UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`
`
`Case IPR2022-00600
`
`U.S. Patent No. 8,620,039
`____________
`
`
`PETITIONER REPLY
`TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`E.
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. CPC’S CONSTRUCTION OF “DEFINING…A MEMORY
`LOCATION” IS ERRONEOUS ................................................................. 1
`A.
`THE INTRINSIC EVIDENCE SUPPORTS APPLE’S MAPPING ....................... 3
`B.
`THE BOARD ALREADY AGREED WITH APPLE’S MAPPING ..................... 6
`C. NO EVIDENCE SUPPORTS CPC’S CONSTRUCTION .................................. 6
`D.
`CPC’S CONSTRUCTION IS INCONSISTENT WITH THE
`SPECIFICATION AND CLAIMS ................................................................. 7
`CPC’S CONSTRUCTION RENDERS CLAIMS 1 AND 19
`INCONSISTENT WITH CLAIM 2 .............................................................. 10
`III. CPC’S ARGUMENTS REGARDING BRADFORD .............................. 12
`A.
`CPC’S SUBSTANTIVE BRADFORD ARGUMENTS RELY ON THE
`INCORRECT CLAIM CONSTRUCTION ..................................................... 12
`BRADFORD’S “PRIVILEGED SCREENS” AND “LAST 10 PLAYERS” ........... 14
`B.
`BRADFORD’S ATTENDANT’S CARD ...................................................... 19
`C.
`IV. CPC’S MOTIVATION TO COMBINE ARGUMENTS HAVE
`NO FACTUAL OR LEGAL BASIS ......................................................... 21
`A.
`CPC’S “PROPRIETARY SOFTWARE” THEORY ....................................... 21
`B.
`CPC’S ARGUMENTS REGARDING FOSS ................................................ 23
`C.
`CPC’S ARGUMENTS REGARDING YAMANE ........................................... 25
`V. CONCLUSION ........................................................................................... 27
`
`
`
`
`
`
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`
`Cases:
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, (Fed. Cir. 2015) ............................. 23
`
`Cisco Systems, Inc. v. K.Mizra LLC, IPR2021-00594, Paper 35, (PTAB Aug.
`12, 2022) ................................................................................................................. 25
`
`Draftkings Inc., v. Interactive Games LLC, IPR2020-01107, Paper 39,
`(PTAB Jan. 4, 2022 ................................................................................................. 22
`
`Home Depot U.S.A., Inc., v. Lynk Labs, Inc., IPR2021-01368, Paper 49,
`(PTAB Jan. 27, 2023) ....................................................................................... 24, 26
`
`In re Clay, 966 F.2d 656, (Fed. Cir. 1992) ............................................................ 25
`
`In re Fulton, 391 F.3d 1195, (Fed. Cir. 2004) ....................................................... 22
`
`In re Varma, 816 F.3d 1352, (Fed. Cir. 2016) ....................................................... 11
`
`Intel Corp. v. PACT XPP Schweiz AG, No. 2022-1037, 2023 WL 2469631
`(Fed. Cir. Mar. 13, 2023) ....................................................................................... 23
`
`Intel Corp. v. Qualcomm Inc., No. 2020-2092, 2022 WL 880681, (Fed. Cir.
`Mar. 24, 2022) ........................................................................................................ 22
`
`Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, (Fed. Cir. 1998 ................. 10
`
`MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, (Fed. Cir.
`2015) ................................................................................................................. 24, 26
`
`Micron Tech., Inc. v. Unification Technologies LLC, IPR2021-00343, Paper
`42, (PTAB July 8, 2022) ......................................................................................... 22
`
`Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, (Fed.
`Cir. 2007) ................................................................................................................ 10
`
`Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, (PTAB Aug. 24,
`2022) ....................................................................................................... 7, 18, 22, 27
`
`
`
`
`
`ii
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`

`

`
`Regulations:
`Regulations:
`37 C.F.R. § 42.6 ...................................................................................................... 31
`37 CER. § 42.6 vcccccccsscssssscssssssssscsccesssssssesssscsecessssuseecessusececsnssutsecesssnsessesnsneteeceseeees 31
`
`37 C.F.R. § 42.6(e) ................................................................................................. 31
`37 CFR. § 42.6(€)
`ccsccssssscssccssssessccesssssescessssceecessssuseesessssesssesssueecenssuseceesnsnetsecesseees 31
`37 C.F.R. § 42.8 ...................................................................................................... 30
`37 CAR. § 42.8 vccccccssscssssssssssssssscsccessssescesssscsscessssuseccessssessessssutsecesssuvesesensnetsecesseees 30
`37 C.F.R. § 42.24 .................................................................................................... 30
`37 CER. § 42.24 oo cceccccssssscssssssssscsccessuvesscesssscsecessssuseecessssesssesssutseceessuveceesnsneteecenseees 30
`
`
`
`
`iii
`ill
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`

