throbber
Filed: July 8, 2015
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`Case No. TBD
`U.S. Patent No. 7,706,778
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,706,778
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`Filed on behalf of Spectrum Brands, Inc.
`By: Michelle E. Armond
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`John B. Sganga, Jr.
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`Brenton R. Babcock
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxSPEBRL@knobbe.com
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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.
`
`
`
`

`
`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`INTRODUCTION ......................................................................................... 1 
`
`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R.
`§ 42.8(a)(1) .................................................................................................... 4 
`
`A.
`
`B. 
`
`C. 
`
`D. 
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .................................. 4
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 5 
`
`1. 
`
`An IPR Should Be Instituted Based on This Petition,
`Which Is Not Redundant With UniKey’s IPR Petition ............ 6 
`
`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3)) ........................... 7 
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ..................................... 8 
`
`III. PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103 ....................... 8 
`
`IV. REQUIREMENTS FOR REVIEW UNDER 37 C.F.R. § 42.104 ................ 9 
`
`A.  Grounds for Standing (37 C.F.R. § 42.104(a)) ................................... 9 
`
`B. 
`
`Claims and Statutory Grounds (37 C.F.R. § 42.104(b)(1) &
`(b)(2)) .................................................................................................. 9 
`
`C. 
`
`Claim Construction (37 C.F.R. § 42.104(b)(3)) ................................ 11 
`
`D.  Unpatentability of Construed Claims (37 C.F.R.
`§ 42.104(b)(4)) .................................................................................. 11 
`
`E. 
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5)).............................. 11 
`
`V.
`
`THERE IS MORE THAN A REASONABLE LIKELIHOOD
`THAT THE CHALLENGED CLAIMS OF the ’778 PATENT
`ARE UNPATENTABLE ............................................................................. 12 
`
`A. 
`
`Legal Standard For Obviousness....................................................... 12 
`
`-i-
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`

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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`B. 
`
`C. 
`
`D. 
`
`E. 
`
`The Purported Invention of the ’778 Patent ...................................... 13 
`
`Summary of the Prosecution History of the ’778 Patent .................. 14 
`
`Level of Ordinary Skill in the Art ..................................................... 15 
`
`Claim Construction ........................................................................... 15 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`“credential” (Claims 1, 6, 14, 16, 18, 22, 28, 31) ................... 16 
`
`“self-authenticating data” (Claims 1, 16, 33) ......................... 17 
`
`“smart mobile device” (Claims 1, 16) .................................... 20 
`
`Reservation of Rights to Advocate Different Claim
`Constructions In Other Proceedings ....................................... 21 
`
`F. 
`
`Overview of Nielsen (Ex. 1002) ....................................................... 21 
`
`G.  Overview of Karkas (Ex. 1003) ........................................................ 24 
`
`H.  Ground 1: Claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33
`and 34 Are Obvious Over Nielsen In View of Karkas ..................... 26 
`
`1. 
`
`2. 
`
`Reasons to Combine Nielsen and Karkas ............................... 26 
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`Differences Between The Prior Art And ’778 Patent ............. 27 
`
`a.
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`b. 
`
`c. 
`
`“self-authenticating data” (Claims 1, 16, 33) ............... 28
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`“smart mobile device” (Claims 1, 16) .......................... 29 
`
`“disabling . . . said memory unless an enabling
`message is received” (Claims 8, 23) ............................. 30 
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`3. 
`
`Claim Charts ........................................................................... 31 
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`-ii-
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`I. 
`
`Ground 2: Claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33
`and 34 Are Obvious Over Nielson In View of the
`Knowledge of A Person Of Ordinary Skill In The Art ..................... 55 
`
`1. 
`
`Persons Of Ordinary Skill In The Art Would Have
`Modified Nielsen to Arrive at The Purported
`Invention Of The ’778 Patent ................................................. 56 
`
`a. 
`
`b. 
`
`c. 
`
`“self-authenticating data” (Claims 1, 16, 33) ............... 56 
`
`“smart mobile device” (Claims 1, 16) .......................... 57 
`
`“disabling . . . said memory unless an enabling
`message is received” (Claims 8, 23) ............................. 58 
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`J. 
