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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FITBIT, INC.,
`Petitioner
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`v.
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`PHILIPS NORTH AMERICA LLC
`Patent Owner
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`IPR2020-007831
`Patent No. 7,088,233
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`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
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`1 Garmin International, Inc. Garmin USA, Inc., and Garmin Ltd., who
`filed a petition in IPR2020-00910, has been joined as a petitioner in this
`proceeding.
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`I.
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`INTRODUCTION
`Patent Owner’s Response (“POR”) relies on claim interpretations that
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`improperly import limitations into the claims and inconsistent treatment of the prior
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`art. Patent Owner’s (“PO”) arguments do not rebut the evidence demonstrating
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`unpatentability explained in the Petition.
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`II. CLAIM CONSTRUCTION
`A.
`“security mechanism governing information transmitted between
`the first personal device and the second device”
`1.
`Board’s construction is correct
`Petitioner agrees there is “no need to construe [this] phrase[.]” (Paper 12
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`(“ID”), 15.) With ordinary language, the phrase describes what the “security
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`mechanism” does and where it is located. The asserted prior art discloses this
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`limitation under any reasonable interpretation. (E.g., Paper 1 (“Petition”), 20-21,
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`36-38, 59-60.) Construction of this term is not “necessary to resolve the underlying
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`controversy.” Toyota Motor Corp. v. Cellport Sys., Inc., IPR2015-00633, Paper No.
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`11 at 16 (Aug. 14, 2015); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
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`868 F.3d 1013, 1017 (Fed. Cir. 2017).
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`As the Board noted, “the use of passwords or encryption” in the ’233 patent
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`“can be used to secure information transmitted between personal device 100 and
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`other points on the network.” (ID, 14-15 (citing Ex.1001, 8:12–22, 13:25–67).) In
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`fact, use of security keys, authorization, and encryption by the claimed “security
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`1
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`mechanism” is recited by dependent claims. (Ex.1001, claims 2-4; id., 8:12-22
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`(password/security code).)
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`2.
`PO’s construction is unsupported by evidence
`PO’s views of “security mechanism” and its alleged distinction from the prior
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`art are premised on the testimony of its expert, Dr. Martin. (POR, 8-11, citing
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`Ex.2026.) Highlighted by his cross-examination testimony, Dr. Martin on one hand
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`confirms he is interpreting the term under its ordinary meaning by a POSITA at the
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`relevant timeframe—not PO’s proposed construction for the term (Ex.1076, 91:5-
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`95:13; Ex.2026 ¶39)—yet on the other hand imports nebulous and shifting
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`limitations into the term by opining that its purported ordinary meaning “depend[s]
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`on what you’re trying to protect against” in a particular application (Ex.1076, 95:14-
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`96:5).
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`Dr. Martin’s interpretation of the term is untethered from a POSITA’s
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`understanding in view of the specification at the patent’s effective filing date, and
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`instead applies an “ordinary meaning of security mechanism [that] depends on the
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`threat you’re trying to protect against” without reference to the specification or
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`proper timeframe. (See id., 96:7-99:5; see also id., 63:6-64:25 (meaning “depend[s]
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`upon the application that you’re trying to do”), 126:20-129:17 (“security mechanism
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`would depend upon those threats [you’re trying to protect against]”), 138:19-140:15
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`(“depend[s] upon [] the alternative application area that you’re contemplating”),
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`2
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`151:14-153:18, 65:15-67:5 (need to understand “what you’re trying to protect
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`against before you design the security mechanism”).) Dr. Martin’s conditional
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`interpretation that relies on the subjective intended purpose of the mechanism is
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`contrary to established claim construction principles, which further supports why
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`PO’s arguments should be rejected. See Homeland Housewares, LLC v. Whirlpool
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`Corp., 865 F.3d 1372, 1375-76 (Fed. Cir. 2017) (construction for “predetermined
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`settling speed” that required the speed to be “determined for each use, depending on
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`the particular blender or the individual contents of the blender” was “incorrect”);
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`Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1356 (Fed.
