Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 1 of 17
`
`iN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`FILED
`
`NOV 2 2022
`C1.ERKu
`STERN Ui
`
`K
`TEXAS
`
`DEU1Y
`
`IDENTITY SECURITY LLC,
`PLAINTIFF,
`
`V.
`
`APPLE, INC.,
`
`DEFENDANT.
`
`§
`§
`
`§
`§
`
`§
`§
`§
`
`CAUSE NO. 1 :22-C V-58-LY
`
`MEMORANDUM OPINION AND ORDER ON CLAIMS CONSTRUCTION
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`Before the court are the parties' Joint Claim Construction Statement filed January 7, 2022
`
`(Doc. #50), Defendant Apple, Inc.'s ("Apple") Opening Claim Construction Brief (Doc. #32),
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`Plaintiff Identity Security LLC' s ("Identity") Responsive Claim Construction Brief (Doc. #33),
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`Apple's Reply Claim Construction Brief (Doc. #41), Identity's Sur-Reply Claim Construction
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`Brief (Doc. #44), Identity's Motion to Supplement Claim Construction Record (Doc. #67), and all
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`related briefing.
`
`The court held a claim-construction hearing on March 9, 2022. See Markman v. Westview
`
`Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). The
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`court renders this memorandum opinion and order to construe certain terms of United States Patent
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`Nos. 7,493,497 ("497 Patent"), 8,020,008 ("008 Patent"), 8,489,895 ("895 Patent"), and
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`9,507,948 ("948 Patent") (collectively, the "Patents-in-Suit"). Having considered the patents,
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`prosecution history, applicable law, briefing, and arguments of counsel, the court renders the
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`following claim-construction order.
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`I.
`
`Introduction
`
`Identity sued Apple in the Waco Division of the United States District Court for the
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`Western District of Texas, alleging that Apple infringes on the Patents-in-Suit through its "Secure
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 2 of 17
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`Enclave" system, which provides security and authentication measures in various Apple products
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`such as iPhones, iPads, and MacBooks. The Patents-in-Suit share a common specification and
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`describe a "digital identity device" that uses digital identity data and a microprocessor with a
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`unique identifier to secure digital transactions. The Waco Division transferred the case to this
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`court on January 20, 2022.
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`II.
`
`Legal Standard
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`Determining infringement is a two-step process. See Markman, 517 U.S. at 384 ("[There
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`are] two elements of a simple patent case, construing the patent and determining whether
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`infringement occurred .
`
`.
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`. ."). First, the meaning and scope of the relevant claims must be
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`ascertained. Id. Second, the properly construed claims must be compared to the accused device.
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`Id. Step one, claim construction, is the issue before the court.
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`Claim construction is "exclusively' for 'the court' to determine." Teva Pharms. USA, Inc.
`
`v. Sandoz, Inc., 574 U.S. 318, 321(2015). The court construes patent claims without the aid of a
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`jury. See Markman, 517 U.S. at 391. The words of a claim "are generally given their ordinary
`
`and customary meaning." Phillips v. A WHCorp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)
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`(quoting Vitronics Corp v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]he
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`ordinary and customary meaning of a claim term is the meaning that the term would have to a
`
`person of ordinary skill in the art in question at the time of the invention. . . ." Id. at 1313. The
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`person of ordinary skill in the art is considered to have read the claim term in the context of the
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`entire patent.
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`Id. To ascertain the meaning of a claim, a court must look to the claim, the
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`specification, and the patent's prosecution history. Id. at 1314-17.
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`Claim language guides the court's construction of a claim term. Id. at 1314. "[TJhe context
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`in which a term is used in the asserted claim can be highly instructive." Id. Other claims, asserted
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`2
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 3 of 17
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`and unasserted, can provide more instruction because "terms are normally used consistently
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`throughout the patent .
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`. ." Id. Differences among claims, such as additional limitations in
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`.
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`dependent claims, can provide more guidance. Id. at 1314-15.
