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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner
`______________
`
`IPR2022-01137
`Patent No. 8,581,706
`____________
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`PATENT OWNER’S RESPONSE
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
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`Table of Contents
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`Introduction ........................................................................................................ 1
`I.
`II. Burden of Proof .................................................................................................. 3
`III. The Teaching of Guthery ................................................................................... 4
`IV. The Teaching of Nozawa .................................................................................... 7
`V. Grounds 1 and 2 Fail Because the Petition Fails to Motivate its
`Combination of Guthery and Nozawa ................................................................ 9
`VI. Grounds 2 and 4 Fail Because the Petition Fails to Motivate its
`Combination of Guthery and RFID Handbook ................................................ 16
`VII. Conclusion ....................................................................................................... 20
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
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`Table of Authorities
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`Cases
` Apple, Inc. v. Realtime Data LLC,
`2018 WL 1326656 (PTAB Mar. 13, 2018) ................................................... 16, 18
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ........................................................................... 16
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................. 4
`Google LLC f/k/a Google Inc. v. Singular Computing LLC,
`IPR2021-00155, Paper 62 (PTAB May 23, 2022) .............................................. 15
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 3-4
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................. 4
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................. 15
`Johns-Manville Corp. v. Knauf Insulation, Inc.,
`2018 WL 5098902 (PTAB Oct. 16, 2018) ..................................................... 10-11
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ....................................................................... 16, 18
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`701 F. App’x 971, 977 (Fed. Cir. 2017) .............................................................. 11
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056, 1068 (Fed. Cir. 2016) ................................................................. 15
`
`
`Statutes
`35 U.S.C. § 312(a)(3) ............................................................................................... 4
`35 U.S.C. § 316(e) .................................................................................................... 4
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`ii
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
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`Exhibits
`
`Description
`
`Exhib
`it No.
`2001 Notice of IPR Petitions, Aire Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-01101-ADA, Dkt. No. 37 (W.D. Tex. Jun. 24, 2022)
`2002 Amended Scheduling Order, Aire Technology Ltd. v. Apple Inc., Case No.
`6:21-cv-01101-ADA, Dkt. No. 61 (W.D. Tex. Sep. 21, 2022)
`2003 Law360 Article: West Texas Judge Says He Can Move Faster Than PTAB
`2004 Text Order Denying Motion to Stay Pending IPR, Solas OLED Ltd. v.
`Google, Inc., Case No. 6:19-cv-00515-ADA (W.D. Tex. June 23, 2020)
`2005 Order Denying Motion to Stay Pending IPR, Multimedia Content
`Management LLC v. DISH Network L.L.C., Case No. 6:18-cv-00207-
`ADA, Dkt. No. 73 (W.D. Tex. May 30, 2019)
`2006 Standing Order Governing Proceedings in Patent Cases, Judge Alan D.
`Albright
`2007 Claim Construction Order, Solas OLED Ltd. v. Apple Inc., Case No. 6:19-
`cv-00537-ADA, Dkt. No. 61 (W.D. Tex. Aug. 30, 2020)
`2008 Plaintiff Aire Technology Ltd.’s Preliminary Disclosure of Asserted
`Claims and Infringement Contentions to Apple Inc. in Aire Technology
`Ltd. v. Apple Inc., Case No. 6:21-cv-01101-ADA (W.D. Tex.)
`2009 Defendant Apple Inc.’s Preliminary Invalidity Contentions in Aire
`Technology Ltd. v. Apple Inc., Case No. 6:21-cv-01101-ADA (W.D. Tex.)
`2010 September 30, 2021 Federal District Court Trial Statistics
`2011 December 31, 2021 Federal District Court Trial Statistics
`2012 March 31, 2022 Federal District Court Trial Statistics
`
`iii
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
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`I.
`
`Introduction
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`The Petition challenges the claims of U.S. Patent No. 8,581,706 (“the ’706
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`Patent”) under four grounds of unpatentability: 1
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`• Ground 1. Claims 1–3, and 11–12 are obvious over U.S. Patent No.
