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.,
`Petitioner,
`
`v.
`
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2022-01093
`Patent 8,620,039
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 1, 2, 13, 14, 19, and 20)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... i
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`’039 PATENT OVERVIEW ........................................................................... 3
`
`III. LEVEL OF ORDINARY SKILL .................................................................... 6
`
`IV. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`B.
`
`The Independent Claims Are Directed To Enrollment ......................... 6
`
`“dependent upon” and “defining, dependent upon the received
`card information, a memory location in a local memory
`external to the card” .............................................................................. 9
`
`1.
`
`2.
`
`“dependent upon” ........................................................................ 9
`
`“defining, dependent upon the received card information,
`a memory location in a local memory external to the
`card” ..........................................................................................11
`
`C.
`
`“Unoccupied” ......................................................................................14
`
`D. Means-Plus-Function ..........................................................................15
`
`E.
`
`“Biometric signature” ..........................................................................15
`
`V.
`
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED
`CLAIMS OBVIOUS .....................................................................................15
`
`A. 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”...............................................................................................15
`
`1.
`
`2.
`
`Hsu does not teach or suggest that card information
`“defines” the memory location of the fingerprint data
`during enrollment ......................................................................16
`
`Hsu’s cursory description of its database does not save
`Petitioner’s argument ................................................................19
`
`B.
`
`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” ..............................................................21
`
`i
`
`

`

`1.
`
`2.
`
`3.
`
`Tsukamura’s card information plays no part in the
`enrollment process or storage of the biometric signature .........21
`
`Tsukamura’s user-driven index system is significantly
`different from the ’039 Patent’s pointer system .......................22
`
`A POSITA would not have been motivated to combine
`Tsukamura and Hsu ..................................................................26
`
`C.
`
`Dependent Claims ...............................................................................29
`
`VI. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(b) .............30
`
`A. Applicable Legal Standards ................................................................30
`
`1.
`
`2.
`
`3.
`
`Petitioners Bear The Burden Of Persuasion .............................30
`
`RPI And Privity Standards ........................................................31
`
`a.
`
`b.
`
`Scope Of Real Parties In Interest ....................................31
`
`Scope Of Privity .............................................................32
`
`Institution Is Barred Under Section 315(b) Because
`Apple Is An RPI And Privy Of Petitioners ...............................33
`
`B.
`
`Apple Is An Unnamed RPI To This Proceeding .................................34
`
`1.
`
`2.
`
`Control Is Not A Requirement For A Non-Party To Be A
`Real-Party-In-Interest ...............................................................34
`
`Apple Has A Preexisting, Established Business
`Relationship With Petitioners ...................................................34
`
`a.
`
`b.
`
`Petitioners Admit Their Preexisting, Established
`Business Relationship With Apple .................................34
`
`The Apple Agreement Also Establishes That
`Apple Is An RPI..............................................................36
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`Representations And Warranties Of
`Noninfringement ..................................................39
`
`Indemnification Clauses .......................................41
`
`Product Inspection Clause ....................................42
`
`Insurance Coverage Clause ..................................44
`
`Apple Appointed As Petitioners’ Agent ..............45
`
`3.
`
`Apple Is A Clear Beneficiary Of The Petition ..........................45
`
`ii
`
`

