PTAB

IPR2018-00813

Apple Inc v. Universal Secure Registry LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Systems and Methods for User Authentication Using Biometric Information
  • Brief Description: The ’826 patent discloses a distributed authentication system for authenticating a user's identity. The system uses a first handheld device to locally gather biometric information and a second, remote device to perform a remote authentication based on information received from the first device.

3. Grounds for Unpatentability

Ground 1: Anticipation over Jakobsson - Claims 1, 2, 10, 11, 21, 22, 24, 27, 30, and 31 are anticipated by Jakobsson.

  • Prior Art Relied Upon: Jakobsson (International Publication No. WO 2004/051585).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jakobsson disclosed every element of the challenged independent claims. Jakobsson’s system comprises a "user authentication device 120" (the claimed first handheld device) and a "verifier 105" (the claimed second device). Petitioner asserted that Jakobsson's handheld device is configured to receive biometric information (e.g., a fingerprint), derive a "first authentication information" (an authentication code) from it, and wirelessly transmit this information to the verifier. The verifier then receives this information and compares it with a "second authentication information" that it generates independently to authenticate the user, thus meeting the core limitations of independent claims 1, 10, 21, and 30. For dependent claim 2, Petitioner argued Jakobsson teaches that the verifier stores biometric data for multiple users and uses this stored data to determine the second authentication information.

Ground 2: Obviousness over Jakobsson, Verbauwhede, and Maritzen - Claims 7, 14, 26, and 34 are obvious over Jakobsson in view of Verbauwhede and Maritzen.

  • Prior Art Relied Upon: Jakobsson (WO 2004/051585), Verbauwhede (International Publication No. WO 2005/001751), and Maritzen (Application # 2004/0236632).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims requiring the first handheld device to perform a local authentication to enable or disable its use. Petitioner asserted that while Jakobsson taught the foundational two-device authentication system, it did not explicitly teach this local enable/disable feature. Verbauwhede was cited for its disclosure of a handheld "thumbpod" that performs a local comparison by loading a stored fingerprint template and matching it against a newly received fingerprint to authenticate a user. Maritzen was cited for its disclosure of a handheld device processor that unlocks the device and limits access to authorized users based on the result of a successful biometric comparison.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine these references to improve the security of the handheld device itself, a well-known problem in the field. Adding Verbauwhede's local matching and Maritzen's device-unlocking function to Jakobsson's system was presented as a predictable application of known techniques to improve a similar device. All three references are in the field of secure financial transactions and address the common problem of electronic fraud.
    • Expectation of Success: Success was expected because the combination involved applying known techniques (local biometric comparison for device access) to a known system (a handheld authentication device) to achieve a predictable result (improved local security).

Ground 3: Obviousness over Jakobsson and Gullman - Claims 8 and 15 are obvious over Jakobsson in view of Gullman.

  • Prior Art Relied Upon: Jakobsson (WO 2004/051585) and Gullman (Patent 5,280,527).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground targeted dependent claims requiring the first handheld device to include a memory configured to store biometric information for a "second plurality of users." Petitioner contended that Jakobsson’s handheld device includes on-board memory coupled to its processor but does not explicitly state it stores data for multiple users. To supply this limitation, Petitioner cited Gullman, which discloses a "biometric security apparatus" that is explicitly configured to store "multiple templates for multiple users" during an enrollment mode.
    • Motivation to Combine: A POSITA would have been motivated to modify Jakobsson's device to include Gullman's multi-user storage capability to increase the device's utility and versatility. This was argued to be a simple combination of prior art elements according to known methods to yield predictable results—a common design choice for devices intended for shared or enterprise use. Both references address the same field of secure authentication and the risks of stolen tokens.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in configuring the memory of Jakobsson’s device to store multiple user templates as taught by Gullman, as this was a known and straightforward feature in the art of biometric devices.

4. Key Claim Construction Positions

  • Biometric Information: Petitioner proposed that "biometric information" should be construed as "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 Petitioner's argument because it distinguished true biometrics from other authenticators like a PIN. Petitioner argued that while one passage in the ’826 patent specification listed a PIN as an example, this was inconsistent with the rest of the disclosure and a POSITA would not have considered a PIN to be biometric information.
  • Authentication Information: Petitioner proposed construing "authentication information" as "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 data like PINs and passcodes.

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.