`
`
`IPR2019-00478 Petition
`
`U.S. 6,213,391
`
` DOCKET NO.: 698162.0005
`Filed on behalf of Unified Patents Inc.
`By: Cono A. Carrano (Reg. No. 39,623)
`(ccarrano@akingump.com)
`
`
`(cgordon@akingump.com)
`
`Clark Gordon (Reg. No. 74,706)
`
`Akin Gump Strauss Hauer & Feld LLP
`1333 New Hampshire Avenue, NW
`Washington, DC 20036
`telephone: (202) 887-4000
` Ashraf Fawzy (Reg. No. 67,914)
`(afawzy@unifiedpatents.com)
`
`
`(jonathan@unifiedpatents.com)
`
`Jonathan Stroud (Reg. No. 72,518)
`
`Unified Patents Inc.
`1875 Connecticut Avenue, NW, Floor 10
`Washington, DC 20009
`telephone: (202) 871-0110
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`UNIFIED PATENTS INC.,
`Petitioner
` v.
`VINDOLOR, LLC,
`Patent Owner
`
`IPR2019-00478
`Patent 6,213,391
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,213,391
`CHALLENGING CLAIMS 1-2
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`CONTENTS
`Introduction .................................................................................................... 1
`I.
`II. Mandatory Notices, Standing, and Fees ...................................................... 1
`Real Party-In-Interest....................................................................................... 1
`Related Matters ................................................................................................ 1
`Lead and Backup Counsel ............................................................................... 3
`Service Information ......................................................................................... 3
`Certification of Grounds for Standing ............................................................. 3
`Fees 4
`III.
`Invalidity Grounds ......................................................................................... 4
`IV. The Board Should Not Deny This Petition Under 35 U.S.C. §
`325(d) ............................................................................................................... 5
`Technology Background ................................................................................ 6
`V.
`VI. U.S. 6,213,391 ................................................................................................. 7
`A.
`Summary ............................................................................................... 7
`B.
`Level of Ordinary Skill in the Art ....................................................... 20
`C.
`Claim Construction ............................................................................. 21
`VII. The Challenged Claims are Unpatentable ................................................ 26
`A. GROUND 1: Gullman anticipates Claims 1 and 2 ............................. 26
`1.
`Overview of Gullman ............................................................... 26
`2.
`Independent Claim 1 ................................................................. 30
`3.
`Dependent Claim 2 ................................................................... 44
`B.
`GROUND 2: Gullman in view of the knowledge of a POSITA
`renders obvious Claims 1 and 2 .......................................................... 45
`1.
`Independent Claim 1 ................................................................. 45
`2.
`Dependent Claim 2 ................................................................... 48
`C.
`GROUND 3: Lane in view of Drexler renders obvious Claims 1
`and 2 .................................................................................................... 49
`1.
`Overview of Lane ...................................................................... 49
`2.
`Overview of Drexler ................................................................. 54
`3.
`Drexler and Lane are Analogous Art ........................................ 60
`4.
`Rationales to Combine Lane and Drexler ................................. 61
`Independent Claim 1 ................................................................. 65
`5.
`Dependent Claim 2 ................................................................... 80
`6.
`VIII. Conclusion .................................................................................................... 82
`
`i
`
`

