UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY RESIDENTIAL
`GROUP, INC., AUGUST HOME, INC., HID GLOBAL CORPORATION,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01006
`Patent 9,665,705
`
`
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`
`
`
`PATENT OWNER’S SUR-REPLY
`
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`

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`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... i
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`PETITIONERS’ BELATED CONSTRUCTION OF “BIOMETRIC
`SIGNAL” SHOULD NOT BE CONSIDERED .............................................. 2
`
`III. EVEN IF CONSIDERED, PETITIONERS’ PROPOSED
`CONSTRUCTION IS ERRONEOUS ............................................................. 7
`
`A. A “Biometric Signal” Is Not Any “Input or Output” Of The
`Biometric Sensor; It Is A “Physical Attribute Of The User” ................ 7
`
`1.
`
`2.
`
`3.
`
`In the ’705 Patent “Biometric signal” means a “physical
`attribute of the user (i.e., fingerprint, facial pattern, iris,
`retina, voice, etc.)” ...................................................................... 7
`
`The ’705 Patent teaches that a biometric signal must
`uniquely identify the user ............................................................ 8
`
`Petitioners’ selected excerpts from the ’705 Patent do not
`support their late construction ..................................................... 9
`
`B.
`
`C.
`
`D.
`
`Petitioners Improperly Import Partial “Biometric Signature”
`Into The Claims ...................................................................................12
`
`Petitioners Mischaracterize The ’705 Patent’s “Finger Presses” ........13
`
`“Configured to” and “Capable of” ......................................................15
`
`IV. PETITIONERS HAVE FAILED TO PROVE OBVIOUSNESS
`OVER THE BIANCO-MATHIASSEN COMBINATION ..........................16
`
`A.
`
`B.
`
`C.
`
`Petitioners Continue to Mischaracterize Mathiassen ..........................16
`
`Petitioners’ “Partial Fingerprint” Argument Regarding
`Mathiassen Does Not Save Their Flawed Challenge ..........................20
`
`Bianco’s Handwritten Signature Does Not Satisfy The
`Series/Duration Limitation ..................................................................23
`
`D.
`
`Petitioners’ Have Not Established A Motivation To Combine ..........24
`
`V.
`
`THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(b) .............26
`
`VI. CONCLUSION ..............................................................................................26
`
`i
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Apple, Inc. v. Koss Corp.,
`IPR2021-00693, Paper 11 at n. 5 (PTAB Oct. 13, 2021)………………...5
`
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335, 1349 (Fed. Cir. 2012)..………………………………………..16
`
`Cisco Systems, Inc. et al. v. Oyster Optics, LLC,
`IPR2017-01725, Paper 33 at 25 (PTAB January 24, 2019)…………......5
`
`
`CPC Patent Technologies Pty Ltd v. Apple Inc.,
`WDTX-6-21-cv-00165-ADA…………………………………………....6
`
`
`INVT SPE LLC v. Int’l Trade Comm’n,
`46 F.4th 1361, 1372 (Fed. Cir. 2022)..…………………………………16
`
`
`Microsoft Corp. v. IPA Tech., Inc.,
`IPR2019-00812 Paper 44 at n. 30 (PTAB Oct. 15, 2020)…………….5, 6
`
`
`Nuevolution A/S v. Chemgene Holdings APS,
`IPR2017-01599, Paper No. 46 at n. 9 (PTAB Jan. 9, 2019)…………….5
`
`
`Parkervision, Inc. v. Qualcomm Inc.,
`903 F.3d 1354, 1361 (Fed. Cir. 2018)..…………………………………16
`
`
`Trs. of Columbia Univ. v. Symantec Corp.,
`811 F.3d 1359, 1363 (Fed. Cir. 2016)………………………………….7-8
`
`
`
`Statutes
`
`35 U.S.C. § 315(b)…………………………………………………………29, 30
`
`Regulations
`
`37 C.F.R. § 42.104(b)(3)……………………………………………………..1, 6
`
`
`
`ii
`
`

