Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 1 of 33
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`PROXENSE, LLC,
`
`
`Plaintiff,
`
`
`vs.
`
`SAMSUNG ELECTRONICS, CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`
`Defendant.
`
`
`
`
`Case Nos. 6:21-cv-00210-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`SAMSUNG’S OPENING CLAIM CONSTRUCTION BRIEF
`
`
`
`Patent Owner Exhibit 2009, Page 1 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 2 of 33
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ...............................................................................................................1
`
`LEGAL STANDARD ..........................................................................................................2
`
`III.
`
`DISPUTED TERMS ............................................................................................................3
`
`A.
`
`The ’730 patent family .............................................................................................3
`
`1.
`
`2.
`
`3.
`
`4.
`
`“persistently storing . . . a tamper proof format written to a storage
`element on the integrated device that is unable to be subsequently
`altered” (730:1, 15) / “a tamper proof format written to the
`memory that is unable to be subsequently altered” (730:8) .........................3
`
`“device ID code” (730:1,3,8,10,12,15) / “ID code” (905:1-3, 8-11,
`13-14) (989:1-2, 4-8) ...................................................................................5
`
`“third-party trusted authority” (730:1, 8, 12, 15)
`(905:1,9,10,13)(989:1,4-7) ...........................................................................6
`
`“receiving an access message from the agent allowing the user
`access to an application” (730:1,8,15) / “receiving an access
`message from the agent” (730:12) / “an access message from the
`third-party trusted authority-indicating that the third- party trusted
`authority successfully authenticated the ID code” / (905:1, 9, 13) /
`“a transaction being completed responsive to the third-party trusted
`authority successfully authenticating the ID code” (989:1, 5) / “a
`transaction is completed responsive to successful authentication of
`the ID code” (989:7) ....................................................................................8
`
`5.
`
`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (730:5) .........................................................10
`
`B.
`
`The ’188/’700 patent family ..................................................................................11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`“hybrid device” (188:1-12,15,20) (700:1-13, 16) ......................................11
`
`“personal digital key” (188:1,10) (700:1,11) .............................................15
`
`“biometric information” (188:1,4,10,13)(700:4,14) ..................................18
`
`“financial information” (188:5-6, 14, 17) (700:1,5-6,11,15,18) ................20
`
`“receiver-decoder circuit” (188:1,10)(700:1,11) .......................................21
`
`“inheritance information” (188:9,18)(700:9,19) ........................................24
`
`“enablement signal” (188:10-12, 17)(700:11-13,18) .................................26
`
`CONCLUSION ..................................................................................................................27
`
`
`
`i
`
`IV.
`
`
`
`
`
`
`Patent Owner Exhibit 2009, Page 2 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 3 of 33
`
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010) ................................................................................................ 13
`
`Competitive Techs., Inc. v. Fujitsu Ltd.,
`185 Fed. Appx. 958 (Fed. Cir. 2006) ........................................................................................ 11
`
`Every Penny Counts, Inc. v. Am. Express Co.,
`563 F.3d 1378 (Fed. Cir. 2009) .................................................................................................. 2
`
`Goldenberg v. Cytogen, Inc.,
`373 F.3d 1158 (Fed. Cir. 2004) ................................................................................................ 15
`
`Huawei Techs. Co. v. T-Mobile US, Inc.,
`No. 2.16-CV-00055 JRG(RSP), 2017 WL 2190103 (E.D. Tex. May 17, 2017) .................... 2, 9
`
`Indacon, Inc. v. Facebook, Inc.,
`824 F.3d 1352 (Fed. Cir. 2016) ................................................................................................ 15
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`327 F.3d 1364 (Fed. Cir. 2003) ................................................................................................ 14
`
`IQASR LLC v. Wendt Corp.,
`825 F. App’x 900 (Fed. Cir. 2020) ........................................................................................... 11
`
`Iridescent Networks, Inc. v. AT&T Mobility, LLC,
` 933 F.3d 1345 (Fed. Cir. 2019) ............................................................................................... 11
`
`Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp.,
