Trials@uspto.gov
`571-272-7822
`
`Paper 47
`Date: November 30, 2023
`
`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.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 47
`Date: November 30, 2023
`
`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.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`GROSSMAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`I.
`
`INTRODUCTION
`Background and Summary
`A.
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`Group, Inc., August Home, Inc., HID Global Corporation, and ASSA
`ABLOY Global Solutions, Inc. (collectively “Petitioner”1) filed a Petition
`requesting inter partes review of claims 1–17 (the “challenged claims”) of
`U.S. Patent No. 9,665,705 B2 (Ex. 1001, “the ’705 patent”). Paper 2
`(“Pet.”), 1, 4. CPC Patent Technologies Pty Ltd. (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 9 (Prelim. Resp.”). With our
`authorization to address Patent Owner’s arguments that the Petition is
`time-barred under 35 U.S.C. § 315(b) (see Paper 16), Petitioner filed a
`Preliminary Reply (Paper 18 (“Prelim. Reply”)); and Patent Owner filed a
`Preliminary Sur-Reply (Paper 20 (“Prelim. Sur-Reply”)).
`We entered a Decision granting institution of an inter partes review of
`claims 1–17 based on all grounds asserted in the Petition. Paper 23 (the
`“initial Decision to Institute”). Our initial Decision to Institute addressed the
`issue of whether the Petition was time-barred, and determined on the record
`at that time that there was no time bar. Paper 23 at 11–35. We also
`addressed the issue of patentability asserted in the Petition.
`
`
`1 See Cradlepoint, Inc. et al v. 3G Licensing S.A., IPR2021-00639, Paper 12,
`2 (PTAB May 13, 2021) (“[F]or each ‘petition’ there is but a single party
`filing the petition, no matter how many companies are listed as petitioner or
`petitioners and how many companies are identified as real parties-in-
`interest. . . . Even though the separate sub-entities regard and identify
`themselves as ‘Petitioners,’ before the Board they constitute and stand in the
`shoes of a single ‘Petitioner’ . . . they must speak with a single voice, in both
`written and oral representation.”).
`
`2
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`The parties filed a Joint Request for Rehearing of the initial Decision
`to Institute asserting two errors in the Decision to Institute. Paper 25. The
`two errors noted by the parties in the Joint Request for Rehearing involved
`confusion between two different “Mathiassen” references, each labelled as
`“Ex. 1004,” in two different, but related IPR proceedings. See id. at 1–2.
`We denied the Joint Request for Rehearing because correction of the
`identified errors did not change our decision to institute this IPR proceeding.
`Paper 26 (“Because the corrections to our Decision to Institute involve
`inadvertent and harmless error, which does not change the outcome of our
`Decision, we deny the Request for Rehearing. We simultaneously issued a
`Corrected Decision to Institute, correcting the errors noted by the parties.”).
`The Corrected Decision is Paper 27 (“Corrected Decision to Institute” or
`“Corr. Dec. Inst.”). The Corrected Decision to Institute contained the same
`Section 315(b) analysis as was in the Initial Decision to Institute. Paper
`27 at 11–35.
`Patent Owner submitted a Response to the Corrected Decision to
`Institute. Paper 31 (“Patent Owner Response” or “PO Resp.”).
`Petitioner submitted a Reply. Paper 35 (“Reply”).
`Patent Owner submitted a Sur-reply. Paper 41 (“Sur-reply”).
`Petitioner submitted twenty-nine exhibits. See Exs. 1001–1015,
`1017–10302 (there is no exhibit numbered 1016); see also Paper 44
`
`
`2 Exhibit 1030 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See PTAB Consolidated Trial Practice Guide, 84
`(Nov. 2019 (“CTPG”) (“Demonstrative exhibits used at the final hearing are
`aids to oral argument and not evidence.”).
`
`3
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`(Petitioner’s Updated Exhibit List). Petitioner relies on the Declaration
`testimony of Andrew Sears, Ph.D. See Exs. 1005, 1029.
`Patent Owner submitted thirty-seven exhibits. See Exs. 2001–2018,
`2023–20413 (there are no exhibits numbered 2019–2022; Exhibit 2005
`includes Parts 1, 2, and 3); see also Paper 44 (Patent Owner’s Updated
`Exhibit List). Patent Owner relies on the Declaration testimony of Samuel
`Russ, Ph.D. See Exs. 2031, 2032.
