Unified Patents Inc. v. Pen-One Acquisition Group, LLC and Equitable IP Corp., LLC, IPR2017-02167, (PTAB Sept. 24, 2017)

Filed on behalf of Unified Patents Inc.
By: W. Todd Baker, Reg. No. 45,265

Marc K. Weinstein, Reg. No. 43,250
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 Duke Street
Alexandria, VA 22314
Tel: (703) 413-3000
Email: cpdocketbaker@oblon.com
Roshan S. Mansinghani, Reg. No. 62,429

Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Tel: (214) 945-0200
Email: roshan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________
Unified Patents Inc.,

Petitioner
v.
Pen-One Acquisition Group, LLC & Equitable IP Corporation

Patent Owner
IPR2017-02167
U.S. Patent 7,281,135
____________
PETITION FOR INTER PARTES REVIEW

OF CLAIMS 1-32 OF U.S. PATENT 7,281,135
UNDER 35 U.S.C. 311-319

TABLE OF CONTENTS
I. INTRODUCTION .........................................................................................1
II. MANDATORY NOTICES ...........................................................................1

A. Real Party-in-Interest ............................................................................1
B. The Patent Owner ..................................................................................2
C. Related Matters......................................................................................2
D. Identification of Lead and Back-Up Counsel........................................2
E. Service Information ...............................................................................2
III. PAYMENT OF FEES ...................................................................................3
IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................3

A. Grounds for Standing ............................................................................3
B. Identification of Challenge Under 37 C.F.R. 42.104(b) .....................4
1. The Specific Art on which the Challenge is Based..........................4
2. The Specific Grounds on which the Challenge is Based .................5
V. DECLARATION EVIDENCE .....................................................................5
VI. U.S. PATENT 7,281,135 ................................................................................6

A. Summary ...............................................................................................6
B. Prosecution History .............................................................................10
1. 135 Patent......................................................................................10
2. Parent 638 application ..................................................................10
C. Background of the Technology ...........................................................12
VII. PERSON OF ORDINARY SKILL IN THE ART....................................13
VIII. CLAIM CONSTRUCTION (37 C.F.R. 42.104(b)(3)) ............................13

A. identity verification data ..................................................................13
IX. GROUNDS OF UNPATENTABILITY .....................................................15

A. Ground 1: Ludtke Anticipates Claims 1-4, 9-12, and 17-24 and
Ground 2: Ludtke Renders Claims 1-4, 9-12, and 17-24
Obvious ...............................................................................................15
1. Ludtke.............................................................................................15
B. Ground 3: Ludtke and Hsu Render Claims 5-8, 13-16, and 29-
32 Obvious ..........................................................................................34
1. Hsu 34
C. Ground 4: Ludtke and Stinson Render Claims 25-28 Obvious ...........46
1. Stinson ............................................................................................46
D. Ground 5: Beatson Anticipates Claims 1, 3-4, 17, 19-21, and

23-24 ....................................................................................................51
1. Beatson ...........................................................................................52
E. Ground 6: Hsu and Beatson Render Claims 5-8, 13-16, and 29-
32 Obvious ..........................................................................................63
F. Ground 7: Beatson and Stinson Render Claims 2, 9-12, 18, 22,

and 25-28 Obvious ..............................................................................71
X. CONCLUSION ............................................................................................79

EXHIBIT LIST
Exhibit Description
1001 U.S. Patent 7,281,135 to Black
1002 Declaration of Creed Jones, Ph.D.
1003 U.S. Patent 7,188,110 to Ludtke et al.
1004 U.S. Patent 5,892,824 to Beatson et al.
1005 U.S. Patent 6,182,221 to Hsu et al.
1006 U.S. Patent 6,149,056 to Stinson et al.
Prosecution History of Application No. 13/369,174, for U.S. Patent

1007
7,281,135
1008 U.S. Patent 6,925,565 to Black
Prosecution History of Application No. 09/865,638, for U.S. Patent

1009
6,925,565
Biometrics Glossary, National Science and Technology Council

1010
Subcommittee on Biometrics, 2006
1011 The Fingerprint Sourcebook, US DOJ, October 17, 2014
Jain, A. et al., An Introduction to Biometric Recognition, IEEE

1012 Transactions on Circuits And Systems for Video Technology, Vol.
14, No. 1, January 2004
Tilton, C., The Role of Biometrics in Enterprise Security, Dell

1013
Power Solutions, February 2006
Fraud, Smartcards, & Biometrics, Mercury Communications

1014 Ltd., May 1993, online at
http://www.gare.co.uk/technology_watch/smart.htm
i
Sticha, P. and Ford, J. Introduction to Biometric Identification
1015 Technology: Capabilities and Applications to the Food Stamp
Program, R. Lewis and co., December 1999
Thomas, J., et al., An Overview of the DSS Digital Imaging

1016 Project Implementation and First Year Results, State of
Connecticut Department of Social Services, March 1998
Waltz, P. On-Site Fingerprinting in the Banking Industry:

1017 Inconvenience or Invasion of Privacy, 16 J. Marshall J. Computer
& Info. L. 597, 1998
Veriprint 2100 Installation and Operation Manual, BiometricID,

1018
1999
Biometrics and the Future of Money, Testimony of Gail Koehler

1019 et al before the House Subcommittee on Domestic and
International Money Policy, May 20, 1998
Finger Image Identification to Facilitate Electronic and

1020 Alternative-Channel Banking, Mentis Corporation, December
1996
An Introduction to Electronic Money Issues, US Department of

1021
Treasury, 1996
Diebold 5100D Integrated Security Management System Product

Description, Diebold, Inc., July 1996, available at
1022
http://www2.diebold.com/ficcdsvdoc/TechPubs/books/TP-799580-
001/TP-799580-001_fram.htm
ii
I. INTRODUCTION
Pursuant to 35 U.S.C. 311-319, Unified Patents Inc., (Unified or
Petitioner) petitions the PTAB to institute inter partes review of claims 1-32 of
U.S. Patent 7,281,135 to Black (the 135 Patent, EX1001).
The 135 Patent claims that verifying commercial transactions or access to
secure areas with biometric information is new. In fact, using biometric
information in this manner is not new, unobvious, nor the least bit innovative.
Biometric information has been used for centuries to verify and confirm identities.
Technology advancement, as evidenced by the prior art, made biometric
information a more valuable and reliable tool to ensure only authorized individuals
perform electronic transactions and gain secure access. As the prior art discussed
in this Petition shows, the challenged claims recite nothing more than the well-
known use of biometric information to verify transactions and secure access using
long-existing and well-known architectures.
II. MANDATORY NOTICES
Pursuant to 37 C.F.R. 42.8(a)(1), Petitioner provides the following
mandatory disclosures:
A. Real Party-in-Interest
Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real
party-in-interest.
1
B. The Patent Owner
The 135 Patent is assigned to Pen-One Acquisition Group, LLC (Pen-
One).
C. Related Matters
The 135 Patent has been asserted in the following litigations, none of which
involve Unified:
1. Pen-One Acquisition Group, LLC v. Apple Inc., Case No. 1:17-cv-
00179 (S.D. Ala. April 22, 2017); and
2. Pen-One Acquisition Group, LLC v. Samsung Electronics Co., Ltd. et
al, Case No. 1:17-cv-00180 (S.D. Ala. April 22, 2017).
D. Identification of Lead and Back-Up Counsel
Pursuant to 37 C.F.R. 42.8(b)(3), Petitioner provides the following
designation of counsel: lead counsel is W. Todd Baker (Reg. No. 45,625), primary
back-up counsel is Roshan S. Mansinghani (Reg. No. 62,429), and other back-up
counsel are Marc K. Weinstein (Reg. No. 43,250) and Jonathan Stroud (Reg. No.
72,518).
E. Service Information
Pursuant to 37 C.F.R. 42.8(b)(4), papers concerning this matter should be
served on the following:
2
Address: W. Todd Baker
Oblon LLP
1940 Duke Street
Alexandria, VA 22314
Email: cpdocketbaker@oblon.com
Telephone: 703-413-3000
Fax: 703-413-2220
Address: Jonathan Stroud, Chief Patent Counsel

Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C. 20009
Email: jonathan@unifiedpatents.com
Telephone: 202-805-8931
Fax: 650-887-0349
Petitioner consents to service via email to cpdocketbaker@oblon.com and
roshan@unifiedpatents.com.
III. PAYMENT OF FEES
The undersigned authorizes the Office to charge the required fees and any
additional fees that might be due to Deposit Account No. 15-0030.
IV. REQUIREMENTS FOR INTER PARTES REVIEW
As set forth below and pursuant to 37 C.F.R. 42.104, each requirement for
inter partes review of the 135 Patent is satisfied.
A. Grounds for Standing
Petitioner certifies pursuant to 37 C.F.R. 42.104(a) that the 135 Patent is
3
available for inter partes review and that Petitioner is not barred or estopped from
requesting inter partes review challenging the patent claims on the grounds
identified herein.
B. Identification of Challenge Under 37 C.F.R. 42.104(b)
Petitioner requests inter partes review and cancellation of 135 Patent claims
1-32 as either anticipated under 35 U.S.C. 102 or obvious under 35 U.S.C. 103.
The application which issued as the 135 Patent is a divisional of application No.
09/865,638, now U.S. Patent 6,925,565 (EX1008), filed on May 25, 2001.
1. The Specific Art on which the Challenge is Based
Petitioner relies upon the following patents, none of which were considered
by the examiner during the 135 Patents prosecution:
EX1003 U.S. Patent 7,188,110 (Ludtke), filed on December 11, 2000, is
prior art under 35 U.S.C. 102(e).
EX1004 U.S. Patent 5,892,824 (Beatson), issued on April 6, 1999, is
prior art under 35 U.S.C. 102(b).
EX1005 U.S. Patent 6,182,221 (Hsu), filed on October 21, 1999 as a
continuation of U.S. Patent Application No. 08/995,565 filed on December 22,
1997, is prior art under 35 U.S.C. 102(e).
EX1006 U.S. Patent 6,149,056 (Stinson), filed on May 12, 1997, is prior
art under 35 U.S.C. 102(e).
4
2. The Specific Grounds on which the Challenge is Based
Petitioner respectfully requests cancellation of claims 1-32 based on the
following grounds:
# Claims 35 U.S.C. Prior Art
1-4,9-12,17-
1 102(e) Ludtke
24
1-4,9-12,17-
2 103(a) Ludtke
24
5-8,13-16,29-
3 103(a) Ludtke and Hsu
32
4 25-28 103(a) Ludtke and Stinson
1,3-4,17,19-
5 102(e)/103(a) Beatson
21,23-24
5-8,13-16,29-
6 103(a) Hsu and Beatson
32
2,9-12,18,
7 103(a) Beatson and Stinson
22,25-28
V. DECLARATION EVIDENCE
This Petition is supported by the declaration of Professor Creed Jones,
Ph.D., a Computing, Software, and Data Sciences professor at California
Baptist University with over 21 years of experience in biometric verification
systems. See EX1002. Dr. Jones performed a thorough analysis of the skill level
of a POSA, EX1002, 21, the prior art content and state, id., 32-41, claim
5
construction, id., 57-63, and the teachings and suggestions that a POSA would
have understood based on the prior art, id., 64-257, including a thorough
element-by-element analysis of the asserted prior art.
VI. U.S. PATENT 7,281,135
A. Summary
The 135 Patent is concerned with an already old concept as of 2001: using
biometric information to verify commercial transactions and access to secure areas.
The admitted prior art demonstrates these well-known concepts:
- Using portable electronic authorization devices to complete
transactions at point-of-sale terminals (EX1001, 1:28-37);
- Using biometric information to verify vehicle control (Id., 1:38-
46);
- Using facial recognition to verify check cashing (Id., 2:1-15);
- Using fingerprint sensing and wireless portable devices to control
system access (Id., 2:16-29); and
- Using signature recognition to authorize transactions (Id., 2:30-44).
6
The 13
35 Patents purportedly inven
ntive systeem merelyy combinees these w
well-
1
known features. (Id., 12:6
62 13:2
21.) Thee Petitions prior arrt teaches this
particullar combination of features.
The
T 135 patents
p Fig
g. 1A show
ws an idenntity verificcation systtem includdes a
host com
mputer, an
n interrogattor, a transp
ponder, annd a stylus.. (EX10011, 6:3-6.)
1
Althou
ugh the pattent title reefers to pen
n-based ideentity veriffication, noo 135 Pateent
claim reequires a pen. Moreo