`
`Secondary Considerations, Even if Considered, Fail to
`Overcome the Prima Facie Evidence of Obviousness ..................... 59 
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`VI. CONCLUSION ............................................................................................ 60 
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`-iii-
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`

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`TABLE OF AUTHORITIES
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`Page No(s).
`
`In re Cuozzo Speed Techs.,
`778 F.3d 1271 (Fed. Cir. 2015) .......................................................................... 15
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 12
`
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 13
`
`Leapfrog Enters. Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) .......................................................................... 59
`
`Microsoft Corp. v. Proxyconn, Inc.,
`Nos. 2014-1542, -1543, 2015 WL 3747257
`(Fed. Cir. June 16, 2015) .................................................................................... 16
`
`Newell Cos., Inc. v. Kenney Mfg. Co.,
`864 F.2d 757 (Fed. Cir. 1988) ............................................................................ 59
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 18
`
`OTHER AUTHORITIES
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`35 U.S.C. § 102 ................................................................................................ 4, 7, 10
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`35 U.S.C. § 103 .................................................................................................. 10, 12
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`35 U.S.C. § 301 ........................................................................................................ 16
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`35 U.S.C. § 311 .......................................................................................................... 1
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`35 U.S.C. § 315 .......................................................................................................... 9
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`37 C.F.R. § 42.100 ............................................................................................... 1, 15
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`M.P.E.P. § 2132.01 .................................................................................................... 7
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`-iv-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`
`TABLE OF EXHIBITS
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`Exhibit No.
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`Description
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`U.S. Patent No. 7,706,778
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`U.S. Patent App. Pub. No. 2002/0180582 (Nielsen)
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`U.S. Patent App. Pub. No. 2002/0031228 (Karkas et al.)
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`Declaration of Prof. Matthew Green, Ph.D.
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`Excerpts of the File History of U.S. Patent No. 7,706,778
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`Joint Statement on Claim Construction from Co-Pending
`District Court Litigation
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`Table of Exhibits, Page 1
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.100, Petitioner Spectrum
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`Brands, Inc. (“Petitioner” or “Spectrum”) respectfully requests inter partes review
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`of Claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33 and 34 (“Challenged Claims”)
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`of U.S. Patent No. 7,706,778 (“’778 Patent”), which is purportedly owned by Assa
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`Abloy AB (“Patent Owner” or “Assa Abloy”).
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`I. INTRODUCTION
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`The ’778 Patent describes a security system that controls access to buildings
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`or other assets. As the ’778 Patent readily acknowledges, secure access systems,
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`like those used in many office buildings, have long used smart cards to store access
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`credentials. Ex. 1001 (’778 Patent) at Col. 2:47-53. When a user presents his or
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`her smart card, a card reader processes the credentials to determine if the smart
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`card is valid and the user should be allowed to enter the building. Id. at Col. 1:25-
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`35. Thus, the smart card functions like a mechanical key, but, unlike mechanical
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`keys, has the advantage of allowing users to easily have their credentials updated
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`or revoked electronically.
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`The ’778 Patent purports to improve on the previously existing secure access
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`systems by using a “mobile communications device” (a mobile phone) as a key,
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`instead of a conventional smart card. Id. at Abstract, Col. 4:58-60. Thus, users
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`present their mobile phones at readers to obtain access to buildings. Id. at Col.
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`3:20-32. Using mobile phones allows users’ credentials to be updated immediately
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`-1-
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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`when authorization changes are made. Id. at Cols. 4:60-63, 3:17-20.
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`However, the system described in the ’778 Patent is not new. Other
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`inventors had already devised secure access systems based on mobile phones and
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`filed their own patent applications well before the ’778 Patent’s filing date. Exs.
