UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`AIRE TECHNOLOGY LTD.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-01137
`
`Patent 8,581,706
`
`
`
`_______________________________________________________________
`
`PATENT OWNER’S MOTION TO AMEND
`
`UNDER 37 C.F.R. § 42.121
`
`1
`
`
`
`

`

`
`
`Contents
`
`
`
`I. INTRODUCTION ........................................................................................... 1
`
`II. LEGAL STANDARD – MOTION TO AMEND ........................................... 1
`
`a. Substitute Claims Do Not Add New Matter. .................................................. 2
`
`b. Substitute Claims Do Not Expand the Scope of the Claims of the ’706
`Patent .............................................................................................................10
`
`c. Patent Owner Proposes a Reasonable Number of Substitute Claims ..........10
`
`d. The Proposed Substitute Claims Respond to the Instituted Grounds,
`Petitioner’s Opposition, and Preliminary Guidance. ..................................... 11
`
`e. CONCLUSION ............................................................................................13
`
`APPENDIX A .................................................................................................... 1
`
`
`
`
`
`
`
`
`
`i
`
`

`

`Table of Authorities
`
`
`Cases
`
`Aqua Products Inc. v. Matal, 872 F.3d 1290, 1324 (Fed. Cir. 2017) (en banc) ......... 1
`
`Corning Optical Comm'n RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper
`19 at 3 (PTAB Oct. 30, 2014) ...............................................................................10
`
`L&P Property Mgt. Co. v. Remacro Machinery & Tech. Co., Ltd., Case IPR2019-
`00255, p. 6 (PTAB Jun. 18, 2019) (Paper No. 15) ................................................. 2
`
`Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15., p.7
`(Feb. 25, 2019) ........................................................................................................ 3
`
`
`
`Statutes
`
`35 U.S.C. § 316(d)(3)........................................................................................ 10, 13
`
`37 C.F.R. § 42.121(a)(2)(i) ........................................................................................ 2
`
`37 C.F.R. § 42.121(a)(2)(ii) ............................................................................ 2, 9, 10
`
`37 C.F.R. § 42.121(a)(3) ................................................................................ 2, 10, 11
`
`37 C.F.R. § 42.121(d)(1) ............................................................................................ 1
`
`
`
`ii
`
`

`

`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121, Patent Owner submits
`
`this contingent Motion to Amend, to substitute proposed claims 23 – 26 for original
`
`claims 11, 12, 18, and 20, respectively, of U.S. Patent No. 8,581,706 (“the ’706
`
`Patent”). The Board has authorized this motion pursuant 37 C.F.R. § 42.121(a) via
`
`email on March 28, 2023.
`
`Patent Owner requests preliminary guidance from the Board on this Motion
`
`to Amend pursuant to the Pilot Program Concerning Motion to Amend Practice and
`
`Procedures in Trial Proceedings Under the AIA. 86 Fed. Reg. 51656 (Sept. 16,
`
`2021); 84 Fed. Reg. 9497 (March 15, 2019).
`
`Patent Owner submits that this Motion to Amend satisfies the requirements
`
`under 37 C.F. R. §42.121(a), as explained below. Accordingly, should the Board
`
`find that claims 11, 12, 18, and 20 of the ’706 Patent are unpatentable, Patent Owner
`
`requests that the Board grant this Motion and herewith substitute original claims 11,
`
`12, 18, and 20 with corresponding proposed substitute claims 23 – 26.
`
`II.
`
` LEGAL STANDARD – MOTION TO AMEND
`
`For a motion to amend, a Patent Owner need show that the requirements of
`
`“paragraphs (1) and (3) of 35 U.S.C. 316(d), as well as paragraphs (a)(2), (a)(3),
`
`(b)(1), and (b)(2) of [37 C.F.R. § 42.121]” are met. 37 C.F.R. § 42.121(d)(1). The
`
`burden to show that the amended claims are unpatentable over the prior art rests
`
`solely on the Petitioner. 37 C.F.R. § 42.121(d)(2); Aqua Products Inc. v. Matal, 872
`
`F.3d 1290, 1324 (Fed. Cir. 2017) (en banc).
`
`1
`
`
`
`

