`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
`
`
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner
`_________________
`
`
`
`Inter Partes Review Case No. IPR2022-00600
`
`U.S. Patent No. 8,620,039
`
`
`
`DECLARATION OF DR. ANDREW SEARS
`
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................ 6
`
`A. BACKGROUND AND QUALIFICATIONS........................................................... 7
`
`B. MATERIALS CONSIDERED ...........................................................................10
`
`II. LEGAL FRAMEWORK ............................................................................11
`
`A. ANALOGOUS ART .......................................................................................12
`
`B. OBVIOUSNESS ............................................................................................12
`
`C. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ...............................18
`
`III. CLAIM CONSTRUCTION ........................................................................19
`
`A. NON-CONSTRUED CLAIM TERMS ................................................................19
`
`B. AGREED-UPON CONSTRUCTION ..................................................................20
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`IV. OPINIONS REGARDING LEVEL OF SKILL OF A PERSON HAVING
`
`ORDINARY SKILL IN THE ART ....................................................................20
`
`V. BACKGROUND OF TECHNOLOGY ......................................................22
`
`A. BIOMETRIC ACCESS SYSTEMS .....................................................................22
`
`B. HARDWARE COMPONENTS OF A BIOMETRIC ACCESS SYSTEM ......................28
`
`C. SMART CARDS ...........................................................................................31
`
`D. REFERENCE POINTERS ................................................................................33
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`E. FLAGS ........................................................................................................35
`
`VI. OPINIONS REGARDING THE ’039 PATENT AND PRIOR ART .......38
`
`VII. GROUND 1: OPINIONS REGARDING THE COMBINATION OF
`
`BRADFORD, FOSS, AND YAMANE .................................................................40
`
`A. CLAIM 1 .....................................................................................................40
`
`1. Claim 1(Pre): “A method of enrolling in a biometric card pointer
`
`system, the method comprising the steps of” .................................................40
`
`2. Claim 1(a): “receiving card information”.............................................46
`
`3. Claim 1(b): “receiving the biometric signature” ...................................49
`
`4. Claim 1(c): “defining, dependent upon the received card information, a
`
`memory location in a local memory external to the card” .............................52
`
`5. Claim 1(d): “determining if the defined memory location is unoccupied”
`
`
`
`71
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`6. Claim 1(e): “storing, if the memory location is unoccupied, the biometric
`
`signature at the defined memory location.”...................................................78
`
`B. CLAIM 2 .....................................................................................................79
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`1. Claim 2(Pre): “A method of obtaining verified access to a process, the
`
`method comprising the steps of:” ..................................................................79
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`2. Claim 2(a): “storing a biometric signature according to the enrolment
`
`method of claim 1;” ......................................................................................80
`
`3. Claim 2(b): “verifying the subsequently presented presentation of the
`
`card information and the biometric signature if the subsequently presented
`
`biometric signature matches the biometric signature at the memory location,
`
`in said local memory, defined by the subsequently presented card
`
`information.” ................................................................................................80
`
`C. CLAIM 19 ...................................................................................................82
`
`1. Claim 19(Pre): “A non-transitory computer readable medium having
`
`recorded thereon a computer program for directing a processor to execute a
`
`method of enrolling in a biometric card pointer system, the program
`
`comprising” ..................................................................................................82
`
`2. Claim 19(a): “code for receiving card information” .............................86
`
`3. Claim 19(b): “code for receiving the biometric signature” ...................87
`
`4. Claim 19(c): “code for defining, dependent upon the received card
`
`information, a memory location in a local memory external to the card” .....87
`
`5. Claim 19(d): “code for determining if the defined memory location is
`
`unoccupied” ..................................................................................................87
`
`6. Claim 19(e): “code for storing, if the memory location is unoccupied, the
`
`biometric signature at the defined memory location.” ...................................87
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`D. CLAIM 20 ...................................................................................................87
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`1. Claim 20(Pre): “A non-transitory computer readable medium having
`
`recorded thereon a computer program for directing a processor to execute a
`
`method of obtaining verified access to a process, the program comprising:”87
`
`2. Claim 20(a): “code for storing a biometric signature according to the
`
`enrolment method of claim 19;” ....................................................................87
`
`3. Claim 20(b): “code for subsequently presenting card information and a
`
`biometric signature” .....................................................................................88
`
`4. Claim 20(c): “code for verifying the subsequently presented card
`
`information if the subsequently presented biometric signature matches the
`
`biometric signature at the memory location, in said local memory, defined by
`
`the subsequently presented card information” ..............................................88
`
`VIII. CONCLUSION........................................................................................89
`
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`I, Andrew Sears, PhD, hereby declare the following:
`
`I.