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`1002, 1003. U.S. Patent App. Pub. No. 2002/0180582 to Nielsen, for example,
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`describes a secure access system using a mobile phone that receives credential
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`updates from an “access code management system.” Ex. 1002 ¶ 127. Nielsen was
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`not considered during examination of the ’778 Patent. The similarity of the
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`systems of the ’778 Patent and Nielsen is shown below, with corresponding
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`components shown in the same colors:
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`’778 Patent, Figure 1
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`Nielsen, Figure 2b
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`After the applicant filed the application that ultimately issued as the ’778
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`Patent, the Patent Examiner several times rejected the claims based on prior art not
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`presented in this Petition. Ex. 1005 (File History) at 53, 103, 130. To overcome
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`-2-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`these rejections, the applicant amended his claims to add a lengthy limitation that
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`included requiring a “smart mobile device” that uses “self-authenticating data” to
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`allow the device “to make a determination of its own access rights with respect to
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`an asset.” Id. at 26. Based on this amendment, the claims were allowed. Id. at 13.
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`However, this amendment did not add anything patentable to the ’778
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`Patent. Access systems with smart mobile devices that used “self-authenticating
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`data” to determine their own access rights had also been developed by other
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`inventors well before the ’778 Patent’s filing date. U.S. Patent App. Pub. No.
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`2002/0031228 to Karkas, for example, is another secure access system that used
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`mobile phones to open locks. Ex. 1003 ¶¶ 24, 45. The mobile phones could self-
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`authenticate by examining the access rights stored on the phone to determine if
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`they were still valid or had expired. Id. ¶¶ 49, 53. Karkas, like Nielsen, was not
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`considered during examination of the ’778 Patent. It would have been obvious for
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`persons of ordinary skill to modify the system of Nielsen to include smart mobile
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`devices that use “self-authenticating data” as disclosed in Karkas. Ex. 1004 ¶¶ 55-
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`61.
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`This Petition presents two grounds of unpatentability. First, Nielsen and
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`Karkas together teach each of the claim limitations of the ’778 Patent. Second,
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`persons skilled in the art would find the ’778 Patent to be obvious over Nielsen in
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`view of the knowledge of a person of ordinary skill in the art. Petitioner
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`-3-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`respectfully requests that the Board institute an IPR on both grounds so the Board
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`can find the Challenged Claims unpatentable even if it determines, under the first
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`ground, that the express disclosure of Nielsen and Karkas cannot be combined to
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`teach every limitation of the claims, or under the second ground, that any limitation
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`not expressly disclosed in Nielsen was beyond the understanding of a skilled
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`artisan prior to the ’778 Patent.
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`Because Nielsen and Karkas were published and fully disclosed the
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`purported invention of the ’778 Patent more than one year before the patent’s
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`effective filing date, these published patent applications are prior art to the ’778
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`Patent under 35 U.S.C. § 102(b).
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`II. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1)
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`
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`Pursuant to 37 C.F.R. § 42.8(a)(1), the mandatory notices identified in 37
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`C.F.R. § 42.8(b) are provided below as part of this Petition.
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`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
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`The real party-in-interest is Petitioner Spectrum Brands, Inc., as well as its
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`parent company Spectrum Brands Holdings.
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`The ’778 and ’374 Patents were previously asserted against Kwikset
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`Corporation. Kwikset Corporation was merged into Petitioner Spectrum Brands,
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`Inc. on December 31, 2014, and is no longer in existence.
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`-4-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`Petitioner is aware that a co-defendant, UniKey Technologies, Inc.
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`(“UniKey”), separately filed a Petition for Inter Partes Review of the ’778 Patent
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`on June 18, 2015. IPR2015-01440. Spectrum is not a real party-in-interest to
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`UniKey’s Petition. Spectrum does not control, cannot control, and is not paying
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`for UniKey’s Petition or IPR. Likewise, UniKey does not control, cannot control,
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`and is not paying for this Petition or IPR. Both Spectrum and UniKey have
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`retained separate counsel for their respective IPR petitions and the related District
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`Court Action.
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`B. Related Matters (37 C.F.R. § 42.8(b)(2))
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`The following proceedings may affect, or be affected by, the decisions in
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`this proceeding:
`
`Spectrum is filing an IPR petition against U.S. Patent No. 8,150,374 (Lowe)
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`concurrently herewith. The ’374 Patent is a continuation of the ’778 Patent.
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`The ’778 and ’374 Patents have been asserted against Spectrum and UniKey
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`in a patent infringement lawsuit, HID Global Corporation et al. v. Kwikset
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`Corporation et al., No. 14-cv-00947-CJC-DFM (C.D. Cal.) (“District Court
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`Action”).
