`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 SUR-REPLY
`
`
`
`
`
`
`
`
`
`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`TABLE OF CONTENTS
`
`I.
`
`B.
`
`Apple’s Arguments are Contradicted by Its Own Expert Dr. Sears ................ 1
`A. Dr. Sears Conceded That the Challenged Claims Contain a
`Temporal Requirement .......................................................................... 1
`Dr. Sears Admits That Bradford Does Not Teach the Defining
`Limitation .............................................................................................. 3
`C. Apple’s New Claim Construction Has No Support in the Intrinsic
`Record and Defies the Basic Rules of Grammar .................................. 5
`Bradford Does Not Teach the “Defining” Limitation ..................................... 7
`II.
`III. Apple’s Combinations Are Illogical ................................................................ 8
`A.
`Proprietary Software on Both Machines ............................................... 8
`B.
`Foss Does Not Cure the Deficiencies of Bradford ............................. 10
`C.
`Yamane Also Fails to Remedy the Deficiencies of Bradford ............. 12
`IV. CONCLUSION .............................................................................................. 13
`
`
`
`i
`
`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom II (Chuck Easttom) Ph.D.,
`D.Sc.
`
`2002
`
`2003
`
`2004
`
`CV of Dr. Chuck Easttom
`
`Rough Deposition Transcript of Dr. Andrew Sears, dated
`January 13, 2023
`
`Final Deposition Transcript of Dr. Andrew Sears, dated
`January 13, 2023
`
`
`
`
`
`
`ii
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`APPLE’S ARGUMENTS ARE CONTRADICTED BY ITS OWN
`EXPERT DR. SEARS
`
`I.
`
`Apple’s expert, Dr. Andrew Sears, conceded that the principal reference upon
`
`which Apple relies, Bradford, lacks the claim limitation “defining, dependent upon
`
`the received card information, a memory location.” Paper No. 12 at 8-9, 13-14.
`
`Apple attempts to neutralize Dr. Sears’ admission by urging a new construction of
`
`this limitation whilst also claiming that CPC has improperly construed this
`
`limitation. Not only are Apple’s new arguments and constructions simply wrong, its
`
`new construction is improper at this stage of the proceeding. Apple loses on this
`
`basis alone.
`
`Apple’s new construction, namely that “defining … a memory location”
`
`means “pointing to” a memory location that has already been created, is precisely
`
`the opposite of Dr. Sears’ testimony. Dr. Sears admitted that, according to Claim 1,
`
`card information must first be obtained before the memory location is defined. Ex.
`
`2004, 11:2-22. This testimony is consistent with CPC’s construction and is fatal to
`
`Apple’s Petition.
`
`A. Dr. Sears Conceded That the Challenged Claims Contain a Temporal
`Requirement
`
`Dr. Sears testified, consistent with CPC’s construction, that the method steps
`
`of Claim 1 of the ’039 Patent must be carried out in a specific order – the card
`
`information is obtained first, the memory location is defined by the card information
`
`1
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`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`second, and the biometric signature is stored in the defined memory location third.
`
`Paper No. 12 at 8 (citing Ex. 2003, 15:21-16:6); see also Paper No. 1 at 26
`
`(describing how “a player entry is created in the player ID database” followed by
`
`“[t]he casino attendant then provid[ing] the player with the first authenticator”); see
`
`also Ex. 1001, 12:29-38 (“the method comprising the steps of: [1] receiving card
`
`information; … [2] defining, dependent upon the received card information, a
`
`memory location in a local memory external to the card; … and [3] storing…the
`
`biometric signature at the defined memory location”).
`
`Dr. Sears’ admission of the temporal nature of Claim 1 comports with the
`
`construction of the challenged claims put forth by Dr. Easttom, CPC’s expert. Dr.
