`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ASSA ABLOY AB, ASSA ABLOY Inc.,
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc.,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01006
`
`Patent No. 9,665,705
`
`_____________________________________________________________
`
`
`DECLARATION OF STUART LIPOFF
`
`U.S. PATENT NO. 9,665,705 (CLAIMS 1-17)
`
`
`
`
`
`
`
`
`
`Petitioners Ex. 1005
`
`

`

`Case No. IPR2022-01006
`Patent No. 9,665,705
`
`
`V.
`VI.
`
`B.
`
`Contents
`ENGAGEMENT .......................................................................................... 1
`I.
`PROFESSIONAL BACKGROUND............................................................ 2
`II.
`III. MATERIALS REVIEWED ......................................................................... 7
`IV.
`DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART ...................................................................................................... 7
`OVERVIEW OF THE ʼ705 PATENT ......................................................... 8
`CLAIM CONSTRUCTION ....................................................................... 13
`A.
`Terms to be Construed ....................................................................... 14
`1.
`“signal for directing input” / “feedback signal adapted to
`direct provision of… the biometric signal” ............................. 14
`Previously-Construed Terms .............................................................. 15
`1.
`“accessibility attribute” ............................................................ 16
`2.
`“biometric signature” ............................................................... 16
`3.
`“[map|mapping] said series into an instruction” ...................... 16
`4.
`“series” ..................................................................................... 16
`5.
`“being characterized [according
`to|determining|determine]” ...................................................... 16
`“at least one of the number of said entries and a duration
`of each said entry”.................................................................... 16
`“collocated” .............................................................................. 17
`7.
`VII. ANTICIPATION ........................................................................................ 17
`VIII. OBVIOUSNESS ......................................................................................... 17
`IX.
`OPINIONS REGARDING PATENTABILITY ........................................ 18
`X.
`THE CLAIMS OF THE ʼ705 PATENT ARE INVALID .......................... 20
`A. GROUND #1: Claims 1, 3-5, and 9-17 are rendered obvious by
`Bianco and Mathiassen. ...................................................................... 20
`1.
`Claim 1 is rendered obvious by Bianco and Mathiassen ......... 20
`2.
`Claim 3 is rendered obvious by Bianco and Mathiassen ......... 87
`
`6.
`
`
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`
`3.
`4.
`5.
`6.
`
`Claim 4 is rendered obvious by Bianco and Mathiassen ......... 97
`Claim 5 is rendered obvious by Bianco and Mathiassen ......... 99
`Claim 9 is rendered obvious by Bianco and Mathiassen ....... 101
`Claims 10-11, 14-17 are rendered obvious by Bianco and
`Mathiassen ............................................................................. 102
`Claim 12 is rendered obvious by Bianco and Mathiassen ..... 106
`7.
`Claim 13 is rendered obvious by Bianco and Mathiassen ..... 111
`8.
`B. GROUND #2: Claims 2 and 6-7 are rendered obvious by
`Bianco and Mathiassen in view of Houvener .................................. 113
`1.
`Claim 2 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 113
`Claim 6 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 120
`Claim 7 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 126
`C. GROUND #3: Claim 8 is rendered obvious by Bianco,
`Mathiassen, Houvener, and Richmond ............................................ 132
`1.
`Claim 8 ................................................................................... 132
`CONCLUDING STATEMENTS ............................................................. 136
`
`2.
`
`3.
`
`XI.
`
`
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`ii
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`
`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONERS
`
`Ex. 1001
`
`U.S. Patent No. 9,665,705 (“Burke II”)
`
`Ex. 1002
`
`Patent Prosecution History of U.S. Patent No. 9,665,705
`
`Ex. 1003
`
`U.S. Patent No. 6,256,737 to Bianco et al. (“Bianco”)
`
`Ex. 1004 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2002028067A1 (02/28067) to Mathiassen (“Mathiassen”)
`
`Ex. 1006
`
`Curriculum Vitae of Stuart Lipoff
`
`Ex. 1007
`
`U.S. Patent No. 9,269,208 to Burke (“Burke I”)
`
`Ex. 1008
`
`Dawn Xiodong Song, David Wagner, and Xuqing Tian
`(University of California, Berkeley), “Timing Analysis of
`Keystrokes and Timing Attacks on SSH,” USENIX Security
`Symposium, vol. 2001 (2001), available at
`https://people.eecs.berkeley.edu/~daw/papers/ssh-use01.pdf.
`
`Ex. 1009
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd v.
`Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 76 (“Apple
`CC Order”)
`
`i
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`

