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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
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`_____________________
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`CASE: IPR2022-00601
`U.S. PATENT NO. 9,269,208
`_____________________
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`PATENT OWNER’S NOTICE OF APPEAL
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Notice is hereby given, pursuant to 37 C.F.R. §§ 90.2(a), 90.3, and 35 U.S.C.
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`§§ 141 and 142, that Patent Owner CPC Patent Technologies PTY Ltd. (“Patent
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`Owner”) appeals to the United States Court of Appeals for the Federal Circuit from
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`the Final Written Decision of the Patent Trial and Appeal Board in IPR2022-00601,
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`entered on September 27, 2023 (Paper 31), and from all underlying orders, decisions,
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`rulings, and opinions. A copy of the Final Written Decision is attached hereto as
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`Exhibit A.
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`This notice is timely because Patent Owner filed a Request for Director
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`Review, which was decided on November 6, 2023 (Paper 33) (attached hereto as
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`Exhibit B). See 37 C.F.R. § 90.3(b)(1).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner states that the
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`issues on appeal include, but are not limited to, the Board’s determination that the
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`challenged claims of U.S. Patent No. 9,269,208 are unpatentable, and any related
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`issues, findings, or determinations, leading thereto or underlying that decision.
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`Patent Owner is filing one copy of this Notice of Appeal with the Director of
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`the United States Patent and Trademark Office, and a copy of this Notice of Appeal
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`is being filed electronically with the Board. In addition, a copy of this Notice of
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`Appeal is being electronically filed with the United States Court of Appeals for the
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`Federal Circuit, along with the required docketing fee.
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Respectfully submitted,
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
`(512) 482-6919
`Darlene.Ghavimi@klgates.com
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`Counsel for Patent Owner
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`Dated: December 18, 2023
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 90.2(a)(1), on December 18, 2023 the foregoing
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`Notice of Appeal was electronically filed with the Patent Trial and Appeal Board via
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`the P-TACTS System in accordance with 37 C.F.R. § 42.6(b)(1), and mailed to the
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`Director via Priority Mail Express in accordance with 37 C.F.R. §§ 1.10 and 104.2
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`at the following address:
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`Director of the U.S. Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to 37 C.F.R. § 90.2(a)(2) on December 18, 2023, the foregoing
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`Notice of Appeal was electronically filed with the Court of Appeals for the Federal
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`Circuit via CM/ECF with requisite fees paid via pay.gov.
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`Pursuant to 37 C.F.R. § 42.6(e) and the parties’ agreement to accept electronic
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`service, on December 18, 2023, the foregoing Notice of Appeal was served via email
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`on the following counsel of record for Petitioners:
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`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Email: Jennifer.Bailey@eriseip.com
`Email: Adam.Seitz@eriseip.com
`Email: PTAB@eriseip.com
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`By:
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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`Paper 31
`Date: September 27, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
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`IPR2022-00601
`Patent 9,269,208 B2
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`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2022-00601
`Patent 9,269,208 B2
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`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner” or “Apple”) filed a Petition requesting 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”) 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”)).
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`We concluded that Petitioner satisfied the burden, under 35 U.S.C.
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in
`accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we
`instituted an inter partes review of all the challenged claims, on the single
`asserted ground. Paper 11 (“Dec. Inst.”).
`Patent Owner filed a Response. Paper 17 (“PO Resp.”). Petitioner
`filed a Reply. Paper 20 (“Reply”). Patent Owner filed a Sur-reply.
`Paper 26 (“Sur-reply”).
`Petitioner submitted seventy-six exhibits. See Exs. 1001–10911 (some
`consecutive exhibit numbers were not used; e.g, there are no exhibits
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`1 Exhibit 1091 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See PTAB Consolidated Trial Practice Guide, 84
`(Nov. 2019 (“TPG”) (“Demonstrative exhibits used at the final hearing are
`aids to oral argument and not evidence.”).
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`2
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`IPR2022-00601
`Patent 9,269,208 B2
`numbered 1056–1064); see also Paper 28 (Petitioner’s Updated Exhibit List
`stating that Exhibit numbers 1056–1064 were “Intentionally left blank.”).
`Petitioner relies on the Declaration testimony of Andrew Sears, Ph.D.
`See Exs. 1003, 1090.
`Patent Owner submitted fourteen exhibits. See Exs. 2001–20142;
`see also Paper 29 (Patent Owner’s Updated Exhibit List). Petitioner relies
`on the Declaration testimony of William C. Easttom III, D. Sc., Ph.D.
`See Exs. 2011, 2012.
`A hearing was held June 29, 2023. See Paper 30 (“Transcript” or
`“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has proven that claims 1, 3–7, 9–11, and 13 are unpatentable.
`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.
`There is no dispute between the parties concerning the real party-in-
`interest.
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`C. Related Matters
`Petitioner and Patent Owner each identify the following two district
`court proceedings as related matters: (1) CPC Patent Technologies Pty Ltd.
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`2 Exhibit 1014 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See id.
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`3
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`IPR2022-00601
`Patent 9,269,208 B2
`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 the Northern
`District of California 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 a continuation of
`the application that matured into the ’208 patent in the proceeding before us.
