Apple Inc v. Speir Technologies Ltd

1. Case Identification

• Case #: IPR2023-00542
• Patent #: 7,765,399
• Filed: February 1, 2023
• Petitioner(s): Apple Inc.
• Patent Owner(s): Terence W. O'Brien
• Challenged Claims: 1-7, 9-10

2. Patent Overview

• Title: Computer Architecture for a Handheld Electronic Device
• Brief Description: The ’399 patent describes a computer architecture for a mobile device, such as a PDA, that includes separate secure and non-secure processing environments. The architecture comprises a secure user processor, a non-secure user processor, and a cryptographic engine that acts as a bridge for data communication between the two.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-10 are obvious over Marek in view of Skarine.

• Prior Art Relied Upon: Marek (Patent 7,716,720) and Skarine (Application # 2005/0190159).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Marek discloses the core architecture of the ’399 patent, describing a system with a secure computing module (SCM) that can be added to an "untrusted host environment" like a PDA. Marek's SCM contains a secure processor and a cryptographic engine, while the host PDA provides the non-secure processor. Skarine, in turn, discloses conventional components and configurations for mobile devices, such as RF transceivers, memory, and audio subsystems (speakers/microphones), which Petitioner asserted would fill in any implementation details not explicitly detailed in Marek. The combination of Marek's secure architecture with Skarine's conventional mobile device features allegedly discloses all elements of the independent claims, including the two distinct human/machine interfaces (one secure, one non-secure).
  • Motivation to Combine: A POSITA would combine Marek and Skarine to provide Marek's secure mobile device with standard, expected functionalities. Marek teaches applying its secure module to devices like PDAs and cell phones, and Skarine provides the well-known components (e.g., cellular transceiver) needed to realize that functionality. The combination was presented as a predictable integration of known elements to achieve a known goal.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success because both references are in the field of mobile devices, and integrating standard components as taught by Skarine into a mobile platform like Marek's was a routine and well-understood practice.

Ground 2: Claims 4-5 are obvious over Marek in view of Skarine and Yoon.

• Prior Art Relied Upon: Marek (Patent 7,716,720), Skarine (Application # 2005/0190159), and Yoon (Application # 2004/0082368).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Marek/Skarine combination to specifically address the limitations of claims 4 and 5, which require an input device allowing a user to control the non-secure processor. Petitioner argued that Yoon teaches using a microphone to input voice commands (e.g., for voice dialing) that control the mobile device's main processor. When added to the Marek/Skarine combination, Yoon's teaching provides the specific functionality of using an input device (the microphone from Skarine) to control the non-secure processor of the untrusted host.
  • Motivation to Combine: A POSITA would combine Yoon with the base combination to add hands-free voice command capabilities, a highly desirable and common feature for mobile devices that improves accessibility and safety (e.g., for use while driving). This modification was argued to be a simple application of a known technique to a known system for a predictable result.
  • Expectation of Success: Success would be expected because the necessary hardware (microphone) was already present in the Marek/Skarine combination, and voice command technology as taught by Yoon was widely implemented in mobile devices at the time.

Ground 3: Claims 9-10 are obvious over Marek in view of Skarine and Moon.

• Prior Art Relied Upon: Marek (Patent 7,716,720), Skarine (Application # 2005/0190159), and Moon (Patent 7,571,475).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the Marek/Skarine combination to address the limitation of claim 9 requiring at least a portion of the secure human/machine interface to be located in a "physically secure enclosure." Petitioner contended that Moon teaches enhancing the security of a mobile device by incorporating a tamper sensor into its housing to detect forced entry. This housing, equipped with a tamper sensor, constitutes the claimed "physically secure enclosure."
  • Motivation to Combine: A POSITA developing a device with Marek's security-focused architecture would be motivated to incorporate Moon's tamper-detection feature to further enhance that security. Protecting the device from physical intrusion is a natural and logical extension of Marek's goal of protecting it from digital threats.
  • Expectation of Success: Petitioner argued that success would be expected because implementing tamper sensors in the housings of electronic devices was a well-known technique for improving security, particularly for "mission critical" devices or those handling sensitive information.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its very early stages, having recently been transferred with no scheduled trial date. The Board’s projected Final Written Decision (FWD) was anticipated to issue before a trial could occur.
• Petitioner emphasized that its unpatentability challenges are "compelling," which under the USPTO Director's guidance, weighs strongly in favor of institution.
• Petitioner also argued that denial under §325(d) is unwarranted because the primary prior art references (Marek, Skarine, Yoon, and Moon) were not cited or considered during the original prosecution of the ’399 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 and 9-10 of the ’399 patent as unpatentable.