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
`
`_____________________________________________________________
`
`DECLARATION OF STUART LIPOFF
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 1-20)
`
`Petitioners Ex. 1006
`
`

`

`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
`
`V.
`VI.
`
`Contents
`ENGAGEMENT .......................................................................................... 1
`I.
`PROFESSIONAL BACKGROUND............................................................ 2
`II.
`III. MATERIALS REVIEWED ......................................................................... 6
`IV.
`DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART ...................................................................................................... 7
`OVERVIEW OF THE ʼ039 PATENT ......................................................... 8
`CLAIM CONSTRUCTION ....................................................................... 15
`A.
`Terms to be Construed ....................................................................... 15
`1.
`Card Information “Defining / Defines” a Memory
`Location ................................................................................... 15
`“unoccupied” ............................................................................ 18
`2.
`B. Means-Plus-Function Limitations ...................................................... 19
`C.
`Previously-Construed Terms .............................................................. 19
`1.
`“biometric card pointer system” .............................................. 20
`2.
`“biometric card pointer enrollment system” ............................ 20
`D. Other Previously-Agreed-On Terms .................................................. 20
`1.
`“dependent upon” ..................................................................... 20
`2.
`“biometric signature” ............................................................... 21
`VII. ANTICIPATION ........................................................................................ 21
`VIII. OBVIOUSNESS ......................................................................................... 21
`IX.
`OPINIONS REGARDING PATENTABILITY ........................................ 22
`X.
`THE CLAIMS OF THE ʼ039 PATENT ARE INVALID .......................... 25
`A.
`IPR2022-001093 GROUND #1: Claims 1, 2, 13, 14, 19, and 20
`are rendered obvious by Hsu and Sanford ......................................... 25
`1.
`Claim 1 is rendered obvious by Hsu and Sanford ................... 25
`2.
`Claim 2 is rendered obvious by Hsu and Sanford ................... 52
`3.
`Claim 13 is rendered obvious by Hsu and Sanford ................. 62
`
`i
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`

`

`B.
`
`C.
`
`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 14 is rendered obvious by Hsu and Sanford ................. 70
`4.
`Claim 19 is rendered obvious by Hsu and Sanford ................. 73
`5.
`Claim 20 is rendered obvious by Hsu and Sanford ................. 84
`6.
`IPR2022-001093 GROUND #2: Claims 1, 2, 13, 14, 19, and
`20 are rendered obvious by Hsu, Sanford, and Tsukamura ............... 87
`1.
`Claim 1 is rendered obvious by Hsu, Sanford, and
`Tsukamura ................................................................................ 87
`Claim 2 is rendered obvious by Hsu, Sanford, and
`Tsukamura .............................................................................. 105
`Claim 13 is rendered obvious by Hsu, Sanford, and
`Tsukamura .............................................................................. 106
`Claim 14 is rendered obvious by Hsu, Sanford, and
`Tsukamura .............................................................................. 110
`Claim 19 is rendered obvious by Hsu, Sanford, and
`Tsukamura .............................................................................. 112
`Claim 20 is rendered obvious by Hsu, Sanford, and
`Tsukamura .............................................................................. 113
`IPR2022-001094 GROUND #1: 3, 4, 6-11, 15, 16, and 18 are
`Rendered Obvious by Sanford and Hsu ........................................... 114
`1.
`Claim 3 is rendered obvious by Sanford and Hsu ................. 114
`2.
`Claim 4 is rendered obvious by Sanford and Hsu ................. 143
`3.
`Claim 6 is rendered obvious by Sanford and Hsu ................. 144
`4.
`Claim 7 is rendered obvious by Sanford and Hsu ................. 150
`5.
`Claim 8 is rendered obvious by Sanford and Hsu ................. 153
`6.
`Claim 9 is rendered obvious by Sanford and Hsu ................. 155
`7.
`Claim 10 is rendered obvious by Sanford and Hsu ............... 156
`8.
`Claim 11 is rendered obvious by Sanford and Hsu ............... 158
`9.
`Claim 15 is rendered obvious by Sanford and Hsu ............... 159
`10. Claim 16 is rendered obvious by Sanford and Hsu ............... 170
`11. Claim 18 is rendered obvious by Sanford and Hsu ............... 171
`
`6.
