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`IPR2024-00782
`U.S. Patent No. 8,646,042
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`——————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`——————————
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`GOOGLE LLC,
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`Petitioner,
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`v.
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`PROXENSE, LLC,
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`Patent Owner.
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`——————————
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`Case No. IPR2024-00782
`U.S. Patent No. 8,646,042
`Filing Date: April 12, 2012
`Issue Date: February 4, 2014
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`
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`PETITIONER’S PRELIMINARY REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`INTRODUCTION
`Petitioner Google LLC submits this reply to address Patent Owner Proxense,
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`LLC’s contention that the term “enabling one or more of an application, a function,
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`and a service” should be expressly construed to require information be received from
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`a PDK in exchange for an access key. Paper 8, at 3. But before Proxense filed its
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`preliminary response, the Board already rejected Proxense’s nearly identical
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`arguments, found no explicit construction of this term necessary, and instituted
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`review in Microsoft Corporation v. Proxense, LLC, IPR2024-00573, Paper 11
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`(PTAB August 13, 2024). In that case, Proxense advanced the “same constructions,”
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`Paper 8, at 3, requesting the term “enabling one or more of an application, a function,
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`and a service” be construed to include an exchange for an access key. Despite
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`invoking a means-plus-function analysis for the first time, Proxense’s Patent Owner
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`Preliminary Response in this case, has not added any compelling new arguments or
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`evidence. Paper 5, at 13-29. The Board should reject Proxense’s proposed
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`construction, and institute review.
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`II. ARGUMENT
`A. The Enabling Term Is Not Subject to Means-Plus-Function
`Interpretation
`Proxense contends that the “enabling” term “may further be defined by way
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`of a means-plus-function analysis … if a ‘PDK’, ‘RDC’, or ‘enablement signal’ are
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`1
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`
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`[sic] not a sufficiently definite structure.” Paper 5, at 17 (emphasis added).1 Not once
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`had Proxense, in any of the related district court litigations, argued that any terms
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`required § 112, ¶ 6 analysis. See, e.g., Exs. 1024-1027. Indeed, they are not subject
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`to a means-plus-function analysis.
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`At the outset, none of the independent claims of the ’042 patent recite the
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`disputed limitation in “means-plus-function” or “step-plus-function” format. See,
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`e.g., ’042 patent, claim 1; claim 10. Nor does Proxense argue that PDK, RDC, and
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`enablement signal are nonce words used as a substitute for “means” or “step.”
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`Because the disputed claim limitations do not employ “means for” or “step for,” the
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`presumption is that each of the terms PDK, RDC, and enablement signal conveys
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`sufficiently definite structure or act and, thus, is not subject to § 112, ¶ 6. Dyfan,
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`LLC v. Target Corp., 28 F.4th 1360, 1367 (Fed. Cir. 2022).
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`The cases Proxense cited—HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d
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`1270 (Fed. Cir. 2012); Rain Computing v. Samsung Electronics America, 989 F.3d
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`1002 (Fed. Cir. 2021); and Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d
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`1 The Board already considered and rejected Proxense’s arguments that (1) the
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`court in Proxense v. Samsung previously construed the term “enabled,” Paper 5, at
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`13, 17; and (2) the ’042 patent implicitly defines “enabling” through several
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`examples in the specification, id., 14, 21-29. IPR2024-00573, Paper 11, at 8-15.
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`2
`
`
`
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`1361 (Fed. Cir. 2012)2—are all inapposite. In all those cases, the disputed claim
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`terms are expressly means-plus-function limitations. See, e.g., HTC Corp., 667 F.3d
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`at 1280 (The parties agreed that the term “arrangement for reactivating” was a
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`means-plus-function limitation.”); Rain Computing, 989 F.3d at 1006 (finding the
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`word “module” was a black box recitation of structure “as if the term ‘means’ had
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`been used”); Ergo Licensing, 673 F.3d at 1362 (finding the terms “control means”
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`and “programmable control means” were means-plus-function terms).
