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’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`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’S REQUEST FOR DIRECTOR REVIEW
`
`
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`
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`Pursuant to the Revised Interim Rules Governing the Director Review Process
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`(Sept. 18, 2023), Patent Owner respectfully requests that the Commissioner review
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`the Final Written Decision (“FWD”) finding all challenged claims of U.S. Patent
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`No. 8,620,039 (“the ‘039 Patent”) invalid. The issue warranting such review is
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`whether the Panel ignored its own construction of the challenged claims in finding
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`such claims obvious in light of the identified art.
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`
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`Representative claim 1 of the ‘039 Patent reads:
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`A method of enrolling in a biometric card pointer system, the method
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`comprising the steps of:
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`receiving card information;
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`receiving the biometric signature;
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`defining, dependent upon the received card information, a memory location
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`in a local memory external to the card;
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`determining if the defined memory location is unoccupied; and
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`storing, if the memory location is unoccupied, the biometric signature at the
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`defined memory location.
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`Ex. 1001, claim 1 (emphasis added).
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`The information flow during an enrollment process set out in that claim is
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`graphically depicted in Figure 5 of the ‘039 Patent:
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`1
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`Ex. 1001, Fig. 5
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`As is clear from this figure and the accompanying text, as well as the claim
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`language itself, biometric card information is processed first (step 202), a biometric
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`signature is received next (step 203), and the enrollment process occurs thereafter,
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`using a memory location that has been identified as being “empty” (steps 206 and
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`207). Ex. 1001, col. 8, lines 22-60. See also FWD at 3-4. As such, the Panel made
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`clear that, “in the context of claim 1 and ‘a method of enrolling,’ is that during an
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`enrollment process, the claimed ‘biometric signature,’ e.g., a fingerprint, is not yet
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`stored in the memory and no memory location or address has been ‘set’ or
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`2
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`‘established’ for the fingerprint.”1 FWD 30. See also id. at 36 (“[o]verall, in terms
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`of ‘defining’. . . we understand that during an enrollment process, the claimed
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`‘biometric signature,’ e.g., a fingerprint, is not yet stored in the memory, and no
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`memory location or address has been ‘defined,’ as in ‘set’ or ‘established,’ in the
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`memory for storing the fingerprint, until card information is received”).
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`The Panel recognized that “Petitioner’s expert, Dr. Sears, ‘testif[ied] that
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`Bradford teaches a process in which the steps are reversed - a memory location is
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`defined before any card information is received.’” FWD at 45, quoting Sur-Reply
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`at 3 (emphasis added). The Panel does not take issue with Patent Owner’s
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`characterization of Dr. Sears’ testimony on this point. Rather, it curiously states that
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`such testimony does not conflict with claim 1, “as the creation of a player account
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`. . . prior to receiving the card information does not preclude subsequently
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`identifying a memory location . . . and establishing that memory location as the
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`location where new biometric data, e.g., a player’s fingerprint, is going to be stored.”
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`FWD at 45.
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`And that brought the Panel to the Foss reference, which purportedly “teaches
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`how, i.e., using card data to define, that is—to establish or set a memory location,
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`1 The Panel construed “defining” in the challenged claims to mean “sets” or
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`“establishes.” FWD at 39.
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`3
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`e.g., the player’s user account, for storage of the biometric information in a local
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`memory.” FWD at 46. The following, in fact, is the entirety of the Petition’s
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`substantive discussion regarding the Foss reference in the context of the “defining”
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`limitation:
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`Foss teaches a system and method for transferring funds between stored value
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`card accounts. Foss teaches ‘an enrollment process…for enabling a primary
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`account holder (i.e., an existing customer 610) to enroll additional new
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`customer(s) in the family stored value card program.’ Thus, in this
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`embodiment, an account already exists, and the customer is ‘initiat[ing] an
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`enrollment process.’ To initiate enrollment, the customer is prompted ‘to
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`swipe the existing stored value card’ to ‘continue the enrollment process.’
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`The system ‘identifies the stored value card account associated with the
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`existing customer 610. The stored value card account may be identified based
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`on the data read from magnetic stripe 710 via card reader 706.’ Thus, Foss
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`teaches, during an enrollment process, identifying an account associated with
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`a user by reading account information stored on a magnetic stripe of a card.
