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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ASSA ABLOY AB, ASSA ABLOY Inc.,
`HID Global Corporation, ASSA ABLOY Global Solutions, Inc.,
`and Master Lock Company, LLC
`Petitioners,
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`v.
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`CPC Patent Technologies PTY LTD.,
`Patent Owner.
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`
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
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`PETITIONERS’ SUPPLEMENTAL BRIEFING AFTER REMAND
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`In the Final Written Decision, the Board construed “biometric signal” to
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`mean “physical or behavioral attribute that provides secure access to a controlled
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`item.” Paper 47 at 59-68 (emphasis added). But a “biometric signal” is not limited
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`to one that “provides secure access.” The claims expressly state a separate “secure
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`access signal” is created and sent to a receiver sub-system, so that the receiver sub-
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`system can provide secure access. ’705 patent at 15:62-16:23; Ex. 2034, 60:2-10.
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`And the claims and specification establish the biometric signal provides more than
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`just secure access, playing an important administrative role in enrolling users. ’705
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`patent at 10:26-27, 10:56-11:7, 11:40-43, 15:62-16:23. To capture the full scope of
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`how “biometric signal” is used in the claims and specification, a “biometric signal”
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`should be construed to mean “the input and output of a biometric sensor.” Paper 35
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`(Reply) at 7-11; Ex. 1029 ¶¶ 5-15.
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`Even if “biometric signal” were limited to one that “provides secure access,”
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`however, the prior art discloses it, and the Board’s contrary findings contradict the
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`Apple Final Written Decision (“Apple FWD”). There, the Board expressly found
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`that a fingerprint sensor always acts as a fingerprint sensor, even when receiving a
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`succession of finger presses, detecting the biometric part of the input signal, while
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`also sensing the number and duration of inputs. Apple, IPR2022-00602, Paper 31 at
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`31. The prior art here (Mathiassen-067 and Bianco) also uses a biometric sensor to
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`detect a biometric part of an input signal and sense a number and duration of those
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`1
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`inputs. Ex. 1004, 8:25-38. The prior art thus renders obvious the claims under both
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`the proper and contested constructions.
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`I.
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`A “Biometric Signal” Is Not Required to “Provide[] Secure Access”
`The Board construed “biometric signal” to mean a “physical or behavioral
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`attribute that provides secure access to a controlled item.” Paper 47 at 59-68. There
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`is no basis for limiting a biometric signal to something that provides secure access.
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`Properly construed biometric signal is an “input and output of a biometric sensor.”
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`Paper 35 (Reply) at 7-11; Ex. 1029 ¶¶ 5-15; see Paper 47 at 6 (“‘biometric signal’
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`is a signal that can be received by a biometric sensor and . . . matched to a
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`database”).
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`A. The Claim Language Does Not Limit a Biometric Signal to One
`that “Provides Secure Access”
`In the Final Written Decision, the Board noted: “the challenged claims state
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`the specific objective of the claimed invention,” namely, “providing secure access
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`to a controlled item.” Paper 47 at 60. The Board then imputed that objective to the
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`claimed “biometric signal” specifically, and reasoned: “[t]hus, the purpose of the
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`biometric signal is to achieve this objective—‘secure access to a controlled item.’”
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`Id. There is no dispute that the claimed biometric signal is one component in a
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`larger system that “provides secure access.” ’705 patent at 15:62-16:23. The
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`claims, however, explain (i) other claim elements provide the secure access, and
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`(ii) although the biometric signal contributes to providing secure access, it also has
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`an important role in enrolling users. The Board’s construction ignores both points.
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`Indeed, the ’705 claims provide a “system for providing secure access to a
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`controlled item” comprising a transmitter sub-system and receiver sub-system. Id.
