`DOCKET NO.: 1033300-00308US1
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
`
` ben.fernandez@wilmerhale.com
`
`Mark D. Selwyn (admitted pro hac vice)
`950 Page Mill Road
`Palo Alto, CA 94304
`Email: mark.selwyn@wilmerhale.com
`
`
`
`
`Case No. IPR2018-00810
`Docket No. 1033300-00308US1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`________________________________________
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`
`
`Case No. IPR2018-00810; Docket No. 1033300-00308US1
`Petitioner’s Notice of Appeal
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22314-5793
`
`
`Pursuant to 35 U.S.C. §§ 141-44 and 319, and 37 C.F.R. § 90.2-90.3, notice
`
`is hereby given that Petitioner Apple Inc. appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Final Written Decision entered October 7,
`
`2019 (Paper 42) in IPR2018-00810 (Exhibit A), and all prior and interlocutory
`
`rulings related thereto or subsumed therein.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates
`
`that the issues on appeal include, but are not limited to, whether the Patent Trial
`
`and Appeal Board erred in determining that claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22,
`
`24, 26, 27, 30, 31, and 34 of the ’826 patent were not shown to be unpatentable,
`
`any finding or determination supporting or related to those issues, and all other
`
`issues decided adversely to Petitioner in any orders, decisions, rulings, and
`
`opinions, including, for example, its refusal to consider aspects of Petitioners’
`
`Reply Brief that addressed issues raised for the first time in the Patent Owner
`
`Response and Motion to Amend.
`
`Pursuant to 37 C.F.R. § 90.3, this Notice of Appeal is timely, having been
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`duly filed within 63 days after the date of the Final Written Decision.
`
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`
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`Case No. IPR2018-00810; Docket No. 1033300-00308US1
`Petitioner’s Notice of Appeal
`
`A copy of this Notice of Appeal is being filed simultaneously with the Patent
`
`
`
`
`Trial and Appeal Board, the Clerk’s Office for the United States Court of Appeals
`
`for the Federal Circuit, and the Director of the Patent and Trademark Office.
`
`Dated: December 6, 2019
`
` Respectfully submitted,
`
`By:
`
`/Monica Grewal/
`Monica Grewal, Lead Counsel
`Reg. No. 40,056
`
`- 2 -
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`
`
`Case No. IPR2018-00810; Docket No. 1033300-00308US1
`Petitioner’s Notice of Appeal
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 90.2(a)(1) and 104.2(a), I hereby certify that, in
`
`addition to being filed electronically through the Patent Trial and Appeal Board’s
`
`End to End (PTAB E2E), a true and correct original version of the foregoing
`
`Petitioner’s Notice of Appeal is being filed by Express Mail (Express Mail Label
`
`406063177) on this 6th day of December, 2019 with the Director of the United
`
`States Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Pursuant to 37 C.F.R. § 90.2(a)(2) and Federal Circuit Rule 15(a)(1), and
`
`Rule 52(a),(e), I hereby certify that a true and correct copy of the foregoing
`
`Petitioner’s Notice of Appeal is being filed in the United States Court of Appeals
`
`for the Federal Circuit using the Court’s CM/ECF filing system on this 6th day of
`
`December, 2019, and the filing fee is being paid electronically using pay.gov.
