Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`IDENTITY SECURITY LLC,
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`Civil Action No. 1:22:CV-00058-ADA
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`Plaintiff,
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`JURY TRIAL DEMANDED
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`v.
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`APPLE INC.,
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`Defendant.
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`DEFENDANT APPLE INC.’S MOTION FOR JUDGMENT AS A MATTER OF LAW
`REGARDING INVALIDITY
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 2 of 24
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`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES .......................................................................................................... ii
`I.
`LEGAL STANDARD ......................................................................................................... 1
`II.
`ARGUMENT ...................................................................................................................... 2
`A.
`A Reasonable Jury Could Only Conclude That The Asserted Claims Of The ’497
`Patent Are Obvious. ................................................................................................ 2
`1.
`Claims 1, 3, and 12 of the ’497 Patent are obvious over Gerard in view of
`Curry and Klein............................................................................................2
`Claim 4 of the ’497 Patent is obvious over Gerard in view of Curry, Klein,
`and Lewis. ....................................................................................................9
`A Reasonable Jury Could Only Conclude That The Asserted Claims Of The ’008
`Patent Are Obvious. .............................................................................................. 10
`1.
`Claims 1, 2, 6, and 7 of the ’008 Patent are obvious over Gerard in view of
`Curry and Klein..........................................................................................10
`Claim 3 of the ’008 Patent is obvious over Gerard in view of Curry, Klein,
`and Lewis. ..................................................................................................14
`A Reasonable Jury Could Only Conclude That Claim 5 of the ’895 Patent is
`obvious over Gerard in view of Curry, Klein, and Challener. .............................. 14
`D. A Reasonable Jury Could Only Conclude That Claim 1 of the ’948 Patent is obvious
`over Gerard in view of Curry and Klein. .............................................................. 16
`A Reasonable Jury Could Only Conclude That The Asserted Claims Lack Written
`Description Support. ............................................................................................. 18
`CONCLUSION ............................................................................................................................. 19
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`B.
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`C.
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`E.
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`2.
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`2.
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`i
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 3 of 24
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`TABLE OF AUTHORITIES
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`PAGE(S)
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`Cases
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`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed.Cir.2010)..................................................................................................... 7
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`Carmona v. Sw. Airlines Co.,
`604 F.3d 848 (5th Cir. 2010) ...................................................................................................... 1
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`Weisgram v. Marley Co.,
`528 U.S. 440 (2000) .................................................................................................................... 1
`Statutes
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`35 U.S.C. § 102(a) ............................................................................................................ 2, 3, 9, 14
`Rules
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`Federal Rule of Civil Procedure 50(a) ............................................................................................ 1
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`ii
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 4 of 24
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`Defendant Apple Inc. renews its previous motion for judgment as a matter of law under
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`Federal Rule of Civil Procedure 50(a) that it does not infringe the ’497, ’008, ’895, and ’948
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`patents and Plaintiff Identity Security is entitled to no damages, Dkt. 292, and Apple respectfully
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`moves pursuant to Rule 50(a) for judgment as a matter of law that the following claims are
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`invalid because they are obvious and lack adequate written description: claims 1, 3, 4, and 12 of
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`the ’497 patent; claims 1-3 and 6-7 of the ’008 patent; claim 5 of the ’895 patent; and claim 1 of
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`the ’948 patent (collectively, the Asserted Claims). Identity Security chose not to present any
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`rebuttal on invalidity—including no evidence or opinion on secondary considerations—leaving
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`Apple’s expert testimony and the prior-art references the only evidence before the jury.
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`I.
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`LEGAL STANDARD
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`Under Rule 50(a), judgment as a matter of law is appropriate “[i]f a party has been fully
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`heard on an issue during a jury trial and the court finds that a reasonable jury would not have a
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`legally sufficient evidentiary basis to find for the party on that issue.” Fed. R. Civ. P. 50(a).
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`Rule 50 “allows the trial court to remove . . . issues from the jury’s consideration when the facts
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`are sufficiently clear that the law requires a particular result.” Weisgram v. Marley Co., 528 U.S.
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`440, 448 (2000) (internal quotations omitted). This Court “must view the evidence in the light
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`most favorable to the non-moving party and draw all reasonable inferences in favor of the non-
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`moving party,” without “assess[ing] the credibility of the witnesses or weigh[ing] the evidence.”
