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`IN THE UNITED STATES DIST
`RICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`CARBYNE BIOMETRICS, LLC,
`Plaintiff,
`v.
`APPLE INC.,
`Defendant.
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`Civil Action No. 1:23-cv-00324
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`JURY TRIAL
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`PLAINTIFF CARBYNE BIOMETRICS, LLC’S RESPONSE TO DEFENDANT’S
`MOTION FOR SUMMARY JUDGMENT OF INVALIDITY FOR
`LACK OF SUBJECT MATTER ELIGIBILITY UNDER 35 U.S.C. § 101
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`Case 1:23-cv-00324-ADA Document 278 Filed 11/20/24 Page 1 of 22
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`TABLE OF CONTENTS
`I. INTRODUCTION ...............................................................................................................1
`II. LEGAL STANDARD ..........................................................................................................2
`III. ARGUMENT .......................................................................................................................3
`A. Apple Fails to Carry Its Burd en of Showing that the Two
`Claims It Selected Are Representative of All Sixteen
`Remaining Claims. ...................................................................................................3
`B. The Fraud Reduction Patents Claim Eligible Subject Matter
`under § 101. .............................................................................................................5
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`1. Step one: the Asserted Claims of the Fraud
`Reduction Patents are not directed to an abstract idea.
`......................................................................................................................6
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`2. Step two: Claim 9 of the ’010 Patent involves more
`than performing well-unde rstood, routine, and
`conventional activities. ..............................................................................10
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`C. The Authentication Patents Claim Eligible Subject Matter
`under § 101. ...........................................................................................................11
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`1. Step one: the Asserted Claims of the Authentication
`Patents are not directed to an abstract idea. ...............................................12
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`2. Step two: the Authentication Patents’ claims involve
`more than performing well-understood, routine, and
`conventional activities. ..............................................................................14
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`IV. CONCLUSION ..................................................................................................................15
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`TABLE OF AUTHORITIES
` Page(s)
`CASES
`Aatrix Software, Inc. v. Green Shades Software, Inc.,
`882 F.3d 1121 (Fed. Cir. 2018)................................................................................................10
`Alice Corp. v. CLS Bank Intern.,
`573 U.S. 208 (2014) ...............................................................................................................2, 3
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016)................................................................................................13
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018)........................................................................................ passim
`Comair Rotron, Inc. v. Nippon Densan Corp.,
`49 F.3d 1535 (Fed. Cir. 1995)....................................................................................................3
`Core Wireless Licensing S.A.R.L. v. LR Elecs., Inc.,
`880 F.3d 1356 (Fed. Cir. 2018)............................................................................................7, 12
`Cronos Techs., LLC v. Expedia, Inc.,
`No. CV 13-1538-LPS, 2015 WL 5234040 (D. Del. Sept. 8, 2015) ...........................................4
`Cunningham v. Circle 8 Crane Servs., L.L.C.,
`64 F.4th 597 (5th Cir. 2023) ......................................................................................................2
`Diamond v. Diehr,
`450 U.S. 175 (1981) ...................................................................................................................7
`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`958 F.3d 1178 (Fed. Cir. 2020)................................................................................................14
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016)..................................................................................................7
`Intell. Ventures II LLC v. Sprint Spectrum, L.P.,
`No. 2:17-CV-00662-JRG, 2018 WL 6804804 (E.D. Tex. Sept. 24, 2018) ...............................4
`Koninklijke KPN N.V. v. Gemalto M2M GmbH,
`942 F.3d 1143 (Fed. Cir. 2019)................................................................................................14
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016)............................................................................................7, 12
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`Mosaic Brands, Inc. v. Ridge Wallet LLC,
`55 F.4th 1354 (Fed. Cir. 2022) ..............................................................................................2, 5
`Perdiemco, LLC v. Industrack LLC,
`No. 2:15-cv-727-JRG-RSP, 2016 WL 5719697 (E.D. Tex. Sept. 21, 2016) .............................4
`SRI Int’l, Inc. v. Cisco Sys., Inc.,
`930 F.3d 1295 (Fed. Cir. 2019)............................................................................................8, 13
`TecSec, Inc. v. Adobe Inc.,
`978 F.3d 1278 (Fed. Cir. 2020)..................................................................................................7
`Trading Techs. Int’l, Inc. v. CQG, Inc.,
`675 F. App’x 1001 (Fed. Cir. 2017) ..........................................................................................7
`United States ex rel. Johnson v. Raytheon Co.,
`93 F.4th 776 (5th Cir. 2024) ......................................................................................................2
`Visual Memory LLC v. NVIDIA Corp.,
`867 F.3d 1253 (Fed. Cir. 2017)..................................................................................................9
`STATUTES
`35 U.S.C. § 101 ...................................................................................................................... passim
`35 U.S.C. § 282 ................................................................................................................................3
`OTHER AUTHORITIES
`Fed. R. Civ. P. 56(a) ....................................................................................................................2, 5
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`TABLE OF ABBREVIATIONS
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`Term Definition
`Apple Defendant Apple Inc.
