CPC Patent Technologies Pty Ltd v Apple Pty Limited
[2025] FCA 489
•15 May 2025
FEDERAL COURT OF AUSTRALIA
CPC Patent Technologies Pty Ltd v Apple Pty Limited [2025] FCA 489
File number(s): NSD 998 of 2021 Judgment of: BURLEY J Date of judgment: 15 May 2025 Catchwords: PATENTS – patents for secure access systems – claim construction – infringement – validity
PATENTS – construction of the asserted claims – construction of seven contested integers
PATENTS – infringement – where the impugned devices incorporate biometric security systems utilising fingerprint and face recognition – factual contest regarding operation of the impugned devices – no contested integers found to be embodied in the impugned devices – no infringement found
PATENTS – validity – relevant priority date – where patents claim a priority date based on provisional specification –whether patents fairly based on disclosure in provisional specification – external fair basis test – patents not fairly based – deferred priority date applies
PATENTS – validity – novelty – where novelty case largely considered on an alternative construction of the contested integers to that accepted by the Court – whether four prior art publications being patents and patent applications anticipate the claimed invention – various claims anticipated on an alternate construction – some claims also anticipated on proper construction
PATENTS – validity – insufficiency – ground not established
Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) ss 7, 18(1)(a), 18(1)(b)(i), 40(2)(a), 40(3), 43(2)
Patents Amendment (Innovation Patents) Act 2000 (Cth)
Patents Regulations 1991 (Cth) regs 3.12(1)(b), 3.12(1)(c), 3.12(2)(a), 3.12(2C)
Statute of Monopolies (1623) (21 Jac 1, c 3) s 6
Cases cited: Anaesthetic Supplies Pty Ltd v Rescare Ltd [1994] FCA 304; (1994) 50 FCR 1
Apotex Pty Ltd v ICOS Corporation (No 3) [2018] FCA 1204; (2018) 135 IPR 13
Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735; (2015) 114 IPR 28
AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; (2014) 226 FCR 324
Australian Securities and Investments Commission v Hellicar [2012] HCA 17; (2012) 247 CLR 345
Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75; (2010) 86 IPR 468
Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651; (2015) 113 IPR 280
Catnic Components v Hill & Smith Ltd [1982] RPC 183
CCOM Pty Ltd v Jiejing Pty Ltd [1994] FCA 396; (1994) 51 FCR 260
Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (2020) 277 FCR 267
Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54; (2017) 250 FCR 136
Encompass Corp Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; (2019) 372 ALR 646
Flour Oxidizing Company Ltd v Carr & Co Ltd [1908] 25 RPC 428
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1971] 7 WLUK 130; [1972] RPC 457
Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017; (2023) 180 IPR 315
Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155
Leonardis v Sartas No 1 Pty Ltd [1996] FCA 449; (1996) 67 FCR 126
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; (2020) 155 IPR 1
Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228
Novartis AG v Pharmacor Pty Limited (No 3) [2024] FCA 1307
Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92; (2022) 165 IPR 200
Rescare Ltd v Anaesthetic Supplies Pty Ltd [1992] FCA 811; (1992) 111 ALR 205
Technological Resources Pty Limited v Tettman [2019] FCA 1889; (2019) 375 ALR 185
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 673 Date of last submission/s: 18 February 2024 Date of hearing: 16–20 October 2023; 27 October 2023 – 3 November 2023; 5–9 February 2024 Counsel for the Applicant / Cross-Respondent: Mr AJL Bannon SC, Mr C Dimitriadis SC, Ms M Evetts Solicitor for the Applicant / Cross-Respondent: Gilbert + Tobin Counsel for the Respondents / Cross-Claimants: Mr B Caine KC, Mr A Lang SC, Mr P Creighton-Selvay Solicitor for the Respondents / Cross-Claimants: DLA Piper ORDERS
NSD 998 of 2021 BETWEEN: CPC PATENT TECHNOLOGIES PTY LTD (ACN 615 736 028)
Applicant
AND: APPLE PTY LIMITED (ACN 002 510 054)
First Respondent
APPLE INC.
Second Respondent
AND BETWEEN: APPLE PTY LIMITED (ACN 002 510 054) (and another named in the Schedule)
First Cross-Claimant
AND: CPC PATENT TECHNOLOGIES PTY LTD (ACN 615 736 028)
Cross-Respondent
ORDER MADE BY:
BURLEY J
DATE OF ORDER:
15 MAY 2025
THE COURT ORDERS THAT:
1.The parties confer and supply to the chambers of Justice Burley by 4pm on 12 June 2025 draft short minutes of order giving effect to these reasons and a proposed timetable for further steps to be taken in the proceedings.
2.Until further order, the reasons for judgment not be disclosed to or published by any person, save for those persons who have executed suitable confidentiality agreements as determined in the first instance by the solicitors acting for the parties.
3.The parties confer and supply to the chambers of Justice Burley by 4pm on 12 June 2025:
(a)a list identifying any paragraphs or parts therefore of these reasons for judgment which are said to contain confidential information and that ought not be published in an unredacted form, including the reasons why such a confidentiality claim is made; and
(b)a copy of these reasons for judgment with the paragraphs or parts therefore which are said to contain confidential information highlighted (or otherwise marked for identification).
4.Insofar as the parties are unable to agree to the terms of the draft short minutes of order referred to in order 1 or the list of confidential information referred to in order 3, the areas of disagreement should be set out in mark-up.
5.The proceedings be listed for case management at 9:30am on 18 June 2025.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
REASONS FOR JUDGMENT
1 INTRODUCTION
[1]
1.1 The proceedings
[1]
1.2 CPC’s infringement case
[6]
1.3 Apple’s invalidity case
[12]
1.4 Agreed primer and common general knowledge summary
[15]
2 THE WITNESSES
[17]
2.1 Apple Engineers
[17]
2.2 Apple Lay evidence
[32]
2.3 Expert evidence
[36]
3 THE PATENTS
[50]
3.1 The specification
[51]
3.2 Asserted claims of the 168 patent
[87]
3.3 Asserted claims of the 293 patent
[88]
3.4 The field of the invention
[89]
3.5 The skilled addressee
[92]
4 CLAIM CONSTRUCTION
[97]
4.1 Introduction
[97]
4.2 Relevant law
[98]
4.3 Controlled item
[99]
4.3.1 The submissions
[101]
4.3.2 Consideration
[103]
4.4 Accessibility attribute
[112]
4.4.1 The submissions
[114]
4.4.2 Consideration
[117]
4.5 Transmitter sub-system and receiver sub-system
[146]
4.5.1 The submissions
[148]
4.5.2 Consideration
[151]
4.6 Secure access signal
[170]
4.6.1 The submissions
[172]
4.6.2 Consideration
[174]
4.7 Conditional access
[177]
4.7.1 The submissions
[179]
4.7.2 Consideration
[181]
4.8 Administrator signature
[185]
4.8.1 The submissions
[187]
4.8.2 Consideration
[189]
4.9 Series feature
[195]
4.9.1 The submissions
[196]
4.9.2 Consideration
[198]
5 THE APPLE DEVICES
[213]
5.1 Introduction
[213]
5.2 The evidence concerning the Apple Devices
[216]
5.3 The development of the working documents
[231]
5.4 Background to the operation of the Apple Devices
[243]
5.4.1 Overview of the touch ID, face ID and data protection architecture
[244]
5.5 Biometric enrolment
[257]
5.5.1 [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted]
[258]
5.5.2 Steps involved in biometric enrolment – exemplar categories 1, 2 and 3
[258]
5.5.3 Steps involved in biometric enrolment – exemplar categories 4 and 5
[278]
5.6 Biometric matching
[279]
5.6.1 [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted] [redacted]
[]
5.6.2 Steps involved in biometric matching to access the home screen – exemplar categories 1, 2 and 3
[281]
5.6.3 Steps involved in biometric matching to access the home screen – exemplar categories 4 and 5
[306]
5.6.4 Steps involved in biometric matching to access 1st and 3rd party applications
[307]
5.6.5 Steps involved in biometric matching to access Apple Wallet
[327]
5.7 Disputed factual matters
[342]
5.7.1 Role of [redacted] [redacted] in biometric enrolment – step 5 of biometric enrolment
[342]
5.7.2 Role of [redacted] [redacted] in encrypting and decrypting templates in biometric enrolment and matching – step 18 of biometric enrolment and biometric matching
[346]
6 INFRINGEMENT
[363]
6.1 Introduction
[363]
6.2 Controlled item (and conditional access to the controlled item)
[366]
6.2.1 The submissions
[369]
6.2.2 Consideration
[372]
6.3 Transmitter sub-system and receiver sub-system
[379]
6.3.1 The submissions
[381]
6.3.2 Consideration
[388]
6.4 Accessibility attribute
[429]
6.4.1 The submissions
[430]
6.4.2 Consideration
[436]
6.5 Series feature
[445]
6.5.1 The submissions
[446]
6.5.2 Consideration
[449]
6.6 Administrator signature
[454]
6.6.1 The submissions
[455]
6.6.2 Consideration
[457]
6.7 Conclusions in relation to infringement
[462]
7 VALIDITY
[466]
8 DEFERRED PRIORITY DATE
[472]
8.1 Introduction
[472]
8.2 Relevant law
[473]
8.3 The disclosure of the provisional specification
[482]
8.4 The submissions
[492]
8.5 Consideration
[497]
9 NOVELTY
[523]
9.1 Introduction
[523]
9.2 Relevant law
[525]
9.3 Scott
[528]
9.3.1 The disclosure
[530]
9.3.2 The submissions
[544]
9.3.3 Consideration
[546]
9.3.4 Conclusion in relation to Scott
[560]
9.4 Hamid
[589]
9.5 Mathiassen
[590]
9.5.1 The disclosure
[593]
9.5.2 The submissions
[604]
9.5.3 Consideration
[608]
9.5.4 Conclusion in relation to Mathiassen
[621]
9.6 Wuidart
[622]
9.6.1 The disclosure
[624]
9.6.2 The submissions
[632]
9.6.3 Consideration
[634]
9.6.4 Conclusion in relation to Wuidart
[646]
10 LACK OF INVENTIVE STEP
[647]
11 MANNER OF MANUFACTURE
[648]
12 SECTION 40 CHALLENGES TO VALIDITY
[652]
12.1 Fair basis
[652]
12.2 Insufficiency
[667]
12.3 Lack of clarity
[669]
13 CONCLUSION
[672]
BURLEY J:
1. INTRODUCTION
1.1 The proceedings
CPC Patent Technologies Pty Ltd contends that Apple Pty Ltd and Apple Inc (collectively, Apple) have infringed claims of two patents, both entitled “Remote entry system”, by the use of biometric security systems – fingerprint recognition (touch ID) and face recognition (face ID) – for the purpose of unlocking all or parts of certain Apple devices. The patents relate to the field of secure access systems and, in particular, to systems using wireless transmission of security code information.
