Case 6:21-cv-00165-ADA Document 46 Filed 11/19/21 Page 1 of 41
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`
`Case No. 6:21-cv-00165-ADA
`
`Plaintiff,
`
` v.
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`APPLE INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`APPLE’S OPENING CLAIM CONSTRUCTION BRIEF
`
`CPC EXHIBIT 2011
`Apple Inc. v. CPC Patent Technologies PTY Ltd.
`IPR2022-00602
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`Page 1 of 102
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`Case 6:21-cv-00165-ADA Document 46 Filed 11/19/21 Page 2 of 41
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`APPLICABLE LEGAL PRINCIPALS .............................................................................. 3
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`AGREED CONSTRUCTIONS .......................................................................................... 5
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`DISPUTED CONSTRUCTIONS ....................................................................................... 6
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`A.
`
`The ’039 Patent ....................................................................................................... 6
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`1.
`
`2.
`
`3.
`
`4.
`
`“biometric card pointer system” / “biometric card enrolment system” ’039
`Patent Cls. 1, 13,19, .................................................................................... 6
`
`“means for defining, dependent upon the received card information, a
`memory location in a local memory external to the card” ’039 Patent, Cl.
`13............................................................................................................... 11
`
`“means for determining if the defined memory location is unoccupied”
`’039 Patent Cl. 13 ..................................................................................... 14
`
`“means for storing, if the memory location is unoccupied, the biometric
`signature at the defined memory location” ’039 Patent, Cl. 13 ................ 15
`
`B.
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`The ’208 and ’705 Patents .................................................................................... 16
`
`1.
`
`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`“being characterized according to/determining/determine at least one of
`the number of said entries and a duration of each said entry” ’208 Patent
`Cls. 1, 9, 10; ’705 Patent Cls. 1, 10, 11, 14, 15, 16, 17 ............................ 17
`
`“biometric signal” ’208 Patent, Cls. 1, 2, 9, 10; ’705 Patent, Cls. 1, 2, 10,
`11, 12, 14, 15, 16, 17................................................................................. 21
`
`“biometric signature” ’208 Patent, Cls. 1, 9, 11; ’705 Patent, Cls. 1, 11, 12,
`14, 15, 17................................................................................................... 23
`
`“accessibility attribute” ’208 Patent, Cls. 1, 9, 10; ’705 Patent, Cls. 1, 10,
`11, 14, 15, 16, 17....................................................................................... 26
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`“collocated” ’705 Patent, Cl. 9 ................................................................. 29
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`Terms Lacking Corresponding Structure .................................................. 30
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`Remaining Means-Plus-Function Terms of the ’208 Patent ..................... 33
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`
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`CONCLUSION ................................................................................................................. 34
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`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`3M Innovative Properties Co. v. Avery Dennison Corp.,
`350 F.3d 1365 (Fed. Cir. 2003)................................................................................................28
`
`Advanced Ground Info. Sys., Inc. v. Life360, Inc.,
`830 F.3d 1341 (Fed. Cir. 2016)..........................................................................................12, 31
`
`Aristocrat Techs. Aus. Pty Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)..............................................................................................4, 5
`
`B. Braun Med. Inc. v. Abbott Labs.,
`124 F.3d 1419 (Fed. Cir. 1997)..................................................................................................4
`
`Bell Commc’ns Rsch., Inc. v. Vitalink Commc’ns Corp.,
`55 F.3d 615 (Fed. Cir. 1995)......................................................................................................7
`
`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)................................................................................................12
`
`Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
`334 F.3d 1294 (Fed. Cir. 2003)................................................................................................17
`
`Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
`296 F.3d 1106 (Fed. Cir. 2002)..................................................................................................4
`
`Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc.,
`412 F.3d 1291 (Fed. Cir. 2005)..................................................................................................4
`
`Ecolab, Inc. v. Paraclipse, Inc.,
`285 F.3d 1362 (Fed. Cir. 2002)................................................................................................21
`
`General Elec. Co. v. U.S.,
`572 F.2d 745 (1978) .................................................................................................................29
`
`Hockerson-Halbertsadt, Inc. v. Converse Inc.,
`183 F.3d 1369 (Fed. Cir. 1999)..................................................................................................7
`
`Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp.,
`493 F.3d 1358 (Fed. Cir. 2007)................................................................................................21
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`525 F.3d 1200 (Fed. Cir. 2008)................................................................................................21
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009)................................................................................................27
`
`ii
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`Medical Instrumentation and Diagnostic Corp. v. Elekta AB,
`334 F3d 1205 (Fed. Cir. 2003).................................................................................................13
