Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`)
`)
`)
`)
`) Case No. 6:21-cv-00165-ADA
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`) JURY TRIAL DEMANDED
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`)
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`CPC PATENT TECHNOLOGIES PTY LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`PLAINTIFF CPC PATENT TECHNOLOGIES PTY LTD.’S
`RESPONSE TO DEFENDANT APPLE INC.’S CLAIM CONSTRUCTION BRIEF
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`

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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 2 of 24
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION .................................................................................................................. 1
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`II. ARGUMENT .......................................................................................................................... 1
`
`A.
`
`B.
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`ʼ039 Patent .............................................................................................................................. 1
`1.
`“biometric card pointer system”/“biometric card pointer enrolment system” ................ 1
`2.
`“means for defining, dependent upon the received card information, a memory location
`in a local memory external to the card” .................................................................................. 4
`3.
`“means for determining if the defined memory location is unoccupied” ....................... 8
`4.
`“means for storing, if the memory location is unoccupied, the biometric signature at
`the defined memory location” ................................................................................................. 8
`
`ʼ208 and ʼ705 Patents.............................................................................................................. 9
`1.
`“being characterized according to/determining/determine at least one of the number of
`said entries and a duration of each said entry” ....................................................................... 9
`2.
`“Biometric signal” ........................................................................................................ 10
`3.
`“Biometric signature” ................................................................................................... 11
`4.
`“Accessibility attribute” ................................................................................................ 13
`5.
`“Collocated” .................................................................................................................. 15
`6.
`“Means” Limitations ..................................................................................................... 16
`7. Remaining “Means” Limitations .................................................................................. 18
`
`III. CONCLUSION ..................................................................................................................... 19
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`
`
`ii
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 3 of 24
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
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`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015)............................................................................................4, 17
`
`Budde v. Harley-Davidson, Inc.,
`250 F.3d 1369 (Fed. Cir. 2001)................................................................................................13
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002)..................................................................................................1
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008)............................................................................................2, 11
`
`Int'l Visual Corp. v. Crown Metal Co.,
`991 F.2d 768 (Fed.Cir.1993)......................................................................................................9
`
`Intamin Ltd. v. Magnetar Techs., Corp.,
`483 F.3d 1328 (Fed. Cir. 2007)................................................................................................14
`
`Liebel-Flarsheim v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004)....................................................................................................2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................................1, 9, 11
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)..................................................................................................2
`
`Sony Corp. v. Iancu,
`924 F.3d 1235 (Fed. Cir. 2019)............................................................................................4, 15
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)..................................................................................................2
`
`TomTom, Inc. v. Adolph,
`790 F.3d 1315 (Fed. Cir. 2015)..................................................................................................3
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................1
`
`Statutes
`
`35 U.S.C. § 112 ..........................................................................................................................7, 15
`
`
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`
`
`iii
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 4 of 24
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`Plaintiff CPC Patent Technologies Pty Ltd. (“CPC”) asserts three patents (“the Asserted
`
`Patents”)1 in this case against Apple Inc. (“Apple”). The parties dispute the following terms.
`
`I.
`
`INTRODUCTION
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`Consistent across the terms to be construed is the absence in the Asserted Patents of any
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`specialized definitions therefor. Accordingly, CPC urges that such terms be afforded their plain
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`and ordinary meanings per governing precedent. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303
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`(Fed. Cir. 2005) (en banc). Apple ignores that precedent more than once, and violates a variety of
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`other canons of claim construction in offering definitions that are not supported by the evidence
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`intrinsic to the subject patents. As set forth herein, CPC’s constructions of the disputed limitations
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`are the correct ones, and those proposed by Apple should be rejected.
`
`II.
`
`A.
`
`ARGUMENT
`
`ʼ039 Patent
`1.
`
`“biometric card pointer system”/“biometric card pointer enrolment
`system”
`
`CPC proposes that these “system” limitations from the preambles of the various
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`independent claims of the ʼ039 Patent be afforded their plain and ordinary meaning, as the
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`specification of such patent does not clearly ascribe a specialized meaning to that term. The words
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`of a claim are generally given their ordinary and customary meaning as understood by a person of
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`ordinary skill in the art when read in the context of the specification and prosecution
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`history. See Phillips, 415 F.3d at 1313. There are only two exceptions to this general rule: 1)
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`when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee
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`
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`1 The Asserted Patents are U.S. Patent Nos. 8,620,039 (“the ʼ039 Patent”), 9,269,208 (“the ʼ208
`Patent”), and 9,665,705 (“the ʼ705 Patent”).
