Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`
`Civil Action No. 6:23-cv-00319-ADA
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`
`PROXENSE, LLC,
`
`
`Plaintiff,
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`
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`
`
`v.
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`
`
`MICROSOFT, CORP.,
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`Defendant.
`
`
`
`PLAINTIFF PROXENSE, LLC’s RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Patent Owner Exhibit 2006, Page 1 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 2 of 20
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`TABLE OF CONTENTS
`INTRODUCTION ............................................................................................................... 1
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`THE CLAIMED INVENTIONS ......................................................................................... 1
`
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................. 2
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`AGREED CONSTRUCTIONS ........................................................................................... 2
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`CONSTRUCTION OF DISPUTED TERMS ...................................................................... 3
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`I.
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`II.
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`III.
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`IV.
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`V.
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`A.
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`FAMILY A ................................................................................................................. 3
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`1.
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`2.
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`“access message” (730:1, 15; 954, 1; 905:1) ............................................... 3
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`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (730:5) ........................................................... 8
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`B.
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`FAMILY B ............................................................................................................... 10
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`1.
`
`2.
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`“personal digital key” (042:10) ................................................................. 10
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`“receiver-decoder circuit” (042:10; 289:14, 16) ........................................ 12
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`VI.
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`CONCLUSION ................................................................................................................. 15
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`i
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`Patent Owner Exhibit 2006, Page 2 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 3 of 20
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`TABLE OF AUTHORITIES
`
`Cases
`
`Athletic Alts., Inc. v. Prince Mfg.,
`73 F.3d 1573 (Fed. Cir. 1996) ..................................................................................................... 6
`
`Page(s)
`
`
`Comark Commc’ns, Inc. v. Harris Corp.,
`156 F.3d 1182 (Fed. Cir. 1998) ................................................................................................. 12
`
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ................................................................................................. 12
`
`
`Cordis Corp. v. Bos. Sci. Corp.,
`561 F.3d 1319 (Fed. Cir. 2009) ................................................................................................... 6
`
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) ............................................................................................... 4, 5
`
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
` 381 F.3d 1111 (Fed. Cir. 2004) ................................................................................................... 6
`
`INVT SPE LLC v. Int'l Trade Comm'n.,
`46 F.4th 1361(Fed. Cir. 2022) ..................................................................................................... 7
`
`
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ................................................................................................... 14
`
`
`Linear Technology Corp. v. International Trade Commission,
`566 F.3d 1049 (Fed. Cir. 2009) ................................................................................................. 14
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..................................................................................... 3, 6, 8, 10
`
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ................................................................................................... 7
`
`
`Tinnus Enterprises, LLC v. Telebrands Corp.,
`733 F. App'x 1011 (Fed. Cir. 2018) ............................................................................................ 9
`
`
`
`
`
`
`ii
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`Patent Owner Exhibit 2006, Page 3 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 4 of 20
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`I.
`
`INTRODUCTION
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`The Court has already construed every single term that Defendant Microsoft Corporation
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`(“Microsoft”) now seeks to re-construe. In the earlier case Proxense, LLC v. Samsung Electronics
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`Co., Ltd. et al., 6:21-cv-00210-ADA (W.D. Tex.) (hereinafter, “Proxense v. Samsung”), this Court
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`agreed with Proxense’s proposed constructions for all of the terms in this proceeding. See id. ECF
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`No. 43 (Claim Construction Order); ECF 149 (Claim Construction Opinion). Proxense requests
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`that the Court simply adopt its prior rulings on these terms. On the other hand, Microsoft’s
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`proposed constructions are nearly identical or outright identical to the constructions that this Court
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`rejected when Samsung presented the same arguments in Proxense v. Samsung. Proxense’s
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`proposed constructions are supported by the claims and the specifications. In contrast, Microsoft’s
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`proposed constructions impermissibly change the meaning of claims, add claim limitations, and
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`inject unnecessary confusing language into the claims. Further, Microsoft’s rationale for its
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`proposed constructions provides no new credible evidence or arguments that challenge the Court’s
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`previous determinations. The Court should adopt its prior constructions from Proxense v.
