PTAB

IPR2018-00808

Apple, Inc. v. Universal Secure Registry LLC

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1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’137 patent describes a system for authenticating a user to enable a financial transaction. The system uses a first device to perform local authentication based on secret information (e.g., a PIN) and biometric information, which generates and transmits a token containing authentication data to a second, remote device for final approval of the transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 5-7, 9, 10, and 12 are obvious over Maritzen in view of Gullman and Niwa.

  • Prior Art Relied Upon: Maritzen (Application # 2004/0236632), Gullman (Patent 5,280,527), and Niwa (Patent 6,453,301).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Maritzen teaches most elements of the challenged claims, including a personal transaction device (PTD) that uses a biometric sensor to authenticate a user and wirelessly communicates with a remote "clearing house" to approve a transaction. Petitioner contended, however, that Maritzen does not teach authentication based on "secret information." Gullman was argued to supply this missing element by teaching the use of a PIN for user identification in financial systems. For the limitation of retrieving stored biometric data for comparison, Petitioner asserted that Niwa taught this feature. While Petitioner argued this step was inherent in Maritzen’s "validation" process, Niwa was cited as an explicit disclosure and is also expressly incorporated by reference into Maritzen.
    • Motivation to Combine: A POSITA would combine Maritzen and Gullman because PIN-based and biometric authentication were well-known, interchangeable security methods for financial transactions, making it a simple substitution to enhance security. The motivation to incorporate Niwa's teachings was high, as Niwa is expressly incorporated by reference in Maritzen. Applying Niwa's method of retrieving stored biometric data was a known technique to enable the comparison and validation function of a known device (Maritzen's PTD).
    • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination because all three references operate in the same field of secure electronic transactions, address the same problem of fraud, and use similar system architectures, making their integration predictable.

Ground 2: Claims 8 and 11 are obvious over Maritzen in view of Gullman, Niwa, and Schutzer.

  • Prior Art Relied Upon: Maritzen (Application # 2004/0236632), Gullman (Patent 5,280,527), Niwa (Patent 6,453,301), and Schutzer (European Patent Application Publication No. EP 1028401).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on Ground 1 by adding Schutzer to address the additional limitations of dependent claims 8 and 11. Petitioner argued that Schutzer teaches the limitation of claim 8: using a "multidigit public ID code" (an "alternate card number") in place of a real credit card number, which is then mapped to the actual account by the card issuer. This protects the real account number during transmission. Petitioner further argued that Schutzer teaches the limitation of claim 11 by disclosing that the remote authentication entity can be a "networked credit card validation-information entity," such as a card issuer's server that performs this mapping and authorization.
    • Motivation to Combine: A POSITA would be motivated to add Schutzer's teachings to the base combination from Ground 1 to further enhance security, which is the primary goal of all the cited references. Using an alternate or anonymous card number was a known technique for obscuring sensitive data to prevent fraud if transaction data were intercepted. Adding this known data protection method to the secure authentication system of Maritzen/Gullman was presented as an obvious improvement.
    • Expectation of Success: The combination would have been successful and predictable because Schutzer is in the same technical field and addresses the identical problem of protecting sensitive account information during electronic transactions.

4. Key Claim Construction Positions

  • "Biometric Information": Petitioner argued this term should be construed as "information about a user’s physical characteristics, such as fingerprint, voice print... or personal photograph." This construction was asserted to be critical for distinguishing biometric data from other identifiers like a PIN, thereby establishing that prior art teaching PIN-based authentication (Gullman) was non-redundant. Petitioner acknowledged one inconsistent passage in the ’137 patent that listed a PIN as an example of biometric data but argued the overwhelming weight of the intrinsic record supported a construction limited to physical traits.
  • "Secret Information": This term was construed as "information known and input by an authorized user, such as a PIN, a phrase, a password, or a passcode." This construction was proposed to map directly to the teachings of Gullman, which discloses using a PIN to identify and authorize a user for access to a financial transaction system.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 2, and 5-12 of Patent 9,530,137 as unpatentable under 35 U.S.C. §103.