Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: July 23, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-00234
`Patent 9,298,905 B1
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 10
`Entered: July 23, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-00234
`Patent 9,298,905 B1
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2024-00234
`Patent 9,298,905 B1
`
`I.
`INTRODUCTION
`A. Background and Summary
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–7 and 9–18 of U.S. Patent No. 9,298,905 B1
`(Ex. 1001, “the ’905 Patent”). Pet. 1. 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”), directed to issues of discretionary denial.
`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 ’905
`Patent.
`
`B. Related Matters
`The parties advise us that the ’905 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. 57; Paper 4, 1. Petitioner also has filed
`petitions for inter partes review of patents related to the ’905 Patent,
`including IPR2024-00232 (challenging U.S. Patent No. 8,352,730 B1 (“the
`’730 patent”)), and IPR2024–00233 (challenging U.S. Patent No. 8,886,954
`B1 (“the ’954 patent”)). The ’905 Patent also was the subject of Samsung
`Electronics America, Inc. v. Proxense LLC, IPR2021-01447 (PTAB)
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`(institution denied). See Ex. 1007 (IPR2021-01447, Paper 12 (“Samsung
`DDI”)). The parties also note that the ’905 Patent is the subject of ex parte
`reexamination in In re Proxense, LLC, Application 90/015,053 (filed June 8,
`2022) (see Ex. 1011, “the ’053 reexam”), and two additional reexaminations
`of patents related to the ’905 Patent: Application No. 90/015,052,
`reexamining the ’730 patent, and Application No. 90/015,054, reexamining
`U.S. Patent No. 10,698,989. Pet. 54; Prelim. Resp. 14.
`
`C. The ’905 Patent
`The ’905 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,
`1:65–67. The ’905 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
`1:28–37. 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
`1:38–46. According to the ’905 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 1:55–58.
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`Figure 2 of the ’905 Patent is reproduced below.
`
`
`
`Figure 2 is a block diagram of the functional modules of a biometric key.
`Ex. 1001, 3:30–33, 4:42–43. 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 4:67–5:23. 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 5:3–7. The code is stored in
`persistent storage 226. Id. at 5:24–26. “Persistent storage 226 is itself, and
`stores data in, a tamper-proof format to prevent any changes to the stored
`data.” Id. at 5:31–33. “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 5:33–36. In a fingerprint embodiment, validation
`module 224 uses scan pad 120 (shown in Figure 1) to capture scan data from
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`the user’s fingerprint and compares the scanned data to the stored fingerprint
`to determine whether the scanned data matches the stored data. Id. at
`5:8–12.
`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.” Ex. 1001,
`3:33–35. 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 data network such as the Internet). Id. at 5:67–6:7. Authentication
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`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 6:10–13. 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 6:13–19; see also id. at 6:39–45
`(“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 6:17–19.
`“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, a financial account (e.g. a savings account,
`checking account, brokerage account, credit card account, credit line, etc.)
`and the like.” Ex. 1001, 6:21–26. 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 7:33–36. “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 7:36–39.
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`Patent 9,298,905 B1
`D. Illustrative Claim
`Challenged claims 1, 9, and 13 of the ’905 Patent are independent.
`Claims 2–7, 10–12, and 14–18 depend directly or indirectly from claim 1.
`Claim 1, reproduced below,1 is illustrative of the claimed subject matter:
`1.
`[1preamble] A method comprising:
`[1a] persistently storing biometric data of a legitimate
`user and an ID code on an integrated device;
`[1b] responsive to receiving a request for a biometric
`verification of a user, receiving, from a biometric
`sensor, scan data from a biometric scan
`performed by the biometric sensor;
`[1c] comparing the scan data to the biometric data to
`determine whether the scan data matches the
`biometric data;
`[1d] responsive to a determination that the scan data
`matches the biometric data, wirelessly sending
`the ID code for comparison by a third-party
`trusted authority against one or more previously
`registered ID codes maintained by the third-party
`trusted authority; and
`[1e] responsive to receiving an access message from
`the third-party trusted authority indicating that
`the third-party trusted authority successfully
`authenticated the ID code, allowing the user to
`complete a financial transaction.
`Ex. 1001, 10:11–28.
`
`
`1 We add bracketed numbering corresponding to the numbering Petitioner
`uses in the Petition.