`
`ii
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`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
`
`D.
`
`3.
`
`4.
`
`5.
`
`2.
`
`IPR2022-001094 GROUND #2: Claims 3, 4, 6-11, 15, 16, and
`18 are Rendered Obvious by Sanford, Hsu, and Tsukamura ........... 172
`1.
`Claim 3 is rendered obvious by Sanford, Hsu, and
`Tsukamura .............................................................................. 172
`Claims 4 and 6-11 are rendered obvious by Sanford, Hsu,
`and Tsukamura ....................................................................... 182
`Claim 15 is rendered obvious by Sanford, Hsu, and
`Tsukamura .............................................................................. 182
`Claim 16 is rendered obvious by Sanford, Hsu, and
`Tsukamura .............................................................................. 185
`Claim 18 is rendered obvious by Sanford, Hsu, and
`Tsukamura .............................................................................. 185
`IPR2022-001094 GROUNDS #3 and #4: Claim 5 is rendered
`obvious ............................................................................................. 187
`IPR2022-001094 GROUNDS #5 and #6: Claim 12 is rendered
`obvious ............................................................................................. 195
`IPR2022-001094 GROUNDS #7 and #8: Claim 17 is rendered
`obvious ............................................................................................. 199
`CONCLUDING STATEMENTS ............................................................. 202
`
`E.
`
`F.
`
`G.
`
`XI.
`
`iii
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`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
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`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. 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”)
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`Case Nos. IPR2022-01093 and IPR2022-01094
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`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”)
`
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`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
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`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”)
`
`iii
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`Patent No. 8,620,039
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`I, Stuart J. Lipoff, declare as follows:
`
`I.
`
`ENGAGEMENT
`1.
`I reside at 2877 Paradise Road Unit 205, Las Vegas, NV 89109.
`
`2.
`
`I have been retained by ASSA ABLOY AB, ASSA ABLOY Inc.,
`
`ASSA ABLOY Residential Group, Inc., August Home, Inc., HID Global
`
`Corporation, and ASSA ABLOY Global Solutions, Inc. (“Petitioners”) in
`
`connection with the above-captioned petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 8,620,039 to Christopher John Burke (“the ʼ039 Patent,” Ex.
`
`1001). I understand the ʼ039 Patent is currently assigned to CPC Patent
`
`Technologies Pty Ltd. (“Patent Owner”).
`
`3.
`
`I have been asked by Petitioners to offer opinions regarding the ’039
`
`Patent, including the unpatentability of claims 1-20 (which I may refer to
`
`subsequently as the “challenged claims” or the “’039 Patent claims”) in view of
`
`certain prior art. This declaration sets forth the opinions I have reached to date
`
`regarding these matters.
`
`4.
`
`I am being compensated by Petitioners at my standard hourly
`
`consulting rate for my time spent on this matter. My compensation is not
`
`contingent on the outcome of the IPR or on the substance of my opinions.
`
`5.
`
`I have no financial interest in Petitioners or Patent Owner.
`
`1
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`Case Nos. IPR2022-01093 and IPR2022-01094
`Patent No. 8,620,039
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`II.
`
`PROFESSIONAL BACKGROUND
`6.
`As shown in my curriculum vitae (“CV”), a true and correct copy of
`
`which is attached hereto as Ex. 1007, I am currently the president of IP Action
`
`Partners Inc. and have over 50 years of experience in a wide variety of
`
`technologies and industries relating to data communications, including data
`
`communications over wireless and cable systems networks.
`
`7.
`
`I earned a B.S. degree in Electrical Engineering in 1968 from Lehigh
`
`University and a second B.S. degree in Engineering Physics in 1969, also from
`
`Lehigh University. I also earned a M.S. degree in Electrical Engineering from
`
`Northeastern in 1974 and an MBA degree from Suffolk University in 1983.
`
`8.
`
`I am currently the president of IP Action Partners Inc., which is a
`
`consulting practice serving the telecommunications, information technology,
`
`media, electronics, and e-business industries.
`
`9.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License and a Certificate in Data Processing (“CDP”) from the
`
`Association for Computing Machinery (“ACM”)-supported Institute for the
`
`Certification of Computing Professionals (“ICCP”), and I am a registered
`
`professional engineer (by examination) in the State of Nevada and the
`
`Commonwealth of Massachusetts.