`

`A Patent Owner must therefore only show that the substitute claims (1) do not
`
`introduce new subject matter (37 C.F.R. § 42.121(a)(2)(ii); 2) do not impermissibly
`
`seek to enlarge the scope of the claims (id.); 3) propose a reasonable number of
`
`substitute claims (37 C.F.R. § 42.121(a)(3)); and (4) respond to a ground of
`
`unpatentability in the trial (37 C.F.R. § 42.121(a)(2)(i)). The Board may then
`
`consider whether the Petitioner has shown that the substitute claims at issue are
`
`unpatentable by a preponderance of the evidence. L&P Property Mgt. Co. v.
`
`Remacro Machinery & Tech. Co., Ltd., Case IPR2019-00255, p. 6 (PTAB Jun. 18,
`
`2019) (Paper No. 15).
`
`Patent Owner’s Motion to Amend satisfied these requirements for the
`
`following reasons:
`
`a. Substitute Claims Do Not Add New Matter.
`
`The ’706 Patent (U.S. Pat. Appl. No. 12/304,653) is a National Stage Entry of
`
`PCT/EP2007/005185 filed on June 12, 2007, which claims foreign priority to
`
`German Appl. No. DE 102006027200 filed on June 12, 2006. (Ex. 1002 at 368).
`
`Patent Owner has proposed one substitute claim for each of original claims
`
`11, 12, 18, and 20. Tables A – D below indicate the proposed amendments to claims
`
`11, 12, 18, and 20, vis-à-vis substitute claims 23 – 26 respectively, and where there
`
`is support for the substitute claims in the original disclosures of the ’706 Patent (U.S.
`
`Pat. Appl. No. 12/304,653) (Ex. 1002, p.285 – 311) and, pursuant to 37 CFR §
`
`42.121(b). Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper
`
`2
`
`
`
`

`

`15., p.7 (Feb. 25, 2019) (“New matter is any addition to the claims without support
`
`in the original disclosure.”) (citation omitted).
`
`
`Proposed Claim 23
`(Replacing Claim 11)
`
`[11.0] 23. A contactlessly
`communicating portable
`data carrier, comprising
`
`[11.1] at least two
`applications stored thereon
`and a communication
`device configured to
`control communication
`between a reading device
`and the at least two
`applications,
`
`[11.2] wherein the
`communication device is
`set up to generate
`communication-readiness
`
`
`Table A
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`“The present inventive method is based on the idea
`that, for at least two applications located on a
`portable, contactlessly communicating data
`carrier that are ready to communicate with a
`reading device.” (Ex. 1002, p. 288, ¶[0012]).
`
`“The present invention relates to a method and an
`accordingly set up data carrier for contactless, in
`particular parallel, communication of a reading
`device (200) with at least two communication-
`ready applications…” (Ex. 1002, p. 311, Abstract)
`
`“The data carrier 100 has at least two
`applications 10, 20, 30 located thereon. The data
`carrier 100 comprises a communication device 70
`and a toggling device 50 that is set up to toggle
`between the different applications 10, 20, 30. (Ex.
`1002, p. 294, ¶[0034]).
`
`“All communication between the applications 10,
`20, 30 of the data carrier 100 with the reading
`device 200 takes place via the communication
`device 70, it being possible to toggle between the
`applications 10, 20, 30 by means of the toggling
`device 50.” (Ex. 1002, p. 294, ¶[0034]).
`
`“The communication device 70 of the data carrier
`100 generates for a first application 10 a
`communication-readiness signal which
`comprises the identification number UID1
`3
`
`
`
`