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`Claims must also be read "in view of the specification, of which they are a part." Forest
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`Lab 'ys, LLC v. Sigmapharm Lab 'ys, LLC, 918 F.3d 928, 933 (Fed. Cir. 2019). "[T]he specification
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`'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the
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`single best guide to the meaning of a disputed term." Phillips, 415 F.3 d at 1315 (quoting
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`Vitronics, 90 F.3d at 1582). In the specification, a patentee may define a term to have a meaning
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`that differs from the meaning that the term would otherwise possess. Id. at 1316. In such a case,
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`the patentee's lexicography governs. Id. The specification may also reveal a patentee's intent to
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`disavow claim scope. Id. Such intention is dispositive of claim construction. Id. Although the
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`specification may suggest that a certain embodiment is preferred, a particular embodiment
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`appearing in the specification will not be read into the claim when the claim language is broader
`
`than the embodiment. Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed.
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`Cir. 1994).
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`The prosecution history is another tool to supply the proper context for claim construction
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`because it shows how the inventor understood the invention. Phillips, 415 F.3 d at 1317. A
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`patentee may also serve as his own lexicographer and define a disputed term in prosecuting a
`
`patent. Home Diagnostics, Inc. v. L?feScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly,
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`distinguishing the claimed invention over the prior art during prosecution indicates what a claim
`
`does not cover. Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed. Cir. 1988).
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`The doctrine of prosecution disclaimer precludes a patentee from recapturing a specific meaning
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`that was previously disclaimed during prosecution. Omega Eng 'g, Inc. v. Raytek Corp., 334 F.3d
`
`3
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 4 of 17
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`1314, 1323 (Fed. Cir. 2003). A disclaimer of claim scope must be clear and unambiguous.
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`Middleton, Inc. v. Minnesota Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).
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`Although "less significant than the intrinsic record in determining the legally operative
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`meaning of claim language," the court may rely on extrinsic evidence to "shed useful light on the
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`relevant art." Phillips, 415 F.3d at 1317 (internal quotations omitted). Technical dictionaries and
`
`treatises may help the court understand the technology and the way one skilled in the art might use
`
`a claim term, but such sources may also provide overly broad definitions or may not be indicative
`
`of how a term is used in the patent. See id. at 1318. Similarly, expert testimony may aid the court
`
`in determining the meaning of a term in the pertinent field, but "conclusory, unsupported assertions
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`by experts as to the definition of a claim term are not useful to a court." Id. Generally, extrinsic
`
`evidence is "less reliable than the patent and its prosecution history in determining how to read
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`claim terms . .
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`. ." Id. Extrinsic evidence may be useful when considered in the context of the
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`intrinsic evidence, but it cannot "alter a claim construction dictated by a proper analysis of the
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`intrinsic evidence." Id. at 1319; On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386
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`F.3d 1133, 1139 (Fed. Cir. 2004). To the extent the court "make[s] subsidiary factual findings
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`about th[e] extrinsic evidence," the court construes the claims in light of those factual findings.
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`Teva Pharms., 574 U.S. at 320.
`
`III. Analysis
`
`The parties present two overarching disputes for the court's consideration. First, the parties
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`dispute whether certain terms are drafted in a means-plus-function format. See 35 U.S.C. § 112,
`
`¶ 6 ("Section 112 ¶ 6"); Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347-49 (Fed. Cir.
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 5 of 17
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`2015).' The parties also dispute whether the claims are indefinite even if the court finds that
`Section 112 ¶ 6 does not apply. See 35 U.S.C. § 112, ¶ 2 ("Section 112 ¶ 2).2 For the second set
`of terms, the parties dispute the construction of claim language that recites a "microprocessor
`
`identity" (or "microprocessor identity information") that "uniquely identifies" the microprocessor
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`(or the "microprocessor identity device"). The court will address each dispute in turn.
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`A.
`
`First set of disputed terms
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`The parties first dispute whether Section 112 ¶ 6 applies to certain terms that describe
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`binding the "digital identity data" to the "microprocessor," "microprocessor identity," or
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`"microprocessor identity device," depending on the claim. Apple argues that Section 112 ¶ 6
`
`applies and that the terms are indefinite because they fail to recite sufficient structure. Identity
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`argues that Section 112 ¶ 6 does not apply and the terms should be given their plain and ordinary
`
`meaning. The parties also dispute whether the claims are indefinite even if the court finds that
`
`Section 112 ¶ 6 does not apply. The parties' proposed constructions are listed in the following
`
`table:
`
`C1aiiHTeri::.
