Director PTABDecision Review
`
`"Ryan, Andrew"; Director PTABDecision Review
`
`Coyle, Steve; Geiger, Nicholas; HID-IPRs; Devkar, Andrew V.
`RE: IPR2022-01045, -01089: Request for Director Review
`Tuesday, January 23, 2024 12:47:00 PM
`
`From:
`
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Thank you for your email. Your request to file a response to the pending Director Requestis
`denied at this time. See Revised Interim Director Review Process, available at
`
`https://www.uspto. gov/patents/ptab/decisions/revised-interim-director-review-process, Section
`5.A.ii.b (“Director Review decisions are generally made based on the existing record, without
`the need for responsive or amici curiae briefing. Responsive or amici curiae briefing may only
`be submitted if requested by the Director.”). If the Director determinesthat briefing is
`necessary, counsel will be informed.
`
`Your email and this response will be entered into the public record. See id. at Section 3.G
`(“All communications will be entered into the record of the proceeding.”).
`
`Thank you.
`
`From: Ryan, Andrew <aryan@cantorcolburn.com>
`Sent: Monday, January 22, 2024 2:20 PM
`To: Director_PTABDecision_Review <Director_PTABDecision_Review@uspto.gov>
`Cc: Coyle, Steve <Scoyle@CantorColburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>;
`HID-IPRs <HID-IPRs@morganlewis.com>; Devkar, Andrew V. <andrew.devkar@morganlewis.com>
`Subject: RE: IPR2022-01045, -01089: Request for Director Review
`
`
`
`To the Director:
`
`The undersigned is lead counsel for Patent Ownerin the referenced IPRs. Patent Owner
`requests leave to file a Reply to Petitioner’s Request for Director Review.
`
`Should the Director need further information, please let us know.
`
`Sincerely,
`
`Andrew C. Ryan
`Counsel for Patent Owner CPC Patent Technologies Pty Ltd.
`
`Andrew C. Ryan
`Partner
`
`Cantor Colburn LLP
`
`IPR2022-01089
`
`Ex. 3101
`
`

`

`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
`HARTFORD WASHINGTON, D.C. ATLANTA HOUSTON DETROIT
`
`
`
`From: Devkar, Andrew V. <andrew.devkar@morganlewis.com>
`Sent: Thursday, January 18, 2024 9:00 PM
`To: Director_PTABDecision_Review@uspto.gov
`Cc: Ryan, Andrew <aryan@cantorcolburn.com>; Coyle, Steve <Scoyle@CantorColburn.com>; Geiger,
`Nicholas <NGeiger@CantorColburn.com>; HID-IPRs <HID-IPRs@morganlewis.com>
`Subject: IPR2022-01045: Request for Director Review
`
`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
`
`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
`
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