`
`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
`
`_____________________________________________________________
`
`
`SECOND DECLARATION OF STUART LIPOFF
`
`U.S. PATENT NO. 9,665,705 (CLAIMS 1-17)
`
`
`
`
`
`
`
`
`
`ASSA ABLOY Ex. 1029
`ASSA ABLOY AB v. CPC Patent Technologies Pty Ltd.
`IPR2022-01006 - U.S. Patent No. 9,665,705
`
`
`
`Case No. IPR2022-01006
`Patent No. 9,665,705
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
`
`Contents
`ENGAGEMENT .......................................................................................... 1
`BACKGROUND QUALIFICATIONS, PATENT AND PRIOR
`ART SUMMARY, CLAIM CONSTRUCTION. ........................................ 1
`A.
`Terms to be Construed ......................................................................... 1
`1.
`“biometric signal” ...................................................................... 2
`a.
`PO Improperly Imports Limitations into the
`Claims. ............................................................................. 5
`MY UNDERSTANDINGS OF THE LEGAL STANDARDS OF
`ANTICIPATION AND OBVIOUSNESS .................................................... 6
`THE CLAIMS OF THE ʼ705/’208 PATENTS ARE INVALID ................. 6
`A.
`Bianco-Mathiassen Teach the Biometric Signal Limitation ................ 6
`1.
`Mathiassen’s teachings are the same as the Patent’s sole
`embodiment ................................................................................ 6
`Mathiassen explicitly teaches analyzing fingerprint data
`for inputting commands. ............................................................ 8
`Mathiassen explicitly teaches analyzing fingerprint data
`for inputting commands. .......................................................... 11
`Bianco-Mathiassen Teaches Mapping Said Series of the
`Biometric Signals Into an Instruction and Populating the
`Database According to the Instruction. .............................................. 12
`There Was A Strong Motivation to Combine Bianco and
`Mathiassen. ......................................................................................... 13
`CONCLUDING STATEMENTS ............................................................... 15
`
`B.
`
`C.
`
`2.
`
`3.
`
`i
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONERS
`
`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. 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”)
`
`i
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`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”)
`
`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
`
`PCT Patent Publication WO 2008/113110 A1 to Christopher
`John Burke
`
`Ex. 1020
`
`CPC Infringement Allegations re U.S. Patent No. 9,269,208
`
`
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`ii
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`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/
`
`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
`
`
`
`iii
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`
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`I, Stuart J. Lipoff, declare as follows:
`
`Case No. IPR2022-01006
`Patent No. 9,665,705
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`I.
`
`ENGAGEMENT
`1. My engagement is the same as that specified in my first declaration in
`
`paragraphs 1-5 of Ex.1005 (I refer to Ex.1005 herein as “first declaration” or “first
`
`expert declaration”). For this second declaration, I have been asked by Petitioners
`
`to offer supplemental opinions regarding the ʼ705/’208 Patents, including the
`
`unpatentability of claims 1-17 (which I may refer to subsequently as the
`
`“Challenged Claims”) in view of certain prior art and in light of the Patent
`
`Owner’s Response, Dr. Russ’ Declaration, and the Institution Decision. This
`
`declaration sets forth the opinions I have reached to date regarding these matters.
`
`II. BACKGROUND QUALIFICATIONS, PATENT AND PRIOR ART
`SUMMARY, CLAIM CONSTRUCTION.
`I incorporate by reference in full the content of my original
`2.
`
`declaration in this proceeding, Ex.1005, which I will not duplicate here.
`
`A. Terms to be Construed
`I provided my opinions regarding claim construction in my first
`3.
`
`declaration (Ex.1005, ¶¶45-57), and those opinions remain accurate and complete.
`
`4.
`
`In this section I have addressed some issues raised by the Board and
`
`by Patent Owner after my submission in Ex.1005.
`
`
`
`1
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`
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`“biometric signal”
`1.
`Every independent claim recites “a biometric signal” and an
`
`5.
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`associated “biometric sensor” that is configured to receive or capable of receiving
`
`the biometric signal. Ex.1001, cls. 1, 10, 11 (“a biometric sensor configured to
`
`receive a biometric signal”); id. cl. 14 (“causes the processors to: receive a series
`
`of entires of a biometric signal”); id. cls. 15-17 (“a biometric sensor capable of
`
`receiving a biometric signal”). Nothing in this part of the claim limits the
`
`biometric signal other than that it must be receivable by the biometric sensor, i.e.,
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`an input to the biometric sensor.
