Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 1 of 35
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`IDENTITY SECURITY LLC,
`
`Plaintiff,
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`v.
`
`APPLE INC.
`
`Defendant.
`
`Civil Action No. 1:22-CV-00058-ADA
`
`Jury Trial Demanded
`
`DAUBERT/MOTION TO STRIKE CERTAIN OPINIONS AND TESTIMONY OF
`DR. STEPHEN WICKER
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`PUBLIC VERSION
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`

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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 2 of 35
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`
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`TABLE OF CONTENTS
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`Page
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`I. 
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`II. 
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`III. 
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`IV. 
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`V. 
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`VI. 
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`The Court should strike opinions asserting obviousness against dependent
`claims without assessing whether the asserted combinations read on
`limitations from the underlying independent claims. ..........................................................2 
`
`The Court should strike Dr. Wicker’s conclusory and generic motivations to
`combine, some of which are copy-pasted from generic public sources. .............................5 
`
`The Court should strike Dr. Wicker’s insufficient motivations to combine
`Crypto iButton and Klein. ....................................................................................................8 
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`The Court should preclude Dr. Wicker from relying on unreliable litigation
`calculations that Apple withheld until the final hours of discovery. .................................14 
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`The Court should prohibit Dr. Wicker from relying on analysis Apple failed to
`disclose during a 30(b)(6) deposition. ...............................................................................16 
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`The Court should prohibit misleading testimony portraying statements about
`other Dallas Semiconductor products not asserted as prior art as statements
`describing features of the Crypto iButton prior art system. ...............................................19 
`
`VII.  The Court should prohibit Dr. Wicker from basing invalidity analysis on
`characterizations of Identity Security’s infringement positions. .......................................21 
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`VIII.  The Court should prohibit Dr. Wicker from relying on or parroting
`uncorroborated statements from Mr. Bolan regarding the Crypto iButton. .......................25 
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`i
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 3 of 35
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`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)........................................................................................ passim
`
`Adasa Inc. v. Avery Dennison Corp.,
`No. 6:17-CV-01685-MK, 2023 WL 3775332 (D. Or. June 2, 2023) ........................................8
`
`Asia Vital Components Co. v. Asetek Danmark A/S,
`377 F. Supp. 3d 990 (N.D. Cal. 2019) .....................................................................................14
`
`Brazos River Auth. v. GE Ionics, Inc.,
`469 F.3d 416 (5th Cir. 2006) ...................................................................................................18
`
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`No. 2:14-CV-911-JRG-RSP, 2016 WL 4718963 (E.D. Tex. July 12, 2016) ..........................22
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) ...................................................................................................................2
`
`Deering v. Winona Harvester Works,
`155 U.S. 286 (1894) .................................................................................................................26
`
`Dow Chem. Co. v. Mee Indus., Inc.,
`341 F.3d 1370 ..........................................................................................................................26
`
`Entropic Commc’ns LLC v. Charter Commc’ns Inc.,
`2023 WL 8535212 (E.D. Tex. Dec. 1, 2023), report and recommendation
`adopted 2023 WL 8534481 ...................................................................................10, 12, 13, 22
`
`Function Media, L.L.C. v. Google, Inc.,
`No. 2:07-CV-279-CE, 2010 WL 276093 (E.D. Tex. Jan. 15, 2010) .......................................18
`
`Genband U.S. LLC v. Metaswitch Networks Corp.,
`2015 WL 12911530 (E.D. Tex. Sept. 30, 2015) ................................................................21, 22
`
`Grain Processing Corp. v. Am. Maize-Prod. Co.,
`840 F.2d 902 (Fed. Cir. 1988)..................................................................................................12
`
`Ierardi v. Lorillard, Inc.,
`1991 WL 158911 (E.D. Pa. Aug. 13, 1991) ............................................................................19
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006)................................................................................................3, 8
`
`ii
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 4 of 35
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`InTouch Techs., Inc. v. VGO Commc’ns. Inc.,
`751 F.3d 1327 (Fed. Cir. 2014)..........................................................................................12, 13