`

`
`Proposed Claim 23
`(Replacing Claim 11)
`
`signals to the reading
`device which in each case
`indicate to the reading
`device a communication
`readiness for one of the
`applications and comprise
`an identification number
`assigned to the
`corresponding
`communication-readiness
`application, and
`[11.2.1] wherein after
`selection of one of the
`plurality of applications,
`subsequent communication
`between the reading device
`and the selected application
`takes place without
`requiring any further steps,
`and
`[11.2] wherein the
`communication device is
`set up to store information
`in a nonvolatile memory of
`the data carrier about which
`of the at least two
`applications last
`communicated with a
`reading device.
`
`Table A
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`assigned to the application 10, 1010.” (Ex. 1002, p.
`295, ¶[0035]).
`
`“[T]he communication device 70 of the data
`carrier 100 generates for a second application 20 a
`communication-readiness signal comprising the
`identification number UID2, 1020…” (Ex. 1002,
`p. 295, ¶[0036]).
`
`“When an application has been selected for
`further communication by the reading device,
`said communication takes place subsequently
`without requiring any further steps. An
`application selected for further communication by
`the reading device is thus then engaged in
`communication with the reading device.” (Ex.
`1002, p.290, ¶[0021]).
`
`“The method preferably stores in a nonvolatile
`memory, by means of the communication device,
`information about which of the applications was
`last selected for further communication by the
`reading device.” (Ex. 1002, p. 292, ¶[0027]).
`“According to the invention, the communication
`device 70 of the data carrier 100 can be set up to
`store in a nonvolatile memory of the data carrier
`100 information about which of the applications
`10, 20, 30 last communicated with the reading
`device 200, which of the applications 10, 20, 30
`already completed active communication with the
`reading device 200, and the like.” (Ex. 1002, p.
`297, ¶[0043]).
`
`4
`
`
`
`

`

`
`
`
`
`Proposed Claim 24
`(Replacing Claim 12)
`
`[12.0] 24. The data carrier
`according to claim 11 23,
`[12.1] wherein the
`communication device is
`set up to emit, upon new
`contacting of a reading
`device with the data carrier,
`a communication-readiness
`signal first for one of the at
`least two applications that
`is different from the
`application designated by
`the stored information,
`
`[12.1.1] wherein the
`communication device is
`set up to uniquely address
`the one or more of the least
`two applications with a
`receiving device, and
`
`wherein communication
`between the reading device
`
`Table B
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`See substitute claim 23, supra (Table A – Element
`11.0).
`“The communication device 70 of the data carrier
`100 generates for a first application 10 a
`communication-readiness signal which
`comprises the identification number UID1
`assigned to the application 10, 1010.” (Ex. 1002, p.
`295, ¶[0035]).
`“The method preferably stores in a nonvolatile
`memory, by means of the communication device,
`information about which of the applications was
`last selected for further communication by the
`reading device. This makes it possible to ascertain
`upon reactivation of the data carrier, for example
`after an interruption of the energy supply, which
`application last communicated with the reading
`device, to then generate a communication-
`readiness signal first for an application
`different therefrom, in order egg to prevent the
`same application from always being served first
`and other applications from possibly having to put
`up with long waiting periods or not being executed
`at all.” (Ex. 1002, p. 292, ¶[0027]).
`“The signals from the data carrier generated for
`the applications can be ergo periodically
`emitted signals or specific response signals to
`search signals emitted by the reading device.
`The reading device can thus recognize which
`communication-ready applications are located in
`its response field even when they are stored on a
`common data carrier.” (Ex. 1002, p.289, ¶[0016]).
`
`
`5
`
`
`
`

