Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: September 28, 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.
`
`IPR2022-00601
`Patent 9,269,208 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
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`IPR2022-00601
`Patent 9,269,208 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner” or “Apple”) filed a Petition for inter partes
`review of claims 1, 3–7, 9–11, and 13 (collectively, the “challenged claims”)
`of U.S. Patent No. 9,269,208 B2 (Ex. 1001, “the ’208 patent”). Paper 1
`(“Pet.”). CPC Patent Technologies PTY, Ltd. (“Patent Owner” or “CPC”)
`timely filed a Preliminary Response to the Petition. Paper 7 (“Prelim.
`Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper
`8 (“Prelim. Reply”)) addressing the issue of discretionary denial raised in the
`Preliminary Response and Patent Owner filed a Prelim. Sur-Reply (Paper 9
`(“Prelim. Sur-Reply”)).
`We have jurisdiction under 35 U.S.C. § 314. Under § 314, 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.” 35 U.S.C. § 314(a). The Board
`determines whether to institute a trial on behalf of the Director. 37 C.F.R.
`§ 42.4(a).
`Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.”).
`For the reasons set forth below, we determine that Petitioner has
`demonstrated that there is a reasonable likelihood that at least one of the
`challenged claims is unpatentable. Accordingly, we institute an inter partes
`review of all challenged claims and on all grounds asserted in the Petition.
`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating
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`that a decision to institute is “a simple yes-or-no institution choice respecting
`a petition, embracing all challenges included in the petition”).
`Real Parties-in-Interest
`B.
`Apple identifies itself as the sole real party-in-interest. Pet. 72.
`CPC also identifies itself as the sole real party-in-interest. Paper 4, 2.
`C. Related Matters
`Petitioner and Patent Owner each identify the following two district
`court proceedings as related matters: (1) CPC Patent Technologies Pty Ltd.
`v. Apple Inc., Case No. 6:21-cv-00165-ADA (W.D. Tex.); and (2) CPC
`Patent Technologies Pty Ltd. v. HMD Global Oy, Case No. 6:21-cv-00166-
`ADA (W.D. Tex.) (the “HMD Litigation”). Pet. 72; Paper 4, 2–3.
`The first listed case, between the same parties involved in this inter
`partes review proceeding, however, has been transferred to the Northern
`District of California. See In re Apple Inc., 2022 WL 1196768 (Fed. Cir.
`Apr. 22, 2022); see also Ex. 3002 (Text Order granting Motion to Change
`Venue). The case is now styled CPC Patent Technologies Pty Ltd. v. Apple
`Inc., No. 5:22-cv-02553 (N.D. Cal.). See Ex. 3003 (PACER Docket for the
`transferred case); Prelim. Resp. 1, fn 1 (Patent Owner acknowledging the
`transfer from the Western District of Texas to the Northern District of
`California). Also, the ’208 patent is no longer involved in this case. Patent
`Owner states it “dismissed its infringement claim for the '208 Patent in the
`district court action.” Prelim. Resp. 1.
`Petitioner and Patent Owner also each identify the following two
`pending inter partes review proceedings as related matters: (1) IPR2022-
`00600, challenging claims in Patent 8,620,039; and (2) IPR2022-00602,
`challenging claims in Patent 9,665,705, which is based on an a continuation
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`of the application that matured into the ’208 patent in the proceeding before
`us. See Ex. 3001, code (63).
`D. The ’208 Patent
`The ’208 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1001, Abstr. The system uses a database of
`“biometric signatures” (id.), such as a fingerprint (Ex. 1001, 1:29–30) for
`determining authorized access.
`Figure 2 from the ’208 patent is reproduced below.
`
`
`
`Figure 2 is a functional block diagram of an arrangement for
`providing secure access according to the system disclosed in the ’208 patent.
`Ex. 1001, 5:15–16.
`User 101 makes a request to code entry module 103. Code entry
`module 103 includes biometric sensor 121. Id. at 5:52–53. If biometric
`sensor 121 is a fingerprint sensor, for example, then the request “typically
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`takes the form of a thumb press” on a sensor panel (not shown) on code
`entry module 103. Id. at 5:56–59. Code entry module 103 then
`“interrogates” an authorized user identity database 105, which contains
`“biometric signatures” for authorized users, to determine if user 101 is an
`authorized user. Id. at 5:60–65. If user 101 is an authorized user, code entry
`module 103 sends a signal to “controller/transmitter” 107. Id. at 5:65–67.