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`Carmona v. Sw. Airlines Co., 604 F.3d 848, 854-55 (5th Cir. 2010).
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`1
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 5 of 24
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`II.
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`ARGUMENT
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`A.
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`A Reasonable Jury Could Only Conclude That The Asserted Claims Of The
`’497 Patent Are Obvious.
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`1.
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`Claims 1, 3, and 12 of the ’497 patent are obvious over Gerard in view
`of Curry and Klein.
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`Gerard is a French Publication (No. 2,776,153) entitled “Method For Security
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`Identification Of A Person And Portable Device For Implementing The Method,” which was
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`filed on March 10, 1998 and published on September 17, 1999. Tr. 856:11-15; DX-0422
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`(Gerard). Thus, Gerard is prior art to the asserted patents under at least pre-AIA 35 U.S.C.
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`§ 102(a) because it was published on September 17, 1999, before the earliest alleged priority
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`date of the asserted patents. Tr. 844:4-6; PX-1 at (22); Gerard at (43). Gerard teaches a method
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`of protecting identification information of a person, such as an image of their face or fingerprint
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`or their name, via encryption and storing the information on a device, where the encryption key
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`is the inalterable serial number of the device. Tr. 856:19-857:8; Gerard at Abstract, 6:5-11.
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`Curry is a U.S. Patent (No. 5,940,510) entitled “Transfer Of Valuable Information
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`Between A Secure Module And Another Module,” filed on January 31, 1996 and issued on
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`August 17, 1999. Tr. 881:4-5; DX-0299 (Curry). Curry is prior art to the asserted patents under
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`at least pre-AIA 35 U.S.C. § 102(b) because it was patented more than a year prior to the earliest
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`effective filing date to which the asserted patents are entitled. Tr. 881:4-9; Curry at (22). Curry
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`discloses a microprocessor-based device including a secure module for encryption and
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`decryption of data, in which the secure module includes both the device’s serial number as a
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`unique identifier, and a personal identification number (PIN) that can be used to bind an
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`individual to the secure module. Tr. 881:13-882:18; Curry at 1:64-66, 4:7-9, 8:3-4, 11:64-65,
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`23:31-32.
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`2
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`Klein is a U.S. Patent (No. 7,096,370) entitled “Data security for digital data storage,”
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`filed on March 26, 1999 and issued on August 22, 2006. Tr. 851:17-18; DX-0245 (Klein). Klein
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`is prior art to the asserted patents under at least pre-AIA 35 U.S.C. § 102(e) because it was filed
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`on March 26, 1999, which is before the earliest alleged priority date of the asserted patents. Tr.
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`851:18-20; Klein at (22). Klein discloses a method of storing encrypted data, in which the
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`encryption key is derived using a hardware identifier (which may be stored in non-volatile
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`memory) and user input (which may be a password). Tr. 852:2-3, 884:12-15, 884:23-885:3;
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`Klein at 2:24-36, 3:40-50.
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`Each limitation of claims 1, 3, and 12 is disclosed or rendered obvious by Gerard in view
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`of Curry and Klein, as explained below, so the asserted patent claims are invalid.
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`Gerard teaches a system and method by which a person’s identification information, such
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`as an image of their face or fingerprint or their name, is protected via encryption and stored on a
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`device. Tr. 856:19-857:8, 863:9-11; Gerard at Abstract. The system disclosed by Gerard
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`includes a computer that encrypts the identification information and transmits it to a separate
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`chip. Tr. 869:4-19. And when Gerard’s device is used to confirm the identity of a person, the
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`encryption key, i.e., the serial number or microprocessor ID, is passed in an unencrypted form
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`from the microprocessor to a computer where the identity information is decrypted. Tr. 869:23-
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`24, 870:13-871:15.
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`Curry similarly teaches a secure device for storing encrypted information, including a
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`coprocessor optimized for encryption. Tr. 881:21-882:11. Curry, however, describes the step of
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`encrypting information on the secure device with an encryption key that never leaves the secure
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`device. Tr. 882:12-18, 883:11-12.
