Trials@uspto.gov
`571-272-7822
`
`Paper 31
`Date: September 27, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-00602
`Patent 9,665,705 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2022-00602
`Patent 9,665,705 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner” or “Apple”) filed a Petition for inter partes
`review of claims 1, 4, 6, 10–12, and 14–17 (collectively, the “challenged
`claims”) of U.S. Patent No. 9,655,705 B2 (Ex. 1001, “the ’705 patent”).
`Paper 1 (“Pet.”). CPC Patent Technologies PTY, Ltd. (“Patent Owner” or
`“CPC”) timely filed a Preliminary Response to the Petition. Paper 7
`(“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary
`Reply (Paper 8 (“Prelim. Reply”)) addressing the issue of discretionary
`denial raised in the Preliminary Response and Patent Owner filed a Prelim.
`Sur-Reply (Paper 9 (“Prelim. Sur-Reply”)).
`We concluded that Petitioner satisfied the burden, under 35 U.S.C.
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`would prevail with respect to at least one of the challenged claims.
`Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), and in
`accordance with SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018), we
`instituted an inter partes review of all the challenged claims, on all the
`asserted grounds. Paper 11 (“Dec. Inst.”).
`Patent Owner filed a Response. Paper 17 (“PO Resp.”). Petitioner
`filed a Reply. Paper 20 (“Reply”). Patent Owner filed a Sur-reply.
`Paper 26 (“Sur-reply”).
`Petitioner submitted eighty exhibits. See Exs. 1001–10911 (some
`consecutive exhibit numbers were not used; e,g, there are no exhibits
`
`
`1 Exhibit 1091 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See PTAB Consolidated Trial Practice Guide, 84
`(Nov. 2019 (“TPG”) (“Demonstrative exhibits used at the final hearing are
`aids to oral argument and not evidence”).
`
`2
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`IPR2022-00602
`Patent 9,665,705 B2
`numbered 1056–1064); see also Paper 28 (Petitioner’s Updated Exhibit List
`stating that Exhibit numbers 1056–1064 were “Intentionally left blank.”).
`Petitioner relies on the Declaration testimony of Andrew Sears, Ph.D.
`See Exs. 1003, 1090.
`Patent Owner submitted sixteen exhibits. See Exs. 2001–20162;
`see also Paper 29 (Patent Owner’s Updated Exhibit List). Patent Owner
`relies on the Declaration testimony of William C. Easttom III, D. Sc,, Ph.D.
`See Exs. 2013, 2014.
`A hearing was held June 29, 2023. (Paper 30) (“Transcript or “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has proven that claims 1, 4, 6, 10–12, and 14–17 are unpatentable.
`Real Parties-in-Interest
`B.
`Apple identifies itself as the sole real party-in-interest. Pet. 62.
`CPC also identifies itself as the sole real party-in-interest. Paper 4, 2.
`C. Related Matters
`Petitioner and Patent Owner each identify the following two district
`court proceedings as related matters: (1) CPC Patent Technologies Pty Ltd.
`v. Apple Inc., Case No. 6:21-cv-00165-ADA (W.D. Tex.); and (2) CPC
`Patent Technologies Pty Ltd. v. HMD Global Oy, Case No. 6:21-cv-00166-
`ADA (W.D. Tex.) (the “HMD W.D. Texas case”). Pet. 62; Paper 4, 2.
`
`
`2 Exhibit 2016 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See id.
`
`3
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`IPR2022-00602
`Patent 9,665,705 B2
`The first listed case, between the same parties involved in this inter
`partes review proceeding, however, has been transferred to the Northern
`District of California. See In re Apple Inc., 2022 WL 1196768 (Fed. Cir.
`Apr. 22, 2022); see also Ex. 3002 (Text Order granting Motion to Change
`Venue). The case is now styled CPC Patent Technologies Pty Ltd. v. Apple
`Inc., No. 5:22-cv-02553 (N.D. Cal.) (the “Apple N.D. California case”).