`
`INTRODUCTION
`1. My name is Andrew Sears, and I am over 21 years of age and otherwise
`
`competent to make this Declaration. I make this Declaration based on facts and
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`matters within my own knowledge and on information provided to me by others,
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`and, if called as a witness, I could and would competently testify to the matters set
`
`forth herein.
`
`2.
`
`I have been retained as a technical expert witness in this matter by
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`Counsel for the Petitioner, Apple Inc. (“Petitioner”) to provide my independent
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`opinions on certain issues requested by Counsel for Petitioner relating to the
`
`accompanying Petition for Inter Partes Review of U.S. Patent No. 8,620,039 (“the
`
`’039 Patent”). I am being compensated at an hourly rate of $750.00. My
`
`compensation in this matter is not based on the substance of my opinions or on the
`
`outcome of this matter. I have been informed that CPC Patent Technologies PTY,
`
`LTD. is the purported owner of the ’039 Patent. I note that I have no direct financial
`
`interest in CPC Patent Technologies PTY, LTD. or Petitioner, and I have no other
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`interest in the outcome of this matter.
`
`3.
`
`I have been informed by counsel that the claims being challenged in the
`
`accompanying Petition for the ’039 Patent is Claims 1-2 and 19-20 (the “Challenged
`
`Claims” of the ’039 Patent).
`
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`A. Background and Qualifications
`4.
`I have summarized in this section my educational background, career
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
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`history, and other qualifications relevant to this matter. I have also included a current
`
`version of my curriculum vitae, attached as Appendix A.
`
`5.
`
`I am currently a Professor and Dean of the College of Information
`
`Sciences and Technology at The Pennsylvania State University (“Penn State”).
`
`6.
`
`I received a Bachelor of Science degree in Computer Science from the
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`Rensselaer Polytechnic Institute in May of 1988. I received my Ph.D. in Computer
`
`Science from the University of Maryland-College Park in May of 1993. My
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`dissertation focused on human-computer interaction.
`
`7.
`
`From July 1993 to June 1999, I was employed by DePaul University as
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`an Assistant Professor for the School of Computer Science, Telecommunications
`
`and Information Systems. In July 1999, I joined the University of Maryland,
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`Baltimore County (UMBC) as an Associate Professor in the Information Systems
`
`Department where I was subsequently promoted to Professor in 2003. I served as the
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`Chair for the Information Systems Department (2002-2011). From August 2008 to
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`July 2011, I served as the Constellation Professor of Information Technology and
`
`Engineering.
`
`8.
`
`In August of 2011, I joined the Rochester Institute of Technology as
`
`Professor and Dean of the B. Thomas Golisano College of Computing and
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`Information Sciences. In July of 2015, I joined Penn State as Professor and Dean of
`
`the College of Information Sciences and Technology, and I continue to serve in this
`
`position. From September 2015 to December 2017, I also served as the Interim Chief
`
`Information Security Officer at Penn State.
`
`9. My research has explored a variety of topics related to human- centered
`
`computing. My research projects have addressed topics related to interacting with
`
`touchscreen technologies, interacting with mobile computing devices, evaluating
`
`user
`
`interfaces, health
`
`information
`
`technologies, speech recognition-based
`
`interactions, and accessibility for individuals with a variety of disabilities. My
`
`research projects have been supported by a variety of government agencies (e.g., the
`
`National Science Foundation, the National Institute on Disability and Rehabilitation
`
`Research, the National Institute of Standards and Technology, and NASA),
`
`companies (e.g., IBM, Intel, Microsoft, and Motorola), and non-profit organizations
`
`(e.g., the Verizon Foundation).
`
`10. Beginning in 2006, I served as founding Editor-in-Chief of the
`
`Association for Computing Machinery’s (ACM) Transactions on Accessible
`
`Computing, and I served in this capacity until 2013. From 2013 to 2018, I served as
`
`a Member of the Editorial Board for ACM’s Transactions on Accessible Computing.
`
`From 2008 to 2020, I served as a Member of the Editorial Board for the International
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`Journal of Human-Computer Studies. From 2011 to 2021, I served as an Associate
`
`Editor for ACM’s Transactions on Computer-Human Interaction.