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`1
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`disavows the full scope of a claim term either in the specification or during prosecution. Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996).
`
`To act as a lexicographer, a patentee must “clearly set forth a definition of the disputed
`
`claim term” other than its plain and ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288
`
`F.3d 1359, 1366 (Fed. Cir. 2002). Disavowal of claim scope occurs “[w]here the specification
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`makes clear that the invention does not include a particular feature, that feature is deemed to be
`
`outside the reach of the claims of the patent, even though the language of the claims, read without
`
`reference to the specification, might be considered broad enough to encompass the feature in
`
`question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
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`(Fed. Cir. 2001). “The patentee may demonstrate intent to deviate from the ordinary and
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`accustomed meaning of a claim term by including in the specification expressions of manifest
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`exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex, Inc. v. Ficosa N.
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`Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002).
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`Apple does not point to any actual instance of lexicography for these limitations, pointing
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`rather to the patentee’s “clear and concise description of the ‘biometric pointer card system.’”
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`Apple Br. at 8 (emphasis added). However, it is not enough for a patentee to simply disclose a
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`single embodiment or use a word in the same manner in all embodiments - the patentee must
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`“clearly express an intent” to redefine the term. Helmsderfer v. Bobrick Washroom Equip.,
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`Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008). And, in any event, embodiments from the specification
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`are not to be read into a claim as limitations. Liebel-Flarsheim v. Medrad, Inc., 358 F.3d 898, 913
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`(Fed. Cir. 2004). Apple attempts to violate this prohibition by seeking to have a specification
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`“description” read into the subject claims.
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`2
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`

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`Apple otherwise maintains that these limitations are “coined” terms having “no meaning
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`outside the context of the patent. See Apple Br. at 7. However, Apple acknowledges that “[t]he
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`biometric card pointer (‘BCP’) system is exactly as it sounds—it uses card data to point to a
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`memory location where biometric data of the card user is stored,” i.e., the term has a plain and
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`ordinary meaning, See id. at 2. Yet, this is not the construction that Apple proposed.
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`Separately, Apple’s construction is contrary to the express language of the claim in its
`
`entirety insofar as it requires “a card or key fob.” See Apple Br. at 6. By way of example, claim
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`13 of the ʼ039 Patent, read in its entirety, sets forth the components of the “biometric card pointer
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`enrolment [sic] system,” which include:
`
`a card device reader for receiving card information;
`
` a
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` biometric reader for receiving the biometric signature;
`
`
`means for defining, dependent upon the received card information, a memory location in
`a local memory external to the card;
`
`means for determining if the defined memory location is unoccupied;
`
`and means for storing, if the memory location is unoccupied, the biometric signature at the
`defined memory location.
`
`
`ʼ039 Patent, col. 13, line 67 – col. 14, line 9 (emphasis added).
`
`While the claimed “system” must be capable of interacting with a biometric card, according
`
`to the plain language of the entire claim, the biometric card is not actually part of that system. This
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`claim language is analogous to that in TomTom, Inc. v. Adolph, 790 F.3d 1315 (Fed. Cir. 2015).
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`The asserted independent claim in that case was directed to “[a] method for generating and
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`updating data for use in a destination tracking system of at least one mobile unit.” Id. at 1318.
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`As the Federal Circuit found that claim:
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`[I]s directed to a method for generating and updating travel-related data and does not
`require the data to be used later as the district court found. It requires only that the data be
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`3
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`generated, selected, stored, and continuously updated. All of these steps are performed
`within the body of claim 1. Though the collected data could at some point be used in the
`context of a navigation system, this is not required of claim 1, and does not convert it
`into a claim limitation.
`
`
`Id. at 1324 (emphasis added).
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`Similarly, while a biometric card may send information that is received and utilized by the
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`claimed “system,” the biometric card is not required by the claims, per se, and therefore cannot be
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`converted into a claim limitation. As such, any construction of the “system” limitations that
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`requires an iteration of a biometric card, e.g., “a card or key fob” as proposed by Apple,
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`contravenes the plain language of the claims, and should be rejected.
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`2.