`
`Easttom opined that the term “defining” means “setting” or “establishing,” citing to
`
`the specification of the ʼ039 Patent for support. Ex. 2001, ¶41 (citing Ex. 1001, 2:64-
`
`67, 7:47-49).1 By first obtaining card data, and then defining the memory location,
`
`the memory location cannot already exist, as contemplated by Apple’s new
`
`construction. See Ex. 2004, 12:17-13:1. Apple’s attempt to twist the meaning of
`
`
`1 Given Dr. Easttom’s citation to the specification to support his construction, his
`
`declaration is distinct from the declaration in Xerox Corp. v. Bytemark, Inc.,
`
`IPR2022-00624, Ex. 1003, ¶54 (PTAB Aug. 24, 2022), cited by Apple, in which the
`
`declarant pointed to nothing.
`
`2
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`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`“defining” into “pointing to,” (Paper No. 13 at 3 (citing Ex. 1001, 7:31-35))
`
`improperly imports an embodiment into the claims. See, e.g., Ford Motor Co. v.
`
`Paice LLC, IPR2014-00904, Paper 13, 8 (PTAB Dec. 12, 2014).
`
`B. Dr. Sears Admits That Bradford Does Not Teach the Defining
`Limitation
`
`Dr. Sears went on to testify that Bradford teaches a process in which the steps
`
`are reversed - a memory location is defined before any card information is received.
`
`Ex. 2004, 31:12-18. In explaining the enrollment process taught in Bradford, Dr.
`
`Sears testified that the casino attendant first creates a database entry for a player’s
`
`user account and in doing so, defines the memory location where information
`
`associated with the account will be stored. Paper No. 12 at 8, 9. Specifically, Dr.
`
`Sears testified:
`
`Q. Okay. So the entry has to exist before the first and
`second authenticator data could be stored there, correct?
`
`A. Yes, there is an entry, and then you store the first
`authenticator data, and then you store the second
`authenticator data.
`
`Ex. 2004, 33:13-34:3.
`
`Q. If the first authenticator is a player ID card that’s
`generated by the casino, the database entry is created first,
`and the first authenticator is then created and provided to
`the user; is that right?
`
`3
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`U.S. Patent No. 8,620,039
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`A. I believe from the reading of that one about -- that
`sounds accurate.
`
`Id. at 31:12-18; see also id. at 47:19-48:12, 29:20-30:7; Ex. 2001, ¶42.
`
`Dr. Sears also testified that this database entry of Bradford—i.e., the entry
`
`which undeniably predates the storing of authenticator data—is the memory
`
`location. Ex. 2004, 23:11-14.
`
`Thus, Dr. Sears admitted that Bradford does not teach the method of Claim 1
`
`because, before any card information is received, Bradford’s memory location is
`
`already defined. Paper No. 12 at 9. More specifically, because the memory location
`
`of Bradford is defined prior to the first authenticator data being issued, or associated
`
`with the account, the memory location is not, and cannot be, defined dependent upon
`
`the received card information as required by the challenged claims. Paper No. 12 at
`
`13-14. Even Apple admits the player ID entry of Bradford exists prior to receiving
`
`card information. Paper No. 13 at 24 (“In the combined, modified system, an account
`
`exists prior (per Bradford) to receiving the card information (per Foss).”).2 These
`
`concessions are fatal to Apple’s Petition, which must therefore be denied.
`
`
`2 All emphasis added unless noted otherwise.
`
`4
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`C. Apple’s New Claim Construction Has No Support in the Intrinsic
`Record and Defies the Basic Rules of Grammar
`
`As the Board recognized in ordering institution of this proceeding, Apple
`
`failed to set forth any construction of the “defining” limitation. Paper No. 8 at 10;
`
`Paper No. 1 at 5-6. That it seeks to do so now is improper. See Intelligent Bio-Sys.,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). See also 35
`
`U.S.C. §§ 42.104(b)(5), 311(b), 312(a)(3) (defining the scope of, and evidence used
`
`in, an inter partes review).
`
`Assuming the Board considers this improperly new construction, Apple
`
`justifies that construction by pointing to a single embodiment in the specification,
`
`while ignoring the fact that the claims never use “points to” and only use the term
`
`“defining” or “defined.” This improperly imports a specification embodiment into
`
`the challenged claims. Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341
`
`(Fed. Cir. 2014) (quoting Liebel–Flarsheim v. Medrad, Inc., 358 F.3d 898, 913
`
`(Fed.Cir.2004)).