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`6,824,064 (“Guthery,” Ex. 1005) in view of Japanese Patent
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`Application No. 2000-163539 (“Nozawa,” Ex. 1006).
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`• Ground 2. Claim 16 is obvious over Guthery in view of Nozawa and
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`the textbook by Klaus Finkenzeller, the first named inventor of the ’706
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`Patent, entitled RFID Handbook: Radio-Frequency Identification
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`Fundamentals and Applications (“RFID Handbook,” Ex. 1007).
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`• Ground 3. Claim 18 obvious over Guthery in view of the textbook
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`entitled Smart Card Handbook: Third Edition (“Smart Card
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`Handbook,” Ex. 1008)
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`• Ground 4. Claim 20 is obvious over Guthery in view of the RFID
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`Handbook.
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`
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` 1
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` Although this Response does not address claim 18 as addressed by the Petition with
`respect to Ground 3, Petitioner nevertheless bears the burden of proof in this
`proceeding, and Patent Owner does not concede that Ground 3 renders challenged
`claim 18 invalid.
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`
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`1
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`Petitioner’s Grounds 1 and 2 challenges to independent claims 1 and 11, as
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`well as the claims depending therefrom, fail because a POSITA would not have been
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`motivated to modify Guthery’s smart card system in view of Nozawa. The Petition
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`generically asserts that Guthery’s smart card would benefit from improved
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`efficiency “by reducing the number of initialization steps required before application
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`execution.” In doing so, the Petition ignores the details of the communication
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`mechanism between Guthery’s smart card and host, and that modification of that
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`communication mechanism to include Nozawa’s automatic application selection
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`process would contradict Guthery’s design goals and objectives. Accordingly, a
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`POSITA would not have recognized any benefit from making the modification. In
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`fact, a POSITA would understand that the proposed combination would be
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`detrimental to Guthery, because, for example, it contradicts Guthery’s stated goal
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`of tightly coupling the execution of applications and thereby communication with
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`them with efficient management of the smart card’s limited RAM memory. A
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`POSITA would thus not have been motivated to make the proposed combination.
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`At most, the Petition establishes that a POSITA could have made its proposed
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`modification to Guthery, not that a POSITA would have been motivated to do so as
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`required. For these reasons, the Petition cannot show any challenged claim in
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`Ground 1 or Ground 2 to be unpatentable.
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`2
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`Petitioner’s Ground 2 challenge to dependent claim 16 and the Ground 4
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`challenge to independent claim 20 also fail because a POSITA would not have been
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`motivated to modify Guthery’s smart card system in view of RFID Handbook. The
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`Petition generically asserts that Guthery’s smart card would benefit from improved
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`security by dividing Guthery’s EEPROM memory into segments such that each
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`application corresponds to its own segment. But the Petition ignores that all data
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`communicated between the smart card and the host passes through Guthery’s RAM
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`memory and that the memory is not large enough to buffer all of the data going to
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`and coming from all of the applications on the smart card. As such, Guthery’s RAM
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`memory could not be segmented and the smart card would still be subject to security
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`issues with respect to the data communicated between the smart card and the host.
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`Accordingly, a POSITA would not have recognized any benefit from modifying only
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`Guthery’s EEPROM memory. A POSITA would thus not have been motivated to
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`make the proposed combination. At most, the Petition establishes that a POSITA
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`could have made its proposed modification to Guthery, not that a POSITA would
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`have been motivated to do so as required. For these reasons, the Petition cannot
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`show any challenged claim in Ground 2 or Ground 4 to be unpatentable.
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`II. Burden of Proof
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`“In an [inter partes review], the petitioner has the burden from the onset to
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`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
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`3
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. §
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`312(a)(3) (requiring inter partes review petitions to identify “with particularity . . .
