`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner
`
`
`
`CASE: IPR2022-00602
`U.S. PATENT NO. 9,665,705
`
`
`
`
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`TABLE OF CONTENTS
`
`V. 
`
`I. 
`Introduction ...................................................................................................... 1 
`ʼ705 Patent Overview ...................................................................................... 4 
`II. 
`III.  Level of Ordinary Skill .................................................................................... 5 
`IV.  Claim Construction .......................................................................................... 6 
`A. 
`“Accessibility Attribute” ....................................................................... 6 
`B. 
`“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” .......................................... 7 
`C. 
`“Populate the Data Base According to the Instruction” ...................... 11 
`D. 
`“Configured To” v. “Capable Of” ....................................................... 12 
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS ...................................................................................................... 14 
`A. 
`The Prior Art Does Not Teach the “Accessibility Attribute”
`Limitation ............................................................................................ 14 
`1.  Mathiassen Does Not Teach an “Accessibility Attribute” ....... 14 
`2. 
`There is No Motivation to Combine Apple’s Cited Prior Art to
`Arrive at the “Accessibility Attribute” as Properly Construed . 18 
`The Prior Art Does Not Teach the Biometric Signal Duration
`Limitation ............................................................................................ 26 
`1. 
`Anderson Does Not Teach a Durational Component to a
`Biometric Signal Entry ............................................................. 26 
`There is No Motivation to Combine Mathiassen and Anderson
` ................................................................................................... 28 
`C.  Apple’s Cited Prior Art Does Not Populate the Data Base
`According to the Instruction ................................................................ 32 
`D. 
`Independent Claims 10, 11 & 14-17 ................................................... 35 
`E. 
`Dependent Claims ............................................................................... 35 
`VI.  CONCLUSION .............................................................................................. 35 
`
`
`
`B. 
`
`2. 
`
`i
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`

`

`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Scheduling Order, CPC Patent Technologies Pty Ltd. v. HMD
`Global Oy, 6:21-cv-00166 (Dkt. 27) (Sept. 23, 2021)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`HMD Final Invalidity Contentions, Chart B15 – Mathiassen,
`dated March 16, 2022
`
`Apple Inc. – Final Invalidity Contentions dated March 16, 2022
`
`Scheduling Order, CPC Patent Technologies Pty Ltd. v. Apple
`Inc., 6:21-cv-00165 (Dkt. 37) (Sept. 23, 2021)
`
`March 19, 2020 Letter from George Summerfield to Brian
`Ankenbrandt
`
`Defendant Apple Inc.’s Notice of Motion and Motion to Stay
`Pending Inter Partes Review, 5:22-cv-02553 (Dkt. 119) (June
`14, 2022)
`
`HMD Global Oy – Final Invalidity Contentions dated March 16,
`2022
`
`Declaration of George C. Summerfield in Support of Motion
`for Pro Hac Vice Admission
`
`Biography of George C. Summerfield
`
`Declaration of Jonah Heemstra in Support of Motion for Pro
`Hac Vice Admission
`
`Apple’s Opening Claim Construction Brief, CPC Patent
`Technologies Pty Ltd. v. Apple Inc., 6:21-cv-00165 (Dkt. 46)
`(Nov. 19, 2021)
`
`Final Deposition Transcript of Dr. Andrew Sears, dated
`November 8, 2022
`
`ii
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`Exhibit No.
`2013
`
`Description
`Declaration of William C. Easttom II (Chuck Easttom) Ph.D.,
`D.Sc.
`
`2014
`
`CV of Dr. Chuck Easttom
`
`
`
`
`
`
`iii
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`

`

`I.
