Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 1 of 27
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PROXENSE, LLC,
`
`Plaintiff,
`
`v.
`
`MICROSOFT CORPORATION,
`
`Defendant.
`
`Case No. 6:23-cv-00319-ADA
`
`MICROSOFT CORPORATION’S OPENING CLAIM CONSTRUCTION BRIEF
`
`1
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`MICROSOFT 1013
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`

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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 2 of 27
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`TABLE OF CONTENTS
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`Page(s)
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION .............................................................................................................. 1 
`
`LEGAL STANDARD ......................................................................................................... 1 
`
`AGREED CONSTRUCTIONS .......................................................................................... 2 
`
`THE ASSERTED PATENTS ............................................................................................. 2 
`
`A.
`
`B.
`
`Biometric Authentication Patents ........................................................................... 2 
`
`Hybrid Device Patents ............................................................................................ 3 
`
`V.
`
`DISPUTED CLAIM TERMS ............................................................................................. 3 
`
`A.
`
`B.
`
`C.
`
`D.
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`“access message” (’730 Patent, claims 1, 15; ’954 Patent, claim 1; ’905
`Patent, claim 1) ....................................................................................................... 3 
`
`“wherein the biometric data and the scan data are both based on a fingerprint
`scan by the user” (’730 Patent, claim 5) ................................................................. 7 
`
`“personal digital key” or “PDK” (’042 Patent, claim 10) ..................................... 11 
`
`“receiver-decoder circuit” or “RDC” (’042 Patent, claim 10; ’289 Patent,
`claims 14 and 16) .................................................................................................. 17 
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`VI.
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`CONCLUSION ................................................................................................................. 21 
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`i
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`2
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 3 of 27
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Allergan Sales, LLC v. Sandoz, Inc.,
`935 F.3d 1370 (Fed. Cir. 2019)..................................................................................................1
`
`Cdn Innovations v. Grande Communs. Networks,
`No. 4:20-CV-653-SDJ, 2021 WL 3615908 (E.D. Tex. Aug. 13, 2021) ....................................4
`
`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) ........................................................................................................................18
`
`Eon-Net LP v. Flagstar Bancorp,
`653 F.3d 1314 (Fed. Cir. 2011)................................................................................................13
`
`Exxon Chem. Patents, Inc. v. Lubrizol Corp.,
`64 F.3d 1553 (Fed. Cir. 1995)..................................................................................................18
`
`Goldenberg v. Cytogen, Inc.,
`373 F.3d 1158 (Fed. Cir. 2004)................................................................................................11
`
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`822 F.3d 1312 (Fed. Cir. 2016)................................................................................................12
`
`Huawei Techs. Co. v. T-Mobile US, Inc.,
`No. 2.16-CV-00055 JRG(RSP), 2017 WL 2190103 (E.D. Tex. May 17,2017) ........................7
`
`Indacon, Inc. v. Facebook, Inc.,
`824 F.3d 1352 (Fed. Cir. 2016)................................................................................................11
`
`Lexion Medical, LLC v. Northgate Techs., Inc.,
`641 F.3d 1352 (Fed. Cir. 2011)..................................................................................................1
`
`Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.,
`831 F.3d 1350 (Fed. Cir. 2016)............................................................................................8, 10
`
`Nevro Corp. v. Boston Sci. Corp.,
`955 F.3d 35 (Fed. Cir. 2020)....................................................................................................17
`
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006)..................................................................................................7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)............................................................................................2, 11
`
`Praxair, Inc. v. ATMI, Inc.,
`543 F.3d 1306 (Fed. Cir. 2008)................................................................................................16
`
`ii
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`3
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 4 of 27
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`
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)................................................................................................12
`
`Wi-LAN USA, Inc. v. Apple Inc.,
`830 F.3d 1374 (Fed. Cir. 2016)............................................................................................4, 13
`
`Statutes
`
`35 U.S.C. § 112 ¶ 4 ....................................................................................................................7, 10
`
`
`
`
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`
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`iii
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`4
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 5 of 27
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`TABLE OF EXHIBITS
`
`Ex. No.