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`the evidence that supports the grounds for the challenge to each claim”)). This
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`burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC
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`v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`
`of proof in inter partes review). Furthermore, the petitioner cannot satisfy its burden
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`of proving obviousness by employing “mere conclusory statements.” In re Magnum
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`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). “The petitioner must
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`instead articulate specific reasoning, based on evidence of record, to support the
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`legal conclusion of obviousness.” Id. To prevail in an inter partes review, Petitioner
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`must show by a preponderance of the evidence that a patent is invalid. 35 U.S.C. §
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`316(e).
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`III. The Teaching of Guthery
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`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery,” Ex. 1005) describes
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`a smart card that “contains a plurality of application programs.” Ex. 1005, 2:42-43.
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`Guthey further describes that “[i]t is desirable for the entities communicating with
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`the smart card to be able to conduct simultaneous independent communications with
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`more than one of these programs.” Id., 2:43-46. Because of “the fact that only one
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`of the data messages of today’s art can fit in the smart card's random access memory
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`(RAM) at a time,” id. 2:49-51, the current art at the time “holds that only one
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`application can be communicating with entities outside the smart card at any one
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`time,” id., 2:46-48. Guthery therefore proposes a system and method “for
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`simultaneously communicating with multiple individual applications on a smart
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`card.” Id., 2:52-54. While the memory in a smart card typically includes RAM,
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`ROM and EEPROM, id., 6:62-66, Guthery focuses on management of the limited
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`RAM available for use. See id., 2:54-58 (“The system and method employs fixed-
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`size data packets and tightly couples the execution of applications and thereby
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`communication with them with efficient management of the smart card's limited
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`RAM memory.”) (emphasis added).
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`“A system program called a card manager 34 coordinates the activation and
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`scheduling of applications and communication with them.” Ex. 1005, 7:7-9. At
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`activation, the card manager communicates with the host to identify each application
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`on the smart card. Id., 8:32-37, 8:60-64. To communicate with an application on
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`the smart card, the host transmits a Request-to-Send packet. “Upon receipt of a
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`Request-to-Send packet 70, the card manager 34 notifies each of the listed
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`applications in turn that incoming data is available.” Id., 9:7-9. “The host then
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`expects to receive a permission-to-send packet, described next, from each of these
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`applications, when the application is ready to receive this data.” Id., 9:9-12.
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`“Because the RAM memory on a smart card is limited, there is not room to buffer
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`on the card itself at one time all of the data going to and coming from all of the
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`applications on the smart card.” Id., 9:18-21. As a result, Guthery describes that “a
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`method is needed to manage the RAM memory on the smart card.” Id., 9:23-24.
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`Guthery’s proposed solution is for the application to issue Permission-to-Send
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`packets, where the host “must be in possession of such a packet in order to send data
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`to the application.” Ex. 1005, 9:37-38. “[O]ne permission is required for each
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`packet.” Id., 9:39. “[T]he card manager 34 may keep a list of outstanding
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`Permission-to-Send packets 80 and reject any incoming packets that cannot be
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`paired with a Permission-to-Send packet.” Id., 9:41-44. Indeed, “[t]he primary
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`purpose of the card manager 34 is to make the most efficient use of the limited RAM
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`14 in a smart card,” id., 10:42-43, because “[a]mong the scarce resources on the
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`smart card, the resource for which there is the most contention … is RAM memory,”
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`id., 10:62-64. “The primary use of RAM memory in a smart card is to hold incoming
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`data, as it is being processed and outgoing data as it is being constructed.” Id., 10:64-
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`67. “[A]ll communication with the card manager 34 and hence with applications 32
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`on the smart card is formatted as packets of fixed number of bytes, e.g., sixteen
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`bytes.” Id., 7:43-46. For communication of data larger than the packet size, a series
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`of packets, called a “packet chain,” is required. Id., 7:58-65. A Permission-to-Send
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`is “needed from the application for each and every packet of a multi-packet request.”
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`Id., 13:5-6.