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`I.
`
`INTRODUCTION
`The Bradford-Foss-Yamane Ground requires two minimal modifications to
`
`Bradford to render obvious the challenged claims. First, Bradford’s enrollment
`
`method is clarified, per Foss, to specify card information is received during the
`
`enrollment process. Second, Bradford is clarified, per Yamane, to utilize a
`
`fingerprint presence/absence flag to determine if a biometric signature was
`
`previously stored.
`
`Because the Bradford-Foss-Yamane Ground presents a strong showing of
`
`obviousness, CPC resorts to primarily arguing a claim construction of the term
`
`“defining” in the challenged independent claims. CPC’s construction is without
`
`intrinsic or extrinsic support and is inconsistent with all embodiments described in
`
`the ’039 Patent. CPC’s remaining arguments rely on attorney argument or
`
`conclusory declarant opinions that do not address the Petition’s mapping or the
`
`references’ complete teachings.
`
`II. CPC’S CONSTRUCTION OF
`LOCATION” IS ERRONEOUS
`CPC contends “defining…a memory
`
`“DEFINING…A MEMORY
`
`location” means “setting” or
`
`“establishing” a memory location. (Paper 12, 7-8). CPC manufactures this
`
`unsupported construction in an attempt to circumvent Bradford’s teachings. As
`
`mapped in the Petition, Bradford teaches creating, during enrollment of a player, a
`
`player ID entry that includes a unique identifier associated with the player, where
`
`
`
`1
`
`

`

`the unique identifier is card information. (Paper 1, 19-20). The card information (i.e.,
`
`first authenticator data) is then used to “find,” “identify,” or “get” a memory location
`
`in which to store a biometric signature, such that the memory location is dependent
`
`on (i.e., contingent on or determined by) the card information. Id.
`
`CPC uses its “setting/establishing” construction to argue Bradford “does not
`
`teach utilizing the first authenticator to create a player ID entry.” (Paper 12, 9)
`
`(emphasis added). CPC argues “[b]ecause the player ID entry is created first, the
`
`memory location is not dependent upon, contingent on, or determined by the
`
`received card information.” Id. at 13, 14 (arguing the memory location is not
`
`determined by the card information if “that memory location is defined before any
`
`card information is received”). Thus, CPC essentially argues the memory location
`
`must be created only after card information is received, because the memory
`
`location is (per CPC) “set/established” dependent on the card information. CPC then
`
`uses its unfounded claim construction to argue Bradford teaches an incorrect order:
`
`“setting/establishing” the memory location before card information is received
`
`during enrollment. Id. at 8. CPC’s argument is moot when the proper construction
`
`of “defining” as “pointing to” a memory location is applied.
`
`
`
`2
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`

`

`CPC’s construction is erroneous for at least the following reasons:
`
`(1) CPC’s construction is unsupported by intrinsic or extrinsic evidence;
`
`(2) CPC’s declarant provides only verbatim opinions without further
`
`explanation or factual basis; and
`
`(3) CPC’s construction is inconsistent with the specification and dependent
`
`claims.
`
`Contrastingly, Apple’s Petition mapped the “defining” limitation consistent
`
`with the FIG. 4 embodiment in the ’039 Patent and based on intrinsic evidence.
`
`A. The Intrinsic Evidence Supports Apple’s Mapping
`As mapped in the Petition, a proper understanding of the claimed phrase
`
`“defining, dependent upon the received card information, a memory location” is
`
`pointing to, dependent upon1 the received card information, a memory location. The
`
`card information “acts as the memory reference which points…to a particular
`
`memory location[.]” (Ex. 1001, 7:31-35, FIG. 4; Paper 1, 18, 23-25 (pinpoint at
`
`sentence spanning 23-24); Ex. 1003, 80 (Dr. Sears opining “the unique data
`
`sequence, stored on the player ID card is acting as a memory reference that points to
`
`a memory location in a database external to the card”), 83 (similar), 52-55 (pinpoint
`
`
`1 The term “dependent upon” was construed by the District Court as “contingent on
`
`or determined by,” and the Parties do not dispute this construction. (Paper 8, 10).
`
`
`
`3
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`

