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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC.
`Petitioner,
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`v.
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`MAXELL, LTD.,
`Patent Owner
`_______________
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`Case: IPR2020-00202
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`U.S. Patent No. 10,212,586
`_______________
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`PATENT OWNER’S SUR-REPLY IN INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,212,586
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2020-00202
`Patent No. 10,212,586
`Patent Owner Sur-Reply
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`TABLE OF CONTENTS
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`C.
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`Page
`TABLE OF AUTHORITIES ................................................................................... ii
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`CLAIM CONSTRUCTION ........................................................................... 2
`A.
`The Statements in the Prosecution History Are Clear—Short-
`Range Wireless Communications Include Transmission And
`Reception Of Information. ................................................................... 2
`B. Maxell’s Proposed Construction Does Not Contradict the
`Specification of the ’586 Patent. .......................................................... 7
`The Board Should Construe “Short-Term Wireless
`Communications” to Determine the Patentability of the Claims. ........ 9
`1.
`Apple Has Not Demonstrated “Establishing Link 145
`Involves Bidirectional Communication.” ................................ 10
`The PC’s Requesting Authentication Does Not
`Necessarily Result in Bi-Directional Communication. ........... 12
`III. KIRKUP DOES NOT TEACH THE THREE-ORDERED
`CONDITIONS .............................................................................................. 16
`A. Kirkup Does Not Teach The First Condition. .................................... 20
`B. Kirkup Does Not Teach the Second and Third Conditions. .............. 23
`IV. CONCLUSION ............................................................................................. 27
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`2.
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`TABLE OF AUTHORITIES
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`CASES
`Personalized Media Commc’ns, LLC v. Apple Inc.,
`2020 U.S. App. LEXIS 8017 (Fed. Cir. Mar. 13, 2020) ...................................... 8
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`PATENT OWNER’S EXHIBIT LIST
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`Description
`March 16, 2020 Scheduling Order
`May 31, 2019 Scheduling Order
`Docket from District Court Action
`January 8, 2020 Minute Order
`March 18, 2020 Markman Order
`August 28, 2019 Minute Order
`September 17, 2019 Minute Order
`Maxell’s Disclosure of Asserted Claims and Infringement Contentions
`Maxell’s Final Election of Asserted Claims
`Apple’s Final Election of Prior Art
`Apple’s Invalidity Contentions
`Kirkup Chart from District Court Action
`Schiffer Chart from District Court Action
`De la Huega Chart from District Court Action
`March 6, 2017 Scheduling Order from Maxell v. ZTE
`March 19, 2018 Scheduling Order from Maxell v. ZTE
`Docket from District Court Action
`Standing Order re COVID-19
`April 20, 2020 Scheduling Order from District Court Action
`Declaration of Tiffany A. Miller
`Redacted Copy of Apple Inc.’s Motion to Strike Portions of Maxell’s
`Opening Expert Reports That Exceed the Scope of Maxell’s P.R. 3-1
`Infringement Contentions And New Expert Theories Offered After
`Expert Reports
`Declaration of Branimir Vojcic, DSc (dated October 16, 2020)
`Kerberos: An Authentication Service for Computer Networks, IEEE
`Communications Magazine, September 1994
`Authentication v. Authorization Defined: What’s the Difference?,
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`Exhibit #
`2001
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
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`2022
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`2024
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`iii
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`2025
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`2028
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`2029
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`added)
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`(emphasis
`2020
`June
`Boulevard,
`Security
`(https://securityboulevard.com/2020/06/authentication-vs-
`authorization-defined-whats-the-difference-infographic/#:~:text=In,
`last visited October 14, 2020)
`Apple developer page, Authentication and Authorization (copyright
`date of 2012, updated December 13, 2012)
`Apple developer page, About Authentication, Authorization, and
`Permissions (copyright date of 2003, 2013, updated January 28, 2013)
`Mobile IP Authentication, Authorization, and Accounting, The Internet
`Society, October 2000
`The 3 “A”’s: Authentication, Authorization, Accounting, AAA and
`Network Security for Mobile Access: Radius, Diameter, EAP, PKI,
`and IP Mobility, 2005
`Deposition Transcript of Victor Shoup, Ph.D. (October 14, 2020)
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`I.