`Carbyne Plaintiff Carbyne Biometrics, LLC
`’105 Patent U.S. Patent No. 11,475,105
`’138 Patent U.S. Patent No. 11,514,138
`’010 Patent U.S. Patent No. 9,972,010
`’656 Patent U.S. Patent No. 10,713,656
`’886 Patent U.S. Patent No. 11,526,886
`Fraud Reduction Patents The ’010, ’656, and ’886 Patents
`Fraud Reduction Claims Claims 1, 6, and 9 of the ’010 Patent;
`claims 1 and 8 of the ’656 Patent, and
`claims 1, 12 and 14 of the ’886 Patent
`Authentication Patents The ’105 and ’138 Patents
`Authentication Claims Claims 1, 7-8 and 25 of the ’138 Patent
`and claims 1, 9, 14 and 35 of the ’105
`Patent
`Asserted Patents The ’105, ’138, ’010, ’656, and ’886
`Patents
`Asserted Claims The Fraud Claims and Authentication
`Claims
`Motion or Mot. Motion For Summary Judgment Of Invalidity
`for Lack Of Subject Matter Eligibility Under
`35 U.S.C. § 101
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`I. INTRODUCTION
`The Asserted Claims are directed to patent eligible subject matter under 35 U.S.C. § 101.
`The Asserted Claims offer technological solutions to problems rooted in computer technology that
`recite inventive concepts over the prior art. The systems and methods of the Fraud Reduction
`Patents provide a custom user interface combined with biometric authentication techniques to
`determine that a user is alive along with the collection of a user’s location to reduce fraud in
`electronic transactions. This is done by establishing deterrents that otherwise do not exist in the
`electronic transaction environment and which prior systems failed to address. The Authentication
`Patents improve security of user authenticatio n and the underlying computers by implementing
`novel hardware configurations of storage device s, cryptographic key cred entials, and processors
`in conjunction with biometric authentication.
`Apple’s assertion that the Asserted Claims are ineligible under Alice fail. First off, Apple
`analyzes just two of the sixteen asserted claims for the five asserted patents. But Apple gives only
`sweeping, conclusory statements for how the two cl aims it analyzed are allegedly representative
`of the other claims that it ignores. That is not enough. The Court cannot treat claims as
`representative without agreement by the parties or a meaningful analysis to show the representative
`claims are indistinct from the represented claims. Beyond this, at step one, Apple fails to show that
`the Asserted Claims are directed to an abstract idea. To reach its conclusion, Apple overgeneralizes
`and reads out important elements of the Asserted Claims, which the Federal Circuit has warned
`against. Apple’s step two arguments recycle its step one arguments and fail largely for the same
`reasons. In addition, the parties’ experts provide conflicting testimony on the state of the prior art
`and whether the Asserted Claims recite an inventive concept, which creates a fact issue that cannot
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`be resolved on summary judgment. In any event, all the Asserted Claims meet § 101’s eligibility
`requirements at both steps. Apple’s motion for summary judgment should be denied.