`See Ex. 3003 (PACER Docket for the transferred case); Prelim. Resp. 1, fn 1
`(Patent Owner acknowledging the transfer from the Western District of
`Texas to the Northern District of California).
`Petitioner and Patent Owner also each identify the following two
`pending inter partes review proceedings as related matters: (1) IPR2022-
`00600, challenging claims in Patent 8,620,039; and (2) IPR2022-00601,
`challenging claims in Patent 9,269,208, which is the “parent” of the ’705
`patent. See Ex. 1001, code (63). A final written decision in the 00600 IPR
`is due October 17, 2023. A final written decision in the 00601 IPR is being
`issued simultaneously with this Decision in the case before us.
`D. The ’705 Patent
`We make the following findings concerning the disclosure of the ’705
`patent.
`The ’705 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1001, Abstr. The “controlled item” can be, for
`example, the locking mechanism of a door or an electronic lock on a
`personal computer. Id. at 1:43–46.3 The system uses a database of
`“biometric signatures” (id. at2:32), such as a fingerprint (id. at 7:36) for
`determining authorized access.
`
`
`3 Citations are to column:line[s] of the ’705 patent.
`
`4
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`IPR2022-00602
`Patent 9,665,705 B2
`Figure 2 from the ’705 patent is reproduced below.
`
`
`
`Figure 2 is a functional block diagram of an arrangement for
`providing secure access according to the system disclosed in the ’705 patent.
`Ex. 1001, 5:18–19.
`As described in the written description of the ’705 patent, and as
`illustrated generally in Figure 2, user 101 makes a request to code entry
`module 103. Id. at 5:56–57. Code entry module 103 includes biometric
`sensor 121. Id. at 5:57–58. If biometric sensor 121 is a fingerprint sensor,
`for example, then the request “typically takes the form of a thumb press” on
`a sensor panel (not shown) on code entry module 103. Id. at 5:60–63.
`“Other physical attributes that can be used to provide biometric signals
`include voice, retinal or iris pattern, face pattern, [and] palm configuration.”
`Id. at 1:30–32; see also id. at 16:45–49 (claim 4 stating “the biometric sensor
`
`5
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`IPR2022-00602
`Patent 9,665,705 B2
`is responsive to one of voice, retinal pattern, iris pattern, face pattern, and
`palm configuration”).
`Code entry module 103 then “interrogates” an authorized user identity
`database 105, which contains “biometric signatures” for authorized users, to
`determine if user 101 is an authorized user. Ex. 1001, 5:64–6:2. If user 101
`is an authorized user, code entry module 103 sends a signal to
`“controller/transmitter” 107. Id. at 6:2–4. Database 105 is prepared by an
`“administrator.” Id. at 10:38–42 (“The first user of the code entry module
`103 . . . is automatically categorised4 as an administrator.”).
`The disclosed system and method compare biometric input “signal”
`102 to database 105 of authorized biometric “signatures” to determine if
`user 101 is an authorized user. Id. at 5:65–6:2 (“Thus for example if the
`request 102 is the thumb press on the biometric sensor panel 121 [producing
`a thumbprint] then the user database 105 contains biometric signatures
`[i.e., thumbprints] for authorised users against which the request 102 can be
`authenticated.”). If user 101 is an authorized user, code entry module 103
`sends a signal to “controller/transmitter” 107 allowing access to the
`controlled item. Id. at 6:2–10.
`When biometric sensor 121 is a fingerprint sensor,5 the biometric
`signatures stored in database 105 are not limited to a single fingerprint. The
`’705 patent also discloses that, if so programed by an administrator, code
`
`
`4 The Specification uses the British spelling, which we also use when
`quoting the Specification.
`5 See Ex. 1001, 10:35 – 38 (“Although the present description refers to
`‘Users’, in fact it is ‘fingers’ which are the operative entities in system
`operation when the biometric sensor 121 (see FIG. 2) is a fingerprint
`sensor.”) (emphasis added). Thus, it is clear that biometric sensor 121 is not
`limited to a fingerprint sensor.
