Google LLC v. Proxense LLC

1. Case Identification

• Case #: IPR2024-00234
• Patent #: 9,298,905
• Filed: January 17, 2024
• Petitioner(s): Google LLC
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-7, 9-18

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’905 patent discloses methods and systems for two-factor user authentication to complete a financial transaction. The system involves an integrated device that first performs a local biometric verification of a user, and upon success, wirelessly transmits a unique ID code to a separate, third-party trusted authority for a second level of authentication before granting access.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ludtke - Claims 1, 3-7, 9, 10, and 12-18 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, which teaches systems for authorizing transactions using a biometric device, discloses all limitations of the challenged claims. Ludtke’s “transaction device” (e.g., a privacy card or digital wallet) persistently stores biometric data (fingerprint samples) and a unique device ID. Responsive to a request, the device performs a local biometric verification by comparing a new fingerprint scan to the stored data. Upon a successful match, the device ID is sent wirelessly to a “Transaction Privacy Clearing House” (TPCH), which Petitioner asserted is a third-party trusted authority separate from the user and vendor. The TPCH authenticates the device ID and, if successful, sends a transaction confirmation back to the device, allowing the user to complete a financial transaction.
  • Motivation to Combine (N/A): This is a single-reference obviousness ground. However, for limitations such as not sending the ID code upon biometric failure (claim 14), Petitioner contended a POSITA would find it obvious to implement this feature to prevent unauthorized use of a lost or stolen device and to conserve network resources.
  • Expectation of Success: A POSITA would have had a high expectation of success in implementing Ludtke’s system as described, as it relied on conventional components and well-understood security principles. Any minor modifications would have been predictable and straightforward.

Ground 2: Obviousness over Ludtke and Kon - Claims 2 and 11 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 addresses claims 2 and 11, which add the limitation of "registering an age verification for the user in association with the ID code." Petitioner argued that Ludtke provides the base authentication system as detailed in Ground 1. Kon, which teaches user authentication using biometric data and device IDs, was cited for its disclosure of registering a user’s personal information, including age, within a digital certificate. Kon’s certificate structure stored the device ID in a “Subject” field and associated personal attributes like age in a “Directory Attribute” field.
  • Motivation to Combine: A POSITA would combine Ludtke's transaction system with Kon’s method of registering age with a device ID to enhance Ludtke's system. The primary motivation was to enable and control age-restricted transactions, a common and predictable commercial need. Adding an age verification field to the user data stored and managed by Ludtke’s TPCH would have been a simple and logical extension to provide a useful commercial feature.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination. Integrating an additional data field (age) into an existing user authentication framework was a routine design choice, and the benefits of enabling age-gated transactions were well-known.

4. Key Claim Construction Positions

• Petitioner argued that no claim terms require construction to resolve the petition. However, it noted that its unpatentability arguments are consistent with constructions adopted in prior district court and PTAB proceedings for the ’905 patent, including:
  • "third-party trusted authority": A trusted authority that is an entity separate from the principal parties to a transaction (e.g., the user and the vendor).
  • "ID Code": A unique code identifying a device.
  • "Access Message": A signal or notification enabling or announcing access.

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial would be inappropriate.
  • Fintiv Factors (§314(a)): Petitioner argued that the trial date in the parallel district court litigation (Proxense v. Google, W.D. Tex.) is tentative and subject to change, particularly due to a pending motion to transfer venue. It asserted that the median time to final judgment in the district significantly exceeds the one-year statutory timeline for an IPR final written decision, favoring institution.
  • General Plastic Factors: Petitioner argued that denial is not warranted based on a prior IPR filed by Samsung (IPR2021-01447), because Google was not a party to that IPR, has no significant relationship with Samsung, and the current petition raises new grounds and art not previously considered by the Board.
  • §325(d) Factors: Petitioner contended that the primary references, Ludtke and Kon, were never considered during the original prosecution of the ’905 patent. While Ludtke was cited in a pending ex parte reexamination, Petitioner argued it is presented here in a materially different way—as a standalone reference for a single-reference obviousness ground and in a new combination with Kon—warranting the Board’s consideration.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-7 and 9-18 of the ’905 patent as unpatentable under 35 U.S.C. §103.