`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`PATENT TRIAL AND APPEAL BOARD
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`
`
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`APPLE INC.,
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner
`
`
`
`CASE: IPR2022-00602
`U.S. PATENT NO. 9,665,705
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`
`
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`PATENT OWNER SUR-REPLY
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`
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`TABLE OF CONTENTS
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`I.
`II.
`
`C.
`
`D.
`
`Introduction ...................................................................................................... 1
`Discussion ........................................................................................................ 2
`A.
`The Procedural Posture of the Proceeding ............................................ 2
`B.
`Impermissible Hindsight is Required for the Mathiassen/Anderson
`Combination .......................................................................................... 3
`There Were Simpler Solutions Available to a Skilled Person Than
`the Mathiassen/Anderson Combination ................................................ 4
`1. Mathiassen’s Enrollment of Additional Fingerprints ................. 5
`2.
`The Use of a Mechanical Push Button is Simpler ...................... 6
`The Mathiassen/Anderson Combination Does Not Result in the
`“Duration” Limitation ......................................................................... 20
`E. Miscellanea ......................................................................................... 22
`1.
`“Accessibility Attribute” ........................................................... 22
`2.
`“Populating the Database” ........................................................ 22
`III. Conclusion ..................................................................................................... 24
`
`
`
`i
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`
`LIST OF EXHIBITS
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`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
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`2003
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`2004
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`2005
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`2006
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`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`HMD Final Invalidity Contentions, Chart B15 – Mathiassen,
`dated March 16, 2022
`
`Apple Inc. – Final Invalidity Contentions dated March 16, 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
`
`Defendant Apple Inc.’s Notice of Motion and Motion to Stay
`Pending Inter Partes Review, 5:22-cv-02553 (Dkt. 119) (June
`14, 2022)
`
`HMD Global Oy – Final Invalidity Contentions dated March 16,
`2022
`
`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
`
`ii
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`
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`
`Exhibit No.
`2013
`
`Description
`Declaration of William C. Easttom II (Chuck Easttom) Ph.D.,
`D.Sc.
`
`2014
`
`2015
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`
`
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`CV of Dr. Chuck Easttom
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`Final Deposition Transcript of Dr. Andrew Sears, dated May
`19, 2023
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`
`
`iii
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`
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`INTRODUCTION
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`By Petitioner’s own admission, which it reiterates in its Reply, it needs the
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`I.
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`
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`Mathiassen/Anderson combination to satisfy the “duration” limitation of the
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`challenged claims, as Mathiassen by itself does not satisfy that limitation. As
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`explained herein, there is simply no rationale for combining these references.
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`Among other things, Mathiassen alone already provides for the additional command
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`functionality relied upon by Petitioner as the purported rationale for the proposed
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`combination. The only reason for combining these references, then, is to support
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`Petitioner’s invalidity challenge, i.e., from the use of hindsight reconstruction. This
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`alone is fatal to the Petition.
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`
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`However, as it turns out, not even Petitioner’s expert, Dr. Andrew Sears,
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`believes that the Mathiassen/Anderson combination, were it to have been made,
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`would have yielded a “duration” for each entry of a biometric signal series – in this
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`case a series of entries of fingerprint data. There are other significant problems with
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`the Petition that have been magnified since Petitioner filed its Reply. However, the
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`lack of the claimed “duration” limitation in the sole challenge ground urged by
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`Petitioner is sufficient to derail the invalidity challenge based upon that ground.
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`1
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`
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`II. DISCUSSION
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`A. The Procedural Posture of the Proceeding
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`
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`In seeking institution, the Petitioner proposed that the claimed biometric
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`signal “being characterised according to at least one of the number of said entries
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`and a duration of each said entry” be construed as including “a duration of each said
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`entry” – the same construction as the district court issued for that limitation. Paper
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`No. 1 at 5-6, 31; Ex. 1077 at 2. The Board adopted that construction for purposes of
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`institution. Paper No. 11 at 13. Thus, to be successful in its challenge to the subject
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`claims, Petitioner must demonstrate that its single prior art challenge ground satisfies
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`this “duration” requirement, i.e.., that there is a “duration” for each entry of the
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`biometric signal series.
