Paper 18
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`
`
`SAMSUNG ELECTRONICS, CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`
`v.
`
`PROXENSE, LLC
`Patent Owner
`––––––––––––––
`
`IPR2021-1438
`Patent 9,049,188 B1
`––––––––––––––
`
`PETITIONER’S REPLY
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ................................................................................ 1
`
`CLAIM CONSTRUCTION ................................................................. 2
`
`A.
`
`B.
`
`C.
`
`“local, secured biometric information” ...................................... 2
`
`“enabling one or more of an application, a function and a
`service” ....................................................................................... 5
`
`Dr. Eldering’s Claim Construction Analysis Should Be
`Rejected .................................................................................... 11
`
`PATENT OWNER’S CRITICISM OF DR. WOLFE IS
`MERITLESS ...................................................................................... 14
`
`THE PRIOR ART RENDERS OBVIOUS THE CLAIMS
`UNDER ANY CONSTRUCTION ..................................................... 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`Patent Owner’s Analysis Of The Prior Art Is
`Unsupported Attorney Argument ............................................. 15
`
`Ground 1 ................................................................................... 16
`
`Ground 2 ................................................................................... 20
`
`Ground 3 ................................................................................... 22
`
`V.
`
`THE PRIOR ART RENDERS OBVIOUS THE CLAIMS
`UNDER THE DISTRICT COURT’S CONSTRUCTIONS .............. 23
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`“Hybrid Device” ....................................................................... 23
`
`“Personal Digital Key” ............................................................. 25
`
`“Biometric Information” .......................................................... 28
`
`“Financial Information” ........................................................... 29
`
`“Receiver-Decoder Circuit” ..................................................... 29
`
`“Inheritance Information” ........................................................ 30
`
`“Enablement Signal” ................................................................ 31
`
`i
`
`

`

`I.
`
`INTRODUCTION
`
`
`
`
`There is no dispute here that the challenged claims are unpatentable if
`
`the claim terms are given their plain and ordinary meaning. The only issue is
`
`whether Patent Owner’s constructions, which cherry-pick limitations from the
`
`specification into the claims under the auspices of lexicography and
`
`disavowal, should be applied. The Board has already rejected Patent Owner’s
`
`constructions twice, both in its Institution Decision and Decision Denying
`
`Rehearing and should do so again based on the same rationale it previously
`
`applied.
`
`Patent Owner makes the same arguments in Reply as it did pre-
`
`institution. The only difference here is “new” evidence in the form of a
`
`declaration submitted by its expert, Dr. Eldering. But Dr. Eldering’s
`
`testimony should be disregarded because, instead of focusing on a POSITA’s
`
`interpretation of the claims, his testimony improperly focuses on the legal
`
`issue of whether patentee acted as its own lexicographer. And even if his
`
`testimony were given any weight, it undercuts Patent Owner’s arguments, as
`
`he offers different legal theories and constructions than Patent Owner.
`
`Even if the Board agrees with Patent Owner’s constructions, the claims
`
`are nevertheless unpatentable. Indeed, Patent Owner provides no testimony
`
`from its expert on the application of its constructions to the prior art, relying
`
`
`
`1
`
`

`

`instead on attorney argument. But, as confirmed by Dr. Wolfe, the prior art
`
`teaches each and every claim element even under Patent Owner’s
`
`constructions.
`
`II.
`
`CLAIM CONSTRUCTION1
`
`A.
`
`“local, secured biometric information”
`
`The term “local, secured biometric information” should be given its
`
`plain and ordinary meaning. Ex. 1008 ¶ 5.
`
`Patent Owner does not argue that this language is ambiguous or
`
`otherwise unclear. Indeed, the parties agree that this term has a well-
`
`understood meaning. See Institution Decision 17 (“[B]oth parties agree that
`
`‘PDK’ for ‘storing local, secured biometric information’ as claimed,
`
`comprises a local memory for storing biometric information, wherein the
`
`information is secured.”), citing Pet. 22-23, 52-56; Prelim. Resp. 2-3. Thus,
`
`no special definition is necessary. Central Admixture Pharmacy Services, Inc.
`
`1 Patent Owner does not dispute that the prior art renders obvious the
`
`claims when given their ordinary meaning, and has thus waived any such
`
`argument. See PTAB Consolidated Trial Practice Guide (November
`
`2019) (“TPG”) at 73-74.
`
`2
`
`

