Case 6:21-cv-01101-ADA Document 73-3 Filed 01/19/23 Page 1 of 32
`Case 6:21-cv-01101-ADA Document 73-3 Filed 01/19/23 Page 1 of 32
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`EXHIBIT A
`EXHIBIT A
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`Case 6:21-cv-01101-ADA Document 73-3 Filed 01/19/23 Page 2 of 32
`Trials@uspto.gov
`Paper: 11
`571-272-7822
`Date: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`
`IPR2022-01137
`Patent 8,581,706 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, BRIAN J. McNAMARA, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`SMITH, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`Case 6:21-cv-01101-ADA Document 73-3 Filed 01/19/23 Page 3 of 32
`IPR2022-01137
`Patent 8,581,706 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Petitioner, Apple Inc., filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1–3, 11, 12, 16, 18, and 20 of U.S. Patent
`No. 8,581,706 B2 (Ex. 1001, “the ’706 patent”) pursuant to 35 U.S.C.
`§ 311(a). Patent Owner, Aire Technology Ltd., filed a Preliminary Response
`(Paper 6, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. With our email
`authorization of October 13, 2022 (Ex. 1024), Petitioner filed a Reply
`(Paper 9, “Reply”) and Patent Owner filed a Sur-Reply (Paper 10,
`“Sur-Reply”) directed solely to an issue regarding whether we should
`exercise our discretion to deny the Petition under 35 U.S.C. § 314(a).
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we institute an inter partes review as
`to claims 1–3, 11, 12, 16, 18, and 20 of the ’706 patent on all grounds of
`unpatentability asserted in the Petition.
`II. REAL PARTIES-IN-INTEREST
`Petitioner identifies itself (Apple, Inc.) as its sole real party-in-
`interest. Pet. 90. Patent Owner identifies itself (Aire Technology Ltd.) as its
`sole real party-in-interest. Paper 4, 2.
`III. RELATED MATTERS
`The Petition states that the ’706 patent is the subject of the following
`proceedings:
`Aire Technology Ltd. v. Google LLC, No. 6-21-01104, W.D. Tex.,
`filed Oct. 25, 2021;
`
`2
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`IPR2022-01137
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`
`Aire Technology Ltd. v. Apple, Inc., No. 6-21-01101, W.D. Tex., filed
`Oct. 22, 2021 (“the Apple litigation”);
`
`Aire Technology Ltd. v. Samsung Electronics co, Ltd. et al., No.
`6-21-00955 W. D. Tex., filed Sep. 15, 2021;
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00876 (PTAB, May 2, 2022)
`
`Aire Technology Ltd. v. Garmin International, Inc., No. 8-22-01027,
`C.D. Ca., filed May 20, 2022.
`Pet. 68. Patent Owner identifies the following additional proceedings as
`“related current and/or former proceedings involving the patent at issue.”
`Paper 4, 2–3.
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00874 (PTAB April 22, 2022);
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00875 (PTAB April 22, 2022);
`
`Samsung Electronics Co., Ltd. v. Aire Technology Ltd.,
`IPR2022-00877 (PTAB May 2, 2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01135 (PTAB June 15,
`2022);
`
`Apple Inc. v. Aire Technology Ltd., IPR2022-01136 (PTAB June 15,
`2022).
`
`IV. EXERCISE OF DISCRETION
`In the Preliminary Response, Patent Owner contends that we should
`exercise our discretion to deny the Petition in favor of the parallel Apple
`litigation identified above taking place in the U.S District Court for the
`Western District of Texas (“the Texas court”). Prelim. Resp. 1–10. The
`Board has held that the advanced state of a parallel district court action is a
`
`3
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`factor that may weigh in favor of denying a petition under § 314(a). See
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20
`(PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We
`consider the following factors to assess “whether efficiency, fairness, and
`the merits support the exercise of authority to deny institution in view of an
`earlier trial date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6. We consider each of
`these factors below.
