`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`APPLE INC.,
`Petitioner,
` v.
`PROXENSE, LLC,
`Patent Owner.
`____________________
`Case No. IPR2024-01398
`U.S. Patent No. 8,646,042
`____________________
`PETITION FOR INTER PARTES REVIEW
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`
`REQUIREMENTS FOR IPR .......................................................................... 1
`A. Grounds for Standing ............................................................................ 1
`B.
`Challenge and Relief Requested ........................................................... 1
`C.
`Claim Construction ............................................................................... 3
`1.
`Hybrid Device ............................................................................. 3
`2.
`Personal Digital Key (“PDK”) .................................................... 4
`3.
`Receiver-decoder circuit (“RDC”) .............................................. 5
`Level of Ordinary Skill in the Art ......................................................... 5
`D.
`THE ’042 PATENT ......................................................................................... 5
`A.
`Brief Description ................................................................................... 5
`B.
`Prosecution History ............................................................................... 6
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 7
`A.
`[GROUND 1A/1B] – Claims 1, 5-6, 8-11, and 13-14 are rendered
`obvious by Giobbi-157 and Giobbi-139 [1A] and Giobbi-157,
`Giobbi-139, and Dua [1B] ..................................................................... 7
`1.
`Overview of Giobbi-157 ............................................................. 7
`2.
`Overview of Giobbi-139 ........................................................... 11
`3.
`The combination of Giobbi-157 and Giobbi-139 ..................... 13
`4.
`Overview of Dua ....................................................................... 22
`5.
`Combination of Giobbi-157, Giobbi-139, and Dua .................. 24
`6.
`Analysis ..................................................................................... 26
`[GROUND 2] – Claims 10-11 and 13-14 are rendered obvious by
`Broadcom ............................................................................................ 67
`1.
`Overview of Broadcom ............................................................. 67
`2.
`Analysis ..................................................................................... 70
`IV. PTAB DISCRETION SHOULD NOT PRECLUDE INSTITUTION .......... 84
`A.
`35 U.S.C. §325(d) – Advanced Bionics ............................................... 84
`B.
`35 U.S.C. §314(a) - Fintiv ................................................................... 85
`CONCLUSION .............................................................................................. 88
`V.
`VI. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 88
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .......................... 88
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ................................... 89
`C.
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............... 89
`D.
`Service Information ............................................................................. 90
`
`
`
`B.
`
`
`
`i
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`
`EXHIBITS
`MS-1001 U.S. Patent No. 8,646,042 to David L. Brown (“the ‘042 Patent”)
`MS-1002 Excerpts from the Prosecution History of the ‘042 Patent (“the
`Prosecution History”)
`MS-1003 Declaration and Curriculum Vitae of Dr. Patrick Traynor
`MS-1004 Complaint, Proxense, LLC v Microsoft Corporation, 6:23-cv-00319,
`W.D. Tex., filed May 2, 2023
`MS-1005 U.S. Patent Publication No. 2007/0245157 A1 (“Giobbi-157”)
`MS-1006 U.S. Patent Publication No. 2004/0255139 A1 (“Giobbi-139”)
`MS-1007 U.S. Patent No. 9,042,819 (“Dua”)
`MS-1008 European Patent No. EP 1 536 306 A1 (“Broadcom”)
`MS-1009 Claim Construction Order, Proxense, LLC v Samsung Electronics
`Co., Ltd, 6:21-CV-00210-ADA, W.D. Tex., filed January 18, 2022
`Provisional Application No. 60/798,843
`MS-1010
`MS-1011 RESERVED
`MS-1012 Memorandum, Interim Procedure for Discretionary Denials in AIA
`Post-Grant Proceedings with Parallel District Court Litigation
`(USPTO June 21, 2022) (“Director’s Guidance”)
`MS-1013 Microsoft’s Opening Claim Construction Brief, 6:23-cv-00319, W.D.
