`571-272-7822
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` Paper No. 46
` Entered: October 8, 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 IPR2018-008131
`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 Some Claims Unpatentable
`Granting In Part Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`Denying Patent Owner’s Motion to Strike
`37 C.F.R. § 42.5
`
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00176,
`have been joined as parties to this proceeding.
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`I. INTRODUCTION
`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. 1101, “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 9 (“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 IPR2019-00176, Papers 2,
`3. We granted the Motion for Joinder, and IPR2019-00176 was joined with
`this proceeding and dismissed. Paper 33, 5–6. 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
`30. 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, “Opp. Amend”), Patent Owner
`filed a Reply to Petitioner’s Opposition (Paper 31, “Reply Amend”), and
`Petitioner filed a Sur-Reply to Patent Owner’s Reply (Paper 35, “Sur-Reply
`Amend”). Patent Owner also filed a Motion to Strike (Paper 34), Petitioner
`filed an Opposition to Patent Owner’s Motion to Strike (Paper 40), and
`Patent Owner filed a Reply to Petitioner’s Opposition (Paper 42).
`Petitioner relies on the Declaration of Dr. Victor Shoup in Support of
`Petition for Inter Partes Review (Ex. 1102), the Declaration of Dr. Victor
`Shoup in Support of Petitioner’s Reply to Patent Owner’s Response
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`(Ex. 1118), the Declaration of Dr. Victor Shoup in Support of Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to Amend (Ex. 1119), the
`Declaration of Ari Juels (Ex. 1120), and the Declaration of Dr. James L.
`Mullins (Ex. 1122) in support of its contentions. Patent Owner relies on the
`Declaration of Markus Jakobsson in Support of Patent Owner’s Response
`(Ex. 2101), the Declaration of Markus Jakobsson in Support of Patent
`Owner’s Conditional Motion to Amend (Ex. 2111), and the Declaration of
`Markus Jakobsson in Support of Patent Owner’s Reply to Opposition of
`Conditional Motion to Amend (Ex. 2113) in support of its contentions.
`An oral hearing was held on July 16, 2019, and the record contains a
`transcript of this hearing. Paper 45 (“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 that Petitioner has shown by a
`preponderance of the evidence that claims 1, 2, 8, 10, 11, 21, 22, 24, 27, 30,
`and 31 of the ’826 patent are unpatentable, but has not shown by a
`preponderance of the evidence that claims 7, 14, 15, 26, and 34 are
`unpatentable. We grant Patent Owner’s Motion to Amend with respect to
`proposed substitute claim 50, but deny Patent Owner’s Motion to Amend
`with respect to proposed substitute claims 36, 37, 45, 46, 56, and 57. We
`deny Patent Owner’s Motion to Strike.
`
`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
`
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`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. 1101, (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
`“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 a
`PIN code) and biometric information (such as a fingerprint), 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
`
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`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:
`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
`
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`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.
`
`D. The Prior Art
`Petitioner’s asserted grounds of unpatentability for the challenged
`claims relies on the following references:
`June 17, 2004
`Jakobsson
`WO 2004/051585 A2
`Maritzen
`US 2004/0236632 A1 Nov. 25, 2004
`Gullman
`US 5,280,527
`Jan. 18, 1994
`Verbauwhede WO 2005/001751 A1
`Jan. 6, 2005
`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 on the following
`grounds.2 Pet. 8, 19–74.
`
`Ex. 1104
`Ex. 1105
`Ex. 1106
`Ex. 1107
`
`
`
`
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the
`’826 patent has an effective filing date before the effective date of the
`relevant amendment, the pre-AIA versions of §§ 102, 103 apply.
`
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`Claim(s) Challenged
`1, 2, 10, 11, 21, 22, 24,
`27, 30, and 31
`7, 14, 26, and 34
`8 and 15
`
`We instituted trial on all three grounds, and for all claims subject to
`each asserted ground. Dec. 2, 21.