`On June 21, 2022, the Director of the USPTO issued several
`clarifications concerning the application of the Fintiv Factors. See Interim
`Procedure For Discretionary Denials In AIA Post-Grant Proceedings With
`Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo)1.
`
`
`1 Available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf.
`
`4
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`The Director’s memo states that “the precedential impact of Fintiv is limited
`to the facts of that case.” Guidance Memo 2. Under the Guidance Memo
`“the PTAB will not rely on the Fintiv factors to discretionarily deny
`institution in view of parallel district court litigation where a petition
`presents compelling evidence of unpatentability.” Guidance Memo 2.
`Compelling, meritorious challenges will be allowed to proceed
`at the PTAB even where district court litigation is proceeding in
`parallel. Compelling, meritorious challenges are those in which
`the evidence, if unrebutted in trial, would plainly lead to a
`conclusion that one or more claims are unpatentable by a
`preponderance of the evidence.”
`Guidance Memo 4.
`The Guidance memo further states,
`[c]onsistent with Sotera Wireless, Inc., the PTAB will not
`discretionarily deny institution in view of parallel district court
`litigation where a petitioner presents a stipulation not to pursue
`in a parallel proceeding the same grounds or any grounds that
`could have reasonably been raised before the PTAB.
`Guidance Memo 7–8. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to§ II.A).
`The Guidance memo also states,
`when considering the proximity of the district court's trial date to
`the date when the PTAB final written decision will be due, the
`PTAB will consider the median time from filing to disposition of
`the civil trial for the district in which the parallel litigation
`resides.
`Guidance Memo 8–92. With these factors and guidance in mind, we
`consider the parties’ contentions.
`
`
`2 See https://www.uscourts.gov/statistics-reports/analysis-reports/federal-
`court-management-statistics.
`
`5
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`IPR2022-01137
`Patent 8,581,706 B2
`As to factors 1 and 2, Patent Owner contends that there is unlikely to
`be a stay, that a trial in the Apple litigation is scheduled to occur before a
`final decision will issue in this proceeding, and that the Texas court does not
`move a trial date, except in extreme situations. Prelim. Resp. 3–6, Sur-reply
`1–2. Petitioner contends that generalized evidence that the Texas court
`denies stays is a neutral factor as to this particular case, and that, although
`the scheduled trial date is November 6, 2023, statistics indicate that trial is
`more likely to occur late in February 2024, i.e., after a final decision in this
`proceeding. Reply 1–2. Petitioner further notes that, even if a trial occurs
`on the scheduled date, the due date for a final decision in this proceeding is
`sufficiently close in time as to disfavor denial of institution. Id. at 2. Under
`these circumstances, we find that factors 1 and 2 do not support exercising
`discretion to deny institution.
`As to factors 3 and 4, Patent Owner argues that there is a significant
`overlap in the substance of the proceedings and that before a decision on
`institution, the parties will have invested resources to complete claim
`construction briefing, exchange infringement and invalidity contentions, and
`that discovery will be underway. Prelim. Resp. 6–9, Sur-reply 3–5. Noting
`(i) that the Texas court has already delayed a Markman claim construction
`hearing until May 16, 2023, i.e., more than four months after the due date of
`a decision on institution in this proceeding, and (ii) that fact discovery and
`expert discovery in the Apple litigation continue for two months and seven
`months, respectively, after the due date for an institution decision, Petitioner
`contends that the lack of substantial investment in the Texas litigation
`weighs against denial of institution. Reply 2–3. As to overlapping issues,
`Petitioner stipulates that “it will not pursue in the parallel district court
`proceeding the prior art obviousness combinations on which trial is
`
`6
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`Case 6:21-cv-01101-ADA Document 73-3 Filed 01/19/23 Page 8 of 32
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`instituted for the claims on which trial is instituted. In Sand, a nearly
`identical stipulation was found to effectively address the risk of duplicative
`efforts.” Reply 3–4 (citing Sand Revolution II, LLC v. Continental
`Intermodal Group Trucking LLC, IPR201901393, Paper 24 at 11–12 (June
`16, 2020) (informative) (“Sand”)). Patent Owner asserts that Petitioner’s
`“limited stipulation is not ‘nearly identical’ to the stipulation in Sand,”
`because it fails to stipulate that Petitioner “would not pursue any ground
`raised or that could have been reasonably raised in an IPR, i.e., any ground
`that could be raised under §§ 102 or 103 on the basis of prior art patents
`or printed publications.” Sur-reply 4 (citing Sand at 12 n.5). In Sand,
`however, although the panel’s footnote stated that a broader stipulation
`would better address concerns, the panel found Petitioner’s stipulation that it
`would not pursue in district court litigation the same grounds as those
`asserted in the IPR “mitigates to some degree the concerns of duplicative
`efforts” and ‘weighs marginally in favor of not exercising discretion to deny
`institution.” Sand at 12. In these circumstances, we find that the investment
`in invalidity issues in the Apple litigation and Petitioner’s stipulation do not
`support exercising discretion to deny institution. See Sand at 10–12.
