UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`PROMETRIC INC.
`Petitioner
`
`v.
`IQS US INC. AND I.Q.S. SHALEV LIMITED
`Patent Owner
`
`
`
`_____________________
`
`Case: IPR2017-00767
`_____________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,773,779
`UNDER 35 U.S.C. § 311 OF THE LEAHY-SMITH AMERICA INVENTS
`ACT
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`I. 
`
`V. 
`
`2. 
`
`IPR Petition of U.S. Patent No. 7,773,779
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`(37 C.F.R. § 42.22(a)) ..................................................................................... 1 
`OVERVIEW ................................................................................................... 1 
`II. 
`III.  GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................ 7 
`IV.  CLAIMS FOR REVIEW ................................................................................ 7 
`A. 
`Independent Claim 1: System to Receive and Compare
`Biometric Data for a Match ................................................................... 7 
`Claims 2 and 11: Receiving a Plurality ................................................. 9 
`B. 
`Claim 3: Internet .................................................................................... 9 
`C. 
`Claim 4: Remote Template Extractor ................................................... 9 
`D. 
`Claims 5 and 6: Biometric Reader ........................................................ 9 
`E. 
`Claim 10: Time Manager .................................................................... 10 
`F. 
`Claim 14: Identification Tag ............................................................... 10 
`G. 
`Claim 15: Sharing Agreement ............................................................. 10 
`H. 
`Claim 16: Quality Monitor .................................................................. 11 
`I. 
`Claim 17: Storage ................................................................................ 11 
`J. 
`Claim 18: Duplicate Locator ............................................................... 11 
`K. 
`Claim Construction ....................................................................................... 11 
`A. 
`Level of Ordinary Skill in the Art ....................................................... 11 
`B. 
`Proposed Constructions ....................................................................... 11 
`C. 
`Support for Petitioner’s Broadest Reasonable Interpretation ............. 13 
`1. 
`“A Registration Input Configured to Receive … at
`Least One Registration Template” ........................................... 13 
`“An Enquiry Input, Configured to Receive … at Least
`One Test Template” ................................................................. 15 
`“Biometric Sample” ................................................................. 16 
`“Template” ............................................................................... 17 
`“Extracted” ............................................................................... 18 
`“Template Complete as Originally Extracted” ........................ 20 
`
`3. 
`4. 
`5. 
`6. 
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`-ii-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`7. 
`
`2. 
`
`the Registration Template
`“Directly Comparing
`Complete as Originally Extracted with the Test
`Template Complete as Originally Extracted” .......................... 21 
`VI.  EACH OF THE REFERENCES CITED IS AVAILABLE PRIOR
`ART .............................................................................................................. 22 
`VII.  STATE OF THE ART AT THE TIME OF THE FILING OF THE
`’779 PATENT APPLICATION ................................................................... 23 
`VIII.  IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) ................ 25 
`A. 
`Statutory Grounds for the Challenge ................................................... 25 
`B. 
`The Cohen/Carrillo Grounds ............................................................... 26 
`1. 
`Cohen in view of Carrillo under 35 U.S.C. §103
`renders claims 1-5, 10, 11, 14, 17 and 18 obvious .................. 28 
`a) 
`Claim 1 ........................................................................... 28 
`b) 
`Claim 2 ........................................................................... 50 
`c) 
`Claim 3 ........................................................................... 52 
`d) 
`Claim 4 ........................................................................... 53 
`e) 
`Claim 5 ........................................................................... 54 
`f) 
`Claim 10 ......................................................................... 54 
`g) 
`Claim 11 ......................................................................... 56 
`h) 
`Claim 14 ......................................................................... 60 
`i) 
`Claim 17 ......................................................................... 62 
`j) 
`Claim 18 ......................................................................... 63 
`Cohen in view of Carrillo and further in view of Gatto
`under 35 U.S.C. §103 renders claim 6 obvious ....................... 65 
`Cohen in view of Carrillo and further in view of
`Demere under 35 U.S.C. §103 renders claim 15
`obvious ..................................................................................... 68 
`a) 
`Claim 15 ......................................................................... 68 
`Cohen in view of Carrillo and further in view of
`Fraenkel under 35 U.S.C. §103 renders claim 16
`obvious ..................................................................................... 71 
`IX.  MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ................................... 73 
`X. 