`

`4.
`
`The Petitioners Filed An IPR Petition Against The ’039
`Patent For Apple’s Benefit ........................................................46
`
`C.
`
`Apple Is A Privy To This Proceeding .................................................47
`
`VII. CONCLUSION ..............................................................................................47
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`Affidavit in Support of Patent Owner’s Motion for Pro Hac Vice
`Admission of Steven M. Coyle Pursuant to 37 C.F.R. § 42.10(c)
`Affidavit in Support of Patent Owner’s Motion for Pro Hac Vice
`Admission of Nicholas A. Geiger Pursuant to 37 C.F.R. § 42.10(c)
`Complaint filed in CPC Patent Technologies Pty Ltd. v. Apple,
`Inc., No. 6:21-cv-00165 (W.D. Tex., Waco Division) (without
`exhibits)
`Affidavit of Service of Complaint filed in CPC Patent
`Technologies Pty Ltd. v. Apple, Inc., No. 6:21-cv-00165 (W.D.
`Tex., Waco Division)
`Letter dated October 18, 2021 from Patent Owner’s counsel to
`Yale Residential regarding ’705 and ’208 Patents with attached
`claim charts
`Letter dated November 4, 2021 from Patent Owner’s counsel to
`Yale Residential
`Complaint for declaratory judgment filed in ASSA ABLOY AB et
`al. v. CPC Patent Technologies Pty. Ltd. and Charter Pacific Corp
`Ltd., Civ. 3:22-cv-694 (D. Conn.) (without exhibits)
`Declaration of Kevin J. Dart filed in ASSA ABLOY AB et al. v.
`CPC Patent Technologies Pty. Ltd. and Charter Pacific Corp Ltd.,
`Civ. 3:22-cv-694 (D. Conn.) (without exhibits)
`Apple Developer Program License Agreement
`Email thread between Petitioners and Patent Owner’s respective
`counsel regarding additional discovery
`Yale product literature (Yale Assure Lock Touchscreen with Wi-Fi
`and Bluetooth) downloaded from
`[https://shopyalehome.com/products/yale-assure-lock-touchscreen-
`with-wi-fi-and-bluetooth?variant=39341913079940]
`Yale product literature (Yale Access Upgrade Kit with Wi-Fi for
`Assure Locks) downloaded from
`[https://shopyalehome.com/products/yale-access-ugrade-kit-for-
`assure-locks-with-wifi?variant=34110396006532]
`Yale product literature (Facial and Fingerprint Lock Verification
`for Yale Assure Smart Locks) downloaded from
`[https://shopyalehome.com/blogs/yale-home-blog/new-facial-and-
`fingerprint-lock-verification-for-yale-assure-smart-locks]
`
`iv
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2023
`2024
`2025
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`2031
`2032
`
`August product literature (August Smart Lock Pro + Connect)
`downloaded from [https://august.com/products/august-smart-lock-
`pro-connect]
`August product literature (New Biometric Verification Feature for
`August Smart Locks) downloaded from
`[https://august.com/blogs/home/introducing-biometric-
`verification-for-august-and-yale-locks]
`Apple literature regarding MiFi Program downloaded from
`https://mfi.apple.com/
`Apple literature regarding MiFi Program (How the Program
`Works) downloaded from https://mfi.apple.com/en/how-it-
`works.html.
`Apple literature regarding MiFi Program (Frequently Asked
`Questions) downloaded from https://mfi.apple.com/en/faqs.html.
`Apple Inc. iPhone SDK Agreement (dated 10/20/2008)
`Yale Access on the Apple App Store
`August Home on the Apple App Store
`Apple literature regarding Apple HomeKit (“Developing apps and
`accessories for the home”) downloaded from
`https://developer.apple.com
`Apple literature regarding Apple HomeKit and Yale Assure Lock
`Yale product literature (Yale Assure Lock SL Touchscreen
`Deadbolt – Black – Apple) downloaded from
`https://www.apple.com/shop/product/HPAR2ZM/A/yale-assure-
`lock-sl-touchscreen-deadbolt-black
`August product literature regarding Apple HomeKit (HomeKit
`FAQ) downloaded from https://support.august.com/august-smart-
`lock-homekit-enabled-faq-rJv088y0_z
`Declaratory Judgment Plaintiffs’ Opposition to Defendants’
`Motion to Dismiss filed in CPC Patent Technologies Pty Ltd. v.
`Apple, Inc., No. 6:21-cv-00165 (W.D. Tex., Waco Division)
`ASSA ABLOY Global Solutions: Mobile Access for Hotels
`HID Global: Mobile Access Solutions
`Petitioners’ Responses to Patent Owner’s Interrogatories (Nos. 1-
`5) (Petitioners’ Ex. 1022 in IPR2022-01006)
`
`v
`
`