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`
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`Petitioner has repeatedly acknowledged, including most recently in its Reply,
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`that Mathiassen, the principal reference in its single challenge ground, does not teach
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`“determining a duration of each entry.” Paper No. 1 at 3. See also id. at 33; Paper
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`No. 20 at 1. Petitioner therefore must look to Anderson for its teaching of “inputting
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`an access code including fingerprint presses of varying duration.” Paper No. 1 at 3.
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`See also id. at 33-34; Paper No. 20 at 15. According to Petitioner, a skilled person
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`“would have been motivated and found it obvious to modify Mathiassen’s processor
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`2 of the portable control…to characterize a series of pressure pulses by the number
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`of pulses and duration of each pulse, as taught by Anderson.” Paper No. 1 at 36;
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`2
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`Paper No. 20 at 1, 7, 11, 13. The purpose of adding Anderson’s variable pressure
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`pulses, according to Petitioner, is to enable “a requested function via a series of
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`fingerprint pulses of varying durations.” Paper No. 1 at 40.
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`
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`As shown herein, Petitioner’s position in this regard suffers from two fatal
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`flaws: 1) apart from impermissible hindsight, there is no rationale for modifying
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`Mathiassen in the manner Petitioner proposes; and 2) even if the combination were
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`to have been made, such combination would still lack the “duration” requirement.
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`Either flaw warrants finding the challenged claims patentable.
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`B.
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`Impermissible Hindsight is Required for the Mathiassen/Anderson
`Combination
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`
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`By now, it is axiomatic that the Board “must avoid ‘hindsight bias and must
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`be cautious of arguments reliant upon ex post reasoning’” in ruling on the purported
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`obviousness of a claim. See, e.g., Pacific Market Int’l, LLC v. Ignite USA, LLC,
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`IPR2016–01875, Paper No. 32 (PTAB March 37, 2018) at 19, quoting Arendi
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`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016), cert. denied sub
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`nom. Google Inc. v. Arendi S. A. R. L., __ U.S. __, 137 S. Ct. 1329 (2017) (quoting
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). In other words, it is
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`impermissible to use “hindsight to pick and choose elements from” the prior art
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`“without sufficient reasoning to construct a device according to” a challenged claim.
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`Pacific Market, 2018 WL 1582299 at *7.
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`3
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`U.S. Patent No. 9,665,705
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`In urging that Mathiassen be modified to include Anderson’s variable pressure
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`
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`pulses for additional command functionality, there are two clear indicia that Apple
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`employed hindsight reconstruction: 1) a person of skill had simpler solutions on the
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`face of Mathiassen itself for such additional command functionality in the form of
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`registering additional fingerprints, and 2) the automotive key fob taught in
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`Mathiassen is too dissimilar from the computer art described in Anderson for a
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`skilled person to have modified the teachings of the former with the latter reference.
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`C. There Were Simpler Solutions Available to a Skilled Person Than
`the Mathiassen/Anderson Combination
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`
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`There are two simpler solutions for the additional command functionality that
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`Apple and its expert put forth for the purported rationale for modifying Mathiassen
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`with Anderson’s series of variable pressure pulses: 1) using Mathiassen’s own
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`teachings regarding enrolling additional fingerprints for additional command
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`functionality; and 2) the use of a mechanical push button for the entry of pulses, as
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`opposed to modifying a fingerprint sensor therefor. Paper No. 17 at 29-32. Of
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`course, neither alternative gives Petitioner the claimed “duration” requirement
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`essential to its invalidity challenge, which is undoubtedly the reason that Petitioner
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`eschews both.
