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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.,
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`Petitioner,
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`v.
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`PHILIPS NORTH AMERICA LLC,
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`Patent Owner.
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`_______________
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`Case IPR2020-007831
`Patent 7,088,233 B2
`_______________
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`________________________________________
`PATENT OWNER SUR-REPLY TO
`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 petitioner in this
`proceeding.
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`TABLE OF CONTENTS
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` I.
`II.
`1.
`2.
`III. THE PETITION FAILS TO DEMONSTRATE THE
`A.
`B.
`C.
`D.
`E.
`F.
`G.
`H.
`IV. CONCLUSION .............................................................................................. 24
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`INTRODUCTION ........................................................................................... 1
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`CLAIM CONSTRUCTION ............................................................................ 1
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`“security mechanism governing information transmitted
`between the first personal device and the second device” .......... 1
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`“data input/output port” ............................................................ 10
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`UNPATENTABILITY OF THE CLAIMS ................................................... 11
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`The Challenged Claims are Patentable Over Jacobsen ....................... 11
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`The Challenged Claims are Patentable Over Say ............................... 14
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`The Challenged Claims are Patentable Over the Combination of
`Say and Jacobsen ................................................................................. 18
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`Claim 14 is Patentable over the Asserted Prior Art ............................ 20
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`Claim 13 is Patentable over the Combination of Jacobsen, Say,
`and Quy ............................................................................................... 20
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`Claims 24-25 are Patentable over the Combination of Jacobsen,
`Say, and Geva ...................................................................................... 21
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`Claim 26 is Patentable Over any Combination With Reber ............... 22
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`Claims 15-16, and 22 are Patentable Over the Combination of
`Say and Gabai ...................................................................................... 23
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`I.
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`INTRODUCTION
`Petitioner’s Reply (“Reply”) ignores that the claimed invention requires “a
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`security mechanism governing information transmitted between the first
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`personal device and the second device,” and not merely any generic “security
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`mechanism”. At base, Petitioner’s arguments ignore the plain and ordinary meaning
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`of most of the recited claim language and merely interpret the claim as applying any
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`form of security. Petitioner’s unreasonably broad interpretation is inconsistent with
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`the intrinsic record and unsupported in the Petition itself, and should be rejected.
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`II. CLAIM CONSTRUCTION
`1.
`“security mechanism governing information transmitted
`between the first personal device and the second device”
`Petitioner purports to agree with the Board’s institution decision declining
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`construction of this term, yet repeatedly advocates for a meaning that ignores the
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`fact that the claimed “security mechanism” must govern information transmitted
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`between devices. Petitioner’s Reply is replete with arguments as to how the use of
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`encryption, as a concept, might constitute a “security mechanism,” without
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`acknowledging that the claims require significantly more. Ex. 1001, claim 1.
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`Petitioner does not even attempt to justify this unreasonably broad construction and
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`instead, as detailed further below, attempts to confuse the issue by citing Dr.
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`Martin’s testimony on how one might implement various “security mechanisms.”
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`Despite Petitioner’s focus on the construction for this term advanced in Patent
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`Owner’s Preliminary Response, neither Patent Owner’s Response (“POR”) nor Dr.
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`Martin’s declaration rely on that originally proposed construction to distinguish the
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`prior art. See POR at 20, 28-29, 34-37; Ex. 2026 at 16-17; see also Ex. 1076, 91:5-
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`17. Both the POR and Dr. Martin’s declaration rely solely on the plain meaning of
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`the words used in the claim, while pointing out that Petitioner’s unreasonably broad
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`construction renders much of the claim language superfluous. See POR at 21-23.
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`Indeed, according to Petitioner’s expert, the term should be construed so broadly that
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`smashing a device with a hammer would constitute the requisite “security
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`mechanism governing information transmitted between the first personal device and
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`the second device”—even though in that situation there would be no information
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`transmitted. See POR at 22-23 (citing Ex. 2026 at ¶74).
