Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 1 of 20
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`AIRE TECHNOLOGY LTD.,
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`Plaintiff,
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`Case No. 6:21-cv-01101-ADA
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`JURY TRIAL DEMANDED
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`v.
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`APPLE INC.,
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`Defendant.
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`PLAINTIFF AIRE TECHNOLOGY LTD.’S SUR-REPLY
`CLAIM CONSTRUCTION BRIEF
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 2 of 20
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ................................................................................................................... 1
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`II. DISPUTED TERMS ................................................................................................................ 1
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`A. U.S. Patent No. 8,174,360 (“the ’360 Patent”) .................................................................... 1
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`i. “a measuring device…” ................................................................................................... 1
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`1. The claim confirms the term has structural meaning .................................................. 1
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`2. The specification confirms the term has a structural meaning .................................... 2
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`3. The prosecution history confirms the term has structural meaning ............................. 3
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`4. The extrinsic evidence confirms the term has structural meaning .............................. 3
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`5. The claim is not indefinite ........................................................................................... 4
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`ii. “a control signal,” Claim 1, 11, and 15 ........................................................................... 5
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`iii. “bandwidth,” Claim 2 ..................................................................................................... 5
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`B. U.S. Patent No. 8,205,249 (“the ’249 Patent”) .................................................................... 6
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`i. “an inherently relatively lower quality and an inherently relatively higher quality from
`a security perspective”, Claims 1 and 10 ............................................................................. 6
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`1. The ’249 Patent specification teaches the meaning of the phrase ............................... 6
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`2. Apple engages in the wrong indefiniteness inquiry ..................................................... 9
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`a. The breadth of the claims do not render them indefinite ...................................... 10
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`b. Apple’s “unanswered questions” are all answered ............................................... 10
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`3. In the alternative, the Court should construe the disputed phrase ............................. 12
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`ii. “the portable data carrier is arranged to perform a user authentication . . . to confirm
`the authentication to a terminal, and . . . to create quality information . . . and to attach
`such quality information . . . ”, Claim 10 .......................................................................... 13
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`C. U.S. Patent No. 8,581,706 (“the ’706 Patent”) .................................................................. 15
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`i. “security module”, Claim 18 ......................................................................................... 15
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`III.
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`CONCLUSION ................................................................................................................. 15
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`i
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 3 of 20
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`Cases
`
`TABLE OF AUTHORITIES
`
`Blitzsafe Tex., LLC v. Subaru Corp.,
`No. 2:17-CV-00421-JRG-RSP, 2018 WL 6504174 (E.D. Tex. Dec. 11, 2018) ......................... 2
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ................................................................................................. 10
`
`Cisco Sys., Inc. v. Int’l Trade Comm’n, 873 F.3d 1354, 1361 (Fed. Cir. 2017) ............................ 15
`
`Danfoss Power Sols. Inc. v. DeltaTech Controls,
`No. 16-CV-3111 (NEB/DTS), 2019 WL 1517615 (D. Minn. Apr. 8, 2019) ............................ 13
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ............................................................................................... 7, 8
`
`Dyfan, LLC v. Target Corp.,
`28 F.4th 1360 (Fed. Cir. 2022) .................................................................................................... 3
`
`Ergo Licensing LLC v. CareFusion 303, Inc.,
`673 F.3d 1361 (Fed. Cir. 2012) ................................................................................................... 3
`
`Greenberg v. Ethicon Endo-Surgery, Inc.,
`91 F.3d 1580 (Fed. Cir. 1996) ..................................................................................................... 3
`
`Hologic, Inc. v. SenoRx, Inc.,
`639 F.3d 1329 (Fed. Cir. 2011) ................................................................................................. 13
