PTAB

IPR2020-01224

Apple Inc v. Universal Secure Registry LLC

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1. Case Identification

2. Patent Overview

  • Title: Method and Apparatus for Secure Access Payment and Identification
  • Brief Description: The ’103 patent describes a system for authenticating a user to enable a transaction. The system uses a first device with a biometric sensor to authenticate the user and generate authentication information, which is sent in a wireless signal to a second device that approves the transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-7, 9-10, 21-22 are obvious over Jakobsson alone or in view of Niwa.

  • Prior Art Relied Upon: Jakobsson (WO 2004/051585) and Niwa (Patent 6,453,301).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Jakobsson taught nearly all limitations of independent claim 1. Jakobsson disclosed an authentication system where a user device (first device) with a microprocessor (first processor) authenticates a user via secret information (e.g., a PIN), generates an "identity authentication code," and transmits it wirelessly to a verifier (second device). The verifier processes the code and sends back an acknowledgment to enable a transaction. To the extent Jakobsson did not explicitly teach comparing newly received biometric data against previously stored biometric data on the first device, Petitioner asserted that Niwa supplied this teaching. Niwa disclosed a fingerprint identification device that compares a customer's fingerprint with a stored fingerprint to authenticate the user for a financial transaction.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Niwa's comparison-based authentication with Jakobsson's system to improve its overall security. This combination involved using a known technique (comparing biometric values) to improve a similar device (a user authentication device) for its intended purpose. Petitioner contended that both references are in the same field of secure financial transactions, address the problem of electronic fraud, and describe similar system architectures, providing a strong rationale for combination.
    • Expectation of Success (for §103 grounds): Because the combination involved a synthesis of two similar and compatible security schemes using well-understood techniques, a POSITA would have had a reasonable expectation of success.

Ground 2: Claims 1-4, 6-7, 9-10, 21-22 are obvious over Russell alone or in view of Jakobsson and/or Niwa.

  • Prior Art Relied Upon: Russell (Application # 2004/0044627), Jakobsson (WO 2004/051585), and Niwa (Patent 6,453,301).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Russell disclosed the core elements of the claimed system. Russell described a Biometric Personal Identification Device (BPID) (first device) that authenticates a user via a passcode or biometric information. After authentication, the BPID generates and transmits an encrypted data stream (first wireless signal) containing user identification data to a Wireless Verification Point (WVP) (second device). The WVP verifies the user and signals a financial institution to complete the transaction, subsequently relaying an approval signal back to the BPID. Petitioner argued that to the extent Russell did not teach authenticating a user based on both secret (PIN) and biometric information, Jakobsson taught this multi-factor approach. The combination of Niwa with Russell was proposed for the same reasons as in Ground 1, to explicitly add comparison-based biometric authentication.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Jakobsson's multi-factor authentication with Russell's system to enhance security, a common goal in the art of financial transactions. Both references are in the same field and describe systems with similar portable device and verification server architectures. Applying Niwa's well-known biometric comparison technique to Russell's BPID was presented as a predictable solution for improving authentication reliability.
    • Expectation of Success (for §103 grounds): The combination of known security features from analogous systems would have yielded predictable results, giving a POSITA a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 8, 11, and 20 based on the primary combinations of Jakobsson/Niwa or Russell/Niwa, further in view of Schutzer (European Patent Application Publication No. 1028401A2). Schutzer was introduced to teach limitations related to using a "multidigit public ID code" for a credit card account that can be mapped to a usable credit card number, thereby obscuring sensitive account information during a transaction.

4. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-4, 6-11, and 20-22 of the ’103 patent as unpatentable.