Trials@uspto.gov
`571-272-7822
`
`Paper 37
`Entered: January 31, 2024
`
`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.,
`Petitioner,
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD,
`Patent Owner.
`
`IPR2022-01093
`Patent No. 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 37
`Entered: January 31, 2024
`
`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.,
`Petitioner,
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD,
`Patent Owner.
`
`IPR2022-01093
`Patent No. 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`IPR2022-01093
`Patent 8,620,039 B2
`
`INTRODUCTION
`I.
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`Group, Inc., August Home, Inc., HID Global Corporation, and ASSA
`ABLOY Global Solutions, Inc., (“ASSA” or “Petitioner”) filed a Petition
`requesting inter partes review (“IPR”) of claims 1, 2, 13, 14, 19, and 20 of
`U.S. Patent No. 8,620,039 B2 (Ex. 1001, “the ’039 patent”). Paper 2
`(“Pet”). CPC Patent Technologies PTY, Ltd, (“CPC” or “Patent Owner”)
`filed a Preliminary Response to the Petition. Paper 12 (“Prelim. Resp.”).
`With our email authorization, Petitioner filed a Reply to Patent Owner’s
`Preliminary Response. Paper 16 (“Prelim. Reply”). Also with our
`authorization, Patent Owner filed a Sur-Reply to Petitioner’s Reply.
`Paper 19 (“Prelim. Sur-Reply”).
`Following our Institution Decision (Paper 20, “Inst. Dec.”), in which
`we determined that Petitioner was not time-barred from filing its Petition,
`Patent Owner filed a Response. Paper 24 (“PO Resp.”). See Inst. Dec. 9–
`34. Petitioner filed a Reply. Paper 26 (“Pet. Reply”). Patent Owner filed a
`Sur-Reply. Paper 30 (“PO Sur-Reply”). An oral hearing was held on
`November 9, 2023. A transcript of the hearing has been entered as Paper 37.
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons
`explained below, we determine that Petitioner has met its burden of showing
`by a preponderance of the evidence that claims 1, 2, 13, 14, 19, and 20 are
`unpatentable.
`Real Parties in Interest
`A.
`Petitioner states that ASSA ABLOY AB, ASSA ABLOY Inc., ASSA
`ABLOY Residential Group, Inc., August Home, Inc., HID Global
`
`2
`
`
`
`IPR2022-01093
`Patent 8,620,039 B2
`Corporation, and ASSA ABLOY Global Solutions, Inc., are the real parties
`in interest. 1 Pet. 1. Patent Owner states that CPC Patent Technologies PTY,
`LTD is the real party in interest. Paper 4, 2.
`Related Matters
`B.
`Petitioner indicates that it filed a declaratory judgment against Patent
`Owner with respect to the ’039 patent in ABLOY AB, et al. v. CPC Patent
`Technologies Pty Ltd., et al., No. 3-22-cv-00694, in the United States
`District Court for the District of Connecticut. Pet. 1–2. And Petitioner
`points out that the ’039 Patent is asserted against Apple, Inc., in CPC Patent
`Technologies Pty Ltd v. Apple Inc., No. 3:22-cv-02553, in the United States
`District Court for the Northern District of California, San Jose Division. Id.
`Petitioner points out that Apple challenged the ’039 patent in IPR2022-
`00600. Id. at 2. On October 13, 2023, we entered a Final Written Decision
`(Paper 22) in IPR2022-00600 finding claims 1, 2, 19, and 20 of the ’039
`patent invalid for obviousness.
`In addition to the proceedings noted by Petitioner, Patent Owner
`indicates that “the following judicial and/or administrative matters [] may
`affect, or be affected by, a decision in this proceeding:” CPC Patent
`Technologies PTY Ltd. v. HMD Global Oy, Case No. 6:21-cv-00166 in the
`United States District Court for the Western District of Texas; IPR2022-
`00601; IPR2022-00602; IPR2022-01006; IPR2022-01045; IPR2022-01089;
`and IPR2022-01094. Paper 4, 2–3.
