Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 8
` 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 IPR2018-00810
`Patent 9,100,826 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
` Paper 8
` 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 IPR2018-00810
`Patent 9,100,826 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2018-00810
`Patent 9,100,826 B2
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`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting
`an inter partes review of claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27,
`30, 31, and 34 of U.S. Patent No. 9,100,826 B2 (Ex. 1001, “the
`’826 patent”). Universal Secure Registry, LLC (“Patent Owner”) did not file
`a Preliminary Response. We have authority under 35 U.S.C. § 314 and
`37 C.F.R. § 42.4(a).
`To institute an inter partes review, we must determine that the
`information presented in the Petition shows “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). On April 24, 2018, the Supreme Court
`held that a decision to institute under 35 U.S.C. § 314 may not institute on
`less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138
`S. Ct. 1348, 1359–60 (2018). Upon consideration of the Petition and for the
`reasons set forth below, we conclude that the information presented in the
`Petition establishes a reasonable likelihood that Petitioner would prevail in
`challenging at least one claim of the ’826 patent. Accordingly, an inter
`partes review of all of the claims and all of the grounds presented in the
`Petition is hereby instituted.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
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`II. BACKGROUND
`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. 2–4; Paper 7, 2 (Patent Owner’s Updated
`Mandatory Notices).
`
`B. The ’826 patent
`The ’826 patent, titled “METHOD AND APPARATUS FOR
`SECURE ACCESS PAYMENT AND IDENTIFICATION,” issued August
`4, 2015, with claims 1–35. Ex. 1001, (54), (45), 44:24–48:34. The ’826
`patent is directed to 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
`3:63–67. The ’826 patent states that the USR database is designed to “take
`the place of multiple conventional forms of identification.” Id. at 4:10–12.
`The ’826 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 13:52–58, 14:5–23, 43:52–59, 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.
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`See id. at 28:52–29:7. The second device may verify the user’s information
`and return an enablement signal to the first device. Id. at 32:43–56.
`Accordingly, the ’826 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 3:63–4:3.
`C. Challenged Claims
`As noted above, Petitioner challenges claims 1, 2, 7, 8, 10, 11, 14, 15,
`21, 22, 24, 26, 27, 30, 31, and 34 of the ’826 patent. Claims 1, 10, 21, and
`30 are independent. Independent claim 1 is illustrative of the claimed
`subject matter and is reproduced below:
`1.
`A system for authenticating identities of a plurality
`of users, the system comprising:
`a first handheld device including:
`a first processor, the processor programmed to
`authenticate a user of the first handheld device based on
`authentication information and to retrieve or receive first
`biometric information of the user of the first handheld
`device; and
`a first wireless transceiver coupled to the first
`processor and programmed to transmit via a network a first
`wireless signal including first authentication information
`of the user of the first handheld device; and
`a second device including:
`a second processor;
`a second wireless transceiver coupled to the second
`processor, and
`a second memory coupled to the second processor,
`
`and
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`wherein the second device is configured to retrieve or
`receive respective second authentication information for a first
`plurality of users, wherein the first plurality of users includes the
`user of the first handheld device;
`wherein the first processor is programmed to determine
`the first authentication information derived from the first
`biometric information and to transmit the first authentication
`information of the user of the first handheld device to the second
`device via the network,
`wherein the second processor is configured to:
`receive the first authentication information of the user of
`the first handheld device;
`retrieve or receive the second authentication information
`of the user of the first handheld device; and
`use the first authentication information and the second
`authentication information to authenticate an identity of the user
`of the first handheld device with the second device.
`Id. at 44:24–58.
`
`D. The Prior Art
`Petitioner’s asserted ground of unpatentability for the challenged
`claims relies on the following references:
`Maritzen
`US 2004/0236632 A1 Nov. 25, 2004
`Jakobsson
`WO 2004/051585 A2
`June 17, 2004
`Niwa
`US 6,453,301 B1
`Sept. 17, 2002
`
`Ex. 1004
`Ex. 1005
`Ex. 1007
`
`Petitioner also relies on the Declaration of Dr. Victor Shoup
`(Ex. 1002).
`
`E. Asserted Ground of Unpatentability
`Petitioner asserts that claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26,
`27, 30, 31, and 34 of the ’826 patent are unpatentable under 35 U.S.C. § 103
`over Maritzen, Jakobsson, and Niwa. Pet. 9, 18–75.
