throbber
DOCKET NO.: 1033300-00302US1
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: monica.grewal@wilmerhale.com
`
` ben.fernandez@wilmerhale.com
`
`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
`U.S. Patent No. 9,530,137
`________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1, 2, AND 5-12
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`
`Table of Contents
`
`Page
`
`A. 
`B. 
`C. 
`D. 
`
`A. 
`
`III. 
`IV. 
`V. 
`
`Table of Authorities ....................................................................................... iv 
`I. 
`INTRODUCTION............................................................................ 1 
`II. 
`MANDATORY NOTICES .............................................................. 2 
`Real Party-In-Interest ................................................................. 2 
`Related Matters .......................................................................... 2 
`Counsel ...................................................................................... 3 
`Service Information ................................................................... 4 
`LEVEL OF ORDINARY SKILL .................................................... 4 
`CERTIFICATION OF GROUNDS FOR STANDING .................. 5 
`OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .... 5 
`Prior Art Patents and Publications ............................................. 5 
`1.  Ex-1013 – Maritzen ............................................................. 6 
`2.  Ex-1014 – Gullman ............................................................. 6 
`3.  Ex-1015 – Schutzer ............................................................. 7 
`4.  Ex-1017 – Niwa .................................................................. 7 
`Grounds for Challenge ............................................................... 9 
`LEGAL PRINCIPLES ..................................................................... 9 
`BACKGROUND OF THE ’137 PATENT .................................... 10 
`Priority ..................................................................................... 10 
`Brief Description of the ’137 Patent Disclosure ...................... 10 
`Prosecution History ................................................................. 12 
`
`VI. 
`VII. 
`
`B. 
`
`A. 
`B. 
`C. 
`
`- ii -
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`

`

`A. 
`B. 
`C. 
`IX. 
`
`A. 
`
`B. 
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`PROPOSED CLAIM CONSTRUCTIONS ................................... 14 
`Biometric Information (All Challenged Claims) ..................... 15 
`Secret Information ................................................................... 17 
`Authentication Information ..................................................... 18 
`CLAIMS 1, 2, AND 5-12 OF THE ’137 PATENT ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103 .............................. 20 
`Ground 1: Claims 1, 2, 5-7, 9, 10, and 12 are Obvious Over
`Maritzen in View of Gullman and Niwa ................................. 20 
`1. 
`Independent Claim 1 ......................................................... 20 
`2.  Dependent Claim 2 ............................................................ 47 
`3.  Dependent Claim 5 ............................................................ 51 
`4.  Dependent Claim 6 ............................................................ 54 
`5.  Dependent Claim 7 ............................................................ 55 
`6.  Dependent Claim 9 ............................................................ 57 
`7.  Dependent Claim 10 .......................................................... 58 
`8. 
`Independent Claim 12 ....................................................... 61 
`Ground 2: Claim 8 and 11 Are Obvious Over Maritzen in
`View of Gullman, Niwa, and Schutzer .................................... 64 
`1.  Dependent Claim 8 ............................................................ 64 
`2.  Dependent Claim 11 .......................................................... 68 
`CONCLUSION .............................................................................. 74 
`
`VIII. 
`
`X. 
`
`
`
`- iii -
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`

`

`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`
`Table of Authorities
`
`CASES
`
`Page(s)
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ..................................................................... 14
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007)....................................................................................... 10
`STATUTES
`35 U.S.C. § 101 .......................................................................................................... 3
`35 U.S.C. § 102 .............................................................................................. 3, 6, 7, 8
`35 U.S.C. § 103 ........................................................................................ 3, 4, 8, 9, 12
`35 U.S.C. § 112 ........................................................................................................ 12
`35 U.S.C. § 314(a) ..................................................................................................... 9
`35 U.S.C. § 325(d) ..................................................................................................... 6
`Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011) ....................................................... 9
`REGULATIONS
`37 C.F.R. § 42.8 ..................................................................................................... 2, 3
`37 C.F.R. § 42.22 ....................................................................................................... 5
`37 C.F.R. § 42.100 ................................................................................................... 14
`37 C.F.R. § 42.101 ..................................................................................................... 5
`37 C.F.R. § 42.104 ..................................................................................................... 5
`77 Fed. Reg. 48764 (Aug. 14, 2012) ...................................................................... 15
`
`
`- iv -
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`

`

`I.
