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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`_____________
`
`Case IPR2018-00812 (Patent 8,856,539 B2)
`Case CBM2018-00024 (Patent 8,577,813 B2)
`Case CBM2018-00025 (Patent 8,577,813 B2)
`____________
`
`Record of Oral Hearing
`Held: August 27, 2019
`_____________
`
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`
`
`
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`
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`
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`
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`MARK SELWYN, ESQUIRE
`WILMERHALE
`950 Page Mill Road
`Palo Alto, CA 94304
`650-858-6031
`
`
`MONICA GREWAL, ESQUIRE
`WILMERHALE
`60 State Street
`Boston, MA 02109
`617-526-6223
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`CHRIS MATHEWS, ESQUIRE
`QUINN EMANUEL
`865 South Figueroa Street
`10th Floor
`Los Angeles, CA 90017
`213-443-3261
`
`
`ALSO PRESENT:
`
`
`DEREK A. GOSMA, MATTHEW A. ARGENTI, and ANDREW N.
`STEIN, ON BEHALF OF THE PETITIONER
`
`JAMES GLASS, RAZMIG MESSERIAN, TIGRAN GULEJIAN, and
`JORDAN B. KAERICHER, ON BEHALF OF PATENT OWNER
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, August 27,
`2019, commencing at 12:04 p.m., at the Texas Regional Office of the United
`States Patent and Trademark Office, 207 South Houston Street, Suite 159,
`Dallas, Texas 75202.
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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`P R O C E E D I N G S
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`2:04 p.m.
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` JUDGE BRADEN: Please be seated.
` Judge Scanlon, Judge Melvin, are you both ready to
`go?
` JUDGE MELVIN: I am.
` JUDGE SCANLON: Yes, I am.
` JUDGE BRADEN: Very good. Court reporter, are you
`ready to go?
` THE COURT REPORTER: Yes, ma’am.
` JUDGE BRADEN: Excellent. Good afternoon, everyone.
`We’re convened here today for oral arguments in IPR2018-00812,
`which challenges U.S. Patent No. 8,856,539; as well as
`CBM2018-00024, and CBM2018-00025, both of which challenge U.S.
`Patent No. 8,577,813.
` I am Judge Braden. Appearing remotely, as you can
`see, are my colleagues Judge Melvin and Judge Scanlon. As
`Judge Melvin and Scanlon are appearing via video, we require
`counselor to speak directly into the microphone at the podium
`when talking, and to identify specific slide numbers when
`referring to the demonstratives.
` Per the hearing order in these cases, each party has
`90 minutes total time to argue their cases. Petitioner, Apple
`Inc., has the ultimate burden of establishing unpatentability;
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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`therefore, Petitioner will open the hearing by presenting its
`case as presented in its petitions regarding the alleged
`unpatentability of the challenged claims. Petitioner may
`reserve rebuttal time, but no more than half of its total argument time.
` Thereafter, Patent Owner, Universal Secure Registry,
`LLC, will respond to Petitioner’s arguments. Patent Owner may
`reserve sur-rebuttal time of no more than half of its total
`argument time to respond to Petitioner‘s rebuttal. Otherwise,
`the parties may use their allotted time to discuss the three
`cases and Patent Owner’s pending motions to amend and to
`strike in any order they choose.
` We ask, however, that you make it clear which case,
`claims, or motions you are addressing. In order to ensure
`clarity of record following the hearing, please provide the
`court reporter with a list of names and word spellings; unless
`you have already done so.
` Lastly, we ask that the parties hold any objections
`regarding a party‘s arguments until it is their time at the
`podium. To be clear, we will not take objections during a
`party’s argument. You must wait until it is your time at the
`podium to note any objections. I will maintain a clock; I
`suggest you also maintain a clock. And I will inform the
`parties when they have five minutes left. Let’s go ahead and
`get started with appearances for both sides. We will start
`with Petitioner.
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`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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` MR. SELWYN: Good morning, Your Honor. Mark Selwyn
`for Petitioner, Apple. With me is lead counsel Monica Grewal.
` JUDGE BRADEN: Good afternoon. And Patent Owner?