`
`6
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`IPR2022-00602
`Patent 9,665,705 B2
`entry module 103 may be activated by providing a succession of finger
`presses to biometric sensor 121 included in module 103. Id. at 10:56–58. If
`these successive presses are of the appropriate duration, the appropriate
`quantity, and are input within a predetermined time, controller 107 accepts
`the presses “as potential control information,” or a biometric signal, and
`checks the input information against a stored set of “legal [authorized]
`control signals,” or the database of biometric signatures. Id. at 10:59–67.
`“In one arrangement, the control information is encoded by either or both
`(a) the number of finger presses and (b) the relative duration of the finger
`presses.” Id. at 10:60–63 (emphasis added).
`An example of this type of “control information” or “legal control
`signal” is “dit, dit, dit, dah,” where “dit” is a finger press of one second’s
`duration . . . and “dah” is a finger press of two second’s duration.”6
`Id. at 11:1–7.
`
`
`6 We have not been directed to any persuasive evidence, and have found
`none on our own review of the evidence, which establishes why the
`Specification refers to the number and duration of finger presses as “control
`information” and “legal control signals,” rather than a “biometric signal” and
`a “database” of “biometric signatures,” respectively, which are the terms
`used throughout the Specification for the input signal and the database of
`authorized users.
`The Specification is required to include “a written description of the
`invention, and of the manner and process of making and using it, in such
`full, clear, concise, and exact terms as to enable any person skilled in the art
`. . . to make and use the same.” 35 U.S.C. § 112(a). Neither we nor the
`parties, however, have jurisdiction in this inter partes review proceeding to
`address this enablement issue. See id. at § 311(b) (“A petitioner in an inter
`partes review may request to cancel as unpatentable 1 or more claims of a
`patent only on a ground that could be raised under section 102 or 103 and
`only on the basis of prior art consisting of patents or printed publications.”).
`
`7
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`IPR2022-00602
`Patent 9,665,705 B2
`If user 101 is an authorized user based on the inputs to code entry
`module 103, controller/transmitter 107 then sends “an access signal,” based
`on a “rolling code,” to controller 109. Ex. 1001, 6:2–9. According to the
`written description, “[t]he rolling code protocol offers non-replay encrypted
`communication.” Id. at 6:9–10. Other secure codes, such as “the
`Bluetooth™ protocol, or the Wi Fi™ protocols” also can be used. Id. at
`6:32–38.
`If controller 109 determines that the rolling code received is
`“legitimate,” then controller 109 sends a command to “controlled item 111,”
`which, for example “can be a door locking mechanism on a secure door, or
`an electronic key +circuit in a personal computer” that is to be accessed by
`user 101. Id. at 6:11–20.
`Code entry module 103 also incorporates at least one mechanism for
`providing feedback to user 101. Id. at 6:24–25. This mechanism can, for
`example, take the form of “one or more Light Emitting Diodes (LEDs) 122,”
`and/or audio transducer 124, which provide visual or audio feedback to the
`user. Id. at 6:25–31.
`In Figure 2, “sub-system 116,” shown on the left of vertical dashed
`line 119, communicates with “sub-system 117,” shown on the right of
`dashed line 119, “via the wireless communication channel” used by access
`signal 108 between controller/transmitter 107 and controller/receiver 109.
`Id. at 6:61–67. As disclosed in the ’705 patent, “[a]lthough typically the
`communication channel uses a wireless transmission medium, there are
`instances where the channel used by the access signal 108 can use a wired
`medium.” Id. at 7:9–14.
`
`8
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`

`

`IPR2022-00602
`Patent 9,665,705 B2
`
`E. Illustrative Claim
`Among the challenged claims, claims 1, 10, 11, 14, 15, 16, and 17 are
`independent claims.
