UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`
`CPC PATENT TECHNOLOGIES PTY LTD,
`
`
`
`
`Plaintiff,
`
`v.
`
`
`HMD GLOBAL OY,
`
`
`
`
`
`
`Case No.6:21-cv-00166-ADA
`
`
`
`
`
`
`
`
` Defendant.
`
`
`
`
`
`
`HMD’S INVALIDITY CONTENTIONS
`
`Defendant HMD Global Oy (“Defendant” or “HMD”) hereby provides the following
`
`disclosure of its Invalidity Contentions regarding U.S. Patent No. 9,665,705 (the “’705 Patent” or
`
`the “Asserted Patent”). These contentions are made only as to the Asserted Claims in the
`
`Infringement Contentions of Plaintiff CPC Patent Technologies Pty Ltd. (“Plaintiff” or “CPC”),
`
`which are claims 1, 10, 11, 15-17 of the ’705 Patent (collectively, the “Asserted Claims”).1
`
`Fact discovery, including third-party discovery, is still open in this case. Accordingly, these
`
`Invalidity Contentions are made without the benefit of full discovery from CPC or from third
`
`parties, including manufacturers and providers of prior art systems and technology. HMD
`
`expressly reserves the right, and states its intent, to pursue such discovery and to amend its
`
`invalidity contentions as warranted.
`
`Nothing in these contentions (or exhibits) should be construed as an admission regarding
`
`
`1 CPC has indicated that it has dropped previously asserted claims and is now asserting only claims 1, 10, 11, and
`15-17 of the ’705 patent. See Response to Defendant’s Interrogatory No. 21, served February 24, 2022; see also
`email from George Summerfield, sent March 16, 2022, indicating that CPC is no longer asserting any claims of U.S.
`Patent No. 9,269,208.
`
`CPC EXHIBIT 2007
`Apple Inc. v. CPC Patent Technologies PTY Ltd.
`IPR2022-00602
`
`Page 1 of 32
`
`

`

`infringement, either literally or under the doctrine of equivalents, or as an admission regarding
`
`HMD’s understanding of the proper scope of the Asserted Claims. Given the ambiguities in CPC’s
`
`infringement contentions and its implicit interpretation of the claims, the exemplary citations
`
`herein necessarily account for a variety of possible infringement arguments, including CPC’s
`
`apparent (and at times erroneous) interpretations of its claims. In the context of anticipation, “[t]he
`
`principle of law is concisely embodied in the truism that: ‘That which infringes if later anticipates
`
`if earlier.’” Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001). Similarly, for obviousness,
`
`“obvious variants of prior art references are themselves part of the public domain.” In re
`
`Translogic Tech., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`
`Further, although HMD expressly contends below that numerous terms in the Asserted
`
`Claims are indefinite, lack written description, and/or are not enabled, the claim charts provided
`
`herein assume the alternative and, without prejudice to those positions, identify invalidating
`
`disclosure from the identified art notwithstanding these defects in the claims.
`
`I.
`
`Priority / Benefit Date
`
`All Asserted Claims are entitled to a priority date no earlier than August 10, 2012, the
`
`actual filing date of U.S. Patent No. 9,269,208 (the “’208 Patent”). The ’705 Patent is not entitled
`
`to the benefit of the filing date of U.S. Patent No. 8,266,442 (the “’442 Patent”), nor to any earlier
`
`filing date of which the ’442 Patent claims benefit, because the ’208 Patent fails to provide a
`
`“specific reference” to the ’442 Patent as required by 35 U.S.C. § 120 and 37 C.F.R. 1.78. See
`
`Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. Cir. 2014).
`
`Even if arguendo the ’208 Patent provided a “specific reference” to the ’442 Patent, the
`
`’705 Patent would at most be entitled to the August 13, 2004 filing date of International Patent
`
`Application No. PCT/AU2004/001083, of which the ’442 Patent purports to be a National Stage
`
`
`
`2
`
`Page 2 of 32
`
`