`

`EXHIBIT
`
`DESCRIPTION
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`2040
`2041
`2042
`2043
`2044
`
`2045
`2046
`
`2047
`
`2048
`
`“Developing for the App Store” Website Page available at
`https://www.apple.com/app-store/developing-for-the-app-store/
`(Petitioners’ Ex. 1023 in IPR2022-01006)
`Apple MFi Authorized Manufacturers Website Page available at
`https://mfi.apple.com/account/authorized-manufacturers
`(Petitioners’ Ex. 1024 in IPR2022-01006)
`Screenshot from Apple 2022 WWDC Apple Partners available at
`https://www.youtube.com/watch?v=q5D55G7Ejs8 (20:27)
`(Petitioners’ Ex. 1025 in IPR2022-01006)
`Apple 2022 WWDC Video Excerpt available at
`https://www.youtube.com/watch?v=q5D55G7Ejs8 (Petitioners’
`Ex. 1026 in IPR2022-01006)
`HID Global Android Apps on Google Play available at
`https://play.google.com/store/search?q=HID%20global&c=apps&
`hl=en_US (Petitioners’ Ex. 1027 in IPR2022-01006)
`Petitioners’ and Patent Owner’s Joint Email Correspondence to the
`Board dated October 18, 2022 (Submitted in related IPR2022-
`01006, 01045, 01089)
`Declaration of Samuel Russ, Ph.D.
`CV of Samuel Russ, Ph.D.
`Deposition of Stuart Lipoff (April 27, 2023)
`Reserved
`Reserved
`A. K. Jain, Lin Hong, S. Pankanti and R. Bolle, "An identity-
`authentication system using fingerprints," in Proceedings of the
`IEEE, vol. 85, no. 9, pp. 1365-1388, Sept. 1997 (“Jain”)
`Excerpts from Microsoft Computer Dictionary, 5th Ed. (2002).
`(COMP 2401 Course Notes, Found at
`http://people.scs.carleton.ca/~mjhinek/W13/COMP2401/notes/Arr
`ays_and_Pointers.pdf, accessed on 5/8/2023)
`Logical Block Addressing (October 20, 2002) (via Wayback
`Machine)
`Bad Block Definition by The Linux Information Project (July 5,
`2005)
`
`
`
`
`
`
`vi
`
`

`

`I.
`
`INTRODUCTION
`
`For the reasons set forth below, Petitioner has failed to demonstrate that the
`
`inventions claimed in U.S. Patent No. 8,620,039 (“the ’039 Patent”) are
`
`unpatentable.
`
`The Challenged Claims of the ʼ039 Patent (Claims 1, 2, 13, 14, 19, and 20)
`
`describe an improved method and system for enrolling users in a biometric card
`
`pointer system. As claimed in the ’039 Patent, enrollment comprises the steps of
`
`receiving card information (representative clause 1[A]); 1 receiving a biometric
`
`signature (representative clause 1[B]); defining, dependent upon the received card
`
`information, a memory location in a local memory external to the card
`
`(representative clause 1[C]); determining if the defined memory location is
`
`unoccupied (representative clause 1[D]); and storing, if the memory location is
`
`unoccupied, the biometric signature at the defined memory location (representative
`
`clause 1[E]).
`
`Petitioner’s challenge fails because the asserted prior art, alone or in
`
`combination, does not teach or suggest each of the elements claimed in the ‘039
`
`Patent. In particular, the asserted prior art fails to disclose or suggest that the
`
`
`1 These clauses refer to the alphanumeric designations used by Petitioner to label
`
`the various claim limitations in Claim 1 of the ʼ039 Patent. See, e.g., Pet. at 95.
`
`1
`
`

`

`user’s card information “[defines], dependent upon the received card information,
`
`a memory location in a local memory external to the card (representative clause
`
`1[C]).
`
`In Ground 1, Petitioner relies solely on Hsu’s (EX-1003) purported teaching
`
`that the user’s card information is stored at a memory location associated with the
`
`user’s fingerprint data. See, e.g., Pet. at 30-32. Hsu teaches that storing the user’s
`
`card information at a memory location that is associated with the user’s fingerprint
`
`data, or which corresponds to the user’s fingerprint data, allows for fast and
`
`efficient retrieval of the fingerprint data during the verification phase. However,
`
`the Challenged Claims relate to enrollment, not verification, and further require
`
`more than a mere association between the fingerprint data and a memory location.
`
`The Challenged Claims specifically require that, during the enrollment
`
`phase, the card information sets or establishes the memory location at which the
`
`fingerprint data will be stored. Stated simply, before the fingerprint data can be
`
`stored, the card information (from which the storage location information will be
`
`obtained) must be read. Hsu fails to teach or suggest this feature. This is fatal to
`
`Petitioner’s challenge under Ground 1.
`
`Petitioner’s Ground 2 fares no better. In Ground 2, Petitioner cobbles Hsu
`
`together with Tsukamura (EX-1005) in an effort to satisfy Limitation 1[C].
`
`However, this proposed combination fails for multiple reasons. For example,
`
`2
`
`

