Case 6:21-cv-00165-ADA Document 1-5 Filed 02/23/21 Page 1 of 4
`Case 6:21-cv-00165—ADA Document 1-5 Filed 02/23/21 Page 1 of 4
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`EXHIBIT E
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`EXHIBIT E
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`Case 6:21-cv-00165-ADA Document 1-5 Filed 02/23/21 Page 2 of 4
`Carolyn Chang
`carolyn@martonribera.com
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`548 Market Street, Suite 36117
`San Francisco, CA 94104
`415.360.2514
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`May 14, 2020
`VIA EMAIL
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`George C. Summerfield
`K&L Gates LLP
`70 West Madison Street
`Chicago, IL 60602
`george.summerfield@klgates.com
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`RE: Charter Pacific Corporation Ltd. Patent Portfolio
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`Dear George,
`I write to follow up on our May 5, 2020 telephone discussion and in response to your
`March 19, 2020 letter to Apple regarding Charter’s licensing and enforcement of its patent
`portfolio. Continuing previous correspondence on the matter, your March 19 letter once again
`discussed and included a claim chart for claim 1 of U.S. Patent No. 9,665,705 and also included
`a claim chart for claim 13 of the ’039 patent. As we indicated during our call on May 5, after
`careful review of the ’705 and ’039 patents, the claim charts you provided, the parties’ earlier
`discussions, and other relevant materials, we continue to believe that Apple does not require a
`license.
`With respect to the ’705 patent, your letter suggests that claim 1 reads on Apple’s Touch
`ID devices. As I explained during our call, our previous analysis of the ’705 patent is unaffected
`by your letter and claim chart. In particular, you continue to allege that the “transmitter”
`required by the patent is met by the Touch ID home button and the part of the Secure Enclave
`that compares the read biometric data to the representation saved in the Enclave, and that the
`required “receiver” is the part of the Secure Enclave processing that signal to allow access when
`there’s a match. See March 11 claim chart at 1-2. Thus, you accuse the Secure Enclave of being
`both the transmitter and the receiver, when the patent clearly requires two separate sub-systems.
`We also previously explained the patent claims are directed to a controller/transmitter and
`controller/receiver that are two separate systems that communicate wirelessly. In your March 19
`correspondence, you argued that the specification describes both wireless and wired systems.
`During the May 5 call, you indicated that you have found nothing in the file history to suggest
`that the claims are limited to wireless systems. The applicants, however, made clear that their
`invention was limited to wireless systems. Specifically, in the parent application of the ’705
`patent, the applicants argued over prior art that used a wired system stating the claimed
`“transmitter sub-system” is “clearly part of a wireless based system when read in the context of
`the specification as a whole.” August 26, 2014 Remarks in U.S. Patent No. 9,269,208.
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`Case 6:21-cv-00165-ADA Document 1-5 Filed 02/23/21 Page 3 of 4
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`You further contend that the initial registration of a user’s fingerprint with Touch ID
`meets the claim requirement of receiving a series of entries of a biometric signal characterized by
`a number and duration of entries which is mapped to an instruction. Enrollment of a user’s
`fingerprint for Touch ID does not, however, require a series of entries characterized by a specific
`number and duration of entries. And that series is not mapped to an instruction as required by
`the claim. On our call you suggested that there is nothing in the prosecution history that requires
`the series of entries to be of a predetermined number or duration. During prosecution of the
`parent application, however, the applicants stated that the invention is directed to receiving “a
`succession of biometric signals which the user ensures are of a predetermined duration,
`predetermined quantity, and being input within a predetermined time.” August 26, 2014
`Remarks in U.S. Patent No. 9,269,208. Registration for Touch ID does not involve a
`predetermined duration, predetermined quantity, or a predetermined input time.
`Your allegations with respect to the ’039 patent are similarly flawed. Specifically, you
`contend that use of the virtual Apple Card in conjunction with Touch ID meets the limitations of
`claim 13. Although you suggested on our call that there was nothing in the intrinsic record
`limiting the ’039 patent claims to a physical card, a review of the specification makes clear the
`patent is discussing a physical device (be it a credit card, smart card, or fob). The specification
`notes that all card devices “contain card information that is accessed by ‘coupling’ the card
`device to an associated card reader.” Col. 1:20-25. Each example given is a physical device; a
`standard credit card, a smart card, a wireless key-fob. Id. at 1:33-58. Use of a virtual Apple
`Card does not meet the “card device” requirement of the ’039 patent.
`Nor is the Secure Enclave a “card device reader” as your claim chart contends. The
`specification explains that a reader is “coupled” to a card to receive card data. Id. at 1:22-25.
`Every description in the specification involves a physical device that needs to be swiped or
`inserted into a card reader. There is no “coupling” between the virtual Apple Card in the wallet
`app and the Secure Enclave.
`The claim also requires a “means” for defining, dependent upon the received card
`information, a memory location external to the card. You contend that this is the memory of the
`Secure Enclave where biometric data is stored. But the storage of a user’s biometric data in the
`Secure Enclave is not dependent upon any received card information relating to Apple Card.
`Enrollment of a user’s fingerprint in Touch ID and the Secure Enclave is independent of use of
`Apple Card. Finally, you indicate that the “means” for this limitation is software, but there is no
`corresponding algorithm disclosed in the specification to describe this “means.” Therefore, the
`claim is also likely invalid.
`Therefore, for at least these reasons, Apple believes that it does not need a license to
`Charter Pacific’s portfolio. The reasons discussed above are merely examples of why Apple
`does not need a license, and are not exhaustive. We reserve any omitted non-infringement,
`invalidity, or other defenses. If you disagree with our assessment, please provide a detailed
`explanation of your position.
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`Case 6:21-cv-00165-ADA Document 1-5 Filed 02/23/21 Page 4 of 4
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`Sincerely,
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`MARTON RIBERA SCHUMANN & CHANG LLP
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`Carolyn Chang
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