`

`Entry. This is because Australian provisional patent application 2003904317 fails to provide a
`
`written description of the asserted claims and to enable the asserted claims.
`
`For example, each Asserted Claim includes one of the following limitations, for which the
`
`Australian provisional patent application 2003904317 fails to provide any support under 35 U.S.C.
`
`§ 119, 35 U.S.C. § 120, or 35 U.S.C. § 371: “receive 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” (’705 Patent Asserted Claims 1, 10); “receiving a series of entries of the biometric
`
`signal; determining at least one of the number of said entries and a duration of each said entry;
`
`mapping said series into an instruction; and populating the database according to the instruction”
`
`(’705 Patent Asserted Claim 11); “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; mapping said series into an instruction; [and] populating the database according to the
`
`instruction” (’705 Patent Asserted Claims 15, 16); and “receiving a series of entries of the
`
`biometric signal; determining at least one of the number of said entries and a duration of each said
`
`entry; mapping said series into an instruction; and populating the database according to the
`
`instruction” (’705 Patent Asserted Claim 17).
`
`As further example, each Asserted Claim also includes the limitation of a “secure access
`
`signal” for which the Australian provisional patent application 2003904317 fails to provide any
`
`support under 35 U.S.C. § 119, 35 U.S.C. § 120, or 35 U.S.C. § 371.
`
`As still further example, each Asserted Claim also includes the limitation of “an
`
`instruction” for which the Australian provisional patent application 2003904317 fails to provide
`
`any support under 35 U.S.C. § 119, 35 U.S.C. § 120, or 35 U.S.C. § 371
`
`
`
`3
`
`Page 3 of 32
`
`

`

`II.
`
`Invalidity By Prior Disclosure
`
`Because each Asserted Claim is entitled to a priority date no earlier than August 10, 2012,
`
`each Asserted Claim is invalid under 35 U.S.C. § 102(b) in view of the February 24, 2005
`
`publication of the specification of PCT/AU2004/001083, which is identical to the specifications of
`
`the Asserted Patent. An inventor’s own work disclosing the claimed invention, published more
`
`than one year before the filing of a subsequent application, will be invalidating prior art to any
`
`patent issuing from that application absent a proper benefit claim to an effective filing date
`
`predating the published disclosure. See Encyclopaedia Britannica, Inc. v. Alpine Electronics of
`
`Am., Inc., 609 F.3d 1345, 1347 (Fed. Cir. 2010); Baxter Intern., Inc. v. McGaw, Inc., 149 F.3d
`
`1321, 1334 (Fed. Cir. 1998); Apple Inc. v. E-Watch, Inc., No. IPR2015-00414, 2016 WL 3476867,
`
`at *10 (P.T.A.B. June 22, 2016).
`
`III.
`
`Invalidity By Prior Art
`
`HMD identifies below prior art that invalidates each of the Asserted Claims. Each of the
`
`references below (and/or the underlying products described therein) qualifies as prior art under one
`
`or more sections of 35 U.S.C. §§ 102 and/or 103.
`
`In addition to their invalidating disclosures, the patents and references provided herein may
`
`also be relied upon to show the status of the art at the relevant times, including the knowledge of
`
`persons of ordinary skill in the art and their motivations. These patents and references may also be
`
`used as secondary consideration evidence to demonstrate the obviousness of the claims, including
`
`to show contemporaneous development of the subject matter of the Asserted Claims. HMD may
`
`also rely on the background knowledge of the person of ordinary skill in the art.
`
`The identification of prior art below is not exclusive. HMD may rely upon references cited
`
`throughout this document and the attached exhibits, as well as other art that may become known
`
`
`
`4
`
`Page 4 of 32
`
`

