Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 1 of 50 PageID #: 24440
`Case 5:19-cv-00036—RWS Document 442-6 Filed 07/24/20 Page 1 of 50 PageID #: 24440
`
`EXHIBIT 5
`
`EXHIBIT 5
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 2 of 50 PageID #: 24441
`
`Appendix D
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 3 of 50 PageID #: 24442
`
`APPENDIX D
`
`U.S. Patent No. 10,212,586 (the “’586 patent”)
`
`U.S. Patent No. 6,871,063 to Schiffer (“Schiffer”)
`U.S. Patent Application Publication No. 2006/0041746 to Kirkup, et al. (“Kirkup”)
`
`
`
` I
`
` have provided below a claim chart comparing the disclosures of Schiffer to claims 1, 7, 16, and 17 of the ’586 patent (“the ’586
`Asserted Claims”). In my opinion, as detailed below and in my report, Schiffer anticipates and/or renders obvious each of the ’586
`Asserted Claims. I have also provided below a claim chart comparing the disclosures of the combination of Schiffer and Kirkup to the
`’586 Asserted Claims. In my opinion, as detailed below and in my report, the combination of Schiffer and Kirkup renders obvious each
`of the ’586 Asserted Claims.
`
` I
`
` note that the ’586 patent claims priority to Japanese Application No. 2012-117105, filed May 23, 2012. For purposes of this report, I
`apply the May 23, 2012, priority date for the ’586 patent.
`
`Schiffer was filed on June 30, 2000 and issued on March 22, 2005. Schiffer therefore qualifies as prior art with regard to the ’586
`patent under at least 35 U.S.C. § 102(a), § 102(b), and § 102(e).
`
`Kirkup was filed on August 17, 2004 and published on Feb 23, 2006. Kirkup therefore qualifies as prior art with regard to the ’586
`patent under at least 35 U.S.C. § 102(a), § 102(b), and § 102(e).
`
`
`
`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:
`
`
`
`
`Schiffer and Kirkup
`
`Schiffer discloses or renders obvious this claim limitation.
`
`As a preliminary matter, I note that all of the ’586 Asserted Claims involve two “mobile terminals,”
`the first of which unlocks the second mobile terminal. For consistency and readability, I provide
`the following overview of the two claimed mobile terminals:
`
`
`
`1
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 4 of 50 PageID #: 24443
`
`
`
`Relevant claim terms
`
`Role
`
`How unlocked
`
`Other claimed hardware
`
`Mobile Terminal 1
`(unlocking device)
`“a mobile terminal” (claim
`1); “a first mobile terminal”
`(claim 16)
`Sending a wireless signal
`containing an unlock
`instruction to the second
`mobile terminal, upon the
`completion of certain
`claimed conditions.
`Upon receiving an
`authentication input (e.g.,
`passcode, biometric input,
`etc.)
`Transceiver, memory,
`controller
`
`Mobile Terminal 2
`(unlocked device)
`“an another mobile” (claim
`1); “a second mobile
`terminal” (claim 16)
`Unlocked upon receiving the
`instruction to unlock sent
`from the first mobile
`terminal.
`
`Upon receiving an instruction
`to unlock from the first
`mobile terminal.
`
`None
`
` note that claim 1 is written to cover aspects of Mobile Terminal 1 in the table above.
`
` I
`
`
`Schiffer teaches “mobile phone 100,” which is a type of mobile terminal:
`
`
`Mobile phone 100 of FIG. 1 may be any mobile phone capable of long-range communication.
`For example, for one embodiment, mobile phone 100 is a cellular phone, in which case long-
`range transceiver circuit 102 may communicate with a cell base.
