Trials@uspto.gov
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` Paper 9
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`Entered: July 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROMETRIC INC.,
`Petitioner,
`
`v.
`
`I.Q.S. SHALEV LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00767
`Patent 7,773,779 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, MATTHEW R. CLEMENTS, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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` Paper 9
`
`
`Entered: July 26, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PROMETRIC INC.,
`Petitioner,
`
`v.
`
`I.Q.S. SHALEV LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00767
`Patent 7,773,779 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, MATTHEW R. CLEMENTS, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-00767
`Patent 7,773,779 B2
`
`
`This case concerns U.S. Patent No. 7,773,779 B2 (Ex. 1001, “the ’779
`patent”). Petitioner, Prometric Inc., filed a Petition seeking inter partes
`review of claims 1–6, 10, 11, and 14–18 of the ’779 patent (Paper 1, “Pet.”).
`Patent Owner, I.Q.S. Shalev Ltd., filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”).1
`We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`An inter partes review may be authorized only if the information presented
`in the Petition and the Preliminary Response shows that there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one claim
`challenged in the Petition. 35 U.S.C. § 314(a). Applying that standard, we
`institute an inter partes review of claims 1–6, 10, 11, and 14–18 of the ’779
`patent for the reasons and on the grounds set forth below.
`Our determination is based on the record developed thus far, before
`the filing of Patent Owner’s Response. This is not a final decision as to the
`patentability of any challenged claim. Any final decision will be based on
`the full record developed during the trial.
`
`I. BACKGROUND
`A. Related Matters
`Pursuant to 37 C.F.R. § 42.8(b)(2), the parties identify the following
`civil action involving the ’779 patent: IQS US Inc. et al. v. Calsoft Labs
`
`
`1 Patent Owner represents that I.Q.S. Shalev Ltd. is the owner of the ’779
`patent and IQS US Inc. is the exclusive licensee of the ’779 patent. Paper 6,
`2 (Patent Owner’s Mandatory Notices). Consistent with Patent Owner’s
`representation, we modify the case caption provided in the Notice of Filing
`Date Accorded to Petition (Paper 3) to remove IQS US Inc. from the
`identification of Patent Owner. All future filings shall conform to the case
`caption provided in this decision.
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`2
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`Inc., No. 1:16-cv-07774 (N.D. Ill., filed August 2, 2016). Pet. 73; Paper 6, 2
`(Patent Owner’s Mandatory Notices).
`
`B. Petitioner’s References
`Petitioner’s patentability challenges are primarily based on the
`following references:
`Cohen et al., US 2006/0110011, published May 25, 2006 (Ex. 1005,
`“Cohen”);
`Cassandra M. Carrillo, Continuous Biometric Authentication for
`Authorized Aircraft Personnel: A Proposed Design (June 2003)
`(unpublished master’s thesis, Naval Postgraduate School) (Ex. 1006,
`“Carrillo”);2
`Gatto et al., US 6,945,870 B2, issued Sept. 20, 2005 (Ex. 1009,
`“Gatto”);
`Demere, US 2004/0140354, published July 22, 2004 (Ex. 1010,
`“Demere”); and
`Fraenkel et al., US 6,738,933 B2, issued May 18, 2004 (Ex. 1011,
`“Fraenkel”).
`
`
`2 The designation, “unpublished,” follows Bluebook Rule 17.2.2. and is not
`decisive as to whether Carrillo qualifies as a printed publication under
`35 U.S.C. § 102(b) and § 311(b).
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`C. Petitioner’s Asserted Grounds of Unpatentability
`
`
`
`References
`
`1 Cohen and Carrillo
`
`2 Cohen, Carrillo, and Gatto
`
`3 Cohen, Carrillo, and Demere
`
`4 Cohen, Carrillo, and Fraenkel
`
`Basis
`
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`Claim(s)
`
`1–5, 10, 11, 14, 17 and 18
`
`6
`
`15
`
`16
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`D. The ’779 Patent (Ex. 1001)
`The ’779 patent was issued on Application No. 11/583,044, filed
`October 19, 2006. Ex. 1001, [21], [22].
