UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`v.
`MAXELL, LTD.
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00202
`U.S. Patent No. 10,212,586 B2
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`v.
`MAXELL, LTD.
`Patent Owner
`___________
`
`
`
`Case No. IPR2020-00202
`U.S. Patent No. 10,212,586 B2
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ..................................................................................... 1
`I.
`II. CLAIM CONSTRUCTION ...................................................................... 2
`
`A. THE SPECIFICATION CONTRADICTS PATENT OWNER’S PROPOSED
`CONSTRUCTION ............................................................................................ 3
`
`B. THE PROSECUTION STATEMENTS ON WHICH PATENT OWNER CRITICALLY
`RELIES ARE AMBIGUOUS AND SUBJECT TO MULTIPLE REASONABLE
`INTERPRETATIONS ......................................................................................... 4
`
`C. CONSTRUING “SHORT-RANGE WIRELESS COMMUNICATION”
`IS NOT
`NECESSARY TO DETERMINE PATENTABILITY OF THE CHALLENGED CLAIMS ... 9
`1. Kirkup’s PC requesting an authentication results in bidirectional
`communication.......................................................................................11
`2. Establishing link 145 involves bidirectional communications ................14
`III. PATENT OWNER’S SCENARIO 1 IS IRRELEVANT AND ITS
`SCENARIO 2 INTERPRETATION OF KIRKUP’S TEACHINGS DEFEATS
`THE SECURITY-FOCUSED PURPOSE OF KIRKUP ..................................17
`
`A. KIRKUP DOES NOT TEACH OR SUGGEST THAT THE HED MAY AUTHORIZE
`UNLOCKING THE PC WHILE REMAINING LOCKED ITSELF ..............................18
`IV. KIRKUP TEACHES THE THREE ORDERED CONDITIONS ..........20
`
`A. KIRKUP TEACHES THE FIRST CONDITION—KIRKUP’S ¶ [0053] DESCRIBES
`UNLOCKING BOTH DEVICES WITH A SINGLE INPUT .......................................21
`
`B. KIRKUP TEACHES THE FIRST CONDITION—KIRKUP’S ¶ [0068] SUPPORTS
`THE PROPOSED COMBINATION ......................................................................23
`
`C. KIRKUP TEACHES THE SECOND AND THIRD CONDITIONS ..............................24
`V. CONCLUSION .........................................................................................26
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Response (“POR”) turns on two primary issues. First, Patent Owner
`
`argues that “performs … a short-range wireless communication” should be
`
`construed narrowly to require both transmitting and receiving. POR (Paper 17), 15-
`
`20. Although Patent Owner did not previously advance this construction, it now
`
`insists that the applicant made “repeated and consistent” statements during
`
`prosecution that mandate such a narrow interpretation. Id. This construction should
`
`be rejected at least because (1) it conflicts with the broader meaning ascribed to
`
`“short-range wireless communication” in the ’586 Patent specification and (2) the
`
`prosecution statements on which Patent Owner relies are ambiguous and subject to
`
`multiple interpretations. Further, even if the claims were so narrowly construed,
`
`Kirkup’s HED conducts multiple distinct two-way communications, satisfying even
`
`Patent Owner’s construction.
`
`Second, the claimed ordered conditions require Kirkup’s HED to begin the
`
`authentication process in a locked state before being unlocked by the user and then
`
`wirelessly sending a code to unlock the PC. Patent Owner argues that “Kirkup does
`
`not disclose the claimed three-ordered conditions because (1) either the HED is
`
`unlocked when the process in Figure 2 begins; or (2) the HED remains locked when
`
`the HED sends the authentication code to unlock the PC 110.” Id. at 22. The first
`
`scenario is irrelevant—Petitioner does not rely on an unlocked HED when the
`
`
`
`1
`
`
`
`process begins. As to the second scenario, Patent Owner is simply incorrect that
`
`Kirkup teaches or suggests the HED would unlock the PC without being unlocked
`
`itself. Under this interpretation, the user is never required to enter a PIN or password,
`
`and the PC can be unlocked without authenticating the user in any way. Because this
`
`entirely defeats Kirkup’s goal of providing a secure method for unlocking one device
`
`by authenticating the user on another device, it cannot be correct.
