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
`
`_____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 3-12 and 15-18)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`III.
`IDENTIFICATION OF CLAIMS AND GROUNDS .................................... 2
`IV. CERTIFICATION AND FEES ...................................................................... 5
`V.
`BACKGROUND ............................................................................................ 5
`A.
`The ’039 Patent .................................................................................... 5
`VI. LEVEL OF SKILL ......................................................................................... 8
`VII. CLAIM CONSTRUCTION ........................................................................... 8
`A.
`Terms to be Construed ......................................................................... 8
`1.
`Card Information “Defining” / “Defines” a Memory
`Location ..................................................................................... 8
`B. Means-Plus-Function Limitations ...................................................... 11
`C. Other Previously-Agreed-On Terms .................................................. 12
`1.
`“dependent upon” .................................................................. 12
`2.
`“biometric signature” ............................................................ 12
`VIII. ARGUMENT ................................................................................................ 12
`A. GROUND #1: Claims 3, 4, 6-11, 15, 16, and 18 are Rendered
`Obvious by Sanford and Hsu ............................................................. 12
`1.
`Claim 3 .................................................................................... 12
`2.
`Claim 4 .................................................................................... 39
`3.
`Claim 6 .................................................................................... 41
`4.
`Claim 7 .................................................................................... 44
`5.
`Claim 8 .................................................................................... 48
`6.
`Claim 9 .................................................................................... 50
`7.
`Claim 10 .................................................................................. 51
`8.
`Claim 11 .................................................................................. 52
`9.
`Claim 15 .................................................................................. 54
`10. Claim 16 .................................................................................. 64
`
`i
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`11. Claim 18 .................................................................................. 65
`B. GROUND #2: Claims 3, 4, 6-11, 15, 16, and 18 are Rendered
`Obvious by Sanford, Hsu, and Tsukamura ........................................ 67
`1.
`Claim 3 .................................................................................... 67
`2.
`Claims 4, 6-11 ......................................................................... 76
`3.
`Claim 15 .................................................................................. 76
`4.
`Claim 16 .................................................................................. 79
`5.
`Claim 18 .................................................................................. 79
`C. GROUNDS #3 AND #4: Claim 5 is Rendered Obvious ................... 80
`D. GROUNDS #5 AND #6: Claim 12 is Rendered Obvious ................. 87
`E.
`GROUNDS #7 AND #8: Claim 17 is Rendered Obvious ................. 91
`IX. CONCLUSION ............................................................................................. 94
`
` ii
`
`

`

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

`

`EX-1011
`
`U.S. Patent No. 5,956,415 to McCalley et al. (“McCalley”)
`
`EX-1012
`
`EX-1013
`
`Claim Construction Order in CPC Patent Technologies Pty Ltd
`v. Apple Inc., WDTX-6-21-cv-00165-ADA, Dkt. No. 76
`(“Apple CC Order”)
`
`Joint Claim Construction Statement in CPC Patent
`Technologies Pty Ltd v. Apple Inc., WDTX-6-21-cv-00165-
`ADA, Dkt. No. 57 (“Apple Joint CC Statement”)
`
`EX-1014
`
`Excerpts from Bloomsbury English Dictionary, 2nd Edition
`(2004)
`
`EX-1015
`
`Excerpts from The Chambers Dictionary, 4th Edition (2003)
`
`EX-1016
`
`CPC Publicly Filed Infringement Allegations Against Apple
`regarding U.S. Patent No. 8,620,039
`
`EX-1017 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2001022351A1 (01/022351) to Gerald R. Black (“Black”)
`
`EX-1018 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2004055738A1 (04/055738) to Svein Mathiassen and Ivar
`Mathiassen (“Mathiassen”)
`
`EX-1019
`
`Excerpts from Algorithms + Data Structures = Programs,
`Niklaus Wirth (1976) (“Wirth”)
`
`EX-1020
`
`Excerpts from The Art Of Computer Programming (Second
`Edition), Volume 1 Fundamental Algorithms (1973) (“Knuth
`Vol. 1”)
`
`iv
`
`

`

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

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`I.
