Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 1 of 38
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`
`
`
`Civil Action No. 1:22-CV-00058-ADA
`
`Jury Trial Demanded
`
`IDENTITY SECURITY LLC,
`
`
`
`v.
`
`APPLE INC.
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`PLAINTIFF IDENTITY SECURITY LLC’S OPPOSITION TO DEFENDANT APPLE
`INC.’S MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 2 of 38
`
`
`
`TABLE OF CONTENTS
`
`Relevant Legal Standards ....................................................................................................1
`
` values are
`Material factual disputes preclude summary judgment that
`not alpha-numeric. ...............................................................................................................2
`
`A.
`
`B.
`
`C.
`
` are alpha-numeric because they include alpha and numeric
`characters, so Apple is wrong that it is “undisputed” that
` “does
`not include alpha characters.” ..................................................................................3
`
`Apple has not shown a clear and unmistakable disclaimer—an issue
`Apple waived—let alone one that would render
` somehow not
`alpha-numeric. .........................................................................................................6
`
`, like all data, is stored
`Apple cannot evade infringement because
`in binary. ..................................................................................................................9
`
`III.
`
`A reasonable jury could find that the alleged digital identity data “identifies an
`owner” of the device. .........................................................................................................10
`
`A.
`
`B.
`
`C.
`
`Apple cannot assert as an undisputed fact that the asserted “digital
`identity data” “identifies a user—not an owner” when it admits that “a
`number” of its own documents “use the term ‘owner’” to describe
`whom Apple insists is “not an owner.” ..................................................................11
`
`There is well more than enough evidence for a reasonable jury to find
`that the asserted “digital identity data … identifies an owner” of the
`device. ....................................................................................................................12
`
`Apple’s attempts to craft a new claim construction to save itself from
`infringement fail. ....................................................................................................19
`
`IV.
`
`Claim 1 of the ’497 Patent does not require that every part of the digital
`identity data is “a name,” but only that the digital identity data as a whole
`includes a name. .................................................................................................................28
`
`
`
`
`
`
`
`i
`
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 3 of 38
`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 3 of 38
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`TABLE OF EXHIBITS
`
`Exhibit
`
`U.S. Patent7,493,497
`
`
`U.S. Patent8,489,895
`
`APL-IDENTITY 00751924
`
`
`
`30(b)(6) Testimony of Tim Paaske, dated October 3, 2023
`Specification (APL-IDENTITY 00624090
`
`Expert Report of Prof. Stephen B. Wicker, Ph.D., dated November29, 2023
`Specification (APL-IDENTITY 00707705
`
`Specification
`
`
`June 2017 Emails (APL-IDENTITY 00702420
`
`APL IDENTITY01787281
`
`
`APL-IDENTITY 00598353
`
`
`
`
`APL-IDENTITY 00598436
`
`
`APL-IDENTITY 00598481
`
`
`APL-IDENTITY 00597677
`
`
`APL-IDENTITY 00598088
`
`
`APL-IDENTITY 00599278
`
`
`APL-IDENTITY 00599303
`
`
`May 25, 2007, Final Rejection
`497 Patent File Histo
`
`
`
` SP|YOO|to)
`
` BINS)<pa]aaorlozigoA
`
`MM OO
`
`
`
`iOS Security (October 2014) (APL-IDENTITY 00728614
`Testimony of|
`, dated November 14, 2023
`APL-IDENTITY 01889869
`Apple Platform Security (May 2022)
`(APL-IDENTITY 01911473
`
`|(APL-IDENTITY 01889878)
`
`Testimony of Dr. Stephen Wicker, dated January 26, 2024
`
`
`
`
`
`
`
`
`
`Apple Platform Security (Fall 2019) (APL-IDENTITY 01868319
`
`(APL-IDENTITY_ 01916641)
`APL-IDENTITY 01869573)
`APL-IDENTITY 00745857
`
`EPR Declaration of Dr. Clifford Neuman
`
`
`
`
`
`ii
`
`
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 4 of 38
`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 4 of 38
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`
`
`[Exhibit|Description—“‘“‘“C;CS*S™COCOCOCOCOCOCSCSC‘“(‘(’NNC‘éO’
`
`Testimony of Dr. Samuel Russ, dated January
`
`24, 2024 1QQ_| Petition for Jnter Partes Review of U.S. Patent No. 7,493,497
`
`|'RR_| IPR Declaration of Dr. Clifford Neuman
`
`iil
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 5 of 38
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`3M Innovative Props. Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013)..................................................................................................6
`
`Abiomed, Inc. v. Maquet Cardiovascular LLC,
