Case 6:21-cv-00210-ADA Document 149 Filed 12/28/22 Page 1 of 42
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`PROXENSE, LLC,
` Plaintiff,
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`-v-
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`SAMSUNG ELECTRONICS CO., LTD.
`AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
` Defendants.
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`6:21-CV-210-ADA
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`MEMORANDUM IN SUPPORT OF CLAIM CONSTRUCTION ORDER
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`Before the Court are the parties’ claim construction briefs. Plaintiff Proxense, LLC
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`(hereinafter “Proxense”) submitted its Complaint for Patent Infringement and Demand for Jury
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`Trial on April 23, 2021 (ECF No. 1). Defendants Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (collectively “Samsung”) submitted the opening Markman Brief on
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`October 28, 2021, and the Reply Markman Brief on December 6, 2021. (ECF Nos. 33, 37,
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`respectively). Plaintiff submitted its response on November 17, 2021, and sur-reply brief (ECF
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`Nos. 35, 39, respectively). The Court held the Markman hearing on December 27, 2021. (ECF No.
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`42). The Court provides this memorandum in support of its Claim Construction Order issued on
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`January 18, 2022, and hereby incorporates-by-reference the claim construction hearing and
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`transcript as well as the demonstrative slides presented by the parties during the hearing. See
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`Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also Teva Pharm.
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`USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
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`IV.
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`BACKGROUND ................................................................................................................ 4
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`LEGAL PRINCIPLES ........................................................................................................ 4
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`A.
`B.
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`Claim Construction ................................................................................................ 4
`Departing from the Ordinary Meaning of a Claim Term ...................................... 7
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`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 8
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`CONSTRUCTION OF DISPUTED TERMS ..................................................................... 9
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Term #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).” ........................................................................... 10
`a. The Parties’ Positions ................................................................................... 11
`b. The Court’s Analysis .................................................................................... 12
`Term #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)............................................................................................. 15
`a. The Parties’ Positions ................................................................................... 16
`b. The Court’s Analysis .................................................................................... 17
`Term #3: “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) ................................................................................................................. 18
`a. The Parties’ Positions ................................................................................... 19
`b. The Court’s Analysis .................................................................................... 20
`Term #4: “access message” (730:1, 8, 12, 15; 905:1, 9, 13) ............................... 20
`a. The Parties’ Positions ................................................................................... 20
`b. The Court’s Analysis .................................................................................... 21
`Term #5: “wherein the biometric data and the scan data are both based on a
`fingerprint scan by the user” (730:5) ................................................................... 22
`a. The Parties’ Positions ................................................................................... 22
`b. The Court’s Analysis .................................................................................... 23
`Term #6: “hybrid device” (188:1-2, 15, 20; 700:1-13, 16) ................................. 25
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`G.
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`H.
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`I.
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`J.
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`K.
`L.
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`a. The Parties’ Positions ................................................................................... 25
`b. The Court’s Analysis .................................................................................... 26
`Term #7: “personal digital key” (188:1, 10; 700:1, 11) ...................................... 27
`a. The Parties’ Positions ................................................................................... 28
`b. The Court’s Analysis .................................................................................... 30
`Term #8: “biometric information” (188:1, 4, 10, 13; 700:4, 14)......................... 32
`a. The Parties’ Positions ................................................................................... 32
`b. The Court’s Analysis .................................................................................... 33
`Term #9: “financial information” (188:5, 6, 14, 17; 700:1, 5, 6, 11, 15, 18) ...... 34
`a. The Parties’ Positions ................................................................................... 35
`b. The Court’s Analysis .................................................................................... 35
`Term #10: “receiver-decoder circuit” (188: 1, 10; 700:1, 11) ............................. 36
`a. The Parties’ Positions ................................................................................... 36
`b. The Court’s Analysis .................................................................................... 38
`Term #11: “inheritance information” (188: 9, 18; 700: 9, 19) ............................ 38
`Term #12: “enablement signal” (188: 10-12, 17; 700: 11-13,18) ....................... 40
`a. The Parties’ Positions ................................................................................... 41
`b. The Court’s Analysis .................................................................................... 41
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`V.