`II. LEGAL STANDARD
`The Court may grant summary judgment only if Apple “shows that there is no genuine
`dispute as to any material fact and [it] is entitled to judgment as a matter of law.” Fed. R. Civ. P.
`56(a). A dispute is genuine if the evidence would let a reasonable jury find for Carbyne. See United
`States ex rel. Johnson v. Raytheon Co., 93 F.4th 776 (5th Cir. 2024). The Court must view the facts
`most favorably to Carbyne “and draw all reasonable inferences in its favor.” Id.
`The summary-judgment bar is even higher for a § 101 invalidity defense. At trial, Apple
`would have the “heavy” burden to invalidate Carbyne’s patents by clear and convincing evidence.
`See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1366 (Fed. Cir. 2022). So summary
`judgment imposes an “even greater” burden: “to show that no reasonable factfinder, taking the
`evidence in the light most favorable to [Carbyne ], could do anything other than find clear and
`convincing evidence of” invalidity. Id.; accord Cunningham v. Circle 8 Crane Servs., L.L.C. , 64
`F.4th 597, 600 (5th Cir. 2023) (cleaned up). Eligibility under § 101 “is a question of law that may
`contain underlying facts,” and Apple’s heavy burden applies to those facts as it would any other
`fact “pertinent to the invalidity conclusion.” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir.
`2018) (cleaned up) (citing Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011)).
`An inventor may patent “any new and usef ul process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Section 101
`implicitly exempts “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS
`Bank Intern., 573 U.S. 208, 216 (2014). But Alice warned against letting these exclusions “swallow
`all of patent law.” Id. at 217. “At some level,” the Court e xplained, “all inventions embody, use,
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`reflect, rest on, or apply laws of nature , natural phenomena, or abstract ideas.” Id. (cleaned up).
`“Thus, an invention is not rendered ineligible for patent simply because it involves an abstract
`idea.” Id. “Applications of such concepts to a new and useful end remain eligible for patent
`protection.” Id. (cleaned up).
`Alice sets forth a two-step test. First, a court asks “whether the claims at issue are directed
`to” an abstract idea. Id. at 218. Second, a court “examine[s] the elements of the claim to determine
`whether it contains an inventive co ncept sufficient to transform the claimed abstract idea into a
`patent-eligible application.” Id. at 221. A claim contains an inventive concept if it “involve[s] more
`than performance of well-understood, routine, and conventional activities previously known in the
`industry.” Berkheimer, 881 F.3d at 1367 (cleaned up).
`III. ARGUMENT
`A. Apple Fails to Carry Its Burden of Showing that the Two Claims It Selected
`Are Representative of All Sixteen Remaining Claims.
`In its summary judgment motion, Apple analyzes just two of the Asserted Claims—one for
`the Fraud Reduction Patents (’010 Patent, claim 9) and one for the Authentication Patents (’138
`Patent, claim 1), which purportedly represent all sixteen of the Asserted Claims of the five Asserted
`Patents. See Mot. 3, 10; Dkts. 186-1 and 186-2. As explained below, those two claims are eligible
`under § 101, but summary judgment is improper for the remaining claims because Apple has failed
`to show (or even meaningfully argue) that they are indistinct from the two representative claims.
`Each patent claims a distinct invention, and a court must pres ume that each claim is valid
`independently of all others. 35 U.S.C. § 282; Comair Rotron, Inc. v. Nippon Densan Corp. , 49
`F.3d 1535, 1539 (Fed. Cir. 1995). So a court should tr eat a claim as repres entative only “if the
`patentee does not present any mean ingful argument for the distinctive significance of any claim
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`limitations not found in the repres entative claim or if the partie s agree to treat a claim as
`representative.” Berkheimer, 881 F.3d at 1365.
`A court cannot treat a claim as representative just because it is an independent claim
`(purportedly representing dependent claims) or because the patentee focuses its “primary”
`arguments on it. Id. at 1365–66. When “there is no indication that the parties have agreed that [a
`claim] is representative for purposes of the Cour t’s § 101 analysis, [a defendant] must provide at
`least some meaningful analysis for each of the challenged claims.” See Cronos Techs., LLC v.