`
`INTRODUCTION
`The ’137 patent is generally directed toward systems for authenticating a
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`
`user and approving a transaction. The patent owner, Universal Secure Registry,
`
`LLC (“USR”), has described the claimed invention similarly, asserting that the
`
`’137 patent relates to a mobile transaction approval system that involves local
`
`authentication, remote authentication, a PIN, biometric information, and a time-
`
`varying code. See Plaintiff’s Answer Brief in Opposition to Defendants’ Motion to
`
`Dismiss (“Opp.”) at 10 (Ex-1018) (“A person wishing to use a device for a
`
`transaction must first be authenticated by the device based on secret information
`
`and biometric information provided by the person… The device then generates
`
`authentication information, an indicator of the device’s biometric authentication of
`
`the user, and a time varying value that creates a one-time variable token that can be
`
`sent via a merchant to a second device for transaction approval.”).
`
`When the application for the ’137 patent was filed, however, the use of local
`
`and remote authentication, PINs, biometric information, and time-varying codes to
`
`authenticate a user engaged in a financial transaction was well known in the art. In
`
`fact, the prior art is replete with disclosures of systems that perform user
`
`authentication in this manner. For example, prior art reference U.S. Patent
`
`Application Publication No. 2004/0236632 (“Maritzen”) (Ex-1013) discloses a
`
`handheld device configured to locally authenticate a user based on biometric
`
`- 1 -
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`information and to send a transaction key to a second device, which is configured
`
`to conduct a remote authentication of the user. U.S. Patent No. 5,280,527
`
`(“Gullman”) (Ex-1014) discloses an authentication device configured to generate
`
`an authentication tokens based on PINs, biometric measurements, and time-varying
`
`values, which are remotely authenticated by a remote host system.
`
`Thus, as further explained in this Petition, the systems and methods claimed
`
`in the ’137 patent were known in the art or obvious at the time the ’137 patent was
`
`filed.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Apple Inc.
`
`(“Apple” or “Petitioner”) is the real party-in-interest.
`
`B. Related Matters
`The ’137 patent is owned by Universal Secure Registry, LLC (“USR” or
`
`“Patent Owner”). On May 21, 2017, USR sued Apple and Visa in the District of
`
`Delaware, asserting four patents, including the ’137 patent, against Apple’s Apple
`
`Pay functionality. See Ex-1003, Universal Secure Registry, LLC v. Apple Inc. et
`
`al., No. 17-585-VAC-MPT (D. Del.), ECF No. 1, Complaint at ¶2. The complaint
`
`was served on Petitioner on July 5, 2017.
`
`On August 25, 2017, Apple filed a Motion to Dismiss for Failure to State a
`
`Claim, asserting that the claims of the ’137 patent are unpatentable under 35
`
`- 2 -
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`U.S.C. § 101 because they are directed to the abstract idea of verifying an account
`
`holder’s identity based on codes and/or information related to the account holder
`
`before enabling a transaction. That motion remains pending.
`
`In addition to the Motion to Dismiss, Apple is filing the following petitions
`
`for CBM/IPR:
`
`Asserted Patent
`
`CBM/IPR
`
`Statutory Grounds
`
`U.S. 9,530,137
`
`
`
`U.S. 9,100,826
`
`
`
`U.S. 8,856,539
`
`
`
`U.S. 8,577,813
`
`
`
`CBM
`
`IPR
`
`IPR
`
`IPR
`
`IPR
`
`CBM
`
`IPR
`
`IPR
`
`CBM
`
`CBM
`
`CBM
`
`35 U.S.C. § 101
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. §§ 102, 103
`
`35 U.S.C. § 101
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`35 U.S.C. § 101
`
`35 U.S.C. § 103
`
`35 U.S.C. § 103
`
`C. Counsel
`Pursuant to 37 C.F.R. §§ 42.8(b)(3)-(4), Petitioner identifies the following
`
`lead and backup counsel, to whom all correspondence should be directed.