over, Pen Ones
O litigaations conffirm no pen or styluss is
needed.
7
The host computer accesses data linking the customer with a customer's payment
account, and the interrogator linked to the host computer is disposed at a point-of-
sale (POS) terminal. (Id., 6:12-17.) The customer carries a wireless transponder
that transmits data to the interrogator pertaining to the customers identity upon
request. (Id., 6:17-20.) The transponder has a unique serial number linked with a
credit or debit account. (Id., 6:50-53.)
The stylus includes a sensor capturing a customers digital signature. (Id.,
6:20-23.) Access to the customer's payment account is only enabled when the
sensed and reference digital signatures match. (Id., 6:23-26.) The transponder can
be incorporated into the wireless stylus as shown in Fig. 1C. (Id., 6:43-46.) The
stylus can include fingerprint sensors to capture a customers fingerprint image.
(Id., 6:46-49.)
8
As
A shown in
i Fig. 3, a customerr selects ggoods, procceeds to a POS term
minal,
and ind
dicates tran
nsaction payment
p th
hrough a transpondeer. (Id., 6:53-56.) An
interrog
gator dispo
osed collectts data from
m the trannsponder, aand the finggerprint seensor
senses the custom

mers fing
gerprint. (Id.,
( 6:56--57.) Thee sensed aand referennced
fingerprrints are compared

c in the traansponder for identiity. (Id., 6:677:2.)) If
ng, a light advises thee customerr that paym

matchin ment has beeen acceptted. (Id., 66:57-
60.) Ottherwise, th nied. Figs. 7 and 8 shhow a simiilar process for

he transacttion is den
check cashing and

d accessing
g a secure area.
a
9
B. Prosecution History
1. 135 Patent
The application issuing as the 135 Patent was filed on April 20, 2005 as
divisional Application No. 09/865,638 (hereinafter the parent 638 application),
filed on May 25, 2001, now U.S. Patent 6,925,565 (EX1007). The 135 Patent
issued on October 9, 2007, after being allowed in response to a Preliminary
Amendment cancelling the original claims and adding 32 new claims. (Id., p.29-
30.)
2. Parent 638 application
The parent 638 applications similarly brief prosecution presented thirty-
two claims for examination that required radio frequency transmission and styluses
in each of the independent claims. (EX1009, p.96-100.) The single office action
found each claim obvious over U.S. Patent 6,164,528 to Hills et al. (EX1009,
p.43-47.)
Pen-One amended each independent claim to recite radio frequency
transmission being used for data transfer between the first electronic device and
the second electronic device and characterized the present invention as follows
(Id., p.20-41.):
The following is a concise explanation of the present invention.

Applicants invention is directed to a pen-based, identity verification
system. RFID technology has heretofore been used at gas stations and
10
tollbooths, but it not used in commercial transactions because no
signature is required. Applicants stylus with one or more fingerprint
sensors provides a perfect signature, in that the fingerprint(s), written
text, and dynamic signature verification are captured therewith. The
preferred embodiment of the present invention is for use in
commercial transactions at a point-of-sale terminal. A customer
advises a merchant that a specific customer account is to be used for
payment. The customer also submits a fingerprint that is incidentally
captured when the name is signed.
(Id., p.30.)
The examiner provided no reasons for allowance, (id., p.16.), but it can be
inferred from claim amendments and remarks that the point of novelty was radio
frequency transmission for data transfer between first and second electronic
devices in a commercial transaction.
Significantly, all 135 Patent claims require using radio frequency
transmission but no stylus or pen. The Petitions prior art references, none
being applied by the examiner, show that using radio frequency transmission in a
biometric verification system for commercial transactions and access to secure
areas was well known, rendering each challenged claim unpatentable.
11
C. Background of the Technology
Using biometric information for verifying identities in commercial
transactions and accessing secure areas was well-known prior to 2001. Published
works document the use of biometric systems prior to 2001 in the areas of credit
card POS transactions (EX1014, Mercury Communications, Fraud, Smartcards, &
Biometrics), social services eligibility verification (EX1015, Sticha et al.,
Introduction to Biometric Identification Technology: Capabilities and
Applications to the Food Stamp Program; EX1016, Thomas et al., An Overview
of the DSS Digital Imaging Project Implementation and First Year Results),
check cashing (EX1017, Waltz, On-Site Fingerprinting in the Banking Industry:
Inconvenience or Invasion of Privacy), and automated teller machines (EX1019,
Koehler, Biometrics and the Future of Money). Biometrics has therefore been
widely adopted for POS transactions earlier than 2001. (EX1002, 36.)
Access control biometric systems have also been available prior to 2001.
(Id.) The Diebold 5100D Integrated Security Management System provides a
networked physical access control system that supports biometric readers at access
points to authenticate users requesting physical access:
Each access control terminal (ACT) is an intelligent, microprocessor-

based card reader that usually controls access to an area. Cardholders
identify themselves to the reader using a card (magnetic stripe,
12
proximity, or Wiegand) or a biometric characteristic (such as a
fingerprint or a retina scan).
(EX1022, 2.4.2.) A central databased maintains authorized user. (Id., 3.1.)
VII. PERSON OF ORDINARY SKILL IN THE ART
The prior art evidences the level of ordinary skill in the art. See In re GPAC
Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (no error to adopt the approach that
references of record bets determine the level of skill in the art). The prior art
discussed herein, and in Dr. Jones declaration, demonstrates that a POSA, at the
time the application which issued as the 135 Patent was filed, would have had a
bachelors degree in Electrical Engineering, Computer Science, or related
discipline, and two years of relevant experience and knowledge of electronic
transaction systems and use of biometrics for regulating access and providing
transaction verification. (EX1002, 21).
VIII. CLAIM CONSTRUCTION (37 C.F.R. 42.104(b)(3))
The 135 Patent has not expired, and thus, its claims should be interpreted
according to their broadest reasonable interpretation (BRI) in view of the
specification. 37 C.F.R. 42.100(b). Petitioner adopts the plain meaning for all
claims terms, unless otherwise discussed below.
A. identity verification data
Independent claims 1, 21, 25, and 29 each recite identity verification data
in which a second electronic device communicates identity verification data with
13
a first electronic device. The term identity verification data does not appear in
the specification outside of the claims, and the file history does not address the
terms meaning.
The term identity verification data, in light of the 135 specification,
should maintain its plain meaning: data used for, or indicative of, identity
verification.
A POSA would have understood that identity verification data means data
used in a process for verifying someones identity or as the data representing or
indicative of identity verification. (EX1002, 60.) The term identity verification
data encompasses these alternative meanings because a POSA would have
understood that identity verification, as a modifier to data, means depending
on context (i) data used in a process for verifying someones identity or (ii) data
indicative of identity verification. (Id.)
The 135 disclosure is consistent with this interpretation. (Id., 61) For
example, the 135 Patent describes a transponder wirelessly transmitting data
pertaining to the customer identity to an interrogator, the customer identity data
being data used for identity verification. (Id.; EX1001, 6:17-20.)
The 135 Patent also discloses that the fingerprint comparison can occur in
the transponder. (Id., 6:67 7:2.) Since the interrogator collects data from the
transponder and advises a customer about payment acceptance (Id., 6:50-60, Fig.
14
3), the transponder necessarily transmits the comparison result, which is data
indicative of identity verification. (EX1002, 62.)
Accordingly, a POSA would have understood the BRI of identity
verification data to be data used for, or indicative of, identity verification.
(EX1002, 57-63).
IX. GROUNDS OF UNPATENTABILITY
Pursuant to 37 C.F.R. 42.104(b)(4) and (5), this section demonstrates on an
element-by-element basis that claims 1-32 of the 135 Patent are unpatentable as
being anticipated by or obvious in view of Ludtke, Beatson, Hsu, and Stinson. For
ease of reference, this analysis numbers individual claim elements (e.g., 1[a]).
This analysis is based on and supported by Dr. Joness analysis of the 135 Patent
and the prior art cited herein. (See EX1002).
A. Ground 1: Ludtke Anticipates Claims 1-4, 9-12, and 17-24; and

Ground 2: Ludtke Renders Claims 1-4, 9-12, and 17-24 Obvious
As explained in Ground 1, Ludtke discloses all the limitations of claims 1-4,
9-12, and 17-24 and thus anticipates them. Ground 2 demonstrates that claims 1-4,
9-12, and 17-24 are likewise rendered obvious by Ludtke.
1. Ludtke
Ludtke describes a system and method for authenticating electronic
commerce transactions using biometric information. (EX1003, 3:14-17, 4:62
15
5:1). Lu
udtkes Fig
g. 1 shows a system in
i which a transactioon privacy clearing hhouse
(TPCH)) 1102 interrfaces a usser 120 witth a vendorr 125. (Id., 6:36-44.))
Transaction
T 30 can be a card, diggital walleet, wirelesss telephone, or
n device 13
mmunication unit and

personaal radio com d have wirreless comm
municationn, data storrage,
and com
mmunicatio
on protoco mmunicatinng with ouutside devvices such as a
ols for com
POS terrminal or personal

p co
omputer. (Id., 5:36--44, 40:57--64.) Trannsaction deevice
130 caan also in

nclude a user
u autheentication mechanissm, such as fingerpprint
recognittion within
n the card
d. (Id., 5::53-64.) T
The transaaction devvice contaiins a
unique identifying
g value and
d other infformation aallowing thhe TPCH tto track itss use
and assiist in user transaction

t ns. (Id., 6:20-24.)
2
Ludtkee also referrs to TPCH
H as transacction proceessing cleaaring housee.
16
As
A shown in
i Fig. 2, transaction
t n device 205 interfacces with a POS term
minal
210, wh
hich comm w TPCH 215. (Id.,, 8:25-28.)
municates with
The
T TPCH can provid
de the user with transsaction authhorization and be
mented as a secure serrver conneccted to the transaction device oover the

implem
Internett or POS neetwork. (IId., Fig. 6, 9:26-34.) The TPCH

H maintainns a secure
database of transaaction devicce informaation and uuser inform

mation. (Idd., 6:45-51.)
The TPC
CH includes a custom
mer databaase 640 hollding custoomer inform
mation, thee
database linking user

u identitty informattion and diigital aliasees providedd by the
transacttion devicee. (Id., 10:15-18.)
When
W the personal
p PO
OS terminaal receives a transactiion requestt, it asks thhe
transacttion devicee to validatte the user, confirms that the usser wants too make this
transacttion, and ob
btains userr account payment
p innformation. (Id., 28:557-62.) Thhe
17
transaction device asks the user to confirm the transaction and provide a fingerprint
recognition sample for authentication. (Id., 29:1-4.) The transaction device
receives transaction confirmation and validates the user is authorized by comparing
the captured and sample fingerprints. (Id., 29:5-6; 14:33-46, 20:4-14.)
The POS terminal opens a secure channel to the TPCH to request a
transaction and provides the transaction record and the unique ID of the transaction
device, the TPCH using the transaction devices unique ID to process the
transaction. (Id., 29:10-14.) The TPCH validates the transaction devices good
standing and the account having sufficient funds. (Id., 29:15-17.) If so, the TPCH
issues a transaction confirmation back to the POS terminal, which reflects the
transaction confirmation back to the transaction device. (Id., 29:17-18.)
a. Claim 1[preamble]: A system for conducting a

