Petitioners’
`Demonstratives
`
`ASSA ABLOY AB et al., v.
`CPC Patent Technologies PTY LTD.
`
`IPR2022-01093, IPR2022-01094
`
`US Patent No. 8,620,039
`
`November 9th, 2023
`
`Petitioners’ Demonstratives, Not Evidence
`
`Internal
`
`ASSA ABLOY Ex 1041 - Page 1
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd.
`IPR2022-01094 - U.S. Patent No. 8,620,039
`
`
`Demonstratives
`
`ASSA ABLOY AB et al., v.
`CPC Patent Technologies PTY LTD.
`
`IPR2022-01093, IPR2022-01094
`
`US Patent No. 8,620,039
`
`November 9th, 2023
`
`Petitioners’ Demonstratives, Not Evidence
`
`Internal
`
`ASSA ABLOY Ex 1041 - Page 1
`ASSA ABLOY AB, et al. v. CPC Patent Technologies Pty Ltd.
`IPR2022-01094 - U.S. Patent No. 8,620,039
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`Overview of the ’039 Patent
`
`Claim Construction: “defining”/“defined by”
`
`Ground 1: Hsu-Sanford teaches Limitation 1[C]’s defining step
`
`Ground 2: Hsu-Sanford-Tsukamura teaches Limitation 1[C]’s defining step
`
`V.
`
`The Petition Is Not Time Barred
`
`Petitioners’ Demonstratives, Not Evidence
`
`2
`
`
`
`I. Overview of the ’039 Patent
`
`Petitioners’ Demonstratives, Not Evidence
`
`3
`
`
`
`’039 Patent: “Card Device Security Using Biometrics”
`
`Paper 2 (Pet.) at 4-7; Ex. 1001, Fig. 4 (citations to IPR2022-01093 except otherwise noted)
`
`Petitioners’ Demonstratives, Not Evidence
`
`4
`
`Ex. 1001, Fig. 4 (annotated)
`
`
`
`II.A Claim Construction:
`“defining, dependent upon the received card
`information, a memory location”
`
`Pet. at 11-14; Ex.1006, ¶¶ 43-48; Paper 26 (Reply), 6-13; Ex.1032, ¶¶ 5-21
`
`Petitioners’ Demonstratives, Not Evidence
`
`5
`
`
`
`Claim Construction: ’039 Patent Claim 1
`
`’039 Patent, Claim 1
`
`Ex-1001 (‘039 Patent), Cl.1 (excerpted and annotated); Cl. 3 (excerpted and annotated)
`
`Ex. 1001, Fig. 4 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`6
`
`
`
`Claim Construction: ’039 Patent Claim 3
`’039 Patent, Claim 3
`
`Ex-1001 (‘039 Patent), Cl.1 (excerpted and annotated); Cl. 3 (excerpted and annotated)
`
`Ex. 1001, Fig. 4 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`7
`
`
`
`’039 Patent’s biometric card pointer concept
`
`Ex. 1001
`’039 Patent
`
`Ex. 1001, 7:31-35
`
`Ex. 1001, 8:34-41
`
`Pet. at 5-6; Ex-1001 (‘039 Patent), 7:31-35, 8:34-41
`
`Ex. 1001, Fig. 4 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`8
`
`
`
`The primary dispute is over the construction of the “defining” limitation
`
`Patent Owner’s construction is wrong; and even if it were correct,
`the claims are still unpatentable over the prior art in the Petition.
`
`IPR2022-01093, Reply at 5-13
`
`Petitioner
`
`Petitioners have shown that the claims are unpatentable under
`any proposed construction.
`
`IPR2022-01093, Reply 5
`
`Reply at 5-13; Ex. 1032, ¶¶ 8-21
`
`Petitioners’ Demonstratives, Not Evidence
`
`9
`
`
`
`Board’s Construction in Apple IPR (Final Written Decision)
`
`The Board’s interpretation of the “defining” limitation resolves the disputes in Petitioners’ favor.
`
`“Regardless, we can give Patent Owner the benefit of the doubt that during an enrollment process the card
`data is provided for ‘setting’ or ‘establishing’ what memory location, or address, in the local database the
`fingerprint is to be stored. Even with this understanding, however, the card data does not actually create a
`memory location. The memory location already exists, it has just not yet been “set” or “established” by the
`card data as the memory location at which the fingerprint data is stored.” (p. 35)
`
`“If the card data somehow created a memory location, then there would be no reason to determine if the
`memory location were unoccupied. … ‘[t]he only logical use of that term is that defining means to identify
`a memory location into which the biometric data is going to be stored.’” (p.36)
`
`“’[t]he only logical use of that term is that defining means to identify a memory location into which the
`biometric data is going to be stored.’” (p. 35)
`
`“Once the card information and fingerprint is received during enrollment, the card information provides
`data that establishes where, i.e., at what memory location or address, the system will store the
`fingerprint data.” (p. 36)
`
`IPR2022-00600 (Apple IPR Final Written Decision), Paper No. 22 at 35, 36, 39 (all emphasis added).