`
`Micro Chem., Inc. v. Great Plains Chem. Co., Inc.,
`194 F.3d 1250 (Fed. Cir. 1999)..................................................................................................4
`
`MyMail, Ltd. v. Am. Online, Inc.,
`476 F.3d 1372 (Fed. Cir. 2007)..................................................................................................8
`
`Nestle USA, Inc. v. Steuben Foods, Inc.,
`686 Fed. Appx. 917 (Fed. Cir. 2017) .......................................................................................27
`
`Omega Eng’g, Inc. v. Raytek Corp.,
`334, F.3d 1314, 1321 (Fed. Cir. 2003).......................................................................................4
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed.Cir.2005) (en banc)............................................................................26, 28
`
`Rain Computing, Inc. v. Samsung Elecs. Am., Inc.,
`989 F.3d 1002 (Fed. Cir. 2021)................................................................................................33
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)................................................................................................21
`
`Sinorgchem Co., Shangdong v. Int’l Trade Com’n,
`511 F.3d 1332 (Fed. Cir. 2007)..................................................................................................8
`
`SuperGuide Corp. v. DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004)............................................................................................18, 21
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................8
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015)............................................................................................4, 31
`
`Statutes
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`35 U.S.C. § 112, ¶ 6 .........................................................................................................................4
`
`Pub. L. No. 112-29, sec.4(e), 125 Stat. 284, 297 (2011) .................................................................4
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`Apple Inc. (“Apple”) submits this opening claim construction brief pursuant to the Court’s
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`Scheduling Order to construe terms of the Asserted Patents, U.S. Patent Nos. 8,620,039 (the “’039
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`Patent”), 9,269,208 (the “’208 Patent”), and 9,665,705 (the “’705 Patent”). See Dkt. No. 37
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`(Scheduling Order), at 3.
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`
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`INTRODUCTION
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`CPC Patent Technologies Pty Ltd. (“CPC”) asserts three patents in this case related to
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`biometric security. These patents grew out of the work of inventor Christopher Burke in the early
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`2000s at his company Microlatch. Microlatch apparently sold and developed stand-alone
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`biosecurity systems that could be used for building access. Microlatch ultimately failed
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`commercially, and Mr. Burke’s patents were ostensibly acquired by Plaintiff CPC.1 The patents
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`are directed to specific biometric security systems that Apple’s accused Touch ID and Face ID
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`technology does not use.
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`By 2003, the earliest priority date for the CPC patents, biometric security was a mature
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`technology that had been heavily investigated for years by universities, companies, law
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`enforcement, and the US government.
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`Fingerprints are one of the most mature biometric technologies and are
`considered legitimate proofs of evidence in courts of law all over the world. . . .
`More recently, an increasing number of civilian and commercial applications are
`either using or actively considering to use fingerprint-based identification
`because of a better understanding of fingerprints as well as demonstrated
`matching performance than any other existing biometric technology.
`
`
`1 Apple addressed this issue in its separately filed Motion To Dismiss Complaint For Lack Of
`Standing (Dkt. 45), in which it showed that legal title did not pass to CPC because of a problem
`in CPC’s assignment history.
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`
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`1
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`Fingerprint Classification and Matching, Jain et al, 2000 (Ex. 1),2 at 3. The idea of matching
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`fingerprints against stored fingerprint records to provide secure access was fundamental to the
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`concept of biometric security and was well established in both academic and commercial settings.
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`The task of authentication module is to authenticate the identity of the person who
`intends to access the system. The person to be authenticated indicates his/her
`identity and places his/her finger on the fingerprint scanner; a digital image of
`his/her fingerprint is captured; minutiae pattern is extracted from the captured
`fingerprint image and fed to a matching algorithm which matches it against the
`person's minutiae templates stored in the system database to establish the identity.
`
`Id. at 5.
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`CPC’s patents recognize that matching fingerprints in an electronic system was not itself
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`new. ’039 Patent at 2:10-22; ’208 Patent at 1:20-32.3 CPC thus directed its patents to very specific
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`implementations of biometric security systems. The first patent, the ’039 Patent, is directed to an
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`ATM card system that it refers to as a “Biometric Card Pointer System.” The biometric card
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`pointer (“BCP”) system is exactly as it sounds—it uses card data to point to a memory location
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`where biometric data of the card user is stored.