`A hearing was held September 28, 2023. See Paper 46 (“Transcript”
`or “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Petitioner has the burden of proving unpatentability of a claim by a
`preponderance of the evidence. 35 U.S.C. § 316(e).
`Based on the findings and conclusions below, we determine that
`Petitioner has not established by a preponderance of the evidence that claims
`1–17 are unpatentable. We also determine that the Petition is not barred by
`35 U.S.C. § 315(b).
`
`Real Parties-in-Interest
`B.
`Petitioner identifies “ASSA ABLOY AB, ASSA ABLOY Inc. and its
`wholly owned subsidiaries ASSA ABLOY Residential Group, Inc., August
`Home, Inc., HID Global Corporation, and ASSA ABLOY Global Solutions,
`Inc.” as the real parties-in-interest. Pet. 1. Petitioner also states “ASSA
`ABLOY AB is the ultimate parent of all parties-in-interest.” Id.
`
`
`3 Exhibit 2041 is a demonstrative exhibit used at the final hearing. It is not
`an evidentiary exhibit. See id.
`
`4
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`Patent Owner identifies itself as the sole real party-in-interest.
`Paper 5, 2.
`We note here that Patent Owner asserts that the Petition is time-barred
`under 35 U.S.C. § 315(b) because Apple, Inc. (“Apple”) is a real party-in-
`interest (“RPI”) and/or privy of one or more of the individual companies that
`collectively comprise the Petitioner, and because Patent Owner served a
`complaint on Apple alleging infringement of the ’705 Patent more than 1
`year before this Petition was filed. See, e.g., PO Resp. 4, 47–64 (asserting
`that the Petition is time-barred under 35 U.S.C. § 315(b)). This argument
`would impact the underlying proceeding if we were to determine that Apple
`is a real party-in-interest or privy with Petitioner. See Unified Patents, LLC
`v. MemoryWeb, LLC, IPR2021-01413, Paper 76, 5 (PTAB May 22, 2023)
`(Decision granting Director review and (1) vacating the Board’s real party-
`in-interest determination in the Final Written Decision, and (2) vacating the
`Board’s Order Identifying the asserted real party-in-interest). As stated in
`Unified v. MemoryWeb,
`[t]he Board can and should make a determination of the real
`parties in-interest or privity in any proceeding in which that
`determination may impact the underlying proceeding, for
`example, but not limited to, a time bar under 35 U.S.C. § 315(b)
`or an estoppel under 35 U.S.C. § 315(e) that might apply.
`Id. That is the situation here. Patent Owner asserts there is a time bar.
`See, e.g., PO Resp. 47–64. Thus, following the guidance in Unified v.
`MemoryWeb, we consider in Section II whether Apple is a real party-in-
`interest, or privy, in this proceeding.
`
`5
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`Related Matters
`C.
`Petitioner identifies the following matters as being related to this
`proceeding:
`1)
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd.,
`et al., No. 3-22-cv-00694 (D. Conn.);
`CPC Patent Technologies Pty Ltd v. HMD Global Oy, 4
`2)
`WDTX-6-21-cv-00166-ADA (W.D. Tex.);
`CPC Patent Technologies Pty Ltd v. Apple Inc.,
`3)
`No. 5:22-cv-02553-NC (N.D. Cal); and
`IPR2022-00602 and IPR2022-00601, identified as pending IPR
`4)
`challenges filed by Apple against, respectively, the ’705 patent and
`related U.S. Patent No. 9,269,208 (the “’208 patent). 5
`Pet. 1–2.
`Petitioner also informs us that it has filed “two petitions (IPR2022-
`01045 and -01089) challenging the claims of” the related ’208 patent.
`Pet. 1.
`Patent Owner identifies the above matters as related to the present
`IPR proceeding. Paper 5, 2. Patent Owner further identifies the following
`IPR proceedings: IPR2022-00600; IPR2022-01093; and IPR2022-01094.
`Id. at 2–3.
`
`
`4 Petitioner states HID Global, one of the named Petitioners in this IPR
`proceeding, and HMD Global, the named defendant in the cited litigation,
`“have no relation to one another.” Pet. 2, n 2.
`5 The ’705 patent, challenged in the Petition now before us, is a
`“[c]ontinuation of application No. 13/572,166, filed on Aug. 10, 2012, now
`Pat. No. 9,269,208.” Ex. 1001 code (63).
