Samsung Electronics America Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2021-01448
• Patent #: 10,698,989
• Filed: August 26, 2021
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-9

2. Patent Overview

• Title: Biometric Authentication Using a Wireless Device and Third-Party Authority
• Brief Description: The ’989 patent discloses a two-factor authentication method for preventing unauthorized use of a wireless device, such as a smartphone. The system first validates a user's biometric scan against data stored locally on the device and, upon a successful match, wirelessly transmits a unique device ID code to a third-party trusted authority for final authentication to complete a transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 are obvious over Scott in view of Lapsley.

• Prior Art Relied Upon: Scott (WO 99/56429) and Lapsley (Application # 2001/0000535).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scott discloses a "personal identification device" (PID) that performs nearly all the steps of independent claims 1, 5, and 7. Scott’s PID stores biometric data (e.g., a fingerprint template), captures a biometric scan from a user, compares the scan to the stored data, and upon a successful match, wirelessly transmits a unique ID code to a host system to gain access to secure resources like ATMs or point-of-sale devices. Petitioner contended that adapting Scott’s portable, hand-held PID into a "smartphone" would have been an obvious design choice for a person of ordinary skill in the art (POSITA) to increase convenience and consolidate devices.
  • Motivation to Combine: Petitioner argued that to the extent Scott's "host system" might not be considered a "third-party trusted authority," a POSITA would combine Scott's system with the teachings of Lapsley. Lapsley explicitly discloses using a trusted third-party Data Processing Center to authenticate remote devices for transactions by maintaining a central list of device hardware ID codes. The motivation to combine was to improve the security, efficiency, and flexibility of Scott’s system by centralizing device authentication with a trusted third-party agent, which was a well-known practice for the types of financial transactions Scott describes.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved implementing a known third-party authentication architecture (from Lapsley) into a device with local biometric verification capabilities (from Scott), using predictable and well-understood communication and security technologies.

Ground 2: Claims 1-9 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 asserted that Berardi serves as the primary reference, disclosing a portable electronic fob for contactless transactions. Berardi’s fob, which is explicitly described as potentially being a "cell phone," can include a biometric sensor for user verification. After a successful local biometric match, the fob wirelessly transmits identifying information (including a unique fob ID) to a third-party "issuer system" for authorization. Petitioner argued this combination of local biometric verification and remote device authentication by a trusted third party taught the core invention.
  • Motivation to Combine: A POSITA would combine Berardi with Shreve and Kinoshita to arrive at the claimed invention. Shreve was cited for its clear teaching of a third-party service provider with a secured database that cross-references device IDs with user-specific information (including biometrics) to authenticate transactions, reinforcing the third-party authority limitation. Kinoshita was cited for disclosing the completion of a transaction by having a portable device execute a payment application upon receiving an authorization message from a third-party payment gateway. The motivation was to combine these known elements to create a more robust and commercially conventional authentication system, improving security by centralizing authentication (Shreve) and completing the transaction via a standard application-based workflow (Kinoshita).
  • Expectation of Success: A POSITA would have expected success in combining these references because it involved the integration of conventional and compatible technologies: a biometric-enabled portable device (Berardi), a centralized authentication database (Shreve), and a post-authorization application execution step (Kinoshita).

4. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art/Arguments: Petitioner argued against discretionary denial under §325(d) because the asserted grounds were not cumulative of art considered during prosecution. Although Shreve was cited by the examiner, it was relied upon only for the limited teaching that "an ID code is persistently stored on a device" and was presented here in a new combination with different arguments. Petitioner contended that the primary references for both grounds—Scott, Lapsley, Berardi, and Kinoshita—were not previously considered by the Patent Office.
• §314(a) - Fintiv Factors: Petitioner argued that the Fintiv factors weighed heavily in favor of institution. The parallel district court case was in its earliest stages, with no trial date set, no stay filed, and minimal party or court investment. Critically, Petitioner stipulated that if the inter partes review (IPR) was instituted, it would not pursue in the litigation the specific invalidity grounds raised in the petition. This stipulation was intended to eliminate any overlap between the proceedings and mitigate concerns of duplicative efforts and inefficient use of resources.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-9 of Patent 10,698,989 as unpatentable.