Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 1 of 9 PageID #: 26836
`Case 5:19-cv-00036—RWS Document 491-2 Filed 08/06/20 Page 1 of 9 PageID #: 26836
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`EXHIBIT 7
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`EXHIBIT 7
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`Case 5:19-cv-00036—RWS Document 491-2 Filed 08/06/20 Page 1 of 9 PageID #: 26836
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`EXHIBIT 7
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`EXHIBIT 7
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 2 of 9 PageID #: 26837
`Trials@uspto.gov
`
`
` Paper No. 11
`571.272.7822
`
`
`
` Entered: July 15, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`MAXELL, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00202
`Patent 10,212,586 B2
`____________
`
`
`Before MICHAEL R. ZECHER, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 3 of 9 PageID #: 26838
`IPR2020-00202
`Patent 10,212,586 B2
`Pet. 24–25 (quoting Ex. 1004 ¶ 93) (citing cf. Ex. 1001, 2:61–63 (“Examples
`of the short-range wireless communication include Bluetooth (trademark),
`infrared rays, and Wi-Fi Direct.”); Ex. 1003 ¶ 56).
`
`Petitioner argues a person of ordinary skill in the art “would have
`understood that ‘short range-communications subsystem 340’ includes a
`transceiver at least because short-range communications subsystem 340
`establishes wireless communication link 145, which transmits to and
`receives from computer 110.” Pet. 25 (citing Ex. 1004 ¶ 67; Ex. 1003 ¶ 56).
`Patent Owner does not respond substantively to Petitioner’s
`arguments or evidence with respect to this limitation. See Prelim. Resp. 25–
`33.
`
`Petitioner’s arguments are supported by the cited evidence.
`Petitioner’s declarant, Dr. Shoup, provides credible testimonial evidence that
`Kirkup’s short-range communication subsystem 340 is a short-range
`wireless communications transceiver. See Ex. 1003 ¶ 56. Based on this
`preliminary record, we are persuaded that Petitioner has demonstrated
`sufficiently that Kirkup teaches the recited limitation.
`[1b] a memory which previously stores information
`about an another mobile terminal
`Petitioner argues that Kirkup teaches the recited “memory” because
`Kirkup describes various embodiments, such as a smartcard, a SIM, or non-
`volatile memory, which are used to store a user’s authentication code.
`Petitioner points to Kirkup’s explanation where
`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
`
`36
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 4 of 9 PageID #: 26839
`IPR2020-00202
`Patent 10,212,586 B2
`(stored on the smart-card, SIM card or memory of the
`handheld electronic device) and authenticate the user.
`Pet. 26 (quoting Ex. 1004 ¶ 68) (citing Ex. 1004 ¶¶ 87, 89–90, 94).
`Petitioner’s annotated Figure 3 of Kirkup is shown below. Pet. 26.
`
`
`Petitioner’s annotated Figure 3 of Kirkup, above, shows a block
`diagram of handheld electronic device 120 with smart-card 130, SIM 316,
`and non-volatile memory 324. Pet. 26; see also Ex. 1004, Fig. 3, ¶¶ 39, 84,
`87, 89, 94.
`Petitioner agues Kirkup’s memory “previously stores” a user’s
`authentication code. Pet. 26–27. Petitioner points out that Kirkup explains,
`“[i]f the entered authentication code is correct, the handheld electronic
`
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 5 of 9 PageID #: 26840
`IPR2020-00202
`Patent 10,212,586 B2
`device 120 then provides the authentication code for the PC 110 (as
`extracted from smart-card 130) across communication link 115, thereby
`authenticating the user and unlocking the desktop of PC 110.” Id. (quoting
`Ex. 1004 ¶ 52); (citing Ex. 1003 ¶¶ 52, 57).
`Petitioner also argues that Kirkup’s PC 110 may be the recited
`“another mobile terminal,” such as another handheld electronic device like
`handheld electronic device 120, because, according to Kirkup:
`PC 110 may be of any kind of computer, such as a normal
`desktop computer, laptop or other portable or fixed computer
`system which may require authentication of the user identity
`prior to enabling use thereof. Accordingly, while the computer is
`described as a PC 110, it should be understood that it need not be
`a personal computer or be of a particular type.
`Pet. 27 (quoting Ex. 1004 ¶ 47) (emphasis omitted).
`Patent Owner does not respond substantively to Petitioner’s
`arguments or evidence with respect to this limitation. See Prelim. Resp. 25–
`33.
`
`Petitioner’s arguments are supported by the cited evidence.
`Petitioner’s declarant, Dr. Shoup, provides credible testimonial evidence that
`Kirkup’s smart-card 130, SIM 318, and non-volatile memory 324, are forms
`of memory that can store information, such as an authentication code, about
`another mobile terminal, such as PC 110. See Ex. 1003 ¶ 57. Based on this
`preliminary record, we are persuaded that Petitioner has demonstrated
`sufficiently that Kirkup teaches the recited limitation.
`
`38
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 6 of 9 PageID #: 26841
`IPR2020-00202
`Patent 10,212,586 B2
`Petitioner’s arguments are supported by the cited evidence.
`Petitioner’s declarant, Dr. Shoup, provides credible testimonial evidence that
`Kirkup’s microprocessor 338 (the “controller”) receives a user identification
`code, such as a PIN or password (the “authentication input”), to switch
`handheld electronic device 120 (the “mobile terminal”) from a locked to an
`unlocked state. See Ex. 1003 ¶¶ 68–70. Based on this preliminary record,
`we are persuaded that Petitioner has demonstrated sufficiently that Kirkup
`teaches the recited limitation.
