Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 1 of 38
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`
`IDENTITY SECURITY LLC,
`
`
`Plaintiff,
`
`
`Civil Action No. 1:22:CV-00058-ADA
`
`JURY TRIAL DEMANDED
`
`FILED UNDER SEAL
`
`CONFIDENTIAL – ATTORNEYS’
`EYES ONLY
`
`v.
`
`
`
`
`APPLE INC.,
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`DEFENDANT APPLE INC.’S MOTION FOR SUMMARY
`JUDGMENT OF NONINFRINGEMENT
`
`

`

`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 2 of 38
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`FILED UNDER SEAL – CONFIDENTIAL –ATTORNEYS’ EYES ONLY
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`
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`TABLE OF CONTENTS
`
`Pages
`
`I.
`
`STATEMENT OF UNDISPUTED FACTS ........................................................................3
`
`A.
`
`B.
`
`C.
`
`Independent claim 1 of the ʼ497 patent and claim 7 of the ’008 patent require
`a “microprocessor identity” that “is an alpha-numeric value”—not a
`numeric value generated by a random number generator. .......................................4
`
`All Asserted Claims Require “Digital Identity Data” That “Identifies an
`Owner” Of The Device. ...........................................................................................5
`
`Claim 1 Of The ’497 Patent Requires “Digital Identity Data” That
`“Identifies an Owner” of the Device And That Further “Comprises a Name
`of the Owner.” ..........................................................................................................8
`
`D.
`
`Facts Concerning Plaintiff’s Allegations and The Accused Products. ....................9
`
`II.
`
`III.
`
`LEGAL STANDARD ........................................................................................................12
`
`ARGUMENT .....................................................................................................................12
`
`A.
`
` is a Number Generated by a
`There is No Genuine Dispute That
`Random Number Generator—Not an “Alpha-Numeric Value,” as Required
`by Claims 1, 3, 4, and 12 of the ’497 Patent and Claim 7 of the ’008 Patent.
`................................................................................................................................12
`
`1.
`
`2.
`
`3.
`
` is a Number Generated By a Random
`It is Undisputed That
`Number Generator—Not An “Alpha-Numeric Value.”.............................13
`
` Cannot Satisfy The Claimed “Microprocessor Identity” That
`“Is an Alpha-Numeric Value” Because Plaintiff Distinguished An
`“Alpha-Numeric Value” From A Number Generated By a Random
`Number Generator. ....................................................................................14
`
` is Not an “Alpha-Numeric Value” Merely Because an
`Engineer Can Express it in Hexadecimal Form. ........................................15
`
`B.
`
`The Alleged “Digital Identity Data” That Plaintiff Accuses At Best
`Identifies A User—Not An “owner,” As Required By The Asserted Claims.
`................................................................................................................................17
`
`1.
`
`Plaintiff Cannot Rely on “Digital Identity Data” That Identifies a
`User To Satisfy The Asserted Claims’ Requirement of “Digital
`Identity Data” That “Identifies an Owner” of the Device. .........................18
`
`i
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`

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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 3 of 38
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`2.
`
`The Alleged “Digital Identity Data” That Plaintiff Relies On
`Merely Identifies A User—Not an Owner—Just Like The Prior Art
`That Plaintiff Distinguished During Prosecution and in the IPRs. ............19
`a.
`Like Gullman’s Fingerprint Images and Templates, the
`Accused Products’ Face ID Images/Templates and Touch
`ID Images/Templates Do Not Identify An Owner of The
`Device. ...........................................................................................20
`
`b.
`
`c.
`
` Do Not Identify An
`Passcodes and the
`Owner of the Device. .....................................................................22
`
`The Apple ID and Name Data Associated with Apple ID,
`the Health App, Medical ID, and My Card Do Not Identify
`An Owner of the Device. ...............................................................24
`
`3.
`
`Plaintiff Cannot Rely On A Person’s Ability To Link A Device To
`A Person To Establish That The Alleged “Digital Identity Data”
`“Identifies An Owner” of the Device. ........................................................26
`
`C.
