Koninklijke Philips N.V.

Patent Trials and Appeals Board

Aug 17, 2021

IPR2021-00497 (P.T.A.B. Aug. 17, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: August 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

TCL INDUSTRIES HOLDINGS CO., LTD.,
Petitioner,

v.

KONINKLIJKE PHILIPS N.V.,
Patent Owner.
____________

IPR2021-00497
Patent 10,298,564 B2
_______________

Before KEVIN F. TURNER, ROBERT J. WEINSCHENK, and
RUSSELL E. CASS, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
A. Background and Summary
TCL Industries Holdings Co., Ltd. (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 1–11, 14–23,
25, and 28 (“the challenged claims”) of U.S. Patent No. 10,298,564 B2
(Ex. 1001, “the ’564 patent”). Koninklijke Philips N.V. (“Patent Owner”)
filed a Preliminary Response (Paper 7, “Prelim. Resp.”) to the Petition.
With our authorization, Petitioner filed a Reply (Paper 8, “Reply”), and
Patent Owner filed a Sur-reply (Paper 9, “Sur-reply”).
An inter partes review may not be instituted unless “the information
presented in the petition . . . and any response . . . shows that there is a
reasonable likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We
determine that Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that at least one of the challenged claims of the ’564
patent is unpatentable. Accordingly, the Petition is denied, and no trial is
instituted.
B. Real Parties in Interest
Petitioner identifies itself and the following entities as the real parties
in interest: 1) TCL Electronics Holdings Ltd.; 2) TCL King Electrical
Appliances (Huizhou) Co. Ltd.; 3) TTE Technology, Inc.; 4) TCL Moka
International Ltd.; 5) TCL Moka Manufacturing S.A. de C.V.; 6) TCL Smart
Device (Vietnam) Company Ltd.; 7) TCL Industries Holdings (HongKong)
Co. Ltd.; 8) TTE Corporation; 9) TCL Holdings (BVI) Limited;
10) Shenzhen TCL New Technology Co., Ltd.; and 11) TCL Technology
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Group Corporation. Pet. 1–2. Patent Owner identifies itself and Philips
North America LLC as the real parties in interest. Paper 6, 2.
C. Related Matters
The parties indicate that the ’564 patent is the subject of the following
International Trade Commission (“ITC”) investigation: In the Matter of
Certain Digital Video-Capable Devices and Components Thereof, Inv. No.
337-TA-1224. Pet. 4; Paper 6, 2. The parties indicate that the ’564 patent
also is the subject of several district court cases, including: Koninklijke
Philips N.V. v. TTE Technology, Inc., Case No. 2:20-cv-01406 (C.D. Cal.).
Pet. 2–4; Paper 6, 3. The parties also identify several other petitions for
inter partes review that involve related patents. Pet. 4; Paper 6, 2–3.
D. The ’564 Patent
The ’564 patent relates to a system for communicating secure content
from a first communication device to a second communication device by
using a commonly-shared secret to perform a distance measurement between
the first and second communication devices. Ex. 1001, code (57). The ’564
patent explains that this system allows a user to watch a movie the user owns
on a neighbor’s television screen if the user (or a device that the user owns)
is near the neighbor’s television screen, but prevents the movie from being
played from a transmitting device at a remote location (for example over the
Internet). Id. at 2:14–27.
An overview of the steps performed by the first communication
device and second communication device is shown in Figure 2, reproduced
below.
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Id. at Fig. 2. As shown in Figure 2, first device 201 has content that second
device 203 has requested. Id. at 5:22–27. In step 205, first device 201
authenticates second device 203, for example, by checking whether device
203 is a compliant device and really is the device identified to the first
device. Id. at 5:28–33. Then, in step 207, first device 201 exchanges a
secret with second device 203, such as a randomly generated bit word,
which may be carried out using a key management protocol. Id. at 5:33–38.
Then, in step 209, first device 201 transmits a signal for distance
measurement to second device 203. Id. at 5:39–42. The second device
modifies the received signal according to the secret, and retransmits the
modified signal back to the first device. Id. First device 201 measures the
round trip time between the transmission and receipt of the signal and
checks to see if the returned signal was modified according to the exchanged
secret. Id. at 5:42–46. If the round trip time is less than a predetermined
interval, first device 201 is allowed to send protected content to second
device 203. Id. at 6:24–27.
The step of performing an authenticated distance measurement is
shown in Figure 3, illustrated below.
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Id. at Fig. 3. In Figure 3, first device 301 and second device 303 have
exchanged a secret, which is stored in memory 305 of the first device and
memory 307 of the second device. Id. at 6:28–32. In order to perform the
distance measurement, transmitter 3051 transmits a signal to second device
302, which receives the signal using receiver 311. Id. at 6:33–36. Second
device 303 modifies the signal (313) using the locally stored secret
according to rules known by first device 301, and transmits the modified
signal back to the first device. Id. at 6:34–39. First device 301 receives the
modified signal using receiver 317 and compares it to a locally modified
signal, which is created by taking the original signal transmitted by the first
device to the second device and modifying it using the first device’s locally