commercial transaction, a user of the commercial
transaction system being registered and digitally
linked with an account for payment, the system
comprising:
To the extent the preamble is considered limiting, Ludtke discloses a system
enableing a user to conduct electronic commerce transactions, which is a system
for conducting a commercial transaction. ((EX1002, 67; EX1003, 3:14-22.)
Ludtke also discloses a user of the commercial transaction system being registered
and digitally linked with an account for payment. (EX1002, 67.) In particular, a
18
user registers to use the system, the registration digitally linking the user with a
payment account. (EX1003, 33:37-45; 5:49-52.)
b. Claim 1[a]: a. a host computer having access to data

that digitally links the user with the user account;
Ludtke discloses a transaction privacy clearing house (TPCH) as a host
computer that has access to data that links the user with the user account.
(EX1002, 68.) In particular, the TPCH 110 accesses data linking the user and
user account (i.e., account information, user information, held in customer database
640). (Id., 9:26-34 (TCPH may be embodied as a secure server), 10:15-18 (The
customer database 640 holds information regarding each customer of the TPCH.),
Fig. 6, 3:32-45, 6:49-55.)
c. Claim 1[b]: b. a first electronic device disposed at a

point-of-sale terminal, the first electronic device
being digitally linked to the host computer;
Ludtke discloses a first electronic device (i.e., POS terminal) linked to the
host computer (i.e., TPCH). (EX1002, 69.) In particular, Ludtke discloses that a
POS terminal communicates with the TPCH. (EX1003, 8:25-37, 3:32-36, 3:48-
57.)
Ludtkes POS terminal performs the recited functions of the first electronic
device including being digitally linked to the host computer (Id., 8:25-37) and
radio frequency transmission being used for data transfer [with] the second
electronic device. (Id., 5:36-44; see also Section IX.A.1.(d) infra.) Accordingly,
19
a POSA would have understood that the structure within Ludtkes POS terminal for
performing the first electronic devices recited functions is necessarily disposed at
the POS terminal. (EX1002, 70.) Moreover, nothing in the claim or specification
requires the first electronic device to be something other than the point-of-sale
terminal itself. (Id.)
To the extent the claims are interpreted such that a first electronic device
must be separate and independent from the POS terminal, it would have been
obvious to a POSA to make the structure of Ludtkes POS terminal, as necessary
for implementing the first electronic devices recited functionality, independent of
the POS terminal and disposed at it. (Id., 71) A POSA would have understood
that implementing the structure for performing the first electronic devices recited
functionality within the POS terminal or as a separate device at the POS terminal
has no impact on performing the claimed commercial transaction (Id.) Either
implementation is well within the ability of a POSA and highly likely to succeed.
(Id.) In addition, since Ludtke is directed to using biometric verification of
commercial transactions, and Ludtke discloses conducting the commercial
transaction through a POS terminal, a POSA would have been motivated to dispose
structure for implementing the first electronic devices functionality at or near the
POS terminal, particularly in a retail environment, to ensure proper performance of
the commercial transaction. (Id.)
20
d. Claim 1[c]: c. a second electronic device that is
wireless, the second electronic device being carried
by the user, the second electronic device
communicating identity verification data with the
first electronic device, radio frequency transmission
being used for data transfer between the first
electronic device and the second electronic device;
and
Identity verification data is defined as data used for, or indicative of,
identity verification. (See supra Section VIII(A)).
Ludtke discloses a second electronic device (i.e., transaction device 130,
205) can be a card carried by a user. (EX1002, 73; EX1003, 5:36-44, 5:53-64,
10:64 11:7, 11:63-65 (As noted earlier, the privacy card 705 is configured to be
sized for easy carrying and use.).)
The transaction device provides identity verification data (i.e., transaction
device unique ID) to the first electronic device (i.e., POS terminal). (EX1002,
74.) Ludtke discloses that the transaction device contains a unique identifying
value to assist in user transactions and provides that unique ID to the POS terminal
during a transaction. (Id., 6:21-24, 28:50 29:14.)
Ludtke also discloses that the transaction device is wireless and uses wireless
data communication to communicate with the POS terminal. (Id., 5:36-44
(transaction device may contain wireless data communication, data storage and
communication protocols for selectively communicating with outside devices such
as a digital wallet described herein, point of sale (POS) terminal., 5:62-64,
21
10:33-37, 10:64 11:18, 17:2-10.) Since the transaction device can be
implemented as a radio communication unit, a POSA would have understood that
the wireless communication with the POS terminal can be through radio frequency
transmission. (Id., 40:57-64 (consumer access device is personal radio
communication unit.; EX1002, 75.)
To the extent Ludtke is interpreted to neither expressly nor inherently
disclose radio frequency (RF) transmission being used for data transfer between
the first and second electronic devices, using RF transmission would have been
obvious to a POSA. (EX1002, 76.) In particular, a POSA would have understood
that wireless communication as taught by Ludtke includes a variety of wireless
technologies, including the well-known use of RF transmission. (Id.) Indeed, RF
was an exceedingly common, well-known means of such wireless communication,
and would have been the most common option, the implementation of which
would have provided predictable results and required merely simple substitution.
(See, e.g., EX1004, 10:1-5 (a wireless connection (e.g., using radio, infrared or
other electromagnetic transmissions).) A POSA would also have understood that
the particular wireless communication is simply a matter of design choice, and that
implementing it with RF transmission would have been well within the ability of a
POSA and was highly likely to succeed. (EX1002, 76.) Moreover, using RF
22
communication was well-known to a POSA, and its implementation would provide
well-understood and predictable results. (Id.)
e. Claim 1[d]: d. a member for capturing a digital

signature image of the user while the member is
being used;
While a digital signature image plainly includes a digital image of a
persons signature, digital signature image necessarily includes fingerprint
images because claim 2 defines it as being a fingerprint image. (See also EX1001,
4:15 (A digital signature, such as a fingerprint).)
Ludtke discloses a member (i.e., fingerprint touch or recognition pad) that
captures a digital signature (i.e., fingerprint) while using the member. (EX1002,
78; EX1003, 12:23-27 (fingerprint recognition is used as a security mechanism
that limits access to the card 705 to authorized users. A fingerprint touch pad and
associated logic 730 is therefore included in one embodiment to perform these
functions.), 5:60-64, 14:33-46.)
Ludtkes transaction device, i.e., the second electronic device, incorporates
the fingerprint pad of Ludtke. (Id., 5:60-64.) Nothing in claim 1, however,
requires the member to be separate or independent of the second electronic device.
Moreover, the 135 Patent expressly discloses that the stylus, transponder, and
fingerprint sensor can be integrated. (EX1001, 6:43-49, Figs. 1B and 1C.).
23
f. Claim 1[e]: whereby the sensed digital signature
image is compared to a reference digital signature
image upon a request to process the commercial
transaction, the reference digital signature image
being captured during a registration process; and
Ludtke discloses the digital signature image (i.e., captured fingerprint) is
compared to a reference digital image (i.e., fingerprint sample) to process a
commercial transaction. (EX1002, 80.) In particular, Ludtke discloses:
When the user has selected an account, the transaction device asks the
user to confirm the entire transaction and that the user is authorized,
for example, by entering a PIN or providing a fingerprint recognition
sample. The transaction device receives confirmation of the
transaction and validates that the user is authorized.
(Id., 28:67 29:6.)
The user authentication block 777 preferably includes a biometric

solution of validating that the user interacting with the device is an
authorized user. This can be achieved, for example, by using a
fingerprint recognition pad. At various times during interaction,
the user is prompted to supply a fingerprint recognition sample. This
block captures the sample, and carries out a recognition algorithm
against the authorized samples that are stored in the user identity
block described above. If a match is found, the user is authorized to
access the data and functionality of the device.
(Id., 14:33-46 (emphasis added).)
24
Ludtke also discloses capturing the reference digital signature image during
registration by completing a registration form, touching the fingerprint recognition
pad, and storing the fingerprint identity in the transaction device. (Id., 19:35
20:12.)
g. Claim 1[f]: whereby the request to process the

commercial transaction is denied absent a match of
the sensed digital signature image and the reference
digital signature image.
Ludtke discloses only accepting the commercial transaction if the sensed and
digital signature images match; otherwise the transaction is denied. (EX1002,
82.) In particular, unless the signature images match, the user is not authorized to
use the functionality, including conducting commercial transactions, of the
transaction device. (EX1003, 28:67 29:18, 14:40-46, 12:23-27.)
h. Claim 2: The system of claim 1, wherein the digital

signature image is a fingerprint image.
Ludtke discloses that the digital signature image is a fingerprint image.
(EX1002, 83; EX1003, 14:33-46, 19:35-40, 20:4-14, 22:21-22, 28:67 29:6.)
i. Claim 3: The system of claim 1, wherein the

reference digital signature image is disposed in the
second electronic device.
Ludtke discloses storing the reference digital signature (i.e., fingerprint
sample) in the second electronic device (i.e., transaction device). (EX1002, 84;
25
EX1003, 20:4-12 (the fingerprint identity sample that will be stored in the
transaction device), 14:33-46.)
j. Claim 4: The system of claim 1, wherein the

reference digital signature image is disposed in a user
record, the user record being accessible by the host
computer.
Ludtke discloses this limitation. (EX1002, 85.) In particular, Ludtke
discloses a user record (i.e., customer information) being accessible to the host
computer (i.e., TPCH) (EX1003, 10:15-18 (The customer database 640 holds
information regarding each customer of the TPCH. It is this database in which the
only link between actual user identity information and the digital aliases provided
by the transaction device exists.), Fig. 6 (showing TPCH includes database 640),
3:40-45, 6:49-51.) Ludtke also discloses that the user information includes the
reference digital signature image (i.e., sample fingerprint) (Id., 20:66-21:7 (user
identification information [is] fingerprint data), 20:4-12 (PC software encrypts
all of the information [which includes fingerprint sample] and delivers it to the
TPCH over a secure connection.).)
k. Claim 9[preamble]: A method for conducting a

commercial transaction for payment at a point-of-
sale terminal, the method comprising:
To the extent the preamble is considered limiting, Ludtke discloses this
limitation. (See supra Section IX(A)(1)(a).)
26
l. Claim 9[a]: a. requesting identity verification
through cooperative engagement between a first and
a second electronic device, the first electronic device
being disposed at the point-of-sale terminal, the
second electronic device being wireless, the second
electronic device being carried by the user,
Ludtke discloses the first electronic device (i.e., POS terminal) being
disposed at the point-of-sale terminal and the second electronic device (i.e.,
transaction device) being wireless and carried by the user. (See supra Sections
IX(A)(1)(c)-(d).) Ludtke also discloses requesting identity verification through
cooperative engagement (i.e., through mutual communication) between the first
and second electronic devices. (EX1002, 87, EX1003, 28:57-62 (When the
personal POS terminal receives the transaction request, it communicates with the
transaction device, asking the transaction device to validate the user (emphasis
added).)
m. Claim 9[b]: the first and second electronic devices

being in digital communication with a host computer,
the host computer having access to data that digitally
links at least one registered user to a reference digital
signature image;
Ludtke discloses the first electronic device (i.e., POS terminal) digitally
communicating with a host computer (i.e., TPCH) that has access to data digitally
linking a registered user to a reference digital signature image (i.e., fingerprint
sample). (See supra Sections IX(A)(1)(b)-(c),(j).) Ludtke further discloses the
second electronic device (i.e., transaction device) digitally communicating with the
27
host computer. (EX1002, 88, EX1003, Figs. 1-3 (each showing digital link (i.e.,
electronic distribution) between transaction device 130 and TPCH 110/215), 7:36-
56.)
n. Claim 9[c]: b. using a member for submission of

data relative to the identity verification, the member
having a sensor that enables capture of a digital
signature image of a user during engagement of a
finger of the user with the member;
Ludtke discloses a member (i.e., fingerprint pad) that enables capture of a
digital signature image (i.e., captured fingerprint) when a users finger engages
with the member. (See supra Section IX(A)(1)(e).) Since Ludtke compares the
captured fingerprint to fingerprint samples to authorize a user, the fingerprint pad
thus submits data (i.e., captured fingerprint) relative to identity verification (i.e.,
user authorization.) (EX1002, 89, EX1003, 14:33-46, 29:1-6.) Ludtkes
fingerprint pad can include a sensor. (Id., (a fingerprint recognition pad
composed of a very thin silicon sensing pad along with the appropriate
electronics.)
o. Claim 9[d]: c. transmitting data between the first

electronic device and the second electronic device by
radio frequency transmission; and
Ludtke discloses this limitation. (See supra Section IX(A)(1)(d).)
28
p. Claim 9[e]: d. denying access to the user account
absent a match of the sensed digital signature image
and a reference digital signature image, the reference
digital signature image being captured during a
registration process.
Ludtke discloses the denying (see supra Section IX(A)(1)(g)) and
reference digital signature image being captured during a registration process
(see supra Section IX(A)(1)(f)).
q. Claim 10: The method of claim 9, wherein the

digital signature image is a fingerprint image.
Ludtke discloses this limitation. (See supra Section IX(A)(1)(h).)
r. Claim 11: The method of claim 9, wherein the

