`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
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`Case IPR2022-00600
`U.S. Patent No. 8,620,039
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`PRELIMINARY PATENT OWNER’S RESPONSE
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`I.
`II.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`The References in the Single Challenge Ground Fail to Teach the
`“Dependent Upon the Received Card Information” ........................................ 1
`III. Conclusion ....................................................................................................... 7
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`i
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`I.
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`Introduction
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`Petitioner, Apple Inc. (“Apple”) offers up a single obviousness challenge
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`ground for claims 1, 2, 19 and 20 of U.S. Patent No. 8,620,039 (“the ‘039 Patent”)
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`over the primary Bradford reference in view of Foss, and in further view of Yamane.
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`Apple’s challenge relies upon a fundamental misreading of the teachings of its
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`primary Bradford reference – a reference that fails to teach the limitation “defining,
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`dependent upon the received card information, a memory location in a local memory
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`external to the card” where a “biometric signature” is to be stored. Indeed, Bradford
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`teaches away from that limitation insofar as it teaches only a limited use of a card
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`that does not include defining memory locations for other data. Given the absence
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`of any teaching of this limitation, which appears in each challenge claim, Apple’s
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`Petition must fail at the institution stage.
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`II.
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`The References in the Single Challenge Ground Fail to Teach the
`“Dependent Upon the Received Card Information”
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`Of the four challenged claims of the ‘039 Patent, claims 1 and 19 are the
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`independent method and apparatus claims, respectively. Both claims require, inter
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`alia: 1) defining, dependent upon the received card information, a memory location
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`in a local memory external to the card; 2) determining if the defined memory location
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`is unoccupied; and 3) storing, if the memory location is unoccupied, the biometric
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`1
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`signature at the defined memory location. See Ex. 1001, claims 1 and 19. The
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`following shows a comparison of those two independent claims (emphasis added):
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`Claim 1
`A method of enrolling in a biometric
`card pointer
`system,
`the method
`comprising the steps of:
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`receiving card information;
`receiving the biometric signature;
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`defining, dependent upon the received
`card information, a memory location in
`a local memory external to the card;
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`Claim 19
`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:
`code for receiving card information;
`code
`for
`receiving
`the biometric
`signature;
`code for defining, dependent upon the
`received card information, a memory
`location in a local memory external to
`the card;
`code for determining if the defined
`memory location is unoccupied; and
`code for storing, if the memory location
`is unoccupied, the biometric signature
`at the defined memory location.
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`determining if the defined memory
`location is unoccupied; and
`storing, if the memory location is
`unoccupied, the biometric signature at
`the defined memory location.
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`The following is a graphic depiction of the invention claimed:
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`Ex. 1001, Fig. 4 (highlights added).
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`According to the teachings of the ‘039 Patent specification, in Figure 4, “the
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`card data 604 acts as the memory reference which points, as depicted by an arrow
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`608, to a particular memory location at an address 607 in the local database 124.”
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`Ex. 1001, col. 7, lines 31-34. Further, “[i]n an initial enrolment phase, the card user
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`couples their card 601 . . . to the card reader 112. The card user is then required to
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`input a biometric signature.” Id. at col. 7, lines 43-46. In other words, the plain
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`language of both claims 1 and 19, when read in light of the specification’s teachings,
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`requires that the claimed system receives the card information before the biometric
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`signature, and the previously received card information defines the memory location
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`in which the biometric signature will be stored in that memory location if
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`unoccupied.
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`In contrast to the challenged claims, by Apple’s own characterization of the
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`primary Bradford reference, that reference teaches using “first authenticator” data
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`from a card to locate already-stored biometric information, as is evident from the
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`following passages from the Petition:
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`Bradford teaches the first authenticator data read from the card points to the
`second authenticator data stored in the player entry in the player ID database
`(Petition at 23, citing Ex. 1003, ¶¶ 80-83, 87, 89 (emphasis added));
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`The first authenticator data read from the card is used as a reference to locate
`a player entry having a matching first authenticator data (id., citing Ex. 1004,
`col. 13:27-32 (emphasis added));
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`Because the first authenticator data in the player entry is associated with the
`second authenticator data, the first authenticator data is used ‘to get’ the
`corresponding second authenticator data (Ex. 1004, col. 3, lines 56-58, col.
`13, lines 29-33, col. 19, lines 19-24, & col. 19, lines 63 – col. 20, line 1; and
`Ex. 1003, ¶¶ 80-83, 87, 89 (emphasis added));
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`Bradford teaches a method for authenticating electronic funds transfers, where
`the system requests the player’s first authenticator. The first authenticator is
`typically a player ID ‘of some kind, including but not limited to a traditional
`player ID card, a voucher ID.’ The system then determines if the presented
`first authenticator (e.g., player ID) ‘correspond[s] to at least one entry in the
`player ID database’ (id. at 24 (internal citations omitted) (emphasis added));
`and
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` POSITA would have understood information pointing to one entry in the
`player ID database is information pointing to a particular memory location at
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` A
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`U.S. Patent No. 8,620,039
`an address in the player ID database or that such is obvious (id. at 25, citing
`Ex. 1003, ¶¶ 87, 88 (emphasis added)).