`Tex., filed November 6, 2023
`MS-1014 Microsoft’s Opening Brief in support of its Motion to Dismiss for
`Failure to State a Claim, 6:23-cv-00319, W.D. Tex., filed July 10,
`2023
`MS-1015 Microsoft’s Reply in support of its Motion to Dismiss for Failure to
`State a Claim, 6:23-cv-00319, W.D. Tex., filed August 10, 2023
`MS-1016 W.D. Tex. Order Cancelling Markman Hearing, issued 1/9/2024
`
`
`
`ii
`
`

`

`Reserved
`
`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`
`EX-1017-
`1022
`EX-1023
`
`EX-1024
`
`Proxense, LLC v. Google LLC, Case No. 6-23-cv-00320, Dkt. No.
`59, Claim Construction Order (W.D. Tex. Jan. 23, 2024)
`Proxense LLC v. Microsoft Corp., Case No. 23-cv-00319, Dkt. No.
`66, Claim Construction Order (W.D. Tex. May 24, 2024)
`EX-1025 Microsoft Corp. v. Proxense, LLC, IPR2024-00573, Paper 11 (PTAB
`Aug. 13, 2024)
`EX-1026 U.S. District Court National Judicial Case Load Profile ending June
`30, 2024.
`EX-1027 Docket Sheet for Proxense, LLC v. Apple Inc., Case No. 6-24-cv-
`00143 (W.D. Tex) (pulled Sep. 12, 2024)
`Scheduling Order in Proxense, LLC v. Apple Inc., Case No. 6-24-cv-
`00143 (W.D. Tex)
`Patents and Applications related to the '042 Patent
`
`EX-1028
`
`EX-1029
`
`
`
`
`
`
`
`iii
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`LISTING OF CHALLENGED CLAIMS
`
`Claim 1
`
`
`
`[1.pre]
`
`A hybrid device comprising:
`
`[1.1]
`
`[1.2]
`
`[1.3]
`
`[1.4]
`
`Claim 5
`
`[5]
`
`Claim 6
`
`[6]
`
`Claim 8
`
`[8]
`
`Claim 9
`
`an integrated personal digital key (PDK) for storing information and
`capable of communicating wirelessly with at least one external
`receiver-decoder circuit (RDC); and
`an integrated RDC for communicating wirelessly with at least one
`external PDK within a proximity zone, the integrated RDC coupled
`to the integrated PDK by a first signal line for communication,
`the integrated RDC coupled to at least one other component of the
`hybrid device by a second signal line,
`one or more of the integrated RDC and integrated PDK enabling one
`or more of an application, a function, and a service on one or more
`of the hybrid device and a device associated with the external RDC.
`
`
`The hybrid device of claim 1, wherein the one or more of the hybrid
`device and the device associated with the external RDC are enabled
`subsequent to the external PDK entering the proximity zone of the
`integrated RDC and based on the information stored by one or more
`of the external PDK and the integrated PDK.
`
`
`The hybrid device of claim 1, wherein the hybrid device is a cell
`phone and the hybrid device is enabled to provide cell phone service
`subsequent to the external PDK entering the proximity zone of the
`integrated RDC and based on the information stored by one or more
`of the external PDK and the integrated PDK.
`
`
`The hybrid device of claim 1, wherein the integrated PDK
`communicates with the external RDC subsequent to the external
`PDK entering the proximity zone of the integrated RDC.
`
`
`
`
`iv
`
`

`

`[9]
`
`Claim 10
`[10.pre]
`
`[10.1]
`
`[10.2]
`
`[10.3]
`
`[10.4]
`
`Claim 11
`[11]
`
`Claim 13
`[13.1]
`
`[13.2]
`
`[13.3]
`
`[13.4]
`
`Claim 14
`[14]
`
`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`The hybrid device of claim 1, comprising storage for inheritance
`information.
`
`A method comprising:
`
`creating a first wireless link between an integrated receiver-decoder
`circuit (RDC) of a hybrid device and an external personal digital key
`(PDK), the hybrid device including an integrated PDK and the
`integrated RDC;
`receiving a first signal at the integrated RDC via the first wireless
`link from the external PDK;
`generating an enablement signal enabling one or more of an
`application, a function and a service on one or more of the hybrid
`device and a device associated with an external RDC; and
`sending the enablement signal to one or more of the hybrid device
`and the device associated with an external RDC.
