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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`PATENT TRIAL AND APPEAL BOARD
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`
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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
`
`
`
`
`
`
`PRELIMINARY PATENT OWNER’S RESPONSE
`
`
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`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`I. 
`II. 
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1 
`Discussion ........................................................................................................ 3 
`A. 
`The Genesis of the Fintiv Factors for Discretionary Denial of
`Institution ......................................................................................................... 3 
`B. 
`The Application of the Fintiv Factors, as Supplemented by the Interim
`Procedures, Mandate Discretionary Denial ..................................................... 4 
`1. 
`Fintiv Factor One ........................................................................ 4 
`2. 
`Fintiv Factor Two ........................................................................ 5 
`3. 
`Fintiv Factor Three...................................................................... 7 
`4. 
`Fintiv Factor Four ..................................................................... 10 
`5. 
`Fintiv Factor Five ...................................................................... 12 
`6. 
`Fintiv Factor Six ........................................................................ 12 
`a. 
`Apple’s Numerous Other Prior Art References ............. 12 
`b. 
`The Petition’s Merits ...................................................... 14 
`i.  The “Duration” Limitation ........................................ 14 
`ii.  The “Under Which Conditions” Requirement ......... 17 
`iii.  The Circumstances Do Not Compel Institution ...... 19 
`Conclusion Regarding the Fintiv Factors ................................. 19 
`7. 
`Fintiv Should not be Overruled ........................................................... 19 
`1. 
`Fintiv did not Exceed the Director’s Authority ........................ 19 
`2. 
`Fintiv is Neither Arbitrary nor Capricious ................................ 21 
`3. 
`Fintiv does not Represent Improper Rulemaking ..................... 21 
`III.  Conclusion ..................................................................................................... 22 
`
`
`
`C. 
`
`i
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`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`EXHIBIT LISTING
`
`Exhibit
`2001
`
`Description
`Scheduling Order, CPC Patent Technologies Pty Ltd. v. HMD
`Global Oy, 6:21-cv-00166 (Dkt. 27) (Sept. 23, 2021)
`
`2002
`
`HMD Global Oy’s Final Invalidity Contentions, Chart B15 -
`Mathiassen, dated March 16, 2022
`
`2003
`
`Apple Inc.’s Final Invalidity Contentions, dated March 16, 2022
`
`2004
`
`2005
`
`2006
`
`2007
`
`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’s Final Invalidity Contentions, dated March 16,
`2022
`
`ii
`
`

`

`I.
`
`INTRODUCTION
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`Patent Owner, CPC Patent Technologies (“CPC” or “Patent Owner”), submits
`
`this Patent Owner Preliminary Response (“POPR”) pursuant to 37 C.F.R. §
`
`42.107(a) to the Inter Partes Review (“IPR”) petition (“Petition”) filed by Petitioner
`
`Apple Inc. (“Apple” or “Petitioner”) for Claims 1, 4, 6, 10-12, and 14-17
`
`(“Challenged Claims”) of U.S. Patent No. 9,665,705 (“the ʼ705 Patent,” Ex. 1001).
`
`The instant Petition presents a novel, but nonetheless compelling, set of
`
`circumstances as it concerns the Fintiv factors for discretionary denial of institution.
`
`Apple filed its Petition while the ʼ705 Patent was also the subject of a pending district
`
`court action between the parties (“the Apple Litigation”).1 See Paper No. 1 at 62.
`
`Furthermore, in a co-pending matter styled CPC Patent Technologies Pty Ltd.
`
`v. HMD Global Oy, No. 6:21-cv-00166 (W.D. Tex.) (“the HMD Litigation”),2
`
`
`1 Apple succeeded in having the Apple Litigation, originally filed in the Western
`
`District of Texas (CPC Patent Technologies Pty Ltd. v. Apple Inc., No. 6:21-cv-
`
`00165 (W.D. Tex.)), transferred to the Northern District of California. In re Apple
`
`Inc., No. 2022-128, 2022 WL 1196768 (Fed. Cir. Apr. 22, 2022). The case is now
`
`styled CPC Patent Technologies Pty Ltd. v. Apple Inc., No. 5:22-cv-02553 (N.D.
`
`Cal.).
`
`2 Apple identifies the HMD Litigation as a Related Matter. Paper No. 1 at 62.
