Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 1 of 22
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`Case No. 6:21-cv-01101-ADA
`
`JURY TRIAL DEMANDED
`
`
`
`))))))))))
`
`AIRE TECHNOLOGY LTD.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`
`
`DEFENDANT APPLE INC.’S REPLY CLAIM CONSTRUCTION BRIEF
`
`
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 2 of 22
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ................................................................................................................. i
`
`TABLE OF EXHIBITS ................................................................................................................. iii
`
`TABLE OF AUTHORITIES ......................................................................................................... iv
`
`I.
`
`U.S. Patent No. 8,174,360 (the ’360 Patent) ....................................................................... 1
`
`
`
`
`
`
`
`“a measuring device for monitoring a property of the transmission
`oscillator which outputs a control signal when ascertaining a change of the
`monitored property, the monitored property of the transmission oscillator
`includes the frequency or impedance of the transmission oscillator in
`resonance” (claim 1) ............................................................................................... 1
`
`1.
`
`2.
`
`A “measuring device” is not a name for structure ...................................... 1
`
`The specification fails to disclose adequate corresponding structure
`for performing the claimed function ........................................................... 4
`
`“control signal” (claim 1, 11, and 15) ..................................................................... 5
`
`“bandwidth” (claim 2)............................................................................................. 6
`
`II.
`
`U.S. Patent No. 8,205,249 (“the ’249 Patent”) ................................................................... 7
`
`
`
`
`
`“an inherently relatively lower quality and an inherently relatively higher
`quality from a security perspective” (claims 1 and 10) .......................................... 7
`
`1.
`
`2.
`
`3.
`
`4.
`
`The specification’s single example does not provide an exclusive
`definition for this claim term ...................................................................... 8
`
`The claims are broader than the specification’s single example ................. 9
`
`The specification’s single example provides no objective criteria
`for determining the relative quality of other authentication methods ....... 10
`
`Aire’s backup argument that the Court should expressly construe
`the claims as limited by the specification’s example lacks merit ............. 13
`
`“the portable data carrier is arranged to perform a user authentication…to
`confirm the authentication to a terminal, and…to create quality
`information about said user authentication method used and to attach such
`quality information to the result of the security establishing operation”
`(claim 10) .............................................................................................................. 14
`
`III.
`
`U.S. Patent No. 8,581,706 (“the ’706 Patent”) ................................................................. 15
`
`i
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 3 of 22
`
`
`
`“security module” (claim 18) ................................................................................ 15
`
`IV.
`
`CONCLUSION ................................................................................................................. 15
`
`
`
`
`
`ii
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 4 of 22
`
`TABLE OF EXHIBITS
`
`Shorthand
`’360 patent
`’249 patent
`’706 patent
`Caloyannides Decl.
`’360 Pros. Hist.
`Finkenzeller
`Black Decl.
`’249 Pros. Hist.
`Russo
`Anderson
`O’Gorman
`
`Bolle
`Hurford
`Vitto
`’883 patent
`’738 patent
`Amer. Heritage
`Oxford
`Webster’s
`
`Huchinson & Welz
`
`Ganger
`
`Al-Muhtadi
`
`’249 Infringement
`Contentions
`
`Downing
`
`Brogioli Tr.
`
`’249 Pros. Hist.
`
`
`
`iii
`
`Ex. No. Description
`1
`U.S. Patent No. 8,174,360
`2
`U.S. Patent No. 8,205,249
`3
`U.S. Patent No. 8,581,706
`4
`Declaration of Dr. Michael Caloyannides
`5
`Prosecution History of U.S. Patent No. 8,174,360 (Excerpted)
`Finkenzeller, RFID Handbook: Radio-Frequency
`6
`Identification Fundamentals and Applications (1999)
`7
`Declaration of Dr. John Black
`8
`Prosecution History of U.S. Patent No. 8,205,249 (Excerpted)
`9
`U.S. Pat. Pub. No. 20030101348 to Russo et al.
