Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 1 of 15
`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF TEXAS
`
`IDENTITY SECURITY LLC,
`
`APPLEINC..,
`
`Plaintiff,
`
`Defendant.
`
`AUSTIN DIVISION
`
`
`
`Civil Action No. 1:22:CV-00058-ADA
`
`JURY TRIAL DEMANDED
`
`Py
`
`DEFENDANT APPLE INC.’S MOTION FOR SUMMARY
`
`JUDGMENT OF NONINFRINGEMENT OF THE 7008 PATENT
`
`

`

`
`
` I.
`
`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 2 of 15
`
`
`
`TABLE OF CONTENTS
`
`BACKGROUND .................................................................................................................1
`
`A.
`
`B.
`
`Claim 1 Of The ’008 Patent Requires A Single Memory That Stores Both
`“digital identity data” And “microprocessor identity information.” ........................2
`
`Plaintiff Does Not Identify A Single Memory That Stores Both The
`Claimed “digital identity data” And “microprocessor identity information.”
`..................................................................................................................................2
`
`II.
`
`ARGUMENT .......................................................................................................................3
`
`A.
`
`The Accused “Digital Identity Data” Is Not Stored In The Same Memory
`As
`, As Required By Claim 1 of The ’008 Patent. ..........................................3
`
`1.
`
`Claim 1 of the ’008 Patent Requires A Single “Memory” That
`Stores Both “Digital Identity Data” And “Microprocessor Identity
`Information.” ................................................................................................4
`
` Forms Of Alleged
`Plaintiff Does Not Allege That
`Digital Identity Data Are Ever Stored In The Same Memory As
`. .................5
`
`Plaintiff’s Infringement Theory For The Phase 1 Output Also Fails to
`Identify Any Single “memory” That Stores Both The
` and
`. .......................................................................................................................6
`
`Plaintiff’s Backup Theory—That The “Memory” Limitation Can Be
`Satisfied By Multiple Different Memories—Is Premised On An IPR
`Argument That The PTAB Did Not Embrace And That Plaintiff’s Expert
`Disagreed With. .......................................................................................................9
`
`B.
`
`C.
`
`D.
`
`CONCLUSION ....................................................................................................................9
`
`III.
`
`
`i
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 3 of 15
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`
`Cases
`
`Dynacore Holdings Corp. v. U.S. Philips Corp.,
` 363 F.3d 1263 (Fed. Cir. 2004).......................................................................................... 8
`
`In re Varma,
`816 F.3d 1352 (Fed. Cir. 2016)........................................................................................... 4
`
`Iris Corp. Berhad v. United States,
` 147 Fed. Cl. 160 (2020) ..................................................................................................... 9
`
`Netlist, Inc. v. Micron Technology, Inc. et al,
` No. 2:22-cv-00203-JRG, D.I. 249 (E.D. Tex. Oct. 22, 2023) ........................................... 9
`
`Plano Encryption Techs., LLC v. Alkami, Inc.,
` No. 2:16-CV-1032-JRG, 2017 WL 3654122 (E.D. Tex. Aug. 23, 2017).......................... 4
`
`
`
`
`
`
`
`ii
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 4 of 15
`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 4 of 15
`
`TABLE OF EXHIBITS
`
`A
`
`|Exhibit[|Ciescrito
`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 (Highlighted) (“Wicker Reb. Rep.”’)
`
`
`
`
`
`B
`
`1
`
`2
`
`3
`
`4
`5
`
`6
`
`7
`
`CV of Stephen Wicker, Ph.D.
`
`Deposition Transcript of Samuel H. Russ, Ph.D., taken on January 24, 2024
`ce
`”
`Excerpted)
`(“Russ Dep. Tr.
`Expert Report of Samuel Russ, Ph.D., dated November 29, 2023 (Highlighted)
`“Russ Open. Rep.”
`
`’008 Prosecution History, Office Action, September 16, 2009
`
`008 Prosecution History, Applicant’s Amendment, December 16, 2009
`Scan of Selected Pages from Microsoft Press Computer Dictionary, Third
`Edition
`Expert Report of Dr. Eric Cole, dated April 30, 2024 (Highlighted) (“Cole Sub.
