Spectrum Brands, Inc.v.ASSA ABLOY AB

Patent Trial and Appeal Board

Jan 15, 2016

11397542 (P.T.A.B. Jan. 15, 2016)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: January 15, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SPECTRUM BRANDS, INC.,
Petitioner,
v.
ASSA ABLOY AB,
Patent Owner.

Case IPR2015-01563
Patent 7,706,778

Before RAMA G. ELLURU, BEVERLY M. BUNTING, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Spectrum Brands, Inc. (“Petitioner”) filed a Petition requesting inter
partes review of claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and 34
(the “challenged claims”) of U.S. Patent No. 7,706,778 (Exhibit 1001, “the
’778 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1 (“Pet.”). Patent
Owner, Assa Abloy AB. (“Patent Owner”) waived filing of a Preliminary
Response to the Petition. Paper 6. We have jurisdiction under 35 U.S.C.
§ 314, which provides that an inter partes review may not be instituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.”
Upon consideration of the information presented in the Petition, and
for the reasons explained below, we determine that Petitioner has not
established a reasonable likelihood that the challenged claims are
unpatentable. Accordingly, we decline to institute an inter partes review of
the challenged claims of the ’778 patent.

II. BACKGROUND
A. Related Matters
The parties indicate that the ’778 patent is the subject of the following
district court action: HID Global Corporation et al. v. Kwikset Corporation
et al., No. 14-cv-00947-CJC-DFM (C.D. Cal.). Pet. 5, Paper 5, 2. Petitioner
filed an additional petition requesting inter partes review of the following
related patent: U.S. Patent No. 8,150,374 (IPR2015-01562).1 Id.

1 IPR2015-01440 and IPR2015-01441 involving the ’778 patent and U.S.
Patent No. 8,150,374, respectively, were both terminated pursuant to a
settlement agreement.
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B. The ’778 Patent (Ex. 1001)
The ’778 patent is directed to the use of mobile devices in an access
control system to control “access to assets, places, or things by having
access credentials remotely assigned and revoked.” Ex. 1001, 1:20–21. As
shown in Figure 1, reproduced below, the system 100 automatically and
remotely updates credential information associated with the mobile device.

Figure 1 is a diagrammatic view of a system for authenticating mobile
devices and remotely updating associated credentials. Id. at 4:40–42.
System 100 includes controller 102 coupled to a plurality of readers 108 via
interconnecting hub 104. Id. at 4:66–5:1. The controller also communicates
with at least one of the plurality of mobile devices 112 via communication
network 116. Id. at 6:61–63. The reader is associated with a particular
asset, and “is adapted for exchanging information with the controller 102
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and for requesting data from the mobile device 112 to verify the authenticity
of the mobile device.” Id. at 6:9–13.
The mobile device contains a memory 200 that “may be selectively
modified and/or erased by the controller 102 and/or the reader 108.” Id. at
8:1–3. Identification information, including “credential information of the
user of the mobile device 112, for instance, unique IDs, manufacture IDs,
passwords, keys, encryption schemes, transmission protocols, and the like”
is loaded into the mobile device memory. Id. at 8:9–12. The mobile device
memory also includes self-authenticating data, e.g., “assets the mobile
device 112 has access to, times of allowed access to each asset, and other
data that can assist the mobile device in determining if it is eligible to gain
access to a particular asset” (Id. at 8:22–25) and self-authenticating
functions, e.g., “us[ing] the self-authenticating data to enable the mobile
device 112 to make a determination of its own access rights with respect to
an asset” (Id. at 8:25–28).
Upon presentation of the mobile device to the reader, the reader
provides asset information and time of day information to the mobile device.
Id. at 8:35–38. The mobile device analyzes the asset information and time
of day information using its self-authenticating data to determine whether it
is allowed to access the asset. Id. at 8:38–41. If the mobile device
determines that it is allowed access to the asset (Id. at 8:44–45), it sends a
signal to the reader “indicating that validation of the mobile device 112 has
been confirmed and access should be granted” so that the reader allows
access to the asset. Id. at 8:46–47.
The ’778 patent further describes in Figure 3 a method for
automatically and remotely updating credential information on the mobile
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device. Id. at 9:36–39; Fig. 3. For example, if credential information used
by a mobile device to verify its authenticity is changed at the controller, the
memory of the mobile device is likewise updated. Id. at 9:40–10:6. In
another embodiment of a method for automatically and remotely updating
credential information on the mobile device, described in Figure 4, a time
interval between credential updates is determined. Id. at 10:7–23. New
credential information is sent to the readers and the mobile devices
periodically to keep self-authenticating data and/or functions active and up
to date. Id. at 10:51–54.