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`3
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`A POSITA would have been motivated to modify the system of Gerard with the
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`teachings of Curry for several reasons. As Dr. Wicker explained, a POSITA would be motivated
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`to have the encryption process occur on Gerard’s chip rather than another computer within the
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`system “because it’s more secure” and “fixes” Gerard’s “security issue” of having “unencrypted
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`data [go] out” to a different computer (potentially to be intercepted). Tr. 883:11-15. Both
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`references describe “small portable [microprocessor-based] device[s]” for securely transferring
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`valuable information, such as identity data. Tr. 883:6-10. Gerard utilizes an external computer
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`to encrypt digital identity data and then securely stores it on a chip affixed to a card (like your
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`credit card). Tr. 879:14-22. Curry discloses a small token-like microprocessor device for secure
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`transactions that performs encryption on the device. Tr. 881:21-22. A POSITA would look to
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`combine Gerard and Curry to make the device of Gerard more secure with on-device encryption.
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`Dr. Wicker also testified that a POSITA would have had a reasonable expectation of success
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`because Curry “already disclosed a small chip on a portable device that could perform
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`encryption. So you would expect this to work.” Tr. 883:17-21.
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`Likewise, Dr. Wicker explained that a POSITA would have found it obvious to combine
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`the key derivation techniques described in Klein with the combined Gerard-Curry device. Tr.
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`885:4-24. Specifically, Klein describes that a hardware identifier or a key derived from a
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`hardware identifier could be used to encrypt data. Tr. 884:23-885:3. Gerard encrypts digital
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`identity data directly with the serial number. Tr. 860:23-861:3; Gerard at 6:5-12. In other
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`words, Klein and Gerard “are analogous” because “both deal[] with this encryption of data with a
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`hardware identifier.” Tr. 885:8-11. A POSITA would have been motivated to “increase the
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`level of security” of the Gerard-Curry combination device by deriving an encryption key, as
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`disclosed in Klein, rather than using the serial number directly; doing so would “make it harder
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`4
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`to hack.” Tr. 885:11-13. Dr. Wicker also testified that a POSITA would have a reasonable
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`expectation of success because only a simple addition of hardware or software to the
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`combination device would be needed to accommodate key derivation as disclosed in Klein. Tr.
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`885:14-17.
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`Dr. Wicker provided the jury with substantial evidence from which a reasonable jury
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`would be compelled to conclude that each asserted claim limitation is either disclosed or
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`rendered obvious by Gerard in view of Curry and Klein.
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`The preamble of claim 1 provides that the claim is directed to: [1a] “A digital identity
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`device, comprising[.]” To the extent the preamble is limiting, Gerard discloses an identification
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`device that includes a chip, which itself includes a microprocessor. Tr. 857:22-858:12.
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`Limitation [1b] requires “a microprocessor comprising[.]” Dr. Wicker explained that
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`Gerard discloses a device that includes a microprocessor. Tr. 857:22-858:10, 858:19-859:10; see
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`also Gerard at Fig. 4. Limitation [1b] further requires “a microprocessor identity that
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`uniquely identifies the microprocessor[.]” Dr. Wicker explained that Gerard discloses that its
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`chip comprises a unique serial number inalterably stored in a storage means on the chip. Tr.
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`860:23-861:8. And Mr. Tan, the inventor, agreed with Dr. Wicker that a microprocessor ID can
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`be a serial number. Tr. 87:18-23 (Tam), 118:14-20 (Tam). Thus, Gerard in view of Curry and
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`Klein discloses and renders obvious “a microprocessor identity that uniquely identifies the
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`microprocessor.” Tr. 861:6-8.
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`Limitation [1b] further requires that “the microprocessor comprises an on die
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`Programmable Read-Only Memory (PROM) and the microprocessor identity is etched into
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`the PROM[.]” Plaintiff’s expert, Dr. Russ, asserts that other methods of inalterably storing the
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`microprocessor identity on the die—such as by blowing fuses in a fuse bank—is literally the
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`5
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 9 of 24
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`same as etching the microprocessor identity into a PROM on the die.1 Tr. 862:2-7 (Wicker),
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`232:6-233:22 (Russ). As Dr. Wicker explained, Gerard discloses that its chip contains a memory
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`(calling it a “storage means”) and that a microprocessor ID (the serial number of the chip) is
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`stored in a read-only fashion in that memory. Tr. 861:14-862:19. Thus, at least under Plaintiff’s
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`interpretation of this limitation, Gerard in view of Curry and Klein discloses and renders obvious
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`that “the microprocessor comprises an on die Programmable Read-Only Memory (PROM) and
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`the microprocessor identity is etched into the PROM.” Tr. 862:16-19.