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`There is no credence to Petitioner’s suggestion—made for the first time in
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`reply—that the term might somehow require a subjective interpretation. See Reply
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`at 2-3. To the contrary, the cases relied on by Petitioner are inapposite and actually
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`support the application of the plain and ordinary meaning here. In Homeland
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`Housewares, LLC v. Whirlpool Corp., the Court found the term “predetermined
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`settling speed” to be entitled to its plain and ordinary meaning of “determined
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`beforehand”, despite the fact that in practice any specific predetermined settling
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`speed might be empirically determined through testing as suggested by the
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`specification. See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372,
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`1375-76 (Fed. Cir. 2017). Meanwhile in Cochlear Bone Anchored Sols. AB v.
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`Oticon Med. AB, the Federal Circuit again endorsed the plain and ordinary meaning
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`of the term, rejecting a construction of “adapted to” that would incorporate
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`“accounting for the mechanics of the skull” into the claims. See Cochlear Bone
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`Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1356 (Fed. Cir. 2020). In
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`both Homeland Housewares and Cochlear Bone, the Federal Circuit endorsed a
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`plain meaning despite the fact that the claim could be implemented in myriad
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`different ways. These cases acknowledge that, under a plain and ordinary meaning,
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`a variety of implementation may read on the claim, but that a range in
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`implementation choices should not dictate the construction of the term—consistent
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`with Dr. Martin’s testimony.
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`Petitioner’s attacks on Dr. Martin’s testimony with respect to “security
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`mechanisms” are without merit. Dr. Martin repeatedly pointed to the specific
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`examples provided in the specification as a way of explaining that in a given
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`implementation, a security mechanism governing information transmitted between
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`devices could take different forms depending on the threats to be protected against.
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`See e.g., Ex. 1076, 97:16 (“Yes. I think the security mechanism depends. And, again,
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`it’s in the specification. As we talked about, there’s the example of Figure 5, but
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`there’s also the example of transmitting information unencrypted but with
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`authorization. And then as- there’s the whole list of possible embodiments of the
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`security mechanism, the embodiments of security -- sorry let me look back at it --
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`in Column 13 that we’ve walked through before.”) (emphasis added). Likewise, in
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`Dr. Martin’s declaration, he notes that his opinion as to the meaning of the claim
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`terms is based on how one with ordinary skill in the art would have understood the
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`term “at the time of the invention in the context of the specification….” Ex. 2026 at
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`15. Petitioner’s claim that Dr. Martin did not refer to the specification or proper
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`timeline is therefore incorrect.
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`Nor does Dr. Martin’s testimony somehow evidence a “subjective”
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`interpretation of the term “untethered” from its plain and ordinary meaning. To the
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`contrary, Dr. Martin’s opinions—as evidenced by both his declaration and
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`deposition—have been unequivocal with
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`respect
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`to how
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`the specific
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`implementations of the prior art fail to disclose a “security mechanism governing
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`information transmitted between the first personal device and the second device”
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`based on the plain meaning of those words. See, e.g., Ex. 2026 at 35-36, 44-45; Ex.
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`1076, 196:17-197:23, 251:5-20. It should be unsurprising that one may implement
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`any invention, including the claimed invention, in a myriad of ways and one might
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`use a “security mechanism” appropriate to guard against any specific threats of
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`concern for a given implementation. That does not, however, suggest any ambiguity
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`with respect to what a “security mechanism” is, nor is there any real dispute as to
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`what might count as a “security mechanism” here.
