UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC,
`Petitioner,
`
`v.
`
`CARBYNE BIOMETRICS, LLC,
`
`Patent Owner
`
`———————
`IPR2023-00333
`U.S. Patent No. 11,475,105
`_____________________
`
`DECLARATION OF PATRICK MCDANIEL,
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`
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`TABLE OF CONTENTS
`
`I.
`
`Introduction ...................................................................................................... 6
`
`II.
`
`Qualifications and Professional Experience .................................................... 8
`
`III. Level of Ordinary Skill in the Art ................................................................. 12
`
`IV. Relevant Legal Standards .............................................................................. 14
`
`V. Overview of the ’105 Patent .......................................................................... 18
`
`VI. Technology Background ................................................................................ 27
`
`A. AUTHENTICATION .......................................................................... 27
`
`B.
`
`C.
`
`CREDENTIALS AND CREDENTIAL MANAGEMENT ................ 28
`
`CRYPTOGRAPHY ............................................................................. 32
`
`D.
`
`CRYPTOGRAPHY IN WEB TRANSACTIONS .............................. 33
`
`E.
`
`TRUSTED PLATFORM MODULES ................................................ 34
`
`VII. Claim Construction ........................................................................................ 36
`
`A.
`
`“restricted interface” (Claims 9-11 and 28-30) ................................ 37
`
`VIII. Claims 1, 9-11, 14, 18, 28-30, 33 and 35 are Unpatentable .......................... 38
`
`A. Ground 1: Claims 1, 14, 18, 33, and 35 are obvious under 35
`U.S.C. § 103 over Kesanupalli, Cheng and Kodama. ......................... 40
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`a)
`
`Summary of Kesanupalli ..................................................................... 40
`
`Summary of Cheng .............................................................................. 43
`
`Summary of Kodama .......................................................................... 46
`
`Reasons to Combine Kesanupalli, Cheng and Kodama ...................... 48
`
`Claim 1 ................................................................................................ 56
`
`[1.0] A system, comprising: ................................................................. 56
`
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`2
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`b)
`
`c)
`
`d)
`
`e)
`
`f)
`
`g)
`
`h)
`
`i)
`
`j)
`
`k)
`
`
`[1.1] one or more processors configured to: ...................................... 57
`
`[1.2] receive, at a first device, a request to access a resource
`external to the first device, wherein the resource external to the
`first device is associated with a user; ................................................. 59
`
`[1.3a] access at least one record stored on the first device, the
`at least one record including authentication information
`associated with the user and credential information associated
`with the external resource to which the user has requested
`access, .................................................................................................. 64
`
`[1.3b] wherein the credential information comprises a
`cryptographic key; ............................................................................... 72
`
`[1.4] receive authentication input from the user; ............................... 74
`
`[1.5] determine that the authentication input from the user
`matches the authentication information associated with the user
`included in the at least one record stored on the first device; ............ 75
`
`[1.6] retrieve at least a portion of the credential information
`from the at least one record stored on the first device; ...................... 78
`
`[1.7] facilitate access of the user to the external resource at
`least in part by transmitting, on behalf of the user, from the first
`device, output based at least in part on the at least portion of
`the credential information retrieved from the at least one
`record, wherein the user of the first device is granted access to
`the external resource based at least in part on the output
`transmitted from the first device on behalf of the user; and ............... 80
`
`[1.8] based at least in part on the first device being a same
`brand as a second device, initiate a backup, to the second
`device, of at least a portion of the at least one record; and ............... 84
`
`[1.9] a memory coupled to the one or more processors and
`configured to provide the one or more processors with
`instructions. ......................................................................................... 88
`
`6.
`
`Claim 14 .............................................................................................. 89
`
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`7.
`
`8.
`
`B.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`C.
`
`1.
`
`2.
`
`3.
`
`a)
`
`b)
`
`c)
`
`d)
`
`
`Claims 18 and 33 ................................................................................. 90
`
`Claim 35 .............................................................................................. 92
`
`Ground 2: Claims 9-11 and 28-30 are obvious under 35 U.S.C.
