Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 9
` Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00813
`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 9
` Entered: October 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00813
`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
`
`
`
`IPR2018-00813
`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. 1101, “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. 1101, (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 grounds of unpatentability for the challenged
`claims rely on the following references:
`June 17, 2004
`Jakobsson
`WO 2004/051585 A2
`Maritzen
`US 2004/0236632 A1 Nov. 25, 2004
`Gullman
`US 5,280,527
`Jan. 18, 1994
`Verbauwhede WO 2005/001751 A1
`Jan. 6, 2005
`
`Ex. 1104
`Ex. 1105
`Ex. 1106
`Ex. 1107
`
`Petitioner also relies on the Declaration of Dr. Victor Shoup
`(Ex. 1102).
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26,
`27, 30, 31, and 34 of the ’826 patent on the following grounds:
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`Reference(s)
`Jakobsson
`
`Jakobsson, Verbauwhede, and
`Maritzen
`Jakobsson and Gullman
`
`
`
`Basis
`§ 102
`
`§ 103
`
`§ 103
`
`Claims Challenged
`1, 2, 10, 11, 21, 22, 24,
`27, 30, and 31
`7, 14, 26, and 34
`
`8 and 15
`
`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. 1102 ¶¶ 26–28). 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
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`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).
`Petitioner proposes constructions for certain claim terms. Pet. 12–15.
`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 Anticipation by Jakobsson
`Petitioner contends claims 1, 2, 10, 11, 21, 22, 24, 27, 30, and 31 are
`anticipated by Jakobsson. Pet. 19–55. 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 anticipation and an overview of the
`prior art reference relied on by Petitioner, and then we address Petitioner’s
`contentions.
`
`1.
`
`Principles of Law
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
`
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`(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
`invention, the prior art reference—in order to anticipate under 35 U.S.C.
`§ 102—must not only disclose all elements of the claim within the four
`corners of the document, but must also disclose those elements ‘arranged as
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`(Fed. Cir. 2008). Whether a reference anticipates is assessed from the
`perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
`Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive
`question regarding anticipation [i]s whether one skilled in the art would
`reasonably understand or infer from the [prior art reference’s] teaching that
`every claim element was disclosed in that single reference.”).
`
`2.
`
`Overview of Jakobsson
`Jakobsson is a published international patent application directed to an
`identity-authentication system. Ex. 1104. 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.
`
`3.
`
`Independent Claim 1
`
`Preamble
`a)
`Petitioner contends that Jakobsson satisfies the preamble of claim 1
`because it discloses “a system for authenticating a large number of users.”
`Pet. 19–20 (citing Ex. 1102 ¶¶ 49–51; Ex. 1104 ¶¶ 29, 37, 38, 40).
`
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`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 Jakobsson discloses handheld user authentication device 120 (i.e., the
`claimed first handheld device) that includes a microprocessor (i.e., the
`claimed first processor). Id. at 20–21 (citing Ex. 1102 ¶ 53; Ex. 1104 ¶ 41).
`Petitioner further contends that Jakobsson discloses that the first handheld
`device is programmed to authenticate a user based on information supplied
`by the user including a PIN, a password, or biometric information (i.e., the
`claimed authentication information). Id. at 21 (citing Ex. 1102 ¶ 54; Ex.
`1104 ¶ 59).
`
`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 Jakobsson’s user authentication
`device 120 is configured to receive biometric information biometric
`information (i.e., the claimed first biometric information) from user 110. Id.
`at 21–22 (citing Ex. 1102 ¶ 57; Ex. 1104 ¶¶ 40, 41). Petitioner also argues
`that Jakobsson’s user authentication device 120 is configured to retrieve
`biometric information of user 110 because one of ordinary skill in the art
`“would have understood that the user authentication device must retrieve a
`stored biometric value from memory in order to conduct authentication
`based on the biometric information.” Id. at 23 (citing Ex. 1102 ¶ 58; Ex.
`1104 ¶ 59).
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`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
`Jakobsson’s user authentication device 120 includes a wireless transceiver
`that corresponds to the claimed first wireless transceiver coupled to the first
`processor. Id. at 24 (citing Ex. 1102 ¶ 61; Ex. 1104 ¶ 45, Fig. 1). Dr. Shoup
`testifies that one of ordinary skill in the art “would have understood that an
`electronic device with wireless communications capability includes a
`wireless transceiver coupled to a processor.” Ex. 1102 ¶ 61. According to
`Petitioner, Jakobsson further discloses that user authentication device 120
`generates an authentication code (i.e., the claimed first wireless signal
`including first authentication information of the user of the first handheld
`device) that is transmitted through communications network 140 via
`communications channel 170 to verifier 105, and thus via a network. Pet.