`
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`Lead Counsel: Monica Grewal (Reg. No. 40,056),
`
`Backup Counsel: Ben Fernandez (Reg. No. 55,172).
`
`D.
`Service Information
`E-mail:
`
`monica.grewal@wilmerhale.com,
`
`
`
`ben.fernandez@wilmerhale.com.
`
`
`
`Post and hand delivery: Wilmer Cutler Pickering Hale and Dorr LLP
`
`
`
`
`
`
`
`
`
`60 State Street
`
`Boston, MA 02109
`
`Telephone: 617-526-6223
`
`
`
`
`
`Fax: 617-526-5000
`
`Petitioner consents to service by e-mail on lead and backup counsel.
`
`III. LEVEL OF ORDINARY SKILL
`A person of ordinary skill in the relevant field or art (“POSITA”) is a
`
`hypothetical person to whom an expert in the relevant field could assign a routine
`
`task with reasonable confidence that the task would be successfully carried out.
`
`The level of skill in the art is evidenced by prior art references. The prior art
`
`demonstrates that a POSITA, at the time the ’137 patent was effectively filed,
`
`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
`
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`management, encryption, security algorithms, and secure transaction systems,
`
`though additional education can substitute for less work experience and vice versa.
`
`See Ex-1002, Shoup-Decl., ¶¶35-37.
`
`IV. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition. See 37 C.F.R. §§ 42.101(a)-(c).
`
`Petitioner certifies that it (1) has not filed a civil action challenging the
`
`validity of a claim of the patent, 37 C.F.R. § 42.101(a), (2) has complied with the
`
`timing requirements set forth in 37 C.F.R. § 42.101(b), and (3) is not estopped
`
`from challenging the claims on the grounds identified in this Petition, 37 C.F.R. §
`
`42.101(c).
`
`V. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)-(2), Apple Inc. (“Petitioner”)
`
`challenges claims 1, 2, and 5-12 of U.S. Patent No. 9,530,137 (“’137 patent”) and
`
`requests that they be canceled.
`
`A.
`Prior Art Patents and Publications
`The following references are pertinent to the grounds of unpatentability as
`
`explained below:
`
`- 5 -
`
`

`

`1.
`Ex-1013 – Maritzen
`U.S. Patent Application Publication No. 2004/0236632 (“Maritzen”) (Ex-
`
`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`
`1013), which was filed on December 6, 2001 and published on November 25,
`
`2004, more than one year before the earliest possible priority date of the ’137
`
`patent. Maritzen accordingly qualifies as prior art under at least 35 U.S.C. §§
`
`102(b) and 102(e). Maritzen was not considered during prosecution of the ’137
`
`patent. Like the ’137 patent, Maritzen relates to an authentication device
`
`(“personal transaction device (PTD) 100”) configured to authenticate a user based
`
`on biometric information and a second device (“clearing house 130”) configured to
`
`authenticate a user based on biometric information. Ex-1013, Maritzen, Abstract;
`
`[0039]; [0047].
`
`2.
`Ex-1014 – Gullman
`U.S. Patent No. 5,280,527 (“Gullman”)1 (Ex.1014), which was filed on April
`
`14, 1992 and published on January 18, 1994, more than one year before the earliest
`
`
`1 Although Gullman was cited in an Information Disclosure Statement in the
`
`prosecution of the ’137 patent, none of the grounds presented in this Petition is
`
`“the same or substantially the same prior art or arguments previously . . . presented
`
`to the Office” under 35 U.S.C. § 325(d). Gullman was cited after the Notice of
`
`Allowance and was not expressly considered as a basis for rejection in the file
`
`history.
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`possible priority date of the ’137 patent. Gullman accordingly qualifies as prior art
`
`under at least 35 U.S.C. §§ 102(b) and 102(e). Like the ’137 patent, Gullman is
`
`directed to a user authentication device (“biometric security apparatus 14”) and a
`
`remote user authentication device (“host system 10”) configured to authenticate a
`
`user based on biometric information. Ex-1014, Gullman, Abstract; [0013]; [0021];
`
`Fig.1.