`Schiffer at 2:30-34. Figure 1, illustrates the key components of the mobile phone disclosed by
`Schiffer:
`
`
`
`
`
`2
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 5 of 50 PageID #: 24444
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`Schiffer further describes the features of the mobile phone 100 disclosed in Figure 1:
`
`
`FIG. 1 is a system formed in accordance with an embodiment of the present invention. Mobile
`phone 100 includes long-range transceiver circuit 102 along with short-range transceiver
`circuit 103, both coupled to SIM 101. Keypad 105 is also coupled to SIM 101. Computer
`system 110 includes short-range transceiver circuit 111, coupled to processor 112, which is
`coupled to memory 113.
`Schiffer at 2:23-29. See generally id. at 2:23-3:12 (describing various features and embodiments
`of the mobile phone 100).
`
`Schiffer’s mobile phone 100 is configured to switch between an unlocked state and a locked state
`by means of an authentication input:
`
`
`
`
`
`3
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 6 of 50 PageID #: 24445
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`In accordance with one embodiment of the present invention, before step 200 of FIG. 2 a user
`may authenticate him or herself to their mobile phone. Authentication of a user to the mobile
`phone may be accomplished by, for example, the user entering a password onto keypad 105
`of mobile phone 100 of FIG. 1. This password may then be compared to information stored
`in the protected memory region of SIM 101 to verify the password. If the password is verified,
`mobile phone 100 may then be unlocked. Unlocking the phone enables the phone to send and
`receive calls via long-range transceiver circuit 102, exchange information via short-range
`transceiver circuit 103, and allows the user to modify phone settings via keypad 105.
`Alternatively, authentication of the user by the mobile phone may include performing voice
`recognition of the user.
`Schiffer at 3:23-37.
`
`
`Note that for one embodiment, the user may authenticate himself or herself to the mobile
`phone by, for example, entering a password into the mobile phone.
`Schiffer at 2:17-19.
`
`
`After authentication between the user and the mobile phone has taken place, at step 200 of
`FIG. 2 the user enters into the short-range, wireless communication range of computer
`system 110 while carrying mobile phone 100 of FIG. 1. Consequently, a short-range, wireless
`communication link, 121, is established between computer system 110 and mobile phone 100,
`according to step 205.
`Schiffer at 3:38-45. See also id. at Claims 1, 7, 11.
`
`When in a locked state, a predetermined operation of the mobile phone is limited because, for
`example, the phone is unable to send or receive calls:
`
`
`Unlocking the phone enables the phone to send and receive calls via long-range transceiver
`circuit 102, exchange information via short-range transceiver circuit 103, and allows the
`user to modify phone settings via keypad 105.
`Schiffer at 3:32-36. Schiffer also discusses locking and securing computer systems more generally:
`
`
`
`
`
`4
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 7 of 50 PageID #: 24446
`
`Schiffer and Kirkup
`To maintain the confidentiality of this information, Some computer systems may be
`voluntarily “locked” or “secured” by a user. When a computer system is locked, access to
`the computer system may be limited. This not only serves to maintain the confidentiality of
`information Stored on the computer system but also deters theft of the computer system.
`Schiffer at 1:16-23.
`
` incorporate by reference my overview of Schiffer in Section VI.G.1. of my report, which also
`explains why Schiffer teaches this limitation.
`Schiffer discloses or renders obvious this claim limitation.
`
`Schiffer teaches that mobile phone 100 includes “short-range transceiver circuit 103.” Schiffer at
`2:23-29, see also FIG. 1:
`
`
` I
`
`U.S. Patent No. 10,212,586
`
`[1(a)] a transceiver which
`performs short-range wireless
`communications;
`
`
`
`
`5
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 8 of 50 PageID #: 24447
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`
`
`
`See also Schiffer at 3:24-37, 4:10-14, 4:38-41.