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`4
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`
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`1. Mathiassen’s Enrollment of Additional Fingerprints
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`In his supplemental declaration, Petitioner’s expert, Dr. Sears, reiterates that
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`Mathiassen’s movement analyzing means already determines “the omni-directional
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`finger movements from the series of fingerprint representations.” Ex. 1090, ¶ 9. See
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`also Ex. 1004, para. [0192]. He has also acknowledged that Mathiassen already
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`teaches registering a second fingerprint for additional command functionality such
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`as sending a duress signal, i.e., the very same rationale he cites for combining
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`Mathiassen with Anderson. Ex. 1003, ¶ 165; Ex. 2015 at 48:22-8. In fact, Dr. Sears
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`admitted that simply availing oneself of Mathiassen’s teaching of a second
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`fingerprint registration for additional command functionality would be a “relatively
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`straightforward solution” and “simpler”
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`than modifying Mathiassen with
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`Anderson’s series of variable pressure pulses. Ex. 2015 at 50:9-51:3.
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`
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`Even Petitioner appears to agree with Patent Owner on this point – “CPC even
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`admits ‘if the sole purpose of modification were to enable sending additional signals,
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`Mathiassen already provides the mechanism for doing so without modifications
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`taught in other references.’” Paper No. 20 at 8 (emphasis in original). Indeed Patent
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`Owner does so “admit,” as this admission proves that there is no motivation to
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`combine Mathiassen with anything, let alone with Anderson. See R.J. Reynolds
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`Vapor Co. v. Fontem Holdings 1 B.V., IPR2016-01692, Paper No. 45, 26 (PTAB
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`5
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`Mar. 2, 2018). That lack of motivation leaves Petitioner short of the “duration”
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`limitation required for its obviousness challenge.
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`
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`In light of the foregoing, there is insufficient rationale for modifying
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`Mathiassen with Anderson’s series of finger taps of variable duration to accomplish
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`precisely the same function as Mathiassen already performs. Id.; see also Kinetic
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`Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d. 1342, 1369 (Fed. Cir. 2012); see
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`also Apple Inc. v. Cellular Commc’ns Equip., LLC, IPR2015-00576, Paper No. 7,
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`12 (PTAB June 12, 2015); see also Norman Int’l, Inc. v. Hunter Douglas, Inc.,
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`IPR2014-00282, Paper No. 8, 16 (PTAB June 20, 2014). The only possible
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`explanation for Petitioner’s proposed combination is its impermissible use of
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`hindsight reconstruction. See R.J. Reynolds, IPR2016-01692, Paper No. 45 at 19;
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`see also Kingston Tech. Co., Inc. v. Memory Techs., LLC, IPR2019-00651, Paper
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`No. 9, 38 (PTAB Aug. 30, 2019); see also Nautilus Hyosung Inc. v. Diebold, Inc.,
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`IPR2016-00633, Paper No. 9, 21-22 (PTAB Aug. 22, 2016). This alone warrants
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`denying the Petition, as the “duration” limitation is part of every challenged claim.
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`2.
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`The Use of a Mechanical Push Button is Simpler
`
`a.
`
`The Prior Art Cited by Dr. Sears Promotes the Use of a
`Push Button
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`
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`Patent Owner’s expert opined that a skilled person would have, if anything,
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`modified Mathiassen to indicate duress with a push button because such a device is
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`6
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`“easy to install” and a “simple mechanical feature.” Ex. 1090, ¶ 4, citing Ex. 2013,
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`¶ 61. Neither Petitioner nor its expert takes issue with the ease of a push button’s
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`installation. Dr. Sears only contests the simplicity of a user performing “two
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`operations at two places on [Mathiassen’s] portable door control.” Ex. 1090, ¶ 5.
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`Dr. Sears posits in his Supplemental Declaration that “a user presenting their [sic]
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`fingerprint and having to separately press a push button would not be as discreet as
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`indicating duress in the same presented fingerprint.” Id. (emphasis added).