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`Case No. IPR2022-01006
`Patent No. 9,665,705
`
`
`Ex. 1010
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd v.
`HMD Global Oy, WDTX-6-21-cv-00166-ADA, Dkt. No. 45
`(“HMD CC Order”)
`
`Ex. 1011
`
`R. Stockton Gaines, William Lisowski, S. James Press, and
`Normal Shapiro (Rand), Authentication by Keystroke Timing:
`Some Preliminary Results, R-2526-NSF, May 1980. (“Gaines”)
`
`Ex. 1012
`
`Patent Prosecution History of U.S. Patent No. 9,269,208
`
`Ex. 1013
`
`U.S. Patent No. 5,790,674 to Robert C. Houvener and Ian P.
`Hoenisch (“Houvener”)
`
`Ex. 1014
`
`U.S. Patent No. 6,856,237 to Thomas R. Richmond, Suzanne
`Richmond, and Patrick S. Kochie (“Richmond”)
`
`Ex. 1015
`
`Fabian Monrose, Michael K. Reiter, and Susanne Wetzel.
`“Password Hardening Based on Keystroke Dynamics,”
`Proceedings of the 6th ACM Conference on Computer and
`Communications Security, November 1999. (“Monrose”)
`
`Ex. 1017
`
`Excerpts from Longman, Dictionary of American English, 3rd
`Edition (2004)
`
`Ex. 1018
`
`Excerpts from Bloomsbury English Dictionary, 2nd Edition
`(2004)
`
`Ex. 1019
`
`PCT Patent Publication WO 2008/113110 A1 to Christopher
`John Burke
`
`Ex. 1020
`
`CPC Infringement Allegations re U.S. Patent No. 9,269,208
`
`
`
`ii
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`Case No. IPR2022-01006
`Case No. IPR2022-01006
`Patent No. 9,665,705
`Patent No. 9,665,705
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`
`
`Ex. 1021
`Ex. 1021
`
`CPC Infringement Allegations re U.S. Patent No. 9,665,705
`CPC Infringement Allegations re U.S. Patent No. 9,665,705
`
`
`
`
`
`iii
`ill
`
`

`

`I, Stuart J. Lipoff, declare as follows:
`
`Case No. IPR2022-01006
`Patent No. 9,665,705
`
`
`I.
`
`ENGAGEMENT
`I reside at 2877 Paradise Road Unit 205, Las Vegas, NV 89109.
`1.
`
`2.
`
`I have been retained by ASSA ABLOY AB, ASSA ABLOY Inc.,
`
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`
`Corporation, and ASSA ABLOY Global Solutions, Inc. (“Petitioners”) in
`
`connection with the above-captioned petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 9,665,705 to Christopher John Burke (“ʼ705 Patent,” Ex. 1001). I
`
`understand the ʼ705 Patent is currently assigned to CPC Patent Technologies Pty
`
`Ltd. (“Patent Owner”).
`
`3.
`
`I have been asked by Petitioners to offer opinions regarding the ’705
`
`Patent, including the unpatentability of claims 1-17 (which I may refer to
`
`subsequently as the “challenged claims” or the “’705 Patent claims”) in view of
`
`certain prior art. This declaration sets forth the opinions I have reached to date
`
`regarding these matters.
`
`4.
`
`I am being compensated by Petitioners at my standard hourly
`
`consulting rate for my time spent on this matter. My compensation is not
`
`contingent on the outcome of the IPR or on the substance of my opinions.
`
`5.
`
`I have no financial interest in Petitioners or Patent Owner.
`
`
`
`1
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`