`

`Table B
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`“An application selected for further
`communication is then assigned a session
`number dynamically by the reading device. Via
`said session number the application can be
`addressed uniquely during communication with
`the reading device. Upon addressing, the session
`number is so linked in the data carrier by the
`communication device with the identification
`number assigned to the application and optionally
`the additional selection information that the
`correct application is always addressed upon
`communication. When an application has been
`selected for further communication by the
`reading device, said communication takes place
`subsequently without requiring any further
`steps.” (Ex. 1002, p.290, ¶[0021]).
`
`
`
`
`Table C
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`See substitute claim 23, supra (Table A - Elements
`11.0, 11.1).
`
`
`
`Proposed Claim 24
`(Replacing Claim 12)
`
`and the uniquely addressed
`application takes place
`subsequently without
`requiring any further steps
`after the communication-
`readiness signals are
`generated.
`
`
`
`
`
`
`
`Proposed Claim 25
`(Replacing Claim 18)
`
`[18.0] 25. A contactlessly
`communicating portable
`data carrier, comprising at
`least two applications stored
`thereon and a
`communication device
`configured to control
`
`6
`
`
`
`

`

`
`Proposed Claim 25
`(Replacing Claim 18)
`
`communication between a
`reading device and the at
`least two applications,
`
`[18.1 ]wherein the
`communication device is set
`up to generate
`communication-readiness
`signals to the reading device
`which in each case indicate
`to the reading device a
`communication readiness
`for one of the applications
`and comprise an
`identification number
`assigned to the
`corresponding
`communication-readiness
`application,
`[18.1.1] wherein after
`selection of one of the
`plurality of applications,
`subsequent communication
`between the reading device
`and the selected application
`takes place without
`requiring any further steps,
`and
`[18.2] wherein the data
`carrier is configured as a
`security module in a device
`comprising a
`communication device
`configured for contactless
`communication, the security
`
`Table C
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`See substitute claim 23, supra (Table A - Element
`11.2).
`
`See substitute claim 23, supra (Table A - Element
`[11.2.1]).
`
`“The inventive data carrier can be configured in
`general as a contactlessly communicating chip
`card, contactlessly communicating label or
`contactlessly communicating identification
`document, Further, it is possible that the data
`carrier is configured as a security module SAM
`(secure application module) in a device set up for
`
`7
`
`
`
`

`

`Table C
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`contactless data transmission, the security module
`having software means for communicating
`contactlessly by means of a suitable interface with
`the help of the device. A SAM is a component
`secured both mechanically and by software
`means which serves to store secret data and to
`execute cryptoalgorithms.” (Ex. 1002, p. 293,
`¶[0031]).
`
`Table D
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`See substitute claim 23, supra (Table A - Element
`11.0).
`
`“The communication device controls the total
`communication between the applications and
`the reading device and always knows the
`communication status of each application:
`communication-ready or selected by the reading
`device for further communication and thus
`communicating with the reading device or
`suspended by the reading device after completion
`of communication.” (Ex. 1002, p. 291, ¶[0024]).
`
`See substitute claim 23, supra (Table A - Elements
`11.1, 11.2).
`
`
`Proposed Claim 25
`(Replacing Claim 18)
`
`module having software
`configured to communicate
`contactlessly via the
`communication device of
`the device.
`
`
`
`Proposed Claim 26
`(Replacing Claim 20)
`
`
`[20.0] 26. A contactlessly
`communicating portable
`data carrier, comprising at
`least two applications stored
`thereon and a
`communication device
`configured to control
`communication between a
`reading device and the at
`least two applications,
`
`
`
`[20.1] wherein the
`communication device is set
`up to generate
`communication-readiness
`signals to the reading device
`which in each case indicate
`to the reading device a
`communication readiness
`for one of the applications
`
`8
`
`
`
`

