Paper No. 31
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2018-00809
`
`U.S. Patent No. 9,530,137
`
`________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO AMEND
`PURSUANT TO 37 C.F.R. § 42.121
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2018-00809
`
`U.S. Patent No. 9,530,137
`
`________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO AMEND
`PURSUANT TO 37 C.F.R. § 42.121
`
`
`
`TABLE OF CONTENTS
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Page
`
`III.
`
`PATENT OWNER’S LIST OF EXHIBITS ............................................................ III
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PETITIONER’S ARGUMENTS FOR DENIAL OF SUBSTITUTE
`CLAIMS HAVING FEATURES THAT OVERLAP WITH
`DISCLAIMED CLAIMS 8 AND 11 ARE MERITLESS ............................... 1
`A.
`Substitute Claims Respond to a Ground of Unpatentability ................. 2
`B.
`Estoppel and Waiver Do Not Apply ..................................................... 6
`C.
`Patent Owner Satisfies Its Duty of Candor ........................................... 7
`SUBSTITUTE CLAIMS DIRECTED AT UNCHALLENGED
`CLAIMS .......................................................................................................... 8
`SUBSTITUTE CLAIMS ARE PATENT ELIGIBLE UNDER § 101 ............ 8
`SUBSTITUTE CLAIMS ARE NOVEL AND NONOBVIOUS .................. 13
`A.
`It Would Not Have Been Obvious to Have the Claimed
`“Second Device” Map the ID Code to a Card or Account
`Number ................................................................................................ 14
`Using “Three Separable Fields” Is Not Obvious ................................ 16
`B.
`Substitute Dependent Claim 18 Is Not Obvious ................................. 19
`C.
`Petitioner Fails to Address Substitute Claims 17 and 20 .................... 21
`D.
`SUBSTITUTE CLAIMS SATISFY 35 U.S.C. § 112 ................................... 21
`VI.
`VII. CONCLUSION .............................................................................................. 25
`
`IV.
`V.
`
`i
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`TABLE OF AUTHORITIES
`
`Page
`
`Cases
`Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
`134 S. Ct. 2347 ____ ............................................................................................12
`Apple Inc. et al. v. Valencell, Inc.,
`IPR2017-00321, Paper 44 _________ ................................................................... 6
`Aqua Products, Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) .................................................................... 20, 21
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ...........................................................................21
`Ex parte Levy,
`17 USPQ2d 1461 (Bd. Pat. App. & Inter. 1990) .................................................20
`Universal Secure Registry, LLC v. Apple, Inc.,
`1:17-cv-00585-JFB-SRF, Dkt. 137 (D. Del. Sep. 18, 2018) ................................. 9
`Statutory Authorities
`35 U.S.C. § 112 ........................................................................................................21
`
`Rules and Regulations
`37 C.F.R. § 42.121 ..................................................................................................... i
`
`Other Authorities
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`2012) ...................................................................................................................... 7
`
`ii
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Ex. 2001
`
`Ex. 2002
`
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`Ex. 2011
`
`Ex. 2012
`
`Ex. 2013
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Declaration of Dr. Markus Jakobsson in Support of
`Patent
`Owner’s Preliminary Response.
`
`Curriculum Vitae of Dr. Markus Jakobsson.
`
`USR Disclaimer Filed July 6, 2018.
`
`Declaration ISO Motion Pro Hac Vice Harold Barza.
`
`Declaration ISO Motion Pro Hac Vice Jordan Kaericher.
`
`U.S. Application No. 15/019,660.
`
`U.S. Application No. 11/677,490.
`
`U.S. Provisional Application No. 60/775,046.
`
`U.S. Provisional Application No. 60/812,279.
`
`Declaration of Dr. Markus Jakobsson in Support of
`Patent Owner’s Response.
`
`Deposition Transcript of Dr. Victor John Shoup.
`
`N. Asokan, et. al, The State of the Art in Electronic
`Payment Systems, IEEE Computer, Vol. 30, No. 9, pp.
`28-35 (IEEE Computer Society Press, Sept. 1997).
`
`M. Baddeley, Using E-Cash in the New Economy: An
`Economic Analysis of Micropayment Systems, J.
`Electronic Commerce Research, Vol. 5, No. 4, pp. 239-
`253 (Nov. 2004).
`
`Ex. 2014
`
`Declaration of Dr. Markus Jakobsson ISO PO’s
`Conditional Motion to Amend.