`
`6.
`
`The claims further requires that a controller is “configured to match
`
`the biometric signal against members of the database of biometric signatures…”
`
`See Ex.1001, cls. 1, 10, 14. Likewise, the claims include a recitation regarding a
`
`another use of the “biometric signal”: “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.” Id. In other words, the claims
`
`describe the biometric signal is also the output of the biometric sensor.
`
`7.
`
`The claims, in my opinion, describe the plain and ordinary meaning of
`
`“biometric signal” as both the input and the output of the biometric sensor.
`
`8.
`
`This plain and ordinary meaning is confirmed by the specification,
`
`which explains that “code entry module 103 includes a biometric sensor 121 and
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`
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`2
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`
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`the request 102 takes a form which corresponds to the nature of the sensor 121 in
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`the module 103.” EX-1001, 5:57-60.1 Additionally, “the request 402 can be a
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`biometric signal from the user 401 directed to a corresponding biometric sensor
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`403” and that “[o]ne example of a biometric signal is a fingerprint.” EX-1001,
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`1:27-30. Just after this sentence, the specification provides other examples of
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`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.
`
`9.
`
`I understand that Patent Owner and Dr. Russ argue that “the
`
`specification of the ’705/’208 Patent define[s] a biometric signal as a ‘physical
`
`attribute’…” POR at 11. I disagree.
`
`10.
`
`In the context of a fingerprint sensor, the specification states 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
`
`
`1 In this declaration, emphasis is added unless I indicate otherwise. The ‘705 and
`‘208 patents share a specification. All citations to the patent specification will be
`to the ‘705 patent (unless otherwise indicated) but shall also refer to the
`corresponding disclosure in the ‘208 patent.
`
`
`
`
`3
`
`
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`Series/Duration Limitation,2 the specification describes the input to and output of
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`the biometric sensor 121 as “finger presses.” EX-1001, 10:56-67 (“The first
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`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
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`input information against a stored set of legal control signals.”). In my opinion, the
`
`specification’s use of the term “finger presses” rather than “fingerprints” shows the
`
`scope to be broader than a “physical attribute.”
`
`11. Patent Owner also incorrectly limits the biometric signal to “a
`
`sufficiently precise reading of a fingerprint.” POR, 34. However, this is
`
`inconsistent with the specification, which describes imprecise or non-legible
`
`fingerprints as biometric signals: EX-1001, 13:65-14:1 (“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 find that a
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`biometric signal is limited to a “sufficiently precise” fingerprint, let alone an entire
`
`
`2 The “Series/Duration Limitation” shall refer to claim element D(1) in my first
`
`declaration: “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.”
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`
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`4
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`
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`fingerprint, in my opinion, is contrary to the plain and ordinary meaning of the
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`claims and the specification.
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`12. Thus, in my opinion, “biometric signal” should be given its plain and
`
`ordinary meaning—i.e., the input and output of a biometric sensor.
`
`a.
`PO Improperly Imports Limitations into the Claims.
`In its POR, PO argues a “biometric signal” is limited to “physical
`
`13.
`
`biometrics,” and, in my opinion, improperly excludes an entire category of
`
`biometrics, “behavioral biometrics.” POR at 9. PO and its expert concede that the
`
`term includes both physical and behavioral attributes. POR, 10, n.2 (“at the time
`
`of the invention a POSITA would understand that there were two categories of
`
`biometric signals: physical biometric attributes…and behavioral biometric
`
`attributes…”); EX-2031, ¶34.
`
`14.
`
`In my opinion, there is no basis to limit the term “biometric signal” to
`
`exclude behavioral biometrics. So long as the biometric sensor can output a
`
`biometric signal capable of uniquely identifying a user, the claims and purported
`
`invention would be viable. There is no evidence that the patentee sought to
`
`exclude an entire category of biometric signals from the scope of the claim. At
`
`most, the patentee listed examples of mostly physical biometric attributes, but even
`
`there, Patent Owner concedes that “voice” is understood to be both physical and
`
`behavioral. POR, 11; EX-2031, ¶33. In my opinion, there is no basis to limit the
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`
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`5
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`
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`term based on examples in the specification—my understanding is that doing so is
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`improper unless there is manifest exclusion or restriction by the patentee, and there
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`is no such indication of exclusion or restriction anywhere in the patent
`
`specification or file history.