`PAYMENT OF FEES (37 C.F.R. § 42.15(a)) .............................................. 74 
`
`3. 
`
`4. 
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`-iii-
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`IPR Petition of U.S. Patent No. 7,773,779
`
`XI.  CONCLUSION ............................................................................................. 75 
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`-iv-
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`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`Prometric
`Exhibit #
`
`EXHIBIT LIST
`
`Description
`
`1001
`
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`Shalev et al., U.S. Patent No. 7,773,779 (filed October 19, 2006;
`issued August 10, 2010)
`Declaration of Dr. Creed Jones
`Curriculum Vitae of Dr. Creed Jones
`Prosecution History of U.S. Patent No. 7,773,779
`Cohen et al., U.S. Patent Application Publication No. 2006/0110011
`(filed November 17, 2005, published May 25, 2006)
`Carrillo, Continuous Biometric Authentication for Authorized Aircraft
`Personnel: A Proposed Design (published June 2003)
`Complaint, IQS US INC. and I.Q.S. Shalev Limited v. Calsoft Labs
`Incorporated and Prometric Inc., No.1:2016-cv-07774 (N.D. Ill.
`2016), filed August 2, 2016, summons served on August 2, 2016
`Agreed Motion, IQS US INC. and I.Q.S. Shalev Limited v. Calsoft
`Labs Incorporated and Prometric Inc., No.1:2016-cv-07774 (N.D. Ill.
`2016), filed August 2, 2016, proof of service
`Gatto et al., U.S. Patent No. 6,945,870 (filed April 10, 2002,
`published May 29, 2003, granted September 20, 2005)
`Demere, U.S. Patent Application Publication No. 2004/0140354 (filed
`January 21, 2003, published July 22, 2004)
`Fraenkel et al., U.S. Patent No. 6,738,933 (filed October 19, 2001,
`published April 3, 2003, granted May 18, 2004)
`Podio et al., CBEFF Common Biometric Exchange Formats, National
`Institute of Standards and Technology, Technology Administration,
`U.S. Department of Commerce, NISTIR 6529-A (Published April 5,
`2004)
`National Science and Technology Council (NTSC) Committee on
`Technology Committee on Homeland and National Security
`Subcommittee on Biometrics, Biometrics Glossary (published
`September 14, 2006)
`
`-v-
`
`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`Prometric
`Exhibit #
`
`Description
`
`1015
`
`1014
`
`Eric C. Johnson, From the Inkpad to the Mousepad: IAFIS and
`Fingerprint Technology at the Dawn of the 21st Century, Technical
`Bulletin featuring emerging technologies in criminal justice
`information management (Issue Number 2, 1998)
`ANSI INCITS 358-2002 (R2007) Information Technology – The
`BioAPI Specification, Information Technology Industry Council
`(2002)
`1016 Wayman, Jain, Maltoni and Maio, Biometric Systems: Technology,
`Design and Performance Evaluation, (Springer, 2005)
`
`
`
`
`
`
`
`
`
`
`
`
`
`-vi-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`I.
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. § 42.22(a))
`
`Prometric Inc. (“Prometric” or “petitioner”) petitions for inter partes review
`
`of U.S. Patent No. 7,773,779 (“the ’779 patent”) to Shalev et al. (Exhibit 1001)
`
`and cancellation of its claims 1-6, 10, 11 and 14-18. This petition will demonstrate
`
`that it is more likely than not that the challenged claims are unpatentable. As
`
`confirmed by petitioner’s expert, Dr. Creed Jones, the challenged claims recite
`
`subject matter that is rendered obvious by the submitted patents or printed
`
`publications.
`
`II. OVERVIEW
`This case generally relates to a biometric identification system. Claim 1, the
`
`only independent claim, recites a system that includes two primary components, a
`
`“template receiver” and a “verifier.” The template receiver includes a registration
`
`input and an enquiry input. The registration input receives a registration template
`
`that was extracted from a biometric sample of an end user. The enquiry input
`
`receives a test template that was extracted from a biometric sample of a person.