`
`Inventio AG v. ThyssenKrupp Elevator Ams. Corp.,
`649 F.3d 1350 (Fed. Cir. 2011) ................................................................................................... 2
`
`Invitrogen Corp. v. Biocrest Mfg., L.P.,
`424 F.3d 1374 (Fed. Cir. 2005) ................................................................................................. 10
`
`Irdeto Access, Inc. v. Echostar Satellite Corp.,
`383 F.3d 1295 (Fed. Cir. 2004) ................................................................................................. 13
`
`Nature Simulation Sys. Inc. v. Autodesk, Inc.,
`23 F.4th 1334 (Fed. Cir. 2022) .................................................................................................... 6
`
`Nevro Corp. v. Bos. Sci. Corp.,
`955 F.3d 35 (Fed. Cir. 2020) ....................................................................................................... 6
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.,
`30 F.4th 1339 (Fed. Cir. 2022) .................................................................................................. 10
`
`Nystrom v. TREX Co.,
`424 F.3d 1136, 1145 (Fed. Cir. 2005) ....................................................................................... 13
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`
`
`ii
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 4 of 20
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`Pelican Int’l Inc. v. Hobie Cat Comp.,
`No. 20-cv-2390-BAS-MSB, 2022 WL 298959 (S.D. Cal. Feb. 1, 2022) ................................... 3
`
`R2 Sols. LLC v. Deezer SA,
`No. 4:21-cv-90, 2022 WL 36240 (E.D. Tex. Jan. 4, 2022) ......................................................... 4
`
`Rexnord Corp. v. Laitram Corp.,
`274 F.3d 1336 (Fed. Cir. 2001) ................................................................................................. 14
`
`Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC,
`824 F.3d 999 (Fed. Cir. 2016) ................................................................................................... 13
`
`Sonix Tech. Co. v. Publ’ns Int’l, Ltd.,
`844 F.3d 1370 (Fed. Cir. 2017) ........................................................................................... 6, 7, 8
`
`Sonrai Memory Ltd. v. Oracle Corp.,
`No. 1:22-CV-94-LY, 2022 WL 800730 (W.D. Tex. Mar. 16, 2022) .......................................... 1
`
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`iii
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 5 of 20
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`I.
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`INTRODUCTION
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`Plaintiff Aire Technology Ltd. (“Aire”) submits this sur-reply claim construction brief in
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`response to Apple’s Reply Claim Construction Brief (Dkt. No. 42, “Reply”).
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`II.
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`DISPUTED TERMS
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`A.
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`U.S. Patent No. 8,174,360 (“the ’360 Patent”)
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`i.
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`“a measuring device…”
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`Each of Apple’s quibbles with Aire’s arguments is meritless. Apple cannot meet its burden
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`to overcome the presumption that 112(6) does not apply in light of the claims, specification,
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`prosecution history, and extrinsic evidence.
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`1. The claim confirms the term has structural meaning
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`Apple does not dispute that the claim recites three structural components that interact with
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`each other: (1) “transmission oscillator,” (2) “communication element,” and (3) “switching
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`apparatus.” In light of the interaction of the structural components recited in the claim, Apple is
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`wrong that the claim does not describe how the measuring device interacts with other components
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`in a way that informs the structural character of the measuring device. Reply at 4. Specifically,
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`the claim recites (1) that the “measuring device” monitors the frequency or impedance of the
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`“transmission oscillator,” (2) that the “measuring device” outputs a control signal to the “switching
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`apparatus,” and (3) that the “switching apparatus” is connected to the “measuring device.” Thus,
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`the claim recites the measuring device’s input, output, and connections. See Sonrai Memory Ltd.
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`v. Oracle Corp., No. 1:22-CV-94-LY, 2022 WL 800730, at *9 (W.D. Tex. Mar. 16, 2022)
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`(“Structure may also be provided by describing the claim limitation’s operation, such as its input,
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`output, or connections.”) (citation omitted).
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`Moreover, the claim recites how the “measuring device” operates to achieve its objectives:
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`1
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 6 of 20
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`it ascertains a change of the frequency or impedance of the transmission oscillator and then outputs
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`a control signal to the switching apparatus. Apple cannot distinguish the numerous cases that hold
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`that terms are not governed by 112(6) under these circumstances. See Dkt. No. 33 (“Resp. Br.”)