`
`
`
`1
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`defendant HMD Global Oy (“HMD”), as part of its invalidity defenses, cites the
`
`same prior art combination as allegedly teaching the limitation “at least one of the
`
`number of said [biometric signal] entries and a duration of each said entry” (“the
`
`Duration Limitation”) in the challenged claims of the ʼ705 Patent. Ex. 2002 at 63-
`
`64. That case is scheduled for trial in January 2023. Ex. 2001 at 5. Thus, whether
`
`that same prior art combination in fact teaches that limitation will be litigated in
`
`district court nine months before the Final Written Decision would be scheduled to
`
`issue in this proceeding in the event of institution. These circumstances warrant
`
`discretionary denial of institution.
`
`Apple recognizes the problems it faces in light of the Board’s decisions
`
`regarding discretionary denial in Apple Inc. v. Fintiv, Inc., IPR2020-00019
`
`(“Fintiv”). In fact, after presenting a lukewarm analysis of the six Fintiv factors,
`
`Apple ultimately resorts to arguing that the analytical framework under Fintiv, as
`
`explained in informational (Paper 15) and precedential (Paper 11) opinions of this
`
`Board, should be overruled. See Paper No. 1 at 59-60. Of course, Apple is wrong
`
`and not a single Fintiv factor weighs in favor of institution, as explained herein. The
`
`case for discretionary denial of the instant Petition is so clear that Patent Owner has
`
`determined not to burden the Board with a full discussion of the merits of the Petition
`
`
`
`2
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`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
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`in this Preliminary Response.3 The Board should exercise its discretion under 35
`
`U.S.C. § 314(a) to deny institution in this case.
`
`II. DISCUSSION
`
`A. The Genesis of the Fintiv Factors for Discretionary Denial of
`Institution
`
`As Apple notes, the Board has the discretionary ability to deny institution
`
`under 35 U.S.C. § 314(a) in light of parallel litigation. In 2019, the Board issued its
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`precedential opinion in NHK Spring Co., Ltd. v. Intri-plex Technologies, Inc.,
`
`wherein it exercised its discretion under section 314(a) to deny institution of an
`
`otherwise timely-filed petition for inter partes review in light of the advanced stage
`
`of an earlier-filed district court litigation. NHK Spring Co., Ltd. v. Intri-plex
`
`Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (designated
`
`precedential May 7, 2019). Thereafter, the Board issued its precedential opinion in
`
`Fintiv in which it identified six factors that are to be considered for discretionary
`
`denial in light of corresponding district court litigation. Apple Inc. v. Fintiv, Inc.,
`
`
`3 Patent Owner will address the merits of the Petition in the unlikely event that the
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`Board institutes inter partes review, notwithstanding the result mandated by the
`
`application of the Fintiv factors.
`
`
`
`3
`
`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
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`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (designated precedential May 5,
`
`2020).4
`
`B.
`
`The Application of the Fintiv Factors, as Supplemented by the
`Interim Procedures, Mandate Discretionary Denial
`1.
`
`Fintiv Factor One
`
`The first factor articulated by the Board in Fintiv is whether there has been a
`
`stay of the subject district court proceeding, which is as neutral when there has been
`
`no district court ruling on a stay. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`
`15 at 12 (PTAB May 13, 2020) (designated informative July 13, 2020); Sand
`
`Revolution II, LLC v. Continental Intermodal Grp. Trucking LLC, IPR2019-01393,
`
`Paper 24 at 7 (PTAB June 16, 2020); MediaTek Inc. v. Nippon Tel. and Tel. Corp.,
`
`IPR2020-01607, Paper 12 at 12 (PTAB April 2, 2021) (“Petitioner represents it will
`
`move to stay the District Court Lawsuit [if institution is granted but does not know]
`
`how the District Court will rule … [t]hus, this factor should be viewed as neutral”).
`
`
`4 CPC is cognizant of the interim procedures regarding discretionary denial
`
`propounded by the Director on June 21, 2022 (“Interim Procedures”). CPC
`
`understands those procedures as clarifying the Fintiv decision, rather than undoing
`
`that decision. The clarifications contained in the Interim Procedures are addressed
`
`herein where appropriate.
`
`
`
`4
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`This is because the Board has consistently declined to infer “how the District Court
`
`would rule should a stay be requested by the parties.” Fintiv, Paper No. 15 at 12.
`
`See also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-01280, Paper 17 at
`
`13 (PTAB Feb. 4, 2021) (how a court might handle the issue of stay in the absence
`
`of a motion therefor “invites conjecture” and this factor remains “neutral”).