`Expedia, Inc., No. CV 13-1538-LPS, 2015 WL 5234040, at *3 (D. Del. Sept. 8, 2015). Thus, a
`court cannot determine § 101 elig ibility based on a defendant’s conclusory statements on
`representativeness. See, e.g., Intell. Ventures II LLC v. Sprint Spectrum, L.P., No. 2:17-CV-00662-
`JRG, 2018 WL 6804804, at *3 (E.D. Tex. Se pt. 24, 2018) (defendant failed to show
`representativeness for motion to dismiss by giving only “superficial reasoning” and “high-level,
`conclusory statements”); Perdiemco, LLC v. Industrack LLC , No. 2:15-cv-727-JRG-RSP, 2016
`WL 5719697, at *7 (E.D. Tex. Sept. 21, 2016) (same when the defendant stripped away all
`computer-related elements from purportedly repr esented claims “without addressing the role
`played by those elements in the context of the claim as an ordered combination”).
`The parties here do not agree th at the two chosen claims are representative of all sixteen
`Asserted Claims. It was then Apple’s burden to analyze all the Asserted Claims, but it failed to do
`so. See Mot. 3, 10, Dkts. 186-1 and 186-2. Apple’s analys is of the remaining fourteen claims
`essentially consist of one conclu sory sentence for each set of pa tents: “the asserted dependent
`claims add only minor features that do not cha nge the character of th e independent claims,”
`followed by an over-generalized description of the features added by each dependent claim. Mot.
`3, 10. And Apple’s experts do not perform a represen tative analysis of the two selected claims.
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`Apple’s “high-level, concluso ry statements can hardly be considered ‘analysis,’” see Intell.
`Ventures, 2018 WL 6804804, at *3, and do not meet Apple’s burden to show representativeness.
`Meaningful analysis confirms that the claims Apple selected are not representative. For the
`Fraud Reduction Patents, claim 6 of the ’010 Patent and claim 8 of the ’656 Patent require that the
`“virtual likeness” of the user’s face to be an avatar, a repr esentation unique to the computer
`environment, further emphasizing the invention is directed to solving a problem rooted in
`computer technology. See Dkts. 186-6 (’656 Patent) and 186- 7 (’886 Patent). The dependent
`claims of the Authentication Patents add elements that change the hardware configuration to
`differentiate them from the independent claims. Cl aims 9-11 of the ’105 Patent add a restricted
`interface that improves the security of the claimed authentication system. See Dkt. 186-3 (’105
`Patent). Claims 7 and 8 of the ’138 Patent add remote wiping and automatic wiping, both of which
`provide an added technical component to the “wiping” element of the independent claim. See Dkt.
`186-4 (’138 Patent). Apple fails to meaningfully address these differences. See Mot. 3, 10.
`Because Apple offers no meaningful analysis to carry its burden on representativeness—
`let alone a separate § 101 analysis for the purportedly represented claims—Apple cannot carry its
`summary-judgment burden on the 14 purportedly represented claims. See Fed. R. Civ. P. 56(a);
`Mosaic Brands, 55 F.4th at 1366. For that reason alone, the Court should deny summary judgment.
`B. The Fraud Reduction Patents Claim Eligible Subject Matter under § 101.
`The Fraud Reduction Patents claim novel systems and methods for reducing fraud in
`electronic financial transactions. See Dkt. 186-5 (’010 Patent), abstract and cl. 1.1 As the common
`specification explains, fraud in electronic transactions is “an ongoing problem” that is “particularly
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`1 The Fraud Reduction Patents share a common speci fication. For convenien ce, citations to the
`specification will be to the ’010 Patent (Dkt. 186-5).
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`devastating” because the technological environm ent in which electronic transactions occur
`removes the two factors that deter people from co mmitting fraud: (1) associated feelings of guilt
`and (2) the risk of getting caught. Id. at 1:19, 1:24-1:27, 4:17-4:56.