`24–26 (citing Ex. 1102 ¶ 62; Ex. 1104 ¶¶ 43, 44, 48, 112).
`
`Limitation 1[d]
`e)
`Claim 1 further recites “a second device including: a second
`processor.” According to Petitioner, Jakobsson discloses verifier 105 that
`corresponds to a second device including a second processor. Id. at 26
`(citing Ex. 1102 ¶ 65; Ex. 1104 ¶ 38, Fig. 1).
`
`Limitation 1[e]
`f)
`Claim 1 further recites that the second device includes “a second
`wireless transceiver coupled to the second processor.” Petitioner contends
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`that Jakobsson’s communications channel 170 is coupled to the processor of
`verifier 105 and corresponds to the claimed second wireless transceiver. Id.
`at 27 (citing Ex. 1102 ¶ 68; Ex. 1104 ¶ 48).
`
`Limitation 1[f]
`g)
`Claim 1 further recites that the second device includes “a second
`memory coupled to the second processor.” According to Petitioner,
`Jakobsson discloses that the processor of verifier 105 is coupled to memory.
`Id. at 28 (citing Ex. 1102 ¶ 73; Ex. 1104 ¶ 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.” First, Petitioner contends that Jakobsson discloses
`that verifier 105 is configured to retrieve or receive Authentication Code A1V
`(i.e., the claimed second authentication information) for comparison with
`Authentication Code AD (i.e., the claimed first authentication information).
`Id. at 29–31 (citing Ex. 1102 ¶ 74; Ex. 1104 ¶¶ 38, 50, 58, 118). Second,
`Petitioner contends that Jakobsson discloses that verifier 105 is configured
`to authenticate a plurality of users such that verifier 105 retrieves or receives
`respective second authentication information for a first plurality of users,
`wherein the first plurality of users includes the user of the first handheld
`device. Id. at 31 (citing Ex. 1102 ¶ 75; Ex. 1104 ¶¶ 37, 38).
`
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`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 Jakobsson discloses that user
`authentication device 120 derives authentication code 290 (i.e., the claimed
`first authentication information) from User Data (P) (i.e., the claimed first
`biometric information). Id. at 32–33 (citing Ex. 1102 ¶ 78; Ex. 1104 ¶ 72,
`Fig. 2).
`
`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 Jakobsson
`discloses that the processor of user authentication device 120 is programmed
`to transmit authentication code 290 to verifier 105 (i.e., the claimed second
`device). Id. at 33–35 (citing Ex. 1102 ¶ 81; Ex. 1104 ¶¶ 44, 48, 118, Fig. 1).
`
`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 the processor of Jakobsson’s
`verifier 105 is configured to receive an authentication code that corresponds
`to the claimed first authentication information of the user of the first
`handheld device. Id. at 35 (citing Ex. 1102 ¶ 84; Ex. 1104 ¶¶ 21, 118).
`
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`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 Jakobsson discloses limitation 1[k].
`Id. at 36 (citing Ex. 1102 ¶ 86).
`
`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 Jakobsson discloses
`that verifier 105 is configured to compare the received Authentication Code
`AD (i.e., the claimed first authentication information) with the generated
`Authentication Code A1V (i.e., the claimed second authentication
`information) to authenticate user 110 with the verifier. Id. at 36–37 (citing
`Ex. 1102 ¶ 89; Ex. 1104 ¶¶ 50, 118).
`
`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 Jakobsson anticipates claim 1. At this
`stage of the proceeding, we find persuasive Petitioner’s contentions as to
`how Jakobsson teaches each limitation in claim 1.
`
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`4.
`
`Independent claims 10, 21, 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. 1101, 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. 40–41.
`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. 1101, 44:24–58 with id. at 46:21–57. For most of the
`limitations recited in claim 21, Petitioner primarily relies on arguments
`discussed above with respect to claim 1. Pet. 42–47. Claim 21, however,
`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. 1101, 46:49–57. For this limitation, Petitioner contends that Jakobsson
`discloses that the processor of verifier 105 stores User Data (P), which
`includes biometric data (i.e., the claimed second biometric information) for a
`large number of users (i.e., the claimed first plurality of users) and generates
`an authentication code by using stored User Data (P) as an input to
`combination function 230, and one of ordinary skill in the art would have
`understood that User Data (P) must be retrieved from memory to facilitate
`its input to combination function 230. Pet. 44–45 (citing Ex. 1102 ¶ 131).
