throbber
Samsung Electronics America, Inc. v. Proxense, LLC
`
`IPR2021-01438
`IPR2021-01439
`U.S. Patent Nos. 9,049,188 and 9,235,700
`
`Petitioner’s Demonstratives
`
`Hearing: November 29, 2022
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`1
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`

`

`Instituted Grounds
`
`IPR2021-01349 (’700 Patent)
`
`Ground
`
`Claim(s) challenged
`
`Obviousness over Giobbi ’157, Giobbi ’139 and Dua 1-20
`
`Obviousness over Broadcom alone
`
`1-7, 9, 11-16 and 18-19
`
`Obviousness over Broadcom and Giobbi ’157
`
`8, 10, 17 and 20
`
`IPR2021-01348 (’188 Patent)
`
`Ground
`
`Claim(s) challenged
`
`Obviousness over Giobbi ’157, Giobbi ’139 and Dua 1-20
`
`Obviousness over Broadcom alone
`
`1-7, 9-15 and 17-18
`
`Obviousness over Broadcom and Giobbi ’157
`
`8, 16 and 19-20
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`2
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`Overview of the ’188 and ’700 Patents
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`’188 and ’700 Patents – Background
`
`• Both patents recite the same four basic elements:
`
`’188 Patent
`
`’700 Patent
`
`Ex. 1001 (188 patent) at Claim 1; Pet. at List of Challenged Claims.
`
`Ex. 1001 (700 patent) at Claim 1; Pet. at List of Challenged Claims.
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`’188 and ’700 Patents – Background
`
`• Both patents recite the same four basic elements:
`
`’188 Patent
`
`1. “Hybrid Device”: e.g., cell phone
`
`2.
`
`3.
`
`4.
`
`“integrated PDK”: personal digital
`key inside the hybrid device
`
`“external RDC”: receiver decoder
`circuit outside the hybrid device
`
`“integrated RDC”: receiver decoder
`circuit inside the hybrid device
`
`Ex. 1001 (188 patent) at Claim 1; Pet. at List of Challenged Claims.
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`’188 and ’700 Patents – Background
`
`• Both patents recite the same four basic elements:
`
`1. “Hybrid Device”: e.g., cell phone
`
`2.
`
`3.
`
`4.
`
`“integrated PDK”: personal digital
`key inside the hybrid device
`
`“external RDC”: receiver decoder
`circuit outside the hybrid device
`
`“integrated RDC”: receiver decoder
`circuit inside the hybrid device
`
`Ex. 1001 (188 patent) at Fig. 13 (annotated)
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`’188 and ’700 Patents – Background
`
`• PDK/RDC communication enables an application/function/service:
`
`Ex. 1001 (188 patent) at 16:23-28; 188 Pet. at 5; 700 Pet. At 5-6.
`
`Ex. 1001 (188 patent) at Claim 1; 188 Pet. at 5; 700 Pet. At 5-6.
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`’188 and ’700 Patents – Background
`
`• District Court’s Constructions:
`
`POR at 3; 188 Reply at 23-31; 700 Reply at 22-31.
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`Overview of the Prior Art
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`Prior art: Giobbi ’157
`
`Ex. 1004 at Abstract; 188 Pet. at 7;
`700 Pet. at 6.
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`

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`Prior art: Giobbi ’157
`
`Ex. 1004 at [0049]; 188 Pet. at 7;
`700 Pet. at 7.
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`Prior art: Giobbi ’157
`
`Ex. 1004 at Fig. 3 (annotated); 188 Pet. at 8;
`700 Pet. at 8.
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`Prior art: Giobbi ’139
`
`Ex. 1005 (Giobbi '139) at Abstract; 188 Pet. at 10;
`700 Pet. at 10.
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`Prior art: Giobbi ’139
`
`Ex. 1005 (Giobbi '139) at [0088]; 188 Pet. at 10;
`700 Pet. at 10.
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`

`

`Prior art: Dua
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`15
`
`Ex. 1006 (Dua) at Abstract; 188 Pet. at 34;
`700 Pet. at 33.
`
`

