throbber
Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 1 of 18 PageID #: 5454
`Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 1 of 18 PageID #: 5454
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF DELAWARE
`
`
`UNIVERSAL SECURE REGISTRY LLC,
`
`Plaintiff,
`
`V'
`
`: Civ. N0. 17-585—CFC—SRF
`
`APPLE INC., VISA INC., and VISA U.S.A.,
`
`INC.,
`
`‘
`
`Defendants.
`
`Jack B. Blumenfeld and Jeremy A. Tigan, Morris, Nichols, Arsht & Tunnel] LLP,
`Wilmington, DE. Harold Barza, Tigran Guledjian, Valerie Roddy, and Jordan
`Kaericher, Quinn Emanuel Urquhart & Sullivan, LLP, Los Angeles, CA. Sean Pak
`and Brian E. Mack, Quinn Emanuel Urquhait & Sullivan, LLP, San Francisco, CA.
`Attorneys for Universal Secure Registry LLC.
`
`David E. Moore and Bindu Palapura, Potter Anderson & Corroon LLP, Wilmington,
`DE.
`James C. Yoon, Jamie Y. Otto, and Jacqueline Lyandres, Wilson Sonsini
`Goodrich & Rosati, Palo Alto, CA. Lucy Yen, Wilson Sonsini Goodrich & Rosati,
`New York, NY.
`Ian Liston, Wilson Sonsini Goodrich & Rosati, Wilmington, DE.
`Attorneys for Defendants Visa Inc. and Visa USA, Inc.
`
`Frederick L. Cottrell, III and Jason J. Rawnsley, Richards, Layton & Finger, P.A.,
`Wilmington, DE. Mark D. Selwyn and Liv Herriot, Wilmer Cutler Pickering Hale
`and Dorr LLP, Palo Alto, CA. Monica Grewal, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA. Derek A. Gosma, Wilmer Cutler Pickering Hale and Dorr
`LLP, Los Angeles, CA. Attorneys for Defendant Apple Inc.
`
`MEMORANDUM OPINION
`
`June 30, 2020
`Wilmington, Delaware
`
`APPLE 1014
`
`APPLE 1014
`
`

`

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`Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 2 of 18 PagelD #: 5455
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`CONNOLLY, UNITED STATgS DISTRICT JUDGE
`
`Plaintiff Universal Secure Registiy LLC (USR) has sued Defendants Apple
`
`Inc., Visa Inc., and Visa U.S.A., Inc. for infringement of U.S. Patent Nos.
`
`8,856,539 (the #539 patent), 9,100,826 (the #826 patent), 8,577,813 (the #813
`
`patent), and 9,530,137 (the #137 patent). Defendants moved to dismiss the
`
`Complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) on the grounds
`
`that the asserted patents claim unpatentable subject matter and are therefore invalid
`
`under 35 U.S.C. § 101. D.I. 16. In a Report and Recommendation issued pursuant
`
`to 28 U.S.C. § 636(b), the Magistrate Judge recommended that I deny Defendants’
`
`motion. D.I. 137.
`
`Pending before me are Defendants’ objections to the Magistrate Judge’s
`
`recommendation. D.I. 147.
`
`I have studied the Report and Recommendation, the
`
`objections, Plaintiff’s response to the objections, D]. 150, and the patties’ briefs
`
`filed in support and opposition to the underlying motions, D.I. 17, D.I. 30, BI. 37.
`
`I review the Magistrate Judge’s recommendation de novo. § 636(b)( l ); Fed. R.
`
`Civ. P. 72(b)(3).
`
`I. BACKGROUND
`
`The four asserted patents are directed to the secure authentication (i.e.,
`
`verification) of a person’s identity. In the words of the Complaint: “USR’S
`
`patented innovations allow a user to securely authenticate his or her identity using
`
`2
`
`

