PTAB

IPR2017-00726

Askeladden LLC v. Verify Smart Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Verifying a User's Identity in Electronic Transactions
  • Brief Description: The ’648 patent discloses a system for verifying a user’s identity during an electronic transaction. The method involves pre-enrolling a user with a secure identifier (e.g., a PIN), which is stored in a verifier's database. When a transaction is initiated, the verifier sends an identity verification request to the user's mobile device, the user inputs the PIN, and the verifier compares the entered PIN with the stored one to authorize the transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 and 19 are obvious over Law in view of Dua.

  • Prior Art Relied Upon: Law (Application # 2005/0184145) and Dua (Application # 2006/0165060).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Law disclosed a "secure wireless authorization system" that is nearly identical to the system claimed in the ’648 patent. Law’s system performs real-time authorization by sending a request to a user’s wireless device, prompting the user to enter a PIN, which is then verified by an authorization server. Petitioner contended that any claim elements not explicitly taught by Law would have been obvious additions based on the teachings of Dua. Specifically, Dua taught common and necessary implementation details, such as pre-enrolling a user by assigning and storing a PIN, downloading local software onto a user's device for handling transactions, and using a database "flag" to indicate whether authentication is required for an account.
    • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Law and Dua because both references are in the same field of electronic transaction processing and user authentication. A POSITA implementing Law's authorization system would have naturally turned to well-known techniques, as taught by Dua, to address predictable implementation needs. For example, downloading software "over the air" (taught by Dua) was a known, convenient method for deploying applications on wireless devices like those used in Law's system. Similarly, using a simple flag to manage account settings was a basic and obvious programming choice.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the references involved applying known, predictable solutions (from Dua) to a known system (from Law) to achieve expected improvements in functionality and convenience.

Ground 2: Claims 16-18 are obvious over Law and Dua in view of Salveson.

  • Prior Art Relied Upon: Law (Application # 2005/0184145), Dua (Application # 2006/0165060), and Salveson (Patent 6,886,741).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Law and Dua from Ground 1 to argue that claims 16-18 are also obvious. These claims add limitations related to using a "proxy transaction card" to access and authorize transactions against one of multiple user accounts. Petitioner argued that Salveson disclosed this exact functionality with its "all-purpose consumer transaction system" using a "universal card." Salveson taught a system where a single card could be used for various transactions, with a central processing center storing information for multiple underlying accounts (e.g., different credit cards) and facilitating transactions against the user-selected account.
    • Motivation to Combine: A POSITA would combine Salveson's universal card concept with the secure authentication scheme of Law and Dua to solve the well-known problem of consumers having to carry multiple credit and debit cards. Salveson’s system was designed to increase convenience, and its transparent operation was compatible with the security measures taught by Law and Dua. The combination would provide the benefit of a single universal card (from Salveson) with the enhanced, device-specific security of a PIN-based mobile verification (from Law and Dua), addressing both convenience and fraud prevention.
    • Expectation of Success: A POSITA would have readily combined these teachings with a reasonable expectation of success, as it involved integrating a known convenience feature (a universal card) with a known security protocol to yield the predictable result of a more convenient and secure transaction system.

4. Key Claim Construction Positions

  • "device identifier": Petitioner argued that since this term is not defined in the specification outside of repeating the claim language, it should be construed based on the related disclosure of "device identification information." Based on this, Petitioner proposed the construction: "device identification information that can be used to identify a particular device, including alphanumeric representations such as CPU serial numbers, device keys, certificates, SIM numbers, IMEI numbers, or phone numbers." This construction was important for claim 19, which required comparing a stored device identifier with one obtained from the user's device.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-19 of the ’648 patent as unpatentable.