Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: October 17, 2022
`
`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
`U.S. Patent No. 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`Entered: October 17, 2022
`
`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
`U.S. Patent No. 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`IPR2022-00600
`Patent 8,620,039 B2
`
`INTRODUCTION
`I.
`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.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” Upon
`consideration of the arguments and evidence presented by Petitioner and
`Patent Owner, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly,
`we institute an inter partes review of the challenged claims.
`Real Parties in Interest
`A.
`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.
`Related Matters
`B.
`The parties indicate that the ’039 patent has been asserted against
`Petitioner in CPC Patent Technologies PTY Ltd. v. Apple Inc., Case No.
`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.
`
`2
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`IPR2022-00600
`Patent 8,620,039 B2
`The ’039 Patent (Ex. 1001)
`C.
`The ’039 patent, titled “Card Device Security Using Biometrics,”
`relates to 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
`determining if the person submitting the card is authorised to do
`so.
`Id. at 3:4–11. 1 For both enrollment and future uses, the use of the ID card at
`a verification station “is identical from the card user’s perspective, requiring
`
`
`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
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`3
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`Patent 8,620,039 B2
`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.
`
`
`
`
`Figure 4, of the ’039 patent, above, 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,
`
`
`Sept. 23, 2022. We will use the American spelling of these words except
`where quoted from the ’039 patent.
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`IPR2022-00600
`Patent 8,620,039 B2
`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.
`
`
`Figure 6, above, illustrates verification process 205, which occurs after the
`enrollment process, illustrated, below, in Figure 7.
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`5
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`Patent 8,620,039 B2
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`
`Figure 7 of the ’039 patent, above, 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).
`Figure 6 illustrates that verification process 205
`is entered from the step 204 in FIG. 5, after which a step 301
`authorises the transaction. This authorisation step 301 indicates
`that the biometric signal received by the biometric reader 102 in
`the step 203 matches the biometric signature previously stored in
`the local database 124 by a previous enrolment process 207.
`Id. at 9:43–48. And, “the step 204 reads the contents stored at a single
`memory address defined by the card data 604 and checks these contents
`against the biometric signature received in the step 203.” Id. at 8:34–37.
`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
`
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`Patent 8,620,039 B2
`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.
`Illustrative Claim
`D.
`Claims 1 and 19 are independent. Each of claims 2 and 20 depend,
`respectively, from independent claims 1 and 19. Claim 1, including disputed
`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.
`Prior Art and Asserted Ground
`E.
`Petitioner asserts that claims 1, 2, 19, and 20 would have been
`unpatentable based on the following ground:
`
`7
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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 also relies on the testimony of Andrew Sears, Ph.D. Sears
`¶¶ 1–138.6
`
`35 U.S.C. §2
`
`103(a)
`
`II. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103 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
`
`
`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).
`6 Sears (Exhibit 1003) is an 89-page declaration from Dr. Sears, including a
`detailed mapping of the disclosures of the three applied references to the
`challenged claims. Dr. Sears currently is a Professor and Dean of the
`College of Information Sciences and Technology at The Pennsylvania State
`University. Sears ¶ 5. Dr. Sears earned a Bachelor of Science degree in
`Computer Science from Rensselaer Polytechnic Institute, and a Ph.D. degree
`from University of Maryland, College Park, also in Computer Science. Id.
`¶ 6. He has held various positions in academia, including serving as the
`Interim Chief Information Security Officer at Penn State. Id. ¶¶ 7, 8. He
`has authored or edited a number of computer-related publications and held
`leadership positions in several computer industry organizations. Id. ¶¶ 10–
`12.
`
`8
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`IPR2022-00600
`Patent 8,620,039 B2
`subject matter pertains. 35 U.S.C. § 103; 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,
`objective evidence of non-obviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Petitioner asserts 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.
`Pet. 4 (citing Sears ¶¶ 31–34). Patent Owner does not address the level of
`ordinary skill in the art. See generally Prelim. Resp.
`On this record, Petitioner’s proposed level of ordinary skill in the art
`is not disputed and is consistent with our review and understanding of the
`technology and descriptions in the ’039 patent and the asserted prior art
`references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`For purposes of this Decision, we rely on Petitioner’s proposed level of
`ordinary skill in the art.