`As to factor 5, it is undisputed that Petitioner is a defendant in the
`Apple litigation. But this factor alone does not outweigh the other factors
`that thus far do not support exercising discretion to deny institution. Further
`as to factor 6, and as discussed in detail below, at this stage of the
`proceeding, we find that Petitioner has shown that at least some of the ’706
`patent claims at issue recite well-known and obvious methods for secure
`authentication of a user of a portable data carrier. Patent Owner
`acknowledges that its Preliminary Response does not address the merits of
`Petitioner’s challenges. Prelim. Resp. 9.
`
`7
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`Having weighed the factors above, including the relative timing of the
`proceedings, the amount of effort that has been and is yet to be expended in
`the Apple litigation and in this proceeding, Petitioner’s stipulation, and the
`relative merits of Petitioner’s unrebutted challenges, we find that, taken as a
`whole, the factors do not favor exercising discretion to deny institution. In
`consideration of the above, we decline to exercise discretion to deny
`institution.
`
`V. THE ’706 PATENT
`The ’706 patent relates to “a method for contactless communication of
`at least two applications stored on a common portable data carrier.”
`Ex. 1001, 1:8–11. The background of the ’706 patent explains “that a
`plurality of applications can be located on a portable data carrier at the same
`time.” Id. at 2:5–9. The ’706 patent describes that the portable data carrier
`transmits communication-readiness signals for each of its applications to the
`reading device. Id. at 3:5–20. For example, “a first communication-
`readiness signal to the reading device is generated for a first of the at least
`two applications . . . indicating to the reading device the communication
`readiness of said first application.” Id. at 3:8–13. Additionally, “a second
`communication-readiness signal to the reading device is generated for a
`second of the at least two applications . . . and indicates to the reading device
`the communication readiness of said second application.” Id. at 3:13–20.
`The communication-readiness signals include an application identification
`number assigned to the corresponding application. Id. at 3:5–20. Figure 1
`of the ’706 patent is reproduced below.
`
`8
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`
`
`Figure 1 above illustrates data carrier 100 and reading device 200.
`Ex. 1001, 7:8–10. Applications 10, 20, 30 are located on the data carrier.
`Id. at 7:10–11. Toggling device 50 is set up to toggle between the different
`applications. Id. at 7:12–13. Each of the applications is assigned an
`identification number UID1, UID2, UIDn, which are managed by
`communication device 70. Id. at 7:14–17. When the reading device enters
`into communication with one or more applications, the reading device can
`select them for further communication via the identification numbers and
`address them by means of session numbers CID1, CID2, CIDn. Id. at 7:17–
`21.
