Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: July 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-00232
`Patent 8,352,730 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: July 24, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-00232
`Patent 8,352,730 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–6 and 8–17 of U.S. Patent No. 8,352,730 B2
`(Ex. 1001, “the ’730 patent”). Pet. 5. Proxense, LLC (“Patent Owner”) filed
`a Preliminary Response (Paper 6, “Prelim. Resp.”). With our authorization,
`Petitioner filed a Preliminary Reply (Paper 7, “Prelim. Reply”) and Patent
`Owner filed a Preliminary Sur-reply (Paper 9, “Prelim. Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`“unless . . . there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” For the
`reasons explained below, we institute an inter partes review of the ’730
`patent.
`
`
`B. Related Matters
`The parties advise us that the ’730 patent is involved in four district
`court cases, including Proxense, LLC v. Google LLC, No. 6.23-CV-00320
`(W.D. Tex.) (“the Texas case”). Pet. 75; Paper 4, 2. Petitioner also has filed
`petitions for inter partes review of patents related to the ’730 patent,
`including IPR2024-000233 (challenging U.S. Patent No. 8,886,954 B1 (“the
`’954 patent”)) and IPR2024-00234 (challenging U.S. Patent No. 9,298,905
`B1 (“the ’905 patent”)). The ’730 patent also was the subject of Samsung
`Electronics America, Inc. v. Proxense LLC, IPR2021-01444 (PTAB)
`(institution denied). See Ex. 1007 (IPR2021-01444, Paper 11 (“Samsung
`
`2
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`Patent 8,352,730 B2
`DDI”)). Petitioner states that the ’730 patent is the subject of ex parte
`reexamination in In re Proxense, LLC, Application No. 90/015,052 (filed
`June 8, 2022) (“the ’052 reexam”). Pet. 75. Patent Owner notes two
`additional reexaminations of patents related to the ’730 patent, Application
`90/015,053, reexamining the ’905 patent, and Application No. 90/015,054,
`reexamining U.S. Patent No. 10,698,989. Prelim. Resp. 14.
`
`C. The ’730 Patent
`The ’730 patent discloses systems for “authentication responsive to
`biometric verification of a user being authenticated,” using “a biometric key
`[that] persistently (or permanently) stores a code such as a device identifier
`(ID) and biometric data for a user in a tamper-resistant format.” Ex. 1001,
`1:57–62. The ’730 patent states that “[c]onventional user authentication
`techniques,” such as requiring input of a password, were deficient because
`they “require[d] the user to memorize or otherwise keep track of the
`credentials” and “it can be quite difficult to keep track of them all.” Id. at
`1:23–32. Other techniques, such as “provid[ing] the user with an access
`object . . . that the user can present to obtain access,” were inadequate
`because “authentication merely proves that the access object itself is valid; it
`does not verify that the legitimate user is using the access object.” Id. at
`1:33–43. According to the ’730 patent, there was a need in the art for a
`system for “verifying a user that is being authenticated that does not suffer
`from [such] limitations” and “ease[s] authentications by wirelessly providing
`an identification of the user.” Id. at 1:49–53.
`
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`Patent 8,352,730 B2
`Figure 2 of the ’730 patent is reproduced below.
`
`
`
`Figure 2 is a block diagram of the functional modules of a biometric key.
`Id. at 2:41–43. Enrollment module 222 registers a user with biometric
`key 100 by persistently storing biometric data associated with the user (e.g.,
`a digital image of the retina, fingerprint, or voice sample) in persistent
`storage 226. Id. at 4:4–28. Enrollment module 222 registers biometric
`key 100 with a trusted authority by providing a code, such as a device ID, to
`the trusted authority or, alternatively, the trusted authority can provide a
`code to biometric key 100. Id. at 4:8–12. The code is stored in persistent
`storage 226. Id. at 4:43–45. “Persistent storage 226 is itself, and stores data
`in, a tamper-proof format to prevent any changes to the stored data.” Id. at
`4:36–38. “Tamper-proofing increases reliability of authentication because it
`does not allow any changes to biometric data (i.e., allows reads of stored
`data, but not writes to store new data or modify existing data).” Id. at 4:38–
`41. In a fingerprint embodiment, validation module 224 uses scan pad 120
`(shown in Figure 1) to capture scan data from the user’s fingerprint and
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`Patent 8,352,730 B2
`compares the scanned data to the stored fingerprint to determine whether the
`scanned data matches the stored data. Id. at 4:14–23.