`
`, Face ID Images, Face ID Templates, Touch
`The Passcode,
`ID Images, And Touch ID Templates Are Not “Digital Identity Data” That
`“Identifies an Owner” and That Further Comprises a “Name of the Owner,”
`as Required By Claims 1, 3, 4, And 12 Of The ʼ497 Patent. .................................28
`
`1.
`
`2.
`
`Claims 1, 3, 4, and 12 of the ʼ497 Patent Require the Same
`Claimed “Digital Identity Data” To “Identif[y] the Owner” And To
`“Comprise[] a Name of the Owner.” .........................................................29
`
`, Face ID
`Plaintiff Concedes That The Passcode,
`Images, Face ID Templates, Touch ID Images, and Touch ID
`Templates Do Not Comprise a “Name of the Owner.” .............................30
`
`CONCLUSION ..................................................................................................................31
`
`IV.
`
`
`ii
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 4 of 38
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`
`
`
`Cases
`
`Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
` 239 F.3d 1343 (Fed. Cir. 2001).................................................................................... 1, 13
`
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
` 713 F.3d 1090 (Fed. Cir. 2013)........................................................................................ 13
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008)......................................................................................... 15
`
`Cross Med. Prod., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005)......................................................................................... 18
`
`Data Engine Techs. LLC v. Google LLC,
` 10 F.4th 1375 (Fed. Cir. 2021) ......................................................................................... 15
`
`Hewlett–Packard Co. v. Bausch & Lomb, Inc.,
` 909 F.2d 1464 (Fed. Cir. 1990)........................................................................................ 18
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
` 475 U.S. 574 (1986) ......................................................................................................... 12
`
`Netword, LLC v. Centraal Corp.,
`242 F.3d 1347 (Fed. Cir. 2001)......................................................................................... 12
`
`Pfizer, Inc. v. Teva Pharms., USA, Inc.,
`429 F.3d 1364 (Fed. Cir. 2005)......................................................................................... 12
`
`Technology Properties Ltd. LLC v. Huawei Technologies Co.,
`849 F.3d 1349 (Fed. Cir. 2017)......................................................................................... 15
`
`Rules
`
`Fed. R. Civ. P. 56(a) ..................................................................................................................... 11
`
`
`
`
`
`
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`
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`iii
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 5 of 38
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`TABLE OF EXHIBITS
`
`Description
`Expert Report of Professor Stephen B. Wicker, Ph.D., regarding Invalidity of
`U.S. Patent Nos. 7,493,497, 8,020,008, 8,489,895, and 9,507,948, dated
`November 29, 2023 (Excerpted) (“Wicker Opening Report”)
`
`Rebuttal Expert Report of Professor Stephen B. Wicker, Ph.D., regarding
`Noninfringement of U.S. Patent Nos. 7,493,497, 8,020,008, 8,489,895, and
`9,507,948, dated January 10, 2024 (Excerpted) (“Wicker Rebuttal Report”)
`
`CV of Professor Stephen B. Wicker, Ph.D.