`The ’208 patent also discloses that code entry module 103 may be
`activated by providing a succession of finger presses to biometric sensor 121
`included in module 103. Id. at 10:45–47. If these successive presses are of
`the appropriate duration, the appropriate quantity, and are input within a
`predetermined time, controller 107 accepts the presses as potential control
`information and checks the input information against a stored set of legal
`control signals. Id. at 10:47–67.
`If user 101 is an authorized user based on the inputs to code entry
`module 103, controller/transmitter 107 then sends “an access signal,” based
`on a “rolling code,” to controller 109. Ex. 1001, 6:1–5. According to the
`written description, “[t]he rolling code protocol offers non-replay encrypted
`communication.” Id. at 6:5–6. Other secure codes, such as “the
`Bluetooth™ protocol, or the Wi Fi™ protocols” also can be used.
`Id. at 6:28–34.
`If controller 109 determines that the rolling code received is
`“legitimate,” then controller 109 sends a command to “controlled item 111,”
`which, for example “can be a door locking mechanism on a secure door, or
`an electronic key circuit in a personal computer” that is to be accessed by
`user 101. Id. at 6:7–16.
`Code entry module 103 also incorporates at least one mechanism for
`providing feedback to user 101. Id. at 6:20–21. This mechanism can, for
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`example, take the form of “one or more Light Emitting Diodes (LEDs) 122,”
`and/or audio transducer 124, which provide visual or audio feedback to the
`user. Id. at 6:22–27.
`In Figure 2, “sub-system 116,” shown on the left of vertical dashed
`line 119, communicates with “sub-system 117,” shown on the right of
`dashed line 119, “via the wireless communication channel” used by access
`signal 108 between controller/transmitter 107 and controller/receiver 109.
`Id. at 6:62–65. As disclosed in the ’208 patent, “[a]lthough typically the
`communication channel uses a wireless transmission medium, there are
`instances where the channel used by the access signal 108 can use a wired
`medium.” Id. at 7:3–8.
`
`E. Illustrative Claim
`Among the challenged claims, claims 1, 9, and 10 are independent
`claims. Independent claim 1 is directed to a “system for providing secure
`access to a controlled item.” Ex. 1001, 15:42–16:3. Independent claim 9 is
`directed to a “transmitter sub-system for operating in a system for providing
`secure access to a controlled item.” Id. at 16:64–17:18. Independent claim
`10 is directed to a “method for providing secure access to a controlled item.”
`Id. at 17:19–18:13.
`Independent claim 1 is illustrative and is reproduced below.
`1. A system for providing secure access to a controlled
`item, the system comprising:
`a database of biometric signatures;
`a transmitter sub-system comprising:
` a biometric sensor for receiving a biometric signal;
` means for matching the biometric signal against
`members of the database of biometric signatures to
`thereby output an accessibility attribute; and
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` means for emitting a secure access signal conveying
`information dependent upon
`said accessibility
`attribute; and
`a receiver sub-system comprising:
` means for receiving the transmitted secure access
`signal; and
` means for providing conditional access to the
`controlled item dependent upon said information,
`wherein the transmitter sub-system further comprises
`means for populating the data base of biometric signatures, the
`population means comprising:
` means for receiving a series of entries of the biometric
`signal, said series being characterised according to at
`least one of the number of said entries and a duration of
`each said entry;
` means for mapping said series into an instruction; and
` means for populating the data base according to the
`instruction,
`wherein the controlled item is one of: a locking
`mechanism of a physical access structure or an electronic lock on
`an electronic computing device.
`Ex. 1001, 15:42–16:3.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
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`Patent 9,269,208 B2
`Claim(s) Challenged
`1, 3–7, 9–11, 13
`
`35 U.S.C. §1
`103(a)
`
`Reference(s)/Basis
`Mathiassen,2 McKeeth,3
`Anderson4
`Petitioner also relies on the declaration testimony of Andrew Sears,
`Ph.D. See Ex. 1003.5
`
`II. ANALYSIS
`A. Legal Standards
`Section 103 forbids issuance of a patent when “the differences
`between the subject matter sought to be patented 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`
`1 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.
`2 Mathiassen et al, US 2004/0123113 A1, published June 24, 2004
`(Ex. 1004, “Mathiassen”).
`3 McKeeth, US 6,766,456 B1, issued July 20, 2004 (Ex. 1005, “McKeeth”).
`4 Anderson,US 6,509,847 B1, issued Jan. 21, 2003 (Ex. 1006, “Anderson”).
`5 Exhibit 1003 is a 238 page declaration from Dr. Sears, including its
`Appendix A, which is 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. Ex. 1003 ¶ 5. Dr. Sears earned a
`Bachelor of Science degree in Computer Science, and a Ph.D. degree, 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.
