IPR2017-00767
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Filed on behalf of IQS US INC. and I.Q.S. Shalev Limited
`By: Brian P. Lynch (blynch@niro-mcandrews.com)
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`NIRO MCANDREWS, LLC
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`200 West Madison St., Suite 2040
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`Chicago, IL 60606
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`(312) 755-8581
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`PROMETRIC INC.
`PETITIONER
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`V.
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`IQS US INC. AND I.Q.S. SHALEV LIMITED
`PATENT OWNER
`_____________
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`CASE NO.: IPR2017-00767
`U.S. PATENT NO. 7,773,779
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`PRELIMINARY RESPONSE
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Filed on behalf of IQS US INC. and I.Q.S. Shalev Limited
`By: Brian P. Lynch (blynch@niro-mcandrews.com)
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`NIRO MCANDREWS, LLC
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`200 West Madison St., Suite 2040
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`Chicago, IL 60606
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`(312) 755-8581
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`PROMETRIC INC.
`PETITIONER
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`V.
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`IQS US INC. AND I.Q.S. SHALEV LIMITED
`PATENT OWNER
`_____________
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`CASE NO.: IPR2017-00767
`U.S. PATENT NO. 7,773,779
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`IPR2017-00767
`PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
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`BACKGROUND ......................................................................................... 2
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`I.
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`II.
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`III. THE CARRILLO REFERENCE ................................................................. 3
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`IV.
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`PLURALITY OF PARTIES ........................................................................ 6
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`V.
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`COMPLETE AS ORIGINALLY EXTRACTED ......................................... 8
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`a. The Cohen Reference ............................................................................... 8
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`b. The Carrillo Reference ............................................................................11
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`VI. CONCLUSION ..........................................................................................12
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`IPR2017-00767
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`Cases
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`TABLE OF AUTHORITIES
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`Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP,
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`616 F.3d 1249, 1254 (Fed. Cir. 2010) .......................................................... 6
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`Constant v. Advanced Micro-Devices, Inc.,
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`848 F.2d 1560, 1569 (Fed. Cir. 1988) .......................................................... 4
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`Elec. Frontier Foundation v. Personal Audio, LLC, IPR2014-00070 ..................... 5
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`EMC Corp. v. PersonalWeb Technologies, LLC, IPR-2013-00087 ........................ 4
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`Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004) ................................ 6
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`In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014) ........... 3
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`In re Royka, 490 F.2d 981, 984-85 (C.C.P.A. 1974)............................................... 8
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`In re Wilson, 424 F.2d 1382, 1385 (C.C.P.A. 1970) ..............................................12
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`In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981) ..................................................... 4
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`Silver Peak Sys., Inc. v. Riverbed Tech., Inc., IPR-2014-00149.............................. 4
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`SRI Intern., Inc. v. Internet Sec. Systems, Inc.,
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`
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`511 F.3d 1186, 1197 (Fed. Cir. 2008) .......................................................... 5
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`Statutes
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`35 U.S.C. § 311(b) ................................................................................................. 2
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`Regulations
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`37 C.F.R. § 42.107(b) ............................................................................................ 1
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`IPR2017-00767
`PRELIMINARY RESPONSE
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`In accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, IQS US INC. and
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`I.Q.S. Shalev Limited (collectively, “IQS” or “Patent Owner”), respectfully submit
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`this Preliminary Response to the Petition for Inter Partes Review (“IPR”) of claims
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`1-6, 10, 11, and 14-18 of U.S. Patent No. 7,773,779 (“the ‘779 Patent”) filed by
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`Prometric Inc. (“Prometric” or “Petitioner”). This Preliminary Response is timely
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`under 37 C.F.R. § 42.107(b) because it is being filed within three months of the
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`mailing date of the Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response (Paper 3), which was mailed on February 8,
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`2017.
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`I.
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`INTRODUCTION
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`In this Preliminary Response, Patent Owner only addresses a few select
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`elements of the obviousness arguments presented in the Petition for Inter Partes
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`Review of U.S. Patent No. 7,773,779 (Paper 1, hereinafter “Petition”). Patent Owner
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`reserves the right to construe claim terms and address all grounds in Patent Owner’s
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`Response, including Petitioner’s claim construction arguments raised in the Petition,
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`should the Board institute IPR.