Ludtke discloses this limitation. (See supra Section IX(A)(1)(i).)
s. Claim 12: The method of claim 9, wherein the

computer.
Ludtke discloses this limitation. See supra Section IX(A)(1)(j).
t. Claim 17[preamble]: 17. A system for conducting a

comprising:
29
u. Claim 17[a]: a. a host computer having access to
data that digitally links the user with the user
account;
Ludtke discloses this limitation. (See supra Section IX(A)(1)(b).)
v. Claim 17[b]: b. an electronic device disposed at a

point-of-sate terminal, the electronic device being
digitally linked to the host computer; and
Ludtke discloses this limitation. (See supra Sections IX(A)(1)(c).)
w. Claim 17[c]: c. a member that is wireless, the

member being carried by the user, the member
having at least one sensor, the sensor capturing a
digital signature image of the user while the member
is being used, the member communicating with the
electronic device transmitting data therebetween
relative to an identity verification, at least some of
the data transmission between the electronic device
to the member being by radio frequency;
Ludtke discloses a member (i.e., fingerprint touch pad incorporated in
transaction device) is wireless, carried by a user, has a sensor, and captures a users
digital signature image (i.e., captured fingerprint). (See supra Sections
IX(A)(1)(d),(e),(n).) The member transmits data relative to an identity verification
with the electronic device (i.e., POS terminal) including by radio frequency. (See
supra Sections IX(A)(1)(d),(n).)
30
x. Claim 17[d]: whereby the sensed digital signature
image upon a request to process the commercial
transaction, the reference digital signature image
being captured during a registration process; and
Ludtke discloses this limitation. (See supra Section IX(A)(1)(f).)
y. Claim 17[e]: whereby the request to process the

commercial transaction is denied absent a match of
the sensed digital signature image and the reference
digital signature image.
Ludtke discloses this limitation. (See supra Section IX(A)(1)(g).)
z. Claim 18: The system of claim 17, wherein the

aa. Claim 19: The system of claim 17, wherein the

bb. Claim 20: The system of claim 17, wherein the

computer.
Ludtke discloses this limitation. (See supra Section IX(A)(1)(j).)
31
cc. Claim 21[preamble]: 21. A system for conducting a
comprising:
dd. Claim 21[a]: a. a host computer having access

to data that digitally links the user with the user
account;
ee. Claim 21[b]: b. a first electronic device disposed at

a point-of-sale terminal, the first electronic device
Ludtke discloses this limitation. (See supra Section IX(A)(1)(c).)
ff. Claim 21[c]: c. a second electronic device that is

electronic device and the second electronic device;
and
gg. Claim 21[d]: d. a member having at least one digital

signature image sensor thereon, the sensor being
capable of capturing a digital signature image of the
user while the member is being used;
Ludtke discloses this limitation. (See supra Sections IX(A)(1)(e),(n).
32
hh. Claim 21[e]: whereby identity verification is
determined by the comparison of the user digital
signature image and the reference digital signature
image, the reference digital signature image being
captured during a registration process; and
Ludtke discloses the reference digital signature image being captured
during a registration process. (See supra Section IX(A)(1)(f).) Ludtke determines
identity verification (i.e., user authorization) by comparing sensed and reference
fingerprint and only provides the unique ID to the POS terminal if the comparison
matches. (EX1002, 109; EX1003, 28:50-29:14, 14:33-46.)
ii. Claim 21[f]: whereby the written request is denied

absent a match of the user digital signature image
and the reference digital signature image.
Ludtke discloses this limitation. (See supra Section IX(A)(1)(g).)
jj. Claim 22: The system of claim 21, wherein the

kk. Claim 23: The system of claim 21, wherein the

ll. Claim 24: The system of claim 21, wherein the

computer.
33
B. Ground 3: Ludtke and Hsu Render Claims 5-8, 13-16, and 29-32
Obvious
Claims 5-8, 13-16, and 29-32 are obvious over Ludtke in view of Hsu.
1. Hsu
Hsu discloses a system and method for automatically verifying a persons
identity seeking access to a protected area or property, such as a computer or
building. (EX1005, 1:10-14, 1:59-67.) Hsu implements the system with a
personal identification device having a sensor reading biometric data identifying a
person, storage storing reference biometric data identifying a person, such as
fingerprints, and a correlator comparing the stored reference biometric data with
the biometric data of the person seeking access and determining whether they
match. (Id., 2:5-12, 2:42-45.) The sensor, storage, and correlator can be integrated
into a portable communication device like a telephone carried by a person. (Id.,
2:18-24.)
34
As
A shown in Figs. 1A
1 and 1B
B, Hsus ssystem forr opening a door, i.e.,
providin
ng access to a secu
ure area, includes
i uuser-carriedd device 114', such as a
cellular telephon
ne, having metric sennsor fingeerprint seensor 16 that
g a biom
commun
nicates with
w receiv
ver 15 through
t work 17 and
ccommunicaation netw
commun
nication in
nterface 18 located near doorr 10 or computer 110' emboddying
another form of a "door. (IId., 4:55 5:12.) Pllacing a finnger over ssensor 16 sscans
the persson's fingeerprint and comparess it with a reference fingerprinnt image sttored
phone 14' using a fiingerprint correlator.. (Id., 5:117-21.) Iff a match,, the
in telep
device 14' transm

mits a conffirming meessage to ddoor 10 oor computeer 10', dooor 10
opening d computerr 10' permiitting data access by the user. (Id.,

g to allow access and
5:21-27
7.)
35
a. Claim 5[preamble]: 5. A system for regulating
access to a secure area, the system comprising:
To the extent the preamble is considered limiting, Ludtke discloses
regulating access to the data and functionality of a transaction device. (EX1003,
14:33-46.) Unless a users sensed fingerprint matches a stored sample fingerprint,
a user cannot have access to any of the data and functionality in a transaction
device. (Id., 14:33-46.) A POSA would have understood that using a fingerprint
verification is a system for regulating access, and that the data and functionality
that can only be accessed upon fingerprint verification for specified users is
regulating access a secure area. (EX1002, 116.)
Nevertheless, to the extent Ludtke does not expressly disclose regulating
access to a secure area, Hsu expressly teaches it. (Id.,117.) In particular, Hsu
discloses a system using fingerprints for identity verification to regulate access to a
secure area, whether property or data. (EX1005, 1:10-14, 2:42-53, 5:5-26, 1:59-
67.)
It would have been obvious to incorporate Hsus teaching of regulating
access to a secure area into Ludtkes system of using biometrics including
fingerprints for identity verification because both Ludtke and Hsu are directed to
user verification systems relying on biometrics and specifically fingerprints to
perform verification. (EX1002, 118.) Moreover, it has been well known to a
POSA to use biometrics for user verification in numerous contexts including
36
commercial transactions and access to secure areas. (Id.) Such a substitution of
using biometric identity verification for regulating access to a secure area in
Ludtkes system is within the ability of a POSA and is highly likely to succeed.
(Id.)
b. Claim 5[a]: a. a host computer having access to data

a plurality of reference digital signature images;
Ludtke discloses a host computer having access to a data for a plurality of
reference digital signatures. (See supra Sections IX(A)(1)(b), (j); EX1002, 119.)
c. Claim 5[b]: b. a first and a second electronic device,

the first electronic device being disposed at a security
checkpoint,
Ludtke discloses a first electronic device (i.e., POS terminal) and a second
electronic device (i.e., transaction device). (See supra Sections IX(A)(1)(c)-(d);
EX1002, 120.)
To the extent Ludtke does not expressly teach a first electronic device being
disposed at a security checkpoint, Hsu discloses it. (EX1002, 121.) The 135
Patent discloses a security checkpoint as a location proximate to the secure area.
(EX1001, 3:34-36.) Hsu discloses a first electronic device (i.e., interface 18) that
is located at a door 10. (EX1002, 121; EX1005, 4:55 5:16.). Since door 10
provides access to the secure area, and interface 18 is located at door 10, interface
18 is disposed at a security checkpoint. (EX1002, 121.)
37
d. Claim 5[c]: the second electronic device being
by a user the first and second electronic devices being
in communication with the host computer, radio
frequency transmission being used for data transfer
between the first electronic device and the second
electronic device; and
e. Claim 5[d]: c. a member having at least one sensor,

the member being useful in preserving a log of access
to the secure area, the sensor capturing a digital
signature image of the user during usage of the
member;
Ludtke discloses a member (i.e., fingerprint pad incorporated in transaction
device) having a sensor that captures a users digital signature image (i.e., captured
fingerprint). (See supra Sections IX(A)(1)(n).) Ludtke also discloses preserving
an access log (i.e., stores all transaction records). (EX1003, 10:19-22 (transaction
device can store transaction records).) A POSA would have understood that the
transaction records in Ludtke, as modified by Hsu to regulate access to secure
areas, would include records of secure area accesses. (EX1002, 123.)
38
f. Claim 5[e]: whereby the sensed digital signature
image upon a request to access the secure area, the
reference digital signature image being captured
during a registration process; and
Ludtke discloses comparing the sensed digital signature image (i.e., captured
fingerprint) to a reference digital signature image (i.e., sample fingerprint), which
is captured during a registration process. (See supra Section IX(A)(1)(f).)
A POSA would have understood that Ludtkes fingerprint comparison, as
modified by Hsu to regulate access to secure areas, would be performed upon a
request to access a secure area. (EX1002, 125.) In particular, Hsu discloses
comparing the sensed digital signature image (i.e., read fingerprint) to a reference
digital image (i.e., reference fingerprint) to regulate access to a secure area such as
door 10. (EX1002, 125; EX1005, 2:42-50, 5:17-26, 2:5-12).
g. Claim 5[f]: whereby the request to access the secure

area is denied absent a match of the sensed digital
image.
Ludtke, as modified by Hsu to regulate access to secure areas, discloses this
limitation. (See supra Section IX(A)(1)(g).) In particular, Hsu discloses denying
access to the secure area if the sensed and digital signature images do not match by
not opening door 10 to allow access by user 12 and not permitting data access to
computer 10. (EX1002, 126; EX1005, 5:17-26.)
39
h. Claim 6: The system of claim 5, wherein the digital
signature image is a fingerprint image.