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`What Petitioner characterizes as Dr. Martin’s incorporation of “nebulous and
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`shifting limitations into the term,” shows that Dr. Martin was merely discussing an
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`implementation of a hypothetical security mechanism. Dr. Martin was asked
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`“What is the plain and ordinary meaning of the phrase ‘security mechanism
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`governing information transmitted between the first personal device and the second
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`device.’”2 Ex. 1076, 95:14-18. Dr. Martin responded, not with any “shifting”
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`manner, but by reiterating how one would implement an exemplary system as
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`previously discussed3 during the deposition: “So again, as I’ve said, the security
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`mechanisms depend upon what you’re trying to protect against. And so - and so you
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`have to take that into account as part of the meaning. And then the - there also needs
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`to be information that’s transmitted between the first personal device and the second
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`device.” Id. at 95:21-96:5. Immediately following this answer, Dr. Martin was
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`asked “So is it your opinion that the ordinary meaning of the phrase ‘security
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`mechanism governing information transmitted between the first personal device and
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`the second device’ changes depending upon what you’re trying to protect against?”
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`2 The question was appropriately objected to, as it called for a legal
`conclusion, and was also ambiguous.
`3 See Ex. 1076 at 29:2-30:24
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`Id. at 96:7-12. The form of this question was also appropriately objected to as it
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`mischaracterized Dr. Martin’s prior testimony. Dr. Martin, once again, reiterated
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`his response in the context of the prior hypothetical: “So, you know, as I’ve said, the
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`security mechanisms depend upon what your threat model is. And so depending
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`upon, you know, what you're trying to accomplish and what the threats are to that
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`would determine what security mechanisms you would have in place.” Id. at
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`96:15-22 (emphasis added).
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`Just a few questions after these exchanges, Dr. Martin was asked: “So you
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`can’t tell me today sitting here what the plain and ordinary meaning of the phrase
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`‘security mechanism governing information transmitted between the first personal
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`device and the second device’ is until I tell you what you’re trying to protect
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`against?” Id. at 98:17-23. The form of this question was appropriately objected to
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`as it was vague and confusing in context, and again misstated Dr. Martin’s prior
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`testimony. Dr. Martin replied that “Yes. That’s correct. The form of the security
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`mechanism is going to depend upon, you know, what the threats are that you’re
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`trying to protect against.” Id. at 99:1-5 (emphasis added). Here, Dr. Martin again
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`simply stresses the truism that the particular form of “security mechanism” chosen
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`for a particular implementation would depend on the threats facing the designer.
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`What is more, other portions of Dr. Martin’s transcript only serve to confirm
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`that Dr. Martin was repeatedly using an exemplary implementation throughout his
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`deposition when explaining how security mechanisms could work. For example, in
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`one portion, Dr. Martin is asked “But what from - you know, the particular
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`embodiment that could accomplish the figure and meet the security mechanism
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`limitation depend on the application or the threat that you’re trying to protect against;
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`is that fair to say?” Ex. 1076, 126:20-25. The form of this question was
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`appropriately objected to as it was vague and confusing. Dr. Martin does not respond
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`(as Petitioner alleges) by saying that the meaning of security mechanism changes
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`based on the threat level, but instead he responds by discussing how different
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`security mechanisms could be implemented depending on the threat levels faced:
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`Well, as I’ve said before, like, depending upon what
`you’re trying to - you have different threats that you’re
`trying to protect against, and your security mechanism
`would depend on those threats. So in this particular case,
`you know, I don’t want bystander B to be able to dispense
`medication, but I want responding personnel RP to be able
`to dispense medication, you know, again, looking at that
`paragraph before. So given that particular example, given
`that particular example, the -- so the first embodiment of
`encryption by itself would not accomplish that -- that
`capability of preventing B from -- bystander B from
`dispensing medication while allowing RP to dispense
`medication. But, you know, having security keys, the third
`example there would permit it. So all those data flows in
`Figure 5 could be done without -- if I didn’t care about
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`eavesdropping, if I didn’t care about somebody who is
`wandering by from listening to all of this data that’s
`flowing back and forth -- okay? -- then I wouldn’t need to
`encrypt the data channels -- okay? -- the data flows, the
`lines that are shown in there. But I would want that -- you
`know, the -- I could use that security key from the central
`agency and provide that to the responding personnel.
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`Id. at 127:13-128:15.