`831 F.3d 1350 (Fed. Cir. 2016) ............................................................................................ 3, 10
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 134 S. Ct. 2120, 2129, 189 L. Ed. 2d 37 (2014) ............................................. 2, 11
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008) .................................................................................................. 2
`
`Oatey Co. v. IPS Corporation,
`514 F.3d 1271 (Fed. Cir. 2008) ................................................................................................ 13
`
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006) .............................................................................................. 2, 9
`
`
`
`
`ii
`
`Patent Owner Exhibit 2009, Page 3 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 4 of 33
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................................................. 2
`
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) .................................................................................................. 4
`
`SynQor, Inc. v. Artesyn Tech., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ................................................................................................ 13
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) .................................................................................................. 4
`
`Verizon Servs. Corp. v. Vonage Holdings Corp.,
`503 F.3d 1295 (Fed. Cir. 2007) ................................................................................................ 13
`
`Vitronics Corp. v Conceptronics, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .................................................................................................. 14
`
`Statutes
`
`35 USC § 112 ............................................................................................................................ 2, 11
`
`
`
`
`
`
`iii
`
`Patent Owner Exhibit 2009, Page 4 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 5 of 33
`
`
`
`I.
`
`INTRODUCTION
`
`The parties present several terms for construction. While Samsung presents constructions
`
`drawn directly from the intrinsic evidence in the proper context, Proxense consistently attempts to
`
`divorce the claim terms from direct lexicography, the prosecution history, and the plain meaning
`
`of the terms. Proxense further appears to draw from only certain portions of the specification and
`
`ignores other inconsistent portions of the specification.
`
`With respect to the first family of patents, the ’730/’905/’989 family, for the first two terms,
`
`“persistently storing” and “device ID code,” Proxense’s constructions attempt to create distance
`
`from arguments made in prosecution that ultimately allowed these claims. Samsung’s construction
`
`properly captures this intrinsic evidence. For “access message” and “third party trusted authority,”
`
`Proxense’s constructions are so vague that it would render these terms nearly meaningless. The
`
`remaining term, dependent claim 5, is invalid because of improper drafting.
`
`Proxense makes similar errors with respect to the ’700/’188 Family of patents. For “hybrid
`
`device,” Proxense attempts to choose one possibility out of many varied, and internally
`
`inconsistent, descriptions of the term in the specification, which demonstrates that the term is
`
`indefinite. Samsung’s proposed constructions for “PDK” and “RDC” reflect the way these terms
`
`are consistently used in the specification and claims to describe a discrete device, while Proxense
`
`tries to broaden the scope to any collection of components with similar functionality. Samsung’s
`
`proposed constructions for “biometric information,” “financial information,” and “inheritance
`
`information” are likewise all drawn directly from the descriptions in the specification, while
`
`Proxense’s positions on these terms are vague and/or overly broad. Regarding “enablement
`
`signal,” it is unclear why this term needs to be construed at all, as Proxense confusingly repeats
`
`the same term “enable” in its construction. If this term is construed at all, then the construction
`
`
`
`
`1
`
`Patent Owner Exhibit 2009, Page 5 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 6 of 33
`
`
`
`should focus on the “authorization” function of this signal, which is how the term is described in
`
`the specification.
`
`II.
`
`LEGAL STANDARD
`
`Claim construction always begins with the intrinsic record, including the claim language,
`
`the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed.
`
`Cir. 2005). Extrinsic evidence may also be consulted, but must be considered “in the context of
`
`the intrinsic evidence.” Id. at 1319.
`
`It is the Court’s role to resolve disputes regarding the scope of the asserted claims. O2
`
`Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). “[T]he
`
`court’s obligation is to ensure that questions of the scope of the patent claims are not left to the
`
`jury.” Every Penny Counts, Inc. v. Am. Express Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009).