`2. Conclusion as to Independent Claim 1
`Based on the record presented, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing in its challenge to
`independent claim 1 under 35 U.S.C. § 103(a) as obvious over Kirkup.
`3. Claims 6, 7, 9, 13, 14, 16, and 18
`Petitioner asserts claims 6, 7, 9, 13, 14, 16, and 18 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over Kirkup. Pet. 9. Petitioner provides
`persuasive argument and credible evidence showing that Kirkup teaches all
`the limitations of claims 6, 7, 9, 13, 14, 16, and 18. Pet. 45–53. Petitioner’s
`declarant, Dr. Shoup, provides credible testimonial evidence that Kirkup
`teaches the recited limitations of claims 6 (see Ex. 1003 ¶¶ 81–85), 7 (see
`Ex. 1003 ¶¶ 86–87), 9 (see Ex. 1003 ¶¶ 73–75), 13 (see Ex. 1003 ¶¶ 81–85),
`14 (see Ex. 1003 ¶¶ 86–87), 16 (see Ex. 1003 ¶¶ 76–77), and 18 (see
`Ex. 1003 ¶¶ 81–85).
`Patent Owner makes the same arguments with respect to these claims
`that it made with respect to claim 1 (i.e. Patent Owner argued collectively
`that Petitioner had failed to establish that claims 1, 6, 7, 9, 13, 14, 16, and 18
`are obvious over Kirkup). See Prelim. Resp. 25–33.
`
`53
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 7 of 9 PageID #: 26842
`IPR2020-00202
`Patent 10,212,586 B2
`Based on this preliminary record, we are persuaded that Petitioner has
`demonstrated sufficiently that Kirkup teaches the recited limitations of
`claims 6, 7, 9, 13, 14, 16, and 18. Accordingly, we are persuaded that
`Petitioner has demonstrated a reasonable likelihood of prevailing in its
`challenge to claims 6, 7, 9, 13, 14, 16, and 18 under 35 U.S.C. § 103(a) as
`obvious over Kirkup.
`
`F. Obviousness Based on Kirkup and Huerga (Ground 2)
`Petitioner asserts claims 2, 6, 10, 13, 17, and 18 are unpatentable as
`obvious under 35 U.S.C. § 103(a) over the combination of Kirkup and
`Huerga. Pet. 9.
`Petitioner provides persuasive argument and credible evidence
`showing that the combined teachings of Kirkup and Huerga account for the
`limitations of these claims. See Pet. 54–67. Petitioner’s declarant,
`Dr. Shoup, provides credible testimonial evidence that the combined
`teachings of Kirkup and Huerga account for the recited limitations of claims
`2 (see Ex. 1003 ¶¶ 78–80), 6 (see id. ¶¶ 81–85), 10 (see id. ¶¶ 78–80), 13
`(see id. ¶¶ 81–85), 17 (see id. ¶¶ 78–80), and 18 (see id. ¶¶ 81–85).
`Petitioner also provides evidence and argument that a person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Kirkup and Huerga in the manner described in the Petition. See Pet. 56–
`60. For example, Petitioner’s declarant, Dr. Shoup testifies that a person of
`ordinary skill in the art would have modified Kirkup to incorporate Huerga’s
`teachings of biometric authentication (see Ex. 1003 ¶¶ 45–48) and unlocking
`multiple devices (see id. ¶¶ 49–51).
`Patent Owner relies upon its arguments and evidence for the asserted
`obviousness ground based on Kirkup alone. See Prelim. Resp. 33–34.
`
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 8 of 9 PageID #: 26843
`IPR2020-00202
`Patent 10,212,586 B2
`Patent Owner does not respond substantively to Petitioner’s evidence or
`arguments relating to the proffered reasons for combining Kirkup and
`Huerga in the manner described in the Petition. Id.
`Based on this preliminary record, we are persuaded that Petitioner has
`demonstrated sufficiently that the combination of Kirkup and Huerga
`teaches the recited limitations of claims 2, 6, 10, 13, 17, and 18.
`Accordingly, we are persuaded that Petitioner has demonstrated a reasonable
`likelihood of prevailing in its challenge to claims 2, 6, 10, 13, 17, and 18
`under 35 U.S.C. § 103(a) as obvious over the combination of Kirkup and
`Huerga.
`
` CONCLUSION
`For the foregoing reasons, we are persuaded that the Petition
`demonstrates a reasonable likelihood of prevailing in showing the
`unpatentability of at least one of the challenged claims of the ’586 patent.
`At this stage of the proceeding, we have not made a final
`determination as to the patentability of any of these challenged claims or the
`construction of any claim term.
`
`
` ORDER
`
`Accordingly, it is
`ORDERED that an inter partes review is instituted as to all
`challenged claims on all grounds raised in the Petition; and
`FURTHER ORDERED that inter partes review is instituted
`commencing on the entry date of this Order, and pursuant to 35 U.S.C.
`§ 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a
`trial.
`
`
`55
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`Case 5:19-cv-00036-RWS Document 491-2 Filed 08/06/20 Page 9 of 9 PageID #: 26844
`IPR2020-00202
`Patent 10,212,586 B2
`
`For PETITIONER:
`
`Adam Seitz
`Paul Hart
`Jennifer Bailey
`Robin Snader
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`robin.snader@eriseip.com
`
`
`For PATENT OWNER:
`
`Robert Pluta
`Amanda Bonner
`Luiz Miranda
`James Fussell
`William Barrow
`Saqib Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
`wbarrow@mayerbrown.com
`jfussell@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`56
`
`
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