Case 1:22-cv-00058-LY Document 67 Filed 04/12/22 Page 1 of 8
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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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`Plaintiff,
`v.
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`APPLE, INC.,
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`Defendant.
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`Civil Action No. 1:22-cv-58-LY
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`Jury Trial Demanded
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`Plaintiff’s Motion to Supplement Claim Construction Record
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`Plaintiff Identity Security LLC (“Identity”) submits this motion to supplement the claim
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`construction record to add Defendant Apple’s four Petitions for Inter Partes Review (“IPR
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`Petitions”) and the declaration of its expert filed in conjunction with the IPR Petitions, both of
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`which undermine its claim construction arguments in this Court. In particular, Apple argued in its
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`IPR Petitions that certain prior art raised a patentability question and did so without asserting that
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`the so-called “algorithm” limitations are indefinite. If a person of ordinary skill in the art truly
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`would not understand with reasonable certainty the scope of the claims, as Apple argues, then
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`Apple would not be able to make the invalidity arguments it does in its IPR Petitions. Additionally,
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`the expert Apple retained in the PTAB likewise has no trouble understanding the claims and even
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`makes statements that mirror Identity’s claim construction arguments. Further, while Apple tells
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`this Court that the “unique identifier” terms require construction, it took a different position in its
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`IPR Petitions, relying solely on the plain and ordinary meaning of the terms.
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`Apple has tried to game the legal system by adopting contradictory claim construction
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`positions before this Court and in the IPR, even though both proceedings apply the Phillips claim
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`construction standard. Apple purposely seeks to create inconsistent legal rulings for Apple’s own
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`benefit. Plaintiff submits that these inconsistencies undermine Apple’s claim construction
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`positions, and respectfully requests that the Court consider the IPR Petitions and the associated
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`expert declaration as part of the claim construction evidence.
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`BACKGROUND
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`On November 5, 2021, Apple filed its Opening Claim Construction Brief, D.I. 32, arguing
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`that the following “algorithm” terms were indefinite under 35 U.S.C. 112.
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`“wherein the digital identity data is bound to the microprocessor identity by encrypting
`the digital identity data using an algorithm that uses the microprocessor identity” (’497
`claim 1);
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`“wherein the digital identity data is bound to the microprocessor identity device using
`an encryption algorithm and the microprocessor identity information” (’895 claim 5);
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`“wherein the digital identity data is bound to the microprocessor by encrypting, using
`the microprocessor, the digital identity data using an algorithm that uses the
`microprocessor identity information” (’948 claim 1); and
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`“wherein the digital identity data is bound to the microprocessor identity device by
`encoding, using the microprocessor, the digital identity data using an algorithm that
`uses the microprocessor identity information” (’008 claim 1).
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`D.I. 32 at 6. Apple argued that the claim terms should be construed as means-plus-function terms,
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`purportedly rendering them indefinite because of the alleged absence of an algorithm in the
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`specification. D.I. 32 at 6-17. Apple also argued that the “algorithm” terms should be held
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`indefinite regardless of whether means-plus-function interpretation applied. Id. at 17-18.
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`Furthermore, Apple argued for a construction of the so-called “microprocessor identity”
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`terms, proposing that the Court depart from the plain and ordinary meaning and limit the terms
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`such that the identifier that uniquely identifies the microprocessor “does not change once
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`assigned.” Id. at 18-23.
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`Identity submitted its Responsive Claim Construction Brief on December 3, 2021, refuting
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`Apple’s arguments in full. D.I. 33. Apple and Identity exchanged replies and sur-replies. D.I. 41,
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`44. The Court held a Markman hearing on March 9, 2022. D.I. 65.
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`On November 11, 2021, Apple filed IPR Petitions against the four Patents-in-Suit. See
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`Exhibits 1-4. It attached the same declaration of its IPR-only expert Dr. Clifford Neuman to each.
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`See Exhibit 5. Oddly, Identity did not learn of these petitions until March 15, 2022, when its
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`litigation counsel received an email from the Patent and Trademark Appeal Board (“PTAB”) about
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`an overdue filing related to the IPR Petitions. This explains why Identity did not comply with
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`Judge Albright’s requirement—in effect prior to transfer at the time of the petition’s filing—to
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`apprise the Court of any filed IPR petitions. See Exhibit 6 (OGP Ver. 3.5) at 5 (“Plaintiff must file
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`a notice informing the Court when an IPR is filed, the expected time for an institution decision,
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`and the expected time for a final written decision, within two weeks of the filing of the IPR.”).1
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`Given the November 11, 2021, filing, Identity’s response to the IPR Petitions would have
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`been due on February 17, 2022. Once it learned about the IPR Petitions, Identity moved the PTAB
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`for an extension on the Patent Owner’s response, which the PTAB granted on March 29, 2022.
