UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ASSA ABLOY AB, ASSA ABLOY Inc.,
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc.,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`______________________________________________________
`
`PETITIONERS’ RANKING AND EXPLANATION FOR
`TWO PETITIONS CHALLENGING U.S. PATENT NO. 8,620,039
`
`
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`ASSA ABLOY AB, ASSA ABLOY Inc.,
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc.,
`Petitioners,
`
`v.
`
`CPC Patent Technologies PTY LTD.,
`Patent Owner.
`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`______________________________________________________
`
`PETITIONERS’ RANKING AND EXPLANATION FOR
`TWO PETITIONS CHALLENGING U.S. PATENT NO. 8,620,039
`
`
`
`Pursuant to the Consolidated Trial Practice Guide, ASSA ABLOY AB,
`
`ASSA ABLOY Inc., ASSA ABLOY Residential Group, Inc., August Home, Inc.,
`
`HID Global Corporation, and ASSA ABLOY Global Solutions, Inc., (collectively,
`
`“Petitioners”) rank, and explain the need to file, two Petitions challenging the
`
`claims in U.S. Patent No. 8,620,039 (“the ’039 Patent”).
`
`II.
`
`RANKING OF PETITIONS
`
`Rank #1: IPR2022-01093
`Ground 1: Obviousness of Claims
`1, 2, 13, 14, 19, and 20 based on
`Hsu and Sanford
`Ground 2: Obviousness of Claims
`1, 2, 13, 14, 19, and 20 based on
`Hsu, Sanford, and Tsukamura
`
`Rank #2: IPR2022-01094
`Ground 1: Obviousness of Claims 3, 4, 6-11,
`15, 16, and 18 based on Sanford and Hsu
`Ground 2: Obviousness of Claims 3, 4, 6-11,
`15, 16, and 18 based on Sanford, Hsu, and
`Tsukamura
`Ground 3: Obviousness of Claim 5 based on
`Sanford, Hsu, and Leu
`Ground 4: Obviousness of Claim 5 based on
`Sanford, Hsu, Tsukamura, and Leu
`Ground 5: Obviousness of Claim 12 based on
`Sanford, Hsu, and Houvener
`Ground 6: Obviousness of Claim 12 based on
`Sanford, Hsu, Tsukamura, and Houvener
`Ground 7: Obviousness of Claim 17 based on
`Sanford, Hsu, and McCalley
`Ground 8: Obviousness of Claim 17 based on
`Sanford, Hsu, Tsukamura, and McCalley
`
`III. MATERIAL DIFFERENCES BETWEEN THE PETITIONS
`Petitioners are concurrently filing two petitions that together challenge all
`
`claims (claims 1-20) of the ’039 patent. There is no overlap in claims between the
`
`1
`
`
`
`two petitions. The same claims are included in a declaratory judgment action
`
`between Petitioners and CPC Patent Technologies Pty Ltd. (“Patent Owner”).
`
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd., et al., No. 3-22-cv-
`
`00694 (D. Ct.).1 If the Board were to institute one petition and discretionarily deny
`
`the other, the parties would likely be forced to address the same grounds for
`
`unpatentability in District Court, which would be highly inefficient. Petitioners
`
`submit that two petitions are necessary to address each of the claims and their
`
`lengthy claim recitations, including numerous means-plus-function limitations,
`
`some of which were construed in district court proceedings between Patent Owner
`
`and third parties. This complexity required splitting the challenged claims into two
`
`groups, each addressed in one of the instant petitions.
`
`A.
`
`The Petitions Together Address Twenty Lengthy Claims with
`Multiple Means-Plus-Function Limitations
`The challenged claims recite twenty means-plus-function limitations related
`
`to biometric authentication and card devices. For example, independent claim 15
`
`alone requires: “[1] means for determining if the provided card information has
`
`been previously provided…; [2] means… for: storing the inputted biometric
`
`signature in a memory…; [3] means… for: performing the process dependent upon
`
`1 The ’039 Patent was also asserted against Apple, Inc. in CPC Patent Technologies
`
`Pty Ltd v. Apple Inc., No. 5:22-cv-02553-NC (N.D. Cal.).
`
`2
`
`
`
`the received card information; [4] means… for: comparing the inputted biometric
`
`signature…; [5] means… for…performing the process dependent upon the
`
`received card information; and [6] means… for…not performing the process
`
`dependent upon the received card information.” EX-1001, Cl. 15.
`
`Four out of the six independent claims include permutations of long
`
`means-plus-function limitations (see EX-1001, Cls. 13, 15, 18, and 19) that needed
`
`to be construed. Further, the remaining claims are lengthy and include numerous
`
`discrete subparts. See id. at Cl. 3 (nearly 30 lines long). Further complicating the
`
`analysis, Judge Albright (WDTX) construed two means-plus-function limitations
`
`from the challenged claims. These constructions have been addressed in the
`
`petitions. Petitioners are unable to address all of the lengthy claims, numerous
`
`constructions, and present the asserted grounds within the allotted word limit.
