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
`
`_____________________________________________________________
`
`SECOND DECLARATION OF STUART LIPOFF
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 3-12 AND 15-18)
`
`ASSA ABLOY Ex 1032
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd.
`IPR2022-01094 - U.S. Patent No. 8,620,039
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`III.
`
`V.
`
`2.
`
`B.
`
`I.
`II.
`
`Contents
`ENGAGEMENT .......................................................................................... 1
`BACKGROUND QUALIFICATIONS, PATENT AND PRIOR
`ART SUMMARY ......................................................................................... 1
`CLAIM CONSTRUCTION ......................................................................... 1
`A.
`PO’s proposed construction of “memory location defined by the
`provided card information” is incorrect ............................................... 2
`IV. MY UNDERSTANDINGS OF THE LEGAL STANDARDS OF
`ANTICIPATION AND OBVIOUSNESS .................................................. 10
`THE CHALLENGED CLAIMS OF THE ʼ039 PATENT ARE
`INVALID .................................................................................................... 10
`A.
`GROUND #1: The Hsu-Sanford combination renders claims 3,
`4, 6-11, 15, 16, and 18 obvious .......................................................... 11
`1.
`Sanford-Hsu teaches Limitation 3[D(1)]’s “defined
`by…” under Petitioners’ First Construction and the
`Board’s preliminary construction ............................................ 11
`Sanford-Hsu teaches Limitation 3[D(1)]’s “defined
`by…” under PO’s construction ................................................ 13
`GROUND #2: The Hsu-Sanford-Tsukamura combination
`renders claims 3, 4, 6-11, 15, 16, and 18 obvious .............................. 15
`1.
`Alleged deficiencies of Tsukamura are irrelevant ................... 15
`a.
`My first declaration does not rely on Tsukamura’s
`IC card 21 for disclosing “card information” ................ 15
`Tsukamura’s index-based system is materially the
`same as the ’039 Patent’s pointer system ...................... 16
`The differences between Tsukamura’s index-based
`system and the ’039 Patent’s pointer system are
`immaterial to unpatentability of the Challenged
`Claims ............................................................................ 17
`A POSITA would have been motivated to combine Hsu-
`Sanford with Tsukamura .......................................................... 18
`a.
`The Challenged Claims do not require a particular
`type of data storage ........................................................ 18
`
`b.
`
`c.
`
`2.
`
`i
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`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`b.
`
`Replacing Hsu’s database with Tsukamura’s
`memory configuration is a suitable option .................... 20
`Tsukamura’s array is not undesirable ............................ 21
`c.
`CONCLUDING STATEMENTS ............................................................... 28
`
`VI.
`
`ii
`
`

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`Case No. IPR2022-01094
`Patent No. 8,620,039
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`
`EXHIBIT LIST
`
`EXHIBITS FILED BY PETITIONERS (New Exhibits in Italics)
`
`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. 1006 U.S. Patent No. 6,963,660 to Yoshihiro Tsukamura and Takeshi
`Funahashi (“Tsukamura”)
`
`Ex. 1007 Declaration of Stuart Lipoff Regarding Invalidity of U.S. Patent
`No. 8,620,039
`
`Ex. 1008 Curriculum Vitae of Stuart Lipoff
`
`Ex. 1009 European Patent Pub. No. EP 0881608A1 to Walter Leu (“Leu
`Original”)
`
`Ex. 1010 Certified English Translation of European Patent Pub. No. EP
`0881608A1 to Walter Leu (“Leu”)
`
`i
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`
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`