The patents claim a priority date of 13 August 2003. CPC contends that Apple has infringed claims 1, 2, 3, 5 and 6 of Australian patent no. 2004301168 (168 patent) and claims 1, 27, 29, 37, 39 and 41 of Australian patent no. 2009201293 (293 patent). These are referred to below as the asserted claims.
Apple denies infringement and contends that the patents are invalid for want of novelty, absence of an inventive step, lack of manner of manufacture and grounds pursuant to s 40 of the Patents Act 1990 (Cth).
The applicable version of the Patents Act is that following the amendments made by the Patents Amendment (Innovation Patents) Act 2000 (Cth), but before those made by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (RTB Act).
By orders made on 6 May 2022 questions of liability for infringement are to be heard and determined separately and before questions relating to pecuniary relief. This judgment accordingly addresses liability only.
1.2 CPC’s infringement case
In its further amended statement of claim, CPC contends that Apple infringes the patents by offering for sale and selling in Australia, at various identified dates, 49 devices with touch ID and 21 devices with face ID, and 48 accessories that work with some or all of those devices. CPC sets out its infringement case in its fifth further amended position statement on infringement dated 27 October 2023 and in a document of the same date entitled “Applicant’s integer breakdown with cross-references to the Workings Documents”.
The parties agreed in advance of the trial that disputes in relation to the workings of these devices and accessories can be resolved by reference to the following five exemplar categories:
(1)iPhones and iPads with touch ID;
(2)MacBooks with touch ID;
(3)iPhones and iPads with face ID;
(4)Apple Watches in combination with Apple Devices; and
(5)Magic Keyboards in combination with Apple Devices.
I refer below to the impugned iPhone, iPad and MacBook devices as the Apple Devices.
It may be noted that iPhones and iPads use the iOS operating system and MacBooks use the MacOS operating system. This distinction is relevant to consideration of the infringement case.
The infringement case raises significant issues concerning the construction of the asserted claims and their application to the Apple Devices.
During the interlocutory stages of the proceedings there were also a number of issues about whether or not Apple had adequately disclosed the workings of its devices. This is perhaps not surprising given that they are complex items of hardware and software. I refer to some of the disputed matters later in these reasons. However, I note that by the time of closing submissions disputes as to the operation of the devices were largely resolved. Thus, the major dispute concerns whether or not the Apple Devices fall within the scope of the claims.
I set out in some detail, in section 5 below, the operation of the Apple Devices, including the role of various hardware and software components within the Apple Devices, and the steps undertaken by them in the biometric enrolment and biometric matching processes. The internal operations of the Apple Devices are, I accept, confidential. Accordingly, it has been necessary to mark the parts of these reasons that provide details of those operations relevant to the dispute between the parties as not for publication.
1.3 Apple’s invalidity case
In its further amended statement of cross claim dated 4 October 2023 Apple advances the following grounds for the revocation of the asserted claims of the 168 patent, namely that the asserted claims:
(1)are not entitled to claim priority from 13 August 2003 based on the earliest priority document filed in respect of that patent, being Australian patent application no. 2003904317 (provisional specification), because the asserted claims are not fairly based on matters disclosed in the provisional specification, as required by s 43(2) of the Patents Act, with the consequence that the deferred priority date of 13 August 2004 applies, being the filing date of the 168 patent;
(2)are not novel because of the publication, before the priority date, of each of:
(a)United States patent no. 6,164,403 (Wuidart);
(b)United States patent application no. 2002/0138767 A1 (Hamid);
(c)United States patent no. 6,484,260 B1 (Scott);
(d)United States patent no. 6,182,221 B1 (Hsu); and
(e)Reference Guide – hp iPAQ Pocket PC h5400 series – Document Part Number: 281984-001 (iPAQ Reference Guide);
(3)are not novel because of the publication, before the deferred priority date, of each of the documents identified in (2) above and:
(a)United States patent application no. 2004/0123113 A1 (Mathiassen);
(4)lack inventive step before the priority date in the light of the common general knowledge alone and also having regard to the disclosure of each of Hamid, Scott and Hsu;
(5)lack inventive step before the deferred priority date in the light of the common general knowledge alone and also having regard to the disclosure in each of the documents identified in (3) and (4) above;
(6)lack a manner of manufacture;
(7)lack fair basis within s 40(3) of the Patents Act;
(8)lack clarity within s 40(3) of the Patents Act; and
(9)are not valid because the complete specification does not fully describe the invention as claimed, as required by s 40(2)(a) of the Patents Act.
Apple advances the substantially the same grounds of invalidity in respect of the asserted claims of the 293 patent.
On 18 February 2024, following closing submissions in the proceedings, Apple indicated that it: (a) no longer presses its novelty case in respect of Hsu; and (b) no longer presses its lack of inventive step case based on s 7(3) of the Patents Act, and seeks only to press its lack of inventive step case as at the relevant priority date in light of the common general knowledge alone. It also indicated that it does not press certain grounds of invalidity dependent upon the resolution of some of the construction arguments. I refer to this further below.
1.4 Agreed primer and common general knowledge summary
The parties produced a document entitled “Combined Primer and CGK Summary” in response to directions made early in the proceedings. Those directions required that: (a) CPC identify a portion of its expert evidence in chief on its infringement claim that contains an introduction to the relevant technology and a glossary of relevant terms as at the priority date which may serve as a technical primer; (b) Apple identify a portion in its expert evidence in chief on its cross-claim that includes a summary of the relevant common general knowledge known to the person skilled in the art before the priority date; and (c) each party respond, by its expert evidence, to the primer and the common general knowledge summaries indicating whether the expert agreed with its contents and otherwise marked it up to indicate where they disagree with or wish to supplement its contents with additional detail.
A separate document was then prepared which included this mark-up, resulting in the combined primer and common general knowledge summary document, as filed. In the present case, Associate Professor Boztas and Dr Dunstone were the experts who contributed to the primer and the common general knowledge summary. Where I refer below to the primer or common general knowledge summary, it is generally to the relevant portions of the Combined Primer and CGK Summary that have been agreed.
2. THE WITNESSES
2.1 Apple Engineers
Petr Kostka has been a software development manager for the Core OS team at Apple Inc. since 2012. He is based in Prague, Czech Republic, and is responsible for the management of a team of nine engineers and managers whose role is to create and update the software that provides biometric services to software applications running on Apple’s operating systems. His team is also responsible for the software that controls touch ID and most of the software that controls face ID, including the interaction between the software the controls face ID and certain hardware components such as the Secure Enclave Processor (SEP). He gives evidence that he has a detailed understanding of the design, development and operation of touch ID and face ID on all Apple products since 2012. Mr Kostka affirmed three affidavits, on 12 July 2023, 28 September 2023 and 14 October 2023. He also verified the accuracy of the Product and Process Description (PPD) dated 27 May 2022.
In his first affidavit, Mr Kostka addresses the PPD, provides an overview of touch ID and face ID as it operates at a high level and describes the process of enrolling a fingerprint using touch ID. He refers to the hardware and software components involved in enrolment for touch ID and face ID and provides some detail of the process of unlocking the device using touch ID. He also describes enrolling and unlocking the device using face ID and the use of the fingerprint sensor on the Magic Keyboard and responds briefly to evidence given by Associate Professor Boztas.
In his second affidavit, Mr Kostka gives evidence about Apple Wallet and Apple Pay, including the role of a piece of code known as SSE (or Secure, Secure Element) and the authentication process for Apple Pay. In his third affidavit, he responds to evidence given by Professor Smith.
Mr Kostka was cross examined.
Wade Benson is a software development engineer and has been working within the Security Engineering and Architecture team at Apple Inc. since 2011. He affirmed three affidavits, on 12 July 2023, 28 September 2023 and 14 October 2023.
In his first affidavit, he addresses a number of matters including the security architecture used during the unlocking of an Apple product by reference to a high-level description of the hardware and software components of the device and gives evidence about data protection on Apple products. He describes unlocking an Apple product using a passcode, communication between and within the Application Processor (AP) and the Secure Enclave Processor (SEP) and unlocking an Apple product following a touch ID or face ID match. He refers to the PPD and gives evidence that in his affidavit he describes “with greater precision and detail” aspects to which reference is made in the PPD.
In his second affidavit, Mr Benson describes further detail regarding unlocking an Apple product and describes further levels of authentication for particular applications within an Apple product, accessing a Keychain item on an Apple device, applications imposing security policies, multi-user access on macOS devices and differences in unlock processes depending on the type of user account. In his third affidavit, he responds to evidence given by Professor Smith.
Mr Benson was cross examined.
Nicole Wells has, since October 2019, been a machine learning manager in the Face ID Algorithm Team in the Video Engineering Group at Apple Inc., which is responsible for the software that controls the face ID matching and enrolment algorithms located in the Secure Enclave on the System on a Chip (SoC). She affirmed one affidavit on 12 July 2023 where she describes enrolling a face on Apple products using face ID, the algorithms used in that process and the process of matching to unlock the device.
Ms Wells was cross examined.
Timothy Paaske is an electrical engineer who has been employed by Apple since 2011 in a variety of roles related to hardware architecture. His current role is as an Engineering Director of two teams, Platform Architecture Security and Power/Performance/Thermals. Mr Paaske affirmed two affidavits, on 7 September 2023 and 14 October 2023.
In his first affidavit, he gives evidence about the role and functionality of the “Apple Fabric”. In so doing, he explains that the term “fabric” in computer systems refers to the interconnections between components that are formed into a single silicon chip and that the Apple Fabric is used to refer to the silicon interconnections between different fabric agents and the memory sub-system. He explains that the term “agent” is used to refer to a component that accesses and communicates over the Apple Fabric. He also gives evidence that the Apple Fabric may be described as a “bus”, being a communications system that transfers data between components inside a computer.
In his second affidavit, he provides annotations to a block diagram included in his first affidavit, as well as some corrections to his first affidavit.
Mr Paaske was cross examined.
I refer to Mr Kostka, Mr Benson, Ms Wells and Mr Paaske collectively as the Apple Engineers.