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`at 6-7. For example, in Inventio the Federal Circuit held that the term “modernizing device”
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`denoted sufficient structure based on surrounding claim language that “delineate the components
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`that the modernizing device is connected to, describe how the modernizing device interacts with
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`those components, and describe the processing that the modernizing device performs.” Inventio
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`AG v. ThyssenKrupp Elevator Ams. Corp., 649 F.3d 1350, 1359 (Fed. Cir. 2011).1 This is not a
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`case where the claim merely recites “a measuring device for measuring” without providing any
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`structural limitations on the “device.”
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`2. The specification confirms the term has a structural meaning
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`As was the case in Inventio, the specification here supports the conclusion that the claimed
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`“measuring device” is not a purely functional limitation. Inventio, 649 F.3d at 1358-59. For
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`example, Figures 2, 5, and 7 provide detailed depictions of the circuitry and components that
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`comprise the “measuring device.” The figures further illustrate the connections and interaction
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`with the other three claimed structural components. The figures also depict the inputs and outputs
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`of the “measuring device.” Thus, Apple is wrong to suggest that the specification merely describes
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`the “measuring device” as “any collection of circuits or software programs.” Reply at 2. Apple is
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`also incorrect that the specification does not “state how such software programs are configured.”
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`Id. at 2, n.2. Rather, the flow charts in Figures 3 and 4 provide algorithms that a POSITA would
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`1 Apple’s footnote that Williamson eliminated the “strong” presumption based on the absence of
`the word “means” (Reply at 3 n.3) is irrelevant because courts continue to apply the reasoning set
`forth in Inventio and the strength of the presumption does not impact the analysis here. See, e.g.,
`Blitzsafe Tex., LLC v. Subaru Corp., No. 2:17-CV-00421-JRG-RSP, 2018 WL 6504174, at *24
`(E.D. Tex. Dec. 11, 2018).
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`
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`2
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 7 of 20
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`understand in the context of a software implementation. See Ergo Licensing LLC v. CareFusion
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`303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (“An algorithm may be expressed in any
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`understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any
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`other manner that provides sufficient structure.”).2 Thus, Apple’s attempt to distinguish Dyfan
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`falls flat, and the fact the “measuring device” may be implemented in software does not mean that
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`it is governed by 112(6). See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022).
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`3. The prosecution history confirms the term has structural
`meaning
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`Apple cannot dispute that neither the Examiner nor Applicant ever contended that the term
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`
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`was governed by 112(6). Reply at 3. Indeed, Apple’s argument only confirms that the Examiner
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`applied the plain and ordinary meaning and did not attempt to compare the corresponding structure
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`in the specification to the structure identified in the alleged prior art—if the Examiner thought the
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`term “measuring device” did not provide sufficient structure, then the Examiner would have been
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`obligated to identify and compare the corresponding structure under 112(6).
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`4. The extrinsic evidence confirms the term has structural meaning
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`Dr. Brogioli’s declaration citing multiple dictionary definitions provides further evidence
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`that “measuring device” is a known term that describes a class of structures. First, Apple’s
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`argument that the definition of the noun measuring device “is a description of function” is
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`meritless. Reply at 2. The “Federal Circuit has repeatedly condoned the use of dictionaries to
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`determine if a disputed term has achieved recognition as a noun denoting structure, even [where]
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`the noun is derived from the function performed.” Pelican Int’l Inc. v. Hobie Cat Comp., No. 20-
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`cv-2390-BAS-MSB, 2022 WL 298959, at *8 (S.D. Cal. Feb. 1, 2022) (citing Greenberg v. Ethicon
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`2 All emphasis added unless stated otherwise.
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`3
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 8 of 20
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`Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Dictionary definitions make clear that
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`the noun ‘detent’ denotes a type of device with a generally understood meaning in the mechanical
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`arts, even though the definitions are expressed in functional terms.”)). Second, Apple’s
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`argument that the claimed “measuring device” “does not ‘show’ anything” is also not persuasive—
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`the claimed “measuring device” shows (i.e., “gives indication or record of”)3 a change in the
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`frequency or impedance.
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`5. The claim is not indefinite
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`Should the Court find the presumption against 112(6) is overcome, Apple cannot meet its
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`burden to prove by clear and convincing evidence that the claims are indefinite for lack of
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`corresponding structure. At a minimum, Figures 3 and 4 (along with the associated descriptions
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`in the specification) provide corresponding structure in the form of a “flow chart” that the
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`specification clearly links to the claimed “measuring device.” ’360 Patent at 6:50-67; 7:36-8:6.
