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. IPR2022-01093
`
`Patent No. 8,620,039
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 1, 2, 13, 14, 19, and 20)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`III.
`IDENTIFICATION OF CLAIMS AND GROUNDS .................................... 2
`IV. CERTIFICATION AND FEES ...................................................................... 4
`V.
`BACKGROUND ............................................................................................ 4
`A.
`The ’039 Patent .................................................................................... 4
`B.
`The Prior Art ........................................................................................ 7
`1.
`Hsu ............................................................................................. 7
`2.
`Sanford ...................................................................................... 9
`3.
`Tsukamura ................................................................................ 9
`VI. LEVEL OF SKILL ....................................................................................... 10
`VII. CLAIM CONSTRUCTION ......................................................................... 11
`A.
`Terms to be Construed ....................................................................... 11
`1.
`Card Information “Defining” / “Defines” a Memory
`Location ................................................................................... 11
`“unoccupied” .......................................................................... 14
`2.
`B. Means-Plus-Function Limitations ...................................................... 15
`C. Other Previously-Construed Terms .................................................... 16
`1.
`“biometric card pointer system” .......................................... 16
`2.
`“biometric card pointer enrollment system” ...................... 16
`D. Other Previously-Agreed-On Terms .................................................. 16
`1.
`“dependent upon” .................................................................. 16
`2.
`“biometric signature” ............................................................ 16
`VIII. ARGUMENT ................................................................................................ 17
`A. GROUND #1: Claims 1, 2, 13, 14, 19, and 20 are rendered
`obvious by Hsu and Sanford .............................................................. 17
`1.
`Claim 1 .................................................................................... 17
`2.
`Claim 2 .................................................................................... 40
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Claim 13 .................................................................................. 49
`3.
`Claim 14 .................................................................................. 57
`4.
`Claim 19 .................................................................................. 60
`5.
`Claim 20 .................................................................................. 69
`6.
`B. GROUND #2: Claims 1, 2, 13, 14, 19, and 20 are rendered
`obvious by Hsu, Sanford, and Tsukamura ......................................... 73
`1.
`Claim 1 .................................................................................... 73
`2.
`Claim 2 .................................................................................... 85
`3.
`Claim 13 .................................................................................. 86
`4.
`Claim 14 .................................................................................. 90
`5.
`Claim 19 .................................................................................. 92
`6.
`Claim 20 .................................................................................. 93
`IX. CONCLUSION ............................................................................................. 94
`
` ii
`
`

`

`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONERS
`
`EX-1001
`
`U.S. Patent No. 8,620,039 (“’039 Patent”)
`
`EX-1002
`
`Patent Prosecution History of U.S. Patent No. 8,620,039
`
`EX-1003
`
`European Patent Pub. No. EP 0924655A2 to Hsu et al. (“Hsu”)
`
`EX-1004 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2003077077A2 (03/077077) to Kirk Sanford (“Sanford”)
`
`EX-1005
`
`U.S. Patent No. 6,963,660 to Yoshihiro Tsukamura and Takeshi
`Funahashi (“Tsukamura”)
`
`EX-1006
`
`Declaration of Stuart Lipoff Regarding Invalidity of U.S. Patent
`No. 8.620,039
`
`EX-1007
`
`Curriculum Vitae of Stuart Lipoff
`
`EX-1008
`
`European Patent Pub. No. EP 0881608A1 to Walter Leu (“Leu
`Original”)
`
`EX-1009
`
`Certified English Translation of European Patent Pub. No. EP
`0881608A1 to Walter Leu (“Leu”)
`
`EX-1010
`
`U.S. Patent No. 5,790,674 to Robert C. Houvener and Ian P.
