Unified Patents Inc. v. Vindolor LLC

1. Case Identification

• Case #: IPR2019-00478
• Patent #: 6,213,391
• Filed: December 31, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Vindolor, LLC
• Challenged Claims: 1-2

2. Patent Overview

• Title: Portable Identification System
• Brief Description: The ’391 patent describes a portable electronic identification system, such as a smart card, that uses biometric data (e.g., a fingerprint) to authenticate a user. The system generates an access code based on the user's unique biometric profile to enhance the security of electronic transactions.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1 and 2 under 35 U.S.C. §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 describes a portable biometric security apparatus, such as an integrated circuit card the size of a credit card, containing a biometric sensor, a processor, and memory. This apparatus receives biometric input (e.g., a fingerprint), compares it to a stored template, and, upon successful verification, generates a security token. Petitioner contended this security token, which is based on the user's unique biometric input, constitutes an "identification specific digital signature" as recited in claim 1. Gullman's processor acts as the claimed "verifying means" and "code generator." Furthermore, Gullman discloses that this security token can be encrypted for secure transmission, anticipating dependent claim 2.

Ground 2: Obviousness of Claims 1 and 2 under 35 U.S.C. §103 over Gullman in view of the knowledge of a POSITA

• Prior Art Relied Upon: Gullman (Patent 5,280,527) and 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 even if Gullman does not explicitly disclose "generating an identification profile" from the input biometric data (claim limitation 1.6), this feature would have been an obvious modification for a POSITA. Gullman already uses biometric input to compare against a stored template.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to generate a "spontaneous" identification profile from the live biometric input to have a corresponding data structure for a more robust and appropriate comparison against the stored template. This was presented as a predictable design choice to improve the reliability of the verification process.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as generating a digital representation (a profile) from sensor data was a routine and well-understood practice in the art at the time.

Ground 3: Obviousness of Claims 1 and 2 under 35 U.S.C. §103 over Lane in view of Drexler

• Prior Art Relied Upon: Lane (Patent 5,623,552) and Drexler (Patent 5,457,747).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted 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 an access code (an "audible authentication signal") upon a successful fingerprint match. However, Petitioner argued Lane does not explicitly teach that the access code itself is based upon the user's biometric identification profile. Drexler, which was not cited during prosecution, remedies this by teaching the modification of an authorization code number based on a user's specific biometric information (e.g., fingerprint, name) to "individualize" the code, making it akin to a "digital signature" that cannot be used by anyone else.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Lane with Drexler to solve a known security flaw acknowledged in Lane. While Lane's card authenticates the user, the resulting access code is a separate entity that, if intercepted, could be used fraudulently. Drexler directly addresses this problem by teaching how to make an access code inherently secure by functionally linking it to the user's unique biometrics. This combination would fulfill the market demand for more secure transaction systems.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in implementing Drexler's teachings in Lane's system. The algorithmic steps for generating a code based on user data were well-known, and integrating this functionality into Lane's existing card architecture (which already included a processor and memory) would have been a straightforward engineering task.

4. Key Claim Construction Positions

• "verifying means" (Claim 1): Petitioner argued this term is a means-plus-function limitation under pre-AIA §112, ¶6.
  • Recited Function: Petitioner identified the functions as (1) determining user authorization/non-authorization; (2) receiving data derived from a user's biometric characteristics; and (3) generating an identification profile from said data.
  • Corresponding Structure: Petitioner identified the corresponding structure in the ’391 patent's specification as a computer, processor, or dedicated hardware (e.g., "verifying means 2") programmed to perform a specific algorithm. The algorithm involves receiving biometric data via an input, generating a digital profile from that data, and comparing it to a stored profile to determine authorization.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the prior art and arguments are not the same or substantially the same as those considered during prosecution. Specifically, Gullman and Drexler were never presented to the examiner. While Lane was cited in the Notice of Allowance, it was not the basis of any substantive rejection, and Petitioner contended the examiner's brief analysis of Lane was flawed and did not address the specific combination and motivations presented in the petition.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1 and 2 of the ’391 patent as unpatentable.