Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 1 of 21
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`MICROSOFT CORPORATION,
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`v.
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`Defendant.
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`MICROSOFT CORPORATION’S REPLY CLAIM CONSTRUCTION BRIEF
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`PROXENSE, LLC,
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`Plaintiff,
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`Case No. 6:23-cv-00319-ADA
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`Patent Owner Exhibit 2007, Page 1 of 21
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`I. 
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`II. 
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 2 of 21
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`TABLE OF CONTENTS
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`Page(s)
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`SUMMARY OF REPLY .................................................................................................... 1 
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`DISPUTED CLAIM TERMS ............................................................................................. 2 
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`A. 
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`B. 
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`C. 
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`D. 
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`“access message” (’730 Patent, claims 1, 15; ’954 Patent, claim 1; ’905 Patent,
`claim 1) ................................................................................................................... 2 
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`“wherein the biometric data and the scan data are both based on a fingerprint scan
`by the user” (’730 Patent, claim 5) ......................................................................... 5 
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`“personal digital key” or “PDK” (’042 Patent, claim 10) ..................................... 11 
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`“receiver-decoder circuit” or “RDC” (’042 Patent, claim 10; ’289 Patent, claims
`14 and 16) ............................................................................................................. 14 
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`III. 
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`CONCLUSION ................................................................................................................. 15 
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`i
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`Patent Owner Exhibit 2007, Page 2 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 3 of 21
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Camreta v. Greene,
`131 S. Ct. 2020 (2011) ...............................................................................................................1
`
`Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C.,
`482 F.3d 1347, 82 U.S.P.Q.2d 1293 (Fed. Cir. 2007), cert. denied, 128 S. Ct.
`648 (U.S. 2007) ........................................................................................................................14
`
`Chore-Time Equipment, Inc. v. Cumberland Corp.,
`713 F.2d 774, 218 U.S.P.Q. 673 (Fed. Cir. 1983) .....................................................................8
`
`IGT v. Bally Gaming Intern., Inc.,
`659 F.3d 1109 (Fed. Cir. 2011)..................................................................................................1
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`Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.,
`831 F.3d 1350 (Fed. Cir. 2016)..................................................................................................8
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`Pfizer, Inc. v. Ranbaxy Lab’ys Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006)..................................................................................................8
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`Proxense v. Samsung,
`Dkt. No. 1 ...................................................................................................................................1
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`Proxense, LLC v. Samsung Electronics Co., Ltd. et al.,
`6:21-cv-00210-ADA (W.D. Tex.) .............................................................................................6
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`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)................................................................................................14
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`Statutes
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`35 U.S.C. § 112, ¶ 4 ...............................................................................................................6, 9, 11
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`Other Authorities
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`37 C.F.R. 1.312 ..........................................................................................................................9, 10
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`ii
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`Patent Owner Exhibit 2007, Page 3 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 4 of 21
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`TABLE OF EXHIBITS
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`Description
`Ex. No.
`2023-10-02 Email from counsel for Proxense regarding claim construction
`Ex. A
`Excerpts from the file history for U.S. Patent No. 8,352,730
`Ex. B
`Excerpts from the file history for U.S. Patent No. 8,886,954
`Ex. C
`Ex. D Excerpts from The Concise Oxford American Thesaurus
`Ex. E
`Excerpts from The New Oxford American Dictionary, 2d ed.
`Ex. F
`Excerpts from Collins English Dictionary, 7th ed.
`Ex. G Excerpts from Facility Manager’s Guide to Security
`Ex. L
`Excerpts from the file history of U.S. Patent No. 8,352,730 (Appl. No. 11/314,199)
`Ex. H Excerpts from The American Heritage Dictionary of the English Language, 4th ed.
`Ex. I
`Excerpts from Merriam-Webster’s Collegiate Dictionary, 11th ed.
`Ex. J
`Excerpts from Bloomsbury English Dictionary
`Ex. K Excerpts from Random House Webster’s College Dictionary
`Ex. L
`Excerpts from the File History of U.S. Patent No. 8,352,730
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`iii
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`Patent Owner Exhibit 2007, Page 4 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 5 of 21
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`I.