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012)..........................................................................................10, 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ......................................................................................................... passim
`
`Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc.,
`322 F.3d 1335 (Fed. Cir. 2003)................................................................................................29
`
`Metalcraft of Mayville, Inc. v. The Toro Co.,
`848 F.3d 1358 (Fed. Cir. 2017)......................................................................................9, 13, 14
`
`Microsoft Corp. v. Enfish, LLC,
`662 Fed. App'x. 981 (Fed. Cir. 2016) ......................................................................................11
`
`Moore v. Ashland Chem. Inc.,
`151 F.3d 269 (5th Cir. 1998) .....................................................................................................1
`
`Papst Licensing GmbH & Co., KG v. Samsung Elecs. Co., Ltd,
`403 F. Supp. 3d 571 (E.D. Tex. 2019) .....................................................................................12
`
`Parthenon Unified Memory Architecture LLC v. Apple Inc.,
`No. 2:15-CV-621-JRG-RSP, 2016 WL 7743510 (E.D. Tex. Sept. 21, 2016) .........................22
`
`Procter & Gamble Co. v. Teva Pharm. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009)....................................................................................................9
`
`Securus Techs., Inc. v. Glob. Tel*Link Corp.,
`701 F. App'x 971 (Fed. Cir. 2017) ...........................................................................................11
`
`Sims v. Kia Motors of Am., Inc.,
`839 F.3d 393 (5th Cir. 2016) .....................................................................................................1
`
`Super Future Equities, Inc. v. Wells Fargo Bank Minn., N.A.,
`2007 WL 4410370 (N.D. Tex. Dec. 14, 2007) ........................................................................19
`
`TiVo, Inc. v. Echostar Commc’ns Corp.,
`516 F.3d 1290 (Fed. Cir. 2008)..........................................................................................22, 23
`
`Woodland Trust v. Flowertree Nursery, Inc.,
`148 F.3d 1368 (Fed. Cir. 1998)....................................................................................26, 27, 29
`
`iii
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 5 of 35
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`Rules
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`Fed. R. Civ. P. 26 ...........................................................................................................................14
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`Fed. R. Civ. P. 30(b)(6)............................................................................................................18, 19
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`Fed. R. Evid. 702 .................................................................................................................1, 21, 22
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`iv
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 6 of 35
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`Plaintiff Identity Security LLC (“Identity Security”) hereby moves the Court to exclude
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`certain opinions and related testimony of Dr. Stephen Wicker, who submitted two reports on behalf
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`of Apple addressing inter alia the validity and infringement of the asserted claims of U.S. Patent
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`Nos. 7,493,497 (the “’497 Patent”), 8,020,008 (the “’008 Patent”), 8,489,895 (the “’895 Patent”),
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`and 9,507,948 (the “’948 Patent” and collectively, the “Asserted Patents”). See Exhibit A (“Wicker
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`Opening Report”); Exhibit B (“Wicker Rebuttal Report”).
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`Dr. Wicker addresses an enormous range of topics and issues in his reports, which
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`collectively span about 1,500 pages. Identity Security does not generally contest Dr. Wicker’s
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`credentials. Nor does Identity Security seek to strike the vast majority of the opinions that he has
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`offered in this matter—or even all those opinions that fall short of relevant thresholds for expert
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`testimony. However, several of Dr. Wicker’s specific opinions in his reports are material and fall
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`well below established thresholds of expert testimony—for example those that assert obviousness
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`while failing to address multiple claim limitations, copy-paste generic motivations to combine
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`from public reference materials, or rely on new evidence undisclosed during discovery.
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`Accordingly, Identity Security therefore files this targeted motion seeking to strike specific
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`opinions that are unfit for the jury.
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`As the Court knows, the proponent of expert testimony bears the burden of establishing
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`that (1) the expert is qualified; (2) the evidence is relevant; and (3) the evidence is reliable. Sims
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`v. Kia Motors of Am., Inc., 839 F.3d 393, 400 (5th Cir. 2016); see also Moore v. Ashland Chem.