`566 F. Supp. 3d 59 (D. Mass. 2021) ..........................................................................................2
`
`Anderson v. Liberty Lobby, Inc.,
`477 U.S. 242 (1986) ...................................................................................................................1
`
`Apple, Inc. v. Qualcomm, Inc.,
`IPR2018-01315, Paper 26, 69-70 (P.T.A.B. Jan. 3, 2020) ......................................................25
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................1
`
`CliniComp Int’l, Inc. v. Cerner Corp.,
`No. 17-CV-02479, 2022 WL 16985003 (S.D. Cal. Nov. 15, 2022) ..........................................2
`
`Cordance Corp. v. Amazon.com, Inc.,
`658 F.3d 1330 (Fed. Cir. 2011)................................................................................................24
`
`Ecolab, Inc. v. FMC Corp.,
`569 F.3d 1335 (Fed. Cir. 2009)..................................................................................................8
`
`Elbex Video, Ltd. v. Sensormatic Elecs. Corp.,
`508 F.3d 1366 (Fed. Cir. 2007), amended on reh’g in irrelevant part, 366 F.
`App’x 154 (Fed. Cir. 2009) .......................................................................................................8
`
`Epistar Corp. v. Int’l Trade Comm’n,
`566 F.3d 1321 (Fed. Cir. 2009)..................................................................................................6
`
`Finalrod IP, LLC v. John Crane, Inc.,
`No. 7:15-CV-00097-ADA, 2019 WL 4061703 (W.D. Tex. May 30, 2019) .......................2, 20
`
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495 (Fed. Cir. 1997)..................................................................................................29
`
`Hilgraeve Corp. v. McAfee Assocs., Inc.,
`224 F.3d 1349 (Fed. Cir. 2000)................................................................................................26
`
`Hill-Rom Svcs., Inc. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014)................................................................................................22
`
`iv
`
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 6 of 38
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`
`
`Maxell, Ltd. v. Amperex Tech. Ltd.,
`No. W-21-CV-00347-ADA, 2022 WL 16858824 (W.D. Tex. Nov. 10, 2022) .........................1
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................................1
`
`Regeneron Pharms., Inc. v. Merus N.V.,
`864 F.3d 1343 (Fed. Cir. 2017)................................................................................................29
`
`SanDisk Corp. v. Memorex Prod., Inc.,
`415 F.3d 1278 (Fed. Cir. 2005)................................................................................................29
`
`TASER Int’l, Inc. v. Karbon Arms, LLC,
`6 F. Supp. 3d 510 (D. Del. 2013) ...............................................................................................2
`
`Tate Access Floors, Inc. v. Interface Architectural Res., Inc.,
`279 F.3d 1357 (Fed. Cir. 2002)................................................................................................24
`
`Tolan v. Cotton,
`572 U.S. 650 (2014) .................................................................................................................12
`
`Regulations
`
`37 C.F.R. § 42.104 (2019) .............................................................................................................25
`
`
`
`
`v
`
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 7 of 38
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`
`
`Plaintiff Identity Security LLC (“Identity Security”) files this opposition to Defendant
`
`Apple Inc.’s (“Apple”) Motion for Summary Judgment of Noninfringement as to various claims of
`
`U.S. Patent Nos. 7,493,497 (the “’497 Patent,” Ex. A), 8,020,008 (the “’008 Patent,” Ex. B),
`
`8,489,895 (the “’895 Patent,” Ex. C), and 9,507,948 (the “’948 Patent,” Ex. D and collectively,
`
`the “Asserted Patents”). See Dkt. 169 (the “Motion”); Dkt. 176 (Public Version).
`
`The Motion targets claim limitations describing an “alpha-numeric” microprocessor
`
`identity, data that “identifies an owner,” and data that includes “a name.” Identity Security has
`
`developed significant evidence that Apple’s products infringe each of these limitations. So Apple
`
`instead seeks a bevy of vague and unsupported claim constructions, including through contrived
`
`“disclaimers,” that it argues Identity Security cannot meet. Apple declined to seek construction of
`
`any of the limitations it now highlights during claim construction in 2021 and 2022, or even as
`
`part of its granted request for supplemental claim construction in 2023. Its new requests are
`
`untimely and waived. Regardless, Apple’s arguments fail as a matter of law and fact. And Identity
`
`Security has offered ample evidence to raise a genuine issue of material fact for the jury to resolve
`
`under any view of the claim terms.