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`Cir. 2020) (rejecting notion claims required “particular intent or objective of a
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`hearing-aid designer or manufacturer”).
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`Moreover, even under his application-dependent interpretation, Dr. Martin
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`opined that in certain applications, “encryption alone would satisfy the security
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`mechanism of Claim 1.” (See Ex.1076, 153:20-158:19 (if “only thing you’re trying
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`to protect against [is] eavesdropping of the transmissions by random passerby[s] ...
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`and you’re just trying to give your location to [] two other devices, then encryption
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`would prevent the eavesdropping”), see also id., 68:19-69:17, 131:11-132:11,
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`126:20-128:15 (same for “security keys”); Ex.2025, 132:25-133:4, Ex.2023, 13-15,
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`POR 11.) Dr. Martin also conceded in other applications, multiple embodiments of
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`security and “multiple levels of access would not necessarily be required. (Ex.1076,
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`3
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`150:2-153:18; id., 129:19-132:19, 67:7-70:15 (similar); see Ex.1001, 13:41-54.) Dr.
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`Martin’s testimony undermines PO’s reliance on Dr. Martin to contend that
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`encryption cannot ever “govern or control [information] transmission.” (POR, 10
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`(citing Ex.2007, ¶33).)
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`Despite attempts to sometimes import “multiple levels of authorization” into
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`the “security mechanism,” Dr. Martin also admitted that “multiple levels” of
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`authorization “could encompass having full access and no access to a device”—“you
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`either have access or you don’t ... that’s multiple levels.” (Ex.1076, 62:8-63:4.) A
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`security mechanism which provides full or no access to a device is disclosed by the
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`prior art. (Pet., 36-38, 59-60, 66-70.)
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`3.
`PO’s attempts to distinguish prior art are unsupported
`PO attempts to distinguish “encryption of the contents of the signal” from
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`“encryption of signals.” (POR, 11.) But the specification does not distinguish
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`between encryption of a signal and encryption of the signal contents. Instead, the
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`specification and claims expressly include “encryption” within the scope of the
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`“security mechanism.” (Ex.1001, 13:41-46, claim 2.) PO appears to infer its
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`distinction from Figure 5 and its expert’s opinions. (POR, 10-11.) But PO and Dr.
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`Martin concede that Figure 5 is but one exemplary “embodiment” (POR, 10;
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`Ex.1001, 11:46-49, 13:31-32) and “claim 1 is not limited to that” (Ex.1076, 83:20-
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`84:4; id., 60:2-19, 114:2-23).
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`4
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`PO also suggests the security mechanism, when implemented via a password,
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`must be limited to one that provides multiple levels or “a particular level of access.”
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`(PO, 8.) Such features are not claimed and thus PO’s improper attempt to import
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`subject matter into the claims should be rejected. Abbott Labs. v. Sandoz, Inc., 566
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`F.3d 1282, 1288 (Fed. Cir. 2009). Indeed, during cross-examination, while Dr.
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`Martin initially opined the “security mechanism” required “multiple levels of
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`authorization and prioritization” because that is “the way the abstract describes it”
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`(Ex.1076, 58:4-59:14), he later conceded such features were not required by the
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`specification (id., 70:2-71:8) and that “multiple levels of access would not
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`necessarily be required” to meet claim 1 (id., 151:14-153:18). Dr. Martin agreed
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`that the specification does not identify security—much less “multiple levels of
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`authorization”—in the summary of invention, nor does it list it as a benefit provided
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`by the patent. (Id., 71:10-73:22.)
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`Ultimately, Dr. Martin’s inability to provide an understanding of how a
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`POSITA would have understood “security mechanism” and to support his opinions
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`in the specification is inconsistent with his opinion that the “security mechanism” is
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`a “key patentable advance of the ’233 patent” (id., 47:21-49:1) and undermines PO’s
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`arguments regarding the term (POR, 4-5, 8-11). His inability to do so is all the more
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`jarring given he conceded that “security mechanisms for different kind of threats
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`were known.” (Ex.1076, 56:2-57:7.)