`
`iii
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Ex. 2015
`
`Ex. 2016
`
`Ex. 2017
`
`Ex. 2018
`
`Ex. 2019
`
`Ex. 2020
`
`Ex. 2021
`
`U.S. Provisional Application No. 60/859,235.
`
`U.S. District Court for Delaware Report and
`Recommendation.
`
`Deposition Transcript of Dr. Markus Jakobsson.
`
`A. Juels and M. Sudan, “A Fuzzy Vault Scheme.”
`
`Deposition Transcript (Rough) of Dr. Ari Juels.
`
`U.S. Patent No. 8,495,372.
`
`Declaration by Dr. Markus Jakobsson ISO Reply to
`Motion to Amend.
`
`iv
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Universal Secure Registry LLC (“Patent Owner”) submits this Reply in
`
`support of its Conditional Motion to Amend, Paper 19 (“Mot.”), and in response to
`
`Petitioner’s Opposition to Patent Owner’s Conditional Motion to Amend, Paper 24
`
`(“Op”).
`
`I.
`
`INTRODUCTION
`
`Petitioner advances a myriad of baseless arguments against the patentability
`
`of some of Patent Owner’s substitute claims, while completely failing to address
`
`other substitute claims at all (and hence conceding their patentability). Petitioner
`
`also improperly attempts to incorporate substantive arguments from its Petition (and
`
`its expert’s declaration in support thereof) in a flagrant attempt to circumvent this
`
`Board’s order on page limits. See Paper No. 17. Petitioner’s opposition lacks any
`
`merit whatsoever as the majority of its arguments either have been already rejected
`
`by this Board (or the district court), or are specious attacks on the propriety of Patent
`
`Owner’s presentation of the substitute claims.
`
`II.
`
`PETITIONER’S ARGUMENTS FOR DENIAL OF SUBSTITUTE
`CLAIMS HAVING FEATURES THAT OVERLAP WITH
`DISCLAIMED CLAIMS 8 AND 11 ARE MERITLESS
`
`The Petitioner first argues that Patent Owner’s substitute claims 13 and 21
`
`“recite subject matter that is virtually identical to the now-disclaimed subject matter
`
`by dependent claims 8 and 11.” Op. at 2. Petitioner then argues that the substitute
`
`1
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`claims should be denied because: the substitute claims fail to respond to a ground of
`
`unpatentability under 37 C.F.R. § 42.121(a)(2)(i); Patent Owner is estopped from
`
`reintroducing subject matter of disclaimed claims 8 and 11; and Patent Owner has
`
`“violated” its duty of candor with the Board for taking a position in its Motion that
`
`is inconsistent with its Patent Owner’s Preliminary Response (POPR). See Op. at
`
`3-6. The Petitioner also argues that USR should be deemed to have waived any
`
`arguments relating to Ground 3 and, as such, USR “has conceded limitations 13[c],
`
`13[e], 21[d], and 21[f] [as] obvious under Ground 3.” Id. Petitioner’s arguments
`
`for denial of the substitute claims or waiver of potential arguments are meritless.
`
`A.
`
`Substitute Claims Respond to a Ground of Unpatentability
`
`First, substitute claims 13 and 21 are not “virtually identical” to the disclaimed
`
`subject matter of claims 8 and 11. For instance, substitute claims 13 and 21 both
`
`recite “a multi-digit identification (ID) code allowing a networked validation-
`
`information entity to map the multi-digit ID code,” while disclaimed claim 8
`
`recites, “a multidigit public ID code for a credit card account, which a credit card
`
`issuer can map…” Compare Motion at A1 (claim 13) and A4 (claim 21) with Ex.
`
`1101 at 46:34-37 (claim 8) (emphasis added). Thus, in substitute claims 13 and 21,
`
`a “networked validation information entity” maps the multi-digit ID code, while in
`
`claim 8, a credit card issuer performs the mapping of a multidigit public ID code.
`
`2
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`This distinction is important because substitute claims 13 and 21 further specify that
`
`the networked validation-information entity is the claimed “second device” that
`
`is configured to enable the credit and/or debit card [or financial] transaction based
`
`on authentication of the user. Motion at A1 (claim 13) and A4 (claim 21). Thus, in
`
`these substitute claims, the same entity—the networked validation-information
`
`entity—responsible for mapping the multi-digit ID code is also responsible for
`
`enabling the financial transaction.
