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 SURREPLY
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 3-12 and 15-18)
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`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S SURREPLY
`
`U.S. PATENT NO. 8,620,039 (CLAIMS 3-12 and 15-18)
`
`
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ........................................................................................... i
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`
`PATENT OWNER’S CONSTRUCTION IS CORRECT............................... 2
`
`PETITIONER HAS FAILED TO PROVE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS IN VIEW OF THE
`PRIOR ART ..................................................................................................... 6
`
`A. Ground 1: Petitioner Ignores The Actual Teachings Of Hsu ................ 6
`
`B.
`
`Ground 2: Petitioners fail to prove that a POSITA would have
`been motivated to combine Hsu-Sanford with Tsukamura .................15
`
`IV. THE PETITION IS TIME-BARRED UNDER 35 U.S.C. § 315(b) .............19
`
`V.
`
`CONCLUSION ..............................................................................................20
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`
`i
`
`
`
`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]
`
`ii
`
`
`
`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)
`
`iii
`
`
`
`EXHIBIT
`
`DESCRIPTION
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`2040
`2041
`2042
`2043
`2044
`
`2045
`2046
`
`2047
`
`2048
`
`2049
`
`“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)
`Deposition of Stuart Lipoff, vol. 2 (August 30, 2023)
`
`
`
`
`
`iv
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`
`
`I.
`
`INTRODUCTION
`
`Petitioners’ Reply, and the conclusory opinions expressed in Mr. Lipoff’s
`
`Second Declaration, do nothing to further satisfy their burden of proof that the
`
`combination of Sanford and Hsu (Ground 1) or the combination of Sanford/Hsu
`
`and Tsukamura (Ground 2), render any of the Challenged Claims obvious under
`
`35 U.S.C. §103. Petitioners’ theory of invalidity under Ground 1 rests on a
`
`mischaracterization of Patent Owner’s (“PO”) claim construction and, perhaps
`
`more importantly, on a complete concoction regarding the teachings of Hsu.
`
`As discussed below, there is nothing in Hsu that teaches or suggests that
`
`the user’s card information defines where the user’s biometric signature is to be
`
`stored during enrollment. To the contrary, Hsu expressly teaches that the user’s
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`card information is merely stored, by the system, in association with the user’s
`
`biometric signature. Petitioners and Mr. Lipoff do their best to simply ignore the
`
`pertinent teachings of Hsu and replace those teachings with hindsight reasoning
`
`using the ’039 patent as a roadmap, but such efforts cannot satisfy Petitioners’
`
`burden of proof.
`
`Further, Petitioners failed to satisfy their burden to prove that a person of
`
`skill in the art (“POSITA”) would have been motived to replace Hsu-Sanford’s
`
`database with Tsukamura’s fixed-size memory configuration. It is well-
`
`established that, even if a POSITA understood that the modification could have
`
`1
`
`
`
`been made, a petitioner must still prove that a POSITA actually would have been
`
`motivated to make the modification. See Belden Inc. v. Berk-Tek LLC, 805 F.3d
`
`1064, 1073 (Fed. Cir. 2015). As discussed below, Petitioners have fallen well-
`
`short of that critical benchmark here.
`
`Accordingly, the Board should find that Petitioners have failed to prove
`
`obviousness of any of the Challenged Claims.
`
`II.
`
`PATENT OWNER’S CONSTRUCTION IS CORRECT
`
`Petitioners’ argument against PO’s construction is based on (i) a
`
`mischaracterization of PO’s construction, and (ii) the erroneous conflation of
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`enrolment and verification phases of the ’039 patent. Once it is understood that
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`that the “defining” step occurs during enrolment, and not during verification, then
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`it logically follows that “defining” a memory location means “setting” or
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`“establishing” the memory location. EX-2039 at ¶¶40-42 (citing EX-1001 at 2:64-
`
`67, 7:43-49).
`
`Petitioners Reply repeatedly asserts that PO contends that “defining”
`
`requires “setting or establishing” the memory location “for the first time.” Reply
`
`at 7, 9 (emphasis is Petitioners’). However, this contention is untrue and is
`
`intended to confuse the issue. PO never argued that “defining” requires setting or
`
`establishing the memory location “for the first time.” Rather, PO has consistently
`
`2
`
`
`
`argued that “defining” must occur during the enrolment phase, and not during the
`
`subsequent verification phase. See, e.g., PO Resp. at 2-3, 10-12, 14.
