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 RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`
`
`Paper No. 18
`
`

`

`TABLE OF CONTENTS
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`OVERVIEW OF THE ’137 PATENT ............................................................ 3
`
`A.
`
`B.
`
`C.
`
`The ’137 Patent Specification ............................................................... 3
`
`The ’137 Patent Claims ......................................................................... 6
`
`Prosecution History of the ’137 Patent ................................................. 8
`
`III. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 8
`
`A.
`
`Jakobsson ............................................................................................... 8
`
`B. Maritzen ............................................................................................... 10
`
`C.
`
`Niwa .................................................................................................... 11
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11
`
`V.
`
`CLAIM CONSTRUCTION .......................................................................... 12
`
`VI. STANDARD OF REVIEW ........................................................................... 16
`
`VII. JAKOBSSON AND MARITZEN DO NOT RENDER
`CHALLENGED CLAIMS 1, 2, 6, 7, 9, 10, OR 12 OBVIOUS .................... 16
`
`A.
`
`Petitioner Fails To Show that Independent Claims 1 and 12
`Would Have Been Obvious ................................................................. 17
`
`1.
`
`2.
`
`Petitioner Fails To Show Any Disclosure of Transmitting
`and Processing “The One Or More Signals” (Limitations
`1[f], 1[h], and 12[f]) .................................................................. 17
`
`The Combination Fails to Disclose the Claimed
`“Enablement Signal” (Limitations 1[h], 1[i], 12[h], and
`12[i]) .......................................................................................... 23
`
`Petitioner Fails To Show that Dependent Claim 5 Would Have
`Been Obvious ...................................................................................... 28
`
`Petitioner Fails To Show that Dependent Claim 6 Would Have
`Been Obvious ...................................................................................... 30
`
`Petitioner Fails To Show that Dependent Claim 7 Would Have
`Been Obvious ...................................................................................... 32
`
`B.
`
`C.
`
`D.
`
`
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`VIII. A POSITA WOULD NOT BE MOTIVATED TO COMBINE
`JAKOBSSON WITH MARITZEN ............................................................... 32
`
`IX. A POSITA WOULD NOT BE MOTIVATED TO COMBINE NIWA
`WITH JAKOBSSON AND MARITZEN ..................................................... 37
`
`X.
`
`PETITIONER AND ITS EXPERT FAILED TO CONSIDER THE
`STRONG EVIDENCE OF SECONDARY CONSIDERATIONS OF
`NON-OBVIOUSNESS .................................................................................. 38
`
`A.
`
`B.
`
`Long-felt Need and Failure of Others ................................................. 39
`
`Commercial Success............................................................................ 42
`
`XI. CONCLUSION .............................................................................................. 44
`
`
`
`ii
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) .....................................................................39
`
`Apple Inc. v. Samsung Elecs. Co. Ltd.,
`816 F.3d 788 (Fed. Cir. 2016) .......................................................................40
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ...................................................................................12
`
`Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc.
`21 F.3d 1068 (Fed. Cir. 1994) .......................................................................40
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent
`Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .....................................................................38
`
`In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) ..........................................................28
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .....................................................................33
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007).......................................................................................33
`
`Light Guard Systems, Inc. v. Spot Devices, Inc.,
`2012 WL 2131943 (D. Nev. 2012) ................................................................13
`
`Medgraph, Inc. v. Medtronic, Inc.,
`843 F.3d 942 (Fed. Cir. 2016) .......................................................................13
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .....................................................................24
`
`Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd.,
`IPR2017-00100, Paper No. 30 at 15 (PTAB Apr. 23, 2018) ........................16
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ...................................................................................21
`
`Square, Inc. v. Cooper,
`IPR2014-0015, slip op. 30 (May 15, 2014) ...................................................37
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) .....................................................................39
`
`
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`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .....................................................................16
`
`ZTE Corp. v. ContentGuard Holdings, Inc., IPR2013-00137, Paper 58
`(PTAB July 1, 2014) ......................................................................................29
`
`
`
`Statutory Authorities
`
`35 U.S.C. § 314(a) ...................................................................................................16
`
`35 U.S.C. § 316(e) ...............................................................................................1, 16
`
`
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`Rules and Regulations
`
`
`
`
`
`
`
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`
`iv
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`Exhibit #
`2010
`
`2011
`2012
`
`2013
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`
`Description
`Declaration of Markus Jakobsson in Support of
`Patent Owner’s Response
`Deposition Transcript of Dr. Victor John Shoup
`N. Asokan, et. al, The State of the Art in Electronic Payment
`Systems, IEEE Computer, Vol. 30, No. 9, pp. 28-35 (IEEE
`Computer Society Press, Sept. 1997)
`M. Baddeley, Using E-Cash in the New Economy: An
`Economic Analysis of Micropayment Systems, J. Electronic
`Commerce Research, Vol. 5, No. 4, pp. 239-253 (Nov. 2004)
`
`v
`
`
`
`
`
`

