Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Date: October 13, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD,
`Patent Owner.
`
`IPR2022-00600
`Patent 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 22
`Date: October 13, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD,
`Patent Owner.
`
`IPR2022-00600
`Patent 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00600
`Patent 8,620,039 B2
`
`I. INTRODUCTION
`Apple Inc., (“Apple” or “Petitioner”) filed a Petition requesting inter
`partes review (“IPR”) of claims 1, 2, 19, and 20 of U.S. Patent No.
`8,620,039 B2 (Ex. 1001, “the ’039 patent”). Paper 1 (“Pet”). CPC Patent
`Technologies PTY, Ltd., (“CPC” or “Patent Owner”) filed a Preliminary
`Response to the Petition. Paper 7 (“Prelim. Resp.”).
`On October 17, 2022, we instituted trial for claims 1, 2, 19, and 20 of
`the ’039 patent on all grounds of unpatentability alleged in the Petition.
`Paper 8 (“Decision to Institute” or “Inst. Dec.”). After institution of trial,
`Patent Owner filed a Patent Owner Response. Paper 12 (“PO Resp.).
`Petitioner timely filed a Reply. Paper 13 (“Pet. Reply). Subsequently,
`Patent Owner filed a Sur-Reply to address certain arguments raised in
`Petitioner’s Reply. Paper 15 (“PO Sur-Reply).
`A hearing for this proceeding was held on July 18, 2023. The
`transcript of the hearing has been entered into the record. Paper 21 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has met its
`burden of showing by a preponderance of the evidence that claims 1, 2, 19,
`and 20 are unpatentable.
`A. Real Parties in Interest
`Petitioner states that Apple Inc. is the real party in interest. Pet. 57.
`Patent Owner states that CPC Patent Technologies PTY, Ltd., is the real
`party in interest. Paper 3.
`B. Related Matters
`The parties indicate that the ’039 patent has been asserted against
`Petitioner in CPC Patent Technologies PTY Ltd. v. Apple Inc., Case No.
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`2
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`IPR2022-00600
`Patent 8,620,039 B2
`6:21-cv-00165, in the U.S. District Court for the Western District of Texas.
`Pet. 57; Paper 3.
`Petitioner indicates that it has filed additional petitions for inter partes
`review challenging two other patents held by Patent Owner, IPR2022-00601
`for U.S. Patent No. 9,269,208, and IPR2022-00602 for U.S. Patent No.
`9,665,705. Pet. 57. Final Written Decisions in these IPRs were entered on
`September 27, 2023.
`C. The ’039 Patent (Ex. 1001)
`The ’039 patent, titled “Card Device Security Using Biometrics,”
`describes a biometric card pointer (BCP) system intended to more efficiently
`and securely permit a user to store biometric information during an
`enrollment process, and in future verification processes access their account
`using an identification (ID) card and biometric information such as a
`fingerprint. Ex. 1001, 2:51–3:11.
`The ’039 patent explains that in the enrollment phase “[t]he card
`user’s biometric signature is automatically stored the first time the card user
`uses the verification station in question (this being referred to as the
`enrolment phase).” Id. at 2:62–64. The ’039 patent explains further that
`“[t]he biometric signature is stored at a memory address defined by the
`(‘unique’) card information on the user’s card as read by the card reader of
`the verification station.” Id. at 2:64–67. Following the enrollment phase,
`the ’039 patent describes that
`[a]ll future uses (referred to as uses in the verification phase) of
`the particular verification station by someone submitting the
`aforementioned card requires the card user to submit both the
`card to the card reader and a biometric signature to the biometric
`reader, which is verified against the signature stored at the
`memory address defined by the card information thereby
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`Patent 8,620,039 B2
`determining if the person submitting the card is authorised to do
`so.
`Id. at 3:4–11. 1 For both enrollment and future verification, the use of the ID
`card at a verification station “is identical from the card user’s perspective,
`requiring merely input of the card to the card reader, and provision of the
`biometric signature ([e.g.] thumb print or retinal scan etc.) to the biometric
`reader.” Id. at 3:12–15.
`Figure 4 of the ’039 patent is reproduced below.
`
`
`
`
`1 The words “enrolment,” “authorise,” and “authorisation” are the British
`spellings of “enrollment,” “authorize,” and “authorization.” See, e.g.,
`https://www.merriam-webster.com/dictionary/authorisation, last visited
`Sept. 23, 2022. We will use the American spelling of these words except
`when quoted from the ’039 patent.
