Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: December 15, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2022-01137
`Patent 8,581,706 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JEFFREY S. SMITH, and
`BRIAN J. McNAMARA,
`
`SMITH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 31
`Date: December 15, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2022-01137
`Patent 8,581,706 B2
`
`
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, JEFFREY S. SMITH, and
`BRIAN J. McNAMARA,
`
`SMITH, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2022-01137
`Patent 8,581,706 B2
`
`INTRODUCTION
`I.
`Petitioner, Apple Inc., filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1–3, 11, 12, 16, 18, and 20 of U.S. Patent
`No. 8,581,706 B2 (Ex. 1001, “the ’706 patent”) pursuant to 35 U.S.C.
`§ 311(a), which we instituted (Paper 11, “Dec.”). Patent Owner Aire
`Technology Limited filed a Response to the Petition. Paper 17 (“PO
`Resp.”). Petitioner filed a Reply (Paper 20, “Pet. Reply”) and Patent Owner
`filed a Sur-Reply (Paper 22, “PO Sur-Reply”). Patent Owner also filed a
`Contingent Motion to Amend (Paper 16, “Mot.”), Petitioner filed an
`Opposition to the Motion to Amend (Paper 19, “Opp.”), Patent Owner filed
`a Reply to the Opposition (Paper 23, “Reply to Opp.”), and Petitioner filed a
`Sur-Reply to the Motion to Amend (Paper 26, “Sur-Reply to Mot.”). A
`hearing was held on October 2, 2023 and a transcript (“Tr.”) was entered
`into the record. Paper 30.
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a). For the reasons discussed below, we determine claims 1–3, 11, 12,
`16, 18, and 20 are unpatentable, and Patent Owner’s Motion to Amend is
`denied with respect to proposed substitute claims 23–26.
`II. REAL PARTIES-IN-INTEREST
`Petitioner identifies itself (Apple, Inc.) as its sole real party-in-
`interest. Pet. 90. Patent Owner identifies itself (Aire Technology Ltd.) as its
`sole real party-in-interest. Paper 4, 2.
`III. RELATED MATTERS
`The Petition states that the ’706 patent is the subject of the following
`proceedings:
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`2
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`Patent 8,581,706 B2
`Aire Technology Ltd. v. Google LLC, No. 6-21-01104, W.D. Tex.,
`filed Oct. 25, 2021;
`
`Aire Technology Ltd. v. Apple, Inc., No. 6-21-01101, W.D. Tex., filed
`Oct. 22, 2021 (“the Apple litigation”);
`
`Aire Technology Ltd. v. Samsung Electronics co, Ltd. et al., No.
`6-21-00955 W. D. Tex., filed Sep. 15, 2021;
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00876 (PTAB, May 2, 2022)
`
`Aire Technology Ltd. v. Garmin International, Inc., No. 8-22-01027,
`C.D. Ca., filed May 20, 2022.
`Pet. 68. Patent Owner identifies the following additional proceedings as
`“related current and/or former proceedings involving the patent at issue.”
`Paper 4, 2–3.
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00874 (PTAB April 22, 2022);
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00875 (PTAB April 22, 2022);
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00877 (PTAB May 2, 2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01135 (PTAB June 15,
`2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01136 (PTAB June 15,
`2022).
`
`IV. THE ’706 PATENT
`The ’706 patent relates to “a method for contactless communication of
`at least two applications stored on a common portable data carrier.”
`Ex. 1001, 1:8–11. The background of the ’706 patent explains “that a
`plurality of applications can be located on a portable data carrier at the same
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`Patent 8,581,706 B2
`time.” Id. at 2:5–9. The ’706 patent describes that the portable data carrier
`transmits communication-readiness signals for each of its applications to the
`reading device. Id. at 3:5–20. For example, “a first communication-
`readiness signal to the reading device is generated for a first of the at least
`two applications . . . indicating to the reading device the communication
`readiness of said first application.” Id. at 3:8–13. Additionally, “a second
`communication-readiness signal to the reading device is generated for a
`second of the at least two applications . . . and indicates to the reading device
`the communication readiness of said second application.” Id. at 3:13–20.