`
`II. CLAIM CONSTRUCTION
`Despite representing to the District Court that no claim terms required
`
`construction,1 the POR newly argues that “short-range wireless communications”
`
`means “short-range wireless transmission and reception of information.” POR
`
`(Paper 17), 16. In the context of the Challenged Claims, this proposed construction
`
`requires bidirectional communication between two claimed “mobile terminals” (or
`
`devices) while both mobile terminals (or devices) are locked (e.g., preventing
`
`access). See, e.g., ’586 Patent (Ex. 1001), Claim 1. Patent Owner primarily relies on
`
`ambiguous parentheticals included in an office response, seeking to distinguish prior
`
`art that performed no communications at all between locked devices. POR (Paper
`
`17), 16-19. Patent Owner also argues that because transceivers are capable of
`
`transmitting and receiving, the “short-range wireless communications” performed
`
`
`1 Joint Markman Statement (Ex. 1008), 1-38.
`
`
`
`2
`
`
`
`by a transceiver must necessarily include transmitting and receiving. Id. at 19-20.
`
`The Board should reject Patent Owner’s proposal. First, the specification
`
`contradicts Patent Owner’s proposed construction,
`
`repeatedly describing
`
`unidirectional “short-range wireless communications.” Second, because the
`
`prosecution statements on which Patent Owner relies are ambiguous and subject to
`
`multiple reasonable interpretations (including that the applicant referenced
`
`“transmits and receives” to stress that the prior art disclosed neither), the Board
`
`should decline to find the applicant intended to exclude the broader meaning
`
`ascribed by the specification. Finally, it is not necessary to construe this term because
`
`Kirkup satisfies even Patent Owner’s narrow proposed construction.
`
`A. The Specification Contradicts Patent Owner’s Proposed
`Construction
`
`Patent Owner insists that “short-range communications” should be narrowly
`
`construed because they are “executed by the ‘transceiver,’ which a person of skill in
`
`the art would recognize as performing transmitting and receiving.” POR (Paper 17),
`
`19. Petitioner does not dispute that transceivers are capable of transmitting and
`
`receiving, but that does not mean that every act of “short-range wireless
`
`communications” requires both. Indeed, the ’586 Patent specification repeatedly
`
`describes “short-range wireless communications” that are unidirectional. For
`
`example, Step 204’s “short-range wireless communications” consists of a single
`
`transmission:
`
`
`
`3
`
`
`
`At step S204, the mobile terminal 1 unlocks the previously registered
`terminal
`2
`through
`the
`short-range wireless
`mobile
`communications. For example, the mobile terminal 1 transmits a
`signal for instructing the mobile terminal 2 to be unlocked thereto.
`
`’586 Patent (Ex. 1001), 4:13-17 (emphasis added). Step 207’s “short-range wireless
`
`communications” also consists of a single transmission. Id. at 4:27-31.
`
`The claims of the ’586 Patent are consistent. For example, Claim 3 specifically
`
`requires the transceiver transmits a signal, thereby “performing [] short range
`
`wireless communications”:
`
`[T]he transceiver, based on the authentication input, transmits, to the
`another mobile terminal, a signal to transit the another mobile
`terminal to a locked state by performing the short-range wireless
`communications.
`Id. at 10:9-14 (emphasis added).
`
`The ’586 Patent uses “short-range wireless communications” to describe
`
`unidirectional communications performed by the transceiver and does not mandate
`
`that these communications are bidirectional.
`
`B.