`

`and/or relevant during the course of this or related litigation. HMD further understands that third
`
`parties may have disclosed invalidity contentions and prior art to CPC which CPC has yet to
`
`produce in this litigation. HMD incorporates all such prior art and contentions into these
`
`disclosures.
`
`HMD also incorporates as if fully set forth herein the complete file histories for the
`
`Asserted Patent and related patents and foreign counterparts, including any prior art or supporting
`
`documents cited therein. HMD may rely on the patent applicants’ admissions concerning the scope
`
`of the prior art relevant to the Asserted Patent found in, inter alia: the patents specifications, the
`
`patents prosecution histories and that of their related patents and foreign counterparts; deposition
`
`testimony of the named inventor on the Asserted Patent; and the papers filed and any evidence
`
`submitted by CPC in connection with this or any other litigation. HMD not only relies upon the
`
`prior art disclosed herein, but also relies on any commercial embodiments and accompanying
`
`literature of the various assignees that correspond to the respective disclosures found within the
`
`prior art disclosed herein. The assignees’ various and respective commercial embodiments and/or
`
`corresponding literature anticipate and/or render obvious the claims of the Asserted Patent for at
`
`least the reasons disclosed in these Invalidity Contentions and claim charts, as well as for other
`
`independent reasons found within the commercial embodiments and corresponding literature.
`
`HMD also reserves the right to rely on related patents, published applications, foreign patents or
`
`publications, and other patent documents as necessary to establish prior art status of the below
`
`references or clarify the disclosures cited.
`
`A.
`
`Patents And Patent Publications
`
`HMD contends that each prior art reference set forth in Exhibits B-1 – B-15, listed below,
`
`anticipates under 35 U.S.C. § 102 and renders obvious under 35 U.S.C. § 103 the Asserted Claims,
`
`
`
`5
`
`Page 5 of 32
`
`

`

`as shown in the charts provided herewith.2
`
`Number
`
`International Patent Application Publication No. 2005/043451A2
`US Patent Application Publication No. 2002/0063154
`US Patent Application Publication No. 2004/0123113A1
`US Patent No. 5,933,515
`US Patent No. 6,088,585
`US Patent No. 6,219,793
`US Patent No. 6,877,097
`US Patent No. 6,983,061
`US Patent No. 7,404,086
`US Patent No. 7,697,729
`US Patent No. 6,766,456
`
`US Patent No. 6,509,847
`
`First Named
`Inventor
`Steinar
`Hoyos
`Mathiassen
`Pu
`Schmitt
`Li
`Hamid
`Ikegami
`Sands
`Howell
`McKeeth (secondary
`reference only)
`Anderson (secondary
`reference only)
`
`To the extent any feature is not disclosed in a prior art reference it would have been
`
`obvious to combine that reference with each of the references in Exhibit C that disclose that
`
`limitation, with the knowledge of a person of ordinary skill in the art, to render the asserted claims
`
`obvious under 35 U.S.C. § 103. A person of skill in the art would have been motivated to modify
`
`the prior art without hindsight in manner that would arrive at the Asserted Claims. The elements of
`
`the Asserted Claims were well-known in the art, and that the person of ordinary skill in the art
`
`would have been motivated to combine this knowledge into any primary reference found to be
`
`
`2 HMD has narrowed its asserted prior art references, as compared to HMD’s Preliminary Invalidity Contentions.
`To avoid confusion, the exhibit numbering has been kept consistent with HMD’s Preliminary Invalidity
`Contentions. Therefore, Exhibits B-1, B-3, B-9, B-13, and B-14 attached to these Invalidity Contentions are
`intentionally left blank. Further, because CPC is no longer asserting the ’208 Patent, no Exhibits A-1 through A-16
`are attached.
`
`
`
`6
`
`Page 6 of 32
`
`

`

`lacking a particular adequate disclosure of a particular claim element.
`
`Under the standard for obviousness, claims must be rejected as unpatentable where “the
`
`differences between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
`
`In KSR Int’l Co. v. Teleflex Inc., the U.S. Supreme Court noted that the obviousness analysis must
`
`also allow for consideration of “the inferences and creative steps that a person of ordinary skill in
`
`the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The U.S. Supreme
`
`Court mandated that the obviousness analysis allow for “common sense” and “ordinary creativity”
`
`without necessarily requiring “precise teachings directed to the specific subject matter of the
`
`challenged claim[s].” Id. According to the U.S. Supreme Court, “[t]he combination of familiar
`
`elements according to known methods is likely to be obvious when it does no more than yield
`
`predictable results.” Id. at 416. The U.S. Supreme Court also pointed out that “common sense
`
`directs one to look with care at a patent application that claims as innovation the combination of
`
`two known devices according to their established functions . . . .” Id. at 418.
`
`To the extent that applicable law requires evidence of motivation to combine, motivation
`
`exists to combine the references included in these Invalidity Contentions with each other. The
`
`prior art identified is directed to common fields of endeavor, identifies and addresses similar
`
`technical issues, and suggests very similar solutions to those issues, such as (1) improving the
`
`security of an electronic device, physical structure, or electronic network3; (2) improving the
`
`
`3 See, e.g., HP iPAQ Pocket PC Reference Guide at p. 5-1 (“You can increase the security of the data stored in your
`iPAQ Pocket PC by using the iPAQ Fingerprint Reader.”); HP iPAQ Whitepaper at p. 7 (“With the iPAQ Pocket PC
`h5400 Series you can augment your traditional password security features by implementing the fingerprint
`authentication function. This provides an added layer of security in preventing unauthorized use or access to your
`iPAQ Pocket PC.”); U.S. Patent No. 6,088,585 at 3:12-17 (“it is therefore an object of the present invention to
`provide a portable tele communication device and associated methods with enhanced Security against use by an
`unauthorized individual.”); U.S. Patent No. 6,219,793 at 1:21-27 (“biometric information (e.g., fingerprints) to
`7
`
`
`
`Page 7 of 32
`
`