`

`Prior art: Dua
`
`Ex. 1006 (Dua) at Fig. 4A (annotated); 188 Pet. at 14;
`700 Pet. at 14.
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`Prior art: Giobbi ’157 + Giobbi ’139
`
`• Obvious to combine Giobbi 157’s system with Giobbi 139’s “integrated RDC”:
`
`Ex. 1004 (Giobbi '157) at Fig. 3 (annotated); 188 Pet. at 36;
`700 Pet. at 35.
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`Prior art: Broadcom
`
`Ex. 1007 at Abstract; 188 Pet. at 11;
`700 Pet. at 11.
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`Prior art: Broadcom
`
`Ex. 1007 at Figs. 1, 6; 188 Pet. at 11-12;
`700 Pet. at 11-12.
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`Undisputed Issues
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`Issues Not In Dispute
`
`Patent Owner does not dispute:
`
`• Challenged claims are unpatentable according to their plain
`and ordinary meaning.
`
`• The prior art discloses each and every limitation of the
`dependent claims.
`
`• That a POSITA would have been motivated to combine the
`references in the asserted grounds
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`Issues Not In Dispute
`
`• Dr. Eldering does not provide any opinions on:
`
`•
`
`the scope or content of the prior art
`
`• motivation to combine
`
`•
`
`reasonable expectation of success
`
`• Dr. Eldering renders opinions on two claim construction issues:
`
`•
`
`•
`
`“local secured information” is explicitly defined by specification (¶17)
`
`“enabling” is explicitly defined by the specification (does not address
`disavowal) (¶18)
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`The Term “Local, Secured Information” Should Be
`Given Its Plain Meaning
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`1) The term “local, secured information” should be given its plain meaning—
`lexicography does not apply (All Grounds)
`
`2) The term “enabling one or more of an application, a function and a service”
`should be given its plain meaning—disavowal does not apply (All Grounds)
`
`3) Giobbi ’157, Giobbi ’139 and Dua render obvious the claims under any
`construction (Ground 1)
`
`4) Broadcom and Giobbi ’157 render obvious the claims under any
`construction (Grounds 2 and 3)
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`Petitioner:
`
`•
`
`“Local, secured information” should be given its plain meaning:
`
`•
`
`“local memory for storing information for authenticating a user, wherein
`the information is secured”
`
`Patent Owner:
`
`• PDK requires:
`
`• A controller (Sur-Reply at 2);
`
`• Controller must “implement an algorithm” (Sur-Reply at 2).
`
`•
`
`“Local, secured information” requires:
`
`•
`
`Information stored within a service block (POR at 3);
`
`• Accessed by a corresponding service block access key (POR at 3)
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Dr. Wolfe:
`
`Ex. 1003 (Wolfe Pet. Decl.) at 41; 188 Pet
`at 25-26; 700 Pet. at 25-26.
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• No dispute: “local, secured information” has an ordinary meaning – applied
`
`by the board:
`
`’188 ID at 18-19.
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Patent Owner’s initial CC argument: PDK explicitly defined to require
`memory having a service block unlocked by an access key provided to the
`PDK. (POPR at 3,10)
`
`• The Board disagreed:
`
`Institution Decision
`
`’188 ID at 18-19.
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Patent Owner reiterated its PDK construction in its request for rehearing:
`
`• The Board disagreed:
`
`Paper 14 (Mot. for Rec. at 3)
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`Decision Denying Reh’g at 5.
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Patent Owner’s PDK construction in the district court (prior to institution):
`
`PO’s DCT PDK Construction
`
`District Court
`
`POR at 3.
`
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`POR at 3.
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Patent Owner’s pre-institution PDK construction, DCT construction, and post-
`institution local secured information construction
`
`PDK: Pre-Institution
`
`PDK: DCT
`
`POPR at 3,10.
`
`Local Secured Information: Post-Institution
`
`Ex. 2001 at 15; POPR at 2.
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`POR at 3.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• The standard for lexicography is exacting– patentee must clearly
`
`• Patentee must “clearly” set forth definition and express an intent to define the term
`
`“[T]he specification and prosecution history only
`compel departure from the plain meaning in two
`instances: lexicography and disavowal. The
`standards for finding lexicography and disavowal
`are exacting. To act as his own lexicographer, a
`patentee must “clearly set forth a definition of the
`disputed claim term, “ and “clearly express an
`intent to define the term.”
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`188 Reply at 3; 700 Reply at 3.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• A patent that discloses a single embodiment is not necessarily limited:
`
`A patent that discloses only one embodiment is not necessarily
`limited to that embodiment . . .
`
`There are certainly cases where we have found disavowal or
`disclaimer based on clear and unmistakable statements by the
`patentee that limit the claims, such as “the present invention
`includes” or the “present invention is” or “all embodiments of
`the present invention are”
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309-10 (Fed. Cir. 2014)
`
`• Fed. Cir.: Claim not limited because spec did not refer to “present invention” or
`“disparage” prior art.
`
`188 Reply at 3; 700 Reply at 3.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• The standard for lexicography is high:
`
`“To act as its own lexicographer, a patentee must “clearly
`set forth a definition of the disputed claim term . . . It is
`not enough for a patentee to simply disclose a single
`embodiment or use a word in the same manner in all
`embodiments, the patentee must “clearly express an
`intent” to redefine the term.”
`
`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir 2012);
`188 Reply at 8; 700 Reply at 8.
`
`• Examples of specification redefining a claim term: (cited in Thorner at 1366):
`
`•
`
`•
`
`“multiple embossed’ means two or more embossing patterns…”
`
`“[t]he solubilizers suitable according to the invention are defined below.”
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• The standard for lexicography is high:
`
`Notwithstanding the fact that the claim language must be
`examined in light of the written description, limitations
`may not be read into the claims from the written
`description. . . .Similarly, the mere fact that the patent
`drawings depict a particular embodiment of the patent
`does not operate to limit the claims to that specific
`configuration.
`
`Prima Tek II v. Polypap, 318 F.3d 1143 at 1148 (2002); 188 Reply at 3; 700 Reply at 3.
`
`• Fed. Cir. found the specification “at most ambiguous” – no lexicography. Id. at
`1149
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`“[A]s this court made clear in Teleflex, the existence of a
`single embodiment in the written description does not
`necessarily constrain the scope of the claims. Where the
`written description does not expressly limit the claim term
`and otherwise supports a broader interpretation, “we are
`constrained to follow the language of the claims,” id., and
`give the claim term its full breadth of ordinary meaning as
`understood by persons skilled in the art.”
`
`ACTV v. Walt Disney Co., 346 F.3d 1082, 1091 (Fed. Cir. 2003);
`188 Reply at 10-11; 700 Reply at 10-11.
`
`“In this case, the specification does not describe the
`invention as limited to embodiments having pressure
`jackets, and none of the other reasons that have been
`invoked for giving claims a narrow reading are
`present. Although all the embodiments described in
`the common specification of the ′669 and ′261
`patents include a pressure jacket, the written
`description does not contain a clear disavowal of
`embodiments lacking a pressure jacket.”
`
`Libel-Flarsheim co v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004);
`188 Reply at 10-11; 700 Reply at 10-11.
`
`Decision Denying Reh'g at 4.
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• The Board’s institution and rehearing decisions followed the Federal Circuit’s
`
`mandate:
`
`Decision Denying Rehearing at 5.
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO: Patents “explicitly” defines “local secured information, based on three
`paragraphs:
`
`• PO argues this paragraph requires:
`
`• PDK that includes service blocks
`
`’188 patent at 3:14-21, discussing Figs. 1 & 2; POR at 4.
`
`• Service blocks that are unlocked with “access keys”
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO: “definitional” paragraph isn’t an “example” or an “embodiment”
`
`POR:
`
`POR at 4.
`
`’188 Patent
`
`’188 Patent at 3:14-21, discussing Fig 2; 188 Reply at 4;
`700 Reply at 3-4.
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`39
`
`’188 Patent at 2:24-2; 188 Reply at 4
`700 Reply at 3-4.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO’s second paragraph for an “explicit” definition:
`
`’188 Patent at 5:26-34, discussing Figs. 1
`& 2; 188 Reply at 4; 700 Reply at 3-4.
`
`• PO’s Response:
`
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`
`POR at 6.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO’s last paragraph for “explicit” definition:
`
`• PO’s Response:
`
`’188 Patent at 8:44-49, discussing Figs. 1 & 2; 188 Reply at 4;
`700 Reply at 3-4.
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`
`POR at 7.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• The ‘188 Patent includes additional embodiments that do not require a
`service block or keys:
`
`“Less
`functionality”
`
`“minimal embodiment”
`includes:
`• Antenna/transceiver
`• Controller/memory
`
`’188 Patent at 13:41-53; 188 Reply at 4; 700 Reply at 4.
`
`• PO states: ‘As both parties agree, the minimal embodiment of an integrated PDK comprises
`“an antenna and a transceiver for communicating with a RDC (not shown) and a controller
`and memory for storing information particular to a user.’. (Sur-Reply at 1-2.)
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`

