Askeladden LLC v. Rothschild Leigh

1. Case Identification

• Case #: IPR2019-00855
• Patent #: 8,799,088
• Filed: May 17, 2019
• Petitioner(s): Askeladden LLC
• Patent Owner(s): SRR Patent Holdings, LLC
• Challenged Claims: 1, 2, 11, 14-19, and 21

2. Patent Overview

• Title: Biometric Verification for Financial Transactions
• Brief Description: The ’088 patent discloses systems and methods for verifying a financial card user's identity by using biometric data. The process involves two stages: an initial enrollment stage where a user's biometric data is captured and stored on a remote server, and a transaction stage where newly captured biometric data is compared against the stored data for authentication.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 11, 14-19, and 21 are obvious over Karthik in view of Robinson.

• Prior Art Relied Upon: Karthik (Application # 2005/0165700) and Robinson (Patent 7,389,269).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Karthik teaches a comprehensive system for biometric authentication in financial transactions, including both enrollment and transaction stages. Karthik discloses a web server that captures a user’s initial biometric data (e.g., a fingerprint), stores it in a database, and later uses it to authenticate the user for ATM transactions. However, Petitioner contended that the key limitation added during prosecution—authenticating uploaded biometric data against data in a "related information repository"—was not expressly taught by Karthik for the initial enrollment. Robinson was introduced to supply this element, as it describes a system for activating financial cards by verifying a user’s presented biometric data against a pre-existing, external third-party database, such as a Department of Motor Vehicles (DMV) database, to ensure the individual is the true card owner.
  • Motivation to Combine: Petitioner asserted that Karthik and Robinson are highly analogous arts, both addressing biometric security for financial cards. A person of ordinary skill in the art (POSITA) reviewing Karthik's enrollment process would have recognized the need to verify the user’s identity at the outset to prevent fraudulent enrollment. Robinson provided a known and commercially valuable solution for this exact problem. A POSITA would combine Robinson's external authentication step with Karthik's enrollment process to add a crucial layer of security and prevent identity theft.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in making this combination. The modification would have only required establishing a network link between Karthik's web server and an external third-party database as taught by Robinson, a routine and predictable implementation.

Ground 2: Claims 1, 2, 11, 14-19, and 21 are obvious over Karthik in view of Alvarez.

• Prior Art Relied Upon: Karthik (Application # 2005/0165700) and Alvarez (Patent 7,735,125).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Robinson for supplying the "related information repository" limitation. As in Ground 1, Karthik served as the primary reference disclosing the foundational two-stage biometric authentication system. Petitioner argued Alvarez teaches an "external verification system" used to verify the identity of a user at a financial services kiosk. Alvarez's system authenticates a user by capturing biometric data (e.g., fingerprints, signatures) at the kiosk and comparing it to data stored in an external repository, such as a government database, to reduce fraud when issuing financial cards.
  • Motivation to Combine: The motivation to combine was similar to that in Ground 1. A POSITA would have been motivated to enhance the security of Karthik’s enrollment process to prevent imposters from registering with fraudulent data. Alvarez taught using an external verification system for this very purpose in the context of remote financial services. Therefore, a POSITA would combine Alvarez’s external authentication method with Karthik’s system to verify the user’s identity against a trusted third-party source before storing their biometric data.
  • Expectation of Success: Petitioner argued there was a clear expectation of success, as the combination merely involved applying Alvarez’s known external verification technique to Karthik’s system. This would require a straightforward network integration between Karthik's server and the external database system described in Alvarez, which was well within the skill of a POSITA.

4. Key Claim Construction Positions

• "Financial services provider card(s)": Petitioner proposed this term mean "a card issued by a financial institution and used to execute a financial transaction," including credit, debit, and ATM cards. This construction was based on explicit examples provided in the ’088 patent specification.
• "Biometric identification data": Petitioner proposed this term mean "data relating to a physical or behavioral feature that is unique to an individual." This was based on the specification’s examples, which include physical features like fingerprints and behavioral features like signatures.
• "Preselected identification verification web site": Petitioner proposed this term mean "a web site, selected in advance, used to verify a user's identity." The proposal was based on language in the specification describing a user logging on to a preselected website provided by the financial service provider to enter and validate identity information.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 2, 11, 14-19, and 21 of the ’088 patent as unpatentable under 35 U.S.C. §103.