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`Limitation [1c] requires “digital identity data, wherein the digital identity data
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`identifies an owner of the digital identity device, wherein the digital identity data comprises
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`a name of the owner[.]” Dr. Wicker explained that Gerard discloses storing various types of
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`information that identifies the owner of the device, such as the owner’s name, images of the
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`owner’s fingerprint or face, and civil status information. Tr. 863:7-864:11.
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`Limitation [1d] requires “a memory configured to store at least the digital identity
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`data[.]” Dr. Wicker testified that Gerard discloses an on-chip memory that stores digital identity
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`data for an owner of the device, such as name and/or a fingerprint. Tr. 865:2-4, 865:10-12.
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`Thus, Gerard in view of Curry and Klein discloses and renders obvious “a memory configured to
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`store at least the digital identity data.”
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`Limitation [1e] requires “wherein the microprocessor identity is an alpha-numeric
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`value[.]” Dr. Wicker testified that Gerard discloses that its chip comprises a unique serial
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`number inalterably stored on the chip. Supra 5. Mr. Tan, the inventor, also testified that a serial
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`1 Apple does not concede that blowing fuses literally meets this limitation, which calls for
`“etching.” However, to the extent that the jury necessarily finds the term “etching” to
`encompass other means of inalterably storing information by finding claim 1 infringed, a rational
`juror could only find that Gerard—and thus the combination of Gerard in view of Curry and
`Klein—discloses and renders this limitation obvious under the same interpretation of the claim.
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`6
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 10 of 24
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`number “can be” a microprocessor ID. Tr. 87:18-23. This alone is sufficient to demonstrate that
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`Gerard (and thus Gerard in view of Curry and Klein) discloses and renders obvious this
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`limitation. Plaintiff’s expert, Dr. Russ, also asserted that any number that can be expressed in
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`hexadecimal is alpha-numeric because hexadecimal notation expresses the digits 10-15 as “A-
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`F.”2 Tr. 254:1-7. And Dr. Wicker testified that any number, including a serial number as in
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`Gerard, or even random numbers, can be expressed in hexadecimal. Tr. 838:18-839:9. Thus, at
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`least under Plaintiff’s interpretation of this limitation, Gerard in view of Curry and Klein
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`discloses and renders obvious “wherein the microprocessor identity is an alpha-numeric value.”
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`Tr. 866:14-17.
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`Limitation [1f] requires that “the digital identity data is bound to the microprocessor
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`identity by encrypting the digital identity data using an algorithm that uses the
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`microprocessor identity[.]” Dr. Wicker testified that Gerard discloses that the computer it
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`describes receives, and thus reads in, a digital identity data such as a fingerprint. Tr. 869:5-10,
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`869:17-19, 869:23-871:3. Dr. Wicker further explained that Gerard discloses applying an
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`encryption algorithm to the digital identity data, and that the key for that encryption is the serial
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`number of the device. Tr. 869:9-17, 869:23-871:3. As noted above, Mr. Tan, the inventor,
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`agreed that a serial number can be a microprocessor ID. Supra 5. Dr. Wicker also explained that
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`Curry discloses performing the encryption step on the microprocessor identity device itself, and
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`2 Apple does not concede that hexadecimal digits A-F are “letters” or that every number is
`“alpha-numeric” simply because it can be expressed in hexadecimal, both as a factual matter, see
`Tr. 866:18-24, and because that interpretation reads this limitation out of the claim by rendering
`it meaningless, Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1257
`(Fed.Cir.2010) (“Claims must be interpreted with an eye toward giving effect to all terms in the
`claim.”). However, to the extent that the jury necessarily finds otherwise by finding claim 1
`infringed, a rational juror could only conclude that Gerard—and thus the combination of Gerard
`in view of Curry and Klein—discloses and renders this limitation obvious under the same
`interpretation of the claim.
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`7
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 11 of 24
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`that a POSITA would be motivated to modify Gerard to perform on-chip encryption as disclosed
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`in Curry to improve security. Tr. 879:10-880:12, 881:12-884:1. Furthermore, to the extent that
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`Plaintiff insists that this limitation can be infringed by encrypting with a key that is merely
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`derived from the microprocessor identity, rather than the microprocessor identity itself, Dr.