1 The ’564 patent appears to erroneously refer to the transmitter using
reference number 309. Ex. 1001, 6:34.
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stored secret (319). Id. at 6:39–45. If the received modified signal and the
locally modified signal are identical, the received signal is authenticated. Id.
at 6:46–49. In 323, first device 301 calculates the distance between the first
and second devices, such as by measuring the time from the transmission of
the signal from the first device to the receipt of the signal by the second
device. Id. at 6:52–57.
E. Illustrative Claim
Of the challenged claims, claim 1 is the only independent claim and is
reproduced below.
1. A second device for receiving delivery of a protected
content from a first device, the second device comprising a
processor circuit, the processor circuit arranged to execute
instructions, the instructions arranged to:
provide a certificate to the first device prior to receiving a
first signal, wherein the first signal is sent by the first device,
wherein the certificate is associated with the second device;
receive the first signal when the certificate indicates that
the second device is compliant with at least one compliance
rule;
create a second signal, wherein the second signal is
derived from a secret known by the second device;
provide the second signal to the first device after
receiving the first signal, wherein the second signal is received
by the first device; and
receive the protected content from the first device when
the first device determines that the second signal is derived
from the secret and a time between the sending of the first
signal and the receiving of the second signal is less than a
predetermined time.
Ex. 1001, 7:6–26.
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F. Evidence
Petitioner submits the following evidence:
Evidence Exhibit No.
Declaration of Seth James Nielson, Ph.D. (“Nielson
Declaration”) 1003
Maillard, EP 1045585 A1, published Oct. 18, 2000
(“Maillard”) 1004
Davis, WO 97/39553, published Oct. 23, 1997 (“Davis”) 1005
Lundkvist, WO 02/35036 A1, published May 2, 2002
(“Lundkvist”) 1006
Bruce Schneier, APPLIED CRYPTOGRAPHY, SECOND EDITION:
PROTOCOLS, ALGORITHMS, AND SOURCE CODE IN C (Phil
Sutherland ed., 1996) (“Schneier”)
1008
Chaum, US 4,926,480, issued May 15, 1990 (“Chaum”) 1010
G. Asserted Grounds
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 5–10, 14, 17–22,
25, 28 103 Maillard, Davis, Lundkvist
1–4, 7, 15, 16, 19, 28 103 Maillard, Davis, Lundkvist, Chaum
11, 23 103 Maillard, Davis, Lundkvist, Schneier
II. ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner argues that a person of ordinary skill in the art would have
had “at least a bachelor’s degree in Computer Science, Computer
Engineering, or Electrical Engineering and 1–2 years of industry or research
experience in the area of secure cryptographic communications.” Pet. 12–13
(citing Ex. 1003 ¶¶ 107–110). Petitioner’s description of the level of
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ordinary skill in the art is supported by the testimony of Petitioner’s
declarant, Dr. Seth Nielson. Ex. 1003 ¶¶ 107–110. Patent Owner does not
propose a description of the level of ordinary skill in the art or dispute
Petitioner’s description. Thus, we adopt Petitioner’s description for
purposes of this Decision.
B. Claim Construction
In an inter partes review proceeding, a claim of a patent is construed
using the same standard used in a civil action under 35 U.S.C. § 282(b),
including construing the claim in accordance with the ordinary and
customary meaning of the claim as understood by one of ordinary skill in the
art and the prosecution history pertaining to the patent. 37 C.F.R.
§ 42.100(b) (2019). Neither party proposes an express construction for any
claim terms. We agree that no claim terms require express construction for
purposes of this Decision.2
C. Obviousness of Claims 1, 2, 5–10, 14, 17–22, 25, and 28 over
Maillard, Davis, and Lundkvist
Petitioner argues that claims 1, 2, 5–10, 14, 17–22, 25, and 28 would
have been obvious over Maillard, Davis, and Lundkvist. Pet. 17–65. For
the reasons discussed below, Petitioner does not demonstrate a reasonable
likelihood of prevailing in showing that claims 1, 2, 5–10, 14, 17–22, 25,
and 28 would have been obvious over Maillard, Davis, and Lundkvist.

