Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 1 of 11
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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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 SUR-REPLY TO
`DEFENDANT APPLE INC.’S CLAIM CONSTRUCTION BRIEF
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`CPC hereby submits this sur-reply in support of its claim construction positions.
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`) Case No. 6:21-cv-00165-ADA
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`A.
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`The ‘039 Patent
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`1.
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`“biometric card pointer [enrolment] system”
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`Apple’s argument boils down to the following construct: 1) the entire terms “biometric
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`card pointer [enrolment] system” have no plain and ordinary meaning; 2) the Court therefore has
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`no choice but to find the constructions thereof somewhere in the specification; and 3) the Court is
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`free to adopt as a definition any discussion of the term from the specification, irrespective of any
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`evidence of lexicography. Apple cannot reconcile this construct with the maxim that specification
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`embodiments are not to be imported into a claim absent an express intent that an invention be
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`limited to such embodiment. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379,
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`1381 (Fed. Cir. 2008).
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`More importantly, however, Apple itself describes the term “biometric pointer card
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`system” as “descriptive,” belying the notion that it has no plain meaning. ECF Docket No. 52 at
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`6. And, Apple does not argue (nor can it) that the constituent words of these limitations each has
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`no plain meaning. In fact, as Apple tacitly acknowledges, this collection of individual words
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`1
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 2 of 11
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`means that “card data is used to point to a memory location where biometric data of the card user
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`is stored.” See id. at 7.
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`Apple contends, however, “that without the context of the ʼ039 Patent, a person of ordinary
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`skill in the art could not understand what is meant by “biometric card pointer system.” Id. CPC
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`does not now, nor has it ever, contended that the plain meaning of these limitations need be
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`determined without any reference to the specification. In any event, under the law, assigning a
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`limitation its plain meaning does not deprive the reader of the specification’s context. See Phillips
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`v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc) (“Claim terms are generally given
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`their plain and ordinary meanings to one of skill in the art when read in the context of the
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`specification and prosecution history” (emphasis added)). This, however, is not the same as
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`reading specification embodiments into the claims.
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`This case is distinguishable from the Lenovo decision, cited by Apple, as “NIM,” the term
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`to be construed, had a definition set forth in the specification. Lenovo Holding Co., Inc. v. DoDots
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`Licensing Solutions LLC, 2021-1247, -1521 & -1580, 2021 WL 5822248, at *3 (Fed. Cir. Dec. 8,
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`2021) (the definition of the NIM is content, rather than compiled code (emphasis in
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`original)). The closest that Apple can come to identifying a “definition” of “biometric pointer card
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`system” is that such “phrase is consistent with the disclosure in the patent and the recited claims.”
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`ECF Docket No. 52 at 6 (emphasis added). Apple then goes on to recount these various
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`descriptions. See id. at 3-4. According to Apple’s logic, any claim limitation should necessarily
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`be limited to specification embodiments, as a patent invariably contains descriptions of the
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`limitations in the form of embodiments, and such descriptions purportedly serve as definitions.
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`This, however, is not the law, and the plain meaning of these limitations should control, as CPC
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`contends.
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 3 of 11
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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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`Counsel for CPC generally adheres to the notion that a party should not repeat wholesale
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`what is already contained in an earlier brief. However, with regard to this limitation, Apple makes
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`two statements about CPC’s arguments that are pure fiction: 1) CPC “vaguely points to two entire
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`figures—Figures 3 and 4—in support of its construction;” and 2) “CPC’s proposal fails to identify
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`specific disclosure in the specification that is linked to the claimed function.” ECF Docket No. 52
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`at 8. Regarding these issues, CPC said the following:
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`The ‘039 Patent teaches that ‘[t]ypically, the BCP application program is resident on the
`hard disk drive 110 and read and controlled in its execution by the processor 105 . . . In
`one example of the disclosed BCP approach, the card data 604 acts as the memory
`reference which points, as depicted by an arrow 608, to a particular memory location at
`an address 607 in the local database 124.’ ‘039 Patent, col. 7, line 66 – col. 7, line 1 &
`col. 7, lines 31-34.
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`* * *
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`The afore-quoted passage references elements of the flow chart depicted in Figure 4 of the
`‘039 Patent.
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`ECF Docket No. 49 at 4-5 (emphasis added).