`
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`IPR2022-00600
`Patent 8,620,039 B2
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`Figure 4 of the ’039 patent illustrates swipe or smart card 601 including card
`information 605 encompassing fields for card type 602, card range 603, and
`card data 604. The ’039 patent describes that “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.” Id. at 7:31–
`35. Information 605 can be encoded on a magnetic strip on the card, for
`example. Id. at 7:28–29. The ’039 patent explains that for a specific user
`“[i]n an initial enrolment phase, . . . [t]he card data 604 defines the location
`607 in the memory 124 where their unique biometric signature is stored.”
`Id. at 7:43–49. And the ’039 patent explains further that “in later
`verification phases, . . . [t]his signature is compared to the signature stored at
`the memory location 607 in the memory 124, the memory location 607 being
`defined by the card data 604 read from their card 601 by the card reader
`112.” Id. at 7:50–56.
`Figures 6 and 7, reproduced below, depict the differences between
`enrollment process 207 shown in Figure 7 and verification process 205
`shown in Figure 6.
`
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`Patent 8,620,039 B2
`Figure 6 illustrates verification process 205, which occurs after the
`enrollment process, illustrated, below, in Figure 7.
`
`
`Figure 7 of the ’039 patent illustrates enrollment process 207 where the
`system at “step 401 stores the biometric signature received by the step 203 in
`the memory 124 at a memory address defined by the card data 604.” Id. at
`9:64–66 (referring to elements 203 and 124 described in Figure 5).
`A difference between verification process 205 and enrollment process
`207 is that the enrollment process includes step 401, which stores the
`biometric signature “at a memory address defined by the card data 604,”
`whereas in verification process 205 “step 204 reads the contents stored at a
`single memory address defined by the card data 604” and compares the
`stored biometric signature with the input biometric signature. Id. at 9:65–66,
`8:24–26.
`D. Illustrative Claim
`Claims 1 and 19 are independent. Each of claims 2 and 20 depends,
`respectively, from independent claims 1 and 19. Claim 1, including disputed
`
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`Patent 8,620,039 B2
`limitations highlighted in italics, illustrates the claimed subject matter and is
`reproduced below:
`1. [1Pre] A method of enrolling in a biometric card pointer
`system, the method comprising the steps of:
`[1a] receiving card information;
`[1b] receiving the biometric signature;
`[1c] defining, dependent upon the received card
`information, a memory location in a local memory
`external to the card;
`[1d] determining if the defined memory location is
`unoccupied; and
`[1e] storing, if the memory location is unoccupied, the
`biometric signature at the defined memory location.
`Ex. 1001, 12:29–38. Limitations [1a]–[1e] are similarly recited in
`independent claim 19 in the context of “a processor to execute a method of
`enrolling in a biometric card pointer system.” Id. at 15:25–16:11. For
`example, limitation [19a] recites “code for receiving card information.” Id.
`at 16:3.
`E. Prior Art and Asserted Ground
`Petitioner asserts that claims 1, 2, 19, and 20 would have been
`unpatentable based on the following ground:
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`IPR2022-00600
`Patent 8,620,039 B2
`Claim(s)
`Challenged
`1, 2, 19, 20
`
`Ground
`1
`
`Reference(s)/Basis
`Bradford, 3 Foss, 4 and
`Yamane5
`Petitioner relies on the testimony of Andrew Sears, Ph.D. Ex. 1003.
`Patent Owner relies on the testimony of William Easttom, Ph.D. Ex. 2001.
`II. ANALYSIS
`
`35 U.S.C. §2
`
`103(a)
`
`A. Legal Standards
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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 to which said
`subject matter pertains. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 406 (2007). “[W]hen a patent claims a structure already
`known in the prior art that is altered by the mere substitution of one element
`for another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). The question of obviousness is resolved based
`on underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before March
`16, 2013, we refer to the pre-AIA version of the statute.
`3 Ex. 1004, US Patent No. 6,612,928 Bl (Sept. 2, 2003).
`4 Ex. 1005, US Pub. Appl. No. 2005/0127169 A1 (pub. Jun. 16, 2005).
`5 Ex. 1006, US Pub. Appl. No. 2001/0014883 A1 (pub. Aug. 16, 2001).