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`SUMMARY OF REPLY
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`Instead of rebutting the intrinsic evidence that is counter to its proposed construction,
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`Proxense asks the Court to ignore the plain language in the Asserted Patents, plain English in
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`general, and rely on new extrinsic evidence in support of its claim construction positions. The
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`crux of Proxense’s argument is that the Court already construed the terms (or related terms) at
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`issue in another case where Microsoft was not a party, so the issues are resolved. But the prior
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`constructions are not binding on this Court and cannot override the intrinsic record.
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`Clinging dogmatically to prior constructions in Proxense-Samsung, Proxense fails to
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`account for the significant distinctions between Proxense-Samsung and this matter. The asserted
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`patents and claims are not identical, nor are the evidence and argument presented. Indeed, even
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`Proxense acknowledges that the “accused infringing technologies in the two cases are different.”
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`Dkt. No. 25 at 20 n.7; Dkt. No. 35 at 6. Microsoft’s proposed constructions for two disputed terms
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`also differ from those proposed by Samsung. Further, in Proxense-Samsung, Proxense accused
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`Samsung phones and Samsung Pay, a mobile payment technology unique to Samsung. See
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`Proxense v. Samsung, Dkt. No. 1 ¶ 40, Dkt. No. 142 at 3 (“Proxense alleges that the Samsung Pay
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`mobile payment software on Samsung smartphones directly infringes…”); Ex. 34. On the other
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`hand, this case does not involve any mobile phone or payment technology. Instead, Proxense
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`vaguely accuses a Microsoft “architecture.” Lastly, prior constructions from Proxense-Samsung
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`are not binding on this Court. See Camreta v. Greene, 131 S. Ct. 2020, 2033 n.7 (2011) (“A
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`decision of a federal district court judge is not binding precedent in either a different judicial
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`district, the same judicial district, or even upon the same judge in a different case.”); IGT v. Bally
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`Gaming Intern., Inc., 659 F.3d 1109, 1117 n.1 (Fed. Cir. 2011) (noting that a prior district court’s
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`construction of claim term was not binding). And nothing prevents this Court from reconsidering
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`its prior constructions, especially when, as here, a new party offers new arguments and evidence.
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`1
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`Patent Owner Exhibit 2007, Page 5 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 6 of 21
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`II.
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`DISPUTED CLAIM TERMS
`A.
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`“access message” (’730 Patent, claims 1, 15; ’954 Patent, claim 1; ’905
`Patent, claim 1)
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`Microsoft’s Construction
`“a message enabling access”
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`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order:
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`“A signal or notification enabling or
`announcing access”
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`Proxense does not deny “access message” is “a message enabling access,” as Microsoft
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`proposes and the record supports. See Microsoft Opening Brief at 4–7. The main dispute arises
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`from Proxense’s attempt to broaden the term to add an undisclosed alternative “announcing”
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`function onto “access message,” which is unsupported by the intrinsic record and contradicts plain
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`English. The term “message” (alone) is not the issue.1 The record simply does not support tying
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`the term “access message” to the singular function of announcing access.
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`Proxense’s proposed construction conflicts with the patents’ disclosures, starting with the
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`claim language. It argues that “access message” can enable access or announce access. But each
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`disputed claim recites “access message” only once. See ’730 Patent at claims 1, 15; ’954 Patent
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`at claim 1; ’905 Patent at claim 1. Logically, if “access message” can alternatively enable or
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`announce access, as Proxense contends, then in instances where it performs the announcing
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`function, the claims are left without anything to perform the enabling function—completely
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`undermining the claim language. In an attempt to refute this, Proxense argues:
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`1 Similarly, “notification” does not belong in a proper construction of “access message.” As
`explain in this section, “access message” does not announce access, it enables it. And while a
`message may enable access, a “notification” does not—it just provides notice. Hence, for the
`reasons “announcing” is not part of a proper construction of “access message,” “notification” is
`also improper.
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`2
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`Patent Owner Exhibit 2007, Page 6 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 7 of 21
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`There is no claim limitation or teaching within the specification that limits the
`number of access messages sent or received. There is no explicit disclosure that
`states that if there is an access message that enables access there cannot be another
`access message that announces access or vice versa.
