PTAB

IPR2018-00067

Unified Patents Inc. v. Universal Secure Registry LLC

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1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for Authenticating Identity and Transmitting Information
  • Brief Description: The ’813 patent relates to systems and methods for authorizing a financial transaction between a wireless electronic device and a point-of-sale (POS) device. The system uses a secure registry that stores user information, including biometric data, to authenticate the user's identity before completing the transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 11-17, and 19-26 are obvious over Maes in view of Pare and Labrou.

  • Prior Art Relied Upon: Maes (Patent 6,016,476), Pare (Patent 5,870,723), and Labrou (Application # 2004/0107170).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maes, which was not cited during prosecution, teaches the foundational system of a portable electronic device (a PDA) capable of storing multiple financial accounts and communicating with a central server ("secure registry") for identity verification using biometrics. Petitioner contended that while Maes discloses most limitations of independent claims 1 and 16, it fails to teach generating encrypted authentication information from a non-predictable value. This element, Petitioner argued, is supplied by Pare and Labrou. Pare was asserted to teach a tokenless transaction system that encrypts a biometric sample and a PIN using a non-predictable DES key. Similarly, Labrou was argued to teach encrypting transaction information using a PIN and a "random sequence number" (a non-predictable value).
    • Motivation to Combine: A POSITA would combine these references to improve the security of financial transactions, an objective shared by all three references. Petitioner asserted a POSITA would have been explicitly motivated by Maes's own disclosure that its invention "may employ any known encryption technique or algorithm" to incorporate the more specific and secure encryption methods taught by Pare and Labrou.
    • Expectation of Success: The proposed combination would have involved only minor software modifications to the Maes system and would have yielded the predictable result of enhanced transaction security.

Ground 2: Claims 6-10 and 18 are obvious over Maes, Pare, and Labrou in further view of Burger.

  • Prior Art Relied Upon: Maes (Patent 6,016,476), Pare (Patent 5,870,723), Labrou (Application # 2004/0107170), and Burger (WO 2001/024123).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding the Burger reference to address limitations recited in dependent claims, particularly claim 6. Petitioner asserted that Burger, which teaches a "pocket vault" device, discloses the feature of claim 6: not permitting further user input if the initial biometric authentication fails. Burger was said to teach that if a fingerprint does not match, the user is restricted to non-secure menu options like "Try Again" or "End Session."
    • Motivation to Combine: A POSITA would incorporate Burger's teaching of preventing user input after a failed biometric scan into the system of Maes/Pare/Labrou to further enhance security. This addition would help prevent unauthorized attempts to access a user's data and was presented as a logical step in creating a robust security protocol.

Ground 3: Claims 1-2, 5, 11, 13, 16-17, and 24 are obvious over Pizarro in view of Pare.

  • Prior Art Relied Upon: Pizarro (Patent 7,865,448) and Pare (Patent 5,870,723).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative primary reference, Pizarro, which discloses authenticating users for wireless transactions via a cell phone communicating with POS devices and financial institutions. Petitioner argued that Pizarro teaches most of the claimed elements, including a wireless device for selecting from multiple accounts, a biometric sensor, and communication with a secure registry (the financial institution's host system). However, Petitioner contended that Pizarro does not expressly describe receiving "secret information" (like a PIN) as part of the user input. Pare was argued to supply this element by expressly teaching an authentication system that uses both a biometric sample and a PIN.
    • Motivation to Combine: A POSITA would be motivated to combine Pare's teaching of PIN authentication with Pizarro's system to add an additional, well-understood layer of security. Petitioner argued this would be an obvious modification, particularly since Pizarro itself acknowledged the conventional use of PINs in financial systems, making the combination a predictable path to achieving multi-factor authentication.
    • Expectation of Success: Integrating PIN verification into the Pizarro framework would require only minor software modifications and would predictably result in a more secure system.

4. Key Claim Construction Positions

  • "secure registry": Petitioner proposed this term be construed as "one or more systems maintaining one or more secure databases for storing account information for a plurality of users and that perform the function of validating authentication information of users." This construction is broad enough to encompass the "central server" in Maes and the "host system" of a financial institution in Pizarro, which was central to Petitioner's mapping of the prior art to the claims.
  • "biometric input": Construed to include user input representing "something the user is," such as a fingerprint, voice print, or iris scan, consistent with the specification.
  • "secret information": Construed to include information "known by the user," such as a password, phrase, or PIN, consistent with the specification. This allowed Petitioner to map the PIN disclosures in references like Pare to this limitation.

5. Relief Requested

  • Petitioner requested that the Board institute an inter partes review and cancel claims 1-3 and 5-26 of Patent 8,577,813 as unpatentable under 35 U.S.C. §103.