`

`
`
`
`v. Advanced Cardiac Solutions, P.C., 482 F.3d 1347 (Fed. Cir. 2007) ; Prima
`
`Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143 at 1148 (Fed. Cir. 2003).
`
`Patent Owner instead argues that “[p]atentee acted as his own
`
`lexicographer by defining” the term “local secured biometric information”
`
`according to Patent Owner’s construction. POR 3-4.
`
`The Federal Circuit has set forth the circumstances in which a patentee
`
`may trump the ordinary meaning by acting as a lexicographer. When doing
`
`so, the definition “must be clearly defined in the specification.” Markman v.
`
`Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517 U.S.
`
`370 (1996) (emphasis added). Indeed, “[t]he standar[d] for lexicography…[is]
`
`exacting.” GE Lighting Solutions, LLC v. AgilLight, Inc., 750 F.3d 1304 at
`
`1309 (Fed. Cir. 2014). (emphasis added); see also Paper 15 4-5.
`
`Patent Owner’s reliance on the specification falls far short of this
`
`exacting standard, as there is simply no clear definition in the specification.2
`
`Indeed, Patent Owner cites only exemplary embodiments to support its
`
`lexicography argument:
`
`These two examples illustrate…how an application (service)
`may use them…service blocks preferably are both readable and
`writeable, service may use them as they see fit…
`
`
`2 The Board found as much in its Decision Denying Rehearing. Paper 14
`4-5.
`
`
`
`3
`
`

`

`
`
`
`Ex. 1001 8:43-49; POR 7 (omitting “examples”); see also POR 4-5,
`
`citing Ex. 1001 3:14-21, 5:26-34.
`
`Not only does this not rise to the level of lexicography, but Patent
`
`Owner’s citations ignore other embodiments disclosed in the ’188 patent that
`
`do not require the “service block” or “access keys” mandated by its
`
`construction. For example:
`
`Those skilled in the art will recognize that in other embodiments,
`the PDK 102a includes less functionality than…FIG. 2. In a
`minimal embodiment, the PDK 102a includes an antenna and a
`transceiver for communicating with a RDC (not shown) and a
`controller and memory for storing information particular to a
`user.
`
`Ex. 1001 13:43-49. Thus, the ’188 patent specification confirms that
`
`some embodiments may only include limited components such as an antenna,
`
`transceiver, a controller and memory. Id. The specification cannot be read to
`
`require service blocks and access keys. Ex. 1008 ¶ 6-7.
`
`Patent Owner’s construction also contradicts the description of “service
`
`blocks” in the specification as “a protected memory element which allows an
`
`application 120 with the right credentials to access it.” Ex. 1001 8:57-59.
`
`Service blocks are any protected memory element and can be accessed by any
`
`right credential. Patent Owner’s construction contradicts this description by
`
`
`
`4
`
`

`

`excluding the protected memory in the prior art (like Giobbi ’157’s tamper-
`
`proof memory3) and narrowing the right credential to an access key.
`
`Patent Owner’s construction is nothing more than an attempt to import
`
`exemplary embodiments into the claims under the guise of lexicography,
`
`using the same arguments and evidence from its Preliminary Response and
`
`Request for Rehearing. Patent Owner’s construction should be rejected.
`
`B.
`
`“enabling one or more of an application, a function and a
`service”
`
`No special construction is necessary for “enabling one or more of an
`
`application, a function and a service.” Paper 16 at 6. The “enabling” claim
`
`language appears in claims 1 and 10 of the ’188 patent. In both instances the
`
`language is clear: the claims merely require that an application, function or
`
`service is enabled, i.e., made “possible” (see Institution Decision 30), based
`
`on either the integrated RDC or integrated PDK (claim 1), or based on an
`
`enablement signal (claim 10). Thus, no special construction is required, and
`
`Patent Owner does not dispute that this claim limitation has a readily
`
`3 See Ex. 1001 at 3:51-53 5:58-61 (teaching the same type of memory
`
`as the prior art).
`
`5
`
`