`
`I.
`
`Relevant Legal Standards
`
`A genuine issue of material fact exists when “a reasonable jury could return a verdict for
`
`the nonmoving party.” See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). The
`
`moving party has the initial burden of demonstrating the lack of a genuine issue of material fact.
`
`See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
`
`Disclaimer is a claim construction doctrine that represents one of “only two exceptions to
`
`the general rule that a term should be construed as having its plain-and-ordinary meaning.” Maxell,
`
`Ltd. v. Amperex Tech. Ltd., No. W-21-CV-00347-ADA, 2022 WL 16858824, at *5 (W.D. Tex.
`
`Nov. 10, 2022) (Markman order); Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
`
`1
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 8 of 38
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`
`
`(“The purpose of consulting the prosecution history in construing a claim is to exclude any
`
`interpretation that was disclaimed during prosecution.” (cleaned up)). “The Federal Circuit holds
`
`that an accused infringer waives any argument with respect to the construction of a claim term
`
`when they fail to raise that issue during the claim construction phase of a patent infringement
`
`action.” Finalrod IP, LLC v. John Crane, Inc., No. 7:15-CV-00097-ADA, 2019 WL 4061703, at
`
`*2 (W.D. Tex. May 30, 2019). Indeed, “[s]ound practical reasons counsel against construing
`
`additional terms based on claim construction arguments raised for the first time in summary
`
`judgment briefs.” CliniComp Int’l, Inc. v. Cerner Corp., No. 17-CV-02479, 2022 WL 16985003,
`
`at *9 (S.D. Cal. Nov. 15, 2022) (internal quotations omitted). Therefore, parties waive disclaimer
`
`arguments by failing to raise them during claim construction proceedings. See, e.g., Abiomed, Inc.
`
`v. Maquet Cardiovascular LLC, 566 F. Supp. 3d 59, 74 (D. Mass. 2021) (on summary judgment,
`
`finding party had “waived any contentions as to prosecution disclaimer that affect the construction
`
`of claims”); TASER Int’l, Inc. v. Karbon Arms, LLC, 6 F. Supp. 3d 510, 516 (D. Del. 2013) (“[I]t
`
`is too late to raise [disclaimer]” on summary judgment. “Prosecution disclaimer acts by limiting
`
`claim scope, something which should have been brought up during claim construction.”).
`
`II. Material factual disputes preclude summary judgment that
`alpha-numeric.
`
` values are not
`
`Apple first seeks a partial summary judgment of no infringement as to claims that require
`
`an alpha-numeric microprocessor identity. See ’497 Patent Claims 1, 3, 4, and 12; ’008 Patent
`
`Claim 7. This argument fails because a reasonable jury could conclude that
`
`, the asserted
`
`microprocessor identity, is an alpha-numeric value based on Apple documents showing that
`
`
`
`include both “alpha-” characters and “-numeric” characters. This disputed issue precludes
`
`summary judgment.
`
`2
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 9 of 38
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`
`
`A.
`
` are alpha-numeric because they include alpha and numeric characters, so
`Apple is wrong that it is “undisputed” that
` “does not include alpha characters.”
`
`Apple’s non-infringement argument relies on an assertion that “[i]t is undisputed that the
`
` stored in the Secure Enclave in the Accused Products is a number generated by a random
`
`number generator and does not include alpha characters.” Motion at 13. This is not an undisputed
`
`fact. And Apple is wrong because the evidence shows that
`
` is an alpha-numeric value
`
`including both “alpha-” and “-numeric” characters.
`
`By way of background, all accused products have a “
`
`” value. See Russ Opening
`
`Report (Ex. E) ¶ 219; Paaske 30(b)(6) Tr. (Ex. F) 40:6–7 (“[Y]es, each accused product has a
`
`
`
`value”); Motion at 9 (describing “the
`
` stored in the Secure Enclave in the Accused
`
`Products”).1 Some products store
`
` in an encrypted or obfuscated form called
`
`then decrypt
`
` to obtain
`
`. Russ Opening Report ¶ 427. Apple refers to
`
` and
`
` as a
`
`“
`
`.” Paaske May 4, 2023 Tr. (Ex. V) 202:18–20 (Q: “And just so I understand
`
`you correctly, ‘
`
`’ here is referring to
`
`?” A: “Yes.”).