`
`9
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`IPR2022-00600
`Patent 8,620,039 B2
`C. Claim Construction
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe
`the claim “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id. Furthermore, at this stage in the
`proceeding, we expressly construe the claims only to the extent necessary to
`determine whether to institute inter partes review. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`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). Because at this stage of the proceeding
`neither party disputes this meaning of “dependent upon,” we rely on the
`agreed upon construction.
`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 we rely on the
`District Court’s construction.
`
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`Patent 8,620,039 B2
`D. Ground 1: Claims 1, 2, 19, and 20 – Alleged Obviousness over
`Bradford (Ex. 1004), Foss (Ex. 1005), and Yamane (Ex. 1006)
`On this record, Petitioner has established a reasonable likelihood of
`prevailing on its assertion that at least one of the challenged claims would
`have been obvious over Bradford, Foss, and Yamane for the reasons
`explained below.
`Bradford (Ex. 1004)
`1.
`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 the creation of a biometric
`data entry into a player ID database. Id. at 14:21–22. Bradford’s Figure 6 is
`reproduced below.
`
`11
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`Bradford’s Figure 6, above, is a flow chart illustrating steps for creating a
`fingerprint, or other biometric data, as an entry in a database. 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.
`Whether or not 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 step 606 or step 612, leading to enablement and authorization of the
`player to operate the game at step 618. Id. at 16:40–47.
`
`12
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`Patent 8,620,039 B2
`Foss (Ex. 1005)
`2.
`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.
`
`Foss’s Figure 8, above, 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
`
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`account may be identified based on the data read from magnetic stripe 710
`via card reader 706.” Id. ¶ 88. And, after authentication of a 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
`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.”).
`Yamane (Ex. 1006)
`3.
`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, Abstr. 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, reproduced below, Yamane
`describes user information 60 and fingerprint information 70 stored in a
`protect area 1002-1 of rewritable area 1002 of CD-RW 100. Id. ¶ 39.
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`Yamane’s Figure 1, above, illustrates user information 60 including User ID
`60-1 and fingerprint registration presence/absence flag 60-2. Id. ¶ 40.
`Referring to Figure 2, Yamane explains further 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 is reproduced below.
`
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`Yamane’s Figure 2, above, illustrates diagrammatically that following step
`S001, the start-up of CD, step S002 detects the presence/absence of
`authentication information including presence/absence of fingerprint data
`60-2. Id.
`
`Independent Claim 1
`4.
`We consider initially the elements of claim 1.
`Petitioner’s Arguments
`a)
`(1) Preamble – [1Pre] 7 A method of enrolling in
`a biometric card pointer system,
`To the extent the preamble is limiting, Petitioner argues that Bradford
`“teaches a player ID database and ‘a method for the creation of an entry
`
`7 The designation “Pre” refers to the preamble portion of the claim.
`“Whether to treat a preamble as a limitation is a determination ‘resolved
`only on review of the entire[ ] . . . patent to gain an understanding of what
`the inventors actually invented and intended to encompass by the claim.’”
`Shoes by Firebug LLC v. Stride Rite Children's Grp., LLC, 962 F.3d 1362,
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`having biometric data in a player ID database,’ specifically for a ‘player
`currently without an entry in the player ID database.’” Pet. 9 (quoting
`Ex. 1004, 14:21–28, Fig. 6). Petitioner argues that Bradford specifically
`“teaches a method of enrolling in a biometric card pointer system, as shown
`in FIG. 6.” Id. at 11. Figure 6 illustrates that when registering a new player,
`a casino attendant enters the player’s identification information into a player
`ID database at step 602 and provides the player with an ID card, including a
`unique identifier, as a first authenticator at step 603. Ex. 1004, 14:21–15:28.
`According to Petitioner “[t]he casino attendant then accesses a privileged
`screen of a game device in the casino to “enter a player’s biometric
`measurements for entry into the player ID database.” Id. at 11–12 (citing
`Ex. 1004, 15:48–58). Petitioner argues that “[t]he player’s biometric data,
`such as ‘fingerprint data,’ is ‘made part of the player’s ID entry in the player
`ID database.’” Id. at 11 (quoting Ex. 1004, 15:59–63).
`(2) Limitation [1a] – receiving card
`information;
`Petitioner points to Bradford’s disclosure that explains “‘Presents’ is
`defined in this disclosure to mean any action needed by the user of an
`authenticator to have the authenticator read by a reader designed to read
`that authenticator.” Id. at 14 (quoting Ex. 1004, 6:13–27). Petitioner’s
`declarant, Dr. Sears, testifies that a person of ordinary skill in the art “would
`have reasonably understood [Bradford’s] first authentication reader 304 is a
`card reader capable of reading card information from a card, such as
`
`
`1367 (Fed. Cir. 2020) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
`Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Corning Glass Works v.
`Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)).
`
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`Bradford’s player ID card.” Sears ¶ 72. Dr. Sears testifies “that Bradford’s
`‘unique data sequence’ read from the card teaches the first authenticator data
`because the unique data sequence is used as a reference to find the matching
`first authenticator data in the player ID database.”8 Id. ¶ 71 (citing Ex. 1004,
`5:67–6:10).
`
`(3) Limitation [1b] – receiving the biometric
`signature;
`Petitioner argues that “Bradford teaches a fingerprint reader 110, 310
`receiving a fingerprint ‘biometric signature.’” Pet. 16 (citing Ex. 1004,
`7:45–47). Petitioner points specifically to Bradford’s disclosure for this
`limitation, asserting that “Bradford expressly states ‘[f]ingerprint reader’
`means any method and device that may be used to yield ‘fingerprint data’,
`where fingerprint data is information that identifies or characterizes the
`‘fingerprint being used for identification.’” Id. at 17 (citing Ex. 1004, 7:3–
`34).
`
`(4) Limitation [1c] – defining, dependent upon
`the received card information, a memory location
`in a local memory external to the card;
`Petitioner argues that Bradford, in combination with Foss, teaches this
`limitation. Id. at 17. Petitioner argues specifically that “Bradford alone
`teaches this claimed function, except that Bradford’s function is not
`specifically performed during an enrollment process (per Claim 1(Pre)).” Id.
`Petitioner argues that Foss teaches the enrollment process. Id. Petitioner
`asserts that “Bradford teaches a player ID card having a magnetic strip on
`
`
`8 For purposes of this Decision, we understand Bradford’s “first
`authenticator data,” to be essentially the same as the ’039 patent’s “card
`information 605,” including “card data 604.” Compare Ex. 1001, 7:24–35,
`with Ex. 1004, 3:6–20.
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`which is encoded a ‘unique data sequence’ identifying a player and referred
`to as ‘first authenticator data.’” Pet. 18 (citing Ex. 1004, 5:36–54).
`Dr. Sears testifies that “Bradford’s player ID card has a magnetic strip
`encoded with a ‘unique data sequence’ that serves as first authenticator data
`acting as a reference to define a memory location external to the card.”
`Sears ¶ 79. In accord with the District Court’s claim construction, Dr. Sears
`testifies further that “the unique information read from Bradford’s card thus
`defines a location in Bradford’s player ID database memory. The memory
`location is ‘determined by’ the card information, meeting the plain and
`ordinary construction of ‘dependent upon’ above.” Id. ¶ 83 (citing id. ¶ 30
`(setting out understanding of “dependent upon” as “contingent on or
`determined by”)).
`As discussed below, Patent Owner expressly disputes Petitioner’s
`interpretation of Bradford’s disclosure with respect to claim limitation [1c].
`(5) Limitation [1d] – determining if the defined
`memory location is unoccupied
`Petitioner argues that Yamane in combination with Bradford and Foss
`renders claim limitation [1d] obvious. Pet. 33. Commensurate with claim
`limitation [1d], Petitioner points out that the ’039 patent describes “checking
`the status of a flag that ‘can be set to indicate that the memory location in
`question is occupied’ and ‘reset to indicate that the memory location in
`question is no longer occupied.’” Id. (citing Ex. 1001, 9:25–37). Petitioner
`argues that Yamane discloses a method of authorizing a person accessing
`application software on a CD-RW with fingerprint information. Id. at 34
`(citing Ex. 1006 ¶¶ 13–15). Petitioner argues specifically that Yamane
`teaches that
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`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. at 35 (quoting Ex. 1006 ¶ 52). Petitioner argues that a person of ordinary
`skill in the art would have known from Yamane’s teaching that, after
`“matching of the first authenticator data from the player ID card to the first
`authenticator data stored in the player entry, as discussed for Claim 1(c)
`[Bradford’s] system will know to request storage of the second authenticator
`data based on the set flag.” Id. at 37 (citing Sears ¶¶ 104–105, 109).
`Petitioner argues specifically that “Yamane already teaches the purpose of its
`flag is to ‘decide[] whether a fingerprint has been registered or not,’ thus
`indicating the flag determines if fingerprint data has been stored or not.” Id.