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`In contrast, the terms “PDK,” “RDC,” and “generating an enablement signal”
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`provide sufficiently definite structure or an act, because they are “not used as
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`‘generic terms or black box recitations of structure or abstractions.’” Dyfan, 28 F.4th
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`at 1368 (“Unlike in the mechanical arts, the specific structure of software code and
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`applications is partly defined by its function.”); see also Ex. 1009, 3-4. Thus, the
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`recitation of “enabling one or more of an application, a function, and a service” does
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`not change this. Contrary to Proxense’s argument, Paper 5, at 17-19, when a
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`“structure-connoting term … is coupled with a description of the [term’s] operation”
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`§ 112 ¶ 6 does not apply. Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311,
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`1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368. Additionally, Proxense’s argument
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`that “enablement signal” is “nothing more than the encrypted data sent from the PDK
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`2 Proxense cited to “303 F.3d 1361,” which appears to be a typographical error.
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`3
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`
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`to the RDC,” Paper 5, at 19, is contrary to the ’042 patent specification but more
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`importantly irrelevant, because claim 10 is a method claim, and “generating an
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`enablement signal” is an act that precludes treatment under § 112 ¶ 6. Because the
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`terms themselves connote sufficient structure or act, the presumption that § 112, ¶ 6
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`does not apply is determinative. Dyfan, 28 F.4th at 1366.
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`B. Even if Construed as Means-Plus-Function, the Algorithm is
`Broader Than Proxense Argues
`But, even if these terms are means-plus-function or steps-plus-function terms,
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`Proxense is wrong that “the only algorithm disclosed in the specification” is that of
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`“a service block … providing the corresponding access key.” Paper 5, at 19-20.
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`Notably, the ’042 patent discloses a hybrid device providing “additional
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`functionality” where an access key is not required, including using “credentials
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`(credit card, account information, etc.) … to enable a service,” using “cellular
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`service account information … to enable specific cellular services,” using “personal
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`ID” to identify an account, etc. ’042 patent, 15:58-61, 16:20-63; see also Ex. 1003,
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`¶¶90-93. The ’042 patent further explains that “[a]ny variety of different types of
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`[external] devices may be coupled to signal line 1406 [to an RDC] to receive the
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`authorization or enabling signal.” ’042 patent, 17:5-7; Fig. 14. Thus, the “algorithm”
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`is not limited to that of an “access key.”
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`4
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`C. The Board Need Not Construe the “Enabling” Term to Resolve the
`Controversy
`The Board also need not construe the term here because it is not necessary to
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`resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
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`803 (Fed. Cir. 1999). Regardless of the construction, Dua and Buer render the claims
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`obvious. As the Petition explains, Dua discloses receiving RFID transmission data
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`from the external tag (PDK) in exchange for information such as “communication
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`settings, media processing capabilities, and other parameters” (access key under
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`Proxense’s construction, as evidenced by its infringement contentions) for
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`establishing a wireless connection with the external device. See, e.g., Pet. 24-28; Ex.
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`1003, at ¶¶134-150; Ex. 1018. Buer similarly discloses receiving necessary
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`authentication information from the tag (PDK), including “cryptographic keys”
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`(access keys) to extract credentials to enable a wide variety of applications,
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`functions, or services on the hybrid device. See, e.g., Pet. 42-47, 56; Ex. 1003, at
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`¶¶185-203, 229-233. Thus, the Board should institute review and cancel all claims.
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`Dated: September 10, 2024
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`Respectfully submitted,
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`
`
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`
`
`/Erika H. Arner/
`Erika H. Arner
`Lead Counsel
`Reg. No. 57,540
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`5
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`IPR2024-00782 Petitioner’s Preliminary Reply
`U.S. Patent No. 8,646,042
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PRELIMINARY REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE is served on September 10, 2024, on counsel of record for the subject
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`patent via email to the address below.
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`proxense@hechtpartners.com
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`
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`Dated: September 10, 2024
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`
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`
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`David L. Hecht
`dhecht@hechtpartners.com
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`JAMES ZAK
`jzak@hechtpartners.com
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`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, New York 10017
`
`
`By: /Daniel E. Doku/
`Daniel E. Doku
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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