`Hoenisch (“Houvener”)
`
`EX-1011
`
`U.S. Patent No. 5,956,415 to McCalley et al. (“McCalley”)
`
`iii
`
`

`

`EXHIBITS FILED BY PETITIONERS
`
`EX-1012
`
`EX-1013
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd
`v. Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 76
`(“Apple CC Order”)
`
`Joint Claim Construction Statement in CPC Patent
`Technologies Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-
`ADA, Dkt. No. 57 (“Apple Joint CC Statement”)
`
`EX-1014
`
`Excerpts from Bloomsbury English Dictionary, 2nd Edition
`(2004)
`
`EX-1015
`
`Excerpts from The Chambers Dictionary, 4th Edition (2003)
`
`EX-1016
`
`CPC Publicly Filed Infringement Allegations Against Apple
`regarding U.S. Patent No. 8,620,039
`
`EX-1017 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2001022351A1 (01/022351) to Gerald R. Black (“Black”)
`
`EX-1018
`
`World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2004055738A1 (04/055738) to Svein Mathiassen and Ivar
`Mathiassen (“Mathiassen”)
`
`EX-1019
`
`Excerpts from Algorithms + Data Structures = Programs,
`Niklaus Wirth (1976) (“Wirth”)
`
`EX-1020
`
`Excerpts from The Art Of Computer Programming (Second
`Edition), Volume 1 Fundamental Algorithms (1973) (“Knuth
`Vol. 1”)
`
`iv
`
`

`

`EXHIBITS FILED BY PETITIONERS
`
`EX-1021
`
`Excerpts from The Art Of Computer Programming, Volume 3
`Sorting and Searching (1973) (“Knuth Vol. 3”)
`
`EX-1022
`
`Perfect Hashing Functions: A Single Probe Retrieving Method
`for Static Sets, Renzo Sprugnoli (1977) (“Sprugnoli”)
`
`v
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`I.
`
`INTRODUCTION
`Petitioners request Inter Partes Review (“IPR”) of claims 1, 2, 13, 14, 19,
`
`and 20 (the “Challenged Claims”) of U.S. Patent No. 8,620,039 (“ʼ039 Patent,”
`
`EX-1001), purportedly owned by CPC Patent Technologies Pty Ltd. (“Patent
`
`Owner”). This petition in IPR2022-01093 is being filed concurrently with
`
`IPR2022-01094, together challenging all claims of the ’039 Patent. Petitioners
`
`request that the schedule, discovery, and hearing of these two IPRs be combined.
`
`II. MANDATORY NOTICES
`Real Party-in-Interest: The real parties-in-interest are related entities 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. ASSA ABLOY AB is
`
`the ultimate parent of all parties-in-interest. None of the entities mentioned in the
`
`Related Matters section below were involved in or offered any assistance to the
`
`Real-Parties-in-Interest with respect to this IPR.
`
`Related Matters: The ʼ039 Patent has not been asserted against Petitioners in
`
`litigation. Petitioners have filed a declaratory judgment action against Patent
`
`Owner and Charter Pacific Corporation Ltd. regarding non-infringement of U.S.
`
`Patent No. 9,665,705, U.S. Patent No. 9,269,208, and the ’039 Patent in ASSA
`
`1
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd., et al., No. 3-22-cv-00694
`
`(D. Ct.). The ’039 Patent was asserted against Apple, Inc. in CPC Patent
`
`Technologies Pty Ltd v. Apple Inc., No. 5:22-cv-02553-NC (N.D. Cal., San Jose
`
`Division), which was filed on February 23, 2021.1 To the best of Petitioners’
`
`knowledge, the ’039 Patent has not been asserted against other parties.
`
`The ’039 Patent was challenged in IPR2022-00600, filed by Apple Inc. on
`
`February 23, 2022. The IPR is pending pre-institution.
`
`Lead Counsel: Dion Bregman (Reg. No. 45,645); Back-up Counsel: Andrew
`
`Devkar (Reg. No. 76,671) and James J. Kritsas (Reg. No. 71,714).