`
`Petitioners’ Demonstratives, Not Evidence
`
`10
`
`
`
`Board’s Construction in Apple IPR (Final Written Decision)
`
`Each of Petitioners’ grounds satisfies the Board’s construction. The card information “establishes
`where, i.e., at what memory location or address, the system will store [and retrieve] the fingerprint data.”
`
`Just like the database entries in the Apple IPR, the database entries in Hsu satisfy the “defining”
`limitation. From the Apple IPR final written decision:
`
`“Once the card is provided during enrollment, the card information provides data that establishes where,
`i.e. at what memory location or address, the system is to store the fingerprint data.” (p. 36)
`
`“information on a user’s ID card was a known way to define, that is to ‘establish’ or ‘set’ a memory
`location, for example with the user’s player ID record entry, where a user’s input of a second
`authenticator, e.g., a fingerprint, would be stored” (p. 44)
`
`“When claim 1 is properly interpreted, as we have addressed herein, the creation of a player account in
`Bradford, or Foss, prior to receiving the card information does not preclude subsequently identifying a
`memory location (among preexisting memory locations/addresses within the preexisting player ID
`database) and establishing that memory location as the location where new biometric data, e.g., a
`player’s fingerprint, is going to be stored.” (p. 45)
`
`IPR2022-00600 (Apple IPR Final Written Decision), Paper No. 22 at 40; see also id. at 36, 44, 45. (All emphasis added.)
`
`Petitioners’ Demonstratives, Not Evidence
`
`11
`
`
`
`Claim Construction: “defining, dependent upon the received card information, a
`memory location”
`
`First 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.”
`
`Petitioner
`
`Second Construction: “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.”
`
`similar
`in scope
`
`IPR2022-01093, Pet., 11-12; Reply, 6-7
`
`Board’s Preliminary Construction: “the user’s card information itself specifies the
`physical memory address (such as by acting as a pointer) for the user’s biometric
`signature.”
`
`IPR2022-01093, Paper 20 (Institution Decision), 38; Reply, 6-7
`
`PO’s Construction: “the system sets or establishes a memory location in a local
`memory external to the card, said location being contingent upon or determined by the
`received card information.”
`
`Board
`
`Patent Owner
`
`Pet. at 11-12; Institution Decision at 38; POR at 11; Reply at 6-7; Ex. 1032, ¶ 7
`
`IPR2022-01093, Paper 24 (POR), 11
`
`Petitioners’ Demonstratives, Not Evidence
`
`12
`
`
`
`PO is wrong to construe “defining” to occur for the first time during enrollment
`
`Patent Owner
`
`Petitioner
`
`“Limitation 1[C] cannot be construed to cover… identifying a memory location that has
`already been defined.”
`
`POR at 13
`
`“PO’s construction contradicts claim 1 itself because if Limitation 1[C]’s defining step
`sets/establishes for the first time the memory location, it would be illogical to determine
`whether the memory location is occupied or not (Limitation 1[D]), since such newly
`set/established memory location would already be known to be unoccupied.”
`
`Reply at 8
`
`’039 Patent, Claim 1
`
`POR at 13; Ex. 1032, ¶ 11; Reply at 8; Ex. 1001 (’039 Patent), Cl. 1
`
`Petitioners’ Demonstratives, Not Evidence
`
`13
`
`
`
`PO’s Expert repeatedly admitted that the card information defines the memory location even
`before the user scans the card at the station
`
`“Q. Before that user ever goes up to scan his or her card, does the card already have
`on it the information 604 which points to a specific address that is defined by that card
`information?
`
`A. Well, the -- the implication is that the card data has to be there. Otherwise, it would
`not know where to store the data…”
`
`Ex. 1031, 70:20-71:1
`
`“Q. So before the user ever scans his or her card, the card information 604 already
`defines a specific memory location at which the user’s biometric signature data will be
`stored, correct?
`
`A. That -- that seems to be what's in the ’039 patent, yes.
`
`Q. And you’re not aware of any contrary teaching or alternative teaching in the ’039 patent,
`correct?