`
`11. From 2013 to 2019, I served as a Member of the Board of Directors for
`
`the Computing Research Association. I have also served as a member of the
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`Accessibility Committee of the ACM U.S. Public Policy Council, as well as a
`
`member of the ACM Council, the ACM Special Interest Group Governing Board,
`
`and in various capacities with the ACM Special Interest Group for Accessible
`
`Computing. I have chaired or co-chaired various conferences including the premier
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`conferences on human computer interaction (CHI 2001) and accessibility in the
`
`context of computing technologies (ASSETS 2005). I have served on numerous
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`program and organizing committees for other conferences in this field including
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`chairing the program committee of ASSETS 2004.
`
`12.
`
`I have served as editor on multiple scholarly books. In particular, I was
`
`an editor for the first and second editions of “The Human-Computer Interaction
`
`Handbook: Fundamentals, Evolving Technologies and Emerging Applications,”
`
`published in 2003 and 2008 respectively. The HCI Handbook is a collection of more
`
`than 60 chapters authored by experts from the HCI community, providing insights
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`regarding people, computing technologies, design, emerging issues, and the
`
`development process. I am also author or co-author on more than a dozen book
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`chapters and more than 100 journal articles and conference/workshop papers
`
`including approximately 70 published prior to 2005.
`
`13.
`
`I am being compensated for my time spent in connection with this case.
`
`I have no financial interest in the outcome of this case. The opinions provided in this
`
`report are my own and my compensation does not depend in any way on the
`
`substance of my opinions.
`
`14. Based on my experiences described above, and as indicated in my
`
`Curriculum Vitae, I am qualified to provide the following opinions with respect to
`
`the patents in this case. Additionally, I was at least a person having ordinary skill in
`
`the art as of the priority date of the ’039 Patent.
`
`B. Materials Considered
`15. As part of my work and in forming my opinions in connection with this
`
`proceeding, I have reviewed the following materials. For any prior art listed below,
`
`it is my opinion persons of ordinary skill in my field would reasonably rely upon
`
`such prior art in forming opinions regarding the subject matter of this proceeding:
`
`• Petition for Inter Partes Review of U.S. Patent No. 8,620,039 (the
`“Petition”);
`• U.S. Patent No. 8,620,039 (“the ’039 Patent”) (Ex. 1001);
`• File History for U.S. Patent 8,620,039 (Ex. 1002);
`• U.S. Patent No. 6,612,928 to Bradford et al. (“Bradford”) (Ex. 1004);
`• U.S. Patent App. 2005/0127169 to Foss (“Foss”) (Ex. 1005);
`• U.S. Patent App. 2001/0014883 to Yamane et. al (“Yamane”) (Ex. 1006);
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`• Anil Jain, Lin Hong, and Sharath Pankanti. Biometric Identification.
`Communications of the ACM. February 2000. Vol. 43, No. 2 (“Biometric
`Identification”) (Ex. 1007);
`• Henry C. Lee and R.E. Gaensslen. Advances in Fingerprint Technology.
`Second Edition. CRC Press. 2001 (“Advances in Fingerprint
`Technology”) (Ex. 1008);
`• P. Jonathan Phillips et al. An Introduction to Evaluating Biometric
`Systems. National Institute of Standards and Technology. IEEE. February
`2000. Vol 33, pp. 56-63. (“Evaluating Biometric Systems”) (Ex. 1009);
`• U.S. Patent No. 6,898,299 to Brooks (“Brooks”) (Ex. 1010);
`• U.S. Patent Application Publication No. 2002/0091937 to Ortiz (“Ortiz”)
`(Ex. 1011);
`• U.S. Patent No. 6,140,939 to Flick (“Flick”) (Ex. 1012);
`• U.S. Patent Application Publication No. 2003/0046552 to Hamid (“Hamid
`’552”) (Ex. 1013);
`• U.S. Patent Application Publication No. 2002/0063154 to Hoyos et al.
