IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Ex Parte Reexamination of
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`U.S. Patent No. 9,298,905
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`Inventor: John J. Giobbi
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`Assignee: Proxense, LLC
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`Control No. 90/015,053
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`Issue Date: March 29, 2016
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`Confirmation No. 7424
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`Art Unit: 3992
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`Examiner: Carlson, Jeffrey D.
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`Title: BIOMETRIC PERSONAL DATA KEY (PDK) AUTHENTICATION
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`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`INTERVIEW SUMMARY
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`Patent Owner thanks Examiner Jeffery D. Carlson, Reexamination Specialist C. Michelle
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`Tarae, and Supervisory Patent Examiner Michael Fuelling for the interview conducted on October
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`9, 2024.
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`Prior to the Interview, Patent Owner submitted and an Agenda detailing why a request for
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`adverse judgement under 37 C.F.R. § 42.73(b) will be filed in IPR2024-00234. As noted in the
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`Agenda, in Google, LLC. v. Proxense, LLC, IPR2024-00234, Decision Granting Institution, Paper
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`10 at 10-11 (PTAB July 23, 2024), the PTAB apparently construed “financial transaction” as
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`recited in claims 1, 9, and 13 as including transactions in which the principal parties are a merchant
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`(e.g., grocery store) and a user. Financial transactions in which the principal parties are a user and
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`merchant, however, lack written description support and/or are not enabled by the 905 Patent. The
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`claims, as apparently construed by the PTAB in IPR2024-00234, therefore, are invalid under 35
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` 1
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`Patent Owner Exhibit 2016, Page 1 of 6
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`U.S.C. § 112 irrespective of the prior art. This renders moot the Final Rejection and Appeal in the
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`present proceedings, as well as
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`the grounds
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`for
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`invalidity asserted
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`in
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`IPR2024-
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`00234. Accordingly, Patent Owner will be filing a request for adverse judgement under 37 C.F.R.
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`§ 42.73(b) in IPR2024-00234.
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`In support of construing the claims to encompass financial transactions in which the
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`principal parties to the transaction are a merchant and a user, the PTAB stated the following:
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`“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, 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.”
`IPR2024-00234, Paper 10 at 10-11 (emphasis added).
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`Figures 3 and 4, however, neither disclose nor enable a transaction between a grocery store
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`and customer. Rather, Figures 3 and 4 depict a system and method the 905 patent details as
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`conforming with Figure 7, which the PTAB found discloses a transaction where “the parties to the
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`transaction are the user and the application.”
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`Figure 7 (reproduced below) details the code utilized to authenticate a biometric key in the
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`method 400 for authenticating a biometrically verified user. Method 400 is illustrated in Figure 4
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`(reproduced below). Specifically, the 905 Patent states:
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`“The code is utilized to authenticate the biometric key itself 450, 460 as described
`below with reference to FIG. 7 and profile information is received. Responsive to
`successful authentication of
`the key, access
`is allowed 470
`to
`the
`application.” 905 Patent, 7:23-28 (emphasis added).
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`Patent Owner Exhibit 2016, Page 2 of 6
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`Accordingly, Figure 4 incorporates Figure 7. Consequently, as Figure 7 depicts a
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`transaction in which “the parties are the user and the application,” Figure 4 must also depict a
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`transaction in which the parties are the user and the application, and not a transaction in which the
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`parties are a customer and grocery store.
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`Figure 3 (reproduced below) also fails to show a transaction in which the parties are a user
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`and a merchant.
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`Patent Owner Exhibit 2016, Page 3 of 6
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`With regards to Figure 3, the 905 Patent states:
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`“Further, in one embodiment, authentication module 310 provides the code to
`trusted key authority 320 in order to verify that it belongs to a legitimate key (e.g.,
`when application 330 is security-critical). Authentication module 310 can send a
`to application 330, or otherwise
`allow
`access
`to
`the
`message
`application, responsive to a successful authentication by trusted key authority
`320.”905 Patent, 6:13-19 (emphasis added).
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`Authentication module 310 providing the code to trusted key authority 320 corresponds to
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`step 710 of Figure 7 (“Wirelessly Receive The Code”) and step 450 of Figure 4 (“Request
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`Authentication”). Furthermore, authentication module 310 sending a message to application 330
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`responsive to successful authentication by trusted key authority 320 corresponds to step 740 of
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`Figure 7 (“Send Access Message To The Application”). Accordingly, Figure 3 is analogous to
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`Figure 7 and therefore depicts a transaction in which the parties are the user and the application,
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`and not a transaction in which the parties are a customer and grocery store.
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`As with Figures 3 and 4, the passage cited by the PTAB fails to describe a transaction
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`between a user and merchant. The passage cited by the PTAB reads:
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` 4
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`Patent Owner Exhibit 2016, Page 4 of 6
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`“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. The list can be batched or updated each time a new
`user/key is enrolled. In one embodiment, trusted key authority 320 can also store a
`profile associated with a biometric key. The profile describes the user associated
`with the key, the key itself, the trusted key authority, and/or other relevant
`information. In one embodiment, the functionality of trusted key authority 320 is
`provided by a server or other computerized device.”
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`“In an open system, where unknown users can attempt authentication (e.g., in a
`public grocery store), trusted key authority 320 provides verification that a key
`presenting a certain code is legitimate.”905 Patent, 6:39-53 (emphasis added).
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`Only once does the passage mention a merchant, but not as a party to a
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`transaction. Rather, the merchant is only mentioned as the location of the transaction – “in a
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`public grocery store.” Accordingly, the passage does not describe a transaction in which the
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`parties are a user and a merchant.
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`As the above demonstrates, the portions of the 905 Patent cited by the PTAB in support of
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`its apparent construction fail to describe a transaction in which the parties are a user and
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`merchant. Only
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`transactions
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`in which parties are a user and application are
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`described. Consequently, the PTAB’s apparent construction of a “financial transaction” lacks
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`written description and/or is not enabled by the specification of the 905 Patent. Therefore, the
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`claims of the 905 Patent, as apparently construed by the PTAB in IPR2024-00234, are invalid
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`under 35 U.S.C. § 112, irrespective of the prior art. This renders moot the Final Rejection and
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`Appeal in the present proceedings, as well as the grounds for invalidity asserted in IPR2024-00234.
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`SPE Fuelling advised Mr. Zak that irrespective of filing a request for adverse judgement
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`under 37 C.F.R. § 42.73(b) in IPR2024-00234, the proceedings would be maintained because inter
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`Patent Owner Exhibit 2016, Page 5 of 6
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`partes review was not instituted on dependent claim 8. No agreement, consequently, was reached
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`on how to terminate the proceedings to save the Office time and effort.
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`With this Interview Summary, Patent Owner has filed a Statutory Disclaimer under 35
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`U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming the entire term of U.S. Patent No. 9,298,905,
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`thereby rendering the proceedings moot.
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`October 10, 2024
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`Respectfully submitted by:
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`/James A. Zak, Esq./
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`Attorney for Patent Owner
`Proxense, LLC
`Reg. No. 60,190
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`Hecht Partners LLP
`125 Park Ave. 25th Floor
`New York, NY 10017
`E: jzak@hechtpartners.com
`P: (651) 357-8517
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`Patent Owner Exhibit 2016, Page 6 of 6
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