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`UniKey filed IPR petitions against the ’778 Patent and the ’374 Patent on
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`June 18, 2015. IPR2015-01440, -01441.
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`Patent applications claiming priority to the ’778 Patent are currently pending
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`-5-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`in the Patent Office. E.g., U.S. Patent App. Nos. 13/404,915; 14/674,085;
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`14/674,094; 14/674,109; 14/674,125; 14/674,167; 14/674,175.
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`1.
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`An IPR Should Be Instituted Based on This Petition, Which Is Not
`Redundant With UniKey’s IPR Petition
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`This Petition is not redundant with the grounds presented by UniKey in a
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`separate petition filed on June 18, 2015. IPR2015-01440. Spectrum respectfully
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`submits that the Board should institute an IPR based on at least this Petition
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`because it presents focused arguments based on references that cannot be removed
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`as prior art by the Patent Owner.
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`In this Petition, Spectrum requests institution of an IPR on two grounds:
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`obviousness based on Nielsen (U.S. Patent App. Pub. No. 2002/0180582) in view
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`of Karkas (U.S. Patent App. Pub. No. 2002/0031228); and obviousness based on
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`Nielsen in view of the knowledge of a person of ordinary skill in the art. In its
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`separate petition, UniKey presented three grounds of unpatentability of the ’778
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`Patent claims: anticipation by U.S. Patent No. 7,205,882 to Libin; obviousness by
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`Libin in view of U.S. Patent No. 7,012,503 to Nielsen (“Nielsen II”); and
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`obviousness by Nielsen II in view of U.S. Patent No. 7,873,989 to Karkas (“Karkas
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`II”). IPR2015-01440, Paper 1 at 3.
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`The three grounds for unpatentability in UniKey’s petition are different, and
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`rely on different prior art publications, than those relied on here. The Nielsen and
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`Karkas publications in this Petition are not the same as the patents in UniKey’s
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`-6-
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`

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`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`petition, although the respective disclosures are similar. UniKey’s petition also
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`does not include a ground of obviousness based on Nielsen in combination with the
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`knowledge of those skilled in the art. Moreover, the focused arguments in this
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`Petition address different sets of claims than those in UniKey’s petition.
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`There is another important distinction between the two petitions. Unlike
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`UniKey’s petition, this Petition relies on § 102(b) publications that cannot be
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`removed as prior art to the ’778 Patent. UniKey states in its petition that the Libin,
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`Nielsen II, and Karkas II patents it relies on are prior art under 35 U.S.C. §§ 102(a)
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`or (e). IPR2015-01440, Paper 1 at iii. Thus, the Patent Owner may be able to
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`swear behind the references that UniKey relies on and remove them as prior art.
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`See, e.g., M.P.E.P. § 2132.01 (“When the reference is not a statutory bar under pre-
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`AIA 35 U.S.C. 102(b), (c), or (d), applicant can overcome the rejection by
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`swearing back of the reference . . . .”). Because this Petition relies solely on
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`§ 102(b) prior art that cannot be sworn behind, id., it is not redundant with
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`UniKey’s petition.
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`C.
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`Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
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`Petitioner provides the following designation of counsel:
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`Back-up Counsel
`John B. Sganga, Jr. (Reg. No. 31,302)
`2jbs@knobbe.com
`Brenton R. Babcock (Reg. No. 39,592)
`2brb@knobbe.com
`
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`Lead Counsel
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`Michelle E. Armond (Reg. No. 53,954)
`2mea@knobbe.com
`BoxSPEBRL@knobbe.com
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`-7-
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`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`Postal and Hand-Delivery Address:
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile: (949) 760-9502
`
`Postal and Hand-Delivery Address:
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: (949) 760-0404
`Facsimile: (949) 760-9502
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
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`Petition. The above identified Lead and Back-up Counsel are registered
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`practitioners associated with Customer No. 20,995 listed in that Power of Attorney.
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`D.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`
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`Service information for lead and back-up counsel is provided in the
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`designation of lead and back-up counsel above. Petitioner hereby consents to
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`service by email at the following email address: BoxSPEBRL@knobbe.com.
