PTAB

IPR2024-00846

Microsoft Corp v. Proxense LLC

Key Events

Petition

Title: Biometric Personal Data Key (PDK) Authentication
Brief Description: The ’954 patent discloses methods and systems for authenticating a user via a portable integrated device. The device stores the user's biometric data in a tamper-proof format and, upon successful biometric verification, wirelessly communicates with a trusted third-party authority to grant the user access to an application.

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 an integrated device that stores a user’s biometric data (e.g., fingerprints) in a write-once memory, which Petitioner contended constitutes a “storage element...not capable of being subsequently altered” in a “tamper proof format.” The Pocket Vault performs an on-board comparison of scanned biometric data against the stored data. Upon a successful match, it wirelessly transmits an encrypted message including its unique device ID to a network server, which acts as the claimed “third party that operates a trusted authority.” Petitioner asserted that the server then authenticates the Pocket Vault and transmits an encrypted approval message back, which functions as the claimed “access message” allowing the user to access an application, such as displaying credit card information for a transaction.
- Key Aspects: This ground asserted that Burger’s detailed disclosure of the Pocket Vault system, its components, and its method of operation for financial and non-financial transactions provides a one-to-one correspondence for the elements of the independent claims and the various functionalities recited in the dependent claims.

Prior Art Relied Upon: Burger (Application # 2005/0050367) and Robinson (Application # 2003/0177102).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims requiring age verification. Petitioner argued that while Burger provides the core authentication system, Robinson explicitly teaches a reliable method for age verification using biometrics and a system ID (SID) for accessing age-restricted goods and services. Robinson’s method involves registering age-verifying information (e.g., date of birth) in a central database, which is then checked during a transaction.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Robinson’s age verification functionality with Burger’s transaction system to enhance its utility. Businesses using Burger's system for transactions like alcohol sales or casino gaming would require age verification to comply with laws and avoid penalties, providing a strong and predictable motivation for the combination.
- Expectation of Success: The combination would have been straightforward, involving integrating Robinson’s age-verification logic into Burger’s existing network server and database architecture. This was a simple application of a known technique (age verification) to a known system (Burger's Pocket Vault) to achieve a predictable result.

Prior Art Relied Upon: Burger (Application # 2005/0050367) and Orsini (Application # 2004/0049687).
Core Argument for this Ground:
- Prior Art Mapping: This ground targeted claims specifying that the integrated device comprises a mobile phone or laptop. Burger describes its Pocket Vault as being similar to personal digital assistants (PDAs) and palmtop computers. Orsini, which also discloses a system for securing sensitive data using biometrics, explicitly states that its mobile user device can be a mobile phone, laptop, or digital assistant.
- Motivation to Combine: A POSITA would have been motivated to implement Burger’s Pocket Vault functionality on a mobile phone or laptop, as taught by Orsini, to increase user convenience and leverage the growing ubiquity of such devices for electronic transactions. This modification would represent a common-sense design choice to make the device more commercially viable and portable, replacing a dedicated device with a multi-function one.
- Expectation of Success: Success was foreseeable, as implementing the functions of a PDA-like device onto a mobile phone or laptop was a well-known and predictable technological convergence at the time.

§314(a) (Fintiv Factors): Petitioner argued against discretionary denial, stating that the parallel district court litigation is in its very early stages. Key arguments included that no trial date is set, claim construction has not occurred, and the invalidity contentions in the litigation are not yet finalized. Petitioner asserted that the Final Written Decision (FWD) in the inter partes review (IPR) would likely issue before any district court trial, and that the strong merits of the petition weigh heavily in favor of institution, outweighing any potential inefficiencies.
§325(d) (Advanced Bionics Factors): Petitioner contended that denial under §325(d) would be improper because the primary reference, Burger, is not cumulative to any prior art considered during the original prosecution of the ’954 patent or in any subsequent proceeding. Petitioner characterized Burger as a robust, 91-page reference that teaches the claimed subject matter far more clearly than the art previously before the Examiner. Therefore, Petitioner argued the Examiner committed a material error by allowing the claims without the benefit of considering Burger.

Petitioner requests institution of IPR and cancellation of claims 1-29 of the ’954 patent as unpatentable.