2 On March 16, 2021, the ITC issued an order construing certain claim terms
for the ’564 patent. In the Matter of Certain Digital Video-Capable Devices
and Components Thereof, Investigation No. 337-TA-1224, Order No. 16
(Mar. 16, 2021). We have reviewed the ITC’s claim construction order and
find it to be consistent with our Decision.
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1. Overview of Maillard
Maillard discloses a system for securely communicating digitally
recorded data between devices to prevent illegal copying and distribution.
Ex. 1004 ¶ 1. For example, a DVD player may provide content to a
television and a video recorder. Id. ¶¶ 75–76. Before communication, a
security module may be used to validate one or more of the devices, such as
by using an exchange of certificates. Id. ¶¶ 78–79. The security module
may be a smartcard that can be inserted into a socket of one of the devices,
or may be a separate module connected to one or more of the devices. Id.
¶¶ 9, 11. If validation is successful, the security module transmits a
randomly-generated session key (SK) to the device(s) in encrypted form,
which is decrypted by the device(s). Id. ¶¶ 104–106. The session key is
thereafter used to encrypt data that is transferred between the security
module and the device(s). Id. ¶ 106.
Maillard explains that use of the security module to validate device(s)
provides an extra level of security to the system. Id. ¶ 8. The security
module can also be used to create a personalized digital audio-visual system
by allowing a DVD player to send data to a digital television only if both the
player and the television are validated by the security module, thus
restricting a user’s viewing of the digital data to their own personal
television. Id. ¶ 9. Additionally, the security module receives device
identifiers and validates devices (such as a DVD player and television)
separate from the communication link between the devices themselves, so
that the device identifiers cannot be obtained if the communication link
between the devices is intercepted by a third party. Id. ¶ 10.
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The security module may contain a “revocation list” for blacklisting
non-compliant devices and an “authorization list” for allowing transfer of
data between pre-registered devices only. Id. ¶ 15. Device identifiers
intentionally published by third parties, for example on the Internet, can be
added to the revocation list when periodically updating the security module
in order to prevent data from being transferred to or from these devices. Id.
The use of an authorization list can also block use of device identifiers
intentionally published on the Internet because those identifiers will not be
valid anywhere except in, for example, a home network. Id.
2. Overview of Davis
Davis discloses a system that prevents unauthorized use of a device
(such as a computer) by a user. Ex. 1005, code (57). Davis explains that
existing systems allow a user to insert a smartcard to gain access to a
computer, but these systems can be vulnerable when the user leaves the
computer unattended without removing the card or disabling the computer
during the user’s absence. Id. at 2:28–3:19. Davis’s system addresses this
problem by providing a wireless device carried by the user that: (1)
communicates with the PC to establish authorization using a challenge-
response protocol, and (2) ensures proximity of the user to the PC by
requiring the response to be received within a prescribed period of time. Id.
at 4:1–19, 11:8–13:16, Fig. 5.
An overview of Davis’s system is shown in Figure 1, reproduced
below.
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Id. at Fig. 1. As shown in Figure 1, wireless authentication system 100
includes a personal computer 110, a security device (not shown)
implemented within computer 110, and user authorization token 120 worn
by authorized user 130. Id. at 6:28–7:1. Personal computer 110 periodically
attempts to establish a wireless communication link 140 with token 120,
which can be established and maintained only when token 120 is within a