`In yet another portion of his deposition, Dr. Martin was asked repeated
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`questions (all appropriately objected to) regarding a POSITA’s understanding of the
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`term “security mechanism.” See Ex. 1076, 63:6-67:5. Dr. Martin’s consistent
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`answer to each of these questions again uses an exemplary implementation as a
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`framework for his answers. In fact, in his answer to the last of these questions, Dr.
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`Martin makes it abundantly clear that he was referring to an implementation of the
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`security mechanism, not any ambiguity as to what would qualify as a security
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`mechanism: “So you would want to understand what your -- what you’re trying to
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`protect against before you design the security mechanisms.” Id. at 67:2-5 (emphasis
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`added).
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`Similarly, Petitioner quotes Dr. Martin as saying “depend[s] upon [] the
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`alternative application area that you’re contemplating,” but fails to provide the entire
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`quote which demonstrates that this is in reference yet again to a hypothetical
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`implementation of a security mechanism: “You know, as we’ve -- as we’ve said
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`several times before, you know, the choice of security mechanisms that you’re going
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`to implement is going to depend upon the application.” Id. at 139:5-10 (emphasis
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`added); Reply at 2.
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`Finally, Petitioner also cites Dr. Martin’s response to the following
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`confusing—and objected to—question: “Q. And when you say the security
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`mechanism depends, you’re saying the ordinary meaning of security mechanism
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`depends on the threat you’re trying to protect against?” Ex.1076, 98:5-9. The
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`question is vague, ambiguous, and confusing for a number of reasons, as it purports
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`to take Dr. Martin’s prior explanation of the truism that any implementation of a
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`“security mechanism” “depends” on the threats to be protected against and purports
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`to frame it as what the “ordinary meaning” of the claim term “security
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`mechanism”—a legal question—should be. While Dr. Martin answered “Yes.
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`That’s correct,” this particular exchange does more to evidence the nebulous,
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`untethered, and shifting approach of Petitioner’s questioning at deposition than any
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`genuine ambiguity on Dr. Martin’s part as to what would and would not qualify as a
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`“security mechanism” as claimed in light of the specification.
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`Petitioner also accuses Dr. Martin of incorporating the requirement that a
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`“security mechanism” have “multiple levels of authorization” into the construction
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`of “security mechanism”—yet that argument finds no basis in fact. While Dr. Martin
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`talked about the specification’s discussion of multiple levels of authorization in
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`discussing the context of the invention, neither Patent Owner nor Dr. Martin have
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`advocated for a construction of the term that requires multiple levels of authorization
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`nor is that a basis on which the POR or Dr. Martin distinguish any prior art.
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`2.
` “data input/output port”
`As the Board recognized in the decision granting institution, the ’233 patent
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`consistently draws a distinction between local area wireless communication and
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`communication via data ports, as illustrated in Figures 4A and 4C. The
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`embodiments of Figures 4A and 4C (and their accompanying descriptions) plainly
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`demonstrate a difference in usage throughout the specification. Additionally, the
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`’233 patent indicates that the data ports 160 “may include, but are not limited to:
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`serial, parallel, USB, etc.” while separately and distinctly discussing wireless
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`communication channels. Ex. 1001, 3:48-49
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`Petitioner further alleges that “data input/output port” should not be construed
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`as distinguished from a local wireless communication because there is no express
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`disclosure of an embodiment of a PMD with both, as required by the claims.
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`However, that argument has no bearing on whether the terms mean something
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`different—the specification reflects that they do even were no such embodiment
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`expressly disclosed. What is more, the specification does describe a device (MDI
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`600) that contemplates both a data port 160 and LAW 330 for communication as
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`different things, consistent with the rest of the specification, and also describes (in
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`the combination of Fig. 4A and 4C) the option of using either a data port or wireless
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`communication. A POSITA would understand that, given these options, the PMD
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`could include both.
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`III. THE PETITION FAILS TO DEMONSTRATE THE
`UNPATENTABILITY OF THE CLAIMS
`A.