`

`
`
`
`understood meaning. POR, 7, 11 (admitting that the term has a “customary
`
`meaning”); Ex. 1008 ¶ 8.
`
`However, Patent Owner reiterates its argument from its Preliminary
`
`Response and Request for Rehearing that “enabling one or more of an
`
`application, a function and a service” should be construed as “sending or
`
`receiving a message comprising information from a service block of a PDK
`
`unlocked, prior to transmission, with an access key provided to the PDK.”
`
`POR 7. Patent Owner’s construction should be rejected for the same reasons
`
`the Board set forth in its prior decisions at institution. Ex. 1008 ¶ 11-12.
`
`Patent Owner argues that the ’188 patent specification “disavows” the
`
`customary meaning of the term. POR 8. But it is well-settled that: “The
`
`standards for finding…disavowal [are] exacting…‘the specification [or
`
`prosecution history must] make[ ] clear that the invention does not include a
`
`particular feature.’” 750 F.3d 1304 at 1309.
`
`First, Patent Owner suggests that the ’188 patent disavowed claim
`
`scope by distinguishing over prior art that lacks the service blocks or access
`
`keys required by its construction. POR 9. But the paragraph cited in the
`
`Response says nothing about service blocks or access keys, let alone teaches
`
`that these components overcome the prior art. Ex. 1001 1:53-62; POR 9.
`
`
`
`6
`
`

`

`
`
`
`Next, Patent Owner attempts to connect the ’188 patent’s discussion of
`
`the prior art to service blocks and access keys by citing to column 6 of the
`
`’188 specification. POR 9. But column 6 does not mention the prior art at
`
`all, instead merely reciting an exemplary embodiment of the claimed
`
`invention using permissive language. See Ex. 1001 6:8-22; POR 9-10. This
`
`passage does not even require service blocks or access keys, let alone teach
`
`that these components are the “particular feature” (POR 9) that distinguishes
`
`the invention over the prior art as Patent Owner suggests. The same is true
`
`for Patent Owner’s second citation to column 6, which merely continues the
`
`description of the same exemplary embodiment shown in Figure 2. POR 10,
`
`citing Ex. 1001 6:23-39 but see id. 5:42 (describing Fig. 2 as an “example
`
`embodiment”). In any case, as discussed in Section II.A, supra, the ’188
`
`patent specification recites other embodiments that do not use service blocks
`
`or access keys. Thus, there is no disavowal.
`
`Patent Owner also argues that its construction is supported by a
`
`“statement describing the invention as a whole.” POR 12-13. But the passage
`
`in the specification on which PO relies contains no such broad statement. To
`
`the contrary, as Patent Owner concedes, that passage merely teaches two
`
`different, exemplary embodiments of the claimed invention. POR 12-13,
`
`citing Ex. 1001 8:19-49 (describing two embodiments as “example[s]”).
`
`
`
`7
`
`

`

`Patent Owner fails to explain why these two, different examples constitute a
`
`description of the invention “as a whole.” They do not. As discussed above,
`
`the ’188 patent specification includes a variety of examples, including those
`
`that lack service blocks and access keys. And there is no statement in the
`
`specification (nor has PO cited any) that clearly indicates the patentee’s intent
`
`to narrow the claims to those examples, and it would thus be improper to limit
`
`the claims to those examples. Info-Hold, Inc.v. Applied Media Technologies
`
`Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) (refusing to limit claims where
`
`the specification had no “words that manifest a clear intention to restrict the
`
`scope of the claims to that embodiment.”).
`
`Patent Owner’s cited authority does not support its position. The
`
`Thorner case refutes Patent Owner’s argument that mere repeated use of
`
`verbiage in embodiments limits the claims. 669 F.3d at 1367 (holding that
`
`repeated use of the word “attached” did not rise to the level of disavowal).
`
`Likewise, SkinMedica’s and SafeTCare’s holdings that expressly contrasting
`
`the prior art from features in the specification does not apply here, because
`
`there is no such distinction regarding service blocks and access keys in the
`
`’188 specification. See 727 F.3d 1187 at 1197 (contrasting cell growing
`
`methods); 497 F.3d 1262 at 1270 (contrasting pushing vs. pulling in bariatric
`
`beds).
`
`8
`
`