`
`3.
`Ex-1015 – Schutzer
`European Patent Application Publication No. EP 1028401 (“Schutzer”) (Ex-
`
`1015), which was filed on February 10, 2000 and published on August 16, 2000,
`
`more than one year before the earliest possible priority date of the ’137 patent.
`
`Schutzer accordingly qualifies as prior art under at least 35 U.S.C. §§ 102(b) and
`
`102(e). Schutzer was not considered during the prosecution of the ’137 patent.
`
`Like the ’137 patent, Schutzer is directed toward a secure financial transaction
`
`system that includes a user device (“user’s computing device 10”) and a secure
`
`database configured to authenticate the user (“issuing bank server 14”). Ex-1015,
`
`Schutzer, Abstract; Fig. 1.
`
`4.
`Ex-1017 – Niwa
`U.S. Patent No. 6,453,301 (“Niwa”) (Ex-1017) issued on September 17,
`
`2002, more than one year before the earliest possible priority date of the ’137
`
`patent. Maritzen accordingly qualifies as prior art under at least 35 U.S.C. §
`
`- 7 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`102(b). Niwa was filed on February 23, 2000 as U.S. Patent Application No.
`
`09/510,811 (“Niwa Application”) (Ex-1016), which is expressly incorporated by
`
`reference in Maritzen (Ex-1013). See Ex-1013, Maritzen, [0043] (“In one
`
`embodiment, privacy card 110 is a biometric control. A suitable biometric control
`
`device that may be used is described in U.S. patent application Ser. No.
`
`09/610,8112 [sic] entitled “Method of Using Personal Device With Internal
`
`Biometric In Conducting Transactions Over A Network”, which is herein
`
`incorporated by reference.”).3
`
`2 Petitioner submits that Maritzen erroneously cites Application No.
`
`09/610,811, which is entitled “Method for Indexing and Searching Moving Picture
`
`Using Motion Activity Description Method,” and that Maritzen intended, instead,
`
`to cite Application No. 09/510,811, whose title (“Method of Using Personal
`
`Device With Internal Biometric In Conducting Transactions Over A Network”)
`
`matches that cited by Maritzen. A POSITA would have recognized that
`
`Application No. 09/610,811 entitled “Method for Indexing and Searching Moving
`
`Picture Using Motion Activity Description Method” is unrelated to biometric
`
`control devices. Ex-1002, Shoup Decl., ¶¶51-52.
`
`3 The Niwa Application and Maritzen are also commonly assigned to Sony
`
`Corporation. The Niwa Application was cited in Maritzen in December 2001,
`
`before the Niwa Application became publicly available in September 2002, thus
`
`- 8 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`Niwa was not considered during the prosecution of the ’137 patent. Like the
`
`’137 patent, Niwa is directed toward a secure financial transaction system that
`
`includes a user device (“fingerprint identification device 50”) and a central server
`
`configured to authenticate the user (“processing unit 22”). Ex-1017, Niwa,
`
`Abstract; Fig. 1.
`
`B. Grounds for Challenge
`Petitioner requests cancellation of claims 1, 2, 5-12 of the ’137 patent as
`
`unpatentable under 35 U.S.C. § 103. This Petition, supported by the declaration of
`
`Dr. Shoup (Ex-1002) filed herewith, demonstrates that there is a reasonable
`
`likelihood that Petitioner will prevail with respect to cancellation of at least one of
`
`the challenged claims. See 35 U.S.C. § 314(a).
`
`VI. LEGAL PRINCIPLES
`The challenged patent was filed prior to the effective date of the Leahy-
`
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), and
`
`therefore should be analyzed for patentability under pre-AIA 35 U.S.C. § 103. A
`
`claim is invalid if it would have been “obvious.” See 35 U.S.C. § 103(a). The key
`
`inquiry to determine obviousness is whether an “improvement is more than the
`
`
`further suggesting that Maritzen intended to cite the Niwa Application because
`
`only their common assignee (Sony) would have been aware of the Niwa
`
`Application.