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`Samsung.
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`II.
`
`THE CLAIMED INVENTIONS
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`The inventions set forth in the patents-in-suit (U.S. Patent Nos. 8,352,730 (the “730
`
`Patent”), 8,886,954 (the “954 Patent”), and 9,298,905 (the “905 Patent”) (collectively, “Family
`
`A”) and U.S. Patent Nos. 8,646,042 (the “042 Patent”), 9,679,289 (the “289 Patent”) and
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`10,073,960 (the “960 Patent”) (collectively, “Family B”) allow users to carry, control, and protect
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`their own personal data on devices like mobile phones, which allows for secure transactions and
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`authentication using those devices. Biometric authentication and use of remote (e.g., web-based)
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`applications requires trust between the user and the service provider. The user must trust that the
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`service provider can and will protect personal data and that the service provider will not abuse
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`1
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`Patent Owner Exhibit 2006, Page 4 of 20
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`such data. Utilizing online services—including social media, office, productivity, financial, travel,
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`and other similar services—requires the user to trust that the service provider will safeguard the
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`personally identifying information that a user provides using the service. Such information could
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`include biometric data used, for example, as a means of verifying an authorized user’s identity.
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`Safeguarding and limiting the information that is shared with multiple service providers is a
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`necessity. The inventions of the patents-in-suit address these issues by providing ways to use
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`biometric information securely to access and/or utilize private, sensitive information.
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`Family A is directed to inventions ensuring biometric data privacy while enabling
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`biometric authentication. The claimed inventions improve on the prior art by providing for
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`multiple levels of authentication, such that a user is verified as properly in possession of a
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`biometric access instrumentality, and also biometrically verified as authorized to access sensitive
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`and/or secure resources. Family B is directed to inventions that improve the capabilities and
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`flexible arrangements of multiple devices and instrumentalities that are used to provide means of
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`authorized access to access sensitive and/or secure resources while retaining security.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`Proxense submits that a person of ordinary skill in the art would have a bachelor’s degree
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`in computer or electrical engineering (or an equivalent degree) with at least three years of
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`experience in the field of encryption and security (or an equivalent). This level of skill is
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`approximate, and more experience would compensate for less formal education, and vice versa.
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`IV. AGREED CONSTRUCTIONS
`
`The parties have agreed to the following constructions from the Court’s Claim
`
`Construction Order in Proxense v. Samsung:
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`2
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`Patent Owner Exhibit 2006, Page 5 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 6 of 20
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`Term
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`Patents
`
`Agreed Construction
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`“ID code”/“device ID code”
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`“hybrid device”
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`730 Patent, claims 1, 3, 15;
`954 Patent, claims 1, 3;
`905 Patent, claims 1, 2
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`042 Patent, claim 10;
`289 Patent, claims 14, 16
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`A unique code identifying a
`device
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`A device comprising an
`integrated personal digital
`key (PDK) and an integrated
`receiver-decoder circuit
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`V.
`
`CONSTRUCTION OF DISPUTED TERMS
`
`A.
`
`Family A
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`1.
`
`“access message” (730:1, 15; 954, 1; 905:1)
`Proxense’s Construction
`Microsoft’s Construction
`Adopts the Court’s Construction in Proxense v. Samsung:
`a message enabling access
`
`A signal or notification enabling or announcing access
`The Court has already construed the term “access message” in Proxense v. Samsung,
`
`holding that the term “can have the effect of moving the user to the next step of providing
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`information (like providing the user’s age), which is more than just enabling access.” Proxense
`
`v. Samsung, ECF. No. 149 at 21 (emphasis added). The Court further agreed with Proxense that
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`“‘access message’ is broader than a message that allows access.” Id. (emphasis added).
