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. IPR2022-01045
`
`Patent No. 9,269,208
`
`_____________________________________________________________
`
`DECLARATION OF STUART LIPOFF
`
`U.S. PATENT NO. 9,269,208 (CLAIMS 1-13)
`
`Petitioners Ex. 1005
`
`

`

`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
`
`
`V.
`VI.
`
`Contents
`ENGAGEMENT .......................................................................................... 1
`I.
`PROFESSIONAL BACKGROUND............................................................ 2
`II.
`III. MATERIALS REVIEWED ......................................................................... 6
`IV.
`DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART ...................................................................................................... 7
`OVERVIEW OF THE ʼ208 PATENT ......................................................... 8
`CLAIM CONSTRUCTION ....................................................................... 13
`A.
`Terms to be Construed ....................................................................... 13
`1.
`“signal for directing input” / “feedback signal adapted to
`direct provision of… the biometric signal” ............................. 13
`B. Means-Plus-Function Limitations ...................................................... 15
`C.
`Previously-Construed Terms .............................................................. 15
`1.
`“accessibility attribute” ............................................................ 15
`2.
`“biometric signature” ............................................................... 15
`3.
`“[map|mapping] said series into an instruction” ...................... 15
`4.
`“series” ..................................................................................... 16
`5.
`“being characterized [according
`to|determining|determine]” ...................................................... 16
`“at least one of the number of said entries and a duration
`of each said entry”.................................................................... 16
`“collocated” .............................................................................. 16
`7.
`VII. ANTICIPATION ........................................................................................ 16
`VIII. OBVIOUSNESS ......................................................................................... 17
`IX.
`OPINIONS REGARDING PATENTABILITY ........................................ 17
`X.
`THE CLAIMS OF THE ʼ208 PATENT ARE INVALID .......................... 19
`A.
`IPR2022-001045 GROUND #1: Claims 1, 3-5, and 9 are
`rendered obvious by Bianco and Mathiassen. .................................... 19
`1.
`Claim 1 is rendered obvious by Bianco and Mathiassen ......... 20
`
`6.
`
`
`
`i
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`

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`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
`
`
`B.
`
`C.
`
`2.
`
`3.
`
`D.
`
`Claim 3 is rendered obvious by Bianco and Mathiassen ......... 97
`2.
`Claim 4 is rendered obvious by Bianco and Mathiassen ....... 107
`3.
`Claim 5 is rendered obvious by Bianco and Mathiassen ....... 109
`4.
`Claim 9 is rendered obvious by Bianco and Mathiassen ....... 111
`5.
`IPR2022-01089 GROUND #1: Claims 10-13 are rendered
`obvious by Bianco and Mathiassen. ................................................. 112
`1.
`Claim 10 is rendered obvious by Bianco and Mathiassen ..... 112
`2.
`Claim 11 is rendered obvious by Bianco and Mathiassen ..... 194
`3.
`Claim 12 is rendered obvious by Bianco and Mathiassen ..... 199
`4.
`Claim 13 is rendered obvious by Bianco and Mathiassen ..... 201
`IPR2022-001045 GROUND #2: Claims 2 and 6-7 are rendered
`obvious by Bianco and Mathiassen in view of Houvener ................ 202
`1.
`Claim 2 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 203
`Claim 6 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 214
`Claim 7 is rendered obvious by Bianco and Mathiassen in
`view of Houvener ................................................................... 220
`IPR2022-001045 GROUND #3: Claim 8 is rendered obvious
`by Bianco, Mathiassen, Houvener, and Richmond .......................... 226
`1.
`Claim 8 ................................................................................... 226
`CONCLUDING STATEMENTS ............................................................. 231
`
`XI.
`
`
`
`ii
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`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
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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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`

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`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
`
`
`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 WIPO Patent Pub. No. WO2008113110A1 to Christopher John
`Burke (“Burke III”)
`
`Ex. 1020
`
`CPC Infringement Allegations re U.S. Patent No. 9,269,208
`
`
`
`ii
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`