`
`6
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`
`The ’705 Patent
`D.
`We make the following findings concerning the disclosure of the ’705
`patent.
`The ’705 patent discloses a system “for providing secure access to a
`controlled item.” Ex. 1001, Abstr. The “controlled item” can be, for
`example, the locking mechanism of a door or an electronic lock on a
`personal computer. Id. at 1:43–46.6 The system uses a database of
`“biometric signatures” (id. at2:32), such as a fingerprint (id. at 7:36) for
`determining authorized access.
`Figure 2 from the ’705 patent is reproduced below.
`
`Figure 2 is a functional block diagram of an arrangement for
`providing secure access according to the system disclosed in the ’705 patent.
`Ex. 1001, 5:18–19.
`
`
`6 Citations are to column:line[s] of the ’705 patent.
`
`
`
`7
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`As described in the written description of the ’705 patent, and as
`illustrated generally in Figure 2, user 101 makes a request to code entry
`module 103. Id. at 5:56–57. Code entry module 103 includes biometric
`sensor 121. Id. at 5:57–58. If biometric sensor 121 is a fingerprint sensor,
`for example, then the request “typically takes the form of a thumb press” on
`a sensor panel (not shown) on code entry module 103. Id. at 5:60–63.7
`“Other physical attributes that can be used to provide biometric signals
`include voice, retinal or iris pattern, face pattern, [and] palm configuration.”
`Id. at 1:30–32; see also id. at 16:45–49 (claim 4 stating “the biometric sensor
`is responsive to one of voice, retinal pattern, iris pattern, face pattern, and
`palm configuration”).
`Code entry module 103 then “interrogates” an authorized user identity
`database 105, which contains “biometric signatures” for authorized users, to
`determine if user 101 is an authorized user. Ex. 1001, 5:64–6:2. If user 101
`is an authorized user, code entry module 103 sends a signal to
`“controller/transmitter” 107. Id. at 6:2–4.
`Database 105 of authorized users is prepared by an “administrator.”
`Id. at 10:38–42 (“The first user of the code entry module 103 . . . is
`automatically categorised8 as an administrator.”). This “first administrator”
`
`
`7 See Ex. 1001, 10:35–38 (“Although the present description refers to
`‘Users’, in fact it is ‘fingers’ which are the operative entities in system
`operation when the biometric sensor 121 (see FIG. 2) is a fingerprint
`sensor.”) (emphasis added). Thus, it is clear that biometric sensor 121 is not
`limited to a fingerprint sensor.
`8 The Specification uses the British spelling, which we also use when
`quoting the Specification.
`
`8
`
`
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`IPR2022-01006
`Patent 9,665,705 B2
`can direct the system 100 to either accept further administrators, or
`alternatively, to accept further “ordinary users.” Id. at 10:43–45.9
`The process for enrolling authorized users is shown generally in
`Figure 8 and described in the related written description. See id. at 12:54–
`13:44 (describing enrollment process 800). In order to add authorized
`biometric signatures of additional users to database 105, the administrator
`must set the system using “control information” or a “legal control signal.”
`Id. at 10:56–67. When biometric sensor 121 is a fingerprint sensor, the legal
`control signal for adding new users may be activated by the administrator
`using a succession of finger presses to biometric sensor 121. Id. at 10:56–
`58. If these successive presses are of the appropriate duration, the
`appropriate quantity, and are input within a predetermined time, controller
`107 accepts the presses “as potential control information” and checks the
`input information against a stored set of “legal control signals.”
`Id. at 10:59–67. “In one arrangement, the control information is encoded by
`either or both (a) the number of finger presses and (b) the relative duration
`of the finger presses.” Id. at 10:60–63 (emphasis added).
`
`
`9 The use of the phrase “ordinary users” at the cited portion of the written
`description (column 10, line 45) is somewhat misleading, and should, more
`accurately, refer to “authorized users.” The written description states that
`“[t]he disclosed remote entry system can accommodate at least three classes
`of user, namely administrators, (ordinary) users, and duress users.”
`Ex. 1001, 10:34–36; see also, id. at 13:16–19 (stating “It is noted that all
`signatures stored in the database are tagged as belonging to one or more of
`the classes of administrator, ordinary user, and duress users.”). A “duress”
`category signature indicates the user “is in a coercive situation.” Id. at
`11:45–53.
