`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner
`
`
`
`CASE: IPR2022-00601
`U.S. PATENT NO. 9,269,208
`
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`

`

`I. 
`INTRODUCTION ........................................................................................... 1 
`’208 PATENT OVERVIEW ........................................................................... 4 
`II. 
`III.  Level of Ordinary Skill .................................................................................... 5 
`IV.  Claim Construction .......................................................................................... 6 
`A. 
`“Accessibility Attribute” ....................................................................... 6 
`B. 
`“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” .......................................... 7 
`C. 
`“Populate the Data Base According to the Instruction” ...................... 11 
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS ...................................................................................................... 12 
`A. 
`The Prior Art Does Not Teach the “Accessibility Attribute”
`Limitation ............................................................................................ 12 
`1.  Mathiassen Does Not Teach an “Accessibility Attribute” ....... 12 
`2. 
`There is No Motivation to Combine Apple’s Cited Prior Art to
`Arrive at the “Accessibility Attribute” as Properly Construed . 16 
`The Prior Art Does Not Teach the Biometric Signal Duration
`Limitation ............................................................................................ 24 
`1. 
`Anderson Does Not Teach a Durational Component to a
`Biometric Signal Entry ............................................................. 24 
`There is No Motivation to Combine Mathiassen and Anderson
` ................................................................................................... 26 
`C.  Apple’s Cited Prior Art Does Not Populate the Data Base
`According to the Instruction ................................................................ 30 
`D. 
`Independent Claims 9 and 10 .............................................................. 33 
`E. 
`Dependent Claims ............................................................................... 33 
`VI.  CONCLUSION .............................................................................................. 34 
`
`
`
`V. 
`
`B. 
`
`2. 
`
`IPR2022-00601
`U.S. Patent No. 9,269,208
`
`
`TABLE OF CONTENTS
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`i
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`

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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Scheduling Order, CPC Patent Technologies Pty Ltd. v. HMD
`Global Oy, 6:21-cv-00166 (Dkt. 27) (Sept. 23, 2021)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
`
`HMD Global Oy – Final Invalidity Contentions dated March 16,
`2022
`
`Defendant Apple Inc.’s Notice of Motion and Motion to Stay
`Pending Inter Partes Review, 5:22-cv-02553 (Dkt. 119) (June
`14, 2022)
`
`Scheduling Order, CPC Patent Technologies Pty Ltd. v. Apple
`Inc., 6:21-cv-00165 (Dkt. 37) (Sept. 23, 2021)
`
`March 19, 2020 Letter from George Summerfield to Brian
`Ankenbrandt
`
`Declaration of George C. Summerfield in Support of Motion
`for Pro Hac Vice Admission
`
`Biography of George C. Summerfield
`
`Declaration of Jonah Heemstra in Support of Motion for Pro
`Hac Vice Admission
`
`Apple’s Opening Claim Construction Brief, CPC Patent
`Technologies Pty Ltd. v. Apple Inc., 6:21-cv-00165 (Dkt. 46)
`(Nov. 19, 2021)
`
`Final Deposition Transcript of Dr. Andrew Sears, dated
`November 8, 2022
`
`Declaration of William C. Easttom II (Chuck Easttom) Ph.D.,
`D.Sc.
`
`CV of Dr. Chuck Easttom
`
`
`ii
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`

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`I.
`
`INTRODUCTION
`
`IPR2022-00601
`U.S. Patent No. 9,269,208
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`
`The limitations of the independent claims of U.S. Patent No. 9,269,208 (“the
`
`ʼ208 Patent”), using representative Claim 1 as an example, can be divided as follows:
`
`1) the preamble; 2) a database of biometric signatures (representative clause 1(a));1
`
`3) a transmitter subsystem and its components involved in capturing and matching
`
`of biometric data (representative clause 1(b)); 4) a receiver subsystem to give access
`
`to a device based upon information received from the transmitter subsystem
`
`(representative clause 1(c)); 5) the transmitter subsystem to the extent it is involved
`
`in the capture and registration of biometric data associated with a user
`
`(representative clause 1(d)); and 6) the device to be unlocked (representative clause
`
`1(e)). Apple cobbles together a single, three-reference challenge to the claims of the
`
`ʼ208 Patent. Even with these three references in hand, Apple must ignore its own
`
`characterization of the prior art and its construction of the subject claims to mount
`
`an obviousness challenge.