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`III. PAYMENT OF FEES PURSUANT TO 37 C.F.R. § 42.103
`
`The fee set forth in 37 C.F.R. § 42.15(a) for this Petition has been paid:
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`$26,200 (including $9,000 request fee; $14,000 post-institution fee; $400 fee for
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`requesting review of 22 claims; $2,800 post-institution fee for requesting review of
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`22 claims). The undersigned authorize payment for any additional fees that may be
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`due in connection with this Petition to be charged to Deposit Account No. 11-1410.
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`-8-
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`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`IV. REQUIREMENTS FOR REVIEW UNDER 37 C.F.R. § 42.104
`
`A. Grounds for Standing (37 C.F.R. § 42.104(a))
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`Spectrum hereby certifies that the ’778 Patent is available for an IPR and
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`that Spectrum is not barred or estopped from requesting an IPR on the grounds
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`identified herein. Specifically, Spectrum certifies that (1) Spectrum is not the
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`owner of the ’778 Patent; (2) neither Spectrum, nor any real-party-in-interest, has
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`filed a civil action challenging the validity of any claim of the ’778 Patent; (3)
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`neither Spectrum, nor any privy or real-party-in-interest, was served with a
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`complaint alleging infringement of the ’778 Patent more than one year prior to the
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`filing of this Petition; (4) the estoppel provisions of 35 U.S.C. § 315(e)(1) do not
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`prohibit this IPR; and (5) this Petition is being filed after the ’778 Patent was
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`granted.
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`B. Claims and Statutory Grounds (37 C.F.R. § 42.104(b)(1) & (b)(2))
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`Spectrum respectfully requests institution of an IPR of Claims 1, 4, 6, 8, 10-
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`14, 16-18, 22-25, 28-31, 33 and 34 of the ’778 Patent in view of the following
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`references, which are prior art for the following reasons:
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` U.S. Patent Application Publication No. 2002/0180582
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`to Nielsen
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`(“Nielsen”) (Ex. 1002). Nielsen was published by the U.S. Patent Office on
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`December 5, 2002. Ex. 1002 at 1. The ’778 Patent was filed on April 3,
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`2006 and claims priority to Provisional Application No. 60/668,828 filed on
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`-9-
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`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`April 5, 2005. Ex. 1001 at 1. Because Nielsen is a printed publication dated
`
`more than one year before the earliest filing date of the ’778 Patent, it is
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`prior art under 35 U.S.C. § 102(b).1
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` U.S. Patent Application Publication No. 2002/0031228 to Karkas et al.
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`(“Karkas”) (Ex. 1003). Karkas was published by the U.S. Patent Office on
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`March 14, 2002. Ex. 1003 at 1. Because Karkas is a printed publication
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`dated more than one year before the earliest filing date of the ’778 Patent, it
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`is also prior art under 35 U.S.C. § 102(b).
`
`The proposed statutory grounds of rejection for the ’778 Patent are as
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`follows:
`
` Ground 1: Claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33 and 34 of the
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`’778 Patent are unpatentable as obvious over Nielsen in view of Karkas
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`under 35 U.S.C. § 103.
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` Ground 2: Claims 1, 4, 6, 8, 10-14, 16-18, 22-25, 28-31, 33 and 34 of the
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`’778 Patent are unpatentable as obvious over Nielsen in view of the
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`knowledge of a person of ordinary skill in the art under 35 U.S.C. § 103.
`
`
`1
`Reference to 35 U.S.C. §§ 102 and 103 throughout this Petition are to the
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`pre-AIA versions of these statutes, which are applicable to the ’778 Patent.
`
`-10-
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`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`C. Claim Construction (37 C.F.R. § 42.104(b)(3))
`
`A detailed explanation of the proposed claim constructions is provided
`
`below in Section V.E of this Petition.
`
`D. Unpatentability of Construed Claims (37 C.F.R. § 42.104(b)(4))
`
`A detailed explanation of how the Challenged Claims of the ’778 Patent are
`
`unpatentable, including an identification of where each claim limitation is found in
`
`the prior art, are provided below in Section V of this Petition.
`
`E.