`
`
`
`Indeed, the plain language of claim 3 itself establishes that the “defined”
`
`step occurs during enrollment, not verification. In particular, claim elements (d)-
`
`(db) (highlighted in yellow) are directed to an enrollment method whereby the
`
`user’s biometric signature is stored at a memory location “defined by the provided
`
`card information.” Claim elements (e)-(ec) (highlighted in green) are directed to a
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`verification method whereby the inputted biometric signature is compared to the
`
`biometric signature that was previously stored during the enrollment phase. See
`
`EX-1001, claim 3 (emphasis added).
`
`3. 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;
`
`3
`
`
`
`(eb) if the inputted biometric signature matches the stored biometric
`signature, performing the process dependent upon the received card
`information; and
`(ec) if the inputted biometric signature does not match the stored biometric
`signature, not performing the process dependent upon the received card
`information.
`Id. See also EX-2049 at 53:20 – 55:12..
`
`
`
`Focusing on claim elements (da) and (ea), element (da) is directed to
`
`“storing the inputted biometric signature in a memory at a memory location
`
`defined by the provided card information” whereas element (ea) is directed to
`
`“comparing the inputted biometric signature to the biometric signature stored in the
`
`memory at the memory location defined by the provided card information.” Id.
`
`(emphasis added). Petitioners argue that the presence of the “defined by” term in
`
`element (ea) is proof that the defining step is “performed” not only during
`
`enrollment, but also during verification. Reply at 8-9.
`
`
`
`However, this interpretation is contrary to a plain, common sense reading of
`
`the claim language. Clearly in element (ea) the inputted biometric signature is
`
`compared to the biometric signature that is stored at the memory location that was
`
`previously defined during the enrollment step of element (da). The “defining”
`
`referred to at element (ea) is not some new or additional defining step that occurs
`
`during verification; rather, it is referring to the “defining” of the memory location
`
`that already occurred during enrollment.
`
`Mr. Lipoff agrees with this reading of the claim:
`
`
`4
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`
`
`A: Okay. So the memory location in Limitation [E-A] is referring back to
`the same memory location as in Limitation 3[D]; is that your understanding?
`
`Q: As I previously testified, I believe wherever the -- wherever the patent
`talks about the memory location defined by the card information, it means
`the same memory location.
`
`See EX-2049 at 57:16 – 58:13
`
`
`
`Petitioners’ citation to Dr. Russ’s deposition testimony regarding claim 3
`
`does not help its position. In the context of claim 3, Dr. Russ testified that the
`
`memory location “has to be defined prior to its storage”, i.e., during the enrollment
`
`phase. See EX-1031 at 53:2-12. Accordingly, as Dr. Russ explained, when the
`
`method of claim 3 is in the verification phase, “3[E(1)] is referring back to
`
`3[D(1)].” Id.1
`
`
`
`Thus, the references to “a memory location defined by the provided card
`
`information” and “the memory location defined by the provided card information”
`
`in claim elements 3(da) and 3(ea), respectively, support PO’s construction because
`
`they make clear that the memory location for storing the user’s biometric signature
`
`is defined only during the enrollment phase. During the verification phase, on the
`
`other hand, the inputted biometric signature is compared to the biometric signature
`
`
`1 3[D(1)] and 3[E(1)] are the alphanumeric designations used in the Petition which
`
`correspond to claim elements 3(da) and 3(ea).
`
`5
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`
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`that is stored at the memory location that was previously defined during the
`
`enrollment phase.
`
`
`
`For at least these reasons, PO’s construction of the “defining” limitation, i.e.,
`
`that “defining” a memory location means “setting” or “establishing” the memory
`
`location during enrollment, is correct and should be adopted.