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`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
`
`
`Ex. 1021
`
`CPC Infringement Allegations re U.S. Patent No. 9,665,705
`
`
`
`iii
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`Patent No. 9,269,208
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`
`I, Stuart J. Lipoff, declare as follows:
`
`I.
`
`ENGAGEMENT
`I reside at 2877 Paradise Road Unit 205, Las Vegas, NV 89109.
`1.
`
`2.
`
`I have been retained by ASSA ABLOY AB, ASSA ABLOY Inc.,
`
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`
`Corporation, and ASSA ABLOY Global Solutions, Inc. (“Petitioners”) in
`
`connection with the above-captioned petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 9,269,208 to Christopher John Burke (“the ʼ208 Patent,” Ex.
`
`1007). I understand the ʼ208 Patent is currently assigned to CPC Patent
`
`Technologies Pty Ltd. (“Patent Owner”).
`
`3.
`
`I have been asked by Petitioners to offer opinions regarding the ’208
`
`Patent, including the unpatentability of claims 1-13 (which I may refer to
`
`subsequently as the “challenged claims” or the “’208 Patent claims”) in view of
`
`certain prior art. This declaration sets forth the opinions I have reached to date
`
`regarding these matters.
`
`4.
`
`I am being compensated by Petitioners at my standard hourly
`
`consulting rate for my time spent on this matter. My compensation is not
`
`contingent on the outcome of the IPR or on the substance of my opinions.
`
`5.
`
`I have no financial interest in Petitioners or Patent Owner.
`
`
`
`1
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`Case Nos. IPR2022-01045 and IPR2022-01089
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`PROFESSIONAL BACKGROUND
`As shown in my curriculum vitae (“CV”), a true and correct copy of
`6.
`
`II.
`
`which is attached hereto as Ex. 1006, I am currently the president of IP Action
`
`Partners Inc. and have over 50 years of experience in a wide variety of
`
`technologies and industries relating to data communications, including data
`
`communications over wireless and cable systems networks.
`
`7.
`
`I earned a B.S. degree in Electrical Engineering in 1968 from Lehigh
`
`University and a second B.S. degree in Engineering Physics in 1969, also from
`
`Lehigh University. I also earned a M.S. degree in Electrical Engineering from
`
`Northeastern in 1974 and an MBA degree from Suffolk University in 1983.
`
`8.
`
`I am currently the president of IP Action Partners Inc., which is a
`
`consulting practice serving the telecommunications, information technology,
`
`media, electronics, and e-business industries.
`
`9.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License and a Certificate in Data Processing (“CDP”) from the
`
`Association for Computing Machinery (“ACM”)-supported Institute for the
`
`Certification of Computing Professionals (“ICCP”), and I am a registered
`
`professional engineer (by examination) in the State of Nevada and the
`
`Commonwealth of Massachusetts.
`
`
`
`2
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`

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`Case Nos. IPR2022-01045 and IPR2022-01089
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`I am a fellow of the IEEE Consumer Electronics, Communications,
`
`10.
`
`Computer, Circuits, and Vehicular Technology Groups. I am also a member of the
`
`IEEE Consumer Technology Society Board of Governors, and was the Boston
`
`Chapter Chairman of the IEEE Vehicular Technology Society. I previously served
`
`as 1996-1997 President of the IEEE Consumer Electronics Society, have served as
`
`Chairman of the Society’s Technical Activities and Standards Committee, as VP of
`
`Publications for the Society, and currently as VP of Industry and Standards for the
`
`Society. I have also served as an Ibuka Award committee member.
`
`11.
`
`I have also presented papers at many IEEE and other meetings. A
`
`listing of my publications is included as part of my CV, which is attached as
`
`Exhibit 1006. For example, in Fall 2000, I served as general program chair for the
`
`IEEE Vehicular Technology Conference on advanced wireless communications
`
`technology, and I have organized sessions at The International Conference on
`
`Consumer Electronics and was the 1984 program chairman. I also conducted an
`
`eight-week IEEE sponsored short course on Fiber Optics System Design. In 1984,
`
`I was awarded IEEE’s Centennial Medal and in 2000, I was awarded the IEEE’s
`
`Millennium Medal.
`
`12. As Vice President and Standards Group Chairman of the Association
`
`of Computer Users (“ACU”), I served as the ACU representative to the ANSI X3
`
`Standards Group. For the FCC’s Citizens advisory committee on Citizen’s Band
`
`
`
`3
`
`