`
`Despite having indicated to the Board that it would seek a stay of the district
`
`court action in the event institution is granted (Paper No. 1 at 54), Apple has moved
`
`for a pre-institution stay now that the matter has been transferred to the Northern
`
`District of California. Ex. 2006. Putting aside Apple’s about-face on this issue,
`
`there has been no ruling regarding the requested stay in the Apple Litigation.
`
`Separately, in the co-pending HMD Litigation, HMD has not moved for a stay,
`
`meaning that, as currently scheduled, the validity of the ʼ705 Patent in light of the
`
`same prior art cited in this proceeding will be litigated in January 2023. See Ex.
`
`2001 at 5. Absent such a stay, this factor is neutral at best.
`
`2.
`
`Fintiv Factor Two
`
`The second Fintiv factor considers the relative timing between a district court
`
`trial and a projected date for a Final Written Decision from the Board. If the district
`
`court trial is projected to be earlier than the projected Final Written Decision date,
`
`this factor tends to weigh in favor of institution denial. Fintiv, Paper No. 11 at 9.
`
`The Interim Procedures further admonish that “[t]he PTAB will weigh this factor
`
`
`
`5
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`against exercising discretion to deny institution under Fintiv if the median time-to-
`
`trial is around the same time or after the projected statutory deadline for the PTAB's
`
`final written decision.” Interim Procedures at 9.
`
`In the HMD Litigation, HMD is challenging the validity of the ʼ705 Patent
`
`based upon, inter alia, the precise combination relied upon by Apple - specifically,
`
`the teachings of Mathiassen supplemented by Anderson for the Durational
`
`Limitation in the challenged claims, which, as explained below, mirrors Apple’s
`
`approach in the instant Petition. See, e.g., Ex. 2002 at 63-64. The trial in the HMD
`
`Litigation is scheduled for January 2023, over nine months before the final written
`
`decision is scheduled to issue in this IPR. Ex. 2001 at 5.
`
`The Board has consistently found that a six-month gap weighs heavily in favor
`
`of denial. See Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-00122, Paper
`
`15 at 7-8 (PTAB May 15, 2020); SK Innovation Co. v. LG Chem, Ltd., IPR2020-
`
`01240, Paper 15 at 16-17 (PTAB Jan. 12, 2021); Supercell OY v. Gree, Inc.,
`
`IPR2020-00310, Paper 13 at 10-12 (PTAB Jun. 18, 2020). The Interim Procedures,
`
`which mandate weighing this factor against denial only where the time to trial is
`
`around the same time or after the final written decision, does not disturb the Board’s
`
`decisions on this point. Interim Procedures at 9. Accordingly the nine-month gap
`
`between the trial in the HMD Litigation and the final written decision weighs heavily
`
`in favor of denial.
`
`
`
`6
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`Apple argues that a scheduled trial date “may not be the ‘actual trial date,’”
`
`which would presumably apply to the HMD litigation as well. Paper No. 1 at 54-
`
`55. The Interim Procedures actually address this issue by referencing “median time-
`
`to-trial” in the relevant jurisdiction as the appropriate metric. Interim Procedures at
`
`9. The most recent statistics indicate that, in the Western District of Texas, the
`
`approximate time to trial is two years from the filing of the complaint. VoIP-Pal.com
`
`v. Google LLC, 6:21-cv-00667, 2022 WL 2068254, at *7 (W.D. Tex. June 8, 2022).
`
`CPC filed the complaint in the HMD Litigation on February 23, 2021. See CPC
`
`Patent Technologies Pty Ltd., v. HMD Global Oy, No. 6:21-cv-00166 (W.D. Tex.
`
`Feb. 23, 2021) [ECF Docket No. 1]. Given that filing date, the median time to trial
`
`in the Western District of Texas would be approximately February 2023, which
`
`coincides with the trial schedule in that case. In light of the Interim Procedures, this
`
`second Fintiv factor weighs against institution.
`
`3.
`
`Fintiv Factor Three
`
`The third Fintiv factor includes a diligence component. Fintiv, Paper No. 11
`
`at 11. This factor, evaluated “at the time of the institution decision,” considers
`
`whether “the parallel proceeding is more advanced . . . and instituting would lead to
`
`duplicative costs.” Id. at 9-10. This factor favors denial where “the district court
`
`has issued substantive orders related to the patent,” such as a claim construction
`
`order. Id. As such, filing a petition “at or around the same time that the patent
`
`
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`7
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`owner responded to the petitioner’s invalidity contentions,” may weigh in favor of
`
`discretionary denial. Medtronic, Inc. v. Teleflex Innovs. S.A.R.L., IPR2020-01341,
`
`Paper 11 at 10-11 (PTAB Feb. 9, 2021).