`The ’779 patent relates to a system for providing global biometric
`identification services to a plurality of remote parties. Id. at Abstract, 3:22–
`24. According to the ’779 patent, the global biometric identification services
`may be provided over the Internet to remote subscribers, which are typically
`small businesses or organizations that lack a full end-to-end biometric
`identification system of their own. Id. at 5:60–6:3, 6:64–67; see also id. at
`2:61–15 (explaining that a complete biometric system may be too expensive
`to buy and maintain for a small business, such as a small drugstore chain).
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`Figure 1 of the ’779 patent is reproduced below:
`
`
`Figure 1 of the ’779 patent is a block diagram illustrating a system for
`providing global biometric identification services to a plurality of remote
`parties, which subscribe to the services. Ex. 1001, 5:15–18, 5:64–67, 6:49–
`52. In Figure 1, system 1000 includes template receiver 110, template
`extractor 120, verifier 140, storage 150, and quality monitor 190. Id. at
`6:61–63, 8:7–8, 8:25–26, 8:29–30, 9:40–43.
`Via a registration input, template receiver 110 receives from remote
`registering party 101 registration templates of biometric samples of end
`users 111, e.g., workers or customers, of remote registering party 101. Id. at
`7:1–9, 7:36–42. Each template is received with a tag, e.g., a user number.
`Id. at 7:52–55. Storage 150 stores the registration templates associated with
`the tags. Id. at 8:26–28.
`Via an inquiring input, template receiver 110 receives from inquiring
`party 102 test templates of biometric samples taken from person 121 to be
`verified or identified as an end user of inquiring party 102. Id. at 7:1–2,
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`7:56–60. The test template is optionally received with a claimed tag, e.g., a
`user number. Id. at 7:65–67.
`Template extractor 120 is installed at the premises of remote parties
`101, 102 and extracts a template from a biometric sample, taken from end
`user 111 or from person 121 seeking to be verified as an end user 111. Id. at
`8:9–13. According to the ’779 patent, a template of a biometric sample is a
`binary record created from distinctive information from a biometric sample
`such as a fingerprint image, a face image, or an iris image. Id. at 7:16–18.
`Verifier 140 determines a degree of match between the test template
`of the biometric sample of person 121 and registration templates stored for
`the inquiring party in storage 150. Id. at 8:31–42. Quality monitor 190
`monitors the quality of service provided by system 1000. Id. at 9:44–54.
`
`E. Illustrative Claim
`The ’779 patent includes 25 claims. Claim 1 is the sole independent
`claim. Claims 1–6, 10, 11, and 14–18 are challenged in the Petition. Claim
`1 is reproduced below:
`1. System for providing global biometric identification
`services to a plurality of remote parties, the system comprising:
`a template receiver, comprising
`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, associated with a tag relating said
`registration template to said end user; and
`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
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`extracted from a respective biometric sample of a person;
`and
`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.
`Ex. 1001, 19:11–33.
`
`II. DISCUSSION
`
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Tech.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under that standard, we
`generally give claim terms their ordinary and customary meaning, as
`understood by a person of ordinary skill in the art in the context of the entire
`patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). “Absent claim language carrying a narrow meaning, the PTO
`should only limit the claim based on the specification . . . when [it] expressly
`disclaim[s] the broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
`Cir. 2004). “Although an inventor is indeed free to define the specific terms
`used to describe his or her invention, this must be done with reasonable
`clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Cir. 1994).
`Petitioner provides proposed constructions for a number of terms in
`claim 1 of the ’779 patent. Pet. 12–13. At this stage, Patent Owner neither
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`challenges Petitioner’s proposed constructions nor proposes any
`constructions of its own. See Prelim. Resp. 1.