`§ 103 over Kesanupalli, Cheng, and Kodama and in further
`view of Challener. ............................................................................... 94
`
`Summary of Challener ........................................................................ 94
`
`Reasons to Combine Kesanupalli in view of Cheng and
`Kodama and Challener ........................................................................ 99
`
`Claim 9 .............................................................................................. 103
`
`Claim 10 ............................................................................................ 108
`
`Claim 11 ............................................................................................ 109
`
`Claims 28-30 ..................................................................................... 109
`
`Ground 3: Claims 1, 9-11, 14, 18, 28-30, 33 and 35 are obvious
`under 35 U.S.C. § 103 over Jakobsson 351 and Kodama. ................ 111
`
`Jakobsson 351 and Kodama .............................................................. 111
`
`Reasons to Combine Jakobsson 351 and Kodama ............................ 111
`
`Claim 1 .............................................................................................. 115
`
`[1.0] A system, comprising: ............................................................... 115
`
`[1.1] one or more processors configured to: ..................................... 115
`
`[1.2] receive, at a first device, a request to access a resource
`external to the first device, wherein the resource external to the
`first device is associated with a user; ................................................ 115
`
`[1.3a] access at least one record stored on the first device, the
`at least one record including authentication information
`associated with the user and credential information associated
`with the external resource to which the user has requested
`access, ................................................................................................ 116
`
`
`
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`Inter Partes Review of U.S. 11,475,105
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`e)
`
`f)
`
`g)
`
`h)
`
`i)
`
`j)
`
`k)
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`[1.3b] wherein the credential information comprises a
`cryptographic key; ............................................................................. 117
`
`
`
`[1.4] receive authentication input from the user; .............................. 117
`
`[1.5] determine that the authentication input from the user
`matches the authentication information associated with the user
`included in the at least one record stored on the first device; .......... 117
`
`[1.6] retrieve at least a portion of the credential information
`from the at least one record stored on the first device; .................... 118
`
`[1.7] facilitate access of the user to the external resource at
`least in part by transmitting, on behalf of the user, from the first
`device, output based at least in part on the at least portion of
`the credential information retrieved from the at least one
`record, wherein the user of the first device is granted access to
`the external resource based at least in part on the output
`transmitted from the first device on behalf of the user; and ............. 118
`
`[1.8] based at least in part on the first device being a same
`brand as a second device, initiate a backup, to the second
`device, of at least a portion of the at least one record; and ............. 119
`
`[1.9] a memory coupled to the one or more processors and
`configured to provide the one or more processors with
`instructions. ....................................................................................... 122
`
`Claim 9 .............................................................................................. 122
`
`Claim 10 ............................................................................................ 123
`
`Claim 11 ............................................................................................ 124
`
`Claim 14 ............................................................................................ 125
`
`Claims 18, 28-30, and 33 .................................................................. 125
`
`Claim 35 ............................................................................................ 127
`
`IX. Conclusion ................................................................................................... 130
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`I, Patrick McDaniel, do hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I make this declaration based upon my own personal knowledge and,
`
`if called upon to testify, would testify competently to the matters stated herein.
`
`2.
`
`I have been asked by Apple Inc. (“Apple”) to provide my expert
`
`opinion connection with the Inter Partes Review of U.S. Patent No. 11,475,105
`
`(“’105 patent”) concerning whether the ’105 patent is unpatentable over certain
`
`prior art. This declaration is a statement of my opinions on issues relating to the
`
`patentability of Claims 1, 9-11, 14, 18, 28-30, 33, and 35 (“the Challenged
`
`Claims”) of the ’105 patent. As I explain more fully below, it is my opinion that all
`
`the Challenged Claims would have been obvious to a person of ordinary skill in the
`
`art (“POSITA”) at the time of the alleged invention.
`
`3.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony. I
`
`have no other financial interest in this proceeding.
`
`4.
`
`I have reviewed and considered the following documents in
`
`connection with my analysis of the ’105 patent:
`
`a) the ’105 patent, APPL-1001;
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`
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`b) the prosecution history of the ’105 patent (“’105 File History”),
`
`
`
`APPL-1002;
`
`c) U.S. Patent No. 8,799,666 to Kesanupalli et al. (“Kesanupalli”),
`
`APPL-1006;
`
`d) U.S. Patent No. 8,099,789 to Challener et al. (“Challener”),
`
`APPL-1007;
`
`e) U.S. Patent Publication No. 2004/0117636 to Cheng et al.