`

`
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`IPR2019-00478 Petition
`
`U.S. 6,213,391
`
`EXHIBITS
`Description
`U.S. Patent No. 6,213,391 (the “’391 Patent”)
`Declaration of Dr. Creed Jones
`Petitioner’s Voluntary Interrogatory Responses
`U.S. Patent No. 5,280,527 (“Gullman”)
`U.S. Patent No. 5,623,552 (“Lane”)
`U.S. Patent No. 5,457,747 (“Drexler”)
`File History for the ’391 Patent
`
`ii
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`INTRODUCTION
`I.
`Petitioner Unified Patents Inc. (“Unified” or “Petitioner”) requests inter
`partes review (“IPR”) of claims 1-2 of U.S. Patent No. 6,213,391 (the “’391
`Patent”). (Ex-1001).
`The challenged claims are unpatentable based on the disclosures in at least the
`references presented in this Petition and as supported by the declaration of Dr. Creed
`Jones.
`II. MANDATORY NOTICES, STANDING, AND FEES
`Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Unified is the real
`party-in-interest, and further certifies that no other party exercised control or could
`have exercised control over Unified’s participation in this proceeding, the filing of
`this petition, or the conduct of any ensuing trial. In view of Worlds Inc. v. Bungie,
`Inc., 903 F.3d 1237, 1242-44 (Fed. Cir. 2018), Unified has submitted voluntary
`discovery in support of its certification. (See Ex-1003).
`Related Matters
`Petitioner is aware of the following cases involving the ’391 Patent:
` Vindolor, LLC v. Petco Animal Supplies, 2:18-cv-00481 (E.D. Tex.);
` Vindolor, LLC v. Discount Tire Company of Texas, Inc., 2:18-cv-00480
`(E.D. Tex.);
`1
`
`

`

`
`
`
`
`IPR2019-00478 Petition
`
`U.S. 6,213,391
`
` Vindolor, LLC v. Spec's Family Partners, Ltd., 6:18-cv-00107 (W.D.
`Tex.);
` Vindolor, LLC v. Retail Services & Systems, Inc., 6:18-cv-00108 (W.D.
`Tex.);
` Vindolor, LLC v. Euromarket Designs Inc., 6:18-cv-00105 (W.D. Tex.);
` Vindolor, LLC v. Trader Joe's East, Inc., 2:18-cv-00482 (E.D. Tex.);
` Vindolor, LLC v. Restoration Hardware, Inc., 2:18-cv-00373 (E.D.
`Tex.);
` Vindolor, LLC v. NTW, LLC d/b/a National Tire and Battery, 2:18-cv-
`00374 (E.D. Tex.);
` Vindolor, LLC v. Disney Store USA, LLC, 2:18-cv-00375 (E.D. Tex.);
` Vindolor, LLC v. Hat World, Inc., 2:18-cv-00187 (E.D. Tex.); and
` Vindolor, LLC v. Buc-ee’s, Ltd., 6:18-cv-00104 (W.D. Tex.).
`
`2
`
`

`

`
`
`
`
`IPR2019-00478 Petition
`
`U.S. 6,213,391
`
`Lead and Backup Counsel