`
`The Prosecution Statements on Which Patent Owner Critically
`Relies are Ambiguous and Subject to Multiple Reasonable
`Interpretations
`
`Patent Owner’s relies primarily on ambiguous parentheticals included in two
`
`office action responses. POR (Paper 17), 16-19 (pointing to instances in which the
`
`applicant included “transmits and receives information” in parentheticals when
`
`
`
`4
`
`
`
`discussing the act of communicating). Based on these parentheticals, Patent Owner
`
`asks the Board to exclude the broader meaning of unidirectional communications
`
`otherwise contemplated by the specification. As set forth below, a more reasonable
`
`interpretation is the applicant was identifying transmitting and receiving as examples
`
`of short-range communications in order to stress that the Chin reference disclosed
`
`neither.
`
`Where a party relies on prosecution history statements to excludes meaning
`
`that would otherwise be captured by the intrinsic record, those statements must be
`
`“clear and unmistakable” (3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d
`
`1315, 1325 (Fed. Cir. 2013)). Patent Owner “bears the burden of proving the
`
`existence of a clear and unmistakable disclaimer that would have been evident to
`
`one skilled in the art.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed.
`
`Cir. 2016). “Where the alleged disavowal is ambiguous, or even amenable to
`
`multiple reasonable interpretations, [the Federal Circuit has] declined to find
`
`prosecution disclaimer.” Avid Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045
`
`(Fed. Cir. 2016) (internal citations removed); SanDisk Corp. v. Memorex Prod., Inc.,
`
`415 F.3d 1278, 1287 (Fed. Cir. 2005) (“There is no ‘clear and unmistakable’
`
`disclaimer if a prosecution argument is subject to more than one reasonable
`
`interpretation[.]”).
`
`
`
`5
`
`
`
`In context, a reasonable interpretation of the statements on which Patent
`
`Owner relies is the applicant was identifying transmitting and receiving as examples
`
`of short-range communications in order to stress that the Chin reference disclosed
`
`neither. In response to an office action rejecting the claims in view of the Chin
`
`reference, the applicant amended all claims to require performing “short-range
`
`communications” while both devices are locked. ’586 File History (Ex. 1002), 270-
`
`275. The applicant explained that Chin’s first device is unlocked before entering into
`
`wireless communications range of the second device and, accordingly, does not
`
`teach any communication while the devices are locked. Id. at 266 (noting Chin’s
`
`PDA “cannot communicate (transmit and receive information) with the [PC]” while
`
`both are locked as required by the amended claims). The applicant even included
`
`illustrations to emphasize there are no communications between locked devices:
`
`
`
`6
`
`
`
`
`
`Id. at 98 (explaining, “[i]n order to unlock another device (per the Chin disclosure),
`
`a user has to unlock a device and go into communication range of the short-range
`
`wireless communications from out of communication range of the short-range
`
`wireless communications”). Accordingly, the applicant was seeking to distinguish a
`
`reference that taught no communication at all between locked devices.
`
`
`
`7
`
`
`
`In this context, the applicant reasonably focused on when communication
`
`occurs, rather than what specific communications are conducted. Indeed, the
`
`applicant’s own emphases made clear that it was focused on timing requirements:
`
`[T]hese limitations identify a condition relating to when the controller
`transmits information to the another mobile terminal. That is, the
`mobile terminal communicates (transmits and receives information)
`with the another mobile terminal before the status of the another mobile
`terminal changes from “lock” to “unlock” by receiving information
`from the mobile terminal.
`
`Id. at 102-103 (emphasis in original). The Applicant similarly emphasized this
`
`temporal focus, explaining why Chin fails to teach the amended language. Id. at 103
`
`(noting Chin does not satisfy the limitation “because communication between the
`
`PDA and the PC is NOT established before the combining, as required by the present
`
`disclosure”) (emphasis in original).
`
`Given the applicant’s temporal focus and its complete silence as to the reason
`
`for requiring any particular type of communications, a reasonable interpretation is
`
`the applicant was identifying transmitting and receiving as types of short-range
`
`communications in order to stress that the Chin reference disclosed neither. Because
`
`no prosecution disclaimer can attach if the subject statements are subject to multiple
`
`reasonable interpretations (Avid Tech., 812 F.3d at 1045), the Board need not resolve
`
`whether Patent Owner’s or Petitioner’s interpretation is correct. That multiple
`
`
`
`8
`
`
`
`interpretations are reasonable means the broader interpretation contemplated by the
`
`specification must apply.
