Trials@uspto.gov
`571-272-7822
`
`Paper 35
`Entered: January 31, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASSA ABLOY AB, ASSA ABLOY INC.,
`ASSA ABLOY RESIDENTIAL GROUP, INC., AUGUST HOME, INC.,
`HID GLOBAL CORPORATION, and
`ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioner,
`v.
`
`CPC PATENT TECHNOLOGIES PTY, LTD,
`Patent Owner.
`
`IPR2022-01094
`Patent No. 8,620,039 B2
`
`
`
`Before SCOTT A. DANIELS, AMBER L. HAGY and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`
`INTRODUCTION
`I.
`ASSA ABLOY AB, ASSA ABLOY Inc., ASSA ABLOY Residential
`Group, Inc., August Home, Inc., HID Global Corporation, and ASSA
`ABLOY Global Solutions, Inc., (“ASSA” or “Petitioner”) filed a Petition
`requesting inter partes review (“IPR”) of claims 3–12 and 15–18 of U.S.
`Patent No. 8,620,039 B2 (Ex. 1001, “the ’039 patent”). Paper 2 (“Pet”).
`CPC Patent Technologies PTY, Ltd., (“CPC” or “Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 11 (“Prelim. Resp.”). Petitioner
`filed a Reply to Patent Owner’s Preliminary Response. Paper 15 (“Prelim.
`Reply”). Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 18
`(“Prelim. Sur-Reply”).
`Following our Institution Decision (Paper 20, “Inst. Dec.”), in which
`we determined that Petitioner was not time-barred from filing its Petition,
`Patent Owner filed a Response. Paper 23 (“PO Resp.”). See Inst. Dec. 9–
`34. Petitioner filed a Reply. Paper 25 (“Pet. Reply”). Patent Owner filed a
`Sur-Reply. Paper 29 (“PO Sur-Reply”). An oral hearing was held on
`November 9, 2023. A transcript of the hearing has been entered as Paper 35.
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a). For the reasons
`explained below, we determine that Petitioner has met its burden of showing
`by a preponderance of the evidence that claims 3–12 and 15–18 are
`unpatentable.
`Real Parties in Interest
`A.
`Petitioner states that ASSA ABLOY AB, ASSA ABLOY Inc., ASSA
`ABLOY Residential Group, Inc., August Home, Inc., HID Global
`Corporation, and ASSA ABLOY Global Solutions, Inc., are the real parties
`
`2
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`in interest. 1 Pet. 1. Patent Owner states that CPC Patent Technologies PTY,
`Ltd., is the real party in interest. Paper 4, 2.
`Related Matters
`B.
`Petitioner indicates that it filed a declaratory judgment against Patent
`Owner with respect to the ’039 patent in ASSA ABLOY AB, et al. v. CPC
`Patent Technologies Pty Ltd., et al., No. 3-22-cv-00694, in the United States
`District Court for the District of Connecticut. Pet. 1–2. And Petitioner
`points out that the ’039 Patent is asserted against Apple, Inc., in CPC Patent
`Technologies Pty Ltd v. Apple Inc., No. 3:22-cv-02553, in the United States
`District Court for the Northern District of California, San Jose Division. Id.
`Petitioner points out that Apple challenged the ’039 patent in IPR2022-
`00600. Id. at 2. On October 13, 2023, we entered a Final Written Decision
`(Paper 22) in IPR2022-00600 finding claims 1, 2, 19, and 20 of the ’039
`patent invalid for obviousness. Concurrently with this Decision, in
`IPR2022-01093, we determine that claims 1, 2, 13, 14, 19, and 20 of the
`’039 patent are invalid for obviousness.
`In addition to the proceedings noted by Petitioner, Patent Owner
`indicates that “the following judicial and/or administrative matters [] may
`affect, or be affected by, a decision in this proceeding:” CPC Patent
`Technologies PTY Ltd. v. HMD Global Oy, Case No. 6:21-cv-00166 in the
`United States District Court for the Western District of Texas; IPR2022-
`00600; IPR2022-00601; IPR2022-00602; IPR2022-01006; IPR2022-01045;
`IPR2022-01089; and IPR2022-01093. Paper 4, 2–3.
`
`
`1 In its Declaratory Judgment Complaint against Patent Owner, Petitioner
`also refers to ASSA ABLOY Global Solutions, Inc., as “ASSA ABLOY
`Global Solutions, Inc. (‘Hospitality’).” Ex. 2007, 2.
`3
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`The ’039 Patent (Ex. 1001)
`C.
`The ’039 patent, titled “Card Device Security Using Biometrics,”
`relates to a biometric card pointer (BCP) system intended to more efficiently
`and securely permit a user to store biometric information during a user
`enrollment phase, and in future verification processes permits the user access
`their account using an identification (ID) card and biometric information
`such as a fingerprint. Ex. 1001, code (54), 2:51–3:11.
`The ’039 patent explains that in the enrollment phase “[t]he card
`user’s biometric signature is automatically stored the first time the card user
`uses the verification station in question (this being referred to as the
`enrolment phase).” Id. at 2:62–64. The ’039 patent explains further that
`“[t]he biometric signature is stored at a memory address defined by the
`(‘unique’) card information on the user’s card as read by the card reader of
`the verification station.” Id. at 2:64–67. Following the enrollment phase,
`the ’039 patent describes that
`[a]ll future uses (referred to as uses in the verification phase) of
`the particular verification station by someone submitting the
`aforementioned card requires the card user to submit both the
`card to the card reader and a biometric signature to the biometric
`reader, which is verified against the signature stored at the
`memory address defined by the card information thereby
`determining if the person submitting the card is authorised to do
`so.
`Id. at 3:4–11. 2 For both enrollment and future uses, the use of the ID card at
`a verification station “is identical from the card user’s perspective, requiring
`
`
`2 The words “enrolment,” “authorise,” and “authorisation” are the British
`spellings of “enrollment,” “authorize,” and “authorization.” See, e.g.,
`https://www.merriam-webster.com/dictionary/authorisation, last visited Jan.
`
`
`
`4
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`