`
`III. PETITIONER HAS FAILED TO PROVE THAT THE
`CHALLENGED CLAIMS ARE OBVIOUS IN VIEW OF THE PRIOR
`ART
`
`A. Ground 1: Petitioner Ignores The Actual Teachings Of Hsu
`
`Under any claim construction that properly recognizes that the “defined by”
`
`step of Limitation 3[D(1)]] occurs during enrollment, not verification2, Petitioners’
`
`challenge under Ground 1 fails because Hsu is devoid of any teaching or
`
`suggestion that the memory location for storing fingerprint data is contingent upon,
`
`determined by, or defined by the user’s card information during enrollment in any
`
`way. As Dr. Russ testified, the Challenged Claims are non-obvious in view of the
`
`asserted prior art, including under the Board’s preliminary construction, when the
`
`
`2 As noted in PO’s Response, it is PO’s position that Petitioner’s Second Proposed
`Construction and the Board’s preliminary 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. See PO Response at 9.
`
`
`6
`
`
`
`chronological limitations of the claims are appreciated. See EX-1031 at 24:23 –
`
`25:11:
`
`Q: Under the board's preliminary construction for the defining limitation, do
`you have an opinion as to the validity of the claims if the board’s
`preliminary construction were applicable?
`
`A: I believe that the -- well, to the extent that the board's definition means
`that the address is -- that -- to the total extent that the board's construction is
`harmonious with the necessary chronological limitations of the claim, I
`believe that my opinion would be the same, that the patents would -- that the
`-- that the asserted claims would be valid over the prior art. In other words, I
`do not believe that the board's proposed construction would change my
`opinion.
`
`
`
`Hsu fails to teach or suggest that the card information defines the memory
`
`location at which the biometric signature is to be stored during enrollment. First,
`
`Hsu expressly teaches that its “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.” EX-1003 at 7:1-4. Hsu
`
`then teaches that “At the same time, the user’s identity has to be independently
`
`verified, by some means other than fingerprint matching, as indicated in block 66,
`
`and the user also presents an account number, employee number or similar identity
`
`number.” Id. at 7:4-8.
`
`7
`
`
`
`
`
`Petitioners quibble over whether “at the same time” means
`
`“simultaneously”3 or “contemporaneously or in the same time period or session”
`
`(Reply at 13), but this is beside the point. What matters here is that Hsu does not
`
`teach that (1) the user’s identity number is first received, and then (2) the user
`
`number subsequently defines the memory location at which the biometric signature
`
`will be stored, as is generally required by the ’039 patent claims. Rather, Hsu
`
`expressly teaches that the “account number is stored in the database 44 in
`
`association with the user’s fingerprint image data.” EX-1003 at 7:10-12 (emphasis
`
`added). In other words, the account number is passively stored by the system at a
`
`location in association with the biometric signature. There is no teaching or
`
`suggestion in Hsu that the account number plays any role in determining or
`
`“defining” where that memory location will be. EX-2039 at ¶¶46-49.
`
`
`
`As Dr. Russ re-emphasized in his deposition, the account number or card
`
`information of Hsu “does not tell the database where to put the [fingerprint]
`
`information,” in stark contrast to the requirements of the ’039 patent claims:
`
`A: … The claim requires that the card data be used to determine where to
`put the data. In other words, the – the system knows where to put the data
`because the card information defines the location.
`
`
`3 PO used the word “simultaneously” a single time in its argument but otherwise
`
`used Hsu’s own term, i.e., “at the same time.” See, e.g., PO Response at 11.
`
`8
`
`
`
`And -- and in the case of Hsu -- so a contrasting example is Hsu. In the case
`of Hsu, the card information does not tell the database where to put the
`information.
`
`EX-1031 at 84:10-18 (emphasis added). See also id. at 58:25 – 59:14; 63:16 –
`
`64:9.
`
`
`
`But Petitioners ignore the clear teachings of Hsu and baldly state that “Hsu
`
`uses the card information as a pointer to locate the associated specific memory
`
`location where it either stores the user’s fingerprint (if memory location is
`
`unoccupied) or retrieves a stored fingerprint (if occupied). Reply at 14; EX-1032
`
`at ¶28 (emphasis added). As ostensible support for this assertion Petitioners cite to
`
`selected portions of their Petition and Mr. Lipoff’s declarations (i.e., Pet., 24-28,
`
`31-33, EX-1006, ¶¶93, 99, 293, 313; EX-1032, ¶28). But the cited sections of Mr.