`
`First, the “transmitter subsystem” (representative clause 1(b)) specifies a
`
`“means for matching the biometric signal against members of the database of
`
`biometric signatures to thereby output an accessibility attribute” (emphasis added).
`
`
`1 These clauses refer to the numbering system used by the Board to label the various
`
`claim limitations in claim 1 of the ʼ208 Patent.
`
`1
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Apple successfully urged before the district court and here that “accessibility
`
`attribute” be construed as an “attribute that establishes whether and under which
`
`conditions access to the controlled item should be granted to a user” (emphasis
`
`added). According to Apple, the challenged claims go beyond the binary access
`
`decision of “yes” or “no.” Yet, Apple improperly calls upon prior art teachings that
`
`are limited to this very binary decision as allegedly teaching the “accessibility
`
`attribute” limitation.
`
`Second, the transmitter subsystem limitation (representative clause 1(d))
`
`specifies “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” (representative clause 1(d)(1)) (emphasis added) (“the Biometric Signal
`
`Duration Limitation”). In discussing the prior art that allegedly teaches this
`
`limitation, Apple’s expert, Dr. Andrew Sears, initially draws a bright line distinction
`
`between biometric security devices, such as a fingerprint sensor, and knowledge-
`
`based security devices, such as a capacitive touch sensor and Morse code.
`
`Yet, when cobbling together a multi-reference challenge to the validity of the
`
`subject claims, Dr. Sears and Apple completely blur that distinction, combining
`
`teachings from both realms, and treating knowledge-based security features as
`
`biometrics to satisfy the Biometric Signal Duration Limitation. This necessarily
`
`dooms Apple’s challenge, unless the fundamental distinction between “knowledge,”
`
`2
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`which can be learned and stolen, and “biometrics,” which cannot, is ignored. Apple
`
`also provides no explanation as to how or why teachings from these disparate
`
`technologies could be combined to arrive at the claimed invention, especially when
`
`simpler solutions, such as a push button, had presented themselves.
`
`Third, the claim specifies that the received series of biometric signals be
`
`mapped into an instruction (representative clause 1(d)(2)), and that instruction is
`
`used to populate the data base (representative clause 1(d)(3)). In other words, as
`
`Apple acknowledges, the series of biometric signal is used in the user enrollment
`
`process. Yet, in describing its principal reference, Apple points to one thing – finger
`
`movements – as purportedly satisfying the “receive” and “map” limitations, and to
`
`another thing – “master minutiae tables” of fingerprints – for the “populate”
`
`limitation. This clearly contravenes the plain language of the claims and the
`
`antecedents therein.
`
`Finally, if Apple is somehow correct that combining knowledge-based and
`
`biometric security is fair game in challenging the claims of the ʼ208 Patent, Apple
`
`fails to explain why one of ordinary skill in the art would have been motivated in the
`
`name of enhancing security to modify an existing biometric sensor in some fashion,
`
`with the reprogramming that would be required therefor, rather than employing
`
`myriad simpler, albeit unpatented, security alternatives, such as a physical push
`
`button, to be used in conjunction with such existing biometric sensor. This is
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`3
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`particularly problematic, given that one of the three prior art references relied upon
`
`by Apple in its single challenge ground (Anderson) denigrates fingerprint
`
`recognition as requiring “sophisticated software for implementation,” and itself
`
`teaches the use of a push button.
`
`Any one of the foregoing problems with Apple’s single challenge ground is
`
`sufficient to defeat the instant Petition. The combination of all four issues, however,
`
`means that the Board should give the Petition the short shrift it deserves.
`
`II.
`
`’208 PATENT OVERVIEW
`
`The ʼ208 Patent issued on February 23, 2016 from an application claiming
`
`priority of August 13, 2003. The ʼ208 Patent has 13 claims, claims 1, 9 and 10 of
`
`which are independent. Representative claim 1 of the ʼ208 Patent reads:
`
`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;
`
`4
`
`

`

`and means for providing conditional access to the controlled item
`dependent upon said information,
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`
`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 characterized 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.