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`(2007). The question of obviousness is resolved on the basis of 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 available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” 383 U.S. at 18.
`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.
`
`
`6 Patent Owner does not direct us to any objective evidence of non-
`obviousness in its Preliminary Response.
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`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. 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 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
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`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id.
`
`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. 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.
`Petitioner asserts that a person of ordinary skill in the art 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 experience in
`the field of human-machine interfaces and device access security.” Pet. 3
`(citing Ex. 1003 ¶¶ 35–38). Petitioner also states that “[a]dditional
`education or experience may substitute for the above requirements.” Id.
`Patent Owner does not propose a level of ordinary skill, nor does
`Patent Owner comment on Petitioner’s proposed level of ordinary skill.
`See Prelim Resp.; Prelim Sur-reply.
`For purposes of this Decision, based on the prior art, the
`sophistication of the technology at issue, and Dr. Sears’ Declaration
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`testimony, we adopt Petitioner’s undisputed definition of the level of
`ordinary skill.
`
`C. Claim Construction
`We construe each 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) (2021). Under this standard, claim terms
`are generally given their ordinary and customary meaning as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have
`frequently stated that the words of a claim ‘are generally given their ordinary
`and customary meaning.’” (citations omitted)).
`The challenged claims make extensive use of “means-plus-function”
`claiming. See 35 U.S.C. § 112, ¶ 6 (we cite to the pre-AIA version of the
`statute applicable to the challenged claims). Means-plus-function claiming
`occurs when a claim term is drafted in a manner that invokes 35 U.S.C.
`§ 112, ¶ 6, which states:
`An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without
`the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and
`equivalents thereof.
`See 35 U.S.C. § 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1347 (Fed. Cir. 2015) (en banc).
`Independent claim 1, for example, includes numerous means-plus-
`function clauses: See, e.g., Ex. 1001, 15:47–52, 54–67. Independent claim
`9 also uses numerous means-plus-function clauses. Id. at 17:1–15. On the
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`record before us, we have not been directed to any dispute between the
`parties that § 112, ¶ 6 applies to numerous clauses in the challenged claims.
`Where claim language may be construed according to 35 U.S.C.
`§ 112(f) (or its predecessor, § 112, ¶ 6), a petitioner must provide a
`construction that includes both the claimed function and the specific portions
`of the specification that describe the structure, material, or acts
`corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3).
`In accordance with these requirements, Petitioner provides specific
`constructions for all the means-plus-function clauses in the challenged
`claims. Pet. 6–8. Petitioner asserts its proposed constructions are consistent
`with constructions made by the district court in the related litigation between
`the parties (see Ex. 1077), constructions agreed to by the parties in the
`related litigation (see Ex. 1079), or constructions proposed by Patent Owner
`in the related litigation (see Ex. 1073). 7
`Petitioner also proposes constructions for the claim terms “database,”
`“conditional access,” “biometric signal,” and “accessibility attribute.”
`Pet. 9. Petitioner asserts the proposed constructions are either agreed to by
`the parties (see Ex. 1079) or made by the district court (see Ex. 1077).
`Patent Owner does not address claim constructions in its Preliminary
`Response or Preliminary Sur-reply.
`Based on the record before us, we adopt, for purposes of this
`Decision, Petitioner’s unopposed proposed claim constructions. “[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean
`
`
`7 The cited exhibits are from the case prior to its transfer from the Western
`District of Texas to the Northern District of California.
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`Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`This initial claim construction determination does not preclude the
`parties from arguing their proposed constructions of the claims during trial.
`Indeed, the parties are hereby given notice that claim construction, in
`general, is an issue to be addressed at trial. Claim construction will be
`determined at the close of all the evidence and after any hearing. The parties
`are expected to assert all their claim construction arguments and evidence in
`the Petition, Patent Owner’s Response, or otherwise during trial, as
`permitted by our rules.
`We now turn to the merits of Petitioner’s asserted Grounds of
`unpatentability.
`
`D. Ground 1
`Claims 1, 3–7, 9–11, 13
`Based on Mathiassen, McKeeth, and Anderson
`1. Mathiassen (Ex. 1004)
`Rather than using passwords or “tokens,” such as an entry card,
`Mathiassen discloses a portable fob-type fingerprint sensor to access secured
`items, such as vehicles, computers, safes, medicine cabinets, weapons
`cabinets, and vehicles. Ex. 1004 ¶¶ 1–4, 16–18, 109–113.