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`5
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`B.
` “wireless communication”
`The Board adopted PO’s construction for this term. (ID, 13.) PO concedes
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`that “construction of this term may not be necessary” (POR, 12) and thus has waived
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`further reliance on its POPR arguments. Trial Practice Guide at 52; In re Nuvasive,
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`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016). The Board should disregard any later
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`attempt by PO to rely on such POPR arguments. On this record, the prior art’s
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`disclosure of the claimed “wireless communication” features under any reasonable
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`interpretation is undisputed (see Pet., 32-36, 54-59), and the Board need not construe
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`the term to resolve any controversies.
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`C.
`“Data I/O port”
`Neither party suggested a construction for “data input/output port[s]” recited
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`in claim 14, which the Board construed (ID, 15) to require the “data input/output
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`port” to be “separate from” claim 1’s “wireless communication module” (id., 38-
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`39.) The Board’s construction and resulting analysis of Petitioner’s challenges to
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`claim 14 should be reconsidered because the specification does not support the
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`Board’s conclusions. See Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d
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`1396, 1410 (Fed. Cir. 2004) (“where neither the plain meaning nor the patent itself
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`commands a difference in scope between two terms, they may be construed
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`identically”).
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`6
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`The Board relies on the alleged “distinction between local area wireless
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`communication and communication via data ports, as illustrated in Figures 4A and
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`4C.” (ID, 38-39 (citing Ex.1001, Figs. 4A, 4C, 3:47-49, 3:54-57, 4:14-16, 4:25-27).)
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`But neither those portions—nor any other portion of the ’233 patent—describes the
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`claimed arrangement of claim 14, where a first personal device has a data I/O port
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`that communicates with a second device’s data I/O port and a short-range wireless
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`communication module
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`that
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`is compatible with a short-range wireless
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`communication module of the second device. (Ex.1001, claims 1, 14.)
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`The column 3 disclosures cited by the Board relate to an embodiment of
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`[personal medical device] PMD 100 shown in Figure 2. (Id., 3:18-19.) While there
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`is an “option[]” that PMD 100 includes a data I/O port and wireless communication
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`module (id., 3:47-49, 3:54-57), no communication between PMD 100 and a second
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`device via the data I/O port or wireless module 300 like that recited in claim 14 is
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`disclosed.
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`Figure 4A (annotated below) shows a PMD 100 communicating with Personal
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`Wireless Device (PWD) 500 using local area wireless (LAW) 330. (Id., 4:14-16.)
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`7
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`While PWD 500 includes LAW 330 “compatible with LAW 330 in PMD 100,” the
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`personal device does not include a data I/O port like claim 14. (Id.; Ex.1076, 226:14-
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`229:13, 238:14-239:10 (Dr. Martin confirming neither figure nor specification
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`describes features).)
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`Figure 4C (annotated below) shows (1) a PMD 100 communicating with
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`Medical Device Interface (MDI) 600 using data ports 160 and (2) a PWD 500
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`communicating with MDI 600 using LAW 330. (Id., 4:25-31.)
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`PMD 100 does not include a wireless communications module (LAW 330) and PWD
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`500 does not include a data port 160. Moreover, MDI 600 is an interface without a
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`8
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`data port 160 or LAW 330 that communicate with the same [personal/second]
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`device, as recited in claim 14. (Id.; Ex.1076, 229:14-232:9, 237:10-238:13 (Dr.
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`Martin confirming neither
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`figure nor specification describes
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`features).)
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`Accordingly, the Board’s construction requiring claim 14’s data I/O ports to be
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`separate from the wireless communication module lacks support in the patent’s
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`disclosure. See Regents of Univ. of Cal. v. Dakocytomation Cal, Inc., 517 F.3d 1364,
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`1375 (Fed. Cir. 2008) (claims exclude “repetitive sequences” even though recited by
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`dependent claims).
