PTAB

IPR2018-01351

Visa Inc v. Universal Secure Registry LLC

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Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’539 patent is directed to a secure registry system that enables anonymous online transactions. The system allows an entity to conduct a transaction with a provider by using a time-varying multicharacter code, which prevents the entity’s secure information, such as a credit card number, from being disclosed directly to the provider.

3. Grounds for Unpatentability

The petition asserted a single ground for unpatentability under 35 U.S.C. §103.

Ground 1: Obviousness over Junda and Brody - Claims 1-9, 16-31, 37, and 38 are obvious over Junda in view of Brody.

  • Prior Art Relied Upon: Junda (WO 01/13275) and Brody (U.S. Patent Application No. 09/786,719).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Junda disclosed the foundational elements of the claimed secure registry system for enabling anonymous online transactions. Junda described a "proxy agent" system that maintains a database of a user's real information (e.g., name, credit card number) and generates corresponding "proxy data" for use in transactions, thereby concealing the user's real information from merchants. Petitioner contended that Junda’s proxy data was time-limited (e.g., had an expiration date) but not explicitly "time-varying" as required by the claims. Petitioner asserted that Brody supplied this missing element. Brody taught a system for anonymous transactions that created "dynamic mappings" of consumer credit card numbers to "pseudo-random" numbers, which were used in place of the real card number. Petitioner argued that Brody’s "dynamic" mapping inherently teaches a time-varying code, as the pseudo-random numbers change over time.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Junda and Brody to improve the security and user experience of Junda's established anonymous transaction framework. Petitioner argued that since Junda already taught time-dependent (expiring) proxy data, it would have been a simple and logical step to incorporate Brody's teaching of dynamic, time-varying codes. This modification would enhance security against fraud and improve usability by eliminating the need for a user to manually obtain a new proxy code after an old one expired; the code would instead update automatically. Both references addressed the same problem of secure e-commerce and employed similar proxy-based techniques, making the combination straightforward.
    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success in combining the references. The combination involved applying a known technique (Brody’s time-varying codes) to a similar system (Junda’s proxy transaction system) to achieve a predictable improvement in security and convenience. No significant technical challenges would have prevented the successful integration of these known elements.

4. Key Claim Construction Positions

Petitioner asserted that its unpatentability arguments were valid under the broadest reasonable interpretation standard and also under a narrower Phillips-type construction. Two constructions were highlighted as important.

  • "entity": Petitioner proposed this term should be construed to mean a "purchasing party to a transaction who has data stored in the secure registry." This construction anchors the term to the user or customer within the transaction context described by the patent.
  • "based at least in part on the indication of the provider and the time-varying multicharacter code of the transaction request": Petitioner argued this phrase in independent claims 1 and 22 modifies the preceding clause, "completing the transaction." Under this interpretation, the completion of the transaction is based on the provider's identity and the user's code. Petitioner distinguished this from an alternative reading where the access restrictions themselves must be based on the provider and code. Petitioner maintained that the claims were rendered obvious by the prior art under either interpretation.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review (IPR) and the cancellation of claims 1-9, 16-31, 37, and 38 of the ’539 patent as unpatentable.