`
`Inc., 151 F.3d 269, 276 (5th Cir. 1998). Expert testimony is admissible only if it “is based on
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`sufficient facts or data,” “is the product of reliable principles and methods,” and “the expert’s
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`opinion reflects a reliable application of the principles and methods to the facts of the case.” Fed.
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`1
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 7 of 35
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`R. Evid. 702; see also Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 597 (1993). Relevant
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`factual and legal background is provided in line below.
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`I.
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`The Court should strike opinions asserting obviousness against dependent claims
`without assessing whether the asserted combinations read on limitations from the
`underlying independent claims.
`
`Dr. Wicker opines that U.S. Patent No. 6,213,391 (“Lewis,” Ex. F) in combination with
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`French Publication No. 2,776,153 (“Gerard,” Ex. G) or in combination with Gerard, U.S. Patent
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`No. 5,940,510 (“Curry,” Ex. H), and U.S. Patent No. 7,096,370 (“Klein,” Ex. I, and collectively,
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`the “Lewis Combinations”) renders obvious Claim 4 of the ’497 Patent and Claim 3 of the ’008
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`Patent, which are dependent claims generally adding an “input/output port” limitation to Claim 1
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`of the respective patents. See Wicker Opening Report (Ex. A) ¶¶ 414–29; 666–700. While
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`Dr. Wicker asserts that Lewis discloses an input/output port, he never asserts or opines that the
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`Lewis Combinations disclose any of the independent claim limitations from which the pertinent
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`claims rely. In other words, Dr. Wicker failed to assess almost all of the pertinent claim limitations
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`necessary to support his opinion that the Lewis Combinations render obvious the relevant claims.
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`The Court should prohibit Dr. Wicker from offering these unsupported invalidity opinions to the
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`jury.
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`Dr. Wicker’s opinions regarding the Lewis Combinations fall short of established standards
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`for expert testimony. Experts offering an obviousness opinion must “explain how specific
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`references could be combined, which combination(s) of elements in specific references would
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`yield a predictable result, [and] how any specific combination would operate or read on the asserted
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`claims.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir.
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`2012) (affirming grant of JMOL on obviousness based on the failure to testify to these factors).
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`When it comes to obviousness, the “analysis should be made explicit,” as “obviousness grounds
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`cannot be sustained by mere conclusory statements; instead, there must be some articulated
`2
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 8 of 35
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`reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR
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`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (second quote quoting In re Kahn, 441 F.3d
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`977, 988 (Fed. Cir. 2006)). Here, Dr. Wicker fails to explain “how [the Lewis Combinations]
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`would … read on the asserted claims” by declining to even mention or discuss all the claim
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`limitations coming from the relevant independent claims. Dr. Wicker cannot short-circuit the
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`analysis when he and Apple bear the burden. This failure renders his opinions conclusory,
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`unsupported, and unreliable.
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`To be sure, Dr. Wicker opines elsewhere in his report that other asserted references
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`excluding Lewis render obvious the pertinent independent claims. (E.g., he opines that Gerard
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`anticipates or Gerard, Curry, and Klein render obvious independent Claim 1 of the ’497 Patent and
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`subsequently that Gerard plus Lewis or plus Lewis, Curry, and Klein renders obvious dependent
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`Claim 4 of that patent.) But Dr. Wicker does not incorporate those opinions as part of his analysis
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`of the separate Lewis Combinations. Nor could he. Dr. Wicker was required to “explain how
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`specific references could be combined.” ActiveVideo, 694 F.3d at 1327. Dr. Wicker is clear in his
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`report that the Lewis Combinations would utilize the hardware of Lewis. As for Lewis and Gerard,
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`he says: “It would have been obvious to a POSITA to implement the encryption method of Gerard
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`onto the hardware of Lewis.” ¶ 418; see also ¶ 421 (“A POSITA would have expected success in
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`implementing Gerard’s functionality using Lewis’s hardware due to the similarity between the
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`references. Because Lewis already teaches functionality of receiving and encrypting biometric data
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`and for communicating with external devices, no significant hardware modifications would have
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`been required to support Gerard’s method of encrypting a single owner’s biometric data a [sic]
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`processor’s serial number as the encryption key.”). Dr. Wicker’s proposed combination of Lewis
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`with Gerard, Curry, and Klein similarly applies the encryption of those references to Lewis’s
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`3
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 9 of 35
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`hardware. E.g., Wicker Opening Report ¶ 685 (“It would have been obvious to a POSITA to
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`implement the encryption method of Gerard, Curry, and Klein onto the hardware of Lewis.”);
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`¶ 687 (“It would have been obvious to a POSITA to implement the encryption methods of Gerard,
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`Curry, and Klein onto Lewis’s hardware regardless of whether the encryption method uses the
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`serial number as a key or to derive a key. The advantages of Lewis are achieved regardless of what
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`specific encryption key is used as all methods of encryption applied to Lewis’s hardware would
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`receive the benefits of being applied in more scenarios.”). In other words, Dr. Wicker’s analysis
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`of the Lewis Combinations relies on the encryption methods of Gerard (or Gerard, Curry, and
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`Klein) and the hardware of Lewis.