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`objective evidence of non-obviousness. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). 6
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`Id. at 417. To support this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally
`requires that a person of ordinary skill at the time of the invention “would
`have selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`Accordingly, an obviousness determination generally requires a
`finding “that a person of ordinary skill in the art would have been motivated
`to combine or modify the teachings in the prior art and would have had a
`reasonable expectation of success in doing so.” Univ. of Strathclyde v.
`Clear-Vu Lighting LLC, 17 F.4th 155, 160 (Fed. Cir. 2021) (citing OSI
`Pharms., 939 F.3d at 1382 (quoting Regents of Univ. of Cal. v. Broad Inst.,
`Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018))). “Whether the prior art
`discloses a claim limitation, whether a skilled artisan would have been
`motivated to modify or combine teachings in the prior art, and whether she
`would have had a reasonable expectation of success in doing so are
`
`
`6 The parties do not present evidence or arguments regarding secondary
`considerations.
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`questions of fact.” Strathclyde, 17 F.4th at 160. In determining whether
`there would have been a motivation to combine prior art references to arrive
`at the claimed invention, it is insufficient to simply conclude the
`combination would have been obvious without identifying any reason why a
`person of skill in the art would have made the combination. Metalcraft of
`Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017).
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103(a) is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
`the differences themselves would have been obvious. Consideration of
`differences, like each of the findings set forth in Graham, is but an aid in
`reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421. Applying these general principles, we
`consider the evidence and arguments of the parties.
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
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`Id. Moreover, “the inquiry into whether any ‘differences’ between the
`invention and the prior art would have rendered the invention obvious to a
`skilled artisan necessarily depends on such artisan’s knowledge.”
`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir.
`2020) (citing Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349, 1353
`(Fed. Cir. 2010) (affirming the district court’s grant of summary judgment of
`invalidity in part because the obviousness “analysis requires an assessment
`of the ‘. . . background knowledge possessed by a person having ordinary
`skill in the art’”)).
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd,
`Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`Additionally, the Supreme Court informs us that “[a] person of
`ordinary skill is also a person of ordinary creativity, not an automaton.”
`KSR, 550 U.S. at 421.
`
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`Patent 8,620,039 B2
`In our Institution Decision we determined, in accordance with
`Petitioner’s proposal, that a person of ordinary skill in the art at the time of
`the ’039 patent
`would have had 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 security.
`Additional education or experience might substitute for the
`above requirements.
`Inst. Dec. 9 (quoting Pet. 4). Patent Owner does not dispute the level of
`ordinary skill in the art. PO Resp. 5.
`Because there is no express dispute as to the level of ordinary skill in
`the art, and because Petitioner’s assessment is consistent with the ’039
`patent and the asserted prior art, we maintain our reliance on Petitioner’s
`proposed level of ordinary skill in the art as set forth above.
`C. Claim Construction
`We construe claims using the principles set forth in Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), and related cases.
`37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim
`are generally given their “ordinary and customary meaning,” which is the
`meaning the term would have to a person of ordinary skill at the time of the
`invention, in the context of the entire patent including the specification.
`Phillips, 415 F.3d at 1312–13.
`Dependent upon
`1.
`Petitioner indicates that the parties agreed in the district court
`litigation that “dependent upon,” recited in claim 1 and 19, should be given
`its “[p]lain and ordinary meaning, defined as ‘contingent on or determined
`by.’” Pet. 6 (citing Ex. 1032, 2). Patent Owner agrees, adding that “a
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`memory location in a local memory which corresponds to, but is not
`contingent upon or determined by, the received card information is not
`‘dependent upon’ under Apple’s claim construction.” PO Resp. 7 (emphasis
`added). Patent Owner contends, however, that despite this agreed upon
`meaning, the arguments in the Petition are not consistent with the plain and
`ordinary meaning. Id.
`For purposes of understanding claim 1, given the plain and ordinary
`meaning of “dependent upon,” limitation 1[c] would read:
`[1c] defining, [contingent upon or determined by] the
`received card information, a memory location in a local
`memory external to the card;
`Because neither party disputes the agreed upon meaning of
`“dependent upon,” we will consistently apply the plain and ordinary
`meaning of “dependent upon” as “contingent on or determined by.”
`Biometric card pointer system
`2.
`Petitioner also notes that the District Court construed “biometric card
`pointer system” recited in both claims 1 and 19 “as a ‘[n]onlimiting
`preamble term with no patentable weight.’” Id. (citing Ex. 1033, 1). Neither
`party, on this record, disputes this construction, and therefore, to the extent
`necessary, we rely on the District Court’s construction.