`The communication-readiness signals include an application identification
`number assigned to the corresponding application. Id. at 3:5–20. Figure 1
`of the ’706 patent is reproduced below.
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`Patent 8,581,706 B2
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`Figure 1 above illustrates data carrier 100 and reading device 200.
`Ex. 1001, 7:8–10. Applications 10, 20, 30 are located on the data carrier.
`Id. at 7:10–11. Toggling device 50 is set up to toggle between the different
`applications. Id. at 7:12–13. Each of the applications is assigned an
`identification number UID1, UID2, UIDn, numbers which are managed by
`communication device 70. Id. at 7:14–17. When the reading device enters
`into communication with one or more applications, the reading device can
`select them for further communication via the identification numbers and
`address them by means of dynamically assigned session numbers CID1,
`CID2, CIDn. Id. at 7:17–21.
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`Patent 8,581,706 B2
`The ’706 patent discloses that the communication device 70 of data
`carrier 100 can be set up to store, in a nonvolatile memory, information
`about which of the applications 10, 20, 30 last communicated with the
`reading device 200. Ex. 1001, 9:5–9. This record may then be used to select
`the application that was most recently used; “It is also possible, however, to
`first generate a communication-readiness signal for that application 10, 20,
`30 with which the reading device 200 actively communicated last.” Id. at
`9:18–21.
`
`V. ILLUSTRATIVE CLAIM
`Challenged claim 1 of the ’706 patent recites:
`1. A method for contactless communication of a reading
`device with at
`least
`two communication-ready
`applications located on a portable data carrier, comprising the
`steps:
`generating a first communication-readiness signal to the
`reading device for a first of the at least two applications, the
`communication-readiness signal comprising a first identification
`number which is assigned to the first of the at least two
`applications and
`indicates
`to
`the reading device
`the
`communication readiness of said first application, and
`generating a second communication-readiness signal to
`the reading device for a second of the at least two applications,
`the second communication-readiness signal comprising a second
`identification number different from the first identification
`number, which is assigned to said second application and
`indicates to the reading device the communication readiness of
`said second application, and
`storing information in a nonvolatile memory of the data
`carrier about which of the at least two applications was last
`selected for further communication by the reading device,
`wherein
`the
`reading device selects
`for
`further
`communication one or more of the at least two applications via
`the identification numbers assigned to the applications.
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`16
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`18
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`20
`
`VI. ASSERTED GROUNDS
`Petitioner asserts that claims 1–3, 11, 12, 16, 18, and 20 of the ’706
`patent are unpatentable on the following grounds.
`Claim(s) Challenged 35 U.S.C. §1
`Reference(s)/Basis
`1–3, 11, 12
`103(a)
`Guthery2, Nozawa3
`Guthery, Nozawa, RFID
`Handbook4
`Guthery, Nozawa, Smart
`Card Handbook5
`Guthery, RFID Handbook
`
`103(a)
`
`103(a)
`
`103(a)
`
`VII. LEVEL OF ORDINARY SKILL
`Petitioner identifies a person of ordinary skill as someone
`knowledgeable and familiar with the smart card and Radio Frequency
`Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would
`have a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or equivalent training, and approximately two years of
`experience working in the electrical engineering field. Lack of work
`experience can be remedied by additional education, and vice versa.” Id. at
`13. Patent Owner does not address the level of ordinary skill. See generally,
`PO Resp.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
`2 U.S. Patent No. 6,824,064 (Ex. 1005)
`3 Japanese Paten Application No. 2000-163539A (Ex. 1006)
`4 RFID Handbook: Radio-Frequency Identification Fundamentals and
`Applications, Klause Finkenzeller, 1999 (Ex. 1007)
`5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008)
`
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`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a
`person of ordinary skill appears commensurate with the subject matter
`before us, we apply Petitioner’s definition.
`VIII. CLAIM CONSTRUCTION
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
`generally given their ordinary and customary meaning” as understood by a
`person of ordinary skill in the art in question at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`omitted) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citations omitted).
`We construe only those claim terms that require analysis to determine
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
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`Patent 8,581,706 B2
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner submits that the terms of the challenged claims should be
`given their plain and ordinary meaning, and no terms require specific
`construction. Pet. 13–14. Although we may discuss the scope of the claim
`language during our analysis, we agree that no specific construction is
`necessary for us to reach our decision.