`
`A. Correct.”
`
`Ex. 1031, 70:20-71:1
`
`Petitioners’ Demonstratives, Not Evidence
`
`14
`
`Patent Owner’s Expert
`Samuel Russ
`
`Ex. 1031, 70:20-71:1, 71:13-22
`
`
`
`PO’s Expert repeatedly admitted that the card information defines the memory location even
`before the user scans the card at the station
`
`“Q. … So in the embodiment reflected in Figure 4 of the '039 patent, the association
`between card information 604 and memory location 607 exists even before enrollment
`begins, correct?
`
`A. Based on the disclosure and specification associated with Figure 7, yes.
`
`Q. What about Figure 4?
`
`A. Yeah, Figure 4 is silent on the subject, but the disclosure in -- associated with Figure 5
`and Figure 7 says that, yes, it occurs prior to.”
`
`Ex. 1031, 77:15-24
`
`“Q. … Referring to Figure 4 of the ’039 patent, before a new user ever scans his or her
`card for the first time, the card data 604 already defines a specific memory location in
`the database 124, correct?
`
`THE WITNESS:· That seems to be the case in the '039 patent, yes.”
`
`Ex. 1031, 78:2-9
`
`Petitioners’ Demonstratives, Not Evidence
`
`15
`
`Patent Owner’s Expert
`Samuel Russ
`
`Ex. 1031, 77:15-24, 78:2-9
`
`
`
`PO’s Expert repeatedly admitted that the card information defines the memory location even
`before the user scans the card at the station
`
`“Q. Okay. So I think we already established the memory location 604 on the card defines
`a memory location even before the user has ever scanned his or her card, correct?
`
`A. Correct.”
`
`Ex. 1031, 90:5-9
`
`Patent Owner’s Expert
`Samuel Russ
`
`“ Q… If 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.”
`
`Ex. 1031, 78:2-9
`
`Therefore, the memory address is not set/established for the first time during enrollment as PO
`contends.
`
`Ex. 1031, 90:5-9, 94:20-25; Reply at 7-8
`
`Reply at 7-8
`
`Petitioners’ Demonstratives, Not Evidence
`
`16
`
`
`
`Claim Construction: “defining, dependent upon the received card information, a
`memory location”
`
`Petitioner
`
`“Up until claim 1’s determining step, the current process
`may be either an enrollment or verification process… In
`other words,… the defining step in Limitation 1[C] is
`performed during both enrollment and verification.”
`
`Reply at 9
`
`’039 Patent, Claim 1
`
`Reply at 9; Ex. 1032, ¶ 12; Ex-1001 (‘039 Patent), Cl.1 (annotated), Fig. 5
`
`Ex. 1001, Fig. 5
`
`Petitioners’ Demonstratives, Not Evidence
`
`17
`
`
`
`’039 Patent never mentions setting/establishing “for the first time”
`
`Petitioner
`
`“When discussing the only graphical
`representation of the relationship between the
`card information and the memory location,
`i.e., Figure 4…, 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”…, but never
`mentions that such association is
`set/established for the first time during
`enrollment, e.g., a user may store his/her
`fingerprint at a previously
`reserved/established memory location.”
`
`Reply at 10
`
`Reply at 10; Ex. 1032, ¶ 13; Ex-1001 (‘039 Patent), Fig. 4
`
`Petitioners’ Demonstratives, Not Evidence
`
`Ex. 1001, Fig. 4
`18
`
`
`
`Claim Construction: “defining, dependent upon the received card information, a
`memory location”
`
`“[A] claim construction that would exclude the preferred
`embodiment “is rarely, if ever, correct and would require
`highly persuasive evidentiary support.”
`
`Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001)
`(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed.Cir.1996))
`
`Petitioners’ Demonstratives, Not Evidence
`
`19
`
`
`
`II.B Claim Construction:
`“memory location defined by the provided
`card information”
`
`IPR2022-01094, Paper 2(Pet.) at 8-11; Ex.1006, ¶¶ 43-48; IPR2022-01094, Paper 25 (Reply), 6-12; Ex.1032, ¶¶ 5-22
`
`Petitioners’ Demonstratives, Not Evidence
`
`20
`
`
`
`Claim Construction: ’039 Patent Claim 3
`
`’039 Patent, Claim 3
`
`Ex-1001 (‘039 Patent), Cl.3 (annotated), Fig. 5
`
`Ex. 1001, Fig. 5
`
`Petitioners’ Demonstratives, Not Evidence
`
`21
`
`
`
`The primary dispute is over the construction of the “defining” limitation
`
`Patent Owner’s construction is wrong; and even if it were correct,
`the claims are still unpatentable over the prior art in the Petition.