`
`As the Board noted, “[t]he ʼ208 Patent discloses a system ‘for providing
`
`secure access to a controlled item.’” Paper No. 11 at 4 (citation omitted). The
`
`controlled item “can be a door locking mechanism on a secure door, or an electronic
`
`key circuit in a personal computer,” for example. Id. at 5 (citation omitted). “The
`
`system uses a database of ‘biometric signatures,’ such as a fingerprint, for
`
`determining authorized access.” Id. at 4 (internal citations omitted).
`
`III. LEVEL OF ORDINARY SKILL
`
`CPC does not dispute Apple’s characterization that a hypothetical 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
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`5
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`U.S. Patent No. 9,269,208
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`one year experience in the field of human-machine interfaces and device access
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`security,” and “[a]dditional education or experience may substitute for the above
`
`requirements.” Paper No. 1 at 3.
`
`IV. CLAIM CONSTRUCTION
`A.
`
`“Accessibility Attribute”
`
`Claim 1 of the ʼ208 Patent requires an output of an “accessibility attribute”
`
`based upon a biometric signal match, and emitting “a secure access signal conveying
`
`information dependent upon said accessibility attribute.” Ex. 1001, 15:47-52. Apple
`
`proposed, and the Board adopted, an “attribute that establishes whether and under
`
`which conditions access to the controlled item should be granted” as the construction
`
`of “accessibility attribute.” Paper No. 1 at 9; Paper No. 11 at 13. According to
`
`Apple, this construction “is consistent with the description of the invention
`
`throughout the specification and the claims, which goes beyond mere matching—
`
`the binary decision of “yes” or “no”—and instead describes a system that provides
`
`for different types of access.” Ex. 2009 at 26 (emphasis added); see also id. at 28
`
`(“[b]inary matching—“match/no match”—is not what the inventor was trying to
`
`invent”).
`
`The ʼ208 Patent teaches the following examples of accessibility attributes:
`
`[A]n access attribute (granting unconditional access), a duress attribute
`
`(granting access but with activation of an alert tone to advise authorities
`
`6
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`

`

`of the duress situation), an alert attribute (sounding a chime indicating
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`that an unauthorised, but not necessarily hostile, person is seeking
`
`access).
`
`Ex. 1001, 8:20-25.
`
`In short, a mere binary decision to grant access to a device does not constitute
`
`an “accessibility attribute” under Apple’s claim construction. As discussed below,
`
`however, Apple improperly tries to back away from that distinction in challenging
`
`the validity of the subject claims.
`
`B.
`
`“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”
`
`As the Board noted, “[t]he ʼ208 Patent discloses a system ‘for providing
`
`secure access to a controlled item,’” wherein “[t]he ‘controlled item’ can be…an
`
`electronic key circuit in a personal computer.” Paper No. 11 at 5. “The system uses
`
`a database of ‘biometric signatures,’ such as a fingerprint for determining authorized
`
`access.” Id. at 4 (internal citations omitted).
`
`Representative claim 1 of the ʼ208 Patent requires, inter alia, a transmitter
`
`sub-system controller includes a “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” (representative clause
`
`1(d1)). Paper No. 11 at 30 (emphasis added). Subsumed within this Biometric
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`7
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Signal Duration Limitation is the term “biometric signal.” Apple proposed, and the
`
`Board adopted, “physical attribute of the user (i.e., fingerprint, facial pattern, iris,
`
`retina, voice, etc.)” as the construction of that term. Paper No. 1 at 9; Paper No. 11
`
`at 13. In other words, biometric information identifies “an individual via unique
`
`physiological or behavioral characteristics.” Ex. 1003, ¶ 41; see also Ex. 2010 at
`
`20:9-21, 21:13-15 (a biometric signal is unique to an individual user). According to
`
`Apple’s own expert, a biometric signal is based on an inherent attribute of an
`
`individual, cannot be learned, and cannot be stolen. Ex. 1003, ¶ 41; Ex. 2010 at
`
`28:12-21.