`(“Hoyos”) (Ex. 1014);
`• U.S. Patent No. 6,877,097 to Hamid et al. (“Hamid”) (Ex. 1015);
`• U.S. Patent No. 6,164,403 to Wuidart (“Wuidart”) (Ex. 1016);
`• U.S. Patent No. 6,484,260 to Scott (“Scott”) (Ex. 1017);
`• Martha E. Haykin and Robert B. J. Warnar. NIST Special Publication 500-
`157 “Smart Card Technology: New Methods for Computer Access
`Control.” September 1988. (“Haykin”) (Ex. 1018);
`• U.S. Patent App. 2006/0177106 to Wrage (“Wrage”) (Ex. 1019);
`• U.S. Patent No. 6,954,737 to Kalantar et al. (“Kalantar”) (Ex. 1020);
`• U.S. Patent Application Publication No. 2006/0200480 to Harris et al.
`(“Harris”) (Ex. 1021);
`• U.S. Patent Application Publication No. 2003/0055530 to Dodson
`(“Dodson”) (Ex. 1022);
`• U.S. Patent No. 5,835,906 to Hagersten et al. (“Hagersten”) (Ex. 1023);
`• U.S. Patent No. 4,975,873 to Nakabayashi et al. (“Nakabayashi”) (Ex.
`1024).
`
`
`II. LEGAL FRAMEWORK
`16.
`I am a technical expert and do not offer any legal opinions. However, I
`
`have been informed about certain legal principles regarding patentability and related
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`matters under United States patent law, which I have applied in performing my
`
`analysis and arriving at my technical opinions in this matter.
`
`A. Analogous Art
`17.
`I have been informed by counsel that for prior art to be used to establish
`
`the unpatentability of a patent based on obviousness, the prior art must be “analogous
`
`art” to the claimed invention. I have also been informed by counsel that a prior art
`
`reference is analogous art to the claimed invention if: (1) the reference is from the
`
`same field of endeavor as the claimed invention, even if it addresses a different
`
`problem; or (2) the reference is reasonably pertinent to the problem faced by the
`
`invention, even if it is not in the same field of endeavor as the claimed invention.
`
`B. Obviousness
`18.
`
`I have been informed that a person cannot obtain a patent on an
`
`invention if the differences between the invention 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 (“POSITA”). I have been informed
`
`that a conclusion of obviousness may be founded upon more than a single item of
`
`prior art. I have been further informed that obviousness is determined by evaluating
`
`the following factors: (1) the scope and content of the prior art, (2) the differences
`
`between the prior art and the claim at issue, (3) the level of ordinary skill in the
`
`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`obviousness inquiry should not be done in hindsight. Instead, the obviousness
`
`inquiry should be done through the eyes of a POSITA at the time of the alleged
`
`invention.
`
`19.
`
`In considering whether certain prior art renders a particular patent claim
`
`obvious, I have been informed that I can consider the scope and content of the prior
`
`art, including the fact that one of skill in the art would regularly look to the
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`disclosures in patents, trade publications, journal articles, conference papers,
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`industry standards, product
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`literature and documentation,
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`texts describing
`
`competitive technologies, requests for comment published by standard setting
`
`organizations, and materials from industry conferences, as examples. I have been
`
`informed that for a prior art reference to be proper for use in an obviousness analysis,
`
`the reference must be “analogous art” to the claimed invention. I have been informed
`
`that a reference is analogous art to the claimed invention if: (1) the reference is from
`
`the same field of endeavor as the claimed invention (even if it addresses a different
`
`problem); or (2) the reference is reasonably pertinent to the problem faced by the
`
`inventor (even if it is not in the same field of endeavor as the claimed invention). In
`
`order for a reference to be “reasonably pertinent” to the problem, it must logically
`
`have commended itself to an inventor's attention in considering his problem. In
`
`determining whether a reference is reasonably pertinent, one should consider the
`
`problem faced by the inventor, as reflected either explicitly or implicitly, in the
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`specification. I believe that all of the references I considered in forming my opinions
`
`in this IPR are well within the range of references a POSITA would have consulted
`
`to address the type of problems described in the Challenged Claims.
`
`20.
`
`I have been informed that, in order to establish that a claimed invention
`
`was obvious based on a combination of prior art elements, a clear articulation of the
`
`reason(s) why a claimed invention would have been obvious must be provided.