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`In the Petition, Petitioner alleges that various claims of the '779 Patent are
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`obvious based on U.S. Patent Application Publication No. 2006/0110011 by Cohen
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`(“Cohen”) in view of Continuous Biometric Authentication for Authorized Aircraft
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`IPR2017-00767
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`Personnel: A Proposed Design by Carrillo (“Carrillo”) with U.S. Patent No.
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`6,945,870 issued to Gatto (“Gatto”), U.S. Patent Application Publication No.
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`2004/0140354 by Demere (“Demere”), and U.S. Patent No. 6,738,933 issued to
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`Fraenkel (“Fraenkel”).
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`As discussed in detail below, the Board should decline to institute IPR
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`proceedings because each of the above grounds suffers from one or more fatal
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`defects. For example, none of Petitioner’s grounds constitutes a proper basis for
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`requesting IPR because each ground in the Petition relies upon the alleged Carrillo
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`reference, a military document with an unknown date of public release. See 35
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`U.S.C. § 311(b). Further, even ignoring this fatal shortcoming, none of the cited
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`references disclose an “enquiry input, configured to receive … at least one test
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`template complete as originally extracted,” as required by each claim of the ‘779
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`Patent. The Board should accordingly deny the Petition in its entirety.
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`II. BACKGROUND
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`The ‘779 Patent teaches a novel and inventive system for providing global
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`biometric identification services to a plurality of remote parties.
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`With the novel and inventive system of the ‘779 Patent, a remote registering
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`party communicates with the template. The remote registering party sends a
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`registration template complete as originally extracted from a respective biometric
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`sample of an end user of the remote registering party – say from a fingerprint scan
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`of the end user, a face scan, etc. – to the present system. Optionally, the present
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`system is operated by a provider of the global biometric identification services.
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`In a subsequent identification/authentication phase, a remote inquiring party
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`communicating with the template receiver may send a test template, complete as
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`originally extracted from a respective biometric sample of a person, to the system.
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`Consequently, the person may be identified or authenticated using the verifier of the
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`present system, which directly compares the registration template complete as
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`originally extracted with the test template complete as originally extracted and
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`thereby identifies/authenticates the person as an end user.
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`III. THE CARRILLO REFERENCE
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`Carrillo is not a prior art printed publication against the '779 patent because
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`Petitioner has not established that Carrillo qualifies as published or publicly
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`accessible prior to the priority date of the ‘779 Patent. In particular, Petitioner failed
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`to present evidence to establish a reasonable likelihood that the Carrillo reference
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`meets the requirements of “public accessibility” for printed publications, as provided
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`by the Federal Circuit’s recent opinion In re Enhanced Sec. Research, LLC, 739 F.3d
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`1347, 1354 (Fed. Cir. 2014). There, the Federal Circuit explained that a document
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`is a printed publication only if it is sufficiently accessible “to those interested in the
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`art exercising reasonable diligence.” Id. at 1354 (quoting In re Hall, 781 F.2d 897,
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`900 (Fed. Cir. 1986)). “[A]ccessibility goes to the issue of whether interested
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`members of the relevant public could obtain the information if they wanted to.” Id.
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`(quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir.
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`1988)).
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`At the institution stage, the Board must determine whether a petitioner has
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`“demonstrated a reasonable likelihood that the reference is a prior art ‘printed
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`publication.’” Silver Peak Sys., Inc. v. Riverbed Tech., Inc., IPR-2014-00149, 2014
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`WL 1784058, at *15 (P.T.A.B. May 2, 2014) (Exhibit 2008). “To determine whether
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`to deny a ground on the basis that a reference is not a ‘printed publication,’ [the
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`Board] decide[s] each case on the basis of its own facts. More specifically, the
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`determination of whether a given reference qualifies as a prior art ‘printed
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`publication’ involves a case-by-case inquiry into the facts and circumstances
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`surrounding the reference’s disclosure to members of the public.” EMC Corp. v.