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`Wicker explained that Klein discloses deriving encryption keys from a hardware identifier, and
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`that a POSITA would be motivated to improve the security of Gerard’s device by using key
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`derivation as disclosed in Klein. Tr. 884:11-886:1. Thus, Gerard in view of Curry and Klein
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`discloses and renders obvious that “the digital identity data is bound to the microprocessor
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`identity by encrypting the digital identity data using an algorithm that uses the microprocessor
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`identity.” Tr. 885:18-886:14.
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`Claim 3 requires all the limitations of claim 1, and additionally that “the digital identity
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`device further comprises an interface configured to enable the digital identity device to
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`communicate with an external device.” As detailed above, Gerard in view of Curry and Klein
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`discloses and renders obvious all limitations of claim 1. Supra 5-8. As Dr. Wicker explained,
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`Gerard discloses that its chip contains an interface, specifically a wireless transmitter that is part
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`of the identity device, which enables communication with “another device outside.” Tr. 886:22-
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`887:20, 889:5-7. Thus, Gerard in view of Curry and Klein discloses and renders obvious that
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`“the digital identity device further comprises an interface configured to enable the digital identity
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`device to communicate with an external device.” Tr. 887:19-22.
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`Claim 12 requires all the limitations of claim 1, and additionally that “the
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`microprocessor identity is a 256-bit value[.]” As detailed above, Gerard in view of Curry and
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`Klein discloses and renders obvious all limitations of claim 1. Supra 5-8. Dr. Wicker also
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`testified that it would have been obvious to a POSITA to configure Gerard’s microprocessor
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`8
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 12 of 24
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`identity (its serial number, used as an encryption key) as a 256-bit value because using a 256-bit
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`microprocessor identity is “one of a number of very obvious options.” Tr. 892:7-10. For
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`example, as Dr. Wicker explained, two and a half years before the Asserted Patents were filed,
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`the National Institute of Standards and Technology (NIST) had already required that an
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`algorithm for the advanced encryption standard (AES) have, as part of its minimum acceptability
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`requirements, a “key between 128 and 256 bits that are multiples of 32 bits.” Tr. 892:13-893:17.
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`Because in Mr. Tan’s invention, the microprocessor ID is used as the key, it would be equally
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`obvious to use a 256 bit microprocessor ID. Thus, Gerard in view of Curry and Klein discloses
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`and renders obvious that “the microprocessor identity is a 256-bit value.” Tr: 893:22-23.
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`2.
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`Claim 4 of the ’497 patent is obvious over Gerard in view of Curry,
`Klein, and Lewis.
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`Lewis is a U.S. Patent (No. 6,213,391) entitled “Portable system for personal
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`identification based upon distinctive characteristics of the user,” and was filed on September 10,
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`1997 and issued on April 10, 2001. Tr. 888:13-14; DX-0995 (Lewis). Lewis is prior art to the
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`asserted patents under at least pre-AIA 35 U.S.C. § § 102(e) because it was filed on September
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`10, 1997, which is before the earliest alleged priority date of the asserted patents. Tr. 888:13-18;
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`Lewis at (22). As Dr. Wicker testified, Lewis discloses a small portable device that can
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`authenticate an individual using biometrics like fingerprints or a facial scan. Tr. 890:19-23;
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`Lewis at Abstract, 10:33-39. Lewis further discloses that its device can have input/output (I/O)
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`ports on its edges, which would allow it to interact with other computers or machines. Tr.
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`889:14-16; Lewis at 11:24-38.
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`Each limitation of claim 4 is disclosed or rendered obvious by Gerard in view of Curry,
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`Klein, and Lewis. Claim 4 requires all the limitations of claim 1, and additionally that “the
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`interface comprises an input/output port[.]” As explained above, claim 1 is obvious in view
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 13 of 24
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`of Gerard, Curry, and Klein. Supra 5-8. A POSITA would be motivated to further combine
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`these references with Lewis because Gerard and Lewis are “analogous art” and both address
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`“authenticat[ing] individuals based on biometrics in a small portable device.” Tr. 890:19-23.
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`Lewis describes a handheld device with ports to interface with external devices such as ATMs.
