`
`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, and ASSA ABLOY Global Solutions, Inc.,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01006
`Patent No. 9,665,705
`______________________________________________________
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and AMBER L. HAGY,
`Administrative Patent Judges.
`
`
`
`
`PETITIONERS’ REPLY TO
`
`PATENT OWNER’S RESPONSE TO PETITION
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`2.
`
`3.
`
`B.
`
`C.
`
`INTRODUCTION ............................................................................................................. 4
`CLAIM CONSTRUCTION ............................................................................................... 7
`A.
`The plain and ordinary meaning of “Biometric Signal” is the input and
`output of a biometric sensor. .................................................................................. 7
`PO Improperly Imports Limitations into the Claims. .......................................... 10
`B.
`PO’s Construction Relies on Irrelevant Extrinsic Evidence ................................ 11
`C.
`“Configured to” and “Capable of”. ...................................................................... 11
`D.
`THE BIANCO-MATHIASSEN COMBINATIONS RENDER ALL CLAIMS
`OBVIOUS (GROUNDS 1-3). ......................................................................................... 12
`A.
`Bianco-Mathiassen Teach the Biometric Signal Limitation. ............................... 12
`1.
`Mathiassen’s teachings are the same as the Patent’s sole
`embodiment.............................................................................................. 12
`Mathiassen explicitly teaches analyzing fingerprint data for
`inputting commands. ................................................................................ 14
`Bianco teaches analyzing multiple signatures for inputting
`commands. ............................................................................................... 16
`Bianco-Mathiassen Teach Mapping Said Series of the Biometric Signals
`Into an Instruction and Populating the Database According to the
`Instruction ............................................................................................................ 17
`The Petitions Establish There Was A Strong Motivation to Combine
`Bianco and Mathiassen ........................................................................................ 18
`THE PETITION IS NOT TIME BARRED AS THE BOARD HAS ALREADY
`CORRECTLY DETERMINED. ...................................................................................... 20
`A.
`Apple is not a Real Party in Interest. ................................................................... 21
`1.
`This Petition was not filed at Apple’s behest........................................... 21
`2.
`The business relationship does not support an RPI theory. ..................... 22
`The Developer Agreement does not support Apple being an RPI. ...................... 23
`Sending products to Apple for routine compliance/certification does not
`make Apple an RPI. ............................................................................................. 25
`CPC’s “clear beneficiary” argument is meritless................................................. 26
`D.
`APPLE IS NOT IN PRIVITY WITH PETITIONERS. ................................................... 26
`Factor 1: No agreement binds the Petitioners to the Apple action. ..................... 27
`
`B.
`C.
`
`-i-
`
`
`
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Factor 2: No privity in business relationship between Apple and
`Petitioners. ............................................................................................... 27
`Factors 3-4: Petitioners have no control or representation in the Apple
`action. ....................................................................................................... 27
`Factor 5: Petitioners are not acting as Apple’s proxy. ......................................... 27
`Factor 6: No special statutory scheme foreclosing successive litigation. ............ 28
`
`-ii-
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`
`
`
`
`Page(s)
`
`Cases
`
`Aspex Eyewear, Inc. v Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012)................................................................................................12
`
`Authentication by Keystroke Timing: Some Preliminary Results,
`R-2526-NSF ...............................................................................................................................2
`
`CPC Patent Technologies Pty Ltd v. Apple Inc.,
`WDTX-6-21-cv-00165-ADA, Dkt. No. 76................................................................................1
`
`CPC Patent Technologies Pty Ltd v. HMD Global Oy,
`WDTX-6-21-cv-00166-ADA, Dkt. No. 45................................................................................1
`
`In re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999)............................................................................................18, 19
`
`INVT SPE LLC v. Int’l Trade Comm’n,
`46 F.4th 1361 (Fed. Cir. 2022) ................................................................................................12
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005)................................................................................................10
`
`ParkerVision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354 (Fed. Cir. 2018)................................................................................................12
`
`
`
`
`
`
`
`
`
`
`-i-
`
`
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`PETITIONERS’ EXHIBIT LIST (New Exhibits in Italics)
`
`Description
`
`
`
`Exhibit
`
`EX-1001 U.S. Patent No. 9,665,705 (“Burke II”)
`
`EX-1002 Patent Prosecution History of U.S. Patent No. 9,665,705
`
`EX-1003 U.S. Patent No. 6,256,737 to Bianco et al. (“Bianco”)
`
`EX-1004 World Intellectual Property Organization (WIPO) Int. Pub. No. WO
`2002028067A1 (02/28067) to Mathiassen (“Mathiassen”)
`
`EX-1005 Declaration of S. Lipoff Regarding Invalidity of U.S. Patent No.