`IX. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, objective evidence
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`of obviousness or nonobviousness, i.e., secondary considerations. See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418.
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)). Furthermore, Petitioner does not satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016).
`B. Claims 1–3, 11, 12 As Obvious Over Guthery and Nozawa
`Guthery – Exhibit 1005
`1.
`Guthery relates to a “multi-application integrated circuit card (‘smart
`card’) [that] contains a plurality of application programs.” Ex. 1005, 2:42–
`43. Guthery discloses that its smart card can be presented to a smart card
`reader, which reads the smart card through wireless means or electrical
`contacts. Id. at 6:42–47. In Guthery’s system, “[w]hen a smart card is
`electrically activated, . . . the card manager 34 sends to the [smart card
`reader] an application-identification packet 60 for each application 32 on the
`smart card that identifies the application” with an “application index.” Id. at
`8:32–39. The reader is then aware of each application on the smart card, and
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`Patent 8,581,706 B2
`can then select the desired application for further communication using the
`application index. Id. at 8:60–64.
`To select an application with which to communicate, the reader sends
`a request-to-send packet to the smart card that identifies the application by
`its application index. Ex. 1005, 8:66–9:2. Then, the identified application
`generates and sends a “permission-to-send packet . . . when the application is
`ready” to communicate with the reader. Id. at 9:9–11. The permission-to-
`send packet “contains the application index 82 of the application sending the
`packet 80.” Id. at 9:14–16. This process flow is shown in Fig. 14A below.
`
`
`
`As shown in Figure 14A above, after receiving the request-to-send
`packet from a host, the smart card performs a series of steps before it outputs
`the permission-to-send packet to the host. Ex. 1005, 12:17–36. These steps
`include receiving the request-to-send packet in a buffer at step 204,
`activating application M at step 206, having application M ask for buffers at
`step 208, monitoring buffer availability at step 210, providing buffers at 212,
`and having application M output the permission-to-send packet to the card
`manager at step 216. Id.
`
`11
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`IPR2022-01137
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`
`Nozawa – Exhibit 1006
`2.
`Nozawa “relates to IC cards, and particularly to an IC card having a
`CPU and a memory, and in which a plurality of application programs stored
`in the memory can be selectively executed by the CPU.” Ex. 1006 ¶ 1.
`Nozawa discloses that when an external apparatus such as a reader desires to
`communicate with an application on the IC card, it can send an application-
`selection command to the IC card to select the desired application. Id. ¶ 6.
`The IC card also has a function for automatically selecting an application
`having a high probability of being selected by the reader, so that, if the
`application that has been automatically selected by the IC card is the
`application that the reader desires to communicate with, then the reader does
`not need to send the application-selection command to the IC card. Id.
`¶¶ 19, 22, 25. Nozawa discloses that one candidate with a high probability
`of being selected is the most recently selected application. Id. ¶ 22. Nozawa
`discloses maintaining a record of recently used applications in order to select
`the application having a high probability of being selected by the reader,
`such as the most recently selected or the most frequently selected
`application. Id. ¶¶ 16, 20, 22, 25.
`Reasons to Combine the Teachings of Guthery and Nozawa
`3.
`Petitioner contends a person of ordinary skill would have had reason
`to combine the teachings of Guthery and Nozawa because both references
`concern multi-application smart cards. Pet. 31. Petitioner contends that
`Guthery’s smart card waits until it receives a request-to-send packet from a
`smart card reader before it begins initializing the application identified in the
`packet. Id. at 32 (citing Ex. 1005, 9–12, 12:17–59, Figs. 14A, 15).
`Petitioner contends that a person of ordinary skill would have recognized
`that this process can waste time and resources, especially in situations where
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`one application is utilized more than another. Id. (citing Ex. 1003, Phinney
`Decl. ¶¶ 52–53). Petitioner contends that a person of ordinary skill would
`have modified Guthery’s process to identify and initialize an application
`most likely to be selected by the smart card reader as taught by Nozawa to
`preemptively transmit a permission-to-send packet from the application to
`the reader without waiting to receive the request-to-send packet from the
`reader, thus improving efficiency and reducing latency. Id. at 33 (citing Ex.