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`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art to
`which the ’826 patent pertains
`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,
`though
`additional education can substitute for
`less work
`experience and vice versa.
`Id. at 4–5 (citing Ex. 1002 ¶¶ 21–23). We find, based on our review of the
`record before us, that Petitioner’s stated level of ordinary skill in the art is
`reasonable because it appears consistent with the evidence at this stage of
`the proceeding, including the asserted prior art. Accordingly, for the
`purposes of this Decision, we adopt Petitioner’s definition.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (concluding that
`37 C.F.R. § 42.100(b) “represents a reasonable exercise of the rulemaking
`authority that Congress delegated to the Patent Office”). “Under a broadest
`reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification and
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
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`Petitioner proposes constructions for certain claim terms. Pet. 13–15.
`We determine that for the purposes of this Decision, however, it is
`unnecessary to expressly construe any claim term. 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).
`C. Asserted Obviousness based on Maritzen, Jakobsson, and Niwa
`Petitioner contends claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27,
`30, 31, and 34 are obvious over Maritzen, Jakobsson, and Niwa. Pet. 9, 18–
`75. For reasons that follow, we determine that the information presented in
`the Petition demonstrates a reasonable likelihood of prevailing with respect
`to at least one of the challenged claims. We begin our analysis with the
`principles of law that generally apply to a ground based on obviousness and
`overviews of the prior art references relied on by Petitioner, and then we
`address Petitioner’s contentions.
`
`1.
`
`Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when available, secondary
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`considerations, such as commercial success, long felt but unsolved needs,
`and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We analyze this ground based on obviousness in accordance with the above-
`stated principles.1
`
`2.
`
`Overview of 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. 1004, Abstract. In
`one embodiment, Maritzen discloses a financial transaction system in which
`PTD 100 communicates with VAPGT 120 via communication link 150. Id.
`¶ 38, Fig. 1. In addition, VAPGT 120 communicates with clearing house
`130 via communication link 170. Id. ¶ 39, Fig. 1.
`
`3.
`
`Overview of Jakobsson
`Jakobsson is a published international patent application directed to an
`identity-authentication system. Ex. 1005. In certain embodiments of
`Jakobsson’s system, a user is first authenticated on a user device using a PIN
`or biometric information; the user device then sends information to a remote
`verifier including user authentication, PIN, biometric data, and a time-
`varying code, so that the remote system may verify the information and
`return a signal to the user device. Id. ¶¶ 50, 59.
`
`
`1 We address the level of ordinary skill in the art in Section III.A., supra.
`The record does not include any evidence of secondary considerations at this
`point in the proceeding.
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`4.
`
`Overview of Niwa
`Niwa discloses “a method and system for authorizing a transaction
`between two parties over a network . . . when an authorization code has been
`received by an authorizing entity.” Ex. 1007, 1:8–12. The authorization
`code can be “produced by a fingerprint identification device in response to
`comparing a fingerprint of one of the parties to a stored fingerprint in the
`device.” Id. at 1:12–15.
`
`5.
`
`Independent Claim 1
`
`Preamble
`a)
`Petitioner contends that Maritzen satisfies the preamble of claim 1
`because it discloses “a system for authenticating identities of a plurality of
`users.” Pet. 18–19 (citing Ex. 1002 ¶¶ 45–47; Ex. 1004 ¶¶ 11, 38, 43, 44,
`72).
`
`Limitation 1[a]
`b)
`Claim 1 further recites “a first handheld device including: a first
`processor, the processor programmed to authenticate a user of the first
`handheld device based on authentication information.” Petitioner contends
`that Maritzen’s personal transaction device (PTD) 100 is a first handheld
`device that includes a first processor in the form of CPU 210. Id. at 20
`(citing Ex. 1002 ¶ 49; Ex. 1004 ¶ 63). Petitioner also argues that CPU 210 is
`programmed to authenticate a user of the PTD with biometric information
`(i.e., the claimed authentication information) using biometric control
`manager 330. Id. at 20–21 (citing Ex. 1002 ¶ 50; Ex. 1004 ¶¶ 38, 44, 63, 65,
`67, 72).