`
`Service: Service of any documents may be made on Morgan, Lewis &
`
`Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Petitioners consent to e-mail service at: HID-IPRs@morganlewis.com
`
`III.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`ʼ039 Patent: This patent was filed on August 10, 2006 and has an earliest
`
`possible priority date of August 12, 2005. It is subject to the pre-AIA provisions of
`
`1 See also EX-1016.
`
`2
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`35 U.S.C. § 102.
`
`Hsu: European Patent Pub. No. EP 0924655A2 titled “Controlled access to
`
`doors and machines using fingerprint matching” to Shi-Ping Hsu, Bruce W. Evans,
`
`Arthur F. Messenger, Denes L. Zsolnay (“Hsu,” EX-1003), was filed November 2,
`
`1998 and published June 23, 1999, and is prior art under §102(b).
`
`Sanford: WIPO Pub. No. WO 2003077077A2 titled “Pin-less card
`
`transaction using user image” to Kirk Sanford (“Sanford,” EX-1004), was filed
`
`March 6, 2003 and published September 18, 2003, and is prior art under §102(b).
`
`Tsukamura: U.S. Patent No. 6,963,660 titled “Fingerprint collating device
`
`and fingerprint collating method” to Yoshihiro Tsukamura and Takeshi Funahashi
`
`(“Tsukamura,” EX-1005), was filed August 16, 2000 and granted November 8,
`
`2005, and is prior art under §102(e).
`
`Petitioners request that the Board find each of the Challenged Claims invalid
`
`on the following grounds:
`
`Ground
`1
`
`Prior Art
`Hsu and Sanford
`
`2
`
`Hsu, Sanford, and Tsukamura
`
`Statutory Basis
`
`§103
`
`§103
`
`Claims
`1, 2, 13, 14,
`19, and 20
`
`1, 2, 13, 14,
`19, and 20
`
`3
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`IV. CERTIFICATION AND FEES
`Petitioners certify that the ’039 Patent is available for IPR and that
`
`Petitioners are not barred or estopped from requesting this IPR on the grounds
`
`identified herein.
`
`Any additional fees may be charged to Deposit Account No. 50-0310 (Order
`
`No. 117139-0008).
`
`V.
`
`BACKGROUND
`A.
`The ’039 Patent
`The ʼ039 Patent describes authentication using both a user’s card—such as a
`
`credit card, smart card, or key-fob—and the “user’s biometric signature.” EX-
`
`1001, Abstract, 1:33-58. For example, the process can be used for authentication
`
`at an “Automatic Teller Machine (ATM)” for cash withdrawal. Id., 9:53-59; EX-
`
`1006, ¶27.
`
`Figure 3 (below) provides a block diagram of the system, which includes a
`
`verification station 127 (yellow box) that receives a user’s card information (e.g.,
`
`information on the credit card) via a “card device reader 112” (blue) and biometric
`
`signature (e.g., a fingerprint) via a “biometric reader 102” (red).2 EX-1001, 7:50-
`
`2 Emphasis/coloring added throughout.
`
`4
`
`

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`Case No. IPR2022-01093
`Patent No. 8,620,039
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`53. The submitted biometric signature is compared against the biometric signature
`
`associated with the card information that is stored in the memory 124 [green]. Id.,
`
`7:53-56.
`
`EX-1001, Fig.3; EX-1006, ¶28.
`
`As illustrated in Figure 4 below, “the card data 604 [yellow] acts as the
`
`memory reference which points, as depicted by an arrow 608 [red], to a particular
`
`memory location at an address 607 [blue] in the local database 124” in the
`
`verification station of Figure 3. Id., 7:31-35. As a result, checking is efficient
`
`because only a specific biometric signature is checked, and “[t]here is no need to
`
`search the entire database 124 to see if there is a match.” Id., 8:34-41.
