`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner
`
`
`
`CASE: IPR2022-00600
`U.S. PATENT NO. 8,620,039
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
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`
`

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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`TABLE OF CONTENTS
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`V. 
`
`2. 
`
`3. 
`
`I. 
`Introduction ...................................................................................................... 1 
`ʼ039 Patent Overview ...................................................................................... 4 
`II. 
`III.  Level of Ordinary Skill .................................................................................... 5 
`IV.  Claim Construction .......................................................................................... 5 
`A. 
`Preamble ................................................................................................ 5 
`B. 
`“Dependent Upon” ................................................................................ 7 
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS ........................................................................................................ 7 
`A. 
`The Prior Art Does Not Teach the “Defining, Dependent Upon the
`Received Card Information, a Memory Location in a Local
`Memory External to the Card” Limitation ............................................ 7 
`1. 
`Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location…” ................................................................................. 7 
`Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location…” ............................................................................... 12 
`Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location in a Local Memory External to the Card” ................. 15 
`There is No Motivation to Combine Apple’s Cited Prior Art to
`Arrive at the “Defining, Dependent Upon Received Card
`Information, a Memory Location…” ........................................ 17 
`Bradford in view of Foss in further view of Yamane Does Not
`Teach “Determining if the Defined Memory Location is
`Unoccupied; and Storing, if the Memory Location is Unoccupied,
`the Biometric Signature at the Defined Memory Location” ............... 19 
`1. 
`Bradford in view of Foss in further view of Yamane Does Not
`Teach “Determining if the Defined Memory Location is
`Unoccupied” .............................................................................. 20 
`
`4. 
`
`B. 
`
`i
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`

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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`2. 
`
`Bradford in view of Foss in further view of Yamane Does Not
`Teach “Storing, if the Memory Location is Unoccupied, the
`Biometric Signature at the Defined Memory Location” ........... 21 
`There is No Motivation to Combine Bradford with Yamane ... 23 
`3. 
`C. 
`Independent Claims 1 and 19 .............................................................. 25 
`D.  Dependent Claims ............................................................................... 25 
`VI.  CONCLUSION .............................................................................................. 26 
`
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`
`ii
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`LIST OF EXHIBITS
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom II (Chuck Easttom) Ph.D.,
`D.Sc.
`
`2002
`
`2003
`
`
`
`
`CV of Dr. Chuck Easttom
`
`Rough Deposition Transcript of Dr. Andrew Sears, dated
`January 13, 2023
`
`
`
`iii
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`

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`I.
`
`INTRODUCTION
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`The limitations of the independent claims of U.S. Patent No. 8,620,039 (“the
`
`ʼ039 Patent”) describes a method (claim 1) and a processor to execute a method
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`(claim 19) of enrolling users in a biometric card pointer system, the method
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`comprising the steps of receiving card information (representative clause [1a]);1
`
`receiving a biometric signature (representative clause [1b]); defining, dependent
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`upon the received card information, a memory location in a local memory external
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`to the card (representative clause [1c]); determining if the defined memory location
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`is unoccupied (representative clause [1d]); and storing, if the memory location is
`
`unoccupied, the biometric signature at the defined memory location (representative
`
`clause [1e]). Apple cobbles together a single, three-reference challenge to the claims
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`of the ʼ039 Patent. Even with these three references in hand, Apple must ignore its
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`own characterization of the prior art and its construction of the subject claims to
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`mount an obviousness challenge.
`
`
`1 These clauses refer to the numbering system used by the Board to label the various
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`claim limitations in claim 1 of the ʼ039 Patent. Paper 8 at 7. As the Board noted,
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`the only difference between claim 1 and claim 19 (the only other challenged
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`independent claim) is that the method steps are recited “in the context of ‘a processor
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`to execute a method of enrolling in a biometric card pointer system.’” Id.
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`1
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`

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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`First, Bradford in purported combination with Foss does not teach “defining,
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`dependent upon [] received card information, a memory location in local memory
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`external to the card.” Apple relies on “finding” or “identifying” a memory location
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`which its own expert confirmed was defined before any card information is received.