`

`Tsukamura teaches an indexed-based numbering system that is fundamentally
`
`different from the pointer-based system disclosed in the ’039 Patent. Further, the
`
`Petition ignores key differences between Hsu and Tsukamura that, once
`
`considered, demonstrate that only hindsight reasoning has driven Petitioner to
`
`combine these references.
`
`Apart from the merits (or lack thereof) of the Petition, Patent Owner further
`
`maintains its position that the Petition is time-barred under 35 U.S.C. § 315(b)
`
`because Apple is a real party-in-interest (“RPI”) and/or privy of one or more of the
`
`Petitioners. Patent Owner respectfully requests that the Board re-evaluate its
`
`findings in the institution decision with full appreciation of the expansive
`
`formulation required by the Federal Circuit, including that an RPI relationship
`
`can exist even in the absence of control or financial involvement in the Petition,
`
`as more fully set forth below.
`
`II.
`
`’039 PATENT OVERVIEW
`
`The ʼ039 Patent issued on December 31, 2013 from an application claiming
`
`a priority date of August 12, 2005. The ʼ039 Patent has 20 claims, of which claims
`
`1, 3, 13, 15, 18, and 19 are independent. Representative Claim 1 of the ʼ039 Patent
`
`reads:
`
`Preamble
`1[P]
`1[A]
`1[B]
`
`A method of enrolling in a biometric card pointer system, the method
`comprising the steps of:
`receiving card information;
`receiving the biometric signature;
`
`3
`
`

`

`1[C]
`
`1[D]
`1[E]
`
`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
`storing, if the memory location is unoccupied, the biometric signature
`at the defined memory location.
`
`
`EX-1001, 12:29-38.
`
`
`
`(BCP) system intended to more efficiently and securely permit a user to store
`
`As the Board noted, “[t]he ’039 patent, … relates to a biometric card pointer
`
`biometric information during an enrollment process.” Inst. Dec. at 3 (citations
`
`omitted). “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 3-4 (citation omitted).
`
`The Board went on to note that “[t]he ’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 4 (citations omitted). “[T]he ’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 5-6 (citations omitted).
`
`4
`
`

`

`As the Board observed, the verification and enrollment processes of the ’039
`
`Patent are distinct procedures. See Inst Dec. at 7
`
`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.
`
`[Emphasis added by the Board.]
`
`In granting the Challenged Claims, the Examiner specifically found that the
`
`“defining” element – representative clause 1[C] – was not found in the prior art. In
`
`the Notice of Allowance, the Examiner concluded that “[n]one of the prior art
`
`teaches or suggests defining a memory location in a local memory external to a
`
`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, as variously required by claims 1 and 11.” EX-1002 at 292. The Examiner
`
`further concluded that “none of the prior art teaches or suggests that a verification
`
`station determines if card information provided to a verification station has
`
`previously been provided to that verification station, as required, in part, by claims
`
`3 and 13.” Id.
`
`5
`
`

`

`III. LEVEL OF ORDINARY SKILL
`
`For purposes of this proceeding Patent Owner does not object to the
`
`definition of ordinary skill in the art as adopted in co-pending IPR2022-00600
`
`challenging the ’039 Patent. There, the Board adopted the following level of skill
`
`in the art:
`
`[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 8 at 9. For the purposes of this proceeding, Patent
`
`Owner does not dispute this characterization of the level of ordinary skill in the art,
`
`and applies it in its analysis.
`
`IV. CLAIM CONSTRUCTION
`
`A. The Independent Claims Are Directed To Enrollment
`
`There can be no genuine dispute that the independent claims at issue (Claims
`
`1, 13 and 19) are directed to enrollment. For example, the “method of enrolling” in
`
`the preamble of Claim 1 provides antecedent basis for “the enrolment method” in
`
`the body of dependent Claim 2 (see EX-1001 at 12:29-42)2, which indicates that
`
`
`2 Antecedent basis is similarly found with respect to independent claims 13 and 19
`
`and dependent claims 14 and 20, respectively.
`
`6
`
`