`
`The Western District of Texas issued claim construction orders in the Apple
`
`Litigation and in the HMD Litigation on February 10, 2022 and January 25, 2022,
`
`respectively. Paper No. 1 at 5; Exs. 1077;1080. The litigants’ final infringement
`
`and invalidity contentions in both the HMD and Apple Litigations were exchanged
`
`on March 16, 2022. Ex. 2001 [HMD Schedule] at 3; Ex. 2004 [Apple Schedule] at
`
`3. In the HMD litigation, factual discovery closes on July 29, 2022. Ex. 2001 at 3.
`
`The parties’ initial expert reports are due in that litigation on August 12, 2022 and
`
`expert discovery closes on September 21, 2022. Id. at 4. Therefore, both fact and
`
`expert discovery will be fully complete before “the time of the institution decision.”
`
`Further, Apple may argue that it was entitled to avail itself of the one year
`
`statutory deadline for filing a review petition. See Paper No. 1 at 56. However,
`
`Apple was on notice of CPC’s position regarding infringement of the ʼ705 Patent by
`
`virtue of a letter CPC sent on March 19, 2020. Ex. 2005. While Apple may have
`
`been statutorily entitled to take the entire one-year period to file the instant Petition
`
`
`
`8
`
`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`(which it did),5 that does not establish the diligence required to avoid discretionary
`
`denial.
`
`
`
`Apple also argues that its delay in filing was attributable to its waiting for the
`
`district court’s constructions of various means-plus-function limitations in the
`
`claims of U.S. Patent No. 9,269,208 (“the ʼ208 Patent”). Paper No. 1 at 56-57.
`
`Apple provides no explanation as to why a district court construction was a
`
`prerequisite to inter partes review, as the Board regularly performs claim
`
`construction as part of such a review, and the “means” limitations of the ʼ208 Patent
`
`do not appear in the claims of the ʼ705 Patent.
`
`
`
`Given Apple’s lack of diligence in waiting almost two years after becoming
`
`aware of Patent Owner’s infringement position, and the amount of effort that the
`
`parties have already expended, this factor weighs in favor of exercising the Board’s
`
`discretion to deny institution.
`
`
`5 CPC served the complaint on Apple on March 1, 2021. CPC Patent Technologies
`
`Pty Ltd. v. Apple Inc., 6:21-cv-00165 (W.D. Tex. March 3, 2022) [ECF Docket No.
`
`10] (reflecting complaint service on March 1, 2022). The Petition was filed on
`
`February 23, 2022, or 359 days after service.
`
`
`
`9
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`

`

`4.
`
`Fintiv Factor Four
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`As explained above, in the HMD Litigation, HMD is urging that the
`
`Mathiassen/Anderson prior art combination teaches the Duration Limitation of the
`
`ʼ705 Patent. See Ex. 2002 at 63-64. This is the same prior art combination relied
`
`upon by Apple for an alleged teaching of that limitation. See Paper No. 1 at 3. In
`
`other words, this issue, common to both the instant proceeding and the HMD
`
`Litigation, will be decided nine months before the final written decision would issue
`
`in this proceeding.
`
`Apple has stated that, in the event of institution, it will not urge “any ground
`
`of invalidity that utilizes Mathiassen, McKeeth, or Anderson” in the Apple
`
`Litigation. Paper No. 1 at 57. As the Interim Procedures make clear, a stipulation
`
`is only effective “where a petitioner stipulates not to pursue in a parallel district court
`
`proceeding the same grounds as in the petition or any grounds that could have
`
`reasonably been raised in the petition.” Interim Procedures at 9 (emphasis added).
`
`Apple has not so stipulated, which is especially problematic, seeing that, in its
`
`final invalidity contentions in the Apple Litigation, Apple has asserted 23 different
`
`grounds for alleged anticipation based upon alleged prior art patents, publications,
`
`and systems, 22 of which do not involve Mathiassen, McKeeth, or Anderson. Ex.
