Visa Inc v. Cortex MCP Inc

1. Case Identification

• Case #: IPR2024-00488
• Patent #: 9,954,854
• Filed: January 26, 2024
• Petitioner(s): Visa Inc.
• Patent Owner(s): Cortex MCP, Inc.
• Challenged Claims: 1-17

2. Patent Overview

• Title: File Format and Platform for Storage and Verification of Credentials
• Brief Description: The ’854 patent describes methods to generate and verify credentials using an "Officially Verifiable Electronic Representation (OVER) File." These OVER files serve as secure, virtual representations of physical credentials (e.g., driver's licenses, credit cards) that can be stored on a user's device and presented to third parties for verification.

3. Grounds for Unpatentability

Ground 1: Claims 1-17 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" system, discloses all limitations of the challenged claims. Oborne’s system uses tokens as stand-ins for credit card credentials, which Petitioner mapped to the claimed "OVER file." Oborne’s architecture includes a token server ("OVER engine") that stores credential information and generates/transmits tokens to a user's device ("OVER file client device"). A merchant's point-of-sale terminal ("OVER file verifying device") accesses the token via an NFC interaction (mapped to the claimed "scan") and sends a verification request to the token server, which responds with an authentication message. Oborne also teaches using "device fingerprinting" to tie tokens to specific devices, satisfying the claims' requirement for a second, device-specific credential that is invalid for use on a first device.
  • Motivation to Combine: Not applicable, as this ground relies on a single reference. Petitioner asserted that Oborne's inherent system design teaches the claimed invention.
  • Expectation of Success: Petitioner argued a POSITA would have had a high expectation of success, as Oborne describes a complete and functional system for tokenized transactions.

Ground 2: Claims 1-17 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 but argues for an alternative implementation of the "scan" limitation. While Ground 1 mapped an NFC interaction to the "scan," Petitioner asserted it would have been obvious to use an optical scan instead. Neafsey teaches various formats for virtual credentials, including optically scannable formats like QR codes and barcodes, to initiate transactions. The remaining claim limitations were argued to be taught by Oborne as detailed in Ground 1.
  • Motivation to Combine: A POSITA would combine Neafsey's optically scannable codes with Oborne’s tokenization system as a simple substitution of one known transaction initiator (NFC) for another (optical code). This combination would achieve the predictable result of providing greater flexibility and convenience, allowing a wider range of mobile devices to support the system.
  • Expectation of Success: A POSITA would have a reasonable expectation of success, as Oborne itself teaches the use of optical codes like QR codes in other transactional contexts, making the substitution straightforward and predictable.

Ground 3: Claims 1-17 are obvious over Stafford, Purves, and Neafsey

• Prior Art Relied Upon: Stafford (Application # 2009/0271321), Purves (Application # 2013/0054454), and Neafsey (Application # 2013/0212248).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued this combination teaches all claim limitations. Stafford discloses a system for validating and disseminating credential information that stores user credentials and uses key signatures (e.g., hash values) for verification by a third party. To the extent Stafford does not explicitly teach a visual representation of the credential verified by an issuer, Purves supplies this element by teaching the use of issuer-provided images of credentials (e.g., a credit card image) in a digital wallet to improve user experience. Neafsey teaches providing virtual credentials in various formats, including device-specific, optically scannable codes.
  • Motivation to Combine: A POSITA would combine these references to improve Stafford's system. Purves's visual credential images would be added to Stafford's key signatures to provide users a convenient visual confirmation of the credential being used. A POSITA would also incorporate Neafsey's teachings to encode Stafford’s key signatures into device-specific, optically scannable codes. This would provide a more efficient and reliable method for transmitting the key signatures to a third party and would create credentials that are securely tied to a specific user device, rendering them invalid on other devices.
  • Expectation of Success: Success would be expected, as all three references address similar problems in the electronic credential space. Incorporating well-known features like credential images and scannable codes into a credential management system like Stafford’s would have been a straightforward and predictable design choice for a POSITA.

4. Key Claim Construction Positions

• "OVER file": Petitioner applied a construction that encompasses both a file containing an image of a credential (as described in the patent's specification) and a "token" (as asserted by the Patent Owner in parallel litigation), thereby addressing both interpretations.
• "scan": Petitioner argued that this term should be construed to include both an optical scan (e.g., of a QR code) as described in the specification, and a proximity-based interaction like NFC, consistent with the Patent Owner's litigation position.
• "...verified by an issuing agency...": Petitioner construed this phrase to require that the issuing agency itself has actively verified 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 because the parallel district court litigation is in its early stages with no trial date set, making it likely that a Final Written Decision would issue well before any potential trial.
• Petitioner further contended that denial under 35 U.S.C. §325(d) is inappropriate because the petition raises new prior art and arguments that were not before the Examiner during the original prosecution, and these references demonstrate that the claims were allowed in material error.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and cancellation of claims 1-17 of Patent 9,954,854 as unpatentable.