2.2 Apple Lay evidence
Brenda Sherman has been a senior litigation paralegal at HP Inc., the successor to the Hewlett-Packard Company, since 2009. Ms Sherman affirmed an affidavit on 31 May 2023, giving evidence about the publication of the iPAQ Reference Guide, which is relied upon by Apple in its invalidity case.
Ms Sherman was not cross examined.
Christopher Butler is an office manager at the Internet Archive, a website that provides access to a digital library of internet sites. He gives evidence about the operation of the “Wayback Machine”, which enables users to browse historical webpages stored in the Internet Archive’s web archive. He annexes to his affidavit a print-out of the programs for The Biometric Consortium Conferences held in February and September 2002.
Mr Butler was not cross examined.
2.3 Expert evidence
Serdar Boztas is an Associate Professor of Information Security at the Royal Melbourne Institute of Technology University with over 40 years’ experience in biometrics, cryptography and information security. In this role, he has convened courses on cryptography, information and coding theory, information security, smartcard cryptosystems and mathematics. Associate Professor Boztas is also the Director of Communications, Cybersecurity and Cryptography Research at the University Research Foundation, Maryland Advanced Development Laboratory. In 1990 he was awarded a Doctorate in Electrical Engineering from the University of Southern California and from 1992 to 1995 he was a lecturer at Monash University focussing on courses in communication engineering.
Associate Professor Boztas was asked to give expert evidence by CPC and affirmed four affidavits, dated 2 March 2023, 25 July 2023, 17 August 2023 and 29 October 2023.
In his first affidavit he identifies and describes technical terms used in the field of the patents and specific terms and phrases used in the specifications. He also gives evidence that he had reviewed the PPD and various other Apple documents which he relies upon to provide his opinion as to whether the Apple Devices fall within the asserted claims. In his second affidavit, he gives his opinion as to the qualifications, experience and expertise of the skilled addressee of the patents and responds to Dr Dunstone’s evidence regarding the common general knowledge before addressing the evidence of Dr Dunstone concerning the relevance of the prior art documents, relied upon by Apple, to the claimed invention. In his third affidavit, Associate Professor Boztas records that he was provided with the affidavits of Mr Kostka, Mr Benson and Ms Wells dated 12 July 2023, the fifth affidavit of Dr Dunstone dated 14 July 2023 and some confidential source code applicable to the Apple Devices and provides his confidential responses to these in the context of the infringement case. In his fourth affidavit, he was provided with additional material relating to the touch ID and face ID functionality in the Apple Devices by reference to extracts of oral evidence from Mr Kostka, Mr Benson and Ms Wells. He reviews those extracts and gives additional evidence in relation to CPC’s infringement case.
Hugh Smith is a Professor of Computer Science/Computer Engineering at California Polytechnic State University, with over 40 years’ experience in programming and computer hardware and software. He was asked to give expert evidence by CPC and swore four affidavits, on 15 August 2023, 7 October 2023, 12 October 2023 and 17 October 2023 which largely set out his understanding of the components and workings of the Apple Devices in respect of touch ID and face ID as disclosed in the PPD, Apple documents provided to him by Gilbert + Tobin, the solicitors acting for CPC, and the affidavits of the Apple Engineers.
Professor Smith was the subject of limited cross examination and did not participate in the preparation of a joint expert report or concurrent evidence. Where I refer below to the evidence of the experts, unless otherwise stated, this is a reference to Associate Professor Boztas and Dr Dunstone, but not Professor Smith.
Edward Dunstone is a computer systems engineers and the Chief Executive Officer of Biometix Pty Ltd, a biometric consultancy that assists governments and other organisation with biometric and identity security systems. Dr Dunstone has worked in the field of secure access and biometrics for over 25 years. He was asked to give expert evidence by Apple and affirmed seven affidavits dated 20 March 2023, 24 March 2023, 5 May 2023, 17 May 2023, 14 July 2023, 29 September 2023 and 29 October 2023.
In his first affidavit, he gives details of his background and experience before the priority date, how he kept up with developments in the field of the patents and matters he considered to be within the common general knowledge in the field. In his second affidavit, he gives evidence of how he would solve an hypothetical problem posed by the solicitors instructing him and the characteristics of a person skilled in the art relevant to the patents. He addresses the prior art relied upon in Apple’s lack of novelty and lack of inventive step cases and then turns to the patents, providing his understanding of their disclosure and his understanding of terms in the claims. He also addresses the disclosure of the provisional specification, being the priority document for the patents. In his third affidavit, Dr Dunstone makes corrections to his earlier affidavits.
In his fourth affidavit, he considers the iPAQ Reference Guide in the context of the infringement, lack of novelty and lack of inventive step cases. In his fifth affidavit, Dr Dunstone is provided with a copy of the PPD and various Apple documents annexed to the PPD, as well as some additional Apple materials and the first affidavits of Associate Professor Boztas, Mr Kostka, Mr Benson and Ms Wells. He also refers to inspecting Apple’s source code in June 2023 and provides a summary of his understanding of the operation of the touch ID and face ID functionality of the Apple Devices. He then gives his opinion as to whether the integers in each of the asserted claims are present in the Apple Devices before responding to the evidence of Associate Professor Boztas in relation to the construction of the patents and infringement of the asserted claims.
In his sixth affidavit, Dr Dunstone annexes copies of his first and second affidavits with the amendments indicated in his third affidavit shown in mark-up. In his seventh affidavit, Dr Dunstone refers to the October 2023 affidavits of Messrs Benson, Kostka and Paaske and the transcript of their oral evidence and the oral evidence of Ms Wells. He is also provided with two confidential workings documents. He then gives opinion evidence concerning the infringement case.
Associate Professor Boztas and Dr Dunstone participated in a series of joint expert conferences and produced a joint expert report on 15 September 2023 (JER 1). Following the filing of further evidence of Messrs Kostka, Benson and Paaske in September 2023 shortly before the commencement of the hearing on 16 October 2023, Associate Professor Boztas and Dr Dunstone conferred and produced a second joint expert report on 5 October 2023. They gave concurrent evidence and were cross examined.
Rodney Cruise is an IP researcher and patent attorney, a partner of Phillip Ormonde Fitzpatrick and manager of IP Organisers Pty Ltd, an intellectual property research service company. He was asked to give expert evidence by Apple and affirmed an affidavit on 24 March 2023. He gives expert evidence about two searches that he was instructed to carry out for publications available on various databases prior to 13 August 2003 and 13 August 2004 and gives his opinion as to whether various prior art documents relied upon by Apple in its invalidity case would have been available before those dates.
Mr Cruise was cross examined.
George Mokdsi is a patent searcher and a director of The Patent Searcher Pty Ltd, a company specialising in patent analysis and research. He has been engaged full time in the conduct of patent searching and analytics since 2000. He was asked to give expert evidence by CPC and swore two affidavits, on 28 July 2023 and 27 October 2023. He gives evidence in answer to the affidavit of Mr Cruise, taking issue with the searches that he conducted, and the opinions expressed regarding those search results, including in relation to the searching parameters available in August 2003 and August 2004 and the results likely to have been returned as at those dates.
Mr Mokdsi was cross examined.
3. THE PATENTS
The specification of each the patents is materially the same with the exception of the consistory clauses and claims. For convenience, unless otherwise stated, the references below are to the 168 patent.
3.1 The specification
The “Field of the Invention” relates to secure access systems and, in particular, to systems using wireless transmission of security code information.
The “Background” provides some detail by reference to figure 1 (below) which is said to show a prior art arrangement for providing secure access:
Figure 1 is described in the specification to involve a user (401) making a request (402) by way of secure code such as a sequence of secret numbers or a biometric signal (such as a fingerprint or retinal pattern) directed to a code entry module (403) such as a keypad or a biometric sensor mounted on the external jamb of a secure door. The code entry module (403) conveys the request by sending a corresponding signal (404) to a controller (405) which is typically located in a remote or inaccessible place. The controller authenticates the security information by interrogating a database (407). If the user is authenticated and has the appropriate access privileges, the controller sends an access signal (408) to a device (409) in order to provide the desired access. (In this respect I note that the arrow on the line identified as 408 points in the wrong direction.) The device can be, for example, the locking mechanism of a secure door or an electronic lock on a personal computer which the user desires to access.
The specification on page 2, at lines 1 to 12, identifies problems with the prior art arrangement so described as follows:
Although the request 402 can be made secure, either by increasing the number of secret digits or by using a biometric system, the communication infrastructure in Fig. 1 is typically less secure. The infrastructure 400 is generally hardwired, with the code entry module 403 generally being mounted on the outside jamb of a secured door. In such a situation, the signal path 404 can be over a significant distance in order to reach the controller 405. The path 404 represents one weak point in the security system 400, providing an unauthorised person with relatively easy access to the information being transmitted between the code entry module 403 and the controller 405. Such an unauthorised person can, given this physical access, decipher the communicated information between the code entry module 403 and the controller 405. This captured information can be deciphered, replayed in order to gain the access which rightfully belongs to the user 401, or to enable modification for other subversive purposes.
The specification then refers to prior art systems as depicted in figure 1 using a communication protocol called “Wiegand”. The specification explains that it is a simple one-way data protocol that can be modified to ensure uniqueness of the protocol between different security companies, but it does not secure the information being sent between the code entry module (403) and the controller (405). It then goes on as follows (page 2 line 19 to page 3 line 3):
More advanced protocols such as RS 485 have been used in order to overcome the vulnerability of the Wiegand protocol over the long distance route 404. RS 485 is a duplex protocol offering encryption capabilities at both the transmitting and receiving ends, ie. the code entry module 403 and the controller 405 respectively in the present case. The length of the path 404 nonetheless provides an attack point for the unauthorised person.
Due to the cost and complexity of re-wiring buildings and facilities, security companies often make use of existing communication cabling when installing and/or upgraded security systems, thereby maintaining the vulnerability described above.
The specification then proceeds under a heading, “Summary”, to provide that it is an object of the invention to overcome or ameliorate one or more disadvantages of existing arrangements.
It then sets out a number of aspects of the invention, the language of which in the 168 patent correlates with the language of each of claims 1 to 5, 14, 16 and 17 and meets the definition of a “consistory clause”, being a statement of what the inventor asserts to be the invention of the type identified in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58; (2004) 217 CLR 274 (Lockwood No 1) at [10]. In section 3.2 below I have set out in full each of the asserted claims of the 168 patent, being claims 1, 2, 3, 5 and 6, although it is to be noted that in the “Summary”, the patentee asserts as its invention all of the aspects so described. The specification of the 293 patent adopts the same approach by recording a number of aspects of the invention asserted using language that conforms with each of claims 1, 14, 21, 27, 31, 33, 37, 39 and part of 41.