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`A Request-to-Send “contains an indication of the size of the message, e.g., the
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`total number of bytes that the host seeks to send to an application.” Ex. 1005, 12:65-
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`13:1. “Because packets are a fixed size, the application can determine how many
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`packets to expect and therefore how many permissions to send it must grant to the
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`host to receive the entire message.” Id., 13:1-4. “[I]t is up to the smart-card
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`application to strobe the packets onto the card one at a time.” Id., 13:13-14; see also
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`13:15-19 (A Permission-to-Send “can grant permission to the host to send part x of
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`message y to [the] application, or alternatively grant permission to the host to send
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`the next part of message y to [the] application.”). The application may process
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`packets after a collection of packets has arrived, for example when the message is
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`encrypted and the encryption depends on the whole message, id., 13:21-31, Fig. 17;
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`or it may be able to process packets as they are received, id., 13:43-52, Fig. 18.
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`IV. The Teaching of Nozawa
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`Japanese Patent Application No. 2000-163539 to Nozawa (“Nozawa,” Ex.
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`1006) generally describes an “IC card … [that] has a function for automatically
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`selecting an application having a high probability of being selected at a stage prior
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`to an application-selection command being given from the external apparatus 20.”
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`Ex. 1006, [0019]. More specifically, at the point in which accessing of the IC card
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`… is started,” the application that is “automatically selected is communicated to the
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`external apparatus 20.” Id. If the application “is the correct application to be
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`executed, the external apparatus 20 can immediately send a command for that
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`application.” Accordingly, “it is no longer necessary [for the external apparatus] to
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`give an application-selection command, as is conventionally the case.” Id. If the
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`application is not the correct application, the external apparatus issues a conventional
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`application selection command to the IC card. Id.
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`As to the automatic selection process, “a past selection history is used as
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`judgment material for determining an application with a high probability of being
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`selected…” Ex. 1006, [0020]. The IC card stores, as storage space allows, dates
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`and times of specific applications being selected. Id. “When the external apparatus
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`20 starts accessing the IC card 10 … a process for automatically selecting a specific
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`application program (an application with a high probability of being selected) based
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`on the selection history” is implemented. Ex. 1006, [0021]. “[A]n approach of
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`always automatically selecting the most recently-selected application is an
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`adequately meaningful approach.” Ex. 1006, [0022].
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`After the automatic selection process is complete on the IC card, “an ATR
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`signal is sent. This ATR (Answer To Reset) signal is a response to a reset signal
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`given from the external apparatus 20. It is a signal for notifying the external
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`apparatus 20 that the reset-signal reception process is complete and that preparation
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`has been made to receive the command. In the present embodiment, information
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`specifying which application is automatically selected is sent to the external
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`8
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`apparatus 20 along with this ATR signal.” Ex. 1006, [0024] (emphasis added).
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`“After this ATR signal is sent, a normal command … and execution process are
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`implemented.” Id. “[T]he IC card … is in a standby state for receiving a command.
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`When a command from the external apparatus 20 is received, it is determined …
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`whether the command is an application-selection command.” Ex. 1006, [0028].
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`“[I]n a case in which the automatically-selected application is an application that
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`should have been executed, the external apparatus 20 sends a command for that
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`application, and … the given command is executed.” Id. “Conversely, in a case in
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`which the automatically-selected application is not an application that should be
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`executed, the external apparatus 20 sends an application-selection command for
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`selecting the application that should be executed.” Id.
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`V. Grounds 1 and 2 Fail Because the Petition Fails to Motivate its
`Combination of Guthery and Nozawa
`Grounds 1 and 2 of the Petition propose a combination of Guthery with
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`Nozawa, inter alia, to allege invalidity of challenged claims 1-3, 11-12, and 16 of
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`the ’706 Patent. More specifically, Petitioner proposes to take Guthery’s smart card
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`and its concurrent operation of applications and add Nozawa’s automatic application
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`selection process to satisfy claims 1 and 11. For example, claim 1 of the ’706 Patent
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`requires a “data carrier” to “generate communication readiness signals” for two or
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`more applications of the “data carrier” to a “reading device,” and for the “data
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`carrier” to store “information … about which of the … applications was last selected
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`9
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`for further communication by the reading device.” Ex. 1001, 11:34-58. Claims 2
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`and 3 require the first “communication readiness signal” of a particular application
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`to be emitted based on the stored information. See id., 11:59-63, 11:64-67.