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`Petitioner’s prior art mappings are consistent with claim 14’s plain language,
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`which does not preclude the claimed data I/O ports from being the same data I/O
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`ports
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`the Board recognizes would necessarily be present
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`in a wireless
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`communications module. (ID, 39.) This interpretation is also consistent with PO’s
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`view in district court (and inconsistent with PO’s agreement with the Board here).
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`(POR, 29-31, Ex.1076, 225:19-226:2; Ex.1075, 17-18, 39 (identifying “Bluetooth
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`Low Energy (BLE) technology to sync with the accused Fitbit tracker” for both
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`claim 1’s short-range bi-directional wireless communications module and claim 14’s
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`data I/O port); Ex.1076, 232:10-237:2.)
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`Nor do Petitioner’s prior art mappings render claim 14’s data I/O port
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`superfluous to the wireless communications module. “[T]he use of two terms in a
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`claim requires that they connote different meanings, not that they necessarily refer
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`9
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`to two different structures.” Applied Med. Res. Corp. v. U.S. Surgical Corp., 448
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`F.3d 1324, 1333 n.3 (Fed. Cir. 2006). The specification does not require the
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`component separation of the Board/PO’s construction—indeed, claim 14 in light of
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`the specification contemplates use of data I/O ports within claim 1’s wireless
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`communication modules, but not the arrangement contemplated by the Board/PO.
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`See Dakocytomation, 517 F.3d at 1375 (claim differentiation presumptions “will be
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`overcome by a contrary construction dictated by the written description”). The
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`Petition explains how the body-LAN communication modules of Jacobsen and Say’s
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`transmitter/receiver or transceiver communication ports include data I/O ports. (See
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`Pet., 43-44, 65-66.) The Board should reconsider its construction of claim 14, and
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`confirm Petitioner’s mappings and evidence demonstrating unpatentability of the
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`claim.
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`III. PO’S ARGUMENTS DO NOT REBUT THE EVIDENCE OF
`UNPATENTABILITY
`A. Claims 1, 7-10
`1.
`Jacobsen
`For Jacobsen, PO’s only argument is that Jacobsen does not disclose the
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`“security mechanism.” (POR, 18-29.) But as discussed in section II.A, PO’s
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`position hinges on an effective construction unsupported by the ’233 patent’s claims
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`or specification, and does not rebut Petitioner’s evidence of unpatentability.
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`10
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`First, PO seeks to import notions of a requirement for an additional layer of
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`security tied to Figure 5 that can distinguish between “authorizing a person’s access”
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`to a device and “authentication of a device.” (POR 19-20.) But such
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`interpretation—which relies on the patent’s abstract and Figure 5 (Ex.1076, 59:4-
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`14)—is found nowhere in the claims and is contrary to well established claim
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`construction principles. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
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`2005) (“[A]lthough the specification often describes very specific embodiments of
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`the invention, we have repeatedly warned against confining the claims to those
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`embodiments.”). Further, PO’s expert, who provides the only evidence supporting
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`PO’s position (POR 20 (citing only Ex.2026 ¶¶72-73)), conceded (1) this additional
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`layer of security “would not necessarily be required” (Ex.1076, 150:2-153:18; id.,
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`86:14-25 (“There might be security mechanisms that cannot accomplish Figure 5
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`that could meet Claim 1.”), 88:2-21) and (2) is not described in Figure 5 (id., 104:4-
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`105:5 (admitting additional layer of security “is not shown as an explicit element of
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`Figure 5”)). In district court, PO’s expert has conceded “that patent’s also talking
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`about controlling the access to the device.” (Ex.2025, 134:8-22 (emphasis added).)
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`PO’s attempt to import a limitation requiring the “security mechanism” to
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`authorize access by users as opposed to devices conflicts with the plain language of
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`the claims, which focus on devices, not users: “a security mechanism governing
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`information transmitted between the first personal device and the second device.”