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`Despite advancing combinations based on the hardware of Lewis, Dr. Wicker never once
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`attempts to show how the hardware of Lewis reads on the various hardware limitations (or any
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`other) described in independent Claims 1 of the ’497 and ’008 Patents—e.g., “memory” in both
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`patents, a “microprocessor” with a “microprocessor identity” or “microprocessor identity
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`information” in both patents, a “PROM” in Claim 1 of the ’497 Patent, or “encoding, using the
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`microprocessor” in Claim 1 of the ’008 Patent. Dr. Wicker cannot opine that a combination
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`utilizing the hardware of Lewis renders obvious these dependent claims without ever assessing
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`how the hardware of Lewis reads on most of the pertinent limitations from the independent claims.
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`Because Dr. Wicker fails to assess whether the Lewis Combinations read on claim
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`limitations that are part of Claim 4 of the ’497 Patent and Claim 3 of the ’008 Patent, his opinions
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`that the Lewis Combinations render those claims obvious (¶¶ 414–429, 666–700) should be
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`stricken from his report and Dr. Wicker should be prohibited from testifying that the Lewis
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`Combinations render obvious Claim 4 of the ’497 Patent and Claim 3 of the ’008 Patent.
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`4
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 10 of 35
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`II.
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`The Court should strike Dr. Wicker’s conclusory and generic motivations to combine,
`some of which are copy-pasted from generic public sources.
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`Dr. Wicker’s various combination grounds generally offer purported motivations to
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`combine but then end with a capstone paragraph of conclusory and generic motivations to combine
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`(as if to preserve arguments). This section seeks to strike these cursory boilerplate paragraphs
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`purporting to offer additional rationales (but not the actual paragraphs of analysis the precede
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`them). For instance, Apple asserts the Dallas Semiconductor Cryptographic iButton (“Crypto
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`iButton”) system as prior art to the patents-in-suit. In particular, Apple and its expert contend that
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`the Crypto iButton in view of Klein and U.S. Patent No. 5,764,888 (“Bolan,” Ex. J) renders the
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`asserted claims obvious. After offering several other purported motivations to combine (discussed
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`below), Dr. Wicker asserts that Crypto iButton and Klein and Crypto iButton and Bolan would be
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`combined based on paragraphs predominately copy-pasted from the Manual of Patent Examining
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`Procedures (MPEP)1. In particular, the material highlighted below is copied directly from the
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`MPEP:
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`1 Available at https://www.uspto.gov/web/offices/pac/mpep/s2143.html.
`5
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 11 of 35
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`Wicker Opening Report ¶ 7932; see also ¶ 783 (copying same language). Here is the relevant
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`language from MPEP § 2143:
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`
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`When shown the MPEP language, Dr. Wicker admitted that “(A) through (E) from this document
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`are quoted verbatim without quotation marks as (A) through (E) in paragraph 793.” Wicker Dep.