`
`
`1 In its Declaratory Judgment Complaint against Patent Owner, Petitioner
`also refers to ASSA ABLOY Global Solutions, Inc., as “ASSA ABLOY
`Global Solutions, Inc. (‘Hospitality’).” Ex. 2007, 2.
`3
`
`
`
`IPR2022-01093
`Patent 8,620,039 B2
`The ’039 Patent (Ex. 1001)
`C.
`The ’039 patent, titled “Card Device Security Using Biometrics,”
`relates to a biometric card pointer (BCP) system intended to more efficiently
`and securely permit a user to store biometric information during a user
`enrollment phase, and in future verification processes permits the user access
`their account using an identification (ID) card and biometric information
`such as a fingerprint. Ex. 1001, code (54), 2:51–3:11.
`The ’039 patent explains that in the enrollment phase “[t]he card
`user’s biometric signature is automatically stored the first time the card user
`uses the verification station in question (this being referred to as the
`enrolment phase).” Id. at 2:62–64. The ’039 patent explains further that
`“[t]he biometric signature is stored at a memory address defined by the
`(‘unique’) card information on the user’s card as read by the card reader of
`the verification station.” Id. at 2:64–67. Following the enrollment phase,
`the ’039 patent describes that
`[a]ll future uses (referred to as uses in the verification phase) of
`the particular verification station by someone submitting the
`aforementioned card requires the card user to submit both the
`card to the card reader and a biometric signature to the biometric
`reader, which is verified against the signature stored at the
`memory address defined by the card information thereby
`determining if the person submitting the card is authorised to do
`so.
`Id. at 3:4–11. 2 For both enrollment and future uses, the use of the ID card at
`a verification station “is identical from the card user’s perspective, requiring
`
`
`2 The words “enrolment,” “authorise,” and “authorisation” are the British
`spellings of “enrollment,” “authorize,” and “authorization.” See, e.g.,
`https://www.merriam-webster.com/dictionary/authorisation, last visited Jan.
`
`
`
`4
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`IPR2022-01093
`Patent 8,620,039 B2
`merely input of the card to the card reader, and provision of the biometric
`signature ([e.g.] thumb print or retinal scan etc.) to the biometric reader.” Id.
`at 3:12–15.
`Figure 4 of the ’039 patent is reproduced below.
`
`
`
`
`Figure 4, of the ’039 patent, above, illustrates swipe or smart card 601
`including card information 605 encompassing fields for card type 602, card
`range 603, and card data 604. The ’039 patent describes that “the card data
`604 acts as the memory reference which points, as depicted by an arrow 608,
`
`
`5, 2023. We will use the American English spelling of these words except
`where quoted from the ’039 patent.
`
`
`5
`
`
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`IPR2022-01093
`Patent 8,620,039 B2
`to a particular memory location at an address 607 in the local database 124.”
`Id. at 7:31–35. Information 605 can be encoded on a magnetic strip on the
`card, for example. Id. at 7:28–29. The ’039 patent explains that for a
`specific user “[i]n an initial enrolment phase, . . . [t]he card data 604 defines
`the location 607 in the memory 124 where their unique biometric signature
`is stored.” Id. at 7:43–49. And, the ’039 patent explains further that “in
`later verification phases, . . . [t]his signature is compared to the signature
`stored at the memory location 607 in the memory 124, the memory location
`607 being defined by the card data 604 read from their card 601 by the card
`reader 112.” Id. at 7:50–56.
`Figures 6 and 7, reproduced below, depict the differences between
`verification process 205 shown in Figure 6, and enrollment process 207
`shown in Figure 7.
`
`
`Figure 6 illustrates verification process 205, which occurs after the
`enrollment process, illustrated below in Figure 7.
`
`6
`
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`IPR2022-01093
`Patent 8,620,039 B2
`
`
`Figure 7 of the ’039 patent illustrates enrollment process 207 where the
`system at “step 401 stores the biometric signature received by the step 203 in
`the memory 124 at a memory address defined by the card data 604.” Id. at
`9:64–66 (referring to elements 203 and 124 described in Figure 5). Figure 6
`illustrates that verification process 205
`is entered from the step 204 in FIG. 5, after which a step 301
`authorises the transaction. This authorisation step 301 indicates
`that the biometric signal received by the biometric reader 102 in
`the step 203 matches the biometric signature previously stored in
`the local database 124 by a previous enrolment process 207.