computer.
k. Claim 13[preamble]: 13. A method of enabling

access to a secure area, the method comprising:
To the extent the preamble is considered limiting, Ludtke in view of Hsu
discloses this limitation. (See supra Section IX(B)(1)(a).)
l. Claim 13[a]: a. requesting identity verification

through cooperative engagement between a first and
a second electronic device, the first electronic device
being disposed at a security checkpoint, the second
electronic device being wireless, the second electronic
device being carried by the user,
Ludtke, as modified by Hsu to regulate access to secure areas, discloses the
first electronic device (i.e., interface 18) being disposed at the security checkpoint
and the second electronic device (i.e., transaction device) being wireless and
carried by the user. (See supra Sections IX(B)(1)(c)-(d).) Ludtke also discloses
40
requesting identity verification through cooperative engagement (i.e., through
mutual communication (see, e.g., EX1001, 6:17-19)) between the first and second
electronic devices. (EX1002, 131, see supra Section IX(A)(1)(l).)
m. Claim 13[b]: the first and second electronic devices

being in digital communication with a host computer,
the host computer having access to data that digitally
links at least one registered user to a reference digital
signature image;
Ludtke in view of Hsu discloses this limitation. (See supra Sections
IX(B)(1)(b)-(d),(j), see also supra Section IX(A)(1)(m).)
n. Claim 13[c]: b. using a member to submit written

data pertinent to the identity verification, the
member having a sensor that enables capture of a
digital signature image of a user during engagement
of a finger of the user with the member;
Ludtke in view of Hsu discloses the member having a sensor capturing a
digital during finger engagement. (See supra Sections IX(B)(1)(e), see also supra
Section IX(A)(1)(n).) The 135 patent teaches a signature is written data.
(EX1001, 3:26-29 (written data (such as a signature)).) Ludtke discloses
providing an authorization signature. (EX1003, 26:12-14, 22:39-43.) A POSA
would also have understood that using a signature as written data pertinent to
identity verification was well known and its use would provide predictable results.
(EX1002, 133, EX1004, 9:10-14.)
41
o. Claim 13[d]: c. transmitting data between the first
electronic device and the second electronic device by
radio frequency transmission; and
Ludtke in view of Hsu discloses this limitation. (See supra Section
IX(A)(1)(d).)
p. Claim 13[e]: d. denying access to the secure area

absent a match of the sensed digital signature image
and the reference digital signature image, the
reference digital signature image being captured
during a registration process.
Ludtke in view of Hsu discloses the denying (see supra Section
IX(B)(1)(g)) and reference digital signature image being captured during a
registration process (see supra Sections IX(B)(1)(f).)
q. Claim 14: The method of claim 13, wherein the

IX(B)(1)(h).)
r. Claim 15: The method of claim 13, wherein the

IX(B)(1)(i).)
42
s. Claim 16: The method of claim 13, wherein the
computer.
IX(B)(1)(j).)
t. Claim 29[preamble]: 29. A system for gaining

access to a secure area, the system comprising:
To the extent the preamble is considered limiting, Ludtke in view of Hsu
discloses this limitation. (See supra Section IX(B)(1)(a).)
u. Claim 29[a]: a. a host computer having access to

data that digitally links the user with a user
account;
IX(B)(1)(b).)
v. Claim 29[b]: b. a first electronic device disposed at

a site proximate to the access to the secure area, the
first electronic device being digitally linked to a host
computer;
IX(B)(1)(c).) Since door 10 provides access to the secure area, and interface 18 is
located at door 10, interface 18 is proximate to a security checkpoint. (EX1002,
141.)
43
w. Claim 29[c]: c. a second electronic device that is
electronic device and the second electronic device,
the second electronic device enabling access to a
reference digital signature image; and
Ludtke discloses, or at least renders obvious, a second electronic device (i.e.,
transaction device) being wireless, carried by the user, and communicating identity
verification data with the first electronic device using radio frequency
transmission. (See supra Section IX(A)(1)(d).) Ludtke also discloses the second
electronic device stores and thus enables access to a reference digital signature
image (i.e., fingerprint sample). (See supra Section IX(A)(1)(i).)
x. Claim 29[d]: d. a sensor positioned proximate to the

access to the secure area, the sensor enabling a
capture of a user digital signature image, the user
request to access the secure area;
Ludtke, as modified by Hsu to regulate access to secure areas, discloses a
sensor (i.e., fingerprint pad incorporated on transaction device) captures a user
digital signature image (i.e., captured fingerprint) during a request to access the
secure area. (See supra Section IX(B)(1)(e).) A POSA would have understood
that that, whenever a user seeks access to a secure area such as Hsus door 10, the
fingerprint pad incorporated on the transaction device carried by the user would
44
necessarily be proximate to accessing the secure area. (EX1002, 142; EX1005,
5:23-26; EX1001, 3:34-36 (location near secure area).)
y. Claim 29[e]: whereby identity verification is

determined by a comparison of the user digital
image; and
IX(B)(1)(f).)
z. Claim 29[f]: whereby access to the secure area is

denied absent a match of the user digital signature
image and the reference digital signature image.
IX(B)(1)(g).)
aa. Claim 30: The system of claim 29, wherein the

IX(B)(1)(h).)
bb. Claim 31: The system of claim 29, wherein the

IX(B)(1)(i).)
45
cc. Claim 32: The system of claim 29, wherein the
computer.
IX(B)(1)(j).)
C. Ground 4: Ludtke and Stinson Render Claims 25-28 Obvious
1. Stinson
Stinson discloses a system and method for using biometric information such
as a fingerprint to provide verification for check cashing at a check-cashing
apparatus. (EX1006, 1:46-56, 2:13-34, 8:12-67.) In particular, Stinson discloses
an automated check-cashing unit 100 as a point-of-sale unit having digital video
cameras 125 produce customer images that are used for customer identity
verification. (Id., 5:14-22.) Check-cashing unit 100 includes check reader 130 and
is controlled by processor 300 that receives images from cameras 125 to identify
the customer. (Id., 5:50-62.) In some instances, the processor may receive
information about the customer's identity from card reader 145. (Id., 5:23-
60.) Unit 100 can communicate with server 500 at centralized services center 400.
(Id., 6:35-61.)
In operation, a customer inserts a check, and processor 300 attempts to
identify the customer. (Id., 7:46 8:14.) Identification can be based on biometric
46
information including fingerprints. (Id., 8:22-44.) If identification is confirmed
and applicable business rules are satisfied, the customer receives the appropriate
money amount. (Id., 8:50 9:18.) Otherwise, the customer receives a rejection
message. (Id., 9:20-28.)
a. Claim 25[preamble]: 25. A system for cashing a

check at a check-cashing terminal, the system
comprising:
To the extent the preamble is considered limiting, Ludtke discloses a system
that enables a user to conduct electronic commerce transactions. (EX1002, 151;
EX1003, 3:14-22, 18:55-56, 36:43, 57-37:4) A POSA would have understood that
cashing a check would be included among the various types of electronic
commerce transactions. (EX1002, 151.)
Nevertheless, to the extent Ludtke does not expressly disclose cashing a
check, Stinson expressly teaches it. (Id., 152.) In particular, Stinson discloses a
system for cashing a check at a check cashing apparatus or ATM using biometrics
including fingerprints for identity verification. (EX1006, 1:46-56, 2:13-34, 8:12-
67.)
It would have been obvious to incorporate Stinsons teaching of cashing a
check at a check-cashing terminal using biometrics for identity verification into
Ludtkes system of using biometrics including fingerprints for identity verification
because both Ludtke and Stinson are directed to user verification systems relying
47
on biometrics and specifically fingerprints to perform verification. (EX1002,
153.) Moreover, it has been well known to a POSA to use biometrics for user
verification in numerous contexts including commercial transactions generally and
check cashing more specifically. (Id.) Such a substitution of using biometric
identity verification for check cashing in Ludtkes system is within the ability of a
POSA and is highly likely to succeed. (Id.)
b. Claim 25[a]: a. a host computer having access to

data that digitally links the user with the user
account;
c. Claim 25[b]: b. a first electronic device disposed at

the check-cashing terminal, the first electronic device
Ludtke discloses a first electronic device (i.e., POS terminal) being digitally
linked to the host computer (i.e., TPCH). (See supra Section IX(A)(1)(c);
EX1002, 155)
To the extent Ludtke does not expressly teach a first electronic device being
disposed at a check-cashing terminal, Stinson discloses it. (EX1002, 156.) In
particular, Stinson discloses a first electronic device (i.e., check reader 130) that is
located at a check-cashing unit 100 and digitally linked to a host computer (i.e.,
server 500). (Id., 156; EX1006, 5:23-25, 6:35-61.) A POSA would have been
48
motivated to dispose the first electronic device at the check-cashing terminal to
enable customer submission of the checks. (EX1002, 156.)
d. Claim 25[c]: c. a second electronic device that is

first electronic device, the second electronic device
enabling access to a reference digital signature
image, radio frequency transmission being used for
data transfer between the first electronic device and
the second electronic device; and
Ludtke discloses, or at least renders obvious, this limitation. (See supra
Section IX(A)(1)(d).)
e. Claim 25[d]: d. a sensor being disposed proximate

to the check-cashing terminal, the sensor enabling a
capture of a user digital signature image, the user
request to cash the check;
Ludtke, as modified by Stinson to cash a check at a check-cashing terminal,
discloses a sensor captures a user digital signature image, the user digital signature
image being captured during a request to cash a check. (See supra Section
IX(A)(1)(n).) A POSA would have understood that that, whenever a user seeks to
cash a check such as Stinsons check-cashing unit 100, the fingerprint pad
incorporated on the transaction device would necessarily be proximate to check-
cashing unit 100. (EX1002, 158.) In addition, Stinson discloses at least one
sensor (i.e., camera 125) disposed at the check-cashing unit 100 that captures a
49
digital signature image (i.e., a facial image). (Id.; EX1006, 8:22-39). In addition
to facial images, Stinson discloses using other types of biometric identification
including fingerprints, which would necessarily include a sensor at the cash-
checking terminal 100 to detect the customers fingerprint. (EX1002, 158;
EX1006, 8:40-44). A POSA also would have been motivated to have the sensor
proximate the check-cashing terminal because the customer would necessarily cash
the check at the terminal. (EX1002, 158.)
f. Claim 25[e]: whereby identity verification is

determined by the comparison of the user digital
image, the reference digital signature image being
captured during a registration process; and
Ludtke discloses this limitation. (See supra Section IX(A)(1)(f).)
g. Claim 25[f]: whereby the written request for

cashing the check is denied absent a match of the
user digital signature image and the reference digital
signature image.
Ludtke, as modified by Stinson to cash checks at a check-cashing terminal,
discloses denying cashing the check absent matching signatures. (See supra
Section IX(A)(1)(g).) In particular, Stinson discloses denying cashing the check
unless the fingerprint or other biometric images match. (EX1002, 160; EX1006,
8:22 9:27.) A POSA would understand that check cashing requires a written
request (i.e., customers check endorsement) to complete. (EX1002, 160.) A
POSA would have been motivated to deny cashing the check absent a match as
50
taught by Stinson to avoid fraud and ensure check cashing by authorized persons
only. (Id.)
h. Claim 26: The system of claim 25, wherein the

Ludtke discloses this limitation (See supra Section IX(A)(1)(h).)