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`Proxense Response at 7.2 This is a misdirection and incorrect. The issue is what, exactly, the
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`access message is. Every claim at issue puts “an” in front of “access message.” See ’730 Patent
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`at claims 1, 15; ’954 Patent at claim 1; ’905 Patent at claim 1. And the specifications do not
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`disclose sending multiple access messages for the purposes identified by Proxense. In fact, the
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`specification confirms that there is only one “access message” in each disputed claim: the one
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`enabling access. See, e.g., ’730 Patent at 7:18–23 (describing “an access message” and referring
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`to it again as “the message”).
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`Proxense also argues, without support, that “allowing,” which appears elsewhere in the
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`claim, can mean “announc[ing] that access is permitted.” Proxense Response at 4; see also, e.g.,
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`’730 Patent at claim 1 (“receiving an access message from the agent allowing the user access to
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`an application”). First, this is not a term identified for construction. Second, “allowing” is the
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`functional result of receiving the access message. Third, the term “allowing” does not equate to
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`“announcing” under any fair reading.
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`In fact, “allowing” is a synonym of “enabling” and unrelated to “announcing.” Compare
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`Ex. D (Concise Oxford American Thesaurus)3 at 27 (listing synonyms for “allow,” which includes
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`“enable”) and id. at 259 (listing synonyms for “enable,” which includes “allow”) with id. at 33
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`(listing synonyms for “announce,” the entire list of which is: “Make Public, make known, report,
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`declare, divulge, state, give out, notify, publicize, broadcast, publish, advertise, circulate, proclaim,
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`2 All emphases in quoted language have been added, unless otherwise indicated.
`3 Proxense’s response injects an unsupported construction for “allowing.” To rebut, Microsoft
`responds with evidence to demonstrate that non-patent texts support Microsoft’s constructions
`(although the intrinsic evidence should be sufficient for Microsoft’s constructions).
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`3
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`Patent Owner Exhibit 2007, Page 7 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 8 of 21
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`blazon”). In contrast, the meaning of “announce,” a term absent from the terms for construction
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`and intrinsic evidence, means: “make a public and typically formal declaration about a fact,
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`occurrence, or intention.” Ex. E (The New Oxford American Dictionary, 2d ed.) at 62; see also
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`Ex. F (Collins English Dictionary, 7th ed.) at 65 (defining “announce” as “1 . . . to make known
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`publicly; proclaim”). Proxense does not point to any disclosure in any of the Biometric
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`Authentication Patents that equate “access message” with such function (i.e., make public/known
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`that access was granted).
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`Other portions of the specification Proxense cites also do not equate “access message” to
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`any “announcing” function. See Proxense Response at 4–5. At best, they suggest “access
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`message” can be followed by the provision of user data, which does not announce access, but
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`rather provides some data after access is granted. Proxense argues that “an LED can be a signal”
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`and “a pop-up window can be a notification.” Proxense Response at 7–8 (citing ’730 Patent at
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`3:33–35; 6:28–31; ’954 Patent at 4:26–28, 7:23–26; ’905 Patent at 4:28–30, 7:28–29). But these
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`disclosures do not relate to “access message” and contradicts the claim language surrounding
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`“access message,” which must be received from the third-party agent/authority. See ’730 Patent
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`at claims 1 and 15 (“receiving an access message from the agent”); ’954 claim 1 (“receiving, at
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`an application, an access message from the trusted authority”); ’905 Patent at claim 1 (“responsive
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`to receiving an access message from the third party trusted authority”). In contrast, the “LED”
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`and “pop-up window” are not received from a third party, so they cannot correspond to the claimed
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`“access message.” Id.
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`Proxense’s argument implying that “access message” only leads to “the next step to
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`ask[ing] for more information” is also unsupported. See Proxense Response at 5. Proxense cites
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`to the ’730 Patent’s statement: “If authentication is successful, the trusted key authority sends an
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`4
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`Patent Owner Exhibit 2007, Page 8 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 9 of 21
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`access message to the application to allow user access and/or provide additional information from
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`the profile (such as the user’s age).” Proxense Response at 5 (citing ’730 Patent at 7:18–21).