`
`However, in the event “a patent's claims, viewed in light of the specification and
`
`prosecution history, [fails to] inform those skilled in the art about the scope of the invention with
`
`reasonable certainty” that claim must be found indefinite. Nautilus, Inc. v. Biosig Instruments,
`
`Inc., 572 U.S. 898, 910, 134 S. Ct. 2120, 2129, 189 L. Ed. 2d 37 (2014).
`
`Further, 35 USC 112 ¶ 4 provides: “a claim in dependent form shall contain a reference to
`
`a claim previously set forth and specify a 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 construction). In particular, this is the case when
`
`a dependent claim attempts to add to closed groups. Where the referenced claim excludes a
`
`
`
`
`2
`
`Patent Owner Exhibit 2009, Page 6 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 7 of 33
`
`
`
`limitation, while the dependent claim includes it, that dependent claim is invalid. Multilayer
`
`Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016).
`
`III. DISPUTED TERMS
`
`A.
`
`The ’730 patent family
`
`1.
`
`“persistently storing . . . a tamper proof format written to a storage
`element on the integrated device that is unable to be subsequently
`altered” (730:1, 15) / “a tamper proof format written to the memory
`that is unable to be subsequently altered” (730:8)1
`
`Samsung’s Proposed Construction
`“permanently storing in a form that
`prevents subsequent writing to store new
`data or modifications to existing data”
`
`
`
`
`
`
`
`
`Proxense’s Proposed Construction
`No construction necessary or possible, plain
`and ordinary meaning.
`
`
`
`A format for storing data that cannot be
`changed unless it is deleted and replaced.
`
`
`
`The parties’ substantive disagreement regarding this term is the extent to which data stored
`
`in a persistent storage medium in a tamper proof format can be altered. Proxense proposes the
`
`data may be deleted and replaced, while Samsung proposes no subsequent change can be made.
`
`Proxense’s construction is divorced from the intrinsic record and is directly counter to arguments
`
`made during prosecution.
`
`First, a simple reading of the claims renders Proxense’s construction untenable. In
`
`particular, claim 1 of the ’730 Patent claims “persistently storing biometric data . . . in a tamper
`
`proof format . . . that is unable to be subsequently altered.” (emphasis added). Proxense’s
`
`construction would fundamentally break this claim, simultaneously requiring the biometric data to
`
`
`1 Proxense has also proposed subset terms “Persistently storing” (730:1,15) (905:1)(989:1) / “Persistently stores”
`(905:9,13)(989:7) / “persistent storage” (989:5) and “tamper proof” (730:8). Samsung’s proposed construction is
`the same.
`
`
`
`
`3
`
`Patent Owner Exhibit 2009, Page 7 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 8 of 33
`
`
`
`both be “unable to be subsequently altered” and able to be “deleted and replaced.” See Trs. of
`
`Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1366–67 (Fed. Cir. 2016) (holding that claims
`
`that were internally contradictory were invalid as indefinite). Likewise, it is incongruous for the
`
`biometric data to both be persistently or permanently stored but be deleted and replaced. See ’730
`
`Patent2 at 1:60 (“a biometric key persistently (or permanently) stores a code”); accord ’730 Patent
`
`at Abstract, ’905 Patent at 2:33-34; ’989 Patent at 2:48-49.
`
`Further, there is no discussion in the specification that “tamper proof” encompasses
`
`deleting and replacing. Instead, the patents describe Tamper Proofing “i.e., allows reads of stored
`
`data, but not writes to store new data or modify existing data.” See ’905 Patent at 5:31-37; ’989
`
`Patent at 5:45-55; SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1200 (Fed. Cir. 2013) (“i.e.”
`
`denotes patentee was acting as lexicographer). Allowing deletion of stored data, i.e. modifying
`
`existing data, or replacement, i.e. writing to store new data, are both explicitly considered by the
`
`patents and excluded.
