Microsoft Corp v. Proxense LLC

1. Case Identification

• Case #: IPR2024-01327
• Patent #: 8,886,954
• Filed: August 20, 2024
• Petitioner(s): Microsoft Corporation
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-7, 10, 12-19, and 22-27

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’954 patent describes methods and systems for user authentication. The technology involves a user providing biometric data to an integrated device, which verifies the data against stored information and, upon successful verification, sends codes to a trusted authority to authenticate the user and grant access to an application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ludtke - Claims 1-2, 4-7, 10, 12-13, 15-16, 18-19, and 22-27 are obvious over Ludtke.

• Prior Art Relied Upon: Ludtke (Patent 7,188,110).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ludtke, which discloses a biometric "transaction device" for authorizing commercial transactions, teaches all limitations of the challenged claims. Ludtke’s device (e.g., a privacy card or digital wallet) stores authorized fingerprint samples, a unique device ID, and uses a Public Key Infrastructure (PKI). Upon a successful fingerprint match, the device communicates its unique ID wirelessly to a trusted third-party, the Transaction Privacy Clearing House (TPCH), for authentication. The TPCH then processes the transaction and sends a confirmation message back to an application (e.g., a web browser), allowing the user to complete a purchase or access content.
  • Petitioner asserted that Ludtke's disclosure of storing biometric data in "write-once memory" meets the claim limitation of a "tamper proof format." While Ludtke does not explicitly state that the device ID and secret decryption keys are also stored in a tamper-proof format, Petitioner contended a person of ordinary skill in the art (POSITA) would find it obvious to do so.
  • Motivation to Combine (for obvious modifications): A POSITA would be motivated to store other sensitive data, such as the device ID and PKI keys, in the same "write-once memory" as the biometric data to enhance the overall security of the system, which is a stated goal of Ludtke. This modification would prevent tampering with identifiers and keys, ensuring system integrity.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making these modifications, as it involves applying a known storage technology (write-once memory) to secure different types of sensitive data within the same device, a predictable and straightforward implementation.

Ground 2: Obviousness over Ludtke and Kon - Claims 3, 14, and 17 are obvious over Ludtke in view of Kon.

• Prior Art Relied Upon: Ludtke (Patent 7,188,110) and Kon (Application # 2002/0046336).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses dependent claims requiring "registering an age verification." Petitioner argued that while Ludtke provides the base system, it does not explicitly teach age verification. Kon, which relates to authenticating a user for a transaction, remedies this deficiency. Kon discloses creating a person identification certificate (IDC) that associates a user's device ID with personal information, explicitly including "age," which can be used to authenticate the user. Kon teaches that attributes like age can be registered and stored in association with a user's device ID to identify the user.
  • Motivation to Combine: A POSITA would be motivated to combine Kon's teaching of age registration with Ludtke's biometric authentication system for clear commercial reasons. Adding age verification to Ludtke's transaction device would allow it to be used for age-restricted transactions, such as purchasing alcohol or accessing age-gated content, thereby increasing the system's utility and applicability. This combination addresses a well-known need to control access to certain services based on user age.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination. Integrating an additional data point (age) into an existing authentication framework (Ludtke's system) was a known and predictable method for enhancing system capabilities, with no technical hurdles that would have discouraged its implementation.

4. Key Claim Construction Positions

• Petitioner asserted that no special claim constructions are necessary to resolve the unpatentability issues. It argued that the prior art discloses the limitations under their plain and ordinary meaning.
• Petitioner noted that in a related district court litigation, the terms "Device ID Code" and "Access Message" were construed as "[a] unique code identifying a device" and "[a] signal or notification enabling or announcing access," respectively. Petitioner maintained that the cited prior art discloses these features consistent with those constructions.

5. Arguments Regarding Discretionary Denial

• §325(d) Denial: Petitioner argued that discretionary denial under §325(d) is not warranted because the primary prior art references, Ludtke and Kon, were never considered by the examiner during the original prosecution of the ’954 patent. Therefore, the petition raises new arguments and art combinations not previously evaluated by the USPTO.
• Fintiv Denial: Petitioner contended that denial under the Fintiv factors is inappropriate because it has filed a Sotera stipulation. This stipulation promises not to pursue the same invalidity grounds in the parallel district court litigation, which, under current USPTO guidance, weighs strongly against denying institution on Fintiv grounds by mitigating concerns of duplicative efforts.

6. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1-7, 10, 12-19, and 22-27 of the ’954 patent as unpatentable.