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`10.
`
`I am a fellow of the IEEE Consumer Electronics, Communications,
`
`Computer, Circuits, and Vehicular Technology Groups. I am also a member of the
`
`IEEE Consumer Technology Society Board of Governors, and was the Boston
`
`Chapter Chairman of the IEEE Vehicular Technology Society. I previously served
`
`as 1996-1997 President of the IEEE Consumer Electronics Society, have served as
`
`Chairman of the Society’s Technical Activities and Standards Committee, as VP of
`
`Publications for the Society, and currently as VP of Industry and Standards for the
`
`Society. I have also served as an Ibuka Award committee member.
`
`11.
`
`I have also presented papers at many IEEE and other meetings. A
`
`listing of my publications is included as part of my CV, which is attached as
`
`Exhibit 1007. For example, in Fall 2000, I served as general program chair for the
`
`IEEE Vehicular Technology Conference on advanced wireless communications
`
`technology, and I have organized sessions at The International Conference on
`
`Consumer Electronics and was the 1984 program chairman. I also conducted an
`
`eight-week IEEE sponsored short course on Fiber Optics System Design. In 1984,
`
`I was awarded IEEE’s Centennial Medal and in 2000, I was awarded the IEEE’s
`
`Millennium Medal.
`
`12. As Vice President and Standards Group Chairman of the Association
`
`of Computer Users (“ACU”), I served as the ACU representative to the ANSI X3
`
`Standards Group. For the FCC’s Citizens advisory committee on Citizen’s Band
`
`3
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`Case Nos. IPR2022-01093 and IPR2022-01094
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`(“CB”) radio (“PURAC”), I served as Chairman of the task group on user rule
`
`compliance. I have been elected to membership in the Society of Cable Television
`
`Engineers (“SCTE”), the ACM, and The Society of Motion Picture and Television
`
`Engineers (“SMPTE”). I also served as a member of the USA advisory board to
`
`the National Science Museum of Israel, presented a short course on international
`
`product development strategies as a faculty member of Technion Institute of
`
`Management in Israel, and served as a member of the board of directors of The
`
`Massachusetts Future Problem Solving Program.
`
`13.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications topics in Electronics Design,
`
`Microwaves, EDN, The Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`14.
`
`For 25 years, I worked for Arthur D. Little, Inc. (“ADL”), where I
`
`became Vice President and Director of Communications, Information Technology,
`
`and Electronics (“CIE”). Prior to my time at ADL, I served as a Section Manager
`
`for Bell & Howell Communications Company for four years, and prior to that, as a
`
`Project Engineer for Motorola’s Communications Division for three years.
`
`15. At ADL, I was responsible for the firm’s global CIE practice in
`
`laboratory-based contract engineering, product development, and technology based
`
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`Case Nos. IPR2022-01093 and IPR2022-01094
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`consulting. At both Bell & Howell and Motorola, I had project design
`
`responsibility for wireless communication and paging products.
`
`16. During my 53 years in the practice of engineering research and
`
`product development, I have engaged in a number of projects that have provided
`
`me with relevant experience and expertise in a number of the foundation
`
`technologies and the industries within the scope of the ʼ039 Patent. These projects
`
`have included, for example, topics in: motor operated door controllers, wireless
`
`communications, wireless remote controls, access control security systems, data
`
`communications, and devices incorporating microprocessors.
`
`17.
`
`I have worked on a number of security and alarm products. For the
`
`Philadelphia Police Department, I designed a wireless address alarm system that
`
`was also deployed by The White House Communications Agency. I have also
`
`specified and managed aspects of the procurement of complex keypad based access
`
`control systems for use in secure areas of electric power utilities and industrial
`
`computer rooms.
`
`18.
`
`For Symbol Technology, I contributed to the design of the MAC layer
`
`protocol of a wireless local area network system (WLAN) that pre-dated the IEEE
`
`802.11 standard. My protocol design was submitted to the IEEE 802.11 standards
`
`committee with portions incorporated into the final specification.
`
`5
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`19. Working with Cambridge Consultants Ltd (the UK subsidiary of the
`
`USA based Arthur D Little Inc), I consulted on several developments of Bluetooth
`
`related hardware and software stacks. This development was spun off to
`
`Cambridge Silicon Radio (CSR) to which I continued to provide consulting
`
`reports.