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`“means for defining, dependent upon the received card information, a
`memory location in a local memory external to the card”
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`As Apple notes, the parties agree as to the function of this means plus function limitation
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`(appearing in only claim 13) – “defining, dependent upon the received card information, a memory
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`location in a local memory external to the card.” Apple Br. at 11. However, while CPC identifies
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`as the corresponding structure “a computer system with a processor executing a biometric card
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`pointer (BCP) application stored in memory,” Apple claims that the limitation is indefinite as there
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`is no corresponding structure disclosed. See id.
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`Apple cannot satisfy its burden of proving claim indefiniteness by clear and convincing
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`evidence. Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1381 (Fed. Cir. 2015). The
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`ʼ039 Patent teaches that “[t]ypically, the BCP application program is resident on the hard disk
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`drive 110 and read and controlled in its execution by the processor 105 . . . In one example of the
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`disclosed BCP approach, the card data 604 acts as the memory reference which points, as depicted
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`by an arrow 608, to a particular memory location at an address 607 in the local database 124.”
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`ʼ039 Patent, col. 7, line 66 – col. 7, line 1 & col. 7, lines 31-34. Despite this teaching, Apple argues
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`4
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 8 of 24
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`that “[t]he patent provides nothing—no specialized hardware and no algorithm for execution on a
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`general-purpose processor—that performs the function.” Apple Br. at 12.
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`While an algorithm is required for these computer-implemented limitation, the requisite
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`algorithm can be shown in a figure flowchart linked to the computerized function by the
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`specification. See Sony Corp. v. Iancu, 924 F.3d 1235, 1240 (Fed. Cir. 2019) (the subject “patent
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`specification clearly links the function of the ‘reproducing means’ to the algorithm flowchart of
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`Figure 16”). The afore-quoted passage references elements of the flow chart depicted in Figure 4
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`of the ʼ039 Patent, reproduced below:
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`5
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 9 of 24
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`Apple further acknowledges that:
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`
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`The ʼ039 patent discloses a ‘verification station 127’ in Figure 3 that it describes as a ‘a
`special-purpose computer system upon which described methods for the BCP
`arrangements can be practiced.’ ʼ039 Patent at 5:48-50. This verification station includes
`multiple components, such as ‘a biometric card pointer reader,’ which includes ‘a biometric
`reader 102, a card device reader 112, and a local database 124.’
`
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`Apple Br. at 13.
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`6
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 10 of 24
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`Apple then claims that “CPC does not point to this verification station 127.” Id. However,
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`one of the “multiple components” of the “special-purpose computer system” in Figure 3 is the
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`local database 124, also shown in Figure 4:
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`In any event, at the very least, by Apple’s own admission, the ʼ039 Patent teaches a
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`“special-purpose computer system” for performing the claimed function “defining, dependent
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`upon the received card information, a memory location in a local memory external to the card.”
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`See Apple Br. at 13. This hardly constitutes clear and convincing evidence of claim indefiniteness.
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`
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`7
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`3.
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`“means for determining if the defined memory location is unoccupied”
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`The parties agree on the claimed function associated with this limitation – “determining if
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`the defined memory location is unoccupied.” Apple Br. at 14. CPC is willing to accept the
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`corresponding structure identified by Apple, i.e., “processor unit 105 running software process(es)
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`206.” See id. Pursuant to the controlling version of section 112, the literal scope of this limitation
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`would also include equivalents of such structure. 35 U.S.C. § 112.
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`4.
`
` “means for storing, if the memory location is unoccupied, the
`biometric signature at the defined memory location”
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`The parties agree on the function of this limitation as well – “storing, if the memory
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`location is unoccupied, the biometric signature at the defined memory location.” Apple Br. at 15.
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`And again, the dispute between the parties is the disclosed structure for performing that function.
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`CPC points to, inter alia, the ʼ039 Patent’s teachings of:
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`[A] computer program product including a computer readable medium having recorded
`thereon a computer program for directing a processor to execute a method of enrolling in
`a biometric card pointer system, the program comprising:
`
`
`* * *
`
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`code for storing, if a memory location defined by the card information is unoccupied, the
`biometric signature at the defined memory location.
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`ʼ039 Patent, col. 5, lines 14-18 & 21-23 (emphasis added).
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`Apple, in contrast, proposes limiting the corresponding structure for this limitation to
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`“processor unit 105 running software process(es) 401 and storage device 109.” Apple Br. at 15
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`(emphasis added). There is, however, no teaching in the specification of the ‘309 Patent that the
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`biometric signature is stored in storage device 109. Rather, in addition to the afore-quoted passage
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`from the ʼ039 Patent, the specification teaches that “step 401 stores the biometric signature
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`received by the step 203 in the memory 124,” depicted above in Figures 3 and 4. See ʼ039 Patent,
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`8
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 12 of 24
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`col. 9, lines 64-65 (emphasis added). In other words, Apple’s proposed construction of this
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`“means” limitation is untethered to the structure taught in the ʼ039 Patent, and should be rejected.