`

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`Case 1:17-cv-00585-CFC—SRF Document 167 Filed 06/30/20 Page 3 of 18 PageID #: 5456
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`technology built into a personal electronic device combined with the user’s own
`
`secret and/or biometric information.” D.I. 1 1] 21.
`
`USR alleged in the Complaint that each patent has an “exemplary” claim.
`
`Di. 1 1H} 43, 65, 84, 106. Exemplary claim 22 of the #539 patent provides:
`
`A method for providing information to a provider to enable
`transactions between the provider and entities who have secure data
`stored in a secure registry in which each entity is identified by a time—
`varying multi character code, the method comprising:
`
`receiving a transaction request including at least the time varying
`multicharacter code for an entity on whose behalf a transaction is to
`take place and an indication of the provider
`requesting the
`transaction;
`
`mapping the time-varying multicharacter code to an identity of the
`entity using the time-varying multicharacter code;
`
`determining compliance with any access restrictions for the provider
`to secure data of the entity for completing the transaction based at
`least in part on the indication of the provider and the time—varying
`multicharacter code of the transaction request;
`
`accessing information of the entity required to perform the
`transaction based on the determined compliance with any access
`restrictions for the provider,
`the information including account
`identilying information;
`
`providing the account identifying information to a third party without
`providing the account identifying information to the provider to
`enable or deny the transaction; and
`
`enabling or denying the provider to perform the transaction without
`the provider's knowledge of the account identifying information.
`
`#539 patent at 20:4—31.
`
`Exemplary claim 10 of the #826 patent provides:
`
`

`

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`A computer implemented method of authenticating an identity of a
`first entity, comprising acts of:
`
`authenticating, with a first handheld device, a user of the first
`handheld device as
`the first entity based on authentication
`information;
`
`retrieving or receiving first biometric information of the user of the
`first handheld device;
`
`determining a first authentication information from the first
`biometric information;
`
`receiving with a second device, the first authentication information
`of the first entity wirelessly transmitted from the first handheld
`device;
`
`retrieving or receiving respective second authentication information
`for the user of the first handheld device; and
`
`authenticating the identity of the first entity based upon the first
`authentication
`information and the
`second
`authentication
`
`information.
`
`#826 patent at 45:30—47.
`
`Exemplary claim 1 of the #313 patent, which has been reformatted for
`
`clarity, provides:
`
`An electronic ID device configured to allow a user to select any one
`of a plurality of accounts associated with the user to employ in a
`financial transaction, comprising:
`
`a biometric sensor configured to receive a biometric input provided
`by the user;
`
`a user interface configured to receive a user input including seeret
`information known to the user and identifying information
`concerning an account selected by the user from the plurality of
`
`accounts;
`
`

`

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`a communication interface configured to communicate with a secure
`registry;
`
`a processor coupled to the biometric sensor to receive information
`concerning the biometric input,
`the user
`interface and the
`communication interface,
`
`the processor being programmed to activate the electronic ID
`device based on successful authentication by the electronic ID
`device of at least one of the biometric input and the secret
`information,
`
`the processor also being programmed such that once the
`electronic ID device is activated the processor is configured to
`generate a nonpredictable value and to generate encrypted
`authentication information from the nonpredictable value,
`information associated with at least a portion of the biometric
`input, and the secret
`information, and to communicate the
`encrypted authentication information via the communication
`interface to the secure registry; and
`
`wherein the communication interface is configured to wirelessly
`transmit the encrypted authentication information to a point-of-sale
`(POS) device, and
`
`wherein the secure registry is configured to receive at least a portion
`of the encrypted authentication information from the POS device.
`
`#813 patent at 51:65~29.
`
`Finally, exemplary claim 12 of the #137 patent provides:
`
`A system for authenticating a user for enabling a transaction, the
`system comprising:
`
`a first device including:
`
`a biometric sensor configured to capture a first biometric information
`of the user;
`
`a first processor programmed to: l) authenticate a user of the first
`device based on secret
`information, 2) retrieve or receive first
`
`5
`
`

`

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`Case 1:17-cv-00585-CFC—SRF Document 167 Filed 06/30/20 Page 6 of 18 PageID #: 5459
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`biometric information of the user of the first device, 3) authenticate
`the user of the first device based on the first biometric, and 4)
`generate one or more signals
`including first authentication
`information, an indicator of biometric authentication of the user of
`the first device, and a time varying value; and
`
`a first wireless transceiver coupled to the first processor and
`programmed to wirelessly transmit the one or more signals to a
`second device for processing;
`
`wherein generating the one or more signals occurs responsive to
`valid authentication of the first biometric information; and
`
`wherein the first processor is further programmed to receive an
`enablement signal
`indicating an approved transaction from the
`second device,
`
`wherein the enablement signal is provided from the second device
`based on acceptance of the indicator of biometric authentication and
`use of the first authentication information and use of second
`
`authentication information to enable the transaction.
`
`#137 patent at 46:55-47:14.
`
`Defendants argue that these exemplary claims are directed to an abstract idea
`
`and therefore claim unpatentable subject matter under § 101. The Magistrate Judge
`
`found that the patents are “not directed to an abstract idea because ‘the plain focus
`
`of the claims is on an improvement to computer functionality, not on economic or
`
`other tasks for which a computer is used in its ordinary capacity.” D.I. 137 at 18,
`
`19, 21, 23 (quoting Visual Memory LLC v. NVIDIA Corp, 867 F.3d 1253, 1258 (Fed.
`
`Cir. 2017)).
`
`