`
`The verifier determines a degree of match between the registration template and
`
`the test template to verify the identity of the end user. Thus, claim 1 discloses
`
`receiving two pieces of information, comparing the two pieces of information, and
`
`determining if they match.
`
`The ’779 patent Background section discusses that a “complete biometric
`
`-1-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
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`
`
`system may be too expensive to buy and maintain, specifically for a relatively
`
`small business, which … cannot finance the development of a complete biometric
`
`system.” (Exhibit 1001, 3:7-10.)
`
`The ’779 patent specification alleges that the solution to providing an
`
`“expensive” complete biometric system is to provide a system and method for
`
`“providing biometric verification services to a plurality of remote parties.” (Exhibit
`
`1001, 5:60-62.) The ’779 patent specification discloses that such a system provides
`
`“global biometric identification services to a plurality of remote parties” where the
`
`system comprises “a template receiver” and a “verifier” to “determine a degree of
`
`match.” (Exhibit 1001, 3:22-35.) The template receiver is configured to “receive
`
`from at least one remote registering party at least one respective registration
`
`template of a biometric sample of an end user.” (Exhibit 1001, 3:26-28.)
`
`But this type of biometric identification system was publicly known and
`
`used well before the October 19, 2006 filing date of the ’779 patent application.
`
`This petition shows that U.S. Patent Application Publication No. 2006/0110011 to
`
`Cohen et al. (“Cohen”) (Exhibit 1005) filed on November 17, 2005 discloses a
`
`biometric identification and authentication system that uses servers to provide
`
`biometric authentication and verification services to a plurality of remote parties
`
`via the Internet. (Exhibit 1005, ¶[0047].)
`
`-2-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
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`Cohen discloses a template receiver, e.g., an Advanced Fingerprint
`
`Collection Server (AFICS) 261 (Exhibit 1005, ¶0064]), that receives biometric
`
`templates from a remote registering party, e.g., “[d]uring authentication, ERRIFIC
`
`221 may capture a live sample image, e.g., a grayscale image, of the user's
`
`fingerprint from biometric imager 210” where “ERRIFIC 221 may then run an
`
`extraction routine on the sample image to create an advanced fingerprint template
`
`(AFIT).” (Exhibit 1005, ¶[0065].) Cohen further describes the generation and
`
`transmission of the initial registration template where the “images may be
`
`submitted as identification reference images to UIDB 1060” where “[a]n
`
`identification reference template may be extracted from each identification
`
`reference image.” (Exhibit 1005, ¶[0124].)
`
`Cohen further discloses generating and transmitting a test template during a
`
`verification process where “[t]he enrolling user may be prompted by the web-based
`
`authentication software to test each enrolled finger” and “[t]he generated templates
`
`may be sent to the AFICS/AFIMS 1041 application for matching in the UIDB
`
`1060.” (Exhibit 1005, ¶[0137].) Cohen also discloses a verifier that determines a
`
`degree of match between the registration template and the test template where
`
`“[t]he matching system must be able to compare properly the sample template
`
`against a database of stored (enrolled) user templates, and identify the closest
`
`match within preset parameters.” (Exhibit 1005, ¶[0009].)
`
`-3-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`This petition shows that the thesis “Continuous Biometric Authentication for
`
`Authorized Aircraft Personnel: A Proposed Design” by Cassandra M. Carrillo
`
`(“Carrillo) (Exhibit 1006) published in June 2003 discloses biometric solutions for
`
`the continuous or periodic authentication of authorized personnel. Carrillo
`
`discusses the use of facial, iris, retina, fingerprint recognition and voice
`
`authentication where “[e]very biometric device or system of devices includes the
`
`following three processes: enrollment, live presentation, and matching.” (Exhibit
`
`1006, p. 2.)
`
`Carrillo discloses the use of templates, where “digital information will be
`
`saved as a template (the stored template) that will be compared with the digital
`
`image that is scanned at the time of verification (live template).” (Exhibit 1006, p.