`Ri D t’’
`
`008 Prosecution History, Preliminary Amendment, January 7, 2009
`
`8 EE (APL-IDENTITY_00598353)
`Decision DenyingInstitution ofInter Partes Review ofthe ‘008 Patent,
`IPR2022-00171, Paper 9 (PTAB July 5, 2022
`
`ill
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 5 of 15
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`
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`
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`The Court should grant summary judgment of noninfringement with respect to U.S. Patent
`
`
`
`No. 8,020,008 (the “ʼ008 patent”) because Plaintiff has failed to show that the accused iPhones
`
`include any single memory that stores both “digital identity data” and “microprocessor identity
`
`information,” as required by claim 1 (the sole asserted independent claim). See ʼ008 patent, claim
`
`1. In particular, claim 1 of the ’008 patent requires “a memory . . . configured to store [1] the
`
`digital identity data and [2] the microprocessor identity information,” (the “memory limitation”).1
`
`Plaintiff’s expert admits that the memory limitation requires a single memory that stores both
`
`pieces of data; not one memory that stores digital identity data and a different memory that stores
`
`the microprocessor identity. Ex. 1 [Russ Tr.] at 269:9-15 (“Q. … And I want to know in your
`
`understanding of the claims, does that require a single memory or multiple memories? A. I mean,
`
`I believe that it requires a single memory . . . .”). But when Plaintiff’s expert applies the claims
`
`to the accused iPhones, he identifies alleged “digital identity data” that is stored2 in a separate
`
`memory from the alleged “microprocessor identity.” Accordingly, Apple submits that the Court
`
`should find that the accused iPhones do not satisfy the memory limitation as a matter of law and
`
`grant summary judgment of noninfringement.
`
`I.
`
`BACKGROUND
`
`The ’008 patent generally relates to a device in which “digital identity data” is encrypted
`
`with “microprocessor identity information.” ’008 patent at claim 1. Plaintiff asserts independent
`
`
`1 All emphasis is added unless otherwise indicated.
`2 The parties also dispute whether certain alleged “digital identity” and other data is, in fact, stored
`in certain memories or other components. But that separate dispute does not impact this motion
`because whether certain data is stored or merely temporarily processed in a memory does not bear
`on Plaintiff’s failure to show that the accused iPhones have any single memory that stores (or even
`temporarily processes) the alleged “digital identity data” and “microprocessor identity
`information.”
`
`
`
`1
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 6 of 15
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`claim 1 and dependent claims 2, 3, 6, and 7 of the ’008 patent against certain Apple iPhones that
`
`
`
`include “Secure Enclave.” Ex. 2 [Russ Open. Rpt.] ¶ 1; Ex. 6 [Cole Sub. Rpt.] ¶ 59.
`
`A.
`
`Claim 1 Of The ’008 Patent Requires A Single Memory That Stores Both
`“digital identity data” And “microprocessor identity information.”
`During prosecution of the application resulting in the ’008 patent, the Examiner rejected as
`
`obvious the original version of claim 1, which recited “a memory configured to store at least the
`
`digital identity data.” Ex. 3 [’008 File History, September 16, 2009 Office Action] at 3-4. The
`
`Applicant amended the claim to require “a memory” configured to store both “the digital identity
`
`data and the microprocessor identity information.” Ex. 4 [’008 File History, December 16, 2009
`
`Amendment] at 3. Thus, following the Applicant’s amendment, the claim requires that a single
`
`memory stores both the “digital identity data” and the “microprocessor identity information.”
`
`Plaintiff’s expert, Dr. Russ, agreed. Ex. 1 [Russ Tr.] at 269:9-15 (“Q. … And I want to know in
`
`your understanding of the claims, does that require a single memory or multiple memories? A. I
`
`mean, I believe that it requires a single memory . . . .”).
`
`B.
`
`Plaintiff Does Not Identify A Single Memory That Stores Both The Claimed
`“digital identity data” And “microprocessor identity information.”
`Claim 1 of the’008 patent recites a device in which “microprocessor identity information”
`
`
`
`is used to encrypt “digital identity data.” In each of the accused iPhones, Plaintiff identifies a
`
`value called
`
` as the alleged “microprocessor identity information.” Ex. 2 [Russ Open.
`
`Rep.] ¶ 634. Plaintiff identifies
`
` different forms alleged “digital identity data.” None of
`
`those
`
` forms of alleged digital identity data is stored in the same memory as
`
` Wicker
`
`Decl., Ex. A ¶¶ 67, 94, 95, 99, 109, 110, 116, 117, 197, 205, 206, 218, 222, 236, 238, 242.
`
`2
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 7 of 15
`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 7 of 15
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`In particular, Plaintiff alleges that| is stored in (1) thePo or (2) the
`BE2 05s Open. Reo1 646,560”
`
`Po Plaintiff alleges tha formsof alleged “digital
`identity data”—all but thePe: stored in “various memory components”—
`namelyeethet are undisputedly separate anddistinct from thea
`po orhii Ex. 2 [Russ Open. Rep.] at § 660; Wicker Decl., Ex. A §§ 60,
`94-96, 259. Plaintiff asserts that theP| form of alleged digital identity data
`ai: stored in the| register, which is a different register than theP|
`
`Ex. 2 [Russ Open. Rep.] § 643. Plaintiff does not advance a theory under the doctrine of
`
`equivalents for the “memory”limitation.
