PTAB

IPR2024-00775

Microsoft Corp v. Proxense LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: BIOMETRIC PERSONAL DATA KEY (PDK) AUTHENTICATION
  • Brief Description: The ’730 patent is directed to systems and methods for performing authentication responsive to a user's biometric verification. The invention discloses a portable biometric key that stores user data and communicates with a trusted third-party authority to grant access to various applications or services.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 4-9, 11, 12, and 14-17 are obvious over Burger

  • Prior Art Relied Upon: Burger (Application # 2005/0050367).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Burger, which discloses a portable electronic "Pocket Vault" device intended to replace a physical wallet, teaches every limitation of the challenged claims. The Pocket Vault stores user fingerprint data ("biometric data") and a unique chip ID ("device ID code") in a write-once memory, which Petitioner mapped to the claimed "tamper proof format." Burger also discloses using encryption, satisfying the "secret decryption value" limitation. In operation, after a user's fingerprint is scanned and successfully matched with the stored data, the Pocket Vault wirelessly transmits its unique ID to a remote network server for authentication. Petitioner asserted this server, which maintains a list of legitimate device IDs, functions as the claimed "agent" or "third-party trusted authority." Upon successful authentication of the device ID, the server sends an approval message back, allowing the user access to an "application," such as displaying credit card information on the Pocket Vault for a transaction. Petitioner contended this process maps directly to the steps recited in independent claims 1, 8, 12, and 15.

Ground 2: Claims 3, 10, and 13 are obvious over Burger in view of Robinson

  • Prior Art Relied Upon: Burger (Application # 2005/0050367) and Robinson (Application # 2003/0177102).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses dependent claims 3, 10, and 13, which add the limitation of registering an age verification for the user. Petitioner argued that Robinson teaches a system for conducting age verification for access to age-restricted goods, services, or areas. Robinson’s method involves registering age-verifying information, such as a date of birth, and associating it with a user's biometric data and a system ID (SID) number stored in a central database. The combination would involve incorporating Robinson's age-verification registration and checking process into Burger’s existing authentication framework, with the age data stored in the database of Burger's network server.
    • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Robinson's age verification with Burger's digital wallet to enhance its functionality for transactions involving age-restricted items (e.g., alcohol, casino games). This would provide a significant commercial advantage by offering businesses a simple, integrated solution to comply with age-verification laws and avoid potential penalties, representing a predictable application of a known technique to an existing device.
    • Expectation of Success: A POSITA would have a high expectation of success in implementing this combination. It would merely require adding an age-data field to the user profiles in Burger's network server database and incorporating an age-check into the server's existing authorization logic. Petitioner contended these are routine and well-understood software modifications.

4. Arguments Regarding Discretionary Denial

  • Fintiv (§314(a)): Petitioner argued that discretionary denial under Fintiv is unwarranted. The parallel district court litigation is in its early stages, a trial date has not been scheduled, and the court recently lifted a stay related to a transfer motion. Given the court's median time-to-trial, the PTAB's Final Written Decision (FWD) in this inter partes review (IPR) is projected to issue before or around the same time as a potential trial, weighing against denial.
  • Advanced Bionics (§325(d)): Petitioner contended that the challenge is not based on cumulative art or arguments. The primary reference, Burger, is a robust 91-page application that is substantially different from and more detailed than the art considered during the original prosecution or in prior IPRs filed against the ’730 patent. Because the examiner and the Board have not previously considered the specific teachings and combinations asserted in this petition, denial under §325(d) would be inappropriate.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’730 patent as unpatentable.