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`Guthery’s smart card does not track application selection history; Petitioner
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`therefore proposes to use the application tracking history taught by Nozawa and,
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`based on that history, modify Guthery to automatically select a particular application
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`upon establishing a new connection with a host. See Petition at 30-35 (relying solely
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`on Nozawa for the use of an automatic application selection process upon first
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`communication between the host and the smart card). As discussed below, the
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`Petition fails to show that a POSITA would have found it obvious to use Nozawa’s
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`automatic application selection process with Guthery’s smart card system.
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`Moreover, a POSITA would have found the combination detrimental to the goals
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`and objectives of Guthery.
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`None of the Petitioner’s cited reasons factually or legally support the
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`obviousness contention with respect to the combination of Guthery and Nozawa.
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`First, Petitioner’s identification of Guthery and Nozawa as analogous art to the ’706
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`Patent does not factor into determining whether a POSITA would have a motivation
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`to combine the references. “Analogous art is merely a threshold inquiry as to
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`whether a reference can be considered in an obviousness analysis. Demonstrating
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`that a reference is analogous art or relevant to the field of endeavor of the challenged
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`10
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`patent is not sufficient to establish that one of ordinary skill would have had reason
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`to combine its teachings with other prior art in the manner set forth in the claim.”
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`Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, 2018 WL 5098902,
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`at *4 (PTAB Oct. 16, 2018) (citing Securus Techs., Inc. v. Global Tel*Link Corp.,
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`701 F. App’x 971, 977 (Fed. Cir. 2017)).
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`Next, Petitioner generically alleges that “Nozawa identifies and solves a
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`known inefficiency in the application selection process … which results in a ‘waiting
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`time’ until work can begin.” Petition at 31-32. Petitioner also claims that “Guthery
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`is an example of the typical multi-application smart card systems that Nozawa
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`identifies as inefficient,” id. at 32, to conclude that “Nozawa provides a well-known
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`and predictable solution to this identified inefficiency in Guthery,” id. These
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`allegations are unfounded and simply inadequate to show that a POSITA would have
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`a motivation to combine Guthery with Nozawa.
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`Petitioner then presents specific details with respect to how Guthery’s smart
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`card processes can be modified with Nozawa’s automatic application selection
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`mechanism. However, a POSITA, reading the descriptions of the system and goals
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`of Guthery would recognize that Guthery has already implemented specific
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`mechanisms to efficiently utilize the limited resources on the smart card, especially
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`RAM, and that modifying Guthery to implement Nozawa’s automatic application
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`selection process, as shown below, would have a detrimental effect on the
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`11
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`mechanisms Guthery employs to efficiently utilize those limited resources. As such,
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`a POSITA would not be motivated to look to Nozawa to improve the efficiency of
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`Guthery’s smart card system.
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`Claiming that modifying Guthery to include Nozawa’s automatic application
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`selection process will lead to “efficiency improvements,” Petitioner specifically
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`asserts that “Guthery’s smart card would not wait to receive a Request-to-Send
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`packet from the reader prior to selecting an application for communication and
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`initializing.” Id. According to Petitioner, Guthery would simply identify the
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`application most likely to be selected and begin the process for generating a
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`Permission-to-Send without waiting for a Request-to-Send. Id. Petitioner concludes
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`that “[t]his approach would have improved efficiency because Guthery’s system
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`would preemptively prepare the buffers and transmit the Permission-to-Send packet
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`without waiting to receive the Request-to-Send packet.” Id. However, in making
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`this assertion, Petitioner ignores that Guthery “tightly couples the execution of
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`applications and thereby communication with them with efficient management of
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`the smart card's limited RAM memory.” Ex. 1005, 2:54-58 (emphasis added).