`Defining
`3.
`We note that Patent Owner proposes also, not a specific claim
`construction, but an interpretation that we should understand “defining” as
`meaning “setting” or “establishing.” See PO Resp. 5–8 (Patent Owner
`arguing that “Petitioner repeatedly characterizes ‘defining, dependent upon
`the received card information’ term with respect to Bradford as ‘to find’ or
`‘identifying.’”). Because the parties do not specifically construe the term
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`“defining,” we address this issue in the context of the claim language as a
`whole, and the ’039 specification, in our analysis below.
`D. Ground 1: Claims 1, 2 19, and20 — Alleged Obviousness over
`Bradford (Ex. 1004) in view of Foss (Ex. 1005), and further in
`view of Yamane (Ex. 1006)
`On the complete record now before us, Petitioner has shown by a
`preponderance of the evidence that claims 1, 2, 19, and 20 would have been
`obvious over Bradford, Foss, and Yamane.
`1. Bradford (Ex. 1004)
`Titled “Player Identification using Biometric Data in a Gaming
`Environment,” Bradford relates to player authentication systems and gaming
`machines using biometric data, which “allow a player to quickly and easily
`authenticate documents while remaining at game machines, [and]
`authenticate electronically based transfers into and out of accounts at game
`machines.” Ex. 1004, Abstract, code (57).
`Bradford discloses a gaming authentication system that uses at least
`two authenticators to identify a player, explaining “[t]he first authenticator
`may be one of many types, with a typical first authenticator being a player
`ID card, a voucher with a unique, encoded, and preferably encrypted
`numerical ID on it, a unique alphanumeric sequence, or an RFID tag.” Id. at
`3:6–10. Bradford discloses that “[t]he second authenticator will be based on
`a biometric reading. The present invention may use any biometric reading,
`although those providing reasonably high degrees of uniqueness are clearly
`preferred. It is expected that at the present time, the predominant biometric
`used will be based on fingerprints.” Id. at 3:21–26.
`Bradford further discloses a method for entering biometric data entry
`into a player ID database. Id. at 14:21–22. Bradford explains that “[a]
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`player identification database is also used, where an entry corresponding to a
`player comprises at least one record (typically, exactly one record), and the
`record has fields containing data, information, or pointers.” Id. at 3:28–31.
`Bradford’s Figure 6 is reproduced below.
`
`
`
`Bradford’s Figure 6, titled “Method of Creating a Fingerprint-Based Record
`[] in a Database,” is a flow chart illustrating steps for creating a fingerprint,
`or other biometric data, as an entry in a database record. The process begins
`with a player going to a customer service counter at step 600 and then
`presenting identification and requesting an account at step 602. Id. at 14:23–
`28. At step 603, the player may be provided with a first authenticator, such
`as an ID card or voucher. Id. at 15:16–20. If a player desires training “[t]he
`attendant goes to a game with the present invention installed on it” where the
`player’s biometric information is entered at step 612. Id. at 15:42–58.
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`Depending on whether a player needs training on how to operate a
`game at step 604, the player’s biometric data, e.g., fingerprint data, is input
`to the database at either steps 606–608, or step 612. Once the first and
`second authenticators are stored, the player is enabled at step 618 to be
`subsequently verified and to operate a desired game device. Id. at 16:40–47.
`2. Foss (Ex. 1005)
`Foss is titled “Stored Value Card Account Transfer System” and
`describes various systems and methods for transferring funds between stored
`value card accounts of first and second customers. Ex. 1005, Abstract, code
`(57). Referring to Figure 8, Foss discloses in one embodiment “an
`enrollment process at merchant terminal 704 for enabling a primary account
`holder (i.e., an existing customer 610) to enroll additional new customer(s)
`in the family stored value card program.” Ex. 1005 ¶ 86. Foss’s Figure 8 is
`reproduced below.
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`Foss’s Figure 8 is a flow chart illustrating steps for an existing customer
`having an existing stored value card and account to initiate enrollment of a
`new customer at steps 802–808. Id. ¶¶ 86–90. Foss explains that “[a]t block
`806, merchant terminal 704 identifies the stored value card account
`associated with the existing customer 610. The stored value card account
`may be identified based on the data read from magnetic stripe 710 via card
`reader 706.” Id. ¶ 88.