`
`5
`
`

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`Case No. IPR2022-01093
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`EX-1001 Fig.4. “Once verification is confirmed, the card information 605 is
`
`transferred from the verification station 127 [Fig.3 above] to the back-end
`
`processor 122 [Fig.3 above] for completion of the transaction.” Id., 7:56-59; EX-
`
`1006, ¶29.
`
`The patent discloses many forms of biometric signatures including
`
`“fingerprints,” “face, iris, or other unique signature.” EX-1001, 7:45-47.
`
`In finding claim 1 allowable, the Examiner indicated that “[n]one of the
`
`prior art teaches or suggests defining a memory location in a local memory
`
`6
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`external to card in dependence on information received from the card and
`
`when that memory location is determined to be unoccupied, storing a received
`
`biometric signature therein.” EX-1002, 292. In finding claim 3 allowable, the
`
`Examiner further indicated that “none of the prior art teaches or suggest that a
`
`verification determines if card information provided to a verification station has
`
`previously been provided to that verification station.” Id. The claims were
`
`allowed without prior art rejections. Id., 291-292, 318. The Examiner was not
`
`aware during prosecution of any of the prior art references cited herein.
`
`B.
`
`The Prior Art
`1.
`Hsu
`The Examiner was not aware of Hsu (EX-1003) during prosecution. Just
`
`like the ’039 Patent, Hsu discloses authenticating a user using both the user’s card
`
`information and the user’s biometric signature “for controlling access to building
`
`doors or to machines, such as automatic teller machines (ATMs).” EX-1003,
`
`Abstract, ¶0001, ¶0006; EX-1006, ¶¶32-33.
`
`Just like the ’039 Patent, Hsu discloses using the card information to
`
`efficiently access the user’s stored biometric information. For example, as shown
`
`in Fig.3 below, “[t]he user places his or her card in the reader 62 [blue], which
`
`retrieves an account number or other type of identification unique to the user,”
`
`7
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
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`which is then used “to access the fingerprint database 44 [green] and obtain a
`
`user reference fingerprint….” EX-1003, ¶0024.
`
`EX-1003, Fig.3; see also Fig.2. Further, “[t]he database [green] is basically a
`
`table that associates each user number with a stored fingerprint image….” Id.,
`
`¶0020. The retrieved “user reference fingerprint” is then compared with a “sensed
`
`fingerprint image.” Id., ¶¶0024-25. “A successful match…results in access to the
`
`door or machine being granted to the user,” such as for “conduct[ing] banking
`
`transactions”. Id., Abstract, ¶0024; EX-1006, ¶34.
`
`Just like the ’039 Patent, Hsu recognizes that such an implementation
`
`enables the “fingerprint matching…[to] be achieved rapidly” by not having to
`
`8
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
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`“compare a sensed fingerprint image with many possible stored reference
`
`images.” EX-1003, ¶0013; ¶0004; EX-1006, ¶35.
`
`Sanford
`2.
`The Examiner was not aware of Sanford (EX-1004) during prosecution. Just
`
`like the ’039 Patent and Hsu, Sanford teaches “a method for conducting a [] card
`
`transaction” using biometric verification, for example, at “an ATM machine.”
`
`EX-1004, Abstract, ¶0004, ¶¶0008-09, ¶0016. Sanford also discloses multiple
`
`types of biometrics, such as “facial biometrics,” “iris, voice signature, and
`
`fingerprint.” Id., ¶0020; EX-1006, ¶36.
`
`Like the ’039 Patent, Sanford discloses that “[t]he user may begin the
`
`process by inserting or swiping a credit card into the credit card reader.” EX-1004,
`
`¶0024. It is then “determine[ed] if the user is enrolled.” Id., ¶0025. If yes, “an
`
`image of the user” is taken and compared to “a pre-existing profile [] for the user.”
`
`Id., ¶0026, ¶0019. If a match is found, the user may then proceed with the
`
`remaining steps of the transaction. Id., ¶0030. If the user is not enrolled, he or she
`
`is directed to the enrollment process. Id., ¶0025; EX-1006, ¶37.