`Ex. A
`Ex. B
`Ex. C
`
`Description
`2023-10-02 Email from counsel for Proxense regarding claim construction
`Excerpts from the file history for U.S. Patent No. 8,352,730
`Excerpts from the file history for U.S. Patent No. 8,886,954
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`iv
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`5
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 6 of 27
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`
`
`I.
`
`INTRODUCTION
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`Plaintiff Proxense, LLC (“Proxense”) asserts six patents, which can be categorized into
`
`two groups: (1) the “Biometric Authentication Patents,” which consist of U.S. Patent Nos.
`
`8,352,730, 8,886,954, and 9,298,905 and (2) the “Hybrid Device Patents,” which consist of U.S.
`
`Patent Nos. 8,646,042, 9,679,289, and 10,073,960. Several of the disputes as to the scope of the
`
`terms arise from infringement allegations against an unspecified group of Defendant Microsoft
`
`Corporation’s (“Microsoft”) offerings and various third-party offerings that are unrelated to
`
`Microsoft.1
`
`II.
`
`LEGAL STANDARD
`
`Claim terms should be “given their ordinary and customary meaning,” defined as “the
`
`meaning that the term would have to a person of ordinary skill in the art in . . . question at the time
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`of the invention.” Allergan Sales, LLC v. Sandoz, Inc., 935 F.3d 1370, 1373 (Fed. Cir. 2019)
`
`(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)). “The words used in
`
`the claims are interpreted in light of the intrinsic evidence of record, including the written
`
`description, the drawings, and the prosecution history.” Id. (quoting Teleflex, Inc. v. Ficosa N.
`
`Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) (brackets omitted)); see also Lexion Medical,
`
`LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (stating that the meaning of
`
`a disputed claim term “should be harmonized, to the extent possible, with the intrinsic record, as
`
`understood within the technological field of the invention”). “The construction that stays true to
`
`the claim language and most naturally aligns with the patent’s description of the invention will be,
`
`
`1 Proxense’s failure to define the Accused Product(s), as well as its violation of the fundamental
`rule prohibiting divided infringement, are discussed in Microsoft’s Motion to Dismiss for Failure
`to State a Claim (Dkt. No. 21) and its reply in support thereof (Dkt. No. 26).
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`1
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`6
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 7 of 27
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`
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`in the end, the correct construction.” Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v.
`
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
`
`III. AGREED CONSTRUCTIONS
`
`The parties agree upon the following constructions:
`
`Term
`“ID code” or “device ID
`code”
`
`“hybrid device”
`
`Patents
`’730 Patent, claims 1, 3, 15;
`’954 Patent, claims 1, 3;
`’905 Patent, claims 1, 2
`’042 Patent, claim 10;
`’289 Patent, claims 14, 16
`
`Agreed-Upon Construction
`“a unique code identifying a device”
`
`“a device comprising an integrated
`personal digital key (PDK) and an
`integrated receiver-decoder circuit”
`
`
`
`Proxense stated that it: “does not believe any additional terms need to be construed and
`
`adopts the Court’s prior constructions for terms that have been previously construed by this Court
`
`in the Proxense, LLC v. Samsung et. al [sic] litigation.” Ex. A. For these two terms, Microsoft’s
`
`proposed constructions align with the Claim Construction order from Proxense, LLC v. Samsung
`
`Electronics Co., Ltd. et al., 6:21-cv-00210-ADA (W.D. Tex.) (“Proxense/Samsung”), Dkt. No. 43
`
`(Claim Construction Order). Hence, these terms are not disputed.
`
`IV.
`
`THE ASSERTED PATENTS
`A.
`
`Biometric Authentication Patents
`
`This first group of asserted patents relate to biometric authentication: U.S. Patent Nos.
`
`8,352,730 (the “’730 Patent”), 8,886,954 (the “’954 Patent”), and 9,298,905 (the “’905 Patent”)
`
`(collectively, the “Biometric Authentication Patents”). This Court has previously construed
`
`several terms for U.S. Patent Nos. 8,352,730 (the “’730 Patent”) and 9,298,905 (the “’905 Patent”)
`
`in Proxense/Samsung.
