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 IPR2022-01094
`Patent 8,620,039
`
`
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`PATENT OWNER’S RESPONSE
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 3-12 AND 15-18)
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`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS ........................................................................................... i
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`’039 PATENT OVERVIEW ........................................................................... 4
`
`III. LEVEL OF ORDINARY SKILL .................................................................... 6
`
`IV. CLAIM CONSTRUCTION ............................................................................ 7
`
`A.
`
`B.
`
`Limitation 3[D(1)] Is Directed To Enrollment ..................................... 7
`
`“memory location defined by the provided card information” ............. 8
`
`V.
`
`THE PRIOR ART FAILS TO RENDER THE CHALLENGED
`CLAIMS OBVIOUS .....................................................................................10
`
`A. Ground 1 – The Combination of Hsu and Sanford Does Not
`Teach Or Suggest “storing the inputted biometric signature in a
`memory at a memory location defined by the provided card
`information” ........................................................................................10
`
`1.
`
`2.
`
`Hsu does not teach or suggest that card information
`“defines” the memory location of the fingerprint data
`during enrollment ......................................................................11
`
`Hsu’s cursory description of its database does not save
`Petitioner’s argument ................................................................14
`
`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” ..............................................................16
`
`1.
`
`2.
`
`3.
`
`Tsukamura’s card information plays no part in the
`enrollment process or storage of the biometric signature .........16
`
`Tsukamura’s user-driven index system is significantly
`different from the ’039 Patent’s pointer system .......................17
`
`A POSITA would not have been motivated to combine
`Tsukamura and Hsu ..................................................................21
`
`C.
`
`Dependent Claims ...............................................................................24
`
`VI. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(b) .............25
`
`A. Applicable Legal Standards ................................................................25
`
`i
`
`

`

`1.
`
`2.
`
`3.
`
`Petitioners Bear The Burden Of Persuasion .............................25
`
`RPI And Privity Standards ........................................................25
`
`a.
`
`b.
`
`Scope Of Real Parties In Interest ....................................26
`
`Scope Of Privity .............................................................27
`
`Institution Is Barred Under Section 315(b) Because
`Apple Is An RPI And Privy Of Petitioners ...............................28
`
`B.
`
`Apple Is An Unnamed RPI To This Proceeding .................................28
`
`1.
`
`2.
`
`3.
`
`4.
`
`Control Is Not A Requirement For A Non-Party To Be A
`Real-Party-In-Interest ...............................................................28
`
`Apple Has A Preexisting, Established Business
`Relationship With Petitioners ...................................................29
`
`a.
`
`b.
`
`Petitioners Admit Their Preexisting, Established
`Business Relationship With Apple .................................29
`
`The Apple Agreement Also Establishes That
`Apple Is An RPI..............................................................31
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`v.
`
`Representations And Warranties Of
`Noninfringement ..................................................34
`
`Indemnification Clauses .......................................36
`
`Product Inspection Clause ....................................37
`
`Insurance Coverage Clause ..................................38
`
`Apple Appointed As Petitioners’ Agent ..............39
`
`Apple Is A Clear Beneficiary Of The Petition ..........................40
`
`The Petitioners Filed An IPR Petition Against The ’039
`Patent For Apple’s Benefit ........................................................41
`
`C.
`
`Apple Is A Privy To This Proceeding .................................................42
`
`VII. CONCLUSION ..............................................................................................42
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`
`ii
`
`

`

`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]
`
`iii
`
`

`

`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)
`
`iv
`
`

`

`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)
`
`
`
`
`
`
`v
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`