`The interaction of biometric key 100 with other system components is
`illustrated in Figure 3, reproduced below.
`
`Figure 3 is “a block diagram illustrating a system for providing
`authentication information for a biometrically verified user.” Id. at 2:44–46.
`Authentication module 310 is coupled to biometric key 100 via line 311 (a
`wireless medium) and with trusted key authority 320 via line 312 (a secure
`
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`Patent 8,352,730 B2
`data network such as the Internet). Id. at 5:8–12. Authentication module
`310 requires the device ID code (indicating successful biometric
`verification) from biometric key 100 before allowing the user to access
`application 330. Id. at 5:12–19. Authentication module 310 provides the
`device ID code from biometric key 100 to trusted key authority 320 to verify
`that it belongs to a legitimate key. Id. at 5:19–23; see also id. at 5:42–48
`(“In one embodiment, trusted key authority 320 verifies that a code from a
`biometric key is legitimate. To do so, the trusted key authority 320 stores a
`list of codes for legitimate biometric keys . . . . In one embodiment, trusted
`key authority 320 can also store a profile associated with a biometric key.”).
`Authentication module 310 then sends a message to application 330 to allow
`the user access to the application responsive to a successful authentication
`by trusted key authority 320. Id. at 5:23–26.
`“Application 330 can be, for example, a casino machine, a keyless
`lock, a garage door opener, an ATM machine, a hard drive, computer
`software, a web site, a file, and the like.” Id. at 5:28–31. Trusted key
`authority 320 can be operated by an agent, such as “a government official, a
`notary, and/or an employee of a third party which operates the trusted key
`authority, or another form of witness.” Id. at 6:35–38. “The agent can
`follow standardized procedures such as requiring identification based on a
`state issued driver license, or a federally issued passport in order to establish
`a true identity of the user.” Id. at 6:38–41.
`Claim 1, reproduced below,1 is illustrative of the claimed subject
`matter:
`
`
`1 We add bracketed alphanumeric characters corresponding to those
`Petitioner uses in the Petition.
`
`6
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`Patent 8,352,730 B2
`1.
`A method for verifying a user during
`authentication of an integrated device, comprising the steps of:
`[1ai] persistently storing biometric data of the user and
`[1aii] a plurality of codes and other data values
`comprising a device ID code uniquely identifying
`the integrated device and [1aiii] a secret decryption
`value in a tamper proof format written to a storage
`element on the integrated device that is unable to
`be subsequently altered; [1b] wherein the
`biometric data is selected from a group consisting
`of a palm print, a retinal scan, an iris scan, a hand
`geometry, a facial recognition, a signature
`recognition and a voice recognition;
`[1c] responsive to receiving a request for a biometric
`verification of the user, receiving scan data from a
`biometric scan, [1d] comparing the scan data to the
`biometric data to determine whether the scan data
`matches the biometric data;
`[1e] responsive to a determination that the scan data
`matches the biometric data, wirelessly sending one
`or more codes from the plurality of codes and the
`other data values for authentication by an agent
`that is a third-party trusted authority possessing a
`list of device ID codes uniquely identifying
`legitimate integrated devices, wherein the one or
`more codes and other data values includes the
`device ID code; and
`[1f] responsive to authentication of the one or more codes
`and the other data values by the agent, receiving an
`access message from the agent allowing the user
`access to an application, wherein the application is
`selected from a group consisting of a casino
`machine, a keyless lock, a garage door opener, an
`ATM machine, a hard drive, computer software, a
`web site and a file.
`
`
`
`7
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`IPR2024-00232
`Patent 8,352,730 B2
`D. Evidence
`Petitioner relies on the references listed below.
`Name
`Reference
`Date
`
`Ludtke
`
`Kon
`
`US 7,188,110 B1
`
`Mar. 6, 2007 (filed
`Dec. 11, 2000)
`US 2002/0046336 A1 Apr. 18, 2002
`
`Exhibit
`No.