`Foss describes step 804 as part of a process by which existing
`customer 506 can swipe their card and begin an enrollment process for new
`additional customers, e.g., a family member. Id. ¶ 85. Foss’s Figure 11 is
`reproduced below.
`
`
`Foss’s Figure 11 “illustrates another input screen 1102 which prompts the
`existing customer 610 to swipe the existing stored value card 508.” Id. ¶ 88.
`Foss explains that the new customer’s account is added to the primary
`customer’s account, and, after authentication of the new customer at step
`810, Foss describes that a new stored value card is loaded with some
`monetary value and linked to the existing stored value card account at steps
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`814, 816. Id.; see also id. at ¶ 90 (“At block 814, the existing customer 610
`has the option of loading the new secondary stored value card account . . .
`with funds.”).
`3. Yamane (Ex. 1006)
`Yamane is titled “Portable Recording Medium and Method of Using
`Portable Recording Medium” and discloses, for example, a CD-RW that
`requires identification of an authorized user before a user can access
`software stored on the CD-RW. Ex. 1006, Abstract. Yamane discloses
`specifically a user authentication program implemented as “software for
`performing a process of deciding a proper user on the basis of user
`fingerprint information input from the outside and fingerprint information
`which is registered in advance.” Id. ¶ 33.
`Considering Yamane’s Figure 1, as annotated by the Board and
`reproduced below, Yamane describes user information 60 and fingerprint
`information 70 stored in a protect area 1002-1 (highlighted yellow) of
`rewritable area 1002 of CD-RW 1000. Id. ¶ 39.
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`
`
`Yamane’s Figure 1 illustrates user information 60 including User ID 60-1
`and fingerprint registration presence/absence flag 60-2 (highlighted green).
`Id. ¶ 40. Referring to Figure 2, Yamane explains that
`the user
`[t]he user ID management function 10-1 of
`authentication program 10 decides whether a fingerprint has been
`registered or not with reference to the fingerprint registration
`presence/absence flag 60-2 of the user information 60 (step
`S002). If
`the fingerprint has not been registered, an
`authentication information setting screen for urging a user to
`register a fingerprint is shown to the user (step S003).
`Id. ¶ 52. Yamane’s Figure 2 as annotated by the Board is reproduced below.
`
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`Yamane’s Figure 2 illustrates diagrammatically that following step S001, the
`start-up of CD, step S002 (highlighted green) detects the presence/absence
`of authentication information including presence/absence of fingerprint data
`60-2. Id.
`
`4. Independent Claim 1
`(a) Petitioner’s Arguments
`Petitioner contends that a person of ordinary skill in the art would
`have understood Bradford, Foss, and Yamane in combination to teach all of
`the limitations of claim 1. See Pet. 5, 9.
`i. Limitation [1Pre] – “A method of enrolling in a
`biometric card pointer system, the method
`comprising the steps of:”
`Petitioner argues that even if the preamble is limiting, Bradford
`teaches such a method because Bradford describes enrolling a new user (a
`“player [seeking to use gaming devices] currently without an entry in [a]
`
`20
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`IPR2022-00600
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`player ID database”) in the player ID database, the enrollment including
`“creation of an entry having biometric data in [the] player ID database.”
`Pet. 9–12 (citing Ex. 1004, 3:50–54, 14:21–28, 15:16–24, 15:37–38, 15:48–
`58, 16:5–7, 16:21–32, 16:40–47, 22:25–56, Fig. 6). Petitioner explains that
`completion of Bradford’s enrollment provides the player with “an entry in
`the player ID database corresponding to the player, having a first
`authenticator and a second authenticator useable by the player.” Id. at 12
`(citing Ex. 1004, 16:21–25, 16:40–47).
`Petitioner argues that Bradford performs enrollment in “a biometric
`card pointer system” as claimed because “Bradford describes creating a
`player ID that is accessed using a player ID card” that includes the player’s
`first authenticator, and the player ID (after enrollment) resides in the player
`ID database in which the enrolled players’ entries include records having
`“fields containing data, information, or pointers. The records have fields
`corresponding to a first authenticator and a second authenticator, providing
`authenticator data therein or pointers to authenticator data.” Pet. 9, 12–14
`(citing Ex. 1004, 3:6–23, 3:28–36, 3:50–58, 5:36–54, 6:3–13, 15:16–20,
`16:40–45, Fig. 6; Ex. 1003 ¶¶ 64–69).