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`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`
`Ex. 1011 U.S. Patent No. 5,790,674 to Robert C. Houvener and Ian P.
`Hoenisch (“Houvener”)
`
`Ex. 1012 U.S. Patent No. 5,956,415 to McCalley et al. (“McCalley”)
`
`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”)
`
`Ex. 1014
`
`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. 1015 Excerpts from Bloomsbury English Dictionary, 2nd Edition (2004)
`
`Ex. 1017 Excerpts from The Chambers Dictionary, 4th Edition (2003)
`
`Ex. 1018 CPC Publicly Filed Infringement Allegations Against Apple
`regarding U.S. Patent No. 8,620,039
`
`Ex. 1019 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2001022351A1 (01/022351) to Gerald R. Black (“Black”)
`
`Ex. 1020 World Intellectual Property Organization (WIPO) Int. Pub. No.
`WO 2004055738A1 (04/055738) to Svein Mathiassen and Ivar
`Mathiassen (“Mathiassen”)
`
`Ex. 1021 Excerpts from The Art Of Computer Programming, Volume 3
`Sorting and Searching (1973) (“Knuth Vol. 3”)
`
`
`
`ii
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`Ex. 1022 Perfect Hashing Functions: A Single Probe Retrieving Method for
`Static Sets, Renzo Sprugnoli (1977) (“Sprugnoli”)
`
`Ex. 1023 Petitioners’ Responses to Patent Owner’s Interrogatories
`
`Ex. 1024 Webpage printout - Developing for the app store at
`https://www.apple.com/app-store/developing-for-the-app-store/
`
`Ex. 1025 Webpage printout - Apple MFi Authorized Manufacturers at
`https://mfi.apple.com/account/authorized-manufacturers
`
`Ex. 1026 Screenshot from Apple 2022 WWDC Apple Partners at
`https://www.youtube.com/watch?v=q5D55G7Ejs8 (20:27)
`
`Ex. 1027 Apple 2022 WWDC Video Excerpt at
`https://www.youtube.com/watch?v=q5D55G7Ejs8
`
`Ex. 1028 Webpage printout - HID Global - Android Apps on Google Play at
`https://play.google.com/store/search?q=HID%20global&c=apps&
`hl= en_US&gl=US
`
`Ex. 1029 Complaint in CPC Patent Technologies Pty Ltd v. HID Global
`Corporation, WDTX-6-22-cv-01170-ADA, Dkt. No. 1
`
`Ex. 1030 CPC Infringement Allegations re U.S. Patent No. 8,620,039
`
`Ex. 1031 Deposition Transcript of Dr. Samuel Russ
`
`
`
`iii
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`Case No. IPR2022-01094
`Patent No. 8,620,039
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`Ex. 1032
`
`Second Declaration of S. Lipoff Regarding Invalidity of U.S.
`Patent No. 8,620,039
`
`Ex. 1033 European Patent No. EP 0918300B1 to Hsu et al. (“Evans”)
`
`Ex. 1034 Webpage printout - NFIQ 2 at https://www.nist.gov/services-
`resources/software/nfiq-2
`
`Ex. 1035 Webpage printout – Biometric template explainer at
`https://www.biometricupdate.com/202205/biometric-template-
`explainer
`
`Ex. 1036
`
`J. J. Engelsma, K. Cao and A. K. Jain, “Learning a Fixed-Length
`Fingerprint Representation,” in IEEE Transactions on Pattern
`Analysis and Machine Intelligence, vol. 43, no. 6, pp. 1981-1997,
`1 June 2021, doi: 10.1109/TPAMI.2019.2961349.
`
`Ex. 1037 A. K. Jain, S. Prabhakar, L. Hong, and S. Pankanti, “Fingercode:
`A Filterbank for Fingerprint Representation and Matching,” in
`Computer Vision and Pattern Recognition, 1999. IEEE Computer
`Society Conference on., vol. 2, pp. 187–193, IEEE, 1999. 4.
`
`Ex. 1038 A. K. Jain, S. Prabhakar, L. Hong, and S. Pankanti, “Filterbank-
`based Fingerprint Matching,” IEEE Transactions on Image
`Processing, vol. 9, no. 5, pp. 846–859, 2000.
`
`Ex. 1039 Wayback printout - MySQL Manual _ 3.3.2 Creating a Table at
`https://web.archive.org/web/20040614222509/http://dev.mysql.co
`m/doc/mysql/en/Creating_tables.html
`
`
`
`iv
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`

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`Case No. IPR2022-01094
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`Ex. 1040 Wayback printout - MySQL Manual _ 12.4.2 The BLOB and TEXT
`Types at
`https://web.archive.org/web/20040615104527/http://dev.mysql.co
`m/doc/mysql/en/BLOB.html
`
`
`
`v
`
`