`

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

`

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

`

`EXHIBIT
`
`DESCRIPTION
`
`2033
`
`2034
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`
`
`Joint Claim Construction Statement in CPC Patent Technologies
`Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 57
`(“Apple Joint CC Statement”)
`Deposition of Stuart Lipoff (Feb. 14, 2023)
`S. Liu and M. Silverman, "A practical guide to biometric security
`technology," in IT Professional, vol. 3, no. 1, pp. 27-32, Jan.-Feb.
`2001. doi: 10.1109/6294.899930.
`D. Currie, “Shedding some light on Voice Authentication”, Global
`Information Assurance Certification Paper (2003)
`F.S. Rovati, et al., “Spatial-Temporal Motion Estimation for Image
`Reconstruction and Mouse Functionality with Optical or
`Capacitive Sensors”, IEEE Transactions on Consumer Electronics,
`Vol. 49, No. 3, August 2003, pp. 711-718
`Haider: S. Haider, A. Abbas and A. K. Zaidi, "A multi-technique
`approach for user identification through keystroke dynamics," Smc
`2000 conference proceedings. 2000 ieee international conference
`on systems, man and cybernetics. 'cybernetics evolving to systems,
`humans, organizations, and their complex interactions' (cat. no.0,
`Nashville, TN, USA, 2000, pp. 1336-1341 vol.2.
`Umphress: David Umphress, Glen Williams, Identity verification
`through keyboard characteristics, International Journal of Man-
`Machine Studies, Volume 23, Issue 3, 1985, Pages 263-273
`Deposition of Stuart Lipoff, vol. 2 (June 28, 2023)
`
`
`
`v
`
`

`

`I.
`
`INTRODUCTION
`
`Petitioners’ Reply offers an untimely and erroneous construction of
`
`“biometric signal” in a hindsight-based effort to salvage their invalidity
`
`challenge. But the PTAB rules of practice require that any proposed claim
`
`construction be presented in the Petition. 37 C.F.R. § 42.104(b)(3). The Board
`
`has consistently held that claim constructions presented for the first time in a Reply
`
`are improper and not acceptable. This is especially true here, where “biometric
`
`signal” was already the subject of claim construction by the district court and the
`
`PTAB. Petitioners’ effort to challenge this claim construction for the first time in
`
`the Reply is untimely.
`
`Even if considered (which it should not be), however, Petitioners’ proposed
`
`construction is erroneous. Petitioners contend that “biometric signal” should be
`
`construed as “the input and output of a biometric sensor.” Reply, 7 (emphasis
`
`added). This proposed construction fails to comport with (1) the clear disclosure
`
`of the ’705 Patent, which teaches that a “biometric signal” is a physical attribute
`
`and, (2) a POSITA’s understanding that “biometric” data is data that uniquely
`
`identifies an individual.
`
`Petitioners’ Mathiassen prior art does not teach or suggest a series of entries
`
`of a biometric signal, as that term is properly construed. Rather, Mathiassen
`
`teaches entry of a single fingerprint (i.e., a biometric signal) for authentication to
`
`1
`
`

`

`gain access. Mathiassen’s subsequent series of entries relied upon by Petitioners
`
`are not biometric entries but, rather, are predetermined finger touches and
`
`movements for the purposes of cursor control and device navigation. Such series
`
`of moves and touches are not the entry of fingerprint data used to uniquely identify
`
`the user, and therefore are not “biometric” entries.
`
`Moreover, Petitioners’ alleged motivation to combine Mathiassen and
`
`Bianco hinges on the false premise that “Mathiassen’s teaching are the same as the
`
`sole preferred embodiment of the challenged patent with respect to the
`
`Series/Duration Limitation.” Reply, 18. In actuality—unlike the ’705 Patent—
`
`Mathiassen has no teaching or suggestion of a security feature that measures the
`
`duration of a fingerprint (or any biometric entry). Indeed, the first mention of this
`
`novel idea is in the ’705 Patent itself. Only hindsight reconstruction, using the
`
`’705 Patent as a roadmap, would motivate a POSITA to implement the inventions
`
`claimed in the ’705 Patent.
`
`II.
`
`PETITIONERS’ BELATED CONSTRUCTION OF “BIOMETRIC
`SIGNAL” SHOULD NOT BE CONSIDERED
`
`Petitioners’ Reply asserts, for the first time, that “biometric signal” should
`
`be interpreted to mean “the input and output of the biometric sensor.” Reply, 5, 8.
`
`Petitioners’ position on the meaning of “biometric signal” has been a moving
`
`target.
`
`2
`
`