`
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`predictable use of prior art elements according to their established functions.” KSR
`
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 417, 420-21 (2007).
`
`VII. BACKGROUND OF THE ’137 PATENT
`A.
`Priority
`Entitled “Universal Secure Registry,” the ’137 patent issued on December
`
`27, 2016 from an application filed on February 9, 2016. The ’137 patent is a
`
`continuation of U.S. Application No. 14/814,740, which was filed on July 31, 2015
`
`(published as U.S. Pat. Pub. No. 20160155121A1 (Ex-1004)), and is part of a long
`
`line of continuation applications including U.S. Application No. 14/027,860 (now
`
`Pat. No. 9,100,826), U.S. Application No. 13/621,609 (now Pat. No. 8,538,881),
`
`U.S. Application No. 13/168,556 (now Pat. No. 8,271,397), and U.S. Application
`
`No. 11/677,490 (now Pat. No. 8,001,055). The patent also claims priority to three
`
`provisional applications: Application Nos. 60/775,046 (Ex-1021), 60/812,279 (Ex-
`
`1022), 60/859,235 (Ex-1023), the earliest of which was filed on February 21, 2006
`
`and the latest of which was filed on November 15, 2006.
`
`B.
`Brief Description of the ’137 Patent Disclosure
`The ’137 patent describes a secure database called a “Universal Secure
`
`Registry,” which is “a universal identification system…used to selectively provide
`
`information about a person to authorized users.” Ex-1001, ’137 patent at 4:8-11.
`
`The patent states that the USR database is designed to “take the place of multiple
`
`conventional forms of identification” when conducting financial transactions to
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`minimize the incidence of fraud. E.g., Ex-1001, ’137 patent at 4:23-25. The
`
`patent 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 multicharacter 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 a
`
`photograph. See Ex-1001, ’137 patent at 14:1-7, 14:21-40, 44:54-61, Fig 3. Ex-
`
`1002, Shoup-Decl., ¶24.
`
`In its complaint against Apple, USR identified ’137 patent claim 12 as
`
`exemplary of the patent’s other claims. Ex-1003, Universal Secure Registry, LLC
`
`v. Apple Inc. et al., No. 17-585-VAC-MPT (D. Del.), ECF No. 1, Complaint at
`
`¶106. Claim 12 is a “system for authenticating a user for enabling a transaction.”
`
`Ex-1001, ’137 patent at 46:55-56. The claimed system comprises a first device
`
`including a biometric sensor, a first processor, and a wireless transceiver. The first
`
`processor is programmed to (1) authenticate a user based on secret information, (2)
`
`retrieve or receive biometric information from a user, (3) authenticate a user based
`
`on that biometric information, (4) in response to the biometric authentication,
`
`generate signals including first authentication information, an indicator of
`
`biometric authentication, and a time-varying value, (5) transmit the signals to a
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`second device, and (6) receive from the second device an enablement signal. Id. at
`
`46:55-47:14. Ex-1002, Shoup-Decl., ¶25.
`
`C.
`Prosecution History
`The ’137 patent was filed as U.S. Application No. 15/019,660 (“’137
`
`application”) on February 9, 2016 and claims priority to the three original
`
`provisional applications from 2006, the earliest of which was filed on February 21,
`
`2006. The Patent Owner filed a Request for Prioritized Examination under 37
`
`CFR § 1.102(e) with the application on February 9, 2016. See Ex-1005, Track One
`
`Request.
`
`The examiner granted the Request for Prioritized Examination under Track
`
`One on March 22, 2016. See Ex-1006, Track One Request Granted. The examiner
`
`issued a Non-Final Rejection on April 15, 2016. See Ex-1007, Non-Final
`
`Rejection. The examiner rejected claims 1-11 under 35 U.S.C. § 112(b) for
`
`indefiniteness based on the structure of the claims. Id. at 4-5.
`
`The examiner also rejected claims 1-2 and 5-12 under 35 U.S.C. § 103 as
`
`obvious over U.S. Patent App. Pub. 2002/0178364 (“Weiss”) in view of U.S.
`
`Patent No. 6,819,219 (“Bolle”), explaining that Weiss “does not directly disclose a
`
`wireless transceiver and wireless signal; and a biometric sensor configured to
`
`capture a first biometric information of the user,” but it would have been obvious
`
`- 12 -
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`“to modify Weiss’ invention by incorporating the wireless technology as taught by
`
`Bolle.” Id. at 6-14.
`
`The examiner also rejected claims under the non-statutory doctrine of double
`
`patenting. Id. at 15. The examiner rejected application claims 1 and 12 as double
`
`patenting of claim 1 of U.S. Patent No. 8,001,055 (“Weiss ‘055”) and rejected
`
`application claims 1-12 as double patenting of claims 21-40 of co-pending U.S.
`
`App. No. 14/814,740. Id.
`
`Patent Owner filed a Terminal Disclaimer Request on July 15, 2016. See
`
`Ex-1008, Terminal Disclaimer-Filed. The request limited the term of the ’137
`
`application to both U.S. App. No. 14/814,740 and U.S. Patent No. 8,001,055
`
`(“Weiss ’055”). Id.
`
`Patent Owner responded to the Non-Final Office Action on July 15, 2016
`
`amending application claims 1-4, 6-7, and 10-12 and explaining that the
`
`amendments to application claim 1 were made “to make it clear that both the first
`
`device and the second device are being positively recited,” and therefore traverse
`
`the indefiniteness rejection under § 112. Ex-1009, Response to Non-Final
`
`Rejection at 7. Patent Owner also “incorporated the common subject matter of
`
`dependent claims 3-4 into independent claim 1.” Id. Patent Owner indicated that
`
`application claim 12 recited the same limitations as application claim 1 and should
`
`be allowable for the same reason. Id. at 8.
`
`- 13 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`The examiner issued a Notice of Allowance on August 10, 2016. See Ex-
`
`1010, Notice of Allowance. The examiner did not provide specific reasoning for
`
`why the claims were allowable over the prior art. Id. at 4.
`
`Patent Owner filed an Amendment after the Notice of Allowance on
`
`November 10, 2016. See Ex-1011, Amendment After Notice of Allowance.
`
`Patent Owner amended application claims 1, 3, 4, 7, 10, and 12 to remove the
`
`“handheld” device limitation.
`
`The examiner entered the proposed amendments on November 18, 2016.
`
`See Ex-1012, Response to Amendment under Rule 312. The ’137 patent
`
`subsequently issued on December 27, 2016.
`
`VIII. PROPOSED CLAIM CONSTRUCTIONS
`A claim in inter partes review is given the “broadest reasonable construction
`
`in light of the specification.” 37 C.F.R. § 42.100(b)4; In re ICON Health &
`
`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
`
`The following discussion proposes a construction and support for that
`
`construction. Any claim terms not included are given their broadest reasonable
`
`interpretation in light of the specification as commonly understood by those of
`
`ordinary skill in the art. Should the Patent Owner contend that the claim has a
`
`4 Petitioner adopts this standard and reserves the right to pursue different
`
`constructions in a district court, where a different standard applies.
`
`- 14 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`construction different from its broadest reasonable interpretation, the appropriate
`
`course is for the Patent Owner to seek to amend the claim to expressly correspond
`
`to its contentions in this proceeding. See 77 Fed. Reg. 48764 (Aug. 14, 2012).
`
`A. Biometric Information (All Challenged Claims)
`Under a broadest reasonable interpretation, “biometric information” as used
`
`in the ’137 patent means “information about a user’s physical characteristics, such
`
`as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal
`
`photograph.” Ex-1002, Shoup-Decl., ¶40.
`
`This construction is supported by the specification, which describes
`
`biometric information using substantially identical language.5 Ex-1001, ’137
`
`5 The ’137 patent specification includes one passage that describes a
`
`“personal identification number (PIN)” as an example of biometric information.
`
`Ex-1001, ’137 Patent at 14:57-60. That passage is inconsistent with other
`
`statements in the intrinsic record that describe biometric information as
`
`information that relates to a user’s physical characteristics and distinct from a PIN.