`

`I, Stuart J. Lipoff, declare as follows:
`
`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`
`I.
`
`ENGAGEMENT
`1. My engagement is the same as that specified in my first declaration in
`
`paragraphs 1-5 of Ex. 1006 (I refer to Ex. 1006 herein as “first declaration” or
`
`“first expert declaration”). For this second declaration, I have been asked by
`
`Petitioners to offer supplemental opinions regarding the ʼ039 Patent in the present
`
`proceeding, including the unpatentability of claims 3-12 and 15-18 (which I may
`
`refer to subsequently as the “Challenged Claims”) in view of certain prior art and
`
`in light of the Patent Owner’s Response, Dr. Russ’ Declaration, and the Institution
`
`Decision. This declaration sets forth the opinions I have reached to date regarding
`
`these matters.
`
`II. BACKGROUND QUALIFICATIONS, PATENT AND PRIOR ART
`SUMMARY
`I incorporate by reference in full the content of my original
`2.
`
`declaration in this proceeding, Ex. 1006, which I will not duplicate here.
`
`III. CLAIM CONSTRUCTION
`I provided my opinions regarding claim construction in my first
`3.
`
`declaration (Ex. 1006, ¶¶42-57), and those opinions remain accurate and complete.
`
`4.
`
`In this section I have addressed some issues raised by the Board and
`
`by Patent Owner after my submission in Ex. 1006.
`
`
`
`1
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`
`PO’s proposed construction of “memory location defined by the
`provided card information” is incorrect
`I identify below different constructions proposed by Petitioners, the
`
`A.
`
`5.
`
`Board, and PO for the term “memory location defined by the provided card
`
`information” recited in claims 3, 15, and 18.
`
`Petitioners’ First Construction
`
`Petitioners’ Second
`Construction
`
`Board’s preliminary
`construction
`
`PO’s construction
`
`“a memory location is somehow determined
`from (or is dependent on) the card
`information…[such that] the system can look
`up or otherwise determine a specific memory
`location from a user’s card information.” Pet.,
`9.
`
`“memory location is specified by the card
`information itself…[such that] the card
`information itself must specify the physical
`memory address where the user’s biometric
`signature is stored, without the need to look up
`the memory address in a database or other data
`structure.” Pet., 9.
`
`“the user’s card information itself specifies the
`physical memory address (such as by acting as
`a pointer) for the user’s biometric signature.”
`Paper 19, 39.
`
`“the system sets or establishes a memory
`location in a memory, said location being
`contingent upon or determined by the received
`card information.” POR, 8.
`
`6.
`
`In my opinion, the Board’s preliminary construction is similar in
`
`scope to Petitioners’ first construction, where the card information can be used as a
`
`
`
`2
`
`

`

`pointer to the memory location for storing the user’s biometric information, but
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`Case No. IPR2022-01094
`Patent No. 8,620,039
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`looking up the memory location in a database is not excluded. Paper 19, 37-39.
`
`7.
`
`PO’s construction is new and was not discussed in its Preliminary
`
`Response. In my opinion, PO’s construction is incorrect for multiple reasons.
`
`8.
`
`First, PO contends that “a POSITA would interpret the word
`
`‘defined,’… to mean ‘setting’ or ‘establishing.’” POR, 8. This proposed
`
`construction lacks any intrinsic support. PO cites no evidence in the ’039 Patent
`
`that uses the term “set” or “establish.” Id.
`
`9.
`
`Second, PO contends, by construing “defined” as “setting or
`
`establishing” (POR, 8), that “defined by…” requires setting/establishing for the
`
`first time the memory location for storing the fingerprint data during enrollment,
`
`which is not required by claim 3 or discussed anywhere in the ’039 Patent
`
`specification. See POR, 9 (“Limitation 3[D[1)] cannot be construed to cover…
`
`identifying a memory location that has already been defined.”); Ex. 1031, 20:18-
`
`14.
`
`10. Unlike claim 1, claim 3 does not even recite any “defining” step. C.f.
`
`EX-1001, claim 1, Limitation 1[C]. Limitation 3[D(1)] merely requires “storing
`
`the inputted biometric signature in a memory at a memory location defined by the
`
`provided card information,” and does not require when the defining of the memory
`
`location happens.
`
`
`
`3
`
`

`

`11. Moreover, according to the ’039 Patent, the enrollment and
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`Case No. IPR2022-01094
`Patent No. 8,620,039
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`verification steps have some steps in common. See, e.g., Ex. 1001, claim 3
`
`(limitations (a)-(c)); 3:41-43 (“The difference between the enrolment and
`
`verification phases are transparent to users”).
`
`Ex. 1001, Fig. 5 (at least steps 201-204 are common steps); Ex. 1031, 105:17-22
`
`(Dr. Russ admitting the same), 81:12-21. Up until Limitation 3[C], the current
`
`process may be either an enrollment or a verification process. Ex. 1001, claim 3,
`
`
`
`
`
`4
`
`

`

`Limitations 3[D-E]. As Dr. Russ admits, claim 3 requires that the memory
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`Case No. IPR2022-01094
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`location is defined by the card information during both enrollment and verification.
`
`Ex. 1031, 56:4-8 (Dr. Russ admitting that “[i]n both cases [i.e., enrollment and
`
`verification in claim 3] the provided card information defines the memory
`
`location.”). As Dr. Russ also admits, the “memory location defined by the
`
`provided card information” in both Limitations 3[D(1)] and 3[E(1)] should be
`
`interpreted in the same way, i.e., the card information defines the memory location
`
`during both enrollment and verification. Id., 81:12-21; 54:1-3 (“however the
`
`connection, in whatever sense the defining step occurs in 3[D(1)], the same
`
`defining step occurs in 3[E(1)].”); 54:17-21. Therefore, PO is wrong to interpret
`
`Limitation 3[D(1)] differently from Limitation 3[E(1)] such that Limitation
`
`3[D(1)]’s “defined by…” requires setting/establishing for the first time the
`
`memory location for storing the fingerprint data while Limitation 3[E(1)] does not.
`
`12. PO does not cite any evidence in the ’039 Patent specification that
`
`describes setting or establishing for the first time the memory location for storing
`
`the fingerprint data during enrollment. When discussing the only graphical
`
`representation of the relationship between the card information and the memory
`
`located, i.e., Figure 4 below (Ex. 1031, 66:2-21), the ’039 patent states that “[t]he
`
`card data 604 defines the location 607 in the memory 124 where their unique
`
`biometric signature is stored” (Ex. 1001, 7:47-49), but never mentions that such
`
`
`
`5
`
`

`

`association is set/established for the first time during fingerprint enrollment, e.g., a
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`user may store his/her fingerprint at a previously reserved/established memory
`
`location.
`
`
`
`Ex. 1001, Fig. 4. A POSITA would have understood that to have the card data
`
`point to a memory address (without a memory lookup table), the association
`
`between the card data 604 and the memory address 607 must be predetermined
`
`before the user scans his/her card and before fingerprint enrollment even starts.
`
`Dr. Russ explicitly agreed with this proposition multiple times during deposition.
`
`Ex. 1031, 70:20-71:1, 71:13-22, 77:15-24, 78:2-9, 90:5-9 (“Q. Okay. So I think we
`
`
`
`6
`
`

`

`already established the memory location 604 on the card defines a memory
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`Patent No. 8,620,039
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`location even before the user has ever scanned his or her card, correct? A.
`
`Correct.”), 94:20-25 (Q…. If the card data 604 in figure 4 is a pointer to a specific
`
`memory address in database 124, then the memory address has already been
`
`defined prior to the user scanning his or her card at the system, correct? A.
`
`Correct.”).
`
`13. Third, without identifying any supporting evidence in the ’039 Patent,
`
`PO also contends that “‘[d]efined,’… does not (and cannot) mean merely looking
`
`up or identifying something that has already been defined.” POR, 8. Again, as the
`
`Board reasoned, there is nothing in the ’039 Patent excluding use of searching to
`
`determine a memory location. Paper 19, 37-39. When doing a database lookup,
`
`the card information allows the database to quickly determine where the
`
`corresponding memory location is.
`
`14.
`
`In my opinion, PO’s expert, Dr. Russ, is also wrong to contend that
`
`“looking up” necessarily indicates “verification.” Ex. 1031, 19:5-7. Consistent
`
`with the ’039 Patent, Petitioners’ and the Board’s preliminary constructions allow
`
`for the user’s card information to determine the memory location where the user’s
`
`fingerprint is to be stored (during enrollment) or has been stored (during
`
`verification).
`
`
`
`7
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`

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`Case No. IPR2022-01094
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`15. For example, given a database that includes a record for a user prior to
`
`enrollment, the system necessarily looks up the user first before storing the user’s
`
`fingerprint during enrollment.
`
`16.
`
`In general, a typical card credential access system includes the
`
`following steps:
`
`(1) issuance - card gets assigned to cardholder; the next available card
`
`number gets associated with cardholder in access control database;
`
`(2) presentation - user presents card to reader to indicate an intent to enter
`
`(e.g., Ex. 1001, Fig. 5, step 201) and card number is sent to reader;
`
`(3) authentication - reader checks that the card is an authentic, genuine
`
`credential that is compatible with the system, and sends the card number to
`
`controller (see, e.g., Ex. 1001, Fig. 8);
`
`(4) authorization - controller (connected to access control system head-end)
`
`looks up the card number in the access policy to decide whether the
`
`cardholder is authorized to access the premise at the time.
`
`17. When adding in biometrics into the system, two additional steps are
`
`involved:
`
`(A) enrollment - adding user’s biometric data into the system. If the system
`
`is a card+biometric system (like the ’039 Patent, Hsu, Sanford, and
`
`Tsukamura), enrollment includes associating biometric data with a card
`
`
`
`8
`
`

`

`number, so this step has to occur after step (1) issuance. See, e.g., Ex. 1001,
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`Fig. 7. Enrollment of biometric data can occur at the issuance step
`
`(enrollment at issuance) or at the first presentation of the card (enrollment
`
`“on the fly”); the ’039 Patent is directed to the latter method. See, e.g., Ex.
`
`1001, claims 1 and 3, 3:41-44 (“The difference between the enrolment and
`
`verification phases are transparent to users, further reducing the effort in
`
`learning how to use the BCP arrangements.”). Thus, in the ’039 Patent, the
`
`memory location is defined before fingerprint enrollment (e.g., during card
`
`issuance), as Dr. Russ admitted. Ex. 1031, 70:20-71:1, 71:13-22, 77:15-24,
`
`78:2-9, 90:5-9, 94:20-25.
`
`(B) verification - matching presented biometric data with stored biometric
`
`information for user to identify the user as the cardholder. Then step (4)
`
`authorization follows after verification. See, e.g., Ex. 1001, Fig. 6.
`
`18. Given a database that includes a record for a user prior to enrollment
`
`(e.g., the database has the user’s card number but not fingerprint), the system
`
`necessarily looks up the user’s card number during both enrollment and
`
`verification because the card number and the biometric data must be associated.
`
`19. As explained in my first declaration, the “defined by…” limitation is
`
`disclosed by the prior art. Ex. 1006, ¶¶286-294 (Ground 1), ¶¶392-396 (Ground
`
`2).
`
`
`
`9
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`

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`20. Fourth, PO appears to agree with Petitioners’ second construction and
`
`the Board’s preliminary construction “so long as it is understood that the claimed
`
`‘defining’ step does not include a process that occurs after enrollment has already
`
`occurred.” POR, 9 (emphasis original). However, as mentioned above, unlike
`
`claim 1, claim 3 does not even recite any “defining” step. C.f. Ex. 1001, claim 1,
`
`Limitation 1[C]. Nor does claim 3 require when such unclaimed “defining” step is
`
`to be performed. Therefore, PO is wrong to construe Limitation 3[D(1)] as
`
`requiring setting or establishing for the first time the memory location for storing
`
`the fingerprint data during enrollment.
`
`IV. MY UNDERSTANDINGS OF THE LEGAL STANDARDS OF
`ANTICIPATION AND OBVIOUSNESS
`I provided my understandings of the legal standards of anticipation
`21.
`
`and obviousness in my first declaration (Ex. 1006, ¶¶58-62), and those
`
`understandings remain accurate and complete.
`
`V. THE CHALLENGED CLAIMS OF THE ʼ039 PATENT ARE
`INVALID
`It is my opinion that the Challenged Claims of the ’039 Patent are all
`22.
`
`unpatentable, as discussed in my first expert declaration in Ex. 1006.
`
`23.
`
`In this section I have addressed some issues raised by the Board and
`
`by Patent Owner after my submission in Ex. 1006.
`
`
`
`10
`
`

`

`Case No. IPR2022-01094
`Patent No. 8,620,039
`
`
`A. GROUND #1: The Hsu-Sanford combination renders claims 3, 4,
`6-11, 15, 16, and 18 obvious
`In my opinion, PO and Dr. Russ’s arguments fail to rebut the
`
`24.
`
`unpatentability showings under Ground 1 detailed in my first expert declaration.
`
`1.
`
`Sanford-Hsu teaches Limitation 3[D(1)]’s “defined by…”
`under Petitioners’ First Construction and the Board’s
`preliminary construction
`25. PO does not dispute that Sanford-Hsu teaches Limitation 3[D(1)]’s
`
`“defined by…” under Petitioners’ First Construction and the Board’s construction.
`
`26. PO does not dispute that Hsu’s fingerprint data is not stored at any
`
`memory location in the database—rather, it is stored at a unique memory location
`
`associated with the specific user/account/employee number (ACC. No.) received
`
`from a card. POR, 13; Ex. 1006, ¶293; Ex. 1003, ¶26.
`
`
`
`Id., Fig. 4.
`
`27. PO contends that “Hsu expressly discloses that, during enrollment, the
`
`user’s fingerprint data and account number… are presented together,
`
`simultaneously…” POR, 11. I disagree. Nowhere does Hsu mention presenting
`
`
`
`11
`
`

`

`card information and fingerprint data “simultaneously.” Hsu teaches that “each
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`user enroll[s] by presenting a finger to the fingerprint sensor… At the same
`
`time,… the user also presents an account number, employee number or similar
`
`identity number.” Ex. 1003, 7:1-12. In my opinion, a POSITA would have
`
`understood the term “at the same time” to mean contemporaneously or in the same
`
`time period or session. Because presenting a card (by tapping or swiping it) and
`
`placing a finger on a fingerprint sensor each require use of a hand, it is also my
`
`opinion that a POSITA would have found it unpractical to do both simultaneously
`
`and would not have understood Hsu to teach so.
`
`28. Moreover, contrary to PO’s argument, storing card information and
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`fingerprint data in association with each other does not mean that “the memory
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`location of Hsu is not ‘defined by’… the card information.” POR, 12. As the card
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`information is used as a pointer to the memory address of the fingerprint (see
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`Figure 4 below), the memory location for each card/user is reserved/established in
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`memory.
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`12
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`Ex. 1003, Fig. 4. Hsu uses the card information as a pointer to locate the
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`associated specific memory location, where it either stores the user’s fingerprint (if
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`the card information has not been previously provided) or retrieves a stored
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`fingerprint (if the card information has been previously provided). Ex. 1006, ¶¶93,
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`99, 293, 313. For this reason, PO is also wrong to contend that Hsu fails to
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`disclose “before the fingerprint data can be stored, the card information… must be
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`read.” POR, 3.
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`29.
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`In my opinion, by storing a user’s fingerprint at a unique memory
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`location determined by the card information, Sanford-Hsu discloses Limitation
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`3[D(1)]’s “storing” step under Petitioners’ First Construction and the Board’s
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`preliminary construction.
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`30.
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`I note that PO does not dispute a POSITA would have been motivated
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`to combine Sanford with Hsu.
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`2.
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`Sanford-Hsu teaches Limitation 3[D(1)]’s “defined by…”
`under PO’s construction
`31. According to PO’s new construction, which is wrong for the reasons I
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`explained in Section III.A, Limitation 3[D(1)]’s “defined by…” requires
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`setting/establishing for the first time the memory location for storing the
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`fingerprint data during enrollment.
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`13
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`32. Although Hsu is silent on how a new user record is created, it would
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`have been obvious for a POSITA to try using simple known options for creating
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`database records. One option is to store all the user numbers in Hsu’s database and
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`reserve/pre-establish memory locations for associated fingerprint data. Upon a
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`user enrolling by providing a user number, the system looks up the user number
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`and determines the corresponding memory location for storing the user’s
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`fingerprint, which discloses Limitation 3[D(1)]’s “defined by…” under Petitioners’
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`First Construction and the Board’s construction as I explained in Section V.A.1.
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`33.
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`In my opinion, another option is to create a new user record upon
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`enrollment. See Ex. 1003, ¶26 (“If the user does not have such a number, one is
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`assigned at this stage.”); Ex. 1031, 107:15-19, 111:8-12. Thus, upon a user
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`enrolling, they provide a previously unseen card/user number, the system then
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`creates a new record for the user, including setting/establishing for the first time
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`the memory location for storing the user’s fingerprint. In my opinion, this simple
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`and obvious option would satisfy Limitation 3[D(1)]’s “defined by…” under PO’s
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`Second Construction. According to PO, this option would be a preferred
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`implementation because creating data entries only upon enrollment helps minimize
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`“[e]mpty space in a computer database… [which] is both wasteful and generally
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`undesirable.” POR, 23.
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`B. GROUND #2: The Hsu-Sanford-Tsukamura combination renders
`claims 3, 4, 6-11, 15, 16, and 18 obvious
`In my opinion, PO and Dr. Russ’s arguments fail to rebut the
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`34.
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`unpatentability showings under Ground 2 detailed in my first expert declaration.
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`1.
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`Alleged deficiencies of Tsukamura are irrelevant
`a. My first declaration does not rely on Tsukamura’s IC
`card 21 for disclosing “card information”
`35. PO’s only purported deficiency regarding Tsukamura is that
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`Tsukamura’s memory location is not defined by its IC card 21. POR, 16-17.
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`However, this alleged deficiency has no bearing on my unpatentability analysis
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`because Petitioners do not rely on Tsukamura’s IC card 21 for disclosing the
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`claimed “card information.” Tsukamura is relied on under Ground 2 solely for its
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`memory configuration. Ex. 1006, ¶394. As I explained in my first declaration, it
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`would have been obvious to assign Tsukamura’s index number as the
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`user/account/employee number in the Sanford-Hsu system. Ex. 1006, ¶¶404-405.
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`Since Sanford-Hsu discloses that a user/account/employee number is retrieved
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`from a card (¶¶273-277, ¶¶311-313), it is my opinion that a POSITA would have
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`known that Tsukamura’s index number could be used as the
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`user/account/employee number, and doing so would provide a physical pointer to
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`the unique memory address for storing that user’s biometric signature. This would
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`be one of the simplest and most efficient memory configurations for enabling high
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`speed storage and retrieval of a user’s biometric signature from a specific memory
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`location defined by the user’s card data.
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`36. Since my first declaration does not rely on Tsukamura’s IC card 21
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`for disclosing the claimed “card information,” PO’s argument regarding the alleged
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`deficiency in Tsukamura is irrelevant.
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`b.
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`Tsukamura’s index-based system is materially the
`same as the ’039 Patent’s pointer system
`37. PO contends that “the index-based numbering system of Tsukamura is
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`fundamentally different than the pointer-based system disclosed in the ’039
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`Patent.” POR, 18. I disagree.
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`38. Both Tsukamura and the ’039 Patent describe a memory configuration
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`for storing fingerprint data. Ex. 1001, 2:64-67; Ex. 1005, Fig. 3. In both
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`Tsukamura and the ’039 Patent, the memory location for storing a user’s
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`fingerprint data is defined by a unique number associated with the user. Id. Just
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`like the ’039 Patent’s card information, Tsukamura’s index number acts as a
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`pointer to a specific memory location for storing the fingerprint, and, therefore, a
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`POSITA would have understood that Tsukamura’s index-based system is a pointer
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`system. Ex. 1031, 76:18-24.
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`39. PO uses a pointer example attempting to differentiate the ’039
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`Patent’s pointer from Tsukamura’s index. POR, 23. In doing so, PO admits that
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`16
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`the memory location calculated in its pointer example is still an “offset,” just like
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`Tsukamura. Id. (“if there is a file of 100,000 bytes, and a record is found at an
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`offset of 25,000 bytes in the file, one may use the pointer value “25,000” to
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`locate the record.”); c.f. id., 18 (“Tsukamura expressly teaches that the employee-
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`entered number is used to calculate an offset...”). Thus, in my opinion, PO’s
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`pointer example in fact supports my opinion that Tsukamura’s index-based system
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`is in fact a pointer system.
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`c.
`
`The differences between Tsukamura’s index-based
`system and the ’039 Patent’s pointer system are
`immaterial to unpatentability of the Challenged
`Claims
`40. Even though Tsukamura’s index-based system and the ’039 Patent’s
`
`pointer system are not identical, it is my opinion that any differences are
`
`immaterial to unpatentability of the Challenged Claims. PO contends that “the
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`pointer system of the ’039 Patent is more flexible and permits database records of
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`varying sizes.” POR, 18. However, as Dr. Russ admits, none of the Challenged
`
`Claims require flexibility of storing records of varying sizes. Ex. 1031, 123:17-22,
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`124:16-21. Nor do any of the Challenged Claims preclude “impos[ing] a strict
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`upper limit on the amount of space each record could occupy” or “not us[ing] all of
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`the storage space at their respective memory locations,” as PO contends. POR, 20.
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`
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`17
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`Therefore, it is my opinion that PO’s arguments regarding unclaimed differences
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`should be given no weight.
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`2.
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`A POSITA would have been motivated to combine Hsu-
`Sanford with Tsukamura
`41. Aside from the alleged irrelevant deficiency of Tsukamura discussed
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`in Section V.B.1, PO does not present any other arguments that the Sanford-Hsu-
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`Tsukamura combination fails to disclose other limitations of claim 3 under any of
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`Petitioners’, the Board’s, or PO’s constructions. Rather, PO’s argument focuses on
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`a purported lack of motivation to combine due to purported undesirability of
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`Tsukamura’s indexing system compared to Hsu’s database. POR, 21. In my
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`opinion, this is wrong for the following reasons.
`
`a.
`
`The Challenged Claims do not require a particular
`type of data storage
`42. Without support, PO identifies “[t]hree extremely common solutions
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`to data storage”:
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`(1) Hsu’s purported “searchable database of records” (Type 1)
`
`(2) Tsukamura’s purported “array of records of fixed size” (Type 2)
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`and
`
`(3) ’039 Patent’s purported “unstructured collection of data and track
`
`records by having one pointer to each record” (Type 3).
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`POR, 21-22. According to PO and Dr. Russ, Hsu’s memory configuration is Type
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`
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`18
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`

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`(1), Tsukamura is Type (2), and the ’039 Patent is Type (3). POR, 22-23; Ex.
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`1031, 64:10-65:3, 122:23-123:11. In fact, both Hsu and the ’039 Patent use the
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`term “database” (Type 1) to describe their memory configurations. Ex. 1001, 6:35
`
`(“local database 124”); Ex. 1003, ¶26 (“fingerprint database 44”). As shown
`
`below, while Tsukamura’s indices point to memory locations that are 512 bytes
`
`apart, this does not mean that the records stored at these memory locations are “of
`
`identical size” (POR, 22)—rather, any record that is smaller than 512 bytes can be
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`stored in these memory locations.
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`
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`19
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`Ex. 1005, Fig. 3. Nor does PO point to anywhere in the ’039 Patent describing an
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`“unstructured collection of data and track records.”