`

`IPR2022-01094
`Patent 8,620,039 B2
`merely input of the card to the card reader, and provision of the biometric
`signature ([e.g.] thumb print or retinal scan etc.) to the biometric reader.” Id.
`at 3:12–15.
`Figure 4 of the ’039 patent is reproduced below.
`
`
`
`
`Figure 4, of the ’039 patent, above, illustrates swipe or smart card 601
`including card information 605 encompassing fields for card type 602, card
`range 603, and card data 604. The ’039 patent describes that “the card data
`604 acts as the memory reference which points, as depicted by an arrow 608,
`
`
`5, 2023. We will use the American English spelling of these words except
`where quoted from the ’039 patent.
`
`
`5
`
`

`

`IPR2022-01094
`Patent 8,620,039 B2
`to a particular memory location at an address 607 in the local database 124.”
`Id. at 7:31–35. Information 605 can be encoded on a magnetic strip on the
`card, for example. Id. at 7:28–29. The ’039 patent explains that for a
`specific user “[i]n an initial enrolment phase, . . . [t]he card data 604 defines
`the location 607 in the memory 124 where their unique biometric signature
`is stored.” Id. at 7:43–49. And, the ’039 patent explains further that “in
`later verification phases, . . . [t]his signature is compared to the signature
`stored at the memory location 607 in the memory 124, the memory location
`607 being defined by the card data 604 read from their card 601 by the card
`reader 112.” Id. at 7:50–56.
`Figures 6 and 7, reproduced below, depict the differences between
`verification process 205 shown in Figure 6, and enrollment process 207
`shown in Figure 7.
`
`
`Figure 6 illustrates verification process 205, which occurs after the
`enrollment process, illustrated below in Figure 7.
`
`6
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`