`
`9
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`Patent 8,581,706 B2
`The ’706 patent discloses that the communication device 70 of data
`carrier 100 can be set up to store, in a nonvolatile memory, information
`about which of the applications 10, 20, 30 last communicated with the
`reading device 200. Ex. 1001, 9:5–9. This record may then be used to select
`the application that was most recently used; “It is also possible, however, to
`first generate a communication-readiness signal for that application 10, 20,
`30 with which the reading device 200 actively communicated last.” Id. at
`9:18–21.
`
`VI. ILLUSTRATIVE CLAIM
`Challenged claim 1 of the ’706 patent recites:
`1. A method for contactless communication of a reading
`device with
`at
`least
`two communication-ready
`applications located on a portable data carrier, comprising the
`steps:
`
`generating a first communication-readiness signal to the
`reading device for a first of the at least two applications, the
`communication-readiness signal comprising a first identification
`number which is assigned to the first of the at least two
`applications and
`indicates
`to
`the
`reading device
`the
`communication readiness of said first application, and
`generating a second communication-readiness signal to
`the reading device for a second of the at least two applications,
`the second communication-readiness signal comprising a second
`identification number different from the first identification
`number, which is assigned to said second application and
`indicates to the reading device the communication readiness of
`said second application, and
`storing information in a nonvolatile memory of the data
`carrier about which of the at least two applications was last
`selected for further communication by the reading device,
`wherein
`the
`reading device
`selects
`for
`further
`communication one or more of the at least two applications via
`the identification numbers assigned to the applications.
`
`10
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`
`VII. ASSERTED GROUNDS
`Petitioner asserts that claims 1–3, 11, 12, 16, 18, and 20 of the ’706
`patent are unpatentable on the following grounds.
`Claim(s) Challenged 35 U.S.C. §3
`Reference(s)/Basis
`1–3, 11, 12
`103(a)
`Guthery4, Nozawa5
`Guthery, Nozawa, RFID
`Handbook6
`Guthery, Nozawa, Smart
`Card Handbook7
`Guthery, RFID Handbook
`
`16
`
`18
`
`20
`
`103(a)
`
`103(a)
`
`103(a)
`
`VIII. LEVEL OF ORDINARY SKILL
`Petitioner identifies a person of ordinary skill as someone
`knowledgeable and familiar with the smart card and Radio Frequency
`Identifier (RFID) arts. Pet. 13. Petitioner states that such a person would
`have a bachelor’s degree in electrical engineering, computer engineering,
`computer science, or equivalent training, and approximately two years of
`experience working in the electrical engineering field. Lack of work
`experience can be remedied by additional education, and vice versa.” Id.
`Patent Owner does not address the level of ordinary skill. See generally,
`Prelim. Resp.
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of § 103.
`4 U.S. Patent No. 6,824,064 (Ex. 1005)
`5 Japanese Paten Application No. 2000-163539A (Ex. 1006)
`6 RFID Handbook: Radio-Frequency Identification Fundamentals and
`Applications, Klause Finkenzeller, 1999 (Ex. 1007)
`7 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008)
`
`11
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`The level of ordinary skill in the art usually is evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`As Petitioner’s description of a person of ordinary skill appears
`commensurate with the subject matter before us, we apply Petitioner’s
`definition for purposes of this Decision.
`IX. CLAIM CONSTRUCTION
`We interpret claim terms using “the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019). In this context, claim terms “are
`generally given their ordinary and customary meaning” as understood by a
`person of ordinary skill in the art in question at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (citations
`omitted) (en banc). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). Extrinsic evidence is “less significant than the intrinsic record in
`determining ‘the legally operative meaning of claim language.’” Phillips,
`415 F.3d at 1317 (citations omitted).
`We construe only those claim terms that require analysis to determine
`whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”). Any special definition for a claim
`
`12
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`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
`Petitioner submits that the terms of the challenged claims should be
`given their plain and ordinary meaning, and no terms require specific
`construction. Pet. 13–14. For purposes of this Decision, we agree that no
`construction is necessary.
`
`X. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon).