`

`at 55) (discussing prior art disclosing using “reference pointers” to “define a memory
`
`location of a record in a database”), 79-83 (explaining Bradford’s player ID card
`
`information “points to a memory location”), 87-89 (pinpoint at 89) (same)).
`
`The Petition cites the ’039 Patent’s intrinsic evidence supporting Apple’s
`
`mapping:
`
`In one example of the disclosed BCP approach, the card data 604 acts
`as the memory reference which points, as depicted by an arrow 608, to
`a particular memory
`location at an address 607 in
`the
`local
`database 124 in the verification station 127 of FIG. 3.”
`
`(Ex. 1001, 7:31-35) (emphases added); Paper 1, 18 (discussing this citation). Figure
`
`4 of the ’039 Patent illustrates RN 604 as “card data – points to address of biometric
`
`signature” and RN 607 as “memory address defined by card data.”
`
`
`
`4
`
`
`
`

`

`(Ex. 1001, FIG. 4). The ’039 Patent also suggests card data is used to “locate” a
`
`memory address and “associate a memory location with a card number[,]” further
`
`confirming card data is used as a memory reference to point to a memory location.
`
`(Ex. 1001, 12:1-9). Thus, the card data is used to point to the address, such that the
`
`address is defined by the card data. (Ex. 1003, 79-81, 89, 98).
`
`Tellingly, CPC does not address the ’039 Patent’s “points to” language. Yet,
`
`even CPC’s declarant, Dr. Easttom, seems to agree that card data “points to” a
`
`memory location. (Ex. 1039, 14:21–15:1 (agreeing FIG. 4 discloses card data
`
`pointing to a “memory address defined by the card data” in a local database)). Dr.
`
`Easttom appears to concede the ’039 Patent envisions a method that attempts to
`
`“find” a biometric signal at a memory location “defined by card data” to determine
`
`the status of enrollment. Id. at 31:22-32:8 (“…if I couldn’t find this biometric signal
`
`in the database and it turns out that the contents of memory defined by the card
`
`data 604 are empty, that means we need to go into the enrollment process.”).
`
`The ’039 Patent provides no indication that using card data to point to a
`
`memory address means something different than using card data to define the
`
`memory address. “Pointing to” a memory address is the only understanding
`
`supported by the ’039 Patent’s intrinsic evidence.
`
`
`
`5
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`

`

`B.
`The Board Already Agreed with Apple’s Mapping
`CPC’s POPR already argued Bradford does not teach the “defining”
`
`limitation, albeit without the “setting” or “establishing” construction. (Paper 7, 9).
`
`At Institution, the Board rejected CPC’s argument, explaining Bradford’s card with
`
`first authenticator data stored thereon acts as a pointer to a memory location: “… a
`
`[POSITA] would have known to use unique ID field data in a database as a pointer
`
`because any part of the received card information can define the memory location
`
`where the biometric data will be saved.” (Paper 8, 34 (“…we find on this record that
`
`Bradford’s stored first authenticator data meets limitation 1[c] because it acts as a
`
`reference determining the location of the biometric fingerprint data”) (emphasis
`
`added), 17 (citing Ex. 1003, 79), 4-5 (Board discussing the ’039 Patent describing
`
`card data acting as a memory reference that points to a memory location)).
`
`Thus, the Board already found the first authenticator data stored on Bradford’s
`
`player ID card defines a memory location, as recited in the claims. Other than an
`
`unsupported claim construction, CPC provides no evidence rebutting this finding.
`
`C. No Evidence Supports CPC’s Construction
`CPC relies on no evidence, other than Dr. Easttom’s verbatim conclusory
`
`opinions, to support its construction. (Paper 12, 7-8). Except for a single citation in
`
`Dr. Easttom’s Declaration (discussed below), CPC never cites to the ’039 Patent
`
`specification or prosecution history to explain its construction. Id. (citing Ex. 2001,
`
`
`
`6
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`