` MR. MATHEWS: Going to take your instructions so
`that the other Judges can hear me. Good afternoon, Your
`Honors. Chris Mathews on behalf of Universal Secure Registry
`from Quinn Emanuel Urquhart & Sullivan. Joining me at the
`table is Razmig Messerian, also from Quinn Emanuel, lead
`counsel, Jim Glass, and Tigran Guledjian, and Jordan
`Kaericher, also all from Quinn Emanuel on behalf of Universal
`Secure Registry in present.
` And I want to just add that the client had intended,
`as they have in prior hearings, to attend, but their flight
`this morning was delayed due to thunderstorms for four hours,
`and so they’re going to be able to arrive here about 2:30.
`Thinking that probably wouldn’t be able to work, they decided
`to forego coming, but they were very interested in today’s
`hearing.
` JUDGE BRADEN: Well, we understand and we appreciate it,
`and welcome you all here to Dallas at the Texas Regional
`Office of the United States Patent and Trademark Office, so
`thank you all for coming down here to Texas.
` Petitioner, do you wish to reserve any rebuttal
`time?
` MR. SELWYN: Your Honor, we do. We would like to
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`CBM2018-00024 (Patent 8,577,813 B2)
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`reserve 40 minutes for rebuttal.
` JUDGE BRADEN: All right. Very good. And when you
`are ready, you may proceed with your arguments.
` MR. SELWYN: Good afternoon, my name is Mark Selwyn,
`and together with my colleague and lead counsel, Monica
`Grewal, we represent the petitioner, Apple --
` JUDGE SCANLON: Excuse me. This is Judge Scanlon
`and we’re not able to hear here in Detroit.
` JUDGE BRADEN: Is the green light on?
` JUDGE SCANLON: I don’t know if the microphone is on
`or not.
` JUDGE BRADEN: Is the green light on for that
`microphone?
` MR. SELWYN: It’s not. Now it is. Is that better?
` JUDGE SCANLON: Much better, thank you.
` MR. SELWYN: Very good.
` JUDGE BRADEN: Perhaps you can repeat what you
`started saying?
` MR. SELWYN: Sure. My name is Mark Selwyn and
`together with my colleague and lead counsel, Monica Grewal, we
`represent the petitioner, Apple. With us in the hearing room
`today from Apple is Andrew Stein, senior IP litigation
`counsel, as well as Derek Gosma from WilmerHale.
` With the Board’s approval, as I mentioned, we expect
`to spend about 50 minutes in our opening presentation and will
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`CBM2018-00024 (Patent 8,577,813 B2)
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`reserve the balance of our time for rebuttal. To the extent
`that USR makes any arguments with respect to its conditional
`motion to amend for the ’539 Patent, Ms. Grewal will address
`that in rebuttal.
` We’ve submitted demonstratives, as Your Honors know,
`which we’ll work from today. I will begin today with the two
`’813 CBM’s. I will begin by explaining why the ’813 Patent
`qualifies as a CBM. Next, I will discuss reasons to combine
`the references on which we’re relying for CBM 24. Then, I
`will turn to the issues that are raise by USR in its surreply,
`and I will try to address a number of those.
` After that, I will turn to the other CBM for the
`’813, CBM 25, and address, briefly, again, reasons to combine
`the references on which we are relying. And I will address
`the arguments that are raised by USR in its surreply. Then, I
`will turn to the ’539 IPR, focusing, again, on the issues
`raised by USR in its surreply; to the extent that time
`permits.
` So I’m going to begin with CBM 24, the ’813 Patent,
`and in particular, Slide 4. And I’m going to address first, a
`threshold question of whether the ’813 Patent qualifies as a
`CBM. USR doesn’t dispute that they ’813 Patent claims a
`method and apparatus for a financial product or service; and
`the sole dispute is whether the technological invention
`exception applies. Whether a patent qualifies for such
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`CBM2018-00024 (Patent 8,577,813 B2)
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`exception is defined in Section 42.301(b) of the code. And as
`Slide 5 shows, Part B lays out two requirements for the patent
`to qualify for the exception. And what that means is if it
`fails either requirement, it is not a technological invention.