`
`Schiffer discloses that this short-range transceiver circuit establishes a short-range, wireless
`communication link:
`
`
`After authentication between the user and the mobile phone has taken place, at step 200 of
`FIG. 2 the user enters into the short-range, wireless communication range of computer
`system 110 while carrying mobile phone 100 of FIG. 1. Consequently, a short-range, wireless
`6
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 9 of 50 PageID #: 24448
`
`Schiffer and Kirkup
`communication link, 121, is established between computer system 110 and mobile phone 100,
`according to step 205. In accordance with one embodiment of the present invention, this
`short-range, wireless communication link is a Bluetooth link, and the short-range, wireless
`communication range is the range of the Bluetooth wireless network.
`Schiffer at 3:39-49. See also id. at 3:32-38, 4:10-22, 4:38-41.
`
`Schiffer further discloses that other types of short-range wireless communications may be
`performed by the transceiver in other embodiments:
`
`
`For an alternate embodiment of the present invention, an alternate, short-range, wireless
`communication link is established, such as a HomeRF* link described in the Shared Wireless
`Access Protocol (SWAP) Specification 1.0, released Jan. 5, 1999. (*Trademarks and trade
`names are the property of their respective owners.)
`
`
`
`Alternatively, other short-range, wireless communication links may be established in
`accordance with alternate embodiments of the present invention. It may be found
`advantageous for the range of the short-range, wireless communication to be less than
`approximately 100 feet while the range of the long-range, wireless communication may be
`greater than approximately 1000 feet.
`Schiffer at 3:50-63.
`
` I
`
` incorporate by reference my overview of Schiffer in Section VI.G.1. of my report, which also
`explains why Schiffer teaches this limitation.
`Schiffer discloses or renders obvious this claim limitation.
`
`Schiffer teaches that mobile phone 100 includes “SIM 101” (see FIG. 1, supra), which includes a
`“protected memory region having data stored therein”:
`
`
`SIM 101 of FIG. 1 includes a protected memory region having data stored therein. A protected
`memory region is a memory region that is not generally modifiable by typical users. Thus,
`important information may be securely stored in the protected memory region of SIM 101 with
`
`U.S. Patent No. 10,212,586
`
`[1(b)] a memory which
`previously stores information
`about an another mobile
`terminal; and
`
`
`
`
`7
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 10 of 50 PageID #: 24449
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`a low risk of being compromised. The data stored in the protected memory region of SIM 101
`includes the subscriber identity number associated with the user of mobile phone 100.
`Schiffer at 2:38-45. Schiffer explains that:
`
`
`As described in more detail below, in accordance with an embodiment of the present invention,
`data stored in the protected memory region of SIM 101 of FIG. 1, including the subscriber
`identity number, is used to wirelessly authenticate the user to computer system 110 by
`transmitting an access code.
`Schiffer at 2:60-65.
`
`Schiffer further discloses that this SIM may store data including an “access code” (or data used to
`generate the access code) for computer system 110. As described below, Schiffer therefore
`discloses information about another mobile terminal (i.e. the access code) that is previously stored
`on the SIM:
`
`
`In response, the mobile phone transmits an access code back to the computer system via the
`link. This access code is generated using data stored in the SIM in the mobile phone. After the
`computer system verifies the access code, access to the computer system is granted in response
`to receiving the access code.
`Id. at 2:7-13. Figure 1 of Schiffer illustrates this memory region of mobile phone 100 (“SIM
`101”), which stores the access code.
`
`
`
`
`
`8
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 11 of 50 PageID #: 24450
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`
`
`In some embodiments, the access code is an “alternate value” stored in the SIM and encrypted
`using the subscriber identity number:
`
`
`The access code transmitted from mobile phone 100 to computer system 110 via short-range,
`wireless communication link 121 of FIG. 1 is generated by mobile phone 100 using data stored
`in SIM 101. For one embodiment of the present invention, this data includes the subscriber
`identity number stored in the protected memory region of SIM 101. For added security, the
`access code may be encrypted by mobile phone 100 before being transmitted. The algorithm
`used to encrypt the access code may use data stored in SIM 101. For one embodiment, the
`access code is all or some portion of the subscriber identity number itself. For another
`embodiment, the access code may be an alternate value that may be encrypted using all or
`some portion of the subscriber identity number as an encryption key.