Ludtke discloses this limitation (See supra Section IX(A)(1)(i).)

computer.
Ludtke discloses this limitation (See supra Section IX(A)(1)(j).)
D. Ground 5: Beatson Anticipates Claims 1, 3-4, 17, 19-21, and 23-24
Ludtke and Beatson address similar issues in the field of using biometric
information to perform identity verification in the context of commercial
transactions and other functions. However, while they may disclose similar
functions generally, their respective systems and methods are configured in
different ways. For example, while Beatson discloses a portable signature device
that captures digital signatures and receives an IC card storing information for
verification and authentication of the captured digital signatures, Ludtke discloses a
simpler and singular portable transaction device as a card having both wireless
51
communication and a pad for capturing a digital signature image for performing
identity verification (see EX1003, 5:36-64), (see EX1004, 52-54).
In addition, whereas Beatson is prior art to the 135 Patent under 35 U.S.C.
102(b), Ludtke is only prior art under 35 U.S.C. 102(e) as having a prior art
U.S. filing date slightly more than six months before the earliest claimed priority
date of the 135 Patent.
As Patent Owner may attempt to distinguish elements of the challenged
claims based upon purportedly unique claim features, which are clearly described
by each of Ludtke and Beatson, and may also attempt to swear behind Ludtke, both
grounds should be included for trial.
1. Beatson
Beatson describes a system and method for performing electronic
transactions using biometric information for authentication. (EX1004, 8:16-21,
8:40-64, 9:1-28). Fig. 1 illustrates an embodiment for implementing the Beatson
system.
52
As show
wn in Fig. 1, a transacction systeem 50 haviing real-tim
me signaturre processiing
capabiliities includ
des electron
nic transacction devices includinng personaal computerrs
52 and electronic
e cash registters 54 thatt are installled at the ttransactionn point. (Idd.,
8:16-21.) Electro
onic transaction devicces 52, 54 can autom
matically deebit a bankk
accountt at financial institutio

on 56 via a financial transaction network 58, verifyy
d company 60, and doownload trransaction data to retaail

credit caards from credit card
data pro
ocessing seerver 62. (IId., 8:22-4
40.)
Beatson
B furrther disclo
oses a signaature devicce 64 connnected to ellectronic
transacttion devicee 52, 54 to capture an

n electronicc image off a customeer's
handwritten signaature and sttore it in memory.

m (IId., 8:41-522.) Signatuure device 64
can veriify the auth

henticity of a custom
mer's signatu
ture automaatically annd in real-tiime
at the trransaction point.

p (Id.., 8:65 9:1.) To do so, a custoomer insertts an
53
electronic IC card 66 into signature device 64, IC card 66 containing information
signature device 64 uses to verify and authenticate the customers signature. (Id.,
9:1-10.) Signature device 64 compares signature information provided by IC card
66 with the signature captured by signature device 64. (Id., 9:10-14.) Signature
device 64 can produce a real-time indication of signature authenticity by lighting
an indicator, providing an audible indication, or sending an electronic message to
the transaction devices 52, 54. (Id., 9:15-19.)
Signature device 64 can communicate wirelessly with transaction devices
52, 54 using radio frequency communication. (Id., 10:1-5.) In addition, signature
device 64 can be powered with a rechargeable or replaceable battery within its
housing to provide portability and thus enable a user to carry it. (Id., 10:9-11.)
a. Claim 1[preamble]
To the extent the preamble is considered limiting, Beatson discloses a
system enabling a user to conduct electronic transactions, which is a system for
conducting a commercial transaction. ((EX1002, 165; EX1004, 1:8-11; 8:16-21
(Fig. 1 shows by way of example, an overall transaction system 50 including real-
time signature processing capabilities.).) Beatson also discloses a user of the
commercial transaction system being registered and digitally linked with an
account for payment. (EX1002, 165.) In particular, a user registers to use the
54
system, the registration digitally linking the user with a payment account.
(EX1004, 8:16-40, 14:16-21, 18:11-58.)
b. Claim 1[a]
Beatson discloses any of a POS server 62, financial institution 56, and credit
card company 60 as a host computer that has access to data that links the user with
the user account. (EX1002, 166.) In particular, Beatson discloses that financial
institution 56 maintains a user bank account via financial transaction network 58,
credit card company 60 maintains a user credit card account, and POS server 62
maintains a users transaction data. (EX1004, 18:53-58 (Write template plus
captured enrollment signature image and other customer identifying and
authentication information (e.g., account number, device authentication keys and
customer personal identification number) to host computer and/or to card 66.)
(emphasis added), 8:16-40.)
c. Claim 1[b]
Beatson discloses a first electronic device (i.e., transaction device 52, 54)
disposed at a point-of-sale terminal that is linked to the host computer (i.e., server
62, financial institution 56, credit card company 60). (EX1002, 167) In
particular, Beatson discloses that transaction devices 52, 54 communicate with
server 62, financial institution 56, and credit card company 56. (EX1004, 8:15-40,
Fig. 1.)
55
HOST
T
COMPUT
TER
FIRS
ST
ELECTRRONIC
DEVIICE
Transacction device 52, 54 arre installed

d at the poiint of transsaction. (Idd., 8:18-222
(electronic transaaction deviices such as

a personall computerrs 52 and ellectronic ccash
registers 54 are in
nstalled at the
t point off transactioon (e.g., a rretail storee that sells
goods and/or
a services to mem he public)..).) Sincee transactioon devices 52,
mbers of th
54 are in
nstalled at the transaction pointt in a retaill store, a POSA woulld have
understo
ood that po
oint-of-salee terminalss are locateed at the trransaction ppoint, and
vices are diisposed at the point-oof-sale term

thereforre the transsaction dev minals.
(EX100
02, 168.)
d. Claim
C 1[c]
Identity veerification data is defined ass data used for, orr indicativee of,
identity
y verificatio
on. (See supra
s Secttion VIII(A
A)).
Beatson
B disscloses a second
s elecctronic devvice (i.e., signature ddevice 64)) can
be portaable and th
hus carried EX1004, 88:41-52; 9:49
d by a userr. (EX10002, 170; E
56
10:11 (a rechargeable or replaceable battery can be included within housing 70
[of signature device 64] to provide power and provide unencumbered portability.
(emphasis added)), Figs. 1-4.)
The second electronic device (i.e., signature device 64) can communicate
wirelessly by radio frequency (RF) transmission with the first electronic device
(i.e., transaction device 52, 54). (EX1002, 171; EX1004, 10:1-5 (a wireless
connection (e.g., using radio, infrared or other electromagnetic transmissions)
may be used to bidirectionally couple digital information for communication
between signature device 64 and the electronic transaction device 52, 54.)
(emphases added).)
Beatson also discloses that signature device 64 communicates identity
verification data (i.e., an indication of signature authenticity) to transaction devices
52, 54. (EX1002, 172; EX1004, 8:65 9:28 (based on a result of the comparison
of signature images, signature device 64 can produce a real-time indication of
signature authenticity (e.g., by lighting an indicator, providing an audible
indication, and/or sending an electronic message to the electronic transaction
device 52, 54).)
e. Claim 1[d]
Beatson discloses a member (i.e., writing area 114) that captures a digital
signature while using the member. (EX1002, 173; EX1004, 8:41-52 (As the
57
customeer signs the receipt, the
t signatu
ure device 64 capturees an electtronic imagge of
the custtomer's han

ndwritten signature
s and
a stores it in an intternal mem
mory.), 111:19-
12:54 (As the cu

ustomer lowers the pen
p stylus 96 into coontact withh paper recceipt
122, siignature device

d 64 automaticcally, elecctronically detects pproximity and
contact between in
nternal pen
n 74 and siigning surfface 114 (ee.g., by cloosing of sw
witch
103 witthin pen 74

4 discussed
d above)., Figs. 2-4.))
MEMBER R
CAPTURINNG
DIGITAL
L
SIGNATURRE
Beatsons
B signature device 64, i.e., the secoond electtronic devvice,
incorporates writiing area 11

14. (Id., 11:19-12:5
1 54). Nothiing in claim
m 1, howeever,
requiress the memb

ber to be separate
s orr independeent of the first or seccond electrronic
devices. Moreoveer, the 135 xpressly disscloses thaat the styluus, transponnder,
5 Patent ex
and fing
gerprint sen
nsors can be
b integrated. (EX10001, 6:43-449, Figs. 1B and 1C.)).
58
f. Claim 1[e]
Beatson discloses comparing the digital signature image to a reference
digital image to process a commercial transaction. (EX1002, 175.) In particular,
Beatson discloses:
In accordance with another aspect provided by the present invention,

signature device 64 may also verify the authenticity of the customer's
signature automatically and electronically in real-time at the point of
transaction. The store clerk (or the customer) may couple the IC
card 66 to the signature device 64 by, for example, inserting the card
into a slot provided within the signature device housing. The IC card
66 in this example contains information the signature device 64 can
use to verify and authenticate the signature the customer makes on the
paper receipt. The signature device 64 can electronically compare
signature information provided by IC card 66 with the signature
information the signature device electronically captures as a result of
the customer signing the paper receipt.
(EX1004, 8:65 9:14 (emphasis added).) The signature information provided by
IC card 66 to signature device 64 is a signature template and corresponds to the
reference digital signature. (Id., 15:12 16:15, 18:7-58, Fig. 8).
Beatson also discloses capturing the reference digital signature image during
registration. (EX1002, 176.) In particular, Beatson discloses capturing a
signature image during an enrollment or registration process along with other
59
customer and authentication information, and storing the signature image in the
host computer and IC card 66. (EX1004, 18:53-58.)
g. Claim 1[f]
Beatson discloses only accepting the commercial transaction if the sensed
and digital signature images match; otherwise the transaction is denied. (EX1002,
177.) In particular, unless the signature images match, an indication of signature
authenticity is produced indicating that the signature is fraudulent, and the
transaction is denied. (EX1004, 9:10-20, 13:5-30, 15:12 16:14, 20:24-47.)
h. Claim 3
Beatson discloses the reference digital signature (i.e., signature template) is
stored in the second electronic device (i.e., signature device). (EX1002, 178.) In
particular, Beatson discloses storing signature templates in memory storage
portions in IC card 66, which is disposed in signature device 64 during a
commercial transaction. (EX1004, 9:1-10, (The store clerk (or the customer) may
couple the IC card 66 to the signature device 64 by, for example, inserting the card
into a slot provided within the signature device housing. IC card 66 in this example
contains information signature device 64 can use to verify and authenticate the
signature the customer makes on the paper receipt. (emphasis added)), 9:62-64,
14:16-21, 18:53-58 (Write template plus captured enrollment signature image
and other customer identifying and authentication information (e.g., account
60
number, device authentication keys and customer personal identification number)
to host computer and/or to card 66. (emphasis added)).)
i. Claim 4
Beatson discloses that the reference digital signature is stored in a user
record (i.e., customer identifying and authentication information) stored in and
accessible by the host computer. (EX1002, 179; EX1004, 18:53-58 (Write
template plus captured enrollment signature image and other customer identifying
and authentication information (e.g., account number, device authentication keys
and customer personal identification number) to host computer and/or to card 66.
(emphasis added)).)
j. Claim 17[preamble]
To the extent the preamble is considered limiting, Beatson discloses this
limitation. (See supra Section IX(D)(1)(a).)
k. Claim 17[a]
Beatson discloses this limitation. (See supra Section IX(D)(1)(b).)
l. Claim 17[b]
Beatson discloses this limitation. (See supra Sections IX(D)(1)(c).)
m. Claim 17[c]
Beatson discloses a member (i.e., writing member incorporated on signature
device) is wireless, carried by a user, and captures a users digital signature image
61
(i.e., captured signature). (See supra Sections IX(A)(1)(d),(e).) The member
transmits data relative to an identity verification with the electronic device (i.e.,
transaction device) including by radio frequency. (See supra Sections
IX(A)(1)(d).) In addition, Beatson discloses that signature device 64 includes coil
array 216 as a sensor to sense and capture the digital signature. (EX1002, 183;
EX1004, 11:19-39, 12:35-54.)
n. Claim 17[d]
Beatson discloses this limitation. (See supra Section IX(D)(1)(f).)
o. Claim 17[e]
Beatson discloses this limitation. (See supra Section IX(D)(1)(g).)
p. Claim 19
Beatson discloses this limitation. (See supra Section IX(D)(1)(h).)
q. Claim 20
Beatson discloses this limitation. (See supra Section IX(D)(1)(i).)
r. Claim 21[preamble]
s. Claim 21[a]
t. Claim 21[b]
Beatson discloses this limitation. (See supra Section IX(D)(1)(c).

