Samsung Electronics America Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2021-01447
• Patent #: 9,298,905
• Filed: August 26, 2021
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-12

2. Patent Overview

• Title: Biometric Authentication
• Brief Description: The ’905 patent describes a two-factor authentication method for wireless devices. The system first verifies a user's identity locally on the device via a biometric scan and then authenticates the device itself by wirelessly sending a unique ID code to a third-party trusted authority for verification before granting access to a secure resource or financial transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-10, and 12 are obvious over Scott in view of Lapsley.

• Prior Art Relied Upon: Scott (WO 1999/056429) and Lapsley (Application # 2001/0000535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scott, which predates the ’905 patent’s priority date by five years, discloses the core method of claim 1. Scott teaches a portable Personal Identification Device (PID) that persistently stores a user's biometric data (e.g., fingerprint) and a unique device ID code. Upon receiving a biometric scan that matches the stored data, the PID wirelessly transmits the ID code to a host facility, which compares the code against a list of registered PIDs. If authenticated, the user is granted access to a secure resource like an ATM, thus completing a financial transaction. To the extent Scott's host facility is not considered a "third-party trusted authority," Petitioner contended Lapsley supplies this teaching by disclosing a third-party Data Processing Center that maintains a central list of device identification codes to authenticate transactions.
  • Motivation to Combine: A POSITA would combine Scott's local biometric verification with Lapsley's centralized third-party device authentication to improve system efficiency, security, and flexibility. Consolidating device ID codes at a secure third-party agent reduces the risk of fraud and was a common and well-understood practice in banking and retail for authenticating devices like ATMs and credit card terminals.
  • Expectation of Success: Petitioner asserted success was predictable, as using a trusted third party for authorization was a conventional approach for the types of secure transactions described in Scott.

Ground 2: Claims 2 and 11 are obvious over Scott and Lapsley in view of Robinson.

• Prior Art Relied Upon: Scott (WO 1999/056429), Lapsley (Application # 2001/0000535), and Robinson (Application # 2003/0177102).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Scott and Lapsley from Ground 1 to further address the limitation of "registering an age verification" recited in claims 2 and 11. Petitioner argued that Robinson explicitly teaches a system for authenticating a user's age to access restricted areas. Robinson discloses a central database that stores age verification records, including a user's date of birth, biometric template, and an associated ID number.
  • Motivation to Combine: A POSITA would combine Robinson's age verification teachings with the secure transaction system of Scott and Lapsley as a simple design choice to improve security. Adding an age-based authorization factor would have been a logical and obvious modification to authenticate a user for age-restricted transactions or access to restricted areas, which is a stated goal of the Scott reference.
  • Expectation of Success: The combination was portrayed as straightforward, involving the addition of a known data field (age verification) to an existing authentication database to enhance its functionality in a predictable manner.

Ground 3: Claims 1, 3-7, 9-10, and 12 are obvious over Berardi, Shreve, and Kinoshita.

• Prior Art Relied Upon: Berardi (Patent 7,239,226), Shreve (Application # 2002/0109580), and Kinoshita (Application # 2003/0055792).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative combination demonstrating the claimed invention’s obviousness. Berardi was argued to teach a portable electronic fob for point-of-sale transactions that stores biometric data and an ID code, performs a local biometric scan, and wirelessly transmits the fob's ID to a third-party issuer system for authorization. Shreve was cited to supplement the teaching of a third-party authority, as it discloses a service provider with a secured database containing cross-references between a fob ID and user information to authenticate transactions. Kinoshita was added to teach the final step of allowing a user to "complete a financial transaction" by "accessing an application," as it discloses a third-party payment gateway that, after authenticating a device, sends a message causing the device to execute a payment application.
  • Motivation to Combine: A POSITA would combine these references to create a robust and flexible authentication system. A POSITA would modify Berardi's system using Shreve's teachings to improve security by consolidating device IDs at a secure third-party agent. Further, incorporating Kinoshita's teachings would allow the authenticated transaction to trigger a specific application on the user's device, which was a logical extension for conducting electronic payments.
  • Expectation of Success: Petitioner contended success was expected, as the combination merely integrated well-known, modular concepts in security and electronic payments: local biometrics, centralized third-party device authentication, and remote application execution.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §325(d) and §314(a) (Fintiv factors).
• §325(d): Denial was argued to be improper because the primary prior art references asserted in the petition (Scott, Lapsley, Berardi, etc.) were never presented to or considered by the patent examiner during the original prosecution. Therefore, the arguments and art are not cumulative.
• Fintiv Factors: Petitioner asserted the Fintiv factors strongly favor institution. The parallel district court litigation was in its infancy, with no trial date set, no answer filed, and no discovery conducted. Petitioner also provided a stipulation that it would not pursue the IPR grounds in the district court if review were instituted, thus eliminating concerns of duplicative efforts and overlapping issues.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-12 of Patent 9,298,905 as unpatentable.