C. Illustrative Claim
Of the challenged claims, claims 1, 16 and 33 of the ’778 patent are
independent. Claim 1 is illustrative of the challenged claims and is
reproduced below:
1. A method of remotely maintaining a secure access
system, comprising:
receiving, at a secure access system controller, a
credential update for at least one user of the secure
access system;
in response to receiving the credential update, said
controller automatically initiating a system update
process, the system update process comprising:
generating a message comprising information
representing the credential update;
determining at least one target for said message,
wherein said at least one target comprises at least
one mobile device associated with the at least one
user; and
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transmitting said message to said at least one target;
and
wherein said at least one mobile device has a first set of
credential data stored thereon, wherein upon receiving
said message from said controller, said first set of
credential data is changed to a second different set of
credential data, wherein said message is transmitted to
said at least one mobile device without receiving a
request for said message from said at least one user,
wherein said at least one mobile device is a smart
mobile device, wherein said first set of credential data
comprises self-authenticating data, wherein said
second set of credential data comprises different self-
authenticating data, and wherein said self-
authenticating data enables said at least one mobile
device to make a determination of its own access
rights with respect to an asset.
Ex. 1001, 12:34–12:60.

D. Evidence Relied Upon
Petitioner relies on the following prior art references (Pet. 9–10):
Reference Patent/Printed Publication Date Exhibit
Nielsen U.S. Patent Application
Publication No.
2002/0180582
Dec. 5, 2002 1002
Karkas et
al.
(“Karkas”)
U.S. Patent Application
Publication No.
2002/0031228
March 14, 2002 1003

E. Asserted Grounds of Unpatentability
Petitioner challenges claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31,
33, and 34 of the ’778 patent based on the asserted grounds of
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unpatentability set forth in the table below. Pet. 10. In support of the
grounds of unpatentability referenced below, Petitioner relies on the
Declaration of Dr. Mathew Green. Ex. 1004.
Reference Basis Claims Challenged
Nielsen and
Karkas § 103
1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31,
33, and 34
Nielsen,
knowledge of a
person of
ordinary skill in
the art
§ 103 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and 34