`
`20.
`
`In my capacity as chairman of The IEEE Consumer Electronics
`
`Society Standards Committee, I followed the developments of both the IEEE
`
`802.15 Bluetooth and IEEE 802.11 WiFi standards, as well as the IEEE Home
`
`Radio Frequency (HomeRF™) Working Group.
`
`21.
`
`I have designed products and systems that incorporated
`
`microprocessors and microcomputers across multiple products and industry
`
`applications, including toys and games, industry controllers, motor controllers, and
`
`consumer products.
`
`22. Additional information regarding my background, qualifications,
`
`publications, and presentations is provided in my CV, which is included as Ex.
`
`1007.
`
`III. MATERIALS REVIEWED
`23.
`In forming my opinions, I have reviewed the ʼ039 Patent and
`
`considered each of the documents listed in the Exhibit List above. In reaching my
`
`opinions, I have relied upon my experience in the field and also considered the
`
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`Case Nos. IPR2022-01093 and IPR2022-01094
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`viewpoint of a person of ordinary skill in the art at the time of the earliest claimed
`
`priority date of the ʼ039 Patent, i.e., 2005. As explained below, I am familiar with
`
`the level of a person of ordinary skill in the art regarding the technology at issue as
`
`of that time.
`
`IV. DESCRIPTION OF THE RELEVANT TIMEFRAME, THE
`RELEVANT FIELD, AND A PERSON OF ORDINARY SKILL IN
`THE ART
`24.
`I understand that the ʼ039 Patent was filed on August 10, 2006, and
`
`has an earliest possible priority date of August 12, 2005. I further understand that
`
`there is no claim to earlier priority. Thus, for purposes of my analysis, I have
`
`treated the time of the invention as August 12, 2005. I reserve the right to update
`
`my analysis should Patent Owner assert an earlier priority date.
`
`25.
`
`I have received and understand the specification, claims, and file
`
`history of the ʼ039 Patent. Based on my review of these materials, I believe that
`
`the relevant field for purposes of my analysis is secure access systems.
`
`26.
`
`In my opinion, a person of 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. My opinions presented
`
`herein are as viewed through the eyes of a person of ordinary skill in the art prior
`
`to August 12, 2005.
`
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`V.
`
`OVERVIEW OF THE ʼ039 PATENT
`27.
`I have reviewed the ʼ039 Patent and understand that Christopher John
`
`Burke is named as the inventor on this patent. Mr. Burke’s 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.
`
`28.
`
`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). Ex. 1001, 7:50-53. 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.
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`Ex. 1001, Fig. 3. As a general note, I added emphasis and coloring throughout this
`
`declaration unless otherwise noted.
`
`29. 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. Ex. 1001, 7:31-35. As a result, checking is
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`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.
`
`Ex. 1001 Fig. 4. “Once verification is confirmed, the card information 605 is
`
`transferred from the verification station 127 [Fig. 3 above] to the back-end
`
`processor 122 [Fig. 3 above] for completion of the transaction.” Id., 7:56-59.
`
`30.
`
`The patent discloses many forms of biometric signatures including
`
`“fingerprints,” “face, iris, or other unique signature.” Ex. 1001, 7:45-47.
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`31.
`
`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. In finding claim 3 allowable, 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 verification station.” Id. The claims were
`
`allowed without prior art rejections. Id., 291-292, 318. The Examiner was not
`
`aware during prosecution of any of the prior art references cited herein.
`
`32.
`
`In my opinion, there is nothing novel about the system for providing
`
`secure access recited in the ’039 Patent claims or anything else that distinguishes it
`
`from other earlier systems for providing secure access.
`
`33.
`
`For example, Hsu (Ex. 1003) discloses authenticating a user using
`
`both the user’s card information and the user’s biometric signature “for controlling
`
`access to building doors or to machines, such as automatic teller machines
`
`(ATMs).” Ex. 1003, Abstract, ¶0001, ¶0006.
`
`34.
`
`Just like the ’039 Patent, Hsu discloses using the card information to
`
`efficiently access the user’s stored biometric information. For example, as shown
`
`in Fig. 3 below, “[t]he user places his or her card in the reader 62 [blue], which
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`Patent No. 8,620,039
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`retrieves an account number or other type of identification unique to the user,”
`
`which is then used “to access the fingerprint database 44 [green] and obtain a
`
`user reference fingerprint….” Ex. 1003, ¶0024.
`
`Ex. 1003, Fig. 3; see also Fig. 2. Further, “[t]he database [green] is basically a
`
`table that associates each user number with a stored fingerprint image….” Id.,
`
`¶0020. The retrieved “user reference fingerprint” is then compared with a “sensed
`
`fingerprint image.” Id., ¶¶0024-25. “A successful match… results in access to the
`
`door or machine being granted to the user,” such as for “conduct[ing] banking
`
`transactions”. Id., Abstract, ¶0024.
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`35.
`
`Just like the ’039 Patent, Hsu recognizes that such an implementation
`
`enables the “fingerprint matching… [to] be achieved rapidly” by not having to
`
`“compare a sensed fingerprint image with many possible stored reference
`
`images.” Ex. 1003, ¶0013; ¶0004.
`
`36. As another example, Sanford (Ex. 1004) teaches “a method for
`
`conducting a [] card transaction” using biometric verification, for example, at
`
`“an ATM machine,” just like the ’039 Patent and Hsu. Ex. 1004, Abstract, ¶0004,
`
`¶¶0008-09, ¶0016. Sanford also discloses multiple types of biometrics, such as
`
`“facial biometrics,” “iris, voice signature, and fingerprint.” Id., ¶0020.
`
`37.
`
`Like the ’039 Patent, Sanford discloses that “[t]he user may begin the
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`process by inserting or swiping a credit card into the credit card reader.” Ex. 1004,
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`¶0024. It is then “determine[ed] if the user is enrolled.” Id., ¶0025. If yes, “an
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`image of the user” is taken and compared to “a pre-existing profile [] for the user.”
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`Id., ¶0026, ¶0019. If a match is found, the user may then proceed with the
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`remaining steps of the transaction. Id., ¶0030. If the user is not enrolled, he or she
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`is directed to the enrollment process. Id., ¶0025.
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`38. As another example, Tsukamura (Ex. 1005) teaches a simplistic way
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`to store and access fingerprint templates for “personal authentication.” Ex. 1005,
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`Abstract. Tsukamura discloses storing fingerprint templates in consecutive, fixed-
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`length memory locations.
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`13
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`Ex. 1005, Fig. 3. Each fingerprint template is stored “at an index (address)
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`specified by the index number N index within the collation flash ROM.” Id.,
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`3:28-34. This is a well-known way to speed up data access by reading/writing
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`directly to defined locations within a memory.
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`39. With regard to dependent claim 5, Leu (Ex. 1008 and Ex. 1009)
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`teaches the simple concept of performing certain activity only if a card belongs to a
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`known set of cards.
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`40. With regard to dependent claim 12, Houvener (Ex. 1010) teaches the
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`well-known concept of outputting and logging information for audit purposes.
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`14
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`41. With regard to dependent claim 17, McCalley (Ex. 1011) teaches
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`packaging a memory in a tamper-proof manner.
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`VI. CLAIM CONSTRUCTION
`42.
`I understand that claim construction is the process of determining the
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`meaning of a term or phrase in a patent claim. I understand that the proper
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`construction of a term is how a POSITA would have understood the term based on
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`its use in the claims, specification, and file history of the patent. I further
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`understand that the claims are construed before the Board according to the same
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`claim construction standard that applies in district courts. I have followed these
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`principles in my analysis throughout this declaration. I discuss below the meaning
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`of certain claim terms that I have applied in forming my opinions.
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`A.
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`43.
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`Terms to be Construed
`1.
`Card Information “Defining / Defines” a Memory Location
`The claims include the following limitations relating to card
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`information defining a memory location:
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`Claims
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`Limitation
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`Independent claims 1, 13, and 19
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`“defining, dependent upon the received
`card information, a memory location
`in a local memory external to the card”
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`Dependent claims 2, 14 and 20
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`“memory location…defined by the
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`15
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`Independent claims 3, 15 and 18
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`subsequently presented card
`information”
`“memory location defined by the
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`provided card information”
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`I believe these limitations are susceptible to two different interpretations regarding
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`what it means for the “memory location” to be “defined” by the card information.