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`11
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`(Ex.1001, 15:9-12.) Further, the specification makes clear only “some measure of
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`security” is required and describes “possible embodiments of security” that are “not
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`meant to be exclusive.” (Id., 13:27-30, 13:41-42.) One “possible embodiment”
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`includes “a number of strategies [that] may be employed for authorization,” none of
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`which draws a distinction between authorizing persons and devices. (Id., 13:41-46,
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`13:55-56.) Dependent claim 3 highlights that the “security mechanism” in claim 1
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`is not specific to authorizing users (as opposed to devices), reciting only that “the
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`security mechanism “employs authorization by the first personal device.” (Id.,
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`15:12-16.)
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`This suggests that PO’s attempt to read in a specific flavor of authorization or
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`authentication to the “security mechanism” is unsupported as a matter of law. See
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`Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1377-78 (Fed.
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`Cir. 2018) (reversing construction that limited term to embodiment in specification
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`and was inconsistent with “plain language of claim[s]” and broader scope suggested
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`by dependent claims). The presumption is supported by PO’s expert, who opined
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`the “security mechanism,” in certain applications, could be provided by “encryption
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`alone.” (Ex.1076, 153:20-158:19; section II.A.2.) PO’s attempt to rewrite the
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`claims and import limitations from the abstract should be disregarded.
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`Regardless, Jacobsen discloses the “security mechanism” under its ordinary
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`meaning, and under every interpretation advanced by PO in this proceeding (POR,
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`12
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`8-11, 18-20.) Each device in Jacobsen’s system may include “self-disabling
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`means,” software disabling the device on entry of multiple incorrect passwords.
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`(Pet., 37-38.) A POSITA would have understood Jacobsen’s password software,
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`which leads to device disablement, to be a mechanism governing information
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`transmitted between devices. (Id., 37-38 (citing Ex.1002, ¶87[1h], Exs. 1041-1042);
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`POR, 13 (“‘govern’ [] means to control”).) PO’s expert conceded that an
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`unauthorized user (e.g., an enemy combatant) who entered multiple incorrect
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`passwords would have caused disablement of Jacobsen’s wrist sensor/display unit,
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`which would have prevented the user from accessing information available through
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`it. (Ex.1076, 185:2-190:13, 218:18-223:4.) Further, entry of a correct or incorrect
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`passcode would not only determine whether a user could access information
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`available through that device, but also whether that device would function to
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`communicate information with the second device. (Id., 190:15-191:19, 217:2-
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`218:3.)
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`To the extent PO contends Jacobsen does not disclose the “security
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`mechanism” based on an alleged distinction between authorizing a person’s access
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`to a device over a network and authenticating a device across a network (POR 20),
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`PO’s expert conceded Jacobsen’s “self-disabling means” achieves device
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`disablement/enablement and user authorization. Thus, Jacobsen discloses a security
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`mechanism that “governs information transmitted between the first personal device
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`13
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`and the second device” even under PO’s desired interpretation, which requires an
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`additional layer of security beyond what is recited by the claims and described in the
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`specification.
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`PO’s other arguments are inapposite. PO contends Jacobsen’s password
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`software does not govern information transmitted, because a disabled device would
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`not transmit information. (POR, 21.) First, the specification describes several
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`security methods that would prevent transmission of information—“security keys”
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`“held by a central agency” or needed to “release information,” strategies for
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`“authorization and authentication,” including “biometrics” (Ex.1001, 13:50-56), and
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`“request[s] for access to a responsible third party” (id., 14:7-8).
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`Second, PO’s attempt to distinguish Jacobsen by contending that information
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`must “actually be transmitted” to be the “security mechanism” (PO, 21) elevates a
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`verb tense out of context within the full limitation—importing a condition found
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`nowhere in the specification—and is inconsistent with its expert’s opinions. Each
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`Jacobsen device is capable of providing (and does provide) access control via
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`software that disables the device upon entry of an incorrect password or some other
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`code, and thus “govern[s] information transmitted” as claimed. (Pet., 36-38;
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`Ex.1005, 15:5-10.) PO’s position is also inconsistent with its expert’s testimony,
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`who opined that encryption (a possible “embodiment of security” (Ex.1001, 13:41-
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`46)) did not “govern[] information transmitted” because it could not account for
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`14
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`
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`where you “didn’t want that information to be transmitted at all” (Ex.2025, 133:6-
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`134:22).