`
`The Biometric Authentication Patents relate generally to “computerized authentication”
`
`using biometric data. ’730 Patent at 1:15–18; ’954 Patent at 1:19–22; ’905 Patent at 1:21–24. The
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`2
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`7
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`
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`patents generally disclose a distributed form of biometric authentication involving biometric key
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`that persistently stores biometric data in a tamper-resistant format, a scanner that collects biometric
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`data from a user, and an integrated device that compares the scan against the biometric data and
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`sends a code, for example to an application, to indicate that the user was successfully verified.
`
`’730 Patent at 1:59–67; ’954 Patent at 2:4–12; ’905 Patent at 2:6–14.
`
`B.
`
`Hybrid Device Patents
`
`The second group of asserted patents relate to hybrid devices: U.S. Patent Nos. 8,646,042
`
`(the “’042 Patent”), 9,679,289 (the “’289 Patent”), and 10,073,960 (the “’960 Patent”)
`
`(collectively, the “Hybrid Device Patents”). The disputed terms appear in the asserted claims of
`
`the ’042 and ’289 Patents. This Court previously construed terms in related patents, U.S. Patent
`
`Nos. 9,049,188 (the “’188 Patent”) and 9,235,700 (the “’700 Patent”) in Proxense/Samsung, but
`
`has not construed terms in the asserted Hybrid Device Patents.
`
`
`
`These patents generally relate “to a hybrid device including a personal digital key (PDK)
`
`and a receiver-decoder circuit (RDC) and methods for using same.” ’042 Patent at 1:21–27; ’289
`
`Patent at 1:44–52. The patents disclose “[p]roximity sensors and location tracking,” where
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`“proximity sensors can be used to provide secure access to physical and/or digital assets, based on
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`biometrics, passwords, PINs, or other types of authentication.” ’042 Patent at 1:30–33; ’289 Patent
`
`at 1:55–58.
`
`V.
`
`DISPUTED CLAIM TERMS
`A.
`
`“access message” (’730 Patent, claims 1, 15; ’954 Patent, claim 1; ’905
`Patent, claim 1)
`
`Microsoft’s Construction
`“a message enabling access”
`
`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order:
`“A signal or notification enabling or
`announcing access”
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`3
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`8
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 9 of 27
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`
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`Microsoft’s proposed construction stays true to the claim language in which “access
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`message” appears and the description in the specification. Microsoft proposes the natural reading
`
`of the “access message,” which is a message that itself enables access. Whereas Proxense,
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`proposes that “access message” variably consists of different data and functions, such as a “signal
`
`or notification” (instead of, simply, “message”) that either “enable[es]” or “announces” access to
`
`the application, which receives the access message. In one instance, it functions as a key to gain
`
`access, in the other it functions as an alert to say that access has already been obtained.
`
`The claim language of the ’730 Patent expressly and repeatedly describes the access
`
`message as “allowing the user access to an application.” ’730 Patent at claims 1 (“receiving an
`
`access message from the agent allowing the user access to an application”), 8 (“receives an access
`
`message from the agent allowing the user access to an application”), 12 (“in response to a positive
`
`access message, allowing the biometrically verified user access to an application”), 15 (“the
`
`authentication unit receiving an access message from the agent allowing the user to access an
`
`application”). This mirrors the description of “access message” in the specifications of the
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`Biometric Authentication Patents. ’730 Patent at 7:18–19 (“an access message to the application
`
`to allow user access”); ’954 Patent at 8:12–14 (same); ’905 Patent at 8:15–17 (same). Because the
`
`’730 Patent describes “access message” in only one manner in the entire specification (and the
`
`’954 and ’905 Patents mention “access message” only one additional time, in the Abstract), that
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`description should weigh heavily during construction. See, e.g., Wi-LAN USA, Inc. v. Apple Inc.,
`
`830 F.3d 1374, 1382 (Fed. Cir. 2016) (“Consistent use of a term in a particular way in the
`
`specification can inform the proper construction of that term.”); Cdn Innovations v. Grande
`
`Communs. Networks, No. 4:20-CV-653-SDJ, 2021 WL 3615908, at *5 (E.D. Tex. Aug. 13, 2021)
`
`(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)) (finding that
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`4
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`“[t]he specification is ‘always highly relevant to the claim construction analysis’ and is usually
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`‘dispositive’” and that “[t]he specification ‘is the single best guide to the meaning of a disputed
`
`term.’”). Moreover, although not in the context of “access message” specifically, the specification
`
`describes sending a “message to [the] application 330, or otherwise allow[ing] access to the
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`application” that is “responsive to a successful authentication by trusted key authority 320.” ’730
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`Patent at 5:23–26; ’954 Patent at 6:15–17; ’905 Patent at 6:17–19. Notably, however, the
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`specification does not describe sending a message to the application, or otherwise “announcing”
`
`access to the application, in a way that offers any support to Proxense’s construction.