`
`ppIe
`
`ion
`
`"the digital identity data is
`bound to the microprocessor
`the
`identity by encrypting
`digital identity data using an
`the
`that
`uses
`algorithm
`microprocessor identity"
`
`constritetion
`Section 112 ¶ 6 Section 112 ¶ 6 applies.
`does not apply; not
`under
`indefinite
`Section 112 ¶ 2;
`plain and ordinary
`meaning.
`
`Function: "binding the digital identity
`data to the microprocessor identity by
`encrypting the digital identity data using
`the microprocessor identity"
`
`497 Patent. Claim 1
`
`The Leahy-Smith American Invents Act of 2011 (the "Act") changed the numbering of
`the relevant subsection from Section 112 ¶ 6 to Section 112(f). Because the substance of the
`subsection did not change, the court will refer to the relevant subsection as Section 112 ¶ 6 in line
`with the numeration at the time of the patent filing.
`
`2 See supra note 1. The Act changed the numbering of the relevant subsection to Section
`112(b), but the court will refer to it as Section 112 ¶ 2.
`
`5
`
`

`

`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 6 of 17
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`Structure: microprocessor, e.g., Fig. 4,
`Fig. 6 (405, 605); no algorithm disclosed;
`indefinite.
`
`Alternatively: to the extent Section 112 ¶
`6 does not apply: indefinite under Section
`112 ¶ 2.
`
`"the digital identity data is Section 112 ¶ 6 Section 112 ¶ 6 applies.
`bound to the microprocessor does not apply; not
`under Function: "binding the digital identity
`indefinite
`identity device by encoding,
`identity
`the microprocessor
`using the microprocessor, the Section 112 ¶ 2; data
`to
`digital identity data using an plain and ordinary device by encoding the digital identity
`data using the microprocessor identity
`the meaning.
`that
`uses
`algorithm
`information"
`identity
`microprocessor
`information"
`
`('008 Patent, Claim 1)
`
`"the digital identity data is
`bound to the microprocessor
`identity device using an
`encryption algorithm and the
`microprocessor identity
`information"
`
`('895 Patent, Claim 1)
`
`Structure: microprocessor, e.g., Fig. 4,
`Fig. 6 (405, 605); no algorithm disclosed;
`indefinite.
`
`Alternatively: to the extent Section 112 ¶
`6 does not apply: indefinite under Section
`112 2.
`Section 112 ¶ 6 Section 112 ¶ 6 applies.
`does not apply; not
`under Function: "binding the digital identity
`indefinite
`identity
`the microprocessor
`to
`Section 112 ¶ 2; data
`plain and ordinary device by encrypting the digital identity
`data using the microprocessor identity
`meaning.
`information"
`
`Structure: microprocessor, e.g., Fig. 4,
`Fig. 6 (405, 605); no algorithm disclosed;
`indefinite.
`
`Alternatively: to the extent Section 112 ¶
`6 does not apply: indefinite under Section
`112112.
`"the digital identity data is Section 112 ¶ 6 Section 112 ¶ 6 applies.
`bound to the microprocessor does not apply; not
`under Function: "binding the digital identity
`the
`indefinite
`encrypting, using
`by
`the digital Section 112 ¶ 2; data to the microprocessor by encrypting
`microprocessor,
`the
`identity data using
`the digital
`an plain and ordinary
`using
`data
`identity
`microprocessor identity information"
`the meaning.
`uses
`that
`algorithm
`identity
`microprocessor
`information"
`
`

`

`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 7 of 17
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`('948 Patent, Claim 1)
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`Structure: microprocessor, e.g., Fig. 4,
`Fig. 6 (405, 605); no algorithm disclosed;
`indefinite.
`
`Alternatively: to the extent Section 112 ¶
`6 does not apply: indefinite under Section
`112 2.
`
`Whether Section 112 ¶ 6 applies
`
`Patent applicants may express claim limitations using functional language. Williamson,
`
`792 F.3d at 1347-49. Means-plus-function claiming occurs when the claim language invokes
`
`Section 112 ¶ 6:
`
`An element in a claim for a combination may be expressed as a means or step for
`performing a specified function without the recital of structure, material, or acts in
`support thereof, and such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and equivalents thereof.