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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO argues that “minimal embodiment” doesn’t apply because claims further “defined”
`functionally to “store local, secure biometric information:
`
`• PO’s proposed definition:
`
`Sur-Reply at 1.
`
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`
`POR at 5.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO: claims are functionally limited; cites Sony:
`
`Sur-Reply at 2.
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Sony is inapplicable:
`
`• Dispute: whether a “reproducing means”
`limitation was computer-implemented and
`required an algorithm
`
`• No dispute: “reproducing means” was a
`means-plus-function limitation
`
`• PTAB: The Board held corresponding
`structure for “reproducing means” did not
`require an algorithm
`
`• Fed. Cir.: “algorithm” was corresponding
`structure and properly linked to the claimed
`function
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`
`188 Reply at 9; 700 Reply at 8-9.
`
`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Federal Circuit: algorithm was corresponding structure to the Means-plus-function
`limitation:
`
`“In cases involving a computer-implemented invention in
`which the inventor has invoked means-plus-function
`claiming, this court has consistently required that the structure
`disclosed in the specification be more than simply a general
`purpose computer or microprocessor…
`
`…Since we conclude that the reproducing means limitation is
`computer-implemented, the corresponding structure must
`include an algorithm.”
`
`Sony v. Iancu, 924 F.3d 1235, 1240-41 (Fed. Cir. 2019)
`188 Reply at 9; 700 Reply at 9.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Federal Circuit: The algorithm was clearly linked to the claimed function:
`
`“The ‘676 patent specification clearly links the function of the
`“reproducing means” to the algorithm flowchart of Figure 16.”
`
`• The Federal Circuit identified “present invention” language as a link to the structure:
`
`Sony v. Iancu, 924 F.3d 1235, 41 (Fed. Cir. 2019)
`188 Reply at 9; 700 Reply at 9.
`
`“The specification explains that ‘[i]n reproducing such a
`recording medium by using the reproducing device of the
`present invention, the processing as shown in Fig. 16 is
`executed.”
`
`Sony v. Iancu, 924 F.3d 1235, 41 (Fed. Cir. 2019)
`188 Reply at 9; 700 Reply at 9.
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• Patent owner admits in its Sur-Reply that Sony relates to a means-plus-function analysis:
`
`• But argues that it is a “disavowal” case:
`
`Sur-Reply at 2, fn. 4.
`
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`POR at 12.
`
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`

