Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: July 3, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VINDOLOR, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00478
`Patent 6,213,391 B1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, WILLIAM V. SAINDON,
`and SCOTT E. BAIN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 9
`Entered: July 3, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`VINDOLOR, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00478
`Patent 6,213,391 B1
`____________
`
`
`
`Before KALYAN K. DESHPANDE, WILLIAM V. SAINDON,
`and SCOTT E. BAIN, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`I.
`
`INTRODUCTION
`
`Unified Patents, Inc. (“Petitioner”) filed a petition requesting inter
`
`partes review of claims 1 and 2 of U.S. Patent No. 6,213,391 B1 (Ex. 1001,
`
`“the ’391 patent”). Paper 1 (“Pet.”). Vindolor, LLC (“Patent Owner”) filed
`
`a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`We have authority under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted unless the information presented in
`
`the Petition and the Preliminary Response shows that “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R.
`
`§ 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Taking
`
`into account the arguments presented in the Petition and Preliminary
`
`Response, we conclude that the information presented in the Petition does
`
`not establish a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one challenged claim. Accordingly, we do not institute an
`
`inter partes review.
`
`A. Related Matters
`
`According to the parties, the ’391 patent is involved in 11 district
`
`court proceedings. Pet. 1–2; Paper 4, 2–3.
`
`The parties do not report any related USPTO proceedings.
`
`B. The ’391 Patent
`
`The ’391 patent is directed to a system for identifying an individual
`
`using biometric characteristics of that person. Ex. 1001, Abstract. One
`
`embodiment takes the form of a card similar to an ATM card. See id. at
`
`4:58–62, 7:35–40. In use, biometric characteristics are captured from the
`
`2
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`user to generate an identification profile representing the biometric input.
`
`Id. at 3:66–4:2. Then, the identification profile is used to calculate an access
`
`code. Id. at 4:13–17. In summary, the device disclosed in the ’391 patent
`
`receives biometric information from an input, converts that biometric
`
`information into an identification profile, and then applies an algorithm to
`
`the identification profile to generate an access code.
`
`C. Challenged Claims
`
`Claims 1 and 2 are challenged, and are the only claims in the patent.
`
`Independent claim 1 is reproduced below (carriage returns added for
`
`readability):
`
`1. A portable identification system comprising
`a storage medium for storing electronic data;
`one or more inputs;
`one or more outputs;
`a verifying means for determining user authorization or non-
`authorization,
`said verifying means receiving data from at least one of said
`one or more inputs, which data is derived from biometric
`or other distinctive characteristics of the user,
`said verifying means generating an identification profile for
`each user, wherein said identification profile is determined
`from said data, and
`a code generator employing at least one code generating
`algorithm for generating one or more access codes based upon
`said identification profile wherein at least one of the said one
`or more access codes is an identification specific digital
`signature.
`
`
`
`3
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`D. Prior Art and Asserted Grounds
`
`Petitioner raises the following prior art challenges:
`
`Reference(s)
`
`Gullman1
`
`Gullman
`Lane2 and Drexler3
`
`
`
`Basis
`
`§ 102
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`1 and 2
`
`1 and 2
`
`1 and 2
`
`II. PATENTABILITY ANALYSIS
`
`A. Claim Construction
`
`We construe claims in an inter partes review using the same claim
`
`construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Accordingly, we
`
`will apply a district-court type claim construction in this proceeding.
`
`Petitioner provides a construction for the “verifying means” of claim
`
`1. Pet. 21–26. Patent Owner does not contest Petitioner’s construction
`
`directly, but instead points out some nuances it believes exist when
`
`considering the term. Prelim. Resp. 18–19 (“the verifying means must
`
`receive data from the one or more inputs then generate an identification
`
`profile from [that data]”). For the purposes of this Decision, we are
`
`persuaded by Petitioner, and, accordingly, adopt Petitioner’s construction.
`
`
`1 U.S. Patent No. 5,280,527, issued Jan. 18, 1994 (Ex. 1004).
`
`2 U.S. Patent No. 5,623,552, issued Apr. 22, 1997 (Ex. 1005).