`Independent claims 1 and 15 are directed to a “system for providing
`secure access to a controlled item.” Ex. 1001, 15:62–63; 18:39–40. These
`claims are identical except for claim 1 using the phrase “configured to,”
`whereas claim 15 uses the phrase “capable of.” For example, claim 1
`includes “a biometric sensor configured to receive a biometric signal” (id. at
`15:66–67 (emphasis added)), whereas claim 15 includes “a biometric sensor
`capable of receiving a biometric signal.” (id. at 18:43–44 (emphasis added)).
`This same distinction also applies to the claimed elements of “a transmitter
`sub-system controller,” “a transmitter,” and “a receiver sub-system
`controller.” Compare id. at 16:1–23 (claim 1) with id. at 18:45–67 (claim
`15).
`
`We discuss below in Section II.C (Claim Construction) whether use of
`the phrase “capable of” rather than the phrase “configured to” is a distinction
`without a substantive difference.
`Independent claims 10 and 16 are directed to a “transmitter sub-
`system for operating in a system for providing secure access to a controlled
`item.” Id. at 17:19–20; 19:1–2. The only distinction between claims 10 and
`16 is the same “capable of”/”configured to” distinction discussed above for
`claims 1 and 15. Compare id. at 17:19–39 (claim 10) with id. at 19:1–20
`(claim 16).
`Independent claims 11 and 17 are directed to a “method for providing
`secure access to a controlled item.” Id. at 17:40–41. The only distinction
`between claims 11 and 17 is the same “capable of”/”configured to”
`distinction discussed above for claims 1 and 15. Again, the only distinction
`
`9
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`IPR2022-00602
`Patent 9,665,705 B2
`between claims 11 and 17 is the same “capable of”/”configured to”
`distinction discussed above for claims 1 and 15. Compare id. at 17:40–67
`(claim 11) with id. at 19:21–20:23 (claim 17).
`Independent claim 14 is directed to a “non-transitory computer
`readable storage medium storing a computer program.” Id. at 18:18–19.
`Independent claim 1 is illustrative and is reproduced below.
`1. A system for providing secure access to a controlled
`item, the system comprising:
`a memory comprising a database of biometric signatures;
`a transmitter sub-system comprising:
`a biometric sensor configured to receive a biometric
`signal;
`a transmitter sub-system controller configured to match
`the biometric signal against members of the database of
`biometric signatures to thereby output an accessibility attribute;
`and
`
`a transmitter configured to emit a secure access signal
`conveying information dependent upon said accessibility
`attribute; and
`a receiver sub-system comprising:
`a receiver sub-system controller configured to:
`receive the transmitted secure access signal; and
`provide conditional access to the controlled item
`dependent upon said information;
`wherein the transmitter sub-system controller is further
`configured to:
`receive 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;
`map said series into an instruction; and
`populate the data base according to the instruction,
`wherein the controlled item is one of: a locking mechanism of a
`physical access structure or an electronic lock on an electronic
`computing device.
`
`10
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`

`

`IPR2022-00602
`Patent 9,665,705 B2
`Ex. 1001, 15:62–16:23.7
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following ground:
`35 U.S.C. §8
`Claim(s) Challenged
`1, 4, 6, 10–12, 14–17 103(a)
`
`Reference(s)/Basis
`Mathiassen,9 McKeeth,10
`Anderson11
`Petitioner also relies on the declaration testimony of Andrew Sears,
`Ph.D. See Ex. 1003.12
`
`
`7 Petitioner provides a Claim Listing Appendix as part of the Petition.
`Pet. 64–69. This Appendix includes all the challenged claims identified by
`individual clause, such as, for claim 1, labeling the clauses 1(a), 1(b),
`1(b)(1), etc. Petitioner refers to these clause labels in its analysis.
`8 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before
`March 16, 2013, we refer to the pre-AIA version of the statute.
`9 Mathiassen et al, US 2004/0123113 A1, published June 24, 2004
`(Ex. 1004, “Mathiassen”).
`10 McKeeth, US 6,766,456 B1, issued July 20, 2004 (Ex. 1005, “McKeeth”).