`9
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 12 of 50 PageID #: 24451
`
`U.S. Patent No. 10,212,586
`
`
`
`
`Schiffer and Kirkup
`Id. at 4:23-36. This “alternate value” (once decrypted) may be a “security code” previously stored
`in computer system 110 by the user:
`
`
`For one embodiment of the present invention, the access code may be decrypted by computer
`system 110 before being verified. Verification may include comparing the access code to a
`previously stored value to detect a match or other predetermined relationship. The previously
`stored value may be stored in a protected memory region of memory 113, such as the BIOS.
`This previously stored value may be entered by the user upon initially setting up an
`authentication system in accordance with the present invention. This previously stored value
`may include, for example, the subscriber identity number, or some portion thereof, or other
`security code.
`Id. at 4:41-52.
`
`Because the “security code” is stored on the computer 110 and allows access to the computer
`system 110, it is “information about” computer system 110. Thus, mobile phone 100 stores
`“information about” computer system 110 in its memory.
`
`Finally, Schiffer discloses that the computer systems (such as computer system 110) contemplated
`by its disclosure may be mobile terminals. For example, Schiffer teaches that the computer systems
`for which a lock control system is needed may be a “small handheld electronic device” or a
`“mobile” system:
`
`
`Computer systems, from small handheld electronic devices to medium-sized mobile and
`desktop systems to large servers and workstations, are becoming increasingly pervasive in our
`society. As such, people are becoming more reliant on computer systems to store and access
`information, much of which may be confidential. To maintain the confidentiality of this
`information, some computer systems may be voluntarily “locked” or “secured” by a user.
`When a computer system is locked, access to the computer system may be limited. This not
`only serves to maintain the confidentiality of information stored on the computer system but
`also deters theft of the computer system.
`Id. at 1:11-22. Indeed, Schiffer explains that the security problems it addresses are particularly
`acute with respect to “mobile computer systems.”
`10
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 13 of 50 PageID #: 24452
`
`
`
`Schiffer and Kirkup
`
`This security problem is particularly of concern to mobile computer users.
`Id. at 1:41-42.
`
`No disclosures in Schiffer limit “computer system 110” to a large, immobile computer systems.
`Accordingly, a POSITA would have understood that “computer system 110” described by Schiffer
`could be implemented as handheld electronic devices and mobile computer systems.
`
` I
`
` incorporate by reference my overview of Schiffer in Section VI.G.1. of my report, which also
`explains why Schiffer teaches this limitation.
`Schiffer discloses or renders obvious this claim limitation.
`
` I
`
` understand this claim element to require that the first mobile terminal is unlocked via the
`controller upon receiving an authentication input, such as a passcode or biometrics authentication
`input. Schiffer discloses the mobile phone being unlocked upon receiving such an authentication
`input and it would have been obvious to a POSITA that some hardware must control the unlocking
`based on the authentication input and accordingly that that hardware is the claimed controller.
`
`Schiffer teaches that mobile phone 100 switches between an unlocked state and a locked state based
`on a password, or other authentication input information, provided by the user. This authentication
`input “is compared” to stored information and, if verified, the mobile phone 100 is unlocked:
`
`
`Authentication of a user to the mobile phone may be accomplished by, for example, the user
`entering a password onto keypad 105 of mobile phone 100 of FIG. 1. This password may then
`be compared to information stored in the protected memory region of SIM 101 to verify the
`password. If the password is verified, mobile phone 100 may then be unlocked.
`Schiffer at 3:25-31.
`
`
`Note that for one embodiment, the user may authenticate himself or herself to the mobile
`phone by, for example, entering a password into the mobile phone.
`Schiffer at 2:17-19. See also supra at element [1(pre)].
