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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`———————
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`APPLE INC.,
`Petitioner,
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`v.
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`AIRE TECHNOLOGY LIMITED,
`Patent Owner,
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`———————
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`IPR2022-01137
`U.S. Patent No. 8,581,706
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`________________
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`PETITIONER’S OPPOSITION TO MOTION TO AMEND
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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
`U.S. Patent No. 8,581,706
`
`________________
`
`
`
`
`PETITIONER’S OPPOSITION TO MOTION TO AMEND
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`TABLE OF CONTENTS
`Petitioner’s Exhibit List ........................................................................................... iii
`
`I.
`
`Introduction .......................................................................................................... 1
`
`II. The Proposed Amendments Add New Subject Matter by Claiming
`Functionality Different than the Functionality Described in the Specification. ........ 1
`
`A. Substitute claims 23 and 25-26 recite new matter by claiming concepts
`that differ from those described in the specification. ................................... 2
`
`B. Substitute claim 24 recites new matter by claiming concepts that differ
`from those described in the specification. .................................................... 6
`
`III. Substitute claims 23-26 fail to comply with (pre-AIA) 35 U.S.C. § 112............ 9
`
`A. The proposed amendments improperly add method limitations to
`apparatus claims. .......................................................................................... 9
`
`B. The claims recite the impossible and thus cannot be enabled. ................... 11
`
`IV. Substitute claims 23-26 are obvious under (pre-AIA) 35 U.S.C. § 103. ..........13
`
`A. Claim 23 ...................................................................................................... 14
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`B. Claim 24 ...................................................................................................... 16
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`C. Claim 25 ...................................................................................................... 20
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`D. Claim 26 ...................................................................................................... 20
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`V. Conclusion .........................................................................................................21
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`
`ii
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`PETITIONER’S EXHIBIT LIST
`
`U.S. Patent No. 8,581,706
`
`Prosecution History of U.S. Patent No. 8,581,706
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery”)
`JP2000163539 to Nozawa et al. (“Nozawa”) – Certified English
`Translation
`
`RFID Handbook: Radio-Frequency Identification Fundamentals
`and Applications, Klause Finkenzeller (1999)
`
`Smart Card Handbook: Third Edition, Wolfgang Rankl (3rd ed.
`2003)
`
`Reserved.
`Reserved.
`
`Complaint, Aire Technology Ltd. v. Apple Inc. 6-21-cv-01101
`(W.D. Tex. Oct. 22, 2021)
`
`Infringement Contentions, Aire Technology Ltd. v. Apple Inc. 6-21-
`cv-01101 (W.D. Tex. Oct. 22, 2021)
`
`Scheduling Order, Aire Technology Ltd. v. Apple Inc. 6-21-cv-
`01101 (W.D. Tex. Oct. 22, 2021)
`Standing Order Governing Proceedings (OGP) 4.1
`
`Complaint, Aire Technology Ltd v. Samsung Electronics Co., Ltd.,
`6:21-cv-00955 (W.D. Tex. Sep. 15, 2021)
`
`
`
`Ex.1001
`
`Ex.1002
`Ex.1003
`
`Ex.1004
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`Ex.1005
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`Ex.1006
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`Ex.1007
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`Ex.1008
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`Ex.1009
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`JP2000163539 to Nozawa et al. (original)
`
`iii
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`
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
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`Internet Archive capture of “Wiley:Smart Card Handbook, 3rd
`Edition,”
`https://web.archive.org/web/20041026102425/http://www.wiley.co
`m:80/WileyCDA/WileyTitle/productCd-0470856688.html
`(archived October 26, 2004)
`
`Declaration of Franchesca Ruiz
`Reserved.
`
`Reserved.
`
`Reserved.
`Reserved.
`
`Federal District Court Trial Statistics (June 2022)
`
`Email chain with Board granting Petitioner’s request to file
`preliminary reply briefs
`Plaintiff Aire Technology Ltd.’s Motion to Amend Preliminary
`Infringement Contentions, Aire Technology Ltd. v. Apple Inc. 6-21-
`cv-01101 (W.D. Tex. Sept. 30, 2022)
`Supplemental Declaration of Dr. Joshua Phinney under 37
`C.F.R. § 1.68
`
`Ex.1017
`
`Ex.1018
`Ex.1019
`
`Ex.1020
`
`Ex.1021
`Ex.1022
`
`Ex.1023
`
`Ex.1024
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`Ex.1025
`
`Ex.1026
`
`iv
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
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`I.