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`Indeed, on this point the experts for each party agrees, the database entry in the prior
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`art (which Apple’s expert characterized as “the memory location”) is created before
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`card information is received. Apple’s proposed modification to Bradford to
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`explicitly include the act of swiping a card during enrollment goes against many
`
`teachings within Bradford.
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`Second, Apple’s primary reference teaches the attendant’s card being inserted
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`into the gaming machine to enable special screens for enrollment and player training.
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`Despite this teaching, Apple’s proposed combination of Bradford with Foss suggests
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`the player would insert or swipe their card in order to pull up their partially-enrolled
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`account. Not only does Dr. Easttom confirm this is impossible considering
`
`Bradford’s teachings, he further opines that a POSITA would not have sought to
`
`utilize this combination because it creates challenges that overcomplicate the
`
`straightforward player registration process taught by Bradford. Furthermore, Dr.
`
`Easttom opines that these two references, Bradford and Foss, are directed at two
`
`very different issues—namely, enrolling new, single players into a database of
`
`gaming machines (Bradford) as opposed to enrolling additional users onto existing
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`2
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`family stored value accounts (Foss)—and explains why a POSITA would not have
`
`looked to these two references together.
`
`Third, like Bradford and Foss, Yamane describes a “dedicated” area where
`
`biometric data is stored. Put differently, like the other references, Yamane does not
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`“define” a memory location as the dedicated area is a pre-defined location on the
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`disc. Apple only purported rationale for combining Bradford with Yamane is to be
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`able to perform “system-wide audits” of incomplete user profiles. Bradford does
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`not suggest anything of the sort, and indeed Dr. Easttom opines that this functionality
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`would be irrelevant in the claimed enrollment process because the memory location
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`where fingerprint information is stored is necessarily unoccupied until enrollment is
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`complete. There would be no need, then, to perform the “system-wide audits” as
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`Apple suggests.
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`Finally, Apple’s Petition ignores drastic differences between Bradford and
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`Yamane that prove the only reason Apple has put these two references together is
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`hindsight. Yamane teaches storing biometric information in rewritable memory as
`
`opposed to the permanent storage taught by Bradford. Yamane teaches storing
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`multiple software programs on a single disc as opposed to the maximum two
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`software programs running on the gaming machines of Bradford. Yamane teaches
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`highly-portable compact discs whereas Bradford teaches stationary, single-purpose
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`3
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`gaming machines. The vast differences between these references confirms a
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`POSITA would not have looked at the two in combination.
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`Any one of the foregoing problems with Apple’s single challenge ground is
`
`sufficient to defeat the instant petition. The combination of all four issues, however,
`
`means that the Board should give the petition the short shrift it deserves.
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`II.
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`ʼ039 PATENT OVERVIEW
`
`The ʼ039 Patent issued on December 31, 2013 from an application claiming
`
`priority of August 12, 2005. The ʼ039 Patent has 20 claims, claims 1, 3, 13, 15, 18,
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`and 19 of which are independent. Representative claim 1 of the ʼ039 Patent reads:
`
`A method of enrolling in a biometric card pointer system, the method
`comprising the steps of:
`
`receiving card information;
`
`receiving the biometric signature;
`
`defining, dependent upon the received card information, a memory location
`in a local memory external to the card;
`
`determining if the defined memory location is unoccupied; and
`
`storing, if the memory location is unoccupied, the biometric signature at the
`defined memory location.
`
`Ex. 1001, 12:29-38.
`
`As the Board noted, “[t]he ’039 patent, … relates to a biometric card pointer
`
`(BCP) system intended to more efficiently and securely permit a user to store
`
`biometric information during an enrollment process” Paper No. 8 at 3 (citation
`
`4
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`U.S. Patent No. 8,620,039
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`omitted). “The ’039 patent explains further that ‘[t]he biometric signature is stored
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`at a memory address defined by the (‘unique’) card information on the user’s card
`
`as read by the card reader of the verification station.’” Id. (citation omitted). “[T]he
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`’039 patent explains further that ‘in later verification phases, … [t]his signature is
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`compared to the signature stored at the memory location in the memory, the memory
`
`location being defined by the card data read from their card by the card reader.’” Id.