`
`15. For the above reasons, in my opinion, 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 biometric sensor inputs and outputs.
`
`III. MY UNDERSTANDINGS OF THE LEGAL STANDARDS OF
`ANTICIPATION AND OBVIOUSNESS
`I provided my understandings of the legal standards of anticipation
`16.
`
`and obviousness in my first declaration (Ex.1005, ¶¶58-62), and those
`
`understandings remain accurate and complete.
`
`IV. THE CLAIMS OF THE ʼ705/’208 PATENTS ARE INVALID
`It is my opinion that the Challenged Claims of the ’705/’208 Patents
`17.
`
`are all unpatentable, as discussed in my first expert declaration in Ex.1005.
`
`18.
`
`In this section I have addressed some issues raised by the Board and
`
`by Patent Owner after my submission in Ex.1005.
`
`A. Bianco-Mathiassen Teach the Biometric Signal Limitation
`1. Mathiassen’s teachings are the same as the Patent’s sole
`embodiment
`
`
`
`6
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`
`
`In my opinion, under the plain and ordinary meaning of “biometric
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`19.
`
`signal,” Mathiassen teaches the Series/Duration Limitation. CPC’s expert, Dr.
`
`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.
`
`20.
`
`Indeed, with respect to the Series/Duration Limitation, Mathiassen
`
`includes the same teachings as the sole embodiment of the ‘705/’208 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”).
`
`
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`7
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`In the same way as the challenged patent, Mathiassen teaches utilizing
`
`21.
`
`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 sensors which have already been provided for other
`
`purposes.”) As shown in the disclosures above, Matthiassen teaches conveying
`
`instructions in a morse code-like series of finger presses on the fingerprint sensor.
`
`This is the same as in the sole embodiment in the Challenged Patent: “[t]he first
`
`administrator can provide control information to the code entry module by
`
`providing a succession of finger presses to the biometric sensor 121, providing
`
`that these successive presses are of the appropriate duration, the appropriate
`
`quantity, and are input within a predetermined time.” EX-1001, 10:56-60.
`
`22. Therefore, in my opinion, under the plain and ordinary meaning of
`
`“biometric signal,” the Bianco-Mathiassen combination discloses and renders this
`
`limitation obvious.
`
`2. Mathiassen explicitly teaches analyzing fingerprint data for
`inputting commands.
`23. Even if “biometric signal” were limited to physical biometric signal as
`
`Patent Owner argues (which is not correct), Mathiassen is explicit that its biometric
`
`
`
`8
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`
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`sensor “analyse[s] the fingerprint…to detect the finger movement across the
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`sensor” for purposes of receiving commands and instructions. EX-1004, 8:25-38.
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`24.
`
`Initially, PO and its expert incorrectly concluded that no fingerprint
`
`data is captured by Mathiassen’s fingerprint sensor when detecting finger
`
`movements. EX-2031 at ¶77 (“merely sensing finger movements for purposes of
`
`navigation did not require capturing the fingerprint, i.e., capturing the ridges of
`
`and valleys of the entire fingerprint.”). But this is directly contradicted by
`
`Mathiassen, which states: “[t]he fingerprint sensor…scans the fingerprint, and
`
`in order to be able to analyse the fingerprint, is able to detect the finger
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`movement across the sensor in one dimension; <Up> and <Down>.” Ex.1004,
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`8:25-38. Mathiassen teaches command inputs and finger movement detection that
`
`is achieved by combining a known fingerprint sensor with “analysing/interpreting
`
`means.” Ex.1004, 6:9-12 (“This objective is obtained by a sign generator based on
`
`combining a fingerprint sensor having navigation means, with
`
`analysing/interpreting means and translation means as described in claims 1 and
`
`9.”)
`
`25.
`
`In his deposition, PO’s expert, Dr. Russ, agreed that Mathiassen’s
`
`fingerprint sensor reads fingerprint data in all instances. EX-1028, 115:10-25 (“Q.