`
`Seeking to avoid the high bar required of prosecution disclaimer, the POR
`
`cites Personalized Media for the proposition that prosecution statements can be used
`
`to construe claims even if those statements are not clear and unmistakable. POR
`
`(Paper 17), 19. Patent Owner ignores that this case turned on prosecution statements
`
`where the disputed language has no plain and ordinary meaning and where “the
`
`specification provide[d] no clear interpretation.” Personalized Media (Ex. 1061), 17.
`
`Unlike the intrinsic record at issue in Personalized Media, the ’586 Patent
`
`specification provides guidance, using the phrase to describe either unidirectional or
`
`bidirectional communications. Accordingly, Personalized Media is inapposite.
`
`C. Construing “Short-Range Wireless Communication”
`is not
`Necessary to Determine Patentability of the Challenged Claims
`
`In an IPR, claims should be construed only to the extent necessary to resolve
`
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017). Here, it is unnecessary to construe the
`
`disputed phrase because Kirkup includes two separate bidirectional communications
`
`that satisfy Patent Owner’s narrow proposal.
`
`First, whether implemented using Bluetooth or 802.11 (Wi-Fi), Kirkup’s PC
`
`requesting an authentication code would result in bidirectional communications.
`
`Patent Owner concedes (1) that Kirkup discloses a unidirectional communication
`
`
`
`9
`
`
`
`when the PC 110 requests unlocking from the HED and (2) that this communication
`
`occurs when the devices are both locked. POR (Paper 17), 25, 38. Whether that
`
`communication is implemented using Bluetooth or 802.11 (Wi-Fi)—as expressly
`
`contemplated by Kirkup and discussed in the Petition2—the unidirectional
`
`communication sent from the PC to the HED would be followed by a response,
`
`acknowledging the communication. Accordingly, the communication that Patent
`
`Owner concedes is taught by Kirkup would be bidirectional.
`
`Second, as set forth in the Petition and supporting declaration, communication
`
`link 145 is established while both devices are locked and is itself a bidirectional
`
`communication. Petition (Ex. 1001), 39 (citing Shoup Dec. (Ex. 1003), ¶ 66). Patent
`
`Owner argues the Petition failed to explain (1) when in time link 145 is established
`
`and (2) whether establishing link 145 is bidirectional. POR (Paper 17), 24. Patent
`
`Owner is wrong on both accounts. The Petition explained that link 145 is established
`
`in response to activating a locked PC (e.g., by using the keyboard or mouse) to begin
`
`the process depicted in Fig. 2. Petition (Paper 1), 39-40. And, although the Petition
`
`did not expressly address Patent Owner’s unforeseeable claim construction that
`
`requires bidirectional communication between locked devices, Dr. Shoup explained
`
`
`2 Petition (Paper 1), 24-25.
`
`
`
`10
`
`
`
`that
`
`“typical
`
`connection
`
`establishment protocols
`
`involve bidirectional
`
`communications such as a three-way handshake.” Shoup Dec. (Ex. 1003), ¶ 66.
`
`1.
`Kirkup’s PC requesting an authentication results
`bidirectional communication
`
`in
`
`The Petition established that Kirkup’s PC communicates to seek an
`
`authentication code from the HED. Petition (Ex. 1001), 39 (citing Kirkup (Ex. 1004),
`
`[0049]). Patent Owner does not dispute that this process necessarily involves “the
`
`HED transceiver ‘receiving’ the one-way request from the PC 110 to send the
`
`authentication code,” but argues that “a one-way communication . . . does not satisfy
`
`the proper construction of “short-range wireless communications[.]” POR (Paper
`
`17), 25-26 (citing Vojcic Dec. (Ex. 1022), ¶ 113, which, is a nearly verbatim
`
`recitation of the POR paragraph it is cited to support). Patent Owner and its expert
`
`ignore that, whether implemented as a Bluetooth link or 802.11 (Wi-Fi) link, the
`
`HED would respond to the PC’s communication with an acknowledgement,
`
`resulting in bidirectional communications.
