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
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
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`Case IPR2022-01006
`Patent 9,665,705
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`PATENT OWNER’S RESPONSE TO PETITIONER’S SUPPLEMENTAL
`BRIEF AFTER REMAND
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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
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
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`Case IPR2022-01006
`Patent 9,665,705
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`PATENT OWNER’S RESPONSE TO PETITIONER’S SUPPLEMENTAL
`BRIEF AFTER REMAND
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`The Board’s inclusion of “provides secure access to a controlled item” as
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`part of the construction of “biometric signal” was appropriate. “The construction
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`that stays true to the claim language and most naturally aligns with the patent’s
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`description of the invention will be, in the end, the correct construction.” Paper 47
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`at p. 67, quoting Renishaw PLC v Marposs Societa’ per Azioni, 158 F.3d 1243,
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`1250 (Fed. Cir. 1998). Here, the Board properly concluded that “provides secure
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`access to a controlled item” was appropriate because it stays true to the claim
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`language and most naturally aligns with the ‘705 Patent’s description of the
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`invention. Id. at 68. Under the Board’s construction none of Petitioner’s prior art
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`discloses elements 1[D(1)-D(3)]1 of the ‘705 Patent. Nor is any aspect of the
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`Board’s FWD inconsistent with the Apple Final Written Decision (“Apple FWD”).
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`I.
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`Inclusion of “Provides Secure Access” Is Proper
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`A. The Board’s Analysis Was Sound
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`The Board’s inclusion of “provides secure access” was proper.2 As noted in
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`the FWD, the express objective of the claimed invention is a “system for providing
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`1 This claim element numbering was used in the briefing and in the FWD. See e.g.,
`Paper 47 at p. 78.
`2 Patent Owner argued that “biometric signal” should be limited to a physical
`attribute of a user. The Board disagreed and concluded that “biometric signal”
`includes both physical and behavioral attributes. Patent Owner maintains, for the
`reasons stated in Patent Owner’s Response and Sur-Reply, that the construction of
`“biometric signal” should be limited to physical attributes of the user. See e.g.,
`Paper 31, pp. 8-15; Paper 41, pp. 7-9.
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`1
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`secure access to a controlled item.” Paper 47, p. 60; see also Ex. 1001, e.g.,
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`Claims 1, 11, 15, 16, 17. The specification is replete with discussion of the
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`invention being designed to provide “secure access.” See e.g., Ex. 1001, Abstract,
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`1:13-15, 2:29-31, 2:33-41, 2:42-43, 2:46-61, 2:63-65, 5:54-55, 7:22-25, 11:60-66,
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`14:27-52.3 For the claimed system to achieve this object, it is the “biometric
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`signal” that must be an input capable of providing secure access; it must uniquely
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`identify the user. The first step in the claimed enrollment is the entry of the
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`biometric signal. Ex. 1001, Figs 6 and 8 and 12:54-13:444 If the biometric signal
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`did not uniquely identify the user then it could not grant secure access, as
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`Petitioner’s expert agreed. See Ex. 2040, 175:12-15 (“When a biometric system is
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`used for the purpose of providing access, then it would need to be capable of
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`uniquely identifying the user.”); Ex. 1029, ¶ 14 (“So long as the biometric sensor
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`can output a biometric signal capable of uniquely identifying a user, the claims and
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`reported invention would be viable.”). This point is further recognized in the
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`definition of a “fingerprint” cited the Board (“the pattern of curved lines on the end
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`of a finger that is different in every person…”, Paper 47, p. 61) (emphasis added),
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`and also in Petitioner’s cited prior art. See Ex. 1004, 3:14-24 (defining biometrics
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`3 The ‘705 Patent specification uses the phrase “secure access” 84 times.
`4 As in the FWD, citations to the ‘705 Patent are in Column;Line format.
`5 This is the exhibit page number of the Lipoff transcript, not the deposition page
`number.
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`2
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`as the “mathematical description of characteristic elements of the owner’s
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`body…which describe him uniquely”) (emphasis added); Ex. 1003, Abstract
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`(“Biometric devices…identify a user based on compared measurements of unique
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`personal characteristics.”) (emphasis added); see also Paper 41, pp. 8-9.
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`The Board correctly noted that the claims require that the “biometric signal”
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`must be able to be “matched to a database.” Paper 47, p. 61. “Matching” is
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`required for granting secure access. It is the user’s unique biometric signal that
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`allows the system to “match” (or not) and therefore determine secure access. A
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`POSITA would readily understand that it is the ability of the biometric signal to
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`distinguish the user that is needed to accomplish the claimed invention’s object of
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`granting secure access. Thus, inclusion of “provides secure access to a controlled
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`item” as part of the construction of “biometric signal” is reasonable.
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`B. Petitioner’s Remand Arguments Are Not Persuasive
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`Petitioner first argues that inclusion of “secure access” is wrong because
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`other components besides the biometric signal also play a role in providing secure
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`access. Paper 59, pp. 2-3. But this argument ignores that it is the biometric signal,
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`not the other components, that includes the unique information that allows the
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`grant of secure access. Ex. 2040, 17:12-15; Ex. 2029, ¶ 14. Enrollment and
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`verification each begin with the input of a biometric signal that a POSITA would
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`3
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`understand must be capable of granting secure access. See e.g., Ex. 1001, Figs 6,
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`7, and 8.