`
`INTRODUCTION
`
`IPR2022-00602
`U.S. Patent No. 9,665,705
`
`
`The limitations of the independent claims of U.S. Patent No. 9,665,705 (“the
`
`ʼ705 Patent”) can be divided as follows: 1) the preamble; 2) a memory with the
`
`biometric signature database (representative clause 1(a));1 3) a transmitter subsystem
`
`and its components involved in capturing and matching of biometric data
`
`(representative clause 1(b)); 4) a receiver subsystem to give access to a device based
`
`upon information received from the transmitter subsystem (representative clause
`
`1(c)); 5) the transmitter subsystem to the extent it is involved in the capture and
`
`registration of biometric data associated with a user (representative clause 1(d)); and
`
`6) the device to be unlocked (representative clause 1(e)). Apple cobbles together a
`
`single, three-reference challenge to the claims of the ʼ705 Patent. Even with these
`
`three references in hand, Apple must ignore its own characterization of the prior art
`
`and its construction of the subject claims to mount an obviousness challenge.
`
`
`1 These clauses refer to the numbering system used by the Board to label the various
`
`claim limitations in claim 1 of the ʼ705 Patent. As the Board notes, the only
`
`difference between claim 1 and claim 15 (the only other independent claim directed
`
`to a “system for providing secure access to a controlled item”) is the phrase
`
`“configured to” in the former and the phrase “capable of” in the latter. Paper No. 11
`
`at 6. The distinction between those terms is addressed later herein.
`
`1
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`First, the “transmitter subsystem” (representative clause 1(b)) specifies a
`
`“controller configured to match the biometric signal against members of the database
`
`of biometric signatures to thereby output an accessibility attribute” (emphasis
`
`added). Apple successfully urged that “accessibility attribute” be construed as an
`
`“attribute that establishes whether and under which conditions access to the
`
`controlled item should be granted to a user” (emphasis added). According to Apple,
`
`the challenged claims go beyond the binary access decision of “yes” or “no.” Yet,
`
`Apple improperly calls upon prior art teachings that are limited to this very binary
`
`decision as allegedly teaching the “accessibility attribute” limitation.
`
`Second, the transmitter subsystem limitation (representative clause 1(d))
`
`specifies “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” (representative clause 1(d)(1)) (emphasis added) (“the Biometric Signal
`
`Duration Limitation”). In discussing the prior art that allegedly teaches this
`
`limitation, Apple’s expert, Dr. Andrew Sears, initially draws a bright line distinction
`
`between biometric security devices, such as a fingerprint sensor, and knowledge-
`
`based security devices, such as a capacitive touch sensor and Morse code.
`
`Yet, when cobbling together a multi-reference challenge to the validity of the
`
`subject claims, Dr. Sears and Apple completely blur that distinction, combining
`
`teachings from both realms, and treating knowledge-based security features as
`
`2
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`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`biometrics to satisfy the Biometric Signal Duration Limitation. This necessarily
`
`dooms Apple’s challenge, lest the Board also ignore the fundamental distinction
`
`between “knowledge,” which can be learned and stolen, and “biometrics,” which
`
`cannot. Apple also provides no explanation as to how or why teachings from these
`
`disparate technologies could be combined to arrive at the claimed invention,
`
`especially when the afore-referenced simpler solutions had presented themselves.
`
`Third, the claim specifies that the received series of biometric signals be
`
`mapped into an instruction (representative clause 1(d)(2)), and that instruction is
`
`used to populate the data base (representative clause 1(d)(3)). In other words, as
`
`Apple acknowledges, the series of biometric signal is used in the user enrollment
`
`process. Yet, in describing its principal reference, Apple points to one thing - finger
`
`movements – as purportedly satisfying the “receive” and “map” limitations, and to
`
`another thing – “master minutiae tables” of fingerprints – for the “populate”
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`limitation. This clearly contravenes the plain language of the claims and the
`
`antecedents therein.
`
`Finally, if Apple is somehow correct that combining knowledge-based and
`
`biometric security is fair game in challenging the claims of the ʼ705 Patent, Apple
`
`fails to explain why one of ordinary skill in the art would have been motivated in the
`
`name of enhancing security to modify an existing biometric sensor in some fashion,
`
`with the reprogramming that would be required therefor, rather than employing
`
`3
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`myriad simpler, albeit unpatented, security alternatives, such as a physical push
`
`button, to be used in conjunction with such existing biometric sensor. This is
`
`particularly problematic, given that one of the three prior art references relied upon
`
`by Apple in its single challenge ground (Anderson) denigrates fingerprint
`
`recognition as requiring “sophisticated software for implementation,” and itself
`
`teaches the use of a push button,
`
`Any one of the foregoing problems with Apple’s single challenge ground is
`
`sufficient to defeat the instant petition. The combination of all four issues, however,
`
`means that the Board should give the petition the short shrift it deserves.