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`B.
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`ʼ208 and ʼ705 Patents
`1.
`
`“being characterized according to/determining/determine at least one
`of the number of said entries and a duration of each said entry”
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`Both parties propose that these limitations be ascribed their plain and ordinary meaning,
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`but Apple goes on to define that meaning, using verbiage that is unrelated to the plain and ordinary
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`meaning of these limitations. This extra verbiage is “identifying and storing data of the biometric
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`signal that includes both of (1) at least one of the number of said entries and (2) a duration of each
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`said entry.” Apple Br. at 17. Neither “identifying” nor “storing” is implicated in the plain language
`
`of these limitations. Further, Apple reads “both” into the claims. Reading “both” into the claims
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`is inconsistent with the plain and ordinary meaning of the claims, as well as with the express
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`teachings of the specifications.
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`In all of the subject limitations, “said entries” refers back to “a series of entries of the
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`biometric signal.” See ʼ208 Patent, claims 1, 9 & 10; ʼ705 Patent, claims 1, 10, 11, 14, 15, 16 &
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`17 (emphasis added). Separately, the subject claims call for “populating” a database of “biometric
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`signature.” See id. (emphasis added). Apple recognizes that “biometric signature” and “biometric
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`signal” are two different things, as is evident from its proposed constructions therefor. See Apple
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`Br. at 21 & 23. Nonetheless, Apple’s proposed construction conflates the two. The express claim
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`requirement involves storing the former (biometric signature), yet Apple improperly reads a
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`requirement to store the latter (biometric signal) into the claims. Apple Br. at 18.
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`Turning to the second part of Apple’s construction – the biometric signal including “both
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`of (1) at least one of the number of said entries and (2) a duration of each said entry” – Apple relies
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`upon an embodiment description from the specification. Apple Br. at 20. Apart from an improper
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`9
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 13 of 24
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`attempt to read the embodiment into the claim, Apple’s proposed construction ignores the
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`specification teaching that “the control information is encoded by either or both (a) the number of
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`finger presses and (b) the relative duration of the finger presses.” ʼ208 Patent, col. 10, lines 50-
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`52; ʼ705 Patent, col. 10, lines 61-63 (emphasis added). Ironically, Apple, after relying upon
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`unclaimed embodiments from the specifications to support its constructions, protests that this
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`“either or both” passage “is not claimed.” Apple Br. at 20. This, of course, is only true if Apple’s
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`construction (requiring “both”) is adopted, which puts the claim construction cart before the
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`specification horse. Put another way, Apple’s construction ignores the admonition that the
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`specification is “single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315.
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`Apple also invokes the prior art that taught “using a single fingerprint for biometric
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`security.” Apple Br. at 20 (citation omitted) (emphasis added). The distinction over this “single
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`fingerprint” prior art comes in the form of the claim requirement that there be a “series of entries
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`of the biometric signal,” as opposed to a single such entry. See ʼ208 Patent, claims 1, 9 & 10; ʼ705
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`Patent, claims 1, 10, 11, 14, 15, 16 & 17. Apple’s “both” construction is unnecessary for such
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`distinction.
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`Finally, Apple points to a supposed commercial embodiment of the claimed invention that
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`somehow impacts the proper construction of the claims. Apple Br. at 19. Such an embodiment is
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`irrelevant to claim construction. See Int'l Visual Corp. v. Crown Metal Co., 991 F.2d 768, 771–
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`72 (Fed.Cir.1993) (reversing claim construction based on patentee’s commercial embodiment).
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`That Apple resorts to such comparison belies the strength of its claim construction position for this
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`limitation.
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`2.
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`“Biometric signal”
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`
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`CPC is willing to agree to Apple’s construction, i.e., “physical attribute of the user (i.e.,
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`fingerprint, facial pattern, iris, retina, voice, etc.).” Apple Br. at 21.
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`10
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 14 of 24
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`3.