`
`3 U.S. Patent No. 5,457,747, issued Oct. 10, 1995 (Ex. 1006).
`
`4
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`No other claim terms require construction at this time. See, e.g.,
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`
`1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
`
`controversy, and only to the extent necessary to resolve the controversy.’”)
`
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner asserts the following level of ordinary skill in the art:
`
`A person of ordinary skill in the art . . . would have had at least
`a Bachelor’s degree
`in Computer Science, Computer
`Engineering, or Electrical Engineering, and two to three years of
`experience with user identification/authentication systems or
`cards (devices), including the use of biometric information. (Ex-
`1002, ¶¶67-70). More work experience could substitute for
`education, and vice versa. (Ex-1002, ¶¶67-70)
`
`Pet. 20.
`
`Patent Owner states that it “does not contest Petitioner’s assertion.”
`
`Prelim. Resp. 6. Accordingly, we adopt Petitioner’s proposed level of skill
`
`for purposes of this Decision.
`
`C. The Gullman Anticipation Ground
`
`Gullman discloses a security access device that uses a person’s
`
`biometric characteristics in order to determine whether access should be
`
`given. Ex. 1004, Abstract. The security access device could be in a form
`
`similar to a credit card, and may be capable of reading biometric information
`
`from a holder of that card, such as a fingerprint.4 Id. at 5:34–50. In
`
`
`4 Although other forms of biometric input are specified in Gullman (see Ex.
`1004, 2:29–30), for sake of illustration we will refer only to fingerprints.
`
`5
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`operation, a template of the authorized user’s fingerprint is stored on the
`
`card. Id. at 2:27–30. Then, when a user wishes to access a system using the
`
`card, she provides her fingerprint on the card, which then compares the
`
`received fingerprint to the authorized users’ template in order to determine a
`
`correlation factor. Id. at 3:44–46. The card then bundles the correlation
`
`factor and another code (e.g., a PIN, embedded serial number, or account
`
`number) into a security token. Id. at 4:3–8. The security token is sent to a
`
`host computer to determine if access should be granted—it decodes the
`
`security token to review the correlation factor and the other code. Id. at
`
`4:13–15. A threshold correlation factor determines if the stored and
`
`provided fingerprints are sufficiently similar to permit access (in conjunction
`
`with the other code). Id. at 3:45–47, 6:13–22.
`
`Petitioner asserts that Gullman anticipates the subject matter of claims
`
`1 and 2. Pet. 26–44. In relevant part to this Decision, Petitioner asserts that
`
`Gullman’s security token is the access code of claim 1. Id. at 43. According
`
`to claim 1, the access code is based on an identification profile and is an
`
`identification specific digital signature.
`
`Patent Owner argues, and we agree, that Gullman’s security token is
`
`not an access code because the security token is used to provide transmission
`
`security, not to provide access. Prelim. Resp. 42–44. Indeed, Gullman
`
`highlights the functional difference between something used to provide
`
`access and something used to provide security: “[a] PIN is used to identify
`
`an individual and authorize access to a host system,” which “provides user
`
`identification, while a token provides transmission security.” Ex. 1004,
`
`1:30–45. Gullman decodes the security token and uses what is encoded
`
`within to determine whether to grant access. Id. at 4:13–15 (“The access
`
`6
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`device 12 sends the token to the host 10 which decodes the token to identify
`
`the embedded fixed code and correlation factor.”); see also id. at 4:29–31,
`
`6:39–45. Thus, the security token in Gullman provides transmission
`
`security, whereas the data contained within (the correlation factor and the
`
`code) are used to authorize access. Because we are not persuaded that
`
`Gullman discloses an access code in the claimed manner, we are not
`
`persuaded that there is a reasonable likelihood that Gullman anticipates
`
`claim 1, or claim 2 which depends therefrom.