`

`Initially, Petitioners did not propose a construction for “biometric signal.”
`
`See generally, Petition, 9-12 (offering no proposed construction for “biometric
`
`signal’ under the “Claim Construction” section). Nevertheless, the Petition stated
`
`that “[t]he ‘705 Patent provides that the biometric signal is a measurement of the
`
`users biometric attribute.” Id., 41 (emphasis added). This was echoed by Mr.
`
`Lipoff, who stated that “[i]n my opinion, the ‘biometric signal’ is the measurement
`
`of a biometric attribute, such as a fingerprint or voiceprint.” EX-1005, ¶¶107, 161.
`
`Neither Mr. Lipoff nor Petitioners declared this to be the “plain and ordinary
`
`meaning” of “biometric signal.” Instead, Mr. Lipoff relied on the disclosure of the
`
`’705 Patent to support his interpretation of “biometric signal.” Id., ¶161.
`
`Next, at his deposition, Mr. Lipoff acknowledged that he did not propose a
`
`construction for “biometric signal.” When shown the construction of “biometric
`
`signal” that was adopted by the Board in Apple’s IPR related to the same patent1,
`
`and upon being asked whether he employed a different construction of when
`
`forming his opinions, Mr. Lipoff testified that “I didn’t have any construction in
`
`mind. I had an understanding of what ‘biometric signal’ was as its used in the
`
`patent, and that’s what I applied in forming my opinions.” EX-2034, 32:25-33:3.
`
`
`1 See IPR2022-00602, Paper No. 1 at 6; Paper No. 11 at 13.
`
`3
`
`

`

`Now, in their Reply, Petitioners propose for the first time that “biometric
`
`signal” means “the input and output of the biometric sensor.” Reply, 5, 8
`
`(emphasis added). Mr. Lipoff’s Second Declaration states “[t]he claims, in my
`
`opinion, describe the plain and ordinary meaning of ‘biometric signal’ as both the
`
`input and the output of the biometric sensor.” EX-1029, ¶7.2 Mr. Lipoff then
`
`“confirms” this alleged plain and ordinary meaning with reference to portions of
`
`the ’705 Patent’s specification. Id., ¶8. Notably, neither Petitioners nor Mr. Lipoff
`
`support this alleged plain and ordinary meaning with reference to any other
`
`authority, such as contemporaneous dictionaries, technical treatises, or the like,
`
`
`2 Even the suggestion that this new definition is the “plain and ordinary meaning”
`
`creates confusion. Petitioners’ Reply initially contends that “the plain and
`
`ordinary meaning of ‘biometric signal’ is the input and output of the biometric
`
`sensor.” Reply at 5 (emphasis added). However, Petitioner subsequently argues
`
`that “[t]hus, when read in light of the specification, the ‘biometric signal’ is simply
`
`the input and output of the biometric sensor.” Reply, 8 (emphasis added). It is
`
`therefore unclear whether Petitioner contends that its proposed construction is
`
`simply the alleged plain and ordinary meaning of “biometric signal,” or whether it
`
`is a definition that must be arrived at “when read in light of the specification.”
`
`4
`
`

