Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 1 of 13 PageID #: 12303
`Case 5:19-cv-00036—RWS Document 348-5 Filed 06/18/20 Page 1 of 13 PageID #: 12303
`
`EXHIBIT 22
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`EXHIBIT 22
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`

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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 2 of 13 PageID #: 12304
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`Invalidity of U.S. Patent No. 10,212,586
`by
`U.S. Patent Application Publication No. 2006/0041746 to Kirkup, et al. (“Kirkup ’746”)
`
`
`The excerpts cited herein are exemplary. For any claim limitation, Defendant may rely on excerpts cited for any other limitation and/or
`additional excerpts not set forth fully herein to the extent necessary to provide a more comprehensive explanation for a reference’s
`disclosure of a limitation. Where an excerpt refers to or discusses a figure or figure items, that figure and any additional descriptions
`of that figure should be understood to be incorporated by reference as if set forth fully therein.
`
`Except where specifically noted otherwise, this chart applies the apparent constructions of claim terms as used by Plaintiff in its
`infringement contentions; such use, however, does not imply that Defendant adopts or agrees with Plaintiff’s constructions in any way.
`
`U.S. Patent No. 10,212,586 (“the ’586 Patent”) claims priority to Japanese Application No. 2012-117105, filed May 23, 2012. For
`purposes of these invaldity contentions, Defendant applies the May 23, 2012, priority date for the ’586 Patent. However, Defendant
`reserves the right to contest Plaintiff’s reliance on the May 23, 2012, priority date, should the priority date become an issue in this
`proceeding.
`
`Kirkup ’746 was filed on August 17, 2004 and published on Feb 23, 2006. As such, Kirkup ’746 qualifies as prior art with regard to
`the ’586 Patent under 35 U.S.C. §§ 102(a), 102(b), and 102(e) (pre-AIA). Alternatively, should the claims of the ’586 Patent be found
`to not be entitled to priority to the foreign filing date, Kirkup ’746 qualifies as prior art under §§ 102(a)(1) and 102(a)(2) (post-AIA).
`Using Plaintiff’s interpretation of the claims, Kirkup ’746 anticipates claims 1-2, 6-7, 9-10, 13-14, and 16-18 under 35 U.S.C. § 102(a),
`(b) and (e).
`
`Alternatively, Kirkup ’746 renders obvious claims 1-2, 6-7, 9-10, 13-14, and 16-18 under 35 U.S.C. § 103(a).
`
`Alternatively, Kirkup ’746 in view of U.S. Patent No. 7,941,534 to de la Huerga (“de la Huerga ’534”) renders obvious claims 1-2, 6-
`7, 9-10, 13-14, and 16-18 under 35 U.S.C. § 103(a). de la Huerga ’534 was filed on June 26, 2004 and was published on April 28, 2005.
`As such, de la Huerga ’534 qualifies as prior art with regard to the ’586 Patent under 35 U.S.C. § 102(a), 102(b) and 102(e).
`
`Alternatively, Kirkup ’746 in view of U.S. Patent No. 6,871,063 to Schiffer (“Schiffer ’063”) renders obvious claims 1-2, 6-7, 9-10,
`13-14, and 16-18 under 35 U.S.C. § 103(a). Schiffer ’063 was filed on Jun 20, 2000 and issued on March 22, 2005. As such, Schiffer
`’063 qualifies as prior art with regard to the ’586 Patent under 35 U.S.C. § 102(a), 102(b) and 102(e).
`
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 3 of 13 PageID #: 12305
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`Alternatively, Kirkup ’746 in view of U.S. Patent No. 8,149,089 to Lin (“Lin ’089”) renders obvious claims 1-2, 6-7, 9-10, 13-14, and
`16-18 under 35 U.S.C. § 103(a). Lin ’089 was filed on November 21, 2008 and issued on April 3, 2012. As such, Lin ’089 qualifies as
`prior art with regard to the ’586 Patent under 35 U.S.C. § 102(a) and 102(e).