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`For example, the specification plainly states that the “measuring unit 46” (illustrated in Figure 2)
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`monitors the frequency or impedance of the transmission oscillator in resonance. Id. at 6:53-62.
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`Apple’s expert testimony is not credible. For example, Apple’s expert did not even bother
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`to consider or review the exemplary “measuring device” the patent identifies “in the stated German
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`patent application DE 102 06 676.” ’360 Patent at 4:14-16; Ex. 14 (Caloyannides Depo. Tr.) at
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`114:1 – 115:16. At most, Apple appears to raise an enablement or written description argument
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`with respect to the modified PLL implementation described in Figures 5 and 7. See R2 Sols. LLC
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`v. Deezer SA, No. 4:21-cv-90, 2022 WL 36240, at *21 (E.D. Tex. Jan. 4, 2022) (“Defendants’
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`argument appears to be more akin to a challenge as to the adequacy of written description or
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`3 See, e.g., Merriam-Webster defining “show” to mean “5: to give indication or record of.” Ex. 15
`(https://www.merriam-webster.com/dictionary/show).
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`4
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 9 of 20
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`enablement, which are not at issue in these claim construction proceedings.”). But even Apple’s
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`expert admitted that Figure 5 can detect a change in frequency through the resulting phase change
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`using the phase locked loop implementation. Ex. 14 (Caloyannides Depo. Tr.) at 113:9-19. Thus,
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`the specification describes and illustrates several different embodiments of the “measuring
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`device,” and Apple’s argument fails.
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`ii.
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`“a control signal,” Claim 1, 11, and 15
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`Aire does not seek to read the word “control” out of the claims; rather, it is Apple that seeks
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`to redefine the notion of “control” to require “command.” Reply at 5. But Apple cannot identify
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`any evidence that suggests the term should be redefined. Moreover, Apple still refuses to explain
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`why such a change is necessary or what the impact of the change actually means in terms of the
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`scope of the claim. Nor could Apple’s expert explain the impact of construing the term to require
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`“a command” in his deposition. Ex. 14 (Caloyannides Depo. Tr.) at 125:19 – 126:25.
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`
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`Apple misrepresents the prosecution history by arguing that the applicant “equat[ed] the
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`claimed control signal to a ‘power down command.’” Reply at 5. As explained in Aire’s Response,
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`the cited statement was not even made with respect to the term “control signal.” Resp. Br. at 10.
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`Moreover, Apple’s argument is nonsensical because the claimed “control signal” is used in the
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`context of switching on the communication element—not for a “power down command.”
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`Finally, Apple’s IPR further contradicts its construction here. While Apple’s IPR expressly
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`addressed Apple’s proposed construction for the term “measuring device,” Apple did not even
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`bother to notify the Board about its proposed construction for the term “control signal.” Ex. 16 at
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`13-15 (Apple’s ’360 IPR). Nor did Apple apply its proposed construction to the alleged prior art.
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`iii.
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`“bandwidth,” Claim 2
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`In an effort to limit the number of disputes before the Court, the parties have agreed that
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`5
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 10 of 20
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`the term “bandwidth” in Claim 2 of the ’360 Patent means a “range of frequencies available for
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`communication.”
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`B.
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`U.S. Patent No. 8,205,249 (“the ’249 Patent”)
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`i.