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`The ’208 and ’705 Patents are directed to a verification and enrollment system with
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`transmitter and receiver subsystems that allow for additional functionality beyond mere fingerprint
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`recognition. ’208 Patent at Abstract; see also Fig. 2; 5:50-6:19. The transmitter subsystem takes
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`a fingerprint (or other biometric feature) as an input and sends it to a separate receiver that matches
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`the fingerprint data against stored records. Id. at 6:56-7:20. Rather than simply authenticating a
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`single fingerprint, the’208 and ’705 Patents take as input the number of presses and the duration
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`of a press. Id. at 10:45-67. By recording this additional information and using it as part of the
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`authentication process, the ’208 and ’705 Patents are able to provide for multiple levels of control
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`2 All cites are to the Declaration of Kathryn Quisenberry, attached hereto.
`3 The ’208 and ’705 Patents share a specification. For simplicity, and unless otherwise noted, all
`citations for the ’208 and ’705 Patents are to the ’208 Patent.
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`2
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`and authentication based on the multi-factored fingerprint input. Id.; see also 8:17-28.
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`The ’039 and ’208 patents contain many means-plus-function terms. The parties dispute
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`the proper structure for all of these. For some, the patents provide no corresponding structure, and
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`the claims are indefinite. For others, Apple proposes specific structure linked to the recited
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`function as required by the law. CPC’s proposals in all instances are improper. For each patent,
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`CPC proposes the same structure for each term in that patent—a facially deficient approach.
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`CPC’s proposed structures are also generic structures that are not in the specification or simply
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`repeat claim language—both approaches again are plainly improper. Whereas Apples’ proposals
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`comply with the strict requirements for construing means-plus-function limitations, CPC’s do not.
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`CPC’s proposals should be rejected.
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`Apple’s proposed constructions rely on the express language of the claims themselves and
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`the clear, unequivocal disclosures contained in the patents. CPC’s proposals seek to broaden the
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`scope of the claims to capture what are basic biometric security features that it concedes are prior
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`art. Apple’s proposals comport with the plain language of the claim, the disclosure of the
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`specification, and accurately reflect what the inventor truly invented. Apple’s proposals should be
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`adopted.
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`
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`APPLICABLE LEGAL PRINCIPALS
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`Apple recognizes that the Court is familiar with claim construction principles and provides
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`relevant principles where appropriate in its analysis. Apple believes an overview of means-plus-
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`function law is appropriate, which it provides below.
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`The parties agree that several of the claim terms at-issue are drafted in “means-plus-
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`3
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`function” form. 35 U.S.C. § 112, ¶ 6.4 Construction of a means-plus-function claim requires a
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`two-step process. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351–52 (Fed. Cir. 2015). A
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`court must first determine the function that is performed by the limitation. Id.; see also Micro
`
`Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999). The function
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`is determined by construing the claim language. Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
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`296 F.3d 1106, 1113 (Fed. Cir. 2002). “Then, the court must determine what structure, if any,
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`disclosed in the specification corresponds to the claimed function.” Williamson at 1351.
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`“Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic
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`evidence clearly links or associates that structure to the function recited in the claim.” Id. at 1352;
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`Omega Eng’g, Inc. v. Raytek Corp., 334, F.3d 1314, 1321 (Fed. Cir. 2003); B. Braun Med. Inc. v.
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`Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997).
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`“If the patentee fails to disclose adequate corresponding structure, the claim is indefinite.”
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`Williamson at 1352. “To meet the definiteness requirement, structure disclosed in the specification
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`must be clearly linked to and capable of performing the function claimed by the means-plus-
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`function limitation.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d
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`1291, 1299 (Fed. Cir. 2005). If a patent specification simply repeats the function recited in a
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`means-plus-function claim limitation, without also disclosing specific structure for performing the
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`function, the limitation cannot be construed and is invalid as indefinite. See Aristocrat Techs. Aus.
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`Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1334 (Fed. Cir. 2008) (affirming trial court’s
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`conclusion that plaintiff’s proffered structure — “any standard microprocessor base [sic] gaming
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`machine by means of appropriate programming” — insufficiently disclosed structure because it
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`4 This brief refers exclusively to the 2011 version of § 112 in this regard because the effective
`filing date of CPC’s patents predate the effective date of the Leahy-Smith America Invents Act’s
`amendments to that section. Pub. L. No. 112-29, sec.4(e), 125 Stat. 284, 297 (2011).
