`
`
`
`
`
`
`
`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,
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioners,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01093
`Patent 8,620,039
`
`
`
`
`
`
`
`
`
`
`
`EXPERT DECLARATION OF SAMUEL RUSS, PHD.
`
`U.S PATENT NO 8,620,039 (CLAIMS 1-20)
`
`
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`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`QUALIFICATIONS AND EXPERIENCE ..................................................... 2
`
`III.
`
`INFORMATION CONSIDERED ................................................................... 7
`
`IV. LEGAL STANDARDS ................................................................................... 7
`
`
`
`
`
`
`
`Legal Standards: Person Of Ordinary Skill In The Art ......................... 8
`
`Legal Standards: Obviousness .............................................................. 9
`
`Legal Standards: Claim Construction .................................................10
`
`V.
`
`LEVEL OF SKILL IN THE ART .................................................................11
`
`VI. CLAIM CONSTRUCTION ..........................................................................11
`
`VII. OPINIONS REGARDING PETITIONER’S INVALIDITY
`GROUNDS ....................................................................................................17
`
` Ground 1 – The Combination of Hsu and Sanford Does Not
`Teach Or Suggest “defining, dependent upon the received card
`information, a memory location in a local memory external to
`the card”...............................................................................................18
`
`1.
`
`2.
`
`Hsu does not teach or suggest that card information
`“defines” the memory location of the fingerprint data
`during enrollment ......................................................................19
`
`Hsu’s description of its database does not save Petitioner
`and Mr. Lipoff’s argument under Ground 1 .............................22
`
`
`
`Ground 2 - The Combination of Hsu, Sanford and Tsukamura
`Does Not Teach Or Suggest "defining, dependent upon the
`received card information, a memory location in a local
`memory external to the card" ..............................................................23
`
`1.
`
`Tsukamura’s card information plays no part in the
`enrollment process or storage of the biometric
`information ................................................................................23
`
`ii
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`2.
`
`3.
`
`Tsukamura’s user-driven index system is significantly
`different from the pointer system of the ’039 patent ................25
`
`A POSITA would not have been motivated to combine
`Tsukamura and Hsu ..................................................................27
`
`
`
`Other Independent Claims ...................................................................31
`
` Dependent Claims ...............................................................................32
`
`
`
`
`
`iii
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`I.
`
`INTRODUCTION
`
`1.
`
`I, Samuel Russ, submit this Declaration in support of Patent Owner
`
`CPC Patent Technologies Pty Ltd. (“CPC”) Patent Owner’s Response to the
`
`Petitioners’, ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`
`Group, Inc. (“Yale”), August Home, Inc. (“August”), HID Global Corporation
`
`(“HID”), ASSA ABLOY Global Solutions, Inc. (“Hospitality”) (collectively
`
`“Petitioners”) Petition for Inter Partes Review (“Petition” or “IPR”) against U.S.
`
`Patent No. 8,620,039 (the “’039 patent”).
`
`2.
`
`I have been asked to review the Petition, as well as the Declaration of
`
`Stuart Lipoff (EX-1006) and the transcript of his deposition (EX-2041), as
`
`submitted in the above-captioned IPR (and the exhibits cited in each) in which
`
`Petitioners and Mr. Lipoff have asserted and offered opinions that the claims of the
`
`’039 patent are obvious.
`
`3.
`
`All of the opinions set forth in this Declaration are based on my own
`
`personal knowledge, professional experience, education, and judgment in
`
`consideration of the documents, materials and information referenced herein.
`
`4.
`
`I am being compensated for my services as an independent expert in
`
`these proceedings at an hourly rate of $450. I expect to be available to provide oral
`
`testimony should the need arise. My compensation is not in any way contingent
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`1
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`upon the outcome of any Inter Partes review. I have no financial or personal
`
`interest in the outcome of these proceedings, or of any related litigation.
`
`II. QUALIFICATIONS AND EXPERIENCE
`
`5. My experience and education are detailed in my curriculum vitae
`
`(“CV”), which I understand has been submitted into the record of this proceeding
`
`as EX-2040. My CV also lists publications on which I am a named author and
`
`identifies parties on behalf of whom I have previously provided expert testimony.
`
`6.