`
`
`Kirkup ’746
`
`U.S. Patent No. 10,212,586
`Claim 1
`[1(pre)]A mobile terminal
`configured to switch between
`an unlocked state and a locked
`state in which a predetermined
`operation is limited,
`comprising:
`
`[1(a)] a transceiver which
`performs short-range wireless
`communications;
`
`To the extent the preamble is limiting, Kirkup ’746 teaches a mobile terminal that can be locked
`and unlocked:
`
`
`The handheld electronic device 120 requires the user to authenticate himself/herself by
`providing a password or PIN code to unlock the user interface of the handheld electronic
`device 120 and enable use thereof.
`Kirkup ’746 at ¶ [0045]
`Kirkup ’746 teaches a transceiver which performs short-range communications:
`
`
`Short-range communications subsystem 340 provides for communication between handheld
`electronic device 120 and different systems or devices, such as PC 110. […] Examples of short
`range communication include standards developed by the Infrared Data Association (IrDA),
`Bluetooth, and the 802.11 family of standards developed by IEEE.
`Kirkup ’746 at ¶ [0093]; see also FIG. 3 (depicting “short-range communications subsystem 340”):
`
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`2
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 4 of 13 PageID #: 12306
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
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`Short-range communications subsystem 340 establishes wireless communications link 145:
`
`
`infrared
`for example, be established by
`link 145 may,
`Wireless communication
`communications or short-range radio frequency communications, such as those specified by
`the Bluetooth or 802.11 standards. […] Other short-range wireless communications media
`and/or protocols may be used to provide communication link 145.
`Wireless communication link 145 may be employed in place of communication link 115 in
`any of the embodiments of systems 100A, 100B, 100C, 100D and 100F (described
`hereinafter).
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 5 of 13 PageID #: 12307
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`[1(b)] a memory which
`previously stores information
`about an another mobile
`terminal; and
`
`Id. at ¶¶ [0067]-[0068].
`Kirkup ’746 teaches storing the user’s authetication code for PC 110 (which “may be of any kind
`of computer, such as a normal desktop computer, laptop or other portable or fixed computer
`system,” see ¶ [0047]) in a memory of the mobile device:
`
`
`Advantageously, providing wireless communication link 145 enables a user to approach PC
`110, activate the PC 110 and have it communicate automatically and wirelessly, for example
`using the Bluetooth short-range communication specification, with handheld electronic
`device 120 to access the user's authentication code (stored on the smart-card, SIM card or
`memory of the handheld electronic device) and authenticate the user.
`Kirkup ’746 at ¶ [0068].
`
`This memory can be, in various disclosed embodiments, smartcard 130, SIM 316 or non-volatile
`memory 324:
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 6 of 13 PageID #: 12308
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`
`
`
`Alternatively, de la Huerga ’534 teaches this limitation. De la Huerga ’534 teaches that security
`device 10 stores information about other computer devices it can unlock:
`
`
`In some cases the electronic security device can include an address of one or more trusted
`computer systems or servers.
`de la Huerga ’534 at 15:3-4.
`
`These computer devices can include mobile devices (e.g., patient monitoring devices) to which the
`user may authenticate (“mobile terminals”):
`
`
`5
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 7 of 13 PageID #: 12309
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`System 194 includes a plurality of personal computers or computer terminals comprising
`workstations 60 and 60’, which may be located in patient rooms, at nurse stations, in doctor
`offices and administrative offices, a plurality of network devices including databases 158 and
`162 and servers including an Admit, Discharge, and Transfer system or server 166, at least
`one laboratory system or server 170, various bedside treatment devices 116 and 116’ such as
`ventilators and IV infusion pumps, patient monitoring devices 80 and 80’, a pharmacy system
`or server 186, a security verification system or server 168, a billing system or server 171, a
`patient historical records system or server 173 and a unit dose medication dispenser 150.”
`Id. at 20:1-15 (parentheticals omitted).