`

`PROFESSIONAL BACKGROUND
`As shown in my curriculum vitae (“CV”), a true and correct copy of
`6.
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`Case No. IPR2022-01006
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`II.
`
`which is attached hereto as Ex. 1006, I am currently the president of IP Action
`
`Partners Inc. and have over 50 years of experience in a wide variety of
`
`technologies and industries relating to data communications, including data
`
`communications over wireless and cable systems networks.
`
`7.
`
`I earned a B.S. degree in Electrical Engineering in 1968 from Lehigh
`
`University and a second B.S. degree in Engineering Physics in 1969, also from
`
`Lehigh University. I also earned a M.S. degree in Electrical Engineering from
`
`Northwestern University in 1974 and an MBA degree from Suffolk University in
`
`1983.
`
`8.
`
`I am currently the president of IP Action Partners Inc., which is a
`
`consulting practice serving the telecommunications, information technology,
`
`media, electronics, and e-business industries.
`
`9.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License and a Certificate in Data Processing (“CDP”) from the
`
`Association for Computing Machinery (“ACM”)-supported Institute for the
`
`Certification of Computing Professionals (“ICCP”), and I am a registered
`
`professional engineer (by examination) in the State of Nevada and the
`
`Commonwealth of Massachusetts.
`
`
`
`2
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`

`

`I am a fellow of the IEEE Consumer Electronics, Communications,
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`10.
`
`Computer, Circuits, and Vehicular Technology Groups. I am also a member of the
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`IEEE Consumer Electronics Society National Administration Committee, and was
`
`the Boston Chapter Chairman of the IEEE Vehicular Technology Society.
`
`11.
`
`I previously served as 1996-1997 President of the IEEE Consumer
`
`Electronics Society, have served as Chairman of the Society’s Technical Activities
`
`and Standards Committee, as VP of Publications for the Society, and currently as
`
`VP of Industry and Standards for the Society. I have also served as an Ibuka
`
`Award committee member.
`
`12.
`
`I have also presented papers at many IEEE and other meetings. A
`
`listing of my publications is included as part of my CV, which is attached as
`
`Exhibit 1006. For example, in Fall 2000, I served as general program chair for the
`
`IEEE Vehicular Technology Conference on advanced wireless communications
`
`technology, and I have organized sessions at The International Conference on
`
`Consumer Electronics and was the 1984 program chairman.
`
`13.
`
`I also conducted an eight-week IEEE sponsored short course on Fiber
`
`Optics System Design. In 1984, I was awarded IEEE’s Centennial Medal and in
`
`2000, I was awarded the IEEE’s Millennium Medal.
`
`14. As Vice President and Standards Group Chairman of the Association
`
`of Computer Users (“ACU”), I served as the ACU representative to the ANSI X3
`
`
`
`3
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`

`

`Standards Group. For the FCC’s Citizens advisory committee on Citizen’s Band
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`(“CB”) radio (“PURAC”), I served as Chairman of the task group on user rule
`
`compliance. I have been elected to membership in the Society of Cable Television
`
`Engineers (“SCTE”), the ACM, and The Society of Motion Picture and Television
`
`Engineers (“SMPTE”).
`
`15.
`
`I also served as a member of the USA advisory board to the National
`
`Science Museum of Israel, presented a short course on international product
`
`development strategies as a faculty member of Technion Institute of Management
`
`in Israel, and served as a member of the board of directors of The Massachusetts
`
`Future Problem Solving Program.
`
`16.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications topics in Electronics Design,
`
`Microwaves, EDN, The Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`17. For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I
`
`became Vice President and Director of Communications, Information Technology,
`
`and Electronics (“CIE”).
`
`18. Prior to my time at ADL, I served as a Section Manager for Bell &
`
`Howell Communications Company for four years, and prior to that, as a Project
`
`Engineer for Motorola’s Communications Division for three years.
`
`
`
`4
`
`

`

`19. At ADL, I was responsible for the firm’s global CIE practice in
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`laboratory-based contract engineering, product development, and technology based
`
`consulting. At both Bell & Howell and Motorola, I had project design
`
`responsibility for wireless communication and paging products.
`
`20. During my 53 years in the practice of engineering research and
`
`product development, I have engaged in a number of projects that have provided
`
`me with relevant experience and expertise in a number of the foundation
`
`technologies and the industries within the scope of the ʼ705 Patent. These projects
`
`have included, for example, topics in: motor operated door controllers, wireless
`
`communications, wireless remote controls, access control security systems, data
`
`communications, and devices incorporating microprocessors.
`
`21.
`
`I have worked on a number of security and alarm products. For the
`
`Philadelphia Police Department, I designed a wireless address alarm system that
`
`was also deployed by The White House Communications Agency. I have also
`
`specified and managed aspects of the procurement of complex keypad based access
`
`control systems for use in secure areas of electric power utilities and industrial
`
`computer rooms.
`
`22. For Symbol Technology, I contributed to the design of the MAC layer
`
`protocol of a wireless local area network system (WLAN) that pre-dated the IEEE
`
`
`
`5
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`

