Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 1 of 20 PageID #: 28077
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`MAXELL, LTD.
`Patent Owner
`____________
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`Case No. IPR2020-00201
`U.S. Patent No. 7,116,438
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`MAXELL, LTD.
`Patent Owner
`____________
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`Case No. IPR2020-00201
`U.S. Patent No. 7,116,438
`____________
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`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 2 of 20 PageID #: 28078
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................ 1
`I.
`II. APPLICABLE STANDARDS ..................................................................... 3
`III. ARGUMENT ................................................................................................. 4
`A. THE DECISION OVERLOOKED THE PETITION’S RELIANCE ON NAGANO’S
`AUTHENTICATION PROCESS AND CONDITIONAL COMMUNICATION ........... 4
`B. THE DECISION MISAPPREHENDS THE PETITION’S REASON TO
`INCORPORATE THE AUTHENTICATION TEACHINGS OF BALFANZ INTO
`THE SYSTEM OF NAGANO .......................................................................... 9
`IV. CONCLUSION ........................................................................................... 15
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 3 of 20 PageID #: 28079
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`I.
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`INTRODUCTION
`In response to the Decision Denying Institution of Inter Partes Review
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`entered June 19, 2020, (Paper 11, “Decision”) and pursuant to 37 C.F.R.
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`§ 42.71(d), Petitioner Apple Inc. hereby respectfully requests the Patent Trial and
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`Appeal Board reconsider its decision denying institution of inter partes review of
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`claims 1-7 (the “Challenged Claims”) of U.S. Patent No. 7,116,438 (Ex. 1001).
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`The Board rejected Petitioner’s proposed Ground 1 of unpatentability
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`(which challenged both independent claims 1 and 4), finding Petitioner did not
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`articulate a sufficient motivation to modify Nagano (Ex. 1004) with the user
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`authentication teachings of Balfanz (Ex. 1005). (Decision at 23-35). Petitioner
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`respectfully requests rehearing because the Board overlooked or misapprehended
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`Petitioner’s arguments in the Petition.
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`First, for both the location-limited authentication limitation and the
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`conditional communication limitation, Petitioner argued both that Nagano taught
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`the limitation in question and, in the alternative, that Nagano in view of Balfanz
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`would render the limitation obvious. See Petition at 40-46, 47-54. The Board’s
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`Decision never addresses Petitioner’s primary contention that Nagano itself
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`teaches each limitation. Properly crediting Nagano’s authentication teachings
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`renders moot whether there was adequate motivation to combine Balfanz’s
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`authentication teachings—the primary subject of criticism in the Decision.
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`Second, in analyzing Petitioner’s articulated motivation to combine, the
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`Decision dissects the stated motivation into two pieces and assessed each in
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`isolation. (Decision at 26-35). The resulting analysis overlooked the motivation as
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`a whole. In particular, Petitioner argued the modification provided the benefit of
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`coupling high speed communications with location-limited security. (Petition at
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`25-26). The Decision concluded the modified system would be no faster than a
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`system that did not include location-limited security, ignoring that the stated
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`benefit is the combination of both speed and security. (Decision at 27-30).
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`Finally, in analyzing the security benefits, the Decision misapprehended the
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`source of the security benefits associated with location-limited authentication,
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`concluding no benefit would be gained because the proposed combination failed
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`to incorporate the entirety of Balfanz’s protocol. (Decision at 30-35). This missed
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`that security benefits do in fact result from incorporating only the first part of
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`Balfanz’s protocol.
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`Properly evaluated, any one of these three arguments would result in
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`institution. Accordingly, Petitioner requests rehearing and institution of trial in this
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`matter.
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`This request is timely under 37 C.F.R. § 42.71(d)(2) because it was filed
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`within thirty days of the Board’s decision denying institution.
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`II. APPLICABLE STANDARDS
`“A party dissatisfied with a decision may file a request for rehearing, without
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`prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
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`discretion. 37 C.F.R. § 42.71(c).