`
`I hereby certify that on December 6, 2019 I caused a true and correct copy of
`
`the Petitioner’s Notice of Appeal to be served via e-mail on the following attorneys
`
`of record:
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`- i -
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`
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`Case No. IPR2018-00810; Docket No. 1033300-00308US1
`Petitioner’s Notice of Appeal
`
`James M. Glass (jimglass@quinnemanuel.com)
`Tigran Guledjian (tigranguledjian@quinnemanuel.com)
`Christopher A. Mathews (chrismathews@quinnemanuel.com)
`Nima Hefazi (nimahefazi@quinnemanuel.com)
`Richard Lowry (richard.lowry@quinnemanuel.com)
`Razmig Messerian (razmesserian@quinnemanuel.com)
`Jordan B. Kaericher (jordankaericher@quinnemanuel.com)
`Harold A. Barza (halbarza@quinnemanuel.com)
`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
`
`By:
`
`/Monica Grewal/
`Monica Grewal, Lead Counsel
`Reg. No. 40,056
`
`ii
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`
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`
`
`
`Case No. IPR2018-00810; Docket No. 1033300-00308US1
`Petitioner’s Notice of Appeal
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper: 42
`Entered: October 7, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-008101
`Patent 9,100,826 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Claims Unpatentable
`Dismissing Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00175,
`have been joined as parties to this proceeding.
`
`
`
`IPR2018-00810
`Patent 9,100,826 B2
`
`INTRODUCTION
`I.
`Apple Inc. filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34
`of U.S. Patent No. 9,100,826 B2 (Ex. 1001, “the ’826 patent”). Universal
`Secure Registry, LLC (“Patent Owner”) did not file a Preliminary Response.
`The Board instituted a trial as to the challenged claims. Paper 8 (“Dec.”).
`After institution of trial, Visa Inc. and Visa U.S.A. Inc. filed a petition
`and a Motion for Joinder to this proceeding. Case IPR2019-00175, Papers 2,
`3. We granted the Motion for Joinder, and IPR2019-00175 was joined with
`this proceeding and dismissed. Paper 32, 5. Consequently, Apple Inc., Visa
`Inc., and Visa U.S.A. Inc. (collectively, “Petitioner”) are joined in this
`proceeding.
`Patent Owner filed a Patent Owner Response (“PO Resp.”) to the
`Petition. Paper 18. Petitioner filed a Reply (“Reply”) to the Patent Owner
`Response. Paper 24. Patent Owner filed a Sur-Reply (“Sur-Reply”).
`Paper 29. In addition, Patent Owner filed a Conditional Motion to Amend
`(Paper 19, “Mot. Amend”), Petitioner filed an Opposition to Patent Owner’s
`Conditional Motion to Amend (Paper 25), Patent Owner filed a Reply to
`Petitioner’s Opposition (Paper 30), and Petitioner filed a Sur-Reply to Patent
`Owner’s Reply (Paper 35).
`Petitioner relies on the Declaration of Dr. Victor Shoup in Support of
`Petition for Inter Partes Review (Ex. 1002), the Declaration of Dr. Victor
`Shoup in Support of Petitioner’s Reply to Patent Owner’s Response
`(Ex. 1018), the Declaration of Dr. Victor Shoup in Support of Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to Amend (Ex. 1019), and
`the Declaration of Dr. James L. Mullins (Ex. 1022) in support of its
`
`2
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`IPR2018-00810
`Patent 9,100,826 B2
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`contentions. Patent Owner relies on the Declaration of Markus Jakobsson in
`Support of Patent Owner’s Response (Ex. 2003), the Declaration of Markus
`Jakobsson in Support of Patent Owner’s Conditional Motion to Amend (Ex.
`2013), and the Declaration of Markus Jakobsson in Support of Patent
`Owner’s Reply to Opposition of Conditional Motion to Amend (Ex. 2015) in
`support of its contentions.
`An oral hearing was held on July 16, 2019, and the record contains a
`transcript of this hearing. Paper 41 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine Petitioner has not shown by a
`preponderance of the evidence that claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22,
`24, 26, 27, 30, 31, and 34 of the ’826 patent are unpatentable. We dismiss
`Patent Owner’s Conditional Motion to Amend as moot.
`
`II. BACKGROUND
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2–4; Paper 7, 2 (Patent Owner’s Updated
`Mandatory Notices).
`
`B. The ’826 Patent
`The ’826 patent, titled “METHOD AND APPARATUS FOR
`SECURE ACCESS PAYMENT AND IDENTIFICATION,” issued
`August 4, 2015, with claims 1–35. Ex. 1001, codes (54), (45), 44:24–48:34.