There follows a brief description of each of the 10 figures which are subsequently described in greater detail, aspects of which are referred to below.
Figure 2 is a diagram of an arrangement for providing secure access according to the invention:
The “Detailed Description” explains that a user (101) makes a request (102) to a code entry module (103), which includes a biometric sensor (121) such as a fingerprint sensor panel. The code entry module interrogates a user identity database (105) containing biometric signatures for authorised users and, if the user’s identity can be authenticated against the database, the code entry module sends a signal (106) to a controller/transmitter (107).
This checks the “current rolling code” in a database (113) which offers non-replay encrypted communication. The specification provides at page 10 lines 9 to 13:
The controller/transmitter 107 checks, as depicted by an arrow 112, the current rolling code in a database 113. The controller 107 then updates the code and sends the updated code, this being referred to as an access signal, as depicted by an arrow 108 to a controller 109. The rolling code protocol offers non-replay encrypted communication.
The controller (109) contains a receiver (118) that converts the access signal (108) into a form that the controller can use and provides it to the controller which tests the rolling code received against the most recent rolling code which has been stored in a database (115) and, if it is found to be legitimate, the controller (109) sends a command (110) to a controlled item (111). The “controlled item” (page 10 lines 18 to 20):
…can be a door locking mechanism on a secure door, or an electronic key circuit in a personal computer (PC) that is to be accessed by the user 101.
The specification explains that the arrangement in figure 2 has been described for the case where the secure code in the access signal is based on the rolling code, although this is merely one arrangement and other secure codes such as the Bluetooth protocol or the WiFi protocols can be used.
The specification explains the use of rolling codes as follows (page 11 lines 9 to 23):
Rolling codes provide a substantially non-replayable non-repeatable and encrypted radio frequency data communications scheme for secure messaging. These codes use inherently secure protocols and serial number ciphering techniques which in the present disclosure hide the clear text values required for authentication between the key fob (transmitter) sub-system-system 116 and the receiver/controller 118/109.
Rolling codes use a different code variant each time the transmission of the access signal 108 occurs. This is achieved by encrypting the data from the controller 107 with a mathematical algorithm, and ensuring that successive transmissions of the access signal 108 are modified using a code and/or a look-up table known to both the transmitter sub-system 116 and the receiver sub-system 117. Using this approach successive transmissions are modified, resulting in a non-repeatable data transfer, even if the information from the controller 107 remains the same. The modification of the code in the access signal 108 for each transmission significantly reduces the likelihood that an intruder can access the information replay the information to thereby gain entry at some later time.
It will be noted that in figure 2 a distinction is drawn between the transmitter sub-system and the receiver sub-system. The specification explains that the sub-system falling to the left-hand side, the transmitter sub-system, can be implemented in a number of different forms. On page 12, the specification provides that it can be incorporated into a small portable device carried by the user (called a ‘fob’ or ‘key fob’) or mounted on the outside jamb of a secured door. Typically, the transmitter sub-system communicates with the receiver sub-system via a wireless communication channel, as in the case of a portable fob. However, the communication may be via a wired medium.
The specification explains that there may be some flexibility in terms of whether functional parts are located in the transmitter sub-system or receiver sub-system (page 12 lines 13 to 21):
The biometric signature database 105 is shown in Fig. 2 to be part of the transmitter sub-system 116. However, in an alternative arrangement, the biometric signature database 105 can be located in the receiver sub-system 117, in which case the communication 104 between the code entry module 103 and the signature database 105 can also be performed over a secure wireless communication channel such as the one used by the access signal 108. In the event that the secure access system is being applied to providing secure access to a PC, then the secured PC can store the biometric signature of the authorised user in internal memory, and the PC can be integrated into the receiver sub-system 117 of Fig. 1 [sic, Fig. 2].
The specification states that where a remote fob is used, the combination of biometric verification and encrypted wireless communication between the transmitter sub-system and the receiver sub-system provides significant advantages over current systems. This is because a wired communication path is avoided and the fob incorporates the biometric authentication arrangement, such that only one biometric signature is stored in the fob which reduces the requirements on the central database (115). Once the fob authenticates the user through biometric signature (e.g. fingerprint) verification, the rolling code in the access signal is transmitted to the controller (109) in the receiver sub-system for authorisation of the user.
On page 13, the specification provides that in addition to authenticating the user, the biometric sensor (121) in conjunction with the controller (107) can check other access privileges of the user contained in the database (105). An example is given whereby Tom Smith can be authenticated using a thumb press on the biometric sensor panel. After his biometric identity is authenticated, the transmitter sub-system (116) can check if he is allowed to use the particular door secured by the device (that is, controlled item (111)) on weekends, thereby screening him for more than simply his identity but also his entitlement to more comprehensive access privileges.
On page 14, the specification says that the transmitter sub-system (116) is preferably fabricated in the form of a single integrated circuit (or IC) to reduce the possibility of an unauthorised person bypassing the biometric sensor (121) in the code entry module and forcing the controller (107) to emit the rolling code access signal (108).
Figure 3 depicts the operation of the transmitter sub-system (116), providing a sequence of steps in the form of a flow chart from the point of receipt of a biometric signal to the sending of an access signal:
The specification further explains the method of operation of the transmitter sub-system which it also described as a “remote control module”. It provides for the initial steps at page 14 lines 6 to 15:
The method 200 commences with a testing step 201 in which the biometric sensor 121 in the code entry module 103 checks whether a biometric signal 102 is being received. If this is not the case, then the method 200 is directed in accordance with an NO arrow back to the step 201 in a loop. If, on the other hand, the biometric signal 102 has been received, then the method 200 is directed in accordance with a with a YES arrow to a step 202. The step 202 compares the received biometric signal 102 with information in the biometric signature database 105 in order to ensure that the biometric signal received 102 is that of the rightful user 101 of the sub-system 116.
A subsequent testing step 203 checks whether the comparison in the step 202 yields the desired authentication.
The specification then goes on to address biometric authentication and the provision of an “accessibility attribute”, which is of some relevance to the issues between the parties, at page 14 line 15 to page 15 line 1:
If the biometric signature matching is authenticated, then the process 200 is directed in accordance with a YES arrow to a step 204. The authentication of the biometric signature matching produces an accessibility attribute for the biometric signal 102 in question. The accessibility attribute establishes whether and under which conditions access to the controlled item 111 should be granted to a user. Thus, for example, the accessibility attribute may comprise one or more of an access attribute (granting unconditional access), a duress attribute (granting access but with activation of an alert tone to advise authorities of the duress situation), an alert attribute (sounding a chime indicating that an unauthorised, but not necessarily hostile, person is seeking access) and a telemetry attribute, which represents a communication channel for communicating state information for the transmitter sub-system to the receiver sub-system such as a “low battery” condition.
The specification then refers, at page 15 lines 1 to 13, to a further facility available to the user in this embodiment by reference to a “control option”:
The step 204 enables the user 101 to select a control option by providing one or more additional signals (not shown) to the controller 107. Thus for example the control option could enable the user 101 to access one of a number of secure doors after his or her identity has been authenticated in the step 203. In the subsequent step 205 the controller 107 sends the appropriate access signal 108 to the controller 109. The process 200 is then directed in accordance with an arrow 206 back to the step 201.
Thus for example the sub-system 116 can be provided with a single biometric sensor 121 in the code entry module 103 which enables the user 101 to select one of four door entry control signals by means of separate buttons on the controller 107 (not shown). This would enable the user 101, after authentication by the biometric sensor 121 in the code entry module 103 and the controller 107 to obtain access to any one of the aforementioned for [sic, four] secure doors.
Figure 4 (not reproduced) depicts the operation of the receiver sub-system (also referred to as the “control sub-system”) in the form of a flow chart. Various steps are described including where the controller (109) compares the rolling code received via the access signal (108) with a reference code in the database (115). This is described in the expert evidence as a decryption step.
Figure 5 (not reproduced) shows incorporation of a protocol converter into the arrangement of figure 2.
Figure 6 (not reproduced) depicts, in the form of a flow chart, another process of operation of the remote access system. The flowchart identifies a mechanism for populating the user ID database (105) if it is empty, as would be the case if the code entry module is new and has never been used, or if the user has erased all the information in the database (105). If the database is empty, the flowchart provides a direction to figure 8, to which reference is made below.
The specification, at page 18 lines 12 to 21, provides:
If the database 105 is empty, then the process 700 is directed by an arrow 703 to 706 in Fig. 8, which depicts a process 800 dealing with the enrolment or the administration function for loading relevant signatures into the database 105. If on the other hand the database 105 is not empty, the process 700 is directed to a step 704 that determines if the biometric signal that has been received is an administrator’s biometric signal.
The disclosed remote entry system can accommodate at least three classes of user, namely administrators, (ordinary) users, and duress users. The administrators have the ability to amend data stored, for example, in the database 105, while the ordinary users do not have this capability.
The specification goes on to describe one means by which the “administrator” is identified, at page 18 lines 21 to 25:
The first user of the code entry module 103, whether this is the user who purchases the module, or the user who programs the module 103 after all data has been erased from the database 105, is automatically categorised as an administrator. This first administrator can direct the system 100 to either accept further administrators, or alternately to only accept further ordinary users.
The specification explains that although the description refers to “users”, in fact it is “fingers”, which are the operative entities in system operation when the biometric sensor is a fingerprint sensor. A single user can enrol two or more of their fingers as separate administrators or ordinary users of the system by storing corresponding fingerprints for corresponding fingers in the database (105) via the enrolment process described by reference to figure 8.
The specification describes how the first administrator can provide control information to the code entry module by providing a succession of finger presses to the sensor (121). If those presses are of the appropriate duration and quantity, and are input within a predetermined time, they are accepted by the controller (107) as control information.
Figure 7 (reproduced in section 4.4.2 below) shows the process by which a biometric signal (102) is processed to provide access to the controlled item (111). The specification describes that the system uses four types of “user defined bits” that can be inserted into the access signal (108) to effect desired control functions in the receiver sub-system, namely to indicate: (a) that the user belongs to the duress category; (b) a “battery low” condition or other system state for the code entry module; (c) that the biometric signal represents a legitimate user so that access to the controlled item can be granted; or (d) that the biometric signal is unknown whereupon the controller in the receiver sub-system sounds an alert tone.