`
`De la Huerga ’534 further contemplates mobile terminals including patient bracelets (see FIG. 2)
`and locking pill containers (FIG. 5):
`
`
`The other devices include two smart devices including a patient monitor 80’ and a patient
`treatment device 116’, each equipped with a wireless transceiver input device 64 which is
`similar to transceiver 81’ on band 40 (see FIG. 2) and transceiver 81’ on container 200 (see
`FIG. 5)
`Id. at 24:1-5; see also FIGs 2, 5:
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 8 of 13 PageID #: 12310
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`
`Furthermore, de la Huerga ’534 disparages the prior art as not being suitable for portable devices:
`
`
`This [prior art] system is primarily directed to accessing desktop computer terminals on a
`sensitive computer network and is not easily adaptable, however, for restricting access to
`laptops, portable instruments, medical equipment such as respirators, or electronically-
`controlled medication dispensers.
`Id. at 11:38-42.
`
`The motivation to incorporate de la Huerga ’534’s memory storing information about another
`mobile terminal into the system of Kirkup ’746 would be to allow for additional devices to be
`unlocked by the handheld device 120. Modifying Kirkup ’746 in this way would be the use of a
`known technique to improve a similar device in the same way.
`Kirkup ’746 teaches that the microprocessor 338 of handheld device 120 performs all functions:
`
`
`Handheld electronic device 120 comprises a number of components, the controlling
`component being microprocessor 338. Microprocessor 338 controls the overall operation of
`the handheld electronic device 120. The hardware and software control functions described
`above in relation to FIGS. 1A to 1F and FIG. 2 are performed by microprocessor 338.
`Kirkup ’746 at ¶ [0085].
`
`These functions include locking (disabling the use of) and unlocking the device:
`The handheld electronic device 120 requires the user to authenticate himself/herself by
`providing a password or PIN code to unlock the user interface of the handheld electronic
`device 120 and enable use thereof.
`Kirkup ’746 at ¶ [0045]; see also FIG. 3:
`
`[1(c)] a controller which
`switches the mobile terminal
`between an unlocked state and
`a locked state based on an
`authentication input to the
`mobile terminal, wherein the
`locked state prevents
`unauthorized access to the
`mobile terminal;
`
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 9 of 13 PageID #: 12311
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`[1(d)] wherein, when
`conditions are met, the
`controller controls the mobile
`terminal to transmit
`information to the another
`mobile terminal for switching
`a state of the another mobile
`terminal from a locked state to
`an unlocked state, wherein the
`conditions include:
`
`
`
`
`Kirkup ’746 teaches that handheld electronic device 120, controlled by the controller, transmits the
`authentication information to PC 110 when the conditions are met, as described below.
`
`
`
`
`The handheld electronic device is configured to transmit the authentication code to the
`computer so as to enable the user to unlock the desktop of the computer and thus gain access
`to the computer functions.
`Kirkup ’746 at ¶ [0040].
`
`
`Advantageously, the described arrangements generally allow a user to unlock both the PC
`110 and the handheld electronic device 120 by simply inputting one authorization code,
`namely that for the handheld electronic device 120. Advantageously, the PIN code or other
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 10 of 13 PageID #: 12312
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`unlocking code for the handheld electronic device 120 may be entered either into a user
`interface of the handheld electronic device 120 or that of the PC 110 so as to unlock handheld
`electronic device 120 (if it is not already unlocked) and PC 110. … [I]f the user interfaces
`directly with handheld electronic device 120 then, upon authentication of the user (if
`required), the authentication code for PC 110 is extracted from Smart-card 130 and provided
`to PC 110 over communication link 115.
`Kirkup ’746 at ¶ [0053]; see also Fig. 2:
`
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 11 of 13 PageID #: 12313
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`[1(e)] first, the mobile terminal
`is in a locked state, the another
`mobile terminal is in a locked
`state, and the another mobile
`terminal is within
`communication range of the
`
`
`
`
`
`
`Kirkup ’746 teaches that entering the PIN into handheld electronic device 120 serves to unlock
`both it and PC 110 (thus, at the beginning of the authentication process, both devices are necessarily
`in the locked state):
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 12 of 13 PageID #: 12314
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`short-range wireless
`communications of the
`transceiver while in the locked
`state;
`
`[1(f)] second, after the mobile
`terminal is in the locked state,
`the another mobile terminal is
`in the locked state, and the
`another mobile terminal is
`within communication range
`of the short-range wireless
`communications of the
`transceiver while in the locked
`state, performing, via the
`transceiver, the short-range
`wireless communications with
`the another mobile terminal;
`and
`[1(g)] third, after the
`performing, receiving, by the
`controller, the authentication
`input for switching the mobile
`
`
`
`Advantageously, the described arrangements generally allow a user to unlock both the PC
`110 and the handheld electronic device 120 by simply inputting one authorization code,
`namely that for the handheld electronic device 120.