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`INTRODUCTION
`Apple’s Reply fails to meaningful rebut any of Maxell’s arguments
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`presented in its Patent Owner Response. For example, Apple’s arguments against
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`the Board construing “short-term range wireless communication” ignore the
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`unambiguous, non-exemplary statements during prosecution. Nor is Maxell’s
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`proposed construction at odds with the specification or claims of the ’586 Patent—
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`the construction is consistent with the intrinsic evidence.
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`Further, even if the Board does not adopt Maxell’s proposed construction,
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`Apple cannot demonstrate that Kirkup satisfy the three-ordered conditions required
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`in each of the challenged claims. Apple continues to misconstrue Kirkup and
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`utilize attorney argument and/or conclusory expert opinions to support its
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`erroneous conclusions. But the actual evidence is clear—Kirkup alone does not
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`disclose the challenged claims, and such omissions are fatal to Apple’s arguments.
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`Accordingly, for the reasons discussed herein and in Patent Owner’s
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`Response, Apple has failed to carry its burden to show that any challenged claim of
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`the ’586 Patent is unpatentable.
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`II. CLAIM CONSTRUCTION
`A. The Statements in the Prosecution History Are Clear—Short-
`Range Wireless Communications Include Transmission And
`Reception Of Information.
`Contrary to Apple’s assertion, Patent Owner is not advocating that “short-
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`range wireless communications” be “narrowly construed.” Paper 24 (“Reply”), at
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`3.
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` Rather, Maxell has proposed a construction—“Short-range wireless
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`transmission and reception of information”—that adheres to a plain reading of the
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`prosecution history and is consistent with the intrinsic record.
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`The statements in the prosecution history are not ambiguous or subject to
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`multiple interpretation as Apple claims. See Reply at 4-9. As stated in Patent
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`Owner’s Response (Paper No. 17), during prosecution, applicant amended the
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`independent claims to require that the transceiver of the mobile terminal perform
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`short-range wireless communications with the another mobile terminal while both
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`terminals are in a locked state:
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`Ex. 1002, at 270. See also id. at 272, 274. In the accompanying remarks, applicants
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`clarified that the “short-range wireless communication” requires that the mobile
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`terminal “transmit” and “receive” information:
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`Id. at 265.
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`Subsequently, on May 31, 2018, applicant amended the claims again, further
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`clarifying the above and placing the “second condition” required by the wherein
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`clause of the ’586 Patent’s independent claims 1, 9, and 16 into their present form:
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`Ex. 1002 at 195. See also id. at 197, 199. Applicant again clarified that the “mobile
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`terminal communicates (transmits and receives information) with the another
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`mobile terminal before the status of the another mobile terminal changes from
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`‘lock’ to ‘unlock’ by receiving information from the mobile terminal.” Id at 202-
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`203.
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`Apple seeks to discount these unambiguous statements in the prosecution
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`history by claiming that “Based on these parentheticals, Patent Owner asks the
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`Board to exclude the broader meaning of unidirectional communications otherwise
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`contemplated by the specification. As set forth below, a more reasonable
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`interpretation is the applicant was identifying transmitting and receiving as
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`examples of short-range communications in order to stress that the Chin reference
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`disclosed neither.” See Reply at 5; see also id. at 6 (“ In context, a reasonable
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`interpretation of the statements on which Patent Owner relies is the applicant was
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`identifying transmitting and receiving as examples of short-range communications
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`in order to stress that the Chin reference disclosed neither.”) Apple is wrong.