`
`Kirkup explains
`
`that “[w]ireless communication
`
`link 145 may [be
`
`implemented using] short-range radio frequency communications, such as those
`
`specified by the Bluetooth or 802.11 standards.” Kirkup (Ex. 1004), [0067]; Petition
`
`(Paper 1), 24-25 (discussing the same and noting the ’586 Patent identifies the same
`
`standards as exemplary technologies for its “short-range wireless communications”).
`
`It was well established in the field of wireless communications that such wireless
`
`
`
`11
`
`
`
`links are, by their nature, less reliable than wired communication links. Shoup Supp.
`
`Dec. (Ex. 1056), ¶ 9 (describing how noise, interference, and fading can cause a
`
`transmitted packet to not be received by the intended recipient). To improve their
`
`reliability, many commonly used wireless communication protocols, Bluetooth and
`
`802.11, make use of “acknowledgement” or “ACK” packets that confirm receipt of
`
`information transmitted across the wireless channel. Id. If the original sender does
`
`not receive the ACK packet, it assumes that the data packet was lost and retransmits
`
`it. Id. In this way, a reliable communication link is established over an unreliable
`
`wireless communications medium.
`
`For 802.11, a 2002 AT&T research paper explains that “[t]he 802.11
`
`specification requires a receiver to send an ACK for each packet that is successfully
`
`received.” Leung (Ex. 1059), 3; see also Nedeltchev (Ex. 1058), 15 (a 2001 overview
`
`of the 802.11 standard, explaining that “the transmitting station is not allowed to
`
`transmit a new fragment until . . . it receives an ACK”); Shoup Supp. Dec. (Ex. 1056),
`
`¶ 11-13 (discussing the same). It was also well established at the time that Bluetooth
`
`messages required ACKs. For example, a 2001 book on the Bluetooth standard
`
`explained that data “exchanges are all acknowledged and retransmitted as
`
`appropriate.” Miller (Ex. 1057), 100-101 (identifying two types of Bluetooth
`
`communications—standard ACL BB_PDU data exchanges and high priority SCO
`
`links, which are reserved for telephony-grade voice audio); Shoup Supp. Dec. (Ex.
`
`
`
`12
`
`
`
`1056), ¶ 14-15 (discussing the same and concluding that acknowledgements would
`
`be mandatory if Kirkup’s link 145 were appropriately implemented as an ACL
`
`BB_PDU data
`
`link). Given
`
`the wide
`
`industry recognition of mandatory
`
`acknowledgements at the time of Kirkup’s disclosure, a POSITA would have
`
`understood that Kirkup’s contemplated 802.11 and Bluetooth implementations of
`
`wireless link 145 would have utilized the mandatory ACK messages. Id. at ¶¶ 13,
`
`15.
`
`To the extent Patent Owner seeks to distinguish an ACK based on its content
`
`purpose, such a distinction finds no support in the record. Patent Owner’s proposed
`
`construction does not demand any specific information is exchanged in the
`
`bidirectional communications, and its expert, Dr. Vojcic, conceded that the ’586
`
`Patent provides no support such a requirement. Vojcic Trans. (Ex. 1060), 8:15-9:20
`
`(confirming steps 801 and 802 provide support for the disputed “short-range wireless
`
`communications” limitations); 10:13-12:3 (confirming the ’586 Patent does not
`
`teach any specific information communicated in steps 801 or 802). Dr. Vojcic did
`
`suggest the ’586 disclosure “implies” that “control messages” are exchanged in order
`
`to identify a previously registered terminal. Id. at 11:23-12:23. Even if this
`
`characterization of the ’586 Patent disclosure were further required of Patent
`
`Owner’s proposed construction, a POSITA would have understood that ACKs are
`
`control messages that contain information sufficient to identify the communicating
`
`
`
`13
`
`
`
`parties such that a prior registration could be confirmed. Shoup Supp. Dec. (Ex.