`

`41). CPC also provides no extrinsic support (e.g., dictionary definition or textbook
`
`example). Id. The ’039 Patent does not use, within the context of defining a memory
`
`location, the terms “set” or “establish” or variants thereof (e.g., setting/establishing).
`
`Dr. Easttom provides no factual basis for why “defining…a memory location”
`
`would have been understood by a POSITA as “setting” or “establishing” a memory
`
`location, thereby excluding pointing to a memory location determined by card
`
`information. (Ex. 2001, 41). Instead, Dr. Easttom merely restates CPC’s argument,
`
`relying on two excerpts from the ’039 Patent. Id. (citing Ex. 1001, 2:64-67, 7:47-
`
`49). Neither cited excerpt uses the words “setting” or “establishing,” but instead
`
`generally states card data defines the memory location without further elucidation.
`
`Id. Because Dr. Easttom adds no technical reasoning to his conclusory assertions
`
`regarding “defining…a memory location,” the Board should entitle “little weight”
`
`to Dr. Easttom’s declaration testimony. Xerox Corp. v. Bytemark, Inc., IPR2022-
`
`00624, Paper 9, 15 (PTAB Aug. 24, 2022).
`
`CPC’s construction must be rejected for lack of intrinsic/extrinsic evidence.
`
`D. CPC’s Construction Is Inconsistent with the Specification and
`Claims
`CPC’s construction of “defining” requires different and inconsistent
`
`interpretations of the term for the enrollment phase of a biometric signature versus
`
`the verification phase of a biometric signature. There is nothing in the ’039 Patent
`
`indicating the term should be given different meanings for the two phases.
`
`
`
`7
`
`

`

`CPC agrees the ’039 Patent describes and claims a two-step process
`
`comprising enrollment of a biometric signature and subsequent verification of the
`
`enrolled biometric signature. (Ex. 1001, 7:43-56, Claims 1-2; Paper 12, 4-5; Ex.
`
`1039, 29:18-24). The ’039 Patent describes that in each of the enrollment and
`
`verification phases, the memory location for the biometric signature is defined by
`
`the card information. (Ex. 1001, 7:47-56 (during enrollment, the “card data 604
`
`defines the location 607 in the memory 124 where their unique biometric signature
`
`is stored” and then discussing “later verification phases”), 8:24-34 (during
`
`verification, “read[ing] the contents of the local database 124 at an address defined
`
`by the card data 604”), 8:61-66 (same)). Additionally, for both phases, the ’039
`
`Patent describes obtaining card data from the card presented by the user. (Ex. 1001,
`
`7:43-49 (processing card data during enrollment), 8:5-15 (processing card data
`
`during verification)).
`
`Notably, the ’039 Patent uses the word “defined” for the verification phase –
`
`a phase in which the user’s biometric signature is already stored, and thus, the
`
`memory location for the biometric signature has already been “set” or “established”
`
`previously:
`
`After the signature has been received by the step 203, the process 200 is
`to a step 204 that reads the contents of the
`local
`directed
`database 124 at an address defined by the card data 604. If the
`contents of this memory address match, to a sufficiently high degree
`
`
`
`8
`
`

`

`of correspondence, the biometric signature received in the step 203 via
`the biometric reader 102, then the process follows a YES arrow….
`
`(Ex. 1001, 8:24-30). In this example, the “defined” memory location already
`
`contains a biometric signature used for matching against the live signature. It would
`
`not make sense to set/establish a memory location during the verification phase, as
`
`the system would expect a biometric signature to be already stored in the memory
`
`location (thus, the memory location is already known to the system). Therefore, in
`
`both phases, the system reads card data from the card, and this card data is used to
`
`define, i.e., point to, the memory address/location. (Ex. 1001, 8:22-38, 8:44-46
`
`(discussing card data “can be associated with a group of memory locations, rather
`
`than being the address for a specific memory location”)).
`
`Applying CPC’s construction of “defining”
`
`to mean “setting” or
`
`“establishing” requires interpreting defining a memory location during the
`
`enrollment phase differently than during the verification phase, which is inconsistent
`
`with the ’039 Patent’s Specification. “Setting” or “establishing” a memory location
`
`based on card information subsequently presented during a verification phase is
`
`illogical, as the memory location was already set/established (per CPC) during the
`
`enrollment phase and a biometric signature is already stored in that memory location.
`
`CPC’s construction itself does not “encompass any disclosed embodiments,”
`
`while improperly excluding an express embodiment of the ’039 Patent (discussed
`
`
`
`9
`
`

