Samsung Electronics Co Ltd v. Ward Participations BV

1. Case Identification

• Case #: PGR2022-00007
• Patent #: 10,992,480
• Filed: October 29, 2021
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Scott MacDonald Ward
• Challenged Claims: 1-19

2. Patent Overview

• Title: Method and System for Performing a Transaction and for Performing a Verification of Legitimate Access to, or Use of Digital Data
• Brief Description: The ’480 patent describes methods and systems for secure electronic transactions by providing authentication data and software to an electronic device. The technology purports to store this information in a secure location, such as the BIOS, that is inaccessible to the user or the operating system.

3. Grounds for Unpatentability

Ground 1: Lack of Written Description - Claims 1-19 fail to meet the requirements of 35 U.S.C. §112(a)

• Core Argument for this Ground: Petitioner argued that the ’480 patent’s specification fails to provide adequate written description support for the challenged claims, rendering them invalid. The petition asserted that the patent’s effective filing date is its actual filing date of October 9, 2019, making it eligible for Post-Grant Review (PGR).
  • Unsupported Limitations: The core deficiency alleged is that the specification does not describe the claimed invention after amendments were made during prosecution to replace "authentication data" with "private key." Key claimed features lacking support include:
    • Providing a "private key" in a secure part of the BIOS or other secure memory.
    • The private key being inaccessible to the user.
    • The private key being encrypted when stored in memory.
    • The private key being decrypted in a secure processing environment inaccessible to the user and operating system.
  • Inconsistent Embodiments: Petitioner contended that the specification describes distinct and incompatible embodiments. For example, one embodiment describes a secure area accessible only to the BIOS, while another describes authentication data stored in memory accessible to the operating system. The claims allegedly improperly combine features from these contradictory embodiments.
  • Foreign Proceedings: The petition highlighted that corresponding European patents were invalidated by the Hague Court for lacking support for similar claim features, a fact allegedly not disclosed to the USPTO examiner during prosecution of the ’480 patent.

Ground 2: Obviousness over Ellison and Muir - Claims 1, 3, 6, 11, and 14-19 are obvious over Ellison in view of Muir

• Prior Art Relied Upon: Ellison (Patent 7,082,615) and Muir (WO 01/93212).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Ellison teaches a computer system with an "isolated execution architecture" that creates a secure environment (e.g., Ring-0) inaccessible to the user and normal operating system. This architecture includes a secure platform for managing a protected private key used for digital signatures. Muir discloses a system for secure multi-party electronic transactions (e.g., e-commerce) using a "virtual smart card" that stores a private key in a restricted memory space, inaccessible to the operating system, to generate digital signatures.
  • Motivation to Combine: A POSITA would combine Ellison’s security architecture with Muir’s multi-party transaction framework to improve the security and performance of systems like those in Muir. Ellison provides a robust, hardware-enforced secure environment that would be a natural and obvious improvement for securing the private keys and cryptographic operations described in Muir’s e-commerce system.
  • Expectation of Success: Both references address improving security for transactions using cryptographic keys. Applying Ellison's known methods for creating isolated execution environments to Muir's system for electronic transactions would have been a predictable implementation with a high expectation of success.

Ground 3: Obviousness over Ellison, Muir, and Al-Salqan - Claims 7, 9, and 13 are obvious over the combination of Ellison, Muir, and Al-Salqan

• Prior Art Relied Upon: Ellison (Patent 7,082,615), Muir (WO 01/93212), and Al-Salqan (Patent 6,549,626).
• Core Argument for this Ground: This ground builds on the Ellison/Muir combination by adding the teachings of Al-Salqan to address dependent claims reciting multiple encryption layers and encryption based on user-identifying information.
  • Prior Art Mapping: Al-Salqan teaches a method to address the practical risks of private key management (e.g., losing a key or password). It discloses encrypting a private key with at least two layers of encryption: a first symmetric layer based on the user's private information (e.g., social security number) and a second asymmetric layer.
  • Motivation to Combine: While Ellison teaches using an encrypted private key, it lacks detail on the encryption method. A POSITA seeking to implement the Ellison/Muir system would be motivated to look to references like Al-Salqan to add robust encryption and key recovery features. Al-Salqan’s method of using multiple encryption layers and personal identifiers provides an obvious solution for enhancing the security of the private key in the combined Ellison/Muir framework.

Ground 4: Obviousness over Ellison, Muir, and Searle - Claims 8, 10, and 12 are obvious over the combination of Ellison, Muir, and Searle

• Prior Art Relied Upon: Ellison (Patent 7,082,615), Muir (WO 01/93212), and Searle (Patent 6,683,954).
• Core Argument for this Ground: This ground adds the teachings of Searle to the Ellison/Muir combination to address dependent claims reciting encryption tied to specific hardware.
  • Prior Art Mapping: Searle discloses encrypting a key using another key that is unique to a specific device, such as a hardware device serial number (e.g., a processor ID or MAC address). This ensures that the encrypted key can only be decrypted on the specific device it is tied to, preventing its use if stolen and moved to another machine.
  • Motivation to Combine: A POSITA would be motivated to incorporate Searle's teachings to enhance the security of the Ellison/Muir system. By using a hardware serial number as the encryption/decryption key as taught by Searle, the private key becomes bound to a specific physical device. This provides a known technique to improve security and prevent fraud, which would have been an obvious addition to the secure transaction system.

4. Key Technical Contentions (Beyond Claim Construction)

• Petitioner’s written description argument relied heavily on the contention that the ’480 patent’s claims are unsupportable because they impermissibly combine features from two mutually exclusive embodiments disclosed in the specification. One embodiment (Fig. 3) shows authentication software in a secure area inaccessible to the OS, whereas another (Fig. 5A) shows it stored in hardware accessible to the OS.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The petition was filed well before any answer in the co-pending district court litigation and before any scheduling order, Markman hearing, or discovery had occurred. Petitioner also submitted a stipulation to not pursue in district court any invalidity grounds on which PGR is instituted. Petitioner asserted these factors, combined with the strong merits of the invalidity challenges, weigh heavily against discretionary denial.

6. Relief Requested

• Petitioner requested institution of a post-grant review and cancellation of claims 1-19 of the ’480 patent as unpatentable.