`

`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 3, 15 and 18 being the
`
`independent claims) describe an improved method and system for securing a
`
`process at a verification station wherein a user’s biometric signature has been
`
`stored at a memory location “defined” by the user’s card information. As claimed
`
`in the ‘039 Patent, the method comprises the steps of: providing card information
`
`to a card reader in the verification station (representative clause 3[A]); 1 inputting a
`
`biometric signature of the user of the card to a biometric reader in the verification
`
`station (representative clause 3[B]); determining if the provided card information
`
`has been previously provided to the verification station (representative clause
`
`3[C]); and if the provided card information has not been previously provided to the
`
`verification station (representative clause 3[D(P)]), then storing the inputted
`
`biometric signature at a memory location defined by the provided card information
`
`(representative clause 3[D(1)]).
`
`
`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
`
`

`

`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 user’s
`
`card information defines the memory location where the inputted biometric
`
`signature will be stored.
`
`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 27 (“Sanford does not provide specific
`
`details about how the user’s picture or fingerprint is stored in the database. … Hsu,
`
`however, discloses a specific implementation of a database where a
`
`user/account/employee number is associated with a biometric signature.”)
`
`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, Limitation 3[D(1)]2 relates to enrollment,
`
`
`2 For brevity, Patent Owner refers to representative Limitation 3[D(1)] throughout
`
`this Response. Patent Owner’s arguments regarding Limitation 3[D(1)] apply
`
`equally to corresponding Limitations 15[D(1)] and 18[B(1)].
`
`2
`
`

`

`not verification, and requires more than a mere association between the fingerprint
`
`data and a memory location.
`
`Limitation 3[D(1)] requires 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 3[D(1)].
`
`However, this proposed combination fails for multiple reasons. For example,
`
`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-
`
`3
`
`

`

`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 3 of the ʼ039 Patent
`
`reads:
`
`Preamble
`3[P]
`3[A]
`
`3[B]
`
`3[C]
`
`3[D(P)]
`
`3[D(1)]
`
`3[D(2)]
`
`3[E(P)]
`
`3[E(1)]
`
`3[E(2)]
`
`A method of securing a process at a verification station, the method
`comprising the steps of:
`(a) providing card information from a card device to a card reader in
`the verification station;
`(b) inputting a biometric signature of a user of the card device to a
`biometric reader in the verification station;
`(c) determining if the provided card information has been previously
`provided to the verification station;
`(d) if the provided card information has not been previously
`provided to the verification station;
`(da) storing the inputted biometric signature in a memory at a
`memory location defined by the provided card information; and
`(db) performing the process dependent upon the received card
`information;
`(e) if the provided card information has been previously provided to
`the verification station;
`(ea) comparing the inputted biometric signature to the biometric
`signature stored in the memory at the memory location defined by the
`provided card information;
`(eb) if the inputted biometric signature matches the stored biometric
`signature, performing the process dependent upon the received card
`information; and
`
`4
`
`

`

`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, 12:51 – 13:11.
`
`
`
`(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).
`
`As the Board observed, the verification and enrollment processes of the ’039
`
`Patent are distinct procedures. See Inst Dec. at 7
`
`5
`
`

`

`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 the Notice of Allowance, the Examiner concluded that “[d]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.
`
`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
`
`6
`
`

`

`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. Limitation 3[D(1)] Is Directed To Enrollment
`
`A POSITA would clearly understand that Limitation 3[D[1)] is directed to
`
`enrollment. EX-2039 at ¶39. In particular, Limitations 3[D(P)]-3[D[1)], when read
`
`together, require “storing” a biometric signature if the card information “has not
`
`been previously provided to the verification station.” EX-1001 at 12:59-63. A
`
`POSITA 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. EX-2039 at
`
`¶39. 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.
`
`
`7
`
`