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`Limitation 1[b]
`c)
`Claim 1 further recites that the first processor is programmed “to
`retrieve or receive first biometric information of the user of the first
`handheld device.” Petitioner asserts that the combination of Maritzen and
`Niwa discloses this limitation. Id. at 21 (citing Ex. 1002 ¶ 52). Specifically,
`Petitioner argues that Maritzen’s CPU 210 is programmed to receive
`biometric information, such as a fingerprint or thumbprint, from a user via
`biometric input 630/660 of an integrated privacy card. Id. at 22–23 (citing
`Ex. 1002 ¶ 53; Ex. 1004 ¶¶ 39, 76, 63, 88). Petitioner also argues that
`Maritzen’s CPU 210 is configured to retrieve biometric information because
`one of ordinary skill in the art “would have understood that the PTD must
`retrieve a stored biometric value from memory in order to conduct a
`validation of the biometric information.” Id. at 23 (citing Ex. 1002 ¶ 54; Ex.
`1004 ¶ 44).
`In addition, Petitioner relies on Niwa “[t]o the extent that Maritzen
`does not expressly disclose retrieving stored biometric information.” Id. at
`23–24 (citing Ex. 1002 ¶ 55; Ex. 1007, Abstract). Petitioner argues that “[i]t
`would have been obvious to apply the retrieval of stored biometric
`information, as taught by Niwa, to the teachings of Maritzen to arrive at
`limitation 1[b]” for three reasons. Id. at 24–25. First, Petitioner asserts that
`“Niwa’s teachings regarding a suitable biometric control device are part of
`the specification of Maritzen” because “Niwa . . . issued from an application
`expressly incorporated by reference in Maritzen.” Id. (citing Ex. 1002 ¶ 58;
`Ex. 1004 ¶ 43). Second, Petitioner asserts that combining Niwa with the
`teachings of Maritzen would have involved nothing more than the use of a
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`known technique to improve similar devices in the same way. Id. at 25
`(citing Ex. 1002 ¶ 59). Third, Second, Petitioner asserts that combining
`Niwa with the teachings of Maritzen would have involved nothing more than
`applying a known device to a known device to yield predictable results. Id.
`(citing Ex. 1002 ¶ 60).
`
`Limitation 1[c]
`d)
`Claim 1 further recites that the first handheld device includes “a first
`wireless transceiver coupled to the first processor and programmed to
`transmit via a network a first wireless signal including first authentication
`information of the user of the first handheld device.” Petitioner asserts that
`Maritzen discloses the processor of PTD 100 (i.e., the claimed first
`processor) “is coupled to a wireless transmission link 150 and configured to
`transmit using a wireless communication standard” and one of ordinary skill
`in the art would have understood that this processor is coupled to a wireless
`transceiver to communicate wirelessly via communication link 150. Id. at
`26 (citing Ex. 1002 ¶ 63; Ex. 1004 ¶¶ 38, 40). Petitioner further asserts that
`Maritzen discloses that the PTD is configured to transmit a biometric key via
`a network, wherein the biometric key corresponds to a first wireless signal
`including first authentication information of the user. Id. at 27–28 (citing
`Ex. 1002 ¶ 64; Ex. 1004 ¶¶ 45, 46, 64).
`
`Limitation 1[d]
`e)
`Claim 1 further recites “a second device including: a second
`processor.” According to Petitioner, Maritzen discloses clearing house 130
`including programmable CPU 810 that correspond to a second device having
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`a second processor. Id. at 28–29 (citing Ex. 1002 ¶ 67; Ex. 1004 ¶¶ 39, 78,
`Fig. 8).
`
`Limitation 1[e]
`f)
`Claim 1 further recites that the second device includes “a second
`wireless transceiver coupled to the second processor.” Petitioner contends
`that Maritzen’s CPU 810 is coupled to a wireless network interface, which
`corresponds to the claimed second wireless transceiver. Id. at 29–30 (citing
`Ex. 1002 ¶ 70; Ex. 1004 ¶¶ 40, 79).
`
`Limitation 1[f]
`g)
`Claim 1 further recites that the second device includes “a second
`memory coupled to the second processor.” According to Petitioner,
`Maritzen discloses non-volatile memory 840 that corresponds to the claimed
`second memory. Id. at 30–31 (citing Ex. 1002 ¶ 73; Ex. 1004 ¶ 78).
`
`Limitation 1[g]
`h)
`Claim 1 further recites “wherein the second device is configured to
`retrieve or receive respective second authentication information for a first
`plurality of users, wherein the first plurality of users includes the user of the
`first handheld device.” Petitioner contends that Maritzen in view of
`Jakobsson discloses this limitation. Id. at 31 (citing Ex. 1002 ¶ 75).