`
`2003 at 67-68. Apple has also urged 23 different grounds for alleged obviousness
`
`
`
`10
`
`

`

`IPR2022-00602
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`based upon published prior art. Id. at 67-74.6 And, while Mathiassen is part of each
`
`obviousness combination, it is the lead reference in only one. See id. For the
`
`remainder, it is part of a list of 30 or more references, separated by “and/or,” to be
`
`combined with the primary reference. See id.
`
`Thus, Apple’s narrow concession, apart from failing to comply with the
`
`Interim Procedures, does little to address the “concerns regarding duplicative efforts
`
`and potentially conflicting decisions.” Sand Rev’n II LLC v. Cont’l Intermodal Grp.
`
`– Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (designated
`
`informative July 13, 2020).
`
`Finally, while Apple asserts a single challenge ground in the Petition
`
`involving a combination of three references, Apple refers to eight additional prior
`
`art patents and patent applications in its Petition that are also identified as prior art
`
`in Apple’s final infringement contentions in district court. See Exs. 1007, 1010,
`
`1017, 1019, 1020, 1023 and 1025; and Ex. 2003 at 67-68. Even HMD relies on four
`
`of these references in the HMD Litigation. See Exs. 1017, 1019, 1023, and 1025;
`
`and Ex. 2007 at 6. Given Apple’s references to these prior art references in both the
`
`
`6 Six of Apple’s obviousness combinations cite to a prior art system as the lead
`
`reference. See Ex. 2003 at 67-74. However, in each instance, the subject system is
`
`to be combined with one of a multiplicity of publications. See id.
`
`
`
`11
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`

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`IPR2022-00602
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`Petition and the district court in the Apple Litigation and HMD’s reliance on these
`
`references in the HMD Litigation, there is additional overlap that militates against
`
`institution.
`
`5.
`
`Fintiv Factor Five
`
`Under the fifth Fintiv factor, when the petitioner is also a defendant in the
`
`district court litigation, this factor has generally weighed in favor of discretionary
`
`denial. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 16
`
`(PTAB Dec. 1, 2020) (designated precedential Dec. 17, 2020). Apple cites to the
`
`dissenting opinion in Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd., IPR2020-
`
`00122, Paper 15 at 10 (PTAB May 15, 2020), which noted that there had been no
`
`pronouncement “about situations in which the petitioner is the same as, or is related
`
`to, the district court defendant.” Paper No. 1 at 58. Certainly, the precedential
`
`opinion in Sotera has changed that, and Apple being both Petitioner here, and a
`
`defendant in a co-pending district court action weighs in favor of discretionary
`
`denial, especially given that its former co-defendant, HMD, has cited the very same
`
`prior art in challenging the claims of the ʼ705 Patent.
`
`6.
`
`Fintiv Factor Six
`
`a.
`
`Apple’s Numerous Other Prior Art References
`
`Finally, the sixth Fintiv factor involves an all-encompassing consideration of
`
`the “relevant circumstances” in the case. Fintiv, Paper No. 11 at 14. Beyond the
`
`
`
`12
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`

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`IPR2022-00602
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`eight additional prior art references common to both the Petition and the district
`
`court proceeding, Apple references more than three dozen additional prior art
`
`references in its Petition. See Exs. 1011-1016, 1018, 1021, 1022, 1024, 1026, 1027-
`
`1047, 1050-1051, 1053 and 1055. Thus, while the Petition includes a single
`
`challenge ground, Apple’s Trojan horse approach to introducing several dozen
`
`additional references would not result in an efficient use of the Board’s time and
`
`resources, and discretionary denial is warranted. Deeper, UAB v. Vexilar, Inc., Case
`
`IPR2018-01310, Paper No. 7, at 43 (PTAB Jan. 24, 2019). Indeed, through this
`
`approach, Apple has shifted a substantial amount of work to the Board (and Patent
`
`Owner), who will be required to study each of these dozens of references and
`
`ascertain what they do and do not teach. This stands in stark contradiction to the
`
`requirement of the patent statute’s directive for IPR petitions to identify “with
`
`particularity…the evidence that supports the grounds for the challenge to each
`
`claim.” 35 U.S.C. § 312(a)(3); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359, 1369 (Fed. Cir. 2016).
