Visa Inc v. Cortex MCP Inc

1. Case Identification

• Case #: IPR2024-00489
• Patent #: 10,749,859
• Filed: January 26, 2024
• Petitioner(s): Visa Inc.
• Patent Owner(s): Cortex MCP, Inc.
• Challenged Claims: 1-21

2. Patent Overview

• Title: File Format and Platform for Storage and Verification of Credentials
• Brief Description: The ’859 patent discloses methods and systems for generating and verifying user credentials through an "Officially Verifiable Electronic Representation (OVER) File." The system allows a central engine to store credential information, generate an OVER file, transmit it to a user's device, and later verify it for a third party using Near Field Communication (NFC) or Bluetooth protocols.

3. Grounds for Unpatentability

Ground 1: Obviousness over Oborne - Claims 1-2, 4-10, 13-14, and 16-21 are obvious over Oborne.

• Prior Art Relied Upon: Oborne (Application # 2012/0316992).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Oborne, which teaches a "payment privacy tokenization" system, discloses all limitations of the challenged claims. Petitioner mapped Oborne's "token" to the claimed "OVER file," consistent with the Patent Owner's infringement contentions. Oborne's token server acts as the claimed "OVER engine" by storing user account information. It receives a token generation request from a user's NFC-enabled client device, generates a token (the OVER file), and transmits it to the client. Subsequently, it receives a verification request from a third-party merchant, verifies the token's authenticity against stored data, and transmits an authentication message back to the merchant.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner argued all elements are present or would have been obvious modifications within Oborne's system. For example, Petitioner contended it would be obvious for the token-issuing entity in Oborne to also be the credential's "issuing agency," thereby satisfying the "verified by an issuing agency" limitation.
  • Expectation of Success (for §103 grounds): A person of ordinary skill in the art (POSA) would have a reasonable expectation of success in implementing the claimed method using Oborne's disclosed tokenization framework.

Ground 2: Obviousness over Stafford and Purves - Claims 1, 3-4, 6-9, 11-12, and 14-17 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 argued that Stafford teaches a system for validating and disseminating credential information that meets most claim elements. Stafford's system stores credential data and uses key signatures (e.g., hash values), which Petitioner mapped to the "OVER file," to verify a user's identity for a third party. Petitioner contended that Purves supplies the remaining limitations. Specifically, Purves teaches providing issuer-verified visual representations of credentials (e.g., credit card images) for use in digital wallets and using NFC to trigger transactions.
  • Motivation to Combine (for §103 grounds): A POSA would combine Stafford and Purves to improve Stafford's system. Adding visual credential images from Purves would enhance usability and reduce user error. Incorporating Purves's well-known NFC communication protocol would provide a more efficient and reliable method for transferring Stafford's key signatures to a third party compared to manual entry.
  • Expectation of Success (for §103 grounds): The combination involves applying known technologies (NFC, digital images) to a credential management system to achieve predictable benefits, giving a POSA a high expectation of success.

Ground 3: Obviousness over Stafford, Purves, and Neafsey - Claims 2, 5, 10, 13, and 18-21 are obvious over Stafford and Purves in view of 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: This ground built upon the combination of Stafford and Purves to address claims requiring device-specific credentials and the use of Bluetooth. Petitioner asserted that Neafsey teaches a credential management system that generates credentials tied to a "unique device ID," rendering a credential for one device invalid for use on another. This teaching was argued to meet the limitations of claims 2, 10, 19, and 21. Neafsey also teaches using device identifiers to limit a credential's validity (claims 5 and 13) and discloses using both Bluetooth and NFC for communications (claims 18 and 20).
  • Motivation to Combine (for §103 grounds): A POSA would be motivated to incorporate Neafsey's teachings into the Stafford/Purves system to enhance security. Tying a credential to a unique device ID is a known method for preventing its use if stolen or intercepted. Adding Bluetooth capability would increase flexibility and support a wider range of mobile devices.
  • Expectation of Success (for §103 grounds): Combining these related technologies for managing electronic credentials would be a predictable integration of known elements to achieve the expected benefits of enhanced security and device compatibility.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 3, 11-12, and 15 over Oborne and Purves, primarily adding Purves's teachings on generating new credentials (e.g., gift cards) to Oborne's tokenization system.

4. Key Claim Construction Positions

• "OVER file": Petitioner argued for an interpretation encompassing a file that comprises a "token." This construction was based not only on the patent's specification but also on the Patent Owner's explicit characterization of the "OVER File" as a token in its parallel district court complaint.
• "...verified by an issuing agency...": Petitioner construed this phrase to require that the agency that issued the original credential must have also verified the "virtual representation" in the OVER file as being an official representation of that credential.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv is not warranted. The parallel district court litigation, transferred to the Northern District of California, does not yet have a trial date set. Petitioner contended that a trial is not expected to occur before a Final Written Decision would issue in this IPR.
• Petitioner also argued against denial under §325(d), asserting that the petition raises new prior art and arguments that were not before the Examiner during prosecution, constituting a material error in the patent's allowance.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of the ’859 patent as unpatentable.