Director_PTABDecision_Review@uspto.gov
`571-272-7822
`
`Paper 49
`Date: March 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`ASSA ABLOY AB, ASSA ABLOY INC.,
`ASSA ABLOY RESIDENTIAL GROUP, INC., AUGUST HOME, INC.,
`HID GLOBAL CORPORATION, and
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`v.
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)1
`
`
`
`
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`DECISION
`Granting Director Review, Vacating the Final Written Decision, and
`Remanding to the Patent Trial and Appeal Board Panel
`for Further Proceedings
`
`
`1 This Decision applies to each of the above captioned proceedings.
`
`
`
`
`571-272-7822
`
`Paper 49
`Date: March 15, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`ASSA ABLOY AB, ASSA ABLOY INC.,
`ASSA ABLOY RESIDENTIAL GROUP, INC., AUGUST HOME, INC.,
`HID GLOBAL CORPORATION, and
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`v.
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)1
`
`
`
`
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`DECISION
`Granting Director Review, Vacating the Final Written Decision, and
`Remanding to the Patent Trial and Appeal Board Panel
`for Further Proceedings
`
`
`1 This Decision applies to each of the above captioned proceedings.
`
`
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`
`INTRODUCTION
`I.
`On May 31, 2022, ASSA ABLOY AB, ASSA ABLOY Inc., ASSA
`ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc. (collectively,
`“Petitioner”) filed a Petition requesting an inter partes review of claims 1–
`17 of U.S. Patent No. 9,665,705 B2 (Ex. 1001, “the ’705 patent”).2
`IPR2022-01006, Paper 2 (“Pet.”). On June 3, 2022, Petitioner filed two
`separate Petitions requesting inter partes reviews of claims 1–13 of U.S.
`Patent No. 9,269,208 B2 (“the ’208 patent”).3 IPR2022-01045, Paper 3
`(claims 1–9); IPR2022-01089, Paper 3 (claims 10–13). On
`December 1, 2022, the Board instituted inter partes review (Paper 23) of the
`-1006 IPR and, on January 3, 2023, the Board instituted inter partes reviews
`(IPR2022-01045, Paper 21; IPR2022-01089, Paper 21) of the -1045
`and -1089 IPRs.
`On November 30, 2023, the Board issued a Final Written Decision
`(Paper 47, “Final Dec.”) in the -1006 IPR and, on December 20, 2023, the
`Board issued a single, combined Final Written Decision in the -1045
`and -1089 IPRs (IPR2022-01045, Paper 42; IPR2022-01089, Paper 42). The
`Final Written Decisions determined that Petitioner had not shown by a
`preponderance of the evidence that any challenged claim of the ’705 patent
`
`2 Unless otherwise noted, all citations are to papers and exhibits in IPR2022-
`01066 (“the -1006 IPR”). Petitioner filed similar papers in IPR2022-01045
`(“the -1045 IPR”) and IPR2022-01089 (“the -1089 IPR”) (collectively, “the
`-1045 and -1089 IPRs”).
`3 The ’705 patent and ’208 patent are both continuation applications from
`U.S. Patent Application No. 10/568,207, now issued as U.S. Patent
`No. 8,266,442 B2. Compare Ex. 1001, code (63), with Ex. 1007, code (63).
`
`2
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`or the ’208 patent was unpatentable.4 Final Dec. 86; IPR2022-01045,
`Paper 42, 92.
`On December 22, 2023 and January 18, 2024, Petitioner filed requests
`for Director Review of the Board’s Final Written Decisions. Paper 48,
`Ex. 3100; IPR2022-01045, Paper 43, Ex. 3100; IPR2022-01089, Paper 43,
`Ex. 3100 (collectively, “Requests”). Petitioner raises three issues in its
`Requests: (1) whether the Board’s construction of “biometric signal” adds a
`limitation “[f]or the first time, using language neither side proposed”
`(Paper 48, 2, 6–7); (2) whether the Board’s construction of “biometric
`signal” is erroneous (id. at 2–4, 6–13); and (3) whether the Board
`inconsistently addressed the claim limitation “receive a series of entries of
`the biometric signal[] . . . ” between the captioned proceedings and
`IPR2022-00601 and IPR2022-00602 (id. at 4–6, 10, 14–15). See Apple Inc.