`
`More importantly, the inclusion of several dozen additional references beyond
`
`those relied upon in the single ground raised by the Petition undermines the strength
`
`of the merits of the formal ground Apple is asking the Board to review. In other
`
`words, had Apple been confident in its asserted combination of Mathiassen,
`
`McKeeth, and Anderson, it would not have had to resort to raising any additional
`
`
`
`13
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`references—let alone dozens. This approach just creates unnecessary work and
`
`inefficiencies for Patent Owner and the Board, explicitly against the policy of
`
`efficiency that motivated Congress to establish inter partes reviews in the first place.
`
`See Intelligent Bio-Sys., 821 F.3d at 1369.
`
`b.
`
`The Petition’s Merits
`
`i.
`
`The “Duration” Limitation
`
`The strength of the merits of the Petition is relevant to the analysis when
`
`weighing this sixth factor. Fintiv, Paper No. 11 at 14. In this case, all of the
`
`challenged claims contain the Duration Limitation.7 The Western District of Texas
`
`construed this limitation such that “at least” modifies “one of the number of said
`
`entries” and that the claims further require “a duration of each said entry,” and Apple
`
`relies on that construction in the instant Petition. See Paper No. 1 at 31 (emphasis
`
`added). Thus, to teach this limitation, a prior art reference must disclose a duration
`
`for each entry in a series of biometric signal entries.
`
`The sole teaching of this claimed “duration” requirement in the cited prior art
`
`according to Apple is contained in the Anderson reference. Apple characterizes
`
`Anderson’s teachings as “inputting an access code at a fingerprint sensor that is a
`
`
`7 In Apple’s Claim Listing Appendix, this limitation is included in what Apple
`
`labeled as elements 1(d1), 10(d1), 11(a2), 14(b), 15(d1), 16(d1) & 17(a2).
`
`
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`14
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`‘series of pressure pulses having varying durations.’” Paper No. 1 at 34 (emphasis
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`added). Apple’s characterization of Anderson is wrong, as it conflates two separate
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`features described in that reference. On the one hand, Anderson teaches an “access
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`code” generated by “inputting information by temporally varying the amount of
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`pressure applied to a touch interface such as a digitizer (touch) pad, cursor control
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`stick, touch screen, or the like.” Ex. 1006, col. 1, lines 52-65 (emphasis added).
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`On the other hand, Anderson teaches that “[t]he entered access code may be
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`utilized in conjunction with other security measures,” such as where a “digitizer
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`pad” also includes “an optical scanner or thermal sensor for collecting an image of
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`the user’s fingerprint as the pressure access code is entered.” Id., col. 7, lines 1-7
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`(emphasis added). In other words, the digitizer pad works with or without
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`fingerprint imaging, and the durational variation applied to Anderson’s digitizer pad
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`is unrelated to the optionally simultaneous fingerprint imaging taught by Anderson.
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`In fact, Anderson denigrates “fingerprint recognition,” which “utilize[s] specialized
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`equipment and may require sophisticated software for implementation.” Id., col. 1,
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`lines 54-58. Thus, Anderson fails to teach any duration for the individual biometric
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`signals within a series of such signals. Even if the Board believes resolution of this
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`issue warrants further investigation, that investigation will be fully resolved in the
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`HMD Litigation nearly nine months before a Final Written Decision is expected
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`through this Petition.
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`U.S. Patent No. 9,665,705
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`Apple’s expert, Dr. Andrew Sears, opined that “[a] POSITA would have been
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`
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`motivated and found it obvious [to] add Anderson’s series of presses or pulses as an
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`input on the portable door control or replace Mathiassen’s finger movements with
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`Anderson’s series of presses or pulses to input commands into the portable door
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`control 20.” Ex. 1003, ¶ 222. However, Dr. Sears failed to address the distinction
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`between Anderson’s digitizer pad, which allows durational variation, and the
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`optional optical scanner or thermal sensor, which allows for fingerprint imaging.
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`Rather, Dr. Sears opined
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`in conclusory fashion
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`that “[m]odifying
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`Mathiassen’s portable control to include receipt of a command via presses of a
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`particular duration allows for simplified input of multiple commands using
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`Mathiassen’s portable door control.” Id. Dr. Sears fails to explain how
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`Mathiassen’s fingerprint sensor could be modified to receive any durational
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`information, in lieu of receiving traditional fingerprint data. Such a conclusory
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`argument is insufficient to support a petitioner’s burden for institution purposes. See
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`Activevideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312, 1327-28 (Fed.