`

`that would support their view of how a POSITA would have understood “biometric
`
`signal” at the time of the invention.
`
`The Board should not consider Petitioners’ untimely construction. It is well-
`
`established that a petitioner must present proposed claim constructions in the
`
`Petition, not belatedly in a Reply. See Microsoft Corp. v. IPA Tech., Inc., IPR2019-
`
`00812 Paper 44 at n. 30 (PTAB Oct. 15, 2020) (“We note that it was Petitioner’s
`
`affirmative duty to explain in the Petition how the challenged claims should be
`
`construed and how, as so construed, they are unpatentable.”). See also Apple, Inc.
`
`v. Koss Corp., IPR2021-00693, Paper 11 at n. 5 (PTAB Oct. 13, 2021) (“If
`
`Petitioner wanted to construe the signal strength limitations in this manner,
`
`Petitioner should have proposed and supported such a construction in the
`
`Petition.”) As the Board has explained, “[a] reply is not an opportunity to start
`
`anew, to fill in gaps or to remedy omissions in a petition.” Cisco Systems, Inc. et
`
`al. v. Oyster Optics, LLC, IPR2017-01725, Paper 33 at 25 (PTAB January 24,
`
`2019) (finding claim construction presented for the first time in Petitioner’s reply
`
`to be “improper and not acceptable.”)
`
`Petitioners’ effort to support this new construction with extrinsic evidence
`
`via the Second Declaration of Mr. Lipoff is also impermissible. See Nuevolution
`
`A/S v. Chemgene Holdings APS, IPR2017-01599, Paper No. 46 at n. 9 (PTAB Jan.
`
`9, 2019) (“[t]he Reply also invokes certain claim construction opinions on the ‘said
`
`5
`
`

`

`reaction wells’ phrase provided for the first time in Dr. Winssinger's second
`
`declaration. … This extrinsic evidence is both untimely and insufficient …”).
`
`The Board should likewise reject Mr. Lipoff’s testimony regarding the newly
`
`proposed claim construction.
`
`
`
`Petitioners’ untimely claim construction is especially egregious here because
`
`at the time the Petition was filed Petitioners surely knew that “biometric signal”
`
`had already been construed as a “physical attribute of the user (i.e., fingerprint,
`
`facial pattern, iris, voice, etc.)” in the Apple litigation involving the ’705 and ’208
`
`Patents.3 EX-2033. Indeed, Apple proposed this exact construction (which the
`
`Board subsequently adopted) in its own IPR Petitions over three months before the
`
`current Petition was filed. See IPR2022-00602, Paper No. 1 at 6; see also
`
`IPR2022-00601, Paper No. 1 at 9. Petitioners identified the Apple litigation and
`
`IPR2022-00601, -00602 in their Mandatory Notices and, therefore, were certainly
`
`aware of this claim construction issue. Petition, 2.
`
`If Petitioners disagreed with the construction proposed in the parallel IPRs,
`
`then they had an affirmative duty to fully present their position on claim
`
`construction in their Petition. See Microsoft Corp. v. IPA Tech., Inc., supra.
`
`Accordingly, Petitioners’ belated claim construction should be rejected.
`
`
`3 CPC Patent Technologies Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-ADA.
`
`6
`
`

`

`III. EVEN IF CONSIDERED, PETITIONERS’ PROPOSED
`CONSTRUCTION IS ERRONEOUS
`
`Even if Petitioners’ construction is considered (which it should not be), it is
`
`erroneous. On its face, Petitioners’ proposal would encompass the input or output
`
`of a biometric sensor even if that input or output does not uniquely identify a user.
`
`Such a construction would be antithetical to a POSITA’s understanding of the ’705
`
`Patent’s “biometric signal.”
`
`A. A “Biometric Signal” Is Not Any “Input or Output” Of The
`Biometric Sensor; It Is A “Physical Attribute Of The User”
`
`1.
`
`In the ’705 Patent “Biometric signal” means a “physical
`attribute of the user (i.e., fingerprint, facial pattern, iris,
`retina, voice, etc.)”
`
`Patent Owner agrees with the construction of “biometric signal” that has
`
`already been adopted in the co-pending Apple IPRs and in the parallel Apple
`
`litigation and which should be adopted in this proceeding as well. See PO Resp., 8-
`
`11. Clearly, adopting the same construction across the parallel matters will ensure
`
`consistent review of the patentability of the claims.
`
`Further, Patent Owner has demonstrated that this construction is supported
`
`by the intrinsic evidence. See PO Resp., 10-11. For example, the patent
`
`specification unambiguously informs a POSITA that a biometric signal is a
`
`“physical attribute[].” Id., citing EX-1001, 1:29-33. It is well-established that
`
`“[t]he specification is always highly relevant to the claim construction analysis and
`
`is, in fact, the single best guide to the meaning of a disputed term.” Trs. of
`
`7
`
`