`1003, Phinney Decl. ¶¶ 55).
`Petitioner contends that a person of ordinary skill would have had a
`reasonable expectation of success in making the combination because
`Nozawa’s technique was meant to improve multi-application smart card
`systems like Guthrey’s. Id. at 34. According to Petitioner, Guthery includes
`the specific inefficiency noted by Nozawa, namely, that a waiting time is
`required for the smart card to receive a request-to-send packet from the
`reader, initialize the application identified in the packet, and transmit a
`response to the reader, before work can begin. Id.; see id. at 31–32 (citing
`Ex. 1006 ¶ 7; Ex. 1003, Phinney Decl. ¶¶ 52–53). Petitioner contends that
`the combination represents applying Nozawa’s known technique of
`automatically selecting an application based on selection history to
`Guthery’s multi-application smart card to yield the predictable result of
`initializing the selected application prior to receiving a request-to-send
`packet, thus improving efficiency and reducing latency at the start of a new
`communication session. Id. at 34–35 (citing Ex. 1003, Phinney Decl. ¶¶ 58–
`60).
`
`Patent Owner contends that Petitioner ignores that Guthery “tightly
`couples the execution of applications and thereby communications with
`them with efficient management of the smart card’s limited RAM memory.”
`
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`PO Resp. 12 (citing Ex. 1005, 2:54–58). Patent Owner contends that an
`application in Guthery’s smart card may process packets after receiving all
`packets of a message and assembling the message, which requires multiple
`buffers, or may process packets as they are received, which only requires
`one buffer that can be reused to hold each new packet. Id. at 12–13 (citing
`Ex. 1005, 13:21–31, 13:43–52). Patent Owner contends that, without
`receiving a request-to-send packet from a host, the application would not
`know whether to request one buffer or multiple buffers. Id. at 14 (citing Ex.
`1005, 12:65–13:4, 13:5–12, 13:46–52, Figs. 17B, 17C, 18B, and 18C).
`According to Patent Owner, without this information, the application would
`not be able to determine an efficient buffer request, which runs contrary to
`Guthery’s goal of efficiently using the limited RAM available on the smart
`card. Id. Patent Owner contends that Petitioner’s contentions show that a
`person of ordinary skill could have made the combination, not that a such
`person would have made the combination. Id. at 15–16.
`Petitioner contends that Patent Owner does not address the
`combination proposed in the Petition. Pet. Reply 1. Petitioner contends that
`Guthery teaches that a host sends a request-to-send packet to a smart card in
`order to select an application, then the selected application responds with a
`permission-to-send packet. Id. at 1–2 (citing Ex. 1005, 8:65–9:2, 9:9–12,
`Fig. 14A). Petitioner contends that Nozawa teaches a smart card that
`automatically selects an application having a high probability of being
`selected by the host in order to reduce waiting time. Id. at 2 (citing Ex. 1006
`¶¶ 7, 19). Petitioner contends that a person of ordinary skill in the art at the
`time of invention would have modified Guthery’s smart card to
`automatically select an application that has a high probability of being
`utilized as taught by Nozawa for the benefit of beginning the initialization
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`process described in Figures 14 and 15 of Guthery without waiting for a
`request-to-send packet identifying the application as taught by Nozawa. Id.
`at 2–3 (citing Pet. 33).
`Petitioner contends that the combination is based on Guthery’s
`disclosure of a request-to-send packet that does not include a message size
`or information used in determining buffer allocation. Pet. Reply 4–5 (citing
`Ex. 1005, 8:65–9:12, Fig. 8). Petitioner contends that in this embodiment,
`the application determines its memory requirements without message size
`information from the host. Id. at 5–6 (citing Ex. 1005, 9:25–31, 12:22–29).
`Petitioner contends that Patent Owner relies on an alternative embodiment in
`Guthery that is not part of the combination. Pet. Reply 4. In particular,
`Petitioner contends that Guthery discloses that “[i]n one embodiment, the
`original request-to-send packet contains an indication of the size of the
`message.” Id. at 7 (citing Ex. 1005, 12:65–13:12). Petitioner contends that
`this disclosure of the request-to-send packet that contains additional
`information about the message size cited by Patent Owner is presented in the
`context of “one embodiment” after an extensive explanation of a main
`embodiment in which the request-to-send packet does not contain the
`additional information. Id. Petitioner contends that Guthery’s use of “one
`embodiment” in this context indicates that the additional information in the
`request-to-send packet cited by Patent Owner is optional. Id.