`
`35 U.S.C. § 112, ¶ 6. "Section 112 ¶ 6 offers patent applicants two options: (1) recite, in the claim,
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`a function without reciting structure for performing the function and limit the claims to the
`
`structure, materials, or acts disclosed in the specification (or their equivalents), in which case
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`[Section] 112 ¶ 6 applies, or (2) recite both a function and the structure for performing that function
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`in the claim, in which case [Section] 112 ¶ 6 is inapplicable." Dyfan, LLC v. Target Corp., 28
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`F.4th 1360, 1365 (Fed. Cir. 2022).
`
`Conducting a means-plus-function analysis involves two steps. Id. First, the court must
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`first determine "whether a claim limitation is drafted in means-plus-function format"in other
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`words, whether Section 112 ¶ 6 applies. Id. Second, if the court determines that Section 112 ¶ 6
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`applies, it must determine "what structure, if any, disclosed in the specification corresponds to the
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`claimed function." Id. Because the court concludes that Section 112 ¶ 6 does not apply, it will
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`limit the analysis to the first stepdetermining whether the claims are drafted in means-plus-
`
`function format.
`
`7
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 8 of 17
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`To determine whether Section 112 ¶ 6 applies, the court must determine if the limitation
`recites sufficiently definite structure to a person of ordinary skill in the art. Id. If the limitation
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`recites sufficiently definite structure, it is not drafted in means-plus-function format, and Section
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`112 ¶6 does not apply. Id.
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`Courts presume that Section 112 ¶ 6 applies when the limitation uses the word "means."
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`Williamson, 792 F.3d at 1348. If the limitation does not use the word "means," then courts
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`presume that Section 112 ¶ 6 does not apply. Id. "That presumption can be overcome, but only if
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`the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else
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`recites function without reciting sufficient structure for performing that function." Samsung Elecs.
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`Am., Inc. v. Prisua Eng'g Corp., 948 F.3d 1342, 1353-54 (Fed. Cir. 2020) (citing Williamson, 792
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`F.3d at 1349). A party challenging the presumption that Section 112 ¶ 6 does not apply must show,
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`by a preponderance of the evidence, that a person of ordinary skill in the art would not have
`
`understood the claims to provide sufficient structure considering the claim as a whole. Dyfan, 28
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`F.4th at 1367. Both intrinsic and extrinsic evidence can be informative in determining whether
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`the disputed language recites sufficiently definite structure. Id. at 1365-66.
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`The parties agree that because the disputed claim terms do not use the word "means," a
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`presumption exists that Section 112 ¶ 6 does not apply. Apple argues, however, that the terms
`
`recite a function"binding the digital identity data to the microprocessor identity by encrypting
`
`the digital identity data using the microprocessor identity"without reciting sufficiently definite
`
`structure. Apple argues that claims describe "using an algorithm" to perform this function, and an
`
`"algorithm" alone cannot provide sufficient structure. Identity responds that, when read in full,
`
`the claims recite an "encryption" algorithm ('497 Patent, '895 Patent, and '948 Patent) or an
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`"encoding" algorithm ('008 Patent)not just an "algorithm." Identity argues that a person of
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 9 of 17
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`ordinary skill in the art would view the claim language as "a specific reference to encryption
`
`algorithms existing at the time of the invention," not as generic terms or black-box recitations of
`
`structure. Identity further argues that the Patents-in-Suit do not require the use of a particular
`
`encryption algorithm, but instead allow for the use of any available encryption algorithm that suits
`
`the required inputs.
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`The court agrees with Identity that Section 112 ¶ 6 does not apply to the four claims at
`
`issue. Looking first to the claims themselves, the court notes that the language does not merely
`
`recite an "algorithm," but instead recites an "encryption" or "encoding" algorithm. See Dyfan, 28
`
`F.4th at 1369 ("the alleged means-plus-function limitation" must be reviewed "in full"); Zeroclick,
`
`LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (noting that court cannot "remove[] the
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`terms from their context"). Claim 1 of the '895 Patent specifically recites an "encryption
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`algorithm," and the remaining claims similarly recite an "encryption" or "encoding" algorithm
`
`using different syntax. The court disagrees with Apple's contention that the word "algorithm" in
`
`the claim language means "an abstract construct that refers to a computer program or a procedure
`
`implemented in computer logic or code." The extrinsic evidence that Apple provides to support
`
`its argumentincluding statements from Professor Douglas C. Schmidt and excerpts from
`
`technical dictionariesdoes not account for the full context of the claim language, but instead
`
`focuses almost exclusively on the word "algorithm" alone.