`
`In contrast, Samsung’s construction is in accord with the claim language and the patentee’s
`
`lexicography. Samsung’s construction incorporates the parenthetical explanation of “persistently”
`
`as “permanently” in language a juror can understand. This likewise aligns with the patentee’s
`
`lexicography regarding tamper proof. Further, during prosecution, the applicant explained data
`
`was intended to never change and only be replaced in the event of loss of the memory storage
`
`medium. In attempting to distinguish from prior art, the applicant explained “storing biometric
`
`data during enrollment which ‘is normally not repeated unless the fob is lost or damaged,’ but it
`
`can be repeated thereby altering the stored biometric data. This is patentably distinct from ‘storing
`
`
`2 Samsung cites to the patents-in-suit as exhibits of Proxense’s complaint: Exhibit 1(Dkt. 1-2) “’730 Patent;”
`Exhibit 2 (Dkt. 1-3) “’905 Patent;” Exhibit 3 (Dkt. 1-4) “’989 Patent;” Exhibit 4 (Dkt. 1-5) “’188 Patent;” and
`Exhibit 5 (Dkt. 1-6) “’700 Patent.”
`
`
`
`
`4
`
`Patent Owner Exhibit 2009, Page 8 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 9 of 33
`
`
`
`biometric data of the user and a plurality of codes and other values . . . written to a storage element
`
`on the integrated device that is unable to be subsequently altered,’ as claimed.” Declaration of
`
`Marissa Ducca (“Ducca Decl.”) Ex. 4 (’730 Patent History, Applicant Argument/Remarks Made
`
`in Amendment (2011-07-05) at 9-10). The applicant continued, “a method allowing subsequent
`
`alteration of stored biometric data, [prior art] does not disclose ‘persistently store biometric data.
`
`. .’” Id.
`
`2.
`
`“device ID code” (730:1,3,8,10,12,15) / “ID code” (905:1-3, 8-11, 13-
`14) (989:1-2, 4-8)
`
`Samsung’s Proposed Construction
`“the device-specific code that identifies the
`device”
`
`
`
`Proxense’s Proposed Construction
`A unique code identifying a device.
`
`
`
`
`
`
`
`The device ID code described in various ways by the patents all describe a device-specific
`
`code rather than merely a unique code that can identify a device. This distinction can be seen
`
`throughout the specification and was drawn specifically in prosecution to distinguish from the
`
`prior art. Beyond not capturing this distinction, Proxense’s construction merely incorporates
`
`language from elsewhere in the claim.
`
`In distinguishing prior art, the applicant explained in significant depth what is meant by
`
`the device ID code. The applicant specifically distinguished “mere[] user-specific data such as
`
`names, public keys and CRCs” in contrast to “device-specific data . . . much less ‘a list of codes
`
`identifying legitimate integrated devices.’” Ducca Decl. Ex. 4 (’730 Patent History, Applicant
`
`Argument/Remarks Made in Amendment (2011-01-03) at 10). While both the public keys and
`
`CRCs distinguished by the applicant may uniquely identify a device by association with “the
`
`personal device’s private key” they are not “device-specific” because they only incidentally
`
`
`
`
`5
`
`Patent Owner Exhibit 2009, Page 9 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 10 of 33
`
`
`
`identify a device by being specific to the user of the device. See id. The applicant took this same
`
`position across all patents in the family for nearly a decade. See Ducca Decl. Ex. 5 (’989 Patent
`
`History, Applicant Argument/Remarks Made in Amendment (2019-02-11) at 8-9 (distinguishing
`
`an “account number” because it was “for the user” and therefore not “an ID code unique to the
`
`device.”)).
`
`The specifications further provide that the device ID code should be understood as device-
`
`specific. In particular, the specification provides two methods for assigning or creating these
`
`codes. The code may be assigned “during the manufacturing process” or “the trusted authority
`
`can provide the code to biometric key 100 to be stored therein.” ’730 Patent at 4:10-12, 43-49.
`
`Both these methods are focused on the device and may not include a user at all, since, for example,
`
`manufacturing occurs before the device has a user.
`
`Further, Proxense’s construction introduces inappropriate redundancy. For example, claim
`
`1 of the ’730 Patent states “other data value comprising a device ID code uniquely identifying the
`
`integrated device.” Incorporating Proxense’s construction would repeat “unique” and “identifying
`
`the [] device.” As such, Proxense’s construction effectively reads this term out of the claim
`
`entirely.
