PTAB

IPR2019-00478

Unified Patents Inc v. VIndolor LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Portable Identification System
  • Brief Description: The ’391 patent discloses a portable, self-contained identification system, such as a card, that uses a unique biometric trait to authenticate a user. The system generates an identification-specific digital signature based on the user's biometric data to authorize access to a secure objective, such as an ATM.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2 under §102 over Gullman

  • Prior Art Relied Upon: Gullman (Patent 5,280,527)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Gullman, which was not cited during prosecution, discloses every element of claims 1 and 2. Gullman teaches a portable biometric security apparatus, such as an integrated circuit card, that verifies a user by comparing a live biometric input (e.g., a fingerprint) against a stored template. This apparatus includes a processor that, upon successful verification, generates a security token (an "identification specific digital signature") based on the biometric input. This token is then output to a host system to grant access. Petitioner contended Gullman's processor performs the functions of the claimed "verifying means" and "code generator," and its memory serves as the "storage medium." Gullman also discloses encoding the token for secure transmission, anticipating claim 2.

Ground 2: Obviousness of Claims 1-2 under §103 over Gullman and POSITA Knowledge

  • Prior Art Relied Upon: Gullman (Patent 5,280,527) in view of the knowledge of a person of ordinary skill in the art (POSITA)
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to Ground 1, Petitioner argued that if Gullman were found not to explicitly teach "generating an identification profile" from the input biometric data (element 1.6), it would have been obvious for a POSITA to modify Gullman to do so. Gullman already disclosed generating the necessary biometric information from a sensor and comparing it to a stored template.
    • Motivation to Combine: A POSITA would have been motivated to generate a new profile or template from the live biometric input to create a corresponding data structure for a more appropriate comparison against the stored template. This was presented as a predictable and simple design choice to improve the reliability of the authentication system.
    • Expectation of Success: The process of creating a digital profile from raw biometric data was a well-understood technique at the time, ensuring a high expectation of success.

Ground 3: Obviousness of Claims 1-2 under §103 over Lane in view of Drexler

  • Prior Art Relied Upon: Lane (Patent 5,623,552), Drexler (Patent 5,457,747)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Lane discloses a self-authenticating identification card with a fingerprint sensor, memory, and an authenticator, which meets most limitations of claim 1. Lane's card generates a "coded audio signal" (an access code) upon successful fingerprint verification. However, Lane acknowledged a security flaw where such access codes could be intercepted and used fraudulently. Drexler was argued to cure this deficiency by teaching the modification of an authorization code based on the user's specific biometric information, thereby creating an individualized code akin to a "digital signature" that could not be used by anyone else.
    • Motivation to Combine: A POSITA would combine Lane and Drexler to solve Lane's stated problem of insecure access codes. Since Lane already used biometrics for user identification, it would have been a natural and obvious step to also use that unique biometric data to secure the access code itself, as taught by Drexler. This would enhance security by functionally connecting the access code to the authorized user's unique biometric profile.
    • Expectation of Success: Combining these known techniques was straightforward. A POSITA would have had a reasonable expectation of success in implementing Drexler’s method of generating a biometrically-linked code within the framework of Lane's self-authenticating card system.

4. Key Claim Construction Positions

  • "verifying means" (Claim 1): Petitioner contended this term is a means-plus-function limitation under pre-AIA 35 U.S.C. §112, ¶6.
    • Recited Function: Petitioner identified the functions as: (1) determining user authorization or non-authorization; (2) receiving data derived from a user's biometric or other distinctive characteristics; and (3) generating an identification profile for the user from said data.
    • Corresponding Structure: Petitioner identified the structure in the ’391 patent as a computer, processor, or dedicated hardware (disclosed as "verifying means 2" or "analyzing means 2") programmed to perform a specific algorithm.
    • Algorithm: The disclosed algorithm involves (1) receiving biometric data, (2) generating a digital profile from that data, and (3) determining authorization by comparing the generated profile to a stored authorized profile.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not deny the petition under §325(d) because the asserted prior art and arguments were not the same or substantially the same as those previously presented to the USPTO. While the examiner cited Lane in the Notice of Allowance, it was not the basis for any substantive rejection during prosecution. Furthermore, the primary references of Gullman and Drexler were never considered by the examiner, and the specific combination of Lane and Drexler was not previously evaluated.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1 and 2 of Patent 6,213,391 as unpatentable.