`
`
`U.S. Patent No. 10,212,586
`
`[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;
`
`
`
`
`11
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 14 of 50 PageID #: 24453
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`A POSITA would understand the disclosure of this functionality in a mobile phone to disclose the
`claimed “controller.” A POSITA would know that some piece of hardware would control
`“unlock[ing]” mobile phone 100 (switching it from a locked state to an unlocked state) based on
`the password (authentication input) entered into mobile phone 100 by the user. This piece of
`hardware is the claimed controller. For example, a POSITA would understand that a cellular phone,
`such as “mobile phone 100” would have a microprocessor (or microprocessors) for controlling a
`variety of hardware and software tasks associated with running the operating system, controlling
`the user interface, and controlling other hardware components. Such controllers were well known
`in the art at this time and prevalent in cellular phones at the time of Schiffer as well as by the
`priority date of the ’586 patent, as discussed in the technical background portion of my report,
`which I incorporate here by reference. Moreover, a POSITA would have understood that Schiffer’s
`mobile phone 100 is not limited to just the few elements shown in Figure 1, since mobile phones
`are complex devices requiring additional functionality, such as a processor, to function at all.
`Rather, a POSITA would have recognized that Schiffer focused on certain elements integral to its
`invention but that the lack of other elements, such as a controller, would not indicate that a
`controller would not be present.
`
`Further, Schiffer does disclose that computer system 110, a type of mobile terminal, does include
`a processor. See Schiffer at 2:28-30 (“Computer system 110 includes short-range transceiver
`circuit 111, coupled to processor 112, which is coupled to memory 113.”). See also id. at 4:38-41
`and Figure 1. This is consistent with the understanding a POSITA would have had that mobile
`phones have all the elements of a computer as described in the famous Von Neumann architecture:
`a processor, memory to store data and instructions, and I/O devices. See Sections V.D. and VI.D.
`(Technical Background). Thus, the “computer system 110” described in Schiffer also satisfies this
`limitation, and a POSITA would understand that these same components of “computer system 110”
`could be present in a mobile device.
`
`To the extent not implicitly disclosed by Schiffer, it would have been obvious to a POSITA to
`utilize a microprocessor or another type of controller to switch the phone between a locked state
`and an unlocked state based on the authentication input. As described in the Technical Background
`section of my report, a POSITA would have known that cellular phones around the priority date
`and at the time of Schiffer would have a microprocessor or other controller capable of controlling
`12
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 15 of 50 PageID #: 24454
`
`Schiffer and Kirkup
`a variety of hardware and software tasks. See Report at Section VI.D. (incorporated by reference).
`Kirkup, described below, also is exemplary of a POSITA’s knowledge on this subject.
`Accordingly, it would be well within a POSITA’s ability to select and program a microprocessor
`to control unlocking the mobile phone based on an authentication input. A POSITA would have
`been motivated to make this change (to the extent it is a change at all) to improve the efficiency,
`flexibility, and cost of mobile phone 100 and to allow the disclosed security system to operate
`seamlessly on existing mobile phones without the need to add additional hardware, by instead
`taking advantage of the microprocessor already used for other mobile phone functions. For
`example, using a single microprocessor for these tasks would result in a lower cost mobile phone
`because less hardware would be required in order to perform all of the needed functions. Similarly,
`it would add flexibility to the process because different authentication methods known to a POSITA
`could be programmed into the microprocessor. A POSITA would also know that there were open
`source authentication libraries (such as the OpenSSL library released in the late 1990’s, i.e., before
`the time of the filing of the ’586 patent) that could be used for programming the locking and
`unlocking functions described by Schiffer. See Report at Sections V.D. and VI.D. (Technical
`Background).
`
`Schiffer discloses that, in the locked state, unauthorized access (including sending and receiving
`calls, exchanging information and modifying settings) is prevented:
`Unlocking the phone enables the phone to send and receive calls via long-range transceiver
`circuit 102, exchange information via short-range transceiver circuit 103, and allows the user
`to modify phone settings via keypad 105.
