactions, as
`
`the claimed system locally
`
`authenticates both secret information and biometric information from the user
`
`before it engages in a transaction, protecting against fraudulent transactions using a
`
`stolen device. Id. Furthermore, the device in the claimed system does not publish
`
`or send the user’s secret information or other sensitive information over a network,
`
`where it might be stolen and misused. Id. Instead, the device generates signal(s)
`
`including authentication information,
`
`indication of
`
`the device’s biometric
`
`authentication of the user, and a time varying value, and sends those to the second
`
`device for transaction approval.
`
`Id. And, inclusion of the time varying value
`
`protects against interception and resubmission of signal(s) in a replay attack. Id.
`
`B.
`
`The ’137 Patent Claims
`
`The '137 patent
`
`includes 12 claims, of which claims 1 and 12 are
`
`independent. The two independent claims of the ’137 patent are reproduced
`
`below:
`
`1. A system for authenticating a user for enabling a transaction, the
`system comprising:
`
`7
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`a first device including:
`
`a first processor, the first processor programmed to authenticate a
`user of the first device based on secret information and to retrieve
`or receive first biometric information of the user of the first device;
`
`a first wireless transceiver coupled to the first processor and
`programmed to transmit a first wireless signal
`including first
`authentication information of the user of the first device; and
`
`a biometric sensor configured to capture the first biometric
`information of the user;
`
`wherein the first processor is programmed to generate one or more
`signals including the first authentication information, an indicator
`of biometric authentication, and a time varying value in response
`to valid authentication of the first biometric information, and to
`provide the one or more signals including the first authentication
`information for transmitting to a second device; and
`
`wherein the first processor is further configured to receive an
`enablement signal from the second device; and
`
`the system further including the second device that is configured to
`provide the enablement signal
`indicating that
`the second device
`approved the transaction based on use of the one or more signals;
`
`wherein the second device includes a second processor that is
`configured to provide the enablement signal based on the
`indication of biometric authentication of the user of the first device,
`at least a portion of the first authentication information, and second
`authentication information of the user of the first device to enable
`and complete processing of the transaction.
`
`Ex. 1001 at 45:27-61.
`
`12. A system for authenticating a user for enabling a transaction, the
`system comprising:
`
`8
`
`

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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`a first device including:
`
`a biometric sensor configured to capture a first biometric
`information of the user;
`
`a first processor programmed to: 1) authenticate a user of the first
`device based on secret information, 2) retrieve or receive first
`biometric information of the user of the first device, 3) authenticate
`the user of the first device based on the first biometric, and 4)
`generate one or more signals including first authentication
`information, an indicator of biometric authentication of the user of
`the first device, and a time varying value; and
`
`a first wireless transceiver coupled to the first processor and
`programmed to wirelessly transmit the one or more signals to a
`second device for processing;
`
`wherein generating the one or more signals occurs responsive to
`valid authentication of the first biometric information; and
`wherein the first processor is further configured to receive an
`enablement signal from the second device; and
`
`wherein the first processor is further programmed to receive an
`enablement signal indicating an approved transaction from the second
`device, wherein the enablement signal is provided from the second
`device based on acceptance of
`the
`indicator of biometric
`authentication and use of the first authentication information and use
`of second authentication information to enable the transaction.
`
`Id. at 46:55-47:14.
`
`C.
`
`Prosecution History of the ’137 Patent
`
`The '137 patent
`
`issued on December 27, 2016 from Application
`
`No. 15/019,660 filed on February 9, 2016.
`
`9
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`The '137 patent was subject to a thorough examination by Examiner Calvin
`
`Cheung, and was allowed over a large body of cited prior art. See Ex. 1001 at 1-3.
`
`Examiner Cheung indicated that he allowed the claims of the '137 patent because
`
`the prior art taken either individually or in combination with other prior art of
`
`record failed to disclose, suggest, teach, or render obvious the claimed limitations
`
`in the context of the invention as a whole. See Ex. 1010 at 7-8.
`
`III. OVERVIEW OF THE ASSERTED PRIOR ART
`
`A.
`
`Jakobsson
`
`Jakobsson discloses an event detecting and alert system for personal identity
`
`authentication systems. Markus Decl., ¶ 30. Specifically, “[t]he invention
`
`addresses the[] shortcomings [of the prior art] by including an indication of the
`
`occurrence of an event directly into the efficient computation of an identity
`
`authentication code, where the verifier may efficiently verify the authentication
`
`code and identify the signaling of an event state.” Ex. 1113, Jakobsson at [0010].