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`The Board has granted requests for rehearing and instituted a previously
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`denied
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`inter partes
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`review proceeding after determining
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`that
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`it had
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`misapprehended and/or overlooked evidence that was relied upon by the Petitioner.
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`See, e.g., Merial Limited v. Virbac IPR2014-01279, Paper 18 at 7 (Apr. 15, 2015)
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`(granting rehearing and ordering institution, finding: “Petitioner emphasizes the
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`‘optional’ nature of the cosolvent, a matter we overlooked in entering our order
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`declining to institute an inter partes review trial.”); Daicel Corp. v. Celanese
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`International Corp. IPR2015-00171, Paper 13 at 3-4 (Jun. 26, 2015) (granting
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`rehearing and ordering institution, determining that it had “misapprehended the
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`significance of this argument in the Petition, and overlooked the fact that Mr.
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`Cooper’s opinion is also based on his own calculations and data in two published
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`articles”).
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`III. ARGUMENT
`Petitioner requests reconsideration of the decision not to institute inter
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`partes review on all grounds raised in the Petition because the Decision (1)
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`overlooks the Petition’s primary argument that Nagano teaches the disputed
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`elements; (2) misapprehends Petitioner’s motivation to modify Nagano with
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`Balfanz’s authentication; and (3) misapprehends the nature of the proposed
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`modified system.
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`A.
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`The Decision Overlooked the Petition’s Reliance on Nagano’s
`Authentication Process and Conditional Communication
`The Decision declines to institute inter partes review based on a determination
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`that “Petitioner has not established sufficiently that a person of ordinary skill in the
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`art would be motivated to combine the teachings of Nagano and Balfanz to achieve
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`the claimed invention.” (Decision at 34). However, even without modification to
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`include the teachings of Balfanz, Nagano alone teaches or renders obvious every
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`limitation of the Challenged Claims. See Petition at 20 (“The following prior art
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`references disclose each limitation of the Challenged Claims, either alone or in
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`combination with another reference.”). As such, Petitioner respectfully requests
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`rehearing on the grounds that, even absent a reason to modify Nagano’s system to
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`incorporate the teachings of Balfanz, the Petition shows how Nagano renders the
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`Challenged Claims obvious.
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`1) The Decision Overlooked the Petition’s Argument Regarding
`Nagano’s Authentication Teachings
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`The analysis of claim limitation [1(d)] in the Board’s Decision states that
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`“Petitioner relies on the combination of Nagano’s teaching of a registration process
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`via short-range communication and Balfanz’s teaching of pre-authentication process
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`via a location-limited channel. […] Specifically, Petitioner relies on the first part of
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`Balfanz’s two-part authentication process, i.e., the pre-authentication process for
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`exchanging commitments of public keys between wireless devices using a location-
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`limited channel.” (Decision at 24-25 (citing Petition at 40-46)). But this analysis is
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`incomplete.
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`The Petition relies first upon Nagano, and alternatively on Balfanz, to teach
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`an authentication process carried out over a “short-distance communication unit.”
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`(Petition at 40 (“Nagano teaches the first short-distance communication unit ‘carries
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`out an authentication process for allowance to use said display apparatus,’ as
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`claimed. Should Patent Owner contend Nagano does not teach the limitation, the
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`limitation would have been obvious in view of the combination of Nagano and
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`Balfanz.”) (emphasis added)); see also Petition at 41 (stating, in the sub-header for
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`claim limitation [1(d)] beginning “Balfanz’s Teachings,” “Should Patent Owner
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`contend Nagano does not teach the limitation, Balfanz teaches …,” thus specifically
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`differentiating between a mapping relying on Nagano and, to the extent Patent
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`Owner contends Nagano does not teach, a mapping relying on Balfanz).
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`In particular, the Petition argues Nagano teaches authentication information
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`being exchanged between the mobile apparatus and the public display device.