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`E. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability (Pet. 1):
`References
`Basis
`Claim(s) Challenged
`§ 103(a)3
`1, 3–7, 9, 10, 12–18
`
`Ludtke2
`
`Ludtke, Kon4
`
`§ 103(a)
`
`2, 11
`
`Petitioner also relies on the Declaration of Stephen Gray (Ex. 1003).
`
`
`
`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,” “ID code,” and
`“access message” have been construed previously, by the Board and in
`district court litigation. Pet. 3–4 (citing Ex. 1007, 14; Ex. 1009, 3; Ex. 1010,
`
`
`2 US Patent No. 7,188,110 B1, filed December 11, 2000, issued March 6,
`2007 (Ex. 1005, “Ludtke”).
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’905 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.
`4 US Patent Application Publication No. 2002/0046336 A1, published April
`18, 2002 (Ex. 1006, “Kon”).
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`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,” “ID code,” and “access message.” Prelim.
`Resp. 2–5. We address the latter claim terms below.
`1. Third-party trusted authority
`In the Samsung DDI, the Board construed “third-party trusted
`authority,” in claims 1 and 9 of the ’905 Patent, to mean “a trusted authority
`that is an entity separate from the parties to a transaction.” Ex. 1007, 14.
`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 13 (citing THE AMERICAN HERITAGE COLLEGE
`DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the
`principals involved in a transaction.” (Ex. 3002 in IPR2021-01447)). The
`Samsung 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 13–14
`(quoting Ex. 1001, 7:33–36). 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 14.
`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 to 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
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`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, 23–24. 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.
`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, 8:8–20, Fig. 7. Although the trusted key authority in
`this example is not a principal party to the transaction (here, the parties are
`the user and the application), it is an active participant in facilitating the
`transaction. In another preferred embodiment of the ’905 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 6:39–53, Figs. 3–4. However,
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`despite 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, 7:33–36)
`refers to an agent’s relationship to the principal parties to the transaction, not
`to level of activity the agent engages in. See id. at 7:30–642, 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, is 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
`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
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`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. Legal Standards
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a) (2006)).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Additionally, secondary considerations, such as “commercial
`success, long felt but unsolved needs, failure of others, etc., might be utilized
`to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness,
`these inquiries may have relevancy.” Id. When conducting an obviousness
`analysis, we consider a prior art reference “not only for what it expressly
`teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu,
`923 F.3d 1032, 1049 (Fed. Cir. 2019) (citation omitted).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. An obviousness determination requires finding “both ‘that
`a skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
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`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
`1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not
`to allow hindsight reconstruction of references . . . without any explanation
`as to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted). Further, an assertion of obviousness “cannot be
`sustained by mere conclusory statements; instead, there must be some
`articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d
`1376, 1383 (Fed. Cir. 2016) (stating that “conclusory statements” amount to
`an “insufficient articulation[] of motivation to combine”; “instead, the
`finding must be supported by a ‘reasoned explanation’” (citation omitted));
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)
`(“To satisfy its burden of proving obviousness, a petitioner cannot employ
`mere conclusory statements. The petitioner must instead articulate specific
`reasoning, based on evidence of record, to support the legal conclusion of
`obviousness.”).
`
`C. Level of Ordinary 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
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`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. 4–5
`(citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge
`Petitioner’s proposed level of skill or propose an alternative. See Prelim.
`Resp. Based on the record presented, including our review of the
`’905 Patent and the types of problems and solutions described in the
`’905 Patent and cited prior art, we adopt Petitioner’s definition of the level
`of ordinary skill in the art and apply it for purposes of this Decision.
`
`D. Obviousness of Claims 1, 3–7, 9, 10, and 12–18 over Ludtke
`Petitioner contends that claims 1, 3–7, 9, 10, and 12–18 would have
`been obvious over Ludtke. Pet. 5–41. For the reasons given below,
`Petitioner has made a sufficient showing.
`1. Overview of Ludtke
`Ludtke describes techniques for identifying an authorized user with a
`biometric device and enabling the authorized user to access private
`information over a voice network. Ex. 1005, Abstract. Figure 4 of Ludtke,
`reproduced below, illustrates an example:
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`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
`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
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`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
`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).
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`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.
`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.