`
`IPR2022-01094, Reply at 5-12
`
`Petitioner
`
`Petitioners have shown that the claims are unpatentable under
`any construction.
`
`IPR2022-01094, Reply at 5
`
`IPR2022-01094Reply at 5-13; Ex. 1032, ¶¶ 7-20
`
`Petitioners’ Demonstratives, Not Evidence
`
`22
`
`
`
`In Claim 3, “defined by” is recited the same for both enrollment and verification
`
`Petitioner
`
`“Unlike claim 1, claim 3 does not even recite any ‘defining’ step…
`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.”
`
`IPR2022-01094, POR at 8
`
`“[T]he plain language of claim 3 itself establishes that the ‘defined’ step
`occurs during enrollment, not verification.”
`
`Patent Owner
`
`IPR2022-01094, Sur-Reply at 3
`
`IPR2022-01094, Paper 23 (POR) at 8; IPR2022-01094, Ex. 1032, ¶ 10; IPR2022-01094, Paper 29 (Sur-Reply) at 3
`
`Petitioners’ Demonstratives, Not Evidence
`
`23
`
`
`
`In Claim 3, “defined by” is recited the same for both enrollment and verification
`
`“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.”
`
`IPR2022-01094, Ex. 1032, ¶ 11
`
`Petitioners’ Expert
`Stuart Lipoff
`
`“A. … however the connection, in whatever sense the defining step occurs in
`3[D(1)], the same defining step occurs in 3[E(1)].”
`
`Ex. 1031, 54:1-3
`
`Patent Owner’s Expert
`Samuel Russ
`
`“Q. … do you interpret the language ‘defined by the provided card information’ to
`be the same in limitation 3[E(1)] and 3[D(1)]?
`
`* * *
`THE WITNESS: Yes…”
`
`IPR2022-01094, Ex. 1032, ¶ 11; Ex. 1031, 54:1-3, 54:17-21
`
`Ex. 1031, 54:17-21
`
`Petitioners’ Demonstratives, Not Evidence
`
`24
`
`
`
`PO’s Expert admits that “defined by” is recited for both enrollment and verification
`
`’039 Patent, Claim 3
`
`Patent Owner’s Expert
`Samuel Russ
`
`“Q. In both enrollment and verification
`within Claim 3, the recitation is that the []
`provided card information defines the memory
`location; is that correct?
`
`A. In -- yes, it’s used to store in 3D and to
`compare in 3E. And, yes, in both cases the
`“defined by” language appears.
`
`Q. And so in both cases, is it your
`understanding that the provided card
`information defines the memory location?
`
`A. In both places the provided card
`information defines the memory
`location…”
`
`Ex. 1031, 55:22-56:8
`
`IPR2022-1094, Reply at 9; Ex. 1031, 55:22-56:8; Ex. 1001 (’039 Patent), Cl. 3
`
`Petitioners’ Demonstratives, Not Evidence
`
`25
`
`
`
`II.C Claim Construction:
`“method of enrolling”
`
`Paper 26 (Reply), 13-14
`
`Petitioners’ Demonstratives, Not Evidence
`
`26
`
`
`
`“Method of enrolling” is non-limiting preamble language
`
`’039 Patent, Claim 1
`
`Ex-1001 (‘039 Patent), Cl.1 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`27
`
`
`
`Claim Construction: “method of enrolling”
`
`“[A] preamble is not limiting ‘where a patentee defines a structurally
`complete invention in the claim body and uses the preamble only to
`state a purpose or intended use for the invention.’”
`
`Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
`(citing Rowe v. Dror, 112 F.3d 473, 478 (Fed.Cir.1997))
`
`Petitioners’ Demonstratives, Not Evidence
`
`28
`
`
`
`Claim Construction: “method of enrolling”
`“Claim 1 both
`(i) defines a structurally complete invention by starting with ‘receiving card
`information/biometric signature’ and concluding with ‘storing… the biometric
`signature’… and
`(ii) its preamble of a “method of enrolling” is nothing more than a non-limiting
`intended use.”
`
`Petitioner
`
`’039 Patent, Claim 1
`
`Reply at 13
`
`Therefore, “defining” is not limited to enrollment.
`
`Paper 26 (Reply) at 13-14; Ex-1001 (’039 Patent), Cl.1 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`29
`
`
`
`III. Ground 1: Hsu-Sanford teaches
`Limitation 1[C]’s defining step
`
`IPR2022-01093, Pet. at 28-32; Ex.1006, ¶¶ 88-74; Reply at 14-17; Ex.1032, ¶¶ 25-34.