`

`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`Apple Inc. (“Petitioner”) filed its Petition (Paper 3, “Petition”) on April 4,
`
`2018, alleging claims 1, 2, and 5-12 of U.S. Patent No. 9,530,137 (“the ’137 patent”)
`
`would have been obvious. The Board instituted review (Paper 9, “Decision”) of
`
`claims 1, 2, 5, 6, 7, 9, and 121 of the ’137 patent on October 9, 2018. Universal
`
`Secure Registry (“PO”) submits this Response.
`
`I.
`
`INTRODUCTION
`
`The Petition alleges claims 1, 2, 6, 7, 9, and 12 are obvious in view of
`
`Jakobsson and Maritzen (Petition at 20-53) and claim 5 is obvious in view of
`
`Jakobsson, Maritzen, and Niwa (id. at 53-63). Petitioner has not met its “burden of
`
`proving a proposition of unpatentability by a preponderance of the evidence.” 35
`
`U.S.C. § 316(e). First, the combination of Jakobsson and Maritzen fails to show or
`
`suggest several claimed features recited in independent claims 1 and 12, including
`
`the claimed “one or more signals” that includes three distinct pieces of information
`
`and the claimed “enablement signal” that is based on the indication of biometric
`
`authentication, at least a portion of first authentication information, and second
`
`authentication information.
`
`Second, even if the combination of Jakobsson and Maritzen did disclose all
`
`the elements recited in independent claims 1 and 12, a person of ordinary skill in the
`
`
`
`1 Patent Owner disclaimed claims 8, 10, and 11, so they are not part of this
`proceeding. Decision at 6-7.
`
`
`
`1
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`art (“POSITA”) at the time of the invention would not have combined Maritzen,
`
`which relates to an anonymous vehicle-accessed payment system, with Jakobsson,
`
`which relates to a personal authentication system using personally identifiable
`
`information. Rather, Jakobsson and Maritzen provide different solutions to very
`
`different problems in different contexts. The two references are also technically
`
`incompatible and teach away from being combined with each other. A POSITA
`
`would therefore have not combined these two references in the manner asserted by
`
`Petitioner.
`
` Third, many features recited in the dependent claims are not disclosed or
`
`suggested by the combination of prior art cited in the Petition. These missing
`
`features include at least comparing stored authentication information with the
`
`authentication information of the user by the first device (claim 5), encrypting the
`
`authentication information before communicating it to the second device (claim 6),
`
`and storing the first biometric information in memory on the first device (claim 7).
`
`A POSITA would have not have combined the references in the manner suggested
`
`by Petitioner to render any of these dependent claims obvious.
`
`For all these reasons, Petitioner has not met its burden to show the challenged
`
`claims are obvious.
`
`
`
`2
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`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. Ex. 2010 (hereinafter, “Markus Decl.”),2 ¶ 26. Figure 21 depicts
`
`one possible embodiment of such a transaction approval system:
`
`
`
`
`
`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. 2010) 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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`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., ¶ 27. The
`
`transaction approval request from the first device includes 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 a server). Markus
`
`Decl., ¶ 27. 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., ¶ 28. 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 multi-factor
`
`authentication (e.g., a secret PIN and fingerprint), and by generating and sending the
`
`
`
`4
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`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., ¶ 28. 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 helps 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., ¶ 29. 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 one or more signals including
`
`authentication information, an indication of the device’s biometric authentication of
`
`the user, and a time varying value, and sends those one or more signals to a second
`
`
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`5
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`device for transaction approval. Id. Inclusion of the time varying value protects
`
`against interception and resubmission of signal(s) in a replay attack. Id.
`
`Additionally, transaction approval is based on at least (1) the indication of biometric
`
`authentication of the user and (2) the authentication information, further
`
`strengthening the overall security of the system. 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:
`
`
`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
`
`
`
`
`6
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`

`

`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`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:
`
`
`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
`
`
`
`7
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`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.
`
`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., ¶ 31. Specifically, “[t]he invention addresses
`
`the[] shortcomings [of the prior art] by including an indication of the occurrence of
`
`
`
`8
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`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 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., ¶ 31.
`
`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., ¶ 32. 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].
`
`
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`9
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`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 terminals
`
`(VAPGT). Ex. 1114 at Abstract, ¶¶ [0007]-[0009]. In the system of Maritzen, a
`
`PTD is sensed by a VAPGT, and the VAPGT then transmits 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., ¶ 34. In one embodiment, the transaction key includes
`
`only one type of information; namely, “only [a] biometric key.” Id. at ¶ [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
`
`
`
`10
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`