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`Contrary to Apple’s criticism, CPC does not point vaguely to the entirety of Figure 4 of
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`the ‘039 Patent, but cites that figure in connection with the specification description that describes
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`the various components thereof. That description, in turn, identifies the structure (hard disk drive
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`110, processor 105, and local databased 124) for performing the claimed function (defining,
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`dependent upon the received card data 604, a memory location in a local memory address 707 if
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`databased 124 external to the card). Apple characterizes the identified structure as “functional in
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`nature,” but offers no explanation as to how a disk drive, processor, and database are “functional.”
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`See ECF Docket No. 52 at 8.
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`Apple then goes on to argue “CPC has not shown any link between the algorithm
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`flowcharts in its brief and the function.” Id. at 9. This is a regurgitation of the same argument,
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`and is specious in the face of the passage quoted above from CPC’S original claim construction
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`brief.
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`Finally, Apple takes issue with CPC’s discussion of Figure 3 from the ‘039 Patent, as CPC
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`did not identify that figure in its proposed construction. Id. at 8. In fact, CPC was addressing that
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`figure because Apple had cited to that figure in its original claim construction brief. See ECF
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`Docket No. 49 at 9, citing ECF Docket No. 46 at 17. Even without reference to Figure 3, however,
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`Apple has failed to show by clear and convincing evidence that this limitation is invalid under
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`section 112.
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`3.
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`“means for storing, if the memory location is unoccupied, the biometric
`signature at the defined memory location”
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`Apple does not contest the specification’s teaching of a “computer program product
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`including a computer readable medium having recorded thereon a computer program for directing
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`a processor to execute a method of enrolling in a biometric card pointer system, the program
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`comprising . . . code for storing, if a memory location defined by the card information is
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`unoccupied, the biometric signature at the defined memory location.” See ‘039 Patent, col. 5, lines
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`14-18 & 21-23. This is the disclosed structure to which CPC points in defining this term. Apple
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`also does not contest that, in its own proposed construction of this term identifies the wrong
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`location for storing the biometric signature. See ECF Docket No. 49 at 11-12. Apple’s proposed
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`construction should therefore be rejected.
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`B.
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`The ‘705 and ‘208 Patents
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`1.
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`“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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`The parties’ dispute over this limitation is whether the plain meaning of “at least one of the
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`number of said entries and a duration of each said entry” is “both the number of said entries and a
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`duration of each said entry,” as Apple proposes. Apple argues that “[t]he patentee chose to use
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`the word ‘and.’” ECF Docket No. 52 at 11, citing SuperGuide Corp v. DirecTV Enterprises, Inc.,
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`358 F.3d 870, 886 (Fed. Cir. 2004). The patentee also chose to use the term “at least one.” That
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`latter term, according to Apple, mandates selecting both a “number” and a “duration” in the context
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`of this conjunctive limitation. Id. However, as at least one court has recognized, SuperGuide did
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`not “set[ ] forth a per se rule that the use of ‘at least one of’ followed by ‘and’ connotes a
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`conjunctive list.” 3rd Eye Surveillance, LLC v. United States, 140 Fed. Cl. 39, 69 (2018) (citation
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`omitted). Specifically, when, as here, the context is “an option of two,” “[t]he duality of the term
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`makes it a binary choice between two options—not a list giving rise to the confusion present
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`in SuperGuide.” Id.
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`Further, when “the specification or claims imply a broader meaning” than would result
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`from the conjunctive construction, the disjunctive construction (“or”) applies, notwithstanding the
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`holding in SuperGuide. See Hewlett-Packard Co., v. MPHJ Tech. Invs., LLC, No. IPR2013-
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`00309, 2013 WL 8563946, at *5 (P.T.A.B. Nov. 21, 2013). Apple ignores once again the
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`specifications’ teaching that “the control information is encoded by either or both (a) the number
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`of finger presses and (b) the relative duration of the finger presses.” ‘208 Patent, col. 10, lines 50-
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`52; ‘705 Patent, col. 10, lines 61-63 (emphasis added), i.e., a meaning broader than the conjunctive
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`construction proposed by Apple. That construction should be rejected.
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`2.