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`When applicant wanted to provide examples, it did so explicitly, repeatedly
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`using representative language such as “for example” and “inter alia”. Ex. 1002 at
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`684 (May 19, 2015, Amendment and Response to Non-Final Office Action); see
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`also Ex. 1002 at 202, 264, 334, 434, 532, 589, 632, 650 (similarly using “for
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`example”); id at 684, 685 (May 19, 2015, Amendment and Response to Non-Final
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`Office Action); see also id. at 434, 435, 532-534, 589, 632, 633, 650, 651
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`(similarly using “inter alia”)
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`Further, the applicant described Chin using parentheticals not as examples:
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`See, e.g., Ex. 1002 at 265 (March 29, 2018, Amendment and Request for
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`Continued Examination); Ex. 1002 at 203 (May 31, 2018, Amendment) (same);
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`Ex. 1002 at 120 (August 3, 2018, Amendment After Final Rejection and Request
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`Under the After Final Consideration Program (AFCP) 2.0). Any other reading of
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`these parentheticals, such as “the first computing ([for example,] which has already
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`been unlocked)” does not make any sense.1
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`Although Dr. Shoup generally discussed bi-directional communication
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`(which he concedes
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`involves
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`transmission and reception)
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`issues
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`in his
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`supplemental declaration, he notably did not provide any supplemental opinions on
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`the proprietary of Maxell’s construction. See generally Ex. 1056, ¶¶8-15; see also
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`1 Indeed, Apple’s expert, Dr. Shoup also knows how to use representative
`language. See, e.g., Ex. 1003 at 23 (“a handheld device that is already being
`carried by the user (e.g., a cell phone)”) (emphasis added), 27 (“The use of
`biometric authentication, such as fingerprint recognition, facial recognition, voice
`recognition, hand geometry recognition, etc.”) (emphasis added).
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`Ex. 1003, ¶56 (Kirkup’s “transceiver of short-range communications subsystem
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`340 transmits and receives authentication information”). Thus, despite Maxell’s
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`construction being supported by the opinion of a POSITA, Dr. Vojcic (see Ex.
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`2022, ¶¶41-50), Apple has provided no expert testimony to support its
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`“parentheticals are just examples” claim construction argument.
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`Thus, unlike the well-known instances of representative language (“for
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`example,” “inter alia,” “e.g.,” or “such as”), the applicant unambiguously and
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`repeatedly described “short-range wireless communications” (plural) as requiring
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`that the mobile terminal “transmit” and “receive” information. See Personalized
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`Media Commc’ns, LLC v. Apple Inc., 2020 U.S. App. LEXIS 8017, at *21-22 (Fed.
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`Cir. Mar. 13, 2020) (Applicants’ amendments and statements on the scope of the
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`claimed “short-range wireless communications” were “repeated and consistent,”
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`and on that basis alone “decisive” as to the appropriate scope of the claim term.)
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`B. Maxell’s Proposed Construction Does Not Contradict the
`Specification or Claims of the ’586 Patent.
`Maxell’s proposed construction of “short-range wireless communications” is
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`consistent with the specification and claims of the ’586 Patent. In each of the
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`independent claims, the “short-range wireless communications” are executed by
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`the “transceiver,” which a person of skill in the art would recognize as performing
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`transmitting and receiving.2 Indeed, Apple agrees. See Reply at 3 (“Petitioner
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`does not dispute that transceivers are capable of transmitting and receiving”).
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`Further, the specification consistently describes the mobile terminals as
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`capable of bi-directional communication:
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`The mobile terminals 1 and 2 each have a radio communication
`function, and transmit and receive a variety of information to and
`from a mobile base station. Further, the mobile terminals 1 and 2 each
`have a function of performing short-range wireless communication
`between terminals, and can transmit and receive a variety of
`information between the mobile terminals 1 and 2 by using the
`function.
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`Ex. 1001 at 2:54-61.
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`Further, the mobile terminal 1 and/or mobile terminal 2 may each
`have a wireless LAN (Local Area Network) function, and transmit
`and receive a variety of information to and from a wireless LAN
`router.
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`Id. at 3:54-57.
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`2 In claims 1 and 16, the transceiver is specifically called out as performing the
`communication, and a POSITA would understand that the transceiver performs the
`communication in the second condition (step) in method claim 9. See Ex. 2022,
`Vojcic Dec., ¶49.