`
`INTRODUCTION
`Petitioners request Inter Partes Review (“IPR”) of claims 3-12 and 15-18
`
`(the “Challenged Claims”) of U.S. Patent No. 8,620,039 (“ʼ039 Patent,” EX-1001),
`
`purportedly owned by CPC Patent Technologies Pty Ltd. (“Patent Owner”). This
`
`petition in IPR2022-01094 is being filed concurrently with IPR2022-01093,
`
`together challenging all claims of the ’039 Patent. Petitioners request that the
`
`schedule, discovery, and hearing of these two IPRs be combined.
`
`II. MANDATORY NOTICES
`Real Party-in-Interest: The real parties-in-interest are related entities ASSA
`
`ABLOY AB, ASSA ABLOY Inc., and its wholly owned subsidiaries ASSA
`
`ABLOY Residential Group, Inc., August Home, Inc., HID Global
`
`Corporation, and ASSA ABLOY Global Solutions, Inc. ASSA ABLOY AB is
`
`the ultimate parent of all parties-in-interest. None of the entities mentioned in the
`
`Related Matters section below were involved in or offered any assistance to the
`
`Real-Parties-in-Interest with respect to this IPR.
`
`Related Matters: The ʼ039 Patent has not been asserted against Petitioners in
`
`litigation. Petitioners have filed a declaratory judgment action against Patent
`
`Owner and Charter Pacific Corporation Ltd. regarding non-infringement of U.S.
`
`Patent No. 9,665,705, U.S. Patent No. 9,269,208, and the ’039 Patent in ASSA
`
`1
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`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd., et al., No. 3-22-cv-00694
`
`(D. Ct.). The ’039 Patent was asserted against Apple, Inc. in CPC Patent
`
`Technologies Pty Ltd v. Apple Inc., No. 5:22-cv-02553-NC (N.D. Cal., San Jose
`
`Division), which was filed on February 23, 2021.1 To the best of Petitioners’
`
`knowledge, the ’039 Patent has not been asserted against other parties.
`
`The ’039 Patent was challenged in IPR2022-00600, filed by Apple Inc. on
`
`February 23, 2022. The IPR is pending pre-institution.
`
`Lead Counsel: Dion Bregman (Reg. No. 45,645); Back-up Counsel: Andrew
`
`Devkar (Reg. No. 76,671) and James J. Kritsas (Reg. No. 71,714).
`
`Service: Service of any documents may be made on Morgan, Lewis &
`
`Bockius LLP, 1400 Page Mill Road, Palo Alto, CA, 94304 (Telephone:
`
`650.843.4000; Fax: 650.843.4001).
`
`Petitioners consent to e-mail service at: HID-IPRs@morganlewis.com
`
`III.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`ʼ039 Patent: This patent was filed on August 10, 2006 and has an earliest
`
`possible priority date of August 12, 2005. It is subject to the pre-AIA provisions of
`
`1 See also EX-1016.
`
`2
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`35 U.S.C. § 102.
`
`Sanford: WIPO Pub. No. WO 2003077077A2 titled “Pin-less card
`
`transaction using user image” to Kirk Sanford (“Sanford,” EX-1004), was filed
`
`March 6, 2003 and published September 18, 2003, and is prior art under §102(b).
`
`Hsu: European Patent Pub. No. EP 0924655A2 titled “Controlled access to
`
`doors and machines using fingerprint matching” to Shi-Ping Hsu, Bruce W. Evans,
`
`Arthur F. Messenger, Denes L. Zsolnay (“Hsu,” EX-1003), was filed November 2,
`
`1998 and published June 23, 1999, and is prior art under §102(b).
`
`Tsukamura: U.S. Patent No. 6,963,660 titled “Fingerprint collating device
`
`and fingerprint collating method” to Yoshihiro Tsukamura and Takeshi Funahashi
`
`(“Tsukamura,” EX-1005), was filed August 16, 2000 and granted November 8,
`
`2005, and is prior art under §102(e).
`
`Leu: European Patent Pub. No. EP 0881608A1 titled “Card reading device
`
`and method to initiate an event in such a device” to Walter Leu (“Leu,” EX-1008
`
`and EX-1009), was filed May 25, 1997 and published December 2, 1998, and is
`
`prior art under §102(b).
`
`Houvener: U.S. Patent No. 5,790,674 titled “System, method and computer
`
`program product for allowing access to enterprise resources using biometric
`
`devices” to Robert C. Houvener and Ian P. Hoenisch (“Houvener,” EX-1010), was
`
`filed July 19, 1996 and granted August 4, 1998, and is prior art under §102(b).