`
`The method of claim 10, wherein the hybrid device is a cell phone
`and the enablement signal is sent to the cell phone enabling one or
`more of a service, a feature and a functionality of the cell phone.
`
`The method of claim 10, wherein the integrated PDK is electrically
`coupled to the integrated RDC, and the method comprises:
`sending the enablement signal from the integrated RDC to the
`integrated PDK;
`creating a second wireless link between the integrated PDK and an
`external RDC; and
`sending the enablement signal from the integrated PDK to the
`external RDC using the second wireless link.
`
`The method of claim 11, wherein the integrated PDK modifies the
`enablement signal to produce a modified enablement signal, and the
`modified enablement signal is sent from the integrated PDK to the
`external RDC.
`
`
`
`v
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`Apple Inc. (“Petitioner” or “Apple”) petitions for Inter Partes Review
`
`(“IPR”) of claims 1, 5-6, 8-11, 13-14 (“the Challenged Claims”) of U.S. Patent
`
`No. 8,646,042 (“the ’042 Patent”). Compelling evidence presented in this Petition
`
`demonstrates at least a reasonable likelihood that Apple will prevail with respect to
`
`at least one of the Challenged Claims.
`
`I.
`
`REQUIREMENTS FOR IPR
`A. Grounds for Standing
`Petitioner certifies that the ’042 Patent is available for IPR. This petition is
`
`being filed within one year of service of a complaint against Apple. Apple is not
`
`barred or estopped from requesting review of the Challenged Claims on the below-
`
`identified grounds.
`
`B. Challenge and Relief Requested
`Apple requests an IPR of the Challenged Claims on the grounds noted
`
`below. Dr. Patrick Traynor provides supporting testimony in his Declaration. MS-
`
`1003, ¶¶[1-20]. Notably, these grounds are similar to those advanced by Samsung
`
`in instituted and terminated IPRs (IPR2021-01438 and 01439) directed to related
`
`US Patent Nos. 9,049,188 and 9,235,700.
`
`
`
`1
`
`

`

`Ground
`1A
`
`1B
`
`2
`
`Claim(s)
`1, 5-6, 8-11, and 13-
`14
`1, 5-6, 8-11, and 13-
`14
`10-11 and 13-14
`
`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`35 U.S.C. § 102/103
`Giobbi-157 in view of Giobbi-139
`
`Giobbi-157 in view of Giobbi-139 and Dua
`
`Broadcom
`
`
`The ’042 Patent claims priority to a number of provisional applications, the earliest
`
`of which was filed 12/6/2007. MS-1001, Cover. While Apple does not concede
`
`that 12/6/2007 is the priority date that should be afforded to the ’042 Patent, for the
`
`purposes of this proceeding, each of the references asserted in this Petition
`
`qualifies as prior art under 35 USC §102(a), § 102(b), and/or § 102(e) (as shown in
`
`the table below) even if the 12/6/2007 date of the provisional application is used as
`
`the priority date of the ’042 Patent.
`
`Reference
`Giobbi-157
`
`Giobbi-139
`
`Filing Date
`May 5, 2007
`
`Publication Date
`Oct. 18, 2007
`
`May 17, 2004
`
`Dec. 16, 2004
`
`Dua
`
`Sep. 30, 20141
`
`May 26, 2015
`
`Broadcom
`
`Sep. 30, 2004
`
`Jun. 1, 2005
`
`
`
`
`1 Dua relies upon previous applications which claim priority to May 12, 2005.
`
`
`
`2
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`
`C. Claim Construction2
`Petitioner submits that all claim terms should be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. Under the Phillips standard, the “words of a claim are generally
`
`given their ordinary and customary meaning as understood by a person of ordinary
`
`skill in the art when read in the context of the specification and prosecution
`
`history.” Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362,
`
`1366 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). Petitioner notes below
`
`constructions adopted in previous proceedings before WDTX (case number 6:21-
`
`CV-00210-ADA) where family members of the ’042 patent were asserted. MS-
`
`1009; MS-1003, ¶¶[23]-[24].3
`
`1. Hybrid Device
`For the purposes of the present proceeding, this term, which appears in
`
`claims 1-11 and 15, should be construed to mean “a device comprising an
`
`
`2 Microsoft Corporation has advanced modified constructions in claim construction
`
`pleadings in co-pending litigation. MS-1013. The asserted references of this
`
`petition additionally satisfy those proposed constructions, as explained in the
`
`petition. Id.
