UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`APPLE, INC.
`Petitioner
`v.
`
`MAXELL, LTD.
`Patent Owner
`____________
`
`Case IPR2020-00202
`
`Patent 10,212,586
`
`____________
`
`Declaration of Dr. Victor Shoup
`
`IPR2020-00202
`Apple Inc. EX1003 Page 1
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`

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`TABLE OF CONTENTS
`
`
`I.
`II.
`
`BACKGROUND AND QUALIFICATIONS ....................................... 1
`LEGAL FRAMEWORK ........................................................................ 4
`A. Analogous Art ..................................................................................... 4
`B. Obviousness ........................................................................................ 5
`Secondary Considerations of Non-Obviousness ............................ 11
`C.
`D. Claim Construction .......................................................................... 12
`III. OPINIONS REGARDING THE ’586 PATENT ................................ 13
`A. Opinions Regarding the Level of Skill of a Person Having
`Ordinary Skill in the Art ................................................................. 13
`B.
`Description of the Alleged Invention of the ‘586 Patent ............... 14
`C.
`Background of the Technology ....................................................... 16
`D. Opinions Regarding the Obviousness of the Claims ..................... 18
`Opinions Regarding Analogous Art .............................................. 19
`1.
`a)
`Kirkup is Analogous art ........................................................... 19
`b)
`De la Huerga Is Analogous Art ............................................... 21
`The Combination of Kirkup and de la Huerga .............................. 22
`2.
`a) Modifying Kirkup to Incorporate de la Huerga’s Biometric
`Authentication Teachings ........................................................ 22
`b) Modifying Kirkup to Incorporate de la Huerga’s Teachings of
`Unlocking Multiple Devices .................................................... 25
`Opinions Regarding the Claims .................................................... 27
`3.
`Opinions Regarding Independent Claim 1 .............................. 27
`a)
`(1)
`operation is limited, comprising: ........................................ 27
`(2)
`communications; ................................................................. 30
`(3)
`an another mobile terminal ................................................. 31
`(4)
`terminal ............................................................................... 32
`
`[1(c)] a controller which switches the mobile terminal
`between an unlocked state and a locked state based on an
`authentication input to the mobile terminal, wherein the
`locked state prevents unauthorized access to the mobile
`
`[1(pre)] A mobile terminal configured to switch between an
`unlocked state and a locked state in which a predetermined
`
`[1(a)] a transceiver which performs short-range wireless
`
`[1(b)] a memory which previously stores information about
`
`
`
`ii
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`[1(d)] wherein, when conditions are met, the controller
`controls the mobile terminal to transmit information to the
`another mobile terminal for switching a state of the another
`
`mobile terminal from a locked state to an unlocked state .. 33
` ............................................................................................ 34
`
`[1(e)] wherein the conditions include: first, the mobile
`terminal is in a locked state, the another mobile terminal is
`in a locked state, and the another mobile terminal is within
`communication range of the short-range wireless
`communications of the transceiver while in the locked state
`
`[1(f)] second, after the mobile terminal is in the locked state,
`the another mobile terminal is in the locked state, and the
`another mobile terminal is within communication range of
`the short-range wireless communications of the transceiver
`while in the locked state, performing, via the transceiver, the
`short-range wireless communications with the another
`
`[1(g)] third, after the performing, receiving, by the
`controller, the authentication input for switching the mobile
`
`(5)
`(6)
`(7)
`
`b)
`
`c)
`d)
`e)
`
`mobile terminal ................................................................... 38
`(8)
`terminal from the locked state to the unlocked state .......... 40
`Opinions regarding Independent Claim 9 ............................... 45
`(1)
`in a memory ........................................................................ 45
`(2)
`unauthorized access to the mobile terminal ........................ 45
