UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner
`v.
`CARBYNE BIOMETRICS, LLC,
`Patent Owner
`
`_______________
`IPR2024-00329
`U.S. Patent No. 9,972,010
`_______________
`DECLARATION OF CREED JONES, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
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`APPL-1003
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` Declaration of Creed Jones, Ph.D.
` Inter Partes Review of U.S. Patent No. 9,972,010
`TABLE OF CONTENTS
`
`V.
`
`I.
`INTRODUCTION ........................................................................................... 1
`QUALIFICATIONS ........................................................................................ 6
`II.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`III.
`IV. RELEVANT LEGAL STANDARDS ........................................................... 11
`A.
`Anticipation .........................................................................................11
`B.
`Obviousness .........................................................................................12
`THE ’010 PATENT ....................................................................................... 13
`A.
`Summary of the ’010 patent ................................................................13
`B.
`Prosecution History .............................................................................15
`VI. CLAIM CONSTRUCTION .......................................................................... 16
`VII. GROUNDS .................................................................................................... 17
`A.
`Overview of Prior Art..........................................................................17
`1.
`Stone ..........................................................................................17
`2.
`Hoyos ........................................................................................18
`3.
`Varghese ....................................................................................21
`4.
`FFIEC Guidance .......................................................................22
`5.
`Analogous Art ...........................................................................26
`Ground 1: Claims 1-2, 4-6, 9-10, 12-14, 17, 20-21, and 23 are
`Rendered Obvious under §103(a) over Stone in view of Hoyos. .......27
`1.
`Combination of Embodiments of Stone ....................................27
`2.
`Combination of Stone and Hoyos (“Stone-Hoyos”) .................30
`3.
`Claim 1 ......................................................................................37
`4.
`Claim 2 ......................................................................................63
`5.
`Claim 4 ......................................................................................65
`6.
`Claim 5 ......................................................................................68
`7.
`Claim 6 ......................................................................................69
`8.
`Claim 9 ......................................................................................70
`
`B.
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`D.
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` Declaration of Creed Jones, Ph.D.
` Inter Partes Review of U.S. Patent No. 9,972,010
`9.
`Claim 10 ....................................................................................73
`10. Claim 12 ....................................................................................73
`11. Claim 13 ....................................................................................73
`12. Claim 14 ....................................................................................74
`13. Claim 17 ....................................................................................74
`14. Claim 20 ....................................................................................76
`15. Claim 21 ....................................................................................77
`16. Claim 23 ....................................................................................78
`Ground 2: Claims 7, 15, and 22 are Rendered Obvious under §103(a)
`over Stone in view of Hoyos and Varghese. .......................................82
`1.
`Combination of Stone, Hoyos, and Varghese (“Stone-Hoyos-
`Varghese”) ................................................................................82
`Claim 7 ......................................................................................88
`2.
`Claim 15 ....................................................................................93
`3.
`Claim 22 ....................................................................................94
`4.
`Ground 3: Claims 1-2, 4-7, 9-10, 12-15, 17, 20-23 are Rendered
`Obvious under §103(a) over Stone in view of FFIEC Guidance. .......95
`1.
`Combination of Stone and FFIEC Guidance (“Stone-
`Guidance”) ................................................................................95
`Claim 1 ......................................................................................97
`2.
`Claim 2 ....................................................................................106
`3.
`Claim 4 ....................................................................................106
`4.
`Claim 5 ....................................................................................106
`5.
`Claim 6 ....................................................................................107
`6.
`Claim 7 ....................................................................................107
`7.
`Claim 9 ....................................................................................109
`8.
`Claim 10 ..................................................................................111
`9.
`10. Claim 12 ..................................................................................111
`11. Claim 13 ..................................................................................111
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` Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`12. Claim 14 ..................................................................................111
`13. Claim 15 ..................................................................................112
`14. Claim 17 ..................................................................................112
`15. Claim 20 ..................................................................................114
`16. Claim 21 ..................................................................................115
`17. Claim 22 ..................................................................................116
`18. Claim 23 ..................................................................................116
`VIII. DECLARATION ......................................................................................... 120
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`INTRODUCTION
`I.
`
`1.