`
`3 See also EX-1023, EX-1024, and EX-1025.
`
`
`
`3
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`integrated personal digital key (PDK) and an integrated receiver-decoder circuit
`
`[(RDC)].” This definition is consistent with the use of the term in the specification
`
`of the ’042 patent4. See, e.g., MS-1001, Abstract, 1:65-2:20, 13:15-40. For
`
`purposes of this proceeding, Petitioner adopts this construction of “hybrid device,”
`
`which, as noted above, was adopted in 6:21-CV-00210-ADA. MS-1009; MS-
`
`1003, ¶[25].
`
`Personal Digital Key (“PDK”)
`2.
`For the purposes of the present proceeding, this term, which appears in
`
`claims 1-3, 5-8, 10, 12-16, and 20, should be construed to mean “an operably
`
`connected collection of elements including an antenna and a transceiver for
`
`communicating with a RDC and a controller and memory for storing information
`
`particular to a user.” This definition is consistent with the use of the term in the
`
`specification of the ’042 patent. See, e.g., MS-1001, 13:40-54. For purposes of
`
`this proceeding, Petitioner adopts this construction of “personal digital key,”
`
`which, as noted above, was adopted in 6:21-CV-00210-ADA. MS-1009; MS-
`
`1003, ¶[26].
`
`
`4 This construction is based on the recitation of “PDK” in the Challenged Claims,
`
`which is distinct from the recitation of “integrated, secure memory” in the claims
`
`of other patents in the same family.
`
`
`
`4
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`Receiver-decoder circuit (“RDC”)
`3.
`For the purposes of the present proceeding, this term, which appears in
`
`claims 1-8, 10, 13-16, and 20 should be construed to mean “a component or
`
`collection of components, capable of wirelessly receiving data in an encrypted
`
`format and decoding the encrypted data for processing.” This definition is
`
`consistent with the use of the term in the specification of the ’042 patent. See, e.g.,
`
`MS-1001, 7:10-22. For purposes of this proceeding, Petitioner adopts this
`
`construction of “receiver-decoder circuit,” which, as noted above, was adopted in
`
`6:21-CV-00210-ADA. MS-1009; MS-1003, ¶[27].
`
`D. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art (“POSITA”) relating to the subject
`
`matter of the ’042 Patent as of December 6, 2007 would have had (1) at least a
`
`bachelor’s degree in computer science, computer engineering, electrical
`
`engineering, or a related field, and (2) at least two years of industry experience in
`
`the field of encryption and security. MS-1003, ¶¶[21]-[22]. Additional graduate
`
`education could substitute for professional experience, and vice versa. Id.
`
`II. THE ’042 PATENT
`A. Brief Description
`The ’042 Patent is directed to “a hybrid device [that] includes a personal
`
`digital key (PDK) and a receiver-decoder circuit (RDC)” coupled in
`
`communication with each other. MS-1001, Abstract, 1:20-26. The integrated
`
`
`
`5
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`PDK communicates wirelessly with an external RDC and the integrated RDC
`
`communicates wirelessly with at least one external PDK within its proximity zone.
`
`MS-1001, 3:62-4:20. The specification discloses that the integrated PDK is capable
`
`of storing local, secured financial information or secured biometric information for
`
`authenticating a user. MS-1001, 3:20-32, 16: 20-38. Similarly, the external PDK
`
`is also capable of storing information. MS-1001, 3:62-4:20. For example, in one
`
`embodiment, the integrated PDK carries credentials such as credit card or account
`
`information that are used to enable services associated with the external RDC.