`
`at 5 (citations omitted).
`
`III. LEVEL OF ORDINARY SKILL
`
`CPC does not dispute Apple’s characterization that a hypothetical person of
`
`ordinary skill in the art “would have had at least a bachelor’s degree in computer
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`engineering, computer science, electrical engineering, or a related field, with at least
`
`one year experience in the field of human-machine interfaces and device access
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`security,” and “[a]dditional education or experience may substitute for the above
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`requirements.” Paper No. 1 at 4.
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`IV. CLAIM CONSTRUCTION
`A.
`
`Preamble
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`The ultimate goal of independent Claims 1 and 19 is “storing…the biometric
`
`signature at the defined memory location.” Ex. 1001, 12:37-38, 16:10-11. Clearly,
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`then, these claims are directed towards “a method for enrolling” as the preamble to
`
`each claim states. The claims themselves are drafted in such a manner where the
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`5
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`U.S. Patent No. 8,620,039
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`antecedent basis tracks from the first limitations track and culminate with this
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`“storing” limitation:
`
`(1) receiving card information;
`(2) receiving the biometric signature;
`(3) defining, dependent upon the (1) received card
`information, a memory location in a local memory
`external to the card;
`(4) determining if the (3) defined memory location is
`unoccupied; and
`(5) storing, (4) if the memory location is unoccupied, the
`(2) biometric signature at the (3) defined memory location.
`Ex. 2001, ¶¶35-36.
`
`Dr. Sears acknowledged the ʼ039 Patent is drafted with the following order
`
`required: “obtain card information first, define the memory location based on that
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`information second, [and] store the biometric signature at that defined memory
`
`location third.” Ex. 2003, 14:10-16:17.
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`The preamble to claims 1 and 19 describes the claims within the context of a
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`method “of enrolling.” Even if the preamble is not limiting, Claims 1 and 19 are
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`clearly directed towards a method of enrolling, i.e. with the ultimate goal of storing
`
`received information, and should be evaluated from this context. In re Distefano,
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`808 F.3d 845, 848 (Fed. Cir. 2015) (citing In re Gulack, 703 F.2d 1381, 1385 (Fed.
`
`Cir. 1983)).
`
`6
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`

`B.
`
`“Dependent Upon”
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`Claim 1 of the ʼ039 Patent requires “defining, dependent upon [] received
`
`card information, a memory location in a local memory external to the card.” Ex.
`
`1001, 12:33-34. Apple proposed, and the Board adopted, the plain and ordinary
`
`meaning, defined as “contingent upon or determined by” as the construction of
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`“accessibility attribute.” Paper No. 1 at 6; Paper No. 8 at 10.
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`In short, a memory location in a local memory which corresponds to, but is
`
`not contingent upon or determined by, the received card information is not
`
`“dependent upon” under Apple’s claim construction. As discussed below, however,
`
`Apple improperly tries to back away from this distinction in challenging the validity
`
`of the subject claims.
`
`V. THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS
`A. The Prior Art Does Not Teach the “Defining, Dependent Upon the
`Received Card Information, a Memory Location in a Local
`Memory External to the Card” Limitation
`1. Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location…”
`
`Petitioner repeatedly characterizes “defining, dependent upon the received
`
`card information” term with respect to Bradford as “to find” or “identifying.” See
`
`Pet., 19, 21. Defining, however, is not finding or identifying something that has
`
`already been defined. Ex. 2001, ¶41. Indeed, a POSITA would consider the word
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`7
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`“defining,” especially in the context of enrollment, to mean “setting” or
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`“establishing.” Id. In other words, in the context of the claim language, a memory
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`location is set or established. Petitioner’s reliance on the verbs “find” and “identify”
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`therefore fail to teach this claim limitation. Id., ¶¶42-43.