predetermined distance from personal computer 110. Id. at 7:6–13. Upon
establishing communication link 140, computer 110 and token 120 exchange
information in an encrypted format. Id. at 7:20–22. When the security
device determines that token 120 responded correctly, user 130 is granted
access to personal computer 110. Id. at 7:22–26.
Davis’s wireless authentication process uses a challenge-response
protocol shown in Figure 5, reproduced below.
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Id. at Fig. 5; see id. at 11:8–13:16. As shown in Figure 5, the computer
prompts the user for a password (step 400). Id. at 11:12–14. If the password
is correct, the security device within the computer generates a challenge
message and transmits it over a predetermined distance range from the
computer (step 415). Id. at 11:21–24. Thereafter, the security device awaits
a response message from the token. Id. at 11:24–26. If no response message
is received after a prescribed period of time, access is denied (step 425). Id.
at 11:26–28. If a response message is received, the node verifies whether
the response message is correct (step 430). Id. at 11:28–30. If the response
message is not correct, access is denied (step 425). Id. at 11:30–12:3. If the
response message is correct, the user is granted access to the computer and
the computer sets a timing circuit to signal when the computer will generate
another challenge message and undergo another challenge/response session
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(steps 435–445). Id. at 12:3–6. This ensures that the computer will
periodically require authentication and determine that the user is in
proximity to the computer while the computer is operational. Id. at 12:6–9.
3. Overview of Lundkvist
Lundkvist discloses a method for authorizing access to an object, in
which communication is established between the object and a wireless
portable unit when a tripping device on the object is actuated. Ex. 1006,
1:5–8. The invention is described for controlling access to a vehicle, such as
a car or truck, and in that case, the tripping device normally consists of a
door handle on the vehicle. Id. at 1:23–25. The signal communication
verifies the identity of the wireless portable unit and determines whether the
distance between the vehicle and the portable unit is less than a maximum
permitted distance. Id. at 1:8–17.
The signaling method between the vehicle and the portable unit when
the door handle is actuated is illustrated in Figure 2, reproduced below:
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Id. at Fig. 2. As shown in Figure 2, when the tripping device (door handle)
is actuated, the vehicle creates a message that includes first information x
that is intended to be used to verify the identity of the portable unit. Id. at
8:11–14. First information x consists of identity information unique to the
vehicle and a random number generated by the vehicle. Id. at 8:14–16. The
message is encrypted and sent to the portable unit in first signal X. Id. at
8:16–17. The portable unit receives first signal X, and decrypts the message
to obtain first information x. Id. at 8:19. The portable unit processes first
information x to generate second signal Y1, which is a function f(x) of first
information x, and sends second signal Y1 to the vehicle. Id. at 8:19–23.
The vehicle receives and decrypts second signal Y1, and measures time T1
from the transmission of first signal X until the receipt of second signal Y1.
Id. at 8:23–26. The vehicle is unlocked if the decrypted information
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matches first information x and measured time T1 is less than a
predetermined value. Id. at 8:26–28.
4. Claim 1
Petitioner asserts that Maillard’s security module is the claimed “first
device,” and that Maillard’s digital TV or recorder corresponds to the
claimed “second device.” Pet. 31–32. Petitioner further asserts that
Maillard’s security module can be a smartcard inserted into a DVD player
that may send content to the digital TV or recorder. Id. at 32–33. Petitioner
does not rely on Maillard for the claim limitation requiring that the second