`

`IPR2022-01094
`Patent 8,620,039 B2
`
`
`Figure 7 of the ’039 patent illustrates enrollment process 207 where the
`system at “step 401 stores the biometric signature received by the step 203 in
`the memory 124 at a memory address defined by the card data 604.” Id. at
`9:64–66 (referring to elements 203 and 124 described in Figure 5). Figure 6
`illustrates that verification process 205
`is entered from the step 204 in FIG. 5, after which a step 301
`authorises the transaction. This authorisation step 301 indicates
`that the biometric signal received by the biometric reader 102 in
`the step 203 matches the biometric signature previously stored in
`the local database 124 by a previous enrolment process 207.
`Id. at 9:43–48. Then, “step 204 reads the contents stored at a single memory
`address defined by the card data 604 and checks these contents against the
`biometric signature received in the step 203.” Id. at 8:34–37.
`A difference between verification process 205 and enrollment process
`207 is that the enrollment process includes step 401, which stores the
`biometric signature “at a memory address defined by the card data 604,”
`whereas in verification process 205 “step 204 reads the contents stored at a
`
`7
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`

`IPR2022-01094
`Patent 8,620,039 B2
`single memory address defined by the card data 604” and compares the
`stored biometric signature with the input biometric signature. Id. at 9:65–66,
`8:24–26 (emphasis added).
`Illustrative Claim
`D.
`Claims 3, 15, and 18 are independent. Each of claims 4–12 and 16–17
`depends, respectively, from independent claims 3 and 15. Claim 3, a
`method claim, illustrates the claimed subject matter and is reproduced below
`with certain limitations of interest in italics:3
`3. 3[P] A method of securing a process at a verification
`station, the method comprising the steps of:
`3[A] (a) providing card information from a card device to
`a card reader in the verification station;
`3[B] (b) inputting a biometric signature of a user of the
`card device to a biometric reader in the verification station;
`3[C] (c) determining if the provided card information has
`been previously provided to the verification station;
`3[D(P)] (d) if the provided card information has not been
`previously provided to the verification station;
`3[D(1)] (da) storing the inputted biometric signature in
`a memory at a memory location defined by the provided card
`information; and
`3[D(2)] (db) performing the process dependent upon
`the received card information;
`3[E(P)] (e) if the provided card information has been
`previously provided to the verification station;
`3[E(1)] (ea) comparing the inputted biometric
`signature to the biometric signature stored in the memory at
`
`
`3 We adopt and have applied Petitioner’s alphanumeric designations for the
`elements of the challenged claims. See, e.g., Pet. 12–36.
`8
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`IPR2022-01094
`Patent 8,620,039 B2
`the memory location defined by
`information;
`3[E(2)] (eb) if the inputted biometric signature matches
`the stored biometric signature, performing the process
`dependent upon the received card information; and
`3[E(3)] (ec) if the inputted biometric signature does not
`match the stored biometric signature, not performing the
`process dependent upon the received card information.
`Ex. 1001, 11:67–14:21. The limitations 3[A]–3[E(3)] are similarly recited in
`independent claim 15 as an apparatus claim for “[a] verification station for
`securing a process,” and also in independent claim 18 in the context of “[a]
`non-transitory computer readable medium.” Id. at 14:23–46, 14:64–15:24.
`Prior Art and Asserted Grounds
`E.
`Petitioner asserts that claims 1–12 and 15–18 would have been
`unpatentable based on the following grounds:
`Claim(s)
`Challenged
`3, 4, 6–11, 15,
`16, 18
`3, 4, 6–11, 15,
`16, 18
`5
`
`Sanford,5 Hsu,6
`Sanford, Hsu,
`Tsukamura7
`Sanford, Hsu, Leu8
`
`the provided card
`
`35 U.S.C. §4
`
`Reference(s)/Basis
`
`103(a)
`
`Ground
`1
`
`2
`
`3
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes
`to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent
`application filed before March 16, 2013. Because the application for the
`patent at issue in this proceeding has an effective filing date before March
`16, 2013, we refer to the pre-AIA version of the statute.
`5 Ex. 1004, PCT Appl’n No. PCT/US03/07238 (pub. Sept. 18, 2003).
`6 Ex. 1003, European Patent Appl’n No. EP 0924655 A2 (pub. June 23,
`1999).
`7 Ex. 1005, US Patent No. 6,963,660 B1 (Nov. 8, 2005).
`8 Ex. 1008, European Patent Appl’n No. EP O 881 608 A1 (pub. Dec. 2,
`1986)
`
`103(a)
`103(a)
`
`9
`
`