`
`Supporting Evidence (37 C.F.R. § 42.104(b)(5))
`
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge, and the relevance of the evidence to the challenge, including specific
`
`portions of the evidence relied on to support the challenge, are provided below.
`
`An Exhibit List with exhibit numbers and brief description of each exhibit is
`
`included herewith.
`
`Spectrum also submits the declaration of Professor Matthew Green, Ph.D.,
`
`in support of this petition in accordance with 37 C.F.R. § 1.68. Ex. 1004. Dr.
`
`Green is Assistant Research Professor at Johns Hopkins University. Ex. 1004
`
`(Green Decl.) ¶ 5. As explained in his declaration, Dr. Green has extensive
`
`academic and industry experience in security systems and access control, technical
`
`fields related to the ’778 Patent, and his declaration explains the basis for his
`
`conclusions that the ’778 Patent is obvious. Id. ¶¶ 1-11, 14-18, 40-43.
`
`-11-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`V. THERE IS MORE THAN A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’778 PATENT ARE UNPATENTABLE
`
`Spectrum submits two separate grounds for finding the Challenged Claims
`
`of the ’778 Patent are unpatentable as obvious. First, the Challenged Claims are
`
`obvious over Nielsen in view of Karkas. Nielsen and Karkas together disclose all
`
`of the limitations of the Challenged Claims. Additionally, the Challenged Claims
`
`would have been obvious over Nielsen in view of the knowledge of a person of
`
`ordinary skill in the art. Spectrum submits that an IPR should be instituted on
`
`both grounds so the Board can find the Challenged Claims unpatentable even if it
`
`determines, under the first ground, that the express disclosure of Nielsen and
`
`Karkas cannot be combined to teach every limitation of the claims, or under the
`
`second ground, that any limitation not expressly disclosed in Nielsen was beyond
`
`the understanding of a skilled artisan prior to the ’778 Patent.
`
`A.
`
`Legal Standard For Obviousness
`
`A claim is obvious “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject 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.” 35 U.S.C. § 103. The
`
`obviousness analysis includes an assessment of the Graham factors: (1) the scope
`
`and content of the prior art; (2) any differences between the claims and the prior
`
`art; (3) the level of ordinary skill in the art; and (4) where in evidence, objective
`
`-12-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`indicia of nonobviousness. KSR Int’l v. Teleflex Inc., 550 U.S. 398, 406 (2007)
`
`(citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
`
`B.
`
`The Purported Invention of the ’778 Patent
`
`The ’778 Patent describes a secure access system in which credential data
`
`can be stored on mobile devices, such as mobile phones. Ex. 1001 (’778 Patent)
`
`at Abstract, Col. 6:46-51; see also Ex. 1004 ¶¶ 19-23. The mobile devices
`
`communicate with readers, which determine whether the credential data on a
`
`particular mobile device permits access to an asset, such as a locked building or
`
`room. Ex. 1001 at Col. 3:25-32.
`
`According to the patent, the mobile devices also receive credential updates
`
`from a central controller via a communication network. Id. at Col. 3:17-20, 35-42.
`
`These updates may enable, disable, or modify a credential. Id. When the central
`
`controller updates a mobile device, it may also provide updates to the readers so
`
`they can correctly determine the validity of the mobile device when it is presented
`
`to them. Id. at Col. 3:54-59. A reader may also keep a log of access attempts and
`
`other activity, which it may transmit to the controller. Id. at Col. 11:26-33
`
`The ’778 Patent describes various data stored with the credential in the
`
`memory of the mobile phone. Id. at Cols. 8:4-12, 8:19-21. This includes what the
`
`’778 Patent calls “self-authenticating data,” such as expiration times for
`
`credentials and assets the mobile device may access. See id. at Col. 8:21-25
`
`-13-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`(explaining that “times of allowed access to each asset” and “assets the mobile
`
`device 112 has access to” are self-authenticating data). Such data “can assist the
`
`mobile device in determining if it is eligible to gain access to a particular asset.”
`
`Id. A mobile device that makes a determination about its own access rights is
`
`referred to in the ’778 Patent as a “smart mobile device.” Id. at Col. 8:29-31.
`
`C.