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`Microsoft’s construction is also consistent with the only depiction of “access message” in
`
`the figures of the Biometric Authentication Patents.
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`’730 Patent at Fig. 7 (red box added); see also ’954 Patent at Fig. 7; ’905 Patent at Fig. 7. As
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`shown, sending an “Access Message” (740) is right above “END” (795). See also ’730 Patent at
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 11 of 27
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`7:18–23 (“If authentication is successful, the trusted key authority sends an access message to the
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`application to allow user access . . . If authentication is not successful, authentication fails 750 and
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`the message to the application indicates that the user should be denied access.”); ’954 Patent at
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`8:12–17; ’905 Patent at 8:15–20. There is no indication of another function, such as sending a
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`signal/notification announcing access.
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`Further, Proxense’s proposed construction is illogical, as it calls for “announcing access”
`
`without requiring granting access. There is no alternate signal that Proxense proposes as the
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`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. Nor is there any
`
`support to add an “announcing” function on top of the enabling function when “access message”
`
`enables access. Indeed, “announcing access” is an addition that Proxense seeks to introduce to
`
`this claim term without support. In other words, Proxense’s construction, which adds an additional
`
`function of “announcing” access, is not only unsupported by the specification, but logically
`
`incompatible with the sequence of events as outlined by the claims and the specification.
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`The Applicant’s statements during prosecution are also informative. During the
`
`prosecution of the ’730 and ’954 Patents, the Applicant stated that the user is allowed access upon
`
`receipt of an access message. See Ex. B (’730 Patent File History) at 9 (Resp. to July 7, 2010
`
`Office Action) (“The user is allowed access responsive to receipt of an access message from the
`
`agent that authenticates the code.”); Ex. C (’954 Patent File History) at 12 (Resp. to June 13, 2013
`
`Office Action) (“The user is allowed access responsive to receipt of an access message from the
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`6
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`11
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 12 of 27
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`
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`agent that authenticates the code.”).2 In contrast, a message, signal, or notification “announcing
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`access” was never discussed.
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`Proxense’s proposed construction of “a signal or notification enabling or announcing
`
`access” is unsupported by the intrinsic record. The terms “notification” (or “notice”) and
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`“announcing” (or “announce”) are not found in the ’730, ’954, or ’905 Patents. Although the word
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`“signal” appears in the specification, it is never used to describe the “access message.”
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`Therefore, the term “access message” should be construed to mean “message enabling
`
`access.”
`
`B.
`
`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (’730 Patent, claim 5)
`
`Microsoft’s Construction
`Invalid under 112 ¶ 4
`
`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order:
`No construction needed, plain and ordinary
`meaning.