`
`The construction of the term “biometric signal” in the claims is in
`
`contradistinction to what Dr. Sears references in the prior art as “knowledge-based”
`
`security measures, such as a password. Ex. 1003, ¶¶ 40-41. According to Dr. Sears,
`
`a knowledge-based approach is “not based on any inherent attributes of an
`
`individual.” Id., ¶ 41. The ʼ208 Patent itself speaks of a “biometric signal” as an
`
`“alternative” to a “secure code,” such as “a sequence of secret numbers,” i.e., a
`
`knowledge-based security measure. Ex. 1001, 1:25-32 (“Thus, for example, the
`
`request 402 can be a sequence of secret numbers directed to a keypad 403.
`
`Alternately, the request 402 can be a biometric signal from the user 401 directed to
`
`a corresponding biometric sensor 403.”). The following table summarizes the
`
`distinctions between knowledge-based and biometric-based security measures:
`
`8
`
`

`

`Knowledge-Based Security
`Knowledge can be learned by another.
`Ex. 2010 at 28:12-21.
`
`Knowledge is not based on an inherent
`attribute of an individual. Ex. 1003, ¶
`41.
`
`Knowledge, e.g., a password, can be
`stolen. Ex. 1003, ¶ 41.
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`
`Biometric-Based Security
`A biometric
`feature
`cannot be
`“learned.” Ex. 2010 at 36:5-11 (cannot
`“teach” a mug shot).
`identified an
`Biometric
`information
`individual via unique physiological or
`behavioral characteristics. Ex. 2010 at
`20:9-21, (“unique to the user”). See also
`id. at 29:4-16 (“essentially part of a
`person”);
`id. at 33:11-16 (“unique
`patterns form via
`the ridges and
`bifurcations on the skin of fingerprints”
`are “biometric”); and Ex. 1003, ¶¶ 41 &
`43.
`biometric
`“steal”
`cannot
`One
`information. Ex. 1003, ¶ 41; Ex. 2010
`at 20:9-21, 21:13-15.
`
`Despite proposing this construction, Apple seeks to blur the lines between
`
`what its expert calls “knowledge-based” security features (those based on
`
`knowledge, such as a passcode or particular pattern, and not on any attribute of the
`
`user), and a biometric signal based on the unlearnable attribute of the user, in an
`
`effort to show the Biometric Signal Durational Limitation is taught by its single
`
`challenge ground. Indeed, Apple itself proposed, the District Court found, and the
`
`Board has preliminarily adopted, a construction that the claimed “series [is]
`
`characterised according to at least one of the number of said entries and a duration
`
`of each said entry.” Crucially, the antecedent for this series is “a series of entries of
`
`the biometric signal,” i.e., the entries and corresponding series are “of the biometric
`
`signal,” and the “number of said entries and a duration of each said entry” refers to
`
`9
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`the entries of the biometric signal, and not an entry of some other information, such
`
`as knowledge-based information.
`
`The distinction between knowledge-based and biometric information is also
`
`evident in the prosecution history. The Examiner found the closest prior art of record
`
`to be three references disclosing biometric security. Ex. 1002 at 304-05 (Hoffman’s
`
`“biometric samples,” Igaki’s “single finger press,” and Pu’s “fingerprints”). The
`
`applicant successfully pointed out, however, that combining Hoffman and Igaki’s
`
`biometric sampling with Pu’s use of human body parts to form a “secret sequence
`
`code,” i.e., knowledge-based information, required impermissible hindsight. Id. at
`
`304, 317.2
`
`Blurring the line between knowledge-based and biometric information is
`
`improper given the construction Apple proposed, and the Board adopted, for the term
`
`“biometric signal” - “[p]hysical attribute of the user (i.e., fingerprint, facial pattern,
`
`iris, retina, voice, etc.).” Paper No. 1 at 9; Paper No. 11 at 13. It is also improper
`
`considering the claims’ clear requirement of a number and duration of each entry of
`
`the biometric signal. Ex. 2009 at 17-18; Ex. 1077 at 2.