`
`5.) Carrillo discusses how iris recognition works where the “scanned digitized
`
`pattern is then compared to a previously recorded pattern” where “[t]hese stored
`
`patterns are also called templates, the same idea that is used with other biometric
`
`techniques such as fingerprint scanning and facial recognition.” (Exhibit 1006, p.
`
`28.)
`
`Carrillo further discloses comparing the “stored biometric template and the
`
`live biometric template” to “provide the biometric score or result.” (Exhibit 1006,
`
`p. 2, emphasis omitted.) “As comparisons are made, the system assigns a value to
`
`-4-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
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`
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`the comparison using a scale of one to 10” and [i]f a score is above a
`
`predetermined threshold, a match is declared.” (Exhibit 1006, p. 22.)
`
`In addition,
`
`the National Science & Technology Council (NSTC)
`
`Subcommittee on Biometrics, at the time of filing the ’779 patent application, had
`
`published a Biometrics Glossary (NSTC Glossary) to define terms for the national
`
`and international standards bodies regarding biometrics (Exhibit 1013). The NSTC
`
`Glossary describes the system recited in claim 1 that captures a biometric sample,
`
`extracts and processes the biometric data, stores the extracted information in a
`
`database and compares the biometric data with one or more references,
`
`determining the degree of match and indicating whether or not an identification has
`
`been achieved. Specifically, the NTSC Glossary defines a “biometric system” as
`
`Multiple individual components (such as sensor, matching algorithm,
`and result display) that combine to make a fully operational system. A
`biometric system is an automated system capable of:
`1) Capturing a biometric sample from an end user;
`2) Extracting and processing the biometric data from that
`sample;
`3) Storing the extracted information in a database;
`4) Comparing the biometric data with data contained in one or
`more reference references;
`5) Deciding how well they match and indicating whether or not
`an identification has been achieved.
`A biometric system may be a component of a larger system.
`(Exhibit 1013, p. 5.)
`
`Further, the prosecution history of the ’779 patent illustrates that Patent
`
`Owner argued that the point of novelty of the application was directed to
`
`-5-
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`

`IPR Petition of U.S. Patent No. 7,773,779
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`
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`determining a degree of match and argued that the prior art failed to disclose
`
`determining “a degree of match between the registration template and the test
`
`template.” (Exhibit 1004, p. 124.) The Examiner disagreed and issued a Final
`
`office action stating the “Ting teaches the degree of match between the two
`
`templates of biometric samples.” (Exhibit 1004, p. 93.) Patent Owner responded by
`
`amending claim 1 to recite:
`
`an enquiry input, configured to receive from a remote inquiring party
`communicating with the template receiver, at least one test template
`complete as originally extracted from a respective biometric sample
`of a person; and a verifier, associated with the template receiver,
`configured to determine a degree of match between the registration
`template and the test template, by directly comparing the registration
`template complete as originally extracted with the test template
`complete as originally extracted, thereby to verify the person as an
`end user, using the determined degree of match.
`(Exhibit 1004, p. 67, emphasis in original.)
`
`Patent Owner then argued that Ting’s server matches between arbitrary
`
`changes (i.e. the modification data) made to the registration template and
`
`differences (i.e. the response vector) found between the biometric data from the
`
`input device and the challenge template, rather than between templates of
`
`biometric samples, which are, both, complete as originally extracted and received
`
`from the remote parties. (Exhibit 1004, p. 70.) However, Patent Owner never
`
`explained or cited where in the specification the term “complete as originally
`
`extracted” is defined or discussed and thus fails to satisfy the written description
`
`requirement of 35 U.S.C. § 112, first paragraph.
`
`-6-
`
`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`This petition establishes Prometric’s grounds for standing and IPR
`
`eligibility. This petition discusses the claims for review and proposes terms for
`
`construction. Further, this petition lists the cited references, showing that each
`
`reference is prior art to the ’779 patent, and proposes multiple grounds of
`
`unpatentability. Finally, this petition provides the mandatory notices that the rules
`
`of practice require.