III. ANALYSIS
A. Claim Interpretation
As a step in our analysis for determining whether to institute a review,
we determine the meaning of the claims for purposes of this decision. In an
inter partes review, claim terms in an unexpired patent are given their
broadest reasonable construction in light of the specification of the patent in
which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed
Tech., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015) (“Congress implicitly
approved the broadest reasonable interpretation standard in enacting the
[America Invents Act],” and “the standard was properly adopted by PTO
regulation”). Under the broadest reasonable interpretation standard, and
absent any special definitions, claims terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
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phrases must be set forth with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Petitioner proposes that we adopt claim constructions espoused by
Patent Owner in other proceedings. Pet. 16–21. For purposes of this
decision, we address below the construction of the claim term “self-
authenticating data.” This term appears in each independent challenged
claim, claims 1, 16, and 33.
According to Petitioner, “self-authenticating data” should be
construed as “data that can assist the mobile device in determining if it is
eligible to gain access to a particular asset.” Id. at 17 (citing Ex. 1006, A16).
To support this construction, Petitioner directs our attention to the following
portion of the specification describing examples of self-authenticating data
as:
assets the mobile device 112 has access to, times of allowed
access to each asset, and other data that can assist the mobile
device in determining if it is eligible to gain access to a
particular asset.
Id. (citing Ex. 1001, 8:21–28; Ex. 1006, A17) (emphasis added). Thus,
Petitioner argues that the self-authenticating data “allows the mobile device
to make some determination of eligibility on its own” Pet. 18.
We must first consider the term “self-authenticating data” in the
context of the entire claim. For example, claim 1 recites:
wherein said first set of credential data comprises self-
authenticating data, wherein said second set of credential data
comprises different self-authenticating data, and wherein said
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self-authenticating data enables said at least one mobile device
to make a determination of its own access rights with respect to
an asset.
Ex. 1001, 12:55–60 (emphasis added). As Petitioner recognizes, the “self-
authenticating data” assists the mobile device in determining if it is eligible
to gain access to a particular asset. Id. at 8:24–25. The Specification further
describes how “[t]he self-authenticating functions use the self-authenticating
data to enable []mobile device 112 to make a determination of its own
access right with respect to an asset.” Id. at 8:25–28 (emphasis added). The
Specification clarifies, for example, that the mobile device analyzes the
asset information and time of day information provided by reader 108 using
its self-authenticating data, and then the mobile device determines whether
it is allowed access to the asset. Id. at 8:35–44. If the mobile device
determines that it is allowed access, “it sends a signal back to the reader
indicating that validation of the mobile device 112 has been confirmed and
access should be granted.” Id. at 8:44–48. Our understanding that the
mobile device uses the self-authenticating data in determining its own
access rights with respect to an asset, is further confirmed by Patent
Owner’s statement from the file history. During prosecution, the Patent
Owner stated that the self-authenticating data “enables the mobile device to
make a determination of its own access rights with respect to an asset” Ex.
1006, A18 (citing Ex. 1005, 36).
Upon considering the claim language and Specification, we determine
that the broadest reasonable construction of “self-authenticating data” is “data
that can assist the mobile device in determining if it is eligible to gain access
to a particular asset.”
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Having considered Petitioner’s contentions in view of the
Specification, and for purposes of this decision, we determine that no other
claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms that
are in controversy need be construed, and only to the extent necessary to
resolve the controversy”).

B. Obviousness based on Nielsen and Karkas
We now turn to Petitioner’s asserted grounds of unpatentability.
Petitioner contends claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and
34 are unpatentable under 35 U.S.C. § 103 as having been obvious based on
Nielsen and Karkas. Pet. 26–55.
Having considered the explanations and supporting evidence
presented, we are not persuaded that, based on the record before us,
Petitioner presents sufficient evidence to demonstrate a reasonable
likelihood that it would prevail with respect to its contention that challenged
claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and 34 would have been
obvious over Nielsen and Karkas. A detailed analysis of our determination
follows after a brief overview of Nielsen and Karkas.
1. Overview of Nielsen (Ex. 1002 )
Nielsen discloses an access control system for controlling access to a
location and a method of managing a predetermined access right to the
location. Ex. 1002 ¶ 1. Figure 2b, reproduced below, illustrates one
embodiment of a lock control system.
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Figure 2b illustrates a block diagram of a system
for controlling access to a location. Id. ¶ 105.
The lock control system includes an electronic key device 201, e.g., a mobile
phone, equipped to communicate with both lock control unit 221 and access
code management system 211. Id. ¶¶ 125, 127. The access code
management system also is in communication with the lock control unit. Id.
¶ 128. Nielsen further describes how the access code management system
generates and administers access codes, and transmits these access codes to
the electronic key device and/or lock control unit upon request from a user,
automatically, or periodically. Id. Similarly, the access code management
system may “automatically, or upon request, invalidate access codes by
sending a corresponding control signal to the lock control unit 221 and/or
the electronic key device 201.” Id. Nielsen further teaches that,
When data items comprising access codes are received by the
aerial 504 [of the electronic key device] from the access code
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management system or a service provider, they are routed via
the circuit 505 to the SIM card 506, where the control unit 508
stores the data in the memory 507b.