`
`MS-1001, 4:63-5:24. A user can make a purchase with the hybrid device provided
`
`that they are in possession of the external PDK and in proximity to the hybrid
`
`device. If so, the external PDK wirelessly connects to the integrated RDC and
`
`authorizes the integrated PDK to enable a transaction by sharing credit card or
`
`account information with the external RDC. Id; MS-1003, ¶¶[28]-[29].
`
`Prosecution History
`B.
`The ’042 Patent was allowed after a single office action that presented only a
`
`double-patenting rejection. MS-1002, 380-386. During prosecution, the Examiner
`
`did not consider any of Giobbi-157, Giobbi-139, Dua, or Broadcom. Id. As
`
`discussed below, these references render obvious the Challenged Claims. MS-
`
`1003, ¶[30].
`
`
`
`6
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`III. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`[GROUND 1A/1B] – Claims 1, 5-6, 8-11, and 13-14 are rendered
`A.
`obvious by Giobbi-157 and Giobbi-139 [1A] and Giobbi-157,
`Giobbi-139, and Dua [1B]
`1. Overview of Giobbi-157
`Giobbi-157 is directed at a system and method to “provide efficient, secure
`
`and highly reliable authentication for transaction processing and/or access control
`
`applications.” MS-1005, Abstract, ¶¶[0011]-[0014]. The disclosure further
`
`explains that a “transaction includes enabling access to secure physical or digital
`
`assets (e.g., unlocking a door, opening a vault, providing access to a secured hard
`
`drive, etc.).” MS-1005, ¶[0063]. This process is accomplished using “secure and
`
`tamperproof memories” to store information for “identification and
`
`authentication.” MS-1005, ¶[0036], see also ¶¶[0026]-[0029], [0035]-[0048].
`
`Giobbi-157 is a continuation in part of a prior application and claims priority to
`
`five provisional applications. MS-1005, Cover, ¶[0002]; MS-1003, ¶¶[31]-[32].
`
`Giobbi-157 discloses a Personal Digital Key (PDK) that “stores one or more
`
`profiles (e.g., a biometric profile) in a tamperproof memory that is acquired in a
`
`secure and trusted process.” MS-1005, ¶[0063], see also ¶¶[0026]-[0029], [0035]-
`
`[0048]. Giobbi-157 further teaches that the PDK may be integrated into an
`
`
`
`7
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`electronic device, such as a cellphone5. MS-1005, ¶[0035] (“a portable electronic
`
`device such as a cell phone”), see also ¶[0080], claims 27, 33; MS-1003, ¶[33].
`
`Giobbi-157 teaches that its integrated PDK can communicate with a
`
`receiver-decoder circuit (RDC). MS-1005, ¶¶[0049]-[0058], [0064]. The RDC
`
`establishes a secure communication channel between the PDK and RDC, then
`
`sends “profile authentication requests to the PDK 102 requesting transmission of
`
`one or more stored profiles over the secure channel.” MS-1005, ¶[0064]. In some
`
`examples, Giobbi-157 teaches that information stored on a PDK, such as
`
`fingerprint information, is transmitted to an external RDC located on a “Reader
`
`108.” MS-1005, ¶[0049]. An example of Giobbi-157’s PDK and Reader
`
`configuration is shown in the annotated version of Figures 2 and 3 below. MS-
`
`1003, ¶[34].
`
`
`5 Bolding and italicized font added for emphasis here and throughout this reply.
`
`
`
`8
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`
`MS-1005, FIG. 2.6
`
`MS-1005, FIG. 3.
`
`
`
`
`
`
`6 All annotations added to figures are in color.
`
`
`
`9
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`Giobbi-157 teaches that its RDC can authenticate a PDK and then enable a
`
`“transaction,” the “transaction includ[ing] enabling access to secure physical or
`
`digital assets.” MS-1005, ¶¶[0057]-[0058], [0063], FIG. 4; MS-1003, ¶[35].
`
`
`
`MS-1005, FIG. 4.
`Giobbi-157 also discloses that “the PDK can store other information such as
`
`credit/debit card information, bank information, or personal information in a
`
`memory for use in authorizing or completing a transaction.” MS-1005, ¶¶[0011],
`
`[0063], [0065]; MS-1003, ¶[36].