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`Nevertheless, Microsoft requests that the Court adopt essentially the same, narrow
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`construction the Court previously rejected. In particular, Microsoft requests a construction
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`wherein an access message is limited to a message that enables access to be permitted. But the
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`Court’s prior construction includes an access message that (1) announces that access was permitted
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`and (2) can be a signal or notification. The claim language and specification demonstrated that
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`the broader construction that the Court previously adopted is correct. See id. at 22 (holding that
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`the term “suggests that it can serve to notify the user of access, not just enable access”).
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`Claims “must be construed so as to be consistent with the specification, of which they are
`
`a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc). The specification
`3
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`Patent Owner Exhibit 2006, Page 6 of 20
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`of the Family A patents contains numerous examples that describe an “access message” as a signal
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`or notification that enables access, and that also provide an announcement that access is
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`enabled. Microsoft’s proposed construction, however,
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`improperly excludes
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`the
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`latter
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`embodiments from the claim. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
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`1383 (Fed. Cir. 2008) (“[O]ur court has cautioned against interpreting a claim term in a way that
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`excludes disclosed embodiments, when that term has multiple ordinary meanings consistent with
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`the intrinsic record.”).
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`The claim language itself (“receiving an access message from the agent allowing the user
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`access to an application . . .”) shows that “access message” is broader than a message that simply
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`allows access. The word “allowing” as used in this context can be understood to mean both “causes
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`access to be permitted” and “announces that access is permitted.” The step of receiving a
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`notification that the agent has allowed access then permits the application to move to a next step
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`(e.g., check appropriate age before granting access) or inform a party that access was permitted
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`(e.g., pop up a window to inform a user).
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`The specification discloses several examples of “access message” having an effect other
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`than permitting access. For example, an “access message” that provides an announcement that
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`access is enabled can be an LED (“In one embodiment, LED 130 can also confirm that . . .
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`authentication has completed.”, 730 Patent 3:33-35; 954 Patent 4:26-28; 905 Patent 4:28-30) or a
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`pop-up window (“Response to successful authentication of the key, access is allowed 470 to
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`application. In the slot machine example, a new pop-up window can be spawned to indicate a
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`successful age verification.”, 730 Patent 6:28-31; 954 Patent 7:23-26; 905 Patent 7:28-29). Other
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`embodiments disclose that the “access message” can also be one that leads an element of the
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`system to enable access (e.g., “Authentication module 310 can send a message to application 330,
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`or otherwise allow access to the application, responsive to a successful authentication by trusted
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`4
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`Patent Owner Exhibit 2006, Page 7 of 20
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`key authority 320.”, 730 Patent 5:23-26; 954 Patent 6:15-17; 905 Patent 6:17-19); (“In one
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`embodiment, application module 330 allows access by a user after receiving a message from
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`authentication module 310.”, 730 Patent 5:34-36; 954 Patent 6:29-31; 905 Patent 6:31-33). In
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`another embodiment, access message has the effect of moving to the next step to ask for more
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`information: “If authentication is successful, the trusted key authority sends an access message to
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`the application to allow user access and/or provide additional information from the profile (such
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`as the user’s age).” E.g., 730 Patent 7:18-21.
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`Moreover, “access message” appears in claims 1, 9, and 13 of the 905 Patent where it
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`“indicat[es] that the third-party trusted authority successfully authenticated the ID code.” Claim
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`12 of the 730 Patent recites the steps of receiving an “access message” and allowing access “in
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`response to a positive access message” as entirely separate steps. These examples are most
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`consistent with a construction that the access message can be “indicating” (i.e., announcing) that
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`access is enabled, but can also have an enabling function (as in Proxense’s proposed construction).
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`This Court already found that “language of ‘indicates’ suggests that [the access message] can serve
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`to notify the user of access, not just enable access.” Proxense v. Samsung ECF. No. 149 at 21-22.