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`
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`As Dr. Sears acknowledged, his original declaration did not contain an
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`opinion that a separate push button would be somehow undesirable. Ex. 2015 at
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`19:15-18, 27:15-19. And, during his first deposition, Dr. Sears could not
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`definitively answer the easier modification to Mathiassen as between a push button
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`and a fingerprint sensor modified to receive pressure pulses. See Paper No. 17 at 25,
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`citing Ex. 2012 at 64:14-18. In fact, he only first thought of the push button issue
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`during his original deposition, i.e., after he had prepared his original declaration. Ex.
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`2012 at 65:9-14.
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`
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`Dr. Sears’ new opinion regarding the need for discretion as concerns push
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`buttons is improperly new. Because an inter partes review is an expedited
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`proceeding, it brings with it “an obligation for Petitioners to make their case in their
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`petition to institute.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
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`7
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`F.3d 1359, 1369 (Fed. Cir. 2016). See also 35 U.S.C. §§ 42.104(b)(5), 311(b) &
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`312(a)(3) (the scope of, and evidence used in, an inter partes review).
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`Further, Petitioner does not reference at all Dr. Sears’ opinions regarding this
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`need for discretion disincentivizing the use of a push button in the Reply. See Paper
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`No. 20 at 7-11. Rather, Petitioner cites wholesale to seven paragraphs from Dr.
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`Sears’ Supplemental Declaration. Id. at 10, citing Ex. 1090, ¶¶ 2-8. Rule 42.6(a)(3)
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`prohibits the incorporation by reference of, inter alia, expert opinions. See 3M Co.
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`v. Evergreen Adhesives, Inc., 860 Fed. Appx. 724, 728 (Fed. Cir. 2021) (“3M’s
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`arguments were present in the briefing prior to the Final Written Decision only in
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`the form of improper incorporation by reference to Dr. Prud’homme’s testimony”).
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`Petitioner’s incorporation of Dr. Sears’ opinion regarding discretion by reference
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`was improper. Id.
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`
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`As Dr. Sears’ opinion on the discretion required for duress signals stood alone
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`against Dr. Easttom’s opinion regarding a push button being a simpler modification
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`to Mathiassen, and because such opinion should be excluded for the foregoing two
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`reasons, Dr. Easttom’s opinion regarding such modification to Mathiassen is
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`unrebutted. This simpler modification disproves the rationale for modifying
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`Mathiassen’s fingerprint sensor with Anderson’s variable pressure pulses.
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`
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`Petitioner, for its part, contends that, “[b]ecause Mathiassen is concerned with
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`blocking unauthorized users, a simple push button (with no biometric identification)
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`8
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`would not have blocked un-authorized use, and thus a POSITA would not have been
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`motivated to include a push button, as CPC purports.” Paper No. 20 at 10. Patent
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`Owner, in proposing the push button alternative to Mathiassen, never argues
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`replacing Mathiassen’s fingerprint sensor with a push button. Rather, Patent Owner
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`argues for the simpler addition of a push button to Mathiassen’s structure, which
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`already includes a fingerprint sensor.1 See, e.g., Paper No. 17 at 23 (“Mathiassen
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`could have been modified by adding a physical push button to generate a duress
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`signal” (emphasis added)). Thus, Petitioner’s argument regarding “no biometric
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`information” is baseless.
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`
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`If the Board were inclined to consider Dr. Sears’ opinion on the push button
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`modification to Mathiassen, it is worth noting that he cites to a single reference in
`
`his Supplemental Declaration – Zingher – as exemplifying the need for discretion.
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`See Ex. 1090, ¶ 5. Zingher expressly teaches that a biometric identifier emergency
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`1 Even Dr. Sears understood Patent Owner to be proposing the addition of a push
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`button to Mathiassen. See Ex. 1090, ¶ 8 (“Additionally, requiring a user to perform
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`two different input procedures (i.e., one on [Mathiassen’s] 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” (emphasis
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`added)).