`
`9
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`An example of this type of “control information” or “legal control
`signal” is “dit, dit, dit, dah,” where “dit” is a finger press of one second’s
`duration . . . and “dah” is a finger press of two second’s duration.”
`Id. at 11:1–7. 10
`After all authorized users have been added to database 105, in
`operation, the disclosed system and method compare biometric input signal
`102 to database 105 of authorized biometric signatures to determine if user
`101 is an authorized user. Id. at 5:65–6:2 (“Thus for example if the request
`102 is the thumb press on the biometric sensor panel 121 [producing a
`thumbprint] then the user database 105 contains biometric signatures
`[i.e., thumbprints] for authorised users against which the request 102 can be
`authenticated.”).
`If user 101 is an authorized user based on the inputs to code entry
`module 103, controller/transmitter 107 then sends “an access signal,” based
`on a “rolling code,” to controller 109. Ex. 1001, 6:2–9. According to the
`written description, “[t]he rolling code protocol offers non-replay encrypted
`communication.” Id. at 6:9–10. Other secure codes, such as “the
`Bluetooth™ protocol, or the Wi Fi™ protocols” also can be used. Id. at
`6:32–38.
`If controller 109 determines that the rolling code received is
`“legitimate,” then controller 109 sends a command to “controlled item 111,”
`which, for example “can be a door locking mechanism on a secure door, or
`
`
`10 We have not been directed to any persuasive evidence of how the
`enrollment process is activated by an administrator when the biometric
`sensor is something other than a fingerprint sensor.
`
`10
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`an electronic key +circuit in a personal computer” that is to be accessed by
`user 101. Id. at 6:11–20.
`Code entry module 103 also incorporates at least one mechanism for
`providing feedback to user 101. Id. at 6:24–25. This mechanism can, for
`example, take the form of “one or more Light Emitting Diodes (LEDs) 122,”
`and/or audio transducer 124, which provide visual or audio feedback to the
`user. Id. at 6:25–31.
`
`Illustrative Claim
`E.
`Among the challenged claims, claims 1, 10, 11, 14, 15, 16, and 17 are
`independent claims.
`Independent claims 1 and 15 are directed to a “system for providing
`secure access to a controlled item.” Ex. 1001, 15:62–63, 18:39–40. These
`claims are identical except for claim 1 using the phrase “configured to,”
`whereas claim 15 uses the phrase “capable of.” For example, claim 1
`includes “a biometric sensor configured to receive a biometric signal” (id. at
`15:66–67 (emphasis added)), whereas claim 15 includes “a biometric sensor
`capable of receiving a biometric signal.” (id. at 18:43–44 (emphasis added)).
`This same distinction also applies to the claimed elements of “a transmitter
`sub-system controller,” “a transmitter,” and “a receiver sub-system
`controller.” Compare id. at 16:1–23 (claim 1), with id. at 18:45–67 (claim
`15).
`
`Independent claims 10 and 16 are directed to a “transmitter sub-
`system for operating in a system for providing secure access to a controlled
`item.” Id. at 17:19–20; 19:1–2. The only distinction between claims 10 and
`16 is the same “capable of”/“configured to” distinction discussed above for
`
`11
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`claims 1 and 15. Compare id. at 17:19–39 (claim 10), with id. at 19:1–20
`(claim 16).
`Independent claims 11 and 17 are directed to a “method for providing
`secure access to a controlled item.” Id. at 17:40–41. Again, the only
`distinction between claims 11 and 17 is the same “capable of”/“configured
`to” distinction discussed above for claims 1 and 15. Compare id. at 17:40–
`67 (claim 11) with id. at 19:21–20:23 (claim 17).
`Independent claim 14 is directed to a “non-transitory computer
`readable storage medium storing a computer program.” Id. at 18:18–19.
`Independent claim 1 is illustrative and is reproduced below.
`1. A system for providing secure access to a controlled
`item, the system comprising:
`a memory comprising a database of biometric signatures;
`a transmitter sub-system comprising:
`a biometric sensor configured to receive a biometric
`signal;
`a transmitter sub-system controller configured to match
`the biometric signal against members of the database of
`biometric signatures to thereby output an accessibility attribute;
`and
`
`a transmitter configured to emit a secure access signal
`conveying information dependent upon said accessibility
`attribute; and
`a receiver sub-system comprising:
`a receiver sub-system controller configured to:
`receive the transmitted secure access signal; and
`provide conditional access to the controlled item
`dependent upon said information;
`wherein the transmitter sub-system controller is further
`configured to:
`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;
`map said series into an instruction; and
`
`12
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`IPR2022-01006
`Patent 9,665,705 B2
`populate the data base according to the instruction,
`wherein the controlled item is one of: a locking mechanism of a
`physical access structure or an electronic lock on an electronic
`computing device.
