Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00233
• Patent #: 8,886,954
• Filed: January 17, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-7, 10, 12-19, 22-27

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’954 patent discloses methods and systems for user authentication. An integrated device persistently stores biometric data, compares it to newly scanned biometric data, and upon a successful match, wirelessly sends codes (including a device ID) to a trusted third party for authentication, which then grants access to an application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ludtke - Claims 1, 2, 4-7, 10, 12, 13, 15, 16, 18, 19, and 22-27 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 elements of the challenged claims. Ludtke teaches a "transaction device" (e.g., a privacy card or digital wallet) that functions as the claimed integrated device. This device stores "authorized fingerprint recognition samples" (biometric data) and a "unique transaction device ID value" in persistent, write-once memory, which Petitioner contended satisfies the "tamper proof" limitation. Ludtke’s use of a Public Key Infrastructure (PKI) system was argued to disclose the storage of a "secret decryption value." In operation, Ludtke’s device receives a fingerprint scan, compares it to the stored sample, and responsive to a match, sends its unique device ID to a Transaction Privacy Clearing House (TPCH). Petitioner asserted that the TPCH is a "third party that operates a trusted authority" which validates the device ID and sends a "transaction confirmation" (access message) back to an application (e.g., a web browser or downloaded software), allowing the user access.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. For any claim elements in Ludtke not explicitly described as being stored in a tamper-proof format (such as the device ID or secret key), Petitioner argued a Person of Ordinary Skill in the Art (POSITA) would find it obvious to do so. The motivation was to enhance the security and integrity of sensitive information, which is a primary goal of Ludtke’s system.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because Ludtke already taught using secure "write-once memory" for storing sensitive biometric data, making it a routine and predictable design choice to apply the same storage method to other sensitive data like keys and device IDs.

Ground 2: Obviousness over Ludtke in view of Kon - Claims 3, 14, and 17 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 the additional limitations of claims 3, 14, and 17, which require registering an age verification or date of birth. Petitioner asserted that while Ludtke provides the base authentication system, Kon teaches the missing element. Kon discloses an authentication system where personal information, explicitly including a user's age, is registered and stored within a digital certificate that is associated with the user's device ID.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kon’s teaching of registering a user’s age with Ludtke’s biometric transaction system to address the known commercial need for verifying age in certain transactions. This would allow Ludtke's system to be used for purchasing age-restricted goods or accessing age-restricted content, which was a well-understood application for authentication systems.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in this combination. The integration would involve adding another data field (age) to the user's profile in Ludtke’s database, a straightforward modification to a known type of system for a predictable result.

4. Key Technical Contentions (Beyond Claim Construction)

• "Secret Decryption Value" Interpretation: Petitioner contended that a public key within Ludtke's PKI system qualifies as a "secret decryption value." It was argued that although public keys are often not secret, Ludtke discloses their use in a one-to-one configuration for exchanging sensitive data between specific parties. In this context, the key is not publicly known and is functionally "secret" to the communicating parties, thereby meeting the claim limitation.

5. Arguments Regarding Discretionary Denial

• §325(d) - Art Not Before Examiner: Petitioner argued discretionary denial under §325(d) is not warranted because the primary prior art references, Ludtke and Kon, were never considered by the examiner during the original prosecution of the ’954 patent.
• §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv. It was asserted that the trial date in the parallel district court litigation is tentatively scheduled for January 2025 but is subject to change and likely to occur after the Final Written Decision (FWD) deadline in this IPR. Petitioner also highlighted a pending motion to transfer venues, which, if granted, would further delay the district court trial, weighing against discretionary denial.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-7, 10, 12-19, and 22-27 as unpatentable.