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`Tr. 174:24–175:2; see also id. at 177:1–4 (admitting that paragraph 783 “is just another example
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`of the same list copy/pasted into the report”). Dr. Wicker then suggested that “[i]t would seem to
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`me that this was something that counsel drafted.” Id. at 175:16–17. Testimony that is “generic and
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`bears no relation to any specific combination of prior art elements” has been found to be
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`“insufficient for a reasonable jury to support a determination of obviousness.” ActiveVideo
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`Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). An expert
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`plainly cannot rely on verbatim recitations of generic public materials to show obviousness. That
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`extremely unreliable methodology would not assist the jury in its decision in this case.
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`
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`No better, the Wicker report similarly ends every other motivation-to-combine analysis in
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`the report with the same list copy-pasted in paragraphs 783 and 793 offered as a medley of one-
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`sentence opinions. See Wicker Report ¶¶ 420, 442, 486, 492, 676, 682, 688, 716, 722, 728, 1391,
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`2 The pertinent section describes purported motivations to combine Crypto iButton and
`Klein. Counsel assumes that, right before the highlights, this paragraph should say “with the
`teaching of Klein” rather than “with the teachings of Bolan.” This typo, likely and ironically caused
`by copy-pasting the nearly identical paragraph 783 discussing Bolan as paragraph 793, only further
`demonstrates the conclusory and generic nature of this opinion.
`6
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 12 of 35
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`1397. (Indeed, that Dr. Wicker asserts all of the exact same theories in favor of every combination
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`in his report independently demonstrates that his analysis is conclusory and unsupported.)
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`Dr. Wicker’s analysis of motivations to combine Gerard, Curry, Klein, and U.S. Patent
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`No. 6,668,323 (“Challener,” Ex. K) is representative. Paragraphs 707 through 727 offer a variety
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`of purported motivations to combine these references that are not challenged in this motion. But
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`then Paragraph 728 (reproduced below) purports to provide “further” grounds of analysis that take
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`the exact same A–E arguments again literally copy-pasted in paragraphs 783 and 793 and merely
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`make a couple of minor tweaks for a hitlist of single-sentence opinions:
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`[A] A POSITA would have been motivated to combine Gerard with Challener to
`use a password encrypted by the serial number to authenticate the owner because it
`combines known prior art elements, encrypting digital identity data with a
`microprocessor identity and authenticating an owner with a password that is
`encrypted. [B] A POSITA would have further been motivated to combine Gerard
`with Challener to use a password encrypted by the serial number to authenticate the
`owner because it is a simple substitution of one known element, authenticating an
`owner based on biometric data such as a photograph or fingerprint, with another,
`authenticating an owner with an encrypted password. [C] A POSITA would have
`further been motivated to combine Gerard with Challener to improve a similar
`device in the same way. [D] A POSITA would have further been motivated to
`combine Gerard with Challener to use a password encrypted by the serial number
`to authenticate the owner because it applies a known technique, authenticating an
`owner with an encrypted password, to a known device, the device of Gerard, ready
`for improvement to yield the predictable result of increasing the security of the
`device. [E] A POSITA would have further been motivated to combine Gerard with
`Challener to use a password encrypted by the serial number to authenticate the
`owner because it would have been obvious to try as there are a finite number of
`identified, predictable solution for methods of authenticating the owner of a device
`with a reasonable expectation of success.
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`As can be seen by the overlaid A–E lettering, paragraph 728 merely asserts one-sentence
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`recitations of the MPEP obviousness rationales in the same order as those copy-pasted in
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`paragraphs 783 and 793. Some of these one-sentence opinions are even incomplete or add only the
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`reference names to the rote MPEP language. (E.g., “A POSITA would have further been motivated
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`to combine Gerard with Challener to improve a similar device in the same way.”) All of them are
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`7
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 13 of 35
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`cursory and unsupported, lacking any meaningful substantive analysis (or even a second sentence
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`of support). The same is true of paragraphs throughout the report that apply this exact same one-
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`sentence medley asserting the same purported rationales in the same order without any meaningful
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`analysis. See Wicker Report ¶¶ 420, 442, 486, 492, 676, 682, 688, 716, 722, 728, 1391, 1397.
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`When it comes to obviousness, the “analysis should be made explicit,” as “obviousness
`
`grounds cannot be sustained by mere conclusory statements; instead, there must be some
`
`articulated reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (second quote quoting In
`
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also Adasa Inc. v. Avery Dennison Corp., No.