`
`3
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`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`McCalley: U.S. Patent No. 5,956,415 titled “Enhanced security fingerprint
`
`sensor package and related methods” to Karl W. McCalley, Steven D. Wilson,
`
`Dale R. Setlak, Nicolaas W. Van Vonno, Charles L. Hewitt (“McCalley,” EX-
`
`1011), was filed January 26, 1996 and granted September 21, 1999, and is prior
`
`art under §102(b).
`
`Petitioners request that the Board find each of the Challenged Claims invalid
`
`on the following grounds:
`
`Ground
`1
`
`Prior Art
`Sanford and Hsu
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`Sanford, Hsu, and Tsukamura
`
`Sanford, Hsu, and Leu
`
`Sanford, Hsu, Tsukamura, and
`Leu
`
`Sanford, Hsu, and Houvener
`
`Sanford, Hsu, Tsukamura, and
`Houvener
`
`Sanford, Hsu, and McCalley
`
`Sanford, Hsu, Tsukamura, and
`McCalley
`
`Statutory Basis
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`§103
`
`Claims
`3, 4, 6-11, 15,
`16, and 18
`
`3, 4, 6-11, 15,
`16, and 18
`
`5
`
`5
`
`12
`
`12
`
`17
`
`17
`
`4
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
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`IV. CERTIFICATION AND FEES
`Petitioners certify that the ’039 Patent is available for IPR and that
`
`Petitioners are not barred or estopped from requesting this IPR on the grounds
`
`identified herein.
`
`Any additional fees may be charged to Deposit Account No. 50-0310 (Order
`
`No. 117139-0008).
`
`V.
`
`BACKGROUND
`A.
`The ’039 Patent
`The ʼ039 Patent describes authentication using both a user’s card—such as a
`
`credit card, smart card, or key-fob—and the “user’s biometric signature.” EX-
`
`1001, Abstract, 1:33-58. For example, the process can be used for authentication
`
`at an “Automatic Teller Machine (ATM)” for cash withdrawal. Id., 9:53-59; EX-
`
`1006, ¶27.
`
`Figure 3 (below) provides a block diagram of the system, which includes a
`
`verification station 127 (yellow box) that receives a user’s card information (e.g.,
`
`information on the credit card) via a “card device reader 112” (blue) and biometric
`
`signature (e.g., a fingerprint) via a “biometric reader 102” (red).2 EX-1001, 7:50-
`
`2 Emphasis/coloring added throughout.
`
`5
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`

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`Case No. IPR2022-01094
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`53. The submitted biometric signature is compared against the biometric signature
`
`associated with the card information that is stored in the memory 124 [green]. Id.,
`
`7:53-56.
`
`EX-1001, Fig.3; EX-1006, ¶28.
`
`As illustrated in Figure 4 below, “the card data 604 [yellow] acts as the
`
`memory reference which points, as depicted by an arrow 608 [red], to a particular
`
`memory location at an address 607 [blue] in the local database 124” in the
`
`verification station of Figure 3. Id., 7:31-35. As a result, checking is efficient
`
`because only a specific biometric signature is checked, and “[t]here is no need to
`
`search the entire database 124 to see if there is a match.” Id., 8:34-41.
`
`6
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`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
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`EX-1001 Fig.4; EX-1006, ¶29.
`
`In finding claim 1 allowable, the Examiner indicated that “[n]one of the
`
`prior art teaches or suggests defining a memory location in a local memory
`
`external to card in dependence on information received from the card and
`
`when that memory location is determined to be unoccupied, storing a received
`
`biometric signature therein.” EX-1002, 292. The Examiner further indicated that
`
`“none of the prior art teaches or suggest that a verification determines if card
`
`information provided to a verification station has previously been provided to that
`
`7
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
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`verification station.” Id. The claims were allowed without prior art rejections. Id.,
`
`291-292, 318. The Examiner was not aware of any of the prior art references
`
`herein during prosecution.
`
`VI. LEVEL OF SKILL
`A person having ordinary skill in the art (“POSITA”) at the time of the
`
`alleged invention would have had at least an undergraduate degree in electrical
`
`engineering, or equivalent education, and at least two years of work experience in
`
`the field of security and access-control. EX-1006, ¶26.
`
`VII. CLAIM CONSTRUCTION
`A.