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`Microsoft spends much of its briefing on this term ignoring the embodiments described
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`above that show that an access message can announce access, instead pointing only to examples
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`within the Family A Patents that show an access message enabling access. This disregards the
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`context surrounding use of the term, which this Court in Proxense v. Samsung found helpful
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`previously. Id. Microsoft also argues that: (1) the 730 Patent “describes ‘access message’ in only
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`one manner in the entire specification” – enabling access, (2) the statement “[t]he user is allowed
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`access responsive to receipt of an access message from the agent that authenticates the code” made
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`during prosecution somehow excludes announcing access, and (3) Proxense’s proposed
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`construction is illogical, as it calls for “announcing access” without requiring granting access. Op.
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`
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`5
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`Br. at 4-7. None of these arguments prove that the access message does not announce access.
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`First, for reasons already discussed above with respect to the LED, the pop-up window,
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`and an access message being used to move to the next step to ask for more information, the access
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`message is described in more than one manner. In addition to enabling access, it can announce
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`access, “which is more than just enabling access.” Proxense v. Samsung, ECF 149 at 21
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`(emphasis added).
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`Second, the statement “[t]he user is allowed access responsive to receipt of an access
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`message from the agent that authenticates the code” made during prosecution does not exclude
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`“announcing access” from the claimed invention. Microsoft asserts that this statement excludes
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`“announcing access” because “‘announcing access’ was never discussed” in this statement or
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`during prosecution. Op. Br. at 7. However, To disavow or disclaim the full scope of a claim term,
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`the patentee’s statements in the prosecution history must amount to a “clear and unmistakable”
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`surrender. Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009). But the above
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`statement was about one embodiment of the claimed invention. See e.g. Innova/Pure Water, Inc.
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`v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1117 (Fed. Cir. 2004). It was not intended to
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`cover the full scope of the “access message” term – the specification provides the full scope of the
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`term through its several embodiments; not via a single embodiment as Microsoft asserts. Further,
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`this statement does not explicitly exclude “announcing access.” There was no disavowal by
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`Proxense to limit the claim term to only “enabling access.” Moreover, the specification of the
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`Family A patents is clear that announcing access is within the scope of the term. Therefore, this
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`statement made during prosecution does not carry more weight that the Family A specification and
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`does not limit the term. Phillips, 415 F.3d at 1318 (“because the prosecution history represents an
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`ongoing negotiation between the PTO and the applicant, rather than the final product of that
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`negotiation, it often lacks the clarity of the specification and thus is less useful for claim
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`6
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`Patent Owner Exhibit 2006, Page 9 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 10 of 20
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`construction purposes.”); see also Athletic Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir.
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`1996) (ambiguous prosecution history may be “unhelpful as an interpretive resource”).
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`Third, Microsoft calls Proxense’s proposed construction, as previously adopted by the
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`Court, “illogical” as:
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`[t]here is no alternate signal that Proxense proposes as the message enabling access,
`other than “access message.” So if, as Proxense proposes, “access message” can be
`either a “signal or notification enabling access” or a “signal or notification
`announcing access,” then, in instances where “access message” acts as an
`announcement, there would be no signal that enables access—making that
`announcement incorrect.
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`Op. Br. at 6 (emphasis in original). Microsoft argues that if there is an access message that
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`announces access, there cannot be a separate access message that enables access. Nothing within
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`the Family A claims supports this view. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1248 (Fed. Cir. 1998) (“[t]he claim construction inquiry . . . begins and ends in all cases
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`with the actual words of the claim.”). There is no claim limitation or teaching within the
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`specification that limits the number of access messages sent or received. There is no explicit
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`disclosure that states that if there is an access message that enables access there cannot be another
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`access message that announces access or vice versa. The mere fact that an action is not required
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`by a claim does not mean that the action is expressly excluded from the environment within which
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`the claimed invention operates. INVT SPE LLC v. Int'l Trade Comm'n, 46 F.4th 1361, 1374-75
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`(Fed. Cir. 2022). Further, there is nothing requiring that an access message for enabling access
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`must be sent if an access message for announcing is sent or vice versa. No such disclosure exists
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`in the Family A patents. Proxense’s proposed construction allows for either type (enabling or
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`announcing access) which is what the claim requires and is appropriate based on the disclosures
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`within the Family A patents.