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, objective evidence
`
`13
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`of obviousness or nonobviousness, i.e., secondary considerations. See
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418.
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)). Furthermore, Petitioner does not satisfy its burden of
`proving obviousness by employing “mere conclusory statements,” but “must
`instead articulate specific reasoning, based on evidence of record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016).
`B. Claims 1–3, 11, 12 As Obvious Over Guthery and Nozawa
`
`Guthery – Exhibit 1005
`1.
`Guthery relates to a “multi-application integrated circuit card (‘smart
`card’) [that] contains a plurality of application programs.” Ex. 1005, 2:42–
`43. Guthery discloses that its smart card can be presented to a smart card
`reader, which reads the smart card through wireless means or electrical
`contacts. Id. at 6:42–47. In Guthery’s system, “[w]hen a smart card is
`electrically activated, . . . the card manager 34 sends to the [smart card
`reader] an application-identification packet 60 for each application 32 on the
`smart card that identifies the application” with an “application index.” Id. at
`
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`8:32–39. The reader is then aware of each application on the smart card, and
`can then select the desired application for further communication using the
`application index. Id. at 8:60–64.
`To select an application with which to communicate, the reader sends
`a request-to-send packet to the smart card that identifies the application by
`its application index. Ex. 1005, 8:66–9:2. Then, the identified application
`generates and sends a “permission-to-send packet . . . when the application is
`ready” to communicate with the reader. Id. at 9:9–11. The permission-to-
`send packet “contains the application index 82 of the application sending the
`packet 80.” Id. at 9:14–16. This process flow is shown in Fig. 14A below.
`
`
`
`As shown in Figure 14A above, after receiving the request-to-send
`packet from a host, the smart card performs a series of steps before it outputs
`the permission-to-send packet to the host. Ex. 1005, 12:17–36. These steps
`include receiving the request-to-send packet in a buffer at step 204,
`activating application M at step 206, having application M ask for buffers at
`step 208, monitoring buffer availability at step 210, providing buffers at 212,
`and having application M output the permission-to-send packet to the card
`manager at step 216. Id.
`
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`
`Nozawa – Exhibit 1006
`2.
`Nozawa “relates to IC cards, and particularly to an IC card having a
`CPU and a memory, and in which a plurality of application programs stored
`in the memory can be selectively executed by the CPU.” Ex. 1006 ¶ 1.
`Nozawa discloses that when an external apparatus such as a reader desires to
`communicate with an application on the IC card, it can send an application-
`selection command to the IC card to select the desired application. Id. ¶ 6.
`The IC card also has a function for automatically selecting an application
`having a high probability of being selected by the reader, so that, if the
`application that has been automatically selected by the IC card is the
`application that the reader desires to communicate with, then the reader does
`not need to send the application-selection command to the IC card. Id.
`¶¶ 19, 22, 25. Nozawa discloses that one candidate with a high probability
`of being selected is the most recently selected application. Id. ¶ 22. Nozawa
`discloses maintaining a record of recently used applications in order to select
`the application having a high probability of being selected by the reader,
`such as the most recently selected or the most frequently selected
`application. Id. ¶¶ 16, 20, 22, 25.
`
`Reasons to Combine the Teachings of Guthery and Nozawa
`3.
`Petitioner contends a person of ordinary skill would have had reason
`to combine the teachings of Guthery and Nozawa because both references
`concern multi-application smart cards. Pet. 31. Petitioner contends that
`Guthery’s smart card waits until it receives a request-to-send packet from a
`smart card reader before it begins initializing the application identified in the
`packet. Id. at 32 (citing Ex. 1005, 9–12, 12:17–59, Figs. 14A, 15).