`

`(“CB”) radio (“PURAC”), I served as Chairman of the task group on user rule
`
`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
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`compliance. I have been elected to membership in the Society of Cable Television
`
`Engineers (“SCTE”), the ACM, and The Society of Motion Picture and Television
`
`Engineers (“SMPTE”). I also served as a member of the USA advisory board to
`
`the National Science Museum of Israel, presented a short course on international
`
`product development strategies as a faculty member of Technion Institute of
`
`Management in Israel, and served as a member of the board of directors of The
`
`Massachusetts Future Problem Solving Program.
`
`13.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications topics in Electronics Design,
`
`Microwaves, EDN, The Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`14. For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I
`
`became Vice President and Director of Communications, Information Technology,
`
`and Electronics (“CIE”). Prior to my time at ADL, I served as a Section Manager
`
`for Bell & Howell Communications Company for four years, and prior to that, as a
`
`Project Engineer for Motorola’s Communications Division for three years.
`
`15. At ADL, I was responsible for the firm’s global CIE practice in
`
`laboratory-based contract engineering, product development, and technology based
`
`
`
`4
`
`

`

`consulting. At both Bell & Howell and Motorola, I had project design
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`responsibility for wireless communication and paging products.
`
`16. During my 53 years in the practice of engineering research and
`
`product development, I have engaged in a number of projects that have provided
`
`me with relevant experience and expertise in a number of the foundation
`
`technologies and the industries within the scope of the ʼ208 Patent. These projects
`
`have included, for example, topics in: motor operated door controllers, wireless
`
`communications, wireless remote controls, access control security systems, data
`
`communications, and devices incorporating microprocessors.
`
`17.
`
`I have worked on a number of security and alarm products. For the
`
`Philadelphia Police Department, I designed a wireless address alarm system that
`
`was also deployed by The White House Communications Agency. I have also
`
`specified and managed aspects of the procurement of complex keypad based access
`
`control systems for use in secure areas of electric power utilities and industrial
`
`computer rooms.
`
`18. For Symbol Technology, I contributed to the design of the MAC layer
`
`protocol of a wireless local area network system (WLAN) that pre-dated the IEEE
`
`802.11 standard. My protocol design was submitted to the IEEE 802.11 standards
`
`committee with portions incorporated into the final specification.
`
`
`
`5
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`Patent No. 9,269,208
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`19. Working with Cambridge Consultants Ltd (the UK subsidiary of the
`
`USA based Arthur D Little Inc), I consulted on several developments of Bluetooth
`
`related hardware and software stacks. This development was spun off to
`
`Cambridge Silicon Radio (CSR) to which I continued to provide consulting
`
`reports.
`
`20.
`
`In my capacity as chairman of The IEEE Consumer Electronics
`
`Society Standards Committee, I followed the developments of both the IEEE
`
`802.15 Bluetooth and IEEE 802.11 WiFi standards, as well as the IEEE Home
`
`Radio Frequency (HomeRF™) Working Group.
`
`21.
`
`I have designed products and systems that incorporated
`
`microprocessors and microcomputers across multiple products and industry
`
`applications, including toys and games, industry controllers, motor controllers, and
`
`consumer products.
`
`22. Additional information regarding my background, qualifications,
`
`publications, and presentations is provided in my CV, which is included as Ex.
`
`1006.
`
`III. MATERIALS REVIEWED
`In forming my opinions, I have reviewed the ʼ208 Patent and
`23.
`
`considered each of the documents listed in the Exhibit List above. In reaching my
`
`opinions, I have relied upon my experience in the field and also considered the
`
`
`
`6
`
`