`The ’826 patent is directed to a secure database called a “Universal Secure
`Registry,” which can be used as “a universal identification system” and/or
`
`3
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`Patent 9,100,826 B2
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`“to selectively provide information about a person to authorized users.” Id.
`at 3:63–67. The ’826 patent states that the USR database is designed to
`“take the place of multiple conventional forms of identification.” Id.
`at 4:10–12. The ’826 patent further states that various forms of information
`can be stored in the database to verify a user’s identity and prevent fraud:
`(1) algorithmically generated codes, such as a time-varying multi-character
`code or an “uncounterfeitable token,” (2) “secret information” like a PIN or
`password, and/or (3) a user’s “biometric information,” such as fingerprints,
`voice prints, an iris or facial scan, DNA analysis, or even a photograph. See
`id. at 13:52–58, 14:5–23, 43:52–59, Fig. 3.
`The patent discloses a variety of embodiments including those in
`which a user is authenticated on a device using secret information (such as a
`PIN code) and biometric information (such as a fingerprint), and then the
`first device transmits information to a second device for further
`authentication. See id. at 28:52–29:7. The second device may verify the
`user’s information and return an enablement signal to the first device. Id. at
`32:43–56. Accordingly, the ’826 patent discloses that the system can be
`used to selectively provide authorized users with access to perform
`transactions involving various types of confidential information stored in a
`secure database. See, e.g., id. at 3:63–4:3.
`C. Challenged Claims
`As noted above, Petitioner challenges claims 1, 2, 7, 8, 10, 11, 14, 15,
`21, 22, 24, 26, 27, 30, 31, and 34 of the ’826 patent. Claims 1, 10, 21, and
`30 are independent. Independent claim 1 is illustrative of the claimed
`subject matter and is reproduced below:
`1.
`A system for authenticating identities of a plurality
`of users, the system comprising:
`
`4
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`IPR2018-00810
`Patent 9,100,826 B2
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`a first handheld device including:
`a first processor, the processor programmed to
`authenticate a user of the first handheld device based on
`authentication information and to retrieve or receive first
`biometric information of the user of the first handheld
`device; and
`a first wireless transceiver coupled to the first
`processor and programmed to transmit via a network a first
`wireless signal including first authentication information
`of the user of the first handheld device; and
`a second device including:
`a second processor;
`a second wireless transceiver coupled to the second
`processor, and
`a second memory coupled to the second processor,
`
`and
`wherein the second device is configured to retrieve or
`receive respective second authentication information for a first
`plurality of users, wherein the first plurality of users includes the
`user of the first handheld device;
`wherein the first processor is programmed to determine
`the first authentication information derived from the first
`biometric information and to transmit the first authentication
`information of the user of the first handheld device to the second
`device via the network,
`wherein the second processor is configured to:
`receive the first authentication information of the user of
`the first handheld device;
`retrieve or receive the second authentication information
`of the user of the first handheld device; and
`use the first authentication information and the second
`authentication information to authenticate an identity of the user
`of the first handheld device with the second device.
`Id. at 44:24–58.
`
`5
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`IPR2018-00810
`Patent 9,100,826 B2
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`D. The Prior Art
`Petitioner’s asserted ground of unpatentability for the challenged
`claims relies on the following references:
`Maritzen
`US 2004/0236632 A1 Nov. 25, 2004
`Jakobsson
`WO 2004/051585 A2
`June 17, 2004
`Niwa
`US 6,453,301 B1
`Sept. 17, 2002
`E. Ground of Unpatentability at Issue
`The Petition challenges claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26,
`27, 30, 31, and 34 of the ’826 patent as unpatentable under 35 U.S.C. § 103
`over Maritzen, Jakobsson, and Niwa.2 Pet. 9, 18–75. We instituted trial on
`all claims challenged in this asserted ground of unpatentability. Dec. 2, 20.