`Terms to be Construed
`1.
`Card Information “Defining” / “Defines” a Memory
`Location
`The claims include the following limitation relating to card information
`
`defining a memory location:
`
`Claims
`
`Limitation
`
`Independent claims 3, 15 and 18
`
`“memory location defined by the
`
`provided card information”
`
`This limitation is susceptible to two different interpretations regarding what it
`
`8
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`means for the “memory location” to be “defined” by the card information. EX-
`
`1006, ¶43.
`
`First interpretation: a memory location is somehow determined from (or is
`
`dependent on) the card information (“First Construction”). Under this
`
`interpretation, the system can look up or otherwise determine a specific memory
`
`location from a user’s card information. EX-1006, ¶44.
`
`Second interpretation: a memory location is specified by the card
`
`information itself (“Second Construction”). Under this interpretation, the card
`
`information itself must specify the physical memory address where the user’s
`
`biometric signature is stored, without the need to look up the memory address in a
`
`database or other data structure. EX-1006, ¶45.
`
`Petitioners believe the Second Construction was intended by the patentee
`
`and should be adopted.3 The specification, as reflected in Figure 4 (below), states
`
`that “the card data 604 [yellow] acts as the memory reference which points, as
`
`depicted by an arrow 608 [red], to a particular memory location at an address
`
`607 [blue] in the local database 124” in the verification station. Id., 7:31-35.
`
`3 Patent Owner appears to be asserting infringement claims under the First
`
`Construction. See EX-1016, p.3.
`
`9
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
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`EX-1001 Fig.4. Moreover, from the “Summary of Invention” and throughout the
`
`specification, and in the preamble of various claims, the ‘039 Patent consistently
`
`refers to a “biometric card pointer system,” i.e., the card acts as a pointer (specifies
`
`the physical memory address) to the memory location where the user’s biometric
`
`signature is stored. E.g., EX-1001, claims 1, 13, 14; 2:51-52
`
`(“SUMMARY…Disclosed are arrangements, referred to as Biometric Card
`
`Pointer (BCP) arrangements or systems…”); 3:46-47 (“biometric card pointer
`
`system”); 5:17 (same); 5:51 (“FIG. 4 illustrates the biometric card pointer
`
`concept”); 5:52 (“FIG. 5 is a flow chart of a process for using the biometric card
`
`pointer arrangement”); 6:31-35 (“The verification station [] comprises…a
`
`biometric card pointer reader…”); EX-1006, ¶46.
`
`10
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`Case No. IPR2022-01094
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`Therefore, a POSITA would have understood that the user’s card
`
`information itself specifies the physical memory address (such as by acting as a
`
`pointer) to the user’s biometric signature. EX-1006, ¶47.
`
`The ’039 Patent claims are unpatentable under either interpretation. Under
`
`the First Construction, the claims are unpatentable under Grounds 1, 3, 5, and 7
`
`(Sanford + Hsu). Under the Second Construction, the claims are unpatentable
`
`under Grounds 2, 4, 6, and 8 (Sanford/Hsu + Tsukamura). EX-1006, ¶48.
`
`B. Means-Plus-Function Limitations
`Petitioners propose constructions for the means-plus-function limitations in
`
`their respective Argument sections below.
`
`Additionally, claim 18 recites “code for” instead of “means for” for some
`
`limitations. In the context of these claims and the intrinsic evidence, “code for” is
`
`an equivalent recitation for “means for.” See also Cypress Lake Software, Inc. v.
`
`Samsung Electronics Am., Inc., No. 6:18-cv-00030, Dkt. 174, p36 (E.D. Tex. May
`
`10, 2019) (finding that “‘code for’ does not connote sufficiently definite structure”
`
`and that “the term “code for” is defined only by the function that it performs.”).
`
`The ’039 Patent’s otherwise identical language for some “code for” and “means
`
`for” terms further confirms that they should be treated equivalently. Id. Therefore,
`
`Petitioners submit that these “code for” terms are means-plus-function terms under
`
`Williamson and should be treated the same way as “means for” terms. Petitioners
`
`11
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`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`likewise propose constructions for the “code for” terms in their respective
`
`Argument sections.
`
`Other Previously-Agreed-On Terms
`C.
`Patent Owner and Apple agreed to constructions for the following terms,
`
`which are not material to unpatentability. EX-1006, ¶¶55-57.
