PTAB

IPR2022-00244

Samsung Electronics Co Ltd v. RightQuestion LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Authentication Translation
  • Brief Description: The ’696 patent describes systems and methods for "authentication translation," where a user provides a single authentication input (e.g., biometric) to a translator device. The device then uses two separate processors—one to establish a connection with an external resource and a second to access securely stored credentials—to automatically provide the appropriate login information to that resource on the user's behalf.

3. Grounds for Unpatentability

Ground 1: Obviousness over Johansson and Owen - Claims 1-6, 10-11, 13-19, 23-24, and 26-27 are obvious over Johansson in view of Owen.

  • Prior Art Relied Upon: Johansson (Patent 8,776,214) and Owen (Patent 7,780,080).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Johansson disclosed nearly all limitations of the independent claims. Johansson taught an "authentication manager" on a client device (first processor) that communicates with a "portable data store" (containing a second processor and secure storage) to manage and automatically provide credentials (passwords, keys) for logging into external websites. The portable store could use biometrics for authentication. Petitioner contended that Johansson did not explicitly teach facilitating the wiping of a stored record. Owen, a reference directed to a portable, biometrically-secured device, supplied this missing element by disclosing functionality to remotely delete files or erase memory modules ("scorched earth" command) from the device if access privileges are revoked or the device is replaced.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references as they address the same problem of secure authentication using stored credentials. A POSITA would be motivated to incorporate Owen's data wiping function into Johansson's portable authentication system to enhance security, particularly given the increased risk of loss or theft associated with a portable device.
    • Expectation of Success: A POSITA would have an expectation of success because implementing a wiping function would involve a predictable application of routine software on the generic processing components described in both references.

Ground 2: Obviousness over Johansson, Owen, and Shi - Claims 7-8 and 20-21 are obvious over Johansson and Owen in view of Shi.

  • Prior Art Relied Upon: Johansson (Patent 8,776,214), Owen (Patent 7,780,080), and Shi (Application # 2009/0191846).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Johansson and Owen to address dependent claims 7, 8, 20, and 21, which require the system to provide a visual or aural prompt for biometric information. While Johansson taught using biometrics, it did not explicitly describe the prompt. Petitioner argued that Shi, which disclosed a method for controlling access to a smart card, explicitly taught prompting a user to provide biometric input (a fingerprint swipe) either visually via a display or aurally through a speaker.
    • Motivation to Combine: A POSITA would combine Shi with the Johansson/Owen system to improve usability and accessibility. Adding visual and aural prompts is a common design choice and provides flexibility for users, such as those who are visually impaired (aural prompt) or in multilingual environments (visual prompt).
    • Expectation of Success: The combination would be a predictable implementation of routine software, as all three references describe devices with the necessary displays and speakers to provide such prompts.

Ground 3: Obviousness over Shah - Claims 1-3, 6, 13-16, 19, and 26-27 are obvious over Shah.

  • Prior Art Relied Upon: Shah (Application # 2008/0059804).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Shah, standing alone, rendered most claims obvious. Shah disclosed a "Trusted Single Sign-On" system where a primary processor in a wireless device communicates with a second, secure processor, the Trusted Platform Module (TPM). This communication occurred over a restricted interface to generate, store, and retrieve passwords for websites. The TPM (second processor and secure storage) stored credentials associated with external resources and used biometrics (fingerprint, retina scan) for user authentication. Petitioner asserted that Shah also taught wiping a portion of a record by disclosing procedures for adding, deleting, or un-binding website-specific records held by the TPM.
    • Key Aspects: This ground asserted that a single reference taught the core inventive concept of using two communicating processors—one general and one secure—for authentication translation, which was a central feature of the ’696 patent.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Shah in view of Buer (Application # 2006/0085844) to add a sensor, Shah in view of Shi to add prompting, and Shah in view of Owen to add remote wiping capabilities.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under the Fintiv factors. The core arguments were that: (1) no stay had been granted or requested in the parallel district court proceeding; (2) the court’s trial date was over nine months away and historically unreliable, weighing only slightly against institution; (3) investment in the parallel case was minimal, with discovery not yet open; (4) Petitioner stipulated it would not pursue the same invalidity grounds in district court, mitigating concerns of overlap; and (5) the petition presented a strong case for unpatentability on the merits.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 1-8, 10-11, 13-21, 23-24, and 26-27 of the ’696 patent as unpatentable under 35 U.S.C. §103.