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`Moreover, claim 1 states that the “when conditions are met, the controller
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`controls the mobile terminal to transmit information to the another mobile
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`terminal…” Ex. 1001 at 9:54-56.
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`Apple attempts to inject confusion as to the propriety of Maxell’s proposed
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`construction by misreading certain “steps” of Figure 2 and claim 3. See Reply at
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`3-4. But nothing in those examples demonstrate any inconsistency between
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`Maxell’s construction and the intrinsic evidence.
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`Thus, consistent with the intrinsic evidence and the understanding of a
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`POSITA (Dr. Vojcic, the only expert who offered a claim construction opinion),
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`the Board should construe “short-range wireless communications” to mean “short-
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`range wireless transmission and reception of information.” See Ex. 2022, Vojcic
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`Dec., ¶¶45-50; see also Ex. 2029, Shoup Dep., 18:3-10.
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`C. The Board
`“Short-Term Wireless
`Should Construe
`Communications” to Determine the Patentability of the Claims.
`Apple claims that it is unnecessary to construe “short-term wireless
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`communications” because doing so would not affect the patentability of the claims
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`because Kirkup discloses element 1(f) even under Maxell’s proposed construction.
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`See generally Reply at 9-16. Apple is wrong—the Board should construe the term
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`because Kirkup does not disclose element 1(f) under Maxell’s proposed
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`construction. In fact, Apple’s motivation for arguing against an express
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`construction is obvious. Apple is attempting to distance itself from the Petition’s
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`clear admission where it conceded that “the ’586 Patent thus describes the function
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`of performing short-range wireless communication as including transmitting and
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`receiving information.” Petition, at 18 (emphasis in original).
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`1.
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`Apple Has Not Demonstrated “Establishing Link 145
`Involves Bidirectional Communication.”
`In its Reply, Apple’s abandons certain of its Petition arguments then
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`misconstrues
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`the remainder of Maxell’s arguments as
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`to
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`the wireless
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`communication link 145.
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`First, in support of Apple’s argument that Kirkup disclosed the second
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`condition (element 1(f)), Dr. Shoup opined that the establishment of the wireless
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`communication link “is then tested at step 210.” Ex. 1003, ¶66. However, Apple
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`notably omited this “testing” argument in its Reply. See generally Reply at 14-16
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`(no mention of this statement from Ex. 1003, ¶66). This is unsurprising. As
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`Maxell noted, Dr. Shoup’s “testing” requirement—created out of thin air—does
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`not require one-way (or two-way) communication with the transceiver of the
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`handheld electronic (“HED,” also the alleged first mobile terminal per claim 1).
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`See Paper 17 at 25. Kirkup is completely silent on this point.
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`Apple also completely ignores Maxell’s argument that a POSITA would
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`understand that a device can perform a local check (e.g., checking that local
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`variable is set to a particularly value) to determine whether a wireless
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`communication
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`link
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`is
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`established without
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`any
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`short-range wireless
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`communication or any communication at all. See Ex. 2022, ¶112. On cross-
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`examination, Dr. Shoup agreed. See Ex. 2029, Shoup Dep., 69:9-70:10 (conceding
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`that a POSITA could check to see if the link was established by “a local check”).
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`Said differently, a POSITA would understand that checking whether the short-
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`range wireless communication link is established—which is all paragraph 78 of
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`Kirkup says—does not mean performing short-range wireless communications.
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`See Ex. 2022, ¶112. Thus, Apple and Dr. Shoup remain incorrect to suggest that
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`Kirkup’s step 210 demonstrates that short-range wireless communication has
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`occurred while both devices are in a locked state. See Reply at 14-16; see also Ex.
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`2022, Vojcic Dec., ¶112.
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`Apple attempts some misdirection rehashing temporal arguments and stating
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`that the establishing of link 145 occurs “upon activation.” Reply at 14 (citing to
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`Petition at 34-36). But those arguments are nothing more than an attempt to read
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`disclosure into Kirkup that does not exist. Neither of the two places where step
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`210 (“Is communication link established?”) is mentioned—paragraphs 78 and 82
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`of Kirkup—mention anything about when it is established and if that occurs when
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`both devices are in the locked state as element 1(f) requires. Again, at most,
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`paragraph 78 states only that the HED or PC performs a “check,” and merely
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`because bidirectional communication could occur at some point does not
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`demonstrate that such communication occurs when both devices are locked when
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`PC 110 sends out a message seeking the authentication code. See infra. Thus,
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`Apple’s claims to the contrary should be rejected.