`

`Ground
`4
`
`IPR2022-01094
`Patent 8,620,039 B2
`Claim(s)
`Challenged
`5
`12
`12
`17
`17
`
`35 U.S.C. §4
`
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`5
`6
`
`7
`8
`
`Reference(s)/Basis
`Sanford, Hsu, Leu,
`Tsukamura
`Sanford, Hsu, Houvener9
`Sanford, Hsu,
`Tsukamura, Houvener
`Sanford, Hsu, McCalley10
`Sanford, Hsu,
`Tsukamura, McCalley
`Petitioner relies on the testimony of Stuart Lipoff. Ex 1006 ¶¶ 1–459.
`Patent Owner presents the testimony of Samuel Russ, Ph.D. Ex. 2039 ¶¶ 1–
`72.
`
`II. ANALYSIS
`
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007). “[W]hen a patent claims a structure already known in
`the prior art that is altered by the mere substitution of one element for
`another known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). The question of obviousness is resolved based
`on underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`
`
`9 Ex. 1010, US Patent No. 5,790,674 (Aug. 4, 1998).
`10 Ex. 1011, US Patent No. 5,956,415 (Sep. 21, 1999).
`10
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`IPR2022-01094
`Patent 8,620,039 B2
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of non-obviousness. Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`Level of Ordinary Skill in the Art
`B.
`Factors pertinent to a determination of the level of ordinary skill in
`the art include (1) the educational level of the inventor; (2) the type of
`problems encountered in the art: (3) prior art solutions to those problems;
`(4) rapidity with which innovations are made; (5) sophistication of the
`technology, and (6) educational level of workers active in the field. Envt’l.
`Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983)
`(citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d
`1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in
`every case, and one or more of these or other actors may predominate in a
`particular case. Id. Moreover, these factors are not exhaustive but are
`merely a guide to determining the level of ordinary skill in the art. Daiichi
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`In determining a level of ordinary skill, we also may look to the prior
`art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). Additionally, the Supreme Court informs
`us that “[a] person of ordinary skill is also a person of ordinary creativity,
`not an automaton.” KSR, 550 U.S. at 421.
`Petitioner proposes that a person of ordinary skill in the art at the time
`of the ’039 patent “would have had at least an undergraduate degree in
`electrical engineering, or equivalent education, and at least two years of
`work experience in the field of security and access-control.” Pet. 8 (citing
`Ex. 1006 ¶ 26).
`
`11
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`

`

`IPR2022-01094
`Patent 8,620,039 B2
`Patent Owner offers the level of ordinary skill we adopted in
`IPR2022-00600, which is that a person of ordinary skill in the art at the time
`of the ’039 Patent
`would have had at least a bachelor’s degree in computer
`engineering, computer science, electrical engineering, or a
`related field, with at least one year of experience in the field of
`human-machine
`interfaces and device access security.
`Additional education or experience might substitute for the
`above requirements.
`PO Resp. 6–7; see also IPR2022-00600, Paper 22 at 12 (PTAB October 13,
`2023) (Final Written Decision).
`In this proceeding, Patent Owner’s and Petitioner’s levels of ordinary
`skill in the art, in particular education, are not substantively different.
`Petitioner’s proposal requires at least two years of experience in the field of
`security and access control, compared to one year as proposed by Patent
`Owner. We maintain our determination of the level of ordinary skill in the
`art from IPR2022-00600, including at least one year of experience as Patent
`Owner urges. On this record, Patent Owner’s proposed level of ordinary
`skill in the art is consistent with our review and understanding of the
`technology and descriptions in the ’039 patent and the asserted prior art
`references. See Okajima, 261 F.3d at 1355. Indeed, the difference between
`one and two years of experience in the field is fairly minimal considering
`that neither party asserts that it is necessary to have a significant amount of
`experience, e.g., 5–10 years in the field. For consistency, we rely on the
`same level of ordinary skill in the art that we determined in IPR2022-00600.
`C. Claim Construction
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`
`12
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`

