DOCKET NO.: 1033300-00302US2
`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 IPR2018-00809
`U.S. Patent No. 9,530,137
`________________________________________
`
`
`PETITION FOR INTER PARTES REVIEW
`OF CLAIMS 1, 2, AND 5-12
`
`
`
`
`
`
`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 IPR2018-00809
`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-1113 – Jakobsson ........................................................... 5
`2. Ex-1114 – Maritzen ............................................................. 6
`3. Ex-1115 - Schutzer .............................................................. 7
`4. Ex-1117 – Niwa .................................................................. 7
`Grounds for Challenge ............................................................... 9
`LEGAL PRINCIPLES ..................................................................... 9
`BACKGROUND OF THE ’137 PATENT ...................................... 9
`Priority ....................................................................................... 9
`Brief Description of the ’137 Patent Disclosure ...................... 10
`Prosecution History ................................................................. 11
`
`VI.
`VII.
`
`B.
`
`A.
`B.
`C.
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`A.
`B.
`C.
`IX.
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`A.
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`B.
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`C.
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`PROPOSED CLAIM CONSTRUCTIONS ................................... 14
`Biometric Information (All Challenged Claims) ..................... 14
`Secret Information ................................................................... 16
`Authentication Information ..................................................... 17
`CLAIMS 1, 2, AND 5-12 OF THE ’137 PATENT ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103 .............................. 20
`Ground 1: Claims 1, 2, 6, 7, 9, 10, and 12 are Obvious Over
`Jakobsson in View of Maritzen ............................................... 20
`1.
`Independent Claim 1 ......................................................... 20
`2. Dependent Claim 2 ............................................................ 42
`3. Dependent Claim 6 ............................................................ 43
`4. Dependent Claim 7 ............................................................ 45
`5. Dependent Claim 9 ............................................................ 46
`6. Dependent Claim 10 .......................................................... 47
`7.
`Independent Claim 12 ....................................................... 50
`Ground 2: Claim 5 is Obvious over Jakobsson in View of
`Maritzen and Niwa .................................................................. 53
`1. Dependent Claim 5 ............................................................ 53
`Ground 3: Claim 8 and 11 Are Obvious Over Jakobsson in
`View of Maritzen and Schutzer ............................................... 63
`1. Dependent Claim 8 ............................................................ 63
`2. Dependent Claim 11 .......................................................... 69
`CONCLUSION .............................................................................. 72
`
`VIII.
`
`X.
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
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`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)......................................................................................... 9
`STATUTES
`35 U.S.C. § 101 ...................................................................................................... 2, 3
`35 U.S.C. § 102 .................................................................................................. 3, 6, 7
`35 U.S.C. § 103 ............................................................................................ 3, 4, 9, 12
`35 U.S.C. § 112 ........................................................................................................ 12
`35 U.S.C. § 314(a) ..................................................................................................... 9
`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
`37 C.F.R. § 1.102 ..................................................................................................... 12
`77 Fed. Reg. 48764 (Aug. 14, 2012) ...................................................................... 14
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
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`
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`I.
`
`INTRODUCTION
`The ’137 patent is generally directed toward systems for authenticating a
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`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
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`Dismiss (“Opp.”), 10 (Ex-1118) (“A person wishing to use a device for a
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`transaction must first be authenticated by the device based on secret information
`
`and biometric information provided by the person…The device then generates
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`authentication information, an indicator of the device’s biometric authentication of
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`the user, and a time varying value that creates a one-time variable token that can be
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`sent via a merchant to a second device for transaction approval.”).
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`When the application for the ’137 patent was filed, however, the use of local
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`and remote authentication, PINs, biometric information, and time-varying codes to
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`authenticate a user engaged in a financial transaction was well known in the art. In
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`fact, the prior art is replete with disclosures of systems that perform user
`
`authentication in this manner. For example, prior art reference WO 2004/051585
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`(“Jakobsson”) (Ex-1113) discloses a handheld device configured to locally
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`Petition for Inter Partes Review
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`authenticate a user based on a PIN and biometric information and to send an
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`authentication code based on a time-varying code to a second device, which is
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`configured to conduct a remote authentication of the user.
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`Thus, as further explained in this Petition, the systems and methods claimed
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`in the ’137 patent were known in the art or obvious at the time the ’137 patent was
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`filed.
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`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-1103, Universal Secure Registry, LLC v. Apple Inc. et
`
`al., No. 17-585-VAC-MPT (D. Del.), ECF No. 1, Complaint, ¶ 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
`
`U.S.C. § 101 because they are directed to the abstract idea of verifying an account
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`Petition for Inter Partes Review
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`holder’s identity based on codes and/or information related to the account holder
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`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.