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`2.
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`The PC’s Requesting Authentication Does Not Necessarily
`Result in Bi-Directional Communication.
`Apple devotes multiple pages in its Reply—and Dr. Shoup does the same in
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`his supplemental declaration—reciting Bluetooth communication behavior. See
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`Reply 11-14; Ex. 1056, ¶¶8-15. This discussion, however, is irrelevant in the
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`context of what Kirkup discloses regarding the unlocked status of the HED in the
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`only discussion of wireless communications. See Ex. 1004, ¶¶66-68.
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`The first set of embodiments in Kirkup are wired embodiments that are
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`disclosed up to paragraph 65, and these embodiments simply do not disclose the
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`claimed limitations for reasons discussed in Patent Owner’s Response and herein
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`above because the claims are specifically directed to wireless communications.
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`The second set of embodiments is disclosed in paragraphs 66-67 where
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`Kirkup teaches the use of wireless communication. Kirkup is completely silent on
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`“wireless communication” until paragraph 66, then discusses that Bluetooth can be
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`used as example of wireless communication in paragraph 67. See id., ¶¶66-67.
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`Maxell does not dispute that Kirkup explains that wireless communications
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`can be used in embodiments 100A, 100B, 100C, and 100D but Kirkup explicitly
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`discloses that using wireless is accompanied by its own technique of unlocking
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`where the HED is already unlocked:
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`Wireless communication link 145 may be employed in place of
`communication
`link 115 in
`any
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`the
`embodiments
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`systems 100A, 100B, 100C, 100D and 100F (described hereinafter).
`providing
`wireless
`communication
`Advantageously,
`link 145 enables a user to approach PC 110, activate the
`PC 110 and have it communicate automatically and wirelessly, for
`example
`using
`the Bluetooth
`short-range
`communication
`specification, with handheld electronic device 120 to access the user's
`authentication code (stored on the smart-card, SIM card or memory of
`the handheld electronic device) and authenticate the user. This
`example is particularly applicable to systems embodiments 100B
`and 100C (if using wireless communication link 145) and 100E,
`where the user is not required to provide a user identification
`code to release the authentication code (i.e. because the handheld
`electronic device has already received such a code and is already
`unlocked).
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`Ex. 1004, ¶68 (emphasis added). Thus, Kirkup explains that when wireless
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`communication is used including in prior embodiments (e.g., 100B and 100C), the
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`HED is already unlocked prior to HED communicating with PC 110. See id.
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`Specifically, Kirkup explains that the advantage of using wireless is that HED will
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`automatically communicate with PC 110 when HED approaches (i.e., brought
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`closer) to PC. See id. Thus, in order to allow this automatic communication HED
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`is already unlocked when it communicates with PC 110 in the first instant. See id.
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`That is the entire purpose and advantage of using wireless in Kirkup—to allow
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`HED to automatically unlock PC 110 by approaching PC110 when HED has
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`already been previously unlocked. See id.
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`Thus, incorporating a wireless link in any of Kirkup’s embodiments would
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`mean that the claimed second condition is not met because there is no short-range
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`wireless communications when both devices are locked. That is simply contrary to
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`Kirkup’s teachings in paragraph 68. See id. And without wireless communications,
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`the other embodiments of Kirkup do not teach the claim because the claim is
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`simply directed to wireless communications.
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`Neither Apple nor Dr. Shoup acknowledge these distinctions and reconcile
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`them. Instead, they appear to mix and match embodiments without ever
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`acknowledging the differences between the techniques in each embodiment.