`
`In any event, equating “defining” with “pointing to” is specious. One can
`
`“point to” a word in a dictionary, but that would not constitute “defining” that word.
`
`The dictionary already does that, with or without such pointing. Because Apple’s
`
`definition of “defining” is both new and wrong, it should be disregarded.
`
`5
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`Apple goes on to defy basic rules of grammar in arguing that “defining” and
`
`“defined,” although different tenses, somehow mean the same thing. Paper No. 13
`
`at 10-11. Two terms differing in tense cannot share the same meaning. See
`
`Microlinc, LLC v. Intel Corp., 2013 WL 2471551, at *22 (E.D. Tex. June 7, 2013)
`
`(rejecting the position that a past tense verb can be construed to cover a present tense
`
`application). On that note, Dr. Easttom distinguishes a “defined” memory location
`
`from “defining” a memory location. Ex. 2001, ¶41 (citing Ex. 1001, 2:64-67, 7:47-
`
`49); see also Paper No. 12 at 7 (“Defining, however, is not finding or identifying
`
`something that has already been defined.”). And, the inventor knew how to use each
`
`tense when he saw fit to do so. Compare Ex. 1001, Cl. 1 (“defining”) with Ex. 1001,
`
`Cl. 2 (“defined”).
`
`Apple also references the ʼ039 Patent’s descriptions of Figures 4 and 5 in an
`
`effort to conflate enrollment and verification, thereby bolstering its tortured
`
`construction of “defining.” See Paper No. 13 at 8 (citing Ex. 1001, 7:43-49 (Figure
`
`4), 8:5-15 (Figure 5)). The description of Figure 4, however, distinguishes “an initial
`
`enrolment phase” from “later verification phases.” See Ex. 1001, 7:43-59. The
`
`former phase involves defining a memory location, while the latter phase involves
`
`6
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`U.S. Patent No. 8,620,039
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`comparing the data stored in that memory location, i.e., after such location has been
`
`defined.3 See id.
`
`II. BRADFORD DOES NOT TEACH THE “DEFINING” LIMITATION
`
`As explained above, “defining” a memory location for data storage does not
`
`mean “pointing to” a memory location in which data is already stored. And, Apple
`
`concedes that Bradford does not teach the first authenticator data “defining” a
`
`memory location, as required by the claims, because the memory location is created
`
`before the first authenticator data is ever received. Paper No. 12 at 9, 13, 14; Ex.
`
`2001, ¶42; Ex. 2004, 33:13-34:3, 31:12-18, 47:19-48:12. This shortcoming in
`
`Bradford’s teaching is fatal to the Petition.
`
`Apple next argues that the casino attendant’s use of Bradford’s privileged
`
`screens would place that player’s account in cache memory – i.e., memory which is
`
`only described as accessed as a part of Bradford’s “normal manner” operation. Paper
`
`No. 13 at 15-19. CPC and Dr. Easttom point out that Bradford says nothing about
`
`
`3 Apple tries to justify its grammatical gymnastics by arguing that “the memory
`
`location” of Claim 2, which depends from Claim 1, is somehow different from the
`
`memory location of Claim 1. Paper No. 13 at 11-12. These memory locations must
`
`be the same because the memory location of Claim 1 provides the antecedent basis
`
`for the memory location of claim 2.
`
`7
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`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`using cache memory within such privileged screens. Paper No. 12 at 17; Ex. 2001,
`
`¶52. Apple, for its part, cites nothing to the contrary, only challenging these
`
`arguments as unsupported conclusions. Paper No. 13 at 18. Bradford is clear that,
`
`until the attendant exits from the privileged screens, the gaming machine is not
`
`“ready to be used in a normal manner.” Ex. 1004, 16:8-10 (cited at Ex. 2001, ¶52;
`
`Paper No. 12 at 24). No support in Bradford exists for Apple’s contention that
`
`Bradford’s normal-mode cache memory described in relation to Figure 3 is in any
`
`way related to the use of privileged screens, as depicted in Figure 6. Paper No. 12 at
`
`17; Ex. 2001, ¶¶44, 52.