`
`II.
`
`ARGUMENT
`
`A.
`
`The Accused “Digital Identity Data” Is Not Stored In The Same Memory As
`a. As Required By Claim 1 of The ’008 Patent.
`Claim 1 of the 008 patent recites “a memory .
`.
`. configured to store the digital identity
`
`data and the microprocessoridentity information.” The claim requires at least one memory that
`
`satisfies the entire limitation—i.e., at least one memory that stores both the “digital identity data
`
`3 As background,a “register” is a componentthat can temporarily hold data that a processor can
`act on. Ex. 5[Microsoft Computer Dictionary]
`
`at 402.
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 8 of 15
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`and the microprocessor identity information.” Plaintiff has not shown—and cannot show—that
`
`
`
`any of the alleged forms of “digital identity data” is ever stored—or even temporarily processed—
`
`in the same “memory” as the accused “microprocessor identity”
`
`. The undisputed evidence
`
`shows that Apple does not infringe the ’008 patent.
`
`1.
`
`Claim 1 of the ’008 Patent Requires A Single “Memory” That Stores
`Both “Digital
`Identity Data” And “Microprocessor
`Identity
`Information.”
`The plain meaning of the ’008 patent’s “memory” limitation requires at least one memory
`
`that stores both the “digital identity data” and the “microprocessor identity information.” The
`
`original version of claim 1 only required a memory configured to store “at least the digital identity
`
`data.” Ex. 7 [’008 File History, January 7, 2009 Preliminary Amendment] at 3. In other words,
`
`Plaintiff’s original claim required only that the claimed memory stores “the digital identity data,”
`
`though it could, but was not required to, store more. However, the Applicant amended the claim
`
`to require “a memory” configured to store both “the digital identity data and the microprocessor
`
`identity information.” Ex. 4 [’008 File History, December 16, 2009 Amendment] at 3. Thus, after
`
`the amendment, the claim requires Plaintiff to identify at least one memory that stores both pieces
`
`of data: (1) the digital identity data; and (2) the microprocessor identity information.
`
`The plain meaning of the claim language requires storing both the “digital identity data”
`
`and the “microprocessor identity” in a single memory. Although the indefinite article “a” typically
`
`means “one or more,” each component described by an indefinite article must satisfy each
`
`limitation ascribed to it. See In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“For a dog owner
`
`to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each
`
`able to perform just one of the tasks.”); Plano Encryption Techs., LLC v. Alkami, Inc., No. 2:16-
`
`CV-1032-JRG, 2017 WL 3654122, at *10 (E.D. Tex. Aug. 23, 2017) (“[E]ach claim recites a
`
`particular medium and then recites limitations as to instructions that are stored on the medium and
`
`4
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 9 of 15
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`that are to be executed by a processor. Thus, one particular medium must store all of these
`
`
`
`instructions.”). In other words, although the claims can cover multiple memories because “a
`
`memory” can mean “one or more” memories, at least one of those memories must store both the
`
`digital identity data and the microprocessor identity information to satisfy this limitation. That
`
`means that Plaintiff cannot collectively identify one memory that stores the “digital identity data”
`
`and another different memory that stores the “microprocessor identity information.” Rather, at
`
`least one memory must satisfy both of those requirements (though there can be additional
`
`memories that also satisfy those requirements).
`
`Plaintiff’s infringement expert Dr. Russ agreed that the claims require “a single memory”
`
`that stores both the digital identity information and the microprocessor identity information:
`
`Q. In your understanding, your reading of the claims, does the memory in Claim 1
`of the ʼ008 patent refer to a single memory or multiple memories?
`
`A. You mean the -- let’s be clear, I want to make sure I understand your question.
`You’re talking about Claim 1 of the ʼʼ008 patent. . . .
`
`Q. That's right. And I want to know in your understanding of the claims, does that
`require a single memory or multiple memories?
`
`A. I mean, I believe that it requires a single memory, but to the extent that it
`requires multiple memories I have a theory of infringement that also is true.
`
`Ex. 1 [Russ Dep. Tr.] at 269:9-15.
`
`B.
`
` Forms Of Alleged Digital
`Plaintiff Does Not Allege That
`Identity Data Are Ever Stored In The Same Memory As
`
`Plaintiff concedes that
` identified forms of alleged “digital identity data”—
`
`
`
`
`
`
`
`
`
`—are never stored in the same memory as
`
`5
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 10 of 15
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`
`
`
`
` (see Ex. 2 [Russ Open. Rep.] ¶¶ 219, 634 642; see also Wicker Decl., Ex.