`Below we discuss the meaning of the terms, “template” and “complete
`as originally extracted,” which appear in claim 1. We also discuss the
`meaning of dependent claim 2. No other claim terms require express
`construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`The constructions we provide below are preliminary. We invite the
`parties to indicate whether they agree or disagree with our preliminary
`constructions and to present arguments and evidence in support of, or in
`opposition to, our preliminary constructions, and/or to propose modifications
`thereof.
`
`Template
`Petitioner contends that “template” should be construed as “a binary
`record created from distinctive information from a biometric sample.”
`Pet. 12. Petitioner contends that a template may be either a condensed or a
`non-condensed form of a biometric sample. Id. at 18.
`Applying a broadest reasonable interpretation, we determine that the
`term, “template,” encompasses both a condensed binary representation of a
`biometric sample and a non-condensed binary representation of a biometric
`sample. Our construction is based on the written description of the ’779
`patent, which states that “[a] template of a biometric sample is a binary
`record created from distinctive information from a biometric sample such as
`a fingerprint image, a face image, an iris image, etc.” Ex. 1001, 7:16–18.
`Our construction is also based on the ’779 patent’s disclosure that
`“[p]referably, the template is a condensed form of the biometric sample” (id.
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`at 7:19–20) and “[o]ptionally, the template is a non-condensed binary
`representation of the biometric sample . . .” (id. at 7:27–28). At this stage,
`neither party directs us to any express definition or disclaimer that narrows
`the meaning of “template” so as to exclude either the condensed form or the
`non-condensed form disclosed in the ’779 patent. Accordingly, we construe
`the term, “template,” as “a condensed or non-condensed binary
`representation of a biometric sample.”
`
`Complete As Originally Extracted
`Petitioner contends that the phrase, “template complete as originally
`extracted,” should be 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.” Pet. 12, 20–21.
`The phrase, “complete as originally extracted,” does not appear in the
`written description of the ’779 patent and was not recited in the claims as
`originally filed. See Ex. 1004, 266–75 (original claims 1–58). The phrase
`was added to claim 1 during prosecution to overcome the Examiner’s
`obviousness rejection. Id. at 10 (Notice of Allowability); id. at 27–30
`(Applicant’s remarks distinguishing amended claim 1’s recitation of
`“complete as originally extracted” from cited art); id. at 42 (amendment to
`claim 1). The meaning of the phrase, “complete as originally extracted,” is
`best understood in the context of the Examiner’s rejection and Applicant’s
`response, as discussed below.
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`
`The Examiner rejected claims 1–6, 8, 10–12, and 14–25 under 35
`U.S.C. § 103(a) as unpatentable over Colella3 in view of Ting.4 Ex. 1004,
`96. The Examiner found that Colella discloses a template receiver
`comprising a registration input and an enquiry input, as recited in
`Applicants’ claim 1, but does not disclose a verifier to determine a degree of
`match between a registration template and a test template. Id. The
`Examiner found that Ting teaches such a verifier and determined that it
`would have been obvious to combine Ting’s teaching with Colella’s. Id. at
`96–97 (citing Ting Fig. 5, step 555 and para. 44).
`In response, Applicants argued that Ting does not teach a verifier that
`compares templates “complete as originally extracted.” In pertinent part,
`Applicants argued:
`Ting rather discloses a challenge-response protocol, where
`a user may be verified as a registered individual upon a sufficient
`degree of match found (step 555) between arbitrarily generated
`modification data and a response vector, as described in
`Paragraph [0044]. Neither the response vector nor the
`modification data corresponds to a template complete as
`originally extracted from a respective biometric sample of the
`person (say the end user), as explicitly put by Ting in the last line
`of Paragraph [0043]: “The transmitted response vector does not
`include a full set of biometric data, so it is not usable if someone
`intercepts it.”
`Actually, the response vector is totally devoid of biometric
`data. All examples provided by Ting, for the response vector,
`include purely numerical values, such as a list of x, y values, a
`
`
`3 Colella, US 2007/0174206 A1, published July 26, 2007 (Ex. 3001,
`“Colella”).
`4 Ting, US 2002/0174347 A1, published Nov. 21, 2002 (Ex. 3002, “Ting”).