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`Third, PO’s argument ignores aspects of Jacobsen’s “self-disabling means.”
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`As PO’s expert admitted, entering the incorrect password once in Jacobsen’s
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`password software prevents access to information, but does not disable the device;
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`correct password entry on the subsequent attempt authorizes the user to access all
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`information available through the device. (Ex.1076, 213:5-216:9, 219:25-223:4.)
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`Thus, Jacobsen’s software can secure a device without fully disabling it, rendering
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`PO’s grammar-based argument moot on a factual basis in addition to being
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`unsupported in the intrinsic evidence and under well-established legal principles.
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`PO’s twist of Dr. Paradiso’s response to PO counsel’s hammer-smashing
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`hypothetical is irrelevant. Dr. Paradiso never testified that smashing a device with
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`a hammer was the “security mechanism” as PO alleges. (POR, 9.) Instead, he
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`merely responded to counsel’s hypothetical example under the framed context of
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`whether “disabling a device [would] govern the transmission of information.”
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`(Ex.2030, 62:24-63:2.) None of Petitioner’s grounds rely on hammer-smashing for
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`the “security mechanism.” (Pet., 36-38, 59-60, 66-70.) PO’s claim 26-based
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`argument is also irrelevant since Petitioner’s grounds do not rely on the prior art
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`communications module power switch for the “security mechanism.” (Id.; POR, 9.)
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`And as described above, PO’s expert conceded Jacobsen’s “self-disabling means”
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`15
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`
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`might not lead to full device disablement (Ex.1076, 214:21-216:9), which makes
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`PO’s hammer-smashing device analogy even less relevant.
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`Likewise, PO’s suggestion that Jacobsen’s “self-disabling means” would only
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`be important (and used) for leader/medic control units (POR, 24-26) does not trump
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`express disclosure that “each device may contain a self-disabling means” via, for
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`example, “the wrong password” “entered for more than one attempt” to “ensure that
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`none of the devices may be used against the soldiers if captured” (Pet., 37 (citing
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`Ex.1006, 15:5-10)) and PO’s expert’s admission that Jacobsen discloses the “self-
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`disabling means” on all devices (Ex.1076, 167:5-169:23). PO’s theory also misses
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`that Jacobsen teaches the display 204 of the wrist sensor/display unit can provide
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`“the position or physiological status of other soldiers” (Ex.1005, 9:25-29 (emphasis
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`added)), which Dr. Martin conceded would be important if the soldier were captured
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`(Ex.1076, 178:13-184:19).
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`PO’s suggestion that password entry by a soldier using a “pair of buttons” is
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`impractical (POR 26-27) does not negate disclosure that each device allows for
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`password entry as explained above (Ex.1005, 15:5-14). Moreover, PO’s expert
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`conceded POSITAs would have understood “passwords could be entered into
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`devices without many buttons.” (Ex.1076, 169:25-171:20.) He agreed the
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`specification explains that entering passcodes using two keys can be implemented
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`in “standard” devices (id. (citing Ex.1001, 8:19-22)), and conceded his ultimate
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`16
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`opinion on password entry in Jacobsen was from his perspective, not a POSITAs
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`(Ex.1076, 171:14-20 (it would “just seem[] impractical to me.” (emphasis added))).
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`2.
`Say
`Similar to Jacobsen, PO’s only argument for Say is failure to disclose the
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`claimed “security mechanism.” (POR, 34-42.) For reasons similar to those
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`explained above in Sections II.A/III.A.1, PO’s argument relies on an effective
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`construction for the term that is unsupported by the claims or specification, and does
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`not rebut Petitioner’s evidence of unpatentability.