`
`More persuasive is Identity's argument that a person of ordinary skill of the art would
`
`understand the claim terms to connote structure because the terms reference conventional, publicly
`
`disclosed encryption algorithms existing at the time of the invention. In Zeroclick, the circuit
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`found that the terms "program" and "user interface code" made "specific references to
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`conventional graphical user interface programs or code, existing in prior art at the time of the
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 10 of 17
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`inventions," and therefore did not constitute "generic terms or black box recitations of structure."
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`891 F.3d at 1008. Likewise, in Dyfan, the circuit determined that the terms "code" and
`
`"applications" provided sufficient structure because persons of ordinary skill in the art could select
`
`"existing 'off-the-shelf" code or applications to perform the functions at issue. 28 F.4th at 1367-
`
`68. The circuit further held that "[c]laim terms 'need not connote a single, specific structure,' and
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`may instead 'describe a class of structures' and still recite 'sufficiently definite structure' to not
`
`invoke [Section] 112 ¶ 6." Id. at 1368.
`
`Identity provides extrinsic evidence from technical dictionaries, government publications,
`
`and other publicly disclosed sources showing that the claim language references "conventional"
`
`or "off-the-shelf' encryption or encoding algorithms known to persons of ordinary skill in the art
`
`at the time of invention. See Zeroclick, 891 F.3d at 1008; Dyfan, 28 F.4th at 1367. Identity
`
`references the Data Encryption Standard and the Advanced Encryption Standard, two federally
`
`approved standard encryption formats available at the time of the invention, both of which describe
`
`specific, publicly disclosed encryption algorithms. Dr. Schmidt, Apple's expert, testified that
`
`"many examples" of "different types of encryption algorithms" existed at the time of invention,
`
`including those available "in published form" or "in research labs." Dr. Schmidt specifically noted
`
`that, at the time of invention, various encryption algorithms "had been widely disseminated." Dr.
`
`Schmidt named "DES," "the Advanced Encryption Standard," "RSA," and "PGP" as examples of
`
`widely disseminated encryption algorithms. Further, the common specification for the Patents-in-
`
`Suit references "commercially available encryption methods." The court finds that a person of
`
`ordinary skill in the art would understand the encryption and encoding claim terms to connote
`
`sufficient structure because they describe conventional, off-the-shelf algorithms known at the time
`
`of invention.
`
`10
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 11 of 17
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`The court agrees with Identity that Apple fails to overcome the presumption that Section
`
`112 ¶ 6 does not apply to the claims at issue. Having considered Apple's arguments and evidence,
`
`including Professor Schmidt's testimony, language from the specification, and excerpts from the
`
`patent history, the court concludes that Apple has not shown by a preponderance of the evidence
`
`that a person of ordinary skill in the art would not have understood the disputed claims to provide
`
`sufficient structure. The court concludes that Section 112 ¶ 6 does not apply to the disputed terms
`
`in Claim 1 of the '497 Patent, Claim 1 of the '008 Patent, Claim 5 of the '894 Patent, or Claim 1
`
`of the '948 Patent.
`
`Whether the disputed terms are indefinite
`
`Apple argues in the alternative that even if Section 112 ¶ 6 does not apply to the disputed
`
`terms, the claims are indefinite under Section 112 ¶ 2. Apple argues that neither the claims nor
`
`the specification explains the use of the microprocessor identity (or microprocessor identity
`
`information). Apple further argues that because the Patents-in-Suit do not disclose a specific
`
`algorithm, a person of ordinary skill in the art cannot determine the scope of the claims. Identity
`
`responds that the claims and the specification inform a person of ordinary skill in the art on the
`
`scope of the invention by providing clear inputs and outputs for an encryption or encoding
`
`algorithm. Identity argues that the claims provide a specific invention of binding digital identity
`
`data to the microprocessor or microprocessor identity using an encryption or encoding algorithm.
`
`"[I]ndefiniteness is a question of law and in effect part of claim construction." ePlus, Inc.
`
`v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). Patent claims must particularly
`
`point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2.
