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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES, INC.
`Patent Owner
`____________
`
`IPR2022-00602
`Patent No. 9,665,705
` ____________
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`SUPPLEMENTAL DECLARATION OF DR. ANDREW SEARS
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`IPR2022-00602
`Apple EX 1090 Page 1
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 3
`I.
`II. OPINIONS ...................................................................................................... 3
`CPC’S “PUSH-BUTTON” ARGUMENT ..................................................... 3
`A.
`B. MATHIASSEN AND THE CLAIMED “SERIES OF ENTRIES OF THE
`BIOMETRIC SIGNAL”............................................................................... 8
`C. MATHIASSEN IS “COMPUTER ART” ........................................................ 11
`D.
`CLAIMS 1(D1)-1(D3)............................................................................. 13
`III. CONCLUSION ............................................................................................ 14
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
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`I, Dr. Andrew Sears, hereby declare the following:
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`I.
`
`INTRODUCTION
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`1.
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`I have been asked to respond to certain issues raised by Patent Owner
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`in Patent Owner’s Response dated December 22, 2022 (“POR”). All of my opinions
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`expressed in my original declaration (Ex. 1003) remain the same. I have reviewed
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`the relevant portions of the POR and the relevant portions of Dr. Easttom’s
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`declaration and deposition transcript in connection with preparing this supplemental
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`declaration.
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`II. OPINIONS
`CPC’s “Push-Button” Argument
`As I discussed in my original declaration (Ex. 1003), a POSITA would
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`A.
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`2.
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`have been motivated and found it obvious to modify Mathiassen’s portable control
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`to output McKeeth’s duress and alert attributes, in addition to issuing an open door
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`command that unlocks the car door locks for the car owner/administrator. (Ex. 1003,
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`¶¶ 149-171). Providing access while issuing a silent alert to authorities when a user
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`indicated they were under duress would have improved theft prevention “or non-
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`authorized use of the car” because authorities would have been notified when the
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`break-in or robbery was occurring. (Ex. 1003, ¶ 150 (citing Ex. 1004, [0145])).
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`Additionally, as Mathiassen expressly teaches security of car systems being a “key
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`issue,” a POSITA would have been motivated to increase such security to make car
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`owners feel safer by providing duress access that included alerting authorities when
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`an authorized user was under duress or alert access that included sounding an alarm
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`when an unauthorized user was trying to access the vehicle. (Ex. 1003, ¶ 150 (citing
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`Ex. 1004, [0145]); Ex. 1003, ¶¶ 151-161).
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`3.
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`Mathiassen understood that “security” was a “key issue” in car systems
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`in order to “prevent theft or non-authorized use of the car,” as the automotive
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`industry was known to emphasize “secure access by blocking non-authorized users
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`access to the car.” (Ex. 1004, [0145]). Thus, due to the desirability of secure access
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`for only authorized individuals, Mathiassen applies the fingerprint recognition
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`access system to a car’s central locking system to distinguish authorized users from
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`un-authorized users. Id. Based on Mathiassen’s express disclosure of using
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`fingerprint recognition to provide the “secure access” that was known to be desired
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`in car locking systems, a POSITA would not have looked to a less-secure push button
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`as providing any type of access, such as duress, as a push button would not have
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`prevented non-authorized users from gaining access to the vehicle.
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`4.
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`Dr. Easttom opines that a POSITA would have implemented a push
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`button in Mathiassen to indicate duress because push buttons are “easy to install”
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`and a “simple mechanical feature[.]” (Ex. 2013, Declaration of Dr. William C.
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`Easttom III, ¶ 61). In my opinion, Dr. Easttom’s opinion does not recognize or
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`address Mathiassen’s express purpose of applying the fingerprint recognition access
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`system to cars to prevent un-authorized use. Within the field of access security,
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`duress was known as a condition where an authorized user was being forced to
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`access a device (e.g., a vehicle). (Ex. 1003, ¶¶ 64-67, ¶ 91 (McKeeth teaching a user
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`indicating they are “experiencing duress or force to access the computer system”),
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`¶¶ 145-146 (comparing the ’705 Patent’s disclosed “duress” situation occurring
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`when an authorized user is in a “coercive situation” with McKeeth’s duress
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`condition), ¶ 151). Thus, a POSITA would have understood providing access when
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`a user is under duress includes identifying the user is an authorized user. If a push
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`button, alone, was used to indicate duress, the car locking system would not be able
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`to identify an authorized user from an un-authorized user pressing the button.