`’497 Prosecution History, Office Action Response, March 1, 2007 (“Mar. ’497
`Prosecution History, Office Action Response, March 1, 2007 (“Mar. 1, 2007
`Office Action Response”)
`Expert Report of Samuel Russ, Ph.D., dated November 29, 2023 (Excerpted)
`(“Russ Opening Report”)
`IPR2022-00170 (‘497), Expert Declaration of Samuel Russ (Ex. 2001) (“Russ
`IPR Declaration”)
`’497 Prosecution History, Office Action, December 1, 2006 (“Dec. 1, 2006
`Office Action”)
`U.S. Patent No 5,280,527 (“Gullman”)
`Deposition Transcript of Samuel H. Russ, Ph.D., taken on January 24, 2024
`(Excerpted) (“Russ Deposition Transcript”)
`Deposition Transcript of Timothy Paaske, taken on May 4, 2023 (Excerpted)
`(“Paaske May 2023 Deposition Transcript”)
`
`U.S. Patent No. 5,623,687 (“Jones”)
`
`Rebuttal Expert Report of Samuel Russ, Ph.D., dated January 10, 2024
`(Excerpted) (“Russ Rebuttal Report”)
`
`How to create a new Apple ID (APL-IDENTITY_01929164)
`
` (APL-IDENTITY_01803812)
`, dated April 29, 2018 (APL-
`
`IDENTITY_00677217)
`U.S. Patent No. 5,237,610 (“Gammie”)
`
`Exhibit
`
`A
`
`B
`
`C
`
`1
`
`2
`
`3
`
`4
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`5
`
`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`iv
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 6 of 38
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`Plaintiff’s infringement allegations far exceed the limited scope of its Asserted Patents.1
`
`
`
`Over the course of a lengthy prosecution, Plaintiff amended its claims to overcome several prior
`
`art rejections. Now, Plaintiff and its technical expert, Dr. Samuel Russ, advance infringement
`
`arguments that ignore those amendments and try to recapture what Plaintiff gave up to achieve
`
`allowance. But it is well-settled law that a patent claim “may not, like a nose of wax, be twisted
`
`one way to avoid anticipation and another to find infringement.” Amazon.com, Inc. v.
`
`Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (citations and internal quotation
`
`marks omitted). There can be no dispute that Apple’s Accused Products do not infringe under the
`
`scope of the claims that Plaintiff advanced to procure allowance. This Court should reject
`
`Plaintiff’s attempt to read its claims on features in Apple’s products that Plaintiff distinguished to
`
`overcome the prior art.
`
`First, during prosecution, Plaintiff narrowed the asserted claims of the ’497 patent to
`
`require the claimed “microprocessor identity” to be “an alpha-numeric value”—i.e., a value that
`
`includes both numbers and alpha characters (A-Z or a-z). ’497 patent, claim 1; Ex. 1 [Mar. 1,
`
`2007 Office Action Response] at 2 (amending claims to include “alpha-numeric value”), 6
`
`(explaining that “an alpha-numeric value” must include “at least one numeric character (e.g., 0-9)
`
`and at least one alpha character (e.g., A-Z or a-z).”). Plaintiff made that amendment to distinguish
`
`a prior art reference that disclosed a microprocessor identity that was generated by a random
`
`number generator. Plaintiff argued that the amendment overcame the prior art because “[c]learly
`
`a number generated using a random number generator cannot include alpha characters.” Id. at 9;
`
`see also id. (“[A] number cannot be equated to an alpha character as the number is not part of the
`
`
`1 U.S. Patent Nos. 7,493,497 (the “’497 patent”), 8,020,008 (the “’008 patent”), 8,489,895 (the
`“’895 patent”), 9,507,948 (the “’948 patent) (collectively, the “Asserted Patents).
`1
`
`
`
`

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`alphabet.”). There is no dispute that “
`
`” in Apple’s products is a random number generated
`
`by a random number generator that lacks any alpha characters. It therefore cannot satisfy the
`
`claimed “microprocessor identity” that must be “an alpha-numeric value.” Ex. 2 [Russ Open. Rpt.]
`
`¶ 527. Plaintiff’s allegation that
`
` satisfies the claimed “microprocessor identity” cannot stand
`
`in light of its disclaimer during prosecution and, accordingly, summary judgment of
`
`noninfringement is warranted as to claims 1, 3, 4, and 12 of the ’497 patent.