`
`A claim, when viewed in light of the intrinsic evidence, must "inform those skilled in the art about
`
`the scope of the invention with reasonable certainty." Nautilus Inc. v. Biosig Instruments, Inc.,
`
`11
`
`

`

`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 12 of 17
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`572 U.S. 898, 910 (2014). If it does not, the claim fails under Section 112 ¶ 2 and is therefore
`
`invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from the perspective
`
`of one of ordinary skill in the art as of the time the application was filed. Id. at 911.
`
`The court agrees with Identity that the claims particularly point out and distinctly claim the
`
`subject matter regarded as the invention. Having reviewed the intrinsic evidence, the court finds
`
`that the disputed claims inform those skilled in the art about the scope of the invention with
`
`reasonable certainty. The claims specifically recite binding digital identity data to the
`
`microprocessor identity (or the "microprocessor" or the "microprocessor identity device,"
`
`depending on the claim) using an encryption or encoding algorithm. The court concludes that the
`
`disputed claims are not indefinite.
`
`The court's construction of the first set of disputed terms
`
`Having determined that Section 112 ¶ 6 does not apply to the first set of disputed claim
`
`terms and that the claims are not otherwise indefinite under Section 112 ¶ 2, the court concludes
`
`that the terms be given their plain and ordinary meaning.
`
`B.
`
`Second set of disputed terms
`
`For the second set of claim terms at issue, the parties dispute whether certain language that
`
`recites a "microprocessor identity" requires construction beyond its plain and ordinary meaning.
`
`Apple proposes a construction that adds the phrase "does not change once assigned" when
`
`describing the unique identifier for the microprocessor. Identity argues that the claim terms should
`
`be given their plain and ordinary meaning. The parties' proposed constructions are listed in the
`
`following table:
`
`12
`
`

`

`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 13 of 17
`
`C11iTerth.
`
`Idty.
`Consuctum
`"microprocessor identity that uniquely Plain and ordinary
`meaning.
`identifies the microprocessor"
`
`uniquely
`that
`"identifier
`the microprocessor
`identifies
`and that does not change once
`assigned"
`('497 Patent, Claim 1)
`uniquely
`that
`information Plain and ordinary "identifier
`"microprocessor
`identity
`the microprocessor
`identifies
`meaning.
`uniquely identifies the microprocessor"
`and that does not change once
`assigned"
`('948 Patent, Claim 1)
`uniquely
`that
`"microprocessor identity information that Plain and ordinary "identifier
`the microprocessor
`identifies
`identifies the microprocessor meaning.
`uniquely
`identity device and that does not
`identity device"
`change once assigned"
`
`('008 Patent, Claim 1; '895 Patent,
`Claim5)
`
`The heart of the parties' dispute on the second set of claim terms is whether the unique
`
`identifier "does not change once assigned." Apple argues that the claim language, specification,
`
`and prosecution histories make clear that the microprocessor identity is static. Identity argues that
`
`Apple's proposed constructions impermissibly narrow the scope of the claim terms from their plain
`
`and ordinary meaning.
`
`Apple first argues that the claim language shows that the microprocessor identifier is a
`
`"static value" because the terms recite a microprocessor identity information that "uniquely
`
`identifies" the microprocessor. Apple argues that if the identifier could change after it has been
`
`assigned, "it may no longer uniquely identify the microprocessor/microprocessor identity device
`
`because
`
`it might
`
`change
`
`to
`
`the
`
`same
`
`value
`
`already
`
`assigned
`
`to
`
`another
`
`microprocessor/microprocessor identity device." Identity responds that Apple's argument fails
`
`because "{t]wo identities can be generated at once, or a number could be generated after
`
`programming, each of which would still uniquely identify the microprocessor." Identity offers
`
`examples of designs where the microprocessor identity would be changed or updated without
`
`running into the problem that Apple describes. The court agrees with Identity that the claim
`
`13
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 14 of 17
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`language does not, by itself, indicate that the microprocessor identity "does not change once
`
`assigned." See Phillips, 415 F.3d at 1312 (claim terms "are generally given their ordinary and
`
`customary meaning.").
`
`Second, Apple argues that the specification supports the proposed constructions because it
`
`describes a "unique" microprocessor identity and refers to the identity information as being
`
`"etched" onto the microprocessor or the memory. Apple argues that etching is permanent,
`
`indicating that the identifier cannot be changed once assigned. Identity responds that "etching"
`
`refers to a process that can be reversed or modified and that etching can occur more than once on
`
`the programmable read-only memory.