`1005
`
`1006
`
`
`Petitioner also relies on the Declaration of Stephen Gray (Ex. 1003).
`
`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`Reference(s)
`35 U.S.C. §
`Claim(s) Challenged
`1, 2, 4–6, 8, 9, 11, 12,
`14–17
`
`§ 103(a)2
`
`Ludtke
`
`Ludtke, Kon
`
`
`§ 103(a)
`
`3, 10, 13
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’730 patent has an
`effective filing date before the effective date of the relevant provision of the
`AIA, we cite to the pre-AIA version of § 103.
`
`8
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`Patent 8,352,730 B2
`
`II. ANALYSIS
`
`A. Claim Construction
`We construe a claim
`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C. 282(b),
`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.100(b) (2019); see also Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
`Petitioner observes that “third-party trusted authority,” “device ID
`code,” and “access message” have been construed previously, by the Board
`and in district court litigation. Pet. 4 (citing Ex. 1007, 15; Ex. 1009, 3;
`Ex. 1010, 15, 20). Nevertheless, Petitioner argues that no claim terms need
`to be construed. Id. Patent Owner requests that we adopt previous
`constructions of “third-party trusted authority,’ “device ID code,” and
`“access message.” Prelim. Resp. 2–5.
`
`1. Third-party trusted authority
`In the Samsung DDI, the Board construed “third-party trusted
`authority,” in claims 1 and 8 of the ’730 patent, to mean “a trusted authority
`that is an entity separate from the parties to a transaction.” Ex. 1007, 15.
`The Board found that “[t]he plain meaning of ‘third-party trusted authority’
`suggests an entity or party separate from the principal parties to a
`transaction.” Id. at 14 (citing third party, THE AMERICAN HERITAGE
`COLLEGE DICTIONARY 1433 (4th ed. 2004) (“2. One other than the principals
`involved in a transaction.”) (Ex. 3002 in IPR2021-01444)). The Samsung
`
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`Patent 8,352,730 B2
`DDI panel further found that the Specification supported its construction,
`and noted that the Specification included examples of “a government
`official, a notary, and/or an employee of a third party which operates the
`trusted key authority, or another form of witness.” Id. at 14–15 (quoting
`Ex. 1001, 6:35–38). The panel further observed that the applicant’s
`statements during prosecution were also “consistent with a third-party
`trusted authority being an entity separate from the principal parties to a
`transaction.” Id. at 15; see also Ex. 1002, 366–67, 440–42.
`Patent Owner contends that the Samsung DDI provided “further
`clarity as to the meaning of its constructions when evaluating the then-
`asserted prior art,” specifically, Lapsley (Exhibit 1007 in IPR2021-01444,
`introduced here as Ex. 3001). Prelim. Resp. 4–5. As we understand Patent
`Owner’s position, Patent Owner contends that the Samsung DDI
`distinguished a third-party trusted authority from an “active participant,” or
`any entity that participates in a transaction, and limited a third-party trusted
`authority to an entity that “takes on a witness role.” Id. at 5.
`In the Samsung DDI, the panel determined that Samsung had not
`explained sufficiently what the component it identified as a third-party
`trusted authority was a third party relative to or what application Lapsley’s
`user was being permitted to access. Ex. 1007, 26–27. As Samsung
`presented it, the resource it identified as the third-party trusted authority
`appeared to be the resource accessed. Id. However, the panel’s preliminary
`evaluation of the evidence in that proceeding did not find expressly that such
`resource was not a third-party trusted authority; rather, it found that
`Samsung’s presentation of evidence was not sufficient to show that it was a
`third-party trusted authority. Id. In any case, the panel did not purport to
`clarify or further construe the term “third-party trusted authority.” Id.