`

`Proposed Claim 26
`(Replacing Claim 20)
`
`
`and comprise an
`identification number
`assigned to the
`corresponding
`communication-readiness
`application,
`[20.1.1] wherein after
`selection of one of the
`plurality of applications,
`subsequent communication
`between the reading device
`and the selected application
`takes place without
`requiring any further steps,
`and
`[20.2] wherein the data
`carrier is configured as an
`electronic device with a
`contactless interface for
`communication with a
`reading device and with a
`plurality of memories, each
`of the memories having no
`more than one of the at least
`two applications stored
`therein in each case.
`
`Table D
`Exemplary Support in Original Disclosure of the
`(1) ’706 Patent (12/304,653) (Ex. 1002)
`
`See substitute claim 23, supra (Table A - Element
`[11.2.1]).
`
`“Further, an electronic device, in particular a
`mobile terminal, with a contactless interface for
`communication with a reading device and with a
`plurality of access-protected memory areas on
`different storage media of the device can also be
`designed as an inventive data carrier.” (Ex. 1002,
`p. 293, ¶[0032])
`
`
`“[A]n inventive data carrier 100 that can emulate
`one or more MIFARE memory cards MA, MB,
`MC, MD. MIFARE memory cards MA-MD
`possess a memory divided into the sectors FS1,
`FS2, FS3, FS4, each sector FS1-FS4 having no
`more than one application stored therein.” (Ex.
`1002, p. 298, ¶[0044]).
`
`
`
`
`9
`
`
`
`

`

`The proposed substitute claims are supported by the original disclosure and
`
`therefore do not add new matter. 37 C.F.R. § 42.121(a)(2)(ii).
`
`b. Substitute Claims Do Not Expand the Scope of the Claims of the ’706
`Patent.
`
`As shown in Tables A – D and Appendix A, substitute claims 23 – 26 further
`
`limit original claims 11, 12, 18 and 20, respectively, by adding thereto the
`
`requirement that “wherein after selection of one of the plurality of applications,
`
`subsequent communication between the reading device and the selected application
`
`takes place without requiring any further steps.” Claim 24 further adds the
`
`requirement that “wherein the communication device is set up to uniquely address
`
`the one or more of the least two applications with a receiving device, and wherein
`
`communication between the reading device and the uniquely addressed application
`
`takes place subsequently without requiring any
`
`further steps after
`
`the
`
`communication-readiness signals are generated.”
`
`The proposed substitute claims 23 – 26 retain essentially all limitations of
`
`their corresponding original claims and therefore do not expand the scope of original
`
`claims 11, 12, 18 and 20, respectively. 37 C.F.R. § 42.121(a)(2)(ii).
`
`c. Patent Owner Proposes a Reasonable Number of Substitute Claims
`
` “The presumption is that only one substitute claim would be needed to
`
`replace each challenged claim.” 37 C.F.R. § 42.121(a)(3); Corning Optical Comm'n
`
`RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 at 3 (PTAB Oct. 30,
`
`2014). As shown in Tables A – D above and Appendix A hereto, Patent Owner
`
`10
`
`
`
`

`

`proposes only one substitute claim for each of original claims 11, 12, 18 and 20.
`
`Accordingly, Patent Owner “propose[s] a reasonable number of substitute claims.”
`
`37 C.F.R. § 42.121(a)(3).
`
`d. The Proposed Substitute Claims Respond to the Instituted Grounds,
`Petitioner’s Opposition, and Preliminary Guidance.
`
`Petitioner asserted four grounds of invalidity. Ground 1 alleges Claims 1-3
`
`and 11-12 of the ‘706 patent are obvious under 35 U.S.C. § 103(a) over Pat. No.
`
`6,824,064 to Guthery et al. (“Guthery,” Ex.1005) in view of Japanese Patent
`
`Application No. 2000-163539 to Nozawa et al. (“Nozawa”) (Ex. 1006) (Pet. At 24).
`
`Ground 2 alleges claim 16 is obvious under 35 U.S.C. § 103(a) over Guthery in view
`
`Nozawa in view of RFID Handbook. (Ex. 1007) (Pet. At 64). Ground 3 alleges
`
`claim 18 is obvious under 35 U.S.C. § 103(a) over Guthery in view Nozawa in view
`
`of Smart Card Handbook. (Ex. 1008) (Pet. At 73). Ground 4 alleges claim 20 is
`
`obvious under 35 U.S.C. § 103(a) over Guthery in view in view of RFID Handbook.
`
`(Ex. 1007). (Ex. 1008) (Pet. At 84). Claims 1, 10, 11, 18 and 20 are independent.
`
`Claim 16 is dependent on claim 11. (Ex. 1001, 11:34-11:57; 12:38-13:27; 13:48-
`
`14:9; 14:37-14:51).
`
`Grounds 1 and 2
`
`Petitioner argued claims 1-3 and 11-12 are obvious over Guthrey in view of
`
`Nozawa. (Pet. At 24).
`
`Claim 11, as amended (Proposed Claim 23), recites “wherein after selection
`
`of one of the plurality of applications, subsequent communication between the
`
`11
`
`
`
`

