PTAB

IPR2024-00776

Microsoft Corp v. Proxense LLC

Key Events

Petition

petition Intelligence

Title: BIOMETRIC PERSONAL DATA KEY (PDK) AUTHENTICATION
Brief Description: The ’905 patent describes methods and systems for user authentication using an integrated device. The device performs a local biometric verification of a user and, upon success, wirelessly transmits an ID code to a separate, third-party trusted authority for a second-level authentication, which then permits the user to complete a financial transaction.

Prior Art Relied Upon: Burger (Application # 2005/0050367).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Burger discloses all limitations of the challenged claims. Burger’s “Pocket Vault” is a portable, integrated device that performs transactions. It stores a user’s biometric data (e.g., fingerprint) and a unique device ID in persistent, write-once memory. For a transaction, the user activates the device with a fingerprint scan; the Pocket Vault compares the scan to the stored data. Upon a successful match, the device wirelessly transmits its unique ID code to a network server, which acts as a third-party trusted authority. The server then verifies this ID against a list of registered device IDs and, if authenticated, sends an approval message to complete a financial transaction with a retailer.
- Motivation to Combine (for §103 grounds): This ground is based on a single reference.
- Expectation of Success (for §103 grounds): Not applicable.

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 2 and 11, which add the limitation of registering an age verification for the user. Petitioner asserted that Burger teaches the base system for biometric transaction authentication. Robinson teaches a system specifically for conducting age verification for access to age-restricted goods or services. Robinson’s system registers a user’s age-verifying information (e.g., from a driver's license) in association with their biometric data and a unique System ID (SID).
- Motivation to Combine (for §103 grounds): A POSITA would combine Robinson’s age verification functionality with Burger’s transaction device to create a more versatile system capable of handling transactions that require age verification, such as purchasing alcohol or accessing casino games. This would have been a simple and predictable improvement to expand the commercial applicability of Burger’s device.
- Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success in integrating Robinson’s known method for associating age data with a user ID into Burger’s existing framework for storing and transmitting user and device IDs.

Prior Art Relied Upon: Burger (Application # 2005/0050367) and Orsini (Application # 2004/0049687).
Core Argument for this Ground:
- Prior Art Mapping: This ground targets claims requiring the integrated device to be one or more of a mobile phone, tablet, or laptop. Petitioner argued that Burger’s Pocket Vault already employed components similar to those in personal digital assistants (PDAs). Orsini, addressing a similar problem of secure biometric authentication, explicitly discloses that its user system could be implemented in a variety of personal computing devices, including a mobile phone or laptop.
- Motivation to Combine (for §103 grounds): A POSITA would combine the teachings to implement Burger’s Pocket Vault functionality within a common consumer device like a mobile phone, as taught by Orsini. This modification would increase user convenience, as users would not need to carry a separate device, and would broaden the system's adoption.
- Expectation of Success (for §103 grounds): Given that Burger’s device already resembled a PDA, implementing its functions in technologically similar devices like mobile phones or laptops was a well-known and predictable design choice with a high likelihood of success.

Petitioner contended that no formal claim constructions are necessary. However, Petitioner noted that its invalidity arguments hold even under the plain and ordinary meaning of the terms or constructions adopted by the Board in a prior inter partes review (IPR) proceeding (IPR2021-01447), specifically for “third-party trusted authority” and “access message.”

§314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation is in its early stages. Key factors weighing against denial included: the district court had not issued a trial schedule, making the trial date uncertain relative to the IPR’s statutory deadline; minimal investment had been made in the litigation; and the merits of the petition are particularly strong.
§325(d) (Advanced Bionics Factors): Petitioner argued against denial under §325(d), asserting that the petition raises new and non-cumulative arguments. The primary reference, Burger, is a robust reference that was never considered during original prosecution or in any prior post-grant proceeding against the ’905 patent. Petitioner contended that the Examiner’s allowance of the claims was based on a material error made without the benefit of Burger’s comprehensive disclosure.

Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 9-13, and 15-18 of the ’905 patent as unpatentable.