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`6:17-CV-01685-MK, 2023 WL 3775332, at *7 (D. Or. June 2, 2023) (“Mere conclusory
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`statements are insufficient; there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness. Such conclusory testimony is
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`unhelpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of
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`obviousness.” (cleaned up)). Dr. Wicker’s one-sentence checklist of additional motivations
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`asserted for each combination falls far short of that—and any reasonable—standard. Dr. Wicker
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`should not be permitted to offer these half-baked and cursory opinions to the jury.
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`For these reasons, the Court should strike paragraphs 420, 442, 486, 492, 676, 682, 688,
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`716, 722, 728, 783, 793, 1391, and 1397 of Dr. Wicker’s opening report.
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`III. The Court should strike Dr. Wicker’s insufficient motivations to combine Crypto
`iButton and Klein.
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`As described above, Dr. Wicker asserts that the Crypto iButton in view of Klein and Bolan
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`renders the asserted claims obvious. The Court should strike this testimony because Dr. Wicker
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`8
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 14 of 35
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`fails to offer any sufficient motivation to combine Crypto iButton and Klein.3
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`A party seeking to invalidate a patent on the basis of obviousness must show “by clear and
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`convincing evidence that a skilled artisan would have been motivated to combine the teachings of
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`the prior art references to achieve the claimed invention, and that the skilled artisan would have
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`had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA,
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`Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). Thus, an obviousness opinion must “explain why a person
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`of ordinary skill in the art would have combined elements from specific references in the way the
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`claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312,
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`1328 (Fed. Cir. 2012) (emphasis in original; citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`418 (2007)). “In determining whether there would have been a motivation to combine prior art
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`references to arrive at the claimed invention, it is insufficient to simply conclude the combination
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`would have been obvious without identifying any reason why a person of skill in the art would
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`have made the combination.” Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366
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`(Fed. Cir. 2017). Dr. Wicker’s analysis falls short of that bar in assessing motivations to combine
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`the Crypto iButton (asserted system prior art) and Klein as part of the combination of Crypto
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`iButton, Klein, and Bolan.
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`3 Apple asserts only one ground based on the Crypto iButton as an alleged prior art system—
`namely, Crypto iButton in combination with both Bolan and Klein. See Exhibit C (Apple
`identifying grounds for trial); Wicker Tr. 172:17–20 (Q: “The only ground including iButton is a
`combination of three items: the cryptographic iButton, Bolan and Klein, Correct?” A: “That is
`correct.”). In his report, Dr. Wicker assesses motivations to combine Crypto iButton with Bolan
`separately from those to combine Crypto iButton with Klein. (He never asserts motivations to
`combine all three references.) Here, Identity Security focuses on the failure to show a motivation
`to combine Crypto iButton with Klein, as this alone renders the asserted three-part combination
`unsupported, although similar deficiencies would apply to the purported motivation to combine
`Crypto iButton with Bolan.
`
`9
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 15 of 35
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`For the bulk of his analysis, Dr. Wicker merely asserts that “Crypto iButton and Klein
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`relate to the same subject matter” and offers six purported “example[s]”: that both (1) “relate to a
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`device that performs cryptographic operations,” ¶ 785, (2) “relate to the use of a microprocessor
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`identity within the microprocessor device,” ¶ 786, (3) “relate to data that identifies the owner of
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`the device,” ¶¶ 787–88, (4) “relate to biometric authentication,” ¶ 789, (5) “relate to encryption of
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`data,” ¶ 790, and (6) “utilized a microprocessor identity in cryptographic operations,” ¶ 791. Even
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`assuming arguendo that each of these were true, that the Crypto iButton and Klein relate to certain
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`subject matters does not in any way “explain why a person of ordinary skill in the art would have
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`combined elements from specific references in the way the claimed invention does.” ActiveVideo,
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`694 F.3d at 1328. (Indeed, Dr. Wicker entirely fails to explain what elements would be combined
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`or how they would be combined—his report simply argues that various references independently
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`disclose any given claim limitation.)