`
`1056), ¶ 10 (confirming that ACK packets are one type of control message, and that
`
`the process would enable a prior registration to be checked). Accordingly, Kirkup
`
`teaches a “short-range wireless communication” even under the narrowest possible
`
`view of Patent Owner’s construction.
`
`2. Establishing link 145 involves bidirectional communications
`
`In addition to the bidirectional communications describe above, there is a
`
`separate bidirectional communication process
`
`that occurs when wireless
`
`communication link 145 is initially established. The Petition explained that Kirkup’s
`
`authentication process (as illustrated in Fig. 2) begins at step 205 when a user
`
`“indicates her desire to be authenticated as an authorized user of PC 110” by
`
`“activat[ing] the PC 110” by “typing on the keyboard or moving the mouse.” Petition
`
`(Paper 1), 34-36. The Petition goes on to establish that, “upon activation,” wireless
`
`communication link 145 is established with the HED, which allows PC 110 to seek
`
`the authentication code. Id. at 39 (citing Shoup Dec. (Ex. 1003), ¶ 66).
`
`Patent Owner first argues that the Petition failed to explain when in time link
`
`145 is established. POR (Paper 17), 24 (arguing the Petition merely established the
`
`link is established “at some point in time”). No so. The Petition was clear that link
`
`145 is established “upon activation,” which is the point at which the authentication
`
`process illustrated in Fig. 2 begins. Petition (Paper 1), 39; see also id. at 41 (noting
`
`
`
`14
`
`
`
`the communication takes place when “the user approache[s] and activate[s] PC
`
`110”). The petition cited Dr. Shoup’s declaration in support. Petition (Paper 1), 39.
`
`He was similarly clear “that the purpose of establishing this link is for PC 110 to
`
`seek (and access) the authentication code upon activation.” Shoup Dec. (Ex. 1003),
`
`¶ 66 (citing Kirkup, ¶ [0049] for its teaching that PC “automatically seek[s the]
`
`authentication code in response to activation”). Accordingly, the Petition identified
`
`a timeframe for establishing link 145.
`
`Patent Owner next argues that Petitioner failed to address “what the
`
`establishment of communication link 145 by handheld device 120’s short-range
`
`communication subsystem 340 consists of—e.g., transmission, reception, or both.”
`
`POR (Paper 17), 24. Because Patent Owner previously contended no claim terms
`
`required construction, Petitioner did not anticipate the bidirectional requirement now
`
`advocated and, as a result, the Petition did not expressly discuss that establishing
`
`communication link 145 involves bidirectional communications. Dr. Shoup,
`
`however, did explain that establishing link would be bidirectional:
`
`I would further understand that in order to communicate wirelessly
`with PC 110, handheld electronic device uses short-range
`communication subsystem 340 to establish communication link 145
`. . . . Establishing the communication in this way would require
`“performing, via
`the
`transceiver, … short-range wireless
`communication.” For example, typical connection establishment
`
`
`
`15
`
`
`
`protocols involve bidirectional communications such as a three-
`way handshake.
`Shoup Dec. (Ex. 1003), ¶ 66 (emphasis added). Accordingly, Petition did in fact
`
`describe the nature of establishing link 145.
`
`Patent Owner also briefly suggests that Petitioner’s evidence fails to establish
`
`that the PC and HED are locked when link 145 is established, focusing solely on
`
`whether paragraph 49 from Kirkup demonstrates this point. POR (Paper 17), 24
`
`(claiming “paragraph 49 of Kirkup is unhelpful to show element 1(f) is met as it does
`
`not indicate whether the HED is locked or unlocked”). It is unclear why Patent
`
`Owner focuses on this single paragraph. Petitioner’s case was not so limited. See,
`
`e.g., Petition (Paper 1), 41 (citing Kirkup, ¶ [0053] for its teaching that a single input
`
`allows a user to “unlock both the PC 110 and the handheld electronic device 120”).