`
`Second, Plaintiff narrowed its claims during prosecution to recite “digital identity data”
`
`that identifies an “owner” of the device rather than a mere “user” of the device. Ex. 1 [Mar. 1,
`
`2007 Office Action Response] at 2. Indeed, Plaintiff has argued that prior art references that
`
`disclose a single user storing a password or biometric data (e.g., a fingerprint) on a device does
`
`not disclose identifying an “owner.” Id. at 8; Ex. 3 [Russ IPR Decl.] ¶ 77. But expert discovery
`
`has exposed that Plaintiff now seeks to impermissibly reclaim that subject matter, alleging that the
`
`mere use of passcodes, biometric information, and user data in Apple’s products demonstrates
`
`“digital identity data” that identifies an” owner.” Ex. 2 [Russ Open. Rpt.] ¶ 457. But there can be
`
`no dispute that the accused passcode, biometric information, and user data in Apple’s products
`
`merely identifies a user of the device—not the owner. Accordingly, because Plaintiff
`
`distinguished data that identifies a mere “user” from data that identifies an “owner” to overcome
`
`the prior art, and because nothing in Apple’s products links the alleged “digital identity data” to
`
`the owner of the device, summary judgment of noninfringement is warranted for all asserted claims
`
`of all Asserted Patents.
`
`Third, Plaintiff amended the asserted claims of the ’497 patent to require that the “digital
`
`identity data” “comprises a name of the owner.” Ex. 1 [Mar. 1, 2007 Office Action Response] at
`
`2. Now, Plaintiff alleges that data that its own expert concedes does not comprise a name at all is
`
`2
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`

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`nevertheless “digital identity data” that “comprises a name of the owner.” Ex. 2 [Russ Open. Rpt.]
`
`¶ 457. Accordingly, the Court should grant summary judgment as to Plaintiff’s theories that
`
`implicate alleged “digital identity data” that undisputably does not “comprise[] a name of the
`
`owner” for claims 1, 3, 4, and 12 of the ’497 patent.
`
`Apple respectfully submits that the Court should hold Plaintiff to the disclaimers it made
`
`before the Patent Office to achieve allowance, and grant Apple’s motion for summary judgment
`
`of noninfringement.
`
`I.
`
`STATEMENT OF UNDISPUTED FACTS
`
`Plaintiff asserts claims 1, 3, 4, and 12 of the ’497 patent, claims 1, 2, 3, 6, and 7 of the ’008
`
`patent, claim 5 of the ’895 patent, and claim 1 of the ’948 patent (collectively the “Asserted
`
`Claims”) (independent claims bolded). Ex. 2 [Russ Open. Rpt.] ¶ 1. All of the Asserted Claims
`
`recite a “microprocessor identity” and “digital identity data.” See ’497 patent, claim 1; ’008 patent,
`
`claim 1; ’895 patent, claim 5; ’948 patent, claim 1.
`
`Independent claim 1 of the ʼ497 patent and dependent claim 7 of the ʼ008 patent each
`
`further require a “microprocessor identity” that “is an alpha-numeric value.” ’497 patent, claim 1;
`
`’008 patent, claim 7. All of the Asserted Claims require “digital identity data” that “identifies an
`
`owner” of the device. ’497 patent, claim 1; ’008 patent, claim 1; ’895 patent, claim 5; ’948 patent,
`
`claim 1. And independent claim 1 of the ʼ497 patent further requires that “the digital identity data”
`
`that “identifies an owner” of the device further “comprises a name of the owner.” ’497 patent at
`
`claim 1. The following table summarizes the requirements of the Asserted Claims relevant to this
`
`motion:
`
`3
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`

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`Claim Limitation
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`Asserted Claims
`
`“microprocessor identity” that “is an alpha-
`numeric value”
`
`’ 497 patent, claims 1, 3, 4, and 12
`
`’008 patent, claim 7
`
`“digital identity data” that “identifies an
`owner” of the device
`
`All asserted claims
`
`“digital identity data” that “identifies an
`owner” of
`the device and
`that further
`“comprises a name of the owner”
`
`’497 patent, claims 1, 3, 4, and 12
`
`
`
`
`
`A.
`
`Independent Claim 1 Of The ʼ497 Patent And Claim 7 Of The ’008 Patent
`Require A “Microprocessor Identity” That “Is An Alpha-Numeric Value”—
`Not A Numeric Value Generated By A Random Number Generator.