`
`Tsukamura
`3.
`The Examiner was not aware of Tsukamura (EX-1005) during prosecution.
`
`Tsukamura teaches a simplistic way to store and access fingerprint templates for
`
`“personal authentication.” EX-1005, Abstract. Tsukamura discloses storing
`
`9
`
`

`

`fingerprint templates in consecutive, fixed-length memory locations.
`
`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`EX-1005, Fig.3. Each fingerprint template is stored “at an index (address)
`
`specified by the index number N index within the collation flash ROM.” Id.,
`
`3:28-34. This is a well-known way to speed up data access by reading/writing
`
`directly to defined locations within a memory. EX-1006, ¶38.
`
`VI. LEVEL OF SKILL
`A person having 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
`
`10
`
`

`

`the field of security and access-control. EX-1006, ¶26.
`
`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`VII. CLAIM CONSTRUCTION
`A.
`Terms to be Construed
`Petitioners propose the following term(s) for construction:
`
`1.
`
`Card Information “Defining” / “Defines” a Memory
`Location
`The claims include the following limitations relating to card information
`
`defining a memory location:
`
`Claims
`Independent claims 1, 13, and 19
`
`Dependent claims 2, 14 and 20
`
`Limitation
`“defining, dependent upon the received
`card information, a memory location
`in a local memory external to the card”
`
`“memory location…defined by the
`subsequently presented card
`information”
`
`These limitations are susceptible to two different interpretations regarding what it
`
`means for the “memory location” to be “defined” by the card information. EX-
`
`1006, ¶43.
`
`First interpretation: a memory location is somehow determined from (or is
`
`dependent on) the card information (“First Construction”). Under this
`
`11
`
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`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`interpretation, the system can look up or otherwise determine a specific memory
`
`location from a user’s card information. EX-1006, ¶44.
`
`Second interpretation: a memory location is specified by the card
`
`information itself (“Second Construction”). Under this interpretation, the card
`
`information itself must specify the physical memory address where the user’s
`
`biometric signature is stored, without the need to look up the memory address in a
`
`database or other data structure. EX-1006, ¶45.
`
`Petitioners believe the Second Construction was intended by the patentee
`
`and should be adopted.3 The specification, as reflected in Figure 4 (below), states
`
`that “the card data 604 [yellow] acts as the memory reference which points, as
`
`depicted by an arrow 608 [red], to a particular memory location at an address
`
`607 [blue] in the local database 124” in the verification station. Id., 7:31-35.
`
`3 Patent Owner appears to be alleging infringement claims under the First
`
`Construction. See EX-1016, p.3.
`
`12
`
`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`EX-1001 Fig.4. Moreover, from the “Summary of Invention” and throughout the
`
`specification, and in the preamble of various claims, the ‘039 Patent consistently
`
`refers to a “biometric card pointer system,” i.e., the card acts as a pointer (specifies
`
`the physical memory address) to the memory location where the user’s biometric
`
`signature is stored. E.g., EX-1001, claims 1, 13, 14; 2:51-52
`
`(“SUMMARY…Disclosed are arrangements, referred to as Biometric Card
`
`Pointer (BCP) arrangements or systems…”); 3:46-47 (“biometric card pointer
`
`system”); 5:17 (same); 5:51 (“FIG. 4 illustrates the biometric card pointer
`
`concept”); 5:52 (“FIG. 5 is a flow chart of a process for using the biometric card
`
`pointer arrangement”); 6:31-35 (“The verification station [] comprises…a
`
`biometric card pointer reader…”); EX-1006, ¶46.
`
`13
`
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`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`Therefore, a POSITA would have understood that the user’s card
`
`information itself specifies the physical memory address (such as by acting as a
`
`pointer) for the user’s biometric signature. EX-1006, ¶47.
`
`The ’039 Patent claims are unpatentable under either interpretation. Under
`
`the First Construction, the claims are invalid under Ground 1 (Hsu + Sanford).
