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,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01089
`Patent No. 9,269,208
`
`______________________________________________________
`
`PETITIONERS’ RANKING AND EXPLANATION FOR
`TWO PETITIONS CHALLENGING U.S. PATENT NO. 9,269,208
`
`
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ASSA ABLOY AB, ASSA ABLOY Inc.,
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01089
`Patent No. 9,269,208
`
`______________________________________________________
`
`PETITIONERS’ RANKING AND EXPLANATION FOR
`TWO PETITIONS CHALLENGING U.S. PATENT NO. 9,269,208
`
`
`
`Pursuant to the Consolidated Trial Practice Guide, ASSA ABLOY AB,
`
`ASSA ABLOY Inc., ASSA ABLOY Residential Group, Inc., August Home, Inc.,
`
`and HID Global Corporation (collectively, “Petitioners”) rank, and explain the
`
`need to file, two Petitions challenging the claims in U.S. Patent No. 9,269,208
`
`(“the ’208 Patent”).
`
`II.
`
`RANKING OF PETITIONS
`
`Rank
`
`Petition
`
`1
`
`2
`
`IPR2022-01045
`(“-045 Petition”)
`
`IPR2022-01089
`(“-089 Petition”)
`
`Grounds
`Ground 1: Obviousness of Claims 1, 3-5, and 9
`based on Bianco as modified by Mathiassen
`Ground 2: Obviousness of Claims 2 and 6-7
`based on Bianco, Mathiassen, and Houvener
`Ground 3: Obviousness of Claim 8 based on
`Bianco, Mathiassen, Houvener, and Richmond
`Ground 1: Obviousness of Claims 10-13 based on
`Bianco as modified by Mathiassen
`
`III. MATERIAL DIFFERENCES BETWEEN THE PETITIONS
`Petitioners are concurrently filing two petitions that together challenge all
`
`claims (claims 1-13) of the ’208 patent. There is no overlap in claims between the
`
`two petitions. The same claims are included in a declaratory judgment action
`
`between Petitioners and CPC Patent Technologies Pty Ltd. (“Patent Owner”).
`
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd., et al., No. 3-22-cv-
`
`1
`
`
`
`00694 (D. Ct.); see also EX-1020.1 If the Board were to institute one petition and
`
`discretionarily deny the other, the parties would likely be forced to address the
`
`same grounds for unpatentability in District Court, which would be highly
`
`inefficient. Petitioners submit that two petitions are necessary to address each of
`
`the claims and their lengthy claim recitations, including numerous means-plus-
`
`function limitations, some of which were construed in district court proceedings
`
`between Patent Owner and third parties. This complexity required splitting the
`
`challenged claims into two groups, each addressed in one of the instant petitions.
`
`A.
`
`The Petitions Together Address Thirteen Lengthy Claims
`with Multiple Means-Plus-Function Limitations
`The challenged claims recite nearly twenty means-plus-function limitations
`
`related to biometric authentication and secure access. For example, the means-
`
`plus-function limitations in independent claim 1 alone include: (1) means for
`
`matching biometric signals against a database, (2) means for emitting a secure
`
`access signal, (3) means for receiving the transmitted secure access signal, (4)
`
`1 The ’208 Patent was also asserted against Apple, Inc. in CPC Patent Technologies
`
`Pty Ltd v. Apple Inc., No. 5:22-cv-02553-NC (N.D. Cal.), and against HMD Global
`
`in CPC Patent Technologies Pty Ltd v. HMD Global Oy, WDTX-6-21-cv-00166-
`
`ADA. Petitioners understand that Patent Owner dropped its assertions of the ’208
`
`Patent against both Apple and HMD Global, but did so without prejudice.
`
`2
`
`
`
`means for providing conditional access, (5) means for populating the data base
`
`of biometric signatures, (6) means for mapping said series into an instruction, and
`
`(7) means for populating the data base according to the instruction. EX-1007, Cl.
`
`1. There are also other lengthy limitations in claim 1, which spans nearly 30 lines.
`
`All other independent claims also include permutations of long means-plus-
`
`function limitations (see EX-1007, Cls. 1, 9, 10) that needed to be construed.
`
`Further complicating the analysis, in two separate district court cases, Judge
`
`Albright (WDTX) construed seven means-plus-function limitations from the
`
`challenged claims. These constructions have been addressed in the petitions.
`
`Petitioners have done their best to streamline the analysis, but are unable to
`
`address all of the lengthy claims and constructions in conjunction with the asserted
`
`grounds of unpatentability within the allotted 14,000 words per petition.
`
`B.
`
`The Petitions are Non-Cumulative and Consistent with Board
`Guidance and Precedent.