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`(Petition at 41 (citing Ex. 1003, Declaration of Dr. Thomas La Porta, at ¶ 85)). The
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`Decision characterizes Nagano’s authentication teachings, saying “before mobile
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`apparatus 103 is allowed to use public display device 101, mobile apparatus 103
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`makes a call over mobile apparatus network 102 to establish communication with
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`gateway server 104, which authenticates mobile apparatus 103 using authentication
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`information sent from public display device 101.” (Decision at 19). As Dr. La Porta
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`explains, however, (and as the Petition maps), such a sequence of events requires
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`that the mobile apparatus first send the authentication information to the public
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`display device. (Ex. 1003 at ¶ 83 (“I would understand that the public display device
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`receives the information from the mobile apparatus at least because it is the
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`authentication information used to authenticate the mobile apparatus, and as such
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`the public display device would not have the authentication information for the
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`mobile apparatus unless it was first transmitted to the public display device.”)
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`(emphasis added)).
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`Dr. La Porta goes on to explain that the authentication information would be
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`transmitted via the short-distance communication unit, because there would be no
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`need to transmit it from the public display device to the mobile gateway otherwise.
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`(Ex. 1003 at ¶ 85 (“Thus, if the mobile apparatus sent the authentication information
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`via the network communications unit, the gateway server would receive it before the
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`public display device and there would be no need for the public display device to
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`send the authentication information back to the gateway server.”); see also Petition
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`at p. 41 (explaining that Nagano teaches authenticating via the short-distance
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`communication unit and citing ¶¶ 83-85 of Dr. La Porta’s Declaration)).
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`Indeed, Patent Owner used more than four pages of its preliminary response
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`to address the Petition’s primary reliance on Nagano for this claim limitation. (Paper
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`6, hereinafter “POPR,” at 42-46 (disputing Petitioner’s arguments that Nagano’s
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`authentication process is carried out using the mapped first short-distance
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`communication unit)).
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`The Board did not credit or even acknowledge Petitioner’s express reliance
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`on Nagano. Instead, for the authentication limitation, “said first short-distance
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`communication unit using said input, carries out an authentication process for
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`allowance to use said display apparatus,” the Board stated “Petitioner relies upon the
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`first part of Balfanz’s two-part authentication process.” (Decision at 25). This was
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`error in overlooking the mapping based on Nagano. Had the Board properly credited
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`Nagano’s teachings, it would have rendered moot whether the Petition adequately
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`supported adding Balfanz’s authentication to the Nagano system—the primary
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`criticism underlying the non-institution decision.
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`2) The Decision Overlooked the Petition’s Argument Regarding Nagano’s
`Conditional Communication Teachings
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`The analysis of claim limitation [1(e)] in the Board’s Decision similarly
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`begins “Petitioner relies on the second part of Balfanz’s authentication process, i.e.,
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`exchanging public keys over the main wireless link and comparing the public keys
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`against the previously received pre-authentication information (e.g., hash digests of
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`the keys) to determine whether to authenticate communication between the wireless
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`devices.” (Decision at 25). But as with the claim element [1(d)], the Petition relies
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`first upon Nagano, and alternatively on Balfanz to teach this claim element. (Petition
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`at 47 (“Nagano teaches this limitation. Should Patent Owner contend Nagano does
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`not teach such, the limitation would have been obvious in view of the combination
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`of Nagano and Balfanz.”) (emphasis added)); see also Petition at 52 (stating, in the
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`sub-header for claim limitation [1(e)] beginning “Balfanz’s Teachings,” “Should
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`Patent Owner contend Nagano does not teach the limitation, Balfanz teaches …,”
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`thus specifically differentiating between a mapping relying on Nagano and, to the
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`extent Patent Owner contends Nagano does not teach, a mapping relying on
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`Balfanz).
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`Rather than relying exclusively on Balfanz, the Petition specifically argues
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`that information is displayed on the display apparatus “if said authentication process
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`is affirmed.” (Petition at 49-50). In particular, in mapping element [1(d)], the Petition
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`first shows how Nagano’s “registration” process includes the authentication steps.
