DCT
3:22-cv-02553
CPC Patent Tech Pty Ltd v. Apple Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CPC Patent Technologies Pty Ltd. (Australia)
- Defendant: Apple Inc. (California)
- Plaintiff’s Counsel: K&L GATES LLP
- Case Identification: 6:21-cv-00165, W.D. Tex., 02/23/2021
- Venue Allegations: Plaintiff alleges venue is proper because Apple maintains regular and established places of business in the Western District of Texas, including offices and retail stores in Austin, and has committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s iPhones and iPads equipped with Touch ID and Face ID infringe patents related to systems for biometric authentication and secure access.
- Technical Context: Biometric authentication is a foundational technology for modern mobile devices, enabling secure device access, user identification, and authorization for financial transactions.
- Key Procedural History: Plaintiff CPC acquired the patents-in-suit in 2019 from Securicom (NSW) Pty Ltd. The complaint alleges that Plaintiff provided Defendant with notice of infringement of two of the patents in March 2020, and that Defendant's counsel acknowledged awareness of the third patent in May 2020, which may be relevant to future claims of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2003-08-13 | Priority Date for '208 and '705 Patents |
| 2005-08-12 | Priority Date for '039 Patent |
| 2013 | Apple introduces Touch ID security feature |
| 2013-12-31 | U.S. Patent No. 8,620,039 Issued |
| 2016-02-23 | U.S. Patent No. 9,269,208 Issued |
| 2017 | Apple introduces Face ID security feature |
| 2017-05-30 | U.S. Patent No. 9,665,705 Issued |
| 2019-03-25 | Apple introduces Apple Card in the iPhone Wallet |
| 2019-09-17 | USPTO records assignment of Patents-in-Suit to Plaintiff |
| 2020-03-19 | Plaintiff provides notice to Apple regarding '705 & '039 Patents |
| 2020-05-14 | Apple acknowledges awareness of '208 Patent |
| 2021-02-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,269,208 - "Remote Entry System," Issued February 23, 2016
The Invention Explained
- Problem Addressed: The patent describes conventional hard-wired security systems, such as those for building access, as having a significant vulnerability: the physical communication line between the external code entry module (e.g., a keypad) and the internal, secure controller can be intercepted or "tapped" (’208 Patent, col. 2:50-65).
- The Patented Solution: The invention proposes replacing this vulnerable physical link with a secure wireless connection. A user presents a biometric signal (e.g., a fingerprint) to a portable transmitter sub-system (like a key fob), which authenticates the user against a local database and then emits a secure, encrypted wireless signal (e.g., a rolling code) to a separate receiver sub-system that controls access to an item, such as a door lock or a computer (’208 Patent, Abstract; col. 5:49-65, Fig. 2).
- Technical Importance: By decoupling the point of user authentication from the access control mechanism and securing the communication channel wirelessly, the system aimed to eliminate a common point of attack in then-existing physical security installations (’208 Patent, col. 2:17-19).
Key Claims at a Glance
- The complaint asserts at least dependent claim 10, which relies on independent claim 1. The analysis focuses on independent claim 1, a system claim, which includes the following essential elements:
- A database of biometric signatures.
- A transmitter sub-system comprising a biometric sensor, means for matching a received biometric signal against the database, and means for emitting a secure access signal.
- A receiver sub-system comprising means for receiving the secure signal and means for providing conditional access to a controlled item.
- The transmitter sub-system further comprises means for populating the database of biometric signatures.
U.S. Patent No. 9,665,705 - "Remote Entry System," Issued May 30, 2017
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’208 Patent, this patent addresses the same security vulnerabilities in wired access systems where the communication path between the user interface and the controller is exposed (’705 Patent, col. 2:52-65).
- The Patented Solution: The invention claims a system with a similar architecture to the ’208 Patent: a transmitter sub-system authenticates a user via a biometric sensor and communicates wirelessly and securely with a receiver sub-system to grant access. This patent uses more concrete structural language like "controller" and "transmitter" in its claims rather than the "means-plus-function" language of the parent patent (’705 Patent, Abstract; col. 6:1-20).