`
`Lipoff’s declarations do nothing more than mirror the attorney argument in the
`
`Petition and Reply and are therefore entitled to essentially no weight. See Intex
`
`Recreation Corp., v. Team Worldwide Corp., PGR2019-00015, Paper 41 at 33-34
`
`(PTAB April 29, 2020) (expert declaration that “merely parrots” attorney argument
`
`is entitled to little or no weight).
`
`
`
`Petitioners also point to FIG. 4 of Hsu (reproduced below), which
`
`“illustrates an enrollment procedure.” EX-1003 at 6:51.
`
`9
`
`
`
`
`
`In actuality, FIG. 4 adds nothing helpful for Petitioners. Rather, fingerprint
`
`database 44 (in green) merely depicts the users’ account numbers (“ACC. NOS.”)
`
`as being stored in association with the reference fingerprint data (“REF. PRINTS”)
`
`exactly as described in Hsu column 7, discussed above. There is absolutely
`
`nothing in FIG. 4 to indicate that the account numbers determine or “define” where
`
`in the database the fingerprint data will be stored.
`
`Further, with respect to FIG. 4 of Hsu, Mr. Lipoff opined that “[a]s the card
`
`information is used as a pointer to the memory address to the fingerprint (see
`
`Figure 4 below), the memory location for each card/user is reserved/established in
`
`memory.” EX-1032 at ¶ 29 (paren. in original). Again, there is nothing in FIG. 4
`
`itself, or in the associated text in Hsu’s column 7, to indicate that the card
`
`information itself is used as a pointer to the memory location. Rather, as discussed
`
`10
`
`
`
`above, Hsu only teaches that the card information is passively stored in association
`
`with the biometric signature at a memory location defined by the system.
`
`Mr. Lipoff could not offer any further support for his conclusory opinion on
`
`cross-examination. Rather, it became apparent that he simply used the ’039 patent
`
`as a roadmap, in hindsight fashion, to arrive at his opinion. See EX-2049 at 60:22 –
`
`61:3 (“But using the – same – here I’m using the same terminology that is in
`
`Figure 4 of the ’039 patent where you – the ’039 patent data refers to the card data
`
`pointing to the address of the biometric signature in a database, exactly analogous
`
`to Figure 4 of Hsu.”)
`
`Referring now to Figure 4 of the ’039 patent (reproduced below), Mr. Lipoff
`
`acknowledged that the pointer is represented illustratively by arrow 608. EX-2049
`
`at 62:1-2.
`
`
`
`
`
`
`
`
`
`11
`
`
`
`Tellingly, when asked if FIG. 4 of Hsu has a corresponding representation of
`
`the pointer 608 of the ’039 patent, Mr. Lipoff could only offer the conclusory
`
`opinion that “I believe there’s a one-to-one correspondence in that the account
`
`number in the database of Figure 4 [of Hsu] has a one-to-one correspondence to
`
`the card data that’s shown in Figure 4 of the ’039 patent, even though the figures
`
`are different graphical representations, but they are representing corresponding
`
`things.” EX-2049 at 64:4-18. However, as discussed above, there is no “one-to-
`
`one correspondence” between the account numbers of Hsu and the card
`
`information of the ’039 patent (which serve as a pointer) because the account
`
`numbers of Hsu do not, in any way, determine or define where in the database the
`
`biometric signature will be stored. See EX-2039 at ¶¶46-49; see also EX-1031 at
`
`84:10-18; 58:25 – 59:14; 63:16 – 64:9.
`
`The conclusory nature of Mr. Lipoff’s opinion became even more apparent
`
`when he was asked if any of the arrows in Hsu’s FIG. 4 depict a pointer:
`
`Q: Well, Figure 4 of Hsu, I see three different arrows. Would you agree with
`that?
`
`A: I see -- I see three different arrows, yes, I agree.
`
`Q: Do any of those arrows depict a pointer from the account number to the
`fingerprint database?
`
`A: Well, they represent the concept of a pointer, the fingerprint database, by
`having the account number populate the fingerprint database. And as the
`text associated with Figure 4 in Hsu says, the account number is used to
`
`12
`
`
`
`provide the memory location in the database which associates the account
`number with the -- with the fingerprint reference.