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`First, PO contends that Say’s encryption from the sensor control unit
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`(first personal device) to the receiver/display unit (second device) (Pet., 60) does not
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`disclose the “security mechanism” because there is “no connection between the
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`encryption ... and the information itself,” and no ability to “distinguish[]”
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`“access/authorization” by one device from another. (POR, 37.) To support these
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`additional limitations on the “security mechanism” PO cites to no intrinsic evidence,
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`only its expert’s declaration. (Id. (citing Ex.2026 ¶91).)
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`But the specification explains that (1) “standard encryption algorithms” are
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`contemplated—not just encryption methods specifically connected to the data being
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`transmitted and able to distinguish between devices—and (2) encryption
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`encompasses
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`the function of “making
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`it essentially
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`impossible for
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`the
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`unsophisticated interceptor to interpret the data”—similar to Say’s “encrypt[ing] the
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`
`
`17
`
`
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`datastream” and then using a “key to decipher the decrypted data signal” as one way
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`to reduce “crosstalk.” (Ex.1001, 13:43-46; Pet., 60.) The dependent claims further
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`emphasize PO’s effort to import limitations, reciting mere “encrypt[ing] the
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`information” without the additional requirements alleged by PO. (Section II.A.;
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`Ex.1001, claim 2.)
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`PO’s only support for its position—Dr. Martin (POR, 37)—opined that in
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`certain applications, “encryption alone would satisfy the security mechanism of
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`Claim 1.” (Id., 153:20-158:19 , 68:19-69:17, 131:11-132:11.)2 Dr. Martin also
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`conceded that if “all that I’m worried about is not allowing a passerby to
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`eavesdrop”—e.g., the same goal described in the specification of “making it
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`essentially impossible for the unsophisticated interceptor to interpret the data”
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`(Ex.1001, 13:43-46)—then “encrypting the information would prevent that passerby
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`from eavesdropping on it.” (Ex.1076, 267:10-268:3; accord id., 268:5-269:11 (“If
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`all you’re worried about is . . . encrypting the communication links, . . . then Say’s
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`encryption would encrypt the communication links”).)
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`For Dr. Martin’s attempted comparison of Say’s encryption to a public
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`website, Dr. Martin admitted his analogy was “not taken from the ’233” patent.
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`
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`2 Dr. Martin’s admission renders PO’s contention that Say’s encryption “would not
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`work” in Figure 5 (POR 38-39) to be irrelevant. See section III.A.1.
`
`
`
`18
`
`
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`(Ex.1076, 256:13-19.) When pressed on its relevance to claim 1, he admitted the
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`security mechanism he described was “a security mechanism around that particular
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`example” of “do I want people to be able to see this comment or not see this
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`comment” and conceded it “is an analogy, and there’s always a problem with taking
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`an analogy too far.” (Id., 263:13-264:17, 265:15-25.)
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`For Say’s identification codes, PO seeks to characterize them as “identif[ying]
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`the device itself” rather than “describ[ing] a code entered by a user.” (POR 35-36.)
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`As with encryption, PO relies only Dr. Martin to support this contention. (Id., 36
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`(citing Ex.2026 ¶89).) Again, this phantom distinction is unsupported by the patent.
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`For example, dependent claim 3 broadly recites “authorization by the device,” not
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`the user. (Ex.1001, 15:14-16.) Dependent claim 4 recites a “key entered by the user
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`of the first personal device.” (Id., 15:16-19.) Moreover, PO’s argument is
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`unsupported: Say discloses the identification code “may be selected by the patient”
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`(Pet., 60 (citing Ex.1006, 49:15-37)), with which Dr. Martin agreed (Ex.1076, 248:3-
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`249:10).
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`PO’s contention that Say’s ID codes do not “authoriz[e] access to transmitted
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`information”—which relies on Dr. Martin (POR, 36)—also lacks support. Dr.
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`Martin conceded that by programming a matching identification code into the
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`receiver/display (second device), the device would have access to all the transmitted
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`data, and without that code, it would not. (Ex.1076, 249:12-251:4.) He also
`
`
`
`19
`
`
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`admitted that while data transmitted between the Say devices could be “accessed,”
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`the data would not be “used” or “displayed” without being programmed with the
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`correct identification code, (id., 254:23-255:13), similar to the “public/private key
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`system” described in the patent, where information can be communicated, but “both
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`keys [are] required for decoding an encrypted message” (Ex.1001, 13:60-14:6).