`
`Lead Counsel: Monica Grewal (Reg. No. 40,056),
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`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
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`
`
`
`
`
`
`
`
`60 State Street
`
`Boston, MA 02109
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`Telephone: 617-526-6223
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`
`
`
`
`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
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`computer science field including, for example, operating systems, database
`
`management, encryption, security algorithms, and secure transaction systems,
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`Petition for Inter Partes Review
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`though additional education can substitute for less work experience and vice versa.
`
`See Ex-1102, 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
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`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
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`validity of a claim of the patent, 37 C.F.R. § 42.101(a), (2) has complied with the
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`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:
`
`1.
`
`Ex-1113 – Jakobsson
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`International Patent Application Publication No. WO 2004/051585
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`(“Jakobsson”) (Ex-1113), which was filed on November 26, 2003 and published on
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`June 17, 2004, more than one year before the earliest possible priority date of the
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`’137 patent. Jakobsson accordingly qualifies as prior art under at least 35 U.S.C.
`
`§§ 102(b) and 102(e). Jakobsson was not considered during prosecution of the ’137
`
`patent. Like the ’137 patent, Jakobsson relates to a transaction approval system
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`that involves a local authentication (using “user authentication device 120”), a
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`remote authentication (using an authentication server “verifier 105”), a PIN,
`
`biometric information, and a time-varying code. Ex-1113, Jakobsson, [0013];
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`[0052]; [0059].
`
`2.
`Ex-1114 – Maritzen
`U.S. Patent Application Publication No. 2004/0236632 (“Maritzen”) (Ex-
`
`1114), which was filed on December 6, 2001 and published on November 25,
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`2004, more than one year before the earliest possible priority date of the ’137
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`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
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`patent. Like the ’137 patent, Maritzen relates to an authentication device
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`(“personal transaction device (PTD) 100”) configured to authenticate a user based
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`on biometric information and a second device (“clearing house 130”) configured to
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`authenticate a user based on biometric information. Ex-1114, Maritzen, Abstract;
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`[0039]; [0047].
`
`3.
`Ex-1115 - Schutzer
`European Patent Application Publication No. EP 1028401 (“Schutzer”) (Ex-
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`1115), which was filed on February 10, 2000 and published on August 16, 2000,
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`more than one year before the earliest possible priority date of the ’137 patent.
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`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.
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`Like the ’137 patent, Schutzer is directed toward a secure financial transaction
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`system that includes a user device (“user’s computing device 10”) and a secure
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`database configured to authenticate the user (“issuing bank server 14”). Ex-1115,
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`Schutzer, Abstract; Fig. 1.
`
`4.
`Ex-1117 – Niwa
`U.S. Patent No. 6,453,301 (“Niwa”) (Ex-1117) issued on September 17,
`
`2002, more than one year before the earliest possible priority date of the ’137
`
`patent. Niwa accordingly qualifies as prior art under at least 35 U.S.C. § 102(b).
`
`Niwa was filed on February 23, 2000 as U.S. Patent Application No. 09/510,811
`
`(“Niwa Application”) (Ex-1116), which is expressly incorporated by reference in
`
`Maritzen (Ex-1114). See Ex-1114, Maritzen, [0043] (“In one embodiment, privacy
`
`card 110 is a biometric control. A suitable biometric control device that may be
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`used is described in U.S. patent application Ser. No. 09/610,8111 [sic] entitled
`
`“Method of Using Personal Device With Internal Biometric In Conducting
`
`Transactions Over A Network”, which is herein incorporated by reference.”).2
`
`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
`
`1 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,
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`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-1102, Shoup Decl., ¶¶51-52.
`
`2 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
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`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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`includes a user device (“fingerprint identification device 50”) and a central server
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`configured to authenticate the user (“processing unit 22”). Ex-1117, Niwa,
`
`Abstract; Fig. 1.
`
`B. Grounds for Challenge
`Petitioner requests cancellation of claims 1, 2, and 5-12 of the ’137 patent as
`
`unpatentable under 35 U.S.C. § 103. This Petition, supported by the declaration of
`
`Dr. Shoup (Ex-1102) 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
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`therefore should be analyzed for patentability under pre-AIA 35 U.S.C. § 103. A
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`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
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`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
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`continuation of U.S. Application No. 14/814,740, which was filed on July 31, 2015
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`(published as U.S. Pat. Pub. No. 20160155121A1 (Ex-1104)), and is part of a long
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`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),
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`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
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`provisional applications: Application Nos. 60/775,046 (Ex-1121), 60/812,279 (Ex-
`
`1122), and 60/859,235 (Ex-1123), the earliest of which was filed on February 21,
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`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
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`Registry,” which is “a universal identification system…used to selectively provide
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`information about a person to authorized users.” Ex-1101, ’137 patent, 4:8-11.
