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,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01006
`Patent 9,665,705
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`PATENT OWNER’S RESPONSE
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`

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`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES ................................................................................... iv
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`’705 PATENT OVERVIEW ........................................................................... 5
`
`III. LEVEL OF ORDINARY SKILL .................................................................... 8
`
`IV. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`B.
`
`C.
`
`Previously Adopted Claim Constructions ............................................. 8
`
`The Intrinsic Evidence Supports The Board’s Adopted
`Construction Of “Biometric Signal” ...................................................10
`
`The ’705 Patent’s Inclusion Of “Voice” Is Consistent With The
`Board’s Adopted Construction Of “Biometric Signal”.......................11
`
`D. Mr. Lipoff’s Reliance On Behavioral Biometric Attributes Is
`Misplaced ............................................................................................15
`
`1.
`
`2.
`
`“Voice” Biometrics ...................................................................15
`
`“Typing Stroke” Biometrics .....................................................17
`
`V.
`
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED
`CLAIMS OBVIOUS .....................................................................................19
`
`A.
`
`The Asserted Prior Art Does Not Teach Or Suggest 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 [Limitation
`D(1)] ....................................................................................................21
`
`1.
`
`Bianco Does Not Teach Or Suggest The Biometric
`Signal Duration Limitation .......................................................22
`
`2. Mathiassen Does Not Teach Or Suggest The Biometric
`Signal Duration Limitation .......................................................25
`
`a. Mathiassen Does Not A Number/Duration Of
`Biometric Entries To Issue An Instruction .....................25
`
`b. Mr. Lipoff Admitted That Mathiassen Is Silent As
`To Whether The Single Touch-Sensitive Switch
`
`i
`
`

`

`Scans The Fingerprint While In A Navigation
`Mode ...............................................................................30
`
`c. Mathiassen Teaches That The Single Touch-
`Sensitive Switch Does Not Biometrically Scan The
`Fingerprint While In A Navigation Mode ......................31
`
`d.
`
`A POSITA Familiar With The State Of The Art
`Would Have Understood That The Single Touch-
`Sensitive Switch Does Not Scan The Fingerprint
`While In A Navigation Mode .........................................33
`
`B. Mapping Said Series Of The Biometric Signal Into An
`Instruction ............................................................................................38
`
`C.
`
`D.
`
`E.
`
`F.
`
`Populate The Database Of Biometric Signatures According To
`The Instruction ....................................................................................39
`
`Petitioners Have Not Established That A POSITA Would Have
`Been Motivated To Combine Bianco And Mathiassen ......................41
`
`Independent Claims 10, 11 And 14-17 ...............................................46
`
`Dependent Claims ...............................................................................46
`
`VI. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(b) .............47
`
`A. Applicable Legal Standards ................................................................47
`
`1.
`
`2.
`
`3.
`
`Petitioners Bear The Burden Of Persuasion .............................47
`
`RPI And Privity Standards ........................................................47
`
`a.
`
`b.
`
`Scope Of Real Parties In Interest ....................................48
`
`Scope Of Privity .............................................................49
`
`Institution Is Barred Under Section 315(b) Because
`Apple Is An RPI And Privy Of Petitioners ...............................50
`
`B.
`
`Apple Is An Unnamed RPI To This Proceeding .................................50
`
`1.
`
`2.
`
`Control Is Not A Requirement For A Non-Party To Be A
`Real-Party-In-Interest ...............................................................50
`
`Apple Has A Preexisting, Established Business
`Relationship With Petitioners ...................................................51
`
`a.
`
`Petitioners Admit Their Preexisting, Established
`Business Relationship With Apple .................................51
`
`ii
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`