`

`Inst Dec. at 7 (emphasis added by the Board). Limitation 3[D[1)] requires
`
`“storing” the biometric signature at a memory location defined by” the card
`
`information, which is the natural end result of an enrollment process. EX-2039 at
`
`¶39. Accordingly, a POSITA would understand that Limitation 3[D[1)] is directed
`
`to enrollment. Id.
`
`B.
`
`“memory location defined by the provided card information”
`
`For the reasons set forth below, the proper construction of 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.”
`
`As discussed above, Limitation 3[D[1)] is directed to an enrollment step.
`
`Therefore, “defined,” as used in Limitation 3[D[1)], does not (and cannot) mean
`
`merely looking up or identifying something that has already been defined. EX-
`
`2039 at ¶39. Nor can it mean that the memory location merely corresponds to, but
`
`is not contingent upon or determined by, the provided card information. Id. Rather,
`
`a POSITA would interpret the word “defined,” 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
`
`8
`
`

`

`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 9) and
`
`the construction articulated by the Board in the Institution Decision (Inst. Dec. at
`
`39), Petitioner’s Second Proposed Construction and the Board’s construction
`
`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 3[D[1)]
`
`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. 3
`
`
`3 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
`
`9
`
`

`

`
`
`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 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.
`
`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 “storing the inputted biometric signature in a memory
`at a memory location defined by the provided card information”
`
`In Ground 1, Petitioner relies exclusively on Hsu as allegedly disclosing
`
`storing a biometric signature at a memory location “defined” by the card
`
`
`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 ¶¶37-38. Thus, Petitioner’s First Proposed Construction includes a
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`scenario (e.g., during verification) that may occur after enrollment has occurred
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`and the biometric signature has already been stored at the defined memory
`
`location. Id.
`
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`10
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`

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`information. See, e.g., Pet. at 27 (“Sanford does not provide specific details about
`
`how the user’s picture or fingerprint is stored in the database. … Hsu, however,
`
`discloses a specific implementation of a database where a user/account/employee
`
`number is associated with a biometric signature.”)
`
`Hsu, titled “Controlled Access to Doors and Machines Using Fingerprint
`
`Matching,” relates to “[a] system and related method for controlling access to
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`building doors or to machines, such as automatic teller machines (ATMs).”
`
`EX1003, Abstract. According to Hsu, “[t]he present invention resides in a
`
`combination of fingerprint matching and a carried form of personal identification
`
`[e.g., card information], for access to buildings or machines such as automatic
`
`teller machines (ATMs).” Id. at 1:52-55.
`
`1. Hsu does not teach or suggest that card information “defines”
`the memory location of the fingerprint data during enrollment
`
`Hsu is devoid of any teaching or suggestion that the user’s card information
`
`sets or establishes (i.e., defines) the memory location for the user’s fingerprint data
`
`during enrollment. EX-2039 at ¶46. To the contrary, Hsu expressly discloses that,
`
`during enrollment, the user’s fingerprint data and account number (or employee
`
`number or similar identity number) are presented together, simultaneously, and
`
`then are merely stored in association with each other, as follows.
`
`The enrollment procedure requires that each user enroll by presenting a
`finger to the fingerprint sensor 16, which generates a fingerprint image for
`a fingerprint enrollment analyzer 64. At the same time, the user's identity
`
`11
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`