`
`The court notes that it may read claims in view of the specification, but it cannot import
`
`limitations from the specification into the claims. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d
`
`1367, 1371 (Fed. Cir. 2014). Although the specification describes a "unique" microprocessor
`
`identifier, the qualifier "unique" does not make clear that the identifier "does not change once
`
`assigned." Likewise, the concept of "etching" as described in the specification also does not make
`
`clear that the identifier "does not change once assigned." The court concludes that reading the
`
`claim terms in light of the specification does not support the construction that the identifier "does
`
`not change once assigned."
`
`Apple's final and most persuasive argument is that the doctrine of prosecution history
`
`disclaimer requires the addition of "does not change once assigned" to the construction of the
`
`terms. Apple provides several excerpts from the applicant's responses to the United States Patent
`
`and Trademark Office when prosecuting the '497 Patent. The excerpts that Apple provides include
`
`several statements using variations of the language: "the microprocessor identity does not change
`
`once as assigned." Identity responds that, when read in their full context, these statements show
`
`14
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`

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`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 15 of 17
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`that the applicant aimed to show that its identifier is "more permanent" than the identifiers used in
`
`prior art. Identity also argues that the statements pertain to specific claim language that was not
`
`used in the final versions of the Patents-in-Suit.
`
`"The party seeking to invoke prosecution history disclaimer bears the burden of proving
`
`the existence of a 'clear and unmistakable' disclaimer that would have been evident to one skilled
`
`in the art." Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063-64 (Fed. Cir. 2016). "Where an
`
`applicant's statements are amenable to multiple reasonable interpretations, they cannot be deemed
`
`clear and unmistakable." 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1326
`
`(Fed. Cir. 2013). Although Apple provides persuasive excerpts from the prosecution history of
`
`the '497 Patent, Identity also provides reasonable alternative interpretations of the statements at
`
`issue. The bar that Apple must clear to invoke the doctrine of prosecution history disclaimer is
`
`high, and the court finds that Apple falls short. The court concludes that the prosecution history
`
`as well as the claims themselves and the specificationdoes not demand construction of the terms
`
`at issue beyond their plain and ordinary meaning.
`
`The court's construction of the second set of disputed terms
`
`Having determined that the claim language, specification, and prosecution history do not
`
`warrant a construction of the second set of disputed claim terms that adds the language "does not
`
`change once assigned" when referencing the microprocessor identifier, the court concludes that
`
`the terms be given their plain and ordinary meaning.
`
`15
`
`

`

`Case 1:22-cv-00058-LY Document 77 Filed 11/02/22 Page 16 of 17
`
`C.
`
`Summary table of the court's construction of the disputed terms
`
`-i: Tr
`
`Conrt's Costruction
`
`Section 112 ¶ 6 does not apply. Terms are
`not indefinite under Section 112 ¶ 2. Plain
`and ordinary meaning.
`
`Ciami 1enn
`
`fr/
`
`"the digital identity data is bound to the
`microprocessor identity by encrypting the
`digital identity data using an algorithm that
`uses the microprocessor identity"
`
`('497 Patent, Claim 1)
`"the digital identity data is bound to the
`microprocessor identity device by encoding,
`using the microprocessor, the digital identity
`data using an algorithm that uses the
`microprocessor identity information"
`
`('008 Patent, Claim 1)
`"the digital identity data is bound to the
`microprocessor identity device using an
`encryption algorithm and the microprocessor
`identity information"
`
`Section 112 ¶ 6 does not apply. Terms are
`not indefinite under Section 112 ¶ 2. Plain
`and ordinary meaning.
`
`Section 112 ¶ 6 does not apply. Terms are
`not indefinite under Section 112 ¶ 2. Plain
`and ordinary meaning.
`
`('895 Patent, Claim 1)
`Section 112 ¶ 6 does not apply. Terms are
`"the digital identity data is bound to the
`not indefinite under Section 112 ¶ 2. Plain
`microprocessor by encrypting, using the
`microprocessor, the digital identity data using and ordinary meaning.
`an algorithm that uses the microprocessor
`identity informa