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`“an inherently relatively lower quality and an inherently
`relatively higher quality from a security perspective”, Claims 1
`and 10
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`Apple engages in the wrong indefiniteness analysis by insisting that the ’249 Patent “does
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`
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`not provide an exclusive definition” for the disputed phrase and repeatedly veers into an
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`impermissible “unanswered questions” inquiry regarding the disputed claim scope. See Nature
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`Simulation Sys. Inc. v. Autodesk, Inc., 23 F.4th 1334, 1340 (Fed. Cir. 2022) (“The district court
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`applied an incorrect standard of ‘unanswered questions’ and a flawed analysis of validity.”). But
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`“[d]efiniteness does not require that a potential infringer be able to determine ex ante if a particular
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`act infringes the claims.” Nevro Corp. v. Bos. Sci. Corp., 955 F.3d 35, 40 (Fed. Cir. 2020). The
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`relevant inquiry is whether “a patent’s claims, viewed in light of the specification and prosecution
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`history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
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`Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). And, here, the ’249
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`Patent specification and prosecution history inform a POSITA of the scope of Claims 1 and 10
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`with reasonable certainty. See Resp. Br. at 13-19; Smith Decl. ¶¶ 13-20.4
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`1. The ’249 Patent specification teaches the meaning of the phrase
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`The ’249 Patent specification “provides an objective baseline through which to interpret
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`the claims.” Sonix Tech. Co., 844 F.3d at 1378. For example, the ’249 Patent specification
`
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`4 Apple misrepresents that Aire “agrees that the claim language recites subjective terms of degree”
`and that Aire does not “dispute that the relative quality of an authentication method is viewpoint
`dependent and context specific.” Reply at 7 n.5. Not so. Aire’s position is that—to the extent the
`phrase is a term of degree—the intrinsic evidence provides objective criteria for a POSITA to
`ascertain the meaning of the disputed phrase.
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`6
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 11 of 20
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`consistently teaches that the “inherently relatively higher quality” authentication method is one
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`that “presupposes the personal presence of the user,” such as through the use of a biometric method
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`like a fingerprint, while the “inherently relatively lower quality” methods are taught as knowledge-
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`based methods (such as a password or PIN) because “the knowledge can have been acquired by
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`an unauthorized user.” See Resp. Br. at 14-17. The ’249 Patent specification further delineates
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`examples of what types of authentication methods may fall within each category—for example,
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`by explaining that the “higher” quality biometric methods may be based on “physiological
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`features, such as facial features, features of the eye or fingerprints, or behavior-based features,
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`such as speech or writing sequences expressed by the voice or by writing operations.” ’249 Patent
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`at 2:59-63. The ’249 Patent specification also provides examples of the “lower” quality methods,
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`such as a knowledge-based PIN. 5 Id. at 3:25-29.
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`There is no “subjective” aspect to this dichotomy: either a method presupposes the
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`presence of the user (such as a biometric), in which case it is the “inherently relatively higher
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`quality” method, or a method does not presuppose the user (such as a knowledge-based method
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`like a PIN), in which case it is the “inherently relatively lower quality” method. Smith Decl. ¶¶
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`13-18; Ex. 17 (Smith Depo. Tr.) at 25:15-26:9. This determination is made through the “objective”
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`criteria of whether the authentication method presupposes the presence of the user (i.e., a biometric
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`method) or can otherwise be shared (i.e., a knowledge-based method). Id. Thus, to the extent the
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`disputed phrase “may be a term of degree, it is not ‘purely subjective.’” Sonix Tech. Co., 844 F.3d
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`at 1378; see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014)
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`5 Aire disagrees that the specification provides a “single example” for the disputed phrase. The
`’249 Patent consistently characterizes the “higher” quality methods as biometrics and the “lower”
`quality methods as knowledge-based methods in multiple instances and across all figures. See
`’249 Patent at 1:31-56, 3:21-33, 3:55-61, 4:5-8, 5:31-37.
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`7
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 12 of 20
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`(for “terms of degree, specific and unequivocal examples may be sufficient to provide a skilled
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`artisan with clear notice of what is claimed.”).
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`Likewise, this case is not like Interval Licensing because the disputed phrase is not
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`“subjective” and viewpoint dependent. Reply at 8. “Interval Licensing involved terms that were
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`subjective in the sense that they turned on a person’s tastes or opinion.” Sonix Tech. Co., 844 F.3d
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`at 1378. But this is not a situation where the meaning of the disputed phrase “‘depend[s] solely
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`on the unrestrained, subjective opinion of a particular individual purportedly practicing the
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`invention,’ without sufficient guidance in the specification to provide objective direction to one of
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`skill in the art.” DDR Holdings, 773 F.3d at 1260 (citation omitted).