`Patent Owner contends that the different embodiments described by
`Guthery are not actually different embodiments, but rather, are specific
`implementations of aspects or features of Guthery’s invention. PO Sur-
`Reply 6. Patent Owner contends that Guthery does not differentiate between
`a preferred, or main, embodiment and an alternative embodiment. Id. at 7–
`10.
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`In particular, Patent Owner contends that the packet structure shown
`in Figure 5 includes a bit to indicate whether the packet either is not the last
`packet or is the last (or only) packet in a series of packets. PO Sur-Reply 7–
`8 (citing Ex. 1005, 7:57–61). Patent Owner emphasizes Guthery’s
`disclosure of several exemplary timelines shown in Figures 14–18, and
`contends that each of these Figures illustrates the operation of an
`embodiment for an exemplary case. Id. at 8–10. Patent Owner contends
`that Guthery contemplates not only single packet communications between
`the host and an application as described by Figures 14 and 15, but also
`contemplates multi-packet input from the host as described by Figures 17
`and 18. Id. at 10–13.
`According to Patent Owner, for the multi-packet embodiment, the
`application would not know whether an entire message comprising multiple
`packets must be received before processing by the smart card as shown in
`Figure 17, or whether each packet of the message can be processed by the
`smart card as they are received as shown in Figure 18, unless the application
`receives the request-to-send packet that includes information about the size
`of the message. PO Sur-Reply 13–15. Patent Owner contends that, without
`information about the size of the message from the request-to-send packet,
`the application would not know whether it needs to request only one buffer,
`or multiple buffers. Id. at 16. Patent Owner contends that this would render
`Guthery’s application inoperable for its intended purpose of making the
`most efficient use of the limited RAM on the smart card. Id. at 15–16 (citing
`Ex. 1005, 10:42–43, 10:62–64).
`We disagree with Patent Owner, that Guthery only describes different
`implementations of aspects and features of a single embodiment. For
`example, Guthery discloses that features of “the invention will be apparent
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`Patent 8,581,706 B2
`from the following more particular descriptions of preferred embodiments of
`the invention, as illustrated in the accompanying drawings.” Ex. 1005, 5:7–
`10; see id. at 17:13–14 (“this invention has been particularly shown and
`described with references to preferred embodiments thereof.”). Guthery
`then describes each of Figures 14 through 18 as “an embodiment.” Id. at
`5:46–66.
`Further, although Patent Owner is correct in stating that Guthery
`discloses an embodiment of a request-to-send packet that includes size
`information, we do not agree that Guthery requires this information to be
`included in the request-to-send packet. Rather, we agree with Petitioner,
`that Guthery’s description of a request-to-send packet as shown in Figure 8,
`which does not include information about the size of the message, indicates
`that the size information is not required by the request-to-send packet in at
`least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at
`8:25–29 (The “present invention is not limited to the packet types discussed
`and in fact assumes that new types can and will be defined in the future as
`needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed
`number of bytes, but “in other embodiments, packet types may have
`different sizes.”).
`We agree with Petitioner, that Guthery discloses multiple
`embodiments, and the combination made by Petitioner relies on the
`embodiments shown in Figures 14 and 15, where the requested application
`only needs two buffers and therefore would know, without receiving
`information from the request-to-send packet, to ask for two buffers. Ex.
`1005, 12:19–59. We find that a person of ordinary skill, in combining the
`teachings in Guthery with Nozawa to identify and initialize an application
`most likely to be selected by the smart card reader, would rely on (a)
`
`17
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`IPR2022-01137
`Patent 8,581,706 B2
`Guthery’s teaching of a request-to-send packet that does not include
`information about the size of a message as shown in Figure 8, (b) Guthery’s
`teaching of an application programmed to determine its own memory
`requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an
`application that only needs two buffers as shown in Figures 15A-15D, to
`preemptively transmit a permission-to-send packet from the application to
`the reader without waiting to receive the request-to-send packet from the
`reader, to yield the benefit of improving efficiency and reducing latency as
`taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s
`system would preemptively prepare the buffers and transmit the permission-
`to-send packet without waiting to receive the request-to-send packet).