`

`“method of enrolling” in the preamble is a limiting term. ”[T]he preamble
`
`constitutes a limitation when the claim(s) depend on it for antecedent basis.” C.W.
`
`Zumbiel Co. v. Kappos, 702 F.3d 1371, 1385 (Fed. Cir. 2012) (citing Catalina
`
`Marketing International, Inc. v. Coolsavings. com, Inc., 289 F.3d 801, 808 (Fed.
`
`Cir. 2002). This is equally true when a dependent claim relies upon the preamble
`
`of an independent claim for antecedent basis. See e.g., Pacing Techs., LLC v.
`
`Garmin Int'l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (finding the preamble
`
`limiting based in part on the limitation in question providing antecedent basis in a
`
`dependent claim and not the independent claim).3
`
`
`3 In the related matter of CPC Patent Technologies Pty Ltd v. Apple Inc., WDTX-6-
`
`21-cv-00165-ADA (“Apple litigation”), Judge Albright found that the terms
`
`“biometric card pointer system” (Claims 1 and 19) and “biometric card pointer
`
`enrolment system” (Claim 13) were “[n]onlimiting preamble term[s] with no
`
`patentable weight.” EX-1012 at 1. Judge Albright did not consider whether
`
`“enrolling/enrolment” in the preambles of the claims is limiting. It is well-
`
`established that portions of a preamble can be limiting when other portions are not.
`
`TomTom, Inc. v. Adolph, 790 F.3d 1315, 1324 (Fed. Cir. 2015).
`
`7
`
`

`

`Indeed, 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.
`
`
`EX2039 at ¶35.
`
`8
`
`

`

`
`
`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. EX2039 at ¶36; 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. EX-2039 at ¶36.
`
`B.
`
`“dependent upon” and “defining, dependent upon the received
`card information, a memory location in a local memory external to
`the card”
`
`1.
`
`“dependent upon”
`
`The proper construction of “dependent upon” as used in this claim element
`
`is “contingent upon or determined by.” More specifically, Claim 1 of the ʼ039
`
`Patent requires “defining, dependent upon the received card information, a
`
`memory location in a local memory external to the card.” EX-1001 at 12:33-34. 4
`
`
`4 Limitation 1[C] recites “defining, dependent upon the received card information,
`
`a memory location in a local memory external to the card.” Pet. at 97. Limitations
`
`9
`
`

`

`As noted in the Petition, 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.” Pet. at 16 (citing EX-1013). In addition, 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.
`
`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. EX-2039 at ¶33. This construction of “dependent upon” is correct and
`
`should be adopted in this proceeding as well.
`
`Petitioner does not dispute that this previously-adopted construction is
`
`correct. Instead, Petitioner contends that it is “not material to the (sic)
`
`unpatentability.” Pet. at 16 (citing EX-1006, ¶¶55-57). However, 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. See Uniloc
`
`
`13[C] and 19[C] are identical except that they are prefaced by “means for
`
`defining…” and “code for defining…”, respectively. Id. at 97, 99.
`
`10
`
`

`

`2017 LLC v. Apple Inc., 843 Fed. Appx. 305, 312 (Fed. Cir. 2021); (“Claim
`
`language must be considered in ‘the context of the surrounding words.’”) (citation
`
`omitted); Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 Fed. Appx. 284,
`
`287 (Fed. Cir. 2008) (“The surrounding claim language provides an important
`
`consideration for construing a particular term within a claim.”) (citing Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)). As such, when the entirety of
`
`the claim element is considered (as it must be), for the reasons set forth below the
`
`asserted prior art fails to teach or suggest elements 1[C], 13[C], and 19[C].
`
`2.
`
`“defining, dependent upon the received card information, a
`memory location in a local memory external to the card” 5
`
`For the reasons set forth below, 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.”
`
`“Defining,” as used in the Challenged Claims, does not (and cannot) mean
`
`merely looking up or identifying something that has already been defined. EX-
`
`2039 at ¶41. As noted above, the Board has adopted “contingent upon or
`
`
`5 For brevity, this limitation may be referred to as “Limitation 1[C]”. The
`
`discussion of Limitation 1[C] herein applies equally to Limitation 13[C] and
`
`Limitation 19[C].
`
`11
`
`