device receives the protected content from the first device after the first
device determines that “a time between the sending of the first signal and the
receiving of the second signal is less than a predetermined time,” but instead
relies on Davis and Lundkvist for this limitation. Id. at 51–55.
Petitioner argues that a person of ordinary skill in the art
would have found it obvious to combine the complementary
teachings of these references to authorize the transfer of
protected content to the (second) device over the secure channel
upon: (A) first validating the identity of the device (as
explained in Elements 1[a] and 1[b] per Maillard), and if the
validation is successful, (B) determining that a time between a
transmission of the first signal and receipt of the second signal
by the first device is less than a predetermined time (per
combination of Davis and Lundkvist), and (C) determining that
the second signal is derived using the secret (per combination
of Davis and Lundkvist).
Id. at 52 (citing Ex. 1003 ¶¶ 194–203, 232). More specifically, Petitioner
argues that Maillard, Davis, and Lundkvist “all relate to providing secure
access that is conditioned on successful completion of exchanges between
two devices.” Id. at 28 (citing Ex. 1004, code (57), ¶¶ 79, 104–108; Ex.
1005, 1:18–21, 2:28–3:30, 4:2–19, 11:8–12:9; Ex. 1006, code (57), 3:14–
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4:5). According to Petitioner, a person of ordinary skill in the art would
have been motivated to combine Maillard with Davis because Davis
recognizes that smartcard systems can be vulnerable when “the user accesses
his or her personal computer and leaves the personal computer unattended
for some duration without removing the card or disabling the personal
computer during his or her absence.” Id. at 29 (citing Ex. 1005, 2:28–3:19).
Petitioner further argues that a person of ordinary skill in the art
would have “recognized that Maillard’s technique, which was described
using an example home network using [an] IEEE 1394 communication link
. . . could be susceptible to attacks that would allow devices outside of the
home network to infiltrate the home network.” Id. (citing Ex. 1003 ¶¶ 138–
142; Ex. 1004 ¶¶ 53, 58). Thus, according to Petitioner, a person of ordinary
skill in the art would have “been motivated to look for additional security
procedures such as those in Davis, and would have found it obvious to
utilize Davis’[s] additional and complementary authentication steps that
ensured proximity of the user device to the computer by requiring the
response to be received within a predetermined time.” Id. (citing Ex. 1003
¶¶ 142–143; Ex. 1005, code (57), 4:2–19, 11:8–12:9, Fig. 5). Petitioner also
argues that it would have been obvious to combine Davis and Lundkvist
because Davis stated that other challenge-response protocols can be used,
and Lundkvist’s challenge-response protocol is one of a limited number of
alternatives. Id. at 29–30 (citing Ex. 1003 ¶¶ 144–146; Ex. 1005, 12:10–13).
Patent Owner argues that the Petition “fails to identify a legitimate
reason that it was obvious to combine [Davis and Lundkvist] with Maillard.”
Prelim. Resp. 60–61 (emphasis omitted). According to Patent Owner,
Maillard does not address how to ensure that the first and second devices are
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within a predetermined distance “because there is no need to do so—in
Maillard, the purported first device (security module 64) and purported
second device (television or recorder) preferably are physically connected to
one another, such as by a cable or by inserting the security module smart
card in a port in the television or recorder.” Id. at 61 (emphases omitted).
Thus, Patent Owner asserts, “[t]here is no need to determine the proximity of
devices that are already physically connected to one another.” Id.
As for Petitioner’s argument that a person of ordinary skill in the art
would have recognized that Maillard’s implementation using IEEE 1394 is
susceptible to attacks allowing devices outside of a home network to