`The Challenged Claims are Patentable Over Jacobsen
`Petitioner’s Reply largely relies on attacking a strawman by arguing that
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`Patent Owner relies on claim construction arguments that Patent Owner never made.
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`While Patent Owner and Dr. Martin relied (appropriately) on the specification
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`and its examples when discussing the context of the claims and goals of the invention
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`(such as providing multiple layers of security), the reason Jacobsen fails to disclose
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`a “security mechanism governing information transmitted between the first personal
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`device and the second device” is that Jacobsen fails to disclose a security mechanism
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`that “governs information transmitted between a first device and a second device.”
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`As explained at length in Patent Owner’s Response, Jacobsen cannot meet the
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`limitation because no information is actually transmitted when the self-disabling
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`means (the purported “security mechanism”) is used. POR at 18-29. This argument
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`is premised on nothing more than the plain meaning of the words, and not a particular
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`construction of the term, but the result is nonetheless consistent with the goals of the
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`claimed invention and exemplary embodiments as described in the specification.
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`Petitioner also notes how Dr. Martin opined that “encryption alone” could in
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`certain applications constitute a “security mechanism”—an argument raised
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`repeatedly throughout the reply—but this is not an accurate description of Dr.
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`Martin’s testimony. First, this argument has nothing to do with the fact that
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`Jacobsen’s self-disabling means cannot “govern information transmitted” between
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`devices because no information is transmitted. Second, it is misleading. The
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`exchange from Dr. Martin’s deposition that Petitioner cites to is a confusing line of
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`questioning where Dr. Martin pushes back on the hypothetical implementation being
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`discussed. See Ex. 1076, 153:20-158:19. Not only was it the questioning attorney
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`who made the assertion purportedly attributed to Dr. Martin, but Dr. Martin
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`repeatedly made the disclaimer that encryption would be a security mechanism that
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`only protected against eavesdropping:
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`Q. Yeah, what I’m asking is the next step which is then -
`- so encryption alone would satisfy the security
`mechanism of Claim 1; is that correct?
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`[Objection to form.]
`THE WITNESS: If the application that you’re applying
`Claim 1 to was just worried about eavesdropping, then,
`yes, that would satisfy.
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`Ex. 1076, 158:10-19; see also id. at 156:4-11; 156: 23-157:7; 157:15-18; 158:4-8
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`(all confirming that encryption would suffice as a security mechanism to address
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`eavesdropping). Petitioner’s argument on this point is further addressed in the
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`discussion of Say in Section III.B below.
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`Having recognized the fatal error in relying on Jacobsen’s self-disabling
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`means as satisfying the term “security mechanism governing information
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`transmitted between the first personal device and the second device,” Petitioner now
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`argues—for the first time in reply—that the term “information transmitted” does not
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`require that information actually be transmitted and points to the specification of the
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`’233 Patent’s reference to “security keys” and “biometrics. First, this is a new claim
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`construction argument raised for the first time in reply and has thus been waived.
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`Second, the examples cited to, while concerning authorization, also require the
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`actual transmission of information. Third, to the extent the specification did describe
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`some semblance of self-disabling means akin to that of Jacobsen, that is not what
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`was claimed in the claims at issue—which requires information transmitted.
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`Petitioner goes on to argue that Jacobsen’s “self-disabling means” does
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`govern information transmitted between the first personal device and the second
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`device because if a user enters a password incorrectly once, they would have another
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`opportunity to do so before the device is disabled. However, even this feature of
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`Jacobsen is untethered to any information transmitted between the devices. To the
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`contrary, this “first password” scenario only further demonstrates how such a
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`password is focused on the device itself and not the information transmitted.
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`Petitioner also further argues that Dr. Paradiso’s unreasonably broad
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`understanding of the term—such that smashing a device with a hammer constitutes
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`a “security mechanism governing information transmitted between the first personal
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`device and the second device,” is “irrelevant.” Reply at 15. To the contrary, the
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`relevance is manifest as it conclusively demonstrates the unreasonably broad
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`approach Petitioner has taken.