Id. ¶ 152.
As described with respect to Figure 3, the process of managing access
rights includes the steps of generating access codes and storing the generated
access codes in a database associated with the access code management
system (Id. ¶ 132), and transferring the access codes from the access
management system to the lock control unit and electronic key device (Id. ¶
133). Nielsen further discloses that the electronic key device includes a
memory 507, and that the received access codes are stored in the memory.
Id. ¶¶ 151–152. As described in Figure 5a, upon request from the user, the
access code is retrieved from the memory of the electronic key device and
displayed on an associated display 520. Id. ¶ 153. The user issues a
command for initiating use of the selected access code, and the selected
access code is transmitted to the lock control unit or alternatively, the access
code management system. Id. ¶ 154. Alternatively, the access code is
transmitted via a data or telephone communications channel. Id. ¶ 163. As
described further with respect to Figure 6a, the lock control unit verifies the
access code received from the electronic key device with access codes stored
in its memory, and “[i]f the received access code corresponds to one of the
valid stored access codes, the lock mechanism is operated” to grant access to
the location. Id. ¶162.
2. Overview of Karkas (Ex. 1003)
Karkas discloses an access device for receiving a key and validity
information, establishing a connection with another party, and providing the
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key and validity information to that party. Ex. 1003, Abstract. “If the key
and validity information are determined by the other party to be valid[,]
access is provided.” Id. As shown in Figure 3, mobile station 8 is in
communication with Bluetooth device 24, which may be “a lock or an access
device.” Id. ¶¶ 24, 25. The mobile station may also be in communication
with base transceiver station 6. Id. ¶ 30. Karkas describes the mobile
station as having a processor 14, memory 18, display 16, first antenna 10
and second antenna 20. Id. ¶¶ 17–21, Figure 2.
Karkas further discloses a method that includes the steps of
establishing a connection between the mobile station and the network via the
base receiver station, wherein server 40 provides the mobile station with key
information and additional information (Id. ¶¶ 31, 32); the mobile station
establishes a connection with the Bluetooth device and sends the key to the
Bluetooth device (Id. ¶¶ 35–36); the Bluetooth device checks the validity of
the key by decrypting and comparing the key to information stored on the
Bluetooth device, and provides access if the key is valid (Id. ¶¶ 37–38). The
key may have an identification tag which identifies the service provider (Id.
¶ 39), or a time limit (Id. ¶ 41). Karkas further discloses that “[t]he validity
time for the key can be in the non-encrypted part of the key so that the
mobile station can remove it automatically.” (Id. ¶ 49) Alternatively, Karkas
discloses that the validity time for the key may be encrypted, so that “the
mobile station can automatically delete those keys which are out of date.”
Id. ¶ 53.
3. Discussion
A claim is unpatentable under § 103(a) if “the differences between the
[claimed] subject matter . . . and the prior art are such that the subject
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matter[,] as a whole[,] would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations, including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of skill in the art; and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Against this backdrop, we analyze this asserted ground based on
obviousness, with the principles identified above in mind.
It is Petitioner’s obligation to explain clearly the arguments and
evidence upon which it relies for each limitation of a claim challenged in a
petition. See 37 C.F.R. § 42.22(a)(2) (the petition must include “[a] full
statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence” (emphasis added)). See also
37 C.F.R. § 42.104 (b)(4). Petitioner asserts broadly that Nielsen discloses
“nearly all of the limitations of the Challenged Claims of the ’788 patent”
and relies on Karkas for the missing limitations. Pet. 27 (citing Ex. 1004 ¶
54). To demonstrate which teachings in Nielsen and Karkas satisfy the
limitations of the claims, the Petitioner includes a claim chart identifying
quotations in the reference that it alleges correspond with claim elements.
Id. at 31–55.
a. “Self-authenticating Data”
Petitioner argues that the combination of Nielsen and Karkas teaches
the “self-authenticating data” claim term recited in claims 1, 16 and 33. Id.
at 28–29. “Self-authenticating data,” according to Petitioner, includes
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expiration times associated with credentials “because these expiration times
allow a mobile device to determine that it is no longer eligible to gain access
to a particular asset.” Id. at 28.
Acknowledging that Nielsen discloses access codes that automatically
expire, but does not disclose that the mobile device itself performs the
expiration analysis, Petitioner argues that “Karkas discloses ‘self-
authenticating data’ and expressly states that is used on a mobile device.”
Id. (citing Ex. 1004 ¶¶ 37–39, 57). To support this argument, Petitioner first
directs us to the disclosure in Karkas regarding the use of keys “that have a
time limit beyond which it is not valid” (Id. (citing Ex. 1003 ¶ 41)) and that
“if the key is no longer valid, the mobile device in Karkas automatically
removes it” ( Id. (citing Ex. 1003 ¶ 49, 53). Relying on the testimony of Dr.
Green, Petitioner concludes that the expiration data for the key “assists the
mobile device in determining whether it has access to an asset” (Id. (citing
Ex. 1004 ¶ 58)) because “[i]f the key has expired, the mobile device in
Karkas independently recognizes that the key no longer provides access to
an asset, and removes it from the device” (Id. (citing Ex.1004 ¶ 57).
As noted above, we adopt Petitioner’s construction of “self-
authenticating data” as “data that can assist the mobile device in determining
if it is eligible to gain access to a particular asset.” We are not persuaded
Petitioner’s arguments and evidence demonstrate sufficiently that Karkas
discloses that the “self-authenticating data” enables the mobile device in
making a determination of its own access rights with respect to the asset.
Dr. Green’s testifies that this limitation is met by the description in Karkas
concerning the automatic removal of expired keys by “encrypting certain
elements of the access code, but not encrypting other elements” (Ex. 1004 ¶
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57 (citing Ex. 1003 ¶ 49)). Dr. Green opines that “[s]uch expiration data for
a key assists the mobile device in determining whether it has access to an
asset, and Karkas’ teachings on expiration data therefore disclose ‘self-
authenticating data.’” Ex. 1004 ¶ 58.
To the extent Petitioner and Dr. Green argue that a time limit
embedded in a key represents data, we agree. Nonetheless, neither
Petitioner nor Dr. Green explain sufficiently how the automatic removal of
the key from the memory of the mobile device is data that enables the
mobile device “to make a determination of its own access rights with respect
to an asset.” (emphasis added). Petitioner and Dr. Green do not direct us to
sufficient disclosure in Karkas regarding the mobile phone itself using the
expired key or erased key to determine its own access rights with respect to
an asset. For example, Petitioner and Dr. Green have not identified any
description in Karkas that, after automatically removing an expired key (Ex.
1003 ¶ 53), the mobile phone itself would somehow know that it no longer
has access rights to a particular asset. To the contrary, our review of Karkas
reveals that the Bluetooth device is used to determine such access rights.
See e.g., Ex. 1003 ¶¶ 36–38:
Once the Bluetooth connection has been established, in step S4
the mobile station sends the key information to the Bluetooth
device…In step S5, the Bluetooth device will check the validity
of the key. In particular, the Bluetooth device attempts to
decrypt the keys and will compare it with key information
which it has stored thereon. In step S6, if the key is valid, then
the Bluetooth device 24 will provide access (emphasis added).