`9,665,705
`
`EX-1006 Curriculum Vitae of Stuart Lipoff
`
`EX-1007 U.S. Patent No. 9,269,208 to Burke (“Burke I”)
`
`EX-1008
`
`Dawn Xiodong Song, David Wagner, and Xuqing Tian (University
`of California, Berkeley), “Timing Analysis of Keystrokes and
`Timing Attacks on SSH,” USENIX Security Symposium, vol. 2001
`(2001), available at
`https://people.eecs.berkeley.edu/~daw/papers/ssh-use01.pdf.
`
`EX-1009
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd v.
`Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 76 (“Apple CC
`Order”)
`
`EX-1010
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd v.
`HMD Global Oy, WDTX-6-21-cv-00166-ADA, Dkt. No. 45 (“HMD
`CC Order”)
`
`
`
`1
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`
`EX-1011
`
`R. Stockton Gaines, William Lisowski, S. James Press, and Normal
`Shapiro (Rand), Authentication by Keystroke Timing: Some
`Preliminary Results, R-2526-NSF, May 1980. (“Gaines”)
`
`EX-1012 Patent Prosecution History of U.S. Patent No. 9,269,208
`
`EX-1013 U.S. Patent No. 5,790,674 to Robert C. Houvener and Ian P.
`Hoenisch (“Houvener”)
`
`EX-1014 U.S. Patent No. 6,856,237 to Thomas R. Richmond, Suzanne
`Richmond, and Patrick S. Kochie (“Richmond”)
`
`EX-1015
`
`Fabian Monrose, Michael K. Reiter, and Susanne Wetzel. “Password
`Hardening Based on Keystroke Dynamics,” Proceedings of the 6th
`ACM Conference on Computer and Communications Security,
`November 1999. (“Monrose”)
`
`EX-1017 Excerpts from Longman, Dictionary of American English, 3rd
`Edition (2004)
`
`EX-1018 Excerpts from Bloomsbury English Dictionary, 2nd Edition (2004)
`
`EX-1019 WIPO Patent Pub. No. WO2008113110A1 to Christopher John
`Burke (“Burke III”).
`
`EX-1020 CPC Infringement Allegations re U.S. Patent No. 9,269,208
`
`EX-1021 CPC Infringement Allegations re U.S. Patent No. 9,665,705
`
`EX-1022 Petitioners’ Responses to Patent Owner’s Interrogatories
`
`EX-1023 Webpage printout - Developing for the app store at
`https://www.apple.com/app-store/developing-for-the-app-store/
`
`2
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`
`EX-1024 Webpage printout - Apple MFi Authorized Manufacturers at
`https://mfi.apple.com/account/authorized-manufacturers
`
`EX-1025 Screenshot from Apple 2022 WWDC Apple Partners at
`https://www.youtube.com/watch?v=q5D55G7Ejs8 (20:27)
`
`EX-1026 Apple 2022 WWDC Video Excerpt at
`https://www.youtube.com/watch?v=q5D55G7Ejs8
`
`EX-1027
`
`Webpage printout - HID Global - Android Apps on Google Play at
`https://play.google.com/store/search?q=HID%20global&c=apps&hl
`=en_US
`
`EX-1028 Deposition Transcript of Dr. Samuel Russ
`
`EX-1029 Second Declaration of S. Lipoff Regarding Invalidity of U.S. Patent
`Nos. 9,665,705 and 9,269,208
`
`
`
`
`
`3
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`
`I.