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`B.
`The Challenged Claims are Patentable Over Say
`Petitioner’s arguments with respect to Say once again demonstrate a myopic
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`focus on “security mechanism” while ignoring the specific requirement that it
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`“govern[] information transmitted between the first personal device and the second
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`device.” Petitioner also makes the same strawman argument with respect to claim
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`construction addressed above with respect to Jacobsen.
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`The fundamental problem with Petitioner’s reliance on Say—uncorrected in
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`Reply—is that Say’s purported “security” disclosures are divorced from “governing
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`information transmitted between the first personal device and the second device.”
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`Say’s “unique identification code,” remains an identifier whereas Say’s device-to-
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`device encryption is designed to avoid cross talk and is not about governing the
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`information transmitted, as discussed at length in Patent Owner’s Response. (See
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`POR at 34-41.)
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` Instead, these techniques are focused on enabling the
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`communication between specific devices regardless of the information transmitted
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`between them. Petitioner does not actually dispute this point, but rather argues that
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`under its unreasonably broad construction of the claim, Say’s disclosure meets the
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`limitation.
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`Petitioner again mischaracterizes Dr. Martin’s testimony as supporting the
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`notion that “encryption alone would satisfy the security mechanism of Claim 1.”
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`(Reply at 18.) However, as explained above, the cited testimony does not support
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`this assertion. It was Petitioner’s counsel who asserted that encryption alone would
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`satisfy the term, and Dr. Martin responded by merely explaining that some form of
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`encryption could suffice to prevent eavesdropping (see Ex. 1076, 153:20-158:19,
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`and Section III.A, above). The remaining Martin testimony cited by Petitioner only
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`further demonstrates that Dr. Martin considers encryption to be—in general terms—
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`a form of “security mechanism”, but not that it would always in every conceivable
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`implementation satisfy the limitations of the claims. See Ex. 1076, 68:19-69:17;
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`131:11-132:11. Indeed, Dr. Martin’s opening declaration describes at length how
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`Say’s encryption, which is focused on avoiding cross talk, would not “govern
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`information transmitted between the first personal device and the second device”
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`despite literally being a form of encryption.4 Ex. 2026 at ¶¶ 88-98; see also POR at
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`4 It should be noted that most of these questions were also objected to
`because they were vague and confusing in context, often unclear whether
`Petitioner’s attorney was intending to refer to a “security mechanism”, generally,
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`34-41. To be clear, Patent Owner’s argument, as stressed in the Patent Owner
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`Response (see POR at 11) is not that encryption can never be used such that it would
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`constitute a “security mechanism” that “governs information transmitted between
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`the first personal device and the second device.” Patent Owner’s argument has been
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`that the simple disclosure of the broad concept of encryption—on its own—does not
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`suffice to specifically disclose the claimed element. Indeed, Say is a perfect example
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`of such a situation where encryption was used in a manner that does not govern
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`information transmitted between the devices.
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`Indeed, Dr. Martin’s testimony at deposition was unequivocal on this point,
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`as he explained that while encryption of a communications link might provide
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`protection from, say, eavesdropping, it does not provide protection in the form of
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`“governing information transmitted” between devices as required by the claims.
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`(See Ex. 1076, 68:6-69:20). This testimony is also consistent with Dr. Martin’s
`
`declaration, which explained how the concept of encryption alone would not provide
`
`a security mechanism that governed information transmitted between the first and
`
`second personal device. See Ex. 2026 at 44 (“Accordingly Say’s use of encryption
`
`
`or a “security mechanism” that “govern[s] information transmitted between the
`first personal device and the second device” as required by the claims. See, e.g.,
`Ex. 1076 at 53:3-7, 56:2-7, 95:14-18, 96:7-12.
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`16
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`Patent Owner Sur-Reply
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`does not govern information transmitted between two devices.”) (emphasis in
`
`original).
