Samsung Electronics Co Ltd v. RightQuestion LLC

1. Case Identification

• Case #: IPR2022-00251
• Patent #: 10,929,512
• Filed: December 1, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): RightQuestion, LLC
• Challenged Claims: 1-4, 6-15, and 17-21

2. Patent Overview

• Title: Authentication Translation
• Brief Description: The ’512 patent discloses systems and methods for "authentication translation" where a user provides a biometric input to an "authentication translator" system. This system, using a first and second processor, then provides the appropriate credentials (e.g., password, cookie) to log the user into an external service on their behalf, avoiding the need for manual entry.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-15, and 17-21 are obvious over Johansson in view of Kesanupalli.

• Prior Art Relied Upon: Johansson (Patent 8,776,214) and Kesanupalli (Application # 2011/0138450).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Johansson disclosed nearly all limitations, including an "authentication manager" on a client device (first processor) that communicates with a separate "portable data store" which may include its own processor (second processor) and a biometric sensor. Johansson’s system stores user credentials and facilitates logins. Petitioner asserted that Kesanupalli taught the missing details, specifically a secure biometric service application that executes on a device, interfaces with a biometric sensor, and performs cryptographic functions like decrypting user credentials (passwords, cryptographic keys) only after a successful biometric reading. The combination supplied the claimed functionality of using a second processor to receive a biometric input, access a stored record, perform a cryptographic operation, and facilitate login to an external resource.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references as they address the same problem of improving authentication security using biometrics. A POSITA would incorporate Kesanupalli’s specific method of using a biometric sensor to securely decrypt and manage credentials into Johansson's more general framework. This combination would enhance the security of Johansson's portable data store by ensuring data is encrypted with the user's biometric keys, reducing the risk of compromise if the device were lost or stolen.
  • Expectation of Success: Petitioner argued a POSITA would have a reasonable expectation of success because the combination involved implementing known software functions (from Kesanupalli) on the generic hardware components (processors, sensors, memory) already disclosed in Johansson. This would be a predictable application of routine software programming.

Ground 2: Claims 1-4, 6-15, and 17-21 are obvious over Shah in view of Owen.

• Prior Art Relied Upon: Shah (Application # 2008/0059804) and Owen (Patent 7,780,080).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Shah disclosed a single sign-on (SSO) system using a first processor on a wireless device and a second processor within a secure environment like a Trusted Platform Module (TPM) or Universal Subscriber Identity Module (USIM). Shah’s second processor receives biometric inputs, performs cryptographic operations, and provides credentials to log into websites. Petitioner asserted that Owen supplied the claimed limitations related to secure backup and restoration. Owen disclosed a portable, biometrically-secured device that can be registered with a secure internet portal (a storage service) to back up user data. If the device is lost, a new (second) device can be registered, and the user’s private information can be securely downloaded and restored.
  • Motivation to Combine: Petitioner argued a POSITA would be motivated to integrate Owen’s robust backup and restoration capabilities into Shah’s SSO system. This would address the common problem of data security when a portable device containing sensitive credentials is lost or stolen. Adding Owen’s functionality would enhance the overall security and utility of Shah's system by providing a method to securely recover and provision a new device with the user's SSO credentials.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because the combination involved integrating known backup/restore software features (from Owen) with the secure authentication architecture of Shah. The implementation would rely on predictable interactions between software modules and generic processing components.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) based on the Fintiv factors for several reasons.
• The parallel district court proceeding was in its earliest stages, with minimal investment by the court and parties, no discovery conducted, and no claim construction underway.
• The scheduled trial date was over nine months away and historically unreliable, weighing only slightly in favor of denial.
• Petitioner stipulated that it would not pursue in the district court any obviousness ground that includes the primary references from this IPR, significantly reducing any potential overlap in issues.
• Finally, Petitioner contended that the merits of the invalidity grounds presented were exceptionally strong, which is an "other circumstance" that heavily weighs in favor of institution.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-15, and 17-21 of the ’512 patent as unpatentable under 35 U.S.C. §103.