`Id. at 9:43–48. Then, “step 204 reads the contents stored at a single memory
`address defined by the card data 604 and checks these contents against the
`biometric signature received in the step 203.” Id. at 8:34–37.
`A difference between verification process 205 and enrollment process
`207 is that the enrollment process includes step 401, which stores the
`biometric signature “at a memory address defined by the card data 604,”
`whereas in verification process 205 “step 204 reads the contents stored at a
`
`7
`
`
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`IPR2022-01093
`Patent 8,620,039 B2
`single memory address defined by the card data 604” and compares the
`stored biometric signature with the input biometric signature. Id. at 9:65–66,
`8:24–26.
`Illustrative Claim
`D.
`Claims 1 and 19 are independent. Each of claims 2 and 20 depends,
`respectively, from independent claims 1 and 19. Claim 1, a method claim,
`including disputed limitations highlighted in italics, illustrates the claimed
`subject matter and is reproduced below:
`1. 1[P] A method of enrolling in a biometric card pointer
`system, the method comprising the steps of:
`1[A] receiving card information;
`1[B] receiving the biometric signature;
`1[C] defining, dependent upon the received card
`information, a memory location in a local memory
`external to the card;
`1[D] determining if the defined memory location is
`unoccupied; and
`1[E] storing, if the memory location is unoccupied, the
`biometric signature at the defined memory location.
`Ex. 1001, 12:29–38. 3 Limitations 1[A]–1[E] are similarly recited in
`independent claim 13 as an apparatus claim for “[a] biometric card pointer
`enrolment system,” and also in independent claim 19 in the context of “a
`processor to execute a method of enrolling in a biometric card pointer
`system.” Id. at 13:67–14:9, 15:25–16:11.
`
`
`3 We adopt and have applied Petitioner’s alphanumeric designations for the
`elements of the challenged claims. See, e.g., Pet. 17–37.
`8
`
`
`
`IPR2022-01093
`Patent 8,620,039 B2
`Prior Art and Asserted Grounds
`E.
`Petitioner asserts that claims 1, 2, 13, 14, 19, and 20 would have been
`unpatentable based on the following grounds:
`Claim(s)
`Challenged
`1, 2, 13, 14,
`Hsu, 5 Sanford,6
`19, 20
`Hsu, Sanford,
`1, 2, 13, 14,
`Tsukamura7
`19, 20
`Petitioner relies on the testimony of Stuart Lipoff. Ex 1006 ¶¶ 1–138.
`Patent Owner presents the testimony of Samuel Russ, Ph.D. Ex. 2039 ¶¶ 1–
`72.
`
`Ground
`1
`
`2
`
`35 U.S.C. §4
`
`Reference(s)/Basis
`
`103(a)
`
`103(a)
`
`II. ANALYSIS
`
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007). “[W]hen a patent claims a structure already known in
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before March
`16, 2013, we refer to the pre-AIA version of the statute.
`5 Ex. 1003, European Patent Appl’n No. EP 0924655 A2 (pub. June 23,
`1999).
`6 Ex. 1004, PCT Appl’n No. PCT/US03/07238 (pub. Sept. 18, 2003).
`7 Ex. 1005, US Patent No. 6,963,660 B1 (Nov. 8, 2005).
`9
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`IPR2022-01093
`Patent 8,620,039 B2
`the prior art that is altered by the mere substitution of one element for
`another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). The question of obviousness is resolved based
`on underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of non-obviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Factors pertinent to a determination of the level of ordinary skill in
`the art include (1) the educational level of the inventor; (2) the type of
`problems encountered in the art: (3) prior art solutions to those problems;
`(4) rapidity with which innovations are made; (5) sophistication of the
`technology, and (6) educational level of workers active in the field. Envt’l.
`Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983)
`(citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d
`1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in
`every case, and one or more of these or other actors may predominate in a
`particular case. Id. Moreover, these factors are not exhaustive but are
`merely a guide to determining the level of ordinary skill in the art. Daiichi
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, the Supreme Court informs
`us that “[a] person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” KSR, 550 U.S. at 421.
`
`10
`
`
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`IPR2022-01093
`Patent 8,620,039 B2
`Petitioner proposes that a person of ordinary skill in the art at the time
`of the ’039 patent “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.” Pet. 10–11
`(citing Ex. 1006 ¶ 26).
`Patent Owner offers the level of ordinary skill we adopted in
`IPR2022-00600 which is that a person of ordinary skill in the art at the time
`of the ’039 Patent
`would have had at least a bachelor’s degree in computer
`engineering, computer science, electrical engineering, or a
`related field, with at least one year of experience in the field of
`human-machine
`interfaces and device access security.
`Additional education or experience might substitute for the
`above requirements.
`See IPR2022-00600, Paper 22 at 12 (PTAB October 13, 2023) (Final
`Written Decision).
`In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary
`skill in the art, in particular education, are not substantively different.
`Petitioner’s proposal requires at least two years of experience in the field of
`security and access control, compared to one year in Patent Owner’s case.
`We maintain our determination of the level of ordinary skill in the art from
`IPR2022-00600 including at least one year of experience as Patent Owner
`urges. On this record, Patent Owner’s proposed level of ordinary skill in the
`art is consistent with our review and understanding of the technology and
`descriptions in the ’039 patent and the asserted prior art references.
`Okajima, 261 F.3d at 1355. Indeed, the difference between one and two
`years of experience in the field is fairly minimal considering that neither
`party asserts that it is necessary to have a significant amount of experience,
`
`11
`
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`IPR2022-01093
`Patent 8,620,039 B2
`e.g., 5–10 years in the field. For consistency we rely on the same level of
`ordinary skill in the art that we determined in IPR2022-00600.
`C. Claim Construction
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe
`the claim “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id. Furthermore, we expressly construe the
`claims only to the extent necessary. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`“A method of enrolling”
`1.
`Patent Owner argues that the independent claims are specifically
`directed to an enrollment process, e.g., “[a] method of enrolling,” recited in
`the preamble of claim 1, and that the preamble should be considered
`limiting. PO Resp. 6. Patent Owner argues that “the ‘method of enrolling’
`in the preamble of Claim 1 provides antecedent basis for ‘the enrolment
`method’ in the body of dependent Claim 2.” Id. (citing Ex. 1001, 12:29–
`42). Petitioner disagrees, arguing that “a ‘method of enrolling’ is nothing
`more than a nonlimiting intended use.” Pet. Reply 13. Petitioner also
`asserts that this term is “not critical to the issues in dispute” and “[e]ven if
`the phrase is limiting, Hsu, Sanford, and Tsukamura each disclose an
`enrollment process.” Id. at 14 (citing Pet. 20, 36–37, 78).
`
`12
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`IPR2022-01093
`Patent 8,620,039 B2
`Because Petitioner contends that Hsu, Sanford, and Tsukamura each
`disclose an enrollment process and Patent Owner does not expressly dispute
`that they do, in this case we need not explicitly determine whether the term
`is limiting. We can agree that “[a] method of enrollment” provides
`antecedent basis for at least dependent claim 2 and that the preamble
`provides context to the recited method step limitations in the body of
`independent claim 1. See Ex. 1001 12: 41–42 (dependent claim 2 referring
`“to the enrollment method of claim 1”). Apart from considering the
`limitations of claim 1 within the context of an enrollment process, because
`the term does not create any particular dispute between the parties that we
`need to resolve, we need not determine whether it is limiting.
`“dependent upon”
`2.