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`Exhibit 7 (extending response deadline to April 18, 2022).
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`The PTAB’s decision on whether to institute trial on the IPR Petitions is not due until July
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`18, 2022.
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`ARGUMENT
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`1.
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`Apple’s IPR Petitions Are Inconsistent With its Claim Construction Positions
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`In its IPR Petitions, Apple argued that the PTAB should give each of the claim terms,
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`including those subject to the disputes before this Court, their plain and ordinary meaning. See,
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`e.g., Exhibit 1 at 4-5. Apple also argued that certain claims of the Patents-in-Suit, including the
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`claims asserted in this case, are invalid as obvious under 35 U.S.C. §103 based on combinations
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`1 It’s also worth noting that Apple’s litigation counsel did not question why Identity had not filed
`the required notice. Indeed, Apple’s litigation counsel have not mentioned the IPR Petitions at all
`in the months since Apple filed them, despite numerous conferences and hearings.
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`of various prior art. Id. at 6-37. These arguments are inconsistent with Apple’s positions before
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`this Court.
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`First, Apple’s request that the PTAB adopt “plain and ordinary” meaning is inconsistent
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`with Apple’s requests to limit the scope of the “microprocessor identity” terms. The plain and
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`ordinary meaning of “microprocessor identity that uniquely identifies the microprocessor” does
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`not require that the identifier be incapable of change. Apple’s position in its IPR Petitions belies
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`Apple’s argument to this Court that there has been a clear and unmistakable disavowal of claim
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`scope. And it certainly undermines Apple’s argument that any disavowal applies to claim
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`limitations that lack “etching” (i.e., all but one of the relevant claims).
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`Second, Apple’s IPR Petitions themselves entirely undermine Apple’s indefiniteness case.
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`The standard for indefiniteness is whether the “claims, read in light of the specification delineating
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`the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in
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`the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
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`2124 (2014). Indefiniteness is not a ground that can be raised during an IPR. See 35 U.S.C. §311(b)
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`(“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of
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`a patent only on a ground that could be raised under section 102 or 103 and only on the basis of
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`prior art consisting of patents or printed publications.”). However, that Apple and its expert witness
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`were able to mount a §103 challenge is evidence that the claims do inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.2 If the contours of the invention
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`were as undiscernible as Apple argues in its claim construction briefing, it could not have filed its
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`2 In its IPR Petitions, Apple relies a different expert than the one who supports its indefiniteness
`claims. The reason for that is that the opinions are irreconcilable.
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`petitions or have its expert wax on for dozens of pages about the prior art purportedly rendering
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`claim limitations obvious.
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`Apple’s expert, Dr. Neuman, takes positions in support of the IPR Petitions that Apple
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`itself attacked during claim construction before this Court. For example, Dr. Neuman easily
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`defines encryption, Ex. 5 at ¶65, and confirms that “[e]ncryption was well known at the time of
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`invention,” id. at ¶66. In arguing one prior art reference with respect to encryption and encoding,
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`Dr. Neuman opines that although the prior art does not describe precisely how the time information
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`is being used to encode and decode information, a skilled artisan would have understood that the
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`prior art is describing an encryption process that uses a key to decode protected information. Id.
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`This is patently inconsistent with Apple’s arguments to this Court that the claims are indefinite
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`because a person of ordinary skill would not know whether to use a computerized algorithm or
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`Julius Caesar’s codex. Dr. Neuman also states that “[i]nputs for an encryption algorithm can either
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`be used as the key, or as information to be encrypted.” Id. at ¶68. This is consistent with Identity’s
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`argument that the claims disclose the inputs to the encryption algorithm, i.e., the digital identity
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`data is the information to be encrypted and the microprocess identity is the encryption key or its
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`seed.
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`2.