`
`By contrast, claims 8 and 11 taken together1 do not specify that the credit card
`
`issuer, which performs the mapping (claim 8) operation, is the second device (the
`
`networked validation-information) that “approve[s] or den[ies] [the] financial
`
`transaction[]” (claim 11). Rather, claims 8 and 11 taken together merely require that
`
`a credit card issuer perform the mapping while separately the second device, which
`
`is the networked validation-information entity, approves/denies the financial
`
`transaction. See Ex. 1101 at 46:34-37, 46:50-54.
`
`1 Claims 8 and 11 do not have interdependency and instead separately depend from
`
`claim 1. Thus, Petitioner also neglects the impact that subject matter from these
`
`claims (that may exist in substitute claims 13 and 21) have on the substitute claims
`
`taken as a whole.
`
`3
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Indeed, Petitioner contradicts itself by vehemently arguing that claim
`
`limitations 13[e] and 21[f] lack written description support “because the original
`
`disclosure does not show a financial institution [e.g., credit card issuer] being a
`
`networked validation-information entity.” Op. at 23-24. If Petitioner believes that
`
`a financial institution, such as a “credit card issuer,” is different from a “networked
`
`validation-information entity” for written description purposes, then it cannot in the
`
`same breath argue that the two terms are “virtually identical” in attempting to
`
`establish that Patent Owner purportedly fails to respond to Ground 3.
`
`Second, substitute claim 13 additionally recites “the first processor is
`
`programmed to generate one or more signals having at least three separable fields
`
`that include…” This limitation responds to Ground 1 of unpatentability because,
`
`among other things, Jakobsson, which purportedly discloses “first authentication
`
`information,” “indicator of biometric authentication,” and “time varying value” (see
`
`Petition at 30-33; Inst. Dec. (Paper 9) at 11), fails to disclose that the inputs (e.g., P,
`
`K, T, E, etc.) to its combination function generate an authentication code with at
`
`least three separable fields. See discussion infra Section V; see also Motion at 11-
`
`12. The Board has indicated that 37 C.F.R. § 42.121(a)(2)(i) “does not require,
`
`however, that every word added to or removed from a claim in a motion to amend
`
`be solely for the purpose of overcoming an instituted ground,” and that “once a
`
`4
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`proposed claim includes amendments to address a prior art ground in the trial, a
`
`patent owner also may include additional limitations.” Western Digital Corp. v.
`
`SPEX Tech., IPR2018-00082, -00084, Paper 13 at 6. Consequently, even if the
`
`limitations identified by Petitioner related to “financial transaction” and “credit
`
`and/or debit card transaction” did not address a ground of unpatentability, these
`
`amendments are valid and includable by virtue of the “separable fields” amendment,
`
`which Petitioner does not dispute responds to a ground of unpatentability.
`
`Third, as to substitute claim 21, disclaimed claims 8 and 11 did not depend
`
`from independent claim 12, which substitute claim 21 proposes to replace. As such,
`
`no ground in the Petition was directed at a dependent claim that depended from claim
`
`12 and also included the subject matter of claims 8 and 11. Thus, in addition to the
`
`aforementioned differences between the subject matter of claims 8 and 11 and the
`
`amended features of limitations 13[c], 13[e], 21[d], and 21[f], differences between
`
`independent claims 1 and 12 also merit denial of Petitioner’s argument that substitute
`
`claim 21 should be denied for failing to respond to Ground 3 of unpatentability.
`
`Lastly, the amended features of limitations 13[c], 13[e], 21[d], and 21[f] do
`
`respond to Ground 3 of unpatentability because the combination of Jakobsson,
`
`Maritzen, and Schutzer fail to disclose several claimed features. See discussion infra
`
`Section V. Thus, even if Patent Owner had failed to respond to Ground 3 of
`
`5
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`unpatentability in its Motion (because it disclaimed the claims subject to Ground 3),
`
`it does so now expressly here in its Reply. See Apple Inc. et al. v. Valencell, Inc.,
`
`IPR2017-00321, Paper 44 at 53-54 (Patent Owner did not address a ground of
`
`unpatentability in its MTA, but Patent Owner satisfied its burden with arguments
`
`made in its Reply brief).
`
`B.
`
`Estoppel and Waiver Do Not Apply
`
`Patent Owner is not estopped from submitting the pending substitute claims.