`During prosecution, Plaintiff2 amended the Asserted Claims of the ʼ497 patent to require
`
`that the claimed “microprocessor identity” be “an alpha-numeric value.” Ex. 1 [Mar. 1, 2007
`
`Office Action Response] at 2. Plaintiff specifically added the “alpha-numeric” requirement to
`
`overcome prior art that taught using a numeric microprocessor identity generated by a random
`
`number generator. Id. at 9.
`
`In particular, the Examiner determined that U.S. Patent No. 5,237,610 to Gammie et al.
`
`(“Gammie”) disclosed a “microprocessor identity” in the form of a “serial number.” Ex. 4 [Dec.
`
`1, 2006 Office Action] at 3 (“At the time the invention was made, it would have been obvious to
`
`a person of ordinary skill in the art to encrypt the unique user data (key) using the unique device
`
`
`2 Following prosecution of the ’497 patent, the applicant, Mr. Aureliano Tan, assigned the patent
`to Integrated Information Solutions. ’497 patent at (73). Plaintiff Identity Security LLC is the
`successor-in-interest to Integrated Information Solutions. For brevity, this brief refers to the
`applicant simply as “Plaintiff.”
`
`4
`
`

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`data (serial number) as in Gammie in the system of Jones.”), 5 (Gammie “discloses the encryption
`
`of person information (key) using serial number . . . .”).
`
`To overcome that rejection, Plaintiff narrowed the claims to require that “the
`
`microprocessor identity is an alpha-numeric value,” and explained that “an alpha-numeric value”
`
`must include “at least one numeric character (e.g., 0-9) and at least one alpha character (e.g., A-
`
`Z or a-z).” Ex. 1 [Mar. 1, 2007 Office Action Response] at 6.3 Plaintiff further argued that
`
`Gammie’s serial number could not be considered an alpha-numeric value because it is a number
`
`generated by a random number generator: “Gammie only teaches using serial numbers, which are
`
`preferably generated by a random number generator . . . Clearly a number generated using a
`
`random number generator cannot include alpha characters, as alpha characters are not numeric.”
`
`Ex. 1 [Mar. 1, 2007 Office Action Response] at 9.
`
`B.
`
`All Asserted Claims Require “Digital Identity Data” That “Identifies An
`Owner” Of The Device.
`Each Asserted Claim recites “digital identity data” that “identifies an owner” of the device.
`
`See ’497 patent at claim 1; ’008 patent at claim 1; ’895 patent at claim 5; ’948 patent at claim 1.
`
`During prosecution and in subsequent inter partes review (“IPR”) proceedings, Plaintiff
`
`distinguished “digital identity data” that merely identifies a user from “digital identity data” that
`
`identifies an owner. In particular, on Dec. 1, 2006, the Examiner rejected pending claims that
`
`recited “the digital identity data uniquely identifies a user of the digital identity device” in view
`
`of prior art that disclosed “digital identity data [that] uniquely identifies a user . . . .” Ex. 4 [Dec.
`
`1, 2006 Office Action] at 2-3 (“Jones discloses further digital identity data (password part 301 Fig.
`
`2), wherein the digital identity uniquely identifies a user of the digital identity device”). To
`
`overcome that rejection, the applicant amended the claims to replace “user” with “owner”:
`
`
`3 Unless otherwise indicated, all emphasis is added.
`
`5
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`

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`Ex. 1 [Mar. 1, 2007 Office Action Response] at 2.
`
`Plaintiff argued that the prior art cited by the Examiner—U.S. Patent Nos. 5,623,637
`
`(“Jones”) and 5,237,610 (“Gammie”)—“only teach users and are completely silent with respect to
`
`any embodiment in which user is the owner.” Id. at 8.
`
`Plaintiff’s expert, Dr. Russ, agreed that Plaintiff distinguished between an “owner” and a
`
`“user” to achieve allowance during prosecution:
`
`In view of the prosecution history of the ʼ497 Patent, a PHOSITA would understand that
`the applicant argued and relied on the distinction between ‘owner’ and ‘users’ to
`successfully overcome the initial rejection based on Jones. A PHOSITA would
`understand this to only further confirm the already recognized distinction between those
`terms.
