Director PTABDecision Review
`
`Ryan, Andrew; Director PTABDecision Review
`
`Coyle, Steve; Geiger, Nicholas; HID-IPRs; Devkar, Andrew V.
`RE: IPR2022-01006: Request for Director Review
`Tuesday, January 2, 2024 3:46:00 PM
`
`From:
`
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Your requestto file a response to the pending Director Request is denied at this time. See Revised
`Interim Director Review Process, available at
`
`
`https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-processat Section
`5.A.ii.b (“Director Review decisions are generally made based onthe existing record, without the
`need for responsive or amici curiae briefing. Responsive or amici curiae briefing may only be
`submitted if requested by the Director.”).
`
`Your email and this responsewill be entered into the public record. See id. at Section 3.G (“All
`communicationswill be entered into the record of the proceeding.”). Counsel is cautioned against
`any further unauthorized communication.
`
`Thank you.
`
`From: Ryan, Andrew <aryan@cantorcolburn.com>
`Sent: Thursday, December 28, 2023 6:46 PM
`To: Director_PTABDecision_Review <Director_PTABDecision_Review@uspto.gov>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>;
`HID-IPRs <HID-IPRS@morganlewis.com>; Devkar, Andrew V. <andrew.devkar@morganlewis.com>
`Subject: RE: |PR2022-01006: Request for Director Review
`
`
`
`Director of the United States Patent and Trademark Office, Katherine K. Vidal:
`
`Werepresent Patent Owner, CPC Patent Technologies, PTY Ltd., in the above- referenced IPR. Patent
`Ownerrequests leaveto file a response to Petitioner's Request for Director Review (Paper 48)
`(“Request”). Patent Ownerrespectfully submits that a response is necessary to address argumentsin
`the Request that were notpresentedin thetrial, including with respect to claim construction and
`the teachings of the Mathiassen-067 reference.
`
`Patent Ownerhas conferred with Petitioner about this request. Petitioner stated that it does not
`object to Patent Ownerfiling a response provided that Petitioner be permittedtofile a short reply.
`
`Patent Ownerobjects to thefiling of a reply brief by Petitioner. It is Patent Owner’s position that the
`only further briefing that should be permittedis its response to Petitioner’s Request for Director
`Review. However, in the event Petitioner is permitted to file a reply, Patent Owner requests the
`right to file a short sur-reply. Petitioner has stated that it objects to Patent Ownerfiling a sur-reply.
`
`IPR2022-01006
`
`Ex. 3101
`
`

`

`
`Thank you for your consideration,
`
`Andrew Ryan
`Counsel for Patent Owner
`
`Andrew C. Ryan
`Partner
`Cantor Colburn LLP
`
`
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`
`From: Devkar, Andrew V. <andrew.devkar@morganlewis.com>
`Sent: Friday, December 22, 2023 8:15 PM
`To: Director PTABDecision Review@uspto.gov
`Cc: Ryan, Andrew <aryan@cantorcolburn.com>; Coyle, Steve <Scoyle@CantorColburn.com>; Geiger,
`Nicholas <NGeiger@CantorColburn.com>; HID-IPRs <HID-IPRs@morganlewis.com>
`Subject: IPR2022-01006: Request for Director Review
`
`Director of the United States Patent and Trademark Office, Katherine K. Vidal:
`
`Petitioners in the above-referenced inter partes review proceeding (IPR2022-01006) respectfully
`request that the Final Written Decision in that proceeding receive Director Review pursuant to the
`interim rules governing such review. The Request has been filed and assigned Paper No. 48. A copy
`is attached.
`
`Ranked in order of importance are the following issues for which review is sought:
`
`1) The same Panel construed the term “biometric signal” inconsistently in this proceeding and in a
`parallel inter partes review proceeding concerning the same challenged patent. See Apple Inc. v. CPC
`Patent Technologies PTY, Ltd., IPR2020-00602, Final Written Decision (PTAB Sept. 27, 2023) [Paper
`No. 31] (“Apple FWD”). The Panel’s inconsistent findings concerning the same challenged patent
`and limitation in two different proceedings presents an important issue of law or policy. In the
`
`

`

`parallel proceeding on the same patent, IPR2022-00602, Patent Owner has likewise requested
`reconsideration of its earlier Director review request (previously denied) based on the Board’s
`inconsistent findings regarding “biometric signal.” This is an exceedingly rare situation in which both
`Petitioners and Patent Owner argue that a specific IPR of the same patent should be reviewed based
`on the same Panel’s inconsistent treatment of the same term.
`
`2) The Panel’s claim construction in this proceeding is also inconsistent with the claim language and
`specification and would lead to indefinite claims. The Panel’s claim construction therefore
`constitutes an erroneous conclusion of law and erroneous finding of material fact.
`
`3) In its Final Written Decision, the Panel failed to consider the express teachings in Mathiassen as
`well as both side’s expert testimony supporting that the “biometric signal” limitations are disclosed
`in Mathiassen under any reasonable construction, including Petitioners’ construction, Patent
`Owner’s construction and the construction from the earlier Apple FWD. Specifically, in finding all
`claims not unpatentable, the Panel concluded that Mathiassen does not teach receiving a series of
`biometric signals because it stops “functioning as a fingerprint sensor.” FWD, 85. This is directly
`contradicted by Mathiassen itself and is acknowledged by both side’s experts, which the Board failed
`to consider. This was an abuse of discretion and an erroneous finding of material fact.
`
`Regards,
`
`Andrew Devkar
`Counsel for Petitioners
`
`Andrew V. Devkar
`Morgan, Lewis & Bockius LLP
`2049 Century Park East, Suite 700 | Los Angeles, CA 90067
`Direct: +1.310.255.9070 | Main: +1.310.907.1000 | Fax: +1.310.907.1001
`andrew.devkar@morganlewis.com | www.morganlewis.com
`Assistant: Karen Satterfield | +1.949.399.7141 | karen.satterfield@morganlewis.com
`
`
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