`
`
`EX-2049 at 66:24 – 67:11 (emphasis added). Clearly, as discussed above, there is
`
`no teaching or suggestion in Hsu that the account number itself determines or
`
`“defines” the location in the database where the fingerprint data is populated. The
`
`only suggestion that the account number (or card information) would do so comes
`
`from using the ’039 patent as a roadmap. See Ruiz v. A.B. Chance Co., 357 F.3d
`
`1270, 1275 (Fed. Cir. 2004) (“This form of hindsight reasoning, using the
`
`invention as a roadmap to find its prior art components, would discount the value
`
`of combining various existing features or principles in a new way to achieve a new
`
`result -- often the very definition of invention.”)
`
`
`
`Next, Petitioners offer two new theories as to how Hsu-Sanford allegedly
`
`teaches Limitation 1[C]’s defining step under PO’s construction. See Reply at 14-
`
`15 (§III.B.). These new arguments are untimely and should be disregarded. Hulu,
`
`LLC v. Sound View Innovations, LLC, IPR2018-00582, 2019 WL 6790791, at *11
`
`(PTAB Aug. 5, 2019); see also Dexcom, Inc., v. Abbott Diabetes Care Inc.,
`
`IPR2022-00605, Paper 29 at n.20 (PTAB July 10, 2023) (“This is an improper new
`
`argument made for the first time on Reply… and we decline to consider it.”)
`
`
`
`Moreover, the Reply cites only to Mr. Lipoff’s second declaration (EX-1032
`
`at ¶¶31-33) which in turn merely parrots the attorney argument in the Reply and
`
`does not cite to any underlying facts or data for support. These new arguments
`
`13
`
`
`
`should be disregard for that reason as well. See Thor Indus. Inc., et al. v. Gran
`
`Design RV, LLC, IPR2022-00411, Paper 9 at 43 (PTAB July 14, 2022) (“Patent
`
`Owner argues that Petitioner cites no support for these assertions other than its
`
`wholesale cut-and-pasted expert declarations, which do not disclose any
`
`underlying facts or data for support. … We agree with Patent Owner.”)
`
`
`
`Even if the two new theories are considered, neither of them presents a
`
`scenario where the card information itself determines or defines the memory
`
`location. According to the first new theory, “[o]ne option is to store all the user
`
`numbers in Hsu’s database and reserve/pre-establish memory locations for
`
`associated fingerprint data.” Reply at 14-15. Under this scenario, the database
`
`defines where the user numbers (and subsequently, the associated fingerprint data)
`
`are to be stored. There is no indication that the user number itself determines or
`
`defines where it will be stored.
`
`Similarly, under the second new theory, “[u]pon a user enrolling, she would
`
`provide a previously unseen card/user number, and the system would then create a
`
`new record for the user, including setting/establishing for the first time the memory
`
`location for storing the user’s fingerprint.” Reply at 15 (emphasis added). This new
`
`theory expressly states that it is the system, not the card information, that sets or
`
`establishes the memory location. Accordingly, neither of Petitioners newly offered
`
`14
`
`
`
`theories prove that the Hsu-Sanford combination render the Challenged Claim
`
`obvous.
`
`In sum, Petitioners have failed to prove that Hsu teaches or suggests, in the
`
`enrollment phase, defining, dependent upon the card information (or user account
`
`number) a memory location for storing the biometric signature. Rather, Hsu
`
`expressly teaches that the user account number is merely stored by the system in
`
`association with the biometric signature.
`
`B. Ground 2: Petitioners fail to prove that a POSITA would have
`been motivated to combine Hsu-Sanford with Tsukamura
`
`Petitioners fail to satisfy their burden to prove that a POSITA would have
`
`been motivated to replace Hsu-Sanford’s database with Tsukamura’s memory
`
`configuration. At best, Petitioners and Mr. Lipoff present an argument that Hsu-
`
`Sanford and Tsukamura could be combined. But this is insufficient to make the
`
`necessary showing that a POSITA would have picked out these references and
`
`combined them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek
`
`LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
`
`skilled artisan not only could have made but would have been motivated to make
`
`the combinations or modifications of prior art to arrive at the claimed invention.”)
`
`(emphasis in original). This failure of Petitioners’ proof is only reinforced by the
`
`Reply Brief and Mr. Lipoff’s Second Declaration.