`
`See id., at [0011] (“the previous approaches do not have the flexibility to
`
`communicate event information in, or as part of, an authentication code, in the
`
`present approach, an authentication code is generated in a manner
`
`that
`
`communicates to the verifier information about the occurrence of one or more
`
`reportable events.”).
`
`Jakobsson expressly discloses that “[e]xample reportable
`
`events include: device tampering; an event external to the device detected by the
`
`10
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`device; an environmental event, such as temperature exceeding or falling below a
`
`threshold; static discharge; high or low battery power; geographic presence at a
`
`particular location; confidence level in a biometric reading; and so on.” Ex. 1113,
`
`[0011]; Markus Decl., ¶ 30.
`
`Jakobsson’s user device (such as a credit card device, key fob, USB dongle
`
`or cellular telephone, Ex. 1113., Jakobsson at [0041]) computes an authentication
`
`code based upon various values including a dynamic variable that changes over
`
`time, an event state, a device secret, along with user data such as a PIN number or
`
`social security number.
`
`Id., at [0043], [0058], [0060-0061]; Markus Decl., ¶ 31.
`
`The code is then transmitted to a verifier that retrieves from its records the data
`
`necessary for verification, such as the PIN associated with the user, and then
`
`verifies the received information. Ex. 1113, Jakobsson at [0049-0050].
`
`B. Maritzen
`
`Maritzen states that “[a] situation that still requires use of cash is in the
`
`collection of fees at vehicle-accessed payment gateways such as toll booths,
`
`vehicular kiosks, smog-certification stations, and the like.” Ex. 1114 at [0003].
`
`Maritzen explains that “[t]he collection of
`
`fees at
`
`these gateways is time
`
`consuming and subject to fraud.” Id.
`
`Maritzen discloses a system and method for electronic payment of fees using
`
`a personal
`
`transaction device (PTD) at vehicle-accessed, payment-gateway
`
`11
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`terminals (VAPGT). Ex. 1114 at Abstract, [0007]-[0009].
`
`In the system of
`
`Maritzen, a PTD is sensed by a VAPGT and the VAPGT then transmit a payment
`
`request to the PTD.
`
`Id. at [0029]-[0030]. The PTD can then be accessed using
`
`biometric control (e.g., a fingerprint), which in the preferred embodiment
`
`is
`
`inputted into a separate “privacy card,” and a transaction key is then generated. Id.
`
`at [0029]-[0030], [0088]-[0089]. Maritzen teaches two embodiments for its
`
`transaction key.
`
`Id. at [0089]; Markus Decl., ¶ 33.
`
`In one embodiment, the
`
`transaction key includes only one type of information, namely it includes “only [a]
`
`biometric key.” Id. [0089]. In a second embodiment, the transaction key includes
`
`two types of information, namely a “PTD identifier” that “identifies the particular
`
`PTD being used” and a “biometric key.” Id. The PTD transmits the transaction
`
`key to a clearing house for verifying that the vehicle-access payment should be
`
`authorized. Id. at [0029]-[0030].
`
`C.
`
`Schutzer
`
`Petitioner relies on Schutzer only for Ground 3 of the Petition, which asserts
`
`that dependent Claims 8 and 11 of the ’137 patent are invalid based on Jakobsson
`
`in view of Maritzen and Schutzer. Pet. at 63-72. While Patent Owner maintains
`
`the asserted claims are patentable, Claims 8 and 11 have been cancelled by Patent
`
`Owner. Ex. 2003. Accordingly, Ground 3 is now moot. Google Inc. v. SimpleAir,
`
`Inc., Case CBM2015-00019, slip op. at 14–15 (PTAB May 19, 2015) (Paper 11)
`
`12
`
`

`

`(“[W]e treat
`
`the [challenged] patent as though [the disclaimed claim] never
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`existed.”).
`
`D.