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`Tr. 889:14-20; Lewis at 3:36-53. A POSITA would have been motivated to combine the
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`encryption technique of Gerard with the input/output port hardware of Lewis to develop a device
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`that could be used in more situations. See Tr. 890:24-891:3 (“You don’t need a wireless
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`receiver. You could also literally plug something in.”). Dr. Wicker also explained that a
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`POSITA would understand that input/output ports are long-known and “very simple”
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`technologies that could be easily added to a chip, and thus that a POSITA would reasonably
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`expect to succeed at including I/O ports. Tr. 891:4-9.
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`Adding a I/O port to the Gerard/Curry/Klein combination would be obvious. Although
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`Gerard does not expressly disclose that its interface is an input/output port, Lewis discloses that
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`I/O ports are a well-known type of interface used to interact with other machines. Tr. 889:3-
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`890:8. Dr. Wicker also testified that a POSITA would have “used Lewis’s output ports with the
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`Gerard combination device” to enable authentication in situations other than wireless
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`communication, and would reasonably expect to succeed in doing so. Tr. 890:16-891:12.
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`B.
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`A Reasonable Jury Could Only Conclude That The Asserted Claims Of The
`’008 Patent Are Obvious.
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`1.
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`Claims 1, 2, 6, and 7 of the ’008 patent are obvious over Gerard in
`view of Curry and Klein.
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`Each limitation of claims 1, 3, and 12 is disclosed or rendered obvious by Gerard in view
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`of Curry and Klein, as explained below, so the asserted patent claims are invalid. As noted
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`above, a POSITA would be motivated to combine Gerard, Curry, and Klein and would
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`reasonably expect to succeed in doing so. Supra 3-5.
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`10
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 14 of 24
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`The preamble of claim 1 provides that the claim is directed to: “[1a] a microprocessor
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`identity device, comprising[.]” To the extent this is deemed limiting, Gerard in view of Curry
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`and Klein discloses and renders obvious a “microprocessor identity device.” Specifically, Dr.
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`Wicker explained that Gerard discloses a chip—which includes a microprocessor—designed to
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`be incorporated into an identification device. Tr. 857:22-858:10. Dr. Wicker also testified that
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`Gerard discloses “a microprocessor identity” incorporated into the chip. Tr. 860:23-861:8.
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`Limitation [1b] requires “a microprocessor[.]” As discussed above in connection with
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`limitation [1b] of the ’497 patent, Gerard discloses and renders obvious “a microprocessor.”
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`Supra 5. As a result, Gerard in view of Curry and Klein also discloses and renders obvious a
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`“microprocessor.” Tr. 859:8-10.
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`Limitation [1c] requires “microprocessor identity information that uniquely identifies
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`the microprocessor identity device[.]” As discussed above in connection with limitation [1b]
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`of the ’497 patent, Gerard discloses and renders obvious “a microprocessor identity that uniquely
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`identifies the microprocessor.” Supra 6. And as both Dr. Russ and Dr. Wicker testified, there is
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`no difference between a “microprocessor identity” as recited in claim 1 of the ’497 patent, and
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`“microprocessor identity information” as recited here. Tr. 324:17-24 (Russ), 859:25-860:22
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`(Wicker). Dr. Wicker further testified that there is no difference between identifying the
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`microprocessor in a device, as recited in claim 1 of the ’497 patent, and identifying the device
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`containing the microprocessor, as recited here. Tr. 860:6-20. Because this limitation is
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`otherwise identical to portions of limitation [1b] of the ’497 patent, Gerard in view of Curry and
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`Klein also discloses and renders obvious “microprocessor identity information that uniquely
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`identifies the microprocessor identity device.” Tr. 861:6-8.
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`11
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 15 of 24
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`Limitation [1d] requires “digital identity data that identifies an owner of the
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`microprocessor identity device[.]” As discussed above in connection with limitation [1c] of
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`the ’497 patent, Gerard discloses and renders obvious “digital identity data, wherein the digital
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`identity data identifies an owner of the digital identity device.” Supra 6. For the same reasons,
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`Gerard in view of Curry and Klein also discloses and renders obvious “digital identity data that
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`identifies an owner of the microprocessor identity device.” Tr. 864:9-11.
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`Limitation [1e] requires “a memory operatively connected to the microprocessor and
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`configured to store the digital identity data and the microprocessor identity information[.]”