`10
`Ross Anderson, Security Engineering (1st ed. 2001)
`Lawrence O'Gorman, Securing Business’s Front Door –
`11
`Password, Token, and Biometric Authentication (2002)
`Ruud M. Bolle et al., Biometric perils and patches, 35 Pattern
`12
`Recognition 2727 (Oct. 2001)
`Hurford, Grammar: A Student’s Guide (1994)
`13
`Vitto, Grammar by Diagram (2003)
`14
`U.S. Patent No. 8,695,883
`15
`U.S. Patent No. 7,161,738
`16
`American Heritage Dict. of the Eng. Lang. (3d ed. 1992)
`17
`Oxford English Dictionary (1961)
`18
`19 Webster’s Third New Int’l Dictionary (2002)
`Andrew Hutchinson & Marc Welz, Incremental Security in
`Open, Untrusted Networks, Future Trends in Distributed
`Computer Systems 151–154 (Nov. 1999)
`Gregory R. Ganger, Authentication Confidences (Apr. 28,
`2001)
`Jalal Al-Muhtadi et al., A Flexible, Privacy-Preserving
`Authentication Framework for Ubiquitous Computing
`Environments, Proceedings 22nd International Conference on
`Distributed Computing Systems Workshops (July 2002)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Defendant Apple Inc., Exhibit B
`(U.S. Patent No. 8,205,249)
`Douglas A. Downing, Ph.D. et al., Dictionary of Computer
`and Internet Terms, 262 (Barron’s Educational Series, Inc.
`8th ed. 2003)
`Transcript of Deposition of Dr. Michael C. Brogioli
`Applicant Remarks and Amendments, dated November 26,
`2008, filed in the prosecution of U.S. Patent No. 8,205,249
`(U.S. Patent App. No. 10-531,259)
`
`
`23
`
`24
`
`25
`
`26
`
`20
`
`21
`
`22
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 5 of 22
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`AstraZeneca AB v. Mylan Pharms. Inc.,
`19 F.4th 1325 (Fed. Cir. 2021) ..................................................................................................6
`
`Cisco Sys., Inc. v. ITC,
`873 F.3d 1354 (Fed. Cir. 2017)................................................................................................15
`
`Dyfan, LLC v. Target Corp.,
`28 F. 4th 1360 (Fed. Cir. 2022) .................................................................................................2
`
`Interval Licensing LLC v. AOL, Inc.,
`766 F.3d 1364 (Fed. Cir. 2014)..................................................................................7, 8, 10, 13
`
`Inventio AG v Thyssenkrupp Elevator Americas Corp.,
`649 F.3d 1350 (Fed. Cir. 2011)..................................................................................................3
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)......................................................................................4, 10, 13
`
`Rodime PLC v. Seagate Tech., Inc.,
`174 F.3d 1294 (Fed. Cir. 1999)................................................................................................10
`
`Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC,
`824 F.3d 999 (Fed. Cir. 2016)..................................................................................................13
`
`In re Walter,
`698 F. App’x 1022 (Fed. Cir. 2017) ........................................................................................11
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)..............................................................................................3, 4
`
`Statutes
`
`35 U.S.C. § 112 ¶ 6 ..............................................................................................................1, 2, 3, 4
`
`
`
`iv
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 6 of 22
`
`
`
`Defendant Apple Inc. (“Defendant” or “Apple”) respectfully submits this Reply Claim
`
`Construction Brief and asks the Court to adopt its constructions for the reasons set forth below
`
`and in its Consolidated Opening Claim Construction Brief (Dkt. 31, “Opening Br.”).
`
`I.
`
`U.S. PATENT NO. 8,174,360 (THE ’360 PATENT)
`
`
`“a measuring device for monitoring a property of the transmission oscillator
`which outputs a control signal when ascertaining a change of the monitored
`property, the monitored property of the transmission oscillator includes the
`frequency or impedance of the transmission oscillator in resonance” (claim 1)
`
`Aire’s Proposed
`Construction
`No construction necessary.
`This claim term does not
`invoke §112(6).
`
`Apple’s Proposed Construction
`Governed by 35 U.S.C. § 112 ¶ 6.
`Function: monitoring a property of the transmission oscillator,
`and outputting a control signal when ascertaining a change of the
`monitored property, wherein the monitored property of the
`transmission oscillator includes the frequency or impedance of
`the transmission oscillator in resonance
`Structure: Indefinite.