`In particular, Petitioner contends that Maritzen’s clearing house 130
`(i.e., the claimed second device) is configured to retrieve or receive a known
`pre-established biometric key 950 for a number of users that include users of
`the PTD, where biometric key 950 corresponds to the claimed second
`authentication information. Id. at 31–32 (citing Ex. 1002 ¶ 76; Ex. 1004
`
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`¶¶ 48, 80, 85). Petitioner further contends that biometric key 950 is
`accessible to CPU 810 via clearing house bus 850 such that one of ordinary
`skill in the art would have understood the CPU could retrieve or receive
`biometric key 950 from a separate server. Id. at 33 (citing Ex. 1002 ¶ 77;
`Ex. 1004 ¶¶ 78, 80).
`Moreover, Petitioner relies on Jakobsson “[t]o the extent that Maritzen
`does not expressly disclose a second device configured to receive second
`authentication information.” Id. at 33–34 (citing Ex. 1002 ¶ 78; Ex. 1005
`¶ 38). Petitioner argues that “[i]t would have been obvious to a [person
`having ordinary skill in the art] to combine the distributed system of
`Jakobsson with the teachings of Maritzen and Niwa to arrive at limitation
`1[g].” Id. at 34 (citing Ex. 1002 ¶ 80). According to Petitioner, “it would
`have been obvious to combine Jakobsson with Maritzen and Niwa because
`they are in the same field of endeavor, address the same issues, and have the
`same basic structures and functions.” Id. at 39 (citing Ex. 1002 ¶ 85).
`
`Limitation 1[h]
`i)
`Claim 1 further recites “wherein the first processor is programmed to
`determine the first authentication information derived from the first
`biometric information.” Petitioner contends that Maritzen in view of
`Jakobsson discloses this limitation. Id. at 40 (citing Ex. 1002 ¶ 87).
`According to Petitioner, Maritzen discloses that CPU 210 (i.e., the claimed
`first processor) is programmed to determine a biometric key (i.e., the first
`authentication information). Id. (citing Ex. 1002 ¶ 88; Ex. 1004 ¶¶ 39, 44,
`63). Petitioner then argues Maritzen discloses that the biometric key is
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`derived based on a validation of biometric information. Id. at 40–41 (citing
`Ex. 1002 ¶ 89; Ex. 1004 ¶ 88).
`In addition, Petitioner relies on Jakobsson “[t]o the extent that
`Maritzen does not expressly disclose that the biometric key . . . is derived
`from the first biometric information.” Id. at 41–42 (citing Ex. 1002 ¶ 90;
`Ex. 1005 ¶¶ 60, 64, 72). Petitioner argues that “[i]t would have been
`obvious to a [person having ordinary skill in the art] to combine the
`combination function of Jakobsson with the teachings of Maritzen and Niwa
`to arrive at limitation 1[h].” Id. at 42 (citing Ex. 1002 ¶ 92). According to
`Petitioner, based on the teachings of Maritzen and Jakobsson, one of
`ordinary skill in the art “would have understood that it was desirable to deter
`third party replication and to improve security by deriving authentication
`codes from biometric information and would have been motivated to look to
`similar references like Jakobsson for a solution.” Id. at 43–44 (citing Ex.
`1002 ¶ 93; Ex. 1004 ¶¶ 45; Ex. 1005 ¶¶ 5, 43, 72). Petitioner also asserts
`that combining Jakobsson’s combination function with Maritzen and Niwa
`would merely involve applying a known technique to a known device to
`yield predictable results. Id. at 44 (citing Ex. 1002 ¶ 94).
`
`Limitation 1[i]
`j)
`Claim 1 further recites that the first processor is programmed “to
`transmit the first authentication information of the user of the first handheld
`device to the second device via the network.” Petitioner contends that
`Maritzen’s CPU 210 is configured to transmit the biometric key via a
`network to clearing house 130 (i.e., the claimed second device) in a
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`transaction request. Id. at 46–47 (citing Ex. 1002 ¶ 98; Ex. 1004 ¶¶ 40, 45,
`46).
`
`Limitation 1[j]
`k)
`Claim 1 further recites “wherein the second processor is configured
`to: receive the first authentication information of the user of the first
`handheld device.” Petitioner contends that Maritzen’s CPU 810 is
`configured to receive the biometric key (i.e., the claimed first authentication
`information of the user of the first handheld device) from the vehicle-
`accessed, payment-gateway terminal (VAPGT). Id. at 47 (citing Ex. 1002
`¶ 101; Ex. 1004 ¶¶ 45, 78).