`

`b.
`
`The Apple Agreement Also Establishes That
`Apple Is An RPI..............................................................53
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`Representations And Warranties Of
`Noninfringement ..................................................56
`
`Indemnification Clauses .......................................58
`
`Product Inspection Clause ....................................59
`
`Insurance Coverage Clause ..................................60
`
`Apple Appointed As Petitioners’ Agent ..............61
`
`3.
`
`4.
`
`Apple Is A Clear Beneficiary Of The Petition ..........................62
`
`The Petitioners Filed An IPR Petition Against The ’039
`Patent For Apple’s Benefit ........................................................63
`
`C.
`
`Apple Is A Privy To This Proceeding .................................................64
`
`VII. CONCLUSION ..............................................................................................64
`
`
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`
`iii
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`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ............................................................. passim
`
`Bungie v. Worlds Inc.,
`IPR2015-01264 (PTAB Jan. 14, 2020) ................................................. passim
`
`Cisco Sys., Inc. v. Hewlett Packard Enter. Co.,
`IPR2017-01933 (PTAB Mar. 16, 2018) ................................................ 48, 50
`
`CPC Patent Technologies Pty Ltd v. Apple Inc.,
`WDTX-6-21-cv-00165-ADA .......................................................................... 8
`
`CPC Patent Technologies Pty Ltd v. HMD Global Oy,
`WDTX-6-21-cv-00166-ADA .......................................................................... 8
`
`Ecolochem, Inc. v. Southern California Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .....................................................................45
`
`Google LLC et al v. Cywee Grp. Ltd.,
`IPR2018-01257 (PTAB Jan. 9, 2020) ..........................................................48
`
`Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp.,
`493 F.3d 1358 (Fed. Cir. 2007) ....................................................................10
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................... 8
`
`RPX Corp. v. Applications in Internet Time, LLC,
`IPR2015-01750 (PTAB Oct. 2, 2020) ..........................................................63
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ....................................................................10
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ............................................................................... 49, 63
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ....................................................................... 9
`
`iv
`
`