`
`Petitioners’ Demonstratives, Not Evidence
`
`30
`
`
`
`Hsu-Sanford teaches Limitation 1[C]’s defining step
`
`Ex. 1003
`Hsu
`
`Petitioner
`
`Ex. 1003 (Hsu), ¶ 26
`
`Ex. 1003 (Hsu), Fig. 4 (annotated)
`
`“Although Hsu is silent on how a new user record is created, it would have been obvious for a
`POSITA to try using simple, known options for creating database records.
`
`One option is to store all the user numbers in Hsu’s database and reserve/pre-establish
`memory locations for associated fingerprint data…
`Discloses Limitation 1[C]’s “defining” step under Petitioners’ First
`Construction and the Board’s construction.
`
`Another option is to create a new user record on enrollment.”
`Discloses Limitation 1[C]’s “defining” step under Patent Owner’s
`construction.
`
`Ex. 1003 (Hsu), ¶ 26, Fig. 4; Reply at 14-17; Ex. 1032, ¶¶ 25-34
`
`Reply at 16-17; Ex. 1032, ¶¶ 32-34
`31
`Petitioners’ Demonstratives, Not Evidence
`
`
`
`Hsu-Sanford teaches Limitation 1[C]’s defining step under
`Petitioners’ First Construction and the Board’s Preliminary Construction
`
`Petitioner
`
`First 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.”
`
`IPR2022-01093, Pet., 11-12; Reply, 6-7
`
`similar
`in scope
`
`Board
`
`Petitioner
`
`Board’s Preliminary Construction: “the user’s card information itself specifies the
`physical memory address (such as by acting as a pointer) for the user’s biometric
`signature.”
`
`IPR2022-01093, Paper 20 (Institution Decision), 38; Reply, 6-7
`
`“One option is to store all the user numbers in Hsu’s database and reserve/pre-establish
`memory locations for associated fingerprint data. Upon a user enrolling by providing a
`user number, the system looks up the user number and determines the
`corresponding memory location for storing the user’s fingerprint, which discloses
`Limitation 1[C]’s ‘defining’ step under Petitioners’ First Construction and the Board’s
`construction.”
`
`Pet. at 11-12; Institution Decision at 38; POR at 11; Reply at 6-7, 16-17; Ex. 1032, ¶¶ 7, 33
`
`Reply at 16-17; Ex. 1032, ¶¶ 32-33
`
`Petitioners’ Demonstratives, Not Evidence
`
`32
`
`
`
`Hsu-Sanford teaches Limitation 1[C]’s defining step under PO’s Construction
`
`Patent Owner
`
`PO’s Construction: “the system sets or establishes a memory location in a
`local memory external to the card, said location being contingent upon or
`determined by the received card information.”
`
`IPR2022-01093, Paper 24 (POR), 11
`
`Petitioner
`
`“Another option is to create a new user record on enrollment… Upon 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 17; Ex. 1032, ¶ 34
`
`IPR2022-01093, Paper 24 (POR), 11, Reply at 17; Ex. 1032, ¶ 34
`
`Petitioners’ Demonstratives, Not Evidence
`
`33
`
`
`
`Timing: PO presents its claim construction for the first time in its POR
`
`“At this preliminary stage of the proceeding we acknowledge that
`Patent Owner has not yet provided any substantive claim
`construction in its Preliminary Response. Both parties will have the
`opportunity to address this matter in additional briefing, including in
`Patent Owner’s Response and Petitioner’s Reply.”
`IPR2022-01093, Paper 20 (Institution Decision), 38
`
`Board
`
`“‘Defining,’ as used in the Challenged Claims, does not (and cannot)
`mean merely looking up or identifying something that has already
`been defined.”
`
`POR at 11
`
`Patent Owner
`
`“[A] POSITA would interpret the word ‘defining,’ especially in the
`context of enrollment, to mean ‘setting’ or ‘establishing.’”
`
`IPR2022-01093, Paper 20 (Institution Decision), 38; POR at 11-12
`
`POR at 12
`
`Petitioners’ Demonstratives, Not Evidence
`
`34
`
`
`
`Timing: Petitioners are permitted to rebut PO’s new claim construction arguments
`
`“The patent owner may then respond to these positions and/or
`propose additional terms for construction…The petitioner may
`respond to any such new claim construction issues raised by
`the patent owner, but cannot raise new claim construction issues
`that were not previously raised in its petition.”