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`“Biometric signature”
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`CPC proposes the plain and ordinary meaning of this term as there is neither the requisite
`
`lexicography nor disavowal relevant thereto justifying any other construction, and, unsurprisingly,
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`Apple points to none. See Apple Br. at 23-26. Apple once again urges a construction other than
`
`the plain and ordinary meaning of this term – “biometric signal(s) together with data containing at
`
`least one of the number of said entries and a duration of each said entry.” See id. at 23. The
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`express language of the subject claims makes clear that the biometric signatures are in a
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`“database,” i.e., they are stored. ʼ208 Patent, claims 1, 9 & 10; ʼ705 Patent, claims 1, 10, 11, 14,
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`15, 16 & 17. In contrast, the “biometric signal,” once received, is “match[ed]” against the
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`biometric signatures in the database. See id.
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`However, Apple’s proposed construction effectively conflates “biometric signal” and
`
`“biometric signature,” which, in turn, means that the former is stored, as the claims require that
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`the biometric signature is stored in a database. However, as discussed above in section VI(B)(1),
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`nothing in the claims require storage of the biometric signal, whether as part of a biometric
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`signature or otherwise.
`
`As for “storing data containing at least one of the number of said entries and a duration of
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`each said entry,” also part of Apple’s proposed construction, Apple points to “the example of
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`enrolling an ‘ordinary user’ with a pattern of finger presses represented as ‘dit, dit, dit, dah where
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`“dit” is a finger press of one second’s duration…and “dah” is a finger press of two second’s
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`duration.’” Apple Br. at 24 (emphasis added). Apple also cites to the specification teaching that
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`“[a]ll signatures stored in the database are tagged as belonging to one or more of the classes of
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`administrator, ordinary user, and duress users.” Id. This passage pertains to Figure 8, which
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`“shows a process 800 for implementing various enrolment procedures.” ʼ705 Patent, col. 12, lines
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`54-55; ʼ208 Patent, col. 12, lines 39-40. Both of these passages make clear that the subject
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`11
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 15 of 24
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`embodiments are not claim-limiting, as they are mere examples, and do nor “clearly express an
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`intent” to redefine the term. Helmsderfer, 527 F.3d at 1381. It would be improper, then, to limit
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`the term “biometric signature” in the manner proposed by Apple.
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`The passage cited by Apple regarding Figure 7 fares no better in supporting Apple’s
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`proposed construction. See Apple Br. at 25. That passage deals with the determination of whether
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`“the received signal falls into the ‘duress’ category.” See id., citing ʼ208 Patent, col. 11, lines 32-
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`33. There are narrower claims directed to whether a received signal indicates “duress.” For
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`example, claim 5 of the ʼ705 Patent, which depends from claim 1, further claims that the:
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`[C]onditional access comprises one of:
`provision of access to the controlled item if the accessibility attribute comprises an access
`attribute:
`provision of access to the controlled item and sounding of an alert if the accessibility
`attribute comprises a duress attribute;
`and denial of access to the controlled item and Sounding of an alert if the accessibility
`attribute comprises an alert attribute.
`ʼ705 Patent, col. 16, lines 50-59 (emphasis added).
`The doctrine of claim differentiation creates the presumption that an independent claim and
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`a claim depending therefrom do not have the same scope. Phillips, 415 F.3d at 1309-10. Thus,
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`claim 1 of the ʼ705 Patent is presumptively not limited to the determination of a duress condition
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`per the specification description thereof cited by Apple.
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`Further, the specifications of both patents teach that the claimed access to a controlled item
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`need not be a function of the presence of a duress condition:
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`[T]he accessibility attribute may comprise one or more of an access attribute (granting
`unconditional access), a duress attribute (granting access but with activation of an alert
`tone to advise authorities of the duress situation), an alert attribute (sounding a chime
`indicating that an unauthorised, but not necessarily hostile, person is seeking access, and a
`telemetry attribute, which represents a communication channel for communicating state
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`12
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 16 of 24
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`information for the transmitter sub-system to the receiver sub-system such as a ‘low
`battery’ condition.
`ʼ705 Patent, col. 8, lines 29-38; ʼ208 Patent, col. 8, lines 19-29 (emphasis added).
`
`Finally, Apple references the portion of the prosecution history in which the patentee
`
`distinguished over the prior art because of its failure “to teach ‘receiving a series of entries of a
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`biometric signal, said series being characterized according to at least one of the number of said
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`entries and a duration of said entry’ and mapping that series into an instruction to populate the
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`signature database.” Apple Br. at 25-26. This prior art distinction expressly pertains to “receiving”
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`and “mapping” the biometric signals, and Apple fails to explain how this distinction is helpful in
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`defining “biometric signature,” let alone equating that term with “biometric signal,” as Apple’s
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`construction proposes to do.