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`Furthermore, “access message” being construed as a “signal or notification” is appropriate
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`based on the disclosure of the Family A Patents. As disclosed in the specification, an LED can be
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`7
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`a signal when illuminated to “confirm that . . . authentication has completed.” 730 Patent 3:33-
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`35; 954 Patent 4:26-28; 905 Patent 4:28-30. Also, a pop-up window can be a notification “to
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`indicate a successful age verification.” 730 Patent 6:28-31; 954 Patent 7:23-26; 905 Patent 7:28-
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`29. Microsoft ignores these embodiments, improperly concluding there is no support for this
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`construction because the term “notification” does not appear in the Family A patents while
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`attempting to create a limitation that the term “signal” must be used to describe the access message.
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`Op. Br. At 7. However, Microsoft’s added limitations and simple word search are insufficient to
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`support their assertions. A claim term is construed according to its ordinary and accustomed
`
`meaning as understood by one of ordinary skill in the art at the time of the invention in the context
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`of the patent and intrinsic record. Phillips, 415 F.3d at 1312–14. Here, one of ordinary skill in the
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`art would understand that an access message comprises a signal or notification based on the
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`disclosure within the Family A patents.
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`In short, Microsoft’s proposed construction should be rejected for the same reasons that it
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`was rejected when Samsung presented it in Proxense v. Samsung. Microsoft provides no new
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`credible evidence or arguments that could disturb the Court’s previous construction. The Court
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`should thus adopt its prior construction of “access message” here.
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`2.
`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (730:5)
`Proxense’s Construction
`Adopts the Court’s Construction in Proxense v. Samsung:
`
`No construction needed, plain and ordinary meaning
`Microsoft again makes the same argument that this Court rejected in Proxense v. Samsung.
`
`Microsoft’s Construction
`Invalid under §112 ¶4
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`See Proxense v. Samsung, ECF 149 at 22. Dependent claim 5 is not invalid; it properly reduces the
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`number of possible fingerprints from those intrinsic to the “palm print” or “hand geometry” of
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`independent claim 1.
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`Claim 1 of the 730 Patent describes multiple categories of “biometric data” as “selected
`8
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`Patent Owner Exhibit 2006, Page 11 of 20
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`from a group consisting of a palm print, a retinal scan, an iris scan, a hand geometry, a facial
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`recognition, a signature recognition and a voice recognition.” In its briefing, Microsoft raises the
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`same arguments the Court already considered and rejected, asserting that Claim 5 “broaden[s] []
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`the Markush group in claim 1 to include the term ‘fingerprint[.]’” Op. Br. at 10. But as the Court
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`held in Proxense v. Samsung, Claim 5 of the 730 Patent:
`
`properly narrows the scope of “biometric data” to a single “fingerprint.” The plain
`and ordinary meaning of “palm print” would be understood to include some
`combination of prints from the heel and/or flat of the hand, with multiple
`fingerprints and/or a thumb print (see, e.g., 730 Patent 3:4-11, expanding exemplary
`biometric data from “fingerprint” to additional metrics like an entire “palm print”;
`id. at 3:29-33, indicating that biometric data capture could include thumb or other
`fingerprints). Id. at 24 (emphasis added).
`
`There is no need for the Court to hold any differently in this case or to re-construe this
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`term. Microsoft has not shown any evidence—intrinsic or extrinsic—that suggests that a person
`
`of ordinary skill in the art would not understand “‘palm print’ . . . to include some combination of
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`prints from the heel and/or flat of the hand, with multiple fingerprints and/or a thumb print.” Id.
