PTAB

IPR2023-00080

Apple Inc v. Aire Technology Ltd

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1. Case Identification

2. Patent Overview

  • Title: User Authentication in Electronic Transactions
  • Brief Description: The ’249 patent describes a system for secure user authentication between a portable data carrier (e.g., a chip card) and a terminal during an electronic transaction. The purported invention involves generating and using "quality information" that reflects the relative security of different available authentication methods, such as a biometric scan versus a PIN entry.

3. Grounds for Unpatentability

Ground 1: Obviousness over Burger and Cheng - Claim 13 is obvious over Burger in view of Cheng under 35 U.S.C. §103.

  • Prior Art Relied Upon: Burger (Patent 7,080,037) and Cheng (Application # 2004/0039909).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Burger disclosed a portable "Pocket Vault" used for electronic transactions that could authenticate a user via multiple methods (e.g., PIN, fingerprint) and confirm that authentication to a terminal. However, Burger did not teach creating or sending information about the quality of the authentication method used. Cheng was argued to supply this missing element by teaching a portable device that assigns different "authentication levels" (quality) to various authentication methods, explicitly stating that a biometric method has a higher level of confidence than a PIN. Cheng's device creates an "electronic identifier" containing this quality information and transmits it to an authorizer (terminal) as part of a secure communication, such as one using a digital signature.
    • Petitioner contended that a person of ordinary skill in the art (POSITA) would find it obvious to modify Burger's system based on Cheng's teachings. This combination would result in a terminal that causes a user to select from authentication methods of different qualities (as taught by Cheng). Burger’s portable data carrier would be modified to create Cheng's quality information and attach it to the result of its security-establishing operation (the wireless transaction), thereby rendering all limitations of claim 13 obvious.
    • Motivation to Combine: The primary motivation asserted was to solve a well-known "last-meter problem" inherent in Burger's system. While Burger's terminal knew that a user was authenticated, it did not know how that user was authenticated, which prevented an accurate assessment of transaction risk. Petitioner argued that Cheng's teaching of communicating authentication quality provided a known, obvious solution to this problem, allowing the terminal to approve transactions with greater confidence. A secondary motivation was to improve the flexibility of Burger's system. By incorporating Cheng's teaching of allowing a user to select among authentication methods, the combined system would avoid failed transactions when a user is unable to perform a specific, predetermined authentication method (e.g., an injured finger preventing a fingerprint scan).
    • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success in combining the references. The proposed combination involved the predictable application of known techniques (from Cheng) to a known problem in a similar device (Burger's Pocket Vault). Cheng's methods were specifically designed for portable authentication devices, and any software or hardware modifications would be well within the capabilities of a POSITA.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court case was asserted to be in an early stage, with the trial date projected to occur after the statutory deadline for the IPR's Final Written Decision (FWD). Petitioner also contended that investment in the issues specific to claim 13 was minimal, as the Patent Owner had only recently moved to add the claim to the litigation. Finally, Petitioner asserted that it had acted expeditiously, filing the IPR within three weeks of the Patent Owner's motion.
  • Petitioner also argued that discretionary denial under General Plastic would be inappropriate because the petition is not an unfair "follow-on" filing. This petition challenges claim 13, which was not part of Petitioner's prior IPR against claims 1-12 of the ’249 patent. The current IPR was necessitated by the Patent Owner’s own action of adding claim 13 to the litigation months after the first IPR was filed. Arguments regarding a separate IPR filed by Samsung were dismissed as irrelevant because Petitioner is a different entity with no significant relationship to Samsung.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claim 13 of Patent 8,205,249 as unpatentable.