`

`
`
`
`Likewise, at issue in Sony was the interpretation of a means-plus-
`
`function limitation. The portion Patent Owner cites contains an analysis of
`
`whether the structure depicted in a figure was “linked” to the claimed
`
`function—an essential part of construing a means-plus-function limitation,
`
`but an analysis that has no bearing on other types of claim interpretation. POR
`
`at 12. The challenged claims contain no means-plus-function limitations, and
`
`the Sony analysis is simply inapposite. Likewise, in Watts, the Federal Circuit
`
`found that the claims were limited because the specification described “the
`
`present invention” in a limiting manner—these words manifested a clear
`
`intention to limit the scope of the claims to that embodiment. 232 F.3d 877 at
`
`883. No such phrase exists in the passage Patent Owner cites. See also 503
`
`F. 3d 1295. 1308 (describing “the present invention” as a whole). Further, in
`
`Watts the feature in question was used to distinguish over the prior art in
`
`prosecution, providing additional support for narrowing the claims. Id.
`
`Nor does Patent Owner identify any “summation sentence” at the end
`
`of the embodiments as existed in GPNE. And as already discussed,
`
`embodiments in the specification describe that “enabling” can be achieved
`
`using various different hardware configurations—it is not limited to the
`
`service blocks and access keys in Patent Owner’s exemplary embodiments.
`
`
`
`9
`
`

`

`
`
`
`Thus, it cannot be argued that consistent description requires limiting the
`
`claims, as was the case in Regents. 717 F.3d 929 at 936.
`
`Moreover, Patent Owner’s argument that the column 8 examples
`
`describe the invention “as a whole” also contradicts its assertion that
`
`embodiments outside of column 8 (e.g., the Figure 2 embodiment in column
`
`6) “define” the claim term “local, secured biometric information.” See
`
`Section II.A, supra. Patent Owner cannot have it both ways.
`
`Patent Owner’s construction also contradicts the plain language of the
`
`claims—a fact that it completely ignores. For example, claim 1 allows either
`
`the RDC or the PDK to perform the “enabling,” thus, it cannot require access
`
`keys to be provided to the PDK in all instances. Ex. 1008 ¶ 9. Claim 11 does
`
`not specify the origin or destination of the enablement signal, making Patent
`
`Owner’s construction inappropriate for the same reason. Ex. 1008 ¶ 10.
`
`Further, neither claim 1 nor claim 11 recites language mandating “unlocking,”
`
`or “transmitting, receiving or sending messages” as Patent Owner’s
`
`construction requires. Ex. 1008 ¶ 11-12.
`
`At bottom, Patent Owner is asking the Board to commit one of the
`
`cardinal sins of claim construction—reading limitations found only in
`
`examples in the specification into the claims, and gives the Board no
`
`recognized reason to do so. Libel-Flarsheim co v. Medrad, Inc., 358 F.3d 898,
`
`
`
`10
`
`

`

`899 (Fed. Cir. 2004); Info-Hold, Inc.v. Applied Media Technologies Corp.,
`
`783 F.3d at 1267; 20/20 Vision Center v. Vision Precision Holdings, LLC, 801
`
`Fed. Appx. 770, 775 (Fed. Cir. 2020); ACTV v. Walt Disneyt Co., 346 F.3d
`
`1082, 1091 (Fed. Cir. 2003).4
`
`C.
`
`Dr. Eldering’s Claim Construction Analysis Should Be
`Rejected
`
`Patent Owner relies on Dr. Eldering’s expert declaration to support its
`
`Reply. But Dr. Eldering’s opinions do not describe how a POSITA would
`
`interpret the plain meaning of the claims or analyze the prior art. Instead,
`
`Patent Owner’s expert improperly focuses solely on the legal issue of
`
`lexicography. See, e.g., Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
`
`332 (2015).
`
`4 Even if there was some scope of disclaimer, Patent Owner’s construction
`
`include far more limitations than those discussed in specification. None of
`
`the cited passages from the ’188 patent teach or suggest any requirement of
`
`“unlock[ing a service block] prior to transmission” or “sending and receiving
`
`messages” as required by Patent Owner’s construction. Patent Owner
`
`completely fails to justify including this language in its construction.
`
`11
`
`

