PTAB

IPR2020-01220

Apple Inc v. Universal Secure Registry LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’000 patent discloses systems and methods for authenticating a user in a transaction. The system receives a one-time code generated by the user's electronic device following a successful biometric verification, and in response, accesses the user's account-identifying information to authorize the transaction.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schutzer and Walker - Claims 1-4, 6-11, 13-18, and 20-21 are obvious over Schutzer alone or in view of Walker.

  • Prior Art Relied Upon: Schutzer (European Patent Application Publication No. 1028401A2) and Walker (Patent 6,163,771).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schutzer taught the core limitations of the independent claims. Schutzer disclosed a secure transaction system where a user's device generated a single-use "anonymous card number" (a one-time code) after the user authenticated via biometric input (e.g., fingerprint). This anonymous number was transmitted to an issuing bank, whose authorization processor maintained a "link" between the anonymous number and the user's actual transaction card number. Petitioner contended that this processor retrieved the actual account number in response to receiving the one-time code. To the extent Schutzer’s disclosure of retrieving account information was deemed insufficient, Petitioner argued Walker supplied the missing detail. Walker described a system where a card issuer’s central processor retrieved a cardholder's private key (account information) from a database in response to receiving an encrypted, single-use credit card number.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Schutzer and Walker because they addressed the same problem—secure electronic transactions preserving user anonymity—using highly similar system architectures (user device, merchant, and bank server). Petitioner asserted it would have been obvious to apply Walker’s specific method for retrieving account information to improve the security and functionality of the analogous system in Schutzer.
    • Expectation of Success: Because the combination involved integrating compatible security schemes and applying a known technique (Walker's data retrieval) to a known system (Schutzer's), a POSITA would have had a reasonable expectation that the resulting system would be successful and predictable.

Ground 2: Obviousness over Franklin and Schutzer - Claims 1-4, 6-11, 13-18, and 20-21 are obvious over Franklin alone or in view of Schutzer.

  • Prior Art Relied Upon: Franklin (Patent 6,000,832) and Schutzer (European Patent Application Publication No. 1028401A2).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Franklin disclosed most elements of the independent claims. Franklin taught a system where a customer computer generated a one-time "transaction number" as a proxy for the user's real account number. This occurred after a successful password authentication on the user's device. The issuing bank's computing center received this proxy number and, in response, retrieved the customer's private key and related data to validate the transaction. Petitioner contended that the key difference was Franklin's use of password authentication versus the claimed biometric authentication. This limitation was allegedly supplied by Schutzer, which explicitly taught generating a one-time code responsive to successful verification of biometric information at the user's device.
    • Motivation to Combine: A POSITA would have been motivated to combine Franklin and Schutzer as they disclosed systems with nearly identical structures and process flows to solve the same problem of secure, anonymous transactions. Petitioner argued it would have been an obvious design choice to enhance the security of Franklin's system by substituting its "weak password" authentication with the more robust biometric authentication taught by Schutzer. Schutzer itself suggested that different authentication methods could be interchanged to make a system "more secure."
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination merely involved substituting one known authentication method (password) with another well-known and more secure method (biometric) to achieve the predictable result of enhanced security.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 5, 12, and 19. These grounds relied on the core combinations of Schutzer/Walker and Franklin/Schutzer, with the additional introduction of Slater (Patent 6,098,053) to teach a one-time code associated with a "public identification code" for a credit or bank card account.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’000 patent as unpatentable under 35 U.S.C. §103.