`

`determined by” as the construction for the “dependent upon” portion of the claim
`
`term. IPR2022-00600, Paper 8 at 10. In light of this construction, a POSITA would
`
`interpret the word “defining,” especially in the context of enrollment, to mean
`
`“setting” or “establishing.” Id.
`
`This construction is supported by the disclosure of the ʼ039 Patent’s
`
`specification. EX-2039 at ¶42. For example, col. 2, lines 64-67 states “[t]he
`
`biometric signature is stored at a memory address defined by the card as read by
`
`the (‘unique’) card information on the user’s card as read by the card reader of
`
`the verification station.” EX-1001 at 2:64-67 (emphasis added). Similarly, the
`
`‘039 Patent teaches that “[i]n an enrollment phase … [t]he card data 604 defines
`
`the location 607 in the memory 124 where the unique biometric signature is
`
`stored.” Id. 7:43-49 (emphasis added). The ʼ039 Patent repeatedly refers to the
`
`memory address as “defined by the card [information/data],” confirming that the
`
`received card information is the basis for the “defining” (i.e., the setting or
`
`establishing) of a memory location. See, e.g., id. at Abstract, 3:4-11, 7:53-56, 9:23-
`
`25, 9:62-67.
`
`With respect to the Petitioner’s two proposed constructions (Pet. at 11-12)
`
`and the construction articulated by the Board in the Institution Decision (Inst. Dec.
`
`12
`
`

`

`at 38), Petitioner’s Second Proposed Construction6 and the Board’s construction7
`
`would, for the purposes of this proceeding, be reasonable so long as it is
`
`understood that the claimed “defining” step does not include a process that occurs
`
`after enrollment has already occurred. As discussed above, Limitation 1[C] cannot
`
`be construed to cover a procedure after enrollment, such as verification, wherein
`
`the system is merely looking up or identifying a memory location that has already
`
`been defined.8
`
`
`6 Petitioner’s Second Proposed Construction: “a memory location is specified by
`
`the card information itself”
`
`7 The Board’s articulated construction: “the user’s card information itself specifies
`
`the physical memory address (such as by acting as a pointer) for the user’s
`
`biometric signature.”
`
`8 For example, Petitioner’s First Proposed Construction is clearly incorrect at least
`
`because, according to Petitioner, “the system can look up or otherwise determine a
`
`specific memory location from a user’s card information.” Pet. at 11-12 (emphasis
`
`added). However, a memory location must first be defined, before it can be looked
`
`up. EX2039 at ¶41. Thus, Petitioner’s First Proposed Construction includes a
`
`scenario (e.g., during verification) that may occur after enrollment has occurred
`
`13
`
`

`

`
`
`Patent Owner respectfully submits that its proposed construction is less
`
`prone to ambiguity than the Petitioner’s Second Proposed Construction or the
`
`Board’s construction because it more clearly requires that the memory location for
`
`the biometric signature is defined during enrollment. But, so long as it is
`
`understood that Petitioner’s Second Proposed Construction and the Board’s
`
`construction must be interpreted so that the claimed “defining” step does not
`
`include a process that occurs after enrollment has already occurred, then the
`
`Petitioner’s challenges under Grounds 1 & 2 regardless of which construction is
`
`used.
`
`C.
`
`“Unoccupied”
`
`Petitioners proposed, and the Board adopted, the following construction for
`
`“unoccupied”: 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. Pet.
`
`at 14; Inst. Dec. at 38-39. For purposes of this proceeding, Patent Owner takes no
`
`position on this proposed construction as it is not material to the alleged grounds
`
`for unpatentability asserted in the Petition.
`
`
`and the biometric signature has already been stored at the defined memory
`
`location. Id.
`
`
`
`14
`
`

`

`D. Means-Plus-Function
`
`Petitioners proposed, and the Board adopted, constructions for certain
`
`purported means-plus-function limitations in Claims 13, 14, 19, and 20. Pet. 2 at
`
`15; Inst. Dec. at 39-43. For purposes of this proceeding, Patent Owner takes no
`
`position on these proposed constructions as they are not material to the alleged
`
`grounds for unpatentability asserted in the Petition.
`
`E.
`
`“Biometric signature”
`
`As noted in the Petition and the Institution Decision, Judge Albright
`
`previously construed “biometric signature” as having its “plain and ordinary
`
`meaning.” EX1012 at 2.
`
`V. THE PRIOR ART FAILS TO RENDER THE CHALLENGED
`CLAIMS OBVIOUS
`
`A. 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”
`
`In Ground 1, Petitioner relies exclusively on Hsu as allegedly disclosing
`
`Limitation 1[C], which requires “defining, dependent upon the received card
`
`information, a memory location in a local memory external to the card”. Pet. at 28-
`
`15
`
`

`

`33; EX1006, ¶¶ 88-94.9 Hsu, titled “Controlled Access to Doors and Machines
`
`Using Fingerprint Matching,” relates to “[a] system and related method for
`
`controlling 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 matc