`Schiffer at 3:32-35.
`
` incorporate by reference my overview of Schiffer in Section VI.G.1. of my report, which also
`explains why Schiffer teaches, or renders obvious, this limitation.
`
`In addition to being obvious based on Schiffer alone, a POSITA would have been motivated to
`combine Schiffer with Kirkup and the resulting combination would render this limitation obvious.
`Indeed, a POSITA would have recognized that Kirkup provides detail as to the type of controller
`or microprocessor that would be common on mobile phones at the time (and described above with
`reference to Schiffer alone). Kirkup teaches this claim limitation.
`13
`
` I
`
`U.S. Patent No. 10,212,586
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 16 of 50 PageID #: 24455
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`Kirkup teaches that the microprocessor 338 of handheld electronic 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 at [0085]; see also id. at [0053], and FIG. 2.
`
`These functions include locking (disabling the use of) and unlocking the device based on a user’s
`authentication input:
`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.
`Id. at [0045]; see also FIG. 3:
`
`
`
`
`14
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 17 of 50 PageID #: 24456
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`
`
`Kirkup discloses that the use of the user interface of handheld electronic device 120 is conditioned
`on successful authentication:
`
`
`The handheld electronic device may be a dual mode (data and voice) communication device
`and personal digital assistant device, Such as is described in further detail below in relation
`to FIG. 3. Alternatively, the handheld electronic device may be a single mode (data)
`communication 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.
`
`
`
`
`15
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 18 of 50 PageID #: 24457
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`Kirkup at [0045]. In other words, Kirkup discloses that when the handheld electronic device 120
`is in a locked state, unauthorized access to that device is prevented.
`
`See also Kirkup at [0003], [0045], [0053], [0077], [0085], [0097], FIG. 2, FIG. 3.
`
` I
`
` incorporate by reference my overview of Kirkup in Section VI.G.2. of my report, which also
`explains why Kirkup teaches this limitation.
`
` A
`
` POSITA would have been motivated to modify Schiffer to incorporate Kirkup’s microprocessor.
`First, such a combination would provide a component to perform the various functions described
`by Schiffer’s mobile device 100. To the extent Schiffer does not disclose particular hardware that
`performs the various functions such as unlocking mobile phone 100 or utilizing the short-range
`communication unit, adding Kirkup’s microprocessor would be a simple substitution of known
`hardware to perform the disclosed functions and would not require any change in Schiffer.
`Accordingly, a POSITA could use Kirkup’s microprocessor in Schiffer’s disclosed mobile phone
`100 would expect such a substitution to be straightforward and to obtain predictable results. A
`POSITA would have known that Kirkup’s microprocessor could be programmed to perform
`Schiffer’s authentication described supra for this claim limitation. In fact, Kirkup teaches that
`“[m]icroprocessor 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
`[of Kirkup] are performed by microprocessor 338.” Kirkup at [0085].
`
`Using a microprocessor to execute the locking and unlocking functions taught by Schiffer would
`add flexibility to the process because, for example, different authentication methods known to a
`POSITA could be programmed into Kirkup’s microprocessor. A POSITA would also know that
`there were open source authentication libraries (such as the OpenSSL library released in the late
`1990’s, i.e., before the time of the filing of the ’586 patent) that could be used for programming the
`locking and unlocking functions described by Schiffer and Kirkup. I discuss these features at length
`in the Technical Background section of my report, incorporated here by reference. See Report at
`Sections V.D. and VI.D. Thus, the combination of Kirkup’s microprocessor with Schiffer would
`amount to the use of a known technique to improve a similar device, method, or product.