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`degree of match, a hash code, etc., rather than biometric data, as
`known in the art. . . .
`That is to say 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.
`Ex. 1004, 29–30 (emphasis in original).
`The prosecution history demonstrates that the phrase, “complete as
`originally extracted,” was added to claim 1 in order to distinguish the
`comparison of templates in Applicants’ claimed system from the comparison
`of non-template data in Ting’s system. Applicants argued that the response
`vector compared in Ting is “totally devoid of biometric data.” Id. at 30.
`In addition to the prosecution history, we rely on the plain and
`ordinary meaning of the words, “complete” (meaning “having all its parts or
`members”)5 and “originally” (meaning “initially”).6
`Accordingly, we construe the phrase, “complete as originally
`extracted” to mean “containing all of the information that initially resulted
`from the process of extracting information.” There is no need to include the
`phrase, “from a biometric sample,” in the construction because this phrase is
`recited in the claim itself. Ex. 1001, 19:18–19, 19:25. For purposes of this
`
`
`5 “Complete, adj.”. OED Online. June 2017. Oxford University Press.
`http://www.oed.com/view/Entry/37656?rskey=9Ov24R&result=1 (accessed
`June 14, 2017). Ex. 3003.
`6 “Initially, adv.”. OED Online. June 2017. Oxford University Press.
`http://www.oed.com/view/Entry/96060?redirectedFrom=initially&
`(accessed June 14, 2017). Ex. 3004.
`
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`Decision, we need not separately construe the word, “extracted,” because
`Petitioner’s references, Cohen and Carillo, use the same word when
`referring to creation of a template. See, e.g., Ex. 1005 ¶ 65; Ex. 1006, 2.
`
`Claim 2
`Claim 2 depends from claim 1 and recites “wherein said template
`receiver is further configured to receive a plurality of registration templates
`from said registering party.”
`Petitioner does not propose an express construction for claim 2, but
`implicitly construes the claim as requiring that the template receiver be
`configured to receive a plurality of registration templates from a single user.
`Pet. 50–51. In our view, claim 2 is broader than Petitioner’s implicit
`construction. The plurality of registration templates recited in claim 2 are
`not necessarily from a single end user. Without departing from the scope of
`claim 2, a registering party may have multiple end users, and the template
`receiver may be configured to receive a plurality of registration templates
`from a registering party, where each template is from a different end user.
`Our construction is supported by claim 1 and the written description
`of the ’779 patent, which demonstrate that a “registering party” is not
`necessarily the same as an “end user.” Ex. 1001, 19:18–19 (claim 1:
`“biometric sample of an end user of said remote registering party . . .”); id. at
`Fig. 1 (showing registering party 101 and end users 111); id. at 7:5–7 (“Each
`registration template belongs to an end user 111 of the remote registering
`party 101.”); id. at 7:36–38 (“The registering party 101 is a remote party,
`who wishes to register templates of biometric samples of his end users 111
`(say his workers, customers, etc).”); id. at 7:43–46 (“For example, a
`registering party 101 may be a small business, such as a Golf Club. The
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`club may register templates of face images of members 111 of the club’s
`closed circle of clients . . .”).
`Accordingly, we construe claim 2 as not requiring a plurality of
`registration templates from a single end user.
`
`B. Level of Ordinary Skill in the Art
`For purposes of this decision, we accept Petitioner’s contention that a
`person of ordinary skill in the art (“POSITA”) would have had a bachelor’s
`degree in computer science, computer engineering, electrical engineering, or
`a closely related field, along with at least two years of experience in
`computer-based image processing systems. Pet. 11. At this stage, the
`Declaration of Creed Jones, Ph.D. (Ex. 1002 ¶¶ 23, 24) is adequate to
`support Petitioner’s contention, which is not challenged in the Preliminary
`Response.
`We also rely on the cited prior art references as reflecting the level of
`ordinary skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`C. Status of Carrillo as a Printed Publication
`Petitioner contends that Carrillo was published in June 2003 and
`qualifies as prior art under 35 U.S.C. § 102(b). Pet. 4, 22. Patent Owner
`opposes. Prelim. Resp. 3–6.