`
`Under the Second Construction, the claims are invalid under Ground 2
`
`(Hsu/Sanford + Tsukamura). EX-1006, ¶48.
`
`“unoccupied”
`2.
`Independent claims 1, 13, and 19 recite “determining if the defined memory
`
`location is unoccupied.” The term “occupied” is explicitly defined in the
`
`specification:
`
`The term “occupied” in this context means that the
`memory location in question has been used in the
`enrolment process for a user, and that the information
`stored at the memory location in question has not been
`deleted by a BCP system administrator.
`
`EX-1001, 9:29-33. The opposite term “unoccupied” should likewise be construed
`
`based on this definition, as follows: a memory location that has not been used in
`
`the enrollment process for a user, or the information stored at the memory location
`
`has been deleted. Id.; EX-1006, ¶49.
`
`14
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`

`

`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`B. Means-Plus-Function Limitations
`In the District Court proceedings between the Patent Owner and Apple,
`
`Judge Albright (WDTX) construed two means-plus-function terms that recite
`
`“means for” (EX-1012, 1-2), which Petitioners propose here. Petitioners also
`
`propose constructions for the remaining means-plus-function terms that Judge
`
`Albright did not yet construe (due to procedural limitations). These constructions
`
`appear in their respective Argument sections below.
`
`Additionally, claims 19 and 20 substitute “code for” instead of “means for”
`
`for some limitations. In the context of these claims and the intrinsic evidence,
`
`“code for” is an equivalent recitation for “means for.” See also Cypress Lake
`
`Software, Inc. v. Samsung Electronics Am., Inc., No. 6:18-cv-00030, Dkt. 174, p36
`
`(E.D. Tex. May 10, 2019) (finding that “‘code for’ does not connote sufficiently
`
`definite structure” and that “the term “code for” is defined only by the function that
`
`it performs.”). The ’039 Patent’s otherwise identical language for some “code for”
`
`and “means for” terms further confirms that they should be treated equivalently.
`
`Id. Therefore, Petitioners submit that these “code for” terms are means-plus-
`
`function terms under Williamson and should be treated the same way as “means
`
`for” terms. Petitioners likewise propose constructions for the “code for” terms in
`
`their respective Argument sections below.
`
`15
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`Case No. IPR2022-01093
`Patent No. 8,620,039
`
`Other Previously-Construed Terms
`C.
`Judge Albright also construed the following terms, which are not material to
`
`the unpatentability of the Challenged Claims, so need not be construed (and which
`
`Petitioners do not necessarily agree with). EX-1006, ¶¶51-54.
`
`“biometric card pointer system”
`1.
`“Nonlimiting preamble term with no patentable weight.” EX-1012, p.1.
`
`“biometric card pointer enrollment system”
`2.
`“Nonlimiting preamble term with no patentable weight.” EX-1012, p.1.
`
`Other Previously-Agreed-On Terms
`D.
`Patent Owner and Apple agreed to constructions for the following terms,
`
`which are not material to the unpatentability. EX-1006, ¶¶55-57.
`
`“dependent upon”
`1.
`“plain and ordinary meaning, defined as ‘contingent on or determined by’.”
`
`EX-1013, p.2.
`
`“biometric signature”
`2.
`“plain and ordinary meaning.” EX-1013, p.2.
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`Case No. IPR2022-01093
`Patent No. 8,620,039
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`VIII. ARGUMENT
`A.
`GROUND #1: Claims 1, 2, 13, 14, 19, and 20 are rendered obvious
`by Hsu and Sanford
`1.
`Claim 14
`
`Preamble 1[P]
`
`Hsu discloses “a method of enrolling in a biometric card pointer
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`system.” EX-1006, ¶¶68-74.5
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`First, Hsu discloses a “biometric card pointer system.” As shown in Fig.1
`
`below, Hsu discloses an access control unit 14 (yellow) that, upon verification,
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`“unlocks the door 12 and allows the user 10 to enter.” EX-1003, ¶0018; VII.C.1.