`These teachings are antithetical to the challenged claims of the ‘039 Patent,
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`which require defining a memory location “dependent upon the received card
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`information,” and then “determining if the defined memory location is unoccupied,”
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`and “storing, if the memory location is unoccupied, the biometric signature at the
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`defined memory location.” If Bradford’s second authenticator data are already
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`stored in a database when the first authenticator data “points to,” “locate[s],” or
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`“get[s]” such second authenticator data, the memory location for the second
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`authenticator data is not defined “dependent upon” the first authenticator data.
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`Bradford’s pre-existing storage of the second authenticator data in memory also fails
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`to satisfy the claim requirements of “determining if the defined memory location is
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`unoccupied” once the memory location is defined, and “storing, if the memory
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`location is unoccupied, the biometric signature at the defined memory location.”
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`For its part, citing no evidence whatsoever, Apple insists that the definition of
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`the memory location in Bradford is “determined by” the received card information.
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`Petition at 24. Apple is wrong. As Apple itself notes, Bradford teaches that an
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`attendant “‘enter[s] a player’s biometric measurements for entry in the player ID
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`database’ using a ‘privileged mode set by the attendant’ and ‘enabling this data [the
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`player’s fingerprint data] to be made part of the player’s ID entry in the player ID
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`database.’” Petition at 27. Nothing in Bradford teaches that the memory location
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`U.S. Patent No. 8,620,039
`for the player’s biometric measurements entered by the attendant is defined by the
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`first authenticator data, such as a player card, etc. In fact, Bradford teaches:
`[A] player who wants to use a debit card they already have as a first
`authenticator would allow the information on the magnetic Strip of the card
`to be read and kept as first authenticator data. When the player then goes to a
`game device, the player presents their card to the reader. The data that is read
`off of the card is used to find matching first authenticator data in the player
`ID database. That is the extent of its use.
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`Ex. 1004, col. 5, line 66 – col. 6, line 7 (emphasis added).
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`Given this expressly limited use of its first authenticator data, Bradford
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`actually teaches away from using such data in a broader way to define the memory
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`location for the second authenticator data, as well as from thereafter “determining if
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`the defined memory location is unoccupied,” and “storing, if the memory location is
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`unoccupied, the biometric signature at the defined memory location.” See In re
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`Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be said to teach away
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`when a person of ordinary skill, upon reading the reference, would be discouraged
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`from following the path set out in the reference, or would be led in a direction
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`divergent from the path that was taken by the applicant”).
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`As for the secondary references upon which it relies, Apple cites to the Foss
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`reference for the teaching identifying during an enrollment process, an account
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`associated with a user by reading account information stored on a magnetic stripe of
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`a card. Petition at 28. Apple does not cite this reference for the limitation defining
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`a memory location “dependent upon the received card information.” See id. at 25-
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`28.
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`Apple also cites to the Yamane reference for “determining storage of a
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`fingerprint at a memory location during an enrollment process is based on the
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`presence or absence of a flag” (Petition at 37), and to modify Bradford such that,
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`“[w]hen the memory location is unoccupied, as determined by the flag in the
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`modified Bradford system, the fingerprint data is then input into and stored in the
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`memory location comprising the second authenticator data field, as taught by
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`Bradford” (id. at 40). Apple does not cite to this reference for the limitation defining
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`a memory location “dependent upon the received card information,” either. See id.
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`at 37-40. Apple, then, is left with the Bradford reference alone purportedly to
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`provide a teaching of this limitation. As discussed in detail above, it does not, and
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`Apple is unlikely to prevail on its single challenge ground. As such, the Board
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`should deny institution.1
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`III. Conclusion
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`For the foregoing reasons, the instant petition for inter partes review should
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`be denied.
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`1 In the unlikely event of institution, CPC will discuss other infirmities with the prior
`art comprising Apple’s single challenge ground.
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`Dated: July 20, 2022
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`IPR2022-00600
`U.S. Patent No. 8,620,039
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`Respectfully submitted,
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`By:
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
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`Counsel for Patent Owner
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`CERTIFICATE UNDER 37 C.F.R. § 42.24(d)
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`The undersigned hereby certifies that the word count for the foregoing
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`Preliminary Patent Owner’s Response totals 1,623 words, which is less than the
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`14,000 words allowed under 37 C.F.R. § 42.24(b)(1).
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`Dated: July 20, 2022
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`By:
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
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`Counsel for Patent Owner
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`IPR2022-00600
`U.S. Patent No. 8,620,039
`CERTIFICATE OF SERVICE
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`I hereby certify that on July 20, 2022, I caused a true and correct copy of the
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`foregoing to be served on the following counsel of record for Petitioner by electronic
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`mail to the following email addresses:
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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
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`By:
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
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`10
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