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`4.
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`“Accessibility attribute”
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`As with the other terms addressed herein, there is no specific definition of this term set
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`forth in the specifications of the ʼ705 and ʼ208 Patents. Thus, CPC proposes the plain and ordinary
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`meaning of this term. Apple Br. at 26. Apple proposes an “attribute that establishes whether and
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`under which conditions access to the controlled item should be granted to a user.” Id. Apple cites
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`to the purported specification teachings that the “accessibility attribute” as “a multi-tiered decision
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`that includes ‘whether and under what conditions access’ should be granted.” Apple Br. at 27.
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`However, the cited specification passage goes on to say:
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`[I]he accessibility attribute may comprise one or more of an access attribute (granting
`unconditional access), a duress attribute (granting access but with activation of an alert
`tone to advise authorities of the duress situation), an alert attribute (sounding a chime
`indicating that an unauthorised, but not necessarily hostile, person is seeking access, and a
`telemetry attribute, which represents a communication channel for communicating State
`information for the transmitter Sub-system to the receiver sub-system such as a “low
`battery' condition.
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`Id. (emphasis added).
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`13
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`

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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 17 of 24
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`
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`This teaching is clearly inconsistent with Apple’s characterization of this limitation as
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`requiring more than a “match/no match” action. See April Br. at 27. Also inconsistent is the
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`specifications’ teachings of a binary access decision that:
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`If the received biometric signal matches a legitimate signature in the database 105, then the
`process is directed to a step 608 that prepares an ‘access’ bit for insertion into the access
`signal 108. This access bit directs the controller 109 in the receiver sub-system 117 to
`provide access to the controlled item 111. The aforementioned access bit is an access
`attribute of the biometric signal 102.
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`ʼ705 Patent, col. 12, lines 16-23; ʼ208 Patent, col. 12, lines 2-8.
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`One cannot read a specification passage in isolation, as Apple attempts to do – rather, a
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`specification is to be read as a whole. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379–80
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`(Fed. Cir. 2001) (claim construction requires that a court “consider the specification as a whole,
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`and [ ] read all portions of the written description, if possible, in a manner that renders the patent
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`internally consistent”). Further, consistent with these overall specification teachings, claim 5 of
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`the ʼ705 Patent, which depends from claim 1, claims that:
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`[C]onditional access comprises one of:
`provision of access to the controlled item if the accessibility attribute comprises an access
`attribute:
`provision of access to the controlled item and sounding of an alert if the accessibility
`attribute comprises a duress attribute;
`and denial of access to the controlled item and Sounding of an alert if the accessibility
`attribute comprises an alert attribute.
`ʼ705 Patent, claim 5 (emphasis added). See also ʼ208 Patent, claim 5.
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`This express language of claim 5 provides that an accessibility attribute can consist solely
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`of an access attribute. Given the dependence of claim 5 from claim 1, the latter presumptively
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`covers at least that embodiment. See Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328,
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`1335 (Fed. Cir. 2007) (“An independent claim impliedly embraces more subject matter than its
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`narrower dependent claim”).
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`14
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`Case 6:21-cv-00165-ADA Document 49 Filed 12/08/21 Page 18 of 24
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`In sum, CPC proposes the presumptively correct plain and ordinary meaning of
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`“accessibility attribute.” Meanwhile, Apple violates several canons of claim construction in
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`proposing otherwise. CPC’s construction of this term, as such, is the correct one.
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`5.
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`“Collocated”
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`Apple conceded outright that this limitation from claim 9 of the ʼ705 Patent “does not
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`appear in the ʼ705 Patent’s specification,” let alone have a specialized definition thereof set forth
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`in that specification. See Apple Br. at 29. Nonetheless, rather than agreeing that the plain and
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`ordinary meaning of this term controls, Apple selects one of a multiplicity of dictionary definitions
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`as its proposed construction of this term – “occurring in conjunction with.” See id. Apart from
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`unduly narrowing the plain and ordinary meaning of this term, the components that are to be
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`collocated are the transmitter and receiver sub-systems. See ʼ705 Patent, claim 9. Using Apple’s
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`definition, claim 9 would result in the transmitter sub-system “occurring in conjunction with” the
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`receiver sub-system. This definition is nonsensical in this context as Apple does not explain how
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`one sub-system would “occur” wi