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`9
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`“could also be triggered by pressing a concealed button, such as a button near a
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`fingerprint scanner,” i.e., the very embodiment that Dr. Sears denigrates as being
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`insufficiently discrete. See Ex. 1037, ¶ 50 (emphasis added). Shockingly, when Dr.
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`Sears was asked to confirm that fact, Petitioner’s counsel instructed him not to
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`answer:
`
`Q: You did opine on the undesirability of having an pushbutton
`separate from the fingerprint scanner, correct?
`A:
`I opined on the idea that moving your finger between things is
`less discrete than keeping your finger on the fingerprint scanner.
`Q: And the ‘things’ in this circumstance were a fingerprint sensor
`and a pushbutton, right?
`A: Yes.
`Q: But that is precisely the configuration that Zingher teaches in
`Paragraph 50, correct?
`MS. BAILEY: I’m going to instruct the witness not to answer the
`question.
`Ex. 2015 at 15:14-16:8 (emphasis added).
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`
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`Apart from the instruction being entirely improper (see, e.g., Microsoft Corp.
`
`v. DirectStream, LLC, IPR2018-01594, Paper No. 48, 5 (PTAB Nov. 13, 2019)), it
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`evidences Petitioner’s recognition of the clear inconsistency between Dr. Sears’
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`opinion and the prior art he cites. But the problems with his opinion do not end
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`there. Mathiassen itself also teaches the use of hardware separate from a fingerprint
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`sensor to register finger movements for additional security:
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`10
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`As an additional safety feature the portable or embedded device could
`be equipped with means for the input of code or commands . . .
`Movement analyzing means, in the form of a hardware or a software
`movement analyzing program module analyzes the obtained series of
`fingerprint representations to obtain a measure of the omni-directional
`finger movements across the sensor in two dimensions.
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`Ex. 1004, ¶ [0192]] (emphasis added).
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`
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`Again, recognizing the obvious inconsistency between Dr. Sears’ opinions
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`regarding a separate push button and the Petitioner’s principal reference, Petitioner’s
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`counsel attempted to impede the examination, this time with the following coaching
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`comment on the record:
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`Counsel, your questions are again getting outside of the supplemental
`declaration. I don’t see anything in Paragraph 6 that you just mentioned
`of the supplemental dec that relates to the safety feature described in
`Paragraph 192 [of Mathiassen].
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`Ex. 2015 at 31:12-17.
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`
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`Dr. Sears took the bait so obviously provided by counsel – “I guess I’ll ask
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`can you help me understand where in Paragraph 6 [of the Supplemental Declaration],
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`what we’re dealing with.” Id. at 31:21-32:1. He continued – “[s]o it would be very
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`useful to know what part of my supplemental declaration I’m being asked about.”
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`Id. at 32:7-9.
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`11
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`Even equipped with this dodge, however, Dr. Sears was forced to admit that
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`
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`Mathiassen expressly teaches the addition of a movement analyzing means in the
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`form of hardware in addition to the fingerprint sensor already contained therein, i.e.,
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`a second piece of security hardware that Dr. Sears had characterized as insufficiently
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`discrete. Ex. 2015 at 36:18-37:14, 38:8-11. As an aside, this teaching from
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`Mathiassen also belies Dr. Sears’ opinion that Mathiassen’s key fob was too small
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`to accommodate additional hardware, such as a push button. See Ex. 1090, ¶ 6; Ex.
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`2015 at 38:8-11 (Dr. Sears admits that Mathiassen “teaches that that hardware or
`
`software could be added to among other things the Figure 8 key fob”).