`Opinions regarding Independent Claim 16 ............................. 46
`(1)
`limited ................................................................................. 46
`Opinions Regarding Dependent Claims 2, 10, and 17 ............ 47
`(1)
` ............................................................................................ 47
`Opinions Regarding Dependent Claims 6, 13, and 18 ............ 48
`(1)
`
`[9(b)] storing information about an another mobile terminal
`
`[9(c)] transmitting information from the mobile terminal to
`the another mobile terminal which is for switching a state of
`the another terminal from a locked state to an unlocked state
`when conditions are met, wherein the locked state prevents
`
`[16(a)] a first mobile terminal and a second mobile terminal
`which are configured to switch between an unlocked state
`and a locked state in which a predetermined operation is
`
`“wherein the operation includes a biometrics authentication”
`
`[2] further configured to store information about two or
`more another mobile terminals; [13] storing information
`
`
`
`iii
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`f)
`
`
`
`
`
`about two or more another mobile terminals; [18] further
`
`comprising two or more second mobile terminals .............. 49
`Opinions Regarding Dependent Claims 7 and 14 ................... 52
`(1)
` ............................................................................................ 52
`
`[7] wherein the short-range wireless communication is via a
`Bluetooth connection; [19] wherein the short-range wireless
`communications are performed via a Bluetooth connection
`
`
`
`
`
`iv
`
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`DECLARATION OF DR. VICTOR SHOUP
`
`I, Victor Shoup, Ph.D., hereby declare the following:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`1. My name is Victor Shoup, and I am over 21 years of age and otherwise
`
`competent to make this Declaration. I make this Declaration based on facts and
`
`matters within my own knowledge and on information provided to me by others,
`
`and, if called as a witness, I could and would competently testify to the matters set
`
`forth herein.
`
`2.
`
`I have been retained as a technical expert witness in this matter by
`
`Counsel for the Petitioner, Apple Inc. (“Petitioner”) to provide my independent
`
`opinions on certain issues requested by Counsel for Petitioner relating to the
`
`accompanying Petition for Inter Partes Review of U.S. Patent No. 10,212,586 (“the
`
`’586 Patent”), claims 1-2, 6-7, 9-10, 13-14, and 16-18. I am being compensated at
`
`an hourly rate of $500. My compensation in this matter is not based on the substance
`
`of my opinions or on the outcome of this matter. I have been informed that Maxell,
`
`Ltd. is the purported owner of the ’586 Patent. I note that I have no financial interest
`
`in Maxell, Ltd. or Petitioner, and I have no other interest in the outcome of this
`
`matter.
`
`
`
`1
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`3.
`
`I have summarized in this section my educational background, career
`
`history, and other qualifications relevant to this matter. I have also included a current
`
`version of my curriculum vitae, attached as Ex. 1007 to the Petition.
`
`4.
`
`I received a Bachelor of Science in Computer Science and Mathematics
`
`from the University of Wisconsin at Eau Claire in 1983. I received my Doctorate in
`
`Computer Science from the University of Wisconsin at Madison in 1989. I have also
`
`worked as a research scientist at Bellcore and at IBM Research Zurich.
`
`5.
`
`I have been Professor of Computer Science at the Courant Institute of
`
`Mathematical Sciences at New York University since 2002 (initially as an Associate
`
`Professor, and as a Professor since 2007). Since 2012, I have also been a part-time
`
`visiting researcher at the IBM T. J. Watson Research Center in Yorktown, New
`
`York, where I collaborate with the Cryptography Research Group.
`
`6. My areas of research include cryptography and number-theoretic
`
`algorithms, and I have published over 60 papers in these areas. In the area of
`
`cryptography, I have made substantial contributions in the sub-areas of digital
`
`signatures, public key encryption, hash functions, distributed computation,
`
`authentication, session key exchange, and secure anonymous credentials.
`
`7.
`
`I have been on the program committee of numerous international
`
`conferences on cryptography, and was the Program Chair at Crypto 2005 (Crypto is
`
`
`
`2
`
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`the premier international conference on cryptography). I have also acted as a
`
`consultant on cryptographic protocols for several companies.