`

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`II.
`
`LEGAL STANDARDS
`
`A. Rule 12(b)(6)
`
`To state a claim on which relief can be granted, a complaint must contain “a
`
`Short and plain statement of the claim showing that the pleader is entitled to relief.”
`
`Fed. R. Civ. P. 8(a)(2). Detailed factual allegations are not required, but the
`
`complaint must include more than mere “labels and conclusions” or “a formulaic
`
`recitation of the elements of a cause of action.” Bell At]. Corp. v. Twombly, 550 US.
`
`544, 555 (2007) (citation omitted). The complaint must set forth enough facts,
`
`accepted as true, to “state a claim to relief that is plausible on its face.” Id. at 570.
`
`A claim is facially plausible “when the plaintiff pleads factual content that allows
`
`the court to draw the reasonable inference that the defendant is liable for the
`
`misconduct alleged.” Ashcrofi v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted).
`
`Deciding whether a claim is plausible is a “context—specific task that requires the
`
`reviewing court to draw on its judicial experience and common sense.” Id. at 679
`
`(citation omitted).
`
`B. Patent—Eligible Subject Matter
`
`Section 101 of the Patent Act defines patent-eligible subject matter. It
`
`provides: “Whoever invents or discovers any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`

`

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`thereof, may obtain a patent therefor, subject to the conditions and requirements of
`
`this title.” 35 U.S.C. § 101.
`
`There are three judicially created limitations on the literal words of § 101.
`
`The Supreme Court has long held that laws of nature, natural phenomena, and
`
`abstract ideas are not patentable subject matter. Alice Corp. Ply. v. CLS Bank Int ’1,
`
`573 US. 208, 216 (2014). These exceptions to pate'ntable subject matter arise
`
`from the concern that the monopolization of “the[se] basic tools of scientific and
`
`technological wor
`
`might tend to impede innovation more than it would tend to
`
`1')
`
`(6
`
`promote it.” Id. (internal quotation marks and citations omitted).
`
`“[A]n invention is not rendered ineligible for patent [protection] simply
`
`because it involves an abstract concept.” Alice, 573 US. at 217. “Applications of
`
`such concepts to a new and useful end .
`
`.
`
`. remain eligible for patent protection.”
`
`Id. (internal quotation marks, alterations, and citations omitted). But “to transform
`
`an unpatentable law of nature [or abstract idea] into a patent-eligible application of
`
`such a law [or abstract idea], one must do more than simply state the law of nature
`
`9”
`[or abstract idea] while adding the words ‘apply it. Mayo Collaborative Servs. v.
`
`Prometheus Labs, Inc., 566 US. 66, 72 (2012) (emphasis removed).
`
`In Alice, the Supreme Court established a two-step framework by which
`
`courts are to distinguish patents that claim eligible subject matter under § 101 from
`
`patents that do not claim eligible subject matter under § 101. The court must first
`
`

`

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`determine Whether the patent’s claims are drawn to a patent-ineligible concept—
`
`i.e., are the claims directed to a law of nature, natural phenomenon, or abstract
`
`idea? Alice, 573 U.S. at 217. If the answer to this question is no, then the patent is
`
`not invalid for teaching ineligible subject matter. If the answer to this question is
`
`yes, then the court must proceed to step two, where it considers “the elements of
`
`each claim both individually and as an ordered combination” to determine if there
`
`is an “inventive concept—i.e., an element or combination of elements that is
`
`sufficient to ensure that the patent in practice amounts to significantly more than a
`
`patent upon the [ineligible concept] itself.” Id. at 217—18 (alteration in original)
`
`(internal quotations and citations omitted).
`
`III. DISCUSSION
`
`1' agree with Defendants that the exemplary claims of the asserted patents do
`
`not recite patentable subject matter. The patents are directed to an abstract idea—
`
`the secure verification of a person’s identity—and therefore fail step one of the
`
`Alice inquiry. And the patents do not disclose an inventive concept such as an
`
`improvement in computer fimctionality that transforms that abstract idea into a
`
`patent—eligible application of the idea.
`
`The Magistrate Judge found that the patents are not directed to an abstract
`
`idea based on her finding that the asserted exemplary claims teach improvements
`
`in computer functionality. USR, however, has never argued that the patents
`
`