`
` “is the device
`
`secret which encrypts/entangles all user data which needs to be kept secure.” Ex. G at 37.
`
` is alphanumeric because it is a hexadecimal value—i.e., a value comprised of
`
`numeric characters 0 through 9 and alpha characters a through f. Russ Opening Report ¶ 528. It is
`
`not contested or contestable that hexadecimal values are alpha-numeric, as they include both
`
`“alpha-” and “-numeric” characters. See Russ Opening Report (Ex. E) ¶¶ 527–37; Wicker Tr.
`
`(Ex. FF) 158:9–11 (“I agree that the hexadecimal representation of numbers involves both the use
`
`of letters and numbers and is, thus, alphanumeric.”); Wicker Opening Report (Ex. H) ¶¶ 884–85
`
`(“Crypto iButton comprises a microprocessor identity which is an alpha-numberic [sic] value. The
`
`
`1 Unless otherwise noted, citations to letter exhibits refer to those attached to this opposition;
`citations to numbered exhibits refer to those attached to the Motion.
`
`3
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`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 10 of 38
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`figure below shows an[sic] Crypto iButton ‘with registration number “1A1D2516,”’
`
`.... I
`
`understand from Mr. Bolanthat the Crypto iButton’s 64-bit registration number was represented
`
`as a hexadecimal value.”).
`
`There is ample evidence that Apple’s ii values are hexadecimalvalues and thus alpha-
`
`numeric. See Russ Opening Report (Ex. E) §{ 527-37 (detailing evidence; opining that the accused
`
`productssatisfy this limitation for ’497 Patent); id. at §§ 670—71 (same for ’008 Patent Claim 7).
`
`the Motion relies on ahi. Ex. 12, whichis a
`For example,
`specification for the memory that storesain the accused products. Russ Opening Report § 219.
`That specification shows that include alpha and numeric characters:
`
`
`
`Exhibit 12, at 17-18; see, e.g., Ex. lat 14-17; Ex. J at 10-12 (samefor other product generations).
`
`Apple engineers’ internal correspondencesimilarly confirms that is alpha-numeric.
`
`For example, engineer (and Apple corporate representative) Tum Paaske asked a colleague to
`
`provide “the corresponding|| value” for a given a. and the response again showsthat
`|| is alpha-numeric:
`
`
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 11 of 38
`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 11 of 38
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`The sameis true of the technical documentation for the cryptographic core that uses
`
`in encryption operations. See Russ Opening Report (Ex. E) § 532. For example, here is a command
`
`of (highlig
`highlighted), and once again it showsthat
`
`g
`
`values include numbersandletters:
`
`usin
`
`Ex. M at 17; see also, e.g., Ex. N at 19; Ex. O at 19; Ex. P at 20; Ex. Q at 23; Ex. R at 23; Ex. S at
`
`28 (same for other chip generations).
`
`Based on this evidence showingthat| include both alpha and numeric characters, a
`reasonable jury plainly could find that valuessatisfy the “alpha-numeric”claim limitations.
`
`Apple’s purported contrary citations don’t undercut this evidence—tlet alone so thoroughly that no
`
`reasonable jury could credit it. Dr. Russ’s quoted deposition response does not say that isa
`
`numberin the sense Apple uses the term (i.e., something including only numeric characters),” but
`
`merely and accurately agrees that ‘mi values are generated by a random number generator.”
`
`Motion at 9, 14 (quoting Ex. 6 at 196:20—23 (emphasis added)). Indeed, Apple’s citations to
`
`Exhibits 11—12 show that a random numbergenerator generates “random data”—whichhereis a
`
`hexadecimal and thus alpha-numerici value. And Mr. Paaske’s company-serving testimony
`that is a “random number”that is “a series of zeros and ones” is evidence that a jury can
`
`2 Of course, in some contexts one can refer to a hexadecimal value as a “number”in the
`sensethatit is a base-16 system. See Ex. 12 at 6 (“a prefix of Ox indicates a hexadecimal number
`....”). But if that is the sense in which Apple uses the term “number,”it is arguing thati isa
`particular type of “number” that includes alpha characters and numeric characters, which would
`makeit alpha-numericall the same. In other words, contrary to Apple, it would not be a value that
`“does not include alpha characters.” Motion at 13.