`
`8.
`
`In recognition of my contributions to the field of cryptography, I was
`
`named a Fellow of the International Association for Cryptographic Research
`
`(IACR),
`
`for
`
`fundamental contributions
`
`to public-key cryptography and
`
`cryptographic security proofs, and for educational leadership.
`
`9.
`
`I have given a number of invited lectures on my research in
`
`cryptographic protocol design. I have taught several courses on cryptography at both
`
`the graduate and undergraduate level. I have published a textbook on the
`
`mathematical underpinnings of cryptography, and am currently writing a textbook
`
`on applied cryptography (a draft of which is used in a number of cryptography
`
`courses taught around the world).
`
`10.
`
`I am listed as an inventor on several US patents, several related to
`
`authenticated key exchange, one related to secure multi-party computation, and one
`
`related to public-key encryption.
`
`11. As part of my work and in forming my opinions in connection with this
`
`proceeding, I have reviewed the following materials, each of which I believe experts
`
`in my field would reasonably rely upon in forming opinions regarding the subject
`
`matter of this proceeding:
`
`• Petition for Inter Partes Review of U.S. Patent No. 10,212,586;
`• U.S. Patent No. 10,212,586 to Hirabayashi, et al. (Ex. 1001)
`
`
`
`3
`
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`• File History for U.S. Patent 10,212,586 (Ex. 1002);
`• U.S. Patent Application No. 2006/0041746 A1 to Kirkup, et. al (Ex. 1004);
`• U.S. Patent Application No. 7,941,534 to de la Huerga (Ex. 1005);
`• U.S. Patent Application Publication No. 2006/0224882 A1 to Chin (Ex.
`1010)
`• iPhone Tech Specs (Ex. 1012);
`• iPhone User Guide (Ex. 1013);
`• Fortune – Quarterly iPhone Sales (Ex. 1014);
`• U.S. Patent No. 6,871,063 to Schiffer (Ex. 1015)
`
`II. LEGAL FRAMEWORK
`12.
`I am a technical expert and do not offer any legal opinions. However, I
`
`have been informed about certain legal principles regarding patentability and related
`
`matters under United States patent law, which I have applied in performing my
`
`analysis and arriving at my technical opinions in this matter.
`
`A. Analogous Art
`13.
`I have been informed by counsel that for prior art to be used to establish
`
`the unpatentability of a patent based on obviousness, the prior art must be “analogous
`
`art” to the claimed invention. I have also been informed by counsel that a prior art
`
`reference is analogous art to the claimed invention if: (1) the reference is from the
`
`same field of endeavor as the claimed invention, even if it addresses a different
`
`problem; or (2) the reference is reasonably pertinent to the problem faced by the
`
`invention, even if it is not in the same field of endeavor as the claimed invention. In
`
`order for a reference to be “reasonably pertinent” to the problem, it must logically
`
`have commended itself to an inventor's attention in considering his problem. In
`
`
`
`4
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`determining whether a reference is reasonably pertinent, one should consider the
`
`problem faced by the inventor, as reflected either explicitly or implicitly, in the
`
`specification.
`
`B. Obviousness
`14.
`I have been informed that a person cannot obtain a patent on an
`
`invention if the differences between the invention 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 (“POSITA”). I have been informed
`
`that a conclusion of obviousness may be founded upon more than a single item of
`
`prior art. I have been further informed that obviousness is determined by evaluating
`
`the following factors:
`
`A. the scope and content of the prior art,
`
`B. the differences between the prior art and the claim at issue,
`
`C. the level of ordinary skill in the pertinent art, and
`
`D. secondary considerations of non-obviousness.
`
`In addition, the obviousness inquiry should not be done in hindsight. Instead,
`
`the obviousness inquiry should be done through the eyes of a POSITA at the time of
`
`the alleged invention.
`
`15.