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`4 A full claim listing can be found in the Appendix.
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`5 For brevity, citations to the expert declaration often appear at the end of
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`paragraphs but apply to the full paragraph in which they are cited.
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`Id., Fig.1. Specifically, “FIG. 2 shows the principal components of the access
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`control unit 14.” Id., ¶0020.
`
`Id., Fig.2. Hsu discloses that the access control unit 14 includes an identification
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`polling transceiver 40 (blue), which transmits polling signals to, and receives reply
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`signals from, the user’s badge 18 (pink). Id., ¶0020. “[A] reply signal [orange] []
`
`includes the user’s identification number or user number.” Id. If a user does not
`
`have a badge or the badge is not working, “[t]he access control unit 14 also
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`includes an integral card reader 32” (blue) as shown in Fig. 1 above. Id., ¶0018;
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`EX-1006, ¶69.
`
`Hsu also discloses a different configuration of the access control unit, as
`
`illustrated in Figure 3:
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`EX-1003, Fig.3. As shown, “this system has a bank card reader 62 [blue] or a
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`similar device for reading some type of identification card.” Id., ¶0024. When
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`“[t]he user places his or her card in the reader 62 [blue],” “an account number or
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`other type of identification unique to the user” is retrieved. Id.; EX-1006, ¶70.
`
`In both embodiments, the access control unit 14 includes an access
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`controller (42 or 42’) that “uses the account number [or user number]…to access
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`the fingerprint database 44 [green] and obtain a user reference fingerprint.”
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`Id., ¶0020, ¶0024.
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`As confirmed by the ’039 Patent, a fingerprint is a type of biometric
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`signature. EX-1001, 7:45-47. Therefore, the bank card in Hsu serves as a pointer
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`to biometric information (i.e., reference fingerprint) stored in database 44.
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`Case No. IPR2022-01093
`Patent No. 8,620,039
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`Therefore, Hsu discloses a “biometric card pointer system [e.g., access control unit
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`14].” EX-1006, ¶72.
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`Second, Hsu discloses “a method of enrolling” in its biometric card pointer
`
`system. Specifically, “FIG. 4 is a block diagram showing a fingerprint enrollment
`
`process as used in FIG[]. 3.” EX-1003, ¶0014.
`
`EX-1003, Fig.4. Hsu’s “enrollment procedure…requires that each user enroll by
`
`presenting a finger to the fingerprint sensor 16 [red], which generates a fingerprint
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`image for a fingerprint enrollment analyzer 64 [orange].” Id., ¶0026. “[T]he user
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`also presents an account number, employee number or similar identity number.”
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`Id. As shown, “[t]he account number is stored in the database 44 [green] in
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`association with the user’s fingerprint image data.” Id. Once a user is enrolled, he
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`or she may use his or her card to access his or her reference fingerprint for
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`verification purposes, as mentioned above. Id., ¶0024; EX-1006, ¶73.
`
`Therefore, Hsu discloses “a method of enrolling [e.g., Hsu’s method of
`
`enrollment] in a biometric card pointer system [e.g., Hsu’s access control unit
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`Case No. IPR2022-01093
`Patent No. 8,620,039
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`14].” EX-1006, ¶¶68-74.
`
`Limitation 1[A]
`
`The claim requires “receiving card information,” which is disclosed by
`
`Hsu in view of Sanford. EX-1006, ¶¶75-82.
`
`Hsu teaches two types of cards: 1) a card having a transponder, and 2) a
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`“machine-readable card.” EX-1003, ¶0011. If a user wears a “badge [] that
`
`includes a transponder” and “approaches a door,” the badge “detects the polling
`
`signal [green] and transmits a reply signal [orange] that includes the user’s
`
`identification number or user number,” as shown in Figure 2 below. Id.,
`
`Abstract, ¶0020.