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`4
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`“simply references a computer that is capable of performing the function.”). The proper inquiry
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`is “whether one of skill in the art would understand the specification itself to disclose a structure,
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`not simply whether that person would be capable of implementing that structure.” Id. at 1337.
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`The CPC Patents in this case contain the barest of disclosures, which are couched in largely
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`functional terms. Use of means-plus-function imposes a burden of disclosure, one that the CPC
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`patents often do not meet.
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` AGREED CONSTRUCTIONS
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`Agreed constructions are provided below. The parties dispute the proper construction of
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`all means-plus-function terms in the ’039 and ’208 Patents.
`
`Agreed Construction
`Plain and ordinary meaning, defined as
`“contingent on or determined by”
`Plain and ordinary meaning
`
`Plain and ordinary meaning, defined as “to
`establish or ascertain definitely, as after
`consideration, investigation, or calculation”
`Plain and ordinary meaning, defined as “a
`number of things or events of the same class
`coming one after the other in spatial or
`temporal succession”
`Plain and ordinary meaning, defined as “a
`command, operation, or order given to a
`computer processor by a computer program”
`“organized structure of data”
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`“access based on accessibility attribute”5
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`Term
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`“dependent upon”
`(’039 Patent, Cls. 1, 13, 19)
`“biometric signature”
`(’039 Patent, Cls. 1, 13, 19)
`“determining”
` (’208 Patent Cls. 1, 9; ’705 Patent Cl. 10)
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`“series”
`(’208 Patent Cls. 1, 9, 10; ’705 Patent Cls. 1,
`10, 11, 14, 15, 16, 17)
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`“instruction” / “instructions”
`(’208 Patent, Cls. 1, 9, 10; ’705 Patent, Cls.
`1, 10, 11, 14, 15, 16, 17)
`“database”
`(’208 Patent, Cls. 1, 2, 9, 10, 11; ’705 Patent,
`Cls. 1, 2, 4, 10, 11, 12, 14, 15, 16, 17)
`“conditional access”
`(’208 Patent, Cls. 1, 10; ’705 Patent, Cls. 1,
`11, 14, 15, 17)
`
`
`
`
`
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`
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`5 While Apple and CPC agree on this construction, CPC does not agree with Apple’s proposed
`construction for “accessibility attribute” contained within this construction.
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`5
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` DISPUTED CONSTRUCTIONS
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`A.
`
`The ’039 Patent6
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`The BCP system of the ’039 Patent addresses “security issues associated with use of card
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`devices such as credit cards, smart cards, and wireless card-equivalents such as wireless
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`transmitting fobs.” Id. at Abstract; 1:13-16. Existing biometric card devices “require[] a central
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`repository (806) of card information 702 and biometric information 801” that is “cumbersome and
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`potentially compromises the privacy of the holder of the card 701.” Id. at 2:31-34. In the BCP
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`system of the ’039 Patent, as its name suggest, an ATM card (or its equivalent) includes a pointer
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`to a specific memory location of a verification station, such as an ATM machine, where the
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`biometric data of the user is stored. ’039 Patent at Abstract; see also Figs. 4, 5; 2:51-3:3. The
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`’039 Patent teaches that this provides additional security while reducing complexity. See id. at
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`2:40-44.
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`1.
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`“biometric card pointer system” / “biometric card pointer
`enrolment system” ’039 Patent Cls. 1, 13,19,
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`Apple’s Proposed Construction
`“a system including a card or key fob with
`data that points to a memory location where
`a user’s biometric data is stored”
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`CPC’s Proposed Construction
`Plain and ordinary meaning
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`The dispute here revolves around the meaning of “biometric card pointer system” or
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`“BCP.” The phrase is a coined phrase without an ordinary meaning in the art, and it is not found
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`in any literature or technical dictionaries. The ’039 Patent discloses “arrangements, referred to as
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`a Biometric Card Pointer (BCP) arrangements or systems, which seek to address [problems with
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`the prior art] relating to secure access and/or secure processes, by automatically storing a card
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`user’s biometric signature in a local memory…at a memory address defined by the (“unique”) card
`
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`6 The ’039 Patent is titled Card Device Security Using Biometrics and issued on Dec. 31, 2013.
`Dkt. No. 1 at Ex. A.
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`6
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`information on the user’s card.” ’039 Patent at 2:51-67. The meaning of the phrase could not be
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`clearer. The term is presented as a proper noun in the specification and used verbatim in each
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`asserted claim. The patent does not purport to invent the use of biometric security with a credit
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`card, as CPC would have it, but rather discloses and claims a very specific implementation referred
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`to as a Biometric Card Pointer System. The claim language, the specification, and the figures all
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`show that the term “biometric card pointer system” has a single, clear meaning, which is that
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`proposed by Apple.