`
`Limitation 1[k]
`l)
`Claim 1 further recites that the second processor is configured to
`“retrieve or receive the second authentication information of the user of the
`first handheld device.” Referencing the section of the Petition discussing
`limitation 1[g], Petitioner contends that Maritzen discloses limitation 1[k].
`Id. at 48 (citing Ex. 1002 ¶ 105).
`
`Limitation 1[l]
`m)
`Claim 1 further recites that the second processor is configured to “use
`the first authentication information and the second authentication
`information to authenticate an identity of the user of the first handheld
`device with the second device.” Petitioner argues that Maritzen discloses
`that clearing house CPU 810 is configured to compare the biometric key
`(i.e., the claimed first authentication information) with pre-established
`biometric key 950 (i.e., the second authentication information) to
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`authenticate the identity of the user. Id. at 48–49 (citing Ex. 1002 ¶ 106; Ex.
`1004 ¶¶ 48–52, 54, 78, 81).
`
`Conclusion
`n)
`After reviewing Petitioner’s arguments and the evidence cited in the
`Petition, we determine that Petitioner has demonstrated a reasonable
`likelihood of success in proving that claim 1 is unpatentable over Maritzen,
`Jakobsson, and Niwa. At this stage of the proceeding, we are persuaded by
`Petitioner’s contentions that Maritzen discloses the limitations of claim 1.
`Regarding limitation 1[b], we note that Petitioner appears to rely on Niwa
`only “[t]o the extent that Maritzen does not expressly disclose retrieving
`stored biometric information.” See id. at 23. On the current record,
`however, we find persuasive Petitioner’s contention that Maritzen discloses
`that CPU 210 is configured to retrieve stored biometric information. See id.
`We also find persuasive Petitioner’s contention that Maritzen discloses that
`CPU 210 is programmed to receive biometric information (see id. at 22) and
`note that limitation 1[b] recites the first processor is programmed to retrieve
`or receive biometric information. Accordingly, we understand this ground
`to not necessarily require the teachings of Niwa to satisfy limitation 1[b]
`and, as such, are not considering the combination of Maritzen and Niwa with
`respect to this limitation for purposes of this Decision.
`Similarly, regarding limitations 1[g] and 1[h], we note that Petitioner
`appears to rely on Jakobsson only to the extent that Maritzen does not
`disclose expressly “a second device configured to receive second
`authentication information” and “that the biometric key . . . is derived from
`the first biometric information.” See id. at 33, 41. On the current record,
`
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`IPR2018-00810
`Patent 9,100,826 B2
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`however, we find persuasive Petitioner’s contentions that Maritzen discloses
`these features. See id. at 31–33, 40–41. Accordingly, we understand this
`ground to not necessarily require the teachings of Jakobsson to satisfy
`limitations 1[g] and 1[h] and, as such, are not considering the combination
`of Maritzen and Jakobsson with respect to these limitations for purposes of
`this Decision.
`
`6.
`
`Independent claims 10, 21, and 30
`Independent claim 10 recites a computer-implemented method of
`authenticating an identity of a first entity having similar limitations as the
`system claim of claim 1. Compare Ex. 1001, 44:24–58 with id. at 45:30–47.
`For its analysis of claim 10, Petitioner refers back to its analysis of claim 1.
`Pet. 56–58.
`Independent claim 21 recites a system for authenticating identities of a
`plurality of users having similar limitations as the system claim of claim 1.
`Compare Ex. 1001, 44:24–58 with id. at 46:21–57. For most of the
`limitations recited in claim 21, Petitioner relies primarily on arguments
`discussed above with respect to claim 1, with minor variations. Pet. 59–65.
`One variation is that claim 21 recites “a second memory coupled to the
`second processor and configured to store respective information for a first
`plurality of users” (Ex. 1001, 46:39–41), while claim 1 recites merely “a
`second memory coupled to the second processor.” Petitioner argues that
`Maritzen’s non-volatile memory 840 (which is coupled to CPU 810)
`corresponds to the claimed second memory, and memory 840 is “configured
`to store user account information 910, user keys 920, user certificates and
`profiles 930, historical transaction events 940, and pre-established biometric
`
`
`
`
`17
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`IPR2018-00810
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`key 950,” which correspond to the claimed respective information for a first
`plurality of users. Pet. 60–61 (citing Ex. 1002 ¶ 158; Ex. 1004 ¶¶ 78, 80).