`

`viewpoint of a person of ordinary skill in the art at the time of the earliest claimed
`
`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
`
`
`priority date of the ʼ208 Patent, i.e., 2003. As explained below, I am familiar with
`
`the level of a person of ordinary skill in the art regarding the technology at issue as
`
`of that time.
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART
`I understand that the ʼ208 Patent was filed on August 10, 2012, and
`24.
`
`has an earliest possible priority date of August 13, 2003. I further understand that
`
`there is no claim to earlier priority. Thus, for purposes of my analysis, I have
`
`treated the time of the invention as August 13, 2003. I reserve the right to update
`
`my analysis should Patent Owner assert an earlier priority date.
`
`25.
`
`I have received and understand the specification, claims, and file
`
`history of the ʼ208 Patent. Based on my review of these materials, I believe that
`
`the relevant field for purposes of my analysis is secure access systems.
`
`26.
`
`In my opinion, a person of ordinary skill in the art (POSITA) at the
`
`time of the alleged invention would have had at least an undergraduate degree in
`
`electrical engineering, or equivalent education, and at least two years of work
`
`experience in the field of security and access-control. My opinions presented
`
`herein are as viewed through the eyes of a person of ordinary skill in the art prior
`
`to August 13, 2003.
`
`
`
`7
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`

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`V. OVERVIEW OF THE ʼ208 PATENT
`I have reviewed the ʼ208 Patent and understand that Christopher John
`27.
`
`Burke is named as the inventor on this patent. Mr. Burke’s patent describes
`
`authenticating users using biometrics to gain “access to a controlled item,” such as
`
`a locked door or electronic computing device. Ex. 1007 Abstract.
`
`28. Figure 10 of the ’208 Patent is a general representation of the system.
`
`I have highlighted different portions of the system, as shown below, for easy
`
`reference. The patent discloses granting access to a controlled item (blue, in figure
`
`below) by reading a biometric (e.g., a fingerprint) using a “sensor” (red), and a
`
`controller (pink) compares that input biometric (called a “biometric signature”)
`
`with a previously-captured reference signature stored in a database (yellow). The
`
`specification discloses that the database (yellow) can be in the transmission
`
`subsystem (green), receiver subsystem (purple), or neither, and may be in
`
`“memory.” If a match is found, the input biometric is associated with a user ID
`
`associated with the stored biometric and the user is authenticated. If not, as recited
`
`in dependent claim 3, the access attempt is denied and an “alert” may be sounded.
`
`
`
`8
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`

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`Patent No. 9,269,208
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`
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`Ex. 1007 Fig. 10. As a general note, I added emphasis and coloring throughout
`
`this declaration unless otherwise noted. The system may be allocated in two
`
`“subsystems,” the “transmitter sub-system” (green) and “receiver sub-system”
`
`(purple), connected through a communication network (orange). However, the
`
`“sub-systems” can be “collocated in” a single device, such as the “electronic
`
`computing device” containing the data/applications being protected, in which case
`
`the “network 1020” is “a…link” connecting the subsystems “directly.” Ex. 1007
`
`
`
`9
`
`

`

`14:50-54. I also note that claims 1, 9, and 10 require “populating the data[]base
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`according to the instruction,” which is typically referred to as user enrollment. Ex.
`
`1007 Cls. 1, 9, and 10.
`
`29. Although no particular type of “biometric” is required by the claims,
`
`the patent discloses many forms of biometrics including “fingerprints,” “voice,
`
`retinal or iris pattern, face pattern, palm configuration and so on,” which may be
`
`read using “corresponding biometric sensor[s].” Ex. 1007 1:27-32.
`
`30. There are two features that the Applicant purportedly considered
`
`novel:
`
`• Providing “conditional access,” such as sounding a silent alarm even
`
`though access is being granted. E.g., Ex. 1007 2:42-43, 8:15-37.
`
`• Using a series of entries of a biometric signal in a duration/number
`
`pattern (like Morse-code) to tell the system to update the database of
`
`biometric signatures (e.g., fingerprints/eyeprints/voiceprints). Ex.
`
`1012, pp. 300-305.
`
`31. Additionally, after a call with the Examiner, the claims were allowed
`
`with the additional requirement that the lock be limited to either locks on physical
`
`locations (such as door lock) or locks on computer resources (e.g., applications or
`
`data). Ex. 1012 pp. 317-318. Accordingly, limiting the claims to physical or
`
`electronic locks appears to be what the Examiner determined was novel.
`
`
`
`10
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`