`
`“dependent upon”
`1.
`“plain and ordinary meaning, defined as ‘contingent on or determined by’.”
`
`EX-1013, p.2.
`
`“biometric signature”
`2.
`“plain and ordinary meaning.” EX-1013, p.2.
`
`VIII. ARGUMENT
`A.
`GROUND #1: Claims 3, 4, 6-11, 15, 16, and 18 are Rendered
`Obvious by Sanford and Hsu
`1.
`Claim 34
`
`Preamble 3[P]
`
`Sanford discloses “a method of securing a process [e.g., Automated Cash
`
`Machine (ACM) cash withdrawal or a PIN-less credit card transaction] at a
`
`4 A full claim listing can be found in the Appendix.
`
`12
`
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`Case No. IPR2022-01094
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`verification station [e.g., Sanford’s ACM].” EX-1006, ¶¶268-272.5
`
`Just like the ’039 Patent, which discloses that a user needs to be verified to
`
`access a cash withdrawal process at an ATM (EX-1001, 9:50-59), Sanford
`
`discloses “[a]n automated cashier machine (ACM) [] that offers a secure and
`
`convenient way for users to access cash from their card without using a PIN.”
`
`EX-1004, ¶0006. Specifically, “the ACM verifies the identifying image of the user
`
`to an image of the user in a profile…using facial biometrics.” Id.; EX-1006, ¶269.
`
`Sanford illustrates an exemplary system in Figure 1:
`
`5 For brevity, citations to the expert declaration often appear at the end of
`
`paragraphs but apply to the full paragraph in which they are cited.
`
`13
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`Case No. IPR2022-01094
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`EX-1004, Fig.1. As shown, the system in the yellow box includes an “automated
`
`cashier machine (ACM) 12” (pink), a “server 20,” an “ACM computer system 18”
`
`(brown), and an “cashier system 14” grey). Id., ¶0014. Sanford further discloses
`
`that “ACM 12 [pink], cashier system 14 [grey], …and ACM computer system 18
`
`[brown] are preferably coupled directly and/or indirectly to each other through the
`
`14
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`

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`Case No. IPR2022-01094
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`server 20 [grey].”6 Id., ¶0015; EX-1006, ¶270.
`
`Unless otherwise specified, an ACM indicated by the yellow box (as shown
`
`in Fig.1 above), is referred to as Sanford’s ACM. Thus, Sanford’s ACM includes
`
`at least “ACM 12 [that] includes a card reader, a picture taking device, a display
`
`device, an input device, and a cash dispenser,” a “cashier system 14” that may
`
`“include a human operator,” and “ACM computer system 18” that “may be any
`
`system capable of verifying the picture taken by ACM 12.” EX-1004, ¶¶0015-17.
`
`“If the [] image is verified, the amount for withdrawal is dispersed [sic].” Id.,
`
`¶0006. Fig.2 shows “a method for conducting a PIN-less credit card transaction”
`
`performed by Sanford’s ACM. Id., ¶0024.
`
`6 A POSITA would have understood that these components of Sanford’s system
`may be present at the same physical facility. EX-1006, ¶270.
`
`15
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`Case No. IPR2022-01094
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`EX-1004, Fig.2. The process (blue box) includes a series of verification steps. As
`
`shown in Figure 2, Sanford discloses that cash dispensing occurs after a user is
`
`verified and therefore is a “secured process.” E.g., id, ¶0025, ¶0028, ¶0031; EX-
`
`1006, ¶271.
`
`16
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`Limitation 3[A]
`
`Sanford discloses “(a) providing card information [e.g., credit card
`
`account number] from a card device [e.g., credit card] to a card reader [e.g.,
`
`card reader] in the verification station [e.g., Sanford’s ACM].” EX-1006, ¶¶273-
`
`277.
`
`The ’039 Patent provides that a card device may be of “various types,” e.g.,
`
`a “standard credit card,” a “smart card,” or a “wireless ‘key-fob’.” EX-1001, 1:21-
`
`23; 1:33-58. Sanford discloses a standard “credit card.” EX-1004, Title, ¶0014.
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`Sanford also discloses that ACM 12 includes a card reader that “may be a
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`magnetic strip reader capable of reading cards with a magnetic strip such
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`as…credit cards.” EX-1004, ¶0016. As mentioned for Limitation 3[P], Sanford’s
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`ACM includes ACM 12 and its card reader is capable of reading credit cards. EX-
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`1006, ¶275, ¶¶268-272.