Based on the current record, we are not persuaded by Petitioner that
Karkas’ automatic removal of the expired key from the mobile device is
“self-authenticating data,” as we have construed this term, that “enables at
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least one mobile device to make a determination of its own access rights
with respect to an asset.”
b. “Smart Mobile Device”
Next, we consider Petitioner’s argument that the combination of
Nielsen and Karkas teaches the limitation in claims 1 and 16 requiring a
“smart mobile device.” Pet. 29. Petitioner asserts that a “smart mobile
device may be construed to mean ‘a mobile device that determines its own
access rights and permissions.’” Id. at 21 (citing Ex. 1004 ¶¶ 24–25).
Petitioner further acknowledges that “it is not explicit [in Nielsen] that the
mobile phone may determine its own access rights and permissions.” Id. at
29 (citing Ex. 1004 ¶ 62). According to Petitioner, Karkas teaches mobile
phones that use keys and act as “smart mobile devices” because the mobile
phone “deletes keys when it determines the associated access rights and
permissions are no longer valid.” Id. (citing Ex. 1004 ¶ 58). As discussed
supra, however, neither Petitioner nor Dr. Green provide persuasive analysis
that supports Petitioner’s conclusion that Karkas describes a mobile phone
using the expired key or erased key to determine its own access rights and
permissions with respect to an asset.
c. Remaining Dependent Claims
Petitioner’s analysis of the dependent claims do not cure the
deficiency discussed above. Therefore, for the same reasons as discussed
supra with respect to claims 1, 16, and 33, our determination concerning the
insufficiency of Petitioner’s evidence applies equally to dependent claims 4,
6, 8, 10–14, 17–18, 22–25, 28–31, and 34.
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d. Combination of Nielsen and Karkas
We also deny institution of the asserted grounds for the additional,
independent reason that Petitioner has failed to articulate a sufficient
rationale to combine the teachings of Nielsen and Karkas to arrive at the
claimed invention. As to each of the challenged claims, Petitioner asserts
that “it would have been obvious for skilled artisans to combine Nielsen
with Karkas.” Pet. 26. Relying on the testimony of Dr. Green, Petitioner
reasons that “both references were published in the same year, and both
disclose analogous access control systems” (Id. (citing Ex. 1004 ¶ 48), and
that “[b]oth references describe using mobile devices as keys, electronic
locks, and a central management system” (Id. citing Ex. 1004 ¶¶ 34–37).
For example, Petitioner notes that Nielsen discloses electronic key devices,
lock control units and a central access code management system; Karkas
discloses mobile stations, Bluetooth devices and a central control element;
and both Nielsen and Karkas disclose mobile phones with embedded
electronic access codes and similar wireless communication protocols. Id. at
27 (citing Ex. 1002 ¶¶ 1, 128; Ex. 1003 ¶¶ 24, 45, 49; Ex. 1004 ¶28, 35, 37,
and 48). Thus, Petitioner concludes “[b]ecause the access control systems in
Nielsen and Karkas are so similar, many features disclosed in Karkas are
readily compatible and easily incorporated into Nielsen.” Id. (citing Ex.
1004 ¶ 50).
Petitioner does not provide sufficient articulated reasoning with
rational underpinning explaining why one with ordinary skill in the art
would modify the teachings of the applied references to address the noted
differences. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained
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by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.”)). Petitioner’s observation that both references were
published in the same year and are from the same field of endeavor falls
short of an adequate rationale. The same field of endeavor analysis is
merely the jumping-off point in the determination of whether a claimed
invention is obvious. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis,
references must be analogous art—either from the same field of endeavor, or
reasonably pertinent to the problem with which the inventor is involved).
Moreover, as explained in KSR, “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR, 550 U.S. at 418.
Here, Petitioner’s arguments do not provide the required articulated
reasoning with rational underpinning, based on the evidence, to support the
legal conclusion of obviousness. Petitioner’s conclusory argument regarding
the general feasibility of incorporating the features of Karkas into Nielsen do
not explain adequately how or why a person of ordinary skill in the art
would attempt to improve Nielsen by looking to Karkas. Thus, having
considered Petitioner’s arguments, we are not persuaded Petitioner has
provided an articulated reasoning with rational underpinning sufficient to
support the legal conclusion of obviousness.
4. Summary
Having considered fully the parties’ arguments and evidence, on the
current record, Petitioner does not demonstrate a reasonable likelihood that it
would prevail as to its contention that claims 1, 4, 6, 8, 10–14, 16–18, 22–
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25, 28–31, 33, and 34 would have been obvious over the combination of
Nielsen and Karkas. Accordingly, we do not institute an inter partes review
of claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and 34 as obvious over
Nielsen and Karkas.
C. Obviousness Ground Based on Nielsen and the Knowledge of a
Person of Ordinary Skill in the Art
Petitioner also challenged claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–
31, 33, and 34 as rendered obvious under 35 U.S.C. § 103(a) over Nielsen
and the knowledge of a person of ordinary skill in the art (“POSITA”). Pet.
55–59.
We are not persuaded that, based on the record before us, Petitioner
presents sufficient evidence to demonstrate a reasonable likelihood that it
would prevail with respect to its contention that challenged claims 1, 4, 6, 8,
10–14, 16–18, 22–25, 28–31, 33, and 34 are obvious over Nielsen and the
knowledge of the POSITA.
1. Discussion
Petitioner argues that Nielsen “discloses a system that is substantially
similar to the secure access system disclosed in the ’778 Patent” (Pet. 55)
and that the claim charts demonstrate “where almost all of the limitations of
the Challenged Claims are disclosed in Nielsen” (Id.). As to the missing
limitations, Petitioner asserts that the challenged claims are “obvious to a
person of ordinary skill in the art in view of the teachings in Nielsen” (Id. at
56).
a. Self-Authenticating Data
With respect to the claim term “self-authenticating data” recited in
claims 1, 16, and 33, Petitioner argues that Nielsen discloses access codes or
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21