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`Patent No. 9,269,208
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`In my opinion, there is nothing novel about the system for providing
`
`32.
`
`secure access recited in the ’208 Patent claims or anything else that distinguishes it
`
`from other earlier systems for providing secure access.
`
`33. For example, Bianco (Ex. 1003) discloses a system that uses
`
`biometrics to provide access to a controlled item. Ex. 1003 Abstract. Just like the
`
`’208 Patent, Bianco teaches doing this by measuring/reading one or more
`
`biometric signals from a human user, comparing the measured biometric signal(s)
`
`with those previously measured and stored at specific memory locations, and
`
`determining whether a match for the user exists. Assuming a match exists, Bianco
`
`discloses sending a signal to a lock (or other controlled item) such that access can
`
`be granted. If no match exists, access will not be granted. Both Bianco and the
`
`’208 Patent disclose multiple types of biometrics, and both references provide
`
`many of the same examples: hand/fingerprints, voiceprints, eyeprints, etc. In
`
`addition, Bianco also mentions “measuring a user’s behavioral characteristics…
`
`[such as] typing stroke and signature.” Ex. 1003 7:62-65.
`
`34. Regarding the purportedly novel aspects of the ’208 Patent, Bianco
`
`discloses “conditional access,” such that even if a user is authenticated, she may
`
`not be granted access to a controlled item and/or an alert may be raised. Bianco
`
`also teaches providing access under “duress” (e.g., a user providing a different
`
`fingerprint to send a covert indication of a robbery) while sounding a silent alarm.
`
`
`
`11
`
`