`Petitioner indicates that the parties agreed in the district court
`litigation that “dependent upon,” recited in claim 1 and 19, should be given
`its plain and ordinary meaning, “defined as ‘contingent on or determined
`by.’” Pet. 16 (citing Ex. 1013, 2). Patent Owner agrees, adding that “a
`memory location in a local memory which merely corresponds to, but is not
`contingent upon or determined by, the received card information is not
`‘dependent upon’ the received card information.” PO Resp. 10 (citing
`Ex. 2039 ¶ 33). Patent Owner points out that Petitioner asserts the meaning
`of “dependent upon” is not material to patentability. Id. Patent Owner
`contends, however, that “because ‘dependent upon’ is integral to the
`‘defining, dependent upon the received card information, a memory location
`in a local memory external to the card’, its meaning must be considered
`when analyzing the entire claim term.” Id.
`
`13
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`
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`IPR2022-01093
`Patent 8,620,039 B2
`We agree that for purposes of understanding claim 1, we should
`consider the plain and ordinary meaning of “dependent upon,” so that
`limitation 1[c] is understood as follows:
`[1c] defining, [contingent upon or determined by] the
`received card information, a memory location in a local
`memory external to the card;
`Accordingly, in this proceeding, we will consistently apply the plain and
`ordinary meaning of “dependent upon” which is “contingent upon or
`determined by.”
`3.
`
`“defining, dependent upon the received card information,
`a memory location in a local memory external to the
`card”
`Patent Owner argues that “the proper construction of this entire clause
`is: ‘the system sets or establishes a memory location in a local memory
`external to the card, said location being contingent upon or determined by
`the received card information.’” PO Resp. 11. Patent Owner asserts that a
`person of ordinary skill in the art “would interpret the word ‘defining,’
`especially in the context of enrollment, to mean ‘setting’ or ‘establishing.’”
`Id. at 12.
`Petitioner proposes alternative constructions, first that “defining”
`means that “a memory location is somehow determined from (or is
`dependent on) the card information.” Pet. 11. Second, that “defining”
`means “a memory location is specified by the card information itself.”
`Petitioner contends that the second construction is most consistent with the
`specification of the ’039 patent specification. Id. at 12. According to
`Petitioner, and considering that the ’039 describes “a biometric card pointer
`system,” a person of ordinary skill in the art “would have understood that the
`user’s card information itself specifies the physical memory address (such as
`
`14
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`IPR2022-01093
`Patent 8,620,039 B2
`by acting as a pointer) for the user’s biometric signature.” Id. at 13 (citing
`Ex. 1006 ¶ 47).
`Consistent with our prior decision in IPR2022-00600, we determine,
`also in this proceeding, that Patent Owner’s construction is sufficiently
`accurate. See Apple, Inc. v. CPC Patent Technologies, Ltd., IPR2022-
`00600, Paper 22, 29–39 (Final Written Decision); see also NTP Inc., v.
`Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (noting that,
`when construing claims in patents that derive from the same parent
`application and share common terms, “we must interpret the claims
`consistently across all asserted patents”). In IPR2033-00600, we explained
`that
`
`[c]onsidering the abstract and the specification of the ’039 patent,
`what “defining, dependent upon . . .” means as a whole, in the
`context of claim 1 and “a method of enrolling,” is that during an
`enrollment process, the claimed “biometric signature,” e.g., a
`fingerprint, is not yet stored in the memory and no memory
`location or address has been “set” or “established” for the
`fingerprint. When the fingerprint, and then the card, is provided
`to the system during enrollment, the card information provides
`data that establishes where, e.g., at what memory location or
`address, the system will store the fingerprint data.8
`IPR2022-00600, Paper 22, 30. We also explained that “[i]mportantly . . . we
`do not understand that ‘defining . . . a memory location,’ or Patent Owner’s
`alternative wording, ‘establishing’ or ‘setting,’ means ‘[creating] . . . a
`memory location in a local memory.’” Id. at 32. We explained further that
`
`
`8 We use the terms “memory location” and “memory address”
`interchangeably because, in terms of computer memory, an “address” is
`well-understood as “[a] number specifying a location in memory where data
`is stored.” MICROSOFT COMPUTER DICTIONARY, 5th Ed. (2002) Microsoft
`Press.
`
`15
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`IPR2022-01093
`Patent 8,620,039 B2
`“[w]hile we might agree that ‘the memory location cannot [already be
`defined],’ . . . we do not agree that it ‘cannot already exist.’” Id. at 33.