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`CONCLUSION ................................................................................................................. 41
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`I.
`
`BACKGROUND
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`Proxense asserts that Samsung infringes claims of U.S. Patent Nos. 8,352,730 (the “’730
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`patent”), 9,049,188 (the “’188 patent”), 9,235,700 (the “’700 patent”), 9,298,905 (the “’905
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`patent”), and 10,698,989 (the “’989 patent”) (collectively, the “Asserted Patents”).
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`II.
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`LEGAL PRINCIPLES
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`A. Claim Construction
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
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`381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
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`considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
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`858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d
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`1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
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`specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
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`861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
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`term is construed according to its ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
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`at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
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`Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (quotation marks omitted)
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`(“There is a heavy presumption that claim terms carry their accustomed meaning in the relevant
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`community at the relevant time.”) cert. granted, judgment vacated, 135 S. Ct. 1846 (2015).
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`“The claim construction inquiry . . . begins and ends in all cases with the actual words of
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`the claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
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`“[I]n all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
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`Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
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`Cir. 1998)) overruled on other grounds by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed.
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`Cir. 2015). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
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`1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
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`claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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`terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
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`adds a limitation to an independent claim, it is presumed that the independent claim does not
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`include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
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`299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms,
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`give a claim term a different meaning than the term would otherwise possess, or disclaim or
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`disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s
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`lexicography governs. Id.
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`The specification may also resolve ambiguous claim terms “where the ordinary and
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`accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of
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`the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. But,
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`“‘[a]lthough the specification may aid the court in interpreting the meaning of disputed claim
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`language, particular embodiments and examples appearing in the specification will not generally
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`be read into the claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir.
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`1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988));
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`see also Phillips, 415 F.3d at 1323. “[I]t is improper to read limitations from a preferred
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`embodiment described in the specification—even if it is the only embodiment—into the claims
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`absent a clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because, like the specification, the prosecution history provides evidence of how the U.S. Patent
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`and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
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`However, “because the prosecution history represents an ongoing negotiation between the PTO
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`and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
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`specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic
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`Alts., Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution history
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`may be “unhelpful as an interpretive resource”).
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`Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic
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`record in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at
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`1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a
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`court understand the underlying technology and the manner in which one skilled in the art might
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`use claim terms, but technical dictionaries and treatises may provide definitions that are too broad
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`or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition are not helpful to a court. Id. Extrinsic evidence is “less reliable
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`than the patent and its prosecution history in determining how to read claim terms.” Id. The
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`Supreme Court has explained the role of extrinsic evidence in claim construction:
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`In some cases, however, the district court will need to look beyond the patent’s
`intrinsic evidence and to consult extrinsic evidence in order to understand, for
`example, the background science or the meaning of a term in the relevant art during
`the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
`(a patent may be “so interspersed with technical terms and terms of art that the
`testimony of scientific witnesses is indispensable to a correct understanding of its
`meaning”). In cases where those subsidiary facts are in dispute, courts will need to
`make subsidiary factual findings about that extrinsic evidence. These are the
`“evidentiary underpinnings” of claim construction that we discussed in Markman,
`and this subsidiary factfinding must be reviewed for clear error on appeal.
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`Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
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`B.
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`Departing from the Ordinary Meaning of a Claim Term
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`There are “only two exceptions to [the] general rule” that claim terms are construed
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`according to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts
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`as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either
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`in the specification or during prosecution.”1 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d
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`1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
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`1365 (Fed. Cir. 2012)); see also GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (“[T]he specification and prosecution history only compel departure from the
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`plain meaning in two instances: lexicography and disavowal.”). The standards for finding
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`lexicography or disavowal are “exacting.” GE Lighting Sols., 750 F.3d at 1309.