`
`… Is the fingerprint being scanned in connection with detecting finger movement
`
`across the sensor in Mathiassen? A. Part of the fingerprint is being imaged in
`
`
`
`9
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`
`
`connection with gestures…whatever part of the fingerprint passes over the sensor
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`in the course of doing the gesture.”) Dr. Russ further agreed that Mathiassen
`
`teaches a “number” of entries of a finger press, and a “duration” of entries of a
`
`finger press. EX-1028, 146:11-147:6.
`
`26.
`
`In view of this admission, I understand Dr. Russ to now be arguing
`
`that the challenged claims require an entire fingerprint for each entry on the
`
`fingerprint sensor for purposes of Series/Duration Limitation. The claims do not
`
`have this requirement, as I explained above.
`
`27. Moreover, Mathiassen’s teachings are not limited to a stripe
`
`fingerprint sensor, as Dr. Russ apparently contends. POR, 35. In my opinion,
`
`Mathiassen’s teachings are applicable to any type of suitable fingerprint sensor
`
`known at the time. EX-1004, 1:28-29 (“many types of fingerprint sensors have
`
`been made.”) The crux of Mathiassen’s teaching is to add command-type features
`
`to already existing fingerprint sensors, such as Bianco’s fingerprint sensor. EX-
`
`1004, 1:35-38 (“The utilisation of such identity verification devices as e.g.
`
`fingerprint sensors will therefore be significantly enhanced if it can be combined
`
`with other functionality…”); EX-1003, 8:25-40. CPC’s expert also acknowledged
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`that Mathiassen is not limited to a stripe sensor, but simply discloses a stripe sensor
`
`as a preferred embodiment. EX-1028, 80:4-20. PO’s argument that Mathiassen
`
`
`
`10
`
`
`
`teachings are limited to stripe sensors is wrong and inconsistent with Mathiassen’s
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`disclosures.
`
`3.
`
`Bianco teaches analyzing multiple signatures for inputting
`commands.
`28. As explained in the Claim Construction Section above, the term
`
`“biometric signal” is not limited to “physical” biometric inputs. Behavioral
`
`biometrics are also within the scope of the claims. Bianco teaches receiving
`
`multiple biometric entries, each having a duration.
`
`29. Bianco teaches taking “multiple samples of a signature” and analyzing
`
`“each sample.” EX-1003 8:43-45. In addition to taking “multiple samples” of this
`
`biometric signature, Bianco measures each signature’s “speed,” including “the time
`
`it took the user to sign a signature from start to finish,” i.e., its duration. EX-1003
`
`8:45-47, 8:52-54. Bianco’s “signature device” operates in the same way as
`
`“fingerprint devices” to authenticate a user: “As with fingerprint devices, common
`
`characteristics or measurements are identified for the multiple samples. These
`
`common characteristics or measurements are processed through a unique algorithm
`
`which generates a unique template to store the biometric data.” Ex.1003, 8:55-59.
`
`30. Therefore, although unnecessary for my obviousness analysis under
`
`the Bianco-Mathiassen combination, in my opinion Bianco itself also discloses the
`
`Series/Duration Limitation.
`
`
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`11
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`
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`B.
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`Bianco-Mathiassen Teaches Mapping Said Series of the Biometric
`Signals Into an Instruction and Populating the Database
`According to the Instruction.
`31. Patent Owner does not dispute that Mathiassen teaches mapping a
`
`series of entries into an instruction or “populat[ing] the database according to the
`
`instruction.” See POR, 38-41. Patent Owner’s only challenge is whether
`
`Mathiassen’s fingerprint sensor accepts a series of entire fingerprints to do so. See
`
`POR, 41 (“A POSITA would further readily understand that the Mathiassen device
`
`would not capture biometric fingerprint readings…”). In my opinion, Mathiassen
`
`explicitly teaches “in order to be able to analyse [sic] the finger print, is able to
`
`detect the finger movement across the sensor…” EX-1004, 8:30-32. CPC’s
`
`expert agrees that Mathiassen’s fingerprint sensor reads fingerprint data in all
`
`instances. EX-1028, 115:10-25 (“A. Part of the fingerprint is being imaged in
`
`connection with gestures…”). Dr. Russ also agrees that Mathiassen teaches
`
`mapping a “number” of entries of a finger press, and a “duration” of entries of the
`
`finger presses, 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.”)