`
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`Patent 8,352,730 B2
`The Samsung DDI does not provide a basis for further limiting a
`“third-party trusted authority” to exclude any active participant in a
`transaction. This would exclude the trusted key authority of the preferred
`embodiments of the ’730 patent, which actively participates in a transaction,
`for example by receiving a request for authentication with a code,
`determining whether the code is valid, authenticating the code, and
`transmitting an access code to the requester, which allows a user access to an
`application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority
`in this example is not a principal party to the transaction (here, those parties
`are the user and the application), it is an active participant in facilitating the
`transaction. In another preferred embodiment of the ’730 patent, trusted key
`authority 320 plays an active role in transactions, e.g., verifying to a grocery
`store that a biometric key presented by a customer is legitimate, thereby
`allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However,
`despite the trusted key authority’s active participation, the parties to such a
`transaction are the customer and the grocery store, not trusted key authority
`320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38)
`refers to an agent’s relationship to the principal parties to the transaction, not
`to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5
`(describing activities of an agent).
`Patent Owner’s proposed clarifications, or modifications, to the
`Samsung DDI’s construction of “third-party trusted authority,” which would
`exclude these embodiments, are presumptively incorrect. See Sequoia Tech.,
`LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit
`“recognize[s] that ‘[a] claim construction exclud[ing] a preferred
`embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft
`Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in
`
`11
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`Patent 8,352,730 B2
`original)). Indeed, Patent Owner’s view would transform any entity that is
`accessed for any reason in a transaction into a party to that transaction, thus
`excluding it from the scope of a “third-party trusted authority.” Patent
`Owner, however, has advanced no persuasive support for such a narrow
`reading of the claims.
`Accordingly, we adopt the Samsung DDI’s construction without
`Patent Owner’s modifications. On the current record, a “third-party trusted
`authority” is “a trusted authority that is an entity separate from the parties to
`a transaction.”
`
`2. Remaining claim terms
`Based on the preliminary record, we do not find it necessary to
`provide express claim constructions for any other terms. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in
`controversy, and only to the extent necessary to resolve the controversy’”)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999)).
`
`B. Obviousness of Claims 1, 2, 4–6, 8, 9, 11, 12, and 14–17 over Ludtke
`Petitioner contends that claims 1, 2, 4–6, 8, 9, 11, 12, and 14–17
`would have been obvious over Ludtke. Pet. 8–59. For the reasons given
`below, Petitioner has made a sufficient showing.
`A claim is unpatentable under 35 U.S.C. § 103 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
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`matter pertains.” We resolve the question of obviousness 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 skill in the art; and (4) if in evidence, objective
`evidence of nonobviousness, i.e., secondary considerations.3 See Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`1. Level of skill in the art
`Petitioner contends that a person of ordinary skill in the art “would
`have had at least a bachelor’s degree in Computer or Electrical Engineering
`or an equivalent engineering discipline, and at least three years of experience
`in the field of encryption and security, or the equivalent,” and that
`“[a]dditional education could substitute for professional experience, and
`significant work experience could substitute for formal education.” Pet. 5
`(citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge
`Petitioner’s proposed level of skill or propose an alternative. Petitioner’s
`proposal is consistent with the technology described in the Specification and
`the cited prior art. For purposes of this Decision, we adopt Petitioner’s
`proposed level of skill.
`
`2. Scope and content of the prior art – overview of Ludtke
`Ludtke describes techniques for identifying an authorized user with a
`biometric device and enabling the authorized user to access private
`
`
`3 The record does not include allegations or evidence of objective indicia of
`nonobviousness.
`
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`information over a voice network. Ex. 1005, Abstract. Figure 4 of Ludtke,
`reproduced below, illustrates an example:
`
`
`
`Figure 4 is a block diagram of an in-store retail system. Id. at 2:8–9.
`In the retail environment of Figure 4, privacy card 405 interfaces with
`digital wallet 410 and retail point of sale (POS) terminal 415. Id. at 8:53–56.
`User 430 provides privacy card 405 and digital wallet 410 to POS terminal
`415 or legacy retail POS terminal 425. Id. at 8:59–67. Transaction privacy
`clearing house (TPCH) 440 receives user 430’s privacy card identification
`and determines whether the user has sufficient funds to perform the
`transaction. Id. at 9:1–3.
`In one embodiment, the transaction device(s), POS terminals
`and/or TPCH may function to verify the authenticity of each
`other. For example, a privacy card and digital wallet may be
`configured to verify the legitimacy of each other. Similarly, the
`
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`transaction device may be configured to verify the legitimacy of
`the POS terminal and/or TPCH. A variety of verification
`techniques may be used. For example[,] lists of devices with
`account and/or access issues may be maintained. For example,
`in one embodiment, the public key infrastructure (PKI) may be
`used to verify legitimacy.