`

`above regarding FIG. 4, in which card data points to a memory location).
`
`Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1138 (Fed. Cir.
`
`2007) (citing Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1355 (Fed. Cir.
`
`1998) (“A patent claim should be construed to encompass at least one disclosed
`
`embodiment in the written description portion of the patent specification.”)). CPC’s
`
`construction must thus be rejected for lack of intrinsic or extrinsic support and for
`
`being facially inconsistent with any disclosed embodiment in the Specification.
`
`E. CPC’s Construction Renders Claims 1 and 19 Inconsistent with
`Claim 2
`CPC’s faulty interpretation of “defining” requiring “setting” or “establishing”
`
`a memory location anew creates a conflict between claims 1 and 2. Claim 1 requires
`
`“storing, if the memory location is unoccupied, the biometric signature at the defined
`
`memory location.” (Ex. 1001, Claim 1). If claim 1 is interpreted to require the
`
`memory location is newly set/established based on received card information, the
`
`claimed system would never need to determine if this memory location is
`
`unoccupied. The memory location could not possibly be occupied if it was only just
`
`“set” or “established” (i.e., created) responsive to receiving the card information.
`
`Applying CPC’s construction renders the method of claim 1 illogical.
`
`Similarly, CPC’s construction requires that “defining” in claim 1 be construed
`
`differently than “defined by” in claim 2. It is well-established that “the same phrase
`
`
`
`10
`
`

`

`in different claims of the same patent should have the same meaning[.]” In re Varma,
`
`816 F.3d 1352, 1363 (Fed. Cir. 2016). Claim 2 of the ’039 Patent recites:
`
`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.
`
`(Ex. 1001, 12:45-50) (emphases added). CPC’s flawed interpretation rewrites claim
`
`2 to recite matching a subsequently presented biometric signature with the contents
`
`of a memory location “set” or “established” by “subsequently presented” card
`
`information, another inoperable method. The system cannot, during a verification
`
`phase, set or establish anew (i.e., create) a memory location already storing a
`
`biometric signature received during the enrollment phase. If the subsequently
`
`presented card information is used to set or establish (i.e., create) a memory location,
`
`then of course, there will not be any biometric signature stored in the memory
`
`location to match. A more logical understanding is that defining the memory location
`
`is pointing to the memory location dependent on the card information.
`
`Dr. Easttom, when queried about inconsistencies in CPC’s construction
`
`(specifically regarding claim 2 of the ’039 Patent), answer with convoluted and
`
`difficult to follow responses. But, he seemed to insist that claim 2 recites checking
`
`the memory address defined by the card data for the card received by the system
`
`
`
`11
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`

`

`during the enrollment phase—not the card “subsequently presented” during the
`
`verification phase as expressly recited. (Ex. 1039, 30:2-18.) If CPC’s position is that
`
`during verification the checked memory location is defined by card data read from
`
`the card during the enrollment phase, such a process is not described in the ’039
`
`Patent and would be inoperable for any use of the game device occurring after the
`
`enrollment process (e.g., on a subsequent day). The purpose of the verification phase
`
`is to determine if a biometric signature stored in a memory location defined by card
`
`data received during the verification phase (“subsequently presented”) matches a
`
`newly-captured biometric signature. (Ex. 1001, 8:22-38).
`
`Given these issues, CPC may argue the “defining/defined by” phrases in
`
`claims 1 and 2 should be distinctly construed. See, e.g., Ex. 1039, 27:17–29:2
`
`(pinpoint at 28:19-20 (Dr. Easttom opining that the “defined by” in claim 2 is “long
`
`after memory has been defined”). During his deposition, Dr. Easttom seemingly
`
`opined that following enrollment, the actual memory address is stored on the card,
`
`such that the card “now knows what address” to look for. (Ex. 1039, 29:7-11). Again,
`
`such a process is not described in the ’039 Patent.
`
`III. CPC’S ARGUMENTS REGARDING BRADFORD
`A. CPC’s Substantive Bradford Arguments Rely on the Incorrect
`Claim Construction
`CPC argues Bradford’s system cannot teach “defining a memory location
`
`dependent upon received card information” because a player’s ID entry with first
`
`
`
`12
`
`