`Ex. 1001, 15:62–16:23.
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that the Challenged Claims are unpatentable based
`on following three grounds (Pet. 4):
`
`
`
`Claim(s) Challenged
`
`35
`U.S.C. §11
`
`1
`
`2
`
`3
`
`1, 3–5, 9–17
`
`2, 6, 7
`
`8
`
`103
`
`103
`
`103
`
`References/Basis
`
`Bianco12, Mathiassen-
`06713
`Bianco, Mathiassen-067,
`Houvener14
`Bianco, Mathiassen-067,
`Houvener, Richmond15
`
`
`11 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before
`March 16, 2013, we refer to the pre-AIA version of the statute.
`12 Bianco et al., US 6,256,737 B1, issued July 3, 2001 (Ex. 1003, “Bianco”).
`13 Mathiassen, WO 02/28067 A1, published Apr. 4, 2002 (Ex. 1004,
`“Mathiassen-067”).
`14 Houvener et al., US 5,790,674, issued Aug. 4, 1998 (Ex. 1013,
`“Houvener”).
`15 Richmond et al., US 6,856,237 B1, issued Feb. 15, 2005 (Ex. 1005,
`“Richmond”).
`
`13
`
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`IPR2022-01006
`Patent 9,665,705 B2
`Petitioner relies on the declaration testimony of Stuart Lipoff
`(Exs. 1005, 1029) in support of these grounds.
`II. REAL PARTY-IN-INTEREST
`SECTION 315(B) TIME BAR
`We first address whether the Petition is time-barred.
`Patent Owner asserts the Petition in this proceeding should be denied
`as time-barred under 35 U.S.C. § 315(b) because Apple, an argued real
`party-in-interest or privy, was served with a complaint for infringement of
`the ’705 patent more than a year before the Petition was filed. PO Resp. 47.
`Patent Owner also asserts that once Patent Owner introduces “some
`evidence” of a complaint served more than one year before the Petition was
`filed, and of an “RPI relationship,” Petitioner bears the “burden of
`persuasion to show that its petition is not time-barred.” Id.
`One fundamental omission, however, in Patent Owner’s Response is
`that Patent Owner fails to cite any evidence establishing the date that Apple
`was served with a complaint alleging infringement of the patent. This
`evidence is in the record (see Exs. 2003, 2004), and was discussed in Patent
`Owner’s Preliminary Response (see Prelim. Resp. 1), but was not cited in
`the Response.16 This evidence also was cited and considered in our
`Decision to Institute this proceeding. See Dec. Inst. 11 (“There is no dispute
`that Apple was served with a complaint alleging infringement of the ’705
`patent on March 1, 2021 (citing Ex. 2003, 6; Ex. 2004).
`
`
`16 Our Scheduling Order in this proceeding states “Patent Owner is
`cautioned that any arguments not raised in the response may be deemed
`waived.” Paper 24 at 9.
`
`14
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`In general, the Federal Rules of Evidence apply to this proceeding.
`37 C.F.R. § 42.62(a). Under Rule 201(b)(2) of the Federal Rules of
`Evidence, we take official notice17 that Apple was served with a complaint
`alleging infringement of the ’705 patent on March 1, 2021. See Ex. 2003, 6
`(Complaint alleging as its “Second Cause of Action” “Infringement of the
`’705 Patent”); Ex. 2004 (Affidavit of Service on Apple on March 1, 2021).
`Under 35 U.S.C. § 315(b), an inter partes review “may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party-in-interest, or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1346 (Fed.
`Cir. 2018) (“AIT”).
`Petitioner bears the burden of establishing that no RPI or privy was
`served with a complaint alleging infringement more than one year prior to
`the May 31, 2022, filing date (see Paper 3) of the Petition in this proceeding.
`RPX v Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 6–
`7 (PTAB (Oct. 2, 2020) (precedential), (rehearing denied, Paper 142, Dec.4,
`2020 ) (“RPX”);18 see also Ventex Co., Ltd. v. Columbia Sportswear N. Am.,
`Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential)
`(citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018).
