PTAB

IPR2020-01221

Apple Inc v. Universal Secure Registry LLC

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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 users to enable secure transactions. The technology involves authenticating a user with information like a PIN or biometric data, generating a one-time code based on that authentication, and using the code to access the user's sensitive account information to authorize a transaction with a first party, such as a merchant.

3. Grounds for Unpatentability

Ground 1: Claims 22-26 and 28 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, by itself, rendered the challenged claims obvious. Schutzer disclosed a system for securely performing bankcard transactions by generating a single-use "anonymous card number" to be used in place of a user's actual card number. Petitioner mapped Schutzer's teachings to independent claim 22 by asserting it disclosed: receiving authentication information (including PINs and biometrics), authenticating the user based on that information, generating the anonymous card number (a one-time code) in response, communicating the code to a merchant and then an issuing bank (the first party), and the issuing bank using the code to access the user's actual account information to grant authorization. To the extent any limitation was not met by Schutzer, Petitioner argued Walker supplied the teaching. Walker was cited for its disclosure of generating a "single-use credit card number" upon user authentication and using a portion of that code (the account number) to access and retrieve a private key for the account.
    • Motivation to Combine: A POSITA would combine Schutzer and Walker because both references operated in the same field of secure electronic transactions, aimed to solve the same problem of protecting sensitive card data using temporary proxy numbers, and shared similar system architectures (user device, merchant, issuing bank). Walker provided specific implementation details for linking a one-time code to an account, which Petitioner contended was a known technique that a POSITA would have used to improve a similar system like Schutzer's to enhance security.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references because it involved integrating two compatible and well-known security schemes to achieve the predictable result of a more secure and robust transaction system.

Ground 2: Claims 22-26 and 28 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 asserted that Franklin disclosed the core elements of independent claim 22. Franklin taught an authentication system for online commerce where a user enters a password to generate a one-time "transaction number." This number served as a proxy for the user's actual account number and was submitted to a merchant, who forwarded it to an issuing bank. The bank then used the transaction number to index and look up the customer's account information to authorize the transaction. While Franklin taught password authentication, Petitioner argued that Schutzer supplied the missing element of using biometric authentication. Schutzer explicitly disclosed using a "biometric sample," such as a fingerprint, to authenticate a user before generating its anonymous card number.
    • Motivation to Combine: A POSITA would combine Franklin and Schutzer because they addressed the same fundamental problem of preventing online fraud via secure, anonymous authentication using proxy transaction numbers. Schutzer taught that employing different authentication methods, including biometrics, could make a system "more secure." Therefore, a POSITA would have been motivated to replace or supplement Franklin's password-based authentication with Schutzer's more secure biometric authentication to enhance the overall security of the system, a common and predictable design choice.
    • Expectation of Success: Petitioner argued that success would have been reasonably expected. Modifying Franklin's system to incorporate the well-understood concept of biometric authentication from Schutzer would not have posed a significant challenge and would predictably result in an improved, multi-factor authentication protocol.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against claim 27 based on combinations that also included Slater (Patent 6,098,053). Slater was argued to teach generating a one-time code associated with a "public identification code" that could be mapped to a user's account, fulfilling specific limitations of claim 27.

4. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 22-28 of Patent 9,947,000 as unpatentable under 35 U.S.C. §103.