62
u. Claim 21[c]
Beatson discloses this limitation. (See supra Section IX(D)(1)(d).)
v. Claim 21[d]
Beatson discloses this limitation. (See supra Sections IX(D)(1)(e), (u).)
w. Claim 21[e]
Beatson discloses the reference digital signature image being captured
during a registration process. (See supra Section IX(D)(1)(f).) Beatson
determines identity verification by comparing the sensed signature with the
signature template and provides an indication of signature authenticity based on the
comparison. (EX1002, 193; EX1004, 9:10-20, 12:35-54.)
x. Claim 21[f]
Beatson discloses this limitation. (See supra Section IX(D)(1)(g).)
y. Claim 23
Beatson discloses this limitation. (See supra Section IX(D)(1)(h).)
z. Claim 24
Beatson discloses this limitation. (See supra Section IX(D)(1)(i).)
E. Ground 6: Hsu and Beatson Render Claims 5-8, 13-16, and 29-32
Obvious
Claims 5-8, 13-16, and 29-32 are obvious over Hsu in view of Beatson.
63
a. Claim 5[preamble]
To the extent the preamble is considered limiting, Hsu expressly discloses
regulating access to a secure area. (Id., 199.) In particular, Hsu discloses a
system using fingerprints for identity verification to regulate access to a secure
area, whether property or data. (EX1005, 1:10-14, 1:59-67, 2:42-53, 5:5-26.)
b. Claim 5[a]
Hsu discloses a host computer (i.e., computer 10.1) having access to data.
(EX1002, 200; EX1005, 7:4-19 (For file access to the computer 10.1, the user
may simply need to access personal data relating to a user account in bank or
other institution, or may need to download information from a file in the
computer (emphasis added)); 8:36-44.)
To the extent Hsu does not disclose the host computer having access to data
of a plurality of reference digital signature images, Beatson expressly teaches it.
(EX1002, 201.) In particular, Beatson discloses a host computer having access to
a data for a plurality of reference digital signatures. (See supra Sections
IX(D)(1)(b),(i); EX1002, 201.)
It would have been obvious to incorporate Beatsons teaching of a host
computer having access to a data for a plurality of reference digital signatures into
Hsus system of using biometrics for regulating access to a secure area because
both Hsu and Beatson are directed to user verification systems relying on
64
biometrics to perform verification and also to regulating access to secure areas.
(EX1002, 202; EX1005, 1:10-14, 1:59-67, 2:42-53, 5:5-26; EX1004, 20:24-47.)
A POSA would have been motivated to store the reference signatures in both the
second electronic device and the host computer as taught by Beatson (EX1004,
18:53-58) because it provides redundancy and enhances security. (EX1002, 202.)
Such a substitution providing a host computer with access to a data for a plurality
of reference digital signatures in Hsus system is within the ability of a POSA and
is highly likely to succeed. (Id.)
c. Claim 5[b]
Hsu discloses a first electronic device (i.e., interface 18) and a second
electronic device (i.e., device 14). (EX1002, 203; EX1005, 4:55 - 5:26, Figs.
1A, 1B). Hsu also discloses that the first electronic device (i.e., interface 18) is
located at and proximate to door 10, which is a security checkpoint. (EX1002,
203; EX1005, 2:42-53, 4:55 5:16.)
d. Claim 5[c]
Hsu discloses a second electronic device (i.e., device 14) can be a cellular
telephone carried by a user that communicates wirelessly with the first electronic
device (i.e., interface 18). (EX1002, 204; EX1005, 4:555:16, 5:38-52, Figs. 1A
and 1B.) Beatson discloses that wireless communication by a second electronic
65
device can be through radio frequency communication. (See supra Section
IX(B)(1)(d); EX1004, 10:1-5)
e. Claim 5[d]
Hsu discloses at least one sensor (i.e., sensor 16) that captures a digital
signature image (i.e., a fingerprint). (EX1002, 205; EX1005, 4:64 5:4, 5:17-26,
5:38-52.) To the extent Hsu and Beatson do not expressly disclose preserving an
access log, a POSA would understand that preserving access logs are well known
and obvious to a POSA. (EX1002, 205; see also EX1003, 10:19-22.) A POSA
would have understood that the transaction records in Ludtke, as modified by Hsu
to regulate access to secure areas, would include records of secure area accesses
because transactions include secure area accesses. (EX1002, 205.) In addition,
when accessing secure areas, a POSA would have understood preserving an access
log is advantageous to ensuring only authorized personnel access the secure area as
the log provides evidence of who and when the area has been accessed. (Id.)
f. Claim 5[e]
Hsu discloses the sensed digital signature image (i.e., fingerprint) is
compared to a reference digital image to regulate access to a secure area such as
access to door 10. (EX1002, 206; EX1005, 2:5-12, 2:42-50, 5:17-26). In
addition, Hsu discloses the reference digital signature image is captured during
66
registration by storing it in storage during an enrollment process. (Ex1002, 206;
EX1005, 2:12-18, 2:45-47, 5:59 6:10.)
g. Claim 5[f]
Hsu discloses access to the secure area is only accepted if the sensed and
digital signature images match; otherwise access is denied. (EX1002, 207.) In
particular, unless the fingerprint images match, door 10 is not opened to allow
access by user 12, and computer 10 is not conditioned to permit data access by the
user. (EX1005, 5:17-26.)
h. Claim 6
Hsu discloses that the digital signature image is a fingerprint image.
(EX1002, 208; EX1005, 4:64 5:4, 5:17-26.)
i. Claim 7
Hsu discloses the reference digital signature (i.e., fingerprint image) is stored
in the second electronic device (i.e., device 14). (EX1002, 209; EX1005, 2:43-53
(device that includes a memory for storing a reference fingerprint image of the
user).)
j. Claim 8
Hsu in view of Beatson discloses this limitation. (See supra Sections
IX(D)(1)(i), IX(E)(b).)
67
k. Claim 13[preamble]
To the extent the preamble is considered limiting, Hsu in view of Beatson
discloses this limitation. (See supra Section IX(E)(a).)
l. Claim 13[a]
Hsu, as modified by Beatson, discloses the first electronic device (i.e.,
interface 18) being disposed at the security checkpoint and the second electronic
device (i.e., device 14) being wireless and carried by the user. (See supra
Sections IX(E)(1)(c)-(d).) Hsu also discloses requesting identity verification
through cooperative engagement (i.e., through mutual communication) between the
first and second electronic devices. (EX1002, 212, EX1005, 5:5-26.)
m. Claim 13[b]
IX(E)(b)-(d),(j).)
n. Claim 13[c]
Hsu in view of Beatson discloses this limitation. (See supra Section
IX(E)(e).)
o. Claim 13[d]
IX(E)(d).)
68
p. Claim 13[e]
Hsu in view of Beatson discloses the denying (see supra Section
IX(E)(1)(g)) and reference digital signature image being captured during a
registration process (see supra Sections IX(E)(1)(f).)
q. Claim 14
IX(E)(h).)
r. Claim 15
IX(E)(i).)
s. Claim 16
IX(E)(j).)
t. Claim 29[preamble]
To the extent the preamble is considered limiting, Hsu in view of Beatson
discloses this limitation. (See supra Section IX(E)(a).)
u. Claim 29[a]
IX(E)(b).) A POSA would have understood that that, whenever a user seeks access
to a secure area such as Hsus door 10, fingerprint sensor 16 incorporated on
69
device 14 would necessarily be proximate to accessing the secure area. (EX1002,
221.)
v. Claim 29[b]
IX(E)(c),IX(B)(1)(v).)
w. Claim 29[c]
Hsu discloses, or at least renders obvious, a second electronic device (i.e.,
transaction device) being wireless, carried by the user, and communicating identity
verification data with the first electronic device using radio frequency
transmission. (See supra Section IX(B)(1)(d).) In addition, Hsu discloses the
second electronic device (i.e., device 14) communicates identity verification data
(i.e., a confirmation message) to the first electronic device (i.e., interface 18).
(EX1005, 5:5-26 (If the comparison results in a match, the device 14/14' transmits
a confirming message to the door 10 [via the interface 18]).)
x. Claim 29[d]
Hsu discloses a sensor (i.e., fingerprint sensor 16 on device 14) captures a
user digital signature image (i.e., read fingerprint) during a request to access the
secure area. (See supra Section IX(E)(1)(e).) A POSA would have understood
that that, whenever a user seeks access to a secure area such as Hsus door 10,
70
fingerprint sensor 16 incorporated on device 14 would necessarily be proximate to
accessing the secure area. (EX1002, 223; EX1005, 5:23-26.)
y. Claim 29[e]
IX(E)(f).)
z. Claim 29[f]
IX(E)(g).)
aa. Claim 30
IX(E)(h).)
bb. Claim 31
IX(E)(i).)
cc. Claim 32
IX(E)(j).)
F. Ground 7: Beatson and Stinson Render Claims 2, 9-12, 18, 22, and
25-28 Obvious
Claims 2, 9-12, 18, 22, and 25-28 are obvious over Beatson in view of
Stinson.
71
a. Claim 2
Beatson discloses all of the elements of claim 1. (See supra Section
IX(D)(1)(a)-(g)). Although Beatson discloses the digital signature image being the
captured digital signature of a user, Beatson also discloses other biometric
information being used for identity verification including fingerprints. (EX1004,
4:31-66.) According to Beatson, physical biometrics like fingerprints have
advantages over behavioral biometrics like signatures by more accurately and
consistently authenticating and verifying the identity of a customer. (Id., 4:42-48
(One persistent problem relates to reject rates of signature verification systems.
The signature is a behavioral biometric (as opposed to a physical biometric, such
as a fingerprint) and as such there is a possibility that the customer will have an
"off day" (or the customer's signature has changed over time) so that an authentic
signature will fail the biometric test. It is highly desirable to minimize the
frequency of such rejections.); EX1002, 232.)
To the extent Beatson does not expressly disclose the digital signature image
is a fingerprint image, Stinson teaches it. (EX1002, 233.) In particular, Stinson
discloses that various types of biometric information including fingerprint images
can be used to authenticate and verify the identity of a customer in a commercial
transaction such as check cashing. (EX1006, Abstract (The processor may be
further configured to confirm the identity of the customer based on biometric
72
information about the customer. Examples of suitable biometric information
include the customer's fingerprint or an image of the customer's face. (emphasis
added)), 2:13-33, 8:22-44.)
It would have been obvious to incorporate Stinsons teaching of using
fingerprint images for identity verification into Beatsons system of using
biometrics for identity verification because both Beatson and Stinson are directed
to user verification systems relying on biometrics to perform verification of
commercial transactions. (EX1002, 234.) Moreover, it has been well known to a
POSA that a variety of biometrics can be used for user identity verification in
commercial transactions including fingerprint images, facial images, retinal scan
images, and signature images. (Id.) These biometrics are interchangeable, and the
selection of a particular biometric is a matter of design choice to a POSA. (Id.) In
addition, a substitution of fingerprint images for signature images in the Beatson
system is within the ability of a POSA and is highly likely to succeed. (Id.)
b. Claim 9[preamble]
c. Claim 9[a]
Beatson discloses the first electronic device (i.e., transaction device) being
disposed at the point-of-sale terminal and the second electronic device (i.e.,
73
signature device) being wireless and carried by the user. (See supra Sections
IX(D)(1)(c)-(d).) Beatson also discloses requesting identity verification through
cooperative engagement (i.e., through mutual communication) between the first
and second electronic devices. (EX1002, 236, EX1004, 10:1-5 (a wireless
connection (e.g., using radio, infrared or other electromagnetic transmissions) may
be used to bidirectionally couple digital information for communication between
signature device 64 and the electronic transaction device 52, 54.) (emphasis
added).)
d. Claim 9[b]
Beatson discloses the first electronic device (i.e., transaction device)
digitally communicating with a host computer (e.g., server 62) that has access to
data digitally linking a registered user to a reference digital signature image (i.e.,
signature template). (See supra Sections IX(D)(1)(b)-(c),(i).) Beatson further
discloses the second electronic device (i.e., signature device) digitally
communicating with the host computer. (EX1002, 237, EX1004, Fig. 1 (showing
digital link between signature device 64 and server 62 via transaction devices 52,
54.)
e. Claim 9[c]
Beatson, as modified by Stinson to capture a fingerprint image (see supra
Section IX(F)(a)), discloses a member (i.e., writing area) that enables capture of a
74
digital signature image (i.e., captured signature) of a user during engagement of a
finger of the user with the member. (See supra Sections IX(D)(1)(e),IX(F)(a);
EX1006, 8:23-50; EX1002, 238 (capturing a fingerprint image necessarily
includes contacting a users finger with a sensor).) Since Beatson as modified by
Stinson compares the captured fingerprint to fingerprint samples to authorize a
user, the member thus submits data (i.e., captured signature) relative to identity
verification (i.e., user authorization.) (EX1002, 238, EX1003, 14:33-46, 29:1-6.)
Beatson discloses that the signature device 64 includes a coil array 216 as a sensor
to sense and capture the digital signature. (EX1002, 238; EX1004, 11:19-39,
12:35-54.)
f. Claim 9[d]
g. Claim 9[e]
Beatson discloses the denying (see supra Section IX(D)(1)(g)) and
reference digital signature image being captured during a registration process
(see supra Section IX(D)(1)(f)).
h. Claim 10
Beatson in view of Stinson discloses this limitation. (See supra Section
IX(F)(a).)
75
i. Claim 11
IX(D)(1)(h).)
j. Claim 12
IX(D)(1)(i).)
k. Claim 18
IX(F)(a).)
l. Claim 22
IX(F)(a).)
m. Claim 25[preamble]
To the extent the preamble is considered limiting, Beatson discloses a
system that enables a user to conduct electronic commerce transactions. (EX1002,
246; EX1004, 8:14-52.) A POSA would have understood that cashing a check
would be included among the various types of electronic commerce transactions.
(EX1002, 246.)
Nevertheless, to the extent Beatson does not expressly disclose cashing a
check, Stinson expressly teaches it. (Id., 247.) In particular, Stinson discloses a
76
system for cashing a check at a check cashing apparatus or ATM using biometrics
including fingerprints for identity verification. (EX1006, 1:46-56, 2:13-34, 8:12-
67.)
It would have been obvious to incorporate Stinsons teaching of cashing a
check at a check-cashing terminal using biometrics for identity verification into
Beatsons system of using biometrics for identity verification because both
Beatson and Stinson are directed to user verification systems relying on biometrics
to perform verification. (EX1002, 248.) Moreover, it has been well known to a
POSA to use biometrics for user verification in numerous contexts including
commercial transactions generally and check cashing more specifically. (Id.)
Such a substitution of using biometrics for identity verification for check cashing
in Beatsons system is within the ability of a POSA and is highly likely to succeed.
(Id.)
n. Claim 25[a]
o. Claim 25[b]
To the extent Beatson does not expressly teach a first electronic device being
disposed at a check-cashing terminal, Stinson discloses it. (EX1002, 250.) In
particular, Stinson discloses a first electronic device (i.e., check reader 130) that is
located at a check-cashing unit 100, which is digitally linked to a host computer
77
(i.e., server 500). (Id., 250; EX1006, 5:23-25, 6:35-61.) A POSA would have
been motivated to dispose the first electronic device at the check-cashing terminal
to enable customer submission of the checks. (EX1002, 250.)
p. Claim 25[c]
q. Claim 25[d]
Beatson, as modified by Stinson to cash a check at a check-cashing terminal,
discloses a sensor captures a user digital signature image, the user digital signature
image being captured during a request to cash a check. (See supra Sections
IX(D)(1)(e),(m),IX(F)(f).) A POSA would have understood that that, whenever a
user seeks to cash a check such as Stinsons check-cashing unit 100, the fingerprint
pad incorporated on the transaction device would necessarily be proximate to
check-cashing unit 100. (EX1002, 252.) In addition, Stinson discloses at least
one sensor (i.e., camera 125) disposed at check-cashing unit 100 that captures a
digital signature image (i.e., a facial image). (Id.; EX1006, 8:22-39). In addition
to facial images, Stinson discloses using other types of biometric identification
including fingerprints, which would necessarily include a sensor at cash-checking
terminal 100 to detect the customers fingerprint. (EX1002, 252; EX1006, 8:40-
44). A POSA also would have been motivated to have the sensor proximate the
78
check-cashing terminal because the customer would necessarily cash the check at
the terminal. (EX1002, 252.)
r. Claim 25[e]
Beatson discloses this limitation (See supra Section IX(D)(1)(f).)
s. Claim 25[f]
Stinson discloses cashing the check only if the sensed and digital signature
images match; otherwise the check cashing is denied. (EX1002, 254.) In
particular, unless the fingerprint or other biometric images match, the customers
request for cash checking is rejected. (EX1006, 8:22 9:27.)
t. Claim 26
IX(F)(a).)
u. Claim 27
Beatson in view of Stinson discloses this limitation (See supra Section
IX(D)(1)(h).)
v. Claim 28
Beatson in view of Stinson discloses this limitation (See supra Section
IX(D)(1)(i).)
X. CONCLUSION
Petitioner respectfully requests that the PTAB institute an inter partes
review and then proceed to cancel the challenged claims.