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`Where the authority “sends an access message to the application to . . . provide additional
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`information,” this information, such as “the user’s age,” does not announce access (it does not
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`inform anyone that access was granted). Instead, the user’s age is a value for the application (such
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`as a slot machine) to determine whether to grant access. See, e.g., ’730 Patent at 2:6–14 (“[T]he
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`trusted key authority can store a profile associated with the biometric key having the code. The
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`profile can contain user information such as name, age, account numbers, preferences, and the like.
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`In addition, the profile can describe the status of the key, identify the trusted key authority, and/or
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`contain other information. The profile can also be sent to the authentication module for use by the
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`application (e.g., an age of user sent to a casino machine).”); id. at 6:32–53 (describing
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`establishment of a profile). The claim language (“receiving an access message . . . allowing the
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`user access”) describes the situation where the message itself from the agent enables access, not
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`some other component.
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`Accordingly, there is no reason to add the alternative, undisclosed “announcing” function
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`to the term. “Access message” means “a message enabling access.”
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`B.
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`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (’730 Patent, claim 5)
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`Microsoft’s Construction
`Invalid under 112 ¶ 4
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`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order:
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`No construction needed, plain and ordinary
`meaning.
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`Claim 5 is invalid. “Fingerprint” is absent from the list of biometric data listed in the closed
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`
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`Markush group in claim 1 of the ’730 Patent, but dependent claim 5 adds a new member
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`5
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`Patent Owner Exhibit 2007, Page 9 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 10 of 21
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`“fingerprint.” Thus, claim 5 is invalid under 35 U.S.C. § 112, ¶ 4 because it broadens the closed
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`Markush grouping from claim 1. See Microsoft Opening Brief at 7–10.
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`Proxense does not dispute that claim 1’s list is a closed Markush group. See Proxense
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`Response at 8–10. Instead, Proxense argues that “fingerprint” is a subset of claim 1’s “palm print”
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`or “hand geometry.”4 “Fingerprint” is not a subset of either “palm print” or “hand geometry”—
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`these are three distinct and non-overlapping biometric measures—indeed this argument suggests
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`deeper indefiniteness issues. A finger is not a palm, nor is it part of the palm, and a fingerprint is
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`not a part of a palm print or hand geometry—this is basic anatomy and common sense.
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`The Asserted Patents repeatedly and consistently distinguish “fingerprint” from “palm
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`print” and “hand geometry,” among other biometric measures. Proxense does not address the fact
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`that the Asserted Patents clearly and repeatedly distinguish among fingerprint, palm print, and
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`hand geometry as different kinds of biometric verification, data, and scanners. See, e.g., ’730
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`Patent at 3:4–11 (“Although the embodiments below are described using the example of biometric
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`verification using a fingerprint, other embodiments . . . can include a palm print, a retinal scan,
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`an iris scan, hand geometry recognition, facial recognition, signature recognition, or voice
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`recognition.”); ’954 Patent at 3:58–62 (same); ’905 Patent at 3:60–64 (same); ’954 Patent at claim
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`5 (“5. The method of claim 1, wherein the biometric data includes one or more of a fingerprint,
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`palm print, a retinal scan, an iris scan, a hand geometry, a facial recognition, a signature
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`recognition and a voice recognition.”); id. at claim 26 (“26. The system of claim 22, wherein the
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`4 Proxense’s argument for this limitation, like all others in its response brief, relies heavily on the
`Court’s prior construction. There, the Court stated that “palm print” may include “fingerprint.”
`Proxense, LLC v. Samsung Electronics Co., Ltd. et al., 6:21-cv-00210-ADA (W.D. Tex.), ECF
`149 (“Proxense-Samsung Markman Order”) at 24. Here, Proxense hedges and adds that
`“fingerprint” may also be captured under “hand geometry,” although Proxense merely mentions
`this alternate theory without explanation or citation. See Proxense Response at 8–10. As explained
`in this section, neither theory supports Proxense’s construction.