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 11 of 20 PageID #: 28087
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`(Petition at 40 (“Nagano teaches that authentication information is exchanged … as
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`a part of the registration process”)). Next, in mapping element [1(e)], the Petition
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`shows how communication is conditioned on successful registration. See Petition at
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`48-49 (discussing Nagano’s FIG. 9 and how it illustrates communication only is
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`registration is successful); see also Ex. 1003 (Dr. La Porta opining that successful
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`registration is conditioned on successful authentication). This primary reliance was,
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`again, recognized by Patent Owner whose preliminary response devoted four pages
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`to the Petition’s primary reliance on Nagano for this limitation. (POPR at 33-37, 29).
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`The Decision failed to credit or even acknowledge Petitioner’s reliance on
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`Nagano for the limitation “if said authentication process is affirmed.” As such,
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`Petitioner respectfully submits that rehearing is appropriate because the Decision
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`overlooked the Petition’s analysis of Nagano for this limitation.
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`B.
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`The Decision Misapprehends the Petition’s Reason to Incorporate
`the Authentication Teachings of Balfanz into the System of Nagano
`Assessing the Petition’s stated rationale for adding Balfanz’s authentication
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`into Nagano, the Decision splits Petitioner’s articulated reason into two discrete
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`components—(1) “increasing the speed and performance of Nagano’s system” and
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`(2) “the security benefits of location-limited authentication of Balfanz.” (Decision
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`at 26-27). This dissection ignores the stated benefit of “allow[ing] communication
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`over the higher-bandwidth, higher-range mobile network link while maintaining
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`the security benefits of location-limited authentication thereby increasing the speed
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`and performance of Nagano’s system without compromising security.” (Petition at
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`25-26). In other words, using an initial exchange on the (slow) short-range link for
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`authentication and the fast mobile link for all other communications, the combined
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`system is faster than using the short-range link exclusively and more secure than
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`using the fast mobile link exclusively. Because the Decision misapprehends both
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`the reason for modifying Nagano and the nature of the proposed combination,
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`Petitioner respectfully requests rehearing.
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`1) The Decision Misapprehends the Benefits of a Hybrid Authentication
`System
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`Having split Petitioner’s articulated reason to combine Nagano and Balfanz,
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`the Decision rejects the “increased speed and performance” component because the
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`Petition allegedly fails to “explain[] adequately what aspects of Nagano’s system
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`would gain the increased speed and performance from the proposed combination.”
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`(Decision at 27-28). The Decision concludes “no increase in the speed and
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`performance of Nagano’s network would result directly from the proposed
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`combination.” Id. at 28. Applicant respectfully submits the Board’s analysis
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`overlooks that the proposed motivation is not increased speed in isolation, but is
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`instead the benefit of increased speed (i.e., using the high speed mobile network)
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`coupled with the security benefits of an initial short-range authentication exchange.
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`As stated in the Petition, the benefit of the proposed combination is “to allow
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`communication over the higher-bandwidth, higher-range mobile network link while
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`maintaining the security benefits of location-limited authentication.” (Petition at 25
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`(emphasis added)). In other words, the Petition argues that a hybrid system is more
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`secure than (and just as fast as) using the high-bandwidth, long-range link alone and
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`faster than (and just as secure as) using the low-bandwidth, short range link alone.
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`By comparing the speed of the system to a baseline of using only the high-
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`bandwidth, long-range link, the Board disregards the second half of Petitioner’s
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`stated rationale. Because the stated benefit in the Petition is increasing speed while
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`maintaining security, the proper comparison is the speed of the hybrid system as
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`compared to the speed of the system with comparable security (i.e., using the low-
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`bandwidth, short-range link exclusively).