`
`I have experience in a number of areas, and have particular expertise
`
`in electronics, security systems, including biometric security systems, device
`
`access security, payment terminals, and their related technologies, such as in debit-
`
`capable payment terminals and digital set-top boxes, which include design,
`
`physical security, system layout, and cryptography schemes. This expertise is
`
`directly applicable to the technical area of the ’039 patent, which relates to a
`
`system for providing secure access to a controlled item, such as physical locking
`
`mechanism or an electronic key circuit, using physical biometric attributes.
`
`7.
`
`I received my bachelor’s degree in electrical engineering from
`
`Georgia Institute of Technology in 1986. I then received my Ph.D. in electrical
`
`engineering from Georgia Institute of Technology in 1991.
`
`8.
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`2
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`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have actively published research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As an example of the type of
`
`research I perform, I helped to manage the development of a fully functional
`
`“CubeSat” satellite that was successfully launched into space in September 2022
`
`and sent back data. I teach a graduate-level class in cryptographic methods, as well
`
`as courses in embedded system design and signal integrity. The graduate-level
`
`cryptographic methods course covers the techniques needed to create secure
`
`systems, such as biometric systems, and preserve confidentiality and data integrity.
`
`The embedded-system design course covers the design of practical computer-based
`
`embedded computing systems, such as those found in alarm systems and secure
`
`payment terminals. The course specifically includes topics such as security,
`
`privacy, networking, and computer system design, all of which are needed for
`
`biometric systems. The signal integrity course covers the circuit design techniques
`
`to minimize crosstalk and electromagnetic susceptibility. To go with the course, I
`
`also authored a textbook on the subject of signal integrity, now in its second
`
`edition. The textbook covers the techniques needed to develop secure computer
`
`3
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`systems, such as systems that do not emit unwanted signals and are not susceptible
`
`to outside interference.
`
`9.
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco’s
`
`Service Provider Video Tech. Group), where I managed a cable set-top box (STB)
`
`design group that designed four STB models, including the Explorer 4200 (non-
`
`DVR) and 8300 (DVR) models. Both models sold several million units. As design-
`
`group manager, I was responsible for managing the design and prototyping
`
`activities of the group, for interfacing with other groups (especially integrated-
`
`circuit design, procurement, software developers, the factory where prototypes
`
`were built, and product managers), and for maintaining the hardware and
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`mechanical development schedule. The hardware, software, and system design of
`
`cable set-top boxes included security at a variety of levels, including conditional
`
`access, broadcast encryption, key management, and service authorization.
`
`Additionally, designing for the manufacturing process required design and
`
`implementation physical access security measures to restrict physical access to the
`
`secure elements of a set-top box, including flash memory, the secure
`
`microcontroller, and the smart-card reader. I am a named inventor on fifty-one (51)
`
`patent applications that were filed while I was at Scientific-Atlanta, twenty-nine
`
`(29) of which have issued as U.S. patents as of the writing of this declaration.
`
`4
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`10. From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`This terminal contained the cryptographic systems and physical security needed to
`
`conduct debit transactions, including the use of ATM cards, debit cards, and PIN
`
`numbers. Debit-capable terminals require a great deal of physical and
`
`communications security and key management because of their direct connection
`
`to the financial and banking community. As a result, I developed and enhanced my
`
`expertise in device access security, considering physical protection, software
`
`protection, encryption, and communications. The eN-Touch 1000 could capture
`
`human signatures (and transmit them for storage) and was the first widely sold
`
`payment terminal to use capacitive touch-screen technology, which has biometric
`
`security applications. Capacitive touch screens have several advantages over their
`
`predecessor (resistive touch screens). One major advantage is that they operate off
`
`of the presence or absence of a conductive medium (such as a user’s finger) and so
`
`can function as a fingerprint scanning technology because they can work at a finer
`
`resolution than resistive touch. I directly managed the development of the
`
`capacitive touch screen of the eN-Touch 1000, and I am an expert in how
`
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`capacitive touch technology works, including with respect to biometric security
`
`applications.
`
`11. From 1992 to 1994, I was Director of Manufacturing at Dickerson
`
`Vision Technologies (now Cognex) where I oversaw the development and
`
`implementation of a manufacturing plan for the company. My responsibilities
`
`included the development of human-machine interfaces for machine-vision
`
`systems.
`
`12.
`
`I have also authored over 30 journal articles and conference papers. A
`
`conference paper on digital video recording won second place in a “Best Paper”
`
`competition at the 2011 International Conference on Consumer Electronics in Las
`
`Vegas, NV.