infiltrate the network (Pet. 29), Patent Owner argues that Maillard only
mentions IEEE 1394 in the form of a physical cable that connects two
devices together (Prelim. Resp. 62–63). According to Patent Owner,
Petitioner “is essentially arguing that a bad actor could enter a user’s home
and physically plug an IEEE 1394 bus link into a DVD player to transmit to
another unauthorized TV.” Id. at 63. Thus, Patent Owner argues, the
distance between Maillard’s transmitting and receiving devices is irrelevant,
and adding a distance measurement would add no additional protection. Id.
We do not find that Petitioner has articulated sufficient reasoning for
combining Maillard with Davis and Lundkvist based on the present record.
First, Petitioner’s assertion that the references “all relate to providing secure
access that is conditioned on successful completion of exchanges between
two device,” fails to sufficiently explain why one would have used a distance
measurement in Maillard’s system. See Pet. 28. Second, Petitioner’s
argument that Davis recognizes the vulnerability of smartcard systems when
a user leaves a computer unattended, fails to sufficiently explain why this
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problem would apply to Maillard’s system, i.e., why it would be a problem
for the user to leave the security module unattended while connected to the
DVD player. See id. at 29.
Finally, Petitioner’s argument that one would have been motivated to
add a distance measurement to prevent an unauthorized person from
breaking into Maillard’s home network from a remote location lacks
sufficient evidentiary support. See Pet. 29; Ex. 1003 ¶¶ 138–143. Petitioner
does not point to any statements in Maillard or other prior art references
suggesting that this could be a problem. See Pet. 29. Instead, Petitioner
relies on the following testimony from Dr. Nielson:
141. A POSITA, however, would recognize that while
Maillard’s white-list would provide the necessary step of
identifying authorized devices, it does not provide a mechanism
for enforcing that those devices are on the “home network,” i.e.,
physically within the bounds of the home network. It was
known to a POSITA that data signals of one communication
type, such as IEEE 1394 as mentioned in Maillard, can be
vulnerable to attacks, where signals could be adapted and
retransmitted over more traditionally long distance
mechanisms, such as Ethernet. US patent 6,496,862, with a
priority date of 1998, describes a “gateway” that interconnects
ethernet and IEEE 1394 specifically for media and television.
A POSITA would readily comprehend that Maillard’s security
module for device authorization and authentication in a home
network could be exfiltrated to a remote location. Thus,
instead of a DVD player transmitting data to a local TV on a
home network, Maillard’s security module would enable the
DVD player to transmit to another unauthorized TV anywhere
in the world so long as the security module is connected in this
way. . . .
142. Thus, the POSITA would have been motivated to find
mechanisms for enforcing the security module and associated
devices were on the “home network.” Maillard in view of
Davis provides an obvious solution.
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Ex. 1003 ¶¶ 141–142 (emphases added).
Neither Petitioner nor Dr. Nielson, however, points to any statements
in Maillard, Davis, Lundkvist, or any other reference in the record
supporting Dr. Nielson’s assertions that: (1) “[i]t was known to a POSITA
that data signals of one communication type, such as IEEE 1394 as
mentioned in Maillard, can be vulnerable to attacks, where signals could be
adapted and retransmitted over more traditionally long distance mechanisms,
such as Ethernet,” or (2) “[a] POSITA would readily comprehend that
Maillard’s security module for device authorization and authentication in a
home network could be exfiltrated to a remote location.” See Pet. 28–30,
51–55; Ex. 1003 ¶¶ 138–143. Dr. Nielson cites U.S. Patent No. 6,496,862,
but that patent is not part of the record and, in any event, is only cited for its
disclosure of “a ‘gateway’ that interconnects ethernet and IEEE 1394