`
`Introduction
`Patent Owner filed a Motion to Amend (“Motion,” Paper 16) with substitute
`
`claims 23-26. The Motion should be denied for several reasons. First, the proposed
`
`substitute claims recite new matter in violation of 35 U.S.C. § 316(d)(3). Second,
`
`the proposed claims are unpatentable (i) under 35 U.S.C. § 112 because they are
`
`indefinite hybrid method-apparatus claims and are not enabled, and (ii) under 35
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`U.S.C. § 103 because they are obvious in view of the prior art combination
`
`presented in the petition.
`
`II. The Proposed Amendments Add New Subject Matter by Claiming
`Functionality Different than the Functionality Described in the
`Specification.
`Patent Owner’s motion to amend should be denied because the proposed
`
`substitute claims are directed to concepts not supported by the specification of the
`
`’706 patent. “Before considering the patentability of any substitute claims, … the
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`Board first must determine whether the motion to amend meets the statutory and
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`regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.”
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (Feb. 25, 2019)
`
`(precedential). One such requirement is that any amendment “may not ... introduce
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`new matter.” 35 U.S.C. 316(d)(3). New subject matter is any addition to the claims
`
`that lacks sufficient support in the subject patent’s original disclosure. See
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`TurboCare Div. of Demag Delaval Turbomach. v. Gen. Elec. Co., 264 F.3d 1111,
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`1
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`1118 (Fed. Cir. 2001) (“When [an] applicant adds a claim . . . , the new claim[]
`
`
`
`must find support in the original specification.”).
`
`The test for determining whether an amendment lacks written description
`
`support in the original disclosure is whether the disclosure as originally filed
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`reasonably conveys to a person of ordinary skill in the art that the inventor had
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`possession of the claimed subject matter at the time of filing. Ariad Pharms., Inc.
`
`v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Importantly,
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`generic claim language in the original disclosure does not satisfy the written
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`description requirement if it fails to support the scope of the genus claimed. Id at
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`1171 (“[A]n adequate written description of a claimed genus requires more than a
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`generic statement of an invention’s boundaries”).
`
`Here, each of the proposed substitute claims recite subject matter different
`
`than the subject matter possessed by the inventor at the time of filing.
`
`Substitute claims 23 and 25-26 recite new matter by claiming
`A.
`concepts that differ from those described in the specification.
`The proposed claim amendments add new matter because they claim a
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`device with different functionality than what is described in the specification.
`
`Substitute claim 23 (proposed substitute for claim 11) has been amended to recite:
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`“wherein after selection of one of the plurality of applications, subsequent
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`communication between the reading device and the selected application takes
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`place without requiring any further steps.” Motion, 4. Substitute claims 25-26
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`2
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`(proposed substitutes for claims 18 and 20) recite similar language. Motion, 7, 9.
`
`
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`The Motion cites to the following portion of the specification for § 112 support:
`
`Substitute claim 23
`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
`
`Cited support
`“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]).
`
`Motion, 4.
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`Although the new claim language and the cited support both describe (i) an
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`application “selection” and (ii) “communication” that takes place “without
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`requiring any further steps,” the relationship between these requirements is
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`fundamentally different in the claim. As an initial matter, there is no previous
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`recitation of a “selection” in claim 23 even though the claim is directed to
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`functionality that happens “after selection.” The claim doesn’t tell us when the
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`selection takes place or which element performs the selection or for what the
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`application is being selected. The claim thus offers no guidance as to when the
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`time period of “after selection” begins. In contrast, the cited portion of the
`
`specification describes a different time period related to the application selection
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`3
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`that begins “when an application has been selected for further communication by
`
`
`
`the reading device.” Ex.1002, 290. This difference alone divorces the claim from
`
`functionality described in the specification. There is no indication in the
`
`specification that the inventor possessed the idea that all subsequent
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`communication after any selection of an application would take place without
`
`requiring any further steps.