`
`13. Through my research and work, I have been a joint inventor on 29
`
`issued U.S. patents related to, among other things, client devices, including device
`
`access security, multimedia systems, and interactive programming. Additionally, I
`
`have been a joint inventor on nine issued European patents.
`
`14. Therefore, based on my education, professional experience of 35
`
`years, and my writing of scholarly books and publications, I am an expert in the
`
`relevant field of the ’039 patent and have been an expert in this field since well
`
`before August 12, 2004, which I understand is one year before the date to which
`
`the ’039 patent claims priority. I am intimately familiar with how a person having
`
`6
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`ordinary skill in the art would have understood and used the terminology found in
`
`the ’039 patent as of that date.
`
`III.
`
`INFORMATION CONSIDERED
`
`15. All of the opinions included herein are based on my personal
`
`knowledge, my education, and my professional experience and judgment in
`
`consideration of the documents submitted in this IPR proceeding, the papers and
`
`exhibits submitted by both parties, the documents discussed in the body of this
`
`Declaration, including the Declaration of Petitioner’s expert witness Stuart Lipoff
`
`and the documents referenced therein, and Mr. Lipoff’s deposition transcript. I
`
`have also reviewed certain documents filed in connection with the ongoing IPR
`
`filed by Apple concerning the ’039 patent, namely IPR2022-00600. A complete list
`
`of the documents and information I have considered in forming my opinions is
`
`attached as Appendix A.
`
`IV. LEGAL STANDARDS
`
`16. The paragraphs in this section present an overview of some legal
`
`principles that counsel has explained to me, and which I have applied in arriving at
`
`my conclusions. I am not an attorney or a legal expert, and I offer no opinions on
`
`the law.
`
`17.
`
`I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious in light of what
`
`7
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`came before it. Patents and publications which predated the invention are
`
`generally referred to as “prior art.”
`
`18.
`
`I understand that in this proceeding the burden is on the party
`
`asserting unpatentability to prove it by a preponderance of the evidence. I
`
`understand that “a preponderance of the evidence” is evidence sufficient to show
`
`that a fact is more likely than not.
`
`19.
`
`I have been informed that the terms in a claim subject to Inter Partes
`
`Review are given the meaning they would have had to a person of ordinary skill in
`
`the art at the time of the invention. After being construed in this manner, the
`
`claims are compared with the prior art.
`
` Legal Standards: Person Of Ordinary Skill In The Art
`
`20.
`
`I understand from counsel that patents are written to be
`
`understandable to a person having ordinary skill in the appropriate art. I
`
`understand that factors that may be considered in determining the ordinary level of
`
`skill in the art include: 1) the types of problems encountered in the art, 2) the prior
`
`art solutions to those problems, 3) the rapidity with which innovations are made, 4)
`
`the sophistication of the technology, and 5) the educational level of active workers
`
`in the field.
`
`21.
`
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art of the patents-at-issue at the time of the claimed inventions, I
`
`8
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`considered these factors. It is my understanding that not all such factors may be
`
`present in every case, and one or more of them may predominate.
`
`
`
`22.
`
`Legal Standards: Obviousness
`
`I understand that determining whether a claimed invention is obvious
`
`requires one to determine the scope and content of the prior art, identify the
`
`differences between the asserted claims and the prior art, determine the level of
`
`ordinary skill in the pertinent art at the time the invention was made, and then
`
`decide whether each claim as a whole would have been obvious to a person of
`
`ordinary skill in the pertinent art when viewing the prior art.
`
`23.
`
`I understand that a prior art combination is able to render a patent
`
`claim as obvious only if each and every claim limitation is taught or suggested by
`
`the prior art combination.
`
`24. Moreover, even if the prior art teaches each and every element in the
`
`claims at issue, I understand that fact alone would not prove obviousness. Most, if
`
`not all, inventions rely on building blocks of prior art. I understand that it is
`
`necessary to determine whether there was an apparent reason to combine the
`
`known elements in the fashion claimed by the patents-at-issue.