`The Fraud Reduction Patents provide a techni cal solution to reduce fraud in electronic
`transactions by establishing these deterrent factors that do not exist in the electronic environment
`by providing an improved graphic user interfac e that implements biometric authentication to
`determine a user is aliv e and, in the case of th e ’656 and ’886 Patents, collection of location
`information to determine a user’s physical location. See id. 4:17-4:56; claim 1 of ’010, ’656, and
`’886 Patents. The claimed user interface reduces fraud by including a likeness of the recipient so
`that the sender knows who they are sending money to. See ’010 Patent at 5:1-5:18. The capture
`and analysis of the user’s biometric information, and location information in the case of the ’656
`and ’886 Patents, increases the li kelihood, real or perceived, that a potential fraudster will be
`caught and stopped before the fraud is realized. See id. 4:17-4:19; Dkt. 184-3 (Dr. Cole Rebuttal
`Rep.) ¶¶ 692-99. The combination of the customi zed user interface with an “aliveness” and
`location determination provides an improvement over existing techniques for detecting electronic
`payment fraud that failed to address both fraud deterrent factors. Id.
`1. Step one: the Asserted Claims of the Fraud Reduction Patents are not
`directed to an abstract idea.
`Claim 9 of the ’010 Patent is not directed to an abstract idea. To start, Apple overgeneralizes
`the Fraud Reduction Patents’ claims by describing them as directed to “collecting, receiving, and
`analyzing information about a user—namely, biometric (and, for the ’656 and ’886 Patents,
`location) information—to enable a transaction,” and then further abstracting them to merely
`“collect[ing] and examin[ing] data to authenticate th e user’s identity.” Mot. 4. “At step one,” the
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`court “must articulate what the claims are direct ed to with enough specific ity to ensure the step
`one inquiry is meaningful.” Core Wireless Licensing S.A.R.L. v. LR Elecs., Inc. , 880 F.3d 1356,
`1361 (Fed. Cir. 2018). And since all inventions could be abstracted to the point of ineligibility, cf.
`Diamond v. Diehr , 450 U.S. 175, 189 n.12 (1981), the Fede ral Circuit has “c autioned against
`overgeneralizing claims in the § 101 analysis.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1293
`(Fed. Cir. 2020); see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
`Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (“[D]escribing
`the claims at such a high level of abstraction and untethered from the language of the claims all
`but ensures that the exceptions to § 101 swallow the rule.”).
`Apple’s abstract description of the Fraud Reduction Patent claims is untethered to the
`claims—and too general for meaningful step-one analysis—because they recite a specific means
`for deterring electronic payment fraud. The i nvention provides a custom user interface in
`conjunction with biometric authentication to determine a user is alive, along with collection of a
`location information (’656 and ’886 Patents). See Dkt. 186-5 at 4:17-4:56, 8:54-8:67; claim 1 of
`’010, ’656, and ’886 Patents.
`The Federal Circuit has held that claims, like those of Claim 9 of the ’010 Patent, are not
`directed to an abstract idea. For example, in Core Wireless, the claims at issue involved “improved
`display interfaces, particularly for electronic devices with small screens like mobile devices.” 880
`F.3d at 1363. As a result, the Federal Circuit held that the claims “recite[d] a specific improvement
`over prior systems, resulting in an improved user interface for electronic devices,” making them
`patent eligible at step one. Id. at 1362-63; Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x
`1001 (Fed. Cir. 2017) (same when claims “require[d] a specific, structured graphical user interface
`paired with a prescribed functionality directly related to the graphical user interface’s structure”).
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`Apple ignores the claimed user interface elements in its abstraction of the claims.
`The Federal Circuit has also found claims directed to specific authentication or verification
`methods that depart from previous approach es and improve computer technology—like Claim 9
`of the ’010 Patent—are not directed to an abstract idea. For instance, in Ancora Techs., Inc. v. HTC
`Am., Inc. , the Federal Circuit held that claims direct ed to storing a verifi cation structure in a
`computer memory were directed to non-abstra ct improvements in computer functionality by
`addressing the “vulnerability of license-authorization software to hacking.” 908 F.3d 1343, 1348-
`49 (Fed. Cir. 2018). As the Federal Circuit expl ained, these claims “y ield[ed] a tangible
`technological benefit (by making the claime d system less susceptible to hacking).” Id. at 1350.