`
`Aire argues incorrectly that the term “measuring device” connotes sufficiently definite
`
`
`
`structure, but presents no meaningful argument that, if subject to § 112 ¶ 6, there is adequate
`
`disclosure of structure for performing the claimed function. Aire’s arguments that “measuring
`
`device” has structural significance fall short, and its inability to explain how the specification
`
`discloses adequate corresponding structure for the claimed functions should be taken for what it
`
`is—a concession that such disclosure does not exist, rendering the claims indefinite.
`
`1.
`
`A “measuring device” is not a name for structure
`
`Aire does not dispute that “device” is a nonce term akin to “means.” Instead, it argues
`
`that the words “measuring device” together have “a structural meaning in the relevant arts.”
`
`Resp. Br. 7. Aire’s cited evidence—three undated, non-technical, online dictionary definitions,
`
`and its expert’s conclusory testimony citing only those definitions—provides no support for that
`
`argument. Id. at 7-8. Each dictionary defines “measuring device” as an “instrument that shows
`
`
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 7 of 22
`
`the extent or amount or quantity or degree of something.” Id.1 That definition is not the name of
`
`a structure or class of structures; rather, it is a description of function. Moreover, that function
`
`has nothing to do with the claimed “measuring device”—which does not “show” anything, but
`
`instead performs functions absent from the cited dictionary definitions (e.g., ascertaining a
`
`change in frequency or impedance and outputting a control signal, ’360 patent, 12:7-12)—
`
`confirming that those definitions are irrelevant to understanding the claimed “measuring device.”
`
`Aire also is incorrect that the specification imparts adequate structural meaning to this
`
`claim term. Aire first points to Figure 1 and bolds each instance where the specification uses the
`
`word “structure.” Resp. Br. 2-3. But Aire does not dispute that Figure 1’s “measuring device” is
`
`only the proverbial black box, see Opening Br. 4 n.1, and the test is not whether the specification
`
`refers to the “measuring device” as a generic, abstract “structure”—but whether “measuring
`
`device” recites sufficiently definite structure, Resp. Br. 3.
`
`Aire’s reliance on Figure 2 fares no better. Figure 2 does not describe the “measuring
`
`device” as a particular structure or class of structures but instead, as Aire and its expert concedes,
`
`explains that the components that make up the “measuring device” can be any collection of
`
`circuits or software programs.2 ’360 patent, 4:66-5:1; Ex. 25 (Brogioli Tr.) at 40:9-41:4; 44:25-
`
`45:14 (admitting that specification describes the “measuring device” as any hardware, software,
`
`or combination thereof). A word that can be any hardware, or software, or combination of
`
`
`1 All emphasis added unless stated otherwise.
`2 Aire’s reliance on Dyfan to argue that “software program” connotes structure is misplaced.
`Resp. Br. 5. In Dyfan, the Federal Circuit held that claims reciting “code” / “application”
`configured to perform specific functions did not invoke § 112 ¶ 6. Dyfan, LLC v. Target Corp.,
`28 F.4th 1360 (Fed. Cir. 2022). Here, in contrast, the claims do not recite a software program,
`and the specification refers only to generic “software programs” that can be used to realize the
`claimed “measuring device”; nowhere does the ’360 patent describe or even state how such
`software programs are configured or otherwise describe the operation of such software programs
`in a manner similar to the claims in Dyfan.
`
`2
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 8 of 22
`
`hardware/software, is not the name of sufficiently definite structure, and contrary to what Aire
`
`asserts, this is a case where “the written description fails to place clear structural limitations on
`
`the [claimed] ‘device.’” Inventio AG v Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350,
`
`1359 (Fed. Cir. 2011) (quoted in Resp. Br. 2).3
`
`In addition, Aire mischaracterizes the prosecution history in contending that the examiner
`
`declared that the claimed “measuring device” “was a structure ‘known in the art.’” Resp. Br. 5.
`
`The examiner did not refer to “measuring device” as a “structure,” let alone one known in the art.