`
`25. Thus, in evaluating whether a claimed invention is obvious, one must
`
`consider whether there was a reason that would have prompted a person having
`
`ordinary skill in the art to combine the known elements in a way that the claimed
`
`9
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`invention does, taking into account factors such as (1) whether the claimed
`
`invention was merely the predictable result of using prior art elements according to
`
`their known function, (2) whether the claimed invention provides an obvious
`
`solution to a known problem in the relevant field, (3) whether the prior art teaches
`
`or suggests the desirability of combining elements claimed in the invention, (4)
`
`whether the prior art teaches away from combining elements in the claimed
`
`invention, (5) whether it would have been obvious to try the combinations of
`
`elements (such as when there is a design need or market pressure to solve a
`
`problem, and there are a finite number of identified predictable solutions), and (6)
`
`whether the change resulted more from design incentives or other market forces.
`
`26.
`
`In addition, to find that the prior art rendered the invention obvious,
`
`one must find that it provided a reasonable expectation of success, one must
`
`consider each claim separately, and one cannot use hindsight – i.e., one can
`
`consider only what was known at the time of the invention. I understand that
`
`hindsight bias is likely to be present where the asserted motivation to combine does
`
`not provide a sufficient reason, supported by rational underpinnings, for combining
`
`the references in the claimed manner.
`
` Legal Standards: Claim Construction
`
`27.
`
`I have been informed that the terms of the patents-at-issue should be
`
`construed under the same claim construction standard that would be used to
`
`10
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`construe the claim in a civil action. I have also been informed that the meaning of
`
`a term may be evidenced by a variety of sources, including the words of the claims,
`
`the specification, drawings and prior art.
`
`28.
`
`I understand that extrinsic evidence may be consulted for the meaning
`
`of a claim term as long as it is not used to contradict claim meaning that is
`
`unambiguous in light of the patent’s intrinsic evidence.
`
`V. LEVEL OF SKILL IN THE ART
`
`29.
`
`I understand that the Board adopted the following level of ordinary
`
`skill in the art in the ongoing IPR concerning the ’039 Patent that was filed by
`
`Apple: “at least a bachelor’s degree in computer engineering, computer science,
`
`electrical engineering, or a related field, with at least one year experience in the
`
`field of human-machine interfaces and device access security.” See IPR2022-
`
`00600, Paper 8 at 9. Further, “[a]dditional education or experience may substitute
`
`for the above requirements.” Id. For purposes of my analysis, I have applied this
`
`definition of a person of ordinary skill in the art. I also note that I satisfied these
`
`criteria as of August 13, 2003.
`
`VI. CLAIM CONSTRUCTION
`
`30.
`
`I understand that the Board adopted certain claim constructions in its
`
`Institution Decision is this matter, which are set forth in the table below.
`
`
`
`
`
`11
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`
`
`Claim Term
`“unoccupied”
`
`means-plus-function
`limitations
`
`“biometric signature”
`
`Construction
`“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”
`certain purported means-plus-function limitations in
`Claims 13, 14, 19, and 20 as discussed at pages 39-43
`of the Board’s Institution Decision
`“plain and ordinary meaning”
`
`
`
`31.
`
`In my analysis, I have applied these constructions. In addition, I have
`
`applied the plain and ordinary meaning to a person of ordinary skill in the art
`
`(“POSITA”) at the time of invention to any other claim terms.
`
`32.
`
`In addition, I understand that in the related District Court litigation
`
`between Apple and Patent Owner the parties agreed that the “dependent upon”
`
`portion of the claim term should be construed as: Plain and ordinary meaning,
`
`defined as “contingent upon or determined by.” I also understand that the Board
`
`adopted the “contingent upon or determined by” construction in the co-pending
`
`IPR relating to the ’039 Patent filed by Apple. See IPR2022-00600, Paper 8 at 10.
`
`33. Under this previously adopted construction, 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. In my opinion, this construction of “dependent upon” is correct
`
`and should be adopted in this proceeding as well.
`
`12
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`34.
`
`In addition, I have reviewed Dr. Easttom’s Declaration submitted as
`
`Ex. 2001 in connection with the co-pending IPR filed by Apple (IPR2022-00600).
`
`I agree with Dr. Easttom that the independent claims of the ’039 patent are drafted
`
`in a way that each limitation builds on those before it. First, the claim requires (1)
`
`receiving card information and (2) receiving a biometric signature. Next, the (1)
`
`received card information is used to (3) define a memory location in memory
`
`external to the card. Third, the claimed method (4) determines whether that (3)
`
`defined memory location is unoccupied. If it is (4) determined that the memory
`
`location is unoccupied, the method culminates in (5) storing the (2) biometric
`
`signature at the (3) defined memory location. In other words, the fifth step in this
`
`method requires.
