PTAB

IPR2020-00321

Unified Patents LLC v. Transactionsecure LLC

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Authenticating a User's Identity to a Transactional Entity Using a Trusted Entity
  • Brief Description: The ’921 patent describes methods for authenticating a person's identity for an electronic transaction. The system uses a trusted third-party entity to issue a unique, temporary code to a user, which the user provides to a transactional entity (e.g., a merchant) instead of sensitive personal information.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-8, 10, 13, 15, 20, and 23 are obvious over Asghari in view of Bhagavatula.

  • Prior Art Relied Upon: Asghari (Application # 2003/0046591) and Bhagavatula (Patent 7,140,036).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Asghari taught the core method of claim 1, including a three-party system (user, transactional "External-Entity," and trusted "Central-Entity") where the user receives a unique "SecureCode" to authenticate a transaction without revealing personal financial data. Asghari’s Central-Entity was alleged to be a trusted entity with a secure repository that receives personal information, stores an associated user identifier and password, and provides a unique code upon request. However, Petitioner contended Asghari did not explicitly teach the claim limitation requiring the user's identity to have been "previously authenticated" by the trusted entity before the code request. Bhagavatula allegedly supplied this missing element by disclosing an initial user registration process where a trusted "authenticating agent" verifies a user's identity by comparing submitted data against information from third-party sources like credit bureaus and financial institutions before creating an account for subsequent transactions.
    • Motivation to Combine: A POSITA would combine Bhagavatula's initial verification step with Asghari’s transaction system to enhance security and reduce fraud. This would prevent imposters from creating accounts with fraudulent information, thereby strengthening the reliability of Asghari's authentication process and furthering its stated objectives.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because performing an initial, independent verification of user-provided information at registration was a well-known and common practice for third-party authentication providers. Integrating this known step into Asghari’s existing registration framework would have been a straightforward application of conventional techniques.

Ground 2: Claim 17 is obvious over Asghari in view of Bhagavatula in further view of Goldstein.

  • Prior Art Relied Upon: Asghari (Application # 2003/0046591), Bhagavatula (Patent 7,140,036), and Goldstein (Patent 6,957,334).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Asghari and Bhagavatula from Ground 1. Petitioner argued that the additional limitation in claim 17—specifying the transactional entity for which the unique code will be generated—was taught by Goldstein. Goldstein disclosed a trusted third-party ("guarantor") system where a user could select a specific merchant for a transaction, and the guarantor would generate an authentication document containing a merchant-specific transaction identifier. This ensured the authentication was valid only for the intended merchant.
    • Motivation to Combine: A POSITA would incorporate Goldstein’s teaching to further enhance the security of the Asghari/Bhagavatula system. By allowing the user to specify the intended merchant, the unique code's use would be restricted, preventing it from being intercepted and used at a different, unauthorized merchant. This directly supported Asghari's goal of limiting the potential for fraud.
    • Expectation of Success: The combination would have been predictable because implementing merchant-specific identifiers was a known technique for securing online transactions. Adding this data element to the unique code generated by Asghari’s system would involve minor and well-understood software modifications.

Ground 3: Claims 20, 22, and 23 are obvious over Asghari in view of Bhagavatula in further view of Talati.

  • Prior Art Relied Upon: Asghari (Application # 2003/0046591), Bhagavatula (Patent 7,140,036), and Talati (Patent 5,903,878).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed limitations in claims 20 and 22 concerning the use of security "inquiries" to authenticate a user. The base combination of Asghari and Bhagavatula was argued to teach using predetermined security questions. Petitioner asserted that Talati supplied the limitation of claim 22, wherein the inquiries are "randomly generated." Talati taught a credit authority that could query a user with inquiries that "can constantly change to prevent the questions from being predicted by an unauthorized user," and explicitly stated the questions could be "randomly generated."
    • Motivation to Combine: A POSITA would have been motivated to modify the security question feature from Bhagavatula with Talati's random generation to further improve security. Randomizing the questions for each authentication attempt would make it significantly harder for an unauthorized party to predict and answer them correctly, thus enhancing the fraud prevention capabilities of the combined Asghari/Bhagavatula system.
    • Expectation of Success: There was a reasonable expectation of success because the use of challenge questions was well-known, and it was a common security principle that introducing randomness enhances security. Modifying the system to select questions randomly rather than use a fixed set was a minor software change with a predictable outcome.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 21 based on the combination of Asghari, Bhagavatula, Talati, and Goldstein, relying on similar design modification theories.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-8, 10, 13, 15, 17, and 20-23 of the ’921 patent as unpatentable.