`v. CPC Patent Techs. Pty, Ltd., IPR2022-00602, Paper 31 (PTAB
`Sept. 27, 2023) (challenging the ’705 patent); Apple Inc. v. CPC Patent
`Techs. Pty, Ltd., IPR2022-00601, Paper 31 (PTAB Sept. 27, 2023)
`(challenging the ’208 patent).
`I have reviewed Petitioner’s Requests, the Board’s Final Written
`Decisions, and the Papers and Exhibits of record in the captioned
`proceedings. I determine that Director Review of the Board’s Final Written
`Decisions is appropriate. See Revised Interim Director Review
`
`
`4 The Board made similar determinations in each captioned proceeding. My
`reasoning and the determinations made in this Decision apply equally to all
`captioned proceedings.
`
`3
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`Process5 §§ 4.B, 5.A. For the reasons discussed in further detail below, I
`vacate the Board’s Final Written Decisions and remand for further
`proceedings consistent with this Decision.
`II. BACKGROUND
`Independent claims 1 of the ’705 and ’208 patents recite, in part, “A
`system for providing secure access to a controlled item, the system
`comprising: . . . a biometric sensor configured to receive a biometric signal.”
`Ex. 1001, 15:62–16:23 (emphasis added); Ex. 1007, 15:42–16:3.
`Prior to institution, neither Petitioner nor CPC Patent Technologies
`Pty Ltd. (“Patent Owner”) offered a construction for the term “biometric
`signal,” and the Board stated that it construed the claims according to their
`“plain and ordinary meaning” in its decisions granting institution. See
`Paper 27 (Corrected Decision), 41.
`After institution, Patent Owner argued that “biometric signal” means a
`“physical attribute of the user (i.e., fingerprint, facial pattern, iris, retina,
`voice, etc.).”6 Paper 31 (“PO Resp.”), 8–19; Paper 41 (“PO Sur-reply”), 7–
`
`
`5 Available at www.uspto.gov/patents/ptab/decisions/revised-interim-
`director-review-process.
`6 Patent Owner’s proposed claim construction is the same one offered by
`petitioner Apple in IPR2022-00601 and IPR2022-00602. See IPR2022-
`00601, Paper 1, 9; IPR2022-00602, Paper 1, 6. In those IPRs, the Board
`adopted Apple’s unopposed construction in its institution decisions (see
`IPR2022-00601, Paper 11, 13; IPR2022-00602, Paper 11, 13), and the
`parties did not propose any constructions for the term during trial (see
`IPR2022-00601, Papers 17, 20; IPR2022-00601, Papers 17, 20). The Board
`did not further address the construction of “biometric signal” in its final
`written decisions in those cases. See IPR2022-00601, Paper 31, 21–22;
`IPR2022-00602, Paper 31, 17–18.
`
`4
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`11. In contrast, Petitioner responded that “biometric signal” means “the
`input and output of the biometric sensor.” Paper 35 (“Pet. Reply”), 7–11.
`In its Final Written Decisions, the Board determined that a dispute
`existed as to the meaning of “biometric signal” and construed the term to
`mean “a physical or behavioral biometric attribute that provides secure
`access to a controlled item.” Final Dec. 54–68, 79 (“We note that our
`construction of the claim term ‘biometric signal’ . . . is different from the
`construction proposed by Patent Owner.”).
`III. DISCUSSION
`“[T]he Board [is] permitted to issue a new construction in the final
`written decision given that claim construction was a disputed issue during
`the proceedings.” See WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308, 1328 (Fed. Cir. 2018). However, “under the APA, the Board
`‘may not change theories midstream’ by adopting a different claim
`construction in the final written decision than that adopted in the institution
`decision ‘without giving respondents reasonable notice of the change and the
`opportunity to present argument under the new theory.’” Axonics, Inc. v.