`
`
`
`More importantly, the new claim language untethers the “selection” of the
`
`application from the “subsequent communication”—whereas in the specification
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`they are inextricably linked. The specification explains that an application is
`
`selected specifically “for further communication,” and thereafter “said
`
`communication” takes place:
`
`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, 290. This description is clear that the subsequent “said communication”
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`is the same “communication” for which the application is selected. Id. The new
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`claim removes this relationship by failing to recite any purpose for the selection.
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`A consequence of this change is that the claim language prohibits
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`communication steps that the specification explicitly describes as required. In more
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`detail, the Motion points to ¶ [0021] on page 290 of Ex.1002 as support for the
`
`added language. Motion, 4. This paragraph explains that an application selected for
`
`4
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`further communication must first be assigned a session number by the reading
`
`
`
`device before it can communicate with the reading device:
`
`The reading device selects an application for further communication by
`means of the identification number assigned to the application. The
`additional selection information optionally assigned to the application
`can also be used for selection by the reading device. 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.
`
`Ex.1002, p. 290, ¶ [0021]. In other words, the assignment of the session number is
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`a step required for communication that happens after selection of the application—
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`which is prohibited by the proposed claim language: “after selection of one of the
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`plurality of applications, subsequent communication between the reading device
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`and the selected application takes place without requiring any further steps.”
`
`Accordingly, claim 23 recites new and different functionality than the functionality
`
`described in the specification.
`
`Substitute claims 25 and 26 recite similar subject matter. Thus, the reasoning
`
`described above with respect to claim 23 similarly applies to claims 25 and 26.
`
`Because substitute claims 23, 25, and 26 recite subject matter not supported by the
`
`specification, they contain new matter in violation of 35 U.S.C. § 316(d)(3).
`
`Ex.1026, ¶¶ 9-15.
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`5
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`Substitute claim 24 recites new matter by claiming concepts that
`B.
`differ from those described in the specification.
`The proposed amendments to substitute claim 24 similarly add new matter
`
`because they require a different process than the process described in the
`
`specification. Claim 24 (proposed substitute for claim 12) has been amended to
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`additionally recite:
`
`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.
`
`Motion, 5-6.
`
`Patent Owner points to the below portions of the specification as alleged
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`written description support:
`
`Substitute claim 24
`
`Cited support
`
`wherein the
`communication device is
`set up to uniquely address
`the one or more of the
`least two applications
`with a receiving device,
`
`“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
`
`6
`
`
`
`
`
`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
`
`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`stored on a common data carrier.” (Ex. 1002, p.289,
`¶[0016]).
`“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]).
`
`Motion, 5-6.
`
`Notably, the second added limitation requires communication “without
`
`requiring any further steps after the communication readiness signals are
`
`generated.” Motion, 5-6. As an initial matter, the above cited portions of the
`
`specification lack any disclosure of “communication” after generation of
`
`“communication readiness signals.” For this reason alone, the Motion fails with
`
`respect to claim 24.
`
`7
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`More importantly, the disclosure as a whole explains that, for
`
`communication to happen between a reading device and application, several steps
`
`are in fact are required after the communication readiness signals are generated.
`
`Specifically, the step of application selection occurs after the communication
`
`readiness signals are generated but before communication:
`
`When such a data carrier is brought into the response field of a reading
`device, thereby commencing its energy supply and putting it in an
`operational mode, it can receive a search signal emitted cyclically by
`the reading device and indicate its communication readiness to the
`reading device by means of a first response signal. As soon as the
`reading device has received this signal it starts a selection process
`using a so called anti-collision method in order to specifically select
`one data carrier for further communication when a plurality of
`communication-ready data carriers are located in the response field of
`the reading device at the same time.
`
`Ex.1002, 270. After the application has been selected, as noted above, it is
`
`assigned a session number: “[a]n application selected for further communication is
`
`then assigned a session number dynamically by the reading device.” Ex.1002, 290.
`
`
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`Thus, contrary to the claim language, the specification requires at least two
`
`further steps—application selection and session number assignment—for
`
`communication after the communication readiness signals have been generated.
`
`The specification provides no example in which there are no steps between
`
`8
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`communication-readiness signal generation and communication.
`
`
`
`For at least these reasons, the proposed amendments are not supported by the
`
`written description of the specification, and thus claim 24 is directed to new matter
`
`in violation of 35 U.S.C. § 316(d). Ex.1026, ¶¶ 16-21.