`
`Instead, the examiner stated that the limitation as a whole was known in the art—which has no
`
`bearing on whether the examiner understood the limitation to be directed to structure or instead
`
`function. Hollander Decl., Ex. 2 at 5; id., Ex. 3 at 4, 7. Moreover, the examiner’s prior art
`
`rejections show that the examiner did not understand the claimed “measuring device” to refer to
`
`a specific structure or class of structures: in the Friedman reference the examiner identified an
`
`RF detect circuit as the claimed measuring device, and in Charrat the examiner identified a
`
`microprocessor. Hollander Decl., Ex. 3 at 4, 7. In other words, far from interpreting the claimed
`
`“measuring device” as being the name for a particular structure or class of structures, the
`
`examiner’s rejections indicated that he understood the limitation by its function, since any
`
`component could satisfy the limitation so long as it performed the claimed function.
`
`Finally, Aire’s argument that surrounding claim language supplies sufficient structure
`
`also miss the mark. First, Aire asserts that because the claim language “describes the objectives
`
`and operations” of the “measuring device,” it does not invoke § 112 ¶ 6. But the only claim
`
`
`3 Aire relies on Inventio for its holding that § 112 ¶ 6 does not apply, but Williamson criticized
`that case for applying a heightened presumption when the claim limitation does not recite the
`word “means.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348-49 (Fed. Cir. 2015)
`(“We also overrule the strict requirement of a ‘showing that the limitation essentially is devoid of
`anything that can be construed as structure.’”).
`
`3
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 9 of 22
`
`language Aire points to is the claimed function of the “measuring device.” Any claimed function
`
`can be characterized as describing objectives and operations. In effect, Aire argues that one
`
`avoids application of § 112 ¶ 6 by claiming function—exactly the opposite of the law. Second,
`
`Aire’s argument that structural significance is imparted because the claim delineates what the
`
`“measuring device” is connected to and how they interact, is both wrong and ignores the relevant
`
`inquiry—whether the claim describes how the measuring device “interacts with other
`
`components. . . in a way that might inform the structural character of the [measuring device] or
`
`otherwise impart structure to the [measuring device] as recited in the claim.” Williamson, 792
`
`F.3d at 1351. Here, the claims do not recite any specific physical or logical connections between
`
`components, and Aire cannot explain how the recited output of a control signal that is received
`
`by the switching apparatus has any bearing on the structure of the claimed “measuring device.”
`
`None of Aire’s arguments shows that “measuring device” is the name of structure.
`
`2.
`
`The specification fails to disclose adequate corresponding structure
`for performing the claimed function
`
`In its Opening Brief, Apple and its expert explained in detail why the figures and
`
`specification passages that purport to correspond to the “measuring device” are inadequate to
`
`perform the claimed function of the “measuring device.” Those explanations are unrebutted:
`
`neither Aire nor its expert addresses those arguments. Aire and its expert merely assert, without
`
`any explanation or analysis, that if this term is subject § 112 ¶ 6, the ’360 patent’s specification
`
`discloses corresponding structure. Resp. Br. 9. Such conclusory argument/testimony should be
`
`disregarded. Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005). Moreover, fatally to
`
`Aire’s conclusory position, its expert admitted that Figures 5 and 7 (which correspond to the
`
`specification’s “measuring unit”) describe a PLL circuit that is used for measuring phase change,
`
`4
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 10 of 22
`
`which is different from frequency or impedance. Ex. 25 (Brogioli Tr.) at 64:12-19, see also
`
`Ex. 4 (Caloyannides Decl.) ¶ 58.
`
`Apple’s expert’s testimony is unrebutted and there is no reasonable dispute that the
`
`specification fails to disclose adequate corresponding structure for the claimed function.
`
`Accordingly, the Court should hold this claim term indefinite.
`
`
`
`“control signal” (claim 1, 11, and 15)
`
`Aire’s Proposed Construction
`No construction necessary. Plain and ordinary
`meaning.
`
`Apple’s Proposed Construction
`“a signal that is or contains a command”
`
`The parties agree that this term should be understood according to its ordinary and
`
`
`
`customary meaning as understood by a POSITA, but disagree on that meaning. While Aire’s
`
`expert states that “control signal” needs no construction “because the term would have been (and
`
`is) well-understood by a POSITA in the context of the claims,” Dr. Brogioli fails to explain what
`
`he contends is the plain meaning of “control signal.” Hollander Decl., Ex. 13 (Brogioli Decl.)