`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO maintained its reliance on Sony in Sur-Reply:
`
`Sur-Reply at 7.
`
`Sur-Reply at 7.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO maintained its reliance on Sony in Sur-Reply:
`
`Sur-Reply at 7-8.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO adds "controller" implementing an "algorithm" in Sur-Reply, again relying on
`Sony:
`
`Sony v. Iancu, 924
`F.3d 1235 (Fed. Cir.
`2019)
`
`Sur-Reply at 2.
`
`Sur-Reply at 2.
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`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO: Claims “recite” a "controller" requiring an "algorithm":
`
`’188 Patent
`
`Ex. 1001 (188 Patent) at claim 1; Pet. at List of Challenged Claims.
`
`Sur-Reply at 2.
`
`PO: claims
`“recite”
`presence of
`controller
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO also relies on Thorner for its lexicography argument (Resp. at 3, 4, 8)
`
`• But the Fed. Cir. in Thorner found repeated use in the specification did not
`
`rise to the level of lexicography or disclaimer:
`
`[Sony] argues that in every instance where the specification uses the term “attached,” it refers
`to an attachment to an outer surface. Conversely, in every embodiment where the actuator is
`placed inside a housing, the specification uses the term “embedded.”
`
`We hold that this does not rise to the level of either lexicography or disavowal. Both
`exceptions require a clear and explicit statement by the patentee.
`
`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1367-68 (Fed. Cir 2012);
`
`188 Reply at 8, n. 5; 700 Reply at 8, n. 5.
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`

`Claim Construction: “Local, Secured [biometric/financial] Information”
`
`• PO and its expert provide competing “definitions” in the Response:
`
`Patent Owner
`
`Dr. Eldering
`
`“biometric information stored within a
`service block of the integrated PDK
`and accessed by a corresponding
`service block access key”
`
`“information stored within service
`blocks of the integrated PDK
`accessed by corresponding service
`block access keys”
`
`“an operably connected collection of
`elements including an antenna and a
`transceiver for communicating with a
`RDC and a controller and memory for
`storing information particular to a
`user”
`
`“service block accessed by an access
`key provided to a PDK containing the
`service block”
`
`’188 Ex. 2009 (Eldering Dec.) at ¶¶ 17, 48, 59; POR at 3; 188 Reply at 12; 700 Reply at 12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`