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 44-45
`
`Board
`
`Patent Owner
`
`Paper 30 (Sur-reply) at 14
`
`“Petitioners offer two new theories as to how Hsu-Sanford allegedly
`teaches Limitation 1[C]’s defining step under PO’s construction…
`These new arguments are untimely and should be disregarded.”
`
`Sur-reply at 14
`
`Petitioners’ Demonstratives, Not Evidence
`
`35
`
`
`
`Timing: Petitioners are permitted to rebut PO’s new claim construction arguments
`
`Petitioners offered
`two proposed
`constructions
`
`No claim
`constructions
`discussed
`
`Board offered
`preliminary
`construction
`
`Petitioners are permitted to
`rebut PO’s new claim
`construction arguments
`
`PO offered NO
`claim construction
`
`PO offered its
`claim construction
`for the first time
`
`Petition
`
`POPR
`
`Reply to POPR
`
`Institution
`
`POR
`
`Reply to POR
`
`Petitioner
`
`Patent Owner
`
`Petitioner
`
`Board
`
`Patent Owner
`
`Petitioner
`
`Paper 30 (Sur-reply) at 14
`
`Petitioners’ Demonstratives, Not Evidence
`
`36
`
`
`
`Timing: Petitioners are permitted to rebut PO’s new claim construction arguments
`
`“Barring argument and evidence in a reply directed
`to a new claim construction proposed by the patent
`owner would create opportunities for sandbagging by
`the patent owner in order to create an estoppel.”
`
`Axonics, Inc. v. Medtronic, Inc., No. 2022-1532, 2023 WL 5006851, at *8 (Fed. Cir. Aug. 7, 2023)
`
`Petitioners’ Demonstratives, Not Evidence
`
`37
`
`
`
`IV. Ground 2: Hsu-Sanford-Tsukamura
`teaches Limitation 1[C]’s defining step
`
`IPR2022-01093, Pet. at 73-77; Ex.1006, ¶¶ 213-217; Reply at 17-25; Ex.1032, ¶¶ 35-61.
`
`Petitioners’ Demonstratives, Not Evidence
`
`38
`
`
`
`Hsu-Sanford-Tsukamura teaches Limitation 1[C]’s defining step
`
`Ex. 1005
`Tsukamura
`
`Ex. 1005 (Tsukamura), 3:28-34
`
`Ex. 1005 (Tsukamura), 3:28-34, Fig. 3 (annotated); Pet. at 75; Ex. 1006, ¶ 215
`
`Ex. 1005, Fig. 3 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`39
`
`
`
`PO’s purported deficiencies regarding Tsukamura are irrelevant
`“[T]here is no teaching or suggestion in Tsukamura that the IC card 21 defines or
`provides information about where to store the biometric signature during enrollment or
`otherwise.”
`
`Patent Owner
`
`POR at 22
`
`“This, however, has no bearing on the unpatentability analysis because the Petition
`does not rely on Tsukamura’s IC card 21 for disclosing the claimed ‘card information.’
`Tsukamura is relied on under Ground 2 solely for its memory configuration… As explained
`in the Petition, it would have been obvious to assign Tsukamura’s index number as the
`user/account/employee number in the Hsu-Sanford system.”
`
`Reply at 17-18
`
`Petitioner
`
`POR at 22; Reply at 17-18; Ex. 1032, ¶¶ 16-17; Pet. at 23-26, 30, 77, 83-84; Ex. 1003 (Hsu), Fig. 3; Ex. 1005 (Tsukamura), Fig. 5
`
`Ex. 1003 (Hsu), Fig. 3
`
`Petitioners’ Demonstratives, Not Evidence
`
`Ex. 1005 (Tsukamura), Fig. 5
`40
`
`
`
`PO’s purported deficiencies regarding Tsukamura are irrelevant
`
`Patent Owner
`
`Petitioner
`
`“A POSITA would have understood that the indexed-based numbering system of
`Tsukamura is fundamentally different than the pointer-based system disclosed
`in the ’039 Patent… For example, the pointer system of the ‘039 Patent is more
`flexible and permits database records of varying sizes, while the index
`system of Tsukamura is more rigid and only works if the database records are
`of uniform size.”
`
`POR at 23
`
`“Not so…Just like the ’039 Patent’s card information, Tsukamura’s index
`number acts as a pointer to a specific memory location for storing the
`fingerprint, and a POSITA would have understood that Tsukamura discloses a
`pointer system.”
`
`Reply at 18
`
`“[A]s Dr. Russ admits, none of the Challenged Claims require flexibility of storing
`records of varying sizes.”