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`The patent states that the USR database is designed to “take the place of multiple
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`conventional forms of identification” when conducting financial transactions to
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`minimize the incidence of fraud. E.g., Ex-1101, ’137 patent, 4:23-25. The patent
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`states that various forms of information can be stored in the database to verify a
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`user’s identity and prevent fraud: (1) algorithmically generated codes, such as a
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`time-varying multicharacter code or an “uncounterfeitable token,” (2) “secret
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`information” like a PIN or password, and/or (3) a user’s “biometric information,”
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`such as fingerprints, voice prints, an iris or facial scan, DNA analysis, or a
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`photograph. See Ex-1101, ’137 patent, 14:1-7, 14:21-40, 44:54-61, Fig 3. Ex-
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`1102, Shoup-Decl., ¶24.
`
`In its complaint against Apple, USR identified ’137 patent claim 12 as
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`exemplary of the patent’s other claims. Ex-1103, Universal Secure Registry, LLC
`
`v. Apple Inc. et al., No. 17-585-VAC-MPT (D. Del.), ECF No. 1, Complaint, ¶106.
`
`Claim 12 is a “system for authenticating a user for enabling a transaction.” Ex-
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`1101, ’137 patent, 46:55-56. The claimed system comprises a first device
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`including a biometric sensor, a first processor, and a wireless transceiver. The first
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`processor is programmed to (1) authenticate a user based on secret information, (2)
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`retrieve or receive biometric information from a user, (3) authenticate a user based
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`on that biometric information, (4) in response to the biometric authentication,
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`generate signals including first authentication information, an indicator of
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`biometric authentication, and a time-varying value, (5) transmit the signals to a
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`second device, and (6) receive from the second device an enablement signal. Id.,
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`46:55-47:14. Ex-1102, 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 back to the three original
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`provisional applications from 2006, the earliest of which was filed on February 21,
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`2006 and the latest of which was filed on November 15, 2006. The patent owner
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`filed a Request for Prioritized Examination under 37 C.F.R. § 1.102(e) with the
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`application on February 9, 2016. See Ex-1105, Track One Request.
`
`The examiner granted the Request for Prioritized Examination under Track
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`One on March 22, 2016. See Ex-1106, Track One Request Granted. The examiner
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`issued a Non-Final Rejection on April 15, 2016. See Ex-1107, Non-Final
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`Rejection. The examiner rejected claims 1-11 under 35 U.S.C. § 112(b) for
`
`indefiniteness based on the structure of the claims. Id., 4-5.
`
`The examiner also rejected claims 1-2 and 5-12 under 35 U.S.C. § 103 as
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`obvious over U.S. Patent App. Pub. 2002/0178364 (“Weiss”) in view of U.S.
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`Patent No. 6,819,219 (“Bolle”), explaining that Weiss “does not directly disclose a
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`wireless transceiver and wireless signal; and a biometric sensor configured to
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`capture a first biometric information of the user,” but it would have been obvious
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`“to modify Weiss’ invention by incorporating the wireless technology as taught by
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`Bolle.” Id., 6-14.
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`The examiner also rejected claims under the non-statutory doctrine of double
`
`patenting. Id., 15. The examiner rejected application claims 1 and 12 as double
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`patenting of claim 1 of U.S. Patent No. 8,001,055 (“Weiss ’055”) and rejected
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`application claims 1-12 as double patenting of claims 21-40 of co-pending U.S.
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`App. No. 14/814,740. Id.
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`Patent Owner filed a Terminal Disclaimer Request on July 15, 2016. See
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`Ex-1108, Terminal Disclaimer-Filed. The request limited the term of the ’137
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`application to both U.S. App. No. 14/814,740 and U.S. Patent No. 8,001,055
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`(“Weiss ’055”). Id.
`
`Patent Owner responded to the Non-Final Office Action on July 15, 2016.
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`See Ex-1109, Response to Non-Final Rejection. Patent Owner amended
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`application claims 1-4, 6-7, and 10-12 explaining that the amendments to
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`application claim 1 were made “to make it clear that both the first device and the
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`second device are being positively recited,” and therefore traverse the
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`indefiniteness rejection under § 112. Id., 7. Patent Owner also “incorporated the
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`common subject matter of dependent claims 3-4 into independent claim 1.” Id.
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`Patent Owner indicated that application claim 12 recited the same limitations as
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`application claim 1 and should be allowable for the same reason. Id., 8.
`
`The examiner issued a Notice of Allowance on August 10, 2016. See Ex-
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`1110, Notice of Allowance. The examiner did not provide specific reasoning for
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`why the claims were allowable over the prior art. Id., 4.
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`Patent Owner filed an Amendment after the Notice of Allowance on
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`November 10, 2016. See Ex-1111, Amendment After Notice of Allowance.
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`Patent Owner amended application claims 1, 3, 4, 7, 10, and 12 to remove the
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`“handheld” device limitation.