`
`III. APPLE’S COMBINATIONS ARE ILLOGICAL
`A.
`
`Proprietary Software on Both Machines
`
`Apple proposes combining the teachings of Bradford with Foss as teaching
`
`accessing a player account via card information. Paper No. 13 at 22. Apple’s citation
`
`to Figure 6 of Bradford confirms why this modification would not have been
`
`obvious; when the attendant and player approach the gaming machine no player
`
`account yet exists.
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`8
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`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`
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`Ex. 1004, FIG. 6 (reproduced at Paper No. 13 at 16, 17).
`
`
`
`Bradford also describes this embodiment as a series of steps. In steps 610 and
`
`612, the attendant and player “go[] to a game with the present invention installed on
`
`it,” “the attendant invokes a special set of screens,” and then “[t]he player would use
`
`the [fingerprint] reader with their chosen finger, with the privileged mode set by the
`
`attendant enabling this data to be made part of the player’s ID entry in the player ID
`
`database.” Id., 15:43-63; Paper No. 12 at 14-15. It is not until step 618 that the player
`
`becomes “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.” Ex. 1004, 16:21-24; Paper No. 12 at 17 (citing
`
`9
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`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`Ex. 1004, 17:47-50 (describing the player ID entry as “enabled” when it “has a
`
`second authenticator”)); Ex. 2001, ¶59.
`
`One cannot retrieve a non-existent player account using card data. See Ex.
`
`1003, ¶110 (“After entering the second authenticator data, the ‘system creates the
`
`entry in the player ID database corresponding to this player,’ similar to the first
`
`implementation. Thus, both implementations conclude with creation of an enabled
`
`player entry (i.e., a player entry including both first and second authenticator data).”)
`
`(quoting Ex. 1004, 16:40-45). Accordingly, Bradford does not even teach an
`
`accessible player ID entry—i.e., an entry that could theoretically be accessed in a
`
`manner similar to the teachings of Foss (a reference which CPC maintains a POSITA
`
`would not have looked to in modifying Bradford)—until after the entry has
`
`associated second authenticator data. Id.; Paper No. 12 at 11-12, 17 (citing Ex. 1004,
`
`17:47-50); Ex. 1004, 16:21-24. Therefore, Apple’s proposed combination of
`
`Bradford and Foss is illogical. Paper No. 12 at 14-15.
`
`B. Foss Does Not Cure the Deficiencies of Bradford
`
`Regarding Foss, Apple’s Reply makes much of how swiping a card would
`
`have been an obvious way to retrieve player ID entry data, and suggests that
`
`“Bradford teaches other options for retrieving player entries during enrollment,
`
`including typing first authenticator data.” Paper No. 13 at 20. It is notable, however,
`
`that Apple’s lone citation in support of this assertion is to paragraph 96 of Dr. Sears’
`
`10
`
`
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`
`declaration. Id. This paragraph states “I note that Bradford teaches several options
`
`for retrieving a player entry during the enrollment at a game device, including typing
`
`the player’s name or first authenticator data such as the unique data sequence.” Ex.
`
`1003, ¶96. This conclusory statement contrasts with the fact that Bradford does not
`
`teach how the incomplete player ID entry is retrieved. Paper No. 12 at 17-18; Ex.
`
`2004, 28:8-21 (“Bradford does not expressly teach how a stored player’s entry is
`
`retrieved in that particular part of the process.”). Under Apple’s own case law, Dr.
`
`Sears’ failure to provide any support for his assertion results in “the cited declaration
`
`testimony … [being] entitled to little weight.” Xerox, IPR2022-00624, Paper 9 at 15.
`
`Finally, even if the teachings of Bradford do not explicitly require the
`
`attendant’s card to remain in the card slot of the gaming machine, presentation of
`
`the attendant’s card or tag is the only mechanism taught for accessing the privileged
`
`screens. Paper No. 12 at 11-12, 17; Ex. 1004, 16:21-24. The player ID entry is only
`
`complete when the attendant exits these privileged screens. As stated above, neither
`
`Bradford nor Foss teaches using card data to access an incomplete account profile.