`
`(“Cheng”), APPL-1008;
`
`f) European Patent Application EP 2 079 023 A2 published
`
`15.07.2015 (“Kodama”), APPL-1010; and
`
`g) U.S. Patent 10,360,351 (“Jakobsson ’351”), APPL-1011.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a) the documents listed above;
`
`b) the relevant legal standards, including the standard for
`
`obviousness, and any additional authoritative documents as cited in the body of
`
`this declaration; and
`
`c) my own knowledge and experience based upon my work in the
`
`field of authentication and distributed computing as described below, as well as the
`
`following materials:
`
`APPL-1009
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`U.S. Patent No. 9,652,629 (“Brown”)
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`
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`APPL-1012
`
`APPL-1013
`
`Patrick McDaniel, Authentication, Handbook of Computer
`Networks, Volume 3, Part 2, pp. 570-580, John Wiley and
`Sons, 2008. Ed. Hossein Bidgoli.
`
`IBM Introducing Fingerprint Reader Into Laptop. Jack
`Germain. 2004 at https://www.technewsworld.com/story/ibm-
`introducing-fingerprint-reader-into-laptop-37017.html
`
`APPL-1014
`
`U.S. Patent Publication 2008/0059804 to Shah et al.
`
`APPL-1015
`
`APPL-1016
`
`APPL-1017
`
`Kerberos: An Authentication Service for Computer Networks.
`B. Clifford Neuman et al. 1994 at
`https://gost.isi.edu/publications/kerberos-neuman-tso.html
`
`ISO/IEC 11889-1:2009 Information technology Trusted
`Platform Module Part 1: Overview at
`https://www.iso.org/standard/50970.html
`
`TPM Main Part 3 Commands Specification Version 1.2 1
`March 2011 at https://trustedcomputinggroup.org/wp-
`content/uploads/TPM-Main-Part-3-
`Commands_v1.2_rev116_01032011.pdf
`
`APPL-1019
`
`Computer Dictionary, Second Edition, entry “data record”
`(1994)
`
`APPL-1020
`
`How to Restore Your Data After a Hard Drive Crash, Glenn
`Derene, Aug 4, 2011 at
`https://www.popularmechanics.com/technology/gadgets/how-
`to/a6819/how-to-restore-your-data-after-a-hard-drive-crash/
`
`APPL-1021
`
`Redline comparison of U.S. Patent No. 10,360,351 patent
`specification and the ’105 patent
`
`APPL-1023
`
`RFC2818, HTTP Over TLS (May 2000)
`
`APPL-1024
`
`https://trustedcomputinggroup.org/wp-content/uploads/TPM-
`Applications-Whitepaper.pdf
`
`6.
`
`Unless otherwise noted, all emphasis in any quoted material has been
`
`added.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`7. My Curriculum Vitae (CV) is attached as APPL-1004. This exhibit
`
`
`
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`8
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`
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`also includes a list of my publications and the cases in which I have testified at
`
`deposition, hearing, or trial within the past four years.
`
`8.
`
`I earned a Ph.D. in Computer Science from the Computer Science and
`
`Engineering Department at University of Michigan, Ann Arbor in 2001. I earned a
`
`Bachelor of Science degree in Computer Science from Ohio University in 1989,
`
`and a Master of Science degree, also in Computer Science, from Ball State
`
`University in 1991.
`
`9.
`
`Since 2022, I have been Tsun-Ming Shih Professor of Computer
`
`Sciences in the School of Computer, Data and Information Sciences at the
`
`University of Wisconsin-Madison. Prior to my move to Wisconsin, I was the
`
`William L. Weiss Professor of Information and Communications Technology in
`
`the School of Electrical Engineering and Computer Science at the Pennsylvania
`
`State University in University Park, PA. I was also the director of the Institute for
`
`Network and Security Research, and founder and co-director of the Systems and
`
`Internet Infrastructure Security Laboratory, a research laboratory focused on the
`
`study of security in diverse network and computer environments. My research
`
`efforts primarily involve computer systems (including authentication), network
`
`management and authentication, systems security, and technical public policy.