`
`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
`
`combination of multiple items of prior art renders a patent claim obvious when there
`
`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
`
`to combine the prior art, which can include, but is not limited to, any of the following
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`rationales: (A) combining prior art methods according to known methods to yield
`
`predictable results; (B) substituting one known element for another to obtain
`
`predictable results; (C) using a known technique to improve a similar device in the
`
`same way; (D) applying a known technique to a known device ready for
`
`improvement to yield predictable results; (E) trying a finite number of identified,
`
`predictable potential solutions, with a reasonable expectation of success; (F)
`
`identifying that known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to one of ordinary skill in the art; or
`
`(G) identifying an explicit teaching, suggestion, or motivation in the prior art that
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`would have led one of ordinary skill to modify the prior art reference or to combine
`
`the prior art references to arrive at the claimed invention. I am also informed that
`
`where there is a motivation to combine, claims may be rejected as prima facie
`
`obvious provided a POSITA would have had a reasonable expectation of success
`
`regarding the proposed combination.
`
`21.
`
`I am informed that the existence of an explicit teaching, suggestion, or
`
`motivation to combine known elements of the prior art is a sufficient, but not a
`
`necessary, condition to a finding of obviousness. This so-called “teaching-
`
`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
`
`in an obviousness analysis. In determining whether the subject matter of a patent
`
`claim is obvious, neither the particular motivation nor the avowed purpose of the
`
`patentee controls. Instead, the important consideration is the objective reach of the
`
`claim. In other words, if the claim extends to what is obvious, then the claim is
`
`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
`
`known to the technological community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art. All of
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`these issues may be considered to determine whether there was an apparent reason
`
`to combine the known elements in the fashion claimed by the patent.
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`I also am informed that in conducting an obviousness analysis, a precise
`
`22.
`
`teaching directed to the specific subject matter of the challenged claim need not be
`
`sought out because it is appropriate to take account of the inferences and creative
`
`steps that a POSITA would employ. The prior art considered can be directed to any
`
`need or problem known in the field of endeavor at the time of invention and can
`
`provide a reason for combining the elements of the prior art in the manner claimed.
`
`In other words, the prior art need not be directed towards solving the same specific
`
`problem as the problem addressed by the patent. Further, the individual prior art
`
`references themselves need not all be directed towards solving the same problem. I
`
`am informed that, under the KSR obviousness standard, common sense is important
`
`and should be considered. Common sense teaches that familiar items may have
`
`obvious uses beyond their primary purposes.
`
`23.
`
`I also am informed that the fact that a particular combination of prior
`
`art elements was “obvious to try” may indicate that the combination was obvious
`
`even if no one attempted the combination. If the combination was obvious to try
`
`(regardless of whether it was actually tried) or leads to anticipated success, then it is
`
`likely the result of ordinary skill and common sense rather than innovation. I am
`
`further informed that in many fields it may be that there is little discussion of obvious
`
`techniques or combinations, and it often may be the case that market demand, rather
`
`than scientific literature or knowledge, will drive the design of an invention. I am
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`informed that an invention that is a combination of prior art must do more than yield
`
`predictable results to be non-obvious.
`
`24.
`
`I am informed that for a patent claim to be obvious, the claim must be
`
`obvious to a POSITA at the time of the alleged invention. I am informed that the
`
`factors to consider in determining the level of ordinary skill in the art include (1) the
`
`educational level and experience of people working in the field at the time the
`
`invention was made, (2) the types of problems faced in the art and the solutions
`
`found to those problems, and (3) the sophistication of the technology in the field.
`
`25.
`
`I am informed that it is improper to combine references where the
`
`references teach away from their combination. I am informed that a reference may
`
`be said to teach away when a POSITA, upon reading the reference, would be
`
`discouraged from following the path set out in the reference, or would be led in a
`
`direction divergent from the path that was taken by the patent applicant. In general,
`
`a reference will teach away if it suggests that the line of development flowing from
`
`the reference’s disclosure is unlikely to be productive of the result sought by the
`
`patentee. I am informed that a reference teaches away, for example, if (1) the
`
`combination would produce a seemingly inoperative device, or (2) the references
`
`leave the impression that the product would not have the property sought by the
`
`patentee. I also am informed, however, that a reference does not teach away if it
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`merely expresses a general preference for an alternative invention but does not
`
`criticize, discredit, or otherwise discourage investigation into the invention claimed.
`
`C.
`26.
`
`Secondary Considerations of Non-Obviousness
`
`I am informed that even if a prima facie case of obviousness is
`
`established, the final determination of obviousness must also consider “secondary
`
`considerations” if presented. In most instances, the patentee raises these secondary
`
`considerations of non-obviousness. In that context, the patentee argues an invention
`
`would not have been obvious in view of these considerations, which include: (a)
`
`commercial success of a product due to the merits of the claimed invention; (b) a
`
`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
`
`solution provided by the claimed invention; (d) deliberate copying of the invention
`
`by others; (e) unexpected results achieved by the invention; (f) praise of the
`
`invention by others skilled in the art; (g) lack of independent simultaneous invention
`
`within a comparatively short space of time; (h) teaching away from the invention in
`
`the prior art.