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`PersonalWeb Technologies, LLC, IPR-2013-00087, 2013 WL 8595566, *7
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`(P.T.A.B. May 17, 2013) (Exhibit 2009). A reference is a “printed publication” only
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`“upon a satisfactory showing that such document has been disseminated or otherwise
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`made available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art, exercising reasonable diligence, can locate it and recognize and
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`comprehend therefrom the essentials of the claimed invention without need of
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`further research or experimentation.” In re Wyer, 655 F.2d 221, 226 (C.C.P.A.
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`1981). In Elec. Frontier Foundation v. Personal Audio, LLC, the Board concluded
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`that the petitioner had not established a reasonable likelihood that an Internet
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`reference qualified as prior art where evidence was lacking that a person of ordinary
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`skill in the art could have found the reference. IPR2014-00070, 2014 WL 1604334,
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`*11-*13 (P.T.A.B. Apr. 18, 2014). The Federal Circuit also advises courts to
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`consider whether the alleged publication was “catalogued or indexed in a meaningful
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`way.” SRI Intern., Inc. v. Internet Sec. Systems, Inc., 511 F.3d 1186, 1197 (Fed. Cir.
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`2008) (“[O]n summary judgment, this court finds that the prepublication Live Traffic
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`paper, though on the FTP server, was not catalogued or indexed in a meaningful way
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`and not intended for dissemination to the public.”). Under the foregoing principles,
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`Petitioner’s Carrillo reference fails to qualify as a prior art printed publication.
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`The Carrillo reference is a Master’s Thesis by Cassandra M. Carrillo from the
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`Naval Postgraduate School in Monterey, California. While Carrillo lists a “Report
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`Date” of June 2003 (Ex.1006 at p. 3), the reference also includes numerous features
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`that indicate it was kept classified for a period of time before the report was
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`published. As an example, the report has been stamped “Approved for public
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`release” on pages 1 and 5 of the thesis, which indicates that the reference went
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`through an approval process before it was released to the public. Further, an “Initial
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`Distribution List” is identified on pages 111 through 113 of the Carrillo reference,
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`indicating that the Carrillo reference was not disseminated to the public upon its
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`purported “report date.” Notably, the Carrillo reference does not include a
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`publication date, and Petitioner has provided no evidence regarding the actual
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`publication date of the Carrillo reference. Thus, Patent Owner respectfully requests
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`that the Board treat Carrillo as an undated reference and decline to institute IPR on
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`any grounds that relies upon the Carrillo reference.
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`IV. PLURALITY OF PARTIES
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`Each claim of the ‘779 Patent requires both “a registration input configured
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`to receive from at least one remote registering party … at least one registration
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`template” and “an enquiry input, configured to receive from a remote inquiring party
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`… at least one test template ….”
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`It is well established that where a claim lists elements separately, “the clear
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`implication of the claim language” is that those elements are “distinct components”
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`of the patented invention. Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP,
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`616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284,
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`1288 (Fed. Cir. 2004)).
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`The specification and figures of the ‘779 Patent further emphasize that the
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`system is configured to receive templates from two distinct parties. See, e.g., Fig. 1
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`of the ‘779 Patent, below:
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`In contrast to the system claimed in the ‘779 Patent, the Cohen reference fails to
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`disclose templates received from distinct parties. This lack of disclosure in the
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`Cohen reference is best highlighted by Petitioner relying on the exact same portion
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`of Cohen for both the “registration input configured to receive from at least one
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`remote registering party” and “enquiry input, configured to receive from a remote
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`inquiring party” limitations:
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`Fig. 1 of Cohen, discloses “[w]hen a user request for access to an
`application is received, web server 140 forwards the user request to a
`desired application on application server 150 and passes responses back
`to the user.” (Exhibit 1005, ¶[0051].) Accordingly, Cohen discloses a
`template receiver that incudes “a registration input configured to
`receive [from at least one remote registering party]… at least one
`registration template.” (Exhibit 1002, ¶[0112].)