`

`802.11 standard. My protocol design was submitted to the IEEE 802.11 standards
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`committee with portions incorporated into the final specification.
`
`23. Working with Cambridge Consultants Ltd (the UK subsidiary of the
`
`USA based Arthur D Little Inc), I consulted on several developments of Bluetooth
`
`related hardware and software stacks. This development was spun off to
`
`Cambridge Silicon Radio (CSR) to which I continued to provide consulting
`
`reports.
`
`24.
`
`In my capacity as chairman of The IEEE Consumer Electronics
`
`Society Standards Committee, I followed the developments of both the IEEE
`
`802.15 Bluetooth and IEEE 802.11 WiFi standards, as well as the IEEE Home
`
`Radio Frequency (HomeRF™) Working Group.
`
`25.
`
`I have designed products and systems that incorporated
`
`microprocessors and microcomputers across multiple products and industry
`
`applications, including toys and games, industry controllers, motor controllers, and
`
`consumer products.
`
`26. Additional information regarding my background, qualifications,
`
`publications, and presentations is provided in my CV, which is included as Ex-
`
`1006.
`
`
`
`6
`
`

`

`III. MATERIALS REVIEWED
`In forming my opinions, I have reviewed the ʼ705 Patent and
`27.
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`Case No. IPR2022-01006
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`considered each of the documents listed in the Exhibit List above. In reaching my
`
`opinions, I have relied upon my experience in the field and also considered the
`
`viewpoint of a person of ordinary skill in the art at the time of the earliest claimed
`
`priority date of the ʼ705 Patent, i.e., 2003. As explained below, I am familiar with
`
`the level of a person of ordinary skill in the art regarding the technology at issue as
`
`of that time.
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART
`I understand that the ʼ705 Patent was filed on January 19, 2016, and
`28.
`
`has an earliest possible priority date of August 13, 2003. I further understand that
`
`there is no claim to earlier priority. Thus, for purposes of my analysis, I have
`
`treated the time of the invention as August 13, 2003. I reserve the right to update
`
`my analysis should Patent Owner assert an earlier priority date.
`
`29.
`
`I have received and understand the specification, claims, and file
`
`history of the ʼ705 Patent. Based on my review of these materials, I believe that
`
`the relevant field for purposes of my analysis is secure access systems.
`
`30.
`
`In my opinion, a person of ordinary skill in the art (POSITA) at the
`
`time of the alleged invention would have had at least an undergraduate degree in
`
`
`
`7
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`

`

`electrical engineering, or equivalent education, and at least two years of work
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`Case No. IPR2022-01006
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`experience in the field of security and access-control. My opinions presented
`
`herein are as viewed through the eyes of a person of ordinary skill in the art prior
`
`to August 13, 2003.
`
`V. OVERVIEW OF THE ʼ705 PATENT
`I have reviewed the ʼ705 Patent and understand that Christopher John
`31.
`
`Burke is named as the inventor on this patent. Mr. Burke’s patent describes
`
`authenticating users using biometrics to gain “access to a controlled item,” such as
`
`a locked door or electronic computing device. Ex. 1001 Abstract.
`
`32. Figure 10 of the ’705 Patent is a general representation of the system.
`
`I have highlighted different portions of the system, as shown below, for easy
`
`reference. The patent discloses granting access to a controlled item (blue, in figure
`
`below) by reading a biometric (e.g., a fingerprint) using a “sensor” (red), and a
`
`controller (pink) compares that input biometric (called a “biometric signature”)
`
`with a previously-captured reference signature stored in a database (yellow). The
`
`specification discloses that the database (yellow) can be in the transmission
`
`subsystem (green), receiver subsystem (purple), or neither, and may be in
`
`“memory.” If a match is found, the input biometric is associated with a user ID
`
`associated with the stored biometric and the user is authenticated. If not, as recited
`
`
`
`8
`
`