`IPR2022-01094
`Patent 8,620,039 B2
`282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe
`the claim “in accordance with the ordinary and customary meaning of such
`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id. Furthermore, we expressly construe the
`claims only to the extent necessary to determine whether to institute inter
`partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms
`‘that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))).
`“if the provided card information has not been
`1.
`previously provided to the verification station . . . storing
`the imputed biometric signature”
`Patent Owner argues that the independent claims challenged here, for
`example limitations 3[D](P)+[D](1)], are specifically directed to an
`enrollment process, although the word “enrolling” or “enrollment,” is not
`recited expressly in the claims. PO Resp. 7 (citing Ex. 2039 ¶ 39). Patent
`Owner argues that a person of ordinary skill in the art “would understand
`this to be an enrollment process because the user’s card information has not
`previously been entered into the system and the user’s biometric data has not
`previously been stored in the system’s memory. Id.
`Petitioner does not address whether the claims encompass an
`enrollment process. See, generally, Pet.
`Because at least Hsu, Sanford, and Tsukamura each discloses an
`enrollment process, in this case we need not explicitly determine whether the
`language from which Patent Owner argues infers “enrollment” in claim 3 is
`limiting. We can agree that from reading the ’039 patent in context there is
`
`13
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`

`IPR2022-01094
`Patent 8,620,039 B2
`a difference between verification process 205 and enrollment process 207.
`As we explained in our Institution Decision
`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.
`Inst. Dec. 7 (citing Ex. 1001, 9:65–66, 8:24–26). The language of the
`independent claims and the requirement that where the card information has
`not been previously provided, “storing the inputted biometric signature,”
`tracks with the specification description of an enrollment phase.
`See Ex. 1001, 9:63–65 (“The [enrollment] process 207 is entered from the
`step 206 in FIG. 5, after which a step 401 stores the biometric signature
`received by the step 203 in the memory 124.”). Therefore, for purposes of
`this Decision, we will consider the limitations of claims 3, 15, and 18 to
`include, at least in part, an enrollment process. However, because the terms
`“enrolling” or “enrollment” do not create any particular dispute between the
`parties that we need to resolve, we need not determine whether they are, in
`fact limitations.
`2.
`
`“a memory location defined by the provided card
`information”
`Claim limitation 3[D](1) recites the step of “storing the inputted
`biometric signature in a memory at a memory location defined by the
`provided card information.” Ex. 1001, 12:61–63 (emphasis added). Patent
`Owner argues that “the proper construction of [this] claim term is: ‘the
`system sets or establishes a memory location in a memory, said location
`being contingent upon or determined by the provided card information.’”
`PO Resp. 8. Patent Owner also argues that a person of ordinary skill in the
`
`14
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`