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`To act as his own lexicographer, the patentee must “clearly set forth a definition of the
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`disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
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`1 Some cases have characterized other principles of claim construction as “exceptions” to the
`general rule, such as the statutory requirement that a means-plus-function term is construed to
`cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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`F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
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`“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
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`To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
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`specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
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`Corp. v. Bos. Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at 1366
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`(“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a
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`claim term by including in the specification expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
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`to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
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`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`It is well established that patents are interpreted from the perspective of one of ordinary
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`skill in the art (“POSITA”). See Phillips, 415 F.3d at 1313 (“[T]he ordinary and customary
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`meaning of a claim term is the meaning that the term would have to a person of ordinary skill in
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`the art in question at the time of the invention, i.e., as of the effective filing date of the patent
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`application.”). The Federal Circuit has advised that the “[f]actors that may be considered in
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`determining the level of skill in the art include: (1) the educational level of the inventors; (2) the
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`type of problems encountered in the art; (3) prior art solutions to those problems; (4) the rapidity
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`with which innovations are made; (5) sophistication of the technology; and (6) education level of
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`active workers in the field.” Env’tl Designs, Ltd. v. Union Oil Co. of California, 713 F.2d 693, 696
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`(Fed. Cir. 1983). “These factors are not exhaustive but are merely a guide to determining the level
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`of ordinary skill in the art.” Daiichi Sankyo Co. Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed.
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`Cir. 2007).
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`The parties do not dispute the qualifications of a POSITA, at least not at this stage in the
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`case. Regarding the Asserted Patents, Samsung’s expert, Dr. Seth James Nielson, opines that a
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`POSITA would have “a bachelor’s degree in computer or electrical engineering (or an equivalent
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`degree) with at least three years of experience in the field of encryption and security (or an
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`equivalent). This level of skill is approximate, and more experience would compensate for less
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`formal education, and vice versa.” ECF No. 33-2 ¶ 64. Proxense does not rely on an expert for its
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`claim construction briefing, nor does it dispute Samsung’s level of skill. See generally ECF No.
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`33, 39.
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`Given that the parties do not dispute the qualifications of a POSITA at this time, and
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`considering the factors that may be considered in determining the level of skill in the art, the Court
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`finds that a person of ordinary skill in the art is as defined by Samsung’s expert, as discussed above
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`for the Asserted Patents.
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`IV. CONSTRUCTION OF DISPUTED TERMS
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`The parties’ dispute the meaning and scope of twelve terms or phrases in the Asserted
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`Patents. Each dispute is addressed below.
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`The inventions set forth in the Asserted Patents (U.S. Patent Nos. 8,352,730, 9,298,905,
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`and 10,698,989 (“’730 Patent Family” or “Family A”) and U.S. Patent Nos. 9,049,188 and
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`9,235,700 (the “’188 Patent Family” or “Family B”) allow users to carry, control, and protect their
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`own personal data on devices like mobile phones, which allows for secure financial transactions
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`using those devices. Biometric authentication and use of remote (e.g., web-based) applications
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`requires an element of trust between the user and the service provider. The user must trust that the
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`service provider can and will protect and will not abuse personal data. Utilizing online services,
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`such as social media, office, productivity, financial, travel, and other services, requires the user
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`trust the service provider to safeguard the personally identifying information a user provides in
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`connection with using the service. Such personally identifying information could include biometric
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`data used, for example, as a means of verifying identity of an authorized user. There exists a need
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`to safeguard and limit the information that is actually shared with multiple service providers. The
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`inventions of the Asserted Patents address such issues by providing ways to use biometric
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`information securely to access and/or utilize private, sensitive information.
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`Family A patents are directed to inventions ensuring biometric data privacy while enabling
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`biometric authentication. The claimed inventions improve on the prior art by providing for
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`multiple levels of authentication, such that a user is verified as properly in possession of a
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`biometric access instrumentality, and also biometrically verified as authorized to access sensitive
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`and/or secure resources. Family B patents are directed to inventions that improve the capabilities
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`and flexible arrangements of multiple devices and instrumentalities that are used to provide means
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`of authorized access to access sensitive and/or secure resources while retaining security.
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`A. Term #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).”