`
`POR at 23; Reply at 18-19; Ex. 1032, ¶¶ 38-39, 41
`
`Reply at 19
`
`Petitioners’ Demonstratives, Not Evidence
`
`41
`
`
`
`PO’s expert admits that none of the challenged claims require flexibility of storing records of
`varying sizes
`
`“Q. Are you aware of anywhere in the ‘039 patent where it describes that the
`fingerprint records are of variable size?
`
`A. I'm not aware of where the ‘039 patent discloses it…”
`
`Ex. 1031, 123:17-21
`
`“Q. Are you aware of anywhere in any claim of the ‘039 patent where it matters
`whether the memory locations for users are of the same size or of variable size?
`
`* * *
`THE WITNESS: I think the claims of the ‘039 patent are silent on the
`subject…”
`
`Ex. 1031, 123:23-124:4
`
`“Q. Do any of the '039 patent claims require the memory location being able to
`store records of varying sizes?
`
`A. Well, the ‘039 patent is silent on the subject…”
`
`Patent Owner’s Expert
`Samuel Russ
`
`Ex. 1031, 123:17-21, 123:23-124:4, 124:16-20; Reply at 19; Ex. 1032, ¶ 41
`
`Ex. 1031, 124:16-20
`
`Petitioners’ Demonstratives, Not Evidence
`
`42
`
`
`
`A POSITA would have been motivated to combine Hsu-Sanford with Tsukamura
`
`“[T]he indexing system of Tsukamura was unsuitable for fingerprint storage
`because it relies on fixed-size records… [F]ingerprint data for different
`individuals will vary in size, largely because individuals have different numbers
`of fingerprint ‘minutiae.’”
`
`Patent Owner
`
`Sur-reply at 17-18
`
`Petitioner
`
`“[W]hile Tsukamura’s indices point to memory locations that are 512 bytes apart,
`records stored at these memory locations need not be ‘of identical size’—any
`record no greater than 512 bytes can be stored.”
`
`Reply at 21
`
`“Regardless, the Challenged Claims do not require any particular type of
`memory configuration.”
`
`Reply at 21
`
`Sur-reply at 17-18; Reply at 21; Ex. 1032, ¶ 43
`
`Petitioners’ Demonstratives, Not Evidence
`
`43
`
`
`
`The law does not require the combination be the “best option”
`
`“Our caselaw is clear. It’s not necessary to show that a combination
`is ‘the best option, only that it be a suitable option.’”
`
`Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (emphasis original)
`(citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014))
`
`Petitioners’ Demonstratives, Not Evidence
`
`44
`
`
`
`Replacing Hsu’s database with Tsukamura’s memory configuration is a “suitable option”
`
`Patent Owner
`
`“Three extremely common solutions to data storage are (and were at the time of the
`‘039 Patent invention), first, to have a searchable database of records [Hsu], second, to
`structure the storage as an array of records of fixed size [Tsukamura]…”
`
`POR at 26-27
`
`“Q. Can you briefly summarize what each of these three common solutions for data
`storage are?
`A. … a searchable database of records, an array of records of fixed size, and having
`pointers to the records.
`Q. Each of these types of data storage were well-known before the time '039 patent
`application; is that correct?
`A. I believe that's correct, yes.”
`
`Ex. 1031, 12:25-13:8
`
`Patent Owner’s Expert
`Samuel Russ
`
`“A. Yes, a searchable database of records, an array of records of fixed size, and an
`unstructured collection of records having pointers to each were all well-known ways
`even prior to 2000.”
`
`POR at 26-27; Ex. 1031, 12:25-13:8, 16:17-20; Reply at 22
`
`Ex. 1031, 16:17-20
`
`Petitioners’ Demonstratives, Not Evidence
`
`45
`
`
`
`Tsukamura’s array is not undesirable
`
`Patent Owner
`
`“[I]t was known in the art that fingerprint data may be of variable Size… A
`fixed-size indexing system [such as Tsukamura], therefore, would have been
`undesirable.”
`
`POR at 26
`
`“[S]toring the raw fingerprint images (e.g., as bit map of pixels) was a well
`known way to store fingerprint data. Hsu discloses storing “fingerprint image[s]”
`captured from the same sensor…, which a POSITA would have understood as
`being of the same or similar size.”
`
`Ex. 1032, ¶ 51
`
`“Tsukamura also teaches “collat[ing] the fingerprint image data,” which are also
`expected to have a similar size for different individuals.”