`
`I, Dr. Creed Jones, have been retained by counsel for Apple Inc.,
`
`(“Apple” or “Petitioner”) as a technical expert in connection with the proceeding
`
`identified above. I submit this declaration in support of Apple’s Petition for Inter
`
`Partes Review of U.S. Patent No. 9,972,010 (“the ’010 patent”).
`
`2.
`
`Compensation for my work in this matter is based on an hourly rate.
`
`In addition, reasonable and customary expenses associated with my work and
`
`testimony in this matter are reimbursed. This compensation is not contingent on
`
`the outcome of this matter, nor is it contingent on the specifics of my testimony. I
`
`have no personal or financial stake, nor any interest in the outcome of the present
`
`proceeding.
`
`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) APPL-1001, U.S. Patent No. 11,526,010 to Jakobsson (“’010
`
`patent”);
`
`(2) APPL-1002, Prosecution File History of U.S. App. No.
`
`13/875,245 (issued as U.S. Patent No. 9,972,010) (“’245 App”)
`
`(3) APPL-1005, Prosecution File History of U.S. Prov. App.
`
`61/332,140 (“’140 App”)
`
`(4) APPL-1006, Prosecution File History of U.S. App. No.
`
`13/099,981 (issued as U.S. Patent No. 8,458, 041) (“’981 App”)
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`(5) APPL-1008, U.S. Pub. No. 2010/0042535 to Stone (“Stone”)
`
`(6) APPL-1009, U.S. Patent No. 8,386,620 to Chatterjee
`
`(“Chatterjee”)
`
`(7) APPL-1010, U.S. Pub. No. 2006/0282660 to Varghese et al.
`
`(“Varghese”)
`
`(8) APPL-1011, U.S. Pub. No. 2009/0135188 to Ding et al.
`
`(“Ding”)
`
`(9) APPL-1012 U.S. Patent No. 8,355,530 to Park et al. (“Park”)
`
`(10)
`
` APPL-1013, U.S. Pub. No. 2010/0014720 to Hoyos et
`
`al. (“Hoyos”)
`
`(11)
`
` APPL-1014 , U.S. Pub. No. 2006/0158307 to Lee et al.
`
`(“Lee”)
`
`(12)
`
` APPL-1015, U.S. Patent No. 8,150,772 to Mardikar et
`
`al. (“Mardikar”)
`
`(13)
`
` APPL-1016, U.S. Pub. No. 2009/0157560 to Carter et al.
`
`(“Carter”)
`
`(14)
`
` APPL-1017, U.S. Patent No. 5,164,992 to Turk et al.
`
`(“Turk”)
`
`(15)
`
` APPL-1018, U.S. Patent No. 7,814,332 to Beenau et al.
`
`(“Beenau”)
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
` APPL-1019, U.S. Patent No. 10,373,173 to Winner et al.
`(16)
`
`(“Winner”)
`
`(17)
`
` APPL-1020, U.S. Patent No. 7,856,472 to Arav
`
`(“Arav”);
`
`(18)
`
`APPL-1023, U.S. Patent No. 7,779,268 to Draper et al.
`
`(“Draper”);
`
`(19)
`
` APPL-1024, U.S. Patent No. 5,930,804 to Yu et al.
`
`(“Yu”);
`
`(20)
`
`APPL-1033, J. P. Campbell, “Speaker recognition: a
`
`tutorial,” in Proceedings of the IEEE, vol. 85, no. 9, pp. 1437-
`
`1462, Sept. 1997 (“Campbell”)
`
`(21)
`
` APPL-1034, U.S. App. Pub. No. 2009/0288012A1 to
`
`Hertel et al. (“Hertel”)
`
`(22)
`
` APPL-1035 , U.S. Patent No. 8,533,485 to Bansal et al.