`
`As a preliminary matter and contrary to Petitioner’s assertions (see Op. at 5), the
`
`substitute claims include claim limitations that are substantively different than
`
`disclaimed claims 8 and 11 and for at least this reason Petitioner’s arguments
`
`concerning estoppel (or waiver) do not apply. See discussion supra Section II.A.
`
`Petitioner alleges that “USR’s current position is clearly inconsistent with
`
`USR’s earlier position in the instant proceeding.” However, Patent Owner has not
`
`taken any “position” in the past that now contradicts its stance that the substitute
`
`claims are patentable in view of the prior art. For instance, Patent Owner has never
`
`stated that the subject matter of claims 8 and 11 is obvious in view of prior art or
`
`were unpatentable for any other reason. Instead, on July 6, 2018, Patent Owner
`
`submitted a disclaimer under 37 C.F.R. § 1.321(a) disclaiming claims 8, 10, and 11
`
`of the ’137 Patent (Ex. 2003). Patent Owner then stated in its POPR that it
`
`6
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`“maintains [that claims 8 and 11] are valid” but that Ground 3 was moot in view of
`
`the disclaimer. Paper 8 at 32. Patent Owner has taken no conflicting positions.
`
`Moreover, Patent Owner does not “derive an unfair advantage and impose an
`
`unfair detriment on Petitioner” because it allegedly “avoided full, fair, and timely
`
`consideration of Ground 3” or the Board somehow “was persuaded to refrain from
`
`addressing the merits of Ground 3.” Op. at 5. If Petitioner believes the arguments
`
`it made with respect to the combination of Jakobsson, Maritzen, and Schutzer in
`
`Ground 3 apply to the substitute claims, it may raise those arguments—and any other
`
`new argument—in its Opposition. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,767 (Aug. 14, 2012). Indeed, Petitioner did just that. See Op. at 17-23.
`
`Petitioner further argues that Patent Owner has “waived any arguments
`
`relating to Ground 3…and amended limitations 13[c], 13[e], 21[d], and 21[f]”
`
`because “[t]he Board’s Trial Practice Guide states that ‘any arguments for
`
`patentability not raised in the [Patent Owner’s Response] may be deemed waived.’”
`
`Op. at 5-6 (citing Trial Practice Guide Update, 83 Fed. Reg. 38,989). Petitioner’s
`
`argument is meritless: Patent Owner’s CMTA is not a POR, and any arguments
`
`Patent Owner did not include in its POR do not affect Patent Owner’s ability to
`
`respond to invalidity arguments presented in Petitioner’s Opposition.
`
`C.
`
`Patent Owner Satisfies Its Duty of Candor
`
`7
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Petitioner fails to establish that Patent Owner has violated its duty of candor
`
`with the Board. As previously discussed, Patent Owner does not “contradict its
`
`arguments in its POPR that the validity of such subject matter was moot” as
`
`Petitioner alleges. Op. at 6; see discussion supra Section II.B. Also, the substitute
`
`claims recite limitations that are substantively different than the subject matter of
`
`disclaimed claims 8 and 11. See discussion supra Section II.A. Petitioner’s
`
`contention that Patent Owner violated 37 C.F.R. § 42.51(b)(1)(iii) is also baseless.
`
`This rule relates to discovery between parties and a duty of one party to serve
`
`relevant information concerning inconsistencies, not to any duty of candor.
`
`III.
`
`SUBSTITUTE CLAIMS DIRECTED AT UNCHALLENGED CLAIMS
`
`Per the conference call the parties had with the Board on April 22, 2019, all
`
`substitute claims directed at unchallenged claims are void.
`
`IV.
`
`SUBSTITUTE CLAIMS ARE PATENT ELIGIBLE UNDER § 101
`
`Petitioner argues that substitute claims 13-21 are unpatentable under § 101
`
`because they purportedly claim patent-ineligible abstract ideas. Op. at 8-14.