`
`¶ 41. Instead, Dr. Brogioli purports to explain “control signal” only in the negative—that the
`
`ordinary meaning to a POSITA would not “include Defendants’ unduly narrow requirement that
`
`it ‘is or contains a command.’” And even then, he fails to explain why or how control signal is
`
`broader than a signal that is or contains a command. Aire’s position seemingly equates “control
`
`signal” with any signal, thereby reading the word “control” out of the claims entirely.
`
`Aire’s assertion that applicant’s statement in prosecution (equating the claimed control
`
`signal to a “power down command”) did not rise to the level of clear and unmistakable
`
`disclaimer, is a strawman argument. Apple has not argued that there was disclaimer, nor does
`
`Apple need to make that argument, since Apple’s proposed construction captures the term’s plain
`
`meaning. Rather, applicant’s prosecution statements confirm that applicant used “control signal”
`
`5
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 11 of 22
`
`in its usual sense as referring to a signal that is or contains a command. AstraZeneca AB v.
`
`Mylan Pharms. Inc., 19 F.4th 1325, 1335 (Fed. Cir. 2021) (“[T]he prosecution history can be
`
`evaluated to determine how a person of ordinary skill would understand a given claim term.”).
`
`Finally, contrary to Aire’s assertion, Samsung’s IPR position squares with Apple’s
`
`construction here. As Aire correctly notes, Samsung read the claimed “control signal” on an
`
`“interrupt input to start the controlling circuit.” An interrupt is a command to cease operation so
`
`that another operation can occur. See Ex. 24 (Downing), at 262. Samsung’s IPR position is
`
`consistent with Apple’s proposed construction.4
`
`
`
`“bandwidth” (claim 2)
`
`Aire’s Proposed Construction
`No construction necessary.
`
`Apple’s Proposed Construction
`“range of frequencies used to communicate”
`
`Aire appears to agree with the core of Apple’s construction, that “bandwidth” here refers
`
`
`
`to a range of frequencies, and quibbles only with the addition of “used to communicate” in
`
`Apple’s proposed construction. That language simply clarifies that bandwidth here refers to the
`
`range of frequencies over which the oscillating circuit may communicate—it does not require
`
`communication in fact occur across that range of frequencies. Indeed, Aire agrees that “the
`
`specification describes bandwidth in the context of something ‘available’ for transmission.”
`
`Resp. Br. 12. Given that Aire’s concern appears to be only with the word “used” and otherwise
`
`agrees that bandwidth refers to a range of frequencies available for transmission, for clarity,
`
`modifying Apple’s proposed construction to read “range of frequencies available for
`
`communication” would appear to resolve any dispute around this term.
`
`
`4 Apple’s IPR position is also consistent with Apple’s proposed construction.
`
`6
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 12 of 22
`
`II.
`
`U.S. PATENT NO. 8,205,249 (“THE ’249 PATENT”)
`
`
`“an inherently relatively lower quality and an inherently relatively higher
`quality from a security perspective” (claims 1 and 10)
`
`Aire’s Proposed Construction
`No construction necessary. Plain and ordinary
`meaning.
`
`Aire and its expert do not dispute many of the points established in Apple’s Opening
`
`Apple’s Proposed Construction
`Indefinite.
`
`Brief. They do not dispute that there was no standard in the art for determining the “quality from
`
`a security perspective” of an authentication method, or for determining whether one method was
`
`“inherently relatively” higher or lower quality than another.5 See Opening Br. 14-15; Resp. Br.
`
`14, 16-17; Ex. 7 (Black Decl.) ¶¶ 61-71. Rather, Aire agrees that the claim language recites
`
`subjective terms of degree. See Resp. Br. 13. Aire also acknowledges that for such claim
`
`language, the law requires the patent set forth “objective boundaries for those of skill in the art”
`
`sufficient to determine the scope of the alleged invention with reasonable certainty. Id.; see also
`
`Interval Licensing, 766 F.3d at 1371-73; Opening Br. 13. Finally, Aire and its expert do not
`
`dispute that the ’249 patent sets forth only a single example for this claim limitation: biometric
`
`authentication methods are of inherently relatively higher quality as compared to knowledge-
`
`based methods. See, e.g., ’249 patent, 1:31-36, 3:24-33.