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
`The undersigned and Prometric certify that the ’779 patent is available for
`
`inter partes review. Prometric further certifies that it is not estopped from
`
`requesting an inter partes review challenging claims 1-6, 10, 11 and 14-18 on the
`
`grounds identified in this petition, as Prometric was first served with a complaint
`
`for infringement less than one year ago on August 2, 2016 in the Northern District
`
`of Illinois (1:16-cv-07774). (See Exhibit 1007 for complaint and Exhibit 1008 for
`
`date of service of complaint.)
`
`IV. CLAIMS FOR REVIEW
`Prometric requests review of claims 1-6, 10, 11 and 14-18. Each claim is
`
`discussed herein, followed by a discussion of relevant claim terms for construction.
`
`A.
`Independent Claim 1: System to Receive and Compare Biometric
`Data for a Match
`
`Claim 1 (shown with added identifiers):
`
`-7-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`P) System for providing global biometric identification services to a
`
`plurality of remote parties, the system comprising:
`
`A) a template receiver, comprising:
`
`A-1) (a) a registration input configured to receive from at least one remote
`
`registering party communicating with said template receiver, at least one
`
`registration template complete as originally extracted from a respective biometric
`
`sample of an end user of said remote registering party,
`
`A-2) associated with a tag relating said registration template to said end
`
`user; and;
`
`A-3) (b) an enquiry input, configured to receive from a remote inquiring
`
`party communicating with said template receiver, at least one test template
`
`complete as originally extracted from a respective biometric sample of a person;
`
`and;
`
`B) a verifier, associated with said template receiver, configured to determine
`
`a degree of match between said registration template and said test template, by
`
`directly comparing the registration template complete as originally extracted with
`
`the test template complete as originally extracted, thereby to verify said person as
`
`an end user, using said determined degree of match.
`
`-8-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`B. Claims 2 and 11: Receiving a Plurality
`Claim 2 further recites that the template receiver is “further configured to
`
`receive a plurality of registration templates from said registering party.” Claim 11
`
`recites “wherein said inquiry input is further configured to receive a plurality of
`
`test templates of biometric samples of said person, and said verifier is further
`
`configured to determine a degree of match between said test templates of biometric
`
`samples of said person and at least one of said registration templates, and to verify
`
`said person as an end user, using said determined degree of match.”
`
`C. Claim 3: Internet
`Claim 3 recites that the template receiver gateway is “further configured to
`
`communicate with said remote parties via the Internet.”
`
`D. Claim 4: Remote Template Extractor
`Claim 4 recites that the system “further comprising a template extractor,
`
`remotely communicating with said template receiver, installed at premises of at
`
`least one of said remote parties and configured to extract said test template from a
`
`biometric sample.”
`
`E. Claims 5 and 6: Biometric Reader
`Claims 5 and 6 depend from claim 4. Claim 5 recites “further comprising a
`
`biometric sample generator associated with said template extractor, configured to
`
`generate a biometric sample, utilizing a biometric reader, and forward said
`
`biometric sample to said template extractor.” Claim 6 recites “further comprising a
`
`-9-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`biometric sample generator associated with said template extractor, configured to
`
`identify a type of a biometric reader, and generate a biometric sample, utilizing
`
`said biometric reader, in accordance with said identified type.”
`
`F. Claim 10: Time Manager
`Claim 10 recites “further comprising a time manager, associated with said
`
`verifier, and configured to record time of reception of said test template, as a time
`
`event of said tag associated with said registration template matched by said test
`
`template.”
`
`G. Claim 14: Identification Tag
`Claim 14 recites that the template receiver “is further configured to receive a
`
`claimed tag associated with said test template of said person, and said verifier is
`
`further configured to determine a degree of match between said test template of
`
`said person and at least one of said registration templates associated with said
`
`claimed tag, and to verify said person as an end user, using said determined degree
`
`of match.”
`
`H. Claim 15: Sharing Agreement
`Claim 15 recites “wherein said verifier is further configured to determine a
`
`degree of match between said test template of said person and at least one of said
`
`registration templates stored for a registering party having a sharing agreement
`
`with said inquiring party, and to verify said person as an end user, using said
`
`determined degree of match.”
`
`-10-
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`

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`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`Claim 16: Quality Monitor
`
`I.