`
`In other words, because the requested authorization can be used to “unlock both” the
`
`PC and HED, both devices must necessarily be in a locked state when the
`
`authorization request is received.
`
`In sum, even if Patent Owner’s narrow construction were adopted, Kirkup
`
`teaches bidirectional communications that satisfy this construction in two separate
`
`and distinct ways.
`
`
`
`16
`
`
`
`III. PATENT OWNER’S SCENARIO 1 IS IRRELEVANT AND ITS
`SCENARIO 2 INTERPRETATION OF KIRKUP’S TEACHINGS DEFEATS
`THE SECURITY-FOCUSED PURPOSE OF KIRKUP
`
`Patent Owner argues that “Kirkup does not disclose the claimed three-ordered
`
`conditions because (1) either the HED is unlocked when the process in Figure 2
`
`begins; or (2) the HED remains locked when the HED sends the authentication code
`
`to unlock the PC 110.” POR (Paper 17), 22.
`
`Although Patent Owner dedicates a significant portion of its POR to the first
`
`scenario (POR (Paper 17), 26-35), this discussion is entirely irrelevant. Petitioner
`
`does not dispute that Kirkup contemplates scenarios in which the HED is unlocked
`
`when the authentication process begins. But the proposed grounds do not rely on
`
`them. Instead, the Petition focuses on scenarios in which the authentication process
`
`begins with a locked HED. See, e.g., Petition (Paper 1), 13-14, 37 (highlighting
`
`Kirkup’s teaching that a user may “unlock both the PC 110 and the [HED] 120 by
`
`simply inputting one authorization code” and emphasizing that “both devices are
`
`locked” “when the described authentication process begins (at step 205)”).
`
`Patent Owner does not dispute that Kirkup teaches the authentication process
`
`beginning with a locked HED. POR (Paper 17), 9 (recognizing “a second scenario”
`
`where the authorization process proceeds with a “locked HED”), 36-41 (describing
`
`“Scenario 2” in which the authentication process occurs with the HED in a locked
`
`state). But Patent Owner argues that the HED remains locked through the process
`
`
`
`17
`
`
`
`until after a code has been sent to unlock the PC. Id. at 40-41 (“Scenario 2 in Kirkup
`
`cannot meet the claimed ordered conditions as the second mobile terminal (PC 110)
`
`is unlocked before the first mobile terminal, (HED), which is violative of elements
`
`1(d) and 1(g).”). Under this interpretation, the user is never required to enter a PIN
`
`or password, and the PC can be unlocked without authenticating the user in any way.
`
`Because this entirely defeats Kirkup’s goal of providing a secure method for
`
`unlocking one device by authenticating the user on another device, it cannot be
`
`correct, and Patent Owner’s mischaracterizations should be rejected.
`
`A. Kirkup Does Not Teach or Suggest that the HED May Authorize
`Unlocking the PC while Remaining Locked Itself
`
`Patent Owner’s convoluted Scenario 2 interpretation concedes that Kirkup
`
`teaches an authorization process that begins with a locked HED, but proposes that
`
`the HED remains locked even while it provides an authentication code to the PC.
`
`POR (Paper 17), 38. Patent Owner’s interpretation turns entirely on misinterpreting
`
`Kirkup’s teaching at paragraph [0057] as open to two distinct interpretations. Id. at
`
`36-41 (arguing “[a] POSITA can read paragraph 57 of Kirkup one of two ways”).
`
`The first possible interpretation “is simply articulating Scenario 1” in which the HED
`
`begins unlocked. Id. at 37-38. The second possible interpretation, accordingly to
`
`Patent Owner, describes the HED remaining locked throughout the process such that
`
`“the user respond[s] simply ‘yes’ or ‘no’ to an authorization [request from the PC]
`
`while the user interface is still locked on the HED.” Id. at 38; see also Vojcic Trans.
`
`
`
`18
`
`
`
`(Ex. 1060), 32:9-15 (confirming he interprets paragraph 57 to “allows the user to
`
`click yes or ok on the locked [HED]”).