`Petitioner provides the following designations of counsel:
`Backup Counsel
`Lead Counsel
`Cono A. Carrano (Reg. No. 39,623)
`Ashraf Fawzy (Reg. No. 67,914)
`Akin Gump Strauss Hauer & Feld LLP
`Jonathan Stroud (Reg. No. 72,518)
`1333 New Hampshire Avenue, NW
`Unified Patents Inc.
`Washington, DC 20036-1564
`1875 Connecticut Avenue, NW, Floor 10
`telephone: (202) 887-4000
`Washington, DC 20009
`facsimile: (202) 887-4288
`telephone: (202) 871-0110
`email: ccarrano@akingump.com
`email: afawzy@unifiedpatents.com
`email: jonathan@unifiedpatents.com
`
` Clark Gordon (Reg. No. 74,706)
`Akin Gump Strauss Hauer & Feld LLP
`4 Park Plaza, Suite 1900
`Irvine, CA 92614
`telephone: (949) 885-4200
`facsimile: (949) 885-4101
`email: cgordon@akingump.com
`
` Service Information
`Please address all correspondence and service to the addresses listed above.
`Unified consents to electronic service by email at: ag-upi-vindolor@akingump.com,
`ccarrano@akingump.com, cgordon@akingump.com, afawzy@unifiedpatents.com,
`and jonathan@unifiedpatents.com.
`Certification of Grounds for Standing
`Petitioner certifies under 37 C.F.R. § 42.104(a) that the ’391 Patent is
`available for IPR and that Petitioner is not barred or estopped from requesting this
`review.
`3
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`Fees Under 37 C.F.R. § 42.103(a), Petitioner authorizes the Office to charge the fee
`set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 50-6990, as well as any
`additional fees that might be due in connection with this Petition.
`III.
`INVALIDITY GROUNDS
`The ’391 Patent was filed on September 10, 1997 and issued on April 10,
`2001. For the purposes of this Petition only, and without waiver, Petitioner has
`assumed September 10, 1997 as the earliest effective filing date.1
`Pursuant to 37 C.F.R. § 42.22(a)(1) and §§ 42.104(b)(1)-(2), Petitioner
`requests review of the challenged claims in view of the following prior art
`references:
` U.S. Patent No. 5,280,527 (“Gullman”) (Ex-1004) was filed on April 14,
`1992 and issued on January 18, 1994. Gullman qualifies as prior art at
`least under 35 U.S.C. § 102(a), (b), and (e).
` U.S. Patent No. 5,623,552 (“Lane”) (Ex-1005) was filed on August 15,
`1995 and issued on April 22, 1997. Lane qualifies as prior art at least under
`35 U.S.C. § 102(a) and (e).
`
`1 The ’391 Patent was filed before March 16, 2013. Accordingly, the pre-AIA
`provisions of Title 35 apply.
`4
`
`