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`Cir. 2012); see also Coalition for Affordable Drugs V LLC v. Biogen Int’l GmbH,
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`IPR2015-01086, Paper No. 18, at 11 (PTAB Oct. 27, 2015). Further, it is improper
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`to ignore instances of teaching away, such as Anderson’s denigration of fingerprint
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`recognition, while favoring broad statements regarding a motivation to combine.
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`Andrea Electronics Corp. v. Apple, Inc., App. No. 2021-1248, 2022 WL 1197341,
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`at *5 (Fed. Cir. April 22, 2022).
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`Finally, even if one could jerry-rig a combination of the teachings of
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`Mathiassen and Anderson, Dr. Sears provides no explanation regarding how the
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`resulting durational information in such combination relates to the biometric signal
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`entries, as required by the challenged claims. This alone belies the conclusion that
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`Apple is likely to satisfy its invalidity burden.
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`ii.
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`The “Under Which Conditions” Requirement
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`
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`As Apple notes, the district court defined “accessibility attribute” as an
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`“attribute that establishes whether and under which conditions access to the
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`controlled item should be granted to a user.” Paper No. 1 at 6 (emphasis added).
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`The independent claims of the ʼ705 Patent make clear that the output of the claimed
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`“accessibility attribute” is a function of “matching the biometric signal against
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`members of the database of biometric signatures.” See, e.g., Ex. 1001, col. 16, lines
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`1-4.
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`
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`Apple relies on McKeeth’s teaching of outputting “both a duress instruction
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`and an alert instruction when there is no [biometric signal] match” to supplement
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`Mathiassen in order to satisfy the “under which conditions” requirement of the
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`“accessibility attribute” limitation. Paper No. 1 at 18. According to Apple, “it
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`[would have been] obvious to modify Mathiassen’s portable door control processor
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`to output a duress or an alert accessibility attribute, as taught by McKeeth….” Id. at
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`22; see also Ex. 1003, ¶ 130.
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`Apple does not explain how the purported “accessibility attribute” taught by
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`McKeeth results from a comparison of biometric information, as required by the
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`challenged claims. In actuality, McKeeth teaches using a peripheral device to
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`generate a “unique geometric pattern,” e.g., “a triangle,” that the peripheral device
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`then sends to a “computer system.” See Ex. 1005, col. 6, lines 35-44. If the
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`transmitted geometric pattern does not match a pattern stored in the computer
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`system, the computer system may “generate a security alert to the responsible
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`authorities.” Id., col. 6, lines 48-52.
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`In other words, McKeeth’s security alert is not a function of a comparison of
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`any biometric information. Thus, even if one were motivated to combine
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`Mathiassen and McKeeth as Apple suggests, the result would not include outputting
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`an “accessibility attribute” resulting from a comparison of biometric information.
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`This belies Apple’s claim that the combination of Mathiassen and McKeeth renders
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`obvious the invention claimed in the ʼ705 Patent.
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`
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`Otherwise, Apple equates Mathiassen’s “open door” command with “under
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`which conditions” (as opposed to “whether”) access to a car is granted. See Paper
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`No. 1 at 19. However, as Apple acknowledges, its expert characterizes this “open
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`door” command as “unconditional access.” Id. (emphasis added). By imputing a
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`conditionality to unconditional access, Apple improperly attempts to conflate the
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`“whether” and “under which conditions” requirements of the claimed “accessibility
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`attribute.”
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`iii. The Circumstances Do Not Compel Institution
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`The Interim Procedures provides for institution notwithstanding the Fintiv
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`factors “when a petition presents compelling evidence of unpatentability.” Interim
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`Procedures at 9. In its Petition, Apple does not identify any compelling factor
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`requiring institution.
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`7.
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`Conclusion Regarding the Fintiv Factors
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`Only the first Fintiv factor, regarding the absence of a stay, is neutral. The
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`remaining five factors weigh in favor of discretionary denial. There can be little
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`dispute under those circumstances that the Board should exercise its discretion under
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`section 314(a) in denying institution of inter partes review in this case.
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`C. Fintiv Should not be Overruled
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`In a last gasp effort to avoid discretionary denial of its Petition, Apple argues
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`that the precedential decision in Fintiv should be overruled for a variety of reasons,
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`none of which is well-founded for the reasons set forth below.
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`1.
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`Fintiv did not Exceed the Director’s Authority
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`Section 314(a) is clear on its face – “[t]he Director may not authorize an inter
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`partes review to be instituted unless the Director determines that the information
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`presented in the petition . . . and any response . . . shows that there is a reasonable
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`likelihood that the p