`
`Basis
`
`Jakobsson
`Jakobsson, Verbauwhede, and
`Maritzen
`Jakobsson and Gullman
`
`35 U.S.C. §
`102
`
`103
`103
`
`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
`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 anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
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`art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
`(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
`invention, the prior art reference—in order to anticipate under 35 U.S.C.
`§ 102—must not only disclose all elements of the claim within the four
`corners of the document, but must also disclose those elements ‘arranged as
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`(Fed. Cir. 2008). Whether a reference anticipates is assessed from the
`perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
`Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive
`question regarding anticipation [i]s whether one skilled in the art would
`reasonably understand or infer from the [prior art reference’s] teaching that
`every claim element was disclosed in that single reference.”).
`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).
`For an obviousness analysis, prior art references must be “considered
`together with the knowledge of one of ordinary skill in the pertinent art.”
`
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`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
`571 F.2d 559, 562 (CCPA 1978)). Moreover, “rejections on obviousness
`grounds cannot be sustained by mere conclusory statements; instead, there
`must be some articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006).
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that 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
`including,
`for
`example,
`operating
`systems, database
`management, encryption, security algorithms, and secure
`transaction systems, though additional education can substitute
`for less work experience and vice versa.
`Pet. 5 (citing Ex. 1102 ¶¶ 26–28). Patent Owner argues that a person having
`ordinary skill in the art to which the ’826 patent pertains
`in electrical
`would have a Bachelor of Science degree
`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. 17 (citing Ex. 2101 ¶ 16). 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. at 17–18.
`Factual indicators of the level of ordinary skill in the art include “the
`various prior art approaches employed, the types of problems encountered in
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`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. U.S., 512 F.2d 1065, 1071 (Ct.
`Cl. 1975); see also Orthopedic Equip. Co. v. U.S., 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
`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
`
`
`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).
`
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`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 “enable”
`and “disable” from claims 7, 14, 26, and 34 are the only terms 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.
`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).
`Patent Owner argues that the phrase “to [. . .] enable or disable use of
`the first handheld device based on a result of the comparison” should be
`construed to mean “to expand the range of functionality available to the
`[first] user of the first handheld device based on one result of the
`comparison, and to reduce the range of functionality available to the [first]
`user of the first handheld device based on another result of the comparison.”
`PO. Resp. 23 (citing Ex. 2101 ¶ 46). Patent Owner argues its proposed
`construction is supported by the Specification, particularly in connection
`with Figure 22, which describes “a comparison at step 202 when the ‘the
`first user of the first wireless device 2110 first authenticates his or herself to
`the wireless device 2110 . . . by either entering a PIN . . . or by interacting
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`with the biometric sensor.’” Id. at 25 (citing Ex. 1101, 29:65–30:3).
`According to Patent Owner, if the comparison fails, “the device disables its
`use when it ‘shuts down as step 204,’” and if the comparison is successful,
`“the device enables its use to perform the rest of the process of Figure 22 to
`‘identify and authenticate the identity of the first user’ to a second device.”
`Id. (citing Ex. 1101, 29:52–64, 30:7–14, 30:46–31:16). Patent Owner also
`argues that its proposed construction is supported by the plain language of
`claims 7, 14, 26, and 34, which recite “enable” and “disable” as verbs that
`connote an action changing the state of the device, not merely the absence of
`action. Id. at 27 (citing Ex. 1101, 45:14–20, 45:60–64, 47:7–12, 48:24–28;
`Ex. 2101 ¶ 51).
`In reply, Petitioner argues that Patent Owner’s proposed construction
`is unduly narrow and inconsistent with the broadest reasonable standard.
`Reply 4–5. According to Petitioner, “[e]nabling or disabling use of a
`handheld device is a concept well understood by those of ordinary skill in
`the art and requires no construction.” Id. at 5 (citing Ex. 1118 ¶ 18).