`
`III. Substitute claims 23-26 fail to comply with (pre-AIA) 35 U.S.C. § 112.
`Patent Owner’s motion to amend should also be denied because the
`
`substitute claims fail to comply with the requirements of 35 U.S.C. § 112 for at
`
`least two reasons. First, the proposed amendments transform the substitute claims
`
`into indefinite hybrid method-apparatus claims. Second, the substitute claims
`
`require the impossible: communication without “any steps.”
`
`A. The proposed amendments improperly add method limitations to
`apparatus claims.
`Substitute claim 23 is indefinite because it is a hybrid claim that requires
`
`method steps in the context of an apparatus claim.
`
`The Federal Circuit has held that “reciting both an apparatus and a method
`
`of using that apparatus renders a claim indefinite under section 112, paragraph 2.”
`
`IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)
`
`(citing Ex parte Lyell, 17 U.S.P.Q.2d 1548 (B.P.A.I. 1990)); see also Rembrandt
`
`Data Techs., LP v. AOL, LLC, 641 F.3d 1331 (Fed. Cir. 2011). In Rembrandt, the
`
`apparatus claim at issue recited four structural components plus a fifth method step
`
`not tied to any structure. 641 F.3d at 1339. The Federal Circuit refused to read in a
`
`9
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`structural limitation where none existed and held the claim structure to be
`
`
`
`indefinite. 641 F.3d at 1340 (“This court will not redraft Rembrandt’s claim”).
`
`Here, like in Rembrandt, claim 23 is a hybrid claim with both structural and
`
`method limitations, where the method limitations are not tied to any structural
`
`limitation.
`
`Claim 23 is directed to a “portable data carrier,” and is thus an apparatus
`
`claim. It recites structural elements including “a communication device configured
`
`to… ,” along with several “wherein” clauses. Each of the original “wherein”
`
`clauses found in claim 11 tie functional language to a specific structure—e.g.,
`
`“wherein the communication device is set up to generate... .” However, the new
`
`limitation in proposed claim 23 is a pure method limitation that is not tied to any
`
`structure: “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.” The plain language of
`
`this new limitation does not link any specific structural element of the claimed
`
`portable data carrier to either the “selection” of the application or the
`
`“communication.”1 On its face, this pure method step recited in the context of an
`
`
`1 No link between the structure of the portable data carrier and the “selection” can
`
`be implied because the ’706 patent explains that the reading device (not the
`
`10
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`apparatus claim is improper under IPXL and Rembrandt. 430 F.3d 1377, 1384; 641
`
`
`
`F.3d 1331, 1339.
`
`Because claim 23 recites both an apparatus with structural elements and
`
`method steps divorced from that structure, it is unclear how claim 23 would be
`
`infringed. See IPXL, 430 F.3d at 1384. Would a user infringe simply by creating
`
`the portable data carrier or would the user also need to perform the actions of
`
`selecting an application and communicating without any further steps? See id.
`
`Accordingly, claims 23 “is not sufficiently precise to provide competitors with an
`
`accurate determination of the ‘metes and bounds’ of protection involved” and is
`
`therefore ‘ambiguous and properly rejected’ under section 112, paragraph 2.” Id.
`
`(quoting Ex parte Lyell, 17 USPQ2d 1548, 1550-51 (1990)).
`
`Substitute claims 25 and 26 recite similar subject matter. Thus, by reciting
`
`pure method steps not tied to specific structure, apparatus claims 23-26 are
`
`improper hybrid claims that are indefinite under § 112.
`
`The claims recite the impossible and thus cannot be enabled.
`B.
`The newly added claim limitations require the impossible—communication
`
`without any steps: “wherein after selection of one of the plurality of applications,
`
`
`
`portable data carrier) performs selection of an application. See Ex.1002, p. 290, ¶
`
`[0021].