`
`10. Prior to 2017 I was an Assistant Professor (2004-2007), Associate
`
`Professor (2007-2011), Full Professor (2011-2015), and Distinguished Professor
`
`
`
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`Inter Partes Review of U.S. 11,475,105
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`(2016-2017) of Computer Science and Engineering and the William L. Weiss
`
`Professor of Information and Communications Technology (2017-2022) at the
`
`Pennsylvania State University. Since 2004, I have taught courses in the field of
`
`computer systems, systems programming, mobile device security, networks, and
`
`network and computer security at both the undergraduate and graduate level. I
`
`created and maintained several of these courses at Penn State and Wisconsin.
`
`11. From 2003-2009, I was also an Adjunct Professor at the Stern School
`
`of Business at New York University in New York, NY. At the Stern School of
`
`Business, I taught courses in computer and network security and online privacy.
`
`12.
`
`I am a Fellow of the Association for Computing Machinery (ACM,
`
`the leading professional association for computer science), a Fellow Institute for
`
`Electrical and Electronics Engineering (IEEE, the leading professional association
`
`for engineering), and Fellow of the American Association for the Advancement of
`
`Science (AAAS, the leading professional association for science).
`
`13.
`
`I am the director of the NSF Frontier Center for Trustworthy Machine
`
`Learning (CTML), a research organization exploring security and privacy of
`
`machine learning (and AI in general). Funded by the US National Science
`
`Foundation, the CTML is led by the University of Wisconsin-Madison and has
`
`members from Stanford, the University of California, Berkeley, The University of
`
`California-San Diego, and the University of Virginia.
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`14. From 2013 to 2018 I was the Program Manager (PM) and lead
`
`
`
`scientist for the Cyber Security Collaborative Research Alliance (CRA). The CRA
`
`is led by Penn State University and includes faculty and researchers the Army
`
`Research Laboratory, Carnegie Mellon University, Indiana University, the
`
`University of California-Davis, and the University of California-Riverside. This
`
`initiative is a major research project aimed at developing a new science of cyber-
`
`security for military networks, computers, and installations.
`
`15.
`
`I regularly advise students on research projections covering aspects of
`
`computer systems security. In this role, I regularly serve as an advisor to Ph.D.
`
`and master’s degree candidates, several of whom have gone on to become
`
`professors at various institutions such as North Carolina State University, Purdue
`
`University, the University of Toronto, the University of Oregon, the Georgia
`
`Institute of Technology and the University of Florida.
`
`16. Before joining Pennsylvania State University as a professor, from
`
`1991 - 1996 I was a software developer and project manager for companies in the
`
`networking industry including Applied Innovation, Inc., and Primary Access
`
`Corporation. I was also a senior researcher at AT&T Research-Labs. As part of my
`
`duties in these industrial positions, I informed, reviewed, and formed corporate
`
`policies and practices relating to the security of mobile devices, networks, and
`
`software systems.
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`Inter Partes Review of U.S. 11,475,105
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`17.
`
`I have published extensively in the field of authentication, mobile
`
`
`
`security, network and security management, computer systems, authentication,
`
`systems security, applied cryptography and network security. In addition to writing
`
`several articles for industry journals and conferences, I have authored portions of
`
`numerous books related to computer systems (including authentication), applied
`
`cryptography and network security. I have served on the editorial boards of several
`
`peer-reviewed journals including ACM Transactions on Internet Technology, for
`
`which I was the Editor-in-Chief. I was also an Associate Editor for ACM
`
`Transactions on Information and System Security and IEEE Transactions of
`
`Software Engineering, two highly regarded journals in the field.
`
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`18.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`19.
`
`I understand that the ’105 patent was filed December 15, 2020 and
`
`claims priority as a continuation in part through various applications to provisional
`
`applications filed January 17, 2012 and December 9, 2011 As I discuss below (see
`
`Section V.), the effective filing date of the claims of the ’105 patent is the actual
`
`
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`filing date (December 15, 2020) of the continuation-in-part application (U.S. Appl.