`

`Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016)
`
`(emphasis in original) (internal quotations omitted).
`
`Accordingly, and for the reasons set forth in Patent Owner’s Response
`
`(Paper 31, 10-11), “biometric signal” should be construed as a “physical attribute
`
`of the user (i.e., fingerprint, facial pattern, iris, retina, voice, etc.).”
`
`2.
`
`The ’705 Patent teaches that a biometric signal must
`uniquely identify the user
`
`The meaning of “biometric signal” must be viewed through the lens of the
`
`’705 Patent’s specification. Mr. Lipoff agreed that the overall purpose of the ’705
`
`Patent is to allow an authorized user access to a secure system, particularly by
`
`authenticating the user and then unlocking a controlled item. EX-2040, 49:23–
`
`51:13. He also agreed that the invention of the ’705 Patent uses biometric
`
`information to determine if access should be granted. EX-2040, 52:1-10.
`
`It is undisputed that a biometric signal must be capable of uniquely
`
`identifying a user. Mr. Lipoff expressly acknowledges this, stating that “[s]o long
`
`as the biometric sensor can output a biometric signal capable of uniquely
`
`identifying a user, the claims and reported invention would be viable.” EX-1029,
`
`¶14 (emphasis added). Mr. Lipoff further testified at deposition that “when a
`
`biometric system is used for the purpose of providing access, then it would need to
`
`be capable of uniquely identifying the user.”). See EX-2040, 54:12-15. The
`
`requirement that biometric information must be capable of uniquely identifying a
`
`8
`
`

`

`user is also established by Mathiassen, which defines biometrics as “a
`
`mathematical description of characteristic elements of the owner’s body or
`
`behavior that cannot be separated from this person and which describes him
`
`uniquely.” EX-1004, 3:14-24. Mr. Lipoff agreed with this definition. EX-2040,
`
`55:8-25.
`
`Given that biometric data is data that uniquely identifies a user, any
`
`construction of “biometric signal” that would omit this fundamental requirement—
`
`as Petitioners’ proposed “input and output of the biometric sensor” construction
`
`apparently would4—is contrary to the meaning of “biometric” and cannot be
`
`correct. Petitioners’ proposed construction must therefore be rejected.
`
`3.
`
`Petitioners’ selected excerpts from the ’705 Patent do not
`support their late construction
`
`Petitioners’ newly proposed construction is not supported by the
`
`specification. In arguing that “biometric signal” does not mean a “physical
`
`attribute of the user,” Petitioners cite a passage in the ’705 Patent describing FIG.
`
`2, which depicts a “code entry module 103 [that] includes a biometric sensor 121
`
`and the request 102 takes a form which corresponds to the nature of the sensor 121
`
`
`4 Petitioners’ Reply argues that “[n]othing in the claims limits the biometric signal
`
`other than that it must be received by the biometric sensor (i.e., as an input)”).
`
`Reply at 7-8.
`
`9
`
`

`

`in the module 103.” Reply, 8-9 citing EX-1001, 5:57-60 (emphasis added by
`
`Petitioner). But this clause is simply teaching that if the sensor 121 is a fingerprint
`
`scanner, then the request 102 will be in the form of a fingerprint; similarly, if the
`
`sensor 121 is a retinal scanner, then the request 102 will be in the form of a retina
`
`scan. This language does not negate that the biometric signal is a “physical
`
`attribute of the user.”
`
`At bottom, though, the input to the given biometric sensor will be some
`
`variety of physical attribute that serves as a biometric signal to uniquely identify
`
`the user – e.g., a fingerprint, retina scan, or other physical biometric attribute. This
`
`is a straightforward teaching and in no way implies that a “biometric signal” as
`
`used in the ‘705 Patent is simply the input and output of the biometric sensor.
`
`Petitioner also relies on a statement that “the request 402 can be a biometric
`
`signal from the user 401 directed to a corresponding biometric sensor 403 and on
`
`disclosure about “other physical attributes that can be used to provide biometric
`
`signals” Reply, 9 (citing EX-1001 at 1:27-30) (emphasis added by Petitioner).
`
`Petitioner appears to derive from this that non-physical attributes of a user can be
`
`biometric signals. However, Petitioner misreads the specification, which
`
`consistently discusses the biometric signal solely in the context of being a
`
`“physical attribute” of the user. See EX-1001, 1:29-33.
`
`10
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`