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`PO’s additional arguments are unpersuasive. PO’s contention that Say does
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`not disclose encryption in both directions (POR, 40-41) imports a meaning of
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`“between” inconsistent with the patent. For example, Figure 5 describes a security
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`mechanism between a first personal device (PMD 100) and second device (PWD
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`600) by “sending a command” from the second to the first device. (Ex.1001, 13:31-
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`36, Fig. 5.) Further, in district court, PO’s accused security mechanism only affects
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`communication in one direction. (See Ex.1075, 10.)
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`3.
`Jacobsen-Say
`PO’s arguments based on the “security mechanism” and claim 14 (POR, 42)
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`are misplaced for the same reasons explained in Sections II-IV. PO’s additional
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`argument a POSITA would not have “look[ed] to encrypt communications between
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`Jacobsen’s wrist unit 18 and soldier unit 50” (POR, 42) misunderstands the prior art
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`
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`20
`
`
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`and ignores Petitioner’s evidence demonstrating obviousness. (Pet., 66-70;
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`Ex.1002, ¶¶103-110.)3
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`PO acknowledges Jacobsen’s concern with enemies “accessing location
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`information for several” soldiers (POR, 44), yet alleges a POSITA would not have
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`encrypted communications between a soldier’s wrist unit and soldier unit because if
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`that soldier was captured, the enemy would already know that soldier’s location.
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`(POR, 42-43.) This argument ignores that a soldier’s wrist unit can display “the
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`position or physiological status of other soldiers” (Ex.1005, 9:24-29), which PO’s
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`expert admitted would be “important to prevent an enemy combatant from learning”
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`(Ex.1076, 178:13-179:17). This feature depends on communications between the
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`soldier and wrist unit—the soldier unit receives geolocation data of other soldiers,
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`which would have been transmitted to the wrist unit for display. (Ex.1005, 6:66-7:4,
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`9:24-29.)
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`PO also contends a POSITA would have found encrypting transmissions
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`disadvantageous due to “additional power consumption and potentially increas[ing]
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`a soldier’s electronic signature.” (POR, 43-44.) First, a “potential increase” is an
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`
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`3 PO’s argument based on use of “could” instead of “would” in Dr. Paradiso’s
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`declaration (POR 45-46) ignores the substantive content of the declaration (Ex.1002
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`¶¶105-09), and its inclusion highlights the weakness of PO’s position.
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`
`
`21
`
`
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`effective admission this concern is only hypothetical and may not exist. Second, any
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`additional power consumption would have been negligible. PO’s expert admitted
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`the communications between the wrist and soldier unit would be “much lower power
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`transmissions” compared to those from the soldier unit to the medic or command
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`(Ex.1076, 181:25-183:13.) Third, the communications modules are both
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`outfitted with “power management” components:
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`
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`Figure 4A (cropped, annotated).
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`Jacobsen describes managing power draw by
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`powering components periodically for only short periods and discloses that
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`“hardware and software power control measures are used” (Ex.1005, 12:19-20),
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`which would have mitigated additional power consumption associated with
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`encrypting communications between the soldier and wrist unit-
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`Thus, PO’s
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`22
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`
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`contention that encrypting transmission would have “detract[ed] from Jacobsen’s
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`communications capabilities” is inconsistent with Jacobsen’s disclosure. (Id.; POR,
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`44.)
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`Likewise, PO’s assertion of speculation (POR, 45-46) cannot be reconciled
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`with Dr. Paradiso’s testimony, which explains that adding encryption would have
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`avoided interference problems in some implementations. (Id., ¶¶105-06, 108-09.)
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`B. Claim 14
`Despite taking a different position in district court (Section II.C), PO latched
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`onto the Board’s preliminary finding that Jacobsen and/or Say does
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