`
`17/123,018) that issued as the ’105 patent. While the ’105 patent claims priority
`
`through a chain of earlier filed application, those claims of priority are unsupported
`
`due to the absence of disclosure in the documents to which priority is claimed for a
`
`“based at least in part on the first device being a same brand as a second device”
`
`limitation.
`
`20. Here, a POSITA at the time of the claimed invention would have had
`
`a bachelor’s degree in an electrical engineering, computer engineering, computer
`
`science, or a related field, and at least two years of experience in the research,
`
`design, development, and/or testing of authentication techniques, and related
`
`firmware and software, or the equivalent, with additional education substituting for
`
`experience and vice versa. A person with less formal education but more
`
`experience, or more formal education but less experience, could have also met the
`
`relevant standard for a POSITA. For purposes of this Declaration, in general, and
`
`unless otherwise noted, my statements and opinions, such as those regarding my
`
`experience and the understanding of a POSITA generally (and specifically related
`
`to the references I consulted herein), reflect the knowledge that existed in the field
`
`as of the actual filing date of the ’105 patent (i.e., December 15, 2020), but I have
`
`also considered the knowledge that existed as of the earliest possible priority date
`
`(i.e., December 9, 2011).
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`21. Unless otherwise stated, when I provide my analysis below, the
`
`
`
`relevant knowledge and understanding is consistent with the that of a POSITA just
`
`prior to the earliest possible priority date of the ’105 patent—December 9, 2011—
`
`as well as that at the actual filing date of the ’105 patent—December 15, 2020.
`
`Unless specifically stated, none of my analysis relies on a greater level of POSITA
`
`knowledge or understanding as of the later date.
`
`22.
`
`I met the definition of a POSITA in 2011 and 2020. I also had a
`
`greater knowledge and experience than a POSITA. In my work discussed above,
`
`including as a professor, I worked with graduate students and others who had the
`
`knowledge and experience of a POSITA in 2011 and 2020, and I am able to render
`
`opinions from the perspective of a POSITA based on my knowledge and
`
`experience.
`
`IV. RELEVANT LEGAL STANDARDS
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’105 patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`24. Obviousness: I have been informed that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103 if the differences between the invention and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`the time the invention was made to a person having ordinary skill in the art to
`
`which the subject matter pertains. I have also been informed by counsel that the
`
`obviousness analysis takes into account factual inquiries including the level of
`
`ordinary skill in the art, the scope and content of the prior art, and the differences
`
`between the prior art and the claimed subject matter.
`
`25.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`26.
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations include,
`
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`among other things, commercial success of the patented invention, skepticism of
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`those having ordinary skill in the art at the time of invention, unexpected results of
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`the invention, any long-felt but unsolved need in the art that was satisfied by the
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`alleged invention, the failure of others to make the alleged invention, praise of the
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`alleged invention by those having ordinary skill in the art, and copying of the
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`alleged invention by others in the field. I understand that there must be a nexus—a
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`connection—between any such secondary considerations and the alleged invention.
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`I also understand that contemporaneous and independent invention by others is a
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`secondary consideration tending to show obviousness.
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`27.
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`I am not aware of any allegations by the named inventor of the ’105
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`patent or any assignee of the ’105 patent that any secondary considerations are
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`relevant to the obviousness analysis of any Challenged Claim of the ’105 patent.
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`28. Priority Date: I understand that, for any given claim of the ’105
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`patent, prior art includes patents and printed publications in the relevant art that
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`predate the effective filing date of that claim. I understand that, subject to the next
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`paragraphs, the “priority date” of a patent is the earlier of: (a) the date on which a
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`patent application that later issues as the patent is actually filed; or (b) the date on
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`which an earlier-filed patent application is filed if the patentee properly claims the
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`benefit of priority to the earlier-filed patent application.
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`29.