`
`15
`
`
`
`In the Reply, Petitioners make various claims that a POSITA would have
`
`understood that replacing Hsu’s database with Tsukamura’s would have led to
`
`enhanced efficiency and speed. See Reply at 16. For support, Petitioners cite to
`
`their own attorney argument in the Petition (at 17-18, 38-39, 75) and Mr. Lipoff’s
`
`Second Declaration (EX-1032, ¶¶35-36). Id. But Mr. Lipoff’s testimony at ¶¶35-36
`
`does little more than parrot the attorney argument in the Reply and, therefore,
`
`should be accorded little or no weight. See Thor Indus. Inc., supra.
`
`The Petition (at 75-76) and Mr. Lipoff’s second declaration cite back to
`
`¶¶404-405 of Mr. Lipoff’s first declaration but, again, those paragraphs are merely
`
`conclusory testimony that parrots the attorney argument in the Petition. Petitioners
`
`cannot carry their burden to prove that a POSITA would have picked out
`
`Tsukamura and combined it with Hsu-Sanford with expert testimony that merely
`
`parrots attorney argument.
`
`Further, as Dr. Russ demonstrated, a POSITA at the time of the invention
`
`would have understood that the indexing system of Tsukamura was unsuitable for
`
`fingerprint storage because it relies on fixed-size records. EX-2039 at ¶63. As Dr.
`
`Russ explained, fingerprint data for different individuals will vary in size, largely
`
`16
`
`
`
`because individuals have different numbers of fingerprint “minutiae.” Id.4
`
`Petitioners’ expert, Mr. Lipoff, agreed that “in general [individuals] have different
`
`numbers of minutiae, and the minutiae differ from one another as well in a general
`
`sense.” EX-2049 at 89:1-6.
`
`In reply, Petitioners and Mr. Lipoff spend much effort arguing that a
`
`POSITA would understand that the fixed-size records of Tsukamura could be used
`
`to store fingerprint data, but they do not (and cannot) show that a POSITA would
`
`have been motivated to do so at the time of the inventions. For example,
`
`Petitioners and Mr. Lipoff point to EX-1036, titled “Learning a Fixed-Length
`
`Fingerprint Representation” authored by Engelsma et al. (“Engelsma”) (which was
`
`published in 2019, well after the time of the invention of the ’039 patent) as
`
`discussing “published studies on fixed-length fingerprint representations,” two of
`
`which were purportedly published before the ’039 patent’s earliest priority date.
`
`EX-1032 at ¶53.
`
`However, Engelsma actually undermines Mr. Lipoff’s argument because it
`
`fully acknowledges that storing fingerprint data in variable-size records, as
`
`opposed to fixed-size records, was the “prevailing” method. EX1036, Abstract.
`
`
`4 “Minutiae” collectively refers to fingerprint “ridge endings and ridge
`
`bifurcations.” EX-2044 at 006, col. 1.
`
`17
`
`
`
`Thus, Mr. Lipoff is wrong to argue that, based on Engelsma, “a POSITA would
`
`have recognized that a fixed-length biometric fingerprint record would have been
`
`an obvious and indeed one of the preferred ways to store and use biometric
`
`fingerprint data.” See EX-1032 at ¶55. In fact, Engelsma indicates the opposite
`
`because it states that using variable-size records was the “prevailing” method. At
`
`most, Engelsma merely indicates that a POSITA would understand that a fixed-
`
`size records could be used to store fingerprint data, but it does nothing to prove
`
`that a POSITA would have been motivated to do so, particularly in combination
`
`with the devices of Hsu-Sanford.
`
`On cross-examination, Mr. Lipoff would not say whether he agreed or
`
`disagreed with the authors of Engelsma that storing fingerprint data in variable-size
`
`records was the “prevailing” method. See EX-2049 at 75:19 - 82:6. But there is
`
`nothing vague or confusing about the statement in Engelsma’s Abstract. It
`
`indicates plainly that storing fingerprint data in variable-size records, as opposed to
`
`fixed-size records, was the “prevailing” method. EX1036, Abstract.
`
`Further, when asked—again—whether he had any reason to disagree with
`
`Engelsma that storing fingerprint data i
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