`
`In considering whether certain prior art renders a particular patent claim
`
`obvious, I have been informed that I can consider the scope and content of the prior
`
`
`
`5
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`art, including the fact that one of skill in the art would regularly look to the
`
`disclosures in patents, trade publications, journal articles, conference papers,
`
`industry standards, product
`
`literature and documentation,
`
`texts describing
`
`competitive technologies, requests for comment published by standard setting
`
`organizations, and materials from industry conferences, as examples. I have been
`
`informed that for a prior art reference to be proper for use in an obviousness analysis,
`
`the reference must be “analogous art” to the claimed invention, as described above.
`
`I believe that all of the references I considered in forming my opinions in this IPR
`
`are well within the range of references a POSITA would have consulted to address
`
`the type of problems described in the Challenged Claims.
`
`16.
`
`I have been informed that, in order to establish that a claimed invention
`
`was obvious based on a combination of prior art elements, a clear articulation of the
`
`reason(s) why a claimed invention would have been obvious must be provided.
`
`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
`
`combination of multiple items of prior art renders a patent claim obvious when there
`
`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
`
`to combine the prior art, which can include, but is not limited to, any of the following
`
`rationales:
`
`A.
`
`combining prior art methods according to known methods to
`
`yield predictable results;
`
`
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`B.
`
`substituting one known element for another to obtain predictable
`
`results;
`
`C.
`
`using a known technique to improve a similar device in the same
`
`way;
`
`D.
`
`applying a known technique to a known device ready for
`
`improvement to yield predictable results;
`
`E.
`
`trying a finite number of identified, predictable potential
`
`solutions, with a reasonable expectation of success;
`
`F.
`
`identifying that known work in one field of endeavor may prompt
`
`variations of it for use in either the same field or a different one
`
`based on design incentives or other market forces if the variations
`
`are predictable to one of ordinary skill in the art; or
`
`G.
`
`identifying an explicit teaching, suggestion, or motivation in the
`
`prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine the prior art references to arrive
`
`at the claimed invention.
`
`I am also informed that where there is a motivation to combine, claims may
`
`be rejected as prima facie obvious provided a POSITA would have had a reasonable
`
`expectation of success regarding the proposed combination.
`
`
`
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`17.
`
`I am informed that the existence of an explicit teaching, suggestion, or
`
`motivation to combine known elements of the prior art is a sufficient, but not a
`
`necessary, condition to a finding of obviousness. This so-called “teaching-
`
`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
`
`in an obviousness analysis. In determining whether the subject matter of a patent
`
`claim is obvious, neither the particular motivation nor the avowed purpose of the
`
`patentee controls. Instead, the important consideration is the objective reach of the
`
`claim. In other words, if the claim extends to what is obvious, then the claim is
`
`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
`
`known to the technological community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art. All of
`
`these issues may be considered to determine whether there was an apparent reason
`
`to combine the known elements in the fashion claimed by the patent.
`
`18.
`
`I also am informed that in conducting an obviousness analysis, a precise
`
`teaching directed to the specific subject matter of the challenged claim need not be
`
`sought out because it is appropriate to take account of the inferences and creative
`
`steps that a POSITA would employ. The prior art considered can be directed to any
`
`need or problem known in the field of endeavor at the time of invention and can
`
`provide a reason for combining the elements of the prior art in the manner claimed.
`
`
`
`8
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`In other words, the prior art need not be directed towards solving the same specific
`
`problem as the problem addressed by the patent. Further, the individual prior art
`
`references themselves need not all be directed towards solving the same problem. I
`
`am informed that, under the KSR obviousness standard, common sense is important
`
`and should be considered. Common sense teaches that familiar items may have
`
`obvious uses beyond their primary purposes.
`
`19.