Figures 8 and 9 (not reproduced) show processes for implementing various enrolment procedures.
Figure 10 provides a schematic block diagram of the system in figure 2 in which the secure access methods are preferably practiced using a computer system arrangement. Shown in figure 10 are the processes of figures 3 to 4 and 6 to 9, which may be implemented as software, such as application program modules executing within that computer system:
The method steps for providing secure access in this embodiment are said to be effected by instructions in the software carried out under direction of the processor modules (107) and (109) which are in the transmitter sub-system and the receiver sub-system, respectively. The instructions may be formed as one or more code modules, each performing one or more tasks. The specification says at page 26 lines 3 to 13:
Fig. 10 is a schematic block diagram of the system in Fig. 2. The disclosed secure access methods are preferably practiced using a computer system arrangement 100’, such as that shown in Fig. 10 wherein the processes of Figs. 3-4 and 6-9 may be implemented as software, such as application program modules executing within the computer system 100’. In particular, the method steps for providing secure access are effected by instructions in the software that are carried out under direction of the respective processor modules 107 and 109 in the transmitter and receiver sub-systems 116 and 117. The instructions may be formed as one or more code modules, each for performing one or more particular tasks. The software may also be divided into two separate parts, in which a first part performs the provision of secure access methods and a second part manages a user interface between the first part and the user.
The specification goes on at page 26 line 21 to page 27 line 9:
The following description is directed primarily to the transmitter sub-system 116, however the description applies in general to the operation of the receiver sub-system 117. The computer system 100’ is formed, having regard to the transmitter sub-system 116, by the controller module 107, input devices such as the bio sensor 121, output devices including the LED display 122 and the audio device 124. A communication interface/transceiver 1008 is used by the controller module 107 for communicating to and from a communications network 1020. Although Fig. 2 shows the transmitter sub-system 116 communicating with the receiver sub-system 117 using a direct wireless link for the access signal 108, this link used by the access signal 108 can be effected over the network 1020 forming a tandem link comprising 108-1020-108’. The aforementioned communications capability can be used to effect communications between the transmitter sub-system 116 and the receiver sub-system 117 either directly or via the internet and other network systems such as a Local Area Network (LAN) or a Wide Area Network (WAN).
The body of the specification concludes with a heading, “Industrial Applicability”, that includes a statement that the embodiments described are illustrative rather than restrictive and provides at page 28 lines 17 to 20 that the system (100) can be used to provide access to controlled devices generally:
The system 100 can also be used to provide authorised access to lighting systems, building control devices, exterior or remote devices such as air compressors and so on. The concept of “secure access” is thus extendible beyond mere access to restricted physical areas.
3.2 Asserted claims of the 168 patent
Set out below are the claims asserted by CPC in its infringement case, with integer numbers added for convenience:
1.(1) A system for providing secure access to a controlled item, the system comprising: (2) a transmitter subsystem for enrolling biometric signatures into a database and for providing an accessibility attribute if a legitimate biometric signal is received; and (3) a receiver sub-system for providing access to the controlled item dependent upon said accessibility attribute.
2.(1) A transmitter sub-system adapted for operation in a system for providing secure access to a controlled item, (2) the system further including a receiver sub-system for providing access to the controlled item dependent upon an accessibility attribute received from the transmitter sub-system; (3) wherein the transmitter subsystem comprises: (4) means for enrolling biometric signatures into a database; and (5) means for providing the accessibility attribute if a legitimate biometric signal is received.
3.(1) A method of enrolling, by a transmitter sub-system, biometric signatures into a database of biometric signatures (2) in a system for providing secure access to a controlled item, (3) the system comprising the transmitter sub-system and (4) a receiver sub-system (5) for providing access to the controlled item (6) dependent upon an accessibility attribute received from the transmitter sub-system; said method comprising the steps of: (7) storing a biometric signal received by the transmitter sub-system in the database as an administrator signature; and (8) enabling administrative processing of information stored in the database if a biometric signal matching the stored administrator signature is received by the transmitter.
5.(1) A system for providing secure access to a controlled item, the system comprising: (2) a database of biometric signatures; (3) a transmitter subsystem comprising: (4) a biometric sensor for receiving a biometric signal; (5) means for matching the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute; (6) means for emitting a secure access signal conveying information dependent upon said accessibility attribute; and (7) means for enrolling biometric signatures into the database; (8) and a receiver sub-system comprising; (9) means for receiving the transmitted secure access signal; and (10) means for providing access to the controlled item dependent upon said information.
6.A system according to claim 5, wherein the means for enrolling biometric signatures comprises: (11) means for determining if the database of biometric signatures is empty; and (12) means for storing a biometric signal received by the biometric sensor in the database as an administrator signature if the database of biometric signatures is empty.
3.3 Asserted claims of the 293 patent
The asserted claims of the 293 patent are set out below, with integer numbers added for convenience:
1.(1) A system for providing secure access to a controlled item, the system comprising: (2) a database of biometric signatures; (3) a transmitter subsystem comprising: (4) a biometric sensor for receiving a biometric signal; (5) means for enrolling relevant signatures into the database using the biometric sensor; wherein the means for enrolling relevant signatures into the database of biometric signatures comprises: (6) means for receiving a series of entries of the biometric signal, said series being characterised according to at least one of the number of said entries and a duration of each said entry; (7) means for mapping said series into an instruction; and (8) means for enrolling relevant signatures into the database according to the instruction; (9) means for matching the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; and (10) means for emitting a secure access signal conveying information dependent upon said accessibility attribute; (11) said system further comprising: a receiver sub-system comprising; (12) means for receiving the transmitted secure access signal; and (13) means for providing conditional access to the controlled item dependent upon said information.
27.(1) A method for providing secure access to a controlled item, the method comprising the steps of: (2) enrolling, by a transmitter sub-system, relevant signatures into a database using a biometric sensor, by receiving a series of entries of the biometric signal, (3) said series being characterised according to at least one of the number of said entries and a duration of each said entry, (4) mapping said series into an instruction, and (5) enrolling relevant signatures into the database according to the instruction; (6) receiving, by the transmitter sub-system, a biometric signal; (7) matching, by the transmitter sub-system, the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; (8) emitting, by the transmitter sub-system, a secure access signal conveying information dependent upon said accessibility attribute; and (9) providing conditional access to the controlled item dependent upon said information.
29.A method according to claim 27, (10) wherein the database of biometric signatures comprises signatures in at least one of a system administrator class, a system user class, and a duress class.
37.(1) An apparatus for providing secure access to a controlled item, said apparatus comprising: (2) a transmitter sub-system comprising: (3) a biometric sensor for receiving a biometric signal; (4) means for enrolling relevant signatures into a database using the biometric sensor; wherein the means for enrolling relevant signatures into the database of biometric signatures comprises: (5) means for receiving a series of entries of the biometric signal, said series being characterised according to at least one of the number of said entries and a duration of each said entry; (6) means for mapping said series into an instruction; and (7) means for enrolling relevant signatures into the database according to the instruction; (8) the transmitter sub-system further comprising: (9) means for matching the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; and (10) means for emitting a secure access signal conveying information dependent upon said accessibility attribute; and (11) wherein conditional access is provided to the controlled item dependent upon said information.
39.(1) An apparatus, in a transmitter sub-system, (2) for enrolling relevant signatures into a database of biometric signatures in a system for providing secure access to a controlled item, the system comprising: (3) said database of biometric signatures; (4) the transmitter subsystem, comprising: (5) a biometric sensor for receiving a biometric signal; (6) means for enrolling relevant signatures into the database using the biometric sensor; (7) means for matching the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; and (8) means for emitting a secure access signal conveying information dependent upon said accessibility attribute; the system further comprising: (9) a receiver sub-system comprising; (10) means for receiving the transmitted secure access signal; and (11) means for providing conditional access to the controlled item dependent upon information in said secure access signal; (12) said apparatus comprising: (13) means for receiving a series of entries of the biometric signal; (14) means for determining at least one of the number of said entries and a duration of each said entry; (15) means for mapping said series into an instruction; and (16) means for enrolling relevant signatures into the database according to the instruction.
41.(1) A method of enrolling a biometric signature into a database of biometric signatures in a system for providing secure access to a controlled item, the system comprising: (2) said database of biometric signatures; (3) a transmitter subsystem for receiving a biometric signal, the transmitter subsystem comprising: (4) a biometric sensor; (5) means for enrolling relevant signatures into the database using the biometric sensor; wherein the means for enrolling relevant signatures into the database of biometric signatures comprises: (7) means for receiving a series of entries of the biometric signal, said series being characterised according to at least one of the number of said entries and a duration of each said entry; (8) means for mapping said series into an instruction; and (9) means for enrolling relevant signatures into the database according to the instruction; (10) means for matching the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; and (11) means for emitting a secure access signal conveying information dependent upon said accessibility attribute; the system further comprising: (12) a receiver sub-system comprising: (13) means for receiving the transmitted secure access signal; and (14) means for providing conditional access to the controlled item dependent upon information in said secure access signal; said method comprising the steps of: (15) receiving a biometric signal; and (16) enrolling the relevant signatures into the database using the biometric sensor as administrator if the database of biometric signatures is empty.
3.4 The field of the invention
The field of the invention is described in the patents to relate to secure access systems and particularly to systems using wireless transmission of security code information. The prior art problems described by reference to figure 1 identify a particular problem with “signal path 404” which represents a weak point in the security system, providing an unauthorised person with easy access to the information being transmitted between the code entry module and the controller, which can be deciphered and misused. The specification asserts that communication protocols do not secure the information being so sent – I note that there is some criticism in the expert evidence of the description of the protocols, which is presently immaterial – and that the length of the path, which goes from the code entry module to the controller, “provides an attack point for the unauthorised person”.
The invention is then described by reference to various aspects for the provision of secure access to a “controlled item” which broadly involves a “transmitter sub-system” having various characteristics and, often but not uniformly, a “receiver sub-system”.
The meaning of each of these terms is the subject of dispute and is considered below. However, it is apparent that an important aspect of the invention described is that the determination of whether and under which conditions access should be granted is within the transmitter sub-system prior to communication with a receiver sub-system which then grants the requisite access. In broad terms the field of the invention is directed to providing secure access to a controlled item utilising biometrics, cryptography, microelectronics and embedded systems.