`
`II.
`
`ʼ705 PATENT OVERVIEW
`
`The ʼ705 Patent issued on May 30, 2017 from an application claiming priority
`
`of August 13, 2003. The ʼ705 Patent has 17 claims, claims 1, 10, 11, and 14-17 of
`
`which are independent. Representative claim 1 of the ʼ705 Patent reads:
`
`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;
`
`4
`
`

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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`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.
`
`Ex. 1001, 15:62-16:24.
`
`As the Board noted, “[t]he ʼ705 Patent discloses a system ‘or providing secure
`
`access to a controlled item.’” Paper No. 11 at 4 (citation omitted). “The ‘controlled
`
`item’ can be, for example, the locking mechanism of a door or an electronic lock on
`
`a personal computer.” Id. (citation omitted). “The system uses a database of
`
`‘biometric signatures’ such as a fingerprint for determining authorized access.” Id.
`
`(internal citations omitted).
`
`III. LEVEL OF ORDINARY SKILL
`
`CPC does not dispute Apple’s characterization that a hypothetical 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
`
`5
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`one year experience in the field of human-machine interfaces and device access
`
`security,” and “[a]dditional education or experience may substitute for the above
`
`requirements.” Paper No. 1 at 3.
`
`IV. CLAIM CONSTRUCTION
`A.
`
`“Accessibility Attribute”
`
`Claim 1 of the ʼ705 Patent requires an output of an “accessibility attribute”
`
`based upon a biometric signal match, and emitting “a secure access signal conveying
`
`information dependent upon said accessibility attribute.” Ex. 1001, 16:1-8. Apple
`
`proposed, and the Board adopted, an “attribute that establishes whether and under
`
`which conditions access to the controlled item should be granted to a user” as the
`
`construction of “accessibility attribute.” Paper No. 1 at 6; Paper No. 11 at 13.
`
`According to Apple this construction “is consistent with the description of the
`
`invention throughout the specification and the claims, which goes beyond mere
`
`matching—the binary decision of “yes” or “no”—and instead describes a system
`
`that provides for different types of access.” Ex. 2011, 26 (emphasis added). See
`
`also id., 28 (“[b]inary matching—“match/no match”—is not what the inventor was
`
`trying to invent”).
`
`The ʼ705 Patent teaches the following examples of accessibility attributes:
`
`[A]n access attribute (granting unconditional access), a duress attribute
`
`(granting access but with activation of an alert tone to advise authorities
`
`6
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`

`

`of the duress situation), an alert attribute (sounding a chime indicating
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`that an unauthorised, but not necessarily hostile, person is seeking
`
`access).
`
`Ex. 1001, 8:28-35.
`
`In short, a mere binary decision to grant access to a device does not constitute
`
`an “accessibility attribute” under Apple’s claim construction. As discussed below,
`
`however, Apple improperly tries to back away from that distinction in challenging
`
`the validity of the subject claims.
`
`B.
`
`“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”
`
`As the Board noted, “[t]he ʼ705 Patent discloses a system ‘for providing
`
`secure access to a controlled item,’” wherein “[t]he ‘controlled item’ can be . . . an
`
`electronic lock on a personal computer.” Paper No. 11 at 4. “The system uses a
`
`database of ‘biometric signatures,’ such as a fingerprint for determining authorized
`
`access.” Id. (internal citations omitted).