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`Nor does inclusion of “secure access” in the construction read the “secure
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`access signal” element out of the claims. Paper 59, p. 3. Again, it is the biometric
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`signal that contains the unique information that permits secure access. Ex. 2040,
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`17:12-15; Ex. 2029, ¶ 14; see also Ex. 1001, 8:15-19 (“The step 202 compares the
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`received biometric signal 102 with information in the biometric signature database
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`105 in order to ensure that the biometric signal received 102 is that of the rightful
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`user…”). Construing the biometric signal to be an attribute that provides secure
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`access does not render meaningless the other claimed components; each still plays
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`its role. Rather, including “secure access” in the “biometric signal” construction
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`appropriately recognizes that a biometric signal is not merely any input to the
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`system, but instead is an attribute of the user that can provide secure access.
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`Particularly in the context of the specification’s repeated references to the goal of
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`“secure access,” a POSITA would interpret “biometric signal” as an input that must
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`be capable of providing secure access.
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`Second, Petitioner’s contention that inclusion of “secure access” “narrows
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`the claims by ignoring the role the biometric signal plays in enrolling new users”
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`(Paper 59, p. 4) misses the mark. The Board’s construction in no way precludes
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`the biometric signal from also playing an administrative role; it simply requires
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`4
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`that the biometric signal that is input when doing so can also provide secure access.
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`The Board’s construction is consistent with the ‘705 Patent’s specification, which
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`expressly discloses that if the Administrator’s “dit dit dit dah” fingerprint entries
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`are not performed properly for enrolling a new user, then the system interprets
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`them “to be presses intended to provide access to the controlled item.” Ex. 1001,
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`11:8-12. This disclosure confirms that even during an administrative process the
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`biometric signal must be capable of providing secure access.
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`Next, Petitioner’s contention that the Board’s construction ignores disclosed
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`administrative embodiments (Paper 59, pp. 4-5) is unavailing for the reasons
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`explained above. As noted, the specification makes clear that even when
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`performing administrative functions the biometric signal must still be an input that
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`can provide secure access. Ex. 1001, 11:8-12.
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`Finally, Petitioner’s argument that the Board’s construction is inconsistent
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`with the Apple FWD (Paper 59, p. 5) is incorrect. First, the Board did not construe
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`“biometric signal” in the Apple IPR. Paper 47, p. 56, fn. 27. There is, therefore, no
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`construction with which to be inconsistent. Second, Petitioner takes the Apple
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`Board out of context in asserting that it found that a biometric signal is “the input
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`to a biometric sensor.” Paper 59, p. 5. The Apple Board made this statement as
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`part of a larger response to Patent Owner’s argument distinguishing “knowledge
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`based” security features from a biometric signal. Ultimately, the Apple Board
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`5
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`simply concluded that in the ‘705 Patent the series of entries characterized by a
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`number and duration are entries of a biometric signal (Apple FWD, p. 31), a point
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`that is not in dispute in the present IPR. But the Apple Board did not reach a
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`construction of “biometric signal” that conflicts with the inclusion of “provide
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`secure access” in the present matter. As the Board here aptly explained, “[t]he
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`‘602 Apple IPR…involved a different petitioner, different evidence, and different
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`arguments than what was asserted in the proceeding before us.” Paper 47, p. 56,
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`fn. 27.
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`II.
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`Petitioner’s Prior Art Does Not Disclose Each Of The “Biometric
`Signal” 1[D(1)-D(3)] Elements
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`A. Mathiassen-067 Does Not Disclose A Series Of Entries Of A
`Biometric Signal Characterized By A Number and Duration
`Petitioner first argues that the finding that Mathiassen-067 fails to meet the
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`“number and duration” requirement because its command function entries are not
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`biometric signals is inconsistent with the Apple FWD. Paper 59, p. 6. This is
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`incorrect. Petitioner relies in part on the same statements made by the Apple Board
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`described above (found at p. 31 of the Apple FWD). As already explained,
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`however, Petitioner takes those statements out of context, and they are not
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`inconsistent with the findings in the present case. See Section I.B, above.
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`Petitioner also relies upon the Apple Board’s statement that “[b]ecause
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`Mathiassen, like the ‘705 patent, uses a biometric sensor as the input device, it will
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`6
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`detect the biometric part of the input signal, while also sensing the number and
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`duration of inputs.” Paper 59, p. 6, citing Apple FWD, p. 52. But here the Apple
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`Board was discussing entirely different prior art. The Board was discussing the
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`disclosure of the Mathiassen-113 reference, not the Mathiassen-067 reference at
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`issue here. Petitioner has presented no evidence that the sensor of Mathiassen-113
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`is the same as the sensor of Mathiassen-067. The Board’s factual finding about
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`different prior art has no bearing upon the Board’s factual finding about the prior
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`art here. In the present case, the Board evaluated the teachings of Mathiassen-067
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`and the evidence of record and properly concluded that “there is a substantive
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`distinction between the finger press command entry function and the fingerprint
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`user authentication function in Mathiassen-067.” Paper 47, p. 84 (emphasis in
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`original). This finding is not inconsistent with the Apple FWD.