79
Respectfully submitted,
OBLON LLP
Dated: September 24, 2017 / W. Todd Baker /

W. Todd Baker
Reg. No. 45,625
Customer Number
22850
Tel. (703) 413-3000
Fax. (703) 413-2220
80
CERTIFICATE OF WORD COUNT
Pursuant to 37 C.F.R. 42.24(d), the undersigned certifies that the foregoing
document, excluding the portions exempted under 37 C.F.R. 42.24(a)(1), contains
13,909 words, including the words added in annotating the figures, which is under
the limit of 14,000 words set by 37 C.F.R. 42.24(a)(1)(i).
Dated: September 24, 2017 /W. Todd Baker/

W. Todd Baker
Reg. No. 45,265
81
CERTIFICATE OF SERVICE
The undersigned certifies service pursuant to 37 C.F.R. 42.6(e) and
42.105(b) on the Patent Owner by USPS Express Delivery of a copy of this
Petition for Inter Partes Review and supporting materials at the correspondence
address of record for the 135 Patent as well as counsel of record in the district
court litigations:
MACCORD MASON PLLC

300 N. GREENE STREET, SUITE 1600
P. O. BOX 2974
GREENSBORO NC 27402
Jones Walker LLP

11 North Water Street, Suite 1200
Mobile, Alabama 36602
Dated: September 24, 2017 / W. Todd Baker /

W. Todd Baker
Reg. No. 45,625
82

Unified Patents Inc. v. Pen-One Acquisition Group, LLC and Equitable IP Corp., LLC, IPR2017-02167, (PTAB Sept. 24, 2017)

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Unified Patents Inc. v. Pen-One Acquisition Group, LLC and Equitable IP Corp., LLC, IPR2017-02167, (PTAB Sept. 24, 2017)

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Filed on behalf of Unified Patents Inc.

By: W. Todd Baker, Reg. No. 45,265

Roshan S. Mansinghani, Reg. No. 62,429

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Unified Patents Inc.,

Pen-One Acquisition Group, LLC & Equitable IP Corporation

PETITION FOR INTER PARTES REVIEW

II. MANDATORY NOTICES ...........................................................................1

B. The Patent Owner ..................................................................................2

D. Identification of Lead and Back-Up Counsel........................................2

E. Service Information ...............................................................................2

III. PAYMENT OF FEES ...................................................................................3

IV. REQUIREMENTS FOR INTER PARTES REVIEW ................................3

B. Identification of Challenge Under 37 C.F.R. 42.104(b) .....................4

1. The Specific Art on which the Challenge is Based..........................4

2. The Specific Grounds on which the Challenge is Based .................5

V. DECLARATION EVIDENCE .....................................................................5

VI. U.S. PATENT 7,281,135 ................................................................................6

B. Prosecution History .............................................................................10

2. Parent 638 application ..................................................................10

C. Background of the Technology ...........................................................12

VII. PERSON OF ORDINARY SKILL IN THE ART....................................13

VIII. CLAIM CONSTRUCTION (37 C.F.R. 42.104(b)(3)) ............................13

IX. GROUNDS OF UNPATENTABILITY .....................................................15

C. Ground 4: Ludtke and Stinson Render Claims 25-28 Obvious ...........46

D. Ground 5: Beatson Anticipates Claims 1, 3-4, 17, 19-21, and

F. Ground 7: Beatson and Stinson Render Claims 2, 9-12, 18, 22,

1001 U.S. Patent 7,281,135 to Black

1002 Declaration of Creed Jones, Ph.D.

1003 U.S. Patent 7,188,110 to Ludtke et al.

1004 U.S. Patent 5,892,824 to Beatson et al.

1005 U.S. Patent 6,182,221 to Hsu et al.

1006 U.S. Patent 6,149,056 to Stinson et al.

Prosecution History of Application No. 13/369,174, for U.S. Patent

1008 U.S. Patent 6,925,565 to Black

Prosecution History of Application No. 09/865,638, for U.S. Patent

Biometrics Glossary, National Science and Technology Council

1011 The Fingerprint Sourcebook, US DOJ, October 17, 2014

Jain, A. et al., An Introduction to Biometric Recognition, IEEE

Tilton, C., The Role of Biometrics in Enterprise Security, Dell

Fraud, Smartcards, & Biometrics, Mercury Communications

Thomas, J., et al., An Overview of the DSS Digital Imaging

Waltz, P. On-Site Fingerprinting in the Banking Industry:

Veriprint 2100 Installation and Operation Manual, BiometricID,

Biometrics and the Future of Money, Testimony of Gail Koehler

Finger Image Identification to Facilitate Electronic and

An Introduction to Electronic Money Issues, US Department of

Diebold 5100D Integrated Security Management System Product

Pursuant to 35 U.S.C. 311-319, Unified Patents Inc., (Unified or

U.S. Patent 7,281,135 to Black (the 135 Patent, EX1001).

The 135 Patent claims that verifying commercial transactions or access to

secure areas with biometric information is new. In fact, using biometric

Technology advancement, as evidenced by the prior art, made biometric

long-existing and well-known architectures.

II. MANDATORY NOTICES

Pursuant to 37 C.F.R. 42.8(a)(1), Petitioner provides the following

Pursuant to 37 C.F.R. 42.8(b)(1), Petitioner certifies that Unified is the real

The 135 Patent is assigned to Pen-One Acquisition Group, LLC (Pen-

1. Pen-One Acquisition Group, LLC v. Apple Inc., Case No. 1:17-cv-

00179 (S.D. Ala. April 22, 2017); and

2. Pen-One Acquisition Group, LLC v. Samsung Electronics Co., Ltd. et

al, Case No. 1:17-cv-00180 (S.D. Ala. April 22, 2017).

D. Identification of Lead and Back-Up Counsel