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`Microsoft simply just asserts that to be true. Microsoft’s assertion is wrong. Its argument rests on
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`the same “inaccurate premises” that Samsung raised in Proxense v. Samsung, namely, that “a
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`person of ordinary skill in the art would not understand that the plain and ordinary meaning of
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`‘palm print’ includes multiple fingerprints and/or a thumb print,” and that “the Examiner’s
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`Amendment that added the Markush group to claim 1 . . . caused dependent claim 5 . . . to become
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`indefinite.” Proxense v. Samsung, ECF 149 at 24. As the Court already held—and as Proxense re-
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`submits here in response to Microsoft’s repeat of this argument—“[b]oth premises collapse under
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`the well-established presumption ‘that an examiner would not introduce an indefinite term into a
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`claim when he/she chooses to amend the claim for the very purpose of putting the application in a
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`condition for allowance.’” Id. (citing Tinnus Enterprises, LLC v. Telebrands Corp., 733 F. App'x
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`1011, 1020 (Fed. Cir. 2018)).
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`Patent Owner Exhibit 2006, Page 12 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 13 of 20
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`The incorrectness of Microsoft’s position is further confirmed by the Federal Bureau of
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`Investigation (“FBI”)’s definition of “palm print,” which confirms that the plain and ordinary
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`meaning of the term is one of the “area extending from the top of the wrist bracelet to the tips of
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`the fingers” and provides a figure illustrating the same. Ex. A at 2. Proxense’s construction is
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`consistent with the FBI’s definition of palm print as well as the Court’s prior rulings. Microsoft’s
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`arguments fail to challenge the legitimacy of the Court’s prior determination as Claim 5 properly
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`narrows the scope of the “biometric data” term and does not broaden it.
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`Even if the claims were somehow ambiguous, despite repeated disclosures of a
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`“fingerprint” as an exemplary type of “biometric data” in the specification, the term should be
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`construed to preserve validity. See Phillips, 415 F.3d at 1327. A “fingerprint” is one example of
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`the “biometric” information, and thus dependent claim 5 properly limits the scope of claim 1. The
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`scope of claim 5 is readily understood by a POSITA and should not be found invalid.
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`B.
`
`Family B
`
`1.
`“personal digital key” (042:10)
`Proxense’s Construction
`Adopts the Court’s Construction in Proxense v. Samsung:
`
`An operably connected collection of elements including
`an antenna and a transceiver for communicating with a
`RDC and a controller and memory for storing information
`particular to a user.
`
`Microsoft’s Construction
`a device that includes an
`antenna, a transceiver for
`communicating with the RDC
`and a controller and memory for
`storing information particular to
`a user
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`The parties’ essential dispute is whether a “personal digital key” must be a stand-alone,
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`single-purpose, monolithic device (as Microsoft argues) or not (as Proxense argues). Microsoft
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`again presents an identical construction that Samsung presented in Proxense v. Samsung, and
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`which this Court rejected.1 Proxense v. Samsung, ECF 149 at 30-31. Proxense’s proposed
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`1 The “personal digital key” term was construed with respect to U.S. Patent Nos. 9,049,188 and 9,235,700
`in Proxense v. Samsung, which both derive from continuation applications of the 042 Patent and share the
`same specification as the Family B Patents.
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`Patent Owner Exhibit 2006, Page 13 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 14 of 20
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`construction properly reflects the patent’s recitation of the elements comprising a personal digital
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`key (“PDK”), which can be an operably connected collection of elements integrated into a hybrid
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`device, such as a cell phone.
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`The shared specification of Family B does not constrain a “personal digital key” to a series
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`of physically connected elements in a single, stand-alone device. A “personal digital key” must
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`have, at minimum, “an antenna and a transceiver for communicating with a RDC (not shown) and
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`a controller and memory for storing information particular to a user.” 042 Patent 13:46-49. The
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`specification also teaches that a PDK can be a “standalone . . . physical device or can be integrated
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`into commonly carried items . . . such as a cell phone.” 042 Patent 5:44-47 (emphasis added).