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`Petitioner next argues that the Mathiassen-067 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.” Paper 59, p. 7. But this contention rests on factual assertions
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`already raised and rejected. As the Board correctly found based on the weight of
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`the evidence, “when Mathiassen-067 switches to text input or cursor control mode,
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`it exits access control mode and is no longer functioning as a fingerprint sensor.”
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`Paper 47, p. 85 (emphasis added).
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`7
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`This conclusion is supported by the admission of Petitioner’s own expert
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`that Mathiassen-067 includes “no disclosure one way or the other as to whether
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`[the sensor] is also reading the fingerprint.” Paper 47, p. 85, citing Ex. 2034 at
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`65:2-24. Petitioner’s attempts to relitigate this finding should be rejected. The
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`contention that the Board misunderstood this testimony and that other parts of Mr.
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`Lipoff’s testimony “also supports finding that fingerprint sensor continues to read
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`fingerprint data when in control mode…” (Paper 59, p. 8) is contrary to the weight
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`of the evidence and does not negate the force of Mr. Lipoff’s admission. Paper 47,
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`p. 85; see also, Paper 31, pp. 25-38; Ex 2031, ¶¶ 62-83.
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`B. Bianco Does Not Disclose Limitations 1[D(1) or D(2)]
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`Petitioner contends that Bianco alone discloses the number/duration
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`limitation (i.e., 1[D(1)], relying upon its use of hand-written signatures. Paper 59,
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`p. 9. But hand-written signatures are behavioral biometric signals. Ex. 1003, 7:57-
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`65. For the reasons described in Patent Owner’s prior papers (see Paper 31, p. 8-
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`19; Paper 41, p. 7-9), as used in the ‘705 Patent the “biometric signal” should be
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`limited to a physical attribute of a user. Under a construction that includes only
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`physical attributes, Bianco does not disclose limitation 1[D(1)].
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`Under either the Board’s or Patent Owner’s construction, however, Bianco
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`fails to disclose the “mapping” limitation of 1[D(2)]. Indeed, the Petition never
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`8
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`relied on Bianco for this limitation. Paper 2, p. 47 (“Bianco discloses reading
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`multiple types of biometric signatures…where each has a duration. However,
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`Bianco is silent on how administrators control signals…Mapping the series of
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`biometric entries into an instruction is expressly taught by Mathiassen[-067].”)
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`(emphasis added). Petitioner now contends that Bianco renders the mapping step
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`obvious because “it’s system’s administration and enrollment actions can be
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`combined into one device.” Paper 59, p. 10, citing Paper 2, p. 47. But Bianco’s
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`disclosure of sending enrollment and control signals from the same device does not
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`also disclose or render obvious the step of “mapping [biometric signals] into an
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`instruction” and Petitioner has provided no evidence otherwise. Petitioner’s prior
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`art does not disclose the use of biometric signals to map into an instruction.
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`Further, there is nothing about the Board’s inclusion of “secure access” in the
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`biometric signal construction that somehow makes Bianco more pertinent to
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`limitation 1[D(2)] now than it was in the Petition.
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`III. Patent Owner’s Proposed Construction
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`If the Board concludes that inclusion of “secure access” was error (which it
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`should not), then it should construe “biometric signal” to be a “physical attribute of
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`the user (i.e., fingerprint, facial pattern, iris, retina, voice, etc.)” for the reasons
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`stated in Paper 31, pp. 8-19, and Paper 41, pp. 7-9. This construction is supported
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`by the intrinsic and extrinsic evidence and is consistent with the meaning of
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`9
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`“biometric signal” that was employed (even if not formally construed) by the
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`Apple Board. Under this construction, Petitioner has failed to prove that
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`Mathiassen meets element 1[D(1)] or that Bianco meets element 1[D(2)]. Under
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`this construction Petitioner has failed to prove unpatentability.
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`IV. Conclusion
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`The Board should again find that Petitioner has failed to meet its burden of
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`proving the challenged claims unpatentable.
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`Dated: May 16, 2024
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`Respectfully submitted,
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` /Michael J. Rye/
` Michael J. Rye (Reg. No. 34,422)
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`10
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 16, 2024, I caused a true and correct copy of the
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`foregoing to be served on the following counsel of record for Petitioner by
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`electronic mail to the following addresses:
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`Dion Bregman
`Andrew Devkar
`James J. Kritsas
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`HID-IPRs@morganlewis.com
`
`Lionel M. Lavenue
`Kara Specht
`Benjamin Saidman
`Safiya Aguilar
`Sydney Kestle
`Finnegan, Henderson, Farabow, Garrett, & Dunner LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190-602
`AA-CPC-IPRs@finnegan.com
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`Dated: May 16, 2024
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`By:
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`/Michael J. Rye/
`Michael J. Rye
`Reg. No. 34,422
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`11
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