`
`
`2 The Examiner based his Notice of Allowance on an “examiner initiated interview
`
`on 9/30/2015 and applicant’s arguments/amendments filed 07/27/2015,” which
`
`included applicant’s statement regarding impermissible hindsight. Ex. 1002 at 304.
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`10
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`In short, given the foregoing, the Biometric Signal Durational Limitation
`
`cannot be disclosed by the duration of a signal generated by a knowledge-based
`
`security feature. As discussed below, however, that is precisely what Apple has
`
`attempted to do in its single challenge ground.
`
`C.
`
`“Populate the Data Base According to the Instruction”
`
`Apple points to “enrolling a new user’s fingerprint by providing control
`
`information via a sequence of presses of certain amount and duration” as one of the
`
`purportedly distinguishing features of the invention claimed in the ʼ208 Patent.
`
`Paper No. 1 at 1. The “populate” limitation in claim 1 is part of that enrolling feature.
`
`Ex. 2011, ¶ 82. Representative Claim 1 makes clear that, once the series of biometric
`
`signals characterized by number and duration is received by the transmitter
`
`subsystem (representative clause 1(d1)), that series is mapped into an instruction
`
`(representative clause 1(d2)), and the resulting instruction is used to populate the
`
`database of biometric signatures (representative clause 1(d)(3)). Ex. 1001, 15:61-
`
`67. To satisfy the requirements for antecedent claiming, “said series” in clause 1(d2)
`
`must refer to the “series of entries of the biometric signal” in clause 1(d1),3 and “the
`
`
`3 The Board recognized that “said series” refers to the “series of entries of the
`
`biometric signal” as shown by the board placing “of entries of the biometric signal”
`
`in brackets. Paper No. 11 at 33.
`
`11
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`instruction” in clause 1(d3) must refer to “an instruction” in clause 1(d2). See, e.g.,
`
`MPEP, § 2173.05(e). The following is a depiction of this information flow:
`
`
`
`Ex. 2011, ¶ 82.
`
`To show a teaching of these limitations, Apple must identify the same
`
`“biometric signal” series received by the transmitter sub-system, mapped into an
`
`instruction, and using the resulting instruction for populating the database. As
`
`discussed below, Apple did not do that.
`
`V. THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS
`A. The Prior Art Does Not Teach the “Accessibility Attribute”
`Limitation
`1. Mathiassen Does Not Teach an “Accessibility Attribute”
`
`Apple’s position on the “accessibility attribute” limitation is muddied at best.
`
`As explained above, Apple successfully argued before the district court that such
`
`limitation should be construed as having both “whether” and “under which
`
`conditions” components to an access decision, eschewing a construction limited to
`
`a binary (yes/no) access decision. Ex. 2009 at 26 (“The definition…goes beyond
`
`mere matching—the binary decision of ‘yes’ or ‘no’….”); see also id. at 28 (“Binary
`
`12
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`U.S. Patent No. 9,269,208
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`matching—“match/no match”—is not what the inventor was trying to invent”).
`
`Now, however, Apple and its expert appear to argue that “accessibility attribute” can
`
`be a binary access decision. Paper 1 at 42-44.
`
`Specifically, according to Dr. Sears, the binary decision whether to unlock a
`
`car door using Mathiassen’s portable control, in addition to determining “whether”
`
`to grant access to the car, also constitutes determining “under what conditions” such
`
`“access should be granted,” as such access grant in the event of a fingerprint match
`
`is “unconditional.” Ex. 1003, ¶¶ 241-242. The only alternative to granting access
`
`is to deny access by aborting the process in the event that there is no fingerprint
`
`match. See id. Such access does not provide any incremental condition to access
`
`beyond the “whether” inquiry, and Apple’s reading of Mathiassen consequently
`
`merges the “whether” and “under which conditions” components of its own
`
`construction of the “accessibility attribute” limitation.