`
`A ¶ 72, 84)). Rather, Dr. Russ concedes that those
`
` forms of alleged “digital identity data” are
`
`only ever stored or processed in
`
` (Ex. 1 [Russ Dep. Tr.] at 270:25-
`
`275:3; see also Wicker Decl., Ex. A ¶ 508)—indisputably separate memories from the
`
`
`
` Accordingly, those
`
` forms of alleged “digital identity data” do not
`
`satisfy the “memory” limitation of the ’008 patent.
`
`C.
`
`Plaintiff’s Infringement Theory For The Phase 1 Output Also Fails to Identify
`Any Single “memory” That Stores Both The
` and
`
`The phase 1 output is never stored or processed in the same memory as UID2 and,
`
`therefore, cannot satisfy the “memory” limitation of claim 1 of the ’008 patent.
`
`Plaintiff does not deny that the
`
` stores only
`
` values and nothing else.
`
`Ex. 2 [Russ Open. Rep.] ¶ 219. And Plaintiff does not deny that the
`
` passes only
`
` and nothing else. Id. ¶ 645. Plaintiff only alleges that the
`
` can be passed to
`
`the
`
` register, which is indisputably a separate register from the
`
` Id. ¶ 643.
`
`The below schematic shows various registers of the relevant hardware block, with the
`
`
`
` outlined in a blue box and the separate
`
` register outlined in a green box:
`
`Ex. 8 [APL-IDENTITY_00598353] at _00598359 (annotations added).
`
`6
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 11 of 15
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`
`
`
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`Plaintiff does not allege that
`
` is ever stored in the
`
` register. And Plaintiff
`
`does not allege that the
`
` is ever stored in the
`
` Therefore, neither the
`
` register nor the
`
` can be the claimed “memory” that must store both the
`
`alleged “digital identity data” and the “microprocessor identity.” See ’008 patent, claim 1.
`
`
`
`Faced with those undisputed facts, Plaintiff argues that because
`
` and the
`
` are each passed to separate registers that are independently connected to the same “
`
`
`
`
`
` (outlined in red in the schematic above), those separate registers together constitute a single
`
`“memory.” In particular, Plaintiff’s expert Dr. Russ asserts, without any supporting evidence, that
`
`“[a] POSITA would understand the registers collectively to constitute ‘a memory’ as claimed, as
`
`they all [sic] part of the same set of memory serving a particular function within the
`
`
`
` in each Accused Product.” Ex. 2 [Russ Open. Rep.] ¶ 648 (emphasis added). Dr. Russ
`
`further alleges that “registers are known in the computing arts to be memory elements of a single
`
`memory” and that “registers are normally bundled into a bank or group.” Ex. 2 [Russ Open. Rep.]
`
`¶ 655.
`
`Dr. Russ’s opinion that the
`
` and
`
`registers constitute a single “memory” fails
`
`for three reasons. First, Dr. Russ cites no evidence to support his assertions that “registers are
`
`known in the computing arts to be memory elements of a single memory,” and that “registers are
`
`normally bundled into a bank or group. So it is common to refer to the grouping as a single unit
`
`of memory.” Ex. 2 [Russ Open. Rep.] ¶ 655. As shown in the schematic above, the
`
`register and the
`
` are separate components independently connected to the
`
`
`
`
`
` via distinct paths and subcomponents. And Dr. Russ does not cite any evidence to support
`
`his conclusory assertion that the
`
` and
`
` registers together constitute a single
`
`“memory” or that they are “bundled together into a bank or group.” See id. Such self-serving, and
`
`7
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 12 of 15
`
`
`conclusory opinions are insufficient to support an infringement allegation. See Dynacore Holdings
`
`
`
`Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1278 (Fed. Cir. 2004) (affirming summary judgment
`
`of noninfringement).
`
`
`
`Second, the
`
` and
`
` registers do not serve the same function such that it would
`
`be reasonable to consider them a single “memory,” as Dr. Russ asserts. Ex. 2 [Russ Open. Rep.]
`
`¶ 648 (“A POSITA would understand the registers collectively to constitute ‘a memory’ as
`
`claimed, as they are all part of the same set of memory serving a particular function . . . .”). To
`
`the contrary,
`
`
`
`
`
`
`
`
`
` Thus, although both registers
`
`are connected to
`
` they each pass different data that is obtained from different sources.