`
`Ex. 3 [Russ ʼ497 IPR Decl.] ¶ 72; see also id. ¶ 74 (“Accordingly, a PHOSITA would understand
`
`that the applicant also relied on the distinction between ‘owner’ and ‘user’ to achieve allowance
`
`of the claims of the ʼ008 Patent.”).
`
`Plaintiff doubled down on the same distinction between an owner versus a user during IPR
`
`proceedings. In particular, to distinguish the prior art at issue in the IPR (U.S. Patent No. 5,280,527
`
`to Gullman et al. (“Gullman”)), Dr. Russ stated that “[t]he Challenged Patents distinguish between
`
`an ‘owner’ and ‘user’” and that “the plain and ordinary meaning of ‘owner’ and ‘user’ are different
`
`meanings.” Ex. 3 [Russ ʼ497 IPR Decl.] ¶¶ 66-67. Dr. Russ further explained that an “owner” has
`
`“an ownership interest in the device” whereas a “user” is merely “one that uses a device.” Id. ¶¶
`
`67-68. As Dr. Russ explained:
`
`In the context of the Challenged Patents and their claims, an
`“owner” would be understood to have an ownership interest in a
`device. Conversely, a “user” is one that uses a device. For
`
`6
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`
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`that rely on
`terminals
`to payment
`example, with respect
`encryption/decryption schemes, a store or bank may own a payment
`terminal (“ATM”) but the terminal itself will be used by people that
`do not own the terminal.
`
`It is my opinion that a PHOSITA would have recognized and been
`familiar with this plain distinction and there is nothing in the
`Challenged Patents that would alter that understanding.
`
`Id.¶¶ 67-68.
`
`There is no dispute that Gullman discloses enrolling a person’s biometric samples—
`
`including a person’s fingerprints—and storing them as templates. Ex. 5 [Gullman] at 5:42-49,
`
`5:58-60, 5:63-65; Ex. 6 [Russ Dep. Tr.] at 127:11-128:1 (“Q. Gullman discloses enrolling
`
`biometric samples which can include fingerprints, correct? A. I believe that’s correct, yes. Q.
`
`Gullman discloses permanently storing those biometric samples as templates, correct? A. Yes, it
`
`says -- let’s see, Column 5, Line 58, during the enroll mode, one or more preferably several
`
`biometric samples are obtained and permanently stored as templates. Q. Gullman discloses
`
`comparing biometric data from a user to those stored templates to identify whether the person
`
`entering the sample is a person whose templates are stored, correct? A. Yes, it performs a
`
`comparison and calculates a correlation factor.”).
`
`Nevertheless, Dr. Russ argued that the enrollment of a person’s fingerprint was not
`
`sufficient to show “digital identity data” that “identifies an owner.” In particular, Dr. Russ argued
`
`that “[w]hile Gullman repeatedly references ‘users’ of his disclosed system,” Gullman is “entirely
`
`silent on the issue of ownership.” Ex. 3 [Russ ’497 IPR Decl.] ¶ 77. Dr. Russ further explained
`
`that because, for example, Gullman does not disclose a user registering as an owner during
`
`enrollment or verifying a user as the owner during an authorization process, Gullman does not
`
`disclose digital identity data that identifies an owner. Ex. 3 [Russ ʼ497 IPR Decl.] ¶ 79 (“A
`
`PHOSITA would also not understand Gullman to teach that the users somehow ‘establish’
`
`7
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`ownership. For example, in addition to there being no disclosure relating to ownership, there is
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`also no discussion in Gullman about the user registering as the owner of the biometric security
`
`apparatus during enrollment, or the biometric security apparatus ‘establishing’ ownership by, for
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`example, specifically verifying the user as the “owner” of the device as part of the authorization
`
`process.”).