`

`authenticator data is created before card information is received during enrollment.
`
`(Paper 12, 8-9, 12-14). CPC’s argument requires an improper construction of
`
`“defining…a memory location” and imports limitations into the claims.
`
`CPC argues “Bradford, notably, does not teach utilizing the first authenticator
`
`to create a player ID entry.” (Paper 12, 9, 13-14). However, the claims do not require
`
`using card information to create a user record, nor do the claims require receiving
`
`the card information for the first time and then defining a memory location. There is
`
`nothing in the claims that restricts receiving card information two or more times.
`
`Instead, the claims merely require “defining” (pointing to) a memory location
`
`dependent upon card information.
`
`CPC’s argument, including its “temporal” argument (Paper 12, 8), applies its
`
`incorrect construction of “defining…a memory location,” arguing Bradford’s
`
`memory location cannot be “set” or “established” based on card information because
`
`the memory location already exists. (Paper 12, 12-13). However, CPC’s argument
`
`requires the card information set or establish anew the memory location, as opposed
`
`to the correct understanding that card information points to the memory location.
`
`Because the Petition mapped, and CPC does not appear to dispute, that the player ID
`
`card in Bradford encodes first authenticator data that is used to point to a memory
`
`location in which to store a biometric signature, Bradford teaches the “defining”
`
`limitation. (Paper 1, 23-24).
`
`
`
`13
`
`

`

`The Board also already found Bradford teaches an “enrollment process in
`
`which a casino attendant enters first authenticator data into a game authorization
`
`system database and the player receives a player ID card including the first
`
`authenticator data.” (Paper 8, 29 (citing Bradford, 14:21-31)). The Board further
`
`found that “[d]uring enrollment, with the first authenticator data stored in the player
`
`ID database, Bradford’s game authorization system subsequently receives a
`
`player’s biometric fingerprint as input, which is saved in the player ID database
`
`along with the first authenticator data.” (Paper 8, 29 (citing Bradford, 15:61-63))
`
`(emphasis added). As the Board acknowledged, the Petition maps the claimed
`
`method in the correct order: information received from Braford’s card points to a
`
`location in memory at which a biometric signature (fingerprint) is stored. (Paper 8,
`
`29, 35-36; Paper 1, 18-24 (citing Ex. 1003, 80-83, 87, 89)). Other than the incorrect
`
`claim construction, CPC provides no arguments challenging the Board’s initial
`
`findings.
`
`B.
`Bradford’s “privileged screens” and “last 10 players”
`CPC argues Bradford’s description of privileged screens “prevents the player
`
`from becoming one of the last 10 players to use the machine[,]” thereby allegedly
`
`not meeting the claim limitation of “a memory location in a local memory external
`
`to the card.” (Paper 12, 15-17). CPC’s argument ignores the Petition’s mapping and
`
`Bradford’s express teachings.
`
`
`
`14
`
`