`

`The “Enabling” Term Should Be Given Its Plain
`Meaning
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`

`

`Claim Construction: “Enabling”
`
`1) The term “local, secured information” should be given its plain meaning—
`lexicography does not apply (All Grounds)
`
`2) The term “enabling one or more of an application, a function and a service”
`should be given its plain meaning—disavowal does not apply (All Grounds)
`
`3) Giobbi ’157, Giobbi ’139 and Dua render obvious the claims under any
`construction (Ground 1)
`
`4) Broadcom and Giobbi ’139 render obvious the claims under any
`construction (Grounds 2 and 3)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`56
`
`

`

`Claim Construction: “Enabling”
`
`Petitioner:
`
`• Plain meaning: “to make possible”
`
`Patent Owner:
`
`•
`
`“enabling…” requires:
`
`•
`
`•
`
`“service block” (POR at7);
`
`“unlocking, prior to transmission” the service block (POR at 7);
`
`• Using an “access key” to unlock (POR at 7);
`
`•
`
`“external PDK” must enable (added in Sur-Reply at 9).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`57
`
`

`

`Claim Construction: “Enabling”
`
`• Dr. Wolfe:
`
`Ex. 1003 at ¶ 63;
`188 Pet. at 41; 700 Pet. at 41.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`58
`
`

`

`Claim Construction: “Enabling”
`
`•
`
`Institution Decision: plain meaning
`
`’188 POR at 30;
`188 Reply at 5; 700 Reply at 5.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`

`

`Claim Construction: “Enabling”
`
`• Decision on Rehearing:
`
`Decision on Reh’g at 5-6;
`188 Reply at 1, n. 2, 6; 700 Reply at 1, n. 2, 6.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`

`

`Claim Construction: “Enabling”
`
`• Patent Owner’s Response reiterates POPR/Rehearing arguments:
`
`’188 POR at 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`

`

`Claim Construction: “Enabling”
`
`• The standard for disavowal is exacting:
`
`“[T]he specification and prosecution history only
`compel departure from the plain meaning in two
`instances: lexicography and disavowal. The
`standards for finding lexicography and disavowal
`are exacting. [D]isavowal requires that ‘the
`specification [or prosecution history] make[ ] clear
`that the invention does not include a particular
`feature.’”
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`188 Reply at 3; 700 Reply at 3.
`
`

`

`Claim Construction: “Enabling”
`
`• The Federal Circuit reversed:
`
`“There is no lexicography or disavowal here…
`[W]hile the specifications only disclose a single
`embodiment of an IDC connector in Figure 6, they do
`not disavow or disclaim the plain meaning of IDC
`connector or otherwise limit it to that embodiment. A
`patent that discloses only one embodiment is not
`necessarily limited to that embodiment.”
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`188 Reply at 3; 700 Reply at 3.
`
`

`

`Claim Construction: “Enabling”
`
`• Federal Circuit– no disavowal because no:
`
`•
`
`clear and unmistakable statements by the
`
`patentee that limit the claims (‘the present invention
`
`includes ...’ or ‘the present invention is ...’ or ‘all
`
`embodiments of the present invention are....’);
`
`•
`
`repeatedly disparaged an embodiment
`
`(‘antiquated,’ having ‘inherent inadequacies,’ and
`
`detailing ‘deficiencies [that] make it difficult’ to use);
`
`• Description of a feature as very important while
`
`disparaging alternatives.
`
`GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`188 Reply at 3; 700 Reply at 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`

`

`Claim Construction: “Enabling”
`
`• PO: Patents “disavow” ordinary meaning of “enabling” based on six paragraphs:
`
`’188 patent at 1:53-62; POR at 9; 188 Reply at 6; 700 Reply at 6.
`
`• Not a disavowal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`

`

`Claim Construction: “Enabling”
`
`• PO’s second “disavowal” paragraph”:
`
`• Not a disavowal
`
`’188 patent at 6:8-22; POR at 9-10;
`188 Reply at 7; 700 Reply at 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`