`Medtronic, Inc., 75 F.4th 1374, 1381–1382 (Fed. Cir. 2023) (citing and
`discussing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351
`(Fed. Cir. 2016), rev’d and remanded on other grounds, SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348 (2018)).7 Further, the Federal Circuit has found there
`
`
`7 The WesternGeco court also observed that where the construction in a final
`written decision “is sufficiently similar to a construction disputed by the
`parties, the Board need not give the parties prior notice of the exact
`construction the Board adopts.” Axonics, 75 F.4th at 1381 n.7 (emphasis
`added) (citing WesternGeco, 889 F.3d at 1328). The Federal Circuit has not,
`
`
`5
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`to be inadequate notice and opportunity to respond to a claim construction
`contained in a final written decision even though the Board had not
`previously adopted a construction, where circumstances made it “difficult to
`imagine” that parties would expect the Board’s sua sponte construction. See
`Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 1263 (Fed. Cir. 2021).
`Here, the parties’ proposed constructions for “biometric signal” focus
`on user attributes or the biometric signal’s connection to another claimed
`component. See, e.g., PO Resp. 9–12; Pet. Reply 8. The Board’s
`construction of “biometric signal” in its Final Written Decisions, however,
`requires that the biometric signal “provides secure access to a controlled
`item.” Final Dec. 68. Neither party’s proposed construction includes a
`requirement of “provid[ing] secure access to a controlled item.” See, e.g.,
`PO Resp. 9–12; Pet. Reply 8. Nor was this requirement articulated in the
`Board’s preliminary construction in its institution decision, where it afforded
`the term its “plain and ordinary meaning.” See Paper 23, 41; Paper 27, 41.
`I determine that further briefing is warranted regarding the Board’s
`claim construction of “biometric signal” in the Final Written Decisions
`based upon the unique facts of this case. The Board’s Final Written
`Decisions employ a construction for “biometric signal” that was not
`proposed by either party. Furthermore, Patent Owner’s proposed
`construction here is identical to that offered by petitioner Apple in IPR2022-
`00601 and IPR2022-00602. In those IPRs, the Board adopted this
`construction in its institution decisions and did not further construe the claim
`
`
`to the best of my knowledge, relied upon this observation to find a lack of
`notice or opportunity to respond in a given case.
`
`6
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`language in its final written decisions. Indeed, Patent Owner here argued
`that the Board’s earlier preliminary claim construction should apply. PO
`Resp. 9–10. Accordingly, the parties may wish to address whether it is
`appropriate to continue to use that construction here.
`Therefore, I vacate the Board’s Final Written Decision in each of the
`captioned proceedings and remand to the Board for further proceedings. For
`each proceeding, the Board shall authorize Petitioner to file supplemental
`briefing addressing: (1) the Board’s construction for the term “biometric
`signal” in the Final Written Decision and the application of the asserted art
`to the Board’s claim construction, and (2) perceived inconsistencies between
`the Final Written Decisions in these proceedings and those in IPR2022-
`00602 or IPR2022-00601, as applicable. The Board shall also authorize
`Patent Owner to file a supplemental response to Petitioner’s supplemental
`brief. After considering such briefing, the Board shall issue a new Final
`Written Decision in each of the captioned proceedings that considers the
`parties’ supplemental briefing when resolving the claim construction of
`“biometric signal,” the applicability of the prior art, and arguments as to
`inconsistency with IPR2022-00602 or IPR2022-00601, as applicable.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Board’s Final Written Decision in each captioned
`proceeding is vacated; and
`FURTHER ORDERED that each captioned proceeding is remanded
`to the Board for further proceedings consistent with the instructions above.
`
`7
`
`
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)
`
`FOR PETITIONER:
`Dion Bregman
`Andrew Devkar
`James Kritsas
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`james.kritsas@morganlewis.com
`
`
`FOR PATENT OWNER:
`Andrew Ryan
`CANTOR COLBURN LLP
`ryan@cantorcolburn.com
`
`8
`
`
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