`
`3.
`
`“third-party trusted authority” (730:1, 8, 12, 15)
`(905:1,9,10,13)(989:1,4-7)
`
`Samsung’s Proposed Construction
`No construction needed
`
`
`
`Proxense’s Proposed Construction
`A third component that provides a second
`level of authentication.
`
`
`
`Proxense’s construction fails to capture the understanding of a POSITA. In particular,
`
`Proxense’s construction fails to capture the understanding of a “third party.” Further, the latter
`
`portion of Proxense’s construction is redundant.
`
`
`
`
`6
`
`Patent Owner Exhibit 2009, Page 10 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 11 of 33
`
`
`
`First, Proxense’s construction fails to align with the intrinsic evidence of the ’730 Patent
`
`regarding “third party.” The intrinsic evidence does not suggest a party or component numbered
`
`after a second party. Instead, the intrinsic evidence suggests “third party” relates to a functional,
`
`rather than a numeric or ordered, relationship between entities. During prosecution, the applicant
`
`explained a “user []prov[ing] to the same institution that authenticates the fingerprint information
`
`that the user is who he purports to be” does not satisfy the “third party” limitation. Ducca Decl.
`
`Ex. 4 (’730 Patent History, Applicant Arguments/Remarks Made in an Amendment (2010-02-25)
`
`at 8). The applicant emphasized the prior art “disclose[d] two parties: the user and the institution.”
`
`Id.
`
`Specifically, the intrinsic evidence suggests “third party” relates to a specific class of entity
`
`occupying the aforementioned particular relationship. Indeed, the specification explains the agent
`
`for the trusted authority “can be, for example, a government official, a notary, and/or an employee
`
`of a third party which operates the trusted key authority, or another form of witness.” ’730 Patent
`
`at 6:32-41. This “witness” role further aligns with prosecution history where the applicant
`
`explained “sending a code to a receiver of a door that the user is trying to access” does not
`
`satisfy the “third party” limitation. Ducca Decl. Ex. 4 (’730 Patent History, Amendment/Req.
`
`Reconsideration – After non-Final Rejection(2010-09-07) at 8) (emphasis in the original). The
`
`door in this example is one of the two interested parties to the “access” transaction and thus not a
`
`“witness.” See Nielson Decl. at ¶¶ 70-72, 74.
`
`Extrinsic evidence further affirms this reading of the ’730 Patent family. See Nielson Decl.
`
`at ¶ 73. Common industry use of “trusted third party” identifies “third party” as an entity with a
`
`responsibility separate from executing the transaction itself: “an entity responsible for ensuring
`
`
`
`
`7
`
`Patent Owner Exhibit 2009, Page 11 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 12 of 33
`
`
`
`key distribution in a safe and reliable manner.” Ducca Decl. Ex. 3 at 3 (Cryptographic Libraries
`
`for Developers).
`
`Further, the latter portion of Proxense’s construction, “that provides a second level of
`
`authentication,” is redundant in light of the claim language itself. Claim 1 already states
`
`“responsive to a determination that the scan data matches the biometric data, wirelessly sending
`
`one or more codes . . . for authentication by an agent.” This explains that the agent provides a
`
`“second level of authentication” thereby rendering Proxense’s construction unnecessary.
`
`4.
`
`“receiving an access message from the agent allowing the user access
`to an application” (730:1,8,15) / “receiving an access message from the
`agent” (730:12) / “an access message from the third-party trusted
`authority-indicating that the third- party trusted authority
`successfully authenticated the ID code” / (905:1, 9, 13) / “a transaction
`being completed responsive to the third-party trusted authority
`successfully authenticating the ID code” (989:1, 5) / “a transaction is
`completed responsive to successful authentication of the ID code”
`(989:7)3
`
`Proxense’s Proposed Construction
`No construction necessary or possible, plain
`and ordinary meaning.