`Petitioner offers a dictionary definition that defines “disable” to mean “to
`make ineffective or inoperative.” Id. (citing Ex. 1131). Although a
`definition of “enable” is not proffered, it is logical to consider this term to
`mean “to make effective or operative.”
`We agree with Petitioner that Patent Owner’s proposed construction is
`inconsistent with the broadest reasonable standard. Therefore, in the context
`of the claims and the Specification of the ’826 patent, we determine that the
`ordinary and customary meaning of “enable” is “to make effective or
`operative” and the ordinary and customary meaning of “disable” is “to make
`ineffective or inoperative.”
`
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`D. Motion to Strike
`Patent Owner moves to strike the Declaration of Ari Juels (Ex. 1120)
`that Petitioner filed with its Reply. Paper 34, 1. Patent Owner contends that
`Petitioner initially relied on Dr. Shoup’s declaration only, but over a year
`after starting this proceeding submitted Dr. Juels’ declaration with its Reply.
`Id. at 2. According to Patent Owner, there is no reason Petitioner could not
`have presented Dr. Juels’ declaration with the Petition. Id. Thus, Patent
`Owner maintains that Dr. Juels’ declaration should be stricken in accordance
`with Board guidance that a petitioner may not submit new evidence in reply
`that it could have presented earlier. Id. (citing Trial Practice Guide (Aug.
`2018 Update) at 18). Patent Owner also cites Dexcom, Inc. v. Waveform
`Technologies, Inc., IPR2016-01680, Paper 46 at 30 (PTAB Feb. 28, 2018)
`(Final Written Decision) as support for excluding evidence raised for first
`time in a reply brief. Paper 34, 2.
`In addition, Patent Owner argues that failure to strike Dr. Juels’
`declaration would be highly prejudicial because Patent Owner cannot rebut
`this new evidence with a responsive declaration from its expert. Id. at 2–3.
`Petitioner argues that “[i]t is well settled that expert declarations are
`permitted on reply where, as here, the declarations respond to arguments
`made by the patent owner or its expert.” Paper 40, 2 (citing Anacor Pharm.,
`Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018); Belden Inc. v. Berk-
`Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015); Square, Inc. v. Unwired
`Planet, LLC, CBM2014-00156, Paper 40 (PTAB Dec. 22, 2015); Hughes
`Network Systems, LLC v. California Institute of Technology, IPR2015-
`00059, Paper 42 (PTAB Apr. 21, 2016)).
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`In this case, Petitioner asserts that Dr. Juels’ declaration responds
`directly to Dr. Jakobsson’s declaration. Id. at 3 (citing Ex. 1120 ¶ 2).
`Petitioner further asserts that each point made by Dr. Juels in his declaration
`responds to a specific statement made in Dr. Jakobsson’s declaration and
`provides a table mapping each rebuttal opinion to testimony from
`Dr. Jakobsson’s declaration or his deposition. Id. at 3–5. Accordingly,
`Petitioner asserts that Dr. Juels’ declaration follows the same approach as
`the reply declaration found permissible in Belden. Id. at 5 (citing Belden,
`805 F.3d at 1078).
`Petitioner also contends that the Dexcom case cited by Patent Owner
`is distinguishable because the motion to exclude in that case was based on
`the petitioner attempting to fill in a gap in its unpatentability case by
`introducing new prior art references to satisfy a limitation. Id. (citing
`Dexcom, Paper 46 at 30). Petitioner asserts the Dr. Juels, however, has not
`advanced any new theory or evidence to gap fill. Id.
`Last, Petitioner argues that Patent Owner will not be prejudiced
`because it was able to cross-examine Dr. Juels and dispute the substance of
`his declaration at the oral hearing. Id. at 7 (citing Belden, 805 F.3d at 1081).
`In reply, Patent Owner argues that Petitioner’s contentions that Dr.