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`Further Apple and Dr. Shoup fail to provide any rationale on why a
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`POSITA would change the disclosed techniques in Kirkup and place the HED in a
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`locked state in wireless communications embodiments to enable communications
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`when both devices are locked. Kirkup explicitly says in paragraph 68 that the
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`advantage of providing wireless is automatic communication when the HED
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`approaches PC 110. But if the HED is locked, it will not be able to automatically
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`communicate with PC 110 upon approach. This goes directly contrary to the
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`teachings of Kirkup. See, e.g., Ex. 1056, ¶¶8, 10 (Dr. Shoup, in his supplemental
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`declaration, focused on ¶66 from his original declaration, which merely cites to
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`paragraphs 49 and 68 in Kirkup to argue that there is bi-directional communication
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`occurring but ignores the status of the HED).
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`Other than hindsight, there is no explanation or rationale why the two
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`differing techniques of Kirkup would be mish-mashed in the way proposed by
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`Apple. Both sets of embodiments bring with them their own proposed techniques
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`to unlocking specific to the way the communications occur.
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`Dr. Shoup’s whole discussion about the presence of acknowledgment
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`packets and bidirectional communications is simply irrelevant because according
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`to Kirkup in the wireless scenario these packets are simply being exchanged when
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`HED is already unlocked and approaches PC 110 after being unlocked. See Ex.
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`1056, ¶¶8-15. Thus, even assuming that wired communication is replaced by
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`wireless communications as discussed in paragraphs 66-68 of Kirkup, and
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`assuming bi-directional communications (with acknowledgement messages) exist
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`as described by Dr. Shoup (see Ex. 1056, ¶¶8-15), the second condition (claim
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`element 1(f)) is not met because the bi-directional communication in wireless
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`setting is not occurring as claimed because the HED is already unlocked when PC
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`initiates the authentication request.
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`Accordingly, under Maxell’s construction for “short-range wireless
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`communications,” Kirkup does not disclose element 1(f) (the second condition).
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`III. KIRKUP DOES NOT TEACH THE THREE-ORDERED
`CONDITIONS
`Even if the Board chooses not to adopt Maxell’s construction for “short-term
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`wireless communication,” Apple fails to demonstrate that Kirkup discloses the
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`three-ordered conditions as required by claim 1.
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`First, Maxell’s discussion of Scenario 1 in its Patent Owner Response
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`(Paper 17 at 26-35 is not “entirely irrelevant” as Apple claims in its Reply. Reply
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`at 17. Rather, Maxell carefully explained that, in the context of Figure 2, the HED
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`is unlocked at the start of the flow chart in Figure 2. Paper 17 at 26-35. Indeed,
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`nothing in Kirkup’s discussion of Figure 2 in paragraphs 75-83 says otherwise and
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`Dr. Shoup was unable to point to anything in these paragraphs to indicate that the
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`HED is locked when the process in Figure 2 begins. See Ex. 1004, ¶¶75-83; Paper
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`17 at 28-29 (citing to Ex. 2029, Shoup Deposition citations). And, as Dr. Shoup
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`concedes, if the HED is unlocked at the start of Figure 2, Kirkup does not disclose
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`the three-ordered conditions. See Ex. 2029, 65:12-66:2.
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`Second, far from being “convoluted,” as shown below, Maxell’s discussion
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`of Scenario 2 demonstrates that the portions of Kirkup Apple cites to purportedly
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`support its arguments do not, in fact, show that the three-ordered conditions are
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`met. See Reply at 17-18. Maxell is not misinterpreting paragraph 57 of Kirkup.
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`Id. at 18. Rather, Maxell properly contends that in the one scenario that Apple has
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`pointed to where the HED is locked, elements 1(d) and 1(g) are not met. see Paper
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`17 at 36-41. Maxell’s arguments as to paragraph 57 of Kirkup are backed by
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`evidence (see Ex. 2022, ¶¶129-133), whereas Apple’s contentions on Reply are
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`not.
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`In fact, Apple’s claim that Maxell’s arguments “defeat” the goals of Kirkup
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`are not grounded in fact or supported by its own expert. See Reply at 18, 20.