keys that automatically expire, but does not “disclose expressly that the
mobile device uses the expiration data about the access code to determine
whether it can access a particular asset. Id. (citing Ex. 1004 ¶¶ 72–74).
Relying on the testimony of Dr. Green, Petitioner explains that a skilled
artisan would have modified Nielsen to allow the mobile phone to remove
expired access codes so that the “mobile phone would self-authenticate itself
by determining those expired access codes could no longer be used to access
a secure location.” Id. at 57 (citing Ex. 1004 ¶ 75).
Petitioner’s arguments in this regard are not persuasive. As discussed
supra, we construe “self-authenticating data” as “data that can assist the
mobile device in determining if it is eligible to gain access to a particular
asset,” and the recited self-authenticating data “enables said at least one
mobile device to make a determination of its own access rights with respect
to an asset.” Neither Petitioner nor Dr. Green provide any persuasive
analysis to support Petitioner’s contention that a skilled artisan would have
modified Nielsen in the manner it suggests. Instead, Petitioner’s assertion
that such modification would be advantageous “because removing expired
access codes would conserve limited memory on the mobile phone and limit
the number of access codes that a user would have to sift through when
selecting codes to use” ( Id. (citing Ex. 1004 ¶¶ 77–79)) seemingly supports
saving memory and not authentication by the mobile phone.
Having considered Petitioner’s argument in this regard, we are not
persuaded that Petitioner’s articulated reasoning has a rational underpinning
and is sufficient to justify the proposed combination of Nielsen and the
knowledge of the POSITA. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d
1343, 1354 (Fed. Cir. 2013):
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Patent 7,706,778
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Where, as here, the necessary reasoning is absent, we cannot
simply assume that ‘an ordinary artisan would be awakened to
modify prior art in such a way as to lead to an obviousness
rejection.’ It is in such circumstances, moreover, that it is
especially important to guard against the dangers of hindsight
bias.” (citation omitted)