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`Each asserted independent claim of the ’039 Patent recites a “biometric card pointer
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`system” or a “biometric card pointer enrolment system.”7 See id. at Cls. 1, 13, 19. Claim 1 recites
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`“A method of enrolling in a biometric card pointer system, the method comprising the steps of,”
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`claim 13 recites “A biometric card pointer enrolment system,” and claim 19 recites “A non-
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`transitory computer readable medium having recorded thereon a computer program for directing
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`a processor to execute a method of enrolling in a biometric card pointer system.” 8 The term is
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`defined in the specification.
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` The term “biometric card pointer system” is a term coined and has no meaning outside the
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`context of the patent. See, e.g., Hockerson-Halbertsadt, Inc. v. Converse Inc., 183 F.3d 1369,
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`1375 (Fed. Cir. 1999) (“…patentees may choose their own descriptive terms as long as those terms
`
`
`7 The term appears in the preamble of all three claims. The use of biometric card pointer system,
`a coined term, in the preamble is limiting. Bell Commc’ns Rsch., Inc. v. Vitalink Commc’ns
`Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“A claim preamble has the import that the claim as a
`whole suggests for it.”) Here, the patentee used a specific, coined term to claim and define his
`inventions. That term breathes life into the claim because of its specificity. To ignore it would
`be to ignore the very thing the inventor says he is inventing. Also, the claim language itself, as
`described infra, recites the details of the claimed BCP as described in the specification. As
`stated in the Bell Communications case, “when the claim drafter chooses to use both the
`preamble and the body to define the subject matter of the claimed invention, the invention so
`defined, and not some other, is the one the patent protects.” Id. (emphasis in original).
`8 All emphasis is added unless otherwise noted.
`
`7
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`adequately divulge a reasonably clear meaning to one of skill in the art.”). To construe the term,
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`the parties must consult the specification. MyMail, Ltd. v. Am. Online, Inc., 476 F.3d 1372, 1376
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`(Fed. Cir. 2007) (stating that the Court must “look to the specification” to determine the scope of
`
`the coined term “NSP.”).
`
`Here, the patentee provided a clear and concise description of the “biometric pointer card
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`system,” which requires that the card include information that points to a memory location where
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`biometric data of the user is stored. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
`
`(Fed. Cir. 1996) (“The specification acts as a dictionary when it expressly defines terms used in
`
`the claims or when it defines terms by implication.”); see also, Sinorgchem Co., Shangdong v. Int’l
`
`Trade Com’n, 511 F.3d 1132, 1336 (Fed. Cir. 2007) (holding that when the specification “reveal[s]
`
`a special definition given to a claim term by the patentee that differs from the meaning it would
`
`otherwise possess…the inventor’s lexicography governs.”).
`
`According to the patent, “FIG. 4 illustrates
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`the biometric card pointer concept.” As is plainly
`
`seen in the figure, shown to the right, card data 604
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`“points to address of the biometric signature.” The
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`separate local database 124 includes 607, a “memory
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`address defined by the card data.” The patent
`
`specification further explains how “standard card
`
`601
`
`has
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`card
`
`information
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`605
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`typically
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`comprising…card type…card range, and…card data
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`specific to the particular card.” Id. at 7:24-29. In the
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`biometric card pointer system, “the card data 604 acts as the memory reference which points, as
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`8
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`depicted by an arrow 608, to a particular memory location.” Id. at 7:31-33.
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`Similarly, the patent describes Figure 5
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`(shown to the right) as “show[ing] a process 200 for
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`normal use of the BCP approach.” Id. at 8:5-6. This
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`process checks the memory for the biometric data of
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`the user at the location defined by the card data. Step
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`204 states “Memory (card data) = signature?” and has
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`a YES arrow, resulting in a Verification process and
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`a NO arrow, resulting in an Enrolment process. That
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`is, the “memory” location is synonymous with the
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`“card data.”
`
`The specification describes the same process.
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`If a user swipes their card, they are requested to “provide a biometric signature to the biometric
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`reader 102.” Id. at 8:6-24. After the signature is received, “the process 200 is directed to a step
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`204 that reads the contents of the local database 124 at an address defined by the card data 604.”
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`Id. at 8:24-27. The system then determines if the address is empty or not, and either verifies or
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`enrolls the user. Id. at 8:27-34.