`
`I also am informed that the fact that a particular combination of prior
`
`art elements was “obvious to try” may indicate that the combination was obvious
`
`even if no one attempted the combination. If the combination was obvious to try
`
`(regardless of whether it was actually tried) or leads to anticipated success, then it is
`
`likely the result of ordinary skill and common sense rather than innovation. I am
`
`further informed that in many fields it may be that there is little discussion of obvious
`
`techniques or combinations, and it often may be the case that market demand, rather
`
`than scientific literature or knowledge, will drive the design of an invention. I am
`
`informed that an invention that is a combination of prior art must do more than yield
`
`predictable results to be non-obvious.
`
`20.
`
`I am informed that for a patent claim to be obvious, the claim must be
`
`obvious to a POSITA at the time of the alleged invention. I am informed that the
`
`factors to consider in determining the level of ordinary skill in the art include:
`
`
`
`9
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`A.
`
`the educational level and experience of people working in the
`
`field at the time the invention was made,
`
`B.
`
`the types of problems faced in the art and the solutions found to
`
`those problems, and
`
`C.
`
`the sophistication of the technology in the field.
`
`21.
`
`I am informed that it is improper to combine references where the
`
`references teach away from their combination. I am informed that a reference may
`
`be said to teach away when a POSITA, upon reading the reference, would be
`
`discouraged from following the path set out in the reference, or would be led in a
`
`direction divergent from the path that was taken by the patent applicant. In general,
`
`a reference will teach away if it suggests that the line of development flowing from
`
`the reference’s disclosure is unlikely to be productive of the result sought by the
`
`patentee. I am informed that a reference teaches away, for example, if (1) the
`
`combination would produce a seemingly inoperative device, or (2) the references
`
`leave the impression that the product would not have the property sought by the
`
`patentee. I also am informed, however, that a reference does not teach away if it
`
`merely expresses a general preference for an alternative invention but does not
`
`criticize, discredit, or otherwise discourage investigation into the invention claimed.
`
`
`
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`C.
`22.
`
`Secondary Considerations of Non-Obviousness
`I am informed that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider “secondary
`
`considerations” if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an invention
`
`would not have been obvious in view of these considerations, which include:
`
`A.
`
`commercial success of a product due to the merits of the claimed
`
`invention;
`
`a long-felt, but unsatisfied need for the invention;
`
`failure of others to find the solution provided by the claimed
`
`invention;
`
`deliberate copying of the invention by others;
`
`unexpected results achieved by the invention;
`
`praise of the invention by others skilled in the art;
`
`lack of
`
`independent
`
`simultaneous
`
`invention within a
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`comparatively short space of time;
`
`H.
`
`teaching away from the invention in the prior art.
`
`23.
`
` I am further informed that secondary-considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be based on prior art features.
`
`
`
`11
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`The establishment of a nexus is a question of fact. While I understand that the Patent
`
`Owner here has not offered any secondary considerations at this time, I will
`
`supplement my opinions in the event that the Patent Owner raises secondary
`
`considerations during the course of this proceeding.
`
`D. Claim Construction
`24.
`I have been informed by counsel that the first step in an unpatentability
`
`analysis involves construing the claims, as necessary, to determine their scope.
`
`Second, the construed claim language is then compared to the disclosures of the prior
`
`art. I am informed that claims are generally given their ordinary and customary
`
`meaning as understood by one of ordinary skill in the art at the time of the invention,
`
`in light of the patent specification.
`
`25. For purposes of this proceeding, I have applied the claim constructions
`
`proposed by the Petitioner in the claim construction section of the Petition for Inter
`
`Partes Review of U.S. Patent No. 10,212,586 (the “Petition”) that this declaration
`
`accompanies when analyzing the prior art and the claims. Where no construction has
`
`been proposed by Petitioner in the Petition, I have applied the meaning of the claim
`
`terms of the ’586 Patent that are generally consistent with the terms’ ordinary and
`
`customary meaning, as a person of ordinary skill in the art would have understood
`
`them at the time of the invention. I have been instructed to assume for purposes of
`
`this proceeding that the time of the invention is May 23, 2012.