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`Sanford further discloses providing card information from a credit card to
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`the disclosed card reader.
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`EX-1004, Fig.2 (excerpted). As shown, in step S200 (blue), “[t]he user may begin
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`the process by inserting or swiping a credit card into the credit card reader.” Id.,
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`¶0024. The process then determines in the next step S202 (yellow) “if the credit
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`card account number of the user is enrolled to use the PIN-less credit card
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`system.” Id., ¶0025. Thus, a POSITA would have understood that the credit card
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`account number is provided to the card reader by “inserting or swiping” the card.
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`EX-1006, ¶276.
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`Limitation 3[B]
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`Sanford discloses “(b) inputting a biometric signature [e.g., picture, or
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`fingerprint] of a user [e.g., customer] of the card device [e.g., credit card] to a
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`biometric reader [e.g., camera or fingerprint reader] in the verification station
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`[Sanford’s ACM].” EX-1006, ¶¶278-281.
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`Sanford discloses that “ACM 12 includes… a picture taking device” that
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`“may be any device capable of taking a picture such as a digital camera, traditional
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`camera, or Internet web camera.” EX-1004, ¶0016. The picture taken may be
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`verified by “an algorithm based on facial biometrics.” Id., ¶0019. According to
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`the ’039 Patent, a biometric signature may be of various types, such as
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`“fingerprint, face, iris, or other unique signature.” EX-1001, 7:45-47. Therefore,
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`the user’s picture in Sanford is a biometric signature, and the picture taking device
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`is a biometric reader. Like the ’039 Patent, Sanford recognizes that in addition to
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`“facial image” (or “faceprint”), other biometric signatures including “iris, voice
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`signature, and fingerprint technology” may also be used for verification. EX-
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`1004, ¶0020. A POSITA would have understood that if a fingerprint biometric
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`were used in Sanford’s system, then the picture taking device would be replaced
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`with a fingerprint reader. Thus, Sanford discloses a biometric reader for reading a
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`biometric signature. EX-1006, ¶279.
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`Moreover, as shown in Fig. 2, if the card is already enrolled, “an identifying
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`image is taken…in step S204 [blue].” EX-1004, ¶0026.
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`EX-1004, Fig.2 (excerpted). Alternatively, “if the card is not enrolled,… a picture
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`of the customer is [also] taken” in step S234 (orange). Id., ¶0033. Thus,
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`regardless of whether the card is enrolled, the customer must input her biometric
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`signature (e.g., picture, or fingerprint) to proceed. EX-1006, ¶280.
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`Limitation 3[C]
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`Sanford discloses “(c) determining if the provided card information [e.g.,
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`credit card account number] has been previously provided to [e.g., enrolled in]
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`the verification station [e.g., Sanford’s ACM].” EX-1006, ¶¶282-285.
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`The ’039 Patent does not explain what qualifies as “ha[ving] been previously
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`provided to the verification station” other than repeating the claim language in the
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`specification. EX-1001, 4:5-6, 4:14-15; 4:32-33, 4:60, 5:3-4. However, as shown
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`in the following limitations of claim 3, “if the provided card information has not
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`been previously provided to the verification station,” “the inputted biometric
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`signature [is stored] in a memory.” Id., Cl. 3. This describes an enrollment action.
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`“[I]f the provided card information has been previously provided to the verification
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`station,” “the inputted biometric signature [is compared] to the biometric signature
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`stored in the memory.” EX-1001, Cl. 3. This describes the verification action.
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`Therefore, a POSITA would have understood that “determining if the provided
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`card information has been previously provided to the verification station” means
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`determining if the card has been previously enrolled, which Sanford discloses. As
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`shown in Figure 2, after a user provides the credit card account number at step
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`S200 (blue), “ACM 12 determines [at step S202 (yellow)] if the credit card
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`account number of the user is enrolled to use the PIN-less credit card system.”
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`EX-1004, ¶¶0024-25.
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`EX-1004, Fig.2. “If the card is not enrolled, the user is enrolled in a process
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`hereinafter described.” Id., ¶0025. “If the card is enrolled, …an identifying image
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`is taken” at step S206 (purple) for verification at step S219 (pink).7 Id., ¶0026,
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`¶0030; EX-1006, ¶283.