`
`Niwa
`
`Petitioner relies on Niwa only for Ground 2 of the Petition, which asserts
`
`that dependent Claim 5 of the ’137 patent is invalid based on Jakobsson in view of
`
`Maritzen and Niwa. Pet. at 53-63. Niwa discloses a fingerprint authentication
`
`device. Ex. 1117 at 2:19-44. The fingerprint authentication device allows a user to
`
`conduct a commercial transaction by inputting a valid fingerprint. Ex. 1117 at
`
`2:19-44.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) relevant to the ’137 patent
`
`at the time of the invention would have a Bachelor of Science degree in electrical
`
`engineering, computer science or computer engineering, and three years of work or
`
`research experience in the fields of secure transactions and encryption, or a
`
`Master’s degree in electrical engineering, computer
`
`science or computer
`
`engineering and two years of work or research experience in related fields.
`
`Markus Decl., ¶ 16. Patent Owner’s description of the level of ordinary skill in the
`
`art
`
`is essentially the same as that of the Petitioner, except
`
`that Petitioner’s
`
`description requires two years of work or research experience (as compared to
`
`13
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`U.S. Patent No. 9,530,137
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`three years). See Pet. at 4-5. The positions set forth in this preliminary response
`
`would be the same under either parties’ proposal. Markus Decl., ¶ 17.
`
`V.
`
`CLAIM CONSTRUCTION
`
`Claim terms in an IPR are given their broadest reasonable interpretation
`
`(“BRI”) in view of the specification in which they appear. 37 C.F.R. § 42.100(b);
`
`see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016).
`
`Petitioner identifies three terms that purportedly require construction. Pet. at
`
`14-20. Patent Owner contends construction of these terms is not necessary to
`
`resolve the matters raised by this Preliminary Response. See Markus Decl., ¶36.
`
`However, Patent Owner contends that the term “the one or more signals” should be
`
`construed as set forth below.
`
`A.
`
`“The One Or More Signals” (All Challenged Claims)
`
`The ’137 patent includes two independent claims: Claims 1 and 12. Both
`
`independent claims recite the term “the one or more signals.” Consistent with the
`
`context of the claims in which they appear, Patent Owner contends that “the one or
`
`more signals” should be construed to mean “one or more signals that include all of
`
`the following three types of information: (1) first authentication information, (2) an
`
`indicator of biometric authentication of the user of the first device, and (3) a time
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`varying value.” See Markus Decl., ¶¶ 37-42.
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`Patent Owner’s construction is supported by the plain language of the
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`claims. Id., ¶ 40. In all the Challenged Claims, this definition of the term “the one
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`or more signals” is provided within the following limitation:
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`wherein the first processor is programmed to generate
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`one or more signals including first authentication
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`information, an indicator of biometric authentication
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`of the user of the first device, and a time varying value
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`in response to valid authentication of the first biometric
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`information . . . ”
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`Ex. 1001 at 45:40-44 (Claim 1); 46:60-67 (Claim 12). The use of the conjunctive
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`“and” in the list of included constituents means that all three of these constituents
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`must be included within “the one or more signals.” Markus Decl., ¶40. See, e.g.,
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`Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942 (Fed. Cir. 2016) (holding “‘and’
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`means ‘and’ because claim terms are to be given their plain and ordinary
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`meaning,” and construing claim to require “both computer and telephonic
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`capabilities”); see also Light Guard Systems, Inc. v. Spot Devices, Inc., 2012 WL
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`2131943, *7 (D. Nev. 2012) (construing claim reciting adjustment “for poor
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`visibility and night operating conditions” to require adjustment
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`for “both”
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`conditions and rejecting accused infringer’s attempt “to impermissibly rewrite the
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`claim by turning the conjunction ‘and’ into the term ‘or.’”).
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`U.S. Patent No. 9,530,137
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`Subsequent limitations in the claim also confirm that “the one or more
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`signals” must include all three types of information. Markus Decl., ¶ 41. For
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`example, the claims recite the step of transmitting “the one or more signals” to a
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`second device for processing, and require that
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`the second device enable a
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`transaction using “the first authentication information” and “the indication of
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`biometric authentication” list elements referenced in the “one or more signals”
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`limitation. Ex. 1001 at 45:44-61 (Claim 1), 47:1-14 (Claim 12). A POSITA would
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`understand the term “the one or more signals” includes all three listed types of
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`information so that the recited transmission of “the one or more signals” to the
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`second device provides the second device with the different types of information
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`the second device uses to approve the transaction. Markus Decl., ¶ 41.