`Petitioner contends that a person of ordinary skill would have recognized
`
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`that this process can waste time and resources, especially in situations where
`one application is utilized more than another. Id. (citing Ex. 1003, Phinney
`Decl. ¶¶ 52–53). Petitioner contends that a person of ordinary skill would
`have modified Guthery’s process to identify and initialize an application
`most likely to be selected by the smart card reader as taught by Nozawa to
`preemptively transmit a permission-to-send packet from the application to
`the reader without waiting to receive the request-to-send packet from the
`reader, thus improving efficiency and reducing latency. Id. at 33 (citing Ex.
`1003, Phinney Decl. ¶¶ 55).
`Petitioner contends that a person of ordinary skill would have had a
`reasonable expectation of success in making the combination because
`Nozawa’s technique was meant to improve multi-application smart card
`systems like Guthrey’s. Id. at 34. According to Petitioner, Guthery includes
`the specific inefficiency noted by Nozawa, namely, that a waiting time is
`required for the smart card to receive a request-to-send packet from the
`reader, initialize the application identified in the packet, and transmit a
`response to the reader, before work can begin. Id.; see id. at 31–32 (citing
`Ex. 1006 ¶ 7; Ex. 1003, Phinney Decl. ¶¶ 52–53). Petitioner contends that
`the combination represents applying Nozawa’s known technique of
`automatically selecting an application based on selection history to
`Guthery’s multi-application smart card to yield the predictable result of
`initializing the selected application prior to receiving a request-to-send
`packet, thus improving efficiency and reducing latency at the start of a new
`communication session. Id. at 34–35 (citing Ex. 1003, Phinney Decl. ¶¶ 58–
`60).
`
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`IPR2022-01137
`Patent 8,581,706 B2
` For purposes of this Decision, we find Petitioner cites sufficient
`evidence to support its contention that a person of ordinary skill would have
`had reason to combine the teachings of Guthery and Nozawa.
`
`Claim 1
`4.
`The preamble of claim 1 recites a “method for contactless
`communication of a reading device with at least two communication-ready
`applications located on a portable data carrier, comprising the steps.”
`Petitioner contends that Guthery discloses the preamble in describing a
`smart card having a plurality of applications, where the smart card wirelessly
`transmits permission-to-send packets to a smart card reader to indicate that
`the applications are ready for communication. Id. at 35–38 (citing Ex. 1005,
`2:52–54, 3:44–48, 6:42–46, 7:3–9, 9:9–12, Figs. 1, 2, 15A–15C). Based on
`the evidence and arguments currently of record, for purposes of institution,
`we find that Petitioner has demonstrated that Guthery discloses the features
`recited in the preamble of claim 1. 8
`Claim 1 recites “generating a first communication-readiness signal to
`the reading device for a first of the at least two applications,” where the
`communication-readiness signal comprises “a first identification number
`which is assigned to the first of the at least two applications and indicates to
`the reading device the communication readiness of said first application.”
`Petitioner contends that Guthery discloses this limitation in describing that
`the application transmits a permission-to-send packet that indicates the
`application is ready to receive information, where the permission-to-send
`
`
`8 Because Petitioner has shown that the recitations in the preambles are
`satisfied by the prior art, we need not determine whether the preamble are
`limiting at this time. See Vivid Techs., 200 F.3d at 803.
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`packet includes an application index that identifies the application. Pet. 38–
`41 (citing Ex. 1005, 3:27–40, 3:44–48, 9:7–12, 9:14–16, 9:35–39, 12:30–36,
`Fig. 9). Based on the evidence and arguments currently of record, for
`purposes of institution, we find that Petitioner has demonstrated that Guthery
`discloses this limitation of claim 1.
`Claim 1 recites “generating a second communication-readiness signal
`to the reading device for a second of the at least two applications,” where the
`second communication-readiness signal comprises “a second identification
`number different from the first identification number, which is assigned to
`said second application and indicates to the reading device the
`communication readiness of said second application.” Petitioner contends
`that Guthery discloses this limitation in describing that a first application M
`on the smart card generates a first permission-to-send packet when it is
`ready to receive data, and a second application N generates a second
`permission-to-send pa