`

`
`
`
`
`
`
`
`IPR2019-00478 Petition
`U.S. 6,213,391
`
` U.S. Patent No. 5,457,747 (“Drexler”) (Ex-1006) was filed on January 14,
`
`1994 and issued on October 10, 1995. Drexler qualifies as prior art at least
`
`under 35 U.S.C. § 102(a), (b), and (e).
`
`Petitioner requests review on the following grounds:
`
`Ground
`1
`
`Proposed Statutory Rejections for the ’391 Patent
`Gullman anticipates Claims 1 and 2 under 35 U.S.C. § 102(a), (b), and
`(e).
`
`2
`
`3
`
`Gullman in view of the knowledge of a person of ordinary skill in the
`art (“POSITA”) renders obvious Claims 1 and 2 under 35 U.S.C. §
`103(a).
`
`Lane in view of Drexler renders obvious Claims 1 and 2 under 35
`U.S.C. § 103(a).
`
`IV. THE BOARD SHOULD NOT DENY THIS PETITION UNDER 35
`U.S.C. § 325(d)
`
`The ’391 Patent is not currently involved in a parallel IPR proceeding.
`
`Furthermore, the prior art and arguments presented in this Petition are not the same
`
`or substantially the same as those previously presented to the Office. (See 35 U.S.C.
`
`§ 325(d)). None of the grounds of unpatentability in the current Petition rely upon
`
`exactly the same combination of prior art as the grounds stated in the prosecution
`
`history. (See Ex-1007, pgs. 97-109, 135-149, 170-177). While the examiner cited
`
`Lane as a supplementary reference in the Notice of Allowance, Lane was not the
`
`basis of any substantive rejection during prosecution. (See Id.). In the Notice of
`
`Allowance, the examiner stated that Lane disclosed various elements, discussed
`
`5
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`infra, but did “not teach[] the authenticated signal is an identification specific digital
`signature profile.” (Ex-1007, pg. 174). Petitioner notes that the relevant portion of
`claim 1 of the ’391 Patent, as issued, recites an “identification specific digital
`signature” as opposed to an “identification specific digital signature profile” as
`recited in the Notice of Allowance. (See Ex-1001, cl. 1; Ex-1007, pg. 174 (emphasis
`added)). Thus, the examiner made no express statement regarding whether Lane
`discloses an “identification specific digital signature” of the issued claims. Further,
`Petitioner is not relying on Lane for this particular claim limitation.
`Therefore, the Petitioner respectfully submits that the Board should not
`exercise its authority to preclude this Petition under § 325(d).
`V. TECHNOLOGY BACKGROUND
`The advent of computers and the Internet brought “a vast increase in [systems
`that conduct] … private electronic transactions.” (Ex-1001, 1:15-18; Ex-1002, ¶21).
`Such transactions include financial services, such as “home banking,” “the use of
`automatic teller machines” (ATMs), and “computerized stock transactions;” “home
`shopping;” “telephone access and
`transactions;” “security entrances;” and
`“identification cards” for services like healthcare or insurance. (Ex-1001, 1:22-33;
`Ex-1002, ¶21). Correspondingly, these systems provided security measures to
`identification/authentication and safeguard access
`ensure user
`to private
`information, resources, and secured objectives such as “an ATM machine, security
`6
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`gate or door,” “bank account, restricted room, database” or anything which could
`require restricted access. (Ex-1001, 3:51-53; 8:36-41; Ex-1002, ¶21).
`While improvements in technology and the use of the Internet increased the
`number of private transactions, it was recognized that information transmitted
`electronically could be intercepted and used by unauthorized parties. (Ex-1001,
`1:34-44). Accordingly the industry saw a need for additional security. (Id.; Ex-1002,
`¶22). For instance, industry articles published well before the ’391 Patent’s effective
`filing date, discussed the conventional use of a Personal Identification Number
`(“PIN”) to authenticate ATM and credit card-holders. (Ex-1002, ¶22). These articles
`also discussed card security measures based on the identification of biometric
`characteristics, such as retina or fingerprint recognition, or other user-distinct
`characteristics like personal signatures. (Ex-1002, ¶¶22-32).
`VI. U.S. 6,213,391
`A. Summary
`The ’391 Patent generally relates to a portable system for electronic personal
`identification and authentication using a uniquely identifying trait of the user, such
`as biometric information, and purports to combine code and identification