`
`However, on September 19, 2018, United States Magistrate Judge Sherry R. Fallon
`
`for the District Court of Delaware issued a Report and Recommendation (R&R)
`
`rejected virtually identical arguments made by Petitioner, and recommending that
`
`the District Court deny Petitioner’s motion to dismiss under § 101 since claims 1-12
`
`8
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`of the ’137 Patent are “not directed to an abstract idea because ‘the plain focus of
`
`the claims is on an improvement to computer functionality itself, not on economic
`
`or other tasks for which a computer is used in its ordinary capacity.’” Ex. 2016,
`
`Universal Secure Registry, LLC v. Apple, Inc., 1:17-cv-00585-JFB-SRF, Dkt. 137 at
`
`21 (D. Del. Sep. 18, 2018) (emphasis added). Specifically, Judge Fallon stated that:
`
`[t]he ’137 patent is directed to an improvement in the security of mobile
`devices by using biometric information to generate a time varying or
`other type of code that can be used for a single transaction, preventing
`the merchant from retaining identifying information that could be
`fraudulently used in subsequent transactions. (’137 patent, col. 18:14-
`34) While certain elements of claim 12 recite generic computer
`components, the claim as a whole describes an improved
`authentication system with increased security.
`
`Id. at 22 (emphasis added). As such, substitute claims 13 and 21, which are narrower
`
`than claims 1 and 12, are patent eligible for the same reasons. Ex. 2021 at ¶ 29.
`
`This Board also reached the same conclusion of patent eligibility when it
`
`rejected substantially similar arguments made by Petitioner for related U.S. Patent
`
`8,577,813 (“the ’813 Patent”) in CBM2018-00026. CBM2018-00026, Paper 10 at
`
`23-24. Indeed, in its Petition for CBM2018-00026, Petitioner advanced the same
`
`abstract idea of “verifying an account holder’s identity based on codes and/or
`
`information related to the account holder before enabling a transaction” as it does
`
`9
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`here now, and also cited to the same cases making substantially similar arguments
`
`for patent ineligibility. The Board’s reasoning for dismissing these arguments in
`
`CBM2018-00026, and finding the claims of the ’813 Patent are not abstract, applies
`
`equally to the present substitute claims.
`
`For instance, Petitioner has oversimplified the claimed inventions and ignores
`
`many recited key claim limitations. Ex. 2021 at ¶¶ 30-34. The specification shows
`
`that the substitute claims are directed to specific, concrete, technological
`
`improvements to secure distributed transaction approval systems that
`
`incorporate both local and remote authentication without compromising the
`
`user’s sensitive information, and these inventions are demonstrably valid under the
`
`analysis of Alice and its progeny. Id. Moreover, the problems addressed by the
`
`’137 Patent are firmly rooted in technological challenges associated with
`
`distributed electronic transactions, and so are the claimed solutions. Id.
`
`By arguing that the substitute claims are directed to the abstract idea of
`
`“verifying an account holder's identity based on codes and/or information related to
`
`the account holder before enabling a transaction” (Op. at 10), Petitioner fails to
`
`account for multiple claim requirements. Substitute claims 13 and 21 recite a unique
`
`and highly secure distributed transaction approval system including a local “first
`
`device” that authenticates a user of the device based on “secret information” (e.g., a
`
`10
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`PIN code) and retrieves or receives “biometric information” (e.g., a fingerprint
`
`captured by the “biometric sensor” of the first device) before the first device
`
`generates and wirelessly transmits a transaction approval request “signal” to a
`
`remote “second device.” Id. at ¶ 32. This signal includes at least three specific types
`
`of data: “first authentication information,” an “indicator of biometric authentication”
`
`of the user by the first device, and a “time varying value.” The remote second device
`
`receives the signal and, based on the specific data contained therein, as well as the
`
`user’s “second authentication information” available at the second device, the
`
`second device may provide the first device with an “enablement signal” indicating
`
`the second device’s approval of the transaction. Petitioner’s proffered overbroad
`
`abstract idea does not capture these recited features. Id.
`
`Petitioner also fails to explain how the ordered combination of elements in the
`
`claims manifestly claim no more than Petitioner’s purported abstract idea. Although
`
`it is true that the “mere recitation of a generic computer” cannot transform a method
`
`claim directed to a patent-ineligible abstract idea into a system claim directed to a
`
`patent-eligible invention, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347,
`
`2358, the substitute claims do more than merely state “an abstract idea while adding
`
`the words ‘apply it.’” Instead, they recite a specific, concrete, technological solution
`
`providing an improved secure distributed transaction approval system that
`
`11
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`incorporates both local and remote authentication without compromising the
`
`user’s sensitive information. Id. at ¶ 33. Thus, Petitioner fails to adequately address
`
`that the claimed “biometric information” and “indicator of biometric authentication”
`
`are specifically employed in two ways: the former used to locally authenticate the
`
`user of the first device, and the latter used to remotely authenticate the first device
`
`by the second device when the indicator of biometric authentication is used to
`
`generate one or more signals that are sent to the second device. Further, the claims
`
`do not preempt the field of secure electronic transactions, but instead cover very
`
`specific technologies used on specialized devices (e.g., with biometric sensors),
`
`while leaving open other known or unknown technology for conducting such
`
`transactions. Id.