`
`
`17 See 37 C.F.R. § 42.62(c) stating that the term “Judicial notice” in the
`Federal Rules of Evidence means “official notice” in the context of an inter
`partes review proceeding.
`18 We cite to the public version of Board’s decision following remand from
`the Federal Circuit in AIT. This same Decision also was entered in the
`related cases IPR2015-01751 and IPR2015-01752.
`
`15
`
`
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`IPR2022-01006
`Patent 9,665,705 B2
`In Power Integrations, Inc. v. Semiconductor Components Industries,
`LLC, 926 F.3d 1306, 1314 (Fed. Cir. 2019), the Federal Circuit stated,
`[t]he Board’s decision under § 315(b) is whether to institute or
`not. The condition precedent for this decision is whether a time-
`barred party (a party that has been served with a complaint
`alleging infringement of the patent more than one year before the
`IPR was filed) is the petitioner, real party in interest, or privy of
`the petitioner.
`There is no dispute that Apple was served with a complaint alleging
`infringement of the ’705 patent on March 1, 2021. See Ex. 2003, 6
`(Complaint alleging as its “Second Cause of Action” “Infringement of the
`’705 Patent”); Ex. 2004, (Affidavit of Service on Apple on March 1, 2021).
`Thus, the dispositive issue under Section 315(b) before us is whether Apple
`is an RPI or privy with Petitioner.
`The Petitioner Entities
`A.
`Before addressing in detail Petitioner’s relationship with Apple, and to
`put that relationship in its proper context, it is helpful to identify the parties
`that, collectively, are included as Petitioner.
`The individual companies that collectively are referred to as
`“Petitioner” are more than just an Apple supplier or business partner. ASSA
`ABLOY AB “is the parent company of several entities worldwide, that are
`leaders in the delivery of secure identity solutions for millions of customers
`throughout the world.” Ex. 2007 ¶ 10. ASSA ABLOY AB is the ultimate
`parent company of ASSA ABLOY Inc. Id.
`ASSA ABLOY Inc., a named Petitioner, is the main holding entity for
`ASSA ABLOY AB’s North and South American assets and is “the
`immediate parent company of Yale, August, HID, and Hospitality.”
`Id. ¶ 11; see also id. ¶¶ 6–9 (providing complete corporate citations for
`
`16
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`“Yale,” “August,” “HID,” and “Hospitality,” each of which is a named
`entity collectively comprising the Petitioner in this IPR proceeding).
`The Petitioner companies provide “identity solutions used in a variety
`of applications, including physical access control, logical access control,
`access card printing and personalization, highly secure government
`identification, and commercial and residential opening solutions.” Id. ¶ 14.
`These products, solutions, and services “are sold through a well-established
`network of OEMs, developers, systems integrators, and distributors
`worldwide.” Ex. 2007 ¶ 14.
`“Yale protects millions of homes and businesses worldwide and is the
`brand behind locks of every design and function in over 125 countries.”
`Id. ¶ 15. “August is the leading provider of smart locks and smart home
`access products and services. August’s products and services give
`customers total control over the front door from a smartphone.” Id. ¶ 16.
`“HID is a worldwide leader in trusted identity solutions. Its products range
`from physical access control products, like ID cards and readers for opening
`doors, to solutions for accessing digital networks, verifying transactions, and
`tracking assets.” Id. ¶ 19. “Hospitality similarly provides advanced
`electronic locking and access solutions to hotels, cruise ships, construction,
`critical infrastructure, education, senior care, and multi-family residential
`industries worldwide.” Id. at ¶ 20. “HID and Hospitality offer the HID
`Mobile Access and ASSA ABLOY Mobile Access software solutions,
`respectively. Each allows an individual’s mobile device (e.g., smartphone or
`wearable) to be used to gain access to secured doors, gates, networks,
`services, and more.” Id. ¶ 21.
`
`17
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`Petitioner filed a Declaratory Judgment action against Patent Owner
`and its parent company based on Patent Owner’s written allegations to
`Petitioner that one or more of the Petitioner companies infringe patents
`owned by Patent Owner, including the ’705 patent challenged in this
`proceeding. Id. ¶¶ 58–73.