` Turning to Slide 6, the first prong looks at whether
`the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art. And
`as we’ve explained in our petitions, the ’813 Patent fails
`that prong. If you look at the patent itself, it admits that
`the system comprises generic components that are off the
`shelf, used in their intended conventional ways. And we have
`some quotes on this slide where the patent says that the
`system may be a general-purpose computer --
` JUDGE BRADEN: Sorry, Counselor. Could you go ahead
`and skip to the specific claims that are challenged?
` MR. SELWYN: Certainly.
` JUDGE BRADEN: And I noticed that on Slide 8 you
`have Claim 16, which is a method claim. I’m not sure if you
`have Claim 1 in here, because that’s the one that actually
`piques my interest.
` MR. SELWYN: I don’t have Claim 1 in here, but I can
`address Claim 1 and Claim 16 at the same time for -- because
`for CBM purposes, they raise a similar issue. And that is,
`all of the components that are in both of those claims are
`generic components, viewed individually. And if you think of
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`CBM2018-00024 (Patent 8,577,813 B2)
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`them as a whole, they’re all used in conventional intended
`ways.
` That is, if you look, for example, at Claim 16 on
`Slide 18, you see authenticating, activating, generating,
`receiving, communicating; all of those are standard computer
`and network functions, and the patent doesn’t describe any new
`technology for doing any of those things. The same is true
`for Claim 1. The generic components of the system are not
`combined or ordered as a whole in any unexpected way. That
`is, all of the components are doing the things that you would
`ordinarily expect components to do.
` The claims -- and I’m speaking both about Claims 1
`and 16 -- don’t claim any particular order of steps and listed
`order is -- the listed implementation is a conventional one.
`If we go to Slide 9, this is the portion of the institution
`decision where the board found that the ’813 Patent is not a
`technological invention because it fails the first prong. And
`specifically, the board found, first, that each claims step is
`a technological feature known in the art, and second, that the
`steps collectively appear to be implemented in a conventional
`manner.
` So what happened subsequent to the ID in the
`evidence in this matter? Well, we deposed Dr. Jakobsson,
`USR’s expert, a number of times. If we turn to Slide 10
`through 16, there’s some of the testimony that Dr. Jakobsson
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`CBM2018-00024 (Patent 8,577,813 B2)
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`provided that confirms that none of the technology used by the
`’813 Patent was novel. On Slide 10, for example, we show the
`testimony where he admits that the patent doesn’t invent a new
`biometric sensor, a new user interface, or a new form of
`fingerprint sensors.
` JUDGE BRADEN: Okay. So, very good. We understand
`that under Rule 42.301(b) that the argument is, is that the
`technological feature that’s part of the claim subject matter
`as a whole. Your argument is, is that it’s not novel and that
`it was obvious over the prior art. I understand.
` Let’s touch on two things, if you would, please?
`The technical problem using a -- that it’s solving a technical
`problem using a technical solution, because I believe, and I’m
`not -- I don’t want to put words into Patent Owner’s mouth,
`there -- I believe that they were saying that the decision on
`institution conflated these two portions of the rule. And
`that their claim, I believe that they specifically talked
`about Claim 1, really was directed at solving a technical
`problem of this point-of-sale device and, you know, increasing
`security for it.
` So I would like you to discuss that, and I would
`also like you to discuss the IBG case -- it’s IBG LLC v. Trading Techs. Int'l,
`Inc., 757 F. App'x 1004 (Fed. Cir. 2019)
`. So if you could address those two points,
`thank you.
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` MR. SELWYN: So actually, the first issue that’s
`raised by USR of conflating the first and second prongs, the
`ID didn’t do that at all. The ID addressed the first prong
`and because it failed the first prong, and because it failed
`the first prong there was no need to address the second prong.
` To your question about, well, what about the second
`prong; does it fail the second prong as well? If we turn to
`Slide 20, we have also established that the patent fails the
`second prong because the claim subject matter as a whole
`doesn’t solve a technical problem using a technical solution.
`So how should Your Honors address that question? Well, to
`analyze that prong one needs to look at how the specification
`describes the problem allegedly solved by the claimed
`invention and we’ve cited various cases for that on Page 16 of
`our petition.