`
`Even assuming the substitute claims are directed to the Petitioner’s abstract
`
`idea, the ordered combination of elements in these claims “transform the nature of
`
`the claim into a patent-eligible application.” Id. at ¶ 34. Petitioner does not
`
`substantively address the claims as an ordered combination. See Op. at 14-17. By
`
`contrast, the ’137 Patent’s specification teaches that the ordered combination of
`
`elements do much more than merely recite an abstract idea or a rudimentary prior
`
`art verification system. See, e.g., Ex. 1101 at 2:50-52, 3:63-5:31, 13:62-14:53,
`
`15:43-50, 16:49-17:54, 18:13-34, 19:45-20:37, 22:16-20, 29:21-44, 32:31-34:6.
`
`12
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`Instead, the ordered combination of claim elements recite a highly secure distributed
`
`transaction approval system including a local “first device” that authenticates a user
`
`of the device based on “secret information” (e.g., a PIN code) and retrieves or
`
`receives “biometric information” (e.g., a fingerprint captured by the “biometric
`
`sensor” of the first device) before the first device generates and wirelessly transmits
`
`a transaction approval request “signal” to a remote “second device” that includes at
`
`least three specific types of data. Ex. 2021 at ¶ 34. The remote second device may
`
`then provide the first device with an “enablement signal” indicating the second
`
`device’s approval of the transaction based on the data contained in the “signal.” Id.
`
`For these reasons, the substitute claims are patent eligible.
`
`V.
`
`SUBSTITUTE CLAIMS ARE NOVEL AND NONOBVIOUS
`
`Not only do the substitute claims respond to a ground of unpatentability, they
`
`are clearly distinguishable over the prior art of record. As discussed above, the
`
`substitute claims further specify that the networked validation-information entity is
`
`the claimed “second device” that is configured to enable the credit/debit/financial
`
`transaction based on authentication of the user. The substitute claims further recite
`
`that the first authentication information included a multi-digit identification (ID)
`
`code allowing the networked validation-information entity to map the multi-digit ID
`
`code to a credit/debit card (or financial account) number. Substitute claim 13
`
`13
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`additionally recites that the first processor is programmed to generate one or more
`
`signals “having at least three separable fields” that include the first authentication
`
`information, an indicator of biometric authentication, and a time varying value.
`
`Contrary to Petitioner’s assertions (Op. at 17-23), and as described in more detail
`
`below, these amendments patentably distinguish the substitute claims over the
`
`Jakobsson, Maritzen, and Schutzer references. Ex. 2021 at ¶¶ 35-43.
`
`A.
`
`It Would Not Have Been Obvious to Have the Claimed “Second
`Device” Map the ID Code to a Card or Account Number
`Petitioner fails to present any arguments in its Opposition with respect to the
`
`newly added limitation in substitute claims 13 and 21 that “the first authentication
`
`information include[ed] a multi-digit identification (ID) code allowing a networked
`
`validation-information entity to map the multi-digit ID code to a [credit and/or debit
`
`card/financial account] number,” but instead refers solely to the arguments made its
`
`Petition with respect to disclaimed claims 8 and 11. Op. at 17-18. Even if this cross-
`
`reference (and apparent incorporation by reference) were proper,2 Petitioner has
`
`2 Patent Owner objects to Petitioner’s naked incorporation of arguments made in
`
`its Petition for this limitation (as well as limitations 13[pre], 13[g], 13[h], 21[pre],
`
`21[h], and 21[i] (see Op. at 20) and substitute claim 18 (see Op. at 21)) as a blatant
`
`14
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`failed to establish this limitation is obvious in view of Jakobsson, Maritzen, and
`
`Schutzer.
`
`Disclaimed dependent claim 8 recited a multidigit public ID code for which
`
`“a credit card issuer can map to a usable credit card number.” Ex. 1001 at Cl. 8.
`
`Substitute claims 13 and 21, on the other hand, require “a networked validation-
`
`information entity” to perform the mapping. This is a critical distinction because
`
`Petitioner acknowledges (1) that Jakobsson fails to show or reasonably suggest this
`
`claimed feature (see Pet. at 64), and (2) Schutzer merely discloses that the “card
`
`issuer” can associate an “anonymous card number” with the “proper cardholder.”