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`Petitioner also contends Jakobsson discloses that communications
`channel 170 (i.e., the claimed second wireless transceiver) is coupled to the
`processor of verifier 105 can receive the second biometric information with
`the second wireless transceiver such that the processor receives the second
`biometric information with the transceiver. Id. at 45 (citing Ex. 1102 ¶ 132;
`Ex. 1104 ¶ 48). According to Petitioner, one of ordinary skill in the art
`would have understood that User Data (P) could be stored on a “different”
`computer, and verifier 105 could be configured to retrieve or receive the data
`from the “different” computer with communications channel 170. Id. at 46
`(citing Ex. 1102 ¶ 134).
`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. 1101, 44:24–58 with id. at
`47:29–48:13. Petitioner relies on the arguments discussed above with
`respect to claim 1 except for two limitations. Pet. 52–55.
`The first exception is the claim 30 limitation, which Petitioner refers
`to as limitation 30[a], that recites “authenticating, with a first handheld
`device, a first user of the first handheld device based on first biometric
`information provided by the first user.” Ex. 1101, 47:31–33. Petitioner
`contends that Jakobsson discloses that authentication device 120
`authenticates user 110 based on biometric information provided by the user.
`Pet. 52–53 (citing Ex. 1102 ¶ 150; Ex. 1104 ¶ 59).
`The second 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
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`including first authentication information of the first user derived from the
`first biometric information.” Ex. 1101, 47:34–48:2. First, Petitioner argues
`that “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,” as discussed in the sections of
`the Petition discussing limitations 1[c] and 1[h]. Pet. 53 (citing Ex. 1102
`¶ 153). Second, Petitioner argues that “Jakobsson discloses that user
`authentication device 120 transmits an authentication code in response to
`authenticating the user.” Id. at 54 (citing Ex. 1102 ¶ 154; Ex. 1104 ¶ 59).
`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.
`
`5.
`
`Dependent Claims 2, 11, 22, 24, 27, and 31
`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 Jakobsson indicating where in the reference
`the limitations of claims 2, 11, 22, 24, 27, and 31 are disclosed. Pet. 37–39,
`41–42, 47–52, 55. For purposes of this Decision, we adopt Petitioner’s
`analyses of claims 2, 11, 22, 24, 27, and 31 as our own.
`
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`D. Asserted Obviousness based on Jakobsson,
`Verbauwhede, and Maritzen
`Petitioner contends claims 7, 14, 26, and 34 are obvious over
`Jakobsson, Verbauwhede, and Maritzen. Pet. 55–67.
`
`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
`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.
`
`Discussion
`Claims 7, 14, 26, and 34 depend from claims 1, 10, 21, and 30,
`respectively. Dependent claim 7 recites “wherein the first processor is
`further configured to: compare stored authentication information with the
`
`
`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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`17
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`IPR2018-00813
`Patent 9,100,826 B2
`
`
`authentication information of the user of the first handheld device; and
`enable or disable use of the first handheld device based on a result of the
`comparison.” Ex. 1101, 45:15–20. Dependent claims 14, 26, and 34 recite
`similar limitations. Id. at 45:60–64, 47:7–12, 48:24–28.
`Petitioner argues that Jakobsson in view of Verbauwhede and
`Maritzen discloses claim 7. Pet. 55 (citing Ex. 1102 ¶ 163). In particular,
`Petitioner contends Jakobsson discloses that user authentication device 120
`(i.e., the claimed first handheld device) is programmed to authenticate a user
`based on a PIN, password, or biometric information supplied by the user
`(i.e., the claimed authentication information of the user) and to store the
`PIN, password, or biometric information (i.e., the claimed stored
`authentication information). Id. at 55–56 (citing Ex. 1102 ¶ 164; Ex. 1104
`¶¶ 59, 110, 111). In addition, “[t]o the extent that Jakobsson does not
`expressly state that the first device compares stored authentication
`information with the authentication information of the user,” Petitioner
`argues that Verbauwhede discloses a microcontroller of thumbpod 200 (i.e.,
`the claimed first processor) configured to compare a stored fingerprint
`template (i.e., the claimed stored authentication information) with a received
`fingerprint (i.e., the claimed authentication information of the user of the
`first handheld device) to authenticate a user. Id. at 57–58 (citing Ex. 1102
`¶ 165; Ex. 1107 ¶¶ 6, 63, 86).