`

`reading device and the selected application takes place without requiring any
`
`further steps.” Patent Owner submits that the combination of Guthrey, Nozawa, and
`
`the RFID handbook do not teach or suggest this element of Proposed Claim 23.
`
`Accordingly, Proposed Claim 23 is patentable over the Ground 1 combination
`
`of references and therefore responds to instituted Ground 1 with respect to Claim 11
`
`and Ground 2 with respect to claim 16 based on its dependency on claim 11.
`
`Proposed Claim 24 further distinguishes the claimed invention over the Ground 1
`
`references and therefore similarly responds to instituted Ground 1.
`
`Ground 3
`
`Ground 3 alleges claim 18 is obvious under 35 U.S.C. § 103(a) over Guthery
`
`in view Nozawa in view of Smart Card Handbook. (Ex. 1008) (Pet. At 73).
`
`Claim 18, as amended (Proposed Claim 25) recites “wherein after selection of
`
`one of the plurality of applications, subsequent communication between the reading
`
`device and the selected application takes place without requiring any further steps.”
`
`Patent Owner submits that the combination of Guthrey, Nozawa, and the SmartCard
`
`handbook do not teach or suggest this element of Proposed Claim 25. Accordingly,
`
`Proposed Claim 25 is patentable over the Ground 3 references and therefore
`
`responds to instituted Ground 3.
`
`Ground 4
`
`Ground 4 alleges claim 20 is obvious under 35 U.S.C. § 103(a) over Guthery
`
`in view in view of RFID Handbook. (Ex. 1007). (Ex. 1008) (Pet. At 84).
`
`12
`
`
`
`

`

`Claim 20 as amended, recites “wherein after selection of one of the plurality
`
`of applications, subsequent communication between the reading device and the
`
`selected application takes place without requiring any further steps.” Patent Owner
`
`submits that the combination of Guthrey and the RFID handbook do not teach or
`
`suggest this element of Proposed Claim 26. Accordingly, Proposed Claim 26
`
`responds to instituted Ground 4.
`
`The proposed substitute claims 23-26 therefore respond to each of the
`
`instituted grounds.
`
`e. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`grant this contingent Motion to Amend should claims 11, 12, 18, and 20 of the ’706
`
`Patent be found unpatentable.
`
`
`
`
`
`Dated: March 29, 2023
`
`Respectfully submitted,
`
`/Antonio Papageorgiou/
`Antonio Papageorgiou
` Reg. No. 53,431
`
`LOMBARD & GELIEBTER LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`(212) 520-1172 (telephone)
`(646) 349-5567 (facsimile)
`ap@lombardip.com
`
`Attorney for AIRE TECHNOLOGY
`LTD.
`
`13
`
`
`
`