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`To authenticate and provide secure access, the claims explain that the transmitter
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`sub-system receives “a biometric signal” (at the biometric sensor), compares that
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`signal to a “biometric signatures” database, and transmits a “secure access signal”
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`conveying “an accessibility attribute.” Id. Then, the receiver sub-system receives
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`that “secure access signal” and provides access to the controlled item based on the
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`“accessibility attribute.” Id. While the biometric signal plays a part in this cascade
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`of steps authenticating and providing secure access, the claims expressly state that
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`an entirely separate “secure access signal” is created and sent to the receiver sub-
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`system, so that the receiver sub-system can provide secure access. Id; see also, e.g.,
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`Ex. 2034, 60:2-10. If it were the biometric signal alone that provided secure access,
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`there would be no need for the later-claimed “secure access signal.” The Board’s
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`construction effectively reads “secure access signal” out of the claims, and such a
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`construction is disfavored. See, e.g., Mformation Techs., Inc. v. Rsch. in Motion
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`Ltd., 764 F.3d 1392, 1399 (Fed. Cir. 2014).
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`Moreover, the claims also separately recite an administrative and enrollment
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`function, and they explain that the biometric signal plays an important role in this
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`function as well. ’705 patent at 15:62-16:23. For example, the claims require the
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`U.S. Patent No. 9,665,705
`transmitter sub-system receive “a series of entries of the biometric signal,” and use
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`a number and duration of those entries to “map said series into an instruction” to
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`populate the database of biometric signals. Id. at 16:13-21. This is all to enroll a
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`user. Id.; see also Paper 47 at 61 (“‘series of entries of the biometric signal,’ for
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`example, to enroll new users, is the Morse-code like entries of ‘dit, dit, dit, dah’”);
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`Ex. 2040, 51:21-25. The Board’s construction narrows the claims by ignoring the
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`role the biometric signal plays in enrolling new users, separate from “provid[ing]
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`secure access.” The proper construction would not focus on any one function.
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`The Board’s Construction Ignores Disclosed Embodiments
`B.
`The ’705 specification echoes the claim language and shows the claimed
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`“biometric signal” does more than just “provide[] secure access.” The “biometric
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`signal” can aid in authentication and secure access. See ’705 patent at 8:6-28. But
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`the specification also explains that a biometric signal can be used to “take other
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`action,” like providing “control information” to enroll the user. Id. at 10:26-27,
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`10:56-11:7, 11:40-43 (“biometric signal 102 … is processed in order to provide
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`access to the controlled item 111, or to take other action”). Limiting the claimed
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`“biometric signal” to one that “provides secure access” ignores embodiments that
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`use the biometric signal to “take other action,” like enrolling the user, which the
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`specification describes separately from and in contrast to “providing access to the
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`controlled item.” Such a construction is disfavored. See Baxalta Inc. v. Genentech,
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`4
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`Inc, 972 F.3d 1341, 1346-47 (Fed. Cir. 2020); Oatey v. IPS Corp., 514 F.3d 1271,
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`1276-77 (Fed. Cir. 2008).
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`C. The Board’s Construction Is Inconsistent With the Apple FWD
`In the Apple FWD, the Board assessed the same patent and explained that
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`the number and duration limitation “require[s] a number and duration of biometric
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`signals because the input for these biometric signals is a biometric sensor.” Apple
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`Inc. v. CPC Patent Techs. PTY, Ltd., IPR2020-00602, Paper 31 at 31-34 (P.T.A.B.
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`Sept. 27, 2023). The Board correctly found that a biometric signal is the input to a
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`biometric sensor and did not limit the signal to “provide[] secure access.” Id. at 31.
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`The Board’s construction in this case ignores claimed and disclosed elements and
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`is inconsistent with the Apple FWD. Properly construed, a “biometric signal” is
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`“the input and output of a biometric sensor.” Paper 35 at 7-11; Ex. 1029 ¶¶ 5-15.1
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`II. The Asserted Prior Art Discloses a “Biometric Signal”
`In the Final Written Decision, the Board found that Mathiassen-067 did not
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`disclose the number and duration limitation. Paper 47 at 81-86. This is incorrect.
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`Under both a proper construction and the Board’s construction of biometric signal,
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`1Petitioners do not dispute a “biometric signal” includes physical and behavioral
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`attributes. This is not inconsistent with the Apple FWD, where the prior art did not
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`involve behavioral attributes. Apple, IPR2020-00602, Paper 11 at 23.
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`5
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`Mathiassen-067 and Bianco disclose the number and duration limitation and render
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`the claims unpatentable.
