throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` 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.
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`
`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
`
`
`
`2
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`(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
`
`
`
`3
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`4
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`5
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`
`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.
`
`
`
`6
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`7
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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.”
`
`
`
`8
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`9
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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).
`
`
`
`10
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`11
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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.”
`
`
`
`12
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`
`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)).
`
`
`
`13
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`
`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.
`
`
`
`14
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`
`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.
`
`
`
`15
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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.
`
`2.
`
`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
`
`
`
`16
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`5 Although Patent Owner cites to ¶ 56 of Dr. Jakobsson’s Declaration, it
`appears that the relevant testimony is actually in ¶ 57.
`
`
`
`17
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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
`
`
`
`18
`
`

`

`IPR2018-00813
`Patent 9,100,826 B2
`
`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket