PTAB

CBM2019-00025

Visa Inc. v. Universal Secure Registry LLC

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1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’813 patent describes a system for authenticating a user's identity to enable a financial transaction at a Point-of-Sale (POS) device. The system uses an electronic ID device and a central "Universal Secure Registry" (a secure database) to verify identity using a combination of inputs, including biometric information and secret information like a PIN.

3. Grounds for Unpatentability

Ground 1: 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 (WO 2004/051585).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maes disclosed the core elements of independent claims 1, 16, and 24. Maes taught a portable electronic ID device (a PDA) that stores multiple financial accounts, authenticates a user via biometric or secret information (PIN), and communicates with a remote financial institution (a "secure registry") via a POS terminal to conduct a transaction. Petitioner contended that Jakobsson supplied the remaining key limitation: generating encrypted authentication information from a non-predictable value. Jakobsson taught a system where an authentication device generates a non-predictable, time-varying value and combines it with secret information (e.g., a PIN) and a device-specific secret key to create secure, encrypted authentication data for verification by a remote server.
    • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Jakobsson’s advanced authentication method with Maes’s established transaction system to enhance security. Both references addressed the same problem of preventing electronic fraud in financial transactions. Applying Jakobsson's stronger cryptographic techniques (using non-predictable values) to Maes's system represented a predictable improvement to achieve a more robust and secure system.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references involved applying a known security technique (Jakobsson's authentication algorithm) to a known type of system (Maes's transaction framework) to achieve the predictable result of enhanced security.

Ground 2: 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 combination of Maes and Jakobsson to address dependent claims 6-10. Claim 6 added the limitation that the electronic ID device "does not permit the entry of the user input" if the initial biometric authentication fails. While Petitioner argued Maes implicitly taught this by prohibiting the transaction upon failed verification, it introduced Maritzen as explicitly disclosing this feature. Maritzen described a personal transaction device that remains locked, preventing user input, until the user is successfully authenticated via biometrics.
    • Motivation to Combine: A POSITA would be motivated to incorporate Maritzen’s explicit "locking" feature into the Maes/Jakobsson system as a further security measure. All three references aimed to reduce fraud, and Maritzen’s method of preventing any further user input after a failed biometric scan was an obvious way to enhance the local security of the device.

Ground 3: 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 added Labrou to the base combination to address claims requiring a user interface configured to "display options for purchase" and "accept selection of at least one product or service." Petitioner contended that to the extent Maes and Jakobsson did not explicitly detail a purchasing interface, Labrou supplied this teaching. Labrou disclosed a consumer-operated mobile device with a user interface for browsing and purchasing goods and services, including selecting items and confirming transactions.
    • Motivation to Combine: A POSITA would be motivated to integrate Labrou’s user interface capabilities for e-commerce with the secure authentication architecture of Maes and Jakobsson. This combination would create a complete, commercially useful device that not only authenticates a user securely but also provides the necessary interface for conducting the underlying purchase, representing a predictable combination of known features.

4. Key Claim Construction Positions

Petitioner proposed constructions for several terms it deemed critical to its invalidity arguments.

  • "biometric input": Proposed as "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 necessary to distinguish biometrics from secret information like a PIN, asserting that a single inconsistent disclosure in the patent describing a PIN as biometric should be disregarded in light of the specification as a whole and the understanding of a POSITA.
  • "secure registry": Proposed as "a database with access restrictions." This broad construction allowed Petitioner to map the term to prior art systems like the "financial institution" server in Maes, which performed authentication and stored user data, thereby inherently functioning as a database with access restrictions.
  • "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."

5. Key Technical Contentions (Beyond Claim Construction)

As this was a petition for Covered Business Method (CBM) review, Petitioner dedicated significant argument to why the ’813 patent qualified as a CBM patent and was not exempt as a "technological invention."

  • Petitioner argued the ’813 patent claimed only conventional, off-the-shelf technology. It asserted the patent described implementing the system using generic components like general-purpose computers, commercially available microprocessors, and standard network protocols, without disclosing any novel hardware or software.
  • Petitioner contended the patent did not solve a technical problem with a technical solution. Instead, it addressed the long-standing business problem of identity verification and fraud prevention by applying well-known computing techniques to a financial process. The alleged novelty lay in the business method itself, not in any technological innovation.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial by noting that the petition was filed with a motion for joinder to CBM2018-00024, a previously filed CBM petition by Apple Inc. challenging the same claims of the ’813 patent.
  • Petitioner highlighted that the Board had already instituted trial in the Apple CBM proceeding, and that this petition presented the "same grounds of unpatentability... and relies on the same analysis and evidence." Joinder would therefore promote efficiency and avoid 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.