Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`Entered: October 9, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00808
`Patent 9,530,137 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 9
`Entered: October 9, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00808
`Patent 9,530,137 B2
`____________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`Case IPR2018-00808
`Patent 9,530,137 B2
`
`
`I.
`INTRODUCTION
`Petitioner, Apple Inc., filed a Petition (Paper 3, “Pet.”) requesting
`inter partes review of claims 1, 2, and 5–12 of U.S. Patent No. 9,530,137 B2
`(Ex. 1001, “the ’137 patent”). Patent Owner, Universal Secure Registry,
`LLC, timely filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to
`determine whether to institute review.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the
`reasons set forth below, we conclude that Petitioner has not shown a
`reasonable likelihood it would prevail in establishing the unpatentability of
`the challenged claims. We, therefore, do not institute inter partes review of
`the ’137 patent in this proceeding.
`
`A. RELATED MATTERS
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 2–3; Paper 7, 2 (Patent Owner’s Updated
`Mandatory Notices).
`
`B. THE ’137 PATENT
`The ’137 patent is titled “Method and Apparatus for Secure Access
`Payment and Identification” and describes ways to securely authenticate the
`identity of a plurality of users. Ex. 1001, [54], [57], 1:43–55.
`
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`
`The challenged patent describes a secure database called a “Universal
`Secure Registry,” which can be used as “a universal identification system”
`and/or “to selectively provide information about a person to authorized
`users.” Id. at 4:8–11. The ’137 patent states that the USR database is
`designed to “take the place of multiple conventional forms of identification.”
`Id. at 4:23–25. The ’137 patent further states that various forms of
`information can be stored in the database to verify a user’s identity and
`prevent fraud: (1) algorithmically generated codes, such as a time-varying
`multi-character code or an “uncounterfeitable token,” (2) “secret
`information” like a PIN or password, and/or (3) a user’s “biometric
`information,” such as fingerprints, voice prints, an iris or facial scan, DNA
`analysis, or even a photograph. See id. at 14:1–7, 14:21–40, 44:54–61,
`Fig. 3.
`The patent discloses a variety of embodiments including those in
`which a user is authenticated on a device using secret information (such a
`PIN code) and biometric information (such as a fingerprint), then the first
`device transmits information to a second device for further authentication.
`See id. at 29:21-44. The second device may verify the user’s information and
`return an enablement signal to the first device. Id. at 33:20–34. Accordingly,
`the ’137 patent discloses that the system can be used to selectively provide
`authorized users with access to perform transactions involving various types
`of confidential information stored in a secure database. See, e.g., id. at
`4:8–15.
`
`C. CHALLENGED CLAIMS
`Challenged claims 1 and 12 are independent. Claim 1 is illustrative of
`the claimed subject matter and is reproduced below:
`
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`1. A system for authenticating a user for enabling a transaction,
`the system comprising:
`a first device including:
`a first processor, the first processor programmed to
`authenticate a user of the first device based on secret
`information and to retrieve or receive first biometric
`information of the user of the first device;
`a first wireless transceiver coupled to the first processor
`and programmed to transmit a first wireless signal
`including first authentication information of the user
`of the first device; and
`a biometric sensor configured to capture the first
`biometric information of the user;
`wherein the first processor is programmed to generate
`one or more signals including the first authentication
`information, an indicator of biometric authentication,
`and a time varying value in response to valid
`authentication of the first biometric information, and
`to provide the one or more signals including the first
`authentication information for transmitting to a
`second device; and
`wherein the first processor is further configured to
`receive an enablement signal from the second device;
`and
`the system further including the second device that is
`configured to provide the enablement signal indicating
`that the second device approved the transaction based on
`use of the one or more signals;
`wherein the second device includes a second processor
`that is configured to provide the enablement signal
`based on the indication of biometric authentication of
`the user of the first device, at least a portion of the
`first authentication information, and second
`authentication information of the user of the first
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`
`device to enable and complete processing of the
`transaction.
`Ex. 1001, 45:27–61.