`Likewise, in SRI, the Federal Circuit found claims patent el igible that were “directed to using a
`specific technique—using a plurality of network monitors that each analyze specific types of data
`on the network and integrating reports from the monitors—to solve a technological problem arising
`in computer networks: identifying hackers or potential intruders into the network.” SRI Int’l, Inc.
`v. Cisco Sys., Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019). Like the claims in SRI and Ancora, Claim
`9 of the ’010 Patent is directed to a specific technique—the combina tion of a custom user interface
`with an aliveness determination and collection of location information—that departs from previous
`approaches to solve the technological problem of electronic fraud. Dkt. 184-3 at ¶¶ 692-99.
`The cases Apple cites to support its ove rsimplified reading of the claims are
`distinguishable as they do not involve claims that include a technological improvement. Mot. 4-
`5. Unlike in Universal Secure Registry LLC v. Apple Inc. (“USR”), where court found that the
`claims recited the conventional collection and examination of biometric data to authenticate a
`user’s identity and were thus directed to an abstract idea, here, the Fraud Reduction Patents
`recite a specific technological improvement to the biometric analysis itself —an “aliveness”
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`determination—that was missing in the conventional claims the USR court found ineligible. See
`10 F.4th 1342, 1352 (Fed. Cir. 2021). The claims here also recite a custom ized graphical user
`interface that was not present in USR. Likewise, in FairWarning IP, LLC v. Iatric Systems, Inc. ,
`the claims were directed to “the broad concept of monitoring audit log data” and not a problem
`“specifically arising in the realm of comput er technology” like reducing electronic payment
`fraud, which the Fraud Reduction claims address with a technological solution—a custom user
`interface combined with an aliveness dete rmination. 839 F.3d 1089, 1097 (Fed. Cir. 2016)
`(citations omitted). And in CyberSource Corp. v. Retail Decisions, Inc. , the claims were
`directed to detecting credit card fraud by “utiliz[ing] information relating credit card
`transactions to particular Internet address[es],” which is not a technological solution, like the
`one claimed here. 654 F.3d 1366, 1368 (Fed. Cir. 2011).
`Nor does Claim 9 of the ’010 Patent describe the invention in functional, result-oriented
`terms that amounts to a “black box” as Apple suggests. Mot. 6 (citing WhitServe LLC v. Dropbox,
`Inc., 854 F. App’x 367, 371-72 (Fed. Cir. 2021)). Claim 9 of the ’010 Patent instead offers a
`specific, novel technical solution—a cust om user interface implementing biometric
`authentication to determine a user is alive—th at addressed a hole in existing fraud detection
`systems that did not address both fraud deterrent factors (feelings of guilt and likelihood of being
`caught). See Dkt. 186-5 at 1:19, 1:24-1:27, 4:17-4:19. Apple’s assertion that the claims are a
`“black box” because they supposedly fail to explain how to determine a user is alive (not true) is
`not an eligibility issue but an enablement issue and thus not relevant to the step-one analysis.
`Mot. 6; see Visual Memory LLC v. NVIDIA Corp. , 867 F.3d 1253, 1261 (Fed. Cir. 2017).
`Likewise, Apple’s argument that the claims could be performed by a mental process ignores the
`fact that the problem of electronic payment frau d is created by the technological environment,
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`without which the Asserted Claims cannot exist. Mot. 6-7.
`2. Step two: Claim 9 of the ’010 Patent involves more than performing
`well-understood, routine, and conventional activities.