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`A. Mathiassen-067 Discloses the Number and Duration Limitation
`The Board found Mathiassen-067’s “fingerprint sensor does not in fact act
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`as a fingerprint sensor” when receiving the series of short and long taps. Paper 47
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`at 85. According to the Board, Mathiassen-067 differentiates its “finger press
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`command entry function” from its “fingerprint user authentication function,” such
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`that when the fingerprint sensor “switches to text input mode or cursor control
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`mode, it exits access control mode[,] and is no longer functioning as a fingerprint
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`sensor.” Id. at 84, 85. This finding does not align with the Apple FWD. Apple,
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`IPR2020-00602, Paper 31 at 31. And it ignores evidence showing that Mathiassen-
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`067’s fingerprint sensor always acts as a fingerprint sensor, regardless of the mode.
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`First, in the Apple FWD, the Board construed the number and duration claim
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`limitation “to require a number and duration of biometric signals because the input
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`for these biometric signals is a biometric sensor.” Apple, IPR2022-00602, Paper 31
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`at 31. Importantly, the Board found that a “fingerprint sensor’s ability to recognize
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`a fingerprint is not turned off when a succession of finger presses is applied to the
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`fingerprint sensor.” Id. (emphasis added). That is, a fingerprint sensor always acts
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`as a fingerprint sensor, even when it is receiving a series of finger presses. Id. The
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`Board explained that, because the prior art, “like the ’705 patent, uses a biometric
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`U.S. Patent No. 9,665,705
`sensor as the input device, it will detect the biometric part of the input signal, while
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`also sensing the number and duration of inputs.” Id. at 52 (emphases added). Here,
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`Mathiassen-067 uses the biometric fingerprint sensor as an input device for sensing
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`a number and duration of inputs—it is detecting a biometric part of the input signal
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`while also sensing the number and duration of inputs. The Board’s findings to the
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`contrary are inconsistent with the Apple FWD.
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`Second, the evidence shows Mathiassen-067’s fingerprint sensor continues
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`to act as a fingerprint sensor in control mode, such that the finger presses provide
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`secure access. Mathiassen-067 discloses known fingerprint sensors and explains
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`when the fingerprint sensor is in control mode, it still “scans the fingerprint, and in
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`order to be able to analyze[] the fingerprint, is able to detect the finger movement
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`across the sensor” to receive the commands and instructions. Ex. 1004, 8:25-38
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`(emphasis added); see Ex. 1029 ¶¶ 24-26. Patent Owner’s expert confirmed as
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`much; Mathiassen-067’s fingerprint sensor continues to capture fingerprint data
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`when in control mode. See, e.g., Ex. 1028 at 115:10-25 (“[p]art of the fingerprint is
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`being imaged in connection with gestures” during the cursor control mode.).
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`Mathiassen-067 also characterizes its control function as “navigation by
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`fingerprints”; the control mode must be tied to fingerprint data. Ex. 1004, 18:29-
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`33. And Mathiassen-067 discloses using fingerprint data to verify the identity of a
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`user (e.g., a minor) to bar particular commands (e.g., ordering an age-restricted
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`U.S. Patent No. 9,665,705
`movie). Ex. 1004, 5:8-12, 19:22-20:7. This evidence demonstrates that
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`Mathiassen-067 discloses the claimed “biometric signal.”
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`The Board misunderstood Petitioners’ expert testimony in finding “there is
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`no evidence establishing [Mathiassen-067’s] sensor . . . in fact receives a series of
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`entries of the biometric signal.” Paper 47 at 85 (citing Ex. 2034 at 65:2-24). That
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`testimony does not suggest the sensor stops acting as a fingerprint sensor in control
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`mode. Rather, Mr. Lipoff explains the sensor is “reading” the fingerprint as “a
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`number of entries and the duration of entries.” Ex. 2034, 65:17-23. And Mr. Lipoff
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`explained Mathiassen-067 discloses the same user using the device in both access
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`and control modes. See, e.g., Ex. 2040, 67:8-11 (“when the authentication mode is
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`complete and identifies the user, then the user can use the same sensor in order to
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`generate instructions”). Thus, consistent with Mathiassen-067’s stated objective of
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`restricting access and control to authenticated and enrolled users (Ex. 1004, 19:24-
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`28, 20:10-13), Mr. Lipoff’s testimony also supports finding that the fingerprint
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`sensor continues to read fingerprint data when in control mode, so the
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`authenticated user can perform control functions.