`
`Summary of the Prosecution History of the ’778 Patent
`
`The ’778 Patent issued from U.S. Patent Application No. 11/397,542, filed
`
`on April 3, 2006 (“’778 Application”). Ex. 1001 at 1. The ’778 Application
`
`claims priority to U.S. Provisional Patent Application No. 60/668,828, filed on
`
`April 5, 2005. Ex. 1001 at 1.
`
`The Examiner issued several rejections of all pending claims in the ’778
`
`Application in view of prior art. Ex. 1005 at 53, 103, 130. In an amendment filed
`
`December 1, 2009, the applicant added the following lengthy limitation to the
`
`independent claim 1 requiring a “smart mobile device” that includes “self-
`
`authenticating data”:
`
`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
`
`-14-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`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. 1005 at 26 (emphases added). The other independent claims were similarly
`
`amended. Id. at 28, 30. Relying on this amendment, the Examiner allowed the
`
`claims. Ex. 1005 at 13.
`
`At no time during the prosecution of the ’778 Application did the Examiner
`
`consider either of the Nielsen and Karkas references that this Petition relies on.
`
`D.
`
`Level of Ordinary Skill in the Art
`
`A person having ordinary skill in the field at the time of the purported
`
`invention of the ’778 Patent would have at least a bachelor’s degree in computer
`
`science, computer engineering, or electrical engineering combined with at least one
`
`year of industry experience in security systems. Ex. 1004 ¶¶ 44-46.
`
`E. Claim Construction
`
`Patent claim terms in an IPR are given their broadest reasonable
`
`interpretation in light of the specification to one having ordinary skill in the art. 37
`
`C.F.R. § 42.100(b); In re Cuozzo Speed Techs., 778 F.3d 1271, 1281 (Fed. Cir.
`
`2015) (“We conclude that Congress implicitly adopted the broadest reasonable
`
`interpretation standard in enacting the AIA.”). Constructions under the broadest
`
`-15-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`reasonable interpretation standard “cannot be divorced from the specification” and
`
`“must be consistent with the one that those skilled in the art would reach.”
`
`Microsoft Corp. v. Proxyconn, Inc., Nos. 2014-1542, -1543, 2015 WL 3747257, at
`
`*3 (Fed. Cir. June 16, 2015) (internal quotation marks and citations omitted).
`
`The Patent Office may consider the claim construction positions for the ’778
`
`Patent adopted by the Patent Owner in other proceedings. See 35 U.S.C.
`
`§ 301(a)(2).
`
`1.
`
`“credential” (Claims 1, 6, 14, 16, 18, 22, 28, 31)
`
`In the co-pending District Court Action, the Patent Owner asserts that the
`
`term “credential” in the ’778 Patent should be construed as “data, set of data,
`
`encryption scheme, key, transmission protocol, and/or the like, used by a particular
`
`mobile device to verify its authenticity with a reader/interrogator.” Ex. 1006 at
`
`A8. To support its construction, the Patent Owner cites the following portions of
`
`the specification from the ’778 Patent:
`
`As used herein, a “credential” or “credential information” is any data,
`set of data, encryption scheme, key, and/or transmission protocol used
`by a particular mobile device to verify its authenticity with a
`reader/interrogator.
`
`Id. (citing ’778 Patent, Col. 3:43-46).
`
`As noted above, credential information can include any data, set of
`data, encryption schemes, keys, transmission protocol, and the like,
`
`-16-
`
`

`
`Spectrum Brands v. Assa Abloy AB
`IPR Petition – U.S. Patent No. 7,706,778
`used by a particular mobile device 112 to verify its authenticity to a
`reader 108.
`
`Id. (citing ’778 Patent, Col. 9:41-44); see Ex. 1001 (’778 Patent).
`
`This evidence from the specification confirms that it is appropriate to hold
`
`the Patent Owner to its proposed construction from the District Court. The
`
`intrinsic record provides no broader reasonable construction. Accordingly, this
`
`Petition adopts the Patent Owner’s construction that “credential” means “data, set
`
`of data, encryption scheme, key, transmission protocol, and/or the like, used by a
`
`particular mobile device to verify its authenticity with a reader/interrogator.” Ex.
`
`1004 ¶¶ 24-25.
`
`2.
`
`“self-authenticating dat

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