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`Apple’s instance that the ’249 Patent’s use of the words “[f]or example” or “here” does not
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`inject uncertainty into the comparison between the “lower” and “higher” authentication methods.
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`Reply at 8-9. First, Apple relies on the use of “[f]or example” in the following sentence:
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`For example, in a purse application it can be provided that an amount of money
`below a limiting value can be withdrawn from an account after PIN authentication,
`while amounts of money above the limiting value can only be withdrawn after
`authentication by means of a biometric feature.
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`Reply at 8 (citing ’249 Patent at 1:43-56). This passage is an “example” of an application of the
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`use of the different categories of authentication methods in connection with differing monetary
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`thresholds—i.e., the use of the “lower” knowledge-based PIN for low monetary thresholds and the
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`“higher” biometric authentication for higher monetary thresholds. This exemplary application
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`hardly casts doubt on the breadth of the claim scope.
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`Apple next takes issue with the following discussion of the claimed portable data carrier:
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`It expediently supports at least one knowledge-based authentication method, e.g. a
`PIN check, and at least one biometric method, within which a biometric feature of
`the user 30 to be presented at the terminal 14 is checked. The biometric method
`inherently constitutes the higher-quality one here, since it presupposes the personal
`presence of the user 30; this is not ensured in the knowledge-based method since
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`8
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 13 of 20
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`the knowledge can have been acquired by an unauthorized user.
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`Reply at 8; ’249 Patent at 3:21-33. The word “here” is clarifying that the biometric method is the
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`higher-quality authentication method because “it presupposes the personal presence of the user.”
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`See Ex. 17 (Smith Depo. Tr.) 46:4-15 (“the biometric … is the example of a technique that
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`presupposes the presence of the user.”).
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`Finally, the cited portions of the prosecution history only further define the objective
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`criteria. Reply at 9. For example, in explaining that the portable data carrier “may support at least
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`one knowledge-based authentication method (a PIN check), and at least one biometric method[,]”
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`the Applicant was explaining that the portable data carrier may also have additional knowledge
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`and biometric-based methods, but supports at least one of each method. Reply at 9 (citing Dkt.
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`No. 31-8 at -755). Notably, Apple omits that in the very next sentence the Applicant explains:
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`“Obviously, the biometric method inherently constitutes a higher quality method of authentication
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`as compared with the knowledge-based authentication method….” Id. Apple’s other cited portion
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`of the prosecution history supports the categorical dichotomy: “[T]he terminal 14 checks how
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`authentication is to be effected (e.g., knowledge-based or biometrically).” Id. That is, the terminal
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`checks if the authentication is effected via a knowledge-based or biometric-based authentication
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`method. As such, the prosecution history enforces the teachings of the “lower” and “higher”
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`authentication methods as those that presuppose the personal presence of the user (such as a
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`biometric) and those that do not (such as knowledge-based).
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`2. Apple engages in the wrong indefiniteness inquiry
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`Apple attempts to muster up “unanswered questions” about the scope of Claims 1 and 10
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`and create a “zone of uncertainty” by arguing that the ’249 Patent does not answer all the
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`hypothetical questions it can possibly concoct. Reply at 9-11. However, “a patentee need not
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`9
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 14 of 20
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`define his invention with mathematical precision in order to comply with the definiteness
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`requirement.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005).
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`Regardless, the supposed issues identified by Apple are in fact “answered” by the teachings of the
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`specification, prosecution history, and understanding of a POSITA.