`Kirkup ’746 at ¶ [0053].
`
`Kirkup ’746 further teaches that the process may be initiated when handheld electronic device 120
`enters short-range wireless communications range of PC 110:
`
`
`Advantageously, providing wireless communication link 145 enables a user to approach PC
`110, activate the PC 110 and have it communicate automatically and wirelessly, for example
`using the Bluetooth short-range communication specification, with handheld electronic
`device 120 to access the user's authentication code (stored on the smart-card, SIM card or
`memory of the handheld electronic device) and authenticate the user.
`Id. at ¶ [0068]; see also [0066]-[0067], [0093].
`Kirkup ’746 teaches that wireless communication device 120 automatically communicates over
`communication link 115 (and therefore over wireless communication link 145; see element [1(a)]
`above) with PC 120 when both devices are locked (see element [1(e)] above), when PC 120 detects
`the presence of wireless communication device 120 and initiates the authentication process by
`seeking the authentication code:
`When the user wishes to use PC 110, he or she may perform an activation action, such as
`typing on the keyboard or moving the mouse, whereupon the user may be requested to provide
`a user identification code (either to the PC 110 or the handheld electronic device 120) to
`unlock the PC desktop and enable use thereof […] PC 110 is preferably configured to
`automatically seek the authentication code from handheld electronic device 120 over
`communication link 115 in response to activation.
`Kirkup ’746 at ¶¶ [0048]-[0049]; see also Fig. 2 (supra).
`
`Kirkup ’746 teaches that, responsive to the request for authentication by PC 120, mobile device
`110 requests and receives an authentication code from the user:
`
`Alternatively, if greater security is desired, the handheld electronic device can be configured
`to require entry of a user code, Such as a personal identification number (PIN) or other form
`
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`Case 5:19-cv-00036-RWS Document 348-5 Filed 06/18/20 Page 13 of 13 PageID #: 12315
`Defendant’s Invalidity Contentions
`Exhibit H2
`
`
`terminal from the locked state
`to the unlocked state.
`
`Claim 2
`terminal
`[2] The mobile
`according to claim 1, wherein
`the operation
`includes a
`biometrics authentication.
`
`
`
`of authorization, to initiate release of the authentication code for transmission to the
`computer.
`Kirkup ’746 at ¶ [0042].
`
`Depending on the configuration of the handheld electronic device 120, receipt of a
`communication from PC 110 […] may cause the handheld electronic device 120 to request
`user authentication before retrieving the authentication code and communicating it to PC
`110 (or authorization).
`Id. at ¶ [0049].
`
`
`Advantageously, the described arrangements generally allow a user to unlock both the PC
`110 and the handheld electronic device 120 by simply inputting one authorization code,
`namely that for the handheld electronic device 120. Advantageously, the PIN code or other
`unlocking code for the handheld electronic device 120 may be entered either into a user
`interface of the handheld electronic device 120 or that of the PC 110 so as to unlock handheld
`electronic device 120 (if it is not already unlocked) and PC 110. … [I]f the user interfaces
`directly with handheld electronic device 120 then, upon authentication of the user (if
`required), the authentication code for PC 110 is extracted from Smart-card 130 and provided
`to PC 110 over communication link 115.
`Id. at ¶ [0053]; see also Fig. 2 (supra).
`
`
`Kirkup ’746 teaches that the handheld device must be unlocked before the user has access to the
`computer functions:
`
`
`The handheld electronic device is configured to transmit the authentication code to the
`computer so as to enable the user to unlock the desktop of the computer and thus gain access
`to the computer functions.
`Kirkup ’746 at ¶ [0040].
`
`Thus, the “predetermined operation to which access is limited” includes biometric authentication
`together with all other “computer functions” accessed by the user.
`
`
`12
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