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`That two references may “relate to the same subject matter” says nothing about whether a
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`POSITA would have a motivation to combine those references. In the Entopic case, for example,
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`Magistrate Judge Payne described that “[m]erely stating that references focus on ‘very much the
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`same problem;’ are ‘both focused on the same signal areas;’ and both ‘focused on the same area
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`of technology’ … is deficient” because “there is no explanation of how or why a skilled artisan
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`would combine the references.” Entropic Commc’ns LLC v. Charter Commc’ns Inc., 2023 WL
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`8535212, at *3 (E.D. Tex. Dec. 1, 2023) (recommending granting summary judgment of no
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`invalidity based on failure to offer a motivation to combine), report and recommendation adopted
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`2023 WL 8534481 (Gilstrap, J.); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
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`F.3d 1342, 1369 (Fed. Cir. 2012) (holding that “[t]he record is devoid of any reason someone
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`would combine these references” despite that “both of these references independently accomplish
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`10
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 16 of 35
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`
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`similar functions, namely, draining fluids.”); id. at 1362–1366 (describing that the references all
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`relate to treating types of wounds); Securus Techs., Inc. v. Glob. Tel*Link Corp., 701 F. App'x
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`971, 977 (Fed. Cir. 2017) (“We agree with the Board that a broad characterization of Susen and
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`Gainsboro as both falling within the same alleged field of ‘telecommunications monitoring and
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`control,’ without more, is not enough for Securus to meet its burden of presenting a sufficient
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`rationale to support an obviousness conclusion. See, e.g., Microsoft Corp. v. Enfish, LLC, 662 Fed.
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`App’x. 981, 990 (Fed. Cir. 2016) (“[The] Board correctly concluded that [the petitioner] did not
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`articulate a sufficient motivation to combine. With respect to [certain challenged claims], [the
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`petitioner] gave no reason for the motivation of a person of ordinary skill to combine [the two
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`references] except that the references were directed to the same art or same techniques....”). Such
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`short-cut logic would lead to the conclusion that any and all combinations of elements known in
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`this broad field would automatically be obvious, without the need for any further analysis.”).
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`Even if merely relating to similar “subject matter” were a motivation to combine (it isn’t),
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`Dr. Wicker’s analysis reeks of impermissible hindsight bias. All six purported similarities
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`identified by Dr. Wicker track limitations of the Asserted Claims:
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`Wicker Asserted “Subject Matter”
` “a device
`that performs cryptographic
`operations,” ¶ 785
` “the use of a microprocessor identity within the
`microprocessor device,” ¶ 786
` “encryption of data,” ¶ 790
` “utilize[ing] a microprocessor
`cryptographic operations,” ¶ 791
` “data that identifies the owner of the device,”
`¶¶ 787–88
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`identity
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`in
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` “biometric authentication,” ¶ 789
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`11
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`Exemplary Claim Limitation
`’497 Patent Claim 1: “wherein the digital
`identity
`data
`is
`bound
`to
`the
`microprocessor identity by encrypting the
`digital identity data using an algorithm that
`uses the microprocessor identity”
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`’497 Patent Claim 1: “digital identity data,
`wherein the digital identity data identifies
`an owner of the digital identity device”
`’948 Patent Claim 1: “digital identity data
`that identifies an owner of the digital
`identity device”; “wherein
`the digital
`identity data comprises an owner’s
`biometric information”
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`Case 1:22-cv-00058-ADA Document 171 Filed 02/23/24 Page 17 of 35
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`But a motivation to combine—even if relating to similar subject matters were somehow considered
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`a motivation—must not be framed “through the elements of the claimed invention.” Papst
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`Licensing GmbH & Co., KG v. Samsung Elecs. Co., Ltd, 403 F. Supp. 3d 571, 597 (E.D. Tex.
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`2019). Instead, “[c]are must be taken to avoid hindsight reconstruction by using the patent in suit
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`as a guide through the maze of prior art references, combining the right references in the right way
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`so as to achieve the result of the claims in suit.” Grain Processing Corp. v. Am. Maize-Prod. Co.,
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`840 F.2d 902, 907 (Fed. Cir.