`Petitioner further argues that Jakobsson recognizes that access to user
`authentication device 120 can be limited or denied based on the
`authentication of a user using a PIN, passcode, or biometric information. Id.
`at 58–59 (citing Ex. 1102 ¶ 166; Ex. 1104 ¶¶ 3, 4, 5). In addition, “[t]o the
`
`
`
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`18
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`IPR2018-00813
`Patent 9,100,826 B2
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`
`extent that Jakobsson does not expressly disclose that the first processor is
`configured to enable or disable use of the first handheld device based on the
`result of an authentication,” Petitioner argues that Maritzen discloses CPU
`210 (i.e., the claimed first processor) configured to unlock the personal
`transaction device (PTD) and limit access to authorized users (i.e., enable or
`disable the first handheld device) based on the result of a biometric
`comparison. Id. at 59–60 (citing Ex. 1102 ¶ 167; Ex. 1105 ¶¶ 63, 65, 67,
`72).
`
`Petitioner argues that “[i]t would have been obvious to a [person
`having ordinary skill in the art] to combine Verbauwhede’s comparison-
`based authentication and Maritzen’s device unlocking function with the
`teachings of Jakobsson” because the references “are in the same field of
`endeavor, address the same issues, and have the same basic structures and
`functions.” Id. at 60–66 (citing Ex. 1102 ¶¶ 169–176).
`Petitioner’s arguments regarding claims 14, 26, and 34 refer back to
`their contentions regarding claim 7. Id. at 66–67.
`At this stage of the proceeding, and for purposes of this Decision, we
`adopt Petitioner’s analyses of claims 7, 14, 26, and 34 as our own.
`E. Asserted Obviousness based on Jakobsson and Gullman
`Petitioner contends claims 8 and 15 are obvious over Jakobsson and
`Gullman. Pet. 67–74.
`Claims 8 and 15 depend from claims 1 and 10, respectively.
`Dependent claim 8 recites “wherein the first handheld device includes a first
`memory coupled to the first processor included in the first handheld device
`
`
`
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`19
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`IPR2018-00813
`Patent 9,100,826 B2
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`
`and configured to store respective biometric information for a second
`plurality of users.” Ex. 1101, 45:21–25. Dependent claim 15 recites similar
`limitations. Id. at 45:65–67.
`Petitioner argues that Jakobsson in view of Gullman discloses claim 8.
`Pet. 68 (citing Ex. 1102 ¶ 184). In particular, Petitioner contends Jakobsson
`discloses that user authentication device 120 (i.e., the claimed first handheld
`device) includes an on-board memory coupled to a microprocessor (i.e., the
`claimed first memory coupled to the first processor). Id. at 68 (citing Ex.
`1102 ¶ 185; Ex. 1104 ¶ 41). Petitioner further contends Jakobsson discloses
`that user authentication device 120 is configured to store biometric
`information. Id. at 69 (citing Ex. 1102 ¶ 186; Ex. 1104 ¶ 110).
`Next, Petitioner contends that “[a]lthough Jakobsson does not
`expressly disclose that the first device is configured to store biometric
`information for a second plurality of users,” Gullman discloses that security
`apparatus 14 (i.e., the claimed first device) stores biometric templates (i.e.,
`the claimed biometric information) for multiple users. Id. (citing Ex. 1102
`¶ 187; Ex. 1106, 5:55–65).
`Petitioner argues that “[i]t would have been obvious to combine
`Gullman’s biometric storage for multiple users with Jakobsson” because the
`references “are in the same field of endeavor, address the same issues, and
`have the same basic structures and functions.” Id. at 70–74 (citing Ex. 1102
`¶¶ 189–195).
`Petitioner’s arguments regarding claim 15 refer back to their
`contentions regarding claim 8. Id. at 74.
`
`
`
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`20
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`IPR2018-00813
`Patent 9,100,826 B2
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`
`
`At this stage of the proceeding, and for purposes of this Decision, we
`adopt Petitioner’s analyses of claims 7, 14, 26, 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, a
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