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`As part of that tight coupling of application execution and communication, an
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`application on Guthery’s smart card determines “how many packets to expect and
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`therefore how many permissions to send it must grant to the host to receive the entire
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`message.” Id., 13:1-4. In certain instances, an application may process packets after
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`12
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`a collection of packets has arrived, for example when the message is encrypted and
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`the encryption depends on the whole message, id., 13:21-31; or the application may
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`be able to process packets as they are received, id., 13:43-52. For this reason, the
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`application will ask for the number of buffers from the card manager after the
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`Request-to-Send has been received by the application. Compare Fig. 17A
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`(Application M asks for two (2) buffers as part of a multi-packet transmission from
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`the host to the application because the “application assembles the whole message
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`before performing any processing,” id., 13:29-30) with Fig. 18B (Application M asks
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`for one (1) buffer as part of a multi-packet transmission from the host to the
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`application because the “application needs only one buffer because the buffer can be
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`reused to hold each new packet,” id., 13:49-51).
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`As part of this buffer allocation and communication processes, Guthery’s
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`application and card manager make the most efficient use of the limited RAM on the
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`smart card. Id., 10:42-43, 10:62-64. More importantly, the allocation of buffers and
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`Permissions-to-Send does not occur until a Request-to-Send is first received by the
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`application. See id., Fig. 17A, 18A. In other words, Guthery’s efficiency in using
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`the limited RAM and processing capabilities is predicated upon a process that begins
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`with a Request-to-Send that allows the application to understand the processing and
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`data being sought by the host. Petitioner’s assertion that removing the Request-to-
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`13
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`Send would result in improved efficiency because Guthery’s system would
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`preemptively prepare the buffers is incorrect.
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`By modifying Guthery’s system to immediately receive packets without
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`having received a Request-to-Send as Petitioner suggests, the efficiencies described
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`by Guthery would be dismantled. For example, without the Request-to-Send, the
`
`application does not know (i) the size of the message to be received from the host
`
`(see, e.g., id., 12:65-13:4); (ii) the type of data to be received from the host (see, e.g.,
`
`id., 13:46-52); (iii) the number of buffers the application should request from the
`
`card manager (see, e.g., id., 13:5-12);or (iv) how the application will issue
`
`Permissions-to-Send, first to the card manager and then to the host (see, e.g., id.,
`
`Figs. 17B-17C (receiving multiple packets before running steps of application), Figs.
`
`18B-18C (running steps of application in between receiving packets)). Without this
`
`information, the application is unable to determine an efficient buffer request, or any
`
`buffer request for that matter, to make to the card manager, the number of
`
`Permissions-to-Send for the host, or the operational scheduling of the application.
`
`The proposed modification runs contrary to Guthery’s goal of efficiently
`
`using the limited RAM available on the smart card, as well as the modest
`
`computational capabilities or the relatively slow physical communication channel
`
`between the smart card and the host, all together the “scheduling regimen” of
`
`Guthery’s smart card. See id., 10:43-47. The “scheduling regimen” is dependent
`
`
`
`14
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`
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`upon the process beginning with the Request-to-Send from the host. See id., Fig.
`
`14, 12:23-24; Fig. 15A, Fig. 15B, Fig. 16A, Fig. 17A, 13:32-33, Fig. 18A, 13:53-54.
`
`Because the proposed combination removes the initial Request-to-Send, a POSITA
`
`would therefore not be motivated to modify Guthery’s system to implement
`
`Nozawa’s automatic application selection process. See Trivascular, Inc. v. Samuels,
`
`812 F.3d 1056, 1068 (Fed. Cir. 2016) (finding no motivation to modify the prior art
`
`where doing so “would destroy the basic objective” of the prior art); In re Gordon,
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`733 F.2d 900, 902 (Fed. Cir. 1984) (finding no reason to modify a prior art device
`
`where the modification would render the device “inoperable for its intended
`
`purpose”); Google LLC f/k/a Google Inc. v. Singular Computing LLC, IPR2021-
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`00155, Paper 62, at 74 (PTAB May 23, 2022) (“Petitioner’s asserted combination
`
`… would … defeat[] MacMillan’s stated objective of achieving a highly parallel
`
`SIMD computer architecture at lower system cost”) (internal quotations omitted).