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 12 of 38
`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 12 of 38
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`weigh against the reams ofinternal Apple documents showing that is alpha-numeric.* Thus,
`
`the Court should deny summary judgment.
`
`B. Apple has not showna clear and unmistakable disclaimer—an issue Apple waived—
`let alone one that would renderJ somehow not alpha-numeric.
`
`Apple is wrongthat the applicant somehowdisclaimedthe full scope of alpha-numeric,let
`
`alone did so in a manner that would spare the accused products from infringing. As a preliminary
`
`matter and per the law outlined above, disclaimer is a claim construction argument that Apple
`
`waived by declining to raise it during claim construction proceedings.* Thus, the Court should
`
`reject Apple’s argumentas waived. To the extent the Court entertains Apple’s untimely disclaimer
`
`argument, Apple must “overcome a heavy presumption that claim terms carry their full ordinary
`
`and customary meaning, unless it can show the patentee expressly relinquished claim scope.”
`
`Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed. Cir. 2009). “[I]n order for
`
`prosecution disclaimer to attach,
`
`the disavowal must be both clear and unmistakable.” 3M
`
`Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013).
`
`Apple’s disclaimer arguments fall well short of that bar. Start with the argument that
`
`“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).’” Motion at 5 (quoting Ex. 1 (March 1,
`
`2007 Office Action Response) (added emphasis omitted)). This states what alphanumeric means—
`
`3
`
`It also independently fails for the reasons described in Section ILC,infra.
`
`4 Apple’s arguments are based exclusively on prosecution history available long before this
`
`case was filed. And Identity Security has pointed to
`as the accused alpha-numeric
`“microprocessoridentity” since its initial May 2021 complaint. See Dkt. 1-5 (497 Claim Chart
`identifying the Secure Enclave’s = and ‘
`”):; Paaske May 4, 2023
`
`
`Tr. 202:18—20 (Q: “And just so I understand you correctly,
`to| A: “Yes.”).
`
`’ here is referring
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 13 of 38
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`
`
`i.e., including “alpha-” characters and “-numeric” characters. To the extent this were a disclaimer,
`
`it would not help Apple, as the
`
` values do include alpha and numeric characters, as shown
`
`above. The same is true of Apple’s assertion that the shared specification “distinguish[es] between
`
`a microprocessor identity that is a ‘number’—i.e., no alpha characters—and a microprocessor
`
`identity that is ‘alpha-numeric’—i.e., numbers and alpha characters (e.g., A-Z or a-z).” Motion at
`
`15. That, again, is just what the term means. And, critically, a reasonable jury could find that
`
`
`
`includes alpha and numeric characters.
`
`Apple then turns to the applicant’s arguments related to the Gammie prior art. It points to
`
`the following statement: “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.” Motion at 5
`
`(quoting Ex. 1 (March 1, 2007 Office Action Response) (added emphasis omitted)). Here again
`
`there is no disclaimer. The applicant described that Gammie teaches “serial numbers” and stated
`
`that “a number generated using a random number generator cannot include alpha characters, as
`
`alpha characters are not numeric.” Id. (emphasis added); see Motion at 14 (“to distinguish
`
`Gammie’s disclosure of a serial number generated using a random number generator …”). This
`
`means no more than what it says: a “number generated using a random number generator,”
`
`standing alone, discloses only numeric characters, not alpha and numeric characters as needed to
`
`be alpha-numeric. This statement on its face says nothing about a randomly generated hexadecimal
`
`unique identifier (like Apple’s
`
`). This is no disclaimer, let alone one that could restrict the
`
`claims to exclude values that a reasonable jury could find include both letters and numbers.