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`has to be independently verified, by some 5 means other than fingerprint
`matching, as indicated in block 66, and the user also presents an account
`number, employee number or similar identity number. If the user does not
`have such a number, one is assigned at this stage. The account number is
`stored in the database 44 in association with the user's fingerprint image
`data.
`
`EX-1003 at col. 7:1-12 (emphasis added). Similarly, Hsu separately describes that
`
`“the reference fingerprint data are associated with corresponding user numbers, or
`
`employee or customer account numbers.” Id. at col. 6:56-58 (emphasis added).
`
`Thus, the memory location of Hsu is not “defined by” (i.e., set or established by)
`
`the card information; rather the card information (e.g., an account number) is
`
`merely stored at a memory location “in association with” the user’s fingerprint
`
`data. EX-2039 at ¶47.
`
`
`
`This is the extent of Hsu’s disclosure of the method by which the fingerprint
`
`data is stored in the database during enrollment. EX-2039 at ¶48. There is
`
`definitively no teaching or suggestion that the user’s account number (or similar
`
`identity number) sets or establishes the memory location for the fingerprint data
`
`during enrollment. Id. Rather, Hsu expressly discloses that the user’s fingerprint
`
`data and account number are presented at the same time, and then are merely
`
`stored in association with each other. Id.
`
`
`
`A POSITA would have understood that, in Hsu’s enrollment procedure, the
`
`user’s account number specifically does not set or establish the memory location
`
`for the fingerprint data as required by Limitation 3[D(1)]. EX-2039 at ¶49.
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`12
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`Petitioner’s own expert agreed that, in the enrollment method claimed in the ’039
`
`Patent, the biometric signature (e.g., fingerprint image data) cannot be stored at a
`
`memory location until after the memory location is set or established (i.e.,
`
`“defined”) by the card information. See EX-2040 at 19:8 – 20:19. In contrast to the
`
`claimed method, Hsu teaches that the user’s fingerprint data and account number
`
`are presented at the same time and are then stored in the database in association
`
`with each other. EX-2039 at ¶49. In other words, in Hsu, the fingerprint data and
`
`the account number are presented together and are then stored together. Id. There is
`
`no step in Hsu wherein the account number (or the “card information”) first sets or
`
`establishes the memory location. Id. Nor is there a step wherein after—and only
`
`after—the account number sets or establishes the memory location, the fingerprint
`
`data is then stored at that location. Id. Therefore, Hsu fails to teach or suggest
`
`Limitation 3[D(1)].
`
`
`
`Petitioner argues that the biometric signature in the Sanford-Hsu system is
`
`“not stored at any memory location in the database—rather, it is stored at the
`
`memory location associated with the corresponding credit card number (Hsu’s
`
`user/employee number) received from a card.” Pet. at 28 (emphasis in Petition).
`
`However, even if this characterization of Hsu is accurate (which Patent Owner
`
`does not concede), it still does not satisfy Limitation 3[D(1)]. EX-2039 at ¶50. As
`
`discussed in Section IV, Limitation 3[D(1)] requires that the memory location be
`
`13
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`

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`“contingent upon or determined by” the card information. Thus, a memory location
`
`as in Hsu which merely corresponds to, but is not contingent upon or determined
`
`by, the received card information does not satisfy Limitation 3[D(1)]. EX-2039 at
`
`¶50.
`
`
`
`Hsu does not teach or suggest that the memory location for the fingerprint
`
`data is contingent upon or determined by the user’s account number itself during
`
`enrollment. Id. at ¶51. To the contrary, Hsu expressly discloses that the user’s
`
`account number and fingerprint are presented to the system at the same time, and
`
`then are merely stored in the database in association with each other. Id.
`
`Accordingly, the combination of Hsu and Sanford does not render the Challenged
`
`Claims obvious.
`
`2. Hsu’s cursory description of its database does not save
`Petitioner’s argument
`
`
`
`Hsu describes its database as “basically a table that associates each user
`
`number with a stored fingerprint image, or with selected distinctive attributes or
`
`features of the user’s fingerprint image.” EX-1003 at 4:53-57 (in ¶0020). This
`
`language merely teaches that the user number (e.g., the user’s account number) is
`
`stored at a memory location in the database in association with the user’s
`
`fingerprint data. EX-2039 at ¶52. There is no teaching or suggestion that the
`
`memory location is contingent on, or determined by the user number, nor is there
`
`14
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`

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`any teaching or suggestion that the user number sets or establishes the memory
`
`location. Id.
`
`In his deposition, Mr. Lipoff suggested that Hsu’s one-sentence description
`
`of its database in ¶ 0020 (discussed above) somehow teaches that “the user number
`
`is defining the memory location in which the stored fingerprint image will be
`
`stored.” See EX2040 at 33:16 – 34:12. This argument is not clearly articulated in
`
`the Petition, but even if it were, it would do nothing to advance Ground 1. The
`
`language in Hsu’s ¶ 0020 essentially tr