`
`B.
`
`The Petitions are Non-Cumulative and Consistent with Board
`Guidance and Precedent.
`By challenging all claims in the ‘039 Patent, Petitioners have attempted to
`
`reduce the overall burden and avoid inefficient use of the Board’s and the district
`
`court resources. The Board’s Consolidated Trial Practice Guide (at page 59)
`
`recognizes that petitioners may be justified in bringing multiple petitions against a
`
`single patent “when the patent owner has asserted a large number of claims”.
`
`Patent Owner has previously asserted many of the challenged claims against Apple
`
`and is expected to do the same against Petitioners. See Ex-1016.
`
`3
`
`
`
`Both petitions are necessary because each challenges distinct independent
`
`claims and their dependent claims2—an approach that was driven by word limits.
`
`See Intel Corp. v. VLSI Technology LLC, IPR2019-01199, Paper 19 at 10 (Feb. 6,
`
`2020) (declining to exercise discretion to deny petitions where “Petitioner contends
`
`each petition is necessary…because each petition is directed to a different
`
`independent claim.”); Microsoft Corp. v. IPA Techs. Inc., IPR2019-00810, Paper
`
`12 at 14 (“Faced with word count limitations and a large number of challenged
`
`claims, Petitioner’s decision to divide its analysis of those claims among a number
`
`of petitions appears reasonable.”).
`
`The Board has also found multiple petitions against a single patent
`
`appropriate where, as here, the petitions rely on the same prior art. See, e.g., IPA
`
`Technologies, Inc., IPR2019-00810 Paper 12 at 11-16 (Oct. 16, 2019). The Board
`
`has observed that “any duplication of effort that may place unnecessary burdens on
`
`the parties and the Board may be avoided or reduced by consolidating the instituted
`
`IPRs (if institution of review is granted in more than one proceeding), including
`
`consolidating the parties’ briefing, motion practice, and the oral hearings. Id. at 15;
`
`see also Seven Networks, LLC, IPR2020-00156, Paper 10 at 26 (“By asserting
`
`2 Although the petitions include overlapping prior art, they use different primary
`
`references based on differences between the independent claims in each petition.
`
`4
`
`
`
`overlapping prior art under the present circumstances, Petitioner challenges the
`
`claims across the two petitions in a manner that does not present an undue burden
`
`on the Board or parties.”). Because a number of the same prior art references are
`
`relied upon in both petitions (although against different claims), any potential
`
`duplication of effort can be avoided by consolidating the proceedings (including a
`
`single oral hearing), as Petitioners have requested in the instant petitions.
`
`Petitioners are aware of the Board’s guidance that one petition should
`
`usually be sufficient to challenge the claims of a patent. Indeed, Petitioners
`
`recently filed a separate petition, in IPR2022-01006, challenging all claims of
`
`another of Patent Owner’s patents, U.S. Patent No. 9,665,705. In the -1006
`
`petition, Petitioners were able to challenge all claims of this patent in a single
`
`petition, but those claims lacked the many means-plus-function limitations in the
`
`’039 Patent claims. For the ’039 patent, a single petition was not possible.
`
`In sum, this is not a situation for which discretionary denial of one petition
`
`would be appropriate or equitable. Both of the instant petitions were filed on the
`
`same day, challenging different and non-overlapping claims based on the same
`
`grounds, and they were not preceded by a preliminary response in any other IPR
`
`challenging the same patent.
`
`Petitioners respectfully request institution of both petitions so that the Board
`
`can efficiently review all of the ’039 Patent claims.
`
`5
`
`
`
`Dated: June 13, 2022
`
`Respectfully Submitted,
`
` / Dion M. Bregman /
`Dion M. Bregman, Reg. No. 45,645
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, lead counsel for Petitioners
`
`hereby certifies that on June 13, 2022, a copy of this Petitioners’ Ranking and
`
`Explanation for Two Petitions Challenging U.S. Patent No. 8,620,039 was sent via
`
`Priority Mail Express to the correspondence address of record for the ʼ039 patent:
`
`Crowell/BGL
`P.O. Box 10395
`Chicago, IL 60610
`
`A courtesy copy of this Petitioners’ Ranking and Explanation for Two
`
`Petitions Challenging U.S. Patent No. 8,620,039 was also served via email on June
`
`13, 2022 on Patent Owner’s counsel of record in the district court litigation against
`
`Apple involving this patent:
`
`Ben Roxborough (ben.roxborough@klgates.com)
`George C. Summerfield (george.summerfield@klgates.com)
`James A. Shimota (jim.shimota@klgates.com)
`Stewart Mesher (stewart.mesher@klgates.com)
`Elizabeth Abbott Gilman (beth.gilman@klgates.com)
`Jonah Heemstra (jonah.heemstra@klgates.com)
`
`Dated: June 13, 2022
`
`Respectfully Submitted,
`
` / Dion M. Bregman /
`Dion Bregman (Reg. No. 45,645)
`
`7
`
`
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