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`Other descriptions of the invention in the specification are consistent with this requirement
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`that data on the card define the memory location where biometric data of the user are stored. See,
`
`e.g., ’039 Patent at 7:31-35 (“In one example of the disclosed BCP approach, the card data 604
`
`acts as the memory reference which points, as depicted by an arrow 608, to a particular memory
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`location at an address 607 in the local database 124 in the verification station 127 of FIG. 3.”);
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`7:43-49 (describing that when “the card user couples their card 601 (or key-fob or other card
`
`9
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`Case 6:21-cv-00165-ADA Document 46 Filed 11/19/21 Page 14 of 41
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`device) to the card reader,” the card data “defines the location 607 in memory 1214 where the
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`unique biometric signature is stored.”). The patent goes on to describe “other approaches” in
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`which a card or key fob points to a memory location where a user’s biometric data is stored:
`
`“when an enrolment is performed, resulting in a memory location being used to
`store a biometric signature (eg see step 401 in FIG. 7), a flag can be set to indicate
`that the memory location in question is occupied. The term ‘occupied’ in this
`context means that the memory location in question has been used in the
`enrolment process for a user, and that the information stored at the memory
`location in question has not been deleted by a BCP system administrator. If the
`signature stored in the database 124 at the particular memory location is deleted by
`a BCP system administrator (as described in regard to FIG. 8) then the flag can be
`reset to indicate that the memory location in question is no longer occupied.”
`
`Id. at 9:23-37. Notably, there is no description of the biometric card pointer system in the ’039
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`Patent that is inconsistent with Apple’s proposed construction.
`
`The claim limitations, apart from the preamble, do not use the “biometric card pointer
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`system” phrase, but they do expressly recite the design and functionality of the BCP, including the
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`key feature of using the card data to define the memory location for the biometric data. Claim 1,
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`for instance, recites “defining, dependent upon the received card information, a memory location
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`in a local memory external to the card.” Similarly, claim 13 recites “means for defining, dependent
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`upon the received card information, a memory location in a local memory external to the card,”
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`and claim 19 recites “code for defining, dependent upon the received card information, a memory
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`location in a local memory external to the card.”
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`It is rare when a patentee so clearly describes his invention as CPC’s patent does here.
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`Because Biometric Card Pointer System is a coined term that the patent unequivocally describes
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`as a system that uses card data to point to a memory location where user biometric data is stored
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`as set forth in Apple’s proposed construction, Apple’s construction should be adopted.
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`Case 6:21-cv-00165-ADA Document 46 Filed 11/19/21 Page 15 of 41
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`2.
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`“means for defining, dependent upon the received card
`information, a memory location in a local memory external to
`the card” ’039 Patent, Cl. 13
`
`Apple’s Proposed Construction
`Indefinite for lacking corresponding structure.
`
`Function: defining, dependent upon the
`received card information, a memory location
`in a local memory external to the card
`
`Structure: none
`
`
`
`CPC’s Proposed Construction
`Means plus function language pursuant to
`section 112. The function of this limitation is
`“defining, dependent upon the received card
`information, a memory location in a local
`memory external to the card.” The means for
`performing that function is plus function
`language pursuant to section 112. Structure
`corresponding to the claimed means is a
`computer system with a processor executing a
`biometric card pointer (BCP) application stored
`in memory and all equivalents thereto. ‘039
`Patent, col. 6, line 66 – col. 7, line 23; col. 7,
`lines 31-35, 39-42, 47-48; col. 8, lines 44-46;
`col. 11, lines 29-37; col. 12, lines 1-9; Fig. 4.
`
`Claim 13 recites “means for defining, dependent upon the received card information, a
`
`memory location in a local memory external to the card.” The parties agree on the claimed
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`function, which is “defining, dependent upon the received card information, a memory location in
`
`a local memory external to the card.” As discussed in Section IV.A.1, supra, the ’039 Patent
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`teaches a biometric card pointer system wherein the card data points to a memory location that
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`stores the user’s biometric data. The recited function here, “defining, dependent upon the received
`
`card information, a memory location in a local memory external to the card,” is the manifestation
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`of that biometric card pointer system in the claim term itself. The ’039 Patent fails to disclose
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`any structure that performs this claimed function.
`
`This language recites a data management function in a memory system, that is, the defining
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`of the memory location in an external memory based on the card data. Later limitations recite
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`additional memory operations, including the storing step, i.e., “means for determining if the
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`defined memory location is unoccu