`
`D. PROPOSED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability:
`
`Reference(s)
`Basis
`§ 103(a) Maritzen,1 Gullman,2 and Niwa3
`§ 103(a) Maritzen, Gullman, Niwa, and
`Schutzer4
`
`Claims
`1, 2, 5–7, 9, 10, and 12
`8 and 11
`
`Pet. 20, 64. Petitioner also relies on the Declaration of Dr. Victor Shoup
`(Ex. 1002). Pet. 9.
`
`E. OBVIOUSNESS OVERVIEW
`An invention is not patentable “if the differences between the subject
`matter sought to be patented and the prior art are such that the subject matter
`as a whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).5 The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of the
`
`
`1 U.S. Patent Application Publication No. 2004/0236632, published
`November 25, 2004 (Ex. 1013).
`2 U.S. Patent No. 5,280,527, issued January 18, 1994 (Ex. 1014).
`3 U.S. Patent No. 6,453,301, issued September 17, 2002 (Ex. 1017).
`4 European Patent Application Publication No. EP 1028401, published
`August 16, 2000 (Ex. 1015).
`5 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the ’137 patent claims benefit of
`filing date under § 120 to an application filed before March 16, 2013 (see
`Ex. 1001, 1:7–40), the pre-AIA version of 35 U.S.C. § 103 applies.
`
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of skill in the art; and, (4) where in evidence, so-called
`secondary considerations, including commercial success, long-felt but
`unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S.
`1, 1718 (1966). When evaluating a combination of teachings, we must also
`“determine whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977,
`988 (Fed. Cir. 2006)). Whether a combination of elements produced a
`predictable result weighs in the ultimate determination of obviousness. KSR,
`550 U.S. at 416–17.
`
`II. DISCUSSION
`A. CLAIM CONSTRUCTION
`Petitioner proposes constructions for several terms in the ’137 patent:
`“biometric information,” “secret information,” and “authentication
`information.” Pet. 15–20. Patent Owner proposes a construction for one
`term: “the one or more signals.” Prelim. Resp. 12–15. We conclude that
`there is no need to construe any term to resolve the issues in this decision.
`See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d
`1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999).
`
`B. OBVIOUSNESS OVER COMBINATIONS OF MARITZEN AND GULLMAN
`Petitioner asserts claims 1, 2, 5–7, 9, 10, and 12 are obvious over
`various combinations of Maritzen, Gullman, and Niwa. Pet. 20–64. It also
`asserts that claims 8 and 11 are obvious over a combination of Maritzen,
`
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`Case IPR2018-00808
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`Gullman, Niwa, and Schutzer. Pet. 64–73. Our decision whether to institute
`review in this proceeding turns on an issue common to all proposed
`unpatentability grounds, so we address them together.
`
`1. The level of ordinary skill in the art
`Petitioner proposes that a person of ordinary skill “would have a
`Bachelor’s Degree in electrical engineering, computer science, or a related
`scientific field, and approximately two years of work experience in the
`computer science field including, for example, operating systems, database
`management, encryption, security algorithms, and secure transaction
`systems.” Pet. 4–5. Patent Owner proposes a level of ordinary skill that “is
`essentially the same as that of the Petitioner, except that Petitioner’s
`description requires two years of work or research experience (as compared
`to three years).” Prelim. Resp. 11. For purposes of this decision, we adopt
`Petitioner’s definition and agree with Patent Owner that there is no impact
`from any difference between the parties’ proposals. See id.
`
`2. The relevant prior art
`a. Maritzen
`Maritzen is a published patent application directed to conducting a
`financial transaction, in one embodiment using communication “between a
`vehicle-accessed, payment-gateway terminal (VAPGT) and a pre-registered,
`key-enabled, personal transaction device (PTD).” Ex. 1013, [57]. Relevant
`to this decision, Maritzen discloses that the PTD, in conjunction with a
`privacy card, uses biometric input to verify a user of the PTD. Id. at ¶¶ 39,
`43, 44. Petitioner does not assert that Maritzen discloses using secret
`information to verify a user. See Pet. 21–23.