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`As discussed above in connection with limitation [1d] of the ’497 patent, Gerard discloses and
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`renders obvious “a memory configured to store at least the digital identity data.” Supra 6. Dr.
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`Wicker also testified that Gerard discloses that the same memory stores the microprocessor
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`identity (i.e., the chip serial number). Tr. 865:2-7. And he testified that Gerard discloses that the
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`memory is coupled to the microprocessor. Tr. 865:11-13. Thus, Gerard in view of Curry and
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`Klein also discloses and renders obvious “a memory operatively connected to the microprocessor
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`and configured to store the digital identity data and the microprocessor identity information.” Tr.
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`865:13-15.
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`Limitation [1f] requires that “the digital identity data is bound to the microprocessor
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`identity device by encoding, using the microprocessor, the digital identity data using an
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`algorithm that uses the microprocessor identity information[.]” As discussed above in
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`connection with limitation [1f] of the ’497 patent, Gerard discloses and renders obvious that “the
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`digital identity data is bound to the microprocessor identity by encrypting the digital identity data
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`using an algorithm that uses the microprocessor identity[.]” Supra 7-8. In addition, Mr. Tan
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`testified that encoding and encrypting are the same in the context of the asserted claims. Tr.
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`12
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 16 of 24
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`59:2-5 (“Q. How is coding—excuse me—how is encoding different from encryption? A. In the
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`context of my patents, encoding and encrypting are used similarly.”). Plaintiff’s expert, Dr.
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`Russ, confirmed this understanding. Tr. 341:22-25 (“[H]ere, in the context of the claims,
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`encoding is the same thing as encrypting.”), 341:26-342:3. Because this limitation is otherwise
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`identical to limitation [1f] of the ’497 patent, Gerard in view of Curry and Klein also discloses
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`and renders obvious that “the digital identity data is bound to the microprocessor identity device
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`by encoding, using the microprocessor, the digital identity data using an algorithm that uses the
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`microprocessor identity information.” Tr. 885:18-886:14.
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`Claim 2 requires all the limitations of claim 1, and additionally “an interface configured
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`to enable the microprocessor identity device to communicate with an external device[.]” As
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`detailed above, Gerard in view of Curry and Klein discloses and renders obvious all limitations
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`of claim 1. Supra 11-13. As discussed above in connection with claim 3 of the ’497 patent,
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`Gerard in view of Curry and Klein discloses and renders obvious that the claimed device “further
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`comprises an interface configured to enable the digital identity device to communicate with an
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`external device.” Supra 8. For the same reasons, Gerard in view of Curry and Klein discloses
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`and renders obvious “an interface configured to enable the microprocessor identity device to
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`communicate with an external device.” Tr. 887:19-22.
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`Claim 6 requires all the limitations of claim 1, and additionally that “the microprocessor
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`identity information is a 256-bit value[.]” As detailed above, Gerard in view of Curry and
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`Klein discloses and renders obvious all limitations of claim 1. Supra 11-13. As discussed above
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`in connection with claim 12 of the ’497 patent, Gerard in view of Curry and Klein also discloses
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`and renders obvious that “the microprocessor identity is a 256-bit value.” Supra 8-9.
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`13
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`Case 1:22-cv-00058-ADA Document 294 Filed 10/03/24 Page 17 of 24
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`Claim 7 requires all the limitations of claim 1, and additionally that “the microprocessor
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`identity information is an alpha-numeric value.” As detailed above, Gerard in view of Curry
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`and Klein discloses and renders obvious all limitations of claim 1. Supra 11-13. As discussed
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`above in connection with limitation [1e] of the ’497 patent, at least under Plaintiff’s
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`interpretation of this limitation, Gerard in view of Curry and Klein discloses and renders obvious
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`“wherein the microprocessor identity is an alpha-numeric value.” Supra 6-7.
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`2.
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`Claim 3 of the ’008 patent is obvious over Gerard in view of Curry,
`Klein, and Lewis.
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`Each limitation of claim 3 is disclosed or rendered obvious by Gerard in view of Curry,
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`Klein, and Lewis, as explained below, so claim 3 is invalid. As noted above, a POSITA would
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`be motivated to combine Gerard, Curry, Klein, and Lewis and would reasonably expect to
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`succeed in doing so. Supra 3-5