`

`accuracy of a biometric scanner4; (3) improving the accuracy of an existing electronic security
`
`measure5; (4) decreasing the manufacturing cost of a biometric security device6 and/or (5)
`
`decreasing the operation cost of a biometric device7. These references have the common goal of
`
`authenticating a user via biometric information (e.g., a fingerprint). HMD reserves the right to rely
`
`on uncited portions of the prior art, other disclosed prior art, and the testimony of experts to further
`
`establish that a person of ordinary skill in the art would have been motivated to modify and/or
`
`combine certain of the cited references so as to render the Asserted Claims obvious.
`
`HMD’s claim charts cite particular teachings and disclosures of the prior art as applied to
`
`the limitations of each of the Asserted Claims. However, persons having ordinary skill in the art
`
`generally may view an item of prior art in the context of his or her experience and training, other
`
`publications, literature, products, and understandings. As such, the cited portions are only
`
`examples, and HMD reserves the right to rely on uncited portions of the prior art references and on
`
`other publications and expert testimony as aids in understanding and interpreting the cited portions,
`
`as providing context thereto, and as additional evidence that the prior art discloses a claim
`
`limitation or the claimed subject matter as a whole. HMD further reserves the right to rely on
`
`
`guarantee non-fraudulent use of wireless telephones or cellular mobile phones.”).
`
` 4
`
` See, e.g., HP iPAQ Whitepaper at p. 3 (“The thermal imaging technique is coupled with an image scanning process
`to deliver the best possible combination that provides for a lower cost to operate, reliable functionality, and security
`against artificial fingerprints.”).
`
` 5
`
` See, e.g., U.S. Patent No. 6,088,585 at 3:3-5 (“there are still many applications that have yet to benefit from the
`increased security that may be provided by accurate and reliable fingerprint sensing.”).
`
` 6
`
` See, e.g., U.S. Patent No. 6,983,061 at 3:44-47 (“it is necessary to provide plural kinds of biometrics information
`inputting apparatuses, which also leads to complexity or an increase in cost of the system.”).
`
` 7
`
` See, e.g., U.S. Patent No. 6,877,097 at 2:5-8 (“[o]ne disadvantage of biometric security systems is that the
`improved security offered by such systems is often over-shadowed by the capital cost associated with purchase
`installation and administration.”); U.S. Patent No. 7,404,086 at 1:50-55 (“a biometric authentication method and
`system may be implemented in a client server architecture to provide substantial access control security and ease of
`administration.”).
`
`
`
`8
`
`Page 8 of 32
`
`