`
`Accordingly, whether this claim limitation is indefinite turns on one narrow issue:
`
`whether the specification’s single example (biometric versus knowledge-based methods)
`
`provides objective criteria sufficient for a POSITA to determine with reasonable certainty the
`
`scope of the claims. That example plainly does not.
`
`
`5 Nor does Aire dispute that the relative quality of an authentication method is viewpoint
`dependent and context specific. See Opening Br. 14. That undisputed point is enough to render
`this claim indefinite. See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir.
`2014) (“As we have explained, a term of degree fails to provide sufficient notice of its scope if it
`depends ‘on the unpredictable vagaries of any one person’s opinion.’”) (citation omitted).
`
`7
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 13 of 22
`
`1.
`
`The specification’s single example does not provide an exclusive
`definition for this claim term
`
`This case is on all fours with Interval Licensing, a critical case that Aire fails to
`
`distinguish (see Opening Br. 16; Resp. Br. 21), in which the Federal Circuit found a term of
`
`degree indefinite where the specification’s example (like here) did not set forth an “exclusive
`
`definition” for that claim term. Interval Licensing, 766 F.3d at 1373 (“[W]e decline to cull out a
`
`single ‘e.g.’ phrase from a lengthy written description to serve as the exclusive definition of a
`
`facially subjective claim term.”). Indeed, there is no dispute that the specification’s example of
`
`biometric versus knowledge-based authentication methods is exemplary, and not an exclusive
`
`definition of the claim’s scope: Aire and its expert readily acknowledge the biometric/knowledge
`
`comparison is exemplary. See, e.g., Resp. Br. 20 (“[T]he claims require a comparison between
`
`authentication methods that inherently differ from a security perspective, for example
`
`knowledge-based vs. biometric-based.”); Hollander Decl., Ex. 12 (Smith Decl.) ¶ 22.
`
`The intrinsic record could not be clearer that the biometric/knowledge comparison is
`
`exemplary and not limiting or otherwise definitional. Where the specification first discusses
`
`“quality information” of an authentication method, it precedes its reference to biometric versus
`
`knowledge-based methods with the words “[f]or example.” ’249 patent, 1:43-56. When the
`
`specification again discusses quality information, it uses the critical word “here” in stating that
`
`the biometric method is the higher quality one, referencing its comparison to knowledge-based
`
`methods. Id., 3:21-33 (“The portable data carrier . . . expediently supports at least one
`
`knowledge-based authentication method, e.g. a PIN check, and at least one biometric method
`
`. . . . The biometric method inherently constitutes the higher-quality one here . . . .”). The word
`
`“here” makes clear that the biometric method is not inherently a higher-quality method in all
`
`cases—otherwise, “here” would be superfluous. The specification also states that the alleged
`
`8
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 14 of 22
`
`invention “allows further embodiments and variations.” ’249 patent, 5:42. During prosecution,
`
`applicant also consistently described the biometric/knowledge comparison as exemplary only.
`
`See, e.g., Ex. 8 (’249 Pros. Hist.), AIRE-SAMS-00000755 (“For example, [the portable data
`
`carrier] may support at least one knowledge-based authentication method (a PIN check), and at
`
`least one biometric method.”); id. (“[T]he terminal 14 checks how authentication is to be effected
`
`(e.g., knowledge-based or biometrically).”).
`
`In summary, there is no dispute that the specification’s single example is not an exclusive
`
`definition of the claims’ subjective term—which is Interval Licensing’s dispositive test.
`
`2.
`
`The claims are broader than the specification’s single example
`
`Even though the specification’s one example does not provide an exclusive definition,
`
`Aire nevertheless argues that it provides sufficient objective criteria because the claims are co-
`
`extensive with that single example—but that argument has no merit. Aire expressly argues that
`
`whether an authentication method is “inherently relatively” of higher quality is a binary
`
`determination whether that method is a biometric one, and whether an authentication method is
`
`“inherently relatively” of lower quality is a binary determination whether that method is a
`
`knowledge-based one. Resp. Br. 14. But independent claims 1 and 10 are plainly not limited to
`
`a biometric versus knowledge-based authentication method.