`

`in dependent claims 3 and 5, the access attempt is denied and an “alert” may be
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`sounded.
`
`
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`Ex. 1001 Fig. 10. As a general note, I added emphasis and coloring throughout
`
`this declaration unless otherwise noted. The system may be allocated in two
`
`“subsystems,” the “transmitter sub-system” (green) and “receiver sub-system”
`
`(purple), connected through a communication network (orange). However, as
`
`confirmed by dependent claim 9, the “sub-systems” can be “collocated in” a single
`
`
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`9
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`

`

`device, such as the “electronic computing device” containing the data/applications
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`being protected, in which case the “network 1020” is “a direct wireless link”
`
`connecting the subsystems “directly.” Ex. 1001 Cl. 9, 14:64-15:3. I also note that
`
`claim 1 requires “populat[ing] the data base according to the instruction,” which is
`
`typically referred as user enrollment. Ex. 1001 Cl. 1.
`
`33. Although no particular type of “biometric” is required by the claims,
`
`the patent discloses many forms of biometrics including “fingerprints,” “voice,
`
`retinal or iris pattern, face pattern, palm configuration and so on,” which may be
`
`read using “corresponding biometric sensor[s].” Ex. 1001 1:27-33.
`
`34. There are two features that the Applicant purportedly considered
`
`novel:
`
`• Providing “conditional access,” such as sounding a silent alarm even
`
`though access is being granted. E.g., Ex. 1001 2:42-45, 8:24-47.
`
`• Using a series of entries of a biometric signal in a duration/number
`
`pattern (like Morse-code) to tell the system to update the database of
`
`biometric signatures (e.g., fingerprints/eyeprints/voiceprints). E.g.,
`
`Ex. 1002, pp. 120-122.
`
`35. Based on my review of the file history of the ’705 Patent, after the
`
`claims were rejected by the Examiner, Applicant cancelled all claims and added
`
`new claims 21-37, additionally reciting “wherein the transmitter sub-system
`
`
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`10
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`

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`controller is further configured to: receive a series of entries of the biometric
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`signal, said series being characterized [sic] 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” in new independent claim 21.
`
`36. These amended claims were then allowed because “[n]one of the
`
`prior arts on the record anticipates or makes obvious” the limitation of “receive a
`
`series of entries of the biometric signal, said series being characterised [sic]
`
`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.”
`
`Id., pp. 154-156.
`
`37.
`
`In my opinion, there is nothing novel about the system for providing
`
`secure access recited in the ’705 Patent claims or anything else that distinguishes it
`
`from other earlier systems for providing secure access.
`
`38. For example, Bianco (Ex. 1003) discloses a system that uses
`
`biometrics to provide access to a controlled item. Ex. 1003 Abstract. Just like the
`
`’705 Patent, Bianco teaches doing this by measuring/reading one or more
`
`
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`11
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`

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`biometric signals from a human user, comparing the measured biometric signal(s)
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`with those previously measured and stored at specific memory locations, and
`
`determining whether a match for the user exists. Assuming a match exists, Bianco
`
`discloses sending a signal to a lock (or other controlled item) such that access can
`
`be granted. If no match exists, access will not be granted. Both Bianco and the
`
`’705 Patent disclose multiple types of biometrics, and both references provide
`
`many of the same examples: hand/fingerprints, voiceprints, eyeprints, etc. In
`
`addition, Bianco also mentions “measuring a user’s behavioral characteristics…
`
`[such as] typing stroke and signature.” Ex. 1003 7:62-65.
`
`39. Regarding the purportedly novel aspect of the ’705 Patent, Bianco
`
`discloses “conditional access,” such that even if a user is authenticated, she may
`
`not be granted access to a controlled item and/or an alert may be raised. Bianco
`
`also teaches providing access under “duress” (e.g., a user providing a different
`
`fingerprint to send a covert indication of a robbery) while sounding a silent alarm.
`
`This is an obvious example of what is claimed by dependent claim 5 of the ’705
`
`Patent.
`
`40. Also like the ’705 Patent, Bianco discloses enrollment of new
`
`administrative and general users. Ex. 1003 3:7-17; 9:32-10:67; 26:48-29:39.
`
`
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`12
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`

