A split panel of the Federal Circuit today held that the meaning of “defining” is more specific that a Patent Trial and Appeal Board (“Board”) panel’s construction as “in association with” when relating biometric identifiers to specific memory components in a biometric verification system. In an opinion by Judge Chen in CPC Patent Technologies Pty Ltd. v. ASSA ABLOY AB, the United States Court of Appeals for the Federal Circuit reversed the Board decision, which held the challenged claims in US Patent No. 8,620,039 (the “’039 Patent”) to CPC unpatentable under 35 U.S.C. § 103.

CPC owns the ’039 patent, which relates to credit card security, and more specifically to biometric verification of the user. Biometric verification ensures that the identity of the customer using a credit card matches the identity of the registered card owner.

Although biometric verification systems are already known, the ’039 patent focuses on storing “the biometric signature at a memory address defined by the (‘unique’) card information on the user’s card as read by the card reader of the verification station.”

In considering the ‘039 Patent claims, the Board construed the term “defining” as “setting” or “establishing,’” explaining that “[o]nce the card information and fingerprint are received during enrollment, the card information provides data that establishes where, i.e., at what memory location or address, the system will store the fingerprint data.” The Board then considered the one prior art reference of record which teaches storing the personal identification number “in association with” the user’s fingerprint image data and determined that the prior art’s card data “define” the memory location of biometric data because “the ‘association’ is where the fingerprint data is stored.

CPC appealed, arguing that the prior art’s “to associate with” does not mean “to set” or “to establish,” which is what the claims, as construed by the Board, require. The Federal Circuit agreed.

In the view of the Court, “to associate two pieces of data with one another does not necessarily mean that one piece of data sets, or otherwise establishes, the location of the other piece of data.” The Court acknowledged that the prior art had to necessarily set aside a memory location for storing a user’s biometric data. Nevertheless, it stated that “the Board did not meaningfully grapple with the ’039 patent’s additional constraint that the card information determines (i.e., establishes) the memory location of the biometric data.”

The Court also opined that “without any explanation or evidence underpinning the Board’s assumption—that associating the card information with the biometric data means the former controls the decision of where to store the latter—its decisions lack substantial evidence.”

Judge Wallach dissented, finding that the Board’s conclusion was supported by substantial evidence.

Patent applicants and practitioners should carefully consider claim wording and precise reasoning when drafting both the specification and the claims to avoid potential interpretive leaps and distinguish similar features from close prior art.