`By challenging all claims in the ‘208 Patent, Petitioners have attempted to
`
`reduce the overall burden and avoid inefficient use of the Board’s and the district
`
`court resources. The Board’s Consolidated Trial Practice Guide (at page 59)
`
`recognizes that petitioners may be justified in bringing multiple petitions against a
`
`single patent “when the patent owner has asserted a large number of claims”.
`
`Patent Owner has previously asserted many of the challenged claims against Apple
`
`and HMD Global, and is expected to do the same against Petitioners. See Ex-1020.
`3
`
`
`
`Both petitions are necessary because each challenges distinct independent
`
`claims and their dependent claims—an approach that was driven by word limits.
`
`See Intel Corp. v. VLSI Technology LLC, IPR2019-01199, Paper 19 at 10 (Feb. 6,
`
`2020) (declining to exercise discretion to deny petitions where “Petitioner contends
`
`each petition is necessary…because each petition is directed to a different
`
`independent claim.”); Microsoft Corp. v. IPA Techs. Inc., IPR2019-00810, Paper
`
`12 at 14 (“Faced with word count limitations and a large number of challenged
`
`claims, Petitioner’s decision to divide its analysis of those claims among a number
`
`of petitions appears reasonable.”). The Board has also found multiple petitions
`
`against a single patent appropriate where, as here, the petitions rely on the same
`
`prior art. See, e.g., IPA Technologies, Inc., IPR2019-00810 Paper 12 at 11-16 (Oct.
`
`16, 2019). The Board has observed that “any duplication of effort that may place
`
`unnecessary burdens on the parties and the Board may be avoided or reduced by
`
`consolidating the instituted IPRs (if institution of review is granted in more than
`
`one proceeding), including consolidating the parties’ briefing, motion practice, and
`
`the oral hearings. Id. at 15; see also Seven Networks, LLC, IPR2020-00156, Paper
`
`10 at 26 (“By asserting overlapping prior art under the present circumstances,
`
`Petitioner challenges the claims across the two petitions in a manner that does not
`
`present an undue burden on the Board or parties.”). Because the same grounds of
`
`unpatentability are raised in both of Petitioners’ two petitions (although against
`
`4
`
`
`
`different claims), any potential duplication of effort can be avoided by
`
`consolidating the proceedings (including a single oral hearing), as Petitioners have
`
`requested in the instant petitions.
`
`Petitioners are aware of the Board’s guidance that one petition should
`
`usually be sufficient to challenge the claims of a patent. Indeed, Petitioners filed a
`
`separate petition, in IPR2022-01006, challenging all claims of a continuation
`
`patent of the ’208 Patent, the ’705 Patent, based on the same prior art references in
`
`the instant petitions. In the -1006 petition, Petitioners were able to challenge all
`
`claims of this related patent in a single petition, but those claims lacked the many
`
`means-plus-function limitations in the ‘208 Patent claims. For the ‘208 patent, a
`
`single petition was not possible. Moreover, all of these related petitions are being
`
`filed within a few days of each other in order to allow consolidation of all of the
`
`proceedings (including for oral hearing) to conserve Board and party resources.
`
`In sum, this is not a situation for which discretionary denial of one petition
`
`would be appropriate or equitable. Both of the instant petitions were filed on the
`
`same day, challenging different and non-overlapping claims based on the same
`
`grounds, and they were not preceded by a preliminary response in any other IPR
`
`challenging the same patent.
`
`Petitioners respectfully request institution of both petitions so that the Board
`
`can efficiently review all of the ‘208 Patent claims.
`
`5
`
`
`
`Dated: June 3, 2022
`
`Respectfully Submitted,
`
` / Dion M. Bregman /
`Dion M. Bregman, Reg. No. 45,645
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, lead counsel for Petitioners
`hereby certifies that on June 4, 2022, a copy of this Petitioners’ Ranking and
`Explanation for Two Petitions Challenging U.S. Patent No. 9,269,208 was sent via
`Priority Mail Express to the correspondence address of record for the ʼ208 patent:
`Crowell/BGL
`P.O. Box 10395
`Chicago, IL 60610
`
`A courtesy copy of this Petitioners’ Ranking and Explanation for Two
`
`Petitions Challenging U.S. Patent No. 9,269,208 was also served via email on
`
`June 3, 2022 on Patent Owner’s counsel of record in the district court litigations
`
`against Apple and HMD involving this patent:
`
`Ben Roxborough (ben.roxborough@klgates.com)
`George C. Summerfield (george.summerfield@klgates.com)
`James A. Shimota (jim.shimota@klgates.com)
`Stewart Mesher (stewart.mesher@klgates.com)
`Elizabeth Abbott Gilman (beth.gilman@klgates.com)
`Jonah Heemstra (jonah.heemstra@klgates.com)
`
`Dated: June 3, 2022
`
`Respectfully Submitted,
`
` / Dion M. Bregman /
`Dion Bregman (Reg. No. 45,645)
`
`7
`
`
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