`
`11
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`subsequent communication between the reading device and the selected
`
`
`
`application takes place without requiring any further steps.” A claim that is
`
`impossible to implement is not enabled by the specification. See Liebel-Flarsheim
`
`Co. v. Medrad, Inc., 481 F.3d 1371 (Fed. Cir. 2007). In Liebel-Flarsheim, the
`
`court found the claims at issue invalid for lack of enablement because they recited
`
`the impossible—an injector system both with and without a pressure jacket. 481
`
`F.3d at 1380. In other words, the claims inherently contradicted themselves and
`
`were thus impossible to enable. The Board has similarly denied motions to amend
`
`that seek to add impossible limitations. See Toshiba America Information Systems,
`
`Inc. et al v. Walletex Microelectronics Ltd. et al, IPR2018-01538, Paper 33 at 84
`
`(Feb. 26, 2020) (finding that proposed substitute claims lacked enablement because
`
`“a person having ordinary skill in the art would never be able to make an
`
`embodiment that satisfied these claims”).
`
`Here, the newly added language requires that “subsequent communication”
`
`must somehow take place “without requiring any further steps.” But
`
`communication is itself—or at least involves—“steps.” In other words, the
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`negative limitation of “without requiring any further steps” is written so broadly
`
`that it carves out any step, whether performed by man or machine. Such a claim
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`limitation is impossible because communication cannot occur if the devices
`
`involved do not take any steps to perform the communication (e.g., formatting
`
`12
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`data, transmitting data). A POSITA could not possibly make what is claimed.
`
`
`
`Ex.1026, ¶¶ 22-23.
`
`Accordingly, like an injector system both with and without a pressure jacket,
`
`a device that performs communication without requiring any steps is not possible
`
`and cannot be enabled by the specification. Claims 24-26 recite similar language
`
`and are thus not patentable for the same reasons as claim 23. Ex.1026, ¶ 24.
`
`IV. Substitute claims 23-26 are obvious under (pre-AIA) 35 U.S.C. § 103.
`Notwithstanding the § 112 problems outlined above, substitute claims 23-26
`
`are obvious in view of Guthery and Nozawa, the prior art combination presented in
`
`the petition.2 Ex.1026, ¶¶ 25-26.
`
`The petition and declaration explain and illustrate how the limitations of
`
`original claims 11, 12, 18, and 20 are obvious in view of various portions of
`
`Guthery and Nozawa. The limitations of substitute claims 23-26 that are
`
`unchanged from claims 11, 12, 18, and 20 are rendered obvious by the same
`
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`2 As explained above, the claims impossibly require “communication” without
`
`“steps.” To the extent Patent Owner seeks to interpret the claims as instead
`
`prohibiting steps after selection but before subsequent communication (which is
`
`not what is claimed), Petitioner applies such an interpretation solely for the
`
`purpose of the prior art mapping in this Opposition.
`
`13
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`
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`portions presented in the petition, and thus will not be addressed in this Opposition.
`
`
`
`The analysis below illustrates how Guthery and Nozawa render obvious the newly
`
`added limitations in substitute claims 23-26.
`
`A. Claim 23
`“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”
`
`
`Guthery describes an application selection process in which the host
`
`(reading device) sends a request to an application on the smart card and receives a
`
`permission-to-send (PTS) packet confirming its selection. See Ex.1005, 12:20-52.
`
`After receiving the permission-to-send packet (“after selection of one of the
`
`plurality of applications”), the host then begins to communicate with the
`
`application (“subsequent communication”). Ex.1005, 12:20-52; Ex.1026, ¶ 27.
`
`14
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
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`“selection of one
`of the plurality
`of applications”
`
`does not require “any further steps”
`
`“subsequent communication”
`
`Ex.1005, Figs. 15B and 15C (partial, annotated); Ex.1026, ¶ 27.
`
`
`
`As can be seen from the annotated figure above, after the selection process
`
`(shown in blue), there are no steps before subsequent communication (shown in
`
`green). Ex.1026, ¶ 28.
`
`Thus, because in Guthery’s system communication between the host and the
`
`smart card begins immediately after the selection process, Guthery renders obvious
`
`“after selection of one of the plurality of applications, subsequent communication
`
`between the reading device and the selected application takes place without
`
`15
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`IPR2022-01137 / U.S. Patent No. 8,581,706
`requiring any further steps [before communication begins]3.” Ex.1026, ¶ 29.
`
`
`
`B. Claim 24
`“wherein the communication device is set up to uniquely address the one or
`more of the least two applications with a receiving device, and”
`
`
`As explained at [1.2] of the original petition, Guthery teaches that the host
`
`communicates with multiple applications on the smart card. Petition, 41-43.