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`
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`Dr. Sears originally gave as an example of “silent” alerting in the prior art the
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`ONSTAR™ “three button system” – two more buttons than the simple push button
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`modification
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`to Mathiassen
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`that Patent Owner proposes
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`in
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`lieu of
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`the
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`Mathiassen/Anderson combination forming the foundation of Petitioner’s sole
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`challenge ground. These examples, that Dr. Sears himself references, belie the
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`notion that two separate devices are insufficiently discrete for indicating duress.
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`Coupled with the undisputed ease of installing a push button on Mathiassen’s key
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`fob counters any suggestion from Petitioner that Anderson’s variable pressure
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`sensing is an obvious modification to Mathiassen.
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`Finally, if one were truly concerned with discretion, then modifying
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`Mathiassen’s fingerprint sensor with Anderson’s variable touch sensing would be
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`12
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`truly problematic. The following is a sample finger press pattern from Anderson
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`cited by Petitioner:
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`
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`Paper No. 1 at 35, citing Ex. 1006, Fig. 4A.
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`
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`If one were truly worried about being discovered by an assailant while sending
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`a distress signal, i.e., Dr. Sears’ reasoning for avoiding a push button, then the seven-
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`stroke finger press sequence depicted in Anderson is hardly a discrete solution. This
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`is especially the case, given Dr. Sears’ opinion that, “[f]or [Anderson’s] codes to
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`match, at least some (likely all) of the user’s entered finger pressure pulses and a
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`duration of the pulse would need to be characterized for matching against the stored
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`code.” Paper No. 1 at 35, citing Ex. 1003, ¶ 219.
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`b.
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`The Problems Associated with Modifying Mathiassen’s
`Fingerprint Sensor
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`
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`Putting aside the lack of any motivation to combine Mathiassen and
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`Anderson, there are problems inherent in this proposed combination. To begin with,
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`however, Petitioner argues that modifying Mathiassen to output a duress signal
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`would be “far simpler” “by simply programming the system to recognize an inputted
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`13
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`fingerprint representation indicating a duress condition.” Paper No. 20 at 8. This
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`misses the point. The actual challenge ground relied upon by Petitioner involves the
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`combination of Mathiassen and Anderson - not the modification of Mathiassen in a
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`vacuum. And, as noted above, such modification of Mathiassen by itself lacks the
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`claimed “duration” limitation.
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`
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`So, to render obvious the challenged claims, Mathiassen clearly requires
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`modification to incorporate Anderson’s variable pressure pulses. Mathiassen teaches
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`a portable device with “a fingerprint sensor,” on the one hand (Ex. 1004, ¶ [0147]),
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`and “[m]ovement analyzing means, in the form of a hardware or a software
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`movement analyzing program module” for analyzing “the obtained series of
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`fingerprint representations to obtain a measure of the omni-directional finger
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`movements across the sensor in two dimensions,” on the other hand (id., ¶ 192).
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`Anderson, in turn, teaches “inputting an access code by temporally varying the
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`amount of pressure applied to the touch interface,” on the one hand (Ex. 1006, 2:4-
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`7), and “an optical scanner or thermal sensor for collecting an image of the user’s
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`fingerprint as the pressure access code is entered,” on the other hand (id., 7:5-7). In
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`other words, Mathiassen’s fingerprint sensor cannot analyze movement, and
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`Anderson’s touch interface cannot collect fingerprints, unless each is modified to
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`add the other’s functionality for doing so.
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`14
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`As explained above, Petitioner agrees that modification of Mathiassen is
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`
`
`necessary for the “duration” limitation, but argues that bodily incorporation of
`
`Anderson’s hardware into Mathiassen’s teachings is unnecessary to accomplish such
`
`modification. Paper No. 20 at 14-15. To be clear, Patent Owner does not contend
`
`that the modification to Mathiassen must take the specific form of Anderson’s
`
`hardware. However, Mathiassen must be equipped with something allowing for the
`
`registration of the “touch/no touch” pressure sensing code taught by Anderson. To
`
`address this issue, Petitioner points to Mathiassen’s “necessary software for
`
`recognizing fingerprint representations of finger movement sequences on the
`
`fingerprint sensor,” i.e., where on the sensor a finger happens to be at various times.