`

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`disclose improvements in computer technology; and, in my view, neither the
`
`patents’ claims nor their written descriptions teach or purport to teach
`
`improvements in computer functionality. Moreover, contrary to USR’S arguments,
`
`neither the patents nor their written descriptions disclose “concrete and useful
`
`improvements” to “technical challenges associated with digital security and
`
`authentication” that transform the subject matter of the claims patentable under §
`
`101. DJ. 30 at 2—3.
`
`A. Claim 22 of the #539 Patent
`
`As its preamble acknowledges, claim 22 teaches “[a] method for providing
`
`information to a provider [typically, a merchant] to enable transactions between the
`
`provider and entities [typically, a customer of the merchant] who have secure data
`
`stored in a secure registry in which each entity is identified by a time-varying
`
`multicharacter code.” In other words, it teaches a method to obtain the secure
`
`verification of a person’s identity to enable a commercial transaction.
`
`The #539 patent is not materially different from the patent at issue in Prism
`
`Techs. LLC v. T-Mobz'le USA, Inc, 696 F . App’x’ 1014 (Fed. Cir. 2017). The
`
`Federal Circuit determined that the patent in Prism Tech. was invalid because it
`
`was directed to the abstract idea of “providing restricted access to resources.” Id.
`
`at 10l6w17. The claims of the patent in Prism Tech. taught “an abstract process”
`
`that included: “(1) receiving identity data from a device with a request for access to
`
`10
`
`

`

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`resources; (2) confirming the authenticity of the identity data associated with that
`
`device; (3) determining whether the device identified is authorized to access the
`
`resources requested; and (4) if authorized, permitting access to the requested
`
`resources.” Id. The #539 patent’s authentication method closely parallels this
`
`abstract process. Claim 22 of the #539 patent teaches: (1) “receiving” a transaction
`
`request with a time—varying multicharacter code and “an indication of" the
`
`merchant requesting the transaction; (2) “mapping” the time-varying
`
`multicharacter code to the identity of the customer in question; (3) “determining”
`
`whether the merchant’s access to the customer’s secure data complies with any
`
`restrictions; (4) “accessing” the customer’s account information; (5) “providing”
`
`the account identifying information to a third party without providing that
`
`information to the merchant; and (6) “enabling or denying” the merchant to
`
`perform the transaction without obtaining knowledge of the customer’s identifying
`
`information. #539 patent at 20:4—32. Given the similarities between these six steps
`
`and the claimed process in Prism Tech. , I find that claim 22 is directed to the
`
`abstract idea of obtaining the secure verification of a user’s identity to enable a
`
`transaction.
`
`Turning to step two of the analysis, as the patent itself acknowledges, all of
`
`the steps to the claimed process are accomplished by implementing well—known
`
`methods using conventional computer components. See #539 patent at 5:63—66
`
`11
`
`

`

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`(“The computer system may be a general purpose computer ....”); 6:4-7:10 (“In a
`
`general purpose computer system, the processor is typically a commercially
`
`available microprocessor,” “The database 24 may be any kind of database,” etc.).
`
`The claimed process therefore fails step two. See Alice, 573 US. at 222—23, 225
`
`(considering at step two “the introduction of a computer into the claims” and
`
`holding that the use of “a generic computer to perform generic computer
`
`functions” does not provide the requisite inventive concept to satisfy step two);
`
`Prism Tech. , 696 F. App’x at 1017-18 (holding that, “[v]iewed as an ordered
`
`combination, the asserted claims recite[d] no more than the sort of ‘perfectly
`
`conventional” generic computer components employed in a customary manner”
`
`that did “not rise to the level of an inventive concept” and therefore did not
`
`“transform the abstract idea into a patent-eligible invention” under Alice step two).l
`
`USR argues that the “key” to claim 22’s innovation is “allow[ing]
`
`transaction approval without providing account identifying information to the
`
`merchant.” DJ. 30 at 19 (emphasis in original). But sending data to a third—party
`
`as opposed to the merchant is not a technological innovation, but rather a
`
`l I recognize that the Federal Circuit has on other occasions considered computer
`functionality as part of step one of the Alice inquiry. See, e.g., Enfish, LLC v.
`Microsofi‘ Corp, 822 F.3d 1327, 1335—36 (Fed. Cir. 2016) (considering introduction
`of computer functionality into claims as part of step one of Alice inquiry); see also
`In re TL] Commc’ns LLC Potent Ling, 823 F.3d 607, 61143 (Fed. Cir. 2016)
`(same). Whether computer functionality is considered at step one or step two seems
`to me immaterial as long as it is considered at some point in the Alice analysis.
`
`12
`
`