` The alleged problem is shown here on this slide and
`it’s not a technical one. The problem that’s described is
`authenticating a user to control access to information stored
`in a particular location. Now, while computers are now often
`used to make that process of authenticating identity and
`improving the security of transactions, the problem that’s
`described in the patent is at least as old as banking, if not
`as old as trade itself. Which, to say it’s not a technical
`problem, it’s an age-old problem that computers are now being
`applied to. So if you apply the test in Versata of looking at
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`this in the second prong, it fails that as well.
` If we turn to Slide 21, here we have the
`specification indicating that known technology can be used to
`achieve the desired result. And for that reason, too, the
`patent doesn’t solve a technical problem with a technical
`solution. And I’ve referred Your Honors to the cases that
`we’ve cited on Pages 16 through 18 of the petition for that.
`Which is to say, in addressing the second prong, simply using
`a general-purpose computer to carry out uninventive steps
`doesn’t make the invention a technical invention; and again,
`that’s the Versata case, that’s the Blue Calypso case.
` As described in the ’813 Patent, the claim subject
`matter is merely using generic components -- generic computer
`components to address a problem that is age-old, and
`therefore, it fails the second prong as well. As to the IBG --
`have I answered Your Honors’ question?
` JUDGE BRADEN: Yes, thank you.
` MR. SELWYN: As to the IBG case, if we can turn to
`Slide 22, USR cites the IBG case extensively, both in its POR
`and again, in its surreply. We would suggest the IBG case has
`no application here whatsoever. In the IBG case, the Federal
`Circuit had already previously found that two of the patents
`at issue were patent-eligible under Section 101; which is to
`say there was a case prior to IBG, that case was called
`Technology Tech. against CQG, where two of the same patents
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`were allied and assessed by the Federal Circuit.
` And the Federal Circuit found in that case that the
`claim subject matter is directed to a specific improvement in
`the way computers operate, which is a technological
`invention. Here, USR doesn’t even claim that it’s improved
`the way computers operate. So what happened in IBG is that
`following the Federal Circuit’s CQG decision, the Board
`concluded via final written decision, that the two patents in
`suit were also eligible under Section 101.
` So USR, in relying on IBG is ignoring that, in that
`case there was a prior Federal Circuit decision, there was a
`prior final written decision; both of which held that two
`patents were patent-eligible under Section 101 because they
`were directed to a technological invention. So in that
`situation, the Federal Circuit found that it would be
`inconsistent to find that two related patents were not
`technological inventions for purposes of CBM eligibility. And
`that’s a very different situation than what we have here.
` Here, we have no Federal Circuit decision, we have
`no final written decision by the board upholding one of
`eligibility.
` JUDGE BRADEN: Sorry, I just want to make sure I
`understand. So for -- what you’re saying is that in the prior
`District Court litigation, the District Court had come out and
`said this was a technological solution -- this was a
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`technological improvement. That these claims are 101 eligible
`because of this, not they’re 101 eligible because they’re not
`an abstract idea?
` MR. SELWYN: Correct. The Federal Circuit found
`that two of the patents improved the way computers operate in
`a prior decision. And then, in the IBG case, the Federal
`Circuit was reviewing a final written decision where the board
`had concluded that while the patents were patent-eligible,
`that they qualified for a CBM as well. And the Federal
`Circuit said, well, wait. We decided previously two related
`patents were ones that were patent-eligible because they
`improve the way computers operate, and now you’re looking at
`two of the same patents in the same family.
` To be consistent with our prior result, you have
`should have concluded in IBG that the patents were not CBM
`eligible, because we’ve already found that the related patents
`were technological inventions. So that’s very different than
`here, where we don’t have any prior decision by the Federal
`Circuit, by the PTAB, finding that these patents were patent-
`eligible, or improve the way computers operated, and there’s
`no contention that they improve the way computers operate.
` JUDGE BRADEN: I do believe that in related
`CBM2018-00026, that we do make a comment that this is an
`improvement upon, I believe, security for mobile devices for
`authentication for point-of-sale communications. How does
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`CBM2018-00024 (Patent 8,577,813 B2)
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`that not relate to that?