`
`Ex. 1032, ¶ 51
`
`Petitioners’ Demonstratives, Not Evidence
`
`46
`
`Petitioners’ Expert
`Stuart Lipoff
`
`POR at 26; Ex. 1032, ¶ 51
`
`
`
`PO’s Expert admits that the ’039 Patent does not require a specific type of
`biometric signature
`
`“Q. Is there any mention in the ‘039 patent that you're aware of specifying the
`format in which a user's biometric signature data is to be stored?
`
`A. No…”
`
`Ex. 1031, 130:16-19
`
`Patent Owner’s Expert
`Samuel Russ
`
`“Q. Do you believe that the ‘039 patent is limited to the context of fingerprint
`data for the biometric data that's stored in memory?
`
`A. No.”
`
`Ex. 1031, 133:16-19
`
`Ex. 1031, 130:16-19, 133:16-19; Reply at 23
`
`Petitioners’ Demonstratives, Not Evidence
`
`47
`
`
`
`Hsu’s database is not more advantageous than Tsukamura’s array with respect to
`the ability to store variable-size records
`
`“[A] POSITA would have understood that, like Tsukamura, Hsu cannot store
`data entries of any size in its database either. For example, MySQL is one of
`the most common database technologies and is based on fixed-length records.
`As shown below, when creating a table in MYSQL, the data type and max
`length for each column needs to be specified.”
`
`Ex. 1032, ¶ 58
`
`Petitioners’ Expert
`Stuart Lipoff
`
`Ex. 1032, ¶ 58; Ex. 1039, p. 2 (annotated)
`
`Petitioners’ Demonstratives, Not Evidence
`
`48
`
`Ex. 1039, p. 2 (annotated)
`
`
`
`Tsukamura’s array has advantages over Hsu’s database
`
`Patent Owner
`
`“When user records are structured as a database,… [t]his… has the possible
`disadvantage of an extended search time, or at least a search time that grows larger as
`the file grows larger.”
`
`POR at 27
`
`“Tsukamura addresses this exact problem in Hsu… [W]hen storing/retrieving the
`fingerprint associated with a particular user, Tsukamura does not need to perform a
`database look-up like Hsu, but rather can write/read directly to/from the memory
`location defined by the index number, which is faster than writing/reading to/from Hsu’s
`database.”
`
`Ex. 1032, ¶ 60
`
`“[E]ven if some space in memory was unused due to variable sizes of fingerprint records,
`the increased speed of access of the implementation may well have outweighed a small
`amount of unused memory (such when memory is relatively cheap to purchase but the
`requirement for access speed is high).”
`
`Ex. 1032, ¶ 60
`
`Petitioners’ Demonstratives, Not Evidence
`
`49
`
`Petitioners’ Expert
`Stuart Lipoff
`
`POR at 27; Ex. 1032, ¶ 60; Reply at 24-25
`
`
`
`V. The Petition Is Not Time Barred
`
`IPR2022-01093, Reply to POPR; IPR2022-01093, Reply at 25-32; IPR2022-01094, Reply to POPR; IPR2022-01094, Reply at 23-31
`
`Petitioners’ Demonstratives, Not Evidence
`
`50
`
`
`
`The Petitions Were Not Filed At Apple’s Behest
`
`• Apple does not direct, control, fund, or contribute
`to these Petitions.
`
`• “Petitioners have not had any communications
`with Apple, directly or through counsel, regarding
`[the IPRs], other than…seeking Apple’s
`permission to produce documents...”
`Ex-1023, Petitioners ROG Responses
`
`Reply to POPR at 2-3; Reply at 25-26
`
`Petitioners’ Demonstratives, Not Evidence
`
`51
`
`
`
`Apple and Petitioners Have A Standard Business Relationship
`
`• Apple’s click-through application developer
`agreement has been accepted by 34 million
`Apple business partner
`
`• Apple does not direct, control, fund, or contribute
`to these Petitions
`
`Reply to POPR at 2-4; Reply at 26-27
`
`Petitioners’ Demonstratives, Not Evidence
`
`52
`
`
`
`Developer Agreement Does Not Support RPI
`
`• Developer Agreement merely requires
`representation and warranty “to the best of [the
`subscriber’s] knowledge and belief,” whether
`rights are clear for use
`
`• Does not require the subscriber to take any action
`
`• Subscriber is not required to make any legal
`review of allegedly infringing patents
`
`Reply to POPR at 5-8; Reply at 27-30
`
`Petitioners’ Demonstratives, Not Evidence
`
`53
`
`
`
`Sending Products for Compliance/Certification
`
`• CPC cites no authority that compliance testing
`makes Apple an RPI
`
`• App
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