`

`Uniloc 2017 LLC v. Facebook Inc.,
`989 F.3d 1018 (Fed. Cir. 2021) ....................................................................48
`
`Ventex Co., Ltd., v. Columbia Sportswear North America, Inc.,
`IPR2017-00651 (PTAB Jan. 24, 2019) ................................................. passim
`
`Worlds, Inc. v. Bungie, Inc.,
`903 F.3d 1237 (Fed. Cir. 2018) ............................................................. passim
`
`Statutes
`
`35 U.S.C. § 315(b) .................................................................................. 4, 46, 53, 62
`
`Other Authorities
`
`BLACK’S LAW DICTIONARY (10th ed. 2014) ..................................................49
`
`Congressional Record Volume 157, Number 132
`(Thursday, September 8, 2011) ....................................................................63
`
`Rules
`
`83 Fed. Reg. 197 (Oct. 11, 2018) ............................................................................... 8
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`
`
`
`
`
`
`
`
`v
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`Affidavit in Support of Patent Owner’s Motion for Pro Hac Vice
`Admission of Steven M. Coyle Pursuant to 37 C.F.R. § 42.10(c)
`Affidavit in Support of Patent Owner’s Motion for Pro Hac Vice
`Admission of Nicholas A. Geiger Pursuant to 37 C.F.R. § 42.10(c)
`Complaint filed in CPC Patent Technologies Pty Ltd. v. Apple,
`Inc., No. 6:21-cv-00165 (W.D. Tex., Waco Division) (without
`exhibits)
`Affidavit of Service of Complaint filed in CPC Patent
`Technologies Pty Ltd. v. Apple, Inc., No. 6:21-cv-00165 (W.D.
`Tex., Waco Division)
`Letter dated October 18, 2021 from Patent Owner’s counsel to
`Yale Residential regarding ’705 and ’208 Patents with attached
`claim charts
`Letter dated November 4, 2021 from Patent Owner’s counsel to
`Yale Residential
`Complaint for declaratory judgment filed in ASSA ABLOY AB et
`al. v. CPC Patent Technologies Pty. Ltd. and Charter Pacific Corp
`Ltd., Civ. 3:22-cv-694 (D. Conn.) (without exhibits)
`Declaration of Kevin J. Dart filed in ASSA ABLOY AB et al. v.
`CPC Patent Technologies Pty. Ltd. and Charter Pacific Corp Ltd.,
`Civ. 3:22-cv-694 (D. Conn.) (without exhibits)
`Apple Developer Program License Agreement
`Email thread between Petitioners and Patent Owner’s respective
`counsel regarding additional discovery
`Yale product literature (Yale Assure Lock Touchscreen with Wi-Fi
`and Bluetooth) downloaded from
`[https://shopyalehome.com/products/yale-assure-lock-touchscreen-
`with-wi-fi-and-bluetooth?variant=39341913079940]
`Yale product literature (Yale Access Upgrade Kit with Wi-Fi for
`Assure Locks) downloaded from
`[https://shopyalehome.com/products/yale-access-ugrade-kit-for-
`assure-locks-with-wifi?variant=34110396006532]
`Yale product literature (Facial and Fingerprint Lock Verification
`for Yale Assure Smart Locks) downloaded from
`[https://shopyalehome.com/blogs/yale-home-blog/new-facial-and-
`fingerprint-lock-verification-for-yale-assure-smart-locks]
`
`vi
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2023
`2024
`2025
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`August product literature (August Smart Lock Pro + Connect)
`downloaded from [https://august.com/products/august-smart-lock-
`pro-connect]
`August product literature (New Biometric Verification Feature for
`August Smart Locks) downloaded from
`[https://august.com/blogs/home/introducing-biometric-
`verification-for-august-and-yale-locks]
`Apple literature regarding MiFi Program downloaded from
`https://mfi.apple.com/
`Apple literature regarding MiFi Program (How the Program
`Works) downloaded from https://mfi.apple.com/en/how-it-
`works.html.
`Apple literature regarding MiFi Program (Frequently Asked
`Questions) downloaded from https://mfi.apple.com/en/faqs.html.
`Apple Inc. iPhone SDK Agreement (dated 10/20/2008)
`Yale Access on the Apple App Store
`August Home on the Apple App Store
`Apple literature regarding Apple HomeKit (“Developing apps and
`accessories for the home”) downloaded from
`https://developer.apple.com
`Apple literature regarding Apple HomeKit and Yale Assure Lock
`Yale product literature (Yale Assure Lock SL Touchscreen
`Deadbolt – Black – Apple) downloaded from
`https://www.apple.com/shop/product/HPAR2ZM/A/yale-assure-
`lock-sl-touchscreen-deadbolt-black
`August product literature regarding Apple HomeKit (HomeKit
`FAQ) downloaded from https://support.august.com/august-smart-
`lock-homekit-enabled-faq-rJv088y0_z
`Revised Affidavit in Support of Patent Owner’s Motion for Pro
`Hac Vice Admission of Steven M. Coyle Pursuant to 37 C.F.R. §
`42.10(c)
`Revised Affidavit in Support of Patent Owner’s Motion for Pro
`Hac Vice Admission of Nicholas A. Geiger Pursuant to 37 C.F.R.
`§ 42.10(c)
`Declaration of Samuel Russ, Ph.D. Regarding U.S. Patent No.
`9,665,705
`Curriculum Vitae of Samuel Russ, Ph.D.
`
`vii
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2033
`
`2034
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`Joint Claim Construction Statement in CPC Patent Technologies
`Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 57
`(“Apple Joint CC Statement”)
`Deposition of Stuart Lipoff (Feb. 14, 2023)
`S. Liu and M. Silverman, "A practical guide to biometric security
`technology," in IT Professional, vol. 3, no. 1, pp. 27-32, Jan.-Feb.
`2001. doi: 10.1109/6294.899930.
`D. Currie, “Shedding some light on Voice Authentication”, Global
`Information Assurance Certification Paper (2003)
`F.S. Rovati, et al., “Spatial-Temporal Motion Estimation for Image
`Reconstruction and Mouse Functionality with Optical or
`Capacitive Sensors”, IEEE Transactions on Consumer Electronics,
`Vol. 49, No. 3, August 2003, pp. 711-718
`Haider: S. Haider, A. Abbas and A. K. Zaidi, "A multi-technique
`approach for user identification through keystroke dynamics," Smc
`2000 conference proceedings. 2000 ieee international conference
`on systems, man and cybernetics. 'cybernetics evolving to systems,
`humans, organizations, and their complex interactions' (cat. no.0,
`Nashville, TN, USA, 2000, pp. 1336-1341 vol.2.
`Umphress: David Umphress, Glen Williams, Identity verification
`through keyboard characteristics, International Journal of Man-
`Machine Studies, Volume 23, Issue 3, 1985, Pages 263-273
`
`
`
`
`
`viii
`
`