`
`
`
`12
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`III. OPINIONS REGARDING THE ’586 PATENT
`26. My opinions provided in this Declaration are made as of the priority
`
`date of the ’586 Patent (which counsel has informed me is May 23, 2012), unless
`
`expressly stated otherwise. To the extent that any verb tense used in this Declaration,
`
`the Petition, or any deposition or testimony provided in this matter is a present tense,
`
`e.g., “would reasonably understand,” such verb tense should be understood to be my
`
`opinion as of the ’586 Patent’s priority date (again, unless expressly stated
`
`otherwise). I merely use the present verb tense for ease of reading.
`
`A. Opinions Regarding the Level of Skill of a Person Having Ordinary
`Skill in the Art
`I was asked to provide my opinion as to the level of skill of a person
`
`27.
`
`having ordinary skill in the art (“POSITA”) of the ’586 Patent at the time of the
`
`claimed invention, which I have been instructed to assume is May 23, 2012. In
`
`determining the characteristics of a hypothetical person of ordinary skill in the art of
`
`the ’586 Patent at the time of the claimed invention, I was told to consider several
`
`factors, including the type of problems encountered in the art, the solutions to those
`
`problems, the rapidity with which innovations are made in the field, the
`
`sophistication of the technology, and the education level of active workers in the
`
`field. I also placed myself back in the time frame of the claimed invention and
`
`considered the colleagues with whom I had worked at that time.
`
`
`
`13
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`28.
`
`In my opinion, a person having ordinary skill in the art of the ’586
`
`Patent at the time of its filing would have been a person having, as of May 23, 2012,
`
`at least: a bachelor’s degree in computer science, or in a related field, with at least
`
`2-4 years of industry experience in computer and network security. Additional
`
`education may substitute for lesser experience and vice-versa. Such a person of
`
`ordinary skill in the art would have been capable of understanding the ’586 Patent
`
`and the prior art references discussed herein.
`
`29. Based on my education, training, and professional experience in the
`
`field of the claimed invention, I am familiar with the level and abilities of a person
`
`of ordinary skill in the art at the time of the claimed invention. Additionally, I met
`
`at least these minimum qualifications to be a person having ordinary skill in the art
`
`at least as of May 23, 2012. Further, although my qualifications may exceed those
`
`of the hypothetical person having ordinary skill in the art defined above, my analysis
`
`and opinions regarding the ’586 Patent have been rendered from the perspective of
`
`a person having ordinary skill in the art at the time of the invention.
`
`B. Description of the Alleged Invention of the ‘586 Patent
`30. The ’586 Patent describes the use of one mobile terminal (such as a cell
`
`phone) to unlock another mobile terminal when the two mobile terminals are in
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`proximity to each other. ’586 Patent, Abstract. In particular, the ’586 Patent begins
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`by identifying a problem with conventional authentication schemes for such
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`terminals: passwords may be inadvertently disclosed and ID cards may be lost
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`together with the mobile terminal. ’586 Patent, 1:15-22. In such a case, “it is
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`impossible to reliably prevent unauthorized use of the terminal device by a third
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`party.” ’586 Patent, 1:22-24. Continuing the background of the invention, the ’586
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`Patent identifies a prior solution to this problem: by using a dedicated “key device”
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`that communicates with
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`the
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`terminal device via short-range wireless
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`communications, the terminal can be automatically be unlocked when the user
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`(carrying the key device) is in short-range communications range and relocked when
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`the user moves away. ’586 Patent, 1:26-57. However, this prior solution requires the
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`user carry a dedicated key device with them in order to unlock the terminal
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`device. ’586 Patent, 1:58-60.
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`31. The object of the purported invention of the ’586 Patent, then, is to
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`implement a similar locking and unlocking system without requiring the user to carry
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`a dedicated key device, and the ’586 Patent proposes to attain this object by allowing
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`one mobile terminal to unlock another mobile terminal.’586 Patent, 1:61-66; 1:67-
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`2:9.
