Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 7
`Entered: January 15, 2016
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`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
`
`
`
`
`Tel: 571-272-7822
`
`Paper 7
`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
`
`
`
`
`
`IPR2015-01563
`Patent 7,706,778
`
`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.
`
`2
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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
`
`Karkas et
`al.
`(“Karkas”)
`
`U.S. Patent Application
`Publication No.
`2002/0180582
`U.S. Patent Application
`Publication No.
`2002/0031228
`
`
`
`Dec. 5, 2002
`
`1002
`
`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.
`
`Basis
`
`§ 103
`
`Claims Challenged
`1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31,
`33, and 34
`
`§ 103
`
`1, 4, 6, 8, 10–14, 16–18, 22–25, 28–31,
`33, and 34
`
`Reference
`Nielsen and
`Karkas
`Nielsen,
`knowledge of a
`person of
`ordinary skill in
`the art
`
`
`
`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.
`
`17
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`IPR2015-01563
`Patent 7,706,778
`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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`IPR2015-01563
`Patent 7,706,778
`
`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–
`
`19
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`IPR2015-01563
`Patent 7,706,778
`
`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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`IPR2015-01563
`Patent 7,706,778
`
`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 all
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