`
`Ex. 1004
`Ex. 1005
`Ex. 1007
`
`III. ANALYSIS
`A. Relevant Legal Principles
`To prevail in challenging Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
`review], the petitioner has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
`§ 312(a)(3) (requiring inter partes review petitions to identify “with
`particularity . . . the evidence that supports the grounds for the challenge to
`each claim”)). The burden of persuasion rests with Petitioner. See Dynamic
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’826
`patent has an effective filing date before the effective date of the relevant
`amendment, the pre-AIA version of § 103 applies.
`
`6
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`IPR2018-00810
`Patent 9,100,826 B2
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed.
`Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes
`review). Furthermore, Petitioner cannot satisfy its burden of proving
`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
`question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and, (4) where in evidence, so-called secondary
`considerations, including commercial success, long-felt but unsolved needs,
`failure of others, and unexpected results. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966). Additionally, for an obviousness analysis, prior art
`references must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`B. Level of Ordinary Skill in the Art
`Petitioner contends a person having ordinary skill in the art to which
`the ’826 patent pertains
`would have a Bachelor’s Degree in electrical engineering,
`computer science, or a related scientific field, and approximately
`two years of work experience in the computer science field
`
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`IPR2018-00810
`Patent 9,100,826 B2
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`systems, database
`example, operating
`for
`including,
`management, encryption, security algorithms, and secure
`transaction systems, though additional education can substitute
`for less work experience and vice versa.
`Pet. 4–5 (citing Ex. 1002 ¶¶ 21–23). Patent Owner argues a person having
`ordinary skill in the art to which the ’826 patent pertains
`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.
`PO Resp. 10 (citing Ex. 2003 ¶ 18). Patent Owner correctly notes that its
`proposed definition is essentially the same as Petitioner’s, with the exception
`of requiring three—rather than two—years of work or research experience.
`Id.
`
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
`the art, the rapidity with which innovations are made, the sophistication of
`the technology involved, and the educational background of those actively
`working in the field.” Jacobson Bros., Inc. v. United States, 512 F.2d 1065,
`1071 (Ct. Cl. 1975); see also Orthopedic Equip. Co. v. United States, 702
`F.2d 1005, 1011 (Fed. Cir. 1983) (quoting with approval Jacobson Bros.).
`The parties’ respective proposals are substantially similar such that
`there is no apparent dispute between the parties. Also, based on our review
`of the record before us, we find that Petitioner’s stated level of ordinary skill
`in the art is reasonable because it is consistent with the evidence of record,
`including the asserted prior art. Thus, for the purposes of this Decision, we
`
`8
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`IPR2018-00810
`Patent 9,100,826 B2
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`adopt Petitioner’s definition. We note, however, that our findings in this
`proceeding would not differ under Patent Owner’s proposed definition.
`C. Claim Construction
`Under the version of our rules applicable to this inter partes review,
`claim terms in an unexpired patent are given their broadest reasonable
`construction in light of the specification of the patent in which they appear.
`37 C.F.R. § 42.100(b) (2017);3 see also Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2142–46 (2016) (concluding that 37 C.F.R. § 42.100(b)
`“represents a reasonable exercise of the rulemaking authority that Congress
`delegated to the Patent Office”). Under the broadest reasonable construction
`standard, claim terms are given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Also, we are careful not to read a particular embodiment
`appearing in the written description into the claim if the claim language is
`broader than the embodiment. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the
`specification.”).
`In view of our analysis discussed below, we determine that “biometric
`information” from claims 1, 10, 21, and 30 is the only term requiring
`construction in order to resolve the disputed issues in this proceeding. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`3 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(amending 37 C.F.R. § 42.100(b), effective Nov. 13, 2018).
`
`9
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`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”); see also Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`review).