`ii. Limitation [1a] – receiving card information.
`According to Petitioner, Bradford describes a magnetic strip card that
`may be inserted and read by a magnetic strip card reader to provide data of a
`“first authenticator” of a player. Pet 14–15 (citing Ex. 1004, 3:9–15, 6:4–6,
`6:13–27, 8:22–31, 8:51–56; Ex. 1003 ¶¶ 70–72). In Bradford, the first
`authenticator is provided to the player during enrollment. Id. at 11–12
`(citing Ex. 1004, 14:25–43, 15:16–24, 15:37–38, 15:48–63, 16:1–5, 16:26–
`32, Fig. 6).
`
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`Petitioner relies in part on Bradford’s Figure 3, reproduced below,
`showing a “General Gaming Device” 300 having “first authenticator
`readers” 304. Id. at 14–15.
`
`
`Bradford’s general gaming device 300 includes, among other things, first
`authentication readers 304 and fingerprint reader 310. Ex. 1003, Fig. 3.
`iii. Limitation [1b] – receiving the biometric
`signature. 7
`As shown above in Figure 3, Bradford describes a fingerprint reader
`310 for receiving a fingerprint “biometric signature.” Pet. 16 (citing
`Ex. 1004, 7:45–47, 8:22–28, 8:56–65, 10:30–40, Fig. 3; Ex. 1003 ¶¶ 64–65,
`73–78). Petitioner relies in part on Bradford’s Figure 3, reproduced below,
`
`
`7 As recited in claim 1, “the biometric signature” does not have antecedent
`basis. For purposes of our Decision, we assume this is incorrect and should
`be understood as “a biometric signature.”
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`illustrating “General Gaming Device” 300 having an “FP Reader (Or Other
`Biometric Device)” 310.”
`
`
`Bradford’s general gaming device 300 includes, among other things, first
`authentication readers 304 and fingerprint reader 310. Ex. 1003, Fig. 3.
`iv. Limitation [1c] – defining, dependent upon the
`received card information, a memory location in a
`local memory external to the card.
`Petitioner argues that Bradford discloses “a memory location, i.e., the
`second authenticator data field storing the second authenticator data
`[(biometric information, such as fingerprint data)], in a database, i.e., the
`player ID database.” Pet. 23–24 (citing Ex. 1004, 6:3–30, 6:49–64, 15:59–
`63, 17:47–51, 17:18–22, 23:36–40). The biometric information is entered
`into Bradford’s player ID database during enrollment—during which the
`two-level authentication system “creates the entry in the player ID database
`corresponding to th[e] player, associating the data corresponding to a first
`
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`and second authentic authenticator with this entry.” Ex. 1004, 16:40–45;
`see Pet. 19–20 (citing Ex. 1004, 3:27–36, 14:21–28, 14:42–43, 15:16–23,
`15:42–16:7, 16:21–26, 16:40–47, 23:36–40, Figs. 3, 6).
`Petitioner argues that Bradford’s first authenticator can be stored on
`“magnetic-strip cards” provided to the player during enrollment, or may be
`“an already existing player ID card.” Pet. 18, 20–21, 24, 26 (citing
`Ex. 1004, 5:30–54, 6:3–13, 6:18–20, 13:23–33, 15:16–20).
`Petitioner acknowledges that
`Bradford indicates the player entry is retrieved during the
`enrollment process because the player’s second authenticator
`data is added to the player entry. Bradford, 15:60–63. Bradford
`does not indicate how the player entry is retrieved at the game
`device during enrollment.
`
`Pet. 30 (citing Ex. 1003 ¶¶ 96–98). Petitioner then turns to Foss, explaining
`that
`
`Foss teaches “an enrollment process…for enabling a primary
`account holder (i.e., an existing customer 610) to enroll
`additional new customer(s) in the family stored value card
`program.” . . . [t]o initiate enrollment, the customer is prompted
`“to swipe the existing stored value card” to “continue the
`enrollment process.” The system “identifies the stored value
`card account associated with the existing customer 610. The
`stored value card account may be identified based on the data
`read from magnetic stripe 710 via card reader 706 . . .”
`
`Id. at 27–28 (quoting Ex. 1005 ¶¶ 86, 88; citing Ex. 1003 ¶ 92) (citations
`omitted). Petitioner argues “[t]hus, Foss teaches, during an enrollment
`process, identifying an account ass
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