`
`INTRODUCTION
`The central dispute raised by Patent Owner (“PO”) is whether Mathiassen’s
`
`fingerprint sensor accepts a “biometric signal” when receiving a series of entries
`
`(e.g., fingerprint presses and movements) on its biometric sensor. POR, 1-2. As
`
`Petitioners set forth in the Petition, it does. Pet., 44-46. Both Mathiassen and the
`
`challenged patent disclose the same thing—using the output of a single biometric
`
`sensor (e.g., a fingerprint sensor) for two purposes: (1) for biometric authentication
`
`(comparing a user’s fingerprint to the database of fingerprints to determine if the
`
`user is authorized); and (2) for receiving a series of entries on the biometric sensor
`
`(e.g., a morse code-like series of finger presses, where each press has a duration)
`
`and mapping them into an instruction (hereinafter, the “Series/Duration
`
`Limitation”).1 The claims recite a “biometric signal” to refer to the output of the
`
`biometric sensor.
`
`PO contends that Mathiassen does not disclose the Series/Duration
`
`Limitation, which PO argues requires a number of entries of an entire biometric
`
`signature (e.g., “capturing the ridges and valleys of the entire fingerprint”), and a
`
`duration of entries of each entire biometric signature (e.g., entire fingerprint). POR,
`
`
`1 The “Series/Duration Limitation” refers to claim element D(1): “receive 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.”
`
`4
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`2, 35. PO is wrong in both its interpretation of the claim language and its
`
`interpretation of the Mathiassen reference’s teachings (which are the same as in the
`
`challenged patent).
`
`First, the plain and ordinary meaning of “biometric signal” is the input and
`
`output of the biometric sensor and this is exactly how the “biometric signal” is
`
`described in the patent specification. PO’s construction ignores this plain and
`
`ordinary meaning and improperly imports limitations from the specification.
`
`Mathiassen’s teachings are the same as the sole preferred embodiment of the
`
`challenged patent with respect to the Series/Duration Limitation. Compare EX-
`
`1004, 14:14-21, 18:29-38 with EX-1001, 10:56-11:8. In both Mathiassen and the
`
`’705 Patent, the biometric sensor (fingerprint sensor) is used to receive a series of
`
`finger presses, where each press has a duration, and this morse code-like series of
`
`presses is mapped into an instruction.
`
`Indeed, CPC’s expert agrees that Mathiassen teaches a “number” of entries
`
`of a finger press, and a “duration” of entries of each finger press, and then mapping
`
`this series into an instruction. EX-1028, 146:11-147:6 (“Q. And included within
`
`that universe [in Mathiassen] is the ability to recognize a series of presses of
`
`varying durations and map that into a command; correct?·A. Among other things,
`
`yes...”). Neither the challenged claims nor the specification ever describe a
`
`situation where each entry in the series is required to contain entire biometric
`
`5
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`IPR2022-01006
`U.S. Patent No. 9,665,705
`
`signature data (entire fingerprint data).