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`- 13 -
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`The examiner entered the proposed amendments on November 18, 2016.
`
`See Ex-1112, Response to Amendment under Rule 312. The ’137 patent
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`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)3; In re ICON Health &
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`Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
`
`The following discussion proposes a construction and support for that
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`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
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`construction different from its broadest reasonable interpretation, the appropriate
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`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
`
`
`3 Petitioner adopts this standard and reserves the right to pursue different
`
`constructions in a district court, where a different standard applies.
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`- 14 -
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal
`
`photograph.” Ex-1102, Shoup-Decl., ¶40.
`
`This construction is supported by the specification, which describes
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`biometric information using substantially identical language.4 Ex-1101, ’137
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`patent, 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
`
`4 The ’137 patent specification includes one passage that describes a
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`“personal identification number (PIN)” as an example of biometric information.
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`Ex-1101, ’137 Patent, 14:57-60. That passage is inconsistent with other statements
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`in the intrinsic record that describe biometric information as information that
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`relates to a user’s physical characteristics and distinct from a PIN. For example,
`
`the specification elsewhere distinguishes PIN numbers from biometric information.
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`Ex-1101, ’137 Patent, 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
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`number or code, biometric identification such as a fingerprint, voice print,
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`signature, iris or facial scan, or DNA analysis, or any 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
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`physical characteristic of the user.
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`- 15 -
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`identifying the person possessing the device.”); 3:4-5 (“integral biometric sensors
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`that sense one or more biometric feature (e.g., a fingerprint) of the user”); 14:6-7
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`(“a measurement such as a biometric (e.g., a voiceprint, a fingerprint, DNA, a
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`retinal image, a photograph, etc.”). Consistent with the use of the biometric
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`information in the specification, Webster’s Dictionary defines biometric
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`authentication as “[a] method of authentication that requires a biological scan of
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`some sort, such as a retinal scan or voice recognition.” Ex-1119, Webster’s
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`Dictionary, 65. Similarly, Microsoft Computer Dictionary defines biometrics as
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`“the science of measuring and analyzing human biological characteristics. In
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`computer technology, biometrics relates to authentication and security techniques
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`that rely on measurable, individual biological stamps to recognize or verify an
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`individual's identity. For example, fingerprints, handprints, or voice-recognition
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`might be used to enable access to a computer, to a room, or to an electronic
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`commerce account. Ex-1120, Microsoft Computer Dictionary, 50. Ex-1102,
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`Shoup-Decl., ¶41.
`
`B.
`Secret Information
`Under a broadest reasonable interpretation, “secret information” as used in
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`the ’137 patent means “information known and input by an authorized user, such
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`as a PIN, a phrase, a password, or a passcode of the user.” Ex-1102, Shoup-Decl.,
`
`¶42.
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`- 16 -
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`This construction is consistent with the specification and claims. For
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`example, the specification describes secret information as “known by the user” that
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`may comprise “a pin, a phrase, a password, etc.” Ex-1101, ’137 patent, 14:1-7,
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`44:54-61. The secret information is part of the claimed authentication process.
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`See, e.g., id., claim 12 (“a first processor programmed to: 1) authenticate a user of
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`the first device based on secret information…”). Moreover, the secret information
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`is input by a user via the user interface as part of the first authentication process.
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`Id., 14:8-10. Ex-1102, Shoup-Decl., ¶43.
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`That the information is known and input by an authorized user is consistent
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`with the overall purpose of the invention, which is to provide an identification
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`system “that will enable a person to be accurately identified…and/or authenticated
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`without compromising security, to gain access to secure systems and/or areas.”
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`Ex-1101, ’137 patent, 3:66-4:7 (Summary of the Invention). If the information
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`were known and used by others, then the security of the system would be
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`compromised. Ex-1102, Shoup-Decl., ¶44.
`
`C. Authentication Information
`Under the broadest reasonable interpretation claim construction standard,
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`“authentication information” as used in the ’137 patent means “information used
`
`by the system to verify the identity of an individual.” Ex-1102, Shoup-Decl., ¶45.
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`- 17 -
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`
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`Petition for Inter Partes Review
`of U.S. Patent No. 9,530,137
`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-1101, ’137 patent, 3:66-4:43 (“There is
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`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 without compromising security, to gain
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`access to secure systems and/or areas.”); see also id., 1:50 (“selectively granting
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`privileges and providing other services in response to such
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`identifications/verifications”); 4:23-25 (“The system or database of the invention
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`may be used to identify the person in many situations, and thus may take the place
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`of multiple conventional forms of identification.”); 5:20-21 (“Another embodiment
`
`of the invention comprises a method of authenticating an identity of a first
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`entity.”). See Ex-1102, Shoup-Decl., ¶46.
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`The claimed invention centers around the “acts of receiving authenti
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