`11 Anderson,US 6,509,847 B1, issued Jan. 21, 2003 (Ex. 1006, “Anderson”).
`12 Exhibit 1003 is a 238-page declaration from Dr. Sears, including its
`Appendix A, which is a detailed mapping of the disclosures of the three
`applied references to the challenged claims. Dr. Sears currently is a
`Professor and Dean of the College of Information Sciences and Technology
`at The Pennsylvania State University. Ex. 1003 ¶ 5. Dr. Sears earned a
`Bachelor of Science degree in Computer Science, and a Ph.D. degree, also in
`Computer Science. Id. ¶ 6. He has held various positions in academia,
`including serving as the Interim Chief Information Security Officer at Penn
`State. Id. ¶¶ 7, 8. He has authored or edited a number of computer-related
`publications and held leadership positions in several computer industry
`organizations. Id. ¶¶ 10–12.
`
`11
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`IPR2022-00602
`Patent 9,665,705 B2
`
`II. ANALYSIS
`A. Obviousness
`Section 103 forbids issuance of a patent when “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, evidence
`such as commercial success, long felt but unsolved needs, and failure of
`others.13 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); see KSR,
`550 U.S. at 407 (“While the sequence of these questions might be reordered
`in any particular case, the [Graham] factors continue to define the inquiry
`that controls.”). The Court in Graham explained that these factual inquiries
`promote “uniformity and definiteness,” for “[w]hat is obvious is not a
`question upon which there is likely to be uniformity of thought in every
`given factual context.” Graham, 383 U.S. at 18.
`The Supreme Court made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR, 550 U.S. at 415.
`Whether a patent claiming the combination of prior art elements would have
`been obvious is determined by whether the improvement is more than the
`predictable use of prior art elements according to their established functions.
`
`
`13 Patent Owner does not direct us to any objective evidence of non-
`obviousness in its Preliminary Response.
`
`12
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`IPR2022-00602
`Patent 9,665,705 B2
`Id. at 417. To support this conclusion, however, it is not enough to show
`merely that the prior art includes separate references covering each separate
`limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655
`F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness additionally requires
`that a person of ordinary skill at the time of the invention “would have
`selected and combined those prior art elements in the normal course of
`research and development to yield the claimed invention.” Id.
`In determining whether there would have been a motivation to
`combine prior art references to arrive at the claimed invention, it is
`insufficient to simply conclude the combination would have been obvious
`without identifying any reason why a person of skill in the art would have
`made the combination. Metalcraft of Mayville, Inc. v. Toro Co., 848 F.3d
`1358, 1366 (Fed. Cir. 2017).
`Moreover, in determining the differences between the prior art and the
`claims, the question under 35 U.S.C. § 103 is not whether the differences
`themselves would have been obvious, but whether the claimed invention as a
`whole would have been obvious. Litton Indus. Prods., Inc. v. Solid State
`Sys. Corp., 755 F.2d 158, 164 (Fed. Cir. 1985) (“It is elementary that the
`claimed invention must be considered as a whole in deciding the question of
`obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
`1537 (Fed. Cir. 1983) (“[T]he question under 35 U.S.C. § 103 is not whether
`the differences themselves would have been obvious. Consideration of
`differences, like each of the findings set forth in Graham, is but an aid in
`reaching the ultimate determination of whether the claimed invention as a
`whole would have been obvious.”).
`
`13
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`IPR2022-00602
`Patent 9,665,705 B2
`As a factfinder, we also must be aware “of the distortion caused by
`hindsight bias and must be cautious of arguments reliant upon ex post
`reasoning.” KSR, 550 U.S. at 421.
`Applying these general principles, we consider the evidence and
`arguments of the parties.
`B. Level of Ordinary Skill in the Art
`The level of skill in the art is “a prism or lens” through which we view
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders
`from using their own insight or, worse yet, hindsight, to gauge obviousness.”
`Id.