`
`Representative claim 1 of the ʼ705 Patent requires, inter alia, a transmitter
`
`sub-system controller that is 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” (representative clause
`
`1(d1)). Paper No. 11 at 29 (emphasis added). Subsumed within this Biometric
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`7
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`Signal Duration Limitation is the term “biometric signal.” Apple proposed, and the
`
`Board adopted, “physical attribute of the user (i.e., fingerprint, facial pattern, iris,
`
`retina, voice, etc.)” as the construction of that term. Paper No. 1 at 6; Paper No. 11
`
`at 13. In other words, biometric information identifies “an individual via unique
`
`physiological or behavioral characteristics” Ex. 1003, ¶ 39. See also Ex. 2012, 20:9-
`
`21, 21:13-15 (a biometric signal is unique to an individual user). According to
`
`Apple’s own expert, a biometric signal is based on an inherent attribute of an
`
`individual, cannot be learned, and cannot be stolen. Ex. 1003, ¶ 38; Ex. 2012 at
`
`28:12-21.
`
`The claimed “biometric signal” is in contradistinction to what Dr. Sears
`
`references in the prior art as “knowledge-based” security measures, such as a
`
`password. Ex. 1003, ¶¶ 37-38. A knowledge-based approach is “not based on any
`
`inherent attributes of an individual.” Id., ¶ 38. The ʼ705 Patent itself speaks of a
`
`“biometric signal” as an “alternative” to a “secret code,” i.e., a knowledge-based
`
`security measure. Ex. 1001, 1, limes 21-29. The following table summarizes the
`
`distinctions between knowledge-based and biometric-based security measures:
`
`Knowledge-Based Security
`Knowledge can be learned by another.
`Ex. 2012, 28:12-21.
`
`Knowledge is not based on an inherent
`attribute of an individual. Ex. 1003, ¶
`38.
`
`Biometric-Based Security
`A biometric
`feature
`cannot be
`“learned.” Ex. 2012, 36:5-11 (cannot
`“teach” a mug shot).
`identified an
`Biometric
`information
`individual via unique physiological or
`behavioral characteristics. Ex. 2012,
`
`8
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`
`20:9-21, (“unique to the user”). See also
`id. at 29:4-16 (“essentially part of a
`person”);
`id. at 33:11-16 (“unique
`patterns form via
`the ridges and
`bifurcations on the skin of fingerprints”
`are “biometric”); and Ex. 1003, ¶¶ 37,
`40.
`biometric
`“steal”
`cannot
`One
`information. Ex. 1003, ¶ 38; Ex. 2012,
`20:9-21, 21:13-15.
`
`Knowledge, e.g., a password, can be
`stolen. Ex. 1003, ¶ 38.
`
`Despite proposing this construction, Apple seeks to blur the lines between
`
`what its expert calls “knowledge-based” security features (those based on
`
`knowledge, such as a passcode or particular pattern, and not on any attribute of the
`
`user), and a biometric signal based on the unlearnable attribute of the user, in an
`
`effort to show the Biometric Signal Durational Limitation is taught by its single
`
`challenge ground. Indeed, Apple itself proposed, the District Court found, and the
`
`Board has preliminarily adopted, a construction that the claimed “series [is]
`
`characterised according to at least one of the number of said entries and a duration
`
`of each said entry.” Crucially, the antecedent for this series is “a series of entries of
`
`the biometric signal,” i.e., the entries and corresponding series are “of the biometric
`
`signal,” and the “number of said entries and a duration of each said entry” refers to
`
`the entries of the biometric signal, and not an entry of some other information, such
`
`as knowledge-based information.
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`9
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`The distinction between knowledge-based and biometric information is also
`
`evident in the prosecution history. The Examiner found the closest prior art of record
`
`to be two references disclosing biometric security. Ex. 1002, 155-56 (Hoffman’s
`
`“biometric samples” and Pu’s “fingerprints”). The applicant successfully pointed
`
`out, however, that combining Hoffman biometric sampling with Pu’s use of human
`
`body parts to form a “secret sequence code,” i.e., knowledge-based information,
`
`required impermissible hindsight. Id. at 121.2
`
`Blurring the line between knowledge-based and biometric information is
`
`improper given the construction Apple proposed, and the Board adopted, for the term
`
`“biometric signal” - “[p]hysical attribute of the user (i.e., fingerprint, facial pattern,
`
`iris, retina, voice, etc.).” Paper No. 1 at 6; Paper No. 11 at 13. It is also improper
`
`considering the claims’ clear requirement of a number and duration of each entry of
`
`the biometric signal. Ex. 2011, 17-18; Ex. 1077, 2.