` MR. SELWYN: Well, it’s a different situation
`because that relates to a CBM that was not instituted, so
`there were no findings that were made there, the CBM simply
`wasn’t instituted. In the IBG case, there certainly were
`findings. There was a prior final written decision, and there
`was a Federal Circuit decision that found that the patents
`improved the way computers operate. So under the --
` JUDGE BRADEN: Is that the same argument then in
`regards to Exhibit 2015, which is the magistrate’s report?
` MR. SELWYN: It’s a very similar argument, yes,
`because the magistrate’s report and recommendation is just
`that. It’s not a finding, it’s a report and recommendation to
`the District Court judge with our objections pending to that.
`So there is no ruling from the magistrate judge, there is a
`report and recommendation. So again, that’s not the
`circumstance that IBG presents where there was a dispositive
`decision from the Federal Circuit on the very issue that was
`before the board.
` JUDGE BRADEN: All right. And so they -- to
`Petitioner, there is no inconsistencies with those decisions
`because they’re not final decisions, they’re not pending -- or
`they didn’t go before the Federal Circuit? Is that the
`argument or are you saying that there’s -- is there something
`else, is there some other nuance in there that would make this
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`not inconsistent?
` MR. SELWYN: There --
` JUDGE BRADEN: That would make it consistent?
` MR. SELWYN: Well, additional reason that it’s
`consistent here, as we’ve pointed out if we turn to Slide 23,
`is that in this situation the patent office has found 101
`ineligibility for claims of the ’813 Patent’s five
`continuation applications. So if you’re going to consider the
`issue of consistency, it would reasonable, also, to look at
`the way the PTO has considered related applications,
`continuation applications, of the ’813 Patent. Each of those
`continuation applications has the same specification and
`similar claims to the ’813 Patent that’s at issue here.
` Now, I’m not arguing that those should be
`dispositive to Your Honors decision here, but to the extent
`that you think consistency is an issue, it would be reasonable
`to consider what is happening with those continuation
`applications as well. And on Slide 24, for example, we have
`some of the claims that have been applied for in those
`continuation applications, and you can see the great
`resemblance to the claims that are at issue here.
` So in summary, IBG doesn’t apply for at least two
`reasons. One, in IBG there was a prior Federal Circuit
`decision finding patents with -- related to the patents in
`suit, were patent-eligible because they improved the way
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
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`computers operate. That was binding on, the Federal Circuit
`said, on the board. And the board said, you should have
`listened to what we decided previously on the two related
`patents in reaching your decision. So that’s point one.
` Point two --
` JUDGE BRADEN: I want -- and I apologize for
`interrupting, I want to make sure that this is very clear that
`it is your contention, then, that the IBG case does not hold
`that anytime a case or a claim is upheld under 101, that it is
`not CBM eligible?
` MR. SELWYN: No, that’s not quite our contention
`because in IBG, again, there was a prior Federal Circuit
`decision that found the claims to be patent-eligible on the
`basis that they were improvements in computer functionality.
`That bound, the Federal Circuit said, the board. There’s
`nothing here that binds Your Honors to find CBM ineligibility
`based upon a prior decision. In IBG there was a prior
`decision that bound the board, the Federal Circuit so found,
`defined that the patent was CBM ineligible.
` JUDGE BRADEN: I want to make sure because -- I want
`to make sure that we’re not just hinging things on a binding
`decision. I want to make sure that I’m understanding your
`argument regarding this case as far as 101, because in IBG it
`says -- and I believe Patent Owner makes the argument that if
`a case has been found -- claims have been found to be patent-
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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`eligible, or they’re not ineligible under 101, then it can’t
`be reviewed under CBM because they’re per se a technological
`invention.
` MR. SELWYN: But that’s not the situation we have
`here, both because there has been no prior decision that binds
`this tribunal, and because in IBG it was decided that there
`was an improvement in the way computers operate. And that’s
`not the situation we have here. As I’ve tried to demonstrate,
`all of the components within the ’813 Patent are old,
`conventional; Dr. Jakobsson, their expert, admitted that.
` And they’re all used in intended ways, so for both
`Claim 1 and Claim 16, the implementation of those components
`is conventional. And when you think about it as a whole,
`they’re all used in a manner that you would expect them to be
`used. The components are used for their intended purpose.