`Id. at 5:11–20. “One means of authentication is some kind of PIN code
`entry. Alternately, authentication may be achieved by using more
`sophisticated technologies such as a biometric solution (e.g., fingerprint
`recognition).” Id. at 4:65–5:1. TPCH 440 interfaces with financial
`processing system 445, vendors 450, and distribution systems 455 to
`complete the transaction. Id. at 9:4–6.
`Figure 16 of Ludtke is reproduced below:
`
`Figure 16 is a flowchart of a process for performing a retail transaction.
`Id. at 2:35–36. A retail clerk triggers a purchase action by scanning a
`
`
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`Patent 8,352,730 B2
`package’s bar code (step 1601), the POS terminal displays the transaction
`total (step 1602), and the clerk requests payment from the user (step 1603).
`Id. at 27:17–25. The user presses a fingerprint recognition pad of the digital
`wallet, which verifies the user (steps 1604–1607). Id. at 27:25–34. The
`clerk initiates payment (step 1609), the user uses the digital wallet to select
`an account to use for payment (step 1610), and the magnetic strip of the
`privacy card is programmed with the account number (step 1611). Id. at
`17:44–49. The clerk swipes the card at the POS terminal (steps 1612–1614),
`a magnetic strip reader of the POS terminal reads the privacy card, the POS
`terminal sends a transaction request to the TPCH (step 1615), and the TPCH
`returns a confirmation message to the POS terminal (step 1616). Id. at
`17:50–65. The TPCH then settles funds, transferring an appropriate amount
`into the vendor’s account (step 1619). Id. at 17:66–67.
`Ludtke describes various alternatives for the TPCH’s involvement in
`funds settlement:
`The settlement of funds involves the transfer of the
`appropriate financial credit into the vendor’s account. For the
`purposes of this example, it is assumed that the account is
`managed completely by the TPCH, and thus the funds transfer
`is handled completely inside of the TPCH. The vendor is not
`given any user identity information regarding the transaction;
`rather, the user is represented only by the transaction device
`identification information.
`In an alternative embodiment, the TPCH may issue a
`funds settlement request to a third party financial institution on
`behalf of the user, causing the necessary funds to be transferred
`to the vendor from the user’s account. In yet another alternative
`embodiment, the TPCH may act as a proxy for the user,
`whereby the TPCH takes the funds from the user’s account as
`managed by a third party financial institution, and then issues a
`funds transfer from the TPCH account to the vendor’s account.
`
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`This embodiment further preserves the user’s identity by not
`linking it with the funds transfer into the vendor’s account.
`Id. at 29:35–53.
`
`
`3. Differences, if any, between claims 1, 2, 4–6, 8, 9, 11, 12, and 14–
`17 and Ludtke; reasons to modify
`The preamble of claim 1 recites “[a] method for verifying a user
`during authentication of an integrated device.”4 Petitioner contends that
`Ludtke’s privacy card and digital wallet (transaction devices) are examples
`of integrated devices with a unique identifier (ID) and that a user performs
`transactions with an eCommerce system using such a device. Pet. 8–9
`(citing Ex. 1005, 3:32–36; Ex. 1003 ¶¶ 72–74). Regarding claim limitations
`1ai, 1aii, 1aiii, and 1b, Petitioner argues that Ludtke teaches persistently
`storing, in a user identity/account information block of the transaction
`device, biometric information (e.g., retinal scan, voice, DNA, hand profile,
`face recognition), a plurality of codes and other values comprising a device
`ID code uniquely identifying the transaction device (e.g., globally unique
`silicon ID (GUID), magnetic strip, bar codes), and a secret decryption value
`(e.g., public key infrastructure (PKI) public keys and private keys). Pet. 10–
`24 (citing Ex. 1005, 5:11–20, 8:63–67, 9:18–25, 10:64–67, 13:27–29,
`13:39–41, 14:13–21, 19:9–14, 19:29–40, 23:11–19, 30:18–27, 35:61–64,
`37:39–45, 38:1–3, 38:9–21, 38:25–29, 38:40–61, 38:66–39:2, 39:7–18,
`40:5–26, Figs. 7B–7C, 27, 33; Ex. 1003 ¶¶ 75–96). Regarding claim
`limitation 1c, Petitioner argues that Ludtke’s transaction device requests and
`
`
`4 We need not determine, at this stage of the proceeding, whether the
`preamble of claim 1 is limiting, as Petitioner’s evidence shows sufficiently
`that Ludtke teaches the preamble.