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`EX-1003, Fig.2. In other words, the “identification polling transceiver 40 [blue],”
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`which is part of the “the access control unit,” receives the “user’s identification
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`number or user number.” Id., ¶0020, Fig.1; EX-1006, ¶76.
`
`A POSITA would have understood that a badge is a card or equivalent to a
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`card. In fact, the ’039 Patent discloses that its card can be a “wireless ‘key-fob’
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`which is a small radio transmitter that emits a radio frequency (RF) signal,” just
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`like Hsu’s badge that uses well-known “[t]ransponder badge technology,
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`sometimes known as RF-ID (radio-frequency identification).” EX-1001, 1:50-52;
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`EX-1003, ¶0018. Because the “user’s identification number or user number” is
`
`part of the signal (orange above) transmitted by the card (badge), a POSITA would
`
`have understood that Hsu’s received “user’s identification number or user
`
`number” is the claimed “card information.” EX-1006, ¶77.
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`If a user uses a “machine-readable card,” then he or she needs to “place[] his
`
`or her card in the reader 62 [blue], which retrieves an account number or other
`
`type of identification unique to the user, and passes [orange] this data to the
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`access controller 42 [brown],” as shown in Figure 3 of Hsu. EX-1003, ¶0024.
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`Id., Fig.3. A POSITA would have understood that Hsu’s received “account
`
`number” is the claimed “card information.” EX-1006, ¶78.
`
`Hsu’s enrollment process also includes “receiving card information.” Hsu
`
`includes various disclosures of “reading data from a card reader,” which
`
`confirm that the card reader (or its equivalent, a polling transceiver) in the access
`
`controller is receiving card information. See EX-1003 ¶0009 (“reading an
`
`identification medium includes a bank card reader integral with the ATM”),
`
`¶0011 (“the identification medium carried by each user includes a machine-
`
`readable card, and the step of reading data from an identification medium
`
`includes reading data from a card reader in which the machine-readable card is
`
`placed by the user”), ¶0007(“machine readable card; and the means for reading
`
`the identification medium includes a card reader capable of reading the
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`machine readable card to extract preliminary identification data”); EX-1006,
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`¶79.
`
`Regarding the enrollment context, as explained for Limitation 1[P], Hsu
`
`discloses that the “enrollment procedure requires that each user enroll by
`
`presenting a finger to the fingerprint sensor” and “present[ing] an account
`
`number, employee number or similar identity number.” EX-1003, ¶0026.
`
`Since Hsu’s enrollment procedure in Figure 4 is applicable “for any of the
`
`configurations,” a POSITA would have understood that regardless of the type of
`
`card used, Hsu’s enrollment process includes receiving card information (e.g.,
`
`account number or employee number).6 Id.; EX-1006, ¶80.
`
`Moreover, Sanford (a combination reference used in this Ground) also
`
`discloses receiving card information during enrollment. A POSITA would have
`
`understood there are at least two ways of presenting Hsu’s “account number,
`
`employee number or similar identity number” (EX-1003, ¶0026)—entering the
`
`number, or presenting a card that includes the number. Sanford discloses both.
`
`For example, as shown in Figure 2, Sanford discloses a user “swip[ing a] card” or
`
`“enter[ing] in [the] card number” in step S200 (blue):
`
`6 Note that the claim does not require receiving the card information from the card.
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`Case No. IPR2022-01093
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`EX-1003, Fig.2; ¶0024. The card number is then used to determine if the card is
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`enrolled in step S202 (yellow); if not, the user is directed to the enrollment process,
`
`as indicated by step S246 (orange). A POSITA would have been motivated to
`
`receive Hsu’s number by both methods, but especially by receiving the number
`
`from the card because the user would not need to remember her number. A
`
`POSITA would also have had a reasonable expectation of success combining Hsu
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`Case No. IPR2022-01093
`Patent