`See Ex. 3001, code (63). A final written decision in the 00600 IPR is due
`October 17, 2023. A final written decision in the 00602 IPR is being issued
`simultaneously with this Decision in the case before us.
`D. The ’208 Patent
`We make the following findings concerning the disclosure of the ’208
`patent.
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`4
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`IPR2022-00601
`Patent 9,269,208 B2
`The ’208 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1001, Abstr. Examples of a “controlled item” include
`“a door locking mechanism on a secure door, or an electronic key circuit in a
`personal computer” that can be accessed only by an authorized user.
`Ex. 1001, 6:13–16. The system uses a database of “biometric signatures,”
`such as a fingerprint, for determining authorized access. Id. at 1:29–30;
`5:63–65 (“the user database [ ] contains biometric signatures for authorised3
`users against which the request [ ] can be authenticated”).
`Figure 2 from the ’208 patent is reproduced below.
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`3 The Specification uses the British spelling, which we also use when
`quoting the Specification.
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`5
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`IPR2022-00601
`Patent 9,269,208 B2
`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.
`As described in the written description of the ’208 patent, and as
`illustrated generally in Figure 2, user 101 makes request 102 to “code entry
`module 103.” Id. at 5:51–55. Code entry module 103 includes biometric
`sensor 121. Id. The specific type of biometric sensor 121 used depends on
`the type of request 102, or biometric input signal, to be used. Id. If
`biometric sensor 121 is a fingerprint sensor, for example, then biometric
`input signal 102 “typically takes the form of a thumb press” on a sensor
`panel (not shown) on code entry module 103. Ex. 1001, 5:56–59. 403.
`“Other physical attributes that can be used to provide biometric signals
`include voice, retinal or iris pattern, face pattern, [and] palm configuration.”
`Id. at 1:30–32.
`Code entry module 103 then “interrogates” 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. Database 105 is
`prepared by an “administrator.” Id. at 10:28–34 (“The first user of the code
`entry module 103 . . . is automatically categorised as an administrator.”).
`The disclosed system and method compare biometric input “signal”
`102 to database 105 of authorized biometric “signatures” to determine if
`user 101 is an authorized user. Id. at 5:61–65 (“Thus for example if the
`request 102 is the thumb press on the biometric sensor panel 121 [producing
`a thumbprint] then the user database 105 contains biometric signatures [i.e.,
`thumbprints] for authorised users against which the request 102 can be
`authenticated.”). If user 101 is an authorized user, code entry module 103
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`Patent 9,269,208 B2
`sends a signal to “controller/transmitter” 107 allowing access to the
`controlled item. Id. at 5:65–67.
`When biometric sensor 121 is a fingerprint sensor,4 the biometric
`signatures stored in database 105 are not limited to a single fingerprint. The
`’208 patent also discloses that, if so programed by an administrator, 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,” or a biometric signal, and
`checks the input information against a stored set of “legal [authorized]
`control signals,” or the database of biometric signatures. Id. at 10:47–67.
`“In one arrangement, the control information is encoded by either or both
`(a) the number of finger presses and (b) the relative duration of the finger
`presses.” Id. at 10:49–52 (emphasis added).
`An example of this type of “control information” or “legal control
`signal” is “dit, dit, dit, dah,” where “dit” is a finger press of one second’s
`duration and “dah” is a “finger press of two second’s duration.”5
`Id. at 10:57–63.
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`4 See Ex. 1001, 10:35 – 38 (“Although the present description refers to
`‘Users’, in fact it is ‘fingers’ which are the operative entities in system
`operation when the biometric sensor 121 (see FIG. 2) is a fingerprint
`sensor.”) (emphasis added). Thus, it is clear that biometric sensor 121 is not
`limited to a fingerprint sensor.
`5 We have not been directed to any persuasive evidence, and have found
`none on our own review of the evidence, which establishes why the
`Specification refers to the number and duration of finger presses as “control
`information” and “legal control signals,” rather than a “biometric signal” and
`a “database” of “biometric signatures,” respectively, which are the terms
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`IPR2022-00601
`Patent 9,269,208 B2
`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
`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. Ex. 1001, 6:22–27.
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`used throughout the Specification for the input signal and the database of
`authorized users.
`The Specification is required to include “a written description of the
`invention, and of the manner and process of making and using it, in such
`full, clear, concise, and exact terms as to enable any person skilled in the art
`. . . to make and use the same.” 35 U.S.C. § 112(a). Neither we nor the
`parties, however, have jurisdiction in this inter partes review proceeding to
`address an enablement issue. See id. at § 311(b) (“A petitioner in an inter
`partes review may request to cancel as unpatentable 1 or more claims of a
`patent only on a ground that could be raised under section 102 or 103 and
`only on the basis of prior art consisting of patents or printed publications.”).
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`IPR2022-00601
`Patent 9,269,208 B2
`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.
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`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
` 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
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`IPR2022-00601
`Patent 9,269,208 B2
` 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. 6
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
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`6 Petitioner provides a Claim Listing Appendix as part of the Petition.