3.5 The skilled addressee
CPC contends that the skilled addressee is an engineer or “team” of engineers with expertise in biometric secure access systems, cryptography and signal processing. Apple contends that the patents are addressed to the manner in which a biometric secure access system may be designed and as such the person skilled in the art would be an engineer responsible for integrating all elements of an engineered product, with expertise in microelectronics and embedded systems, including designing circuits and microchips and writing their controlling software with several years’ practical experience working on biometric secure access systems.
Persons skilled in the art, or skilled addressees of the patents, will be those likely to have a practical interest in the subject matter of the invention. The notional skilled reader may be an individual or a team, whose combined skills would normally be employed in the art in interpreting and carrying into effect instructions such as those which are contained in the document to be construed. Put another way, the skilled addressee is a notional person who may have an interest in using the products or methods of the invention, making the products of the invention, or making products used to carry out the methods of the invention either alone or in collaboration with others having such an interest; Catnic Components v Hill & Smith Ltd [1982] RPC 183 at 242 (Diplock LJ); General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1971] 7 WLUK 130; [1972] RPC 457 at 485 (Sachs LJ); Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735; (2015) 114 IPR 28 at [26] (Nicholas J); Pharmacia LLC v Juno Pharmaceuticals Pty Ltd [2022] FCA 92; (2022) 165 IPR 200 at [111] (Burley J); Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017; (2023) 180 IPR 315 at [86] (Burley J).
In this context it is important to recall that the notional skilled reader, although sometimes characterised as a “team”, is an artificial construct through which the Court is able to construe the patent and, where appropriate, consider whether or not the invention claimed lacks an inventive step. Although skills drawn from different areas of expertise may be relevant, the person skilled in the art thinks with one mind, speaks with one voice, and draws, when and to the extent necessary, on the disparate knowledge and skills of all of the members of the “team” – it is one indivisible whole; Novartis AG v Pharmacor Pty Limited (No 3) [2024] FCA 1307 at [149] (Yates J).
In the present case, I consider that each of Dr Dunstone, Associate Professor Boztas and Professor Smith have relevant expertise to assist the Court in formulating the views of the person skilled in the art, noting that the notional person should not be understood to be a mere avatar of any of these witnesses: AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [23] (French CJ).
Each party was critical of the expert evidence given by the other. In my view the experts did their best to assist the Court in explaining the technology and their views. To some extent their oral testimony was buffeted by the winds of the forensic contest between the parties, particularly in interpreting the patents. However, except where identified specifically below, I found the evidence of the experts to be of assistance in considering the issues. In this context, as the authorities note, it is the task of the Court to construe terms used in the patent and the evidence of the expert cannot supplant that task: Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 (2020) 277 FCR 267 at [73] (Rares, Nicholas and Burley JJ).
4. CLAIM CONSTRUCTION
4.1 Introduction
The closing submissions of the parties indicate that construction issues arise in relation to the following terms, integers or groups of integers:
(a)“controlled item” (all asserted claims);
(b)“transmitter sub-system” and “receiver sub-system” (all asserted claims, although claims 27, 29 and 37 of the 293 patent do not refer to a receiver sub-system);
(c)“accessibility attribute” (all asserted claims);
(d)“secure access signal” (claims 5 and 6 of the 168 patent and all asserted claims of the 293 patent);
(e)providing conditional access to the controlled item dependent upon said information / information in said secure access signal (all asserted claims of the 293 patent);
(f)“administrator signature” (claims 3 and 6 of the168 patent) and, relatedly “administrator class” and “administrator” (claims 29 and 41 of the 293 patent); and
(g)means for receiving a series of entries of the biometric signal, said series being characterised according to at least one of the number of said entries and a duration of each said entry, means for mapping said series into an instruction and means for enrolling relevant signatures into the database according to the instruction (all asserted claims of the 293 patent). I refer to his below as the series feature.
4.2 Relevant law
There is no dispute as to the relevant principles of claim construction. One construes the claims in the context of the specification as a whole, through the eyes of the person skilled in the art, having regard to the common general knowledge as it existed at the priority date of the claims. Although many cases have referred to the principles applicable to claim construction, one convenient authority that summarises key aspects of those principles is Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155 where Hill, Finn and Gyles JJ said at [67]:
(i)the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;
(ii)a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24];
(iii)the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corp Pty Ltd at 391;
(iv)while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;
(v)experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and
(vi)it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485-486.
4.3 Controlled item
The term “controlled item” is present in all of the asserted claims. However, it is convenient to consider its meaning primarily by reference to claim 1 of the 168 patent, neither party suggesting that the term is to be understood as having a different meaning in the other claims.
For convenience, claim 1 of the 168 patent is repeated below:
(1) A system for providing secure access to a controlled item, the system comprising: (2) a transmitter subsystem for enrolling biometric signatures into a database and for providing an accessibility attribute if a legitimate biometric signal is received; and (3) a receiver sub-system for providing access to the controlled item dependent upon said accessibility attribute.
(Emphasis added)
4.3.1The submissions
CPC submits that the term “controlled item” refers to an item which the user can seek to access. It may be a physical item (such as a door) or a logical item such as files, systems and programs stored on a computer. It is not limited to a single discrete item to be accessed but can include multiple sub-items within a controlled item which may require additional authentication to access. It submits, as an example, that the patents describe accessing any one of multiple doors or accessing a personal computer which could, in turn, have varying sub-components, themselves requiring further authentication for access.
Apple disputes that a “controlled item” may include items which require additional authentication to obtain access. It submits that to construe “controlled item”, it is necessary to have regard to its relationship to the accessibility attribute and the receiver sub-system. An accessibility attribute establishes whether and under which conditions access to the controlled item is to be granted. The receiver sub-system provides secure access to the controlled item dependent on the accessibility attribute. Accordingly, a controlled item is the item to which the accessibility attribute establishes access and to which the receiver sub-system, as part of the claimed system provides ‘secure access’. It cannot be an item that is not controlled by the system or an item to which the receiver sub-system cannot provide secure access dependent on the accessibility attribute. Thus, the patents provide as examples of a controlled item a “door lock mechanism” or an “electronic key circuit” but not the whole room or building, nor the whole computer.
4.3.2Consideration
It is apparent that the system of integer (1) is to be understood by reference to the particular details provided in integers (2) and (3). The system “for providing secure access” being a system that is suitable for the purpose of providing such access to the controlled item.
“Secure access”, as that term was understood in the art, concerns provision of authorised access to a person depending on the system being satisfied as to who they are (e.g. a biometric identifier), what they have (e.g. a swipe card), or what they know (e.g. a password). By integer (2), it is apparent that access to the controlled item is dependent on the first of these options, because the system must include a transmitter sub-system for enrolling biometric signatures into a database and for providing an accessibility attribute if a legitimate biometric signal is received. By integer (3) a receiver sub-system must be able to provide access to the controlled item dependent upon the accessibility attribute. Accordingly, the question of “who they are” is answered by reference to the biometric signature provided.
The parties disagree on the breadth of the how “controlled item” is to be understood. It is not a defined term nor a term of art. CPC contends that it is to be understood broadly as meaning any item to which access is granted upon the provision of an accessibility attribute and gives the example of a physical facility; whereby access to the facility permits use of certain machines located therein, but not others which may require additional steps to access once inside. Notwithstanding the limited functionality that may be granted by the access, the controlled item remains the whole of the physical facility.
In my view, the internal logic and language used in claim 1 suggests that the “controlled item” is that to which the system defined by integers (2) and (3) may (or may not) grant access, depending on whether conditions (2) and (3) are satisfied. Integer (1) is for providing secure access to a controlled item, indicating that the outcome of the process described in integers (2) and (3) should be either a grant or a refusal of access to that item. To give a physical example, take a building with a red exterior door leading into a room with a blue interior door, each of which has a lock with a biometric keypad. John approaches the red door and presses his thumb on the biometric sensor, the transmitter sub-system receives a legitimate biometric signal and produces an accessibility attribute (integer 2). The receiver sub-system then provides access upon receipt of the accessibility attribute (integer 3). In that scenario the controlled item is the lock on the secure red door. The controlled item remains the lock, even if John is refused access to the door. However, if there is another door, such as the secure blue interior door, then the secure blue door is not the relevant controlled item. In the case of the secure blue door, it may be a different controlled item.
The description in the body of the specification, although not determinative, tends to support this construction. The passage on page 10 lines 18 to 20 provides:
The controlled item 111 can be a door locking mechanism on a secure door, or an electronic key circuit in a personal computer (PC) that is to be accessed by the user 101.
In the first of these examples the controlled item is not a room, but a door locking mechanism. In the second, the controlled item is a key circuit, not a personal computer. The conclusion that the controlled item is the single locking mechanism is supported by the language of the claims, which in each case refer to obtaining access to “a controlled item”.
The specification, by reference to figure 3, explains that the method of operation of the transmitter sub-system commences with a testing step (201) in which the biometric sensor (121) in the code entry module (103) (shown in figure 2) checks whether a biometric signal is being received. If not, the method (200) is directed back to the testing step (as indicated by the “no” arrow). If a biometric signal is received, then the method is directed toward step 202 (as indicated by the “yes” arrow) whereby the received biometric signal is compared with information in the biometric signature database (105) to ensure that the biometric signal received is that of the rightful user of the transmitter sub-system (116). A subsequent testing step (203) checks whether the comparison in step 202 yields the desired authentication. The specification, at page 14 line 15 to page 15 line 1, then states:
If the biometric signature matching is authenticated, then the process 200 is directed in accordance with a YES arrow to step 204. The authentication of the biometric signature matching produces an accessibility attribute for the biometric signal 102 in question. The accessibility attribute establishes whether and under which conditions access to the controlled item 111 should be granted to a user. Thus, for example, the accessibility attribute may comprise one or more of an accessibility attribute (granting unconditional access), a duress attribute (granting access but with activation of an alert tone to advise authorities of the duress situation), an alert attribute (sounding a chime indicating that an unauthorised, but not necessarily hostile, person is seeking access) and a telemetry attribute, which represents a communication channel for communicating state information for the transmitter sub-system to the receiver sub-system such as a “low battery” condition.
(Emphasis added)
The passage on page 15 of the specification to which CPC refers in support of its proposition provides an example of a “control option” being exercised by a user that enables access to one of a number of secure doors after an authentication step has taken place. In this example, no reference is made to a “controlled item”. I do not consider that it provides support for the construction of the term “controlled item” advanced by CPC.