`
`Second, PO improperly excludes from the term “biometric signal” an entire
`
`class of biometric signals—behavioral biometric signals, such as voice analysis,
`
`described in the ’705 Patent. However, even if the term “biometric signal” is
`
`limited to a physical biometric, such as a fingerprint, Mathiassen discloses and
`
`renders obvious the Series/Duration Limitation. Mathiassen is explicit: “The
`
`fingerprint sensors…scans the fingerprint, and in order to be able to analyse
`
`[sic] the finger print, is able to detect the finger movement across the sensor in
`
`one dimension…” EX-1004, 8:30-32. Thus, Mathiassen teaches that its fingerprint
`
`sensor scans and analyzes the fingerprint when detecting presses and movement
`
`across the sensor. Indeed, CPC’s expert agrees that Mathiassen’s fingerprint
`
`sensor reads fingerprint data upon entries on the fingerprint sensor. EX-1028,
`
`115:10-25 (“Part of the fingerprint is being imaged in connection with gestures…if
`
`it’s a tap, then a very tiny part, just the part that sits over the sensor…whatever part
`
`of the fingerprint passes over the sensor in the course of doing the gesture.”)
`
`Therefore, even under PO’s erroneous interpretation of the Series/Duration
`
`Limitation, the dispute is reduced to whether the claims require an entire
`
`fingerprint to be scanned for purposes of the Series/Duration Limitation, which PO
`
`clearly added solely to avoid the prior art and not because of any claim
`
`construction teaching in the patent. The claims have no such requirement, which
`
`6
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`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`would be inconsistent with common sense and with PO’s expert’s position that
`
`analyzing full fingerprint data is “much more computationally intensive”. Ex-
`
`2031, ¶74. The series of entries on the biometric sensor need only be characterized
`
`by each entry having a duration, such that the series of morse code-like entries can
`
`be mapped into an instruction. Analyzing an entire fingerprint image only makes
`
`sense for user authentication. There is no need to analyze an entire fingerprint
`
`when sensing the morse code-like series of entries and durations on the sensor, nor
`
`is doing so ever mentioned in the specification. Mathiassen discloses this
`
`Series/Duration Limitation in the same way as the challenged patent.
`
`II. CLAIM CONSTRUCTION
`PO contends that “biometric signal” means a “physical attribute of the user
`
`(i.e., fingerprint, facial pattern, iris, retina, voice, etc.)” POR, 9. PO also imports a
`
`limitation not found in the patent or even its own construction—that a “biometric
`
`signal” must be an “entire fingerprint” for a fingerprint sensor. POR, 35 (“merely
`
`sensing finger movements for purposes of navigation did not require capturing the
`
`fingerprint, i.e., capturing the ridges and valleys of the entire fingerprint.”) PO
`
`is incorrect.
`
`A. The plain and ordinary meaning of “Biometric Signal” is the
`input and output of a biometric sensor.
`The claims of the ’705 Patent recite a “a biometric sensor configured to
`
`receive a biometric signal.” EX-1001. Cls. 1, 10, 11. Nothing in the claims limits
`
`7
`
`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`the biometric signal other than that it must be received by the biometric sensor
`
`(i.e., as an input). The claims further require that “a transmitter sub-system
`
`controller [is] configured to match the biometric signal against members of the
`
`database of biometric signatures…” Id. In other words, the claims recite that the
`
`biometric signal is also the output of the biometric sensor. Thus, when read in
`
`light of the specification, the “biometric signal” is simply the input and output of
`
`the biometric sensor.
`
`Patent Owner instead relies on a lexicography argument, claiming “the
`
`specification of the ’705 Patent define[s] a biometric signal as a ‘physical
`
`attribute’…” POR, 11. Not so. “To act as its own lexicographer, a patentee must
`
`‘clearly set forth a definition of the disputed claim term’ other than its plain and
`
`ordinary meaning.” Thorner, 669 F.3d at 1365 (quoting CCS Fitness, Inc. v.
`
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). PO argues that a list of
`
`exemplary biometric signals in the specification limits the claim term. POR, 10-11.
`
`These statements do not show that the patentee “clearly express[ed] an intent to
`
`redefine the term.” Thorner, 669 F.3d at 1366. Further, the specification gives
`
`examples of other biometric signals, including finger presses and imprecise or non-
`
`legible fingerprints, that are not physical attributes of the users. EX-1001, 10:56-
`
`67, 13:65-14:1.
