PTAB

CBM2019-00025

Visa Inc v. Universal Secure Registry LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’813 patent describes a system for verifying an account holder’s identity before enabling a financial transaction at a Point-of-Sale (POS) device. The system uses an electronic identification device that accepts biometric and/or secret information (e.g., a PIN) to authenticate a user and communicate with a remote "Universal Secure Registry" to authorize the transaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maes and Jakobsson - Claims 1-2, 4-5, 11, 13, 16-20, and 24 are obvious over Maes in view of Jakobsson.

  • Prior Art Relied Upon: Maes (Patent 6,016,476) and Jakobsson (International Publication No. WO 2004/051585).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maes disclosed the core elements of the independent claims, including an electronic ID device (a PDA) that allows a user to select a financial account and authenticates the user via biometric input or a PIN before communicating with a POS terminal and a remote financial institution (a secure registry). Petitioner contended that Maes, however, did not explicitly teach generating encrypted authentication information from a non-predictable value. Jakobsson was introduced to supply this element, as it disclosed a system that generates a non-predictable authentication code from a combination of a secret key, a dynamic time-varying value, and user data (such as a PIN or biometric information).
    • Motivation to Combine: A POSITA would combine Jakobsson’s more robust, dynamic encryption method with Maes’s established transaction system to improve security and prevent fraud. Both references addressed the same problem of secure user authentication for transactions using handheld devices and remote servers, making the combination a predictable solution to a known problem.
    • Expectation of Success: A POSITA would have reasonably expected success in applying Jakobsson's cryptographic functions to the Maes system, as it involved implementing a known security technique on a known type of transaction platform to achieve the predictable result of enhanced security.

Ground 2: Obviousness over Maes, Jakobsson, and Maritzen - Claims 6-10 are obvious over Maes and Jakobsson in view of Maritzen.

  • Prior Art Relied Upon: Maes (Patent 6,016,476), Jakobsson (WO 2004/051585), and Maritzen (Application # 2004/0236632).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Maes and Jakobsson combination to address claim 6, which required the electronic ID device to prevent user input if biometric authentication failed. Petitioner asserted that Maritzen taught this specific feature, describing a personal transaction device that remains locked (preventing user input) until a user's identity is successfully verified through biometric authentication.
    • Motivation to Combine: Petitioner argued that a POSITA would be motivated to incorporate Maritzen’s "lock-until-authenticated" feature into the Maes/Jakobsson system as a further security enhancement. This addition would directly address the problem of unauthorized device use, particularly if the device were lost or stolen, by ensuring the device is inoperable until the authorized user is biometrically verified.
    • Expectation of Success: Integrating a known locking mechanism based on authentication failure (from Maritzen) into a secure transaction device (from Maes/Jakobsson) was a straightforward design choice that would predictably result in a more secure device.

Ground 3: Obviousness over Maes, Jakobsson, and Labrou - Claims 14, 15, 22, 23, 25, and 26 are obvious over Maes and Jakobsson in view of Labrou.

  • Prior Art Relied Upon: Maes (Patent 6,016,476), Jakobsson (WO 2004/051585), and Labrou (Application # 2004/0107170).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed claims requiring the user interface to display options for purchase and accept user selections of products or services. Petitioner argued that Labrou disclosed a consumer-operated mobile device with a user interface for browsing and purchasing virtual or physical goods, such as selecting a show and purchasing a ticket.
    • Motivation to Combine: A POSITA would have been motivated to add the user interface capabilities of Labrou to the secure authentication framework of Maes/Jakobsson to improve the system's commercial functionality. Since the Maes/Jakobsson combination already facilitated secure financial transactions, incorporating a conventional e-commerce interface for selecting items to purchase was a logical and desirable extension.
    • Expectation of Success: Combining a standard purchase interface with a secure payment authentication system was a well-known practice in the art, and a POSITA would have expected this integration to work predictably.

4. Key Claim Construction Positions

  • Biometric Input: Petitioner proposed this term means "information about a user’s physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph." Petitioner argued this construction was critical because the patent specification distinguished biometric information from a PIN, despite one inconsistent passage.
  • Secret Information: Proposed as "information known and input by an authorized user, such as a PIN, a phrase, a password, or a passcode of the user." This construction was based on consistent descriptions in the specification.
  • Secure Registry: Proposed as "a database with access restrictions." This construction was argued to be consistent with its function of receiving and verifying encrypted authentication information.

5. Key Technical Contentions (Beyond Claim Construction)

  • Invention Lacks Technological Novelty: A central contention for qualifying for Covered Business Method (CBM) review was that the ’813 patent was not directed to a "technological invention." Petitioner argued the patent merely claimed the use of well-known, conventional components (e.g., general-purpose processors, biometric sensors, standard communication interfaces) to automate the fundamental economic practice of identity verification for a financial transaction. The patent itself allegedly conceded that its methods could be implemented on generic computer systems.

6. Arguments Regarding Discretionary Denial

  • Joinder with Prior-Instituted Petition: Petitioner filed this petition with a motion for joinder to CBM2018-00024, a CBM review petition filed by Apple Inc. against the same patent that the Board had already instituted. Petitioner argued that it was proposing the same grounds of unpatentability and relying on the same analysis and evidence, thereby promoting administrative efficiency and avoiding inconsistent results.

7. Relief Requested

  • Petitioner requested institution of a Covered Business Method review and cancellation of claims 1-2, 4-11, 13-20, and 22-26 of the ’813 patent as unpatentable under 35 U.S.C. §103.