Accordingly, I disagree with the submission advanced by CPC that the “controlled item” may be more than a single discrete item to be accessed and can include multiple sub-items within, each requiring additional authentication to access.
4.4 Accessibility attribute
Whilst the parties’ submissions characterise the dispute between them as concerning the words “accessibility attribute”, in fact the experts and the parties agree that the meaning of “accessibility attribute” is explained on page 14 lines 18 to 19 as follows:
The accessibility attribute establishes whether and under which conditions access to the controlled item 111 should be granted to a user.
The dispute concerns how the words “accessibility attribute” should be understood in the context of the claims where those words appear.
4.4.1The submissions
CPC submits that the definition in the specification is consistent with an understanding of the words in their ordinary meaning; “attribute” meaning a quality, and an “accessibility attribute” being a quality of access. The detail as to whether and under which conditions access to the controlled item is to be granted must be communicated through the “positive match result” or the “message” sent. CPC submits that the words “accessibility attribute” do not provide any limitation as to the means by which the transmitter sub-system provides or outputs the accessibility attribute. It is sufficient that there is a means for “providing” or “outputting” something which, in the context in which this occurs, establishes whether and under which conditions access should be granted. CPC submits that where the user seeking access identifies the specific condition of access sought, the authentication (being a biometric match) itself may constitute the provision or output of the accessibility attribute, because it establishes whether and under which conditions access should be granted in response to the specific access request. This, CPC submits, is consistent with the disclosures in the specification at page 14 line 18 to page 15 line 13. CPC further submits that the claims do not impose any requirement that the accessibility attribute only concern conditions that specifically arise from the matching outcome, as opposed to “preconditions”, nor must the conditions be specified by the particular biometric signature. The claims only require for an accessibility attribute to be “provided” or “output” if a legitimate biometric signal is received. This, however, should not be interpreted as meaning that the claims require the biometric match to “produce” the accessibility attribute. Furthermore, the accessibility attribute must be output or provided within the transmitter sub-system, meaning that it is the transmitter sub-system that determines the nature of the access to be granted, and no further verification or authentication step should occur in the receiver sub-system.
A further embodiment is later described at column 5 line 54 to column 6 line 12:
In one embodiment of the present invention, the unlock signal SD includes an impersonal code to identify the authorized user whose biometrical signature has been measured and recognized to be valid. The impersonal code can simply be the corresponding user number (e.g., 1, 2, 3, 4, or 5 as described above). By transmitting the impersonal code, selected convenience functions in the vehicle can be activated when the unblock signal SD is received. For example, such functions could include the adjusting of the positions of the seats and the positions of the rearview mirrors, the setting of a selected temperature of the onboard thermostat, the tuning of the radio to a particular station, and so on according to predefined values corresponding to the preferences of one of the users.
In such embodiments the portable unit transmits an impersonal number such as 1, 2, 3, 4, or 5 that merely identifies one of the authorized users from among the set of authorized users, and not information relating to the user’s biometrical signature (hence the expression “impersonal code”). Thus, the data elements pertaining to the authorized user’s biometrical signature cannot fall into the hands of an ill-intentioned third party that intercepts the unlock signal SD. Preferably, the unlock signal SD also includes a code for identifying the vehicle associated with the portable unit so that a specified portable unit can be associated with a single vehicle.
Wuidart goes on, at column 6 lines 13 to 26, to address the fixed terminal:
The exact structure, features, and operation of the fixed terminal (e.g., a centralized door locking and unlocking unit) are not critical to the present invention and can conform to conventional fixed systems. At the least, the selection and design of the fixed terminal are within the scope of one of ordinary skill in the art so the fixed terminal will not be described in greater detail. Furthermore, the lock/unlock signal can also include a standard type of open-ended code (i.e., a code whose value changes with each transmission). Such a code can be used to hinder fraudulent attempts at picking up and recording (with appropriate electronics) the lock/unlock signal when it is normally transmitted by an authorized user and then subsequently and fraudulently reproducing the signal to unlock the vehicle.
9.6.2The submissions
CPC submits that Wuidart does not disclose an accessibility attribute for several reasons. First, there is no disclosure or delineation of how the fixed or changing code, once transmitted from the portable unit, is dealt with by the fixed terminal to effect the unlocking, nor where the relevant determination of access takes place such that it may take place at the receiver sub-system, rather than, as required by the asserted claims, at the transmitter sub-system. Secondly, two signals (being the activation signal and measurement signal) are required to be output before the unlock signal is generated, rather than simply biometric authentication. Thirdly, there is no disclosure that the unlock signal contains material as to whether and under which conditions access should be granted rather than simply being a binary “lock/unlock signal”. Further, CPC contends that, for the same reason, there is no form of “conditional access” within the meaning of that term as it appears in claims 1, 39 and 41 of the 293 patent. CPC also submits that there is no disclosure of either the administrator signature integers or the series feature.
Apple contends that the accessibility attribute is disclosed on both its preferred construction of that term and on CPC’s construction. It says that on its construction, the unlock signal in combination with the user number amounts to an accessibility attribute because it establishes both whether access is granted and imposes conditions applicable to the access granted (by adjusting the thermostat, seats, and mirrors to specific settings according to the user number). It accepts that the administrator signature integers are not disclosed but contends that the series feature is disclosed if CPC’s construction of that term is accepted.
9.6.3Consideration
The primary area of contention in relation to Wuidart is whether it discloses a system in which there is an accessibility attribute within the meaning of the asserted claims.
In one example of operation described in columns 4 and 5, the portable unit includes a switch (SW) which may be activated by the user’s thumb (15) press and which subsequently activates a timer (MS1) to output the activation signal (SA1). The timer holds the activation signal in the active state for a specified period during which the fingerprint sensor (CED) in the portable unit must measure the biometric signature of the user and deliver a measurement signature (SM2) to the microcontroller (M1) in that unit. As illustrated in figure 3, the activation signal and the measurement signal must be generated within a specified temporal window to enable the microcontroller to assess, as against the signatures stored in memory (DB2) whether there is a biometric match. A successful match will result in the transmission of the unlock signal (SD) from the control circuit to the fixed unit.
In the embodiment described in the passage at column 5 line 54 to column 6 line 12, Wuidart discloses that a person whose biometric signature has been measured and recognised to be valid will generate as unlock signal (SD) containing an “impersonal code” that identifies the user as against other authorised users, without needing to convey the user’s biometric information.
In these embodiments, the portable unit will be the transmitter sub-system and the fixed terminal – described in Wuidart as, for example, a centralised door locking and unlocking unit – will be the receiver sub-system.
In relation to accessibility attribute, CPC first contends that Wuidart does not sufficiently disclose whether the transmitter sub-system alone determines whether and on which conditions access should be granted, such that it could be said to produce an accessibility attribute.
However, the receiver sub-system disclosed by Wuidart, being the fixed terminal, receives the unlock signal from the portable unit and then decodes it – including any encryption – to give effect to the unlock command. I do not consider that the fact that the receiver sub-system must take steps to decrypt or otherwise interpret an “accessibility attribute” that is provided by the transmitter sub-system will take it outside the scope of the claims.
CPC next contends that the disclosure of Wuidart requires two signals to be produced before the unlock signal is generated (an “activation signal” and a “measurement signal”) instead of only biometric authentication, which it suggests means that no accessibility attribute is disclosed. The difficulty with this submission is that the embodiment in Wuidart that I have described above makes plain that the transmission of the unlock signal is dependent upon receipt of a legitimate biometric signal. The fact that the unlock signal is also dependent upon the legitimate biometric signal being received within a specified time does not take the disclosure beyond the requirements of the integer.
Apple contends that where the unlock signal includes an “impersonal code”, as described in the passage at column 5 line 54 to column 6 line 12, Wuidart describes an “accessibility attribute” within the construction of that term that I have accepted. It submits that this is because such an unlock signal establishes both whether access is granted and at the same time imposes conditions applicable to the access granted, such as by adjusting the thermostat, seats and mirrors to specific settings according to the user number. CPC contends that these matters are not relevant to “access” and cannot be regarded as a “condition” of access to the controlled item (here, a vehicle), such that there is no disclosure that the unlock signal contains material also relating to the conditions of access. The correctness of that submission depends on what amounts to a condition of access.
It will be recalled that the patents define “accessibility attribute” as establishing “whether and under which conditions access to the controlled item 111 should be granted to the user”. Examples of “access attributes” are then given in the specification, at page 14 line 20 to page 15 line 1, that include “a duress attribute (granting access but with activation of an alert tone to advise authorities of the duress situation), alert attribute (sounding a chime indicating that an unauthorised, but not necessarily hostile, person is seeking access) and a telemetry attribute, which represents a communication channel for communicating state information for the transmitter sub-system to the receiver sub-system such as a ‘low battery’ condition”. Each of these provides conditions referable to the grant of access.
I see no difference in principle between a condition of access that sounds a chime indicating that a person of a certain type has entered and a condition that would turn on the lights or another feature of the building. In the context of the definition provided in the specification of “accessibility attribute” and the examples provided on page 14 of the specification of the patents in suit, both fall within the meaning of “conditions of access”.
Accordingly, I accept Apple’s submission that Wuidart discloses an invention that includes an accessibility attribute within the definition of that term that I have accepted and also, in the alternative, the definition propounded by CPC. In that context, having regard to the meaning of the term “conditional access” that appears in integer (13) of claim 1 of the 293 patent (where there is a receiver sub-system comprising; “(12) means for receiving the transmitted secure access signal; and (13) means for providing conditional access to the controlled item dependent upon said information”) and the equivalent integers in claims 39 and 41 of the 293 patent, I also find that the requirement of conditional access is met.
Apple accepts that the administrator signature integers are not disclosed in Wuidart. It submits that although the series feature is not expressly disclosed in Wuidart, on CPC’s construction of the integer, its presence may be implied. However, for the reasons given in relation to the equivalent argument made in relation to the disclosure of Hamid, I reject that submission.
9.6.4Conclusion in relation to Wuidart
For the reasons given above, I find that Wuidart anticipates all of the claims that include the accessibility attribute integer on both my preferred construction and also the construction of that term as advanced by CPC. I find, however, that none of the claims including the administrator signature integers and/or series feature is anticipated.
10. LACK OF INVENTIVE STEP
The case based on lack of inventive step advanced by Apple in closing submissions was premised wholly on the basis that the Apple Devices infringed the patents having regard to the construction of accessibility attribute. I have found that the Apple Devices do not infringe the patents, in part because the accessibility attribute integer is absent from the devices. Having regard to the position adopted by Apple, it is unnecessary for me to address the inventive step case advanced.