`Petitioner argues that “biometric information” should be construed to
`mean “information about a user’s physical characteristics, such as
`fingerprint, voice print, signature, iris or facial scan, DNA analysis, or
`personal photograph.” Pet. 13 (citing Ex. 1002 ¶ 32). Petitioner asserts that
`this construction is supported by the Specification of the ’826 patent, which
`describes biometric information using substantially identical language. Id.
`at 13–14 (citing Ex. 1001, 4:27–32). Patent Owner contends that
`construction of this term is not necessary but does not contest Petitioner’s
`proposed construction. PO Resp. 11.
`We agree with Petitioner that the Specification identifies fingerprint,
`voice print, signature, iris or facial scan, DNA analysis, and possibly a
`picture of a person as examples of biometric information. Furthermore, we
`credit Dr. Shoup’s testimony that biometric information falls into the
`category of “things a person is.” See Ex. 1002 ¶ 33.
`Therefore, in the context of the claims and the Specification of the
`’826 patent, we construe the term “biometric information” to mean
`“information about a user’s physical characteristics, such as fingerprint,
`voice print, signature, iris or facial scan, DNA analysis, or personal
`photograph.”
`
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`D. Asserted Obviousness based on Maritzen, Jakobsson, and Niwa
`a)
`Overview of the Cited Prior Art
`
`Overview of Maritzen
`i.
`Maritzen is a published patent application directed to conducting a
`financial transaction, in one embodiment using communication “between a
`vehicle-accessed, payment-gateway terminal (VAPGT) and a pre-registered,
`key-enabled, personal transaction device (PTD).” Ex. 1004, Abstract. In
`one embodiment, Maritzen discloses a financial transaction system in which
`PTD 100 communicates with VAPGT 120 via communication link 150. Id.
`¶ 38, Fig. 1. In addition, VAPGT 120 communicates with clearing house
`130 via communication link 170. Id. ¶ 39, Fig. 1.
`
`Overview of Jakobsson
`ii.
`Jakobsson is a published international patent application directed to an
`identity-authentication system. Ex. 1005. In certain embodiments of
`Jakobsson’s system, a user is first authenticated on a user device using a PIN
`or biometric information; the user device then sends information to a remote
`verifier including user authentication, PIN, biometric data, and a time-
`varying code, so that the remote system may verify the information and
`return a signal to the user device. Id. ¶¶ 50, 59.
`
`Overview of Niwa
`iii.
`Niwa discloses “a method and system for authorizing a transaction
`between two parties over a network . . . when an authorization code has been
`received by an authorizing entity.” Ex. 1007, 1:8–12. The authorization
`code can be “produced by a fingerprint identification device in response to
`comparing a fingerprint of one of the parties to a stored fingerprint in the
`device.” Id. at 1:12–15.
`
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`b)
`
`Analysis of Independent Claims 1, 10, 21, and 30
`
`First Handheld Device
`i.
`Claims 1 and 21 both recite a system for authenticating identities of a
`plurality of users that includes “a first handheld device.” Ex. 1001, 44:24–
`26, 46:21–23. Claims 10 and 30 both recite a method of authenticating an
`identity of a first entity that uses “a first handheld device.” Id. at 45:30–32,
`47:28–30.
`With respect to claim 1, Petitioner asserts that Maritzen discloses that
`personal transaction device (PTD) 100 is the first handheld device. Pet. 20
`(citing Ex. 1004 ¶ 63; Ex. 1002 ¶ 49); see also id. at 6 (“Maritzen relates to a
`handheld authentication device (‘personal transaction device (PTD) 100’).”);
`id. at 15 (“Maritzen is directed toward an electronic user authentication
`system that involves a handheld device.”). Petitioner relies on this same
`analysis with respect to the first handheld device limitation of claims 10 and
`30. Id. at 56 (claim 10), 72 (claim 30). For claim 21, Petitioner relies on its
`analysis of a claim 1 limitation that does not address a first handheld device.
`Id. at 59.