`

`Claim Construction: “Enabling”
`
`• PO’s third “disavowal” paragraph
`
`• Not a disavowal
`
`’188 patent at 6:23-39; POR at 10-11;
`188 Reply at 7; 700 Reply at 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`

`

`Claim Construction: “Enabling”
`
`• PO’s fourth “disavowal” paragraph
`
`’188 patent at 8:43-49; POR at 12-13; 188 Reply at 7-8; 700 Reply at 7-8.
`
`• PO: statement describing “invention as a whole”
`
`• Not a disavowal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`68
`
`

`

`Claim Construction: “Enabling”
`
`• PO’s fifth “disavowal” paragraph
`
`’188 patent at 8:1-9, discussing Fig. 5; POR at 17;
`188 Reply at 7, 10; 700 Reply at 7, 9-10.
`
`• PO: passage is a “definitive statement” limiting claim scope
`
`• Not a disavowal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`69
`
`

`

`Claim Construction: “Enabling”
`
`• PO’s final “disavowal” paragraph”
`
`’188 patent at 8:57-63; POR at 17; 1
`88 Reply at 7, 10; 700 Reply at 7, 9-10.
`
`• PO: another “definitive statement” limiting claim scope
`
`• Not a disavowal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`70
`
`

`

`Claim Construction: “Enabling”
`
`• The ’188 Patent includes additional embodiments that do not require a
`service block or keys:
`
`“Less
`functionality”
`
`“minimal embodiment”
`includes:
`• Antenna/transceiver
`• Controller/memory
`
`’188 Patent at 13:41-53; Sur-Reply at 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`71
`
`

`

`Claim Construction: “Enabling”
`
`• PO argues that “minimal embodiment” doesn’t apply because claims further require
`functionally to “store local, secure biometric information:
`
`• But PO’s proposed definition for “enabling” is based on its argument that a PDK requires
`"service blocks" and "access keys":
`
`Sur-Reply at 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`72
`
`POR at 3.
`
`

`

`Claim Construction: “Enabling”
`
`• Patent Owner and Dr. Eldering’s competing definitions:
`
`Patent Owner
`
`Dr. Eldering
`
`“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”
`
`“a memory controller of a
`PDK permitting access to a
`service block of the PDK
`based on the PDK being
`provided an access key
`corresponding to the service
`block to be accessed”
`
`POR at 7; Ex. 2009 ¶ 18;
`188 Reply at 12; 700 Reply at 12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`73
`
`

`

`Claim Construction: “Enabling”
`
`• Dr. Eldering did not apply a “disavowal” standard:
`
`Ex. 2009 at ¶ 56;
`188 Reply at 13; 700 Reply at 13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`74
`
`

`

`Claim Construction: “Enabling”
`
`• Patent Owner’s constructions are inconsistent:
`
`Patent Owner
`
`Dr. Eldering
`
`“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”
`
`“a memory controller of a PDK permitting
`access to a service block of the PDK based on
`the PDK being provided an access key
`corresponding to the service block to be
`accessed”
`
`POR at 7; Ex. 2009 ¶ 18;
`188 Reply at 12; 700 Reply at 12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`75
`
`Sur-Reply at 9.
`
`

`

`Claim Construction: “Enabling”
`
`• Patent Owner cites several cases in support of its “disavowal”
`theory:
`
`• Sony Corp. v. Iancu
`
`• Thorner v. Sony Computer Ent. Am. LLC
`
`• SkinMedica, Inc. v. Histogen, Inc.,
`
`• SafeTCare Mfg., Inc. v. TeleMade, Inc.
`
`• Regents of the Univ. of Minnesota v. AGA Medical Corp.
`
`• GPNE Corp. v. Apple Inc.
`
`• Verizon Services Corp. v. Vonage Holdings Corp.
`
`• Watts v. XL Systems, Inc.
`
`• None of these cases apply
`
`POR at 8; Sur-Reply at 7; 188 Reply at 8-10; 700 Reply at 8-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`76
`
`

`

`Claim Construction: “Enabling”
`
`• PO again relies on Sony
`
`• Sony addressed means-plus-function claims:
`
`“The Board construed the “reproducing
`means” limitation as a means-plus-function
`limitation.”
`
`Sony Corp. v. Iancu, 924 F.3d 1235, 1238 (Fed. Cir. 2019) (emphasis added)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`77
`
`188 Reply at 9; 700 Reply at 9.
`
`