`Even if Claim 9 of the ’010 Patent was directed to an abstract idea, it would be eligible at
`step two because the claimed invention was not “well-understood, routine, and conventional.” See
`Berkheimer, 881 F.3d at 1367. “Whether the claim elements or the claimed combination are well-
`understood, routine, conventiona l is a question of fact.” Aatrix Software, Inc. v. Green Shades
`Software, Inc., 882 F.3d 1121, 1128 (Fed. Cir. 2018).
`A fact issue exists here because the Fra ud Reduction claims disclose an unconventional
`way to detect and reduce fraud in electronic transactions that improves over techniques that
`existed in the prior art. As Carbyne’s expert Dr. Cole explained, the claims of the Fraud Reduction
`Patents “provide for an improved graphical user interface coupled with fraud detection analysis
`that did not exist in the prio r art.” Dkt. 184-3, ¶ 699. As Dr. Cole further explained, “[b]y
`combining the claimed graphical user interface (that would increase feelings of guilt in a would-
`be fraudster) and the fraud detection analysis of biometric and location information for a user
`(increasing the likelihood, real or perceived, that a fraudster will be caught), the Asserted Claims
`provide a unique, comprehensive technological solution for comba ting electronic fraud that did
`not exist at the time of the invention.” Id. What’s more, “[b]y employing an improved interface
`and this fraud detection analysis , the Asserted Claims promote th e factors that prevent people
`from committing fraud that are difficult to address in a virtual environment” and “therefore
`provide for a novel solution to a problem rooted in computer technology.” Id. ¶ 697; see Dkt.
`186-5 at 1:19, 1:24-1:27, 4:17-4:56 and claim 1 of the ’010, ’656, and ’886 Patents.
`Apple’s step-two arguments largely repeat its step-one arguments and fail for the same
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`reasons just explained. Mot. 7-9 (arguing “undisputedly conventional computer components used
`in a conventional manner” and claims do not “p rovide a technological solution to address a
`problem specifically arising in th e realm of computers” ). In addition, Apple’s expert based his
`step-two opinion that the claims recite conve ntional, well-known elements on the prior-art
`references relied upon for Apple’s § 103 invalidity grounds. See Dkt. 184-2 ¶¶ 954-61. Carbyne’s
`expert refutes these step-two opinions as well as Apple’s expert’s opinions on the prior art
`references. See Dkt. 184-3 ¶¶ 111-671, 692-99 These conf licting opinions create a fact issue
`precluding summary judgment for Apple, who has the burden to prove these disputed facts by
`clear and convincing evidence. See Berkheimer, 881 F.3d at 1367.
`C. The Authentication Patents Claim Eligible Subject Matter under § 101.
`The Authentication Patents claim novel ways for providing increased security for user
`authentication in a computing environment using a cryptographic key. When logging in to online
`services and websites, “users will often engage in practices such as password re-use, and/or the
`selection of poor quality passwords, which render their creden tials less secure against attacks.”
`’138 Patent at 1:40-1:42. Claim 8 of the ’656 Patent provides improved security over prior
`authentication systems by claiming biometric auth entication techniques that implement specific
`hardware configurations including a restricted interface, and specific software such as utilizing
`cryptographic keys, a same brand devi ce backup, and wiping capabilities. See ’105 Patent cls. 1,
`9-11; ’138 Patent cls. 1, 7-8.
`The implementation of biometric authentication with a cryptographic key as the credential
`eliminates the need for a user to memorize and recycle simple passwords, obviating the need for a
`password at all in favor of the user’s unique biometric information. The claimed invention further
`enhances security of the user’s sensitive information by incorporating various novel hardware
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`configurations. For one, the claims incorporate a restricted interface to limit access to user
`credentials housed in a secure storage. See ’105 Patent at cls. 9-11 (discussing different forms of
`the “restricted interface” such as a “dedicated physical connection” and “application programming
`interface” to help restrict access to the user’s most important information); ’138 Patent at cls. 11-
`12, 23-24. The “same brand backup” claimed by the ’105 Patent improves end-to-end security in
`the system by ensuring continuity between a first and second device handling a user’s
`authentication information. Id. at cl. 1. The ’138 Patent also claims a storage device configured to
`facilitate wiping of a biometric template and