`41. Bianco teaches both examples of controlled items disclosed in the
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`’705 Patent and claims: “physical location[s]” and electronic locks on
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`“computers… and data.” Ex. 1003 1:15-16, 57:37-40.
`
`42. As another example, Mathiassen (Ex. 1004) teaches using the same
`
`biometric (fingerprint) sensor for the dual purposes of (i) reading fingerprints for
`
`authentication and access control and (ii) as a means of issuing
`
`commands/instructions through a series of “taps” of varying durations. Mathiassen
`
`teaches that its invention can be used to enter any form of instructions. Ex. 1004
`
`Abstract.
`
`43. With regard to dependent clam 2, Houvener (Ex. 1013) teaches the
`
`well-known concept of logging and creating audit trails of biometric transactions.
`
`It also teaches a control panel (claims 6-7).
`
`44. With regard to dependent claim 8, Richmond (Ex. 1014) teaches a
`
`method for converting rolling code transmissions into the protocol for legacy
`
`Wiegand controllers.
`
`VI. CLAIM CONSTRUCTION
`I understand that claim construction is the process of determining the
`45.
`
`meaning of a term or phrase in a patent claim. I understand that the proper
`
`construction of a term is how a POSITA would have understood the term based on
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`its use in the claims, specification, and file history of the patent. I further
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`understand that the claims are construed before the Board according the same
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`claim construction standard that applies in district courts. I have followed these
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`principles in my analysis throughout this declaration. I discuss below the meaning
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`of certain claim terms that I have applied in forming my opinions.
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`A. Terms to be Construed
`“signal for directing input” / “feedback signal adapted to
`1.
`direct provision of… the biometric signal”
`46. Dependent claim 2 claims a “signal for directing input.” Dependent
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`claim 13 similarly recites a “signal adapted to direct provision of… the biometric
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`signal.” Neither term appears in the specification outside of the claims. As its
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`name implies, it is my opinion that this “signal” is a communication sent from the
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`system to the user to “direct” the user to provide his/her biometrics, i.e., his/her
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`“input.”
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`47. The patent teaches “code entry module 103 also incorporates at least
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`one mechanism for providing feedback to the user 101.” Ex. 1001 6:24-25. As
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`shown in the figure with my annotations below, the patent explains this can “take
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`the form or [sic-of]… visual feedback, depicted by an arrow 123 [purple]… or…
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`an audio signal [red]”:
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`Id. Fig. 2 (excerpted/annotated), 6:25-31. These “feedback signalling [sic]
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`mechanisms… are used… to direct the administration process.” Id. 11:15-20.
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`48. Thus, in my opinion, “signal for directing input” and “feedback signal
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`adapted to direct provision of… the biometric signal” should be construed as “a
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`communication sent from the system to the user to direct the user to provide
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`his/her biometrics.”
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`B.
`49.
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`Previously-Construed Terms
`I understand that Judge Albright (WDTX) construed the following
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`terms in district court proceedings. I reviewed the constructions for the following
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`terms, but I do not provide any opinion agreeing or disagreeing with these
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`constructions.
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`50. Nonetheless, for the purpose of this declaration, I applied the
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`constructions for these terms as listed below.
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`“accessibility attribute”
`1.
`“attribute that establishes whether and under which conditions access
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`51.
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`to the controlled item should be granted to a user.” Ex. 1010, p1; Ex. 1009, p2.
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`“biometric signature”
`2.
`“plain and ordinary meaning.” Ex. 1009, p2.
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`“[map|mapping] said series into an instruction”
`3.
`“plain and ordinary meaning.” Ex. 1010, p1.
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`“series”
`4.
`“plain and ordinary meaning.” Ex. 1010, p1.
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`5.
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`“being characterized [according
`to|determining|determine]”
`“plain and ordinary meaning.” Ex. 1009, p2.
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`52.
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`53.
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`54.
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`55.
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`6.
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`“at least one of the number of said entries and a
`duration of each said entry”
`56. The term “‘at least’ modifies ‘one of the number of said entries.’ The
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`claim additionally requires ‘a duration of each said entry.’” Ex. 1009, p2
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`(emphasis added).
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`“collocated”
`7.
`“plain and ordinary meaning (which is not ‘occurring in conjunction
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`57.
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`with’).” Ex. 1009, p3.
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`VII. ANTICIPATION
`I have been instructed as to the definition of “anticipation” in the
`58.
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`context of the patent laws.
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`59.
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`I understand that anticipation of a claim requires that every element of
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`a claim be disclosed expressly or inherently in a single prior art reference, in
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`combination, as claimed. I understand that a single prior art reference may