`
`Dr. Sears, for his part, could not point to another type of accessibility attribute
`
`taught in Mathiassen, volunteering at deposition that Mathiassen somehow renders
`
`other accessibility attributes “obvious.” Ex. 2010 at 60:1-12. Apart from the fact
`
`that Dr. Sears was not asked what Mathiassen by itself rendered obvious with regard
`
`to the “accessibility attribute,” neither Dr. Sears nor Apple ever raised Mathiassen
`
`13
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`as a single-reference obviousness challenge.4 As such, Apple should not be allowed
`
`to avail itself of that theory now. See, e.g., Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
`
`importance that petitioners in the IPR proceedings adhere to the requirement that the
`
`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
`
`for the challenge to each claim.’”) (citing 35 U.S.C. § 312 (a)(3)).
`
`The Board, in instituting this proceeding, adopted Apple’s reasoning which
`
`plainly ignores the “under which conditions” aspect of Apple’s own construction of
`
`“accessibility attribute:”
`
`Here, consistent with the proposed construction, Petitioner relies solely
`
`on Mathiassen to satisfy the proposed claim construction of an attribute
`
`that establishes whether and under which conditions access to the
`
`
`4 As Apple argues, while “Mathiassen teaches a secure access system unlocking car
`
`doors,” “McKeeth teaches providing different types of access when a user is under
`
`duress or when a user is unauthorized,” and “[m]odifying Mathiassen’s portable
`
`control to output information indicating duress access and alert access, in addition
`
`to Mathiassen’s taught grant access . . . would have been obvious to a POSITA.”
`
`Paper No. 1 at 2-3 (emphasis added).
`
`14
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`

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`controlled item should be granted to a user. If the processor 2 in
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Mathiassen does not find a match, then no access will be granted.
`
`Paper No. 11 at 25 (emphasis added).
`
`In other words, the Board preliminarily found that the type of binary decision
`
`that Apple characterized as antithetical to the claimed invention in fact falls within
`
`the scope of the “accessibility attribute” limitation. Under the Board’s treatment of
`
`Mathiassen, a binary decision limited to access/abort satisfies both the “whether”
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`and “under which conditions” requirement for “accessibility attribute.” This is
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`inconsistent with the construction Apple fought for in the district court litigation,
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`proposed in this proceeding, and adopted by the Board. Ex. 2009 at 26; Paper 1 at
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`9; Paper 11 at 13.
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`After Apple expended its energy championing a construction of “accessibility
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`attribute” that excludes binary access decisions, it cannot now challenge the claims
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`of the ʼ208 Patent based upon a construction that incorporates such a binary decision.
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`The necessary result is that Mathiassen’s access/abort teaching does not correspond
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`to an “accessibility attribute” under the controlling construction of that term, and any
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`invalidity decision based upon such correspondence is simply wrong.
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`IPR2022-00601
`U.S. Patent No. 9,269,208
`
`There is No Motivation to Combine Apple’s Cited Prior Art
`to Arrive at the “Accessibility Attribute” as Properly
`Construed
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`2.
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`Recognizing that Mathiassen does not satisfy Apple’s construction of
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`“accessibility attribute,” Dr. Sears falls back on the opinion that “Mathiassen in
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`combination with McKeeth teaches outputting two or more accessibility attributes,”
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`i.e., it is non-binary. See Ex. 1003, ¶ 245. The teaching from McKeeth to which Dr.
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`Sears refers is a “geometric pattern (e.g., using a mouse)” that when incorrectly
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`entered “concurrently with, or after a predetermined duration from, scanning his/her
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`fingerprint,” allows for a duress signal. Ex. 1003, ¶ 247; Ex. 1005, 4:10-32.
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`Apart from being a tacit admission that Mathiassen only teaches binary
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`access, this opinion, to be cognizable, must rely upon a motivation to combine these
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`two references going beyond improper hindsight reconstruction. See, e.g.,
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`Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361, 1371 (Fed. Cir.
`
`2000) (citation omitted) (impermissible to use hindsight reconstruction to pick and
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`choose among isolated disclosures in the prior art to deprecate the claimed
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`invention).