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`32. Considering the claims, it is my opinion that the invention, as claimed,
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`involves no improvements to the hardware of the claimed “mobile terminal” and
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`could have been implemented on a conventional (as of May 23, 2012) cell phone, as
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`described below.
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`C. Background of the Technology
`33. Mobile terminals such as the one depicted schematically represented in
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`FIG. 1 and depicted in FIG. 7 (which I would understand to represent a conventional
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`cellular telephone) were well-known in the art long before 2012. For example, I note
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`that the original iPhone, released in 2007, included each of the components depicted
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`in FIG. 1: a wireless communication unit for communicating with a wireless base
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`station (the Wi-Fi and GSM radios), a short-range communications unit (the
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`Bluetooth 2.0+EDR radio), a display unit (the 480-by-320-pixel resolution screen),
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`an operating unit (the multi-touch display screen and the home button), and a storage
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`unit (the 4GB or 8GB flash drive). Ex. 1012, iPhone Technical Specifications. I
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`would also understand this iPhone to include a processor to control these
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`components, and that a user of such an iPhone could configure it such that a passcode
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`was required to unlock it. Ex. 1013, iPhone User Guide, p. 98. I further understand
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`that later iPhones similarly included components analogous to these. During the
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`quarter preceding the priority date of the ’586 Patent (1Q2012), Apple sold
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`approximately 30 million such devices. Ex. 1014, Fortune – How Many iPhones Did
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`Apple Sell Last Quarter?
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`34. Systems for allowing a mobile device to unlock another device via
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`proximity were also well-known long prior to 2012. For example, in 2000, U.S.
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`Patent No. 6,871,063 to Schiffer (“Schiffer” or “Ex. 1015”) was filed, disclosing a
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`method for controlling access to a computer system by granting access to a user
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`having a device that wirelessly transmits and access code. Schiffer, 1:6-8. In
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`particular, the system of Schiffer starts out with a computer system in a locked state
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`where access to the system is limited. Schiffer, 1:61-64. When the user, carrying
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`their mobile phone, approaches the computer a short-range wireless communication
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`link (such as a Bluetooth link) is automatically established between the mobile phone
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`and the computer system. Schiffer, 1:65-2:4. Responsive to a request from the
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`computer system, the mobile device transmits the user’s access code to the computer
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`system, and after verifying the access code, the computer system is unlocked and the
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`user is granted access. Schiffer, 2:5-13.
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`35. U.S. Patent Application No. 2006/0224882 to Chin (“Chin” or “Ex.
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`1010”) also discloses a method and system for wirelessly unlocking a password-
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`locked computing device. Chin, Abstract. In particular, Chin contemplates a system
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`where a group of two or more of computing devices are associated with each other
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`such that each may unlock any other. Chin, ¶ [0014]. In the Chin system, when a
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`first, unlocked device of the group is communicatively coupled to a second, locked
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`device of the group, the second device is unlocked automatically is the devices
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`recognize each other. Chin, ¶¶ [0028], [0032]. Chin contemplates that this
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`communication can be wireless, such as via acoustic, radio-frequency (RF) or infra-
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`red media. Chin, ¶ [0012].
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`36.
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`I note that, during the prosecution of the Patent Application that
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`eventually issued as the ’586 Patent, Chin (and a Japanese counterpart thereof, JP
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`2006-285965A) was cited by the Examiner to reject the claims. Ex. 1001, File
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`History of U.S. Patent 10,212,586, p. 234-243 (first rejection using U.S.
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`Application), 356-379 (first rejection using Japanese counterpart). In order to
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`distinguish over the anticipatory Chin reference, Applicant amended the claims
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`require that both devices begin locked and in communications range. File History of
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`U.S. Patent 10,212,586, p.194-208.
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`D. Opinions Regarding the Obviousness of the Claims
`37.
`I have also been asked to opine whether the Challenged Claims would
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`be obvious in view of the art