`Patent Owner argues that Petitioner provides no explanation or basis
`for its assertion that Maritzen’s PTD 100 is a handheld device and does not
`cite any such disclosure in Maritzen. PO Resp. 43–44 (citing Ex. 2003
`¶ 110). According to Patent Owner, Maritzen never states that the PTD is
`handheld and only describes it as a “personal transaction device.” Id. at 44
`(citing Ex. 2003 ¶ 112; Ex. 1004 ¶ 63). Patent Owner contends that many
`“personal” devices are not handheld, particularly devices intended for use in
`a vehicle such as conventional toll transponders, navigation systems, and
`radar detectors. Id. (citing Ex. 2003 ¶ 112). Thus, Patent Owner argues that
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`“[g]iven the PTD’s specifically intended use in a vehicle, a [person of
`ordinary skill in the art] would have understood that [Maritzen’s] PTD is
`more likely meant to be mounted in the vehicle (e.g., on the windshield,
`dashboard, sun visor, etc.) than to be handheld.” Id. at 45 (citing Ex. 2003
`¶ 113).
`We agree Maritzen does not disclose expressly that PTD 100 is a
`handheld device. The only disclosure from Maritzen cited in the Petition,
`¶ 63, describes the architecture for PTD 100 but makes no mention that PTD
`100 is a handheld device. Ex. 1004 ¶ 63. The Petition does not direct us to
`any other disclosure in Maritzen that explicitly describes any of the
`disclosed PTD embodiments as being handheld, and we are not aware of any
`such disclosure. Furthermore, the testimony of Dr. Shoup cited by Petitioner
`merely repeats the same assertion that Maritzen’s PTD 100 is the first
`handheld device without providing any support or explanation for this
`assertion, other than citing the same ¶ 63 of Maritzen. Ex. 1002 ¶ 49.
`Petitioner presents three arguments in reply. Reply 19–21. First,
`Petitioner argues that the term PTD stands for “personal transaction device,”
`and one of ordinary skill in the art would have understood that personal
`devices typically are kept on a user’s person. Id. at 19. According to
`Petitioner, “[p]ersonal devices are typically small and capable of being held
`in one’s hand.” Id. Petitioner also argues that “Maritzen describes various
`embodiments of the PTD and its embedded privacy card as being ‘the size of
`a credit card,’” and one of ordinary skill in the art “would have understood
`that an integrated system that is the size of a credit card is handheld.” Id.
`(citing Ex. 1004 ¶ 69; Ex. 1017, 209:4–9).
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`In response, Patent Owner argues that the word “personal” does not
`mean a device must be handheld. Sur-Reply 17. As another example,
`Patent Owner argues that a “personal computer” generally refers to a
`desktop computer, not a handheld device. Id. (citing Ex. 1017, 215:19–
`216:2). We agree that a “personal” device is not necessarily a handheld
`device. Petitioner’s assertion that personal devices are typically small and
`capable of being held in a hand is not persuasive. Petitioner does not
`support adequately the contention that personal devices are typically small;
`even assuming for the sake of argument that many personal devices are
`small, that does not mean that Maritzen’s PTD is sufficiently small enough
`to be capable of being held in a hand. Nor does the size indicate that
`Maritzen’s PTD is intended to be held in the hand during use in a vehicle.
`Thus, Petitioner has not established adequately that merely being capable of
`being held in one’s hand makes a device a handheld device.
`In addition, we agree with Patent Owner’s argument that Petitioner’s
`assertion that Maritzen discloses the PTD and its embedded privacy card as
`being the size of a credit card is incorrect. See id. at 19–20. The disclosure
`of Maritzen cited in the Petition in support of this assertion, ¶ 69, states that
`“[privacy] card 110 is configured, in one embodiment, to be the size of a
`credit card.” Ex. 1004 ¶ 69. Thus, only the privacy card is described as
`being the size of a credit card. The cited paragraph of Maritzen does not
`state that the PTD is also the size of a credit card; nor is there any disclosure
`that the “integrated system” of the PTD and the privacy card is the size of a
`credit card. The Petition does not direct us to any other disclosure in
`Maritzen that describes the PTD or the integrated system as being the size of
`a credit card.