`
`Factors pertinent to a determination of the level of ordinary skill in the
`art include: (1) educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of workers active in the field. Env’t Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, these factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art. Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level
`of ordinary skill, we also may look to the prior art, which may reflect an
`appropriate skill level. Okajima, 261 F.3d at 1355.
`“The Graham analysis includes a factual determination of the level of
`ordinary skill in the art. Without that information, a district court cannot
`
`14
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`IPR2022-00602
`Patent 9,665,705 B2
`properly assess obviousness because the critical question is whether a
`claimed invention would have been obvious at the time it was made to one
`with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan
`Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see also Ruiz v. A.B.
`Chance, 234 F.3d 654, 666 (Fed. Cir. 2000) (“The determination of the level
`of skill in the art is an integral part of the Graham analysis.”).
`Neither party provides any persuasive evidence or argument
`concerning the factors identified above or any other factors relevant to
`determining the level of ordinary skill.
`Petitioner asserts that a person of ordinary skill in the art would have
`had “at least a bachelor’s degree in computer engineering, computer science,
`electrical engineering, or a related field, with at least one year experience in
`the field of human-machine interfaces and device access security.” Pet. 4
`(citing Ex. 1003 ¶¶ 31–35). 14 Petitioner also states that “[a]dditional
`education or experience may substitute for the above requirements.” Id.
`In forming an opinion on the level of ordinary skill applicable to this
`proceeding, Dr. Sears testifies that he considered various factors, including
`the type of problems encountered in the art, the solutions to those problems,
`the rapidity with which innovations are made in the field, the sophistication
`of the technology, and the education level of active workers in the field. Ex.
`1003 ¶ 31. Dr. Sears also testifies that he “placed myself back in the time
`frame of the claimed invention and considered the colleagues with whom I
`had worked at that time.” Id. Dr. Sears opines that a person of ordinary skill
`
`
`14 Petitioner cites this testimony as “Dec.” Pet. 4, fn 1. We will cite it, as
`we do all other evidence, by reference to its Exhibit number, which is
`Exhibit 1003.
`
`15
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`IPR2022-00602
`Patent 9,665,705 B2
`would have had the education and experience adopted by Petitioner.
`Id. at ¶ 32.
`Patent Owner states it “does not dispute [Petitioner’s]
`characterization” of the level of ordinary skill in the art See PO Resp. 5–6.
`Based on the prior art, the sophistication of the technology at issue,
`and Dr. Sears’ Declaration testimony, we adopt, with minor modification,
`Petitioner’s undisputed definition of the level of ordinary skill. We
`determine that in this proceeding a person of ordinary skill would have had a
`bachelor’s degree in computer engineering, computer science, electrical
`engineering, or a related field, with one year of experience in the field of
`human-machine interfaces and device access security, or an equivalent
`balance of education and work experience. We have eliminated the open-
`ended phrase of “at least” in describing the education and experience of a
`person of ordinary skill. This open-ended description fails to provide the
`specificity necessary to define the level of ordinary skill.
`C. Claim Construction
`We construe each claim “using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`[§] 282(b).” 37 C.F.R. § 42.100(b) (2021). Under this standard, claim terms
`are generally given their ordinary and customary meaning as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have
`frequently stated that the words of a claim ‘are generally given their ordinary
`and customary meaning.’” (citations omitted)).
`Petitioner states that in the related district court litigation between the
`parties, the Western District of Texas court entered a Claim Construction
`
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`IPR2022-00602
`Patent 9,665,705 B2
`Order on February 10, 2022. (Ex. 1077). Pet. 5. Petitioner also states “the
`Parties agreed to certain constructions in a Joint Claim Construction
`Statement” in the Western District of Texas litigation (Ex. 1074). Id.
`Petitioner then proposes that “[f]or purposes of this IPR, Apple applies the
`District Court’s constructions from the Apple litigation [Ex. 1077] and
`constructions agreed to by the Parties (Ex. 1074)[15] that are not otherwise
`plain and ordinary meaning.” Id.