`

`This is an obvious example of what is claimed by dependent claim 5 of the ’208
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`Patent No. 9,269,208
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`Patent.
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`35. Also like the ’208 Patent, Bianco discloses enrollment of new
`
`administrative and general users. Ex. 1003 3:7-17; 9:32-10:67; 26:48-29:39.
`
`36. Bianco teaches both examples of controlled items disclosed in the
`
`’208 Patent and claims: “physical location[s]” and electronic locks on
`
`“computers… and data.” Ex. 1003 1:15-16, 57:37-40.
`
`37. As another example, Mathiassen (Ex. 1004) teaches using the same
`
`biometric (fingerprint) sensor for the dual purposes of (i) reading fingerprints for
`
`authentication and access control and (ii) as a means of issuing
`
`commands/instructions through a series of “taps” of varying durations. Mathiassen
`
`teaches that its invention can be used to enter any form of instructions. Ex. 1004
`
`Abstract.
`
`38. With regard to dependent claim 2, Houvener (Ex. 1013) teaches the
`
`well-known concept of logging and creating audit trails of biometric transactions.
`
`It also teaches a control panel (claims 6-7).
`
`39. With regard to dependent claim 8, Richmond (Ex. 1014) teaches a
`
`method for converting rolling code transmissions into the protocol for legacy
`
`Wiegand controllers.
`
`
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`12
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`Case Nos. IPR2022-01045 and IPR2022-01089
`Patent No. 9,269,208
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`
`VI. CLAIM CONSTRUCTION
`I understand that claim construction is the process of determining the
`40.
`
`meaning of a term or phrase in a patent claim. I understand that the proper
`
`construction of a term is how a POSITA would have understood the term based on
`
`its use in the claims, specification, and file history of the patent. I further
`
`understand that the claims are construed before the Board according to the same
`
`claim construction standard that applies in district courts. I have followed these
`
`principles in my analysis throughout this declaration. I discuss below the meaning
`
`of certain claim terms that I have applied in forming my opinions.
`
`A. Terms to be Construed
`“signal for directing input” / “feedback signal adapted to
`1.
`direct provision of… the biometric signal”
`41. Dependent claim 2 claims a “signal for directing input.” Dependent
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`claim 12 similarly recites a “feedback signal adapted to direct provision of… the
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`biometric signal.” Neither term appears in the specification outside of the claims.
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`As its name implies, it is my opinion that this “signal” is a communication sent
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`from the system to the user to “direct” the user to provide his/her biometrics, i.e.,
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`his/her “input.”
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`42. The patent teaches “code entry module 103 also incorporates at least
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`one mechanism for providing feedback to the user 101.” Ex. 1007 6:20-21. As
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`shown in the figure with my annotations below, the patent explains this can “take
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`the form or [sic-of]… visual feedback, depicted by an arrow 123 [purple]… or…
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`an audio signal [red]”:
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`
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`Id. Fig. 2 (excerpted/annotated), 6:22-26. These “feedback signalling [sic]
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`mechanisms… are used… to direct the administration process.” Id. 11:3-8.
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`43. Thus, in my opinion, “signal for directing input” and “feedback signal
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`adapted to direct provision of… the biometric signal” should be construed as “a
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`communication sent from the system to the user to direct the user to provide
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`his/her biometric input.”
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`B. Means-Plus-Function Limitations
`I understand that Judge Albright (WDTX) construed seven means-
`44.
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`plus-function limitations from the challenged claims in district court proceedings.
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`I reviewed the constructions, but I do not provide any opinion agreeing or
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`disagreeing with the constructions. Nonetheless, for the purpose of this
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`declaration, I applied the constructions for these terms as identified in my analysis
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`below.
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`C.
`45.
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`Previously-Construed Terms
`I understand that Judge Albright construed the following terms in
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`district court proceedings. I reviewed the constructions for the following terms,
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`but I do not provide any opinion agreeing or disagreeing with these constructions.
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`46. Nonetheless, for the purpose of this declaration, I applied the
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`constructions for these terms as listed below.
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`“accessibility attribute”
`1.
`“attribute that establishes whether and under which conditions access
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`47.
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`to the controlled item should be granted to a user.” Ex. 1010, p.1; Ex. 1009, p.2.
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`“biometric signature”
`2.
`“plain and ordinary meaning.” Ex. 1009, p.2.
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`“[map|mapping] said series into an instruction”
`3.
`“plain and ordinary meaning.” Ex. 1010, p.1.
`
`48.
`
`49.
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`“series”
`4.
`“plain and ordinary meaning.” Ex. 1010, p.1.
`
`5.
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`“being characterized [according
`to|determining|determine]”
`“plain and ordinary meaning.” Ex. 1009, p.2.
`
`50.
`
`51.
`
`6.
`
`“at least one of the number of said entries and a
`duration of each said entry”