`technologies to further increase security of electronic devices. (Ex-1001, 1:6-12,
`3:37-45; Ex-1002, ¶¶33-56).
`7
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`Prior Art Deficiencies
`The ’391 Patent addresses purported problems of security and portability that
`existed in prior art systems (or devices). (Ex-1001, 3:37-45; Ex-1002, ¶¶36-40). For
`example, the ’391 Patent acknowledges prior art systems that used “a password or
`… PIN that identifie[d] a person as one authorized to conduct [the] specific
`transaction.” (Ex-1001, 1:44-47; Ex-1002, ¶¶37-40). For example, a user would
`enter a generic PIN code at an ATM to access a bank account associated with an
`ATM card. (Ex-1001, 1:47-54; Ex-1002, ¶37).
`According to the ’391 Patent, a generic PIN code at the time, while helpful in
`providing security, was “not sufficiently unique to provide adequately reliable [user]
`identification.” (Ex-1001, 1:63-65). In particular, a generic PIN code system could
`not “distinguish between users actually authorized [for access], and unauthorized
`users that have discovered the correct PIN code.” (Ex-1001, 2:19-22). This is
`because a generic PIN did “not truly identify the [user], but allow[ed] access to
`anyone … who also enter[ed] the correct [PIN].” (Ex-1001, 2:10-14). In other
`words, generic PIN code systems, or other systems implementing a “specific, pre-
`determined access code,” “fail[ed] to provide a means for positively identifying the
`user as an authorized user as a condition precedent to granting access to [a] secure
`objective.” (Ex-1001, 2:23-33; Ex-1002, ¶38). Therefore, an unauthorized person
`8
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`may still gain access to a secure objective2 by simply discovering the correct PIN or
`access code. (Ex-1001, 1:65-2:2; Ex-1002, ¶38). Thus, PIN systems were well-
`known, as were their benefits and drawbacks. (Ex-1002, ¶¶37-40).
`The ’391 Patent also acknowledges that known prior art systems provided
`“means for identification based on a biometric trait unique to specific users.” (Ex-
`1001, 2:34-36). These means included “voice identification, fingerprint analysis,
`retina scan, or DNA analysis” (i.e., “biometric identification” or “biometric
`analysis”). (Ex-1001, 2:36-38; 3:41, 5:31; Ex-1002, ¶39). Systems implementing
`biometric analysis could “more accurately identify specific persons” through their
`biometric characteristics and could be overcome the security flaws of generic PIN
`code systems. (Ex-1001, 2:40-41; 2:34-36; Ex-1002, ¶39).
`According to the ’391 Patent, biometric prior art systems also had several
`drawbacks, including that at the time, they required “expensive, onsite identification
`devices or systems,” such as independent terminals for authorization. (Ex-1001,
`5:35-38; see also id., 1:55-2:33, 2:52-67, 3:11-16, 3:27-34, 4:18-25, 5:35-44, 5:64-
`6:14 (discussing other prior art limitations); Ex-1007, pg. 117). The patent suggests
`
`2 As disclosed, a secure objective may be “an ATM machine, security gate or
`door,” “bank account, restricted room, database” or anything which would require
`restricted access. See Section V (Technology Background).
`9
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`these systems were not integrated into a single device and were generally not
`portable. (Ex-1007, pg. 153). Here too, the benefits and drawbacks of such prior art
`systems were well-known. (Ex-1002, ¶¶36-40).
`The ’391 Patent Disclosed Subject Matter
`The ’391 Patent is directed to portable security systems for electronic
`transactions involving both PIN codes and biometric data sensors. (Ex-1001, 3:37-
`46; Ex-1002, ¶¶41-56). It discloses a “card or other small portable device that
`contains a device which positively identifies the cardholder as an authorized or
`unauthorized user,” as illustrated in Figure 3, reproduced below. (Ex-1001, 3:47-53,
`Fig. 3). All of the admittedly known components necessary to perform authorization
`are enclosed in the same device, which is “of sufficient dimensions to be portable.”
`(Ex-1001, 7:35-36; Ex-1007, pg. 154; Ex-1002 ¶41). “[T]he card itself receives
`biometric data through the inputs, and compares it with information stored in the
`card’s memory to determine if the user utilizing the card is an authorized user, and
`the card will output … an access code.” (Ex-1007, pg. 154).
`
`10
`
`