11. MANNER OF MANUFACTURE
Apple pleads, in its cross claim, that the alleged invention so far as claimed in each of the asserted claims is not a patentable invention within s 18(1)(a) of the Patents Act on the basis that it is not a manner of manufacture within s 6 of the Statute of Monopolies (1623) (21 Jac 1, c 3). In its particulars, Apple contends that the alleged invention is, in substance, an abstract idea, mere scheme, mere intellectual information, computerised business method and/or an idea for a computer program that involves no contribution of a technical nature or no technical advance over the prior art.
In its closing submissions, Apple emphasises that this ground depends entirely upon the Court accepting CPC’s construction of the transmitter sub-system, receiver sub-system and accessibility attribute integers. Apple submits that, considered as a matter of substance, the invention so claimed is a mere scheme or idea for a secure access system in an uncharacterised or generic electronic processing device which does not give rise to patentable subject matter, citing various authorities including in particular Encompass Corp Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161; (2019) 372 ALR 646 at [88], [101], [107]–[108]. Apple submits that the construction advanced by CPC is such that: (a) the invention disclosed and claimed is untethered to any particular or discrete components; (b) the entire secure access system can exist within a single computer system; and (c) the transmitter sub-system and receiver sub-system have no physical or finite hardware or software components and are merely characterised by their functionalities such that the transmitter sub-system and receiver sub-system may have overlapping components and functions. So construed, the invention does not involve a manner of manufacture as the claims merely require that the secure access system be “suitably programmed” to implement the functionality described.
CPC contends that, regardless of the construction adopted, the invention claimed in the asserted claims does not fall within the category of cases identified as a “mere scheme” but rather are for a manner of manufacture, citing Technological Resources Pty Limited v Tettman [2019] FCA 1889; (2019) 375 ALR 185 at [143]–[150] (Jagot J). CPC submits that there is evidently a physical effect (for example, the use of a biometric sensor), which gives rise to a useful result (enrolling signatures into a database and/or providing secure access to a controlled item).
I have in sections 4 and 6 addressed CPC’s construction arguments, first in the context of the asserted claims alone and later in the context of its infringement case. In each of those sections I have rejected the contentions advanced by CPC as to the meaning of transmitter sub-system, receiver sub-system and accessibility attribute. Apple advances no submission to the effect that, on the basis of the construction of the claims that I have preferred, the asserted claims do not amount to a manner of manufacture. Having regard to these matters, in my view, it is not necessary to consider, on an hypothetical alternative construction, whether the claims lack a manner of manufacture.
12. SECTION 40 CHALLENGES TO VALIDITY
12.1 Fair basis
Apple pleads, in its cross claim, that the asserted claims are not fairly based within the requirements of s 40(3) of the Patents Act on four bases, each of which is addressed below.
Section 40(3) provides:
The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
As I noted in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; (2020) 155 IPR 1 at [496], fair basis involves a comparison between the claims made in the patent and what is disclosed in the specification in order to determine whether there is a real and reasonably clear disclosure of the invention claimed, or whether the invention claimed travels beyond the invention described: Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75; (2010) 86 IPR 468 at [39]. The enquiry as to the disclosure of the body of the specification is whether broadly, in a general sense, it describes the invention as claimed: Lockwood No 1 at [69]. This involves consideration of what the specification discloses as a matter of substance.
In Lockwood No 1 the High Court identified, at [68]–[69], what has become the seminal test for lack of fair basis:
Erroneous principles. The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ “an over meticulous verbal analysis”. It is wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.
“Real and reasonably clear disclosure”. Section 40(3) requires, in Fullagar J’s words, “a real and reasonably clear disclosure.” But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
“The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.”
Fullagar J’s phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the “real” disclosure, are in truth only loose or stray remarks.
(Footnotes omitted)
First, Apple contends that claims 27, 29 and 37 of the 293 patent are not fairly based because they contain no reference to any receiver sub-system, nor do they require any cooperation between a transmitter sub-system and receiver sub-system in order to provide access to the controlled item, yet the substantive disclosure in the specification of the invention necessarily includes a receiver sub-system. It submits that the disclosure of the specification includes descriptions of the function of receiving the transmitted secure access signal, ascertaining the accessibility attribute information transmitted and providing access to the controlled item. It submits that the only system disclosed in the 293 patent is one where there is both a transmitter sub-system and a receiver sub-system where the receiver sub-system performs the abovementioned functions. Accordingly, a claim without a receiver sub-system involves an entirely different structure to that disclosed in the specification, such that it travels beyond the disclosure and is not fairly based.
These submissions advanced by Apple may be examined by reference to claim 27 of the 293 patent, which for convenience I repeat below:
(1) A method for providing secure access to a controlled item, the method comprising the steps of: (2) enrolling, by a transmitter sub-system, relevant signatures into a database using a biometric sensor, by receiving a series of entries of the biometric signal, (3) said series being characterised according to at least one of the number of said entries and a duration of each said entry, (4) mapping said series into an instruction, and (5) enrolling relevant signatures into the database according to the instruction; (6) receiving, by the transmitter sub-system, a biometric signal; (7) matching, by the transmitter sub-system, the biometric signal against members of the database of biometric signatures to thereby output an accessibility attribute if the matching is authenticated; (8) emitting, by the transmitter sub-system, a secure access signal conveying information dependent upon said accessibility attribute; and (9) providing conditional access to the controlled item dependent upon said information.
It may be seen that the claim defines in some detail a method for providing secure access to a controlled item involving the steps of enrolling signatures via a transmitter sub-system as described in integers (2) to (5), matching, by the transmitter sub-system a biometric signal received against a database of biometric signatures, as described in integers (6) and (7), and emitting, via the transmitter sub-system a secure access signal conveying information dependent on the accessibility attribute as described in integer (8). Unlike the other asserted claims, save for claims 29 and 37 of the 293 patent, claim 27 does not require a receiver sub-system, instead including as integer (9) a broad requirement that the method provide “conditional access to the controlled item dependent upon said information”.
CPC submits that it should be inferred from the language of integer (9) that there must be a receiver capable of receiving the information that is conveyed by the transmitter sub-system.
This submission appears to me to be correct. Integer (9) requires that conditional access be provided to the controlled item “dependent upon” the information contained in the secure access signal. That information (in the form the secure access signal) must be received from the transmitter sub-system. The functional necessity of the claim is such that the information must be received and interpreted prior to access to the controlled item being granted. Such information must be received by something meeting the functional definition of a receiver.
Secondly, Apple contends that the disclosure of the patents is limited to a system in which the transmitter sub-system and the receiver sub-system are distinct pieces of hardware. If, contrary to this position, the transmitter sub-system and receiver sub-system do not need to be separate from each other, nor be in physically distinct hardware, the claims are not fairly based.
Several passages in the specification identify that the invention may be implemented not only using a physical mechanism, but also by the provision of logical access such as in the case of a personal computer. On page 26 from lines 3 to 13 (set out in section 3 above) the specification identifies that the secure access methods are preferably practiced using a computer system arrangement and may be implemented as software. Having regard to these disclosures, I am not persuaded that the claims lack fair basis for the reason advanced by Apple.
Third, Apple contends the disclosure of the patents in suit is limited to a system in which, in response to a particular biometric signal, the transmitter sub-system produces an accessibility attribute which must establish whether to provide access and which conditions are imposed. It submits that CPC’s position on construction appears to be that an accessibility attribute can “arise” where, in the “context” of the system as a whole, access is provided to only part of a device, and on that construction, contends there is no disclosure in the specification that an accessibility attribute might be provided in that manner, or how it might be done.
I have addressed the meaning of “accessibility attribute” and “controlled item” elsewhere in these reasons. Having regard to my construction of these terms the submission advanced by Apple does not arise.
Fourth, Apple submits that on CPC’s construction of the series feature, it relates to presenting a fingerprint or other biometric to the sensor multiple times in order to produce multiple scans, the information from which is combined into a template. If that construction is adopted, Apple submits that the claim is not fairly based.
I have, in section 4.9 above, declined to adopt the construction of the series feature integer advanced by CPC and accordingly it is also unnecessary to address this ground further.
12.2 Insufficiency
In a faintly raised objection, Apple contends that the patents lack sufficiency within s 40(2)(a) of the Patents Act as the specification does not fully describe the invention as claimed in each of the asserted claims. In closing submissions, this ground distilled to the contention that because Associate Professor Boztas appeared to suggest that he may have encountered technical difficulty in implementing the concept of an accessibility attribute and that, as the specification of the patents do not resolve that difficulty, the claims are insufficient.
The faint suggestion was made in JER1 in the context of considering a prior art document. It was not followed by any oral evidence, and no oral evidence to similar effect was led by Dr Dunstone. Indeed, Dr Dunstone’s evidence was that it was obvious to implement the invention as claimed. I am not satisfied that this ground of invalidity is made out.
12.3 Lack of clarity
Section 40(3) of the Patents Act also requires that the claims of a patent be clear and succinct.
Apple contends that the asserted claims are invalid for lack of clarity having regard to the CPC’s construction of the term “accessibility attribute” which, it submits is an abstract concept said to arise from the context of a system rather than being an identified element provided by an identified transmitter sub-system.
I have considered the construction of that term earlier in these reasons. No contention is advanced that, having regard to the construction that I have adopted, the claims are invalid for lack of clarity. Accordingly, this ground does not arise.
13. CONCLUSION
For the reasons set out above, I have concluded that CPC has failed to establish that any of the Apple Devices fall within the asserted claims and that accordingly its infringement case must be dismissed. Apple’s cross claim was, in large part, advanced defensively and so was dependent upon findings, contrary to its primary case, that its devices were found to fall within the scope of the asserted claims. My findings that the Apple Devices do not fall within those claims leads to the conclusion that most, but not all, of the Apple cross claim has failed.
I will direct that the parties confer and produce draft short minutes of order giving effect to these reasons and providing for timetabling of next steps in the proceedings including in relation to the question of costs and confidentiality issues. The parties are also directed to identify the portions of these reasons for judgment over which confidentiality is claimed so that a redacted form of the judgment suitable for publication may be produced.
I certify that the preceding six hundred and seventy-three (673) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Burley. Associate:
Dated: 15 May 2025
SCHEDULE OF PARTIES
NSD 998 of 2021 Cross-Claimants
Second Cross-Claimant:
APPLE INC.
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