`

`I.
`
`INTRODUCTION
`
`For the reasons set forth below, Petitioners have failed to demonstrate that
`
`the inventions claimed in U.S. Patent No. 9,665,705 (“the ’705 Patent”) are
`
`unpatentable.
`
`The limitations of the independent claims of the ʼ705 Patent can be
`
`categorized 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)).
`
`Petitioners’ challenge fails because the asserted prior art, either alone or in
`
`combination, does not teach or suggest the claimed invention. In particular, the
`
`prior art does not teach or suggest the transmitter subsystem limitation
`
`(representative clause 1(D)), which specifies “a series of entries of the biometric
`
`
`1 These clauses refer to the numbering system used by Petitioners to label the
`
`various claim limitations in claim 1 of the ʼ705 Patent.
`
`1
`
`

`

`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”). Thus, limitation
`
`1(D) requires a “number” of entries of a biometric signal, and a “duration” of
`
`entries of a biometric signal. Petitioners’ obviousness argument fails because it
`
`relies on prior art that fails to teach or suggest this limitation.
`
`First, Petitioners’ theory of obviousness rests on a mischaracterization of the
`
`Mathiassen reference (EX-1004). Petitioners contend that Mathiassen’s disclosure
`
`of measuring the number and duration of finger presses teaches the “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” requirement of
`
`clause 1(D). See, e.g., Paper 2, 43 (“For example, Mathiassen discloses receiving
`
`on its fingerprint sensor ‘multiple…presses,’ of different finger press
`
`durations…to issue commands.” (Emphasis added). But Petitioners misread
`
`Mathiassen, as the “finger presses” that it relies upon are not a biometric signal at
`
`all.
`
`Mathiassen discloses a single touch-sensitive switch that performs the dual
`
`functions of (i) measuring the user’s fingerprint to authorize access to the device
`
`and (ii) sensing predetermined finger movements (such as sideswipes and taps) to
`
`command and navigate the device, i.e., text entry and cursor control. A POSITA at
`
`2
`
`

`

`the time of the invention would have understood that while entry of a user’s
`
`fingerprint is entry of a biometric signal, entry of the predetermined finger
`
`movements - the function that Petitioners rely upon for the duration component -
`
`are not biometric signals. As established below, a POSITA would have understood
`
`that the single touch-sensitive switch does not measure the user’s fingerprint when
`
`the device of Mathiassen is engaged in the navigation functions. This is fatal to
`
`Petitioners’ challenge.
`
`Second, Petitioners rely on Bianco’s disclosure of a hand-written signature
`
`as teaching the Biometric Signal Duration Limitation. However, as the Board has
`
`previously determined in Apple’s IPR involving the same patent at issue here, the
`
`claimed “biometric signal” is properly construed as a “physical attribute.” See
`
`IPR2022-00602, Paper No. 1 at 6; Paper No. 11 at 13. As a POSITA would
`
`readily understand at the time of the invention, in the field of biometrics a hand-
`
`written signature is not a physical biometric attribute, but instead is a behavioral
`
`biometric attribute. Bianco and other literature discussed below expressly teach
`
`that physical and behavioral biometrics fall into separate categories of biometric
`
`measurements. Thus, Bianco does not teach or suggest any “biometric signal,” as
`
`defined in the ’705 Patent, that satisfies the Biometric Signal Duration Limitation.
`
`Indeed, the Petition points to no prior art that discloses a durational component
`
`associated with entry of a physical biometric attribute, such as is claimed in the
`
`3
`
`