`Even accepting Patent Owner’s contention, that the invention of
`Guthery requires a device that implements all embodiments shown in
`Figures 14 through 18, we still find that the combination would yield a
`benefit for the embodiments of Figures 14 and 15 for the reasons discussed
`above. Petitioner contends that the combination of Guthery and Nozawa
`teaches that when the host seeks to communicate with an application other
`than the application automatically selected by the smart card, the smart card
`would receive the normal request-to-send packet identifying the desired
`application, and the smart card would initialize the desired application. Pet.
`33–34 (citing Ex. 1003 ¶ 56; Ex. 1006 ¶ 19; Ex. 1005, Fig. 15). Dr. Phinney
`testifies that “if Guthery’s modified smart card did not select the correct
`application, the host would then send the typical Request-to-Send packet
`containing the application index of the desired application.” Ex. 1003 ¶ 56.
`We agree with Petitioner, that Patent Owner’s contentions regarding
`the efficient use of limited RAM in Guthery and the role and necessity of
`various types of messages in Guthery’s buffer allocation and communication
`
`18
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`IPR2022-01137
`Patent 8,581,706 B2
`processes are attorney argument that cannot take the place of objective
`evidence. Pet. Reply 13–14 (citing PO Resp. 12–13); see Gemtron Corp. v.
`Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009). Further, Patent
`Owner’s contentions are inconsistent with the credible and factually
`supported testimony of Dr. Phinney and the teachings of Guthery and
`Nozawa. Ex. 1003 ¶¶ 51–60; Ex. 1005, 3:24–26, 7:7–9, 8:30–9:48, 11:4–5,
`12:17–59, Figs. 14 and 15; Ex. 1006 ¶¶ 1, 7, 19, 20, 22, 31.
`We credit the testimony of Dr. Phinney cited above in finding that if
`Guthery’s modified smart card selects an application that requires a request-
`to-send packet, such as an application that implements the methods shown in
`Figures 17 and 18, the host would send the typical request-to-send packet
`containing the necessary information for the application to ask for the
`appropriate amount of buffers needed to achieve its intended purpose of
`making the most efficient use of the limited RAM on the smart card. Thus,
`even under Patent Owner’s understanding of Guthery, we find that a person
`of ordinary skill would have had reason to combine the teachings of Nozawa
`with those of Guthery because the combination would result in the efficiency
`of eliminating the waiting time needed to receive the request-to-send packet
`for the embodiments shown in Figures 14 and 15, and would result in
`making the most efficient use of the limited RAM on the smart card for the
`embodiments shown in Figures 14–18 of Guthery. In addition, because the
`combination of Guthery with Nozawa, even under Patent Owner’s
`understanding of Guthery, meets the claim for the embodiments of Figures
`14 and 15 of Guthery, the combination is sufficient to show obviousness.
`See Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir.
`2016) (“[C]ombinations of prior art that sometimes meet the claim elements
`
`19
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`IPR2022-01137
`Patent 8,581,706 B2
`are sufficient to show obviousness . . . . It is enough that the combination
`would sometimes perform all the method steps.”).
`Claim 1
`4.
`The preamble of claim 1 recites a “method for contactless
`communication of a reading device with at least two communication-ready
`applications located on a portable data carrier, comprising the steps.”
`Petitioner contends that Guthery teaches the preamble in describing a smart
`card having a plurality of applications, where the smart card wirelessly
`transmits permission-to-send packets to a smart card reader to indicate that
`the applications are ready for communication. Id. at 35–38 (citing Ex. 1005,
`2:52–54, 3:44–48, 6:42–46, 7:3–9, 9:9–12, Figs. 1, 2, 15A–15C). Patent
`Owner does not dispute that Guthery teaches the features recited in the
`preamble. We find that Petitioner has demonstrated that Guthery teaches the
`features recited in the preamble of claim 1. 6
`Claim 1 recites “generating a first commu
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