- Technical Importance: This patent continues the effort to secure access control systems by removing the vulnerable physical wiring and replacing it with an encrypted, non-replayable wireless protocol (’705 Patent, col. 5:35-44).
Key Claims at a Glance
- The complaint asserts independent claim 1, a system claim, which includes the following essential elements:
- A memory comprising a database of biometric signatures.
- A transmitter sub-system with a biometric sensor, a controller to match the biometric signal, and a transmitter to emit a secure signal.
- A receiver sub-system with a controller to receive the secure signal and provide conditional access to a controlled item.
- The transmitter sub-system controller is also configured to populate the database.
Multi-Patent Capsule: U.S. Patent No. 8,620,039 - "Card Device Security using Biometrics," Issued December 31, 2013
- Technology Synopsis: This patent addresses privacy and complexity issues with centralized biometric databases used for transaction authentication (’039 Patent, col. 2:32-43). The invention describes a "verification station" (e.g., a point-of-sale terminal) that, upon a user's first use of a card, stores the user's biometric signature in its local memory. The card's information acts as a "pointer" to this locally-stored data. All subsequent transactions at that specific station require both the card and a live biometric input that matches the locally stored signature, avoiding the need for a central database lookup (’039 Patent, Abstract; col.2:50-65).
- Asserted Claims: The complaint asserts independent claim 13 (’039 Patent, col. 14:12-25).
- Accused Features: The complaint alleges infringement by iPhones and iPads equipped with Touch ID or Face ID when used to access an Apple Card loaded in the iPhone Wallet (Compl. ¶2, 40).
III. The Accused Instrumentality
Product Identification
- The complaint names two categories of accused products:
- Secure Access Accused Products: iPhones and iPads equipped with Touch ID or Face ID, accused of infringing the ’208 and ’705 Patents (Compl. ¶2).
- Secure Pay Accused Products: The "Secure Access Accused Products" when also equipped with an Apple Card loaded into the iPhone Wallet, accused of infringing the ’039 Patent (Compl. ¶2).
Functionality and Market Context
- The accused functionality centers on Apple's biometric security features, Touch ID (fingerprint recognition) and Face ID (facial recognition), which were introduced in 2013 and 2017, respectively (Compl. ¶17).
- The complaint alleges these features are used for device access and payment authorization (Compl. ¶17). For the '039 Patent, the infringement theory specifically involves the integration of Touch ID and Face ID with the Apple Card for authenticating transactions within the iPhone Wallet application (Compl. ¶18, 40). These biometric systems are fundamental to the security model and user experience of Apple's mobile products.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'208 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transmitter sub-system | The iPhone or iPad device itself, which authenticates the user and prepares an access signal. | ¶2 | col. 13:30 |
| a biometric sensor for receiving a biometric signal | The Touch ID (fingerprint) or Face ID (facial recognition) hardware on the accused device. | ¶2, 17 | col. 13:31 |
| a database of biometric signatures | The Secure Enclave within the device's processor, which stores the user's enrolled biometric templates. | ¶14 | col. 13:27 |
| means for matching the biometric signal against members of the database | The processing components within the Secure Enclave that compare the live biometric input to the stored template. | ¶14, 17 | col. 13:33 |
| means for emitting a secure access signal | The device generating an internal, authenticated signal to the main OS after a successful biometric match. | ¶14 | col. 13:36 |
| a receiver sub-system | The main application processor and operating system of the device that receives the internal authentication signal. | ¶2, 14 | col. 13:40 |
| means for providing conditional access to the controlled item | The device's operating system unlocking the device or authorizing a payment, where the "controlled item" is the device's software functionality. | ¶14 | col. 13:44 |
'705 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a transmitter sub-system comprising: a biometric sensor... a transmitter sub-system controller... a transmitter | The iPhone or iPad, comprising the Touch/Face ID sensor and Secure Enclave processor that matches the biometric data and generates an internal signal. | ¶2, 17 | col. 16:1-12 |
| a receiver sub-system comprising: a receiver sub-system controller configured to: receive the transmitted secure access signal; and provide conditional access to the controlled item | The main CPU and OS of the iPhone or iPad, which receive the internal authentication signal from the Secure Enclave and grant access to device functions. | ¶2, 14 | col. 16:13-19 |
| the transmitter sub-system controller is further configured to... populate the data base | The device's setup process, which guides a user to enroll their fingerprint or face, thereby populating the biometric database in the Secure Enclave. | ¶28, 34 | col. 16:20-24 |
Identified Points of Contention
- Architectural Scope: A primary question for the ’208 and ’705 patents is whether the claimed system, which the specification depicts as two physically separate components (a "remote fob" and a "receiver"), can read on the highly integrated architecture of a single smartphone. The dispute may focus on whether the claimed "transmitter sub-system" and "receiver sub-system" can be interpreted as merely logically distinct software and hardware blocks within a single device, or if they require physical separation as illustrated in the patent to solve the stated problem of an insecure wire between two locations.