`During the oral hearing in this proceeding, Patent Owner’s counsel
`argued that “Patent Owner in this case has not argued that defining means
`creating.” Tr. 31:3–4. Patent Owner’s counsel argued further, “[a]ll we’re
`saying that Claim 1 requires is that when a user swipes their card, that is the
`information that is on the card, not – in that moment in time, not something
`else in the system, but the information on the card that directs the system
`where to store that particular user's fingerprint or other biometric data.” Id.
`at 31:7–11.
`Considering Patent Owner’s arguments and asserted claim
`construction with respect to the phrase “defining, dependent upon” and
`limitation 1[C] as a whole, we maintain the claim construction given in
`IPR2022-00600 for the reasons given in the Final Written Decision.
`IPR2022-00600, Paper 22, 30. We understand that during an enrollment
`process the claimed “biometric signature,” e.g., a fingerprint, is not yet
`stored in the memory, and no memory location or address has been
`“defined,” as in “set” or “established,” in the memory for storing the
`fingerprint, until card information is received. Once the card information
`and fingerprint are received during enrollment, the card information
`provides data that establishes where, i.e., at what memory location or
`address, the system will store the fingerprint data.
`“unoccupied”
`4.
`In our Institution Decision, as argued by Petitioner and based on the
`express written description of the ’039 patent, we determined that
`“unoccupied” means “a memory location that has not been used in the
`enrollment process for a user, or the information stored at the memory
`
`16
`
`
`
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`location has been deleted.” Inst. Dec. 38–39; see also Ex. 1001, 9:29–33
`(“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.”). Patent Owner does not dispute this
`construction. PO Resp. 14.
`Although patentability on the claims at issue in this case does not turn
`on the construction of this term, we nevertheless maintain our construction
`from our Institution Decision that “unoccupied” means “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.” Inst. Dec. 38–
`39.
`
`5.
`
`Other claim terms agreed upon and construed by the
`District Court
`The parties indicate that the following terms have been construed by
`the District Court:
`“biometric card pointer system” – Nonlimiting preamble
`term with no patentable weight;
`
`“biometric card pointer enrollment system”– Nonlimiting
`preamble term with no patentable weight;
`
`“biometric signature” – Plain and ordinary meaning.
`Pet. 16 (citing Ex. 1012, 1); PO Resp. 15 (citing Ex. 1012, 2).
`Considering these constructions and that our analysis does not turn on
`any particular claim construction for these terms, and because these
`constructions are not in dispute, we need not determine any specific claim
`construction for these terms in this proceeding.
`
`17
`
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`6. Means-plus-function terms
`In our Institution Decision we accepted Petitioner’s proposed
`constructions for the several “means for” and “code for” limitations recited
`in claims 13, 14, 19, and 20. See Inst. Dec. 43 (The Board explaining that
`“we find Petitioner’s proposed constructions of these term under 35 U.S.C.
`§ 112(6) consistent with the record in this case.”). These constructions are
`also consistent with the District Court proceeding. Inst. Dec. 39–43; see
`also Ex. 1012, 1–4. For its part, Patent Owner states that it “takes no
`position on these proposed constructions as they are not material to the
`alleged grounds for unpatentability asserted in the Petition.” PO Resp. 15.
`Based on our review of the complete trial record and because
`patentability on the claims at issue in this case does not turn on construction
`of the relative structures and functions of these means-plus-function terms,
`and because they are not in dispute, we maintain the constructions from our
`Institution Decision including that “code for” is an equivalent recitation for
`“means for.” Inst. Dec. 39–43.
`D. Ground 1: Claims 1, 2, 13, 14, 19 and 20 – Obviousness over
`Hsu (Ex. 1003) and Sanford (Ex. 1004)
`For the reasons below, and on the complete record before us,
`Petitioner has shown by a preponderance of the evidence that claims 1, 2,
`13, 14, 19, and 20 would have been obvious over Hsu and Sanford.
`Hsu (Ex. 1003)
`1.