`
`Claim 5, which is dependent on claim 1, is invalid under 35 U.S.C. § 112 ¶ 4, because it
`
`
`
`improperly broadens the closed Markush grouping set forth in claim 1. § 112 ¶ 4 provides: “a
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`claim in dependent form shall contain a reference to a claim previously set forth and specify a
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`further limitation of the subject matter claimed.” Even when “attempting to claim what might
`
`otherwise have been patentable subject matter” if “all the limitations of the claim to which it refers”
`
`are not present, that claim is invalid. Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-93
`
`(Fed. Cir. 2006), accord Huawei Techs. Co. v. T-Mobile US, Inc., No. 2.16-CV-00055 JRG(RSP),
`
`2017 WL 2190103, at *28 (E.D. Tex. May 17, 2017) (invalidating claim under §112 ¶ 4 at claim
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`construction). Here, dependent claim 4 attempts to broaden the scope of the closed group in its
`
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`2 All emphases in quoted language have been added, unless otherwise indicated.
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`7
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`12
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 13 of 27
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`
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`parent claim, which precludes claim 4 from being narrower than claim 1. Where the referenced
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`claim excludes a limitation, while the dependent claim includes it, that dependent claim is invalid.
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`See Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362
`
`(Fed. Cir. 2016).
`
`Generally, the use of a Markush group and the language “consisting of” provides a strong
`
`presumption of a closed group. Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics
`
`Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016) (“claim drafters often use the term ‘group of’ to signal
`
`a Markush group.” “Use of the transitional phrase ‘consisting of’ to set off a patent claim element
`
`creates a very strong presumption that that claim element is ‘closed’ and therefore ‘exclude[s] any
`
`elements, steps, or ingredients not specified in the claim.’”). Here, both factors are present in claim
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`1 and there is nothing in the specification or prosecution that would alter the very strong
`
`presumption that this group is closed. In fact, this Court has previously found that “Claim 1’s
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`limitation ‘wherein the biometric data is selected from a group consisting of a palm print, a retinal
`
`scan, an iris scan, a hand geometry, a facial recognition, a signature recognition and a voice
`
`recognition’ is a closed Markush group.” See Proxense v. Samsung, Case No. 6:21-cv-00210-
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`ADA, Dkt. No. 149 (Memorandum in Support of Claim Construction Order) at 23-24 (W.D. Tex.
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`Dec. 28, 2022).
`
`Claim 1 of the ’730 Patent reads, in relevant part: “wherein the biometric data is selected
`
`from a group consisting of a palm print, a retinal scan, an iris scan, a hand geometry, a facial
`
`recognition, a signature recognition and a voice recognition.” The claimed list does not include
`
`fingerprints. But claim 5, which depends on claim 1, states: “5. The method of claim 1, wherein
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`the biometric data and the scan data are both based on a fingerprint scan by the user.” This
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`impermissibly attempts to expand the scope of the dependent claim beyond the categories
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`8
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`13
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 14 of 27
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`disclosed in claim 1. A “fingerprint scan” of claim 5 is not a subpart or otherwise included in any
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`of the terms in the closed Markush Group in claim 1 of the ’730 Patent. Nor is “fingerprint” a
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`subset of “palm print,” “hand geometry,” or any other “biometric data” listed for claim 1. The
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`specification distinguishes “palm print” and “hand geometry” as “other embodiments” from a
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`“fingerprint.” See ’730 Patent at 3:4–11 (“[a]lthough the embodiments below are described using
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`the example of biometric verification using a fingerprint, other embodiments . . . can include a
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`palm print, a retinal scan, an iris scan, hand geometry recognition, facial recognition, signature
`
`recognition, or voice recognition.”).
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`Further, in the related ’905 and ’954 Patents (the other two patents in the Biometric
`
`Authentication Patent group), Proxense specifically included “fingerprint” in addition to “palm
`
`print” and “hand geometry,” as shown below:
`
`Patent
`
`Exemplary Claim
`
`U.S. Patent No. 8,352,730
`
`U.S. Patent No. 8,886,954
`
`U.S. Patent No. 9,298,905
`
`Claim 1: “wherein the biometric data is selected from a group
`consisting of a palm print, a retinal scan, an iris scan, a hand
`geometry, a facial recognition, a signature recognition and a
`voice recognition.” [no mention of “fingerprint”]
`
`Claim 5: “The method of claim 1, wherein the biometric data
`includes one or more of a fingerprint, palm print, a retinal
`scan, an iris scan, a hand geometry, a facial recognition, a
`signature recognition and a voice recognition.”