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`6
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`Patent Owner Exhibit 2007, Page 10 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 11 of 21
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`biometric data includes one or more of a fingerprint, palm print, a retinal scan, an iris scan, a
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`hand geometry, a facial recognition, a signature recognition and a voice recognition.”); ’905 Patent
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`at claim 4 (“4. The method of claim 1, wherein the biometric data includes data from one or more
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`of a fingerprint, palm print, a retinal scan, an iris scan, a hand geometry, a facial recognition, a
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`signature recognition and a voice recognition.”); id. at claim 16 (“16. The system of claim 11,
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`wherein the biometric data includes data based on one or more of a fingerprint, palm print, a
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`retinal scan, an iris scan, a hand geometry, a facial recognition, a signature recognition and a voice
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`recognition.”);’042 Patent at 4:7–13 (“The biometric input 104 comprises a representation of
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`physical or behavioral characteristics unique to the individual. For example, the biometric
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`input 104 can include a fingerprint, a palm print, a retinal scan, an iris scan, a photograph, a
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`signature, a voice sample or any other biometric information such as DNA, RNA or their
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`derivatives that can uniquely identify the individual.”); ’289 Patent at 4:38–45 (same); ’960 Patent
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`at 4:45–52 (same); ’042 Patent at 7:25–29 (“In one embodiment, the biometric reader 302 is a
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`fingerprint scanner. Other embodiments of biometric readers 302 include retinal scanners, iris
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`scanners, facial scanner, palm scanners, DNA/RNA analyzers, signature analyzers, cameras,
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`microphones, and voice analyzers.”); ’289 Patent at 7:60–64 (same); ’960 Patent at 7:66–8:4
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`(same). At no point do the Asserted Patents categorize “fingerprint” as a subset of “palm print”
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`or “hand geometry.” Nor would it make sense to do so.
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`Other extrinsic evidence relating to biometric authentication also clearly distinguish
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`“fingerprint,” “palm print,” and “hand geometry.” See, e.g., Ex. G (Facility Manager’s Guide to
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`Security) at 148–49 (describing “Biometric Credential Verification,” contrasting fingerprint from
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`“palm print” and “hand geometry” (which it collectively calls “Palm or Hand Geometry”), stating:
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`7
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`Patent Owner Exhibit 2007, Page 11 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 12 of 21
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`“Fingerprint scanners are reliable but measure more information than Palm Geometry and hence
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`take longer when comparing a credential to a database.”).
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`To support its position that “palm print” includes “fingerprint,” Proxense argues that
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`“palm” can include fingers. See Proxense Response at 10 (arguing that palm means “area
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`extending from the top of the wrist bracelet to the tips of the fingers”). This is meritless. A palm
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`does not include fingers—that would be a hand. Dictionaries confirm the common sense
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`understanding that a palm does not include figures. See, e.g., Ex. E (The New Oxford American
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`Dictionary, 2d ed.) at 1226 (defining “palm” as “the inner surface of the hand between the wrist
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`and fingers”); Exs. F, H–K (other dictionaries defining “palm” to in ways that exclude fingers).
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`Although Proxense relies on the presumption that an examiner would not introduce an
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`indefinite term, Proxense Response at 9, this is a rebuttable presumption. “Th[is] presumption is,
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`like all presumptions in law, a starting place and a procedural device assigning the burden of
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`proof.” Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 780, 218 U.S.P.Q. 673
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`(Fed. Cir. 1983). When a claim, like claim 5, is invalid on its face, this presumption cannot salvage
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`it. See, e.g., Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350,
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`1362 (Fed. Cir. 2016) (holding a dependent claim invalid, finding that the Markush group of
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`elements in the independent claim for plastic cling wrap film layers (selected from linear low
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`density, very low density, ultra low density, and metallocene-catalyzed linear low density
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`polyethylene resins) was closed to other types of resins, like the one recited in the dependent
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`claim); Pfizer, Inc. v. Ranbaxy Lab’ys Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (“Although the
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`district court was reluctant to find the fourth paragraph of § 112 to be an invalidating provision,
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`doing so . . . is consistent with the overall statutory scheme that requires applicants to satisfy
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`certain requirements before obtaining a patent.”). Obviously, this presumption cannot mean that
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`8
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`Patent Owner Exhibit 2007, Page 12 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 13 of 21
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`every issued claim is immune to invalidation under § 112, ¶ 4. Congress wrote § 112, ¶ 4 precisely
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`for situations like this. That the examiner made the revision does not immunize it from ¶ 4.