`
`In short, given the foregoing, the Biometric Signal Durational Limitation
`
`cannot be disclosed by the duration of a signal generated by a knowledge-based
`
`
`2 The Examiner allowed these claims (which eventually became Claims 1, 10, 11,
`
`and 15-17) based on the “reasons argued by applicant in pages 13-15 of the Remarks,
`
`filed 10/19/2016,” which included applicant’s statement regarding impermissible
`
`hindsight. Ex. 1002 at 121, 155.
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`10
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`security feature. As discussed herein, however, that is precisely what Apple has
`
`attempted to do in its single challenge ground.
`
`C.
`
`“Populate the Data Base According to the Instruction”
`
`Apple points to “enrolling a new user’s fingerprint by providing control
`
`information via a sequence of presses of certain amount and duration” as one of the
`
`purportedly distinguishing features of the invention claimed in the ʼ705 Patent.
`
`Paper No. 1 at 1. The “populate” limitation in claim 1 is part of that enrolling feature.
`
`Ex. 2013, ¶ 82. Representative Claim 1 makes clear that, once the series of biometric
`
`signals characterized by number and duration is received by the transmitter
`
`subsystem (representative clause 1(d1)), that series is mapped into an instruction
`
`(representative clause 1(d2)), and the resulting instruction is used to populate the
`
`database of biometric signatures (representative clause 1(d)(3)). Ex. 1001, 16:13-
`
`23. To satisfy the requirements for antecedent claiming, “said series” in clause 1(d2)
`
`must refer to the “series of entries of the biometric signal” in clause 1(d1),3 and “the
`
`instruction” in clause 1(d3) must refer to “an instruction” in clause 1(d2). See, e.g.,
`
`MPEP, § 2173.05(e). The following is a depiction of this information flow:
`
`
`3 The Board recognized that “said series” refers to the “series of entries of the
`
`biometric signal” as shown by the board placing “of entries of the biometric signal”
`
`in brackets. Paper No. 11 at 32.
`
`11
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`Ex. 2013, ¶ 82.
`
`
`
`To show a teaching of these limitations, Apple must identify the same
`
`“biometric signal” series received by the transmitter sub-system, mapped into an
`
`instruction, and resulting in an instruction for populating the database. As discussed
`
`below, Apple did not do that.
`
`D.
`
`“Configured To” v. “Capable Of”
`
`The Board requested the parties address the difference between “configured
`
`to” which appears in Claims 1, 10, and 11, and “capable of” which appears in Claims
`
`15, 16, and 17. Paper 11 at 14. The Federal Circuit addressed the distinction
`
`between terms falling onto either side of a line in Parkervision, Inc. v. Qualcomm
`
`Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018). See also Aspex Eyewear, Inc. v. Marchon
`
`Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (recognizing the distinction
`
`between the narrower “configured to” and the broader “capable of”).
`
`For claims which are recited using “capable of” language, the Federal Circuit
`
`held that prior art other references are sufficient for invalidity if they “disclose[] an
`
`apparatus that is reasonably capable of operating so as to meet the claim limitations,
`
`even if it does not meet the claim limitations in all modes of operation.”
`
`12
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`Parkervision, 903 F.3d at 1361. This is consistent with the description of “capable
`
`of” being broader than “configured to” in Aspex. Aspex, 672 F.3d at 1349.