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`Petitioners also cite to the disclosed system’s use of non-“legible
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`fingerprints” as purported evidence that the “biometric signal” need not be a
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`fingerprint (or other biometric data) that uniquely identifies the user. Reply, 9-10.
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`But Petitioners mischaracterize the patent’s teachings. As taught in the ’705
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`Patent, when an illegible fingerprint is received, the system emits a “Rejection”
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`tone and the process is redirected back to step 705 of Fig. 6, wherein the biometric
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`signal (e.g., fingerprint) is reentered. EX-1001, 13:65–14:3; FIGS. 6, 9. A
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`POSITA would understand that this passage simply describes a process for
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`rejecting an entry on the sensor that is not capable of being read (e.g., a smudged
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`or otherwise obscured fingerprint). A POSITA would not understand this passage
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`to redefine the meaning of “biometric” to include data that does not uniquely
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`identify an individual.
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`In sum, there is no compelling support in the intrinsic record for the
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`Petitioner’s untimely construction of “biometric signal.” Rather, the intrinsic
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`evidence fully supports the Patent Owner’s proposed construction.
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`11
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`B.
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`Petitioners Improperly Import Partial “Biometric Signature” Into
`The Claims
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`Petitioner accuses Patent Owner of importing a claim limitation by requiring
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`that a “biometric signal” must be an “entire fingerprint.” Reply, 7. But it is
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`Petitioner who contrives a limitation by suggesting that any portion of a finger
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`touch to a screen – apparently no matter how little of the finger is used – is a
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`“fingerprint” that would satisfy the “biometric signal” limitation.
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`First, as a matter of basic grammar, when one refers to a “thing,” she is
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`referring to the entirety of that thing; if she means to refer to only part of the thing,
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`she says so. The normal understanding of “fingerprint” is basically the whole
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`fingerprint, not merely a part of a fingerprint. When one says that “a key” is
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`required to open a lock, the listener does not conclude that only a part of the key
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`will be sufficient to open the lock.
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`Second, this is especially true in the context of the ‘705 Patent, which states
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`that “one example of a biometric signal is a fingerprint.” EX-1001, 1:29-30. It
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`does not say “a partial fingerprint” or “a portion of a fingerprint.” The plain
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`meaning of “fingerprint” to a POSITA - who is a person that has some years of
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`experience in secure access systems under each of the proposed POSITA
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`12
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`definitions5 – is essentially a whole fingerprint, and at least enough of the
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`fingerprint to uniquely identify the user.
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`
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`Dr. Russ agreed. As he testified,
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`A person of ordinary skill would understand that a fingerprint sensor
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`images a fingerprint, an entire fingerprint. There's no basis for saying
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`that it's going to acquire a portion of a fingerprint. And a person of
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`ordinary skill would therefore regard something that acquires a
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`portion of a fingerprint as not acquiring a fingerprint.
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`EX-1028, 193:9-17.
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`C.
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`Petitioners Mischaracterize The ’705 Patent’s “Finger Presses”
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`Petitioners point to an embodiment in the ’705 Patent regarding an
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`administrator’s entry of “control information … by providing a succession of
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`finger presses to the biometric sensor.” See EX-1001, 10:56–11:14. First,
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`Petitioners argue that entries of “finger presses” are something less than the entry
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`of “fingerprints” and that this therefore supports that a “biometric signal” is merely
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`“the input and output of a biometric sensor.” See Reply, 9. Second, Petitioners
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`argue that the “finger presses” of the ’705 Patent are the same as the finger presses
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`of Mathiassen. Reply, 12-14. Petitioners are incorrect. As disclosed in the ’705
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`5 See Paper 2, 9; Paper 23, 38-40; Paper 31, 8.
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`13
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`Patent (and contrary to Mathiassen), the user’s “finger presses” are in fact
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`“fingerprints” that are scanned and measured with each of the successive presses.
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`The relevant disclosure describes an embodiment wherein an “administrator
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`can provide control information to the code entry module by providing a