`

`Even if Dr. Eldering’s testimony were given any weight, it is
`
`completely contrary to Patent Owner’s construction, as he proposes different
`
`constructions for the claim terms at issue (Ex. 1009 ¶ 2):
`
`“local, secured biometric information”
`Patent Owner’s Construction
`Dr. Eldering’s Construction
`“biometric information stored
`“service block accessed by an
`within a service block of the
`access key provided to a PDK
`integrated PDK and accessed by a
`containing the service block” Ex.
`corresponding service block access
`2009 ¶¶ 17.
`key” POR 3.
`
` “enabling… a service”
`Patent Owner’s Construction
`Dr. Eldering’s Construction
`“sending or receiving a message
`“a memory controller of a PDK
`comprising information from a
`permitting access to service block of
`service block of a PDK unlocked,
`the PDK based on the PDK being
`prior to transmission, with an access
`provided an access key
`key provided to the PDK” POR 7.
`corresponding to the service block
`to be accessed” Ex. 2009 ¶ 18.
`
`Worse, Dr. Eldering’s expert declaration itself inconsistently defines
`
`these terms. In addition to the above-quoted construction of “local, secured
`
`biometric information” Dr. Eldering’s declaration also references Patent
`
`Owner’s construction in several paragraphs. See, e.g., Ex. 2009 ¶ 48. In
`
`other places, Dr. Eldering appears to propose a third construction requiring a
`
`“controller.” Id. ¶¶ 49-50.
`
`Similarly, Dr. Eldering’s declaration includes three constructions for
`
`the “enabling” limitation. In particular, in some portions of his declaration he
`
`12
`
`

`

`construes the “enabling” term to require “sending a message comprising
`
`information from a service block of a PDK unlocked, prior to transmission,
`
`with an access key provided to the PDK.” Ex. 2009 ¶¶ 55, 67, 72. This
`
`construction is similar to Patent Owner’s construction, but it does not appear
`
`to allow for “receiving” messages. Dr. Eldering also proposes a third
`
`construction that requires the “integrated PDK” perform the sending,
`
`apparently excluding external PDKs. Id. ¶ 69. These inconsistencies further
`
`undermine Patent Owner’s position.
`
`Even if his testimony were given any weight, Dr. Eldering’s analysis
`
`should nevertheless be rejected. First, Dr. Eldering’s opinions do not support
`
`Patent Owner’s rationale regarding disavowal of claim scope. In particular,
`
`Dr. Eldering opines that the specification “explicitly defines” the enabling
`
`term. Ex. 2009 at ¶ 56; POR 16, citing Ex. 2009 ¶¶ 55-69. He does not argue,
`
`as Patent Owner does, that the specification reflects disavowal. Here, again,
`
`Patent Owner and its expert have differing interpretations of the ’188 patent.
`
`The standard for disavowal (“clear and unmistakable disclaimer”) and
`
`13
`
`