`To qualify as a printed publication under 35 U.S.C. § 102(b), “a
`reference ‘must have been sufficiently accessible to the public interested in
`the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed.
`Cir. 2016) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)).
`“Because there are many ways in which a reference may be disseminated to
`the interested public, ‘public accessibility’ has been called the touchstone in
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`determining whether a reference constitutes a ‘printed publication’ bar under
`35 U.S.C. § 102(b).” Id. (quoting In re Hall, 781 F.2d 897, 898–99 (Fed.
`Cir. 1986)). “A reference will be considered publicly accessible if it was
`‘disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence[] can locate it.’” Id. (quoting Kyocera Wireless Corp.
`v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)). Accessibility
`“goes to the issue of whether interested members of the relevant public
`could obtain the information if they wanted to.” In re Enhanced Security
`Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014) (quoting Constant v.
`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988)). “If
`accessibility is proved, there is no requirement to show that particular
`members of the public actually received the information.” Id. (quoting
`Constant, 848 F.2d at 1569). Under this standard, “even relatively obscure
`documents qualify as prior art so long as the public has a means of accessing
`them.” Id. (citing In re Hall, 781 F.2d at 899).
`Petitioner presents no argument regarding Carrillo’s status as a printed
`publication, but relies on a date appearing on the cover page of the reference
`as the date of publication. Pet. 4, 22. Carrillo appears to be a thesis
`authored by a student at the Naval Postgraduate School in Monterey,
`California. Ex. 1006 (cover page). It is dated “June 2003.” Id. (cover page
`and page i). The document bears the legend, “Approved for public release;
`distribution is unlimited.” Id. (cover page and page iii). The document
`includes a “Report Documentation Page” and an “Initial Distribution List.”
`Id. at i, 93. The list includes 26 entries, the first two of which are “Defense
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`Technical Information Center, Ft. Belvoir, VA” and “Dudley Knox Library,
`Naval Postgraduate School, Monterey, CA.” Id. at 93.
`Patent Owner contends that Petitioner failed to present evidence to
`establish a reasonable likelihood that Carrillo was publicly accessible before
`the priority date of the ’779 Patent. Prelim. Resp. 3–6. Patent Owner
`contends that Carrillo does not include a publication date and that Petitioner
`provided no evidence regarding its publication date. Id. at 5–6. Patent
`Owner contends that the “Approved for public release” legend indicates that
`the reference “was kept classified for a period of time” and “went through an
`approval process before it was released to the public.” Id. at 5. Patent
`Owner further contends that the “Initial Distribution List” indicates that
`Carrillo was not disseminated to the public upon its purported report date of
`June 2003. Id.
`At this stage of the proceeding, “there is a significant difference
`between a petitioner’s burden to establish a ‘reasonable likelihood of
`success’ at institution, and actually proving invalidity by a preponderance of
`the evidence at trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068
`(Fed. Cir. 2016) (quoting 35 U.S.C. § 314(a) and comparing § 316(e)).
`Based on the record before us, we determine that Petitioner’s evidence is
`sufficient to establish a reasonable likelihood that Carrillo qualifies as a
`printed publication. In making this determination, we rely on the June 2003
`date that appears on the front cover and Report Documentation Page of
`Carrillo. Ex. 1006 (cover page and page i). June 2003 predates the priority
`date of the ’779 patent by more than three years. We also rely on Carrillo’s
`initial distribution list, which includes the Defense Technical Information
`Center and the Dudley Knox Library at the Naval Postgraduate School. Id.
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`at 93. Based on the record before us, it is reasonably likely that Carrillo was
`made publicly accessible by either or both of these entities before the
`priority date of the ’779 patent.7 At this stage, we make no determination as
`to whether Petitioner’s evidence is sufficient under the preponderance of the
`evidence standard applicable in any final decision.