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`This purported combination presupposes that one would have thought it
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`necessary to look beyond Mathiassen to add a duress signal to the existing
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`fingerprint security thereof. However, as Dr. Sears notes, Mathiassen teaches finger
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`movement that can provide for additional security. Ex. 1003, ¶ 89 (“Mathiassen
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`16
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`teaches commands other than ‘open door’ may be implemented in the secure access
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`control system by a user providing certain finger movements”). One such command
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`could be to send a distress signal. Ex. 2010 at 55:2-6. There would have been no
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`reason, then, to look to McKeeth to modify Mathiassen in the fashion that Dr. Sears
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`describes. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369
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`(Fed. Cir. 2012); Ex. 2011, ¶ 51.
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`Even if Mathiassen could be modified to add a distress signal resulting from
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`finger movements, such modification would not involve a biometric signal. Ex.
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`2011, ¶¶ 52-53. Claim 18 of Mathiassen calls for “a fingerprint sensor (5).” Ex.
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`1004 at 28. That device is the biometric sensor. Ex. 2010 at 47:16-48:6. Claim 20,
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`which depends from claim 18, further calls for “translation means in the form of a
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`hardware or a software translation program module for analyzing and categorizing
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`the omni-directional finger movements across the fingerprint sensor.” Ex. 1004 at
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`28. To one of ordinary skill in the art, these finger movements are not biometric
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`signals, as something more than the fingerprint sensor is required to track them. Ex.
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`2011, ¶ 53. One of ordinary skill in the art would understand that, in the context of
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`tracking “omni-directional finger movements,” the translation means hardware or
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`software, is not acting like a fingerprint sensor. Id. In light of Mathiassen’s
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`teachings, there would have been no motivation to combine that reference with
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`anything to arrive at a duress signal, let alone selecting McKeeth specifically.
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`Assuming that one could presuppose looking beyond Mathiassen, Dr. Sears
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`posits several reasons supporting a purported motivation to combine Mathiassen and
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`McKeeth: 1) vehicle security was a known problem (Ex. 1003, ¶ 153); 2) duress
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`access was known to be desirable (id., ¶¶ 154-159); 3) denying access to
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`unauthorized users was well known (id., ¶¶ 160-163); and 4) there would have been
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`a reasonable expectation of success in the modification (id., ¶¶ 164-168).
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`To begin with, the first factor calls out a problem in the automotive space, i.e.,
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`vehicle security. Indeed, Apple maps claim 10 of the ʼ208 Patent to “Mathiassen’s
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`portable control 20 embodiment of Mathiassen, where the ‘controlled item’ is
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`Mathiassen’s car door locks in the ‘central locking system.’” Paper No. 1 at 14.
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`McKeeth, however, does not teach an automotive embodiment. See generally Ex.
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`1005; see also Ex. 2010 at 61:14-62:4 (“Q. Does McKeeth teach an automotive
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`embodiment, as far as you recall? And if you need to look at it, please do. …
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`A. Based on my quick review, I don’t believe McKeeth teaches an automotive
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`embodiment. Q. Well, do you recall in your opinion relying upon any automotive
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`embodiment that McKeeth taught? A. I do not.”). Rather, as the Board noted,
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`McKeeth discloses a method and system for authenticating a user to access a
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`computer system. Paper No. 11 at 16.
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`Indeed, while Apple repeatedly claims it would have been obvious to modify
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`the portable control of Mathiassen with McKeeth, it wholly ignores this major
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`18
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`IPR2022-00601
`U.S. Patent No. 9,269,208
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`distinction between these references. See Paper 1 at 46. McKeeth teaches a user
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`inputting a 1) password using a keyboard, 2) unique set of clicks using a mouse, or
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`3) geometric pattern using a computer peripheral device on a flat surface
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`“concurrently with, or after a predetermined duration from, scanning his/her
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`fingerprint” as the mechanism by which a duress access and/or alert generation takes
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`place. Ex. 1006, 2:65-3:4; 3:38-42; 4:10-32; 5:34-38 (“Accordingly, concurrently
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`with or shortly after the fingerprint scan, the user may move the peripheral device
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`200 on a flat surface in a predetermined geometric pattern….”). The portable device
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`of Mathiassen notably lacks a keyboard, screen, and even a button to perform these
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`very functions. Ex. 1004, ¶ [0147]. Apple’s and Dr. Sears blind assumption that
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`these references could be combined without explaining how the resulting
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`combination