`

`lexicography (a “clearly express[ed] intent to redefine the term”) are entirely
`
`different, and his testimony on one cannot be used to support the other.5
`
`Moreover, it is well-settled that extrinsic evidence is not relevant
`
`where, as here, there is no ambiguity in the claims. Because the parties agree
`
`that these claims have a plain meaning, there is no need to look to Dr.
`
`Eldering’s testimony to determine claim scope. See, e.g., Storage Tech. Corp.
`
`v. Cisco Sys., Inc., 329 F.3d 823, 832 (Fed. Cir. 2003).
`
`Finally, even if Dr. Eldering’s analysis did accurately represent
`
`embodiments described in the ’188 patent, as he suggests, Patent Owner
`
`admits that Dr. Eldering’s drawings merely describe exemplary embodiments.
`
`POR 13 (“Dr. Eldering provided figures illustrating the flow of these two
`
`examples.”), 15 (same) (emphasis added). Thus, Dr. Eldering’s analysis
`
`should be rejected.
`
`III. PATENT OWNER’S CRITICISM OF DR. WOLFE IS
`MERITLESS
`
`Patent Owner incorrectly asserts that Dr. Wolfe “failed to read the
`
`claims in the context of the specification.” POR 19. To support this assertion
`
`5 Contl. Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019);
`
`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012).
`
`14
`
`

`

`
`
`
`Patent Owner cites portions of Dr. Wolfe’s testimony where he states that he
`
`did not analyze whether the prior art taught unlocking information on a service
`
`block with an access key. Id. Patent Owner essentially argues that Dr.
`
`Wolfe’s opinions should be disregarded because he did not analyze the claims
`
`under Patent Owner’s constructions.
`
`To the contrary, Dr. Wolfe appropriately analyzed the claims in view
`
`of their plain and ordinary meaning in light of the specification. In any case,
`
`Dr. Wolfe could not have analyzed the claims under Patent Owner’s
`
`constructions because the constructions were submitted for the first time in
`
`the Preliminary Response, after Dr. Wolfe’s declaration. Accordingly, Patent
`
`Owner’s attempt to discredit Dr. Wolfe’s analysis is meritless.
`
`IV. THE PRIOR ART RENDERS OBVIOUS THE CLAIMS UNDER
`ANY CONSTRUCTION
`
`A.
`
`Patent Owner’s Analysis Of The Prior Art Is Unsupported
`Attorney Argument
`
`Patent Owner’s assertions that the prior art does not meet its
`
`constructions are nothing more than attorney argument, unsupported by expert
`
`testimony, and should be given no weight. Patent Owner’s expert, Dr.
`
`Eldering, did not analyze the prior art at all in his declaration. Indeed, the
`
`prior art cited in the Petition is only mentioned once in his declaration: in Dr.
`
`Eldering’s materials considered list. See, generally Ex. 2009. Thus, Patent
`
`
`
`15
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`

`

`
`
`
`Owner’s analysis of the prior art is attorney argument which should be given
`
`no weight. See, e.g., Quantum Metric, Inc. et al. v. Content Square Israel Ltd.,
`
`IPR2021-00364, Paper 62 at 78 (July 1, 2022).
`
`At a minimum, Patent Owner’s attorney argument does not outweigh
`
`Dr. Wolfe’s expert testimony, which confirms that the prior art meets the
`
`claims even under Patent Owner’s constructions. Ex. 1008 ¶¶ 3-4.
`
`B. Ground 1
`
`1. Giobbi ’157 discloses “local, secured biometric
`information” under PO’s construction
`
`Giobbi ’157 teaches “local, secured biometric information” under
`
`Patent Owner’s construction. There is no dispute that Giobbi ’157 teaches an
`
`integrated PDK that stores information, including biometric information, in
`
`tamper-proof memory. Ex. 1004 ¶¶ 6, 27-28, 33, 35, 37-38, Fig. 2. This
`
`tamper-proof memory is a service block for storing information in the
`
`integrated PDK as required by Patent Owner’s construction. The ’188 patent
`
`teaches that a “service block 112 is a protected memory element which allows
`
`an application 120 with the right credentials to access it.” Ex. 1001 8:57-59.
`
`Tamper-proof memory is such a “protected memory element.” Further,
`
`consistent with the description of a service block in the ’188 specification, the
`
`data in tamper-proof memory cannot be accessed without the right credentials.
`
`
`
`16
`
`