`
`Claim 4: “The method of claim 1, wherein the biometric data
`includes data from one or more of a fingerprint, palm print,
`a retinal scan, an iris scan, a hand geometry, a facial
`recognition, a signature recognition and a voice recognition.”
`
`
`Clearly, by including “fingerprint” in addition to “palm print” and “hand geometry” for the
`
`’954 and ’905 Patents, Proxense’s Markush groupings recognize that fingerprint is a separate and
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`distinct limitation that is not a palm print or hand geometry.
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`14
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`Finally, the Federal Circuit has found that a claim that attempts to improperly broaden the
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`scope of a closed Markush Group renders that claim indefinite. See, e.g., Multilayer, 831 F.3d at
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`1356 (affirming the district court’s finding that claim was indefinite because it “attempts to
`
`improperly broaden the scope of the closed Markush Group in element (b) of Claim 1”). In
`
`Multilayer, the court found that claim 10, which depended on claim 1, required “at least one said
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`inner layer comprises low density polyethylene homopolymers.” Id. Claim 1, in turn, required
`
`the inner layer to “be[] selected from the group consisting of linear low density polyethylene, very
`
`low density polyethylene, ultra low density polyethylene, and metallocene-catalyzed linear low
`
`density polyethylene resins.” Id. at 1353. Because claim 10’s “low density polyethylene
`
`homopolymers” was not listed in the closed Markush group in claim 1 and because it was “distinct
`
`from the four resins” recited in claim 1, the Federal Circuit affirmed the district court’s finding
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`that claim 10 was indefinite. Id. at 1356. Similarly, here, claim 5 requires the biometric data to
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`be a “fingerprint scan,” which is not listed in the closed Markush group in claim 1 (which consists
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`only of “a 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”). See ’730 Patent at claims 1, 5. Thus, by claiming a type
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`of biometric data outside of this group, dependent claim 5 fails to further limit claim 1, rendering
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`it invalid under Section 112 ¶ 4.
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`Given the broadening of the Markush group in claim 1 to include the term “fingerprint,”
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`Proxense should not be allowed “to recapture through litigation what the patentees forfeited during
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`patent prosecution” and must instead “deal with the consequence of the patentee’s decision to add
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`a Markush group to claim 1.” See Endo Pharm. Inc. v. Watson Labs., Inc., C.A. No. 10-138
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`(GMS), Dkt. No. 92 at 1–2 n. 1 (D. Del. June 27, 2011).
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 16 of 27
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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”
`
`Proxense’s Construction
`Adopts the Proxense/Samsung Claim
`Construction Order re the ’188 and ’700
`Patents:
`
`“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
`
`The Parties do not dispute that a “personal digital key” or “PDK” in the ’042 Patent
`
`
`
`
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`includes an antenna, a transceiver for communicating with the RDC and a controller, and memory
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`for storing information particular to a user. The dispute is whether a PDK is “a device” or is “[a]n
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`operably connected collection of elements.” Based on the intrinsic evidence, “PDK” is plainly a
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`device. The Court previously construed this term in Proxense/Samsung for the ’188 and ’700
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`Patents, which were later dismissed by Proxense and not asserted in this case. Microsoft
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`respectfully requests reconsideration of this term based on the additional evidence and argument
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`presented herein.
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`The claim language supports construing “PDK” as a device. See Phillips, 415 F.3d at 1314
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`(“[T]he context in which a term is used in the asserted claim can be highly instructive.”). As an
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`initial matter, “PDK” was coined by the inventor and not a term of art, and “[w]here a claim term
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`has no ordinary and customary meaning, a court must resort to the remaining intrinsic evidence . .
`
`. to obtain the meaning of that term.” Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164 (Fed. Cir.
