UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`
`
`
`Case IPR2022-00602
`U.S. Patent No. 9,665,705
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`PATENT OWNER’S REQUEST FOR REHEARING OF DIRECTOR’S
`DENIAL OF PANEL REVIEW
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`
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`914488849.1
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`
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`
`
`
`
`
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
`STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`
`
`
`Case IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING OF DIRECTOR’S
`DENIAL OF PANEL REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`914488849.1
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`I.
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`
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`INTRODUCTION
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`This case represents a rare occasion where rehearing1 is warranted –
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`inconsistent panel decisions on an
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`identical
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`issue resulting
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`in opposite
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`determinations of patentability. Here, the Panel was asked to determine whether
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`finger presses taught in the cited prior art are biometric signals. Patent Owner has
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`argued repeatedly that they are not. In this case, the Panel disagreed, and found all
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`claims of U.S. Patent No. 9,665,705 (“the ‘705 Patent”) unpatentable. In a separate
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`proceeding (IPR2022-01006, “the ASSA ABLOY IPR”), the same Panel, reviewing
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`the same patent (the ‘705 Patent) and same claim limitations, found that the prior
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`art’s finger presses “are not biometric entries at all.” The Panel then found, in the
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`ASSA ABLOY IPR, all claims of the ’705 Patent not unpatentable.
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`In this case Patent Owner unsuccessfully petitioned for Director Review as to
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`whether the prior art teaches a “series of entries of [a] biometric signal.” After the
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`Director denied Patent Owner’s review request, the Panel issued the decision in the
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`ASSA ABLOY IPR, finding that the prior art’s finger presses “are not biometric
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`entries at all” (emphasis added).
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`
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`The PTAB has now issued two inconsistent decisions regarding the prior art’s
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`teaching of the same limitation in the same patent. This inconsistency is dispositive
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`1 Pursuant to Section 5(C)(ii) of the Revised Interim Director Review Process, Patent
`Owner requests rehearing of the Director’s denial of Panel review.
`2
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`
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`
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`of the Panel’s decisions – finding the claims unpatentable in one proceeding and
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`patentable in another – and warrants a rehearing in this matter. As Patent Owner has
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`repeatedly urged in this proceeding, finger presses are not biometric – they are
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`knowledge-based. The Panel’s abrupt about face on whether finger presses are
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`biometric, resulting in opposite findings of patentability, glaringly demonstrates that
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`the decision in this proceeding was incorrect and should be reviewed.
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`II. DISCUSSION
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`
`
`
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`A.
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`The History of This Proceeding
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`In its petition, Petitioner sought review of Claims 1, 4, 6, 10-12, and 14-17 of
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`the ’705 Patent in light of Mathiassen in view of McKeeth and Anderson. Paper No.
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`1 at 5. Common to all challenged claims is limitation 1(d1), “receive a series of
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`entries of the biometric signal, said series being characterised according to at least
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`one of the number of said entries and a duration of each said entry.” See Paper No.
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`31 at 50 (emphasis added).
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`
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`Petitioner’s prior art starting point for this limitation was Mathiassen’s “finger
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`movements,” which can be “a touch/no touch finger movement,” i.e., a finger press.
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`Paper No. 1 at 32. However, according to Petitioner, “Mathiassen does not teach
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`characterizing the series based on a ‘duration’ of each entry.” Id. at 33. Petitioner
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`therefore looked to Anderson’s teaching of a “series of pressure pulses having
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`varying durations.” Id. at 34.
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`
`
`3
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`
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`In response, Patent Owner argued that “the ‘pressure pulses’ in Anderson are
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`not, and do not generate, biometric signals as they are knowledge-based.” Paper No.
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`17 at 26. As a result, “combining Mathiassen’s fingerprint sensor with Anderson’s
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`pressure code does not produce the claimed invention, as any duration would apply
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`to a non-biometric signal.” Id. at 28 (emphasis in original). Later, Patent Owner
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`explained that Mathiassen’s fingerprint sensor “cannot analyze movement,” e.g.,
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`finger presses. See Paper No. 26 at 14. Rather, movement analysis in Mathiassen
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`requires “[m]ovement analyzing means, in the form of a hardware or a software
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`movement analyzing program module.” Id.
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`
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`Ultimately, in addressing this limitation, the Panel determined first that,
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`Mathiassen “will detect the biometric part of the input signal, while also sensing the
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`number and duration of inputs.” Paper No. 31 at 52 (emphasis added). The Panel
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`them accepted Petitioner’s argument that Mathiassen could be “modified to
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`recognize a touch duration, per Anderson, of the fingerprint representation on the
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`fingerprint sensor.” See id. According to the Panel, “there can be no reasonable
`
`dispute that Anderson discloses input biometric signals that vary in number and
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`duration.” Id. at 51 (emphasis added). The Panel concluded that “Petitioner has
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`sufficiently shown that the cited references, as combined by Petitioner, disclose or
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`suggest limitation 1(d1).” Id. at 54. In short, the Panel looked to a series of pressure
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`pulses to satisfy the “biometric signal” series limitation.