`Pet. 74–77. This Appendix includes all the challenged claims identified by
`individual clause, such as, for claim 1, labeling the clauses 1(a), 1(b),
`1(b)(1), etc. Petitioner refers to these clause labels in its analysis.
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`IPR2022-00601
`Patent 9,269,208 B2
`Claim(s) Challenged
`1, 3–7, 9–11, 13
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`35 U.S.C. §7
`103(a)
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`Reference(s)/Basis
`Mathiassen,8 McKeeth,9
`Anderson10
`Petitioner also relies on the declaration testimony of Andrew Sears,
`Ph.D. See Ex. 1003;11 see also Ex. 1090 (Dr. Sears’ Supplemental
`Declaration.
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`II. ANALYSIS
`A. Legal Standards
`1. Obviousness
`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
`
`7 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.
`8 Mathiassen et al, US 2004/0123113 A1, published June 24, 2004
`(Ex. 1004, “Mathiassen”).
`9 McKeeth, US 6,766,456 B1, issued July 20, 2004 (Ex. 1005, “McKeeth”).
`10 Anderson, US 6,509,847 B1, issued Jan. 21, 2003 (Ex. 1006,
`“Anderson”).
`11 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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`IPR2022-00601
`Patent 9,269,208 B2
`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
`(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. 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.
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`Patent 9,269,208 B2
`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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`IPR2022-00601
`Patent 9,269,208 B2
`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.
`“The Graham analysis includes a factual determination of the level of
`ordinary skill in the art. Without that information, a district court [or an
`administrative Board] cannot properly assess obviousness because the
`critical question is whether a claimed invention would have been obvious at
`the time it was made to one with ordinary skill in the art.” Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986); see also Ruiz v. A.B. Chance, 234 F.3d 654, 666 (Fed. Cir. 2000)
`(“The determination of the level of skill in the art is an integral part of the
`Graham analysis.”).
`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,
`
`14
`
`
`
`IPR2022-00601
`Patent 9,269,208 B2
`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.
`In forming an opinion on the level of ordinary skill applicable to this
`proceeding, Dr. Sears testifies that he considered various factors, including
`the type of problems encountered in the art, the solutions to those problems,
`the rapidity with which innovations are made in the field, the sophistication
`of the technology, and the education level of active workers in the field.
`Ex,1003 ¶ 35. Dr. Sears also testifies that he “placed myself back in the
`time frame of the claimed invention and considered the colleagues with
`whom I had worked at that time.” Id. Dr. Sears opines that a person of
`ordinary skill would have had the education and experience adopted by
`Petitioner. Id. at ¶ 36.
`Patent Owner states it “does not dispute [Petitioner’s]
`characterization” of the level of ordinary skill in the art See PO Resp. 5–6.
`Based on the prior art, the sophistication of the technology at issue,
`and Dr. Sears’ Declaration testimony, we adopt, with minor modification,
`Petitioner’s undisputed definition of the level of ordinary skill. We
`determine that in this proceeding a person of ordinary skill would have had a
`bachelor’s degree in computer engineering, computer science, electrical
`engineering, or a related field, with one year of experience in the field of
`human-machine interfaces and device access security, or an equivalent
`balance of education and work experience. We have eliminated the open-
`ended phrase of “at least” in describing the education and experience of a
`person of ordinary skill. This open-ended description fails to provide the
`specificity necessary to define the level of ordinary skill.
`
`15
`
`
`
`IPR2022-00601
`Patent 9,269,208 B2
`
`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
`record before us, we have not been directed to any dispute between the
`
`16
`
`
`
`IPR2022-00601
`Patent 9,269,208 B2
`parties as to whether § 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. 6–9. Petitioner asserts its proposed constructions are consistent
`with constructions made by the Texas 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). 12
`Patent Owner does not dispute any of the myriad means-plus-function
`clauses construed by Petitioner. See Response; Sur-reply.
`Thus, we adopt Petitioner’s undisputed findings and conclusions for
`these means-plus-function terms as our own, and repeat them below for
`convenient reference. See Pet. 6–9.
`
`
`12 The cited exhibits 1073, 1077, and 1079 are from the case prior to its
`transfer from the Western District of Texas to the Northern District of
`California.
`
`17
`
`
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`IPR2022-00601
`Patent 9,269,208 B2
`Claim Term
`Claims 1, 9: “means for
`matching the biometric
`signal against members of
`the database of biometric
`signatures to thereby
`output an accessibility
`attribute”
`
`Court Construction, Ex.
`1077
`
` Claim 10: “means for
`emitting a secure access
`signal capable of
`granting more than two
`types of access to the
`controlled item”
`
`CPC Construction, Ex.
`1073
`
`
`
`Support
`’208 Patent, 4:8–13, 4:15–
`17, 4:40–45, 4:47–49,
`5:50–67, 6:56–7:2, 7:65–
`8:10, 8:67–9:5, 14:10–42,
`Fig. 2, items 103, 105,
`Fig. 3, item 202,
`(Ex. 1077, 4)
`
`’208 Patent, 4:8–13, 4:18–
`22, 4:40–45, 4:50–54,
`8:17–28, 10:24–44
`(Ex. 1073, 7)
`
`Structure
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