`
`The Giobbi-157 provisional applications disclose several use cases of the
`
`PDK and RDC systems and detail both the process and components necessary to
`
`
`
`10
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`setup and operate a PDK and RDC system. MS-10107, pp. 2-14. The details
`
`include exemplary form factors for the PDKs and RDCs and explanations as to
`
`how a user could incorporate these devices into a user’s current devices to setup
`
`and operate a PDK and RDC system. Id; MS-1003, ¶[37].
`
`2. Overview of Giobbi-139
`Giobbi-139 shares the same goal of securing physical or digital access as
`
`Giobbi-157, disclosing a “Personal Digital Key Digital Content Security System”
`
`that prevents “unauthorized use and protect[s] the digital content stored on
`
`computers from being wrongfully accessed, copied, and/or distributed.” MS-1006,
`
`Abstract, ¶[0010]. Like the Giobbi-157 publication, Giobbi-139 discusses the use
`
`of RDCs to communicate with PDKs to enable access and functions on devices.
`
`MS-1006, ¶¶[0010], [0071]-[0078]. The disclosure of Giobbi-139 further teaches
`
`that an RDC can be incorporated into a cell phone and that the RDC “is an
`
`integrated circuit able to process PDK-Key information, as well as encrypt/decrypt
`
`PDK-compliant digital content.” MS-1006, ¶[0077], [0088]; MS-1005, ¶[0035];
`
`MS-1003, ¶[38].
`
`
`7 Although the document is marked confidential, this document was filed by the
`
`applicant as a provisional application, is incorporated by reference into Giobbi-
`
`157, and is publicly available through the USPTO’s Patent Center website.
`
`
`
`11
`
`

`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`Giobbi-139 teaches the PDK and RDC relationship as being flexible and
`
`capable of being integrated with existing equipment. MS-1006, ¶¶[0087]-[0099].
`
`Giobbi-139 also teaches that an RDC can be acquired independently and integrated
`
`into a device. MS-1006, ¶¶[0088]-[0090]. The integrated RDC could then be used
`
`to secure the device and can even “enable/disable” the device based on
`
`communication with a PDK. MS-1006, ¶¶[0087]-[0090]. When using a PDK to
`
`secure a device with an integrated RDC, “[t]his security mechanism protects any
`
`data stored on such devices in the event they are ever stolen, left unattended, or
`
`even purposely ‘disabled’ to prevent access to sensitive content. MS-1006,
`
`¶[0090]. When the associated PDK-Key(s) is not present, these devices and their
`
`storage means are locked and disabled.” Id; MS-1003, ¶[39].
`
`Giobbi-139 also discloses the scalability of RDC and PDK architecture.
`
`MS-1006, ¶¶[0091]-[0096]. For example, Giobbi-139 teaches that a user can
`
`“assign (or remove)” additional PDKs to a device with an integrated RDC. MS-
`
`1006, ¶¶[0092], [0095]; MS-1003, ¶[40].
`
`Giobbi-139 further discloses a version of communication between a PDK
`
`and RDC that is not wireless. MS-1006, ¶¶[0041], [0071]-[0073]. Particularly,
`
`Giobbi-139 teaches alternative embodiments where an RDC and PDK are
`
`communicatively coupled to each other by a wired signal line. MS-1006,
`
`¶¶[0041], [0071]-[0073]; MS-1003, ¶[41].
`
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`3.