`
`See Pet. at 65. At no point in the Petition (or in its Opposition to Patent Owner’s
`
`MTA) does Petitioner point to any disclosure of the “networked validation-
`
`information entity”3 performing the mapping between multi-digit ID code to a
`
`circumvention of this Board’s order on page limits. See Paper No. 17. Petitioner’s
`
`incorporated arguments with respect this these limitations should therefore be
`
`disregarded.
`
`3 Importantly, the claimed “networked validation-information entity” in the
`
`substitute claims is the same claimed “second device” that is “configured to enable
`
`15
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`[credit and/or debit card/financial account] number. Ex. 2021 at ¶ 37. Petitioner
`
`had therefore failed to meet its burden to establish any of the substitute claims are
`
`obvious.
`
`B.
`
`Using “Three Separable Fields” Is Not Obvious
`
`Substitute claim 13 recites that the claimed “one or more signals” has “at least
`
`three separable fields” that include “the first authentication information, an indicator
`
`of biometric authentication, and a time varying value in response to valid
`
`authentication of the first biometric information.” Petitioner alleges that Jakobsson
`
`discloses this claimed feature (Op. at 18), but Jakobsson merely discloses
`
`transmitting a unitary authentication code (either one of code 291, 292, or 293) to
`
`verifier 105. Ex. 1113 at ¶¶[0060], [0071]. In other words, there is no disclosure in
`
`Jakobsson of transmitting authentication code 291, in addition to the values (E) and
`
`the financial transaction based on authentication of the user.” Petitioner fails to even
`
`allege that the prior art of record includes such an entity, nor could it since neither
`
`Jakobsson, Maritzen, nor Schutzer, alone or in combination, suggest using the same
`
`entity to both map the multi-digit ID to a card/account number and enable the
`
`financial transaction.
`
`16
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`(T), all in the same transmission. Ex. 2021 at ¶ 38.
`
`Moreover, as explained in more detail in Patent Owner’s sur-reply,
`
`Petitioner’s mapping of the three recited types of information would require
`
`transmitting authentication code 291 (Petitioner’s alleged “first authentication
`
`information”), in addition to the values (E) (Petitioner’s alleged “indicator of
`
`biometric authentication”) and (T) (Petitioner’s alleged “time varying value”), all in
`
`the same transmission—which of course is not disclosed in Jakobsson.4 Id. at ¶ 39.
`
`Moreover, as explained by the author of the reference, Dr. Jakobsson, “[t]he
`
`one-way function is a critical aspect of [the invention described in the Jakobsson
`
`reference].” Ex. 2017 at 127:6-20; Ex. 2021 at ¶ 40. While certain embodiments of
`
`Jakobsson discuss prepending and appending certain inputs, a one-way function is
`
`always used (optionally in conjunction with other functions). Dr. Jakobsson
`
`explained that a person of ordinary skill in the art would understand that all the
`
`4 In its Opposition, Petitioner now appears to cite to (E), (T), and (P) as the three
`
`claimed types of information, but does not explain why “user data value (P)” can
`
`qualify as the claimed “first authentication information.” Op. at 18. Regardless,
`
`there is no disclosure in Jakobsson that the unitary authentication code includes
`
`“three separable fields” after the code is generated and transmitted.
`
`17
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`examples given involve a one-way function because otherwise the system would not
`
`be secure. Ex. 2017 at 134:1-13; see also id. at 134:19-135:7 (explaining that it
`
`would be “clear to a person of skill in the art reading this that there has to be a one-
`
`way function”). Even Petitioner’s new expert, Dr. Juels, acknowledged at his
`
`deposition that merely concatenating or XOR’ing inputs together, without more, was
`
`an inadequate way to generate or protect the authentication code from
`
`eavesdroppers. Ex. 2019 at 30:3-21 (eavesdropper can recover inputs if mere
`
`concatenation were used); 34:12-36:12 (same); 40:14-41:6 (adversary can recover
`
`input if mere XOR is used as the combination function).
`
`Since a one-way function must be used at some point during the authentication
`
`code generation process in Jakobsson, the resultant unitary authentication code
`
`does not have three separable fields that include all three pieces of claimed
`
`information. Ex. 2021 at ¶ 41
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