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`The presumption is further weakened by the prosecution history. The original application
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`was filed with 21 claims on December 20, 2005. Ex. L at 2–5 (2005-12-20 Initial Claims). On
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`February 25, 2010, Proxense’s attorney added a new dependent claim 22, which read: “wherein
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`the biometric data comprises one from a group of a palm print, a retinal scan, an iris scan, a hand
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`geometry, a facial recognition, a signature recognition and a voice recognition.” Ex. L at 13 (2010-
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`02-25 Amendment B and Response). Like dependent claim 7 (which became asserted claim 5),
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`claim 22 depended on claim 1. On August 31, 2012, the Examiner changed the transition phrase
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`to close the group:
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`Ex. L at 26 (2012-08-31 Notice of Allowance and Fee(s) Due) (highlight added). And consistent
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`with MPEP 1302.04, Proxense’s attorney was asked whether they approved of the Examiner’s
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`Amendment and was reminded of another opportunity to amend the claims under 37 C.F.R. 1.312.
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`9
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`Patent Owner Exhibit 2007, Page 13 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 14 of 21
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`Id. Proxense could have, and chose not to, amend the new claim language before it simply paid
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`the issue fee.
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`Proxense also argues that a new cited document it supposedly found on the FBI’s website
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`supports its argument that “palm” includes fingers. Proxense Response at 10. This argument is
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`also without merit. First, Proxense does not explain the supposed relevance of this random post-
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`2013 FBI document here. Yet even the excerpt that Proxense cites distinguishes “palm print” from
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`“fingerprint.” It states: “[w]hen submitting to the FBI, best practices for this collection of prints
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`are defined as the equivalent of one FBI Standard Fingerprint Card FD-249 or FD-258 and two
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`FBI Standard Palm Print Cards FD-884 per subject.” Dkt. No. 42-2 at 4. If, as Proxense contends,
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`a palm print already captures fingerprints, why would two palm prints (the supposedly more
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`comprehensive scan of a hand) be equivalent to only one fingerprint? Clearly, even Proxense’s
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`extrinsic evidence recognizes that palm prints and fingerprints measure different things.
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`But Proxense does not just ignore evidence, it misrepresents them too. Specifically, it
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`misrepresents this Court’s order from Proxense-Samsung, presenting Proxense’s arguments as if
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`it was the Court’s opinion. In its Responsive brief, Proxense states that the “Court held” as
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`highlighted:
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`10
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`Patent Owner Exhibit 2007, Page 14 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 15 of 21
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`Proxense Response at 9 (highlight added). But this quote comes from the Court’s description of
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`Proxense’s argument, not the Court’s holding (red highlight shows the words Proxense omitted,
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`yellow highlight shows the words Proxense kept):
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`Proxense-Samsung Markman Order (ECF 149) at 24 (highlights added); see also id. at 20 (this
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`text appearing in a section titled “The Parties’ Positions.”).
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`Accordingly, claim 5 is invalid under 35 U.S.C. § 112 ¶ 4.
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`C.
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`“personal digital key” or “PDK” (’042 Patent, claim 10)
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`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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`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order re the ’188 and ’700
`Patents:
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`“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
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`The Asserted Patents consistently describe “PDK” as a device, whether standalone or
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`integrated with another device. See Microsoft Opening Brief at 11–17. Rather than rebut the
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`evidence in favor of Microsoft’s construction, Proxense attacks a straw man. Proxense argues that
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`Microsoft is seeking to construe PDK as “a stand-alone, single-purpose, monolithic device.”
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`Proxense Response at 10. This is not true. Microsoft’s construction simply reads PDK as “a
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`11
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`Patent Owner Exhibit 2007, Page 15 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 16 of 21
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`device” having certain non-disputed features. This device need not be “stand-alone.” As
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`Microsoft already described, it can be integrated into another device. Nor does Microsoft’s
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`construction say the PDK is “single-purpose” or “monolithic.”
