Inter Partes Review
`U.S. Patent No. 8,581,706
`
`Apple Inc. v. Aire Technology, Ltd., Case IPR2022-01137
`
`Calmann J. Clements,
`Haynes Boone, LLP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`Ex.1027 / IPR2022-01137 / Page 1 of 35
`Apple Inc. v. Aire Technology Limited
`
`
`U.S. Patent No. 8,581,706
`
`Apple Inc. v. Aire Technology, Ltd., Case IPR2022-01137
`
`Calmann J. Clements,
`Haynes Boone, LLP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Ex.1027 / IPR2022-01137 / Page 1 of 35
`Apple Inc. v. Aire Technology Limited
`
`
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`The ’706 Patent
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`Ex.1001, Fig. 1 (annotated); Petition at 10.
`
`Ex.1002, 37; Petition at 12.
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`2
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`2
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`Original Claims:
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`Ground 1: Claims 1-3 and 11-12 are obvious over Guthery and
`Nozawa
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`3
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`3
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`’706 Patent, Claims 1 and 11
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`Ex.1001, Claim 11.
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`Ex.1001, Claim 1.
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`4
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`4
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`Guthery teaches application identifiers
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`Ex.1005, Fig. 2; Petition at 27.
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`5
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`5
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`Guthery’s communication between host and reader
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`Ex.1005, Fig. 14A; Petition at 28.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
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`6
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`Guthery teaches communication readiness signals
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`Ex.1005, Figs. 15A-C;
`Petition at 59.
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`7
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`7
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`
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`Nozawa teaches recording the selection history
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`Ex.1006, [0006]; Petition at 29.
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`Ex.1006, [0020]; Petition at 30.
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`8
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`8
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`
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`Patent Owner attacks only the reasons to combine
`
`Patent Owner’s
`Argument
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`Patent Owner Response, 14.
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`9
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`9
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`
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`The Petition relies on the embodiment shown in Fig. 8
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`Ex.1005, Fig. 8; Petition at 48.
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`10
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`10
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`Guthery’s applications do not require size information from the RTS packet
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`Ex.1005, 9:25-31; Petitioner Reply at 6.
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`Ex.1005, 12:22-29; Petitioner Reply at 6.
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`11
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`11
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`
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`Original Claims:
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`Ground 2: Claims 16 is obvious over Guthery, Nozawa, and the
`RFID Handbook
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`Ground 4: Claim 20 is obvious over Guthery and the RFID
`Handbook
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`12
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`12
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`A POSITA would have found it obvious to segment Guthery’s memory
`
`Ex.1001, Claims 16 and 20.
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`13
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`13
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`A POSITA would have found it obvious to segment EEPROM memory
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`Ex.1007, Fig. 10.16 (annotated); Petition at 66.
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`14
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`14
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`
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`Patent Owner focuses on the wrong memory in Guthery
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`Petitioner’s Position:
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`Petition at 66.
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`Patent Owner’s Position:
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`Patent Owner Response at 19.
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`15
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`15
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`Guthery’s RAM is indeed segmented
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`Patent Owner Argues:
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`Patent Owner Response at 19.
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`But Guthery states:
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`Ex.1005, 4:1-8; Petition Reply at 10-12.
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`Ex.1005, Fig. 3; Petition Reply at 11.
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`16
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`16
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`Summary of Original Claims
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`Summary
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`• Guthery and Nozawa render obvious the
`challenged claims.
`
`• Patent Owner does not address the teachings
`relied on in the Petition.
`
`• Patent Owner focuses on the wrong type of
`memory in Guthery.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
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`17
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`
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`Motion to Amend
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`18
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`18
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`
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`Proposed Substitute Claims
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`Claim 24
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`Claim 23
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`Motion to Amend, 4.
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`Motion to Amend, 5-6.
`19
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`19
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`
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`Motion to Amend:
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`Substitute Claims 23-26 are Obvious in View of Guthery
`and Nozawa
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`20
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`20
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`
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`The claims are either obvious or indefinite.
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`Board’s interpretation:
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`Preliminary Guidance, 7.
`Patent Owner’s interpretation:
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`Patent Owner Reply to Opposition, 3.
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`21
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`21
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`Guthery teaches precisely what is recited in claim 23
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`Petitioner’s Opposition, 15.
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`22
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`22
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`Patent Owner’s box drawing is based on unclaimed requirements
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`Patent Owner argues that:
`
`•
`
`“[T]he claimed selection process includes the steps
`necessary for the reading device to engage in
`communications with the selected application, i.e., when
`the selected application is sufficiently addressed by the
`reading device to begin communicating with the data
`carrier.” PO Reply, 11.
`
`• Selection is complete “no later than when the reading
`device receives the identification number assigned to the
`application, or, when session numbers are used, no later
`than when the application is addressed uniquely with the
`session numbers.” PO Reply, 11.
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`23
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`23
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`
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`Motion to Amend:
`Substitute Claims 23-26 fail to comply with 35 U.S.C. 112.
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`24
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`24
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`
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`The substitute claims are far broader than the disclosed invention
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`Petitioner’s Opposition, 3.
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`25
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`25
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`
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`The substitute claims are far broader than the disclosed invention
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`Petitioner’s Opposition, 6-7.
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`26
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`26
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`
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`Application selection and session assignment occur before communication
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`Ex.1001, 7:40-46; Petitioner’s Opposition, 8-9.
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`Ex.1001, 4:32-37; Petitioner’s Opposition, 8-9.
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`27
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`27
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`Summary of Motion to Amend
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`Summary
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`• Guthery and Nozawa render the proposed substitute claims obvious
`under the Board’s interpretation.
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`• The claims lack enablement otherwise.
`
`• The claims lack written description support because they claim
`concepts that are not disclosed.
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`28
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`28
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`
`
`Inter Partes Review
`U.S. Patent No. 8,581,706
`
`Apple Inc. v. Aire Technology, Ltd., Case IPR2022-01137
`
`Calmann J. Clements,
`Haynes Boone, LLP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`
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`Additional Slides
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`30
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`30
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`Guthery’s different embodiments
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`Guthery’s main embodiment:
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`Guthery’s other embodiment:
`
`Ex.1005, 9:25-31; Petitioner Reply at 6.
`
`Ex.1005, 12:65-13:4; Petitioner Reply at 6.
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`Ex.1005, 12:22-29; Petitioner Reply at 6.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`31
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`31
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`
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`The claims are not limited to only RAM memory being segmented
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`Patent Owner Argues:
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`Patent Owner Sur-reply at 18.
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`Ex.1001, claim 16.
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`32
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`32
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`Guthery has an embodiment in which the smart card is a SIM card
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`Ex.1001, Claim 18.
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`Ex.1005, Fig. 1 (annotated); Petition at 25.
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`33
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`33
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`Guthery teaches precisely what is recited in claim 24
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`Petitioner’s Opposition, 19.
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`34
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`34
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`Dr. Phinney’s testimony is based on evidence
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`Ex.1003, 4-5.
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`Ex.1003, 31.
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`35
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`35
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`Ex.1027 / IPR2022-01137 / Page 35 of 35
`Apple Inc. v. Aire Technology Limited
`
`
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