`
` A
`
`
`
` notification.
`
`Samsung’s Proposed Construction
`“receiving a signal from the agent
`permitting a user to access an application” /
`“receiving a signal from the agent
`permitting a user to access”
`
`
`
`
`
`The parties’ disagreement is with the functionality rather than the form of the “access
`
`message.” Proxense proposes the access message act as a notification of access, while Samsung
`
`proposes “access message” itself permits access. Samsung’s construction clarifies this
`
`functionality and draws from the specification, while in contrast, Proxense’s construction conflicts
`
`with the claim language and finds no support in the intrinsic record.
`
`
`3 Proxense has also proposed sub-terms “access message” (all claims) and “a signal permitting a user to access.”
`Samsung’s proposed term is the same.
`
`
`
`
`
`8
`
`Patent Owner Exhibit 2009, Page 12 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 13 of 33
`
`
`
`Claim 1 of each of the ’730 family patents provides that upon the ID code being verified,
`
`the application then provides the user access upon receipt of a communication indicating
`
`successful authentication. Each claim requires that information regarding the authentication at the
`
`third party agent be communicated to the application. The application then allows a user access
`
`based on authentication of the user and the user device. The ’730 and ’905 Patents describe this
`
`communication as an “access message” and the ’989 Patent describes a “transaction being
`
`completed” but each has the same functionality, namely to permit access.
`
`This likewise aligns with the specification. The specification only discusses an “access
`
`message” in one location and makes clear the “access message” is intended to allow access, not
`
`merely to notify. ’730 Patent at 7:18-19 (“the trusted key authority sends an access message to the
`
`application to allow user access”). Because the patent describes “access message” in only one
`
`manner in the entire specification, that description should weigh heavily in construction.
`
`Proxense’s construction of “a notification” finds no support in the specification, as
`
`“notification” is not found anywhere in the specification, and suggests a dramatically different
`
`functionality. Rather than allowing access as claimed, a notification is used to inform a user of an
`
`occurrence. Here because the “access message” is sent to an application rather than a user, a
`
`“notification” does not make sense. ’730 Patent at 7:18-19 (“the trusted key authority sends an
`
`access message to the application to allow user access”). As such, a POSITA would not have
`
`understood “access message” to be “a notification.”
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`Patent Owner Exhibit 2009, Page 13 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 14 of 33
`
`
`
`5.
`
`“wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (730:5)
`
`Samsung’s Proposed Construction
`Invalid under §112 ¶4
`
`
`
`Proxense’s Proposed Construction
`No construction necessary or possible, plain
`and ordinary meaning.
`
`
`
`
`
`Dependent claim 5 is invalid under §112 ¶ 4 for failing to further limit independent claim
`
`1 but instead broadening the closed Markush grouping set forth in claim 1.4 In particular the
`
`Markush group “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” does not include anything “based on a fingerprint scan by the user.” Because the
`
`Markush group is closed, adding “a fingerprint scan” expands rather than further limits claim 1 in
`
`opposition to §112 ¶ 4 and is therefore invalid.
`
`As a general rule, the use of a Markush group and the language “consisting of” provides a
`
`strong presumption of a closed group. Multilayer Stretch, 831 F.3d at 1358 (“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.’”).
`
`Both factors are present in claim 1 and there is nothing in the specification or prosecution that
`
`would alter the very strong presumption that this group is closed.
`
`A “fingerprint scan” is not a subpart or otherwise included in any of the terms in the
`
`Markush group in claim 1. Neither “a palm print” or “hand geometry” is a finger print nor do they
`
`include a fingerprint. This is confirmed in the specification where “palm print” and “hand
`
`
`4 See Pfizer, 457 F.3d at 1292 (otherwise patentable subject matter may still be invalid for failing to follow the
`requirements of §112 ¶4); Huawei Techs, 2017 WL 2190103, at *28 (invalidating claim under §112 ¶4 at claim
`construction).