`
`For example, the specification elsewhere distinguishes PIN numbers from
`
`biometric information. Ex-1001, ’137 Patent at 4:40-45 (“The identity of the user
`
`possessing the identifying device may be verified at the point of use via any
`
`combination of a memorized PIN number or code, biometric identification such as
`
`a fingerprint, voice print, signature, iris or facial scan, or DNA analysis, or any
`
`- 15 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`patent at 4:40-47 (“The identity of the user possessing the identifying device may
`
`be verified at the point of use via . . . biometric identification such as a fingerprint,
`
`voice print, signature, iris or facial scan, or DNA analysis, or any other method of
`
`identifying the person possessing the device.”); 3:4-5 (“integral biometric sensors
`
`that sense one or more biometric feature (e.g., a fingerprint) of the user”); 14:6-7
`
`(“a measurement such as a biometric (e.g., a voiceprint, a fingerprint, DNA, a
`
`retinal image, a photograph, etc.”). Consistent with the use of the biometric
`
`information in the specification, Webster’s Dictionary defines biometric
`
`authentication as “[a] method of authentication that requires a biological scan of
`
`some sort, such as a retinal scan or voice recognition.” Ex-1019, Webster’s
`
`Dictionary, 65. Similarly, Microsoft Computer Dictionary defines biometrics as
`
`“the science of measuring and analyzing human biological characteristics. In
`
`computer technology, biometrics relates to authentication and security techniques
`
`that rely on measurable, individual biological stamps to recognize or verify an
`
`individual's identity. For example, fingerprints, handprints, or voice-recognition
`
`might be used to enable access to a computer, to a room, or to an electronic
`
`
`other method of identifying the person possessing the device”). Furthermore, a
`
`POSITA would not have considered a PIN to be biometric information because it
`
`is unrelated to any physical characteristic of the user.
`
`
`
`- 16 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`commerce account. Ex-1020, Microsoft Computer Dictionary, 50. Ex-1002,
`
`Shoup-Decl., ¶41.
`
`B.
`Secret Information
`Under a broadest reasonable interpretation, “secret information” as used in
`
`the ’137 patent means “information known and input by an authorized user, such
`
`as a PIN, a phrase, a password, or a passcode of the user.” Ex-1002, Shoup-Decl.,
`
`¶42.
`
`This construction is consistent with the specification and claims. For
`
`example, the specification describes secret information as “known by the user” that
`
`may comprise “a pin, a phrase, a password, etc.” Ex-1001, ’137 patent at 14:1-7,
`
`44:54-61. The secret information is part of the claimed authentication process.
`
`See, e.g., id. at claim 12 (“a first processor programmed to: 1) authenticate a user
`
`of the first device based on secret information…”). Moreover, the secret
`
`information is input by a user via the user interface as part of the first
`
`authentication process. Id. at 30:38-51. Ex-1002, Shoup-Decl., ¶43.
`
`That the information is known and input by an authorized user is consistent
`
`with the overall purpose of the invention, which is to provide an identification
`
`system “that will enable a person to be accurately identified…and/or authenticated
`
`without compromising security, to gain access to secure systems and/or areas.”
`
`Ex-1001, ’137 patent at 3:66-4:7 (Summary of the Invention). If the information
`
`- 17 -
`
`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`were known and used by others, then the security of the system would be
`
`compromised. Ex-1002, Shoup-Decl., ¶44.
`
`C. Authentication Information
`Under the broadest reasonable interpretation claim construction standard,
`
`“authentication information” as used in the ’137 patent means “information used
`
`by the system to verify the identity of an individual.” See Ex-1002, Shoup-Decl.,
`
`¶45.
`
`This construction is consistent with the patent specification. The patent uses
`
`the terms “verification,” “identification,” and “authentication” interchangeably
`
`and/or to describe the same process. Ex-1001, ’137 patent at 3:66-4:43 (“There is
`
`thus a need for an identification system that will enable a person to be accurately
`
`identified (‘identification’ sometimes being used hereinafter to mean either
`
`identified or verified) and/or authenticated with

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