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`Patent Owner’s construction is also consistent with the specification, where
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`all three of the recited constituents are included in “the one or more signals.” Id., ¶
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`42. For example, Figure 23 of the ’137 patent illustrates an embodiment of the
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`various fields included in the signals transmitted between the first wireless device
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`and the second wireless device:
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`Case No. IPR2018-00809
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`Ex. 1001 at Fig. 23, 32:31-34. The signals shown in Figure 23 include examples of
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`the three types of information recited in Claims 1 and 12, including a first
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`authentication information (e.g., a “digital signature field 306 containing a digital
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`signature of the first user”), a time varying value (e.g., “one-time varying code
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`field 308 that
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`includes a random code”), and an indicator of biometric
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`authentication (e.g., “biometric data field 312”). Ex. 1001 at 32:31-58; Markus
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`Decl., ¶ 42.
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`VI. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CLAIM IS INVALID BASED ON
`JAKOBSSON IN VIEW OF MARITZEN (GROUND 1)
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`The Petition should be denied and no review instituted. The ’137 patent
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`includes two independent claims: Claims 1 and 12. Petitioner fails to demonstrate
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`a reasonable likelihood that either of these claims is invalid for at least three
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`reasons.
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`First, limitations 1[f], 1[h], and 12[f] require a first device transmit “the one
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`or more signals” to a second device for processing. Petitioner contends that
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`Jakobsson satisfies
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`these
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`limitations by transmitting and processing an
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`“authentication code.” But, Claims 1 and 12 require (and the ’137 patent makes
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`clear) that three separate, and distinct, types of information must be transmitted
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`and processed in “the one or more signals:” (1) first authentication information,
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`(2) an indicator of biometric authentication of the user of the first device, and (3) a
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`time varying value. Petitioner makes no attempt to show transmitting Jakobsson’s
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`authentication code transmits all three of these types of information. Petitioner’s
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`failure of proof is fatal.
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`Second, Petitioner has failed to demonstrate that Jakobsson discloses
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`limitations 1[i] and 12[i] because the Petition erroneously points to the same item
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`for both an “indicator of biometric authentication” and “first authentication
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`information.” Even assuming that such double counting is proper, the cited
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`element cannot be an “indicator of biometric authentication” because it does not
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`indicate that biometric authentication has occurred.
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`Third, all three of Petitioner’s proposed grounds rely upon the combination
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`of Jakobsson with Maritzen. See, e.g., Pet. at iii (“Ground 1: Claims 1, 2, 6, 7, 9,
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`10, and 12 are Obvious Over Jakobsson in View of Maritzen”; “Ground 2: Claim 5
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`is Obvious over Jakobsson in View of Maritzen and Niwa”; Ground 3: Claim 8 and
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`11 are Obvious over Jakobsson in View of Maritzen and Schutzer). Petitioner’s
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`combination of these two references relies upon hindsight bias; cherry-picking
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`U.S. Patent No. 9,530,137
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`components from the prior art in a failed attempt to match them with parameters of
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`the patented invention. Petitioner fails to demonstrate that a POSITA would have
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`been motivated to combine the references in the manner Petitioner proposes.
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`A.
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`Petitioner Fails To Show Any Disclosure Of Transmitting And
`Processing “The One Or More Signals” (Limitations 1[f], 1[h],
`And 12[f])
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`The Petition should be denied because Petitioner
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`fails to show any
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`disclosure of transmitting and processing “the one or more signals” recited in the
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`claims.
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`Both independent claims of the ’137 patent include at least one limitation
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`requiring transmitting and processing “the one or more signals”:
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`• “provide the one or more signals including the first authentication
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`information for transmitting to a second device” (limitation 1[f]);
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`• “the system further including the second device that is configured to
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`provide the enablement signal
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`indicating that
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`the second device
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`approved the transaction based on use of the one or more signals”
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`(limitation 1[h]); and
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`• “a first wireless transceiver coupled to the first processor and
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`programmed to wirelessly transmit the one or more signals to a
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`second device for processing (limitation 12[f]).
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`Ex. 1001 at 45:44-47, 45:51-54, 47:1-4. As used in the ’137 patent, “the one or
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`more signals” means “one or more signals that include all of the following three
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`types of information: (1) first authentication information, (2) an indicator of
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`biometric authentication of the user of the first device, and (3) a time varying
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`value.” Section V.A.
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`In other words, limitations 1[f], 1[h], and 12[f] (the
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`“Transmitting and Processing Limitations”) require the first device transmit all
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`three of these separate, and dist