`Claims 16 recites “further comprising a quality monitor, communicating
`
`with said template receiver and said verifier, and configured to monitor operation
`
`of the system through a predefines [sic] monitoring scheme.”
`
`Claim 17: Storage
`
`J.
`Claim 17 recites “further comprising a storage associated with said
`
`registration input, for storing said registration template associated with said tag.”
`
`K. Claim 18: Duplicate Locator
`Claim 18 depends from claim 17 and recites “further comprising a duplicate
`
`templates locator, associated with said storage, and configured to locate duplicate
`
`templates in the storage.”
`
`V. Claim Construction
`A. Level of Ordinary Skill in the Art
`As explained by Dr. Jones, a person of ordinary skill in the art at the time of
`
`invention of the ’779 patent (e.g., as of the October 19, 2006 filing date), would
`
`have had a bachelor’s degree in computer science, computer engineering, electrical
`
`engineering, or a closely related field, along with at least 2 years of experience in
`
`computer based image processing systems. (Exhibit 1002, ¶¶[0023]-[0024].)
`
`B.
`Proposed Constructions
`In an inter partes review, claim terms in an unexpired patent are interpreted
`
`according to their broadest reasonable construction in light of the specification of
`
`-11-
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`

`

`IPR Petition of U.S. Patent No. 7,773,779
`
`
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We conclude that the
`
`regulation represents a reasonable exercise of the rulemaking authority that
`
`Congress delegated to the Patent Office. For one thing, construing a patent claim
`
`according to its broadest reasonable construction helps to protect the public”).
`
`The ’779 patent has not expired, and thus its claims, for the purposes of this
`
`review, should be given their broadest reasonable interpretation. Further, Petitioner
`
`proposes the following constructions consistent with the broadest reasonable
`
`interpretation in view of the specification:
`
`Claim Term
`
`“a registration input
`configured to receive …
`at least one registration
`template”
`“an enquiry input,
`configured to receive …
`at least one test
`template”
`“biometric sample”
`
`“template”
`
`“extracted”
`
`“template complete as
`originally extracted”
`
`Broadest Reasonable Interpretation in View of the
`Specification
`“an offline or online interface configured to
`receive a registration template, not a test
`template”
`
`“an offline or online interface configured to
`receive a test template, not a registration
`template”
`
`“image of a fingerprint, a face image, or any
`sample of a biometric characteristic of a person”
`“a binary record created from distinctive
`information from a biometric sample”
`“generated by the use of an image of a biometric
`sample or using an algorithm that analyzes an
`image of a biometric sample”
`“original template generated by the use of an
`image of a biometric sample or using an
`algorithm that analyzes an image of a biometric
`sample”
`
`-12-
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`IPR Petition of U.S. Patent No. 7,773,779
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`
`
`“directly comparing the
`registration template
`complete as originally
`extracted with the test
`template complete as
`originally extracted”
`
`“directly comparing the original registration
`template generated by the use of an image of a
`biometric sample or using an algorithm that
`analyzes an image of a biometric sample with the
`original test template generated by the use of an
`image of a biometric sample or using an
`algorithm that analyzes an image of a biometric
`sample”
`
`
`
`C.
`
`Support for Petitioner’s Broadest Reasonable Interpretation
`1.
`“A Registration Input Configured to Receive … at Least
`One Registration Template”
`
`The ’779 patent specification states that the “template receiver 110 includes
`
`a registration input and an inquiring input.” (Exhibit 1001, 7:1-2.) It further states
`
`that “[t]he template receiver 110 receives one or more registration templates of
`
`biometric samples, from a remote registering party 101, via the registration input”
`
`(Exhibit 1001, 7:1-2.) And, that “the templates may be received through an offline
`
`interface (in a batch mode, say using a file containing a list of templates and a tag
`
`associated with each of the templates), an online interface (say, using a web site, or
`
`a client application installed at premises of the remote party), or through both the
`
`offline interface and the online interface.” (Exhibit 1001, 7:10-15.)