`

`The Petition maps, with declarant support, that Bradford expressly teaches a
`
`newly-enrolled player’s record is stored in local memory as one of the last ten
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`players to use a game device. (Paper 1, 32-33 (citing Ex. 1003, 99-101)). Bradford
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`teaches “[a] preferred embodiment allows the attendant to use any game device in
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`the casino having the present invention[.]” (Bradford, 15:48-52). The attendant can
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`invoke the privileged screen(s), which allows the attendant to “enter a player’s
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`biometric measurements for entry into the player ID database[.]” Id. at 15:52-58; Ex.
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`1039, 47:16-20. “The player would use the reader with their chosen finger, with the
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`privileged mode set by the attendant enabling this data to be made part of the player’s
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`ID entry in the player ID database,” and may thereafter be trained on two-factor
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`authentication. Bradford, 15:60-16:7. Bradford then teaches the “attendant exits
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`from the privileged screen(s) and training mode” and the device “is now ready to be
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`used in a normal manner.” Bradford, 16:8-10. Bradford continues:
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`In box 618, the player is now ready to use the system and the system
`has an entry in the player ID database corresponding to the player,
`having a first authenticator and a second authenticator useable by the
`player.
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`Bradford, 16:21-25, 16:45-47.
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`15
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`Bradford, FIG. 6.
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`CPC’s argument that enrollment occurring within a privileged screen
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`“prevents the player from becoming one of the last 10 players to use the machine”
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`is unsupported. (Paper 12, 17). Dr. Easttom opines “there is no indication the player
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`uses the gaming machine until after the attendant has completed enrollment,” which
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`is incorrect for at least two reasons. (Ex. 2001, 52).
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`First, the player’s record is used at the gaming machine, even when the
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`attendant uses privileged screens:
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`16
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`In box 614, the attendant makes use of the newly created entry to
`demonstrate to the player the use of the two-authenticator
`authentication process. This may involve the use of a newly created
`EFA, a W2G event, or simply identifying themselves to the system.
`The casino will choose which training scenario they want to present to
`the newly enrolled players.
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`(Bradford, 16:1-7). Figure 6, box 614 of Bradford illustrates showing the player an
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`example transaction using the player’s database entry:
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`
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`Id. at FIG. 6 (excerpt). Bradford expressly teaches the attendant, while in the
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`privileged screens (box 614), shows the player an example transaction, such as the
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`17
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`player identifying themselves via card and fingerprint, and then the attendant exits
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`the privileged screen at box 616. Id. at FIG. 6, 16:8-9. Because the player is using
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`the machine to perform actions while in the privileged screens, the player’s ID entry
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`is stored locally in the game device.
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`Second, Bradford expressly teaches the “system has an entry in the player ID
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`database corresponding to the player” after the attendant exits the privileged screens.
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`(Bradford, 16:21-25). Per Dr. Sears, during second authenticator enrollment, the
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`biometric is stored in local memory of the FIG. 3 device. (Ex. 1003, 102). CPC’s
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`argument that normal use of the device occurs only after training, therefore negating
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`storage of the player ID entry locally, is unfounded. First, Dr. Easttom’s assertions
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`at Ex. 2001, ¶ 52 are unsupported conclusory statements without factual basis and
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`should be dismissed for this reason alone. Xerox Corp. v. Bytemark, Inc., IPR 2022-
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`00624. Second, because Bradford teaches enabling a player ID entry and then the
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`gaming device being ready for normal use by the player, the logical conclusion (as
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`opined by Dr. Sears) is that the device stores the player ID entry that was just created
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`locally. (Ex. 1003, 100-102).
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`Finally, the Petition’s mapped method relies only on the first use of the
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`privileged screens (completing enrollment of a user), and does not rely on its second,
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`unrelated potential use (demonstrating “fake” transactions and game outcomes for a
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`user) raised by CPC. (Paper 1, 17-33; Bradford, 15:52-58). Though the Petition
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`18
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`mentions that the privileged screens may be used for “training,” Bradford’s
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`“demonstrations” are neither relied upon nor necessary to teach limitation 1(c).
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`(Paper 1, 32-33). Thus, CPC’s unsupported argument regarding Bradford’s
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`“demonstration” preventing storing the player’s biometric signature in memory is
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`not responsive to the Petition and should be dismissed.
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`C. Bradford’s Attendant’s Card
`The Petition maps “receiving card information” by modifying Bradford via
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`Foss to swipe Bradford’s player ID card using Bradford’s card reader. (Paper 1, 25-
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`28). CPC argues it would be impossible to swipe the player’s card because the
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`attendant’s card remains in the machine during enrollment, and thus information
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`from the player’s ID card could not be received. (Paper 12, 12, 18). CPC’s argument
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`is incorrect for multiple reasons.
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`First, Bradford expressly envisions embodiments not “requiring” the
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`attendant’s card staying in the machine during enrollment. (Bradford, 14:31-41;
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`Paper 1, 11 (citing this disclosure from Bradford to discuss an “authorized person”)).
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`Bradford teaches the attendant may “open the privileged screens” using their
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`employee identification card, which includes an RFID tag, a memory-only
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`authenticator (such as a PIN), and/or a biometric signature. (Bradford, 14:28-37).
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`None of these options requires the physical card to enter the card reader of the
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`machine, much less “remain in the machine.” Id.; Ex. 1039, 47 (Dr. Easttom agreeing
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`19
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`privileged screens may be accessed via RFID). Bradford thus expressly teaches an
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`attendant accessing the privileged screen with its attendant card, where the attendant
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`card is not required to be physically inserted into a card reader. Therefore, CPC is
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`incorrect that it would be impossible to obtain card information due to the attendant’s
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`card remaining in the card reader.
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`Second, Bradford teaches that during enrollment performed with the
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`assistance of the attendant, the player ID entry is accessed, and the second
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`authenticator (fingerprint) is added to the entry. (Paper 1, 20 (citing Bradford, 15:59-
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`63, 23:36-40)). Therefore, it is undisputed that Bradford teaches receiving card
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`information to access the player ID entry. The claims do not recite how card data is
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`received, and the Petition and supporting evidence established that Bradford renders
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`obvious various m