1:19-cv-08559
Veridium US LLC v. Hector Thaddeuss Hoyos Aliff
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Veridium US L.L.C. (Delaware) and Veridium IP Limited (United Kingdom)
- Defendant: Hector Thaddeuss Hoyos-Aliff (Connecticut)
- Plaintiff’s Counsel: Leason Ellis LLP
- Case Name: Veridium US L.L.C. v. Hector Thaddeuss Hoyos-Aliff
- Case Identification: 1:19-cv-08559, S.D.N.Y., 09/13/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant’s residence in New York and activities directed at New York, including in-person meetings and communications with Plaintiff's New York-based directors and officers regarding the inventorship dispute.
- Core Dispute: Plaintiffs seek a declaratory judgment that Defendant, a former officer, is not an inventor of three patents related to biometric authentication, contrary to Defendant’s alleged claims of inventorship.
- Technical Context: The technology involves using mobile devices and secure protocols for biometric authentication, a field critical for digital security, financial transactions, and access control.
- Key Procedural History: The complaint alleges that the patents-in-suit are continuations-in-part of prior applications that named the Defendant as an inventor. Plaintiffs allege that the Defendant was removed or not named as an inventor on the patents-in-suit because he allegedly did not contribute to the conception of the new subject matter claimed in them. The dispute arises from the Defendant’s subsequent claims, beginning around September 2018, that he is an unnamed inventor, which Plaintiffs allege clouds title to the patents. No probative visual evidence provided in complaint.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-01 | Hoyos Labs LLC established (approximate date) |
| 2013-12-31 | Earliest Priority Date for ’388 Patent |
| 2015-02-06 | Earliest Priority Date for ’458 and ’823 Patents |
| 2015-11-01 | Hoyos Labs Corp. assigns IP rights to Hoyos Labs IP Limited (approximate date) |
| 2016-03-16 | Defendant Hoyos leaves the employ of Plaintiffs' corporate predecessors |
| 2016-08-23 | ’458 Patent Issued |
| 2016-10-10 | Hoyos Labs IP Limited changes name to Veridium IP Limited |
| 2017-10-10 | ’823 Patent Issued |
| 2017-12-05 | ’388 Patent Issued |
| 2018-09-01 | Defendant Hoyos's claims of being an unnamed inventor begin (approximate date) |
| 2018-09-21 | Defendant Hoyos contacts Veridium asserting inventorship of the ’388 Patent |
| 2019-02-01 | Counsel for Veridium and Defendant Hoyos hold telephone conference on inventorship claims |
| 2019-05-30 | Counsel for Defendant Hoyos sends letter reiterating inventorship claims |
| 2019-09-13 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,838,388 - System and Method for Biometric Protocol Standards
The Invention Explained
- Problem Addressed: The patent describes the need for secure communications and authentication between a user's computing device and a remote server, particularly for accessing sensitive information or services (e.g., financial, medical) where a simple username and password are insufficient. (’388 Patent, col. 2:27-46).
- The Patented Solution: The invention provides a system where a user enrolls by providing a biometric sample (e.g., facial scan, fingerprint), which is converted into a biometric vector. This vector is cryptographically split, with one part stored on the user's device and the other on a server. For authentication, the user provides a new biometric sample, and the system compares it to the re-combined and decrypted original vector, authenticating the user if the match exceeds a threshold. This process is designed to prevent either the client or the server from holding the complete biometric key. (’388 Patent, Abstract; Fig. 12).
- Technical Importance: This approach enhances security by distributing the biometric template, meaning a compromise of either the user device or the server alone does not yield the complete biometric data needed for authentication. (’388 Patent, col. 18:4-14).
U.S. Patent No. 9,424,458 - Systems and Methods for Performing Fingerprint Based User Authentication Using Imagery Captured Using Mobile Devices
The Invention Explained
- Problem Addressed: The patent notes that while some smartphones include dedicated fingerprint sensors, these sensors add cost and size, capture only a small portion of the fingerprint, and can be subject to "spoof attacks." Using a standard mobile device camera for fingerprinting was previously considered not reliable enough for high-security applications. (’458 Patent, col. 1:57-2:35).
- The Patented Solution: The invention uses a standard mobile device camera to capture an image of multiple fingers simultaneously. The system's software then detects the fingers in the image, identifies the specific fingertip segments, extracts discriminatory features (minutiae), and generates a biometric identifier. The process also includes techniques for determining "liveness" to prevent spoofing, for example by analyzing reflections from the camera flash on the finger ridges. (’458 Patent, Abstract; col. 2:40-56).
- Technical Importance: This system aims to provide reliable, multi-finger biometric authentication on ubiquitous mobile devices without requiring specialized hardware, thereby increasing accessibility and potentially improving security over single-finger sensor systems. (’458 Patent, col. 4:26-34).
U.S. Patent No. 9,785,823 - Systems and Methods for Performing Fingerprint Based User Authentication Using Imagery Captured Using Mobile Devices
Technology Synopsis
As a continuation of the application leading to the ’458 Patent, the ’823 Patent addresses the same technical problem of enabling reliable fingerprint authentication using standard mobile device cameras (Compl. ¶37; ’823 Patent, col. 1:11-25). The described solution similarly involves capturing imagery of multiple fingers, processing the imagery to identify fingertips, and extracting biometric features for authentication and liveness detection (’823 Patent, Abstract).
Asserted Claims
The complaint does not assert specific claims for infringement but seeks a declaratory judgment of inventorship for the patent as a whole (Compl. ¶¶96-106).
Accused Features
This is not an infringement action. Plaintiffs seek a judgment that Defendant Hoyos is not an inventor of the patent (Compl. ¶100).
III. Analyst’s Conclusion: Key Questions for the Case
This case is a declaratory judgment action centered on inventorship, not patent infringement. The central questions for the court will likely involve factual and legal inquiries into the conception of the patented inventions.
A core issue will be one of contribution to conception: what evidence will be presented to establish whether Defendant Hoyos contributed to the conception of the specific subject matter claimed in the ’388, ’458, and ’823 patents? The analysis will likely focus on the novel elements added in these continuation-in-part applications, as distinguished from the subject matter disclosed in the parent applications where Hoyos was a named inventor.
A key evidentiary question will be one of corroboration: under U.S. patent law, an alleged inventor’s testimony concerning their contribution to conception must be corroborated by independent evidence. The dispute may turn on what, if any, corroborating evidence—such as documents, emails, or testimony from others—each party can produce to support their position on Hoyos's alleged inventive contributions.
A central legal question will be the standard for inventorship: the court will have to apply the legal standard that to be a joint inventor, an individual must have contributed in some significant manner to the conception of the invention. This involves more than merely explaining well-known concepts or suggesting a desired result. The court’s decision will depend on whether the facts show Hoyos’s alleged contributions rose to this level for the specific claims at issue.