`

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`“insignificant post-solution activity” that is insufficient to confer patent eligibility.
`
`Bilski v. Kappos, 561 US. 593, 611 (2010).
`
`USR also intimates that the use of a time—varying code provides an inventive
`
`concept. DJ. 30 at 19. But the claimed method employs the use of a time-varying
`
`code in a customary manner and in the naturally expected order of steps. See
`
`Boom! Payments, Inc. v. Stripe, Inc, 2019 WL 6605314, at *1 (ND. Cal. Nov. 19,
`
`2019) (claims directed to “authenticating internet sales through use of a third party
`
`intermediary” lack an inventive concept where “[a] third-party server receives and
`
`stores the buyer’s payment information,” the server “generates and sends a
`
`transaction-specific code to the buyer,” “the buyer sends the code to the seller,” the
`
`seller “sends the code (and identifying information) to the server,” and “[i]f the
`
`code is a match, the server processes the payment”); Asgharz’—Kamrani v. United
`
`Serv. Auto. ASS ’n, 2016 WL 3670804, at *5—6 (ED. Va. July 5, 2016) (claims
`
`verifying the identity of a participant to a transaction using a randomly generated
`
`code lack an inventive concept where the steps include (1) “receiving” a request
`
`for a dynamic code at a central entity; (2) “generating” a dynamic code by the
`
`central entity; (3) “providing” the generated dynamic code to the user; (4)
`
`“receiving” a request for authenticating the user from an external entity; and (5)
`
`“authenticating” by the central entity the user and providing the result to the
`
`external entity”); Inventor Holdings, LLC 1). Bed Bath & Beyond Inc, 123
`
`13
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`

`

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`F.Supp.3d 557, 562 (D. Del. 2015) (claim for processing a payment for a purchase
`
`of goods lacks an inventive concept where the steps include “(a) receiving a code
`
`relating to a purchase of goods; (b) determining if the code relates to a local or
`
`remote order; and (c) if the code is for a remote order, then determining the price,
`
`receiving payment, and alerting the remote seller that payment has been received”).
`
`B. Claim 10 of the #826 Patent
`
`As with claim 1 of the #539 patent, the preamble of claim 10 of the #826
`
`patent makes clear that claim 10’s method is directed to the abstract idea of secured
`
`verification of a person’s identity. The preamble reads: “[a] computer implemented
`
`method of authenticating an identity of a first entity[.]” #826 patent at 45:30—31.
`
`The six method steps disclosed in the remainder of claim 10 do not teach a
`
`technological solution but
`
`instead disclose an authentication method that
`
`is
`
`accomplished by retrieving and reviewing information,
`
`including biometric
`
`information, using a handheld device and a second device, to authenticate a user’s
`
`identification.
`
`USR argues that the claimed method is not abstract and teaches inventive
`
`“technological improvements over prior art systems” because it “include[es]: (l)
`
`gathering biometric information while locally authenticating the user, preventing
`
`unauthorized use of the device; and (2)
`
`requiring additional
`
`remote user
`
`authentication by a second device, based on both authentication information (e.g.,
`
`14
`
`

`

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`one-time variable token) received from the first device, and second authentication
`
`information (e. g., information securely stored at the second device or obtained from
`
`the [Universal Secure Registry database]).” DJ. 30 at 15. But the patent does not
`
`teach a technological solution for obtaining, generating, or analyzing biometric
`
`information, which the patent defines generically as “any .
`
`.
`
`. method of identifying
`
`the person possessing the device.” #826 patent at 4:27—32. Nor does the patent
`
`teach any improvements to handheld or other devices or technological solutions that
`
`enable such devices and biometric information to be combined to authenticate a
`
`user’s identity remotely. Rather, the patent teaches the routine use of biometric
`
`information, mobile devices, onetime variable tokens, and/or multiple devices to
`
`authenticate a person. That teaching is not inventive and does not make the claimed
`
`authentication method patentable under § 101. See IQS US Inc. v. Caisofi Labs Inc.,
`
`2017 WL 3581162, at *5 (ND. 111. Aug. 18, 201?) (patent using generic functions
`
`of existing technology to verify identity based on biometric information lacked an
`
`inventive concept); Intellectual Ventures I LLC v. Erie Indem. Ca, 850 F.3d 1315,
`
`1331 (Fed. Cir. 2017) (patent implementing mobile interface in generic manner to
`
`access user’s data lacked an inventive concept); Beam, 2019 WL 6605314, at *1
`
`(“generat[ing] and send[ing] a transaction—specific code to the buyer” lacks an
`
`inventive concept because it is a generic computer function); Asgharz’-Kammm‘,
`
`2016 WL 3670804, at *5 (“generating a random code” is a “conventional computer
`
`15
`
`