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`a. The breadth of the claims do not render them indefinite
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`Apple argues that Claims 1 and 10 are written in a manner that is broader than a comparison
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`between the “lower” and “higher” knowledge-based and biometric authentication methods. Reply
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`at 9. “But a claim is not indefinite just because it is broad.” Niazi Licensing Corp. v. St. Jude
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`Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022). Specifically, Apple is wrong that because
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`the claims contemplate that the portable data carrier is arranged to perform “different quality
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`authentication methods,” then they are impermissibly broad. Reply at 9. While the ’249 Patent
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`consistently describes the “lower” and “higher” categories of authentication methods, the ’249
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`Patent expressly provides examples of methods that may fall within either of the categories—for
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`example, the ’249 Patent contemplates the use of a litany of possible biometric methods, any one
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`of which would fall in the “inherently relatively higher quality” category. See, e.g., ’249 Patent at
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`2:59-63. Further, the “case law makes clear that a patentee need not ‘describe in the specification
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`every conceivable and possible future embodiment of his invention.’” CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). As such, Apple is
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`wrong that the claims are somehow indefinite because the Applicant could have written claims
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`that expressly defined the “lower” and “higher” authentication methods in the claims.6
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`b. Apple’s “unanswered questions” are all answered
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`6 Apple’s reliance on dependent claims 3 and 5 is unpersuasive. Those dependent claims simply
`clarify which authentication method was used in a particular electronic transaction.
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`10
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 15 of 20
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`Apple is still wrong that its “token-based” authentication methods cast doubt on the validity
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`of Claims 1 and 10. Apple’s insistence that the ’249 Patent does not address the use of a “token
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`separate from the portable data carrier,” such as “a key fob with a code that changes every 60
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`seconds” is a red herring. Reply at 11. As Apple notes, a “key fob” is not the portable data carrier.
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`But the ’249 Patent requires that the portable data carrier “perform different user authentication
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`methods”—something Apple’s expert agrees with. Ex. 18 (Black Depo. Tr.) at 29:10-19.7 To that
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`end, Apple’s example (that contemplates entering a “code” provided from some external “fob”) is
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`simply an act of executing a knowledge-based authentication method. Both experts (Drs. Smith
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`and Black) had no issue applying this hypothetical to the ’249 Patent and Apple’s expert (Dr.
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`Black) confirmed that the “PIN is just coming from something else, th[e] random one-time
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`password-generator.” See Ex. 18 (Black Depo. Tr.) at 26:17 – 28:3; see also Ex. 17 (Smith Depo.
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`Tr.) at 51:17 – 52:4, 52:11-16 (Dr. Smith: “the token is basically a knowledge based at the point
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`where you get the passkey or whatever it is from the fob, so both of those would fall underneath
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`the same category of an inherently relatively lower quality technique.”).
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`Next, Apple complains that Aire is unable to address its “multi-factor authentication
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`(MFA)” method hypotheticals. Reply at 11. Not so. When Apple posed its MFA examples to Dr.
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`Smith, he explained exactly how a POSITA would understand an MFA method requiring
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`fingerprints entered in a specific order in the context of the ’249 Patent: “[T]he question to ask is:
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`Does the technique require or presuppose the presence of the user? And so the answer is: Yes, it
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`does.” Ex. 17 (Smith Depo. Tr.) at 62:7-20. So, as to Apple’s example, Dr. Smith explained that
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`7 Indeed, Dr. Smith reinforced that the portable data carrier is itself “something you have” and may
`itself be considered a “token-based user authentication method”—meaning Apple’s attempt to
`insert uncertainty with its token-based hypotheticals makes little sense here. Ex. 18 (Black Depo.
`Tr.) at 17:19 – 18:17.
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`11
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`Case 6:21-cv-01101-ADA Document 49 Filed 07/28/22 Page 16 of 20
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`this example would fall into the “inherently relatively higher quality” category because “it
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`presupposes the presence of the user.” Id. at 62:21 – 63:13. Additionally, because it is the portable
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`data carrier that must perform the authentication, Apple still fails to explain how entering a
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`fingerprint into a separate key fob works or has any relevance to the ’249 Patent claims. Reply at
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`12; see also Ex. 18 (Black Depo. Tr.) at 28:4 – 29:9 (“if authentication is complete when you scan
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`your fingerprint on a fob, it’s separate from anything in the claimed invention.”). And, to the
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`extent the fingerprint scan data is merely relayed from the fob to the portable data carrier, then it
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`is the same category of authentication as directly using a fingerprint.
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`Finally, Apple’s argument that the ’249 Patent fails to provide “any guideposts for
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`comparing different authentication methods within the same category” is unpersuasive. Reply at
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`12. The ’249 Patent is concerned with distinguishing the two categories