Visa Inc v. Cortex MCP Inc

1. Case Identification

• Case #: IPR2024-00490
• Patent #: 11,329,973
• 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 ’973 patent discloses methods and systems for generating and verifying a digital credential using an "Officially Verifiable Electronic Representation (OVER) File." The system involves an engine that creates an OVER file, transmits it to a user's device, and later verifies the file for a third party via Near Field Communication (NFC) or Bluetooth.

3. Grounds for Unpatentability

Ground 1: Obviousness over Oborne - Claims 1-2, 4-7, and 16-17 are obvious over Oborne

• Prior Art Relied Upon: Oborne (Application # 2012/0316992).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Oborne teaches a "payment privacy tokenization apparatus" that performs all steps of the independent claims. This apparatus functions as the claimed "OVER engine" by storing credential information (user account data), receiving a generation request from a user's client device, generating a token (the "OVER file"), and transmitting it to the user. Oborne further discloses receiving a verification request from a third-party merchant via NFC, verifying the token by checking it against stored account information, and transmitting an authentication message back to the merchant. The argument for claim 16 is analogous, substituting Bluetooth for NFC, which Oborne also discloses as a communication option.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference).
  • Expectation of Success (for §103 grounds): Petitioner contended that implementing Oborne's disclosed tokenization system as claimed would have been a predictable application of its teachings for a person of ordinary skill in the art (POSA).

Ground 2: Obviousness over Oborne and Purves - Claims 3 and 8-15 are obvious over Oborne and Purves

• Prior Art Relied Upon: Oborne (Application # 2012/0316992) and Purves (Application # 2013/0054454).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Oborne provides the foundational tokenization system, as detailed in Ground 1. Purves was introduced to supply the teaching of generating a new credential when the system determines no existing credential is stored. Purves discloses methods for enrolling new payment accounts, such as gift cards, into a user’s electronic wallet. This addresses limitations in claims 3 and 10, which recite generating a credential after determining that no credential of the user is stored.
  • Motivation to Combine (for §103 grounds): A POSA would combine these references because they address similar applications in virtual wallets and digital credentials. It would have been a common-sense improvement to integrate Purves’s functionality for adding new credentials into Oborne’s tokenization system to enhance its utility and provide a more complete wallet solution.
  • Expectation of Success (for §103 grounds): The combination was argued to be a predictable integration of known, related technologies to produce a wallet system capable of both tokenized transactions and new credential enrollment.

Ground 3: Obviousness over Stafford and Purves - Claims 1, 3, 5-8, 10, and 12-15 are obvious over Stafford and Purves

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

• Core Argument for this Ground:

  • Prior Art Mapping: This ground offered an alternative approach where Stafford teaches the core credential verification system. Stafford discloses a system for validating and disseminating credential information using key signatures (e.g., hash values for encrypted files) rather than tokens. This system stores user credentials, generates key signatures (the "OVER file"), and allows a third party to receive credential verification. To the extent Stafford does not explicitly teach a visual representation verified by an issuing agency or the use of NFC, Purves was cited. Purves teaches providing issuer-verified images of credentials (e.g., credit card images) in a digital wallet and using NFC to trigger transactions.
  • Motivation to Combine (for §103 grounds): A POSA would combine Stafford’s back-end security architecture with Purves’s user-friendly front-end features. Adding visual credential images and convenient NFC transmission from Purves to Stafford's system would improve ease of use and efficiency, which were recognized benefits.
  • Expectation of Success (for §103 grounds): Incorporating well-known functionalities like credential images and NFC into a credential management system like Stafford’s was presented as a straightforward and predictable design choice.

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 2, 4, 9, 11, and 16-17 based on Stafford, Purves, and Neafsey (Application # 2013/0212248). Neafsey was added primarily to teach using Bluetooth for communication and generating device-specific credentials tied to a unique device ID to limit their validity, addressing limitations in the remaining dependent claims.

4. Key Claim Construction Positions

• "OVER file": Petitioner argued this term should be construed broadly to encompass a digital token. This position was based on the Patent Owner’s own infringement complaint, which expressly equated the claimed "OVER files" with tokens. This construction is central to the arguments based on the Oborne reference.
• "...verified by an issuing agency...": Petitioner construed this phrase to require that the issuing agency verifies that the virtual representation (e.g., the token or image) is an official representation of the underlying credential. This construction was based on arguments made by the applicant during prosecution of a parent application.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv is not warranted. It was noted that while a parallel district court case exists, a trial date has not been set and is reasonably expected to occur after the Final Written Decision (FWD) in this inter partes review (IPR).
• Petitioner also contended that denial under §325(d) would be inappropriate because the petition presents new prior art and arguments that were not before the Examiner during prosecution, alleging that the allowance of the claims constituted a material error.

7. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-17 of the ’973 patent as unpatentable.