`at 38. Based on Yamane’s teaching, Dr. Sears testifies that a person of skill
`in the art would have understood that “Bradford’s system would have
`accomplished such functionality quickly, simply, and with minimal required
`computing resources by implementing and using Yamane’s flag check
`associated with a user’s database entry.” Sears ¶ 109.
`(6) Limitation [1e] – storing, if the memory
`location is unoccupied, the biometric signature at
`the defined memory location
`Following from limitation [1d], Petitioner argues that Yamane in
`combination with Bradford and Foss renders claim limitation [1e] obvious,
`because in addition to the flag occupied/unoccupied indicators “Yamane
`teaches storing fingerprint information in a memory if the memory location
`is unoccupied.” Pet. 39 (citing Sears ¶¶ 113–114). Petitioner argues that in
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`Patent 8,620,039 B2
`Yamane “the extracted encrypted fingerprint data is ‘stored together with the
`user ID in the fingerprint information 70 as the user ID 70-1 and the
`fingerprint data 70-2 (step S0008), so that the fingerprint data registering
`process is completed.’” Id. at 40 (quoting Ex. 1006 ¶ 54). Dr. Sears testifies
`that a person of ordinary skill in the art would have understood, in using
`Yamane’s flag indicators with Bradford’s enrollment system, that “if a
`memory location is unoccupied, as determined by a flag, fingerprint data is
`stored into the memory location that comprises the second authenticator data
`field.” Sears ¶ 114.
`
`(7) Analogous Art and Motivation to Combine
`Bradford, Foss, and Yamane
`At this stage of the proceeding, Petitioner’s assertion that Bradford,
`Foss, and Yamane are analogous art to the ’039 Patent, and Petitioner’s
`evidence and arguments as to motivation to combine, are essentially
`undisputed by Patent Owner. See generally Prelim. Resp. In any event, we
`next address Petitioner’s foundational arguments and evidence as to
`analogous art and motivation to combine to ensure that Petitioner has met its
`burden under 35 U.S.C. §§ 312 (a)(3), 316(e).
`(a) Analogous Art
`Petitioner argues that Bradford, Foss, and Yamane are analogous prior
`art with respect to the ’039 patent. Pet. 6–8. Petitioner contends that
`“Bradford, like the ’039 Patent, discloses an enrollment and verification
`system that uses card information to determine the location of biometric
`information in local memory.” Id. at 7. Petitioner argues that Foss teaches a
`stored value card and an enrollment process for an account holder to enroll
`additional customers in a group stored value card program. Id. at 6 (citing
`Ex. 1005 ¶ 86). Petitioner asserts “Foss, like the ’039 Patent, discloses a
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`method for enrollment of user information that looks up an existing record
`using card information, Foss is in the same field of endeavor and is pertinent
`to a problem to be solved by the claimed invention.” Id. at 7 (citing Sears
`¶ 62).
`Petitioner argues that Yamane is analogous art because in the context
`of a CD-RW, it “teaches a process of registering the fingerprint information
`of a user by determining whether a fingerprint has been registered by
`reference to a fingerprint presence/absence flag 60-2.” Id. at 8 (citing
`Ex. 1006 ¶¶ 49, 52–54, 58–59). According to Petitioner, “Yamane, like the
`’039 Patent, discloses a method of enrolling a user’s biometric using a flag
`to determine if a defined memory location for biometric information is
`occupied.” Id. (citing Sears ¶ 63).
`As to analogous art, we consider two criteria when evaluating whether
`prior art is analogous: (1) whether the art is from the same field of endeavor,
`regardless of the problem addressed, and (2) if the reference is not within the
`field of the inventor’s endeavor, whether the reference still is reasonably
`pertinent to the particular problem with which the inventor is involved. In re
`Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).
`The ’039 patent is directed broadly to “security issues associated with
`use of card devices such as credit cards, smart cards, and wireless card-
`equivalents such as wireless transmitting fobs.” Ex. 1001, 1:14–16. More
`specifically, the ’039 patent explains that its disclosure addresses “problems
`relating to secure access and/or secure processes, by automatically storing a
`card user’s biometric signature in a local memory in a verification station
`comprising a card reader, [and] a biometric signature reader.” Id. at 2:53–
`57. Based on this, a reasonable field of endeavor involves enrollment and
`user verification systems including card devices and biometric signatures.
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`Bradford discloses using a player identification card in a gaming
`environment as a first authenticator, and providing a biometric reading such
`as a fingerprint as a second authentic
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