`
`See Paper No. 20 at 15 (emphasis added). Petitioner fails to explain how movement
`
`sensing equates to sensing touch duration.
`
`
`
`And, when asked what modifications would need to be made to Mathiassen
`
`in light of Anderson, Dr. Sears responded as follows:
`
`So I would think that you would be -- it would be a combination -- well,
`probably be a combination of the movement analyzing means because
`that's where you’re going to be getting the fingerprint representation
`information and converting it into the signals that you’re interested in
`and then the translation means are going to take those signals and
`translate those into the commands.
`
`Ex. 2015 at 61:12-20.
`
`15
`
`
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`This vague response regarding what would “probably” be required follows
`
`
`
`upon the conclusory response Dr. Sears previously gave to friendly questioning that
`
`modifications to Mathiassen to accommodate Anderson’s variable touch sensing
`
`would be “very minor.” See Paper No. 17 at 25, n.6, citing Ex. 2012 at 98:19-22.
`
`In contrast, Patent Owner’s expert opined that “combining Mathiassen with
`
`Anderson would have been difficult for a POSITA and the POSITA would not have
`
`an expectation of success, given that Anderson is not biometric (and in facts
`
`denigrates biometric sensors) while Mathiassen to the extent it provides binary
`
`access to a device, is biometric.” Ex. 2013, ¶ 72. Even absent Dr. Easttom’s opinion,
`
`however, Petitioner cannot carry its burden on the obviousness issue if it can only
`
`point to the conclusory opinion of its own expert. See TQ Delta, LLC v. Cisco
`
`Systems, Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“conclusory expert testimony
`
`is inadequate to support an obviousness determination”).
`
`
`
`Petitioner also argues that “[o]bviousness does not require the proposed
`
`combination be ‘preferred[] or “optimal[]”’ over an allegedly simpler push button.”
`
`Paper No. 20 at 11, quoting Draftkings Inc., v. Interactive Games LLC, IPR2020-
`
`01107, Paper No. 39 at 52-53 (PTAB Jan. 4, 2021), citing In re Fulton, 391 F.3d
`
`1195, 1201-02 (Fed. Cir. 2004)). However, this is not simply a situation in which
`
`the prior art offered multiple alternatives. See Fulton, 391 F.3d at 1201. Rather, the
`
`prior art here, and Anderson in particular, denigrates the use of fingerprint sensors
`
`16
`
`
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`as requiring “specialized equipment” and requiring “sophisticated software for
`
`implementation.” Ex. 1006 at 1:54-58.
`
`
`
`Dr. Sears responds to this teaching from Anderson that “Mathiassen already
`
`includes the hardware and software for fingerprint recognition, so this is certainly
`
`not a hindrance to combining the references.” Ex. 1090, ¶ 15. The question is not,
`
`however, what Mathiassen already contains, but rather what modifications to
`
`Mathiassen a skilled person reading Anderson would obviously make. Indeed, it is
`
`Petitioner’s position that a skilled person would have “found it obvious to modify
`
`Mathiassen’s processor 2 of the portable control . . . to characterize a series of
`
`pressure pulses by the number of pulses and duration of each pulse, as taught by
`
`Anderson.” Paper No. 1 at 36.
`
`
`
`In point of fact, Anderson teaches “a touch sensitive digitizer pad” for
`
`registering touches – a device additional to the “optical scanner” and “thermal
`
`sensor” Anderson mentions in passing “for collecting an image of the user’s
`
`fingerprint.” See Ex. 1006, 7:5-8. As Dr. Easttom opines, the touch pattern entered
`
`on Anderson’s digitizer pad is “non-biometric.” Paper No. 17 at 28, citing Ex. 2013,
`
`17
`
`
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`¶ 68. Dr. Sears apparently agrees. Ex. 2012 at 58:3-10 (Dr. Sears characterizing
`
`Anderson’s pressure and duration patterns as “knowledge-based”).2
`
`c.