See also KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of
the distortion caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning.”).
b. Remaining Dependent Claims
Petitioner’s analysis of the dependent claims do not cure the
deficiency discussed above. Therefore, for the same reasons as discussed
supra with respect to claims independent 1, 16, and 33, our determination
concerning the insufficiency of Petitioner’s evidence applies equally to
dependent claims 4, 6, 8, 10–14, 17, 18, 22–25, 28–31, and 34.
2. Summary
Having considered fully the parties’ arguments and evidence, on the
current record, Petitioner does not demonstrate a reasonable likelihood that it
would prevail as to its contention that claims 1, 4, 6, 8, 10–14, 16–18, 22–
25, 28–31, 33, and 34 would have been obvious over the combination of
Nielsen and POSITA. Accordingly, we do not institute an inter partes
review of claims 1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31, 33, and 34 as
obvious over Nielsen and POSITA.

IV. CONCLUSION
For the foregoing reasons, we determine that Petitioner has not
demonstrated a reasonable likelihood that at least one challenged claim is
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23

unpatentable based on the asserted grounds. We, therefore, do not institute
an inter partes review on any of the asserted grounds as to any of the
challenged claims.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review as to claims 1, 4, 6, 8, 10–14,
16–18, 22–25, 28–31, 33, and 34 of the ’778 patent is DENIED.

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Patent 7,706,778
24

PETITIONER:
Michelle E. Armond
BoxSPEBRL@knobbe.com
John B. Sganga, Jr.
2jbs@knobbe.com
Brenton R. Babcock
2brb@knobbe.com

PATENT OWNER:
Benjamin Deming
bdeming@rutan.com