`
`32. Therefore, in my opinion, mapping the series of biometric entries into
`
`an instruction and “populat[ing] the database according to the instruction” is
`
`
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`12
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`
`
`expressly taught by Mathiassen and described in my first declaration. Ex. 1005, ¶¶
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`171-182.
`
`C. There Was A Strong Motivation to Combine Bianco and
`Mathiassen.
`33. PO does not dispute that Bianco and Mathiassen are pertinent to the
`
`problem identified in the challenged patent. POR, 41-46. Indeed, the references are
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`analogous art. Patent Owner’s mention of the field of art is only in connection
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`with motivation-to-combine. See POR, 44 (“a POSITA would not have been
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`motivated to combine the number/duration measurements of behavioral biometric
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`readings (like keystrokes) with art that taught the use of physical biometric security
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`attributes (like fingerprints).”). In my opinion, Patent Owner has not rebutted that
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`Bianco and Mathiassen are in the same field for analogous-art purposes.
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`34. Patent Owner alleges hindsight by stating that “Petitioners have
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`pointed to no prior art wherein duration is measured in connection with a
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`fingerprint or any other physical biometric attribute…The first mention of this
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`novel approach in the entire record is in the application for the ’705 Patent itself.”
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`POR, 46. As explained in my first declaration, the references themselves provide
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`explicit motivations to combine (Mathiassen—to combine navigation/instruction
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`functions with a fingerprint sensor to reduce cost and conserve space; Bianco—to
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`13
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`reduce or combine components). Ex. 1005, ¶¶188-202. These express motivations
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`negate any potential hindsight reasoning.
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`35. Patent Owner also asserts that “neither Petitioners nor Mr. Lipoff
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`provide any explanation as to why a POSITA at the time of the invention would
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`have been motivated to modify the biometric security means of Bianco by adding
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`to it the number or duration of non-biometric finger movements of Mathiassen.”
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`POR, 42. While conceding these important teachings of Mathiassen, Patent Owner
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`argues that “Petitioners supply no basis as to why a POSITA would have been
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`motivated to combine biometric security art (e.g., fingerprint scanning for
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`authentication) with non-biometric functions (e.g., finger movements for
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`navigation)” Id. This argument misses the point. In my opinion, a POSITA would
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`have been motivated by Mathiassen’s express teachings to improve the Bianco
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`device to make it cheaper and more compact, allowing instructions to be provided
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`through the biometric sensor. Ex. 1005, ¶¶188-202. I also previously explained
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`that such traits were commercially desirable. Ex.1005, ¶¶188-190. This
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`commercial desire for reduced cost and a more compact device would have
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`motivated a POSITA to modify Bianco’s fingerprint reader device with
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`Mathiassen’s navigation/instruction input system.
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`36. Finally, Patent Owner’s arguments that “Mathiassen does not teach
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`populating the database by mapping a series of biometric entries at all” (POR, 42)
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`14
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`and that “a POSITA would not have been motivated to combine the
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`number/duration measurements of behavioral biometric readings (like keystrokes)
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`with art that taught the use of physical biometric security attributes (like
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`fingerprints)” (POR, 43) are based on an erroneous claim construction and ignore
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`Mathiassen’s express teachings. As addressed above, in my opinion, the term
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`“biometric signal” is not limited to an entire fingerprint or even fingerprint data.
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`Mathiassen, like the sole embodiment in the challenged patent, teaches analyzing
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`series/durations of fingerprint sensor inputs to issue commands. See Sections
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`IV.A-IV.B. Further, the combination of Bianco’s fingerprint sensor with
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`Mathiassen’s instruction input method (using same fingerprint sensor that is used
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`for authentication) is also obvious because it would have been a “predictable
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`variation” of Bianco’s system, using a technique that was known to a POSITA.
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`V. CONCLUDING STATEMENTS
`37. For the reasons set forth above and in my first declaration, in my
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`opinion, the challenged claims are rendered obvious. As such, in my opinion,
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`these claims should be found unpatentable and cancelled.
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`38.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`15
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`Case No. IPR2022-01006
`Patent No. 9,665,705
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code
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`and that such willful false statements may jeopardize the results of these
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`proceedings.
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`Executed on May 30, 2023 in Las Vegas, Nevada.
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`16
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