`
`Petitioner also attempts to distinguish Say by arguing that its “identification
`
`codes” may be entered by a user. That argument, however, does not change the fact
`
`that Say contemplates them as being used merely for identification and not as a form
`
`of security (whether or not user selected). That the specification of the ’233 patent
`
`may disclose using codes for security does not change what Say actually discloses.
`
`See POR at 32-36. Say does not, for example, describe using a code as some form
`
`of device access or self-disabling means, though if it did, then that would further fail
`
`to disclose a “security mechanism governing information transmitted between the
`
`first device and the second device” for the same reasons a similar disclosure fails to
`
`disclose the element as discussed with respect to Jacobsen. It was Petitioner’s
`
`counsel who posed a hypothetical during Dr. Martin’s deposition that suggested
`
`implementing Say in a manner similar to this (“Q. And let’s say the patient selects
`
`an identification code, and that identification code is different from the identification
`
`codes of other sensor control units. . . .” Ex. 1076, 248:17-21), but Say itself does
`
`not actually disclose such an embodiment.
`
`Petitioner also objects to Patent Owner’s reliance on the plain meaning of
`
`“between” in distinguishing Say’s use of encryption in only one direction, however,
`
`Petitioner does not actually explain how—if at all—this is inconsistent with the
`
`17
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`IPR2020-00783
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`Patent Owner Sur-Reply
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`commonly understood meaning of the word “between.” Petitioner’s reliance on
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`“sending a command” (see Reply at 20) misses the point, as the act of sending a
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`command is not a security mechanism but rather an example of information
`
`transmitted that would, itself, be governed by a security mechanism. Patent Owner
`
`also disagrees with Petitioner’s assertion that the accused security mechanism in
`
`district court only affects communications in one direction, but that dispute has no
`
`bearing on the issues to be decided by the Board here.
`
`C.
`
`The Challenged Claims are Patentable Over the Combination of
`Say and Jacobsen
`Petitioner purports to justify the combination of Jacobsen and Say,
`
`overlooking the deficiencies of its original petition, by arguing that the risk of
`
`captured soldiers demonstrates a need to apply Say’s encryption to communications
`
`with the wrist unit of Jacobsen. As an initial matter, Patent Owner reiterates that the
`
`proposed combination fails to disclose a “security mechanism governing
`
`information transmitted between the first personal device and the second device” for
`
`all the same reasons that the references, individually, fail to disclose the same.
`
`Additionally, Petitioner overplays the significance that the hypothetical
`
`capture of a soldier would play in any potential motivation to combine Jacobsen and
`
`Say. For example, in support of its point, Petitioner cites the following testimony
`
`by Dr. Martin (Ex. 1076 at 179:9-17) which acknowledges the truism that not giving
`
`away the position of soldiers in the battlefield is simply important to avoid. This
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`IPR2020-00783
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`Patent Owner Sur-Reply
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`testimony, however, provides no motivation to combine the one-way encryption of
`
`a communication link in Say, which is designed to avoid cross talk and not govern
`
`information transmitted, into Jacobsen.
`
`Indeed, Say’s communication link encryption would have no effect in
`
`protecting the location of other soldiers’ wrist units after capture—it would only
`
`avoid cross talk on the communications links. Something else, like the Jacobsen
`
`device-disabling means would be required to protect against the threat of disclosing
`
`the location of other soldiers via equipment on the body of a captured soldier. Yet,
`
`such a disabling means would not “govern information transmitted from the first
`
`personal device to the second device,” as stressed repeatedly by Dr. Martin at
`
`deposition:
`
`So this self-disabling means, means there’s no information
`to be transmitted. I’ve disabled the device, okay? So once
`it’s disabled there’s no information to be transmitted.
`And, you know, as I’ve said in the report, the claim
`language says there’s -- governing -- I'm sorry. Let me
`make sure I’m not misquoting the claim language to you.
`You know,
`it’s governing
`information
`transmitted
`between the first personal
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