`

`Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 16 of 18 PageID #: 5469
`Case 1:17-cv-00585-CFC—SRF Document 167 Filed 06/30/20 Page 16 of 18 PagelD #: 5469
`
`function[]” that lacks an inventive concept); Smart Authentication 1P, LLC v. Elec.
`
`Arts Inc., 402 F. Supp. 3d 842, 853 (ND. Cal. 2019) (“Using well—known computer
`
`technology to authenticate a user — even using multiple electronic media to do so —
`
`amounts to functional use of familiar technology and is not inventive”).
`
`C. Claim 1 of the #813 Patent
`
`USR argues that the Electronic ID Device disclosed in claim 1 of the #813
`
`patent “includes a biometric sensor, user interface, communication interface, and
`
`processor, all working together in a specific way to generate and transmit
`
`encrypted authentication information via a [point-of—sale] device to a secure
`
`registry.” D.I. 30 at 5. But the patent does not disclose a specific technical
`
`solution by which such encrypted information is generated or transmitted. Rather,
`
`as USR states in its briefing, the patent merely discloses that “[t]he Electronic 1D
`
`Device collects biometric information from the user, secret information known by
`
`the user, and account identifying information selected by the user to activate the
`
`device, and to generate a non—predicable value and the encrypted authentication
`
`information.” Id. In other words, the device collects and examines data to
`
`authenticate the user’s identity.
`
`The patent describes the Electronic ID Device as “any type of electronic
`
`device” capable of accessing a secure identification system database, #813 patent
`
`at 1325—8, and it describes the device as consisting of well-known, generic
`
`16
`
`

`

`Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 17 of 18 PageID #: 5470
`Case 1:17-cv-00585-CFC—SRF Document 167 Filed 06/30/20 Page 17 of 18 PageI-D #: 5470
`
`components, including a computer processor, see id. at 5:30—34, 7: 1—7, 27:25—29,
`
`43:21—33, 50:3—1 1. Accordingly, it does not teach an inventive concept that
`
`transforms the abstract idea of authenticating identity into patentable subject
`
`matter. See In re Gopalan, 2020 WL 1845308, at *4 (Fed. Cir. Apr. 13, 2020)
`
`(holding that performing the steps of an abstract concept “on a generic processor
`
`does not transform it into a patentable apparatus”).
`
`D. Claim 12 of the #137 Patent
`
`The preamble of claim 12 of the #137 patent states that the claim is directed
`
`to “[a] system for authenticating a user for enabling a transaction.” #137 patent at
`
`46:55—56. The system disclosed to accomplish this abstract task is comprised of
`
`generic components—a device, a biometric sensor, a processor, and a
`
`transceiver—performing routine functions—retrieving, receiving, sending,
`
`authenticating—in a customary order. Prism Tech, 696 F. App’x at 1017;
`
`Telesign Corp. v. Twilio, Inc., 2018 WL 10638619, at *2 (ND. Cal. Oct. 19,
`
`2018). Accordingly, it lacks the inventive concept necessary to convert the
`
`claimed system into patentable subject matter. Alice, 573 US. at 222—23, 225;
`
`Prism Tech, 696 F. App’x at 1017-18.
`
`17
`
`

`

`Case 1:17-cv-00585-CFC-SRF Document 167 Filed 06/30/20 Page 18 of 18 PageID #: 5471
`Case 1:17-cv-00585-CFC—SRF Document 167 Filed 06/30/20 Page 18 of 18 PageID #: 5471
`
`IV. CONCLUSION
`
`For the foregoing reasons, I will not adopt the recommendation of the
`
`Magistrate Judge and will instead grant Defendants” motion to dismiss the
`
`Complaint for failure to state a claim.
`
`The Court will issue an Order consistent with this Memorandum Opinion.
`
`18
`
`

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