`

`’705 Patent.
`
`Moreover, Petitioners fail to demonstrate that there would have been a
`
`motivation to modify the system of Bianco to add the single touch-sensitive switch
`
`of Mathiassen. To the contrary, as established by the Expert Declaration of
`
`Samuel Russ, PhD, submitted herewith, a POSITA at the time of the invention
`
`would not have been motivated to add Mathiassen’s single-touch sensitive switch
`
`to Bianco, or further to measure the number and duration of entries of a biometric
`
`signal. As established below, these flaws in Petitioners’ analysis are fatal to the
`
`proffered challenges. Therefore, patentability of the claims of the ’705 Patent
`
`should be confirmed.
`
`Apart from the merits (or lack thereof) of the Petition, Patent Owner further
`
`maintains its position that the Petition is time-barred under 35 U.S.C. § 315(b)
`
`because Apple is a real party-in-interest (“RPI”) and/or privy of one or more of the
`
`Petitioners. Patent Owner respectfully requests that the Board re-evaluate its
`
`findings in the institution decision with full appreciation of the expansive
`
`formulation required by the Federal Circuit, including that an RPI relationship
`
`can exist even in the absence of control or financial involvement in the Petition,
`
`as more fully set forth below.
`
`4
`
`

`

`II.
`
`’705 PATENT OVERVIEW
`
`The ’705 Patent describes an improved secure access system that includes at
`
`least a transmitter subsystem and a “controlled item”, which can be a physical door
`
`lock or an electronic key circuit. EX-1001, Abstract, 6:17-20. The transmitter
`
`subsystem includes a sensor to receive a biometric signal. Id. 2:33-34. With
`
`respect to the biometric signal, the ’705 Patent states that “[o]ne example of a
`
`biometric signal is a fingerprint. Other physical attributes that can be used to
`
`provide biometric signals include voice, retinal or iris pattern, face pattern, palm
`
`configuration and so on.” Id. 1:29-33.
`
`As noted by the Board, Figure 2 (reproduced below) is a functional block
`
`diagram of an arrangement for providing secure access according to the system
`
`disclosed in the ’705 Patent. Id. 5:18–19.
`
`5
`
`

`

`
`
`User 101 makes a request to code entry module 103. Id. 5:56–57. Code
`
`entry module 103 includes biometric sensor 121. Id. 5:57–58. If biometric sensor
`
`121 is a fingerprint sensor, for example, then the request “typically takes the form
`
`of a thumb press” on a sensor panel located on code entry module 103. Id. 5:60–
`
`63. Code entry module 103 then “interrogates” an authorized user identity
`
`database 105, which contains “biometric signatures” for authorized users, to
`
`determine if user 101 is an authorized user. Id. 5:64–6:2. If user 101 is an
`
`authorized user, code entry module 103 sends a signal to “controller/transmitter”
`
`107. Id. 6:2–4.
`
`6
`
`

`

`The ’705 Patent discloses that the code entry module may be activated by
`
`receiving a series of entries of the biometric signal, determining at least one of the
`
`number of said entries of the biometric signal and a duration of each said entry of
`
`the biometric signal, mapping said series of entries of the biometric signal into an
`
`instruction, and populating the database of biometric signatures. Id. 3:26-42.
`
`The ’705 Patent includes seven independent claims, namely claims 1, 10, 11,
`
`14, 15, 16, and 17. Representative claim 1 reads:
`
`[P] A system for providing secure access to a controlled item, the system
`comprising:
`[A] a memory comprising a database of biometric signatures;
`
`[B(P)] a transmitter sub-system comprising:
`[B(1)] a biometric sensor configured to receive a biometric signal;
`[B(2)] 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
`[B(3)] a transmitter configured to emit a secure access signal conveying
`information dependent upon said accessibility attribute; and
`
`[C(P)] a receiver sub-system comprising: a receiver sub-system controller
`configured to:
`[C(1)] receive the transmitted secure access signal; and
`[C(2)] provide conditional access to the controlled item dependent upon said
`information;
`
`[D(P)] wherein the transmitter sub-system controller is further configured to:
`[D(1)] 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;
`[D(2)] map said series into an instruction; and
`[D(3)] populate the data base according to the instruction,
`
`
`7
`
`