`

`APPENDIX A
`
`CLAIM LISTING
`
`23.
`
`(Proposed substitute for claim 11) A contactlessly communicating
`
`portable data carrier, comprising at least two applications stored thereon and a
`
`communication device configured to control communication between a reading
`
`device and the at least two applications,
`
`wherein the communication device is set up to generate communication-
`
`readiness signals to the reading device which in each case indicate to the reading
`
`device a communication readiness for one of the applications and comprise an
`
`identification number assigned to the corresponding communication-readiness
`
`application, and
`
`wherein after selection of one of the plurality of applications, subsequent
`
`communication between the reading device and the selected application takes place
`
`without requiring any further steps, and
`
`wherein the communication device is set up to store information in a
`
`nonvolatile memory of the data carrier about which of the at least two applications
`
`last communicated with a reading device.
`
`
`
`24.
`
`(Proposed substitute for claim 12) The data carrier according to claim
`
`11 23, wherein the communication device is set up to emit, upon new contacting of
`
`a reading device with the data carrier, a communication-readiness signal first for
`
`
`
`1
`
`

`

`one of the at least two applications that is different from the application designated
`
`by the stored information,
`
`wherein the communication device is set up to uniquely address the one or
`
`more of the least two applications with a receiving device, and
`
`wherein communication between the reading device and the uniquely
`
`addressed application takes place subsequently without requiring any further steps
`
`after the communication-readiness signals are generated.
`
`
`
`25.
`
`(Proposed substitute for claim 18) A contactlessly communicating
`
`portable data carrier, comprising at least two applications stored thereon and a
`
`communication device configured to control communication between a reading
`
`device and the at least two applications,
`
`wherein the communication device is set up to generate communication-
`
`readiness signals to the reading device which in each case indicate to the reading
`
`device a communication readiness for one of the applications and comprise an
`
`identification number assigned to the corresponding communication-readiness
`
`application,
`
`wherein after selection of one of the plurality of applications, subsequent
`
`communication between the reading device and the selected application takes place
`
`without requiring any further steps, and
`
`wherein the data carrier is configured as a security module in a device
`
`comprising a communication device configured for contactless communication, the
`
`2
`
`
`
`

`

`security module having software configured to communicate contactlessly via the
`
`communication device of the device.
`
`
`
`26. (Proposed substitute for Claim 20) A contactlessly communicating
`
`portable data carrier, comprising at least two applications stored thereon and a
`
`communication device configured to control communication between a reading
`
`device and the at least two applications,
`
`wherein the communication device is set up to generate communication-
`
`readiness signals to the reading device which in each case indicate to the reading
`
`device a communication readiness for one of the applications and comprise an
`
`identification number assigned to the corresponding communication-readiness
`
`application,
`
`wherein after selection of one of the plurality of applications, subsequent
`
`communication between the reading device and the selected application takes place
`
`without requiring any further steps, and
`
`wherein the data carrier is configured as an electronic device with a
`
`contactless interface for communication with a reading device and with a plurality
`
`of memories, each of the memories having no more than one of the at least two
`
`applications stored therein in each case.
`
`3
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`
`that on August 4, 2022, a copy of this CONTINGENT MOTION TO AMEND
`
`UNDER 37 C.F.R. § 42.121 was served by filing this document through the Patent
`
`Trial and Appeal Board End to End system, as well as delivering a copy via
`
`electronic mail upon the following attorneys of record for the Petitioner:
`
`
`
`Scott T. Jarratt (Reg No. 70,297)
`scott.jarratt.ipr@haynesboone.com
`Andrew S. Ehmke (Reg No. 50,271)
`andy.ehmke.ipr@haynesboone.com
`Calmann J. Clements (Reg No. 66,910)
`calmann.clements.ipr@haynesboone.com
`
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Dated: March 29, 2023
`
`Respectfully submitted,
`
`
`
`
`
`/Antonio Papageorgiou/
`Antonio Papageorgiou
` Reg. No. 53,431
`
`LOMBARD & GELIEBTER LLP
`230 Park Avenue, 4th Floor West
`New York, NY 10169
`(212) 520-1172 (telephone)
`(646) 349-5567 (facsimile)
`ap@lombardip.com
`
`Attorney for AIRE TECHNOLOGY
`LTD.
`
`4
`
`
`
`