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` As explained in the Petition, the skilled artisan would have been motivated
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`to combine Bianco and Mathiassen-067. Paper 2 at 54-58. The biometric sensor in
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`Bianco receives a biometric signal to authenticate a user, and such a system would
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`be improved upon by Mathiassen-067 to use patterns of biometric signal entries at
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`U.S. Patent No. 9,665,705
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`the same biometric sensor for control input. Id.
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`Bianco Alone Also Discloses the Number and Duration Limitation
`B.
`In the Petition, Petitioners explained Bianco “also discloses” the number and
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`duration limitation. Paper 2 at 41-46, n.12; Ex. 1029 at ¶¶28-30. Bianco discloses
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`fingerprints and signatures, the latter of which the Board explained is a “biometric
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`attribute that provides secure access to a controlled item.” Paper 47 at 81. Bianco
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`then discloses taking “biometric measurements a few different times to collect
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`multiple samples during enrollment,” for example, taking “multiple samples of a
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`signature” and “multiple fingerprint measurements for each finger.” Paper 2 at 42;
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`Paper 47 at 81; Ex. 1003, 8:25-30 (noting the “fingerprint device measures the
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`geometry of a fingerprint. First, a user is prompted for multiple samples of a
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`fingerprint. For each sample, a number of characteristics or measurements are
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`identified.”), 8:43-47, 8:52-54, 27:22-27 (“[B]iometric device object 1222 is used
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`to enroll the user by requesting multiple samples of a particular type of ‘live’
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`biometric data from the user. Biometric device object 1222 uses the samples of
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`biometric data to create a unique biometric template 502 (FIG. 5) for the user.”),
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`28:2-7. Bianco explains these biometric inputs are then analyzed, including, for
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`example, assessing the “time it took to sign a signature.” Ex. 1003, 8:43-47, 8:52-
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`54. According to Bianco, whenever “live” biometric data is presented, the user is
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`authenticated. Ex. 1003 at 25:57-26:7, 26:42-47 (“monitor object 1004 is always
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`9
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`U.S. Patent No. 9,665,705
`waiting for ‘live’ biometric data to be presented . . . [and] does not distinguish it
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`from previously presented ‘live’ biometric data); Paper 2 at 24-25. Thus, any time
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`an input device receives biometric data (e.g., a sensor receiving a fingerprint),
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`authentication is performed. Bianco therefore discloses a number and duration of
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`biometric inputs, as claimed. Paper 2 at 41-52.
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`Bianco also renders obvious the step of mapping the biometric inputs to an
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`instruction (and populating the biometric database) because its system’s
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`administration and enrollment stations can be combined in one device. Paper 2 at
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`47, 51; Ex. 1003, 3:7-12, 10:56-63, 28:13-18, 28:21-28, Figs. 5, 13A-B; see, e.g.,
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`Ex. 1005 ¶¶ 170, 173, 175, 178. Bianco thus discloses or renders obvious the
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`disputed limitation.
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`III. Conclusion
`Petitioners respectfully request that the Board cancel the challenged claims.
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`Dated: April 22, 2024
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`Respectfully Submitted,
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`/Lionel M. Lavenue/
`Lionel M. Lavenue, Reg. No. 46,859
`Counsel for Petitioners
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`10
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`Case No. IPR2022-01006
`U.S. Patent No. 9,665,705
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies a copy of the foregoing PETITIONERS’
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`SUPPLEMENTAL BRIEFING AFTER REMAND was served on April 22,
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`2024, via email directed to counsel of record for Patent Owner at the following:
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`Michael J. Rye
`mrye@cantorcolburn.com
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`Steven M. Coyle
`scoyle@cantorcolburn.com
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`Nicholas A. Geiger
` ngeiger@cantorcolburn.com
`
`
`By: /Lisa C. Hines/
`Lisa C. Hines
`Case Manager
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`Dated: April 22, 2024
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