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`For example, the specification explains that the function of a PDK can be implemented in a cell
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`phone where a “hybrid device” has the form factor of a SIM card, and “is merely inserted in place
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`of a conventional SIM card to provide this functionality.” 042 Patent 14:24-32. In another
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`example, the PDK function can become part of a cell phone by connecting via “internal integration
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`or an access port,” such that the transceiver and antenna of the PDK are again those of the cell
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`phone into which it is integrated (“the PDK function becomes part of the cell phone” and “the
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`PDK enabled phone uses the back channel to perform other validation/update functions via the
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`cellular infrastructure.”). 042 Patent 15:40-52. As this Court recognized in Proxense v. Samsung,
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`in such embodiments where the hybrid device/PDK function is integrated into a cell phone (e.g.,
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`with a SIM card), “the transceiver and/or antenna of the PDK is provided by the cell phone, and
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`the memory and controller of the PDK are provided by the SIM card.” Proxense v. Samsung, ECF
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`149 at 30. This supports Proxense’s construction and condemns Microsoft’s proposed construction
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`to the extent Microsoft requires the PDK be a stand-alone, monolithic device.
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`Microsoft also mistakenly argues that the PDK’s alleged abilities of (1) portability, (2)
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`proximity/location tracking, and (3) being able to operate with or without wireless connectivity
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`Patent Owner Exhibit 2006, Page 14 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 15 of 20
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`somehow confirms that the “PDK is a singular device.” Id. at 13-15. However, these abilities do
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`not prove the PDK is limited to a monolithic, stand-alone device. The 042 Patent teaches the PDK
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`being a collection of elements integrated within a cell phone. 042 Patent 14:24-32; 15:40-52.
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`Microsoft appears to agree when citing, with emphasis, to the 042 Patent disclosure that “[t]he
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`PDK 102 can be standalone as a portable, physical device or can be integrated into commonly
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`carried items.” Op. Br. at 13 (emphasis in original). Thus, a PDK can simultaneously be a
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`collection of elements integrated within a cell phone and arguably have the abilities of (1)
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`portability, (2) proximity/location tracking, and (3) being able to operate with or without wireless
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`connectivity. Moreover, these alleged abilities are not required by the claims and the specification
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`does not limit them to PDK’s that are only stand-alone devices. Microsoft is attempting to
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`selectively import partial disclosures in some embodiments to improperly limit the scope of the
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`claims, which courts have prohibited. See Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
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`1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
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`1571 (Fed. Cir. 1988)) (“‘[a]lthough the specification may aid the court in interpreting the meaning
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`of disputed claim language, particular embodiments and examples appearing in the specification
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`will not generally be read into the claims’”).
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`In sum, Microsoft presents a construction for “personal digital key” that is identical to the
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`one this Court rejected in Proxense v. Samsung but does not provide any new credible evidence or
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`argument that could justify disturbing the Court’s prior construction. Accordingly, Proxense
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`respectfully requests that the Court adopt its prior construction from Proxense v. Samsung.
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`2.
`“receiver-decoder circuit” (042:10; 289:14, 16)
`Proxense’s Construction
`Microsoft’s Construction
`Adopts the Court’s Construction in Proxense v. Samsung:
`a circuit that wirelessly receives
`encrypted data from the PDK and
`decodes it
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` A
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` component or collection of components, capable of
`wirelessly receiving data in an encrypted format and
`decoding the encrypted data for processing.
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`Patent Owner Exhibit 2006, Page 15 of 20
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`Case 6:23-cv-00319-ADA Document 42 Filed 11/27/23 Page 16 of 20
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`Microsoft, again, seeks to re-construe a term the Court already construed in Proxense v.
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`Samsung. Here, the parties’ dispute whether the term “receiver decoder circuit,” or “RDC” can
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`comprise a collection of components (as proposed by Proxense’s and adopted in the Court’s prior
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`construction), or whether it is restricted t