`

`uncited portions of the prior art references, other publications, and testimony, including expert
`
`testimony, to establish bases for combinations of certain cited references that render the asserted
`
`claims obvious. The references discussed in the claim charts may disclose the elements of the
`
`Asserted Claims explicitly and/or inherently, and/or they may be relied upon to show the state of
`
`the art in the relevant time-frame. Suggested obviousness combinations are provided in the
`
`alternative to anticipation contentions and are not to be construed to suggest that any reference
`
`included in the combinations is not by itself anticipatory.
`
`Specific combinations of the prior art references are described in Exhibits B-1 to B-16 that
`
`render the Asserted Claims invalid as obvious under 35 U.S.C. § 103.8 Notably, Plaintiff’s
`
`Infringement Contentions fail to indicate how numerous limitations are met under constructions
`
`provided by the Court and/or agreed to by the parties. In particular, the Court has construed
`
`“accessibility attribute,” to mean “attribute that establishes whether and under which conditions
`
`access to the controlled item should be granted to a user.” Plaintiff’s Infringement Contentions fail
`
`to indicate any theory under which the Nokia 8.3 5G meets the requirement of establishing “under
`
`which conditions access to the controlled item should be granted to a user.” Under the broad
`
`understanding of this term asserted by Plaintiff, each primary reference discloses this limitation.
`
`To the extent Plaintiff revises its Infringement Contentions to put forth an argument that the Nokia
`
`8.3 5G establishes “under which conditions access to the controlled item should be granted to the
`
`user,” and any of the primary references in each chart do not explicitly disclose “accessibility
`
`attribute” under this construction, that is disclosed in, at least, Hamid, Sands, Howell, Hoyos, and
`
`McKeeth. And, as described below, a person of ordinary skill would have been motivated to
`
`
`8 B-16 includes specific combinations of the system art described in the next section (iPaq 5450) with secondary
`references.
`
`
`
`9
`
`Page 9 of 32
`
`

`

`combine each primary reference with each of these references, resulting in a combination that
`
`discloses “under which conditions access to the controlled item should be granted to the user.”
`
`Similarly, the Court has ordered that “at least” modifies “one of the number of said entries”
`
`and that each claim additionally requires “a duration of each said entry.”9 Plaintiff’s Infringement
`
`Contentions fail to indicate any theory under which the Nokia 8.3 5G meets the requirement of a
`
`sequence of series of entries of a biometric signal that is either determined by or characterized by
`
`both the number of entries and the duration of each said entry, as required by the Court’s
`
`construction. Under the broad understanding of this term asserted by Plaintiff, each primary
`
`reference discloses this limitation. To the extent Plaintiff revises its Infringement Contentions to
`
`put forth an argument that the Nokia 8.3 5G meets this limitation under the Court’s construction,
`
`and any of the primary references in each chart do not explicitly disclose both the number of entries
`
`of a biometric signal and the duration of each entry, that is disclosed in, at least, Ikegami, Pu,
`
`Steinar, and Anderson. And, as described below, a person of ordinary skill would have been
`
`motivated to combine each primary reference with each of these references, resulting in a
`
`combination that discloses both the number of entries of a biometric signal and the duration of
`
`each entry.
`
`Further, the parties have stipulated that “emit[ting]” be given its “plain and ordinary
`
`meaning, i.e., send out, give forth, or discharge.” Plaintiff’s Infringement Contentions fail to
`
`indicate any theory under which the Nokia 8.3 5G meets any “emit[ting]” limitation under the
`
`agreed definition. Under the broad understanding of this term asserted by Plaintiff, each primary
`
`reference discloses this limitation. To the extent Plaintiff revises its Infringement Contentions to
`
`
`9 This construction was provided in CPC Patent Technologies PTY LTD v. Apple Inc., Case No. 6:21-cv-00165-
`ADA, EFC No. 76 (W.D. Tex. Feb. 10, 2022). Plaintiff has indicated that “[p]resumably, that construction should
`control in this matter as well.” Response to Defendant’s Interrogatory No. 21, served February 24, 2022.
`10
`
`
`
`Page 10 of 32
`
`