`
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`receives a fingerprint sample or other biometric data. Id. at 23–24 (citing
`Ex. 1005, 14:33–46, 16: 47–49, 35:61–64; Ex. 1003 ¶¶ 97–98). As to claim
`limitation 1d, Petitioner argues that Ludtke’s transaction device compares
`the fingerprint sample to stored authorized samples to determine a match.
`Id. at 25 (citing Ex. 1005, 14:40–46, 35:61–64; Ex. 1003 ¶ 99). Petitioner’s
`showing as to these limitations of claim 1 is sufficient, at this stage of the
`proceeding. Patent Owner does not yet contest Ludtke’s applicability to
`these aspects of claim 1.
`Claim limitation 1e recites:
`responsive to a determination that the scan data matches the
`biometric data, wirelessly sending one or more codes from the
`plurality of codes and the other data values for authentication
`by an agent that is a third-party trusted authority possessing a
`list of device ID codes uniquely identifying legitimate
`integrated devices, wherein the one or more codes and other
`data values includes the device ID code.
`Petitioner argues that Ludtke describes the transaction device sending, over a
`wireless network, to the TPCH, a communication including a unique
`transaction device ID. Pet. 25–26 (citing Ex. 1005, 3:40–43, 4:48–50, 5:63–
`64, 7:46–48, 9:26–30, 9:35–42, 9:51–59, 28:50–29:12, 30:23–27; Ex. 1003
`¶¶ 100–109).
`As to whether Ludtke teaches a determination whether the scan data
`matches the biometric data, Petitioner points to Ludtke’s description of the
`transaction device (digital wallet or privacy card) prompting the user to
`supply a fingerprint recognition sample, comparing the sample to stored
`fingerprints, and determining that the user is authorized if the supplied
`sample is recognized. Id. at 26–28 (citing Ex. 1005, 1:22–31, 1:37–38,
`4:62–5:1, 14:33–46, 18:45–50, 18:52–55, 27:12–13, 28:13–18, 28:26–40,
`28:41–45, 28:50–62, 34:25–27, 35:61–64; Ex. 1003 ¶¶ 103–105). As to
`
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`Patent 8,352,730 B2
`whether Ludtke teaches wirelessly sending one or more codes for
`authentication by an agent, Petitioner points to Ludtke’s description of its
`transaction device sending the unique transaction device ID to the TPCH
`using wireless or cellular signals. Id. at 28 (citing Ex. 1005, 9:26–42;
`Ex. 1003 ¶ 106). As to whether Ludtke teaches an agent “possessing a list
`of device ID codes uniquely identifying legitimate integrated devices,
`wherein the one or more codes and other data values includes the device ID
`code,” Petitioner points to Ludtke’s description of the TPCH maintaining a
`copy of unique transaction device ID values. Id. at 31 (citing Ex. 1005,
`30:20–27; Ex. 1003 ¶ 109). Petitioner’s showing as to these aspects of claim
`limitation 1e is sufficient, at this stage of the proceeding. Patent Owner does
`not yet contest Ludtke’s applicability to these aspects of claim limitation 1e.
`As to claim limitation 1f, Petitioner argues that the TPCH uses the
`unique ID of the transaction device to process the transaction and, if the
`selected account has sufficient funds, the TPCH issues a transaction
`confirmation. Pet. 32–33 (citing Ex. 1005, 28:50–29:23; Ex. 1003 ¶ 112).
`As Petitioner observes (Pet. 33, Ex. 1003 ¶ 113), once the transaction is
`authorized, “[s]ecure distribution of physical (or electronic) content to the
`user is performed.” Ex. 1005, 29:29–30. Petitioner also points to other
`examples of services Ludtke’s system provides access to, including voice
`mail, bank balances, dialing cards, credit reports, depositing money,
`accessing stored messages, logging onto computers, and others. Pet. 33
`(citing Ex. 1005, 1:22–31, 1:38–39, 18:52–55, 19:45–50; Ex. 1003 ¶ 114).