`

`
`
`
`For example, Giobbi ’157 teaches that a biometric input may be required to
`
`access the information stored in its memory:
`
`[A] biometric input can be used to unlock the PDK 102 for
`profile updates, or for various types of authentication. For
`example, in one embodiment, a biometric input is received by
`the PDK 102 … Then … the PDK 102 can indicate to the Reader
`108 that the user is authenticated and transmit additional
`information (e.g., a credit card number) ...
`
`Ex. 1004 ¶ 48 (emphasis added); Ex. 1008 ¶ 13. Thus, Giobbi ’157
`
`teaches “information stored within a service block [e.g., “tamper-proof
`
`memory”] of the integrated PDK and accessed by a corresponding service
`
`block access key [e.g., “biometric input”]” as required by Patent Owner’s
`
`construction. POR 3; Ex. 1008 ¶ 14-15. To the extent a “controller” is
`
`required under Dr. Eldering’s third construction, Giobbi ’157 also discloses
`
`such a controller. See Section V.B.
`
`2. Giobbi ’157 and Giobbi ’139 disclose “enabling one or
`more of an application, a function, and a service”
`under PO’s construction
`
`Giobbi ’157 also teaches “enabling one or more of an application, a
`
`function, and a service” under Patent Owner’s construction.6 Ex. 1008 ¶ 16.
`
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`6 Patent Owner vaguely references “Petitioner’s proposed construction”
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`(POR 23, 24), but Samsung has not proposed a construction for this term.
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`Paper 1 at 6.
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`17
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`As discussed above, Giobbi ’157 teaches that an access key (e.g., a
`
`biometric input) can be used to unlock information on a service block (e.g.,
`
`credit card information saved in tamper-proof memory). Ex. 1004 ¶ 48.
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`Giobbi ’157 further teaches that this unlocked information is then transmitted
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`from the service block to a “Reader” to be passed on to external applications.
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`Id. (“Then, if the user is authenticated, the PDK 102 can indicate to the Reader
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`108 that the user is authenticated and transmit additional information (e.g., a
`
`credit card number) needed to complete a transaction.”). Accordingly, Giobbi
`
`’157 teaches “sending or receiving a message comprising information [e.g., a
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`wireless transmission including credit card information] from a service block
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`of a PDK [e.g., tamper-proof memory] unlocked, prior to transmission, with
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`an access key provided to the PDK [e.g., unlocked by providing a biometric
`
`input before transmission]” as required by Patent Owner’s construction. Ex.
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`1008 ¶ 17.
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`Patent Owner argues that Giobbi ’157 does not meet its construction of
`
`the “enabling” limitation in claim 1 because it teaches using an “unsecure
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`communication” in an “unencrypted format.” POR 22-23 (“Nowhere is this
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`unsecure exchange of information described as including providing a key to
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`access information held within a service block of the PDK as required by the
`
`challenged claims.”). But this ignores Giobbi ’157’s teaching that a biometric
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`
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`18
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`
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`input provided to the PDK is used to “unlock” a biometric profile (or other
`
`information, like financial information) stored in the PDK’s tamper-proof
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`memory prior to transmission. Ex. 1004 ¶ 48, 43; Ex. 1008 ¶ 18.
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`Similarly, Patent Owner also argues that Giobbi ’157 does not meet its
`
`“enabling” construction for claim 10 because it only teaches a “Reader” that
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`requests and receives information from the PDK, not providing an access key
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`for unlocking information from a service block prior to transmission. POR
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`23. Here, again, Patent Owner ignores Giobbi ’157’s teachings regarding
`
`using an access key (fingerprint) to unlock secured information (e.g., credit
`
`card information) prior to transmission. Ex. 1004 ¶ 48 (“[A] biometric input
`
`can be used to unlock the PDK 102…a biometric input is received by the
`
`PDK 102 and compared to stored biometric information. Then, if the user is
`
`authenticated, the PDK 102 can indicate to the Reader 108 that the user is
`
`authenticated and transmit additional information (e.g., a credit card number)
`
`needed to complete a transaction.”); Ex. 1008 ¶ 19.
`
`Patent Owner also argues that Giobbi ’139 fails to teach the “enabling”
`
`limitation under its construction. POR 24. Patent Owner’s argument misses
`
`the mark. The petition relies on Giobbi ’139 as a secondary reference for this
`