`

`put forth an argument that the Nokia 8.3 5G meets this limitation under the agreed definition, and
`
`any of the primary references in each chart do not explicitly disclose “emit[ting]” under this
`
`definition, that is disclosed in, at least, Hamid, Hoyos, Mathiassen, Schmitt, Steinar, and Li. And,
`
`as described below, a person of ordinary skill would have been motivated to combine each primary
`
`reference with each of these references, resulting in a combination that discloses “emit[ting]”
`
`under the agreed definition.
`
`As illustrative examples, the following combinations and motivations in addition to the
`
`general motivations described above, render the Asserted Claims obvious:
`
`• Hamid. A person of ordinary skill in the art would have found it obvious to combine the
`
`teachings of any of the primary references with Hamid in the manner described in the
`
`attached charts for multiple reasons. Hamid teaches a portable biometric device that
`
`includes a biometric sensor. The biometric sensor utilizes a wireless transceiver for
`
`transmitting an encrypted description of a biometric characteristic to a controller that
`
`identifies an individual on the basis of one or more biometric characteristics. The controller
`
`thus enables a person to unlock a portal exclusive of other portals by presenting a specific,
`
`personal biometric characteristic to the portable biometric device. Similarly, Hamid also
`
`teaches that distinct biometric information or sequences of biometric information may be
`
`associated with distinct functions used in access-control applications; those functions may
`
`include checking an email, engaging security systems, logging into a computer, checking
`
`a voicemail, locking/unlocking doors, etc. As a specific example, Hamid discloses that
`
`turning on a light may be associated with an input consisting of left index finger-left index
`
`finger, while logging into a computer may be associated with an input consisting of left
`
`thumb-left index finger.10 A person of ordinary skill in the art would be familiar with the
`
`
`10 U.S. Patent No. 6,877,097 at 10:6-11.
`
`
`
`11
`
`Page 11 of 32
`
`

`

`techniques that Hamid taught and would understand that incorporating these techniques
`
`into the invention of each primary reference would reduce the size and cost of the
`
`fingerprint security device and would make it resistant to vandalism.11 Further, Hamid’s
`
`techniques would provide the flexibility of executing one or more of several functions
`
`made accessible via a biometric characteristic (or sequence of biometric characteristics).12
`
`Hamid and each primary reference were in the same field of endeavor (automated access
`
`relating to biometric sensors) and shared the same fundamental goal of authenticating users
`
`for secure access. A person of ordinary skill would have appreciated the goal that existed
`
`in the industry of reducing costs and increasing the flexibility of specific functions that are
`
`executable via biometric characteristics as taught by Hamid.
`
`• Howell. A person of ordinary skill in the art would have found it obvious to combine the
`
`teachings of each primary reference and Howell in the manner described in the attached
`
`charts for multiple reasons. Howell teaches device controllers that use fingerprints to
`
`automatically perform tasks on an electronic device. The corresponding tasks are selected
`
`from a plurality of tasks that the electronic device is configured to perform. To do so, the
`
`electronic device matches read biometric data (preferably a fingerprint) to stored biometric
`
`data having a corresponding task associated to it, and then performs the corresponding task.
`
`For example, when a user places an index finger on a fingerprint sensor, a PC may launch
`
`a web browser or connect to the email account of the user. Each distinct fingerprint image
`
`can be used to perform distinct tasks, such that ten unique tasks can be performed by a user
`
`having ten unique fingerprints. Further, Howell discloses one embodiment relating to a
`
`high-security environment in which a user would normally swipe his left index finger to
`
`pass a security checkpoint but, if the user is under duress, may swipe his left middle finger
`
`to pass the security checkpoint and also indicate a potential danger. A person of ordinary
`
`
`11 U.S. Patent No. 6,877,097 at 2:5-8, 2:14-16, 3:6-10, 6:56-67, 7:15-20.
`12 U.S. Patent No. 6,877,097 at 9:61-10:15.
`
`
`
`12
`
`Page 12 of 32
`
`

`

`skill in the art would be familiar with the techniques that Howell taught and would
`
`understand that incorporating these techniques into the invention of each primary reference
`
`would provide the following benefits articulated in Howell: “(1) reduce the number of
`
`entries that a user must make to perform a task—rather than entering numerous keystrokes
`
`to connect to an e-mail account, a single finger placement or swipe can accomplish the
`
`same task; (2) reduce the footprint of an electronic device since keypads, function buttons,
`
`joy sticks, and mice can be replaced with a fingerprint image sensor; (3) reduce the
`
`complexity of user interfaces since a user does not have to remember keystrokes, logon
`
`information, or other information needed to perform a task; and (4) increase the security of
`
`electronic devices since, using a fingerprint, a user can be authenticated each time she
`
`requests that a task be performed so that the authentication and the performance of the task
`
`can be accomplished using a single finger swipe or placement.”13 In addition, a person of
`
`ordinary skill would understand that incorporating the feature that Howell discloses in
`
`relation to the high-security environment into the invention of each primary reference
`
`would enable a user under duress or danger to gain access to a security checkpoint while
`
`alerting the system and others of potential danger in a covert way. A person of ordinary
`
`skill would also have appreciated the goal that existed in the industry of executing tasks on
`
`an electronic device using a minimal footprint and a minimal amount of entries, such as
`
`keystrokes or button presses.14
`
`• McKeeth. A person of ordinary skill in the art would have found it obvious to combine
`
`the teachings of each primary reference and McKeeth in the manner described in the
`
`attached charts for multiple reasons. McKeeth teaches a method and system for
`
`authenticating the identity of a user before accessing a computer system. To authenticate a
`
`user, McKeeth relies on input signals that may comprise, for example, a password entered
`
`
`13 U.S. Patent No. 7,697,729 at 4:45-60.
`14 U.S. Patent No. 7,697,729 at 1:54-61.
`
`
`
`13
`
`Page 13 of 32
`
`