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`Other than restating portions of paragraphs 54 (the one or two code process) and
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`57 (as compared with Maxell’s expert analyzing the full breadth of the disclosure,
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`see Ex. 2022, ¶¶126-133), Apple baldly argues without any substantive support in
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`Kirkup:3
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` “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.” Id. at 18.
` “Were Patent Owner correct that unlocking the HED is not required, a
`user could unlock both devices PC [sic] 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.”
`Id. at 20.
`In fact, Apple truncates paragraph 57 of Kirkup on page 19 which, when
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`read in its entirety, renders moot both points above:
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`Where the handheld electronic device 120 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
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`3 Apple relies on Kirkup’s generic title (“Method, System and Device for
`Authenticating a User”) and a passage from paragraph 42 containing a generic
`reference to “greater security” that relates to one embodiment in Kirkup. See
`Reply at 20. Neither citation refutes the plain language of paragraph 57 of Kirkup
`that supports Maxell’s arguments, which ultimately result in Kirkup not disclosing
`the three-ordered conditions.
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`action performed by the user. For example, the authorization action
`may be responding “yes” or “ok” to a question in a dialog box on the
`user interface asking “ok to provide authorization code?”. While such
`an authorization action by the user provides more security than
`allowing automatic access to the authorization code on the
`smartcard, it is not as secure as providing a proper user
`identification code, such as a PIN code or password.
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`Ex. 1004, ¶57 (emphasis added). Thus, Kirkup explicitly supports Maxell’s and
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`Dr. Vojcic’s reading of paragraph 57, and Kirkup itself acknowledges that certain
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`configurations may not be the most secure. But the latter does not undermine
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`Maxell’s or Dr. Vojcic’s arguments in the Patent Owner Response. See Paper 17
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`at 36-41; Ex. 2022, ¶¶126-133.
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`Moreover, if Apple’s complaints above are read in context with the
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`remainder of Kirkup, including paragraph 54 cited by Apple (Reply at 19), the
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`logical conclusion is the HED must be unlocked when the PC makes the
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`authentication request and all of Apple’s arguments collapse regarding both
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`devices being locked when the authentication process starts. See generally Petition
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`at 13-14, 28-44. And, to the extent Apple claims that an unlocked HED (i.e. the
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`user interface is unlocked) is still “locked” to salvage its arguments, Apple
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`advocated otherwise in the Petition. See Petition at 37 (“Based on Kirkup’s
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`disclosure that unlocking the handheld device enables use of its user interface,
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`Kirkup, ¶ [0045] and that unlocking the PC enables the use of the computer
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`desktop, Kirkup, ¶ [0048], a POSITA would have understood that, in order to
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`unlock both devices, they must both begin in the locked state.”). Moreover,
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`Maxell’s expert, Dr. Vojcic, explained why such a position is wrong. See Paper 17
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`at 58-59 (citing to Ex. 2022, ¶161).
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`Thus, under Scenario 2 Kirkup cannot meet the claimed ordered conditions
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`as the second mobile terminal (PC 110) is unlocked before the first mobile terminal
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`(HED), which does not meet elements 1(d) and 1(g). See Ex. 2022, Vojcic Dec.,
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`¶133. Apple’s expert also agrees that Scenario 2—PC 110 being unlocked before
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`the HED—does not meet the claimed ordered conditions. Ex. 2029, Shoup Dep.,
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`65:12-66:2.
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`Maxell responds to the remainder of Apple’s arguments as to the three-
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`ordered conditions as follows:
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`A. Kirkup Does Not Teach The First Condition.
`Apple’s claim that Maxell does not “directly challenge” Kirkup’s disclosure
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`in paragraph 53 is inaccurate. See Reply at 21. Nor does Kirkup espouse the
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`“clarity” that Apple presumes. Rather, Maxell explained why Apple’s focus on the
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`“Advantageously, the described arrangements generally allow a user to unlock
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`both the PC 110 and the handheld electronic device 120 by simply inputting one
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`authorization code, namely that for the handheld electronic device 120” portion of
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`paragraph 53 of Kirkup does not demonstrate that the first condition is met. See
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`Paper 17 at 41-44; see a
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