`
`The plain meaning is confirmed by the specification: “code entry module
`
`8
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`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`103 includes a biometric sensor 121 and the request 102 takes a form which
`
`corresponds to the nature of the sensor 121 in the module 103.” EX-1001, 5:57-
`
`60.2 Additionally, “the request 402 can be a biometric signal from the user 401
`
`directed to a corresponding biometric sensor 403” and that “[o]ne example of a
`
`biometric signal is a fingerprint.” EX-1001, 1:27-30. Directly after this sentence,
`
`the specification provides other examples of biometric signals: “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, 1:30-33.
`
`In the context of a fingerprint sensor, the biometric sensor can receive and
`
`output signals other than fingerprints (i.e., other than physical attributes of a user).
`
`For instance, in the context of the Series/Duration Limitation, the specification
`
`describes the input to and output of the biometric sensor 121 as “finger presses.”
`
`EX-1001, 10:56-67 (“The first administrator can provide control information to the
`
`code entry module by providing a succession of finger presses to the biometric
`
`sensor 121… the controller 107 accepts the presses as potential control
`
`information and checks the input information against a stored set of legal control
`
`signals.”). PO also incorrectly limits the biometric signal to “a sufficiently precise
`
`reading of a fingerprint.” POR, 34. On the contrary, the specification describes
`
`imprecise or non-legible fingerprints as biometric signals: EX-1001, 13:65-14:1
`
`2 All emphasis added.
`
`
`
`9
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`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`(“step 906 determines whether the incoming biometric signal is legible. If this is
`
`not the case, then the process 900 proceeds according to a NO arrow to a step
`
`907.”) To hold that a biometric signal is limited to a “sufficiently precise”
`
`fingerprint, let alone an entire fingerprint, is contrary to the claims and the
`
`specification, which states that the incoming biometric signal may not be legible.
`
`Where a specification is ambiguous as to whether the inventor used claim terms
`
`inconsistent with their ordinary meaning, the ordinary meaning will apply. Merck
`
`& Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005); MPEP
`
`§2111.01 IV.A.
`
`PO Improperly Imports Limitations into the Claims.
`B.
`PO argues a “biometric signal” is limited to “physical biometrics,” and
`
`improperly excludes an entire category of biometrics—“behavioral biometrics.”
`
`POR, 9. PO concedes that the term includes both physical and behavioral
`
`attributes. POR, 10, n.2 (“a POSITA would understand that there were two
`
`categories of biometric signals: physical biometric attributes…and behavioral
`
`biometric attributes…”); EX-2031, ¶34.
`
`There is no basis, under either a lexicography or disavowal theory, to limit
`
`the term “biometric signal” to exclude behavioral biometrics. If the biometric
`
`sensor can output a signal capable of uniquely identifying a user, the intent of the
`
`claim limitation is satisfied. There is no evidence that the patentee sought to
`
`exclude an entire category of biometric signals. At most, the patentee listed
`10
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`

`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`examples of mostly physical biometric attributes, but even there PO concedes that
`
`“voice authentication is…understood to be both a physical and behavioral attribute.
`
`POR, 11; EX-2031, ¶33. There is no basis to limit the term based on examples in
`
`the specification—doing so would require manifest exclusion or restriction by the
`
`patentee, which does not appear in the record.
`
`Construing the claimed “biometric signal” to only cover one type of
`
`biometric signal—a “physical biometric”—contradicts the intrinsic record’s
`
`consistent use of “biometric signal” as a broad term covering all types of inputs
`
`and outputs of the biometric sensor.
`
`PO’s Construction Relies on Irrelevant Extrinsic Evidence
`C.
`Because the intrinsic record is clear, there is no need to consult extrinsic
`
`evidence. PO relies on an irrelevant magazine article Liu (EX-2035) and a self-
`
`stated “non-technical” paper Currie (EX-2036), both of which agree that voice
`
`(recited in claim 4) includes a behavioral biometric. POR, 11-15. Currie states
`
`that voice requires physical and behavioral biometric analysis: EX-2035, 5.