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`Therefore, for a push button to provide duress access in Mathiassen’s central locking
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`system and for Mathiassen to accomplish the purpose of preventing un-authorized
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`use, a POSITA would have understood Mathiassen’s fingerprint sensor would have
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`verified the user was authorized.
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`5.
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`Indicating duress by “discreetly” signaling duress was well-known to
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`be desirable. (Ex. 1003, ¶ 153 (citing Zhinger)). A POSITA would have understood
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`a user presenting their fingerprint and having to separately press a push button would
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`not be as discreet as indicating duress in the same presented fingerprint. Dr.
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`Easttom’s opinions of a “simpler” duress indication would have required two
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`operations instead of a single fingerprint. In my opinion, it would not have been
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`simpler for a user to perform two operations at two places on the portable door
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`control than my proposed modification of Mathiassen’s portable door control to
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`enroll a fingerprint or fingerprint movement indicating duress that both authenticates
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`the user by providing access and also sends out a silent security alert to authorities.
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`(Ex. 1003, ¶¶ 167-171). Requiring a user to perform two operations would increase
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`the risk that an assailant stop a user from indicating they are under duress and
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`provides more opportunity for user error.
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`6.
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`I also note that Mathiassen’s portable door control is relatively small in
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`form factor, as shown in Fig. 8 of Mathiassen, and that adding a press button would
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`have required additional space on the form factor along with additional internal
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`wiring and hardware within the key fob. Contrastingly, the proposed modifications
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`of the petition would not require such additional hardware, as I discussed in my
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`original declaration. (Ex. 1003, ¶¶ 165, 167 (regarding modifying Mathiassen to
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`include McKeeth’s duress and alert attributes), ¶¶ 224-225 (regarding modifying
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`Mathiassen to include Anderson’s durational detection). Modifying Mathiassen to
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`output a duress attribute simply requires modifying programming that is already
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`included in the portable door control. (Ex. 1003, ¶¶ 165, 167). Namely, enrolling a
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`second finger or different fingerprint movement sequence and including a duress
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`command in the command table that is output when the second fingerprint or
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`fingerprint movement is provided by the user. Id. Modifying Mathiassen to detect
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`the duration of each touch and the number of touches requires modifying already-
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`existing software (i.e., programming the translation software to count the number
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`and duration of touches in the touch/no-touch series). (Ex. 1003, ¶ 224).
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`7.
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`Dr. Easttom, at ¶ 61 of his Declaration, discusses my opinions at Ex.
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`1003, ¶ 222. In my opinion, Dr. Easttom is misstating my opinions at Ex. 1003, ¶
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`222. In particular, I do not opine that a push button would be easier than modifying
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`Mathiassen, as Dr. Easttom appears to opine. Instead, my original opinion was that
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`a series of presses on a fingerprint sensor would be simpler to input than directional
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`movements on that same fingerprint sensor. (Ex. 2013, ¶ 61; Ex. 1003, ¶¶ 222-223).
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`8.
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`I note that Dr. Easttom opines a POSITA would not have been
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`motivated to modify Mathiassen to include Anderson’s detection of the duration
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`because a push button would have been “a simpler combination[.]” (Ex. 2013, ¶¶
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`77-80). However, for the same reasons discussed above, a POSITA would have
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`understood that separating the biometric authentication from the durational detection
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`of the entries of an input (e.g., button presses) would not have achieved Mathiassen’s
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`goal of addressing the “key issue” of car system security; namely, to prevent
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`unauthorized users from accessing the vehicle. See ¶¶ 4-6. Additionally, requiring a
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`user to perform two different input procedures (i.e., one on the biometric sensor and
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`another on a push button) would have further complicated the user’s input
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`experience and provided more room for error in entering the input. See ¶ 5. As Dr.
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`Easttom agreed, creating a quick and easy entry system is vital in portable
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`electronics, and making user manipulation of such entry system “easy was a key
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`feature.” (Ex. 2013, ¶ 58 (citing Ex. 1003, ¶ 229)). A POSITA would have
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`understood two separate input operations to add complexity and slow down the input
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`process for a user, and thus a POSITA would not have found including a push button
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`in Mathiassen to be a simpler solution. Instead, a POSITA would have been
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`motivated and found it obvious to modify Mathiassen’s portable control to detect
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`the durations of each of Mathiassen’s fingerprint representations forming a touch
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`operation, as I discussed in my original declaration. (Ex. 1003, ¶¶ 220-225).