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`succession of finger presses to the biometric sensor.” EX-1001 at 10:56-67. These
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`successive presses on the biometric sensor can qualify as control information so
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`long as they are “of the appropriate duration, the appropriate quantity, and are
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`input within a predetermined time.” Id.
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`A specific example of these finger presses is provided at col. 11:3-7, which
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`describes a “dit dit dit dah” series of entries. Petitioners rely on this passage for
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`the proposition that mere presses of a finger (including an insufficient portion of
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`the finger to uniquely identify a user) qualify as “biometric signals.” Reply, 13-14.
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`Significantly, though, Petitioner ignores the very next passage, which
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`demonstrates that the “finger presses” are in fact effectively entire fingerprints.
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`The specification explains that “[i]n the event that a legitimate sequence of finger
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`presses are not delivered within the predetermined time, then the presses are
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`considered not to be control information and merely to be presses intended to
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`provide access to the controlled item 111.” EX-1001, 11:8-12 (emphasis added).
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`It cannot be disputed that a “finger press” on the fingerprint sensor that is
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`“intended to provide access to the controlled item” must, by definition, be an entry
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`14
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`of a fingerprint sufficient to uniquely identify that user. See id., 5:60–6:20
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`(explaining that when the code entry module is a fingerprint sensor access to a
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`controlled item is granted only after a finger press on the biometric sensor is
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`compared to the database of “biometric signatures for authorized users against
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`which the request 102 can be authenticated.”).
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`Thus, a POSITA would readily appreciate that the “finger presses” described
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`in the ’705 Patent refer to multiple fingerprint entries. See also EX-1001, 14:5-9
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`(discussing that if a finger press is correctly entered, then the “process 900 follows
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`a NO arrow to a step 910 which stores the biometric signal, which in the present
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`case is a fingerprint signature.” [Emphasis added.]
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`This is in stark contrast to Mathiassen. As discussed below in Section
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`IV.B.1, and by Mr. Lipoff’s admission (see EX-2034, 65:2-24), Mathiassen has no
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`teaching or suggestion that the fingerprint is scanned and measured with each of
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`the successive finger touches. As such, Mathiassen has no disclosure of “a series of
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`entries of the biometric signal” characterized by a number and duration of each
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`entry as required by the subject patent claims.
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`D.
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`“Configured to” and “Capable of”
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`The Board requested the parties address the difference between “configured
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`to” which appears in Claims 1, 10, and 11, and “capable of” which appears in
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`Claims 15, 16, and 17. Paper 23, 41-42. In the context of invalidity, the Federal
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`15
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`Circuit has held that “configured to” language requires proof that the prior art
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`actually performs the claimed operation. INVT SPE LLC v. Int’l Trade Comm’n, 46
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`F.4th 1361, 1372 (Fed. Cir. 2022). In contrast, “capable of” language requires
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`proof that the prior art “discloses an apparatus that is reasonably capable of
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`operating so as to meet the claim limitations, even if it does not meet the claim
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`limitations in all modes of operation.” Parkervision, Inc. v. Qualcomm Inc., 903
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`F.3d 1354, 1361 (Fed. Cir. 2018). See also Aspex Eyewear, Inc. v. Marchon
`
`Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (recognizing the distinction
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`between the narrower “configured to” and the broader “capable of”). As discussed
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`in Patent Owner’s Response and further herein, the proposed combination of
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`Bianco and Mathiassen does not invalidate any of the Challenged Claims because
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`Petitioners have failed to prove that the resulting combination performs the
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`claimed operation or is reasonably capable of operating so as to meet the claim
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`limitations.
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`IV. PETITIONERS HAVE FAILED TO PROVE OBVIOUSNESS OVER
`THE BIANCO-MATHIASSEN COMBINATION
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`A. Petitioners Continue to Mischaracterize Mathiassen
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`Petitioners’ challenge with respect to limitations [D(1)-D(3)] hinges on the
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`false assertion that “Mathiassen expressly teaches using the number/duration of the
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`biometric entries to issue an instruction.” Petition, 43; EX-1005, ¶163 (emphasis
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`added). A simple reading of Mathiasse