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`2004); see also Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1357 (Fed. Cir. 2016) (terms with
`
`no established meaning “ordinarily cannot be construed broader than the disclosure in the
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`specification”). Claim 10 reads:
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 17 of 27
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`
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`10. A method comprising:
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`creating a first wireless link between an integrated receiver-decoder circuit
`(RDC) of a hybrid device and an external personal digital key (PDK), the
`hybrid device including an integrated PDK and the integrated RDC;
`
`receiving a first signal at the integrated RDC via the first wireless link from
`the external PDK;
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`generating an enablement signal enabling one or more of an application, a
`function and a service on one or more of the hybrid device and a device
`associated with an external RDC; and
`
`sending the enablement signal to one or more of the hybrid device and the
`device associated with an external RDC.
`
`’042 Patent at claim 10. As used in claim 10, a PDK is a device that may be “integrated” with a
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`hybrid device or be an “external” device. Either way, the claim’s usage of “PDK” is consistent
`
`with the view that a PDK is a discrete device that is physically intact, not merely a collection of
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`disparate elements. For example, if PDK is a collection of elements, the distinction between an
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`“external PDK” and “integrated PDK” would be muddled, because different “elements” can be
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`simultaneously external to, and integrated in, another device. The “wireless link” is also recited
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`as begin “from the external PDK,” as opposed to some component that is a part of the PDK. The
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`plain reading of claim 10 supports a PDK as a device, rather than a collection of elements.
`
`
`
`The specification also repeatedly and consistently describes PDK as a device, not an
`
`amorphous collection. A person of ordinary skill in the art “would naturally look to the written
`
`description for a full understanding of the claims.” Howmedica Osteonics Corp. v. Zimmer, Inc.,
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`822 F.3d 1312, 1322 (Fed. Cir. 2016); Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d
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`1243, 1250 (Fed. Cir. 1998) (“The construction that stays true to the claim language and most
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`naturally aligns with the patent’s description of the invention will be, in the end, the correct
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`construction.”). The ’042 Patent’s abstract states: “[t]he hybrid device operates in one of several
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`modes including, PDK only, RDC only, or PDK and RDC.” ’042 Patent at Abstract. Hence, the
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 18 of 27
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`
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`disclosed hybrid device includes a mode where PDK can function by itself. And the body of the
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`specification repeatedly confirms that PDK is a device. See, e.g., ’042 Patent at 3:48–50 (“The
`
`PDK 102 is a compact, portable uniquely identifiable wireless device typically carried by an
`
`individual.”); 5:44–45 (“The PDK 102 can be standalone as a portable, physical device or can be
`
`integrated into commonly carried items”); 17:63–64 (“[A] PDK 102 b operating as the first device
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`. . . .”). This further comports with the invention’s focus on proximity detection and location
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`determination. See, e.g., ’042 Patent at 1:20–67. These descriptions show that the PDK is a device,
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`whether it be standalone or integrated into another device and the consistent description of PDK
`
`as a device supports construing it as a device. See Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374,
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`1382 (Fed. Cir. 2016) (“Consistent use of a term in a particular way in the specification can inform
`
`the proper construction of that term.”); Eon-Net LP v. Flagstar Bancorp, 653 F.3d 1314, 1321
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`(Fed. Cir. 2011) (limiting claim terms “document” and “file” to “information that originates from
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`a hard copy document” where “[t]he written description repeatedly and consistently defines the
`
`invention as a system that processes information derived from hard copy documents.”).
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`The specification also describes the portability of the PDK, which makes sense, given that
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`it is a Personal Digital Key meant to be carried by a person. The specification’s descriptions of
`
`the PDK’s portability are consistent with the understanding that a PDK is a singular device that
`
`can be easily carried by a person, rather than a “collection of elements.” See, e.g., ’042 Patent at
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`3:48–50 (“The PDK 102 is a compact, portable uniquely identifiable wireless device typically
`
`carried by an individual.”); 12:26–28 (“In the example, a user carrying a PDK is located within
`
`a service oriented business, such as a department store, casino, restaurant, etc.”); 14:36–39 (“The
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`SIM content (Cell phone account, contact information, and credit card information) that is
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`normally stored in the cell phone 1202 is instead stored in the PDK 102 b carried by the user”);
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`Case 6:23-cv-00319-ADA Document 31 Filed 11/06/23 Page 19 of 27
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`
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`14:65–6