`
`Consistent with that distinction, Dr. Russ admitted at his deposition that an “owner” is
`
`different from a “user.” Ex. 6 [Russ Dep Tr.] at 143:10-15 (“Q. Now, the asserted patents
`
`distinguish between an owner and a user, correct? A. That is correct. Q. The plain and ordinary
`
`meaning of owner and user are different meanings, correct? A. An owner and a user are different,
`
`yes.”).
`
`C.
`
`Claim 1 Of The ’497 Patent Requires “Digital Identity Data” That “Identifies
`An Owner” Of The Device And That Further “Comprises A Name Of The
`Owner.”
`As explained above, all of the Asserted Claims require “digital identity data” that
`
`“identifies an owner” of the device. See ’497 patent at claim 1; ’008 patent at claim 1; ’895 patent
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`at claim 5; ’948 patent at claim 1. Independent claim 1 of the ʼ497 patent, however, further requires
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`that “the digital identity data”—i.e., the same “digital identity data” that “identifies an owner” of
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`the device—also “comprises a name of the owner.” ’497 patent at claim 1. Dr. Russ confirmed
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`that the “same digital identity data” needs to both identify the owner and comprise a name of the
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`owner. Ex. 6 [Russ Dep Tr.] at 179:17-25 (“Q. What is your understanding of how antecedent
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`basis applies to the digital identity data of Claim 1? A. Well, I think it means the same digital
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`identity data needs to be bound and needs to comprise a name of the owner and it needs to identify
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`an owner.”).
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`8
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 14 of 38
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`FILED UNDER SEAL – CONFIDENTIAL –ATTORNEYS’ EYES ONLY
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`Facts Concerning Plaintiff’s Allegations And The Accused Products.
`D.
`Plaintiff alleges that certain iPhones, iPads, and Apple Watches (the “Accused Products”)
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`that contain a subcomponent called the “Secure Enclave” infringe the Asserted Claims. Ex. 2
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`[Russ Open. Rpt.] ¶¶ 41-46.
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`Plaintiff alleges that the “
`
`”4—a random number stored in the Secure Enclave—
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`satisfies the claimed “microprocessor identity.” Ex. 2 [Russ Open. Rpt.] ¶ 426. It is undisputed
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`that the
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` stored in the Secure Enclave in the Accused Products is a number generated by a
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`random number generator. Ex. 6 [Russ Dep. Tr.] at 196:20-23 (“Q. In all of the accused products,
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` values are generated by a random number generator, correct? A. That -- that is my
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`recollection, yes.”); Ex. 7 [Paaske May 2023 Dep. Tr.] at 92:6-15 (“During the generation of
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`,
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` comes from a random number generator, and at its core, the random number
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`comes from ring oscillators and is really what you’re generating there at the time of generation of
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` . . . the random number generator is producing a series of zeros and ones and that’s -- that’s
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`what
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` is as far as in its fundamental form.”).
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`Plaintiff further alleges that the Secure Enclave encrypts “digital identity data” in an
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`infringing manner when users of an Accused Product input a passcode or use Apple’s Face ID and
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`Touch ID technology. See Ex. 2 [Russ Open. Rpt., Section VII]. Plaintiff alleges that each of
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`eleven different forms of data used in the Accused Products satisfies the claimed “digital identity
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`data”: (1) a passcode; (2) a random value called the “
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`”; (3) Face ID images; (4)
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`Face ID templates; (5) Touch ID images; (6) Touch ID templates; (7) an Apple ID; (8) name data
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`associated with Apple ID; (9) name data associated with the My Card app; (10) name data
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`4 For certain products, Plaintiff also alleges that the
` is the claimed “microprocessor
`identity.” Ex. 2 [Russ Open. Rpt.] ¶ 426. The
` is an obfuscated form of the
`. Id.
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`9
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 15 of 38
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`associated with the Health app; and (11) name data associated with the Medical ID app. Ex. 2
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`[Russ Open. Rpt.] ¶ 457. Each form of data is described in more detail below.
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`The passcode and
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`. The passcode is chosen by the user of an Accused
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`Product and can be used to unlock the device. Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 115;
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`Ex. 2 [Russ Open. Rpt.] ¶ 121.