`
`
`
`
`
`16
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 19 of 50 PageID #: 24458
`
`Schiffer and Kirkup
`Moreover, a POSITA would have recognized based on Kirkup’s disclosure that utilizing a
`microprocessor has other benefits such as “control[ling] the overall operation of the handheld
`electronic device” as well as performing the “hardware and software control functions.” Kirkup at
`[0085]. Accordingly, the microprocessor runs software “for providing the user interface of [the]
`handheld electronic device.” Kirkup at [0097]. Because the device in Schiffer, like that in Kirkup,
`may be a multi-function mobile electronic device, such as, for example, a cellular phone, a POSITA
`would have been motivated to use Kirkup’s microprocessor to control the operation of the entire
`device, including the unlocking capability, since this would provide greater efficiency and fewer
`components, ultimately resulting in more reliable performance and lower cost than utilizing a
`separate piece of hardware to control the lock state of the device in Schiffer. Utilizing Kirkup’s
`microprocessor would further have allowed Schiffer’s process to be incorporated into any existing
`mobile phone by simply programming the microprocessor to perform the operations described by
`Schiffer, rather than requiring an entirely new device.
`
`Additionally, a POSITA would be further motivated to combine Schiffer and Kirkup because, for
`example, both references address problems of the same nature (i.e., authenticating users of a
`computer using a handheld device) and both disclose requiring authentication of the unlocking
`device prior to using it to unlock a second device. For example, Schiffer discloses that a user may
`be required to authenticate themselves to the mobile phone by entering a password in order to
`unlock the phone. Schiffer at 2:17-19, 3:23-36. Kirkup similarly teaches that “[t]he 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 at [0045]. See also id. at [0054].
`
` further incorporate all motivations to combine Schiffer and Kirkup listed in Section VI.G.3. of
`my report.
`Schiffer discloses or renders obvious this claim limitation.
`
`Claim elements [1(d)] through [1(g)] describe three conditions that must be met, in order, before
`the unlock instruction is sent from the first mobile terminal to the second mobile terminal:
`
`
` I
`
`17
`
`U.S. Patent No. 10,212,586
`
`[1(d)] wherein, when
`conditions are met, the
`controller controls the mobile
`terminal to transmit
`information to the another
`mobile terminal for switching
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 20 of 50 PageID #: 24459
`
`U.S. Patent No. 10,212,586
`a state of the another mobile
`terminal from a locked state to
`an unlocked state, wherein the
`conditions include:
`
`Schiffer and Kirkup
`1. Both the first and second mobile terminal must be locked and within short-range wireless
`communication range of each other, [1(e)].
`2. The first mobile terminal must communicate with the second mobile terminal using its
`transceiver and while both devices remain in a locked state, [1(f)].
`3. The first mobile terminal must receive an authentication input (e.g. a password to unlock
`the first mobile terminal), [1(g)].
`4. The first mobile terminal transmits an unlocking instruction to the second mobile terminal,
`[1(d)].
`
`
`Schiffer teaches that, when the conditions are met (as described below; see elements [1(e)], [1(f)],
`and [1(g)]), the controller controls mobile phone 100 to transmit the access code to computer
`system 110:
`
`
`At step 210 of FIG. 2, an access code is transmitted from short-range transceiver circuit 103
`of mobile phone 100 to short-range transceiver circuit 111 of computer system 110 via link
`121 of FIG. 1.
`Schiffer at 4:10-13; see also FIG. 2:
`
`
`
`
`18
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 21 of 50 PageID #: 24460
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`
`
`
`
`This access code causes computer system 110 to grant the user access (i.e., switch state from a
`locked state to an unlocked state):
`Once the access code has been verified by computer system 110 of FIG. 1, the computer
`system grants the user access to the system at step 215 of FIG. 2. If the access code is not
`verified, i.e. no access code is received or the wrong access code is received, access to the
`computer system remains limited.
`Id. at 4:53-58; see also FIG. 2 at step 215 supra.
`
`
`19
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 442-6 Filed 07/24/20 Page 22 of 50 PageID #: 24461
`
`U.S. Patent No. 10,212,586
`
`Schiffer and Kirkup
`As discussed above