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`B. Mathiassen and the Claimed “Series of Entries of the Biometric
`Signal”
`As I discussed in my original declaration (Ex. 1003), Mathiassen
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`9.
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`teaches receiving a “series of entries of the biometric signal.” (Ex. 1003, ¶ 208).
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`Specifically, Mathiassen teaches receiving “a series of consecutive fingerprint
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`representations” that are generated by the fingerprint sensor signal processing and
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`pre-processing block (5C) of the portable control. (Ex. 1003, ¶ 205 (citing Ex. 1004,
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`[0192])). Mathiassen expressly teaches “omni-directional finger movements” are
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`“obtained” from analyzing the fingerprint representation series via movement
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`analyzing software. Id. Mathiassen’s teachings indicate the omni-directional finger
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`movements and series of fingerprint representations are not “distinct,” as Dr.
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`Easttom opines, because the series of “fingerprint representations” are analyzed to
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`obtain the measured omni-directional finger movements. (Ex. 2013, ¶ 53). This
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`teaching of the movement analyzing means determining the omni-directional finger
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`movements from the series of fingerprint representations confirms Mathiassen
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`teaches “receiving a series of entries of the biometric signal,” as claimed.
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`10.
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`In my opinion, Mathiassen’s collective teachings inform a POSITA that
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`Mathiassen’s omni-directional
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`finger movements
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`comprising
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`fingerprint
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`representations are a “series of entries of the biometric signal,” because the
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`movement analyzing means determines the finger movements from analyzing the
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`series of fingerprint representations. Indeed, as I discussed in my original declaration
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`(Ex. 1003) at ¶ 208, a POSITA would reasonably understand these omni-directional
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`finger movements formed by the series of fingerprint representations as “a series of
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`fingerprint movements” (emphasis added).
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`11. Mathiassen’s omni-directional movements that are formed by the series
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`of fingerprint representations are then categorized based on a predefined set of finger
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`movement sequences (e.g., touch/no touch). A command table “is used to translate
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`the categorized finger movements into control signals” for controlling the device.
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`(Ex. 1003, ¶ 205 (citing Ex. 1004, [0192])). In other words, the omni-directional
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`finger movements comprising the series of fingerprint representations are translated
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`(based on the categorization) to a particular command that sends out a control signal.
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`(Ex. 1003, ¶ 206). Mathiassen’s translation means translating the omni-directional
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`movements to a command in the command table further teaches mapping the series
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`of fingerprint representations forming the omni-directional movements (i.e., “series
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`of entries of the biometric signal”) to an “instruction,” as claimed.
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`12. Dr. Easttom opines the “fingerprint sensor” of Mathiassen is not “acting
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`like a fingerprint sensor” because the translation software is working in conjunction
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`with the fingerprint sensor to track the “omni-directional finger movements[.]” (Ex.
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`2013, ¶ 53). Dr. Easttom does not discuss Mathiassen’s teachings that the fingerprint
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`sensor captures a series of fingerprint representations that form the omni-directional
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`movements determined via the movement analyzing program. (Ex. 1004, [0192]
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`(teaching the “series of consecutive fingerprint representations” are “generated by
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`the fingerprint sensor signal capturing and pre-processing block”)). Thus, the
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`fingerprint sensor is still “acting” as a fingerprint sensor because the fingerprint
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`minutiae data is still captured by the fingerprint sensor in conjunction with tracking
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`the omni-directional finger movements on the fingerprint sensor. (Ex. 1003, ¶ 128
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`(opining the captured and stored fingerprint minutiae data generated by the pre-
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`processing block are biometric signals)).
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`13.
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`I also note that Dr. Easttom seems to agree that code that receives the
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`series of entries of the biometric signal and code that performs further processing on
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`those biometric signal entries (e.g., characterizing the series) meets the claim
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`language of “receive a series of entries of the biometric signal.” (Ex. 1089, 43:24–
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`44:21 (discussing ’705 Patent’s description of source code for receiving a series of
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`entries of the biometric signal and source code for determining at least one of the
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`number of entries and duration of each entry)). Thus, the ’705 Patent, per Dr.
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`Easttom, describes a similar process as disclosed in Mathiassen of receiving each
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`fingerprint representation on a fingerprint sensor, analyzing the movement of the
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`finger on the fingerprint sensor, and determining the command based on the
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`collective fingerprint representations that form the series.
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`C. Mathiassen Is “Computer Art”
`14.