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`Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 117; Ex. 2 [Russ Open. Rpt.] ¶ 312.
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`
`
`
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`
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`.6
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`
`
`
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` Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 120.
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`Face ID images and templates. Face ID is a feature that allows a user to unlock certain
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`of the Accused Products using images of the user’s face. Wicker Decl. Ex. B [Wicker Rebut. Rpt.]
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`¶ 192; Ex. 2 [Russ Open. Rpt.] ¶ 68. At a high level, an infrared sensor captures images of the
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`user’s face, those images undergo extensive processing, and the device generates a “template”—a
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`mathematical representation of the face images. Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 240;
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`Ex. 2 [Russ Open. Rpt.] ¶ 245. Specifically, the Face ID template is a series of vectors of numbers
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`output from complex processing involving a “neural network.” Wicker Decl. Ex. B [Wicker
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`Rebut. Rpt.] ¶¶ 239-240; Ex. 2 [Russ Open. Rpt.] ¶ 246. The images of the user’s face cannot be
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`recreated from the Face ID templates. Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 241.
`
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`5 Although not relevant to this motion, a hashing algorithm is a one-way function that irreversibly
`converts input data of various lengths into an output of a fixed length. Wicker Decl. Ex. A [Wicker
`Open. Rpt.] ¶ 97.
`6 Dr. Russ calls the
`181:10.
`
`.” Ex. 6 [Russ Dep. Tr.] at 180:23-
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`10
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 16 of 38
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`Touch ID images and templates. Touch ID is a feature that allows a user to unlock certain
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`of the Accused Products using images of the user’s fingerprint. Wicker Decl. Ex. B [Wicker
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`Rebut. Rpt.] ¶ 192; Ex. 2 [Russ Open. Rpt.] ¶ 68. At a high level, an image sensor captures images
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`of the user’s fingerprint, those images undergo extensive processing, and the device generates a
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`“template”—a mathematical representation of the fingerprint. Wicker Decl. Ex. B [Wicker Rebut.
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`Rpt.] ¶ 210; Ex. 2 [Russ Open. Rpt.] ¶ 245. Specifically, the Touch ID template is a graph or set
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`of graphs that correspond to the direction of a user’s fingerprint ridges. Wicker Decl. Ex. B
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`[Wicker Rebut. Rpt.] ¶ 210; Ex. 2 [Russ Open. Rpt.] ¶ 246. The images of the user’s fingerprint
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`cannot be recreated from the Touch ID templates. Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶ 210.
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`Apple ID and alleged “name” data. An Apple ID is generally an email address associated
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`with an Apple account that provides a user with access to various services like Apple’s “iCloud.”
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`See Ex. 10 [APL-IDENTITY_01929164] (“With your Apple ID, you can access all Apple devices
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`and services — such as iCloud. . . . The email address that you provide will be your new Apple
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`ID.”); Ex. 2 [Russ Open. Rpt.] ¶ 244.
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`Apple ID and certain Apple applications, including the My Card app, the Health app, and
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`the Medical ID app, each have data fields in which a user can enter text. Ex. 2 [Russ Open. Rpt.]
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`¶ 244. A user can choose to enter his or her name, but can also enter another person’s name, a
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`fictional name, or text that is not a name at all. See Wicker Decl. Ex. B [Wicker Rebut. Rpt.] ¶¶
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`303-304 (“As
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` explained, the Apple ID functionality does not require a user to input his
`
`or her name. And Apple does not verify whether any purported input name is real or fake. For
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`example, a user could input “Mickey Mouse” into the name fields when setting up Apple ID. . . .
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`The My Card, Health, and Medical ID functionalities similarly do not require a user to input his
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`11
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`Case 1:22-cv-00058-ADA Document 176 Filed 02/23/24 Page 17 of 38
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`or her name. And Apple similarly does not verify whether any purported input name is real or
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`fake.”).
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`II.
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`LEGAL STANDARD
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`Summary judgment is warranted where “the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). “Where the reco