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`Limitation 3[D(P)+D(1)]
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`Sanford in view of Hsu discloses “if the provided card information [e.g.,
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`Sanford’s credit card account number] has not been previously provided to [e.g.,
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`not enrolled in] the verification station [e.g., Sanford-Hsu system], (da) storing
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`the inputted biometric signature [e.g., picture/fingerprint] in a memory [e.g.,
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`Sanford’s or Hsu’s local memory] at a memory location defined by the provided
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`card information [e.g., memory location in Hsu’s database].” EX-1006, ¶¶286-
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`294.
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`Sanford discloses “determining if the provided card information has been
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`previously provided to the verification station.” See Limitation 3[C]. Sanford also
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`discloses the “inputted biometric signature” (e.g., picture, or fingerprint). See
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`7 Although Sanford does not label step S219 in Fig. 2, the step in pink is the step
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`S219 described in the specification. See EX-1004, ¶0030. Further, because the
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`specification does not discuss any step labeled S217, and the step colored in pink is
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`the only unlabeled step between S218 and S220, a POSITA would have understood
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`that the step colored in pink is step S219. EX-1006, ¶284.
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`Limitation 3[B]; EX-1006, ¶287, ¶¶278-285.
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`Sanford further discloses that “if the provided card information has not been
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`previously provided to the verification station” (i.e., if the card is not enrolled), the
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`picture (or fingerprint) is stored. EX-1004, ¶0025 (“[I]f the card is not enrolled,
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`the user is enrolled in a process hereinafter described.”). As shown in Figure 2,
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`after it is determined that the card is not enrolled at step S202 (yellow), the
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`customer’s picture (or fingerprint) is taken at step S234 (purple), and the customer
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`is instructed to complete enrollment at step S246 (orange). EX-1004, ¶¶0024-37.
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`EX-1004, Fig.2. “The cashier’s PC then communicates to ACM computer system
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`18… to receive the user’s image and any other relevant data associated with the
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`original transaction from ACM database 24.” Id., ¶0040. As shown in Fig.1,
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`ACM database 24 (green) is part of ACM computer system 18 (brown), which is
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`part of Sanford’s ACM (yellow):
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`EX-1004, Fig.1. Therefore, since the cashier’s PC retrieves the user’s image from
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`ACM database 24, a POSITA would have understood that before such retrieval,
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`the user’s image must have been stored in ACM database 24. EX-1006, ¶288.
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`Moreover, Sanford discloses a verification process 22 (blue) “verify[ing]
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`that the picture taken by ACM 12 matches a picture in database 24.” EX-1004,
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`¶0018; see also ¶0021. A POSITA would have understood that such verification
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`process would happen only if the customer’s picture (or fingerprint) has been
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`stored in database 24 during an enrollment process. Therefore, if a customer’s
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`credit card were not enrolled in Sanford’s ACM, her picture/fingerprint would be
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`stored in database 24 (i.e., in memory) as part of her enrollment process. EX-1006,
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`¶289.
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`Although a user’s card number is associated with the user’s biometric
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`signature (e.g., picture/fingerprint), both being part of a user’s profile, Sanford
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`does not provide specific details about how the user’s picture or fingerprint is
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`stored in the database. See EX-1004, ¶0021; see also ¶0018 (“The picture may be
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`part of a profile that is verified. A profile may include an image of the user or a
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`corresponding entry representing the image that is used to verify the picture taken
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`by ACM 12. Additionally, a profile may include…credit card number.”); EX-
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`1006, ¶290.
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`Hsu, however, discloses a specific implementation of a database where a
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`user/account/employee number is associated with a biometric signature (e.g.,
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`fingerprint). Hsu discloses that the user/account/employee number “is stored in the
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`database 44 in association with the user’s fingerprint image data.” EX-1003,
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`¶0026, ¶0020. “The database is basically a table that associates each user number
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`with a stored fingerprint image, or with selected distinctive attributes or features of
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`the user’s fingerprint image.” Id., ¶0020; Fig.4; EX-1006, ¶291.
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`Therefore, a POSITA would have known that Sanford’s database could be
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`setup like that disclosed in Hsu to store Sanford’s credit card numbers and
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`associated pictures/fingerprints (see full motivation-to-combine after claim 3), such
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`that given a user’s credit card number, Sanford’s ACM