Visa Inc v. Cortex MCP Inc

1. Case Identification

• Case #: IPR2024-00487
• Patent #: 9,251,531
• Filed: January 25, 2024
• Petitioner(s): Visa Inc.
• Patent Owner(s): Cortex MCP, Inc.
• Challenged Claims: 21-33

2. Patent Overview

• Title: File Format and Platform for Storage and Verification of Credentials
• Brief Description: The ’531 patent describes a system for generating, storing, and verifying digital credentials using a secure file called an "Officially Verifiable Electronic Representation" (OVER) file. The system allows a user to present a virtual credential on a device, which a third party can then scan to request and receive verification from a central engine.

3. Grounds for Unpatentability

Ground 1: Claims 21 and 27 are obvious over Oborne

• Prior Art Relied Upon: Oborne (Application # 2012/0316992).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oborne, which teaches a "payment privacy tokenization" apparatus, discloses all elements of independent claim 21. Oborne’s system generates a digital token (the claimed “OVER file”) representing a user’s credential (e.g., a credit card) in response to a request from a user’s device. This token is then sent to the user’s device. A third party (merchant) can initiate a transaction via an NFC interaction (the claimed “scan”) with the user’s device, which sends a verification request with the token to a token server. The server verifies the token against stored credential information and transmits an authentication message back to the merchant. For claim 27, Oborne’s teaching of “device fingerprinting” to provide additional security was argued to render the generation of a device identifier that limits the credential to the client device obvious.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference). However, Petitioner argued it would have been obvious for a POSITA to implement Oborne’s token server as being operated by the credential issuer (e.g., a bank), who would naturally verify the token as an official representation of the credential it issued.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have a reasonable expectation of success in applying Oborne's teachings, as tokenization was a well-understood method for securing payment transactions.

Ground 2: Claims 22-26 and 28-33 are obvious over Oborne in view of Purves

• Prior Art Relied Upon: Oborne (Application # 2012/0316992) and Purves (Application # 2013/0054454).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Oborne reference to address dependent claims related to generating and managing new credentials. Petitioner contended that while Oborne teaches generating tokens for existing credentials, Purves teaches generating and storing new credentials (e.g., gift cards, prepaid cards) within a digital wallet system. Purves discloses a system retrieving payment account information from an issuer to establish a new credential in a virtual wallet. This combination was argued to teach claim 22 (generating a credential when no matching one is stored) and claim 23 (requesting, receiving, and storing credential information and a status indicator from an issuing agency).
  • Motivation to Combine (for §103 grounds): A POSITA would combine Oborne and Purves to add the useful and known functionality of creating new credentials to Oborne's established tokenization system. Both references relate to digital wallets and virtual credentials, making the combination a predictable integration of complementary features to create a more robust system.
  • Expectation of Success (for §103 grounds): The combination was presented as a predictable application of known technologies, where adding new credential generation (Purves) to a tokenization wallet (Oborne) would be expected to work as intended.

Ground 3: Claims 21-26 and 28-33 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 presented this as an alternative to the tokenization-based grounds, mapping Stafford's teachings to the claims. Stafford teaches a system for storing, validating, and disseminating credential information using key signatures (e.g., hash values) instead of tokens. Petitioner argued Stafford’s key signatures are the claimed “OVER files.” To address the claim limitation of a "virtual representation" that is "verified by an issuing agency," Petitioner combined Stafford with Purves. Purves teaches providing issuer-verified images of credentials (e.g., a credit card image) in a digital wallet. This combination allegedly teaches generating an OVER file comprising both a key signature (from Stafford) and a visual credential image (from Purves). Purves also teaches using QR codes to trigger transactions, supplying the obvious motivation to use a scannable QR code to convey Stafford's key signatures.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Purves's user-friendly visual representations and QR code functionality with Stafford's secure credential verification system. This would improve ease of use by giving users a visual confirmation of the credential being shared and providing a convenient method (QR scan) for transmitting the key signatures to a third party.
  • Expectation of Success (for §103 grounds): The integration of credential images and QR codes into a credential management system like Stafford’s was argued to be straightforward and predictable for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Neafsey (Application # 2013/0212248) to explicitly teach using optically scannable codes (e.g., QR codes) as an alternative to the NFC-based "scan" in Oborne.

4. Key Claim Construction Positions

• "OVER file": Petitioner argued this term should be construed broadly to be consistent with Patent Owner's infringement contentions in parallel litigation. This construction encompasses not only a file containing an image of a credential (as described in the patent’s specification) but also a file comprising a digital token that acts as a substitute for a credential.
• "scan": Similarly, Petitioner adopted a broad construction consistent with Patent Owner's litigation position. This interpretation includes not only an optical scan (e.g., of a QR code) but also electronic interactions like a proximity-based NFC payment request.
• "...verified by an issuing agency...": Petitioner construed this phrase to mean that the issuing agency itself must verify that the virtual representation is an official representation of the credential, based on arguments made during prosecution.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is not warranted. It stated that the parallel district court case is in a very early stage, having been recently transferred, with no trial date set. Therefore, a final written decision in the IPR is likely to issue well before any potential trial.
• Petitioner also argued that denial under §325(d) is inappropriate because the petition presents new prior art (Oborne, Purves, Stafford, Neafsey) and arguments that were not considered during the original prosecution. The allowance was based on the examiner finding no prior art taught a "virtual representation...verified by an issuing agency," a point Petitioner contended is directly addressed and rendered obvious by the asserted grounds.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 21-33 of the ’531 patent as unpatentable.