`
`What is more, “[e]ven if an isolated statement appears to disclaim subject matter, the
`
`prosecution history as a whole may demonstrate that the patentee committed no clear and
`
`7
`
`

`

`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 14 of 38
`
`
`
`unmistakable disclaimer.” Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1342 (Fed. Cir. 2009) (citing
`
`Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1372–73 (Fed. Cir. 2007)), amended
`
`on reh’g in irrelevant part, 366 F. App’x 154 (Fed. Cir. 2009). Here, the examiner responded to
`
`the supposed “disclaimer” of an RNG-generated microprocessor identity by pointing to Cooper’s
`
`machine identification—another RNG-generated value. See May 25, 2007 Final Rejection (Ex. T),
`
`at 4 (“Cooper discloses the encryption of user data with a key derived from a machine id”); see
`
`Ex. U (U.S. Patent No. 5,689,560). That would make no sense if RNG-generated values had just
`
`been unequivocally disclaimed. Indeed, the applicant recognized that, in Cooper, the “process
`
`employed by machine identification generator 355 is any conventional pseudo-random number
`
`generator which receives as an input of binary characters, and produces as an output a plurality of
`
`pseudo random binary characters in accordance with a predefined algorithm.” July 25, 2007
`
`Applicant Remarks (Ex. W) at 3 (citing Ex. U 14:45–50). But still the applicant did not argue that
`
`Cooper failed to disclose alpha-numeric because it generated the “machine identification” via
`
`RNG. Instead, the examiner argued that the random machine identification disclosed alpha-
`
`numeric with “a clear ASCII string containing the machine identification.” See May 25, 2007 Final
`
`Rejection, at 4.5 And figure 10B in Cooper shows the RNG-generated Machine ID is alpha-
`
`numeric (highlighted showing the letter “X” and numbers including “1,” “2,” and “3”):
`
`
`
`The applicant did not argue that the fact that the “random number generator” generated the
`
`machine id rendered the machine id necessarily not alpha-numeric. Nor did the examiner. Quite
`
`the opposite, as the examiner argued, and the applicant did not contest, that Cooper disclosed an
`
`
`5 ASCII is a format that includes alphabetic and numeric characters, in addition to other
`items like symbols. See, e.g., https://www.ascii-code.com/ (last visited Mar. 7, 2024).
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`8
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`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 15 of 38
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`alpha-numeric machine id because the randomly generated binary data was an alpha-numeric
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`value. This is utterly inconsistent with Apple’s strained reading of a disclaimer relating to Gammie.
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`Even if all that were wrong, any disclaimer would not help Apple because whether
`
`
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`is a number in the relevant sense is a contested fact for the reasons explained above. Thus, even if
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`there were a disclaimer, disputed facts would prevent it from leading to summary judgment.
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`C. Apple cannot evade infringement because
`
`, like all data, is stored in binary.
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`Apple raises a red herring in arguing that
`
` is not alpha-numeric “because engineers
`
`can express it in hexadecimal form.” Motion at 15. This tries to reduce the significant evidence,
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`cited above, that
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` is alpha-numeric to merely that “an engineer could express
`
`’s numeric
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`value in hexadecimal in written correspondence.” Motion 16–17. To start, the point is not that
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`engineers could express
`
` in hexadecimal—as would be true of any value, including the serial
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`number in Gammie—it is that
`
` is a hexadecimal value that includes alpha and numeric
`
`characters per Apple’s own documents (and unlike any disclosure in Gammie, contra Motion at
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`16). That alone warrants denial of summary judgment.
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`Apple attempts to argue that
`
` is not alpha-numeric because it is stored in binary form
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`(0’s and 1’s) in an accused product. See Motion at 16–17. As Dr. Russ has explained, however,
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`this fails because “all values as stored in computers ultimately break down into binary storage (0’s
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`and 1’s). In Claim 1 of the ’497 Patent, the microprocessor identity is ‘etched into the PROM,’
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`which would also be formally in binary because PROMs store data in a binary fashion.” Russ
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`Opening Report ¶ 537; see also ’008 Patent Claim 1 (claiming a “memory … configured to store
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`… the microprocessor identity information”). Here, Identity Security can show through Apple’s
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`own documents, including key design specifications for the relevant functionality, that
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`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 16 of 38
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`values are alpha-numeric.6 It does not matter that
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` are digitally stored in binary, as a POSITA
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`would understand that all digital data in memory (like PROM) is binary and that this fact could
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`not render microprocessor identities not alpha-numeric. See Russ Opening Report ¶ 536 (Apple’s
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`argument “is inconsistent with how a POSITA would understand this claim language … [as] all
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`digital data is stored in binary. That does not preclude understanding that data as alphanumeric.”).
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`In fact, the applicant and examiner understood as much, as evidenced by the discussion of the
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`random binary machine id in Cooper, described above.
