Apple Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2024-01333
• Patent #: 8,352,730
• Filed: August 22, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-6, 8-17

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’730 patent describes methods and systems for user authentication using a biometric key. The process involves a device receiving biometric scan data, verifying it against previously stored data, and, if successful, sending codes to a separate, trusted authority to authenticate the user and grant access to an application.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ludtke - Claims 1, 2, 4-6, 8, 9, 11, 12, and 14-17 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 authorizing transactions with a “biometric device” like a privacy card, teaches all limitations of the challenged independent claims. For independent claim 1, Ludtke’s device (an “integrated device”) performs user verification by storing “authorized fingerprint recognition samples” (“biometric data”) in “write-once memory” (“persistently storing” in a “tamper proof format”). The device also stores a “unique transaction device ID value” and uses a Public Key Infrastructure (PKI) that requires storing secret keys (“secret decryption value”). In operation, Ludtke’s device prompts a user for a fingerprint sample (“receiving scan data”), compares it to the stored sample, and if a match occurs, wirelessly sends the device ID to a “Transaction Privacy Clearing House” (TPCH). Petitioner asserted the TPCH is a “third-party trusted authority” as it is a secure, separate entity that maintains a list of device IDs to authenticate transactions. Upon authentication by the TPCH, a confirmation (“access message”) is sent back to grant the user access to a service (an “application”).
  • Motivation to Combine: While this is a single-reference ground, Petitioner argued that to the extent Ludtke does not explicitly disclose storing the device ID and secret keys in tamper-proof, write-once memory, a POSITA would combine these features. A POSITA would have been motivated to store all sensitive data (biometric data, device ID, keys) in the same secure, unalterable format to enhance the integrity and security of the entire system, which is a stated goal of Ludtke.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in using write-once memory to store the device ID and keys, as Ludtke already teaches using this type of memory for other sensitive information like biometric data.

Ground 2: Obviousness over Ludtke in view of Kon - Claims 3, 10, and 13 are obvious over Ludtke and 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 age or birthdate verification. Petitioner argued that while Ludtke provides the base system for biometric authentication, Kon teaches the missing element of registering age verification. Kon discloses an authentication system where user information is stored in a person identification certificate (IDC). This certificate explicitly includes fields for the device ID ("Subject" field) and personal attributes, including the user's "age" ("Directory Attribute" field), which can be verified using documents like a driver's license or passport.
  • Motivation to Combine: A POSITA would combine Kon’s teaching of registering age information with Ludtke's secure transaction system for the predictable purpose of enabling age-restricted transactions. Adding an age-check capability would be a simple and logical improvement to broaden the utility of Ludtke’s device, allowing it to be used for services like purchasing alcohol or accessing age-restricted content, which was a known commercial need.
  • Expectation of Success: A POSITA would have a high expectation of success in this combination. It merely involved adding a known data field (age verification) from one authentication framework (Kon) into a similar framework (Ludtke) to provide a well-understood and desirable function.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
• Fintiv: The trial in the parallel district court litigation is scheduled for December 2025, well after the IPR statutory deadline, and its schedule is uncertain due to a pending motion to transfer. Petitioner also stipulated it would not pursue the IPR grounds in district court if the petition is instituted, mitigating concerns of duplicative efforts.
• General Plastics: Petitioner was not a party to a previously filed IPR on the ’730 patent by Samsung, has no significant relationship with Samsung, and asserted different prior art and arguments.
• §325(d): The primary references, Ludtke and Kon, were not considered by the USPTO during prosecution or in the prior IPR. Although Ludtke is cited in a pending ex parte reexamination, Petitioner asserted that this petition presents new arguments and a more meritorious challenge, warranting the Board's consideration.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-6 and 8-17 of the ’730 patent as unpatentable.