`
`
`
`4
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`
`
`
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`Patent Owner sought Director Review of the Panel’s Decision. The second
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`issue on which Patent Owner sought review was whether the combination of the
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`Mathiassen and Anderson references results “in a series of received biometric signal
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`entries that are mapped into an instruction used to populate the database as part of
`
`an enrollment process, as required by the challenged claims.” Paper No. 34 at 1
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`(emphasis added). In explaining the Panel’s error, Patent Owner began by noting
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`that Mathiassen’s finger movement sequences do not “constitute a series of received
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`biometric signal entries that are mapped into an instruction used to populate the
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`database as part of the enrollment process.” Id. at 7. Patent Owner then pointed out
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`that Anderson’s system “may sense only ‘temporal applications of pressure,’ relying
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`on timing of the pressure applications for entry of the access code,” which is
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`“knowledge-based, i.e., non-biometric.” Id. at 9. The Director denied Patent
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`Owner’s review request on November 6, 2023. See Paper No. 35.
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`
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`
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`B.
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`The ASSA ABLOY IPR
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`In a separate proceeding, ASSA ABLOY AB and its co-petitioners sought
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`review of the ’705 Patent. ASSA ABLOY AB, et al. v. CPC Patent Technologies PTY,
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`Ltd., IPR2022-01006, Final Written Decision (PTAB Nov. 30, 2023) [Paper No. 47]
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`at 2. Of relevance here is the first challenge ground, where the petitioners asserted
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`
`
`5
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`
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`the Bianco and Mathiassen-0672 references against claims 1, 3-5, and 9-17 of the
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`’705 Patent. See id. at 13. Specifically, the Petitioners in that proceeding argued
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`that Mathiassen-067 “discloses ‘using the same fingerprint sensor (i.e., biometric
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`sensor) for the dual purposes of: (i) reading fingerprints for enrollment,
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`authentication, and access control and (ii) receiving commands through a series of
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`finger inputs of varying durations.” Id. at 82.
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`
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`Patent Owner responded that “the ‘finger movements’ and ‘finger commands’
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`disclosed in Mathiassen-067 ‘are not entries of a biometric signal,’” but are, rather,
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`“merely the touching of a touch-sensitive pad during which no biometric
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`measurement is taken at all.” Id. at 83. The petitioners’ expert acknowledged that,
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`in Mathiassen-067, while commands are entered using the same biometric sensor
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`that can be used for validating the fingerprint, “there’s no disclosure one way or the
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`other as to whether it’s also reading the fingerprint.” Id. at 85. The Panel agreed
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`with Patent Owner, finding that “there is a substantive distinction between the finger
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`press command entry function and the fingerprint user authentication function” in
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`Mathiassen-067, despite both functions using “the same ‘touch sensitive switch.’”
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`2 The Mathiassen reference at issue in this proceeding and the Mathiassen-067
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`reference at issue in the ASSA ABLOY IPR are different references. See IPR2022-
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`01006, Paper No. 47 at 3.
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`
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`6
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`
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`Id. at 84. In other words, simple finger presses are not biometric signals. The Panel
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`made no effort to reconcile its decision with the decision in this matter.
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`C.
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`This Matter Should be Reheard
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`Reduced to their essences, these two inter partes review proceedings turned
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`on one key issue – whether knowledge-based finger movements can satisfy the
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`“biometric signal” series limitation of the challenged claims. The answer in this
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`proceeding was yes – that Anderson’s pressure pulses are “biometric signals that
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`vary in number and duration.” Paper No. 31 at 51. Tellingly, the same Panel in co-
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`pending ASSA ABLOY IPR answered that same question in the negative, agreeing
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`that finger presses “are not biometric entries at all.” IPR2022-01006, Final Written
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`Decision [Paper No. 47] at 82-83. The Panel’s clear reversal of position on this key
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`issue warrants rehearing. And, the Panel’s reasoning in the later decision is sound –
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`there is indeed “a substantive distinction” between finger presses and fingerprint use,
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`even if the same instrumentality is involved in both operations. Id. at 84.
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`
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`It is of no moment that, in the ASSA ABLOY IPR, the petitioners relied upon
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`the Mathiassen-067 reference or the “biometric signal” series limitation, while
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`Petitioner here relies upon the combination of Mathiassen and Anderson. The issue
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`is the same in both instances – do finger presses comprise biometric signals? In any
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`event, if anything, the Panel’s decision in the ASSA ABLOY IPR is even more
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`applicable here. As the Panel in that proceeding noted, there is no disclosure in
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`
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`7
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`
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`Mathiassen-067 “one way or the other as to whether it's also reading the fingerprint.”
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`Id. at 85. Here, in contrast, there is evidence that Anderson’s pressure pulses are
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`clearly knowledge-based, as illustrated below:
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`
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`Ex. 2016 at 14.
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`
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`Nonetheless, here, the Panel concluded “there can be no reasonable dispute
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`that Anderson discloses input biometric signals that vary in number and duration.”
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`Paper No. 31 at 51 (emphasis added). The Panel in the ASSA ABLOY IPR finally
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`came to the realization that Patent Owner has been urging in this proceeding all along
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`– that knowledge-based information entries, such as finger presses, are not biometric
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`signals. That realization, however, does not undo the earlier decision that finger
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`presses are biometric signals, requiring a rehearing,
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`8
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`III. CONCLUSION
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`
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`For the foregoing reasons, the Patent Owner’s request for rehearing should be
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`granted.
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`Dated: December 5, 2023
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`
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`Respectfully submitted by
`
`
`K&L GATES LLP,
`
`By: /Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`darlene.ghavimi@klgates.com
`(512) 482-6919
`2801 Via Fortuna,
`Suite 650
`Austin, Texas 78746
`
`9
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`
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