Visa Inc v. Cortex MCP Inc

1. Case Identification

• Case #: IPR2024-00486
• Patent #: 9,251,531
• Filed: January 25, 2024
• Petitioner(s): Visa Inc.
• Patent Owner(s): Cortex MCP, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: File Format and Platform for Storage and Verification of Credentials
• Brief Description: The ’531 patent describes a system for managing digital credentials. The system generates an "Officially Verifiable Electronic Representation" (OVER) file, which acts as a virtual credential that is sent to a user's device and can be presented to a third party for verification by a central engine.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 4-14 are obvious over Oborne.

• Prior Art Relied Upon: Oborne (Application # 2012/0316992).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oborne’s "payment privacy tokenization" system teaches all limitations of the challenged claims. Oborne's "token server" or "token arbitrator" functions as the claimed OVER engine, and its "token" corresponds to the claimed OVER file. Petitioner asserted that Oborne discloses storing user credential information (e.g., credit card details), receiving a request from a user's client device to initiate a transaction, generating a token based on that credential, and transmitting it back to the client. The system then receives a verification request from a merchant's device, triggered by an NFC interaction (which Petitioner equates to the claimed "scan," per Patent Owner’s litigation positions), and verifies the token against stored credential information.
  • Motivation to Combine: Not applicable as a single reference is used. However, Petitioner contended it would have been obvious for the token-issuing entity in Oborne to also be the credential issuer (e.g., a bank), thus satisfying the limitation of a credential "verified by an issuing agency." This arrangement was described as common practice for credit card issuers.
  • Expectation of Success: A POSITA would have expected success in implementing Oborne’s system as it represented well-understood tokenization techniques used to secure payment transactions.

Ground 2: Claims 1-2, 4-18, and 20 are obvious over Oborne in view of Neafsey.

• Prior Art Relied Upon: Oborne (Application # 2012/0316992) and Neafsey (Application # 2013/0212248).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the teachings of Oborne by substituting its NFC-based transaction trigger with the optically-scannable codes taught by Neafsey. Petitioner argued that Neafsey discloses generating virtual credentials in various formats, including scannable QR codes and bar codes. The combination thus teaches displaying a scannable code (a portion of the OVER file) on a user device, which is then optically scanned by a third-party device to initiate verification, satisfying limitations in claims 15 and 16.
  • Motivation to Combine: A POSITA would combine these references as a simple substitution of one known element for another to achieve a predictable result. Replacing Oborne's NFC trigger with Neafsey's scannable codes would increase flexibility and convenience, allowing a broader range of mobile devices (including those without NFC capabilities) to use the system.
  • Expectation of Success: Success would be expected because Oborne itself discloses using QR codes in other contexts, demonstrating the compatibility of the technologies for financial transactions.

Ground 3: Claims 1, 3-5, 7-16, and 18-20 are obvious over Stafford in view of Purves.

• Prior Art Relied Upon: Stafford (Application # 2009/0271321) and Purves (Application # 2013/0054454).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Stafford teaches a credential verification system that meets most claim limitations but uses key signatures (e.g., hash values) instead of tokens. Stafford's system stores credential information in a database (the OVER engine), generates key signatures that serve as the OVER file, and verifies them upon request from a third party. Purves was argued to supply the remaining limitations, specifically by teaching the use of visual credential representations (e.g., credit card images) and using QR codes to trigger transactions.
  • Motivation to Combine: A POSITA would combine Stafford and Purves to improve the usability of Stafford's system. Incorporating credential images from Purves would provide a user-friendly way for users to identify and select credentials. Using QR codes from Purves would offer a more efficient and reliable method for transmitting Stafford's key signatures to a third party compared to manual entry.
  • Expectation of Success: The combination was presented as a straightforward application of familiar user interface features to a known credential management system, both operating in the same field of electronic credential replacement.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Oborne and Purves (to add generating a new credential when none is stored); Oborne, Purves, and Neafsey (to add credential images to the scannable code system); and Stafford, Purves, and Neafsey (to add device-specific identifiers).

4. Key Claim Construction Positions

• "OVER file": Petitioner argued, based on the Patent Owner’s infringement complaint, that this term should be interpreted broadly to encompass not only a file containing credential information but also a digital "token" used as a substitute for a credential.
• "scan": Citing the same complaint, Petitioner contended that "scan" should be construed to include not only optical scans (e.g., of a QR code) but also proximity-based electronic interactions, such as Near Field Communication (NFC).
• "...verified by an issuing agency...": Petitioner construed this phrase to require that the issuing agency itself has verified that the virtual representation in the OVER file is an official representation of the credential, a key limitation argued for patentability during prosecution.

5. Arguments Regarding Discretionary Denial

• Petitioner argued discretionary denial is not warranted. Under the Fintiv factors, it was asserted that the parallel district court litigation was in a very early stage with no trial date set, making it highly probable that a Final Written Decision in the IPR would issue well before any trial.
• Petitioner also argued against denial under §325(d), stating that the petition raises new prior art and arguments that were not before the Examiner during prosecution and are not cumulative to the prosecution record.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,251,531 as unpatentable.