From:
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`Subject:
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`Devkar, Andrew V.
`Director_PTABDecision_Review
`Ryan, Andrew; Coyle, Steve; Geiger, Nicholas; HID-IPRs
`IPR2022-01045: Request for Director Review
`Thursday, January 18, 2024 9:00:00 PM
`IPR2022-01045 - Request for Director Review.pdf
`
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`Director of the United States Patent and Trademark Office, Katherine K. Vidal:
`
`Petitioners in the above-referenced inter partes review proceeding (IPR2022-01045) respectfully
`request that the Final Written Decision in that proceeding receive Director Review pursuant to the
`interim rules governing such review. The Request has been filed and assigned Paper No. 43. A copy
`is attached.
`
`This request follows a request for Director review in IPR2022-01006 on a related patent involving
`identical issues.
`
`Ranked in order of importance are the following issues for which review is sought:
`
`1) The same Panel construed the term “biometric signal” inconsistently in this proceeding and in a
`parallel inter partes review proceeding concerning the same challenged patent. See Apple Inc. v. CPC
`Patent Technologies PTY, Ltd., IPR2020-00601, Final Written Decision (PTAB Sept. 27, 2023) [Paper
`No. 31] (“Apple FWD”). The Panel’s inconsistent findings concerning the same challenged patent
`and limitation in two different proceedings presents an important issue of law or policy.
`
`2) The Panel’s claim construction in this proceeding is also inconsistent with the claim language and
`specification and would lead to indefinite claims. The Panel’s claim construction therefore
`constitutes an erroneous conclusion of law and erroneous finding of material fact.
`
`3) In its Final Written Decision, the Panel failed to consider the express teachings in Mathiassen as
`well as both side’s expert testimony supporting that the “biometric signal” limitations are disclosed
`in Mathiassen under Petitioners’ construction, Patent Owner’s construction and the construction
`from the earlier Apple FWD. Specifically, in finding all claims not unpatentable, the Panel concluded
`that Mathiassen does not teach receiving a series of biometric signals because it stops “functioning
`as a fingerprint sensor.” FWD, 91. This is directly contradicted by Mathiassen itself and is
`acknowledged by both side’s experts, which the Board failed to consider. This was an abuse of
`discretion and an erroneous finding of material fact.
`
`Regards,
`
`Andrew Devkar
`Counsel for Petitioners
`
`IPR2022-01045
`Ex. 3100
`
`

`

`
`Andrew V. Devkar
`Morgan, Lewis & Bockius LLP
`2049 Century Park East, Suite 700 | Los Angeles, CA 90067
`Direct: +1.310.255.9070 | Main: +1.310.907.1000 | Fax: +1.310.907.1001
`andrew.devkar@morganlewis.com | www.morganlewis.com
`Assistant: Karen Satterfield | +1.949.399.7141 | karen.satterfield@morganlewis.com
`
`
`