`
`Apple’s own expert confirmed that there is temporal structure to challenged
`
`claims 1 and 19. See Ex. 2003, 15:21-16:6. Indeed, to sustain proper antecedent
`
`basis, the claim is drafted in such a way that temporal structure is implicit. See
`
`Section IV.A (describing the temporal structure of the claim in the context of
`
`enrollment). Put in the context of the temporal structure of the claim, this limitation
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`first requires card information be received. Ex. 2001, ¶45. After, and only after,
`
`that card information is received can a memory location be defined. Id.; see also Ex.
`
`2003, 15:12-16:6 (“So you need to have the card information. The card information
`
`allows you to define the location where the information either is or will be stored
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`and then you can store it or you can access it.”). This comports with the construction
`
`of “dependent upon,” adopted by the Board: “contingent on or determined by.”
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`Decision, 10; see also Petition, 6. Put differently, after card information is received,
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`the claim requires defining a memory location “contingent on” the received card
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`information or that a defined memory location is “determined by” the received card
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`information. Ex. 2001, ¶42.
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`8
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`Bradford does not teach first receiving card information and then defining a
`
`memory location based on that received card information. Ex. 2003, 29:2-30:15.
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`Instead, Bradford teaches a player approaching a “customer service counter,”
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`whereby an attendant assists the player in (1) creating a player ID entry and then (2)
`
`providing a first authenticator to the player. Petition, 26 (“During enrollment of a
`
`player in Bradford, a player entry is created in the player ID database at a customer
`
`service counter. The player’s information is entered into the entry. The casino
`
`attendant then provides the player with the first authenticator…”)2 (internal
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`citations omitted); see also Ex. 2001, ¶44. Bradford, notably, does not teach
`
`utilizing the first authenticator to create a player ID entry. Dr. Sears was similarly
`
`unable to point to any portion or embodiment of Bradford teaching this reverse
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`arrangement. Ex. 2003, 24:4-25:9, 29:2-30:15.
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`Foss does not cure the deficiencies of Bradford in failing to teach this
`
`limitation. Notably, Foss does not teach enrolling a single-user account by utilizing
`
`received card information to define a memory location. Ex. 2001, ¶53. Instead,
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`Foss is directed towards expanding an existing customer account, which Petitioner
`
`
`2 All emphasis added unless otherwise noted.
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`9
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`references in its Petition.3 Petition, 27-28. The portions of Foss quoted therein
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`describe “enabling a primary account holder (i.e. an existing customer 610) to enroll
`
`additional new customer(s) in the family stored value program” and that initiating
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`enrollment required the existing customer “to swipe the existing stored value card”
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`in order to “continue the enrollment process” for “additional new customer(s).” Id.
`
`(citing Ex. 1005, ¶¶[0086], [0088], Figs. 7-8); see also Ex. 1005, ¶[0085] (“In
`
`general, however, family card enrollment module 700 supports a customer service
`
`functionality for enrolling new customers in the family stored value card program.
`
`The customer service functionality enables a primary account holder to add
`
`secondary stored value card accounts to the primary account 602.”).
`
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`3 Apple points only to the “family stored value card program” described in ¶¶[0086]
`
`and [0088] of Foss in its Petition. Argument that another embodiment of Foss either
`
`teaches the claimed invention or would make it suitable for combination with
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`Bradford is therefore waived. Intelligent Bio-Systems, Inc. v. Illumina Cambridge
`
`Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that
`
`petitioners in the IPR proceedings adhere to the requirement that the initial petition
`
`identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge
`
`to each claim’”); see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
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`1330 (Fed. Cir. 2019).
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`10
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`Foss does describe the enrollment process in more detail, which is notably
`
`absent from the Petition. In particular, Foss describes a screen which includes two
`
`buttons, “to specify whether the enrollment is an individual card (button 1006) or a
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`family card (button 1004).” Ex. 1005, ¶[0088]. The majority of detail described in
`
`Foss relates to the family card, i.e., adding additional users to an existing family card
`
`account as described above. Indeed, outside of Figure 10 where buttons 1004 and
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`1006 are shown, this is the only reference to button 1006 in the whole of Foss. Id.