`
`Guthery illustrates in Figs. 15A-15C, a first application “M” will generate a first
`
`Permission-to-Send (PTS) packet when it is ready to receive data, and then a
`
`second application “N” will generate a second Permission-to-Send (PTS) packet
`
`when it is ready to receive data: “FIG. 15 is a schematic diagram of a timeline 300
`
`… for an exemplary case of simultaneous communication between a host and two
`
`applications, Application M and Application N, on the smart card.” Ex.1005,
`
`12:54-59; Ex.1026, ¶ 30.
`
`Additionally, as explained in the original petition at [1.4], Guthery uses
`
`application identification numbers to communicate with the applications. An
`
`example Request-to-Send packet 70, which includes application identification
`
`
`
`3 The language in brackets is not in the claims. Again, to the extent Patent Owner
`
`seeks to interpret or amend the claims to include the language in brackets, or
`
`similar language, Guthery would render that interpretation obvious. Ex.1026, ¶ 29.
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`16
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`numbers (“the identification numbers assigned to the applications”), is illustrated
`
`
`
`in Fig. 8 below. Ex.1026, ¶ 31.
`
`application
` indices
`“identification
`numbers”
`
`request-to-send packet
`Ex.1005, Fig. 8 (partial, annotated); Ex.1003, ¶ 81.
`
`
`
`Guthery further explains that the application indices “uniquely” identify the
`
`applications: “At the end of the initialization and application identification phase,
`
`the entities wishing to communicate with applications on the card know what
`
`applications are available and have one-byte application indexes to uniquely
`
`and efficiently identify the applications on the particular smart card at hand.”
`
`Ex.1005, 8:60-64; Ex.1026, ¶ 32.
`
`Thus, because Guthery’s host (“reading device”) uses application indices to
`
`uniquely identify applications on the smart card, Guthery renders obvious “wherein
`
`17
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`the communication device is set up to uniquely address the one or more of the least
`
`
`
`two applications with a receiving device.” Ex.1026, ¶ 33.
`
`“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”
`
`
`Guthery describes a selection process in which the host sends a request to an
`
`application on the smart card and receives a permission to send packet. Ex.1005,
`
`12:20-52. After the permission-to-send packet has been generated (“after the
`
`communication-readiness signals are generated”), the smart card communicates
`
`the permission-to-send packet to the host (“communication between the reading
`
`device and the uniquely addressed application takes place subsequently”).
`
`Ex.1005, 12:20-52; Ex.1026, ¶ 34.
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`18
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
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`the communication-readiness
`signal is generated
`
`does not require “any further steps”
`
`“communication between the reading
`device and the uniquely addressed
`application takes place subsequently”
`
`Ex.1005, Figs. 15B and 15C (partial, annotated); Ex.1026, ¶ 34.
`
`
`As can be seen from the annotated figure above, after the permission-to-send
`
`packet is generated at 344 (shown in blue) there are no steps before communication
`
`between the reader and the smart card (e.g., transmission of the PTS packet from
`
`the smart card to the reader) begins (as shown in green). Ex.1026, ¶ 35.
`
`Thus, because Guthery’s system proceeds with communication between the
`
`host and the smart card immediately after the permission-to-send packet is
`
`generated, Guthery renders obvious “wherein communication between the reading
`
`device and the uniquely addressed application takes place subsequently without
`19
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
`requiring any further steps after the communication-readiness signals are
`
`
`
`generated [and before communication begins] 4.” Ex.1026, ¶ 36.
`
`C. Claim 25
`“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”
`
`
`See claim 23 above. Ex.1026, ¶ 37.
`
`D. Claim 26
`“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”
`
`
`See claim 23 above. Ex.1026, ¶ 38.
`
`
`
`
`
`
`
`4 The language in brackets is not in the claims. Again, to the extent Patent Owner
`
`seeks to interpret or amend the claims to include the language in brackets, or
`
`similar language, Guthery would render that interpretation obvious.
`
`20
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`Petitioner’s Opposition to Motion to Amend
`IPR2022-01137 / U.S. Patent No. 8,581,706
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`V. Conclusion
`For the reasons discussed above, Patent Owner’s Motion should be denied.
`
`
` Respectfully submitted,
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Registration No. 70,297
`Counsel for Petitioner
`
`
`
`
`
`Dated: June 21, 2023
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 7
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