Apple Inc v. Proxense LLC

1. Case Identification

• Case #: IPR2024-01335
• Patent #: 9,298,905
• Filed: August 22, 2024
• Petitioner(s): Apple Inc.
• Patent Owner(s): Proxense, LLC
• Challenged Claims: 1-7 and 9-18

2. Patent Overview

• Title: Authentication Responsive to Biometric Verification
• Brief Description: The ’905 patent describes methods and systems for user authentication. The process involves an integrated device that biometrically verifies a user locally, and upon successful verification, sends an ID code to a remote third-party trusted authority to authenticate the code and authorize a transaction.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-7, 9, 10, and 12-18 are obvious over Ludtke.

• Prior Art Relied Upon: Ludtke (Patent 7,188,110).
• Core Argument for this Ground: Petitioner argued that Ludtke, a single prior art reference, discloses all elements of the challenged claims. Ludtke describes systems for authorizing a user transaction with a "biometric device" (e.g., a privacy card or digital wallet) that communicates with a trusted third-party agent, the Transaction Privacy Clearing House (TPCH).
  • Prior Art Mapping: Petitioner asserted that Ludtke's "transaction device" is an integrated device that performs the same functions as claimed in the ’905 patent. For independent claim 1, Ludtke allegedly disclosed:
    • [1a] Persistently storing biometric data ("authorized fingerprint recognition samples") and an ID code ("unique transaction device ID") on an integrated device (a privacy card or digital wallet with write-once memory).
    • [1b-1c] Receiving a "fingerprint recognition sample" (scan data) and using a "recognition algorithm" to compare it against the stored samples to find a match.
    • [1d] Responsive to a successful biometric match, wirelessly sending the device's unique ID to a "highly secured" TPCH, which Petitioner contended is a third-party trusted authority.
    • [1e] Receiving a "transaction confirmation" (access message) from the TPCH, allowing the user to complete a financial transaction, such as a "purchase" or "shopping activity."
  • Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued that all elements were present in Ludtke. To the extent any element was not explicitly disclosed, a person of ordinary skill in the art (POSITA) would have found it an obvious modification. For example, a POSITA would find it obvious to configure Ludtke’s TPCH to compare a received device ID against a stored list to validate the transaction.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success because Ludtke already described the necessary components and their interactions for a secure biometric transaction system.

Ground 2: Claims 2 and 11 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: This ground addressed dependent claims 2 and 11, which added the limitation of "registering an age verification for the user in association with the ID code." Petitioner argued that Ludtke provided the base system for biometric transactions, and Kon supplied the teaching of associating age verification with a user/device ID for authentication purposes.
  • Prior Art Mapping: Kon disclosed a system for user authentication that stores personal information in a certificate. Petitioner asserted that Kon taught registering a user's age in a "Directory Attribute" field of a certificate, which is directly associated with the user's device ID stored in the "Subject" field of the same certificate. This registration process included steps for submitting and verifying the user's age, for instance, via a passport or driver's license.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kon's age verification feature with Ludtke's transaction system to enhance its functionality. Adding age verification would be a predictable solution to a known problem: restricting access to age-sensitive products or services (e.g., alcohol or specific content), thereby making Ludtke's system more versatile and commercially valuable.
  • Expectation of Success (for §103 grounds): Success would be reasonably expected, as both references operated in the user authentication field and involved associating user data with a device identifier. Integrating Kon’s data registration method into Ludtke's authentication framework was presented as a straightforward application of known principles.

4. Key Claim Construction Positions

• Petitioner argued that no claim terms required construction to resolve the unpatentability grounds. However, it noted that the asserted prior art met the constructions previously adopted in other proceedings for key terms:
  • "Third-party trusted authority": A trusted authority that is an entity separate from the principal parties to a transaction. Petitioner contended Ludtke’s TPCH met this construction as it was described as an entity "external" to the user, device, and vendors.
  • "ID Code": A unique code identifying a device. Petitioner mapped this to Ludtke’s "unique transaction device ID."
  • "Access Message": A signal or notification enabling or announcing access. Petitioner mapped this to Ludtke’s "transaction confirmation."

5. Arguments Regarding Discretionary Denial

• Petitioner presented extensive arguments that discretionary denial would be inappropriate.
  • Denial under Fintiv: Petitioner argued against denial based on a co-pending district court litigation because the trial date (tentatively December 2025) was distant and subject to change, a motion to transfer was pending, and Petitioner stipulated it would not pursue the same invalidity grounds in the litigation if the IPR is instituted.
  • Denial under General Plastic: Petitioner argued that a prior IPR filed by Samsung (IPR2021-01447) should not preclude institution because Apple was not a party to that proceeding, the grounds and art are different, and this petition was filed diligently after Patent Owner filed its infringement complaint.
  • Denial under §325(d): Petitioner contended denial was unwarranted because the primary references, Ludtke and Kon, were not considered during original prosecution or in the prior Samsung IPR. While Ludtke was cited in a pending ex parte reexamination, Petitioner argued its use in this petition was materially different (e.g., as a single-reference ground) and supported by new expert testimony.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-7 and 9-18 of the ’905 patent as unpatentable.