`

`[E] wherein the controlled item is one of: a locking mechanism of a physical
`access structure or an electronic lock on an electronic computing device.
`
`
`III. LEVEL OF ORDINARY SKILL
`
`For purposes of this proceeding Patent Owner does not object to the defined
`
`level of skill in the art adopted in co-pending IPR2022-00602 challenging the ’705
`
`Patent. There, the Board adopted the following level of skill in the art: “a 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 one year experience in the field of human-machine interfaces and device
`
`access security.” See IPR2022-00602, Paper 11 at 12. Further, “[a]dditional
`
`education or experience may substitute for the above requirements.” Id. For the
`
`purposes of this proceeding, Patent Owner does not dispute this characterization of
`
`the level of ordinary skill in the art, and applies it in its analysis.
`
`IV. CLAIM CONSTRUCTION
`
`A.
`
`Previously Adopted Claim Constructions
`
`Claim terms in an inter partes review are interpreted under the same
`
`standard applied by Article III courts (i.e., the Phillips standard). 37 C.F.R. §
`
`42.100(b); 83 Fed. Reg. 197 (Oct. 11, 2018); Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312 (Fed. Cir. 2005) (en banc). As noted in the Petition, Judge Albright
`
`(WDTX) construed several claim terms in the related matters of CPC Patent
`
`Technologies Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-ADA (“Apple
`
`8
`
`

`

`litigation”) and CPC Patent Technologies Pty Ltd v. HMD Global Oy, WDTX-6-
`
`21-cv-00166-ADA (“HMD litigation”). Paper No. 2 at 11-12; EX-1009; EX-1010.
`
`In addition, the parties to the Apple litigation submitted a Joint Claim Construction
`
`Statement with several agreed-upon constructions. EX-2033.
`
`Apple proposed, and the Board adopted, several constructions of the claim
`
`terms in Apple’s co-pending IPR challenging the ’705 Patent, as follows:
`
`Claim Term
`“database”
`
`Construction
`“organized structure of data”
`
`“conditional access”
`
`“access based on accessibility attribute”
`
`“biometric signal”
`
`“accessibility attribute”
`
`“physical attribute of the user (i.e., fingerprint,
`facial pattern, iris, retina, voice, etc.)”
`“attribute that establishes whether and under
`which conditions access to the controlled item
`should be granted to a user”
`
`
`See IPR2022-00602, Paper No. 1 at 6; Paper No. 11 at 13. In his analysis, Patent
`
`Owner’s expert, Dr. Samuel Russ, applied the above constructions, including the
`
`construction for “biometric signal.” EX-2031, ¶¶30-31.
`
`Under cross-examination, Petitioners’ proffered expert testified that he did
`
`not apply the Board’s previously adopted construction of “biometric signal”, but
`
`that he does not “necessarily agree or disagree” with it. EX-2034, 30:6—33:3. To
`
`the extent there is any dispute regarding construction of “biometric signal” as it is
`
`used in the claims of the ’705 Patent, Patent Owner submits that the construction
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`adopted by the Board in the Apple IPR is the correct construction and it should be
`
`applied is this proceeding as well.
`
`B.
`
`The Intrinsic Evidence Supports The Board’s Adopted
`Construction Of “Biometric Signal”
`
`“The specification is always highly relevant to the claim construction
`
`analysis and is, in fact, the single best guide to the meaning of a disputed term.”
`
`Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016).
`
`Here, the specification makes clear that a “biometric signal” as used in connection
`
`with the claimed invention is a physical attribute of the user: “One example of a
`
`biometric signal is a fingerprint. Other physical attributes that can be used to
`
`provide biometric signals include voice, retinal or iris pattern, face pattern, palm
`
`configuration and so on.” EX-1001 at 1:29-33 (emphasis added).2 This
`
`definition as established by the patentee controls. See Honeywell Int’l, Inc. v.
`
`Universal Avionics Sys. Corp., 493 F.3d 1358, 1361-64 (Fed. Cir. 2007); SciMed
`
`Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1342-45
`
`(Fed. Cir. 2001).
`
`
`2 As discussed below, at the time of the invention a POSITA would understand that
`
`there were two categories of biometric signals: physical biometric attributes (such
`
`as fingerprints or face and retina patterns, and behavioral biometric attributes (such
`
`as hand-written signatures or type stroke).
`
`10
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`