`
`In contrast, the Federal Circuit described that when the claim is written using
`
`“configured to”-type language, whether an accused product was “reasonable capable
`
`of being put into the claimed configuration was insufficient for a finding of
`
`infringement.” Parkervision, 903 F.3d at 1361. By the same token, in the context
`
`of invalidity, in order to invalidate a claim which is written with “configured to”
`
`language, the prior art must be more than just “capable of” being put into the claimed
`
`configuration. In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014) (finding
`
`that the Board’s conclusion that a function could be performed using the prior art
`
`was insufficient; the correct inquiry was whether it would have been obvious to
`
`modify the prior art to contain structure “adapted to” or configured to perform the
`
`function). This is consistent with the Federal Circuit’s earlier analogizing between
`
`this term, “configured to,” with “adapted to,” “made to,” or “designed to.” Id.; see
`
`also Aspex, 672 F.3d at 1349.
`
`Looking at the claims challenged in this proceeding, the Federal Circuit’s
`
`reasoning means that Claims 1, 10, and 11 should be construed to mean the claimed
`
`inventions are “configured to,” “designed to,” “adapted to,” or “made to” achieve
`
`what is claimed. Prior art that is “capable of” teaching the claimed configuration
`
`will not invalidate these claims unless a POSITA would have found it obvious that
`
`13
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`IPR2022-00602
`U.S. Patent No. 9,665,705
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`the prior art is not only “capable of” achieving the claimed configuration, but also
`
`renders obvious the narrower construction of “configured to.” Claims 15, 16, and
`
`17, therefore, should be construed such that prior art will not invalidate these claims
`
`unless the prior art is capable of achieving the claimed configuration.
`
`As discussed below, the prior art combination proposed in Apple’s single-
`
`challenge ground is not capable of, much less configured to, achieve the claimed
`
`configuration at least because a POSITA would not have combined the references,
`
`and even if they would have combined the references, the resulting combination
`
`would not teach, or render obvious, the capabilities of the claimed invention.
`
`V. THE PRIOR ART FAILS TO RENDER THE CHALLENGED CLAIMS
`OBVIOUS
`A. The Prior Art Does Not Teach the “Accessibility Attribute”
`Limitation
`1. Mathiassen Does Not Teach an “Accessibility Attribute”
`
`Apple’s position on the “accessibility attribute” limitation is muddied at best.
`
`As explained above, Apple successfully argued before the district court that such
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`limitation should be construed as having both “whether” and “under which
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`conditions” components to an access decision, eschewing a construction limited to
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`a binary (yes/no) access decision. Ex. 2011, 26 (“The definition…goes beyond mere
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`matching—the binary decision of ‘yes’ or ‘no’….”); see also id., 28 (“Binary
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`matching—“match/no match”—is not what the inventor was trying to invent”).
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`Now, however, Apple and its expert appear to argue that “accessibility attribute” can
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`include a binary access decision. Paper 1 at 18-20.
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`Specifically, according to Dr. Sears, the binary decision whether to unlock a
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`car door using Mathiassen’s portable control, in addition to determining “whether”
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`to grant access to the car, also constitutes determining “under which conditions”
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`such “access should be granted,” as such access grant in the event of a fingerprint
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`match is “unconditional.” Ex. 1003, ¶¶ 139-140. The only alternative to granting
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`access is to deny access by aborting the process in the event that there is no
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`fingerprint match. See id., ¶ 139. Such access does not provide any incremental
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`condition to access beyond the “whether” inquiry, and Apple’s reading of
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`Mathiassen consequently merges the “whether” and “under which conditions”
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`components of its own construction of the “accessibility attribute” limitation.
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`Dr. Sears, for his part, could not point to another type of accessibility attribute
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`taught in Mathiassen, volunteering at deposition that Mathiassen somehow renders
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`other accessibility attributes “obvious.” Ex. 2012, 60:1-12. Apart from the fact that
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`Dr. Sears was not asked what Mathiassen by itself rendered obvious with regard to
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`the “accessibility attribute,” neither Dr. Sears nor Apple ever raised Mathiassen as a
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`single-reference obviousness challenge.4 As such, Apple should not be allowed to
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`avail itself of that theory now. See, e.g., Intelligent Bio-Sys., Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
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`importance that petitioners in the IPR proceedings adhere to the requirement that the
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`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
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`for the challenge to each claim.’”) (citing 35 U.S.C. § 312 (a)(3)).