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`This nature of computing makes Apple’s misplaced analogy to hieroglyphics inapt. Written
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`language does not share the property of digital data in that digital data is necessarily stored in a
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`particular “language” of binary. This pleading is saved to any computer in “binary,” but no person
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`would think that the pleading would not satisfy a “written in English” claim limitation merely
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`because the digital copy of the file is stored in binary. The digital binary of this document is code
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`for the English language. So too a reasonably jury could find that the digital binary of Apple’s
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` values in each accused product is code for a hexadecimal and thus alpha-numeric
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`, as
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`shown by many documents above.
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`For these reasons, the Court should deny summary judgment as to “alpha-numeric.”
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`III. A reasonable jury could find that the alleged digital identity data “identifies an
`owner” of the device.
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`The Motion seeks summary judgment on the theory that the accused digital identity data
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`“at best identifies a user—not an owner, as required by the asserted claims.” Motion at 17. The
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`Court should deny summary judgment because whether the digital identity data at issue identifies
`
`
`If Apple’s reference to apparatus claims is meant to suggest that Identity Security cannot
`6
`show that the
` value in each of hundreds of millions of units of the accused products is
`alphanumeric, it is wrong. Identity Security plainly can show “what the [accused] device is”
`through Apple’s design documents for that device.
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`10
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`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 17 of 38
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`an owner is a quintessential factual question on which a reasonable jury could—and should—find
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`in Identity Security’s favor.
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`A. Apple cannot assert as an undisputed fact that the asserted “digital identity data”
`“identifies a user—not an owner” when it admits that “a number” of its own
`documents “use the term ‘owner’” to describe whom Apple insists is “not an owner.”
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`At the summary judgment stage and with its any-reasonable-jury standard, Apple has made
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`denying summary judgment on this ground quite straightforward. Apple’s argument hinges on
`
`claiming that it is an undisputed fact that the accused digital identity data “at best identifies a
`
`user—not an owner, as required by the asserted claims.” Motion at 17. Put differently, Apple seeks
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`summary judgment because Identity Security purportedly “cannot show that any of those pieces
`
`of data identify an owner as opposed to a mere user.” Motion at 18. But Apple admits that Identity
`
`Security offers “a number of Apple documents that use the term ‘owner’ to describe the primary
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`user of a device.” Motion at 28 (citing Russ Opening Report ¶¶ 461–69, 474–77).7 A reasonable
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`jury plainly could conclude that the asserted digital identity data identifies an “owner” when Apple
`
`admits that its own documents “use the term ‘owner’” to describe persons Apple must show are
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`indisputably “not an owner.” Id. at 18, 28. Summary judgment should be denied on that simple
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`basis alone.
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`Apple’s attempts to dodge its own documents that contradict a supposedly “undisputed
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`fact” fail. Apple suggests that none of the documents “state that any of the eleven accused forms
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`of ‘digital identity data’ themselves identify the owner of the device.” Motion at 28. But Apple
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`does not meaningfully dispute that the asserted digital identity data identifies at least a user of the
`
`
`7 A “number” is an understated description of the 13 paragraphs of detailed documentary
`analysis Apple cites from Dr. Russ’s infringement report showing Apple documents that, per
`Apple, “use the term ‘owner’ to describe the primary user of a device.” Motion at 28. Indeed,
`Apple undercounts the relevant evidence. See, e.g., Russ Report ¶ 491 (describing document
`saying that Face ID identifies a “Device Owner”).
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`11
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`Case 1:22-cv-00058-ADA Document 201 Filed 03/15/24 Page 18 of 38
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`device, and these Apple documents call the identified “user” an “owner.” Apple is merely offering
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`a contrary interpretation of this evidence, but on summary judgment the Court must view the
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`evidence in the light most favorable to Identity Security, not Apple. See Tolan v. Cotton, 572 U.S.
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`650, 657 (2014) (on summary judgment “a court must view the evidence in the light most favorable
`
`to the opposing party.” (cleaned up)). This competing interpretation means that summary judgment
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`cannot lie.
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`In any event, Apple’s spin on the documentary evidence blinks reality. See, e.g., Ex. X
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`(Apple document calling person identified by Face ID the “Device Owner”); Ex. Y (describing
`
`how “the current philosophy of [the Secure Enclave],” which processes the password, Touch ID,
`
`and Face ID functionality, “is to protect Owner assets, rather than other users’ assets”); Ex. Z at
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`601124 (describing deletion of “personal information,” such as the asser