`
`at Fig. 10, ¶[0088]. Paragraph [0088] of Foss continues to describe the enrollment
`
`in a family card program via selection of button 1004. Id. at ¶[0088] (“An existing
`
`customer 610 may initiate the enrollment process for a new secondary stored value
`
`card account 604,606 or 608 by selecting button 1004.”). It is here where Petitioner
`
`cites swiping an existing card to enroll additional users onto the same account.
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`This same scenario would be illogical when applied to the enrollment of an
`
`individual account. In particular, unlike the family card program, there would be no
`
`existing account to reference when enrolling an individual. The same is true of
`
`Bradford. Dr. Sears himself agrees Bradford does not contemplate creating multi-
`
`user accounts, undercutting Apple’s suggestion that Foss is at all relevant. Ex. 2003,
`
`44:12-19. Indeed, creation of multi-user accounts in the casino games taught by
`
`Bradford would undermine many of the protections in place for the player ID entries.
`
`Ex. 2001, ¶48. Furthermore, Bradford expressly states that creation of a user
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`account is not complete until after the biometric signature is added to the account.
`
`Petition, 12, 38 (“Bradford teaches a player entry is enabled once the second
`
`authenticator data field is populated to include the second authenticator data.”)
`
`(citing Ex. 1004, 17:47-50). Even in the scenario in which a casino attendant
`
`accompanies a player to a gaming machine, it would be impossible to swipe the
`
`player’s card to access an account because no account yet exists for that user. Id.
`
`Furthermore, Bradford already states that the casino attendant’s card is in the
`
`gaming machine’s card slot. Ex. 1001, 16:10-20, 24:1-13. Dr. Sears himself
`
`acknowledged this in his deposition. Ex. 2003, 64:3-65:4. It would be impossible
`
`for the attendant’s card to be in the card slot of the gaming machine—which is
`
`required to remain in the machine to access the privileged screen which is required
`
`to complete enrollment—and to also insert the player’s card, albeit associated with
`
`an incomplete player ID entry. Ex. 2001, ¶49.
`
`Apple’s cited references do not teach defining a memory location dependent
`
`upon received card information. The Board should, therefore, find the ʼ039 Patent
`
`valid.
`
`2. Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location…”
`
`As noted above, the Board has adopted the construction of “dependent upon”
`
`as meaning the “plain and ordinary meaning, defined as ‘contingent on or
`
`12
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`determined by.’” Decision, 10. As described above, in the context of this limitation
`
`as a whole and more broadly the challenged claims, this requires that the memory
`
`location is “contingent on or determined by” the received card information. The
`
`Petition fails to establish that Bradford in view of Foss renders this limitation
`
`obvious.
`
`As described above, Bradford teaches first creating a player ID entry in a
`
`database, and only after that player ID entry is created does the attendant create a
`
`first authenticator. Ex. 2003, 15:12-16:6. Because the player ID entry is created
`
`first, the memory location is not dependent upon, contingent on, or determined by
`
`the received card information. Ex. 2003, 24:4-25:9, 29:2-30:15; see also Ex. 2001,
`
`¶¶42, 45. Similarly, when the casino attendant and new player move from the
`
`customer service desk to a gaming machine, Bradford describes how the casino
`
`attendant’s card is in the game which would preclude the player’s card from being
`
`entered to purportedly point to a memory location. Ex. 2003, 64:3-65:4; see also
`
`Ex. 2001, ¶49.
`
`Both Dr. Sears and Dr. Easttom are in agreement that the database entry in
`
`Bradford is created before the first authenticator is added to that database entry. See
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`Ex. 2001, ¶¶46-47. Dr. Sears testified that the database entry of Bradford must be
`
`created first because “you cannot store something in memory until you know the
`
`location where you’re going to be storing it…” Ex. 2003 at 14:16-21; Ex. 2001, ¶46.