`Claim 21 further recites that the second processor
`is configured to retrieve second biometric information of
`the user of the first handheld device from stored biometric
`information of the first plurality of users or receive the
`second biometric information with the second wireless
`transceiver so as to authenticate an identity of the first user
`of the first handheld device with the second device using
`the first authentication information and the second
`biometric information.
`Ex. 1001, 46:49–57. Petitioner contends that Maritzen in view of Jakobsson
`discloses this limitation, which Petitioner refers to as limitation 21[i]. Pet.
`62 (citing Ex. 1002 ¶ 164).
`Specifically, Petitioner argues Maritzen discloses that CPU 810 (i.e.,
`the claimed second processor) is coupled to a wireless interface (i.e., the
`claimed second wireless transceiver) and is configured to access user
`information. Id. (citing Ex. 1002 ¶ 165). Petitioner then argues that
`Jakobsson discloses verifier 105 has a processor (i.e., the claimed second
`processor) configured to retrieve second biometric information of the user of
`the first handheld device from stored biometric information of the first
`plurality of users. Id. at 63 (citing Ex. 1002 ¶ 166). Petitioner also argues
`that the processor of verifier 105 is coupled to communications channel 170
`(i.e., the claimed second wireless transceiver) such that the processor
`receives the second biometric information with the transceiver. Id. at 63–64
`(citing Ex. 1002 ¶ 167; Ex. 1005 ¶ 48). Last, Petitioner argues that
`“Maritzen in view of Jakobsson discloses that a second processor uses
`second biometric information to authenticate an identity of the first user of
`
`
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`18
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`the first handheld device with the second device using the first
`authentication information and the second biometric information.” Id. at 65
`(citing Ex. 1002 ¶ 170). Relying on the reasons to combine set forth in
`connection with limitation 1[g], Petitioner argues “[i]t would have been
`obvious to a [person having ordinary skill in the art] to combine the
`distributed system of Jakobsson with the teachings of Maritzen and Niwa to
`arrive at limitation 21[i].” Id. at 65 (citing Ex. 1002 ¶ 174).
`Like claim 10, independent claim 30 recites a method of
`authenticating an identity of a first entity having similar limitations as the
`system claim of claim 1. Compare Ex. 1001, 44:24–58 with id. at 47:29–
`48:13. For all but one of the limitations recited in claim 30, Petitioner relies
`on the arguments discussed above with respect to claim 1. Pet. 72–74.
`The exception is the claim 30 limitation, which Petitioner refers to as
`limitation 30[b], that recites “in response to authenticating the first user of
`the first handheld device, transmitting a first wireless signal including first
`authentication information of the first user derived from the first biometric
`information.” Ex. 1001, 47:34–48:2. First, Petitioner argues that “Maritzen
`in view of Jakobsson discloses a first processor configured to transmit a first
`wireless signal including first authentication information of the first user
`derived from the first biometric information.” Pet. 73 (citing Ex. 1002
`¶ 196). Second, Petitioner argues “Maritzen discloses that the PTD first
`performs a biometric authentication of the user before generating the
`biometric key” (i.e., the claimed first authentication information). Id. (citing
`Ex. 1002 ¶ 197; Ex. 1004 ¶¶ 44, 45, 67, 88).
`
`
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`19
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`At this stage of the proceeding, and for purposes of this Decision, we
`adopt Petitioner’s analyses of claims 10, 21, and 30 as our own.
`
`7.
`
`Dependent Claims 2, 7, 8, 11, 14, 15, 22, 24, 26, 27, 31, and 34
`Because Petitioner has demonstrated a reasonable likelihood of
`success in proving that at least one claim of the ’826 patent is unpatentable,
`we institute on all grounds and all claims raised in the Petition. Therefore, at
`this stage of the proceeding, it is not necessary for us to provide an
`assessment of every ground raised by Petitioner. Nevertheless, we note that
`Petitioner provides detailed explanations supported by the testimony of Dr.
`Shoup and specific citations to the references indicating where in the
`references the limitations of claims 2, 7, 8, 11, 14, 15, 22, 24, 26, 27, 31, and
`34 are disclosed. Pet. 49–56, 58–59, 65–72, 74–75. For purposes of this
`Decision, we adopt Petitioner’s analyses of claims 2, 7, 8, 11, 14, 15, 22, 24,
`26, 27, 31, and 34 as our own.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 of
`the ’826 patent is instituted with respect to all grounds set forth in the
`Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’826 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a tria
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