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`In its analysis, the Decision misapprehends and overlooks the improvement
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`comes not from modifying components of the network to be faster, but from
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`modifying the communication protocols to use a higher-bandwidth network
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`communication link without compromising security. Using the short-range, low-
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`bandwidth link for an initial authentication, security benefits of location-limited
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`authentication may be coupled with subsequent communications over a faster
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`higher-bandwidth link. Petitioner has articulated a sufficient reason to modify
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`Nagano with the location-limited authentication teachings of Balfanz at least
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`because an implicit motivation to combine exists when an improvement makes a
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`process faster. DyStar Textilfarben GmbH & Co. v. CH Patrick Co., 464 F. 3d 1356,
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`1338 (Fed. Circ. 2006) (holding that an implicit motivation to combine exists when
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`the improvement is technology-independent and the combination of references
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`results in a product or process that is more desirable, for example because it is faster).
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`2) The Decision Incorrectly Assumes Balfanz’s Authentication Protocol
`Would Be Bodily Incorporated into Nagano’s System
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`The Decision criticized Petitioner for incorporating only the first step of
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`Balfanz’s security protocol (an initial exchange of identifying information) without
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`the second step (using that identifying information over the main wireless link to
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`authenticate a user), finding “the first and second parts are integral and inseparable
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`parts of Balfanz’s authentication process.” (Decision at 32). This critique overlooks
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`that Nagano already includes an authentication process analogous to Balfanz’s
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`second step, rendering bodily incorporation of the full Balfanz process unnecessary.
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`As articulated in the Petition and Dr. La Porta’s Declaration, the security
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`benefits of location-limited authentication ensure the user is in physical proximity
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`of the device to which they are authenticating. The first step in Balfanz’s protocol—
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`exchanging identifying information over a short-range link—renders this location-
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`limited authentication possible. See Petition at 23-24 (describing the problem
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`Balfanz is solving as “authentication procedures for mobile devices … located in
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`physical proximity) (citing Ex. 1003, ¶¶ 58-60 (describing the benefits of location-
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`limited authentication, including preventing eavesdroppers who are not physically
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`present from “participating in the conversation without being detected,” device
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`discovery to avoid inadvertently communicating with a “similar but more distant
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`device,” and “limiting communication with a device to only physically nearby
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`users.”)); Petition at 42 (“pre-authentication information exchanged over the
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`location-limited channel allows the participants to authenticate each other”)
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`(citing Balfanz at ¶ [0076]) (emphasis in original); see also Petition at 44
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`(reproducing FIG. 5 of Balfanz with only steps S110 and S120 boxed).
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`In combining Balfanz with Nagano, the Petition proposes supplementing, not
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`replacing, Nagano’s existing registration process (mapped in the Petition at pp. 40-
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`41, 47-51, and 54-55) with Balfanz’s
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`location-limited pre-authentication
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`information. There is no need for the full public-key encryption authentication
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`process of Balfanz because Nagano already discloses carrying out an authentication
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`process. (Petition at 41 (citing Nagano at ¶ [0043]). Specifically, Nagano explicitly
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`teaches that authentication information is sent from the public display device to the
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`gateway server to determine whether the mobile apparatus is permitted to use the
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`public display device. Id. Incorporating Balfanz’s teachings that pre-authentication
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`information can be exchanged using a short-range communication link and later used
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`to verify the participants to the authentication process does not rely on the specific
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`details of the authentication process for the security benefit. Indeed, as mapped, the
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`Petition proposes exchanging pre-authentication information including “information
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`input using the input unit, such as a password or PIN, authorizing the gateway server
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`to bill the user,” (Petition at 41, 44), rather than relying on Balfanz’s key
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`commitments. As Dr. La Porta points out, this would have the effect of making the
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`combined Nagano/Balfanz system more secure. (Petition at 46 (citing Ex. 1003 at
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`¶ 90)). Balfanz’s full authentication protocol is not necessary to meet the articulated
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`goal of performing location-limited authentication, because the desired benefits
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`(ensuring physical proximity of the two devices (see Petition at 23-24 (citing Ex.
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`1003, ¶ 58-60)) are achieved with only the first step.