`
`Even if Analogous to the ʼ705 Patent, There is No
`Motivation to Combine Mathiassen and Anderson
`
`
`
`Finally, as Patent Owner originally noted, Petitioner combines Mathiassen’s
`
`key fob from the automotive art with Anderson from the computer art. Paper No. 17
`
`at 29. Petitioner responds that, because Mathiassen’s key fob accesses a car’s
`
`computer, that embodiment is also computer art. Paper No. 20 at 12. However,
`
`when Dr. Sears first opined on this issue, he quoted Mathiassen’s teaching of “a key
`
`issue of the application of the invention to car systems is the security issue, to
`
`prevent theft or non-authorized use of the car.” Ex. 1003, ¶ 150 (emphasis added).
`
`As Dr. Sears noted, one does not “park computers anywhere.” Ex. 2015 at 56:13-
`
`17. Dr. Sears fails to explain why one, intent on solving for the theft of a car, would
`
`turn to security measures installed on a computer.
`
`
`
`Petitioner argues that, for obviousness purposes, combined references need
`
`only be analogous to the challenged patent – not to each other. Paper No. 20 at 12.
`
`However, labeling individual references as “analogous” is insufficient on its own as
`
`
`2 Dr. Sears distinguished “biometric sensors” from sensors that capture “the
`
`knowledge of an individual.” Ex. 2012 at 33:4-8.
`
`18
`
`
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`a rationale to combine them. Alstom Grid LLC v. Dominion Resources, Inc.,
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`IPR2016–00504, Paper No. 8 at 15 (PTAB July 6, 2016). Countless references may
`
`be “analogous.” However, Petitioner must come up with some rationale for
`
`combining Mathiassen and Anderson specifically, which is difficult to do when one
`
`reference relates to an automotive key fob and the other relates to computers. See
`
`Belden Inv. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).
`
`
`
`To illustrate this point further, Mathiassen teaches a computer embodiment
`
`separate from the key fob, as illustrated in Figure 1a thereof:
`
`
`
`Ex. 1004, Fig. 1a.
`
`
`
`Notwithstanding this computer embodiment, the inventors on Mathiassen did
`
`not think to include a pressure sensor designed to capture variable pressure pulses,
`
`as Anderson does. This omission from Mathiassen’s teachings regarding this
`
`computer embodiment undercuts Petitioner’s argument that such an addition to
`
`Mathiassen’s key fob would have been obvious.
`
`19
`
`
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`D. The Mathiassen/Anderson Combination Does Not Result in the
`“Duration” Limitation
`
`
`
`The challenged claims all require that the biometric signal series entries each
`
`have a “duration.” See, e.g., Ex. 1001, Claim 1. As Patent Owner has established,
`
`Anderson does not teach a durational component to a biometric signal entry. Paper
`
`No. 17 at 26-28. As noted above, Petitioner admits that “Mathiassen does not teach
`
`characterizing the series based on a ‘duration’ of each entry, and therefore Petitioner
`
`looks to Anderson’s teaching of “inputting an access code at a fingerprint sensor that
`
`is a ‘series of pressure pulses having varying durations.’” Paper No. 1 at 33-34.
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`Finally, both experts agree that the “series of pressure pulses” as taught in Anderson
`
`is not a biometric signal series. See Ex. 2013, ¶ 68 (Dr. Easttom) and Ex. 2012 at
`
`58:3-10 (Dr. Sears).
`
`
`
`Petitioner’s response on this point is to reference Patent Owner’s
`
`acknowledgement that “Anderson’s digitizer pad ‘works with’ fingerprint imaging.”
`
`Paper No. 20 at 19. Of course, “working with” fingerprint im
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