`Juels’ testimony is permissible as responding to Dr. Jakobsson’s testimony
`are incorrect as a matter of law and fact. Paper 42, 2. Patent Owner asserts
`that Belden is distinguishable because the reply declaration in Belden solely
`presented expert testimony, not factual and expert testimony as Patent
`Owner contends Dr. Juels’ declaration does. Id. at 3. Patent Owner also
`asserts that the patent owner in Belden failed to file a sur-reply, unlike this
`proceeding where Patent Owner was not authorized to file a sur-reply. Id.
`
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`Upon considerations of the parties’ arguments, we agree with
`Petitioner that Dr. Juels’ declaration responds directly to Dr. Jakobsson’s
`declaration and, thus, is a proper reply declaration. We are not persuaded by
`Patent Owner’s arguments that Belden is distinguishable.
`Accordingly, we deny Patent Owner’s Motion to Strike.
`E. Asserted Anticipation by Jakobsson
`Petitioner contends claims 1, 2, 10, 11, 21, 22, 24, 27, 30, and 31 are
`anticipated by Jakobsson. Pet. 19–55. Patent Owner disputes Petitioner’s
`contentions with respect to limitation 1[g] of claim 1 and limitation 10[e] of
`claim 10 only.4 PO Resp. 28–31. The remaining aspects of Petitioner’s
`arguments challenging claims 1, 2, 10, 11, 21, 22, 24, 27, 30, and 31 as
`anticipated by Jakobsson are uncontested. “The Board is ‘not required to
`address undisputed matters’ or arguments about limitations with which it
`was never presented.” LG Elecs., Inc. v. Conversant Wireless Licensing
`S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (quoting In re Nuvasive,
`Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). Also, we cautioned Patent Owner
`“that any arguments for patentability not raised in the response may be
`deemed waived.” Paper 10, 5; cf. 37 C.F.R. § 42.23(a) (“Any material fact
`not specifically denied may be considered admitted.”).
`
`1.
`
`Overview of Jakobsson
`Jakobsson is a published international patent application directed to an
`identity-authentication system. Ex. 1104, code (54), ¶ 2. In certain
`embodiments of Jakobsson’s system, a user is first authenticated on a user
`
`
`4 We follow the limitation identifications used by Petitioner in the Petition
`for ease of reference.
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`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.
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`2.
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`Independent Claim 1
`Limitation 1[g]
`a)
`Claim 1 of the ’826 patent recites “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.” Ex. 1101, 44:41–44. First,
`Petitioner contends that Jakobsson discloses that verifier 105 is configured
`to retrieve or receive Authentication Code A1V (i.e., the claimed second
`authentication information) for comparison with Authentication Code AD
`(i.e., the claimed first authentication information). Pet. 29 (citing Ex. 1104
`¶¶ 50, 118). According to Petitioner, one of ordinary skill in the art would
`have understood that Authentication Code A1V must be stored in memory,
`such as random-access memory (RAM), once it is derived or generated, and
`that Authentication Code A1V must be retrieved or received from memory to
`perform the comparison with Authentication Code AD. Id. at 29–30 (citing
`Ex. 1104 ¶ 58). Petitioner also argues that Jakobsson discloses that verifier
`105 can be implemented on a computer interacting with one or more other
`computer programs on the same or different computer, and one of ordinary
`skill in the art would have understood that derivation of Authentication Code
`A1V could be implemented on a different program or computer such that the
`verifier could be configured to retrieve or receive Authentication Code A1V
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`from a different program or computer. Id. at 30–31 (citing Ex. 1102 ¶ 74;
`Ex. 1104 ¶ 38).
`Second, Petitioner contends that Jakobsson discloses that verifier 105
`is configured to authenticate a plurality of users such that verifier 105
`retrieves or receives respective second authentication information for a first
`plurality of users, wherein the first plurality of users includes the user of the
`first handheld device. Id. at 31 (citing Ex. 1102 ¶ 75; Ex. 1104 ¶¶ 37, 38).