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`There Is Good Cause to Supplement the Claim Construction Record
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`Apple’s claim construction arguments are not persuasive, as Identity explained in its
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`briefing and at the Markman hearing; however, supplementation is appropriate given Apple’s
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`inconsistent positions. When ruling on a motion to supplement, “courts should consider the harm,
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`if any, that would result from supplementation, and whether the proposed evidence enhances the
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`Court’s truth-finding function.” Prowess, Inc. v. Raysearch Labs., AB, 953 F. Supp. 2d 638, 655
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`(D. Md. 2013) (quotations omitted). The only harm from supplementation is harm to Apple’s
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`contrived indefiniteness case and claim construction arguments. That is no harm at all. Further,
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`the proposed evidence indisputably enhances the Court’s truth-finding function. Apple should not
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`be permitted to talk out of both sides of its mouth, including and especially when it seeks to strike
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`down Identity’s patents under a clear and convincing standard. And even if weakening Apple’s
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`arguments constituted “harm”—which it does not—enhancement of the Court’s truth-finding
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`function vastly outweighs any “harm” to Apple’s already-unavailing arguments. In Prowess, the
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`court granted the motion to supplement the claim construction with a PowerPoint presentation in
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`part because “the document may aid in the Court’s truth-finding function and that consideration
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`of the PowerPoint, to the extent it is warranted, would not prejudice Prowess.” 953 F. Supp. 2d, at
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`658. The facts of this case justify the same result.
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`Further, timeliness does not counsel against supplementation. To the contrary, the facts
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`militate in favor of permitting supplementation. As discussed above, Identity did not have an
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`opportunity to raise this issue with the Court until after claim construction proceedings because it
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`did not know of the IPR Petitions until then. And, remarkably, Apple failed to disclose the
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`existence of its IPR Petitions to Judge Albright or this Court. Identity filed the instant motion as
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`soon as practicable after its discovery and review of the IPR Petitions. Prowess, 953 F. Supp. 2d,
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`at 656 (motion filed two weeks after discovery of information deemed timely); Flexuspine, Inc. v.
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`Globus Medical, Inc., 2016 WL 3536709, at *2 (E.D. Tex. Apr. 8, 2016) (granting motion to
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`supplement claim construction record for material first produced after claim construction);
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`Tristata, Inc. v. Microsoft Corp., 2013 WL 5645984, at *9 (N.D. Cal. Oct. 16, 2013) (same). In
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`fact, Apple cannot argue untimeliness given that it and its litigation counsel said nothing about the
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`IPR Petitions for several months and laid behind the log, when they very likely recognized that
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`Identity and its litigation counsel were unaware of the IPR Petitions until March 15, 2022.
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`Finally, supplementing the record is particularly important here, where Apple has taken
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`contradictory claim construction positions in two forums that apply the exact same claim
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`construction standard under Phillips. Apple, through its contradictory theories, has intentionally
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`created the risk of inconsistent rulings in parallel proceedings, which could only be harmonized
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`through years of appeals. Supplementation of the record will allow the Court to consider all of
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`Apple’s claim construction arguments—including those from the IPR that only further
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`demonstrate that Identity’s claim constructions are correct—when construing the claims.
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`***
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`In sum, given the absence of harm and prejudice to Apple and the enhancement of the
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`Court’s truth-finding function, Identity respectfully requests that the Court grant its motion and
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`supplement the claim construction record with Apple’s IPR Petitions and Dr. Neuman’s
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`declaration, attached as Exhibits 1-5 to this Motion.
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`Dated: April 12, 2022
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`Respectfully submitted,
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`SUSMAN GODFREY LLP
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`/s/ John P. Lahad ________________
`John P. Lahad
`jlahad@susmangodfrey.com
`Texas Bar No. 24068095
`Brian D. Melton
`bmelton@susmangodfrey.com
`Texas Bar No. 24010620
`Meng Xi
`mxi@susmangodfrey.com
`CA Bar No. 280099
`Taylor Hoogendoorn
`thoogendoorn@susmangodfrey.com
`D.C. Bar No. 1672463 (Admitted pro hac vice)
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002
`Tel: (713) 651-9366
`Fax: (713) 654-6666
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`Attorneys for Plaintiff Identity Security LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 12, 2022, this document properly was served on counsel of
`record via electronic filing in accordance with the USDC, Western District of Texas Procedures
`for Electronic Filing.
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`/s/ John P. Lahad
`John P. Lahad
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`CERTIFICATE OF CONFERENCE
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`I hereby certify that on April 12, 2022, the undersigned invited counsel for Apple to meet
`and confer if Apple did not oppose the instant motion. There was no response.
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`/s/ John P. Lahad
`John P. Lahad
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