`

`via a keyboard, a geometric pattern entered concurrently with or shortly after entering a
`
`password, a fingerprint or other physical feature—such as the retina—detected by an
`
`optical scanner, and a geometric pattern entered concurrently with a scanned fingerprint.
`
`Notably, McKeeth expressly discloses embodiments for heightened security applications,
`
`in which the system is able to recognize that while a user may be legitimate, the user’s
`
`failure to correctly input a geometric pattern is an indication that the user is experiencing
`
`duress or force to access a computer system. In those circumstances, the system may grant
`
`limited access to the user, to give a false impression that access to the computer system has
`
`been fully granted, while it also issues a security alert to security personnel. A person of
`
`ordinary skill in the art would be familiar with the techniques that McKeeth taught and
`
`would understand that incorporating these techniques into the invention of each primary
`
`reference would provide the benefit of correctly authenticating a user despite the presence
`
`of duress or force as a result of a computer hacker’s activities, while protecting sensitive
`
`content—as a result of the limited access granted by the system—and covertly alerting the
`
`proper security personnel—thus minimizing the risk to the user under duress.15 A person
`
`of ordinary skill would also have appreciated the need in the industry for an authentication
`
`technique that is immune to force or theft by computer hackers and is able to hinder a
`
`hacker’s ability to access a computer by forcing a user to enter a password, turn a key,
`
`swipe a card, or place the user’s finger on a fingerprint acquisition device.16
`
`• Hoyos. A person of ordinary skill in the art would have found it obvious to combine the
`
`teachings of each primary reference and Hoyos in the manner described in the attached
`
`charts for multiple reasons. Hoyos teaches a computerized security system used to grant
`
`access and restrict entry to a building or property, on the basis of a representation of a
`
`fingerprint received by a central server. As one aspect of its computerized security system,
`
`
`15 U.S. Patent No. 6,766,456 at 4:19-35, 7:37-43.
`16 U.S. Patent No. 6,766,456 at 1:55-62.
`
`
`
`14
`
`Page 14 of 32
`
`

`

`Hoyos discloses that the system may grant employees access to different areas only on an
`
`as-needed basis; for example, an employee may have access to a main entrance and a
`
`specific area but not to the entire property, or an employee’s access to privilege information
`
`may be limited to specific hours, days, and access points. Hoyos also discloses that these
`
`access privileges may change over time. Hoyos thus also discloses techniques for managing
`
`and updating a database relied upon by the security system, which contains relevant user
`
`information—such as a unique identifier, a biometrics feature such as a fingerprint, and
`
`access privileges. A person of ordinary skill in the art would be familiar with the techniques
`
`that Hoyos taught and would understand that incorporating these techniques into the
`
`invention of each primary reference would allow for effective monitoring of the persons
`
`who have entered a particular building, restricting access to prevent loss of sensitive
`
`information, and providing different access privileges to different users, among other
`
`benefits.17 Moreover, a person of ordinary skill in the art would understand that
`
`incorporating the techniques taught by Hoyos into the invention of each primary reference
`
`would allow for a simplified process for managing and updating the database relied upon
`
`by the security system.18 A person of ordinary skill in the art would also have appreciated
`
`the onerous burden of administering and implementing a security system that supports the
`
`functionalities taught by Hoyos (e.g., features such as granting particular users specific
`
`access only during certain days or weeks, granting particular users access to specific areas
`
`of a building, and regularly changing the access privileges of the users associated with the
`
`database), and thus a person of ordinary skill in the art