`

`Further, not only does the specification of the ’705 Patent define a biometric
`
`signal as a “physical attribute”, it also provides a list of examples of physical
`
`attributes that a POSITA would understand to be the recited biometric signals.
`
`EX-2031, ¶33. Fingerprints, retinal patterns, iris patterns, face pattern, and palm
`
`configuration are all physical attributes. Id., see also EX1003 at 7:57-65; EX2035
`
`at 1; EX2036 at 4. As discussed further below, voice authentication is (and was at
`
`the time of the invention) understood to be both a physical and a behavioral
`
`attribute. EX-2031, ¶33. A POSITA would have understood from the overall
`
`context of the ’705 Patent that inclusion of “voice” in the list of otherwise
`
`exclusively physical attributes does not expand the scope of biometric signals to
`
`include behavioral attributes. Id. Notably, none of the examples of biometric
`
`signals supplied in the ’705 Patent are examples of purely behavioral biometric
`
`attributes. Id.
`
`C. The ’705 Patent’s Inclusion Of “Voice” Is Consistent With The
`Board’s Adopted Construction Of “Biometric Signal”
`
`A POSITA would have understood from the overall context of the ’705
`
`Patent that inclusion of “voice” in the list of physical attributes does not expand the
`
`scope of the claimed “biometric signals” to include behavioral attributes. EX-
`
`2031, ¶¶34-40.
`
`At the time of the invention of the ’705 Patent, i.e., August 2003, a POSITA
`
`would have understood that there were two basic categories of biometric
`
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`

`

`measurements, namely, measurements of (i) physical attributes and (ii) behavioral
`
`attributes. Id., ¶34. This distinction is explained in Bianco, as follows:
`
`Biometric identification mechanisms include two basic categories of
`biometric measurements. The first category involves measuring a
`unique characteristic found on a user's body. This may include, but is
`not limited to, finger and hand geometry, retina and facial images,
`weight, DNA data and breath. The second category involves
`measuring a user's behavioral characteristics. This may include, but
`is not limited to, voice, typing stroke and signature.
`
`EX-1003 at 7:57-65. 3
`
`This clear distinction between biometric identification via physical attributes
`
`versus via behavioral attributes drawn by Bianco is consistent with other teachings
`
`in the art at the time of the invention of the ’705 Patent. EX-2031, ¶¶36-37. For
`
`example, Liu (2001)4, teaches:
`
`Biometrics measure individuals’ unique physical or behavioral
`characteristics to recognize or authenticate their identity. Common
`physical biometrics include fingerprints; hand or palm geometry; and
`retina, iris, or facial characteristics. Behavioral characters include
`signature, voice (which also has a physical component), keystroke
`pattern, and gait.
`
`
`
`3 All emphasis is added unless otherwise indicated.
`
`4 S. Liu and M. Silverman, “A practical guide to biometric security technology,” in
`
`IT Professional, vol. 3, no. 1, pp. 27-32, Jan.-Feb. 2001. doi: 0.1109/6294.899930.
`
`EX-2035.
`
`12
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`

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`EX-2035 at 1.
`
`Similarly, Currie (2003)5, teaches that “Biometric characteristics fall into
`
`two broad categories”, as follows:
`
`• Physiological Biometrics are concerned with the unique physical traits
`of the individual, for example retinal scans, fingerprints and face
`geometries.
`
`• Behavioural Biometrics are concerned with the unique way individuals
`perform certain actions, for example conventional pen signatures and
`key stroke detection.
`
`
`EX-2036 at 4.
`
`Thus, it was well known in the art that the measurement of physical
`
`attributes are a distinct category of biometric measurement compared to
`
`measurement of behavioral attributes. EX-2031, ¶38. Examining the three
`
`references together (i.e., Bianco, Liu, and Currie), one can readily appreciate how
`
`such biometric attributes would have been understood by a POSITA and, further,
`
`can compare them to the definition in the ’705 Patent and the construction adopted
`
`in the Apple IPR, summarized in the table below.
`
`Reference
`Bianco [EX-1003]
`
`Physical biometric
`• finger and hand
`geometry
`• retina and facial
`images
`
`Behavioral biometric
`• voice
`• typing stroke
`• signature
`
`
`5 D. Currie, “Shedding some light on Voice Authentication”, Global Information
`
`Assurance Certification Paper (2003). EX-2036.
`
`13
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`

`

`Liu [EX-2035]
`
`Currie [EX-2036]
`
`’705 Patent and the
`Board’s