PTAB

IPR2024-01334

Apple Inc v. Proxense LLC

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Authentication Responsive to Biometric Verification
  • Brief Description: The ’954 patent describes methods and systems for user authentication. The technology involves an integrated device that persistently stores a user’s biometric data, a device ID, and a secret decryption value, and upon a successful biometric match, wirelessly sends the device ID to a trusted authority for authentication to 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 transaction system using a biometric device like a privacy card or digital wallet, teaches all limitations of the challenged claims. Independent claim 1 is met because Ludtke's transaction device persistently stores biometric data (fingerprint samples) in "write-once memory," which Petitioner contended meets the "tamper proof" and unalterable limitation. The device also stores a unique device ID in permanent memory and a secret decryption value (a public or private key for its Public Key Infrastructure system) to secure transactions. After a successful biometric scan, the device wirelessly sends the device ID to a trusted third-party, the Transaction Privacy Clearing House (TPCH), which authenticates the device and sends back an access message (a transaction confirmation) to an application, such as a web browser or downloaded software.
    • Motivation to Combine (for §103 grounds): This ground relies on a single reference. For elements Petitioner argued were implicitly disclosed, such as storing the device ID in a tamper-proof format, Petitioner asserted a POSITA would have been motivated to do so to ensure the integrity of confidential information, consistent with Ludtke’s goal of secure transactions and its use of write-once memory for other sensitive data like biometrics.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success in implementing these security features, as Ludtke already discloses the core components and security-focused architecture, including the use of tamper-resistant memory for sensitive data.

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 3, 14, and 17, which add the limitation of "registering an age verification for the user" in association with the device ID. Petitioner asserted that while Ludtke provides the base authentication system, Kon explicitly teaches registering a user's personal information, including age, in a "Directory Attribute field" of a digital certificate, which is associated with a user's device ID stored in a "Subject" field. Kon describes this registration as part of a process to create a person identification certificate for authentication.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Kon’s age registration feature with Ludtke’s biometric transaction system to enhance its capabilities. This addition would be a predictable improvement, allowing the system to handle transactions with age restrictions (e.g., purchasing age-restricted content or services), a well-understood commercial need.
    • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in this combination, as it would involve the routine modification of adding another data field (age) to the user's profile within the trusted authority's database (Ludtke’s TPCH), a straightforward task for a person skilled in database management and authentication systems.

4. Arguments Regarding Discretionary Denial

  • §325(d) Arguments: Petitioner argued that discretionary denial under §325(d) is unwarranted because the primary prior art references, Ludtke and Kon, were not considered by the examiner during the original prosecution of the ’954 patent.
  • Fintiv Arguments: Petitioner contended that denial under Fintiv is inappropriate. Although there is a parallel district court litigation, the trial is tentatively scheduled for December 2025, well after the statutory deadline for a Final Written Decision in a related IPR to which Petitioner seeks joinder. Petitioner also stipulated that if the IPR is instituted, it will not pursue the same invalidity grounds in the parallel litigation for the instituted claims.

5. Relief Requested

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