`
`Plaintiff’s Proposed
`Construction
`
`No construction
`necessary or possible,
`plain and ordinary
`meaning
`
`Defendant’s
`Proposed
`Construction
`Permanently
`storing in a form
`that prevents
`subsequent
`writing to store
`new data or
`modifications to
`existing data
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`Court’s Final
`Construction
`
`No construction
`necessary or possible,
`plain and ordinary
`meaning
`
`
`
`Claim Term
`
`“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).
`
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`The
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`’730 Patent,
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`titled
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`“BIOMETRIC PERSONAL DATA KEY
`
`(PDK)
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`AUTHENTICATION,” issued on January 8, 2013, and was filed on December 20, 2005. The ’730
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`Patent “relates generally to computerized authentication, and more specifically, to an
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`authentication responsive to biometric verification of a user being authenticated.” ’730 Patent at
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`1:15–18. The Abstract of the ’730 Patent states:
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`Systems and methods are provided for an integrated device that
`persistently (or permanently) stores biometric data for a user in a
`tamper-resistant format. Subsequently, scan data collected from a
`user (e.g., a finger-print) can be compared against the biometric
`data. Once the user has been verified by the integrated device, a code
`can be wirelessly transmitted for authentication. The authentication
`module sends the code to a trusted key authority. The trusted key
`authority checks a list of enrolled integrated devices for a match. If
`there is a match, the authentication module sends a message to an
`application to allow access by the user. The trusted key authority
`also stores a profile associated with the code. The profile can contain
`user information such as name, age, account numbers, preferences,
`etc. and can also describe the status of the integrated device.
`
`
`Claim 1 of the ’730 Patent is an illustrative claim and recites the following step (disputed
`
`terms in italics):
`
`1.A method for verifying a user during authentication of an
`integrated device, comprising the steps of:
`
`
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`persistently storing biometric data of the user and a plurality
`of codes and other data values comprising a device ID code
`uniquely identifying the integrated device and a secret
`decryption value in a tamper proof format written to a storage
`element on the integrated device that is unable to be
`subsequently altered; 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;.
`
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`a. The Parties’ Positions
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`
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`Samsung argues that the Court should find the construction to be “permanently storing in
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`a form that prevents subsequent writing to store new data or modifications to existing data.” ECF
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`No. 33 at 3. Samsung relies on the language of Claim 1 of the ’730 Patent that states, “unable to
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`be subsequently altered.” Id. Samsung argues that Proxense’s construction of plain and ordinary
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`meaning would “fundamentally break this claim” because it would “simultaneously requir[e] the
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`biometric data to be “both be ‘unable to be subsequently altered’ and able to be ‘deleted and
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`replaced.’” Id. at 3–4. Specifically, Samsung contends that “it is incongruous for the biometric
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`data to both be persistently or permanently stored but be deleted and replaced.” Id. at 4.
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`Proxense responds that “Samsung’s proposed construction for these two phrases,
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`‘permanently storing in a form that prevents subsequent writing to store new data or modifications
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`to existing data’ simply rephrases the plain and ordinary meaning of the existing claim term ‘that
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`is unable to be subsequently altered.’” ECF No. 35 at 4. According to Proxense, this proposed
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`construction “adds nothing but unnecessary confusion by pulling in the distinct terms ‘persistently
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`storing’ and ‘tamper proof’ as though they also mean ‘unable to be subsequently altered.’” Id.
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`Proxense further argues that the limitation “that is unable to be subsequently altered” is in plain
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`English and uses no terms of art or specially defined terms. Id. Thus, Proxense contends that the
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`claim language requires storage on a medium that is persistent in a tamper proof format, which
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`tamper proofing has the additional specific attribute of not being able to be subsequently altered
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`once in memory. Id.