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`Specifically, Petitioner proposed incorporating Balfanz’s teaching that
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`authentication information can be exchanged via a short-range communication
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`link, and that communication between the two devices via the network
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`communication link is conditioned on the successful exchange of that
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`authentication information. Assuming, arguendo, that Nagano does not teach these
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`limitations, the net result of these modifications is, as Petitioner articulated, to
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`allow communication over the higher-bandwidth, higher-range mobile network
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`link while maintaining the security benefits of location-limited authentication.
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`(Petition at 25-26).
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`As to the explaining how the “entire authentication process of Balfanz” is to
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`be incorporated into Nagano’s system, Petitioner is not proposing the bodily
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`incorporation of Balfanz’s authentication protocol into Nagano’s system (as
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`discussed above), nor is such bodily incorporation necessary for an obviousness
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 17 of 20 PageID #: 28093
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`analysis. See eBay Inc. v. Locata LBS LLC, IPR2014-00585, Paper 31 at 11 (Oct. 2,
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`2015) (“[A]n obviousness analysis does not require bodily incorporation of one
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`reference into another, and the appropriate inquiry is whether a person skilled in the
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`art would have seen an apparent reason to combine the [relevant] functionality of
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`[the secondary reference] into [the primary reference].” (emphasis added) (internal
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`quotations omitted)).
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`In determining there is no articulated motivation to combine Balfanz’s full
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`authentication protocol, Petitioner respectfully submits that the Board overlooked
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`and misapprehended Petitioner’s actual argument that does not rely on Balfanz’s
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`full authentication profile.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully request IPR of Claims 1-7
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`of the ’438 Patent.
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`Respectfully submitted,
`ERISE IP, P.A.
`
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`BY: /s/ Adam P. Seitz
`
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No 52,583
`Robin A. Snader, Reg. No. 66,085
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`adam.seitz@eriseip.com
`jennifer.bailey@eriseip.com
`robin.snader@eriseip.com
`15
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 18 of 20 PageID #: 28094
`Case 5:19-cv-00036—RWS Document 530-6 Filed 09/04/20 Page 18 of 20 PageID #: 28094
`PUB IC VERSION
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`ATTORNEYS FOR PETITIONER
`
`ATTORNEYS FOR PETITIONER
`APPLE INC.
`
`APPLE INC.
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`16
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`16
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 19 of 20 PageID #: 28095
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(A)
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that on
`July 6, 2020, a complete and entire electronic copy of this Petition for Inter Partes
`Review including exhibits was provided via Priority Mail Express to the Patent
`Owner by serving the correspondence address of record for the ’438 Patent. A
`courtesy copy was sent to Patent Owner’s litigation counsel via Federal Express:
`
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib Siddiqui
`William J. Barrow
`Bryan Nese
`Clark S. Bakewell
`Alison T. Geilsleichter
`
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
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` Amanda K. Streff
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`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`
`Geoff Culbertson
`Kelly Tidwell
`
`PATTON, TIDWELL & CULBERTSON, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`
`
`MATTINGLY, STANGER, & MALUR, PC
`Suite 370
`1800 Diagonal Road
`Alexandria, VA 22314
`
`
`
`______
`BY: /s/ Adam P. Seitz
`
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
`Robin A. Snader, Reg. No. 66,085
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`adam.seitz@eriseip.com
`jennifer.bailey@eriseip.com
`robin.snader@eriseip.com
`17
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`PUBLIC VERSION
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`Case 5:19-cv-00036-RWS Document 530-6 Filed 09/04/20 Page 20 of 20 PageID #: 28096
`Case 5:19-cv-00036—RWS Document 530-6 Filed 09/04/20 Page 20 of 20 PageID #: 28096
`PUB IC VERSION
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`ATTORNEYS FOR PETITIONER
`APPLE INC.
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`ATTORNEYS FOR PETITIONER
`
`APPLE INC.
`
`
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`18
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`18
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`PUBLIC VERSION
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