PTAB

IPR2018-00810

Apple Inc v. Universal Secure Registry LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Authenticating an Identity
  • Brief Description: The ’826 patent describes systems for authenticating a user's identity through a two-device process. A handheld "first device" scans a user's biometric information to generate authentication data, which is then transmitted wirelessly to a "second device" (e.g., a database server) for remote verification against stored information.

3. Grounds for Unpatentability

Ground 1: Obviousness over Maritzen, Jakobsson, and Niwa - Claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 are obvious over [Maritzen](https://ai-lab.exparte.com/case/ptab/IPR2018-00810/doc/1004) in view of [Jakobsson](https://ai-lab.exparte.com/case/ptab/IPR2018-00810/doc/1005) and [Niwa](https://ai-lab.exparte.com/case/ptab/IPR2018-00810/doc/1007).

  • Prior Art Relied Upon: Maritzen (Application # 2004/0236632), Jakobsson (WO 2004/051585), and Niwa (Patent 6,453,301).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims. Maritzen was presented as the primary reference, disclosing the foundational two-device authentication system. It described a handheld "personal transaction device" (PTD) that captures biometric data and a remote "clearing house" server that verifies a "biometric key" transmitted from the PTD. This established the claimed "first device" and "second device" architecture.

    • To supply missing details, Petitioner asserted that Jakobsson taught key security and processing enhancements. Specifically, Jakobsson disclosed deriving authentication information from biometric data using a cryptographic "combination function" (e.g., a one-way hash), which protects the underlying biometric data from being transmitted. Jakobsson also taught a distributed system where the verifier could be implemented on a separate server, receiving authentication data wirelessly. This mapped to claim limitations requiring derivation of authentication information and specific processor configurations.

    • Niwa was used to supplement Maritzen's disclosure regarding local authentication on the handheld device. Petitioner argued Niwa taught comparing newly scanned biometric data against biometric data stored locally in the device's memory to enable or disable its use. This mapped directly to dependent claims requiring such a comparison.

    • Motivation to Combine: Petitioner asserted several motivations for a person of ordinary skill in the art (POSITA) to combine the references.

      • Maritzen and Niwa: A POSITA would combine Niwa with Maritzen because Maritzen expressly incorporated the Niwa application by reference as a "suitable biometric control device." Therefore, its teachings were argued to be part of Maritzen's specification. The combination was also presented as the predictable application of a known technique (Niwa's local biometric validation) to improve a similar device (Maritzen's PTD).
      • Maritzen/Niwa and Jakobsson: A POSITA would combine Jakobsson with the Maritzen/Niwa system because all three references operate in the same field of secure financial transactions and address the same problem of preventing electronic fraud. A POSITA would have been motivated to incorporate Jakobsson's cryptographic techniques for deriving authentication information to improve the security of Maritzen's system by preventing the transmission of identifying biometric data. Furthermore, combining Jakobsson's distributed processing concepts with Maritzen's architecture was argued to be a predictable way to improve system efficiency.

    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success because the combination involved applying known security and processing techniques from Jakobsson and Niwa to the known authentication framework of Maritzen. This combination of prior art elements according to their established functions would predictably result in a more secure and efficient authentication system, as described in the ’826 patent.

4. Key Claim Construction Positions

  • "biometric information": Petitioner argued for the construction "information about a user's physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph." This construction was central to distinguishing physical traits from knowledge-based factors. Petitioner asserted that although the patent specification once inconsistently listed a "personal identification number (PIN)" as biometric information, the overwhelming context of the patent and the understanding of a POSITA would exclude PINs, as they are not physical characteristics.
  • "authentication information": Petitioner proposed the construction "information used by the system to verify the identity of an individual." This broader term was argued to encompass not only biometric information but also other verifiers like PINs or passcodes, consistent with the patent's disclosure.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 7, 8, 10, 11, 14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 of the ’826 patent as unpatentable.