`IPR2022-01094
`Patent 8,620,039 B2
`art “would interpret the word ‘defined,’ especially in the context of
`enrollment, to mean ‘setting’ or ‘establishing.’” Id.
`Petitioner proposes alternative constructions. Petitioner first proposes
`that “defining” means that “a memory location is somehow determined from
`(or is dependent on) the card information.” Pet. 9. Petitioner alternatively
`proposes that “defining” means “a memory location is specified by the card
`information itself.” Id. Petitioner contends that the second construction is
`most consistent with the specification of the ’039 patent specification. Id.
`According to Petitioner, and considering that the ’039 describes “a biometric
`card pointer system,” a person of ordinary skill in the art “would have
`understood that the user’s card information itself specifies the physical
`memory address (such as by acting as a pointer) for the user’s biometric
`signature.” Id. at 11 (citing Ex. 1006 ¶ 47).
`Consistent with our prior decision in IPR2022-00600 and our
`concurrent decision in IPR2022-01093, we determine also in this proceeding
`that Patent Owner’s construction is sufficiently accurate.11 See Apple, Inc. v.
`CPC Patent Technologies, Ltd., IPR2022-00600, Paper 22, 29–39 (Final
`Written Decision); see also NTP Inc., v. Research in Motion, Ltd., 418 F.3d
`1282, 1293 (Fed. Cir. 2005) (noting that, when construing claims in patents
`that derive from the same parent application and share common terms, “we
`
`11 Different from independent claim 1 addressed in IPR2022-01093 and
`IPR2022-00600, independent claim 3, and specifically limitation 3[D(1)],
`does not recite “defining, dependent upon the received card information,”
`but “defined by the provided card information.” Compare Ex. 1001, 12:33,
`with id. at 12:63–64. Limitation 3[E(2)] does additionally recite
`“performing the process dependent upon the received card information.”
`For purposes of claim construction, we do not find the claim language as to
`these limitations between claims 1 and 3 to be substantively different in
`scope or meaning nor does either party argue that they are.
`15
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`IPR2022-01094
`Patent 8,620,039 B2
`must interpret the claims consistently across all asserted patents”). In our
`Final Written Decision in IPR2033-00600, we explained that
`[c]onsidering the abstract and the specification of the ’039 patent,
`what “defining, dependent upon . . .” means as a whole, in the
`context of claim 1 and “a method of enrolling,” is that during an
`enrollment process, the claimed “biometric signature,” e.g., a
`fingerprint, is not yet stored in the memory and no memory
`location or address has been “set” or “established” for the
`fingerprint. When the fingerprint, and then the card, is provided
`to the system during enrollment, the card information provides
`data that establishes where, e.g., at what memory location or
`address, the system will store the fingerprint data.12
`IPR2022-00600, Paper 22, 30. We also explained that “[i]mportantly . . . we
`do not understand that ‘defining . . . a memory location,’ or Patent Owner’s
`alternative wording, ‘establishing’ or ‘setting,’ means ‘[creating] . . . a
`memory location in a local memory.’” Id. at 32. We explained further that
`“[w]hile we might agree that ‘the memory location cannot [already be
`defined],’ . . . we do not agree that it ‘cannot already exist.’” Id. at 33.
`During the oral hearing in this proceeding, Patent Owner’s counsel argued
`that “Patent Owner in this case has not argued that defining means creating.”
`Tr. 31:3–4. Patent Owner’s counsel argued further, “[a]ll we’re saying that
`Claim 1 requires is that when a user swipes their card, that is the information
`that is on the card, not -- in that moment in time, not something else in the
`
`
`12 We use the terms “memory location” and “memory address”
`interchangeably because, in terms of computer memory, an “address” is
`well-understood as “[a] number specifying a location in memory where data
`is stored.” MICROSOFT COMPUTER DICTIONARY, 5th Ed. (2002) Microsoft
`Press.
`
`16
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`IPR2022-01094
`Patent 8,620,039 B2
`system, but the information on the card that directs the system where to store
`that particular user’s fingerprint or other biometric data.”13 Id. at 31:7–11.
`Considering Patent Owner’s arguments and asserted claim
`construction with respect to the phrase “memory location defined by the
`provided card information” and limitation 3[D](1) as a whole, we maintain
`the claim construction given in IPR2022-00600 for the reasons provided
`here and in the Final Written Decision in that proceeding. IPR2022-00600,
`Paper 22, 29–36.
`We understand that, during an enrollment process, the claimed
`“biometric signature,” e.g., a fingerprint, is not yet stored in the memory,
`and no memory location or address has been “defined,” as in “set” or
`“established,” in the memory for storing the fingerprint, until card
`information is received. Once the card information and fingerprint are
`received during enrollment, the card information provides data that
`establishes where, i.e., at what memory location or address, the system will
`store the fingerprint data. The memory location or address where the
`fingerprint data is stored is, therefore, “contingent” on the card information,
`as Patent Owner’s construction requires.
`Other claim terms agreed upon and construed by the
`3.
`District Court
`Petitioner indicates that the following terms have been previously