`Thus, responsive to the authentication of the unique ID of the transaction
`device by the TPCH, the user is allowed access to an application, wherein
`the application can include at least “computer software, a website and a
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`IPR2024-00232
`Patent 8,352,730 B2
`file,” as recited in claim limitation 1f. Petitioner’s showing as to claim
`limitation 1f is sufficient, at this stage of the proceeding.
`Returning to claim limitation 1e, the parties dispute whether Ludtke’s
`TPCH is a “third-party trusted authority.” Petitioner contends that the
`TPCH is “an entity separate from the parties to a transaction,” as we
`construe “third-party trusted authority,” because “it is distinct from the
`transaction device, the POS on which the user/transaction device is
`performing a transaction, and the ‘external retailers and vendors’ that
`complete the transaction.” Pet. 28–29 (quoting Ex 1005, 9:35–39; citing
`Ex. 1005, Fig. 6; Ex. 1003 ¶ 107). Petitioner argues that “Ludtke expressly
`identifies the TPCH as external to the parties to the transaction, capable only
`of communication with the parties,” and that the TPCH functions “as the
`middleman of the distribution channel.” Id. at 30–31 (quoting Ex. 1005,
`7:44–48; citing Ex. 1005, 9:26–30, 9:52–59; Ex. 1003 ¶ 108).
`Patent Owner argues that the TPCH is not a “third-party trusted
`authority” because it “is an active participant in transactions between a user
`and vendor” rather than simply a “witness” to the transactions. Prelim.
`Resp. 6. Patent Owner points to examples in Ludtke where the TPCH is
`“accessing financial accounts to authorize transactions” and “processing
`transactions.” Id. at 6–13 (citing Ex. 1005, 3:38–45, 6:41–44, 6:51–55,
`7:12–20, 9:28–30, 9:43–51, 21:51–57, 23:50–55, 27:56–58, 27:66–67,
`28:58–62, 29:6–14, 29:31–39, 29:46–51, Figs. 16–17). According to Patent
`Owner, “[t]he TPCH of Ludtke is . . . accessed by the user and the vendor to
`access a financial account, authorize a transaction, and provide payment,”
`and, thus, “is a very active participant in the transaction, not merely a
`witness to it.” Id. at 7; see also id. at 9 (“the TPCH becomes an active
`participant by authorizing the transaction . . . and subsequently performing
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`IPR2024-00232
`Patent 8,352,730 B2
`settlement”), 10 (“By authorizing transactions and transferring funds into the
`vendor’s account, the TPCH is a very active participant in the transactions—
`it is being accessed by the vendor to authorize a transaction. The TPCH is
`also accessed by the user to pay the vendor. Being accessed by the vendor
`and user to be an active participant, the TPCH cannot be the claimed ‘third-
`party trusted authority.’”), 11 (“As the TPCH is an active participant during
`retail and web transactions by being accessed by the vendor and user, it
`cannot be the claimed ‘third-party trusted authority.’”), 11 (“[T]he TPCH is
`being accessed to pay the vendor, making the TPCH an active participant in
`the transaction.”), 12 (“[B]y issuing credit to the user, the TPCH is an even
`more active participant than in the previous method of settlement.”), 13
`(“The TPCH is thus being accessed to access a user’s registered account and
`to pay the vendor. Notably, the TPCH makes the payment, thereby making
`it a party to the transaction.”).
`On the current record, we agree with Petitioner. As Mr. Gray testifies,
`the parties to Ludtke’s transaction are the user and the external retailers and
`vendors. Ex. 1003 ¶ 107; Ex. 1005, 9:35–39. In the example of Figure 17,
`the “user triggers the purchase” and “the vendor . . . will provide the items.”
`Ex. 1005, 28:34–56. The TPCH plays a role in processing or facilitating the
`transaction. However, we agree with Petitioner, that, in general, the fact that
`“the TPCH is capable in certain embodiments of settling funds does not
`make it a ‘pa
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