`

`Claim Construction: “Enabling”
`
`• PO relies on Thorner – but Thorner found no disavowal
`
`• Dispute: whether “attached to said pad” should
`be given its plain meaning
`
`• District Court: “attached” was limited to attached
`to the outside of an object;
`
`• specification exclusively and consistently
`used the term “attached” to mean affixing to
`the outer surface, and “embedded” for the
`inner surface
`
`• Claim differentiation: claim 1 recites
`“attached” and dependent claim 10 recites
`“embedded.”
`
`• Fed. Cir.: No disavowal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`188 Reply at 8; 700 Reply at 8.
`
`78
`
`

`

`Claim Construction: “Enabling”
`
`• Federal Circuit found no disavowal:
`
`“As Sony argues, the specification repeatedly uses the term ‘attached’ in reference to
`embodiments where the actuators are ‘attached to [an] outer side.’…the specification
`never uses the word ‘attached’ when referring to an actuator located on the interior of a
`controller.
`
`We hold that this does not rise to the level of either lexicography or disavowal…It is
`not enough that the patentee used the term when referencing an attachment to an
`outer surface in each embodiment. ”
`
`“It is likewise not enough that the only embodiments, or all of the embodiments,
`contain a particular limitation. We do not read limitations from the specification into
`claims; we do not redefine words. Only the patentee can do that. To constitute
`disclaimer, there must be a clear and unmistakable disclaimer.”
`
`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir 2012)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`79
`
`188 Reply at 8; 700 Reply at 8.
`
`

`

`Claim Construction: “Enabling”
`
`• Federal Circuit example of a “disavowal” or lexicography:
`
`“[T]he specification stated: ‘The intermediate sleeve structure defined above [coaxial
`design] is the basic sleeve structure for all embodiments of the present invention
`contemplated and disclosed herein.”
`
`"For example, in SciMed, the patentee described two different types of catheters in the
`prior art, those with dual lumens (side-by-side) and those with coaxial lumens. 242
`F.3d at 1339. In discussing the prior art, the patentee disparaged the dual lumen
`configuration as larger than necessary and less pliable than the coaxial type. Id. at
`1342. Further, the specification repeatedly described the “present invention” as a
`coaxial design."
`
`Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir 2012)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`80
`
`188 Reply at 8; 700 Reply at 8.
`
`

`

`Claim Construction: “Enabling”
`
`• SkinMedica found a disavowal based on repeated distinctions in the specification and
`statements in the prosecution history to avoid prior art:
`
`“We agree with the court's exclusion of beads from
`the construction of the disputed phrase. In the written
`description, the patentees plainly and repeatedly
`distinguished culturing with beads from culturing
`in three-dimensions. They expressly defined the use
`of beads as culturing in two-dimensions. And they
`avoided anticipatory prior art during prosecution by
`asserting that the conditioned medium produced by
`two-dimensional cultures was inferior and
`chemically distinct from the conditioned medium
`produced by three-dimensional cultures.”
`
`SkinMedica, Inc. v. Histogen, Inc., 727 F.3d 1187, 1196 (Fed. Cir.
`2019) (emphasis added)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`81
`
`188 Reply at 8; 700 Reply at 8.
`
`

`

`Claim Construction: “Enabling”
`
`• SafeTCare adopted a claim interpretation based on specification’s
`clear distinctions over the prior art:
`
`“[T]he patentee repeatedly emphasized its invention
`as applying pushing forces as opposed to pulling
`forces against the lift dogs.”
`
`“[Summary of Invention:] The pushing (as opposed
`to pulling) forces applied by the electric motors…”
`
`“[Detailed Description:] As an important feature of
`the present invention…bed lift motors 6 and 8 apply
`pushing forces…This is in contrast to
`conventional…pulling force”
`
`SafeTCare Mfg., Inc. v. TeleMade, Inc. 497 F.3d 1262, 1270
`(Fed. Cir. 2007) (emphasis added)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`188 Reply at 8; 700 Reply at 8.
`
`82
`
`

`

`Claim Construction: “Enabling”
`
`• Regents limited the claims to "separate" discs based on claim language, a statement regarding
`the “present invention” in the specification and statements by applicant in the prosecution
`history:
`
`“The claim language fully supports a requirement of
`separateness. Independent claim 1 explains that the
`“conjoint disk” is formed by “affix[ing]” the membranes of
`the “first and second occluding disks” to one another.”
`
`"The separateness requirement is also fully supported by the
`specification... ‘When a patent thus describes th

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