`
`Patent Owner and its expert are wrong. Paragraph [0057] is part of a broader
`
`disclosure in Kirkup that describes two alternative configurations for authenticating
`
`a user and releasing an unlock code—a two-code process and a one-code process:
`
`Depending on the configuration . . . , the user may be required to input
`the password in order to unlock the user interface of the [HED], and
`subsequently input the PIN code in order to authorize access to the
`authentication code stored on the smart-card. Alternatively, once the
`handheld electronic device 120 is unlocked by entry of an
`appropriate PIN code or password, it may be configured to not
`require subsequent entry of any further user identification code in
`order to access the authentication code on the smart-card.
`Kirkup (Ex. 1004), ¶ [0054] (emphasis added). Paragraphs [0055]-[0056] describe
`
`details of the two-code process. Id. at ¶ [0055] (“If the [HED] is configured so as to
`
`require entry of a user identification code prior to enabling access to the
`
`authentication code . . . .”). And paragraph [0057] describes the one-code process:
`
`Where the [HED] is configured so as not to require entry of a user
`identification code prior to access of the authentication code on the
`smart-card, the authentication code may be provided to the PC 110
`automatically upon establishment of communication link 115 or in
`response to a simple authorization action performed by the user. For
`example, the authorization action may be responding “yes” or “ok”
`
`
`
`19
`
`
`
`to a question in a dialog box on the user interface asking "ok to provide
`authorization code?”.
`Id. at ¶ [0057] (emphasis added). As Kirkup expressly notes in paragraph [0054],
`
`even the one-code process requires the HED to be “unlocked by entry of an
`
`appropriate PIN code or password.” Id. at ¶ [0054].
`
`Were Patent Owner correct that unlocking the HED is not required, a user
`
`could unlock both devices PC without providing any authentication whatsoever.
`
`This would allow a malicious user with physical access to unlock the user’s PC
`
`without a password or PIN. Such an insecure arrangement flies in the face of
`
`Kirkup’s focus on the importance of security. Indeed, Kirkup’s title is “Method,
`
`System, and Device for Authenticating a user,” and it repeatedly stresses the
`
`importance of authenticating users to provide different levels of security. See, e.g.,
`
`id. at ¶ [0042] (“If greater security is desired, the handheld electronic device can
`
`be configured to require entry of a user code”); [0057] (“While such an
`
`authorization action by the user provides more security than allowing automatic
`
`access to the authorization code on the smart-card, it is not as secure as providing a
`
`proper user identification code, such as a PIN code or password.”).
`
`IV. KIRKUP TEACHES THE THREE ORDERED CONDITIONS
`Patent Owner concludes with “additional reasons” Kirkup allegedly fails to
`
`teach the three ordered conditions of the Challenged Claims. As set forth below,
`
`each either mischaracterizes the Petition, Kirkup, or both.
`
`
`
`20
`
`
`
`A. Kirkup Teaches the First Condition—Kirkup’s ¶ [0053] Describes
`Unlocking Both Devices with a Single Input
`
`The first condition, claim limitation 1(e), requires that the devices (mapped to
`
`Kirkup’s HED and PC) are both locked and are in communications range when the
`
`process begins. The Petition cite Kirkup for its teaching that the process begins by
`
`activating the PC (e.g., moving the mouse), after which the user provides an
`
`identification code through the HED such that PC is unlocked via communications
`
`over link 145. Petition (Paper 1), 35-36 (discussing Kirkup, ¶¶ [0048] and [0068]).
`
`Demonstrating that both devices are locked when the PC is activated, the Petition
`
`points to Kirkup, ¶ [0053], which teaches the unlocking process is able to “unlock
`
`both the PC [and HED] by simply inputting one authorization code.” Id. at 36-37
`
`(citing Shoup Dec. (Ex. 1003), ¶¶ 62-64 for his analysis of these Kirkup disclosures).
`
`Patent Owner does not directly challenge that Kirkup’s paragraph [0053]
`
`teaches unlocking both dev
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