`
`35.
`
`I understand that Petitioner’s expert, Mr. Lipoff, has also agreed that
`
`the claims describe a method in terms of a series of steps which much occur in a
`
`particular order. EX-2041 at 18:12 – 20:19.
`
`36. While I do not express an opinion as to whether the preambles of any
`
`claims are limiting, which I understand is a question of legal significance, it is my
`
`opinion is that the claims are directed towards the ultimate purpose of storing
`
`biometric information at a defined memory location within the context of
`
`enrollment.
`
`13
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`37.
`
`In my opinion, a POSITA would understand that Claims 1, 13 and 19
`
`are directed to enrollment, ultimately concluding with storing the received
`
`information. As the Board has already observed,
`
`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 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.
`
`
`Inst. Dec. at 7 (emphasis added by the Board). Each of independent Claims 1, 13,
`
`and 19 culminates with “storing…the biometric signature at the defined memory
`
`location,” which is the natural end result of an enrollment process. EX1001 at
`
`12:37-38, 14:8-9, 16:10-11 (emphasis added). Moreover, the claims themselves are
`
`structured such that they must be performed in a step-wise order, including with
`
`certain later elements relying upon prior elements for antecedent basis
`
`(1) receiving card information;
`
`(2) receiving the biometric signature;
`
`(3) defining, dependent upon the (1) received card information, a memory
`location in a local memory external to the card;
`
`(4) determining if the (3) defined memory location is unoccupied; and
`
`(5) storing, (4) if the memory location is unoccupied, the (2) biometric
`signature at the (3) defined memory location.
`
`
`
`
`
`
`
`
`
`
`
`14
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`38. Thus, the ʼ039 Patent claims are drafted with the following temporal
`
`order required: first, obtain card information; second, define the memory location
`
`based on that information; and then third, store the biometric signature at that
`
`defined memory location. EX2041 at 18:12 – 20:19. The preambles to Claims 1
`
`and 19 explicitly describe the claims within the context of a method “of enrolling.”
`
`EX1001 at 12:29-30, 15:25 – 16:2. Similarly, the preamble to Claim 13 describes
`
`the claim in the context of an “enrolment system.” Id. at 13:67. Accordingly, a
`
`POSITA would understand that the claims are directed to enrollment.
`
`39.
`
`In addition, it is my opinion that a POSITA would clearly understand
`
`that Limitation 3[D[1)]1 is directed to enrollment. In particular, Limitations
`
`3[D(P)]-3[D[1)], when read together, require “storing” a biometric signature if the
`
`card information “has not been previously provided to the verification station.”
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`EX-1001 at 12:59-63. A POSITA would understand this to be an enrollment
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`process because the user’s card information has not previously been entered into
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`the system and the user’s biometric data has not previously been stored in the
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`system’s memory. Limitation 3[D[1)] requires “storing” the biometric signature at
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`a memory location defined by” the card information, which is the natural end result
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`of an enrollment process.
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`1 For purposes of this Declaration, my opinions regarding Limitation 3[D(1)] apply
`equally to the corresponding Limitations 15[D(P)] and 18[B(1)].
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`
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`15
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`40.
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`In my opinion the correct construction of Limitations 1[C] and
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`3[D(1)] is as follows: the system sets or establishes a memory location in a local
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`memory external to the card, said location being contingent upon or
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`determined by the received card information.
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`41. A POSITA would have understood (at the time of the invention) that
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`“defining,” as used in the Challenged Claims, is not the same as merely looking up,
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`specifying, or identifying something that has already been defined. As noted
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`above, the Board has adopted “contingent upon or determined by” as the
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`construction for the “dependent upon” portion of Limitation 1[C]. IPR2022-00600,
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`Paper 8 at 10. In light of this construction, a POSITA would consider the word
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`“defining,” especially in the context of enrollment, to mean “setting” or
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`“establishing.” Accordingly, in my opinion, the construction set forth above in ¶ 38
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`is the correct construction.