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`“biometric signature”
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`The parties’ dispute concerning this term invokes the following question – does “biometric
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`signature” necessarily include the separate limitation “biometric signal?” Nothing in the
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`specifications or in the claims themselves indicate that the answer to this question should be “yes.”
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`Apple argues that “the patentee describes the biometric signature as the biometric signal of the
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`user together with data about the number of times the user entered their biometric signal and for
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`how long.” ECF Docket No. 52 at 12. The specification passages cited by Apple, however,
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`nowhere say that the biometric signal forms part of the biometric signature:
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`A system is disclosed for providing secure access to a controlled item, the system
`comprising a database of biometric signatures, a transmitter subsystem comprising a
`biometric sensor for receiving a biometric signal, means for matching the biometric signal
`against members of the database of biometric signatures to thereby output an accessibility
`attribute, and means for emitting a secure access signal conveying information dependent
`upon said accessibility attribute.
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`‘208 Patent, Abstract (emphasis added).\
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`Thus for example if the request 102 is the thumb press on the biometric sensor panel 121
`then the user database 105 contains biometric signatures for authorised users against which
`the request 102 can be authenticated.
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`Id., col. 5, lines 61-65.
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`The step 607 checks the biometric signal against the signatures in the database 105. 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.
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`Id., col. 12, lines 1-7 (emphasis added).
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`Two of these passages describe checking/matching biometric signals against biometric
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`signatures, and one passage says nothing about biometric signals at all. There is nothing in these
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`passages describing, let alone mandating, that a biometric signature comprise a biometric signal,
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`with or without other data.
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`As to whether Apple’s proposed construction is “limited to the duress attribute,” the point
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`is that, while “the number and duration of entries of the biometric signal can create a variety of
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`biometric signatures and offer many different types of access,” nothing in the claims themselves
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`mandates that variety. See ECF Docket No. 52 at 13 (emphasis added). Further, as CPC has noted,
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`dependent claims and specification passages make clear that such variety is not required, and a
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`stored biometric signature need not include, e.g., the number and/or duration of finger presses. See
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`ECF Docket No. 49 at 15-16. Apple addresses none of this intrinsic evidence, and its proposed
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`construction is unsupportable.
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`3.
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`“accessibility attribute”
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`Apple once again cites to the same singular passage from the specifications to justify its
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`construction of this term as establishing “whether and under what conditions” access to the
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`controlled item should be granted. ECF Docket No. 52 at 13. Apple maintains that “there are no
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`competing descriptions or embodiments that provide a different meaning for the term ‘accessibility
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`attribute,’ nor does CPC offer any.” Id. at 14. Of course, the dispute regarding the proper
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`construction of this term began by Apple resisting the notion that this term includes “the binary
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`decision of ‘yes’ or ‘no.’” ECF Docket No. 46 at 30.
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`Now, confronted with intrinsic evidence to the contrary, Apple argues that an “access
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`attribute, which the patent identifies as ‘granting unconditional access’ . . . is still an example of
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`‘whether and under what conditions access to the controlled item should be granted to a user.’ In
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`this example, the answer to ‘whether’ to grant access is “yes,” and the condition under which to
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`grant access is ‘no condition.’ This example fits squarely into the construction offered by Apple.”
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`ECF Docket No. 52 at 14. In other words, Apple now concedes that an accessibility attribute may
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`well be whether access is granted or not. However, Apple’s “no condition” explanation makes the
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`“under what conditions” impermissibility superfluous. Akzo Nobel Coatings, Inc. v. Dow
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`Chemical Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016). The simple, and correct, solution is to adopt
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`the plain meaning of this limitation, as CPC proposes.
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 8 of 11
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`4.
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`Collocated
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`To justify its tortured construction of this limitation, Apple argues that “the transmitter and
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`receiver subsystems in the electronic computing device occur in conjunction with one another,
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`because they are integrated with one another.” ECF Docket No. 52 at 15. Apple has yet to explain
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`how a physical device (or a collection of physical devices) “occurs,” either alone or with other
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`physical devices. Apple’s proposed construction remains illogical, and should be rejected in favor
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`of the plain meaning of this term.
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`5.