`
`(“Bansal”)
`
`(23)
`
`APPL-1036, U.S. App. Pub. No. 2006/0271460A1 to
`
`Hanif (“Hanif”)
`
`(24)
`
`APPL-1037, Federal Financial Institutions Examination
`
`Council, FFIEC Press Release and FFIEC Guidance -
`
`Authentication in an Internet Banking Environment, Oct 12,
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`2005 (“Guidance”)
`
`(25)
`
`APPL-1038, Bhargav-Spantzel et al., “Privacy
`
`Preserving Multifactor Authentication with Biometrics,”
`
`DIM’06, November 3, 2006 (“Bhargav-Spantzel”);
`
`(26)
`
`APPL-1039, FDIC Financial Institution Letter, FFIEC
`
`Guidance Authentication in an Internet Banking Environment,
`
`FIL-103-2005, October 12, 2005 (“FIL-103-2005” or “FDIC
`
`financial institution letter”)
`
`(27)
`
`APPL-1040, Federal Financial Institutions Examination
`
`Council, FFIEC Guidance Press Release, Oct 12, 2005 (“FFIEC
`
`Guidance Press Release”)
`
`(28)
`
`APPL-1041, U.S. App. Pub. No. 2010/0317335A1 to
`
`Borovsky (“Borovsky”);
`
`(29)
`
`APPL-1042, Ekler et al., “Similarity Management in
`
`Phonebook-Centric Social Networks,” 2009 Fourth
`
`International Conference on Internet and Web Applications and
`
`Services, Venice/Mestre, Italy, 2009, pp. 273-279 (“Ekler”)
`
`(30)
`
`APPL-1043, U.S. Patent No. 8,954,500 to Marlow et al.
`
`(“Marlow”)
`
`(31)
`
`APPL-1044, Kollreider et al., “Verifying liveness by
`
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`multiple experts in face biometrics,” 2008 IEEE Computer
`
`Society Conference on Computer Vision and Pattern
`
`Recognition Workshops, Anchorage, AK, USA, 2008, pp. 1-6,
`
`doi: 10.1109/CVPRW.2008.4563115 (“Kollreider”)
`
`(32)
`
`APPL-1045, Narayanan et al., “De-anonymizing Social
`
`Networks,” 2009 30th IEEE Symposium on Security and
`
`Privacy, 2009 (“Narayanan”)
`
`(33)
`
`APPL-1046, U.S. App. Pub. No. US2008/0270038A1 to
`
`Partovi et al. (“Partovi”)
`
`(34)
`
`APPL-1047, Vasalou et al., “Avatars in social media:
`
`Balancing accuracy, playfulness and embodied messages,”
`
`International Journal of Human-Computer Studies Volume 66,
`
`Issue 11, November 2008, Pages 801-811 (“Vasalou”).
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above;
`
`(2) Any additional documents discussed below; and
`
`(3) My own knowledge and experience based upon my work in the
`
`fields of security solutions, including biometric authentication
`
`technologies as described below.
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`II. QUALIFICATIONS
`
`5. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae, which is attached as APPL-1004.
`
`6.
`
`I have a Ph.D. degree in Computer Engineering from Virginia
`
`Polytechnic Institute and State University (“Virginia Tech”). I also have a M.S.
`
`degree in Electrical and Computer Engineering and a B.S. degree in Electrical
`
`Engineering from Oakland University.
`
`7.
`
`I am currently a Collegiate Professor in the Electrical and Computer
`
`Engineering department of the College of Engineering at Virginia Tech.
`
`Previously, I was a Professor of Computer Science at California Baptist University,
`
`and at Seattle Pacific University.
`
`8.
`
`For more than 25 years, I have studied, designed, and worked in the
`
`field of image processing, biometric identification, computer science, and software
`
`development. My experience includes numerous years of teaching and research,
`
`with research interests including image processing, computer vision and machine
`
`learning.
`
`9.
`
`I have been active in the field of image processing since 1983, and I
`
`have extensive experience in the development of image processing algorithms and
`
`software. I hold seven US patents in image processing systems and methods. My
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`areas of expertise have included multi-spectral and hyperspectral imagery,
`
`automated inspection, optical character recognition, image formation and capture,
`
`and biometric feature extraction and matching.
`
`10.
`
`I have been a developer of image processing software for over 30
`
`years. I have implemented image processing solutions in C, C++, Java, Python,
`
`MATLAB and assembly programming languages, using a large number of
`
`platforms and environments including OpenCV, ImageJ, CImg, NIH Image, SciPy,
`
`and several proprietary packages. I have also managed groups of image processing
`
`software developers in several organizations.
`
`11.