`

`
`
`
`
`
`
`
`IPR2019-00478 Petition
`U.S. 6,213,391
`
`
`
` As illustrated in Figure 1, reproduced below, the card or portable device
`includes a verifying means 2,3 a code generator 5, a storage medium 6, a memory
`chip 7, and various inputs and output (e.g., inputs 12, 14 and outputs 10, 11). (Ex-
`1001, 7:40, 8:16, 8:38, 8:49, Fig. 1).
`
`3 The ’391 Patent specification refers to “verifying means 2” as “analyzing
`means 2” interchangeably. See, e.g., Ex-1001, 7:46-49, 7:50-52, 7:54-59.
`11
`
`

`

`
`
`
`
`
`
`
`IPR2019-00478 Petition
`U.S. 6,213,391
`
`
`During prosecution the examiner noted that the prior art of record did not
`disclose “inputs, outputs, verifying means, and code generator … all on the same
`device” (or card) such that the device is “a portable self-authenticating system.”
`(Ex-1007, pg. 154 (emphasis in original)). In other words, the components of the
`card were well-known in the prior art and utilized in security systems. (Ex-1002,
`¶56). The alleged invention, however, combine those components onto a card such
`that “[t]he card itself performs the authorization” which “allow[ed] the user to verify
`his identity” in a flexible manner and “eliminat[ed] the need for expensive, onsite
`identification devices or systems.” (Ex-1001, 5:29-40; Ex-1007, pg. 155). However,
`the examiner did not have all the references discussed herein before them.
`12
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`
`In operation, verifying means 2 “create[s] an initial representation of the
`potential user’s identification profile.” (Ex-1001, 7:60-64). The ’391 Patent
`discloses taking raw data representing a unique characteristic of a user and
`generating an “identification profile” based on that data. (Ex-1001, 7:42-46; Ex-
`1002, ¶44). As disclosed, the “identification profile” can be a “digital representation
`of some uniquely identifying trait of the user,” such as the user’s voice, DNA, iris,
`retina, palm print, or fingerprint. (Ex-1001, 3:55-58, 4:44-45, 7:48-59). For
`example, an “identification profile created (or received) … may be a numeric,
`alphanumeric, or other digital representation of the user’s unique biometric or digital
`signature.” (Ex-1001, 3:65-4:2).
`The ’391 Patent discloses how the card (device) may obtain an “identification
`profile” by at least three different methods. (Ex-1002, ¶¶45-50). For example, in
`one embodiment, input 12 receives raw data from a user. (Ex-1001, 7:45-52, Fig.
`1). Verifying means 2 then converts the raw data received by input 12 into a “digital
`representation of the potential user’s identification profile.” (Ex-1001, 7:43-52).
`For example, the card (device) may contain a scanner (e.g., a fingerprint scanner)
`which scans a corresponding user characteristic (e.g., a fingerprint) through input
`12. Verifying means 2 then converts the scanned raw data into an identification
`profile. (Ex-1001, 7:45-52).
`13
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`In another embodiment, input 36 of a card (device) receives raw data from an
`outside source. (Ex-1001, 10:8-14, Fig. 2). Verifying means 21 then converts the
`received raw data into an “identification profile.” (Ex-1001, 10:8-14). For example,
`raw data is received from some external source (e.g., an outside fingerprint scanner).
`(Ex-1002, ¶47). The card receives the raw data through input 36 where verifying
`means 21 contained in the device converts the raw data into an “identification
`profile. (Ex-1002, ¶47).
`In another embodiment, input 12 receives a “predigitized identification
`profile” from a source outside the card (device). (Ex-1001, 7:60-65, Fig. 1). For
`example, some means outside the device creates an identification profile externally.
`(Ex-1002, ¶48). Input 12 then receives this external identification profile to be used
`by verifying means 2. (Ex-1002, ¶48).
`Accordingly, a POSITA would have understood the disclosed input to consist
`of an interface to receive data related to user characteristics. (Ex-1002, ¶49). In the
`first embodiment, an interface (e.g., input 12) to a card (device) receives biometric
`data or other characteristics unique to the user (e.g,, a microphone, or a DNA, iris,
`retina, palm, or fingerprint scanner). (Ex-1001, 3:55-61, 7:48-59; Ex-1002, ¶49). In
`the second embodiment, an interface (e.g., input 36) is capable of receiving data
`representing a scanned user characteristic. (Ex-1001, 10:8-14; Ex-1002, ¶49). In
`14
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`the third embodiment, an interface (e.g., input 12) is capable of receiving an