`Titled “Controlled Access to Doors and Machines Using Fingerprint
`Matching,” Hsu describes “[a] system and related method for controlling
`access to building doors or to machines, such as automatic teller machines
`(ATMs).” Ex. 1003, Abstract, codes (54), (57). Hsu describes using “an
`account number or employee number, to access a fingerprint database (44)
`
`18
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`Patent 8,620,039 B2
`and retrieve reference fingerprint data previously stored there during an
`enrollment procedure.” Id., Abstract. Figure 3 from Hsu, as annotated by
`Petitioner (Pet. 8), is reproduced below.
`
`
`
`Hsu’s Figure 3 is a block diagram illustrating card reader 62 (blue) reading
`“an account number or other type of identification unique to the user, and
`passes this data to the access controller 42' [(brown)] over line 48.”
`Ex. 1003, 6:10–12. Based on the user’s unique identification, access
`controller 42' communicates with finger print database 44 (green) “to access
`the fingerprint database 44 and obtain a user reference fingerprint on line 56
`from the database.” Id. at 6:14–16. Hsu explains that
`[t]he controller 42' also sends a “start” signal on line 58 to the
`fingerprint correlator 46, which compares the reference
`fingerprint with a subject fingerprint image supplied from the
`sensor 16 over line 54. If the correlator 46 finds a match, the
`correlator sends a signal over line 58 to the access controller 42',
`
`19
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`which transmits an appropriate signal to the computer 60 on line
`28, indicating that access has been granted.
`Id. at 6:16–24.
`Hsu also describes an enrollment process shown in Figure 4 and
`reproduced below.
`
`
`Hsu’s Figure 4 illustrates a block diagram showing that a user’s fingerprint
`is obtained by fingerprint sensor 16 and passes through fingerprint
`enrollment analyzer 64 before being stored in fingerprint database 44. Id. at
`7:51–8:23. Hsu explains that, along with providing a fingerprint during
`enrollment, “[a]t the same time, the user’s identity has to be independently
`verified, by some means other than fingerprint matching, as indicated in
`block 66, and the user also presents an account number, employee number or
`similar identity number.” Id.
`Sanford (Ex. 1004)
`2.
`Sanford is titled “Credit Card Transaction without using a Pin with
`Automated Cashier Machine” and describes “[a]n automated cashier
`machine (ACM) is provided that offers a secure and convenient way for
`users to access cash from their card without using a PIN.” Ex. 1004,
`Abstract, codes (54), (57). Sanford describes that “[b]y verifying a user’s
`image using facial biometrics, transactions may be conducted without using
`
`20
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`a pin.” Id. ¶ 7. Sanford explains further that “[o]ther methods of
`verification known in the art may also be used, such as iris, voice signature,
`and fingerprint technology.” Id. ¶ 20. The relevant part of Sanford’s Figure
`2, as annotated by the Board, is reproduced below.
`
`
`Sanford’s figure 2 is a block diagram illustrating a method for performing a
`PIN-less credit card transaction using an ACM (automated cashier machine).
`Id. ¶ 24. After swiping a user’s card at step 200, the system determines
`whether the user’s card information is already stored, i.e., enrolled, and “the
`ACM 12 determines if the credit card account number of the user is enrolled
`to use the PIN-less credit card system.” Id. In determining if the user is
`enrolled, “ACM 12 may communicate with ACM computer system 18 to
`
`21
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`look up the user’s credit card number.” Id. ¶ 25. At step 202, highlighted
`yellow above, ACM 12 determines an enrollment course of action; if the
`card is not enrolled, moving to step 232, or, if the card is already enrolled,
`conducting a verification course of action via step 204. Id.
`Independent Claim 1
`3.
`We consider initially the elements of claim 1.
`Petitioner’s Arguments
`a)
`(1) Preamble – 1[P] “A method of enrolling in a
`biometric card pointer system”
`To the extent the preamble could be considered limiting, Petitioner
`argues that Hsu teaches “a biometric card pointer system” where “access
`control unit 14 includes an access controller (42 or 42’) that “uses the
`account number [or user number] . . . to access the fingerprint database 44
`[green] and obtain a user reference fingerprint.” Pet. 19 (citing
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