`
`Petitioner additionally makes several generic allegations that the proposed
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`combination of Nozawa’s automatic application selection process in Guthery’s smart
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`card system would be “a well-known and predictable solution,” Petition at 32,
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`“advantageous,” id. at 34, and made with a “reasonable expectation of success,” id.
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`Petitioner’s allegations are inadequate to show that a POSITA would have a
`
`motivation to combine Guthery and Nozawa. Moreover, absent a motivation to
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`actually implement an automatic application selection process in Guthery, this is the
`
`
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`15
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`wrong inquiry; whether the combination would be “advantageous,” etc., goes, at
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`most, to the issue of whether a POSITA could have made the proposed combination,
`
`not to whether a POSITA would have been motivated to make that combination as
`
`required. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir.
`
`2017) (it is not enough to show that “a skilled artisan, once presented with the two
`
`references, would have understood that they could be combined”); Apple, Inc. v.
`
`Realtime Data LLC, IPR2016-01737, 2018 WL 1326656, at *25 (PTAB Mar. 13,
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`2018) (granting motion to amend because petitioner did not adequately “articulate a
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`reason why a person of ordinary skill in the art would combine the prior art
`
`references”) (citing and quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
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`(Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could
`
`have made but would have been motivated to make the combination or modifications
`
`of prior art to arrive at the claimed invention”)) (emphases in original).
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`VI. Grounds 2 and 4 Fail Because the Petition Fails to Motivate its
`Combination of Guthery and RFID Handbook
`Grounds 2 and 4 of the Petition propose a combination of Guthery with the
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`RFID Handbook, inter alia, to allege invalidity of challenged claims 16 and 20 of
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`the ’706 Patent. More specifically, Petitioner proposes to take Guthery’s smart card
`
`and its concurrent operation of applications, add Nozawa’s automatic application
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`selection process for claim 16, and add the segmented memory taught in the RFID
`
`Handbook to satisfy claims 16 and 20. For example, claim 16 of the ’706 Patent
`
`
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`16
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`
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`depends from claim 11, discussed supra in Section V and further requires “including
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`a memory which is divided into sectors, each of the sectors having no more than one
`
`of the at least two applications stored therein.” Ex. 1001, 13:48-51.
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`Guthery’s smart card does not utilize a memory divided into sectors;
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`Petitioner therefore proposes to use the segmented memory taught by the RFID
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`Handbook to separate the EEPROM on Guthery’s smart card into sectors. Petitioner
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`alleges that the proposed combination will enhance security in Guthery’s smart card
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`by “effectively isolating each application.” See Petition at 66-70 (relying solely on
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`RFID Handbook for the use of segmented EEPROM in Guthery’s smart card). As
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`discussed below, the Petition fails to show that a POSITA would have found it
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`obvious to use the RFID Handbook’s segmented EEPROM with Guthery’s smart
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`card system.
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`First, Petitioner makes several generic allegations regarding the proposed
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`combination of the RFID Handbook’s automatic application selection process in
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`Guthery’s smart card system, including:
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`- “A POSITA would have naturally evaluated Guthery’s disclosure of
`wireless smart cards together with the information presented in the RFID
`Handbook.” Petition at 67
`- “Such a well-known and often-reference textbook would have provided a
`POSITA with various implementation details not specifically discussed in
`Guthery.” Id.
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`
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`17
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`
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`IPR2022-01137 (’706 Patent)
`Patent Owner’s Response
`- “A POSITA implementing Guthery’s system would have found it obvious,
`and would have been motivated, to divide the EEPROM into segments
`such that each application corresponds to its own segment.” Id. at 68.
`- “A POSITA would have had a reasonable expectation of
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