`
`I am a co-founder and the Chief Technology Officer of Globe
`
`Biomedical, a medical device start-up company located in Riverside, CA. Globe
`
`was founded to commercialize patented technology that uses imaging to monitor
`
`the progress of eye diseases, including glaucoma. This technology was invented by
`
`me and a colleague at California Baptist University.
`
`12.
`
`I received my Bachelor of Science degree in Electrical Engineering
`
`from Oakland University in 1980, my Master of Science degree in Computer and
`
`Electrical Engineering from Oakland University in 1982, and my Doctor of
`
`Philosophy degree in Computer Engineering from the Virginia Polytechnic
`
`Institute and State University in 2005. My doctoral research and dissertation were
`
`in the area of biometric identification. Specifically, my dissertation is titled “Color
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`Face Recognition using Quaternionic Gabor Wavelets”, and comprises the
`
`development of one of the first full-color face recognition algorithms and methods.
`
`13.
`
`In biometrics, I have served as an algorithm developer, systems
`
`engineer, standards developer and independent consultant. While on the staff of
`
`Sagem Morpho, I had responsibility for research and strategy in the areas of
`
`fingerprint capture systems and methods. I have experience in several image-based
`
`biometric modalities: fingerprint, face, iris, vein pattern and hand geometry. My
`
`doctoral dissertation, Color Face Recognition using Quaternionic Gabor Filters,
`
`was the first description of a full-color face recognition algorithm using robust
`
`modern concepts and included both theoretical groundwork and a complete
`
`implementation in C++.
`
`14. The ANSI-accredited body for the development of US National
`
`standards in Information Technology is INCITS, the International Committee for
`
`Information Technology Standards. From 2001 to 2006 I was the chair of the
`
`INCITS M1.3 subcommittee on standardization of biometric data interchange
`
`formats, as well as a key participant in its parent body, INCITS M1. During this
`
`time, I was also the technical editor of INCITS 378, Finger Minutia Format for
`
`Data Interchange, the most widely adopted standard for exchange of biometric
`
`feature data. I was also a key contributor to INCITS 381 - Fingerprint Image Data
`
`Format, INCITS 385 – Face Recognition Data Format, INCITS, and the BioAPI
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`standard.
`
`15.
`
`In the international arena, biometrics standards are developed under
`
`ISO/IEC Joint Technical Committee 1, Subcommittee 37. I was a frequent
`
`member of the US delegation to JTC1 SC37, and to its Working Group 3 on
`
`biometric data standards. I was the chief technical editor of ISO/IEC 19794,
`
`fingerprint minutiae data format, and contributed to many other international
`
`standards such as ISO/IEC 29794 – biometric sample quality.
`
`16.
`
`I have been and am currently a member of several professional
`
`organizations and committees. I am a Senior Member of the Institute of Electrical
`
`and Electronics Engineers (IEEE) and of the Association for Research in Vision
`
`and Ophthalmology (ARVO). Previously, I have been a member of the
`
`ANSI/INCITS M1 Committee for biometrics standards, chair of ANSI/INCITS
`
`M1.3 Task Group on Biometric Data Interchange Formats - chair (2001 – 2006),
`
`chair of ANSI/INCITS B10.9 Task Group on biometrics (2001), technical editor of
`
`ANSI/INCITS B10.8 biometric task force (1999 - 2001), and a member of the
`
`BioAPI Industry Consortium (1999 – 2001).
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`17.
`
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a Person of Ordinary Skill in The Art (“POSITA”) to
`
`which the claimed subject matter pertains would have the capability of
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`understanding the scientific and engineering principles applicable to the pertinent
`
`art. I understand that a POSITA has ordinary creativity, and is not an automaton.
`
`18.
`
`I understand that there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`19.
`
`I have been informed by counsel that the earliest claimed priority date
`
`for the ’010 patent is May 6, 2010, although any given claim of the ’010 patent
`
`may or may not be entitled to the earliest claimed priority date. I am familiar with
`
`the biometric authentication technology pertinent to the ’010 patent. I am also
`
`aware of the state of the art at the time of the earliest claimed priority date.