`limitation merely to show that if the plain meaning of the claims is interpreted
`
`to require that the claimed application, function or service must run on the
`
`
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`19
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`
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`hybrid device itself (rather than on an external device), Giobbi ’139 teaches a
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`system where such an application, function or service (e.g., music playback)
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`is run on the hybrid device itself. Petition 42. This teaching (and the
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`motivation to combine outlined the petition) still applies if Patent Owner’s
`
`construction is accepted. Indeed, running an application, function or service
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`(like music playback) on a hybrid device is equally obvious in a system that
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`requires unlocking data on a service block of a PDK using access keys, as
`
`required by Patent Owner’s construction. Ex. 1008 ¶ 20.
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`To the extent a “memory controller” is required, Giobbi 157 teaches
`
`such a controller. See V.B; Ex. 1008 ¶ 21.
`
`C. Ground 2
`
`1.
`
`Broadcom discloses “local, secured biometric
`information” under PO’s construction
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`Patent Owner argues that Broadcom fails to disclose “local, secured
`
`biometric information” because it does not disclose that “data memory 314
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`[part of Broadcom’s “integrated PDK”] is decrypted with an access key
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`provided to the PDK—it only discloses the use of keys provided by the PDK
`
`to decrypt information received from data memory 314.” POR 25. Patent
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`Owner is incorrect. Ex. 1008 ¶ 22.
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`First, there can be no dispute that Broadcom teaches a service block.
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`Broadcom teaches PDK memory 314 which may store encrypted information.
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`
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`20
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`
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`POR 25 (admitting that data held within memory 314 may be encrypted). This
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`is a service block because it is a “protected memory element which allows an
`
`application 120 with the right credentials to access it” as taught by the ’188
`
`patent. Ex. 1001 8:57-59; Ex. 1008 ¶ 22.
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`Likewise, Patent Owner does not dispute that Broadcom teaches using
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`access keys, e.g., cryptographic keys, to unlock this type of secured
`
`information. POR 26, citing Ex. 1007 ¶ 120 (“[A] service may enable an
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`access device to….access encrypted data, use cryptographic keys, gain access
`
`to cryptographic material such as security associations and keys…”).
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`Broadcom also teaches that these keys may be “exchanged,” e.g., provided to
`
`a PDK from an external service. Ex. 1007 ¶ 138. Thus, Broadcom expressly
`
`teaches providing an access key (e.g., a cryptographic key) to unlocked
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`information secured on a service block (encrypted information in memory)
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`before transmission. Ex. 1008 ¶ 23.
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`Accordingly, Broadcom teaches “information stored within a service
`
`block of the integrated PDK [memory 314] and accessed by a corresponding
`
`service block access key [cryptographic key]” as required by Patent Owner’s
`
`construction. To the extent a “controller” is required, Broadcom teaches such
`
`a controller. See V.B; Ex. 1008 ¶ 24.
`
`
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`21
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`2.
`
`Broadcom disclose “enabling one or more of an
`application, a function, and a service” under PO’s
`construction
`
`Patent Owner argues that Broadcom only “teaches sending messages
`
`containing credential information from a token activated by proximity, which
`
`is distinct from the invention disclosed in the ’188 patent.” POR 26-27.
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`Patent owner further argues that “no key is used to unlock information prior
`
`to transmission.” Id. 27-28.
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`But, as discussed above, Broadcom teaches that external services may
`
`use cryptographic keys to unlock encrypted information, which may be stored
`
`in Broadcom’s service block. Thus, Broadcom does teach “receiving or
`
`sending a message comprising information from a service block of a PDK
`
`unlocked, prior to transmission, with an access key provided to the PDK” as
`
`required by Patent Owner’s construction. To the extent a “memory
`
`controller” is required, Broadcom teaches such a controller. See V.B; Ex.
`
`1008 ¶ 25-26.
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`D. Ground 3
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`Patent Owner’s Ground 3 analysis cross-references Grounds 1 and 2.
`
`POR 29. For the same re