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`The Board, in instituting this proceeding, adopted Apple’s reasoning which
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`plainly ignores the “under which conditions” aspect of Apple’s own construction of
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`“accessibility attribute:”
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`Here, consistent with the proposed construction, Petitioner relies solely
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`on Mathiassen to satisfy the proposed claim construction of an attribute
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`that establishes whether and under which conditions access to the
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`4 As Apple argues that, while “Mathiassen teaches portable door control outputting
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`an encrypted command to grant access to the car door locks,” “McKeeth teaches
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`outputting other signals indicating when a user is under duress or when a user is
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`unauthorized,” and “[m]odifying Mathiassen’s portable control
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`to output
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`information indicating duress access and alert access, in addition to Mathiassen’s
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`taught grant access . . . would have been obvious to a POSITA.” Paper No. 1 at 3
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`(emphasis added).
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`controlled item should be granted to a user. If the processor 2 in
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`Mathiassen does not find a match, then no access will be granted.
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`That is all this clause of claim 1 requires.
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`Paper No. 11 at 25 (emphasis added).
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`In other words, the Board preliminarily found that the type of binary decision
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`that Apple characterized as antithetical to the claimed invention in fact falls within
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`the scope of the “accessibility attribute” limitation. Under the Board’s treatment of
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`Mathiassen, a binary decision limited to access/abort satisfies both the “whether”
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`and “under which conditions” requirement for “accessibility attribute.” This is
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`inconsistent with the construction Apple fought for in the district court litigation,
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`proposed in this proceeding, and adopted by the Board. Ex. 2011, 26; Paper 1 at 6;
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`Paper 11 at 13.
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`After Apple expended its energy championing a construction of “accessibility
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`attribute” that excludes binary access decisions, it cannot now challenge the claims
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`of the ʼ705 Patent based upon a construction that incorporates such a binary decision.
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`The necessary result is that Mathiassen’s access/abort teaching does not correspond
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`to an “accessibility attribute” under the controlling construction of that term, and any
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`invalidity decision based upon such correspondence is simply wrong.
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`There is No Motivation to Combine Apple’s Cited Prior Art
`to Arrive at the “Accessibility Attribute” as Properly
`Construed
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`2.
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`Recognizing that Mathiassen does not satisfy Apple’s construction of
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`“accessibility attribute,” Dr. Sears falls back on the opinion that “Mathiassen in
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`combination with McKeeth teaches outputting two or more accessibility attributes,”
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`i.e., it is non-binary. See Ex. 1003, ¶ 143. The teaching from McKeeth to which Dr.
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`Sears refers is a “geometric pattern (e.g., using a mouse)” that when incorrectly
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`entered “concurrently with, or after a predetermined duration from, scanning his/her
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`fingerprint,” allows for a duress signal. Ex. 1003, ¶ 145; Ex. 1005, 4:10-32.
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`Apart from being a tacit admission that Mathiassen only teaches binary
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`access, this opinion, to be cognizable, must rely upon a motivation to combine these
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`two references going beyond improper hindsight reconstruction. See, e.g.,
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`Ecolochem, Inc. v. Southern California Edison Co., 227 F.3d 1361, 1371 (Fed. Cir.
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`2000) (citation omitted) (impermissible to use hindsight reconstruction to pick and
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`choose among isolated disclosures in the prior art to deprecate the claimed
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`invention).
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`This purported combination presupposes that one would have thought it
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`necessary to look beyond Mathiassen to add a duress signal to the existing
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`fingerprint security thereof. However, as Dr. Sears notes, Mathiassen teaches finger
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`movement that can provide for additional security. Ex. 1003, ¶ 86 (“Mathiassen
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`teaches commands other than ‘open door’ may be implemented in the secure access
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`control system by a user providing certain finger movements”). One such command
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`could be to send a distress signal. Ex. 2012, 55:2-6. There would have been no
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`reason, then, to look to McKeeth to modify Mathiassen in the fashion that Dr. Sears
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`describes. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369
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`(Fed. Cir. 2012); Ex. 201