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`13
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`Both experts also agree the player ID database entry of Bradford must first be created
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`first because the database entry is the overarching structure which contains fields for
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`the first and second authenticators. Dr. Sears opined that “there will be two different
`
`memory locations in Bradford’s database entries,” and more specifically that “first
`
`authenticator area [sic “data”] is stored in one specific memory that is part of a record
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`and the second authenticator data, which is biometric data, has to be stored in a
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`different memory location because you can’t store two things in the same location
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`within the same record.” Ex. 2003, 47:20-48:9. These fields are arranged at the time
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`the database structure is implemented. Id.; see also Ex. 2001, ¶46. The player ID
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`entry of Bradford, which Dr. Sears described as “the defined memory location” must
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`therefore be created before either the first and second authenticators. Ex. 2003,
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`24:18-21 (“Q. Would the entry in the player ID database be the defined memory
`
`location? A. That is going to be the defined memory location, yes.”). It follows,
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`therefore, that the memory location cannot be dependent upon, contingent on, or
`
`determined by the received card information as that memory location is defined
`
`before any card information is received. Ex. 2001, ¶47.
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`Further still, Dr. Easttom notes that this approach, having a customer enter
`
`their card to finish enrollment overcomplicates the registration process, making it
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`less likely a POSITA would have sought it out. Ex. 2001, ¶51. In particular, as Dr.
`
`Easttom notes, Bradford describes the attendant running proprietary software to
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`register new players. Id. (citing Ex. 1004, 14:21-41). When the casino attendant
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`moves the new player to a gaming machine, the casino attendant opens the machine
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`to a proprietary screen. Id. (citing Ex. 1004, 15:42-58). A POSITA would have
`
`considered it substantially easier and simpler to populate data from one proprietary
`
`screen at the desk to the other proprietary screen at the gaming machine. Id. Indeed,
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`it is almost certain that it is the same proprietary software running at both the desk
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`and the gaming machine. For this reason, Dr. Easttom opines it would be a much
`
`simpler and more convenient solution for an attendant to either automatically select
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`a new player account, or select a new player account from a list of recently created
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`accounts within the proprietary software. Id. Apple’s over-complication of this
`
`otherwise simple registration process highlights how it is grasping at straws to
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`cobble together its invalidity theory.
`
`Bradford in combination with Foss—a combination that a POSITA would not
`
`look to create—fails to render obvious the limitation “defining, dependent upon the
`
`received card information, a memory location in a local memory external to the
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`card.” Id., ¶56.
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`3. Bradford in view of Foss Does Not Teach “Defining,
`Dependent Upon the Received Card Information, a Memory
`Location in a Local Memory External to the Card”
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`In attempting to concoct a description for how this portion of this limitation
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`is taught, Apple relies on Bradford’s gaming machine’s “local caching of (for
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`example) the database entries or records corresponding to the last 10 players to use
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`the gaming device.” Ex. 1004, 9:61-63; see also Petition, 21. Apple suggests that
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`during the “training and enrollment of the player,” the player becomes one of these
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`last 10 players. Petition, 32. Bradford, however, does not teach the player becoming
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`one of the players with information stored in the local game machine cache, instead
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`teaching that the purported “training and enrollment of the player” takes place in a
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`privileged “special set of screens.” Ex. 1004, 15:42-58, 24:1-13; see also Ex. 2001,
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`¶50.
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`The player training occurs via a “demonstration,” which takes place within
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`these privileged screens and allows the attendant to show any “special screen or
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`choice sequences.” Ex. 1004, 15:42-58. That the demonstration or training takes
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`place within the privileged screen, and not when the new player is an active player,
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`makes sense because it allows the casino to “invoke specific winning sequences to
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`allow a player to see what happens and how to respond.” Id. This separated training
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`process also shields the casino lest the player accuse the attendant of gambling with
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`the player’s money. See Ex. 2001, ¶¶50, 52. By keeping training or any gaming
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`oversight by the attendant within the privileged screen, it would shield the casino
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`from any such allegation. Id. Training in this way would also shield the casino from
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`being accused of rigging the game during training. Id., ¶¶48, 50. In particular, even
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`if the attendant merely watched over the player’s shoulder, if the player were to lose,
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`they might think the attendant had directed them to some losing action. Id.