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`44.
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`First interpretation: a memory location is somehow determined from
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`(or is dependent on) the card information (“First Construction”). Under this
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`interpretation, the system can look up or otherwise determine a specific memory
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`location from a user’s card information.
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`45.
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`Second interpretation: a memory location is specified by the card
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`information itself (“Second Construction”). Under this interpretation, the card
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`information itself must specify the physical memory address where the user’s
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`biometric signature is stored, without the need to look up the memory address in a
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`database or other data structure.
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`46.
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`I believe the Second Construction was intended by the patentee. The
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`specification, as reflected in Figure 4 (below), states that “the card data 604
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`[yellow] acts as the memory reference which points, as depicted by an arrow 608
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`[red], to a particular memory location at an address 607 [blue] in the local
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`database 124” in the verification station. Id., 7:31-35.
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`16
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`Ex. 1001 Fig. 4. Moreover, based on my review of the patent specification, I have
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`observed that from the “Summary of Invention” and throughout the specification,
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`and in the preamble of various claims, the ’039 Patent consistently refers to a
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`“biometric card pointer system,” i.e., the card acts as a pointer (specifies the
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`physical memory address) to the memory location where the user’s biometric
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`signature is stored. E.g., Ex. 1001, claims 1, 13, 14; 2:51-52 (“SUMMARY …
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`Disclosed are arrangements, referred to as Biometric Card Pointer (BCP)
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`arrangements or systems…”); 3:46-47 (“biometric card pointer system”); 5:17
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`(same); 5:51 (“FIG. 4 illustrates the biometric card pointer concept”); 5:52 (“FIG.
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`5 is a flow chart of a process for using the biometric card pointer arrangement”);
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`17
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`6:31-35 (“The verification station [] comprises…a biometric card pointer
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`reader…”).
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`47.
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`Therefore, a POSITA would have understood that the user’s card
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`information itself specifies the physical memory address (such as by acting as a
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`pointer) for the user’s biometric signature. I have also noted that Patent Owner
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`appears to be asserting infringement claims under the First Construction. See Ex.
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`1016, p. 3.
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`48.
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`In my opinion, the ’039 Patent claims are unpatentable under either
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`interpretation. Under the First Construction, the claims are invalid under IPR2202-
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`01093 Ground 1 (Hsu + Sanford) and IPR2202-01094 Grounds 1, 3, 5, 7 (Sanford
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`+ Hsu). Under the Second Construction, the claims are invalid under IPR2202-
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`01093 Ground 2 (Hsu + Sanford + Tsukamura) and IPR2202-01094 Grounds 2, 4,
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`6, and 8 (Sanford + Hsu + Tsukamura).
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`“unoccupied”
`2.
`Independent claims 1, 13, and 19 recite “determining if the defined
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`49.
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`memory location is unoccupied.” The term “occupied” is explicitly defined in the
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`specification:
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`The term “occupied” in this context means that the
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`memory location in question has been used in the
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`enrolment process for a user, and that the information
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`stored at the memory location in question has not been
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`deleted by a BCP system administrator.
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`Ex. 1001, 9:29-33. Therefore, it is clear to me that the opposite term
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`“unoccupied” should likewise be construed based on this definition, as follows: a
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`memory location that has not been used in the enrollment process for a user, or
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`the information stored at the memory location has been deleted. Id.
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`B. Means-Plus-Function Limitations
`50.
`I understand that Judge Albright (WDTX) construed two means-plus-
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`function limitations from the challenged claims in district court proceedings. I
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`reviewed the constructions, but I do not provide any opinion agreeing or
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`disagreeing with the constructions. Nonetheless, for the purpose of this
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`declaration, I applied the constructions for these terms as identified in my analysis
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`below. It is my understanding that in the context of the ’039 Patent claims and the
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`intrinsic evidence, “code for” is an equivalent recitation for “means for.” The ’039
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`Patent’s otherwise identical language for some “code for” and “means for” terms
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`confirms to me that that they should be treated equivalently.
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`C.
`51.
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`Previously-Construed Terms
`I understand that Judge Albright construed the following terms in
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`district court proceedings. I reviewed the constructions for the following terms,
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`but I do not provide any opinion agreeing or disagreeing with these constructions.
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`19
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`I do not