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`Petition at 27-28 (emphasis in original) (internal citations omitted).
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`
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`Patent Owner addressed this discussion as follows – “[t]he portions of Foss
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`quoted [in the Petition] describe ‘enabling a primary account holder (i.e. an existing
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`customer 610) to enroll additional new customer(s) in the family stored value
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`4
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`program’ and that initiating enrollment required the existing customer ‘to swipe the
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`existing stored value card’ in order to ‘continue the enrollment process’ for
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`‘additional new customer(s).’” POR at 10 (emphasis in original). As Patent Owner
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`explained, the details in Foss relied upon by the Petitioner “relate[] to the family
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`card, i.e., adding additional users to an existing family card account as described
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`above.” Id. at 11 (emphasis added).
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`The Panel thus relied upon a teaching from Foss where one can add biometric
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`information to an already defined and occupied memory location, which runs
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`counter to the Panel’s construction of claim 1, wherein a fingerprint is not yet stored
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`in the memory, nor is a memory location for such fingerprint defined, “until card
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`information is received.” See FWD at 36. Foss may teach using a card to identify
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`a memory location where existing biometric information is already stored in order
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`to store additional biometric information there (the “family stored value program”).
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`That reference, however, does not teach using a card to “definite,” “set,” or
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`“establish” the memory location where such additional information is to be stored –
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`that location already having been defined by the already stored biometric
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`information.
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`Should “defining” in claim 1 be construed to include simply identifying where
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`biometric data is already stored, that construction would certainly be inconsistent
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`with that portion of the claim calling for storing the biometric signature at the
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`5
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`“defined location” only “if the memory location is unoccupied” (emphasis added).
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`As explained above, Foss teaches storing additional biometric information in a
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`memory location where biometric information is already stored, a point that the
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`Panel simply ignores. In short, the combination of Bradford and Foss do not teach
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`the “defining” limitation as the Panel construed it. Only if the Panel improperly
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`ignores that construction can one find correspondents to all of the challenged claim
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`limitations in that combination.
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`On a final note, and related to claim construction, the Panel professed
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`confusion over Patent Owner’s “moving target” construction of “defining.” FWD
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`at 33. The example the Panel provides, however, belie the “moving target” narrative:
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`Patent Owner argues that it is something more than ‘pointing to’ or ‘finding,’
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`and perhaps means ‘creating.’ See PO Resp. 9 (Patent Owner arguing that
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`Bradford, notably, does not teach utilizing the first authenticator to create a
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`player ID entry’).
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`FWD at 33 (emphasis added).
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`Obviously, the quoted portion of the Patent Owner Response pertains to
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`creating a player identification entry, rather than defining the memory location in
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`which that entry is to be stored, once created. Any confusion is solely attributable
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`to the mismatch between the Panel’s own construction of “defining” and the
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`teachings of the Bradford-Foss reference combination.
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`6
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`For the third time in about as many weeks, Patent Owner has been forced to
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`seek Director intervention regarding a panel erroneously decision finding for the
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`same Petitioner. In each instance, the infirmities in the final written decisions are
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`palpable. In the instant proceeding, the disconnect between claim construction and
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`claim coverage is marked, and warrants Director review, and reversal, of the FWD.
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`Dated: November 3, 2023
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`Respectfully submitted by
`K&L GATES LLP,
`
`By: /Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`Darlene.Ghavimi@klgates.com
`(512) 482-6919
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`
`7
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`
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that on November 3, 2023, a true and correct
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`copy of the foregoing Patent Owner’s Request for Director Review was submitted
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`in the Patent Trial and Appeal Case Tracking System (P-TACTS), and sent by
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`electronic mail to the following:
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`Director
`Email: Director_PTABDecision_Review@uspto.gov
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`Counsel for Petitioner:
`Jennifer C. Bailey
`Adam P. Seitz
`Email: Jennifer.Bailey@eriseip.com
`Email: Adam.Seitz@eriseip.com
`Email: PTAB@eriseip.com
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`
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`
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`
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`By: /Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`Darlene.Ghavimi@klgates.com
`(512) 482-6919
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`
`8
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