`
`42. This construction comports with the text of the ʼ039 Patent. For
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`example, col. 2, lines 64-67 states “[t]he biometric signature is stored at a memory
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`address defined by the card as read by the (‘unique’) card information on the user’s
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`card as read by the card reader of the verification station.” EX-1001 at 2:64-67
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`(emphasis added). Similarly, the ‘039 Patent teaches that “In an enrollment phase
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`… [t]he card data 604 defines the location 607 in the memory 124 where the
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`unique biometric signature is stored.” Id. 7:43-49 (emphasis added. The ʼ039
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`16
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`Patent repeatedly refers to the memory address as “defined by the card
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`[information/data],” confirming that the received card information is the basis for
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`the definition of a memory location. See, e.g., id. at Abstract, 3:4-11, 7:53-56,
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`9:23-25, 9:62-67.
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`VII. OPINIONS REGARDING PETITIONER’S INVALIDITY GROUNDS
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`43. As part of my work in this proceeding, I assessed Petitioner’s and Mr.
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`Lipoff’s opinions that the Challenged Claims of the ’039 patent are rendered
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`obvious by the combination of Hsu and Sanford (Ground 1) or, alternatively, by
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`the combination of Hsu, Sanford, and Tsukamura (Ground 2). I disagree.
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`44.
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`Illustrative Claims 1 and 3 are reproduced below using Petitioner’s
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`alphanumeric designations of the claim limitations:
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`A method of enrolling in a biometric card pointer system, the method
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`comprising the steps of:
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`receiving card information;
`
`receiving the biometric signature;
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`defining, dependent upon the received card information, a memory
`location in a local memory external to the card;
`
`determining if the defined memory location is unoccupied; and
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`storing, if the memory location is unoccupied, the biometric signature
`at the defined memory location.
`
`Preamble
`1[P]
`
`1[A]
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`1[B]
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`1[C]
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`1[D]
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`1[E]
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`
`
`Preamble
`3[P]
`3[A]
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`A method of securing a process at a verification station, the method
`comprising the steps of:
`(a) providing card information from a card device to a card reader in
`
`17
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`3[B]
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`3[C]
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`3[D(P)]
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`3[D(1)]
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`3[D(2)]
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`3[E(P)]
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`3[E(1)]
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`3[E(2)]
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`3[E(3)]
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`the verification station;
`(b) inputting a biometric signature of a user of the card device to a
`biometric reader in the verification station;
`(c) determining if the provided card information has been previously
`provided to the verification station;
`(d) if the provided card information has not been previously
`provided to the verification station;
`(da) storing the inputted biometric signature in a memory at a
`memory location defined by the provided card information; and
`(db) performing the process dependent upon the received card
`information;
`(e) if the provided card information has been previously provided to
`the verification station;
`(ea) comparing the inputted biometric signature to the biometric
`signature stored in the memory at the memory location defined by the
`provided card information;
`(eb) if the inputted biometric signature matches the stored biometric
`signature, performing the process dependent upon the received card
`information; and
`(ec) if the inputted biometric signature does not match the stored
`biometric signature, not performing the process dependent upon the
`received card information.
`
`
`
`
`
` Ground 1
`
`45.
`
`In Ground 1 of the respective Petitions, Petitioner and Mr. Lipoff rely
`
`exclusively on Hsu as allegedly disclosing the “defining” element of Limitations
`
`1[C] and 3[D[1)]. Hsu, titled “Controlled Access to Doors and Machines Using
`
`Fingerprint Matching,” relates to “[a] system and related method for controlling
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`access to building doors or to machines, such as automatic teller machines
`
`(ATMs).” EX1003, Abstract. According to Hsu, “[t]he present invention resides in
`
`a combination of fingerprint matching and a carried form of personal identification
`
`18
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`[e.g., card information], for access to buildings or machines such as automatic
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`teller machines (ATMs).” Id. at 1:52-55.
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`1.
`
`Hsu does not teach or suggest that card information “defines”
`the memory location of the fingerprint data during enrollment
`
`46. Hsu is devoid of any teaching or suggestion that the user’s card
`
`information sets or establishes (i.e., defines) the memory location for the user’s
`
`fingerprint data during enrollment. To the contrary, Hsu expressly discloses that,
`
`during enrollment, the user’s fingerprint data and account number (or employee
`
`number or similar identity number) are presented together, simultaneously, and
`
`then are merely stored in association with each other, as follows:
`
`The enrollment procedure requires that each user enroll by presenting a
`finger to the fingerprint s