`
`Therefore, “biometric signal” should be given its plain and ordinary meaning
`
`as supported by the specification—the input and output of the biometric sensor.
`
`This construction is supported by Petitioner’s expert. Second Declaration of Stuart
`
`Lipoff (EX-1029), ¶¶3-15.
`
`“Configured to” and “Capable of”.
`D.
`The Board requested the Parties to address the distinction between
`11
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`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`“configured to” (Claims 1, 10, and 11) and “capable of” (Claims 15, 16, and 17).
`
`Paper 23, 41-42. Regarding “capable of,” prior art anticipates or renders obvious a
`
`limitation if the prior art “is reasonably capable of operating” to meet the
`
`limitation, “even if it does not meet the claim limitations in all modes of
`
`operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir.
`
`2018). In contrast, a “configuration-type” claim requires showing the prior art
`
`actually performs the claimed operation. INVT SPE LLC v. Int’l Trade Comm’n, 46
`
`F.4th 1361, 1372 (Fed. Cir. 2022). Thus, “configured to” has a narrower scope than
`
`“capable of.” Aspex Eyewear, Inc. v Marchon Eyewear, Inc., 672 F.3d 1335, 1349
`
`(Fed. Cir. 2012).
`
`The distinction between “configured to” and “capable of” does not impact
`
`the unpatentability of the Challenged Claims, because the Petition’s grounds all
`
`demonstrate that the prior art combinations are “configured to” and “capable of”
`
`performing the claimed operations. Pet. 12-58, 69-74.
`
`III. THE BIANCO-MATHIASSEN COMBINATIONS RENDER ALL
`CLAIMS OBVIOUS (GROUNDS 1-3).
`PO’s arguments fail to rebut the Petition’s detailed unpatentability showings.
`
`A. Bianco-Mathiassen Teach the Biometric Signal Limitation.
`1. Mathiassen’s teachings are the same as the Patent’s sole
`embodiment.
`Under the plain and ordinary meaning of “biometric signal,” there is no
`
`dispute that Mathiassen teaches the Series/Duration Limitation. CPC’s expert, Dr.
`12
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`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`Russ, agrees that Mathiassen teaches using a fingerprint sensor to receive a series
`
`of finger presses according to the number and duration of those presses, and
`
`mapping those presses into an instruction. EX-1028, 146:20-147:6.
`
`Indeed, Mathiassen includes the same teaching as the sole embodiment of
`
`the ‘705 Patent. EX-1004, 14:14-21, 18:29-38 with EX-1001, 10:56-11:7.
`
`Series/Duration in 705 Patent
`
`Series/Duration in Mathiassen
`
`“One of a legal control signal can be
`expressed as follows:
`
`Enroll an ordinary user”→dit, dit, dit,
`dah where “dit” is a finger press of
`one second's duration (provided by
`the user 101 in response to the
`feedback provided by the Amber LED
`as described below), and “dah” is a
`finger press of two second's
`duration.” EX-1001, 11:1-8.
`
`“the invention thus uses a fingerprint
`sensor as touch-sensitive switch 1 that
`has the ability to register finger
`connections on the sensor and the
`duration of such touches….” EX-
`1004, 21:15-17. Mathiassen discloses
`receiving on its fingerprint sensor
`“multiple…presses,” of different
`finger press durations (e.g., “<Long
`Tap> + N <Short Taps>”) to issue
`instructions. EX-1004 14:14-21, 18:29-
`38, Abstract (“system for generating
`complex text input by sequences of
`finger touches”).