`And -- well, we might get into this debate later, but the
`Claim 16, the method claim, doesn’t require any particular
`order of steps. You can do those steps in any order,
`consistent with the claim language.
` That’s further reason to show that at -- even
`viewing it as a whole, there’s nothing that is unconventional
`about the approach. Just as Your Honors found in the
`institution decision itself where first, it was found that the
`components were conventional; and second, Your Honors went on
`to look at the implementation of the steps, which is to say
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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`you viewed it as a whole and found it to be conventional too.
` JUDGE BRADEN: All right. Thank you.
` MR. SELWYN: So with that, let’s turn, if we could,
`to claim -- to Slide 28. There are three grounds in this
`proceeding, none of the references on which we are relying
`were considered during the prosecution itself. And I wanted
`to touch on reasons to combine the references on which we’re
`relying.
` So if we look to Slide 41, this is an overview of
`the reasons we say that one would combine the references on
`which we are relying. There are substantial similarities
`between each reference with respect to the key features that
`would have motivated a POSITA to borrow from each reference;
`and also shows that the combination would have been well
`within the skill level of a POSITA.
` And these similarities include that they’re in the
`same field of secure transactions; and even more specific than
`that, they all address preventing unauthorized access --
`unauthorized users from performing financial transactions.
`They all have the same basic architecture of a hand-held
`device, an intermediary, and a remote authentication server;
`and they all rely on biometric input from the user in
`generating an authentication code sent through a network to a
`server for authentication; and they use two levels of
`authentication, both local and remote.
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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` So it may try to put a little more skin on that --
`the bones there if we turn to Slide 42 and 43. These are
`examples of where all the references discuss that they’re
`designed to secure financial transactions. Maes is designed
`to prevent fraud in financial transactions such as sending
`money. The ’585 reference is also designed to secure
`financial services and records. On Slide 43 we see that
`Maritzen is directed at secure financial transactions by
`preventing a stolen PTD, the personal transaction device, to
`be used to get access to funds. And Labrou is really directed
`at a computer system for conducting purchase transactions,
`which is a type of transaction.
` Second, if we look at Slides 44 and 45, we have
`shown how all of the systems have the same basic architecture
`and the primary components. So on Slide 44, for example, you
`have Maes and the ’585 reference, which all involve a personal
`user device in yellow, communicating to an intermediary node
`in gray, and received by a remote device. Slide 45 shows the
`same for Labrou and Maritzen. And then on this issue of
`biometric information for authentication, if we look to Slides
`46 and 47, Maes discloses processing biometric data for
`authentication, the ’585 reference discloses capturing a
`biometric input for authentication.
` Likewise, on Slide 47, Maritzen discloses a
`biometric input is obtained for authentication, and Labrou
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`IPR2018-00812 (Patent 8,856,539 B2)
`CBM2018-00024 (Patent 8,577,813 B2)
`CBM2018-00025 (Patent 8,577,813 B2)
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`discloses using a biometric method for authentication. And
`it’s not surprising that they all disclose collecting
`biometric information because at the time of these prior art,
`fingerprints and other biometric information were established
`as a common method, a known method to a POSITA, for
`authenticating a user.
` Fourth, if we turn to Slides 48 and 49, all these
`references have the same basic structure of two levels of
`authentication. First, a local authentication, and then a
`second remote authentication. And if we turn to Slide 50, and
`we explain this in more detail in our petition, there’s a
`motivation to combine each of the specific features from the
`’585 reference into Maes, because doing so would make the
`system in Maes a better and more robust security system.
` So let me give you some examples. Claim 19 requires
`a seed, which is also disclosed, we argue in the ’585
`reference combination function, using a non-predictable value
`in a seed taught in the ’585 reference would enhance the
`remote authentication technique of Maes, as Apple’s expert,
`USR, has explained. Another example is shown on Slide 51.
`Claim 2, as you’ll recall, requires a discreet code associated
`with the electronic ID device, which is disclosed in the ’585
`reference. And as Dr. Shoup has explained, a POSITA would be
`motivated to add a discreet code, as taught in the ’585
`refer
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