`
`D. Petitioner’s Ground 1
`Petitioner contends that claims 1–5, 10, 11, 14, 17, and 18 are
`unpatentable as obvious in view of Cohen and Carillo. Pet. 25–64. Patent
`Owner opposes. Prelim. Resp. 6–12.
`
`1. Cohen (Ex. 1005)
`Cohen is a U.S. patent application published May 25, 2006, and is
`asserted as prior art under 35 U.S.C. § 102(a). Ex. 1005, [43]; Pet. 22.
`Cohen relates to an “enterprise biometric identification/authentication and
`migration system.” Ex. 1005, [57], ¶ 37.
`Figure 1 of Cohen is reproduced below:
`
`
`7 We note that sufficient public disclosure may have been met by other
`modes or venues; our statement here is limited to the evidence before us at
`this time.
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`Cohen Figure 1 shows authentication and identification system 100 in a
`network environment. Ex. 1005 ¶ 47. The user side of the system includes
`biometric imager 110 and workstation 120, which communicates via
`network (e.g., Internet) 130 with the server side of the system, which
`includes web server 140, application server 150, and Unique Identities
`Database (UIDB) 160. Id.
`Figure 2 of Cohen is reproduced below:
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`Patent 7,773,779 B2
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`Cohen Figure 2 shows system architecture and hardware components similar
`to those shown in Figure 1, with additional detail regarding the software
`modules associated with the authentication process. Ex. 1005 ¶ 64. On
`workstation 220 is shown Enhanced Rotation and Reader Interoperable
`Fingerprint Image Capture (ERRIFIC) application 221. Id. On application
`server 250 is shown Advanced Fingerprint Collection Server (AFICS) 261
`and Advanced Fingerprint Matching Server (AFIMS) 262. Id.
`Cohen discloses that, during authentication, ERRIFIC 221 captures a
`live sample image, e.g., a grayscale image, of the user’s fingerprint from
`biometric imager 210 and runs an extraction routine on the sample image to
`create an advanced fingerprint template (AFIT). Id. ¶ 65. According to
`Cohen, ERRIFIC 221 encodes the AFIT with a server-generated time stamp
`and encrypts the result into a time-sensitive Transport Unit (TU), which is
`transmitted over the network to AFICS 261. Id. ¶¶ 66, 68.
`Cohen discloses that AFICS 261 aggregates, queues, and forwards the
`TUs to AFIMS 262. Id. ¶ 69. According to Cohen, AFIMS 262 is a
`matching server for matching fingerprints or other biometric identifiers. Id.
`¶ 70. For each incoming request, AFIMS 262 decrypts the TU and performs
`biometric matching against templates stored in UIDB 260. Id. ¶ 70. Cohen
`discloses that UIDB 260 contains records for all enrolled users, where each
`record includes a UserID and templates for a user’s enrolled fingerprints,
`among other information. Id. ¶ 71.
`Cohen discloses an enrollment process for creating records in the
`UIDB. Id. ¶¶ 121–124, Fig. 10. According to Cohen, using an enrollment
`workstation and associated imaging device, an enrolling user scans each
`finger to create a set of identification reference images. Identification
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`reference templates are then extracted from the identification reference
`images and submitted to AFICS/AFIMS. Id. ¶¶ 123, 124, 135. Both the
`identification reference images and corresponding derived templates are
`stored in the UIDB. Id. ¶ 132.
`
`2. Carrillo (Ex. 1006)
`The prior art status of Carrillo is discussed in Section II.C. above.
`Carrillo proposes a biometric authentication system for identifying and
`authenticating persons in the flight deck of an aircraft. Ex. 1006, xv.
`Carrillo provides the following overview of biometric systems:
`Every biometric device or system of devices includes the
`following three processes: enrollment, live presentation, and
`matching. The time of enrollment is when the user introduces
`his or her biometric information to the biometric device for the
`first time. The enrollment data is processed to form the stored
`biometric template. Later, during the live presentation the user’s
`biometric information is extracted by the biometric device and
`processed to form the live biometric template. Lastly, the stored
`biometric template and the live biometric template are compared
`to each other at the time of matching to provide the biometric
`score or result.