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`verifying that the vehicle-access payment should be authorized. Id. at ¶¶ [0029]-
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`U.S. Patent No. 9,530,137
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`[0030].
`
`C. 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 into a fingerprint
`
`authentication device that is inserted into an interface within a settlement or payor
`
`bank in order to transmit an authentication code to the bank. Ex. 1117 at Figure 1,
`
`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 and/or computer science, and three years of work or research experience
`
`in the fields of secure transactions and encryption, or a Master’s degree in electrical
`
`engineering and/or computer science and two years of work or research experience
`
`in related fields. Markus Decl., ¶ 17. 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
`
`
`
`11
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`compared to three years). See Pet. at 4-5. The positions set forth in this Response
`
`would be the same under either parties’ proposal. Markus Decl., ¶ 18.
`
`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 Response.3 See Markus Decl., ¶ 37. However, Patent
`
`Owner contends that the term “the one or more signals” should be construed as set
`
`forth below.
`
`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
`
`
`
`3 Patent Owner agrees with the Board that “there is no need to construe any other
`
`term to resolve issues” in this proceeding. Decision at 7.
`
`
`
`12
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`U.S. Patent No. 9,530,137
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`indicator of biometric authentication of the user of the first device, and (3) a time
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`varying value.” See Markus Decl., ¶¶ 38-43.
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`Patent Owner’s construction is supported by the plain language of the claims.
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`Id., ¶ 41. In all the Challenged Claims, this definition of the term “the one or more
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`signals” is provided within the following limitation:
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`wherein the first processor is programmed to generate one
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`or more signals
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`including
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`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., ¶ 41. 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 meaning,”
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`and construing claim to require “both computer and telephonic capabilities”); see
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`also Light Guard Systems, Inc. v. Spot Devices, Inc., 2012 WL 2131943, *7 (D. Nev.
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`2012) (construing claim reciting adjustment “for poor visibility and night operating
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`conditions” to require adjustment for “both” conditions and rejecting accused
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`infringer’s attempt “to impermissibly rewrite the claim by turning the conjunction
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`‘and’ into the term ‘or.’”).
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`Subsequent limitations in the claim also confirm that “the one or more signals”
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`must include all three types of information. Markus Decl., ¶ 42. For example, the
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`claims recite the step of transmitting “the one or more signals” to a second device
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`for processing, and require that the second device enable a transaction using “the
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`first authentication information” and “the indication of biometric authentication”
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`referring back to elements referenced in the “one or more signals” limitation. Ex.
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`1001 at 45:44-61 (Claim 1), 47:1-14 (Claim 12). A POSITA would understand the
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`term “the one or more signals” includes all three listed types of information so that
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`the recited transmission of “the one or more signals” to the second device provides
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`the second device with the different types of information the second device uses to
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`approve the transaction. Markus Decl., ¶ 42.
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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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`43. 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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`
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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., “public ID code field 304,” “digital signature field
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`306 containing a digital signature of the first user” and/or “other ID data field 314”),
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`a time varying value (e.g., “one-time varying code field 308 that includes a random
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`code”), and an indicator of biometric authentication (e.g., “biometric data field
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`312”).4 Ex. 1001 at 32:31-58; Markus Decl., ¶ 43.
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`
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`4 Petitioner’s own expert, Dr. Shoup, acknowledged at this deposition that the
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`claimed “one or more signals” must include first authentication information, a time
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`varying value, and an indicator of biometric authentication. Ex. 2011 at 48:2-18,
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`56:9-57:8.
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`VI. STANDARD OF REVIEW
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` “[T]here is a significant difference between a petitioner’s burden to establish
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`a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by
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`a preponderance of the evidence at trial.” Trivascular, Inc. v. Samuels, 812 F.3d
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`1056, 1068 (Fed. Cir. 2016); see also 35 U.S.C. § 314(a); 35 U.S.C. § 316(e).
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`Because, at the institution phase, the “Board is considering the matter preliminarily
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`[and] without the benefit of a full record,” “the Board is not bound by any findings
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`made in its Institution Decision.” Trivascular, 812 F.3d at 1068. Findings made
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`during Trial are rendered “under a qualitatively different standard” than is used when
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`considering institution. Id.; see also Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd.,
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`IPR2017-00100, Paper No. 30 at 15 (PTAB Apr. 23, 2018) (“[W]e consider anew
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`[the] arguments presented in [the] Response . . . . We are not persuaded by [the]
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`argument that [PO] has not presented anything new to rebut our previous analysis
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`and conclusion because we now must evaluate the evidence of record against a
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`different, and higher, standard.” (internal quotation marks omitted)).
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`VII. JAKOBSSON AND MARITZEN DO NOT RENDER CHALLENGED
`CLAIMS 1, 2, 6, 7, 9, 10, OR 12 OBVIOUS
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`The Petition alleges claims 1, 2, 6, 7, 9, 10, and 12 are obvious in view of
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`Jakobsson and Maritzen. Petition at 20-53. The asserted ground does not render
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`any of these claims obvious because the references, even when combined, do not
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`show or reasonably suggest several important claimed features. In addition, even if
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`the claimed features were all disclosed—and they are not—there would have been
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`no motivation to combine the disclosures of Jakobsson and Maritzen in the manner
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`proffered in the Petition.
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`A.
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`Petitioner Fails To Show that Independent Claims 1 and 12
`Would Have Been Obvious
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`Petitioner fails to establish that a POSITA would have been motivated to
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`combine Jakobsson and Maritzen to arrive at any of the challenged independent
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`claims. In many instances, Petitioner fails to show that a claim element is disclosed
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`by any reference at all. Hence, Petitioner has not met its burden to show obviousness
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`as to any challenged claim.
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`1.
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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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`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 indica