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`***
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`Fig. 1 of Cohen, discloses “[w]hen a user request for access to an
`application is received, web server 140 forwards the user request to a
`desired application on application server 150 and passes responses back
`to the user.” (Exhibit 1005, ¶[0051].) Accordingly, Cohen discloses a
`template receiver that incudes “an enquiry input, configured to receive
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`[from a remote inquiring party]… at least one test template.” (Exhibit
`1002, ¶[0128].)
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`(Petition at pp. 38 and 44)
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`To establish prima facie obviousness of a claimed invention, all the claim
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`limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981,
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`984-85 (C.C.P.A. 1974). Petitioner’s proposed grounds of rejection should be
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`denied because the Petition has failed to demonstrate that the Cohen reference, alone
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`or in combination with the other references, discloses both “a registration input
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`configured to receive from at least one remote registering party … at least one
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`registration template” and “an enquiry input, configured to receive from a remote
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`inquiring party … at least one test template ….”
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`V. COMPLETE AS ORIGINALLY EXTRACTED
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`Each claim of the ‘779 Patent requires “a registration input, configured to
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`receive from at least one remote registering party … at least one registration template
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`complete as originally extracted from a respective biometric sample of a person ….”
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`a The Cohen Reference
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`Regarding the Cohen reference, Petitioner contends that:
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`Cohen discloses a “template complete as originally extracted from a
`respective biometric sample” where the phrase is construed as an
`“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” (Exhibit 1002, ¶[0118].) Cohen teaches extracting a template
`from a biometric sample using an algorithm where “key features of the
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`digital template derived from the grayscale image produced by the
`device are compared to a database containing digital templates of
`authorized users.” (Exhibit 1005, ¶[0009].) Cohen discloses that
`“ERRIFIC 221 may capture a live sample image, e.g., a grayscale
`image, of the user's fingerprint from biometric imager 210” and that
`“ERRIFIC 221 may then run an extraction routine on the sample image
`to create an advanced fingerprint template (AFIT).” (Exhibit 1005,
`¶[0065].)
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`(Petition at p. 41.)
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`Contrary to Petitioner’s assertions, the Cohen reference does not disclose a
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`registration input that receives, from a remote party, a template complete as
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`originally extracted. Indeed, in the Cohen document, all references that received
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`templates are either silent in regards to, or specifically teach away from, receiving
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`templates complete as originally extracted.
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`
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`The Cohen reference specifically teaches the importance of modifying or
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`amending templates before they are transmitted if “the output of the biometric
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`imaging of a fingerprint or extracted template thereof were recorded, that output
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`could conceivably be played back at a later time as a means of attack into the system
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`to gain unauthorized access.” (Exhibit 1005, ¶[0010].) Cohen’s solution to this
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`threat is “a method and system for secure transmission of biometric data by time-
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`stamping the data ….” (Exhibit 1005, ¶[0017].) Cohen specifically teaches that the
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`data has been modified by “encod[ing] the [advanced fingerprint template] AFIT
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`with a server generated time stamp and may encrypt the result into a time-sensitive
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`Transport Units (TU)” (Exhibit 1005, ¶[0066]) or “process[ing] the image (step 740)
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`by first converting it to an AFIT, then encoding the AFIT with a server generated
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`time stamp and encrypting the combined package as a TU.” (Exhibit 1005, ¶[0098].)
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`Figure 8, annotated below and shown on the front cover of the Cohen
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`reference, further illustrates that the system does not include “a registration input,
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`configured to receive from at least one remote registering party … at least one
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`registration template complete as originally extracted” as required by the claims of
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`the ‘779 Patent:
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`At step 815 in Cohen, a template is extracted from an image, but the template is not
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`transmitted complete as originally extracted. Instead, Cohen teaches that the system
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`requests the current time, receives a response from a network server, and then
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`amends the template with the current time at step 830.
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`b The Carrillo Reference
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`Regarding the Carrillo reference, Petitioner contents that:
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`Carrillo also discloses a template complete as originally extracted by
`the use of an image of a biometric sample. For example, Carrillo
`discloses iris recognition where the “scanned digitized pattern is then
`compared to a previously recorded pattern” where “[t]hese stored
`patterns are also called templates.” (Exhibit 1006, p. 28.) Further,
`Carrillo discloses that “[i]n field trial to date, a resolved iris radius
`[image] of 100 to 140 pixels is more typical.” (Exhibit 1006, p. 29.)