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`I understand that merely claiming the benefit of an earlier-filed
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`APPL-1003
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`application is insufficient. In particular, in order for the earlier priority date to be
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`applicable, the prior application must describe the claimed invention, and must do
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`so in sufficient detail that one skilled in the art can clearly conclude that the
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`inventor had possession of the claimed invention as of the filing date sought. I am
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`told that the priority-date analysis is on a claim-by-claim basis. I understand that
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`in order for a patent claim of a later-filed application to be entitled to the filing date
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`of an earlier-filed patent application, the earlier-filed patent application must meet
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`both a written-description and an enablement requirement for that patent claim as
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`of the filing date of the earlier-filed patent application. I also understand that this
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`analysis may be referred to as an analysis of compliance with 35 U.S.C. § 112. I
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`understand that it is not sufficient that the claim would have been obvious from the
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`earlier application, rather the earlier-filed patent application itself must describe the
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`claimed invention.
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`30.
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`I understand to satisfy the written description requirement the earlier-
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`filed patent application must reasonably convey to those skilled in the art that the
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`inventors had possession of the subject matter of sought to be claimed by the later-
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`filed patent as of the filing date of the earlier-filed patent application. I have been
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`informed that it is disclosures of the earlier-filed patent application that count, and
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`that while the meaning of terms, phrases, or diagrams in the earlier-filed patent
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`application must be interpreted from the vantage point of a POSITA, all of the
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`claimed limitations must be disclosed in the manner later claimed. Further, I
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`understand that this analysis is not a question of whether one skilled in the art
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`might be able to construct the later-filed patent application’s claimed invention
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`from the teachings of the disclosure or whether that claimed invention is an
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`obvious variant of that which is actually disclosed in the specification of the
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`earlier-filed patent application; rather, I understand that the earlier-filed patent
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`application must itself describe each of the claim limitations expressly or
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`inherently. I also understand that in order to satisfy the enablement requirement,
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`the earlier application must enable a person of ordinary skill in the art to practice
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`the claimed invention of the later-filed patent application without undue
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`experimentation.
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`V. OVERVIEW OF THE ’105 PATENT
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`31. The ’105 patent is directed to an environment that includes a client
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`device, such as a notebook computer, smartphone, or tablet, which is connected via
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`a network such as the Internet to a service such as a website. (’105 patent) APPL-
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`1001, 2:62-3:14. FIG. 1 the ’105 patent illustrates such an environment including
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`client devices (102-108) connected to services (120-124).
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`(’105 patent) APPL-1001, FIG. 1, annotated
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`32. The ’105 patent describes authentication techniques to provide user
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`credentials (e.g., a password) from a client device to a service with a goal of
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`avoiding reliance on a user’s input of the credential, which is tedious for the user
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`and leads to poor security practices. (’105 patent) APPL-1001, 1:43-52. The ’105
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`patent describes users “need not type such usernames and passwords into their
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`devices whenever required by a service. Instead, users can authenticate themselves
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`to an ‘authentication translator’ ...and the authentication translator will provide the
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`appropriate credentials to the implicated service on the user’s behalf.” (’105
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`patent) APPL-1001, 3:20-26. FIG. 5 of the ’105 patent illustrates a process for
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`performing this authentication translation. (’105 patent) APPL-1001, 1:66-67.
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`(’105 patent) APPL-1001, FIG. 5
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`33. The ’105 patent describes an example of FIG. 5 where a user, Alice,
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`wishes to sign onto a social networking website 120. Alice is prompted by her
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`client device, in this example her laptop, to provide biometric information using an
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`“integrated fingerprint reader on her laptop.” (’105 patent) APPL-1001, 6:50-7:3.
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`Alice provides her biometric information in response to the prompt. Id. A
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`translation module such as provided in her laptop compares her provided biometric
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`information with a template stored on the computer. (’105 patent) APPL-1001,
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`7:3-10. If a match is found, a previously stored credential associated with the
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`resource is provided to the resource. (’105 patent) APPL-1001, 7:11-16. These
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`techniques for authentication translation were well-known by 2011.
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`34.
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`’105 Prosecution History: I have reviewed the file history of the ’105
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`McDaniel Declaration
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`Inter Partes Review of U.S. 11,475,105
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`patent, which I understand is attached as APPL-1002. In an office action, the
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`Examiner rejected many of the pending claims as obvious indicating a then
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`pending dependent claim reciting “the backup is performed in response to a
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`determination t