`Petitioner also highlights specific constructions for the claim terms
`“database,” “conditional access,” “biometric signal,” and “accessibility
`attribute” from Exhibits 1074 and 1077. Pet. 6.
`Patent Owner proposes “constructions” (1) for the term “accessibility
`attribute” (PO Resp. 6–7); (2) the phrase requiring a series of entries of the
`biometric signal “characterised according to at least one of the number of
`said entries and a duration of each said entry” (id. at 7–11); and (3) the
`“populate” the database limitation concerning enrolling or authorizing new
`users (id. at 11–12).
`Patent Owner also provided its views on the differences in claim
`scope between the term “configured to” and the term “capable of” as used in
`the challenged claims. Id. at 12–14. Petitioner also addresses this topic.
`Reply 26.
`“[W]e need only construe terms ‘that are in controversy, and only to
`the extent necessary to resolve the controversy.’” Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`
`15 The cited Exhibits 1074 and 1077 are from the case prior to its transfer
`from the Western District of Texas to the Northern District of California.
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`

`IPR2022-00602
`Patent 9,665,705 B2
`803 (Fed. Cir. 1999)). Here, we determine the claim terms that need specific
`construction are the three terms proposed by Patent Owner for specific
`construction. Accordingly, we construe these terms below.
`1. General Claim Construction Principles
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent
`define the invention to which the patentee is entitled the right to exclude.’”
`Phillips, 415 F.3d at 1312 (citations omitted). “[T]here is no magic formula
`or catechism for conducting claim construction.” Intel Corp. v. Qualcomm
`Inc., 21 F.4th 801, 809 (Fed. Cir. 2021) (quoting Phillips, 415 F.3d at 1324).
`Fortunately, however, there is substantial judicial guidance.
`Claim construction requires determining how a skilled artisan would
`understand a claim term “in the context of the entire patent, including the
`specification.” Grace Instrument Indus., LLC v. Chandler Instruments Co.,
`LLC, 57 F.4th 1001, 1008 (Fed. Cir. 2023) (quoting Phillips, 415 F.3d
`at 1313. Id. (citation omitted). “[C]laims must be read in view of the
`specification, of which they are a part.” Id. (quoting Markman v. Westview
`Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc)). The
`Specification, or more precisely, the written description, is the “single best
`guide to the meaning of a disputed term.” Id. (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)), and “is, thus, the
`primary basis for construing the claims.” Id. (citation omitted). Although
`claim terms are interpreted in the context of the entire patent, it is improper
`to import limitations from the Specification into the claims. Phillips, 415
`F.3d at 1323. Thus, we are careful not to cross that “fine line” that exists
`between properly construing a claim in light of the specification and
`improperly importing into the claim a limitation from the specification.”
`Comark Commc’ns., Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir.
`
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`IPR2022-00602
`Patent 9,665,705 B2
`1998) (“We recognize that there is sometimes a fine line between reading a
`claim in light of the specification, and reading a limitation into the claim
`from the specification.”).
`While certain terms may be at the center of the claim construction
`debate, the context of the surrounding words of the claim also must be
`considered in determining the ordinary and customary meaning of those
`terms. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
`2003).
`We also consider the patent’s prosecution history. Phillips, 415 F.3d
`at 1317.
`In construing the claims, we may also look to available “extrinsic
`evidence concerning relevant scientific principles, the meaning of technical
`terms, and the state of the art.” Phillips, 415 F.3d at 1314 (quoting
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
`1116 (Fed. Cir. 2004)).
`2. “Accessibility Attribute”
`In our Decision to Institute this proceeding, we adopted, for purposes
`of that Decision, Petitioner’s unopposed asserted claim construction for
`“accessibility attribute,” which was an “attribute that establishes whether
`and under which conditions access to the controlled item should be granted.”
`Dec. Inst. 13 (citing Pet. 6 (citing the Texas District Court’s claim
`construction, Exs. 1074, 1077)). We note here that the District Court
`