`identification profile generated externally. (Ex-1001, 7:64-65; Ex-1002, ¶49).
`A user’s identification profile is used to “determine[] whether the person using
`the card is an authorized user of the card,” shown in annotated Figure 1 below. (Ex-
`1001, 7:40-42). “After determining the potential user’s [identification] profile,
`verifying means 2 … obtains any authorized profiles … from the built in storage
`medium 6, and then compares the stored profile to the potential user’s
`[identification] profile.” (Ex-1001, 8:8-13).
`The ’391 Patent therefore discloses two types of “identification profiles”:
`“spontaneous profiles” and “stored profiles.” (Ex-1001, 8:13-17; Ex-1002, ¶¶50-
`51). “Spontaneous profiles” are profiles that are created when a potential user
`attempts authorization. (Ex-1001, 8:8-13). “Stored profiles” are profiles that have
`been authorized and are used in comparison with “spontaneous profiles.” (Ex-1001,
`8:8-13). The ’391 Patent discloses generating both “spontaneous” and “stored” user
`identification profiles. (Ex-1001, 9:20, 10:52-55; Ex-1002, ¶51).
`The ’391 Patent also discloses various methods to use the results of the profile
`comparisons. (Ex-1002, ¶¶52-53). For example, in one embodiment, based on the
`comparison, the verifying means 2 “generates a ‘Positive ID’ signal” or a “‘Negative
`ID’ signal on signal line 3,” which is “output at output port 10” to inform “whether
`the potential user is authorized to use the card.” (Ex-1001, 8:13-28). In particular,
`15
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`“[o]utput port 10 transmits the ‘Positive ID’ signal or ‘Negative ID’ signal to the
`program, circuitry or other device associated with the secure objective that
`ultimately grants or denies access to the secure objective.” (Ex-1001, 8:25-28).
`
`
`
`In another embodiment, “[c]ode generator 5 transforms the user’s unique
`identification profile into a specific code which may be assigned to a user’s specific
`secure objective,” shown in annotated Figure 1 below. (Ex-1001, 8:36-41). In other
`words, the ’391 Patent discloses “the creation of unique, secure PIN codes for use
`as preliminary or secondary verification of identification.” (Ex-1001, 5:41-43). To
`do so, “[s]ignal line 4 transmits the [potential user’s] identification profile …
`determined by verifying means 2 to code generator 5.” (Ex-1001, 8:36-38). “[C]ode
`16
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`generator 5 uses an algorithm obtained from memory chip 7 to convert user’s unique
`identification profile into an access code associated with the secure objective.” (Ex-
`1001, 8:42-45). For example, in ATM applications, the code generator 5 “would
`convert the user’s unique identification profile into a four digit numeric personal
`identification number (PIN) code, which could then provide access to the account.”
`(Ex-1001, 8:45-49).
`
`
`During prosecution, the patent owner highlighted that the “code generated by
`code generator 5 … is based on the user’s actual [biometric characteristic] profile”
`so that the user’s profile and the access code are “functionally connected.” (Ex-
`1001, 9:12-13; Ex-1007, pgs. 123-124). Specifically, in the verification process, the
`17
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`user’s profile may be algorithmically “transformed … into a [distinctive and user-]
`specific code.” (Ex-1001, 5:45-53; Ex-1002, ¶54). “Once the user’s unique
`identification profile has been transformed into an appropriate access code by code
`generator 5, the access code is output to output port 11 where it may be received by
`a secure objective to determine whether access is granted.” (Ex-1001, 8:66-9:3).
`Therefore, even if “during use by an unauthorized user, the verifying means 2
`improperly sends a ‘positive ID’ signal, … the code generated by code generator 5
`… would not match the code assigned to the authorized user’s account” because the
`generated code is based on the unauthorized user’s identification profile. (Ex-1001,
`9:10-15).
`
`In another embodiment, the disclosed system includes an encrypting means
`24, shown in annotated Figure 2 below. (Ex-1001, 10:33). The encrypting means
`24, which may include well-known algorithms and methods, can be used “to
`securely encrypt … the access codes generated by code generator 23.” (Ex-1001,
`10:34-37; Ex-1002, ¶55). “Secure encryption by encrypting means 24 ensures that
`… access codes may not be intercepted upon transmission between the [card] and
`[the secured objective].” (Ex-1001, 10:37-40; Ex-1002, ¶55).
`
`18
`
`

