Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00232
• Patent #: 8,352,730
• Filed: January 17, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-6 and 8-17

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’730 patent discloses methods and systems for user authentication using an integrated device. The process involves locally verifying a user's biometric data, and upon a successful match, wirelessly sending device identification codes to a remote third-party trusted authority for final authentication to grant access to an application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ludtke - Claims 1-2, 4-6, 8-9, 11-12, and 14-17 are obvious over Ludtke.

• Prior Art Relied Upon: Ludtke (Patent 7,188,110).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ludtke discloses all limitations of the challenged independent claims (1, 8, 12, 15). Ludtke teaches a "transaction device" (e.g., a privacy card or digital wallet) that authorizes a user for a transaction. This device performs local biometric verification by comparing a scanned fingerprint to "authorized fingerprint recognition samples" stored on the device. Upon a successful match, the device sends its "unique ID" to a "Transaction Privacy Clearing House" (TPCH), which Petitioner contended is a third-party trusted authority. The key data—biometric samples, a unique device ID, and a secret decryption value (from Ludtke's use of a Public Key Infrastructure)—are stored in "write-once memory" or "permanent memory," which Petitioner equated to the claimed tamper-proof, unalterable storage. After the TPCH authenticates the device ID, it sends a confirmation message back, allowing the user to complete a transaction and access services, which Petitioner mapped to the claimed "access message" allowing access to an "application."
  • Motivation to Combine (for §103 grounds): This ground is based on a single reference. For elements not explicitly described as "tamper proof," Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to store sensitive data like biometric templates, device IDs, and cryptographic keys in write-once or other tamper-resistant memory. The motivation would be to enhance the security and integrity of the authentication system, which is the explicit goal of Ludtke.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in using well-known, tamper-resistant storage like write-once memory to secure sensitive data, as this was a common and predictable method for increasing security in such devices.

Ground 2: Obviousness over Ludtke and Kon - Claims 3, 10, and 13 are obvious over Ludtke in view of Kon.

• Prior Art Relied Upon: Ludtke (Patent 7,188,110) and Kon (Application # 2002/0046336).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims 3, 10, and 13, which add the limitation of registering an age or birthdate verification for the user. Petitioner asserted that while Ludtke does not explicitly teach age verification, Kon remedies this deficiency. Kon discloses a system for authenticating a user for a transaction using biometric information and a device ID stored in a person identification certificate (IDC). Crucially, Kon’s IDC data structure explicitly includes a field for "Personal information" to authenticate a subject, which includes attributes such as "Age, sex, etc." This age information is registered in association with the user's device ID.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kon's teaching of registering age with Ludtke's biometric authentication system for the clear commercial benefit of facilitating age-restricted transactions. Adding an age verification step would allow Ludtke's system to be used for purchasing controlled goods (e.g., alcohol) or accessing age-gated content, which was a well-understood need at the time.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as incorporating an additional data field (age) into a user's profile and adding a verification step during authentication was a routine and predictable modification.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is not warranted. Although a parallel district court case exists, the trial date is tentatively set for January 2025 and is subject to change. Petitioner contended that considering potential schedule adjustments and a pending motion to transfer, the trial is likely to occur after a Final Written Decision (FWD) would issue in this inter partes review (IPR).
• Petitioner further asserted that denial under General Plastics is inappropriate. This is Petitioner's first IPR challenging the ’730 patent, and Petitioner was not a party to, nor does it have a significant relationship with the petitioner in, a prior IPR filed by Samsung.
• Finally, Petitioner argued that denial under 35 U.S.C. §325(d) is unwarranted because the primary references, Ludtke and Kon, were not considered during the original prosecution. While Ludtke is cited in a pending ex parte reexamination, Petitioner maintained that this IPR presents the reference in new combinations and with materially different arguments than those in the reexamination request.

5. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-6 and 8-17 of the ’730 patent as unpatentable.