`There also is no dispute that Petitioner and Apple have a sophisticated
`and substantive business relationship. See, e.g., Ex. 2009. Petitioner
`supplies products, which are locking systems, to Apple, which Apple then
`sells to consumers. Ex. 2027. Also, Apple’s iPhone is one of the
`smartphone products that can be used with Petitioner’s lock products. Id.
`Thus, Petitioner must design its locking products to interact with the iPhone
`operating system and software. Patent Owner asserts that this arrangement
`makes Apple a real party-in-interest and/or a privy with Petitioner.
`Petitioner, who has the burden of persuasion, disagrees.
`As explained below, when considering the entirety of the evidentiary
`record, including evidence relating to the business model and operating
`relationship between Petitioner and Apple, and considering the equitable and
`practical considerations of the relationship between Petitioner and Apple, we
`determine that Apple is not an RPI or in privy with Petitioner.
`We discuss below the evidence and arguments on which the parties
`rely.
`
`RPI Status
`B.
`Section 315(b) “is unambiguous: Congress intended that the term ‘real
`party in interest’ have its expansive common-law meaning.” AIT, 897 F.3d
`at 1351. “Determining whether a non-party is a ‘real party in interest’
`demands a flexible approach that takes into account both equitable and
`
`18
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`practical considerations, with an eye toward determining whether the non-
`party is a clear beneficiary that has a preexisting, established relationship
`with the petitioner.” Id. As stated in AIT, “a patent owner dragged into an
`IPR by a petitioner, who necessarily has an interest in canceling the patent
`owner’s claims, should not be forced to defend against later judicial or
`administrative attacks on the same or related grounds by a party that is so
`closely related to the original petitioner as to qualify as a real party in
`interest.” Id. at 1350. The corollary to this principle is that a patent owner
`who sues, or threatens to sue, several independent and distinct entities
`should not be surprised when each mounts an independent and distinct
`defense, whether in a federal court, in a post-grant proceeding in the Patent
`and Trademark Office, or both.
`This concept of avoiding repeated challenges of a patent by distinct,
`but related, parties also is supported in the legislative history of
`Section 315(b). Id.; see also RPX, Paper 128 at 8–9 (concluding that the
`legislative history supports the concepts that “the RPI and privity
`requirements were designed to avoid harassment [of patent owners] and
`preclude parties from getting ‘two bites at the apple’ by allowing such
`parties to avoid either the estoppel provision or the time-bar”).
`“The statutory terms ‘real party in interest’ and ‘privy’ are not defined
`in Title 35. However, they are well-established common law terms.” Power
`Integrations, 926 F.3d at 1315. The Federal Circuit has determined “that
`Congress intended to adopt common law principles to govern the scope of
`the section 315(b) one-year bar.” Id. We therefore look “to common law
`preclusion principles for guidance” to determine whether a real party-in-
`interest or privity relationship exists. Id.
`
`19
`
`
`
`IPR2022-01006
`Patent 9,665,705 B2
`Whether a party who is not a named participant in a given proceeding
`nonetheless constitutes a “real party-in-interest” or “privy” to that
`proceeding “is a highly fact-dependent question.” Consolidated Trial
`Practice Guide (Nov. 2019) (CTPG)19, 13 (citing Taylor v. Sturgell, 553
`U.S. 880 (2008) (summarizing common law preclusion principles)). “[A]t a
`general level, the ‘real party-in-interest’ is the party that desires review of
`the patent.” CTPG, 14. Thus, the “real party-in-interest” may be the
`petitioner itself, and/or it may be the party or parties “at whose behest the
`petition has been filed.” Id; see AIT, 897 F.3d at 1351 (recognizing the
`“fact-dependent” nature of the RPI inquiry, and explaining that the two
`questions lying at its heart are whether a non-party “desires review of the
`patent” and whether a petition has been filed at a nonparty’s “behest”). A
`common meaning of “behest” is “because someone has ordered or requested
`it.” See Ex. 3002.
`As explained in AIT:
`[D]etermining whether a non-party is a “real party in interest”
`demands a flexible approach that takes into account both
`equitable and practical considerations, with an eye toward
`determining whether the non-party is a clear beneficiary that has
`a preexisting, established relationship with the petitioner.
`Indeed, the Trial Practice Guide . . . suggests that the agency
`understands the “fact-dependent” nature of this inquiry,
`explaining that the two questions lying at its heart are whether a
`non-party “desires review of the patent” and wh
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