`Patent Owner argues that Jakobsson does not disclose that verifier 105
`receives or retrieves the second authentication information; rather, the
`verifier creates the second authentication information. PO Resp. 29 (citing
`Ex. 2101 ¶ 54). For example, Patent Owner points out that ¶ 118 of
`Jakobsson discloses that verifier 105 derives Authentication Code A1V from
`event code (F) and security enhancing secret (C) and argues there is no
`disclosure of receipt or retrieval of second authentication information. Id.
`(citing Ex. 1104 ¶ 118; Ex. 2101 ¶ 55).
`Patent Owner also argues that, contrary to Petitioner’s assertion, one
`of ordinary skill in the art would not have understood that Authentication
`Code A1V must be stored in memory once it is derived or generated and that
`it must be retrieved or received from memory to perform the comparison
`with Authentication Code AD. Id. at 30 (citing Ex. 2101 ¶ 56). According to
`Patent Owner, one of ordinary skill in the art “would understand the claimed
`‘receiving’ or ‘retrieving’ of second authentication information to be from
`long-term memory/storage—such as RAM.” Id. (citing Ex. 2101 ¶ 56).5
`Next, Patent Owner argues that Jakobsson does not disclose storing the
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`5 Although Patent Owner cites to ¶ 56 of Dr. Jakobsson’s Declaration, it
`appears that the relevant testimony is actually in ¶ 57.
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`second authentication code in long-term memory, and this absence of
`disclosure “demonstrates that Jakobsson’s verifier stores its created code
`within registers in the CPU, which temporarily hold the code to allow
`comparison.” Id. at 30–31 (citing Ex. 2101 ¶ 58). Patent Owner then
`contends that one of ordinary skill in the art “would understand that the
`claimed data retrieval or receipt is from long-term memory, such as RAM,
`and is not received or retrieved from registers.” Id. at 31 (citing Ex. 2101
`¶ 58). Patent Owner asserts that data is read from registers but received or
`retrieved from long-term memory. Id. (citing Ex. 2101 ¶ 58).
`In reply, Petitioner argues that it is not relevant whether Jakobsson’s
`data is stored in CPU registers, RAM, ROM, or any other known memory
`device; the data still must be retrieved or received from the memory to
`perform the authentication. Reply 6. Petitioner also argues that, contrary to
`Patent Owner’s contention, there is no distinction between reading data from
`memory and receiving or retrieving data from memory because both terms
`refer to transferring data from a memory device to a processor. Id. at 6–7.
`Petitioner adds that there is no meaningful distinction between CPU registers
`and RAM because they are both well-known memory devices. Id. at 7
`(citing Ex. 1118 ¶ 24; Ex. 1120 ¶¶ 44–50). In addition, Petitioner argues
`that Patent Owner’s assertion that Jakobsson requires storing data within
`CPU registers is incorrect because one of ordinary skill in the art would
`understand that Jakobsson’s authentication procedure can be implemented
`using RAM, ROM, CPU registers, flash memory, or any other common
`memory device. Id. at 8.
`Patent Owner disputes these arguments in its Sur-Reply. Sur-
`Reply 2–6. In particular, Patent Owner argues the plain and ordinary
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`meanings of “retrieve” and “receive” both suggest a transfer from outside to
`an entity, and CPU registers are not outside the CPU, as RAM is. Id. at 3
`(citing Ex. 2101 ¶ 58). Patent Owner also argues that
`There is also a very good reason from a design perspective that
`the claimed retrieve/receive relates to storage such as RAM, but
`read/fetch is used for access to registers. That is because the two
`operations are dramatically different. Read/fetch is a direct
`addressing method, whereas retrieving/receiving uses a complex
`mapping performed by a memory management unit (MMU).
`Read/fetch takes a known amount of time (typically one cycle),
`whereas retrieve/receive involves bus activity, and therefore
`potential bus congestion. Read/fetch is done by micro-
`instruc