`
`Third, the
`
` and
`
`registers cannot reasonably be described as a “functional
`
`unit” (see Ex. 2 [Russ Open. Rep.] ¶ 655) because the evidence shows that they are accessed
`
`differently.
`
`
`
`
`
` Each
`
`register comprises separate hardware independently connected to the
`
` with distinct paths
`
`and connectors that allow for
`
`
`
`8
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 13 of 15
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`
`
`
`
`Thus, Dr. Russ’s conclusory opinion that all of the registers constitute a single “memory”
`
`is unsupported and, in fact, is contradicted by the record evidence. Accordingly, the accused
`
`iPhones do not satisfy the “memory” limitation of claim 1 of the ’008 patent.
`
`D.
`
`Plaintiff’s Backup Theory—That The “Memory” Limitation Can Be Satisfied
`By Multiple Different Memories—Is Premised On An IPR Argument That
`The PTAB Did Not Embrace And That Plaintiff’s Expert Disagreed With.
`Dr. Russ also asserts that under an alternative interpretation based on an obviousness
`
`argument that Apple presented in the IPRs, the claims do not require that a single memory stores
`
`both the “digital identity data” and the “microprocessor identity.” Ex. 2 [Russ Open. Rep.] ¶¶
`
`659-660. That argument fails for two reasons. First, Dr. Russ agreed that the correct interpretation
`
`of claim 1 of the ʼ008 patent requires a single memory. See Ex. 1 [Russ Dep. Tr.] at 269:9-15 (“Q.
`
`… And I want to know in your understanding of the claims, does that require a single memory or
`
`multiple memories? A. I mean, I believe that it requires a single memory . . . .”). Thus, Plaintiff
`
`cannot advance an infringement theory based on an interpretation that its own expert disagreed
`
`with and that Apple does not advance in this litigation. Second, the PTAB did not embrace that
`
`alternative interpretation. The PTAB applied only the plain meaning of all terms in its order
`
`denying institution of the IPR concerning the ’008 patent. See Ex. 9 [’008 Patent Institution
`
`Decision] at 8; see Netlist, Inc. v. Micron Technology, Inc. et al, No. 2:22-cv-00203-JRG, D.I. 249
`
`at 7-10 (E.D. Tex. Oct. 22, 2023) (refusing to construe term based on defendant’s statement in an
`
`IPR petition); Iris Corp. Berhad v. United States, 147 Fed. Cl. 160, 166 (2020) (same).
`
`Accordingly, the Court should apply the plain meaning (see Section II.A.1 above) and grant
`
`summary judgment of no infringement.
`
`III. CONCLUSION
`
`For the foregoing reasons, Apple respectfully requests that this Court grant Apple’s motion
`
`for summary judgment of noninfringement of the ’008 patent.
`
`9
`
`

`

`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 14 of 15
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`
`
`Dated: June 28, 2024
`
`By:
`
`/s/ Cosmin Maier
`Brian C. Nash (TX Bar No. 24051103)
`Regan J. Rundio (TX Bar No. 24122087)
`BNash@mofo.com
`RRundio@mofo.com
`300 Colorado Street, Suite 1800
`Austin, TX 78701
`Telephone: 512.617.0650
`
`John M. Desmarais (pro hac vice)
`Cosmin Maier (pro hac vice)
`Leslie M. Spencer (pro hac vice)
`Kerri-Ann Limbeek (pro hac vice)
`Michael Wueste (pro hac vice)
`Eli Balsam (pro hac vice)
`Asim Zaidi (pro hac vice)
`Gillian F. Moore (pro hac vice)
`
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Tel: 212-351-3400
`Fax: 212-351-3401
`jdesmarais@desmaraisllp.com
`cmaier@desmaraisllp.com
`lspencer@desmaraisllp.com
`klimbeek@desmaraisllp.com
`mwueste@desmaraisllp.com
`ebalsam@desmaraisllp.com
`azaidi@desmaraisllp.com
`gmoore@desmaraisllp.com
`
`Jeffrey T. Quilici
`TX State Bar No. 24083696
`ORRICK, HERRINGTON &
`SUTCLIFFE LLP
`300 W. 6th Street, Suite 1850
`Austin, TX 78701
`Tel: (512) 582-6950
`Fax: (512) 582-6949
`jquilici@orrick.com
`
`Attorneys for Defendant Apple Inc.
`
`10
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`

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`Case 1:22-cv-00058-ADA Document 236 Filed 07/05/24 Page 15 of 15
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing sealed document and all attachments
`
`thereto are being served via email on all counsel of record on this June 28, 2024
`
`/s/ Cosmin Maier
`Cosmin Maier
`
`.
`
`11
`
`