`Figure 8 from Mathiassen is reproduced below.
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`
`Figure 8 is a schematic illustration of a “user input device” providing
`access to a vehicle door. As shown in Figure 8, portable device 20 contains
`fingerprint sensor 5 coupled to a miniature printed circuit board 21 on which
`is mounted integrated circuit (“IC”) 1. Ex. 1004 ¶ 147. Thus, remote
`control 20 becomes a biometric sensor. Id. ¶ 5. Remote biometric control
`20 includes battery 25 as a power supply. Ex. 1004 ¶ 147. Battery 25 is
`connected to printed circuit board (“PCB”) 21 by wires. Id.
`Remote biometric control 20 also is equipped with wireless 2-way
`transceiver 27. All the active components are connected to integrated circuit
`1 by cables 23 through printed circuit board 21. Id..
`Ignition control device 15 (see Fig. 6) is mounted inside the car on
`gear stick 71 or on steering wheel 72. Id. ¶ 148. Remote control 20 and
`embedded ignition control 15 are both connected to a central computer (not
`shown) in the car. Id. ¶ 149. Remote control 20 is connected to the central
`computer by 2-way wireless transceiver 27, while ignition control 15 is
`hard-wired to the central computer. Id.
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`
`2. McKeeth (Ex. 1005)
`McKeeth discloses a method and system for authenticating a user to
`access a computer system. Ex. 1005, Abstr.
`McKeeth summarizes the problems with current systems for accessing
`computers, such as using a private identification code or password
`(Ex. 1005, 1:14–30),8 or a machine readable card (id. at 1:31–36). McKeeth
`also notes that “some computer makers considered using the user’s
`fingerprint to authenticate and grant access to the computer system.”
`Id. at 1:36–38. McKeeth recognized, however, that even using fingerprints
`was not without problems because “a sophisticated computer hacker may be
`able to copy the user’s fingerprint and provide a simulated signal to the
`computer system to obtain access.” Id. at 1:51–54.
`The method and system disclosed in McKeeth provide for one or
`more of various types of user inputs to be used, alone or in combination, for
`authentication. These various inputs can be a password, a unique series of
`clicks of a mouse, a unique geometric pattern created by the user (see Figs.
`3A–3D (illustrating a simple triangle, rectangle, line, or circle drawn by the
`user), an audio sensor (for voice recognition), or an optical scanner for
`fingerprint, retina scans, or other biometric inputs. Ex. 1005, 2:2:53–3:12.
`Figure 1 from McKeeth is reproduced below.
`
`
`8 Citations are to column:line of McKeeth.
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`
`Figure 1 from McKeeth is a block diagram showing one version of a
`the method and system for authenticating the identity of a user disclosed in
`McKeeth. Ex. 1005, 2:36–37. As shown in Figure 1, computer system 100
`includes user interface 110 that is operationally connected to process circuit
`120. Id. at 2:55–57. User interface 110 may be any input device that is used
`to enter or communicate information to computer system 100, such as a
`keyboard, mouse, trackball, pointer, touch-screen, remote terminal, audio
`sensor, optical scanner, telephone, or any similar user interface. Id. at 2:57–
`61.
`
`Process circuit 120 is configured to receive input signals from user
`interface 110. The process circuit is operationally connected with timer 130
`that measures time duration between the various input signals. Ex. 1005,
`3:36–38. If, for example, the user performs a fingerprint scan and/or pattern
`within the designated time, process circuit 120 communicates the input
`signals to compare circuit 150 for authentication. Id. at 3:52–55. Compare
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`circuit 150 is operationally coupled to memory 140, which stores a list of
`legitimate user identifications (ID's) with respective passwords, fingerprint,
`pattern, or any other type of security information for recognition by the
`computer system. Id. at 3:55–60. If there is a match between the user
`inputs, within the designated time, and stored security information, the
`compare circuit 150 issues a “pass” signal to computer system 100.
`Id. at 65–67.
`
`3. Anderson Ex. (1006)
`Anderson also discloses a system and method for authenticating an
`authorized user to access a secured device. Anderson’s disclosed system
`inputs an access code “via temporal variations in the amount of pressure
`applied to a touch interface.” Ex. 1006, Abstr.
`Anderson’s method of inputting an access code uses digitizer pad 120
`as a touch interface, which may include an optical scanner or thermal sensor
`for collecting an image of the user’s fingerprint. Ex. 1006, 5:43–44, 7:4–7.