`
`D. The Gullman Obviousness Ground
`
`Petitioner’s Gullman obviousness ground adds nothing new to the
`
`access code limitation; for that limitation, Petitioner refers us back to its
`
`anticipation ground. See Pet. 47–48 (“Gullman alone discloses or at least
`
`renders obvious [the access code limitation] based on the same intrinsic and
`
`extrinsic evidence and reasoning described in [the Gullman anticipation
`
`ground].”). Thus, this ground does not establish a reasonable likelihood of
`
`success for the same reasons as the Gullman anticipation ground.
`
`E. The Lane-Drexler Obviousness Ground
`
`Petitioner asserts that claims 1 and 2 would have been obvious in view
`
`of Lane and Drexler. Pet. 49–81. Lane discloses a self-authenticating
`
`identification card that uses a fingerprint sensor to determine if the card
`
`holder is an authorized user. See Ex. 1005, Abstract, 2:29–35. Fingerprint
`
`information regarding an authorized user is stored on the card. Id. at 2:64–
`
`3:8. When a user tries to authenticate using the card, the card will read her
`
`fingerprint and compare it with the stored fingerprint information. Id. at
`
`2:29–35. If the user’s fingerprint and the stored fingerprint match, then an
`
`7
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`authentication signal is provided, which may be visual, audio, or in the form
`
`of a programmable magnetic stripe code. Id. at 3:55–65.
`
`Structurally, the Lane device operates by using a fingerprint sensor in
`
`conjunction with an authenticator or controller. See generally id. at Fig. 2.
`
`The fingerprint sensor is a two-dimensional array of ridge detectors. Id. at
`
`7:9–16. Each ridge detector has a small processor, and the array of such
`
`processors form a parallel processing network to collectively arrive at a pixel
`
`array that identifies relevant landmarks in a fingerprint. See generally id. at
`
`7:17–8:30. Once the fingerprint sensor provides the relevant fingerprint
`
`data, the authenticator or controller in Lane compares that data to the stored
`
`fingerprint data to determine if the user is authorized. Id. at 5:37–46
`
`(authenticator described as performing the function); 8:30–32 (controller
`
`described as performing the function). The authentication signal, if in audio
`
`form, may be “a predetermined coded audio signal,” but no further detail is
`
`provided. See id. at 9:1–15.
`
`Petitioner’s ground specifies that Lane’s authenticator generates the
`
`claimed identification profile when it creates a two-dimensional binary
`
`image of the fingerprint. Pet. 77 (“In Lane, authenticator 107 uses
`
`‘information related to a sensed fingerprint’ . . . to create a ‘two dimensional
`
`binary image’ (i.e., generating an identification profile) of a fingerprint’s
`
`pattern.”).
`
`But as Patent Owner argues, and we agree, Lane’s authenticator does
`
`not generate a two-dimensional binary image of the fingerprint. Prelim.
`
`Resp. 53–57. Although Petitioner asserts that the authenticator “create[s] a
`
`‘two dimensional binary image,’” Petitioner cites to a passage that is
`
`discussing how the fingerprint sensor works, not the authenticator.
`
`8
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`Compare Pet. 77 (citing Ex. 1005, 7:14–20) with Ex. 1005, 7:14–20 (talking
`
`about the functions of the ridge detectors 140 of the fingerprint sensor).
`
`Accordingly, we are not persuaded by Petitioner’s assertion that Lane
`
`discloses a verifying means that generates an identification profile in the
`
`form of a two dimensional binary image. For that reason, we are not
`
`persuaded that Petitioner has demonstrated a reasonable likelihood that
`
`claims 1 or 2 are unpatentable over Lane and Drexler.
`
`III. ORDER
`
`In view of the foregoing, it is hereby ORDERED that Petitioner’s
`
`request for inter partes review of the ’391 patent is denied.
`
`
`
`
`
`9
`
`
`
`IPR2019-00478
`Patent 6,213,391 B1
`
`For Petitioner:
`
`Cono Carrano
`ccarrano@akingump.com
`
`Ashraf Fawzy
`afawzy@unifiedpatents.com
`
`Jung S. Hahm
`jung@unifiedpatents.com
`
`For Patent Owner:
`
`Raymond Mort
`raymort@gmail.com
`
`Cabrach Connor
`cab@connorleepllc.com
`
`
`
`10
`
`
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