`Id. at 2; see also id. at 4–5 (outlining general requirements for every
`biometric system, including enrollment of users, biometric templates,
`transmission of captured data, and matching). Carrillo discusses multi-
`biometric systems in which one biometric method (e.g., fingerprint
`scanning) is combined with another biometric method (e.g., voice
`recognition) and implemented either in an AND configuration or an OR
`configuration. Id. at 45.
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`3. Claim 1
`Petitioner contends that Cohen teaches all elements of claim 1.
`Pet. 31. More specifically, Petitioner contends that Cohen teaches a
`template receiver (e.g., Advanced Fingerprint Collection Server (AFICS)
`261 as shown in Cohen Figure 2) and a verifier (e.g., Advanced Fingerprint
`Matching Server (AFIMS) 262, as shown in Cohen Figure 2). Pet. 26–27,
`32–48. Petitioner acknowledges that Cohen does not explicitly disclose that
`the template can be a non-condensed binary representation of a biometric
`sample. Id. at 27–28, 31. Petitioner states that, if the Board does not agree
`with Petitioner’s proposed claim construction, then Petitioner relies on
`Carrillo to teach templates consisting of non-condensed digital images. Id.
`at 28, 31–32, 46. Petitioner also cites Carrillo (in addition to Cohen) as
`disclosing a “template complete as originally extracted” (id. at 41–42) and a
`“degree of match” (id. at 49–50). Petitioner contends that it would have
`been obvious to incorporate the use of a non-condensed image template and
`definitions of degree of match, as taught by Carrillo, into a biometric
`template identification system, as taught by Cohen. Pet. 32, 46, 49–50.
`According to Petitioner, the proposed combination is nothing more than a
`use of a known technique (using a fingerprint or iris image and degree of
`match as taught in Carrillo) for expanding similar systems (Cohen’s
`biometric template based identification system and degree of match) ready
`for improvement to yield predictable results. Id.
`In the Preliminary Response, Patent Owner advances three arguments
`to distinguish claim 1 from Cohen and Carrillo. First, Patent Owner argues
`that Cohen fails to disclose templates received from distinct parties. Prelim.
`Resp. 6–8. Second, Patent Owner argues that Cohen does not disclose a
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`registration input that receives a “template complete as originally extracted
`. . . .” Id. at 8–11. Third, Patent Owner argues that Carrillo is silent as to
`whether or not templates are compared “complete as originally extracted”
`and does not teach a remote registering party. Id. at 11–12.
`On this record, we are not persuaded by Patent Owner’s argument that
`claim 1 of the ’779 patent requires templates received from distinct parties.
`Prelim. Resp. 6–7. Patent Owner relies on Figure 1 of the ’779 patent,
`which shows “registering party 101” separate from “inquiring party 102.”
`Id. Contrary to Patent Owner’s argument, nothing in the language of claim 1
`requires the registering party to be distinct from the inquiring party. This is
`consistent with the ’779 patent, which expressly states: “Optionally the
`Registration party and Inquiring party may be the same.” Ex. 1001, 8:4–6.
`The ’779 patent also discloses several examples in which the “registering
`party” and “inquiring party” are the same party, e.g., a drugstore (id. at
`6:16–36), a golf club (id. at 7:43–51), or a football or movie ticket purchaser
`(id. at 18:3–44).
`On this record, we also are not persuaded by Patent Owner’s argument
`that Cohen does not disclose a registration input that receives a “template
`complete as originally extracted.” Prelim. Resp. 9–11. Petitioner contends
`that Cohen discloses a “template complete as originally extracted from a
`respective biometric sample,” pointing to the functionality of Cohen’s
`ERRIFIC 221, which extracts a template from a biometric sample using an
`algorithm. Pet. 41, 45–46 (citing Ex. 1005 ¶¶ 9, 65). Patent Owner argues
`that Cohen discloses
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