`
`The ’779 patent specification also states that “[t]he sample receiver 210
`
`receives the registration samples, using the registration input,” and that “[t]he
`
`registration samples may be received through an offline interface, an online
`
`interface (say, using a web site or a client application installed at premises of the
`
`-13-
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`IPR Petition of U.S. Patent No. 7,773,779
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`
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`remote party), or through both the offline interface and on line.” (Exhibit 1001,
`
`10:32-37.) Thus, a registration input can be a web site or client application, offline
`
`or online.
`
`Such a construction conforms to what was known by one of ordinary skill in
`
`the art at the time of filing the ’779 patent application. For example, as discussed
`
`by Dr. Jones, the biometrics API standard discusses software functions for
`
`registration and inquiry inputs. (Exhibit 1002, ¶¶[0065]-[0066].) The API model
`
`describes “three principal high-level abstraction functions in the API” that consist
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`of “enroll,” “verify,” and “identify.” (Exhibit 1015, p. 4.) “Enroll” includes where
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`“[s]amples are captured from a device, processed into a usable form from which a
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`template is constructed, and returned to the application.” (Id.) “Verify” includes
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`where “[o]ne or more samples are captured, processed into a usable form, and then
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`matched against an input template” and “[t]he results of the comparison are
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`returned.” (Id.) And “Identify” where “[o]ne or more samples are captured,
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`processed into a usable form, and matched against a set of templates” and “[a] list
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`is returned showing how close the samples compare against the top candidates in
`
`the set.” (Id.)
`
`The standard discusses how
`
`the
`
`registration
`
`input
`
`functions are
`
`accomplished by the BioAPI_CreateTemplate and the BioAPI_Enroll functions.
`
`(Exhibit 1015, p. 59, and Exhibit 1002, ¶[0067].) The standard discusses that
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`-14-
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`IPR Petition of U.S. Patent No. 7,773,779
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`
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`enrollment, verification, and identification functions utilize separate and distinct
`
`functions. Thus, an interface configured to receive a registration template utilizes a
`
`different function than an interface configured to receive a test template. (Id.)Thus,
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`“a registration input configured to receive … at least one registration template”
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`should be construed to be “an offline or online interface configured to receive a
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`registration template, not a test template.” (Exhibit 1002, ¶[0068].)
`
`2.
`“An Enquiry Input, Configured to Receive … at Least One
`Test Template”
`
`The ’779 patent specification states that “the templates may be received
`
`through an offline interface (in a batch mode, say using a file containing a list of
`
`templates and a tag associated with each of the templates), an online interface (say,
`
`using a web site, or a client application installed at premises of the remote party),
`
`or through both the offline interface and the online interface.” (Exhibit 1001, 7:10-
`
`15.) The ’779 patent specification also states that “[t]he inquiring samples are
`
`received using the inquiring input.” (Exhibit 1001, 10:55-56.) Thus, an enquiry
`
`input can be a web site or client application, offline or online.
`
`Further, such a construction conforms to what was known by one of ordinary
`
`skill in the art at the time of filing the ’779 patent application. For example, as
`
`discussed by Dr. Jones, the biometrics API standard discusses software functions
`
`for registration and inquiry inputs utilizing separate APIs for enrollment,
`
`verification, and identification. (Exhibit 1002, ¶[0070].)
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`-15-
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`IPR Petition of U.S. Patent No. 7,773,779
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`
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`The standard discusses how
`
`the enquiry
`
`input
`
`function utilizes
`
`BioAPI_VerifyMatch,
`
`BioAPI_IdentifyMatch,
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`BioAPI_Verify
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`and
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`BioAPI_Identify. (Exhibit 1015, p. 55, 57, 60 and 62, and Exhibit 1002, ¶[0071].)
`
`Dr. Jones discusses the details of these functions and how they receive enquiry
`
`requests. (Exhibit 1002, ¶¶[0072-0075].) The standard discusses that enrollment,
`
`verification, and identification functions utilize separate and distinct functions.
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`Thus, an interface configured to receive a test template utilizes a different function
`
`than an interface configured to receive a registration template. (Id.)
`
`Thus, “an enquiry input, configured to receive … at least one test template”
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`should be construed