`
`
`
`
`10
`
`Patent Owner Exhibit 2009, Page 14 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 15 of 33
`
`
`
`geometry” are described as “other embodiments” from a fingerprint. See ’730 Patent at 3:4-11
`
`(describing the use of “a fingerprint, [or] other embodiments . . . [f]or example, the biometric data
`
`can include a palm print . . . hand geometry recognition.”). As such, no argument can be made
`
`that claim 5 provides further limitation to a subset of one of the options set forth in claim 1.
`
`B.
`
`The ’188/’700 patent family
`
`1.
`
` “hybrid device” (188:1-12,15,20) (700:1-13, 16)
`
`Samsung’s Proposed Construction
`Indefinite
`
`Proxense’s Proposed Construction
`A device comprising an integrated personal
`digital key (PDK) and an integrated receiver-
`decoder circuit.
`
`
`
`The term “hybrid device” is indefinite under 35 U.S.C. §112, ¶ 2 because it does not,
`
`“viewed in light of the specification and prosecution history, inform those skilled in the art about
`
`the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910. Because “hybrid
`
`device” is not a term of art, it does not have an ordinary meaning in the field to a POSITA. See
`
`Nielson Decl. at ¶ 77. “When a term ‘has no ordinary and customary meaning,’ it is a ‘coined
`
`term,’ raising the question of whether the intrinsic evidence provides objective boundaries to the
`
`scope of the term.” IQASR LLC v. Wendt Corp., 825 F. App’x 900, 904 (Fed. Cir. 2020) (citations
`
`omitted). Accordingly, a POSITA must consider the disclosure of the intrinsic record in order to
`
`derive its meaning. Id. (“The importance of the intrinsic evidence reaches its zenith in cases like
`
`this when the district court finds from the extrinsic evidence that the term lacks an ordinary
`
`meaning.”); see also Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1351 (Fed.
`
`Cir. 2019) (for “a coined term that has no ordinary meaning in the industry,” the court should “look
`
`first to the specification, followed by the prosecution history, to determine the meaning” of the
`
`term). But the disclosures regarding hybrid device in the claims and the specification are internally
`
`
`
`
`11
`
`Patent Owner Exhibit 2009, Page 15 of 33
`
`

`

`Case 6:21-cv-00210-ADA Document 33 Filed 10/28/21 Page 16 of 33
`
`
`
`inconsistent and cannot be fully reconciled. Therefore, the term “hybrid device” is indefinite. See,
`
`e.g., Competitive Techs., Inc. v. Fujitsu Ltd., 185 Fed. Appx. 958, 965-66 (Fed. Cir. 2006)
`
`(“Because the ‘address means’ limitation of claim 5 requires ISA structures, and the ‘sustain
`
`means’ limitation of that same claim excludes ISA structures, a person of ordinary skill in the art
`
`would be unable to determine the scope of the claims. They are internally inconsistent.”).
`
`The abstract describes multiple modes of operation for a hybrid device:
`
`The hybrid device operates in one of several modes including, PDK only,
`RDC only, or PDK and RDC. This allows a variety of system
`configurations for mixed operation including: PDK/RDC, RDC/RDC or
`PDK/PDK.
`
`
`’188 Patent5 at Abstract.
`
`This disclosure does not clarify if a hybrid device is required to be capable of operating in
`
`all three of the modes (PDK only, RDC only, or PDK and RDC) or can still be a hybrid device if
`
`it operates in only a subset of the described modes. See Nielson Decl. at ¶¶ 80-81. Similarly, it is
`
`unclear if “mixed operation” requires all three modes of operation, or if a subset would qualify. In
`
`particular, some of the modes listed here have only one component (either a RDC or a PDK), while
`
`the third mode has both (PDK/RDC). This makes it unclear if the hybrid device needs to consist
`
`of both RDC and PDK, or can consist of only one of RDC and PDK. See Nielson Decl. at ¶¶ 82-
`
`83.
`
`The disclosure in the specification is similarly confusing and does not clarify these issues:
`
`The hybrid device 1102 allows for many different configurations and
`operations of the s