`
`Just like the challenged patent, Mathiassen teaches utilizing the same sensor
`
`that is used for authentication for the secondary purpose of receiving commands or
`
`instructions. EX-1004 3:28-31 (“It is an object of this invention to provide a simple
`
`solution for feeding information into a small unit, e.g. a cellular phone, by using
`13
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`

`IPR2022-01006
`U.S. Patent No. 9,665,705
`sensors which have already been provided for other purposes.”) As shown above,
`
`Matthiassen teaches conveying instructions in a morse code-like series of finger
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`presses on the fingerprint sensor. This is the same as the sole embodiment in the
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`challenged patent: “[t]he first administrator can provide control information to
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`the code entry module by providing a succession of finger presses to the
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`biometric sensor 121, providing that these successive presses are of the
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`appropriate duration, the appropriate quantity, and are input within a
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`predetermined time.” EX-1001, 10:56-60. See also EX-1029, ¶¶17-22.
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`2. Mathiassen explicitly teaches analyzing fingerprint data for
`inputting commands.
`Even if “biometric signal” were limited to a physical biometric signal (it is
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`not), Mathiassen is explicit that its biometric sensor “[t]he fingerprint
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`sensors…scans the fingerprint, and…analyse[s] the fingerprint…to detect the
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`finger movement across the sensor” for purposes of receiving commands and
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`instructions. EX-1004, 8:25-38. Initially, PO and its expert incorrectly concluded
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`that no fingerprint data is captured by Mathiassen’s fingerprint sensor when
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`detecting finger movements. EX-2031, ¶77 (“merely sensing finger movements for
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`purposes of navigation did not require capturing the fingerprint, i.e., capturing
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`the ridges of and valleys of the entire fingerprint.”). But this is directly
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`contradicted by Mathiassen, which states: “[t]he fingerprint sensor…scans the
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`fingerprint, and in order to be able to analyse the fingerprint, is able to detect
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`IPR2022-01006
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`the finger movement across the sensor….” EX-1004, 8:25-38. Mathiassen
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`teaches command inputs achieved by combining a known fingerprint sensor with
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`“analysing/interpreting means.” EX-1004, 6:9-12 (“This objective is obtained by a
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`sign generator based on combining a fingerprint sensor having navigation means,
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`with analysing/interpreting means and translation means as described in claims 1
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`and 9.”)
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`PO’s expert agreed in deposition that Mathiassen’s fingerprint sensor reads
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`fingerprint data upon entries on the sensor. EX-1028, 115:10-25 (“Q.…Is the
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`fingerprint being scanned in connection with detecting finger movement across the
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`sensor in Mathiassen? A. Part of the fingerprint is being imaged in connection
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`with gestures…if it's a tap, then a very tiny part, just the part that sits over the
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`sensor.…whatever part of the fingerprint passes over the sensor in the course
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`of doing the gesture.”) Dr. Russ further agreed that Mathiassen teaches a
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`“number” of entries of a finger press, and a “duration” of entries of a finger press.
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`EX-1028, 146:11-147:6.
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`In view of this admission after Patent Owner’s Response, PO is expected to
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`pivot to argue that the challenged claims require an entire fingerprint for purposes
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`of Series/Duration Limitation. Neither the specification nor claims include this
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`requirement, as addressed in Section II. Moreover, Mathiassen’s teachings are not
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`limited to a stripe fingerprint sensor, as PO contends. POR, 35. Rather,
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`IPR2022-01006
`U.S. Patent No. 9,665,705
`Mathiassen’s teachings are applicable to any type of fingerprint sensor found on a
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`device. EX-1004, 1:28-29 (“many types of fingerprint sensors have been made.”)
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`The crux of Mathiassen is to add command-type features to existing fingerprint
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`sensors, such as Bianco’s fingerprint sensor. EX-1004, 1:35-38 (“The utilisation
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`of such identity verification devices as e.g. fingerprint sensors will therefore be
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`significantly enhanced if it can be combined with other functionality…”); EX-
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`1003, 8:25-40. CPC’s expert acknowledged that Mathiassen is not limited to a
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`stripe sensor, but simply discloses a stripe sensor as a preferred embodiment. EX-
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`1028, 80:4-20. PO’s argument that Mathiassen’s teachings are limited to stripe
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`sensors is simply incorrect. See also EX-1029, ¶¶23-25.