`52. The term “‘at least’ modifies ‘one of the number of said entries.’ The
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`claim additionally requires ‘a duration of each said entry.’” Ex. 1009, p.2
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`(emphasis added).
`
`“collocated”
`7.
`“plain and ordinary meaning (which is not ‘occurring in conjunction
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`53.
`
`with’).” Ex. 1009, p.3.
`
`VII. ANTICIPATION
`I have been instructed as to the definition of “anticipation” in the
`54.
`
`context of the patent laws.
`
`55.
`
`I understand that anticipation of a claim requires that every element of
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`a claim be disclosed expressly or inherently in a single prior art reference, in
`
`combination, as claimed. I understand that a single prior art reference may
`
`anticipate claims without expressly disclosing a feature of the claimed invention if
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`that feature is necessarily present, or inherent, in that reference. I understand that a
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`reference is read from the perspective of one of ordinary skill at the time of the
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`invention.
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`VIII. OBVIOUSNESS
`I have been instructed as to the definition of “obviousness” in the
`56.
`
`context of the patent laws.
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`57.
`
`It is my understanding that obviousness is a question of law based on
`
`underlying factual issues including the content of the prior art and the level of skill
`
`in the art. I understand that for a single reference or a combination of references to
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`render the claimed invention obvious, a person of ordinary skill in the art must
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`have been able to arrive at the claims by altering or combining the applied
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`references.
`
`58.
`
`I also understand that when considering the obviousness of a patent
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`claim, one should consider whether a teaching, suggestion, or motivation to
`
`combine the references exists to avoid impermissibly applying hindsight when
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`considering the prior art. I understand this test should not be applied rigidly, but
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`that the test can be important to avoid such hindsight.
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`IX. OPINIONS REGARDING PATENTABILITY
`In my opinion, claims 1, 3-5, 9, and 10-13 are rendered obvious by
`59.
`
`Bianco in view of Mathiassen. Additionally, claims 2 and 6-7 are rendered
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`obvious by Bianco in view of Mathiassen in further view of Houvener.
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`Additionally, claim 8 is rendered obvious by the Bianco-Mathiassen-Houvener
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`combination, further in view of Richmond.
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`60.
`
`I have based my opinion on the following references:
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`- Bianco: U.S. Patent No. 6,256,737 titled “System, method and computer
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`program product for allowing access to enterprise resources using biometric
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`devices” to Peter Garrett Bianco, William Taylor Boon, Robert Brewster
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`Sterling, and Karl Roger Ware (“Bianco,” Ex. 1003), was filed March 9,
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`1999 and granted July 3, 2001. I understand that Bianco is prior art to the
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`ʼ208 Patent.
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`- Mathiassen: WIPO Pub. No. 2002028067 titled “Method and system for
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`inputting characters” to Camilla Mathiassen (“Mathiassen,” Ex. 1004), was
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`filed September 20, 2001 and published April 4, 2002. I understand that
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`Mathiassen is prior art to the ’208 Patent.
`
`- Houvener: U.S. Patent No. 5,790,674 titled “System, method and
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`computer program product for allowing access to enterprise resources using
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`biometric devices” to Robert C. Houvener and Ian P. Hoenisch (“Houvener,”
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`Ex. 1013), was filed July 19, 1996 and granted August 4, 1998. I understand
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`that Houvener is prior art to the ’208 Patent.
`
`- Richmond: U.S. Patent No. 6,856,237 titled “Method and apparatus for
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`radio frequency security system with automatic learning” to Thomas R.
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`Richmond, Suzanne Richmond, Patrick S. Kochie (“Richmond,” Ex. 1014),
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`was filed June 26, 2000 and granted February 15, 2005. I understand
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`Richmond is prior art to the ’208 Patent.
`
`61.
`
`In my opinion, claims 1-13 of the ʼ208 Patent are unpatentable based
`
`on the following grounds:
`
`(1) Claims 1, 3-5, 9, and 10-13 are rendered obvious by Bianco in view of
`
`Mathiassen;
`
`(2) Claims 2 and 6-7 are rendered obvious by Bianco in view of Mathiassen
`
`and further in view of Houvener;
`
`(3) Claim 8 is rendered obvious by the Bianco-Mathiassen-Houvener
`
`combination further in view of Richmond.
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`X. THE CLAIMS OF THE ʼ208 PATENT ARE INVALID
`IPR2022-001045 GROUND #1: Claims 1, 3-5, and 9 are rendered
`A.
`obvious by Bianco and Mathiassen.
`It is my opinion that claims 1, 3-5, and 9 are rendered obvious by
`
`62.
`
`Bianco in view of Mathiassen because it would have been obvious for one of skill
`
`in the art at the time of the invention to modify Bianco in view of Mathiassen to
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`arrive at the claimed purported invention.
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`1.
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`Claim 1 is rendered obvious by Bianco and
`Mathiassen
`In my opinion, claim 1 is unpatentable because it is rendered obvious
`
`63.
`
`by Bianco and Mathiassen. Claim 1 of the ʼ208 Patent recites the following. I
`
`address each of these in my analysis below.
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`[P] A system for providing secure access to a con