`
`20. Based on the technologies disclosed in the ’010 patent, I believe that a
`
`POSITA would include someone who had, as of the claimed priority date of the
`
`’010 patent, a bachelor’s degree in electrical engineering, computer engineering,
`
`computer science, or a related field, and at least two years of experience in the
`
`research, design, development, and/or testing of biometric authentication
`
`techniques, and related firmware and software, or the equivalent, with additional
`
`education substituting for experience and vice versa. In addition, I recognize that
`
`someone with less formal education but more experience, or more formal
`
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`education but less experience could have also met the relevant standard for a
`
`POSITA. I believe that I am at least a POSITA and, furthermore, I have
`
`supervised students and engineers who were also POSITAs. Accordingly, I
`
`believe that I am qualified to opine from the perspective of a POSITA regarding
`
`the ’010 patent.
`
`21. For purposes of this Declaration, unless otherwise noted, my opinions
`
`and statements, such as those regarding the understanding of a POSITA (and
`
`specifically related to the references I consulted herein), reflect the knowledge that
`
`existed in the art before the earliest claimed priority date of the ’010 patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`22.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`12 (the “Challenged Claims”) of the ’010 patent would have been obvious to a
`
`POSITA at the time of the alleged invention in light of the prior art.
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’010 patent, I am relying on certain legal
`
`principles explained to me by counsel.
`
`24.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`25.
`
`I have been informed by counsel that a patent claim is unpatentable as
`
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`Declaration of Creed Jones, Ph.D.
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`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`
`26.
`
`I have been informed and I understand that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious to a POSITA at the time the invention was made. I
`
`understand that the appropriate analysis for determining obviousness of a claimed
`
`invention takes into account factual inquiries, including the level of ordinary skill
`
`in the art, the scope and content of the prior art, and the differences between the
`
`prior art and the claimed subject matter as a whole.
`
`27.
`
`I have been informed and I understand that the United States Supreme
`
`Court has recognized several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include the following: (a) combining prior art elements according to known
`
`methods to yield predictable results; (b) simple substitution of one known element
`
`for another to obtain predictable results; (c) use of a known technique to improve a
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`similar device (method, or product) in the same way; (d) applying a known
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (e) choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; and (f) some teaching,
`
`suggestion, or motivation in the prior art that would have led a POSITA to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention. I have also been informed and I understand that a
`
`demonstration of obviousness does not require a physical combination or bodily
`
`incorporation, but rather may be found based on consideration of what the
`
`combined teachings would have suggested to a POSITA at the time of the alleged
`
`invention.
`
`V. THE ’010 PATENT
`
`Summary of the ’010 patent
`
`A.
`28. The ’010 patent is directed at electronic transactions, and specifically
`
`electronic financial transaction systems. APPL-1001, Abstract, Background of the
`
`Invention. Specifically, the ’010 patent describes techniques for reducing fraud for
`
`financial transaction applications, including displaying a source icon that includes
`
`a graphical representation of an owner of the account, and “at least one of a
`
`photograph, a voice print, and location data will be taken prior to executing the
`
`transaction request” for fraud detection. APPL-1001, Abstract.
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`29. As shown in FIG. 7 below, the ’010 patent describes that its improved
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`techniques to prevent fraud include using an audio sample (by selecting box 704)
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`or one or more photographs (by selecting box 702) for authentication.
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`APPL-1001, FIG. 7
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`30. Specifically, the ’010 patent describes that when box 702 is selected,
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`“an analysis of the photograph is performed as part of the transaction,” and
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`techniques “for confirming that the object being photographed is alive (e.g., by
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`taking multiple photographs in rapid succession) can be employed to help make
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`sure that the fraudster isn’t using camera 112 to photograph a printed picture of the
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`legitimate user.” APPL-1001, 8:54-60.
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`31. However, as discussed below, these supposedly improved techniques
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`for fraud detection in electronic transactions using biometric authentication (e.g.,
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`by determining that the user is alive based at least in part on the captured biometric
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`information) were well-known at the time of the claimed invention.
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`Prosecution History
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`B.
`32. On May 1, 2013, the Office rejected claims 1-10 based on statutory
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`double patenting over U.S. Patent No. 8,458,041 and under section 101. Claims
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`were rejected under section 103 over Gaw (US 7,930,220), Fujioka (US
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`2009/0288015), Reference U in PTO-892 (“Art Explosion, Nova Development
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`2002”), Mixon (US 2005/0049981), Smithies (US 6,091,835). APPL-1002, ’245
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`App, 79-85.