`
`27.
`
`I am further informed that secondary-considerations evidence is only
`
`relevant if the offering party establishes a connection, or nexus, between the
`
`evidence and the claimed invention. The nexus cannot be based on prior art features.
`
`The establishment of a nexus is a question of fact. While I understand that the Patent
`
`Owner here has not offered any secondary considerations at this time, I will
`IPR2022-00600
`Apple EX1003 Page 18
`
`
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`supplement my opinions in the event that the Patent Owner raises secondary
`
`considerations during the course of this proceeding.
`
`III. CLAIM CONSTRUCTION
`28.
`I have been informed by counsel that the first step in an unpatentability
`
`analysis involves construing the claims, as necessary, to determine their scope.
`
`Second, the construed claim language is then compared to the disclosures of the prior
`
`art. I am informed that claims are generally given their ordinary and custom meaning
`
`as understood by one of ordinary skill in the art at the time of the invention, in light
`
`of the patent specification.
`
`A. Non-Construed Claim Terms
`29. For purposes of this proceeding and for any claim terms not discussed
`
`below, I have applied the claim constructions set forth in the claim construction
`
`section of the Petition for Inter Partes Review of U.S. Patent No. 8,620,039 (the
`
`“Petition”) that this declaration accompanies when analyzing the prior art and the
`
`claims. For any claim terms not construed, I have applied the meaning of the claim
`
`terms of the ’039 Patent that are generally consistent with the terms’ ordinary and
`
`customary meaning, as a person of ordinary skill in the art would have understood
`
`them at the time of the invention. I have been instructed to assume for purposes of
`
`this proceeding that the time of the invention is August 12, 2005.
`
`IPR2022-00600
`Apple EX1003 Page 19
`
`
`
`B. Agreed-Upon Construction
`30.
`I have been informed that the Parties agreed that the plain and ordinary
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`
`meaning of “dependent upon” is “contingent on or determined by.” I have applied
`
`this construction to my discussion below.
`
`IV. OPINIONS REGARDING LEVEL OF SKILL OF A PERSON HAVING
`ORDINARY SKILL IN THE ART
`31.
`
`I was asked to provide my opinion as to the level of skill of a person
`
`having ordinary skill in the art (“POSITA”) of the ’039 Patent at the time of the
`
`claimed invention, which I have been instructed to assume is August 12, 2005. In
`
`determining the characteristics of a hypothetical person of ordinary skill in the art of
`
`the ’039 Patent at the time of the claimed invention, I was told to consider several
`
`factors, including the type of problems encountered in the art, the solutions to those
`
`problems, the rapidity with which innovations are made in the field, the
`
`sophistication of the technology, and the education level of active workers in the
`
`field. I also placed myself back in the time frame of the claimed invention and
`
`considered the colleagues with whom I had worked at that time.
`
`32.
`
`In my opinion, a person having ordinary skill in the art of the ’039
`
`Patent at the time of its filing would have at least a bachelor’s degree in computer
`
`engineering, computer science, electrical engineering, or a related field, with at least
`
`one year of experience in the field of human-machine interfaces and device access
`
`IPR2022-00600
`Apple EX1003 Page 20
`
`
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 8,620,039
`security. Additional education may substitute for lesser work experience and vice-
`
`versa. Such a person of ordinary skill in the art would have been capable of
`
`understanding the ’039 Patent and the prior art references discussed herein.
`
`33. Based on my education, training, and professional experience in the
`
`field of the claimed invention, I am familiar with the level and abilities of a person
`
`of ordinary skill in the art at the time of the claimed invention. Additionally, I met
`
`at least these minimum qualifications to be a person having ordinary skill in the art
`
`at least as of August 12, 2005. Further, although my qualifications may exceed those
`
`of the hypothetical person having ordinary skill in the art defined above, my analysis
`
`and opinions regarding the ’039 Patent have been rendered from the perspective of
`
`a person having ordinary skill in the art at the time of the invention.
`
`34. My opinions provided in this Declaration are made as of the priority
`
`date of the ’039 Patent (which counsel has informed me is August 12, 2005), unless
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