`
`Paper No. 12 at 11-12; Paper No. 1 at 12, 38 (citing Ex. 1004, 17:47-50); see also
`
`Ex. 1003, ¶110 (“both implementations conclude with creation of an enabled player
`
`entry (i.e., a player entry including both first and second authenticator data).”).
`
`Therefore, Foss does not remedy the deficiencies of Bradford in rendering the
`
`challenged claims obvious.
`
`11
`
`
`
`C. Yamane Also Fails to Remedy the Deficiencies of Bradford
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`
`
`Apple’s arguments regarding Yamane fail to address the significant flaws
`
`called out in the Patent Owner Response. First, Apple criticizes CPC’s arguments as
`
`“a non-analogous art discussion” that is incorrectly structured. Paper No. 13 at 25.
`
`In making this assertion, Apple ignores that the teachings of Yamane address
`
`accessing multiple software modules stored on a CD-ROM on a wide variety of
`
`terminals, while Bradford is concerned with maintaining high security on a
`
`maximum of two dedicated software programs, the software running at the customer
`
`service counter (Ex. 1004, 14:23-25) and the software running on the game machines
`
`(Id., 15:43-52). Paper No. 12 at 24.
`
`Apple’s only rebuttal in support of combining Bradford with Yamane is that
`
`one of the embodiments described in Bradford may be used with CD-ROMs. Paper
`
`No. 13 at 25 (citing Ex. 1004, 9:11-14). However, Bradford teaches away from
`
`Apple’s argument because it describes the CD embodiment as “[c]learly not the
`
`optimal choice.” See Ex. 1001, 9:15-17; see also Paper No. 12 at 23-24; Ex. 2001,
`
`¶¶60, 61. A POSITA would not have looked to a CD-centric reference like Yamane
`
`to modify Bradford.
`
`The Reply also fails to address another significant flaw raised in the Patent
`
`Owner Response: Yamane teaches checking whether a specific, pre-defined memory
`
`location is occupied via a flag, whereas the claim describes “determining if the
`
`12
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`defined memory location is unoccupied” and “storing, if the memory location is
`
`unoccupied, the biometric signature at the defined memory location.” Paper No. 12
`
`at 20-21. As stated above, Bradford or an alleged Bradford-Foss combination, fails
`
`to define a memory location dependent upon received card information, as recited
`
`in the challenged claims. Even if these references did define a memory location
`
`dependent upon card data, the teaching of Yamane to check a pre-specified,
`
`dedicated memory location would not remedy the failure of Bradford and Foss to
`
`teach the claimed determination of whether the defined memory location is
`
`unoccupied and storage only if that defined memory location is in fact unoccupied.
`
`Paper No. 12 at 21.
`
`IV. CONCLUSION
`
`Apple urges a nonsensical claim construction in order to salvage its Petition,
`
`one which requires construing a claim without lexicography or clear disavowal of
`
`claim scope, in order to stretch their inapplicable prior art to read on the challenged
`
`claims. Because the prior art references that Apple chose to rely upon do not teach
`
`or render obvious the challenged claims, the Board should uphold the validity of
`
`these claims.
`
`
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`13
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`
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`Dated: May 24, 2023
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`Respectfully submitted by
`
`K&L GATES LLP,
`
`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`
`By:
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`14
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`
`
`Certification of Word Count Under 37 C.F.R. §42.24(d)
`The undersigned hereby certifies that the foregoing contains 2,753 words
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`
`according to the word count feature of the word-processing software used to prepare
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`the foregoing.
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`
`
`
`
`By:
`
`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`
`
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`
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`15
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`
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`Certification of Service Under 37 C.F.R. §42.6(e)(4)
`I hereby certify that on May 24, 2023, I caused a true and correct copy of the
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`foregoing to be served on the following counsel for Petitioner by electronic mail to
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`the following email address:
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`
`
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`
`
`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Email: Jennifer.Bailey@eriseip.com
`Email: Adam.Seitz@eriseip.com
`Email: PTAB@eriseip.com
`
`By:
`
`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`
`16
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`
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