`Patent Owner argues a POSITA would not have looked to modify
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`Mathiassen with McKeeth or Anderson’s teachings for solving a problem in
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`Mathiassen’s car locking system because McKeeth and Anderson are “computer art”
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`and “do[] not teach an automotive embodiment[.]” (Paper 17, Patent Owner
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`Response, 20-21, 29-30. However, a POSITA would have considered Mathiassen as
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`directed to “computer art,” because the car locking system includes a “central car
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`computer” that is implemented in providing secure biometric access to a user. (Ex.
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`1003, ¶¶ 84-85 (citing Ex. 1004, [0148-0149]). Indeed, Mathiassen teaches the
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`central car computer may decrypt the encrypted open door command transmitted by
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`the portable door control and relay the authenticated, re-encrypted command to the
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`door locks to provide the user access. (Ex. 1004, [0187-0188]). Thus, the central car
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`computer controls the access to Mathiassen’s controlled item (i.e., car door locks).
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`Additionally, Mathiassen teaches the car locking system employs computing
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`elements, such as processors, when performing the biometric recognition and
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`provision of access. (Ex. 1003, ¶¶ 84-85 (citing Ex. 1004, [0178-0188])).
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`15. Additionally, Mathiassen, McKeeth, and Anderson are all related to
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`accessing a secured item, such as a door. And all three references use fingerprint
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`recognition as a means for securing access to the secured item. Regarding Anderson,
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`I note that Dr. Easttom opines Anderson “disavows” fingerprint recognition, but I
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`disagree. (Ex. 2013, ¶¶ 67, 72). Anderson, 1:51-58 notes that fingerprint recognition
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`requires specialized hardware and software, but here, Mathiassen already includes
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`the hardware and software for fingerprint recognition, so this is certainly not a
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`hindrance to combining the references. More notably, Anderson, 7:4-11 even
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`provides an “exemplary embodiment” that utilizes fingerprint recognition, so in my
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`opinion, Anderson also is directed to accessing a secure item, such as a door, via
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`fingerprint recognition (along with other access code types). Because all three
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`references relate to accessing secure items, such as doors, using computers
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`employing fingerprint recognition, it is my opinion Mathiassen’s embodiment of the
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`central car computer controlling access to the car door locks is, much like McKeeth
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`and Anderson, in the field of “computer art.” I do not see a “major distinction”
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`between the fields of the references. (Paper 17, Patent Owner Response, 21).
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
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`D.
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`Claims 1(d1)-1(d3)
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`16. As an initial matter, I note that Dr. Easttom appears to misstate the
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`mapping from the Petition and my corresponding opinions regarding claim
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`limitations 1(d1)-1(d3). For purposes of completeness, this paragraph summarizes
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`my opinion. First, Mathiassen’s portable control receives a series of fingerprint
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`representations that form the touch/no-touch movements. (Ex. 1003, ¶¶ 204-210).
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`The series is detected by the duration of each touch and the number of touches, as
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`taught by Anderson. Id. at ¶¶ 220-225. As discussed above, Mathiassen teaches the
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`finger movements (i.e., touch/no touches) comprising the series of fingerprint
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`representations are then categorized and translated to a specific command in a
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`command table. See ¶¶ 11. Thus, the series of fingerprint representations forming
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`the touch/no-touch movements are translated to a specific command in a command
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`table (i.e., “mapping said series into an instruction”). (Ex. 1003, ¶¶ 226-230). Based
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`on Mathiassen’s teachings that an administrator can initiate enrollment of a user’s
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`fingerprints and the car owner/administrator may enroll other users, a POSITA
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`would have found it obvious to include an enrollment command in Mathiassen’s
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`command table. (Ex. 1003, ¶¶ 231-145). The enrollment command is translated from
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`the car owner/administrator’s series of fingerprint representations. Id. And the
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`fingerprint representations comprise the series of touch/no-touches, further modified
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`by Anderson’s duration of each touch and the number of touches. Id. The enrollment
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`Supplemental Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,665,705
`command then initiates generation and storage of master minutiae tables for a new
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`user’s fingerprint (i.e., “populate the database according to the instruction”). Id.
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`III. CONCLUSION
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`I declare that all statements made herein of my knowledge are true, and that
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`all statements made on information and belief are believed to be true, and that these
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`statements were made with the knowledge that willful false statements and the like
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`so made are punishable by fine or imprisonment, or both, under Section 1001 of Title
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`18 of the United States Code.
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`Date:
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`By:
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`Andrew Sears, Ph.D.
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