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`anticipate claims without expressly disclosing a feature of the claimed invention if
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`that feature is necessarily present, or inherent, in that reference. I understand that a
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`reference is read from the perspective of one of ordinary skill at the time of the
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`invention.
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`VIII. OBVIOUSNESS
`I have been instructed as to the definition of “obviousness” in the
`60.
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`context of the patent laws.
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`61.
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`It is my understanding that obviousness is a question of law based on
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`underlying factual issues including the content of the prior art and the level of skill
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`in the art. I understand that for a single reference or a combination of references to
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`render the claimed invention obvious, a person of ordinary skill in the art must
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`have been able to arrive at the claims by altering or combining the applied
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`references.
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`62.
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`I also understand that when considering the obviousness of a patent
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`claim, one should consider whether a teaching, suggestion, or motivation to
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`combine the references exists to avoid impermissibly applying hindsight when
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`considering the prior art. I understand this test should not be applied rigidly, but
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`that the test can be important to avoid such hindsight.
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`IX. OPINIONS REGARDING PATENTABILITY
`In my opinion, claims 1, 3-5, and 9-17 are rendered obvious by
`63.
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`Bianco in view of Mathiassen. Additionally, claims 2 and 6-7 are rendered
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`obvious by Bianco in view of Mathiassen in further view of Houvener.
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`Additionally, claim 8 is rendered obvious by the Bianco-Mathiassen-Houvener
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`combination, further in view of Richmond.
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`64.
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`I have based my opinion on the following references:
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`- Bianco: U.S. Patent No. 6,256,737 titled “System, method and computer
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`program product for allowing access to enterprise resources using biometric
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`devices” to Peter Garrett Bianco, William Taylor Boon, Robert Brewster
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`Sterling, and Karl Roger Ware (“Bianco,” Ex. 1003), was filed March 9,
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`1999 and granted July 3, 2001. I understand that Bianco is prior art to the
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`ʼ705 Patent.
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`- Mathiassen: WIPO Pub. No. 2002028067 titled “Method and system for
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`inputting characters” to Camilla Mathiassen (“Mathiassen,” Ex. 1004), was
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`filed September 20, 2001 and published April 4, 2002. I understand that
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`Mathiassen is prior art to the ’705 Patent.
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`- Houvener: U.S. Patent No. 5,790,674 titled “System, method and
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`computer program product for allowing access to enterprise resources using
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`biometric devices” to Robert C. Houvener and Ian P. Hoenisch (“Houvener,”
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`Ex. 1013), was filed July 19, 1996 and granted August 4, 1998. I understand
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`that Houvener is prior art to the ’705 Patent.
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`- Richmond: U.S. Patent No. 6,856,237 titled “Method and apparatus for
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`radio frequency security system with automatic learning” to Thomas R.
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`Richmond, Suzanne Richmond, Patrick S. Kochie (“Richmond,” Ex. 1014),
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`was filed June 26, 2000 and granted February 15, 2005. I understand
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`Richmond is prior art to the ’705 Patent.
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`65.
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`In my opinion, claims 1-17 of the ʼ705 Patent are unpatentable based
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`on the following grounds:
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`(1) Claims 1, 3-5, and 9-17 are rendered obvious by Bianco in view of
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`Mathiassen;
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`(2) Claims 2 and 6-7 are rendered obvious by Bianco in view of Mathiassen
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`and further in view of Houvener;
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`(3) Claim 8 is rendered obvious by the Bianco-Mathiassen-Houvener
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`combination and further in view of Richmond.
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`X. THE CLAIMS OF THE ʼ705 PATENT ARE INVALID
`A. GROUND #1: Claims 1, 3-5, and 9-17 are rendered obvious by
`Bianco and Mathiassen.
`It is my opinion that claims 1, 3-5, and 9-17 are rendered obvious by
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`66.
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`Bianco in view of Mathiassen because it would have been obvious for one of skill
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`in the art at the time of the invention to modify Bianco in view of Mathiassen to
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`arrive at the claimed purported invention.
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`1.
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`Claim 1 is rendered obvious by Bianco and
`Mathiassen
`In my opinion, claim 1 is unpatentable because it is rendered obvious
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`67.
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`by Bianco and Mathiassen. Claim 1 of the ʼ705 Patent recites the following. I
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`address each of these in my analysis below.
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`[P] A system for providing secure access to a