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`The combination of Giobbi-157 and Giobbi-139
`(i) Giobbi-157 teaches integrating a PDK into a
`mobile device to enable a user to enjoy secure
`storage functionality via a commonly carried
`item
`Giobbi-157 expressly and repeatedly discloses the portability of a PDK,
`
`emphasizing that a PDK can be carried by a user on their person and expressly
`
`teaches integrating the PDK into cell phones, PDAs, and other commonly carried
`
`items. MS-1005, ¶¶[0012], [0027], [0030], [0035]; MS-1010, p. 3, 14. Based on
`
`these teachings, a POSITA would have readily recognized that integration of PDKs
`
`into mobile devices, such as cell phones, provides the benefits of simplicity and
`
`convenience by, for example, providing a secure and local storage location for the
`
`user’s biometric data. MS-1005, ¶¶[0012], [0027], [0030], [0035]. As Dr. Traynor
`
`explains, such integration enables a user who already carries a cell phone to enjoy
`
`the security benefits offered by Giobbi-157’s system without having to carry a
`
`separate PDK. MS-1003, ¶[45]. The incorporated ’157 provisional application
`
`provides an illustration of a cell phone with integrated PDK.
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`
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`
`
`
`MS-1010, p. 28 (image cropped).
`(ii) Giobbi-139 teaches integrating an RDC into a
`mobile device to provide enhanced security for
`the data stored on the mobile device.
`Giobbi-139 teaches integrating an RDC into the same type of device
`
`disclosed in Giobbi-157 (e.g., a mobile device, such as a cell phone). MS-1006,
`
`¶[0088]; MS-1005, ¶[0035]. Specifically, Giobbi-139 discloses the PDK and RDC
`
`architecture “to protect computers from unauthorized use and protect the digital
`
`content stored on computers from being wrongfully accessed, copied, and/or
`
`distributed.” MS-1006, Abstract. Like Giobbi-157, Giobbi-139 teaches that the
`
`PDK stores the data that authenticates a user via an RDC. MS-1006, ¶¶[0022]-
`
`[0044].
`
`Giobbi-139 provides additional implementation details for its RDCs, noting
`
`that an RDC “is an integrated circuit able to process PDK-Key information, as well
`
`
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`14
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`as encrypt/decrypt PDK-compliant digital content.” MS-1006, ¶[0072]. Giobbi-
`
`139 also notes that its integrated RDC may communicate with a PDK wirelessly or
`
`through a physical connection. MS-1006, ¶¶[0022]-[0044]. Thus, Giobbi-139
`
`teaches similar components as Giobbi-157, where an RDC can communicate with
`
`at least one PDK to grant digital or physical access. MS-1006, Abstract, ¶¶[0036]-
`
`[0037], [0088]-[0090]. Notably, Giobbi-139 identifies such a configuration as an
`
`“enhancement.” MS-1006, ¶¶[0087]-[0088]. Giobbi-139 also discloses that it
`
`would have been desirable to include an RDC in a device holding data, such as a
`
`cell phone, to increase security by requiring a valid PDK to be used to permit
`
`access to the data. MS-1006, ¶[0088], FIG. 4. Dr. Traynor explains that, given
`
`these teachings, a POSITA would have found it obvious and advantageous to
`
`integrate an RDC into Giobbi-157’s cell phone to enhance the security of the data
`
`stored on the cell phone. MS-1003, ¶[46].
`
`Giobbi-139 additionally teaches a broader way to secure data on a cell phone
`
`and discloses that an RDC integrated into a cellphone can be used with a PDK to
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`“effectively enable[]/disable[] the device itself.” MS-1006, ¶¶[0088]-[0089]. In
`
`this configuration, the cell phone with the integrated RDC can enable or disable the
`
`device through authentication with a PDK. Id; MS-1003, ¶¶[47]-[48].
`
`
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`(iii) Combining Giobbi-157 and Giobbi-139
`As Dr. Traynor explains, given the teachings of Giobbi-157 and Giobbi-139,
`
`a POSITA would have been motivated to integrate a PDK and RDC into the same
`
`mobile device (thus, creating a “hybrid device”). MS-1005, ¶¶[0012], [0027],
`
`[0030], [0035]; MS-1006, ¶¶[0022]-[0044], MS-1003, ¶[49]. As stated above,
`
`Giobbi-157 enumerates the advantages and motivations of incorporating a PDK
`
`into a mobile device. MS-1005, ¶¶[0035], [0080], claims 27, 33. For example, a
`
`user carrying the hybrid device would be able to be wirelessly authenticated with
`
`RDCs to securely complete transactions or gain access to physical or digital assets.