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`Terms Challenged as Lacking Corresponding Structure
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`As with the ‘039 Patent, Apple baselessly accuses CPC of referring “generally” to two
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`figures from the ‘208 Patent to show a teaching of an algorithm corresponding to the “means for
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`mapping said series into an instruction” and “means for populating the database [of biometric
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`signatures/according to the instruction].” ECF Docket No. 52 at 16. Apple ignores CPC’s citation
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`to the specification’s description of steps 806 and 909 of those figures, which determine if a simple
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`signature is to be stored. See ECF Docket No. 49 at 20-21. Apple also ignores the teachings in
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`those same passages that steps 807 and 910 of those figures store the biometric signal.” See id.
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`Apple also argues that the figures do not contain the “proposed structure that CPC offers.”
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`ECF Docket No. 52 at 16. The figures outline steps for performing the claimed invention, and are
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`therefore not “structure” at all. Rather, they correspond to the algorithm for carrying out the
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`function by the structure comprising the identified “computer program product having a computer
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`readable medium having a computer program recorded therein, with code for mapping said series
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`into an instruction.” See ECF Docket No. 46 at 34. Again, Apple has failed to offer clear and
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`convincing evidence that these limitations run afoul of the requirements of section 112.
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`6.
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`The Remaining Means Limitations
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 9 of 11
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`In its remaining page of reply briefing, Apple lumps together nine additional limitations,
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`cursorily challenging them on validity grounds. ECF Docket No. 52 at 14. Apple begins by
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`resisting the proposition that this approach violates the Court-imposed limit on the number of terms
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`for claim construction by stating “the Court must construe the function and structure as a matter
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`of law.” ECF Docket No. 52 at 17. This, however, does not allow Apple to create additional claim
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`construction disputes in violation of the numerical limit contained in the Ground Rules.
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`Further, Apple apparently seeks to contest CPC’s identification of structure for each of the
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`nine limitations falling under this category, yet offers up only one - “means for matching the
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`biometric signal against members of the database of biometric signatures to thereby output an
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`accessibility attribute.” ECF Docket No. 46 at 38. It is unclear as to how argument as to that one
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`limitation would inform as to the proper identification of structure as to the other eight.
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`Again, Apple takes issue with CPC’s identification of algorithm steps depicted in various
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`figures of the ‘208 Patent, as “these figures are not the structure CPC proposes.” ECF Docket No.
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`52 at 17. As noted above, the identified algorithm steps are not “structure,” and there was no need
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`to disclose them as such. Further, contrary to Apple’s assertion, CPC has never taken the position
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`that it can point to “any software” to satisfy the structural requirement. Rather, it pointed to the
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`software disclosed in the specification for specifically performing the claimed functions via the
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`algorithm illustrated and described in the ‘208 Patent. ECF Docket No. 49 at 21-22. Given these
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`other specification disclosures, limiting the scope of this limitation to “the code entry module,
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`software 202, and database 105,” as Apple proposes, would be improper.
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 10 of 11
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`Date: January 5, 2022
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` Respectfully submitted,
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`/s/ James A. Shimota
`James A. Shimota
`(admitted pro hac vice)
`Illinois State Bar No. 6270603
`George C. Summerfield
`(admitted pro hac vice)
`Michigan State Bar No. P40644
`K&L GATES LLP
`70 W. Madison Street, Suite #3300
`Chicago, IL 60602
`Tel.: (312) 807-4299
`Fax: (312) 827-8000
`Jim.Shimota@klgates.com
`George.Summerfield@klgates.com
`
`Stewart Mesher
`Texas State Bar No. 24032738
`K&L GATES LLP
`2801 Via Fortuna, Suite #350
`Austin, TX 78746
`Tel.: (512) 482-6841
`Fax: (512) 482-6859
`Stewart.Mesher@klgates.com
`
`Elizabeth A. Gilman
`Texas State Bar No. 24069265
`K&L GATES LLP
`1000 Main Street, Suite #2550
`Houston, Texas 77002
`Tel.: (713) 815-7327
`Fax: (713) 815-7301
`Beth.Gilman@klgates.com
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`Attorneys for Plaintiff CPC Patent
`Technologies PTY Ltd.
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`Case 6:21-cv-00165-ADA Document 54 Filed 01/05/22 Page 11 of 11
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 5, 2022, I electronically filed the foregoing with the Clerk
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`of the Court using the CM/ECF system, which will send notification of such filing to all counsel
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`of record.
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`/s/ James A. Shimota
`James A. Shimota
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`11
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