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`(Petition at pp. 41-42.)
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`Like the Cohen reference, Carrillo’s statement that the “digitized pattern is
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`then compared to a previously recorded pattern” (Exhibit 1006 at p. 28) is silent as
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`to whether or not templates are compared “complete as originally extracted.”
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`Additionally, the sections of Carrillo cited by Petitioner reference a “flight deck
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`biometric authentication system,” and there is no evidence that the Carrillo system
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`includes “a registration input, configured to receive from at least one remote
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`registering party” a template. Petitioner attempts to address this issue by stating “as
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`discussed
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`in Carrillo, biometric
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`identification has
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`‘been used
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`for a
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`long time and is routinely used in forensic laboratories and identification units all
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`around the world.’” (Exhibit 1006 at p. 31.) However, the use of biometric
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`identification at individual locations around the world does not teach the claimed
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`“registration input, configured to receive from at least one remote registering party.”
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`As stated, to establish obviousness of a claimed invention, all the claim
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`limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d at
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`984-85. In addition, all words in a claim must be considered in judging the
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`patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385
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`(C.C.P.A. 1970). Petitioner has failed to show that the Cohen and Carrillo
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`references, alone or in combination, disclose “a registration input, configured to
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`receive from at least one remote registering party … at least one registration template
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`complete as originally extracted.” Accordingly, Petitioner’s request should be
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`denied on proposed grounds 1-4.
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`VI. CONCLUSION
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`For the foregoing reasons, there is no reasonable likelihood of Petitioner
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`prevailing with respect to even one of its alleged grounds of unpatentability
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`concerning any of the challenged claims of the ‘779 Patent. The Board should
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`therefore deny the Petition in its entirety.
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`As noted above, should the Board discern any institutable ground of the
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`present Petition, Patent Owner reserves any and all rights to respond to the claim
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`constructions, arguments, exhibits, and supporting declaration materials currently of
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`record.
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`Dated: May 8, 2017
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`Respectfully submitted,
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`/Brian P. Lynch/
`Brian P. Lynch
`Registration No. 58,794
`blynch@niro-mcandrews.com
`NIRO MCANDREWS, LLC
`200 West Madison Street, Suite 2040
`Chicago, Illinois 60606
`Telephone: (312) 755-8581
`Fax: (312) 674-7481
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`
`Representative for Patent Owner
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that on the below date, I caused the foregoing
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`to be served upon the following counsel of record via electronic mail (with counsel's
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`agreement):
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`Dated: May 8, 2017
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`Robert W. Molitors, Reg. No. 66,726
`Adam M. Treiber, Reg. No. 48,000
`Miles & Stockbridge P.C.
`1751 Pinnacle Drive, Suite 1500
`Tysons Corner, VA 22102
`703.903.9000
`rmolitors-PTAB@MilesStockbridge.com
`atreiber@MilesStockbridge.com
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`
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`
`
`/Brian P. Lynch/
`Brian P. Lynch
`Registration No. 58,794
`blynch@niro-mcandrews.com
`NIRO MCANDREWS, LLC
`200 West Madison Street, Suite 2040
`Chicago, Illinois 60606
`Telephone: (312) 755-8581
`Fax: (312) 674-7481
`
`
`Representative for Patent Owner
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`CERTIFICATION OF WORD COUNT
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`The undersigned hereby certifies that the word count for the foregoing
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`Patent Owner Preliminary Response is less than 3027 words.
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`Dated: May 8, 2017
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`/Brian P. Lynch/
`Brian P. Lynch
`Registration No. 58,794
`blynch@niro-mcandrews.com
`NIRO MCANDREWS, LLC
`200 West Madison Street, Suite 2040
`Chicago, Illinois 60606
`Telephone: (312) 755-8581
`Fax: (312) 674-7481
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`Representative for Patent Owner
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