`
`Each RDC would be capable of communicating with the PDK’s “secure and
`
`tamperproof memories,” in which biometric authentication data is stored securely
`
`on the device in a format retrievable by an RDC. MS-1005, ¶¶[0036], [0064].
`
`Additionally, Giobbi-139 teaches the benefits of integrating an RDC into this
`
`hybrid device. MS-1006, ¶¶[0087]-[0099]. For instance, a user can use an RDC
`
`integrated in the hybrid device to secure the data within the hybrid device (cell
`
`phone) to protect it from loss or theft. MS-1006, ¶[0091]. Further the RDC would
`
`allow other external PDKs to interact with the hybrid device. Accordingly, Dr.
`
`Traynor explains that a POSITA would have recognized that a mobile device
`
`having an integrated RDC and PDK would provide increased security in accessing
`
`
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`both assets internal to the mobile device and assets external to the mobile device.
`
`MS-1003, ¶[49].
`
`
`MS-1005, FIGS. 2-3 (modified to incorporate Giobbi-139’s teachings).
`(iv) A POSITA would have found it obvious to
`integrate a PDK and RDC in a mobile device to
`enable secure access to assets internal to the
`mobile device and assets external to the mobile
`device
`A POSITA would have found it obvious to communicatively couple the
`
`integrated PDK and RDC within the mobile device with a physical connection
`
`based on Giobbi-139’s teachings that a PDK can be connected to an RDC by a
`
`“transmission line such as a serial cable.” MS-1006, ¶[0041]. By coupling the
`
`integrated PDK and RDC in this manner, assets internal to the mobile device (e.g.,
`
`files, applications, etc.) can be protected using the PDK-RDC techniques disclosed
`
`
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`

`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`by Giobbi-157 and Giobbi-139. MS-1005, ¶¶[0012], [0027], [0030], [0035]; MS-
`
`1006, ¶¶[0022]-[0044], MS-1003, ¶[50].
`
`For example, the mobile device may be equipped with or otherwise
`
`communicatively coupled to a biometric scanner that receives a biometric input
`
`from a user. MS-1005, ¶[0071]. To authenticate the user, the integrated RDC
`
`securely accesses the valid biometric information from the integrated PDK or from
`
`an external PDK as taught by Giobbi-157 to enable a comparison of the inputted
`
`biometric information with the valid biometric information stored in the PDK.
`
`MS-1005, ¶¶[0050], [0053], [0061]. A match results in a successful
`
`authentication, thereby enabling the user to access assets internal to the mobile
`
`device. A mismatch results in a failed authentication, preventing such access.
`
`MS-1005, ¶¶[0056], [0062]-[0063], [0070], [0072]. Dr. Traynor explains that, in
`
`this manner and consistent with the teachings of Giobbi-157 and Giobbi-139, “the
`
`internal assets of the mobile device would be protected from access by
`
`unauthorized users who would be unable to provide a biometric input that matches
`
`the valid biometric stored in the tamper proof memory of the integrated PDK of the
`
`mobile device or, in some implementations, of a PDK external to the mobile
`
`device.” MS-1003, ¶[51].
`
`As Dr. Traynor explains, a POSITA would have further recognized and
`
`found obvious that integrating a PDK and RDC into the same device would
`
`
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`Attorney Docket No. R3926-00020
`IPR of U.S. Patent No. 8,646,042
`facilitate the Notary process disclosed by Giobbi-157 to initialize or otherwise
`
`securely edit the information securely stored in the integrated PDK. MS-1005,
`
`¶¶[0050], [0053], [0061]. For example, Giobbi-157 discloses that a PDK can store
`
`information used in the verification of the PDK user. MS-1005, ¶¶[0011]-[0012],
`
`[0036]-[0039]. The information stored within the PDK is stored in profiles, which
`
`can be accessed and edited in a secure, auditable way. MS-1005, ¶¶[0012], [0036]-
`
`[0039], [0043]. Giobbi-157’s “Notary” PDK is used to verify that authorized
`
`individuals are creating or editing information inside a PDK, and to maintain a
`
`history of changes to the PDK including the identity of the “Not