`
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`For the above reasons, we do not find Petitioner’s first reply argument
`persuasive.
`Second, Petitioner disputes Patent Owner’s contention that many
`“personal” devices are not handheld, arguing that no person of ordinary skill
`in the art would consider Patent Owner’s examples (conventional toll
`transponders, navigation systems, and radar detectors) to be “personal”
`devices. Reply 19. Petitioner also argues that Patent Owner does not, and
`cannot, cite any support for its contention that Maritzen’s PTD is more likely
`to be mounted in the vehicle than to be handheld. Id. at 20. Petitioner
`asserts “Maritzen discloses no mounting apparatus or adhesive that could be
`used to attach the PTD to a vehicle.” Id. (citing Ex. 1018 ¶ 49).
`Patent Owner responds by arguing “given that Maritzen’s PTD is
`specifically intended to be used in a vehicle-based transaction, a [person of
`ordinary skill in the art] would have understood that the PTD was more
`likely meant to be operated while mounted in the vehicle than to be operated
`while held in the hand.” Sur-Reply 19 (citing Ex. 1017, 212:3–13; PO
`Resp. 44–45). We agree with Petitioner that Maritzen does not explicitly
`disclose mounting the PTD to a vehicle. Yet, we find Dr. Jakobsson’s
`testimony—that mounting Maritzen’s PTD to the vehicle’s dashboard, rather
`than using it as a handheld device, would avoid distracted driving—
`persuasive and a reason that one of ordinary skill in the art would
`considering mounting the PTD in the vehicle more likely. See Ex. 1017,
`212:7–13. But even if Patent Owner’s contention regarding mounting
`Maritzen’s PTD in the vehicle is wrong, that would not change our
`conclusion because Maritzen still does not disclose or suggest that the PTD
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`is a handheld device. Accordingly, Petitioner’s second reply argument is not
`persuasive.
`Third, Petitioner argues Figures 6a and 6b of Maritzen disclose
`embodiments of the PTD that are clearly handheld devices. Reply 20.
`According to Petitioner, Figure 6a shows a cellular telephone and is thus a
`handheld device. Id. Petitioner also argues that “Maritzen further explains
`that elements 630 and 660 are biometric input devices (i.e., fingerprint
`scanners), which reveals that the dimensions of the entire device are
`proportioned for handheld use.” Id. (citing Ex. 1004 ¶ 76; Ex. 1018 ¶¶ 50–
`51).
`
`In response, Patent Owner contends that this argument (as well as
`Petitioner’s other reply arguments) should be disregarded because Petitioner
`improperly introduced it for the first time in its Reply. Sur-Reply 16–17.
`Patent Owner also contends this argument fails on the merits because
`Maritzen does not disclose that the devices of Figures 6a and 6b are
`handheld devices and Petitioner cites no evidence that Figure 6a shows a
`cellular telephone. Id. at 18. Regarding Petitioner’s assertion that the
`biometric input devices of Figures 6a and 6b show that the dimensions of the
`entire device are proportioned for handheld use, Patent Owner argues that
`this assertion is wrong because Maritzen discloses using “any means of
`biometric access,” such that the biometric input devices may not be
`fingerprint sensors and their size is thus unclear. Id. at 18 n.15.
`We agree with Patent Owner that Petitioner’s argument based on
`Figures 6a and 6b of Maritzen is untimely. Under the Board’s rules, a
`petitioner’s reply “may only respond to arguments raised in the
`corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b) (2017); see
`
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`also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed.
`Cir. 2015) (discussing how, in inter partes review proceedings, a petitioner’s
`reply is “limited to a true rebuttal role” (citing 37 C.F.R. §§ 42.104(b)(5),
`42.23(b))). The petitioner’s reply is not an opportunity to raise new theories
`or arguments or to submit
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