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`2. Independent Claim 1
`a) Petitioner’s Assertions
`The preamble of claim 1 recites “[a] method comprising,” and
`Petitioner contends that Ludtke discloses ‘“[a] method of identifying an
`authorized user with a biometric device and enabling the authorized user to
`access private information’ using a ‘transaction device’ such as a privacy
`card and/or digital wallet (integrated device).” Pet. 8–9 (citing Ex. 1005,
`3:32–36; Ex. 1003 ¶¶ 73–74).
`Regarding claim limitations 1a 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), where Ludtke’s transaction device requests and receives a
`fingerprint sample or other biometric data. Pet. 9–13 (citing Ex. 1005, 8:63–
`67, 9:18–25, 13:27–29, 13:39–41, 14:13–21, 14:19–21, 14:33–46, 16:47–49,
`19:9–14, 19:29–40, 23:11–19, 30:18–27, Figs. 7B–7C, 27, 33; Ex. 1003
`¶¶ 75–82). Petitioner’s showing as to these limitations of claim 1 is
`sufficient, at this stage of the proceeding.
`As to claim limitation 1c, Petitioner argues that Ludtke’s transaction
`device compares the fingerprint sample to stored authorized samples to
`determine a match. Id. at 13 (citing Ex. 1005, 14:40–46; Ex. 1003 ¶ 83).
`Petitioner’s showing as to these limitations of claim 1 is sufficient, at this
`stage of the proceeding.
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`Patent 9,298,905 B1
`Claim limitation 1d recites:
`responsive to a determination that the scan data matches the
`biometric data, wirelessly sending the ID code for
`comparison by a third-party trusted authority against one or
`more previously registered ID codes maintained by the third-
`party trusted authority.
`Petitioner argues that Ludtke describes the transaction device sending, over a
`wireless network, to the TPCH, a communication including a unique
`transaction ID code. Pet. 13 (citing Ex. 1005, 5:63–64, 7:46–48, 9:26–30,
`9:35–42, 9:51–59, 28:50–29:12, 30:23–27; Ex. 1003 ¶¶ 84–97).
`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. Pet. 14–15 (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, 28:50–29:12, 34:25–27; Ex. 1003 ¶¶ 85–89). As to whether Ludtke
`teaches wirelessly sending one or more codes for authentication by a third-
`party trusted authority, 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 16 (citing Ex. 1005, 9:26–42;
`Ex. 1003 ¶ 90). Petitioner’s showing as to these aspects of claim limitation
`1d is sufficient, at this stage of the proceeding.
`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
`
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`IPR2024-00234
`Patent 9,298,905 B1
`retailers and vendors’ that complete the transaction.” Pet. 16–17 (quoting
`Ex 1005, 9:35–39; citing Ex. 1005, Fig. 6; Ex. 1003 ¶ 92). 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
`18–19 (quoting Ex. 1005, 7:44–48; citing Ex. 1005, 9:26–30, 9:52–59;
`Ex. 1003 ¶ 92). Petitioner also asserts that persons of ordinary skill in the
`art would have understood that the TPCH compares the received transaction
`device ID to one or more transaction IDs previously stored in the customer
`databases because “[t]he TPCH uses the unique ID of the transaction device
`to process the transaction” and “knows which transaction device, and hence
`which user, the transaction it associated with.” Id. at 21 (quoting Ex. 1005,
`29:12–14, 30:23–27; Ex. 1003 ¶ 96).
`As to claim limitation 1e, 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. 21–22 (citing Ex. 1005, 6:36–44, 28:26–31, 28:50–29:23;
`Ex. 1003 ¶¶ 98–100). Petitioner observes that the approved transaction may
`relate to a purchase made using the web browser or in a retail situation
`where the user or a store clerk specifies the items to be purchased, where the
`approval allows the user to complete a financial transaction by allowing the
`user to receive the purchased items. Id. at 22 (citing Ex. 1005, 22:9–15,
`28:26–31, 28:34–35; Ex. 1003 ¶ 100). Petitioner’s showing as to claim
`limitation 1e is sufficient, at this stage of the proceeding.
`b) Patent Owner’s Arguments
`Patent Owner argues that the TPCH of Ludtke is not a “third-party
`trusted authority” because it “is an active participant in transactions between
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`IPR2024-00234
`Patent 9,298,905 B1
`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 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 tru
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