- Definitional Scope: For the ’039 Patent, a key question is whether the user's own iPhone can be considered a "verification station." The patent describes this station in the context of a third-party terminal (e.g., an ATM or merchant card reader) that stores biometric data for users who transact there, raising the question of whether the claim language covers a personal device storing only its owner's data for its own use.
V. Key Claim Terms for Construction
Term: "transmitter sub-system" / "receiver sub-system" (’208 and ’705 Patents)
- Context and Importance: The infringement case for the ’208 and ’705 patents hinges on mapping these two "sub-systems" onto a single iPhone. The court's construction of these terms—whether they can be co-located within one device or must be physically separate—will be dispositive.
- Evidence for a Broader Interpretation: The plain language of the claims does not explicitly require the sub-systems to be in separate physical housings. Plaintiff may argue they are distinct functional and logical modules, even if on the same circuit board.
- Evidence for a Narrower Interpretation: The specification consistently describes the invention in the context of a "remote key fob" communicating with a separate receiver/controller to solve the problem of insecure wiring between a door and a secure room (’208 Patent, col. 7:26-30). Figures also depict two physically separate units (’208 Patent, Fig. 2).
Term: "verification station" (’039 Patent)
- Context and Importance: Infringement of the '039 Patent depends on whether an iPhone itself can be the claimed "verification station." Practitioners may focus on this term because the patent's disclosure appears to contemplate a terminal operated by a third party (e.g., a merchant), not the user's personal device.
- Evidence for a Broader Interpretation: The claims do not explicitly restrict the location or ownership of the "verification station."
- Evidence for a Narrower Interpretation: The specification describes the station as comprising a "card device reader," a "biometric reader," and a "keypad," and provides examples like ATM withdrawals and credit purchases, which strongly suggests a merchant- or bank-owned terminal (’039 Patent, col. 6:30-35; Fig. 3). The described enrolment process involves a user's first use at a particular station, a scenario that seems inconsistent with a user's own phone.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for all three patents. The factual basis is Apple's alleged knowledge of the patents combined with its marketing and user manuals, which allegedly instruct customers on how to set up and use the accused Touch ID and Face ID features for device access and payments (Compl. ¶28, 34, 40).
- Willful Infringement: The complaint lays the groundwork for willfulness by alleging specific dates of pre-suit knowledge. It claims notice regarding the ’705 and ’039 patents was provided on March 19, 2020, and that Apple's counsel acknowledged awareness of the ’208 patent in a letter dated May 14, 2020 (Compl. ¶22, 23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural interpretation: Can the '208 and '705 patents, which claim a "transmitter sub-system" and a separate "receiver sub-system" to solve a problem of insecure physical wiring, be construed to cover the integrated, on-chip security architecture of a single smartphone?
- A second key issue will be one of definitional scope: For the '039 patent, can the term "verification station," described in the patent's context as a third-party transaction terminal, be interpreted to read on a user's personal iPhone storing its owner's biometric data for self-authentication?
- An underlying evidentiary question will be one of technical mapping: Even if the claims are construed broadly, does the specific operation of Apple's Secure Enclave and OS—where an internal, encrypted signal is passed between processor cores—constitute the "emitting" and "receiving" of a "secure access signal" between two distinct "sub-systems" as required by the claims?