specifically for media and television,” not to show that the problem of
exfiltrating a device like Maillard’s security module would have been well
understood by a person of ordinary skill in the art. Ex. 1003 ¶ 141.
Moreover, as Patent Owner explains, Maillard discloses IEEE 1394 in
the form of an “IEEE 1394 bus link” connecting the first and second
devices. Ex. 1004 ¶ 53. Patent Owner introduces evidence that an IEEE
1394 bus link is a physical cable that connects two devices together. Prelim.
Resp. 62–63; Ex. 2013, 94 (“First introduced as Firewire by Apple
Computer in the late 1980s, the now-approved IEEE 1394 standard was
designed to support high-bandwidth requirements of devices such as digital
video equipment and high-performance mass storage. . . . The 1394 spec
calls for six wires—two differential pairs plus power and ground.”). We
agree with Patent Owner that, in Maillard’s system, where the devices are
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physically connected, Petitioner does not sufficiently explain, based on the
present record, why adding a distance measurement between the security
module and one of the other devices would enhance security.
For the foregoing reasons, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that claim 1 would have been
obvious over Maillard, Davis, and Lundkvist.
5. Claims 2, 5–10, 14, 17–22, 25, and 28
Claims 2, 5–10, 14, 17–22, 25, and 28 depend from claim 1.
Petitioner’s arguments and evidence regarding these dependent claims do
not compensate for the deficiencies discussed above for claim 1. See
Pet. 55–65. Thus, for the same reasons discussed above for claim 1,
Petitioner does not demonstrate a reasonable likelihood of prevailing in
showing that claims 2, 5–10, 14, 17–22, 25, and 28 would have been
obvious over Maillard, Davis, and Lundkvist.
6. Summary
For the foregoing reasons, Petitioner does not demonstrate a
reasonable likelihood of prevailing in showing that claims 1, 2, 5–10, 14,
17–22, 25, and 28 would have been obvious over Maillard, Davis, and
Lundkvist.
D. Obviousness of Claims 1–4, 7, 15, 16, 19, and 28 over Maillard,
Davis, Lundkvist, and Chaum
Petitioner argues that claims 1–4, 7, 15, 16, 19, and 28 would have
been obvious over Maillard, Davis, Lundkvist, and Chaum. Pet. 65–84.
Petitioner’s arguments and evidence regarding Chaum do not compensate
for the deficiencies discussed above for the asserted ground based on
Maillard, Davis, and Lundkvist. See id. Thus, for the same reasons
discussed above for the asserted ground based on Maillard, Davis, and
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Lundkvist, Petitioner does not demonstrate a reasonable likelihood of
prevailing in showing that claims 1–4, 7, 15, 16, 19, and 28 would have been
obvious over Maillard, Davis, Lundkvist, and Chaum.
E. Obviousness of Claims 11 and 23 over Maillard, Davis,
Lundkvist, and Schneier
Petitioner argues that claims 11 and 23 would have been obvious over
Maillard, Davis, Lundkvist, and Schneier. Pet. 84–89. Petitioner’s
arguments and evidence regarding Schneier do not compensate for the
deficiencies discussed above for the asserted ground based on Maillard,
Davis, and Lundkvist. See id. Thus, for the same reasons discussed above
for the asserted ground based on Maillard, Davis, and Lundkvist, Petitioner
does not demonstrate a reasonable likelihood of prevailing in showing that
claims 11 and 23 would have been obvious over Maillard, Davis, Lundkvist,
and Schneier.
III. CONCLUSION
Petitioner does not demonstrate a reasonable likelihood of prevailing
in showing that at least one of the challenged claims of the ’564 patent is
unpatentable.
IV. ORDER
It is hereby
ORDERED that the Petition is denied, and no trial is instituted.
IPR2021-00497
Patent 10,298,564 B2

22
PETITIONER:

Babak Tehranchi
John P. Schnurer
Bing Ai
PERKINS COIE LLP
tehranchi-ptab@perkinscoie.com
schnurer-ptab@perkinscoie.com
ai-ptab@perkinscoie.com

PATENT OWNER:

William A. Meunier
Michael T. Renaud
Derek E. Constantine
MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.
wameunier@mintz.com
mtrenaud@mintz.com
deconstantine@mintz.com