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`3.
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`Bianco teaches analyzing multiple signatures for inputting
`commands.
`As explained above, “biometric signal” is not limited to “physical” biometric
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`inputs. Behavioral biometrics are also within the scope of the claims. Bianco
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`teaches receiving multiple biometric entries, each having a duration.
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`Bianco teaches taking “multiple samples of a signature” and analyzing “each
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`sample.” EX-1003 8:43-45. In addition to taking “multiple samples” of this
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`biometric signature, Bianco measures each signature’s “speed,” including “the time
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`it took the user to sign a signature from start to finish,” i.e., its duration. EX-1003
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`8:45-47, 8:52-54. Bianco’s “signature device” operates in the same way as
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`“fingerprint devices” to authenticate a user: “As with fingerprint devices, common
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`IPR2022-01006
`U.S. Patent No. 9,665,705
`characteristics or measurements are identified for the multiple samples. These
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`common characteristics or measurements are processed through a unique algorithm
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`which generates a unique template to store the biometric data.” EX-1003, 8:55-59.
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`Therefore, although unnecessary for the Bianco-Mathiassen obviousness
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`ground, Bianco itself also discloses the Series/Duration Limitation. Pet., 42. See
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`also EX-1029, ¶¶28-30.
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`B.
`
`Bianco-Mathiassen Teach Mapping Said Series of the Biometric
`Signals Into an Instruction and Populating the Database
`According to the Instruction
`PO does not dispute that Mathiassen teaches mapping a series of entries into
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`an instruction or “populat[ing] the database according to the instruction.” See POR,
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`38-41. PO’s only challenge is whether Mathiassen’s fingerprint sensor accepts a
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`series of entire fingerprints to do so. See POR, 41 (“A POSITA would further
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`readily understand that the Mathiassen device would not capture biometric
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`fingerprint readings…”), 35 (“capturing the fingerprint, i.e., capturing the ridges
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`and valleys of the entire fingerprint”). Yet, Mathiassen explicitly teaches “in order
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`to be able to analyse [sic] the finger print, is able to detect the finger
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`movement across the sensor…” EX-1004, 8:30-32. CPC’s expert agrees that
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`Mathiassen’s fingerprint sensor reads fingerprint data upon entries on the sensor.
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`EX-1028, 115:10-25. Dr. Russ also agrees that Mathiassen teaches mapping a
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`“number” of entries of finger presses, each having a “duration,” into an instruction.
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`EX-1028, e.g., 146:11-147:6.
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`IPR2022-01006
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`Therefore, mapping the series of biometric entries into an instruction and
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`“populat[ing] the database according to the instruction” is expressly taught by
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`Mathiassen and described in the Petition. Pet., 46-52. See also EX-1029, ¶¶31-32.
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`C. The Petitions Establish There Was A Strong Motivation to
`Combine Bianco and Mathiassen
`PO appears to allege hindsight by stating that “Petitioners have pointed to no
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`prior art wherein duration is measured in connection with a fingerprint or any other
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`physical biometric attribute…The first mention of this novel approach in the entire
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`record is in the application for the ’705 Patent itself.” POR, 46. There is no
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`hindsight as Mathiassen’s teachings are the same as the sole preferred embodiment
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`of the challenged patent with respect to the Series/Duration Limitation. Compare
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`EX-1004, 14:14-21, 18:29-38 with EX-1001, 10:56-11:8. In both Mathiassen and
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`the ’705 Patent, the biometric sensor (fingerprint sensor) is used to receive a series
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`of finger presses, where each press has a duration, and this morse code-like series
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`of presses is mappe