`
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`b. Gullman
`Gullman is a patent directed to using biometric input to allow access
`to a secure system. Ex. 1014, [57]. As background information, Gullman
`discloses that “[c]ommon security mechanisms include use of a personal
`identification number (PIN) and use of a security token” and that “[a] PIN is
`used to identify an individual and authorize access to a host system.” Id. at
`1:28–31.
`
`3. Reason to combine teachings of the prior art
`Petitioner relies on the combination of Maritzen and Gullman as
`teaching “a first device including: a first processor . . . programmed to
`authenticate a user of the first device based on secret information” and relies
`on Maritzen as teaching “a biometric sensor” and that the first processor is
`programmed “to retrieve or receive first biometric information of the user of
`the first device.” See Pet. 21–30, 36–37. Petitioner offers several reasons that
`a person of skill informed of the relevant prior art would have combined
`Maritzen and Gullman in the manner asserted. We conclude that none of
`Petitioner’s proposed reasons sufficiently supports the proposed
`combination.
`First, Petitioner asserts that “combining Gullman’s PIN-based user
`authentication with the teachings of Maritzen would have involved nothing
`more than simple substitution of one known element (PIN-based user
`authentication) for another (biometric based user authentication) to obtain
`predictable results (secure authentication of the user).” Pet. 24. As Patent
`Owner points out, however, substituting PIN-based authentication for
`biometric-based authentication would result in a system using only a PIN,
`whereas the claimed invention requires both authentication mechanisms. See
`
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`Prelim. Resp. 21–22. Thus, we agree that making a “simple substitution”
`cannot have given persons of skill in the art reason to combine the teachings
`of the prior art to arrive at the claimed invention.
`Petitioner asserts further that “there are a finite number of identified
`predictable solutions for conducting a user authentication including a
`biometric authentication and a PIN-based user authentication.” Pet. 25. But
`Petitioner does not support that assertion with evidence or otherwise attempt
`to define the range of possible solutions. See Prelim. Resp. 22–23. We
`conclude that Petitioner’s skeletal “obvious to try” argument falls short of a
`sufficient basis on which to conclude a person of skill had reason to combine
`Maritzen and Gullman as asserted.
`Finally, Petitioner asserts that a person of skill had reason “to combine
`Gullman’s PIN-based user authentication with the teachings of Maritzen
`because they are in the same field of endeavor, because they address the
`same issues, and because they have the same basic structures and functions.”
`Pet. 25–28. We do not agree. Even with similarities between Maritzen’s and
`Gullman’s systems, Petitioner must nonetheless articulate a reason to use a
`particular teaching from one reference with those of another. Instead,
`Petitioner asserts that both references: “are in the same field . . . and address
`the same problem” (Pet. 25); “describe systems that include a handheld
`device . . . an intermediary . . . and an authentication server” (id. at 26);
`“recognize the risk of stolen authentication devices and teach systems
`designed to reduce that risk” (id. at 27); and “involve a system that receives
`a biometric input from a user, and generates a token that is sent to a server
`for authentication” (id.). But Petitioner does not explain sufficiently why
`those similarities themselves provide a reason to use PIN-based
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`authentication as disclosed by Gullman in combination with Maritzen’s
`teachings including biometric-based authentication. We find that the
`similarities Petitioner identifies, standing alone, do not adequately articulate
`such a reason here.
`Accordingly, we conclude Petitioner has not shown as reasonable
`likelihood it would prevail with its obviousness assertions. Because all of
`Petitioner’s assertions involve the same combination of teachings from
`Maritzen and Gullman, our conclusion applies to all challenged claims.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition fails to establish a reasonable likelihood that
`Petitioner would prevail in showing any challenged claim unpatentable.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), no inter partes
`review of any claim of the ’137 patent is instituted.
`
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`Case IPR2018-00808
`Patent 9,530,137 B2
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`
`PETITIONER:
`
`Monica Grewal
`Benjamin Fernandez
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Jim Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`11
`
`
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