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`33.
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`In response, Applicant filed terminal disclaimer to overcome the
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`double patenting rejection and amended claims in response to the 103 rejections.
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`APPL-1002, ’245 App, 126. Applicant also amended claims to address the
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`rejections.
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`34. After multiple rejections under 101 and 103 (under Gaw, Fujioka,
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`Bishop (US 2005/0187883), Reference U, Mixon, and/or Smithies), Requests for
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`Continued Examination (RCEs), and responses by Applicant with amendments
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`amending the claims, on March 27, 2018, Notice of Allowance issued, with
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`Examiner Amendment including “wherein performing the fraud detection analysis
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`comprises determining, based at least in part on the captured biometric
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`information, that the user is alive.” APPL-1002, 441-442.
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`35. As I discuss below in more detail, the system presented in the ’010
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`patent was well known to persons of ordinary skill in the art before the earliest
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`claimed priority date of the ’010 patent.
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`VI. CLAIM CONSTRUCTION
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`36.
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`It is my understanding that in order to properly evaluate the ’010
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`patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be construed under
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`the so-called Phillips standard, under which claim terms are given their ordinary
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`and customary meaning as would have been understood by one of ordinary skill in
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`the art in light of the specification and prosecution history, unless the inventor has
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`set forth a special meaning for a term. I have also been informed that claim terms
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`only need to be construed to the extent necessary to resolve the obviousness
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`inquiry.
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`37.
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`I have reviewed the entirety of the ’010 patent, as well as its
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`prosecution history. It is my opinion that for purposes of applying the prior art
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`presented herein to evaluate the patentability of the claims no term requires express
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`construction. Accordingly, I have analyzed the claims consistent with their
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`ordinary and customary meaning as would have been understood by a POSITA.
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`VII. GROUNDS
`
`A. Overview of Prior Art
`1. Stone
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`38. Stone is titled “Currency Display,” and assigned to eBay on its face.
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`Stone is analogous art to the ’010 patent, because like the ’010 patent, Stone is
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`directed to electronic transactions, and specifically, financial transaction
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`applications. (Stone) APPL-1008, [0001]-[0005].
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`39. As shown in FIG. 2 of Stone below, Stone describes a system for
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`electronic payment with improved electronic visual displays to provide the user
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`with “a more visually rich interface,” (Stone) APPL-1008, [0016]), e.g., by
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`providing visual representations of financial instruments and the amount, which
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`reinforces the value of the amount to the user visually, and a visual representation
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`when the monetary amount is transferred. See also (Stone) APPL-1008, FIGs. 1
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`and 3.
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
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`
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`(Stone) APPL-1008, FIG. 2
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`2. Hoyos
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`
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`40. Hoyos is titled “Fraud Resistant Biometric Financial Transaction
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`System and Method.” Hoyos is analogous art to the ’010 patent, because like the
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`’010 patent, it is directed at electronic transactions, and specifically, fraud
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`detection for financial transaction systems. (Hoyos) APPL-1013, Abstract, [0002]
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`(“This invention relates to biometric identification and authentication systems and
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`methods, more particularly to authentication for financial transactions using
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`biometrics.”).
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`41. Hoyos identifies that “in the field of authentication of financial
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`transactions, high levels of accuracy and speed are critical.” (Hoyos) APPL-1013,
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`[0009]. Furthermore, Hoyos identifies that one problem faced by biometric
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`recognition systems is “the possibility of spoofing,” e.g., “a life-sized, high-
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`resolution photograph of a person may be presented to an iris recognition system.”
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`(Hoyos) APPL-1013, [0011]. To address these issues, as illustrated in FIG. 1 of
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`Hoyos below, Hoyos describes an authentication method that has high levels of
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`accuracy, speed, and protection against spoofing.
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`(Hoyos) APPL-1013, FIG. 1
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`
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`42. As shown in FIG. 1 of Hoyos above, Hoyos describes a method of
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`authenticating financial transactions with fraud detection, which includes
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`“acquiring biometric data from a person, calculating probability of liveness, Pp, of
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`Declaration of Creed Jones, Ph.D.
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` Inter Partes Review of U.S. Patent No. 9,972,010
`the person and probability of a match, Pm, between the person and k