`

`
`
`
`
`
`
`
`IPR2019-00478 Petition
`U.S. 6,213,391
`
`
`
`
`
`Independent claim 1 recites:
`
`A portable identification system comprising
`1.P
`
`a storage medium for storing electronic data;
`1.1
`
`one or more inputs;
`1.2
`
`one or more outputs;
`1.3
`
`a verifying means for determining user authorization or
`1.4
`non-authorization,
`19
`
`

`

`
`
`
`
`IPR2019-00478 Petition
`
`U.S. 6,213,391
`
`
`said verifying means receiving data from at least one of
`1.5
`said one or more inputs, which data is derived from biometric or
`other distinctive characteristics of the user,
`said verifying means generating an identification profile
`
`1.6
`for each user, wherein said identification profile is determined
`from said data,
`
`and a code generator employing at least one code
`1.7
`generating algorithm for generating one or more access codes
`based upon said identification profile wherein at least one of the
`said one or more access codes is an identification specific digital
`signature.
` B. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art at the time of the filing of the earliest
`priority application for the ’391 Patent, i.e., September 10, 1997, (a “POSITA”)
`would have had at least a Bachelor’s degree in Computer Science, Computer
`Engineering, or Electrical Engineering, and two to three years of experience with
`user identification/authentication systems or cards (devices), including the use of
`biometric information. (Ex-1002, ¶¶67-70). More work experience could substitute
`for education, and vice versa. (Ex-1002, ¶¶67-70).
`20
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`C. Claim Construction4
`For purposes of this Petition, other than as provided below, Petitioner submits
`that no explicit construction (beyond plain and ordinary meaning under the Phillips
`standard) is required.5 (Ex-1002, ¶¶71-80).
`Claim 1 recites a portable identification system comprising … a verifying
`means. Use of the term “means for” or “means” in a claim gives rise to the rebuttable
`presumption that the patent owner intended to claim functional limitations under 35
`U.S.C. § 112, ¶6.6 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
`2015). Here, claim 1 recites a verifying means, giving rise to the presumption that
`
`4 ’391 Patent claim language is in bold and italic text.
`5 Should the Patent Owner, to avoid the prior art, contend that a claim term
`has a construction different from its plain and ordinary meaning, the appropriate
`course is for the Patent Owner to seek to amend the claim to expressly correspond
`to its contentions in this proceeding. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
`6 Because the ’391 Patent was filed before the effective date of revisions to 35
`U.S.C. § 112 made by the AIA, the prior version of § 112 controls. See MobileMedia
`Ideas LLC v. Apple Inc., 780 F.3d 1159, 1168 n.3 (Fed. Cir. 2015) (applying the pre-
`AIA version of 35 U.S.C. § 112 ¶ 6).
`21
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`§ 112, ¶6 applies. Accordingly, Petitioner provides a claim construction under the §
`112, ¶6 framework.7
`When construing a means-plus-function limitation, the claimed function must
`be identified, and the corresponding disclosure of structures capable of performing
`the claimed function and their equivalents must be identified. Med. Instrumentation
`& Diagnostics Corp. v. Elektra AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Where
`the disclosed structure is programmed or designed to carry out specialized functions,
`the disclosed structure “cannot be implemented in a general purpose computer, but
`instead must be implemented in a special purpose computer.” Williamson, 792 F.3d
`at 1352. In cases “involving a claim limitation that is subject to § 112, para. 6 that
`must be implemented in a special purpose computer, [the Federal Circuit] has
`consistently required that the structure disclosed in the specification be more than
`simply a general purpose computer or microprocessor.” Id. at 1348. This logic has
`extended to other words such as controllers, modules, mechanism, and elements.
`See id.; Toyota Motor Corp. v. Cellport Sys., Inc., IPR2015-00633. In particular, the
`specification must “disclose an algorithm for performing the claimed function,”
`where an algorithm is “a series of instructions for [a] computer to follow” and a
`
`7 The Board is required by statute to construe means-plus-function claims. See
`IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1369 (Fed. Cir. 2017).
`22
`
`

`

`IPR2019-00478 Petition
`
`
`U.S. 6,213,391
`
`
`
`“sequence of computational steps.” Typhoon Touch Techs., Inc. v. Dell, Inc., 659
`F.3d 1376, 1384 (Fed. Cir. 2011) (citations omitted); Ibormeith IP, LLC v. Mercedes-
`Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013) (citations omitted).
`Algorithms “may be expressed as a mathematical formula, in prose, or as a flow
`chart, or in any other manner that provides sufficient structure.” Williamson, 792
`F.3d at 1348.
`Petitioner submits that the recited functions, corresponding structure, and, to
`the extent necessary