`The user enters the access code as a series of pressure pulses having varying
`durations. Id. at 6:45–47. This fingerprint access code is then compared
`with a stored code template to determine whether they match. If they do,
`access is permitted. Id. at 6:48–54.
`Anderson discloses a system where the touch interface may sense only
`“temporal applications of pressure,” relying on timing of the pressure
`applications for entry of the access code. Ex. 1006, 7:28–30; Fig. 4A.
`Alternately, as shown in FIG. 4B, the touch interface may sense both
`temporal applications of pressure and variations in pressure magnitude or
`intensity. Id. at 7:34–37. Thus, the access code would be entered as a series
`of alternating short and long pressure applications that vary both in duration
`and magnitude. Id. at 7:37–39.
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`IPR2022-00601
`Patent 9,269,208 B2
`Annotated Figures 4A from Anderson is reproduced below.
`
`Figure 4A from Anderson is a diagram illustrating entry of an access
`code via temporal pressure variation. Ex. 1006, 2:65–67. The annotations
`are provided by Dr. Sears in his declaration testimony. Ex. 1003 ¶ 100. As
`explained by Dr. Sears, in Figure 4A, “the height of each bar the same
`because the magnitude or intensity of the finger pressure press is not
`detected. However, at least some of the presses have a different duration
`than other presses, as represented by the width of each bar.” Id.
`Annotated Figure 4B from Anderson is reproduced below.
`
`Figure 4B from Anderson is a diagram illustrating entry of an access
`code via temporal pressure variation. Ex. 1006, 2:65–67. The annotations
`are provided by Dr. Sears in his declaration testimony. Ex. 1003 ¶ 101. As
`explained by Dr. Sears, Figure 4B, “illustrates variations in both the amount
`of pressure applied using the height of each bar and the duration of the
`applied pressure using the width of each bar.” Id.
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`IPR2022-00601
`Patent 9,269,208 B2
`4. Analysis of Independent Claim 1
`Petitioner provides a clause-by-clause analysis of independent claim
`1, identifying where in each of the cited references, Mathiassen, McKeeth,
`or Anderson, the claimed element is disclosed, and why it would have been
`obvious to a person of ordinary skill to combine the various disclosed
`elements with a reasonable expectation of success. See Petition 50–56.
`Throughout its analysis, Petitioner cites the Declaration testimony
`(Ex. 1003) of Dr. Sears for evidentiary support.9
`Petitioner also provides a “Claims Listing Appendix” where Petitioner
`labels each clause for ease of reference. Pet. 74–77. For independent claim
`1, the clauses are listed at page 74 of the Petition, listing the clauses as
`“Claim 1 (Pre)”10 through “Claim 1(e).” Id. at 74. For ease of reference and
`consistency, we will refer to Petitioner’s labeling convention, as did Patent
`Owner. See, e.g., Prelim. Resp. 14, fn 7 (referring to elements “1(d1), 3(a),
`9(d1) & 10(a2)” as the “Duration Limitation.”
`Patent Owner does not address specifically the merits of Petitioner’s
`patentability challenge. See Prelim. Resp. 3 (“The case for discretionary
`denial of the instant Petition is so clear that Patent Owner has determined not
`
`9 Petitioner cites this testimony as “Dec.” Pet. 3, fn 1. We will cite it, as we
`do all other evidence, by reference to its Exhibit number, which is Exhibit
`1003.
`10 We understand the designation “Pre” to refer 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, 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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`Patent 9,269,208 B2
`to burden the Board with a full discussion of the merits of the Petition in this
`Preliminary Response.”); id. fn 3 (“Patent Owner will address the merits of
`the Petition in the unlikely event that the Board institutes inter partes
`review.”). We discuss Patent Owner’s arguments for a discretionary denial
`under 35 U.S.C. § 314(a) (see Prelim. Resp. 3–19) in Section III of this
`Decision.
`Here, however, in our consideration of the merits of Petitioner’s case,
`we will note and consider Patent Owner’s two references to the merits in its
`arguments that, in Patent Owner’s view, the merits “do not identify any
`compelling factor requiring institution,” which is part of Patent Owner’s
`arguments for a discretionary denial of the Petition. See Prelim. Resp. 13–
`18 (arguing the asserted references do not disclose the “Duration Limitation”
`(id. at 13) or the “Under Which Conditions” requirement (id. at 17), and that
`discretionary denial is warranted because the merits are not “compelling.”).
`a) Preamble
`“A system for providing secure access to a controlled item.”
`Petitioner asserts that “[t]o the extent the preamble is limiting,
`Mathiassen teaches a system for providing secure access to a controlled
`item.” Pet. 50 (citi