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`Having spent most of its response fighting a fictional construction, see Proxense Response
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`at 10–12, Proxense fails to address the clear teachings of the ’042 Patent. The patent consistently—
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`and without contradiction—describes PDK (a Proxense-coined initialism) as a “device” having
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`features of a device (portability, location trackability, operability without wireless connection,
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`etc.). See Microsoft Opening Brief at 12–16; see also, e.g., ’042 Patent at 3:48–50 (“The
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`PDK 102 is a compact, portable uniquely identifiable wireless device typically carried by an
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`individual.”); 5:44–45 (“The PDK 102 can be standalone as a portable, physical device or can be
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`integrated into commonly carried items”); 17:63–64 (“[A] PDK 102 b operating as the first device
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`. . . .”). Of course, a device can be integrated into another device, without needing to be
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`disassembled into a collection of elements (e.g., a USB key plugged into a laptop, a cellphone
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`plugged into a charger, a camera mounted on a stand, etc.). And “hybrid device” (a term repeated
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`throughout the ’042 Patent, starting from the title) describes a “hybrid” of subset devices that can
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`function alone or in combination with another device. See ’042 Patent at Abstract (“The hybrid
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`device operates in one of several modes including, PDK only, RDC only, or PDK and RDC.”).
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`This is likely why Proxense avoids even referring to the Hybrid Device Patents (the ’042, ’289,
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`and ’960 Patents) as such, and instead opts to calling them “Family B” patents. This is likely also
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`why Proxense characterizes the PDK’s functionalities in its own patents as “alleged abilities.” See
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`Proxense Response at 11, 12. Proxense cannot use claim construction to distance itself from its
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`own patents’ disclosures to avoid the proper scope of its own coined terms.
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`12
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`Patent Owner Exhibit 2007, Page 16 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 17 of 21
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`Aside from failing to rebut intrinsic evidence, Proxense cites no affirmative evidence to
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`support its construction. Nothing in the ’042 Patent states or suggests that a PDK is a “collection
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`of elements.” Such a construction introduces confusion, turning PDK into some amorphous and
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`uncertain group of amorphous “elements.” Among other issues, Proxense’s proposed construction
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`of a “collection of elements” only underscores the unclear definition—what are these collections
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`of elements? Even Proxense appears to acknowledge that a “collection of elements” cannot fit the
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`’042 Patent’s disclosures. For example, Proxense states:
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`The 042 Patent teaches the PDK being a collection of elements integrated within a
`cell phone. . . . Thus, a PDK can simultaneously be a collection of elements
`integrated within a cell phone and arguably have the abilities of (1) portability,
`(2) proximity/location tracking, and (3) being able to operate with or without
`wireless connectivity.
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`Proxense Response at 11–12. Evidently, Proxense acknowledges that, only once the disconnected
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`elements that supposedly make up a PDK are somehow gathered into a device, like a cellphone, is
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`it capable of practicing the disclosures in the specification, such as portability and location
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`tracking.
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`And again, Proxense attempts to put words in the Court’s mouth by misleadingly reframing
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`a quote from the Proxense-Samsung Markman Order. Proxense states:
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`As this Court recognized in Proxense v. Samsung, in such embodiments where the
`hybrid device/PDK function is integrated into a cell phone (e.g., with a SIM card),
`“the transceiver and/or antenna of the PDK is provided by the cell phone, and the
`memory and controller of the PDK are provided by the SIM card.”
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`Proxense Response at 11 (citing Proxense-Samsung Markman Order (ECF 149) at 30). Again, the
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`quoted language was not the Court’s holding, but was instead contained in the Court’s recounting
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`of Proxense’s position. See Proxense-Samsung Markman Order (ECF 149) at 28–30. And again,
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`Proxense deleted the words “According to Proxense” from the Court’s Order to repackage its
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`argument as the Court’s holding. Id. at 28–29.
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`13
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`Patent Owner Exhibit 2007, Page 17 of 21
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`Case 6:23-cv-00319-ADA Document 46 Filed 12/11/23 Page 18 of 21
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`Based on consistent intrinsic evidence, “personal digital key” / “PDK” means “a device
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`that includes an antenna, a transceiver for communicating with the RDC and a controller and
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`memory for storing information particular to a user.”
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`D.
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`“receiver-decoder circuit” or “RDC” (’042 Patent, claim 10; ’289
`Patent, claims 14 and 16)
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`Microsoft’s Construction
`“a circuit that wirelessly receives encrypted