`
`That the claims are broader is clear from the claim language itself. Independent claims 1
`
`and 10 recite a portable data carrier arranged to perform “different quality user authentication
`
`methods” wherein the difference in quality “varies between an inherently relatively lower quality
`
`and an inherently relatively higher quality.” ’249 patent, cls. 1, 10. Had applicant intended to
`
`limit the claims to use of a biometric versus knowledge-based method, it could have done so
`
`expressly, with fewer and clearer words. To be certain, applicant knew how to claim biometric
`
`and knowledge-based methods, as it did so expressly in certain dependent claims—
`
`9
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 15 of 22
`
`demonstrating that where applicant intended to so limit its claims to either of those methods,
`
`applicant did so using express, unambiguous language. See ’249 patent, cls. 3, 5; see also
`
`Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1305 (Fed. Cir. 1999) (“Had Rodime
`
`intended or desired to claim thermal compensation as a function of the positioning means in the
`
`asserted claims, it could have done it explicitly, as in claim 11.”).
`
`Further, as noted above, the intrinsic record also confirms that the claim scope is broader,
`
`as the biometric/knowledge-based comparison is only exemplary. See supra Section II.A.1.
`
`Limiting the claim scope to the biometric/knowledge comparison would violate “one of
`
`the cardinal sins of patent law—reading a limitation from the written description into the
`
`claims.” Phillips, 415 F.3d at 1320 (citation omitted). The very premise of Aire’s argument that
`
`the biometric/knowledge comparison provides sufficient objective criteria is flawed.
`
`3.
`
`The specification’s single example provides no objective criteria for
`determining the relative quality of other authentication methods
`
`Revealingly and fatally to the claims, Aire does not even attempt to argue that the
`
`specification’s single example of a biometric versus knowledge-based authentication method
`
`provides objective criteria for determining the “inherent[] relative” “quality” of any other
`
`authentication methods. That example plainly does not, as it extends only as far as itself. Given
`
`that the claims are not limited to that example, Aire’s inability to show how that one example
`
`provides objective criteria for comparing other authentication methods (or combinations thereof)
`
`highlights the impermissible “zone of uncertainty” that envelops these claims. See Interval
`
`Licensing, 766 F.3d at 1374 (“With this lone example, a skilled artisan is still left to wonder what
`
`other forms of display are unobtrusive and non-distracting.”).
`
`Aire’s attempt to explain away the lack of objective criteria for determining the relative
`
`quality of other authentication methods falls far short. First, Aire’s contention that token-based
`
`10
`
`

`

`Case 6:21-cv-01101-ADA Document 42 Filed 07/07/22 Page 16 of 22
`
`authentication “does not make sense in the context of the claimed portable data carrier” (Resp.
`
`Br. 19) is unsupported. There is no dispute that token-based authentication methods are a type of
`
`“user authentication method” and so are within the scope of the claim language, and Aire points
`
`to no disclaimer or lexicography that would exclude such methods from what is claimed.
`
`Instead, it points to a single statement in the prosecution history (see Resp. Br. 19 (quoting
`
`Hollander Decl., Ex. 10 (OA 5/27/2010) at 8)) that simply explains that the claims require the
`
`portable data carrier to perform one of multiple “different quality user authentication methods.”
`
`Ex. 8 (’249 Pros. Hist.), AIRE-SAMS-00000758. Nothing in this statement excludes the use of a
`
`token separate from the portable data carrier (e.g., a key fob with a code that changes every 60
`
`seconds) as one of the supported authentication methods of differing quality. See Ex. 7 (Black
`
`Decl.) ¶¶ 45, 69-71. Aire did not (and cannot) refute this basic point.6 See Resp. Br. 19-20.
`
`Second, Aire’s attempt to explain away the lack of any objective criteria for multi-factor
`
`authentication (MFA) methods also falls short. Resp. Br. 20. Aire addresses only one example
`
`of two different MFA methods, without providing any argument or evidence that the
`
`specification provides objective guideposts for comparing MFA methods generally. Even then,
`
`Aire is unable to explain which of the two exemplary MFA methods (fingerprints entered in a
`
`specific order versus fingerprints entered in a separate key fob) is of inherently relatively higher
`
`
`6 Apple has