`agreed to between Apple and Patent Owner:
`“dependent upon” – Plain and ordinary meaning, defined as
`“contingent on or determined by”
`
`
`13 We understand in the context of this proceeding that Patent Owner’s
`counsel’s argument would apply to independent claims 3, 15, and 18 as well
`as claim 1.
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`“biometric signature” – Plain and ordinary meaning.
`Pet. 12 (citing Ex. 1013, 2). Patent Owner does not specifically address
`these terms in its Patent Owner Response.
`Considering these constructions and that our analysis does not turn on
`any particular claim construction for these terms, and because these
`constructions are not in dispute, we need not determine any specific claim
`construction for these terms in this proceeding.
`4. Means-plus-function terms
`In our Institution Decision we accepted Petitioner’s proposed
`constructions for the several “means for” and “code for” limitations recited
`in claims 15 and 18. See Inst. Dec. 42 (The Board explaining that “we find
`Petitioner’s proposed constructions of these term under 35 U.S.C. § 112(6)
`consistent with the record in this case.”). These constructions are also
`consistent with the District Court proceeding. Inst. Dec. 39–43; see also
`Ex. 1012, 1–4. Patent Owner does not address the means-plus-function
`terms in the challenged claims.
`Because patentability on the claims at issue in this case does not turn
`on construction of the relative structures and functions of these means-plus-
`function terms, and because they are not in dispute, we maintain the
`constructions from our Institution Decision including that “code for” is an
`equivalent recitation for “means for.” Inst. Dec. 39–43.
`D. Ground 1: Claims 3, 4, 6–11, 15, 16, and 18 – Obviousness
`over Sanford (Ex. 1004) and Hsu (Ex. 1003)
`For the reasons below, and on the complete record before us,
`Petitioner has shown by a preponderance of the evidence that claims 3, 4, 6–
`11, 15, 16, and 18 would have been obvious over Sanford and Hsu.
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`IPR2022-01094
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`Sanford (Ex. 1004)
`1.
`Sanford is titled “Credit Card Transaction without using a Pin with
`Automated Cashier Machine” and describes “[a]n automated cashier
`machine (ACM) is provided that offers a secure and convenient way for
`users to access cash from their card without using a PIN.” Ex. 1004,
`Abstract, codes (54), (57). Sanford describes that “[b]y verifying a user’s
`image using facial biometrics, transactions may be conducted without using
`a pin.” Id. ¶ 7. Sanford explains further that “[o]ther methods of
`verification known in the art may also be used, such as iris, voice signature,
`and fingerprint technology.” Id. ¶ 20. The relevant part of Sanford’s Figure
`2, as annotated by the Board, is reproduced below.
`
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`Sanford’s figure 2 is a block diagram illustrating a method for performing a
`PIN-less credit card transaction using an ACM (automated cashier machine).
`Id. ¶ 24. After swiping a user’s card at step 200, the system determines
`whether the user’s card information is already stored, i.e. enrolled, and “the
`ACM 12 determines if the credit card account number of the user is enrolled
`to use the PIN-less credit card system.” Id. In determining if the user is
`enrolled, “ACM 12 may communicate with ACM computer system 18 to
`look up the user’s credit card number.” Id. ¶ 25. At step 202, highlighted
`yellow above, ACM 12 determines an enrollment course of action; if the
`card is not enrolled, moving to step 232, or, if the card is already enrolled,
`conducting a verification course of action via step 204. Id.
`Hsu (Ex. 1003)
`2.
`Titled “Controlled Access to Doors and Machines Using Fingerprint
`Matching,” Hsu describes “[a] system and related method for controlling
`access to building doors or to machines, such as automatic teller machines
`(ATMs).” Ex. 1003, Abstract, codes (54), (57). Hsu describes using “an
`account number or employee number, to access a fingerprint database (44)
`and retrieve reference fingerprint data previously stored there during an
`enrollment procedure.” Id., Abstract. Figure 3 from Hsu is reproduced
`below.
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`
`
`Hsu’s Figure 3 is a block diagram illustrating card reader 62 reading “an
`account number or other type of identification unique to the user, and passes
`this data to the access controller 42' over line 48.” Id. at 6:10–12. Based on
`the user’s unique identification access controller 42' communicates with
`finger print database 44 “to access the fingerprint database 44 and obtain a
`user reference fingerprint on line 56 from the database.” Id. at 6:14–16.
`Hsu explains that
`[t]he controller 42' also sends a “start” signal on line 58 to the
`fingerprint correlator 46, which compares the reference
`fingerprint with a subject fingerprint image supplied from the
`sensor 1 6 over line 54. If the correlator 46 finds a match, the
`correlator sends a signal over line 58 to the access controller 42',
`which transmits an appropriate signal to the computer 60 on line
`28, indicating that access has been granted.
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`Id. at 6:16–24.
`Hsu also describes an enrollment process shown in Figure 4 and
`reproduced below.
`
`
`Hsu’s Figure 4 illustrates a block diagram showing that a user’s fingerprint
`is obtained by fingerprint sensor 16 and passes through fingerprint
`enrollment analyzer 64 b