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`Bradford, then, teaches both “enrolling and training” occurring from within
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`this privileged screen. Id., ¶50. That the actions take place within the privileged
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`menu prevents the player from becoming one of the last 10 players to use the
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`machine. Id., ¶52. The player’s ID entry is therefore not cached in local memory
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`on the machine. Id. Indeed, Bradford teaches that the player is neither fully enrolled
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`nor is the account active until after this process is complete. Ex. 1004, 17:47-50
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`(describing the player ID entry as “enabled” when it “has a second authenticator”).
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`The player, therefore, cannot become one of these “last 10 players to use the gaming
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`device” and the player ID entry is not cached in local memory. Ex. 2001, ¶52. By
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`extension, no local memory is defined dependent upon received card information as
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`the claim requires. Id.
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`4.
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`There is No Motivation to Combine Apple’s Cited Prior Art
`to Arrive at the “Defining, Dependent Upon Received Card
`Information, a Memory Location…”
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`A POSITA would not have sought out Foss to combine with Bradford. First,
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`Apple recognizes Bradford alone is insufficient in that it “does not expressly indicate
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`how the stored player’s entry is retrieved during the enrollment process, i.e., during
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`creation of an enabled player entry.” Petition, 25 (emphasis in original). While
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`Apple is correct that Bradford does not teach how a player entry is retrieved during
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`the creation of that player’s ID entry, it ignores what Bradford does teach. For
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`example, Bradford teaches the attendant’s card being placed in the machine in order
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`to access the privileged screen in which the player’s entry is retrieved to complete
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`registration. Ex. 1004, 15:42-58, 24:1-13. It could not, then, be “read by a card
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`reader to retrieve the stored first authenticator data” as Apple suggests. Petition, 25;
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`see also Ex. 2001, ¶49.
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`Furthermore, Bradford and Foss are directed at wholly different issues arising
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`in wholly different industries. Bradford is directed at identifying customers in a
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`gaming or casino environment using two-factor authentication where at least one of
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`the authentication methods is biometric (i.e. fingerprint). Ex. 1004, Abstract. In the
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`registration process taught by Bradford, a casino attendant (1) creates a player ID
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`entry in the database, (2) creates a first authenticator for the player, and then (3)
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`accompanies the player to a gaming machine where the attendant enters a privileged
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`screen to complete the enrollment process. Id., 14:21-31, 15:16-58; see also Ex.
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`2001, ¶¶44, 49-50.
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`Foss, on the other hand, teaches different systems and methods for
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`transferring funds between stored value card accounts of more than one customer
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`account. Ex. 1005, Abstract. Apple cites Foss only for the enrollment of additional
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`users on an existing family stored value account. Petition, 27-28 (citing Ex. 1005,
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`¶¶[0086], [0088], Figs. 7-8). These short sections do not teach the enrollment of any
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`individual account, unlike the individual player ID entries of Bradford. Ex. 2001,
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`¶21. Foss, on the whole, does not describe enrollment of an individual account. Id.,
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`¶55.
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`Dr. Sears further confirmed that none of these cited portions contains a
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`reference to biometrics. Ex. 2003, 44:3-11. Indeed, Foss’s sole reference to
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`biometrics is a mere passing reference, and is not relied upon by Apple anywhere in
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`its Petition. Ex. 2001, ¶54. Bradford, in contrast, requires biometrics for at least the
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`second authenticator. Ex. 1004, Abstract, 3:22-23, 3:34-36 (“The second
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`authenticator will always have data that correspond to a biometric measurement.”),
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`3:63-65, 6:50-52. Even looking at the references generically, Foss does not teach
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`adding any additio