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`b. The Court’s Analysis
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`As a preliminary matter, in its opening brief Samsung did not request a construction of
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`“persistently storing,” “persistent storage,” or “persistently stores.” Samsung justifies its failure to
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`brief “persistently storing” as a distinct term by claiming that it “would waste space and time” to
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`brief this term, and relies on the inapposite case SIPCO, LLC v. Amazon.com, Inc. for the
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`proposition that it would be “more natural” to construe the “larger term.” ECF No. 37 at 2. But
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`SIPCO dealt with a wholly different and far simpler issue: whether the court would construe the
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`term “‘remote devices’ or the larger term ‘plurality of remote devices.’” SIPCO, LLC v.
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`Amazon.com, Inc., No. 2:08-CV-359-JRG, 2012 WL 5195942, at *10 (E.D. Tex. Oct. 19, 2012).
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`SIPCO does not address the issue created by Samsung at all. The long phrases Samsung offers for
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`construction contain several distinct claim terms like “tamper proof format” and “unable to be
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`subsequently altered,” which do not appear in claims of other asserted patents. Samsung is trying
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`to give three or more distinct claim terms identical, redundant constructions across several patents.
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`This is contrary to fundamental tenets of claim construction and represents an end-run around the
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`limitations set by this Court on claim terms to be construed. Moreover, in its opening brief,
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`Samsung only listed claims 1, 8, and 15 of the 730 Patent when requesting construction of these
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`long phrases. ECF No. 33 at 3. Though Samsung mentions “subset terms” in a footnote, it provides
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`no arguments in support nor any request for those terms to be construed as they relate to the other
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`asserted patents. Id. n.1. Accordingly, Samsung has not properly submitted those terms for
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`construction.
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`The Court finds that the “Persistently storing . . . a tamper proof format written to a storage
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`element on the integrated device that is unable to be subsequently altered” and “a tamper proof
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`format written to the memory that is unable to be subsequently altered” terms should be given their
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`plain and ordinary meaning. Defendants’ construction improperly adds “permanently storing in a
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`form that prevents subsequent writing”, which would render the term “unable to be subsequently
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`altered” meaningless. Critically, there is no indication that the patentee intended “persistently
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`storing” and “tamper proof” to mean “unable to be subsequently altered”, but Defendants’
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`construction would equate those terms.
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`A review of the intrinsic evidence reveals why Samsung’s proposed construction of these
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`lengthy phrases is improper. The specification clearly defines “persistently storing” as storing in
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`non-volatile memory. ’730 Pat., 4:29–36 (“Persistent storage 226 persistently stores biometric data
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`. . . . Persistent storage 226 can include, for example, a ROM element, a flash memory element, or
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`any other type of non-volatile storage element.”) (emphasis added). Furthermore, only in claim 1
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`of the ’730 Patent does “persistently storing” co-occur with “tamper proof format” and “unable to
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`be subsequently altered.” Claim 8 of the ’730 Patent does not recite “persistently storing,”
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`“persistent storage”, or other similar words. Additionally, none of the claims of the ’905 and ’989
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`Patents recite a “tamper proof format” or “unable to be subsequently altered.” A single
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`cooccurrence in claim 1 of the ’730 Patent does not justify equating “persistent storage” to mean
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`“unable to be subsequently altered” in claims of the ’905 and ’989 Patents, as Samsung attempts
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`to do.
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`Defendants’ limitation is only from one embodiment, and it should not be imported into
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`the definition. Specifically, neither “tamper proofing” nor “persistent storage” are limited by the
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`specification in the way Samsung argues. “In one embodiment, at least some of persistent storage
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`226 is a memory element that can be written to once but cannot subsequently be altered.” ’730
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`Pat., 4:31–33 (emphasis added). Even in this single embodiment, which Samsung tries to read as
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`the sole embodiment, only some, not all, “persistent storage” is so limited that it “cannot
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`subsequently be altered.” Other persistent storage, therefore, can be subsequently altered even in
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`this embodiment. Likewise, in this embodiment only, tamper-proofing prevents altering an
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`instance of stored data by adding to it or modifying it, such that features cannot be added to or
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`removed from saved biometric data. ’730 Pat., 4:38–41. Tamper proofing alone is not itself limited
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`in the specification to preventing deletion and replacement of stored data.
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`In sum, the Court finds that no construction is necessary for these terms and they will each
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